INTELLECTUAL PROPERTY RIGHTS

UNIT 1
1. INTRODUCTION - Copyright law is an essential aspect of Intellectual
Property protection, which protects the rights of the creators and the authors over
the work produced by their intellectual labour. The purpose of copyright law is
to give legal protection and grant exclusive rights to the creators and authors over
their work, the ability to govern how others use those works and prevent the
reproduction, sale, or any other act over their work without the consent of the
owner of the copyright in that work for a certain period of time. It also permits
the owner of the copyright to assigned the copyright of the work either wholly
or partial to any other person. Additionally, by defending the rights of creators
and authors, it encourages them to invest time and effort in producing new and
valuable works.
MEANING OF COPYRIGHT - Copyright is a form of legal protection that
safeguards the creative expressions of authors and creators, bestowing upon them
exclusive rights over their expressions rather than the underlying ideas. According to
the Copyright Act, copyright is defined as the exclusive authority to perform or grant
permission for specific actions related to their work or a significant portion of it. It is a
form of intellectual property protection that ensures the rights of creators are honoured
and that they may profit from their businesses. In the case, Sulmanglam R.
Jayalakshmi v. Meta Musical, the Madras High Court established that “copyright”
pertains to the rights an individual gains in their intellectual work, be it literary or
artistic.
HISTORICAL BACKGROUND AND EVOLUTION OF COPYRIGHT LAW IN
INDIA
▪ PRE-INDEPENDENCE ERA: In India, copyright law existed even prior to the
independence from British colonial rule, India’s copyright law was influenced
by British legislation. The copyright law in India can be traced to the Indian
Copyright Act 1847, which marked the initial legal framework for copyright
protection in India. The Indian Copyright Act of 1847 was introduced during the
rule of the East India Company. Subsequently, the Imperial Copyright Act of
1911 from the United Kingdom was extended to India as part of the British
dominion. Then in 1914, the Indian legislature enacted the Indian Copyright Act
of 1914, which was the modified version of the Imperial Copyright Act of 1911
for its application in India.
▪ POST-INDEPENDENCE ERA: After Independence in 1947, there was a need
to establish a copyright framework that aligned with the nation’s cultural and
creative aspirations. Consequently, the Indian Parliament enacted the Copyright
Act of 1957. The Copyright Act, 1957 of India replaced both the Indian
Copyright Act of 1914 and the Copyright Act of 1911, as it had been adapted for
India through the Indian Copyright Act. The Copyright Act, 1957 not only
continued to protect literary, musical, and artistic works but also introduced
concepts such as the public domain and copyright duration.
▪ INTERNATIONAL AGREEMENTS: In the late 1990s, India became a
signatory to the Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS). To comply with TRIPS obligations, India amended its copyright
 law in 1999. The amendments extended copyright protection to computer
programs and digital works and introduced provisions on anti-circumvention
measures.
▪ INTERNATIONAL TREATIES: In recent years, India has actively
participated in international copyright treaties to harmonize its copyright law
with global standards. Notably, India signed the WIPO Copyright Treaty (WCT)
and the WIPO Performances and Phonograms Treaty (WPPT) in 2018,
promoting the protection of digital content and performers’ rights.
▪ DIGITAL ERA AND COPYRIGHT ACT, 2012: The rapid growth of the
internet and digital technologies necessitated further changes to copyright law.
The Copyright Amendment Act of 2012 and 2017 addressed issues related to
digital rights management, online infringement, and intermediary liability. It also
included provisions for the benefit of authors and performers, such as the right
to receive royalties and the termination of assignments.
BASIC PRINCIPLES OF COPYRIGHT LAW - The Copyright law is built on a set
of fundamental principles that continue to guide its development and implementation.
▪ Originality: In the realm lf Copyright Law, one of the key requirements for a
work to be eligible for copyright protection is originality. This means that the
work must be the result of the author’s creative effort and not a mere copy of
existing materials.
▪ Fixed Form: Copyright law also mandates that the work must be fixed in a
tangible medium to be eligible for protection. This can include writing,
recording, or saving in digital format. Ideas themselves are not protected; it’s the
expression of those ideas that is safeguarded.
▪ Exclusive Rights: Copyright Law grants creators or copyright holders a set of
exclusive rights, including the right to reproduce, distribute, perform, and assign
their work. These rights enable creators to control how their creations are used,
except for cases like fair use or other legally allowed exceptions.
▪ Limited Duration: Copyright protection has a limited duration, granting the
copyright holder exclusive rights for a specific period, which varies by location.
Typically, it extends for the author’s lifetime plus an additional 50 to 70 years.
In India, these rights endure for the author’s lifetime and an additional 60 years
after their death. After this timeframe, the work becomes accessible to the public,
available for use by everyone.
▪ Fair Use: Copyright law also includes the concept of fair use, permitting
restricted use of copyrighted material without explicit permission. This
allowance applies to purposes such as criticism, commentary, news reporting,
teaching, and research. Fair use is a nuanced and context-dependent concept,
involving considerations like the purpose and nature of the use, the copyrighted
work’s characteristics, the amount used, and its impact on the market.
SALIENT FEATURES OF THE COPYRIGHT ACT, 1957
▪ Scope of rights conferred to the author: Literary works, musical works,
theatrical works, creative works, sound recordings, and cinematographic films
are all protected by copyright under Section 13 of the Copyright Act of 1957.
Literary works, for instance, books, manuscripts, poetry, and theses are
safeguarded by the Act. Original literary, dramatic, musical, and artistic works
 as well as cinematographic and sound recordings are shielded from illegal access
under the Copyright Act of 1957. In contrast to patents, copyright safeguards
expressions rather than ideas.
▪ Provisions to assert the ownership: The original owner of the copyright is the
creator of the work itself, as stated in Section 17 of the Copyrights Act of 1957.
The one exception to this rule is when an employee creates work while
performing duties as part of their employment, in which case the employer
assumes ownership of the copyright.
▪ Civil and criminal remedies: Section 55 of the Copyright Act of 1957 addresses
civil remedies for copyright infringement. These civil remedies encompass
restitution, injunctions, account interpretation, deletion and surrender of copies
made infringing, as well as conversion damages. Section 63 of the Copyright Act
of 1957 specifies criminal penalties for copyright infringement. These criminal
penalties can take the form of jail time, fines, searches, the seizure of contraband,
etc. The maximum sentence for imprisonment is 3 years, but it cannot be less
than 6, and the maximum fine is between 50,000 and 2,00,000 rupees.
▪ Establishment of copyright boards and offices: The Copyright Act of 1957
also makes provisions for the establishment of a copyright board to assist in
resolving copyright-related issues and a copyright office, which comes under the
jurisdiction of the Registrar of the Copyright, for the registration of books and
other “works” of art. The establishment of an office to be known as the Copyright
Office for Act purposes is provided for under Section 9 of the Copyright Act,
1957. The Copyright Board was established under Section 11 of the Copyright
Act of 1957.
LANDMARK CASE LAWS
➢ Tips Industries Ltd. v. Wynk Ltd. and Anr. (2019)
Facts: The Indian music label Tips Industries Ltd. (Plaintiff) has the copyright to a
sizable music archive, and in 2016 it allowed Wynk Music Ltd. (Defendant) permission
to access this archive. Both parties attempted to renegotiate the licensing terms at the
licence’s expiration but were unsuccessful, thus Wynk sought protection under Section
31D of the Copyright Act. Tips contested Wynk’s use of Section 31D and filed a lawsuit
against Wynk under Section 14(1)(e) for violating their exclusive sound recording
rights.
Issue:Whether the Copyright Act has a legislative licensing scheme for streaming
platforms?
Judgment:The Bombay High Court reached a decision after hearing the arguments
from both parties and concluded that Wynk had engaged in direct violation on two
counts: firstly, by making the copyrighted work available under Section 14(1)(e)(ii),
which allowed users to download and subscribe to the plaintiff’s work offline; and
secondly, by making the plaintiff’s works available to users via their streaming platform.
The decision was made in the plaintiff’s direction, and the Court determined that the
plaintiff was eligible for an interim injunction since they had presented a strong case
and would incur severe financial damage.
➢ Sanjeev Pillai v. Vennu Kunnapalli (2019)
Facts: The appellant, director, and screenwriter Sajeev Pillai, asserted to have done a
background study on the great festival of Mamankam and written a script for a film
based on the same epic. He signed a Memorandum of Understanding with the
Kunnapalli-related Kavya Film Company after meeting Venu Kunnapalli. Initially
designated as the director, Sajeev’s position was later removed and filled by someone
else. After that, the movie’s filming was finished, according to Sajeev, who claimed that
his script had been altered, mutilated, and otherwise changed. In light of this, Sajeev
filed a lawsuit and requested a number of reliefs. A request for an interim injunction
was also made to prevent the respondents from publishing, releasing, disseminating,
and exploiting the movie and from releasing pre-release advertising without adequately
crediting Pillai as the author in accordance with film industry norms.
Issue: Whether Section 57(1) of the Copyright Act grant the creator of a work
particular rights to assert authorship of that work even after the assignment of that work?
Judgment: In reaching its decision, the Court stated that Section 57(1) grants the author
the right to enjoin third parties, and its second sub-section grants the author the right to
sue those third parties for damages if their actions result in deformations, destruction,
or other alteration of his work or in any other action related thereto that would be
detrimental to his dignity or reputation. This gave the appellant an unmatched edge in
the situation and ensured that his assignment of the work would preserve his legal claim
to authorship.
➢ LACUNAE - The development of copyright law has a lengthy and complicated
history. It has been in the evolving phase for centuries. This is a result of how
quickly technology is evolving. The old law is becoming obsolete when new
methods are discovered, especially when it comes to non-literal works. Because
copyright infringement is so subjective in nature, it is frequently exceedingly
challenging to come to a verdict on cases involving it. Thus, in order to reduce
this subjectivity and effectively address this issue, we need new regulations that
are specifically related to copyright.
2. INTERNATIONAL TREATIES AND CONVETIONS RELATED TO
TRADEMARK
International treaties and conventions play a pivotal role in shaping copyright laws
globally, providing a framework for protecting intellectual property rights across
borders. The evolution of copyright treaties spans centuries, reflecting the changing
dynamics of creativity, technology, and international relations. This essay delves into
the key international treaties and conventions related to copyright law, exploring their
significance and impact.
▪ Berne Convention for the Protection of Literary and Artistic Works (1886):
The Berne Convention stands as the cornerstone of international copyright law.
Established in 1886, it aimed to ensure that creators receive adequate protection
for their literary and artistic works worldwide. Key provisions of the Berne
Convention include the principle of automatic protection upon creation, the
prohibition of formalities such as registration, and the principle of national
treatment, ensuring that foreign creators receive the same protection as domestic
ones in member countries. Over time, the Berne Convention has undergone
several revisions to adapt to technological advancements and emerging
challenges in the digital era.
▪ Universal Copyright Convention (1952): Recognizing the need to extend
copyright protection beyond the Berne Convention's signatories, the Universal
 Copyright Convention (UCC) was adopted in 1952 under the auspices of
UNESCO. The UCC aimed to provide a simpler framework for international
copyright protection, particularly for countries that were not members of the
Berne Convention. While the UCC lacked some of the Berne Convention's
stringent provisions, it facilitated broader participation and laid the foundation
for global copyright cooperation.
▪ TRIPS Agreement (1994): The Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS) is a landmark agreement under the World
Trade Organization (WTO), establishing minimum standards for intellectual
property protection, including copyrights. TRIPS requires member states to
adhere to the principles of the Berne Convention, thereby harmonizing copyright
laws globally. It also addresses issues such as enforcement mechanisms, dispute
resolution, and the intersection of intellectual property rights with trade policies.
TRIPS significantly influenced the modernization of copyright laws in many
countries, particularly in the context of digital technologies and online
distribution.
▪ WIPO Copyright Treaty (1996): The World Intellectual Property Organization
(WIPO) Copyright Treaty was adopted to address the challenges posed by digital
technologies to copyright protection. It extends the principles of the Berne
Convention to the digital environment, emphasizing the protection of works
transmitted over digital networks. The WIPO Copyright Treaty introduced new
rights for copyright holders, such as the right of distribution and the right of
making available to the public, to combat online piracy and unauthorized
dissemination of copyrighted works. It also mandates effective technological
protection measures to safeguard digital content.
▪ WIPO Performances and Phonograms Treaty (1996): Running parallel to the
WIPO Copyright Treaty, the WIPO Performances and Phonograms Treaty
(WPPT) focuses on the protection of performers and producers of phonograms
in the digital environment. It grants performers rights over their live
performances, extending copyright-like protection to their performances in
digital formats. The WPPT also introduces obligations for member states to
provide legal remedies against unauthorized recording, reproduction, and
distribution of performances and phonograms. Together with the WIPO
Copyright Treaty, the WPPT addresses the evolving landscape of digital content
creation and distribution.
▪ Marrakesh Treaty to Facilitate Access to Published Works for Persons Who
Are Blind, Visually Impaired, or Otherwise Print Disabled (2013): The
Marrakesh Treaty represents a landmark effort to address the challenges faced
by visually impaired individuals in accessing copyrighted works. It obliges
member states to create exceptions in their copyright laws to allow the
production and distribution of accessible format copies of copyrighted works
without seeking prior authorization from rights holders. The Marrakesh Treaty
embodies the principle of inclusivity, recognizing the importance of ensuring
equal access to information and cultural materials for all individuals, regardless
of disabilities.
3. SUBJECT MATTER OF COPYRIGHT
According to Section 13 of Copyright Act, 1957, the following works needed to be
protected. All subject matters protected by copyright are called ‘works.’ The works that
needed to be protected are:
▪ Original Literary Work: This type of work is produced by the mortal mind
which may include a series of verbal or numerical statements, which are able of
being expressed in jotting, and which arrived by the skill, gift, judgement or
creative labour of the mortal brain. The Act handed an inclusive description of
erudite work which also includes workshop from computer programming and
computer databases.
▪ Original Musical Work: As per Brand or Copyright Act, 1957, musical work
means any work conforming of music notes or some graphical notion of similar
work, but it doesn’t include any words or any intention to sing the song or
perform with the music. In order to cover the musical work, it should be noted
that the work is original.
▪ Original Dramatic Work: According to the Copyright Act, 1957, the dramatic
work includes any piece for enumeration, choreographic work or entertainment
in dumb show, the scenic arrangement or acting form of which is fixed in jotting
or else but doesn’t include a cinematographic film. An original dramatic work is
the product of mortal mind which arrived by exercise of independent skill and
creative labour, which also requires acting or dancing for its representation and
is also able of being recorded in jotting.
▪ Original Cultural Work: As per Section 2(c) of Copyright Act, 1957, cultural
work includes any oil, form, delineation, or drawing snap of any work enjoying
cultural rates. still, it also includes the armature and cultural artificer of similar
workshop.
▪ Sound Recordings: Sound recordings weren’t the subject matter of brand
protection previous to the Copyright Act, 1911. The growth of this assiduity in
the manufacture and trade of phonographs redounded in representation being
made to Copyright Committee of 1909 to the effect that similar recorded music
should be defended by brand. According to the Copyright Act, 1957, sound
recordings suggest a recording of sounds from which that sound may be
produced anyhow of the medium on which similar recording is made or
produced.
Section 13(3) of Copyright Act, 1957 provides that brand doesn’t live in any sound
recording made in respect of an erudite, dramatic or musical work, if in making the
sound recording, brand in similar work has been infringed. Further, it’s handed by
section 13(4) that brand in a sound recording doesn’t affect the separate brand in any
work in respect of which or a substantial part of which, the film, or as the case may be,
the sound recording is made.
The underpinning erudite and musical workshop don’t lose their actuality upon a
cinematograph film or sound recording being made. All the workshop remains mutually
exclusive and the power therein can be exercised to the extent specified by the Act.
▪ Cinematographic film: There was no direct statutory provision dealing with
cinematograph flicks before the Copyright Act, 1911. It was, so considered in
common law or the also being orders of statutory brand that a patron of similar
 film had to turn. It was honoured by the revised textbook of 1908 of the Berne
Convention that cinematograph flicks were a new art form.
The Copyright Act, 1957 defines “cinematograph film” to mean any work of visual
recording and includes a sound recording accompanying similar visual recording and
the expression “cinematograph” shall be demonstrated as including any work produced
by any process similar to cinematography including videotape films[6].
➢ ECONOMIC RIGHTS
This right is also known as the Exclusive Rights of the copyright holder provided under
Section 14 of the Copyright Act, 1957. In this Section it states that different types of
work come with different types of rights. Such as:
In the case of original erudite, musical, and dramatic work
▪ Right to reproduce;
▪ Right to issue clones;
▪ Right to perform at public;
▪ Right to make cinematography and sound recording;
▪ Right to make any restatement;
▪ Right to adaption; and
▪ Right to do any other conditioning related to the restatement or adaption.
In the case, of computer program work
▪ Right to do any act aforesaid mentioned; and
▪ Right to vend, rent, offer for trade of the copyrighted work.
In the case of cultural work
▪ Right to reproduce;
▪ Right to communicate;
▪ Right to issue clones;
▪ Right to make any cinematography and sound recording;
▪ Right to make an adaption; and
▪ Right to do any other conditioning related to the restatement or adaption.
In case of a cinematograph film work
▪ Right to vend, rent, offer for trade of the copyrighted work; and
▪ Right to communicate.
In the case of a sound recording work
▪ Right to communicate;
▪ Right to issue clones; and
▪ Right to vend, rent, offer for trade of the copyrighted work.
Profitable rights also economic rights belong to the proprietor or owner of copyright.
As these rights give the proprietor an occasion to make marketable gain from the
exploitation of his work they’re nominated as profitable rights. Under the Copyright
Act, 1957 profitable rights aren’t available to all the workshop in the same manner. In
other words, these rights are classified in agreement with orders of brand workshop.
therefore, profitable rights available to flicks are different from those available in
respect of books. Following is a recitation of colourful profitable rights granted to the
proprietor of brand.
The Right of Reproduction: Right of reduplication or reproduction is the most
introductory of the rights under the umbrella of copyright or brand and is available to
all the workshop that are subject to brand protection. The right of reduplication
generally means that no person shall make one or further clones of a work or of a
substantial part of it in any material form including sound and film recording without
the authorization of the brand proprietor. The right of reduplication is the legal base for
numerous forms of exploitation of brand workshop. For illustration, the printing of
books by a publisher or the slice of music CDs by a patron depends on this right of
reduplication.
The Right of Distribution: A proprietor of brand or copyright enjoys an exclusive right
over the original distribution of clones of his work. This right overflows logically from
the right of reduplication. Naturally, reduplication right would be of little value if the
proprietor couldn’t authorise the distribution of clones of his work made by him or his
concurrence. Like the right of reduplication, the right of distribution is available to all
the workshop that are subject to brand protection.
Rental Right: The right of rental comes out of the right of distribution. ‘Rental’ means
making available for use for a limited period of time and for direct or circular profitable
or marketable advantage. In past few years rental rights weren’t part of the pack of rights
within copyright or brand. Recently, this right has been made available to only three
classes of workshop, viz. computer programmes, sound recordings and cinematograph
flicks. Therefore, after a book has been bought at a book store, the brand proprietor has
no say-so over how that dupe of book is farther distributed. therefore, the book could
be rented without the authorization of the brand holder. The same would not be the case
for computer programmes, flicks and sound recordings.
The Right of Public Performance: The exclusive right to authorise the public
performance of a work is of veritably introductory significance to the brand proprietor.
The right of public performance is available for erudite, dramatic and musical workshop
but it’s of seminal significance for dramatic, dramatic-musical or musical workshop
which are created primarily for similar performance. The right of public performance
entitles the proprietor to authorise live performances of a work similar as a play, a
cotillion or a symphony performance.
➢ MORAL RIGHTS
Moral Rights of the author are the soul of his workshop. They’re aptly described as the
spiritual ties that bind a creator with his creation. “The author has a right to save, cover
and nurture his creations through his moral rights”. Moral rights cover the particular
and reputational rather than financial aspect of a work vis-a-vis its creator. The term
‘moral rights’ is a restatement of the French term ‘droit moral’ but doesn’t relate to
‘morals’ as mandated in a religious order, rather it refers to the capability of an author
to control the eventual fate of his workshop. These rights allow the author to take certain
conduct to save the particular link between himself and his work.
In India moral rights are defended by the Copyright Act under the conception of
Author’s Special Rights. Moral rights are independent of profitable rights and remain
with the author indeed after he has transferred all his profitable rights to someone
differently through license or assignment. That means these rights cannot be a subject
matter of transfer and they always remain with the author. Section 57 easily overrides
the terms of the contract of assignment of the brand. The contract of assignment would
be read subject to the provisions of Section 57 and the terms of contract cannot negate
the special rights guaranteed by Section 57.
 ▪ Right of Paternity/Attribution: The right to maternity is basically the right of
an author to claim authorship of his work and have it attributed to him. It’s the
right of an author to be linked whenever a work is published, performed or
broadcast. This means authors, scriptwriters, playwrights, painters, sculptors,
illustrators and translators must be duly credited for their workshop.
▪ Right to Integrity: The law grants right to the author to object to any
deformation, mutilation, revision or other act which is prejudicial to his honour
or character. The expression ‘other act’ is ejusdem generis with the word
‘deformation’ and ‘mutilation’. The failure to display a work at all and the failure
to display it to the satisfaction of its author aren’t considered to be a violation of
the right of integrity.
▪ Reseal Share Right in Original Copies of Works: This right is a special right
which has features of both profitable and moral rights. This right is profitable in
nature but available only to authors or their legal heirs at law. This is available
in respect of the resale of the original dupe of an oil, form, drawing or
handwriting of an erudite, dramatic or musical work. If the resale price of such
a work exceeds further than ten thousand rupees also the author or his legal heirs
at law, irrespective of any assignment of brand in similar work, shall have a right
to get a chance of the resale price of similar work. The chance of share is to be
fixed by the Copyright Board but it cannot exceed ten percent of the resale price.
▪ General Character of Rights within Copyright: Copyright is a pack of rights
which are exclusive in nature meaning thereby that the proprietor can count all
others in the enjoyment of these rights. Because of this exclusivity brand along
with other forms of IP are constantly nominated as monopolies. still, the same
principle of exclusivity can be used by the proprietor to invite others to exploit
his brand in return for consideration thereby maximising the returns from his
property. These exclusive rights can be singly exploited. For illustration, the
proprietor of brand in a novel may grant a license to reproduce the novel or
restate it without granting rights to perform it in public or to make a
cinematograph film grounded on it.
4. AUTHORSHIP AND OWNERSHIP IN COPYRIGHT: Section 17 of this Act
recognizes the author as the first owner, which states that subject to the provision
of this Act, the author of a work shall be the first owner of the copyright therein:
▪ In the case of literary or dramatic composition, the author,
▪ In the case of musical work, the musician,
▪ In the case of creative work apart from photography, the artist,
▪ In the case of photographic work, the artist,
▪ In the case of cinematographic or recording work, the producer,
▪ In case of any work generated by any computer virus, the one who created.
However, this provision provided to bound exception:
▪ In case of creation is made by the author underemployment of the proprietor of
any newspaper, magazine or any periodic, the said proprietor,
▪ In the case where a photograph is taken, painting or portrait is drawn,
cinematograph is made for the valuable consideration of any person, such person,
▪ In case of a work done in the course of the author’s employment under the
contract of service, such employer,
 ▪ In case of address or speech delivered on behalf of another person in public,
such person,
▪ In the case of government works, the government,
▪ In the case of work done under direction and control of public undertaking such
public undertaking, and
▪ In the case of work done in which provision of Section 41 apply, concerned
international organizations.
5. TERM OF COPYRIGHT & ASSIGNMENT LICENSING
Copyright license and assignment of copyright are two distinct phrases that should not
be used interchangeably Each one is distinct in its own way. A license authorizes
conduct; without it, the authorization would be considered an infringement. Licensing
typically entails authorizing a subset of numerous rights. It may be exclusive or non-
exclusive. In the case of assignment, it includes the disposal of the copyright, which
means the assignor assigns the copyright to another person or transfers ownership of
the copyright to another person, whereas in the case of a license, only some Intellectual
Property (IP) is transferred and ownership is not transferred to the licensee.
A license does not give the licensee any rights against a third party or the licensor, while
an exclusive licensee has significant rights against the licensor, including the right to
sue the licensor.
A licensee has the freedom to make changes as long as his license does not restrict that
ability. If the royalties are not paid, the licensor has the right to withdraw the license. It
is not possible to do the same with the assignment. However, if there is anything
unpleasant that can harm the author, it may result in revocation if a complaint is filed
with the copyright board. Unlike a copyright assignment, a copyright license must be in
writing. It can be either spoken or inferred after taking into account all of the facts and
circumstances surrounding the transaction between the owner of the copyright and the
licensee
If an owner of a copyrighted work considers assigning the copyright, he should
consider licensing it rather than transferring it. It would aid in keeping ownership and
hence licensing only provides specific rights to another party.
Assignment: In the case of assignment, it includes the disposal of the copyright, which
means the assignor assigns the copyright to another person or transfers ownership of
the copyright to another person.
Assignment of Copyright: No one is qualified to duplicate, recreate, distribute, or offer
a unique composition, painting, emotional generation, form, and so forth without the
consent of the maker. As a result, the law grants the maker (creator) of the copyright the
power to transfer ownership of the copyright to a third party.
License: A license authorizes conduct; without it, the authorization would be considered
an infringement. Licensing typically entails authorizing a subset of numerous rights
As a result, the law gives the maker (creator) of the copyright the authority to transfer
ownership to a third party. They are mentioned below:
▪ The time period of the license
▪ The rights that have been licensed
▪ The geographical limit or extent of the license
▪ The amount of royalties that will be paid as compensation.
▪ Clauses & Conditions pertaining to termination, modification & extension.
 ➢ Section 18 Assignment of copyright: Assignment of Copyright The owner of a
copyright to an existing work or a future work may assign his copyright to
anyone. The assignee who gets the assignment from the owner has the same
rights to the copyright as the owner. The owner may put general or partial
limitations on the assignee in order to enjoy shared benefits in the copyrights.
However, selling a copyrighted work and surrendering the right to publish it does
not constitute an assignment of copyright; rather, it is merely a publishing right.
There will be no assignments where the work did not exist at the time of copyright
assignment. In the case of a future assignment of copyright, it will take effect when the
work is created. When the assignee acquires the copyrights, he is treated as the copyright
owner. In the event of the assignee’s death, the legal representative is entitled to the
advantages of the assignment of copyright.
➢ Section 19 Mode of assignment: Section 19 of the legislation allows for the
assignment of copyright under the following conditions:
▪ Copyright for any work can be assigned to an assignee in writing and formally
signed by the assignor or his agent.
▪ The copyright assignment must identify the rights assigned as well as the
duration and territorial scope of the assignment.
▪ The copyright assignment can be changed, extended, or cancelled on mutually
agreed-upon terms. The assignment must include a significant payment amount
paid to the author or his legal heirs during the copyright assignment.
▪ If the assignee does not utilize his copyright assignment rights within one year
of the date of the assignment, such rights are assumed to have lapsed.
▪ If not clearly stated, copyright assignment will endure up to five years.
▪ If not particularly stated, the assignment of copyright shall cover the entire
country of India.
▪ Any work that violates the rules and circumstances of the assignment of
copyright in the field in which the author works is void.
➢ Section 19A Disputes Regarding Copyright Assignment: The Appellate
Board will conduct an inquiry on behalf of the party if it receives a complaint
under section 19(A) of the act. If the other party fails to comply with the terms
and conditions stated at the time of assignment, the Appellate Board may:
▪ Recall the assignment.
▪ Recovering any owed royalties
➢ Section 20 Copyright in manuscripts is transferred through testamentary
disposal: Section 20 states that if a person is entitled to copyright under bequest
and such work has not been published before the testator’s death, unless a
contrary intention is shown in the testator’s will or any codicil thereto, such
person is considered to have copyright in the work to the extent that the testator
was the owner of copyright immediately before his death.
➢ Section 21 Right of author to relinquish copyright: Section 21 of the Act gives
the owner of a work the option to give up all or any of the rights in the work. As
the term implies, relinquishment refers to the author’s surrender or abandonment
of the rights in the copyrighted work. This usually signifies that the author’s
rights have been surrendered or abandoned, and he or she can no longer claim
 ownership of the work. The author can choose which rights they want to
relinquish.
➢ Section 22 Term copyright in published literary, dramatic, musical, and
artistic works: There are certain restrictions that must be met in order to obtain
protection under the Copyright Act of 1957. These restrictions can be broadly
grouped into three categories: a limited period of copyright permissible uses,
non-voluntary licensing (statutory license), and statutory licenses. The duration
or term of the copyright is discussed further below.
▪ Chapter V of the Indian Copyright Act of 1957 specifies the duration of copyright
protection. Section 22 of the Act provides that the term of copyright in published
literary, dramatic, musical, and artistic works must survive, if published during
the author’s lifetime, until sixty years after the author’s death, commencing with
the first day of the calendar year following his or her death. In this section, the
reference to the author shall be construed as a reference to the author who dies
last in the case of a work of joint authorship. The Amendment of 1992 expanded
this duration from fifty to sixty years.
▪ In the case of a cinematograph film, sound recording, photograph, posthumous
publications, or anonymous organizations, the sixty-year period begins on the
date of publication.
➢ Section 23 Copyright terms in anonymous and pseudonymous works: If the
work is published anonymously, that is, when the author of the work is unknown.
According to Section 23 of the Copyright Act of 1957, the copyright term of an
anonymous publication is also sixty years, computed from the beginning of the
calendar following the year the work was originally published. The part also
allows for the author’s identity to be revealed. In its proviso, it is stated that if
the identity of the author is revealed before the expiration of the abovementioned
term, the copyright exists for a period of sixty years, calculated from the start of
the calendar year following the year in which the work is first published.
➢ Section 24 Term of Copyright in Posthumous Work: It is the publication of a
work after the author’s death. The term of copyright protection for a posthumous
publication is sixty years, and unlike in other jurisdictions, this time is computed
from the date of publication.
➢ Section 25 Term of copyright for photographs: The Indian Copyright Act
grants copyright in photographs for a term of 60 years from the beginning of the
calendar year succeeding the year in which the photograph is published.
However, the 2012 amendment deleted this section.
➢ Section 26 Term of Copyright in Cinematograph Films: Cinematograph
Films has a copyright that lasts for sixty years from the start of the calendar year
following the year in which the film is published.
➢ Section 27 Term of copyright in sound recording: Sound recording copyright
is valid for sixty years from the beginning of the calendar year following the year
in which the sound recording is published.
➢ Section 28 Term of Copyright Government works: In the event of a
Government production, when the Government is the first owner of the
copyright, the copyright lasts for sixty years from the start of the calendar year
following the year in which the work was first published.
➢ Section 28A Copyright terms in works of public ventures: The copyright term
in which a public undertaking is the first proprietor. When a public undertaking
is the first owner of the copyright in a work, the copyright lasts for sixty years
from the beginning of the calendar year following the year in which the work is
first published.
➢ Section 29 Copyright in international organization’s works: In the case of an
international organization’s work to which the requirements of section 41 apply,
copyright lasts for sixty years from the start of the calendar year succeeding the
year in which the work is first published.
➢ Section 30 Licenses by owners of copyright: The owner of the copyright in an
existing work or in future works may give any interest in the copyright through
a license. The license can be issued in writing by the owner and signed by him
or an approved agent. A copyright license for any future work shall take effect
only when the work is created. In the absence of any provision, the legal
representative is entitled to the advantages of the license.
➢ Application of Section 30(A): The provisions that were applicable in section 19
in connection to the assignment of copyright, with relevant adaptations and
amendments, will be applied in the event of the license granted by the owner.
➢ Section 31 Compulsory license in works withheld from public: the Indian
Copyright Act allows a complaint to be filed with the Copyright Board, the
jurisdiction of which has now been transferred to the Intellectual Property
Appellate Board when such rejection has resulted in the work being withheld
from the public.
➢ Section 31A; deals with a compulsory license in unpublished or published
works.
➢ Section 31B: deals with compulsory licenses for the benefit of the disabled.
➢ Section 31C: deals with statutory licenses for cover versions.
➢ Section 31D: deals with statutory licenses for the broadcasting of literary and
musical works and sound recordings.

➢ ADVANTAGES OF LICENSING
▪ It has the potential to improve marketing.
▪ It aids in increasing income while lowering production costs.
▪ It aids in the commercial expansion of a company. The licensing process makes
it considerably easier to introduce work into other markets.
▪ Investments are relatively cheap, but there are payments in the form of royalties
in return.
▪ Flexible in nature, as the parties have the right to make changes according to the
circumstances.
➢ CONCEPT OF COPYRIGHT INFRINGEMENT AND REMEDIES:
Infringement, in the context of copyright law, refers to any unauthorized use or
exploitation of a copyrighted work. This can include activities such as
reproducing, distributing, performing, or adapting the work without the
permission of the copyright owner. Copyright infringement undermines the core
principles of copyright, as it violates the exclusive rights granted to creators and
can lead to financial losses and reputational harm. This can encompass activities
 such as reproducing a book, distributing copies of a song, adapting a screenplay
without permission, or even broadcasting a copyrighted film without a license.
Essentially, any act that encroaches upon the exclusive rights of the copyright
owner constitutes infringement. In India, copyright infringement is governed by
the Indian Copyright Act, 1957. This comprehensive legal framework outlines
the rights of creators and the remedies available to them in cases of infringement.
It’s crucial to understand that copyright infringement is not limited to
unauthorized commercial use; it can also involve non-commercial activities.
Understanding the various nuances of copyright infringement is essential to both
creators and users of copyrighted material.
INFRINGEMENT OF COPYRIGHT: Copyright infringement is a trespass on a
private domain owned and occupied by the owner of the copyright. It is the unauthorized
use, reproduction, distribution, display, or adaptation of copyrighted material, such as
literary, musical, artistic works, or other creative content, in a manner that violates the
exclusive rights granted to the copyright owner by law.
A) R.G. Anand v. Delux Films, the Supreme Court ruled that an infringement doesn’t
require an exact or word-for-word duplication of the original work. Instead, a
substantial resemblance between the alleged copy and the original, even with some
alterations to mask the piracy, can constitute infringement. Infringement encompasses
various ways in which the content of a work can be adapted, imitated, transferred, or
reproduced.
➢ ACTS DEEMED TO INFRINGED COPYRIGHT [SECTION 51]: Section
51 of the Indian Copyright Act defines specifies various scenarios where the
unauthorized use, distribution, or import of copyrighted material is considered
copyright infringement, unless specific conditions or exceptions apply. It
outlines several scenarios where unauthorized use of copyrighted material
becomes a violation of the copyright owner’s rights:
1. COPYRIGHT INFRINGEMENT OCCURS WHEN A PERSON, WITHOUT
THE PROPER LICENSE FROM THE COPYRIGHT OWNER OR THE
REGISTRAR OF COPYRIGHTS, OR IN VIOLATION OF THE LICENSE
CONDITIONS, DOES ANY OF THE FOLLOWING:
i. Engages in an activity that exclusively belongs to the copyright owner as per the Act.
ii. Permits, for profit, a place to be used for public communication of the work, which
would infringe the copyright, unless they were unaware and had no reasonable grounds
to believe that it would constitute infringement.
2. Copyright infringement also takes place when a person:
i. Creates copies of the work for sale, hire, or trade, or sells or rents such copies.
ii. Distributes the work to an extent that harms the interests of the copyright owner,
especially for commercial purposes.
iii. Exhibits the work in public as part of a trade.
iv. Imports infringing copies of the work into India, with an exception for the private
and domestic use of the importer, which doesn’t constitute infringement.
2. ACTS NOT DEEMED TO BE INFRINGEMENT OF COPYRIGHT WITH
RESPECT TO COMPUTER PROGRAMME: Section 52 of the Copyright Act,
1957, extends specific exceptions for computer programs, preventing certain acts from
being considered copyright infringement:
 I. Making Copies for Protection: Individuals who legally possess a
computer program can create copies or adaptations of it for two purposes:
to use it for its intended function or to create backup copies temporarily
safeguarded against loss, destruction, or damage.
II. Obtaining Essential Information: Lawful possessors of a computer
program can perform necessary actions to acquire information essential
for making independently created computer programs interoperable with
other programs, as long as this information isn’t readily available
elsewhere.
III. iii. Testing and Studying: Conducting observations, studies, or tests to
understand the fundamental ideas and principles underlying a computer
program’s elements, while performing actions essential for the program’s
intended functions, is not considered copyright infringement.
IV. iv. Non-Commercial Copying: Making copies or adaptations of a
computer program from a legally obtained copy for non-commercial
personal use is not an infringement of copyright.
➢ PARTICULARS TO BE DISPLAYED ON SOUND RECORDING AND
VIDEO CASSETTES [SECTION 52A]: Section 52A of the Copyright Act is
designed to prevent copyright infringement in sound recordings and video films.
It does this by requiring specific details to be displayed on the packaging of
sound recordings and video cassettes. These details must include the name and
address of the person who created the sound recording or video film, as well as
the names and addresses of the copyright owner of these works.
➢ IMPORTATION OF INFRINGING COPIES IN INDIA [SECTION
53]:Section 53 of the Copyright Act enables copyright or related rights owners,
or their representatives, to formally notify the Commissioner of Customs
regarding potential copyright infringement. This notification should include
proof of ownership, a request to treat infringing copies as prohibited goods, and
details about the expected arrival of these copies in India within a year. After
review, the Commissioner can classify the copies as prohibited goods, except for
goods in transit. A security deposit may be required to cover potential expenses.
The Customs Officer detaining the goods must notify both the importer and the
person who issued the notice within 48 hours. If the person who issued the notice,
failed to obtain court order within 14 days, the goods must release and no longer
be treated as prohibited.
➢ REMEDIES AGAINST THE INFRINGEMENT OF COPYRIGHT
CIVIL REMEDIES FOR COPYRIGHT INFRINGEMENT: The civil remedies for
copyright infringement are covered under Section 55 of the Copyright Act of 1957. The
different civil remedies available are:
1) Interlocutory Injunctions: The most important remedy is the grant of an
interlocutory injunction. In most case the application filled is for interlocutory relief
and the matter rarely goes beyond the interlocutory stage. There are three requirements
for there to be a grant of interlocutory injunction – Firstly, a prima facie case. Secondly,
there needs to be a balance of convenience. Finally, there needs to be an irreparable
injury.
2) Pecuniary Remedies: Copyright owners can also seek three pecuniary remedies
under Section 55 and 58 of the Copyright Act of 1957. First, an account of profits which
lets the owner seek the sum of money made equal to the profit made through unlawful
conduct. Second, compensatory damages which let the copyright owner seek the
damages he suffered due to the infringement. Third, conversion damages which are
assessed according to the value of the article.
3) Anton Pillar Orders: The Anton pillar order gets its name from the holding in Anton
Pillar AG V. Manufacturing Processes. The following elements are present in an Anton
Pillar Order – First, an injunction restraining the defendant from destroying or
infringing goods. Second, an order permitting the plaintiff’s lawyer to search the
defendant’s premises and take goods in their safe custody. Third, an order that the
defendant be directed to disclose the names and addresses of suppliers and consumers.
4) Mareva Injunction: The Mareva injunction comes into play when the court believes
that the defendant is trying to delay or obstruct the execution of any decree being passed
against him. The court has the power to direct him to place whole or any part of his
property under the court’s disposal as may be sufficient to satisfy the decree. This is
provided in Order XXXVIII, Rule 5 of The Civil Procedure Code, 1908.
5) Norwich Pharmacal Order: The Norwich Pharmacal Order is usually passed when
information needs to be discovered from a third party.
CRIMINAL REMEDIES: Under the Copyright Act, 1957 the following remedies are
provided for infringement:
▪ Imprisonment up to 3 years but, not less than 6 months
▪ Fine which may not be less than 50,000 but, may extend up to 2,00,000
▪ Search and seizure of infringing goods
▪ Delivery of infringing goods to the copyright owner
➢ OWNER OF THE COPYRIGHT [SECTION 54]: According to the section,
term “owner of copyright.” not only includes the original creator or author of a
work but also extends to others in certain situations.
Firstly, an “exclusive licensee” is considered the owner of copyright. An exclusive
licensee is someone who has been granted exclusive rights to use, reproduce, or
distribute a copyrighted work. In essence, they have the same rights as the copyright
owner during the period of their license.
Secondly, in cases where a literary, dramatic, musical, or artistic work is anonymous
(the author’s identity is unknown) or pseudonymous (the author uses a false name), the
“publisher” of the work is regarded as the owner of copyright until the author’s identity
is publicly disclosed or established to the satisfaction of the Commercial Court. This
provision ensures that the publisher, who may have legal rights and responsibilities
related to the work, is recognized as the copyright owner until the author’s identity
becomes known or confirmed.
➢ CIVIL REMEDY AGAINST THE COPYRIGHT INFRINGEMENT
[SECTION 55]: Section 55 of the Copyright Act in India outlines the civil
remedies available to copyright owners in cases of copyright infringement:
Remedies Available: When someone infringes the copyright of a work, the owner of
that copyright is entitled to various remedies. These remedies includes:
A. Injunction (a court order to stop the infringing activity);
B. Damages (monetary compensation for the losses suffered due to infringement);
C. Accounts (requesting an account of the profits made by the infringing party),
and;
D. any other remedies provided by law for copyright infringement.
▪ Presumption of Authorship: In cases involving literary, dramatic, musical, or
artistic works (and, in most cases, cinematograph films and sound recordings),
if copies of the work as published bear the name of an author or publisher, that
person is presumed to be the author or publisher of the work, unless evidence to
the contrary is presented. This presumption simplifies copyright infringement
proceedings by establishing the identity of the author or publisher.
▪ Costs of Proceedings: The allocation of costs incurred during legal proceedings
related to copyright infringement is at the discretion of the court. This means that
the court has the authority to decide which party, the plaintiff (copyright owner)
or defendant (infringing party), will bear the legal costs associated with the case.
➢ SAFEGUARDING OF SPECIAL RIGHTS OWNED BY VARIOUS
PERSONS [SECTION 56]: When multiple individuals or entities hold distinct
rights within a single copyright, each of them has the legal authority to protect
and enforce their specific rights independently. This means that any person who
possesses a separate right within a copyright can take legal action, such as filing
a lawsuit or initiating other legal proceedings, to safeguard their rights without
requiring the participation of others who may own different rights within the
same copyright. In essence, they have the freedom to pursue legal remedies for
their specific copyright interests without involving all other right holders in the
same copyright.
➢ SPECIAL RIGHT OF AUTHOR [SECTION 57]:Section 57 of the Copyright
Act grants special rights to the author of a work, which they can exercise
independently of their copyright, even if they have partially or fully assigned that
copyright to someone else. These special rights include:
▪ Claiming Authorship: The author has the right to claim authorship of the work.
This means they can insist on being recognized as the creator of the work.
▪ Protection Against Harm to Reputation: The author also has the right to prevent
or seek damages for any actions related to the work that could harm their honor
or reputation. This includes actions like distortion, mutilation, or modification of
the work that would negatively impact how the author is perceived.
➢ RIGHT OF COPYRIGHT OWNER TO RECOVER POSSESSION OF
INFRINGING COPIES [SECTION 58]: Section 58 of the Copyright Act
addresses the recovery of infringing copies and related matters. Under this
section, any copies of a work in which copyright exists and all plates used or
intended for producing such infringing copies are considered the property of the
copyright owner. Consequently, the copyright owner has the legal authority to
initiate proceedings to recover these infringing copies as per Section 58 of the
Copyright Act, 1957. Additionally, the copyright owner can seek the remedy of
converting these infringing copies.
➢ RESTRICTION ON REMEDY OF INJUCTION IN CASE OF
ARCHITECTURE WORK [SECTION 59]:Section 59 specifies that when it
comes to the copyright owner of an architectural work, they cannot seek an
injunction to halt or demand the demolition of a building or structure if
 construction has already started. In other words, if someone is already building
a structure, the copyright owner of the architectural work cannot use legal means
to stop the construction or order the building’s destruction based on copyright
infringement.
➢ LEGAL RECOURSE FOR UNWARRANTED COPYRIGHT THREAT BY
THE COPYRIGHT OWNER [SECTION 60]; Section 60 of the Copyright
Act addresses situations where an individual, claiming to be the copyright owner,
threatens legal action against another person for alleged copyright infringement.
These threats can be conveyed through circulars, advertisements, or any other
means. If someone receives such groundless threats and feels aggrieved, they
have legal recourse under this section. The aggrieved person can seek an
injunction to stop the continuation of these threats. Additionally, they have the
right to claim damages for any losses they may have incurred as a result of these
groundless threats. In essence, Section 60 provides a legal remedy for individuals
who are wrongly threatened with copyright-related legal actions, allowing them
to protect their interests and seek compensation if necessary.
➢ COPYRIGHT OWNERS MUST BE INVOLVED IN LEGAL
PROCEEDINGS [SECTION 61]:Section 61 of the Copyright Act allows an
exclusive licensee of a copyright to initiate a civil suit or legal proceedings
related to copyright infringement. However, in such cases, the owner of the
copyright becomes the defendant in the proceedings. This means that the
copyright owner has the opportunity to challenge the claims made by the
exclusive licensee. It’s essential to note that if the exclusive licensee prevails in
the lawsuit, the copyright owner cannot file a new lawsuit based on the same
cause of action. This provision ensures that disputes over copyright infringement
involving exclusive licensees are resolved efficiently and prevent multiple
lawsuits on the same issue.

6. EXCEPTIONS: This act shall not constitute copyright infringement in cases of:
➢ Fair Dealing: Fair dealing is the statutory limitation on the exclusive right of
the copyright owner which permits reproduction or use of copyrighted work in a
manner that otherwise would have constituted infringement. This law is given
under Section 52 of the Copyright Act,1957 according to which the free uses can
be made for any work except computer program for the purposes:
▪ For private and personal use including research,
▪ For criticism and review,
▪ For reporting of current events or issues including lectures in public,
▪ For broadcasting in cinematographic films or by posting photographs,
▪ For reproduction and reporting of any judicial proceeding,
▪ For reproduction, or publication of any kind of work prepared by the secretariat
of a legislature,
▪ For reproduction of any kind of work in a certified copy made or supplied
accordance with any law,
▪ For reading and recitation of any literary or dramatic work in the public domain,
▪ For publication of any non-copyright matter bonafide intended for the use of
educational institutes, and
 ▪ For recording any sound by the owner of the right in the work.
DOCTRINE OF FAIR DEALING
Doctrine of Fair Dealing is an exception to the law that would usually protect any
material that would be considered to be copyrighted as under the Indian Copyright Act,
1957 (hereinafter known as the “Act”). It is a legal doctrine which permits a person to
use any work which is protected under the Act with limited usage of such work so as to
maintain the sanctity and originality of such work as well as the registered proprietor of
the work.
The meaning of “Fair Dealing” depends on different facts and circumstances. In India,
the Court applies basic common sense so that they can determine as to what can be
constituted as Fair Dealing on the case- to- case basis. Fair dealing is a significant
limitation on the exclusive right of the copyright owner. It has been interpreted by the
courts on a number of occasions by judging the economic impact it has on the copyright
owner. Where the economic impact is not significant, the use may constitute fair
dealing. The fair nature of the dealing depends on the following four factors:
▪ the purpose of use;
▪ the nature of the work;
▪ the amount of the work used, and
▪ the effect of use of the work on the original.
INTERNATIONAL CASES
▪ Hubbard vs Vosper- In the line of dealing with the concept of Fair Dealing,
Lord Dennings has stated that “It is impossible to define what is “Fair
Dealing”. It must be a question of degree. You must first consider the number
and extent of the quotations and extracts…. then you must consider the use
made of them…Next, you must consider the proportions…other
considerations may come into mind also. But, after all, is said and done, it is a
matter of impression”.
▪ Gyles vs Wilcox– This case had initially established the doctrine of “Fair
Abridgment” which eventually came to be known as “Fair Dealing” which was
the first case based on the concept of Fair Use law as was adjudicated by the
Court of Chancery of England. In this case, the Court adjudicated the issue of
whether work which comes within the purview of copyright can be abridged or
such abridged are to be considered as new work, separate to that of abridged
work. In that regard, Lord Hartwicke established two categories under which
such abridged work would be classified into firstly, “True Abridgments” which
in itself explains that the work was created at its truest form without violating
the copyright. While the other being “Coloured Shortenings” which is the
colouring or certain adjustments made to the original copyrighted work.
7. INTERNATIONAL COPYRIGHT ORDER
▪ INTERNATIONAL COPYRIGHT UNDER THE INDIAN SYSTEM: In
India, Copyright is regulated by the Copyright Act of 1957 and the Copyright
Rules of 2013, and the International Copyright Order, 1999. The Copyright Act
of 1957 is the primary Act concerning Copyright, while the Copyright Rules of
2013 and the International Copyright Order of 1999 are supplementary laws.
▪ THE COPYRIGHT ACT OF 1957: While the Act itself deals with
international copyright under Chapter IX, the terms ‘foreign works’ or
 ‘international copyright’ are nowhere defined in the Act9. However, section 2(l)
of the Act defines ‘Indian work’ as a literary, dramatic, or musical work where
o The author of which is a citizen of India; or
o Which is first published in India; or
o The author of which, in the case of an unpublished work is, at the time of
the making of the book, a citizen of India
▪ SEC 40 – POWER TO EXTEND COPYRIGHT TO FOREIGN WORKS:
This provision of the Copyright Act enables the Central Government to extend
copyright to foreign works by publishing an Order in the Official Gazette. An
essential feature of this provision is that only the countries mentioned in the
Order, which is The International Copyright Order, 1999, can be accorded
copyright in India. The “territories outside India” mentioned in subsections of
this section must be included in the International Copyright Order of 1999.
Hence countries which do not find their names in the International Copyright
Order, 1999 cannot claim copyright for their works in India. The Central
Government can extend any or all provisions of the Copyright Act to the works
falling under the following categories, thus treating them in a manner as if they
were Indian Works.
A. Works published in any territory outside India to be treated in a manner as if they
were first published in India
B. Unpublished works whose authors at the time of making the work were subjects
or citizens of a foreign country to be treated in a manner as if the authors were
Indian citizens.
C. With respect to the domicile of an author in any territory outside India, the
Copyright Act will apply to him as if his domicile were in India
D. Any work whose author at the date of the first publication of the work was a
subject or citizen of a foreign country, or who was dead at the time of the first
publication and a subject or citizen of a foreign country, the Copyright Act will
apply to him as if he were an Indian citizen at that date or time.
▪ PROVISO TO SECTION 40 OF THE COPYRIGHT ACT OF 1957:
However, the proviso to this section dictates that before adding a country (other
than those countries with which India has entered into a Treaty or which is a
party to a Convention to which India is a party too) to the International Copyright
Order, 1999 or any other Order made under this section, the Central Government
should make sure that the concerned country has made or undertaken to make
provisions for the protection, in that country, of the works entitled to copyright
under the provisions in the Copyright Act of 1957, in other words, the concerned
foreign country should accord protection to works of Indian authors.
The term of copyright protection in India shall not exceed the term of protection
accorded in the country of origin of the foreign work. Also, the term of protection
accorded by the foreign country should not exceed the term of protection accorded by
India. The enjoyment of the rights accorded by the Copyright Act of 1957 shall be
subject to the fulfilment of the formalities and conditions prescribed by the International
Copyright Order, 1999. Also, the International Copyright Order may provide that the
whole of the Copyright Act, 1957 or any part of it shall not apply to foreign works made
before the commencement of the Order or the Copyright Act; or to works first published
before the commencement of the Order.
▪ SECTION 40A – APPLICATION OF CHAPTER VIII TO
BROADCASTING ORGANISATIONS AND PERFORMERS: This
provision empowers the Central Government to extend the rights under Chapter
VIII to broadcasts and performances of foreign countries if it is satisfied that
such country has made or undertaken to make the necessary provisions for the
protection of rights in that country, as it is available in India under the Copyright
Act of 1957. The Central Government can extend the rights of Broadcasting
Organizations conferred under Chapter VIII of the Copyright Act, 1957
A. To Broadcasting organizations whose headquarters is situated in a country which
is included in the International Copyright Order, 1999 or the broadcast was
transmitted from a transmitter situated in a country included in the Order, as if
the headquarters of such organization were situated in India or such broadcast
was transmitted from a transmitter situated in India
B. To performances that took place in a territory outside India in a manner as if they
took place in India
C. To performances that are incorporated in a sound recording that was published
in a country included in the Order as if it were published in India
D. To performances not fixed on a sound recording broadcast by a broadcasting
organization whose headquarters is located in a country which is included in the
Order as if the headquarters were situated in India or where the broadcast is
transmitted from a transmitter situated in a country which is included in the Order
as if such broadcast was transmitted from India
This section also empowers the International Copyright Order to apply Chapter VIII
either fully or in part to the foreign broadcasts or performances; to generally or to classes
of broadcasts or performances. The term of the rights of the broadcast organizations and
performers in India should not, however, exceed the term of rights accorded by the
country of origin of the foreign work, provided it does not exceed the period provided
in the Copyright Act of 1957. The enjoyment of the rights under Chapter VIII shall be
subject to the fulfilment of the formalities and conditions specified in the Order. Chapter
VIII does not extend to any performances or broadcasts made before the
commencement of the Order.
▪ SECTION 41 – EXISTENCE OF COPYRIGHT THROUGHOUT INDIA:
According to this section, copyright in a foreign work would exist throughout
India where
A. A (foreign) work is made or first published by or under the direction or control
of any organization and
B. There is no copyright in the work in India at the time of the first publication of
the work and
C. Either, the work is published in pursuance of an agreement in that behalf with
the author where the agreement does not reserve to the author the copyright in
the work (or) under section 17, which deals with the concept of First Owner of
Copyright, any copyright in the work would belong to the organization.
Any international organization which at the material time did not have the legal capacity
of a body corporate shall have and deemed at all material times to have had the legal
capacity of a body corporate for the purpose of holding, dealing with, and enforcing
copyright and in relation to all legal proceedings related to copyright. The organizations
which come under this section are those organizations which are included in the
International Copyright Order, 1999.
▪ SECTION 42, 42A AND 43 – POWER OF CENTRAL GOVERNMENT TO
RESTRICT THE RIGHTS OF FOREIGN WORKS: Section 42 empowers
the Central Government to retract or restrict the rights of such foreign works,
whose authors are not Indian and not domiciled in India, first published in India
when it feels that the concerned country has not reciprocated the protection given
by the Indian government by not giving adequate protection to the works of
Indian authors.
▪ Section 42A is similar to section 42 but applies to foreign broadcasting
organizations and performers which are incorporated in such foreign country or
are subjects or citizens of such foreign country and not domiciled in India.
▪ Section 43 dictates that every Order made by the Central Government under
Chapter VIII should be laid before both the Houses of the Parliament as soon as
it is made, and shall be subject to the modifications the Parliament may make
during that session or the session immediately following.
➢ THE INTERNATIONAL COPYRIGHT ORDER, 1999: The International
Copyright Order is an important piece of law concerning the copyright of foreign
works. It was passed on 24th March 1999 and came to force on 6th April 1999.
It was passed by the Central Government in the exercise of its power given in
Section 40 of the Copyright Act, 1957. It was passed in supersession of its
predecessor, the International Copyright Order of 1991. The Order contains the
conditions and formalities for foreign works and a schedule which is divided into
six parts which list out the countries that are eligible for copyright protection in
India. The countries which are parties to the
▪ Berne Convention, 1971
▪ Universal Copyright Convention, 1951
▪ Geneva Phonograms Convention, 1971
▪ Trade-Related Aspects of Intellectual Property Rights Agreement
ISSUES IN DIGITAL COPYRIGHT
Digital copyright encompasses a myriad of complex issues arising from the intersection
of technology, creativity, and intellectual property law. As digital technologies continue
to evolve, new challenges emerge that affect the creation, distribution, and protection
of digital content. Below are some major issues in digital copyright:
▪ Digital Piracy: Perhaps the most prominent issue in digital copyright is piracy,
which involves the unauthorized reproduction, distribution, or sharing of
copyrighted digital content. The ease of copying and sharing digital files over
the internet has led to widespread piracy of music, movies, software, books, and
other digital media. Piracy undermines the economic interests of copyright
holders and poses a significant threat to the viability of creative industries.
▪ File-Sharing and Peer-to-Peer (P2P) Networks: P2P networks allow users to
share files directly with each other without relying on centralized servers. While
P2P technology has legitimate uses, such as sharing open-source software, it has
also been exploited for illegal file-sharing activities. Platforms like BitTorrent
 have facilitated the mass distribution of copyrighted content, making it
challenging for copyright holders to monitor and control unauthorized sharing.
▪ Digital Rights Management (DRM): DRM refers to technological measures
used by copyright owners to control access to digital content and prevent
unauthorized copying or redistribution. While DRM aims to protect the rights of
copyright holders, it often imposes restrictions on legitimate uses of digital
content by consumers, such as making backup copies or transferring content
between devices. Moreover, DRM systems can be circumvented, leading to
debates about their effectiveness and impact on consumer rights.
▪ Fair Use and User-generated Content: Fair use is a doctrine in copyright law
that allows limited use of copyrighted material without permission from the
copyright owner for purposes such as criticism, comment, news reporting,
teaching, scholarship, or research. In the digital realm, issues arise regarding the
application of fair use principles to user-generated content, such as memes,
remixes, and parodies. Determining the boundaries of fair use in the context of
digital content creation can be challenging, leading to disputes and legal
uncertainties.
▪ Orphan Works: Orphan works are copyrighted works whose owners are
unknown or cannot be located. The proliferation of orphan works poses
challenges for individuals and institutions seeking to use or reproduce such
works for legitimate purposes, such as archival preservation, cultural heritage
projects, or educational resources. Issues surrounding orphan works include the
risk of inadvertent infringement and the need for mechanisms to facilitate the
lawful use of these works while protecting the interests of copyright holders.
▪ Cross-border Copyright Enforcement: In the digital age, copyright
infringement often transcends national borders, making enforcement efforts
more complex. Different jurisdictions have varying copyright laws and
enforcement mechanisms, leading to challenges in prosecuting cross-border
infringement cases and ensuring consistent protection of intellectual property
rights globally. International cooperation and harmonization of copyright laws
are essential to address these challenges effectively.
In conclusion, digital copyright presents a multitude of issues that require careful
consideration and innovative solutions. As technology continues to advance,
stakeholders must collaborate to balance the interests of copyright holders, consumers,
and the public interest while promoting creativity, innovation, and access to digital
content in a manner that respects intellectual property rights.

UNIT – 2
1. TRADEMARK: Trademark is a branch of intellectual property rights.
Intellectual property rights permit people to maintain ownership rights of their
innovative product and creative activity. The intellectual property came to light
because of the efforts of human labour, so it is limited by a number of charges
for the registration and charges for infringement. Types of intellectual property
are Trademarks, Copyright Act, Patent Act, and Designs Act.
▪ A trademark includes a name, word, or sign that differentiates goods from the
goods of other enterprises. Marketing of goods or services by the procedure
 becomes much easier with a trademark because recognition of product with the
trademark is assured and easier. The owner can prevent the use of his mark or
sign by another competitor.
▪ Trademark is a marketing tool which increases financing of the business. A
trademark is not always a brand but the brand is always is a trademark.
Sometimes there is a confusion between trademark and brand. The brand name
can be simply a symbol or logo but the trademark is a distinguishing sign or
indicator in a business organization as it has a wider implication than brands.
People are more influenced by the distinctive trademark that reflects the quality
of the product. A trademark can be a logo, picture mark or a slogan.
➢ TRADEMARK LAW IN INDIA: Before 1940 there was no law on trademarks
in India. A number of problems of infringement of registered and unregistered
trademark arose which were resolved under Section 54 of the Specific Relief
Act, 1877 and registration was adjudicated under the Indian Registration
Act,1908. To overcome these difficulties, the Indian Trademark law was
enforced in 1940. After the enforcement of the trademark law, demand for
protection of trademarks increased as there was major growth in trade and
commerce.
The Trademark law was replaced with the Trademark and Merchandise Act, 1958. It
provides better protection of trademark and prevents misuse or fraudulent use of marks
on merchandise. The Act provides registration of the trademark so that the owner of the
trademark may get a legal right for its exclusive use. This previous Act got replaced
with the Trademark Act, 1999 by the government of India by complying it with TRIPS
(Trade-related aspects of intellectual property rights) obligation recommended by the
World Trade Organization. The aim of the Trademark Act is to grant protection to the
users of trademark and direct the conditions on the property and also provide legal
remedies for the implementation of trademark rights.
The Trademark Act, 1999 gives the right to the police to arrest in cases of infringement
of the trademark. The Act gives a complete definition for the term infringement which
is frequently used. In Trademark Act, it provides punishments and penalties for the
offenders. It also increases the time duration of registration and also registration of a
non-traditional trademark.
TYPES OF TRADEMARK
Service mark: A service mark is any symbol name, sign, device or word which is
intentionally used in trade to recognize and differentiate the services of one provider
from others. Service marks do not cover material goods but only the allocation of
services. Service marks are used in day to day services :
▪ Sponsorship
▪ Hotel services
▪ Entertainment services
▪ Speed reading instruction
▪ Management and investment
▪ Housing development services
A service mark is expected to play a critical role in promoting and selling a product or
services. A product is indicated by its service mark, and that product’s service mark is
also known as a trademark.
Collective mark: A collective mark is used by employees and a collective group, or by
members of a collaborative association, or the other group or organization to identify
the source of goods or services. A collective mark indicates a mark which is used for
goods and services and for the group of organizations with similar characteristics. The
organization or group uses this mark for more than one person who is acting in a group
organization or legal entity for dividing the different goods or services. Two types of
collective marks for distinguishing with other goods or services of similar nature:
Collective mark indicates that the marketer, trader or person is a part of the specified
group or organization. Example – CA is a collective trademark which is used by the
Institute of the chartered accountant.
Collective trademark and collective service mark are used to indicate the origin or
source of the product.
A collective trademark is used by the single members of a group of an organization but
is registered as a whole group. Example- CA is the title or mark which given to the
member of Institute of a chartered accountant. That collective mark may be used by the
group of association. This was added to the Trademark Act, 1988.
Certification mark: A certificate mark is verification or confirmation of matter by
providing assurance that some act has been done or some judicial formality has been
complied with. A certification mark indicates certain qualities of goods or services with
which the mark are used is certified, a certification mark is defined in the Trademark
Act, 1999.
Certification trade mark means a mark competent of identifying the goods or services
in connection with which it is used in the manner of trade, which is certified by the
owner of the mark in respect of source, body, mode of manufacturer of goods or
performances of assistance, quality, accuracy or other characteristics.
Those goods or services which not so certified and registrable as such under this Act, in
respect of those goods or services in the name as the proprietor of the certification trade
mark, of that person. Registration of certification mark is done according to
the Trademark Act, 1999. Requirements for registration is the product must be
competent to certify.
Trade dress
Trade dress is a term that refers to features of the visual appearance of a product or
design of a building or its packaging that denote the source of the product to customers.
It is a form of intellectual property. Trade dress protection is implemented to protect
consumers from packaging or appearance of products that framed to imitate other
products.
Essential of trade dress:
▪ Anything that makes an overall look or overall dress and feel of brand in the
market.
▪ The consumer believes that trade dress is the main indicator of differentiation of
one brand or goods from others.
▪ The requirement for the registration of trade dress is the same as the registration
of the logo, mark. The features in trade dress are size, colour, texture, graphics,
design, shape, packaging, and many more.

Designation of trademark: Trademark is designated by:

™ (™ is used for an unregistered [Link] is used to promote or brand goods).
℠ ( used for an unregistered service [Link] is used to promote or brand services).
R (letter R is surrounded by a circle and used for registered trademark).

Uses of Trademark: Trademark identifies the owner of the product. Under any
authorized agreement of product, a trademark can be used, an example of trademarks
goods names are, iPod and a big mac. Company logos like the Golden Arches at
McDonald’s and McDonald’s “I’m lovin’ it. Brand names like Apple, McDonald’s, and
Dolce & Gabbana.
The usage of the trademark by unauthorized means or illegal means by producing it in
trading is known as trademark piracy. If there is an infringement of trademark, the owner
of the registered trademark can take legal action and for an unregistered trademark, the
only option is passing off. Many countries like the United States, Canada and many
more also, accept the trademark policies, so they also gave the right to the master of
product to take the action for the protection of their trademark A common concept of a
trademark is that the owner of a registered trademark has a more legal right for
protection than the owner of unregistered trademark.
The concept of usage of the non-physical trademark the Supreme Court held in the case
of Hardie trading Ltd. v. Addison paint and chemicals Ltd. The Supreme Court gave
a wider interpretation on the usage of a trademark that it could be non-physical and that
there were no grounds to restrict the user to use on the commodities or to the sale of the
commodities bearing the trademark.

SALIENT FEATURES OF THE TRADE MARKS ACT

The Trade Marks Act, of 1940 was India’s first trade mark law. Before then, trade mark
protection was controlled by common law. The Trade Marks Act, 1999, as modified, is
the current controlling legislation in India for trade marks. The 1999 Act was passed to
comply with the TRIPS rules. The salient features brought about in Indian trade mark
law by the Trade Marks Act, 1999, are as follows:
A. Including a service mark in the definition of a trade mark;
B. A new clause for collective marks’ registration;
C. Prohibition on registering some marks that are merely replicas or imitations of
well-known marks;
D. Provision for filing a single registration application for several classes of
products and/or services;
E. Increasing the term of registration of a trade mark from 7 to 10 years, including
a six-month grace period for payment of renewal costs.
F. Expansion of conditions under which registration validity may be challenged;
G. Giving the Registrar ultimate power over applications for registration of
Certification Trade Marks;
H. Aligning the punitive provisions of the Trade Marks Law with those of the
Copyright Law;
I. Provision for the formation of an Appellate Board.

2. INTERNATIONA TREATIES AND CONVENTION

The rules and regulations governing trademarks and related issues were established by
multilateral treaties. These accords lay forth the worldwide, local, and national legal
framework for the protection of trademarks. The protection of rights, harmonisation of
legislation, and multilateral filing are the fundamental goals of these treaties affecting
trademarks. The significant trademark-related treaties and conventions are listed below:
➢ PARIS CONVENTION– An international agreement known as the Paris
Convention for the Protection of Industrial Property was originally signed in
Paris, France, in 1883. A framework for the protection of industrial property
rights, such as patents, trademarks, and industrial designs, among member
nations was established by the agreement. The Paris Convention has undergone
numerous revisions, the most recent of which was in 1979, to take into account
technological advancements and new concerns around intellectual property. One
of the most commonly ratified international treaties relating to intellectual
property rights, the Paris Convention now includes 177 member nations. The key
principles of this convention are as follows: –
▪ National treatment: Every member nation is expected to accord foreign
trademarks the same level of protection as it does its own trademarks. The same
rights and legal safeguards are thereby provided to domestic and foreign
trademark owners.
▪ Priority: Within a certain timeframe, an applicant who has submitted a
trademark application in one member nation may assert priority for the same
trademark in other member countries.
▪ Registration – Establishing a system for trademark registration and publishing
information about registered trademarks in an official gazette or comparable
publication are requirements for member countries.
➢ MADRID AGREEMENT – An international agreement known as the Madrid
Agreement Concerning the International Registration of Marks was first signed
in Madrid, Spain, in 1891. With the agreement, trademark owners will have
access to a streamlined procedure for the international registration of their marks,
enabling them to obtain protection for their brands across a number of nations
with just one application. The Madrid Protocol, which was enacted in 1989 and
permits the international registration of trademarks through a comparable
procedure, currently complements the Madrid Agreement, which has undergone
multiple revisions, most recently in 2010. The Madrid Agreement is one of the
most generally ratified international agreements pertaining to trademark
registration and protection as of 2021, with 105 member nations. The Madrid
system benefits trademark owners in a number of ways. The key principles of
this agreement include the following: –
▪ International filing: A trademark owner may submit an application for
protection in one or more WIPO member nations by submitting an international
application with the organisation.
▪ Examining and registering: WIPO reviews the international application and
registers the trademark if it is accepted. The trademark is subsequently
automatically protected in all member nations that have been chosen.
▪ Renewal: To keep their rights in force, trademark owners must continue to pay
annual renewal fees for their international trademark registrations.
▪ Assignment: International trademark registrations may be fully or partially
assigned to other parties, and any such assignment must be filed with the WIPO.
➢ MADRID PROTOCOL – An international agreement known as the Madrid
Protocol was formed in 1989 to make the procedure of registering trademarks
across numerous nations simpler. The Protocol, which is overseen by the World
Intellectual Property Organisation (WIPO), is currently one of the main
procedures for registering trademarks globally. A trademark owner may submit
a single international application to WIPO under the Madrid Protocol, specifying
the member nations in which they want to seek protection. The trademark is then
immediately protected in all specified member countries after the application has
been reviewed and registered by WIPO. The Madrid Protocol has a number of
important components, including:
▪ Simplified filing: The Madrid Protocol enables trademark owners to submit a
single application to the World Intellectual Property Organisation (WIPO) rather
than making separate submissions in each nation where they want protection.
▪ Centralised administration: Under the Protocol, WIPO acts as the central
administering authority for the registration of international trademarks,
streamlining the procedure and lowering administrative burdens.
▪ Flexibility: Under the Protocol, trademark owners are free to enlarge the number
of nations included in their worldwide registration at any time and to renew it for
a further 10-year period.
➢ NICE AGREEMENT– A convention initially signed in 1957 in Nice, France,
is the Nice Agreement Concerning the International Classification of Goods and
Services for the Purposes of the Registration of Marks. In order to facilitate the
international protection of trademarks and streamline the trademark registration
process, the agreement aims to offer a standardised framework for categorising
goods and services for trademark registration. Since it was first approved, the
Nice Agreement has undergone multiple revisions, the most recent of which was
in 2019. The World Intellectual Property Organisation (WIPO) presently
oversees its administration. More than 150 nations utilise the nice categorization
for trademark registration and categorization as of 2021. According to the Nice
Agreement, the following guidelines must be followed when classifying goods
and services for trademark registration:
▪ 45 classes: There are 45 classes for products and services, with classes 1-34
covering goods and 35-45 covering services.
▪ System of classification: Each class is described by a particular collection of
phrases that specify the kind of commodities or services that fall under its
umbrella. Class 35, for instance, deals with advertising and business
management services, whereas Class 25 deals with apparel, footwear, and
headgear.
➢ VIENNA AGREEMENT – The “Vienna Agreement Establishing an
International Classification of the Figurative Elements of Marks,” which was
approved in Vienna, Austria in 1973, is a legal document. The classification of
figurative aspects of marks, such as logos, symbols, and designs, is standardised
by this treaty. Trademark offices all throughout the world search, register, and
categorise figurative components of marks using the Vienna Classification. The
 World Intellectual Property Organisation (WIPO), which oversees its
administration, has a database of all the figurative components of marks that fall
under the system’s classification. The worldwide protection of trademarks is
made easier by the Vienna Agreement and Vienna Classification, especially for
marks that contain figurative features. By giving these parts a standardised
classification system, the Agreement and classification assist to make trademark
law more uniform and understandable while also easing the administrative
burden associated with trademark registration and protection. The following
guidelines are provided by the Vienna Agreement Establishing an International
Classification of the Figurative Elements of Marks:
▪ 29 groups: According to the Vienna Classification, figurative aspects of marks
are divided into 29 groups.
▪ Classification system: A classification system is used, with each category being
specified by a particular set of phrases that specify the type and substance of the
figurative element, such as animals, people, letters or numbers, and geometrical
shapes.
▪ Optional classification: The Vienna Classification is an optional classification
for trademark applicants. However, the applicant may decide to classify a
figurative element in a trademark under the Vienna Classification if it is present.
▪ International protection: By offering a standardised system for the
classification of these features, the Vienna Agreement and Classification support
the international protection of trademarks that incorporate figurative elements.
➢ SINGAPORE TREATY – On March 27, 2006, Singapore signed the Singapore
Treaty on the Law of Trademarks, an international agreement. The convention
creates global norms and practices for the registration and administration of
trademarks. The Singapore Treaty’s main guidelines are as follows:
▪ Formalities: The treaty outlines uniform formalities, such as application
requirements and examination processes, for the filing and registration of
trademarks.
▪ Classification: The Nice Classification system is to be used in accordance with
the treaty to classify goods and services.
▪ Electronic filing: For trademark applications and other associated procedures,
the convention supports the use of electronic filing and communication.
▪ Non-traditional marks: According to the treaty, non-traditional marks like
colour marks and sound marks may be registered.
▪ Renewals: The treaty lays out standard operating processes, including renewal
fees and scheduling, for trademark registration renewals.
In order to reduce costs and improve efficiency for trademark owners and
administrators, the Singapore Treaty seeks to harmonise and streamline worldwide
trademark registration and management operations. The World Intellectual Property
Organisation (WIPO) is in charge of managing it, and there are currently more than 50
member nations.
➢ TRADEMARK LAW TREATY – An international agreement known as the
Trademark Law Treaty (TLT) was approved in 1994 in Geneva, Switzerland.
The agreement intends to standardise and simplify the formalities involved in
 trademark registration processes in all signatory nations. The TLT’s main
clauses are as follows:
▪ Standards for filing: The TLT specifies uniform standards for filing trademark
applications, including the minimal data needed for the application, the
categories of products and services that may be covered by the mark, and the
kind of mark that may be registered.
▪ Examining trademark applications: The TLT defines uniform examination
methods, including the timing of the inspection and the reasons for rejecting a
trademark application.
▪ Publication and opposition procedure: The TLT lays out guidelines for the
publication of trademark applications, the right of third parties to oppose a
trademark application, and the steps to take when filing an objection.
▪ Renewal procedures: The TLT outlines the conditions for and duration of
trademark registration renewals. It also outlines the prerequisites for renewal.
The TLT aspires to speed up and streamline trademark registration processes, cut
expenses, and give trademark owners and applicants more legal security. In 2021, there
will be 49 including the United States, Japan, and numerous European nations— TLT
members.

➢ NAIROBI TREATY – An international agreement known as the Nairobi Treaty

on the Protection of the Olympic Symbol was passed in Nairobi, Kenya, in 1981.
The Olympic symbol, which consists of the five interlocking rings and the word
“Olympic,” is protected by the treaty from unauthorised use and
exploitation. The Nairobi Treaty’s main clauses are as follows:
▪ Protection of the Olympic emblem: Under the terms of the treaty, the Olympic
symbol is protected as a trademark, making it illegal to use it without
authorization in connection with products or services.
▪ Registration – The Olympic emblem may be registered as a trademark with the
national trademark offices of participating nations under the terms of the treaty.
▪ Enforcement of rights: The treaty outlines civil and criminal penalties for
violation as well as the enforcement of trademark rights pertaining to the
Olympic emblem.
▪ Limitation: The agreement has limitations and exceptions to the protection of
the Olympic emblem, such as fair use in news reporting and commentary.
The Nairobi Treaty aims to safeguard the Olympic Games’ honour and prestige as well
as to stop the unlicensed commercial exploitation of the Olympic symbol. The Nairobi
Treaty has 112 signatories as of 2021, including the United States, China, and numerous
European nations.
➢ TRIPS AGREEMENT – Trademark enforcement and protection are covered
by the TRIPS Agreement’s requirements. In particular, the agreement mandates
that member nations guarantee the protection of trademarks, including collective
marks and certification marks, and make sure that both domestic and foreign
citizens have access to this protection. The TRIPS Agreement lays out guidelines
for the enforcement and protection of trademarks, such as:
 ▪ The meaning of trademarks: Trademarks are any signs that can differentiate
the goods or services of one person from those of another, according to the
TRIPS Agreement.
▪ Trademark protection: According to the TRIPS Agreement, member nations
must provide the protection of trademarks, including collective marks and
certification marks, and make sure that both domestic and foreign citizens have
access to this protection.
▪ Scope: The TRIPS Agreement mandates that member countries protect both
registered trademarks and well-known marks that are not registered, as long as
those trademarks are recognised in the member state in question.
▪ Trademark enforcement: According to the TRIPS Agreement, member
nations must offer both civil and criminal penalties for trademark infringement,
as well as injunctions, monetary fines, and the confiscation of infringing goods.
▪ Border controls: According to the TRIPS Agreement, member nations must
establish procedures for the detention of items suspected of violating intellectual
property rights at the border and for the destruction of such goods if they are
determined to be infringing.
Overall, the TRIPS Agreement’s regulations support greater uniformity and
harmonisation in how trademarks are handled across various nations and regions and
offer a framework for the defence and enforcement of trademark rights.

3. How to Register Trademarks: The registration process in India is a ‘first to file’

basis. Therefore, it is important to apply for registration as soon as possible. A
trademark usually takes 2-3 years to get registered, if the trademark is not being
opposed by a third party. Trademark applications are handled by the Office of
the Controller General of Patents, Trade Marks, Industrial Designs and
Geographical Indications. Branches for these offices are available in Mumbai,
Kolkata, Ahmedabad, Delhi and Chennai. The application must be filled as per
territorial jurisdiction. To register a trademark in India the following steps must
be followed:-
▪ Select a trademark agent in India: Proprietors are only allowed to file a
trademark application if their place of business is in India. If this is not the case,
the right holder must file a trademark application through an agent or attorney.
The agent or attorney usually takes care of the trivialities such as searching,
preparing, filing and prosecution of the trademark.
▪ Determination of the eligibility and availability of the trademark: The agent
usually starts the registration process by determining whether the trademark is
eligible for registration and conducting a clearance search to see if there is a
similar mark in the office of the controller general.
▪ Completing the application form and filing: If the trademark agent has the
power of attorney from the right holder he can complete and file the application
form. The form will require details such as name and address of the proprietor, a
description of the goods and services associated with the mark, whether the mark
is in use and a copy of the mark.
▪ Review by the trademark office: The trademark office reviews the application
to see if it is complete and then allots the application a number. If the trademark
is registered, this number becomes the registration number.
▪ Preliminary approval and publication, show cause hearing or rejection of
the application: The trademark association determines if the application is
barred from registration either on absolute or relative grounds for refusal as
prescribed in the Trade Marks Act, 1999. After this, they issue an examination
report within a period of one month. Depending on the examination report the
registrar of the trademark determines whether the application must be accepted,
rejected or put up for ‘show cause ‘ During a ‘show cause hearing’ subject to the
facts an application might be rejected, accepted or accepted with certain
limitations. If the application is rejected, the applicant can appeal at the
Intellectual Property Appellate.
▪ Registration: Within the term of three months publication in the Trademarks
Journal, if not opposed by a third party, the trademark will proceed for
registration and the trademark authority will proceed to give a registration
certificate.

4. GROUND OF REFUSAL
➢ Absolute grounds for refusal of registration (Section 9): Section 9 of the
Trademark Act, 1999 lays down various conditions, which makes it a hard stop
for getting a Trademark grant if the proposed mark is found to fulfil those
conditions. The grounds are:
 ▪ Marks which are devoid of any distinctive character,
▪ Marks that are indications or marks that are used in commerce to define the
quantity, quality, type, values, intended purpose, or geographical origin of goods
or services rendered,
▪ Marks or indications which have become customary in the current language or
in the bona fide and established practices of the trade, shall not be registered,
▪ Nature of the mark is such that it can deceive the public or cause confusion,
▪ The mark it contains or comprises of any matter likely to hurt the religious
susceptibilities of any class or section of the citizens of India,
▪ If the mark comprises or contains scandalous or obscene matter,
▪ If the use of the mark is prohibited under the Emblems and Names (Prevention
of Improper Use) Act, 1950 (12 of 1950),
▪ Marks resulting from the nature of the goods themselves,
▪ Marks that add significant value to the goods,
▪ Marks whose shape adds significant value to the goods.
These absolute grounds of refusal are related to the benefit of public policy – with the
legislative intent to protect the legitimate interest of the traders as well as the public
who are genuine and bona fide users of various marks in relation to their goods/services.
However, if a mark has acquired “distinctive character” over a period of time and has
thus become a “well known trademark”, the same wont be refused for registration –
given the fact that the applicant is able to prove the same.
➢ Relative Grounds for refusal of registration (Section 11)
Section 11 of the Trademark Act, 1999 mentions the relative grounds for refusal for
registration of a mark. If a mark is found to confuse public on account of a mark being
identical or similar to an earlier trademark, the same won’t be allowed for registration
under this section. Various other grounds which are listed under relative grounds of
refusal are:
▪ Section 11(1) states the following grounds for refusal: Trademarks which
confuse the public as it is identical with an earlier similar trademark of goods or
services. Trademarks which confuse the public as it is similar with an earlier
identical trademark of goods or services.
▪ Section 11(2) states the following grounds for refusal: Trademarks which would
take unfair advantage of a similar or identical earlier well-known trademark in
India. Trademarks which would be detrimental to the distinctive character or
repute of a similar or identical earlier well-known trademark in India.
▪ Section 11(3) states the following grounds for refusal: The usage of the
trademark is bound to be prevented by the law of passing off protecting an
unregistered trademark used in the course of trade. The usage of the trademark
is bound to be prevented by the law of copyright.

Section 12 of the Trademarks Act, 1999 : honest and concurrent use: A trademark
is meant to indicate that the goods come from one source and one source only, hence
using the same brand simultaneously by two or more people for the same items is
completely against the intent of trademark law. However, Section 12 of the Trademark
Act of 1999 contains provisions to handle extraordinary situations resulting from
distinctive persons’ lawful concurrent use of the same or a similar mark. The Registrar
may allow the registration of identical or similar trademarks by more than one proprietor
for the same or similar goods and services (regardless of whether any such trade mark
is already registered) in the case of honest concurrent use or other special circumstances
that, in the Registrar’s opinion, make it proper to do so, subject to such conditions and
limitations, if any, as the Registrar may think fit to impose. This provision is similar
to Section 12 (3) of the Trade and Merchandise Marks Act 1958, with the difference
that services are included, the word “similar” is used instead of “nearly resemble each
other,” and the phrase “similar products” is used instead of “depiction of merchandise.”
Section 12 permits the registration of identical or similar trademarks for the same or
similar goods by more than one proprietor. It is an exception to the Section 11 rule that
prohibits the registration of similar marks and supersedes the Section 11 rule that
simplifies denial. It is made clear in the enclosure that the exclusion applies to
unregistered marks as well by the phrase “whether any such trademark is presently
enrolled or not.” The use of the phrase “he may allow registration” indicates that
allowing concurrent registration is optional. The registrar has the authority to impose
any restriction or limit when allowing registration. Aspirants are responsible for setting
up a registration instance under the Section. The other provision of the statute must
obviously be complied with before registration might be permitted on the basis of honest
concurrent use. Due to the application’s lengthy waiting period, the group cannot profit
from subsequent users. Since the clause calls for honest concurrent usage, it follows
that the claimed use must also be concurrent and honest. Concurrent use does not mean
that the petitioner’s use has overlapped with the rival’s registration; rather, it means that
the petitioner’s use must be contemporaneous with the rival’s use of the registered mark.
“Concurrent” does not have the same value as “contemporaneous”.

WELL-KNOWN TRADEMARKS : Section 2(1)(zg) of the Trademarks Act, 1999,

defines a well-known trademark as a mark that has gained enough recognition among a
significant portion of the public who utilise such goods or obtain such services that the
use of the mark in relation to other goods or services is likely to be interpreted as
denoting a connection between those goods or services and the person using the mark
in connection with the first mentioned goods or services.
▪ Trademarks and other commercial logos traditionally identify the commercial
derivation of goods and services while assuring consumers and other
stakeholders of a specific standard. Exclusive rights to trademarks and trade
symbols have become more crucial for any player wishing to compete globally
in building a strong commercial brand. The revised Trade Mark Rules,
2017 have introduced a new process that enables the Registrar to declare a
specific brand to be ‘well-known.’ In accordance with the new regulation, a
trademark owner may submit a form TM-M application with a request to the
Registrar for the designation of the mark as ‘well-known.’
▪ Process of filing a well-known trademark
▪ The High Court of India, the Intellectual Property Appellate Board, and the
Supreme Court of India are all appropriate referral points for determining
whether or not a trademark has attained a “well-known” status. However, the
situation has changed since the Trademark Rules, 2017 were officially
published. According to Rule 124 of the Trademark Rules, 2017, any interested
 party can submit an application online by filling out Form TM-M and attaching
the required documents, such as a statement in support of the application that
includes the reasons the trademark should be recognised as well-known and
paying the required fees. In addition to the fact that well-known trademarks do
not need to be used in India in order to be registered, the fact that the protection
is extended regardless of differences in the field of business, goods, or services
is also an advantage for multinational companies seeking comprehensive brand
protection in India.
➢ Selection of a trademark: A trademark should be something truly special if one
wants it to stand out in the marketplace. Secondly, knowing what social group
an individual falls into is crucial. Registration of the trademark can be sought in
45 different “classes” of goods and services at the moment. Products fall into
classes 1-34, whereas services fall into classes 35-45.
▪ Mark search: Once the mark is settled, an individual should look it up in a
database to see if it is comparable to any other trademarks that are already in use.
The Controller General of Patents, Designs, and Trademarks has a webpage
where one can undertake this research on their own. A public search feature is
available on the site. Once the link is selected, a subject area has to be selected
and a database search has to be conducted. The alternative, however costlier, is
to seek the advice of an attorney. If the trademark is challenged, the total cost of
legal representation will be less.
▪ Application: Multiple classes, series, or collective trademark applications can
be filed in a single application. A special form (TM-A) needs to be filled out for
this. Registration in more than one class for the trademark is possible with this
form. There are two price tiers for submitting this form:
Nine thousand or ten thousand rupees: This category includes everyone other than
sole proprietors, very small businesses, and individuals. The filing fee is Rs. 9,000 if
the form is submitted electronically and Rs. 10,000 if the form is submitted in person
to the Office of Trademarks.
Four thousand five hundred or five thousand rupees: The fee for filing the form
electronically is Rs. 4,500, while the fee for filing the form manually is Rs. 5,000.
Typos or grammatical errors on the form must be avoided, as doing so could cause the
application to be delayed or even rejected. The form must be completed and provide a
9-by-5-cm image of the trademark. Two copies of the entire file must be submitted with
the original paperwork.
It can be submitted online, in person, or through an agent. If filed electronically, a
confirmation will be received of the submission right away; whereas if it is emailed or
faxed, the waiting period may extend up to two weeks.

➢ Definition and Criteria of Passing Off:: Passing off refers to the act of
misrepresenting one’s goods or services in a manner that creates confusion
among consumers, ultimately leading to damage to the reputation or goodwill of
another party. To establish passing off, several essential criteria must be met.
Firstly, the claimant must prove that they have goodwill or a reputation
associated with their goods or services. Secondly, there must be a
misrepresentation made by the defendant that deceives or is likely to deceive
 consumers into believing their goods or services are that of the claimant. Lastly,
there must be actual or potential damage caused to the claimant’s goodwill or
reputation as a result of the misrepresentation.
Passing Off: Passing off can be defined as the exploitation of another party’s reputation
or goodwill by misrepresenting goods or services as those of one’s own. It occurs when
a defendant misleads the public into believing that their goods or services are associated
with the plaintiff’s, causing damage to the plaintiff’s reputation or business. Passing off
is not explicitly governed by statute but is based on common law principles.
To establish passing off, the plaintiff must prove three essential elements: goodwill or
reputation, misrepresentation, and damage. Goodwill refers to the reputation or public
recognition enjoyed by a person or business due to the quality of goods or services
offered. Misrepresentation can occur through various means, such as using a similar
trade name, packaging, or logo. The plaintiff must demonstrate that they have suffered
actual or potential damage as a result of the defendant’s misrepresentation.
Understanding Passing Off: Passing off refers to a situation where a business
misrepresents its goods or services as those of another business, causing confusion
among consumers. In order to establish passing off, the claimant needs to prove three
elements: goodwill, misrepresentation, and damage.
One notable case that exemplifies passing off is Reckitt & Colman Products Ltd. v.
Borden Inc. (1990). The court held that the claimant’s goodwill, built through
considerable advertising and promotion, was infringed upon when the defendant used a
similar packaging design to market their products. This case highlights the importance
of protecting a business’s reputation and consumer trust.

➢ Infringement:: Infringement, unlike passing off, is a statutory concept and is

covered under the Trademarks Act. It takes place when a person uses a registered
trademark without the permission of the trademark owner or uses a mark that is
confusingly similar to a registered trademark. Section 27 of the Act provides an
extensive definition of infringement, including unauthorized use of the identical
mark, use of a deceptively similar mark, and use of the mark in relation to
different goods or services.
To establish trademark infringement, the plaintiff must show that their mark is
distinctive, that it is registered, and that the defendant’s use of a similar mark in the
same or related goods or services is likely to cause confusion among consumers. The
concept of likelihood of confusion is vital in determining trademark infringement.
Factors such as visual similarity, phonetic similarity, nature of goods or services, and
marketing channels are considered in assessing the likelihood of confusion.
Infringement and its Elements:
Infringement, on the other hand, occurs when someone without authorization uses a
trademark that is identical or similar to a registered trademark in relation to goods or
services for which the trademark is registered. Infringement can also extend to goods
or services that are similar to those for which the trademark is registered, causing
confusion among consumers. To establish infringement, the claimant must prove that
they possess a valid registered trademark, that the defendant’s use of the trademark is
unauthorized, and that there is a likelihood of confusion among consumers.
Exceptions to Infringement Actions:
The infringement actions are crucial, there are certain exceptions that can be considered
in specific situations. These exceptions allow for the lawful use of a trade mark, even
without the owner’s consent.
1. Consent: If the trade mark owner provides explicit consent for another party to use
their mark, infringement actions may not be applicable. This consent can be in the form
of a licensing agreement or any other legally binding arrangement.
2. Necessity: In some cases, the use of a trade mark may be necessary to describe a
product or service. This exception applies when the use of the mark is purely descriptive
and does not create confusion or deception among consumers.
3. Fair Use: The fair use exception allows for the use of a trade mark in certain
circumstances, such as for comparative advertising or commentary purposes. This
exception ensures that freedom of expression is upheld while balancing the rights of
trade mark owners.
4. Exhaustion of Rights: When a trade mark owner sells their goods or services under a
mark, they may exhaust their rights to control further distribution or resale of those
goods or services. This means that the subsequent use or sale of the mark by others may
not be considered infringement.
The infringement may seem straightforward, exceptions to infringement actions exist
in certain cases where the use of an identical or similar trademark is permitted. Section
27 of trademark law outlines various exceptions to infringement actions, including the
use of trademarks with consent from the registered owner, descriptive use of
trademarks, use in relation to parts or accessories, and trademark use for comparative
advertising. Furthermore, section 34 provides for the exception of prior use, allowing
individuals who have used a trademark before its registration to continue using it
without being liable for infringement.
One landmark case in the field of trade mark infringement is Cadbury-Schweppes Pty
Ltd v. Pub Squash Co Pty Ltd (1981). The court ruled in favor of Cadbury-
Schweppes, stating that the defendant’s use of the term “Pub Squash” infringed upon
the claimant’s registered trade mark “Squash.” This case emphasizes the significance of
protecting the distinctiveness of trademarks and preventing confusion in the
marketplace.
➢ Exceptions to Infringement Actions (Sections 27-30 and Section 34):
▪ The Trademarks Act provides certain exceptions to infringement actions. Section
27(2) states that the use of a registered trademark by another person who already
has a right to use the mark in a particular territory, whether or not they are
licensed, does not constitute infringement. This provision is intended to protect
concurrent or nonexclusive rights granted to different parties.
▪ Section 28 of the Act outlines additional exceptions, such as honest concurrent
use and prior use. Honest concurrent use refers to the situation where two or
more parties have been using similar marks without knowledge of each other’s
activities. If the use of the mark by the defendant can be considered honest and
does not cause confusion, it may not be deemed infringing. Prior use refers to
the use of a mark by a person before the registration of the mark by another party.
In such cases, the prior user may be allowed to continue using the mark under
certain circumstances.
 ▪ Section 34 provides a defense to infringement actions if the use of a registered
trademark constitutes fair use of a person’s name or address, the description of
goods or services, or other indications concerning the characteristics of the goods
or services. This exception recognizes that the use of trademarks in descriptive
or non-trademark ways should not be prohibited. While trade mark owners have
exclusive rights over their marks, there are certain exceptions to infringement
actions that allow others to use a trade mark without the owner’s consent. These
exceptions include fair use, comparative advertising, and exhaustion of rights.
Analysis of Sections 27-30 and Section 34:
Sections 27-30 of trademark law clarify the exceptions to infringement actions,
providing necessary protection to individuals and enterprises engaging in legitimate
activities. For instance, section 28 signifies that the use of a trademark by a person for
the purpose of identifying goods or services as exclusively meant for exportation does
not constitute infringement. Moreover, section 29 stipulates that the use of a personal
name, bona fide description of goods or services, or indications of the intended purpose
of goods or services does not amount to infringement. Section 30 deals with the use of
registered trademarks in relation to parallel imports, specifying that such use does not
constitute infringement.
The comparison between an infringement action and passing off is portrayed below:
Infringement Action Passing Off Action
It is a legal remedy. It is a remedy under common law.
The defendant must use the infringing Defendant’s products do not have to be
mark on the same items as the plaintiff’s identical; they might be related or even
registered mark. distinct.
The sole requirement to prove trade In a passing-off lawsuit, it is not
mark infringement in relation to a enough to simply show that the
registered trade mark is that the markings are the same or confusingly
infringing mark is identical to or similar. The mark’s usage must be
misleadingly similar to the registered liable to mislead or create
mark. misunderstanding.
It must be demonstrated that the
There is no requirement that the
defendant’s use of the trade mark is
defendant’s use of the mark harms the
likely to harm or impair the plaintiff’s
plaintiff in any way.
goodwill.
➢ Remedies: Remedies act as a measure for infringement of both the registered as
well as unregistered trademarks. In the former case, it acts as an action to initiate
the proceedings of infringement in a court of law while in the latter case, it helps
in passing off the infringement to the hands of common law. In India, it is Section
29 and Section 30 of the Trade Marks Act, 1999 which lays down remedies for
infringement of trademarks. The remedies discussed below are the ones which
are adopted according to the facts and circumstances of the case in hand.
▪ CIVIL REMEDIES: The Trade Marks Act, 1999 lays down certain civil
remedies to be given to the ones whose trademark has been infringed. They are:
Injunction or authoritative direction by the court of law is a common civil remedy
that can be provided with. The two kinds of injunction that can be granted are
 perpetual and temporary injunction. Perpetual injunction is granted depending
on the suit concerned and when the same is supposed to be decreed and therefore
is of permanent nature. In the case of a temporary injunction, a specified time
frame comes into the consideration which in this case will be till the court passes
its final orders regarding the matter. The same can be asked for under Order 39
Rule 1 and 2 of the Code of Civil Procedure. This rather nullifies the purpose of
filing the suit and thus allows the defendant to continue usage of the mark similar
as that of the plaintiff.
Damages can be claimed by the aggrieved party on grounds that the exclusive right of
using the trademark he owns has been ceased and this subsequently has led to him or
his enterprise suffering losses. A civil remedy that is often claimed is handling of the
profit accounts along with a command for delivery or removal of the products that have
been infringed.
▪ Section 135 of the Trade Marks Act, 1999 provides statutory identification
towards the Anton Piller Order which in turn prevents the defendant from taking
off assets from the court’s jurisdiction. The concerned court often appoints a
local commissioner in order to seal the goods or materials that are infringing in
nature as an execution of a civil remedy. So in case of civil remedy, the court
either provides for the grounding of the defendant’s goods or services that is
responsible for causing confusion in the minds of the consumers or makes him
pay the damages caused to the plaintiff. At times when civil remedies do not
succeed in fulfilling the loss of the plaintiff, the court resorts to civil remedies.
▪ CRIMINAL REMEDIES: If we take a look at the Trade Marks Act,1999, it can
be viewed that there are several provisions that can be counted as a criminal
remedy for the infringement of trademark. The following are laid down below:
▪ Sections 103 of the Act lays down criminal remedy for the contravention of the
trademark of any individual or entity which lays down a period of six months of
imprisonment which can be extended till a time frame of three years for
infringing trademark rights.
▪ Section 104 of the Act talks about penalties that need to be provided as a sanction
against an infringement. The section mentions a fine of fifty thousand rupees
which can be increased till an extent of two lakhs in case someone is found to
transgress the trademark rights.
▪ An inflating version of punishment is laid down under Section 105 of the same
Act.
A seizure of powers of the person liable for infringing can be carried out as a criminal
remedy for an efficient adaptation to the above provisions. This procedure carried out
by police is subjected to reasonable grounds of proving the infringement only.

➢ TRADEMARK ASSIGNMENT: The following is the definition of trademark

assignment: – A trademark assignment is the transfer of the owner’s right in a
trademark to another person. The transferring party is referred to as the assignor,
and the receiving party is referred to as the assignee. The Trade Marks Act of
1999 defines “assignment” as a written assignment made by the parties engaged
in Section 2(b). Assignment is the process of transferring ownership rights to
another individual.
Who Has the Authority to Assign a Trademark: Section 37 of the Trademark Act of
1999 defines “trademark assignment.” A trademark assignment, according to the
definition, is the transfer of ownership of a trademark and a brand mark. Section 37 of
the Trademarks Act of 1999 states that the person registered as the trademark’s
proprietor in the register of trademarks has the ability to assign a trademark and receive
compensation for doing so. As a result, the owner of a trademark may transfer
ownership to another person.
DOCUMENTS REQUIRED FOR ASSIGNMENT OF TRADEMARK:The
trademark registrar must receive the following paperwork in addition to the form TM-
P: –
▪ Agreement for a trademark assignment;
▪ Certificate for a trademark;
▪ The assignor’s NOC; and
▪ Documentation proving the assignor’s and assignee’s identities.
➢ TRADEMARK LICENSING: Trademark licensing is merely the license
granted by the trademark owner to a third party. A Royalty is paid in exchange
for such a license. As an example: – When a brand owner authorizes and permits
a third party to use his or her brand/mark in the course of trade for products or
services.
Who has the authority to give a trademark license: The trademark license can only
be granted by the owner or holder of the registered trademark. It is important to note
that under Indian law, both registered and unregistered property can be transferred. An
assignment or a license can be used to transfer a trademark.
To register the trademark license: –
▪ The agreement must be in writing;
▪ The trademark owner and the intended user should apply for registration (section
49) with the Trademark Registrar jointly;
▪ The form to use for the application is TM-U;
▪ An affidavit signed by the owner of the trademark and authenticated by him or
her, detailing the license’s terms and specifying the following: –
▪ Relationship between the parties
▪ Duration of the use
▪ Goods/services for which it is applicable
▪ The government fee for Each mark will be 4500.
➢ Difference between trademark licensing and trademark assignment: A
registered trademark can change owners through a trademark assignment.
Whereas, trademark licensing is the transfer of certain rights (In a restricted
manner) of a registered trademark while retaining the ownership over the
trademark.
Section 48 Registered users:
(1) A person other than the registered proprietor of a trademark may be registered as a
registered user thereof in respect of any or all of the products or services for which the
trademark is registered, subject to the terms of section 49.
(2) For the purposes of section 47 or any other purpose for which such use is material
under this Act or any other legislation, the authorized use of a trade mark shall be
deemed to be used by the proprietor thereof, and shall not be deemed to be used by a
person other than the proprietor.
Section 49 Registration of registered users: As a registered user, you must first
register.
(1) When it is proposed that a person be registered as a registered user of a trademark,
the registered proprietor and the proposed registered user must jointly apply to the
Registrar in writing in the specified way, and each such application must be supported
by—
(a) the written agreement, or a legally certified copy thereof, between the registered
proprietor and the proposed registered user regarding the permissible use of the
trademark; and
(b) an affidavit produced by the registered proprietor or by someone entitled to act on
his behalf to the satisfaction of the Registrar,—
( i ) giving particulars of the existing or proposed relationship between the registered
proprietor and the proposed registered user, including particulars demonstrating the
degree of control by the proprietor over the permitted use that their relationship will
confer, and whether it is a term of their relationship that the proposed registered user
shall be the sole registered user or that there shall be any other restriction as to persons
for whose registration as registered users registration is sought.
(ii) specifying the goods or services for which registration is sought;
(c) any other documents or other evidence required by the Registrar or specified by law.
2) When the conditions of sub-section (1) are met, the Registrar shall register the
proposed registered user for the goods or services with which he is satisfied.
(3) The Registrar shall notify other registered users of the trademark, if any, of the
registration of a person as a registered user in the required way.
(4) If asked by the applicant, the Registrar shall take steps to ensure that information
provided for the purposes of an application under this section (other than facts put in
the register) is not disclosed to competitors in trade.
Section 50 Power of registrar for variation or cancellation of registration as a
registered user:
(1) A person’s registration as a registered user is made without regard to the provisions
of Section 57.
A. may be modified by the Registrar with regard to the goods or services for which
it is effective upon the application in writing made by the registered proprietor
of the trademark in the required way;
B. can be revoked by the Registrar upon written request made by the registered
proprietor, registered user, or any other registered user of the trademark in the
manner provided;
C. may be revoked by the Registrar at any time, either on his own initiative or in
response to a written request made in the prescribed manner by any person, on
the grounds that any provision relating to the quality of the goods or services for
which the trade mark is to be used in the registration agreement between the
registered proprietor and the registered user is either not being enforced or is not
being complied with;
D. In regards to any goods or services for which the trademark is no longer
registered, the Registrar may cancel the registration.
(2) For each application made pursuant to this section, the Registrar shall give notice to
the registered proprietor and each registered user of the trademark who is not the
applicant in the manner specified by this section.
(3) If necessary, the following steps may be taken to cancel a registration:
With the caveat that the registered proprietor must have a reasonable opportunity to be
heard before registration can be cancelled.
Section 51 of the Trade Marks Act 1999: Registration authority to request
information on agreements pertaining to registered users: The Registrar has the
authority to request information about agreements pertaining to registered users.
(1) The Registrar may, at any time while the registered user’s registration is active,
demand the registered proprietor to attest to him in writing within one month that the
agreement filed pursuant to clause. Section 49’s sub-section (1), clause (a), is still in
effect.
(2) The registered user ceases to be the registered user on the day immediately following
the expiration of the specified time, and the Registrar shall notify you of this. This
occurs if the registered proprietor fails to provide the confirmation within one month as
required under subsection (1).
Right of registered user to file a lawsuit against infringement under Section 52 of
the Trade Marks Act of 1999
(1) Subject to any existing agreement between the parties, a registered user may bring
an infringement lawsuit in his or her own name and name the registered proprietor as a
defendant, with the registered user’s rights and obligations in the case running
concurrently with the registered proprietor’s.
(2) Irrespective of any other law, a registered proprietor who has been added as a
defendant in this way is not responsible for any costs until he presents an appearance
and participates in the proceedings.
Section 53 of the Trade Marks Act 1999: No right of the permitted user to take
proceeding against infringement: The individual mentioned in subclause (ii) of clause
(r) of section 2’s subsection (1) is not entitled to bring any legal action for any
infringement.

➢ Benefits Of Assignment Of A Trademark: The trademark owner can profit

from the value of their brand through trademark assignment. The trademark
assignment provides the assignee with the right to an established and well-known
brand. The transfer of a trademark can help both the assignor and the assignee
expand their businesses. Both the assignor and the assignee can clearly define
their legal rights and obligations through a trademark assignment agreement.
Benefits of Trademark Licensing
▪ Financial Benefit: Both parties can avail financial benefits as the Trademark is
extensively exploited for profit & royalty is paid to the owner. The Licensor, who
couldn’t exploit their Trademark, say, due to deficiency of visibility or resources,
can now make the use of Licensee’s resources by permitting them the license &
make more profits. The Licensee also gets their share in the profits.
▪ Expand Trademark’s Popularity: As the Trademark reaches a huge number of
customers, it automatically becomes popular. This promotes more sales, which
boosts revenue, and promotes additional trademark licensing.
 ▪ Help in Expanding Business: The Trademark owner’s business expands, and
its outreach spreads to various territories. The business no longer detains itself
to a specific area; rather, the Licensee can use their distributor skills for the
expansion of the business.
▪ Brand Recognition: Trademark as a brand becomes a well-known one in
territories it was previously unknown. The Licensee is allowed to widely
advertise using their resources.
▪ Reduce or Distribute Workload: The Licensee, in a way, becomes the
Licensor’s partner. The workload of the Licensor is reduced & he or she doesn’t
need to worry regarding the quality of products & services as the Licensee is
equally accountable for maintaining the products’ quality, he or she creates using
the Trademark.
➢ APPEALS TO THE APPELLATE BOARD
Section 91 of the Trade Marks Act of 1999 addresses appeals to the appellate board.
Earlier, the applicant’s ultimate recourse, once the registration is rejected, is to file an
appeal with the Intellectual Property Appellate Board (hereinafter referred to as the
“IPAB”) within three months after the day the Registrar issued the rejection decision.
But recently, the Tribunals Reforms (Rationalisation and Conditions of Service) Act,
2021, was proclaimed, dissolving the Intellectual Property Appellate Board by revising
the Trade Marks Act, 1999. Some of the most recent modifications to the Trade Marks
Act, 1999, are detailed below:
▪ The IPAB has been abolished.
▪ Any procedures for cancellation of a mark based on non-use under Section 47 of
the Act will henceforth be heard exclusively by the Registrar or the High Court.
▪ In addition to the Registrar of Trade Marks, any procedures for correction of a
mark under Section 57 of the Act can now be brought before the relevant High
Court possessing jurisdiction.
▪ All appeals under Section 91 of the Act will be heard by the High Court rather
than the IPAB.
▪ A claim for trade mark infringement is delayed under Section 124 of the Act if
the defendant pleads invalidity of the mark or raises a defence under Section
30(2)(e) of the Act and if rectification procedures against the defendant’s mark
are underway before the Registrar or the High Court prior to the initiation of suit,
the plaintiff pleads invalidity.
▪ If rectification proceedings are not ongoing and the court determines that the
invalidity of the mark claim is plausible at first glance, it will raise the matter
and postpone the case for three months so that the party in question can apply to
the High Court for rectification of the mark. It will also raise the issue if the
rectification application is made within three months, at which point the court
may permit the trial of the claim.
▪ Appeals from the Registrar of Trade Marks orders will henceforth be heard by
the relevant High Court depending on the jurisdiction of the Registrar making
the orders and must be submitted within three months of the date the order was
informed to the appellant. In such cases, the phrase “prescribed” has been
enlarged to cover regulations imposed by the High Court as well as rules made
under the Trade Marks Act.
➢ PROCEEDINGS IN OPPOSITION
▪ Section 21 of the Trade Marks Act, 1999, addresses opposition to registration
and should be read in connection with the Trade Marks Rules, 2002.
▪ Rule 42 talks of notice of opposition, it states that within four months of the date
of publication of the trade mark journal in which the application for registration
of the trade mark was advertised or re-advertised, a notice of opposition to the
registration of a trade mark under the sub-section (1) of Section 21, with the
particulars specified in Rule 43, shall be filed as prescribed.
▪ Rule 43 mentions the requirements of a notice of opposition, it states that a
notice of objection must include the grounds for the opposition in the case of an
application, an earlier trade mark or earlier right on which the opposition is
based, or in the case of the opposing party.
▪ Rule 44 states that the counter statement required by subsection (2) of Section
21 must be submitted within two months of the applicant receiving a copy of the
notice of opposition from the Registrar. It must include a list of any facts the
applicant has admitted that were alleged in the notice of opposition. The
Registrar must typically serve a copy of the counterstatement to the opponent
within two months of the date of receipt.
▪ Rule 45 talks of evidence in favour of the opposition, it states that:
▪ The opponent must either leave with the Registrar any affidavit-based evidence
he may wish to present in support of his opposition within two months of the
service of a copy of the counterstatement, or;
▪ He must notify the Registrar and the applicant in writing that he does not wish
to present any evidence in support of his opposition but intends to rely solely on
the information provided in the notice of opposition.
▪ Rule 46 talks about supporting documentation for application purposes. It states
that within two months of the applicant receiving copies of affidavits in
opposition or notice that the opposition’s opponent does not wish to provide any
evidence in opposition, the applicant must leave with the Registrar any affidavit-
based evidence he wishes to present in support of his application and deliver
copies to the opposing party.
▪ Alternatively, the applicant may inform both the Registrar and the opposing party
that he does not wish to present any evidence and instead intends to rely on the
facts outlined in the opposing party’s counterstatement and/or on any evidence
previously left by him in connection with the application at hand. If the applicant
provides additional information or relies on material previously provided by him
in connection with the application,
▪ He shall give copies of the same to the opponent, including any evidence, and
shall notify the Registrar in writing of such delivery. If an applicant does not take
action under sub-rule (1) within the period specified, he is presumed to have
abandoned his application.
▪ Rule 47 talks of the opponent’s evidence in reply. The opponent may provide the
Registrar with evidence by affidavit in reply within one month of receiving
copies of the applicant’s affidavit from the applicant and shall give copies of the
same to the applicant, along with any exhibits, and shall notify the Registrar in
 writing of such delivery. Following the conclusion of the evidence, the Registrar
is required to notify the parties on the first day of the hearing.
▪ Rule 50 mentions the provision for hearing and decision. The hearing must take
place at least one month following the initial notice date. A hearing between the
two parties may be requested by the Registrar. He will then make a decision
based on the arguments made by the two sides. If he grants the applicant’s
request, the trade mark will be registered. The trade mark will be taken down
from the Journal and the registration request will be denied if he rules in favour
of the opposing party.

➢ UNCONVENTIONAL TRADEMARKS
Unconventional trademarks, also known as non-traditional trademarks, are types of
trademarks that deviate from the conventional understanding of trademarks as words,
logos, or symbols. These unconventional trademarks serve as distinctive indicators of
source and origin, but they do so in ways that are less traditional and often more creative.
Unlike conventional trademarks, which typically rely on visual representations,
unconventional trademarks may appeal to other sensory perceptions, including auditory,
olfactory, or tactile sensations. In essence, they challenge traditional notions of
trademark registration by pushing the boundaries of what can be considered a source
identifier in the commercial marketplace. As the business landscape evolves and
innovation becomes increasingly important, unconventional trademarks have gained
recognition and significance. Let's explore various forms of unconventional trademarks
and their significance:
▪ Sound Marks: Sound marks consist of distinctive sounds or tunes that serve as
indicators of origin. Examples include the NBC chimes, the Intel jingle, and the
MGM lion's roar. Sound marks are often used in advertising, product packaging,
or as part of a brand's identity in audiovisual media. Registering sound marks
may involve providing an audio representation of the mark or a detailed
description of the sound in written form.
▪ Color Marks: Color marks consist of specific colors or combinations of colors
that are used to distinguish goods or services. For example, the Tiffany blue color
used for jewelry packaging or the distinctive brown color of UPS delivery trucks.
Registering color marks can be challenging as it requires demonstrating acquired
distinctiveness or secondary meaning, indicating that consumers associate the
color with a particular source.
▪ Shape Marks: Shape marks are trademarks that consist of the shape or
configuration of a product or its packaging. Examples include the Coca-Cola
bottle shape, the Toblerone chocolate bar shape, and the contour of the iPod.
Registering shape marks often requires demonstrating that the shape is not
functional and has acquired distinctiveness through extensive use and
recognition by consumers.
▪ Motion Marks: Motion marks, also known as moving or animated marks,
consist of moving images or animations that serve as trademarks. Examples
include the animated Google doodles and the NBC peacock logo animation.
Registering motion marks may involve submitting a series of images or a video
recording to depict the movement of the mark accurately.
 ▪ Position Marks: Position marks refer to the specific placement or positioning of
a trademark on a product or its packaging. For example, the red sole of Christian
Louboutin shoes or the positioning of the label on a Coca-Cola bottle.
Registering position marks requires demonstrating that the placement of the
mark is distinctive and serves as an indicator of origin.
▪ Hologram Marks: Hologram marks consist of holographic images or designs
that provide a three-dimensional representation of a trademark. Examples
include holographic security features on credit cards and authentication labels on
branded products. Registering hologram marks may involve submitting detailed
descriptions or representations of the holographic effect.
▪ Scent Marks: Scent marks consist of distinctive smells or fragrances associated
with a particular product or service. Examples include the floral scent of Verizon
stores and the scent of Play-Doh. Registering scent marks is challenging due to
the difficulty in accurately describing and reproducing smells. However, it is
possible in jurisdictions where scent marks are recognized and accepted.
▪ Taste Marks: Taste marks are trademarks that consist of distinctive flavors or
tastes associated with specific products. While less common than other types of
unconventional trademarks, taste marks have been recognized in some
jurisdictions. Registering taste marks poses significant challenges due to the
subjective nature of taste and the difficulty in objectively identifying and
describing flavors.
SIGNIFICANCE AND CHALLENGES:
▪ Brand Differentiation: Unconventional trademarks allow companies to
differentiate their brands and create memorable and distinctive brand identities
in competitive markets.
▪ Innovation and Creativity: Embracing unconventional trademarks encourages
innovation and creativity in branding strategies, fostering brand loyalty and
consumer engagement.
▪ Legal Recognition: While unconventional trademarks face challenges in
registration and enforcement due to their non-traditional nature, they are
increasingly being recognized and protected by trademark laws and authorities
worldwide.
▪ Consumer Perception: Successfully registering and using unconventional
trademarks can enhance consumer perception and strengthen brand recognition
by offering unique sensory experiences that resonate with consumers.

➢ CONFLICTS OF TRADEMARK WITH DOMAIN NAME: Conflicts

between trademarks and domain names arise when there is a clash between the
rights associated with a registered trademark and the registration or use of a
domain name that is identical or similar to that trademark. These conflicts can
lead to legal disputes and pose challenges for both trademark owners and domain
name registrants. Let's delve into the complexities of these conflicts:
▪ Overlap of Rights: Trademarks and domain names serve similar functions as
identifiers of source or origin. A registered trademark provides exclusive rights
to use a particular mark in connection with specific goods or services, while a
domain name serves as an online address for a website.
▪ Cybersquatting: Cybersquatting refers to the bad faith registration of domain
names that correspond to trademarks with the intention of profiting from the
goodwill associated with those marks. Cybersquatters may register domain
names identical or confusingly similar to well-known trademarks in anticipation
of selling them to the rightful trademark owners at inflated prices or diverting
traffic to their own websites for commercial gain.
▪ Trademark Infringement: When a domain name is used in a manner that
infringes upon the rights of a registered trademark owner, it can lead to legal
claims of trademark infringement. Trademark infringement occurs when the
unauthorized use of a domain name creates a likelihood of confusion among
consumers regarding the origin or sponsorship of goods or services, dilutes the
distinctiveness of the trademark, or tarnishes its reputation.
▪ Domain Name Disputes: Disputes between trademark owners and domain name
registrants are often resolved through administrative proceedings or litigation.
Administrative mechanisms, such as the Uniform Domain-Name Dispute-
Resolution Policy (UDRP) administered by the Internet Corporation for
Assigned Names and Numbers (ICANN), provide a streamlined process for
resolving domain name disputes outside of court. In UDRP proceedings,
trademark owners can file complaints alleging that a domain name registrant has
registered or used a domain name in bad faith and seek remedies such as transfer
or cancellation of the domain name registration.
▪ Legal Considerations: The resolution of conflicts between trademarks and
domain names involves consideration of legal principles such as trademark law,
domain name law, and contract law.
▪ International Dimensions: Trademark and domain name disputes can have
international dimensions due to the global nature of the internet and e-commerce.
International treaties, such as the Paris Convention for the Protection of
Industrial Property and the World Intellectual Property Organization (WIPO)
treaties, provide frameworks for the protection of trademarks and resolution of
disputes across borders.