Assignment
Q1- Outline the criteria for patentability in India and describe any exceptions
where patents cannot be granted.
A Patent is granted for an invention which may be related to any process or product.
As per section 2(m) of Patents Act 1970 "Patent" means a patent for any invention
granted under this Act;
As per Section 2(j) of the Patents Act 1970 An invention means a new product or
process involving an inventive step and capable of industrial application;
Not all inventions are Patentable. An invention must fulfill certain requirements in order
to be qualified as Patentable. These requirements are known as ‘conditions of
Patentability’ which are as follows
1)Novelty
2)Inventive Step
2) Industrial applications
1) Novelty.- A novel invention is one which has not been disclosed in the prior art where
‘prior art’ means everything that has been published, presented or otherwise disclosed
to the public on the date of Patent .
2) Inventive Step (Non-obviousness).- Inventive step is a feature of an invention that
involves technical advancement as compared to existing knowledge or having economic
significance or both, making the invention non-obvious to a person skilled in that art.
3) Industrial Applicability. - An invention is capable of industrial application if it satisfies
following three conditions :-
• Can be made;
• Can be used in at least one field of activity;
• Can be reproduced with the same characteristics as many times as necessary.
According to Section 3 and 4 of Indian patents act mention the list of inventions which
are not patentable some of them are as follows:-
A) Frivolous or fabricated inventions. - An invention which is frivolous or which claims
anything obviously contrary to well established laws is not an invention. here are some
examples
i)A machine purporting to produce perpetual motion.
ii)A machine alleged to be giving output without any input.
B) An invention that violates public morality or causes a serious threat and prejudice to
human, animal or plant life - Inventions harmful to humans, animals, plants, or public
health, such as food adulteration methods, disturb public order, counterfeit notes etc,
are not eligible for patents.
C) A mere discovery of scientific principle is not patentable - The mere discovery of a
scientific principle or the formulation of an abstract theory or discovery of any living thing
or non-living substance occurring in nature is not an invention
D) Any process of treatment of humans, animals, and plants that may be medicinal,
therapeutic, surgical, diagnostic, curative, etc is not patentable
E) A method of agriculture or horticulture is not an invention.- Some examples of
agriculture or horticulture which is not patentable are:-
i) A method of producing a plant, even if it involved a modification of the
conditions under which natural phenomena would pursue their inevitable
course.
Therefore it could be concluded that patent is granted for inventions that are novel,
involve an inventive step, and have industrial applicability. However there asre some
exceptions which exclude inventions from patentability such as those that are frivolous,
violate public morality, or are merely discoveries of natural phenomena etc.
Q2 Discuss the role of the Patent Cooperation Treaty (PCT) in facilitating
international patent protection.
As per the Patents Act, 1970, defines a “patent” as the grant of exclusive rights to an
invention under this Act, which ensures the inventor has the legal authority to prevent
others from using, making, or selling the invention without permission.
The growing need for international patent protection, the Patent Coorporation
Treaty(PCT) was established as an effective legal mechanism to simplify and harmonize
the process of securing patents across multiple countries.
The PCT is an international patent law treaty, concluded in 1970. It provides a unified
procedure for filing patent applications to protect inventions in each of its contracting
states. A patent application filed under the PCT is called an international application, or
PCT application.
The PCT Is an international treaty with more than 155 Contracting States.
The PCT makes it possible to seek patent protection for an invention simultaneously in
a large number of countries by filing a single “international” patent application instead of
filing several separate national or regional patent applications. The granting of patents
remains under the control of the national or regional patent Offices in what is called the
“national phase”.
A single filing of a PCT application is made with a Receiving Office (RO) in one
language. It then results in a search performed by an International Searching Authority
(ISA), accompanied by a written opinion regarding the patentability of the invention,
which is the subject of the application.
It Is optionally followed by a preliminary examination, performed by an International
Preliminary Examining Authority (IPEA).Finally, the relevant national or regional
authorities administer matters related to the examination of application and issuance of
patent.
A, PCT application, which establishes a filing date in all contracting states, must be
followed up with the step of entering into national or regional phases to proceed towards
grant of one or more patents.
The PCT procedure essentially leads to a standard national or regional patent
application, which may be granted or rejected according to applicable law, in each
jurisdiction in which a patent is desire.
Therefore,The Patent Cooperation Treaty (PCT) assists applicants in seeking patent
protection internationally for their inventions, helps patent Offices with their patent
granting decisions, and facilitates public access to a wealth of technical information
relating to those inventions. By filing one international patent application under the PCT,
applicants can simultaneously seek protection for an invention in a very large number of
countries.
Q3 - Explain the key features of the Trade Marks Act, 1999, focusing on the
registration process and grounds for refusal.
As per Section 2(zb) of Trademark Act 1999 ‘Trade mark’ means a mark capable of
being represented graphically and which is capable of distinguishing the goods or
services of one person from those of others and may include shape of goods, their
packaging and combination of colours
As per Section 6 of Trademark Act 1999 A trademark is registered if it fulfills all the
criteria mentioned in the Act. The registration of trademark is as follows –
1) Trademark Search – Firstly, a person needs to search for a trademark they wish
to register. It should comply with the provisions of the Act and not be disqualified
by law. By conducting a search, one can determine the type of trademark they
can apply for. If it is found to be similar to another person’s trademark, they can
prevent it from being registered, saving time, costs, and potential disputes
regarding the trademark.
2) Filling of Application - Once you have identified an available and unique
trademark ,the trade mark application can be filed in the trade mark office under
the appropriate [Link] trade mark application is to be made in writing to
the registrar.
The application can be accepted fully or with some amendments as per the
discretion of the registrar. For filing an application for a trade mark, Form TM-A is
to be filed by visiting the office or on an online portal. Along with the application
form, there are other important documents which are to be attached, and a fee is
to be paid for the same.
3) Examination of Application – The trade mark office reviews the application
after it is filed. The review is done to see if the application is in compliance with
the Act and Rules. The examination report is issued to the applicant within a
period of one month. The applicant has to revert this report, answering all the
objections with evidence and argument within a period of one month. If after the
reply if any or if the report finds complete the application number is alloted to
trademark. In case the reply is not submitted on time, it may lead to the
application being treated as abandoned.
4) Publication of Trademark and Opposition – After the approval of Trademark,it
is published in the Trade mark Journal So that the aggrieved party can oppose
such registration if they feel that it infringes their trade mark and its exclusive use
in form TM-0 . The applicant then has to file a counter-reply statement replying to
the notice of opposition within a period of 60 days. After that hearing takes place
and if the decision is in favour of aggrieved party the trademark is not registered
and if not then the trademark is registered.
5) Registration of Trademark - Within the term of three months publication in
trademark journal ,if opposed by third party or if opposed the decision is in favour
of applicant, the trademark will proceed registration and the trademark authority
will proceed to give registration certificate.
The trademark cannot be registered and refused on relative or absolute grounds as
mentioned in Section 9 and Section 11 of Trademark act 1999
Section 9 mentions the absolute grounds for registration of Trademark :
1) Trademark which are of devoid or distinctive character.
2) Trademark consist exclusively of marks or indications which may serve in trade
to designate the kind, quality, quantity, intended purpose, values, geographical
origin or the time of production or rendering of the service or other characteristics
of the goods or services;
3) Trademark which which consist exclusively of marks or indications which have
become customary in the current language or in the bona fide and established
practice of the trade.
4) Trademark that cause confusion, comprises of any matter likely to hurt the
religious susceptibilities of any class , contains scandalous or obscene matter.
As per Section 11 Relative Grounds for refusal are:-
Section 11 of the Act stipulates that where there exists a likelihood of confusion
on the part of the public because of the identity with an earlier trade mark or
similarity of goods or services, the trade mark shall not be registered.
Under Section 11(1) the proprietor of earlier trade mark is entitled to oppose the
registration of a trade mark.
The registration of a mark which is merely reproduction or imitation of a well-
known mark is also prohibited.
Section 11(3) prohibits the registration of a trade mark if or to the extent that, its
use in India will be prevented by law of passing off or under the law of copyright
unless the proprietor of the earlier trade mark consents to such registration.
Therefore, it can be said that a trademark capable of distinguishing goods, not opposed
by a third party, not contradicting the provisions of the law, and not falling under
absolute or relative grounds for refusal, is eligible for registration under the Trademark
Act, 1999.
Q4 Outline the Madrid System for the international Registration of trademarks and
its benefits for businesses.
The Madrid System, also known as the Madrid Protocol ,is the primary international
system for facilitating the registration of trademarks in multiple jurisdictions around the
world
The Madrid System is administered by the International Bureau of the United Nations
World Intellectual Property Organization (WIPO) in Geneva, Switzerland. The Madrid
System consists of 114 members covering 130 countries known collectively as the
Madrid Union, they represent more than 80% of world trade is the primary international
system for facilitating the registration of trademarks in multiple jurisdictions around the
world.
International application
1. An application for international registration must designate one or more
Contracting Parties in which protection is sought. Further designations can be
effected subsequently. A Contracting Party may be designated only if it is party to
the same treaty as the Contracting Party whose office is the office of origin. The
latter cannot itself be designated in the international application.
2. The designation of a given Contracting Party is made either under the Agreement
or the Protocol, depending on which treaty is common to the Contracting Parties
concerned. If both Contracting Parties are party to the Agreement and the
Protocol, the designation will be governed by the Protocol.
3. International applications can be filed in English, French or Spanish, irrespective
of which treaty or treaties govern the application with a basic fee.
Registration
1. Upon receiving an international application, the International Bureau examines it
for compliance with the Protocol and its Regulations, focusing solely on
formalities such as classification and clarity of the goods/services listed. If no
irregularities are found, the Bureau records the mark in the International Register,
publishes the registration in the WIPO Gazette of International Marks, and
notifies all designated Contracting Parties.
2. Each designated country reviews the international trademark registration and
may issue a statement granting protection. If the trademark does not meet the
country's laws, they can refuse protection, stating the reasons, and must notify
WIPO within 12 months (or up to 18 months under specific Protocol rules)
3. Refusals are sent to the trademark holder, recorded in WIPO’s registry, and
published in the WIPO Gazette. The holder must address the refusal directly with
the country’s authorities through appeals or reviews. The final decision on the
refusal is reported back to WIPO for recording and publication.
The Madrid System offers significant benefits for businesses seeking trademark
protection internationally as a person can file one international application through their
local trademark office instead of applying separately in each country.
The system lowers costs by consolidating multiple national filings into a single
application, saving on translation, agent fees, and local legal costs. Fee reductions are
available for businesses in Least Developed Countries. International registration
safeguards brands across multiple jurisdictions, deterring infringement and ensuring
legal recourse in case of disputes.
Q5 Case Study: Choose a recent Indian case on trademark infringement or patent
dispute. Provide a summary, highlighting the main issue, court decision, and its
impact on IPR law in India.
Case Summary
Castrol Limited vs Gautam Kumar
Facts of the Case
The plaintiff has initiated a lawsuit seeking a permanent injunction against the
defendants for trademark infringement, copyright infringement, passing off, and
acts of unfair competition. The plaintiff is a recognized seller of engine oil and
lubricants globally, utilizing specific trademarks and packaging, including but not
limited to “ACTIV,” “ACTIV Device,” “ACTIBOND,” “ACTIBOND Device,”
“POWER1,” and “CASTROL CRB TURBOMAX.”
The present suit has been filed by the plaintiff, being aggrieved by the use of the
marks by the defendants, i.e., ACTIV, ACTIVE , ACTIVATE , SUPER POWER.
The defendants have allegedly been using similar marks and packaging for their
own products, which include engine oils, coolants, and lubricants, thereby
infringing upon the registered trademarks of the plaintiff. Despite the statutory
period for filing a written statement having lapsed, the defendants failed to
respond to the allegations.
Main Issues of the Case
1. Whether the defendants have infringed upon the plaintiff’s trademarks and
copyrights.
2. Whether the plaintiff is entitled to a permanent injunction and other appropriate
reliefs due to the defendants’ actions.
Case analysis
The plaintiff has established that the trademarks in question are registered and
have been in continuous use worldwide. The defendants’ use of similar marks
constitutes a clear infringement of the plaintiff’s intellectual property rights.
This Court also appointed a Local Commissioner to visit the defendants‟
premises and prepare an inventory and seize and seal all the products bearing
defendants‟ marks and packaging. The Local Commissioner conducted the
commission on 16th December, 2023, and seized a total of 11,898 sticker labels,
9 empty bottles, 10 filled buckets and drum, all bearing the infringing marks.
The summons was duly served on the defendants on 02 nd January, 2024. The
defendants through their counsel also entered appearance before this Court on
15th February, 2024. However, despite lapse of statutory period, defendants did
not file their written statement.
The court recognizes that the defendants are engaged in counterfeiting, which
involves the unauthorized reproduction of the plaintiff’s trademarks and device
marks.
The failure of the defendants to file a written statement indicates an
acknowledgment of the allegations and a lack of defense against the claims of
infringement. The court emphasizes that counterfeiters forfeit any entitlement to
equitable relief under the law.
Decision
The suit is decreed in favour of the plaintiff . The defendants are directed to
destroy all the infringing materials that were seized by the Local Commissioner in
the presence of a representative of the plaintiff.
. The plaintiff is entitled to costs of ₹ 7,00,000/- and damages of ₹ 1,00,000/-,
totalling to ₹ 8,00,000/-. The defendants shall pay the costs and damages to the
plaintiff within a period of sixteen weeks.
The Castrol vs. Gautam Kumar case was a key moment in strengthening trademark
protection in India. It showed that well-known brands can get extra legal protection,
highlighted the importance of acting quickly against counterfeit goods, and made it clear
that unfair competition and trademark violations won’t be tolerated. Businesses now
have a better understanding of how to protect their brands and can rely on a more
robust legal system to defend their intellectual property.
This case help to define and reinforce laws surrounding intellectual property rights.
Courts often interpret and apply existing trademark laws,to address cases of
infringement. These rulings create legal precedents, strengthening the legal framework
for protecting trademarks.
Trademark law aims to protect consumers by ensuring they can distinguish between
genuine products and counterfeit ones. This helps build consumer confidence and
guarantees that they receive the quality they expect. This case is likely to lead to further
amendments regarding trademark infringement, and it will raise awareness among
applicants about the consequences of using similar or identical trademarks. Those who
engage in such practices will face the same legal repercussions as the defendant in this
case.