Notes on

INTELLECTUAL PROPERTY RIGHTS (IPR) (GPB 311, 1+0)

What is Intellectual Property Rights (IPR)?

Intellectual Property Rights are the legal rights which result from intellectual activity in the
industrial, scientific, literary and artistic fields. These are time limited rights.

Intellectual Property Rights are the rights given to persons over the creations of their
minds. They usually give the creator an exclusive right over the use of his/her creation for a
certain period of time to inventions, literary and artistic works, and symbols, names, images, and
designs used in commerce

Anything made by human intervention requires intellectual efforts and all human made
things are a result of intellectual creations. However individual persons do not own most of
these creations or organizations but human race as a whole is the collective owner of these
creations. Some specific creations made by individuals / organizations are owned by them
subject to the conditions laid down by certain laws for recognizing and rewarding the intellectual
activity of the creator. Intellectual property refers to such creations. These include Inventions,
Symbols, names, images; literary and artistic work.

Why worry about IP?

• IP provides a proprietary right in intangible products of the human mind, which are also
known as “knowledge” goods or “creations”.
• IP is ownership of property that is distinct from real estate or personal property as
these are products of human intellect or mind. Though ownership is similar, the kind of
goods are different: tangible and intangible goods

Intellectual Property Rights are the legal rights which result from intellectual activity in the
industrial, scientific, literary and artistic fields. These are time limited rights.

What is IP Management?
 In today’s knowledge economy, intellectual assets (such as technological information) are
economic assets that must be effectively managed in order to unlock their commercial potential
for the sustained growth of technology-related business.
  Legally protected intellectual assets, including intellectual property (IP), are essential for
business success. In order to achieve their growth plans, businesses should have a strong IP
portfolio.
 An effective IP management regime would have in-built incentive for scientists/innovators to
engage in knowledge creation. This would lead to greater professional recognition for them.

Why IPR came into picture ?

It is one of the components of GATT conditions which is to be implemented by all the
member countries of the GATT. India is also a member of GATT and it is an obligation for India
to honour and implement the IPR components.

What is GATT?
GATT stands for General Agreement on Tariffs and Trade.
The General Agreement on Tariffs and Trade (typically abbreviated GATT) was the
outcome of the failure of negotiating governments to create the International Trade
Organization (ITO). GATT concept was introduced with the idea for an organization to
regulate trade as part of a larger plan for economic recovery after World War II. As
governments negotiated the International Trade Organization(ITO), 15 negotiating states
began parallel negotiations for the GATT as a way to attain early tariff reductions. Once the
ITO failed in 1950, only the GATI agreement was left. The GATT’s main objective was the
reduction of barriers to international trade. This was achieved through the reduction of tariff
barriers, quantitative restrictions and subsidies on trade through a series of agreements. The
GATT was a treaty, not an organization. The functions of the GATT were taken over by the
World Trade Organization (WTO)which was established during the final round of negotiations
in the early 1990s.

The history of the GATT can be divided into three phases: the first, from 1947 until the
Torquay Round, largely concerned which commodities would be covered by the agreement and
freezing existing tariff levels. A second phase, encompassing three rounds, from 1959 to 1979,
focused on reducing tariffs. The third phase, consisting only of the Uruguay Round from 1986 to
1994, extended the agreement fully to new areas such as intellectual property, services,
capital and agriculture. Out of this round the WTO was born.

GATT and the World Trade Organization

In 1993 the GATT was updated (GATT 1994) to include new obligations upon its
signatories. One of the most significant changes was the creation of the World Trade
Organization (WTO). The 75 existing GATT members and the European Communities became
the founding members of the WTO on January 1, 1995. The other 52 GATT members rejoined
the WTO in the following two years . As of October 2007, there were a total of 151 member
countries in the WTO.

Whereas GATT was a set of rules agreed upon by nations, the WTO is an institutional
body. The WTO expanded its scope from traded goods to trade within the service sector and
intellectual property rights. Although it was designed to serve multilateral agreements, during
several rounds of GATT negotiations (particularly the Tokyo Round plurilateral agreements
created selective trading and caused fragmentation among members. WTO arrangements are
generally a multilateral agreement settlement mechanism of GATT.

Rounds of GATT trade negotiations

GATT signatories occasionally negotiated new trade agreements that all countries would
enter into. Each set of agreements was called a round. In general, each agreement bound
members to reduce certain tariffs. Usually this would include many special-case treatments of
individual products, with exceptions or modifications for each country.

1. Geneva Round (1947): 23 countries. GATT enters into force

2. Annecy Round (1949): 13 countries.
3. Torquay Round (1950): 38 countries.
4. Geneva Fourth Round (1956): 26 countries. Tariff reductions. Strategy set for future
GATT policy toward developing countries, improving their positions as treaty
participants.
5. Dillon Round (1960-1961): 26 countries. Tariff reductions. Named after C. Douglas
Dillon. Then U.S. Undersecretary of State.
6. Kennedy Round (1962-1967): 62 countries. Tariff reductions. This was an across-the-
board reduction rather than a product-by-product specification, for the first time.
Anti-dumping agreement (which, in the United States, was rejected by Congress.)
7. Tokyo Round (1973-1979): 102 countries. Reduced non-tariff trade barriers. Also
reduced tariffs on manufactured goods. Improvement and extension of GATT
system.
8. Uruguay Round (1986-94): 123 countries. Created the World Trade Organization to
replace the GATT treaty. Reduced tariffs and export subsidies, reduced other import
limits and quotas over the next 20 years, agreement to enforce patents, trademarks,
and copyrights (TRIPS), extending international trade law to the service sector
(GATS) and open up foreign investment. It also made major changes in the dispute
settlement mechanism of GATT.
 9. Murrakesh 1995- Trade related negotiations-123 Countries

THE WORLD TRADE ORGANISATION (WTO)

The World Trade Organization is an international organization. It was created for the
liberalization of international trade and came into existence on January 1st, 1995. It is successor
to General Agreement on Trade and Tariffs (GATT) and deals with the rules of trade between
nations at a global level. WTO is responsible for implementing new trade agreements. All the
member countries of WTO have to follow the trade agreement as decided by the WTO.
The World Trade Organisation (hereinafter referred to as WTO) has been established under the
GATT Agreement of 1994 to conduct the relations of member countries / participants in the field of trade
and economics with a view to raise standards of living, ensuring full employment and a large and steadily
growing volume of real income and effective demand and expanding the production of trade in goods and
services. The WTO agreement is aimed at to avail the aforesaid objective by allowing the optimal use of
the world’s resources in accordance with the objectives of sustainable development seeking both to
protect and reserve the environment, and to enhance means for doing so in a manner consistent with their
respective needs, find concerns at different levels of economic development?

The WTO has been established to fulfill the needs for positive efforts designed to ensure that
developing countries, and especially the least developed among them, secure a share in the growth of
international trade commensurate with the needs of their economic development. The participants /
contracting parties are desirous of contributing to the aforesaid objectives by entering into reciprocal and
mutually advantageous arrangements directed to the substantial reduction of tariffs and other barriers to
trade and to the elimination of discriminatory treatment in international trade relations.

The main object of the WTO is to develop an integrated, more viable and durable multilateral
trading system encompassing the General Agreement on Tariffs and Trade, the results of past trade
liberalization efforts, and all the results of the Uruguay Round of Multilateral Trade Relations.

SET-UP OF WTO

There is a Ministerial Conference composed of representatives of all the Members which meets at
least once every two years. It carries out the functions of the WTO and takes actions necessary to this
effect. It has the authority to take decisions on all matters under any of the Multilateral Trade
Agreements, if so requested by a Member, in accordance with the specific requirements for decision
making in the Agreement and in the relevant Multilateral Trade Agreements.
 There is a General Council composed of representatives of all the Members which meets when
appropriate. The General Council also carries out the functions assigned to it by the Agreement. The
General Council is free to establish its rules of procedure and approve the rules of procedure for the
Committees established under the Agreement.

The General Council is empowered to convene as appropriate to discharge the responsibilities of

the Dispute Settlement Body provided for in the DSU. The Dispute Settlement Body has its won
Chairman and is free to establish such rules of procedures as it deems necessary for the fulfillment of
those responsibilities.? The General Council convened as appropriate to discharge the responsibilities of
the Trade Policy Review Body. The Trade Policy Body is free to have its own Chairman and to establish
such rules of procedures as it deems necessary for the fulfillment of those responsibilities.

There is a Council for Trade in Goods, Council for Trade in Services and a Council for Trade –
Related Aspects of Intellectual Property Rights (hereinafter referred to as the Council for TRIPs) which
operate under the general guidance of the General Council.2. The Council for Trade in Goods oversees
the functioning of the Multilateral Trade Agreements. The Council for Trade in Services oversees the
functioning of the General Agreement on Trade in Services. These Councils carry out the functions
assigned to them by their respective agreements and by the General Council. The memberships in these
Councils are open to representatives of all members. These Councils meet as necessary to carry out their
functions.3. These subsidiary bodies have been left free to establish their respective rules of procedure
subject to the approval of their respective Councils.

The Ministerial Conference is empowered to establish a Committee on Trade and Development, a

Committee on Balance-of-Payments Restrictions and a Committee on Budget, Finance and
Administration, which have a duty to carry out the functions assigned to them by the Agreement and by
the Multilateral Trade Agreement, and any additional functions assigned to them by the General Council
and may establish such additional Committees with such functions as it may deem appropriate. As part of
its functions, the Committee on Trade Agreements in favour of the least-developed country Members and
report to the General Council for appropriate action. Membership in these Committees shall be open to
representatives of all Members.

The bodies provided for under the Plurilateral Trade Agreements are to carry out the functions
assigned to them under those agreements and to operate within the institutional framework to the WTO.
These bodies are duly bound to keep the General Council informed of their activities on a regular basis.
 The General Council has to make appropriate arrangements for effective cooperation wit other
inter-governmental organizations that have responsibilities to those of the WTO. It is free to make
appropriate arrangements for consultation and co-operation with non-governmental organizations
concerned with matters related to those of the WTO.

There is a secretariat of the WTO headed by a Director-General. The Director –General of WTO
is appointed by the Ministerial Conference which also adopts regulations setting out the powers, duties,
conditions of service and then of office.

The Director-General is empowered to appoint the members of the staff of the Secretariat and
determine their duties and conditions of service in accordance with regulations adopted by the Ministerial
Conference.

The responsibilities of the Director-General and of the staff of the Secretariat are exclusively
international in character. In the discharge of their duties, the Director-General and the staff of the
Secretariat have been directed not to seek or accept instructions from any government or any other
authority external to the WTO. They have to refrain themselves from any action which might adversely
reflect on their position as international officials. The Members of the WTO have to respect the
international character of the responsibilities of the Director-General and of the staff of the Secretariat and
are not to seek to influence them in the discharge of their duties.

The WTO facilitates the implementation, administration and operation in furtherance of

objectives of the Agreement establishing WTO (hereinafter referred to as ‘the Agreement’) and of
Multilateral Trade Agreement it also provides framework for the implementation, administration and
operation of the unilateral Trade Agreements.

The WTO provides the forum for negotiations among its Members concerning their multilateral
trade relations in matters dealt with under the agreements in the Annexes to the Agreement. It may also
provide a forum for further negotiations among its members concerning their multilateral trade relations,
and a framework for the implementation of the results of such negotiations, as may be decided by the
Ministerial Conference.

The WTO administers the Understanding on Rules and Procedures Governing the Statement of
Disputes (hereinafter referred to as the ‘Dispute Settlement Understanding’(DSU) under Agreement
establishing WTO.
 The WTO administers the Trade Policy Review mechanism (hereinafter referred to as ‘TPRM’)
provided for under Agreement establishing the WTO.

The WTO co-operates, as appropriate, with the International Monetary Fund (IMF) and with the
International Bank for Reconstruction and Development and its affiliated agencies with a view to achieve
greater coherence in global economic policy-making.

PROCEDURE FOR MAKING DECISION

The WTO follows the practice of decision making established by GATT, 1947. The body
concerned is deemed to have decided by consensus on a matter submitted for its consideration, if no
member, present at meeting when the decision is taken formally objects to the proposed decision. Where a
decision cannot be arrived at by consensus, the matter at issue is decided by voting subject to certain
exceptions. At the meetings of Ministerial Conference and the General Council, each member of the
WTO has one vote. But where the European Communities exercise their right to vote they enjoy a number
of votes equal to the number of their member States which are the members of the WTO. However, the
number of votes of the European Communities and their Member States in no case exceeds the number of
member States of the European Communities. Decisions of the Ministerial Conference and the General
Council are taken by a majority of the votes cast, unless otherwise provided in the Agreement or in the
relevant Multilateral Trade Agreement.

The Ministerial Conference and the General Council have the exclusive authority to adopt
interpretations of the Agreement establishing WTO and of the Multilateral Trade Agreement. The
decision to adopt an interpretation is taken by a three-fourth majority of the members. But the provisions
contained in Article 9(2) does not and cannot be used in any manner to undermine the amendment
provisions laid down in the Agreement establishing the WTO. In exceptional circumstances, the
Ministerial Conference may decide to waive an obligation imposed on a member by the Agreement or any
of the Multilateral Trade Agreements, provided that any such decision shall be taken by three-fourth of
the members unless otherwise provided for.

A request for a waiver concerning the Agreement establishing WTO shall be:, submitted to the
Ministerial Conference for consideration pursuant to the practice of decision-making by consensus. The
Ministerial Conference shall establish a time-period, which shall not exceed 90 days, to consider the
request. If consensus is not reached during the time period, any decision to grant a waiver shall be taken
by three-fourth of the members. A request for a waiver concerning the Multilateral Trade Agreements and
their annexes shall be submitted to the Council for Trade in Goods, the Council for trade in Services or
the Council for TRIPs, respectively for consideration during the time period which shall not exceed 90
days. At the end of the time period, the relevant council shall submit a report to the Ministerial
Conferences.

A decision by the Ministerial Conference granting a waiver shall state the exceptional I
circumstances justifying the decision, the terms and conditions governing the application of the waiver,
and the date on which the waiver shall terminate. Any waiver granted for a period of more than one year
shall be granted and thereafter annually until the waiver terminates. In each review, the Ministerial
Conference shall examine whether the exceptional circumstances justifying the waiver still exist and
whether the terms and conditions attached to the waiver have been met. The Ministerial Conference, on
the basis of annual review may extend, modify or terminate the waiver. Decisions under a Plurilateral
Trade Agreement, including any decisions on interpretations and waivers shall be governed by the
provisions of that agreement.

MEMBERSHIP OF WTO

(a) Original membership. The contracting parties of GATT, 1947 as on the date of entry into force of the
WTO Agreement and the European Communities, which accept the WTO Agreement and the Multilateral
Trade Agreements and for which Schedules of Concessions and Commitments are annexed to GATT,
1994 and for which schedules of specific commitments are annexed to GATS have become original
members of the WTO.

However, the least-developed countries recognized as such by the United Nations will only be
required to undertake commitments and concessions to the extent consistent with their individual
development, financial and trade needs or their administrative and institutional capabilities.

(b) Accession. – Any State or separate customs territory possession full autonomy in the conduct of its
external commercial relations and of the other matters provided for in the WTO Agreement and the
Multilateral Trade Agreements may accede to the WTO Agreement, on terms to be agreed between it and
the WTO. Such accession shall apply to the WTO Agreement and the Multilateral Trade Agreements
annexed thereto.

Decision on accession is taken by the ministerial conference. The Ministerial Conference

approves the agreements the agreement on the terms of accession by a two- thirds majority of the
Members of the WTO.

Accession to a Plurilateral Trade Agreement is governed by the provisions of that Agreement.

PROCEDURE OF ACCEPTANCE, ENTRY AND WITHDRAWAL FROM WTO

The WTO Agreement remained open for acceptance, by signature or otherwise, by contracting which are
eligible to become original Members of the WTO in accordance with the WTO Agreement. Such
acceptance is applicable of the WTO Agreement and the Multilateral Trade Agreement annexed hereto.
The WTO Agreement and the Multilateral Trade Agreements came into force in early 1995 in accordance
with Article 3 of the Final Act Embodying the Results of the Uruguay Round of Multilateral Trade
Negotiations and remained open for acceptance for a period of two years after its coming into force.

A member which accepts the WTO Agreement after its entry force is required to implement those
concessions and obligations in the Multilateral Trade Agreements that are to be implemented over a
period of time starting with the entry into force of this Agreement as if it had accepted this Agreement on
the date of its entry into forces.

Any member may withdraw from WTO Agreement and such withdrawal shall apply both to the
WTO Agreement and the Multilateral Trade Agreements and shall take effect upon the expiration of six
months from the date on which written notice of withdrawal is received by the Director General of the
WTO.6 However, withdrawal from a Plurilateral Trade Agreement shall be governed by the provisions of
that Agreement.

MISCELLANEOUS PROVISIONS

The WTO is guided by the decisions, procedures and customary practices followed by the
contracting parties of GATT, 1947 and the bodies established in the framework of GATT, 1947 subject to
certain conditions provided under the WTO Agreement or the Multilateral Trade Agreement.

In the event of a conflict between a provision of the WTO Agreement and a provision of any of
the multilateral Trade Agreements, the provision of the WTO Agreement shall prevail to the extent of the
conflict.

Each member shall ensure that conformity of its obligations as provided in the annexed
agreement. 9 No reservations may be made in respect of any provision of the WTO Agreement.
Reservations in respect of any of the provisions of the Multilateral Trade Agreements may only be made
to the extent provided for in those Agreements. Reservations in respect of a provision of a Plurilateral
Trade Agreement shall be governed by the provisions of that Agreement.
WTO – AGREEMENT ON AGRICULTURE (AoA)

The WTO’s Agriculture Agreement was negotiated in the 1986-94 Uruguay Round and is a
significant first step towards fairer competition and removal of distortion in trade. It includes specific
commitments by WTO member governments to improve market access and reduce trade-distorting
subsidies in agriculture. These commitments are being implemented over a six year period (10 years for
developing countries) that began in 1995. The objective of the Agreement on Agriculture is to reform
trade in the sector and to make policies more market-oriented. The new rules and commitments apply to:

MARKET ACCESS

It deals with the various restriction confronting imports. The new rule for market access in
agricultural products is “tariffs only”. Before the Uruguay Round, some agricultural imports were
restricted by quotas and other non-tariff measures.

DOMESTIC SUPPORT

It deals with the reduction in trade distorting subsidies and other programmes, including those
that raise or guarantee farm gate prices and farmers’ incomes. The main compliant about policies which
support domestic prices, or subsidize production in some other way, is that they encourage over-
production. This squeezes out imports or leads to export subsidies and low-prices dumping on world
markets. The Agriculture Agreement distinguishes between support programmes that stimulate
production directly, and those that are considered to have no direct effect. Domestic policies that do have
a direct effect on production and trade have to be cut back. WTO members calculated how much support
of this kind they were providing per year for the agricultural sector (using calculation known as “total
aggregate measurement of support” or Total AMS”) in the base years of 1986-88. Developed countries
agreed to make 13% cuts over 10 years. Least-developed countries do not need to make any cuts. (This
category of domestic support is sometimes called the “amber box”, a reference to the amber Colur of
traffic lights, which means “slow down”.). Measures with minimal impact on trade can be used freely –
they are in a “green box” (“green” as in traffic lights). They include government services such as
research, disease control, and infrastructure and food security. They also include payments made directly
to farmers that do not stimulate production, such as certain forms of direct income support, assistance to
help farmers restructure agriculture, and direct payments under environmental and regional assistance
programmes. Also permitted, are certain direct payments to farmers where the farmers are required to
limit production (sometimes called “blue box” measures), certain government assistance programmes to
encourage agricultural and rural development in developing countries, and other support on a small scale
(“de minimis”) when compared with the total value of the product or products supported (5% or less in
the case of developed countries and 10% or less for developing countires).

Export subsidies and other methods used to make exports artificially competitive. The
Agriculture Agreement prohibits export subsidies on agricultural products. Taking averages for 1986-90
as the base level, developed countries agreed over 10 years for developing countries). Developed
countries also agreed to reduce the quantities of subsidized exports by 21% over the six years (14% over
10 years for developing countries). Lease-developed countries do not need to make any cuts.

Other WTO agreements related to agriculture

Agreement on sanitary and phytosanitary measures

This agreement is related to food safety and animal and plant health regulations. The agreement
recognizes but that they should be applied only to the extent necessary to protect human, animal or plant
life or health and should not arbitrarily or unjustifiably discriminate between Members where identical or
similar conditions prevail. In order to harmonize sanitary and phytosanitary measures on as wide a basis
as possible, Members are encouraged to base their measures on international standards, guidelines and
recommendations where they exist. However, Members may maintain or introduce measures which result
in higher standards if there is scientific justification or as a consequence of consistent risk decisions based
on an appropriate risk assessment. The Agreement spells out procedures and criteria for the assessment of
risk and the determination of appropriate levels of sanitary of phytosanitary protection.

Agreement on Technical Barriers to Trade (TBT)

Procedures, do not create unnecessary obstacles to trade. However, it recognizes that countries
have the right to establish protection for human, animal or plant life or health or the environment, and
should not be prevented from taking measures necessary to ensure those levels of protection are met. The
agreement therefore encourages countries to use international standards where these are appropriate, but it
does not require them to change their levels of protection as a result of standardization. A Code of Good
Practice for the Preparation, Adoption and Application of Standards by standardizing bodies, which is
open to acceptance by private sector bodies as well as the public sector, is included as an annex to the
agreement.
Agreement on Trade Related aspects of Intellectual Property Rights

The Agreement is to promote effective. and adequate protection of intellectual property rights and
also to ensure that the measures taken in this direction do not become an impediment to legitimate trade.
The agreement recognizes that widely varying standards in the protection and enforcement of intellectual
property rights in the form of patents, trademarks and service marks, copyrights and industrial designs. In
agriculture, plant varieties, are protected either by patents or by a sui generic system.

Ministerial conferences of WTO

The highest decision-making body of the WTO is he Ministerial Conference, which usually meets
every two years.
The Ministerial Conference can take decisions on all matters under any of the multilateral trade
agreements.
After the establishment of WTO in 1995, there were no further GATT rounds but only
Ministerial conferences of WTO came into practice. Since 1996 10 meetings of Ministerial
conferences of WTO were held once in two years in different countries which are as follows.

I MC : The inaugural ministerial conference was held in Singapore from 9–13 December,
1996
II MC: in Geneva in Geneva. Switzerland from 18–20 May 1998

III- MC: in Seattle, Washington 30 November – 3 December 1999 which ended in failure, with
massive demonstrations and police and National Guard crowd-control efforts drawing worldwide
attention.
IV MC: in Doha in the Persian Gulf nation of Qatar from 9–14 November 2001
The Doha Development Round was launched at the conference. The conference also approved
the joining of China, which became the 143rd member to join.

V MC- held in Cancún, Mexico from 10–14 September 2003 which aimed at forging agreement
on the Doha round. An alliance of 22 southern states, the G20 developing nations (led by India,
China, Brazil, ASEAN led by the Philippines), resisted demands from the North for agreements
on the so-called "Singapore issues" and called for an end to agricultural subsidies within the EU
and the US. The talks broke down without progress.
VI- MC in Hong Kong from 13–18 December 2005. In this meeting, countries agreed to phase
out all their agricultural export subsidies by the end of 2013

VII WTO Ministerial Conference: Geneva, Switzerland, took place from 30 November to 2
December 2009. The general theme for discussion was “The WTO, the Multilateral Trading
System and the Current Global Economic Environment”.
VIII WTO Ministerial Conference held at Geneva, Switzerland, from 15 to 17 December 2011.
In parallel to the Plenary Session, where Ministers made prepared statements, three
Working Sessions took place with the following themes: “Importance of the Multilateral
Trading System and the WTO”, “Trade and Development” and “Doha Development
Agenda”.

IX WTO Ministerial Conference held at Bali, Indonesia, from 3 to 7 December 2013. The
ministers adopted the “Bali Package”, a series of decisions aimed at streamlining trade, allowing
developing countries more options for providing food security, boosting least-developed
countries’ trade and helping development more generally. They also adopted a number of more
routine decisions and accepted Yemen as a new member of the WTO.

X WTO Ministerial Conference held at Nairobi, Kenya, from 15 to 19 December 2015. It

culminated in the adoption of the "Nairobi Package", a series of six Ministerial Decisions on
agriculture, cotton and issues related to least-developed countries (LDCs).

XI WTO Ministerial Conference will be held at Buenos Aires, 11-14 December 2017

Trade Related Aspects of Intellectual Property Rights (TRIPS)

The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is an International
Agreement administered by the World Trade Organization (WTO) that sets down minimum standards
for many forms of intellectual Property (IP) regulation. It was negotiated at the end of the Uruguay
round of the General Agreement on Tariffs and Trade (GATT) in 1994.

• Patents must be granted in all "fields of technology," although exceptions for certain public
interests are allowed (Art. 27.2 and 27.3 )

• Article 27 of the TRIPS Agreement defines which inventions governments are obliged to make
eligible for patenting, and what they can exclude from patenting.
•
Inventions that can be patented include both products and processes, and should generally
cover all fields of technology.

What is covered under IPR…?

1. Patents,
2. Plant Variety Protection(PVP)
3. Geographical Indications
4. Traditional Knowledge
5. Copy Rights
6. Trade Marks
7. Trade Secrets
 8. Industrial Designs

1. PATENT:
A Patent is an exclusive monopoly granted by the Government to an inventor over his
invention for limited period of time. Patents protect inventions and improvements to existing
inventions.

An inventor or any other person/company assigned by the inventor can obtain the patent
over his invention. A patent is obtained by the inventor or his assignee by filing an application
with the patent office in the stipulated forms as required by the Patent act of that country.

A patent is granted only on that invention, which is new(Novelty), non-obvious and has
industrial applicability(Utility).

Novelty(New). It must show some new characteristic that is not known in the body of existing
knowledge (referred to as prior art ) in its technical field.

Non-obviousness( Inventive step). It must show an inventive step that could not be deduced
by a person with average knowledge of the technical field.

Utility( Industrial Applicability) The invention must be of practical use capable of some kind of
industrial application.

A patent can expire in the following ways:

The patent has lived its full term i.e. the term specified by the patent act of the country.
Generally it is 20 years from the date of filing.

The patentee has failed to pay the renewal fee. A patent once granted by the Government has
to be maintained by paying annual renewal fee.

The validity of the patent has been successfully challenged by an opponent by filing an
opposition either with the patent office or with the courts.

While not as widespread as patents, utility models are also used to protect inventions.

Utility models are found in the laws of more than 30 countries, as well as in the regional
agreements of the African Regional Industrial Property Organization (ARIPO) and the
Organisation africaine de la propriété intellectuelle (OAPI). In addition, some countries, such as
Australia and Malaysia, provide for titles of protection called innovation patents or utility
innovations, which are similar to utility models. Other countries, like Hong Kong, Ireland and
Slovenia, have a short-term patent that is equivalent to the utility model.
In conclusion , there is no International or Global Patent. An inventor has to file an application
in each country, where he seeks to protect his invention. There are regional and/or
International treaties to facilitate the procedure to seek protection like Patent co-operation
Treaty (PCT) or European Patent Convention (EPC) .

Basic Philosophy of patents

Balances the rights of the creator over his intellectual property against… the right of society at large to
benefit from the intellectual property of the creator.

Patents – Law and Procedure

Objective of the Patent Law

 To encourage and develop new technology.

 It stimulates technical progress in 4 ways
 It encourages Research and Invention
 It induces the inventor to disclose his invention
 It offers a reward for the development of an invention which can be commercially exploited
 It provides an inducement to invest capital in the new lines of production
Value of Patent System
 It protects abuse of Patent Rights in the entire world
 Inventions made in technology in all fields are published in the patent specifications filed at the
patent offices of the different countries
 A world-wide exchange of technical information is possible only by the publication of such
patent specification
 The value of patent system is demonstrated in almost all advanced countries with the number of
patents granted
History of Patent Law
• 1856: Act VI of 1856 on protection of inventions based on the British patent law of 1852. Certain
exclusive privileges granted to inventors of new manufacturers for a period of 14 years.
• 1859: The act modified as Act XV; patent monopolies called exclusive privileges (making, selling
and using inventions in India and authorizing others to do so for 14 years from date of filing
specification)
• 1883: Protection of inventions act
• 1888: Consolidated as the inventions & designs act
• 1911: Indian patents & designs act
• 1975: India joins WIPO
• 1995: The Indian government became a signatory to TRIPS (Trade Related Intellectual Property
Rights) after it joined the WTO in 1995
• 1972: Patents act (act 39 of 1970) came into force on 20th April 1972
• 1999: On March 26, Patents (Amendment) Act, (1999) came into force
 • 2002: Patents (Amendment) Act 2002 came into force from 20th May 2003. The concepts of 20
year patent term, 18 months publication, request for examination, inventive step for Patent-
ability were introduced by this amendment
• 2005: Patents Act 1970 as amended by Patents (Amendment) Ordinance 2004 & Patent Rules
2003 as amended by The Patent Amendment Rules, 2005 come into force .

Advantages of Patents to Inventor

• Technological inventions provides incentives to monetary reward
• Exclusive right to use the patent
• Grant Licences
• can prevent others from copying the monopoly granted in his favour
• By transferring Know how also he can receive consideration

Patentable Invention:
• Any new and useful art process, method or manner of manufacture machine, apparatus or
other article
• Substance produced by manufacture and includes any new and useful improvement of
any of them, and an alleged invention
• An invention must be novel
• Has an inventive step or lack of obviousness and is capable of industrial application

Exception from the Patents as per TRIPS of the GATT (Article 27):
Patentability of plants and animals other than micro-organisms and essentially biological processes for
the production of plants and animals other than non-biological or micro-biological processes. However,
members shall provide for the protection of plant varieties either by patents or by an effective sui
generis system or by any combination thereof.

What cannot be Patented

• A substance obtained by a mere mixture
• Mere re-arrangement or duplication of known devices
• A method or process of testing
• A method of agriculture and horticulture
• A method for the treatment of human beings

What are not Inventions?

According to Sec. 3 of the Patents Act 1970. The following are not inventions within the meaning
of the Act:
• An invention which is frivolous or which claims anything obviously contrary to well
established natural laws;
Frivolous Inventions
• Inventions contrary to law, morality or injurious to public health
• Discovery of a scientific principle or the formulation of an abstract theories.
• Discovery of a new use or property of a known substance
• Any invention relating to the use of atomic energy

What are not Inventions?(contd…)

• An invention, the primary or intended use or commercial exploitation of which could be

contrary to public order or morality or which causes serious prejudice to human, animal or
plant life or health or to the environment;
• The mere discovery of a scientific principle or the formulation of or discovery of any living
thing or non-living substance occurring in nature (Ex. Salts, Polymorphs)
• The mere discovery of a new from of a known substance which does not result in the
enhancement of the known efficacy of that substances or the mere discovery of any new
property or new use for a known substance or of the mere use of a known process, machine
or apparatus unless such known process results in a new product or employs at least one new
reactant;
(Ex. new & alternative method for preparing Aspirin is Patentable)
• A substance obtained by a mere admixture resulting only in the aggregation of the properties
of the components thereof or a process for producing such substances.
(Ex. soap, detergents, lubricants - synergetic properties of a mixture is not admixture)
• The mere arrangement or re-arrangement or duplication of known devices each functioning
independently of one another in a known way;
(Ex. play-cum-educational device, A Dice)
• A method of agriculture or horticulture
• Any process for the medicinal, surgical, curative, prophylactic (diagnostic, therapeutic) or
other treatment of human beings or any process for a similar treatment of animals to render
them free of disease or to increase their economic value or that of their products.
(Ex. surgical/therapeutic instruments/apparatus may obtain patent)
• Plants and animals in whole or any part thereof other than micro-organisms but including
seeds, varieties and species and essentially biological processes for production or propagation
of plants and animals;
(Ex : Clones and new variety of plants are not patentable. But process/method of Genetically
Modified Organisms are patentable)
• A mathematical or business method or a computer program per se or algorithm;
• A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever,
including cinematographic works and television productions;
• A mere scheme or rule or method of performing mental act or method of playing a game;
(Ex. method of learning language, playing chess,)
• A presentation of information;
• (visual/codes, signal)
• Topography of integrated circuits;
• An invention which, in effect, is traditional knowledge or which is an aggregation or
duplication of known properties of traditionally known component or components.
• Inventions Relating to Atomic Energy –Sec.4
How to obtain a Patent?
Who can apply?
• True and the first inventor
• His/her assignee
• Legal Representative of deceased inventor/assignee
• Provisional Specification
• Complete Specification
• Transfer of Patent Rights
• Assignment, License Compulsory License
Contents of Specification
• Title, -Field of Invention, -State of art in the field, -object of the invention(Problem-
Solution), _Statement of invention, -Detailed description of the invention with Drawings
• Scope/Ambit of the invention, -Claims
Grant of Patent/Opposition:
• Examination of the application, Disclaimer and references
• Grounds of opposition:
• Obtaining wrongfully
• Prior publication
• Prior claim
• Prior public knowledge
• Obviousness and lack of inventive step
• Invention not sufficiently described
Revocation /Surrender of Patents
• Patentee is not entitled to the patent, -Patent wrongfully obtained
• Amendment obtained by fraud, -subject of claim not an invention
• Invention claimed was secretly used before priority date
• Mosaic Publications, -Workshop improvements
• Invention not sufficiently described, -claims not clearly defined
Infringements of Patents:
• Relief's:
• Injunction
• Damages or Account of profits
Different categories of independent claims stating unity of invention:
• Product, process for its manufacture and use of the product
• Process and apparatus for carrying out the process
• Product, process for its manufacture and apparatus for carrying out the Process

For Example

• If one has invented a new kind of spray bottle patents may be granted for -
• The bottle itself (a product)
• A chemical in the plastic (chemical composition)
• The spraying mechanism (an apparatus)
• How you extruded the plastic (a process)

What is WIPO?
WIPO stands for World Intellectual Property Organization.

• The World Intellectual Property Organization (WIPO) is one the specialized agencies of
the United Nations which was created in 1967 with the stated purpose “to encourage
creative activity, [and] to promote the protection of Intellectual Property throughout
the world”.
• WIPO became a specialized agency of the UN in 1974
• WIPO currently has 184 member states, administers 23 international treaties and is
headquartered in Geneva, Switzerland. Almost all UN members are members of the
WIPO.
• India is also a member of World Intellectual Property Organization (WIPO).

Enforcement of Intellectual Property issues in India

• India is a member of World Intellectual Property Organization (WIPO) based in Geneva.

• Department of Industrial Policy & Promotion (DIPP) is the nodal Department in the
Government of India for all matters concerning WIPO.

• Civil and criminal provisions exist in various laws for dealing with counterfeiting and
piracy.

• DIPP is concerned with legislations relating to Patents, Trade Marks, Designs and
Geographical Indications. These are administered through the Office of the Controller
General of Patents, Designs and Trade Marks (CGPDTM):
 • The Department of IPP has set up an Inter-ministerial Committee to coordinate IP
enforcement issues.

The Acts & Offices to implement and deal with IPR components in India

• The Patents Act, 1970 (amended in 1999, 2002 and 2005) through the Patent Offices
at Kolkata (HQ), Mumbai, Chennai and Delhi.
• The Designs Act, 2000 through the Patent Offices at Kolkata (HQ), Mumbai, Chennai
and Delhi.
• The Trade Marks Act, 1999 through the Trade Marks Registry at Mumbai (HQ),
Chennai, Delhi, Kolkata and Ahmedabad.
• The Geographical Indications of Goods (Registration & Protection) Act, 1999 through
the Geographical Indications Registry at Chennai.

Modernization of IP administration in India

• E-filing facility for patent and trademark applications has been introduced on
20.7.2007

Frequently Asked Questions(FAQ’S) on PATENTS:

I. What is a Patent?

A Patent is an exclusive monopoly granted by the Government to an inventor over his invention
for limited period of time.

II. How do I find out if I need patent, trademark and/or copyright protection?

Patents protect inventions and improvements to existing inventions. Copyrights cover literary, artistic,
and musical works. Trademarks are brand names and/or designs, which are applied to products or used
in connection with services.

[Link] can obtain a Patent?

An inventor or any other person/company assigned by the inventor can obtain the patent over
his invention.

[Link] a patent is obtained / filed?

A patent is obtained by the inventor or his assignee by filing an application with the patent
office in the stipulated forms as required by the Patent act of that country.
 V. Why does the Government encourage filing of patents?

To encourage innovation and investment in the research and development activities so that
there is economic, industrial and technological development in the country.

VI. How does a patent document help in R&D?

Study of a Patent document may stop re-inventing the wheel. A scientist, who has not consulted
the patent literature, may start working on a problem for which the solution might have already
been found by someone else and it is available in the patent literature.

VII. Which invention qualifies for the grant of a patent?

A patent is granted only on that invention, which is new, non-obvious and has industrial
applicability.

VIII. Upto what extent the inventor has to disclose his invention to get a patent?

An inventor has to disclose his invention in such a manner that any person, other than the
inventor, skilled in the art should be able to work out the invention.

IX. How does a patent expire?

A patent can expire in the following ways:

1. The patent has lived its full term i.e. the term specified by the patent act of the country.
Generally it is 20 years from the date of filing.
2. The patentee has failed to pay the renewal fee. A patent once granted by the Government
has to be maintained by paying annual renewal fee.
3. The validity of the patent has been successfully challenged by an opponent by filing an
opposition either with the patent office or with the courts.

X. Is there an International/Global patent?

No. There is no International or Global Patent. An inventor has to file an application in each
country, where he seeks to protect his invention. There are regional and/or International
treaties to facilitate the procedure to seek protection like Patent co-operation Treaty (PCT) or
European Patent Convention (EPC)
 XI. Can a scientist get a patent on the invention, which he has already published
in the form a paper in a national/International journal?

No. A patent is not granted to an invention if it is already available with the public either in the
form of published literature of common knowledge.

XII. Why one should access the patent literature?

Before the start of the research and development project, one should scan the patent literature
to stop re-inventing the wheel or during the development phase, when stuck up with a
technical problem, to find a technical solution. or once the research is complete i.e. at the time
of filing the patent application, to narrow down or broaden the claims and/or to draft the
application for getting a patent

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1. PLANT VARIETY PROTECTION Or Plant Breeders’ Rights

Plant breeders’ rights (PBR), also known as plant variety rights (PVR), are
Intellectual Property Rights granted to the breeder of a new variety of plant (or to another
person or entity that can claim title in the new plant variety by, for example, agreement
with the breeder or inheritance from a desceased breeder.

These laws typically grant the plant breeder control of the propagating material
(including seed, cuttings, divisions, tissue culture) and harvested material (cut flowers,
fruit, foliage) of a new variety for a number of years.

With these rights, the breeder can choose to become the exclusive marketer of the
variety, or to license the variety to others.

Breeders can bring suit to enforce their rights and can recover damages for infringement.
Plant breeders’ rights contain exemptions fro infringement, that are not recognized under
patent law.

International rights

In 1957, the French Government held a conference in Paris concerned with the protection
of new varieties. This led to the creation of the Union Internationale pour la Protection
des Obtentions Vegetales (UPOV) and adoption of the first text of the International
 Convention for the Protection of New Varieties of Plants (UPOV Convention) in 1961.
The purpose of the Convention was to ensure that the member states party to the
Convention acknowledge the achievements of breeders of new plant varieties by making
available to them an exclusive property right, on the basis of a set of uniform and clearly
defined principles.

The Convention was revised in Geneva in 1972, 1978 and 1991. Both the 1978 and the
1991 Acts set out a minimum scope of protection and offer member States the possibility
of taking national circumstances into account in their legislation.
The UPOV Convention also establishes a multilateral system of national
treatment, under which citizens of any member state are treated as citizens of all member
states for the purpose of obtaining plant breeders rights.

The UPOV Convention is not self-executing. Each member state must adopt legislation
consistent with the requirements of the convention and submit that legislation to the
UPOV Secretariat for review and approval by the UPOV Council, which consists of all
the UPOV member states acting in committee.
In compliance with these treaty obligations, the United Kingdom enacted the
Plant Variety and Seeds Act 1964 (UK). Similar legislation was passed in the
Netherlands, Denmark, Germany, and New Zealand. In 1970 the United States followed
the lead of seventeen Western European nations and passed the Plant Variety Protection
Act 1970 (US). This legislation provided protection to developers of novel, sexually
reproduced plants. In total, 65 countries have signed the UPOV Convention and adopted
plant breeders’ rights legislation consistent with the requirements of the convention.

The WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs)

requires member states to provide protection for plant varieties either by patents or by an
effective sui generis (stand alone) system, or a combination of the two. Most countries
meet this requirement through UPOV Convention-compliant legislation. India has
adopted a plant breeders’ rights law that has been rejected by the UPOV Council as not
meeting the requirements of the treaty.

Plant Variety Protection (PVP)in India

India being the signatory, to the TRIPs agreement of the World Trade Organization
(WTO) had agreed to provide protection to plant varieties and opted to come out with our own
proposal to honour the international binding.. Keeping the interest of the farmers, researchers,
seed industry and the international binding, the Government of India enacted “The Protection of
Plant Varieties and Farmers’ Rights Act(PPV&FR)” in 2001 and regulations for implementing
the act were formulated in 2003. Later, so many recommendations and proposals were made and
finally the PPVFR Act came into enforcement in 2005 after making rules of the Act and
notification in the central Gazette. It is very essential to understand the details of the PPV&FR
Act by all those stake holders of plant varieties and agricultural development and research as this
act involves many technical and legal issues.

The main objectives of the Act are

 To recognize and protect the rights of farmers for their contribution made at any time in
conserving, improving and making available plant genetic resources for the development of new
plant varieties.
 To encourage the development of new varieties of plants for accelerated agricultural
development.
 To accelerate the agricultural development in the country and protect Plant Breeders Rights
(PBR) and to stimulate investment in research and development (R&D) both in public and private
sector, for breeding new plant varieties.
 To facilitate the growth of the seed industry, which will ensure the availability of good quality
seed and plant material to the farmers.

Salient features of the Act

Registration of all the plant varieties

The registration of a plant variety under the PPVFR Act is legal process and as per the
Act it is compulsory. This process establishes the Plant Breeders Rights(PBR) on the plant
variety in favour of the applicant(s). PBR is a legal ownership right granted on a plant variety.
Ownership of PBR is not permanent but only for a specific period.( 15-18 years). PBR can be
inheritable by succession, transferable and salable.

Who are eligible for Registration of Plant Variety

A person/an organization/Individual Farmer/A group of community of farmers who have bred or

conserved a variety or their assignees. As per Section-16 of the Act, the eligibility applies to

(a) any person claiming to be the breeder of the variety or

(b) any successor of the breeder of the variety; or

(c) any person being the assignee of the breeder of the variety in respect of the rights to

make such application; or

(d) any farmers or group of farmers or community of farmers claiming to be the breeder

of the variety; or

(e) any person authorized in the prescribed manner by a

person specified under clauses (a) to (d) to make application on

 his behalf; or

(f) any university or publicly funded agricultural institution claiming to be the breeder of the
variety.

The type of varieties that can be registered

• New Varieties
• Farmers’ Varieties
• Extant Varieties

A NEW VARIETY shall be registered under this Act if it conforms to the criteria of novelty,
distinctiveness, uniformity and stability.

Novel: if, at the date of filing of the application for registration for protection, the propagating or
harvested material of such variety has not been sold or otherwise disposed of by or with the
consent of its breeder or his successor for the purposes of exploitation of such variety -

(i) in India, earlier than one year; or

(ii) outside India, in the case of trees or vines earlier than six years, or in any other case,
earlier than four years.

Provided further that the fact that on the date of filing the application for registration, the
propagating or harvested material of such variety has become a matter of common
knowledge other than through the aforesaid manner shall not effect the criteria of novelty for
such variety.

Distinctness:Distinct, if it is clearly distinguishable by at least one essential characteristic from

any other variety whose existence is a matter of common knowledge in any country at the time
of filing of the application.

Uniformity:Uniform, if subject to the variation that may be expected from the particular features
of its propagation it is sufficiently uniform in its essential characteristics.

Stability:Stable, if its essential characteristics remain unchanged after repeated propagation or,
in the case of a particular cycle of propagation, at the end of each such cycle.

Registration of Essentially Derived Variety (EDV): A variety essentially derived from an

initial variety can also be registered / protected provided that it differs from the initial variety for
at least for one character and meets the DUS needs. There must be an authorization by the
breeder of the initial variety to the breeder of the EDV and it shall be on a mutually agreed terms
and conditions. Material derived through single gene transfer, recurrent back cross derivatives,
CMS line, mutant, somaclonal variants, chimeras, poly-embryo, ploidy level changes and
deletion/ substitution lines, etc. can come under EDV. EDV is also considered as a New Variety.

EXTANT VARIETIES: Extant variety means a variety available in India which is -

(i) Notified under section 5 of the Seeds Act, 1966; or

(ii) Farmers; variety; or

(iii) A variety about which there is common knowledge

(iv) Any other variety which is in public domain (Released by Private/Public Organizations)

FARMERS’ VARIETY

(i) Has been traditionally cultivated and evolved by the farmers in their fields;
or (ii) Is a wild relative or land race or a variety about which the farmers possess the common
knowledge.

Exclusion of some varieties from registration

The varieties falling under following conditions are prohibited for registration.

- Prevention of commercial exploitation of variety which is necessary to protect public order

or public morality or human, animal and plant life and health or to avoid serious prejudice to the
environment.

- Species which involves “any technology” includes Genetic Use Restriction Technology
(GURT) and Terminator Gene Technology.

Process of Varietal Registration

• Submission of application to the Registrar in the prescribed proforma

• Deposition of Seed to National Gene Bank for conducting DUS test.
• Advertisement of application to call for any opposition.
• Issue of certification of Registration.
• Publication of list of registered varieties.
• Breeder to deposit the seeds/propagating material of registered varieties to National Gene
Bank.
• Registration to confer Right of PBR.
Plant Variety Registry

A National Register of Plant Varieties shall be maintained at the Head Office of the Plant
Variety Registry in the Authority. The register will contain the name of registered plant variety
with the name, addresses and rights of their breeders and particulars of the denominations of the
registered variety.

Breeders’ rights

Breeder of a registered variety shall have an exclusive right to produce, sell, market,
distribute, import or export the variety. In the case of an Extant variety, unless a breeder or his
successor establishes his right, the central government, and in cases where such extant variety is
notified for a state or for any area thereof under the Section- 5 of the Seeds Act, 1966(54 of
1966), the state government shall be deemed to be the owner of such rights.

Researchers’ Rights

a) The use of any variety registered under this Act by any person using such variety for
conducting experiment or research; or

(b) The use of a variety by any person as an initial source of variety for the purpose of creating
other varieties

Provided that the authorization of the breeder of a registered variety is required where the
repeated use of such variety as a parental line is necessary for commercial production of such
other newly developed variety.

Legal definition of a farmer as per the Act

“Farmers” means any person who - (i) Cultivates crops by cultivating the land himself;
or (ii) Cultivates crops by directly supervising the cultivation or land through any other person;
or (iii) Conserves and preserves, severally or jointly, with any other person any wild species or
traditional varieties or adds value to such wild species or traditional varieties through selection
and identification of their useful properties. The Act recognizes the Farmer as not only as
cultivator, but also as conservator of traditional varieties, as Plant Breeder and as eligible person
to register the Plant Varieties.

Farmers’ Rights

The provision of Rights to Farmers as per the Act may be described as follows.

1. Farmers’ Rights on Seeds: which includes right to save seed from one’s crop and use the
saved seed for sowing, exchanging, sharing or selling to other farmers. The Act restricts farmers
selling seeds of registered variety in Packages and containers with labels bearing its registered
name (Branded)
2. Farmers’ Rights to Register the Traditional Varieties: Traditional varieties developed or
conserved by a community of farmers and new varieties developed by one or more farmers are
eligible for registration. PVP laws of other countries do allow protection of new varieties bred
only by professional Breeders/companies. No registration fees is charged to farmers to register
the varieties.

3. Farmers’ Rights for Reward and Recognition:The Act has provision to reward and
recognize the Individual farmer/s or farming and tribal communities for their role in
conservation of varietal wealth of crop plants and contribution to Plant Genetic
Resoureses(PGR) development.

4. Farmers’ Rights for benefit sharing: The Act provides for equitable sharing of the benefit
earned from the new variety with farming or tribal communities that had contributed varieties
used as parents. Farmers are given opportunity to submit claims for benefit share when their
variety is used as parents. The benefit share may be disbursed from the “National Gene
Fund”(NGF) to the eligible individual, community or institution. Assistance from governmental
or non-governmental organizations may also help in this regard.

5. Farmers’ Rights to get Compensation for the Loss suffered from the Registered variety:
Commercial demand for a registered variety arises based on the agronomic performance of the
variety. Some seed companies try to promote the sales of the seed by making exaggerated claims
on the variety. The Act requires that the seed be sold with a declaration on varietal agronomic
performance. In the event farmers are not able to achieve the claimed performance, the PBR
holder is liable to pay compensation to affected farmers.

6. Farmers’ Rights to receive Compensation for undisclosed use of Traditional

Varieties: Applicants seek to register varieties are required to declare the source of the
varieties used as parents to breed new variety. In the event of applicant suppressing the
information on use Traditional variety/ knowledge concerned with community and if it is
identified. Third party can submit claims for compensation which will be awarded by the
Authority. PBR holder has to remit the amount to NGF which in turn will disburse the same to
farmer through the applicant

7. Farmers’ Rights for the seeds of Registered variety: The Act directs the PBR- holder to
meet farmers’ demand for seeds of the variety at reasonable prices. If PBR- holder fails to satisfy
this requirement, farmers have the right to take the matter to the Authority on non-availability of
seed, its poor quality or its high price, three years after the registration of the variety. The
Authority may take remedial actions through enforcement of compulsory licensing to others.
This compulsory licensing revokes the exclusive right on commercial production and marketing
of seed granted to the PBR –holder and transfer the rights to third parties as decided by the
Authority.
 8. Farmers’ Rights for Receiving Free Services: Considering the poor economic capability
of farmers and facilitate them to have access to the benefits of the Act, total Exemptions are
provided to Farmers on any Fees like fees to be paid towards registration of varieties, to
conduct DUS Test on varieties, for the renewal of registration, fees for any application, fees for
any legal proceedings etc.

9. Farmers’ Rights for Protection against Innocent Infringement: Under legal jurisprudence
violation of any law committed out of ignorance is not held as an admissible innocence.
However, interest of the farmers are safeguarded against innocence infringement. Court is
prevented from prosecution of a farmer on charges of any infringement of the Act

Present Status of implementation of the Act

• The Ministry of Agriculture, Government of India, has been identified as the nodal
agency for implementing the PPV&FR act through an authority known as “The
Protection of Plant Varieties and Farmers Rights Authority” located at New Delhi.

• The Rules of the Act have been notified by Government of India. The Act is notified in
the Central Gezette by GOI during March, 2005

• The authority came into force in November, 2005. Project Directorate on Seed Research
New Delhi has been entrusted with completing DUS test for all the varieties in all the
crops, identifying different centers for different crops.

The Crops declared by the authority for Registration

List of 88 Crop species notified for registration
[Link]. Crop Botanical name
1. Rice Oryza sativa L.
2. Bread wheat Triticum aestivum L
3. Maize Zea mays L.
4. Sorghum Sorghum bicolor ( L.) Moench
5. Pearl millet Pennisetum glaucum (L.) [Link].
6. Chickpea Cicer arietinum L.
7. Mungbean Vigna radiata (L.) Wilczek
8. Urdbean Vigna mungo (L.) Hepper
9. Fieldpea Pisum sativum L.
10. kidney bean Phaseolus vulgaris L.
11 Lentil Lens culinaris Medik
12 Pigeon pea Cajanus cajan (L.) Millsp.
13 Indian mustard Brassica juncea L. Czern & Coss
14 Karan rai Bracissa carinata A Braun
15 Rapeseed(toria) Brassica rapa L.
16 Gobhi sarson Brassica napus L.
17 Groundnut Arachis hypogaea L.
18 Soybean Glycine max (L.) Merrill
19 Sunflower Helianthus annuus L.
20 Safflower Carthamus tinctorius L.
21 Castor Ricinus communis L.
22 Sesame Sesamum indicum L.
23 Linseed Linum usitatissimum L.
24 Diploid cotton Gossypium arboreum L.
25 Diploid cotton Gossypium herbaceum L.
26 Tetraploid cotton Gossypium hirsutum L.
27 Tetraploid cotton Gossypium barbadense L.
28 Jute Corchorus olitorius L.
29 Jute Corchorus capsularis L.
30 Sugarcane Saccharum L.
31 Black pepper Piper nigrum L.
32 Small cardamom Elettaria cardamomom Maton
33 Turmeric Curumma longa L.
34 Ginger Zingiber officinale Rosc.
35 Tomato Lycopersion lycopersicum (L.) Karsten ex. Farw.
36 Brinjal Solanum melongena L.
37 Okra Abelmoschus esculentus (L.) Moench.
38 Cauliflower Brassica oleracea [Link]. botrytis
39 Cabbage Brassica oleracea L. var capitata
40 Potato Solanum tuberosum L.
41 Onion Allium cepa L.
42 Garlic Allium sativum L.
43 Rose Rosa spp.(other than [Link])
44 Chrysanthemum Chrysanthemum spp.
45 Mango Mangifera indica L.
46 Duram wheat Triticum durum Desf.
47 Dicoccum wheat Triticum dicoccum L.
48 Other Triticum species
49 Isabgol Plantago ovata Forsk
50 Menthol mint Mentha arvensis L.
51 Damask Rose Rosa damascena Mill
52 Periwinkle Catharanthus roseus L.
53 Brahmi Bacopa monnieri [Link]
54 Coconut Cocos nucifera L.
55 Orchids Vanda
56 Orchids Dandrobium
57 Orchids Cymbidium
58 Pomegranate Punica granatum L
59 Orchid Cattleya Lindl.
60 Orchid Phalaenopsis Blume
61 Eucalyptus Eucalyptus camaldulensis Dehnh.
62 Eucalyptus Eucalyptus tereticornis Sm.
63 Casurina Casuarina equisetifolia L
64 Casurina Casuarina junghuhniana Miq.
65 Bitter Gourd Momordica charantia L.
66 Bottle Gourd Lagenaria siceraria (Mol.) Standl.
67 Cucumber Cucumis sativus L.
68 Pumpkin Cucurbita moschata Duch. ex Poir.
69 Barley Hordeum vulgare L.
70 Coriander Coriandrum sativum L.
71 Fenugreek Trigonella foenum graecum L.
72 Almond Prunus dulcis (Mill.) D.A. Webb
73 Apple Malus domestica Borkh
74 Pear Pyrus communis L.
75 Apricot Prunus armeniaca L.
76 Cherry Prunus avium L.
77 Walnut Juglans regia L.
78 Grapes Vitis spp.
79 Indian jujube (Ber) Ziziphus mauritiana Lamk.
80 Tea Camellia sinensis
81 Tea Camellia assamica
82 Tea [Link] ssp lasiocalyx.
83 Acid Lime Citrus aurantifolia Swingle
84 Mandarin Citrus reticulata Blanco
85 Sweet Orange Citrus sinensis (L.) Osbeck
86 Bougainvillea Bougainvillea Comm. Ex Juss.
87 Banana Musa spp.
88 Orchid Oncidium Sw.

Note: as on today 119 crop species are eligible for registration. For more information refer the website:
[Link]

2. Geographical Indications

 Every region has its claim to fame.

 Wealth of rich Indian spices.
 English breeders imported Arabian horses to sire Derby winners.
 China silk, Dhaka muslin, Venetian Glass all were much sought after treasures.
 Each reputation was carefully built up, painstakingly maintained by the masters of that
region, combining the best of Nature and Man, traditionally handed over from one
generation to the next for centuries.
 Gradually, a specific link between the goods and the place of production evolved resulting
in growth of geographical indications.

Indian GI ACT

 In December 1999, the Indian Parliament had passed the Geographical Indications of
Goods (Registration and Protection) Act,1999.
 This Act seeks to provide for the registration and better protection of geographical
indications relating to goods in India.
 The Act is administered by the Controller General of Patents, Designs and Trade
Marks-
who is the Registrar of
Geographical Indications.
 The Geographical Indications
Registry would be located
at Chennai.

What is a Geographical Indication?

 It is an indication
 It originates from a definite geographical territory.
 It is used to identify agricultural, natural or manufactured goods
 The manufactured goods should be produced or processed or prepared in that territory.
 It should have a special quality or reputation or other characteristics

What is the benefit of registration of geographical indications

 It confers legal protection to Geographical Indications in India
 Prevents unauthorized use of a Registered Geographical Indication by others
 It provides legal protection to Indian Geographical Indications which in turn boost
exports.
 It promotes economic prosperity of producers of goods produced in a geographical
territory.

Who can apply for the registration of a geographical indication?

 Any association of persons, producers, organisation or authority established by or under

the law can apply:
 The applicant must represent the interest of the producers
 The application should be in writing in the prescribed form
 The application should be addressed to the Registrar of Geographical Indications along
with prescribed fee.

Who is a registered proprietor of a geographical indication?

 Any association of persons, producers, organization or authority established by or under
the law can be a registered proprietor.
Their name should be entered in the Register of Geographical Indication as registered
proprietor for the Geographical Indication applied for

Who is an authorised user?

 A producer of goods can apply for registration as an authorised user
 It must be in respect of a registered geographical indication
 He should apply in writing in the prescribed form alongwith prescribed fee

Who is a producer in relation to a Geographical Indication?

 The persons dealing with three categories of goods are covered under the term Producer:
 Agricultural Goods includes the production, processing, trading or dealing
 Natural Goods includes exploiting, trading or dealing
 Handicrafts or Industrial goods includes making, manufacturing, trading or dealing.

Is a registration of a geographical indication compulsory and how does it help the

applicant

 Registration is not compulsory

 Registration affords better legal protection to facilitate an action for infringement
 The registered proprietor and authorised users can initiate infringement actions
 The authorised users can exercise the exclusive right to use the geographical indication.

Who can use the registered geographical indication?

An authorised user has the exclusive rights to the use of geographical indication in
relation to goods in respect of which it is registered

How long the registration of Geographical Indication is valid?

 The registration of a geographical indication is valid for a period of 10 years

 It can be renewed from time to time for further period of 10 years each
 If a registered geographical indication is not renewed it is liable to be removed from the
register.
 India’s Registered GIs

State
Geographical Indication Product Date
of
Registration
Darjeeling Tea Tea West Bengal 29.10.04

Pochampally Ikat Textile A 31.12.04

P
Chanderi saree Textile Guna, 28.01.05
Madhya Pradesh

Kotpad Handloom fabric Textile Koraput, Orissa 02.06.05

Kota Doria Textiles Kota, Rajasthan 05.07.05

Kancheepuram silk Textiles Tamil Nadu 02.06.05

Bhavani Jamakkalam Textile, Erode,Tamil Nadu 05.07.05

carpets
Mysore Agarbathi Incense Mysore, 02.06.05
sticks Karnataka
Aranmula Kannadi Metal Mirror Kerala 19.09.05

Salem Fabric Textiles Tamil Nadu 19.09.05

Solapur Chaddar Textiles Maharashtra 19.09.05

Solapur Terry Towel Textiles Maharashtra 19.09.05

Mysore Silk Textiles Karnataka 28.11.05

Kullu Shawl Textiles Himachal Pradesh 12.12.05

Madurai Sungudi Textiles Tamil Nadu 12.12.05

Kangra Tea Tea Himachal Pradesh 12.12.05

Coorg Orange Horticulture Karnataka 30.01.2006

Product

Mysore Betel Leaf Horticulture Karnataka 30.01.2006

Product

Nanjanagud Banana Horticulture Karnataka 30.01.2006

Product

Mysore Sandalwood Oil Essential Oil Karnataka 30.01.2006

Mysore Sandal Soap Soap Karnataka 30.01.2006

Bidriware Handicrafts Karnataka 30.01.2006

Channapatna Toys and Dolls Handicrafts Karnataka 30.01.2006

Coimbatore Wet Grinder Wet Grinder Tamil Nadu 30.01.2006

Mysore Rosewood Inlay Handicrafts Karnataka 30.01.2006

Kasuti Embroidery Embroidery Karnataka 30.01.2006

(Textiles)

Mysore Traditional Paintings Paintings Karnataka 30.01.2006

Frequently Asked Questions on GIs

Every region has its claim to fame. Christopher Columbus sailed from Europe to chart
out a new route to capture the wealth of rich Indian spices. English breeders imported
Arabian horses to sire Derby winners. China silk, Dhaka muslin,Venetian Glass all
were much sought after treasures. Each reputation was carefully built up and
painstakingly maintained by the masters of that region, combining the best of Nature
and Man, traditionally handed over from one generation to the next for centuries.
Gradually, a specific link between the goods and place of production evolved resulting
in growth of geographical indications.

In December 1999, the Parliament had passed the Geographical Indications of Goods
(Registration and Protection) Act,1999. This Act seeks to provide for the registration
and better protection of geographical indications relating to goods in India. The Act
would be administered by the Controller General of Patents, Designs and Trade
Marks- who is the Registrar of Geographical Indications. The Geographical
Indications Registry would be located at Chennai.

1. What is a Geographical Indication?

Ø It is an indication

Ø It originates from a definite geographical territory.

Ø It is used to identify agricultural, natural or manufactured goods

Ø The manufactured goods should be produced or processed or prepared

in that territory.

Ø It should have a special quality or reputation or other characteristics

2. Examples of possible Indian Geographical Indications. Basmati Rice

Darjeeling Tea

Ø Kanchipuram Silk Saree

Ø Alphanso Mango

Ø Nagpur Orange

Ø Kolhapuri Chappal

Ø Bikaneri Bhujia

Ø Agra Petha
3. What is the benefit of registration of geographical indications?

Ø It confers legal protection to Geographical Indications in India

Ø Prevents unauthorised use of a Registered Geographical Indication by

others

Ø It provides legal protection to Indian Geographical Indications which in

turn boost exports.

Ø It promotes economic prosperity of producers of goods produced in a

geographical territory.

4. Who can apply for the registration of a geographical indication?

Ø Any association of persons, producers, organisation or authority

established by or under the law can apply:

Ø The applicant must represent the interest of the producers

Ø The application should be in writing in the prescribed form

Ø The application should be addressed to the Registrar of Geographical

Indications along with prescribed fee.

5. Who is a registered proprietor of a geographical indication?

Ø Any association of persons, producers, organization or authority

established by or under the law can be a registered proprietor.

Ø Their name should be entered in the Register of Geographical

Indication as registered proprietor for the Geographical Indication
applied for.

6. Who is an authorised user?

Ø A producer of goods can apply for registration as an authorised user

Ø It must be in respect of a registered geographical indication

Ø He should apply in writing in the prescribed form alongwith prescribed

fee

7. Who is a producer in relation to a Geographical Indication?

Ø The persons dealing with three categories of goods are covered under
 the term Producer:

Ø Agricultural Goods includes the production, processing, trading or

dealing

Ø Natural Goods includes exploiting, trading or dealing

Ø Handicrafts or Industrial goods includes making, manufacturing,

trading or dealing.

Ø Is a registration of a geographical indication compulsory and how does

it help the applicant?

8. Registration is not compulsory

Ø Registration affords better legal protection to facilitate an action for

infringement

Ø The registered proprietor and authorised users can initiate infringement

actions

Ø The authorised users can exercise the exclusive right to use the
geographical indication.

9. Who can use the registered geographical indication?

Ø An authorised user has the exclusive rights to the use of geographical

indication in relation to goods in respect of which it is registered.

10. How long the registration of Geographical Indication is valid?

Ø The registration of a geographical indication is valid for a period of 10

years

11. Can a Geographical Indication be renewed?

Ø It can be renewed from time to time for further period of 10 years each.

12. What is the effect if a Geographical Indication if it is not renewed?

Ø If a registered geographical indication is not renewed it is liable to be

removed from the register.

13. When is a registered Geographical Indication said to be infringed?

Ø When an unauthorised user uses a geographical indication that

 indicates or suggests that such goods originate in a geographical area
other than the true place of origin of such goods in a manner which
mislead the public as to the geographical origin of such goods.

Ø When the use of geographical indication result in an unfair competition

including passing off in respect of registered geographical indication.

Ø When the use of another geographical indication results in false

representation to the public that goods originate in a territory in respect
of which a registered geographical indication relates.

14. Who can initiate an infringement action?

Ø The registered proprietor or authorised users of a registered

geographical indication can initiate an infringement action.

15. Can a registered geographical indication be assigned, transmitted, etc?

Ø No. A geographical indication is a public property belonging to the

producers of the concerned goods.

Ø It shall not be the subject matter of assignment, transmission, licensing,

pledge, mortgage or such other agreement

Ø However, when an authorised user dies, his right devolves on his

successor in title.

16. Can a registered geographical indication or a registered authorised user be

removed from the register?

Ø Yes. The Appellate Board or the Registrar of Geographical Indications

has the power to remove the geographical indication or an authorised
user from the register. Further, on application by an aggrieved person
action can be taken.

17. How a geographical indication is different from a trade mark?

Ø A trade mark is a sign which is used in the course of trade and it

distinguishes goods or services of one enterprise from those of other
enterprises.

Ø Whereas a geographical indication is an indication used to identify

goods having special characteristics originating from a definite
geographical territory.
3. Traditional Knowledge

Traditional Knowledge (TK), indigenous knowledge (IK), and local knowledge

generally refer to the matured long-standing traditions and practices of certain regional,
indigenous, or local communities. Traditional knowledge also encompasses the wisdom,
knowledge and teachings of these communities. In many cases, traditional knowledge has
been orally passed for generations from person to persons. Some forms of traditional
knowledge are expressed through stories, legends, folklore, rituals, songs and even laws.
Other forms of traditional knowledge are often expressed through different means.

“Traditional knowledge” is not recognized as “knowledge” by all who study it since it

includes beliefs, values and practices.

Intellectual property protection of traditional knowledge

The Convention on Biological Diversity (CBD)

The Convention of Biological Diveristy (CBD), signed at the United Nations Conference
on Environment and Development (UNCED) in 1992, was the first international
environmental convention to develop measures for the use and protection of traditional
knowledge, related to the conservation and sustainable use of biodiversity. By 2006, 188
had ratified the Convention and agreed to be bound by its provisions.

Countries have sovereign rights over their biological resources within their legal
boundaries
Use of Biological diversity should not endanger the environment or the Biodiversity
Piracy of Biological resource & Traditional knowledge of another country is immoral &
illegal act
Sustainable use of Biological resources
Each country has the right to enact laws to establish sovereignty over its Biodiversity

Three board approaches to protect traditional knowledge have been

developed.

• The first emphasizes protecting traditional knowledge as a form of cultural heritage.

• The second looks at protection of traditional knowledge as a collective human right.
• The third, taken by the WTO and WIPO, investigates the use of existing or novel sui
generis measures to protect traditional knowledge.
• In India “ Biodiversity Act 2002” is the result
 Features of Biological Diversity Act 2002

Conservation and sustainable use of Indian Biodiversity and associated traditional

Knowledge(ITK)
To ensure equitable sharing of the benefits arising out of commercialization of biological
and knowledge recourses.
All Indians have the right to use biodiversity for research purpose within the country
For commercialization it needs the approval of SBB
Non-citizens of India or Institutions not wholly incorporated in India or incorporated in
India with any non- Indian participation in share capital or management do not have the
right for access or use of Indian Biodiversity with out prior approval from NBA

Administrative Machinery for Biodiversity Act

National Biodiversity Authority(NBA) at national level

With overall regulatory and administrative control over national biodiversity-
CHENNAI
State Biodiversity Board(SBB) at each state level to promote, administer and regulate
biodiversity under the policy frame work set by the NBA
Biodiversty Management Committee(BMC) at Panchayat level to inventorise, conserve
and monitor the Biodiversity and regulate its use.

Traditional Knowledge Digital Library (TKDL)

 The Government of India’s also approved for setting up of a Traditional Knowledge

Digital Library (TKDL), namely, an electronic database of traditional knowledge in the
field of medicinal plants.

 Such a database would enable the Patent Offices all over the world to search and examine
any prevalent use/prior art, and thereby prevent incorrect grant of patent on
products/processes based on knowledge in public domain.

4. Copyrights

What is copyright?
-An Exclusive Right to do or authorize others do certain acts in relation to:
• Original literary, dramatic, musical and artistic works;
• Cinematograph film; and
• Sound recording.
 Copyrighted Works
Cinematograph
Films

Dramatic Works

Literary Works

Musical
Works Sound Recording

Artistic works

Why should copyright be protected?

Copyright ensures minimum safeguarding of the rights of authors over their

creations, thereby protecting and rewarding creativity.

The Legislation
The Copyright Act, 1957 came into effect from January 1958. This Act has been
amended five times since then, i.e., in 1983, 1984, 1992, 1994 and 1999, 2012
Administered by the Department of Higher Education.
-Copyright exists in Expression of an idea and it is not a right in the novelty of an idea.
-Copyright protects skill, labour and capital employed by the author.
Its object is to protect the writer and author from the unlawful reproduction, plagiarism,
piracy, copying and imitation.
-Violation of the copyright is confined to the form, manner, arrangement and expression
of the idea by the author.

What is the procedure for registration of a work under the Copyright Act,1957

Copyright comes into existence as soon as a work is created and no formality is required
to be completed for acquiring copyright.
Facilities exist for having the work registered in the Register of Copyrights maintained in
the Copyright Office of the Department of Higher Education.
The entries made in the Register of Copyrights serve as prima-facie evidence in the court
of law.

What is the procedure for registration of a work under the Copyright Act,1957?

The Copyright Office has been set up to provide registration facilities to all types of
works and is headed by a
Registrar of Copyrights
B.2/W.3, C.R. Barracks, Kasturba Gandhi Marg,
New Delhi- 110 003, Tel: 338 4387

Steps Involved In Registration

Registration is prima facie evidence in favour of a person claiming copyright.

Though, this can be challenged, but if the stakes are high, it is always advisable to
register a copyright for better protection.
Steps for registering a copyright in India:
-Application for registration is made in Form IV in triplicate to the Registrar of
Copyright.
There should be one application for one work only and should be accompanied with fees
prescribed as per Copyright Rules, 1958.
Applicant shall simultaneously send copy of the application to every person interested
in the copyright of the work (e.g. publisher, co-author etc.)
If the Registrar of Copyrights receives no objection to such registration within 30 days of
the receipt of the application by him, he shall, if satisfied about the correctness of the
particulars given in the application, enter such particulars in the Register of Copyrights.
- After receipt of the objections and if not satisfied with the correctness of the
particulars given in the application, if any, Registrar may make such enquiry as he may
deem fit. After the Registrar is satisfied, entry will be made by him in the Register of
Copyright and copies of the same shall be sent to all the concerned parties.

Duration of Copyright
The term of copyright in published literary, dramatic, musical or artistic work
(other than a photograph) is the life time of the author plus sixty years from the beginning
of the calendar year next following the year in which the author dies. In case of joint
authorship, the period of sixty years shall commence after the death of the author who
dies last
 Protection available from Infringement In case of infringement, the Copyright Act,
1957 provides for both civil as well as criminal remedies.

Civil remedies available to the owner of a copyright against infringement include

injunction, damages or share of profits, delivery of infringing copies and damages for
conversion.
The Act also provides for punishment by criminal courts for criminal offences.
Further, police officers are empowered to seize all copies of the work and all plates used
for making infringing copies of work without warrant

More about Copy Rights

RATIONALE OF COPYRIGHT PROTECTION
What is copyright?

Copyright is a right given by the law to creators of literary, dramatic, musical and artistic works and
producers of cinematograph films and sound recordings. In fact, it is a bundle of rights including, inter
alia, rights of reproduction, communication to the public, adaptation and translation of the work. There
could be slight variations in the composition of the rights depending on the work.

Why should copyright be protected?

Copyright ensures certain minimum safeguards of the rights of authors over their creations, thereby
protecting and rewarding creativity. Creativity being the keystone of progress, no civilized society can
afford to ignore the basic requirement of encouraging the same. Economic and social development of
a society is dependent on creativity. The protection provided by copyright to the efforts of writers,
artists, designers, dramatists, musicians, architects and producers of sound recordings,
cinematograph films and computer software, creates an atmosphere conducive to creativity, which
induces them to create more and motivates others to create.

Is it not true that strict application of the principle of protection of copyright hampers
economic and cultural development of the society?

Yes. If copyright protection is applied rigidly, it can hamper progress of the society. However,
copyright laws are enacted with necessary exceptions and limitations to ensure that a balance is
maintained between the interests of the creators and of the community.

To strike an appropriate and viable balance between the rights of the copyright owners and the
interests of the society as a whole, there are exceptions in the law. Many types of exploitation of work
which are for social purposes such as education, religious ceremonies, and so on are exempted from
the operation of the rights granted in the Act. Copyright in a work is considered as infringed only if a
substantial part is made use of unauthorizedly. What is ‘substantial’ varies from case to case. More
often than not, it is a matter of quality rather than quantity. For example, if a lyricist copy a very
catching phrase from another lyricist’s song, there is likely to be infringement even if that phrase is
very short.

Does the law allow any use of a work without permission of the owner of the copyright, and, if
so, which are they?

Subject to certain conditions, a fair deal for research, study, criticism, review and news reporting, as
well as use of works in library and schools and in the legislatures, is permitted without specific
permission of the copyright owners. In order to protect the interests of users, some exemptions have
been prescribed in respect of specific uses of works enjoying copyright. Some of the exemptions are
the uses of the work

i. for the purpose of research or private study,

ii. for criticism or review,
iii. for reporting current events,
iv. in connection with judicial proceeding,
v. performance by an amateur club or society if the performance is
given to a non-paying audience, and
vi. the making of sound recordings of literary, dramatic or musical works
under certain conditions.

What is the scope of protection in the Copyright Act,1957 ?

The Copyright Act, 1957 protects original literary, dramatic, musical and artistic works and
cinematograph films and sound recordings from unauthorized uses. Unlike the case with patents,
copyright protects the expressions and not the ideas. There is no copyright in an idea.

Does copyright apply to titles and names ?

Copyright does not ordinarily protect titles by themselves or names, short word combinations,
slogans, short phrases, methods, plots or factual information. Copyright does not protect ideas or
concepts. To get the protection of copyright a work must be original.

WORK

What is a work?

A work means any of the following , namely, a literary, dramatic, musical or artistic work, a
cinematograph film, or a sound recording.

What is a work of joint authorship?

"Work of joint authorship" means a work produced by the collaboration of two or more authors in
which the contribution of one author is not distinct from the contribution of the other author or authors.

What are the classes of works for which copyrights protection is available in India?

Copyright subsists throughout India in the following classes of works:

o Original literary, dramatic, musical and artistic works;

 o Cinematograph films; and

o Sound recordings.

What is an artistic work?

An artistic work means-

o a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an

engraving or a photograph, whether or not any such work possesses artistic quality;

o a work of architecture; and

o any other work of artistic craftsmanship.

What is a musical work?

"Musical work" means a work consisting of music and includes any graphical notation of such work
but does not include any words or any action intended to be sung, spoken or performed with the
music. A musical work need not be written down to enjoy copyright protection.

What is a sound recording?

"Sound recording" means a recording of sounds from which sounds may be produced regardless of
the medium on which such recording is made or the method by which the sounds are produced. A
phonogram and a CD-ROM are sound recordings.

What is a cinematograph film?

"Cinematograph film" means any work of visual recording on any medium produced through a
process from which a moving image may be produced by any means and includes a sound recording
accompanying such visual recording and "cinematograph" shall be construed as including any work
produced by any process analogous to cinematography including video films.

What is a government work?

"Government work" means a work which is made or published by or under the direction or control of

o the government or any department of the government

o any legislature in India, and

o any court, tribunal or other judicial authority in India.

What is an Indian work?

"Indian work" means a literary, dramatic or musical work,

o the author of which is a citizen of India; or

 o which is first published in India; or

o the author of which, in the case of an unpublished work is, at the time of the making
of the work, a citizen of India.

AUTHORSHIP AND OWNERSHIP

Whose rights are protected by copyright?

Copyright protects the rights of authors, i.e., creators of intellectual property in the form of literary,
musical, dramatic and artistic works and cinematograph films and sound recordings.

Who is the first owner of copyright in a work?

Ordinarily the author is the first owner of copyright in a work.

Who is an author?

 In the case of a literary or dramatic work the author, i.e., the person who creates the work.

 In the case of a musical work, the composer.

 In the case of a cinematograph film, the producer.

 In the case of a sound recording, the producer.

 In the case of a photograph, the photographer.

 In the case of a computer generated work, the person who causes the work to be created.

Who all have rights in a musical sound recording?

There are many right holders in a musical sound recording. For example, the lyricist who wrote the
lyrics, the composer who set the music, the singer who sang the song, the musician (s) who
performed the background music, and the person or company who produced the sound recording.

Is it necessary to obtain any licence or permission to use a musical sound recording for
public performance?

A sound recording generally comprises various rights. It is necessary to obtain the licences from each
and every right owner in the sound recording. This would ,inter alia, include the producer of the sound
recording, the lyricist who wrote the lyrics, and the musician who composed the music.

Who is the owner of copyright in a government work?

In the case of a government work, government shall, in the absence of any agreement to the
contrary, be the first owner of the copyright therein.

Who is the owner of copyright in the work of a public undertaking?

In the case of a work made or first published by or under the direction or control of any public
undertaking, such public undertaking shall, in the absence of any agreement to the contrary, be the
first owner of the copyright therein.

Who is the owner of copyright in works by journalists during the course of their employment?

In the case of a literary, dramatic or artistic work made by the author in the course of his employment
by the proprietor of a newspaper, magazine or similar periodical under a contract of service or
apprenticeship, for the purpose of publication in a newspaper, magazine or similar periodical, the said
proprietor shall, in the absence of any agreement to the contrary, be the first owner of the copyright in
the work in so far as the copyright relates to the publication of the work in any newspaper, magazine
or similar periodical, or to the reproduction of the work for the purpose of its being so published, but in
all other respects the author shall be the first owner of the copyright in the work.

Who is the owner of a work produced during the course of the author’s employment?

In the case of a work made in the course of the author’s employment under a contract of service or
apprenticeship, the employer shall, in the absence of any agreement to the contrary, be the first
owner of the copyright therein.

Who is the owner of the copyright in the case of a work produced for valuable consideration at
the instance of another person?

In the case of a photograph taken, or a painting or portrait drawn, or an engraving or a cinematograph

film made, for valuable consideration at the instance of any person, such person shall, in the absence
of any agreement to the contrary, be the first owner of the copyright therein.

Is copyright assignable?

Yes. The owner of the copyright in an existing work or the prospective owner of the copyright in a
future work may assign to any person the copyright either wholly or partially and either generally or
subject to limitations and either for the whole term of the copyright or any part thereof.

What is the mode of assigning copyright?

It shall be in writing signed by the assignor or by his duly authorised agent. It shall identify the specific
works and specify the rights assigned and the duration and territorial extent of such assignment. It
shall also specify the amount of royalty payable, if any, to the author or his legal heirs during the
currency of the assignment and the assignment shall be subject to revision, extension or termination
on terms mutually agreed upon by the parties.

Does an assignment lapse automatically?

Where the assignee does not exercise the rights assigned to him within a period of one year from the
date of assignment, the assignment in respect of such rights shall be deemed to have lapsed after the
expiry of the said period unless otherwise specified in the assignment.

What will be the period of assignment if not specifically stated in the assignments?

If the period of assignment is not stated, it shall be deemed to be five years from the date of
assignment.
What will be the territorial extent of the assignment if not specified in the assignment?

If the territorial extent of assignment of the rights is not specified, it shall be presumed to extend
within the whole of India.

Can an author relinquish copyright and, if so, how?

The author of a work may relinquish all or any of the rights comprising the copyright in the work by
giving notice in the prescribed form to the Registrar of Copyrights.

DIFFERENT RIGHTS

Are copyrights same for all classes of works?

No. The rights vary according to the class of work.

What are the rights in the case of a literary work?

In the case of a literary work (except computer programme), copyright means the exclusive right

 To reproduce the work

 To issue copies of the work to the public

 To perform the work in public
 To communicate the work to the public.
 To make cinematograph film or sound recording in respect of the work
 To make any translation of the work
 To make any adaptation of the work.

Is translation of an original work also protected by copyright?

Yes. All the rights of the original work apply to a translation also.

Are computer programmes protected under Copyright Act?

Yes. Computer programmes are protected under the Copyright Act. They are treated as literary
works.

Are there any special rights in computer programmes?

Yes. In addition to all the rights applicable to a literary work, owner of the copyright in a computer
programme enjoys the rights to sell or give on hire or offer for sale or hire, regardless of whether such
a copy has been sold or given on hire on earlier occasion.

What are the rights in a dramatic work?

In the case of a dramatic work, copyright means the exclusive right

o To reproduce the work

o To communicate the work to the public or perform the work in public
o To issue copies of the work to the public
 o To include the work in any cinematograph film
o To make any adaptation of the work
o To make translation of the work.

What are the rights in an artistic work?

In the case of an artistic work, copyright means the exclusive right

o To reproduce the work

o To communicate the work to the public
o To issue copies of the work to the public
o To include the work in any cinematograph film
o To make any adaptation of the work.

What are the rights in a musical work?

In the case of a musical work, copyright means the exclusive right

o To reproduce the work

o To issue copies of the work to the public

o To perform the work in public
o To communicate the work to the public
o To make cinematograph film or sound recording in respect of the work
o To make any translation of the work
o To make any adaptation of the work.

What are the rights in a cinematograph film?

In the case of a cinematograph film, copyright means the exclusive right

o To make a copy of the film including a photograph of any image forming part thereof
o To sell or give on hire or offer for sale or hire a copy of the film
o To communicate the cinematograph film to the public.

What are the rights in a sound recording?

o To make any other sound recording embodying it

o To sell or give on hire, or offer for sale or hire, any copy of the sound recording
o To communicate the sound recording to the public.

What is the right of reproduction?

The right of reproduction commonly means that no person shall make one or more copies of a work
or of a substantial part of it in any material form including sound and film recording without the
permission of the copyright owner. The most common kind of reproduction is printing an edition of a
work. Reproduction occurs in storing of a work in the computer memory.

What is the right of communication to the public?

Communication to the public means making any work available for being seen or heard or otherwise
enjoyed by the public directly or by any means of display or diffusion. It is not necessary that any
member of the public actually sees, hears or otherwise enjoys the work so made available. For
example, a cable operator may transmit a cinematograph film, which no member of the public may
see. Still it is a communication to the public. The fact that the work in question is accessible to the
public is enough to say that the work is communicated to the public.

What is an adaptation?

Adaptation involves the preparation of a new work in the same or different form based upon an
already existing work. The Copyright Act defines the following acts as adaptations:

a. Conversion of a dramatic work into a non dramatic work

b. Conversion of a literary or artistic work into a dramatic work
c. Re-arrangement of a literary or dramatic work
d. Depiction in a comic form or through pictures of a literary or dramatic
work
e. Transcription of a musical work or any act involving re-arrangement
or alteration of an existing work.

The making of a cinematograph film of a literary or dramatic or musical work is also an adaptation.

Can any person translate a work without the permission of the owner of the copyright in the
work?

No. A person cannot translate a work enjoying copyright without the permission of the copyright
owner.

Is there any copyright over news?

No. There is no copyright over news. However, there is copyright over the way in which a news item
is reported.

REGISTRATION OF COPYRIGHT
Is it necessary to register a work to claim copyright?

No. Acquisition of copyright is automatic and it does not require any formality. However, certificate of
registration of copyright and the entries made therein serve as prima facie evidence in a court of law
with reference to dispute relating to ownership of copyright.

What is the procedure for registration of a work under the Copyright Act,1957?

Copyright comes into existence as soon as a work is created and no formality is required to be
completed for acquiring copyright. However, facilities exist for having the work registered in the
Register of Copyrights maintained in the Copyright Office of the Department of Education. The entries
made in the Register of Copyrights serve as prima-facie evidence in the court of law. The Copyright
Office has been set up to provide registration facilities to all types of works and is headed by a
Registrar of Copyrights and is located at B.2/W.3, C.R. Barracks, Kasturba Gandhi Marg, New Delhi-
110 003, Tel: 338 4387
What are the guidelines regarding registration of a work under the Copyright Act?

Chapter VI of the Copyright Rules, 1956, as amended, sets out the procedure for the registration of a
work. Copies of the Act and Rules can be obtained from the Manager of Publications, Publication
Branch, Civil Lines, Delhi or his authorised dealers on payment. The procedure for registration is as
follows:

a. Application for registration is to be made on Form IV ( Including Statement of Particulars and

Statement of Further Particulars) as prescribed in the first schedule to the Rules ;
b. Separate applications should be made for registration of each work;
c. Each application should be accompanied by the requisite fee prescribed in the second
schedule to the Rules ; and
d. The applications should be signed by the applicant or the advocate in whose favour a
Vakalatnama or Power of Attorney has been executed. The Power of Attorney signed by the
party and accepted by the advocate should also be enclosed.

Each and every column of the Statement of Particulars and Statement of Further Particulars should
be replied specifically.

st
Both published and unpublished works can be registered. Copyright in works published before 21
January, 1958, i.e., before the Copyright Act, 1957 came in force, can also be registered, provided
the works still enjoy copyright. Three copies of published work may be sent along with the application.
If the work to be registered is unpublished, a copy of the manuscript has to be sent along with the
application for affixing the stamp of the Copyright Office in proof of the work having been registered.
In case two copies of the manuscript are sent, one copy of the same duly stamped will be returned,
while the other will be retained, as far as possible, in the Copyright Office for record and will be kept
confidential. It would also be open to the applicant to send only extracts from the unpublished work
instead of the whole manuscript and ask for the return of the extracts after being stamped with the
seal of the Copyright Office.

When a work has been registered as unpublished and subsequently it is published, the applicant may
apply for changes in particulars entered in the Register of Copyright in Form V with prescribed fee.

Application for registration of copyright alongwith statement of particulars and instructions for filling up
the statement of particulars are at Appendix - I.

TERM OF COPYRIGHT
Is copyright protected in perpetuity?

No. It is protected for a limited period of time.

What is the term of protection of copyright?

The general rule is that copyright lasts for 60 years. In the case of original literary, dramatic, musical
and artistic works the 60-year period is counted from the year following the death of the author. In the
case of cinematograph films, sound recordings, photographs, posthumous publications, anonymous
and pseudonymous publications, works of government and works of international organisations, the
60-year period is counted from the date of publication.
ADMINISTRATION OF COPYRIGHT LAW
Is there any advisory body on copyright matters?

Yes. The government has set up a Copyright Enforcement Advisory Council (CEAC). The present
composition of the CEAC is at Appendix- II.

Are there special courts for copyright?

No. There are no special courts for copyright cases. The regular courts try these cases. There is a
Copyright Board to adjudicate certain cases pertaining to copyright.

What are the powers of Copyright Board?

The Copyright Act provides for a quasi-judicial body called the Copyright Board consisting of a
Chairman and two or more, but not exceeding fourteen, other members for adjudicating certain kinds
of copyright cases. The Chairman of the Board is of the level of a judge of a High Court. The Board
has the power to:

i. hear appeals against the orders of the Registrar of

Copyright;
ii. hear applications for rectification of entries in the Register
of Copyrights;
iii. adjudicate upon disputes on assignment of copyright;
iv. grant compulsory licenses to publish or republish works (in
certain circumstances);
v. grant compulsory license to produce and publish a
translation of a literary or dramatic work in any language
after a period of seven years from the first publication of
the work;
vi. hear and decide disputes as to whether a work has been
published or about the date of publication or about the term
of copyright of a work in another country;
vii. fix rates of royalties in respect of sound recordings under
the cover-version provision; and
viii. fix the resale share right in original copies of a painting, a
sculpture or a drawing and of original manuscripts of a
literary or dramatic or musical work.

Has the Registrar of Copyrights any judicial powers?

Yes. The Registrar of Copyrights has the powers of a civil court when trying a suit under the Code of
Civil Procedure in respect of the following matters, namely,

a. summoning and enforcing the attendance of any person and examining him on oath;
b. requiring the discovery and production of any document;
c. receiving evidence on affidavit;
d. issuing commissions for the examination of witnesses or documents;
e. requisitioning any public record or copy thereof from any court or office;
 f. any other matters which may be prescribed.

PERFORMER’S RIGHTS

Who is a performer?

As per the Indian Copyright Act, a "Performer" includes an actor, singer, musician, dancer, acrobat,
juggler, conjurer, snake charmer, a person delivering a lecture or any other person who makes a
performance.

What is a performance?

"Performance" in relation to performer’s right, means any visual or acoustic presentation made live by
one or more performers.

What are the rights of a performer?

A performer has the following rights in his/her performance:

 Right to make a sound recording or visual recording of the performance;

 Right to reproduce the sound recording or visual recording of the performance;

 Right to broadcast the performance;

 Right to communicate the performance to the public otherwise than by broadcast.

What is the term of protection of performer’s rights?

Performer’s rights subsist for 25 years.

What are the rights of a performer in a cinematograph film?

Once a performer has consented for incorporation of his performance in a cinematograph film, he
shall have no more performer’s rights to that performance.

BROADCASTER’S RIGHTS

What is a broadcast?

"Broadcast" means communication to the public:

 by any means of wireless diffusion, whether in any one or more of the forms of signs, sounds
or visual images; or

 by wire.
What are the rights of a broadcasting organization?

The rights of a broadcasting organization with reference to a broadcast are :

 right to re-broadcast the broadcast;

 right to cause the broadcast to be heard or seen by the public on payment of any charges;

 right to make any sound recording or visual recording of the broadcast;

 right to make any reproduction of such sound recording or visual recording where such initial
recording was done without licence or, where it was licensed, for any purpose not envisaged
by such licence; and

 right to sell or hire to the public, or offer for such sale or hire, any sound recording or visual
recording of the broadcast.

What is the term of protection of broadcaster’s rights?

The term of protection for broadcaster’s rights is 25 years.

FOREIGN WORKS

Is copyright of foreign works protected in India?

Yes. Copyrights of works of the countries mentioned in the International Copyright Order are
protected in India, as if such works are Indian works.

Does copyright subsist in a foreign work?

Copyright of nationals of countries who are members of the Berne Convention for the Protection of
Literary and Artistic Works, Universal Copyright Convention and the TRIPS Agreement are protected
in India through the International Copyright Order. A list of such countries is at Appendix- IV.

Which are the international copyright conventions of which India is a member?

Copyright as provided by the Indian Copyright Act is valid only within the borders of the country. To
secure protection to Indian works in foreign countries, India has become a member of the following
international conventions on copyright and neighbouring (related) rights:

i. Berne Convention for the Protection of Literary and Artistic works.

ii. Universal Copyright Convention.
iii. Convention for the Protection of Producers of Phonograms against
Unauthorised Duplication of their Phonograms.
iv. Multilateral Convention for the Avoidance of Double Taxation of
Copyright Royalties.
v. Trade Related Aspects of Intellectual Property Rights (TRIPS)
Agreement.
COLLECTIVE ADMINISTRATION OF COPYRIGHTS

What is collective administration of copyright?

Collective administration of copyright is a concept where management and protection of copyright in

works are undertook by a society of owners of such works. Obviously no owner of copyright in any
work can keep track of all the uses others make of his work. When he becomes a member of a
national copyright society, that society, because of its organisational facilities and strength, is able to
keep a better vigil over the uses made of that work throughout the country and collect due royalties
from the users of those works. Because of the country’s membership in international conventions, the
copyright societies are able to have reciprocal agreements with similar societies in other countries for
collecting royalties for the uses of Indian works in those countries. From this it can automatically be
inferred that it will be in the interests of copyright owners to join a collective administration
organisation to ensure better protection to the copyright in their works and for reaping optimum
economic benefits from their creations. Users of different types of works also find it easy to obtain
licences for legal exploitation of the works in question, though the collective administrative society.

What is a copyright society?

A copyright society is a registered collective administration society. Such a society is formed by

copyright owners. The minimum membership required for registration of a society is seven. Ordinarily,
only one society is registered to do business in respect of the same class of work. A copyright society
can issue or grant licences in respect of any work in which copyright subsists or in respect of any
other right given by the Copyright Act.

What are the functions of a copyright society?

A copyright society may:

i. Issue licences in respect of the rights administered by the society.

ii. Collect fees in pursuance of such licences.
iii. Distribute such fees among owners of copyright after making
deductions for the administrative expenses.

Are there any registered copyright societies in India?

Yes. The following are the registered copyright societies in India:

i. Society for Copyright Regulation of Indian Producers for Film and Television
(SCRIPT) 135 Continental Building, Dr. A.B. Road, Worli, Mumbai 400 018, (for
cinematograph and television films).
nd
ii. The Indian Performing Right Society Limited (IPRS), 208, Golden Chambers, 2
Floor, New Andheri Link Road, Andheri (W), Mumbai- 400 058 (for musical works).
iii. Phonographic Performance Limited (PPL) Flame Proof Equipment Building, B.39, Off
New Link Road, Andheri (West), Mumbai 400 053 (for sound recordings).

Is it necessary to obtain licenses from more than one society for exploitation of a work?

In many cases, it is necessary to obtain licences from more than one society. For example, playing of
the sound recording of music may involve obtaining a licence from the IPRS for the public
performance of the music as well as a licence from the PPL for playing the records, if these societies
have the particular work in their repertoire.

MORAL RIGHTS

What are the moral rights of an author?

The author of a work has the right to claim authorship of the work and to restrain or claim damages in
respect of any distortion, mutilation, modification or other acts in relation to the said work which is
done before the expiration of the term of copyright if such distortion, mutilation, modification or other
act would be prejudicial to his honour or reputation. Moral rights are available to the authors even
after the economic rights are assigned.

Do the author’s moral rights remain after assignment of copyright?

Yes. The moral rights are independent of the author’s copyright and remains with him even after
assignment of the copyright.

Will failure to display a work infringe the moral rights of an author?

No. Failure to display a work or to display it to the satisfaction of the author shall not be deemed to be
an infringement of the moral rights of the author.

COPYRIGHT INFRINGEMENTS

Which are the common copyright infringements?

The following are some of the commonly known acts involving infringement of copyright:

i. Making infringing copies for sale or hire or selling or letting them for
hire;
ii. Permitting any place for the performance of works in public where
such performance constitutes infringement of copyright;
iii. Distributing infringing copies for the purpose of trade or to such an
extent so as to affect prejudicially the interest of the owner of
copyright ;
iv. Public exhibition of infringing copies by way of trade; and
v. Importation of infringing copies into India.

Has the owner of an auditorium or a hall any liability while renting out the place for
communication to the public of a copyrighted work?

Yes. If a person permits for profit any place to be used for the communication of a work to the public,
where such communication constitutes an infringement of the copyright in the work, unless he was
not aware and had no reasonable ground for believing that such communication to the public would
be an infringement of copyright, he will be deemed to have committed an offence under the Copyright
Act.

What are the civil remedies for copyright infringement?

A copyright owner can take legal action against any person who infringes the copyright in the work.
The copyright owner is entitled to remedies by way of injunctions, damages and accounts.
Which is the court having jurisdiction over civil remedies in copyright cases?

The District Court concerned has the jurisdiction in civil suits regarding copyright infringement.

What is the proof of the authorship of a work?

Where, in the case of a literary, dramatic, musical or artistic work, a name purporting to be that of the
author or the publisher appears on copies of the work as published, or, in the case of an artistic work
appeared on the work where it was made, the person whose name so appears or appeared shall, in
any proceeding in respect of copyright in such work, be presumed, unless the contrary is proved, to
be the author or the publisher of the work, as the case may be.

What are the rights of owner over infringing copies and equipments used for making
infringing copies?

All infringing copies of any work in which copyright subsists and all plates used or intended to be used
for the production of such infringing copies shall be deemed to be the property of the owner of the
copyright.

What are the remedies in the case of groundless threat to legal proceedings?

Where any person claiming to be the owner of copyright in any work, by circulars, advertisements or
otherwise, threatens any other person with any legal proceedings or liability in respect of an alleged
infringement of copyright, any person aggrieved thereby may institute a declaratory suit that the
alleged infringement to which the threats related was not in fact an infringement of any legal rights of
the person making such threats and may in any such suit –

a. obtain an injunction against the continuance of such threats; and

b. recover such damages, if any, as he has sustained by reason of such threats.

Is copyright infringement a criminal offence?

Yes. Any person who knowingly infringes or abets the infringement of the copyright in any work
commits criminal offence under Section 63 of the Copyright Act.

What are the punishments for a criminal offence under the copyright law?

The minimum punishment for infringement of copyright is imprisonment for six months with the
minimum fine of Rs. 50,000/-. In the case of a second and subsequent conviction the minimum
punishment is imprisonment for one year and fine of Rs. one lakh.

Is copyright infringement a cognizable offence?

Any police officer, not below the rank of a sub inspector, may, if he is satisfied that an offence in
respect of the infringement of copyright in any work has been, is being, or is likely to be committed,
seize without warrant, all copies of the work and all plates used for the purpose of making infringing
copies of the work, wherever found, and all copies and plates so seized shall, as soon as practicable
be produced before a magistrate.
How are the seized infringing copies or plates disposed off?

The Court may order delivery to the owner of the copyright all such copies or plates.

Who is responsible for copyright offence committed by a company?

Every person who at the time the offence was committed was in charge of, and was responsible to
the company for, the conduct of the business of the company, as well as the company shall be
deemed to be guilty of such offence and shall be liable to be proceeded against.

Which court can try copyright offence cases?

No court inferior to that of a Metropolitan Magistrate or a Judicial Magistrate of the first class shall try
any offence under the Copyright Act.

Can a police officer seize infringing goods without warrant?

Yes. A police officer not below the rank of sub inspector can seize without warrant all infringing copies
of the work.

5. Trademarks

Meaning:
 a mark capable of being represented graphically
 capable of distinguishing the goods or services of one person from those of others
 typically a name, word, phrase, logo, symbol
 Service marks
 Trade Names
 Sound trademarks
 Certification mark:
 Collective marks
 Well-known trademark

Objectives of Trademark Law

It protects the public from confusion and deception by identifying the source or origin
of products as distinguished some other similar products; and

It protects the trademark owner’s trade and business as well as the goodwill which is
attached to his trademark.

Legislation
The Trade Marks Act, 1999 and the Trade Marks Rules, 2002 govern the law relating to
Trade Marks in India

Office of Trade Marks: Location and Jurisdiction

Trade Marks Registry, Mumbai (Head Office)

Intellectual Property Bhavan, Near Antop Hill Head Post Office,
S.M. Road , Antop Hill, Mumbai 400037
Tel: 022-2410 1144, 24101177, 24148251, 24112211
Fax: 24120808, 24132295
Jurisdiction: State of Maharashtra, Madhya Pradesh and Goa

Trade Marks Registry, Delhi

Jurisdiction: State of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal
Pradesh, Union Territory of Delhi and Chandigarh
Trade Marks Registry, Kolkata,
Jurisdiction: State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur,
Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, Andamar &
Nicobar Island
Trade Marks Registry, Ahmedabad,
Jurisdiction: The state of Gujarat and Rajasthan and Union Territory of Damman, Diu,
Dadra and Nagar Haveli
Trade Marks Registry, Chennai
Jurisdiction: The state of Andhra Pradesh, Kerala, Tamil Nadu, Karnataka and Union
Territory of Pondicherry and Lakshadweep Island.

Registration of Trademark
Not compulsory
Registration allows the owner to file infringement suits
 Trademarks Act does not define the categories of marks registrable
Any person claiming to be the proprietor of the trademark

Maintaining trademark rights

Trademarks rights must be maintained through actual lawful use of the trademark.

These rights will cease if a mark is not actively used for a period of time, normally 5
years in most jurisdictions.
In the case of a trademark registration, failure to actively use the mark in the lawful
course of trade, or to enforce the registration in the event of infringement, may also
expose the registration itself to become liable for an application for the removal from the
register after a certain period of time on the grounds on “non-use”.

Frequently Asked Questions onTrade Mark

1. What is a trade mark?

A trade mark (popularly known as brand name) in

laymans language is a visual symbol which may be a word
signature, name, device, label, numerals or combination of
colours used by one undertaking on goods or services or
other articles of commerce to distinguish it from other
similar goods or services originating from a different
undertaking.

The legal requirements to register a trade mark

under the Act are:

The selected mark should be capable of being represented

graphically (that is in the paper form).
It should be capable of distinguishing the goods or
services of one undertaking from those of others.
It should be used or proposed to be used mark in relation
to goods or services for the purpose of indicating or so as to
indicate a connection in the course of trade between the
goods or services and some person have the right to use
the mark with or without identity of that person.

2. How to select a trade mark?

If it is a word it should be easy to speak, spell and

remember.
 The best trade marks are invented words or coined
words.
Please avoid selection of a geographical name. No one
can have monopoly right on it.
Avoid adopting laudatory word or words that describe
the quality of goods (such as best, perfect, super etc)
It is advisable to conduct a market survey to ascertain if
same/similar mark is used in market.

3. What is the function of a trade mark?

Under modern business condition a trade mark performs

four functions

It identifies the goods / or services and its origin.

It guarantees its unchanged quality
It advertises the goods/services
It creates an image for the goods/ services.

4. Who can apply for a trade mark and how ?

Any person claiming to be the proprietor of a trade

mark used or proposed to be used by him may apply in
writing in prescribed manner for registration. The
application should contain the trade mark, the
goods/services, name and address of applicant and agent (if
any) with power of attorney , period of use of the mark and
signature. The application should be in English or Hindi.
It should be filed at th appropriate office.

5. How to apply for a trade mark in respect of

particular goods or services?

It is provided under the Trade Marks Act,1999 that

goods and services are classified according to the
International Classification of goods and services.
Currently schedule IV of the Act provides a summary of
list of such goods and services falling in different classes
which is merely indicative. The Registrar is the final
authority in the determination of the class in which
particular goods or services fall. The Schedule IV of the
Act is annexed at the end of this questionnaire on trade
marks. For detailed description of other goods and
services please refer to the International Classification
published by WIPO or contact the local office for
assistance.
 6. What are different types of trade marks
available for adoption?

- Any name (including personal or surname of the

applicant or predecessor in business or the signature of the
person), which is not unusual for trade to adopt as a mark.
- An invented word or any arbitrary dictionary word
or words, not being directly descriptive of the character or
quality of the goods/service.
- Letters or numerals or any combination thereof.
- The right to proprietorship of a trade mark may be
acquired by either registration under the Act or by use in
relation to particular goods or service.
- Devices, including fancy devices or symbols
- Monograms
- Combination of colors or even a single color in
combination with a word or device
- Shape of goods or their packaging
- Marks constituting a 3- dimensional sign.
- Sound marks when represented in conventional
notation or described in words by being graphically
represented.

7. What purpose the trade mark system serves ?

It identifies the actual physical origin of goods and

services. The brand itself is the seal of authenticity.
It guarantees the identity of the origin of goods and
services.
It stimulates further purchase.
It serves as a badge of loyalty and affiliation.
It may enable consumer to make a life style or fashion
statement.

8. Who benefits from a trade mark?

The [Link]: The [Link] of a

trade mark can stop other traders from unlawfully using his
trade mark, sue for damages and secure destruction of
infringing goods and or labels.
The Government: The Trade Marks Registry is expected
to earn a revenue of nearly Rs.40 crores during the current
year and which is perpetually on the rise.
 The Legal professionals: The Trade Marks Registration
system is driven by professionals and legal and para legal
advisors(Agents) who act for the clients in the processing
of the trade marks application.

The Purchaser and ultimately Consumers of trade marks

goods and services.

9. What are the benefits of registering a trade

mark?

The registration of a trade mark confers upon the

owner the exclusive right to the use of the registered trade
mark and indicate so by using the symbol (R) in relation to
the goods or services in respect of which the mark is
registered and seek the relief of infringement in appropriate
courts in the country. The exclusive right is however
subject to any conditions entered on the register such as
limitation of area of use etc. Also, where two or more
persons have registered identical or nearly similar mark due
to special circumstances such exclusive right does not
operate against each other.

10.
11. What are the sources of trade mark laws?

Ans: (1) The national statue i.e., the Trade Marks

Act,1999 and rules thereunder .
(2) International multilateral convention.
(3) National bilateral treaty.
(4) Regional treaty.
(5) Decision of the courts.
(6) Office practice and rulings
(7) Decision of Intellectual Property Appellate Board.
(8) Text books written by academician and
professional experts.

12. What does the Register of trade mark

contain ?

Ans: The register of trade mark currently maintained

in electronic form contains interalia the trade mark
the class and goods/ services in respect of which it is
registered including particulars affecting the scope of
registration of rights conferred; the address of the
proprietors; particulars of trade or other description of
 the proprietor; the convention application date (if
applicable); where a trade mark has been registered
with the consent of proprietor of an earlier mark or
earlier rights, that fact.

13. Can any correction be made in the

application or register?

Ans: Yes. But the basic principle is that the trade

mark applied for should not be substantially altered
affecting its identity. Subject to this changes are
permissible according to rules detailed in the
subordinate legislation.

14. Can a registered trade mark be removed

from the register?

Yes. It can be removed on application to the

Registrar on prescribed form on the ground that the
mark is wrongly remaining on the register. The
Registrar also can suo moto issue Notice for removal
of a registered trade mark?

6. Industrial Designs
It means the features of shape, configuration, pattern, ornament and composition of lines
or colors applied to an article, and not the article itself.
Owners of protected designs must be able to prevent the manufacture, sale or importation
of articles bearing or embodying a design which is a copy of the protected design
It consists of :
Three-dimensional features, such as the shape of a product;
Two-dimensional features, such as ornamentation, patterns, lines or color of a product;
or
A combination of one or more such features.

Registration of Designs
Prohibition of registration of certain designs
Designs which are:
 not new or original
 disclosed in India or in any other country by publication in tangible form or used
prior to priority date
  not significantly distinguishable from known designs or combination of knows
designs
 comprise or contain scandalous or obscene matter
shall not be registered

Legislation
The Designs Act of 1911 passed by the then British Government of India extensively
amended, the Designs Bill was introduced in the Parliament and the Designs Act of 2000
was passed.

Rights in the Registered Designs

The registered proprietor shall have the copyright in the registered design for 10 years
The period can be renewed for a further period of 5 years
The registrations lapsed due to non payment of fees and could be restored within 1
year
Petition for cancellation of the registration of the Design could be made by the
interested persons