1

INTRODUCTION
The concept of patent in Great Britain originated from the exercise of the royal prerogative to grant
monopolies. In India, patent is granted for inventions under the legislation. The first Patent Act was enacted
1856 granting exclusive patents tor a period of l4 years to inventors of new manufacture. The Act was
ded in 1859. After further enactments in 1872, 1883 and 1888, Patents and Designs Act, 1911 was
anssed This Act of 1911 was amended several times between the period from 1911 to 1970.
In 1957, a Committee of Justice N. Rajagopala Ayyangar and Dr. S. Venkateswaran was constituted
torevise the Patent Law. Radical changes in Patent Law were suggested by report submitted in 1959 which
1970 was enacted and Rules
came to be known as Ayyangar's Report. Based on the report, the Patents Act
except for a few provisions
thereto were published in 1971. The Act came into force from 20.04.1972
which also came into force from 01.04.1978.
World Trade Organisation including
India is a signatory to the agreement for the establishment of the
Property Rights. For the purpose of reduction of
the Agreement on Trade Related Aspects of Intellectual effective and adequate protection of
distortions and impediments to international trade and promotion of
1970 became necessary. Amendmernts were
intellectual property rights, amendments to the Patents Act, in formulating
agreement that signatory countries,
wIth the object of meeting India's obligations under the said safeguarding its interests. Measures consistent
or amending their laws and regulations, may adopt, while
necessary to protect public health and nutrition, to promote
and in'conformity with the said agreement were technological
to accelerate their socio-economic and
Public interest in sectors of vital importance and
development. agreement in April, 1994. This agreement contains
clauses
GOvernment had signed GATT (now WTO) which India was required to introduce
Rights (TRIPS) under
Mating to Trade Related Intellectual Property chemicals. India had to apply provisions relating to terms of
Fvduct patents for drugs, food products and
Patent protection by 01.01.2005. patent in
Union of India (2013) 6 SCC 1, Apex Court has analysed the product
vOvartis Ag v. pharmaceuticat product, as under:
Pandcularly relating to medicine and promote indigenous
helpful to foreign patentees than to followed by Patents
ratents regime under 1911 Act was more Act
imbalance was corrected by 1970 (Amendment)
industrialization. The Act, 2005:
eSearch and (Amendment) Act, 2002 and Patents
(Amendment) Act. 1999. Patent 01.01.200s,
under TRIPS was to be done by
(ii) As the compliance relating to terms of patent protectionResolution Panel repeatedly with possibility
taken to WTO Dispute complying with its obligations under TRIPS
e delays and India being
sanctions on India for not the Act was hurriedly amended by Patents
O imposition of trade regime,
Agreement to introduce product patents from 05.04.2005. To meet the deadline of 01.01.2005, loose
with effect drafting of some very
(Amendment)) Act, 2005
ds have been left in relevant legislation leading to somewhat unclear
clarity;
important provisions, which called for much greater

631
632 Business Law for
1970 was the most important change
Management
(iii) Deletion of section Sfrom Patents Act, which
doors to product patents in India; re-opened
(iv) Patent coverage/claim cannot be wider than disclosures/teachings contained therein as a
view would negate very basis of patent protection; contrary
(v) Intellectual Property Appellate Board (IPAB) must have atechnical member as issue of
of medicine/pharmaceutical product is acomplicated issue; patentability
(vi) "New" chemical/pharmaceutical would have to qualify tests of invention and enhanced
to quality for patent protection. Twin cumulative tests/pre-conditions of () invention and efficacy
patentability must be satisfied. Both are two distinctly separate concepts under Patents Act:
(vii) Meaning of 'efficacy' in case of medicines/pharmaceuticals is therapeutic efficacy';
(viii) Chemical substance/pharmaceutical product which is a new form of a known substance with known
efficacy, must pass in addition to test of invention given in section 2(I)() and (ja) and test of
enhanced efficacy as prescribed in section 3(d) read with Explanation thereto;
(ix) The test to qualify as 'invention' is that product must be distinctive, un-anticipated and non-obvious
innovation coupled with some perceptible industrial or economic advantage and not barred from
patent protection;
(x) Threshold requirements of patentability for different inventions are different.
The Act was therefore comprehensively amended by the Patents (Amendment) Act, 1999 to give effect
to India's obligations under the said Agreement on Trade Related Aspects of Intellectual Property Rights.
In furtherance of the said object, the Act was again amended by Patents (Amendment) Act, 2002.
As per obligation under TRIPs agreement, India was required to introduce product patents where presently
only process patent is permitted. Patents Act, 1970 was therefore amended by Patents (Amendment) Act.
2005, which came into force from 0S.04.2005, except Secs.37 (i)(a) &(b), 41, 42, 47, 59 to 63 and 74
which came into force on 02.04.2007. Patents Rules, 2003 enacted under Patent Act, 1970 have been amended
by the Patents (Amendment) Rules, 2006, 2013 and 2014. Patent Rules 2003 are further proposed to be
amended by Patent (Amendment) Rules, 2015 and 2016. However, the same are draft rules as they are not
yet published in Gazette of India. Relevant Patent Rules as amended till 2014 have been discussed in the
text.

OBJECTS

Development breeds invention. Industrialisation and growth is based on inventions of new products
and processes, creations and improvements. It is essential for the State in the
interest of its
whích is based on development and growth of its industry, to encourage inventors and provide development
by way of examining their new inventions, creations and them protection
improvements.
article or substance produced by manufacture or must relate to the process ofInvention must relate to a machine,
or to an improvement of an article or ofaprocess of manufacture of an article,
manufacture. The patent law is a provision made by
the Legislator for the encouragement of research, industry and
AIR 1918 All 24 (DB)]. This protection is extended by granting progress [Lakhpat Rai v. Sri Kishan Das
to the inventor for a limited period, a
monopoly right by way of grant of a patent for inventing a new and useful article or a new process of
making an article, or an improvement of an existing article which has an industrial
who is granted the patent is called the patentee. Patentee holds application. The inventor
periodof the patent holds exclusive monopoly rights to exclusive licence. The patentee during the
an article according to the invented process. Such manufacture the new article invented or to manufacture
article is
article made by a patented process. The patentee can preventcalled 'patented article', which includes any
any other person from using the patented
invention. After the expiry of the patented period, anybody can then make use of
an obligation cast on the patentee to work the the invention. There is
invention on a commercial scale either by himself or
through
licensees. A patent being a form of industrial property is called an
sell the whole or part of his patent right or grant
intellectual property. The owner can
of patent whose name is entered in register of licences to others to use it. Patentee includes assigning
patents (Laxmi Dutt Roop Chand v. Nankau AIR 1964
AlII 27].
 633
Introduction

which the Patents Act 1970 is based, sets out the objects of the Patents Act,
Ayyangarr's Report, on
following words:
1070 in of acquiring exclusive rights
wThe theory upon which the patent system is based is that the opportunity
invention stimulates technical progress in four ways;
first, that it encourages research and invention;
in an
second, that it induces
an inventor to disclose his discoveries instead of keeping them as acommercially
trade secret;
of developing inventions to the stage at which they are
S that itoffers a reward for the expenses inducement to invest capital in new lines of production which
practicable; and fourth; that it provides an
ioht not appear profitable if many competing producers embarked on them simultaneously. Manufacturers
machinery if others could get the results of their
ld not be prepared to develop and produce important
work with impunity".
for patent is ensured, in as much as, the working
Inreturn of grant of a patent monopoly, consideration industry
result in the establishment in the country of a new
of the inventions is within the country so as to would profitably employ the labour and capital of the
or an improvement of an existing industry which invention and the
and thus increase the national wealth. There is a disclosure to the public of the work the
.country of the patent the public are enabled to and to
working so that on the expiry of the life
manner of its other. Patents are granted to encourage inventing
invention themselves or in competition with eachcommercial scale and to the fullest extent that is reasonably
a
secure that the inventions are worked in India on
granted merely to enable patentees to enjoy a monopoly
practicable without undue delay and that they are not
83).
for the importation of the patented article (Sec. Inventions
maintain a continuous flow of inventions.
Thus, the patent system tends to encourage and
activity is accelerated. New products and processes
are
inventions and thus the pace of incentive
breed the industry
created, industry is encouraged to manufacture new and better products and an expansion ofstandards are
employment, national wealth and higher living
based upon the inventions takes place. Thus
created.
patented
incentives to the inventor. Though invention to be
Patent system also confers advantages and invention howsoever
inventor to get the invention patented, for an
is not compulsory, it is in the interest of the may meet with a counter and similar independent
secretly maintained and used is bound to be known or no effective legal remedy. In fact, the subsegquent
discovery and in that case the original inventor would have
called new invention patented could sue original inventor for infringement.
inventor on getting his so
Inventions and Patents 635

others at international level was one aspect of matter. Other aspect was to protect basic human rights., namely.
proper nutrition, health and health care. India while making significant changes in patent law to meet its
TRIPS obligations strove not to lose its reputation as pharmacy of the world. Prices of pharmaceutical and
agricultural products could not be allowed to go up beyond certain limits. Amendments brought about in
Indian Patent Law in 2004/2005 were outcome of these two competing considerations.
Discovery and Invention:
The difference between discovery and invention is very familiar. Discovery adds to the amount of
human knowledge, but it does so only by lifting the veil and disclosing something which before had been
unseen or dimly seen. Invention also adds to human knowledge. but not merely by disclosing something.
Invention necessarily involves also the suggestion of an act to be done and it must be an act which results
in a new product, or a new result, or a new process, or a new combination for producing an old product
or an old result [Reynolds v. Herbert Smith &Co. Lid (1903) 20 RPC 123].
MEANING OF MANUFACTURE
Manufacture means making of any article or a thing which is useful and vendible [Bombay Agarwal
Co. v. Ramchand AIR 1953 Nag. I54 (162)]. The word "manufacture" would include improvements in
manufacture and changes in the method by which an article is manufactured. The word "manufacture" would
also extend to a new process to be carried out by known implements. There is no hard and fast rule to
consider what is the new and useful method or manner of manufacture. New or useful method or manner
of manufacture need not necessarily be any product, i.e. it need not necessarily be a new article. It may
be any physical phenomenon in which the effect, be it creation or merely an alteration, may be observed.
MEANING OF PATENT (Secs.2(f), 2(m), 2(0), 2(p), 82(a) & 82(b)]
Patent means a patent for any invention granted under the Act. It is in the interest of the inventor
to get his invention or any improvement patented. By grant of patent, protection by way of a monopoly
is extended to the inventor for a limited period for:
(i) inventing a new product; or
(ii) inventing a new process; and
(ii) new invented product or process is capable of industrial application.
Things combined and acted upon with number of principles, resulting into a new and useful article
will afford subject matter for a patent [Lallubhai C. Jariwala v. Chimanlal Chunilal &Co. AlIR 1936 Bom
99). If the result of a new process is a new article or a better article or a cheaper article than that produced
by old methods,the process is patentable, provided of course that it required an exercise of the inventive
faculty to arrive at it [Crane v. Price I Webster PC 393]. But a process to be patentable must be a process
which leads to same result and the result arrived at must be useful, though it need not be an article at all
[Alsop's Patent (1907) 24 RPC 733).
When a patent is granted and is in force in respect of either the article or the process it is called
"patented article'" and "patented process" respectively. "Patented article" includes an article made by a patented
process. The person in whose favour the patent is granted and who is entered on the register of patents
as the grantee or proprietor of the patent is called"Patentee". "Patentee" includes an exclusive license.
"Exclusive licensee" means a licence from a patentee which confers on the licensee, or on the licensee and
persons authorised by him, to the exclusion of allother persons (including the patentee), any right in respect
of the patented invention.
The following are the salient features of a patent:
(i) The patent must be in respect of invention and not a discovery;
(ii) In respect of one single invention there must be one single patent:
(iii) patent may be in respect of a substance or in respect of a process;
 Business Law Jor Management
636

state that one

relates to the substance and the other
(iv) It is not possible to bifurcate a patent and
to the process;
specifications andthe claims must be clearly and distinctly
(v) In order to have a complete patent, the
mentioned; Industries Itd
claims alone which constitute the patent [mperial Chemical
(Vi) It is the claims and 1978 Cal. 77].
Controller General of Patents, Designs & Trademark AIR
V. is capable of industrial
patented must be anew invented product or process which
An invention to be
process being a new invention and such new invented
application. Two conditions, namely, product or must be present in the matter of obtaining the
grant
is capable of industrial application
product or process
of patent. invention which must
fundamental principle of Patent Law is that a patent is granted only for an validity of
The
have novelty and utility, that is, industrial application. It is essential for the
be new and must discovery as opposed to near verification of
what was already
a patent that it must be the inventor's own invention, apart from being a new manufacture, must not be
known before the date of patent. Patentable that in order to be patentable an improvement
on
obvious to a person skilled in the art. It is important something more
matters already known, should be
something known before or a combination of different
independently satisfy the taste of invention or an 'inventive
than a mere workshop improvement and mustcombination must produce a new result or a new article or a
step'. To be patentable the improvement or than one integers or things, not involving
better or cheaper article than before. Mere collection of more
of a patent [Biswanath Prasad v. Hindustan
the exercise of any inventive faculty, does not qualify for the grant
Metal AIR 1982 SC 1444].
General principles applicable to working of patented inventions [Sec.83]:
following general
In exercising the powers for granting the patents, regard shall be had to the
considerations, namely:
inventions are worked in
(a) that patents are granted to encourage inventions and to secure that the
India on acommercial scale and to the fullest extent that is reasonably practicable without undue
delay;
(b) that they are not granted merely to enable patentees to enjoy a monopoly for the importation of
the patented article;
(c) that the protection and enforcement of patent rights contribute to the promotion of technological
innovation and to the transfer and dissemination of technology, to the mutual advantage of producers
and users of technological knowledge and in a manner conducive to social and economic welfare,
and to a balance of rights and obligations;
(d) that patents granted do not impede protection of public health and nutrition and should act as
instrument to promote public interest specially in sectors of vital importance for socio-economie
and technological development of India;
(e) that patents granted do not in any way prohibit Central Government in taking measures to protect
public health;
() that the patent right is not abused by the patentee or person deriving title or interest on patent
from the patentee, and the patentee or a person deriving title or interest on patent from the patentee
does not resort to practices which unreasonably restrain trade or adversely affect the international
transfer of technology; and
(g) that patents are granted to make the benefit ofthe patented invention available at reasonably affordable
prices to the public.
True and first inventor:
Apatentee is a true and first inventor. True and first inventor is a person who first made the invention

and applied for the patent. If two persons have independently made the same invention and neither na
Inventions and Patents 637

dor disclosedit to the world, the one who applies first for the patent will be considered in law the true
rst inventor although the other might have made it carlier in point of time (Bombay Agarwal Co. v.
Ramchand AIR 1953 Nag l 54].
The patentee during the period of the patent holds exclusive monopoly rights to manufacture the new
iole invented or to manufacture an article according to the invented process. The patentee can prevent
other person from using the patented invention. After the expiry of the patented period, anybody can
ke use of the invention. There is an obligation cast on the patentee to work the invention on acommercial
scale either by himself or through licensees.
Assignee and Exclusive Licensee of a Patent [Secs.2(ab), 2(f) & 2(k)]:
A patent when granted is assignable. "Assignee" includes an assignee of the assignee and the legal
representative of a deceased assignee or assignee of the legal representative or assignee of that person. A
person. The patentee
legal representative means a perSon who in law represents the estate of the deceased
of his patent right or grant
may assign the patent by a licence. The patentee can sell the whole or part licensee,
licences to others to use it. A licence from a patentee which confers on the or on the licensee
and persons authorised by him, to the exclusion of all the other persons (including the patentee), any right
an 'exclusive
in respect of the patented invention shall be an exclusive licensee' and such a licensee is
licensee'. A patent being a form of industrial property is called an 'intellectual property'.
invention can
An invention is not a property right unless it has been patented. The assignment of
therefore, be made even by word of mouth. Consequently, if it was stated in the application moved on
the invention was assigned to the firm by him,
behalf of the firm, of which a person was a partner, that
Industries AIR 1975 AIl 231].
it was a valid assignment [Shinning Industries v. Shri Krishna
What inventions are not patentable? [Secs.3 & 4]
The following are not inventions and therefore are not patentable:
(a) an invention which is frivolous or which claims anything obviously contrary to well established
natural laws;
(b) an invention the primary or intended use or commercial exploitation of which could be contrary
to public order or morality or which causes serious prejudice to human, animal or plant life or
health or to the environment;
(c) the mere discovery ofa scientific principle or the formulation of an abstract theory or discovery
of any living thing or non-living substance occurring in nature;
(d) the mere discovery of a new firm of a known substance which does not result in the enhancement
of the known efficacy of that substance or the mere discovery of any new property or new use
for a known substance or of the mere use of a known process, machine or apparatus unless such
known process results in a new product or employs at least one new reactant;
(e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of
the components thereof or a process for producing such substance;
() the mere arrangement or re-arrangement or duplication of known devices each functioning
independently of one another in a known way;
(g) a method of agriculture or horticulture;
(h) any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic, or other
them free
treatment of human beings or any process for a similar treatment of animals to render
products;
of disease or to increase their economic value or that of their
including seeds,
(i) plants and animals in whole or any part thereof other than micro-organisms but
varieties and species and essentially biological processes for production or propagation of plants
and animals;
Ú) a mathematical or business method or a computer programme per se or algorithms;
 3

APPLICATIONS FOR PATENTS

6]
Who can apply for a Patent? (Secs.2(y) &
persons:
An application for a patent for an invention may be made by any of the following
True and first inventor does
(i) by any person claiming to be true and first inventor of the invention. an invention
not include either the first importer of an invention into India or a person to whom
is first communicated from outside India:
be the true and first inventor:
(ii) by any person being the assignee of the person claiming to
before his death was entitled
(iii) by the legal representative of any deceased person who immediately
to make such an application.
Therefore, a true and first inventor, his assignee or legal representative can apply for a patent for an
application may
invention (Thomson Brandt v. Controller of Patents and Designs AIR 1989 Del. 249]. An
be made by any of the above persons either alone or jointly with any other person.
Who cannot apply for a Patent? [Sec.134]
Where any country does not accord to citizens of India the same rights in respect of the grant of
patents and the protection of patent rights as it accords to its own nationals, no national of such country
shall be entitled, either solely or jointly with any other person
(a) to apply for the grant of a patent or be registered as the proprietor of a patent;
(b) to be registered as the assignee of the proprietor of a patent; or
(c) to apply for a licence or hold any licence under a patent granted under the Act.
Afinancing partner who has not contributed any part of his ingenuity or skill or technical knowledge
towards the invention made by some of the partners of a partnership by their skill and labour cannot be
treated as an inventor. Nor can the firm of partnership be treated as the inventor although there may be
no objection to its being registered as a patentee either on assignment by a patentee or jointly with the true
and first inventor. Where patents are granted in favour of a firm, it does not vest patent rights in the firm.
It must be held that the rights vested in the partners and they hold those rights for the purposes of the
business of the firm. During the subsistence of the partnership none of the partners could treat and deal
with patent right as his individual property (Shinning Industries v. Shri Krishna Industries AIR 1975 Al!
231]. A corporation cannot be the sole applicant claiming to be the inventor [V.B. Mohammed lbrahim v.
Alfred Schafranek AIR 1960 Mys. 173 (DB)).
Where to apply? [Rule 4]
Application should be filed at appropriate office of the Patent Office. Appropriate office of the Patent
office shall be the Head Office of the Patent office or the branch office, as the case may be, within whose
territorial limits

639
640
Business Law for Management

(a) the applicant resides or has his principal place of business or domicile, or the place where the
invention actually originated; or
(b) if the application is made jointly in the names of two or more persons, the applicant whose name
is first mentioned, resides or has his principal place of business or domicile; or
(c) if the applicant or the party in aproceeding has no place of business or domicile in India, the
address for service in India given by the applicant or party is situated.
The residence or principal place of business shall determine the place for making application to the
appropriate office of the Patent Office. In the case of a company, registered office of the company is accepted
as the principal place of business of the company for the purpose of filing application. The Controller may
transfer an application for patent so filed, to head office, or as the case may be, branch office of the Patent
Office.
How to apply? [Sec.7 & Rule 10]
Every application for a patent shall be for one invention only and shall be made in the form prescribed
inSecond Schedule to the Patent Rules, 2003 and filed in the patent office with the fees prescribed in First
Schedule to the Rules. Where the application is made by virtue of an assignment of the right to apply for
a patent for the invention, there shall be furnished with the application proof of the right to make an application.
Where the proof of the right to make the application is not furnished with the application, the applicant
shall within a period of six months after the filing of such application furnish such proof. Every application
shall state that the applicant is in possession of the invention and shall name the person claiming to be
the true and first inventor. Every such application (not being a convention application or an application
filed under the Patent Cooperation Treaty designating India) shall be accompanied by aprovisional ora
complete specification.
Filing documents and copies, etc. (Rule 9]:
All documents and copies of documents, except affidavits and drawings filed with patent office, shall
comply with Rule 9 of the Rules as amended by 2013 Amendment.
Enterprise [Rule 2]:
An enterprise is an industrial undertaking or a business concern or any other establishment, by whatever
name called, engaged in the manufacture or production of goods, in any manner, pertaining to any industry
specified in the First Schedule to the Industries (Development and Regulation) Act, 1951 or engaged in
providing or rendering of any service or services in such an industry and
(i) in case of an enterprise engaged in the manufacture of production of goods, where an investment
in plant and machinery does not exceed the limit specified for a medium enterprise under section
7(1)(a) of the Micro Small and Medium Enterprises Development Act, 2006; and
(ii) in case of an enterprise engaged in providing or rendering of services, where the investment in
equipment is not more than the limit specified for medium enterprises under section 7(1)(b) of
the Micro Small and Medium Enterprises Development Act, 2006.
In calculating the investment in plant and machinery, the cost of pollution control, research and
development, industrial safety devices and such other things as may be specified by the Notification under
the Micro Small and Medium Enterprises Development Act, 2006, shall be excluded.
Convention application [Secs.2 (c), (d), 133 & 135]:
Where an application for a patent in respect of an invention is made by a person in a convention
country,it is referred to as a convention application. Aconvention country means a country which is member
of agroup of countries or a union of countries or an Inter Governmental Organisation.
(This topic is discussed below in this Chapter).
 641

Arylicationsfor Patents

Co-operation Trenty [Secs.2(ia), 2(oa) & 7(1A)]:

International application/Patent for patent made in accordance with the Patent Co
at
application" means an application
*"International Co-operation Treaty (Treaty) done
the Patent application
Treaty."Patent Co-operation Treaty" meansfrom time to time. Every international
operation as amended and modified designating India, shall be deemed to
19.06. 1970 filed
Washington on may be
Treaty for a paternt, asapplication the Controller
under the Patent Co-operation corresponding has also been filed beforethe patent office
this Act, if a by
be an application under of application and its complete specification processed the Patent Cooperation
The filing date such an internationalfiling date accorded under
in India. elected office shallbe the
as designated office or
Treaty.
this Chapter)
(This topic is discussed below in
Types of Patent Applications: thereof:
applications depending on the purpose
The following are different types of specification and complete
including application for provisional
Patent
() Ordinary Application for
specification.
(ii)Application for Patent of Addition.
Specification.
(iii)Amendment of Application and
(iv) Convention Application.
(v) International Application.
(7) & Rule 13]
SPECIFICATION [Secs.9, 10 (1) & (4) to complete, shall
Every specification, whether provisional or
A specification describes the invention. of a specification.
drawings which shall form part considers
may be accompanied with the that an
be made in Form 2. Specificationinvention may accompany the specification if the Controller
furnished before
Model or sample illustrating model or sample. Such model or sample shall be deemed to
application should be supplemented with of a patent, but such model or sample shall not be provisional
for grant
the application is found in order An application
accompanied by a
for a patent is required to bebe supplied. Drawings shall be
form part of the specification. shall
complete specification. If the Controller so requires, drawingsprovisional or complete shall describe
or a specification. A specification whether
deemed to form part of the the invention
with a title sufficiently indicating the subject matter to which
the invention and shall begin
relates.
specification:
Application with provisional description of the general nature of the
invention.
specification needs to contain is a
Allthat a provisional Ltd. Appln. (1969) RPC
result [Imperial Chemical Industries
anticipated
its field of application and the
S74).
patent (not being a convention application or an application filed under
Where an application for a
designating India) is accompanied by a provisional specification, a complete
the Patent Co-operation Treaty 12 months from the date of filing an application for a patent. If the complete
specification shall be filed within deemed to be abandoned. The Controller may permit
specification is not so filed, the application shall be months but within 15 months from the date of
any time after 12
the complete specification to be filed at between the filing of the two specifications is intended to provide
filing an application. The interval of timeprecise expressions of the invention foreshadowed in the provisional
an opportunity for the development and (1968) RPC 473].
specification (Glaxo Group Lid. 's Appln. by provisional
of the same applicant are accompanied of
Where two or more applications in the name cognate or of which one is a modification another and
specifications in respect of inventions which are constitute a single invention
of the opinion that the whole of such inventions are such as to respect
the Controller is
be included in one patent, he may allow one complete specification to be filed in
and may properly
of all such provisional specifications.
Procedure for Grant of Patents 659

her forwarding the copy of the application and of the statement to each patentee or the applicant for patent
andother intended person and hearing any person who may be interested, issue such a certificate and if
he does so, he shall rectify the specification and the register accordingly. The procedure relating to the
sling of notice of opposition, written statement, reply statement, leading evidence, hearing and cost shall
$ applicable, apply to the hearing of a claim as they apply to opposition proceedings.
GRANT OF PATENT [Secs.43 to 46 & Rules 74 & 751
Where an application for a patent has been found to be in order for grant of the patent and either
the application has not been refused by the Controller, or the application has not been found to be in contravention
of any of the provisions of the Act, the patent shall be granted to the applicant as expeditiously as possible.
with the seal of the patent office and the date on which the patent is granted shall be entered in the register.
On the grant of patent, the Controller shall publish the fact that the patent has been granted and thereupon
the application, specification and other documents related thereto shall be open for public inspection.
After the patent is granted, if the applicant to whom patent was granted had died, or in case of a body
corporate, had ceased to exist, before the patent was granted, the Controller may on an application made.
amend the patent by substituting for the name of that person, the name of the person to whom the patent
ought to have been granted. The patent shall have effect and shall be deemed always to have had effect
accordingly.
Every patent shall be dated as of the date on which the application for patent was filed. The date of
every patent shall be entered in the register. No suit or other proceeding shall be commenced or prosecuted
in respect of an infringement committed before the date of publication of the application.
Every patent shall be in the form specified in the Third Schedule with such modifications as the
circumstances of each case may require and shall bear the number accorded to the application for patent.
Every patent shall have effect throughout India. A patent shall be granted for one invention only.
Conditions for grant of patent (Sec.47):
The grant of a patent shall be subject to the following conditions
respect of which
(a) any machine, apparatus or other article, or any article made by using a process, in for its own
on behalf of the Government
the patent is granted, may be imported or made by or
use;
Government for its own
(b) any process in respect of which the patent is granted may be used by the
use;
of the process and any
(C) any machine, apparatus or other article, or any article made by the use experiment
process in respect of which the patent is granted, may be made or used, by any person, for
or research including the imparting of instructions to pupils; and
medicine or drug may be imported
(d) in the case of a patent in respect of any medicine or drug, thedispensary, hospital or other medical
by the Government for its own use or for distribution in any
institution maintained by or on behalf of the Government or any other dispensary, hospital or
public service that
medical institution which the Central Government may, having regard to the notification in
this behalf by
such dispensary, hospital or medical institution renders, specify in
the Oficial Gazette.
RIGHTS OF PATENTEES (Sec.48]
A patent granted shall confer upon the patentee
the exclusive right to prevent third parties,
(a) where the subject matter of the patent is aofproduct, using offering for sale, selling or importing
who do not have his consent, from the act making,
for those purposes that product in India, parties,
a process, the exclusive right to prevent third offering
(6) where the subject matter of the patent is of using that process, and from the act of using,
who do not have his consent, from the act
660 Business Law for Management

for sale, selling or importing for those purposes the product obtained directly by that process in
India.
When patent rights are not infringed (Sec.49):
Where the vessel or aircraft registered in foreign country ora land vehicle owned by a person ordinarily
resident in such country comes to India, temporarily or accidentally only, the rights conferred by a patent
for an invention shall not be deemed to be infringed by the use of the invention in the body of the vessel
or in the machinery, tackle, apparatus or other accessories thereof, so far as the invention is used on b0ard
the vessel and for its actual needs only or in the construction or working of the aircraft or
land vehicle
or of the accessories thereof. The above exemption shall not extend to vessels,
aircrafts or land vehicles
owned by persons ordinarily resident in a foreign country, the laws of which do not
rights with respect to the use of inventions in vessels, aircrafts or land confer corresponding
resident in India, while in the ports or within the territorial waters of that vehicles owned by persons ordinarily
within the jurisdiction of its courts. foreign country or otherwise
Rights and obligations of co-owners of patents
(Sec.50]:
Rights and obligations of co-owners of patents shall be
Subject to such an agreement in force, the rights and determined by an agreement
as under: obligations of co-owners of patents shallbetween them.
be regulated
(i) Each of the co-owner shall be
entitled to an equal undivided share in the
(ii) Each of the co-owner shall be patent.
entitled by himself or his agents, to the
patented product or process, as the case may be, for his exclusive rights in the
other person or persons. own benefit without
accounting to the
(iii) licence under the patent shall not be
by one of such persons granted and a share
except with the consent of the other in the patent shall not be assigned
(iv) Where a patented article is person or persons.
the patent shall be entitled to sold, the purchaser and any
deal with the article in theperson claiming through the co-owner of
sold by a sole patentee. same manner as if the article had
The rules of law been
applicable to the
affect the ownership
apply to the patents. Nothing shall and devolution of
or obligations of moveable
of a deceased
person. mutual rights trustees or ofproperty
the legal generally shall
POWER OF representatives
78] CONTROLLER TO GIVEDIRECTIONS TO
Jn case of a
C0-0WNERS Sec.51 & Rules 76 to
made to him in Form patent registered in favour of two
or more
the grant of licences 1| give such directions as to the sale persons, or
the Controller may,
upon application
case of failure of any under the patent or the exercise of any lease of the patent or
any
fourteen days after beingperson to execute any right in relation thereto, as heinterest therein,
may, on the application made instrument or failure
requested in writing to do so by any of the to comply with any direction, thinks fit. In
person to to
that instrument him by any other person so other persons so registered, the within
be issued execute
by the in the name and on behalf ofregistered, give directions, Controller
and after hearing theController after sending the application and the person in empowering
default. Such directions any
parties No direction shall bestatement every other can
ofconcerned.
mutual rights or to
obligations
inconsistent with the terms of anytrustees or of the legal given by the Controller concerned
which affectperson
patent. representatives
agreement
between persons registered deceased of
as grantee orperson or which is
a the
GRANT OF PATENT T0 TRUE proprietor of the
ANOTHER (Sec.52 & Rule 791 AND FIRST INVENTOR WHEN
Where a patent has been OBTAINED IN FRAUD BY
natent was obtained by the revoked under section 64
patentee (discussed in Chapter 8) on the ground
wrongfully and in contravention of the rights of that the
the Petitioner (true
 [B]COPYRIGHT
(THE COPYRIGHT ACT, 1957]
[as amended by Copyright (amendment) act, 2012]

INTRODUCTION
To meet the public consciousness of the rights and obligations gf the authors, new and advanced means
of communication like broadcasting, litho photography, etc. and for fulfilment of intellectual obligations,
Copyright Act, 1957 was enacted, repealing the carlier Copyright Act, 1911. In keeping with the two World
Intellectual Property Organization (WIPO) Internet Treaties, namely, WIPOCopyright Treaty (WCT) 1996
and WIPO Performances and Phonograms Treaty (WPPT) 1996 and to ensure protection to the
holders against circumvention of effective technological measure, Copyright Act was amended by the copyright
(Amendment) Act, 2012 with effect from 21.06.2012. Under the Act, Copy Right Rules, 2013 areCopyright
enacted.
All relevant rules have been incorporated in the text.
MEANING OF COPYRIGHT [Secs.2(a), 2(fa), 14 & 16]
Copyright means the exclusive right to do or authorize the doing of any of the following acts in respect
of a work or any substantial part thereof, namely:
(a) in the case of a literary, dramatic or musical work, not being a
computer programme
(i) to reproduce the work in any material form including the storing of it in any
means;
medium by electronic
(ii) to issue copies of the work to the public not being copies already in
circulation;
(ii) to perform the work in public, or communicate it to the public:
(iv) to make any cinematograph film or sound recording in respect of the
work;
(v) to make any translation of the work;
(vi) to make any adaptation of the work;
(vii) to do, in relation to a transaction or an adaptation of the work, any of the
acts specified in relation
to the work in sub-clauses (i) to (vi) above.
"Adaptation" in relation to a dramatic work shall mean the conversion of the
work. In relation to a literary work or an artistic work, adaptation shall mean thework into a non-dramatic
into a dramatic work by way of performance in public or otherwise. In relation to conversion of the work
adaptation shall mean any abridgement of the work or any version of the work in literarywhich
or dramatic work,
the story or action
is conveyed wholly or mainly by means of pictures in a form suitable for reproduction in a book or in a
newspaper, magazine or similar periodical. In relation to a musical work, adaptation shall mean any arrangement
or transcription of the work. In relation to any work, adaptation shall mean any
its rearrangement or alteration.
use of such work involving

683
684 Rusiness Law for Managenment
(b) in the case of a computer programme
(i) to do any of the acts specified in clause (a) above;
(ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of the
computer programme. However, such commercial rental should not apply in respect of come
programmes where the programme itself is not the essential object of the rental.
"Commercial rental" does not include the rental, lease or lending of a lawfully acquired copy of a
computer programme, sound recording, visual recording or cinematograph film for non-profit purposes by
a non-profit library or non-profit educational institution. "Non-profit library or non-profit educational institution
means a library or educational institution which receives grants from the Government or is exempted from
payment of tax under the Income Tax Act, 1961.
(c) in the case of an artistic work

) to reproduce the work in any material forn including the storing of it in any medium by electronic
or other means or depiction in three dimensions of a two dimensional work or depiction in
two dimensions of a three dimensional work;
(ii) to communicate the work to the public;
(iii) to issue copies of the work to the public not being copies already in circulation;
(iv) to include the work in any cinematograph film;
(v) to make any adaptation of the work;
(vi) to do in relation to any adaptation of the work any of the acts
in sub-clauses (i) to (iv) above. specified in relation to the work
Adaptation in relation to an artistic work shall mean the conversion of the
by way of performance in public or otherwise. work into a dramatic work
(d) in the case of a cinematograph film
(i) to make a copy of the film including a
of it in any medium by electronic or photograph
other means;
of any image forming part thereof orstoring
(ii) to sell or give on commercial
rental or offer for sale or for such rental, any copy of
(iii) to sell or give on hire, or offer for sale or the film;
such copy has been sold or given on hire, any copy of the film, regardless of
hire on earlier occasions; whether
(iv) to communicate the film to the
public.
(e) in the case of a sound recording
(i) to make any other sound
electronic or other means;recording embodying it, including storing of it in any medium by
(ii) to sell or give on
recording;
commercial rental or offer for sale or for such rental any
copy of sound
(iii) to communicate the sound
ACopy which has been sold recording to the public.
once shall
person shall be entitled to copyright or any be deemed to be a copy already in circulation (Sec. 14). No
otherwise than under and in accordance withsimilar right in any work,
the provisions of the whether published or unpublished.
law for the time being in force. Copyright Act, 1957 or of any other
Any right or jurisdiction to
not be abrogated. restrain a
breach of trust or confidence shall
OWNER OF COPYRIGHT [Sec.54]
Owner of copyright shall include:
(a) an exclusive licensee:
(b) in the case of an
anonymous or pseudonymous literary,
publisher of the work dramatic, musical or artistic work, the
until the identity of the author is disclosed.
Copyright [The Copyright Act, 1957)
687
Copvright shall subsist throughout India in the
(a) original literary, dramatic, musical or artistic following
works:
class of works (Sec.13(1)l:
(b) cinematograph films; and
(c) sound recording.
Conditions (Secs. 13(2) & 41]:
Copyright shall subsist only when
i) In the case of a
published work,
published outside India, the authortheis atwork
the
is first published in India.
Where the work is first
where the author was dead at the date of suchdate of such publication, a citizen of India. In case
a citizen of India. publication, then, he wasat the time of his death,
(ii) In the case of an
unpublished work, other than work of architecture, the author is at the
making the work a citizen of India or domiciled in India. date of
(iii) In the case of work of architecture, the
work is located in India.
In the case of a work of joint
be satisfied by all the authors of theownership, the conditions conferring copyright as specified above shall
work. The above conditions shall not extend to
works (Sec.40) and to works of certain
international organizations. copyright to foreign
Copyright shall not subsist [Sec.13(3) to (5)]:
(a) in any cinematograph film, if a substantial part of
in any other work;
the film is an infringement of the copyright
(b) in any sound recording made in respect of a
literary,
sound recording, copyright in such work has been dramatic or musical work, if in making the
infringed.
The copyright in a cinematograph film or a sound
recording shall not affect the separate
in any work in respect of which or a
substantial part of which, the film or the sound recordingcopyright
is
In the case of work of architecture,
copyright shall subsist only in the artistic character and design andmade.
shall
not extend to processes or methods of construction.
Publication [Secs.3 to 5]:
Making a work available to the public by issue of
is 'publication'. Except in relation to infringement of copies by communicating the work to the public
or
or performed in public, if it is published or copyright, a work shall not be deemed to be published
performed in public without the licence of the owner of the
copyright. A work published in India shall be deemed to be first published in India even though the work
has been simultaneously published in some other country unless such
of copyright for such work. A work shall be deemed to be other country provides a shorter term
published simultaneously in India and in another
country. if the time between the publication in India and the publication in such other
country does not
exceed 30 days.
OWNERSHIP OF COPYRIGHT (Secs.2(n) &17]
The author of the work shall be the Tirst owner of the copyright therein, with following
exceptions:
(a) In the case of a literary, dramatie or artistic work made by the author in the course of his
employment by the proprietor of a newspaper, magazine or similar periodical under a contract
of service or apprenticeship for the purpose of Publication in newspaper, magazine or similar periodical,
the said proprietor shall be the irst owner of hne copyright in the work in so far as the copyright
work in any newspaper, magazine or similar perriodical or to the
relates to the publication of the
reproduction of the work for the purpose or lS being so published. This is however in the absence
his employer. In all other respects, the
of any agreement to the contrary betwee ne aunor andwork.
copyright in the
author shall be the first owner of the author's a
contract of
made in the course of the employment under absence
(0) In the case of a work (a) above does not apply, the shall, inthe
where clause employer
Service or apprenticeship, the St owner of the copyright therein
contrary, be
of any agreement to the
 Business Law jor Management
688

(c) In the case of a photograph taken, or a painting or a portrait drawn, or an engraving or

a cinematograph film made, for valuable consideration, at the instance of any person, such person
shall, in the absence of:any agreement to the contrary, be the first owner of the copyright therein.
(d) In the case of any address or speech delivered in public, the person who has delivered such
such address or speech on behalf of n
address or speech or if such person has delivered the nersox
the copyright therein even if
person, such other person shall be the first owner of other ne
delivers or on whose behalf such address or speech is delivered, is employed by any
who arranges such address or speech or on whose behalf such address or speech is delivered.
means of a mechanisi
"Lecture" includes address, specch and sermon and also includes delivery by
instrument or by broadcast.
(e) In the case of Government work, Government shall, in the absence of any agreement to the
contrary, be the first owner of the copyright therein.
() In the case of a work made or first published by or under the direction or control of any
publicundertaking, such public underaking shall, in the absence of any agreement to the contrary,
be the first owner of the copyright therein. Public undertaking means an undertaking owned or
controlled by the Government, or a Government company or a body corporate established under
any Central, Provincial or State Act.
(g) In the case of a work of certain international organizations, the international organization
concerned shall be the first owner of the copyright therein.
ASSIGNMENT OF COPYRIGHT [Secs.18 & 19]
The owner of the copyright in an existing work or the prospective owner of the copyright in future
work may assign by writing to any person, the copyright either wholly or partially and either generally or
subject to limitations and conditions, either for the whole term of the copyright or any part thereof. In case
of the assignment of copyright in any future work, the assignment shall take effect only when the
work
comes into the existence, in which case the assignee shall include the legal
if the assignee dies before the work comes into existence. representatives of the assignee,
When assignment not permissible: In following cases the assignment of
(i) The author of the literary or musical work
copyright is not permissible
included the sound recorded but not forming part
in
of any cinematograph film shall not assign or waive
on an equal basis with the assignee of copyright for any the right to receive royalties to be shared
legal heirs of the authors or to a collecting society for utilization of such work except to the
to the contrary shall be void. collection and distribution. Any assignment
(ii) The author of the literary or musical work
wajve the right to receive royalties to be shared included in a cinematograph film shall not assign or
on an equal basis with the
for the utilization of such work in any
form other assignee of
than for the communication to the copyrignt
the work along with the
film in a cinema hall, except to the legal public or
authors or to a copyright cinematograph
society for collection and heirs of the
shall be void. distribution. Any agreement to the contrary
(ii) No assignment shall be applied to any
medium or mode of
use at the time when theexploitation the work, which did
not exist or was not in of
commercial
assignment specifically referred to such medium or mode of assignment was made, unless u
Mode of assignment: The assignee of a exploitation of the work.
copyright
assignment of copyright in any work shall be in writing, signed by shall be treated as the owner of copyright. e
agent, identifying such work and the assignor or by his duly authorizeu
of such assignment. Where the shallofspecify the rights assigned and the duration and territorial exte
the date of assignment. If the period assignment is not stated, it shall be deemed to be five years frou
territorial
to extend within India. It shall extent of assignment of the rights is not specified, it shall be presumeu
the author or his legal heirs also specify the amount of royalty and any other
consideration payable v
during the currency of the assignment. The
revision, extension or termination on the terms mutually assignment
agreed upon by the parties.
shall be subject o
Copyright [The Copyright Act, 1957]
691

(ii) to any person to produce and publish a translation of a literary or dramatic work in any language
after a period of seven years from the first publication of the work;
(iv) to the general public to reproduce and publish copyright work in printed or analogous forms of
reproduction for the purposes of systematic instructional activities.
Any person intending to make a cover version or broadcasting of literary and musical works and sound
recording or reproduction of work shall give anotice of such intention to the owner of the copyright in
such works and to the Registrar of copyrights at least fifteen days in advance of making a cover version
and shall pay to the owner amount of royalties and follow conditions and prescribed procedure under the
Rules.

TERMINATION OF LICENCE [Sec.32-B]

If at any time after the grant of a license to produce and publish the translation or the reproduction
of translation of a work in any language, the owner of the copyright in the work or the owner of the right
of reproduction sells or distributes copies of such work or a translation thereof in the same language and
which is substantially the same in content, at a price normally charged in India for works of the same standard
on the same and similar subject, the license so granted shall be terminated after three months' notice and
subject to the copies already reproduced by the licensee may continue to be sold or distributed until the
copies already produced are exhausted.
DURATION OR TERM OF COPYRIGHT
1. In literary, dramatic, musical and artistic works [Sec.22]:
Copyright in any literary, dramatic, musical or artistic work published within the lifetime of the author
shall subsist until sixty years from the beginning of the calendar year next following the year in which the
author dies. In the case of a work of joint authorship, the period shall be construed as a reference to the
author who dies last.
2. In anonymous and pseudonymous works [Sec.23]:
In case of a literary, dramatic, musical or artistic work (other than a photograph) which is published
anonymously or pseudonymously, copyright shall subsist until sixty years from the beginning of the calendar
year next following the year in which the work is first published. If the identity of the author is disclosed
before the expiry of the prescribed period, copyright shall subsist until sixty years from the beginning of
the calendar year next following the year in which the author dies.
In the case of non-disclosure of the names of one or more authors, the
reference to the author wvhose
name is not pseudonym, reference shall be to such of the authors who dies last from
amongst such authors.
3. In posthumous work [Sec.24]:
In the case of a literary, dramatic or musical work or an
engraving in which copyright subsists at the
date of the death of the author or in the case of joint authorship,
who dies last, any adaptation of which has not been published beforebefore the date of the death of the author
that date, copyright shall subsist until
sixty years from the beginning of the calendar year next following the year
from the beginning of the calendar year next following that year. in which the work is first published
4. In cinematograph films [Sec.26}:
In the case of a cinematograph film,
copyright shall subsist until
the calendar year following the year in which the film is published. sixty years from the beginning of
5. In sound recording
In the case of a sound
[(Sec.27]:
recording,
calendar year next following the year incopyright shall subsist until sixty years from the
which the sound recording is published. beginning of the
6. In Government
works (Sec.28]:
In the case of a
copyright shall subsist Government work, where Government is the first
until sixty years from the beginning owner of the
of the calendar year following copyright thereut
the work is first published. the year in whic
692
Business Law for
7. In works of public undertakings [Sec.28-A]: Managemert
In the case of a work, where a public undertaking is the first owner of the copyright
shall subsist until sixty years from the
work is first published. beginning of the calendar year next following the year in therein, copyr
whichigtheht
8. In works of international organizations (Sec.29]:
In the case of a work of an international organization, copyright shall subsist until sixty venve e
the beginning of the calendar year next following the year in which the work is first
published.
VREGISTRATION OF COPYRIGHT ISecs.44 to 55A &Rules 69 to 74]
The author or publisher or the owner or any person
to the Registrar of Copyrights for entering the particularsinterested in the copyr1ght in any work may annh
of the work in the Register of Copyrights. Tha
Registrar of Copyrights may enter the names or titles of works, names and
and owners of copyrights and such other particulars in the register keptaddresses of the authors, publisher
at the Copyright Office.
The Register of Copyrights shall be kept in physical and
electronic form in six parts, namely
Part-I - Literary works other than computer programmes, tables and
data bases and dramatic works. compilations including computer
Part I Musical works
Part III - Artistic works
Part IV
Cinematograph films
Part V
Sound recordings
Part VI - Computer programmes, tables and compilations including
The Register of Copyrights shall contain the particulars specified in computer data bases.
Application for registration of copyright shall be made in Form-XIII.
of changes in the particulars of Form-XIV. Every application for registration
Every such application shall be copyright entered in the Register of copyrights
in respect of one work only and shall be made in Form-XV.
70. comply with procedure set out in Rule
INFRINGEMENT OF COPYRIGHT (Secs.51 & 521
When copyright is infringed? Copyright in a
(a) by a person without a work shall be deemed to be infringed
licence granted by the owner of the
conditions of a licence so granted copyright or in contravention of the
(i) does anything, the
exclusive right to do which is conferred upon the
or
owner of the copyrignt.
(ii) permits for profit any place to be
an infringement of the used for the communication of the work to
the public
ground for believing that such in the work, unless he was not aware and had no constitutiny
copyright
(b) where any person communication to the public would be an infringement of reasonav
copyrig
(i) makes for sale or hire or by
the work; way of trade displays for sale or hire any of
(ii)) distributes any infringing copies
extent as to affectinfringing copies of the work either for the
prejudicially the owner of the purpose of trade or to
(ii) by way trade exhibits in copyright any infringing copies of iesu:
(iv) imports into India any public any infringing copies of the work:
any work for the privateinfringing copies of the o

and domnestic use of thework, except when import is of one copy

The reproduction of aliterary, importer.
shall be deemed to be an "infringingdramatic, copy".
musical or artistic work in
the form of a cinematograph film
 [C]TRADE MARKS
[THE TRADE MARKS ACT, 1999]

INTRODUCTION
reputation and goodwill of the proprietors of certain
To protect the interest of consumers and safeguard
Marks Act, 1958 was enacted. It was a comprehensive
works used on the goods, the Trade and Merchandise protection of trade marks. It was a central unitary law
niece of legislation dealing with registration anddevelopment in trade and commerce, globalization of trade
applicable to the whole of the country. With the simplification and
investment and transfer of technology and for repealing the Trade
and industry and need to encourage Trade Marks Act, 1999 was enacted
harmonization of trade marks management systems, provide for registration and better protection of trade
the object to
and Merchandise Marks Act, 1958, with prevention of the use of fraudulent marks.
marks for goods and services and for the
Act, 1999 are:
Some of the features of the Trade Marks
services besides the goods;
(i) registration of trade marks for
trade marks;
(ii) not to permit imitations of
defining a well known trade mark;
(iii) factors to be considered for register and for simple application for
registration
by producing only a single
(iv) simplifying the procedure
in more than one class:
permitted use;
(v) enlarging the scope of punishments for offences;
(vi) providing for enhanced
Board.
(vii) providing for Appellate
amendment
time to time, last of such
2002 are enacted as amended from
Under the Act Trade Mark Rules, from 08.07.2013.
Trade Mark (Amendment) Rules, 2013 with effect
being 2(1)(zb) &
2()(e), 2(1)(g), 2(1)G), 2(1)(m), 2(1)(q), 2(1)(z),
MEANING OF TRADE MARK [Secs.
distinguishing
2(3)] capable of being represented graphicaly and which is capable of packa ging
Trade mark means a "mark" shape of goods, their
services of one person from those of others and may include
the goods or
and combination of colours. used in relation to goods or
services to indicate
mark used or proposed to be right either
Trade mark includes a goods or services and some person having the
trade between the any indication of the
a connection in the course of to use the mark whether with or without
of permitted user, or collective mark
as proprietor or by way and includes acertification trade mark
identity of that person headin8, label, tiCket, name, signature, word, letter,
numeral, shape
Amark" includes a device, brand, colours or any combination thereof.
combination of
of goods, packaging or distinguishing the goods or services in connection with which it is used in the
A mark capable of mode of
which are certified by the proprietor of the mark in respect of origin, material.
course of trade goods or
of goods or performance of services, quality, accuracy or other characteristics from members
manufacture distinguishing the goods or services of
services, is the certification trade mark". A trade mark the mark, from those of others is a "collective mark".
of an association of persons which is the
proprietor of
697
698
Rusiness Law for
Management
"Goods" means anything which is the subject of trade or manufacture. "Service"
means service of
any description which is made available to potential users and includes the provision of services
in
with business of
any industrial or commercial matters such as banking, communication, education connection
elefictnanciricalng,
insurance, chit furnds, real estate, transport, storage, material treatment, processing, supply of
other energy, boarding, lodging, entertainment, or
amusement, construction, repair,
information and advertising "Goods and services" are associated with each other ifconveying of
it is likely news or
descriptions of goods and that those
goods and those services might be provided by the same business with
ot services. "Package" includes any case, box,
Wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork. descriptions
container, covering, folder, receptacle, vessel, casket, bola
Brand name, House mark and
Product mark:
In Astra Pharmaceutical Pvt. Ltd. v.
(SC)), the manner and scope of "Brand name" Collector of Central Excise, Chandigarh, [1995 (75) ELT 214
Brand name" has been brought out. It was and distinction between "House
a device in the form of an stated therein by Apex Court that "Housemark' and "Product mark!
mark" which is usually
under the Drug Rules. On emblem,
the other
word or both is an identification of the
hand, product mark or brand name is manufacturer which is compulsory
of a word and letter or invariably a word
both the Product mark numeral by which the product is identified and asked
and House mark will appear
or a
for. In respect of combination
side by side on all the labels, all products
ordered only by the product mark or Brand cartons etc.
projecting the image of the manufacturer name. TheIn House mark serves as an emblem of the Goods are
243, it was therefore held generally. CCEx. v. Kalvert Foods () Pvt. Ltd. manufacturer
that it is not necessary
A person can carry on
his trade by using a that "Brand name"
should be
(2011) 12 SCC
infringement of trade "Brand name" which is not even compulsorily registered.
from that of remedy mark, remedy available would be registered.
distinctly different to an But in violation/
available to a registered brand name. unregistered brand name
PERMITTED USE (Secs.2(1)(r), 2(1)(t),
2(1)Xv),
In relation to a 2(1)(x), 49 & 53]
(i) by a registered trade mark, permitted use
registered user of a trade mark in means the use of
(a) with which he is relation to goods or servicestrade mark
(b) in respect of connected in the course of trade: and
which the trade mark
(c) for which he is remains
(d) registered as registered registered for the time being; and
which complies with any user; and
is subject to, or conditions or
limitations to which the registration of
(ii) by a person, other
(a) with which hethan the registered proprietor and
registered user
(b) in respect of
is
connected in the course of registered
trade: and
user in relation to
goods or services
(c) by consent ofwhich the trade mark remains
(d) which such registered
proprietor registered for the time being: and
in a written
complies with
trade mark is subject anyto. conditions or agreement: and
The person using the limitations to which such user and
for any infringement. trade mark, referred to in
clause (ii), shall have no right to
registration of the
Aperson
of the trade entered in the Register of Trade institute any proceeding
mark. A person who is for Marks as proprietor of the
proprietor and proposed the time being, on trade mark is a
registered user, registered as such in application to the *registered
user". joint proprietor
respect of goods or Registraris bya registered
CLASSIFICATION OF GOODS services "registered
AND
of the Registrar shall classify goods and SERVICES (Secs.7 & 8 & Rule 221
The
'International Classification of goods andservices, as far as
services (NICE may be, in accordance with the current edition
Classification)' published by World Intellectual
Trade Marks /The Trade Marks Act, 1999) 699

Property Organization (WIPO) for the purposes of registration. Any question arising as to the class within
which any goods or services falls shall be deternined by the Registrar whose decision shall be final.
The Registrar may publish aclass-wise alphabetical index of classification of such goods and services,
including goods and services of Indian origin. Where any goods or services are not specified in the alhabetical
index of goods andservices, the classification of the goods and services shall be determined by the Registrar.
Preliminary advice by Registrar as to distinctiveness and request for search [Rules 23 & 24]
An application for preliminary advice by the Registrar shallbe made in Form TM-55 in respect of
any goods or services comprised within any one class of goods or services along with the fees and accompanies
by one representation of the trade mark.
Any person may request the Registrar on Form TM-60 to cause a search to be made and for issue
of certificate to the effect that no trade mark identical with or deceptively similar to such artistic work as
sought to be registered as a trade mark under the Copyright Act, 1957 has been registered as a trade mark
under the Trade Marks Act, 1999 in the name of, or that no application has been made under the Copyright
Act such re-registration by any person other than the applicant. The certificate shall ordinarily be issued
within 30 working days of the date of the request.
REGISTRATION OF A TRADE MARK [Secs.2(1)(w), 6, 18 to 23 & 46 & Rules 25, 37 to 59 &
103]
Application:
Any person claiming to be the proprietor of a trade mark used or proposed to be used by him shal
apply in writing to the Registrar to register a trade mark for a specification of goods or services included
in any one class or for different classes of goods or to register a trade mark for a speeification of goods
or services included in any one class from aconvention country. Every application shall be filed in the
office of the Trade Marks Registry within whose territorial limits the principal place of business in India
of the applicant is situate. Different applications to the Registrar signed by the applicant or his agent shall
be made as under:
(a) for registration of a trade mark for a specification of goods or services included in any one class
shall be made in Form TM-1;
(b) for registration of a trade mark for different classes of goods or services from convention country
shall be made in Form TM-52;
(c) for registration of a collective trade mark for a specification of goods or services in any one class
shall be made in Form TM-3;
(d) for registration of a collective trade mark for a specification of goods or services in any one class
from a convention country shall be made in Form TM-64;
(e) for registration of a certification trade mark for a specification of goods or services included in
any one class shall be made in Form TM-4:
() for registration of a certification trade mark for a specification of goods or services in any class
from a convention country shall be made in Form TM-65:
(g) for registration of a trade mark for different classes of goods and services shall be made in Form
TM-S1;
(h) for registration of a series trade mark for a specification of goods or services included in a class
or for different classes shall be made in Form TM-8:
() for registration of a series trade mark for a specification of goods or services included in a class
or for different classes from aconvention country shall be made in Form TM-37.
An application for registration of a trade mark for goods or services shall:
(a) explain with sufficient precision, a description by words, of the trade mark if necessary, to determine
the right of the applicant;
700
Business Law jor Management
(b) be able to depict the graphical representation of the trade mark;
(c) be considered as a three dimensional trade mark only if the application contains a
that effect; statement to
(d) be considered as a trade mark consisting of a combination of colours only if the
a statement to that effect. application contains
Every application shall be made in accordance with the requirements set out in Rules 25 to 36
applicable. Procedure for such registration is set out in Rules 37 to 58. Where asingle application for
registration of trade mark for different classes of goods or services is made, the specification of goods or
services contained in shall set out the classes in consecutive numerical order beginning with the lowest
humber and indicate in each class the goods or services appropriate to that class.
The Registrar shall advertise the application as accepted absolutely or accepted subject to
or limitations. The Registrar may also, where there are conditions
case of exceptional circumstances, advertise the
absolute grounds for refusal of registration or in
application before acceptance.
Opposition to registration and counter statement:
Any person may, within four months from the date of the
which the application for registration of trade mark was publication of the Trade Marks Journal in
by giving notice in writing to the Registrar of advertised or re-advertised, oppose the registration
of the grounds upon which the opponent opposition in Form TM-5. The notice shall include a statement
objects to the registration with
47 and 48 and with evidence in
shall be in Form [Link]-6 filedsupport of opposition as required under Rulesparticulars as required in Rules
50 to 53. The counter statement
by the applicant from the within two months from the receipt of the copy of
Registrar. the notice of opposition
Registration:
The Registrar,, after service of
notice on the applicant, after
hearing the parties may refuse the application or considering evidence, objections and after
modifications, conditions or limitations, if any, as hemay accept is absolutely or subject to such
of an application, the may amendments,
shall record in writing thethink fit. Inforcase of refusal or conditional acceptance
and the materials usedRegistrar
by him in arriving at the grounds such refusal or conditional
mark has been accepted, the decision. Where an application
Registrar shall register the said trade mark for a registrationacceptance
for trade
the application. The within
the actual date of Registrar shall enter the trade mark 18 months of the filing of
registration, the goods or services andonthethe register with the date of filing of the
and enter all particulars as specified in Rule 59. class or classes in respect of application,
which it is registered
The trade mark when
registered shall be
to be the date registered
and that date shall be as of the
Marks Registry issue a deemed of registration. Thedate of the making of the said application
entered into the Registercertificate of registration to the Registrar shall, under the seal of Trade
on the Register of of Trade A applicant.
Marks. registered trade mark The particulars of registration shall be
Trade Marks and means a trade mark which is
in computer
floppies diskettes or in remains
any
in force. The
Registrar may keep the records actually
completed within 12 months from the dateotherof electronic form. Where registration wholly or partly
of a trade mark is not
Registrar may after notice to the the application on
If the Registrar is applicant, treat the application as account of default of the applicant, the
satisfied that the abandoned.
and that (i) the
in relation to thoseapplicant intends to assigncompany is about to be
the trade mark to that formed under the Companies Act, 1956
as a registered usergoods or services by the company; or (i1) the company with a yiew to the use
refused nor permission after the registration of the
trade mark, the
proprietor intends it to be used by a thereof
person
for such registration be registration of a trade mark shall not
nronoses to use the trade mark. withheld on the ground that the applicant does not be
in respect of those goods or The company shall get itself
services within six months. registered as the proprietor of the tradeuse Or
mark