Assignment for Intellectual Property Rights & Trademark Expert

A. Outline the criteria for patentability in India and describe

any exceptions where patents cannot be granted.
Criteria for Patentability in India :
Under the Indian Patents Act, 1970, for an invention to be patentable, it
must meet the following criteria:
1. Industrial Applicability [Section 2(1) (ac)]-
It must be capable of industrial application in relation to an invention,
means that the invention is capable of being made or used in an industry;
2. Invention [Section 2(1) (ja)]-
Invention means a new product or process involving an inventive step
and capable of industrial application.
3. Inventive Step [ Section 2 (1) (ja) ]-
"Inventive step" means a feature of an invention that involves technical
advance as compared to the existing knowledge or having economic
significance or both and that makes the invention not obvious to a
person skilled in the art.
4. Novelty / New Invention [ Section 2(1)(l) ]-
“New invention" means any invention or technology which has not
been anticipated by publication in any document or used in the country
or elsewhere in the world before the date of filing of patent application
with complete specification, i.e., the subject matter has not fallen in
public domain or that it does not form part of the state of the act.

Exceptions Where Patents Cannot Be Granted :

Under the Indian Patents Act, 1970, Section 3 and Section 4 defines what
are not inventions and which considered to be as the non-patentable
inventions:
1. An invention against natural laws [Section 3(a)] –
An invention which is frivolous or which claims anything obviously
contrary to well established natural laws is considered to be as the non-
patentable inventions.
2. An invention Contrary to Public Order or Morality [Section 3(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, considered to be as the non-patentable inventions.
3. Discovery of any Scientific Principle [Section 3(c)] –
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, thus it cannot to be patentable.
4. Discovery of new form of a known substance [Section 3(d)] –
The mere discovery of a new form of a known substance which does
not result in the enhancement of the known efficacy of that substance,
or new use of a known substance, is not patentable.
5. Method of agriculture or horticulture [Section 3(h)] –
Any method of agriculture or horticulture is not patentable in India as
to protect traditional farming practices and prevent monopolies and
exclusive rights through patent.
6. Medicinal, surgical treatment of human beings or any process for
treatment of animals [Section 3(i)] –
Any process for the medicinal, surgical, curative, prophylactic
diagnostic, therapeutic or other treatment of human beings or any
process for a similar treatment of animals to render them free of disease
or to increase their economic value or that of their products, is
considered as non-patentable in India.
7. Mathematical or Business Methods, Algorithms [Section 3(k)] -
 Business methods, mathematical models, and algorithms shall not
considered to be patentable in India.
8. Dramatic, musical or artistic work [Section 3(l)] –
A literary, dramatic, musical or artistic work or any other aesthetic
creation whatsoever including cinematographic works and television
productions shall not considered to be patentable in India. Copyright
Act deals with the dramatic, musical or any artistic work.
9. Traditional Knowledge [Section 3(p)] –
An invention which in effect, is traditional knowledge or which is an
aggregation or duplication of known properties of traditionally known
component or components.
[Link] and animals [Section 3(j)]-
Plants and animals in whole or any part thereof other than micro-
organisms but including seeds, varieties and species and essentially
biological processes for production or propagation of plants and
animals, is not patentable in India.
[Link] related to Atomic Energy [Section 4] –
No patent shall be granted in respect of an invention relating to atomic
energy.
B. Discuss the role of the Patent Cooperation Treaty (PCT) in
facilitating international patent protection.
The Patent Cooperation Treaty is an international treaty administered by
the World Intellectual Property Organization (WIPO). It provides a unified
procedure for filing patent applications to seek protection in multiple
countries simultaneously.
Key Roles of the PCT:
a) Streamlined Filing Process:
 The PCT allows inventors to file a single international patent
application that is recognized in all 157 contracting states. This
eliminates the need to file separate applications in each country,
reducing administrative burdens and costs.

b) International Search Report (ISR):

The PCT system provides an International Search Report (ISR) and
a written opinion on the potential patentability of the invention. This
gives applicants a preliminary understanding of whether their
invention meets the criteria for patentability.

c) International Publication:

The application is published after 18 months from the priority date,

making it available to the public and putting potential infringers on
notice.

d) Extended Time to Enter National Phases:

The PCT extends the deadline to enter the national phases

(individual country filings) up to 30 or 31 months from the priority
date. This gives applicants more time to assess the commercial
viability of their invention and decide on specific jurisdictions for
protection.

e) Cost and Time Efficiency:

By consolidating processes, the PCT reduces duplicative efforts in

filing and examination across multiple jurisdictions, saving both
time and costs for applicants.
 f) Harmonization Across Jurisdictions:

The PCT standardizes the process of international patent filing,

offering uniformity in documentation, filing formats, and timelines,
which simplifies global patent protection efforts.

C. Explain the key features of the trade marks act, 1999,

focusing on the registration process and grounds for refusal.
Key Features :
 The Trade Marks Act, 1999 governs the registration, protection, and
enforcement of trademarks in India. It provides a legal framework
for the protection of trademarks and ensures that businesses can
distinguish their goods and services from others.
 It provides extensive protection to well-known trademarks, even
across unrelated classes of goods and services.
 It provides remedies for trademark infringement, including
injunctions, damages, and criminal penalties for counterfeiting.
Registration of trademark:
Chapter 3 (Section 18-26) of the trademarks act deals with the procedure
and duration of the registration of the mark
1. Section 18 (Application for registration of the mark)-
Any person claiming to be the proprietor of a trademark shall apply in
writing to the Registrar in the prescribed manner for the registration of
his trade mark. A trademark application is filed using Form TM-A,
specifying the mark, applicant details, and class of goods/services under
the Nice Classification system (45 classes). The registrar may accepts
it absolutely or subject to such amendments, modifications, conditions
or limitations, if any, as he may think fit.
2. Section 19 (Withdrawal of acceptance)-
 If the trademark application has been accepted in error or the trademark
should not be registered or should be registered subject to limitation or
to conditions, the registrar may orders to withdraw the acceptance and
proceed as if the application had not been accepted.
3. Section 20 (Advertisement)-
When an application for registration of a trade mark has been accepted,
the registrar shall order for the advertisement of the trademark in the
trademark journal in prescribed manner.
4. Section 21 (Opposition)-
Any person can oppose the registration by filing Form TM-O within 4
months. The registrar shall serve a copy of notice to the application and
within two months from the receipt of such copy of the notice of
opposition, the applicant shall send to the Registrar in the prescribed
manner a counterstatement of the grounds on which he relies for his
application, and if he does not do so he shall be deemed to have
abandoned his application. The Registrar adjudicates the matter, and if
the opposition is dismissed, the application proceeds to registration.

Absolute grounds for refusal of registration:

1. Lack of Distinctiveness (Section 9(1)(a)):

Marks that are not capable of distinguishing the goods or services of
one person from those of others are not registrable.
2. Descriptive Marks (Section 9(1)(b)):
Marks that describe the kind, quality, quantity, purpose, values,
geographical origin, or other characteristics of the goods/services are
not registrable.
3. Customary Marks (Section 9(1)(c)):
Marks that have become customary in the trade practices or are generic
to the goods/services.
4. Deceptive Marks (Section 9(2)(a)):
Marks likely to deceive or cause confusion about the nature, quality, or
geographical origin of the goods/services.
5. Marks that Hurt Religious Sentiments (Section 9(2)(b)):
Marks that contain or represent matters likely to hurt the religious
susceptibilities of any class or section of citizens.
6. Scandalous or obscene (Section 9(2) (c) ):
If the trademark comprises or contains scandalous or obscene matter.
7. Marks Prohibited Under Law (Section 9(2)(d)):
Marks that are prohibited under any law in India.
8. Shape Marks (Section 9(3)):
A trademark consisting exclusively of:
a. The shape of goods resulting from the nature of the goods themselves.
b. The shape necessary to obtain a technical result.
c. The shape that gives substantial value to the goods.

Relative Grounds for refusal of registration:

1. Likelihood of Confusion (Section 11(1)):

A trademark is refused registration if:
 It is identical with an earlier trade mark and similarity of goods
or services covered by the trade mark.
 It is similar to an earlier trade mark and the identity or similarity
of the goods or services covered by the trade mark.
 It is likely to cause confusion in the minds of the public.
2. Identical and similar goods (Section 11(2)) :
A trademark which is identical or similar to an earlier trademark and
the goods and services are not similar with an earlier trademark shall
not be registered.
3. Similarity with Well-known trademark:
 The trademark shall not be registered if the the earlier trade mark is a
well-known trade mark in India and the use of the later mark without
due cause would take unfair advantage of or be detrimental to the
distinctive character or repute of the earlier trade mark.
4. Protection of earlier trademark (Section 11(3) :
A trade mark shall not be registered if, or to the extent that, its use in
India is liable to be prevented—
(a) by virtue of any law in particular the law of passing off protecting
an unregistered trade mark used in the course of trade
(b) by virtue of law of copyright.

D. Outline the madrid system for the international registration

of trademarks and its benefits for businesses.
The Madrid Protocol is administered by the World Intellectual Property
Organization (WIPO), which is a specialized agency of the United Nations,
headquartered in Geneva, Switzerland. The Protocol allows you to obtain
and maintain protection for your brand around the world by providing a
user friendly, expeditious and cost-effective set of procedures for the
central filing of trade mark applications and the central management of
trade mark registrations with effects in various countries. The features are
as follows:
1. Single Filing to seek protection in various Territories-
Based on your Indian trade mark, you can file an international
application, online, at the IP India (CGPDTM) website
([Link] designating all or some
of the members of the Madrid Union where you wish your mark to be
protected. The application is transmitted to WIPO for examination,
registration and publication.
2. Centralized Management of your Trade Marks-
Once your international registration has been obtained and your mark
is protected in the designated members of the Madrid Union, you will
be able to manage your rights very easily by following online
procedures at a single point (WIPO) to renew your trade mark rights
every ten years, and request for various types of modification including
address change, change of rights.
3. Renewal:
The registration is valid for 10 years and can be renewed indefinitely
every 10 years.

Advantages:

1. Reduced Costs:
You do not need to file separate applications in many countries, drafted
in different languages, pay fees in different currencies, hire the services
of local representatives and follow different procedures in each of those
countries. Instead, you can file a single international application online
on the IP India website, in a single language (English), you pay fees in
a single currency (Swiss francs), and your application has effects in all
the Madrid Union members of your interest.
2. Effective brand management:
Once your international registration has been obtained, you will take
care of only one renewal date and procedure, all in one place (WIPO),
instead of many different dates and procedures at separate TM offices;
you will always be able to extend protection of your mark to new
markets very easily (through subsequent designations); and you will be
able to have modifications to your trade mark registration (such as
assignment of rights, change of name or address of holder or
representative, limitations, renunciations) recorded in one single place.
 3. Commercialisation and brand presence –
The Protocol also offers you early brand presence abroad, as it is a
means to acquire rapid international reputation and generate goodwill
for your trademarks.
E. 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 title and citation-
Tata sons pvt. Ltd. versus Mangal Yadav and another, Delhi High Court
(2023 SCC OnLine Del 5414)
Facts of the case –
1. The suit has been filed by the Plaintiff - TATA Sons Pvt. Ltd, which is
the principal investor and promoter of the TATA group of companies
seeking permanent injunction restraining infringement of registered
trademarks and copyrights, passing off, dilution and tarnishment of
trademarks, etc.
2. The mark ‘TATA’ is one of the most reputed marks in India. The group
was founded by Shri Jamsetji Nusserwanji Tata, which is a rare
patronymic name possessing the distinctiveness of an invented word.
The use of the mark ‘TATA’ dates back to 1868. The group of Tata
companies is generally known as the ‘House of Tata’.
3. The present suit relates to manufacture of pressure cookers under the
mark ‘TATA’ by Defendant No. 1 - Mangal Yadav trading as M/s.
R.M.I. Enterprise and Defendant No. 2 - Sanjeev Jain trading as A&A
Packaging. The Defendant No. 1 is the manufacturer and seller of the
pressure cookers under the mark ‘TATA’. The cartons and the printing
of the packaging was being done by the Defendant No. 2.
4. Plaintiff acquired knowledge of the Defendants using the mark ‘TATA’
for pressure cookers sometime in November, 2019 an filed the present
suit.
5. The Defendants were manufacturing and selling a substantial quantity
of Pressure cookers under the mark TATA. Considering the nature of
the product, there is considerable probability of dilution of the TATA
brand.

Issues raised-

1. Whether the defendants' use of the "TATA" trademark amounted to

infringement under the Trade Marks Act, 1999.
2. Whether the plaintiff was entitled to an injunction to restrain the
defendants from using the "TATA" mark.

Court’s reasoning-

1. The court acknowledged the extensive goodwill and reputation of the

"TATA" trademark, which is well-known in India and globally.
2. It observed that the unauthorized use of the mark by the defendants
could mislead consumers and damage the brand's reputation.
3. Tata Sons holds multiple trademark registrations for "TATA," granting
them exclusive rights to its use. The defendants' actions were found to
violate these rights, constituting infringement under Section 29 of the
Trade Marks Act, 1999.
4. The court noted that the defendants' use of the "TATA" mark on
pressure cookers could create consumer confusion, leading customers
to believe that the products were associated with or endorsed by Tata
Sons.
5. Unauthorized use of a well-known trademark like "TATA" could lead
to irreparable harm to the brand's reputation and dilute its
distinctiveness.

Court’s Decision-

1. The Delhi High Court granted an interim injunction, restraining the

defendants from manufacturing, selling, or dealing in pressure cookers
or any other products bearing the "TATA" trademark until the next
hearing date. This decision underscores the judiciary's commitment to
protecting well-known trademarks from infringement and upholding
intellectual property rights.
2. The suit is decreed for a sum of Rs. 11 lakhs against the Defendant No.
1 towards damages and costs and stock of the Defendant No. 1 also be
destroyed in the presence of the Plaintiff's representative.

Significance –

1. This decision underscores the judiciary's commitment to protecting

well-known trademarks from infringement and upholding intellectual
property rights and highlights the importance of safeguarding
established trademarks and serves as a precedent for enforcing
intellectual property rights against unauthorized use.