40 RESEARCH METHODOLOGY & IPR

MODULE 4

Copyrights and Related Rights

Copyrights refer to the legal rights provided by law to the original creator of the work in the fields of literature
and computer software. The Related Rights encompass the author’s work in the fields of dramatics, sound recording,
film/video recordings, paintings, architecture, etc. Copyrights and Related Rights are one of the categories of IP and
governed by the Copyright Act, 1957 of India. This Act provides rights of reproduction, communication to the masses,
adaptation and translation of the work. The words author and work need to be understood from the perspective of
Copyrights. The term ‘author’ refers to an individual who develops the content (of work). The author can be a writer
(literary work), computer programmer (software), composer (musical work), producer (cinema films, sound
recording), photographer (photos). The term ‘work’ is a task undertaken in the fields of literature, dramas, music,
artistic, cinematograph film and sound recording.
Classes of Copyrights

In India, following classes of Copyrights exist:

 Literature: Books, Essays, Research articles, Oral speeches, Lectures, Compilations, Computer Programme,
Software, Databases.
 Dramatics: Screenplays, Dramas.
 Sound Recordings: Recording of sounds regardless of the medium on which such recording is made e.g. a
Phonogram and a CD-ROM.
 Artistic: Drawing, Painting, Logo, Map, Chart, Photographs, Work of Architecture, Engravings, and
Craftsmanship.
 Musical: Musical notations, excluding any words or any action intended to be sung, spoken or performed
with the music. A musical work need not be written down to enjoy Copyright protection.
 Cinematograph Films: Cinematograph Film is a visual recording performed by any medium, formed
through a process and includes a sound recording. For example, Motion Pictures, TV Programs, Visual
Recording, Sound Recording, etc.

Criteria for Copyright

To qualify for Copyright protection, a work must exist in some physical (or tangible) form. The duration of
the existence of the physical form may vary from a very short period to many years. Virtually any form of expression
which can be viewed or listened to is eligible to qualify as Copyright. Even hurriedly scribbled notes for an impromptu
speech are considered copyrightable material.

The Copyright work has to be expressed by the creator in his frame of thought. In other words, the work
has to be original i.e. the author created it from independent thinking void of duplication. This type of work is termed
as an Original Work of Authorship (OWA). It may appear similar to already existing works but should not be the
same. The original work may lack quality or quantity or aesthetic merit or all these parameters; still, it will pass the test
of copyrightable work.

In addition to originality for the work, Copyright protection also requires at least some creative effort on the
part of the author. There is no minimum limit for the extent of creativeness. It is a subjective matter. The minimal
level of creativity needed for Copyright protection depends on the judgment of the evaluator (adjudicated by the
Office of Registrar of Copyright). As an example, mere changing the dimensions of a book will not be granted
Copyright protection. Similarly, an address book of alphabetically arranged telephone numbers does not qualify for
Copyright protection as it involves a straightforward alphabetical listing of phone numbers rather than a creative
selection of listings.

Ownership of Copyright

The Copyright laws clearly state the ownership of Copyright.

 The person who created the work is considered as the first (original) holder (owner) of the Copyright.
 In case the author is an employee and has been contracted to do the work by a proprietor (of the
company/firm/society /organization, etc.), the owner of the Copyright shall be the proprietor.

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 The government will be the primary owner of the government work in the absence of any kind of
arrangement.
 The person delivering a speech is the first owner of the Copyright.
 To obtain permission to use copyrighted material, a request for the same should be made to the legal owner
(of the copyrighted material), which could be the original author, the legal heir (in case of the death of the
author), publisher, etc. The request must mention the following:
 Title, author and/or editor, and edition.
 Precise material to be used.
 The number of copies.
 The purpose of the material e.g. educational, research, etc.
 Form of distribution e.g. hard copy to classroom, posted on the internet.
 Whether the material is to be sold e.g. as part of a course pack.

Copyrights of the Author

The Copyrights of the creator/author are legally protected under Section 14 of the Copyright Act, 1957. The
content (i.e. work) created by the author cannot be used or published by anyone without the author’s consent.
Copyrights provide exclusive rights to the author in the areas of publication, distribution, and usage. A Copyright
owner enjoys two types of rights i.e. Economic Rights (or Proprietary Rights) and Moral Rights (or Personal Rights).
Economic Rights are associated with financial benefits accruing from the sale of copyrights. As per the Act, Copyright
owners can authorize or prohibit:

 Reproduction of the work in any form, including printed publications or sound recordings.
 Distribution of copies of the work.
 Public performance of the work.
 Broadcasting/communicating the work to the public.
 Translating the work into other languages.
 Adaptation of the work, such as converting a novel into a screenplay.

Moral Rights include Right of Paternity and Right of Integrity. The Right of Paternity - even if the Copyright
has been licensed to another party, the original author of the work retains the right to claim authorship i.e. the name
of the author/s will remain even though Copyrights have been transferred to another party E.g. a book publisher.
The Right of Integrity - the original author has the right to prevent misuse of the work E.g. alterations/additions/
deletions in work resulting in misrepresentation of the said work or harming the honor and reputation of the author.
It is pertinent to mention that for a work, there can be more than one rights holder, for instance, a musical sound
recording has many rights holders, such as the lyricist, music composer, singer, musicians and sound recorders.
Copyright Infringements

As per the Copyrights Acts, 1957, the following acts are regarded as an infringement of Copyrights:

 Making copies for sale or hire or selling or letting them for hire without permission.
 Permitting any place for the performance of owned work (in public) where such performance constitutes an
infringement of Copyright.
 Distributing infringing copies for trade or to such an extent to affect the interest of the owner of the
Copyright prejudicially.
 Public exhibition of infringing copies for trade purposes.
 Importation of infringing copies.
 Translating a work without the permission of the owner

Liability of Owner of an Auditorium/Hall

The owner of an auditorium/hall is liable for punishment if he knowingly allows his premises to be used for
communication of illegal copyright material (songs, music, dramas, etc.) to the public. If a person permits for profit
any place to be used for communicating the work to the public, where such communication establishes an
infringement of the Copyright unless he was not aware of and had no reasonable ground for believing that such
communication to the public would be an infringement of Copyright, he will be deemed to have committed an offence
under the Copyright Act.

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Copyright Infringement is a Criminal Offence

According to Section 63 of the Copyright Act, 1957, if any person knowingly infringes the Copyright, he
qualifies for the criminal offence. The punishment awarded for the infringement (of Copyright) is imprisonment for
six months with the minimum fine of ₹ 50,000/-. In case of a second and subsequent conviction, the minimum
punishment is imprisonment for one year and a fine of ₹ 1,00,000. There is a dedicated IP division to deal with
Copyright cases. Also, there is a Copyright Board constituted by the Central Government in 1958 to adjudicate certain
claims about Copyright.

Copyright Infringement is a Cognizable Offence

A police officer (rank of a sub-inspector or higher) can confiscate the infringed Copyright material without
issuing a warrant and produce the same in the court of law.

Fair Use Doctrine

Any person not possessing a valid license from the owner of the Copyright is not entitled to exploit the said
work. However, Section 52 of the Copyright Act, 1957, provides for certain exceptions to the infringement of
Copyright. As per the rule of law, Copyrighted materials cannot be used by anybody without the proper consent of
the legal owners (of the Copyright). However, limited use of Copyrighted materials for teaching and research purposes
is legally permitted, under The Fair Use Doctrine, which comprises of the four-part test:

 The character of the use - use of the work is purely educational, non-profit and personal
 Nature of the work - The use of work is factual in nature and not imaginative.
 Amount of the portion to be used - permission is not needed if only a small portion of Copyright protected
material is to be used. However, this parameter is debatable now.
 Impact of use on the value of the Copyrighted material - If a small portion of the work is copied and is
not affecting the author’s economic and moral rights, it will be excused from the infringement.

Detailed information on the examples of the Fair Use Doctrine can be accessed from the official website
([Link]

A few examples are listed below:

 If the Copyrighted work is used for personal use i.e. studies or research.
 Quotation mentioned in the Copyrighted work.
 Reporting of current events in the media, such as newspapers, magazines or radios/television.
 Reproduction of the work by teachers or scientific researchers.
 Performance is free of charge by government officials in the performance of their duties e.g. reproduction
of any work for a judicial proceeding or a report of a judicial proceeding.
 Use of any work prepared by the Secretariat of a Legislature.
 Use of the work in a certified copy made or supplied in accordance with any law for the time being in force.
 Making three or less than three copies of a book (including a pamphlet, sheet of music, map, chart or plan).
 Bonafide religious ceremony, including a marriage function

Copyrights and Internet

The twenty-first century is an era of digitization. The Copyrighted data is quickly transmitted via the internet.
This method of data transmission has brought amendments to the existing Copyright laws. One should be careful of
Copyright/fair use principles when downloading material from the internet. There is growing concern about the ability
to pull Copyrighted material from the internet without permission. Note that material may have been placed on the
internet without the author’s permission.

In general, posting material on the internet by the Copyright owner gives an internet user the right to use
that material for his personal use, but he cannot use the work for commercial purposes. Electronic distribution of a
Copyrighted work should mention the statement that ― This work is protected by Copyright laws and is provided for
educational instruction only. Any infringing use may be subject to disciplinary action and/or civil or criminal liability
as provided by law”.

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As per Section 2(o) of the Copyright Act, 1957, Literary Work includes computer programs, tables and
compilations, including computer databases. It is mandatory to supply Source Code and Object Code along with the
application for registration of Copyright.

Non-Copyright Work

The works not under the jurisdiction of Copyrights are as follows:

 The ideas, concepts, and principles themselves cannot be protected under Copyright, only the form in which
they are expressed can be copyrighted.
 Facts, such as scientific or historical discoveries, are not copyright protected. Any fact a person discovers in
the course of research cannot be Copyright protected. For example, an author of a book on Buddhism takes
ten-fifteen years to gather all the necessary materials and information for his work. At a great expense, the
author travels to various museums, libraries and excavations sites. However, after the book is published,
anyone is free to use the underlying facts, provided they express the information on their own.
 Copyright does not protect titles, names, slogans, short phrases, short word combinations, methods, or
factual information.
 Certificates are not considered as Copyrightable subject matter as there is not much scope for creativity.
 Digitally created works and Copyrighted works transformed into a digital format and placed on the internet
are Copyright protected.
 The Copyright registration for a website, as a whole, is not possible. However, different
components/rudiments of a website can be granted Copyright registration e.g. computer
programs/software, compilations including computer databases (literary works); photographs, paintings,
diagram, map, chart or plan (artistic works); and works consisting of music including graphical notation of
such work (musical works). However, a separate application for each component of work has to be filed for
seeking Copyright registration.
 A computer or mobile App qualifies for Copyright registration. An application is a complete, self-contained
computer program that is designed to perform a specific task. An App usually has dynamic content and is
designed for user interaction. It may be used directly or indirectly in a computer or handheld electronic
device.
 If someone swipes your picture/song/video from the internet and uses it for their purposes, it is a Copyright
infringement. By the way - the same is true if you nick some else’s material for your purposes.

Copyright Registration

It is not necessary to register a work to claim Copyright. Once a work is created via any medium, the work
receives automatic Copyright safety. In other words, there is no formal request to be submitted to the office of the
Copyright, for acquiring Copyright. Copyright registration does not confer any rights. It is merely a prima facie proof
of an entry in respect of the work in the Copyright register maintained by the Registrar of Copyrights. The certificate
of registration serves as prima facie evidence in a court in cases of disputes relating to ownership or creation of
Copyright, financial matters, transfer of rights, etc. It is advisable that the author of the work registers for Copyright
for better legal protection. In India, Copyrights matters, including Copyright registration, are administered under the
Copyright Act, 1957 and Copyrights Rule, 2013. Below mentioned are prominent forms for copyright registration
([Link]

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Judicial Powers of the Registrar of Copyrights

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

 Summoning and enforcing the attendance of any person and examining him on oath.
 Requiring the discovery and production of any document.
 Receiving evidence on affidavit.
 Issuing commissions for the examination of witnesses or documents.
 Requisitioning any public record or copy thereof from any court or office.
 Any other matters which may be prescribed.

A duly filled application (Form XIV) is submitted to the Copyright Office at the following address: The
Registrar of Copyright, Plot no. 32, Boudhik Sampada Bhawan, Sector 14, Dwarka, New Delhi - 110075. The
application can be submitted by post or online registration through the E-filing facility ([Link]). Any
person who is either an author of the work or assignee of the concerned work can file an application for Copyright.
Usually, it takes around 2-3 months to get the work registered by the Copyright Office. After applying, there is a
mandatory waiting period of 30 days. If any person has any objection to the claim/s made in the application, he can
contact the office of the Registrar of Copyrights. After giving an opportunity of hearing to both the parties, the
Registrar may decide the case in favor or against the author of the work. Once the objections (if any) are cleared, the
application is evaluated by the examiners. If any doubts/queries are raised, the applicant is given ample time (around
45 days) to clear these objections. The elements included in Copyright filing to grant are depicted below in the flow
chart:

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Figure: Flow chart for the process of Copyright registration

Table: Important forms pertaining to Copyrights

Fee Structure

For each work, a separate application form needs to be submitted, along with the requisite fee. The fee is
not reimbursable in case the application for registration is rejected.

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Copyright Symbol

It is not necessary to place the Copyright symbol © with your name and year created near your published or
printed materials - but if you do, it is easier to nail someone for infringement on your Copyright if you go to court.
The important things which may be mentioned as a Copyright mark on Copyright creation are:

 The Copyright symbol © (the letter C in a circle), or the word. Copyright, or the abbreviation ‘Copr’.
 In the case of compilations or derivative works incorporating previously published material, the year with
the date of the first publication of the compilation or derivative work should be mentioned. The year date
may be omitted for pictorial, graphic, sculptural work, greeting cards, postcards, stationery, jewellery, dolls
and toys.
 The name or the abbreviation by which the name can be recognized of the owner of the Copyright, or a
generally known alternative designation of the owner can be mentioned.
 The elements for sound recordings generally require the same three elements, except the symbol is ℗ (the
letter P in a circle) instead.

Validity of Copyright

In general, the validity of Copyright is for 60 years. This period starts either from the year after the death of
the author (in case of literature, dramatic, musical and artistic works) or from the date of publication of the work (in
case of cinematograph films, sound recordings, photographs, posthumous publications, works of government and
works of international organizations).

Copyright Profile of India

A comparative five years (2015-20) study revealed a gradual increase in the number Copyright applications
in the first four years of the study, with a maximum number of applications (21,905) recorded in the 2019-20 period
(Fig. 2.7). The number of applications examined was maximum (34,388) in 2017-18. However, it tapered down to
22,658 in 2018-19 and 19,460 in 2019- 20. A similar trend was observed in the number of Copyright registrations,
with a peak (19,997) observed in 2017-18.

Figure: Copyrights profile (India) for the period 2015-20

Copyright and the word ‘Publish’

A work is considered published when it is in the public domain on an unrestricted basis. For example, a
person writes an article called Life in Himalayas and distributes it to a few individuals and/or societies/organizations
with a restriction not to disclose the contents of the article. Life in Himalayas has not been ― “published” in the
Copyright sense. If the author removes the condition of nondisclosure or posts of this article on the internet (i.e.
public domain), it would be considered as published. It is to be noted that both published and unpublished works can
be registered under Copyright.

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Transfer of Copyrights to a Publisher

The original authors of the Copyrighted work may not have the wherewithal to widely publicize their work.
Usually, they transfer their rights to publishers for financial benefits, which could be a one-time lump sum amount or
royalties or a combination of the two. However, transferring Copyrights unconditionally to the publishers (or anybody
else) may have some repercussions for the owner of the Copyright. A publisher may prevent author/s from displaying
their articles on the institute ‘s websites.
The new owner of Copyright may not even allow the author to revise his work. In other instances, a publisher
might print an insufficient number of hard copies and also does not show interest in uploading the soft copy of the
work on the internet. Hence, one must be careful in signing an agreement with the publishers. The author may not
transfer all the legal rights bestowed upon him as an author. An agreement may be signed permitting only the print
and sale of hard copies by the publishers while retaining digital rights for the said work. An author may also put a time
limit for the printing and sale of the books/articles, etc.

Before the digital era, authors used to rely completely on publishers for the dissemination of their work.
However, in the internet era, the dependency on publishers has almost diminished. The author is in a position to
bypass the publishers and bring his work in to the public domain. But this freedom cannot be enjoyed by those who
are already under the publishing contract. Even though the author has completely and exclusively licensed out his
work, the Copyright Act has a provision under ‘termination of transfer’ to reclaim his Copyright. Under this
provision, certain Copyright agreements can be terminated after 35 years of the agreement. This statutory termination
right applies even though it is not incorporated in the agreement. It is strongly advised that authors must apply their
mind while signing the Copyright agreement.
Copyrights and the Word ‘Adaptation’

In the world of Copyright, the word Adaptation signifies the creation of a similar work based upon
contemporary work. The Copyright Act defines the following actions as adaptations:

a) Transformation of a dramatic work into a non-dramatic work.

b) Changing a literary or artistic work into a drama.
c) Re-arrangement of a literary or dramatic work.
d) Depiction through pictures of a literary or dramatic work.
e) The making of a cinematograph film of a literary or dramatic or musical work.

Copyrights and the Word ‘Indian Work’

Indian work - means a literary, dramatic or musical work provided

 The author of the work is an Indian citizen.

 The work is first published in India.
 In the case of an unpublished work, at the time of the making of the work, the author of the work was a
citizen of India.

Joint Authorship

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

Copyright Society

Many a time, authors and other owners of Copyrights are either unable or lose track of all the uses of their
work, including the collection of royalties, infringement issues, etc. To overcome these hurdles, Copyright Societies
have cropped up. As per Section 33 of the Copyright Act, 1957, a Copyright Society is a registered collective
administration society formed by authors and other owners of the Copyright. Society can perform the following
functions:

 Keep track of all the rights and infringements related to their clients.
 Issue licenses in respect of the rights administered by the society.
 Collect fees in pursuance of such licenses.
 Distribute such fees among owners of Copyright after making deductions for the administrative expenses.

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A Copyright Society can be formed by a group of seven or more copyright holders. The term of registration of a
Copyright Society is for five years. The registered Copyright Societies in India are:

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

Copyright Board

The Copyright Board is a regulatory body constituted by the government, to perform judicial functions as
per the Copyright Act of India. The Board comprises of a chairman and members (2-14) to arbitrate on Copyright
cases. The Chairman of the Board is of the level of a judge of a High Court. As per the Act, the Board has the power
to:

 Hear appeals against the orders of the Registrar of Copyrights.

 Hear applications for rectification of entries in the Register of Copyrights.
 Adjudicate upon disputes on the assignment of Copyrights.
 Grant compulsory licenses to publish or republish works (in certain circumstances).
 Grant compulsory license to produce and publish a translation of a literary or dramatic work in any language
after seven years from the first publication of the work.
 Hear and decide disputes as to whether a work has been published or about the date of publication or the
term of Copyright of a work in another country.
 Fix rates of royalties in respect of sound recordings under the cover-version provision.
 Fix the resale share right in original copies of a painting, a sculpture or a drawing and original manuscripts
of a literary or dramatic or musical work.

Copyright Enforcement Advisory Council (CEAC)

In 1991, the Government set up a CEAC to review the progress of enforcement of the Copyright Act
periodically and advise the Government regarding measures for improving the enforcement of the Act. The term of
the CEAC is three years. The CEAC is reconstituted periodically after the expiry of the term.

International Copyright Agreements, Conventions and Treaties

Any creative work is not protected and enforced automatically worldwide because Copyright laws are
territorial by nature i.e. Laws are valid only in the country in which they have been created. To secure protection to
Indian works in foreign countries, the author needs to apply separately to each country or through dedicated
international Conventions on Copyright and Neighboring (related) Rights, provided a country is a member of such
Conventions. India is a member of the following Conventions:

 Berne Convention for the Protection of Literary and Artistic Works, 1886.
([Link]
 Universal Copyright Convention, 1952.
([Link]
copyright-convention/).
 Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting
Organizations, 1961. ([Link]
 Multilateral Convention for the Avoidance of Double Taxation of Copyright Royalties, 1979.
([Link]
 Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, 1995.
([Link]
 In India, Copyrights of foreign authors, whose countries are members of the Berne Convention for the
Protection of Literary and Artistic Works (1888), Universal Copyright Convention (1952) and the TRIPS
Agreement (1995) are protected through the International Copyright Order

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Interesting Copyrights Cases

 David vs. Macaques, Indonesia, 2011 - In 2011, a UK-based photographer David Slater put his camera
on a tripod in the wildlife sanctuary to click the photograph of Macaques monkeys. The Macaques were very
curious about the equipment and they found the flashlight fascinating. One monkey clicked a selfie
photograph which became very famous and legally controversial on the matter of Copyright. Theoretically,
the monkey is the holder of Copyright as he clicked the photo. Practically, David Slater was the claimant of
the Copyright. The dispute entered judicial quarters between People for the Ethical Treatment of Animals
(PETA) and David Slater. Now, the settlement has been concluded. The photographer i.e. David Slater
withholds the Copyright of the picture for having a substantial contribution, but he would pay 25% of the
royalty share to the wildlife sanctuary where the monkey lives ([Link] [Link]/
wipo_magazine/en/2018/01/article_0007.html).
 ‘Happy birthday to you’ case law - According to the Guinness World Records, 1998, it is the most
recognized song in the English language. The melody of Happy Birthday to You originates from the song
Good Morning to All, which has traditionally been attributed to American Sisters, namely Patty Smith Hill
and Mildred J. Hill, in 1893. The sisters composed the melody of Good Morning to All to make it more
interesting for the children. In 1935, Summy Company registered the Copyright on the Piano Setting on the
Song. In 1999 Warner/Chappell acquired the company and started taking royalty for the happy birthday
song and earned a huge amount. After mediation by the Federal court, Warner Music, through its publishing
subsidiary Warner/Chappell, agreed to pay the settlement to a class of thousands of people and entities who
had paid licensing fees to use the song since 1949 because only the melody was registered and not the lyrics.
Now the song is in the public domain.
 Amitabh Bachchan to lose Copyrights over his father’s works in 2063 - Father of renowned actor Mr.
Amitabh Bachchan, (late) Shree Harivansh Rai Bachchan was a noted poet and Hindi writer. His most
famous work was Madhushaala (1935). He was the recipient of the Sahitya Akademi award and the Padma
Bhushan. He also did Hindi translations of Shakespeare’s Macbeth and Othello. He passed away on 18th
January 2003, at the age of 95. As per the Copyright Act, 1957, the rights over his work will be completed in
the year 2063 (rights remain with the author for his lifetime plus 60 years).

Trademarks

In simple language, a Trademark (or Trade Mark) is a unique symbol which is capable of identifying as well
as differentiating products or services of one organization from those of others. The word “Mark” stands for a sign,
design, phrase, slogan, symbol, name, numeral, devise, or a combination of these. Essentially, the Trademark is
anything that identifies a brand to a common consumer.

Eligibility Criteria

For goods/services to be legally classified as Trademark, they need to pass the following conditions:

 Distinctiveness - The goods and services for which the protection is sought should possess enough
uniqueness to identify it as a Trademark. It must be capable of identifying the source of goods or services in
the target market.
 Descriptiveness - The Trademark should not be describing the description of the concerned goods or
services. Descriptive marks are unlikely to be protected under Trademark law. However, descriptive words
may be registered if they acquire ―secondary meaning‖, such as the brand name ‘Apple’ is used by a USA
based multinational company that manufactures electronic gadgets.
 Similarity to the prior marks - The mark should be unique and should not be having similarity to the existing
marks.

Who Can Apply for a Trademark

Any person who is a proprietor of the Trademark is eligible to apply for registration of Trademark. The mark
can be filed collectively by two or more applicants and for that purpose, support documents need to be submitted.
An organization or association can file for the collective mark and the same can be used by its members. The most
appropriate example for this mark is the ‘Reliance’ symbol, which indicates all products falling under the organization.

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Acts and Laws

In India, Trademarks are governed under The Trademarks Act, 1999

([Link] Trademark rules are
governed by Trademarks Rules, 2002, ([Link]
data/Portal/IPORule/1_56_1_1_59_1_tmr_rules_2002_1_.pdf). The Acts and Rules have been amended from time
to time. The latest amendments were done in 2010 and 2017 for Trademarks Acts and Trademarks, respectively. The
administration of matters pertaining to Trademarks is carried out by the Office of CGDPDTM, GoI.

Designation of Trademark Symbols

 Represents that the Trademark is unregistered. This mark can be used for promoting the goods of
the company.
 Represents that the Trademark is unregistered. This mark can be used for promoting brand services.
 Represents a registered Trademark/Service. The applicant of the registered Trademark is its legal
owner

Classification of Trademarks

Goods and Services under Trademarks are classified as per the Nice Agreement (1957) administered by
WIPO. A total of 149 countries (84 state parties who are signatory to the Agreement and 65 additional states who are
following this classification for the Trademarks) and others (African Intellectual Property Organization, African
Regional IP Organization and Trademark Office of European Union) are using the same Trademark classification.

Trademark classification comprises of 45 classes, out of which 34 are for goods and 11 are for services.
([Link]
[Link];jsessionid=8FBC790A663FAC9092ACCDD9ED1AC65E.ec2t1).

Two examples of the classes are:

Class 1 is for Chemicals for use in industry, science and photography, agriculture, horticulture and forestry;
Unprocessed artificial resins, unprocessed plastics; Fire extinguishing and fire prevention compositions; Tempering
and soldering preparations; Substances for tanning animal skins and hides; Adhesives for use in industry; Putties and
other paste fillers; Compost, manures fertilizers; Biological preparations for use in industry and science.

Class 45 is for legal services; Security services for the physical protection of tangible property and individuals;
Personal and social services rendered by others to meet the individual’s needs. The Vienna codification established
under the Vienna Agreement (1973) is an international classification of the figurative elements of marks. The relevant
Vienna code class can be searched on the link: [Link]
nivilo/vienna/[Link]?lang=EN#.

The classification is used to divide all figurative elements into categories (from 1 to 29), divisions (from 1 to
19) and sections (from 1 to 30). For example, the representation of "a little girl eating" belongs to Category 2 (Human
beings), Division 5 (Children), Main Section 3 (Girls). If auxiliary sections are used, the figurative element can be
identified additionally with the Auxiliary Section 18 (Children drinking or eating, Code A 2.5.18). The codification of
this example will be then indicated as 2.5.3, 18 (main and auxiliary sections).

Registration of a Trademark is Not Compulsory

Although, registration of a Trademark is not compulsory, registration provides certain advantages to the
proprietor of the Trademark, such as:

 Legal Protection – prevents the exploitation of the Registering Trademark by other

companies/organizations/individuals, without proper authorization by the legal owner/s of the Trademark.
In case of legal suits, a registered Trademark can serve as potent evidence of the lawful proprietorship of the
Trademark.
 Exclusive Right - grants the Trademark owner full rights to use it in any lawful manner to promote his
business.
 Brand Recognition - products/ services are identified by their logo, which helps create brand value over
time. A strong brand is a huge pull for new customers and an anchor for existing customers. Registering a
Trademark early and using it will create goodwill and generate more business for the brand owner.

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 Asset Creation - registered Trademark is an intangible property of the organization. It can be used for
enhancing the business of the company as well as drawing new clients and retaining old one by the account
of brand identification. To find out more about Registered Trademarks in India, one may look at
[Link]

It is pertinent to mention that no legal course of action can be taken against the unlawful use of an unregistered
Trademark. For unregistered marks (sometimes known as Common Law Trademarks, which are defined as the law
rights which generally do not require formal registration for enforcement) action can be brought against any person
for the passing off goods or services as the goods or services provided by another person. In such cases, the
unregistered Trademarks have to prove the establishment of goodwill or reputation connected with the goods or
service.

Validity of Trademark

In India, a registered Trademark is valid for 10 years. The period can be extended every 10 years, perpetually.
As per the Indian Trademarks Act, the renewal request is to be filed in the form ‘TM-R’ within one year before the
expiry of the last registration of the mark.

Types of Trademarks Registered in India

Trademark can be a word that must be able to speak, spell and remember. It is highly recommended that
one should choose the Trademark like invented word, created words, and unique geographical name. One should
refrain from Trademarks like common geographical name, common personal name and the praising words which
describe the quality of goods, such as best, perfect, super, etc. To ensure all these characteristics in a Trademark, it is
suggested to conduct a market survey to ensure if a similar mark is used in the market. Following are some examples
of the registerable Trademarks:

 Any name including personal or surname of the applicant or predecessor in business or the signature of the
person e.g. the Trademark BAJAJ is named after industrialist Mr. Jamnalal Bajaj.
 A word having no relevance to the product/services e.g. Trademark INDIA GATE is being used for food
grains and allied products.
 Letters or numerals or any combination thereof e.g. YAHOO is the abbreviation of the phrase – “Yet
Another Hierarchical Officious Oracle”. It has now become a worldwide famous Trademark.

Table: Some of the famous examples of Trademarks

Trademark Registry

In India, the operations of Trademarks are carried out from five cities i.e. Delhi, Mumbai, Ahmadabad, Kolkata, and
Chennai. Each city has been assigned a bunch of states. The businesses located in a particular state can only use the
services of the assigned Trademark Registration Office. In the case of foreign applicants, jurisdiction is based on the
location of the office of the applicant’s agent or attorney.

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Table: Territorial jurisdiction of Trademark registration offices

Process for Trademarks Registration

To seek Trademark registration, the proprietor of the Trademark has to fill an application. The proprietor
may choose to hire an agent to fill and submit the application on his behalf. Before applying, the applicant needs to
conduct a prior art search to ensure the registration criteria.

Prior Art Search - Prior to applying for Trademark registration, it is always prudent to check whether the
intended Trademark is already registered or not. Also, it is ascertained whether the intended Trademark is not similar
to the ones already registered. The requisite search can be carried out using various web portals, such as:

 Public search for Trademarks by CGPDTM - [Link]

 WIPO‘s Global Brand Database ([Link]
 Trademark Electronic Search System (TESS) -
([Link]
 MARKARIA Trademark Search Engine ([Link]
search).
 VAKIL Search ([Link]

Once the prior art search is over and the applicant is convinced about the distinctiveness of the Trademark,
he can proceed to fill the application form for registration (TM-A). The application is filed at the Trademarks Office
subject to the jurisdiction of the applicant. The steps involved in the registration process are as follows:

 After the prior art search has been conducted, the applicant can apply for the registration on his own or with
the help of a certified agent.
 The application is assigned an application number within a few days. The same can be tracked online at
[Link]
 The application is scrutinized by a professional examiner. If everything is in order, the particulars of the
application are published in the official Trademark journal ([Link]
Otherwise, he will send the objections tothe applicant for rectification. Based on the satisfactory response,
the examiner would recommend the revised application to be published in the journal. If the application is
rejected, the applicant may approach the Intellectual Property Division to challenge the rejection of an
application by the examiner.
 Once the Trademark is published in the official journal, the public has an opportunity to file an objection, if
any, within 90 days. After hearing both the parties, the officer decides whether to proceed further for the
grant of Trademark or disallow the grant of Trademark. In case of unfavorable outcome, the applicant has
the right to contest the decision in front of the IPAB.
 Once the application has successfully completed all formalities, a Trademark registration certificate is issued
in the name of the applicant.

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Figure: Flow chart for the process of Trademark registration

One should keep in mind that while filing an application for the registration of a Trademark, an English translation
of the non-English words has to be provided. If the applicant wishes to claim the priority from an earlier-filed
application, he has to provide details like application number, filing date, country and goods/services of that
application.

Table: Fee and forms related to Trademarks

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Important Queries/Facts About Trademarks

Can any correction be made in the application or register?

Yes, the rectifications are possible, but the applicant has to ensure that the corrections made in the Trademark
do not alter its identity significantly.

Can a registered Trademark be removed from the register?

Yes, it can be removed if:

 Trademark was registered without any bona fide intention of using it.
 If the Trademark is not being used for a continuous period of 5 years from the registration date or 3 months
prior to filing the application for registration.
 Registered Trademark was disallowed but inadvertently existed in the official register.
 Trademark Registrar has the power to terminate a registered Trademark on a suo moto basis.

Is the sound or smell registrable as a Trademark?

Yes, sound or smell is registrable as a mark, as long as it is distinct and can be reproduced graphically. The
Trademark, 4711 colognes has been registered as a chemical formula. The sound can be registered as a Trademark,
provided it can be recorded in MP3 format and depicted graphically.

Can a registered user restrain the third party from using an identical or similar mark which is not registered?

There is no clear-cut answer for such situations. It depends on the circumstances of the matter. But
ordinarily, a registered user cannot restrain the third party from using identical or similar marks if the third party has
been continuously using the mark concerning the same goods or services from a date prior to the date of use of the
registered mark or date of registration. According to the Trademarks Act, 1999, the rights and protection in the form
of remedies are not only to the registered mark but also to the unregistered Trademarks. Although, a registered
Trademark has been given a statutory remedy under section 28 of the Act, but 27(2) of the Act provides a remedy for
an unauthorized use of unregistered Trademark. Passing off is a common law tort which is most commonly used to
protect goodwill that is attached to the unregistered Trademarks. The action of passing off is available to both
registered and unregistered Trademarks, but a suit for infringement is available for only registered Trademarks.
Seeking Trademark protection in a foreign country?

To file the Trademark in a foreign country, there are two options available for the applicant. He can either
file the Trademark application with the Trademark Office of the country in which he wishes to seek protection, or he
can use WIPO’s Madrid System through which the registration can be filed in multiple countries by claiming priority
of one of the signatory countries. This priority has to be claimed within six months of the first filing. The applicant
can file a single application for seeking protection in any number of countries that are members of WIPO by paying
a single set of fee. List of jurisdictions that can be accessed through Madrid Protocol for filing Trademark is available
at [Link] wipo.i nt/treaties/en/[Link]?treaty_id=8.

Trademarks Statistics

The figure below represents the statistics for Trademarks (filed, examined and registered) for the period
2010-20. During this period, an increase of 95%, 65% and 154% was observed in the parameters of trademarks filed,
examined and registered, respectively. Overall, a gradual increase was seen in the number of TM filed, but a zig-zag
curve was observed for the TM examined for the period 2010-16. The highest number of TM applications (5,32,230)
were examined in 2016-17 followed by dip (nearly two folds) in the following year (2017-18). The following two years
(2018-20) showed some recovery, with 3,38,551 applications examined in 2019-20. In case of TM registration, first,
five years (2010-15) showed a downward trend. But, a significant leap of nearly four-folds was observed in the next
year i.e. 2016-17. The maximum number of TM (3,16,798) were registered in the year 2018-19.

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Figure: Trademarks profile (India) for the period 2010-20.

International Treaties and Conventions

There is a provision to file an international application for the Trademarks to seek protection in other
Convention countries. The rules and regulations to file international applications in Convention countries are
concluded under the following treaties and agreements administered by WIPO.

 The Madrid Agreement for International Registration of Marks

(1891) ([Link]/treaties/en/registration/madrid/).
 The Nice Agreement for International Classification of Goods and Services
(1957) ([Link]
 The Trademark Law Treaty (TLT) (1994) ([Link] treaties/en/ip/tlt/summary_tlt.html).
 Vienna Agreement (1973) for the Classification of Figurative
Marks ([Link]

Famous Case Law: Coca-Cola Company vs. Bisleri International Pvt. Ltd.

MAAZA, a popular mango fruit drink in India, is a registered Trademark of an Indian company, Bisleri
International Pvt. Ltd. The company transferred the rights (formulation, IPR and goodwill, etc.) to a beverage
company, Coca-Cola, for the Indian Territory. However, in 2008, the Bisleri Company applied for registration
of Trademark Maaza in Turkey and started exporting the product with the mark MAAZA. This was unacceptable
to the Coca-Cola Company and thus filed a petition for permanent injunction and damages for passing-off and
infringement of the Trademark.

It was argued on behalf of Plaintiff (Coca-Cola Company) that as the mark Maaza concerning the
Indian market was assigned to Coca-Cola, and manufacture of the product with such mark, whether for sale in
India or for export, would be considered as an infringement. After hearing both the parties, the court finally
granted an interim injunction against the defendant (Bisleri) from using the Trademark MAAZA in India as well as
for the export market, which was held to be an infringement of Trademark.

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