by Shrimant Singh, Partner, S&A Law Offices; and Heena Lamba, Senior Associate, S&A Law Offices
The construction industry in India has evolved leaps and bounds especially in last two decades.A major shift from Unorganized to Organized operations has been observed in construction firms, the changes are substantial as to how the construction businesses functions at different levels.We can see entire gamut of changes in project management be it in execution, logistics, work force management, procurement, delivery, or marketing, etc. This progressive evolution has transformed how a construction business is conducted today - the industry is driven by innovations implementing new age processes, resource management, research on construction technology, market requirements, construction equipment, and robotics & automation. With so much of innovation and unique approach towards businesses, protection and enforcement of intellectual properties rights (IPR) has become imperative for any commercial entity. The leaders in the industry have duly recognized the importance of creating and protecting intellectual property and reaping benefits out of the same.
Need of IPR registration: The better the innovation, unique & attractive tradename, engineering innovation, architectural uniqueness and innovation is, the more it is prone to be misappropriated in the market by competitors, hence, IPR recognition, diligent IPR protection and forceful enforcement of IPR is quintessential. Simply put, an intellectual property is registered to the exclusion of others, ie, the owner can stop others from using, making, selling or commercially dealing in such IP without the consent of the owner. The most relevant IPs for construction firms would be trademarks, patents, architectural copyrights, trade secrets & proprietary information, and domain names.
Trademarks (TM) rights arise by use of the mark/logo/tradename in business in association to the product or services offered by a business entity. A construction firm’s tradename is often associated with its quality of work and goodwill, therefore, attempts are made by competitors to misappropriate a reputed tradename to have quick gains even though by unjust means. The same is not limited only to tradenames but also applicable for any and all brands or logos associated with constructional project undertaken by a reputed construction firm. One such rampant example in the construction sector is naming of big residential or commercial projects. If a reputed construction firm launching a big project fails to appreciate and apply for registration of its tradenames, brands, trade dress, and take proactive steps to enforce said trademarks, it loses the first mover advantage and exclusivity over the project name, look and feel often leading to identity crises of the project. Soon enough after the launch of a big construction project, several similar named projects start to mushroom from smaller/wannabe construction firms. Big projects usually have huge market value, reputation, and media promotions, but all this effort and expenses go in vain if the owner did not diligently protect its IPs. Therefore, it is important that the core team of such projects and management of construction firms are fully informed about various IPs and related rights; they should be able to identify IPs and timely register them so as to protect their stake and exclusivity in the market.
Patent is for protecting inventions: primary criteria are that the ‘claimed invention’ shall be novel, non-obvious to a person skilled in the art and has industrial applicability. In contemporary times, innovation is essential for success of businesses, and same is true for construction firms as well. Construction entities are keen on employing novel innovative methods and utilizing innovative machinery and equipment; hence, it is imperative to identify and patent such innovations by the Firm and/or its employees or subsidiaries. Research and development in construction businesses are generally in the fields of mechanical engineering, civil engineering, heavy machines, instrumentation engineering, computer-aided designs, prefabrication of construction units, robotic total stations (RTS), sustainable building materials, cloud computing - data analytics, etc. Such innovations by Indian construction firms resulting in improvement in efficiency and strength of the structures warrant due recognition and protection under IP laws so that the owners can reap benefits out of such innovations. Few examples of inventions in construction field which have been applied for patent in India are automatic construction device (IN202211002180), method and process of economical building construction (IN202211000870), construction safety management system based on artificial intelligence machine vision technology (IN202221000836).
Architectural Copyrights is an intellectual property for protecting original and novel works of an architect and provides exclusivity by way of copyright over the same. A few examples that can be protected under this head includes novel architectural works, blueprints, BIM, design documents including process protocols, adaptations, elevations and sometimes even the structure itself, provided they satisfy the basic requirements of unique creative outcome in some tangible form and originality.
Trade Secrets, one of the forms of intellectual property, although difficult to enforce, is trade secrets. As the name suggests, the owner needs to protect the proprietary process by keeping in confidential. In case of breach of trade secret, the owner may resort to law of torts and/or breach of trust amongst other means to sue the infringing party. Many construction firms try to keep their unique process, resources and data management as part of trade secrets, however, it is highly recommended to identify and move towards registrable IPs so to have strict and clear enforcement of intellectual property rights.
Domain Names: In this digital age, the first window of any business is their website, therefore, construction firms as well shall be diligent in acquiring domain names relating to their trade names, brands, project names. It is advisable to go for broader combinations of domain name registrations so as to prevent any competitor to have a substantively similar domain names to confuse the customers and misappropriate the brand reputation of an established construction firm or its projects.
Few challenges that construction firms face when it comes to IP
- due importance is yet to be given to creating, identifying, registering and enforcing IP rights within the construction firms;
- in case of any infringement of IP, even minor in eyes of the proprietors, shall be aggressively enforced and due actions shall be taken against infringers – this by itself acts as effective deterrent against any future infringements;
- construction firms must realize that its IP has the potential to grow infinitely, even surpassing the valuation of any tangible asset owned by the firm;
- active watch over all forms of IP – catching any and all unauthorized use of IPs, at the same time keeping a watch on competitors new IPs to gauge their strength and weaknesses; and,
- proper documentation with due emphasis on IP - internal documentation (with employees and subsidiaries) as well as external documentation (with 3rd party suppliers, vendors, marketing agencies, sub-contractors, etc)
Construction is one of those sectors which are heavily dependent on reputation and consistent high quality. Therefore, aggressive protection and enforcement of IP is not only a deterrence for competitors but more importantly it can create unparallel value and recognition for a construction firm. The above points give more than good reasons for construction firms to be more proactive on their IP rights, register the same, and further their IPRs by way of proper documentation, agreements with all parties, licensing/transfer of such rights, and last but most important forceful enforcement of the IP rights.
