LAW664 — Intellectual Property Law | CHRIST University

INTELLECTUAL PROPERTY LAW

LAW664 — Comprehensive Course Notes

Semester VI | BA LLB (Hons) / BBA LLB (Hons)

CHRIST University, Bengaluru

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UNIT 1: PHILOSOPHICAL AND THEORETICAL

JUSTIFICATIONS OF INTELLECTUAL PROPERTY RIGHTS

1.1 What is Intellectual Property?

Intellectual property (IP) refers to creations of the human mind — inventions,
literary and artistic works, symbols, names, images, and designs used in commerce.
The law grants creators exclusive rights over their intellectual creations, just as
physical property law grants ownership over tangible objects. The key distinction,
however, is that intellectual creations are non-rival and non-excludable in nature
— meaning that one person using an idea does not prevent another from using it
simultaneously, and it is extremely difficult to prevent people from using it once it
is disclosed. This is precisely why the law must step in to create artificial monopolies
through IP rights: to incentivise creation and innovation.
The global IP system is administered at the international level primarily by the World
Intellectual Property Organisation (WIPO), a specialised agency of the United
Nations based in Geneva. India is a member of WIPO and has enacted domestic
legislation to implement its international obligations, including obligations under
the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS),
which forms Annex 1C of the Marrakesh Agreement establishing the World Trade
Organisation (WTO).

1.2 Theories of Intellectual Property Rights

Why does society grant creators exclusive rights over intangible products of the
mind? Legal scholars and philosophers have proposed multiple theoretical
frameworks to answer this question. The most influential theories are the Utilitarian
Theory, the Natural Rights (Lockean Labour) Theory, and the Personhood Theory,
as elaborated by Professor William Fisher of Harvard Law School in his seminal
essay 'Theories of Intellectual Property' in 'New Essays in the Legal and Political
Theory of Property' (Cambridge University Press).

1.2.1 Utilitarian Theory (Economic Incentive Theory)

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The utilitarian theory is rooted in the philosophical tradition of Jeremy Bentham

and John Stuart Mill, which holds that the morally correct action is the one that
maximises overall happiness or welfare for the greatest number of people. Applied
to intellectual property, the utilitarian argument runs as follows: the creation of
knowledge, art, and invention is beneficial to society, but the act of creation requires
significant investment of time, money, and effort. Because knowledge is non-rival
(one person using it does not deplete it for others) and easily copied, a free market
without legal protection would result in 'free-riding' — competitors would simply
copy successful products without incurring the original creator's costs. This would
destroy the financial incentive to innovate, resulting in underproduction of socially
valuable creative works and inventions.
To solve this market failure, the law grants creators temporary, limited exclusive
rights over their creations. These rights allow creators to charge prices above
marginal cost and thereby recoup their investments. The monopoly is deliberately
limited in scope and duration: once the term expires, the work or invention falls into
the public domain, where it can be freely used by all. The system is thus a calculated
trade-off — society pays a short-term cost in the form of restricted access and higher
prices in exchange for the long-term benefit of a continuous stream of innovation
and creativity.
The classic illustration of this theory is pharmaceutical patents. A drug company
may invest billions of rupees over decades in research and clinical trials to develop
a new medicine. Without patent protection, a competitor could immediately copy
the formula and sell it at a fraction of the price, depriving the original developer of
any return. The patent system gives the developer a 20-year monopoly to recoup its
investment and make a profit, after which the drug formula becomes freely
available. This incentive has led to most of the life-saving drugs in existence today.
The Innovation Incentive Framework:
Without exclusive rights, innovators face insufficient incentive to invest in socially
beneficial innovation. Intellectual works become underproduced when creators lack
adequate opportunity for financial exploitation. Without reasonable expectations of
return, critical investments in research, development, and creative work simply will

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not materialise. With IP protection, authors deserve remuneration when their works
are exploited commercially. IP rights serve as a legal expression of gratitude,
ensuring creators can recoup investments, transforming creative risk into
calculated opportunity.
Why Not Unlimited Control?
Strong exclusivity creates its own costs to society. Unlimited IP rights would result
in higher prices for the public, restricted access to knowledge and culture, blocked
follow-on innovation (such as improvements and new research), and expensive
transaction costs for licensing. This is why IP is designed as a calibrated system
with deliberate limitations: rights exist but are limited (applicable only to specific
uses under defined conditions), terms are temporary (exclusive rights expire),
exceptions and defences exist (fair dealing, research, education, criticism), and
building blocks remain free (ideas, facts, functional features, and generic words
cannot be monopolised).

1.2.2 Natural Rights Theory (Lockean Labour Theory)

The natural rights justification for intellectual property is drawn from the political
philosophy of John Locke, articulated in his Two Treatises of Government (1689).
Locke argued that in a state of nature, the earth and its resources are held in
common by all humanity. However, each person owns their own body and the
labour of their body. When a person mixes their labour with something from the
commons — picks an apple from a tree, cultivates a field — they remove that thing
from the commons and make it their own property. This is because their labour,
which belongs to them, has been incorporated into the object.
Applied to intellectual property, the argument is that when a creator invests their
mental labour — writing a novel, composing music, designing an invention — they
mix their intellectual effort with the raw material of ideas and knowledge that exist
in the commons. The resulting creative work, infused with their personal labour,
becomes their intellectual property. This justification has particular force in the
case of copyright, where the moral intuition that a person should own what they
create seems deeply natural. It also underlies the concept of moral rights — the idea

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that an author has a personal, even spiritual, connection to their work that persists
even after they transfer economic rights to a publisher or producer.
The Lockean IP Formula: PR = NR + IL
Property Rights (PR) = Natural Resource (NR) + Intellectual Labour (IL). The raw
material — language, ideas, natural phenomena — belongs to the commons
(Natural Resource). The creator applies their mental effort, creativity, and
knowledge (Intellectual Labour) to this raw material. The result is a creative work
that justifiably belongs to the creator as their Property Rights. Consider a novelist:
the language they write in, the cultural stories they draw upon, the historical
context — these come from the commons. But the creative process of drafting
characters, developing plots, and crafting unique expressions is the author's
intellectual labour. The finished novel, as the product of that labour applied to
natural resources, belongs to the author.
Lockean Limitations and Conditions:
Locke himself imposed two important conditions on the right of appropriation. First,
the Sufficiency Proviso: one may take from the commons only if 'enough, and as
good' is left for others. In IP terms, this means that the creator's exclusive right
must not so thoroughly monopolise a field of thought or expression as to deprive
others of the ability to create. This is why copyright does not protect ideas — only
their expression — and why patents must expire. Second, the No Spoilage Proviso:
no person can take from the commons more than they can productively use. This
prevents hoarding and ensures resources remain available for societal benefit,
which in IP law is reflected in compulsory licensing and the doctrine of non-working
of patents.

1.2.3 Personhood Theory

The Personhood theory of intellectual property, associated with the German

philosopher Georg Wilhelm Friedrich Hegel, takes a different starting point. Hegel
argued that property is not primarily an economic instrument but is essential to the
development of the self. In his Philosophy of Right, Hegel wrote that 'property is the
first embodiment of freedom and so in itself a substantive end' — a person becomes

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a real self only by engaging in a property relationship with something external. By

externalising one's will into an object and controlling that object, one achieves a
degree of self-realisation.
Applied to intellectual property, the personhood theory holds that creative and
intellectual works are particularly intimate expressions of their creators'
personalities, intellect, and identity. A poem, a painting, a novel — these are not
mere commodities but extensions of the creator's self. It is therefore morally
imperative that society protect these works not merely for economic reasons but out
of respect for the creator's identity and personality. This theory provides the
philosophical foundation for moral rights in copyright law — the right of attribution
(the right to be named as author) and the right of integrity (the right to prevent
distortion or mutilation of one's work) — which persist even after the economic
rights are transferred.
The Personhood formula: IPR = P × IE, where IPR is the justified ownership over
intellectual creations, P is the individual's personality, creativity, and self-
expression, and IE is the external manifestation of that personality through creative
or intellectual works. The stronger the personal connection between a creator and
their work, the stronger the moral claim to protection.

1.3 Overview of Intellectual Property Rights

India's IP system comprises several distinct branches, each designed to protect a
different category of intellectual creation. Understanding these at a macro level
before diving into the details of each is essential to building a systematic
understanding of the field.
Copyright
Copyright protects original literary, dramatic, musical, and artistic works, as well
as cinematograph films and sound recordings. It arises automatically upon creation
of the work, without any requirement of registration, and protects the expression
(not the underlying idea) for a period of 60 years from the death of the author (or
from publication, in certain categories). The Copyright Act, 1957, as amended most
significantly in 2012, is the governing statute.

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Trademarks
A trademark is a mark — which may include a word, symbol, logo, shape, colour,
or sound — that distinguishes the goods or services of one trader from those of
others. Trademarks protect commercial reputation and consumer trust.
Registration under the Trade Marks Act, 1999 is not mandatory but confers
significant advantages. A registered trademark is valid for 10 years and is renewable
perpetually.
Patents
A patent grants an inventor the exclusive right to commercially exploit their
invention for a period of 20 years in exchange for full public disclosure of the
invention. This disclosure enriches the stock of human knowledge and allows others
to build upon it after the patent expires. The Patents Act, 1970 (amended
significantly in 2005) is the governing statute. India follows a 'first-to-file' system.
Designs
The Designs Act, 2000 protects the aesthetic, visual features of industrial products
— their shape, configuration, pattern, ornament, or composition of colours. Design
protection does not extend to functional features. Registration is required and
protection lasts for 10 years (extendable by 5 years).
Geographical Indications (GIs)
A Geographical Indication (GI) identifies a product as originating from a particular
geographic region where a specific quality, reputation, or characteristic is
attributable to that origin. The Geographical Indications of Goods (Registration and
Protection) Act, 1999 governs GIs in India. Famous Indian GIs include Darjeeling
Tea, Kanchipuram Silk, and Basmati Rice.
Plant Varieties and Farmers' Rights
The Protection of Plant Varieties and Farmers' Rights Act, 2001 protects plant
breeders' rights for new varieties while also recognising and protecting the rights of
farmers to save, use, sow, re-sow, exchange, share, or sell farm produce, including
seeds.
Layout Designs of Integrated Circuits

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The Semiconductor Integrated Circuits Layout-Design Act, 2000 protects the layout
designs (topographies) of semiconductor integrated circuits.

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UNIT 2: LAW RELATING TO COPYRIGHT

2.1 Introduction to Copyright

Copyright is, historically, the oldest form of intellectual property protection for
creative expression. The word 'copyright' literally refers to the right to copy — but it
has expanded far beyond this original meaning. Today, copyright is a bundle of
exclusive rights granted to creators of original works that allows them to control
how their works are reproduced, distributed, performed, broadcast, adapted, and
translated. The Copyright Act, 1957, as amended in 2012, is the principal statute
governing copyright in India.
The fundamental purpose of copyright is to balance two competing interests: the
interest of creators in receiving recognition and reward for their creative labour, and
the interest of the public in having free access to knowledge, culture, and
information. This balance is achieved by granting creators exclusive rights for a
limited period (generally 60 years), after which the work enters the public domain
and can be freely used by all.

2.2 Concept of Originality in Copyright (Section 13)

Section 13 of the Copyright Act, 1957 provides that copyright subsists in original
literary, dramatic, musical, and artistic works; cinematograph films; and sound
recordings. The critical word is 'original' — but the Act itself does not define what
'original' means. This omission has led to extensive judicial elaboration of the
concept, and two major theoretical approaches have emerged globally.

2.2.1 The 'Sweat of the Brow' Doctrine

The older, and now largely discredited, approach to originality is the 'sweat of the
brow' (or 'labour and skill') doctrine. Under this approach, a work is original and
therefore entitled to copyright protection if its creator invested sufficient labour,
skill, and effort in its creation, regardless of whether any creative spark was
involved. The rationale is that a person deserves to own the fruits of their labour —
a reward for industriousness, not creativity.

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The leading case for this doctrine is University of London Press Ltd v University
Tutorial Press Ltd [1916] 2 Ch 601, where Justice Peterson held that the word
'original' does not require that the work express original or inventive thought, or
that the form of expression be novel or unique — it only requires that the work
originate from the author, i.e., that it not be copied from another. Under this
approach, a telephone directory compiled through painstaking effort, even one
arranged merely in alphabetical order, would be original and protectable.

2.2.2 The 'Modicum of Creativity' Approach

The United States Supreme Court rejected the sweat of the brow doctrine in the
landmark case Feist Publications Inc. v. Rural Telephone Service Co., 499 U.S. 340
(1991). The dispute concerned Rural's alphabetically arranged white-pages
telephone directory. Feist had copied Rural's listings without authorisation. The
Court held that facts, including names and telephone numbers, cannot be
copyrighted because copyright only protects original works of authorship. For
originality, the Court required that the work be independently created by the author
(not copied from other works) and possess at least a minimal degree of creativity.
The alphabetical arrangement of a phone book, being devoid of even the slightest
trace of creativity, failed this test. The Court explicitly rejected the sweat of the brow
doctrine, holding that copyright does not protect industrious compilation but only
creative expression.

2.2.3 The Canadian Intermediate Test (Skill and Judgment)

The Supreme Court of Canada in CCH Canadian Ltd. v. Law Society of Upper
Canada [2004] 1 SCR 339 charted a middle course. The Court held that the sweat
of the brow standard is too low (it would protect even purely mechanical labour)
while the creativity standard is too high (it would require novelty or non-
obviousness, which are patent concepts). The proper test is that the work must be
the product of an author's exercise of skill and judgment — the author's knowledge,
developed aptitude, or practised ability (skill), combined with the capacity for

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discernment or evaluation (judgment). This intellectual effort must not be so trivial

that it could be characterised as a purely mechanical exercise.

Eastern Book Company & Ors. v. D.B. Modak & Anr., (2008) 1 SCC 1
This is the leading Indian Supreme Court case on originality in copyright, and it
adopted the Canadian skill-and-judgment test. Eastern Book Company (EBC)
published the Supreme Court Cases (SCC) law reporter. EBC created 'SCC Online',
a CD-ROM database, containing copies of Supreme Court judgments to which EBC
had added editorial enhancements: paragraph numbering, editing for clarity, head
notes (summaries of legal points), short notes, and cross-references. D.B. Modak's
software 'Grand Jurix' copied these features. EBC alleged copyright infringement.
The Supreme Court held that raw judicial pronouncements are in the public domain
and not protectable — they are the work of the court, not EBC. However, EBC's
editorial contributions could attract copyright protection if they demonstrated the
requisite skill and judgment. The Court held that EBC's paragraph numbering — a
process requiring full understanding of the judgment, identification of the distinct
issues, statutory provisions involved, and the chain of reasoning — required an
exercise of brain-work and thus had a 'flavour of minimum amount of creativity.'
Similarly, the annotation of concurring and dissenting opinions required judgment.
However, EBC's addition of parallel citations and attorney information was purely
factual and did not qualify. This case established the skill-and-judgment test as
Indian law's standard for originality.

2.3 The Idea-Expression Dichotomy

One of the most foundational principles of copyright law is that copyright protects
the expression of ideas but not the ideas themselves. This is known as the idea-
expression dichotomy. The practical consequence of this principle is enormous: it
means that no matter how original or brilliant your idea is, anyone can take that
idea and express it in their own words or through their own creative effort without
infringing your copyright. What they cannot do is copy your specific expression of
that idea.

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Think of it this way: if you write a novel about a young wizard who discovers he is
special and attends a school for magic, nobody can copy your specific sentences
and characters. But anyone else is free to write their own novel about a young
wizard attending a magic school — they would just have to express the story in their
own original way. The idea of a young wizard at a magic school is too important to
be owned by anyone; locking it up would stifle creativity. But your specific
expression of that idea is uniquely yours.

Baker v. Selden, 101 U.S. 99 (1879) — U.S. Supreme Court

This is the foundational case for the idea-expression dichotomy. Selden had written
a book describing a unique bookkeeping system and included blank forms for
practical use of that system. Baker adopted the same system and forms in his own
book without permission. Selden's estate sued for copyright infringement. The U.S.
Supreme Court held that copyright in a book explaining a system or method does
not extend to the system or method itself. The copyright protects the specific text
and illustrations in the book, but anyone is free to practise the bookkeeping system
described therein. The Court drew a clear line: books explaining art may be
copyrighted; the art itself may not be, unless it meets the requirements for patent
protection.

R.G. Anand v. Deluxe Films & Ors., AIR 1978 SC 1613 — Supreme Court of
India
This is the landmark Indian Supreme Court case applying the idea-expression
dichotomy. R.G. Anand, a playwright, wrote a stage play titled 'Hum Hindustani'
dealing with the theme of communalism, provincial prejudice, and national
integration. He showed the script to Deluxe Films, which later produced the Hindi
film 'New Delhi' with a similar theme. Anand alleged that the film copied his play
and amounted to copyright infringement.
The Supreme Court laid down the fundamental principle that there can be no
copyright in an idea, subject matter, themes, plots, or historical or legendary facts.
Only the specific expression of an idea can be protected. The Court then articulated
the 'lay observer test' or 'average viewer test': the question for the court is not

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whether experts find technical similarity between two works, but whether an
average person, after seeing both works, would think that the later work is a copy
of the earlier one. If the total impression of the two works is different, there is no
infringement, even if some similarities exist.
The Supreme Court in R.G. Anand laid down Seven Guidelines for determining
copyright infringement in cases of similarity: (1) No copyright exists in ideas — only
in the way the idea is expressed. (2) The same theme is allowed, provided the
treatment and presentation are different. (3) If similarities are fundamental and
substantial, infringement may be inferred. (4) Minor or superficial differences will
not defeat a claim of copying. (5) If similarities relate only to common or stock
elements, there is no infringement. (6) The test is from the view of a lay observer,
not an expert. (7) If the total impression of the works is different, there is no
infringement, even if some similarities exist.

2.3.1 The Merger Doctrine

A corollary to the idea-expression dichotomy is the Merger Doctrine. On certain

occasions, there is only one way — or very few ways — to express a particular idea.
In such cases, the idea and its expression are said to 'merge.' If expression were
protected in these cases, the copyright holder would effectively gain a monopoly over
the idea itself. Courts therefore refuse to protect such expression. A classic example:
there is only one way to express an algorithm to add two numbers. Allowing
copyright in that expression would be equivalent to copyrighting the idea of
addition.
In Herbert Rosenthal Jewelry Corp. v. Kalpakian (1971, 9th Circuit), two jewellers
made bejewelled bee pins. The court found no infringement because there are only
so many ways to make a jewelled bee pin — the idea and its expression had merged.
Another important related doctrine is Scenes à Faire: certain elements are so
standard or necessary to a particular genre or scenario that they cannot be
protected. In Thomas Walker v. Time Life Films Inc., the plaintiff wrote a book about
policemen in South Bronx. The defendant made a film about the same subject.
Elements like drunks, prostitutes, vermin, and derelict cars were found to be stock

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elements necessary to any realistic portrayal of that setting — they were 'scenes à
faire' (scenes that must be done) and not protectable.

2.4 Works Protected Under Copyright (Section 2)

Section 13 of the Copyright Act, 1957 provides that copyright subsists in: (a) original
literary, dramatic, musical, and artistic works; (b) cinematograph films; and (c)
sound recordings. Section 2 provides detailed definitions of each category.

2.4.1 Literary Works [Section 2(o)]

'Literary work' includes computer programmes, tables, and compilations including

computer databases. Importantly, no literary merit is required — almost any written
material qualifies, including instruction manuals, football fixtures, and examination
papers. The work must be original and in some fixed form. The fixation requirement
means that purely oral works (that are never written down or recorded) may not
attract copyright protection in India.

2.4.2 Dramatic Works [Section 2(h)]

'Dramatic work' includes any piece of recitation, choreographic work, entertainment

in dumb show, or scenic arrangement or acting form fixed in writing or otherwise,
but does not include a cinematograph film. A dance choreography can therefore be
protected as a dramatic work if it is fixed in writing or recorded.

2.4.3 Musical Works [Section 2(p)]

'Musical work' means a work consisting of music and includes any graphical
notation of such work, but does not include any words or action intended to be
sung, spoken, or performed with the music. This is a crucial distinction: the musical
composition (the melody, harmony, rhythm) is protected as a musical work, while
the lyrics are a separate literary work. The underlying musical notes on a sheet of
paper are the musical work; the recording of a song is a separate sound recording
with its own copyright.

Gramaphone Co. of India Ltd. v. Super Cassettes Industries Ltd., AIR 2010
Del 123

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This case dealt with the distinction between a musical work and a sound recording,
and the independent copyright that subsists in each. The court affirmed that a
music producer who records a composition is the owner of the sound recording
copyright, while the composer retains the musical work copyright. These are layered
rights that require separate licences for different types of use. The case illustrates
the 'layered rights model' in copyright: Lyrics (lyricist), Musical Work (composer),
Sound Recording (producer), and Cinematograph Film (film producer) — each layer
has a separate author, separate rights, and requires separate licensing.

2.4.4 Artistic Works [Section 2(c)]

'Artistic work' means a painting, a sculpture, a drawing (including a diagram, map,
chart, or plan), an engraving, a photograph, a work of architecture, or a work of
artistic craftsmanship. Unlike literary works, no originality of idea is required
beyond the requirement that the work originate from the author.

2.4.5 Cinematograph Films [Section 2(f)]

'Cinematograph film' means any work of visual recording on any medium produced
through a process from which a moving image may be produced, and includes a
sound recording accompanying such visual recording. A cinematograph film is a
composite work: it contains a musical work (the background score), literary works
(the screenplay), artistic works (the visual frames), and a sound recording.
Importantly, the copyright in the film does not extinguish the independent
copyrights in the underlying works.

2.4.6 Sound Recordings [Section 2(xx)]

'Sound recording' means a recording of sounds from which such sounds may be
produced, regardless of the medium on which such recording is made or the method
by which the sounds are produced. A sound recording is medium-neutral: it
includes vinyl records, magnetic tapes, CDs, MP3 files, and streaming formats. The
producer (the person who finances the recording) is the first owner of the sound
recording copyright.

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2.5 Economic Rights and Moral Rights

2.5.1 Economic Rights (Section 14)

Section 14 of the Copyright Act defines 'copyright' as the exclusive right to do or

authorise the doing of certain acts in respect of each class of work. These economic
rights allow the copyright owner to control the commercial exploitation of their work
and receive financial benefits.
For literary, dramatic, and musical works [Section 14(a)]:
The copyright owner has the exclusive right to: (i) reproduce the work in any
material form, including the storing of it in any medium by electronic means; (ii)
issue copies to the public that are not already in circulation; (iii) perform the work
in public or communicate it to the public; (iv) make any cinematograph film or
sound recording in respect of the work; (v) make any translation of the work; and
(vi) make any adaptation of the work.
For computer programmes [Section 14(b)]:
In addition to the above, the copyright owner has the right to sell or give on
commercial rental any copy of the computer programme.
For artistic works [Section 14(c)]:
The copyright owner may reproduce the work in any material form, communicate it
to the public, issue copies not already in circulation, include it in any
cinematograph film, and make any adaptation of the work.
For cinematograph films [Section 14(d)]:
The copyright owner may make a copy of the film (including any photograph of any
image forming part of it), sell or give on hire any copy, and communicate the film to
the public. Note that the right in films is to 'make a copy' rather than 'reproduce' —
this narrower formulation has important legal consequences.
For sound recordings [Section 14(e)]:
The copyright owner may make any other sound recording embodying the original,
sell or give on hire any copy, and communicate the sound recording to the public.

Star India Pvt. Ltd. v. Leo Burnett (India) Pvt. Ltd., AIR 2003 Bom 254

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The plaintiff, Star India, owned copyright in the popular television serial 'Kyun Ki
Saas Bhi Kabhi Bahu Thi.' The defendant produced a commercial film titled 'Kyun
Ki Bahu Bhi Kabhi Saas Banegi' featuring similar family-based themes, analogous
character roles, and some of the same actors. The Bombay High Court had to
determine whether this constituted infringement of the plaintiff's copyright in the
cinematograph film.
The court distinguished between rights under Section 14(a)/(b)/(c) (which use the
language 'reproduce the work in any material form') and rights under Section 14(d)
(which uses the language 'make a copy'). The right to 'make a copy' of a film is
narrower than the right to 'reproduce' — it refers to physical or material duplication
of the existing film, not the making of a new film that merely resembles it. A
separately produced film, even if substantially similar in theme, characters, and
treatment, does not amount to making a 'copy' under Section 14(d). The court noted,
however, that if specific scenes, dialogues, or sequences from the plaintiff's film
were reproduced, that could still constitute infringement.

Pranda Jewellery Pvt. Ltd. v. Aarya 24 Kt. and Others, 2018 SCC OnLine
Bom 1530
This case dealt with copyright in artistic works — specifically, jewellery designs. The
plaintiff, Pranda Jewellery, claimed copyright in its original jewellery designs under
Section 2(c) of the Copyright Act. The court examined whether jewellery designs
could be protected as artistic works. The key finding was that original jewellery
designs do attract copyright protection as 'works of artistic craftsmanship,' provided
they meet the originality threshold. The case also highlights the potential overlap
between copyright protection (for original designs) and design protection under the
Designs Act, 2000, an issue that will be explored further in Unit 5.

2.5.2 Moral Rights (Section 57)

Moral rights represent the personal dimension of copyright — the bond between a
creator and their creative work that is independent of economic considerations.
They are grounded in the personhood theory of IP discussed in Unit 1. Even after a
creator assigns or licenses all their economic rights, their moral rights remain with

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them, protecting their personal and reputational connection to the work. Section 57
of the Copyright Act, 1957 confers two moral rights:
Right of Paternity (Right of Attribution):
The author has the right to claim authorship of the work — the right to be identified
as the creator. A publisher or producer who releases the work without crediting the
author, or who wrongly attributes authorship to another, infringes this right.
Right of Integrity:
The author has the right to restrain or claim damages in respect of any distortion,
mutilation, modification, or other act in relation to their work that would be
prejudicial to their honour or reputation. This right subsists even after the author's
death.
Section 57 overrides contractual agreements — the assignee of copyright cannot
claim rights or immunities that are inconsistent with Section 57. In Manu Bhandari
v. Kala Vikas Pictures (1987), the Delhi High Court held that the contract of
assignment is subject to Section 57, and terms of a contract cannot negate the
special rights and remedies guaranteed by that section. Moral rights are available
to authors, not owners.

Amarnath Sehgal v. Union of India, 117 (2005) DLT 717

This is the landmark Indian case on moral rights of visual artists. In 1957, sculptor
Amarnath Sehgal was commissioned by the Government of India to create a massive
bronze mural (40 feet × 140 feet) for the Ground Floor lobby of Vigyan Bhawan in
New Delhi. The mural was completed in 1962 and displayed prominently. In 1979,
when the building was renovated, the mural was pulled down, removed from public
view, and consigned to a storeroom. Parts of it were damaged. Sehgal sued for
infringement of his moral rights under Section 57, seeking damages of Rs. 50 lakhs
and the return of the mural.
The Delhi High Court ruled in favour of Sehgal and held that the Union of India had
infringed his moral rights. The court stated that 'The author has a right to preserve,
protect and nurture his creations through his moral rights. A creative individual is
uniquely invested with the power and mystique of original genius, creating a

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privileged relationship between a creative author and his work.' The court also held
that the destruction or mutilation of a work is prejudicial to the author's reputation
and indirectly affects the cultural heritage of the country. The court returned the
mural to Sehgal and awarded substantial damages. This case brought moral rights
into the mainstream of Indian IP jurisprudence.

Raj Rewal v. Union of India & Ors., CS(OS) 267/2019

Architect Raj Rewal had designed the iconic Hall of Nations complex at Pragati
Maidan, New Delhi, in 1972 — a structure celebrated globally for its innovative
space frame architecture. In 2016-2017, the complex was demolished by the India
Trade Promotion Organisation (ITPO) to build a new exhibition centre. Rewal filed a
suit under Section 57 alleging infringement of his moral right of integrity, seeking
an injunction for the reconstruction of the building.
The Delhi High Court held against Rewal on this point, ruling that the property
owner's constitutional right to use their property (Article 300A of the Constitution
of India) prevailed over the architect's statutory moral right under the Copyright
Act. The court further held that Section 57 only authorises restraint against
distortion, mutilation, or modification that renders a work imperfect — not against
the complete destruction of a work. Once a building ceases to exist, there is no
longer an imperfect work affecting the architect's honour or reputation. The court
also noted that Section 52(1)(x) — which lists the reconstruction of a building as a
fair dealing — impliedly contemplates that buildings may be demolished, which
undermines the argument that Section 57 restricts demolition. This case represents
a significant limitation on architectural moral rights.

2.6 Authorship and Ownership of Copyright (Section 17)

The concepts of authorship and ownership are closely related but not identical. The
author of a work is the person who creates it — the intellectual originator. The
owner of copyright is the person who legally holds the economic rights. These are
often the same person, but there are important exceptions.

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The general rule under Section 17 is that the author is the first owner of the
copyright in their work. However, there are important exceptions:
Works Created in the Course of Employment (Section 17, first proviso):
If a work is created by an author in the course of their employment under a contract
of service (i.e., an employment contract), the employer is the first owner of the
copyright, absent any agreement to the contrary. The critical distinction is between
a contract of service (employment) and a contract for services (independent
contractor). In the former, the employer controls how, when, and where the work is
done and provides the necessary tools and support; in the latter, the contractor
retains independence. If the relationship is a contract for services, the author
(independent contractor) remains the owner.

V.T. Thomas v. Malayala Manorama Co. Ltd., AIR 1989 Ker 49

V.T. Thomas ('Tom') was an artist employed by the publishing house Malayala
Manorama. He had created 'Boban and Molly,' a popular cartoon character, before
joining the company. During his employment, he continued to draw the character
for the company's publications. After he left employment, the company claimed
ownership over the cartoon character and sought to continue publishing the strip
using a different artist. Thomas sued, claiming that the copyright in the character
itself — as distinct from individual drawings — belonged to him.
The Kerala High Court held in favour of Thomas. The court drew a crucial distinction
between copyright in specific drawings (which might belong to the employer) and
copyright in the cartoon character itself (which remained with Thomas). Since
Thomas had created the character before joining Manorama, and since the
character was his unique intellectual creation (a product of his individual creative
effort), the company could not claim it as their own upon his leaving. The court
restricted Manorama from claiming authorship of the character or from instructing
another artist to draw it after Thomas's departure.

Najma Heptullah v. Orient Longman Ltd., AIR 1989 Del 63

This case dealt with joint authorship of one of the most important books in Indian
political history. 'India Wins Freedom' was the memoir of Maulana Abul Kalam Azad,

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the nationalist leader and independent India's first Education Minister. Azad
narrated his memoirs in Urdu; Dr. Humayun Kabir, his associate, wrote them down
in English, giving form to Azad's narrations. After Azad's death, a dispute arose over
whether the book was jointly authored by Azad and Kabir, and who had the right to
permit publication of a portion Azad had instructed should not be published for 30
years.
The Delhi High Court held that the work was the product of active and close
intellectual collaboration between Azad and Kabir, and was therefore a work of joint
authorship within the meaning of Section 2(z) of the Copyright Act. The court did
not lay down rigid criteria for determining joint authorship but identified active and
close intellectual collaboration as the key hallmark. Since Kabir's role was described
as that of a scribe who simply recorded Azad's thoughts without colouring the
narrative with his own views, the court's classification of this as joint authorship
(rather than sole authorship by Azad) has been debated. Nevertheless, the case
remains the leading Indian authority on joint authorship.

Deshmukh & Co. (Publishers) Pvt. Ltd. v. Avinash Vishnu Khandekar and
Others
This case examined the authorship of encyclopaedic compilations. A publisher
commissioned an author to write biographical entries for an encyclopaedia. The
central issue was whether the commissioning publisher or the author owned the
copyright. The case confirmed that in cases of works commissioned under a contract
for services, the author (not the commissioning party) is the owner unless the
contract specifically provides otherwise. It is essential that publishing contracts
specifically and clearly address ownership of copyright to avoid disputes.

2.6.1 Joint Authorship and the Contribution Requirement

Section 2(z) of the Copyright Act defines 'work of joint authorship' as 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 authors. A key principle
is that a person who merely contributes ideas, or who acts as a scribe, cannot claim

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joint authorship — they must make an original creative contribution to the

expression of the work.

Robin Ray v. Classic FM Plc [1998] EWHC 12 (Ch)

Robin Ray, a classical music expert, entered into a consultancy agreement with
Classic FM radio station. He created five documents containing his proposals for
music selection and catalogue, which formed the basis of the station's highly
successful programming. Classic FM later licensed these programmes to foreign
radio stations. Ray sued for copyright infringement and joint authorship.
The court held that in order to claim joint authorship, a contribution must be made
as an author — something incorporated into the finished work and protected by
copyright. The contribution must be to the creation of the expression, not merely to
the ideas behind it. In this case, Ray had created the five documents (the
expression), while Classic FM had made a contribution to the work but not of
sufficient authorial character to qualify as joint authorship. The court held that
Ray's copyright had been infringed.

2.7 Assignment of Copyright (Sections 18 and 19)

'Assignment' is the legal transfer of copyright from the owner (assignor) to another
party (assignee). Assignment of copyright is distinct from a licence: an assignment
transfers ownership, while a licence merely grants permission to use the copyright
while ownership remains with the original owner. Understanding the specific rules
governing assignment is critical for copyright practice.

2.7.1 Section 18 — What Can Be Assigned?

The owner of copyright in an existing work, or the prospective owner of copyright in

a future work, may assign copyright either wholly or partially, generally or subject
to limitations, for the whole term of copyright or for any part thereof. When the
assignment is of a future work, it takes effect only upon the creation of the work.
Limitations on Unknown Modes of Exploitation (Section 18, Proviso 2):
An assignment does not cover any mode or medium of exploitation of the work
unknown at the time of assignment, unless the assignment specifically mentions

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such future modes. For example, an assignment in 2005 covering CDs and radio
broadcasting does not automatically include OTT streaming (which was not
commercially available at the time) unless expressly stated.
Protection of Authors in Cinematograph Films (Section 18, Proviso 3):
An author of a literary or musical work in a cinematograph film cannot assign or
waive the right to receive royalties for uses of the work other than theatre exhibition.
The royalty is to be shared equally with the producer. Any agreement to the contrary
is void. This provision, introduced by the 2012 Amendment, protects composers
and lyricists from being strong-armed into signing away their royalty rights as a
condition of getting their work included in films.
Protection of Authors in Sound Recordings (Section 18, Proviso 4):
Similarly, an author of a literary or musical work in a sound recording (other than
one forming part of a film) cannot assign or waive the right to receive royalties from
the exploitation of the recording. The assignment of such rights is only valid if made
to the author's legal heirs or to a collecting society.

2.7.2 Section 19 — Mode of Assignment

Written and Signed (Section 19(1)):

An assignment of copyright must be in writing and signed by the assignor or their
authorised agent. Oral assignments have no legal validity.
Mandatory Particulars (Section 19(2)):
The deed of assignment must identify the work, specify the rights assigned, the
duration, and the territorial extent. A vague assignment of 'all rights' without
identifying the specific work or duration may be legally defective.
Non-Exercise of Rights by Assignee (Section 19(4)):
If the assignee does not exercise the assigned rights within one year of the
assignment, the assignment of such rights is deemed to have lapsed, unless the
agreement provides otherwise. A publisher who acquires translation rights but
never publishes the translation loses those rights after one year.
Default Duration and Territory (Sections 19(5) and (6)):

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If the duration of the assignment is not specified, it is deemed to be five years. If the
territorial extent is not specified, it is presumed to be valid only within India.
Conflict with Copyright Society Rights (Section 19(8)):
An assignment is void to the extent it conflicts with any rights already vested in a
copyright society to which the author belongs. A composer who is a member of IPRS
(Indian Performing Right Society) cannot privately assign public performance rights
already managed by IPRS.

2.8 Statutory and Compulsory Licensing (Sections 30–32B)

While copyright confers exclusive rights, there are situations where the public
interest demands that third parties be able to use copyrighted works without the
owner's consent, though typically with payment of compensation. Indian law
provides for two types of compelled access: statutory licences and compulsory
licences.

2.8.1 Compulsory Licensing (Section 31)

If the copyright owner has refused to republish or allow the republication of a work,
has refused to allow its performance in public, or has otherwise withheld it from the
public, and the Copyright Board (now known as the Intellectual Property Appellate
Board) is satisfied that the withholding is against the public interest, it may direct
the owner to grant a licence on payment of a reasonable royalty.

Super Cassettes Industries Ltd. v. Entertainment Network (India) Ltd. (ENIL),

AIR 2008 Bom 34
This is one of the most significant cases concerning compulsory licensing of sound
recordings for radio broadcasting. Entertainment Network (ENIL) operated the radio
station Radio Mirchi and broadcast popular music. Super Cassettes (T-Series)
owned the sound recording copyright in a large body of popular music and had
refused to grant ENIL a licence at rates ENIL considered reasonable. ENIL argued
for a compulsory licence under Section 31(1)(b).
The Supreme Court held that Section 31 can be invoked when copyright owners
unreasonably withhold licences from broadcasters. The court emphasised that

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broadcasting rights are a special category under copyright law, and when a
copyright owner withholds broadcast permissions and this is against public
interest, the statutory licensing mechanism is available. The case established
important precedents for the relationship between copyright owners and
broadcasters in India.

Phonographic Performance Ltd. v. Music Broadcast Pvt. Ltd., AIR 2010 Bom
69
Phonographic Performance Ltd. (PPL) is a copyright society that represents music
labels and manages their sound recording rights. Music Broadcast, operating radio
stations, sought licences from PPL. When the parties could not agree on royalty
rates, the dispute went to the Copyright Board. The Bombay High Court's ruling on
this dispute dealt with the methodology for determining fair royalties under
statutory licensing, affirming that the rates must balance the interests of copyright
owners with the public interest in affordable access to broadcast music.

Phonographic Performance Ltd. v. Union of India, (2015) 222 DLT 439

This case further elaborated the framework for statutory licensing under Section
31D (introduced by the 2012 Amendment), which allows broadcasting organisations
to obtain statutory licences for internet streaming of sound recordings. PPL
challenged the provision on the ground that it impermissibly curtailed the rights of
copyright owners. The Delhi High Court upheld the constitutional validity of Section
31D, affirming Parliament's power to impose reasonable restrictions on intellectual
property rights in the public interest.

2.9 Performers' Rights (Sections 38–39)

Before the 2012 Amendment, Indian copyright law provided only limited protection
to performers — the musicians, actors, dancers, and others who bring creative
works to life through their performances. The 2012 Amendment significantly
strengthened performers' rights in line with India's obligations under the WIPO
Performances and Phonograms Treaty (WPPT).

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Section 2(q) defines 'performance' as any visual or acoustic presentation made live
by one or more performers. Section 2(qq) defines 'performer' to include actors,
singers, musicians, dancers, acrobats, jugglers, conjurers, snake charmers,
persons delivering lectures, and anyone else making a performance. However,
following the 2012 Amendment, persons whose performance in a cinematograph
film is casual or incidental, and who are not credited in the film (i.e., 'extras'), do
not qualify as performers.
Section 38 grants performers the exclusive right to do or authorise the making of a
sound recording or visual recording of the performance, the reproduction,
broadcasting, or communication to the public of such recording, and the issuance
of copies to the public for the first time. Under Section 38A, performers have the
right to receive royalties for the commercial use of their performances. The 2012
Amendment introduced a critical protection: a performer cannot waive the right to
receive royalties from OTT platforms, television broadcasts, or other modes of
exploitation, even if they have assigned their performance rights to a producer.

Neha Bhasin v. Anand Raj Anand, 2006 (32) PTC 779 (Del)
This important Delhi High Court case resolved the question of what constitutes a
'live performance' for the purpose of performers' rights. Singer Neha Bhasin had
performed a song that was recorded in a studio. The recorded song was later used
in a film without her authorisation. The defendant argued that studio recordings
are not 'live performances' and therefore not protected by performers' rights. The
court rejected this argument, holding that 'every performance has to be live in the
first instance, whether it is before an audience or in a studio. If this performance is
recorded and thereafter exploited without the permission of the performer, then the
performer's right is infringed.' This ruling significantly expanded the scope of
performers' rights to cover studio recordings.

2.10 Broadcasting Organisations' Rights (Section 37)

Section 37 grants broadcasting organisations a 'broadcast reproduction right' — a
neighbouring right (as distinct from copyright) that protects the broadcast itself (the

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signal) rather than the underlying content being broadcast. A broadcasting

organisation has the exclusive right to re-broadcast its broadcasts, cause the
broadcast to be heard or seen by the public on payment of any charges, make any
sound recording or visual recording of the broadcast, and make any reproduction
of such a recording.

ESPN Star Sports v. Global Broadcast News Ltd. & Anr., 2008 (38) PTC 447
(Del)
ESPN Star Sports broadcast cricket matches under an exclusive broadcasting
agreement. Global Broadcast News (GBN) and its news channel captured and re-
transmitted portions of ESPN's cricket coverage in its news bulletins without
authorisation. ESPN sued for infringement of its broadcast reproduction right under
Section 37. The Delhi High Court held that ESPN's broadcast reproduction right
had been infringed, since GBN had re-transmitted substantial portions of the
broadcast without permission. The court clarified, however, that brief clips used in
news reporting might be protected by the fair dealing provisions of Section 52(1)(b).
This case is important for delineating the rights of sports broadcasters and the
limits of news gathering rights.

2.11 Copyright Societies (Sections 33–36A)

Copyright societies (also called collecting societies or collective management
organisations) are registered societies that administer copyright and related rights
on behalf of multiple owners. They serve an essential function: they make it
practical for users to obtain licences for large repertoires of works (e.g., all sound
recordings), and they make it practical for rights owners to collect royalties from
millions of uses that they could never track individually.
Section 33 of the Copyright Act provides that a copyright society must be a
registered society formed by authors and other owners of copyright. It can be formed
by seven or more copyright holders. A copyright society may: keep track of rights
and infringements; issue licences in respect of the rights administered; collect

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licence fees; and distribute those fees among members after deducting
administrative expenses. The term of registration is five years, renewable.
Registered Copyright Societies in India include:
The Indian Performing Right Society Limited (IPRS) — for musical and literary works
used in public performance. Phonographic Performance Limited (PPL) — for sound
recordings used in broadcasting and public performance. Society for Copyright
Regulation of Indian Producers for Film and Television (SCRIPT) — for
cinematograph and television films. Indian Singers Rights Association (ISRA) —
representing the rights of playback singers.

Zee Telefilms Ltd. v. Sundial Communications Pvt. Ltd., 2003 (27) PTC 457
(Bom)
This case is important for its elaboration of the test for copyright infringement of
creative works, particularly the 'substantial reproduction' test. The Bombay High
Court held that the test for determining whether a substantial reproduction has
occurred is to examine 'the substance, foundation, kernel' of both works. If the rest
of the later work cannot stand without the portion taken from the earlier work, that
is indicative of substantial reproduction — even if many other dissimilarities exist.
The court also affirmed the 'layman observer test' and the need to compare the two
works not with 'hypocritical and meticulous scrutiny' but with the impressions of
an average viewer.

2.12 Infringement of Copyright (Section 51)

Section 51 defines when copyright in a work is infringed. Infringement occurs when
any person, without licence from the copyright owner or the Registrar of Copyrights,
does anything that the owner has the exclusive right to do. Section 51 covers both
primary and secondary infringement.
Primary Infringement [Section 51(a)(i)]:
Applies to a person who directly does any act exclusive to the copyright owner.
Knowledge and intention are irrelevant — the act itself is the infringement. For

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example, uploading a pirated movie is primary infringement by the person who does
the uploading.
Secondary Infringement [Section 51(a)(ii)]:
Applies to a person who permits a place to be used for communicating the work to
the public, for profit, where the communication constitutes copyright infringement,
unless the person was not aware and had no reasonable ground to believe that such
communication would be an infringement. Knowledge or reason to believe is a
required element for secondary infringement. Example: a venue owner who
knowingly allows a pirated screening of a film.

MySpace Inc. and Another v. Super Cassettes Industries Ltd., (2016) 236
DLT 478
This landmark case dealt with the secondary liability of internet intermediaries for
copyright infringement by their users. Users of the social networking platform
MySpace uploaded copyrighted music and videos belonging to Super Cassettes (T-
Series) without authorisation. Super Cassettes alleged that MySpace was liable for
secondary copyright infringement for hosting this content.
The Delhi High Court (Division Bench) held that intermediary liability under
copyright law (Section 51(a)(ii)) requires actual knowledge of the specific
infringement, not merely general or constructive knowledge. The court held that for
knowledge to be established, the rights holder must notify the platform of: (1) the
specific copyrighted work being infringed, and (2) the specific URL or location of the
infringing content. Mere awareness that infringement might be occurring on the
platform is insufficient. Once notified, the intermediary must expeditiously remove
the content. The court also held that providing a neutral platform does not amount
to contributory infringement. Safe harbour protection under Section 79 of the IT
Act, 2000 applies to intermediaries that act in good faith. This case is the leading
Indian authority on intermediary copyright liability.

Bucyrus Europe Ltd. v. Vulcan Industries Engineering Co. Pvt. Ltd., 2005
(30) PTC 279

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This case dealt with the copyright in technical drawings and engineering designs.
The plaintiff, Bucyrus, was a manufacturer of mining equipment and had created
technical engineering drawings for its equipment components. The defendant,
Vulcan, manufactured spare parts for mining equipment using drawings that were
substantially similar to Bucyrus's drawings. Bucyrus sued for infringement of its
artistic copyright in the technical drawings.
The court held that technical drawings of industrial components are artistic works
within the meaning of Section 2(c) of the Copyright Act, and that copying such
drawings without authorisation constitutes infringement. The court also examined
the interplay between copyright in technical drawings and design protection, a
theme that recurs in Unit 5 as well.

Taj Television Ltd. v. Rajan Mandal and Others, 2003 PTC 245
This case involved the broadcast of a major cricket tournament — the ICC World
Cup. Taj Television Ltd. held exclusive broadcasting rights for the tournament in
India through an agreement with the Board of Control for Cricket in India (BCCI).
The defendant, Rajan Mandal, was a cable operator who re-broadcast the matches
on his cable network without a sub-licence. The Delhi High Court held that the
exclusive broadcasting rights held by Taj Television constituted 'copyright' in the
broadcast and that Mandal's unauthorised re-transmission infringed those rights.
This case affirmed the robust protection afforded to sports broadcasters' rights
under Indian copyright law.

2.13 Fair Dealing (Section 52)

Section 52 is one of the most important sections of the Copyright Act because it
defines the 'safety valve' of the copyright system — the categories of use that are
permitted without the copyright owner's consent and without payment, in the
interest of education, research, criticism, news reporting, and other public
purposes. It is important to understand that fair dealing is not a right but a defence
— a legal excuse that prevents infringement liability when certain conditions are
met.

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The philosophical rationale for fair dealing is that copyright is not an absolute
monopoly. A monopoly of authors must not stand in the way of the creative ability
of others. Returning value to creators so that they can lead a dignified economic
existence must be balanced against providing widespread, affordable access to
content for the public. Freedom of expression, freedom of information, and the free
flow of knowledge require that copyright be subject to limitations.
Key provisions of Section 52:
Fair dealing for private/personal use, research, criticism, review, or news
reporting [Section 52(1)(a)]:
Fair dealing with any work (except computer programmes) for the purposes of
private or personal use, including research; criticism or review (of that work or of
any other work); and reporting of current events and current affairs (including by
means of a photograph, cinematograph film, or television broadcast) does not
constitute infringement. A student quoting portions of a book in a dissertation, a
film reviewer using short clips to critique a movie, or a newspaper reproducing a
photograph while reporting a news event are all examples of fair dealing.
Reproduction for educational purposes [Section 52(1)(i)]:
Reproduction of a work by a teacher or a pupil in the course of instruction does not
infringe copyright. The key conditions are that the reproduction must be for
instruction and must be by a teacher or student.
Performance or exhibition in educational institutions [Section 52(1)(j)]:
Performance or communication of a literary, dramatic, or musical work, or the
exhibition of a cinematograph film or sound recording, in the course of activities of
an educational institution is permitted, provided the audience consists of students,
staff, parents or guardians, and others directly connected with the institution.
Libraries and archives [Sections 52(1)(n) and (o)]:
Public libraries may make not more than three copies of a book (including a
pamphlet, sheet of music, map, chart, or plan) that is not available for sale in India.
Judicial and governmental proceedings [Sections 52(1)(e) and (f)]:
Reproduction for the purpose of judicial proceedings or the publication of reports of
judicial proceedings does not infringe copyright.

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2.13.1 The Delhi University Photocopying Case

The Chancellor, Masters and Scholars of the University of Oxford and Ors.
v. Rameshwari Photocopy Services and Ors., CS(OS) 2439/2012 (Del HC)
This celebrated case (popularly known as the 'DU Photocopying Case') was a
landmark battle between major international academic publishers — Oxford
University Press, Cambridge University Press, and Taylor & Francis — and the
University of Delhi and a photocopy shop on the campus. The publishers alleged
that the shop was infringing their copyright by preparing and selling 'course packs'
containing substantial extracts from their textbooks, at the direction of faculty
members.
The Delhi High Court's judgment was a resounding affirmation of educational fair
dealing. The court held that Section 52 is not a narrow exception but a full statutory
defence grounded in the public policy of promoting education. Crucially, the court
held that 'teacher' in Section 52(1)(i) includes educational institutions as a whole,
not just individual classroom instructors, and that 'instruction' is broader than
classroom lectures, encompassing the entire range of activities through which
learning is facilitated, including the prescription of reading materials. The court also
held that the educational purpose that justifies individual student copying cannot
become infringement merely because the university facilitates the copying through
a campus photocopy service. The publishers' appeal to the Division Bench was
dismissed, and the matter was ultimately settled, but the trial court's judgment
remains highly influential.

2.14 Civil and Criminal Remedies (Sections 54 and 63)

Civil Remedies (Section 55):
Where copyright is infringed, the copyright owner is entitled to all reliefs available
in civil proceedings: (a) injunction (temporary and/or permanent) to restrain further
infringement; (b) damages for loss suffered; (c) account of profits (the infringer must
disgorge profits made through infringement); and (d) delivery up and destruction of
infringing copies.

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Criminal Remedies (Section 63):

Any person who knowingly infringes or abets the infringement of copyright is
punishable with imprisonment for a term not less than 6 months (extendable to 3
years) and a fine not less than Rs. 50,000 (extendable to Rs. 2,00,000). For
subsequent offences, the minimum punishment is 1 year imprisonment. Section
63B specifically addresses knowing use of infringing computer programmes.

Penguin Books Ltd. v. India Book Distributors and Others, AIR 1985 Del 29
This case established important principles about the copyright owner's right to
prohibit importation of copies of their work into India. Section 53 of the Copyright
Act gives the copyright owner the right to prohibit the importation of copies that, if
sold in India, would infringe their copyright. The Delhi High Court in this case
upheld Penguin's right to prevent the parallel importation of cheap editions
published for developing country markets from being imported into India in
competition with their full-priced Indian edition. This case is important for
understanding the exhaustion of rights doctrine in the Indian copyright context.

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UNIT 3: LAW RELATING TO TRADEMARKS

3.1 Introduction to Trademark Law

A trademark is any mark capable of distinguishing the goods or services of one
person from those of others. Trademarks serve three essential economic functions:
they identify the source (or origin) of goods and services; they serve as a guarantee
of consistent quality; and they function as a vehicle for advertising and the creation
of brand goodwill. The Trade Marks Act, 1999 (TMA) is the principal statute
governing trademark law in India.
The protection of trademarks is not merely a commercial matter — it has a
consumer protection dimension as well. By preventing one trader from using
another's trademark, the law protects consumers from being deceived into
purchasing goods or services they did not intend to buy. This deception-prevention
rationale is particularly important in cases of passing off.

3.2 Definition of 'Mark' and 'Trade Mark' (Section 2)

'Mark' [Section 2(m)]:
'Mark' includes a device, brand, heading, label, ticket, name, signature, word, letter,
numeral, shape of goods, packaging or combination of colours, or any combination
thereof. This is a very broad definition that encompasses virtually any form of
distinctive identifier.
'Trade Mark' [Section 2(zb)]:
'Trade mark' means a mark capable of being represented graphically and which is
capable of distinguishing the goods or services of one person from those of others.
The mark may include the shape of goods, their packaging, and a combination of
colours. The two essential requirements of a trademark are therefore: (1) graphical
representability, and (2) capacity for distinction.

3.3 Types of Trademarks

3.3.1 Classification of Marks by Distinctiveness

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The degree of distinctiveness of a mark is the most important factor in determining

whether it can function as a trademark. Marks are classified on a spectrum of
distinctiveness:
Generic marks:
These are marks that are simply the common name for the product they represent
(e.g., 'Salt' for salt, 'Computer' for computers). Generic marks are incapable of
functioning as trademarks because they describe the product itself, not its
commercial origin. They can never be registered or protected. If a trademark
becomes generic through common use (called 'genericide' — think 'escalator,' which
was once a trademark), it loses protection.
Descriptive marks:
These marks describe a characteristic, quality, or feature of the goods or services
(e.g., 'Fair' for a fairness cream, 'Cold and Creamy' for ice cream). Descriptive marks
are generally not registrable unless they have acquired 'secondary meaning' — i.e.,
through long and exclusive use, the mark has come to signify to consumers a
specific commercial source rather than a description of the product.
Suggestive marks:
These marks suggest a quality or characteristic of the goods without describing
them directly (e.g., 'Habitat' for home furnishings). Some mental imagination is
needed to connect the mark with the goods. Suggestive marks are distinctive and
protectable.
Arbitrary marks:
These are marks that exist in common vocabulary but have no logical connection
to the goods on which they are used (e.g., 'Apple' for computers, 'Blackberry' for
mobile phones, 'Amazon' for a retail marketplace). Arbitrary marks are inherently
distinctive and easily protectable.
Fanciful/Invented marks:
These are newly coined words with no existing dictionary meaning (e.g., 'Adidas,'
'Xerox,' 'Kodak,' 'Tata'). Fanciful marks are the strongest category and the easiest
to protect.

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3.3.2 Collective Marks

A collective mark is used by members of an association to indicate membership of

that association. The mark belongs to the association, not to individual members.
For example, a bar association might register a collective mark that its member
lawyers use to indicate membership.

3.3.3 Certification Marks

A certification mark is used to indicate that goods or services possess a certain

quality, characteristic, or standard certified by the proprietor of the mark. The mark
does not indicate commercial origin but rather compliance with a standard. For
example, the 'Woolmark' certifies that a garment is made from 100% wool; 'ISI'
certifies that a product meets Indian Standards specifications. Importantly, the
proprietor of a certification mark does not itself use the mark on goods — it only
certifies the goods of others.

3.3.4 Well-Known Marks

Section 2(1)(zg) defines a 'well-known trade mark' as a mark that has become well-
known to a substantial segment of the public and the use of such a mark in relation
to other goods or services would likely be taken as indicating a connection between
those other goods/services and the proprietor of the registered mark. Well-known
marks receive enhanced protection: their registration can be refused even for goods
or services in different classes (trans-class protection), and they are protected
against unauthorised use that would dilute their distinctive character even if there
is no risk of confusion.
Examples of well-known trademarks include Google, Tata, Yahoo, Pepsi, and
Reliance. Under the principle of 'trans-border reputation,' India has also protected
marks like Apple, Gillette, Whirlpool, and Volvo — marks that, despite having had
limited or no physical presence in India, were known to Indian consumers through
international publications and advertising.

3.4 Absolute Grounds for Refusal of Registration (Section 9)

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Section 9 sets out the absolute grounds on which the Registrar must refuse to
register a trademark, regardless of the applicant's claims. These grounds relate to
the intrinsic nature of the mark — marks that, by their very nature, cannot function
as trademarks.
Section 9(1) — Marks devoid of distinctive character:
Marks that consist exclusively of marks or indications that are not distinctive (e.g.,
purely descriptive marks), or of marks that designate the kind, quality, quantity,
intended purpose, geographical origin, or time of production of the goods or
rendering of the services, are refused registration.
Section 9(2) — Marks contrary to public policy:
Marks that are likely to deceive the public or cause confusion; marks comprising or
containing scandalous or obscene matter; marks comprising any matter likely to
hurt the religious susceptibilities of any class or section of citizens; and marks
comprising the shape of goods that results from the nature of the goods themselves,
is necessary to obtain a technical result, or gives substantial value to the goods —
all are refused registration.
Exception — Acquired Distinctiveness:
Under Section 9(1) proviso, if a mark has, through use before the date of application,
acquired a distinctive character (secondary meaning), it may be registered even if it
would ordinarily be refused. This is an important exception for marks that start as
descriptive but become associated in the public mind with a specific source through
long, continuous, and exclusive use.

3.5 Relative Grounds for Refusal of Registration (Section 11)

Relative grounds for refusal arise from the existence of an earlier mark. Even if a
mark is otherwise distinctive, it cannot be registered if it conflicts with an earlier
registered or used mark.
Section 11(1): A trademark shall not be registered if, because it is similar or identical
to an earlier trademark and is registered for similar or identical goods or services,
there is a likelihood of confusion on the part of the public.

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Section 11(2): A trademark shall not be registered if it is identical or similar to an

earlier trademark that is a well-known mark, even for dissimilar goods or services,
if the use of the later mark without due cause would take unfair advantage of or be
detrimental to the distinctive character or repute of the earlier trademark.

3.5.1 Deceptive Similarity

The test for deceptive similarity is whether the average consumer, seeing the marks
together in the marketplace, would be confused as to the origin of the goods. The
assessment is holistic — it considers visual, phonetic (aural), and conceptual
similarity. A mark is deceptively similar to another if it so nearly resembles the other
mark as to be likely to deceive or cause confusion.

Jolen Inc. v. Shoban Lal and Others

Jolen Inc. was the proprietor of the well-known cosmetic brand 'JOLEN' (a cream
bleach). The defendant adopted the mark 'JOLENE' for a similar product. The court
examined whether the two marks were deceptively similar. The court applied the
test of overall impression on an unwary consumer — a consumer of average
intelligence and imperfect recollection — rather than a side-by-side comparison by
an expert. The court found 'JOLEN' and 'JOLENE' to be deceptively similar in terms
of appearance and sound, and granted an injunction. This case illustrates the
phonetic similarity analysis in trademark disputes.

National Bell Co. v. Metal Goods Manufacturing Co. Pvt. Ltd., AIR 1971 SC
898
This Supreme Court case is a leading authority on deceptive similarity. The court
laid down that in assessing the similarity of two marks, the court must consider: (a)
the nature of the marks (word marks, device marks, etc.); (b) the degree of
resemblance between the marks in terms of appearance, phonetics, and meaning;
(c) the nature of the goods (similar, identical, or different); (d) the similarity of the
trade channels; (e) the class of purchasers likely to buy the goods; (f) the likelihood
of purchasers being misled or confused. The court emphasised that it is the overall
impression created on the public that matters, not a minute comparison.

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Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical

Laboratories, AIR 1965 SC 980
This Supreme Court case drew the crucial distinction between trademark
infringement and passing off. The court held that in an action for trademark
infringement, the cause of action is the use by the defendant of the registered
trademark, and it is not necessary to establish that any purchaser was actually
deceived. In contrast, in an action for passing off, the gist of the action is the actual
or likely deception of the public — the defendant is 'passing off' their goods as those
of the plaintiff. Registration is therefore not a prerequisite for a passing off action,
but it is a precondition for an infringement action. The court also elaborated the
test for infringement: whether the defendant's use of the mark would be likely to
mislead the public into thinking that the goods emanate from the plaintiff.

3.6 Trademark Registration Procedure (Sections 18–36)

Registration provides significant advantages: it is prima facie evidence of ownership,
grants exclusive statutory rights, and allows criminal prosecution of infringers. The
registration procedure in India proceeds as follows:
1. Application (Section 18):
The applicant (who may be the owner of the mark or their agent) files an application
with the Trade Marks Registry (TMR) in the appropriate class (India follows the NICE
Classification of 45 classes of goods and services: classes 1-34 for goods and 35-45
for services). The application must be in the prescribed form, accompanied by the
prescribed fee, and must include a representation of the mark.
2. Examination:
A Trademark Examiner at the TMR examines the application against absolute
grounds (Section 9) and relative grounds (Section 11). If the examiner raises
objections, the applicant is given an opportunity to respond.
3. Publication in the Trade Marks Journal:
If the application passes examination, it is published in the Trade Marks Journal.
Any person may oppose the registration within 4 months of publication.
4. Opposition (Section 21):

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Any person may oppose registration by filing a notice of opposition with the
Registrar. If opposition is filed, the applicant may submit a counter-statement. The
Registrar hears both sides and decides whether to grant or refuse registration.
5. Registration (Section 23):
If no opposition is filed or if opposition is decided in the applicant's favour, the mark
is registered and a certificate of registration is issued. The registration is valid for
10 years from the date of filing and is renewable perpetually on payment of the
prescribed fee.

3.7 Passing Off (Section 27)

Passing off is a tort — a civil wrong — that protects the goodwill (commercial
reputation) of unregistered trademarks. While registration provides statutory rights,
passing off provides common law protection based on the goodwill and reputation
a trader has built in their mark through actual use. Even if a mark is not registered,
a trader who has built substantial goodwill in it can sue another for passing off their
goods as those of the plaintiff.
The classic statement of the law of passing off is by Lord Diplock in Erven Warnink
v. J Townend & Sons (The Advocaat Case): the claimant must establish (a) a
misrepresentation by the defendant, (b) made in the course of trade, (c) to
prospective customers or ultimate consumers, (d) which is calculated to injure the
business or goodwill of the claimant, and (e) which causes actual damage to the
claimant's business or goodwill.
The modern simplified formulation (from Lord Oliver in Reckitt & Colman Products
Ltd. v. Borden Inc.) requires the plaintiff to prove: (1) Goodwill — the plaintiff's mark
has acquired a reputation or goodwill associated with their goods or services; (2)
Misrepresentation — the defendant's use of a similar mark amounts to a false
representation that their goods are those of or connected with the plaintiff; and (3)
Damage — the misrepresentation has caused or is likely to cause damage to the
plaintiff's goodwill. These are known as the Classic Trinity of passing off.

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N.R. Dongre and Others v. Whirlpool Corporation and Another, 1996 (16)
PTC 583 (SC)
This landmark Supreme Court case established the doctrine of trans-border
reputation in Indian trademark law. Whirlpool Corporation, the American appliance
giant, had not yet entered the Indian market commercially but had been advertising
its products in international publications like Time and Reader's Digest, which were
widely circulated in India. An Indian company registered 'Whirlpool' as its
trademark in India and sought to sell washing machines under that name.
Whirlpool Corporation sued for passing off, even though it had no registered
trademark in India and no actual trading presence.
The Supreme Court held that Whirlpool's mark had acquired significant goodwill
and reputation in India through the trans-border circulation of international
magazines, and that the use of the identical 'Whirlpool' mark by the Indian company
for similar goods amounted to a misrepresentation capable of deceiving Indian
consumers. The court recognised that in the modern era of globalisation and
international media, a trader can acquire a reputation in a country even without a
physical business presence there. This case is the foundation of the trans-border
reputation doctrine in India.

Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73

Both plaintiffs and defendants were pharmaceutical companies that shared the
'Cadila' name due to a demerger of the original Cadila family business. The plaintiff
used the mark 'Cadila Healthcare' and the defendant used 'Cadila Pharmaceuticals'
for competing pharmaceutical products. The Supreme Court laid down a
comprehensive test for determining deceptive similarity in pharmaceutical
products: (a) the nature of the marks (composite marks are compared as a whole);
(b) the degree of phonetic, visual, and conceptual similarity; (c) the nature of the
goods — pharmaceutical products require stricter vigilance because consumers
dealing with drugs that affect health must be particularly protected from confusion;
(d) the class of purchasers (literacy, education, intelligence, and care expected from
consumers); and (e) the mode of purchase. The court emphasised that in the

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pharmaceutical context, even a marginal possibility of confusion can be fatal

because a patient might consume the wrong drug. The court granted an injunction
against the defendant's use of the 'Cadila' mark.

Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449

The plaintiff manufactured and sold a proprietary Ayurvedic medicine under the
name 'Amritdhara.' The defendant began selling a medicine under the name
'Lakshmandhara.' The plaintiff alleged that 'Lakshmandhara' was deceptively
similar to 'Amritdhara.' The Supreme Court held that while the prefix 'Amrit' (nectar)
was different from 'Lakshman' (a character from the Ramayana), the suffix 'dhara'
(stream/flow) was common to both. The relevant question was whether the two
marks, viewed as a whole, were likely to be confused by the class of purchasers who
would buy the goods. Considering that the goods were cheap Ayurvedic medicines
likely to be purchased by rural consumers with limited literacy, the court found a
likelihood of confusion and upheld the injunction against 'Lakshmandhara.'

3.8 Trademark Infringement (Section 28)

Section 28 grants the proprietor of a registered trademark the exclusive right to use
the trademark in relation to the goods or services for which it is registered. Any
other person who uses an identical or deceptively similar mark in relation to the
same or similar goods or services without authorisation infringes the registered
trademark.

Mahendra and Mahendra Paper Mills Ltd. v. Mahindra and Mahindra Ltd.,
AIR 2002 SC 117
The plaintiff (Mahendra and Mahendra Paper Mills) used the trading name
'Mahendra and Mahendra' for their paper mill business. The defendant (Mahindra
and Mahindra Ltd.) was the iconic automobile manufacturer. The paper mill sued
to restrain the automobile company from using the 'Mahindra and Mahindra' name,
arguing that it was deceptively similar to their registered 'Mahendra and Mahendra'
mark. The Supreme Court held that 'Mahindra' and 'Mahendra' are phonetically
very similar (both are variants of the same name). However, the court found that

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Mahindra and Mahindra had built up an enormous reputation and goodwill in the
automobile sector over many decades, and that customers of automobiles —
persons making a substantial purchase — would exercise sufficient care to
distinguish between the marks. The court emphasised that the fame of the
defendant's mark was a relevant factor and that the plaintiff could not deprive the
defendant of the use of a name that had become synonymous with Indian
automobile manufacturing. This case illustrates the role of goodwill and reputation
in trademark disputes.

Daimler Benz AG v. Hybo Hindustan, AIR 1994 Del 239

Daimler Benz, the manufacturer of Mercedes-Benz luxury automobiles, had
registered its three-pointed star logo as a trademark in India. The defendant, Hybo
Hindustan, was a manufacturer and seller of undergarments who used a three-
pointed star logo remarkably similar to Daimler's trademark on their products.
Daimler sued for trademark infringement, even though undergarments and
automobiles are in completely different product categories.
The Delhi High Court held that the defendant's use of the three-pointed star logo
constituted trademark infringement. The court applied the principle of dilution —
the idea that the unauthorised use of a famous trademark, even for unrelated goods,
diminishes the mark's ability to distinctively identify and distinguish its genuine
owner. The court held that Daimler's three-pointed star was so well-known that any
use of an identical mark, even for unrelated goods, would create an impression of a
connection with Daimler and would dilute the distinctiveness of their mark. This
case is a leading authority on the protection of famous marks from dilution in India.

3.9 Comparative Advertising (Section 29)

Section 29 defines trademark infringement to include the use of the registered mark
in advertising. However, comparative advertising — advertising that compares one's
own product favourably with a competitor's, often naming or displaying the
competitor's trademark — occupies a grey zone in trademark law.

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Pepsi Co. Inc. and Others v. Hindustan Coca Cola Ltd. and Another, (2003)
27 PTC 305 (Del)
This is the landmark case on comparative advertising in Indian trademark law.
Hindustan Coca Cola ran an advertising campaign (the 'Thums Up' and 'Mirinda'
advertisements) that impliedly compared its products with Pepsi's, depicting a boy
rejecting a Pepsi bottle. Pepsi sued for trademark infringement and disparagement.
The Delhi High Court held that comparative advertising is not per se unlawful —
comparative advertising that truthfully compares the qualities of competing
products is a legitimate commercial practice. However, if the advertisement goes
beyond comparison and unfairly disparages, denigrates, or ridicules the
competitor's product, it crosses the line. The test is whether the advertisement
conveys a message that the competitor's product is not merely different but is
actually bad, unsafe, or inferior. The court found that the Coca Cola advertisements
did not cross this line and dismissed Pepsi's suit. This case confirmed that truthful,
non-disparaging comparative advertising is permissible in India.

3.10 Domain Name Disputes

The rise of the internet has created a new frontier for trademark disputes — domain
names. A domain name (e.g., '[Link]') serves as the internet address of a
business, and a domain name that corresponds to a well-known trademark has
enormous commercial value. 'Cybersquatting' — the practice of registering domain
names corresponding to well-known trademarks with the intention of selling them
to the trademark owner or exploiting the goodwill — is a serious problem.
India does not have specific domain name legislation. Courts have applied
trademark law principles — particularly the law of passing off — to domain name
disputes.

Yahoo! Inc. v. Akash Arora and Another, 1999 PTC 201 (Del)
Yahoo! Inc., the well-known internet portal, sued Akash Arora who had registered
the domain name '[Link]' and was operating a website providing internet
services under that name. Yahoo! alleged that the defendant was passing off its

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services as those of Yahoo! and was infringing Yahoo!'s well-known trademark. The
Delhi High Court granted an injunction in Yahoo!'s favour. The court held that
although domain names are addresses rather than marks in the traditional sense,
they function as identifiers of internet businesses in the same way that trademarks
identify physical goods and services. The principles of passing off apply: the use of
'[Link]' by a competing internet services provider would inevitably lead
consumers to believe they were dealing with the authentic Yahoo!, thereby
misappropriating Yahoo!'s enormous goodwill. This case was one of the first Indian
judicial recognitions that domain names are subject to trademark protection.

Tata Sons Ltd. v. Greenpeace International, 2011 (45) PTC 1 (Del)

This case raised the novel question of whether using a famous trademark in a
domain name for the purposes of protest and criticism constitutes trademark
infringement. Greenpeace International had created a website and an online game
called 'Turtle v. TATA' criticising Tata's Mundra port project for its alleged
environmental impact on sea turtles. The website used the Tata name and logo.
Tata Sons sued for trademark infringement. The Delhi High Court held that the use
of the Tata trademark by Greenpeace for the purpose of genuine criticism and
advocacy — not commercial purposes — does not constitute infringement.
Trademark law protects marks from infringement in the context of commercial
trade, not from use in legitimate public discourse and criticism. The court thus
recognised a free speech dimension to trademark law in India.

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UNIT 4: LAW RELATING TO PATENTS

4.1 Introduction to Patent Law

A patent is a legal monopoly granted by the state to an inventor in exchange for full
public disclosure of the invention. The rationale is that society benefits from the
disclosure (which enriches the public stock of technical knowledge and allows
others to improve upon the invention) and the inventor benefits from the exclusive
right to exploit the invention commercially for a fixed period (20 years in India). At
the end of the patent term, the invention falls into the public domain.
The Patents Act, 1970 (as significantly amended in 2005 to comply with TRIPS
obligations) is the principal statute governing patent law in India. India has four
Patent Offices: the Head Office in Kolkata and branch offices in Mumbai, Chennai,
and Delhi. The Act is administered by the Office of the Controller General of Patents,
Designs, and Trade Marks (CGPDTM).

4.2 Definition of 'Invention,' 'Inventive Step,' and 'New Invention'

(Section 2)
'Invention' [Section 2(1)(j)]:
'Invention' means a new product or process involving an inventive step and capable
of industrial application. This three-part definition mirrors the international
patentability criteria: novelty, inventive step (non-obviousness), and industrial
applicability. All three must be present for a patent to be granted.
'Inventive Step' [Section 2(1)(ja)]:
'Inventive step' means a feature of an invention that involves technical advance as
compared to the existing knowledge, or having economic significance, or both, and
that makes the invention not obvious to a person skilled in the art. The critical
question is: would a person with ordinary skill in the relevant technical field,
knowing all that was known at the priority date, have found the invention obvious?
If the answer is yes, the invention lacks an inventive step and cannot be patented.
'New Invention' [Section 2(1)(l)]:

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'New invention' means any invention or technology which has not been anticipated
by publication in any document or used in the country or elsewhere in the world
before the date of filing of the patent application with complete specification — i.e.,
the subject matter has not fallen into the public domain or been anticipated.

4.2.1 Novelty and Prior Art

For an invention to be novel, it must not form part of the 'state of the art' — i.e., all
knowledge that was publicly available anywhere in the world before the priority date
of the patent application. Disclosure of the invention before filing destroys novelty.
Prior art includes: written publications (journal articles, books, patent
specifications); oral disclosures; public use or sale of the invention; and information
published on the internet.

Lallubhai Chakubhai Jarivala v. Chimanlal Chunilal and Co., AIR 1936

Bom 99
This landmark Bombay High Court case established foundational principles of
novelty and prior art in Indian patent law. The court held that 'public user' does not
mean user by the public at large — it means user in a public manner, as opposed
to secret or experimental use. The court further held that the use of an invention
for the purposes of trade, whether by the inventor or by others, would constitute
public use of the invention. A public sale of articles embodying an invention is
strong evidence that the use is commercial and not experimental. If a sale is open
and in the ordinary way of business, it constitutes prior public use that destroys
novelty.
In a related case, Lallubhai Chakubhai v. Shamaldas Sankalchand, AIR 1934 Bom
407, the court held that if an article manufactured under a secret process is of such
a character that anyone examining it can discover the secret of its manufacture,
then the public sale of that article constitutes public use of the process — not just
the article. However, secret experimental use by the inventor himself does not
destroy novelty.

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Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2

SCC 511
This is the Supreme Court of India's foundational judgment on the concept of
inventive step. The plaintiff held a patent for a process for manufacturing steel
utensils. The defendant alleged that the process lacked an inventive step. The
Supreme Court held that 'obviousness' must be strictly and objectively judged. The
test for obviousness is: 'Whether the alleged discovery lies so much out of the track
of what was known before as not naturally to suggest itself to a person thinking on
the subject.' If the invention is the obvious or natural suggestion of what was
previously known, it lacks an inventive step.
The court also adopted the practical test: 'Had the document [prior art] been placed
in the hands of a competent craftsman (or engineer as distinguished from a mere
artisan), endowed with common general knowledge at the priority date, who was
faced with the problem solved by the patentee but without knowledge of the
patented invention, would he have said, this gives me what I want?' If the answer is
yes, the invention is obvious and not patentable.

Windsurfing International Inc. v. EC Commission, 1988 FSR 139

This is an influential European case that elaborated a structured framework for
assessing inventive step (known as the 'Windsurfing/Pozzoli' test). The court
identified four steps for assessing obviousness: (1) Identify the inventive concept of
the claim in question; (2) Identify the 'person skilled in the art' — a competent
craftsman or engineer, not a mere artisan; (3) Identify the relevant common general
knowledge of that person at the priority date; (4) Identify the differences between
the prior art and the inventive concept; and then ask: viewed without any knowledge
of the alleged invention, do those differences constitute steps which would have
been obvious to the person skilled in the art? This structured approach is now
widely adopted in Indian patent practice.

Graham v. John Deere Co., 383 U.S. 1 (1966) — U.S. Supreme Court
This landmark United States Supreme Court case established the foundational
framework for assessing non-obviousness (the US equivalent of inventive step)

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under US patent law. The court identified four primary factors for determining non-
obviousness: (1) the scope and content of the prior art; (2) the differences between
the prior art and the claimed invention; (3) the level of ordinary skill in the pertinent
art; and (4) secondary considerations (commercial success, long-felt but unresolved
need, failure of others). Graham v. John Deere remains the bedrock of obviousness
analysis in US patent law and is studied for comparative purposes in Indian patent
courses.

4.3 Inventions Not Patentable (Section 3)

Section 3 of the Patents Act provides a comprehensive list of subject matter that,
despite possibly being new, inventive, and industrially applicable, is not patentable
in India. This is one of India's most significant legislative deviations from the
standard TRIPS framework (TRIPS allows India to maintain these exclusions under
the flexibility provisions).
Key non-patentable subject matter under Section 3:
(a) An invention that is frivolous or that claims anything obviously contrary to well-
established natural laws. (b) An invention the primary or intended use of which
would be contrary to law or morality or injurious to public health. (c) The mere
discovery of a scientific principle or the formulation of an abstract theory or
discovery of any living thing or non-living substance occurring in nature. (d) 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). (e) A substance
obtained by a mere admixture resulting only in the aggregation of the properties of
the components. (f) The mere arrangement or rearrangement or duplication of
known devices. (g) A method of agriculture or horticulture. (h) Any process for the
medicinal, surgical, curative, prophylactic, diagnostic, therapeutic, or other
treatment of human beings or animals. (i) Plants and animals in whole or any part
thereof, including seeds, varieties, and species, but micro-organisms are not
excluded per se. (j) A mathematical or business method or a computer programme
per se or algorithms. (k) A literary, dramatic, musical, or artistic work or any other

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aesthetic creation including cinematographic works and television productions

(these are protected by copyright). (l) A mere scheme or rule or method of performing
a mental act or method of playing a game. (m) A presentation of information. (n)
Topography of integrated circuits. (o) Traditional knowledge or any aggregation or
duplication of known properties of a traditionally known component or components.
The crucial Section 3(d) — Evergreening and the Novartis Case:
Section 3(d) is one of the most debated provisions of India's patent law. It provides
that the mere discovery of a new form of a known substance which does not result
in the enhancement of the known efficacy of that substance is not patentable. This
provision is aimed at preventing 'evergreening' — the practice of pharmaceutical
companies of making minor modifications to existing drug molecules (creating new
salts, polymorphs, or enantiomers) and filing fresh patent applications to extend
their monopoly beyond the original 20-year term.

Novartis AG v. Union of India and Others, (2013) 6 SCC 1 — Supreme Court

of India
This is one of the most famous and globally significant patent cases in Indian legal
history. Novartis, the Swiss pharmaceutical giant, had developed Imatinib Mesylate
(sold under the brand name 'Gleevec'/'Glivec'), a drug used to treat chronic myeloid
leukaemia (a form of blood cancer). Novartis filed a patent application for the beta
crystalline form of Imatinib Mesylate in India. The Indian Patent Office rejected the
application, relying on Section 3(d), on the ground that the beta crystalline form
was a new form of a known substance (Imatinib, which had been disclosed in an
earlier patent) and that the increased bioavailability of the new form did not amount
to enhanced 'efficacy' within the meaning of Section 3(d).
Novartis challenged this rejection, arguing (among other things) that Section 3(d)
was inconsistent with India's TRIPS obligations. The Supreme Court rejected both
the patent application and the constitutional challenge. The court held that Section
3(d) is not inconsistent with TRIPS because TRIPS allows member countries to
determine their own standards of patentability. The court gave Section 3(d) a strict
interpretation: 'efficacy' in the context of pharmaceutical substances means

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therapeutic efficacy (the ability to produce the desired pharmacological effect), and
not merely bioavailability. Improved bioavailability of a new form of an existing drug,
without demonstrating enhanced therapeutic efficacy, does not overcome the bar of
Section 3(d).
The Novartis decision has become a landmark in global debates about
pharmaceutical patent law, access to medicines, and the right of developing
countries to maintain pro-generic policies. The case ensured that generic
manufacturers in India could continue making affordable versions of many cancer
and other life-saving drugs.

Dimminaco AG v. Controller of Patents and Designs, 2002 PTC 139 (Cal)

This Calcutta High Court case addressed the question of whether a living organism
— specifically a biological process involving a living entity — could be patented in
India. Dimminaco AG, a Swiss company, had invented a process for preparing a
vaccine for a poultry disease (Bursitis). The vaccine included live attenuated virus
as its final product. The Controller of Patents rejected the application on the ground
that a living organism cannot be the subject of a patent.
The Calcutta High Court reversed this decision and held that the mere fact that an
end product of a process is a living organism does not necessarily render the process
unpatentable. The court held that a 'manufacture' within the meaning of the Patents
Act can include a living organism, provided the claimed process is new, involves an
inventive step, and is capable of industrial application. The court noted that India
had no specific exclusion for living organisms per se from patentability (unlike the
exclusion for plants and animals in Section 3(j)), and the fact that the final product
happened to be a living organism did not automatically disqualify the process from
patentability. This remains an important case for biotechnology patent applications.

4.4 Procedure for Acquisition of Patents (Sections 6–11)

4.4.1 Who Can Apply? (Section 6)

An application for a patent may be made by any of the following persons: (a) any
person claiming to be the true and first inventor of the invention; (b) any person

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being the assignee of the person claiming to be the true and first inventor; or (c) the
legal representative of any deceased person who immediately before his death was
entitled to make such an application.

4.4.2 Types of Patent Applications

Ordinary application:
A straightforward application without claiming any priority from a prior application
in India or abroad.
Convention application:
Filed in India within 12 months of filing in a convention country (a country that is
a party to the Paris Convention for the Protection of Industrial Property), claiming
the priority date of the earlier filing.
PCT application:
A Patent Cooperation Treaty (PCT) application, which allows an inventor to file a
single 'international' application designating multiple countries where patent
protection is sought.

4.4.3 Provisional and Complete Specification (Sections 9–11)

A crucial feature of Indian patent procedure is the distinction between provisional

and complete specifications. A provisional specification is a preliminary, basic
description of the invention that is filed to establish an early priority date. The
applicant then has 12 months to file the complete specification, which must
describe the invention in full detail. The complete specification must: (a) fully and
particularly describe the invention and its operation or use; (b) disclose the best
method of performing the invention known to the applicant; (c) end with a claim or
claims defining the scope of the invention; and (d) be accompanied by an abstract.
The quality of the specification — particularly the claims — is critically important.
The claims define exactly what the patent protects. Overly broad claims may be
invalidated; overly narrow claims may leave competitors free to design around them.

4.5 Grant of Patent and Rights Conferred (Sections 43–53)

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Upon successful examination and acceptance of the complete specification, the

patent is granted. The certificate of grant is sealed and dated as of the date of
publication of the application. A patent term of 20 years runs from the date of filing
of the complete specification (Section 53). During this period, the patentee has the
exclusive right to make, use, exercise, sell, or distribute the patented product in
India, or to use or exercise the patented process in India (Section 48).

4.6 Revocation and Surrender of Patents (Sections 63–66)

Surrender (Section 63):
A patentee may offer to surrender their patent at any time by giving notice to the
Controller. Before accepting the surrender, the Controller must advertise the offer
and allow any interested person to oppose the surrender.
Revocation (Section 64):
Any person interested may apply to the Appellate Board (or any defendant in
infringement proceedings may counterclaim before the High Court) for revocation of
the patent on any of the grounds specified in Section 64, including: anticipation of
the invention by prior art, lack of inventive step, non-patentable subject matter,
insufficient disclosure, failure to disclose prior art, or that the patent was obtained
fraudulently.
Revocation by the Controller (Section 66):
The Controller, at the direction of the Central Government, may revoke a patent if
it is determined that the patent or the mode in which it is exercised is mischievous
to the State or is generally prejudicial to the public.

4.7 Compulsory Licensing (Sections 84–94)

Compulsory licensing is one of the most important 'flexibilities' built into the TRIPS
Agreement and the Indian Patents Act. It allows the government or a third party to
use a patented invention without the patent owner's consent, upon payment of
adequate compensation (royalty), when certain conditions are met. Compulsory
licensing serves as a safety valve to prevent patent holders from abusing their
monopoly to the detriment of public health or national interest.

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Grounds for Compulsory Licence (Section 84):

Any person interested may apply to the Controller for a compulsory licence for a
patent after 3 years from the grant of the patent, on any of the following grounds:
(a) the reasonable requirements of the public with respect to the patented invention
have not been satisfied; (b) the patented invention is not available to the public at a
reasonably affordable price; (c) the patented invention is not being worked in the
territory of India on a commercial scale to an adequate extent.

Bayer Corporation v. Union of India and Others, (2013) 57 PTC 517 (Bom)
[Affirmed by Division Bench and Supreme Court]
This was a watershed case in Indian patent law — the first time a compulsory licence
was granted in India under the post-TRIPS patent regime. Bayer Corporation held
a patent for Sorafenib Tosylate, a drug used to treat kidney and liver cancer, sold
under the brand name 'Nexavar.' Bayer was selling the drug at approximately Rs.
2.8 lakh per month — far beyond the means of most Indian patients. Natco Pharma,
an Indian generic manufacturer, applied for a compulsory licence, arguing that the
drug's price was not reasonably affordable and that Bayer was not adequately
working the patent in India (it was importing the drug rather than manufacturing
it domestically).
The Controller of Patents granted Natco a compulsory licence, directing Natco to
pay Bayer a royalty of 6% of net sales. Natco would sell the drug at Rs. 8,880 per
month — approximately 3% of Bayer's price. The Intellectual Property Appellate
Board and the Bombay High Court (Single and Division Bench) upheld the grant.
The Supreme Court dismissed Bayer's appeal. The case established several
important principles: 'working of the patent' in India means manufacturing in India,
not merely importing; 'reasonably affordable price' is assessed relative to the income
levels of the patient population; and TRIPS Article 31 permits compulsory licensing
for purposes of local use.

4.7.1 Government Use (Sections 100 and 102)

Even without a compulsory licence application, the Central Government or any

person authorised by it may use any patented invention for the purposes of the

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government. This government use right requires prior notification to the patentee
and payment of adequate remuneration. In case of national emergency or
circumstances of extreme urgency, the government may invoke this right without
prior notification.

4.8 Infringement of Patents (Sections 104–107A)

What constitutes infringement? (Section 104A read with Section 48):
A patent is infringed when any person, without the licence of the patentee, makes,
uses, offers for sale, sells, or imports the patented product in India (in the case of a
product patent) or uses the patented process or offers for sale products made
directly by the patented process (in the case of a process patent). It is important to
note that under Indian law, patent infringement suits can only be filed after the
patent is granted — not before. However, damages can be claimed retrospectively
from the date of publication of the application.
Defences to infringement claims:
The Bolar Exemption [Section 107A]: The use of a patented invention for the
purpose of developing and submitting information required for regulatory approval
of a pharmaceutical, agricultural, or veterinary product — popularly called the
'regulatory use' exemption or 'Bolar exemption' — is not infringement. This
exemption allows Indian generic manufacturers to begin clinical testing and
regulatory submissions before the patent expires, so that a generic can enter the
market immediately when the patent expires.

F. Hoffmann-La Roche Ltd. and Another v. Cipla Ltd., 2008 (37) PTC 71 (Del)
This case is a landmark in the intersection of patent law and public health in India.
Roche held a patent for Erlotinib (sold under the brand name 'Tarceva'), a cancer
drug used to treat non-small-cell lung cancer. Cipla announced its intention to
launch a generic version of Erlotinib at approximately one-third of Roche's price.
Roche sued for patent infringement and sought an injunction to prevent Cipla from
launching the generic.

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The Delhi High Court's Single Judge declined to grant the interim injunction,
holding that the balance of convenience favoured Cipla. The court reasoned that
preventing Cipla from selling its much cheaper generic would severely harm cancer
patients who could not afford Roche's price, and the public interest in affordable
access to life-saving medicines was a relevant factor in deciding whether to grant
an interim injunction. The court imposed heavy costs on Roche (Rs. 5 lakhs to be
paid to Cipla) but restrained Cipla from exporting the drug to countries where Roche
held a patent. This case is often cited as an example of the courts weighing public
health interests against patent rights in granting interim relief.

Shining Industries v. Shri Krishna Industries, AIR 1975 All 231

In this case, the Allahabad High Court dealt with the infringement of a process
patent. The defendant alleged that the process they used was different from the
patented process. The court examined the claims of the patent closely and held that
the test for infringement is whether the defendant has appropriated 'the substance'
of the patentee's invention. If the defendant has used a process that is, in substance,
the same as the patented process, they cannot escape infringement merely by
making insubstantial variations.

V.B. Mohammed Ibrahim v. Alfred Schafranek, AIR 1961 Ker 208

This case addressed the question of what constitutes 'working' a patent in India.
The court held that for a patentee to be considered as adequately working the patent
in India, they must be using or exercising the invention in India in a commercially
meaningful way. Mere importation of the patented product from abroad, without
any local manufacturing or use of the process, does not constitute 'working' the
patent for the purposes of compulsory licence provisions. This principle later
became central to the Bayer compulsory licence case.

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UNIT 5: LAW RELATING TO DESIGNS

5.1 Introduction to Design Law

Design law protects the aesthetic, visual appearance of industrial products — their
shape, configuration, pattern, ornament, or composition of colours — as applied to
an article by any industrial process. Design protection rewards investment in the
visual aspects of products that make them attractive to consumers without
protecting the functional or technical aspects, which remain the province of patent
law.
The Designs Act, 2000 (which replaced the earlier Designs Act, 1911) is the
governing statute. It was enacted to comply with India's TRIPS obligations and to
provide a modern, robust framework for design protection. The Act is administered
by the Controller General of Patents, Designs, and Trade Marks.

5.2 Definition of 'Design' (Section 2(d))

Section 2(d) defines 'design' as only the features of shape, configuration, pattern,
ornament, or composition of lines or colours applied to any article, whether in two-
dimensional or three-dimensional form or in both forms, by any industrial process
or means, whether manual, mechanical, or chemical, separate or combined, which
in the finished article appeal to and are judged solely by the eye. The definition
explicitly excludes: (i) any mode or principle of construction; and (ii) anything which
is in substance a mere mechanical device.
The critical elements of the definition are: (a) the features must be aesthetic — they
must appeal to the eye; (b) the features must be applied to an article by an industrial
process (designs applied by hand in one-off artistic works are not protected); (c) the
features must not include any functional element — the test is whether the feature
is dictated solely by the function of the article ('must-fit' and 'must-match'
exclusions).

5.3 Registration of Designs (Sections 3–10)

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Unlike copyright, which arises automatically, design protection requires

registration. A design must be registered to receive legal protection under the
Designs Act.
Requirements for registration:
A design is registrable if it is (a) new or original — it has not been disclosed to the
public anywhere in the world (by publication or use) before the date of application;
(b) not previously published in India — prior disclosure in India is an absolute bar;
(c) not a mere mechanical device; (d) not contrary to public order or morality.
Procedure:
The applicant files an application with the Patent Office in the prescribed form,
along with representations (drawings, photographs, or specimens) showing the
design from all relevant views. If the application meets all requirements, the
Controller registers the design and grants a certificate of registration. The initial
registration is valid for 10 years from the date of registration and may be renewed
for a further period of 5 years (total maximum protection: 15 years).

Gammeter v. Controller of Patents and Designs, AIR 1917 Cal 13

This is a landmark early case on the requirement of originality in design law. The
court held that the word 'original' in design law does not mean that the design must
be entirely novel or must never have been used before. A design is 'original' if it is
the result of the exercise of some intellectual effort by the designer — even if it draws
on existing designs, as long as the designer has made an original selection,
adaptation, or combination. A design that is a mere copy of an existing design,
without any creative adaptation, cannot be registered. This is analogous to the 'skill
and judgment' standard for originality in copyright law, though design law's
originality standard is generally considered somewhat lower.

5.4 Copyright in Registered Designs (Sections 11–20)

Upon registration, the registered proprietor is granted the 'copyright' in the design
(the Designs Act uses this term to refer to the exclusive design right, as distinct
from copyright under the Copyright Act). This exclusive right gives the proprietor

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the right to apply the design to any article in the registered class, and to prevent
others from applying the same or a fraudulently imitated design to any article in
that class.

Hello Mineral Water Pvt. Ltd. v. Thermoking California Pure, 2000 PTC 521
(Del)
This case examined the requirement of novelty in design registration. The plaintiff
had registered a design for a water bottle. The defendant challenged the validity of
the registration on the ground that the design was not novel — similar bottle shapes
were already in use. The Delhi High Court held that for a design to be considered
novel, it must be new or original in the sense that it has not been previously used
or published in India or abroad before the date of application. A design that merely
combines existing features in a manner that was already obvious in the trade does
not meet the novelty requirement. The court cancelled the plaintiff's registration.

Glaxo Smithkline Consumer Healthcare Ltd. v. Anchor Health and Beauty

Care Pvt. Ltd., 2004 (28) PTC 1 (Del)
This case involved competing designs for toothpaste tubes. Glaxo had registered a
design for a toothpaste tube with a distinctive striped pattern. Anchor adopted a
similar striped pattern for its tube. The court examined whether Anchor's design
constituted an infringement of Glaxo's registered design. The court held that a
design is novel if it produces a substantially different visual impression on an
informed user. In assessing similarity, the court must look at the overall visual
impression created by the two designs, not just isolated features. The court also
noted the importance of the informed user — a person familiar with the type of
product but not an expert in design — as the reference standard.

5.5 Piracy of Registered Design (Section 22)

Section 22 provides that if any person applies a registered design or a fraudulent or
obvious imitation of a registered design to any article for the purpose of sale without
the licence of the registered proprietor, they are guilty of 'piracy' of the registered
design. 'Fraudulent imitation' refers to a design that is deliberately copied or closely

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similar to the registered design; 'obvious imitation' refers to a design that would be
immediately recognisable as a copy to the eye of an informed user, even if some
differences exist.

Britannia Industries Ltd. v. Sara Lee Bakery, (2000) PTC 299

Britannia registered a design for its iconic 'Tiger' biscuit — the distinctive shape,
embossing, and cookie pattern. Sara Lee launched its own biscuit with a similar
design. The court held that a registered design is infringed if the alleged infringer's
design creates the same overall visual impression as the registered design in the eye
of the informed consumer. The court applied the 'substantial similarity' test and
found that Sara Lee's biscuit design was sufficiently similar to Britannia's registered
design to constitute infringement. The court granted an injunction restraining Sara
Lee from using the infringing design.

Smithkline Beecham Plc. v. Hindustan Lever Ltd., (1999) 19 PTC 439 (Del)
This case involved a dispute over the design of a toothbrush. Smithkline (makers of
Aquafresh) had registered a distinctive toothbrush design. Hindustan Lever
launched a toothbrush with a similar handle design. An important aspect of this
case was the question of whether the claimed design features were 'functional' and
therefore excluded from design protection. The court applied the 'purely functional
exclusion': if a design feature is dictated solely by the need for the article to perform
a technical function, it cannot be protected as a design. Only aesthetic (eye-appeal)
features are protectable. The court examined each disputed feature and assessed
whether it served a functional purpose or was purely ornamental.

5.6 Overlap Between Design and Copyright (Section 15 of the

Copyright Act and the Designs Act)
One of the most complex issues in IP law is the relationship between copyright and
design protection for the visual features of industrial articles. An original artistic
work (e.g., a drawing of a product design) attracts copyright protection
automatically under the Copyright Act. If that design is then applied industrially —
reproduced more than 50 times by an industrial process on articles — the copyright

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in the underlying artistic work is extinguished and the design can thereafter only
be protected under the Designs Act (and only if registered).
Section 15(2) of the Copyright Act, 1957 expressly provides that if an artistic work
(other than a work of architecture) is used as a design registered under the Designs
Act, the copyright in the artistic work ceases to exist to the extent that the work is
used as a design. More critically, Section 15(1) provides that once a design capable
of registration under the Designs Act is used more than 50 times in commercial
exploitation, the copyright in the original artistic work ceases to subsist. This
provision prevents creators from using copyright law (which lasts 60+ years) as an
indefinite substitute for design protection (which is limited to 15 years).

Pranda Jewellery Pvt. Ltd. v. Aarya 24 Kt. and Others, 2018

This case is specifically listed in the course plan for designs and is relevant here
too. The case examined the relationship between copyright in jewellery designs as
artistic works and design protection under the Designs Act. The court discussed
when jewellery designs would lose copyright protection by operation of Section 15
of the Copyright Act (i.e., when applied more than 50 times industrially) and when
they could be protected as original artistic works independently of the Designs Act.
The judgment is important for understanding that the copyright/design interface
requires careful analysis of how many times the artistic design has been applied to
articles industrially.

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UNIT 6: EXPANDING HORIZONS OF INTELLECTUAL

PROPERTY

6.1 Geographical Indications (GIs)

6.1.1 What is a Geographical Indication?

A Geographical Indication (GI) is a sign used on products that have a specific

geographical origin and possess qualities or a reputation that are attributable to
that place of origin. GIs are used for agricultural products (Darjeeling Tea, Alphonso
Mangoes, Basmati Rice), foodstuffs (Feta cheese, Champagne), handicrafts
(Kanchipuram Silk, Pashmina), and industrial products (Solingen cutlery). The
Geographical Indications of Goods (Registration and Protection) Act, 1999 (GI Act)
is the governing statute in India. It came into force on September 15, 2003.

6.1.2 The Essential Elements of a GI

For a product to qualify for GI protection: (a) it must originate in a defined territory;
(b) its quality, reputation, or other characteristic must be essentially attributable to
that geographic origin; and (c) the indication used must identify the product as
originating from that territory. The key insight is that a GI is not merely a trademark
indicating commercial source — it is an indication of geographic origin that carries
qualitative connotations.

6.1.3 Registration of GIs under the GI Act

GI registration is granted to a 'producers' organisation, association, or authority'

representing the producers of the goods, not to individual producers. Registration
is valid for 10 years, renewable indefinitely. Once a GI is registered, it becomes the
right of all producers in the region to use it, and no individual or company can
monopolise it as a private trademark.
Authorised Users:
Individual producers who meet the GI's quality standards and who are in the
designated area may apply to be 'authorised users' of the GI. Authorised users can
use the GI and take action against infringers.

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Famous Indian GIs:

Darjeeling Tea (the first GI registered in India), Kanchipuram Silk, Pashmina,
Basmati Rice, Alphonso Mango, Chanderi Fabric, Mathura Peda, Tirupathi Laddu,
Mysore Silk, Banaras Brocades, Darjeeling Oolong Tea, and many others.

6.1.4 GIs and TRIPS

TRIPS Articles 22–24 deal with GIs. Article 22 requires member countries to provide
legal means for interested parties to prevent the use of any designation that
indicates or suggests that the good in question originates in a geographic area other
than the true place of origin. Article 23 provides enhanced (additional) protection
for GIs for wines and spirits — these are protected against all uses, even if the true
origin is indicated (e.g., 'Champagne-style wine from India' would infringe the
'Champagne' GI). India and other developing countries have lobbied for the
extension of Article 23-level protection to all GI products, including agricultural
goods, but this remains contentious in WTO negotiations.

6.2 Protection of Layout Designs of Integrated Circuits

An integrated circuit (IC) is an electronic circuit consisting of multiple components
(transistors, resistors, capacitors) etched onto a semiconductor chip. The layout
design (topography) of an IC — the three-dimensional arrangement of its
components and their interconnections — represents a significant creative and
economic investment. The Semiconductor Integrated Circuits Layout-Design Act,
2000 (SICLDA) protects these layout designs in India.
The Act was enacted to implement India's obligations under the Washington Treaty
on Intellectual Property in Respect of Integrated Circuits (IPIC Treaty), 1989, which
was subsequently incorporated into TRIPS as Article 35.
Key features of SICLDA protection:
Protection arises upon registration. The layout design must be original — the result
of the creator's own intellectual effort, not commonplace in the industry. Protection
lasts for 10 years from the date of registration or commercial exploitation (whichever
is earlier). Unlike copyright, independent creation of an identical layout design is

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not infringement — the second creator must have actually copied the registered
design. Innocent infringers (those who acquired infringing articles without knowing
they were infringing) are liable only for a reasonable royalty.

6.3 Protection of Plant Varieties and Farmers' Rights

6.3.1 Background

The development of new and improved crop varieties — through selective breeding,
hybridisation, and genetic modification — requires enormous investment of
scientific expertise and financial resources. Plant Variety Protection (PVP) laws are
designed to incentivise such investment by giving breeders exclusive rights over new
plant varieties, while simultaneously protecting the traditional rights of farmers to
save, use, and exchange seeds.

6.3.2 The Protection of Plant Varieties and Farmers' Rights Act, 2001
(PPVFRA)

India's PPVFRA is unique globally because it combines two goals that are often seen
as conflicting: incentivising plant breeders through exclusive rights, and protecting
the traditional rights of farmers. The Act was enacted to implement Article 27.3(b)
of TRIPS, which allows (but does not require) members to exclude plants from patent
protection provided they implement an effective sui generis system — the PPVFRA
is India's sui generis system.
Who can apply for Plant Variety Registration?
A breeder of a new variety; a farmer or group of farmers who have bred or developed
a new variety; a community or village panchayat, tribal community, or local body
representing farmers who have contributed to the conservation of a variety; and any
successor in interest. Importantly, farmers are explicitly included as breeders,
recognising that many indigenous and local varieties have been developed over
generations by farming communities.
Types of registrable varieties:
New varieties (those that are novel, distinct, uniform, and stable — the UPOV 'NDUS'
criteria); Extant varieties (farmer varieties and other cultivated varieties already in

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existence at the time of enactment, which can be registered without meeting the
novelty requirement); Essentially derived varieties (varieties derived from a
protected variety).
Farmers' Rights under the PPVFRA:
The PPVFRA's most distinctive feature is its extensive protection of farmers' rights.
A farmer has the right to: save, use, sow, re-sow, exchange, share, or sell their farm
produce, including seeds of a protected variety, in the same manner as before the
Act (provided they do not sell branded seed of the protected variety). Farmers are
also entitled to claim compensation from breeders if the variety does not perform as
expected under the conditions prevailing in the farmer's area.

6.4 Biodiversity and Traditional Knowledge

6.4.1 The Biological Diversity Act, 2002

India is one of the world's megadiverse countries — it harbours approximately 8%

of the world's total species diversity despite covering only 2.4% of the world's land
area. India's biological resources include thousands of plant and animal species,
many of which have been used in traditional medicine and agriculture for millennia.
The Biological Diversity Act, 2002 (BDA) was enacted to implement India's
obligations under the Convention on Biological Diversity (CBD, 1992), which is
based on three pillars: (a) conservation of biodiversity; (b) sustainable use of
biological resources; and (c) fair and equitable sharing of benefits arising from the
use of biological resources.
Access and Benefit Sharing (ABS):
Under the BDA, any person seeking to access biological resources originating from
India for research, commercial utilisation, or bio-survey must obtain prior approval
from the National Biodiversity Authority (NBA). Any commercial benefits arising
from such use must be equitably shared with the local communities whose
traditional knowledge contributed to the identification and use of the resource. This
framework is known as the Access and Benefit Sharing (ABS) mechanism.

6.4.2 Traditional Knowledge and the IP System

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Traditional Knowledge (TK) refers to the accumulated knowledge, innovations, and

practices of indigenous and local communities that have been developed and refined
over generations. TK encompasses traditional medicine, agricultural practices,
conservation techniques, and cultural expressions. TK is intrinsically collective in
nature and is not 'owned' by any single individual — it is a community heritage.
The IP system, which is designed to protect individual innovation, is poorly suited
to protecting TK. Existing IP laws either provide no protection (because TK fails the
'novelty' requirement — it has existed for generations) or are inappropriate (because
collective ownership is incompatible with individual IP rights). Meanwhile, foreign
companies have been accused of obtaining patents on traditional knowledge without
crediting or compensating the communities that developed it — a practice called
'biopiracy'.
India's Traditional Knowledge Digital Library (TKDL):
In response to biopiracy, the Indian government created the Traditional Knowledge
Digital Library (TKDL) — a database of traditional formulations from Ayurveda,
Unani, and Siddha medicine, documented in a format accessible to patent
examiners worldwide. The TKDL serves as 'prior art' — if a patent application seeks
to monopolise a traditional Indian formulation, the examiner can find it in TKDL
and reject the application on grounds of lack of novelty. India has entered into
agreements with major patent offices (EPO, USPTO, etc.) to allow their examiners to
access TKDL.

6.5 International Treaties on Intellectual Property

6.5.1 The Paris Convention for the Protection of Industrial Property, 1883

The Paris Convention is the oldest and most fundamental multilateral treaty on
industrial property (patents, trademarks, and industrial designs). It has over 175
member countries. Key principles include:
National Treatment:

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Member countries must grant nationals of other member countries the same
protection as they grant to their own nationals. No discrimination based on
nationality is permitted.
Right of Priority:
A person who files a patent application in one member country has a right to claim
that filing date as the priority date for corresponding applications filed in other
member countries within 12 months (6 months for designs and trademarks). This
prevents others from filing in other countries for the same invention during the
priority period.
Independence of Patents:
Patents granted by different countries for the same invention are independent of
each other. Revocation in one country does not affect validity in another.

6.5.2 The Berne Convention for the Protection of Literary and Artistic
Works, 1886

The Berne Convention is the foundational international treaty on copyright. With

181 member countries, it sets minimum standards for copyright protection that all
members must provide. Key principles:
Automatic Protection:
Copyright protection arises automatically upon creation of the work, without any
requirement of registration, formalities, or deposit. This is in contrast to patents
and trademarks, which require registration.
National Treatment:
Authors from member countries are entitled to the same protection in each member
country as that country provides to its own nationals.
Minimum Rights:
The Convention sets minimum standards: the term of protection must be the life of
the author plus at least 50 years (India provides life plus 60 years); moral rights
must be recognised; and member countries must permit certain exceptions (e.g., for
quotation, news reporting, educational use).
Independence of Protection:

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Protection in each member country is independent of protection in the country of

origin. A work that has lost copyright in its country of origin may still be protected
in other member countries.

6.5.3 The Lisbon Agreement for the Protection of Appellations of Origin,

1958

The Lisbon Agreement established an international system for the registration and
protection of appellations of origin — geographical names that identify products as
originating from a particular region whose quality or characteristics are essentially
due to that geographic environment. Unlike the Paris Convention's treatment of GIs,
the Lisbon system provides for mandatory protection in all member countries: if an
appellation is registered under Lisbon, all member countries must protect it against
use by non-entitled producers. India is not a signatory to the Lisbon Agreement.
The Geneva Act of the Lisbon Agreement (2015) extended protection to GIs as
defined by TRIPS (broader than appellations of origin).

6.5.4 The Madrid System for the International Registration of Marks

The Madrid System — consisting of the Madrid Agreement (1891) and the Madrid
Protocol (1989) — provides a convenient and cost-effective way to register a
trademark in multiple countries through a single application. The applicant files
one application with their national trademark office in one language (English,
French, or Spanish), pays one set of fees, and can designate any number of the
130+ member countries where they wish to seek protection. India acceded to the
Madrid Protocol in 2013. The Madrid System is administered by WIPO.

6.5.5 The TRIPS Agreement (Agreement on Trade-Related Aspects of

Intellectual Property Rights), 1994

TRIPS is the most comprehensive multilateral agreement on intellectual property. It

is Annex 1C of the Marrakesh Agreement establishing the World Trade Organisation
(WTO) and is binding on all WTO members (there are 164 WTO members). TRIPS is
the first international agreement to link IP protection to international trade —

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countries that fail to comply with TRIPS standards may face trade sanctions
through the WTO dispute settlement mechanism.
Key features of TRIPS:
Minimum Standards:
TRIPS sets minimum standards of IP protection that all members must provide.
Members may provide higher ('TRIPS-plus') protection but cannot fall below the
TRIPS floor.
National Treatment and MFN Treatment:
Each WTO member must extend to nationals of other members IP protection no less
favourable than it accords to its own nationals (national treatment), and any
advantage granted to nationals of one country must be extended to nationals of all
other members (MFN treatment).
Copyright (Articles 9–14):
TRIPS incorporates the substantive provisions of the Berne Convention (Articles 1–
21) by reference. It adds new obligations including the protection of computer
programmes as literary works, protection of compilations of data, and rental rights
for computer programmes and cinematographic works. The minimum term of
copyright is life plus 50 years.
Trademarks (Articles 15–21):
TRIPS requires protection for any sign capable of distinguishing goods or services
of one undertaking from those of others. The minimum term of registration is 7
years, renewable indefinitely.
GIs (Articles 22–24):
As discussed in Section 6.1.4 above.
Industrial Designs (Articles 25–26):
TRIPS requires protection for independently created industrial designs that are new
or original. Protection must be for at least 10 years.
Patents (Articles 27–34):
TRIPS requires patent protection for all inventions in all fields of technology,
whether products or processes, that are new, involve an inventive step, and are
capable of industrial application. The minimum term is 20 years from the filing date.

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Importantly, TRIPS allows WTO members to exclude from patentability certain

categories, including plants and animals (though not microorganisms) and
essentially biological processes for the production of plants or animals.
TRIPS Flexibilities:
TRIPS contains important 'flexibilities' — provisions that allow member countries to
take measures to protect public health and other public interests. These include
the ability to grant compulsory licences (subject to conditions in Article 31), the
ability to determine when a patentee has abused the patent right, and the right to
promote access to medicines (affirmed by the Doha Declaration on TRIPS and Public
Health, 2001). India has made extensive use of these flexibilities in its Patents Act,
most notably through Section 3(d) and the compulsory licensing provisions.
TRIPS and India:
India joined the WTO in 1995 and was required to amend its patent laws to comply
with TRIPS by 2005 (for product patents in pharmaceutical and agricultural
chemicals). The Patents (Amendment) Act, 2005 introduced product patent
protection for pharmaceuticals and chemical substances — this was the most
significant change, as India had previously (under the Patents Act, 1970) denied
product patents for pharmaceuticals in order to allow generic manufacturing. The
2005 Amendment also introduced Section 3(d) — a uniquely Indian provision
designed to balance the TRIPS compliance requirement with the public health
imperative.

6.6 Summary: Key Points for Examination

Intellectual Property Law, as a field, sits at the intersection of law, economics,
technology, and ethics. To master this subject, it is essential to understand not just
the rules but the reasons behind them — the theories of IP, the policy choices
embedded in each statute, and the real-world consequences of these choices. The
following summary highlights the key points:

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Unit 1 establishes that IP protection must be theoretically justified. The Utilitarian

Theory focuses on incentivising creation through economic rewards; the Natural
Rights Theory grounds IP in the creator's labour and personal effort; the Personhood
Theory emphasises the moral connection between creator and work. None of these
theories alone provides a complete justification — a sophisticated understanding
requires engaging with all three.
Unit 2 (Copyright) teaches that the fundamental tension in copyright law is between
the creator's interest in control and compensation and the public's interest in free
access to knowledge and culture. The idea-expression dichotomy, the fair dealing
provisions, and the limited duration of copyright are all devices for managing this
tension. Case laws like R.G. Anand, Eastern Book Co., Amarnath Sehgal, and
MySpace v. Super Cassettes are essential for understanding how Indian courts
apply copyright principles.
Unit 3 (Trademarks) introduces the concept of distinctiveness as the cornerstone of
trademark protection, the difference between infringement (statutory, available only
to registered mark holders) and passing off (common law, available to all with
goodwill), and the expanding scope of trademark protection to domain names and
the doctrine of dilution. Cadila Healthcare, Whirlpool, Daimler Benz, and Yahoo v.
Akash Arora are the landmark cases.
Unit 4 (Patents) reveals the most complex and technically demanding area of IP law,
where the public policy balance between rewarding inventors and maintaining
access to knowledge is most acutely felt. The Novartis case, the Bayer compulsory
licence, and the Hoffmann-La Roche v. Cipla case represent the most important
Indian contributions to global patent jurisprudence.
Unit 5 (Designs) focuses on the aesthetic aspects of industrial products and the
important overlap with copyright under Section 15 of the Copyright Act — a topic
that will almost certainly appear in examinations.
Unit 6 (Expanding Horizons) introduces the newer and emerging areas of IP law that
reflect the globalisation of trade, the growth of biotechnology, and the increasing
recognition of the importance of traditional and indigenous knowledge systems.

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