Industrial Designs, Geographical Indications, Layout Designs, Plant Varieties and Undisclosed Information

Why it matters here. It shows the boundary between shape as function and shape as tradition, and it is the case that made the point that the Controller had not even put the traditional article before himself as a citation.

Geographical indications

What is protected. Section 2(1)(e) of the Geographical Indications of Goods (Registration and Protection) Act 1999: an indication which identifies goods as agricultural, natural or manufactured goods originating in a territory, region or locality, where a given quality, reputation or other characteristic is essentially attributable to that origin.

It is a collective right. There is no owner. An association of producers registers it, and any producer in the region who meets the specification may use it. This is what distinguishes it from every other category.

Two registers. Part A registers the geographical indication; Part B registers the authorised users.

Term. Ten years, renewable indefinitely.

Treaty basis. TRIPS Articles 22 to 24, with additional protection for wines and spirits in Article 23. The Lisbon Agreement 1958 and its Geneva Act 2015 provide international registration; India is not a party to either.

The first Indian registration was Darjeeling tea.

Layout designs of integrated circuits

What is protected. Section 2(1)(h) of the Semiconductor Integrated Circuits Layout-Design Act 2000: a layout design is a layout of transistors and other circuitry elements, including lead wires, expressed in any manner in a semiconductor integrated circuit.

Requirements. It must be original, not commercially exploited anywhere for more than two years, and inherently distinctive.

Term. Ten years from filing or first commercial exploitation, whichever is earlier. Not renewable.

Treaty basis. The Washington Treaty on Intellectual Property in Respect of Integrated Circuits 1989, which never came into force, and TRIPS Articles 35 to 38, which incorporated most of it by reference and made it binding anyway. MU has set integrated circuits as a whole question twice, and both chapters are in Modules II and III.

Plant varieties

What is protected. A variety that is new, distinct, uniform and stable, under the Protection of Plant Varieties and Farmers' Rights Act 2001.

What makes the Indian Act unusual. It registers not only new varieties but extant varieties, farmers' varieties and essentially derived varieties, and Chapter VI confers farmers' rights, including the right to save, use, sow, resow, exchange and share farm saved seed. Section 39(1)(iv) protects that expressly.

Term. Fifteen years for annual crops, eighteen for trees and vines, in each case from registration.

Treaty basis. TRIPS Article 27.3(b), which permits exclusion of plants and animals from patentability provided varieties are protected by patents, by an effective sui generis system, or by a combination. India chose a sui generis system and did not join UPOV. Worked in [The Right to Food and Farmers' Rights].

Undisclosed information

What is protected. Information that is secret, has commercial value because it is secret, and has been the subject of reasonable steps to keep it secret. Those are the three conditions in TRIPS Article 39.2.

India has no statute. Protection comes from the equitable action for breach of confidence and from contract, and Indian courts have repeatedly granted injunctions on that basis.

Term. As long as the secret holds. There is no expiry, and no register, and disclosure destroys the right for ever.

Treaty basis. TRIPS Article 39, itself resting on Paris Article 10bis on unfair competition, worked in [TRIPS Article 39: Undisclosed Information].

Distinctions students lose marks on

A worked example

A weavers' cooperative in a named region produces a distinctive silk sari.

The pattern woven into the cloth may be registered as a design under the Designs Act, 2000, for ten years extendable by five, if it is new or original and not dictated by function.

The name of the region, used for the sari, may be registered as a geographical indication under the 1999 Act, held by the cooperative as an association of producers, unassignable under section 24, and renewable indefinitely.

The drawing from which the pattern was made is an artistic work, but section 15(2) of the Copyright Act ends the copyright once the design has been applied to more than fifty articles by an industrial process without registration.

A distinctive mark applied to the finished sari may be registered as a trade mark, or as a collective mark under Chapter VIII.

And the plant from which the silk dye is extracted engages neither of these: access to it is governed by the Biological Diversity Act, and any new variety of the dye plant by the plant varieties Act.

Five regimes, one product, and each protects a different thing.

Quick revision

• Design: appearance only, judged solely by the eye, section 2(d) Designs Act 2000; excludes any mode or principle of construction. 10 plus 5 years.
• Geographical indication: quality essentially attributable to origin, section 2(1)(e) of the 1999 Act. Collective, no owner. Two part register. 10 years renewable. First Indian registration: Darjeeling tea.
• Layout design: original, not exploited more than two years, inherently distinctive. 10 years, no renewal. Washington Treaty 1989 never came into force; TRIPS 35 to 38 carried it in.
• Plant variety: new, distinct, uniform, stable. India also registers extant, farmers' and essentially derived varieties and confers farmers' rights in Chapter VI. 15 or 18 years.
• Undisclosed information: TRIPS Article 39.2 three conditions, secret, commercially valuable because secret, reasonable steps taken. No Indian statute, no register, no expiry.
• Dhanpat Seth v. Nil Kamal Plastic Crates Ltd: plastic version of a traditional kilta was not an inventive step and fell within section 3(p).

Test yourself

1. What distinguishes a geographical indication from every other intellectual property right? That it has no owner. Every other right in this subject vests in an identified proprietor who may exclude everybody else, assign the right and license it. A geographical indication vests in nobody. It is registered on the application of an association of persons, a producer, or an authority established by law representing the interest of the producers, and once registered any producer within the defined region whose goods meet the specification may apply to be entered on Part B of the register as an authorised user and may then use the indication. The right is therefore collective, and the correlative of that is that it cannot be assigned, transmitted, licensed, pledged or mortgaged, because there is nobody with the power to dispose of it. Two further consequences follow. The right is potentially perpetual, renewable every ten years, because the link between the goods and the place does not expire. And the enforcement interest is as much the public's as the producers', because the wrong done by a false indication is a deception of buyers about the geographical origin of what they are paying for.

2. Why did the Washington Treaty on Integrated Circuits matter even though it never came into force? Because TRIPS carried it in. The Treaty on Intellectual Property in Respect of Integrated Circuits was adopted at Washington on 26 May 1989 and never attracted the ratifications it needed, largely because the countries with the largest semiconductor industries were dissatisfied with its provisions on compulsory licensing and on innocent infringement. It would have been a dead letter but for Article 35 of TRIPS, which obliges members to provide protection in accordance with Articles 2 to 7 other than Article 6(3), Article 12 and Article 16(3) of that Treaty, and then adds in Articles 36 to 38 the further obligations that had been the sticking points. The effect is that the substance of a treaty that never entered into force binds every member of the World Trade Organization, and India gave effect to it in the Semiconductor Integrated Circuits Layout-Design Act 2000. It is the clearest illustration in this subject of what TRIPS did to the older treaty system: it took existing texts, incorporated them by reference, and attached to them an enforcement mechanism the original instruments never had.

3. India protects plant varieties but not by patents. Explain the choice and the statute that resulted. Article 27.3(b) of TRIPS permits a member to exclude from patentability plants and animals other than microorganisms, and essentially biological processes for their production, provided that the member protects plant varieties either by patents, or by an effective sui generis system, or by any combination of the two. India excluded them from patentability in section 3(j) of the Patents Act and chose the sui generis route, enacting the Protection of Plant Varieties and Farmers' Rights Act 2001 rather than acceding to the International Convention for the Protection of New Varieties of Plants. The reason is the farmer. The 1991 Act of that Convention restricts what a farmer may do with saved seed and leaves the exception to each member's discretion, whereas Indian agriculture depends on farmers saving, exchanging and selling seed. So the Indian Act registers not only new varieties but extant varieties, farmers' varieties and essentially derived varieties; it treats a farmer who has conserved a landrace as a breeder entitled to registration; and Chapter VI confers farmers' rights, section 39(1)(iv) providing expressly that a farmer shall be deemed to be entitled to save, use, sow, resow, exchange, share or sell farm produce including seed of a protected variety, the only restriction being that the seed may not be sold in a branded package. Terms are fifteen years for annual crops and eighteen for trees and vines.