STUDY

MATERIALS
ON
INTELLECTUAL PROPERTY
LAW

5 YEAR BA/BBA/BCOM LL.B

SEMESTER IX
STUDY MATERIALS ON INTELLECTUAL PROPERTY
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INTELLECTUAL PROPERTY LAW

SEMESTER: BA/BBA/BCOM LL.B, SEMESTER IX

OVERVIEW OF THE SYLLABUS

MODULE-I: GENERAL PRINCIPLES

1. Introduction- Nature, Character and Classification of Intellectual Properties.

2. Leading international instruments introducing principles concerning the

intellectual property rights- The Paris Union, The Berne Convention, Universal
Copyright Convention, The Madrid Agreement on the Registration of Marks, GATT,
The UPOV Conventions, TRIPS, TRIMS, WTO,

3. WIPO, UNESCO

MODULE-II: PATENT

Concept of Patent- Process for obtaining Patent- Rights and obligations of a Patentee-
Transfer of Patent Rights- Powers, Functions and Jurisdiction of the Controller of
Patent-Infringement of Patent Rights and Remedies

MODULE-III: TRADE MARK

Concept of Trade Mark; Registration of Marks; Doctrine of Honest and Concurrent

users; Doctrine of Deceptive Similarity; Powers, Functions and Jurisdiction of the
Registrar of Trade Mark; Infringement and Remedies

MODULE-IV: COPY RIGHT AND RELATED RIGHTS

Concept of Copyright; Ownership of Copyrights; Assignment of Copyrights; Powers

and Functions of the Registrar of Copyrights; Copyright Board; Infringement and
Remedies

MODULE-V: THE INFORMATION TECHNOLOGY ACT, 2000

Definitions; Digital Signature: Object and Definite Clause of Access affixing digital
signature; Legal recognition: Use of electronic records; Retention and Publication;
Attribution; Acknowledgement and Despatch; Controller: Appointment; Powers and
Functions; Penalty and Adjudication; Cyber Appellate Tribunal: Composition,
Powers, procedures and jurisdiction of offences; Cyber Regulations Advisory
Committee
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CONTENTS

MODULE I: GENERAL PRINCIPLES

.
1. Introduction to Intellectual Property Laws…………………
a) Nature and Characteristics of Intellectual Properties
b) Significance of Intellectual Properties
c) Classification of Intellectual Properties

2. International Instruments on Intellectual Property Rights……

a) The Paris Convention for the Protection of Industrial
Property, 1883
b) The Berne Convention for the Protection of Literary and
Artistic Works, 1886
c) The Universal Copyright Convention ( UCC ), 1952
d) Madrid Agreement and Madrid Protocol
e) The General Agreement on Tariffs and Trade (GATT),
1947
f) The International Union for the Protection of New
Varieties of Plants (UPOV), 1961
g) TRIPS and TRIMS Agreement
h) World Trade Organization (WTO)

3. International Bodies Concerning Intellectual Property Laws…

a) World Intellectual Property Organization (WIPO)
b) The United Nations Educational, Scientific and Cultural
Organization (UNESCO)

INTRODUCTION TO INTELLECTUAL PROPERTY LAWS

Intellectual property (IP) is a form of proprietorship that encompasses the intangible

development of human intellect. New types of property emerged as a result of the industrial
revolution and the rapid development of science, technology and culture. The Principal object
of intellectual property is to ensure consumers a varied variety of products at the lowest
possible price. Intellectual
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property law ensures private property rights enabling individual and business to appropriate
to themselves the value of the information they produce and encourage them to produce
more.

Legal protections for intellectual property have a rich history that stretches back to ancient
Greece and before. As different legal systems matured in protecting intellectual works, there
was a refinement of what was being protected within different areas. Over the same period
several strands of moral justification for intellectual property were offered: namely,
personality-based, utilitarian, and Lockean. Finally, there have been numerous critics of
intellectual property and systems of intellectual property protection.

Intellectual property is generally characterized as non-physical property that is the product of

original thought. Typically, rights do not surround the abstract non-physical entity; rather,
intellectual property rights surround the control of physical manifestations or expressions of
ideas. Intellectual property law protects a content-creator’s interest in her ideas by assigning
and enforcing legal rights to produce and control physical instantiations of those ideas.

Nature and Characteristics of Intellectual Properties

Intellectual properties have their own peculiar features. These features of intellectual
properties may serve to identify intellectual properties from other types of properties. Thus,
we will discussthem in brief.

1. Territorial

Any intellectual property issued should be resolved by national laws. Why is it an issue?
Becauseintellectual property rights have one characteristic which other national rights do not
have. In ownership of intellectual property of immovable properties, issues of cross borders
are not probable. But in intellectual properties, it is common. A film made in Hollywood can
be seen in other countries. The market is not only the local one but also international.

2. Giving an exclusive right to the owner

It means others, who are not owners, are prohibited from using the right. Most intellectual
property rights cannot be implemented in practice as soon as the owner got exclusive rights.
Most of themneed to be tested by some public laws. The creator or author of an intellectual
property enjoys rights inherent in his work to the exclusion of anybody else.
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3. Assignable

Since they are rights, they can obviously be assigned (licensed). It is possible to put a
dichotomy between intellectual property rights and the material object in which the work is
embodied. Intellectual property can be bought, sold, or licensed or hired or attached.

4. Independence

Different intellectual property rights subsist in the same kind of object. Most intellectual
propertyrights are likely to be embodied in objects.

5. Subject to Public Policy

They are vulnerable to the deep embodiment of public policy. Intellectual property attempts
to preserve and find adequate reconciliation between two competing interests. On the one
hand, theintellectual property rights holders require adequate remuneration and on the other
hand, consumers try to consume works without much inconvenience.

6. Divisible (Fragmentation)

Several persons may have legally protected interests evolved from a single original work
without affecting the interest of other right holders on that same item. Because of the nature
of indivisibility, intellectual property is an inexhaustible resource. This nature of intellectual
property derives from intellectual property’s territorial nature. For example, an inventor who
registered his invention in Ethiopia can use the patent himself in Ethiopia and License it in
Germany and assignit in France. Also, copyright is made up of different rights. Those rights
may be divided into different persons: publishers, adaptors, translators, etc.

Significance of Intellectual Properties

In this era of technological advancement, it has become a lot easier for anyone to steal your
ideas, literary work or identity. People are making millions by selling products in the grey
market whichis causing a huge damage to the original owners.

On the other hand, people from around the world are in the process of creating or inventing
something new that could be useful in the areas of art, technology or culture. Protection of
intellectual property encourages the commitment to innovate, enhance economic growth and
enhance the living standards.
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The properly tailored Intellectual property management program helps the company to gain
confidence to work with ultimate motivation and undivided attention to achieve their targets.
As the intellectual property and enforcement of awards are being recognized by most of the
countries worldwide, eCommerce such as Amazon, eBay, Alibaba...etc, it was the biggest
threat for the brand owners. These eCommerce platforms have improved and tightened their
vendor registration terms and conditions to make sure that only legitimate and authorized sale
of a product could be carried forward.

Companies who were suffering great losses due to the grey market sales and fake products
bearing their logos, destroying the reputation in the markets can only be controlled now with
the help of proper IP management program that covers registrations, renewals, market
research, country of origin, extended protection and proper structuring.

Classification of Intellectual Properties

Intellectual property rights include copyright, patent, trademark, geographic indication of

origin, industrial design, trade secrets, database protection laws, publicity rights laws, laws
for the protection of plant varieties, laws for the protection of semi-conductor chips (which
store information for later retrieval), etc.

There is a conventional mode of classification of intellectual property as industrial property

and copyrights. Industrial properties include inventions (patent), property interest on minor
invention (Utility model certificate) and commercial interests (Trade Marks, trade names,
geographical indications, and industrial design), plant breeder rights, biodiversity, etc.

• Patents

A patent is a type of intellectual property right which allows the holder of the right to
exclusivelymake use of and sale an invention when one develops an invention. Invention is a
new process, machine, manufacture, composition of matter. It is not an obvious derivation of
the prior art (It should involve an inventive step). A person who has got a patent right has an
exclusive right. Theexclusive right is a true monopoly but its grant involves an administrative
process.

• Copyright
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It is an intellectual property which does not essentially grant an exclusive right over an idea
but the expressions of ideas which makes if different from patent law. Patent is related with
invention
- technical solution to technical problems. Copyright is a field which has gone with artistic,
literary creativity- creativity in scientific works, audio-visual works, musical works, software
and others. There are neighboring rights. These are different from copyright but related with
it – performers in a theatre, dancers, actors, broadcasters, producers of sound recorders, etc.
It protects not ideasbut expressions of ideas as opposed to patent.

Copyright protects original expression of ideas, the ways the works are done; the language
used,etc. It applies for all copyrightable works. Copyright lasts for a longer period of time.
The practice is life of author plus 50 years after his/her life. Administrative procedures are not
required, unlike patent laws, in most laws but in America depositing the work was necessary
and was certified thereon but now it is abolished.

• Industrial Design Law

Some call this design right (European) and some call it patentable design, industrial design
(WIPO and other international organization). A design is a kind of intellectual property
which gives an exclusive right to a person who has created a novel appearance of a product.
It deals with appearance: how they look like. Appearance is important because consumers are
interested in the outer appearance of a product. It is exclusively concerned with appearance,
not quality.

The principles which have been utilized in developing industrial design law are from
experiencesof patent and copyright laws. It shares copyright laws because the design is artistic.
It shares patent law because there are scientific considerations. Design law subsists in a work
upon registration and communication. It makes them close to patent law since they are also
founded in patent law. Duration is most of the time 20 years like the patent law trademark
Rights law.

• Trademarks Rights Law

It is a regime of the law giving protection to graphic representation to words or logos or

depending on the jurisdiction question such as sound or smells which are distinctive in nature
and serve as source identification. There is also a recent phenomenon which is representing
goods in their smell and sound. It is to be found on the goods associated with them. It enables
the customer to identify the goods from others. They serve as a source identifier.
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Trademarks perform communication function. Once there is a valid representation, it gives

the mark owner an exclusive right. It beginswith registration and publication of the mark. But
there are exceptions which serve what trademarks registered serve which are not registered. It
means they deserve protection even though they are not registered. They exist forever so long
as the good with which they are associated continue to be sold. But they require renewal.

• Right of Publicity

It protects the right to use one’s own name or likeness for commercial purposes.

• Geographic Indication

It is indications on products of the geographic origin of the goods. It indicates the general
source. The indication relates to the quality or reputation or other characteristics of the good.
For example, “made in Ethiopia” is not influenced by the geographical Indication. Geographical
indications are sometimes called appellations of origin. For example, “Sheno lega”,
“Shampagne” (name of a region in France) are geographical indications.

• Trade Secrets

It gives the owner of commercial information that provides a competitive edge the right to
keep others from using such information if the information was improperly disclosed to or
acquired by a competitor and the owner of the information took reasonable precautions to
keep it secret. It protects confidential secrets of some commercial value. The holder of the
secret wants this information to be protected; some protect the holder from an unauthorized
disclosure of the information. A tort law, unfair competition or contract law can protect such
information which issecret /confidential information/. The holder (owner) has to do his/her best
to keep the information secret. Trade secrets exist without registration as it is to make the
information public, for example, the formula of Coca Cola. Information that are protected in
trade secrets can be patentable if they are novel and nonobvious. But it is, most of the time, not
to make the secret public. However, their full-fledged IP rights are contestable.
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INTERNATIONAL INSTRUMENTS ON INTELLECTUAL PROPERTY RIGHTS

The International Intellectual Property System is in fact a system of accumulated practices

ratherthan a set of fixed rules. It is the practice of international relations in the matter of legal
protection of inventions and literary and artistic works, resulting from and governed by both
national legislation defining the treatment to be granted to foreigners, and international treaties
concerning such treatment. It may be emphasized that a country’s laws defining the rights of
the foreigners form part of the international system even when, the country is not party to any
international treaty on the subject, for such laws form the basis upon which in practice
intellectual property is protected in more than one country. There are number of International
Treaties/Conventions which deal with the various aspects of intellectual property and
industrial property. These Conventions are administered by World Intellectual Property
Organization, popularly known as WIPO.

a) Paris Convention for the Protection of Industrial Property

The Paris Union, established by the Convention, has an Assembly and an Executive
Committee. Every State member of the Union which has adhered to at least the
administrative and final provisions of the Stockholm Act (1967) is a member of the
Assembly. The members of the Executive Committee are elected from among the members
of the Union, except for Switzerland, which is a member ex officio. The Paris Convention,
concluded in 1883, was revised at Brusselsin 1900, at Washington in 1911, at The Hague in
1925, at London in 1934, at Lisbon in 1958 andat Stockholm in 1967, and it was amended in
1979.

The Convention applies to industrial property in the widest sense, including patents, marks,
industrial designs, utility models, trade names, geographical indications and the repression of
unfair competition. The substantive provisions of the Convention may be divided into three
maincategories namely national treatment, right of priority, common rules.

National Treatment
Under the provisions on national treatment, the Convention provides that, as regards the
protection of industrial property, each contracting State must grant the same protection to
nationals of the other contracting States as it grants to its own nationals. Nationals of non-
contracting States are also entitled to national treatment under the Convention if they are
domiciled or have a real and effective industrial or commercial establishment in a contracting
State.
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Right of Priority

The Convention provides for the right of priority in the case of patents, marks and industrial
designs. This right of priority denotes that on the basis of a regular first application filed in
one of the contracting States, the applicant may, within a certain period of time (12 months
for patents and utility models; 6 months for industrial designs and marks), apply for
protection in any of theother contracting States and these later applications are regarded as if
they had been filed on the same day as the first application. In other words, these later
applications have priority over applications which may have been filed during the said period
of time by other persons for the same invention, utility model, mark or industrial design.
Moreover, these applications, since basedon the first application, are not affected by any event
that may have taken place in the interval, such as any publication of the invention or sale of
articles bearing the mark or incorporating the industrial design. One of the major practical
advantages of right of priority is that, when an applicant desires protection in several
countries, he is not required to present all his applications at the same time but has six or 12
months at his disposal to decide in which countries he wishes protection and to organize with
due care the steps needed to secure protection.

The Convention lays down a few common rules that all Contracting States must follow. The
most important are:

(a) The Paris Convention does not regulate the conditions for the filing and registration of
marks which are determined in each Contracting State by domestic law. Consequently, no
application for the registration of a mark filed by a national of a Contracting State may be
refused, nor may a registration be invalidated, on the ground that filing, registration or
renewal has not been effectedin the country of origin. The registration of a mark obtained in one
Contracting State is independent of its possible registration in any other country, including the
country of origin; consequently, the lapse or annulment of the registration of a mark in one
Contracting State will not affect the validity of the registration in other Contracting States.

Where a mark has been duly registered in the country of origin, it must, on request, be
accepted for filing and protected in its original form in the other Contracting States.
Nevertheless, registration may be refused in well-defined cases, such as where the mark
would infringe the acquired rights of third parties; where it is devoid of distinctive character;
where it is contrary tomorality or public order; or where it is of such a nature as to be liable to
deceive the public.
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If, in any Contracting State, the use of a registered mark is compulsory, the registration cannot
be canceled for non-use until after a reasonable period, and then only if the owner cannot justify
thisinaction.

Each Contracting State must refuse registration and prohibit the use of marks that constitute
a reproduction, imitation or translation, liable to create confusion, of a mark used for
identical andsimilar goods and considered by the competent authority of that State to be well
known in that State and to already belong to a person entitled to the benefits of the
Convention.

Each Contracting State must likewise refuse registration and prohibit the use of marks that
consist of or contain, without authorization, armorial bearings, State emblems and official
signs and hallmarks of Contracting States, provided they have been communicated through the
International Bureau of WIPO. The same provisions apply to armorial bearings, flags, other
emblems, abbreviations and names of certain intergovernmental organizations. Collective
marks must be granted protection.

(b) Industrial Designs. Industrial designs must be protected in each Contracting State, and
protection may not be forfeited on the ground that articles incorporating the design are not
manufactured in that State.

(c) Trade Names. Protection must be granted to trade names in each Contracting State
without there being an obligation to file or register the names.

(e) Indications of Source. Measures must be taken by each Contracting State against direct
or indirect use of a false indication of the source of goods or the identity of their producer,
manufacturer or trader.

(f) Unfair competition. Each Contracting State must provide for effective protection against
unfair competition.

The Paris Union, established by the Convention, has an Assembly and an Executive
Committee. Every State that is a member of the Union and has adhered to at least the
administrative and final provisions of the Stockholm Act (1967) is a member of the
Assembly. The members of the Executive Committee are elected from among the members
of the Union, except for Switzerland,
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which is a member ex officio. The establishment of the biennial program and budget of the
WIPO Secretariat – as far as the Paris Union is concerned – is the task of its Assembly.

The Paris Convention, concluded in 1883, was revised at Brussels in 1900, at Washington in
1911, at The Hague in 1925, at London in 1934, at Lisbon in 1958 and at Stockholm in 1967,
and was amended in 1979. The Convention is open to all States. Instruments of ratification
or accession must be deposited with the Director General of WIPO.

b) Berne Convention for the Protection of Literary and Artistic Works (1886)

The Berne Convention deals with the protection of works and the rights of their authors. It is
based on three basic principles and contains a series of provisions determining the minimum
protection to be granted, as well as special provisions available to developing countries that
want to make use of them.

The three basic principles are the following:

(a) Works originating in one of the Contracting States (that is, works the author of
whichis a national of such a State or works first published in such a State) must be given
the same protection in each of the other Contracting States as the latter grants to the
works of its own nationals (principle of "national treatment")
(b) Protection must not be conditional upon compliance with any formality (principle
of "automatic" protection)
(c) Protection is independent of the existence of protection in the country of origin of
the work (principle of "independence" of protection). If, however, a Contracting State
provides for a longer term of protection than the minimum prescribed by the
Convention and the work ceases to be protected in the country of origin, protection
may be denied once protection in the country of origin ceases.

The minimum standards of protection relate to the works and rights to be protected,
and tothe duration of protection:

(a) As to works, protection must include "every production in the literary, scientific and
artistic domain, whatever the mode or form of its expression" (Article 2(1) of the
Convention).
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(b) Subject to certain allowed reservations, limitations or exceptions, the following are among
the rights that must be recognized as exclusive rights of authorization:
• the right to translate,
• the right to make adaptations and arrangements of the work,
• the right to perform in public dramatic, dramatico-musical and musical works,
• the right to recite literary works in public,
• the right to communicate to the public the performance of such works,
• the right to broadcast (with the possibility that a Contracting State may provide for a
mereright to equitable remuneration instead of a right of authorization),
• the right to make reproductions in any manner or form (with the possibility that a
Contracting State may permit, in certain special cases, reproduction without
authorization, provided that the reproduction does not conflict with the normal
exploitation of the work and does not unreasonably prejudice the legitimate interests
of the author; and the possibility that a Contracting State may provide, in the case of
sound recordings of musical works, for a right to equitable remuneration),
• the right to use the work as a basis for an audiovisual work, and the right to
reproduce, distribute, perform in public or communicate to the public that audiovisual
work.
The Convention also provides for "moral rights", that is, the right to claim authorship of the
work and the right to object to any mutilation, deformation or other modification of, or other
derogatory action in relation to, the work that would be prejudicial to the author's honor or
reputation.
(c) As to the duration of protection, the general rule is that protection must be granted until
the expiration of the 50th year after the author's death. There are, however, exceptions to
this general rule. In the case of anonymous or pseudonymous works, the term of protection
expires 50 years after the work has been lawfully made available to the public, except if the
pseudonym leaves no doubt as to the author's identity or if the author discloses his or her
identity during that period; in the latter case, the general rule applies. In the case of
audiovisual (cinematographic) works, the minimum term of protection is 50 years after
the making available of the work to the public ("release") or – failing such an event –
from the creation ofthe work. In the case of works of applied art and photographic works,
the minimum term is 25 years from the creation of the work.
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The Berne Convention allows certain limitations and exceptions on economic rights, that is,
cases in which protected works may be used without the authorization of the owner of the
copyright, and without payment of compensation. These limitations are commonly referred to
as "free uses" of protected works, and are set forth in Articles 9(2) (reproduction in certain
special cases), 10 (quotations and use of works by way of illustration for teaching purposes),
10bis (reproduction of newspaper or similar articles and use of works for the purpose of
reporting current events) and 11bis(3) (ephemeral recordings for broadcasting purposes).

The Appendix to the Paris Act of the Convention also permits developing countries to
implement non-voluntary licenses for translation and reproduction of works in certain cases,
in connection with educational activities. In these cases, the described use is allowed without
the authorizationof the right holder, subject to the payment of remuneration to be fixed by the
law.

The Berne Union has an Assembly and an Executive Committee. Every country that is a
memberof the Union and has adhered to at least the administrative and final provisions of the
Stockholm Act is a member of the Assembly. The members of the Executive Committee are
elected from among the members of the Union, except for Switzerland, which is a member ex
officio.

The establishment of the biennial program and budget of the WIPO Secretariat – as far as the
Berne Union is concerned – is the task of its Assembly.

The Berne Convention, concluded in 1886, was revised at Paris in 1896 and at Berlin in
1908, completed at Berne in 1914, revised at Rome in 1928, at Brussels in 1948, at
Stockholm in 1967and at Paris in 1971, and was amended in 1979.

The Convention is open to all States. Instruments of ratification or accession must be

deposited with the Director General of WIPO.

c) The Universal Copyright Convention ( UCC ), 1952

Adopted in 1952, the Universal Copyright Convention today stands as one of the principal
international conventions for protecting copyrights around the world. It was initiated as a
projectby the UNESCO as an alternative to the Berne Convention.
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The Berne Convention, which was first adopted in 1886, was starting to lose momentum, and
therewere several people around the world who were disagreeing with the norms of the
convention.

The adoption of the UCC was seen as an alternative multilateral copyright protection treaty
thatcounties could enter into if they happened to disagree with the Berne Convention.

Purpose of the UCC

The Universal Copyright Convention was set up as an alternative to the Berne Convention, to
meetthe following purposes:

• Ensure that more countries are part of the international copyright community
• More flexible and easier to comply with compared to the Berne Convention
• Ease in compliance for developing countries.

To approach the aim of universal membership and thus to include countries with a need for
low protections , such as developing countries ( more than in the pre-existing conventions ) ,
the USAand the Soviet Union , the contents of the 1952 Universal Copyright Convention had
to follow a relatively minimalist approach.

Features of the UCC

There are the main distinguishing features of the UCC.

• National Treatment: The UCC follows the principle of national treatment as opposed
to automatic protection. This essentially means that the contracting countries do not
have togive foreign work automatic protection if the national provisions are not being
complied with.
• The term of the Work: The UCC gives protection for original literary, artistic and
scientific works. A copyright notice is to be placed alongside the work to give
reasonable notice ofthe copyright claim. Under the provisions of the UCC, a work is
protected for a period of the lifetime of the author and 25 years after the death of the
author.
• Minimum Rights: Under the provisions of the UCC, the contracting countries have to
provide a set of ‘minimum rights’ to the rightful owner of the work, as long as they do
not create a conflict with ‘the spirit’ of the convention.
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Although the UCC may be more favorable to developing countries that have not yet a highly
developed infrastructure or cultural industry – and it was indeed the UCC's purpose to enable
in particular countries with a low level of development to become part of the international
copyright community – it is rather unlikely that they would denounce the BC, the
WTO/TRIPS Agreement or even the WCT, particularly because many countries have an
interest in being part at least in theWTO be it for other reasons than intellectual property.

Often, they have to provide for a higher level of protection under bilateral treaties anyway. In
other words, even in the current situation where it seems that many countries would like to
be under lower level obligations in the field of international copyright, it may not be
expected that they would denounce the BC, the TRIPS Agreement and the WCT respectively
and thereby allow theapplication of the UCC.

Both the Universal Copyright Convention and the Berne Convention regularly undergo
revisions to be relevant with the changing time and standards, especially to keep pace with the
development and technological advancements. Treaties are usually revised after all the
contracting states agreeon the changes.

d) Madrid Agreement and Madrid Protocol

The Madrid Protocol is an international treaty, administered by the International Bureau of

the World Intellectual Property Organization (WIPO), that provides a cost-effective single
application system for obtaining and maintaining trademark registrations in up to 122 member
countries.

The Madrid Protocol can be used to obtain international registration for a trademark that has
already been applied for or registered in the Applicant’s home country (also known as
country oforigin), so long as the country is also a member of the Madrid Protocol.

Moreover, once the trademark is granted in designated countries, a trademark owner only needs
to file a single request with WIPO to renew the international registration when required, which
would take effect in all designated member countries. Similarly, fulfilling other formalities
such as recording assignments, licenses, securities, mergers and changes of name and/or address
etc. only require a single request for each of them. This further simplifies maintaining and
managing trademarks in several countries and results in considerable cost savings.
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Madrid Protocol Filing

Under the Madrid Protocol, applications for international registrations must be filed with the
Applicant’s home country’s trademark office and must indicate the prior filed home country
application or registration upon which the international application is based. For example, to
register American trademarks, the Applicant should register first in the United States, then
the process may continue for other nations through the Madrid Protocols. The application can
be filed in either English, French or Spanish.

• When filing the international application, the Applicant is required to designate at least
one member country of the Madrid Protocol other than the home country. The home
trademark office confirms the details of the Applicant’s home application or
registration and then forwards the application to WIPO. WIPO checks that the basic
filing requirements have been fulfilled, and if so, enters the mark in the international
register granting internationalregistration.
• However, it is important to note that grant of international registration in itself does
not provide trademark protection in the designated countries/regions. The scope of
protectionof the trademark will be evaluated by the designated National IP Offices.
• After the mark has been entered on the international register, WIPO then sends
copies of the international application to the trademark offices in the designated
countries for examination and registration of the mark.
• The designated member countries have a period of 12 or 18 months (which is
extendableif the trademark is opposed by a third party during examination) to either
grant the trademark issuing a Statement of Grant of Protection or reject the
application.
• Depending on the country, grounds for rejecting the trademark application include 1)
conflicts with existing rights of a third party, 2) lack of distinctiveness of the mark, 3)
mark is descriptive or generic, and 4) mark is likely to cause confusion. The
Applicant can respond to the opposition or rejection of the trademark application in a
designated member country according to the trademark laws of the country.
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Basic points of difference between Madrid Protocol and Madrid agreement are:
Basis of Difference: Madrid Agreement Madrid Protocol

Basic of International For registering a trademark Under the Protocol, the

Registration internationally under that of applicant may base its
the Madrid Agreement, one is application for international
required to first obtain registration on an application
registration in his home filed with the home country's
country. trademark office or a
registration granted by that
office.
Filing Language Under the Agreement the In case of the Protocol,
working language is French. applications can be filed in
All applications shall be filed English, French or Spanish.
in French only.
Remedy to Central Attack Under the Madrid Agreement However, under the Protocol.
"central attack" may occur when an international
during the first five years of an registration is cancelled
international registration as during its first five years due
follows: Where the basic to failure of the basic
application or basic application or basic
registration has its scope of registration, the international
protection limited or registration may be
eliminated during that time, transformed into national (or
under the Agreement the regional) applications in each
international extension of the Contracting Parties in
registration were similarly which the international
limited or eliminated and there registration had effect
was no recourse for the owner maintaining the priority date
of the international of the international
registration. registration.
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The Madrid Agreement's This possibility does not exist

"central attack” provisions are under the Madrid Agreement
considered unfair by many
trademark owners because
many of the grounds available
to reject oppose or move to
cancel a domestic registration
are not recognized in other
countries.
Time limit for refusal period The time period for a This time span for refusal was
contracting country to refuse increased to 18 months in that
the protection is 12 months of the Madrid Protocol.
under the Agreement. This is
considered unfair as the
expenses and process of
registration is very lengthy.
Validity Protection under the Protection under the Protocol
Agreement lasts for 20 years lasts for 10 years before being
before being renewed. renewed.

e) The General Agreement on Tariffs and Trade (GATT)

The General Agreement on Tariffs and Trade (GATT) was a free trade agreement
between 23 countries that eliminated tariffs and increased international trade. As the first
worldwide multilateral free trade agreement, GATT governed a significant portion of
international tradebetween January 1, 1948 and January 1, 1995. The agreement ended
when it was replaced bythe more robust World Trade Organization (WTO).

• The General Agreement on Tariffs and Trade was a treaty created after World
War IIto help the economies of countries affected by the war.
• This agreement would pave the way to the creation of the World Trade
Organization.
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• With countries becoming increasingly integrated economically, war between

member countries dropped.
• GATT did have drawbacks when it came to the amount of autonomy some
countriesgave up, with global goals prioritized over local ones.

Article I and Article III of the GATT 1994, deals with Most Favoured Nation Principle and
National Treatment Principle respectively. With further development in the scope of these
principles, now these principles not only deal with the trade in goods practices rather now
they also govern the trade in services and trade in IPR.

The MFN Principle

A most-favoured-nation (MFN) principle explains the concept where a country has to grant
someprivileges related in a trade agreement to any of the member nations of the World Trade
Organization. The concept not only ends here, but the main principle of the MFN principle is
also that if any privileges are granted to any member nation by another member nation of
the WTO then the same privilege of like products has to be given to all the other member
nations of the WTO. The main objective of these principles is to promote trade and provide
equal opportunity to get the best benefits of any member nation’s resources.

Illustration- If India grants special treatment to Germany, that goods imported especially
related to motor vehicle industry from Germany to India will have no import duty of trade tariff
and in the manner, Germany excludes India from trade tariffs and import duty about thee the
goods imported to Germany from India. Then according to the MFN principles, both
Germany & India are violating the MFN principles of GATT, 1994 and both the country has to
avail the same benefit or privilege to all the member nations of the GATT 1994. Which means
India should privilege every member nation in excluding trade tariff of goods related to motor
vehicles and the same privileges have to be granted by Germany to all the other member
nations of GATT 1994.

The National Treatment Principle

The NTP prohibits any of the member nations from favouring or giving any advantages or
raising any benefits to their domestic products/ goods over imported products of other
member nations. Article III of GATT 1994 specifically deals with NTP and explains the
secondary need of NTP after MFN principles to fight against any discrimination of imported
products. NTP has been well
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defined under paragraph 1, 2 & 4 of Article III and 2nd sentence of Article III. NTP deals with
the products of any member imported by any other member shall not be treated less
favourable than that to like products of national or domestic product in respect of all laws,
regulations, requirements affecting their internal sale etc., which means the domestic country
should not make any rules or law which protects its domestic products over imported
products. So reading NTP with MFN gives a brief difference between both of the principles that
one deals with protectionism and MFN deals with favourable treatment to all nations.

Illustration- Let’s assume that India is manufacturing a certain mobile phone for Rs. 10k and
on the other hand China is manufacturing a certain mobile phone with the same
configurations and quality for just Rs.7k. In that case, being both the countries a member
nation of GATT/ WTO, India can’t impose any restrictions on exporting Chinese Mobile
phones from China to India, but India may impose certain heavy taxes to protect its domestic
market. To protect such measures the drafter of GATT/ WTO introduced NTP which prohibit
any member nation from doing such activities.

Now it can be assumed that the main purpose of Article III of the GATT 1994 was to
prohibit orlimit the use of trade-restricting by requiring non-discriminatory treatment between
imported anddomestic goods.

f) The International Union for the Protection of New Varieties of Plants (UPOV),
1961

The International Union for the Protection of New Varieties of Plants (UPOV) is an
intergovernmental organization that was established in 1961 and is based in Geneva,
Switzerland. The purpose of UPOV is to provide and promote an effective system of plant
variety protection, with the aim of encouraging the development of new varieties of plants, for
the benefit of society.

The UPOV Convention provides a consistent and harmonized intellectual property

framework atthe international level, for which countries and intergovernmental organizations
can adhere to. In order to become a member, a country or intergovernmental organization
must have a domestic Plant Breeders’ Rights (PBR) or Plant Variety Protection (PVP) law
that meets the minimum requirements of the UPOV Convention. At present, (2014) there
are 70 countries and 2 inter-
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governmental organizations that are members of UPOV, but this changes over time as more
countries become signatories
It is important to provide a mechanism for protecting plant varieties, because plant breeding
is a time consuming, expensive, and resource intensive activity. However, plants can easily
and quickly be reproduced, sometimes without permission of the breeder or without fairly
compensating him/her for their investment and effort. Successful breeding requires great skill
and knowledge, as well as, specialized equipment (for example, greenhouses, growth
chambers and laboratories).

Often it can take many years to bred a successful plant variety (7 to 15 years depending on
the species), but not all new varieties will be successfully adopted in the marketplace. As
such, a breeder is taking a risk when developing a new variety, but if successful, the benefits
to farmers and society can be enormous. A UPOV based PBR/PVP law, makes it possible for
a breeder to protect his/her variety in the marketplace and receive a return on his/her
investment, as well as, encourage reinvestment plant breeding.

The breeder’s “right” means that authorization is required from the breeder to propagate the
variety for commercial purposes. The UPOV Convention specifies the acts that require the
breeder’s authorization in respect of the use propagating material (e.g. seed) of a protected
variety and, under certain conditions, in respect of the harvested material (e.g. grain or fruit).
UPOV members may also decide to extend protection to products made directly from
harvested material, under certainconditions.
For a plant variety to be eligible for protection there are some basic criteria that the breeder
must meet. These four fundamental criteria are applied consistently across all UPOV member
countries and organizations. According to the 1991 Act of the UPOV Convention, the
breeder’s right shallbe granted where the variety is:
• Newness or novelty: In order for a variety to be considered “new”, the propagating or
harvested material of that variety cannot have been sold in the country of filing for over 1
year. Additionally, the propagating or harvested material of that variety cannot have been
sold in another UPOV member country for over 6 years in the case of trees and vines, and
4 years for all other plant species. A specified time limit is set for seeking protection in
various UPOV
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member countries so the breeder does not prolong the length of time he/she can benefit
from protection beyond a reasonable time frame by delaying protection in various
countries. Also,the difference in set time frames, 4 years for all plant species except trees
and vines which are 6 years, acknowledges the slower growth and multiplication of these
types of plants.

• Distinctness: Another condition of protection is that the applicant must demonstrate that
the variety is “distinct”, meaning it must be clearly distinguishable from all other
varieties of common knowledge at the time of filing the application. In order to establish
“distinctness” ofa plant variety it is usually necessary to carry out various tests whereby
the candidate variety seeking protection is grown along with other similar reference
varieties for comparative purposes. In order to establish that the candidate variety is in fact
“distinct” it must differ from the other varieties in at least one “clearly distinguishable”
characteristic. The characteristic(s) of interest used to establish distinctness can be either
qualitative (observable) or quantitative (measurable) in nature. It is important to emphasize,
it must be shown that the candidate variety differs from other varieties by at least one
clearly distinguishable characteristic in order to meet the criteria of being “distinct”. The
UPOV Office provides guidance on how “distinctiveness” can be assessed based on
phenotypic/morphological characteristics for various plant species and crop kinds:

• Uniformity: The plant variety seeking protection must also be deemed to be “uniform”
(or sufficiently uniform in its relevant characteristics) in order to be eligible for
protection. This means that propagating material of the variety must be homogeneous in
appearance, and if there is variation in the expression of characteristics or off-types, the
occurrences must be within acceptable tolerances/standards for that particular species or
crop kind. The UPOV Office provides guidance on the acceptable tolerances for
variances in the expression of characteristics or presence of off-types, based on the
specific plant species or crop kind beingassessed.

• Stability: The plant variety must remain stable in its relevant characteristics so that it
remainsunchanged after repeated cycles of propagation.
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g) TRIPS and TRIMS

AgreementTrade Related Intellectual Property Rights

(TRIPs)

• TRIPs provide minimum standards in the form of common set of rules for the
protection
of intellectual property globally under WTO system.
• The TRIPs agreement gives set of provisions deals with domestic procedures and
remediesfor the enforcement of intellectual property rights.
• Member countries have to prepare necessary national laws to implement the
TRIPsprovisions.
• TRIPs cover eight areas for IPRs legislation including patent, copyright and
geographicalindications.
• The TRIPs regime

A breakthrough of the GATT signed in 1994 was that it brought TRIPs as a common standard
for the protection of intellectual property globally. Implication of TRIPs is that member
countries should design domestic intellectual property legislations on the basis of the TRIPs
provisions.

TRIPs as WTO’s IPR regime

TRIPs is considered as a major achievement of the Uruguay Round as an international trade

agreement. At the trade negotiations, the developed countries were succeeded in linking
intellectual property rights with trade. Until then, the World Intellectual Property
Organisation (WIPO) was the exclusive international institution dealing with intellectual
property. With TRIPs, the WTO also emerged as the institution for the protection and
promotion of intellectual propertyglobally.

What TRIPs instructs to member countries?

As per the TRIPs provisions, the member countries are required to prepare the necessary
legal framework spelling out the scope and standards of protection for rights in regard to
intellectual property. Or in other words, the member countries have to adopt TRIPs
provisions in their domestic intellectual property legislations like Patent Act, Copyright Act
etc.
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WTO advocate necessary amendments to national IPR laws to accommodate the

TRIPs provisions. TRIPs agreement is an effort to bring national legislations under common
international rules. An important feature of TRIPs is that it is more specific and hard on
‘patents’ -the most important form of intellectual property. In the case of plant rights,
geographical indications etc., members can adopt a sui-generis (own designed) IPR regime.

WTO gives following areas of intellectual property – copyright and related rights,
trademarks, protection of undisclosed information (trade secrets), geographical indications,
industrial designs, integrated circuits, patents, and control of anti-competitive practices in
contractual licences. Signing TRIPs means countries have to modify their Patent Act, Copy
Right Act, Trade Mark Act etc., in accordance with the provisions of the TRIPs. In India, the
government has made a major amendment to the 1970 Patent Act in 2005 to accommodate
the TRIPs provisions. In 2010, the Copyright Act was amended and enforced from 2012. Other
legislations with respect to Industrial designs also have been made.

The rationale for WTO’s effort to bring an intellectual property protection regime
globally

The WTO supports IPR regime under its leadership on the ground that intellectual property
is a trade related asset. It asserts that an international attempt is needed because of the wide
differences existing in the intellectual property regime across the world.

Trade Related Investment Measures (TRIMs)

It is an agreement on Trade-Related Investment Measures which specifies the rules that are
applicable to the domestic regulations a country applies to foreign investors. The agreement
is applicable to all members of the World Trade Organization (WTO). The agreement was
formalized in 1994 and came into effect in 1995.

The TRIMs Agreement prohibits certain trade-related investment measures that violate the
general elimination of quantitative restrictions and national treatment requirements of GATT.
It has put restrictions on some of the policies like local content requirements; trade balancing
rules that have been used to both protect the interests of domestic industries. It refers to
certain condition or restrictions imposed by a Government in respect of foreign investment in
the country. The TRIM text provides that the foreign capital would not be discriminated by
the member Governments.
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Features of TRIMs

• Abolition of restriction imposed on foreign capital

• Offering equal rights to the foreign investor on par with the domestic investor
• No restrictions on any area of investment
• No limitation or ceiling on the quantum of foreign investment
• Granting of permission of without restrictions to import raw material and other
components
• No force on the foreign investors to use the total products and or materials
• Export of the part of the final product will not be mandatory
• Restriction on repatriation of dividend interest and royalty will be removed
• Phased manufacturing programming will be introduced to increase the domestic
content ofmanufacturer.

h) World Trade Organization (WTO)

The WTO's origins began with trade negotiations after World War II. In 1948, the General
Agreement on Tariffs and Trade focused on reducing tariffs, anti-dumping, and non-tariff
measures. From 1986 to 1994, the Uruguay round of negotiations led to the formal creation of
the WTO.

In 1997, the WTO brokered agreements promoting trade in telecommunications services

among 69 countries. It also removed tariffs on information technology products among 40
members. It improved trade of banking, insurance, securities, and financial information
among 70 countries.

The Doha round began in 2000. It focused on improving trade in agriculture and services and
expanded to include emerging mark, including countries at the fourth WTO Ministerial
Conference in Doha, Qatar, in November 2001. Unfortunately, the Doha talks collapsed in
Cancun, Mexico, in 2003. A second attempt also failed in 2008 at Geneva, Switzerland.

The World Trade Organization is a global membership group that promotes and manages
free trade. It does this in three ways. First, it administers existing multilateral trade
agreements. Every member receives Most Favored Nation Trading Status. That means they
automatically receive lowered tariffs for their exports.
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Second, it settles trade disputes. Most conflicts occur when one member accuses another of
dumping. That's when it exports goods at a lower price than it costs to produce it. The WTO
staff investigates, and if a violation has occurred, the WTO will levy sanctions. Third, it
manages ongoing negotiations for new trade agreements. The biggest would have been the
Doha round in 2006. That would have eased trade among all members. It emphasized
expanding growth for developing countries. To sum up:

• The World Trade Organization is a global organization that manages commerce

betweenits member nations.
• The WTO has 164 member countries and 23 observer governments.
• The WTO’s primary function is to manage the smooth flow of global trade by
ensuring countries abide by their signed trade agreements. As such, it also investigates
and resolves trade disputes.
• The WTO was born out of GATT, an international trade agreement signed by 23
countriesin 1947.

INTERNATIONAL BODIES CONCERNING INTELLECTUAL PROPERTY LAWS

a) World Intellectual Property Organization (WIPO)

The World Intellectual Property Organization (WIPO) is a United Nations (U.N.) agency
charged with protecting intellectual property (IP) through an international system that promotes
and sustains creativity and innovation and helps develop international economies.

WIPO is dedicated to protecting IP by working with worldwide organizations. It enlists the

cooperation of member states through the nine foundational goals of its Strategic Plan.
Strategiesadopted by member states and organizations include:

• Developing a global IP infrastructure

• Building international respect for IP
• Supporting structures used to facilitate financial and administrative functions
• Implementing global policy issues related to IP

WIPO was established in 1967 in accordance with a mandate issued by the U.N. Primarily
developed to focus on the preservation and meaningful use of IP, WIPO enlists the cooperation
of member states and U.N. organizations to foster economic development and other activities.
Since 1967, organizations and member states have integrated and implemented goals related
to the
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to enlist a Strategic Plan for WIPO to be released on or after 2015.

The International Bureau of WIPO in Geneva, Switzerland employs staff from more than 90
countries. WIPO employees include IP law and IT experts and public policy and economy
specialists that are aligned with job duties that promote IP usage for strong economic
development between U.N. member states. The International Bureau's divisions are
responsible for arranging member state meetings, ensuring proper implementation of WIPO
standards, developing and implementing WIPO programs and providing IP expertise to
achieve WIPO strategies.

WIPO's activities including hosting forums to discuss and shape international IP rules and
policies, providing global services that register and protect IP in different countries, resolving
transboundary IP disputes, helping connect IP systems through uniform standards and
infrastructure, and serving as a general reference database on all IP matters; this includes
providing reports and statistics on the state of IP protection or innovation both globally and in
specific countries. WIPO also works with governments, nongovernmental organizations
(NGOs), and individuals to utilize IP for socioeconomic development.

WIPO administers 26 international treaties that concern a wide variety of IP issues, ranging
fromthe protection of broadcasts to establishing international patent classification. It is
governed by the General Assembly and the Coordination Committee, which together set
policy and serve as the main decision making bodies.

b) The United Nations Educational, Scientific and Cultural Organization

(UNESCO) The United Nations Educational, Scientific, Cultural Organization was founded
after World War II on 16 November 1945 to contribute to peace and security. Collaboration
among nations through
education, science and culture remains a cornerstone of a peaceful world order. The founders
of

UNESCO believed that the rule of law, respect for human rights, and freedom of expression
would be strengthened through international cooperation. UNESCO is headquartered in Paris and
has 190 member states.

Americans were an important part of UNESCO's creation. Author Archibald MacLeish, the
first

U.S. member of UNESCO's governing board, wrote the preamble to its 1945 Constitution.
The opening lines captured the spirit of its founders: "Since wars begin in the minds of men, it
is
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in the minds of men that the defenses of peace must be constructed."

The United States joined UNESCO at its founding but later withdrew in 1984 because of a
growing disparity between U.S. foreign policy and UNESCO goals. After an almost twenty-
year absence from the organization, the United States rejoined the organization in October
2003 at the initiative of President Bush in an effort to express America's firm commitment to
uphold and promote human rights, tolerance and learning worldwide.

UNESCO's Work in Education: Education is a significant UNESCO focus, both in terms of

activities and funding. UNESCO activities approach education as necessary to democratic
societies, as a lifelong process, and as a process requiring high quality as well as innovative
approaches. The organization fosters dialogue between its 190 member countries on how to
improve access, delivery, standards, innovations, and quality assurance at all levels from
basic literacy to higher and continuing education. Among the most important UNESCO
education programs is Education for All, a global initiative to promote literacy and basic
education without gender bias and to ensure progress through national plans and monitoring
mechanisms. Other important UNESCO education activities include the UNESCO Literacy
Decade, Education for Sustainable Development, Higher Education Mobility and
Recognition, education to combat HIV/AIDS, and the UNESCO Statistics Bureau.
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CONTENTS
MODULE 2: PATENTS
1.
Introduction: Concept of Patents
a) Nature, Origin, Need and Development of Patents
b) Patentability Standards
i) Novelty
ii) Non-obviousness
iii) Utility
c) Novartis v. Union of India & Others (2013): Case Study
2.
Patent Prosecution:
Process of Obtaining Patents
a) Patent Application
b) Pre and Post Grant Opposition
c) Patent Specification
d) Patent Revocation
Rights and Obligations:
a) Rights and obligations of a Patentee
b) Transfer of Patents Right
c) Powers, Functions and Jurisdiction of the Controller of Patent
3.
Patent Infringement and Remedies
a) Direct and Indirect (or Contributory) Infringement
b) Doctrine of Equivalents
c) Doctrine of Colorable Variation
d) Defenses to Patent infringement case
d) Remedies- Civil and Criminal

INTRODUCTION: CONCEPT OF PATENTS

a) Nature, Origin, Need and Development of Patents

The creative work of the human mind is protected through several measures and the main
motivation for the same is that such protection is a definite measure of encouragement for
the creative activity. Several forms of protection of the creative activity have come about
including those which are of particular interest in the industrial development. Patents being
one of them. Generally speaking, patent is a monopoly grant and it enables the inventor to
control the output
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and within the limits set by demand, the price of the patented products. Underlying economic
and commercial justification for the patent system is that it acts as a stimulus to investment in
the Industrial innovation. Innovative technology leads to the maintenance of and increase in
nations stock of valuable, tradable and industrial assets.

The grant of first patent can be traced as far back as 500 B.C. It was the city dominated by
gourmands, and perhaps the first, to grant what we now-a-days call patent right to promote
culinary art. For it conferred exclusive rights of sale to any confectioner who first invented a
delicious dish. As the practice was extended to other Greek cities and to other crafts and
commodities, it acquired a name “monopoly”, a Greek Portmanteau word from mono (alone)
and polein (sale).

Evidences of grant to private individuals by kings and rulers of exclusive property rights to
inventors dates back to the 14th Century, but their purpose varied throughout the history.
History shows that in 15th Century in Venice there had been systematic use of monopoly
privileges for inventors for the encouragement of invention. Utility and novelty of the
invention were the important considerations for granting a patent privilege. The inventors
were also required to put their invention in commercial use within a specified period. In 16th
Century the German princes awarded inventors of new arts and machines and also took into
consideration the utility and novelty of inventions. Early laws in American colonies served
primarily to encourage foreign manufacturers to establish new industries in the colonies by
providing them protected domestic markets.

By the late 15th Century, the English monarchy increasingly started using monopoly
privilege toreward court favorites, to secure loyalty and to secure control over the industry but
these privileges were not used to encourage inventions. In 1623, the English Parliament
adopted a Statute of monopolies which recognized the inventors patent as a justifiable
monopoly to be distinguished from other monopoly privileges. The Statute outlawed the
awarding of monopoly privileges except for first and true inventor of a new manufacture.

In England during the 16th and 17th Century, the inventor’s patent of monopoly had become
of great national importance. From the mid-seventeenth Century through the mid-nineteenth
Century, the laws recognizing the patent monopoly spread throughout Europe and North
America, but these privileges were not granted without the opposition.
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The origin of the Indian Patent System could be traced to the Act of 1856 granting exclusive
privileges to inventors. The patent regime at the time of Independence was governed by the
Patents and Designs Act, 1911, which had provisions both for product and process patents. It
was, however, generally felt that the patent law had done little good to the people of the
country. The way the Act was designed benefited foreigners far more than Indians. It did not
help at all in the promotion of scientific research and industrialization in the country, and it
curbed the innovativeness and inventiveness of Indians.

Shortly after Independence, therefore, in 1949, a committee was constituted under the
chairmanship of Justice (Dr.) Bakshi Tek Chand, a retired judge of the Lahore High Court, to
undertake a comprehensive review of the working of the 1911 Act. The Committee
submitted its interim report on August 4, 1949 and the final report in1950 making
recommendations for prevention of misuse or abuse of patent rights in India. It also observed
that the Patent Act shouldcontain a clear indication that food and medicine and surgical and
curative devices were to be made available to the public at the cheapest price commensurate
with giving reasonable compensation to the patentee. Based on the committee’s
recommendations, the 1911 Act was amended in 1950 (by Act XXXII of 1950) in relation to
working of inventions, including compulsory licensing and revocation of patents. In 1952, a
further amendment was made (by Act LXX of 1952) to provide for compulsory license in
respect of food and medicines, insecticide, germicide or fungicide, and a process for
producing substance or any invention relating to surgical or curative devices. The committee’s
recommendation prompted the Government to introduce a bill (Bill no. 59 of 1953) in
Parliament, but the bill was not pressed and it was allowed to lapse. In 1957, another
committee came to be appointed under the chairmanship of Justice N. Rajagopala Ayyangar
to take a fresh look at the law of patent and to completely revamp and recast it to best sub
serve the contemporary needs of the country. Justice Ayyangar’s report specially discussed
(a) Patents for chemical inventions; and

(b) patents for inventions relating to food and medicine.

Justice Ayyangar submitted a comprehensive Report on Patent Law Revision in September

1959 and the new law of patent, namely, the Patents Act, 1970, came to be enacted mainly
based on therecommendations of the report, and came into force on April 20, 1972 replacing
the Patents and Designs Act, 1911. However, the 1911 Act continued to be applicable to
designs.
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b) Patentability Standards

The Patents Act, 1970 does not defines what a patent is, instead it just says that a patent
means apatent for any invention granted under the Act, which does not gives a clear picture
about the meaning of the term Patent.

The term Patent as commonly understood by us means an exclusive right granted by the
appropriate government to the person who had made an invention, to use that invention as
well assell it for a fixed period of time.

The above mentioned exclusive right to use as well as to sell the invention is granted to such
inventor, so as to fulfill the objective of enactment of the Patents Act, 1970 which is also
observedby the Hon’ble Supreme Court in the case of Bishwanath Prasad Radhey Shyam v.
Hindustan Metal Industries, i.e to encourage Scientific research, new technology and industrial
progress. The grant of such exclusive right to the inventor for a limited period of time to use
and sell his invention for monetary gain encourages the common masses to make new
inventions for the benefit of the country and the society.

The grant of such a patent to the inventor of any invention is only for a fixed or limited
period of time and thus after the expiry of such period, the patented invention passes on to the
public domain. Now ,since a patent gives an exclusive right to the person to do whatever he
wants to do with his invention for his own benefit to the exclusion of others for a particular
period of time ,therefore it is necessary to have a particular criteria to judge whether a
particular invention by any person should be patented or not .Therefore ,it is necessary to
observe that all inventions are not patentable and thus an invention can only be patented when
it fulfills the criteria for patentability as per the law.

i) Novelty: Of all of the conditions of patentability, novelty is perhaps the most important
and is a very common stumbling block during the prosecution process. Novelty requires that
the invention be different from the prior art, which is broad and includes all previous
knowledge, use, patents, and publications in the field of the invention at issue. There are
several reasons why we require novelty for a patent, not least of which is history; some of
the first patents ever granted in England were essentially state-sanctioned monopolies in
certain established fields of practice that were available for sale to the highest bidder.
They could also be granted by royal prerogative; if the king liked a particular stained glass
maker, he could grant a patent on the art of stained glass to that artist, meaning that no one else
in England would be able to produce stained glass unless they licensed the patent. This system
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did not encourage productivity, but stifled it. The monopoly system was eventually abolished,
and the framers of the Constitution similarly wanted to avoid it by allowing patents only for new
discoveries and not established arts. Thus, the novelty requirement fulfills the constitutional
objective of encouraging productivity and innovation by limiting the grant of patents to new
inventions.

ii) Non-obviousness: The non-obviousness requirement ensures that an invention can be patented
only if the differences between the particular invention and the prior art are inventive and not
those that might have occurred to anyone of ordinary skill in the art. For example, assume that
Inventor A has invented a blender with 10 speeds. Inventor B would not be allowed a patent
simply by making the same blender with 12 speeds, because that improvement is not really
inventive; anyone could come up with the idea to add speeds. Similarly, Gene Quinn from IP
Watchdog explains it this way: Assume that invention X and invention Y are already in
existence. An inventor probably could not obtain a patent on invention X+Y if such a
combination likely would be obvious to one skilled in the X and Y fields. A useful test for
obviousness is to ask whether a person of ordinaryskill in the art would have found it obvious
to make the claimed invention knowing all of the prior art references in that field. Non-
obviousness, then, is a moving target and depends on the level of skill required in the art of
the invention at the time it was made.

iii) Utility: Utility requires that the invention be useful. This requirement is rather
straightforward, and is designed to satisfy the constitutional objective that the government
support the “useful arts.”[iii] The USPTO interprets the utility requirement broadly, meaning
that an invention is useful basically if it serves the purpose for which it is designed. This seems
like a non-requirement, but its breadth is helpful because the usefulness of a particular invention
is often not fully realized until many years after it is patented. Although the utility requirement
is a low hurdle, it is not to be ignored. Requiring an invention to be useful necessarily
implies that it must be useful for a particular purpose. For example, a random configuration
of hoses and valves cannot be said to be useful unless it is directed toward the fulfillment of
some objective. Since the USPTO is not inclined to guess what that objective is, the inventor
must clearly specify it in the patent application.
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c) Novartis v. Union of India & Others (2013): Case Study

Facts of the case:

The Appellant in the case, Novartis AG, filed an application for patent in 1998 for a
crystalline salt form of Imatinib and its use in cancer treatment. It specifically claimed the
methanesulfonic acid addition salt form of the compound, Imatinib, called as Imatinib Mesylate
(commonly referred to as Glivac or Glivec), in its beta crystalline form, which is non-needle
shaped, having better flow properties, thus better processible, less hygroscopic and more
thermodynamically stable, thus better storable than its needle shaped, alpha crystalline form,
characterized by the differences in the melting points and the X-ray diffraction diagrams. It also
claimed that the Beta crystalline form of Imatinib Mesylate has higher bio-availability when
compared to the free base form of Imatinib by thirty percent.

The application was rejected by the patent office and later by the Intellectual Property
Appellate Board on the ground that the compound did not meet the requirements of Section
3(d), which excludes new forms of a known substance with known efficacy from the scope
of patentability unless enhanced efficacy is shown. The Appellate Board relied on the decision
of the Madras High court, which held that enhanced efficacy means enhanced therapeutic effect
and stated that the compound in question lacked efficacy and therefore fell within the scope
of Section 3(d). It however agreed that the compound satisfied the other patentability
requirements such as industrial applicability, novelty and inventive step. Novartis challenged
the decision of the Appellate Board before the Supreme Court of India, which led to this
decision.

Analysis

Reiterating its prior decisions stating that the text of a statute must be seen in the light of its
context, which is understood from internal and external sources, the Supreme Court reviewed
the history of the patent law in India from 1911 to 2005, with specific emphasis on Agreement
on TRIPs and changes brought about for its compliance. Stating that patent systems are not
created for inventors but in the interests of national economy, the Court pointed out how the
patent law in India impacted the pharmaceutical industry. Noting that the growth of Indian
pharmaceutical and chemical industry was propelled by the 1970 Patents Act, which enabled
effective health care in India and many other countries, the Supreme Court observed that the
changes in patent provisions to comply
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with TRIPs agreement were brought about bearing in mind the context of health care as served
by the Indian pharmaceutical companies. Though the Court cited discussions about Section
3(d) in the parliament and its perceived role in safeguarding access to health, it did not delve
into the roleof public health and public interest in interpreting Section 3(d).

Talking about patentability, the Court pointed out that an invention would be patentable only
if itsatisfies the twin tests of invention, which tests novelty, industrial applicability and
inventive step, and patentability, which is provided under sections 3 and 4. Though certain
products or processesare inventions in the general sense, the Court observed that they may not
be eligible inventions under the patent law. Discussing the backdrop of Section 3(d), the
Court pointed out that the section primarily deals with pharmaceutical and chemical inventions
and that its objective was to prevent abuse of product patents in medicines. According to the
Court, the amended portion of section 3(d) clearly sets up a second tier of qualifying standards
for chemical substances/pharmaceutical products in order to leave the door open for true and
genuine inventions but, at the same time, checks any attempt at repetitive patenting or extension
of the patent term on spurious grounds.

With respect to Imatinib Mesylate, pre-cursor of the invention in question, the Supreme Court
after analyzing the scope of a prior patent filed by the Appellant on Imatinib, infringement
action initiated by the Appellant against NATCO, an Indian pharma company, and articles
published by the inventor, came to the conclusion that Imatinib Mesylate was not new and
lacked inventive step. It pointed out that the salt form was covered in the US Patent, which
claimed Imatinib and all itspharmaceutically acceptable salt forms. While coming to the said
conclusion, the Court pointed out that the scope of claims in a patent cannot go beyond the
disclosure and teaching in the patent. It stressed that it did not want the law of patents to
develop on lines where there may be a vast gapbetween the coverage and the disclosure under
the patent; where the scope of the patent is determined not on the intrinsic worth of the
invention but by the artful drafting of its claims by skillful lawyers, and where patents are
traded as a commodity not for production and marketing of the patented products but to search
for someone who may be sued for infringement of the patent.

Having established that Imatinib Mesylate formed part of prior disclosure, the Supreme
Court compared its efficacy with that of Beta Crystalline form of Imatinib Mesylate, which
was its polymorph, for purposes of Section 3(d). Stating that efficacy under Section 3(d)
for
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pharmaceutical substances, meant therapeutic efficacy, the Court reviewed the data with
respect to enhanced flow properties, increased thermodynamic stability, reduced
hygroscopicity and enhanced bioavailability, submitted by the Appellant, and concluded that
the Beta Crystalline form of Imatinib Mesylate did not have enhanced efficacy. The said
properties, according to the court, did not contribute towards enhancing the efficacy in
treatment of cancer when compared to the free base Imatinib or its Mesylate salt.

Discussing the meaning of efficacy, the Court stated that therapeutic efficacy of a medicine
mustbe judged strictly and narrowly. It came to this conclusion based on the fact that the text
added tosection 3(d) by the 2005 amendment, which laid down the condition of “enhancement
of the known efficacy” and the fact that the explanation required the derivative to “differ
significantly in properties with regard to efficacy”. According to the Court, not all
advantageous or beneficial properties are relevant, but only such properties that directly
relate to efficacy, which in case of a medicine, is its therapeutic efficacy. The mere change of
form with properties inherent to that form would, as per the Court, not qualify as “enhancement
of effica cy” of a known substance. As a precautionary measure with respect to interpretation
of the judgment, the Court stated at the end that Section 3(d) does not bar patent protection
for all incremental inventions of chemical and pharmaceutical substances.

Following the Supreme Court’s judgment, several patents have been granted with respect to
newforms as applicants were able to show enhancement of efficacy related to the purpose of
the invention. Section 3(d) sets higher standards for new forms based on showing of enhanced
efficacy by way of enabling data and information, which calls for a change in strategy with
respect to disclosures made in patent documents as well as timing of filings. It places higher
standards for patentability of new forms, which are to be tested by the extent of their
efficacy, and does not completely bar their patentability.
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2. PATENT PROSECUTION

Process of Obtaining Patents

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a) Patent Application

Application: An application for a patent can be filed by the true and first inventor. It can
also be filed by the assignee or legal representative of the inventor. If an application is filed
by the assignee, proof of assignment has to be submitted along with the application. The
applicant can be national of any country.

Form of Application: Every application shall be accompanied by a provisional or complete

specification. Provisional applications are generally filed at a stage where some
experimentationis required to perfect the invention.

Filing of a provisional specification allows the applicant to get an early application date.

• A Provisional Specification shall contain:

• Title,
• Written Description,
• Drawings, if necessary and
• Sample or model if required.
Priority Date

Priority date is the date of first filing allotted by the patent office to an application. If a
provisional application is followed by a complete application, the priority date shall be date
of filing of the provisional application. If an Indian application is filed after a foreign or PCT
application, the priority date shall be the date of filing of the foreign or PCT application. If an
application is divided into two applications, the priority date shall be date of filing of the
parent application.

Priority date is the date of reference used by the patent office to determine the newness of the
invention. If the claimed invention is part of public knowledge before the priority date, it will
not be eligible for a patent. Under US Law, priority date is pushed back to the date of
conception fordetermining novelty and Non-obviousness.

Place of Filing

A Patent application can be filed at any of the four patent offices in India. Patent Offices are
located at Kolkata, New Delhi, Chennai and Mumbai.

Documents to be submitted at the time of filing.

The following documents have to be submitted at the time of filing a patent application:
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• Form 1 - Application for the grant of patent.

• Form 2 - Provisional or Complete Specification.
• Form 3 - Statement and undertaking by the applicant.
• Form 5 - Declaration as to inventorship.
• Form 26 - Authorization of patent agent or any other person.

Priority document details have to be filed for a Convention application.

Publication

A patent application will be published on expiry of eighteen months after the priority date. It
canbe published earlier, if such a request is made by the applicant. The application will not
be published if directions are given for secrecy, until the term of those directions expire. It
will also not be published if the application is withdrawn three months before publication
date. On publication, specification including drawings and deposits shall be open for public
inspection. The rights of the patentee start from the date of publication but they cannot be
enforced until afterpatent grant.

Examination

→ Request for Examination: The process of examination starts with a request for
examination. The request has to be made within 36 months from the date of priority
or filing. However, if secrecy directions have been given for the application, the
request can be made six months after the directions are revoked or thirty six months
from the date of priority or filing, if that date is later.
→ Examination: On receiving the request, the controller shall direct the patent
application tothe Examiner for examination. To start with, the examiner makes a formal
examination by verifying the propriety and correctness of all documents filed with the
application. Later, he verifies the patentability of the application. The patentability
analysis includes all patentability requirements. After confirming that the application
falls within the scope of patentable subject matter, the examiner conducts a prior art
search to check if there is prior art, which anticipates the invention claimed. Prior art
search for anticipation includes search for anticipation by publication, filing of complete
specification, etc. He then verifies the existence of inventive step, Industrial application,
and Enablement and Best mode. The examiner will give the examination report within
1 month from the date of reference by controller and that term shall not exceed three
months. If the examination report is adverse, the controller sends a notice to the
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applicant and gives him an opportunity to correct and if necessary an opportunity of

hearing. The Controller might ask the applicant to amend the application in order to
proceed further. If the applicant does not make such changes, the application might
be rejected. The Controller has the power to divide the application, post date the
application, substitute applicants and reject the application. An order of division will
be given if the application contains more than one invention and if it is required to file
separate applications for each invention. The application might be post dated to a period
of six months if requested by the applicant. Substitution of inventors is generally
done if theinventor has been wrongfully mentioned or if a joint inventor has not been
mentioned in the application. The controller has the power to reject the application, if
the applicant does not we shall comply the reply of best objection at our end. with his
requirements.

b) Pre and Post Grant Opposition

Pre-grant Opposition
Any person can file an opposition for grant of patent after the application has been
[Link] may be filed on any of the following grounds:
1. Non compliance of patentability requirements.
2. Nondisclosure or Wrongful disclosure of genetic resources or traditional knowledge.

Post-grant Opposition
Any person can file an opposition within a period of twelve months after the grant of a patent.
Itcan be filed based on the following grounds:
→ Wrongful obtainment of the invention by the inventor.
→ Publication of the claimed invention before the priority date.
→ Sale or Import of the invention before the priority date.
→ Public use or display of the invention.
→ The invention doesn’t satisfy the patentability requirements.
→ Disclosure of false information to patent office.
→ Application for the invention is not filed within twelve months from the date of
conventionapplication.
→ Nondisclosure or wrongful disclosure of the biological source.
→ Invention is anticipated by traditional knowledge.
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Process of Opposition
On receiving a notice of opposition, the controller notifies the patentee. He then constitutes
an Opposition board to deal with the opposition. The Opposition board decides the issues after
giving reasonable opportunity of hearing to both the parties. The Opposition board might
invalidate the patent, require amendments or maintain the status quo. If amendments are
required, they have tobe made within the prescribed period in order to maintain the patent.

c) Patent Specification:

Basically, a patent specification serves the purpose of describing your invention. The main
difference in the provisional and complete specification comes with the type of application
you file. You can either file a provisional application or a complete application. However,
the difference comes in Form 2 where you need to fill out the provisional and complete
specificationsection. Of course, it depends on the type of application you are planning to file.

→ Provisional Specification

You should file a provisional application if your invention is still in the development stage.
A provisional application allows you to secure a priority date for your application.
Consequently, you get a 12 month period to file a complete application from the date of
filing a provisional application.

You need not describe everything about the invention. Basically, just a simple description is
enough. There is no need to include drawings or claims in a provisional specification.
However, it is highly advisable to describe as much about the invention as possible. But,
this’ll eliminate anydoubts and you will have a stronger foothold in terms of the protection.

In conclusion, a provisional specification does not need to be very elaborate. The main idea
of a provisional application is to secure a priority date.

→ Complete Specification

You should file a complete application when your invention is complete in a holistic sense.
The complete application will enlist every single detail about your invention. From its
components toits applicability, everything needs a precise description.

Basically, the more elaborate your description, the better your chances are of registering a
[Link], inclusion of drawings is absolutely necessary and the claims need to be highly
specific. Also, you must ensure that you clearly state the components of your invention, what
its applicability is, and what its future scope is. Consequently, this will ensure that your IP
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rights aresecure and safe. If your specification is comprehensive, then it will discourage other
entities frominfringing/opposing your application at the time of publication.

d) Patent Revocation

Section 64 of the Patents Act provides that a person interested can file a petition before the
IPAB, or in a counter-claim in a suit for infringement of the Patent before the High Court, on
any of thegrounds mentioned in this Section. The person under the Act refers to an interested
person. It means that the person filing for revocation of the patent shall have some interest or
share in the patent or its revocation, whatever the case may be.

The grounds for revocation of a patent under Section 64 of the Patents Act 1970 are as under:

a. that the invention, so far as claimed in any claim of the complete specification, was
claimed in a valid claim of earlier priority date contained in the complete
specification of anotherpatent granted in India;
b. that the patent was granted on the application of a person not entitled under the
provisionsof this Act to apply therefor:
c. that the patent was obtained wrongfully in contravention of the rights of the
petitioner or any person under or through whom he claims;
d. that the subject of any claim of the complete specification is not an invention within
the meaning of this Act;
e. that the invention so far as claimed in any claim of the complete specification is not
new, having regard to what was publicly known or publicly used in India before the
priority date of the claim or to what was published in India or elsewhere in any of the
documents referred to in section 13;
f. that the invention so far as claimed in any claim of the complete specification is
a. obvious or
b. does not involve any inventive step, having regard to what was publicly
known or publicly used in India or what was published in India or elsewhere
before the priority date of the claim;
g. that the invention, so far as claimed in any claim of the complete specification, is not
useful;
h. that the complete specification does not sufficiently and fairly describe the invention
andthe method by which it is to be performed, that is to say, that the description of the
method or the instructions for the working of the invention as contained in the
complete specification are not by themselves sufficient to enable a person in India
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possessing average skill in, and average knowledge of, the art to which the invention
relates, to work the invention, or that it does not disclose the best method of performing it
which was known to the applicant for the patent and for which he was entitled to claim
protection;
i. that the scope of any claim of the complete specification is not sufficiently and
clearly defined or that any claim of the complete specification is not fairly based on
the matter disclosed in the specification;
j. that the patent was obtained on a false suggestion or representation;
k. that the subject of any claim of the complete specification is not patentable under this
Act;
l. that the invention so far as claimed in any claim of the complete specification was
secretly used in India, otherwise than as mentioned in sub-section (3), before the
priority date of the claim;
m. that the applicant for the patent has failed to disclose to the Controller the information
required by section 8 or has furnished information which in any material particular
was false to his knowledge;
n. that the applicant contravened any direction for secrecy passed under section 35 or
made or caused to be made an application for the grant of a patent outside India in
contravention of section 39;
o. that leave to amend the complete specification under section 57 or section 58 was
obtained by fraud;
p. that the complete specification does not disclose or wrongly mentions the source or
geographical origin of biological material used for the invention;
q. that the invention so far as claimed in any claim of the complete specification was
anticipated having regard to the knowledge, oral or otherwise, available within any
local or indigenous community in India or elsewhere.

The revocation of a patent is not restricted to Section 64 only. Section 25(2) also specifies
certain grounds, which could be used for post-grant opposition, which essentially means
that a person claiming that a patent granted under the Act is not valid on the basis of grounds
mentioned under Section 25 and could reach the controller for revocation by way of an
opposition to the grant of such patent. This remedy is available until one year from the date
of publication of the grant of patent. These grounds are somewhat similar to those of Section
64.
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Patent opposition, Revocation of patent, Counterclaim & Res-judicata

A patent, post grant, can be opposed under Section 25 of the Act on the grounds mentioned
thereunder, as well as a petition for revocation of patent or a counterclaim in a suit for
infringement can be filed under Section 64 of the Act. An interested person can file a petition
for revocation toIPAB and simultaneously file a defense of "counterclaim" on a patent in the
High Court. In sucha scenario an important question arises i.e., what would happen in these
kinds of circumstances? It is possible that the decisions in opposition, revocation petition and
counterclaim can be contradictory. The Hon'ble Supreme Court has answered all such
question in Aloys Wobben andOrs Vs. Yogesh Mehra and Ors.

In the above case, many questions relating to revocation proceedings filed simultaneously
under different Sections of the Act were answered. In this case it was pointed out that in case
an opposition is filed under Section 25 of the Patent Act, then the interested person
automatically eclipses his right under Section 64, to file a revocation petition before the
Appellate Board or a Counter Claim in a patent infringement suit High Court. The rationale
behind such decision was given by the court by holding that the provision mentions that
"Subject to the provisions containedin this Act," which means that Section 64 would function
keeping in mind conditions mentionedin other Sections. In a case where opposition has been
filed before the controller, that would mean that the right of the interested person under
Section 64 is foregone.

Revocation of a patent after the grant of compulsory license, & non-working- Section
85 Section 85 of the Act lays out the conditions and the essentials, which are to be met,
before theapplication for revocation of a patent pertaining to which compulsory license has
been granted inthe past is to be filed.

Compulsory license: Compulsory license is the license which could only be granted after
theexpiration of 3 years from the date of grant of a patent by the controller.

In response to an application filed by an interested person, an interested person along with

the application for grant of a compulsory license should also state the particulars mentioning
what is'his' interest that is connected with the grant of such license.

There are three grounds that are mentioned under Section 84 providing that if any of the
following three requirements are not fulfilled, an application for grant of compulsory license
could be filed:
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• A patented invention does not satisfy the reasonable requirements of the public.
• A patented invention is not available to the public at a reasonably affordable price.
• A patented invention is not working in the territory of India. Demotivating

If the controller is satisfied that any of these three requirements are not satisfied and if the
controller thinks fit, he may grant a license upon such terms as he may deem fit. The
controller also has to take into account other relevant factors like the ability of the applicant
to exploit the licensed patent, the nature of such invention, whether the applicant tried to get
a license from thepatent holder, etc. Section 84(7) mentions the circumstances, which are to
be looked at while deciding whether the reasonable requirements pertaining to the public at
large are satisfied or not.

The basic purpose of a compulsory license is to enable the general public to avail the
benefits, which is due to the patent holder's inefficient use of the invention could not be
availed [Link], an interested person with adequate capabilities may be granted with
a compulsory licensewhich will eventually not only function in the territory of India but will
also help in satisfying the basic requirements of the general public at reasonably affordable
prices.

Role of Section 85 in revocation of a patent instituted by a person

Revocation of a patent for which already a compulsory license has been granted is covered
underSection 85 of the Patents Act. Only after a period of 2 years, an application for
revocation for such a patent can be filed. The grounds for revocation of a patent under Section
85 are the same as those mentioned under Section 84, which deals with

• reasonable price,
• availability in the territory of India, and
• requirements of the public.
Likewise, under Section 85 the applicant needs to mention the particulars clearly stating out
the facts on which such application is based along with the nature of applicant's interest, in
revocationof that patent. The application has to be decided within 1 year of it being presented to
the controller.

The purpose behind "revocation of a patent" under Section 85 of the Act is the benefit and
welfare of the public in all situations. If the patentee does not take necessary steps that might
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help in establishing better distribution of the product to the general public and easy
availability at reasonable prices after compulsory license is granted against that patent then, it
is considered that it is for the betterment of the society that the concerned patent should be
revoked.

Revocation instituted by Central Government

Central Government, compared to an interested person, has more option when it comes to
revocation of a patent. Not only Central Government like any other person con file for
revocation of a patent under Section 64 under the grounds mentioned above but there are
other Sections in addition to Section 64, which deal with the revocation of patent instituted
by the Central Government.

Section 65- This Section under the Patent Act, 1970 deals with revocation of a patent by a
direction given by Central Government to the controller for patent revocation on the ground
that the patent pertains to the field of atomic energy which is non-patentable invention under
Section 3 of the Act. The patent is revoked after an opportunity is given to the patentee of
being heard.

Section 66- This Section under the Act deals with revocation of a patent by way of
declaration inthe official gazette. If the Central Government is of the view that the patented
invention is

• prejudicial to public, or
• mischievous to state, then it can revoke the concerned patent by way of the official
gazette.

Role of Section 85 in revocation of a patent instituted by Central Government

A patent can be revoked for non-working by Central Government also under Section 85. The
revocation will be on the same three grounds mentioned in Section 85, which are to be
established by an individual in his application for revocation.
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Rights and Obligations

a) Rights and obligations of a

PatenteeWho is a Patent Holder?

A Patent holder invents a procedure or product whose exclusive Rights and Obligations of
Patentee are given to the Patent holder as an inspiring force for investment in creative or
inventive exercises and for the spread of such exercises in public at large for learning. However,
these exclusive Rights and Obligations of Patentee are not unending and can revocation of
such rights can be done in certain exceptional circumstances where is need to balance the
interest of the Patent holders and with others.

There are a number of limitations and exceptions to these Rights and Obligations of Patentee
which are as follows:

→ Research or experimental utilization;

→ usage on outdoor vessels;
→ receiving administrative authorization from various professionals;
→ reduction of Patent rights and similar imports;
→ Compulsory relating and acquisition or use of inventions by the Governments.

What are the Rights of Patentee as per the Patent Act, 1970?

A grant of Patent in India gives the Patentee the exclusive model to utilize or make the
patented invention or utilize the patented procedure related to the invention. Certain Rights and
Obligationsof Patentee are enshrined under the Patent Act, 1970.

Where the grant of Patent is done for a product, the exclusive right to prevent any third party,
whois no having his/her consent, from any act of offering, using, making for sale, importing
or exporting for such products in the territory of India. Where the subject matter associated
with the Patent is a process, the exclusive right to prevent any third party, who is no having
his/her consent, from any act of offering, using, making for sale, importing or exporting for
such products that aredirectly obtained from the process in the territory of India; Moreover, the
product produced by the Patentee should not be such that it cannot be patented in India as per
Section 48 of the Patent Act, 1970.
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The elaborated Rights of Patentee in India are as follows:

• Right to exploit the Patent

When the new invention is a product, the Patentee has the exclusive rights to use, make,
import, or sell for these purposes related to an invention in India. On the other hand, when
the invention of the inventor is a procedure or process of manufacturing of any article or
substance, the right to exploit means the exclusive right exercise or use the procedure or
method in the territory of India.

• Right to Grant License

The Patentee of a Patent is given the right to grant license or transfer rights or enter into
some arrangement for some consideration. The assignment or license to be valid and
legitimate it is required to be in writing and should be registered with the Controller of Patent.
Unless a document of assignment of a Patent is not registered, it is not admitted as evidence
of title of the Patent, and such a rule is applicable to the assignee, not the assignor. (As per
Section 69(5) of the Patent Act,1970)

• Right to Surrender

By giving notice in the prescribed manner, the Patentee of a Patent has the right to surrender
a Patent at any time and at his/her own discretion. The advertisement for such an offer of
surrenderis required to be done in the Journal. The publication is done to give an opportunity
to the people to oppose the offer of surrender of the Patentee. This is done when the Patentee
apprehends his/her non-performance of the Patent in the future and upon which he/she decides
to surrender the Patent.

• Right to sue for Infringement

The Patentee has the right to sue for Infringement of Patent in District Court has the
jurisdiction to try the suit.

• Right to Use and Enjoy Patent

The Patentee of the Patent has the exclusive right to exercise, make, utilize, convey or offer or
the patented substance or article in India or to practice or utilize or the process or techniques
associated with the invention. Such rights can be exercised either by the Patentee
himself/herself or by his/her licensees or agents.
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What are the Obligations of Patentee as per the Patent Act, 1970?

Once a Patent is granted to a Patentee, there are certain Rights and Obligations of Patentee.
The Obligations of Patentee are as follows:

 Duty to Disclose

Sec 8 of the Patent Act, 1970[1], accomplishes the obligation to disclose of the Patentee.
Section 8(1) of the Patent Act, 1970, tells that the Patentee has an obligation to disclose all
required data related to the remote uses of comparative or same invention documented by
him/her or through him/her or through someone by him/her at the time of applying or within
6 months of applying.

The Patentee of a Patent is required to record an announcement of all the listed particulars
viewing the applications and, in addition to the above, an endeavor to disclose all the points
of interest ofany subsequent applications that might be documented at the future stages.

Section 8(2) of the Patent Act, 1970, puts an obligation on the Patentee to provide all the
data required by the Controller of Patent with regards to the relating of any remote
applications at whatever point demand is made by the Controller of Patents within a time
period of 6 months of such a demand by the Controller of Patent. The first part of the
obligation of Patentee begins when a man records an application of Patent. On the other hand,
the second part begins after a demandis made by the Controller of Patents under the Patents
Act, 1970.

 Duty to Request for Examination

Not like other Intellectual Property Rights, the Registration process of Registration of Patent
does not accommodate any kind of programmed examination of the grant of Patent
application. In the procedure above mentioned, as indicated by Section 11(B) of the Patents
Act, 1970, the obligation is thrown on the Patentee himself/herself to ask for the Controller of
Patents to look at the growthor development connected for Patent.

 Duty to Respond to Objections

The Controller of Patent before accepting the examination request passes it to the analyst
who looks at the growth and gives a report to the Controller of Patent known as the First
Examination Report (FER). On certain cases there may be some protests which will be
brought up in the First Examination Report, it is the right of Patentee to reply to such
opposition complaints and consent to the corresponding within a time period of a year of the
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issuance of the First Examination Report (FER) falling which the application of the Patentee
will be considered to be surrendered by the Controller of Patent.

 Duty to clear all Objections

It is the obligation of the owner of the Patent to respond to the raised objections as well as to
clearand remove each one of the raised objections and, in addition, certain oppositions raised
against his/her invention. In the event that the Controller of Patent has not fulfilled he/she, it
may also require a meeting also. Furthermore, it is the obligation of the owner of Patent to go
for a consultation and clear all the objections and, in addition, oppositions, if are raised any,
against the invention of the inventor.

 Duty to Pay Statutory Fees

The Patentee has an obligation to pay all the statutory expenses required to get a grant of a
Patentin the process of Registration without failure generally, his/her application for the grant
of Patent won’t be managed. Sec 142 of the Patent Act, 1970, accomplishes the provisions
recognized with payment of charges and, in addition, the consequences for non-payment of
such prescribed fees.

After this process is imitated to and the Patentee of Patent clears every one of the restrictions
andprotests raised against his/her invention, if the Controller of Patent is fulfilled, he/she will
grant a Patent to the invention and publishes it in the Journal, or generally, the Controller
rejects such a Patent.

c) Powers, Functions and Jurisdiction of the Controller of Patent

The Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM)
generally known as the Indian Patent Office, is an agency under the Department for
Promotion of Industry and Internal Trade which administers the Indian law of Patents,
Designs and Trade Marks. The office is headed by the Controller of Patents.

Jurisdiction: Section 77 of the Patents Act, 1970 confers powers of a civil court on the controller
general of patents, designs and trade marks (‘patent controller’).

Power and Functions:

 The Patent Controller can summon and enforce the attendance of any person and
examinehim on oath;
 Every party is entitled to know the nature of his opponent’s case. The Patent Controller
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candirect and obtain the documents from plaintiff for handing it to defendant or vice
versa;
 The Patent Controller can receive evidence on affidavits from the plaintiff or defendant;
 During the proceeding of suit some people are exempted from appearing in person. In
such circumstances, the Patent Controller is empowered to issue Commissions for the
examination of witnesses or documents;
 The Patent Controller can award costs which are reasonable with regard to all the
circumstances of the case;
 The Patent Controller can be requested to review his decision. This can be done by
fillingform 24 along with prescribed fee within one month from the date of decision;
 The Patent Controller can set aside an order passed in absence of any party at the
[Link], the affected party should make a request to set aside an order. This
can be done by filing form 24 along with the prescribed fee within one month from
the date of communication; and
 The Patent Controller also has the power of taking oral evidence. He may also allow
any party to be cross-examined on the contents of his affidavit. The Patent Controller
may also accept documentary evidence unaccompanied by an affidavit.
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PATENT INFRINGEMENT AND REMEDIES

The effectiveness of procedures for enforcement of patents is more than ensuring that
intellectualproperty rights are revered. The obligations under the TRIPS Agreement are now
being widely implemented in national legislations of the member states of the WTO. Most
countries implement various procedures and remedies for intellectual property enforcement.
However, intellectual property right owners, especially multinational companies which make
huge investments in research and development, innovation, constantly demand further
government-led efforts for strengthening intellectual property right protection. Developing
countries like India are facing increased pressure from developed countries to increase their
efforts on the enforcement of IPR. India needs to improve its enforcement record to a level
that potential innovators believe that thepublic will respect their IPRs whether voluntarily or
for fear of official enforcement. However, there are existing challenges which India needs to
navigate, with regard to enforcement, the major problem being judicial delays. There is an
inadequacy of the enforcement machinery resulting inslow judicial process.

a) Direct and Indirect (or Contributory) Infringement

Patent infringement means the violation of the exclusive rights of the patent holder. As
discussed earlier, patent rights are the exclusive rights granted by the Government to an
inventor over his invention for a limited period of time. In other words, if any person exercises
the exclusive rights of the patent holder without the patent owner's authorization then that
person is liable for patent infringement. Sections 104-114 of the Patents Act, 1970 provide
guidelines relating to patent infringement. Unlike the Design law, the Patents law does not
specify as to what would constituteinfringement of a patented product or process. However,
the following acts when committed without the consent ofthe patentee shall amount to
infringement:
(i) making, using, offering for sale, selling, importing the patented product;

(ii) Using the patented process, or using, offering for sale, selling or importing the product
directlyobtained by that process

There are two basic types of patent infringements:

 Direct Infringement: Direct patent infringement is the most obvious and the
mostcommon form of patent infringement. Basically, direct patent infringement
occurs when a
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product that is substantially close to a patented product or invention is marketed,

sold, or used commercially without permission from the owner of the patented
product or invention.
 Indirect Infringement and contributory infringement : Indirect patent
infringement suggests that there was some amount of deceit or accidental patent
infringement in the incident. For instance, A holds a patent for a device and B
manufactures a device which is substantially similar to the A’s device. B is supplied
with a product from another person C to facilitate manufacturing of the B’s device. If
the device so manufactured by B infringesupon A’s patent, then the person C indirectly
infringes A’s patent. Further, if such a product is knowingly sold or supplied, it may
lead to “contributory infringement. In the above example, if the person C knowingly
supplies the product to B then the infringement is construed as contributory
infringement.

b) Doctrine of Equivalents: Patent infringement generally falls into two categories: literal
infringement and infringement under the doctrine of equivalents. The term "literal
infringement"means that each and every element recited in a claim has identical correspondence
in the allegedly infringing device or process.

However, even if there is no literal infringement, a claim may be infringed under the doctrine
of equivalents if some other element of the accused device or process performs substantially the
same function, in substantially the same way, to achieve substantially the same result. The
doctrine of equivalents is a legal rule in most of the world's patent systems that allows a Court
to hold a partyliable for patent infringement even though the infringing device or process does
not fall within theliteral scope of a patent claim, but nevertheless is equivalent to the claimed
invention.

This "expansion" of claim coverage permitted by the doctrine of equivalents, however, is not
unbounded. Instead, the scope of coverage which is afforded the patent owner is limited
by
(i) the doctrine of "prosecution history estoppel" and

(ii) the prior art.

An infringement analysis determines whether a claim in a patent literally "reads on" an

accused infringer's device or process, or covers the allegedly infringing device under the
doctrine of equivalents. The steps in the analysis are:
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 Construe the scope of the "literal" language of the claims.

 Compare the claims, as properly construed, with the accused device or process, to
determine whether there is literal infringement.
 If there is no literal infringement, construe the scope of the claims under the doctrine
of equivalents.

The doctrine of equivalents is an equitable doctrine which effectively expands the scope of
the claims beyond their literal language to the true scope of the inventor's contribution to the
art. However, there are limits on the scope of equivalents to which the patent owner is
entitled.

c) Doctrine of Colorable Variation: A colorable variation or immaterial variation

amounting to infringement is where an infringer makes slight modification in the process or
product but in facttakes in substance the essential features of the patentee’s invention.

In Lektophone Corporation v. The Rola Company, 282 U.S. 168 (1930), a patent holder's
patents were of sound-reproducing instruments for phonographs. According to the patent
application, size and dimensions of the invention were the essence of the patent. The patent
holder claimed that a radio loud speaker manufactured by the defendant (manufacturer)
infringed the patents. The manufacturer's devise also had a central paper cone, but the cone
was smaller than that of the patented devise and that constituted colorable alteration. The
court held that because colorable alterations of the manufacturer's devise, it would not
accomplish the object specified in the patent claims and hence did not infringe upon the patent
holder's claims.

d) Defenses to Patent infringement case

Some activities are not included in the act of infringement and can be used freely. Some of
themare described below.

 Use of patented invention by Central Government (Section 100)

Central Government and by any person authorized in writing, for the purposes of the Central
Government can use an invention after the patent application is filed or any time after the
grant ofpatent. Authorization cannot be given either before or after the patent registration in
Chennai is granted and either before or after the acts in respect of which authorization is
given. In such case, an amount including the economic value of the use of the patented
invention shall be paid to the patentee. The patentee should be well informed about the usage
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of the patented invention from time to time, except in the case of national emergency or any
other urgency.

 Importers (Section 47(1) & 47(2))

Central government or on behalf of central government any patented product can be

imported orcan be made for its own use.

 Research exemption (Section 47(3))

Patented inventions can be used just for experimental purpose, research work, and for
explaining to students. It is specifically important in the case of patents related to drugs and
medicines.

 Supply of patented drug to health institution (Section 47(4))

Central Government can use any patented invention regarding a medicine or drug entirely for
his own use or to distribute it to any dispensary, hospital or other medical institution which are
official entered in the Official Gazette.

 Use of patented inventions on foreign vessels (Section 49)

An invention that is a part of foreign invention and comes to India only for a limited period of
time temporarily, then the act shall not be considered as an infringement.

 Bolar exemption (Section 107A (a))

Section 107(a) in Indian Patent Act 1970 is also known as the Bolar Exemption.

Section 107(A) Any act of making, constructing. [using, selling or importing] a patented
invention solely for uses reasonably relating to the development and submission of
information required under any law for the time being in force, in India, or in a country other
than India that regulates the manufacture, construction, use, sale or import of any product.
Bolar Exemption says that patented inventions are used to carry out bio-equivalence studies.
The information is submitted to regulatory authorities regarding the product to obtain
marketing approval for the product.

d) Remedies- Civil and Criminal

In case of an infringement if the decision of the court goes in the favour of the patentee, then
thecourt may grant the remedies to the patentee in the form of injunction (stay order) and
give a suitable remedy either as damages or an account of profits according to the choice of
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patentee. Court may also give order to seize, or destroy the goods produced by the infringer.

There are several points in the case which decides whether the remedies will be given by the
court or not, below given are some points that will help in understanding the grounds for
remedies.

1. Remedies that are granted by the court in case of patent infringement include an injunction
and depending on the choice of the patentee, either damages or an account of profits can be
granted (Section 108).

2. The court may give order to seize, surrender or destroyed the goods which are found to be
infringing without paying any compensation.(Section 108)

3. No damages or an account of profits shall be granted against the defendant who proves
that atthe date of the infringement he was unaware of the patent and had no reasonable grounds
to believe that the patent existed.(Section 111)

4. The court may refuse to grant any damages or an account of profits in respect of any
infringement that has been committed after a failure to pay any renewal fee within the given
timeperiod and before any extension of that period.

5. If court found that against any claim of the specification, which is valid, but that any other
claim is invalid, then court may grant remedies only in respect of any valid claim which is
infringed (Section I14)

Remedies in case of groundless threats of infringement

In case of infringement the patentee can send the threatening circulars, advertisements or
calls. if he finds that his patented article or the product is being infringed. In case his patent
registration in Coimbatore is not strong and defendant can challenge it during the
infringement suit. Then patentee can choose alternate method of action if he does not want go
for costly legal suits.

The defendant can bring a suit to the District Court or High Court against the patentee
demandingremedies against the threats,

Given below are some expected remedies that can be demanded by the defendant:

i. He can ask for a declaration that the threats are unreasonable or unacceptable;
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ii. He can ask for an authoritative warning against continuance of such threats;

iii. Can request for remedies for the damages that he has faced till now.

The remedies requested by the defendant can be rejected or declined if the patentee proves that
thedefendant’s act is an act of infringement.
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CONTENTS
MODULE-III: TRADE MARK

1. Introduction: Concept of Trademark

1.1 What are Trademarks
1.2 Need for Trademark Protection
1.3 Types of Trademark

2. Trademark Act, 1999

2.1 Registration of Trademark in India
2.2 Removal of Registration on grounds of non-use
2.3 Vested Rights and Concurrent Registration
2.4 Functions and Jurisdiction of the Registrar of Trade Mark

3. Trademark and Other Emerging Issues

3.1 Doctrine of Honest and Concurrent users
3.2 Doctrine of Deceptive Similarity
3.3 Comparative Advertising
3.4 Character Merchandising
3.5 Ambush Marketing
3.6 Dilution, disparagement and Genericide of Trademarks
3.7 Trade Dress Protection.

4. Trademark Infringement and Passing off actions

INTRODUCTION: CONCEPT OF TRADEMARK

1.1 What are Trademarks?

Trademark protection is available for certain names, symbols, devices, or words that will be
usedin connection with a good or service. Technically, if a certain mark is associated with a
service, it is called a "service mark," but trademark is commonly used to refer to both marks
associated with services and goods. The purpose behind trademarks is to allow companies
and individuals to indicate the source of their goods or services and to distinguish them from
others in the [Link] are many different types of distinctive marks that are classified as
trademarks. A company’s name, a sporting team’s mascot and famous singer’s lyrics are all
considered trademarks. Trademark can be found in different forms. Some of them are:

Name – Coco Chanel is a perfect example of a name that is a trademark. The famous
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designer Coco Chanel built her successful fashion empire by using her name. People knew that
if they were to purchase a Coco Chanel product they were going to receive quality
craftsmanship. Through her reputation of having excellent taste, her name became
recognizable around the world. Her name is considered a trademark because it is also the
brand name of her company and is used to distinguish herself from other designers and
generic clothing manufacturers.

Symbol – The McDonalds golden arch is a classic example of a symbol trademark. Golden
arches align interstate highways to alert customers when there is a McDonalds located at next
exit. There is no mention of the name McDonalds on these golden arches. McDonalds does not
need to. The general public, by in large, as well as their customers know that a golden arch
represents McDonalds. Their golden arch symbol clearly differentiates them from other fast
food restaurants.

Catchphrases – a catchphrase that is identifiable to a person or company that is used to sell

merchandise can be trademarked. Donald Trump’s “You’re Fired” is a perfect example of a
trademark catchphrase. Donald Trump uses his catchphrase on his reality television show
“The Apprentice”.

Figure or Mascot – a classic example of a trademark character is Geico’s talking gecko.

Geico’s talking gecko was featured in many commercials advertising Geico’s insurance. The
gecko became a mascot to the company. This talking lizard is now recognized by thousands of
American households nationwide.

1.2 Need for Trademark Protection

Trademark is viewed as one of the most significant resources of any organization or business
house as the good will and success of such company immensely upon the proper commercial
exploitation of its trademark. Likewise Trademark additionally is one of the most significant type
of Intellectual Property holding an exceptional spot in the whole IPR system considering the huge
growth of trade and commerce in the economy.

If your reputation for you or your goods and services is what makes the difference for you,
then atrade mark is the best form of defence for your reputation. Don’t think that putting the
letters ™ after your name is enough – they might well serve to stop someone from misusing
your brand butthe sign does not carry any legal weight in a courtroom fight.

A trademark is an essential component of a brand's business model and plan. It encompasses your
brand identity, reputation and uniqueness. The marketplace is crowded and every brand is
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fighting, via aggressive marketing tactics, for customer dollars. The crucial role that a
trademark plays in the success of your brand simply cannot be overlooked.

Brand loyalty

Brand loyalty can take decades to establish, and the aggregate cost of advertising, promotion
and marketing and sales can be high. Companies invest significantly in their brands and it
becomes anintegral element of their identity. Without legal protection (in the form of a
registered trade mark), they have very limited ownership of that brand and will struggle to stop
others from making money from their success.

Your trade mark differentiates your product or service from those of a competitor. In an
increasingly busy marketplace, the value of this differentiation and the associated ‘good will’
that it generates is a valuable commodity. Customers immediately know that it is you who
they are buying from and are less likely to look for an alternative.

You can communicate your brand's values, beliefs, purpose and vision through a trademark. It
also distinguishes your brand from others and helps customers make purchasing decisions. When
your trademark is identifiable, either by its uniqueness or reputation, customers will immediately
know that when they see your mark, they are getting something specific.

Advantages of trade mark protection

Trade mark protection provides you with the legal right to stop others from using the brand
which you have invested in developing. Moreover, it is a company asset that can grow in
value significantly. Coca Cola® is probably the best known brand in the world and of its
estimated value of $60 billion over 75% is associated with the brand alone. Little wonder that
they take their trade marks very seriously.

An additional advantage of a registered trade mark is that you will also be able to defend
yourself against ‘cybersquatters’. These are people who buy a domain name incorporating your
company name/brand name and then try to sell it back to you for a large amount of money.
By having a registered trade mark, you are easily able to defend yourself against anyone who
uses a similar oridentical domain to that of your trade mark in either the same line of trade or
for fraudulent purposes.

Having a distinctive trademark simplifies marketing and advertising. Once your trademark
has become recognizable, it may be all you need to use in your marketing materials. A perfect
example is the apple symbol that Apple Inc. uses. Everyone can identify the brand just by
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seeing that symbol. Often, Apple Inc. does not even use words in their advertising.

1.3 Types of Trademark

Trademarks are of various types; product marks, service marks, collective marks,
certification marks, shape marks, etc. The purpose of the trademark is the same, irrespective of
its type. It allows the consumers to distinguish the source of the product/service and assures the
quality of the product or service. The basic purpose of all these trademarks is to help customers
identify origin and quality of the underlying products or services.

A trademark may be divided into the following categories:

1. Product Mark:

A product mark is similar to a trademark. The only difference is, it refers to trademarks
related toproducts or goods and not services. It is used to identify the source of a product and
to distinguisha manufacturer’s products from others. On the whole, a trademark is an important
means to protect the goodwill and reputation of a Business.

The application for the trademark can be filed within few days and “TM” symbol can be used.
The time required for trademark registry, to complete formalities is generally around 18 to 24
months. The ® (Registered symbol) can be used next to the trademark once the trademark is
registered and registration certificate is issued. Once registered, a trademark will be valid for
10 years from the date of filing, which can be renewed time to time.

So product marks are those that are attached to distinguish the goods or services of one
manufacturer from that of another.

Examples:

2. Service Mark:

A service mark is the same as a trademark, but instead of a particular product, it identifies
and differentiates the source of a service. For example, a company such as Yahoo may brand
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certain products with a trademark, but use a service mark on the internet searching service that
it provides. It is denoted by ‘SM’.

A service mark is nothing but a mark that distinguishes the services of one proprietor/ owner
from that of another. Service marks do not represent goods, but the services offered by the
company. They are used in a service business where actual goods under the mark are not
traded. Companies providing services like computer hardware and software assembly,
restaurant and hotel services, courier and transport, beauty and health care, advertising,
publishing, etc. are now in a position toprotect their names and marks from being misused by
others. The rules governing for the service marks are fundamentally the same as any other
trademarks.
Examples:

3. Collective Mark:

These are the trademarks used by a group of companies and can be protected by the group
collectively. Collective marks are used to inform the public about a particular characteristic of
the product for which the collective mark is used. The owner of such marks may be an
association or public institution or it may be cooperative. Collective marks are also used to
promote particular products which have certain characteristics specific to the producer in a
given field. Thus, a collective trademark can be used by a more than one trader, provided that
the trader belongs to the association.

The trader associated with a particular collective mark is responsible for ensuring the
compliance with certain standards which are fixed in the regulations concerning the use of the
collective mark, by its members. Thus, the purpose of the collective mark is to inform the
public about certain features of the product for which the collective mark is used. One
example of the collective markis the mark “CPA”, which is used to indicate members of the
Society of Certified Public Accountants.
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4. Certification Mark:

It is a sign indicating that the goods/services are certified by the owner of the sign in terms
of origin, material, quality, accuracy or other characteristics. This differs from a standard
trademark whose function is to distinguish the goods/services that originate from a single
company.

In short, certification marks are used to define the standard. They guarantee the consumers that
the product meets certain prescribed standards. The occurrence of a certification mark on a
product indicates that the product has gone through the standard tests specified. They
guarantee the consumers that the manufacturers have gone through an audit process to ensure
the desired quality of the product/service. For example, Food products, Toys, Cosmetics,
Electrical goods, etc. have such marking that specifies the safety and the quality of the
product.

5. Unconventional Trademarks:

Unconventional trademarks are those trademarks that get recognition for their inherently
distinctive feature.

Unconventional trademarks include the following categories:

• Colour Trademark: If a particular color has become a distinctive feature indicating

the goods of a particular trader it can be registered as a trademark. For example, Red
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Wine.
• Sound Marks: Signs which are perceived by hearing and which is distinguishable by
their distinctive and exclusive sound can be registered as sound marks. For example,
Musical notes.
• Shape Marks: When the shape of goods, packaging has some distinctive feature it can
beregistered. For example, Ornamental Lamps.
• Smell Marks: When the smell is distinctive and cannot be mistaken for an associated
product it can be registered as a smell mark. For example, Perfumes.
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2. TRADEMARK ACT, 1999

2.1 Registration of Trademark in India

Trademark registration process in India is required if a company/individual intend to possess

the complete ownership of the mark and intend to protect it from the misuse by the third
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party. Trademark registration gives legal right to take appropriate action against the third
party against an infringement of the trademark. Registering a trademark gives the owner
exclusive right to useit for its products and/or services. If the trademark registration process is
followed smoothly, then the owner can use the symbol that indicates that specific trademark is
registered. The symbol indicates trademarks registration in India application is filed.

Process of Registration

• It is important that complete and correct information is filed so that the application is
processed faster. The application requires few information to be filed along with the
application:
 Name and address of the Applicant;
 Legal Status of the Applicant i.e. whether the applicant is natural person, Company
etc. Ifthe Applicant claims to be a start-up (registered with the Government of India
as a start- up), the certificate has to be filed.
 Description of goods and services to be filled in along with identification of the class
as per the Nice Classification.
 The nature of applicant determines the official fee for the application.
 The first date of user of the trade mark in India is to be mentioned. If the mark is not
used, it can be filed on a Proposed to be Used basis. However, if prior use of the mark is
claimed, then an affidavit along with supporting documents are to be filed.
• The government fees for filing a trade mark application for a natural person and start up is
half of that of an artificial person like a Company. In order to encourage online filing, law
provides for a 10 % discount for online filing vis-à-vis paper filing at Trade Mark office.
• After filing of the application, it is examined by the Registrar of Trade Marks. Presently,
theTrade mark office appears to be conducting a formal evaluation of the application to
verify the formal particulars as well as detailed evaluation of the application.

• At the formal evaluation, the formal compliances are checked. For example: whether the
authorization from the applicant is filed, goods or services fall in the claimed class or not,
whether user affidavit has been filed as per the claim, applicant's identification and
particularsare correct or nor, any column which ought to have been filed while filing the
application has been left out or not. Considering that applications are filed online by
applicants directly, it makes sense to have a formal evaluation so that minor defects can
be cured at the early stageitself.
• At the detailed evaluation, the applied mark is compared with prior filed or prior
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registered trademark under Section 11. The application is also evaluated under Section 9 of
Trade Marks Act for evaluation on the registrablity of the trade mark for lack of
distinctiveness. It is also verified whether the mark is barred under Section 13 for being
an International Non- Proprietary Name (INN) or barred by the Emblems and Names Act
(Prevention of Improper Use) Act, 1950.
• The applicant is given an opportunity to file a written response to the examination report
/ office objection. If the Registrar is satisfied with the written response, the application is
accepted for advertisement. If the Registrar has any objection, generally, an opportunity
of hearing is given. If the Registrar is not convinced that the mark is registrable, it is
rejected atthe hearing.
• The next stage is advertisement of Trade Mark in the Trade Mark Journal for intimation
of general public. It is open for opposition for a period of 4 months from the date of
advertisement. If there is no opposition, the mark is registered, and registration certificate
issued within few weeks thereafter. If the mark is opposed, then it takes a de tour and the
registration depends on the outcome of the opposition proceedings. Considering the
abundance of online data and weekly publication of Trade Mark Journal, it is time to
reduce this period.
• A registered trade mark is valid for 10 years from the date of application. It can be
renewed anytime within 12 months of due date of renewal. The Trade Mark office is
completing the entire process within 8 to 10 months in some cases which are straight
forward cases of registration.

2.2 Removal of Registration on grounds of non-use

Rectification of the register is a proceeding in which a party seeks to remove a registered
trademark from the register. In India, Section 47 of the Trademarks Act lays down two
scenarios regardingremoval of a registered trademark, they are;

• if it is proved that the trademark was registered without any bona fide intention of use
on part of the owner. More often than not, as part of trademark searches that we
conduct, we come across many applications which have been filed in all the 45
classes when the markis actually used for one or two classes only. This is a defensive
registration and the Courthas held in various cases that such registrations should not
be encouraged.
• if the trademark hasn’t been used for a continuous period of 5 years from the date of
registration of the mark and three months prior to filing the application for registration.
Soin effect, if the mark has not been used for a period of 5 years and 3 months, then
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any aggrieved person may file for rectification proceedings.

So in the first type of case if a person can show that the applicant had no intention of actually
using the mark, they can file a petition to cancel the mark, and in the second scenario, even if
there wassome initial usage, for a continuous period of 5 years after registration of the mark, if
the mark had not been used an application for rectification can be filed.

Who can file for rectification of the register?

Any aggrieved person may file for rectification of the register on grounds of non-use of the
trademark. Though the meaning of “aggrieved persons” hasn’t been explicitly defined in the
act, it has however been interpreted by the Courts to mean persons who are in some way or
the other substantially interested in having the mark removed from the register or persons
who would be substantially damaged if the mark remained

So an aggrieved person includes person who believes that he is being damaged by the
registration; someone who has an earlier pending trademark for the same mark; the owner of
an earlier registered trademark; basically, any person who is in some way or other substantially
interested in having the mark removed and includes persons who are substantially damaged or
prejudiced if the mark remained on the register.

Can it be filed anonymously?

No, it cannot be filed anonymously since the onus to prove that he/she is actually affected,
properevidence reflecting that the mark hasn’t been used by the trademark owner needs to be
submitted in the course of proceedings by the “aggrieved person”. This is mainly to ensure
that a random third party whose rights is not affected in any way does not get away with
unnecessarily removing a valid trademark from the register.

What is use?

The determination of whether a mark has been continuously used is a matter of fact which
varies from case to case. In relation to non-use of trademarks, “use” has been defined to
mean: “the use of the printed or any visual representation of the mark upon, or in any
physical or in any other relation whatsoever, to goods or services“. Moreover, with regard to
the term “use” the Courts have stated that, the term ”use” does not necessarily mean and
imply actual physical sale and it is now well settled that even mere advertisement without
having even the existence of the goods can be said to be an use of the mark.

So for instance, the mark has been registered but hasn’t been manufactured yet, nevertheless
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the trademark owner has started to promote the mark by way of advertisements or TV
commercials, which according to the courts, is usage of the mark though the mark hasn’t
been used as such.

What is non-use?

If the owner of the mark hasn’t used the mark for more than 5 years and 3 months, then he
may lose his trademark rights in such rectification proceedings or opposition proceedings.
While generally the onus to prove non-use is on the person who files the application for
rectification, however the onus might be shifted to the trademark owner in the course of
hearing and if he fails to establish usage, his mark will be liable to be removed from the
register.

This was what was held by the IPAB is a recent case where the respondent (trademark owner)
was to provide for evidence of usage. The owner submitted a document listing registrations in
various countries as usage which was rejected by the IPAB and the mark was ordered to be
removed as the evidence of usage was not sufficient.

How to file a rectification proceeding in India?

An application for rectification can either be made before the Registrar or the Appellate Board.
An order passed by the Registrar is appealable within 90 days to the IPAB which is not
appealable. In order to challenge this order, a writ petition can be filed before the High Court.
If the applicationis directly filed before Appellate Board, it can then be challenged by filing a
writ petition in the High Court.

Apart from submitting the prescribed forms and the fees the application is to be accompanied
bya statement of case which basically sets out the nature of applicant’s interest, facts upon
which the case is based and the relief sought for.

What is the effect of rectification?

Removal of the mark from the trademark register unless proper evidence of usage is
submitted bythe trademark owner.

It’s not merely enough that you have applied for and registered a trademark, the main
purpose of the law is to protect people who have been using the trademark. It’s not some
right that you can just sit on stop others from using by being the proverbial ‘dog in the manger’,
its important the use the trademark that you have registered.
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While the records of the Indian Trademark Office, I’m sure, have several registered marks
which aren’t being used, I believe providing an affidavit of actual usage of the mark at the
end of everyfive years or at the time of renewal (as with many jurisdictions) will solve a lot
of problems in India and keep the register clean.

2.3 Vested Rights and Concurrent RegistrationExclusive Rights of Trademark Owner

The registration of a trademark is a costly and time-consuming process. However, once the
registration is obtained, the proprietor of a registered trademark is vested with certain
valuable rights. These rights exist for ten years which can be renewed further. On the other
hand, a proprietor of an unregistered trademark is also vested with rights under the common
law. One such right conferred on both, registered as well as unregistered trademark
proprietor, is to prevent the third party from using an identical or deceptively similar
trademark under certain [Link] rights of trademark owner.

It is pertinent to note that an unregistered trademark can be protected with the help of common
law after an extensive use made of it however, the registered trademark can be protected from
the date of registration only and before they are used. This brings into sharp focus that a right of
registered trademark holder to prevent an unauthorized use of his trademark is more
convenient than that ofan unregistered trademark holder.

1. RIGHTS OF UNREGISTERED TRADEMARK HOLDER/OWNER

The proprietor of an unregistered trademark can prevent any third party from using an identical
or deceptively similar trademark, provided such an unauthorized use by the rival results into
passing- off. For this purpose, he can initiate the proceedings under common law. Therefore,
such a right is known as a common law right. Apart from an injunction, the claimant may at
his option, obtain either damages or an account of profits. The claimant must establish three
important factors in order to bring an action against the pass-off, namely-

• He has acquired goodwill in his trademark;

• The act of the defendant amounts to misrepresentation;
• The claimant has suffered or is likely to suffer damage due to the act of the defendant.

2. RIGHTS OF REGISTERED TRADEMARK HOLDER/OWNER

Following are the rights which are at disposal of the owner or holder of a registered trademark

(i) Right to Exclusive Use

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Section 28(1) of the Act provides that subject to the other provisions of this Act, registration
of a trademark, if valid, give to the registered proprietor of the trademark the exclusive right to
use the trademark in relation to the goods or services in respect of which the trademark is
registered. In Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel the Supreme
Court observed “Section 28…. confers an exclusive right of using trademark to a person who
has the trademark registered in his name. Such right is, thus, absolute. However, from the
opening of Section 28(1)of the Act namely, “subject to the provisions” the right conferred on
the registered proprietor is not an indefeasible right. This is further, made clear by Section
27(2) of the Act, which says “nothing in this Act shall be deemed to affect the right of
action any person for passing off the goods as goods of another person, or the remedies in
respect thereof. Thus, the right created by Section 28(1) of the Act in favour of a registered
proprietor of a trademark is not an absolute right and is subservient to other provisions of the
Act Namely Sections 27(3), 33 (saving for vested rights) etc. It is also pertinent to note that
the registered proprietor of a trademark gets exclusive rights to use the trademark in relation
to goods or services in respect of which it is registered andthat person may not have the right
to use the trademark in respect of the other goods or services inrespect of which the trademark
is registered”.

(ii) Right to Seek Statutory Remedy Against an Infringement

Section 28(1) also provides that the registered proprietor of a trademark can seek legal
remedy in case of an infringement of his trademark in the manner provided by this Act. He
may obtain an injunction and at his option, either damages or an account of profits by
instituting a suit against the alleged infringer. The proprietor of an unregistered trademark
cannot initiate the infringement proceeding in the event of a deliberate counterfeiting. The
Delhi High Court has observed that registration of a trademark confers on the person some
very valuable rights. To mention only one such right, one may turn to Sub-section (1) of
Section 27 which provides that no person shall be entitled to institute any proceedings to
prevent or to recover damages for, the infringement of an unregistered trademark.

(iii) Right of Registered Trademark holder of Identical Trademark

Section 28(3) provides that where two or more persons are registered proprietor of
trademarks, which are identical with or nearly resembling with each other, the exclusive right
to use of any ofthose trademarks shall not (except so far as their respective rights are subject
to conditions or limitations entered on the register) be deemed to have been acquired by any
of those persons as against any other of those persons merely by registration of trademarks.
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However, each of those persons has otherwise the same rights against other persons
excluding registered users using by way of permitted use, as he would have if he were the
sole registered proprietor.

(iv) Right to Assign

Section 37 of the Act provides that the registered proprietor of a trademark shall have the
power to assign the trademark and to give effectual receipts for any consideration for such
assignment.

However, this right shall be subject to the provisions of the Act and to any rights appearing
fromthe register to be vested in any other person.

(v) Right to Seek Correction of Register

The registered proprietor of a trademark has a right to make an application to the registrar
seeking correction of register regarding the errors pertaining to the particulars of the
registered proprietorand other aspects relating to the registered trademark.

(vi) Right to Alter Registered Trademark

The registered proprietor of a trademark must make an application to the registrar seeking leave
to add to or after the trademark in any manner not substantially affecting the identity thereof.
The Registrar may refuse the leave or grant it on such terms and may be subject to such
limitations ashe may think fit.

2.4 Functions and Jurisdiction of the Registrar of Trade Mark

It acts as a resource and information center and is a facilitator in matters relating to trade
marks in the country. The objective of the Trade Marks Act, 1999 is to register trademarks
applied for in the country and to provide for better protection of trade mark for goods and
services and also to prevent fraudulent use of the mark. The main function of the Registry is
to register trademarks which qualifies for registration under the Act and Rules.

The Trade Marks Registry established in India in 1940 and presently it administers the Trade
Marks Act, 1999. The objective of the Trade Marks Act, 1999 is:
1. to register trademarks applied for in the country and
2. to provide for better protection of trademark for goods and services and also to
prevent fraudulent use of the mark.
The main function of the Registry is:
1. to register trademarks which qualify for registration as per provisions of the
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Trade Marks Act and Rules, and

2. to maintain the Register of trademarks.

Powers and functions of Registrar

The Registrar shall have the following powers and functions:
The Registrar has power to :
1. registration of appeals, petitions and applications;
2. receive applications for amendment of appeal or the petition or application or
subsequent proceedings.
3. receive applications for fresh summons or notices and regarding services thereof;
4. transmission of a direction/ order to the civil court as directed by Tribunal with
the prescribed certificate(s) for execution etc; and such other incidental/matters
as the Chairperson may direct from time to time;
5. receive applications for fresh summons or notice and for short date summons
and notices;
6. receive applications for substituted service of summons or notices;
7. withdraw or transfer cases etc.
8. receive applications for seeking orders concerning the admission and also
inspectionof documents.

 Power of adjournment
All adjournments shall normally presented before the concerned bench in court. In
extraordinary circumstances, the Registrar shall at any time adjourn any matter and lay the
same before the Tribunal in chambers. If so directed by the Tribunal in chambers.
 Delegation powers of the Chairperson.-
The Chairperson may assign and also delegate to a Deputy Registrar or to any other suitable
officer all or some of the functions required by these rules to exercised by the Registrar.

TRADEMARK AND OTHER EMERGING ISSUES

3.1 Doctrine of Honest and Concurrent users

Honest Concurrent Use” as laid down under Section 12 of the Act is one of those grounds
whichthe applicant can make use of to evade getting tangled in a trademark infringement
battle. Section 12 lays down the doctrine of Honest Concurrent User. Concurrent use is when
users
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have identical or similar marks on similar or non-similar goods. The main contention to
prove the honest concurrent use is that the applicant has been using the mark in a bonafide
manner and/or he didn’t have the knowledge of the earlier registered trademark. The applicant
also needs to prove that the relevant customers associate their mark with their product or
service.

In the case of, Goenka Institute of Education and Research vs. Anjani Kumar Goenka and
Anr. (2009), the appellant was allowed to use the mark “ Goenka” with a condition so as to
include the name of their trust below the name of their school so as to facilitate a clear
differentiation between the two marks. The reason which allowed the use of the doctrine of
honest concurrent use was that both the parties started using the mark “Goenka” at the same
time and both were based in different locations so there would be minimal chance of public
confusion.

3.2 Doctrine of Deceptive Similarity

Deceptive Similarity is the major threat that looms in the world of Trademark Proprietor,
which also infringes his intellectual property rights. Whether the proprietor will get the relief
depends on the fact of the case, sometimes it is the only .ground court wants it to be proved
sometimes it is not enough.

The phenomenon of Deceptive similarity whether of Trademark, Trade name or Logo stirs
the anger of well established giants when they encounter the local entrepreneurs blatantly
earning ontheir goodwill. The word similar is not defined in The Trade marks Act, 1999 but
the act defines deceptively similar under section 2(1)(h) as a mark shall be deemed to be
deceptively similar to another mark if it so nearly resembles the other mark as to be likely to
deceive or cause confusion. Whether there is Deceptive similarity or not depends on many
factors which can be understood with recent case laws and defenses therein which highlights
its different interpretation.

Some important cases concerning the judicial view of the Courts in the matter of Deceptive
Similarity

• M/S Lakme Ltd. v. M/S Subhash Trading [1996 (64) DLT 251]

In this case, the plaintiff was selling cosmetic products under the trademark name “Lakme”
and the defendant was also selling similar products under the name “LikeMe”. A case of
trademark infringement was thus filed by the plaintiff. The High Court held that the names
were not deceptively similar and are two separate marks with difference in their spelling and
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appearance.

• SM Dyechem Ltd. v. Cadbury (India) Ltd. [(2000) 5 SCC 573]

In this case, plaintiff started a business of chips and wafers under the trademark “PIKNIK”.
Later, defendant started business of chocolates under the name “PICNIC”. A suit alleging
trademark infringement was filed thereafter. The Court held the marks not to be deceptively
similar as theyare different in appearance and composition of words.

• Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd. [(2001) 5 SCC 73]

In this case Supreme Court laid down certain guidelines for adjudication of matters
concerning deceptive similarity of trademarks. In this particular case, the parties to the case
were the successors of the Cadila group. The dispute arose on the issue of selling of a
medicine by the defendant under the name “Falcitab” which was similar to the name of a
medicine which was being manufactured by the plaintiff under the name “Falcigo”. Both the
drugs were used to cure the same disease and hence, the contention was that the defendant’s
brand name is creating confusion between the consumers. Injunction was demanded by the
plaintiff. As a defence, the defendant claimed that the prefix “Falci” has been derived from
the name of the disease, i.e., Falcipharam malaria.

The court observed that because of the diversified population of the country and varying
infrastructure of the medical profession due to language, urban-rural divides, etc. and with
the probabilities of medical negligence, it is important that confusion of marks should be
strictly prevented in pharmaceuticals and drugs. The Court, thereby, held that being medical
products more precaution and care must be taken and the names of the brand, therefore, being
phoneticallysimilar shall amount to being deceptively similar.

• M/S Allied Blenders and Distillers Pvt. Ltd. v. Govind Yadav & Anr. [CS
(COMM) 819/2018]

In this case, plaintiff claimed that the defendant’s trademark “Fauji” is defectively similar
with that of the plaintiff’s, that is, “Officer’s Choice”. The claim was made on the ground of
similarity of idea in making of the trademarks as the word “Fauji” is a hindi translation of a
military officer. Adding to it, both the parties are in the business of alcoholic beverages.
Further, packaging of both the bottles are also alike.

Though, trade dress plays a significant role in deciding the cases of trademark infringement, in
this case, the court held that there is no deceptive similarity between the trademarks “Officer’s
Choice” and “Fauji” and hence, dismissed the trademark infringement suit.
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Comparative Advertising

Comparative advertising is a widely used form of commercial advertising in many countries.

This type of advertising intends to influence consumer behavior by comparing the features of
the advertiser's product with that of the competitor's product. Comparative claims are variable in
nature. They may explicitly name a competitor or implicitly refer to him. They may emphasize
the similarities (positive comparisons) or the differences (negative comparisons) between the
products. They may state that the advertised product is “better than” (superiority claims) or
“as good as” the competitor’s (equivalence or parity claims). The aim behind this concept is
to allow honest (i.e. not misleading) comparison of the factors of one trader’s products with
those of another; such a comparison will inevitably involve the use of the trade marks
associated with theproducts in question. In the absence of provisions controlling this, such use
could constitute trade mark infringement. No Indian statute defines the term, but the UK
Regulation defines comparative advertising as meaning any advertisement which “explicitly or
by implication, identifies a competitor or goods or services offered by a competitor”.

‘Comparative advertising’ is the term used to describe advertisements where the goods or
services of one trader are compared with the goods and services of another trader. Comparative
advertising benefits the consumer as it usually compares the price, value, quality or other
merits of different products, thereby enhancing the awareness of a consumer. However there is
an important proviso attached to this: The improvement of consumers’ knowledge can only be
achieved for long as theadvertising does not contain misinformation, which is always a risk if
the education of consumers is entrusted to entities with vested interest

3.3 Comparative Advertising and Trademark Infringement

The primary purpose of a trademark is to ‘distinguish the goods of one person from another.
Therefore a trademark enables a consumer to identify the goods and their origin. Hence in
case, ifan advertiser uses a competitor’s trademark to make a comparison between his goods
and those of his competitor, and in the process disparages them, then such an act on the
part of the advertiser would not only invoke issues related to comparative advertising and
product disparagement, but would also invoke issues related to trademark infringement.

The law on comparative advertising and product disparagement, in relation to trademarks, in

India, is based upon the law as laid down in Irving's Yeast Vite Ltd v FA [Link]
29(8) of The Trademarks Act, 1999enunciates situations, when the use of a trademark in
advertising can constitute infringement. It says that any advertising which is not in
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accordance with honest practices; or is detrimental to the distinctive character, or to the repute
of the mark, shall be an act constituting infringement. At the same time Section 30 (1) makes
comparative advertising an exception, to acts constituting infringement under Section 29. It
provides that any advertising which is in accordance with honest practices, and does not
cause detriment to the distinctive character or to the repute of the trademark will be
permissible and will not constitute infringement.

Case Analysis:

 M Balasundaram v. Jyothi Laboratories Ltd, 1995 (82) CC 830 (MRTPC).

In the Case ofM Balasundaram v Jyothi Laboratories Ltd., (Regaul v. Ujala), the commission
explained the meaning of section 36 A of the MRTP Act. In this Case the advertisement is
promoting Ujala liquid which says that two-three drops of this brand were adequate to bring
striking whiteness of clothes while several spoons of other brands were required for the same
effect. A lady holding a bottle of Ujala was looking down on another bottle without any
label, exclaiming 'chhi, chhi, chhi!' in disgust. The manufacturers of Regaul brand
complained to the Commission that the advertisement was disparaging its goods. The
commission held that in orderto bring home a charge under clause (x) of Section 36A (1)[24]
it must be established that the disparagement is of the goods, services or trade of another the
words 'goods of another person' have a definite connotation. It implies disparagement of the
product of an identifiable manufacturer.

A mere claim to superiority in the quality of one's product by itself is not sufficient to attract
clause (x). In the advertisement, neither did the bottle carry any label nor did it have any
similarity withthe bottle of any other brand. The Commission, thus, was of the opinion that it
could not be classified as a Case of disparagement of goods.

 Barclays Bank v. RBS Advanta, 1996 RPC 307, Chancery Division

In this Case RBS Advanta distributed a brochure containing a comparative table of the fees
and interest rates of different credit card companies including Barclaycard Visa which is a
registeredmark of the plaintiff. So, the plaintiff considered this act of defendant has infringed
their mark.

The court held that the objective of the defendant act of using the mark of plaintiff was for
honest practices to inform consumers. The defendant also told that their comparative chart gave
a betterdeal to the customers. Hence CA was allowed by the court.

3.4 Character Merchandising

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Character merchandising is the adaptation or secondary exploitation of a fictional or real-life

character either by the creator or by an authorized party. This exploitation concerns the
essential personality features of the character, such as name, image, or appearance, used in
particular products/services. The objective is to create an association between the products
and the personality features so that the product/service becomes appealing to the customers
because of their attachment to the character. Character merchandising has become an
effective marketing strategy for many companies to generate profits. Merchandise like shirts,
bags, toys, etc. displaying essential personality traits like name, physical features, or tagline of
the characters is manufactured and sold.

Types of Character Merchandising

• Fictional/cartoon character merchandising

Cartoon character merchandising was first started by Walt Disney Co. when it began licensing
theusage of its famous cartoon characters like Mickey Mouse and Donald Duck on consumer
products. Fictional/cartoon character merchandising uses the dialogues, images, and names of
thecharacters. An example can be using Mickey Mouse on the wrappers of Cadbury chocolates.
These fictional/cartoon characters can be from literary works like Calvin and Hobbes, artistic
works like Mona Lisa, and cinematograph films like Harry Potter and Lion King. It can also
be mascots of sporting events like FIFA. Whenever a fictional character is created, it
automatically receives copyright protection.

• Personality merchandising
Using famous persons or celebrities from sports, movies, music, etc. to endorse goods and
services is called personality merchandising. These persons are well known to a large section
of society. This method is profitable because customers will find these products endorsed by
their favorite celebrities to be relatable and will also want to use these products, which are
supposedly used bythe stars themselves. An example of this can be various beauty products
endorsed by Bollywoodcelebrities like Alia Bhatt and Aishwarya Rai.

• Image merchandising

Image merchandising is a combination of fictional character merchandising and personality

merchandising. This refers to fictional characters, which are played by a real-life actor. Here,
thecharacter is identified by the public through both the essential personality features of the
real-life person and the fictional character. An example of this can be the character of Iron
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Man played byRobert Downey Jr and the character of Krissh, played by Hrithik Roshan.

Case Analysis:

 D.M. Entertainment Pvt. Ltd. Vs. Baby Gift House and Ors CS(OS) 893/2002: In
thiscase, the plaintiff was a company which was a representative of the famous singer
Daler Mehndi. They sought to avert the respondent from marketing dolls that could
resonate portions of Mr. Mehndi's songs. The court acknowledged that Mr. Mehndi's
identity was inappropriately utilized by the respondents in the above mentioned dolls
and that this deceived customers into considering that the dolls were in fact endorsed
by Mr. Mehndi. The court further specified that such profit-making manipulation
caused substantial losses to the plaintiff and held that the defendant was liable for
passing off. This is an example ofpersonality merchandising.

 Chorion Rights Limited V. Ishan Apparel and Ors. (2010)ILR 5Delhi481: The
plaintiff, claimed to be the proprietor of the universal trademark and merchandising
privileges of the fictitious character named NODDY which was a cartoon character
and had a show which was broadcasted many times in a day in the channel Pogo under
the time slot of Tiny T V and sought to stop the defendant from marketing apparel in the
same trade name NODDY. Although the court accepted the significance of protection
from the ill effects of character merchandising, it held that the registration for the mark
was established by the defendant successfully sometime in 1995 whereas the plaintiff's
claim on the markwas from 1997. Hence, although the plaintiff was the rightful owner of
all the merchandising rights in NODDY in most jurisdictions, the defendant was first party
to get the registration in India. This is an example of Fictional or cartoon character
merchandising.

3.5 Ambush Marketing

Ambush literally means a surprise attack by someone lying in wait in a concealed position.
Ambush marketing is a marketing strategy where a company ambushes its competitor’s
marketing efforts to gain an upper hand in terms of exposure by stealing the spotlight from
him. These activities usually capitalize on the resources and efforts of other (competitor)
brands.

The definition of ambush marketing has changed over time. Originally it was a brand’s attempt
to associate itself with a team or event without buying the rights so as to steal the spotlight from
the rival that paid to be an official sponsor. This was done either to capitalize on a huge
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audience or just to attack the rivals.

However, these days, the platform has included advertisements in addition to just
sponsorship. Ambush marketing strategies is a key tool used in brand wars.

Ambushing occurs when the event is hijacked by any party who hasn’t sponsored it. It can
be a brand’s competitors or any other unrelated brand too. For instance, if company A and B
are sponsoring an event, and A goes on an advertising blitzkrieg making it seem like the sole
sponsorfor the event, then B would be said to have been ambushed by A.

Property or Trademark Infringement

A brand may use properties, logos, symbols, taglines words, or phrases belonging to a
competitor which can dilute the communication efforts of the competitor brand and confuse
the customers. For instance, Red Cross is used throughout the world to represent hospitals
and other medical services. This actually is a property Infringement of the Red Cross
Organization.

Self-Ambushing

When an official sponsor performs activities above and beyond what was decided in the
sponsorship contract, self ambushing is said to take place. Self Ambushing may result in the
brand performing activities which were earlier agreed upon to be performed by other official
sponsors,like offering freebies to the audience, etc.

Indirect Ambush Marketing Activities

When a brand associate itself with an event or a program indirectly – either through creating
an allusion by using similar images, symbols, etc, or setting up a promotional presence at or
near the event without making specific reference to the event, or by using certain theme as
that of the concerned event, in order to gain more exposure and publicize their products with
no intention ofattacking or stealing spotlight from their competitors, the brand is said to use
Indirect Ambush Marketing Activities.

Pepsi ambushed Coca Cola in 2014 Football World Cup.

Coca Cola signed a contract and became the official marketing partner of FIFA and had a
marketing, branding and activation exclusivity in the category relating to FIFA and World
Cup efforts of every Football World Cup. Pepsi ambushed this marketing effort of Coca Cola
by signing 19 renowned football players including Argentinean Lionel Messi and Sergio
Agüero,
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Englishman Jack Wilshere and Brazilian David Luiz, etc. and launching its ‘Live for Now’
Campaign. Though not associated with the actual event, Pepsi’s marketing activities made it look
like it was associated with it and this affected Coca Cola.

3.6 Dilution, disparagement and genericide of Trademarks

A trademark becomes an identity of a producer. When such identity becomes global and
gains universal recognition it becomes a brand and falls under the category of well-known
marks. When a famous or a well-known mark is infringed it causes dilution of such mark.
Dilution is when onefamous mark is infringed it loses its exclusivity. This causes erosion of
the mark and it exhausts its stand-alone quality and its ability to be recognized clearly from a
crowd of trademarks presentin the global market.

For bringing a cause of action in case of dilution it is absolutely not necessary to prove
presence of confusion or deception or the fact that the mark should be used on competing
goods. Often dilution becomes a barrier for consumer to have a single association in mind
when it comes to thefamous mark. We can say this of form infringement easily brings down
the reputation, fame and goodwill built by the owner of the well- known Mark in the
Universal market through constant investment of capital, manpower and time.

Dilution follows two main category of infringement that is dilution by blurring of the reputed
mark and tarnishment of the same. Both contributes to the subsiding of the mark and takes
away the peculiarity of the well-known mark. Even though both of them fall under the
category of dilution,there is dissimilarity between the two concepts.

• Dilution by Blurring: Blurring is the basic form that justifies the definition of
dilution which speaks of the “gradual disperse” of the famous mark as stated by
Schechter. When we say blur, we mean something that is not clear or not distinct.
This concept can be understood by an imaginary example. As we all know the
famous mark “DELL” is associated with Laptops but imagine DELL shampoos or
DELL mattresses. In such case the famous mark “DELL” is being associated with
goods that are not in competition withlaptops directly but the use of the same mark to
point the source of origin of other products than the original one takes away the single
association factor of the mark on the products of the original owner. This may not
create dilemma in the minds of the customer but does create a mental link. Now
whenever one thinks of DELL it will not just pop the image oflaptops but also other
products on which such mark has been associated as a source recognizer.
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• Dilution by Tarnishment: A mark is said to be tarnished when it is used without

authorization by a third party on such products which might create a negative notion in
the minds of the consumer about that mark and thereby hurting the repute and status
of the mark. How is tarnishment different from blurring? To answer this question we
must understand that in order to establish tarnishment it is important to show that the
original mark has been used or applied on products having substandard quality than
the products of the original mark or the fact that the mark has been applied on products
which may not considered as dignified or products having objectionable images or
notions. This creates a negative judgment in the minds of people. This negative
association proves to be deadly for the owner who gained global reputation based on
the quality guaranteed and providedfor years.

In a landmark case, the famous brand Victoria’s Secret instituted a suit for dilution against a
small shop called Victor’s little secret for selling a variety of products including adult videos,
adult novelties and lingerie. This is a classic example of both dilution by blurring as well as
tarnishment. Use of the mark ‘VICTORIA’S SECRET’ on adult products and vulgar coffee
mugs is clearly degrading and tarnishing the original mark. While simple linking the mark
on products of the defendant takes away the singular association of the mark and thereby causes
blurring effect in the minds of the people.

3.7 Trade Dress Protection.

A form of trademark protection that is used to protect the physical appearance of a product or
service and which protect businesses from competitors is known as trade dress. According to
theInternational Trademark Association (INTA), trade dress is the overall commercial image
(look and feel) of a product or service that indicates or identifies the source of the product or
service and distinguishes it from those of others. It may include the design or configuration of
a product; the labeling and packaging of goods; and/or the décor or environment in which
services are provided. Trade dress can consist of such elements as size, shape, color and
texture, to the extent such elements are not functional. In other countries, Trade dress can be
referred to as ‘get-up’ or ‘product design’.

In India a trademark means a mark capable of being represented graphically and which is
capable of distinguishing the goods and services of one person from those of others and may
include shapeof goods, their packaging and combination of colours. The Act provides
protection to marks which are distinguishable. The Trademarks Act1999 provides statutory
recognition to the shape of goods, their packaging and combination of colours. E.g. in class11,
protection is
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given to a particular shape of a barbeque; class30 recognizes the triangular shape applied to a
chocolate. The Act defines package to include any case, box, container, vessel, casket, bottle,
wrapper, label, brand, ticket, frame, capsule, cap, lid, stopper and cork. Trade dress
protection is broader in scope than trademark. It protects packaging and product design
which creates the overall brand value of the product. Trade dress is an important element in
creating brand value. A trade dress is particular to a product. To be a trade dress it has to be
distinctive. A trade dress can be claimed when it makes the product identifiable to the
consumer. When the product is identified by the consumer a brand value is created. This
means that the trade dress has an important role in creating a brand value for the product. This
makes the protection of trade dress all the very important.

The Indian law on trademark provides for passing off action against use of similar trade dress.
For infringement of trade dress, thus a passing off action can be claimed. The Indian view on
trade dress can be explained by the few cases on trade dress in India:

Colgate Palmolive Co v Anchor Health and Beauty Care Pvt. Ltd

The plaintiff sought an interim injunction against the defendant for use of the trade dress and
colour combination of red and white in relation to identical products i.e. tooth powder, when
the marks being used by the two parties were completely distinct, being Colgate and Anchor.
The court heldthat It is the overall impression that a consumer gets as to the source and origin of
the goods from visual impression of colour combination, shape of the container, packaging
etc. if an illiterate, unwary and gullible customer gets confused as to the source and origin of
the goods which he has been using for longer period by way of getting the goods in a
container having particular shape, colour combination and getup, it amounts to passing off.

United Distillers Plc v Jagdish Joshi & others (2000)

The plaintiff is the owner of trademark Johnnie Walker for Scotch whisky. The defendants
are manufacturers of Johnnie Walker Gutka. The plaintiffs sued the defendants for
infringement of trademark and trade dress. The court held that the trade dress used by the
defendant has a similarity with the trade dress of the plaintiff and had infringed the same.

4. TRADEMARK INFRINGEMENT AND PASSING OFF ACTIONS

Trademark infringement in India is defined under Section 29 of the Trademarks Act, 1999.
Simply put, when an unauthorized person uses a trademark that is 'identical' or 'deceptively
similar' to a registered trademark, it is known as infringement.
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Elements of Infringement of trademark:

 Unauthorized person – this means a person who is not the owner or the licensee of
theregistered trademark.
 'Identical' or 'Deceptively similar '– the test for determining whether marks are
identical ornot is by determining whether there is a chance for a likelihood of
confusion among the public. If the consumers are likely to get confused between the
two marks then there is aninfringement.
 Registered Trademark – You can only infringe a registered trademark. For an
unregistered Trademark, the common law concept of passing off will apply.
 Goods/ Services – In order to establish infringement even the goods/ services of the
infringer must be identical with or similar to the goods that the registered Trademark
represents.

Any unauthorized use of the exclusive statutory rights of a registered trademark constitutes
infringement. The infringement explained above is direct infringement. There is another aspect
to trademark infringement in India, i.e. indirect infringement.

General Principles Applicable to Infringement Cases

1) The comparison involves a global assessment of the likelihood of confusion as to origin of

the goods or services concerned. This involves an assessment of the distinctiveness of the
mark, andinvolves the assessment of many factors familiar in passing off cases.

2) The person to be considered in considering the likelihood of confusion is the customers,

who are rational but does not display excess carefulness or neither excess carelessness. They
have an imperfect memory, and therefore, may not thoroughly distinguish between
deceptively similar goods.

3) The mark is to be considered as a whole. All relevant similarities must be assessed having
regard to the fact that some aspects of the mark and sign will be more distinctive and
dominant than others.

4) The essentials features should have been copied by the defendant. In S.M Dyechem ltd v
Cadbury India Ltd, Supreme Court observed that the plaintiff must prove that essential
features ofthe mark must be copied by the defendant. The onus to prove deception is on the
plaintiff whoa alleges the deception. The mark is said to be infringed if the defendant, using
the mark as whole or partly, copied the essential features of the mark.
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PASSING OFF

Passing off arises when an unregistered trademark is used by a person who is not the
proprietor ofthe said trademark in relation to the goods and services of the trademark owner. It
is found on the principle that one person should not unlawfully enrich himself at the cost of
another. It is an actionable tort in India under the common law and is mainly used to protect
the goodwill attached to the goods and services which is related to the unregistered
trademark. In Durga Dutt vs. Navaratna Pharmaceutical , the court set the distinction between
passing off and infringement suit. The action for infringement is a statutory remedy conferred
on the registered owner of a registered Trade mark and has an exclusive right to the use of the
trade mark in relation to those goods. And the passing off is available to the unregistered
goods and services.

Passing off and Infringement is different in many ways. For example, infringement suit is a
statutory remedy while passing off is a common law remedy. The most important point is that
the remedy is same in both the cases but the Trademark is available to only the registered
goods andservices and passing off is available to unregistered goods and services.

Modern Elements of Passing off - In the case Erven Warnink Vs. Townend, Lord Diplock
gavethe essential modern characteristics of a passing off action. They are as follows: -

 Misrepresentation
 Made by a person in the course of trade
 To prospective customers of his or ultimate consumers of goods or services supplied
by him.
 Which is calculated to injure the business or goodwill of another trader.
 Which causes actual damage to a business or goodwill of the trader by whom the
action isbrought.

Case Law: Honda Motors Co. Ltd V Charanjit Singh & Others:

Plaintiff was using trademark "HONDA" in respect of automobiles and power equipments.
Defendants started using the mark "HONDA" for its pressure cookers. Plaintiff bought an
actionagainst the defendants for passing of the business of the plaintiff. : It was held that the
use of the mark "Honda" by the defendants couldn't be said to be an honest adoption. Its
usage by the defendant is likely to cause confusion in the minds of the public. The
application of the plaintiff was allowed.
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CONTENTS

MODULE IV: COPYRIGHT AND RELATED

RIGHTS

Page No.
1. Introduction and Concept of Copyright
1.1 Development and Need of Copyright
1.2. Nature and Concept of Copyright
1.3 Basic features of Copyright
1.3.1 Originality and Creativity
1.3.2 Skill and Labor (Doctrine of Sweat of the
Brow)
1.3.3 Idea Expression Dichotomy
1.3.4 Authorship and Ownership of Copyrights
2. Works in which Copyrights Subsist
3. Statutory and Contractual Aspect of Copyright
3.1 Term of Copyright
3.2 Registration of Copyright
3.3. Assignment of Copyright
3.4 Copyright Board
3.5 Powers and Functions of Copyright Board
4. Infringement of Copyright
4.1 Direct and Indirect Infringement of Copyright
4.2 Defenses against infringement liability
4.3 Remedies available for infringement of Copyright
4.3.1 Anton Pillar Orders
4.3.2 Mareva Injunctions

1. INTRODUCTION AND CONCEPT OF COPYRIGHT

1.1 Development and Need of Copyright

The idea of Copyright protection only began to emerge with the invention of printing, which
madeit for literary works to be duplicated by mechanical processes instead of being copied
by hand.
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This led to the grant of privileges, by authorities and kings, entitling beneficiaries exclusive
rights of reproduction and distribution, for limited period, with remedies in the form of fines,
seizure, confiscation of infringing copies and possibly damages.

However, the criticism of the system of privileges led to the adoption of the Statute of Anne
in 1709, the first copyright Statute. In the 18th century there was dispute over the
relationship between copyright subsisting in common law and copyright under the Statute of
Anne. This wasfinally settled by House of Lords in 1774 which ruled that at common law the
author had the sole right of printing and publishing his book, but that once a book was
published the rights in it wereexclusively regulated by the Statute. This common law right in
unpublished works lasted until theCopyright Act, 1911, which abolished the Statute of Anne.

Copyright is a well recognized form of property right which had its roots in the common law
system and subsequently came to be governed by the national laws in each country.
Copyright asthe name suggests arose as an exclusive right of the author to copy the literature
produced by him and stop others from doing so. There are well-known instances of legal
intervention to punish a person for copying literary or aesthetic out put of another even
before the concept of copyright took shape. The concept of idea was originally concerned
with the field of literature and arts. In view of technological advancements in recent times,
copyright protection has been expanded considerably. Today, copyright law has extended
protection not only to literary, dramatic, musical and artistic works but also sound recordings,
films, broadcasts, cable programmes and typographical arrangements of publications.

Computer programs have also been brought within the purview of copyright law. Copyright
ensures certain minimum safeguards of the rights of authors over their creations, thereby
protecting and rewarding creativity. Creativity being the keystone of progress, no civilized
society can afford to ignore the basic requirement of encouraging the same. Economic and
social development of a society is dependent on creativity. The protection provided by
copyright to the efforts of writers, artists, designers, dramatists, musicians, architects and
producers of sound recordings, cinematograph films and computer software, creates an
atmosphere conducive to creativity, which induces them to create more and motivates others to
create. In India, the law relating to copyrightis governed by the Copyright Act, 1957 which has
been amended in 1983, 1984, 1985, 1991, 1992, 1994, 1999 and 2012 to meet with the
national and international requirements. The amendment introduced in 1984 included
computer program within the definition of literary work and a new definition of computer
program was inserted by the 1994 amendment.
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The philosophical justification for including computer programs under literary work has been
that computer programs are also products of intellectual skill like any other literary work. In
1999, the Copyright Act, 1957 was further amended to give effect to the provisions of the
TRIPs agreementproviding for term of protection to performers rights at least until the end of a
period of fifty years computed from the end of the calendar year in which the performance took
place. The Amendment Act also inserted new Section 40A empowering the Central
Government to extend the provisions of the Copyright Act to broadcasts and performances
made in other countries subject to the condition however that such countries extend similar
protection to broadcasts and performances made in India. Another new Section 42A empowers
the Central Government to restrict rights of foreign broadcasting organizations and performers.

The Act is now amended in 2012 with the object of making certain changes for clarity, to
removeoperational difficulties and also to address certain newer issues that have emerged in
the contextof digital technologies and the Internet. Moreover, the main object to amendments
the Act is thatin the knowledge society in which we live today, it is imperative to encourage
creativity for promotion of culture of enterprise and innovation so that creative people realize
their potential and it is necessary to keep pace with the challenges for a fast growing
knowledge and modern society.

1.2 Nature and Concept of Copyright

Copyright protects literary and artistic works, as the title of the Berne Convention states. The
two concepts need to be taken in a very broad sense. The term literary, for example, does not
mean just novels, poems or short stories: it could cover the maintenance manual of a car, or
even things that are written but not supposed to be understood by the average human being,
such as computer programs. The key to this expression in fact is the word “works”. What we
mean by that is that expression, human expression, is the determining factor. So, if I have the
idea of painting “sunset over the sea”, anyone else can use the same idea, which is not
protected. But when I actually produce my painting of “sunset over the sea” the painting itself
is expression, and that is protected.

1.3 Basic features of Copyright

Copyright gives the author of certain types of material rights to control the use or
commercial exploitation of the work that he or she has created. This includes rights to authorise
or prohibit the copying, issuing of copies, renting or lending, performing, showing, playing,
broadcasting or adaptation of the copyright material.
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1.3.1 Originality and Creativity

Originality is an important legal concept with respect to copyright. Originality is the aspect
of a created or invented work that makes it new or novel, and thereby distinguishes it from
reproductions, clones, forgeries, or derivative works. In this regard, an original work stands
out because it was not copied from the work of others.

There is no objective minimum amount of content required for a work to be included within
the scope of copyright. The Copyright Act defines only two requirements for
copyrightability: original authorship (“originality”) and fixation. “Original” means a work
created through the “fruits of intellectual labor.” “Originality” therefore requires not only
that the author has not copied the work from another, but also that there is “at least some
minimal degree of creativity.”

In the case of Feist Publications, Inc. v. Rural Telephone Service, the U.S. Supreme Court
explained that the requirement of originality is not particularly stringent and is comprised of
two elements: that the work be independently created by the author (as opposed to copied
from other works) and that it possesses at least some minimal degree of creativity. A work
satisfies the “independent creation” element so long as it was not literally copied from
another, even if it is fortuitously identical to an existing work. The “creativity” element sets
an extremely low bar that is cleared quite easily. It requires only that a work possess some
creative spark, no matter how crude, humble, or obvious it might be.

1.3.2 Skill and Labor (Doctrine of Sweat of the Brow)

According to this doctrine, an author gains rights through simple diligence during the
creation ofa work. Substantial creativity or “originality” is not required. The creator is entitled
to such rightson account of efforts and expense put in by him in the creation of such a work.
For Example, the creator of a telephone directory or a database must have a copyright over the
product not because such a compilation of data showcases any creativity, or the author has
expressed anything original, but merely because of the effort, time and money invested by the
creator to collect and organize all the data in a specific manner. But such a compilation must
be the work of the author himself and must not be copied from another source.

Modicum of creativity

The concept of “originality” has undergone a paradigm shift from the “sweat of the brow”
doctrine to the “modicum of creativity” standard put forth in Feist Publication Inc. v. Rural
Telephone Service[3] by the United States Supreme Court. The doctrine of “sweat of the
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brow” provides copyright protection on basis of the labour, skill and investment of capital
put in by the creator instead of the originality. InFeist’s case, the US Supreme Court totally
negated this doctrine and held that in order to be original a work must not only have been the
product of independent creation, but it must also exhibit a “modicum of creativity”. The
Supreme Court prompted ‘creative originality’ and laid down the new test to protect the
creation on basis of the minimal creativity. This doctrine stipulates that originality subsists in a
work where a sufficient amount of intellectual creativity and judgment has gone into the
creation of that work. The standard of creativity need not be high but a minimum level of
creativity should be there for copyright protection.

Position in India

India strongly followed the doctrine of ‘sweat of the brow’ for a considerably long time. The
Supreme Court of India, following the approach of English Courts, observed that copyright
law does not prevent a person from taking what is useful from an original work with
additions and improvements. The Court has held neither original thought nor original research
are necessary for claiming copyright and even compilations such as dictionaries, gazettes,
maps, arithmetic, almanacs, encyclopedias etc. are capable of having copyright. In the case
of Burlington Home Shopping v Rajnish Chibber, were the facts were similar to that of Feist’s
case, the court following the doctrine held that a compilation is copyrightable.

However, the standard of ‘originality’ followed in India is not as low as the standard
followed inEngland. The Bombay High Court in its judgement regarding copyright of a news
article stated that there is no copyright for happenings and events which could be news
stories and a reporter cannot claim any copyright over such events because he/she reported it
first. The ideas, information, natural phenomena and events on which an author spends his/her
skill, labour, capital, judgment and literary talents are common property and are not the
subject of copyright. Hence, there is no copyright in news or information per se. However,
copyright may be obtained for theform in which these are expressed because of the skill and
labour that goes into the writing of stories or features and in the selection and arrangement of
the material.

The most important Indian Case on this subject is Eastern Book Company v. D.B. Modak,
where the Supreme Court discarded the ‘Sweat of the Brow’ doctrine and shifted to a
‘Modicum of creativity’approach as followed in the US. The dispute is relating to
copyrightability of judgements. The facts of the case is that SCC, the Supreme Court Case
reporter, was aggrieved by other parties infringing their copyright and launching software
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containing the judgements edited by SCC along with other additions made by the editors of
SCC like cross references, head notes, the short notes comprising of lead words and the long
note which comprises of a brief description of the facts and relevant extract from the judgments
of the court and standardisation and formatting of text, etc. The notion of “flavour of minimum
requirement of creativity” was introduced in thiscase. It was held that to establish copyright,
the creativity standard applied is not that something must be novel or non-obvious, but some
amount of creativity in the work to claim a copyright is required. The Court held that these
inputs made by the editors of SCC can be given copyright protection because such tasks
require the use of legal knowledge, skill and judgement of the editor. Thus, this exercise and
creation thereof has a flavour of minimum amount of creativity and enjoy the copyright
protection.

Accordingly, the Court granted copyright protection to the additions and contributions made
by the editors of SCC. At the same the Court also held that the orders and judgments of the
Courts are in public domain and everybody has a right to use and publish them and therefore no
copyright can be claimed on the same.

In subsequent cases, the Indian courts followed this approach and completely rejected the
plea to protect mere works of compilation under copyright. Copyright is conferred on those
works which has originated from author and which is not merely a copy of the original work.
This does not push the standard of originality expected to a considerably high level, but
brings in a subtle balance between ensuring reward for the efforts of an author while also
maintaining a reasonable standard in the materials protected under law.

1.3.3 Idea Expression Dichotomy

An exceptionally pervasive region of discussion in the field of Copyright has been the idea
expression dichotomy.

There exists no copyright in ideas. It is only when the idea is expressed in a protectable form,
it can be granted a copyright. Therefore, it is not the idea but the expression which is
protected. Anidea is the formulation of thought on a particular subject whereas an expression
constitutes the implementation of the said idea. So basically even if a number of people
comes up with a similaridea, protection shall only be given the one which has implemented
the idea in some form of expression. Such expression must be a explicit, particular
preparation of words, designs or other forms. Thus, such this doctrine is utilised to protect
multiple forms of the same idea.
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Two authors may have the same idea for a book. However the way they express themselves
i.e., the way they put down their idea in a tangible form is what that makes a [Link]
basically when an idea is tranlated into expression it is protected. Similarly Computer programs
are regarded as literary works . Although a general idea cannot be copyrighted, but when such
an idea is expressed in the form of drawings, writing etc. where human labour is invested,
can be protected and cases can be filed for infringement. Such cases involve stealing of the
specific expression ofthe idea and not the idea itself.

The main reason for granting protection to expressions and not ideas is to protect the free
flow of ideas. Ideas are too precious to be copyrighted. The copyrighting of ideas would
bring creativity and innovation to a standstill. It is for this reason that the freedom to copy or
getting inspired from ideas is central to the structure of the copyright laws.

Development of the Indian Law

The law regarding copyrights in India has been comprehensively stated under the Copyrights
Act, 1957. The Copyright Act, does not define neither an idea nor expression and is also silent
on the difference in the action of the two. From the judicial perspective as well, there has
not been much development in the principle of idea-expression dichotomy due to very less
number of case laws.

The case of R.G. Anand v. Deluxe Films[AIR 1978 SC 1613], the issue of idea-expression
dichotomy which came before the Supreme Court was one of the most early and vital cases
in India on the concept. Here, in this case, the plaintiff, was a part-time playwright and
producer of stage plays complained that the defendant, who was a film-maker had copied
extensive portions from his play and had remade it into a movie. The main theme of the play
was provincialism, where the plot implicated persons from different provinces (Punjab and
Tamil Nadu). The movie taken the same theme, simply reversing the gender of the person
belonging to the above mentioned provinces. The plaintiff filed a case for violation of his
copyright. The respondent argued that thetheme idea was common to both the play and it was
not plaintiff’s original or creative idea.

The Court first compared the play and the movie from a broad perspective and stated that the
film’s theme was broader, as it is covering both provincialism and dowry practices. The
Court held thatcopyright cannot be acquired over an idea (the idea here is provincialism in this
case), and factually held that the dissimilarities between the two works was substantial enough
for one to conclude that there was no colourable replication of his play’s script. As it
was a
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Supreme Court decision, the principles enumerated in this case form part of the law of the
land and holds good even in the current days.

This case was also applied by Kerala High Court in deciding the case of R. Madhavan v. S.K.
Nair (1988 Ker. 39). The court found that the resemblance or similarity in the theme, scenes
and situations of the film and hence the novelty criteria was clearly lacking. The material
incidents, situations and scenes depicted on the film were significantly and materially
different from those in the plaintiff’s novel.

But again an exception was also noticed in one of the cases. In 2002, it was the turn of the
Delhi High Court addressed the issue of idea-expression dichotomy in the case of Anil Gupta
v. Kunal Dasgupta (IA 8883/2001 in Suit no.1970 of 2001 ). The plaintiff came up with the idea
of a reality match-making television programme and approached the defendant regarding the
working on the same. The plaintiff argued that the defendant had stolen his idea and
implemented it and claimed for infringement action against violation of his copyright. The
defendant argued that it was only the expression of the idea and not the idea itself which could
be protected under the copyright. The Court agreed that an idea per se cannot be protected by a
copyright and also ruled that where theconcept which is the subject matter of the dispute is a
novel and innovative concept, and hence it can be copyrighted even though it is just a mere
idea.

In the recent scenarios, judgment reporting was added as another facet to idea expression
dichotomy when in 2008, where the Supreme Court came up with the decision of Eastern
Book Company and Ors. v. D.B. Modak (AIR 2008 SC 809). The court declared that the
Copyright is less concerned with the originality of ideas, rather more with the expression of
such thought. On the issue of whether "copy–edited" judgments were entitled to copyright
protection, it was decided that the judgments of a Court which are in the public domain and no
copyright can be claimed onthe same.

Other High Court judgments on this issue includes, Mattel Inc. v. Mr. Jayant Agarwalla[2008
(38) PTC 416 (Del).] which was with reference to the famous “Scrabble” board game along
with Barbara Taylor in the case of Bradford v. Sahara Media Entertainment Ltd.[ 2004 (28)
PTC 474 (Cal).], which was with reference to the adaptation of a book titled “A Woman of
Substance” into a TV show named “Karishma - The Miracle of Destiny”.

So basically as we can see that the courts have to be very much alert while differencing
betweenthe copy of an idea or a plot and an expression of the author. The courts have to be
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also careful while ruling the differentiating points between an idea and from where its
expression start.

1.3.4 Authorship and Ownership of Copyrights Ownership of Copyright

Ownership in Copyright is different from other ownership in physical material in which
work is fixed. A person owning a book may not be the owner of the Copyright of the book.
As per the general rule, the author is the first owner of Copyright of a work. The Copyright
Laws provide certain exceptions to the general rule mentioned above, which are necessary to
clearly examine the two different concepts of Ownership and Authorship of Copyright in
India. To clear the above point, if a painting, photograph, or a portrait is made at the instance
of any other person for a valuable consideration, such other person is the first owner of the
Copyright in such a case.

The creator/inventor of an idea of creation/invention is also not the true owner of Copyright
in work, unless he/she is the creator/inventor of the work. Therefore, any person is having
any brilliant idea, and he/she communicates the idea to a dramatist who later on goes on to
make a play on the same idea, the originator/creator of idea has no right in the product of the
dramatist, as a Copyright subsists in a tangible form and not in a mere idea.

Section 17 of the Copyright Act, 1957, provides for provisions of acquiring Ownership of
Copyright. The Ownership right is available only if the person qualifies the provision
of the Copyright Act, 1957. In other laws prevailing in India, no other remedy is available to
counter the violation of Ownership of Copyright.
Section 17 of the Copyright Act, 1957, provides for the provision that the first owner of
Copyright is defined to be the author of the work. The definition of the author is defined
separately under the Copyright Act, 1957, to clearly explain the distinction between the
Ownership and Authorship of Copyright in India. The definition of author related to
various works is provided under the Copyright Act, 1957.

Authorship of Copyright
An author is an individual who writes, collects, composes, and draws the work in issue,
althoughthe whole idea of the work was suggested by some other person. The rationale behind
the concept of an author is that the originator of a brilliant idea is not the Copyright owner in
the work, unless he/she is also the creator of the work. The nationality of an author is not
the prime factor to determine the right of an author to a Copyright under the Copyright
Act,
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1957. Though, the existence of Copyright has certain essential requirements under Section
13 (2) of the CopyrightAct, 1957.

The essential requirements under Section 13(2) of the Copyright Act, 1957 are as follows:

• Published work

The work should be published in India, or when publication is done outside India, the author
of the work, at the date of publication, must be a citizen of India, if alive at that date, or if
dead, at the time of the death of the author.

• Unpublished work

As per Section 7 of the Copyright Act, 1957, where the making of the work was extended
for a considerable time period, the author of a work, should be deemed to be a citizen of, or
domiciledin, the country of which he/she was a citizen or wherein he/she was domiciled for
any substantial part of that time period. The unpublished work does not include the
architectural works.

• Architectural work

The architectural work of the author should be located in India only then the work will be
considered as a subject of copyright protection under the Copyright Act, 1957, in India.

On the other hand, as a rule, the author is the first owner of the Copyright in the
work. The Copyright Act, 1957, under Section 2(d) defines the author of various
works as follows:

• In the case of literary or dramatic works, the author of the work is the author,
• In the case of musical works, the composer of the work is the author,
• In the case of an artistic work other than the photographs, the artist of the work is
theauthor,
• In the case of a photograph, the person who takes a photograph is the author,
• In the case of cinematographic films, the producer of the work is the author,
• In the case of sound recordings, the producer of the work is the author, and
• In the case of literary, dramatic, musical, or artistic works, which is computer-
generated,the person who causes the works to be created is the author.
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As per Section 2 (ffa) of the Copyright Act, 1957, a “Composer” in relation to a musical
work means any person who composes the music irrespective of the fact that whether he/she
records the musical works in any form of graphical notation. Though, the definition of the
composer may not enable him/her to prove his/her authorship except the composition of
musical work is recorded inany form of musical notation or otherwise. As per Section 2 (p)
of the Copyright Act, 1957, a “Musical work” means a work comprising of music and
contains any graphical notation of such work but does not include any words or actions
intended to be spoken, sung or performed with the music.

The statutory exceptions related to Ownership and Authorship of Copyright in India

are asfollows

• Literary, dramatic, artistic work

Under Section 17 (a) of the Copyright Act, 1957, where any literary, dramatic or artistic
work ismade by an author in the course of his/her employment or service by the owner of a
magazine, newspaper or similar periodical under a contract of service or traineeship, for the
purpose of publishing the work of an author in a newspaper, magazine or any such periodical, etc.,
the owner, in the absence of any prior agreement to the contrary, will be the first owner of the
Copyright of the work of the author. The rule, as mentioned above, applies so far as it relates to
the publishingof the work in the magazine, newspaper, etc. or the reproduction of the work for
the purpose of work being so published. But in all other cases, the author will be considered the first
owner of the Copyright.

• Photograph, painting, portrait, engraving or cinematographic film

As per Section 17 (b) of the Copyright Act, 1957, the cases where a painting or portrait is
drawn,or where a photograph is taken, or an engraving or cinematographic film is made for a
valued consideration at the instance of any such person, in the absence of any prior
agreement to the contrary, the person who paid valuable consideration will be the first owner
of the Copyright.

Where, however, any person does any of the things as mentioned above in the course of
his/her employment or service by the owner of a newspaper, magazine or similar periodical
under a contract of service or traineeship, for the purpose of publishing the work in a
newspaper, magazine or any such periodical, etc., the said owner of the magazine, newspaper,
etc., in the absence of any prior agreement to the contrary, will be the first owner of the
Copyright.
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• Work made in the course of employment

The Copyright Act, 1957, as per Section 17 (c) [1], provides that in the case where a work is
madeby the author in the course of employment under a contract of service or traineeship, the
employer or proprietor (not being proprietor or owner of a magazine, newspaper or similar
periodical), in the absence of any prior agreement to the contrary, is the first owner of the
Copyright.

• Lectures delivered in public

As per Section 17 (cc) of the Copyright Act, 1957, in the case where any person has
delivered any speech or address in public, that same person delivering the speech or address
will be the firstowner of the Copyright. In case if the speech or address is delivered on behalf
of some other person, such other person will be the first owner of Copyright. The same
situation is also in the case if any person who delivers the speech, is employed by any other
person, who arranges such speech or address or on whose behalf or premises the speech or
address is delivered will be the first owner of the Copyright. In the case of Nicols vs. Pitman
{[1884] 26 Ch D 374}, the students were held not permitted to publish the notes of lectures
which they attended.

• Government work
Under Section 17 (d) of the Copyright Act, 1957, in the case of any government work, in
the absence of any prior agreement to the contrary, the government will be the first owner of
the Copyright.

• Work made on behalf of a public undertaking

As per Section 17 (dd) of the Copyright Act, 1957, in the case where any work is made or
firstpublished by or as per the control or direction of any public undertaking, in the absence
of any agreement to the contrary, such a public undertaking will be the first owner of
Copyright.

• Works of certain international organizations

As per Section 17 (dd) and Section 41 of the Copyright Act, 1957, in the case where any
workof international organization is made, the international organizations concerned, will be
the first owner of the Copyright.
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2. WORKS IN WHICH COPYRIGHT SUBSISTS

Section 13 of the Copyright Act provides that copyright shall subsist throughout India in
certain classes of works which are enumerated in the section. Copyright subsists throughout
India in thefollowing classes of works:

• Original literary, dramatic, musical and artistic works;

• Cinematograph films; and

• Sound recordings.

In Macmillan and Company Limited v. K. and J. Cooper, AIR 1924 PC 75, it was held that
the word ‘original’ does not mean that the work must be the expression of original or
inventive thought. Copyright Acts are not concerned with the origin of ideas, but with the
expression of thought; and in the case of ‘literary work, with the expression of thought in
print or writing. The originality which is required relates to the expression of the thought; but
the Act does not require that the expression must be in an original or novel form, but that the
work must not be copied fromanother work—that it should originate from the author. What is
the precise amount of the knowledge, labour, judgement or literary skill or taste which the
author of any book or other compilation must bestow upon its composition in order to
acquire copyright in it within themeaning of the Copyright Act cannot be defined in precise
terms. In every case it must depend largely on the special facts of that case, and must in each
case be very much a question of degree.

In Camlin Private Limited v. National Pencil Industries, (2002) Del, Delhi High Court held
that copyright subsists only in an original literary work. But it is not necessary that the work
should be the expression of the original or inventive thought, for Copyright Act are not
concerned with the originality of ideas, but with the expression of thought, and in the case of a
literary work, with the expression of thought in print or writing. Originality for the purpose of
copyright law relates to the expression of thought, but such expression need not be original or
novel. The essential requirement is that the work must not be copied from another work but
must originate from the author.

An artistic work means-

• a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an

engraving ora photograph, whether or not any such work possesses artistic quality;
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• a work of architecture; and

• any other work of artistic craftsmanship.

Word “artistic” is merely used as a generic term to include the different processes of creating
works set out in the definition section and that provides that a work produced by one such
processes, and that its creation involved some skill or labour on the part of the artist, it is
protected [Associated Publishers (Madras) Ltd. v. K. Bashyam alias ‘Arya’ & Another AIR
1961 Mad. 114 (1962) 1 Mad LJ 258].

What is required for copyright protection in an artistic work is ‘originality’. It is not

originality of idea or the theme behind the work but the expression of the work which
requires to be original. The originality required as per the Act is a minimum amount of
originality. What is prevented under the Copyright Act is making of copies without permission
of the author. A copy is one which is either a reproduction of the original or a work which
closely resembles the original [Challenger Knitting Mills v. Kothari Hosery Factory 2002 PTC
(24) 756 Del. (Reg.)].

“Musical work” means a work consisting of music and includes any graphical notation of
such work but does not include any words or any action intended to be sung, spoken or
performed with the music. A musical work need not be written down to enjoy copyright
protection.

“Sound recording” means a recording of sounds from which sounds may be produced
regardlessof the medium on which such recording is made or the method by which the sounds
are produced.A phonogram and a CD-ROM are sound recordings.

“Cinematograph film” means any work of visual recording on any medium produced
through a process from which a moving image may be produced by any means and includes
a sound recording accompanying such visual recording and “cinematograph” shall be
construed as including any work produced by any process analogous to cinematography
including video films.

The expression “cinematograph film” in Section 2(f) of the Copyright Act, 1957 includes
video film also which has been recorded in VCR. Entertaining Enterprises & Others v. State
of Tamil Nadu & Another AIR 1984 Mad. 278.

The Bombay High Court in Fortune Films International v. Dev Anand & Another AIR 1979
Bom.17, has held that in view of the definitions of “artistic work”, “dramatic work” and
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cinematograph film”, it would appear that the Copyright Act, 1957 does not recognize the
performance of an actor as ‘work’ which is protected by the Copyright Act

3. STATUTORY AND CONTRACTUAL ASPECT OF COPYRIGHT

3.1 Term of Copyright

Sections 22 to 29 deal with term of copyright in respect of published literary, dramatic,

musical and artistic works; anonymous and pseudonymous; posthumous, photographs,
cinematographfilms, sound recording, Government works, works of PSUs and works of
internationalorganisations. Literary, dramatic, musical or artistic works enjoy copyright
protection for the lifetime of the author plus 60 years beyond i.e. 60 years after his death. In
the case of joint authorship which implies collaboration of two or more authors in the
production of the work, the term ofcopyright is to be construed as a reference to the author
who dies last.

In the case of copyright in posthumous, anonymous and pseudonymous works, photographs,

cinematograph films, sound recordings, works of Government, public undertaking and
international organisations, the term of protection is 60 years from the beginning of the
calendaryear next following the year in which the work has been first published.
The Copyright (Amendment) Act, 1994 has given special right to every broadcasting
organization known as broadcast reproduction right in respect of its broadcasts. This right is to
be enjoyed by every broadcasting organisation for a period of twenty-five years from the
beginning of the calendar year next following the year in which the broadcast is made. In
terms of Copyright (Amendment) Act, 1999 if any performer appears or engages in any
performance, he has a special right in relation to such performance called performers right to be
enjoyed for a period of fifty years.

3.2 Registration of Copyright

A copyright shall subsist in a work from the moment it is created and it is not mandatory to
get it registered, however, registration safeguards copyright against any disputes relating to
the ownership of copyright. Certificate of registration of copyright and the Register of
Copyright containing particulars of registered copyrights are admissible evidence in the court
of law. Therefore it is advisable to get the copyright registered with the Copyright Office in the
following manner (Section 45 of Copyright Act, 1957 read with Rule 70 of Copyright Rules,
2013):
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• Any individual who is an author or owner or assignee or legal heir can file an application
for registration of copyright. Such application must be made with the Copyright Office in
person or by speed/registered post or through e-filing facility available on the website of the
Copyright Office ( [Link])

• Every such application will be in respect of one work only. For example, if a work
consists ofboth literary and musical work, then different application must be filed for each
of them.

• The application must be made in Form XIV with the following required
information/documents

• Name, address, nationality of the applicant

• Nature of applicant’s interest in the work

• Title of the work

• Name, address, nationality of the author of the work and if the author is deceased, date of
hisdeath

• Language of the work

• Whether the work is published or unpublished

• Year and Country of first publication and Name, address, nationality of the publisher

• Year and Countries of subsequent publications, if any, and name, address, nationality
ofsubsequent publishers

• Name, address, nationality of person authorized to assign or license the rights comprising
thecopyright, if any

• No-objection Certificate signed by the author (if different from applicant)

• Vakalatnama or Power of attorney signed by the advocate and the party (if the
application ismade by the advocate of the party)

• Three copies of published work must be sent along with the application.

• If the work is unpublished, two copies of the manuscripts must be sent with the
application (one copy will be duly stamped and returned and other will be retained).

• Application for registration of a computer programme must be filed with the source and
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object code.

• Application for registration of an artistic work used or capable of being used in relation to
goods must be filed with a statement to that effect and a no-objection certificate from the
Registrar ofTrademarks.

• Application for registration of an artistic work capable of being registered as a design

must be filed with a statement in the form of an affidavit stating that it has not been
registered under Designs Act, 2000 and has not been applied to any article through
industrial process.

• Application must be signed by the applicant or the advocate

• Applicant must provide his mobile number and email address to receive the filing
number Form XIV is available on this link :
[Link]

• Requisite fees must be paid through Demand Draft or Indian Postal order in favour of
Registrar of Copyright payable at New Delhi or through Fee payment. The amount of fees
may vary from INR 500 to INR 2000 per work depending on the type of work. It can be
checked from this link : [Link]

• The applicant will be provided with a filing number and filing receipt from the Copyright
Office.

• The applicant shall give notice of his application to every person who claims or has
interest inthe subject-matter of copyright or disputes the rights of the applicant to it.

• Time Period for processing application – 30 days. If the Registrar of Copyright receives
no objection to such registration within 30 days of the receipt of application, he shall, if
satisfied with the particulars of application on examination, enter the particulars of
copyright in the Register of Copyrights and issue a Certificate of Registration.

• If any objection is received against the registration or the Registrar is not satisfied with
the application on examination, he may, after holding such enquiry as he deems fit, provide
further 30 days to the applicant to submit necessary information/documents.

• On further submission of documents/information, if the Registrar is satisfied with the

correctness of the application, he shall enter the particulars of copyright in the Register of
Copyrights and issue a Certificate of Registration for the copyright.
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• The Registrar of Copyright shall give an opportunity of being heard to the applicant
before rejecting any application for registration of any work.

• The process of registration is deemed to be completed when a copy of the entries made in
the Register of Copyrights duly signed by the Registrar is issued to the parties
concerned.

3.3. Assignment of Copyright

The owner of the copyright in an existing work or the prospective owner of the copyright in
a future work may assign to any person the copyright Section 18 of the Copyright Act
provides forthe assignment of copyright in an existing work as well as future work. In both
the cases an assignment may be made of the copyright either wholly or partially and
generally or subject to limitations and that too for the whole period of copyright or part
thereof. However, in case of assignment of copyright in any future work, the assignment has the
real effect only when the work comes into existence. Section 18(3) explains that a assignee in
respect of assignment of the copyright in future work include the legal representative of the
assignee, if the assignee dies before the work comes into existence.
Sections 17 and 18 of the Copyright Act, 1957 show where the copyright vests. If a work is
done by an author for a consideration for a publisher, the copyright in it would normally vest
in the publisher subject to any contract to the contrary, as is provided by Section 17 of the
said Act. It can be legitimately said that this Section has been inserted in the Act of 1957, but
the rule of lawhas been same even prior to this statutory provision. Secondly as provided by
Section 18, the copyright could be assigned, and if it is so done it would be vested in the
purchaser. (Khemraj Shrikrishnadass v. M/s Garg & Co. and Another AIR 1975 Del 130.)
Mode of Assignment
Section 19 of the Act provides that an assignment of copyright should be in writing signed
by the owner of the copyright. Mere acceptance of remuneration or delivery of manuscript
does not
constitute an assignment of copyright. Oral assignment is invalid and it is impermissible in
law. Setty v. Dr. Suryakantha U. Kamath K.A. Venugopala Setty v. Dr. Suryakantha U.
Kamath AIR 1992 Kar 1. Section 19 requires that the assignment should be in writing signed
by the assignor or by his duly authorized [Link] the assignment appears from any document
and it is signed by the assignor or by his authorized agent the statutory requirement is fulfilled.
Srimagal and Co. v. Books (India) Pvt. Ltd. & Others AIR 1973 Mad 49: (1972) 2 Mad LJ
610. Copyright is different from the material object which is the subject of the copyright. So
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it should be clear that the transfer of the material object does not necessarily involve a
transfer of the copyright.
The assignment of copyright should specify the assigned work, rights including duration,
territorial extent of assignment and the amount of royalty. However, in the absence of duration
and territorial extent, the assignment remains valid for a period of five years and within the
territory of India.
In case assignee does not exercise his rights within a period of one year from the date of
assignment, the assignment in respect of such rights shall be deemed to have lapsed after the
expiry of said period, unless otherwise specified in the assignment. The assignment of
copyright in any work contrary to the terms and conditions of the rights already assigned to a
copyright society in which the author of the work is a member is void. The Assignment of
copyright in any work to make a cinematograph film does not affect the right of the author
of the work to claim an equal share of royalties and consideration payable in case of
utilization of the work in any form other than for the communication to the public of the
work, along with the cinematograph film in a cinema hall.
The assignment of the copyright in any work to make a sound recording which does not
form part of any cinematograph film does not affect the right of the author of the work to claim
an equalshare of royalties and consideration payable for any utilization of such work in any
form.

3.4 Copyright Board

The Copyright Board, a quasi-judicial body, was constituted in September 1958. The
jurisdiction of the Copyright Board extends to the whole of India. The copyright board is a
body constituted by the central govt. to discharge certain judicial function under the Act. The
Board is entrusted with the task of adjudication of disputes pertaining to copyright
registration, assignment of copyright, grant of Licenses in respect of works withheld from
public, unpublished Indian works, production and publication of translations and works for
certain specified purposes. It also hears cases in other miscellaneous matters instituted before
it under the Copyright Act, 1957

It consists of a chairman and not more than fourteen other members. The Chairman and the
members shall hold their office for five years. They may be reappointed on the expiry of the
tenure. The chairman of the copyright board must be a person who is or has been judge of a
High Court or is qualified for appointment as a judge of a High Court. There is no
qualification mentioned about the members of the Board.
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The Registrar of Copyright also plays a very important role. The Registrar of the copyright
board will perform all secretarial functions of the copyright board. The Registrar of the
Copyright is the authority under Section 9 of the Act who is the officer of the Copyright
Office. The Registrar of Copyright has powers of the civil court. And every order made by
the registrar of payment of money is deemed as a decree of a civil court and is executed as
decree of such court.

3.5 Powers and Functions of Copyright

BoardPowers of Copyright Board

The copyright board has been constituted to perform judicial functions. Therefore, the
copyright
board has been accredited with the powers of civil court for the purpose of Sec. 345 & 346 of
the Code of Criminal Procedure, 1973. All proceedings of the court are judicial proceedings
within the meaning of Sec. 193 & 228 of Indian Penal Code, 1860. In exercise of the civil
court power, the copyright board may issue summons and enforce the attendance of any
person and may examine him on oath, requiring the discovery and production of the document,
receiving evidence on affidavit issuing commission for the examination of witness and
documents and requisitioning public record or copy thereof from any court.

The Registrar of Copyright and the Copyright Board have the powers of a civil court in respect
of the following matters:

(a) Summoning & enforcing the attendance of any person and examining him on oath
(this jurisdiction extends to the whole of India);

(b) Requiring the discovery and production of any document;

(c) Receiving evidence on affidavit;

(d) Issuing commission for the examination of witnesses and document;

(e) Requisitioning any public record or copy thereof from any court or office;

(f) Any other matter which may be prescribed.

Functions of Copyright Board

The first and foremost function of the copyright board is to look after whether the provisions
of the Act are followed without any violation or infringement and to adjudicate certain cases
pertaining to copyrights.
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Other than this, the copyright board has been provided direct jurisdiction in relation to matters:

(1) To decide the issue of publication and its date in order to determine the term of copyright
(2) To decide the term of copyright which shorter in any other country than that provided
in respect of that work under the Act. (The decision of the Copyright board on the above
question will be final)

(3) To settle disputes related to assignment of copyright

(4) To grant compulsory licenses for Indian work

(5) To grant compulsory licenses to publish the unpublished work

(6) To grant compulsory licenses to produce and publish translation of literary and dramatic
works

(7) To grant compulsory licenses to reproduce and publish certain categories of literary,
scientific or artistic works for certain purposes

(8) To rectify the Register of copyrights on the application of registrar of copyrights or any
aggrieved persons

Other than this, another important function of Copyright Board is carried out by the
Registrar of Copyright Board. The Registrar maintains a Register of Copyrights containing
the names or titlesof works and the names and addresses of authors, publishers and owners of
copyright and other particulars as may be prescribed. The Register of Copyright will be kept
in six parts as follows:

Part I – Literary works other than computer programs, tables and compilations including
computer databases and dramatic works.

Part II – Musical

worksPart III –

Artistic works

Part IV – Cinematograph

filmsPart V – Sound

recordings

Part VI – Computer programs, tables and compilations including computer databases.

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As per Sec. 50A of the Act every entry made in the Register of Copyright should be
published inthe official gazette or in such manner as the registrar may deem fit.

Registration of Copyright: registration of copyright is not compulsory under sec. 44 of the

Act. The registration is neither required for acquiring copyright nor for enforcement.
Registration is merely a piece of evidence as to when certain author started claiming
copyright in the artistic or other work.

4. INFRINGEMENT OF COPYRIGHT

4.1 Direct and Indirect Infringement of Copyright

Copyright infringement refers to the unauthorized use of someone’s copyrighted work. Thus,
it is the use of someone’s copyrighted work without permission thereby infringing certain rights
of the copyright holder, such as the right to reproduce, distribute, display or perform the
protected work.

Section 51 of the Copyright Act specifies when a copyright is infringed. According to

Section 51of the Act, Copyright is deemed to be infringed if:

• A person without obtaining the permission of the copyright holder does any act
whichonly the copyright holder is authorised to do.
• A person permits the place to be used for communication, selling, distribution or
exhibition of an infringing work unless he was not aware or has no reason to
believe that such permission will result in the violation of copyright.
• A person imports infringing copies of a work
• A person without obtaining the authority from the copyright holder reproduces his
workin any form.

Copyright Infringement examples

• If a person uses someone’s song as background music in his/her music video

then hecould be made liable for copyright infringement.
• If a person downloads movies or songs from an unauthorized source then it will
amountto copyright infringement.
• A person is free to record a TV program to view it later, but if he transfers or
distributesit to others then it becomes a copyright infringement.
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Copyright infringement elements

• The work was the original creation of the author

• The defendant actually copied the work of the author. It is important to note that not
all factually copying is legally actionable. The substantial similarity between the
works of the author and the defendant has to be established to prove that the
defendant has infringed the author’s copyright.

Copyright Issues

There are a number of issues that can arise in Copyright. These are discussed below:

• Plagiarism

Someone may copy the copyrighted material and pretend it to be his original work. People
are allowed to quote the work or refer the work but the person who is using the copyrighted
work hasto give the credit to the copyright holder.

• Ownership

The issue of ownership may arise when an employer works for an organisation. In such case
who has the copyright over the work? If a person is an employer then it is the organisation
which has the copyright over the material but if a person is a freelance writer then it is the
person himself who is the sole owner of the copyrighted material.

• Derivative Works

Derivative works use the already existing work of someone. It is a new version of already
existing material. For example, translating a book into another language. A person requires a
license for it but if he has not obtained the license for it then he can be made liable for
copyright infringement.
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Types of Copyright Infringement

Copyright infringement can be broadly classified into two categories:

1. Primary Infringement
2. Secondary Infringement

Primary Infringement

Primary infringement refers to the real act of copying the work of the copyright holder. For
example, photocopying a book and then distributing it for commercial purposes. However,
sometimes a person may only copy a part of the work, for example, a paragraph of an article.
In such a case, the copyright holder is required to establish two things:

• Substantial Taking

A copyright is infringed only when an unauthorized person copies a substantial part of the
work. For example, copying a catchy phrase of a lyricist. While deciding the case, the court
also tries to conceive, how an ordinary person will perceive the work. If an ordinary person
will perceive that the work is copied from a different source then it will be considered
infringement. If the writing style, language and errors are similar to the copyrighted work
then it will serve as evidence of copying in a court of law. The minor alterations made by the
person in the work of a copyright holder will not affect the claim of infringement.

• Casual Connection

The copyright holder must prove that there is a similarity in the works of the copyright holder
and the infringer. However, this may be because of several other reasons like both of them
have usedthe same source for the research. In such a case, the copyright holder can not claim
for infringement.

Secondary Infringement
Secondary Infringement refers to the infringement of copyright work without actually
copying [Link] can happen in the following ways:

• Providing a place for Copyright Infringement

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If a person provides the place or permits the place (for profit) to be used for communicating of
the work the public and such work amounts to copyright infringement then such person can
be madeliable for the offence of copyright imprisonment. However, if the person is unaware
or has no reason to believe that the place is used for copyright infringement then cannot be
made liable for the [Link] is important to note that the person should let the place for
“profit” to be made liablefor copyright infringement. If an NGO lets the place then the NGO
cannot be made liable for thesame.

• Selling Infringing Copies

If a person sells the copies that infringe the right of the copyright holder then it will amount
to copyright infringement.

• Distributing Infringing Copies

When a person distributes infringing copies of the copyright holder works then it will
amount to copyright infringement. For example, if a person uploads a movie on the internet for
free then it is an infringement of copyright.

• Importing Infringing Copies

Importing the infringed work of the copyright holder in India also amounts to infringement
of Copyright. However, if the person has imported the infringed work for the domestic or
personal use then it will not amount to Copyright Infringement.

4.2 Defenses against infringement

liabilityQuotation, Criticism and

Review

If a person uses the quotes of the copyrighted work then it will not amount to
[Link], a person may cite examples of the published work to criticize it or
review it.
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Criteria for using the exception

• The reason for using the material is genuinely for the purpose of Quotation,
Criticism and Review. For example, one cannot discuss the whole film in an
article and then comment that he/she liked the movie.
• The material which is used for review or criticism should already be available to
the public. Thus, a person cannot use the material which is not made available to the
public but is kept confidential.
• The use of the material should be fair. There is no legal definition of what is fair
and what is not. The fair use of the material will depend on the facts and
circumstances ofthe case.
• If a person has provided sufficient acknowledgement to the copyright holder then
it would not amount to copyright.

Parody and Pastiche

Parody means to use the existing work of someone to create the humour or to use it for
[Link] people may use the copyrighted work to make a critique while others may use
it to draw attention to a social phenomenon. Use of work for parody and pastiche is not
considered as a copyright infringement.

Test for Copyright Infringement

To test whether the work is copyrighted or not, the court follows the three-factor test. These
threefactors are:

1. Quantum of the work copied

2. Purpose of copying the work
3. The likelihood of competition between the two works.

News Reporting

A news reporter may sometimes use the copyrighted material to report the current event. For
example, a news reporter may use a part of the video clip to report a current event. In this
case, heis exempted from copyright infringement. There are certain conditions under which a
news reporter is exempted from copyright infringement, the conditions are discussed below:
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• The news reporter has not used the copyrighted photograph. The copyrighted
photograph cannot be used for news reporting.
• The purpose of using the material should be genuine i.e. for reporting purpose only.
• There should be a fair use of the material.
• The news reporter has to sufficiently acknowledge the author of the copyrighted
work.

Libraries

The libraries often lend readers the book for a certain period and make copies for its users.
The librarians, in this case, cannot be made liable for copyright infringement.

Education

Another exception to copyright infringement is the use of copyrighted material for

educational purposes. Sometimes the copyrighted material is used by the teachers to illustrate
a point or make the student understand the concept then it is not a copyright infringement.
Similarly, if a student uses the thoughts of someone to explain an answer in examination
then it is not a copyright infringement.

Research and Private Studies

Researchers have to use various copyrighted sources for the research purpose. The researchers
are allowed to use copyrighted material for research purposes, it does not amount to copyright
infringement. Copyright allows making single copies or taking shorts extracts of the work for
non- commercial purpose.

Private Copying

Private copying refers to the copying of material from one device to another without infringing
the right of the copyright holder. For example, one may copy a song from DVD to MP3
player for backup purpose.

4.3 Remedies available for infringement of Copyright

Under the Copyright Act, 1957 the copyright holder has two types of remedies:
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Civil Remedies

• Section 55(1) of the copyright act, provides that the copyright holder is entitled to
remedy by way of injunction. The injunction is the most effective remedy in case
of copyright infringement. Injunction refers to the judicial process by which one
who is threatening the legal rights of someone is restrained to continue his acts or is
ordered to restore the matter to the position in which they stood before the action.
• Section 55(1) of the copyright act, further provides that the copyright holder is
entitled to damages for copyright infringement. The purpose of providing the
damages to the copyright holder is to restore him to the earlier position. There are
various factors that determine the amount of damages to be paid to the copyright
holder. Generally, the damages are awarded for the amount that the copyright
holder would have got if the person had obtained the license from him. However,
there are various other factors as well, that determines the amount of damages like
the loss of profit to the copyrightholder, loss of reputation, decrease in the sale of the
copyright holder’s work etc.

Criminal Remedies

• The copyright holder can take criminal proceedings against the infringer. The
criminal remedy is not an alternative to the civil remedy but is complementary to
it. Thus, the copyright holder can bring both civil and criminal proceedings
simultaneously.
• Section 63 of the Copyright Act, states that copyright infringement is a criminal
offence.

4.3.1 Anton Pillar Orders

Anton Piller orders, also known as search orders, are similar to police search warrants but in
civilcases. The order allows the plaintiff to enter into the premises of the defendant to search
and obtain relevant material and evidence for their case. The purpose of an Anton Piller order is
to prevent the defendant from destroying or hiding relevant material for the plaintiff’s, or
applicant’s, case. The Court is responsible for making an order after analysing the applicant’s
submissions. Furthermore, if the defendant refuses the plaintiff to enter their premises after an
order, they risk contempt of court.

Obviously, an Anton Piller order is a serious invasion of the defendant’s privacy. The Court
willonly approve an order if:
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• A strong prima facie (upon initial assessment) case against the defendant.
• The applicant will suffer damage, whether actual or potential.
• Strong evidence that the defendant possesses the relevant material or evidence.
• Proof that the defendant will destroy or attempt to conceal the relevant evidence.

Importantly, due to the purpose of this order, the Court will conduct an Anton Piller order ex
parte. Ex parte means that only the applicant attends the court hearing.

Thus, the applicant has the responsibility to fully disclose all relevant facts, including
possible defences by the defendant. The Court will also not grant an Anton Piller order if a
subpoena, or other interlocutory injunction, would be sufficient. Furthermore, if there is a
delay in seeking an order, the Court will not grant an order as this may indicate the damages
suffered would not be significant.

Anton Piller orders work by having a search party appear at the defendant’s premises. The
party will consist of the applicant’s lawyer, an independent lawyer and other independent
experts that may be required (i.e. a computer expert for intellectual property cases). The
independent lawyer will be there to monitor the execution of the order. Upon being served the
order, the defendant will usually be allowed to receive legal advice.

4.3.2 Mareva Injunctions

The Mareva injunction is granted to restrain the defendant from disposing of their assets
within the jurisdiction until the trial ends or judgement in the action for infringement is
passed. Such aninjunction is granted where there is a danger of the defendant disposing off
or transferring his assets out of the jurisdiction of the court. The purpose of such an
injunction is to protect the interests of the plaintiff during the pendency of the suit.

The Mareva injunction has come a long way since its inception in 1975. It is a powerful tool,
and in many ways has given courts wide powers to ensure their judgment is not rendered
worthless. Over time, the injunction has evolved from being a simple prohibition on foreign
defendants from removing their assets from the court’s jurisdiction to a broad relief
enforceable against any defendant – irrespective of where he is resident or where his assets
are – prohibiting him from, inany way, dealing with or attempting to dissipate his assets.

While it has made the legal machinery stronger and ensures realistic remedy, there are
numerous issues with the injunction, especially those related to jurisdiction. It, in essence,
permits even a non-party to a suit, who does not even reside within the jurisdiction of the
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court, to be held in contempt of that court’s jurisdiction. Courts should, therefore, exercise
extreme discretion while granting such relief and ensure that principles of natural justice are
not violated. No doubt the Mareva injunciton is useful, however, it should not be allowed to
develop contrary to basic, wellestablished, principles of law.
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MODULE-V

THE INFORMATION TECHNOLOGY ACT, 2000

1. Definitions
1.1 Computers
1.2 Digital Signature
1.3 Electronic Signature
14. E-Governance
2. Cyber Appellate Tribunal
2.1 The composition of Cyber Appellant Tribunal (Section 49)
2.2 The qualifications for appointment as Presiding Officer of the
Cyber Appellate Tribunal (Section 50)
2.3 The Term of Office (Section 51)
2.4 Resignation and removal (Section 54)
2.5 Procedure and powers of the Cyber Appellate Tribunal (Section
58)
3. Cyber Crime in India
Relation between Cyber Crime and Cyber Security
o Cyber Crime
o Cyber Security
Differences between Cyber Security and Cyber Crime
Various elements of cyber security
Different Categories of Cyber Crimes
 Crime against the Individuals
 Crime against Property
 Crime against Governments or Organizations
 Crime against Society
Conclusion
References

1. DEFINITIONS

This chapter presents the meaning and definition of cyber crime, the legislation in India
dealingwith offences relating to the use of or concerned with the abuse of computers or other
electronic gadgets. The Information Technology Act 2000 and the I.T. Amendment Act 2008
have been dealt with in detail and other legislations dealing with electronic offences have been
discussed in brief.
1.1 Computers:
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The ITA-2000 defines many important words used in common computer parlance like
.access., computer resource, computer system, communication device, data, information,
security procedure. etc. The definition of the word .computer. itself assumes significance here.
Computer. means any electronic magnetic, optical or other high-speed data processing device or
system which performs logical, arithmetic, and memory functions by manipulations of
electronic, magnetic or optical impulses, and includes all input, output, processing, storage,
computer software, or communication facilities which are connected or related to the
computer in a computer system or computer network. So is the word .computer system.
which means a device or a collection of devices with input, output and storage capabilities.
Interestingly, the word computer and Computer system. have been so widely defined to mean
any electronic device with data processing capability, performing computer functions like
logical, arithmetic and memory functions with input, storage and output capabilities. A
careful reading of the words will make one understand that a high-end programmable
gadgets like even a washing machine or switches and routers used in a network can all be
brought under the definition.
Similarly the word .communication devices. inserted in the ITAA-2008 has been given
an
inclusive definition, taking into its coverage cell phones, personal digital assistance or such
otherdevices used to transmit any text, video etc like what was later being marketed as iPad
or other similar devices on Wi-fi and cellular models. Definitions for some words like .cyber
café. were also later incorporated in the ITAA 2008 when .Indian Computer response
Emergency Team. was included.
1.2 Digital Signature : .
Electronic signature. was defined in the ITAA -2008 whereas the earlier ITA -2000 covered
in detail about digital signature, defining it and elaborating the procedure to obtain the digital
signature certificate and giving it legal validity. Digital signature was defined in the ITA -
2000 asauthentication of electronic record as per procedure laid down in Section 3 and Section
3 discussed the use of asymmetric crypto system and the use of Public Key Infrastructure and
hash function etc. This was later criticized to be technology dependent ie., relying on the
specific technology of asymmetric crypto system and the hash function generating a pair of
public and private key authentication etc.

1.3 Electronic Signatute:

Thus Section 3 which was originally .Digital Signature. was later renamed as Digital
Signature And Electronic Signature. in ITAA - 2008 thus introducing technological neutrality
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by adoption of electronic signatures as a legally valid mode of executing signatures. This

includes digital signatures as one of the modes of signatures and is far broader in ambit
covering biometrics andother new forms of creating electronic signatures not confining the
recognition to digital signatureprocess alone. While M/s. TCS, M/s. Safescript and M/s. MTNL
are some of the digital signature certifying authorities in India, IDRBT (Institute for
Development of Research in BankingTechnology, the research wing of RBI) is the Certifying
Authorities (CA) for the Indian Bankingand financial sector licensed by the Controller of
Certifying Authorities, Government of India.
It is relevant to understand the meaning of digital signature (or electronic signature) here. It
would be pertinent to note that electronic signature (or the earlier digital signature) as
stipulated in the Act is NOT a digitized signature or a scanned signature. In fact, in electronic
signature (or digital signature) there is no real signature by the person, in the conventional sense
of the term. Electronic signature is not the process of storing ones signature or scanning ones
signature and sending it in an electronic communication like email. It is a process of
authentication of message using the procedure laid down in Section 3 of the Act.
The other forms of authentication that are simpler to use such as biometric based retina
scanning etc can be quite useful in effective implementation of the Act. However, the Central
Governmenthas to evolve detailed procedures and increase awareness on the use of such
systems among thepublic by putting in place the necessary tools and stipulating necessary
conditions. Besides, duties of electronic signature certificate issuing authorities for bio-metric
based authenticationmechanisms have to beevolved and the necessary parameters have to
be formulated to make ituser-friendly and at the same time without compromising security.
1.4 E-Governance
Chapter III discusses Electronic governance issues and procedures and the legal recognition
to electronic records is dealt with in detail in Section 4 followed by description of procedures
on electronic records, storage and maintenance and according recognition to the validity of
contracts formed through electronic means.

2. CYBER APPELLATE TRIBUNAL

The first Cyber Appellate Tribunal has been established by the central government under
the Information Technology Act, 2000. The motive of Cyber Appellate Tribunal is to stop
the cyber crimes and frauds over a period of time. These tribunal discharge their power as
the same as Supreme Court under the code of civil procedure, 1908. The duties of Cyber
Appellate Tribunal are discharged by one person, who is known as Presiding Officer. He acts
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and discharges his dutiesas Supreme Court judge.

The composition of Cyber Appellant Tribunal (Section 49)

The Central Government appoints only one person in a Tribunal – the Presiding Officer of the
Cyber Appellate Tribunal.

The qualifications for appointment as Presiding Officer of the Cyber Appellate

Tribunal (Section 50)

A person is considered qualified for the appointment as the Presiding Officer of a Tribunal if

a. He has the qualification of the Judge of a High Court

b. He is or was the member of the Indian Legal Service and holds or has held a post in Grade
I ofthat service for at least three years.

The Term of Office (Section 51)

The Term of Office of the Presiding Officer of a Cyber Appellate Tribunal is five years from
the dateof entering the office or until he attains the age of 65 years, whichever is earlier.

If for any reason other than temporary absence, there is a vacancy in the Tribunal, then the
Central Government hires another person in accordance with the Act to fill the vacancy.
Further, the proceedings continue before the Tribunal from the stage at which the vacancy is
filled.

Resignation and removal (Section 54)

1. The Presiding Officer can resign from his office after submitting a notice in writing to
the Central Government, provided:

a. he holds office until the expiry of three months from the date the Central
Government receives such notice (unless the Government permits him to relinquish
his office sooner), OR

b. he holds office till the appointment of a successor, OR

c. until the expiry of his office; whichever is earlier.

2. In case of proven misbehaviour or incapacity, the Central Government can pass an order
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to remove the Presiding Officer of the Cyber Appellate Tribunal. However, this is only
after the Judge of the Supreme Court conducts an inquiry where the Presiding Officer is
aware ofthe charges against him and has a reasonable opportunity to defend himself.

3. The Central Government can regulate the procedure for the investigation of
misbehaviour orincapacity of the Presiding Officer.

Orders constituting Appellate Tribunal to be final and not to invalidate its

proceedings (Section 55)

According to this section, no order of the Central Government appointing any person as the
Presiding Officer of the Tribunal can be questioned in any manner. Further, no one can question
any proceedingbefore a Cyber Appellate Tribunal in any manner merely on the grounds
of any defect inthe Constitution of the Tribunal.

Appeal to Cyber Appellate Tribunal (Section 57)

1. Subject to the provisions of sub-section (2), a person not satisfied with the Controller or
Adjudicating Officer’s order can appeal to the Cyber Appellate Tribunal having
jurisdiction in the matter.

2. No appeal shall lie to the Cyber Appellate Tribunal from an order made by an
adjudicating officer with the consent of the parties.

3. The person filing the appeal must do so within 25 days from the date of receipt of the
order from the Controller or Adjudicating Officer. Further, he must accompany the
appeal with theprescribed fees. However, if the Tribunal is satisfied with the reasons
behind the delay of filing the appeal, then it may entertain it even after the expiry of 25
days.

4. On receiving an appeal under sub-section (1), the Tribunal gives an opportunity to all
theparties to the appeal to state their points, before passing the order.

5. The Cyber Appellate Tribunal sends a copy of every order made to all the parties to the
appealand the concerned Controller or adjudicating officer.

6. The Tribunal tries to expeditiously deal with the appeals received under sub-section (1).
It alsotries to dispose of the appeal finally within six months of receiving it.

Procedure and powers of the Cyber Appellate Tribunal (Section 58)

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1. The Code of Civil Procedure, 1908 does not bind the Cyber Appellate Tribunal. However,
the principles of natural justice guide it and it is subject to other provisions of the Act. The
Tribunal has powers to regulate its own procedure.

2. In order to discharge its functions efficiently, the Tribunal has the same powers as vested
in a Civil Court under the Code of Civil Procedure, 1908, while trying a suit in the
following matters:

a. Summoning and enforcing the attendance of any person and examining him under oath

b. Ensuring the availability of the required documents or electronic records

c. Receiving evidence on affidavits

d. Issuing commissions for examining witnesses or documents

e. Reviewing its decisions

f. Dismissing an application for default or deciding it ex-parte, etc.

3. Every proceeding before the Cyber Appellate Tribunal is like a judicial proceeding within
themeaning of sections 193 and 228 and for the purposes of section 196 of the Indian Penal
Code.

Further, the Tribunal is like a Civil Court for the purposes of section 195 and Chapter
XXVIof the Code of Criminal Procedure, 1973.

Right to Legal Representation (Section 59)

The appellant can either appear in person or authorize one or more legal practitioners to present
hiscase before the tribunal.

Limitation (Section 60)

The provisions of the Limitation Act, 1963, apply to the appeals made to the Tribunal.

Civil Court not to have jurisdiction (Section 61)

If the IT Act, 2000 empowers the adjudicating officer or the Cyber Appellate Tribunal for
certainmatters, then no Civil Court can entertain any suit or proceedings for the same.
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Further, no court can grant an injunction on any action that a person takes in pursuance of any
power that the Act confers upon him.

Appeal to High Court (Section 62)

Let’s say that a person is not satisfied with the decision or order of the Tribunal. In such cases, he
can file an appeal with the High Court. He must do so within 60 days of receiving the
communication of the order/decision from the Tribunal.

The appeal can be on any fact or law arising out of such an order. The High Court can extend
theperiod by another 60 days if it feels that the appellant had sufficient cause and reasons for
the delay.

Compounding of contraventions (Section 63)

1. The Controller or any other officer that he or the adjudicating authorizes may compound
any contravention. Compounding is possible either before or after the institution of
adjudication proceedings. This is subject to the conditions that the controller or such
other officer or the adjudicating officer specifies. Provided, the sum does not exceed the
maximum amount ofpenalty that the Act allows for the compounded contravention.

2. Nothing in sub-section (1) applies to a person who commits the same or similar
contravention within a period of three years from the date on which his first contravention
was compounded. Therefore, if the person commits a second contravention after the expiry
period of three years from the date on which his first contravention was compounded,
then this becomes his first contravention.

3. Once a contravention is compounded under sub-section (1), then no proceeding is

possible against the person guilty of the compounded contravention.

Recovery of Penalty (Section 64)

If a penalty imposed under this Act is not paid, then the same is recovered as arrears of land
revenue. Further, the license or digital signature certificate is suspended until the penalty is
paid.
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3. CYBER CRIME IN INDIA

Cyber crimes are increasingly becoming social engineering, where cyber criminals invest
resources and time to gain knowledge about technical and scientific aspects of cyber security
and because of that the term “cybercrime” is often confused with the term “cyber security”.
Even though the two are extremely different and belong to different areas of expertise, yet
they are interrelated with each other. The two are discussed below.

Relation between Cyber Crime and Cyber Security

Cyber Crime: Cyber crime is a crime that involves the use of computer devices and the
Internet. It can be committed against an individual, a group of people, government and
private organizations. Usually it is intended to harm someone’s reputation, cause physical or
mental harm or to benefit from it, for example, monetary benefits, spreading hate and terror
etc. As happened in 1998, a group of Tamil guerrillas, known as Tamil Tigers, sent over 800
e-mails to Sri Lankan embassies. The mails read “We are the Internet Black Tigers and
we’re doing this to disrupt your communications.” Intelligence authorities identified it as the
first known attack by terrorists against a country’s computer systems.

The main principle of cyber crime law is punishing unauthorized access or illegal use of
computer systems and the internet with criminal intentions, so that damage and alteration of
systems and data on it can be prevented. However, the largest threat of cybercrime is on the
financial securityof an individual as well as the government.

Cyber Security: Cyber security is a technique to protect computers, networks, programs,

personal data, etc., from unauthorized access and threats. It is an activity by which
information and other communication systems are protected and defended against the
unauthorized use or modification or exploitation of the device. Cyber security is also called
information technology security. It includes the techniques of protecting computers, networks,
programs and data from unauthorized access or attacks that can cause damage to them or
exploit them in any way. Basically cyber security is a technical approach to secure systems
from such attacks.

Good cyber security recognizes all the vulnerabilities and threats a computer system or
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network contains. It then identifies the cause of such vulnerabilities and fixes those
vulnerabilities and threats and secures the system. Strong cyber security programs are based
on a combination of technological and human elements.

Differences between Cyber Security and Cyber Crime

There are certain aspects on which cyber crime and cyber security can be differentiated upon,
they are:

• Types of crimes: In cyber security, the kinds of crimes are where a computer
software or hardware or computer network, is the main target (ransomware,
viruses, worms, distributed denial of service attacks etc). In Cyber crimes, the
crimes are where an individual or a group of individuals and their data is the main
target. Governments and organizations can also be the targets of cyber crimes (cyber
bullying, hate speech, child pornography trafficking, trolling).

• Victims: Victims in these two fields are also different. In cyber security, victims
are governments and corporations whereas, in cyber crimes, the range of victims
is rather broad as victims can extend from individuals, families, organizations,
governments and corporations.
• Area of Study: Both these fields are studied in different areas. Cyber security is
dealt with under Computer science, computer engineering, and information
technology. Coding, networking and engineering strategies are used for making
networks more secure.

On the other hand, cyber crimes are dealt with under Criminology, psychology, sociology.
Basically, it is the theoretical understanding of how and why crime is committed and how it
can be prevented.

Various elements of cyber security

For a strong cyber security system certain elements are needed. The elements are as following:

• Application security: Applications play an essential role in business ventures; that

is why every firm needs to focus on web application security. Web application
security is important in order to protect customers, their information and interests.
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Application security helps in thwarting any attempts to violate the authorization

limits set by the security policies of the computer system or networks.
• Information security: Information includes business records, personal data, customer’s
data, intellectual property etc; hence, it is important for a corporation to have
strong cyber security for information to prevent its leakage.

Information security involves safeguarding sensitive information from illegitimate access,

usage,or any other kind of damage. This also ensures that the important data does not get lost
when any issue like natural disasters, malfunction of system, theft or other potentially
damaging situation arises. The characteristics defining information security are
confidentiality, integrity and availability. Information security also includes Data
Confidentiality, Data integrity, Data availability, and Data authenticity.

Network Security: Network security consists of protecting the usability and reliability of
network and data. A network penetration test is conducted to assess the vulnerabilities in a
system and network.

It refers to broad range security policies for thwarting and monitoring unauthorized access,
misuse, damage to a computer system and other network systems. Network security extends
coverage to diverse computer networks, surrounding private and public communication
systems among corporations and organizations.

• Disaster Recovery/ Business continuity planning: Business continuity planning

(BCP), also known as disaster recovery, is about being prepared for any kind of
interference or cyber threat by identifying threats to the systems on time and
analyzing how it may affect the operations and methods to counter that threat.
• Operational security (OPSEC): Operations security is used to protect organization
functions. It identifies important information and assets to track down threats and
vulnerabilities that exist in the functional method.
• End-user education: It is important for an organization to train their employees
about cyber security because human error is one of the major causes of data
breaches. Everyemployee should be aware of the common cyber threats and should
have the knowledge to deal with them.

Training will allow management to accustom themselves with system users and threats to it
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and user training will help in eliminating resistance to change and advancements and lead to
user scrutiny on a closer level.

Leadership commitment: It is important to have leadership commitment in organization and

corporations in order to have a strong cyber security program. Without having the leadership
in the team it is complicated to develop, implement and maintain the cyber security
processes.

Different Categories of Cyber Crimes

The cyber crimes may be broadly classified into four groups. They are:

Crime against the Individuals

Crimes against the individual refers to those criminal offences which are committed against
the will of an individual to cause certain harm to them like physical or mental harm. For
example assault, harassment, kidnapping, and stalking etc. but in cyber crimes the nature of
crimes against individual changes a little bit and takes the form of cyber stalking,
pornography, cyber bulling, child abuse, fraud, cyber threats etc. Such as cyber defamation is
committed to cause harm to the reputation of an individual in the eyes of other individuals
through the cyberspace. A few cyber crimes against individuals are:

1. Harassment via electronic mails.

2. Dissemination of obscene material.
3. Cyber-stalking.
4. Defamation.
5. Indecent exposure.
6. Cheating.
7. Unauthorized control/access over computer system.
8. Email spoofing.
9. Fraud.

Crime against Property

The second category of cyber crime is that of cyber crimes against property. With the growth
of international trade, businesses and consumers are increasingly using computer and the
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internet to create, transmit and store information in the electronic from instead of traditional
form. This has ultimately lead to certain cyber offences which affect a person’s property.
These types of cyber crimes include cyber vandalism to steal information of other
organizations or to steal someone’s bank details, use software to gain access to an
organization’s website etc. This is similar to instances of a criminal illegally possessing an
individual’s bank or credit card details. In cyber crime, the hacker steals a person’s bank
details to gain access to funds, make purchases online orrun phishing scams to get people to
give away their information. They could also use any kind of malicious software to gain
access to a web page with confidential information. These types of crimes include vandalism
of computers, intellectual property crimes (Copyright, patented, trademark etc), online
threatening etc. Cyber crimes against property include:

1. Computer vandalism.
2. Transmitting virus.
3. Net-trespass.
4. Unauthorized access / control over computer system.
5. Internet thefts.
6. Intellectual Property crimes:

• Software piracy.
• Copyright infringement.
• Trademark infringement.

Crime against Governments or Organizations

There are certain cyber crimes committed to threaten the international governments or
organizations. These cyber crimes are mainly committed for the purpose of spreading terror
among people of a particular country. The instigators or perpetrators of such crimes can be
governments of enemy nations, terrorist groups or belligerents etc. Cyber crimes against
Government include cyber attack on the government website, military website or cyber
terrorism etc. In these kinds of cyber crime, cyber criminals hack governments or
organization’s websites, government firm, and military websites and then circulate
propaganda or threats or rumors. These cyber crimes are known as cybercrimes against
Governments or Organizations. Following are the few examples of crime against Governments
or Organizations:
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1. Unauthorized access / control over computer system.

2. Cyber terrorism against the government or organization.
3. Possession of unauthorized information.
4. Distribution of Pirate software.

Crime against Society

Those cyber crimes which affect the society at large are known as cyber crimes against
society. These unlawful acts are committed with the intention of causing harm or such
alterations to the cyberspace which will automatically affect the large number of people of
society. The main targetof these types of crimes is public at large and societal interests. The
cyber crimes against societyinclude the following types of crimes:

1. Child pornography.
2. Indecent exposure of polluting the youth financial crimes.
3. Sale of illegal articles.
4. Trafficking.
5. Forgery.
6. Online gambling.
7. Web jacking.

Conclusion

In conclusion, cyber security can be considered as a set of guidelines and actions intended
and needed to prevent cybercrime but cyber security is not only limited to that. The two
types of problems differ considerably in terms of what happens and who the victims are, as
well as the academic areas that study them. Therefore, the two, cyber security and cyber
crimes, must be considered as separate issues, with different safeguards designed to address
the different privacyand security issues of each.

All sorts of data whether it is personal, governmental, or corporate need high security. Some
of the data, which belongs to the government defense system, scientific research and
developments,banks, defense research and development organization, etc. are highly
confidential and even small amount of negligence to these data may cause great damage to the
whole nation or society at large, therefore, such data need security at a very high level.
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Hence, cyber security is all about protecting government, organizations and corporate
networks, intending to make it difficult for hackers to find weaknesses and exploit them or
threaten them. Cybercrime, on the other hand, tends to focus more on individuals and families
online. It ishighly needed that the top leaders of an organization or government should invest
in the cyber security measures to make it strong and impenetrable.