SYLLABUS:

Serial Module Name Sub Topics Included

Number
I. Introduction a) Jurisprudential origins and nature of IPR
[LHM] b) Basic concepts of IPR
c) Types of IPR
d) IPR: economic & social development
e) International Norms on IPR
f) India as a party to TRIPS
II. Law relating to a) Meaning & Characteristics of Copyrights
Copyright Act, 1957 b) Concept of originality & publication or idea expression
[LHM] doctrine
c) Subject matter of copyright
d) Ownership of copyright
e) Infringement of copyright
f) Limitations & exceptions of copyright
g) Moral rights
h) Neighbouring rights
i) Assignment & licensing
III. Law relating to a) Meaning and characteristics of patent
Patents act, 1970 b) Subject matter of patent
[SKM] c) Concept of invention
d) Product and process patent
e) Procedure for obtaining patent [complete and provisional
specification]
f) Rights conferred on a patentee
g) Revocation & surrender of patents
h) Infringement of patents
IV. Law relating to Trade a) Meaning and functions of trademark
Marks Act, 1999 b) Essential features
[LHM] c) Service & collective marks
 d) Similar marks, nearly resembling marks and deceptively
similar marks
e) Registration of trade marks
f) Assignment, transmission and licensing
g) Infringement of trade marks
h) Goodwill & passing off
i) Case analysis
V. Law relating to a) Definiton of design
Industrial designs b) Registration of design
[Designs act] c) Rights conferred by registration
[SKM] d) Infringement and legal redress
Semi conductor a) Key concepts: circuit, integrated circuit,
Integrated circuits semiconductors, transitor
layout design act, b) registration of design layout
2000 c) rights conferred by registration
[SKM] d) infringement & legal redress
VI. Law related to GI and a) Meaning of GI
Plant varieties b) Registration
[GI Act, 1999] c) Rights conferred by registration
[LHM] d) Protection of marks registered under TM act
e) Infringement & legal redress
Protection of plant a) Key concepts: Farmer, seed, breeder, variety, farmer’s
varieties and farmers’ variety, extant variety, essential derived variety
rights act, 2001 b) Registration
[LHM] c) Rights conferred by registration
d) Farmers’ rights: rights of communities
e) Compulsory license
 MODULE 1, ORIGIN OF IPR:

 Intellectual property rights are the rights given to persons over the creations of their minds. They
usually give the creator an exclusive right over the use of his/her creation for a certain period of
time.
 As per the WIPO IP can be justified for two reasons
a) One is to give statutory expression to the moral and economic rights of creators in their
creations and the rights of the public in access to those creations.
b) The second is to promote, as a deliberate act of Government policy, creativity and the
dissemination and application of its results and to encourage fair trading which would
contribute to economic and social development.
 Types of IPR:-
Serial Category Definition Purpose Example
No.
1. Patent Grants exclusive rights to To protect new Pharmaceutical
inventors to use, make & sell inventions or drugs, new
their inventions for a processes machines etc
specific period.
Duration: typically 20 years
2. Trademark A sign / design / expression Protects branding Logos, brand
that identifies and names etc
distinguishes the source of
goods or services.
Duration: can last
indefinitely if renewed
3. Copyright Protects original works of Protects original Books, Songs,
authorship. works of Movies etc
Duration: life of the author + authorship
50-70 years (depending on
country)
4. Trade Secret Information that has Protects Recipe of Coca
 economic value from not confidential Cola
being generally known, and business
is subject to reasonable steps information
being taken to keep the same
a secret
5. Industrial Protection for the visual Protects the Car shapes,
Design design of objects that are not aesthetic and non packaging
purely utilitarian functional features desings etc
of a product
6. Geographical A name of sign used on Protects specific Darjeeling Tea
Indications products with a specific products
geographical origin and originating from a
possess qualities with a particular place
reputation due to that origin

 Theoretical Justification for IPR:-

 Utilitarian Theory: this theory is supported by economic principles, as it seeks to maximise
society welfare. According to this theory, protection of IPR is necessary if such protection
causes economically positive output in favour of majority in a society. The utilitarian
philosophy follows in the footsteps of Jeremy Bentham and John Stuart Mill, both of whom
were concerned with the ‘greatest benefit for the greatest number’. While the word
‘utilitarian’ refers to ‘social welfare’, the theory is fundamentally founded on the concept that
industrial development and cultural goods, when combined, may have a positive and
substantial economic influence on society and the people at large. When it comes to
intellectual property rights, the idea suggests that there is a need to promote innovation and
invention.
Criticism of the theory: The theory has been criticised because it has not been able to provide
a balance between private and public interests. Patents, based on an incentive system, are
criticized for creating a monopoly that may hinder public access to knowledge. While
intended to encourage innovation, granting exclusive rights over intangible ideas can restrict
the free flow of information, potentially delaying or preventing subsequent downstream
 innovations. This creates a tension between protecting the inventor's private interests and
promoting the public good of widespread knowledge dissemination.
Serial Type of Justification by utilitarian theory
No. IPR
1. Patents John Stuart Mill believed patent monopolies were a better system
than the old-fashioned, discretionary rewards given by the
government. He and other utilitarians thought patents were a good
idea because they gave inventors a temporary monopoly on their
creations. In return, inventors had to disclose their inventions to the
public. This trade-off was seen as a fair and efficient way to
encourage innovation, benefiting society
2. Trademarks Trademarks are justified because they create a social good. They
help consumers by reducing the cost of searching for a specific
product, i.e. the ‘Search Cost Theory’ and by ensuring consistent
quality, i.e. the ‘Quality Assurance Theory’. For businesses,
trademarks protect their investment in their reputation and brand.
3. Copyrights Copyrights are seen as a useful tool to encourage creativity. By
granting creators exclusive rights to their works for a limited time,
copyright law provides the necessary incentive for them to produce
and share new works. This protection allows authors to earn an
income from their creations, which in turn benefits society by
enriching the public domain with a variety of new works.

 Personality Theory: The theory is penned down mainly by George Wilhelm & Hegel. The
theory contends that intellectual property is the physical manifestation of one’s personhood
and hence the creator must be enabled to protect the same. It provides for moralistic grounds
for protection of intellectual property; in contrast to other economically driven justifications.
All intellectual property is considered to be an extension of the creator’s will and by this
association, such property is a part of the creator’s identity and person. Hegel’s ideology
propagated that the intellectual property system must be devised in a way that more
expressive works get higher protection as compared to inventions such as genetic
 researching. This is because expressive works require a higher degree of personalization,
therefore making it a bigger part of the creator’s personhood.
Example: Harry potter by JK Rowling.
 Labour Theory: The writings of John Locke (‘A person deserves the fruits of his own
labour’, 2nd treatise of government) provide us with the labour theory. According to it, if a
person infuses their labour on commonly held resources (i.e. the assumption that all that is
there in nature is provided by god and it is available to all men as it is held in common for the
benefit of all), they deserve to enjoy natural ownership over the results of their effort. Hence,
a person investing time, money, knowledge and other resources in creating intellectual
property must receive the ownership rights over it as a result of their labour. No one else has
a superior or conflicitng claim.
His “sufficiency proviso” states that: an individual can only appropriate a resource from the
common by mixing their labor with it if ‘there is enough, and as good, left in common for
others’. This prevents a person from claiming exclusive rights to a scarce resource, ensuring
that their actions do not harm others by denying them the means of survival.
Criticism of the theory: Robert Nozick's interpretation of Locke's theory emphasizes that
private property rights are valid only when they do not worsen the situation for others. While
labor can create property, this is only permissible if there are sufficient resources remaining
for everyone else. For Nozick, granting a patent that limits access to a vital resource would be
problematic, as it harms others by restricting their use.
 International Aspects of IPR:-
Serial Name of Type of IP Characteristic Details
No. Instrument concerned
1. Paris Convention Industrial It is one of the first and most important
for the protection property international IP treaties, laying the foundational
of Industrial principles for Industrial property protection
Property (1883) globally. 3 Key principles of the Paris
convention:
a) National Treatment, article 2 (1) : the
domestic as well as foreign investors need to
pass through the same laws
 b) Right of Priority, Article 4A: the one who
files an application for registration of the
patent, in any country (member state of
convention) the applicant’s right of priority
is reserved in each of the member nations
c) Indpendence of protection, Article 4bis: even
if the protection to the invention is nullified
or lapsed or forfeited iin 1 country, the
application filed in another jurisdiction shall
not be affected, and owing to national
treatment, the application will be examined
individually in another jursidiction.

2. Berne Copyrights for The aim is to give the creators the right to
Convention for literary & control & receive payment for their creative
the protection of artistic works works on an international level. Principles
literary and established:
artistic works a) Automatic Protection, Article 5 (2):
(1886) copyright can exist without any formal
registration
b) National Treatment, Article 5 (1): authors
from member countries enjoy the same rights
as nationals in any other member country
c) Independence of Protection, Article 5 (2): the
work is protected irrespective of the fact
whether the said work has been granted
permission in country of origin or not
d) Minimum rights granted, Article 8-14:
includes rights such as translation,
reproduction, public performance,
broadcasting etc
 e) Moral Rights, Article 6bis: right to claim
authorship and to object to distortion or
modification of work, even if rights are sold
to someone else.

[The WCP, i.e. WIPO Copyright Treaty & WPP,

i.e. WIPO Performances and Phonograms Treaty
work together with the Berne Convention to
provide comprehensive protection to copyrights]
3. Agreement on All major Administered by WTO and requires all member
Trade Related forms of IP countries to adopt and enforce minimum
Aspects of standards of IP protection. Key Features include:
Intellectual a) Standards: it sets the minimum standard of
Property Rights protection to IP provided by each member
(TRIPS) (1995) country.
b) Enforcement: it entails domestic legislations,
procedures and remedies provided by
member countries for the enforcement of IP
rights.
c) Dispute settlement: dispute settlement is a
unique feature of World Trade Organization
(“WTO”) which provides for a complex
system of dispute settlement through Dispute
Settlement Understanding (“DSU”)
4. Madrid Trademarks Allows for a single application to register a
Agreement trademark in multiple jurisdictions with
(1891) centralized management from one office.
Essentially, it has simplified the international
trademark registration process, reducing
administrative burdens and costs for businesses
seeking to protect their brands globally.
5. Patent Patents Allows for an international filing system of
Cooperation patents
Treaty, PCT
(1970)
6. Lisbon Geographical Administered by WIPO, establishes a system for
Agreement for Indications the international protection of Appellations of
the protection of Origin and Geographical Indications. Its key
appellations of feature is the single international registration
origin and their that provides protection in all member countries,
International eliminating the need for separate national
Registration, registrations.
(1958)
 MODULE 2, COPYRIGHT

 Meaning: copyright is an exclusive right granted by law for a specified period to the creator of a
work of thought against any form of copying by an unauthorised person. The object of copyright
law is to encourage authors, composers, artists and designers to create original works by
rewarding them with an exclusive right for a limited period. The law also aims at preventing
anyone from reproducing or exploiting another person’s work without authorisation. Copyright,
essentially means the exclusive right to or authorise the doing of the following acts:
Serial No. Category Details
1. In the case of Literary, a) to reproduce the work in any material form, this
Dramatic or Musical includes storing it by electronic means;
work b) to perform the work in public or communicate it
to the public;
c) to make any cinematograph film or sound
recording in respect of that work;
d) to make any translation or adaptation of the work
or to do any of the above acts in respect to any
translation or adaptation of the work.

2. In the case of computer a) Any of the acts specified above

programmes b) To sell or commercially rent any copy of the
computer programme

3. In the case of artistic a) to reproduce the work in any material form,

work including depiction in 3-D of a 2-D work or in 2-
D of a 3-D work;
b) to communicate the work to the public;
c) to include the work in any cinematograph film;
d) to make an adaptation of the work and/or to do
any of the work mentioned above in respect of
the adaptation.
 4. In the case of a) to make a copy of the film, including a
cinematograph film photograph of any images forming part of the
film;
b) to sell or hire any copy of the film;
c) to communicate the film to the public.

5. In the case of sound a) to make any sound recording embodying it;

recordings b) to sell or give on hire or offer for sale any copy of
the sound recording;
c) to communicate the sound recording to the
public.

Thus, copyright in a work is not a single right; it bundles several rights together. For example,
copyright in a book is not merely the right to bring it out in varied editions, but also the right to
serialise it in media, to its dramatic and cinematographic versions, translation, abridgement and
adaptation etc. The bundle of rights that constitutes copyright has two kinds of rights: (a) the
economic rights that take care of the economic interests of the author, and (b) the moral rights,
that is, the rights that concern the status, respect and dignity of the author. The economic rights
deal with issues like permission to publication or reproduction of the work or their adaptation or
translation and the right to assign or license the copyright. The moral rights include the right to
claim and be recognised as the author of your intellectual creation.
 Justification of copyright, through various theoretical foundations:
a) Lockean Theory: Copyright protection is justified by the labor an author invests in creating a
work. The effort expended gives the creator rights over the final product.
b) Personhood theory: When a person works on something, they express their personality in
that subject. As humans own their person, they should also own objects they've worked on as
extensions of their personality.
c) Incentive theory: Intellectual property rights serve as incentives for intellectual work. Mere
copying cannot be the intellectual work this theory aims to encourage.
 Characteristics of Copyrights:
a) Protects the expression of ideas, and not the ideas themselves
b) Requires the work to be in a fixed, tangible form
c) Covers a wide variety of work: books, songs, paintings, films, software, amps, technical
drawings etc
 Concept of Originality & publication or Idea Expression Doctrine: The Sine Qua Non of
copyright, is originality. Originality is a precondition to copyright protection. If the work of a
person is not original but a mere copy of someone else`s original work then copyright protection
cannot be granted to such a person. Thus, for a work to be original it is important that it should
not have been copied from another work. It is currently unclear what standard of originality is
followed in India, but various tests of originality have been developed by the courts:
a) Sweat of the Brow Doctrine: This doctrine recognizes the labor and diligence invested in
creating a work and was initially followed in the U.K. and subsequently by Indian Courts. It
conferred copyright merely because time, energy, skill, and labor were expended, focusing on
protecting the industrious gathering of data even without a creative element. Its emphasis is
on stopping misappropriation rather than protecting authorship, holding that the product of
the labor, skill, and capital of one person must not be appropriated by another.
Serial Name of the Case Judgment
No.
1. University London Press Propounded the ‘sweat of the brow’ test, conferring
Vs. University Tutorial copyright on work merely because time, energy,
Press (1916) skill, and labor were expended (originality of skill
and labor)
2. Macmillan Company The Privy Council approved the ‘sweat of the brow’
Ltd. Vs. Cooper (1924) principle, holding that the product of the labor, skill,
and capital of one man must not be appropriated by
another.
3. Burlington Home A compilation (like a database or client list) was
Shopping Vs. Rajnish involved, and the issue was whether that could be
Chibber (1995) considered a copyrightable work?
The ‘sweat of the brow’ approach was observed and
 it was held that a compilation may be considered a
copyrightable work by virtue of the devotion of time,
labor, and skill in creating the said compilation

b) Modicum of Creativity: This approach, developed by the U.S. Courts in the Feist case, rejects
the "Sweat of the Brow" doctrine. It is a higher threshold requiring a creative element for
originality, focusing on the recognition of authorial dignity. It requires that the work involve
some intellectual effort and a minimal degree of creativity; more than industrious compilation
is needed, specifically requiring selection, organization, or judgment. The standard of
originality is low, but it does exist, as facts themselves are not copyrightable since they do
not owe their origin to an act of authorship.
Name of the Facts Issue Judgment
Case
Feist Rural Telephone Whether Rural's The US Supreme Court
Publications Service Co. (a local white pages rejected the ‘Sweat of the
Vs. Rural company) published an directory was a Brow’ doctrine. The balanced
Telephone alphabetical white copyrighted work approach that was taken by
Service pages directory of its and if Feist had the court, is:
(1991) subscribers (names, infringed it. a) Definition of author: ‘he to
addresses, phone Whether facts whom anything owes its
numbers). Feist (names, addresses, origin; maker; originator’
Publications (a regional phone numbers) are b) Facts Vs. Creation: Facts
directory publisher) copyrightable do not owe their origin to
copied these listings an act of authorship... the
without authorization first person to find and
after Rural refused report a particular fact has
permission not created the fact
c) Minimal Creativity
Selection and
arrangement, ‘so long as
they are made
 independently and entail a
minimal degree of
creativity, are
copyrightable
The court observed that
;Originality is not a stringent
stadard. The standard of
originality is low, but it does
exist’

c) Skill & Judgment Test: This test, derived from the Canadian standard (CCH Canadian v. Law
Society of Upper Canada), represents a middle path in India, providing a workable yet fair
standard that is higher than "sweat of the brow" but not as high as "modicum of creativity". It
requires that the work originate from the author, not be copied, and be the product of the
author's exercise of skill and judgment.
i. Skill means the use of one's knowledge, developed aptitude, or practiced ability.
ii. Judgment means the use of one's capacity for discernment or ability to form an
opinion or evaluation by comparing different possible options.
The exercise of skill and judgment must be substantial and not trivial, going beyond the mere
expenditure of labor and capital or a purely mechanical exercise. While creativity is not
strictly required, a minimal element of creativity often results from the substantial skill and
judgment. The variation from the original must be substantial in nature.
Serial No. Name of the Case Content
1. Eastern Book Facts: The case involved the law publisher
Company & Ors. Vs. Eastern Book Company (EBC), which produces
DB Modak & Anr. the highly reputed law report Supreme Court
(2008) Cases (SCC), claiming copyright infringement
against rival digital publishers, primarily D.B.
Modak, who marketed their own law software on
CD-ROMs. EBC's business model involved
taking the raw, unedited text of Supreme Court
judgments (which are in the public domain and
uncopyrightable) and adding extensive editorial
‘inputs’. These inputs included drafting detailed
Headnotes, preparing Footnotes and Editorial
Notes, standardizing case names and citations,
inserting cross-references, and adding a distinct,
user-friendly paragraph numbering to the
judgments. EBC argued that this considerable
expenditure of ‘skill, labour, and capital’
transformed the raw judgment text into an
“original literary work” protected under the
Copyright Act. The Respondents, however,
allegedly bypassed their own editorial work and
copied verbatim not only EBC’s Headnotes (a
claim they conceded at one stage) but also the
entire copy-edited text, including EBC's specific
formatting, numbering, and cross-references,
leading EBC to seek an injunction against the
digital piracy of their intellectual effort.
Issues, are as follows:
a) Whether EBC's copy-edited version of
judgments was eligible for copyright
protection.
b) Whether individual elements added by EBC
sufficed for copyright over the entire work.
c) Whether the Defendants infringed EBC's
copyrights
Judgment: The Court rejected the ‘sweat of the
brow’ doctrine. It adopted the Canadian test of
‘skill and judgement’. It held that a derivative
work requires the author's independent skill
 (which is substantial, not trivial) and judgment
(use of resources beyond mere labor and capital)
{essentially, the derivative work needs to be more
than just a copy of the original}. The work of the
law reporter in providing paragraph numbering,
internal referencing, brief descriptions, formatting,
and head noting required effective and substantial
skill and exercise of judgment, establishing a
minimal element of creativity. Judgment was in
favor of EBC, prohibiting the copying of their
paragraphs for internal referencing and their views
on dissent/concurring opinion.
{The Court held that EBC did possess copyright
in certain selective editorial inputs and that D.B.
Modak was guilty of infringement only regarding
those specific elements. The copyright protection
was granted only to those additions which
required the application of independent
intellectual effort by the editors}
2. RG Anand Vs. Delux Facts: The case is built upon the classic conflict
Films (1978) between a creator and a producer: Playwright
R.G. Anand, the appellant, owned the copyright to
his popular play, ‘Hum Hindustani’, which
centered on the theme of ‘provincialism’. The
pivotal factual claim was that Anand had read out
and explained the entire play to the respondents
(Delux Films/Mohan Sehgal) who were
contemplating a film adaptation, thereby
establishing access to the work. When the
respondents subsequently released their film,
‘New Delhi’. which also dramatically tackled the
exact same subject of provincialism, Anand sued,
alleging copyright piracy—the unauthorized
copying of his dramatic work. Crucially, both the
Trial Court and the High Court examined the
play's script versus the film's narrative and,
despite noting similarities stemming from the
shared theme, ultimately delivered concurrent
findings of fact that the differences in the
treatment, plot development, and sequence were
so material that no substantial copying had
occurred, leading to the case's final appeal before
the Supreme Court.
Issues: The primary legal question before the
Supreme Court was whether the Respondents'
cinematograph film ‘New Delhi’ constituted an
infringement of the Appellant's copyright in his
dramatic work, the play ‘Hum Hindustan’'. This
necessitated the formulation and application of
clear principles to assess copyright violation,
particularly concerning the overlap between two
works that share a common idea, theme, or
subject matter (provincialism), to determine if the
subsequent work had copied the expression of the
original.
Judgment: The Supreme Court upheld the lower
court's dismissal, formalizing the seminal eight
propositions that established the bedrock of Indian
copyright law on infringement. The core principle
cemented by the judgment is the “Idea-Expression
Dichotom”': Copyright protects the expression,
not the idea. An author cannot claim monopoly
 over a theme or subject matter (the idea of
provincialism); protection is granted only to the
specific form, manner, arrangement, and sequence
in which that idea is articulated. The decisive
measure established is the ‘Dominant Impression’
or ‘Lay Observer Test’: infringement only occurs
if the average person, upon seeing the alleged
copy (the film), receives an unmistakable
impression that it is a copy of the original work
(the play). Since the dissimilarities in the film's
second half, characterization, and climax were
found to be material and prevented the film from
being a substitute for the play, the Court held that
no substantial and unfair use of the plaintiff's
protected expression had taken place.
3. Dr. Reckeweg and The Delhi High Court completely rejected the
Co. Gmbh. and Anr. doctrine of ‘sweat of the brow’. Reliance was
Vs. Adven Biotech placed on the Eastern Book Company case.
Pvt. Ltd. (2007)
4. Syndicate of Press of Followed the Eastern Book Company ratio,
the University of holding that the requirement of skill and
Cambridge on behalf judgement along with the minimal standard of
of the Chancellor creativity was essential to establish a copyright
Masters and School v.
B.D. Bhandari &
Anr. (2009)

 India’s Journey in the Standard of Originality: India's approach to originality has undergone
an evolution, moving away from the purely labor-centric ‘Sweat of the Brow’ doctrine
towards a balanced standard. Initially, Indian courts followed the ‘Sweat of the Brow’ Test,
which was developed in the U.K. and protected works simply based on the time, labor, and
 capital invested, as seen in cases like Burlington Home Shopping v Rajnish Chibber. This
focus on industrious gathering, rather than creativity, was ultimately challenged as it risked
monopolizing facts and common ideas. The major shift occurred with the Supreme Court
case of Eastern Book Company v. D.B. Modak, which explicitly rejected the ‘Sweat of the
Brow’ doctrine as being too low a standard. The Court recognized that while the US-
developed ‘Modicum of Creativity’ Test was appropriate in principle, it was too high a
standard for the Indian context and instead adopted the Canadian ‘Skill and Judgement’ Test.
This established a modern balance where the standard requires the application of substantial
skill and judgment that goes beyond trivial labor or mechanical copying, thereby ensuring a
minimal element of creativity without demanding novelty. This practical, midway approach
is now the dominant standard in India, as reaffirmed in a plethora of cases. {Originality of
Expression, Not Idea: A work does not need to involve novel expression of thought; all that is
required is that the expression should not be copied from another work. As established in
R.G. Anand v. Delux Films, there can be no copyright in an idea or subject matter, but only
in the arrangement and expression of such idea}

 Subject matter of copyright:

Serial No. Name of the Work Explanation
1. Literary Work This category includes computer programs and
compilations, such as databases. Protection covers all
works expressed in print or writing, including
symbols and numerals, but excludes dramatic and
musical works. Examples of copyrightable literary
works include abridgements, new editions, law
 reports, lectures fixed in written form, and letters.
Mere extracts without sufficient skill are not
copyrightable.
2. Musical Work This consists of music, including graphical notation
of music. It specifically excludes any words or
actions intended to be sung, spoken, or performed
with the music. The requirement of fixation in
graphical notation has been removed, covering all
forms of music regardless of fixation.
3. Dramatic Work These works include any piece for recitation,
choreographic work, or entertainment in a dumb
show, or scenic arrangement, provided the form is
fixed in writing or otherwise. It must be a work of
action, with or without words or music, capable of
public performance, and must have a story or
narrative with a written description of the acts.
Cinematographic films are excluded from this
definition.
4. Photographs Photographic works include photo lithographs and
works produced by processes analogous to
photography. They must be original to qualify for
protection, and parts of cinematographic films are
excluded. A photograph of an existing photograph is
not considered original.
5. Cinematographic Work This is defined as any work of visual recording on
any medium produced through a process from which
a moving image may be produced by any means, and
includes any accompanying sound recording. These
works receive distinct copyright protection separate
from the dramatic, musical, or literary works they
incorporate. Copyright does not subsist if a
 substantial part of the film infringes copyright in any
other work.
6. Sound Recordings This means the recording of sounds on any medium
from which the original sound may be reproduced,
regardless of the medium or method used for
reproduction. Copyright does not subsist if a record
is made by infringing copyright in a literary,
dramatic, or musical work.

 Ownership & Authorship of copyright: Authorship relates to the physical and intellectual
creation of the work, while Ownership dictates who holds the exclusive economic rights to
commercially exploit that work. The law protects the material form of expression of an idea, not
the idea itself. Therefore, the person who merely suggests a brilliant idea is not the Author or
Owner; the one who gives it a tangible, fixed form using sufficient labour, skill, and judgment is
the Author. Key Analogy: Ownership of a book's physical copy is separate from the Ownership
of the copyright subsisting in its content. Now, who is the author of what, as per section 2(d) of
the act:
Serial No. Type of work Statutory Author
1. Literary or Dramatic Work The author of the work (writer / playwright)
2. Musical Work The composer
3. Artistic work (Non The Artist / Painter / Sculptor
Photographer)
4. Photograph The person who takes the photograph i.e. the
photographer
5. Cinematograph film / The producer
Sound Recording
6. Computer generated work The perosn who causes the work to be created
(example, the person directing the AI)

 Ownership, The General Rule: The fundamental principle, or the Golden Rule of
ownership, is laid down in Section 17 of the Act, which states that The Author of the work
shall be the First Owner of the copyright. The Author initially holds the bundle of exclusive
rights (Economic Rights and Moral Rights) granted by copyright law. However, this general
rule is heavily qualified by statutory exceptions, collectively known as the ‘Work for Hire’
doctrine:
a) Contract of Service (Employer as 1st owner): This is a master-servant relationship where
the employee (author) is controlled by the employer regarding what to do and how to do
it. The work is integral to the business. If the work is created by an author in the course of
his employment or under such a contract, the employer becomes the first owner.
b) Contract for Service (author as 1st owner): This is an independent contractor relationship
where the person is hired to do a specific work but is left free to decide on the course of
action. The work is accessory, not integral, to the business. In this case, the Author
remains the First Owner of the copyright.
c) Commissioned Works: Where a person commissions (requests) and pays a valuable
consideration for the creation of certain works, the commissioning person is the first
owner. Applicable Works: Photograph, painting, portrait, engraving, or a cinematograph
film
d) Works for Newspapers & Periodicals: If the work is made by an author under a service
contract for publication in a newspaper, magazine, or periodical, the employer
(proprietor) is the first owner. Limitation: This ownership is only for the purpose of its
publication/reproduction in that specific format (newspaper/periodical). Author's
Residuary Rights: For all other purposes (e.g., book publication, dramatisation, etc.), the
Author remains the first owner, unless the contract explicitly states otherwise.
e) Cinematograph films & Sound Recordings: The Producer is statutorily defined as the
Author and First Owner of the film/sound recording itself. Highlighted Issue: The rights
of the composer/lyricist (Author of the underlying musical/literary work) can be defeated
if their work is created for consideration or under a contract of service for inclusion in a
film. Judicial precedent (e.g., IPRS v. Eastern India Motion Pictures Association) held the
film producer is the first owner, and authors of songs/lyrics do not have separate rights in
this context. However, there is a highlighted need from the courts (Bombay High Court)
to ensure authors of songs/lyrics in films receive royalty for their commercial
exploitation.
 f) Government Work: in the case of government work, the government, in the absence of
any agreement to the contrary, will be the first owner of the copyright.
g) Work made on behalf of a public undertaking: in the case of work made or first published
by or under the direction or control of any public undertaking such public undertaking
will, in the absence of any agreement to the contrary will be the first owner of copyright
therein.
h) Works of Certain International organisations: in such cases the international
organisations concerned will be the first owner of the copyright.
 Infringement of copyright: Copyright infringement is deemed to have occurred under Section 51
of the Act when a person exercises the exclusive rights of the copyright owner without obtaining
a license, or in contravention of a license's conditions. These acts are statutorily divided into
Primary and Secondary infringement:
a) Primary Infringement u/s 51 (a): Exclusive Rights Violation (Sec. 51(a)(i)): Doing anything
the exclusive right to do which is conferred upon the owner of the copyright by the Act &
Permitting Use for Profit (Sec. 51(a)(ii)): Permitting for profit any place to be used for the
communication of the work to the public, where such communication constitutes an
infringement, unless the person was not aware and had no reasonable grounds for believing it
would be an infringement
b) Secondary Infringement, u/s 51 (b): This concerns the commercial dealing of infringing
copies of the work, often referred to as indirect infringement, and includes the following acts
by any person: Making for sale or hire, or selling/letting for hire, or displaying/offering for
sale or hire by way of trade; Distributing either for the purpose of trade or to such an extent
as to affect prejudicially the owner of the copyright; Exhibiting in public by way of trade;
Importing into India any infringing copies of the work
 Modes of Copying: Infringement is established by the act of "copying," which is defined as
that which "comes so near to the original as to give every person seeing it the idea created by
the original". The viewer or reader is regarded as the primary judge of whether the work is
copied.
a) Direct Copying: This occurs when there is a direct or indirect use of portions of the
copyrighted work. Since usually only extracts are copied and not the whole work,
 infringement is determined by assessing whether the observer gets the impression that the
act was a copy of the original.
b) Indirect Copying (Adaptation): This mode involves altering the form of the work while
retaining the essence of the original. Examples include converting a two-dimensional
drawing into a three-dimensional object or changing a literary work (a novel) into a
dramatic work (a play or ballet). Copyright law ensures that adaptations also require
permission from the original creator.
c) Subconscious Copying: This unique concept involves a person copying a work with
bonafide intentions, having coincidentally reproduced a work they had previously seen or
heard but forgotten, believing it to be their own original creation
 Substantial Similarity: Infringement does not require that the whole work be copied;
reproduction of a substantial part of the work is sufficient. Substantiality is generally assessed
based on the quality (importance) rather than the quantity (amount) of the copied material, in
the context of the copyrighted work as a whole.
a) Qualitative Test (The 'Lay Observer' Test): The standard is the perception of the
common person or ‘lay observer’. A work is substantially similar if the observer
receives the same or similar impression from the allegedly infringing work as from the
original. The test asks whether the allegedly infringing work is so similar to the
copyrighted work that an ordinary reasonable person would conclude that one was
copied from the other.
b) Distinction from Idea: The similarity must be in the expression of the idea, not merely
the idea itself. If the common features are unprotectable ideas, public domain elements,
or scènes à faire (standard elements necessary to the idea), there is no infringement. The
court must filter out these unprotectable elements before comparing the remaining,
original expression.
 Concept of Fair dealing & Case Analysis: The Copyright Act provides specific exceptions to
the exclusive rights of the owner, grouped under the umbrella of Fair Dealing {Section 52},
which permit the use of copyrighted material without securing a license in certain
circumstances, such as for private use, research, criticism, review, or reporting current events.
Name of the Case Facts of the Case Issues of the Case Judgment
The Chancellor, The petitioners, a The central legal The court ultimately
Masters & Scholars group of issues before the ruled that the act of
of the University of international court were whether preparing and
Oxford v. academic publishers, the unauthorized distributing these
Rameshwari filed a suit against reproduction and sale course packs did not
Photocopy Service Rameshwari of excerpts from constitute copyright
(2016) Photocopy Service copyrighted infringement. The
(RPS), a commercial textbooks by a term "in the course of
photocopy shop commercial entity, instruction" was
operating under a even when licensed interpreted broadly to
license from Delhi by a university and encompass the entire
University. RPS was aimed at students for teaching and learning
engaged in making syllabus-based study, process, including
and selling course amounted to the preparation of
packs to university copyright study materials by
students. These infringement. the teacher and the
course packs Specifically, the court student's study before
comprised had to determine the or after lectures. The
photocopies of proper scope and court reasoned that
relevant, albeit interpretation of the since the copies were
substantial, excerpts term "in the course of of syllabus-relevant
or portions of the instruction" as portions and intended
publishers’ stipulated in the Fair strictly for the
textbooks, tailored to Dealing exception students' educational
the specific under purposes, the activity
18
university syllabus. $\text{Section fell within the scope
The publishers 52(1)(i)}$ of the of the statutory Fair
contended that this Indian Copyright Act. Dealing exception.
commercial activity This judgment was
constituted copyright explicitly limited to
infringement under the reproduction of
Section 51. portions for course
 packs and did not
grant permission for
the photocopying of
an entire book.

 Remedies of Infringement: Remedies for copyright infringement are the legal means available
to a copyright owner to enforce and protect their exclusive rights against unauthorized use of
their work. They ensure that infringement is not only prevented but also adequately
compensated. The Copyright Act, 1957 provides for both civil and criminal remedies, allowing
rights holders to seek injunctions, damages, delivery-up of infringing copies, and even criminal
prosecution in cases of willful infringement.
 Civil Remedies: Section 55 of the Copyright Act provides that where copyright in any work is
infringed, the owner is entitled to remedies such as injunctions, damages, accounts of profits,
and other equitable reliefs. However, if the defendant proves lack of knowledge regarding
subsistence of copyright, only injunction and reasonable profit sharing may be awarded. The
section aligns with TRIPS standards and ensures proportional protection. The plaintiff must
establish ownership (often proved through registration) to seek such reliefs. Civil remedies
aim primarily to stop infringement and compensate the copyright owner adequately.
Serial No. Kind or Type Content
1. Who May Sue Persons entitled to sue include (i) authors as first
owners, (ii) joint owners, (iii) producers/employers as
first owners, (iv) valid assignees, (v) exclusive
licensees, and (vi) copyright societies. Section 56
allows each separate right holder to sue independently.
Exclusive licensees must implead the copyright owner
as defendant under Section 61. However, as held in
Phonographic Performance Ltd. v. Hotel Gold
Regency, copyright societies may sue even without
exclusive license status, forming an exception to this
rule.
2. Who May be Sued Both primary and secondary infringers can be sued.
 Courts also recognise unidentified infringers under
John Doe or Ashok Kumar orders, allowing
injunctions against unknown persons engaged in
piracy. Such orders originated in Billy Joel v. Various
John Does (U.S.) and were first used in India in Tej
Television Ltd. v. Rajan Mandal, where the Delhi
High Court allowed ex parte relief to curb large-scale
unauthorized cable broadcasts. These orders uphold
the principle ubi jus ibi remedium — where there is a
wrong, there must be a remedy.
3. John Doe Orders John Doe orders allow copyright owners to act swiftly
against unidentified infringers. Courts issue ex parte
injunctions authorizing commissioners to seize
infringing goods and serve documents on defendants
when identified. The Delhi High Court in Luxottica
S.R.L. v. Munny laid procedural safeguards —
commissioners must inventory seized goods, permit
their temporary return (suprdari), and allow
defendants to contest the injunction. These orders are
exceptional remedies to preserve evidence and prevent
destruction of infringing material, used only in
rampant piracy cases.
4. Jurisdiction, or Section 62 of the Copyright Act provides that
where to Sue infringement suits may be filed in the district court
having jurisdiction where the plaintiff resides, carries
on business, or works for gain. This is in addition to
general CPC provisions permitting filing where the
defendant resides or where the cause of action arises.
The section thus provides an additional forum
favouring the copyright owner and easing enforcement
of rights.
 5. Groundless This section protects individuals from baseless threats
Threats, Section 60 of legal action by alleged copyright owners. If a
person is wrongfully threatened with proceedings,
they may sue for a declaration that no infringement
occurred, seek an injunction to stop such threats, and
claim damages. However, if the threatening party
initiates a genuine infringement action, the Section 60
suit becomes infructuous. As held in Super Cassette
Industries Ltd. v. Bathla Cassettes (P) Ltd., the
purpose is to prevent abuse of monopoly rights
through intimidation.
6. Delivery up & Section 58 deems all infringing copies and plates to be
Anton Piller the property of the copyright owner, who can seek
Orders possession or recovery. Courts issue Anton Piller
orders — ex parte search orders — to preserve
evidence and prevent destruction of infringing
material. In J.K. Rowling v. City Publication, the
Delhi High Court ordered delivery-up of pirated Harry
Potter books and equipment used for duplication.
Similarly, Autodesk Inc. v. A.V.T. Shankardass laid
guidelines for appointing commissioners in software
piracy cases, emphasizing surprise inspections,
preservation of evidence, and minimal disruption to
the defendant’s business.

 Criminal Remedies: Criminal liability under Section 63 applies to those who knowingly
infringe or abet infringement. Punishment ranges from six months to three years’
imprisonment and fines from ₹50,000 to ₹2,00,000. For non-commercial infringements,
courts may impose lesser sentences. Section 63A enhances punishment for repeat offenders.
Section 63B penalizes knowing use of infringing computer programs. Section 65 targets
possession or making of plates used for infringing copies. The Supreme Court in State of A.P.
 v. Nagoti Venkataramana upheld prosecution even without the owner’s complaint,
recognizing public interest in curbing video piracy. Section 64 empowers police to seize
infringing copies without warrant, and courts may order their delivery-up post-seizure.
 Difference between Civil and Criminal remedies:
Basis Civil Remedies Criminal Remedies
Legal Basis Sections 55-62 Sections 63-65
Nature Compensatory and Preventive Punitive and Deterrent
Relief Injunctions, Damages, Imprisonment, fines, seizure, forfeiture,
accounts, delivery up, destruction
groundless threat suits
Purpose Protect rights & compensate Punish willful infringers and deter piracy
losses
Authority Civil courts Police and criminal courts

 Limitations & exceptions of copyright: According to section 13 (3) of the act, there are certain
limitations to copyright, i.e. copyright does not susbsist in:
a) Cinematograph Films: if a substantial part infringes someone else’s copyright. o Example: A
movie that copies scenes from another film without permission.
b) Sound recordings that infringe the underlying literary, dramatic, or musical work. o Example:
Recording a song without permission from the composer.
c) Architectural works: Only the artistic design is protected, not construction methods or
processes.
d) Copyright in a film or sound recording does not override the copyright in the original work.
Example: A movie based on a novel → the film has copyright, but the novel’s copyright
remains with the author
Exceptions of copyright, u/s 52:
Serial No. Exception Category One Liner Description
1. Fair Dealing Using a work fairly for personal research or private
study
2. Criticism & Review Using a work fairly for the purpose of criticism &
 review of that work or another work
3. Current Events Using the work for reporting current events in
Newspapers, broadcasts or films
4. Judicial Use Reproduction of the work for the purpose of a judicial
proceeding or its report
5. Educational Use Reproduction by a teacher or pupil in the course of
instruction or as part of an examination.
6. Non Profit Performance by staff and students in an educational
Performance institution to a limited, associated audience.
7. Public Art Making a painting, drawing, or photograph of a
sculpture or other artistic work permanently located in a
public place.
8. Incidental Inclusion Inclusion of an artistic work in a film or broadcast if it
is only incidental or by way of background.
9. Cover Versions Making a sound recording (cover version) after paying
prescribed statutory royalties and giving notice.
10. Library Archival Public libraries making a limited number of copies of a
book that is not available for sale in India.
11. Computer Programs Making copies of a computer program for backup,
interoperability, or personal non-commercial use.
12. Official Documents Reproduction or publication of official government
documents, Gazette matters, or court judgments.
13. Religious Ceremony Performance of a work during a bona fide religious
ceremony or an official government ceremony.

 Moral & Economic rights:

 Moral rights, u/s 57 of the act are personal rights that protect the non-economic interests of
creators. These rights are concerned with the personal and reputational connection between
the creator and their work. The term ‘moral rights’ is a translation of the French term ‘droit
moral’ but does not refer to ‘morals’ as dictated in a religious order, rather it refers to the
ability of an author to control the eventual fate of his works. These rights allow the author to
take certain actions to preserve the personal link between himself and his work.
Serial No. Kind / Type of Moral Description
Right
1. Right of Paternity or The right to paternity is essentially the right of an
Attribution author to claim authorship of his work and have it
attributed to him. It is the right of an author to be
identified whenever a work is published, performed
or broadcast. This means authors, scriptwriters,
playwrights, painters, sculptors, illustrators and
translators must be properly credited for their works.
2. Right of Integrity The law grants right to the author to object to any
distortion, mutilation, modification or other act
which is prejudicial to his honour or reputation. The
expression ‘other act’ is ejusdem generis with the
words ‘distortion’ and ‘mutilation’. The failure to
display a work at all and the failure to display it to
the satisfaction of its author are not considered to be
an infringement of the right of integrity.

Name of the Facts Issues Judgment

Case
Amar Nath In 1957, the Union of India 1. Did the The court held that
Sehgal Vs. commissioned Amar Nath destruction / the destruction that
UOI (1957) Sehgal to create a large removal of the rendered the work
bronze mural (140ft. span, mural constitute imperfect was indeed
40ft. sweep) for Vigyan mutilation of the mutilation and
Bhawan, New Delhi. The plaintiff's work? prejudicial to the
mural took five years and 2. Did the author's reputation.
was displayed until 1979 mutilation The court granted an
when the building prejudice the injunction against the
 underwent renovation. The author's Union of India,
mural was pulled down and reputation? directing it to return
broken into parts for 3. Did the Union of the remains of the
removal, and the remains India, as the mural to Mr. Sehgal
were stored. owner by and transfer all rights
assignment, have over the mural back
the right to to him, granting him
consign the work the absolute right to
to storage? re-recreate and sell it.
The court also
awarded damages of
five lac rupees.

 Economic Rights are rights that allow creators to financially benefit from their works by
controlling how their creations are used. Economic rights cover activities such as
reproduction, distribution, and public performance, ensuring that creators can earn a living
from their work.
Serial No. Kind or type of Description
economic right
1. Right of Reproduction Is the most fundamental of the economic rights and
is available to all works protected by copyright. This
right grants the owner the exclusive authority to
prevent any person from making one or more copies
of the work, or a substantial part of it, in any material
form, which includes sound and film recording,
without obtaining the copyright owner's permission.
This right forms the legal basis for commercial
exploitation acts like a publisher printing books or a
producer cutting music CDs. Reproduction does not
require an exact copy; it includes any substantial use
of the original work's copyrighted features that might
 be considered an infringement
2. Right of Distribution The owner of copyright holds an exclusive right over
the initial distribution of copies of their work, a right
that flows logically from the right of reproduction.
Like the right of reproduction, the right of
distribution is available for all works subject to
copyright protection. However, this right is generally
considered 'exhausted' after the first sale of a
particular copy. Consequently, the purchaser is free
to resell or otherwise dispose of the copy they
bought—for example, a person can sell a second-
hand book without the copyright owner's consent
3. Rental Right stems from the right of distribution and means
making a work available for use for a limited period
for direct or indirect economic or commercial
advantage. This right is a relatively new addition and
marks a departure from the old exhaustion doctrine,
necessitated by the ease with which certain works
can be copied illegally. It is currently made available
only to three specific classes of works: computer
programmes, sound recordings, and cinematograph
films. A person who has lawfully purchased a copy
of these specific works requires the copyright
owner's permission for commercial rental to the
public, and the owner may collect royalties from
third parties engaged in such commercial rental.
4. Right of public This exclusive right allows the copyright owner to
performance authorize the public performance of their work, a
matter of basic importance, especially for dramatic,
dramatico-musical, or musical works created
primarily for performance. The right is available for
 literary, dramatic, and musical works, entitling the
owner to authorize live performances such as a play
or an orchestra performance. A performance is
deemed "public" if it occurs at a place where the
public is or can be present, or at a place not open to
the public but where a substantial number of persons
outside the normal family and close friends circle is
present. Private performance, generally before an
essentially domestic circle, has no restriction
5. Right to communicate is applicable to all categories of protected works.
the work to the public "Communication to the public" is defined as making
any work or performance available for being seen,
heard, or otherwise enjoyed by the public directly or
by any means of display or diffusion other than by
issuing copies of the work. The work is considered
communicated to the public simply if it is accessible
to the public, even if no member of the public
actually sees or hears it—for instance, a cable
operator transmitting a film that no one watches.
This right also includes the exclusive authority to
authorize the broadcasting of a work by radio,
television, or its communication by wire or wireless
means
6. Right of adaptation & This right pertains to the preparation of new works
translation based upon an already existing work. The Right of
Adaptation is available for literary, dramatic,
musical, and artistic works. Adaptation involves
various acts, such as converting a dramatic work into
a non-dramatic work, converting a literary or artistic
work into a dramatic work, abridgement, or any
rearrangement or alteration of the work. Similarly,
 the owner of a literary, dramatic, or musical work
has the exclusive Right of Translation, which is the
expression of the work in a language other than that
of the original version. Both translations and
adaptations are, in themselves, works protected
under copyright, meaning that publishing either
requires obtaining permission from the copyright
owner of both the original work and the new adapted
or translated work.

 Neighbouring rights: Historically, efforts such as performances, phonograms, and broadcasts

were viewed as undeserving of conventional copyright because they were seen as products of
teamwork or entrepreneurial activity, whereas traditional copyright focused on incentivizing
individual creativity. Although the distinction is less rigid now, these remain categorized as
Neighbouring/Related Rights due to their historical separation from mainstream copyright. In the
Indian Copyright Act, 1957, sound recordings and cinematograph films are granted direct
copyright protection, while the specialized protections for Performer's Rights and Broadcast
Reproduction Rights are treated as the statutory neighbouring rights.
 International Framework:
Serial No. Kind Content
1. Rome Convention the foundational treaty for these rights, strictly
(1961) maintained a hierarchy by stating its protections could
not prejudice the existing copyright in literary/artistic
works. It established minimum rights for performers
against unauthorized fixation, reproduction, and
broadcasting of unfixed performance , but critically
held in Article 19 that the performer's right was
extinguished once they consented to incorporation in a
visual/audio-visual fixation , providing a minimum term
of 20 years
2. WIPO Performances significantly elevated the status of performers,
 & Phonograms extending the term to 50 years , introducing inalienable
Treaty (1996) moral rights (attribution and integrity) , expanding
economic rights to include distribution, commercial
rental, and a right to equitable remuneration for
broadcasting use , and mandating protection against the
circumvention of Technological Protection Measures
(TPMs)
3. TRIPS Agreement rimarily served to mandate the minimum standards of
protection set forth by the Rome Convention without
expanding the scope. Article 14(1) granted performers
the ability to prevent unauthorized fixation,
reproduction of fixations, and wireless broadcasting of
their live performances , while Article 14(3) gave
broadcasting organizations the right to prohibit fixation,
reproduction of fixations, wireless rebroadcast, and
public communication of television broadcasts , further
extending rental rights to both classes of right holders

 Neighbouring Rights in India:

Serial No. Kind Content
1. Performers’ Rights Every performer who engages in any performance shall
(u/s 38, 38A, 38B of be entitled to a special right known as performer’s right.
the act) The performer’s right shall subsist until 50 years from
the beginning of the calendar year following the year in
which the performance is made. During this period the
following acts if performed without the permission of
the performer shall be considered as infringement:
a) making a sound recording or visual recording of the
performance;
b) reproducing the sound recording or visual recording
of the performance;
 c) broadcasting the performance or sound recording in
disregard of the broadcasters’ reproduction right;
d) communicating the performance to the public
otherwise than by broadcast.
2. Broadcast Every broadcasting organisation has a special right to
Reproduction Rights reproduce its broadcasts within 25 years from the first
(U/s 37 of the act) day of the year following the year in which the first
broadcast is made. During this period anybody doing
the following acts without authorisation of the owner
shall be deemed to be infringing the broadcast
reproduction right:
a) re-broadcasting the broadcast;
b) broadcasting it to the public on payment of any
charges;
c) making any reproduction of such sound recording or
visual recording where the initial recording was
done without licence;
d) selling or hiring to the public such recordings.

 Caselaws Analysis:
Name of the Facts of the Case Issues of the Case Judgment of the Case
Case
Neha Bhasin The case involved a The primary legal The court clarified that the
v. Anand Raj commercial dispute issue was the term ‘performance’ requires
Anand where the central interpretation of the a visual or acoustic
(Delhi High question was the term ‘performance’ presentation to be made live
Court) nature of a studio under Section 2(q) of in the first instance, even if
(2006) recording of a singer. the Copyright Act, it occurs in a studio without
The opposing party 1957. Does the term a public audience. The
argued that such a require the ruling upheld that the act of
recording did not performance to be initial performance by the
 qualify for ‘live’ in front of the person, rather than the place
Performer's Rights public, or is the initial or public nature, is what
because it was not presentation by the triggers the protection under
presented before a performer sufficient? the Act.
live audience,
challenging the
definition of
‘performance’
Indian This landmark case Does the assignment The Supreme Court held
Performing involved a conflict of the right to that once a copyright owner
Right Society between the Indian incorporate a musical (like a composer) consents
Ltd. v. Performing Right work into a film to their work being
Eastern Society (IPRS), imply the transfer of incorporated into a
Indian which manages the the right to publicly cinematograph film or
Motion performance and perform/broadcast sound recording, a license
Pictures communication rights that work as part of for subsequent exploitation
Association of musical works the film? In essence, of that recording/film as a
(IPRS v. (songs, lyrics, who controls the whole needs to be obtained
EIMP) compositions), and secondary rights once only from the copyright
(Supreme the Eastern Indian a song is part of a owner of the film/recording
Court) Motion Pictures movie? (the producer). This ruling
(1977) Association (EIMP), confirmed the dominance of
which represented the film producer's right
film producers. The over the underlying musical
dispute centered on work for use in that specific
whether the film format.
producers, after
acquiring the right to
use the music in their
films (via
synchronization
 rights), could license
the public exhibition
or broadcast of the
film (containing the
music) without
needing a separate
performance license
from IPRS for the
underlying musical
works.
Aasia This case involved Does the act of The court ruled that the
Industrial the infringement of altering or interfering BRR holder has the
Technologies the Broadcast with the content of a exclusive right to control the
Ltd v Reproduction Right broadcast— reproduction,
Ambience (BRR) held by a specifically by communication, and
Space Sellers broadcasting replacing commercial rebroadcasting of the
Ltd. organization. Local advertisements— content. The unauthorised
(Bombay cable operators were constitute an act of interfering with or
High Court) capturing the original infringement of the altering the broadcast
(1997) television broadcast BRR granted under content (even if only the
signal and, while re- Section 37 of the commercial break) was
transmitting it, were Copyright Act? deemed a clear infringement
blanking out the of the broadcasting
advertisements placed organization's BRR.
by the original
broadcaster, replacing
them with their own
local advertisements.
ESPN Star ESPN Star Sports, Does the creation of The Delhi High Court held
Sports v holding the BRR for a derivative that the BRR is a robust
Global live sports event programmes using right that extends to using
 Broadcast broadcast, sued short clips from a live parts of the broadcast to
News Ltd. Global Broadcast broadcast infringe the create innovative derivative
(Delhi High News Ltd. (a news BRR? Furthermore, programmes (like montages
Court) channel) for do procedural with panel discussions), thus
(2008) unauthorized use of requirements specific restricting the use of the fair
short clips, montages, to copyright suits, use exception in favour of
and highlights from such as Section 61 unauthorized news
the live broadcast. (requiring the joining reporting. Crucially, the
The news channel of the licensee), apply court also ruled that BRR
had interspersed these to infringement suits are special and distinct
clips with its own concerning rights, making procedural
expert panel Neighbouring Rights requirements like Section 61
discussions. (BRR)? (which Parliament did not
include in Section 39A)
inapplicable to BRR
infringement suits.

 Assignment & Licensing:

 Assignment, u/s 18: The owner of the copyright of a work has the right to assign his
copyright to any other person. The effect of assignment is that the assignee becomes entitled
to all the rights related to the copyright to the assigned work. However, mere grant of right to
publish and sell the copyrighted work amounts to publishing right and not assignment of
copyright. Where the assignee of a copyright becomes entitled to any right comprised in the
copyright, he shall be treated as the owner of the copyright in respect of those rights. The
assignor shall also be treated as the owner of copyright with respect to unassigned rights. The
legal representatives of the assignee shall be entitled to the benefits of assignment, if the
assignee dies before the work comes into existence. As per section 19, assignment of
copyright is valid only if it is in writing and signed by the assignor or his duly authorized
agent. The assignment of a copyright in a work should identify the work and specify kind of
rights assigned and the duration and territorial extent of such assignment. Further, it should
specify the amount of royalty payable, if any, to the author or his legal heirs during the
 continuance of assignment and the assignment will be subject to revision, extension or
termination on terms mutually agreed upon by the parties. If the period of assignment is not
mentioned it will be deemed to be taken as five years from the date of assignment. If the
territorial extent of such assignment is not stipulated, it will be taken as applicable in whole
of India.
 Licensing: A copyright license is a legal authorization from the copyright owner (licensor) to
a licensee, granting a limited right to use the copyrighted work in a specific manner for a
defined period and territory, usually in exchange for a royalty payment. Unlike an
assignment, a license only confers a right to do an act that would otherwise be unlawful,
while the ownership of the copyright remains with the licensor. Licenses are broadly
classified as Exclusive (confers the rights to the licensee to the exclusion of all others,
including the owner) or Non-exclusive (the owner retains the right to grant the same license
to multiple other parties).
Voluntary License: Under Section 30, the owner of the copyright in an existing work, or the
prospective owner of a future work, may voluntarily grant any interest in their right by way
of a license. For a future work, the license only becomes effective when the work is created.
To be valid, a license agreement must adhere to strict formalities: it must be in writing and
signed by the licensor or their authorized agent. Crucially, the license must clearly specify the
work, the rights licensed, the duration, the territorial extent, and the amount of royalty
payable.
Compulsory & Statutory Licensing, Section 31 onwards: The Act provides for exceptions to
the owner's autonomy to ensure public access to works. Compulsory Licenses are granted by
the Copyright Board (now the Intellectual Property Appellate Board) when the copyright
owner unreasonably withholds the work from the public, refuses to allow its republication,
public performance, or broadcast on reasonable terms. Furthermore, compulsory licenses can
be granted for unpublished Indian works where the author is deceased or untraceable.
Statutory Licenses (as per provisions like Section 31C for cover versions or Section 31D for
broadcasting organizations) are rights automatically granted to users to exploit a work
without the owner's prior consent, provided they comply with the statutory terms and pay the
prescribed royalties.
 MODULE IV, LAW RELATING TO TRADE MARKS

 Trademark is defined u/s 2 (zb) of the TM Act, 1999 as: a mark or a sign that is capable of being
represented geographically and which is capable of distinguishing the goods or services of one
person from those of others, and may include the shape of goods, their packaging and
combination of colours etc. [So, the requirements essentially are distinctiveness & graphical
representation]
 Mark, u/s 2 (m) of the TM Act, 1999: it includes a device, brand, heading, label, name,
signature, word, letter, numeral, shape of goods, packaging or combination of colour or any
combination thereof.
 Nature of a Trademark: A trademark is a symbol or other unique mark applied to goods or their
packaging that serves to distinguish them from similar items and identify them with a particular
manufacturer or trader. Functioning as a bridge between the product and its owner, the trademark
has an existence independent of the physical article; its sole purpose is to establish this essential
connection for consumer recognition. While traditionally consisting of symbols, modern law
permits the registration of unconventional marks, underscoring the extraordinary legal privileges
and power associated with trademark rights.
 Functions of a Trademark: a trade mark must offer a guarantee that all the goods or services
bearing the trademark have originated under the control of one undertaking which responsible
for its quality. same This is also called the ‘origin identifying function’ which eradicates
likelihood of confusion and thereby helps the consumer in deciding what they want. Essentially,
it advertises the goods or services; it identifies the goods or services and its origin; it creates an
image for the goods or services; it guarantees unchanged quality (since the goods are
manufactured owing to a series of established protocols that are always followed) & it signifies
that all goods bearing a particular trademark come from a single source.
 Theories of Economic functions, are as follows:
1) Search Cost Theory or the Lander Posner Theory: posits that legally protected trademarks
are essential tools for reducing the search costs and risks faced by consumers due to
information asymmetry. This asymmetry occurs because producers have more complete
knowledge about product quality, often withholding negative details, which makes quality
verification difficult for buyers. By ensuring a product's mark is consistent and protected
 from counterfeiting, a trademark acts as a reliable indicator of desirability and source. This
signal enhances the customer's information situation and allows them to reduce various
costs—pecuniary, psychological, and communication—that would otherwise be incurred
while investigating a product's quality. Example: For buying an expensive leather bag you
have to know and take out information about leather used, packaging etc and even after all
may end up with a wrong choice.
2) Quality Assurance Theory: asserts that trademarks are a vital source of information about the
quality of the products they represent, encompassing everything from aesthetics to emotional
impact. A mark enhances the modern market by enabling owners to efficiently share details
about their product's quality. Essentially, a trademark signifies the consistent quality of all
goods bearing it, assuring consumers that products with the same mark share similar
characteristics and standards. It thus serves as an indicator of what the consumer is about to
purchase and establishes the commercial responsibility of the trademark owner, building trust
through its strong communicative power.
 The Factor of Distinctiveness: Distinctiveness is the quality of being different from the other
things. If a mark is not distinctive then it can create confusion in the minds of the consumers of
the products regarding the origin of the products or services it represents. For prevention of such
confusion, Section 9(1)(a) of the TM Act prohibits the registration of the marks which have no
distinctive in nature. Thus, it is absolutely essential for a TM to qualify as ‘distinctive’. The test
to determine whether a mark is ‘distinctive’ or not was laid down in the Abercrombie & Fitch
Co. v. Hunting World, Inc (1976) case, and is known as the ‘Abercrombie Spectrum of
Distinctiveness’. The case essentially broke trademarks into classes which are accorded differing
degrees of protection. It laid down a spectrum which measures distinctiveness on the following
categories:
a) Generic Marks (does not qualify for protection): It is a term that one refers or has come to be
understood as referring to the genus or class of which the particular product is a specie. They
do not warrant protection because if one seller could trademark a generic name, other sellers
would be unable describe their products and would thus be at a great disadvantage. Such
words which have become public juris or generic cannot be appropriated as they belong to
the public at large. Example: it is not permissible to use a word mark ‘Milk’ to brand the
product milk or the words ‘Hiking Boots’ to brand boots
b) Descriptive Marks (sometimes qualifies for protection): merely identify a product's
attributes—like its purpose, size, color, or ingredients—generally do not qualify for
trademark protection on their own. To gain legal protection, such a mark must acquire a
‘secondary meaning’. This means the consuming public must primarily associate the mark,
not with the product itself, but with the specific manufacturer or seller. For example, a mark
like ‘Jiffy Lube’ while descriptive of speedy service, is protected because consumers link it to
a single company. Similarly, surnames (like McDonald's or Hilton) are treated as descriptive
marks and only become protectable once they have established this strong secondary
association with a single commercial source.
c) Suggestive Marks (qualifies for protection): is a trademark that has some association to the
product or service at issue but it is not immediately clear. Suggestive product identifiers do
not directly describe a quality or characteristic of a company, product or service. They
instead use terms or designs that suggest specific qualities and traits. For a trademark to fall
under this umbrella, consumers must need to use their imaginations to make the mental
connection between trademark and brand. For example, ‘Netflix’ suggests entertainment and
streaming services but does not directly describe them, making it inherently distinctive as
well.
d) Arbitrary Marks (qualifies for protection): which consist of real, dictionary-defined words
that bear no logical relationship to the goods or services offered ‘Apple’ for computers being
a classic example. These too are inherently distinctive because they do not describe or
suggest the nature of the product.
e) Invented or Fanciful Marks (affords strongest protection): These trademarks are inherently
distinctive by nature, as they are uniquely created to serve as brand identifiers because they
are coined terms with no prior meaning in any language. Example: Xerox or Kodak.
Thus, we can see that, the strength of trademark protection is directly related to the mark's
distinctiveness, creating a spectrum from weakest to strongest protection. Marks that are highly
descriptive (like a generic name or a term that directly describes the product) have the closest
nexus to the product, resulting in the weakest protection. Conversely, highly distinctive,
arbitrary, or fanciful marks (with a weak or non-existent nexus to the product) are accorded the
strongest protection. Therefore, the degree of legal protection is inversely proportional to how
closely the mark relates to the goods it identifies.
 Name of the Case Facts of the case Judgment of the case
Abercrombie & Abercrombie & Fitch (A&F) sued The Second Circuit, in an opinion
Fitch Co. v. Hunting World (HW) for trademark by Judge Friendly, established the
Hunting World, Inc infringement, seeking to enjoin “spectrum of distinctiveness” for
(1976) HW's use of the word ‘Safari’ and trademarks (generic, descriptive,
related terms (e.g., ‘Minisafari’, suggestive, arbitrary, and fanciful).
‘Safariland’) on various apparel and It held that ‘Safari’ was generic for
merchandise. A&F had been using certain products like a safari hat or
and registering ‘Safari’ since 1936, jacket, and thus unprotectable for
promoting it heavily as an those items, affirming the dismissal
exclusive mark. HW contended that for those uses. However, the Court
‘Safari’ was a common, generic, reversed the cancellation of all
and descriptive term for a type of A&F's trademarks, holding that for
journey and associated apparel, and other goods, the term might be
therefore was not entitled to suggestive or have acquired a
exclusive trademark protection. The secondary meaning and could still
District Court dismissed A&F's be valid.
complaint and canceled all its
‘Safari’ trademarks, leading to
A&F's appeal to the Second
Circuit.

 Inherent & Acquired Distinctiveness: Indian trademark law historically bifurcated

registration under the 1958 Act into Part A (for inherently distinctive marks) and Part B (for
marks merely ‘capable of distinguishing’ through use). The Trade Marks Act, 1999,
simplified this system by consolidating registration into a single register, adopting the
standard of ‘distinctive character’ to encompass the capability to distinguish. Crucially,
Section 9(1) of the 1999 Act allows even an initially descriptive trademark to be registered if,
through prior use, it has acquired a distinctive character, effectively demonstrating a
"secondary meaning" in the minds of consumers, or has become a well-known mark.
 Surnames as Trade Marks: While the repealed 1958 Indian Act specifically mentioned refusing
surnames, the 1999 Act's criterion focuses on a mark's distinctive character. Surnames are
inherently weak marks, as many people share them, potentially restricting the right of others to
trade under their own name. A surname is of ‘ordinary significance’ when the word has no other
significance except that of a surname. Therefore, registration typically requires proof of long,
substantial, and exclusive use to demonstrate acquired distinctiveness. An exception exists if the
word has a more recognized meaning other than as a surname (e.g., ‘Gill’ / ‘Cannon’); in such
cases, the non-surname significance may increase its registrability. The fundamental barrier to
surname registration is the inability to distinguish one proprietor's goods from another's who
share the same name, underscoring the necessity of proving distinctiveness.
Name of the Case Facts of the case Judgment of the Case
Goenka Institute of Anjani Kumar Goenka, the registered The Delhi High Court
Education and proprietor of Goenka Medical University refused to vacate the ex
Research v/s Anjani and Gd Goenka Medical University, sued parte injunction, holding
Kumar Goenka Goenka Institute Of Education and that due to long use since
(2009) research for trademark infringement and 1994, the GOENKA mark
passing off. Goenka institute was using had acquired distinctive
similar marks, including Goenka Public character. The court found
School and Goenka College Of ‘GOENKA’ to be the
Pharmacy, for educational services. essential feature of the
Anjani kr. Goenka claimed the plaintiff's mark, and the
Goenka/Gd Goenka mark had acquired defendant's use of names
distinctiveness through long use since like Goenka Public School
1994, arguing the defendant's use would was prima facie deceptively
cause public confusion. Goenka institute similar under Section 29.
countered that ‘Goenka’ was a non- The court rejected the
distinctive, common surname and their Section 35 defense for these
use was bona fide under section 35 of the specific names, noting the
trademarks act, 1999. balance of convenience
favored the plaintiff to
prevent student deception.
 Essentially, The Court
stated that in the event of
the injunction not being
sustained, innocent students
joining the educational
institutes would be
deceived.
However, the use of older,
fuller names, such as
Mohini Devi Goenka
Mahila Mahavidalaya, was
allowed due to the
plaintiff's admitted delay in
challenging them.

 The concept of Graphical Representation: It is essentially, the capability of a mark of being put
in a register in a physical form, and also, being published in a journal. Section 2(1)(k) of the
Trademark Rules, 2002 define graphical representation as ‘graphical representation’ means the
representation of a trade mark for goods or services in paper form. The Trade Mark Rule 2017
amended the definition into: ‘Graphical Representation means the representation of a trademark
for goods or services represented or capable of being represented in paper form and includes
representation in digitised form’. Need of graphical representation:
a) It is needed because it enables the traders to identify with clarity, what other traders have
applied for registration as a TM and which products
b) it also enables the public to determine, with precision the signs which form the TM
registration
c) It helps in record keeping
d) It helps during substantive examination of the TM application to check the degree of
similarities
e) It enables the trade mark registry, competitors of the protected mark and the public to identify
the mark.
f) It enables courts to use the mark that is graphically represented as a reference point in
assessing whether someone has infringed the mark.
 Sieckmann Criteria: states that a representation must fulfil the CPSAIDO criteria, to qualify
as a mark capable of being graphically represented {Clear, Precise, Self Contained, Easily
accessible, Intelligible, Durable & Objective}
Name of the Case Facts of the case Judgment of the Case
Ralf Sieckmann v/s Ralf Sieckmann sought to register an The ECJ held that while a
Deutsches Patent- olfactory (smell) mark described as a non-visual sign (like a
und Markenamt ‘balsamically fruity odour with a slight smell) could potentially be
(2002) hint of cinnamon’ for various services. a trademark, it must be
To fulfill the requirement of graphic represented graphically in a
representation under the European Trade manner that is clear,
Marks Directive, he submitted a chemical precise, self-contained,
formula (methyl cinnamate), a written durable, and objective. The
description, and a physical sample of the Court ruled that neither a
scent in a container. The German Patent chemical formula (as it
and Trade Marks Office refused the represents a substance, not
application, doubting both its graphic the smell), nor a written
representability and distinctiveness, description (being
leading the German Federal Patents Court subjective), nor the deposit
to refer questions on the interpretation of of a sample (lacking
the Directive to the European Court of stability and durability), nor
Justice (ECJ). a combination of these
elements satisfied the strict
graphic representation
requirement for an olfactory
sign. The application was
ultimately refused as the
smell could not be precisely
identified
 Colour Marks: A colour trademark is a non-conventional trademark in which the trade mark
function of uniquely identifying the commercial origin of goods or services is performed by at
least one colour. A colour trademark functions as a symbol or logo employed by a company to
signify its brand, also referred to as a corporate identity emblem. It essentially equates the brand
with a specific colour. For instance, when seeing chocolate candy wrapped in purple, one
immediately thinks of Cadbury. Similarly, a turquoise jewellery box is unmistakably linked to
Tiffany & Co.
Name of the Facts of the Case Issues of the Case Judgment of the Case
Case
Libertel Libertel, a Dutch The primary issue The ECJ, reiterating the
Greop BV telecommunications referred to the ECJ Sieckmann requirements, ruled
V/S group, sought to was whether a that the registration of the color
Benelux- register the single color color per se (a ‘orange’ as represented was not
Merkenbure orange as a trademark. single color) acceptable. A simple
au (2003) The application possessed the reproduction and written
provided a requisite description failed the durability
representation of the distinctiveness to requirement, as color samples
color in a rectangle and function as a fade, and verbal descriptions are
a written description of trademark for imprecise. However, the Court
the mark simply as specific goods or acknowledged that a color per
‘orange’. This attempt services. Secondly, se could, in theory, function as a
to register a color per se the issue centered ‘badge of origin’ and acquire the
(on its own) raised on whether a potential to distinguish goods if
questions about its representation of consumers perceive it as an
ability to meet the the color alone, indication of source. Thus, a
formal and substantive with a simple single color can be registered if
requirements for verbal description, it fulfills all formal and
trademark registration satisfied the substantive requirements. The
under European law, Sieckmann ECJ reasoned that in most cases,
particularly the requirements, registration of a color per se
standards previously specifically the would require compelling
 established by the need for a sign to evidence of acquired
Sieckmann ruling be graphically distinctiveness (secondary
concerning graphic representable in a meaning) through extensive use,
representation and manner that is as colors inherently have little
durability, which the clear, precise, and communicative capacity. A
ECJ subsequently durable over time. cautious approach to registration
addressed. is preferred due to concerns over
the Color Depletion Theory,
which warns that granting
monopolies over a limited
number of colors (especially
functional or common colors
needed in a relevant business)
would be anti-competitive and
distort market freedom.

 Sound marks: A sound mark is a non-conventional trademark where sound identifies the source
of goods or services from a particular entity. The Trade Marks Act of 1999 in India does not
explicitly define sound marks, but they are recognized as distinct from traditional trademarks like
logos and phrases. The first Sound Mark Registration in India was the “Yahoo yodel” in 2008,
followed by ICICI Bank’s corporate jingle “Dhin Chik Dhin Chik” in 2011. Initially, there were
no clear guidelines for sound mark registration in India, particularly regarding graphical
representation. However, the amendment of the Trade Marks Rules in 2017 established explicit
criteria for their registration. The process for registering a sound mark in India, is as follows:
a) The company or entity should file the Form TM-A for trademark registration.
b) In Form TM-A, the company or entity must mention the category of mark as a sound mark;
otherwise, it will be considered as a device mark.
c) When the Registrar of Trademark is not satisfied with the sound mark, he/she can ask for
clarification or require supporting documents from the applicant.
d) When the sound trademark has a unique note and does not overlap with any other existing
sound trademark, it will be registered by the Registrar of Trademarks and granted a
trademark registration certificate.
Name of the Case Facts of the Case Judgment of the Case
Shield Mark v Joost Shield Mark, a Dutch The ECJ ruled that sound marks,
Kist h.o.d.n. telecommunications group, held whether musical or non-musical, are
MEMЕХ (1998) multiple sound mark registrations, registrable in principle as they can
including the first nine notes of function as a badge of origin,
Beethoven's "Für Elise", provided their graphic representation
represented on a musical stave, meets the Sieckmann criteria of
and the onomatopoeia being clear, precise, and durable.
"Kukelekuuuuu" (a cockrow The Court held that a sound
imitation). Shield Mark filed a represented by musical notes on a
trademark infringement suit stave meets these criteria, as the rise
against Joost Kist h.o.d.n. and fall in pitch are clearly
MEMEX because Kist used the understood by musically literate
Für Elise composition for persons, aiding comparison and
advertising and the cockcrow infringement assessment. However,
sound for a computer program. a written description of a sound or an
The issue before the Dutch courts, onomatopoeia like "Kukelekuuuuu"
and subsequently referred to the was deemed insufficient because
ECJ, was whether sound marks, words lack the necessary precision to
specifically those represented by a clearly indicate pitch variation,
musical stave or a written creating ambiguity for the trademark
onomatopoeia, met the necessary registry and the public. The ruling
graphic representation therefore validated the protection of
requirements to qualify for the musical score but cast doubt on
trademark protection. the protection of the onomatopoeia
as represented.
 Certification marks, u/s 2 (1) (e) of the TM Act: is the kind of mark that certifies the nature or
origin of goods or services to which it has been applied. This method or mode services or any of
includes the manufacture definable manufacture or provision of standards. region or or location
provision, quality characteristic services of the by members or origin, assurance, goods or of a
union materials accuracy of construction, of the goods or It can also certify or other organization
to certain services. The sole purpose of a certification mark is to indicate that certain standards
have been met. The function of a certification mark is not to indicate trade origin but to certify
that the goods or services in relation to which it is applied are certified by the proprietor of the
mark as to certain characteristics of the goods or services. A certification mark requires a formal
agreement with a nationally accredited organization. Its validity rests on legal evidence of
product testing against a national standard, assurance of consistency between tested and sold
goods, and regular audits of the manufacturer's process. Crucially, its distinctiveness is judged by
its ability to distinguish certified goods from uncertified ones, rather than differentiating between
the goods of two competing businesses.
 Well Known Trademarks, u/s 2 (1) (zg) of the TM Act: It is defined as ‘marks which have
become so well known to the substantial segment of the public which uses such goods or
receives such services that the use of such mark in relation to other goods or services would be
likely to be taken as indicating a connection in the course of trade or rendering of services
between those goods or services and a person using the mark in relation to the first- mentioned
goods or service’.
 Criteria for recognising a WKTM: Section 11 (6) lays down the various factors to be taken
into account by the registrar while determining whether a TM is a WKTM or not. They are:
a) The knowledge or recognition of that trade mark in the relevant section of the public
including knowledge in India obtained as a result of promotion of the trade mark. The
following facts may be considered in this regard: the number of actual or potential
consumers of the goods or services; the number of persons involved in the channels of
distribution of the goods or services; the business circles dealing with the goods or
services, to which that trade mark applies.
b) The duration, extent and geographical area of any use of that trade mark
 c) The duration, extent and geographical area of any promotion of the trade mark,
including advertising or publicity and presentation, at fairs or exhibition of the goods or
services to which the trade mark applies
d) The duration and geographical area of any registration of or any application for
registration of that trade mark under this Act to the extent they reflect the use or
recognition of the trade mark
e) The record of successful enforcement of the rights in that trade mark; in particular, the
extent to which the trade mark has been recognised as a well-known trade mark by any
court or Registrar under that record.
 Criteria not considered or required for WKTM Registration: Section 11 (9) lays down certain
conditions which are not needed or not required for the purpose of granting a WKTM. They
are as follows:
a) That the TM has been used in India
b) That the TM has been registered
c) That the application for registration of the trade mark has been filed in India
d) That the TM is well known in or registered in any other jurisdiction other than India
e) That the trademark is well-known to the public at large in India.
Name of the case Facts of the Case Judgment of the case
Daimler Benz Daimler Benz, the renowned German The Delhi High Court granted an
Aktiengesellschaft automobile manufacturer, sued Hybo injunction in favor of Daimler
v. Hybo Hindustan to prevent the latter's use Benz, recognizing the "BENZ"
Hindustan (1994) of the identical trademark "BENZ" mark and its emblem as a globally
along with a similar three-pointed well-known trademark with an
human figure device for undeniable reputation in India, even
undergarments. Daimler Benz for unrelated goods. The Court
contended that their "BENZ" mark emphasized that such a prestigious
and the three-pointed star symbol mark is not "up for grabs" for
were well-known globally and in unrelated, especially inferior,
India, despite not manufacturing or products like undergarments, as this
selling innerwear. Hybo Hindustan would dilute the mark's
argued that the goods were distinctiveness and prestige. The
 completely dissimilar and that judgment established an early
"Benz" was a common German precedent for the protection of
surname, negating any likelihood of famous marks against dilution and
confusion or infringement. unauthorized use on dissimilar
goods in India.
Whirlpool Whirlpool Corporation, a US-based The Supreme Court upheld the
Corporation v. company, sued N.R. Dongre for injunction against Dongre,
N.R. Dongre passing off, asserting prior use and affirming that Whirlpool
(1996) trans-border reputation for the Corporation’s mark possessed a
trademark "WHIRLPOOL" for trans-border reputation that
washing machines since 1937, extended to India, regardless of the
despite its Indian registration having lapsed registration. The Court
lapsed in 1977. Dongre had applied established that in a passing-off
for and obtained registration for the action, prior use and reputation
"WHIRLPOOL" mark in India in supersede a later registration. It
1986. Whirlpool argued that its held that the use of the well-known
global reputation, maintained through mark by Dongre would cause
extensive advertising in international confusion and deception among
magazines circulated in India and consumers, allowing the defendant
sales to the US Embassy, established to pass off his goods as those of the
a goodwill that was being exploited famous Whirlpool brand, thereby
by Dongre's inferior quality protecting the principle that
machines. goodwill knows no geographical
boundaries

 Different types of Trade marks:

1) Collective Marks, u/s 2 (1) (g) of the TM Act: means a trade mark distinguishing the goods or
services of members of an association of persons which is the proprietor of the mark from
those of others. The collective mark is used by members of the association, and the proprietor
(i.e. the association) holds the mark for the benefit of all members of the association.
Example: The logo of ICSI / ICAI. Section 62 provides the two essential conditions of
 registration of a collective mark: a collective mark shall not be registered if it is likely to
deceive or cause confusion the part of public & second, if it is likely to be taken to be
something other than a collective mark, and in such case the Registrar may require that a
mark in respect of which application is made for registration comprise some indication that it
is a collective mark.
2) Associated Marks: are marks which are owned by the same proprietor in respect of similar /
identical goods and/ or services ; they are associated so that there is no confusion regarding
the source of the goods and/ services. Example: The ‘AMUL’ label for its goods for Icecream
and Icecream confectionaries in Class 30 & Milk Based Beverages as well.
3) Trademark in Series, u/s 15 of the TM Act: Series of trademarks basically means a number of
trademarks which resemble each other as to their material particulars and which differ only as
to matters of a non-distinctive character not substantially affecting the identity of the
trademark.
4) Service TM: A service mark is a type of intellectual property protection specifically a subset
of trademark law used to identify and distinguish the services of one provider from those of
others, rather than goods. A service mark is any sign, word, symbol, design-or combination-
that distinguishes an entity's services from others. Businesses often use both trademarks and
service marks, especially when they offer products as well as services (e.g., Amazon,
McDonald's)
5) Conventional TM: Conventional trademarks are the traditional forms of marks used to
identify and distinguish goods or services. The main characteristic of the conventional
trademark is that it can be easily represented on a piece of paper, like you can represent a
word mark.
1) Non Conventional TM: marks which get recognition for their inherently distinctive feature.
These include: colour trademark ( specific colours are used to distinguish the goods or
services, example: the purple colour of dairy milk packets); sound marks ( where a noise is
used that can be connected to a good or service, example: phone ringtone of Nokia); shape
marks (3-D configuration of goods and packaging, example: the coca cola bottle shape or the
shape of toblerone chocolate) & even smell marks (the lush green smell in tennis balls, only
in USA).
 6) Composite mark: A composite trademark is a trademark that consists of a combination of
elements. These elements can include words, devices, shapes, sounds, scents, and/or colours.
The best example of composite trademarks is a logo. This is because a logo generally consists
of words, shapes, specific colours and at times, images.
 The Process of TM Registration in India: governed u/s 18-23 of the trademarks act. The process
of trademark registration in India is largely electronic, ensuring efficiency and transparency, with
approximately 98% of applications now filed online. Even offline applications are swiftly
digitized to integrate into the electronic system. The journey of a trademark application can be
understood through distinct stages:
Serial No. Stage / Step Explanation
1) Application Filing Any person claiming ownership of a mark (used or
[Sections 18 (1), (2), (3)] proposed) applies in writing to the Registrar. A single
application can cover multiple classes of
goods/services, with fees paid per class. The application
must be filed at the Trade Marks Registry branch
(Mumbai, Kolkata, Chennai, Ahmedabad, or New
Delhi) corresponding to the applicant’s principal place
of business in India.
2) Formal Examination The initial check performed by the Examiner to ensure
[Section 18 (4)] the application complies with all essential formal
requirements (paperwork, prescribed format, etc.)
before proceeding further.
3) Substantive Examination After passing the formal check, the mark is examined
[Section 18 (4)] on its merit (substance) to determine if it is eligible for
registration under the Act. The Registrar may accept the
mark absolutely or accept it conditionally (with
amendments/limitations) or refuse it entirely.
4) Exam report & Response After examination, the Registrar issues an Exam Report
with any objections. The applicant has 1 month to
submit a satisfactory reply. Failure to reply means the
application is deemed Abandoned. If the reply is
 unsatisfactory, the applicant is granted an opportunity
for a Hearing
5) Final Decision & If the Registrar is satisfied with the response or the
Advertisement hearing outcome (Acceptance), the application is
accepted. If refused or conditionally accepted, the
Registrar must record the written grounds for the
decision (S. 18(5)). An accepted mark is then
Advertised (published under S. 20) for public
opposition
6) Recording of Grounds If the Registrar refuses the application or accepts it with
[Section 18 (5)] conditions, the law mandates recording the grounds for
the decision and the supporting materials used, ensuring
transparency and providing a basis for appeal.
7) Withdrawal of Even after a mark has been accepted but before it is
Acceptance formally registered, the Registrar retains the power to
[Section 19] withdraw the acceptance. This occurs if the Registrar is
satisfied that the acceptance was made in error, or if
new circumstances suggest the mark should not be
registered or requires different/additional conditions.
The applicant must be given a hearing before this step.

 All Statutory provisions related to registration of TM in a summarised form:

Serial Section Explanation
No.
1) Section 18 application for registration to the registrar, single
application for registration in different categories but
fee is payable for each category. If the registration is
refused by the registrar, he shall record his reasons for
doing so.
2) Section 19 the registrar may withdraw the application after it has
been accepted but before the trademarks has been
 registered, if he has reasons for it after hearing the
applicant.
3) Section 20 advertisement of application. once a trademark
[Advertisement of application is accepted, the Registrar must advertise it
Application] to inform the public and allow for opposition. But, if the
application faces refusal, or the registrar deems it
necessary the advertisement will occur before
acceptance. The advertisement needs to be complete
and accurate. The purpose of advertisement is to give
information to the public at large in respect of the
trademark advertised and afford an opportunity to
oppose the registration of the mark on given grounds.
4) Section 21 allows any person to oppose a trademark application
[Opposition to within 3 months from the date of its advertisement in
Registration] the Trade Marks Journal. The Registrar serves a copy of
the opposition notice on the applicant, who must file a
counter-statement within two months, or the application
is deemed abandoned. Both the opponent and the
applicant then submit evidence and are given an
opportunity for a hearing. After considering the
evidence and hearing the parties, the Registrar
determines whether the registration should be permitted,
either absolutely or with specific conditions/limitations.
5) Section 22 grants the Registrar discretionary power to permit the
[Correction & correction of any error or the amendment of an
Amendment of application for registration. This power may be
application] exercised at any time, whether before or after the
acceptance of the application under Section 18. If a
single application covering multiple classes is amended
by being divided into two or more separate applications,
the Act ensures that the original filing date of the initial
 application is retained for all the resulting divided
applications.
6) Section 23 Once a trademark application is accepted, and either
[Registration] there's no opposition, or any opposition is decided in
favor of the applicant, the Registrar will register the
trademark within eighteen months of the application
filing date. This registration will be effective from the
initial application date. Upon registration, the applicant
receives a certificate. If the applicant's delays prevent
registration within twelve months, the Registrar can
treat the application as abandoned after giving notice.
The Registrar also has the power to correct minor errors
in the register or certificate.
 The Grounds of Opposition: The grounds for opposition or refusal of registration of a trademark
in India are primarily governed by Sections 9 and 11 of the Trade Marks Act, 1999. These
grounds are classified into two main categories — Absolute Grounds (Section 9) and Relative
Grounds (Section 11).
 Section 9: Absolute Grounds for Refusal of Registration

Clause / Sub-section Ground for Refusal of registration

Section 9(1)(a) Marks devoid of distinctive character, i.e., marks that

cannot distinguish the goods or services of one person from
those of another.

Section 9(1)(b) Marks consisting exclusively of indications that describe

the kind, quality, quantity, intended purpose, values,
geographical origin, or time of production of goods or
services.

Section 9(1)(c) Marks that have become customary in current language or

in bona fide and established trade practices.

Section 9(2)(a) Marks likely to deceive or cause confusion.

Section 9(2)(b) Marks that contain or comprise matter likely to hurt the
religious sentiments of any class or section of the citizens
of India.

Section 9(2)(c) Marks comprising or containing scandalous or obscene

matter.

Section 9(2)(d) Marks prohibited under the Emblems and Names

(Prevention of Improper Use) Act, 1950.

Section 9(3) Shapes of goods resulting from their nature, necessary to

obtain a technical result, or giving substantial value to the
goods are not registrable.
 Distinctiveness Exception Marks under clauses (a), (b), or (c) may be registered if
they have acquired distinctiveness or are well-known
trademarks.

 Section 11: Relative Grounds for Refusal of Registration

Clause / Sub-section Ground for Refusal of registration

Section 11(1) A trademark shall not be registered if it is identical or

similar to an earlier trademark for identical or similar
goods or services, likely to cause confusion.

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

similar to an earlier well-known trademark and the use
would take unfair advantage of or be detrimental to its
distinctive character or repute.

Section 11(3) A trademark shall not be registered if its use is liable to be

prevented by laws relating to passing off or copyright.

Section 11(4) Marks may be registered in case of honest concurrent use

or special circumstances (with Registrar’s discretion).

Registrar’s Duty Registrar must protect well-known trademarks during

registration and opposition proceedings, and assess
applicant/opponent’s good or bad faith.

 Passing Off: is a common law tort which is most commonly used to protect goodwill that is
attached to the unregistered trademark. Passing off is basically when one person is passing off
his goods or services as that of another person. The Trademarks Act, 1999 gives rights and
protection in the form of remedies to not only registered but also unregistered trademarks.
Section 27(2) of the Act provides a remedy for an unauthorized use of an unregistered trademark.
Ingredients of passing off:
a) Misrepresentation: is noted to have taken place wherever and whenever the defendant makes
or tries to make the public believe that the goods and services that he is providing, are of the
plaintiff. Any representation that gives rise to the action of passing off implies that there had
been a misrepresentation by the defendant that the goods or services, which were in actuality
the plaintiff’s, were possessed to be in fact his or hers. Misrepresentation can be both
intentional and unintentional, what has to be seen is whether the defendant is selling his
goods in such a way that a common ordinary man would confuse his good to that of the
plaintiff's. The word misrepresentation does not mean that the plaintiff has to prove any
malafide intention on the part of the defendant. What has to be established is the likelihood of
confusion in the minds of the public, (the word "public" being understood to mean actual or
potential customers or users) that the goods or services offered by the defendant are the goods
or the services of the plaintiff.
b) Goodwill or Prior use: It must be proven that the person or the goods and services own some
kind of reputation in the market that associates the public with those specific goods or
services. Goodwill can be noted as the benefit or advantage of a good name or reputation that
is connected to the business of the concerned products or services. It is the attribute that helps
the business expand and an injury to it, would benefit the business. Supreme Court has also
laid emphasis on prior use in the case of Satyam Infoway Ltd. vs. Siffynet Solutions (P) Ltd,
(2004) ‘The action is normally available to the owner of a distinctive trademark and the
person who, if the word or name is an invented one, invents and uses it. If two trade rivals
claim to have individually invented the same mark, then the trader who is able to establish
prior user will succeed. The question is, as has been aptly put, who gets these first? It is not
essential for the plaintiff to prove long user to establish reputation in a passing off action. It
would depend upon the volume of sales and extent of advertisement’.
c) Damage: the offended party must prove that it has suffered actual or reasonable loss of
business due to the alleged misrepresentation. It must be proved that the misrepresentation
has harmed the goodwill or caused a loss to the reputation. To avail the defence of passing
off, the plaintiff must satisfy the court that he has suffered damages or is in a ‘quia timet’
action meaning ‘because he fears’ & in TM law, it means that it leads the plaintiff to seek an
injunction in the court because there is an apprehension to him that there can be injury caused
to his rights in the future by the defendant.
Serial No. Name of the Case Judgment of the case
1. Reckitt & Colman Facts: The plaintiff, Reckitt & Colman (trading as
Products Ltd v. Borden Colmans of Norwich), had, since the 1950s, been
Inc. and Others [1990] the exclusive supplier of preserved lemon juice in
the UK, sold in distinctively shaped, natural-size,
yellow plastic squeeze-containers resembling a
lemon, under the brand name ‘Jif Lemon’. The
get-up was widely recognised and associated by
the public with the plaintiff's product. The
defendant, Borden Inc., a competitor selling
‘ReaLemon’ juice, sought to enter the UK market
with their own lemon juice sold in near-identical
lemon-shaped plastic containers. Reckitt &
Colman sued Borden for the common law tort of
passing off to prevent the defendant from
marketing its product in that specific get-up.

Issues: The central issue was whether the

defendant's use of a similar lemon-shaped
container for its product constituted the tort of
passing off, even though the container's design
was arguably functional (a lemon shape for lemon
juice) and descriptive. Specifically, the court had
to determine if the plaintiff’s distinctive get-up
(the packaging) had acquired sufficient goodwill
to be protected. The defendant argued the shape
was common to the trade.

Judgment: The House of Lords upheld the

injunction against Borden, ruling in favour of
Reckitt & Colman. The judgment confirmed the
 ‘classic trinity’ requirements for passing off:
a) That the plaintiff has acquired a reputation in
his goods, name or mark.
b) There was a misrepresentation, whether
intentional or unintentional, which was done
by the defendants by the use of the mark of the
plaintiff or by any other means (which
includes use of similar marks) and which led
the purchaser/ consumer's to believe that the
goods and services which were being offered
by the defendant are goods and services of the
plaintiff or were associated with the plaintiff's
goods or services.
c) The plaintiff has already suffered damages or
is likely to suffer damage due to such
misrepresentation.
It held that the plaintiff’s get-up, despite its
descriptive nature, had acquired a secondary
meaning in the minds of the public, serving as a
badge of origin for ‘Jif Lemon’ juice. The
defendant's identical container amounted to a
misrepresentation, likely to deceive ordinary
consumers and cause damage to the plaintiff's
goodwill. The court dismissed the argument of a
functional monopoly, clarifying that the action
protects the goodwill attached to the get-up, not
the physical container itself.
2. Ervin Warnink Vs. Lord Diplock gave the essential modern
Townend characteristics of a passing off action. They are as
follows:
a) Misrepresentation
 b) Made by a person in the course of trade
c) To prospective customers of his or ultimate
consumers of goods or services supplied by
him.
d) Which is calculated to injure the business or
goodwill of another trader.
e) Which causes actual damage to a business or
goodwill of the trader by whom the action is
brought.
3. Corn Products Refining It was observed by the Bombay HC that the
Company Vs. Shangrila principle of similarity could not be applied, and if
Food Products Limited this dishonest intention on the part of the
(1959) defendant in regard to the passing off of goods is
established, it would be prima facie, and an
injunction would ordinarily follow, not making
any delay in bringing the matter to the court a
legitimate ground of defeat in such a case.
4. Cadilac Healthcare The Hon’ble SC reiterated a test of passing off
Limited Vs. Cadilla and observed that the remedy of passing off action
Pharmaceuticals Limited is dependent upon the principle that no person has
(2001) a right to represent somebody else’s goods as his
own. To put it in a more prominent manner, it
means that a person cannot sell his goods or
services under the sham of being somebody else’s
goods or services.

 Infringement: is defined u/s 29 as the use of a mark, by an unauthorised or authorised person or

a person who is not the registered proprietor, which is identical or deceptively similar to the TM
in relation to the goods or services in respect of which the TM is registered. In simple words, it is
defined as the violation of exclusive rights that are attached to a registered TM without the
permission of the registered owner of licensees.
 Rights conferred by registration, u/s 28: According to Section 28(1) of the Act, the
registration of a trademark gives to the registered proprietor of the trademark the following
rights: (i) The exclusive right to the use of the trade mark in relation to the goods or services
in respect of which the trade mark is registered and (ii) The exclusive right to obtain relief in
respect of infringement of trademark.
Example: Let's say the company McDonalds obtains a registration for the trademark McSwirl
with respect to food items. Firstly, McDonalds gets the exclusive right to use the trademark
McSwirl with respect to food items i.e. no other person can use the same or deceptively
similar trademark with respect to food items. Secondly, if a person uses the trademark
McSwirl for food items, then McDonalds has the right to file a suit for infringement and
obtain relief for infringement of trademark.
 The test for infringement of a TM: The hallmark of a trademark infringement action is
consumer confusion. A person is said to have infringed a registered trademark if she uses a
mark the course of trade such that it is likely to cause confusion in the minds the consumer.
The confusion may be caused for one of the following reasons:
a) Use of a mark that is identical to the registered trade mark for goods which are similar
to the goods or services covered by such registered trademark
b) Use of a mark that is similar to the registered trade mark with respect to identical or
similar goods or services covered by such registered trade mark;
c) Use of a mark that is identical to the registered trade mark with respect to goods or
services covered by such registered trade mark
d) If the TM is advertised and as a result, takes unfair advantage or is contrary to the
honest practices or is detrimental to the distinctive character & reputation of the
registered TM
e) If the registered TM is used in the material meant for packaging or labeling of other
goods or as a business paper, without due authorization of the registered user
f) Importing or exporting the goods under this mark
g) Affixation of the TM to the goods or packaging thereof
h) Offering or exposing goods for sale puts them on the market, or stocking them for those
purposes or offering or supplying services under the registered trade mark
 From whose eyes should likelihood of confusion be judged: The Hon’ble SC has held in
Amritdhara Pharmacy vs. Satyadeo Gupta AIR 1963 that the likelihood of confusion must
be judged from the eyes of an unwary consumer with average intelligence and imperfect
recollection. It important to recognize that consumers don’t remember each and every
element of a trademark and do not determine the etymological meaning of marks at the time
of purchasing goods or availing services. Thus, even if a critical comparison of the two
names may disclose some points of difference, but an unwary purchaser of average
intelligence and imperfect recollection may still be deceived by the overall similarity of the
two names since an unwary consumer is merely has a somewhat vague recollection that he
had purchased similar goods on a previous occasion with a similar name.
An interesting question that arises in this context is "does the test of ‘unwary purchaser of
average intelligence and imperfect recollection’ also apply to purchasers of more expensive
goods or goods that are bought after much consideration and thought ? For instance, can it be
said a consumer who purchases real estate property running into several crores of rupees will
be confused by a wrongful use of a trademark? Does such a consumer make enough enquiries
to ensure that the goods/ services originate from the rightful proprietor? Courts have held that
where the goods are expensive articles that are bought generally by literate persons, this fact
must be considered.
 How should Trademarks be compared in a TM infringement action:
Serial No. Name Content
1. Side by side comparison The test of comparison of the marks side by side
is inappropriate is not a sound one. This is because a purchaser
seldom has the two marks side by side before him
when he makes a purchase. The eye and the mind
is not an accurate recorder of visual detail and
marks are remembered by general impression or
by some significant detail rather than by any
photographic recollection of the whole. Simply
put, meticulous comparison is not the correct way.
2. Visual & Phonetic ‘You must take the two words. You must Judge
similarity between the 2 them, both by their look and by their sound. You
 marks must be seen must consider the goods to which they are to be
applied. You must consider the nature and kind of
customer who would be likely to buy those goods.
In fact you must consider all the surrounding
circumstances and you must further consider what
is likely to happen if each of those trademarks is
used in a normal way as a trade mark for the
goods of the respective owners of the marks’
3. Expansion of the test to In the early years of the development of Indian
similarity of ideas trademark law, the focus was on the visual,
structural and phonetic similarity of the two
trademarks. Over the years, as Courts have better
understood the way in which consumers interact
with trademarks, the test has expanded to
similarity in the idea of the two trademarks. This
expansion is owing to the recognition of the fact
that while a side by side comparison of the two
marks may reveal many visual phonetic
differences, the ideas that the two marks convey
may be consumer cannot be expected consuming
goods. to the same recall the exact visual or
phonetic details or and a while An example of is
that of a mark represented as a football game.
Another mark may show the players in a different
dress and in different positions and may thus
convey the same impression/ idea of a football
game leading to consumer confusion. In other
words, the first impression conveyed by a mark is
the correct test.
4. The rule of anti A composite mark is one that has both distinctive
dissection parts (over which the trademark owner has rights)
 and non - distinctive parts (which are not
exclusive to the trademark owner since they are
common to the trade or descriptive etc.). The anti
dissection rule mandates that the Courts whilst
dealing with cases of trademark infringement
involving composite marks, must consider the
composite marks in their entirety as an indivisible
whole rather than truncating or dissecting them
into its component parts and make comparison
with the corresponding parts of a rival mark to
determine the likelihood of confusion. (Principle
of identification of dominant mark)
5. Copying of essential The Defendant must have copied the essential
features is relevant features of the Plaintiff's registered trademark.
6. No amount of added In an infringement action, once the Defendant
matter can be considered uses the mark as a source indicator, no amount of
added matter intended to show the true origin of
the goods can affect the conclusion of
infringement. Thus, Courts have rejected the
argument that addition of distinctive prefix or
suffix or differences in packaging by the
Defendant will be sufficient to dispel consumer
confusion. One of the reasons given for this
position is that even where such "added matter" is
included, consumers can be still led to believe that
the Defendant is associated with the Plaintiff or is
in some way sponsored by the Plaintiff even if the
added matter makes it clear that they are not the
same entity. This association between the Plaintiff
and Defendants is considered as a sufficient injury
to constitute trademark infringement.
 Use which denudes distinctiveness: Section 29(4) of the Act also recognizes that a trademark
may be infringed even where the Defendants' goods are not covered by the Plaintiff's
registration, provided that the registered trade mark has a reputation in India and the use of
the mark without due cause takes unfair advantage of or is detrimental to, the distinctive
character or repute of the registered trade mark.
 What does not amount to infringement: Section 30 of the Trademarks Act, 1999 lays down
the certain conditions wherein trademark cannot be said to have been infringed. Such
conditions can be used by alleged infringer as defenses in suits for infringement of trademark
and hence escape his liability. These conditions include:
a) When any person makes use of a trademark in accordance with honest practices in
industrial or commercial matters
b) When such use is not in pursuit of taking undue advantage or proves to be detrimental to
the distinctive character or repute of the trademark.
c) Use of a mark for the indication- Whenever any trademark is used in order to indicate
the kind, quality, quantity, intended purpose, value, geographical origin, the time
production of goods or of rendering of services or any other characteristics of goods or
services.
d) Use of mark which is outside the scope of registration- When trademarks are registered,
there are certain cases where they are subjected to certain conditions and limitations.
Whenever the alleged infringement is under the ambit of those limitations, then it does
not constitute to be a case of infringement of trademarks
e) Implied consent - Whenever the infringed use of a trademark is the continuance of the
permitted use by the original proprietor who has subsequently not removed or
obliterated it, in such cases the use cannot be said to be an infringement.
 Remedies:
Serial No. Provision Content
1. Section 135 of TM Act, provides a range of remedies for trade mark
1999 infringement and passing off. The primary
reliefs available include an injunction (which
may be granted subject to conditions and
includes ex parte or interlocutory orders for
 discovery of documents, preservation of
infringing goods/evidence, and restraining the
defendant from disposing of assets), damages or
an account of profits, and an order for the
delivery-up of the infringing materials.
Essentially, the court can grant orders to stop the
infringement, award monetary compensation,
and mandate the surrender of the infringing
goods
2. Order XXVI, Rules 9 & 10 a court may appoint a Local Commissioner to
of CPC execute a search and seizure order at the
[Anton Piller Orders] Defendant's premises. Such search and seizure
orders aid in preserving evidence that may be
destroyed by the Defendant in the absence of an
order of this nature.
3. Mareva Injunction is an order that freezes the assets of the
Defendant.

 Difference between Infringement & Passing Off:

Points of
Infringement Passing off
differences

Trademark provide protection Passing off provides

1. Registration
for registration of goods and unregistered of goods and
of Trademark
service. service.

Trademark infringement is Passing off not essential for a

2. Action
essential for a defendant to use Defendant to use trademark of
 trademark of plaintiff to bring Plaintiff to bring an action
an action against them. against them.

Trademark infringement has

statutory remedy under the Passing off has common law
3. Remedy
section 29 of trademark Act remedy.
1999

Passing off the burden of proof

Trademark Infringement the
4. Burden of lies on the person who uses the
burden of proof lies on the
proof trademark without others
Plaintiff.
consent i.e., defendant

Passing off has goodwill.

Infringement registration terms
5. Essential Damages and misrepresentations
to be essential.
terms to be essential.

Infringement of trademark suits Passing off suits can be solved

6. Section can be solved under the section under section 20 of civil
134 of Trademark Act 1999. Procedure Code 1908.

 South India Beverages Pvt. Ltd. Vs. General Mills Marketing Inc. case analysis:
 Facts: General Mills Marketing Inc. (Respondent-Plaintiff) is the registered proprietor of the
composite trademark ‘HAAGEN-DAZS’ for ice-creams. South India Beverages Pvt. Ltd.
(Appellant-Defendant) used the rival mark ‘D’DAAZS’ also for ice-creams. The Respondent-
Plaintiff filed an infringement action against the Appellant-Defendant, arguing that the
adoption and use of the mark ‘D’DAAZS’ constituted infringement and passing off due to
deceptive similarity. The case required the court to analyze the competing marks, considering
‘HAAGEN-DAZS’ as a composite mark, and determine the likelihood of consumer
 confusion, particularly given that the goods (ice-creams) are consumed by people of all ages
and socio-economic strata, lessening the defense of sophisticated consumers.
 Issues: The primary legal issue before the court was whether the Appellant-Defendant's mark
'D’DAAZS' was deceptively similar to the Respondent-Plaintiff's registered composite mark
'HAAGEN-DAZS', thereby constituting trademark infringement. This required the court to
determine the correct application of two established principles in trademark law concerning
composite marks: the ‘Rule of Anti-Dissection’ and the ‘Identification of the Dominant
Mark’. A secondary issue was whether the difference in price or the assumed sophistication
of premium ice-cream consumers offered a valid defense against the claim of infringement or
likelihood of confusion.
 Judgment: The court held that the principles of 'anti-dissection' and 'dominant mark' are
complementary, not antithetical, and allow for the consideration of individual elements as a
preliminary step. The court rejected the Appellant's submission that infringement cannot lie if
the entire mark 'HAAGEN-DAZS' is not appropriated. It found that 'HAAGEN DAZS' is
composed of two equally dominant elements and that the element 'DAZS'/'D’DAAZS' is
arbitrary and distinct, possessing greater strength and protection. The court noted that ice-
creams appeal to all groups, including children, and that the defense of 'sophisticated
consumers' is not a complete shield against confusion, especially for products of mass appeal.
 MODULE VI, GEOGRAPHICAL INDICATIONS:

 Meaning: Geographical Indication in IPR is a sign that identifies a product as originating in a

particular geographical region. The qualities, like taste, texture, and aroma, of such a product are
closely linked to its place of production. These include geographical and natural factors, as well
as human ones, like know-how and tradition, of the region concerned. For instance, Darjeeling
Tea has a specific taste that characterizes the region in India, due to its particular climate & soil.
 Definition u/s 2 (e) of the Geographical Indications of Goods (Registration and Protection)
Act, 1999 (GI Act): ‘An indication which identifies such goods as agricultural goods, natural
goods or manufactured goods as originating, or manufactured in the territory of a country, or a
region or locality in that territory, where a given quality, reputation or other characteristic of
such goods is essentially attributable to its geographical origin and in case where such goods are
manufactured goods one of the activities of either the production or of processing or preparation
of the goods concerned takes place in such territory, region or locality, as the case may be’
 Essentials or ingredients in order to satisfy a GI:
a) Product: The indication must identify one of the following categories of goods: agricultural
goods (e.g., Gobindobhog Rice, Kangra Tea ), natural goods (e.g Makrana marble- Rajasthan
),or manufactured goods. The manufactured goods category includes handicraft or of any
industry (e.g., Kashmiri pashmina ) and food stuff (e.g., Dharwad pedha ). These product
types are specified in Section 2(g) of the GI Act.
b) Specific geographical area: The goods must be identified as originating, or manufactured in
the territory of a country, or a region or locality in that territory. This establishes the
indispensable link between the goods and their place of origin
c) Must have a distinct quality: The goods must have a distinct quality (e.g., Darjeeling Tea's
unique Aroma and Texture), reputation, or other defining characteristic.
d) Quality should be attributable to a specific geographical area: Critically, the distinct quality,
reputation, or other characteristic of the goods should be essentially attributable to the
specific geographical origin. This connection is fundamental; for manufactured goods, at
least one activity of production, processing, or preparation must occur in that region to satisfy
the GI definition
 The Difference between a GI & a Trademark:
Serial No. Geographical Indications Trademark
1) In the case of a GI, the name denotes A trademark is a symbol, name, or
the product’s place of origin, and any identity of a firm that is used to
producer in that geographic region distinguish one entity’s goods or services
can use the GI for that product. from those of another. A car is still an
automobile, but the manufacturer’s
trademark allows it to be differentiated.
BMW and Audi, for example, are the
trademarks of the respective automobile
manufacturers.
2) A geographical indication (GI) is A trademark, on the other hand, can be
essentially a collective protection registered by a single person or a
provided to a group of producers company, both.
from a specified place where the
commodity was initially created.
3) Every manufacturer or producer in While Trademark Registration in a
the same territory is permitted to use person’s name and address may only be
the same GI. used by that person or manufacturer,
4) A GI, on the other hand, can only be A trademark can be a letter, a word,
a name or a symbol associated with a digits, or a combination of characters and
location. numbers, as well as an abbreviation,
name, gadget, hologram, sound, or odor.
5) GI is meant only for goods unique to A Trademark is available for both goods
a geographical region and services
6) A GI is a code that identifies a The individuality or uniqueness of a
product based on its origin. The trademark is determined by human
nature of the GI is determined by ingenuity or intellect. It is possible for a
factors like geography, human labor, trademark to be suggestive, descriptive,
and the environment of a certain or arbitrary
geographical place.
 7) GI is a right enjoyed by a community Trademark is a right enjoyed by only one
/ association of producers person/company (individual right). A TM
(community right). For instance, can be assigned or licensed to anybody,
Assam Muga Silk has GI conferring anywhere in the world, because it is
rights to all such traders from that linked to a specific company & not to a
community. particular place.
However, due to its link with the
place of origin, a GI cannot be
assigned or licensed to someone
outside that place or not belonging to
the group of authorized producers.

 The difference between GI & C-TM: A certification trademark (CTM), as the name indicates, is
a mark that certifies the nature or origin of the goods or services to which it has been applied. So
a question arises: Why have a GI Act if a CTM serves the same purpose?
 WIPO says : A CTM application can include, for example, region or location or origin,
materials of construction, method or mode of manufacture or provision, quality assurance,
accuracy of the goods or services or any definable characteristic of the goods or services. It
can also certify manufacture or provision of services by members of a union or other
organization to certain standards. (it is a broader standard).
 A GI, on the other hand, is only an indication (or certification) of the geographic origin of
goods and quality or characteristics of the goods that are directly attributable to the
geographic origin.
 Appellation of Origin: is a higher category of GI. It refers to a geographical name that not only
identifies the place of origin but also indicates that the qualities, reputation, or characteristics of
the product are essentially due to that geographical environment. Example: Darjeeling Tea, as
the taste and aroma come from the climate and soil of Darjeeling. This is covered u/s 2 (1) (e) of
the GI Act, 1999. {Imp: from where it comes + qualities due to that place}
 Indication of Source: It is the simplest form of geographical indication. It only shows where the
product comes from, but does not guarantee quality or characteristics. Example: ‘Made in India’
 or ‘Product of France’ on a label. This is not expressly defined under Indian law. {Imp: from
where it comes}
 TRIPS & GI:
 Article 22, General protection for GI: The TRIPS Agreement of 1995 recommends a
minimum standard of protection for geographical indications (GIs) , with Article 22 outlining
this general level of protection that applies to all goods irrespective of nature. GIs, for the
purpose of this Agreement, are indications that identify a good as originating in a Member's
territory, region, or locality, where a given quality, reputation, or other characteristic is
essentially attributable to its geographical origin. Member countries must provide legal
means to prevent the use of designations that mislead the public as to a good's geographical
origin or constitute an act of unfair competition within the meaning of Article 10bis of the
Paris Convention. Furthermore, a Member must refuse or invalidate the registration of a
trademark that consists of or contains a GI if its use for non-originating goods is of a nature
to mislead the public. Importantly, unless a GI is protected in its country of origin, there is no
obligation for other countries to extend reciprocal protection under this Agreement.
Developing countries have largely based their statutory regimes on the provisions of Article
22. When looking at the principles what becomes very clear is that the principle of national
treatment has been given importance as the range of protection from registration to treatment
similar to domestic product has been stressed upon. The second clause of Article 22 provides
a negative right as to prevent others from protecting GI's. What is interesting to note is that
this definition is also covering protection available to wines and spirits and is not exclusive to
them. It provides a very equal regime for all goods.
 Article 23, Special protection for wines and spirits: In addition to the general protection,
Article 23 provides additional protection (a higher level of protection) specifically for GIs
identifying wines and spirits. This special protection is absolute and unqualified. It imposes
an obligation upon Member countries to prevent the use of a GI for wines or spirits not
originating in the indicated place, even where the true origin is indicated or the GI is used in
translation or accompanied by expressions such as ‘kind, type, style, or imitation’. This
means that protection is required even if there is no risk of misleading or unfair competition.
Furthermore, the registration of a trademark for wines or spirits that consists of or contains a
GI identifying them must be refused or invalidated if the product does not have that origin,
 without needing proof that the public is misled. For homonymous GIs for wines, protection is
accorded to each indication, but Members must determine practical conditions to differentiate
them to ensure equitable treatment for producers and prevent consumers from being misled
 Article 24, exceptions to GI protection: These exceptions include cases where a GI is not
protected in its country of origin , or if it has been registered as a trademark with bona fide
intentions. Other exceptions relate to the GI having been used in that country for a period of
ten years already, or the use of generic terms traditionally. However, under the TRIPS
Agreement, WTO members are not required to extend protection to GIs if they become
generic for the goods.
 India’s compliance & Sui Generis Approach: India implemented the TRIPS provisions in its
domestic legislation through “The Geographical Indication of Goods (Registration and
Protection) Act, 1999”. India's Act provides a sui generis interpretation of the protection
available. The Indian statute characterizes GIs in connection to products by classifying goods
into agricultural goods, natural goods, or manufactured goods , unlike the general 'goods'
description in TRIPS. It highlights the importance of human skill and geographical origin for
agricultural and manufactured goods , particularly noting the craftsmanship in handloom and
handicraft industries. India also adopts a unique approach regarding Homonymous GIs;
Section 10 of the Indian Act requires the registrar to differentiate between two Homonymous
Indications and ensure equitable treatment and prevent market confusion, but India has
extended this provision to products other than wines, demonstrating a sui generis approach in
protecting its own goods. For instance, the definition of ‘producer’ [u/s 2 (k)] specifically
includes processing and manufacturing steps, ensuring that human factors—critical for
products like Darjeeling Tea—are considered attributable to the origin.
 The debate on the extension of Article 23 protection: The debate on the extension of the
specific protection available to wines and spirits under Article 23 to other products remains
vigorous. Developing countries, including India , have been demanding this extension due to
incidents of infringement and the lower standard of protection under Article 22, which is seen
as inadequate against ‘free-riding’ and the risk of genericide of GIs. They argue that the
absolute protection of Article 23 (which even bars terms like 'kind' or 'type') is necessary to
prevent excessive damage to their GIs' reputation and revenue. Opponents of the extension
argue that Article 22 is adequate , and that failure of national enforcement mechanisms is the
 real issue. Granting absolute rights through extension could also be anti-competitive, give
rise to monopoly, and increase financial and administrative burdens on developing countries.
Furthermore, it is argued that the higher protection could be negatively used to block imports,
limiting the market access for developing countries instead of increasing it. This debate,
rooted in historical negotiations and compromise, is essentially a power play concerning the
economic interests of different countries.
 Provisions for negotiation & Mandate regarding extension: Article 24.1 provides for
additional negotiations in case there is a need to extend any protection under Article 23. The
Doha Declaration also addressed this issue, with Paragraph 18 noting that issues related to the
extension of Article 23 protection to products other than wines and spirits "will be addressed
in the Council for TRIPs pursuant to paragraph 12". However, it is inferred that neither
Paragraph 12 nor Paragraph 18 has clearly provided a mandate for extending the protection,
but merely highlighted the need to address the matter. Separately, Article 23.4 explicitly
provided for negotiations concerning a multilateral system of notification and registration of
GIs only for wines.
 Effect on foreign relations & market access in case of extension: Proponents argue that
extension would offer an incentive for local producers, encourage the agricultural sector, and
lead to increased employment and the development of sectors like tourism and biodiversity. It
could help developing countries establish a place in the International Market and lead to
greater welfare. However, these are propositions, and opponents counter that absolute rights
could lead to monopoly and exploitation. Furthermore, increased administrative costs may
outweigh expected trade benefits. The risk that the complexity of elevated protection could
be used to create barriers for imports is a significant concern, which could hinder market
access for developing countries and force bona fide producers to re-label their goods,
incurring revenue loss.
 GI & its process of registration in India:
 Legal Framework & Authority: The framework for GI registration in India is established by
the Geographical Indications of Goods (Registration and Protection) Act, 1999 and the
Geographical Indications of Goods (Registration and Protection) Rules, 2002. The central
body overseeing registration is the Geographical Indications Registry located in Chennai. The
 Registrar of Geographical Indications is the Controller-General of Patents, Designs, and
Trade Marks.
 Substantive conditions & application filing: Eligibility for a GI requires that the goods
(agricultural, natural, or manufactured) are identified as originating in a specific territory,
region, or locality, where a given quality, reputation, or other characteristic is essentially
attributable to that geographical origin. The application must be filed by an association of
persons, producers, or any authority representing the interests of the producers of the
concerned goods. The application is filed in triplicate using Form GI-1, accompanied by a
detailed Statement of Case. The Statement of Case must include a description of the goods,
the specific geographical area, proof of the product's reputation, and details of the inspection
structure (if any).
 Examination, advertisement & opposition: Following submission, the application undergoes
a Preliminary Scrutiny by an examiner, where any deficiencies must be corrected by the
applicant within one month. Subsequently, the Registrar, often in consultation with a
Consultative Group of Experts, examines the application on its merits to ascertain the
correctness of the particulars and the validity of the geographical link. If the application is
accepted, it is advertised in the Geographical Indications Journal within three months to
allow for public transparency and opposition. Any person can file a notice of opposition
within three months of publication. If opposition is filed, the applicant must file a counter-
statement, and the Registrar will hold a hearing to consider evidence before issuing a
decision. If accepted, the Registrar registers the GI, and the registration date is deemed to be
the date of the original filing.
 Rights & Duration: A GI registration is valid for a period of ten years. It may be renewed
indefinitely for subsequent ten-year periods upon payment of the prescribed fee. Rights
Conferred: Registration grants the registered proprietor (the filing organization) and the
Authorized Users (registered producers of the goods) the exclusive right to use the indication
concerning the registered goods. This confers the right to take legal action for infringement
against unauthorized use. Prohibition: Registration is prohibited for GIs that are likely to
deceive, cause confusion, are contrary to public order, contain scandalous matter, or have
become a generic name for the goods. Nature of Right: A GI cannot be assigned as it is
considered a collective public property right, unlike an individual trademark.
 Case Studies or Case Laws:
Serial No. Name of the Case Content
1. Tirupati Laddu Case The story of the Tirupati Laddu GI tag began when the
Tirumala Tirupati Devasthanam (TTD) sought to
protect the famous temple offering as a Geographical
Indication. However, this move triggered controversy.
A public interest litigation was filed by R.S. Praveen
Raj, a scientist, questioning whether a sacred offering
could be classified as “goods” under the GI Act. He
argued that since TTD was the only producer, it
violated the very spirit of a GI, which is meant for a
community of producers. He also claimed the
registration breached Sections 9(a) and (d) of the GI
Act as it could deceive consumers and hurt religious
sentiments. The Madras High Court dismissed the
PIL, advising the petitioner to approach the GI
Registry or IPAB. When filed there, the GI Registry
rejected his plea for rectification, ruling he lacked
locus standi and had not suffered any legal injury.
Thus, the Tirupati Laddu remained protected as a GI,
recognized as a product uniquely associated with the
temple and its divine heritage.
2. Jamnagar Petrol Reliance Industries Limited attempted an unusual GI
Case registration for its “Jamnagar Petrol, Diesel, and
LPG.” The company claimed the name signified
quality and origin, as Jamnagar hosted one of the
world’s largest refineries. However, the application
stirred debate. A GI requires a natural or human link
between the product and its geography—something
inherently unique to the location. RIL’s claim lacked
this connection; it merely mentioned compliance with
 ISO standards and general historical contributions to
the local area. There was no distinct geographical
quality or reputation exclusive to Jamnagar’s petrol.
Legal scholars and commentators questioned how an
industrial product refined from globally sourced crude
oil could qualify as a GI. The controversy ended when
RIL quietly abandoned its application, but it left an
important lesson: GIs must be rooted in geography and
cultural distinctiveness—not industrial capability.
3. Darjeeling Tea case The Tea Board of India, under the Tea Act of 1953,
owns the GI for Darjeeling Tea, cultivated in 87
gardens in the Darjeeling district. To protect its
heritage, the Board has fought numerous battles
worldwide against misuse of the “Darjeeling” name.
In the U.S., it successfully opposed the Republic of
Tea’s attempt to trademark “Darjeeling Nouveau.”
The Trademark Trial and Appeal Board upheld that
Darjeeling refers specifically to tea from India, not a
generic type. In France, the Tea Board won another
case when “Darjeeling with Kettle Device” was
declared invalid, as it diluted the GI’s identity. The
court even imposed fines for infringement. The
Darjeeling story demonstrates how India actively
defends its GIs globally, maintaining quality control,
licensing, and consumer education to preserve its
international reputation.
4. Indian GI & Quality While India has many registered GIs, the system faces
control issues serious quality control challenges. The Banarasi Saree
makers struggle against cheaper powerloom
imitations; Pashmina’s authenticity is safeguarded
only through voluntary certification; Darjeeling tea
 producers face blending issues abroad; and Alphonso
mango exports were once banned by the EU due to
poor compliance with sanitary standards. These stories
reveal that registration alone is not enough—there
must be consistent inspection, quality monitoring, and
consumer assurance. Experts recommend a
decentralized system where inspection bodies are
empowered and accountable to preserve the credibility
of India’s GIs.
5. Basmati rice Facts: Basmati rice, a long-grained aromatic variety
controversy cultivated for centuries in the sub-Himalayan plains of
India and Pakistan, gained worldwide recognition for
its unique aroma and texture. In 1997, a U.S.-based
company, Ricetec Inc., obtained a patent from the
United States Patent and Trademark Office (USPTO)
for certain rice lines claimed to be “novel Basmati.”
The company marketed these rice varieties under the
trademarks Texmati and Kasmati, labelling them as
“American-style Basmati.” This led to international
controversy as India objected, arguing that Basmati
was indigenous to the Indian subcontinent and part of
its traditional agricultural heritage. However, India
faced a legal setback since Basmati had not been
registered or protected domestically as a Geographical
Indication (GI) at that time. Consequently, under
Article 24.9 of the TRIPS Agreement, India could not
invoke GI protection internationally, as the product
was not protected within its country of origin.
Issues: The main issues were whether Basmati could
be treated as a GI exclusive to India and Pakistan, and
whether Ricetec’s patent violated India’s traditional
rights over the product. Another key concern was
whether the term Basmati had become generic due to
its global usage, such as “American Basmati” or “Thai
Basmati.” The case also highlighted India’s delayed
implementation of a comprehensive GI protection
framework and the inadequacy of its laws in
preventing biopiracy. Further, India’s Geographical
Indications of Goods (Registration and Protection)
Act, 1999, adopted a broader test for determining
genericide, requiring consideration of the product’s
reputation not only in its region of origin but also in
areas of consumption, which could potentially weaken
domestic claims of exclusivity.
Judgment: After objections raised by India, the
USPTO modified Ricetec’s patent, restricting it to
specific hybrid rice varieties rather than granting
rights over Basmati itself. While India considered this
a partial victory as its exports were no longer directly
threatened, the case exposed the shortcomings in
India’s prior intellectual property framework. The
incident led to increased awareness and the
establishment of stronger GI protection under the 1999
Act. However, the controversy demonstrated the risks
of inadequate domestic protection, as the term Basmati
risked being treated as a generic name internationally.
The episode underscored the necessity for India to
proactively safeguard its traditional agricultural
products and to maintain narrow criteria for
determining genericide to ensure that such names
remain associated with their true geographical origin.
 SKM SUGGESTIONS, ANSWERS:

Question 1) What is the definition of patent of the 1970 Act?

Answer: Under the Patents Act, 1970, a patent is a legal right granted for a limited period to the
inventor or assignee, which excludes others from making, using, selling, or importing the
patented invention without permission. It's essentially a territorial right granted by the
government in exchange for public disclosure of the invention.
[Provision applicable: Section 2 (1) (m) of the Patents Act, 1970]

Question 2) What is the definition of invention & new invention u/ the 1970 Act?
Answer: The Patents Act, 1970, defines an ‘invention’ as a new product or process involving an
inventive step and capable of industrial application. A ‘new invention’ means that the invention
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.
[Provision applicable: Section 2(1)(j), Section 2(1)(l) of the Patents Act, 1970]

Question 3) Give three examples of non-patentable invention?

Answer: The Patents Act, 1970, outlines several categories of inventions that are not patentable.
Three examples include:
a) A mere discovery of a scientific principle or the formulation of an abstract theory (e.g.,
Einstein's theory of relativity).
b) A mere discovery of a new form of a known substance that does not result in the
enhancement of the known efficacy of that substance (e.g., new salt or ester of a known drug
without improved therapeutic effect).
c) A method of agriculture or horticulture (e.g., a new method for growing rice).
[Provision applicable: Section 3 of the Patents Act, 1970]

Question 4) What are the grounds for obtaining compulsory license?

Answer: A compulsory license can be obtained under the Patents Act, 1970, if the Controller of
Patents is satisfied that the reasonable requirements of the public regarding the patented
invention have not been satisfied, or that the patented invention is not available to the public at a
reasonably affordable price. This can occur if the patent has not been worked in India to an
adequate extent or if it is not being worked at all.
[Provision applicable: Section 84 of the Patents Act, 1970]
{Compulsory license is a permission granted to a 3rd party, by the government to use the
invention without the consent of the patent holder}

Question 5) When does patent become ceased?

Answer: A patent ceases to be in force if the renewal fees are not paid within the prescribed time
period. A patent also ceases if it is revoked by the Controller or the High Court on the grounds of
opposition or revocation petitions. A patent also automatically ceases at the end of its term.
[Provision applicable: Section 53 and Section 60 of the Patents Act, 1970]

Question 6) What is the term of patent?

Answer: The term of every patent granted under the Patents Act, 1970, is 20 years from the date
of filing of the patent application, irrespective of whether it is a product or a process patent.
[Provision applicable: Section 53 of the Patents Act, 1970]

Question 7) What are the grounds of opposition?

Answer: Opposition to a patent application can be filed on various grounds, including:
a) That the invention is not a new invention.
b) That the invention is obvious and does not involve an inventive step.
c) That the subject matter of the invention is not patentable under the Act.
d) That the applicant for the patent or the person under whom they claim is not the true and first
inventor of the invention.
[Provision applicable: Section 25 of the Patents Act, 1970]

Question 8) What is 'inventive step'?

Answer: An ‘inventive step’ is a feature of an invention that involves a technical advance over
existing knowledge or has economic significance, and makes the invention not obvious to a
person skilled in the art.
[Provision applicable: Section 2(1)(ja) of the Patents Act, 1970]
Question 9) What is the diff. b/w industrial application & personal application?
Answer: Industrial application means that an invention is capable of being made or used in an
industry. This implies it must have a practical use and be reproducible. Personal application, on
the other hand, refers to an invention's use for personal or private, non-commercial purposes.
Patents are granted for inventions with industrial application, not personal application.
[Provision applicable: Section 2(1)(ac) of the Patents Act, 1970]

Question 10) Whether any product related to defence be patentable?

Answer: Yes, products related to defence can be patentable. However, the government has the
power to acquire inventions for defence purposes. The Controller may also refer the application
to the central government, which can direct that the invention be kept secret if its publication is
considered prejudicial to the defence of India.
[Provisions applicable: Section 35 of the Patents Act, 1970]

Question 11) Who can apply for a patent?

Answer: A patent can be applied for by any of the following persons, either alone or jointly with
any other person:
a) The true and first inventor.
b) The assignee of the person claiming to be the true and first inventor.
c) The legal representative of any deceased person who, immediately before their death was
entitled to make such an application.
[Provisions applicable: Section 6 of the Patents Act, 1970]

Question 12) What is the full form of WIPO/PCT/ TRIPS/WTO?

Answer:
a) WIPO: World Intellectual Property Organization
b) PCT: Patent Cooperation Treaty
c) TRIPS: Agreement on Trade-Related Aspects of Intellectual Property Rights
d) WTO: World Trade Organization
Question 13) What are the rights of patentee?
Answer: A patentee has the exclusive right to prevent third parties from making, using, selling,
or importing the patented product or process in India without their permission. This right is
territorial and can be enforced through a civil suit for infringement.
[Provision applicable: Section 48 of the Patents Act, 1970]

Question 14) What is exempted from infringement?

Answer: Certain acts are exempted from constituting patent infringement. These include:
a) Experimental or research purposes: The use of the patented invention for scientific research
or educational purposes does not constitute infringement.
b) Bolar provision: The manufacture, construction, use, or sale of the patented invention solely
for development and submission of information required for regulatory approval (e.g., for a
generic drug) is exempted from infringement.
[Provision applicable: Section 47, Section 107A of the Patents Act, 1970]

Question 15) What is international application u/ PCT?

Answer: An international application under the PCT is a single patent application filed with a
receiving office (e.g., the Indian Patent Office or WIPO) that has the effect of a national filing in
all designated member countries. It simplifies the process of seeking patent protection in multiple
countries by providing a standardized procedure and a common filing date.
[Provision applicable: no statutory definition available but Section 7 and Chapter II of the Act
deal with applications under PCT]

Question 16) How to obtain patent in India? Explain the process along with a flowchart
Answer: A patent is essentially a statutory right for an invention granted for a limited period of
time to the patentee by the government, in exchange of full disclosure of his invention for
excluding others, from making, using, selling, importing the patented product or process for
producing that product for those purposes without his consent. Obtaining a patent in India
involves several key steps from filing to grant, which can be illustrated in a flowchart-like
sequence. First, the inventor must draft a patent application – typically a provisional
specification if the invention is at an early stage, followed within 12 months by a complete
specification with claims, drawings and an abstract. Next, file the application (Forms-1, 2, etc.)
at the Patent Office along with the prescribed fees. The application is then published
automatically 18 months after filing (or earlier if the applicant requests early publication) . After
publication, the inventor must request examination (Form-18) within the prescribed time
(currently within 48 months of the priority date). The Patent Office examines the application,
conducts a search for prior art, and issues an examination report. The applicant must respond to
objections by amending claims or arguing patentability. If objections persist, a hearing before the
Controller may be held. If the Controller is satisfied that the invention is patentable (novel, non-
obvious, industrially applicable, and not excluded by law), a patent is granted and published in
the Patent Journal. Throughout this process, opportunities for opposition exist: third parties may
file a pre-grant or post-grant opposition challenging the application’s validity. Finally, once
granted, the patent is valid for 20 years from the filing date.
In summary, the procedural flow is: Conceive invention → Prepare application
(provisional/complete) → File application → Publication (18 mo.) → Request Examination →
Examination & reply → (Pre-grant opposition) → Grant of Patent → (Post-grant
opposition/renewal).

a) Preparation and Filing, Section 10: Draft provisional specification (optional) and then
complete specification with claims. File patent application (Form-1, Form-2, etc.) with the
Patent Office and pay fees.
b) Publication of Applications, Section 11A: The application is published after 18 months (or
earlier on request). The publication of every application includes the particulars of the date of
application, number of application, name & address of the applicant identifying the
application & an abstract. Certain applications are not published, which include: applications
in which secrecy direction is imposed; applications that have been abandoned or the
application has been withdrawn.
c) Request for examination, Section 11B: The applicant or any other interested person shall file
a request for examination within the prescribed period, and in the prescribed manner. (usually
48 months).
d) Examination of Application, Section 12: The Controller examines the application and issues
an examination report.
e) Response & Hearing: Applicant responds to objections (amendments or arguments). If
needed, a hearing is held.
f) Grant: If all criteria are met and objections resolved, the Controller grants the patent (Section
45). The grant is published, and the inventor obtains exclusive rights.
g) Post-Grant: The patent can be opposed or even revoked after grant on statutory grounds.
Maintenance fees must be paid to keep the patent in force.

Question 17) How to obtain patents from countries other than India?
Answer: To protect an invention abroad, an inventor cannot simply rely on an Indian patent; one
must seek protection under each jurisdiction’s law. There are two main routes: the Paris
Convention route and the PCT route.
a) Paris Convention: The Paris Convention provides the foundational framework for
international patent protection through its priority filing system. Under this system, an
applicant who files a patent application in one convention country receives a 12-month
priority period to file corresponding applications in other member countries while
maintaining the original filing date. This mechanism operates on three key principles:
national treatment (ensuring foreign applicants receive the same treatment as domestic
 applicants), right of priority (preserving the original filing date), and reciprocity through
common rule enactment among member states. The process allows inventors to file either a
provisional or complete application locally first, then leverage this priority date when filing
in multiple jurisdictions abroad within the 12-month window. This system effectively
provides inventors with a year to assess market potential and secure funding before
committing to expensive international filing strategies.
b) PCT route: The PCT system revolutionizes international patent filing by creating a unified
procedure that simplifies the process of seeking patent protection across multiple countries
simultaneously. Under the PCT framework, applicants file a single international application
in one language at one designated office, which has legal effect in all PCT contracting states.
The system operates through two distinct phases: the international phase and the national
phase. During the international phase, the application undergoes international search
(resulting in a search report and written opinion by month 16), international publication in the
PCT gazette (at 18 months), and optional international preliminary examination. The national
phase begins when applicants enter individual country procedures before designated offices
(typically by month 22, or 30 months if preliminary examination is requested), where final
decisions on patent grants are made. This approach essentially eliminates the need for
separate applications in each country initially, reducing costs, complexity, and administrative
burden while providing applicants with valuable international search results to inform their
national phase strategies.
In summary, an inventor can either file separate national applications under the Paris Convention
claiming priority within 12 months , or file one PCT international application covering all
desired countries . The choice depends on strategy and resources. Both approaches preserve the
original filing date in subsequent applications. For example, a PCT application “makes it
possible to seek patent protection in a large number of countries by filing a single ‘international’
application instead of filing several separate national applications.

Question 18) The process for registration of design, along with a flow chart.
Answer: Registering an industrial design in India involves the following main steps:
a) Filing of Design Application: An application for design registration can be filed by ‘Any
Person’ which includes both natural persons and entities other than natural persons (such as a
Small Entity). The application should be filed in Kolkata, which is the jurisdiction for filing,
although receiving offices also exist in Delhi, Chennai, and Mumbai.
b) Application Requirements: The application must include the requisite fees (which vary based
on the applicant's legal status), Application Form-1 providing details like the applicant's
name, nationality, address, class number, and name of the article. It also requires four sets of
representations depicting various views of the article, and other documents such as a Power
of Attorney (if applicable), priority document, assignment document, and Form 24 for small
entities.
c) Representation: Four copies of the design representation must be submitted, which can be
drawings, photographs, tracings, or computer graphics, prepared on one side of A4 size
paper. Each view must be clearly designated (e.g., perspective view, front view), and a
statement of novelty and disclaimer must be endorsed on each sheet.
d) Numbering, Dating, and Formalities Check: The filed application is numbered and dated,
followed by a formal examination by the Examiner to check compliance with procedural
requirements. This includes verifying payment of the prescribed fee, correct bibliographic
data, proper submission of priority/assignment documents, and whether the representations
meet the standards under Rule 14.
e) Substantive Examination: The Examiner conducts a search and checks if the design is
registrable, specifically against criteria such as meeting the definitions of ‘article’ and
‘design’ being ‘Original’ and not falling under prohibitions like not being new or original, or
 comprising scandalous matter (Section 4). Classification of the article (Rule 10) and the
novelty statement (Rule 12) are also checked.
f) Communication of Objections: If the Examiner's report to the Controller indicates objections
adverse to the applicant, a statement of these objections is communicated to the applicant.
The applicant is expected to comply with or contest these objections. Failure to respond or
noncompliance may lead to the application being abandoned.
g) Hearing and Decision: If the Controller remains unsatisfied after reviewing the applicant's
reply, the application is fixed for a hearing. If the applicant fails to attend without requesting
an adjournment, the application may be refused. If all requirements are met after compliance
or a favorable hearing/appeal outcome, the application is accepted.
h) Registration and Publication: Once accepted, the design is registered, and a Certificate of
Registration is issued. Post-registration, the design is published in the Official Journal, and its
particulars, including one or more views of the representation, are made public. The design is
also entered into the Register of Designs.
Question 19) The process for registration of semi conductor & conductor related circuit,
along with a flowchart.
Answer: A semiconductor layout design means a layout of transistors and other circuitry
elements and includes lead wires connecting such elements and expressed in any manner in
semiconductor integrated circuits. Semiconductor chips (integrated circuits) are protected by a
special sui generis law in India: the Semiconductor Integrated Circuits Layout-Design Act, 2000.
Under this Act, the layout-design (topography) of a semiconductor integrated circuit –
essentially, the three-dimensional arrangement of transistors, wires and circuitry elements – is
defined as a protectable subject-matter . The Act grants an exclusive right to the creator (or
owner) of an original layout-design. ‘Original’ means the layout originates from the author,
although it may apply old concepts in a new way. Process of registration:
a) Filing of application in writing to the registrar in the office of SICLD registry in a prescribed
form along with 3 sets of drawings produced to the plotter which describes the layout design
and 3 sets of photograph of masks used for the fabrication of the semiconductor integrated
circuits by using of the layout design or drawings which describes the pattern of such masks.
b) Acceptance of the application with acknowledgement by way of returning one copy of the
application. The registrar can also withdraw the acceptance if the application is found to be
prohibited for registration.
c) The application is advertised in a prescribed manner within 14 days of acceptance of layout
design application. If any opposition is found to the registration, then a notice is sent to the
registrar in the prescribed manner within 3 months from the date of advertisement. The
registrar is required to serve a copy of the notice to the applicant, who may then, send a
counter statement of the grounds on which he relies, within 2 months from the receipt of
notice. The registrar can call for evidences to be produced by both the parties and finally give
his decision.
d) If the application is not opposed or the opposition has been decided in favor of the applicant,
the registrar shall register the said layout design in the register of layout design and also issue
a certificate sealed with the seal of the SICLD Registry. The date of making the application is
considered to be the date of registration of the layout design. After registration, the registrar
issues certificate of the registration sealed with the seal of the registry.
Duration of registration: The registration of the layout design shall be only for the period of 10
years counted from the date of filing an application for registration or from the date of first
commercial exploitation anywhere in any country, whichever is earlier.
Effect of registration: The registration of the layout design gives to the registered proprietor of
the layout design the exclusive right to the use of the layout design and to obtain relief in respect
of infringement. This right shall be available to the registered proprietor of that layout design
irrespective of the fact as to whether the layout design is incorporated in an article or not. Once
the layout design is registered,
[No flowchart was available]

Question 20) How many types of varieties of plants are there under the act & what is the
duration of right?
Answer: Under India’s Protection of Plant Varieties and Farmers’ Rights (PPV&FR) Act, 2001,
the law recognizes three main categories of varieties eligible for registration: Extant varieties,
New varieties, and Essentially Derived varieties (EDVs).
a) Extant Varieties: These are varieties already existing in the country as of the Act’s
commencement. This includes varieties officially notified under the Seeds Act or farmers’
(traditional) varieties known through common knowledge. Extant varieties can still be
registered to grant formal rights, but they are not ‘new’ in the novelty sense. An extant
variety can be registered under the Act if it conforms to the criteria for distinctiveness,
uniformity and stability. Thus novelty is not considered while going for the protection of
plant varieties.
b) New Varieties: A new variety is one not known or commercialized before; typically it means
not sold for the prescribed period (less than one year in India, or not earlier than 4–6 years
abroad). A true invention by a breeder. A new variety can be registered under the Act if it
conforms to the criteria for novelty, distinctiveness, uniformity and stability.
c) Essentially Derived Varieties (EDVs): These are varieties that are predominantly derived
from an existing protected variety (initial variety), retaining most of the original variety’s
characteristics, with only minor changes. EDVs can be registered, subject to permission of
the initial variety’s owner unless they are sufficiently distinct. For all these categories, the
Act grants a breeder’s right upon registration.
d) Farmers’ (traditional) varieties are also acknowledged: farmers have the right to register a
variety they have cultivated or conserved, and can claim certain benefits, although these are
typically treated under ‘extant’ or special forms of registration. : Under section 2 (l) farmers
variety means a variety ‘which has been traditionally cultivated and evolved by the farmers in
their fields’.
Duration of Rights: The period of protection depends on the plant type. For field crops (grains,
vegetables, etc.), the initial term is 6 years from the date of grant, renewable once for another 9
years, totaling 15 years . For trees and vines, the initial term is 9 years, renewable up to 18 years
total . After these periods, the rights lapse.
a) For trees and vines (Perennials) - 18 years from the date of registration of the variety.
b) For other crops (Annuals) – 15 years from the date of registration of the variety.
c) For extant varieties – 15 years from the date of notification of that variety by the Central
Government under section 5 of the Seeds Act, 1966
In summary, three main types (Extant, New, Essentially Derived) are protected under PPV&FR .
The protection spans up to 15 years for crops and 18 years for trees/vines (6+9 or 9+9 years
respectively) . This encourages breeders to develop and register new varieties while safeguarding
farmers’ contributions

Question 21) What are the exemption provisions under this act?
Answer: The exemptions under the act are as follows:
a) Farmers’ exemption: the farmer shall be entitled to produce, save, use, sow, resow, exchange,
share or sell his farm produce including seed of a variety protected under this act
b) Researchers’ Exemptions: researchers are allowed to use the registered variety for conducting
experiments & use the variety as an initial source of variety for the purpose of creating other
varieties.

Question 22) What is the special requirement for registration of varieties under the act?
Answer: A crucial requirement under the PPV&FR Act is that any candidate plant variety must
satisfy the ‘DUS’ criteria – it must be Distinct, Uniform, and Stable. In other words, the variety
must be novel (distinct from any other known variety), uniform in its relevant characteristics, and
stable (these traits remain unchanged through repeated propagation) . Additionally, it must meet
the standard for a ‘new’ variety under the Act (e.g. not commercially available beyond the
allowed grace period). This DUS test is a special registration requirement: applicants must
submit seed samples and data, and the variety undergoes field trials at authorized centers to
confirm these properties . If a variety fails any DUS criterion, it cannot be registered. Thus, the
special requirement is essentially that the variety demonstrates novelty, distinctiveness,
uniformity and stability in its characteristics . Once these conditions are satisfied (often after
multi-season testing), the Authority may accept the variety for registration.
a) Distinct: A variety is said to be distinct if it is clearly distinguishable by at least one essential
characteristic from any other variety whose existence is a matter of common knowledge in
any country at the time of filing an application.
b) Uniform: A variety is said to be uniform, if subject to the variation that may be expected
from the particular features of its propagation it is sufficiently uniform in its essential
characteristics.
c) Stable: A variety is said to be stable if its essential characteristics remain unchanged after
repeated propagation or, in the case of a particular cycle of propagation, at the end of each
such cycle.

Question 23) What is compulsory license? What are the grounds for it?
Answer: A compulsory licence in patent law is an authorization granted by the patent authority
(Controller general) to a third party to use a patented invention without the patentee’s consent.
This concept is recognised bpth at national as well as international levels, with express mentions
in the TRIPS agreement as well as the Indian Patent Act, 1970. In India, a person may apply for
a compulsory licence after 3 years from the grant of a patent (Sec. 84), on specific grounds. The
statutory grounds are :
a) Public requirements not met: The reasonable requirements of the public with respect to the
patented invention have not been satisfied. For example, if demand for the patented product
is high but the patentee does not supply enough.
b) Affordable price: The patented invention is not available to the public at a reasonably
affordable price. If a drug, for example, is priced too high, the Controller may issue a licence
so generic competitors can produce it cheaper.
c) Working in India: The patented invention is not worked in the territory of India (i.e., not
manufactured or used in India) on a commercial scale. If the patentee has not introduced or
sufficiently produced the patented product in India, this ground is met.
If the Controller is satisfied that any of these conditions exist, he may grant a licence on suitable
terms . The Act also requires the applicant to show ability to work the invention and an attempt
to obtain a voluntary licence on reasonable terms (unless national emergency, etc.).
In summary, a compulsory licence is a forced licence imposed by the government when it finds
that a patentee is not serving public interest. The statutory grounds are failure to meet public
demand, excessive price, or non-working in India . Examples include the Nexavar (Bayer v.
Natco) case, where a compulsory licence was granted because demand was unmet and price
unaffordable.

Question 24) What kind of remedies are available in an infringement suit?

Answer: In a patent infringement lawsuit in India, the patentee (or exclusive licensee) can seek
the following remedies from the court:
a) Injunction: A court can grant an injunction to prevent the infringer from continuing the
infringing act (e.g. manufacturing or selling the infringing product). Injunctions can be
temporary (interim) or permanent.
b) Damages or Account of Profits: At the plaintiff’s option, the court can award either monetary
damages (compensation for losses) or an account of profits (the infringer’s profits made from
the infringement) . The patentee chooses which remedy.
c) Delivery/Destruction of Goods: The court may order that infringing goods, as well as
materials and implements predominantly used to create the infringing goods, be seized and
destroyed or forfeited . This prevents further circulation of infringing copies.
These remedies aim to stop the infringement and compensate the patentee. The court has
discretion on terms (e.g. costs, conditions) but typically injunctive relief and monetary relief are
granted if infringement is proven. For example, if a patent on a drug is infringed by an
unauthorized copy, the court may permanently enjoin the copying company and award the patent
owner damages or profits earned . Thus, the patentee’s legal toolbox includes injunctions,
damages/account, and destruction of infringing materials.
Question 25) What is the nature of IPR?
Answer: Intellectual Property (IP) is fundamentally intangible – it protects non-physical
creations of the mind such as inventions, literary works, symbols, and designs . The nature of IP
is that it is non-material: it does not protect the underlying idea itself (for example, the concept of
a story or the scientific principle), but rather the specific expression or application of that idea.
This intangibility means IP cannot be physically held or touched; instead it exists in legal rights
granted by law. Despite its non-physical form, IP is treated as a form of property – it is legally
enforceable and confers exclusive rights on the owner. In practice, an IP right is akin to a bundle
of entitlements: the right to exclude others from using the IP, and the right to license or sell it.
For example, a patent gives the inventor the exclusive right to make or sell the invention. These
rights are statutory monopolies granted for a limited time. The IP owner can sue for infringement
if others use the creation without permission. Characteristics of the nature of IPR:
a) Intangible Rights over Tangible Property: IP’s intangibility is the primary characteristic that
sets it apart from other types of property. Although there are many significant differences
between the various types of IP, one characteristic they all share is the establishment of
property protection over intangible objects like ideas, inventions, signs, and information as
opposed to close relationships and other intangible assets, which are tangible objects. When
works are exploited for commercial purposes, it enables the creators or owners to profit from
their creations.
b) Right to sue: IP is a resource that can be owned and managed, to use the language of the law.
The majority of intellectual property is challenged through legal rights of action that can only
be carried out by people who have legal standing. Since intellectual property (IP) is a
property right, it can be inherited, purchased, gifted, sold, licenced, entrusted, or pledged.
Subject to certain restrictions, the owner of an IPR owns a sort of property that can be used
however they like. They also have the legal right to sue anyone who uses their innovation
without their permission and to be compensated with actual property.
c) Rights and Duties: IP results in both obligations and property rights. The owner of the IP is
entitled to carry out specific tasks in connection with his creations. He has the sole authority
to create, copy, sell, and otherwise exploit the work. Additionally, there is a negative right
that bars others from using their statutory rights.
d) Coexistence of different rights: In relation to a specific function, various IPR kinds may
coexist. For instance, an image of an innovation might be copyrighted and the invention itself
might be patented. A design may be included in a trademark and may also be protected under
the Design Act. The numerous rights that can coexist in IP share many similarities and
distinctions. For instance, there are similarities between a patent and an industrial design, a
trademark and a geographical indicator, and so forth. Some of the rights related to intellectual
property are positive rights, while the others are negative rights.
e) Exhaustion of rights: The doctrine of exhaustion generally applies to intellectual property
rights. Exhaustion fundamentally means that after the first sale made by the right holder or by
the authority designated for its exhaustion, that person’s right expires and he is no longer
permitted to halt the movement of the goods moving forward. As a result, once an IP rights
holder has sold a physical good that bears IPRs, it cannot stop subsequent sales of the good.
The first consent marks the end of the right. This theory is founded on the idea of free
movement of products, which is legitimate by the owner’s permission or right. It is prohibited
to use the exclusive selling privilege in connection to the same items twice.
f) Dynamism: IPR is undergoing continual improvement. The realm of IP is expanding as
quickly as technology in all spheres of human activity. New things are being added to the IPR
scope and the scope of its protection is being enlarged in accordance with the demands of
scientific and technical advancement. Biopatents, Software Copyrights, and Plant Diversity
Protection are just a few examples of terms that highlight recent advancements in the IPR
area. The value of intellectual property and its portability has long been recognised, and it is
represented in all spheres of government, including legislative, administrative, and judicial
levels.

Question 26) How many IPR’s are there?

Answer:
Serial No. Kind Statutory Provision Definition
1. Patent Section 2 (1) (m) of A patent is an exclusive right granted for
the Patent Act, 1970 an invention — a product or process that
provides a new way of doing something
or offers a new technical solution to a
 problem.
2. Trademark Section 2 (1) (zb) of A trademark is a mark capable of being
the TM Act, 1999 represented graphically and
distinguishing the goods or services of
one person from those of others —
includes words, logos, symbols, or
combinations thereof.
3. Copyright Section 14 of the Copyright is the exclusive legal right to
Copyright Act, 1957 reproduce, publish, perform, adapt, or
translate a literary, artistic, musical, or
dramatic work or a cinematograph film
or sound recording.
4. Industrial Section 2 (d) of the A design refers to the features of shape,
Design Designs Act, 2000 configuration, pattern, ornament, or
composition of lines or colours applied to
an article by any industrial process,
which appeal to and are judged solely by
the eye.
5. GI Section 2 (1) (e) of the A geographical indication is an
The Geographical indication identifying goods as
Indications of Goods originating from a specific territory,
(Registration and region, or locality where a given quality,
Protection) Act, 1999 reputation, or other characteristic of the
goods is essentially attributable to that
origin.
6. Semi Section 2 (h) of the This protects the layout designs
Conductor The Semiconductor (topographies) of integrated circuits,
Integrated Integrated Circuits which are the three-dimensional
Circuits Layout-Design Act, configurations of electronic circuits used
Layout Design 2000 in microchips and semiconductors.
7. Plant Variety Section 2 (za) of the Provides protection to new plant varieties
 and Farmers’ The Protection of that are novel, distinct, uniform, and
Rights Plant Varieties and stable, and recognizes the rights of
Farmers’ Rights Act, farmers and breeders.
2001
8. Trade Secrets No specific statute in Trade secrets refer to any confidential
India — protected business information providing a
through common law competitive edge, such as formulas,
principles of equity, practices, or processes, not generally
contract, and breach known or easily ascertainable.
of confidence.

Question 27) What is the evergreening of patent right? How can it be protected?
Answer: Evergreening is the strategy where patent holders, particularly in industries like
pharmaceuticals, extend their monopoly beyond the original patent term by making minor
modifications to existing products and securing additional patents. These modifications often
include changes in dosage forms, new delivery mechanisms, combinations of existing drugs, or
alternative chemical formulations—none of which may significantly improve the product’s
efficacy or innovation. Common methods of evergreening are as follows:
a) Patent Clusters: Companies may file multiple, overlapping patents that cover different
aspects of the same product, ensuring prolonged exclusivity through a web of intellectual
property claims. This discourages competitors from producing generic alternatives due to the
risk of infringement lawsuits.
b) Patent Thickets: A dense cluster of interrelated patents is created to deter competitors,
making it legally challenging and financially burdensome for them to develop alternative
versions of the patented product. By layering patents over different components of a single
invention, companies make it difficult for rivals to enter the market.
c) Incremental Innovations: Minor modifications, such as changing an active ingredient’s
formulation, can be used to obtain a new patent without substantial improvement in
therapeutic effectiveness. For example, a drug manufacturer may file a patent for a new
coating that alters a pill’s absorption rate, even though it does not change its medicinal
properties significantly.
d) Data exclusivity & Regulatory Maneuvers: Even after a patent expires, companies may
prevent generic competition by restricting access to clinical trial data, thereby delaying
regulatory approvals for generics. In some jurisdictions, pharmaceutical companies can
extend exclusivity by obtaining additional market protections tied to regulatory approval
requirements.
Relevant provisions in Indian Patent Law: India’s Patents Act, 1970, particularly Section 3(d),
restricts patents on modifications of existing drugs unless they demonstrate significant efficacy
improvement. This prevents frivolous patent extensions and encourages genuine innovation.
Section 3(d) has been hailed as a model for ensuring that patent laws do not hinder public access
to critical medications.
Landmark Judgment: A key case in India’s stance against evergreening is Novartis AG v. Union
of India, where the Supreme Court rejected Novartis’s patent application for an updated version
of its cancer drug Glivec. The court ruled that the changes made to the drug did not demonstrate
a significant enhancement in therapeutic efficacy, a requirement under Section 3(d) of the Indian
Patents Act. This landmark decision set a precedent by preventing companies from obtaining
new patents for minor modifications, reinforcing India’s commitment to affordable healthcare
and curbing monopolistic practices in the pharmaceutical industry., ruling that the modification
did not enhance efficacy. This case set a precedent by establishing that minor modifications
without significant benefits to consumers do not qualify for new patents.

Question 28) What are the grounds for opposition of patent rights?
Answer: Opposition and revocation provisions under the Patents Act allow third parties to
challenge a patent application or a granted patent on specific legal grounds. These grounds
ensure that patents only stand if all legal conditions are met. Broadly, the grounds include:
a) Lack of novelty: The claimed invention was already published or known before the priority
date. If the invention is not new, the patent can be opposed or revoked.
b) Obviousness (lack of inventive step): The invention is obvious to a person skilled in the art,
given prior art. An obvious invention is not patentable.
c) Not an invention: The subject-matter is not patentable under law (e.g. abstract ideas, mere
discovery, a method of treatment, etc.).
d) Public prior use: The invention was previously used or known publicly in India before the
patent filing.
e) Wrongful claim to property: The applicant is not the true inventor (e.g. the patent was
obtained by means such as theft or breach of trust).
f) Non-disclosure: The application failed to disclose required information (e.g. biological
source) or misled by false statements (Section 8 in India).
g) Non-working: For revocation, if the patent is not worked (manufactured) in India, or worked
only to an inadequate extent. This can violate the patentee’s duty to make the invention
available.
h) Violation of secrecy obligations: The patented invention violates secrecy laws (like national
security) or is outside the scope of the patent (e.g. an amended claim unsupported by the
spec). These are embodied in the Act. For example, Section 25 lists opposition grounds such
as: invention published in India or abroad, publicly known/used, obviousness, not an
invention under the Act, insufficient disclosure, etc . Similarly, Section 64 provides
revocation grounds including that the patentee obtained it wrongfully, the invention was not
novel or obvious, the patent wasn’t worked in India, and the spec. is not sufficient, among
others

Question 29) What are the grounds for revocation of a patent?

Answer: Patent revocation means the cancellation of the rights granted to a person, by the grant
of a patent. An application for the revocation of a specific patent can be filed by any interested
person, the CG & any person making the counter claim for the infringement of a patent in a suit.
A petition for the same is filed in the IPAB by any of the persons specified. Section 104 of the
Patent Act states that the revocation petition should not be filed in any court that is inferior to the
district court having the jurisdiction to try the infringement suit.
Serial No. Statutory provision Content
1. Section 64 (Grounds 1. Lack of Patentability: The invention is not an
for revocation of a 'invention' per Section 2(1)(j), lacks novelty (due to
patent) prior public use/knowledge/importation), is obvious
(lack of inventive step), or falls under non-patentable
categories (Sections 3 or 4, e.g., atomic energy or listed
 exclusions).
2. Improper Grant/Entitlement: The Patent was granted to
an unentitled person, wrongfully obtained from the true
inventor, or was granted based on false
representation/suggestion or fraud (e.g., in complete
specification amendment).
3. Defective Specification/Claims: Claims are not clearly
or sufficiently defined, not fairly based on the
specification, the specification does not fairly or
sufficiently describe the invention/method, or does not
fully disclose the geographical origin/source of
biological material.
4. Prior Rights: The invention is claimed in another
Indian Patent with an earlier filing or priority date.
5. Non-Disclosure/False Information: Failure to disclose
required information under Section 8 or furnishing
false information.
6. Secrecy Direction Violation: Non-compliance with
secrecy directions (Section 35) or filing outside India
without permission.
7. Non-Utility: The invention is not of any usage, not in
operation, or does not provide desired results.
8. Traditional Knowledge: The claimed invention is based
on traditional knowledge available to any community.
2. Section 65 The Central Government can revoke the Patent only after
(Revocation in cases may revoke a Patent after establishing that the invention
related to Atomic specified in the Patent is related to Atomic Energy. The
Energy) grant of Patent for an invention on Atomic Energy is
restricted as per the provisions of the Atomic Energy Act,
1962. Hence, the Central Government cannot allow the
grant of Patent for an invention related to Atomic Energy
 in India.
3. Section 66 The provision provides that, where the CG is of the
(Revocation of opinion that a patent or the mode in which it is exercised is
patent in public mischevious to the state or prejudicial to the public, the
interest) patent can be revoked. The decision of revocation may be
made after giving the patent holder, an opportunity to be
heard.
4. Section 85 The Patent can be revoked for non-working. Any person
(Revocation by interested or the Government can apply for the Revocation
controller for non of Patent to the Controller with respect to the Patent for
working) which compulsory license is granted. The Patent
Revocation should be filed within two years of the grant of
the compulsory license. The grounds for Revocation are:
a) The invention which is patented is not working the
territory of India;
b) The reasonable requirements of the common public
from the Patent is not being met;
c) The invention which is patented is not available to the
common public at a reasonable, affordable price.

Question 30) What are some Non patentable Inventions?

Answer: The following are not inventions and hence cannot be patented in India:
1) Under Section 3 of the Act:
a) Frivolous or against natural laws: If something is impossible or goes against science, it’s
not patentable.
Example: A machine that claims to make people invisible or a car that runs without any
energy source.
b) Against public order, morality, or harmful: If an invention can be used unethically or
harms life or environment, no patent.
Example: A device to perform theft without detection or a chemical that pollutes the
environment.
c) Mere discovery of scientific principle or natural substance: You can’t patent discoveries —
only inventions that apply them.
Example: • Discovering gravity – Not patentable. • Making a gravity-powered machine –
Patentable.
d) New form or new use of a known substance (without increased efficacy): If it’s just a new
form or new use of something old without improved result, no patent.
Example: • Discovering a new color form of paracetamol with same effect – Not
patentable. • Making paracetamol that works faster or with fewer side effects – Patentable.
Explanation: Salts, esters, polymorphs, metabolites, isomers, etc., of a known substance are
the same substance unless they significantly improve efficacy.
e) Mere admixture (simple combination): Simply mixing two known things without new
properties is not an invention.
Example: Mixing sugar and water → sweet water – Not patentable. But, a new chemical
reaction producing a new compound → Patentable.
f) Mere arrangement or duplication of known devices: If you just put known things together
and they work the same way, no invention.
Example: Attaching a flashlight to a pen – Not patentable.
g) Methods of agriculture or horticulture: Any farming or plant-growing technique cannot be
patented.
Example: A new method to grow faster mango trees – Not patentable.
h) Methods of treatment for humans or animals: mMedical, surgical, or therapeutic treatments
are not patentable.
Example: A new surgical method to replace a heart valve – Not patentable. But, the
instrument used in surgery can be patented.
i) Plants and animals (except micro-organisms): You cannot patent plants, animals, or their
varieties.
Example: A new species of rose – Not patentable. But a genetically modified
microorganism – Patentable.
j) Mathematical or business methods or computer programs per se: A computer program
alone or a mathematical formula cannot be patented.
 Example: A software code for billing system – Not patentable. But, software controlling a
specific machine process – Patentable.
k) Artistic or creative works: Creative works like literature, music, or films are protected by
copyright, not patent.
Example: A movie script or painting – Not patentable.
l) Mental acts or game-playing methods: Rules or methods of doing mental work or playing
games cannot be patented.
Example: A new chess move or game rule – Not patentable.
m) Presentation of information: Ways of presenting information (charts, reports, graphs) are
not inventions.
Example: A new way to display sales data – Not patentable.
n) Topography of integrated circuits: Design or layout of electronic circuits is protected under
Semiconductor Act, not patent law.
Example: Microchip layout – Not patentable.
o) Traditional knowledge: Anything already known or used traditionally is not patentable.
Example: Use of turmeric for healing wounds – Not patentable (as per the famous turmeric
patent case)
2) Section 4 – Atomic Energy Any invention related to atomic energy (as per Section 20(1) of
the Atomic Energy Act, 1962) cannot be patented for national security reasons. Example: A
new process for producing nuclear fuel – Not patentable.

Question 31) Caselaws: Pharma Patent Litigation & Novartis

Answer: Novartis AG Vs. UOI (AIR 2013) Case Analysis:
Name Facts Issues Judgment
Novartis AG Novartis AG held a US patent a) What The Supreme Court
Vs. UOI (AIR (granted on 17 May 2005) for the constitutes a dismissed Novartis’s
2013) beta-crystalline form of the drug ‘known appeal in April 2013.
imatinib mesylate. Novartis filed an substance’ The Court held that
Indian patent application on 17 July under Section the beta-crystalline
1998 in respect of the beta- 3(d) of the form of imatinib
crystalline form of imatinib mesylate Patents Act. mesylate was a new
(the medicine marketed in India as b) What is the form of a known
“Gleevec”). The Indian Patent meaning of substance (imatinib
Office (Chennai) refused the ‘efficacy’ for mesylate) and that the
application on the basis that it was the purposes of evidence did not show
not patentable under Section 3(d) of Section 3(d). a significant
the Patents Act, 1970, since it was c) Whether an enhancement in
held to be a modification of a known increase in therapeutic efficacy as
substance and did not demonstrate bioavailability required under Section
enhanced therapeutic efficacy. (or other 3(d). The Court
Novartis then challenged the improved interpreted “efficacy”
decision — first in the Madras High properties) under Section 3(d) to
Court (seeking to declare Section qualifies as mean therapeutic
3(d) unconstitutional and enhanced efficacy in the case of
incompatible with the TRIPS ‘therapeutic medicines, and held
Agreement), then before the efficacy’ that mere
Intellectual Property Appellate Board d) Whether the improvements in
(IPAB) which rejected the claimed properties such as
application, and ultimately the case invention (the stability, flowability or
reached the Supreme Court of India. beta-crystalline bioavailability
form of (without evidence of
imatinib enhanced therapeutic
mesylate) is efficacy) are not
sufficiently sufficient. The Court
more effective also noted that while
than the known an increase in
substance bioavailability may
(imatinib qualify as enhanced
mesylate) to therapeutic efficacy if
satisfy Section supported by
3(d) and evidence, in this case
thereby be Novartis had not
 patentable furnished sufficient
proof of such increase
in therapeutic effect.

Question 32) What is the definition of ‘original’ under the designs act?
Answer: The concept of originality under design law is primarily governed by the Designs Act,
2000. Section 2(g) defines an “original” design as one that is new or original and has not been
previously published in any country. A design must originate from the author and should not be a
mere imitation of an existing design. Originality, therefore, implies that the design owes its
origin to the author’s own skill and effort and is not copied from another source. The originality
requirement serves as the foundation for registration under Section 5 of the Act, ensuring that
only genuinely novel designs are granted statutory protection. Under design law, originality does
not demand absolute novelty in every element. Rather, it requires that the combination,
arrangement, or overall visual impression of the design must be the result of independent
creation. Even if a design incorporates known features, it can still be original if the author has
exercised creative skill and produced a distinctive visual appeal. The focus is on the aesthetic
aspect that pleases the eye, as the design must be judged primarily by what is visible on the
finished article. Hence, originality is a test of visual distinctiveness coupled with creative effort.
 In Microfibres Inc. v. Girdhar Co. (2006), the Delhi High Court clarified that originality
under design law is distinct from originality under copyright law. It must be assessed strictly
within the framework of the Designs Act, 2000.
 In Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd. (2008), the Supreme Court held that
where a design is created independently by an author and has not been published or used
earlier, it qualifies as original. The Court reinforced that originality flows from the author’s
own creation rather than from mere novelty.
 In M/s Brighto Auto Industries v. Shri Raj Chawla (1976), the Bombay High Court
observed that originality refers to the author’s own conception and may exist even if certain
features of the design are already known, as long as the combination results in a new
appearance.
 In Veeplast Houseware Pvt. Ltd. v. Bonjour (2011), the Delhi High Court stressed that to
qualify as original, a design must be sufficiently distinct so that it would not deceive the eye
of a customer.

Question 33) What is the concept of ‘Piracy’ under the Design Act?
Answer: Piracy of a registered design refers to the unauthorised use or imitation of a design that
has been validly registered under the Designs Act, 2000. It is essentially the infringement of the
exclusive rights conferred by registration. The law identifies piracy both where there is deliberate
copying (fraudulent imitation) or where imitation is so close that it amounts to an “obvious
imitation”. Piracy may also occur when an article incorporating the registered design is imported
for sale without the consent of the design-owner. Under Section 22 of the Designs Act, the owner
of a registered design has rights to prevent others from making, selling or importing articles
which bear fraudulent or obvious imitations of that design. The law distinguishes between
fraudulent imitation and obvious imitation. A fraudulent imitation implies an intention to deceive
— the infringer knowingly replicates the design so as to pass it off as the registered design. An
obvious imitation refers to copying with only slight modifications, such that the resemblance
remains sufficiently close as seen by an ordinary observer. Even if the infringer argues minor
changes, if the overall look closely replicates the registered design, it may qualify as obvious
imitation.
 Dabur India Limited v. Rajesh Kumar & Others (Delaware): The case concerned bottles of
‘Dabur Amla Hair Oil’ registered under the Design Act. The plaintiff alleged that the
defendants produced imitation bottles copying its registered design. The Court analysed the
design features and held that the plaintiff did not sufficiently establish originality or
distinctiveness in its registration certificate; hence infringement was not upheld
 Disney Enterprises Inc. v. Prime Housewares Ltd. (2014, Delhi High Court): In this suit,
Disney challenged the manufacture of certain character-based designs used by Prime
Housewares. Although the primary issue in that litigation related to trademark, design rights
were also implicated in refusing unauthorised use of character designs.
 Britannia Industries Ltd. v. Sara Lee Bakery (Madras High Court): The plaintiff claimed
piracy of a registered design for its “Milk Bikis Milk Cream” cookie shape (face-feature
 design). The Court compared the designs and held that although superficially similar, the
differences in shape and packaging were sufficient to deny infringement.

Question 34) Does the patent office keep information of the invention secret? If yes, how?
Answer: Yes, under Indian patent law, the Patent Office is required to maintain confidentiality of
inventions before they are published. The obligation arises mainly under Sections 35 to 42 of the
Patents Act, 1970 and the Patents Rules, 2003. These provisions empower the Controller of
Patents to prohibit or restrict the publication or communication of certain inventions in the
interest of national security or before formal publication of the application.
 Confidentiality before publication: When a patent application is filed, the complete
specification is kept confidential by the Patent Office until it is formally published under
Section 11A, which usually occurs after 18 months from the date of filing or priority,
whichever is earlier. Until this period, the application and all related documents remain secret
and are not open to public inspection. This ensures that the inventor’s disclosure is protected
from misuse or premature exploitation.
 Secrecy Directions for sensitive information: Under Section 35, if the Controller believes that
an invention is relevant for defence purposes or may affect national security, they must issue
secrecy directions. In such cases, the invention is not published, and no patent is granted
without prior written permission from the Central Government. The applicant and anyone
involved are prohibited from communicating the invention or its details to any unauthorized
person or foreign entity. These directions may later be revoked under Section 38 when the
Government deems that secrecy is no longer necessary.
 Control over foreign applications: Under Section 39, Indian residents cannot file patent
applications abroad without prior permission from the Controller if secrecy directions are in
force. This restriction ensures that sensitive technological information does not leak to
foreign jurisdictions and remains within government control. Violation of this provision
constitutes an offence under Section 118 of the Act.
 Access & Publication Post Secrecy: Once the secrecy period ends or the application is
published under Section 11A, the documents become accessible for public inspection under
Section 11B and Rule 27 of the Patents Rules. However, even post-publication, certain
 internal communications or documents marked as confidential under the Official Secrets Act,
1923, remain protected.

Question 35) What kind of protection is provided in Patent & Design?

Answer: The protection offered under Patent Law and Design Law in India arises from two
distinct legislations — the Patents Act, 1970 and the Designs Act, 2000. While both confer
exclusive rights to creators, their scope and nature of protection differ. Patent law safeguards the
functional or technical aspects of an invention, whereas design law protects the aesthetic or
ornamental features of an article that appeal to the eye.
 Protection under Patent Law: The Patents Act, 1970 grants protection to inventions that are
new, involve an inventive step, and are capable of industrial application. Once a patent is
granted, the patentee enjoys an exclusive right to make, use, sell, offer for sale, and import
the patented invention in India. This protection prevents others from commercially exploiting
the invention without the patentee’s consent. The duration of patent protection is 20 years
from the date of filing of the application, as provided under Section 53. During this period,
any unauthorised making, using, selling, or importing of the patented product or process
constitutes infringement under Section 48. The patentee may seek legal remedies such as
injunctions, damages, or accounts of profits under Sections 108 and 109 of the Act. Thus,
patent protection rewards innovation by granting a time-limited monopoly in exchange for
public disclosure of the invention.
 Protection under the Designs Act: The Designs Act, 2000 provides protection for original
designs that relate to the shape, configuration, pattern, ornamentation, or composition of lines
or colours applied to an article by any industrial process. Unlike patents, design protection
concerns visual appearance and aesthetic appeal, not the function or method of construction.
Once registered, the proprietor of the design obtains the exclusive right to apply the design to
any article in the class for which it is registered. This prevents others from making, selling, or
importing articles bearing a fraudulent or obvious imitation of the registered design, as
prohibited under Section 22 of the Act. The term of protection is 10 years from the date of
registration, extendable by another 5 years upon renewal under Section 11. In cases of piracy
or infringement, the registered proprietor may seek statutory compensation up to ₹50,000 per
 design or institute a civil action for damages and injunction. The aim is to ensure that creators
of novel aesthetic designs are rewarded for their creativity and investment.

Question 36) What is the Definition of ‘Article’ under the Designs Act?
Answer: The term ‘article’ is defined under Section 2(a) of the Designs Act, 2000. It means “any
article of manufacture and any substance, artificial or natural, or partly artificial and partly
natural, and includes any part of an article capable of being made and sold separately.” In simple
terms, an article refers to any tangible product that can be made by an industrial process and is
capable of independent sale. The design protection applies to the visual features—such as shape,
configuration, pattern, or ornamentation—of such an article. For example, a bottle, chair, or
mobile phone casing qualifies as an article. However, design protection does not extend to
mechanical or functional aspects; it is confined to the aesthetic features that appeal to the eye.

Question 37) When is an application for patent not published?

Answer: Under Section 11A of the Patents Act, 1970, every patent application is ordinarily
published after 18 months from the date of filing or priority, whichever is earlier.
Exceptions: However, publication does not take place in the following circumstances:
1. Withdrawal before publication: If the applicant withdraws the application within 15 months
from the date of filing or priority, it is not published.
2. Secrecy directions: Under Section 35, if secrecy directions are imposed by the Controller in
the interest of national security, the application remains confidential and is not published
until such directions are revoked.
3. Prohibition under law: If the invention relates to atomic energy or other matters excluded
under Section 4 of the Act, publication is barred.
Thus, non-publication ensures that sensitive or withdrawn inventions remain confidential and are
not disclosed to the public domain.

Question 38) Exemptions from Infringement in the use of patented articles?

Answer: The Patents Act, 1970 recognises certain acts that do not amount to infringement even
when a patented invention is used without the permission of the patent holder. These are
contained under Section 47, Section 107A, and related provisions, ensuring that public interest
and research are not hampered. Examples:
1. Use for Government Purposes (Section 47): The Government or any authorised person may
make, use, or import a patented invention for government purposes—such as research,
education, or defence—without it being considered infringement.
2. Experimental or Research Use (Section 47 and 107A(a)): Any use of a patented invention for
experiment, research, or educational purposes is exempt. This allows researchers to study or
improve upon the invention without violating patent rights.
3. Bolar Exemption (Section 107A(b)): The manufacture, use, or sale of a patented product
solely for obtaining regulatory approval (for example, drug trials before expiry of patent)
does not constitute infringement. This enables generic manufacturers to prepare for market
entry immediately after patent expiry.

Question 39) Duration & Renewal of Design Registration

Answer:
a) Initial Duration: Under Section 11(1) of the Designs Act, 2000, the registration of a design is
valid for 10 years from the date of registration.
b) Renewal: The term may be extended by an additional 5 years upon application to the
Controller before the expiry of the initial term, as provided under Section 11(2). The
applicant must pay the prescribed renewal fee for this extension.
c) Effect: Therefore, the maximum protection period for a registered design is 15 years. Upon
expiry, the design enters the public domain and may be freely used by others. This limited
term ensures a balance between the designer’s exclusive rights and public access to creative
designs.