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Intellectual Property Rights

OPT-III: Intellectual Property Rights-I (Karnataka State Law University)

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Intellectual Property Rights

Notes by Praveen Kumar

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Contents
UNIT 1 ..................................................................................................................................................... 4
1. State and explain the development of laws on Intellectual property. ........................................... 4
2. IPR in India and its Benefits............................................................................................................. 6
3. What are Patentable Inventions and enumerate those categories that are not Patentable. ........ 9
4. Intellectual Property is a valuable asset that may be exploited/commercialised in a number of
ways. Discuss......................................................................................................................................... 12
5. What is Intellectual Property? Explain the various types of Intellectual properties and laws
relating to those properties in India. .................................................................................................... 16
6. Define Patent. What are the rights and obligations of a Patentee? ............................................. 19
7. Discuss the factors which are accountable for the growth of IPRs. ............................................. 22
8. Evolution of IPR in India ................................................................................................................ 26
9. Explain the procedure for granting and sealing of patent ............................................................ 28
10. What is meant by Grant of Patent? State the grounds on which grant of patent may be
restricted. .............................................................................................................................................. 31
11. Which acts constitute infringement of patent? Explain the remedies for the infringement. .. 32
12. How may a patent be transferred to another person? Explain. ............................................... 35
13. What are the modes and grounds for revocation of a patent? ................................................ 37
14. State the kinds of specifications. Explain its contents. ............................................................. 40
UNIT 2 ................................................................................................................................................... 42
1. What is “Mark”? What are the various steps for Registration of Trade Mark? ........................... 42
2. What is meant by Infringement of Trade Marks? Discuss the remedies available. ..................... 45
3. What are the absolute and relative grounds for refusal of registration of trade marks? ............ 48
4. Examine the rights conferred upon the registered trade mark holder. ....................................... 51
5. Discuss the powers and functions of the registrar of trade marks. .............................................. 53
UNIT 3 ................................................................................................................................................... 55
1. Explain the Salient Features of the Information Technology Act. ................................................ 55
2. Why are data bases given sui generis system of protection? Discuss how data bases are given
protection in India................................................................................................................................. 58
3. Explain the need for protection of cyber space under IPRs ......................................................... 61
4. State the issues relating to Domain names in the internet .......................................................... 64
5. What are cybercrimes? ................................................................................................................. 67
6. Classify computer related crimes / Jurisdiction enumerated in IT act 2000 ................................ 70
7. Analyse the drawbacks of the IT Act 2000 .................................................................................... 74
8. Define ‘Digital Signature’. Explain the powers and functions of controller of certifying
authorities under Information Technology Act. ................................................................................... 77
9. Explain the procedure for grant in software patent and copyright .............................................. 81

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10. Discuss the effectiveness of the IT Act 2000 in regulating obscenity. ...................................... 83
11. Explain E- Governance .............................................................................................................. 86
UNIT 4 ................................................................................................................................................... 89
1. Analyse the necessity for separate legislation for protection of Geographical indication which
offers the same protection as that of trademark. ................................................................................ 89
2. Discuss the role and functions of Registrar of GIs ........................................................................ 91
3. Explain the procedure for registration of Geographical Indications. When such registrations are
prohibited?............................................................................................................................................ 95
4. When geographical indication is falsely used? What are the penalties imposed for falsification
of GIs? ................................................................................................................................................... 97
5. Explain the conditions for registration of GIs ............................................................................... 99
6. What are the protections available for GIs? ............................................................................... 100
7. State the important GIs of India and their features ................................................................... 102
UNIT 5 ................................................................................................................................................. 105
1. Explain the salient features of WIPO .......................................................................................... 105
2. Who are entitled to membership of WIPO? What are the functions of WIPO?......................... 108
3. Explain the important organs of WIPO ....................................................................................... 110
4. Discuss the features of the Paris Convention for the protection of Industrial property. ........... 112
5. Explain the Madrid convention for the protection of IP. ............................................................ 115
6. Explain the advantages of Patent Co-operative Treaty (PCT) over National Patent System ...... 117
7. Explain the objectives of PCT ...................................................................................................... 120

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UNIT 1

1. State and explain the development of laws on Intellectual

property.

1. A brief history of intellectual property rights

Patents
England
One of the earliest patent laws was the 1624 English Statute of Monopolies.

Only the ‘the true and first inventor or inventors’ were given Monopoly grants.

Such inventors could acquire up to 14 years of monopoly protection.

United States
The 1836 United States Patent Act was arguably the first modern patent law.

It required all applications to be examined by the government patent office for novelty and
usefulness.

Germany
The German Patent Act of 1877 was next.

Patenting of inventions regarding medicines, articles of food, or chemical products was prohibited.

Copyrights
England
The most famous early copyright law is probably the English Statute of Anne of 1710.

It did recognize that authors could be proprietors of their works.

This law provided a time-limited right to print and reprint books whose titles were registered.

Nineteenth Century
It is not until the nineteenth century that copyright law took its modern form.

Subject Matter
With respect to subject matters, for example, U.K. copyright law had by 1988 been stretched to
include literary and dramatic works, artistic works, musical works, films, and broadcasts.

Other Rights
And protection was not only economic in nature, but included authors’ moral rights.

Moral rights include the ‘right of paternity’ - Authorship and

‘the right of integrity’ – No prejudicial alteration to their works permitted.

2. Contemporary debates and developments

Debate
There are those who hold that strong IPR protection and enforcement is indispensable for the
developed and developing nations.

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There are many critics who believe that high levels of protection are generally a bad thing for any
country, and are positively detrimental for poor countries.

Developments
Two Recent developments are the placing of IPRs on the GATT Uruguay Round Agenda by the United
States, Europe and Japan and

an agreement covering a wide-range of IPR standards going far beyond the original aim of
preventing counterfeiting and piracy of copyrighted works.

International Level
National IPR regulations have existed for two or more centuries.
Then there were bilateral commercial agreements involving mostly European countries.

At the international level it really began in the late nineteenth century with the formation in the
1880s of unions of mostly European countries.

Now, most countries of the world are now involved.

Two of the major driving forces have been the Paris and Berne Conventions. During the 1960s and
70s alone, 33 developing countries joined the Paris Convention for the Protection of Industrial
Property, and 25 joined the Berne Convention for the Protection of Literary and Artistic Works.

Characteristics
During recent decades IPR regimes have been characterized by three phenomena:

1. The widening of protectable subject matter

Protectable subject matter has been widened.

Examples:
Computer programs, business methods, life-forms, cell lines and DNA sequences.

The extension of trademark protection in some countries to include sounds and smells.
Exceptions
There has been a tendency to reduce or eliminate exceptions.

Examples:
Drugs

2. The creation of new rights

Examples
include plant breeders’ rights, rights to layout-designs of integrated circuits, and rights related to
copyright such as performers’ rights.

3. The progressive standardization of the basic features of IPRs

For instance, require prior art searches and examinations for novelty, inventive step or non-
obviousness, and industrial application;

assign rights to the first applicant rather than the first inventor;

patent regulations increasingly provide 20-year protection terms;

and provide protection for inventions in all industries and fields of technology.

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2. IPR in India and its Benefits.

Introduction
Intellectual property rights give exclusive rights to inventors.
It provides legal protection and offers them incentive for their work.
This induces them to distribute and share their inventions instead of keeping it confidential.
It helps in socio and economic development.

In India
In 1999, the government passed an important legislation.
It consists of:
The Patents(Amendment) Act, 1999, amending the Patents Act of 1970.
The Patents (Second Amendment) Bill, 1999, Amendments to satisfy TRIPS obligations
The Copyright (Amendment) Act, 1999.
The Trade Marks Bill, 1999.
The Geographical Indications of Goods Bill, 1999.
The Industrial Designs Bill, 1999.

Several projects modernizing the patent information services and trademark registry have been
undergone with the help of the World Intellectual Property Organization/ United Nations
Development Programme.

Advantages/ Benefits of patent law –

Monopoly
It allows inventors to maintain monopoly on the invention for a specified period of time.

R&D
Patents assist in powering research and development.
This advances technological growth.
Without patents, Companies would hesitate in spending big amounts on research activities, as a
third person can easily exploit new developments.

Low Margins
Products like computer processors, pharmaceuticals, etc., face high costs of setting up of factories,
testing, etc. and low margins.
Unless such companies have a protective shield, they will hesitate in moving ahead.
Patent allows them to purely concentrate on manufacturing process.

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Society
Patents allows and encourages disclosures of innovations in public domain for societal needs.
If patent holders do not get any legal protection, then they would tend to keep their inventions as
secrets which does not help society.

Advantages/Benefits of copyright law –

Protection
Copyright helps in protecting original published/unpublished works under different heads like:
literature, music, drama, artistic and intellectual fields.

Growth
Copyright helps in the growth of writers, musicians, producers, artists and encourages them into
creative work.

Rights
A copyright holder enjoys the following rights –
(i) He can make and can sell copies.
(ii) He can publicly demonstrate his works by Radio or TV
(iii) He can sell or pass the rights to another person.
(iv) He can import or export whole or part of the work.
(v) He is free to create any derivative work.

Advantages/ Benefits of Trade Mark Laws:

Identification and Origin
Trademarks helps in making an identification of the goods and services along with its origin.

Advertisement
It helps the trademark holder to advertise his products or/and services and also creates a good
image in the mind of the final consumer.

Advantages/ Benefits of Utility Models:

The utility model is one way of protecting inventions.
Terminology
Words like ‘petty patent’, minor patent”, ‘small patent’ and ‘innovation patent’ are used in reference
of the utility models.

Small scale enterprises

Such models are considered to be more suitable particularly for small scale enterprises, which make
‘minor’ improvements of the existing products.

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Mechanical Inventions
Utility models are more commonly used for mechanical innovations.

Monopoly
It is a statutory monopoly which is bestowed for a fixed duration of time.
In exchange, the inventor disseminates sufficient teaching of the invention and permits persons,
possessing ordinary skills of the relevant art, to use the invention.

In India
Usefulness or utility:
The invention besides being new and non-obvious must also be useful.

If it cannot be put to any beneficial use of mankind, it cannot be patented.

In some countries, not so useful inventions are protected as utility models.

But that concept is not statutorily recognised in India.

First to invent/first to file:

In USA, a person who has invented first gets the priority.

In India however, a person who files the application first, gets the priority. There is no concept of
first to invent in India.

Discoveries
In India patents are granted only for inventions.

In US patents are granted for inventions as well as discoveries.

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3. What are Patentable Inventions and enumerate those

categories that are not Patentable.

Introduction:
Patents are rights related to new inventions which may be an article or process.
The person with the patent has exclusive right to make, use, sell or distribute the patented invention.
Generally, the time limit of a patent is 20 years.
In order to be patented, the invention should fit into specific criteria, which may differ from country
to country.

Definition of Invention
The Indian Patent Act defines an ‘invention’ as: “a new product or process involving an inventive step
and capable of industrial application.”

Salient features of a patent

Invention must be ‘new’
According to the IPA, New Invention means any invention which has not been published in any
document or used in the country or elsewhere in the world before the date of filing of patent
application with complete specification.

E.g. The recent grant of patent in USA to Turmeric products was challenged on this ground.

The Indian council of scientific and industrial research (CSIR) challenged the grant of patent on the
ground that there was no novelty in the invention.

Publications are available in Indian texts and Turmeric preparations have been used in our country
since time immemorial.

The patent has been since revoked.

It must be Inventive
To be inventive it must be non-obvious to a person skilled in that particular art.
It must not follow logically from what is already known.
It has to be the result of independent thought, ingenuity, and research.
It should involve a technical advance or have an economic significance or both.

Incremental Inventions
Incremental inventions – small improvements that make them more efficient, or more useful –
eminently qualify for patents if they are novel, have an inventive step and are capable of industrial
application.

Invention must have ‘industrial application’

That is, it can be made or used in an industry, say tourism.
Industry does not imply the use of machinery or manufacturing of an article.
It must be useful or practical. If it cannot be put to any beneficial use of mankind, it cannot be
patented.

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It Utility is a must.
It must not be purely intellectual or aesthetic.

Patentable Inventions
According to the Article 27 of the TRIPS Agreement, patents shall be available for all inventions,
whether products or processes, in all fields of technology.
This includes protection to
micro-organisms,
micro-biological and non-biological processes and
plant varieties

Exceptions
Certain exclusions are available to the member states within their territories.

Inventions those are not patentable as per IPA

These exclusions fall into two broad categories
(a) ‘Inventions’ which cannot be technically called inventions, and
(b) ‘Inventions’ which are denied protection on considerations of public policy.

Inventions not Patentable

Atomic Energy
• Inventions relating to atomic energy. This is so because the Central Government has the sole
responsibility for the development of atomic energy;

Public Order
• An invention, which is contrary to
public order or
morality or
health or
human, animal or plant life or
to the environment.
For example, a new type of gambling machine;

As a matter of public policy:

• A method of agriculture or horticulture;
• Plants and animals in whole or any part thereof other than micro-organisms;
• Any process for diagnosing and treating human beings and animals;

Frivolous
• An invention which is
frivolous or
which is contrary to well established natural laws.
For example, a perpetual motion machine.

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Discoveries
• Discovery of any living thing or non-living substances or objects occurring in nature;

• Mere discovery of new form of a known substance which does not result in the enhancement of
the known efficacy. For example, salts, ethers, isomers.

• Mere discovery of a scientific principle or the formulation of an abstract theory.

For example, a discovery merely unveils a hidden thing; it has no practical utility;

Mixture of Components
•A substance obtained by a mere admixture of known components;

Traditional knowledge;

Mental acts or methods of playing game.

Misc
• A literary dramatic, musical or artistic work including cinematographic work and television
productions (covered by copyright);

• Integrated circuits (separate field).

Computer programmes and microorganisms have emerged as two special categories where patent
protection is increasingly sought.

Under the Indian law, computer programmes are protected under the Copyright Act, 1957; they are
not entitled to protection through patents.
However, a computer system programmed is patentable.

In 1980, the US Supreme Court granted a patent to Dr. Ananda Chakraborty for a genetically
engineered bacterium, which could degrade oil spills.

It did not exist in nature. It satisfied the criteria of novelty, non-obviousness and utility for a patentable
invention.

For the first time in history a living entity, the engineered microorganism, was accorded the status of
a product.

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4. Intellectual Property is a valuable asset that may be

exploited/commercialised in a number of ways. Discuss

IP can be commercialised either directly by its owner, through an assignment or by business

partnerships.

Directly by Owner:
When:
SMEs, may want to take up commercialisation activities on their own for the following reasons:
• They already have enough capabilities for marketing, or
• They do not have enough capacities for a partnership, or
• They do not want to spend money to build partnerships, or
• They hesitate to share information with third parties, or
• They do not want to create possible competitors.

Points to be kept in mind:

1- Ideas have to be kept secret:
An application for Patents should be novel.
Trademarks and Domain names are filed on first come first served basis

2- Check IP databases and conduct Freedom to Operate (FTO) Analysis

Checking the IP databases to verify whether the idea is new.
Freedom to Operate (FTO) analysis is a search which aims at evaluating whether the intellectual
asset can be exploited commercially without infringing third party rights.

3- Protect your IP
For example, inventions can be protected through patents and utility models.

4- Records have to be saved:

To Prove the date and ownership

5- Enforce your rights

Monitor your competitors and the market.

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Apply for customs protection. It allows fake goods to be seized and destroyed before entering the
market.

Alternative Dispute Resolution (ADR) mechanisms may also be utilised to solve IP related disputes
out of court.

Assignments
An IP assignment is a transfer of ownership of an IPR, from one party (the assignor) to another party
(the assignee).

When:
Assignments are done when the owner of the IP
• does not have enough financials and/or capabilities for marketing, HR, etc.
• does not want to consider/take future business risks
• needs an Immediate amount of cash flow,
• are not using their IPs
• will not use it in the future by any means

Points to be kept in mind:

1- IP Value
Check the value of IP.
Analyse the risks.

2- Assure process confidentiality

Avoid any leakage. Sign NDAs.

3- List the key terms in the assignment agreement

• Writing
The agreement should be in writing.

• Identification of the IP:

the assigned IP must be clearly identified along with the corresponding know-how.

• Payment:
Amount, type (lump sum or in instalments) and terms of payment must be defined.

• Warranties:
Contractual assurances undertaken by both parties concerning specific facts must be introduced.

• Dispute Settlement
The parties must agree on the law to be applied in case of any possible conflicts.
Parties should also define how disputes are settled (directly in courts or via ADR mechanisms).

4- Register the assignment in the IP register, if required.

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Partnerships
Licensing
A licence is a contract by which the licensor allows the licensee to use intellectual property as per
the contract.
There is NO change in the IP ownership
Franchising is a special type of licensing.

When
If you:
are just manufacturing products - no capability/intention for marketing
are just selling products - no capability/intention for manufacturing
are interested in accessing markets in a more guaranteed way
want to make additional income from your own IP
want to make money from your non-used IP

Points to be kept in Mind:

1- Assure confidentiality during the process
Avoid any leakage. Sign NDAs.

2- Decide the type of licence

Exclusive Licence
• Exclusive:
only the licensee is able to use the licensed IP or technology (the licensor cannot use or license it);

• Sole:
Only the licensor and Licensee are able to use the licensed IP or technology. No additional Licenses.

Non-Exclusive Licence:
The licensor and Licensee are able to use the licensed IP or technology. Additional Licenses can also
be granted.

3- List the key terms in the licensing agreement

In Writing
IP identification
The term of licence
Payment
Applied law and settlement of disputes

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4- Register the licensing in the IP register. If required.

Commercialisation through JV and spin-offs

JVs are business alliances of two or more independent organisations.

When/Advantages
• Provides companies with the chances to develop new IP with less investment.
• Allows companies to access new markets by sharing risks.
• Allows utilisation of unused IP assets.

Spin-offs:
Spin-offs are separate legal entities created by a parent organisation (PO) to market its IP assets.

When
Universities and research institutions are not fully capable of commercialisation of their own IP
assets. They can use a spin off.

They also act as intermediaries between the research environment and industries which protects the
Universities and research institutions.

The Universities and research institutions can focus on their main task of “research” and leave the
“marketing”, to the spin-offs.

Other Business Contracts

IP – can also be transferred through other contractual instruments as well.

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5. What is Intellectual Property? Explain the various types of

Intellectual properties and laws relating to those properties in
India.

What is Intellectual Property?

Intellectual property is a creation of mind.

Examples are an invention, a music composition, a movie, book, painting or even a brand name.

They are intangible assets.

Like any other property they are financially beneficial to the owner.

The monetary benefits are said to encourage people to come up with new inventions and creations.

If stolen, they cannot be recovered or replaced.

The interests of the owner are affected.

There must be laws to protect intellectual property.

Intellectual Property Rights

Owners of intangible assets are assigned some exclusive rights.

Such rights are called intellectual property rights.

They allow the owners to protect their work.

The rights are related to Article 27 of the Universal Declaration of Human Rights.

The statute says, "everyone has the right to protect his work resulting from any scientific, literary or
artistic production ".

Types of Intellectual Property Rights

An intellectual property can be either artistic or commercial.

Copyright laws deals with artistic works.

Examples are books, music, software and painting.

If you are an author, who has written a new book, you can apply for a copyright for your work.

The commercial ones include patents, trademarks, industrial design rights, and trade secrets.

If you have invented something it can be patented.

Once you establish your IP right, you can protect your work legally.

Copyrights:
A copyright is a right conferred on the owner of a literary or artistic work.

Rights available
A copyright holder enjoys the following rights –

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(i) He can make and can sell copies.

(ii) He can publicly demonstrate his works by Radio or TV
(iii) He can sell or pass the rights to another person.
(iv) He can import or export whole or part of the work.
(v) He is free to create any derivative work.

The right lies with the owner-cum-copyright holder for a certain period. In India it lasts up to a
period of 60 years after their death.

In case of anonymous works, the right lasts for 60 years from the date of first publication.

After the time lapses, the work can be republished or reproduced by others.

Patents:
Patents are rights related to new inventions.

Inventions of new machines, processes or articles of manufacture.

Every Country has its own criteria to grant patents.

In general, the invention must be novel, inventive and useful.

A patented invention cannot be manufactured, distributed or sold without permission.

Generally, the time limit of a patent is 20 years from the date of filing the application.

Trademarks:
A trademark is a visual symbol used on products to indicate their source.

It is a combination of words, phrases, symbols, logos, images, designs, or devices.

It is used to distinguish the goods or services of one enterprise from those of its competitors.

For example, Nike products can be identified from the logo, which is embossed on their products.

Once registered, legal protection is available.

Owners can sue persons for unauthorized use of their trademarks.

Industrial Design Rights:

These rights are for the visual design of objects.

They need not be utilitarian, but they should have an aesthetic or ornamental value.

It refers to shapes, colours, patterns or a combination of all these things.

The design can be either two-dimensional or three-dimensional.

An industrial design right is conferred after considering factors like novelty, originality and visual
appeal.

Example Coke Contour bottle.

Only persons having such right can make or sell such objects.

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The right is conferred for a period of 10 to 25 years.

Trade Secrets:
Trade secrets are the, formulas, recipes, practices, processes or ideas which are used by a company
to gain an economic advantage over its competitors.

They cannot be used by anyone who has learned it through the owner.

For example, an employer can protect trade secrets through contracts with his employees.

They can be used if discovered independently.

Trade secrets differ from other types of intellectual property rights.

It is the responsibility of the owner to keep the secret.

It is not protected through government policies.

Once the trade secret is leaked, it can be used by any person.

Conclusion
Intellectual property rights have encouraged people to come up with indigenous creations, as the
law protects their rights over their works. Thus, it is very important to respect these rights and
refrain from infringing them.

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6. Define Patent. What are the rights and obligations of a

Patentee?

Introduction:
Patents are rights related to new inventions.

Inventions of new machines, processes or articles of manufacture.

Every Country has its own criteria to grant patents.

In general, the invention must be novel, inventive and useful.

A patented invention cannot be manufactured, distributed or sold without permission.

Generally, the time limit of a patent is 20 years from the date of filing the application.

Definition
The Indian Patent Act defines an ‘invention’ as: “a new product or process involving an inventive step
and capable of industrial application.”

Rights of a Patentee
A patentee has the right to

⦁ Exploit the patent;

⦁ Assign and licence the patent;

⦁ Surrender the patent;

⦁ Sue for infringement.

All these rights, except sueing for infringement are available on application for a patent and before
its grant.

Right to Exploit the Patent

Only the Patentee has the right to exploit the patent. All others cannot exploit it without permission.

IPA grants a period of twenty years to a patent from the date of its application.

The patent has to renewed annually for it to remain valid.

Right to Assign and Licence

The patentee can assign rights or grant licenses or enter into other arrangements for a
consideration.

A licence or an assignment to be valid must be in writing and registered with the Controller of
Patents.

Right to Surrender
The patentee can surrender the patent at any time by giving a notice to the Controller of Patents.

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The Controller gives notice of surrender to the persons whose names are entered in the register of
patents and showing interest in the patent.

The Controller also advertises the same for any objections to be raised.

The Application for surrender is then accepted.

Right to Sue for Infringement

A patentee can institute proceedings in a District Court having jurisdiction.

Joint-Inventors/Co-Owners of Patent Rights

Co-owners have equal undivided share in a patent, unless there is an agreement to the contrary.

Limitations on Patentee’s Rights

Government
Use for Government Purposes
⦁ The Government can use any patented product or process for its own use.
Government means the Central Government, State Government or a Government undertaking.
It includes Council of Scientific and Industrial Research.

Acquisition by the Central Government

An invention which may or may not be patented, can be acquired by the Central Government by a
notification in the official Gazette if it is required for a public purpose.

A compensation will be paid as mutually agreed upon.

Medical Purposes
⦁ In the case of medicines or drugs, they can be imported by the Government for its own use
or for distribution in any dispensary, hospital or other medical institution maintained by or on behalf
of the Government.

Defence
If an invention is relevant for defence purposes, the Controller may prohibit or restrict publication of
information after ratification from the central government.
No appeal lies against these directions of the Controller.

Compulsory Licences
Third Parties
A third party can apply for a compulsory license after a period of three years from the sealing of the
patent.

The following factors will be taken into consideration before a compulsory grant:
the measures taken by the patentee to make full use of the invention,
the ability of the applicant to work the invention to the public advantage and
Whether he has made reasonable efforts to obtain a license and failed.

Emergencies
Compulsory licences can be granted by the Central Government by notifications in a case of
emergencies for public non-commercial use.

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Termination
A compulsory license can be terminated on patentee’s request when the circumstances in which the
grant was made no longer exist and are unlikely to recur.

Obligations of a Patentee
1. To ensure secure working of invention to the fullest extent.
2. This has to be ASAP.
3. Not to use monopoly to unfairly prejudice public interest.
4. To furnish periodical statements to the Controller.

Penalties
1. Failure to provide statement to Controller is a punishable offence.
2. Failure to discharge duties reasonably, would lead to revocation of patent.

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7. Discuss the factors which are accountable for the growth of

IPRs.
Introduction
"Intellectual Property” encompasses several fields.
Copyright law protects "original forms of expression" - "Star Wars," "Fiddler on the Roof."
Patent law protects inventions -- windsurfers, chemical processes, genetically engineered mice.
Trademark law protects words and symbols that identify goods and services -- "McDonalds,"
Trade-secret law protects information that a company has -- secret formulas for soft drinks,
confidential marketing strategies.

Growth
All above fields have grown steadily and dramatically from the eighteenth century to the present.

Copyright
Definitions
Until the middle of the nineteenth century, it was verbatim copying i.e., literal text and nothing
more.
in 1853 a German translation of Uncle Tom's Cabin did not infringe copyright.

Toward the end of the nineteenth century, this became "in the substance, and not in the form
alone.”

Now, Translations,
Close approximations of a plot,
screenplays based on a novel,
use of the characters from a movie or book to create an unauthorized sequel –
all these constitute infringement.

Kinds of Works
In 1884 photographs could be copyrighted.
In 1971 musical recordings could be copyrighted
Now computer software and
architectural works are also protected.

Duration
The original, 1790 Copyright Act established a copyright term of 14 years; if the author were still
living at the end of that period, he could renew the copyright for an additional 14 years.

It is now 60 years after the death of an author in India.

Patents
From simple inventions, Patents now include
Industrial Designs.
These rights are for the visual design of objects.
They need not be utilitarian, but they should have an aesthetic or ornamental value.
It refers to shapes, colours, patterns or a combination of all these things.

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Example Coke Contour bottle.

Surgical Procedures.
In the 1950s, methods or modes of treatment of certain diseases became patentable.

Plants.
Plants were considered products of nature and hence unpatentable.

The Plant Patent Act of 1930 overrode this principle.

It extends protection to new varieties of asexually reproducing plants.

Now, protection is further extended to new and "distinct" sexually reproducing plant varieties.

Concept of "equivalents”
In the nineteenth century, rivals would, by constructing products that differed in minor respects
avoid liability.

Courts developed the doctrine of "equivalents" to prevent such evasive manoeuvres.

First, the doctrine is available in every case irrespective of fraud.

Second, the plaintiffs need only show that defendants' products are not "substantially" different.

Finally, the doctrine may be invoked even when the defendant's product or activity only became
possible as a result of new technology.

Trademarks
Manufacturer Names
Initially, to be protected, a trademark had to include the name of the manufacturer.
Arbitrary or fanciful names or geographic names did not qualify.
Gradually, these and other restrictions were lifted.

Newspaper Names
The names of newspapers, hotels, and other businesses, were also included.

Trade Dress
In the twentieth century, there came the doctrine of "trade dress."

"the package, case, or vessel in which the commodity is put, if prepared in a peculiar or novel
manner," were included.

Uniforms
By the late twentieth century, the uniforms of the cheerleaders for the Dallas Cowboys football team
and the layout and appearance of greeting cards were included.

Similarity
Initially, only the use by competitors of identical marks (or portions thereof) was actionable.

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Later, competitors were prevented from using marks sufficiently similar as to cause consumer
confusion.

Factors for Growth

A host of factors, economic, ideological, political, and some peculiar to the sphere of the law caused
the growth.

Economic Needs
IT
In the eighteenth century, there was heavy dependence on Agriculture.
In the nineteenth century, the economy became more dependent upon industry.
In the twentieth century, information processing is the principal source of jobs.

Hence there was an increased need for intellectual property rights.

Advertising
Another important factor was advertising.

During the '20s there was a surge in advertising expenditures:

the proliferation of national brands;
manufacturers' experimentation with advertising to reduce investment risks; and
rapid product style changes to stimulate consumers' thirst was promoted by advertising.

Much of the advertising money was spent on trademarks and tradenames.

Manufacturers wished to prevent others from "free-riding" on their investments and sought
strengthened trademark protection.

Ideological Pressures
Labour-dessert theory of property.
The notion is that a person deserves to own something that he or she has created through his
productive labour.

Heroic Image of The Inventor

To be patentable, an invention must be "nonobvious" to a person having ordinary skill in the
pertinent art.
This is plainly traceable to the heroic image of the inventor.
What has to be rewarded are "flashes of creative genius” not, mere works of craftsmanship.

Government Encouragement
The Government identifies and rewards good works of art and socially valuable inventions.
The rewards may be in the form of selective grants.

Political Pressures
Legislation
On August 18, 1787, the first draft of what ultimately became the intellectual-property clause was
presented.
Many examples of exertion of the same kind of pressure can be found in the legislative history.

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Propertization
In the eighteenth century, lawyers and politicians were more likely to refer to patents and copyrights
as "monopolies" rather than "property."

Until the middle of the nineteenth century, tort law, not property law applied to this field.

Gradually, it began to be accepted that dissemination of information are forms of "property."

The trend is now the use of the phrase "intellectual property."

The use of the term "property" to describe copyrights, patents, trademarks, etc. conveys the
impression that they are fundamentally "like" interests in land or tangible personal property.

They should be protected in the same way.

In the 1921 case of Fisher v. Star, it was ruled that the comic-strip characters, Mutt and Jeff, could
not be used by the defendant newspaper without the permission of the creator of the characters.

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8. Evolution of IPR in India

Evolution of patents in India

Ancient India
In ancient India, the invention of anything useful to the society was offered as a salutation to god,
ruler, guru or the parents.
The ruler would award him with material benefits or title.
The details of the invention would be engraved either on stone or other inscriptions for the benefit
of the society.

British Rule
Nineteenth Century
Legislation
The situation changed after British Rule in India.
In India a patent law has been formulated by the legislature.
The first Act relating to patent rights was passed in 1856.
This granted certain exclusive privileges to inventors for a period of 14 years.

Amendment
This Act was found defective and was therefore re-enacted with some modifications in 1859.
The Act was founded on the English Patent Act 1852.

Other Acts
In 1872 the Patterns and Designs Protection Act was passed.
In 1883 the Protection of Inventions Act was passed.

Consolidation
In 1888, these Acts were consolidated by the Inventions and Designs Act.

Twentieth Century
In 1911, the Patents and Designs Act was passed repealing all the previous Acts.
The controller of patents took over the patent administration.

Lapsed Amendments
In, 1953 certain amendments to the Act were introduced.
The Bill was not however proceeded with and therefore lapsed.
In 1966, A Patent Bill was introduced in the Lok Sabha which again lapsed.

Patent Act 1970

in 1967, An Amendment Bill was introduced again, which culminated in the Patent Act 1970.
The draft patent rules were published in 1971.
The Act and final rules came in to force on 20th April 1972.
The Indian Patent Act 1970 follows the U.K. Patent Act of 1949 in many respects.

Public interest
Public interest over the interest of individual inventor was implicit in the provisions of the Act.
This was particularly in the pharmaceutical field, where protection was totally abolished.
All patents for chemical inventions were automatically endorsed with ‘Licence of Right’ three years
after grant.

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Patents granted for processes for the manufacture of any food or medicine had a maximum term of
only 5 years from the grant.
The royalty payable on such patents was limited to 4 percent of the bulk sales price of the product.
This law reduced the term of protection generally from 16 to 14 years.
It provided for government use without compensation, and even government expropriation of
patents.

Trips Obligations
First Amendment
But in order to fulfil TRIPs obligations India introduced the first patent amendment to the Indian
Patent Act 1970 in April 1999.

Two key aspects of this amendments were

the “provision for a mailbox” to file applications and
the “provision for exclusive marketing rights”, for products related to drugs, pharmaceuticals and
agrochemicals.

Second Amendment
The Patent (Second Amendment) Bill 2002 carried changes
in the scope of patentable inventions,
grant of new rights,
extension of the term of protection,
provisions for reversal of burden of proof in case of process patent infringement and
conditions for compulsory licences.

Third Amendment
The third amendment to the Indian Patent Act 1970 was introduced on March 23, 2005 to comply
with WTO agreement.

Its main features are:

The product patent regime for all inventions, and the deletion of section 5 of the Principal Act
(Inventions where only methods or processes of manufacture patentable, Thus allowing a product to
be manufactured using different methods).

As a result, an Indian company cannot make low cost generic copies of patented drugs.

Indian firms may have to wait for three years before they can apply for compulsory licences of newly
patented drugs to meet an emergency need and

Indian firms currently making generic versions of these drugs would have to pay royalties.

It has introduced the provision of granting compulsory licences to supply drugs to countries which
have no manufacturing capacities and matters of National Security.

It has replaced pre-grant opposition by post grant opposition.

Further it has introduced direct grant of patent without a sealing request, to expedite the grant of
patent.

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9. Explain the procedure for granting and sealing of patent

Procedure for Obtaining a Patent

Who can apply for Patent?
An application for a patent may be made by
a person claiming to be the true and first inventor of the invention or
his assignee, or
by the legal representative of any deceased person.

In Organizations the inventions are assigned to the employer who then applies for the patent. The
inventors are listed in the patent.

Filing a Patent Application

Separate Application
There has to be a separate application each invention.

Triplicate
It has to be in triplicate
in prescribed form
with the prescribed fees and
filed in the appropriate patent office.

If the application is filed by the assignee, it must be accompanied with proof of assignment.

Details
Every application must state that the applicant is in ‘possession’ of the invention.

It should have the following details:

(i) Full name, address, nationality of the applicant(s) and inventor(s),
(ii) Patent specifications, and
(iii) Claim of priority.

Specifications
Every application must be accompanied by a provisional or a complete specification.

Provisional Specifications
A provisional specification only describes the nature of an invention.
Complete specifications should be filed within one year.
If not, the application is deemed abandoned.

Complete Specifications
The complete specification must contain the following:

⦁ Title;
⦁ Abstract;
⦁ Full description of the invention;
⦁ Relevant drawings;
⦁ Details of its operation or use;
⦁ Declaration as to the inventorship of the invention.

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⦁ Claims defining the scope of the invention;

Claims
Claims appear at the end of a specification.

They describe what is new.

They define the scope of the patent and the monopoly conferred by it.

What is not claimed is disclaimed.

Publication of the Application

A patent application is now published.

If the invention is considered relevant for defence purposes, the Controller may prohibit the
publication.

The publication will include the particulars of

name and address of the applicant
the date of application,
number of application, and
an abstract.

The specification and drawings are available to the public on payment of the prescribed fees.

The applicant has full rights over the invention from the date of publication except the right to sue.

Examination of the Application

The application, specification and other related documents are sent to an examiner and a report
obtained within a prescribed period.

The examiner looks into several aspects of the application.

Previous publications and prior claims are looked into.

If the examiner raises any objections, they are referred to the applicant.

If the objections are removed satisfactorily within a prescribed period, the Controller will accept the
complete specification.

If the objections are not removed satisfactorily, the application is refused, if required, after giving an
opportunity of hearing to the applicant.

Acceptance and Advertisement of Complete Specifications

Once the complete specification is accepted, the Controller notifies it to the applicant and also
advertises it in the Official Gazette.

Grant and Sealing of Patent

When an application for a patent along with its complete specification has been accepted a patent is
granted.

The date of the patent is as of the date of filing of the patent application.

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The patent is sealed with the seal of the patent office and the date of sealing of patent is entered in
the register.

The fact is then published.

Opposition to The Grant of Patent

Both pre-grant and post-grant opposition is available.

In case of a pre-grant opposition, upon publication, any person may in writing, raise objections
against the grant of patent on relevant grounds.

In case of a post-grant opposition, upon granting of a patent, any person may in writing, raise
objections against the grant of patent on relevant grounds within one year after the grant has been
made.

On receipt of the notice of opposition, the Controller notifies the patentee about it.

An Opposition Board is constituted, and its recommendations obtained.

On receipt of recommendations, and after giving the patentee and the opponent an opportunity of
being heard the Controller orders either to maintain or to amend or to revoke the patent.

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10. What is meant by Grant of Patent? State the grounds on

which grant of patent may be restricted.

Grant and Sealing of Patent

When an application for a patent along with its complete specification has been accepted a patent is
granted.

The date of the patent is as of the date of filing of the patent application.

The patent is sealed with the seal of the patent office and the date of sealing of patent is entered in
the register.

The fact is then published.

Opposition to the Grant of Patent

Both pre-grant and post-grant opposition is available.

In case of a pre-grant opposition, upon publication, any person may in writing, raise objections
against the grant of patent on the following grounds:

⦁ The invention is not new; or

⦁ It can be anticipated; or

⦁ The invention is not clearly described in the specification; or

⦁ the method by which it works is not clearly described; or

⦁ Necessary information has not been disclosed or

⦁ false information has been furnished; or

⦁ geographical origin is not disclosed or wrongly mentioned.

⦁ Biological origin is not disclosed or wrongly mentioned.

⦁ In the case of a convention application, the application was not made within 12 months of
the filing of the first application in the convention country;

The representation shall be considered by the Controller and disposed of.

The person making such a request would not become a party to any proceedings.

As regards the post-grant opposition any person interested in opposing the grant of patent may give
notice to the Controller of such opposition within one year from the date of publication of grant on
the following grounds: All the above grounds and

⦁ The invention is obvious and does not involve any inventive step; or

⦁ The subject of the patent is not an invention, within the meaning of the Act; or

⦁ The invention is publicly known/used in India before the date of the claim; or

⦁ The invention was wrongfully obtained;

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11. Which acts constitute infringement of patent? Explain the

remedies for the infringement.

Infringement-meaning thereof
Infringement has not been defined in The Indian Patents Act 1970.

Section 48 of the Indian Patents Act 1970, says that the patentee can exclude third parties from
making, importing, using, or selling the patented product, or process.

Thus, violation of the above rights is an infringement.

Exclusions from infringement

Government Use:
As per section 47 of the Indian Patents Act, 1970, the 'Central Government' and 'any person
authorized by it' can use an invention for which a patent application has been filed, or a patent
granted.

Supply of Patented Drugs to Health Institutions:

A medicine or drug that is patented may be imported by the Government for its own use or for
distributing to any dispensary, hospital or medical institution maintained by or on behalf of the
government.

Research Exemption:
Any person may use or make the patented invention for research purposes.

Bolar-Like Provision:
As per the Patents Act, 1970 u/s107A (a), a non-patentee can make, construct, use or sell a
patented invention solely for purposes of development and submission of information required by
regulatory authorities.

It helps generic drug manufacturers in making their products for regulatory approval.

It should not be for a commercial purpose. The products can be exported.

Import:
Under scetion107A (b) patented products maybe imported by any person from a person authorized
by the patent owner.

Use of Patented Invention on Foreign Vessels:

When a foreign vessel temporarily or accidentally comes to India and uses the invention in the body
of the vessel, it is not an infringement.
This provision is applicable only if there is a bilateral treaty.

Remedies
Jurisdiction
A patent holder can file a suit for infringement in the District or High Court.

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According to S 19 of the Civil Procedure Code 1908, the patentee can bring the suit to the court
which has jurisdiction in the area where he/she resides or works or carries on a business.

The patentee can also bring the suit to a court which has jurisdiction in the area where the infringing
activity took place.

Where counter-claims for revocation of the patent has made by the defendant, the suit is handled
by the High Court.

Limitation
The limitation is three years as per The Indian Limitation Act.

If the patent is ineffective due to non-payment of the renewal fees, then the patentee is not entitled
to institute proceedings.

Court Fees
To claim damages, the IP owner will have to pay a court fee on the damages claimed.

Burden of Proof
i. Product
In the case of a patented product, the burden of proof lies with the patentee.

ii. Process
In the case of a process patent, the burden may shift to the Defendant / Infringer if the patentee has
made reasonable efforts to determine the defendant’s process.

1. Injunctions
The courts in India grant two types of injunctions.
A. Interim Injunctions
Interim injunctions are granted before completion of a full-fledged trial.

This relief is granted if there is:

1. a prima facie case. The burden of proof lies on the patentee.

A prima facie case is more easily established if the patent is sufficiently old;

2. The plaintiff would suffer irreparable loss if a temporary injunction is not allowed.

3. A balance in favour of the plaintiff as per the doctrine of relative hardships.

If the High Court or the Intellectual Property Appellate Board (IPAB) has granted a Certificate of
Validity under S 130 of the IPA the patentee can demand an interim injunction.

B. Permanent Injunctions
Permanent injunctions are granted after a full-fledged trial.

If the plaintiff had obtained an interim injunction unjustly, he has to bear the requisite damages.

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2. Anton Pillar Orders

The Court can order for a search of the premises of the defendant.

Any infringing goods, materials and implements can be seized, forfeited or destroyed on the order of
the Court.

3. Reliefs
Damages
The court considers any loss suffered by the patentee before awarding damages.

It also considers the profits earned by the infringement.

4. Criminal Remedies
All the IPR laws (excluding patent and designs laws) provide penal provisions for infringement.

5. Administrative Remedy
If infringing goods are imported, the IP owner can approach the Collector of Customs and prevent
the entry of these goods into the Indian market.

The IP owner must provide the name of the exporter, consignee, port of entry, name of the ship, etc
to avail him/herself of this remedy.

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12. How may a patent be transferred to another person?

Explain.

Introduction
A patent is an exclusive property of the inventor.

It can be transferred to any other person by assignment, grant of licence, or operation of law.

The assignment or licence must be in writing.

It should clearly specify all the terms and conditions, governing the rights and obligations of the
parties.

The person to whom the patent has been transferred has to apply in writing to the Controller for the
registration of his title.

Assignment
An assignment means transfer of interest in the patent to another person.

The person who assigns the right is called the assignor and the person to whom it is assigned is
called the assignee.

It may be in whole or in part.

It may be valid throughout India or in a part of it.

There are three kinds of assignment:

Legal Assignment
When the assignment is through a duly registered document, it is called a legal assignment.

The assignee’s name is entered in the Register of Patents maintained by the Patent Office as the
proprietor of the patent.

He now has all the rights conferred by the assignor.

Equitable Assignment
An assignment which is not duly registered is an equitable assignment.
The assignee’s name is NOT entered in the Register of Patents.

Mortgage
When the patentee transfers rights either wholly or in part, to secure a specified sum of money, it is
called mortgage.

On refund of the money, the patent gets re-transferred.

Licence
A license is an agreement which allows another person to make, use or exercise the invention.

The person to whom the privilege is transferred is called the licensee.

It does not transfer any interest in the patent.

There are three kinds of licenses:

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Voluntary License
When the patentee empowers another person to make, use or exercise the patented invention in a
particular manner and on agreed terms and conditions by a written agreement it is called a
voluntary licence.

The Controller of Patents and the Central Government do not have any role in such licence.

Statutory Licence
A compulsory licence granted by the Controller and the Central Government is a statutory licence.

The terms and conditions do not depend upon the will of the patentee or the licensee.

Exclusive Licence
The patentee confers an exclusive right to make, use, sell or distribute the patented invention to a
particular person to the exclusion of all others including himself.

Certain restrictive conditions may be imposed, but they should not be against public interest.

The exclusive licensee has the right to sue against infringements.

Operation of Law
When a patentee dies, the interest in patent passes to his legal representative.

The Central Government can acquire a patent from the patentee for public purpose.

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13. What are the modes and grounds for revocation of a

patent?

What is revocation of a patent?

The declaration of a patent as invalid before the term of the patent ends.

What are the Sections involved?

Section 64: Revocation of Patents
Section 65: Revocation of patent or amendment of complete specification on directions from
government in certain cases relating to atomic energy.

Section 66: Revocation of patent in public interest.

Section 85: Revocation of patent for Non-working.

Why is a revocation petition filed?

Even though a Patent is granted, it may not always be valid.

Third parties are given a chance to challenge the validity of the Patents.

When does one file a revocation petition?

After a grant of patent or on Patentee suing for infringement.

How is it revoked?
By filing a revocation petition/ post-grant opposition proceeding.

Who can file a revocation petition?

any person interested;

the Central Government;

a person involved in an infringement suit and making a counter-claim.

Where can a revocation petition be filed?

A revocation petition can be filed in the Intellectual Property Appellate Board(IPAB) by

the interested person or

the Central Government, or

In case of a counter claim at the High Court.

What are the grounds under which a revocation petition can be brought?
Section 64 - Revocation of Patents
Under Section 64, the following are the said grounds:

⦁ The invention is part of the prior-art and can be anticipated; or

⦁ The invention is not clearly described in the specification; or

⦁ the method by which it works is not clearly described; or

⦁ Necessary information has not been disclosed or

⦁ false information has been furnished; or

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⦁ geographical origin is not disclosed or wrongly mentioned.

⦁ Biological origin is not disclosed or wrongly mentioned.

⦁ In the case of a convention application, the application was not made within 12 months of
the filing of the first application convention country; or

⦁ The invention is obvious and does not involve any inventive step; or

⦁ The subject of the patent is not an invention, within the meaning of the Act; or

⦁ The invention is publicly known/used in India before the date of the claim; or

⦁ The invention was wrongfully obtained; or

Section 65 - Revocation of patent or amendment of complete specification on directions from

government in certain cases relating to atomic energy.
(1) the Central Government can get a patent revoked by the controller of patents, if it is related to
atomic energy.

The Controller gives notice to the patentee and all persons whose names are entered in the patent
register having interest in that particular patent.

They are then heard, and the patent may be revoked.

(2) The Controller may allow the patentee to amend the complete specification in such manner as
he considers necessary instead of revoking the patent.

Section 66. - Revocation of patent in public interest.

If a patent is prejudicial to public interest, the Central Government shall give an opportunity to the
patentee to be heard.
It can then make a declaration to that effect in the Official Gazette.
The patent shall be deemed to be revoked.

Section 85. - Revocation of patent for Non-working.

Compulsory License
When
(1) After the expiration of two years of granting a first compulsory license, an application for
revocation can be made to the controller of patents.

By whom
by the Central Government or any interested person.

Grounds
The grounds can be:
that reasonable requirements of the public have not been satisfied or
It is not available at a reasonably affordable price or
the patented invention has not been worked in the territory of India.

Details
(2) Every application shall contain

such particulars as may be prescribed,

the facts upon which the application is based, and,

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in the case of an application other than by the Central Government, shall also set out the nature of
the applicant's interest.

Decision
(3) The Controller, if satisfied that the reasonable requirements of the public with respect to the
patented invention have not been satisfied or that patented invention has not been worked in the
territory of India or that the patented invention is not available to the public at a reasonably
affordable price, may make an order revoking the patent.

Time period
(4) All applications shall ordinarily be decided within one year of its being presented to the
Controller.

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14. State the kinds of specifications. Explain its contents.

Filing a Patent Application

Separate Application
There has to be a separate application each invention.

Triplicate
It has to be in triplicate
in prescribed form
with the prescribed fees and
filed in the appropriate patent office.

Specifications - Sec. 10 of Indian Patents Act

Every application must be accompanied by a provisional or a complete specification.

Provisional Specification
Nature
A provisional specification only describes the nature of an invention.
Complete specifications should be filed within one year.
If not, the application is deemed abandoned.

Priority
Filing for a patent with only a provisional specification ensures priority.

Stage of Invention
It relates to the conception stage of the invention.
Conception is complete.

Proof of Concept
A definite idea is formed in the mind of the inventor.
There is a proof of concept though it is not yet fully developed.
No extensive research or experimentation remains to be done.
It is a matter of ordinary skill to Reduce the invention to practice

Claims
It must encompass all limitations of the claimed invention.

Complete Specifications
Additions
A complete specification may include additions to what is described in provisional specification.
The inventor is entitled to apply for a separate patent in respect of such additions.

Single/Group of Inventions
The claims can relate to a single invention, or to a group of inventions, which form a single inventive
concept.

e.g. in an instrument there may be 8 or 10 different inventions used.

All these could be separately patented; or they can be patented together as a group; if they form an
integrated instrument.

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Conventional Applications
In case of a conventional application the patent application must be accompanied with complete
specifications only.

Complete Specifications
The complete specification must contain the following:

⦁ Title;
⦁ Abstract;
⦁ Full description of the invention;
⦁ Relevant drawings;
⦁ Details of its operation or use;
⦁ Declaration as to the inventorship of the invention.
⦁ Claims defining the scope of the invention;

The complete specification determines the scope of the patent protection.

Thus, it is the most significant part of the patent application.

The title is a pointer to the object, scope and purpose of the specification.

It is construed as a whole, that is, the title, the body and the claims all matter.

Amendments
Complete specification may be amended on request by the applicant, subject to certain conditions.

Amendments are only allowed by way of disclaimer, correction or explanation, for the purpose of
incorporation of actual fact.

Amendment shall not be allowed if they make any form of additions.

Claims
Claims appear at the end of a specification.
They describe what is new in the invention.

The claims are put in a way to obtain broad monopoly.

More experimental data, broader the claims.

The scope of the claims allowed by the Patent Office rests on the disclosure made in a patent
specification and the support available therein.

On grant, they define the scope of the patent and the monopoly conferred by it.

What is not claimed is disclaimed.

The priority date of a claim is the date of the filing of the application.

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UNIT 2

1. What is “Mark”? What are the various steps for Registration of

Trade Mark?
What is a Trademark?
A trademark is a type of intellectual property.
It is a visual symbol used on products to indicate their source.

It may be used on the goods themselves and on the container and wrappers.

It is also used in connection with the marketing of goods.

It may be used in advertisements (in newspapers, on television, etc.) or in the windows of the shops.

Brand Names
Trademarks are also known as brand names.
Several products can be marketed under one brand name.

Contents
It is a combination of words, phrases, symbols, logos, images, colours, designs, or devices.
It may also include shape of goods and their packaging.

Owners
The owner of a trademark may be any entity viz an individual, company, partnership, or other
groups of persons.

Functions
It is used to distinguish the goods or services of one enterprise from those of its competitors.
For example, Nike products can be identified from the logo, which is embossed on their products.

The primary function of a trademark is to highlight the quality of a product/service to a

customer/prospective customer.

It Effectively provides advertisement to the company’s products

It takes years to create goodwill.

Protection for Trademarks

Unregistered Trademarks
Two types of remedies are available against violators of unregistered trademarks.
They are Passing Off Actions and Criminal Proceedings which result in suitable punishments.

Registered Trademarks
Civil proceeding against infringement is available only for registered trademarks.
This provides remedies like restraint orders, injunctions, damages and account of profits.

Types of Trade Marks

Well-Known Trademarks
The Act makes a distinction between a trademark and a well-known trademark.

Collective Marks
If the trademark belongs to an association of persons, the trademark is called a collective mark.

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Certification Marks
A special class of trademarks is termed as certification marks.

They certify goods w.r.t., parameters like quality, ingredients, geographical origin etc.
Example, Agmark is used for food items in India.

Similarly, ISI marks certify the quality of the goods as per the applicable ISI standards.

Service Marks
These are used in connection with services, e.g. service marks used by banks, hotels, airlines, tourist
agencies.

Sound Tracks as Trade mark

Examples:
The “Roar of the Lion” sound has been registered by the MGM Pictures,
Musical notes of A.R. Rahman for Airtel
Musical song used in Kingfisher advertisement.

Registration of Trademark
Who can Apply
A proprietor of a trademark can apply to the Registrar of Trademarks for its registration.
A proprietor may be an individual, joint applicants, partners of a firm, a Corporation, any
Government Department, or a trust.

To whom
Controller General of Patents and Designs is also the Registrar of Trademarks.

Where
The Registration of Trademarks is done in Mumbai where the Trademarks Registry is situated.
There are branch offices at Calcutta, Delhi, Chennai and Ahmedabad.

Details
The nature of goods or services has to be specified.

Register
The Register of Trademarks contains
the records of all registered trademarks,
with names, addresses and description of the proprietors,
assignments and transmissions, and
conditions and limitations.

Registration
Registration is prima facie evidence of validity of the trademark.

Procedure
Application
Jurisdiction
[1] An Application in the prescribed form has to be filed in the office of the Trademark Registry
having jurisdiction.
The place of business of the applicant is considered to determine jurisdiction.

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Classes
Goods and services are classified into different classes.

A single application is sufficient for different classes of goods and services; however, the fees are
required to be paid separately for each class.

Representation Mark
[2] Every application shall contain a representation of the mark in the place provided in the
form.

Five additional representations of the mark have to be supplied with the application.

Acceptance and Withdrawal

[3] The application can either be accepted completely or accepted subject to amendments or
rejected.

After acceptance, before registration, an error may be found.

In such a case the Registrar, after hearing the applicant may withdraw the acceptance.

Advertisement
After acceptance, the application along with the conditions or limitations, is advertised in the
Trademarks Journal.

This provides the public an opportunity to oppose the registration.

Any person may, within three months give a notice in writing to the Registrar opposing the
registration.

A copy of the notice of opposition is given to the applicant to file a counter-statement.

The Registrar decides the issue after hearing both parties.

On satisfactory completion of the above procedure, the Registrar is mandated to register the mark
with effect from the date of application.

Time Period
The registration of a trademark is originally for a period of ten years.

It may be renewed indefinitely on the payment of the prescribed renewal fees.

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2. What is meant by Infringement of Trade Marks? Discuss the

remedies available.

Introduction
An infringement is an invasion of statutory rights.

An Infringement of a trade mark is when a person other than the registered proprietor uses the
mark with an intent to defraud others.

The infringing mark may be identical with or deceptively similar to the registered mark.

If the use of the mark does not indicate the trade origin, it may not be declared an infringement,
which was held in the Ox-cart case.

Sections 27 and 28 of the Trademark Act, 1999, provides for relief in case of infringement.

Infringements
Section 29 of the Act enumerates ways in which an infringement can take place.

It generally contains issues of

1) Identical marks

2) Likelihood of confusion

3) Deceptive marks

4) Dilution of marks

1. Identical marks
Whenever two marks are identical, there is a prima facie case of infringement.

2. Likelihood of Causing Confusion

There are situations where the marks are not identical but are nearly similar.

Burden of Proof
The plaintiff has to establish that the mark is identical enough to cause confusion.

Read with Principles of Section 11 of the Trademarks Act, 1999

Registration of marks, which are identical, or imitations of well-known trademarks should not be
allowed.

This is irrespective of whether the goods are similar in nature or not.

This is to prevent taking unfair advantage of the earlier trademark.

This is also to maintain the distinctive character or repute of the earlier trademark.

3. Deceptive Marks
A deceptive mark is one that is intended to cause confusion in the minds of an average buyer.

Tests
The most important test is to look for an overall similarity.
It is not necessary to prove intention.
It is sufficient if the Court comes to the conclusion it is likely to deceive.

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That conclusion would be based partly on evidence and partly upon the appeal to the eye of the
judge.

Deception can arise with regard to:

a) goods
b) trade origin
c) trade connection

4. Dilution of Trademark
Dilution of trademark is basically weakening the trademark by decreasing its value.

This happens if the marks are similar.

In Caterpillar Inc v. Mehtab Ahmed and Others it was held by Delhi High Court that, in a case of
dilution, a customer starts associating the mark with a different source.

This affects the owners of the original trade mark.

This is not a fair practice that is expected in trade and commerce.

Passing Off
Passing off occurs in the case of unregistered Brand Names.

An action of Infringement cannot be initiated.

A Passing Off action can be initiated.

Essential characteristics
Misrepresentation
The person attempts to show that his goods or services are connected to the goods or services of
the original owner.

By use of Trademark
This is done by using a trademark that may be identical or similar.

To Prospective Customers
This misrepresentation is aimed at prospective customers or ultimate consumers of his goods or
services.

Calculated Deception
This is done in a calculated fashion to

injure the business or goodwill of the original owner or

to earn benefit at the cost of the original owner.

Proof
It is also important that actual deception and actual damage has to be proved for any relief of
passing off.

Remedies
Criminal Remedies
In case of infringement / passing off trademark, a criminal complaint can be filed under the
Trademarks act or IPC respectively.

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Civil remedies in Trademark:

A. Injunctions
Interim or Permanent injunction,

An order of interim injunction may be passed ex parte or after notice.

It may include orders for:

B. Anton Pillar Order

(a) The Appointment of a local commissioner, for search, seizure and preservation of infringing
goods, account books etc.

Restraining Orders
(b) Restraining the infringer from disposing of the assets.

This is to prevent any adverse effect on the plaintiff’s ability to recover damages, costs or
other pecuniary remedies which may be finally awarded to the plaintiff.

Stay
(c) stay against the use of the trademark

C. Reliefs
The relief which a court may usually grant in a suit for infringement includes

Damages
Damages or account of profits,

Destruction
delivery of the infringing goods for destruction and

Costs
cost of the legal proceedings.

D. Criminal Remedies
In case of infringement a criminal complaint can be filed under the Trademarks act or IPC.

E. Administrative Remedies
Direction to Custom Authorities
The Courts can direct the custom authorities to withhold the infringing material / its shipment or
prevent its disposal in any other manner, to protect the interest of the owners of intellectual
property rights.

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3. What are the absolute and relative grounds for refusal of

registration of trade marks?

Introduction
The Trademarks Act, 1999 is the law in India containing absolute and relative grounds for refusal of
registration of a trademark.

Grounds for Refusal

Absolute Grounds – (Section 9 of the Act)
The First Rule – [sub-section (1)] - Originality
A. The mark lacks distinctiveness;
To be distinctive, it must be fanciful, arbitrary or suggestive.

Fanciful Trademarks
These are the most distinctive trademarks.
Consider Xerox. This word has no other meaning in the English language.
Kodak, for example, is a fabricated word.
Fanciful trademarks are difficult to achieve.

Arbitrary Trademarks
Apple, Camel and Blackberry are examples of arbitrary trademarks.
These are English words with actual meanings, and used to describe consumer products.
Any word in the dictionary can be used, if that word has no relation to your company or products.
For example, you cannot legally register “orange” if your company produces orange juice.
Conversely, Apple is allowed because the company sells computers.

Suggestive Trademarks
Examples include Coppertone sun lotion, Playboy magazines for men, Mustang sports cars, and
Airbus airplanes.
These are words or phrases actually relate to a particular product, service or company.

B. The mark is descriptive of the goods or services;

Trademarks which impart information like intended purpose, geographical origin, quality, quantity
are liable to be refused.

Case Laws
In ELGI Ultra Industries Limited v The Assistant Registrar of Trade Marks, the Intellectual Property
Appellate Board [IPAB], held that the words “ultra” and “perfect” are highly descriptive and any
person can use such descriptive words for its products. Disallowed.

In Imperial Tobacco Company of India Ltd v. Registrar of Trademarks, the Calcutta High Court held
that the trade mark “Simla” is a well-known hill– station of India and has geographical significance.
Hence disallowed.

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C. It is in customary use.
For example, Otis’s trademark “Escalator” for moving staircases became a generic word and
therefore, the Trademark Office concluded that Otis cannot use its trademark since the mark has
become customary in respect of moving stairs.

Other examples are Aspirin, Heroin, Cellophane, Kerosine etc.

Exception to the above Rule – the Proviso to sub–section (1)

If the mark is in use or is a well-known mark and has acquired a distinctiveness, before the
application, it will be registered.

Second Rule – [sub– section (2)] – Against Public Interest

A. The mark is likely to cause confusion or deceive the public;
For example, if a company starts to make biscuits by the name of Parle-J, it would be an
infringement of the right of Parle-G, since it is highly deceptive.

B. The mark is likely to hurt religious sentiments;

In the case of Lal Babu Priyadarshi v. Amrit Pal Singh, the appellant had applied for registration of
the mark “Ramayan” with the device of a crown in relation to incense sticks and perfumeries. The
court observed that “no person can claim the name of a holy text as a trademark.”

C. The mark consists of scandalous or obscene matter;

For example, ‘A’ sells DVDs with the trademark ‘SNUFF Movies’. The word ‘SNUFF’ is a commonly
used slang which means murder or arousal. The use of this word in a Trademark will be considered
to be promoting murder and pornography and its registration will be refused.

D. The mark is prohibited under the Emblems and Names Act, 1950;
For example, the name, emblem or official seal of the United Nations Organization/World Health
Organization or the National Flag of India are prohibited from use as trademark and these words
cannot be registered under the trademarks act.

The Third Rule – [sub-section (3)] – Nature of Goods

A mark shall not be registered as a trade mark if it consists exclusively of—
(a) Shapes Resulting from the Nature of Goods
For example, a Toaster Shape for a seller of toasters, Vanilla Ice cream shape for ice creams.

(b) Shapes that perform Technical functions

Only where the shape has a material non-functional element (e.g. important decorative or
imaginative elements) could registration as a trade mark be accepted.

Example: Lego was the owner of a trademark for three-dimensional shape of a red Lego brick. Mega
Brands applied to have Lego’s trademark declared invalid on the basis that the shape of the brick
was necessary to obtain a technical result. Mega Brands contended that it was necessary to include
two rows of studs on the upper surface of the brick in order to fit with other Lego bricks. The
European Courts agreed with Mega Brands and declared Lego’s trademark invalid.

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(c) the shape which gives substantial value to the goods

The basis behind not providing trademark protection to shapes that give substantial value to the
goods is to exclude “aesthetic shapes” from trademark registration. Thus, any shape that appeals to
the eye compared to the common shape of a product cannot be trademarked.

Relative Grounds (Section 11 of the Act)

The First Rule – [sub– section (1)]
Similar Trademarks and Similar Goods:
The mark is identical or similar to an earlier trademark and

the goods are identical or similar to the goods of the earlier trademark.

The two words are compared and judged to see whether there will be a confusion among the
trademarks which would lead to one party being injured while the other gaining illicit benefit.

For example if ‘A’, an established seller, sells beds with the trademark ‘BED KINGS’ and B, a new
player in the market sells his beds with the trademark ‘KING BEDS’, there will be a confusion in the
minds of the public. This is a relative ground for refusal and B’s application will be rejected because
A’s mark with a similar name already exists.

The Second Rule – [sub– section (2)]

Similar Trademarks and Non-Similar Goods:
The mark is identical or similar to an earlier trademark though goods may not be similar.

The use of such a mark would allow the applicant to gain unfair advantage or damage the reputation
of the earlier trademark.

For example, ‘APPLE’ is famous for the Iphone, Ipod and other electronic goods.
If a trader B decides to sell speakers with the trademark ‘APPLE SPEAKERS’ or even jeans as ‘APPLE
JEANS’, his trademark application will be rejected.
Apple is a well-known trademark and its use in relation to jeans, speakers or any other goods will
cause the general public to believe that the company Apple has produced it.

The Third Rule – [sub– section (3)]

Contrary to law
If a law of passing off, or a law of copyright is protecting an unregistered trade mark, such marks
cannot be used by other persons as trademarks.

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4. Examine the rights conferred upon the registered trade mark

holder.

Introduction
Once the registration is obtained, the proprietor of a registered trademark is vested with certain
valuable rights.

The registered trademark can be protected from the date of registration only.

These rights exist for ten years which can be renewed further.

Rights Conferred by Registration of Trademarks

The proprietor of a registered trademark enjoys the following rights by virtue of the registration:

i. Exclusive Rights – Section 28(1)

An exclusive right to the use of the trademark in relation to the goods or services in respect
of which it has been registered;

Others are restrained from using any mark or packaging which would depict an association with the
registered mark or in any manner which would dilute the value or tarnish the image of the
trademark.

This is a new right independent of similarity.

It is not an absolute right and is subject to other provisions of the Act Namely Sections 27(3), 33
(saving for vested rights) etc.

ii. Right of Registered Trademark holders of Identical Trademark: Section 28(3)

Each of those persons has the same rights against other persons excluding registered users.

iii. Rights of the prior user

If a person A gets registration for a trademark which had been earlier assigned to a person B, the
right of B to use it is not affected after A’s registration, even if B had not opposed it.

On opposition, A can be restrained from using the trademark despite registration.

iv. Right to Seek Correction of Register:

A registered proprietor of a trademark has a right to make an application to the registrar seeking
correction of register regarding the errors pertaining to the particulars of the registered proprietor
and other aspects relating to the registered trademark.

v Right to Alter Registered Trademark:

The registered proprietor of a trademark must make an application to the registrar seeking leave to
add to or alter the trademark in any manner not substantially affecting the identity thereof.

The Registrar may refuse the leave or grant it on such terms and may be subject to such limitations
as he may think fit.

vii. Assignment-Section 37
Registration confers the right to assign or transmit the trademark to another person by the
registered proprietor for any consideration.

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vii. Import
Import of goods and services bearing a mark similar to a registered trademark can be
restricted by the registered proprietor.

viii. Advertising
A registered trademark cannot be used by any one unauthorized in business papers and in
advertising.

ix. Relief – Section 28(1)

Right to Seek Statutory Remedy Against an Infringement.
Relief in case of infringement when a similar or identical mark is used on

(a) similar, goods or services,

(b) dissimilar goods or services.

He may obtain an injunction and at his option,

either damages or
an account of profits by instituting a suit against the alleged infringer.
The proprietor of an unregistered trademark cannot initiate the infringement proceeding in the
event of a deliberate counterfeiting. Section 27(1)

x. Other Laws
A registered trademark continues to enjoy all the rights available to an unregistered mark, emerging
from common law like passing off action.

Rights conferred by registration application

Certain rights vest by mere fact of applying for trademark registration.

Evidence of adoption
(i) It serves as evidence of adoption and selection of trademark for stated goods or services.

Priority
(ii)It enjoys priority against identical or similar marks pending registration for same or similar goods
or services.

Preservation of filing date for six months

(iii) The filing date is preserved for six months in all countries of the Paris Convention and WTO.

If an applicant makes an application in the other countries, the date preserved is taken as the date of
filing.

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5. Discuss the powers and functions of the registrar of trade

marks.

Introduction:
The Registrar of Trade marks is the officer in charge of the trademarks registry.

Appointment of the registrar: Section 3

The Central Government appoints the Controller-General of Patents, Designs and Trade Marks by
notification in the Official Gazette.
He is also the Registrar of Trade Marks.

Trade marks registry and its branches: Section 5

The head office and branches of the Trade Marks Registry are situated at locations, the Central
Government specifies.

Powers and functions of registrar of trademarks:

1. Responsibility: Section 3
He is responsible for the superintendence and direction of the trademarks registry.

2. Withdrawal and transfer of cases: Section 4

The Registrar may withdraw any matter pending before an officer.
This is done in writing citing the reasons.
He may then deal with such matter himself or transfer the same to another officer.
It may be de novo or from the stage it was so withdrawn.

3. Classification of goods and services: Section 7

The Registrar shall classify goods and services.

4. Publication of alphabetical index: Section 8

He shall then publish an alphabetical index of the above classification.

5. Application for registration: Section 18

The Registrar may refuse an application or
may accept it absolutely or
subject to amendments, modifications,
conditions or limitations,
as he thinks fit.

6. Withdrawal of acceptance: Section 19

The Registrar may withdraw an acceptance of an application before it is registered if required.

7. Opposition to registration: Section 21

The registrar will take note of any opposition to the granting of a trademark after an advertisement
and take action accordingly.

8. Registration: Section 23
Once all formalities have been met, The Registrar has the power to register trademarks and issue
certificates.

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9. Renewal of Registration: Section 25

The Registrar shall inform the proprietor about a trademark about to expire and renew it after
receipt of fees as required.

10. Variation or cancellation of registration: Section 50

The Registrar has the powers to vary or revoke a registration depending on circumstances.

11. Power to call for information relating to agreement: Section 51

(1) The Registrar may, by notice in writing, require the registered proprietor to confirm to him within
one month that the agreement continues to be in force.
(2) If the registered proprietor fails to furnish the confirmation within one month the registered user
shall cease to be the registered user and the Registrar shall notify the same.

12. Correction of register: Section 58

The Registrar may, correct any error, or enter any change, in the name, address or description of the
registered user.

13. Alteration of registered trademarks: Section 59

The Registrar may add to or alter the trade mark in any manner not substantially affecting the
identity thereof.

14. Powers of Registrar: Section 127

(a) the Registrar shall have all the powers of a civil court
for the purposes of receiving evidence,
administering oaths,
enforcing the attendance of witnesses,
compelling the discovery and production of documents and
issuing commissions for the examination of witnesses;

(b) the Registrar may, make such orders as to costs as he considers reasonable, and any such order
shall be executable as a decree of a civil court;

(c) the Registrar may, on an application, review his own decision.

15. Extension of time: Section 131

The Registrar, on application made to him in the prescribed manner and accompanied by the
prescribed fee, may, subject to such conditions as he may think fit to impose, extend the time and
inform the parties accordingly.

16. Documents open to public inspection: Section 148

Receive applications and on payment of fees prescribed, give out copies of prescribed documents.

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UNIT 3

1. Explain the Salient Features of the Information Technology Act.

Introduction
The Information Technology Act, 2000, came into force with effect from 17th October 2000.

It has been amended in 2008 and the Amended Act is effective from February 5, 2009.

The Rules under the Amended Act have also been framed, which became effective from October 27,
2009.

Salient Features of IT Act 2000

The salient features of the Information Technology Act, 2000 may briefly be stated as follows:

e-commerce
1. The Act provides legal recognition to e-commerce, which facilitates commercial e-transactions.

electronic Records
2. It recognises records kept in electronic form like any other documentary record.

Digital Signatures
3. The Act also provides legal recognition to digital signatures which need to be duly authenticated
by the certifying authorities.

SEBI
4. Consequent to the passing of this Act, the SEBI had announced that trading of securities on the
internet will be valid in India.

Rules
5. As provided under Section 90 of the Act, the State Government may, by notification in ‘Official
Gazette’ make rules to carry out the provisions of the Act.

Cyber Law Appellate tribunal

6. Cyber Law Appellate tribunal has been set up to hear appeals against adjudicating authorities.

Cyber Offences committed abroad

7. The Act applies to any cyber offence or contravention committed outside India by a person
irrespective of his/her nationality.

Ineligible Applications
8. The provisions of the I.T. Act have no application to negotiable instruments, power of attorney,
trust, will and any contract for sale or conveyance of immovable property.

Salient features of the Information Technology (Amendment) Act, 2008

1. Electronic Signatures
The Act has used new term electronic signature in place of digital signature which covers a wider
area of technology.

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2. Communication Device
The Act has defined 'communication device' to mean cell phones, personal digital assistants or
combination of both or any other device used to communicate, send or transmit any text, images
audio or video.

3. Cyber Cafe
The Act has defined the term cyber cafe as any facility from where the access to the internet is
offered by any person in the ordinary course of business to the members of the public.

4. Intermediaries
A new definition has been inserted for intermediary.

An intermediary is defined as any person who stores or transmits a message on behalf of another
person.

It includes the Telecom service providers, internet service providers, web-hosting service providers
in the definition of intermediaries.

Further search engines, online-payment sites, online auction sites, online market places and cyber
cafes are also included in the definition of intermediary.

5. Protection for Intermediaries

It makes an effort to provide immunity to the intermediaries if they observe due diligence while
discharging their duties.

6. Obligations of Intermediaries
Section 67C: deals with the obligation of an intermediary to preserve information
as may be specified
for such duration and
in such manner and format as the central government may prescribe.

7. Personal Data
A new section 43A has been inserted to protect sensitive personal data or information possessed, by
a body corporate.

If such body corporate is negligent, thereby causing wrongful loss or wrongful gain to any person, it
shall be liable to pay damages by way of compensation to the person so affected.

8. Cyber Offences
The Act, 2008 introduces six new cyber offences from Sections 66A to 66F

a) Sending offensive messages through a computer or mobile phone (Section 66A),

b) Receiving stolen computer resource or communication device (Section 66B)

c) Identity theft (Section 66C)

d) Cheating by using computer resources (Section 66D)

e) Violating privacy or video voyeurism (Section 66E)

f) Cyber Terrorism (Section 66F)

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9. Sexually Explicit transmissions

Section 67A: Publishing or transmitting material in electronic form containing sexually explicit act

Section 67B: Child pornography in electronic form

10. Interception of Information

Amendment section 69 gives the power to the state to intercept or monitor any information through
any computer resource.

11. Blocking of Information

Section 69A: grants power to the state to block any information for public access through any
computer resource.

12. Enforceability of Electronic Contract

A new section 10A has been inserted to talk about the enforceability of an electronic contract.

13. Damages
The damages of Rs. one crore prescribed under section 43 of the earlier Act of 2000 for damage to
computer, computer system etc. has been deleted and the relevant parts of the section have been
substituted by the words, ‘he shall be liable to pay damages by way of compensation to the person
so affected’.

14. Penalties
Section 67 of the IT Act, 2000 has been amended to reduce the term of imprisonment for publishing
or transmitting obscene material in electronic form to three years from five years and increase the
fine thereof from Rs.1,00, 000 to Rs. 5,00,000.

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2. Why are data bases given sui generis system of protection?

Discuss how data bases are given protection in India.

Introduction
Infrastructure exists for collecting, collating and disseminating information in a variety of sectors
such as industries, tourism, agriculture, health, etc.

Information products and services are intangible.

Hence it is difficult to protect them like physical properties.
Legal mechanisms are required to protect them from being copied or used without permission.

The Central Issue

There is a conflict of interests between the authors of the databases and the users of the databases.

The Authors are interested in receiving remuneration from databases they have developed.

Thus, they want to restrict copying from databases.

Users are keen to make use of information for free or would like to have copying rights at a low cost.

Approaches of Protection
There are Three broad approaches used for database protection

Protection of Databases Through Contracts

This permits a user to use the database under a license for a consideration.

License does not pass the ownership of the database to the user.

Database Protection Through Copyright Laws

Most countries have accorded protection to databases under the copyright laws.

Definitions of databases vary considerably from one country to another.

The question of intellectual skills involved in the creation of databases has been debated.

Many databases do not qualify basic conditions for being protectable under the copyright laws.

Sui generis System of Protection for Databases

Background
Until recent times, legislatures and courts around the world have believed in free access to
information.

They have granted protection only to a creative, selection and arrangement of the contents of
compilations, not to the facts or data contained within.

New Technology
With the advent of technology, unconventional methods of copying, altering, and recompiling to
manipulate the contents of databases were available.

This gave rise to unfair competition.

Copyright Protection
Copyright protection was inadequate because it extended only to
creative data (photographic works, musical contents, literary, and so forth),

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It did not protect the factual data (statistics, raw scientific data, and the like) of the database.

Sui generis Protection

Original database makers therefore wanted sui generis rights or rights of a unique kind for
protecting their data bases.

Disadvantages
Public Benefits
However, sui generis protection to databases, such as
collections of information regarding the human genome,
international economic statistics,
traditional medicine, and
weather information,
would erode the public benefits derived from the free flow of access to information.

Science
Science for example can only flourish with open access to compilations of data.

Scientific and technological endeavours almost always require extracting a substantial part or whole
content of databases, which is severely limited under a regime of sui generis protection.

Contracts
"Owners" of a database who have sui generis protection are given the power to force users (such as
scientists and software developers) to enter into restrictive, costly, and potentially prohibitive,
contractual arrangements.

Debate
The ongoing debate is between two conflicting philosophies.

1. Databases should be protected per se, as a means of rewarding and creating incentives for the
intense work and investment required to compile data.

This is commonly referred to as the "sweat of the brow" or "industrious collection" doctrine.

If this doctrine is allowed, a Swiss company, for example, would invest the time and money to collect
data regarding traditional medicines used in China for thousands of years.

They would then block Chinese researchers from freely sharing the very data that their culture
created and utilized for millennia.

Such a system could have a profound impact on the future distribution of not only information, but
also of knowledge wealth in the world.

2. Databases without any original or creative content should not be protected.

In the aforementioned example, the Swiss company would claim legal protection to how the
traditional medicine data is searched and presented, but the data itself would remain in the public
domain.

The Indian Stand

There is no express legislation in India dealing with database protection.

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Personal Data
Although the Personal Data Protection Bill was introduced in Parliament in 2006, it is yet to see the
light of the day.

It governs the collection, processing and distribution of personal data.

Database protection
Copyrights Act
Database protection has an entirely different function, namely, protect creativity and investment in
the compilation, verification and presentation of databases.

The Copyright Act, 1957 protects works under literary, artistic, musical, dramatic and
cinematographic categories.

The term ‘literary work’ includes computer databases as well.

Therefore, copying a computer database, or distributing it amounts to infringement of copyright for

which civil and criminal remedies are available.

The Information Technology Act

The Information Technology Act, was recently amended to meet challenges in cybercrime.

It has introduced two important provisions.

These are Sections 43A and 72A.

Compensation for failure to protect data and Punishment for disclosure of information in breach of
lawful contract.

Case Laws
Mailing Addresses
Burlington Home Shopping Pvt Ltd v Rajnish Chibber: The plaintiff published mail order catalogues
which were posted to a select list of the plaintiff’s clients.

The said database was an expensive one in a gradual process of compilation.

The defendant managed to get a copy of the database and started making use of the same for the
purpose of establishing relationship with the plaintiff’s customers.

The question which arose was whether a database consisting of compilation of mailing addresses of
customers was a subject matter of copyright.

The court decided that compilation of addresses involved devoting time, money, labour and skill.

The compilation amounted to a ‘literary work’ wherein the author had a copyright.

This was reiterated in the case of The Himalaya Drug Company v Sumit. The Indian courts seem to
uphold the ‘sweat of the brow’ theory or the skill, labour and judgment test in deciding copyright
protection against infringement.

In other cases, like McMillan v Suresh Chunder Deb, Govindan v Gopalakrishna, the courts held that
a compilation developed through devotion of time, capital, energy and skill, though taken from a
common source, amounted to a literary work and was therefore protected under copyright.

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3. Explain the need for protection of cyber space under IPRs

Introduction
The Internet is a new, rapidly growing medium that provides an opportunity to entrepreneurs to
make quick profits.

The Internet is a global network of interconnected computers and computer networks.

It allows for an easy, inexpensive and flawless way to create and distribute copyright material to a
mass audience throughout the world.

Nature of Internet/Cyber Space

Not only simple information, but also pictures, musical works, and movies can easily be accessed
through the Internet.

This information can be downloaded or uploaded easily.

Thus, it is a threat to the rights of copyright owners.

Copy Right Threats

Internet is a threat to copy rights due to the following reasons:

(i) Anyone can easily and cheaply obtain some copyright material on the Internet.

(ii) wide distribution is possible.

(iii) the quality of copies is virtually indistinguishable from the original;

(iv) distribution is almost costless;

(v) relatively simpler and quicker on the Internet;

Other Infringements
Intellectual property infringements occur to a greater extent online rather than offline.

This is due to the ease with which data can be accessed, copied and transferred with anonymity

Infringements comprise of any unauthorised use of literary matter, images, music or trademarks.

The different categories of infringements are:

Hyper linking,
Deep Hyper linking,
Framing,
Spamming,
Meta-tags and
Digital Copyrights violation.

Need for Protection

One theory is that the effort and the initiative of the author needs to be protected and rewarded to
promote creativity.

Regulation
The freedom provided by the internet is often abused.

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Hence laws and regulations are required.

Deep Hyper Linking triggers much legal concerns, as it contains links to

websites dealing with pirated software,

illegal media downloads etc.

It been held in the Yahoo Case, that the domain name serves the same function as Trademarks.

It is not a mere address and is entitled to equal protection as trade mark.

Legal issues
The Internet has posed numerous legal issues.

The analysis of these legal issues is complicated because they take place on networks spanning
countries.

The courts, national legislatures and international organisations find it difficult to tackle copyright
issues.

Remedies
Trade Mark Act
Section 28 of the Trade Mark Act, 1999; confers upon the proprietors’ exclusive right to use their
trademarks.

It also allows them to file suits for the infringement and obtain injunction, damages and accounts of
profits.

Copyright Act
Copyright infringements are dealt under section 63 of the Copyright Act, 1957.

Penalties include imprisonment for a term of between 6 months and up to 3 years with fine not less
than rupees Rs. 50,000.

Computer Software are also covered under the copyright law.

Case Laws
Napster Case.
One of the most famous cited lawsuits worldwide for digital copyright infringements is of the
Napster Case.

Users of Napster Software could share media (MP3) Files.

Music companies claimed USD 1, 00,000 for each copyright-protected song downloaded using
Napster.

There was a settlement between the parties.

Napster had to give a third of all future profits to the settling parties.

Napster Inc. was shut down in 2000.

[Link]
In Google V. Racha Ravinder; [Link] was registered.

The complainant, Google Inc filed a complaint.

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Google is a well-known Trade mark.

It was submitted that the respondent had ulterior motive or Bad faith in registering their web site.

It is confusingly similar to the worldwide Trademark ‘Google’.

The panel decision favoured the complainant and ordered the transfer of the site to Google Inc.

Conclusion:
The traditional laws for protecting intellectual property have been applied also in cyberspace.

However, due to nature of the internet, several questions arise such as jurisdiction and hybrid
varieties of online infringements.

Scholars have advocated a combined approach of

sociological,
technological and
legal initiatives
to protect the infringement of Intellectual property in cyberspace.

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4. State the issues relating to Domain names in the internet

Introduction
A domain name is a person’s/company’s website’s name, for example, [Link]
It is an address through which users can access the website.

It identifies computers/companies hosting the web site.

It can be any combination of letters and numbers, with domain name extensions, such as .com, .net
and more.

Registration
A domain name must be registered before it can be used.

Every domain name is unique. No two websites can have the same domain name. If someone types
in [Link], it will go to your website and no one else's.

Domain names may be registered in any of the following "top level domains" called "TLDs".

First, there are the "generic top-level domains" ("gTLDs"), such as .com, .net, .org and .info.

Next, there are the specialized top-level domains (e.g. .aero for air travel, or .biz for commercial
enterprises).

Finally, there are "country code top level domains" ("ccTLDs"), for example, .in for India, .cn for
China, .ch for Switzerland.

Management of Domain Names

The management of the domain names is in the hands of the Internet Corporation for Assigned
Names and Numbers ("ICANN", [Link]

gTLDs are handled by Internet registrars accredited by ICANN.

ccTLDs, are handled by the registration authorities designated.

Whether a domain name has already been registered can be checked, either by searching via a
registrar's site, or by using a 'Whois' search, or at [Link]

Choosing a name
Common Name
A common or a distinctive name may be chosen.
A distinctive name is more easily remembered.
Ideally, it should be distinctive enough to be protected under trademark law.

Trademark
A trademark of another company should NOT be chosen.
This is an infringement, known as 'cybersquatting'.
The domain name is liable for cancellation and damages may have to be paid.

Controversial Words
It is wise to avoid controversial words e.g. Champagne,
names of famous people,
names of international organizations and
generic drug names.

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Domain Names Disputes

Domain-name registries operate on a simple first-come, first-served rule.

While this looks like fair way, it has its drawbacks.

Companies would like to have their company names as the domain names as it would easily
establish internet presence.

In case a domain name has already been taken, the company can
either choose a different name or
fight or
settle through cash or
creative equity deals,
to get the domain name back from its current owners.

Some examples of domain names disputes are:

[Link]:
Both Hasbro and an adult entertainment provider desired the [Link] domain name.
Hasbro was too late to register the name itself, but it is never too late to sue (well, almost never).
The domain name is now safely in the hands of Hasbro.

[Link]:
The MTV domain name was originally taken by MTV video jockey Adam Curry.
When Adam Curry left MTV, the company wanted to control the domain name.
After a federal court action was brought, the dispute was settled out of court.

[Link]:
Slack paid $60,000 for the domain name.

[Link]:
Agreed to trade 2% of the company’s shares to Universal Music for the domain name.

[Link]:
This domain name was taken by an author from Wired magazine who was writing a story on the
value of domain names.

In exchange for returning the domain name to McDonalds, the author convinced the company to
make a charitable contribution.

[Link]:
The mainland China news organization Xinhua was allowed to register the domain name
[Link], much to the disgust of the government of Taiwan.

Remedies
All domain names registered are subject to a dispute resolution procedure.

Online Procedure
Independent Expert
There is a simple online procedure where an independent expert will decide whether the domain
name should be returned, and the registrars are required to follow this decision.

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UDRP
This Uniform Domain Name Dispute Resolution Policy ("UDRP") was first recommended by WIPO
and then adopted by ICANN.

Information can be found at WIPO's site at [Link]

Courts
The parties can also turn to the courts.

Companies that do bring a court action must present legal arguments on why a domain name
registered to someone else should be cancelled or transferred to an organization who wasn't fast
enough to register the name first.

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5. What are cybercrimes?

Cybercrimes
A crime related to the Internet is a cybercrime.
It is any criminal activity involving computers and networks.

It can range from fraud to unsolicited emails (spam). ...

It can lead to victimization as effectively as common physical crimes.

List of Cybercrimes
Data Collection
1. Phishing scams
Phishing is a practice to fish for personal information from a computer user.
This is done through phishing websites which mimic original websites and obtain personal
information such as banking passwords, home addresses etc.

Phishing is typically carried out by e-mail and often directs users to enter personal and financial
details at a website.

Invasion
2. Hacking
This is illegally gaining access to someone else’s computer system.

Monitoring
3. Cyberstalking
Cyberstalkers monitor a victim’s online activity.
This is done by infecting a person's computer with malware which logs computer activity.

Theft
4. Identity Theft
Identity theft occurs when a person’s personal information has been stolen.
This serves as a gateway to cybercrimes such as tax-refund fraud, credit-card fraud, loan fraud and
other similar crimes.

5. Data Theft
Sensitive data such as trade secrets, source code, customer information and employee records all
attract the attention of cybercriminals.

Data Modification
6. Data diddling
Data Diddling is unauthorised altering of data during entry into a computer system, and then
changing it back after processing is done.
This may modify the expected output and is difficult to track.

Malware
7. Virus Dissemination
Viruses are commonplace on the internet.

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They are used to infiltrate a computer, gain personal information, and even destroy that person’s
computer.

8. Logic bombs
A logic bomb is also known as “slag code”.
It is a piece of code which is inserted into a software.
It executes a malicious task on occurrence of a specific event or at a predefined time.

It’s not a virus, although it usually behaves in a similar manner.

Viruses and worms often contain logic bombs.

9. Email bombing and spamming

Email bombing is when an abuser sends huge volumes of email to a victim resulting in victim’s email
account or mail servers crashing.

“Spamming” is a variant of email bombing. Spam may be defined as Unsolicited Bulk E-mail.

Unsolicited bulk messages are sent to a large number of users, indiscriminately.

Opening links given in spam mails may lead you to phishing web sites hosting malware.
Opening file attachments can lead to infection.

Harassment
10. Online Harassment
It consists of threats sent through email, instant message or through social network messages/posts.
This is usually done on popular social networks such as Facebook and Twitter.

11. Blackmail/Extortion
Using the Internet to Blackmail victims or extort money from them.

Companies
12. Corporate Account Takeover
Cybercriminals manage to obtain a company’s login credentials.
They then remotely hijack one of its computers using software and steal funds from the company’s
bank account.

13. Salami slicing attack

Using a “salami slicing attack” or “salami fraud” cyber-criminals steal money a little at a time so that
it is goes unnoticed.
The most classic approach is “collect-the-roundoff” technique.

Websites
14. Web jacking
Web jacking is hijacking of websites.
Here, the hacker takes over a web site and the owner looses control.
The attacker may use the web site for his own selfish interests.

15. Denial-of-Service attack

A Denial-of-Service (DoS) attack denies service to users.

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It floods a server with more requests than it can handle.

This results in a server crash so that no one can access it.

Frauds
16. Tax-Refund Fraud
This is done by filing tax returns using the PAN numbers of deceased taxpayers to claim fraudulent
refunds.

17. Advance Fee Fraud

These frauds, are known as 419 scams as per the Nigerian criminal code.
They induce people to cough up money, promising them an eventual payoff.

Misc
18. Piracy
Piracy is the copying and distribution of programs, movies, music or other intellectual property
without permission.

19. Sports Betting

Engaging in betting or wagering on any sporting event or contest over the Internet.

Merchandise
20. Non-Delivery of Merchandise
Get the victim to pay for items which will never be dispatched.

Pornography
21. Child Pornography
Using the Internet to transmit child pornography.

Trafficking
22. Human Trafficking
Persuading, inducing, enticing, or coercing any individual to travel to engage in prostitution.

23. Drug Trafficking

Delivering, distributing, or dispensing a controlled substance by means of the Internet.

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6. Classify computer related crimes / Jurisdiction enumerated in IT

act 2000

Introduction
Though the Internet has many advantages, it has been misused by many people.

Hence, there is a need for a law of protection.

The Indian Parliament passed a law --- Information Technology Act 2000.

Offences included in the IT Act 2000: Sections 65 – 78.

Section 65. Tampering with computer source documents:
Objective:
This section helps companies to protect source codes of their programmes.

Essential ingredients:
Whoever Knowingly:
1. conceals,
2. destroys,
3. alters,
4. causes others to conceal,
5. causes others to destroy,
6. causes others to alter Computer source documents is guilty of tampering.

Penalties:
This is cognizable and non- bailable offence.

Imprisonment up to 3 years and / or

Two lakh rupees Fine.

Case Law:
1. Syed Asifuddin case:
Facts: In this case, Tata Indicom employees were arrested for alteration of the electronic 32- bit
number (ESN) programmed into cell phones that were exclusively franchised to Reliance Infocom.

Held: Section 65 of the Information Technology Act can be invoked.

Section 66. Computer related offences:

Objective:
To prevent Computer related offenses
Essential ingredients:
66A. Punishment for sending offensive messages through communication service, etc.
66B. Punishment for dishonestly receiving stolen computer resource or communication device
66C. Punishment for identity theft.
66D. Punishment for cheating by personation by using computer resource.
66E. Punishment for violation of privacy.
66F. Punishment for cyber terrorism.

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Section 67. Publishing of obscene information in electronic form:

Objective:
To prevent obscene information from being disseminated on the internet
Essential ingredients:
1. Publishing or causing to be published, pornographic material in electronic form.

Penalties:
(1) On first conviction --- imprisonment which may extend up to five years.
Fine: May extend to Five lakh rupees.

(2) On second conviction ---- imprisonment up to which may extend to Five years and Fine which
may extend up to Ten lakh rupees.

Case Law:
Dakshina Kannada Police received a complaint from a Father of a Christian Church that he was
getting offensive and obscene e-mails.

Police arrested three persons who admitted that they had done this to tarnish the image of the
Father.
As the three tendered an unconditional apology to the Father and gave a written undertaking that
they would not repeat such acts in future, the complainant withdrew his complaint.
Following this, the police dropped the charges against the culprits.

Section 70. Protected System:

Objective:
To protect computer systems dealing with critical information.

Essential Ingredients
It should be declared as a protected system in the official gazette.
Critical Information is that which deals with national security, economy, public health or safety.
Only authorized persons have the right to access the protected systems.

Penalties:
Punishment: the imprisonment which may extend to ten years and fine.

Section 71. Penalty for misrepresentation:

Objective:
To prevent obtaining licences or certificates by giving information that is not true.

Essential Ingredients
There is
misrepresentation of facts or
Suppression of facts
to the Controller or the Certifying Authority
for obtaining any license or Digital Signature Certificate.

Penalties:
Punishment: imprisonment which may extend to two years

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Fine: may extend to one lakh rupees or with both.

Section 72. Penalty for breach of confidentiality and privacy:

Objective:
To prevent unauthorised disclosure of information.

Essential Ingredients
Access to
any electronic record,
book,
register,
correspondence,
information,
document or
other material without the consent of the person concerned and
disclosure of such material to any other person.

Penalties:
Punishment: term which may extend to two years.
Fine: one lakh rupees or with both.

Section 73. Penalty for publishing Digital Signature Certificate false in certain particulars:
Objective:
Preventing use of false Digital certificates.

Essential Ingredients:
Knowingly publishing a Digital Signature Certificate that:
(a) The Certifying Authority listed in the certificate has not issued it; or
(b) The subscriber listed in the certificate has not accepted it; or
(c) The certificate has been revoked or suspended, unless such publication is for the purpose of
verifying a digital signature created prior to such suspension or revocation.

Penalties:
Punishment imprisonment of a term of which may extend to two years.
Fine: fine may extend to 1 lakh rupees or with both.

Section 74. Publication for fraudulent purpose:

Objective
To prevent publication of bogus digital signature certificates

Essential Ingredients:
A person knowingly
creating a digital signature certificate for any
i. fraudulent purpose or,
ii. unlawful purpose.

Penalties:
Punishment: imprisonment for a term up to two years.

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Fine: up to one lakh or both.

Section 75. Act to apply for offence or contravention committed outside India:
Objective
To punish criminals of any nationality.

Essential Ingredients
A cybercrime has been committed
The computer or network is located in India

Case Law:
R v/s Governor of Brixton prison and another.
Facts: In this case Citibank faced the wrath of a hacker on its cash management system, resulting in
illegal transfer of funds from customers account in to the accounts of the hacker, later identified as
Valdimer Levin and his accomplices.
After Levin was arrested he was extradited to the United States.
One of the most important issues was jurisdictional issue, the ‘place of origin’ of the cybercrime.

Held: The Court held that the real- time nature of the communication link between Levin and
Citibank computer meant that Levin’s keystrokes were actually occurring on the Citibank computer.

Section 77. Compensation, penalties or confiscation not to interfere with other punishment
Objective
Not to interfere with other laws in force.

Essential Ingredients
Other laws imposing penalties for the same crime are in force at the time of the crime.
Penalties under all the laws in force can be imposed.

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7. Analyse the drawbacks of the IT Act 2000

Introduction
The Act sets down a frame work of rules in Cyber Space and addresses a few pressing concerns of
misuse of technology.
But it suffers from a few serious lacunae.

Many experts, such as Supreme court lawyer and cyber rights activist, Pavan Duggal, argue that the
Act is a toothless legislation.
It has not been completely effective in issuing penalties or sanctions against perpetrators who
choose to misuse the reach of cyber space.

There are certain areas of cyber laws which need attention

Offences not Covered

1. Phishing
Phishing is a practice to fish for personal information from a computer user.
This is done through phishing websites which mimic original websites and obtain personal
information such as banking passwords, home addresses etc.

Phishing is typically carried out by e-mail and often directs users to enter personal and financial
details at a website.

There is no law against phishing in the Information Technology Act.

The Indian Penal Code talks about cheating, it is not sufficient to check the activity of phishing.

Recently a phishing attack was noticed on the customers of State Bank of India in which a clone of
the SBI website was used.

2. Identity Theft
Identity theft occurs when a person’s personal information has been stolen.

IT act 2000 fails to address this issue.

India does a lot of outsourcing work and is required to prevent identity theft.

There was an incident involving personal information of UK customers and an Indian web marketing
company.

3. Data Protection in Internet Banking

Internet Banking involves not just the banks and their customers, but numerous third parties too.

There is a High risk of leakage or tampering of data.

The act does not lay down any duty upon banks to protect the details of customers.

U.K has a data protection law which was enacted in 1998

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Under this, banks or any person holding sensitive information is liable for damages if they fail to
protect data.

4. e-cash
Transmission of e-cash and transactions online are not given protection under Negotiable
Instrument Act, 1881.

5. Spamming
Spam may be defined as Unsolicited Bulk E-mail.
Initially it was viewed as a mere nuisance but now it is posing major economic problems.
The Information Technology Act does not discuss the issue of spamming at all.
USA and the European Union have enacted anti-spam legislation.
In fact, Australia has very stringent spam laws under which the spammers may be fined up to 1.1
million dollars per day.

6. Cyber War
The issue of Cyber War is also not discussed in the Act.

India, has faced a number of cyber-attacks from China and the Chinese hackers have overridden the
Firewalls on Indian databases.

There are no provisions in the Act to make such perpetrators liable for their actions.

7. Extra Territoriality
Cybercrime is an international problem with no territorial boundaries.
The Act doesn’t mention how the extra territoriality would be enforced.

8. Domain Names
They have no enforcement machinery to ensure the protection of domain names on net.

Other Drawbacks
1. Privacy and Data Protection
Online privacy is not protected.
Section 72 (Breach of confidentiality or privacy) talks about it in some extent but not enough.

Privacy and data protection are important issues.

This deficiency has served as an obstacle to the real growth of electronic commerce.

This has also resulted in a loss of substantial foreign investment.

2. Third Party Information

Internet Service Providers (ISP) who transmits some third-party information without human
intervention are not made liable under the Information Technology Act, 2000.

One can easily take shelter under the exemption clause, if he proves that it was committed without
his knowledge or he exercised due diligence to prevent the offence.

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It’s hard to prove the commission of offence as the terms “due diligence” and “lack of knowledge”
have not been defined anywhere in the Act.

3. Copyright Laws
Movies are downloaded through peer-to-peer sharing networks
This is a violation of copyright laws.
But the volume of perpetrators is so large that it cannot be effectively restricted.

Recently in the case of the Tamil movie, “Three”, the Madras High Court passed an order to block
access to torrent websites.
This was to dissuade downloading copies of the movie from the internet.

Blocking access to the entire website is an unnecessarily strict measure.

4. Punishment
The IT (Amendment) Act, 2008, has made almost all cybercrimes, bailable offences.

The focus is more on enhancing the quantum of civil liability and reducing the quantum of
punishment.
This explains the reason why the number of convictions is in single digits.

5. Legislation
Users are getting more proficient and sophisticated every day and know how to bypass security
measures while the legislations are still stuck in the Stone Age of cyber space.

Suggestions for Improvement

1. Punishment
The IT (Amendment) Act, 2008, reduced the quantum of punishment for a majority of cybercrimes.
This needs to be rectified.

The majority of cybercrimes need to be made non-bailable offences.

2. Mobiles
The IT Act does not cover a majority of crimes committed through mobiles. This needs to be
rectified.

3. Freedom of Speech
Parts of Section 66A of the IT Act are beyond the reasonable restrictions on freedom of speech and
expression under the Constitution of India. These need to be removed to make the provisions legally
sustainable.

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8. Define ‘Digital Signature’. Explain the powers and functions of

controller of certifying authorities under Information
Technology Act.

Digital Signatures
A digital signature is equivalent to a handwritten signature.

A digital signature serves three purposes:

1) Authentication:
It identifies the sender.

2) Non-repudiation:
the sender cannot deny having sent the message.

3) Integrity:
a digital signature ensures that the message was not altered or tampered in transit.

Security
Digital signature uses asymmetric cryptography, which means public key algorithm is employed.

Types
There are basically 3 types of Digital Signature Certificates Class-1, Class-2 & Class-3 each having
different level of security.

Use
Digital signatures are commonly used for financial transactions.

e-Governance programme
Ministry of Company Affairs has launched a prestigious e-Governance programme named MCA21.
Under the said MCA21 programme, statutory filing, would be on the basis of e-forms only.

To make these new e-forms legally recognized and authenticate them, Digital Signature Certificates
issued by TCS is required.

All the authorized signatories of company under MCA21 require Class-2 Digital Signature Certificate.

These certificates are also accepted by IFFCO, Northern Railway, E-filing, E -tendering etc...

Validity
A DSC is normally valid for 1 or 2 years, after which renewal is required.

Chapter 6: Regulation of Certifying Authorities, Sections 18, 19, 21, 25 – 29, 89

Section 18: The Controller may perform all or any of the following functions, namely –

With Regard to Certifying Authorities

Supervision
(1) supervise their activities;

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Standards
(2) lay down standards to be maintained;

Duties
(3) laying down the duties of the Certifying Authorities;

Electronic Systems
(4) facilitate the establishment and regulation of electronic systems;

Accounts
(5) specify the form and manner in which accounts shall be maintained;

Subscribers
(6) specify the manner in which they shall conduct their dealings with the subscribers;

(7) resolve any conflict of interests between Certifying Authorities and subscribers;

Records
(8) maintaining a data-base containing records which is accessible to the public.

Keys
(9) specifying the form and content of an Electronic Signature Certificate and the key;

(10) certifying public keys of the Certifying Authorities

With Regard to Employees

(11) specify the qualifications and experience which employees of the Certifying Authorities should
possess;

(12) specify the terms and conditions subject to which auditors may be appointed and the
remuneration to be paid to them;

With Regard to Advertisements

(13) specify the content of written, printed or visual material and advertisements that may be
distributed or used in respect of an Electronic Signature Certificate and the Public Key;

Section 19: Recognition of foreign Certifying Authorities

The Controller can with the previous approval of the Central Government, and by notification in the
Official Gazette, recognise a foreign Certifying Authority.

He can also revoke the recognition if any rules have been contravened by recording the reasons in
writing and by notification in the Official Gazette

Section 21: License to issue electronic signature certificates

A licence may be issued to an applicant, after he fulfils requirements with respect to
qualification,
expertise,
manpower,
financial resources and
other infrastructure facilities,
which are necessary for the issue Electronic Signature Certificates as may be prescribed by the
Central Government.

Section 25: Suspension of Licence

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A Certifying Authority’s license can be revoked, if it has contravened any rules, after an inquiry,
giving a show cause notice

A Certifying Authority’s license can be suspended for a maximum period of ten days pending
completion of an inquiry.

During the suspension, A Certifying Authority cannot issue any Electronic Signature Certificate.

Section 26: Notice of suspension or revocation of licence

When the licence of a Certifying Authority is suspended or revoked, it shall be published on the
official website.

Section 27: Power to delegate

The Controller may, in writing, delegate his powers to the Deputy Controller, Assistant Controller or
any officer.

Section 28: Power to investigate contraventions

Contraventions of rules, regulations or provisions can be investigated by the controller or his
authorised officers.
They have the same powers as conferred on Income-tax authorities under Chapter XIII of the
Income-tax Act, 1961.

Section 29: Access to computers and data

If there is reasonable cause to suspect contravention, the Controller or his authorised officers can
access a computer system and its data.

He may direct any person concerned with the computer system, to provide him with technical or
other assistance as required.

89. Power of Controller to make regulations. –

Conditions
(1) The Controller may,
after consultation with the Cyber Regulations Advisory Committee and
with the previous approval of the Central Government,
by notification in the Official Gazette,
make regulations

Rules
(2) Such regulations may provide for all or any of the following matters, namely:

(1) Application details;

(2) Private Key Details.

(3) Certificate Details

(4) Standards;

(5) maintenance of data-base;

(6) the terms and conditions to recognize a foreign Certifying Authority;

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(7) the terms and conditions to grant a license;

Laying of Rules
(3) All regulations made under this Act shall be laid, as soon as possible, before each House of
Parliament, while it is in session, for a total period of thirty days.

Any suggestions made by both the houses are to be incorporated.

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9. Explain the procedure for grant in software patent and

copyright

Introduction
Software or 'Computer programs' are a set of instructions that are executed by a computer.

They take a lot of skill, time and labour to develop them.

They have a market value and hence can be copied and used by unauthorized persons.
Hence, they require protection.
Software can be protected under copyright law, and inventions related to software may be
protected under patent law.

In the 1970s and 1980s, there were extensive discussions on whether the copyright system, the
patent system, or a sui generis system, should provide protection for computer software.

Protection under copyrights:

The Copyright Act of India was amended to include 'computer program' as 'literary work'.

Section 2(ffc) of the Act defines 'Computer program' as a set of instructions.

These are in the form of words, codes, schemes or in any other form, including a machine readable
medium.
They cause a computer to perform a particular task or achieve a particular result.

Hence, software program can certainly be protected under Copyright law.

An example is the copyright granted to the Hindi to Punjabi Machine Translation Software developed
by Dr. Vishal Goyal and Dr. [Link], from the Punjabi University Patiala.

Protection under patents:

A software patent is defined by the Foundation for a Free Information Infrastructure (FFII).
“Any performance of a computer realized by means of a computer program" can be patented.

The Indian Patent Act allows a new product or process involving an inventive step and capable of
industrial application to be patented.

What cannot be patented

It also provides a list of products that cannot be patented.
Section 3 of the Act lists down products that cannot be patented, and Section 3(k) specifically states
that “computer program per se” cannot be patented.

U.S. patent law excludes "abstract ideas".

It cannot be patented if it does not cause a "further technical effect" beyond the expected
interaction between the hardware and software.

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What can be patented

A computer program (source code) may not be patentable as such, but a software invention can be
patented.

If a software invention offers a technical solution to a technical problem, it is patentable.

Advantage of patent over copyright

Copyright law protects only the expression of an idea and not the idea itself.
It can only prevent the copying of source code or a portion of it, and not the copying of the
idea/functionality.

A patent protects algorithms and prevents others from making programs having the same
functionality.
Hence, patents offer much broader protection.

Differences between Copyrights and Patents

Copyrights become effective the moment a work is created in a fixed, tangible form of expression.
Patents need to be applied for before the same is made public.

Copyright protection extends for author’s lifetime plus 60 years.

whereas term of a patent is 20 years.

Conclusion
Any software program, whether there is an inventive aspect involved or not, is protected under
copyright.
In case the software product or a process has inventive aspects, then one should definitely explore
the option of protecting the same using patents.
The reason being, protection offered by patents as compared to copyright is much broader and
stronger.

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10. Discuss the effectiveness of the IT Act 2000 in regulating

obscenity.

Introduction
In India, the legal provisions that regulate obscenity are:

Sections 292, 293 and 294 of the Indian Penal Code (“IPC”),
Sections 3 and 4 of the Indecent Representation of Women (Prohibition) Act and
Section 67 of the Information Technology Act.

The IPC penalizes acts of sale of obscene books or objects and

performance of obscene acts, in public places.

The Indecent Representation of Women Act prohibits

advertisements and
the publication/sending by post of books, pamphlets containing indecent representation of women.

The Information Technology Act (“ITA”) prohibits the publishing of obscene information over the
internet.

Obscenity
A test for obscenity is:
Offensiveness
1. Whether the work describes or depicts sex in an offensive way;

Arousal
2. Whether the work,
taken as a whole,
by an “average person”,
Going by community standards
Finds it creating an excessive interest in sexual matters;

Value
3. Whether the work, taken as a whole,
lacks serious literary,
artistic,
political or
scientific value.

The test for judging a work should be that of an ordinary person of common sense and prudence and
not an “out of the ordinary or hypersensitive person”.

The IT Act 2000

The Information Technology Act, 2000 covers all aspects of cyber obscenity:

i. Violation of privacy (section 66E)

This is Violation of bodily privacy.

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A person is guilty when he or she intentionally captures, transmits or publishes the image of a
private area of any person without their consent.

The offender is punishable with imprisonment up to three years or with fine up to two lakh rupees
or with both.

ii. Publishing or transmitting obscene material in electronic form (section 67)

Objective:
To prevent obscene information from being disseminated on the internet

Essential ingredients:
1. Publishing or causing to be published, pornographic material in electronic form.

Penalties:
(1) On first conviction --- imprisonment which may extend up to five years.
Fine: May extend to Five lakh rupees.

(2) On second conviction ---- imprisonment which may extend to Five years and Fine which may
extend up to Ten lakh rupees.

Case Law:
Dakshina Kannada Police received a complaint from a Father of a Christian Church that he was
getting offensive and obscene e-mails.

Police arrested three persons who admitted that they had done this to tarnish the image of the
Father.
As the three tendered an unconditional apology to the Father and gave a written undertaking that
they would not repeat such acts in future, the complainant withdrew his complaint.
Following this, the police dropped the charges against the culprits.

iii. Publishing or transmitting of material containing sexually explicit act etc. in

electronic form (section 67A)
When publication or transmission of any material containing sexually explicit acts or conduct takes
place in electronic form, an offence under this section takes place.

Punishment
On first conviction with imprisonment up to five years and with fine up to ten lakh rupees and
second or subsequent conviction with imprisonment up to seven years and with fine up to ten lakh
rupees.

iv. Child Pornography (section 67B)

Five instances of online child pornography have been criminalized:

Publishing Sexually explicit acts

a. Publishing or transmitting or causing to publish or transmit material in any electronic form which
depicts children in sexually explicit acts;

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Creation/ promotion/ collection

b. Creating text or digital images,
advertising, promoting,
browsing, downloading,
seeking, collecting
exchanging or distributing material
in any electronic form depicting children in obscene or indecent or sexually explicit manner;

Online Relationships
c. Cultivate, entice, or induce children to have sexual relationships online with one or more children;

Child Abuse
d. Facilitating child abuse online, and

Recording
e. Recording in any electronic form own abuse or that of others pertaining to sexually explicit act
with children.

Punishment
The offender is punishable on first conviction with imprisonment with may extend to five years and
with fine which may extend to ten lakh rupees and second or subsequent conviction with
imprisonment up to seven years and with fine which may extend to ten lakh rupees.

Cases:
1. The first case involving the conviction of a person for posting obscene messages on the internet
was Tamil Nadu Vs Suhas Katti.
The accused was a family friend of the victim and was eager to marry her, but she got married to
someone else.

When she got divorced he again pursued her for marriage, but she refused.
He started harassing her and posted obscene information and details regarding her in Yahoo
Messenger Groups.

The victim started getting annoying phone calls in the context of the people believing that she was
soliciting.
He was later convicted under section 67 of the Information Technology Act, 2000 and was sentenced
with imprisonment and fine.

2. In Avinash Bajaj v. State, the petitioner was the Managing Director of the website [Link]
which was an online shopping forum.
A seller placed on the website a listing offering an MMS video clip for sale. To avoid the filters, he
placed the listing in the category of books and magazine. The item description was “DPS Girl having
fun”.
A complaint was made to the website owner and after 2 days of the complaint the website wrote to
the seller that the content has been removed due to the violation of user agreement.
The court opined that “the entire text of the listing was obscene. There was a prima facie case under
section 67 of the Act since the interested buyer had to go through the chain of process before he
buys the product.”

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11. Explain E- Governance

Introduction
Electronic governance or e-governance is the application of information and communication
technology (ICT) for providing government services.

Advantages of ICT:
Efficient Storage and Retrieval
It Provides efficient storing and retrieval of data,

Faster Processing
It helps faster data processing than the earlier manual systems,

Decisions
It helps in taking expeditious and judicious decisions,

Transmission
Transmission of data is instantaneous,

Reach
It also helps in increasing the reach of government – both geographically and demographically.
(Geographic is more of the region category and demographic is more of the people like age, race,
etc.)

E – governance in India
In 1987, NICNET was launched, the satellite-based national computer network.
(NICNET (National Informatics Centre NETwork – NIC network))

This was followed by the launch of the District Information System of the National Informatics
Centre (DISNIC) programme.

This was to computerize all district offices in the country for which free hardware and software was
offered to the State Governments.

Types of Government Interaction in e-governance.

G2G: Government to Government
G2C: Government to Citizen
G2B: Government to Business
G2E: Government to Employee

Some Initiatives
Government to Government (G2G) Initiatives:
Khajane Project in Karnataka:
The project has resulted in the computerization of the entire treasury related activities of the State
Government.

Government to Citizen (G2C) Initiatives:

Computerization of Land Records:
Ensuring that landowners get computerized copies of ownership, tenancy and copies of Records of
Rights (RoRs).

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Bhoomi Project in Karnataka:

Online delivery of 20 million rural land records to 6.7 million farmers through 177 Government-
owned kiosks.

Government to Business (G2B) Initiatives:

e-Procurement Project in Andhra Pradesh and Gujarat:
To reduce the time and cost of doing business for both vendors and government.

Recent Initiatives
Aadhaar
To facilitate disbursements of Government entitlements using Aadhaar.

M-governance
M-Governance is not a replacement for e-Governance, rather it complements e- Governance.
M-Governance, is the use of mobiles to improve Governance service and information “anytime,
anywhere”.

Following are the advantages of E-Governance

1. Cost Reduction:
Most of the Government expenditure goes in the cost of stationery.
Soft Copies save money.

2. Increased access to information:

Government information is available over the internet.
This empowers citizens to make enlightened decisions.

3. Convenience:
E-Government brings public services to citizens on their schedule and their venue.

4. Speed of Communication:
Technology makes communication speedier.
Internet, Phones, Cell Phones have reduced the time taken in normal communication.

5. Transparency:
All the information of the Government would be made available on the internet.

6. Accountability:
Once the governing process is made transparent the Government is automatically made
accountable.

7. Improved Customer Service:

E-Government allows to redeploy resources from back-end processing to the front line of customer
service.

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Disadvantages of e-governance
1. Interaction
This system loses the person to person interaction which is valued by a lot of people.

2. Excuses
It is easy to make an excuse (e.g. the server has gone down) and blame technology.

3. Literacy
Users who do not know how to read and write would need assistance.

4. Computer Education
In general, senior citizens do not have much computer education and they would have to approach a
customer service officer for assistance.

5. Middlemen
In case of rural people, it gives scope for middle men, who distort the information.

6. Access to Computers
In Rural areas, there may not be access to computers

7. Access to Internet
Internet may not be available all over.

8. Security
The public are concerned over security, data theft and fear of spam from providing email addresses.

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UNIT 4

1. Analyse the necessity for separate legislation for protection of

Geographical indication which offers the same protection as
that of trademark.
I. Definition
A geographical indication (GI) is a name or sign used on certain products to indicate their
geographical origin (e.g. a town, region, or country).
The goods may be Natural, Agricultural, or Manufactured Goods.

It has special characteristics attributable to its place of origin.

These special characteristics may be:
Natural factors such as raw materials, soil, moisture, temperature, regional climate etc; or
Human factors such as concentration of similar businesses in the same region, or
The method of manufacture such as traditional production methods; and
quality.

The connection between the goods and place becomes so famous that any reference to the place
reminds us of the goods being produced there and the vice versa.

For example, the reference to District of Champagne, France brings to mind the wine 'Champagne'
which is produced there.

Some more Examples of Geographical Indications

'Darjeeling Tea' and 'Assam Tea',
'Real California cheese',
'Florida Oranges',
'New Zealand Lamb',
'Tuscany' for olive oil,
'Indian Carpets',
'Swiss Watches',
'Havana' for tobacco;

II. Characteristics and Need for Protection

Geographical indications are valuable property to producers from particular geographical regions.
Geographical indications -
(a) are based on traditions;
(b) They reward traditions and allow for continued evolution;
(c) They are not freely transferable from one owner to another.
(d) They emphasise the relationship between traditions, culture, human efforts, resources, and
environment of particular regions.
Hence, they have to be protected.

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III. Functions of Geographical Indications

They basically perform three functions.
Firstly, they identify goods as originating in a particular territory,
Secondly, they suggest the quality, reputation or other characteristic of the goods attributable to
their geographic origin; and
Thirdly, they promote the goods of producers of a particular area.

IV. Distinction Between Trade Mark and Geographical Indications

Ownership
A Trademark belongs to a particular enterprise.
A geographical indication never belongs to a particular enterprise. It can belong to several
enterprises in the same Geographical area.

Function
They are used to distinguish them from competing products and services.
They products originated in the same geographical area.

Nature
Trade marks work in a business context.
GIs work in a geographical context.

Quality
GIs include the quality element by definition.
Trademarks--if managed well--can only acquire such reputation with time.

Politics
GIs are a form of intellectual property
But are often handled as highly political issues affecting countries' reputation and their local
communities.

Rules
The provisions governing geographical indications include a set of rules which arch over several
fields of law such as
competition rules,
consumer protection,
agriculture-related regulatory tools,
IP, and
trade mark law.

VI. Geographical Indications Registry

The Geographical Indications Registry has been established in Chennai to administer the
Geographical Indications Act 1999 under the Controller General of Patents, Designs & Trade Marks.

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2. Discuss the role and functions of Registrar of GIs

The Geographical Indications of Goods (Registration and Protection) Act, 1999

The Register and Conditions for Registration – Chapter 2

Section 6. Register of Geographical Indications

The Registrar shall keep records in electronic form.

Section 8. Registration to be in respect of particular goods and area.

Classification
The Registrar shall classify the goods in accordance with International standards.

Publication
The Registrar shall publish an alphabetical index of classification of the goods referred.

Determination
Any questions arising shall be determined by the Registrar.

Section 10. Registration of homonymous geographical indications.

The Registrar may register a homonymous (Ambiguous/Same Name) geographical indication after
due consideration.

Procedure for and Duration of Registration – Chapter 3

Section 11. Application for registration.
Receipt
The Registrar receives applications in prescribed forms and after payment of requisite fees.
Examination
The Registrar examines the applications received as per rules.
Decision
The Registrar may refuse the application or may accept it as per rules.
Reasons
In the case of refusal or conditional acceptance of an application, the Registrar shall record in writing
the grounds and the materials used by him in arriving at his decision.

Section 12. Withdrawal of acceptance

The Registrar may withdraw acceptance of an application before registration if he is satisfied that
the requirements are not being met partially or in entirety.

Section 13. Advertisement of application

The registrar shall advertise an application after its acceptance.

Section 14. Opposition to registration

If there is opposition to an application for registration, the Registrar shall hear both parties and take
an appropriate decision.

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Section 15. Correction and amendment

The Registrar may permit the correction of any error before or after acceptance of an application.

Section 16. Registration

Registration of GI and users
After acceptance of an application, the Registrar shall register the GI and its authorised users unless
the Central Govt. objects.
Certificate
The Registrar shall issue a certificate with the seal of the Geographical Indications Registry to each
authorised user.
Amendment
The Registrar may amend the register or a certificate of registration for the purpose of correcting a
clerical error or an obvious mistake.
Abandonment
If the registration is not completed within twelve months from the date of the application by reason
of default on the part of the applicant, the Registrar may, after giving notice to the applicant in the
prescribed manner, treat the application as abandoned.

Section 17. Application for registration as authorised user

The Registrar shall receive applications from producers of goods who can use the GI and register
them as authorised users.

Section 18. Duration, renewal, removal and restoration of registration Duration

The duration of renewal for a GI or a Registered user is for a period of ten years on application with
the prescribed fees within the prescribed time.

Notice
The Registrar shall send a notice with all details before expiry.

Grace Period
The application can be made within six months after expiry with an additional surcharge.

Removal
If those conditions have not been duly complied with, the Registrar may remove the geographical
indication or the authorised user, from the register.

Restoration
Once Registration is removed, the Registrar may restore registration if he thinks fit, if he receives an
application after six months and within a year of the expiration date.

Rectification and Correction of The Register – Chapter 6

Section 27. Power to cancel or vary registration and to rectify the register
The registrar and an Appellate board receives applications for cancellation, variation or rectification.

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The tribunal may make orders as it may think fit.

A notice is sent to the Registrar by the Appellate Board who shall rectify the register accordingly.

Section 28. Correction of register

The Registrar may, on application made to him make corrections in register as required. They may
be corrections of Names, addresses etc.

Section 29. Alteration of registered geographical indications

Applications may be made to the registrar to alter the geographical indication in any manner not
substantially affecting it.

The Registrar may cause an application under this section to be advertised and if there is an
opposition to the application, the Registrar shall, after hearing the parties if so required, decide the
matter.

Miscellaneous – Chapter 9
Section 79. Reports of Registrar to be placed before Parliament
The Registrar should give yearly reports which will be placed before both houses of the parliament
by the Central Government.

Powers
The Register and Conditions for Registration – Chapter 2
Section 4. Power of Registrar to withdraw or transfer cases, etc.
The Registrar may, by order in writing with reasons, withdraw any matter pending before an officer
and deal with it himself either de novo or from the stage it was so withdrawn.
He can also transfer the same to another officer.

Appeals to the Appellate Board – Chapter 7

Section 35. Appearance of Registrar in legal proceedings
The Registrar shall have the right to appear and be heard in any legal proceedings before the
Appellate Board.

The Registrar may, in lieu of appearing, submit a statement in writing signed by him, giving such
particulars as required for the proceeding unless the Appellate Board otherwise directs.

Miscellaneous – Chapter 9
Section 60. Powers of Registrar
In all proceedings before the Registrar,
(a) the Registrar shall have all the powers of a civil court for the purposes of receiving evidence,
administering oaths, enforcing the attendance of witnesses, compelling the discovery and
production of documents and issuing commissions for the examination of witnesses;
(b) the Registrar may, make orders as to costs, and any such order shall be executable as a decree of
a civil court;
(c) the Registrar may, on an application made, review his own decision.

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Section 61. Exercise of discretionary power by Registrar.

The Registrar shall not exercise any discretionary or other power vested in him by this Act without
giving to the person an opportunity of being heard.

Section 62. Evidence before Registrar

The evidence shall be given by affidavit:
In addition to such evidence by affidavit, he may take oral evidence.

Section 64. Extension of time

An application has to be made to the Registrar for extension of time for doing any act.
If the Registrar is satisfied, he may, extend the time and inform the parties accordingly.

Section 70. Registrar and other officers not compellable to produce register, etc
In any legal proceedings to which he is not a party, the Registrar need not produce the register or
any other document in his custody.
He may produce certified copies
He need not appear as a witness unless by order of the court made for a special cause.

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3. Explain the procedure for registration of Geographical

Indications. When such registrations are prohibited?
Chapter III - Procedure for and duration of registration
Section 11. Application for registration.
Receipt
The Registrar receives applications in prescribed forms and after payment of requisite fees.
Examination
The Registrar examines the applications received as per rules.
Decision
The Registrar may refuse the application or may accept it as per rules.
Reasons
In the case of refusal or conditional acceptance of an application, the Registrar shall record in writing
the grounds and the materials used by him in arriving at his decision.

Section 12. Withdrawal of acceptance

The Registrar may withdraw acceptance of an application before registration if he is satisfied that
the requirements are not being met partially or in entirety.

Section 13. Advertisement of application

The registrar shall advertise an application after its acceptance.

Section 14. Opposition to registration

If there is opposition to an application for registration, the Registrar shall hear both parties and take
an appropriate decision.

Section 15. Correction and amendment

The Registrar may permit the correction of any error before or after acceptance of an application.

Section 16. Registration

Registration of GI and users
After acceptance of an application, the Registrar shall register the GI and its authorised users unless
the Central Govt. objects.
Certificate
The Registrar shall issue a certificate with the seal of the Geographical Indications Registry to each
authorised user.
Amendment
The Registrar may amend the register or a certificate of registration for the purpose of correcting a
clerical error or an obvious mistake.
Abandonment
If the registration is not completed within twelve months from the date of the application by reason
of default on the part of the applicant, the Registrar may, after giving notice to the applicant in the
prescribed manner, treat the application as abandoned.

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Section 17. Application for registration as authorised user

The Registrar shall receive applications from producers of goods who can use the GI and register
them as authorised users.

Section 18. Duration, renewal, removal and restoration of registration

Duration
The duration of renewal for a GI or a Registered user is for a period of ten years on application with
the prescribed fees within the prescribed time.
Notice
The Registrar shall send a notice with all details before expiry.
Grace Period
The application can be made within six months after expiry with an additional surcharge.
Removal
If those conditions have not been duly complied with, the Registrar may remove the geographical
indication or the authorised user, from the register.
Restoration
Once Registration is removed, the Registrar may restore registration if he thinks fit, if he receives an
application after six months and within a year of the expiration date.

Section 19. Effect of removal from register for failure to pay fee for renewal
The GI shall continue to be on Register for a year unless the tribunal determines otherwise.

Prohibitions
Section 9. Prohibition of registration of certain geographical indications.
A geographical indication is not registered if —
Confusion
(a) If it is deceptive or confusing; or

Obscene Matter
(b) contains scandalous or obscene matter; or

Hurts Religious Sentiments

(c) is likely to hurt the religious sentiments of any section of the citizens of India; or

Contrary to Law
(d) It is contrary to any law that is in force; or

Generic
(e) If they have become general names; or

Falsification
(f) If they falsely represent a different a different territory.
for example, to use “Darjeeling Tea” with “produce of Kenya”.

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4. When geographical indication is falsely used? What are the

penalties imposed for falsification of GIs?
Chapter 8 - Offences, Penalties and Procedure
Section 38. Falsifying and falsely applying geographical indications.
Making False GIs
(1) A GI is falsified by,
(a) making a same geographical indication or a deceptively similar one without authorised assent; or
(b) by alteration, addition, effacement of a genuine GI.
These are called false GIs.

Applying them
(2) A person falsely applies a geographical indication when,
(a) He Applies a false GI to the goods, or
(b) He Applies a false GI to the packages, or
(c) uses a genuinely marked package, with goods which are not genuine.

(4) In any proceeding, the burden of proof lies on the accused.

Section 39. Penalty for applying false geographical indications.

Punishment
Imprisonment between six months and up to three years and a fine between fifty thousand rupees
and up to two lakh rupees.
The court may, for adequate and special reasons to be mentioned in the judgment, impose a
sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand
rupees.

Section 40. Penalty for selling goods to which false geographical indication is applied.
The punishment for the offense is same as above.

Section 41. Enhanced penalty on second or subsequent conviction.

A second or subsequent conviction shall be punishable with imprisonment for a term between one
year and up to three years and with a fine between one lakh rupees and up to two lakh rupees.

The court may, for adequate and special reasons to be mentioned in the judgment, impose a
sentence of imprisonment for a term of less than one year or a fine of less than one lakh rupees.

Section 42. Penalty for falsely representing a geographical indication as registered.

(2) Contraventions shall be punishable with imprisonment up to three years, or with fine, or with
both.

Section 43. Penalty for improperly describing a place of business as connected with the
Geographical Indications Registry.
Imprisonment up to two years, or with fine, or with both.

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Section 44. Penalty for falsification of entries in the register.

Same as above

Section 46. Forfeiture of goods.

(1) When a person is convicted or acquitted, the court may direct the forfeiture of all the goods in
relation to, the offence committed to the Government.

(2) If the forfeiture is directed on a conviction and an appeal lies against the conviction, an appeal
shall lie against the forfeiture also.

(3) When, a forfeiture is directed on acquittal and the goods are of a value exceeding fifty rupees, an
appeal against the forfeiture may be preferred, within thirty days from the date of the direction.

(4) When a forfeiture is directed on a conviction, the court, before whom the person is convicted,
may order any forfeited articles to be destroyed or otherwise disposed of as the court thinks fit.

Section 47. Exemption of certain persons employed in ordinary course of business.

Where a person accused of an offence under section 39 proves,
(a) That he is just an employee going about his duties on behalf of his employer.
(b) that he has no interest by way of profit or commission.
(c) that, he has no reason to suspect the genuineness of the GI and
(d) that, he gave all the information in his power to a prosecutor,
he shall be acquitted.

Section 49. Offences by companies.

(1) If a company commits an offense, the company as well as all persons in charge of the company at
the time of the commission of the offence shall be deemed to be guilty.
A person in charge may be acquitted if he proves that the offence was committed without his
knowledge or that he exercised all due diligence to prevent the commission of such offence.

(2) If it is proved that the offence has been committed with the consent or connivance of, or due to
any neglect on the part of, any director, manager, secretary or other officer of the company, they
shall be deemed to be guilty.

Section 51. Costs of defence of prosecution.

The court may order such costs to be paid by the plaintiff or defendant as it deems reasonable
having regard to all the circumstances of the case and the conduct of the parties and the costs so
awarded shall be recoverable as if they were a fine.

Section 54. Punishment for abetment in India of acts done out of India.
If any person, being within India, abets the commission, without India, of any act which, if
committed in India, would, under this Act, be an offence, he may be tried for such abetment in any
place in India in which he may be found, and be punished therefor with the punishment to which he
would be liable if he had himself committed in that place the act which he abetted.

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5. Explain the conditions for registration of GIs

Chapter II - The Register and Conditions for Registration

Section 8. Registration to be in respect of particular goods and area.

Classification
The Registrar shall classify the goods in accordance with International standards.

Publication
The Registrar shall publish an alphabetical index of classification of the goods referred.

Determination
Any questions arising shall be determined by the Registrar.

Prohibitions
Section 9. Prohibition of registration of certain geographical indications.
A geographical indication is not registered if —
Confusion
(a) If it is deceptive or confusing; or

Obscene Matter
(b) contains scandalous or obscene matter; or

Hurts Religious Sentiments

(c) is likely to hurt the religious sentiments of any section of the citizens of India; or

Contrary to Law
(d) It is contrary to any law that is in force; or

Generic
(e) If they have become general names; or

Falsification
(g) If they falsely represent a different a different territory.
for example, to use “Darjeeling Tea” with “produce of Kenya”.

Section 10. Registration of homonymous geographical indications.

The Registrar may register a homonymous (Ambiguous/Same Name) geographical indication after
due consideration.

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6. What are the protections available for GIs?

Chapter IV - Effect of Registration

Section 20. No action for infringement of unregistered geographical indication.

(1) No proceedings can be undertaken for the infringement of an unregistered geographical
indication.

(2) Action can be taken for passing off.

Section 21. Rights conferred by registration.

The registration of a geographical indication shall give to the owners:

(a) The exclusive right to the use of the geographical indication.

(b) Can sue in case of infringement;

Section 22. Infringement of registered geographical indications.

(1) An infringement takes place if a person:

Wrong Place of Origin

(a) uses a geographical indication to indicate a wrong place of origin, for example, to use “Darjeeling
Tea” with “produce of Kenya”; or

Unfair Competition
(b) uses any geographical indication in an act of unfair competition including passing off.

The following are acts of unfair competition, namely:

Confusion
(i) acts which create confusion w.r.t the establishment or goods of a competitor;

Misrepresentation
(ii) misleading persons as to the nature, the manufacturing process, the characteristics, the
suitability for their purpose, or the quantity, of the goods;

False allegations
(iii) false allegations on the establishment or the goods of a competitor;

Additional Protection
(2) The Central Government may provide additional protection to certain goods or classes of goods
by notification in the Official Gazette.

Passing Off
(3) Any person who passes off goods accompanied by expressions such as “kind”, “style”, “imitation.

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Section 23. Registration to be prima facie evidence of validity.

The certificate of registration is prima facie evidence of the validity and be admissible in all courts
and before the Appellate Board.

Section 24. Prohibition of assignment or transmission, etc.

A registered geographical indication shall not be the subject matter of assignment, transmission,
licensing, pledge, mortgage or any such other agreement.

On the death of an authorised user his right shall devolve on his successor in title.

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7. State the important GIs of India and their features

Introduction
A geographical indication (GI) is a name or sign used on certain products to indicate their
geographical origin (e.g. a town, region, or country).
The goods may be Agricultural, Natural or Manufactured Goods.

It has special characteristics attributable to its place of origin.

These special characteristics may be:
Natural factors such as raw materials, soil, regional climate, temperature, moisture etc; or
Human factors such as concentration of similar businesses in the same region, or
The method of manufacture such as traditional production methods; and
quality.

India enacted the Geographical Indications of Goods (Registration and Protection) Act, 1999.

The GI tag ensures that only registered users are allowed to use the popular product name.

Darjeeling tea became the first GI tagged product in India, in 2004-05, since then by May 2017, 295
had been added to the list.

List of State wise GIs and their features

1. Andhra Pradesh
Tirupati Laddu – Foodstuff - Tirupati Laddu got Geographical indication tag which entitles that
only Tirumala Tirupati Devasthanams can make and sell it.

2. Bihar
Bhagalpur Silk – Handicraft - Bhagalpur Sari is a silk sari made in Bhagalpur, India. More than
a century old, Bhagalpur has about 30,000 handloom weavers working on some 25,000
handlooms. The total value of annual trade is around Rs. 100 crores, about half of which
comes from exports.

3. Chhattisgarh
Bastar Dhokra – Handicraft -Dhokra is a non–ferrous metal casting using the lost-wax casting
technique. This sort of metal casting has been used in India for over 4,000 years and is still
used.
Dhokra horses, elephants, peacocks, owls, religious images, measuring bowls, and lamp
caskets etc., are highly appreciated.

4. Goa
Fenni – Manufactured - Feni is a spirit produced exclusively in Goa, India. There are two
types of feni; cashew feni and toddy palm feni, depending on the original ingredient.

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Feni is classified as a "country liquor", and is therefore not allowed to be sold outside the
state of Goa.

5. Himachal Pradesh
Kangra Tea – Agricultural - Kangra tea is a tea from the Kangra district in Himachal Pradesh,
India.
Both black tea and green tea have been produced in the Kangra Valley since the mid-19th
century.
Kangra tea was given the Geographical Indication status in 2005.

6. Jammu and Kashmir

Kashmir Pashmina – Handicraft - Pashmina is a fine type of cashmere wool. The textiles
made from it were first woven in Kashmir, India.
The name comes from Persian meaning "made from wool" and literally translates to "Soft
Gold" in Kashmiri.
Pashmina shawls are known to pass entirely through a wearable ring with diameter of about
half an inch.
Pashmina came to be known as 'cashmere' in the West because Europeans first encountered
this fibre in Kashmir.
The wool comes from four distinct breeds of the Cashmere goat

7. Karnataka
Mysore Silk – Handicraft - Karnataka produces 9,000 metric tons of mulberry silk of a total of
14,000 metric tons produced in the country, thus contributing to nearly 70% of the country's
total mulberry silk. In Karnataka, silk is mainly grown in the Mysore district.

8. Madhya Pradesh
Ratlami Sev – Foodstuff - Its unique features crispiness and taste can be attributed to the
climate and water of Ratlam.

9. Nagaland
Naga tree tomato – Agricultural - Naga Tree tomato is a fruit that grows on trees and has a
close resemblance with tomato; this is how it got the name "Tree Tomato". The fruits of the
tree are oval, and egg shaped that grows in clusters.

It is grown widely throughout the state of Nagaland and locally known as "Si Binyano" and
"Khwridi".

10. Odisha
Ganjam Kewda Flower – Agricultural – Kewda is an extract from the male flowers of a screw-
pine tree.
The tree/shrub can reach a height of 18 feet. The male flower "spikes" are 10-20 inches long.
A fully mature Kewda tree produces about 30-40 flower spikes each year weighing 5-6 each
ounces each.

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Kewda scent is produced in Chhatrapur, Brahmapur, Gopalpur and Jagannathpur in district

of Ganjam, Odisha.

11. Puducherry
Villianur Terracotta works – Handicrafts - The Villianur Terracotta Works are handicrafts
made from fine green clay, fine sand and thennal which are hand made by villagers of
Villianur.
It has a history of more than 20 generations.

12. Rajasthan
Blue pottery of Jaipur – Handicraft - Blue Pottery is widely recognized as a traditional craft of
Jaipur, though it is Turko-Persian in origin.
The name 'blue pottery' comes from the eye-catching blue dye used to colour the pottery.

Jaipur blue pottery, is glazed and low-fired. No clay is used.

13. Sikkim
Sikkim Large Cardamom – Agricultural -Large cardamom is one of the main cash crops
cultivated in Sikkim.
It is used as a spice in several ayurvedic preparations. It contains 2-3% essential oil and
possesses medicinal properties.

14. Tamil Nadu

Dindigul Lock – Security - the Dindigul locks, are made in a town about 65 km north of
Madurai. The locks with their distinct shape, which give them their name ‘mango locks’, and
finish last a lifetime.
Till 15-20 years ago, there were 300-400 workers producing these locks.

15. U.P
Banarasi Saree – Handicraft - A Banarasi saree is a saree made in Varanasi, a city which is
also called Benares or Banaras. The sarees are among the finest sarees in India and are
known for their gold and silver brocade or zari, fine silk and opulent embroidery.

Depending on the intricacy of its designs and patterns, a saree can take from 15 days to a
month and sometimes up to six months to complete

16. West Bengal

Darjeeling Tea – Agricultural - Darjeeling tea is a tea from the Darjeeling district in West
Bengal, India. It is available in black, green, and white. When properly brewed, it yields a
thin-bodied, light-coloured infusion with a floral aroma.

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UNIT 5

1. Explain the salient features of WIPO

Introduction
World Intellectual Property Organisation (WIPO) was established in 1967.

It is Headquartered in Geneva, Switzerland.

It is a United Nations specialised agency.

Its objective is “to promote the protection of intellectual property throughout the world.

WIPO is made up of 191-member states.

Tasks
It carries out a wide variety of tasks.

These include:
Development
working with Member States to develop international IP law;

Assistance
assisting governments to develop policies, to harness the potential of IP for economic development;

Treaties
administering treaties. It currently administers 24 treaties;

Dispute Resolution
delivering dispute resolution services;

Registration
running a global registration system for IPRs; and

Forum
providing a forum for informed debate and for the exchange of expertise.

Goals
The five strategic goals laid out by WIPO are:

Promotion
To promote an extensive intellectual property culture

Integration
To integrate intellectual property into national development policies and programmes

Standards
To develop laws and standards

Quality
To deliver quality services

Efficiency
To increase the efficiency of management and support processes.

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Categorisation of IPRs
Copyright Branch
literary and artistic works,

Related Rights
Phonograms, performances of artists and broadcasts,

Industrial Property Branch

inventions,
industrial designs,
trademarks, service marks,
protection against unfair competition,

Participants and decision-making structures:

Its 191-member states comprise over 90% of the countries of the world.

It is governed by a General Assembly.

It convenes each autumn and oversees the activities of the organisation, including its budget.

It operates on a “one country, one vote” basis.

They participate to negotiate treaties and set policies.

It consists of a number of issue-specific committees which work on the substantive issues.

It has a support a staff of approximately 1,000 people.

Funding
WIPO is largely self-funded.

90% of WIPO’s budget comes from the fees of Registration.

The remaining 10% of WIPO’s budget is earned from

publications,
the fees for its arbitration and mediation services, and
from small contributions from member states.

Treaties
WTO and WIPO
TRIPS Agreement
The World Trade Organisation (WTO) administers the most important treaty on the subject, the
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).

Enforcement Mechanisms
Unlike WIPO treaties, the TRIPS Agreement includes powerful enforcement mechanisms such as
trade sanctions and litigation before the World Court that force countries into compliance with the
provisions in the agreement.

Agreement
In 1996 the WTO and WIPO signed a cooperation agreement to facilitate the implementation of the
TRIPS Agreement.

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Other Treaties
In 1996 WIPO passed two treaties collectively known as the “Internet Treaties” in response to
infringement in cyberspace.

It also passed the WIPO Copyright Treaty (WCT) (WIPO, 1996a) and

the WIPO Performances and Phonograms Treaty (WPPT) (WIPO, 1996b).

India and WIPO

India is an active member and participant in WIPO.

TKDL
After the successful revocation of turmeric, basmati and neem patents, India initiated its project for
the creation of a Traditional Knowledge Digital Library (TKDL) in 2001.

Purpose
This model is well accepted by the International Community and a very good mechanism for saving
our traditional knowledge from patents by foreign individuals.

International Conference
The International Conference on the Utilization of the Traditional Knowledge Digital Library (TKDL)
for Protection of Traditional Knowledge, was organized by WIPO and Council of Scientific and
Industrial Research (CSIR), in New Delhi in 2011.

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2. Who are entitled to membership of WIPO? What are the

functions of WIPO?

Membership
WIPO membership is open to any state that is:
a member of the Berne Union for the Protection of Literary and Artistic Works; or
a member of the Paris Union for the Protection of Industrial Property, or
a member of the United Nations, or
a member of any of the United Nations' Specialized Agencies, or
a member of the International Atomic Energy Agency, or
a party to the Statute of the International Court of Justice; or
invited by the WIPO General Assembly.
To become a member, a state must deposit an instrument of ratification or accession with the
Director General.

Currently there are 191-member states.

Functions / Activities
Registration activities
The Patent Law Treaty, came into existence in June 2000.

This has streamlined application procedures and reduced costs of obtaining simultaneous patent
protection in several countries.

Several treaties have given rise to an increased volume of registration activities.

Helping Developing Countries

WIPO helps developing countries, to receive the full benefits of the creations of their citizens.

WIPO’s also assists them:

in the preparation and enforcement of laws,

in the establishment of sound administrative structures and

in the training of appropriate personnel.

WIPO has given particular attention to the 49 Least Developed Countries (LDCs).

Implementation of TRIPS
WIPO assists developing countries in the implementation of WTO’s Agreement on Trade-Related
Aspects of Intellectual Property Rights (TRIPS).

ADR to cover Internet.

WIPO now resolves problems arising from the misuse of domain names on the Internet.

WIPO has been accredited by the Internet Corporation for Assigned Names and Numbers (ICANN) to
administer cases.

Disputes are handled and resolved online, enabling parties to settle cases in a time- and cost-
effective manner, without being physically present in the same place.

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WIPONET
A project launched by WIPO in 1999 to share worldwide global intellectual property information.

It establishes a secure, global network linking the intellectual property offices of all Member States,
for exchange of information.

Emerging Issues
WIPO is looking into emerging issues such as traditional knowledge, folklore, biological diversity,
environmental protection and human rights.

WIPO has followed the method of consultation and empirical research to find, for example, the
relation between intellectual property and genetic resources, traditional knowledge and folklore.

Awareness
WIPO is set to demystify intellectual property, so that it is recognized as a part of everyday life.

It not only aims at those involved in government, legal, and industrial levels, but the people
composing civil society.

These include NGOs, small businesses, farmers, public health personnel, and the general public.

WIPO has established a program aimed at helping small- and medium-sized enterprises (SMEs)

The people are included as stakeholders and partners in global and national intellectual property
systems.

To ensure that such inclusion is of benefit to the parties concerned, WIPO pursues a policy of
empowerment.

WIPO’s activities aim to give to all levels of society an awareness, knowledge, experience and
expertise that will enable them to use those systems effectively.

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3. Explain the important organs of WIPO

Introduction
World Intellectual Property Organisation (WIPO) was established in 1967.

It is Headquartered in Geneva, Switzerland.

It is a United Nations specialised agency.

Its objective is to promote the protection of intellectual property throughout the world.

WIPO is made up of 191-member states.

Structure
Structure of Unions
Unions
A Union consists of all the States that are party to a particular treaty. The name of the Union is, in
most cases, taken from the place where the text of the treaty was first adopted (thus the Paris
Union, the Berne Union, etc.).

The Paris and Bern unions have a General Assembly consisting of all member states.

They meet biennially.

The General Assembly elects an executive Committee consisting of one-fourth of the member states

They meet annually.

Structure of WIPO
The Convention establishing WIPO provides for four different organs:
the General Assembly,
the Conference,
the Coordination Committee and
the International Bureau.

The General Assembly

Supreme Organ
The General Assembly is the supreme organ of WIPO.

Director General.
The General Assembly appoints the Director General.
Nominations are given by the Coordination Committee;

Approvals
it approves the measures proposed by the Director General concerning the administration of the
international agreements;

it reviews and approves the reports and activities of the Director General and the Coordination
Committee;

Finance
It adopts the financial regulations of WIPO.
It adopts the biennial budget of expenses;

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Language
It determines the working languages of the Secretariat; and

Observers
It determines which States not members of WIPO and which intergovernmental and international
non-governmental organizations shall be admitted to its meetings as observers.

Conference
The Conference consists of all states party to the WIPO Convention.
It meets biennially to discuss matters of general interest in the field of intellectual property.
It also establishes WIPO's program of technical legal assistance and the budget for that program.

Coordination Committee
It consists of executive committee members of the Paris or the Berne union or both.
It meets annually.

International Bureau.
Staff
It is headed by the Director General.

He has his staff;

The staff in the professional and higher categories are recruited on a principle of equitable
geographical distribution.

The other staff are from a wide range of countries in all regions of the world.

Administration
It administers the Madrid Convention for protection of Trademarks.

Applicants of Patent Cooperative Treaty may file an International application in their own country or
with the International Bureau of WIPO in Geneva.

Membership
WIPO membership is open to any state that is:
a member of the Berne Union for the Protection of Literary and Artistic Works; or
a member of the Paris Union for the Protection of Industrial Property, or
a member of the United Nations, or
a member of any of the United Nations' Specialized Agencies, or
a member of the International Atomic Energy Agency, or
a party to the Statute of the International Court of Justice; or
invited by the WIPO General Assembly.

To become a member, a state must deposit an instrument of ratification or accession with the
Director General.

Currently there are 191-member states.

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4. Discuss the features of the Paris Convention for the protection

of Industrial property.

Introduction
The Paris Convention deals with industrial property in the widest sense.

It includes:
patents,
trademarks,
industrial designs,
geographical indications and
the repression of unfair competition.

Categories
The provisions of the Convention fall into three main categories:
national treatment,
right of priority and
common rules.

National treatment,
Same protection is available to all nationals of all the contracting parties.

Nationals of non-Contracting States also benefit if they are domiciled in a Contracting State.

Right of Priority
(2) This means that, on filing an application in one of the Contracting States, he may, apply for
protection in any of the other Contracting States, within a certain period of time.

The period is 12 months for patents and utility models; 6 months for industrial designs and marks.

These subsequent applications will be regarded as if they had been filed on the same day as the first
application.

Thus, they will have priority over applications filed by others for the same invention, utility model,
mark or industrial design during that period.

These subsequent applications, will not be affected by any event that takes place in the interval,
such as the publication of an invention etc.

Common Rules
(3) The Convention lays down a few common rules that all Contracting States must follow.

The most important are:

(a) Patents.
Acceptance
Just because one contracting state grants a patent, another contracting state need not grant the
same patent.

Rejection
In the same way, just because a patent is refused in a contracting state, it cannot be refused in
another contracting state.

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Compulsory License
A compulsory license (a license not granted by the owner of the patent but by the State), may only
be granted after three years from the grant of the patent.

The patent maybe Forfeited, if the compulsory license did not serve its purpose.

Proceedings for forfeiture may be instituted, after two years from the grant of the first compulsory
license.

(b) Trade Marks.

Universal
The registration of a mark can be done in any of the contracting states not necessarily the state of
origin.

When a mark has been registered in the country of origin, it must, on request, be accepted in its
original form in the other Contracting States.

Independent Registrations
The lapse or annulment of the registration of a mark in one Contracting State will not affect the
validity of the registration in other Contracting States.

Refusal
Registration may be refused in cases, such as
where it is devoid of distinctive character;
where it is of deceptive nature.
where it is contrary to morality or public order; or
where it would infringe the acquired rights of third parties;

It can also be refused for:

armorial bearings, or
State emblems.

Cancellation
A registration cannot be cancelled for non-use until after a reasonable period, and then only if the
owner cannot justify this inaction.

Collective marks
Collective marks must be granted protection.

(c) Industrial Designs.

Protection should be given irrespective of in which contracting state it is manufactured.

(d) Geographical Indications.

False GIs or False application of GIs must be protected against.

(e) Unfair competition.

Each Contracting State must provide for effective protection against unfair competition.

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Structure
Membership
The Convention is open to all States. Instruments of ratification or accession must be deposited with
the Director General of WIPO.

Organs
The Paris Union, established by the Convention, has an Assembly and an Executive Committee.

Every State that is a member of the Union and has adhered to at least the administrative and final
provisions of the Stockholm Act (1967) is a member of the Assembly.

The members of the Executive Committee are elected from among the members of the Union,
except for Switzerland, which is a member ex officio.

Tasks
The establishment of the biennial program and budget of the WIPO Secretariat – as far as the Paris
Union is concerned – is the task of its Assembly.

Amendments
The Paris Convention, concluded in 1883, was revised at Brussels in 1900, at Washington in 1911, at
The Hague in 1925, at London in 1934, at Lisbon in 1958 and at Stockholm in 1967, and was
amended in 1979.

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5. Explain the Madrid convention for the protection of IP.

Introduction
The Madrid system deals with trademarks.

The Madrid Protocol system provides for the international registration of trade marks by way of one
application that can cover more than one country.

The opportunity of having a single registration to cover a wide range of countries gives advantages,
both in terms of portfolio management and cost savings.

Madrid now permits the filing, registration and maintenance of trade mark rights in more than one
jurisdiction, provided that the target jurisdiction is a party to the system.

The Madrid system is administered by the International Bureau of the World Intellectual Property
Organization (WIPO) in Geneva, Switzerland.

History and development

The Madrid system comprises two treaties; The Madrid Agreement and Madrid Protocol which were
adopted in Madrid, Spain.

The Madrid Agreement was not successful for two significant reasons:

The lack of international acceptance.

Major countries, like the United Kingdom, the United States, and Central American, South American
and Asian countries, such as Japan, were not adherents, which undermined recognition of the
system as a truly "international" regime.

Mere Forwarding
The International Bureau merely forwarded an application to member countries rather than getting
them registered in the national registers.

Trademark Registration Treaty

To address this issue attempts were made during 1966 and 1967, to establish a new treaty that
would reflect the need of the times rather than the world of the 1890s when the agreement was
adopted.

This led to the drafting of the Trademark Registration Treaty (TRT) with five contracting states.

In the absence of more accessions to the TRT and the low number of registrations since its inception,
it was clear that the TRT was unlikely to supplant the Madrid Agreement.

Madrid Protocol
The introduction of the Madrid Protocol, changed this.

The Protocol became operative on April 1, 1996.

Here there is a "linking provision."

Many countries have needed to modify or consider modifying their trademark laws in order to
adhere to the Protocol.

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Members
As of April 2016, there are 97 members. The original treaty had 55 members. The term 'Madrid
Union' can be used to describe those jurisdictions party to either the Agreement or the Protocol (or
both).

Advantages
The primary advantage of the Madrid system is that it allows a trademark owner to obtain
trademark protection in any or all member states by filing one application in one jurisdiction with
one set of fees, and make any changes (e.g. changes of name or address) and renew registration
across all applicable jurisdictions through a single administrative process.

The trademark owner may then extend the protection afforded to the international registration to
one or more-member jurisdictions, a process known as 'designation'.

A useful feature of the Madrid system is that this protection may generally be extended to additional
jurisdictions at any time, such that international trade mark protection can be extended to new
jurisdictions which subsequently join Madrid, or to such other jurisdictions as the trade mark owner
may choose.

Disadvantages
One disadvantage of the Madrid system is that any refusal, withdrawal or cancellation of the basic
application or basic registration within five years of the registration date of the international
registration will lead to the refusal, withdrawal or cancellation of the international registration to the
same extent.

For example, if a basic application covers 'clothing, headgear and footwear,' and 'headgear' is then
deleted from the basic application (for whatever reason), 'headgear' will also be deleted from the
international application.

Therefore, the protection afforded by the international registration in each designated member
jurisdiction will only extend to 'clothing and footwear.' If the basic application is rejected as a whole,
the international registration would also be totally refused.

The process of attacking the basic application or basic registration for this purpose is generally
known as 'central attack.'

In 1997, less than half of a percent of international registrations were cancelled as a result of central
attack.

Under the Madrid Protocol, the effects of a successful central attack can be mitigated by
transforming the international registration into a series of applications in each jurisdiction
designated by the international registration, a process known as 'transformation.'

Although transformation is an expensive option of last resort, the resulting applications will receive
the registration date of the international registration as their filing date.

Latest Developments
United States and the European Union have joined to the Madrid Protocol. With the addition of
these jurisdictions to the protocol, most major trading jurisdictions have joined the Madrid system.

Algeria has also joined.

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6. Explain the advantages of Patent Co-operative Treaty (PCT) over

National Patent System
Introduction
Origin
PCT stands for “Patent Cooperation Treaty”.
It came into existence in 1970, and has been subsequently amended several times in 1979, 1984 and
2001.

Membership
It is open to every State that is member of the Paris Convention for the Protection of Industrial
Property.
Instruments of ratification or accession must be deposited with the Director General of WIPO.
At the moment there are 148 contracting states.

International” Patent Application

The agreement makes it possible to seek patent protection for an invention simultaneously in all 148
countries by filing a single “international” patent application.
Such an application may be filed by anyone who is a national or resident of a Contracting State.
This saves not just a lot of time but also money. That why it’s often called the “International Patent”.

Phases
The PCT-Application is divided into two application phases, International and National.
The granting of the patent remains under the control of the National Offices.

Advantages of The PCT System

Advantages for the National Patent Offices
Efficiency
1. Available manpower can be used more efficiently as the applications have already been verified in
the International phase.

Cost of Publications
2. Patent Offices can save part of the cost of publishing.

If the international application has been published in an official language of the country, they can
forego publication altogether.

Revenue
3. The PCT does not affect the revenue of the Patent Offices.

The most profitable source of revenue is from annual or renewal fees, which are not affected by the
Treaty.

International Applications
4. An International search report and an International preliminary examination report would be
available for most applications filed by foreigners.

Bypassing National Offices

5. Patent Offices of States party to the Harare Protocol, to the Eurasian Patent Convention or to the
European Patent Convention are not involved in the processing of international applications.

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Choosing this option is advisable if the national Patent Office is less well equipped than the regional
Office and is not prepared to receive and process increasing numbers of applications.

Advantages for the applicant

Filing an Application
1. Applicants may file an International application in their own country or with the International
Bureau of WIPO in Geneva.

If his international application is in the form prescribed by the PCT, it cannot be rejected during the
national phase of the processing of the application;

Costs reduce.

Procedure
2. Under normal procedures:

He must fill in different forms for different countries.

He must prepare translations of his application.

He must start preparations for filing abroad three to six months before the expiration of the priority
period.

Under the PCT:

The applicant files only one application (the international application).

It can be the official National Language. The cost of further translation has to be eventually met.

He has 18 months more to file the same application in different countries, to appoint local patent
agents in each foreign country, to prepare the necessary translations and to pay the national fees;

Amendment
3. The applicant has the possibility during the international preliminary examination to amend the
international application to put it in order before processing by the designated Offices;

Decision on protection in other countries

4. On the basis of the international search report or the written opinion, he can evaluate with
reasonable probability the chances of his invention being patented;

These reports help the applicant to make up his mind whether it is worthwhile continuing his efforts.
If he decides it is not, he saves all subsequent costs.

Advantages for the national economy and for industry

Technology Transfer
1. Technological progress is required for national economic development.
Both Local and Foreign Technologies have to be encouraged.

Since the PCT system makes it easy in obtaining patent protection on an international level, foreign
aspirants are greatly encouraged to transfer technology and licensing agreements.

Foreign Investment
2. With more licensed technology, foreign investment will be stimulated.

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Employment
3. And with both the above, there will be increased levels of local employment and the technical
skills of the local workforce will be enhanced.

Export Market
4. An increasing number of nationals will use and greatly benefit from the PCT system when they
seek patent protection abroad for their inventions, thus aiding in the penetration of export markets
by local industry.

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7. Explain the objectives of PCT

Introduction
Origin
PCT stands for “Patent Cooperation Treaty”.
It came into existence in 1970, and has been subsequently amended several times in 1979, 1984 and
2001.

Membership
It is open to every State that is member of the Paris Convention for the Protection of Industrial
Property.
Instruments of ratification or accession must be deposited with the Director General of WIPO.
At the moment there are 148 contracting states.

International” Patent Application

The agreement makes it possible to seek patent protection for an invention simultaneously in all 148
countries by filing a single “international” patent application.
Such an application may be filed by anyone who is a national or resident of a Contracting State.
This saves not just a lot of time but also money. That why it’s often called the “International Patent”.

Phases
The PCT-Application is divided into two application phases, International and National.
The granting of the patent remains under the control of the National Offices.

Procedure
Filing the Application
An application may be filed with the national patent office of the Contracting State or with the
International Bureau of WIPO in Geneva.

International Search
The international application is then subjected to what is called an "international search."

International Searching Authority (ISA)

That search is carried out by one of the major patent offices appointed by the PCT Assembly as an
International Searching Authority (ISA).

International Search Report

The said search results in an "international search report," that is, a listing of the citations of such
published documents that might affect the patentability of the invention claimed in the international
application.

Opinion
At the same time, the ISA prepares a written opinion on patentability.

Communication
The international search report and the written opinion are communicated by the ISA to the
applicant who may decide to withdraw his application, in particular where the said report or opinion
makes the granting of patents unlikely.

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Publishing
If the international application is not withdrawn, it is, together with the international search report,
published by the International Bureau.

Structure
The PCT created a Union.
The Union has an Assembly.
Every State party to the PCT is a member of the Assembly.

Tasks
Among the most important tasks of the Assembly are
Regulations
the amendment of the Regulations issued under the Treaty,
Biennial Program
the adoption of the biennial program and
Budget
budget of the Union and
Fees
the fixing of certain fees connected with the use of the PCT system.

Objectives:
The global patent system should:

Inventions
Promote high quality patents by ensuring that patent protection is provided only to inventions that
are new, involve an inventive step and are capable of industrial application

Efficiency
enabling global patent rights to be acquired in an efficient manner

Innovation
promoting innovation and competition

Economic Growth
Support economic growth.

Balance
providing a fair balance between the rights of inventors/applicants and third parties

Consistency
promoting consistent results in multiple jurisdictions

offering a fair level of protection to inventors/applicants from all backgrounds

Legal Certainty
Provide legal certainty to inventors/applicants and third parties alike

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