The IPTO (Indian Patent and Trademark Office) hit another nail in the coffin of several of us who made money off clients by performing perfunctory TM searches. However, the "half full" cup suggests that this will free up a lot of our time to engage with serious TM work involving actual legal analysis, assessment and advice. And leave the dirty work to a not so aesthetically appealing online database.
As Sumathi rightly notes, we need to applaud the IPTO for unabashedly continuing with its transparency drive and opening up huge segments of hitherto hidden IP information. However, I write today not to praise the IPTO or to bury it for piercing a hole in many of our pockets, but to link up this extraordinary move with another policy proposal that was made some weeks back...a proposal that drew a number of varied comments and persuasive arguments in support thereof.
I had noted then that:
"I've always wondered at the logic of a rather bizarre provision under the Indian copyright act.
Section 45 relates to artistic works that have the potential to double up as trademarks. It states that prior to registering any of such works under the Copyrights Act, one must obtain a "no-objection" certificate from the Trademarks registry.
....Firstly, if at all the creation of an artistic work infringes upon the trademark rights of a person, that person is free to sue the artistic creator in a court of law. And this is possible even if the said artistic work is not registered as a copyright. For, as most students of elementary copyright appreciate, the set of rights commonly associated with a copyrighted work come into existence upon the creation of that work and do not depend for their validity upon any registration process. The entire process for the registration of a copyright is a mere formality and may, at best, offer an evidentiary advantage at the time of suing a third party for infringement. But the registration cannot, by itself, help prove that the work is copyrightable or that one owns title to the work.
If a copyright certificate is a mere formality and confers no substantial "right" on the piece of work, why insist on a no-objection from another IP regime ( I speak of the trademarks act here)?
Further, given that many copyrighted artistic works are unlikely to be registered, what purpose does the "no objection" certificate serve? And lastly, it bears noting that even despite the registration of a copyrighted work, a trademark owner is still free to sue the copyright holder, if she apprehends that the said copyright infringes her trademark.
This entire process appears nonsensical to me, with no other purpose than that of increasing the work-load of the trademarks registry. Needless to add, it also ends up providing "extraction" fodder for the many unscrupulous trademark officials who milk those that are desperate to obtain quick "no objection" certificates."
Some of you argued that this provision may help in preventing unwanted litigation and actually helps the hapless artistic creator. While this may be somewhat true, isn't it overly paternalistic and patronising? In an era where IP information was scarce and trademark searches had acquired the status of a fine art, one might have seen some value of a provision that insisted that trademark conflicts be checked for through an official process. However, now that the TM database is freely available and accessible, do we need to continue with our paternalistic attitude of hoping to save our artistic creators from unwanted trademark litigation. Won't they simply search for this themselves? I noted in one of my responses to a commentator that:
"I'm still not sure why we need to retain the NOC scheme under section 45. There are two possible scenarios:
i) A person who uses an artistic work is completely unaware of its trademark status
ii) A person who uses such work is aware of the TM but still wishes to go ahead and use. Perhaps the person thinks that the TM owner will not sue or that he/she doesn't infringe (as per current legal standards) or that the TM regt is not valid.
As you can appreciate the NOC scheme under section 45(1) really does not help with situation number (ii) outlined above. Even after a person is refused a NOC for an artistic work (owing to the presence of a registered TM covering the mark), he/she can still decide to use the artistic work on goods. The copyright act merely prohibits the registration of the artistic work. It does not prohibit the use of the artistic work, In fact, the copyright act registration is not even conferring any special validity on the work--as registration is a mere formality and no substantive rights flow from the registration.
As for situation (i) i.e lack of knowledge by the artistic work owner, can't we merely have them attest in an affidavit or form that they have searched the TM database and don't believe that they infringe any registered TM's? ...
...One of the following solutions can be adopted:
i) to insist on a declaration from the artistic work owner that they have searched and found no conflict
ii) If we want the burden to be a bit more onerous, we also state that along with the above declaration, they have to submit print outs of all searches of TM's done by them. However, once this is submitted, the copyright authority cannot sit in judgment over whether or not the print outs demonstrate a conflict with a registered TM.
They have to rely on the assertion by the artistic work owner that it does not conflict. However, assuming the copyright owner lies (which I guess will take this situation directly to situation number (ii) outlined above), and the matter goes to court, the court is always at liberty to read in bad faith adoption and factor this aspect into damages calculation and even the grant or non grant of injunction."
To conclude, let me recast the title of this post: The latest transparency move by the IPTO has effectively hammered the last nail on the coffin of an overly paternalistic section 45! Is the Ministry of HRD listening?
ps: image from here