Idea/concept

Types of properties

Moveable
Tangible
Immoveable
Property

Intangible Intellectual Property

Intellectual Capital
Human Capital (employee skills,
knowledge, experience), Structural
Capital (systems, processes, IP,
culture), and Relational
Capital (customer relationships,
brand reputation, networks).
COST
PRICE
VALUE
 IPRs are legally induced market exclusivities meant to foster innovation
 Territorial in nature, but the investigation is global
 Intellectual property rights are the rights (exclude and include) given to persons over the creations
of their minds.
 Provide strong positive incentives to invest in innovation Without patents, the return from investment
in pharmaceutical research and development would fall to zero, and private companies would no
longer engage in research and development
 They usually give the creator an exclusive right, mostly statutory over the use of his/her creation for a
certain period of time. Protected only for a limited period; after that, these properties must go to the
public. (subject to re-registration in a few IPRs).
 All IPRs must have a commercial value.
 If there is a conflict between a private and public right – latter will prevail
 The rights include usage, sale, distribution, protection and transfer of technology through
assignment, licensing, franchising, functional and enabling.
IP RIGHTS DISTINGUISHED

Shape ?
Creative
layout ?

Brand?? Useful cap ?

Any IP ? 9
IP RIGHTS DISTINGUISHED
And a Product may incorporate several forms of IP!

Design
Copyright

Trademark ? Patent

Any IP ? 10
 ‘Intellectual Property Rights’ is basically a concept wherein all the three terms:
 ‘Intellectual’, ‘Property’ and ‘Rights’ carry an independent meaning and when all of
them are put together, they become an important aspect of properties.
 Intellectual- refers to creations of the mind, something which is intangible but has a tangible
value to it.

 Property- These properties have all the attributes of tangible properties, ‘Possidendi Utendi
Disponendi i.e. they have a right to possess, right to use and right to be disposed off.

 Rights- Intellectual properties are adapted into rights only when under statutory provisions
governing them determines the duration for which ownership lies with creator of these
properties have been complied with and have been registered as per those acts.
 Helps to be a differentiator with proprietary (ownership) rights
 Capital expenditure for new products
 R and D Rights of owners
 Marketing and advertisement • Can be sold
• Can be bought
 No free loaders
• Can be lease or rent
 Maintaining loyal followers
• Can pass under a will
 Profits • Can be assigned
• Contract of service and contract
for service
Copyright
+
Industrial rights which includes patents, trade secrets, trademarks,
geographical indications
=
Intellectual property rights

 Intellectual: creative human activity

 Property: special form of ownership
 Other characteristics: negative, exclusive, absolute
 1873, World Exposition, Vienna, Austria
 Objective to promote
 Knowledge
 Education
 Culture
 USA boycotted this event on the ground that rights of inventors were limited to
their own country and hence there was a fear of copying IPRs at the exposition.
 Led to provisional protection
 Paris Convention For The Protection Of Industrial
1883 Property
Berne Convention For the Protection of Literary and
1886 Artistic Work
Madrid System For The International Registration of
1891 Marks
United International Bureaux for the Protection of
1893 IPRs (BIPRI)
BIPRI became World Intellectual Property
1970 Organization
WIPO joins UN- 189 members, administers 26
1983 treaties and WIPO Conventions
1995 Trade Related Intellectual Property Rights (TRIPS)
 The TRIPS Agreement emerged from the Uruguay Round of the General Agreement on Tariffs
and Trade (GATT) negotiations, which took place from 1986 to 1994.
 Developed countries, argued that the lack of consistent IP protection across countries hindered
international trade and investment flows
 Endeavours to incentivize the creation and dissemination of intellectual property.
 Sets out minimum standards of protection for a wide range of intellectual property rights and
by ensuring that IP rights could be enforced under a common legal framework.
 Foster a more predictable and secure trading environment, encourage innovation and creativity,
and facilitate the transfer of technology between countries. (Globalised economy)
 Is the world changing – Protectionism (2026)
 Establishing Minimum Standards of Protection: TRIPS sets out the minimum standards of
protection for various forms of intellectual property rights that each member country must
implement within their national laws.
 Non-Discrimination: Embodied in the principles of national treatment and most-favored-nation
treatment, TRIPS mandates that WTO members must offer the same level of protection to IP rights
holders from other WTO member countries as they do to their own nationals.
 Enforcement of Intellectual Property Rights: TRIPS specifies detailed obligations for member
countries to enforce IP rights effectively, ensuring that rights holders have access to fair and
equitable legal mechanisms to defend their interests.
 Balancing Rights and Obligations: TRIPS recognizes the need to balance the rights of IP
holders with the broader public interest, particularly in relation to public health, technological
innovation, and the transfer of technology to least-developed countries.
 Flexibilities for Developing and Least-Developed Countries: The agreement provides certain
flexibilities for developing and least-developed countries, allowing them more time to align their
domestic laws with TRIPS standards and acknowledging their need for flexibility in achieving the
agreement’s objectives.
 Use of the WTO Dispute Settlement Understanding (DSU): The TRIPS Agreement relies on the
WTO’s Dispute Settlement Understanding (DSU) as the primary mechanism for resolving disputes
between members.
 The DSU is a detailed set of rules and procedures for resolving disputes and is considered one of the
central pillars of the WTO trading system. It provides a comprehensive, compulsory, and binding
process for the settlement of disputes on matters under the WTO agreements, including TRIPS.
 Consultations: As a first step in the dispute resolution process, the DSU encourages member states
to conduct consultations with each other to resolve their differences amicably. If consultations fail to
resolve the dispute within a specified period, typically 60 days, the complaining party can request
the establishment of a panel.
 Panel Establishment and Ruling: A panel of experts is established to examine the dispute based
on the submissions and arguments of the parties involved. The panel then issues a report detailing its
findings and recommendations. If either party is dissatisfied with the panel’s report, it can appeal the
decision to the WTO’s Appellate Body.
 Implementation of Rulings: Once the panel or Appellate Body report is adopted, the member state
found to have breached its obligations under the TRIPS Agreement is expected to bring its policies
into compliance. If compliance is not achieved within a reasonable period, the Dispute Settlement
Body may authorize retaliation, typically in the form of suspension of concessions or other obligations
under the WTO agreements.
Different Acts governing IP assets in
India
The Trade Marks Act, 1999
Trade Marks

The Patents Act, 1970

Patents

Copyright The Copyright Act, 1957

The Designs Act, 2000

Designs

The Geographical Indications

Geographical Indications Of Goods Act, 1999
The Protection of plant varieties and
Plant Varieties Farmers’ Right Act, 2001
Semi conductor IC layout design
Semi conductor IC layout Act,2000

20
 CONTROLLER GENERAL OF PATENTS, DESIGNS
AND TRADEMARKS
(CGPDTM)

IPTI ,NIIPM,
PATENT OFFICE T M REGISTRY G.I. REGISTRY
P.I.S. Nagpur

Head Office
Head Office DESIGN OFFICE CHENNAI
MUMBAI
KOLKATA

Branch DELHI
DELHI KOLKATA

Branch KOLKATA
CHENNAI

Branch CHENNAI
MUMBAI

A’BAD
Letters patent- Latin word ‘patere’ means to open/disclose to the state in case of patents
 500 BC: monopoly granted to new dishes in Greece.
 Guilds in the Roman empire were granted monopoly.
 As trade increased in the Middle Ages guilds felt the need to protect their innovations.
 The apprenticeship model evolved in the guilds which was used effectively to teach the craft
and ensure that it remained within the guild.
 Venetian glassmakers followed this model wherein quality was given emphasis. As
reputation increased the guild brought in many rules and restricted the members from
disclosing their art to others.
 Early monopolies were in the form of communal properties.
• Traces of modern patent system can be found in Florence and Venice.
• It is ambiguous as to whether patent system originated in Florence or Venice.
• A boat-maker had come up with a vessel that could haul heavy material over waters and was
granted a monopoly for three years in Florence.
• Venice came up with a patent statute in 1474 which was largely meant to encourage talented
individuals to come up with new inventions.
• The statute envisaged a system of registration on the basis of novelty.
• Infringers were to pay a fine to the inventor.
• Monopolies were granted mainly through Royal Charters and Letters Patent. 16 July 1331 King
Edward III of England granted letters patent to John Kempe of Flanders, 'weaver of
woollen cloths', to enter England with his men and exercise and teach his trade freely under
the king's protection.
• Letters patents were open directive issued by the King declaring that a particular individual has
been granted a monopoly and that no individual can interfere with it.
• Earliest Letters Patent can be traced back to 12th century AD.
• Gradually monopolies were granted to guilds who had exclusive rights to sell their products
within a particular region.
• But it gradually gave way to individual monopolies as trade increased.
1. Privileges that were short of monopolies were granted to individuals who
introduced new technologies in the country.
2. With the increase in competition from the continental Europe it became
necessary to allow foreign artisans to practice their art in England.
3. Artisans were granted privileges wherein they could practice their art for a
particular duration.
4. But they were required to train locals in that period through the apprentice
model.
5. Numerous letters patents were issued largely to ensure that England could
compete with their continental neighbours and also to increase revenues
through taxes.
• Queen Elizabeth continued the trend of issuing privileges to artisans who introduced new
technologies in the country but with certain riders.
• Any privilege granted had to be worked with in a specific duration otherwise it was revoked.

• Further, person holding the privilege was required to train locals in the art at least for 14 years.
This allowed the locals to learn the art.
• While in her early days these privileges lured numerous artists from other countries to introduce
their new art, later on it turned out be a matter of grave concern.
• Elizabeth in her later years started to grant monopolies over existing art like salt making, cards
etc which was largely seen as an abuse of power by the royalty.
 Elizabeth granted a monopoly over making and selling of playing cards to Darcy for a period of
12 years which was extended further.
 This meant that others could not make playing cards and there was only one manufacturer in the
market.
 This allowed Darcy to bring action against several card makers and also to increase the price.
 As making cards was not a new art it affected number of card makers.
 Some members of the Parliament were irked by such monopoly grants and questioned the abuse
of power by the royalty.
 The issue of monopoly was challenged in the courts.
 It was argued that the such monopolies were not legitimate as it did not introduce new art.
 It was argued that common law would not allow for such monopolies to be granted as it resulted
in the abuse of markets.
• In early part of the 17th century, a grievance committee of the House of Commons raised
concerns over monopoly issued by the royalty.
• King James I considered the matter and declared that monopolies were not good for the
society and cancelled some monopolies. However, he reserved the right to issue monopoly
if someone introduced a new art.
• King James I though continued to issue monopolies which were questionable.
• The Clothworkers of Ipswich Case in 1615 raised a number of concerns about the power to
issue monopolies.
• King James allowed monopoly to a group of tailors to sell their services in Ipswich
antagonizing the local tailors.
• Court declared such monopolies to be against free-trade and as such illegal.
• But if a new invention is introduced then a monopoly can be granted to encourage the
inventor to introduce new art.
• Even after the Ipswich case the practice of issuing odious monopolies continued which forced
the Parliament to pass a legislation.
• King James allowed the court to cancel the monopolies but this did not silence the Parliament.
• In 1623, after reviewing the effect of monopolies the House of Commons decided to pass the
Statute of Monopolies.
• This legislation became the framework for patent practice.
• It cancelled all monopolies granted prior to it except for those which are related to new
inventions.
• Any new invention was granted a monopoly period for about 14 years.
• It required the inventor to train two generation of artists (that is at least train two artists for a
period of seven years each). First to approach the patent office was granted a patent monopoly.
• Although inventors filed a written description of the invention it was not in the form of the
modern day specification.
• For a period of 150 to 200 years there was no mandatory filing of the specification. It was largely
voluntary on the part of the inventor to include a written description of the invention.
• This case resulted in the requirement that patents would be granted only in exchange of filing
a specification.
• Liardet had a patent over cement.
• He claimed that Johnson violated his patent for making cement without his permission.
• Johnson alleged that Liardet’s invention was not novel .
• Johnson said that Liardet’s invention was already in use prior to the grant of the patent.
• He demonstrated this by showing two publications prior to the grant of the patent.
• showing prior publication established that it was already in practice.
• While deciding the case Justice Mansfield mentioned that it is necessary for the patent holder
to clearly describe the working of his invention in a specification.
 WIPO- ‘A patent is an exclusive right granted for an invention, which is a product or a
process that provides, in general, a new way of doing something, or offers a new
technical solution to a problem.’
 A Patent is a statutory right for an invention granted for a limited period of time to
the patentee by the Government, in exchange of full disclosure of his invention for
excluding others, from making, using, selling, importing the patented product or
process for producing that product for those purposes without his consent.
 Patent is granted for an “invention” – this is a universally accepted principle of patent law.
 The patent specification describes the invention and if the application is granted by the
Patent Office, the patentee is entitled to exclusive rights over the “invention”.
 Section 2(j) of the Patents Act, 1970 defines the term invention in the following terms:
 “invention” means a new product or process involving an inventive step and capable of industrial
application”
 The invention must be a “product” or a “process”.
 In order to qualify as an invention, a product or process:

 Must be “new”; and

 Must involve an “inventive step”; and
 Must be “capable of industrial application”


 An invention to become patentable subject matter must meet the following criteria:
i) It should be novel (not a prior art)
Invention should not have been published or used anywhere in the world before the
date of filing the patent application in the patent office.
ii) It should have inventive step; it must be non-obvious
According to the Patents Act, 1970 (as amended in 2005) Sec 2 (ja) "inventive step"
means a feature of an invention that involves technical advance as compared to the
existing knowledge or having economic significance or both and that makes the
invention not obvious to a person skilled in the art;
iii) It should be capable of Industrial application. (utility of invented process or
product)
Provided subject matter is patentable.
The Supreme Court in the Novartis case broke down Section 2(ja) into the following:
“It [The product] must come into being as a result of an invention which has a feature that:
(a) Entails technical advance over existing knowledge;
Or
(b) Has an economic significance
And
(c) Makes the invention not obvious to a person skilled in the art”
(a) an invention which is frivolous or which claims anything obviously contrary to well
established natural laws;
(b) an invention the primary or intended use or commercial exploitation of which could
be contrary public order or morality or which causes serious prejudice to human, animal
or plant life or health or to the environment;]
(c) the mere discovery of a scientific principle or the formulation of an abstract theory [or
discovery of any living thing or non-living substances occurring in nature];
[(d) the mere discovery of a new form of a known substance which does not result in the
enhancement of the known efficacy of that substance or the mere discovery of any new
property or new use for a known substance or of the mere use of a known process,
machine or apparatus unless such known process results in a new product or employs at
least one new reactant.
Explanation. -For the purposes of this clause, salts, esters, ethers, polymorphs,
metabolites, pure form, particle size, isomers, mixtures of isomers, complexes,
combinations and other derivatives of known substance shall be considered to be the
same substance, unless they differ significantly in properties with regard to efficacy;]
(e) a substance obtained by a mere admixture resulting only in the aggregation of the
properties of the components thereof or a process for producing such substance;
(f) the mere arrangement or re-arrangement or duplication of known devices each functioning
independently of one another in a known way;
(h) a method of agriculture or horticulture;
(j) any process for the medicinal, surgical, curative, prophylactic [diagnostic, therapeutic] or
other treatment of human beings or any process for a similar treatment of animals to render
them free of disease or to increase their economic value or that of their products.
(j) plants and animals in whole or any part thereof other than micro-organisms but including
seeds, varieties and species and essentially biological processes for production or
propagation of plants and animals;
(k) a mathematical or business method or a computer programe per se or algorithms;
(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever
including cinematographic works and television productions;
(m) a mere scheme or rule or method of performing mental act or method of playing game;
4 Inventions relating to atomic energy not patentable.
-No patent shall be granted in respect of an invention relating to atomic energy
falling within sub-section(1) of section 20 of the Atomic Energy Act, 1962 (33 of
1962).
PCT
 Making it easier to make patent application
 Designated country.
 International phase to national phase.
 Novartis AG v. Union of India One of the most significant legal battles in the context of TRIPS and
the pharmaceutical industry in India was Novartis AG v. Union of India. Novartis, a Swiss
pharmaceutical company, sought patent protection in India for its cancer drug, Glivec. The Indian
Patent Office rejected the application, citing Section 3(d) of the Indian Patent Act, which prevents
patenting of new forms of known substances unless they differ significantly in terms of efficacy.
 Novartis challenged the rejection, arguing that the Indian patent law’s criteria were not TRIPS-
compliant. However, the Supreme Court of India upheld the Patent Office’s decision in 2013,
affirming that the enhanced efficacy required for patenting had not been demonstrated. This
landmark ruling was celebrated by public health advocates for its implications for access to
medicines, demonstrating how India navigated TRIPS obligations while maintaining its
commitment to public health.
 Software and IT Industry
 Copyright Protection Challenges: The software and IT industry has faced its own set of
challenges in the post-TRIPS era, particularly regarding copyright protection. The global
standardization of copyright laws under TRIPS has necessitated stronger enforcement mechanisms
in India, but issues such as piracy and unauthorized use remain prevalent.
 Case Study on Software Patents: India’s stance on software patents has been a subject of much
debate. While the Indian Patent Act does not explicitly allow patents for software or computer
programs per se, patents can be granted if the software in question is a part of a novel invention
that results in an “industrial process.” This nuanced position reflects India’s effort to balance
innovation in the software industry with broader access to technology.
 Protection of Traditional Knowledge Under the TRIPS Framework: The protection of
traditional knowledge (TK) presents unique challenges in the context of TRIPS. While TRIPS sets
global standards for IP rights, it has been criticized for not adequately addressing the protection
of TK and associated genetic resources, which are crucial for many indigenous and local
communities in India.
 Turmeric Patent and Neem Patent Controversies: Two notable cases exemplify India’s
struggles and successes in protecting its traditional knowledge at the international level:
 Turmeric Patent: The US Patent and Trademark Office (USPTO) granted a patent on the wound-
healing properties of turmeric, a traditional use well known in India. The Indian government
successfully challenged this patent, leading to its revocation, showcasing the importance of
protecting traditional knowledge from biopiracy.
 Neem Patent: Similarly, a patent granted in the European Patent Office (EPO) for a fungicide
derived from the neem tree was challenged by India, citing the traditional use of neem in Indian
agriculture. The patent was eventually revoked after a prolonged legal battle, marking another
victory against the inappropriate patenting of traditional knowledge.
1. The first step starts with a prior art search which means a thorough search of various patent
databases, technical literature and can even include a market survey.
2. The above step is ensure that the invention is novel and non-obvious on the date of filing the
application.
3. Once the patentability of the invention is established after a thorough prior art search, a patent
application should be drafted. This document is known as the complete specification.
It must comprise:
I. Title of the invention indicating its technical field
II. Abstract
III. Prior art and drawbacks in the prior art (if any)
IV. Solution provided by the inventor to obviate the drawbacks of the prior art
V. A concise but sufficient description of the invention and its usefulness
VI. Details of the best method of its(invention’s) working
VII. Claims
 Following are the steps in the registration process:
I. File a patent application in the IPO (Indian Patent Office)
II. Patent application is published after 18 months or one has to request for early
publication
III. File a request for examination along with requisite fees within 48 months from date of
filing-without the request the application will not be examined (Form 18)
IV. First Examination Report (FER) is issued if Patent office is not satisfied
V 12 months time to respond to the FER
VI. Pre-grant opposition can be filed by any person after the date of publication of
application but before the grant of patent
VII. If requirements are satisfied, patent will be granted and notified in the Patent Office
Journal
 It takes around 3 to 5 years to get a patent.
 The term of every patent in India is 20 years from the date of filing and not the date of grant of
patent.
 PCT stands for Patent Cooperation Treaty.
 It is an international treaty for claiming one’s domestic priority (date) in member countries of
PCT.
 Through PCT one can file applications in countries of interest within 30 months of the priority
date.
 Under the PCT system, a patent search report is provided and on demand a preliminary
examination of application is also done.
 India is a member to this convention. Hence, if one applies for registration of patent in any
member country, within six months from the date of filing of patent application in India, they
will have the same priority as in India.
 Patent protection is territorial right and therefore it is effective only within the territory of India.
 Filing an application in India enables the applicant to file a corresponding application for same
invention in convention countries, within or before expiry of twelve months from the filing date
in India (PCT)
 A patent application can be filed either by true and first inventor or his assignee, either alone
or jointly with any other person.
 However, legal representative of any deceased person can also make an application for patent.
 Term of every patent in India is 20 years from the date of filing of patent application,
irrespective of whether it is filed with provisional or complete specification.
 In case of applications filed under PCT the term of 20 years begins from International filing
date.
 India ranked 38th out of 139 economies in the Global Innovation Index (GII) 2025,
rising from 39th in 2024 and 66th in 2019.
 It maintained its top position among lower-middle-income economies and first in
Central and Southern Asia, driven by strengths in ICT services, exports, and
startups.
 The Start-up India Scheme, IPR Awareness Creative India, Innovative India Scheme
 The setting up of incubation centres, allow tax exemption for start-ups, provide up
to 80% rebate on patent application fees, allow faster exits for start-ups, provide
relaxed costs for women inventors etc.
 Process – novel, invention step
and industrial application
New Product
Herbs ?
New Process of making juice ?
Cold pressed ?
Trade secret ?
 According to WIPO a trade secret is:
 "Any confidential business information which provides an enterprise a competitive edge may be
considered a trade secret. Trade secrets encompass manufacturing or industrial secrets and
commercial secrets."
 Brands like Coca-Cola, KFC, etc. keep some of their recipes secret and use that strategically
for advertising and brand image.
 Protected as a part of contractual obligation.
 Any kind of unauthorized use or disrespect for the secret information can attract serious
corporate criminal indictments including charges relating to commercial and industrial
espionage, breach of trust and breach of contract.
Industrial design refers only to the ornamental or overall visual
appearance of a product
1. Design should be new or original, not previously published or used
in any country
before the date of application for registration.
2. Design should relate to shape, configuration, pattern or
ornamentation features, and composition of lines or colors applied to
an article.
3. Design should be applied to any article by any industrial process
or means, whether manual, mechanical, chemical, separate, or
combined.
4. Design should not be linked to any functional aspect of the article.
 The following cannot be protected:
 A manufacturing process;
 Functional features of an article
 A principle of construction, or how an article is built
 The materials used in the construction of an article
 The useful purpose (functionality) the design serves or is intended to serve
 Colour per se or Ideas
 Duration- Registration of a design lasts ten years
from the date of registration which can then be
renewed for another five years. The full term for
registration can be, at most, 15 years.
 Filing- File Industrial design applications at any
branch of the Office of the Controller General of
Patents, Designs, Trademarks, and Geographical
Indications.
 The time is taken to register an industrial
design in India- about 6 ~ 10 months for industrial
design registration in India.
1. Cello was granted registration in the design in 2016

2. Cello sought an injunction on two grounds:

Passing Off.

Design Infringement.
 Passing off is making a representation that induces customers to believe that a product
originates from a particular manufacturer without it originating from that manufacturer. It is
required to be prevented:
1. To protects a trader’s property (goodwill)
2. Preventing confusion in the minds of the consumer.
Test - “classical trinity”:
1. Existence of Reputation and Goodwill.
2. Existence of the Fact of Misrepresentation.
3. Possibility of Irreparable Injury.
 Ancient Greeks used symbols and marks on their artefacts and potteries
 Egyptian used it on their structures
 Romans used symbols on bricks
 Sword manufacturers in England were required to use symbols to identify the makers.
Defective swords could be traced back to the maker.
 Later on came to be associated with merchandise makers and trade increased
 London bakers- Bakers pound
 Largely guild marks protected goodwill of the guild not the individual trader
 Harsh Punishment for counterfeiters
 Southern v. How: cloth merchant-case of deception
 Emergence of guilds in the 14th and 15th century.
 Guilds reputation and risk of counterfeits
 Marks as source identifiers
 Required all members of the guild to identify themselves.
 Street name, guild mark, year of manufacture required.
 Enabled guild members to trace back and punish a member who did not maintain quality.
Sandford’s Case
Plaintiff sold clothes with the mark J.D. and had developed a reputation for quality clothes. Both
customers and traders would buy his products for the fine quality and the reputation he had in
the market.
They would purchase clothes largely relying on the mark J.D. Defendant deceitfully used the
mark on law quality clothes and sold it in the market for two years.
As a result of the defendant’s low quality goods it became difficult for the plaintiff to sell his
goods in the market as customers and traders who bought from the defendant associated that
the goods were of low quality.
Brought a claim for trespass. Court allowed the plaintiff to recover damages for interfering with
the plaintiff’s property.
English courts had the opportunity to decide on the right to use a mark in
1824. Plaintiff complained that the defendant used his mark Sykes on his
product, which resulted in the drop in sales. Court agreed that the
defendant was relying on the reputation of the plaintiff to sell his goods.
Subsequent cases were brought based on deceit, i.e. defendant
defrauded the plaintiff. Founded on the basis that the plaintiff had
property rights in the mark.
Subsequently …
 Immaterial whether the defendant knew about the plaintiff’s mark or intended
to commit fraud against the plaintiff. [Millington v Fox]
 Court recognized actions on the basis that there is property rights in the
marks and not merely on the basis of deceit. [Leather Cloth Co. v. American
Leather Cloth]
1. Merchandise Marks Act in 1862 allowed traders to bring action on the basis of
deceiving the owner of the mark.
2. Trademark registration Act was passed in 1875
3. Trademark Act in 1905 provided for the registration of marks based on intent to use.
4. It allowed for applications to be filed and introduced an examination system.
 Trademark is a sign that helps distinguish the products from a particular producer or
enterprise from those of its competitors by providing a distinctive sign to goods or services
produced by an enterprise, trademarks create an enduring image in the customers’ mind.
 Trademarks may be a word or a combination of words, letters and numerals.
 They may also consist of drawings, symbols, 3D signs such as shape and packaging of goods,
or colours used as a distinguishing feature.
 WIPO- “A trademark is a sign capable of distinguishing the goods or services of one enterprise
from those of other enterprises.”
 According to The Trademarks Act, 1999, Section 2 (zb) “trade mark” means a mark capable of
being represented graphically and which is capable of distinguishing the goods or
services of one person from those of others and may include shape of goods, their
packaging and combination of colours: ….

a. Collective mark – Tata, Reliance, domain names

b. Certification mark – FISSAI, ISI, ISO, AGMARK, Silk Mart of India, Energy stars on
electronics,
c. Well known trademark – Zee, Emiartes, Starbucks, etc.
d. Service marks – CA, Lawyers, consultants, etc.
 Names
Suggestive marks – Paypal
 Letters Fanciful- Banana IP
 Words Random – Apple, Beetles
 Font style and size Unregistered – Samsung
 Numerals
 Colours
 Shape, 3 D
 Packaging
 Any combinations
 For the purpose of classification of goods and services for registration of trademarks, India
follows the International Classification of Goods and Services (Nice Classification)
published by World Intellectual Property Organization (WIPO).
 1-34 : Goods
 35-45 : Services
 [Link]
 Fluid trademarks refer to a method of capturing various versions of a particular trademark
which may not be very dissimilar to each other.
 They should be designed in such a way that various versions of a trademark should identify
with the same source.
 Trademarks are territorial in nature. This means that statutory protection is given only in the
countries where the Trademark is registered. So, if you want to prevent a cross-border
infringement of your Trademark, it is essential that you write it in every country where you want
to use it.
 India has joined the Madrid Protocol with effect from 8th July 2013.
 After the amendment in the Trade Marks Act in 2010, Chapter IV A was inserted, which contains
the special provisions relating to the protection of trademarks through international
registration under the Madrid Protocol.
 This amendment allows Indian entities to register their trademarks in 97 countries by filing a
single application.
 In the same way, it also allows the foreign entities of the member countries of the Madrid
Protocol to register their mark in India.
 One of the significant changes brought about by the 2010 amendment is the inclusion of the
words "within eighteen months of the filing of the application" in Section 23 of the Trade
Marks Act.
 Infringement A trademark is said to be infringed by a person, who, not being a permitted
user, uses an identical/similar/deceptively similar mark to the registered trademark
without the authorisation of the registered proprietor of the trademark.
 Passing off is a common law tort used to enforce unregistered trademark rights.
Passing off essentially occurs where the reputation in the trademark of party A is
misappropriated by party B, such that party B misrepresents as being the owner of the
trademark or having some affiliation/nexus with party A, thereby damaging the goodwill of
party A. For an action of passing off, registration of a trademark is irrelevant.
 Significantly, infringement of a trademark is a cognizable offence and criminal proceedings
can be initiated against the infringers.
Unregistered
Registered
 The process of registration of the trademark consists of the following steps:
 SEARCH: Conduct a trademark availability search
 FILING: Trademark application to be filed with Trademark office
 EXAMINATION: Trademark Office examines the registrability of the application
 PUBLICATION: Acceptance of application by the Registrar is published in Trademark
Journal
 OPPOSITION: After publishing of applications in the Trademark Journal, third party(ies) can
oppose the registration within 4 months in a prescribed format.
 Applicant has the option to provide justification to the Trademark Office for such opposition
 NO OPPOSITION: Trademark is entitled for registration
1. Writing on leaves and parchments.
2. Romans practiced a system of dictation that allowed many copies of the same book.
3. System of wooden print blocks invented in China, but not followed extensively in Europe.
4. Very few books before the 15th century AD.

Two important developments

1. The use of paper was an important
development
2. Invention of the movable printing press
by Gutenberg in the 15th century
3. Resulted in thousands of books coming
into circulation.
4. Easy circulation of books
• Some books and literature were critical of the practices of the church and the
monarch. Challenge to the church and the monarchs controlling such works
through censorship.
• church prevented heretical works from being published. The monarch used
different instruments to control and regulate the flow of information.
• Printers were licensed to print certain books for a fixed number of years.
• Printers were granted in the form of privileges. Earliest privilege granted in the
city of Venice.
• privileges were to exclusively publish a particular book for period not
exceeding fourteen years.
• In England, Queen Elizabeth would grant privileges in the form of monopolies
to printers.
1. Edward VI granted the Charter of the Stationers’ Company in the 16th century.
2. It empowered London based printers to govern and control the printing of books.
3. It allowed them to search for illegal printers and books
4. Stationers’ company could seize, take or burn the books that were not registered with
them.
5. King effectively exercised censorship through the Stationers’ Company
6. The Stationers’ Company also benefitted as it allowed them to prevent entry of new
printers as well as control the flow of information.
• The Stationers’ created their copyright and kept control of it for themselves.
• Stationers’ copyright, was a private law copyright.
• Registration of the book’s title (mandatory since 1662 with the Licensing Act)
• Perpetual monopoly
• Policies to avoid competition
• In 1694 the powers exercised by the Stationers’ company was not renewed.
• This ended their control over the printing press.
• In 1709, the Statute of Anne was passed by the Parliament that recognized the rights of
the author.
• This was the earliest legislation on copyright.
1. The Statute of Anne came into force in 1710
2. Aimed at encouraging learning
3. Vesting rights in the author to print and copy his work
4. Protected the publisher by protecting the work for a period of 14
years.
5. The authors’ exclusive right was for 14 years but could be extended
to a second term if he was living at the end of the first term.
6. Any previous work, i.e. prior to 1710 were protected for 21 years.
7. It was aimed at striking a fine balance between the author,
publisher and the public.
8. It sought to protect the interest of all three stakeholders
1. The booksellers, especially those in London were aggrieved about the duration of the
protection.
2. Any work that fell out of protection could be printed by anyone.
3. The Scottish printers began to do so.
4. Booksellers argued that common law recognized an author’s copyright which was not limited
in time
5. They also argued that an author could assign the copyright in the book to the bookseller
through a contract.
6. Multiple cases were fought like the Millar v. Taylor; Midwinter v Hamilton
7. London booksellers argued for perpetual copyright
8. Argued that authors will have no incentive to create new work.
9. Any limitation in bequeathing the rights to their family estate would be a major limitation.
10. The Scottish booksellers argued that perpetual copyright would impede the flow of
information.
11. Nothing short of going back to the dark ages.
1. The booksellers were dissatisfied that the Statute of Anne only allowed for a
monopoly period of 21 years for works that were created prior to the Statute of
Anne coming into force.
2. They argued for perpetual copyright by stating that common law recognized
such a perpetual right.
3. The House of Lords dismissed the case and confirmed that there is no perpetual
copyright.
4. Works beyond 21 years would be available in the public domain to everyone
without any restriction.
5. This decision allowed a number of famous works like that of Shakeshphere to be
made available in the public domain.
 1886: Berne Convention for the Protection of Literary and Artistic Works
 1893: creation of the Bureau for the Protection of Intellectual Property. In 1967,
it becomes the World Intellectual Property Organization (WIPO)
 1995: Trade Related Aspects of Intellectual Property Rights;
 1996: WIPO Copyright Treaty
 Artistic work including a painting, a sculpture, a drawing (including a diagram, map, chart
or plan), an engraving, a photograph, a work of architecture or artistic craftsmanship,
dramatic work,
 All literary works using any language
 (including computer programs, tables, compilations and computer databases),
 musical work (including music as well as graphical notation),
 sound recording, and
 cinematograph film
 WIPO describes Copyright as:
 "Copyright (or author’s right) is a legal term used to describe the rights that creators have
over their literary and artistic [Link] covered by copyright range from books, music,
paintings, sculpture, and films, to computer programs, databases, advertisements, maps, and
technical drawings.”
 The Copyright Act, 1957 as amended in 2012, supplemented by the Copyright Rules, 2013,
with subsequent amendments, is the governing law for copyright protection in India.
 India is a member of the Berne Conventions and Universal Copyright Convention. The
Government of India has also issued the International Copyright Order, 1999, according to
this order; any work first published in any country - which is a member of any of the above
conventions - is granted the same treatment as if it was first published in India
 The Copyright Act, 1957 Sec 13. Works in which copyright subsists.— (1) Subject to the provisions of
this section and the other provisions of this Act, copyright shall subsist throughout India in the following
classes of works, that is to say,— (a) original literary, dramatic, musical and artistic works; (b)
cinematograph films; and (c) sound recording….
 Sec 14 -Meaning of Copyright.— For the purposes of this Act, “copyright” means the exclusive right
subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of
a work or any substantial part thereof, namely:—
 (a) in the case of a literary, dramatic or musical work, not being a computer programme,—
 (i) to reproduce the work in any material form including the storing of it in any medium by electronic
means;
 (ii) to issue copies of the work to the public not being copies already in circulation;
 (iii) to perform the work in public, or communicate it to the public;
 (iv) to make any cinematograph film or sound recording in respect of the work;
 (v) to make any translation of the work;
 (vi) to make any adaptation of the work;
 (vii) to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to
the work in sub-clauses (i) to (vi);
(b) in the case of a computer programme,—
(i) to do any of the acts specified in clause (a);
(ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of the
computer programme: Provided that such commercial rental does not apply in respect of
computer programmes where the programme itself is not the essential object of the rental.]
(c) in the case of an artistic work,—
[(i) to reproduce the work in any material form including— (A) the storing of it in any
medium by electronic or other means; or (B) depiction in three-dimensions of a two-
dimensional work; or (C) depiction in two-dimensions of a three-dimensional work;]
(ii) to communicate the work to the public;
(iii) to issue copies of the work to the public not being copies already in circulation;
(iv) to include the work in any cinematograph film;
(v) to make any adaptation of the work; (vi) to do in relation to adaptation of the work any
of the acts specified in relation to the work in sub-clauses (i) to (iv); (d) in the case of a
cinematograph film,—
(i) to make a copy of the film, including— (A) a photograph of any image forming part
thereof; or (B) storing of it in any medium by electronic or other means;
(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the
film;
 (d) in the case of a cinematograph film,— (i) to make a copy of the film, including— (A) a
photograph of any image forming part thereof; or (B) storing of it in any medium by
electronic or other means;(ii) to sell or give on commercial rental or offer for sale or for
such rental, any copy of the film; (iii) to communicate the film to the public;
 (e) in the case of a sound recording,— (i) to make any other sound recording embodying it
[including storing of it in any medium by electronic or other means
 (ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the
sound recording;] (iii) to communicate the sound recording to the public
 (d) in the case of a cinematograph film,—
 (i) to make a copy of the film, including— (A) a photograph of any image forming part
thereof; or
 (B) storing of it in any medium by electronic or other means;
 [(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the
film;]
 Only for original expressions and not ideas.
 Not always for commercial use
 The understanding is that a work is original if the author has put his/her mind, skill and
labour in the work with a minimum degree of creativity.
 Further, if the work is derived from data contained in pre-existing works, then by ‘selection,
co- ordination or arrangement of such data, the new work should be somewhat different from
the pre-existing ones’.
 Copyrights also protect:
 Sources Codes
 Data Bases
 Advertisements
 Maps
 Technical drawings
 Translated copies
 Subject to certain conditions, a fair deal for research, study, criticism, review, and news
reporting, as well as use of works in libraries and schools and in the legislatures, is
permitted without specific permission of the copyright owners. In order to protect the
interests of users, some exemptions have been prescribed in respect of specific uses of
works enjoying copyright.
 Some of the exemptions are the uses of the work
 for the purpose of research or private study,
 for criticism or review,
 for reporting current events,
 in connection with a judicial proceeding,
 performance by an amateur club or society if the performance is given to a non-paying
audience, and
 the making of sound recordings of literary, dramatic or musical works under certain conditions.
As per Duration After the expiry of copyright

WIPO Berne Convention For 50 years after the death of author

Protection of Literary and Artistic
Work, 1886

Indian laws 60 years after the death of author

Goes to public
USA, UK and EU 70 years after the death of author
domain
South Africa, UAE, Saudi Arabia 50 years after the death of author
 “PATENT”  For every individual improved
mechanism
“DESIGN”  For outer shape & Contour /
Configuration
“TRADE MARK” Brand name or Logo for goods
denoted as ®

“Copy right” For Instruction / manual booklet

denoted as ©

89
 WIPO defines Geographical Indication in the following terms:
 “A geographical indication (GI) is a sign used on products that have a specific geographical
origin and possess qualities or a reputation that are due to that origin. In order to function as a GI,
a sign must identify a product as originating in a given place. In addition, the qualities,
characteristics or reputation of the product should be essentially due to the place of origin. Since
the qualities depend on the geographical place of production, there is a clear link between the
product and its original place of production.”
 A geographical indication (GI) is a sign used on products that have a specific geographical
origin and possess qualities or a reputation that are due to that origin.
 The registration and protection of Geographical Indications is based on sui-generis
legislation, Geographical Indications of Goods (Registration and Protection) Act, 1999.
 As per this Act, Geographical Indications refers to an indication which identifies goods as
‘agricultural, natural or manufactured goods (including handicrafts, textiles and processed food
items) as originating, or manufactured in a definite geographical territory, where a given quality,
reputation or other characteristic of such goods is essentially attributable to its geographical
origin; in case of manufactured goods, one of the activities of either production or processing or
preparation takes place in such territory, region or locality. ‘


 Kashmiri Saffron
 Kanchipuram Silk Saree
 Alphanso Mango
 Nagpur Orange
 Kolhapuri Chappal
 Bikaneri Bhujia
 Agra Petha
 Basmati Rice
 Darjeeling Tea

The Tagline अतुल्यभारतकीअमूल्यनिनि (Invaluable Treasures of Incredible

India) represents the spirit of Geographical Indications of India, and will
assist in effective branding and promotion of GIs.
 The registration of a geographical indication is valid for a period of 10 years
 It can be renewed from time to time for further period of 10 years each.
 If a registered geographical indication is not renewed it is liable to be removed from the
register.