INTELLECTUAL PROPERTY LAW

Introductory Concepts of Intellectual

Property Law
Kuma Debisa Tolera (LL.B., LL.M.)
Lecturer of Law, School of Law, Ambo University

© Kuma 2020

6/10/2020
 Part I Chapter 1
1. Introduction

 IPRs- is property right

 IP- is the fruit of human intellect ( mental labor not

physical labor)

1.1. Intellectual Property in General

 property – movable and immovable (1226)

 However, due the industrial revolution and the rapid

development made in the fields of science, technology
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and culture, new kinds of property came into existence
 -
 For this reason, new rights and properties like;

 Patents

 copyright and

 industrial designs, which came to be known as IPRs

received attention due to their unique characteristics

 IP- stands for groupings of rights which individually

constitute distinct rights.

 However, its conception differs from time and it to time. It

is6/10/2020
subject to various influences. 3
 -
 The change in information technology, market reality
(globalization) and generality have affected the contents of
intellectual property.

 For instance, in olden days-because of religion creation of

life, say plants or animals were not protected.

 Thus, defining IP is difficult as its conception changes.

 It is diverse, challenging and has application in day today

life.

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 -
 IP Law is a section of law which protects creations of the mind
 IP ―was originally designed to cover ownership of
literary and artistic works, inventions (patents) and trademarks
 Thus, what is protected by IP law was;
the form of the work- Copyright
 the invention- Patent
 the relationship between a symbol and a business-
Trademark

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 -
 However, the concept of IP today covers

 patents,

 Trademarks

 Copyright ( literary and artistic works)

 designs and models

 trade names

 neighboring rights

 plant production rights (Breeders right )

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 -
 topographies of semi conductor products

 databases (when protected by a sui generis right)

 unfair competition

 geographical indications

 trade secrets, etc

 Hence, IP have been characterized as ―”pieces of

information which can be incorporated in tangible objects
at the same time in an unlimited number

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 -
Of copies at different time and at different locations
anywhere in the world”
 In other words, IPRs are;
intangible in nature,
different from the objects they are embodied in.
The property right is not in those copies but
in the information which creates in them
In today's world, IPR importance is increasing for three
reason become
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 -
1. the composition of world trade is changing. Currently,
commerce in IP has become an even greater component
of trade b/n nations. The value of information products
has been enhanced greatly by the new technologies of the
semi-conductor chip, computer software and
biotechnology.

2. the world commerce has become even more

interdependent, establishing a need for international
cooperation.
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 -
No longer can a single country impose its economic will on the
rest of the world. Accordingly, countries have recognized this
interdependence and have called for a broadening of
international agreements/arrangements involving intellectual
property.
3. New reprographic and information storage technologies
permit unauthorized copying to take place faster and more
efficiently than ever, undermining the creator‘s work.

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 1.1.2 The Concept of Intellectual Property
 Broadly, IP- means the legal property which results from
intellectual activity in the industrial, scientific and artistic
fields.

 Countries protect IP for two main reasons.

a. One is to give statutory expression to the moral and

economic rights of creators in their creations and such
rights of the public in access to those creations.

b. To promote, as a deliberate act of government policy,

creativity and the dissemination and application of
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 -
its results and to encourage fair trading which would
contribute to economic and social development.

 Generally, IP law aims at safeguarding creators and other

producers of intellectual goods and services by granting
them certain time- limited rights to control the use made of
those productions.

== These rights do not apply to the physical object in which

the creation may be embodied but instead to the intellectual
creation as such
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 -
Traditionally IP divided into two

a. industrial property

b. Copyright

Article 2(Viii) of convention establishing WIPO tried to

define Ip. According to this definition IP shall
include rights relating to:

1) literary, artistic and scientific works(belongs copyright)

2) performances of performing artists, phonograms and

broadcasts;(Neighboring rights)
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 -

3. inventions in all fields of human behaviour; about industrial

property

4. scientific discoveries;

5. industrial designs;

6. trademarks, service marks, and commercial names and

designations;

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 -
7. protection against unfair competition and all other rights

resulting from intellectual activity in industrial scientific,

literary or artistic fields.

industrial property covers inventions and industrial designs.

 Inventions- are new solutions to technical problems, and

 industrial designs are aesthetic creations determining the

appearance of industrial products.

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 -
 Thus Industrial property includes trademarks, service

marks, commercial names and designations, including

indications of source and appellations of origin, and

protection against unfair competition.

 there are historical and philosophical reservation

regarding IP protection
A. Historically- reservation is IP don’t exhibit essential
characteristics of Property

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 -
i. material existence (corporeal chattels only as propriety.

ii. property should be subject to appropriation/occupancy

B. Philosophical Reservation-

 They believed that human beings cannot be regarded as a

creator of something(reflected in religions)

 The problems also relate with epistemology.

 What we reflect is what we observe from the

world (our experience, life experience)

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 -
 There are two factors in lumping intellectual
property rights together. These are:

A. Historical Basis

B. Conceptual Basis

A. Historical Basis

1883- the Paris Convention on industrial property

1886- the Berne Convention on copyright.

Both have their own secretaries

 n6/10/2020
1893 the two secretaries united 18
 -
 United International Bureaux for the Protection of IP
(BIRPI) which later it became WIPO which was
established 1967

B. Conceptual basis

IP rights objects (enterprises) are inherently in appropriable.

They are intangible by nature- Use by others cannot be

denied by using the possession of a property first created.

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 1.3. Scope of Intellectual Property Rights
• IPR is so broad that it has many aspects
• It stands for groups of rights that distinctively constitute
individual rights.
• However, its scope differs from time to time
• It is subject to various influences
• Its content is affected by change in
 information technology,
 market reality (globalization) &
 Generality (i.e. social, religion etc

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IP in summery
 IPR Evolution
 Property  Right
 INTELLECT – PROPERTY – RIGHT
 Idea  Expression  COPYRIGHT
 Idea  Innovation  Invention  PATENT
 Idea  Quality + Identity  TRADEMARK
 Idea  Appearance  DESIGN
 Idea  Keep Confidential
No Disclosure

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Types IPR

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 Types IPR
Conventionally, IPR can be classified into two

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 IP
IPR

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 1.4. Nature of IP
IP have their own peculiar feature

A. Territorial

 IPRs are limited territorially; they exist and can be

exercised only within the jurisdiction of the country or
countries under whose laws they are granted.

 However, these works of the mind, including inventive

ideas, easily cross borders and one can exploit it

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 B. Giving an exclusive right to the owner

 Non owner are prohibited from using the right.

 However, such rights cannot be implemented in

practice as soon as the owner got exclusive rights

 It has to bested by public laws excluding others

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C. Assignable
 It can obviously be assigned or be transferred

 IP , sold, imported, exported licensed or hired or

attached.

D. Independence

 Various IPRs- subsist in the same kind of object

 Most IPRs are likely to be embodied in objects

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 …
E. Subject to Public Policy
 IPRs are vulnerable to the deep embodiment of public
policy
 IPRs tries to strike balance between IPRs holder to get
adequate remuneration and consumers try to consume
works without much inconvenience.
F. Divisible (Fragmentation)
 Several persons may have legally protected interests
evolved from a single original work without affecting the
interest of other right holders on that same item.
 Because of the nature of divisibility, IP is an inexhaustible
resource.
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 ---
 IP drives this nature from its territorial nature.

 For example, an inventor who registered his invention in

Ethiopia can use the patent himself in Ethiopia and can
License it in Germany and assign it in France.

 Also, copyright is made up of different rights. Those

rights may be divided into different persons: Authors,
publishers, adaptors, translators, performer, etc.

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 Chapter 2

Theories of Intellectual Property

Introduction

 Societies may be shaped fundamentally as property

institutions.

 These legal relationships between individuals, different

sorts of objects, and the state are not easy to justify.

 It is also true of IP

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 ---
 As it is difficult to determine the appropriate
kinds of ownership of corporeal objects and it is even
more difficult to determine what types of ownership
we should allow for non corporeal, IP objects, (such as
writings, inventions, and secret business information.
 The complexity of copyright, patent, and
trade secret law reflects this problem.

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 ---
 IP is resulted from post industrial society n which the
manufacture and manipulation of physical goods is giving
way to the production and use of information.
 It become increasing significant and wide spread of
ownership
 This resulted in an ever increasing strain on law and
custom in protecting IP
 then issue is why IP is Protected ? Various theories are
developed as justification

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 2.1. Justifications for Intellectual Property Protection
Why do we need to justify IP protection? restraint on access

Broadly justifications for IP protection can be classified in to

two: Justifications based on the right of the author and those
based on protection of public interest (utilitarian
justifications).

 Rights based justifications

Natural rights theory: it is right to be protected over one’s

work and proper to protect (not as quid pro quo).

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 ---
 In the same manner as one is entitled to fruits of his/her
physical labor, authors are entitled to fruits of mental
labor (government only recognizes it). = Intellectual
creations result from the mind of their authors. ‘to every
cow its calf’. Copying others’ work is theft

 Individual as creator.

- the author is seen creator of literary text than reproducer

of tradition.

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 ---
- Earlier the mind of the author had been seen as reflector of
the external world and the resulting work was compared to
mirror representing selected and ordered image of life.

- Common-labor/possession-no wastage=property

 the mind of the author, which was motivated by organic

qualities of genius, taste, judgment, and imagination, is seen
as something which was not only interposed between the
world of sense and literary work ,

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 --
but also as something which was the cause for conspicuous
differences between art and reality. This individualistic
model of creation is a move away from God or nature as
source of creation. Individual creation derived from what
god has provided though.

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 A. Natural Right theory (Labor Theory
(Locke’s Theory)
 Property right is a natural right.

 A person has a right to own the creation of his labor in

the same manner he owns creation of his mind

 At the beginning everything was common but by using

the intellect it become private

 so protecting once mental labor(IP) is natural

 However, the problem of this theory is it doesn‘t cope up

with the temporal limitation of intellectual property rights
6/10/2020 37
 ---
 This theory may be justifiable for corporeal ownership in
which its existence may be for indefinite period of time

 A person has a natural right to the fruits of her labour and

that this should be recognized as her property, whether in
tangible or intangible term.

John Locke has two theses on this theory

1) Everyone has property right in the labour of his own body.

The labor of his body and the work of his hands are
properly his.
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 ---
2) The appropriation of an un owned object (ideas or theories)
arises out of application of human labor to that
object. Mixing one‘s own labor with un owned thing
confers upon a property right in the whole thing.

=However, after appropriation there must remain objects of

similar quality in sufficient quantity for others: ―Enough
and as good left for other.

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 B. Personality Theory
 IPRs-are important to create personal self assertion.

 Hegel- a person would be more self assertive when she/he

owns property.

 He will feel more equal (equality) and will be freer.

 It is believed that the work is the personal expression of

the author‘s or the inventor‘s thoughts.

 So he should be given the right to decide when and how

his work may be produced or performed in public, and the
6/10/2020 40
right to prevent mutilations and changes
 --
 Thus, IP laws are to be there to protect the author‘s or the
inventor‘s manifestation of his personality.

 This is also backed by the need for the safeguarding of the

individual‘s freedom of expression

C. Utilitarian Theory

 IP Laws- make the public good -a private, a non rivalorous

– rivalorous, the non-exclusive – exclusive, and the non-
scarce –scarce which are not scarce by nature.

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 …
 The laws create artificial scarcity of knowledge.

 This is done due to creators do not have the necessary

incentive unless they have accorded some means to control
their knowledge.

 Unless this is done, they lack the necessary economic

incentive.

 Utilitarian is institution socially beneficial

 The utilitarian theory of intellectual property-states that we

have
6/10/2020 IP systems because it has the effect 42 on
 …
,the betterment /economic/ of the society.

 Its correctness is to be assessed in the economic success of

the countries.

 So, it is more of an economic issue. We have witnessed

tremendous technological advancements both in the
science and the arts.

 this theory says, do something because you will get

something.

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 --
 Society care about creators b/c the ultimate beneficiary is
the society itself

 because novel expression and innovation give solution to

technical problems.

There is objection from Economists-

exclusive rights, result in a creation of a monopoly right.

Monopoly is contradistinguished with a perfectly
competitive market.
If monopoly is unrestricted it will result in market
crush.
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 …
There are counter arguments to Economist

 Whenever the law gives an exclusive right to the innovator,

it devised so many ways of resolving a problem.

 There is no IP law which prohibits other innovators from

innovating a solution to the same problem.

 In copyrights since they protect expression of ideas.

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 ..
 In Patent for a drug for a certain illness does not prohibit
innovating another drug for the same illness.

 However, each monopolizes their right until another

comes.

 So, the monopolistic nature is undeniable. That is why

governments try to control such monopolization

 Patent encourage an other inventor to invent around the

same idea

 6/10/2020
It stimulates others to develop an alternative
46
 …
 solution because of the monopolization of the patented
idea.

 So it induces inventing around an existing patent

 W/o IP protection no design will exist w/c may result in

absence cultural promotion

 The counter argument to this from |Economists, are i.e.,

 if we end up in giving different solutions to the

same problem, it will result in economic waste since there
are different problems which we have to give solutions 47to.
6/10/2020
 --
The other version of utilitarian theory is incentive (bargain)
theory states that

 The protection of IP given is an incentive to individuals

not only to create works of the mind but also to publicize
and disseminate them into the public.

 Since Works of the mind are very important to a given

society for its social, cultural and economic development.

 Granting protection is to encourage creativity and

publicity.
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 …
 Through literature development, the cultural orientation of
a given country will be promoted.

 Invention promotes industrialization.

 Development of the west has to do much with intellectual

creativity.

 Those works require investment in terms of time, money

and effort.

6/10/2020 49
 …
 So without protection people will not invest on them.

 They are no less investment demanding than corporeal

thing and the protection of the law is needed

 In addition, creativity by itself is not adequate. If the

work of a mind is not made available to the public to be
exploited

 With protection publicity will be encouraged thereby

enabling their publicity and serve their intended purpose.

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 …
 Upon the expiry of their period of protection it will
become public

 When right is protected then the creator will make his work
to be known.

 Without protection people may not make their works

known

 That is why state is bargaining with individuals who create


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 …
Moreover, Various question arise regarding this theory
 Is IP law is the only stimulator?- it is controversial
 The other question is: does the theory really work?
Numerous assertions are made.
 There are factors other than intellectual property rights
which stimulate innovation.
 Before the existence of intellectual property rights there
were innovations.
 Some say, even great works of the mind are created
without the existence of protection (Shakespeare‘s
writings)

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 …
 What they are saying is there are born creators, who
continue creating even without protection.
 People create for different reasons:
 to satisfy their natural urge
 necessity
 fame…
 Some say copyright is unnecessary restriction on the
public favor of the author.
 For them, when there is shortage, a better system is
needed and creativity follows even without legal
protection.

6/10/2020 53
 …
 However, the critics must be seen seriously in light of the
world‘s development.
 In older days, people may write books because violation
itself is very difficult since there were
 no printing machines
 no mechanism of dissemination
 no recording machines for reproduction and
 distribution.
 In history, works of the literature were even limited to
certain groups(elites of the church)
 These days, however, the situation is changed.
 Thus, the critics on incentive theory will not work firmly
today
6/10/2020 54
 …
 royalty or fee for owners may increase the price of the
product or service

 Which can be seen as a kind of tax on knowledge and

information

 though consumers wish to owners may not meet the

demands of the public in sufficient quantities.

 This will lead to compulsory license

 Therefore, Protection of IP has positive effect in

promoting investment that is required for the,
6/10/2020 55
 …
 production of new inventions
 technical innovation
 literary and artistic productions and the like

6/10/2020 56
#Legal frame Work for IP Protection
• How we protect IP?
• IPR is protected by intellectual property law
 Intellectual Property Law is a branch of private a
substantive law that governs inventor’s or creator’s:
 Rights and obligations,
 Privileges and limitations
 It is the specific law that:
 Defines rights and obligations of IP right holders and
third parties in relation to IP rights
 Classifies IP and sets out governing rules accordingly;
and
 Lays rules on acquiring, utilization, protection, transfer
& loss of IP right
6/10/2020 57
 Legal frame work continued…
• Why countries need to have intellectual property laws?
• have laws to protect IP for two main reasons
• 1st, to give statutory expression to
the moral and economic rights of creators in their
creations &
rights of the public in access to those creations
• 2nd, to promote
• creativity and dissemination &
• fair trading to enhance economic and social development

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Continue…
 In Ethiopia, IP is protected by: Constitutional, Civil &
Criminal laws
a. Constitutional law protection
• The Constitution of the FDRE, 1995: E.g. (art 40(2) of
the Constitution)
b. Civil law protection
I. Intellectual property Laws:
• Inventions, Minor Inventions & Industrial Designs,
Proc. No. 123/1995
• Copyright and Neighboring Rights Protection, Proc.
No. 410/2004
• Trade Mark Registration and Protection, Proc. No.
501/2006
6/10/2020 59
 Continue….
II. Tort and Unlawful Enrichment Law
• Civil Code of the Empire, Proclamation No. 165 of 1960
c. Criminal law protection
Criminal Code of FDRE, Proc. No. 414/2004 - (art 717 –
724 of Cr.C)
Copyright is protected under copyright and neighboring
right law
Patent protected under patent proclamation law
Trade and service mark protected under trade mark law
Industrial design – no specific law
Trade secret- contract
6/10/2020 60
 …
International legal Instrument
The Bern Convention
The Paris Convention
The Rome convention
TRIPS
3.1.The Scope of IPR
• IPR is so broad that it has many aspects
• It stands for groups of rights that distinctively constitute
individual rights.
• However, its scope differs from time to time
• It is subject to various influences
• Its content is affected by change in
 information technology,
 market reality (globalization) &
 Generality (i.e. social, religion etc.)
6/10/2020 61
Copyright

is a legal term describing rights given to

creators for their literary and artistic
works.
is the legal right of an author of a
creative work to control the copying
and sale of that work.

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Cont’d…
In olden days, the term “copyright” has meant the right to
make copies of a given work
• it was limited to written work and confer the right to stop
others from making copies without one's permission
 Now, is the right to copy, a property right in an original
work of authorship, fixed in any tangible medium of
expression, giving the holder the exclusive right to
reproduce, adapt, distribute, perform, and display the work

6/10/2020 63
Cont’d…
• Generally Copyright is a protection which protects the
ORIGINAL creative expression of an idea

Sufficient amount of
labor, judgement,
capital and skill of the
actual creator
6/10/2020 64
Cont’d…
Cont’d …

So Copyright protects

 original expression of ideas,
 the way the works are done; and
 the language used in the expression of idea
• the expression of ideas are copyrightable; but ideas
themselves are not

Grant an exclusive right to reproduce, prepare

derivative works from, distribute copies of, and
publicly perform & display the work
6/10/2020 65
Cont’d…
Cont’d …

Lapses after a long period of protection

• the most notable exception is the ‘fair use’ clause
• the exception gives researchers, educators, and libraries
special privileges to use copyrighted material
To be protected, administrative procedures are not required
• means – it grants automatic protection

6/10/2020 66
Cont’d…
Cont’d …

Necessary conditions/ requirements for copyright protection

 It is recorded in some form
• e.g. in writing, by a sound recording, on a computer disk
or in a printed form.
 Must meet the requisite degree of originality
 If it is of a type protected under the copyright protection.
Proof of copying in an infringement action requires
• 1st evidence of the defendant's access to the original work
and
• 2nd substan­tial similarity of the defendant's work to the
original
6/10/2020 67
Cont’d…
Cont’d …

• What can be copyrighted?

It is works protected by copyright
• Original Literary, dramatic, musical and artistic works

6/10/2020 68
Cont’d…
Cont’d …

• Sounds recording, films, broadcasts, Architectural

works

• Typographical arrangements of published editions.

6/10/2020 69
Cont’d…
Cont’d …
What CAN’T be copyrighted?
an idea
procedure, process, system or method of operation
a concept or principle
a discovery regardless of the form in which it is explained,
illustrated, or embodied in a work.

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Cont’d…
Cont’d …
DURATION OF COPYRIGHTS
 Literary,
dramatic,
musical and
artistic works Life of the author
+
50 Years

 Photographic
works 25 Years

Sound 50 Years
Recordings

Broadcasts
6/10/2020 20 Years 71
Cont’d…
Cont’d …

• How do we know if a work is copyrighted?

• sign is attached to items that embody copyright as a notice
• Notification of copyright work is made through notice of
copyright
Notice of Copyright
• a copyright notice takes several forms i.e. can be:
• the symbol with the letter ‘C’ in a circle (©),
• E.g. ©Mr. Lencho CRSD, 2019
• the word ‘Copr.’ or
• ‘Copyright.’

6/10/2020 72
Cont’d…
Cont’d …

• must be followed by the copyright owner's name and the

year that the work was first published
• What is the difference between copyright and neighboring
rights?
• Why neighboring right is distinct right of copyright subject
matter?
Neighboring right
 an IP right of a performer or of an entrepreneur such as a
publisher, broadcaster, or producer, as dis­tinguished from
a moral right belonging to an author or artist as the work's
creator
6/10/2020 73
 …
is the way by which protection is given to: performers in
a theatre, dancers, actors, broadcasters, producers of
sound recorders, etc.
also termed related right; entrepreneurial right;
is different from copyright but related with it
Civil law countries have consigned protection of
collaborative technological productions to independent
regimes

6/10/2020 74
Cont’d…
Cont’d …

• i.e. neighboring rights and moral rights are protected by

different laws
• Common law countries have included these productions in
the subject matter of copyright
• Meaning, both are protected by the same copyright laws
• is because of their utilitarian emphasis on the products
rather than the processes of creative work

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Chapter 4

• What is a Patent?
is a protection given to a patentee for an invention
for a limited term by the government for disclosing
the invention
right to exclude others from making, using, offering
for sale, or selling the invention throughout the
country or importing the invention into home
The exclusive right of a patentee to make, use, sell,
offer for sale, or import an invention for a certain
period of time
6/10/2020 76
 Cont’d…

6/10/2020 77
Cont’d…
Cont’d …

• According to the definitions, patent right gives the

patentee an exclusive protection over an idea i.e.
the right to make, use, or sell the invention
• the right includes the right to prohibit others from
making, using, or selling the invention
• the exclusive right is a true monopoly
• Anyone making, using, selling or offering to sell the
patented invention without the owner’s consent is
an infringer.
• It is like a piece of property so that:
6/10/2020 78
Cont’d…
Cont’d …

• can be sold outright for a lump sum or

• can be licensed in return for royalty payments
• What one patent is an inventions
• What is invention?
Invention
 is a new process, machine, manufacture, or composition of
matter
 is a patentable device or process created through
independent effort and described by an extraordinary degree
of skill or ingenuity;
 is a newly discovered art or operation
6/10/2020 79
Cont’d…
 is any art, machine, manufacture, design, or composition of
matter, or any new & useful improve-ment thereof, which is
patentable by the law
• So invention is not a mere scientific discovery
• Why do scientific discoveries are not considered as
inventions?
• Scientific discoveries are the recognition of phenomena,
properties or laws of the material universe
• may not be solutions for specific problems as they are
general principles
E.g.,
• One can’t patent the scientific principle that water boils at
212 degrees
6/10/2020 80
 cont..
• But can patent a machine (a steam engine) which uses this
principle in a specific way and for a specific purpose
Patentability
 Patentability is the conditions/
requirements for an invention
to be patentable

6/10/2020 81
Cont’d…

• Requirements for Patentable Invention are:

1. Novelty
2. Non-Obvious
3. Utility

6/10/2020 82
Cont’d…
Cont’d …

1. Novelty or new No prior disclosure of

any information
2. Inventiveness or before the filling date
Nonobvious The feeling should
not be there that the
3. Usefulness or invention is
anticipated by prior
Utility or
art invention Must
The
Industrial
6/10/2020 have some future 83
applicability
Cont’d…

• What can be patented?

Inventions that can be patentable are:
1) Process;
2) Machine;
3) Article of manufacture;
4) Composition of matter;
5) Improvement of any of the above.

6/10/2020 84
Cont’d…
Cont’d …

• What cannot be patented?

 It is to mean exceptions to patentability
Non patentable inventions are:
1) Laws of nature;
2) Physical phenomena;
3) Abstract ideas;
4) Literary, dramatic, musical, and artistic works;
5) Not useful; or immoral etc.

6/10/2020 85
Cont’d…
Cont’d …

Examples of patentable inventions

• Frivolous, contrary to natural laws
• Contrary to public order or morality,
prejudice to human, animal or plant life or
health or to the environment;
• Mere discovery of scientific
principle, abstract theory,
living thing or non-living substances
• Mere discovery of new property,
new use of a known process,
machine or apparatus (efficacy)
6/10/2020 86
Cont’d…
Cont’d …

• Method of treatment.
• Plants, animals, including seeds varieties,
species, biological processes.
• How can we identify patented product or process?
• A patented product is identified by patent notice
which is affixed on a patented article's surface or
sur-rounding packaging

6/10/2020 87
Cont’d…
Cont’d …

Patent notice
is sign attached to items that embody patent right as a
notice
Patent notice is made by placing the word “patent” or “pat”
and patent marking (the item's patent number) to a
patented article's packaging
Thus, affixing the patent number to a product gives
constructive notice
without the number in place, a patentee can not recover
losses that occur before the infringer has actual notice of
the patent

6/10/2020 88
Industrial design…

• What is Industrial design?

A design is the protection of the ornamental or
aesthetic aspect of an article
A design is the protection of the form of a
product
• Based on jurisdiction also termed as: design right;
patentable design

6/10/2020 89
Cont’d…
Cont’d …
• Why we protect industrial design?
 Industrial design rights are granted to the creator of
designs to reward them for their effort and investment in
manufacturing the product
• These rights enable the owner to make articles to which the
design is applied or in which it is embodied
 applying for a protection of new and original designs
enable owners to propose a license to create new incomes
and/or receive royalties
 industrial designs can designate national culture & folklore
 makes a product attractive and appealing for the
consumers
6/10/2020 90
Cont’d…
Cont’d …
 Industrial designs are important branding tools
just as trademark shapes and distinguish a company’s
corporate image, goods and services; a design shapes the
form of new products to differentiate it from current
products.
So both are IP tools that contribute to a branding strategy
this is possible only once the formal protection is legally
agreed.
a design is also automatically protected by the copyright
system

6/10/2020 91
Cont’d…
Cont’d …
 The Importance of a Creative Design
 Makes a product attractive and appealing
 Target specific market segments
 Create a new market niche
 Encourages fair competition and honest trade practices
 designate national culture and folklore
 Strengthen brands
 Launch a new style of products and increase consumer’s
demand

6/10/2020 92
Cont’d…
Cont’d …
• What can be protected as an industrial design?
• An industrial design consists of
• Creation of a shape
• Configuration or composition of pattern
• Colour or combination of pattern
• Colour in three dimensional form containing aesthetic
value
• it applies to products of industry & handicraft, technical &
medical instruments, watches, jewelry, house wares,
electrical appliances, luxury items, vehicles, architectural
structures, textile designs

6/10/2020 93
Cont’d…
Cont’d …

can be a two- or three-dimensional pattern used to

produce a product, industrial commodity or handicraft.
However, only the aesthetic/visual form of a product can be
filed and protected as an industrial design
So solely protects non-functional features of industrial
product
Does not protect the technical (patents) nor distinguishing
features (trademarks) of the object to which it is applied
protect the product's appearance
gives an exclusive protection to a person who has created a
novel appearance of a product

6/10/2020 94
Cont’d…
Cont’d …
• prohibits unauthorized use of such signs which is likely to
mislead consumers and practices in general
• Generally, design deals with appearance i.e. how an article
looks like
• It only covers appearance, not quality
• It shares copyright law because the design is also an artistic
• It also shares patent law because there are scientific
considerations
• It requires administrative procedures to be protected i.e.
registration and publication

6/10/2020 95
Cont’d…
Cont’d …

 After Registration the owner

 has exclusive right to prevent unauthorized copying or
imitation by others
 return on investment
 increase commercial value of a company and its
products
 can license (or sell) registered design


6/10/2020 96
Cont’d…
Cont’d …
• What is not registrable? or
• What cannot be protected?
 A design which is not new or original
• that fail to meet requirements of novelty, originality and
individual character
 A design which has been disclosed to the public anywhere
in the world prior to the filing
 Designs dictated by technical function
• not significantly distinguishable from known designs or
combination of known designs

6/10/2020 97
Cont’d…
Cont’d …

 Designs with official symbols or emblems

 Designs contrary to public order or morality
• comprises or contains scandalous or obscene matter
• An industrial design can be in the forms of:
 2D (two dimensional) pattern product
 Graphic designs
 3D (three dimensional) pattern computer
graphic design
 3D (three dimensional) pattern digital design

6/10/2020 98
Cont’d…
Cont’d …

• 2D (two
dimensional)
pattern product

• Graphic designs

6/10/2020 99
Cont’d…
Cont’d …

• 3D (three
dimensional)
pattern computer
graphic design

3D (three
dimensional)
pattern digital
design
6/10/2020 100
3.2.Types

Consumer
Products

6/10/2020 101
Cont’d…
Cont’d …

Pharmaceutical Product

6/10/2020 102
Cont’d…
Cont’d …

Textile &
Jewelry

6/10/2020 103
Cont’d…
Cont’d …

• What to remember when seeking design protection?

 The design must be NEW
 The design must be ORIGINAL
 The design must have INDIVIDUAL CHARACTER
 The design can also be protected as copyright (not only as
a Design)
Scope of Designs Rights
 The right to
 prevent unauthorized copying or imitation by third
parties.
 exclude all others making, offering, importing,
exporting or selling product with a specific design. 104
6/10/2020
Cont’d…
Cont’d …
• However an infringement can be legally combated only if
the owner has record his design(s) and received a formal
certificate of protection.
• i.e. ‘Cease and desist’ letter to infringer

6/10/2020 105
Trademark
• What is a trademark?
 Any sign, or any combination of signs, capable of
distinguishing the goods or services of one undertaking
from those of other undertakings
 a word, phrase, logo, or graphic symbol used by a
manufacturer to dis-tinguish its product from others
 is the body of law dealing with how businesses
distinctively identify their products

6/10/2020 106
Cont’d…
Cont’d …

Article 2(12) of Trademark Proc. No. 501:

“means any visible sign capable of
distinguishing goods or services of
one person from those of other
persons; it includes words, designs,
letters, numerals, colours or the shape
of goods or their packaging or the
combinations thereof;”

6/10/2020 107
Cont’d…
• Thus, a trademark protects any sign or symbol that allows
your customers to tell you apart from your competitors.
• The protection is the law's recognition of the psychological
function of symbols
• is a merchandising shortcut which induces a purchaser to
select what he wants, or what he has been led to believe he
wants
• the owner of a mark exploits human propensity by
impregnating the atmosphere of the market with a
congenial symbol

6/10/2020 108
Cont’d…
Cont’d …

• What is a service mark?

• A service mark is the same as a trademark, except that it
identifies and distinguishes the source of a service, rather
than a product.
Service Mark Examples

6/10/2020 109
Cont’d…
Cont’d …
• What is the difference between ‘Trademark’ and ‘Mark’?

 Both of these terms are used to refer to trademarks (goods

or products) and service marks (services).
Requirements of Trademark Protection
• What marks be eligible as a Trademark?
• You can register a name, logo, slogan, domain name, shape,
colour or sound (? see art. 6(1,b of TM proc.)
 To receive protection, graphically represented trademark:
 Must be distinctive/ distinguishable

6/10/2020 110
Cont’d…
Cont’d …

 Must not be descriptive

 Must not deceptive/ generics
• Deceptive – are those marks that are similar to known/well-
known marks
Instance
• Making a mark from ORS ORS-L, ORZ
• Making a mark from Cefixime ZIFI, CEFI,
Cefixin
 see art. 5 of Trademark proc. No 501/2006 that state
admissibility
6/10/2020 111
Cont’d…
Cont’d …
• What cannot be admissible as a Trademark?
• Sign, or any combination of signs may be considered as
ineligible if they consists of:
 Immoral, deceptive, scandalous
 Flag, state, foreign nation
 Name (? see art. 6(1,J of TM proc.), portrait, signature
• see art. 6 of Trademark proc. No 501/2006 that state
inadmissibility

6/10/2020 112
Cont’d…
Cont’d …
Functions of Trademark
 Trademarks helps customers to identify & choose between
products/ services based on their reputation and quality
• it serves as instrument to build consumer goodwill
• convey in the minds of potential customers, the desirability
of commodity
 once there is a valid representation, it gives the owner
exclusive right if it is registered
 Ensure that consumers can rely upon a mark to identify,
distinguish and indicate source without being confused by
competitive products

6/10/2020 113
Cont’d…
Cont’d …

• It protects the consumers from deception or confusion over

what they are purchasing
 Distinguishing function products or services from one
source, from identical or similar products or services from
other sources
 Guarantee function of trademarks refers to a particular
quality of the product or service for which it is used
 Communication function creates interest and inspire a
feeling of confidence of the customers.

6/10/2020 114
Cont’d…
Cont’d …
• Thus a trademark functions on three different levels: as
a) an indication of origin or ownership (Identification
function (origin);
b) a guarantee of the quality of product or service, (quality
function); &
c) a medium of advertisement (communication function)
• If anyone poaches upon the commercial magnetism of the
symbol, the owner can obtain legal redress
• It exists forever as long as the good is there up on renewal

6/10/2020 115
Cont’d…
Cont’d …

Types of Trademark
• There are different types of trademarks
• These are
 Wordmarks (e.g. letters, words, numerals)
 Figurative images or logos (e.g. graphical images,
drawings, symbol)
 3-D marks (e.g. wrappers packaging form of product)
 Sound marks
 Combined marks (e.g. any combination of the above
options)

6/10/2020 116
Cont’d…
Cont’d …

3-D marks Words

Combined marks Figurative images

or logos

6/10/2020 117
Cont’d…
Cont’d …

Trademark Service mark

Identifies goods/ Identifies
products services

6/10/2020 118
Cont’d…
Cont’d …

6/10/2020 119
Cont’d…
Cont’d …

6/10/2020 120
Cont’d…
Cont’d …

• How do we know if a mark is protected?

Trademark may be designated by the following
symbols
 for Unregistered Trademarks, that
is, a mark used to promote or
brand goods
 for Registered Trademarks
for Unregistered Servicemark,
 that is, a mark used to promote
6/10/2020
or brand services 121
Cont’d…
Cont’d …

• Registered Trademarks • Unregistered

symbol are formal signs Trademarks
• convene exclusive statutory symbol are informal signs
notice • needs proof of ownership in
• Grants rights to use nationwide dispute
• require registration & constant • used to promote or brand services
use • Rights are geographically limited
• incontestable after 5 yrs. • no registration required
• allows statutory damages
6/10/2020 • require continuous use 122
Cont’d…
Cont’d …

6/10/2020 123
Cont’d…
Cont’d …

6/10/2020 124
Cont’d…
Cont’d …

Vs

6/10/2020 125
Cont’d…
Cont’d …

6/10/2020 126
Cont’d…
Cont’d …

6/10/2020 127
Cont’d…
Cont’d …

6/10/2020 128
Geographic Indication
• What is Geographic Indication (GI)?
 is a name or sign used on certain
products which corresponds to a specific
geographical location or origin (e.g. a
town, region, or country)
 is name or sign used on goods originating
from specific geographical origin or
location and possess qualities, reputation
or characteristics that are essentially
attributable to that place of origin.
 is a branches of IP law which protect
designation of agricultural, cultural,
6/10/2020 129
industrial products
Cont’d…
Cont’d …

• also termed appellation of origin

could be any geographical name or sign such as symbols,
icons, etc.
applies to a product whose quality has been gained by
natural means, the nature of the local climate or soil, or by
the nature of the way it is made, or by local customs of
production of
is a certification of the product that due to its
geographical origin it
 possesses certain qualities,
 is made according to traditional methods, or
 enjoys a certain reputation
6/10/2020 130
Cont’d…
Cont’d …

From these definitions it can be deduced that GIs;

a) protect goods
b) there needs to be a link between the product and a
particular territory (sometimes irrespective of size)
c) reputation, or characteristics of the good should be
attributable to the place of origin
• What is the significance of GI Registration?
Protecting GIs by registration have the following
significance:
 Confer collective and exclusive right to a community of
producers
6/10/2020 131
Cont’d…
Cont’d …

• Prevent an unauthorized use of the commodity registered

as GI by any third party.
 are used as marketing tool; to designate product’s quality,
highlight brand identify and preserve cultural traditions
• Such identification enables the product to gain reputation
and goodwill
 Helps in proper distribution of the economic returns for
small household farmers
• Because registration bring increased demand and a higher
retail price for quality product

6/10/2020 132
Ge

help in preserving age-old heritages

highlighting the indigenous products of African
countries
Investment- job opportunities
Attracts Tourism

6/10/2020 133
Cont’d…
Cont’d …

Examples: protected GIS

EU/North American countries

6/10/2020 134
Cont’d…
Cont’d …

Developing countries

Darjeeling Tea became the first GI

6/10/2020
tagged product in India, in 2004-05,
135
since then by September 2010
Cont’d…
Cont’d …

6/10/2020 136
Cont’d…
Cont’d …

• How do we protect?
• GI is protected through domestic, regional and international
laws
 the National Level protection is under
• Sui Generis GIs: PGI, Indication of source
• Other IPR regimes: Trademarks, trade secretes, collective
marks etc.
• Unfair competition and other related laws
 Regional protection of GIs in Africa
• African regional intellectual property organization(ARIPO)
• African intellectual property organization (OAPI)
6/10/2020 137
Cont’d…
Cont’d …

 International protection
• Paris Convention for the Protection of Industrial Property
(1883)
• Madrid Agreement for the Repression of False or
Deceptive Indications of Source on Goods (1891)
• Lisbon Agreement for the Protection of Appellations of
Origin and their International Registration (1958)
• Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement) (1995) – art. 22, 23

6/10/2020 138
Trade Secrets

6/10/2020 139
Cont’d…

6/10/2020 140
Cont’d…
Cont’d …

• What is Trade Secrets?

 Any information that derives independent
economic value
 refers to data or information relating to the
business which is not generally known to the
public and which the owner reasonably
attempts to keep secret and confidential
 is a formula/ recipe, invention, idea, survey
method, manufacturing process, financial
strategy, client database which is not generally
known or reasonable ascertainable, by which
business can obtain an economic advantage
over competitors
6/10/2020 141
Cont’d…
Cont’d …

 A formula, process, device, or business information that is

kept confidential to gain an advantage over competitors
 Information kept out of view and knowledge from the
public and maintains economic value by keeping it a
secret.
• In some jurisdiction also named Confidential information,
Classified information
• So trade secret grants protection against ‘unfair’
appropriation of these commercial information

6/10/2020 142
 Trade
Secrets
• Coca-Cola has held secret the formula for
Coke for over 100 years - a patent would
not provide such long protection
• Most trade secret lawsuits are common
law actions of stealing & using secrets
• Prosecutors can also press criminal
charges
• Protection in other countries is difficult
• Information is a trade secret if:
– it is not known by the competition
– business would lose advantage if
competition were to obtain it
– owner has taken reasonable steps to
protect the secret from disclosure
• See Issue Spotter: “Protecting Valuable
Information” re: company
representatives who leave to work for a
competitor

6/10/2020 143
Cont’d…
Cont’d …

 CUSTOMER LISTS
 BUSINESS INFORMATION
 EMPLOYEE DETAILS
 FINANCIAL RECORDS
EXAMPLES  DATA COMPILATIONS
OF  BUSINESS PLANS AND
STRATEGIES
TRADE SECRET
 FORMULAE
 DESIGNS
 DRAWINGS
 ALGORITHMS
6/10/2020 144
Cont’d…
Cont’d …

Criteria for Trade Secrets

• The information that kept secret must:
1) not be generally known in the industry,
 must not be readily accessible by people who
normally deal with such type of information
2) give advantage over competitors,
 must have commercial value as a secret
3) attempts to prevent leakage of it must be made
 The lawful owner must take reasonable steps to keep
it secret

6/10/2020 145
Cont’d…
Cont’d …

• When Trade Secrets are preferred?

 When invention is not patentable;
• Some inventions, data, information cannot be protected by
any of the available means of IPRs.
• Such information is held confidential as a trade secret to be
protected
 Patent protection is limited to 20 years, when secret can be
kept beyond that period;
 When cost of patent protection are prohibitive;
 When it is difficult to reverse engineer

6/10/2020 146
Cont’d…
Cont’d …

• National legislations provide protection in form of injunction

and damages if secret information is illegally acquired or
used.
• So long as the owner of a secret keeps it a secret he has a
monopoly
• can be copyrighted and patented any time if they are
original & novel, useful and non obvious
• This means anything which can be copyrighted or patented
can be held as a trade secret
• but the converse is not true
• It 6/10/2020
exists without registration 147
Cont’d…
Cont’d …

• How to guard Trade Secret?

• How can the owner exercise his right to restrict or prevent?
• i.e. the must tools to protect Trade Secrets
• Restricting number of people having access to secret
information through pledge/formal promise/ to secrecy in
employment contracts
• Signing confidentiality agreements with business partners
and employees

6/10/2020 148
3.2.Types [Trade Secrets] Cont’d
Cont’d……

 Employment The must Tools to Protect

Agreement Trade Secrets
 Suitable confidentiality
non-disclosure agreements
 Trade Secret with employees.
Policy
 Employees must be
 Non- informed
disclosure sign an acknowledgement to
that
Agreements
6/10/2020 149
Cont’d…
Cont’d …

 Adequate
Documentatio
n  Businesses must keep a
track of the trade secrets
that are developed and
belongs to them.

 Security
Systems
 Human Technical
+
Security Security
6/10/2020 150
Cont’d…
Cont’d…

• if it is improperly disclosed/
acquired by a competitor,
the holder can get remedy as
per tort, unfair competition
or contract law
• but, the owner must show
he has made reasonable
effort to maintain the
secrecy of the information

6/10/2020 151
3.2.Types [Trade Secrets] Cont’d
Cont’d……

6/10/2020 152
Cont’d…
Cont’d …

6/10/2020 153
Cont’d…
Cont’d …

6/10/2020 154
Cont’d…
Cont’d …

6/10/2020 155
Cont’d…
Cont’d …

 the concept of protecting trade secrets is related to the

principles of trademark and patent law
• the scope of trade secret, however, goes beyond that of
patent law
 A new invention can be protected either with patent or
trade secrets
• But one cannot protect the same invention by both patent
& trade secret

6/10/2020 156
Cont’d…
Cont’d …

• has to make choice out of them as there is no simultaneous

guard
 unlike patent, protection under trade secret is not tied to
information's novelty; rather, its relative secrecy
 unlike patent, trade secret draws less from property
principles, and more from the equitable principles
surround-ing confidential relationships
 unlike the law of patents, the law of trade secrets, is a
creature of the common law rather than statute
 trade secret try to impose a moral solution on cases of
apparent
6/10/2020 breach of confidence 157
Cont’d…
Cont’d …

 trade secret gives the right to restrict methods of acquiring

ideas but patent gives the right to restrict the use of ideas
• trade secret gives the owner the right to keep others from
using information
 trade secret gives the right to prevent its employees from
using the owner’s information in another job
• inhibit a former employee from doing work in just that field
for which his training and experience have best prepared
him

6/10/2020 158
Cont’d…
Cont’d …

Cont’d
• trade secret is about an entrepreneur’s
… right to use
valuable business information or techniques that it
develops
• It severely limits the mobility of engineers and scientists
• coz new firms are reluctant to hire them for fear of
exposing themselves to a lawsuit

6/10/2020 159
Cont’d…
Cont’d …

6/10/2020 160
Cont’d…
Cont’d …

 Prone to reverse
engineering
 Not require
6/10/2020 161
3.2.Types of IP [Summery]

• Copyright Patent Trademark

Literary & artistic Process, machine, Distinctive ‘marks’ or
Works works composition of matter appearance
Novelty,
Originality, Distinctiveness,
Standard authorship, fixation Nonobviousness,
secondary meaning
Utility
Automatic;
Registration + use at
Acquisition registration for Application process
Federal level
remedies

Law exclusively federal exclusively federal plus state laws

6/10/2020 Life of author + 50 20 years from Perpetual, subject

162 to
Term
6/10/2020 163
6/10/2020 164