UNIT - 1: THE COPYRIGHT ACT, 1957

INTRODUCTION TO COPYRIGHT LAW

Copyright is a well-recognized form of property right which had its roots in the
common law system and subsequently it has been governed by the national laws
in each country.

Copyright as the name suggests is 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
output of another even before the concept of copyright took shape.

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 etc. 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, and thereby protecting as well as rewarding their creativity.

Creativity being the keystone of progress, and no civilized society can ignore the
basic requirement of encouraging the same. Economic and social development of
a society is dependent upon 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 concerning creativity, which induces them to create more
and motivates others to create.

In India, the law relating to copyright is 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. 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 agreement. It provides 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 40(A) empowering the Central
Government to extend the provisions of the Copyright Act to broadcasts and
performances made in other countries, but subject to the condition that such
countries extend similar protection to broadcasts and performances made in India.
Another new Section 42(A) empowers the Central Government to restrict rights
of foreign broadcasting organisations and performers.

The Act is now amended in 2012 with the object of making certain changes for
clarity, to remove operational difficulties and also to address certain newer issues
that have emerged in the context of digital technologies and the Internet.

COPYRIGHT

Copyright is a right given by the law to creators of literary, dramatic, musical and
artistic works and producers of cinematograph films and sound recordings. It is a
form of intellectual property protection granted by law.

Case: Kartar Singh Giani v. Ladha Singh & Ors. 1934: Copyright is a bundle of
exclusive rights including, rights of reproduction of the work, communication of
work to the public, adaptation and translation of the work. These rights can be
exercised only by the owner of copyright or by any other person who is duly
licensed in this regard by the owner of copyright.
Copyright is a form of intellectual property protection granted under Indian law
to the creators of original works of authorship. Copyright laws protect the legal
rights of the creator of an ‘original work’ by preventing others from reproducing
the work in any other way.

The main goals of copyright are: -

 To encourage the development of culture, science and innovation.

 To provide a financial benefit to copyright holders for their works.
 To facilitate access to knowledge and entertainment for the public.

Copyright is a form of Intellectual Property, along with trademarks and patents

in all countries, and other creations (such as trade secrets, database rights, rights
of publicity etc.) that may vary from country to country.

Copyright law protects expressions of ideas rather than the ideas themselves. For
example, an author writes about making of an aircraft. Here, the idea of making
of the plane is not protected but only the way of expressing is protected. The idea
is protected under the Patent law and not under Copyright Act.

Copyright protection commences the moment a work is created, and its

registration is optional. However, it is always advisable to obtain a registration
for a better protection. Copyright registration is a prima facie proof of an entry in
respect of the work in the Copyright Register maintained by the Registrar of
Copyrights.

CHARACTERISTICS OF COPYRIGHT

Copyright is not a single right rather it is collection of rights. Following are the
characteristic features of copyright:

 Monopoly right: Copyright is monopolistic in nature. It restricts others

from using the rights of a copyright owner. Since only the owner has the
right to publish, sell or communicate the work protected under copyright.
 Negative right: Copyright is a negative right; it means it is prohibitory in
nature. It stops others from copying the work protected under copyright.
 Multiple rights: Copyright is not a single right. It consists of a collection
of different rights in the same work. For example, a literary work copyright
includes the right of issuing copies of work, translation of work etc.
 Neighboring rights: Copyright consists not merely of the right to
reproduction. It also consists of the rights which are derived from the
original works. For example: rights like the right of public performance,
the recording right and the broadcasting right which are as important than
the right of reproduction.
 Object of copyright: The basic aim of copyright law is to motivate
authors, composers and artists to create original works by giving them
exclusive right for a specified period of time.
 Creation of a statute: The copyright Act, 1957 describes Copyright as the
legal entity or law created by statute.
 Some Form of intellectual property: A copyright is a form of intellectual
property because the product over which the copyright is granted is the
result of utilization of intellectual mind.
 The work must be original: The originality of the work is the main
essential requirement for claiming the copyright. The work which is going
for copyright must be the original work of that person. The work which is
not copied by another person is called original work.
 It purely exists in the expression of the idea: The copyright exists only
for the original work. The mere idea to do a job is not to be used as
copyright. For instance, if a brilliant person has an idea for a book but he
does not do anything to express the idea, he cannot claim the copyright for
that mere idea because the idea should be expressed.
 INTERNATIONAL TREATIES & CONVENTIONS

BERNE CONVENTION, 1886

Berne convention was the first and oldest multilateral convention on copyright
for the protection of literary and artistic work. This convention was adopted in
1886 to protect the creations and rights of the creators in the international arena.

Nearly 180 countries signed the convention which is regulated by the World
Intellectual Property Organization (WIPO). Berne Convention, initially adopted
in 1886, was amended and revised several times, leading to its latest form in 1979.

A country joining this Convention has to provide copyright protection to literary

and artistic works of member countries in its own territory and also entitled for
enjoying reciprocal protection from others.

Fundamentally, this convention was formed to tie the laws of different nationals
into a single platform with minimum standards to protect copyrighted creations.

The Convention has essentially laid down minimum standards of protection

which have bound all Member States. WIPO has been created to administer this
instrument universally.

The Berne Convention is built on three basic principles:

 National Treatment

According to this, any work originated in one of the member States are to be
given the same protection in each of the member States, as they grant to the works
of their own nationals. Thus, since India and the U.K. are both members of the
Berne Union, the U.K. is obliged to give the same protection to the works created
by Indian authors, that it gives to works of British authors. It means UK will have
to treat Indian works, as if they were British works and vice versa.

 Automatic Protection
The protection offered through the principle of national treatment must be
unconditional and should not depend upon any formality. In other words,
protection is granted automatically, by the mere creation of the work, and is not
subject to the formality of registration, deposit etc.

 Independence of Protection

According to this, enjoyment and exercise of the rights granted in a Member State
to an eligible foreign author is independent of the existence of protection in the
country of origin of the work.

Minimum Standards of Berne Convention

 Works eligible for protection

According to Article 2(1) of the Convention, copyrighted protection must be

offered to “every production in the literary, scientific and artistic domain, no
matter in what mode they are.”

 Rights under Berne Convention

The convention obligates member states to provide the authors of literary and
artistic works the rights, which includes:

o right to perform in public – dramatic and musical works

o right to recite in public of their works
o right to broadcast of their works
o right to communicate the performance of their works to the public
o right to translate their works
o right to make adaptations, arrangements & alterations of the work
o right to reproduce the work in any form;
o right to use the work as a basis for an audiovisual work;
 o Moral rights – right to claim authorship of the work, right to object
to any damage, modification, or disgraceful action, putting the
reputation and honor of the author at risk.
 Duration of Protection

Under Berne’s convention, the minimum term of protection for literary and
artistic works is the life of the author plus 50 years after his death.

The only exception to the protection term is for the works of photography and
cinematography. In this case, the minimum protection period for a photograph is
25 years from the year the picture was clicked and for cinematography, 50 years
from the date of creation or publication.

UNIVERSAL COPYRIGHT CONVENTION, 1952

The Universal Copyright Convention (UCC) was concluded in 1952 and revised
in 1971. The reasons for adoption of UCC was those two most powerful states
i.e., United States and the Soviet Union as well as many other states were not
members of the Berne Convention.

Under the law of the United States, authors could only be protected if they
completed certain administrative formalities, such as registering their work with
the US Copyright Office. This was one of the requirements for protection

One of the basic requirements of the Berne Convention is that there should be ‘no
formalities’ in respect of foreign authors, i.e., no author from a country of the
Berne Union should be required to fulfil any bureaucratic procedure (like
registration of his work) to enjoy copyright protection for it in another such
country. So, this was the reason that US and many Latin American countries were
unable to accept the Berne Convention.

Ultimately, the UNESCO adopted UCC by removing many hurdles which came
in its way. The adoption of the UCC was seen as an alternative multilateral
copyright protection treaty that counties could enter into if they happened to
disagree with the Berne Convention.

UCC protects literary, scientific and artistic works, including writings, musical,
dramatic and cinematographic works, and paintings, engravings and sculpture'.

UCC obligates contracting States to provide for the adequate & effective
protection of the rights of authors & other copyright proprietors. These rights
include the reproduction right, broadcasting right and public performance right.

Its main features are the following:

 No signatory nation should grant its domestic authors more favorable

copyright treatment than the authors of other signatory nations, though no
minimum protection for either domestic or foreign authors is stipulated;
 A formal copyright notice must appear in all the copies of a work and
consists of the symbol ©, the name of the copyright owner, and the year of
first publication. However, a signatory nation, might require further
formalities, provided that such formalities are consistent with other
signatory nations' requirements.
 The minimum term of copyright in member nations must be the life of the
author plus 25 years (except for photographic works and works of applied
art, which have a 10-year term);
 All adhering nations are required to grant an exclusive right of translation
for a period of seven years, subject to a compulsory license under certain
circumstances for the balance of the term of copyright.

The convention did not abrogate any other multilateral or bilateral conventions
or arrangements between two or more member states. Where there are any
differences, the provisions of the Universal Copyright Convention are to prevail
except as regards to the Berne Convention, which takes priority over the UCC.
Both the Universal Copyright Convention and the Berne Convention were revised
at a Paris conference in 1971 to take into consideration the special needs of
developing countries, especially with regard to translations, reproductions, public
performances, and broadcasting.

ROME CONVENTION - for the protection of performers, producers of

phonograms and broadcasting organizations, 1961

The Rome Convention obligates Contracting States to protect performances of

performers, phonograms of producers of phonograms and broadcasts of
broadcasting organizations.

Rights of Performers

The convention defines performers as actors, singers, musicians, dancers and

those who perform literary or artistic works. Under this convention, performers
are protected against certain acts to which they have not consented to. Such Acts
are:

 the broadcasting and communication to the public of a live performance;

 the fixation of the live performance;
 the reproduction of such a fixation, if the original fixation was made
without the performer's consent or
 if the reproduction was made for the purposes different from those for
which they gave their consent.

Rights of Producers of Phonograms

Producers of phonograms have the right to authorize or prohibit the direct or

indirect reproduction of their phonograms.

Phonogram means any exclusively aural fixation of sounds of a performance or

of other sounds.
Where a phonogram published for commercial purposes and being used for
secondary uses (such as broadcasting or communication to the public in any
form), then a single equitable remuneration must be paid by the user to the
performers, or to the producers of phonograms, or to both. The Contracting States
are, however free not to apply this rule.

Rights of Broadcasting organizations

Broadcasting organizations have the right to authorize or prohibit certain acts.

These acts are:

 The rebroadcasting of their broadcasts.

 The fixation of their broadcasts.
 The reproduction of such fixations.
 The communication to the public of their television broadcasts, if such
communication is made in places accessible to the public against payment
of an entrance fee.

The Rome Convention allows for exceptions to the above-mentioned rights in

national laws:

 private use,
 use of short clippings in connection with reporting current events,
 use solely for the purpose of teaching or scientific research.

The minimum term of protection under the Rome Convention is 20 years

computed from the end of the year in which:

 the fixation was made,

 the performance took place,
 the broadcast took place.

The Contracting Parties, however, may provide longer term of protection under
their national laws.
 WIPO COPYRIGHT TREATY, 1996

The WIPO Copyright Treaty (WCT) is a special agreement under the Berne
Convention that deals with the protection of works and the rights of their authors
in the digital environment. The Treaty also deals with two subject matters to be
protected by copyright:

 Computer programs, whatever the mode or form of their expression; and

 Compilations of data or other material ("databases").

The treaty was signed in 1996. It recognizes that the transmission of works over
the Internet and similar networks is an exclusive right under copyright law and
originally belonged to the author.

Apart from the rights granted to the author under the Berne Convention, the WCT
also grants the following rights to the author of the work:

 Right of distribution: This right authorizes the author to make available of

the original or copies of the work of the author through sale or transfer of
ownership, to the public.
 Right of rental: It is the right to authorize commercial rental of the original
and copies of computer programs, cinematographic works and works
embodied in phonograms, to the public.
 Right of communication to the public: This right authorizes the author to
communicate his work by way of any wire or wireless means etc.

SUBJECT MATTER OF COPYRIGHT

Section 13 of the Copyright Act provides that copyright shall subsist throughout
India in certain classes of works which are as follows:

 Original literary, dramatic, musical and artistic works;

 Cinematograph films; and
 Sound recordings.
The term ‘original’ is prefixed to literary, dramatic and musical works and not to
cinematograph films and sound recordings as they are derivative works.

ORIGINAL LITERARY WORKS

Section 2(o) of the Copyright Act, 1957 provides an inclusive definition of

literary work, according to which the literary work includes computer
programming, tablets, and compilations including computer databases.

It covers published works including books, articles, journals, and periodicals, as

well as manuscripts. Even adaptations, translations, and abridgements are taken
as original works and are protected under copyright law. Section 13(a) classify
literary works in the primary work.

An original literary work, is the product of the human mind which may consist of
a series of verbal or numerical statements, not necessarily possessing aesthetic
merit, capable of being expressed in writing, and which has been arrived at by the
exercise of skill, creative labor, or judgment.

Case: Macmillan & Co. Ltd. vs. K.J. Cooper, 1924:

 Held: The word "original" does not mean that the work must be the
expression of original or inventive thought. Copyright Act is 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 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.

Translation

The word translation has not been defined in the Act. But dictionary says"
reproduction of language of a book, document or speech in another language" is
"translation". Thus, if copyright subsists in the original work, then the
reproduction of the original work without the consent of the creator is illegal.

Case: Blackwood vs. Parasuraman, 1959: It was held that translation of literary
work in itself is a literature and is entitled to copyright protection, if it is original
and done with the consent of author.

Historical works: Historical facts are not copyrightable, but the way of
presentation of the author is. So, if the author presents the historical facts in some
manner, that manner is protected but not the factual content.

Lecture: A lecture includes address and speech. Delivery of a lecture includes

delivery by means of any mechanical instrument or broadcast. A lecture will be
entitled to copyright only if it is reduced to writing before it is delivered.

Dissertation: The research thesis and dissertation prepared by scholar involves

labour and skill and thus, entitles for copyright protection. In Fateh Singh
Mehta's case, the Rajasthan High Court granted interim injunction against use of
material by guide from the Ph.D. thesis of his student.

Question Papers: The person who sets the question papers invests labour, skill
and time on the preparation. He is the author of question paper and the copyright
vests in him.

Encyclopedia & Dictionaries: Preparation of a dictionary on any subject

involves considerable amount of labour, skill and judgment, copyright will
subsist in dictionary for arrangement, sequence or idiom format which cannot be
appropriated by another.

Head Notes of Law Report and Digest: The head note is a systematic clear and
concise presentation of principles of law laid down by court in a judgment.
Preparation of head notes require art and skill of editor. They are, therefore,
treated as original literary work entitled for copyright protection.
Abridgement of literary works

Abridgement can be defined as reducing a large work into a small piece of work
by preserving the sense and meaning of the entire work.

Case: Sweet vs. Benning (1855), the Plaintiffs were the proprietors of a weekly
paper called “The Jurist” that published the decisions of various courts of law
along with appropriate marginal notes and headnotes. It was held that there is no
copyright available over the parts of the judgment that were reproduced but
copyright is available over headnotes, marginal notes, etc.

Computer Programmes

The definition of "computer programme" in the Copyright Act, 1957 makes it

clear that the computer programme must contain a set of instructions expressed
in words, codes, schemes or in any other form including a machine readable
medium, which is capable of causing a computer to perform a particular task.

For copyright to subsist in a computer programme, the computer programme must

be 'original' and 'recorded' in writing. The requirement of originality does not
mean that the computer must be novel or unique in some respect. It merely means
that the programme has been the result of a modest amount of skill, labour or
effort and that it originates from the author.

ORIGINAL DRAMATIC WORKS

According to section 2(h) of Copyright Act,1957, the dramatic work includes any
piece for recitation, choreographic work or entertainment in dumb shows, the
scenic arrangement or acting form which is fixed in writing or otherwise but does
not include a cinematographic film.

As a prerequisite in copyright law, for a dramatic action to be protectable, a

written description of the acts of the performer is essential.
Since the definition is an inclusive one, the other things which fall within the
general meaning of dramatic work may also be covered by the definition.

Case: Academy of General Education Manipal v. Malini Mallya: The court

shows a clear difference between literary and dramatic work. The difference
between the two rests on the fact that literary work allows itself to be read while
a dramatic work “forms the text upon which the performance of the plays rests.”
A dance performance will not be covered under literary work but under dramatic
work.

Case: Creation Records vs New Group Newspaper: It was held that a photograph
which involves no movement or action cannot be treated as dramatic work.

Copyright of Dramatic work can be in form of Adaption of Dramatic work.

Adaptation of work means modification of that work in some other form.

ORIGINAL MUSICAL WORKS

According to sec 2(p) the Copyright Act, 1957, musical work means any work
consisting of music and includes any graphical representation of such work, but
does not include any words or action intended to be sung, spoken or performed
with the music. In order to qualify for copyright protection, a musical work must
be original.

The words in a song and the music have separate rights and the rights cannot be
merged. For Example: Famous song “Yaaram” which is written by Gulzar and
composed by Vishal Bharadwaj. The copyright of the lyrics will belong to Gulzar
and the musical composition will be of the composer Vishal Bharadwaj.

Songs: There is no copyright in a song. The words of the song create a copyright
in the author of the song and the music of the song is the copyright of the
composer but the song itself has no copyright.
Old songs with different music compositions (remix): The remix songs which
are very popular among the young generation is within the definition of
adaptation of a musical work, and such adaptation is not an infringement of the
copyright of the original musical composition.

Supreme Court in a significant judgment has held that version recording if done
by a skillful and laborious rearrangement of different music with due permission
of the original owner of songs, may claim protection.

ORIGINAL ARTISTIC WORKS

According to sec 2(c) the Copyright Act, 1957, the artistic work includes

 any painting, sculpture, drawing (includes diagram, map, chart, plan), an

engraving, or photograph, whether or not any such work possesses artistic
quality.
 work of architecture; and
 any other work of artistic craftsmanship.

Painting: Painting is an artistic work even if it possesses no beautiful quality.

What is sufficient to entitle it for a copyright is that it must be original, i.e., the
painting should be the creation of the painter and not a mere copy of another
painting. A painting in order to be copyrighted must be on a surface; it is a
tangible object and not only an idea. Only a painting on a tangible surface is
entitled to copyright protection.

Photograph: A photograph is an artistic work entitled to copyright. A photograph

must be original in order to attract copyright and some degree of skill and effort
must have been expanded on it.

A xerox copy of a photograph itself cannot be a subject matter of copyright since

there is no involvement of original skill and labour in making such a copy.
Where a photograph of some common place has been taken, it will be open to rest
of the world to have recourse to that object and take a similar photograph from
the same angle and claim an independent copyright. But where the photographer
has expended skill and time in arranging the grouping of the figures, the lighting
and so on, there may be an infringement of copyright if someone consciously
repeats the process so as to arrive at substantially the same result.

Case: Naruto vs. David Slater (The Monkey Selfie Case):

 David Slater, a British nature photographer was on a three-day trip in a

national park of Indonesia to take pictures of monkeys in June of 2011.
During the second day of shooting, Slater followed a group of 25 monkeys
until they stopped at a place to rest, groom and play. Initially, he setup one
camera with a self-timer, but the monkeys took it away.
 The monkeys produced hundreds of pictures, but only a few were in focus
and usable, but three of them in particular was spectacular. Slater selected
these and contacted the Daily Mail, who seemed interested in those
pictures. Daily Mail published the story with no delay, which was then
picked up by other news sources. The monkey pictures were an instant hit
online, the smiling monkey particularly becoming incredibly popular in
social media.
 The selfie subsequently went viral on the Internet, mainstream television
and radio, eventually landing on the Wikipedia page for the specific
monkey species. Slater asked Wikipedia to remove the pictures from the
site but it was refused claiming that the pictures were taken by the monkey
and were in the public domain. Wikipedia argued that copyright law in the
United States holds that works originating from a non-human source
cannot claim copyright.
 Slater filed an application to the Copyright office in USA, who rejected the
application by saying that picture was taken by a monkey and thus slater
 cannot claim copyright to it. Also, Monkey is not a human being and
doesn’t fall in the definition of an author mentioned in country’s copyright
law. Slater argued that the work should be copyrightable, as the monkey
was acting as an agent of the photographer to create the work.
 However, almost four years of the legal battle, a new player joined the
argument i.e., People for the Ethical Treatment of Animals ("PETA"), on
behalf of the monkey who took the selfie, filed a federal lawsuit against
Slater claiming that the monkey is the author of the selfies.
 PETA filed the lawsuit in the capacity of “NEXT FRIENDS” to Naruto
(monkey) who takes care of him and all other animals across the globe.
According to PETA, Naruto should have been given the Copyright of the
photo and PETA should be declared the protector of his copyright as his
next friends.
 The Court of California ruled in the favor of Mr. Slater by dismissing the
suit filed by the PETA. The court stated that Copyright protection does not
extend to an animal. There is no such precedent where a copyright has been
granted to an animal. Thus, Naruto is not entitled for the copyright.
 After this, a settlement has been reached in the lawsuit. Under the deal, the
photographer whose camera was used agreed to donate 25% of any future
revenue from the images to charities dedicated to protecting monkeys in
Indonesia, lawyers for an animal rights group said.
 Thus, the dispute “The Monkey Selfie case” has come to an end with no
clear-cut winner, leaving the question of who owns the copyright to
monkey selfie alive.

Drawings: Artistic works also include a drawing which further includes a

diagram, map, chart or plan irrespective of their artistic quality. It also includes
engineering and mechanical drawings. The object of copyright is to grant the
draftsmen of such drawings, exclusive rights to copy and make for sale three
dimensional reproductions by the grant of licenses, so that the skill and labour put
by them in such drawings could be rewarded.

A drawing based upon an earlier drawing can also get copyright protection
provided sufficient original skill and labour has been spent on creating it.

Copyright protection will not be denied to a drawing merely on score of

simplicity. But copyright may be denied to something which cannot fairly be
called a diagram or a drawing e.g., a single straight line drawn with the aid of a
ruler.

Work of architecture

A work of architecture means any building or structure having an artistic

character or design, or any model for such building or structure. Copyright shall
subsist only in the artistic character or design and shall not extend to processes or
methods of construction.

Work of Artistic Craftsmanship

Works of artistic craftsmanship may include everyday useful objects such as

furniture, pottery, cutlery, jewelry, etc.

It includes artistic works like hand painted tiles and stained-glass windows etc.

Here, the possession of some artistic quality or character is vitally important to

distinguish a copyrighted work from objects not protected by copyright. This does
not mean it must have artistic merit, but its design involves some artistic feature
or characteristic that does not arise purely from the use for which the object is
intended.

CINEMATOGRAPH FILMS

Section 2(f) defines cinematograph films as any work of visual recording and a
sound recording accompanying such visual recording.
The expression "cinematograph" shall be construed as any work produced by any
process analogous to cinematography including video films.

Case: R.G. Anand vs. Delux Films: Plaintiff was a producer and play writer of
play ‘Hum Hindustani’. The plaintiff tried to consider the possibility of filming
and narrated the play to the defendant. The defendant, without informing the
plaintiff, made the picture ‘New Delhi’ which was alleged to be based on the said
play. The question arises that whether the film ‘New Delhi’ was an infringement
of the plaintiff’s copyright in play ‘Hum Hindustani’? Held: No, because the
stories were different, only the theme “love story” was same.

Case: Balwinder Singh vs. Delhi Administration: It was held that the concept of
cinematograph is not only limited to movies being played in theater it also covers
videos and television, as they both fall under the preview of cinematograph film.

Level of Originality: A television report or documentary may be based upon a

live incident or a newspaper report, thus the act does not prescribe any specified
level of originality in the cinematographic film.

Copyright shall not subsist in any cinematograph film, if a substantial part of the
film is an infringement of the copyright in any other work.

SOUND RECORDING

According to section 2(xx) of the Act, sound recording means a recording of

sounds from which that sound may be produced regardless of the medium on
which such recording is made or the method by which the sounds are produced.

A phonogram and a CD-ROM are the examples of sound recordings.

Qualification for copyright subsistence - Section 13(2)

In order to qualify for copyright, the works apart from being original, should
satisfy following conditions (except in the case of foreign works or works of
international organizations).
  The work is first published in India.
 Where the work is first published outside India, the author, at the date of
publication must be a citizen of India.
 If the publication was made after the author's death, the author must have
been at the time of his death a citizen of India.
 In the case of an unpublished work the author is a citizen of India or
domiciled in India on the date of making of the work. [This does not apply
to works of architecture].
 In case of work of architecture, the work must be located in India.

RIGHTS OF THE COPYRIGHT HOLDER

MULTIPLE RIGHTS

Copyright is not a single right but a bundle of rights which can exist and be
exploited independently. The nature of these multiple rights depends upon the
categories of works.

The literary, dramatic and musical works can be grouped together for the purpose
of defining these exclusive rights. The rights relating to artistic works are distinct
from those of cinematograph films and sound recording.

NEGATIVE RIGHTS

Copyright is a negative night in the sense that it stops others from exploiting the
work of the author for their own benefit without the consent or license of the
author. It does not confer any positive right on the author himself.

ECONOMIC RIGHTS

The rights conferred by Section 14 on a copyright owner are considered as

economic rights because the exploitation of the work by the author by exercising
these rights may bring economic benefit.
The author may exploit the work himself or license others to exploit any one or
more of the rights for a consideration which may be in the form of royalty, a lump
sum payment.

These rights are also known as the Exclusive Rights of the copyright holder. In
this Act different types of work come with different types of rights. Such as:

In the case of original literary, musical, and dramatic work:

 Right to reproduce;
 Right to issue copies;
 Right to perform at public;
 Right to make cinematography and sound recording;
 Right to make any translation;
 Right to adaptation; and
 Right to do any other activities related to the translation or adaptation.

In the case, of computer program work:

 Right to do any act aforesaid mentioned; and

 Right to sell, rent, offer for sale of the copyrighted work.

In the case of artistic work:

 Right to reproduce the work in any material form including depiction in

two dimensions or a three-dimension work.
 Right to communicate;
 Right to issue copies;
 Right to make any cinematography and sound recording;
 Right to make an adaptation; and
 Right to do any other activities related to the translation or adaptation.

In case of a cinematograph film work:

  Right to make a copy of the film, including a photograph of any image
forming part thereof
 Right to sell, rent, offer for sale of the copyrighted work; and
 Right to communicate.

In the case of a sound recording work:

 Right to communicate;
 Right to issue copies; and
 Right to sell, rent, offer for sale of the copyrighted work.

Case: Indian express newspapers ltd. vs. Jagmohan, 1985: In this case, the
defendant made a stage play and a movie based on the articles published by the
plaintiff, namely, Kamla. According to plaintiff the entire sequence of the events
on which articles were based have been taken by the defendants and converted
into a film. Further, the entire film is pure work of fiction and at the beginning of
the film it has been clarified that the characters in the film do not bear any
resemblance to any real-life characters. The court held that stage play or the
movie was not an infringement of the copyright in the article. There is a difference
between the material upon which one is claiming copyright and the product of the
application of his skill, judgement, labor and literary materials.

MORAL RIGHTS

 Moral rights are derived from the French term ‘Droit Moral., which means
Moral rights are neither the opposite of immoral rights nor of legal rights.
 Moral rights are personal rights that show a relationship between the
creator and his work. They give control over the creation of work.
 Moral rights do not derive any direct financial benefit to the author of the
work. They help to avoid modification or alteration of the content.
 Moral rights protect personal and reputational rights, which allow authors
to defend both the integrity of their works and the use of their names.
Types of moral rights

1. Right of Attribution

It is also called the Right of Paternity or Right to Authorship. This right

establishes ownership over the work. Through this right, the public can know
about the creator of the work.

Right of Attribution states that a person must be named as the author of work if
he has created the work. The author’s name must also appear in the reproduction
or adaptation of the work.

The right of paternity refers to a right of an author to claim authorship of work

and a right to prevent all others from claiming authorship of his work.

The author also has a right to demand that his name should appear in all copies
of his work at the appropriate place. He can also prevent others from using his
name in their works.

2. Right of Integrity

The author of the work will not be subjected to derogatory treatment under this
right. Derogatory treatment includes materially distorting the work, destroying
the work, or altering the work. The work should not be altered in a way, that such
alteration harms the work.

Right of integrity empowers the author to prevent distortion, mutilation or other

alterations of his work, or any other action in relation to said work, which would
be prejudicial to his honour or reputation.

This right is important particularly where a license or assignment has been

granted to adapt or alter the work in some way, e.g., novel into play, play into
film, etc. It is for the courts to decide the borderline between the adaptation and
distortion.
This right protects the integrity of both the author and the work. This right ensures
that the reputation of the author is not destroyed. Negative reviews or comments
about work can affect the integrity of the work.

3. Divulgation Right

That means the right of the author to publish a work or to withhold it from
dissemination (publication). This right gives the author the right to decide
whether to publish or not to publish his work.

4. Right to Retraction

It gives the author the right to withdraw his published work from distribution, if
the author feels that due to passage of time and changed opinion, it is advisable
to do so.

5. Right against False Attribution

It states that a person should not falsely represent himself as the owner of a work.
This right stops the person from being credited for work when, in fact, he is not
the owner of the work.

The Berne Convention recognizes some of these rights and requires member
states to provide the author with the right to claim authorship and to object to
alteration. These rights remain with the author even after the transfer of copyright
& such rights last throughout the entire term of copyright.

These moral rights are recognized as author's 'Special Rights' under Section 57 of
the Act (Amended by 1994). Sec 57 states that even after the assignment of the
copyright either wholly or partially, the author of the work shall have the right:

 To claim authorship of the work.

 To restrain or claim damages in respect of any distortion, mutilation,
modification or other act in relation to the said work which would be
prejudicial to his honour or reputation:
Proviso: The author shall not have any right to restrain or claim damages in
respect of any adaptation of a computer programme to which Sec 52 (1) (aa)
applies.

Both the above mentioned right conferred upon an author of a work, may be
exercised by the legal representatives of the author.

Case: Amarnath Sehgal vs. Union of India, 2005: In this case, the petitioner was
appointed by the Ministry of Works, Housing, and Supplies to prepare a mural
for Vigyan Bhavan. The mural attracted visitors from around the world. After
some years, Vigyan Bhavan underwent a renovation and the government
proposed to remove the mural without plaintiffs’ permission and in the process
of removal, due to mishandling the mural got damaged and lost its aesthetic and
market value. When the plaintiff came to know about this, he claimed damages
from the government. The mural was damaged due to the negligent behavior of
the government so the plaintiff sued the government under section 57 of the
Copyright Act, 1957.

The court passed mandatory injunction against the UOI directing it to return the
mural to the plaintiff within two weeks from the date of judgement. The court
also granted damages to the tune of 5 lacs and cost of suit to him against the UOI.

The court made very significant observations on section 57 of the Copyright Act
1957. The court observed that the special right has been conferred upon the author
with the sole objective of protecting that honour and reputation which he has
earned from his intellectual work. The fact remained that even after the ownership
of an intellectual work had been transferred to another person by the author
himself for monetary gain the work continues to bear with the name of the author.
So, it was morally wrong to distort, mutilate or modify the creative work of the
author to the prejudice of his honour and reputation by another person just
because he had paid the price for that work.
Section 15 - Special Provision regarding copyright in designs registered or
capable of being registered under the Designs Act 2000.

Section 15(1) says that if any design is registered under the Designs Act, the
provisions of Copyright Act are not applicable. Meaning thereby, there is no
protection of any design under the Copyright Act which is registered under the
Designs Act.

The copyright in any design, which is capable of being registered under the
Designs Act, 2000, but which has not been so registered, shall cease as soon as
any article to which the design has been applied has been reproduced more than
fifty times by an industrial process by the owner of the copyright, or, with his
license, by any other person.

In this regard, as soon as any article to which a design has been applied has been
reproduced more than 50 times by an industrial process, it ceases to have any
copyright on the same. Meaning thereby the author will lose any protection or
right over the creation as the owner has not opted for Design Registration and
also has reproduced the article bearing the design more than 50 times by an
industrial process.

Section 16 – No copyright except as provided in this Act

This section provides that irrespective of the fact that the work is published or
not, no person shall be entitled to copyright on any work except for the provisions
laid down in this Act.

But, nothing in this section shall be construed as abrogating any right or

jurisdiction to restrain a breach of trust or confidence.

TERM OF COPYRIGHT

Copyright in a work does not subsist in perpetuity. The term of copyright

protection is limited to the life of the author and fifty years after his death (usually
referred to as 'fifty years - post mortem auctoris) in most of the countries. The
term of the copyright varies according to the nature of the work.

The term of copyright is fixed keeping in view of the interest of the author and
that of the general public. The interest of the author is in protecting his work as
long as possible whereas the interest of the public is in making the work a public
property as soon as possible.

After the expiry of the copyright term, the work falls into public domain. In other
words, after the expiry of copyright term, any person can use the copyright work
without any permission or authorization and without paying any fee or royalty.
Apart from economic rights, the moral rights of the author also cease to exist after
the expiry of copyright in the work. In such a case, the users may use the work in
any way they like, and no cause of action will lie against them even if the work
has been distorted or mutilated.

Term of Copyright in literary, dramatic, musical or artistic works [Sec 22]

In the case of literary, dramatic, musical or artistic work, published during the
lifetime of the author, copyright subsists during the lifetime of the author plus
sixty years after his death.

Copyright shall subsist until 60 years from the beginning of the calendar year next
following the year in which the author dies. Thus, if an author dies on 2nd January
2010, the term of copyright will continue for sixty years from 1st January 2011.

If there are two or more authors, i.e., it is a case of joint authorship, the above
term will be determined by the date of death of the author who dies last.

Term of Copyright in Anonymous and Pseudonymous Works [Section 23]

In case of anonymous or pseudonymous works, the terms of copyright is sixty

years from the year of publication. It means the period of sixty years will be
counted from the beginning of the calendar year next following the year of
publication.

If the identity of the author of such a work, is disclosed before the expiry of the
sixty years period, the term will extend to sixty years after the death of the author.

Term of Copyright in Posthumous works [Section 24]

Publication after the death of the author is called posthumous work. In case of
posthumous publications, the term will be sixty years from the year of
publication. It means the period of sixty years will be counted from the beginning
of the calendar year next following the year of publication.

Term of Copyright in Photographs [Section 25]

Omitted.

Term of Copyright in Cinematograph Films [Section 26]

Copyright in a cinematograph film subsists until 60 years from the beginning of

the calendar year next following the year in which the film is published.

Term of copyright in sound recordings (Section 27)

Copyright shall subsist until 60 years from the beginning of the calendar year next
following the year in which the sound recording is first published.

Term of copyright in government works (Section 28)

Where the first owner of the copyright is the govt., Copyright shall subsist until
60 years from the beginning of the calendar year next following the year in which
the work is first published.

Term of copyright in public undertaking (Section 28 A)

Where the first owner of the copyright is the public undertaking, Copyright shall
subsist until 60 years from the beginning of the calendar year next following the
year in which the work is first published.

Term of copyright in works of international organization (Section 29)

In the case of a work of an international organization to which the provision of

Section 41 applies, the copyright shall subsist until 60 years from the beginning
of calendar year next following the year in which the work is first published.

Broadcast Reproduction Right [Section 37(2)]

The broadcast reproduction right shall subsist until 25 years from the beginning
of the calendar year next following the year in which the broadcast is made

Performers’ Right [Section 38(2)]

The performer’s right shall subsist until 50 years from the beginning of the
calendar year next following the year in which the performance is made.

AUTHORSHIP AND OWNERSHIP

Copyright protects the rights of authors, i.e., the creators of intellectual property
in the form of literary, musical, dramatic and artistic works and cinematograph
films and sound recordings. Generally, the author is the first owner of copyright
in a work.

Generally, the creator or the author of the work is the owner of the work and
therefore entitled to get the copyright for the work. Where the author of the work
is employed by another person, the work belongs to the employer of the author.

The 'author' and 'owner' are vital while deciding the copyright, as copyright law
clearly differentiates between the idea and the expression or application of idea.
The originator of the idea is not the owner of the copyright. Copyright simply
belongs to the person who gives concrete form to the idea.
For example: The person who gives an idea for a play or a book is not the owner,
instead the person who writes the book or transforms the idea into expressible
form is the owner of the copyright. No matter if the originator of idea was
someone else.

The Author being the first owner of copyright has the right to

 reproduce,
 publish,
 adapt,
 translate his work in different languages and customized forms,
 perform and communicate his work to the public.

He has the right to prevent others to do any of the above acts to his work. The
copyright envisages a specially qualified inherent right to the author to assign all
or any of his rights either fully or for a tenure of limited period or to one or more
persons.

Section- 2 (d) of the Act defines the term “author”. Different categories of person
will be regarded as the author in relation to various categories of work:

 Dramatic or literary work - the author of work.

 Musical work - the person who composes the music.
 For artistic work except for photographs - the artist of that work.
 Photograph - the person who clicks the photograph.
 Cinematographic film - the producer of Movie.
 Sound recording - the Producer.
 Any dramatic, literary, or musical work generated by the computer - the
person who created the work.

The exceptions to this rule are covered in Sec 17 of the Act, as summarized below:

Literary, Dramatic or Artistic Work [Section 17(a)]

This clause states that if an author creates a literary, dramatic, or artistic work
while working for the owner of a newspaper, magazine, book, or other publication
under a contract of service, for publishing such work, the owner of such
newspaper or magazine publication becomes the first owner of the copyrighted
work, in the absence of any agreement to the contrary.

For example: A journalist or writer working in a newspaper house will never be

the owner of the work he produces, he shall only enjoy authorship rights over that
work. The first owner of such a work shall be the owner of Newspaper House.

Photograph, painting, engraving, cinematographic film [Section 17(b)]

This clause talks about the cases when an artist is hired for creating a painting, or
when a photographer is hired for clicking photographs, or a cinematographer is
hired to shoot a cinematographic film, then the person who hired or caused such
work to be done becomes the first owner of the copyright, but in the absence of
any agreement to the contrary.

For ex: – A painter hired by a school to paint the school’s boundary walls with
storytelling paintings presenting social and moral values, then he will not be the
first owner of the paintings he made, but the school that hired the painter will be.

Work made under course of employment [Section 17(c)]

When a work is made by a person in the course of his employment under a

contract of service or traineeship, then the employer (not being the proprietor of
a newspaper, magazine) shall become the first owner of all the work created
during such employment, but in the absence of any agreement to the contrary.

Case: Thomas vs. Manorama, 1989: It was held that in case of termination of the
employment, the employee is entitled to the ownership of copyright in the works
created subsequently and the former employer has no copyright over the
subsequent works so created.
Lectures delivered in public on behalf of another [Section 17(cc)]

If a person is delivering a speech on behalf of another then, the person on behalf

of whom the lecture / speech is given in the public is the first owner of such
copyright. However, if a person gives a lecture in public by himself and not
representing anyone else then, he becomes the author and first owner of such
copyright.

Government Work [Section 17(d)]

In the case of government work, the government is the owner of the copyright in
the absence of an agreement to the contrary.

Suppose, if a copyrightable work is created as a result of a government tender,

the government will be the first owner of the copyright deriving from and
accruing to such works, unless there’s an agreement to the contrary between the
parties.

For example, the Indian government owns the copyright on the “statue of unity,”
not the engineers or architects who designed or built it.

Work made on behalf of a Public Undertaking [Section 17(dd)]

Public Sector Undertaking means:

 An undertaking owned & controlled by Government.

 A Government company as defined in the Companies Act, 1956.
 A body corporate established by or under any Central, Provincial or State Act.

If a work is created or first published by or under the control or direction of a

public undertaking, that public undertaking will be the original owner of
Copyright, but in the absence of an agreement to the contrary.

Work of certain international organization [Section 17(e)]

If case of international organisation covered under section 41, assigns a person to
create a copyrightable work for them, then that international organization shall
become the first owner of such copyrightable work.

Distinction between Contract of Service & Contract for Service

 Contract of Service

Where a man employs another man to do work for him under his control, so that
he can direct the time when the work shall be done, the means to be adopted to
bring about the end, and the method in which the work shall be arrived at, then
the contract is a contract of service.

In general, in a contract of service a master servant (employer-employee)

relationship is present which is absent in the case of contract for service.

Case: Beloff vs. Pressdram, 1973: In the case of contract of service, the status of
the author is that of an employee. For example, whenever an employee of a
solicitor’s firm drafts a document in the course of his employment, the employer
is the first owner of copyright.

 Contract for Service

If a person employs another to do a certain work but leaves it to the other to decide
how that work shall be done, what steps shall be taken to produce that desired
effect, then it is a contract for service.

His status is that of an independent contractor who himself decides about the
manner of doing work, in such cases the copyright vests in him and not with the
employer.

ASSIGNMENT – LICENSING
The owner of the copyright can generate wealth not only by exploiting it but also
by sharing it with others for mutual benefit. This can be done by the way of
assignment and licensing of copyright.

ASSIGNMENT OF COPYRIGHT [SECTION 18]

The owner of the copyright has the right to assign his existing or future
copyrighted work either wholly or partly to any other person. And as a result of
such assignment the assignee becomes entitled to all the rights related to
copyright to the assigned work, and he shall be treated as the owner of the
copyright in respect of those rights.

General or partial limits can be imposed by the owner to the assignee to share
mutual benefits in the copyrights. The assignor shall also be treated as the owner
of copyright with respect to unassigned rights.

However, mere grant of right to publish and sell the copyrighted work amounts
to publishing right and not assignment of copyright. Assignment may be for the
full term of the copyright or for a limited period of time.

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 in respect of assignment of the copyright in future work, the legal
representative of the assignee is entitled to the benefits of the assignment of
copyright, if the assignee dies before the work comes into existence.

The literature work or a musical work used in a cinematography film or in a sound

recording will entitle the owner of copyright to receive the royalties which cannot
be waived off after assignment.

Case: Video Master vs. Nishi Production, 1998: The Bombay High Court
considered the issue whether assignment of video rights would include the right
of satellite broadcast as well. The Court agreed with the contentions of defendant
that there were different modes of communication to the public such as theatrical,
television broadcasting (Door Darshan), satellite broadcasting and video TV. The
owner of the film had separate copyright in all those modes, which he could
assign it to different persons. Thus, satellite broadcast copyright of film was a
separate right of the owner of the film and the video copyright assigned to the
plaintiff would not include this.

MODE OF ASSIGNMENT (SECTION 19)

As per Section 19, these conditions are necessary for a valid assignment:

 It should be in writing and signed by the by the assignor or his duly

authorized agent.
 It should specify the kinds of rights assigned and the duration and territorial
extent of such assignment.
 If the territorial extent of such assignment is not stipulated in the
agreement, it will be considered as applicable to the whole of India.
 It should specify the amount of royalty payable if any, to the author or his
legal heirs during the continuance of assignment.
 The assignment shall be subject to revision, extension or termination on
terms mutually agreed upon by the parties.
 If the period of assignment is not mentioned in the agreement, it will be
taken as five years from the date of assignment.
 Where the Assignee does not exercise the rights assigned to him within a
period of 1 year, the assignment in respect of such rights is deemed to have
lapsed after the expiry of said period, unless otherwise specified in the
Agreement.
 The assignment of copyright in any work against the terms and conditions
of the rights already assigned to a copyright society, in which the author of
the work is a member shall be void.
  The assignment of copyright for the purpose of making a cinematograph
film or sound recording does not affect the right of the author to claim an
equal part of the royalties and consideration payable with respect to use of
his protected work.

Case: Saregama India Ltd. vs. Suresh Jindal & Ors.: It was held that the owner
of the copyright or the prospective owner of the copyright in a future work may
assign the copyright to any person either wholly or partially for the whole of the
copyright or any part thereof and once an assignment is made the assignee for the
purpose of the said Act is treated as the owner of the copyright.

Disputes with Respect to Assignment of Copyright (Section 19A)

If the assignee fails to make sufficient use of the rights assigned to him and such
failure is not attributable to any act or omission of the assignor, the Commercial
Court after receiving a complaint from the assignor and conducting such inquiry
may revoke the assignment.

In case of a dispute with respect to the assignment of copyright, the Commercial

Court, on receiving a complaint from the aggrieved party and after holding such
inquiry may pass a suitable order including an order for the recovery of any
royalty payable.

The Commercial Court shall not pass any order to revoke the assignment unless
it is satisfied that the terms of assignment are harsh to the assignor in case the
assignor is also the author.

No order of revocation of assignment is to be made within a period of five years

from the date of such assignment.

Every complaint regarding assignment of copyright shall be dealt by Commercial

Court as far as possible. The Commercial court shall make efforts to pass the final
order within 6 months from the date of receiving of complaint. In case of delay,
the reasons shall be recorded by the Commercial Court for the same.

Relinquishment of Copyright [Section 21]

The author of a work may relinquish all or any of the rights comprised in the
copyright in the work by giving notice to the Registrar of Copyrights or by way
of public notice in the prescribed form. On receipt of a notice, the Registrar of
Copyrights shall cause the notice to be published in the Official Gazette.

The Copyright Registrar shall, within 14 days from the publication of the notice
in the Official Gazette, post the notice on the official website of the Copyright
Office so as to remain in the public domain for a period of not less than 3 years.

LICENSING

A license is a grant of authority to do a particular thing which otherwise could

not have been done. It amounts to a consent or permission granted by the owner
of copyright to the licensee.

In case of license, ownership in the rights remains with the author. But in the case
of assignment, the ownership in the rights is transferred to the assignee.

The copyright owner may grant a license and transfer some or all of his rights to
others to exploit his work for monetary benefits.

Licenses by Owners of Copyright (Section 30) - Voluntary license

The owner of the copyright in any existing or future work may grant any interest
in his copyright to any person by license in writing, which is to be signed by him
or by his duly authorized agent.

However, in case of license relating to copyright in any future work, the license
shall take effect only when such future work comes into existence.
Where a licensee of the copyright in any future work dies before such work comes
into existence, his legal representatives shall be entitled to the benefit of the
license if there is no provision to contrary.

Application of Sections 19 (Section 30A)

The mode of license is similar to an assignment deed, with necessary adaptations

and modifications in section 19. Therefore, like an assignment, a license deed in
relation to a work should comprise of following particulars:

 Duration of license
 The rights which have been licensed
 Territorial extent of the licensed
 The quantum of royalty payable
 Terms regarding revision, Extension and termination

COMPULSORY LICENSE

Being a member of Berne Convention, India has incorporated the provision of

compulsory license in the Copyright Act, 1957. The Act provides for grant of
compulsory license for Indian work in the public interest, in certain
circumstances:

Compulsory License in Works Withheld from Public (Section 31)

The Indian Copyright Act provides for the grant of compulsory licenses in work
which has been published or performed in public.

If a complaint is made to the Commercial Court at any time during the term of
copyright, that the owner of copyright has refused to

 republish or allow the republication of the work or has refused to allow the
performance of the work in public and by reason of such refusal the work
is withheld from the public or
  allow communication of the work to the public by broadcast of such work
or work in the sound recording on such terms, which the complainant
considers reasonable.

The Commercial Court, after giving to the owner of the copyright a reasonable
opportunity of being heard and after holding such inquiry may satisfied that the
grounds for such refusal are not reasonable, the Court direct the Registrar of
Copyright to grant to the complainant the license to republish the work.

Compulsory License in Unpublished or Published Work (Section 31A)

According to this section, where the author is dead or unknown or cannot be

traced, or the owner of the copyright in such work cannot be found, any person
may apply to the Commercial Court for a license to publish or communicate to
the public such work or translation thereof in any language.

Before making such an application, the applicant should publish his proposal in
a daily newspaper in that language. The application to the Commercial court
should be made in the prescribed form and accompanied by the prescribed fee
and with the copy of advertisement issued.

The Commercial Court after making the certain prescribed enquires direct the
Registrar of Copyright to grant license to the applicant to publish the work or its
translation subject to the payment of royalty and other conditions.

Compulsory License for Benefit of Disabled (Section 31B)

Any person working for the benefit of persons with disability on a profit basis or
for business may apply in prescribed manner to the Commercial Court for a
compulsory license to publish any work in which copyright subsists for the
benefit of such persons. The commercial court shall dispose of such application
preferably within a period of 2 months.
After giving the copyright owner in the work a reasonable opportunity of being
heard and after holding necessary inquiry, if the Commercial Court is satisfied
that a compulsory license needs to be issued to make the work available to the
disabled, it may direct the Registrar of Copyrights to grant to the applicant such
a license to publish the work.

However, where a compulsory license has been issued, the Commercial Court
may on a further application and after giving reasonable opportunity to the
owners of the rights, extend the period of compulsory license and allow the issue
of more copies as it deems fit.

License to Produce & Publish Translation (Section 32)

Any person may apply to the Commercial Court for a license to produce and
publish a translation of literary or dramatic work in any language, after expiry of
a period of seven years from the first publication of such work.

Where the work is not Indian work, any person may apply to the Commercial
Court for a license to produce & publish a translation, in printed or analogous
form of reproduction, of a literary or dramatic work in any language in general
use in India after a period of 3 years from the first publication of such work,
provided that such translation is required for the purpose of teaching, scholarship
or research.

But where translation is in a language not in general use in any developed country,
such application may be made after the period of one year from such publication.

License to Reproduce & Publish Works for Certain Purposes (Section 32A)

Where after the expiration of the relevant period from the date of first publication
of an edition of literary, scientific or artistic work,

 the copies of such edition are not made available in India, or

  such copies have not been put on sale in India for a period of six months to
the general public

then, any person may apply to the Commercial court for a license to reproduce
and publish such work in printed or analogous form of reproduction, at the price
at which such edition is sold or at a lower price for the purposes of systematic
instructional activities.

Termination of License (Section 32B)

If at any time after the granting of a license to produce and publish the translation
of work in any language, - the owner of the copyright in the work or any person
authorized by him publishes a translation of such work in the same language and
which is substantially the same in content, at a price reasonably related to the
price normally charged in India for the translation of works of the same standard
on the same or similar subject, the license so granted shall be terminated.

However, such termination shall take effect only after the expiry of a period of 3
months from the date of service of a notice on the person holding such license by
the owner of the right of translation intimating the publication of the translation.

Provided further that any copies already produced and published by the licensee
before such termination takes effect, may continue to be sold or distributed until
that copies are exhausted.

LICENSE ASSIGNMENT
It merely permits certain things to be It is the complete transfer of
done by the licensee. ownership.
No proprietary rights are created under The proprietary right arises from the
license. assignment.
 The license is personal; therefore, it is The assignee may re-assign or deal
not transferable or assignable without with his interest in any way he likes.
the grantors consent.
A mere licensee cannot sue an The assignee has the legal interest in
infringer in his own name without his own name, which entitles him to
joining the owner of the copyright as a sue the infringer in his own name as an
Co-plaintiff or a Codefendant. exclusive assignee.

COPRIGHT INFRINGEMENT

As per the Copyright Act, 1957, the use of a copyrighted work without the
permission of the owner results in copyright infringement. Infringement occurs
when a third person unintentionally or intentionally uses/copies the work of
another without giving credit. It is usually classified into two categories:

 Primary infringement: Primary infringement occurs when there is an actual

act of copying. In this case, the infringer may or may not know about
infringement.
 Secondary infringement: It refers to the infringement of copyright work
without actually copying it. Secondary infringement occurs when
unauthorized dealings take place, such as selling or importing pirated
books, etc. In this case, the infringer will know about infringement.

Elements for copyright infringement

 The copyrighted work is the original creation of the author.

 The copyright infringement work is actually copied from the work of the
author.

When copyright infringed [Section 51]

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

  A person without obtaining the permission of the copyright holder does
any act which only the copyright holder is authorized 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.

Copyright infringement occurs in India in the following cases:

 Copies of copyrighted work are made for hire/sale without authority or
permission, such as online piracy
 Infringing copies are distributed for personal and trade gains
 Copyrighted work is performed in a public place
 Infringing copies are imported into India
 Public exhibition of infringing copies
 Reproduction of a dramatic, literary, artistic or musical work other than in
the form of a cinematograph film
 Creating a recording embodying the copyrighted sound recording
 Copy of the cinematographic film

Essential Ingredients of Infringement

 Reproduction of the work in a material form;

 Publication of the work;
 Communication of the work to the public;
 Performance of the work in public;
 Making of its translations and adaptation; and
 Commercially exploiting the work, or trying to do so.

Copyright Infringement Examples

  When someone downloads movies from an unauthorized source, it will be
copyright infringement.
 When a person uses a television serial clip in a YouTube video without
giving credit and publishes the serial-clip on YouTube, it amounts to
copyright infringement.
 When someone uses a song’s music as background music in his/her song,
it results in copyright infringement.

Case: Hindustan Pencils Ltd vs. Alpana Cottage Industries: The Copyright
Board of Goa held that where the similarities between the artistic works of the
parties are fundamental and substantial in material aspects, it would amount to
copyright violation and the defendant's copyright is liable to be expunged from
the register of copyright.

Case: Ushodaya Enterprises Ltd vs T.V. Venugopal: AP High Court held that
even though the defendant has registered the carton under the Trademark Act, but
this may not come to help the defendant because the case of the plaintiff is that it
owns a copyright of the artistic work under the Copyright Act and no registration
is required for the same. Thus, the court held that the plaintiff was justified in
alleging infringement of his artistic work.

Case: Khajanchi Film Exchange vs. state of MP: The appellants apprehending
the violation of their copyright in the film. They prayed for the writ of Mandamus
without first exhausting the alternative remedy available under the Copyright Act.
The MP High Court Observed: There is no dispute in the submission that it is the
duty of police to be watchful in the area and detect crime and punish the criminal
in accordance with law. But the petitioners did not complain that any stage nor
did they seek action from other functionaries of the State. They ask for mandamus
without putting the grievance before the respondent and seeking their reaction.
The writ petition was filed 16 days before the release of the film. Enough time
appellants had, to approach the authorities/ police and later to the respondents
giving their reaction to the grievance. Therefore, petition was filed on mere
apprehension that appellants would be deprived of their rights which did not exist
when claim for mandamus was made. Mandamus can be granted only when
default, commission, or omission takes place which had not happened in this case.

Case: R.G. Anand vs. M/s Deluxe Films & Ors. 1978: The Supreme Court has
emerged the following propositions:

 There can be no copyright in an idea, subject-matter, themes, plots or

historical or legendary facts and violation of the copyright in such cases is
confined to the form, manner and arrangement and expression of the idea
by the author of the copyrighted work.
 In order to be actionable, the copy must be a substantial & material one
which leads to the conclusion that the defendant is guilty of an act of piracy.
 One of the surest and the safest test to determine whether or not there has
been a violation of copyright is to see if the reader, spectator or the viewer
after having read or seen both the works is clearly of the opinion and gets
an unmistakable impression that the subsequent work appears to be a copy
of the original.
 Where the theme is the same but is presented and treated differently so that
the subsequent work becomes a completely new work, no question of
violation of copy right arises.
 Where however apart from the similarities appearing in the two works there
are also material and broad dissimilarities which negative the intention to
copy the original and the coincidences appearing in the two works are
clearly incidental no infringement of the copyright comes into existence.

Case: Super Cassettes Industries Limited (SCIL) vs. YouTube & Google: SCIL
claimed that the YouTube business model makes a substantial profit from using
the copyrighted work uploaded without approval from the copyright owners and
without paying a royalty for the same. The court opined that YouTube and Google
should stop distributing, reproducing, displaying or transmitting on their portal
any audio-visual works in the exclusive ownership of the SCIL.

Certain acts not to be infringement of copyright [Section 52]

Certain acts do not result in copyright infringement. Such acts/uses of

copyrighted works are allowed without permission from the copyright owner. The
following are the acts that do not result in copyright infringement in India are:

 A fair dealing with a work for the purposes of:

o Personal or private use, including research
o Review or criticism of the work
o Reporting of current affairs, including the lecture delivered in public
 Adaptation or making of copies of a computer programme by the possessor
of a copy of such computer programme to:
o Usage of the computer programme for which it was supplied
o Make backup copies as a temporary protection against destruction,
loss or damage
 Storage of a performance or work
 Reproduction of work in a judicial proceeding
 Reproduction or publication of a work prepared by the Secretariat of a
Legislature for the exclusive use of the Legislature members
 Reproduction of work in a certified copy supplied or made as per law
 Recitation or reading in public of reasonable extracts from a published
dramatic or literary work
 Publication in a collection composed of non-copyright matter intended for
instructional use of short passages from published dramatic or literary
works
 Reproduction of a work
o by a teacher in the course of instruction,
 o as part of the questions to be answered in an examination, or
o as answers to such questions
 Performance of a dramatic, literary or musical work in an educational
institution by the students and staff or reproduction of a sound recording
and cinematograph film when the audience is limited to staff and students
 Causing a recording to be heard in public in any residential premises in an
enclosed hall or room meant for the common use of residents or as part of
the activities of a club or organisation not conducted/established for profit
 Performance of a dramatic, literary or musical work by an amateur society
or club, if the performance is given for the benefit of a religious institution
or to a non-paying audience
 Reproduction in a magazine, newspaper or other periodicals of an article
on current political, economic, religious or social topics, unless the article
author has expressly reserved the right of reproduction
 Reproduction of a work for private study or research or publishing an
unpublished dramatic, literary or musical work kept in a museum, library
or other institutions to which the public has access
 Publishing or making a drawing, engraving, painting, display or
photograph of a work of architecture
 Inclusion of an artistic work situated permanently in a public place or
premises to which the public has access, in a cinematograph film, if such
inclusion is by way of incidental or background to the principal matters
represented in the film
 Making a three-dimensional object from a two-dimensional artistic work
for industrial application
 Reconstruction of a structure or building as per the architectural plans or
drawings

REMEDIES FOR COPYRIGHT INFRINGEMENT

The authors/copyright owners can take legal action against a person or entity
infringing their copyrighted works. The copyright owner can file a civil case in a
court having jurisdiction and is entitled to remedies by way of damages,
injunctions and accounts. A criminal suit can also be filed in a court of a First-
Class Judicial Magistrate or Metropolitan Magistrate.

In the case of copyright infringement by an artificial judicial person like a

company or Limited Liability Partnership (LLP), the company/LLP and all
persons in charge at the time of committing the offence or responsible for the
conduct of the business would be liable for the infringement.

CIVIL REMEDIES [SECTION 55]

Where a copyrighted work has been infringed, the copyright owner is entitled to
remedies of injunction, damages and accounts.

However, when the infringer proves that he/she was unaware and had no
reasonable ground for believing that copyright existed in work at the infringement
date, the copyright owner will not be entitled to any remedy except an injunction.

There is a summary presumption in section 55(2) that in case of a literary,

dramatic, musical or artistic work, if a name purporting that to be the author or
the publisher appears on the work, such person shall for the propose of
infringement action be regarded as the author or publisher of the work, unless the
contrary is proved.

Thus, this is a rebuttable presumption and when challenged by the defendant, he

has to establish his claim of ownership and the subsistence of copyright in it.

Costs: The costs of all parties in any proceedings in respect of the infringement
of copyright shall be at the discretion of the court.

1. Interlocutory Injunction
It is a judicial process by which one who is threatening to invade or has invaded
the rights of owner, is restrained from commencing or continuing such act.

Interlocutory injunction is granted to provide immediate & temporary relief to

plaintiff during the pendency of the suit and ensures that no further loss/damage
is caused to the owner of the copyright during the period when the injunction is
in force.

There are three basic requirements for the grant of the injunction:

 Prima facie case

 Balance of convenience
 Injury or damage caused to the plaintiff

Once the court is satisfied that the case establishes the above three requirements,
it will grant the interlocutory injunction to the plaintiff.

Case: Gujarat Bottling Co Ltd. vs. Coca Cola Company & Ors., 1995: Supreme
Court observed that “The object of the interlocutory injunction is to protect the
plaintiff against injury by violation of his right for which he could not be
adequately compensated in damages recoverable in the action if the uncertainty
were resolved in his favour at the trial.

2. Mareva Injunction

The Mareva injunction comes into play when the court believes that the defendant
is trying to delay or obstruct the execution of any decree being passed against
him. The court has the power to direct him to place whole or any part of his
property under the court’s disposal as may be sufficient to satisfy the decree.

Basically, the court restrains the defendant from disposing of his assets, which
may be required to satisfy the plaintiff’s claim or to prevent the defendant from
removing his assets outside the jurisdiction while hearing is pending.

3. Permanent Injunction
If the plaintiff succeeds at the trial in establishing infringement of copyright, he
will normally be entitled to a permanent injunction to restrain future
infringements. This injunction will operate only during the unexpired term of the
copyright.

Case: Hawkins Cookers Ltd. vs. Magicook Appliances Co., 2002: The plaintiffs
who were manufacturing pressure cookers, got their label registered under the
Copyright Act. The defendants were using labels on their pressure cookers, which
were deceptively similar to the plaintiffs' label. The Delhi High Court held that
the unjust enrichment by the defendants was a mischief and the plaintiff was to
be protected. Hence permanent injunction was granted.

4. Anton Piller order

This order consists of following components:

 This order is passed to take into possession the infringed documents, copies
and other relevant material of the defendant, by the solicitor of the plaintiff.
 This order prohibits the defendant from disposing of or selling counterfeit
products.
 This order directs the defendant to disclose the names and addresses of
suppliers and customers

This order is named after the famous case of Anton Piller KG v/s Manufacturing
Process Ltd, 1976. In this case, the plaintiff Anton Piller, the German
manufacturer is successful in passing ex-parte awards of restraining the use of his
copyrighted products against the defendant.

5. John Deo’s order

In this order, the Court has the power to injunct others, then those impleaded in
the suit, who may be found violating the rights in the field of copyright. Thus,
this order is issued against the unknown person, who has allegedly committed
some wrong, but whose identities cannot be ascertained by the plaintiff.

6. Damages

Damages are compensation provided to the copyright owner. The purpose of

ordering to provide the damages to the copyright holder is to restore the owner to
the earlier position.

There are various factors to determine the damage amount. Generally, the
damages are the amount equivalent to the royalty which the defendant would have
paid, as if he got the license from copyright owner. But it does not mean that the
defendant has got a license from the copyright owner.

Various other factors, such as loss of reputation, loss of profit to the copyright
holder, decrease in the sale of the copyright holder’s work, etc., determine the
damages amount.

Case: Microsoft Corporation vs. K. Mayuri & Ors.: The Delhi High Court
observed that the general rule in respect of award of damages is that the party
coming to the court alleging wrong done to it by the defendant, has to prove the
actual loss suffered as a result of the infringing act of the wrong-doer. Therefore,
as per this normal rule for award of damages, the plaintiff is to either prove the
extent of loss suffered or, conversely, the advantage gained by the defendant by
his wrongful act at the cost of the plaintiff. Thus, in relation to 'economic' torts,
the general rule is that the measure of the damages is to be that sum of money
which will put the injured party in the same position as he would have been in if
he had not sustained the wrong.

7. Damages for conversion / delivery up

All infringing copies of any work in which copyright subsists, shall be deemed to
be the property of the owner of the copyright, who accordingly may take
proceedings for the recovery of possession and conversion thereof.

In a claim for damages for conversion it is a defense, if the defendant proves that
at the time of conversion of the infringing copies, he was not aware and had no
reasonable grounds for believing that copyright subsisted in the work or that he
had reasonable grounds for believing that such copies do not invoke infringement
of the copyright in the work.

8. Account of Profits

A plaintiff is entitled to opt for damages or for an account of profits. He cannot

obtain both an account of profits and damages.

The infringer can be asked to submit an account of profits made from the sale of
the copied works and pay such an amount to the copyright owner.

Accounts relates to the accounts of net profits earned by the defendant (infringer).
If there are no profits, accounts are not ordered as a remedy.

Restriction on remedies in the case of works of architecture. [SECTION 59]

Where the construction of a building or other structure which infringes or if

completed, would infringe the copyright in some other work which has been
commenced, the owner of the copyright shall not be entitled to obtain an
injunction to restrain the construction of such building or structure or to order its
demolition.

Remedy in the case of groundless threat of legal proceedings. [SECTION 60]

This section provides protection to a person who is being threatened by an owner

of a copyright with respect to initiating legal proceedings in respect of an alleged
infringement of the copyright.
In case a person is being threatened, the person can institute a declaratory suit and

 claim injunction against such threats and

 recover damages, in case the same have been sustained by the person due
to the threats.

Proviso: This section does not apply, if the person making such threats with due
diligence, commences and prosecutes an action for infringement of the copyright
claimed by him.

Case: Super Cassette Industries Ltd. vs. Bathla Cassettes India (P) Ltd, 1994:
Delhi HC held that once a suit for infringement for copyright is filed by the person
who has given the threat, the suit under Section 60 becomes infructuous as the
section ceases to apply in such a situation.

Owners of copyright to be party to the proceeding [SECTION 61]

In every civil suit or other proceeding regarding infringement of copyright

instituted by an exclusive licensee, the owner of the copyright is to be made a
defendant, unless the court otherwise directs.

Where such owner is made a defendant, he shall have the right to dispute the
claim of the exclusive licensee.

Where any such suit or proceeding is successful, no fresh suit or other proceeding
in respect of the same cause of action shall lie at the instance of the copyright
owner.

Jurisdiction of the Court in Civil Matters [SECTION 62]

Every suit or other civil proceeding arising under this Chapter in respect of the
infringement of copyright in any work shall be instituted in the district court
having jurisdiction.

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. When a person knowingly infringes or abets the infringement of a
copyrighted work, then the offence is a criminal offence under the Copyright Act.

Criminal remedies for copyright violation include:

 Punishment through imprisonment for 6 months, which may extend to 3

years.
 Minimum fine of Rs. 50,000, which can extend up to Rs.2 lakhs.
 Search and seizure of infringing goods.
 Delivery of infringing goods to the owner of the copyright.

In the case of a subsequent and second conviction, the punishment is

imprisonment for a minimum of one year, extending to three years and a fine of
Rs. 1 lakh, extending to Rs. 2 lakhs.

Any police officer (not below the sub-inspector rank) can seize the infringing
copies without a warrant when the police officer is satisfied that a copyright
infringement offence in any work has been committed and produce them before
the Magistrate.

The owner of copyright and also any other person can initiate criminal
proceedings, by filing a complaint before the competent First-Class Magistrate
within whose jurisdiction, the plaintiff resides or the infringement takes place or
deemed to have taken place.

ADMINISTRATIVE REMEDIES
When an infringement occurs through an importation (bringing of goods into a
country from abroad for sale), then an application can be made by the owner of
copyright in any work or by his duly authorized agent, to the Registrar of
Copyrights to ban the import of infringing copies into India and delivering the
confiscated infringing copies to the copyright owner.

EXCEPTIONS: FAIR DEALING

The term “fair dealing” has not been defined in the Act. It is a legal doctrine,
which allows a person to make limited use of copyrighted work without the
permission of the owner.

Fair dealing is a limitation and exception to the exclusive right granted by

copyright law to the copyright owner. It permits reproduction or use of
copyrighted work in a manner that otherwise would have constituted
infringement.

The ambit of “Fair Dealing” depends on different facts and circumstances. In

India, the Court applies basic common sense so that they can determine as to what
can be constituted as Fair Dealing on the case- to- case basis.

Fair dealing is a significant limitation on the exclusive right of the copyright

owner. It has been interpreted by the courts on a number of occasions by judging
the economic impact it has on the copyright owner. Where the economic impact
is not significant, the use may constitute fair dealing.

The fair nature of the dealing depends on the following four factors:

 the purpose of use

 the nature of the work
 the amount of the work used, and
 the effect of use of the work on the original
According to Section 52 of the Copyright Act, 1957, the fair uses can be made
for any work except computer program for the purposes:

 Fair dealing for private and personal use including research,

 Fair dealing for criticism and review,
 Fair dealing for reporting of current events, including lectures in public.

Case: R.G. Anand v. M/S. Delux Films and Others (1978): The respondent is a
film production firm, while the appellant is a playwriter. In 1953, the appellant
wrote a play titled “Hum Hindustani,” which was performed in New Delhi. The
play was so popular that it was presented again in various places. Due to the play’s
popularity, the appellant sought to have it made into a movie. The appellant’s
purpose was made known to the respondent, and the two met in New Delhi to talk
about the possibility of hearing it. The respondent was given a detailed
explanation of the entire play by the appellant, but no promise to film it was made
by the respondent. In 1956, the respondent produced a film titled “New Delhi,”
which was thereafter released. After watching the film, the appellant claimed that
the respondents had plagiarized his play and used it as the basis for a movie
without his consent. The appellants argued in court that the play and movie are
both founded on the same concept, i.e., “Provincialism.”

The Court determined that even if both the play and the movie may have been
inspired by the concept of “Provincialism,” they are very different from one
another. The play doesn’t illustrate the evils of dowry, but the movie does.
Because the concept in both the play and the movie is identical, the court struck
down the appellants’ claim because it is well-established law that a concept
cannot be protected by copyright.

Case: Academy of General Education, Manipal vs. B. Manini Mallya: The court
observed that “there can be fair dealing of a literary or dramatic work for the
purposes mentioned in Section 52, there cannot be any copyright infringement.
Moreover, it stated that if the performance is done before a non-paying audience
which is an amateur club or society then the same will also not be considered as
copyright infringement.”

Case: India TV Independent News Services Pvt. Ltd. vs Yash raj Films Pvt. Ltd.:
Where one of the various grounds of dispute was that the defendants "India TV"
broadcasted a TV show wherein a documentary is shown on the life of singers
wherein the singers were shown to perform their own songs. While the singer
sings, clips of movie scenes were shown in the background. The plaintiff, that is,
Yash raj Films Private Limited claimed that such a scene of the movie in the
background amounts to infringement of its Copyright. However, the defendants
claimed that such use of the plaintiff's copyrighted material constituted fair
dealing within the meanings of section 52 of The Copyrights Act. The Delhi High
Court in its judgment restrained the defendants from distributing, broadcasting or
otherwise publishing or in any other way exploiting any cinematograph film,
sound recordings or part thereof that is owned by the plaintiff.

This litigation battle went on for years, where different angles and viewpoints
were considered. In an appeal from the above order, the Hon’ble bench of Delhi
High Court also felt the need to overlook the conventional approach of dealing
with Section 52 of the Copyright Act, the bench set aside the order passed by the
single Judge and the restrictions thus imposed were accordingly removed.
However, the Appellants were still prohibited from broadcasting any
cinematograph film without the appropriate permission. It was through the
Copyright (Amendment) Act, 2012 that concept of fair dealing brought within its
scope musical recordings and cinematograph films.

Through this case the Indian legal system made advancement in the field of fair
dealing under Copyright by overlooking the rigid and conventional approach and
implementing the necessary changes.
Case: Oxford vs. Rameshwari Photocopy Service, 2012: The defendants (i.e.,
Rameshwari photocopy shop and Delhi University) were accused by the plaintiffs
that they regularly compile up the data from copyrighted books published under
their publication and provide it to the students in Delhi University. In 2012,
publishers like Oxford University Press, Cambridge University Press United
Kingdom, Cambridge University Press India Pvt. Ltd., Taylor & Francis Group,
United Kingdom and Taylor & Francis Books India Pvt. Ltd. filed a complaint
against the above-mentioned defendants for “infringing the copyrights of their
publications materials by photocopying, reproduction and distribution on a large
scale and circulating among the students and teachers of the university”. The
publishers sought to restrain the photocopy shop from supplying photocopied
course packs to students as it was violating the Indian Copyright Act, 1957 and
asked for compensation. The Delhi High Court ruled that the preparation of
‘course packs,’ i.e., compilation of photocopies of the relevant portions of
different books prescribed in the syllabus, and their distribution to students, did
not constitute an infringement of copyright in those books under the Copyright
Act, 1957, as long as the inclusion of the works photocopied (regardless of
quantity) pertained strictly to educational needs (which is a fair use).

INTERNATIONAL COPYRIGHT ORDER

Chapter IX deals with International Copyright under sections 40 to 43.

The Copyright Act applies only to works first published in India, irrespective of
the nationality of the author. However, the Act empowers the Govt. to extend the
benefits by treating the Foreign Works of the countries mentioned in the
International Copyright Order, 1999, as if they were Indian Works.

The benefits granted to foreign works will not extend beyond what is available to
the works in the home country and that too on a reciprocal basis i.e., the foreign
country must grant similar protection to works entitled to copyright under the Act.
The term of Copyright in India to the foreign work, will not exceed that conferred
by the foreign country.

SEC 40 – POWER TO EXTEND COPYRIGHT TO FOREIGN WORKS

This provision of the Copyright Act enables the Central Government to extend
copyright to foreign works by publishing an Order in the Official Gazette.

An essential feature of this provision is that only the countries mentioned in the
International Copyright Order, 1999, can be accorded copyright in India. Hence
countries which do not find their names in the International Copyright Order,
1999 cannot claim copyright for their works in India.

The Central Government can extend all or any provisions of the Copyright Act to
the works falling under the following categories, thus treating them in a manner
as if they were Indian Works.

a) Works published in any territory outside India to be treated in a manner as

if they were first published in India.
b) Unpublished works, whose authors at the time of making the work were
citizens of a foreign country to be treated in a manner as if the authors were
Indian citizens.
c) With respect to the domicile in any territory outside India, the Copyright
Act will apply to him as if such domicile were in India
d) Any work, whose author at the date of the first publication of the work was
a subject or citizen of a foreign country, or who was dead at the time of the
first publication & a subject or citizen of a foreign country, the Copyright
Act will apply to him as if he were an Indian citizen at that date or time.

PROVISO:

However, the proviso to this section dictates that before adding a country (other
than those countries with which India has entered into a Treaty or which is a party
to a Convention to which India is a party too) to the International Copyright
Order, 1999, the Central Government should make sure that the concerned
country has made or undertaken to make provisions for the protection, in that
country, of the works entitled to copyright under the Copyright Act of 1957. In
other words, the concerned foreign country should grant protection to works of
Indian authors.

The term of copyright protection in India shall not exceed the term of protection
conferred in the country of origin of the foreign work. Also, the term of protection
conferred by the foreign country should not exceed the term of protection given
by India.

The enjoyment of the rights conferred by the Copyright Act of 1957 shall be
subject to the fulfilment of the formalities and conditions prescribed by the
International Copyright Order, 1999.

Also, the International Copyright Order may provide that the whole of the
Copyright Act, 1957 or any part of it shall not apply to foreign works made before
the commencement of the Order or the Copyright Act; or to works first published
before the commencement of the Order.

Case: Microsoft Corporation vs. K. Mayuri & Ors.: The Delhi High Court stated
that the rights of authors of member countries of the Berne and Universal
Copyright Convention are protected under Indian Copyright law. India and USA
are signatories to both the Universal Copyright Convention as well as the Berne
Convention. The plaintiff's works are created by authors of member countries and
are first published in the said member countries. The plaintiff's works are, thus,
protected in India under section 40 of the Copyright Act, 1957 read with the
International Copyright Order, 1999.

SEC 40A - APPLICATION OF CHAPTER VIII TO BROADCASTING

ORGANISATIONS AND PERFORMERS
This section empowers the Central Government to extend the rights under
Chapter VIII to broadcasts and performances of foreign countries if it is satisfied
that such country has made or undertaken to make the necessary provisions for
the protection of rights in that country, as it is available in India under the
Copyright Act of 1957.

The Central Government can extend the rights of Broadcasting Organizations

conferred under Chapter VIII of the Copyright Act, 1957:

a) To Broadcasting organizations whose headquarters is situated in a country

which is included in the International Copyright Order, 1999 or the
broadcast was transmitted from a transmitter situated in a country included
in the Order, as if the headquarters of such organization were situated in
India or such broadcast were made from India.
b) To performances that took place in a territory outside India in a manner as
if they took place in India.
c) To performances that are incorporated in a sound recording that was
published in a country included in the Order as if it were published in India.
d) To performances not fixed on a sound recording broadcast by a
broadcasting organization, whose headquarters is located in a country
which is included in the Order as if the headquarters were situated in India
or where the broadcast is transmitted from a transmitter situated in a
country which is included in the Order as if such broadcast was transmitted
from India.

This section also empowers the International Copyright Order to apply Chapter
VIII either generally or to classes of broadcasts or performances.

The term of the rights of the broadcast organizations and performers in India
should not, however, exceed the term of rights conferred by the country of origin
of the foreign work, provided it does not exceed the period provided in the
Copyright Act of 1957.

The enjoyment of rights under Chapter VIII shall be subject to the fulfilment of
the formalities & conditions specified in the Order. Chapter VIII does not extend
to any performances or broadcasts made before the commencement of the Order.

SECTION 41 – Works of certain international organizations

According to this section, copyright in a foreign work would exist throughout

India where:

a) A (foreign) work is made or first published by the direction or control of

any organization and
b) There is no copyright in the work in India at the time of the first publication
of the work and
c) Either,
o the work is published in pursuance of an agreement in that behalf
with the author, where the agreement does not reserve to the author
the copyright in the work (or)
o under section 17, (which deals with the concept of First Owner of
Copyright), any copyright in the work would belong to the
organization.

Any international organization which at the material time did not have the legal
capacity of a body corporate shall have and deemed at all material times to have
had the legal capacity of a body corporate for the purpose of holding, dealing
with, and enforcing copyright and in relation to all legal proceedings related to
copyright.

The organizations which come under this section are those organizations which
are included in the International Copyright Order, 1999.
SECTION 42, 42A AND 43 – POWER OF CENTRAL GOVERNMENT TO
RESTRICT THE RIGHTS OF FOREIGN WORKS

Section 42 If it appears to the Central Government that a foreign country does

not give or has not undertaken to give adequate protection to the works of Indian
authors, the Central Government has the power to restrict the rights of such
foreign works published after the date specified in the order, or the authors
whereof are subjects or citizens of such foreign country & not domiciled in India.

This is an important provision in terms of diplomacy and international trade as

protection is given to certain intellectual properties on a reciprocal basis. This
provision serves as a safeguard to protect the interest of Indian authors and their
works internationally.

Section 42A is similar to section 42 but applies to foreign broadcasting

organizations and performers which are incorporated in such foreign country or
are subjects or citizens of such foreign country and not domiciled in India.

Section 43 dictates that every Order made by the Central Government under this
Chapter should be laid before both the Houses of the Parliament as soon as it is
made, and shall be subject to the modifications, the Parliament may make during
that session or the session immediately following.

INTERNATIONAL COPYRIGHT ORDER, 1999

The International Copyright Order is an important piece of law concerning the

copyright of foreign works. It was passed on 24th March 1999 and came to force
on 6th April 1999.

It was passed by the Central Government in the exercise of its power given in
Section 40 of the Copyright Act, 1957. It was passed in supersession of its
predecessor, the International Copyright Order of 1991. The Order contains the
conditions & formalities for foreign works and a schedule which list out the
countries that are eligible for copyright protection in India.

ISSUES IN DIGITAL COPYRIGHTS

The advancement of Digital Technology has been one of the finest creations of
the human mind. Digitalization has no doubt brought with itself a positive change
across the world, however the wrong use of it is also giving birth to chaos and
crime. The most affected intellectual property right is the copyright. Protection
of copyright has become a key issue in the digital era.

However, the easy access to materials available on the Internet has posed a great
concern for Copyright infringement. Copyright is one of the most important
Intellectual Property Right which denotes the rights possessed by the creators for
literary and artistic works. It includes works from books, paintings, computer
programs, films, database and maps etc.

Digitalization has made it considerably easy to copy, replicate and sell the works
of a copyright owner without his permission and detection of such infringement
becomes difficult. This has posed a great threat to the right of copyright owner.

1. Copyright and Internet

The Internet has been one of the major threats to copyright for a long time. The
information available online in the form of news, graphics, stories, images,
videos, screenplay, eBooks, and so on, has varying degrees of copyright
protection. Moreover, the vast levels of information available on the internet
make it extremely difficult to determine whether a specific piece of work is a
duplication of the original work or not.

It is a common myth that the information accessed via the internet on a public
domain can be copied freely. However, it is not the case unless and until a specific
piece of information has been made available by the govt. authorities, or the term
for copyright protection has expired, or the creator has surrendered his / her right.

2. Jurisdiction

In the case of online copyright infringement, various countries or regions could

be involved, therefore, determination of jurisdiction becomes difficult. Protecting
copyrights in the global market possess serious challenges as copyright
infringements are frequently connected to more than one state, either because the
infringer or the copyright owner stays abroad or the act of infringement is
committed in a different place.

3. Public use vs. Private use

The Copyright Act of 1957 renders the distinction between the reproduction of a
certain work for public and private use. This distinction further permits the usage
of reproduced copies of copyrighted work in the public domain with prior
permission from the original author or creator.

With the advancement in cyberspace, the transmission of work has changed.

Utilizing the internet sources, an individual can distribute or transmit the
copyrighted work to multiple users making it tough for the copyright laws to
protect the rights of the owner.

4. Domestic Intellectual Property Right Laws

At present, there is an absence of harmonious laws pertaining to IPR in different

states which often leads to delay in the process and an ineffective justice delivery
system.

For instance, few states possess the power to urge the Internet Service Providers
(ISPs) to run examinations of the materials that are being transmitted through the
internet, whereas, some states are not empowered with the same. This is necessary
so as to block the sites that infringes the copyrighted content; however, this
method of is not so easy because of the universally accessed cyberspace wherein
an individual can upload any information disregard their territorial jurisdiction.

Therefore, it is necessary that harmonious domestic IPR laws are implemented to

provide uniform guidelines to protect the copyrights from infringement.

5. Enforcing Liability

Several people are involved in copyright infringements. Information before being

transferred into the public domain goes through various layers and different
computers. Several people could be involved in such infringements, and
moreover, these people could be based in entirely diverse places.

While enforcing liability, it is significantly important to know on whom the

liability rests upon, which includes the parties who receive it or the intermediaries
such as the ISPs, cloud service providers, search engines, social media platforms.

6. Multimedia works

Multimedia work is the work that involves more than one form of
communication. These are combinations of various elements such as text, sound,
audio, video, images, graphics, presentations, live videos of speech and
performances and so on.

Generally, Copyright protection is available to multimedia under literary

(software program), artistic (images), cinematographic films (films or videos),
dramatic (plays), sound recording (musical works) and photographs. Protection
of rights of the creators and owner of the Copyright becomes difficult due to the
variety of rights available to copyright owners under the ambit of multimedia.

Copyright infringement in the multimedia environment involves:

 Copying the unique works of the creators without seeking their permission
 Distributing the works for any purpose other than education-related
 Creating unauthorized copies of the original works
  Selling or offering for sale the unique works.
7. Computer Software

Computer software refers to a collection of programs, documentation, and

procedures that perform a variety of tasks on a computer system. Software piracy
is a form of copyright infringement as it involves unauthorized copying,
distributing, exporting, renting or selling of the copyrighted software.

8. Social Media Platforms

Social media platforms, at present, have become a prominent mode of connecting

with people across the globe. Such platforms involve sharing the works which
may be copyrighted. The widespread practice of sharing material such as pictures
and videos on social media networks has led to an increasing number of copyright
infringement cases.

Copyright violations on social media platforms can take place in following ways:

 Saving, sharing, or re-posting the copyright-protected works

 Claiming ownership of already protected works
 Using the original works of other people without seeking their consent.

FEASIBLE SOLUTIONS

1) Improving the implementation of copyright rules: It is one of the most

effective strategies to combat copyright violations in the digital age. This
may involve increasing fines for copyright violations, widening the extent
of copyright protection, easy and timely legal procedure to hear the cases,
and enhancing international cooperation on copyright enforcement.

2) Education and awareness: Another solution is to raise consumer, content

provider, and policymaker education and understanding of copyright
concerns. These may involve public awareness campaigns, instructional
 resources for content creators, and policymaker training on copyright law
and its influence on the digital economy.

3) Creating new business models: In the digital age, traditional economic

strategies for content delivery may no longer be effective. To address this
issue, new business models that facilitate consumers' legal and affordable
access to digital material could be established. Examples include
subscription-based models such as Netflix and Spotify, as well as pay-
what-you-wish models such as Humble Bundle.

4) DIGITAL RIGHT MANAGEMENT

Digital Right Management includes techniques which have been developed to

control duplication, modification and distribution of original works. The authors
or the creators of the original works contended that DRM techniques are
necessary in order to protect their interest by preventing free and unauthorized
copying and distribution of their work. Some of the DRM techniques are:

a) ACCESS CONTROL AND COPY CONTROL

Access and copy control software enables the creator to keep a check on the free
and illegal exploitation of their work. These techniques ensure that only who pay,
must enjoy a right over the product.

Access controls are a category of software that is designed to prevent a user from
getting a first copy of a work unless they have a license to do so. Copy controls
are the software that try to stop public from making a reproduction of work once
they have obtained a copy.

Access controls are relatively easy to implement. Example of this can be a website
that requires customers to pay a fee before being offered a download.

b) ENCYPTION SCHEMES
Encryption Schemes allow creators to prevent any unauthorized access to their
original work. Encryption of content is a way to determine the authorized user in
the digital environment. Only authorized users have the keys to decrypt the work.

c) DIGITAL WATERMARKS

Digital Watermarks are the best techniques that help authors to trace the source
of a work and any unauthorized duplication or distribution of their original work.
The unique watermark embedded in the original work in this way any
unauthorized copying or use can be traced.

PROVISIONS UNDER INDIAN COPYRIGHT LAW

Many techniques have been developed to protect the original work like digital
watermarking, access and copy controls etc. However, despite the fact that these
techniques have been incorporated in the legislation, regulation and protection of
original works in the digital environment remains a goal that is yet to be achieved.

It is very important that ideas should be available to the general public so that the
flow of creativity must not be blocked. However, creators and authors must
always be incentivized for their efforts. Hence the interest of both must be kept
in mind while enacting and implementing DRM techniques.

d) Strengthening of Border Measures

Section 53, deals with the importation of infringing copies. This section provides
detailed border measures to strengthen the enforcement of rights by making
provisions to control the import of infringing copies by the Customs Department,
disposal of infringing copies and presumption of authorship under civil remedies.

e) Protection of Technological Measures [section 65A]

Any person who escapes an effective technological measure applied for the
protection of any of the rights, with the intention of infringing such rights, shall
be punishable with imprisonment, which may extend to two years, and shall also
be liable to fine. The rationale is to prevent the possibility of high-rate
infringement (digital piracy) in digital media.

f) Digital Rights Management Information [section 65B]

This section is intended to prevent the removal of the rights management

information without authority and distributing any work, fixed performance or
phonogram, after removal of rights management information.

As a result, any unauthorized and intentional removal or alteration of any rights

management information is a criminal offence punishable with imprisonment,
which may extend to two years and fine.

The protection of technological measures and rights management information

were introduced in WCT and WPPT as effective measures to prevent the
infringement of copyright in digital environments. The introduction of Sections
65A and 65B is expected to help the film, music and publishing industry in
fighting piracy.

Case: Tips Industries Ltd. vs. Wynk Music Ltd − In this case, the Bombay High
Court ruled that music streaming sites such as Wynk Music must get a license
from copyright owners prior to streaming their works, even if they have a
statutory license from the copyright society.
 UNIT - 2: THE TRADEMARKS ACT, 1999
INTRODUCTION TO TRADEMARK LAW

The development of trademark law can be traced back to the beginning of

industrial revolution which enabled large scale production and distribution of
goods. With the emergence of competitive market, manufacturers began to
identify their products by certain symbols, marks or devices so as to distinguish
their goods from similar goods manufactured and marketed by others.

In addition, manufacturers also started advertising their goods by using their

trademark on them. This led to trademark acquiring goodwill and reputation
among consumers of goods. After realizing the economic worth of the
trademarks, the competitors tried to copy well known trademarks or adopt
deceptively similar trademarks so as to earn profits by trading on the reputation
of another trademark.

Therefore, the need to protect the goodwill and reputation of trademarks was felt
in all the nations which led to the adoption of trademark law everywhere. At
international level, the first multilateral convention i.e., Paris Convention for the
Protection of Industrial Property was adopted in 1883.

TRADEMARK LAW IN INDIA

Prior to 1940 there was no statutory law relating to trademarks in India. A number
of problems of infringement of registered and unregistered trademark arose which
were resolved under Section 54 of the Specific Relief Act, 1877 and registration
was adjudicated under the Indian Registration Act,1908.

The Trade Marks Act 1940 introduced for the first time to address the issues
relating to the registration and statutory protection of trade marks in India. After
the enforcement of this Act, demand for protection of trademarks increased as
there was major growth in trade and commerce. But this Act was in force until
1958, when Trade and Merchandise Marks Act was passed. This Act was
repealed and subsequently got replaced with the Trademark Act, 1999 by the
government of India by complying it with TRIPS obligation recommended by the
World Trade Organization.

The Trade Marks Act, 1999 is an act which provides for registration and better
protection of trademarks for goods and services and for the prevention of the use
of fraudulent marks. Statutory protection of a trademark is administered by the
Controller General of Patents, Designs and Trademarks, a government agency
which reports to the Department of Industrial Policy and Promotion (DIPP),
under the Ministry of Commerce and Industry. The law also deals with the rights
of the trademark holder, nature of infringements, penalties for such infringement
and remedies available to the owner in case of such infringement.

INTERNATIONAL TREATIES AND CONVENTIONS

PARIS CONVENTION, 1883

The Paris Convention for the Protection of Industrial Property, commonly known
as the Paris Convention, is an international treaty that sets out the framework for
the protection of intellectual property (IP) rights such as patents, trademarks,
industrial designs, and trade names.

It was first adopted in Paris on March 20, 1883, and has been revised several
times since then. It was revised at Brussels in 1990, at Washington in 1911, at
The Hague in 1925, at London in 1934, at Lisbon in 1958 and at stock in 1967,
and lastly amended in 1979.

The Paris Convention was the first step towards intellectual property protection
not only in the country of origin but also in other countries. When the treaty was
initially signed, only eleven countries agreed to participate in this noble endeavor.
Today, there are 176 countries recorded as signatories to the treaty.
The Paris Convention for the first time provided the regulation for trademarks at
the international level. The Paris Convention establishes that member countries
provide national protection to trademark owners from other countries who apply
for trademark protection.

The Convention applies to three basic principles:

 National treatment

This principle requires the member countries to grant the same protection to the
nationals of other member countries in the same way that they grant to their own
nationals with respect to the protection of IP rights.

Nationals of non-contracting states are also entitled to protection under the

Convention provided they have existing industrial or commercial establishments
in a contracting state.

So, a foreign applicant must be given the same protection as a domestic applicant.
This principle aims to ensure that there is no discrimination against foreign
applicants, and it helps to promote the international exchange of ideas &
technology.

 Right of priority

The Convention provides for the right of priority in the case of patents and utility
models, marks and industrial designs. Right of priority means, an applicant who
has filed regular first application in one member country may apply for protection
in any of the other Contracting States within a certain period of time (12 months
for patents & utility models and 6 months for industrial designs & trademarks).

The later applications filed in other Contracting States will then be regarded as
they had been filed on the date of the first application. It means, these later
applications will 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.

This principle allows applicants to secure protection for their inventions,

trademarks, and designs in multiple countries without having to go through the
process of filing separate applications in each country.

 Common rules

Paris Convention outlines a few general rules that its signatory states must follow:

Patents: Patents granted in different Contracting States for the same invention are
independent of each other. The granting of a patent in one Contracting State does
not oblige other Contracting States to grant a patent. A patent cannot be refused,
annulled or terminated in any Contracting State on the ground that it has been
refused or annulled or has terminated in any other Contracting State.

Trademark: Registration of trademark is not regulated by the Paris Convention.

Instead, each member state must determine its own guidelines based on its local
laws. Similarly, registered marks must operate independently without undue
influence from other member countries. Also, member countries cannot refuse to
register a mark because the mark is not registered in its country of origin.

MADRID SYSTEM

The Madrid System is popularly and officially known as Madrid System for The
International Registration of Marks. It is a combination of Madrid agreement and
Madrid protocol. It is a system which is centrally administered by the World
Intellectual Property Organization (WIPO). This system can be availed of by an
individual or a company for registering their trademark in separate jurisdictions
through simply filing one application. The Madrid System is a very simple and a
great way to register one’s trademark worldwide.
So, Registration of trademarks in multiple jurisdictions around the world is
governed by two independent treaties –

 Madrid Agreement
 Madrid Protocol

MADRID AGREEMENT (1891)

The treaty of Madrid Agreement was concluded in the year 1891 and was revised
at Brussels in the year 1990. This treaty has been revised many times and the
latest amendment was done in 1979.

 The Madrid Agreement provides a mechanism that would allow an

individual to file a single international trademark registration application.
 This process was simplified, cost-effective and inexpensive.
 The Madrid Agreement not only simplified the process of registration of
international trademark but also eliminated the need for filing, prosecuting
or maintaining separate registration applications in multiple countries.
 The Madrid Agreement provides the same legal status to the mark across
all the member countries as that provided in the registered country from
where it is designated.
 If the Trademark office, which is situated in the designated country does
not send a refusal to the World Intellectual Property Organization within
12 months, then the mark will have the protection of the registered national
mark in that country.
 The Madrid Agreement also provides a simple renewal system of a mark
by a single filing with the WIPO.

Despite having so many advantages, the Madrid Agreement has some defects in
its structure. These defects are such as:
  One should register the mark in the home country before the protection is
awarded to the mark internationally.
 There is a risk of “Central attack” to the mark.
 There is a very short examination period.
 There is also a limitation on assignability.
 Due to these defects, many countries like Australia, Denmark, Japan,
United Kingdom, Sweden, etc. never joined the Madrid Agreement.

MADRID PROTOCOL (1989)

 The purpose of adopting the Madrid Protocol was to correct the

deficiencies of the Madrid Agreement.
 However, the aim and purpose of both the Madrid Protocol and Madrid
Agreement are same, that is to create a simple and cost-effective
international trademark registration procedure.
 Madrid Protocol is to ensure the protection of marks in multiple countries
through filing a single application at a single office in a single language
using a single currency.
 No local agent is required by an individual for filing of an application.

Registration Procedure: An application for international registration of marks

must be made to International Bureau designating one or more Contracting
Parties where protection is sought. Once the International Bureau receives the
international application, it carries out an examination for compliance with the
requirements of the Agreement, the Protocol, and their Common Regulations. If
there are no irregularities, the IB records the mark in the International Register,
publishes the international registration in the WIPO Gazette of International
Marks, and notifies it to each designated Contracting Party.
The Contracting Parties may examine the international registration for
compliance with their domestic legislation and if some substantive provisions are
not complied with, they have the right to refuse protection in their territory.

VIENNA AGREEMENT establishing an international classification of the

figurative elements of marks (1973)

The Vienna Agreement, concluded in Vienna in 1973 and amended in 1985.

establishes a classification (the Vienna Classification) for marks that consist of,
or contain, figurative elements.

 The system was established in 1973 by the Vienna Agreement and is

managed by the World Intellectual Property Organisation (WIPO).
 Specifically, the Vienna classification is a hierarchical system that
classifies the figurative elements of trademarks, into categories, divisions
and sections.
 Importantly, the Code classifies the figurative elements of trade marks into
29 broad categories, 145 divisions and 1600 sections.

The competent offices of Contracting States must indicate in official documents

and publication, relating to registration of marks - the numbers of the categories,
divisions and sections of the Classification to which the figurative elements of
those marks belong.

The Agreement also set up a Committee of Experts in which all members of the
contracting states are represented. The main task of the Committee is the
periodical revision of the Classification.

Additionally, not all countries recognize the Vienna Code. For example, Australia
has not ratified the agreement. Nevertheless, the Vienna Code is useful for
Australian businesses with international trade marks in contracting countries.

Purpose of the Vienna Code:

The World Intellectual Property Organisation established the Vienna Code to
simplify the international trade mark system. The Code unifies (merge) the
individual classification systems which each contracting country used in the past.
As a result, the Code removes the need for reclassifying systems when you
register trade marks in multiple countries.

Additionally, the Vienna Code makes trade mark searches easier. Indeed, if you
intend to register a trade mark, you will need to conduct a trade mark search to
ensure that it is available for use. However, this is difficult when searching for a
figurative element, such as an image that your business logo uses. Therefore, the
Vienna Code seeks to address this, by standardizing the trade mark search system.

TRIPS AGREEEMENT, 1994

Bretton Woods was the first agreement to be reached upon in 1944 by various
countries to govern the International Monetary policy. Bretton woods created two
institutions namely International Bank for Reconstruction and Development
(IBRD) in 1945 and International Monetary Fund (IMF) in 1946. Subsequently
the General Agreement on Tariffs and Trades (GATT) was established in 1947
to harmonize world trade.

Until the establishment of World Trade Organisation (WTO) in 1995, GATT was
the only multilateral instrument governing world trade since 1948. A total of eight
rounds of negotiations were held under GATT out of which first five rounds
concentrated exclusively on tariffs while the sixth round included discussions on
anti-dumping measures as well which included provisions for member nations to
control the dumping of goods by other nations into their territory which can affect
the member nation’s economy.

The last GATT round was the Uruguay Round (1986-1994). It was this round
when for the first-time discussions were held on trade related to agriculture,
services and IPR. After long discussions and complex negotiations, finally in
1994, WTO was established in 1994 and became effective from 1st January 1995.
All the 123 nations that participated in the Uruguay Round became the members
of WTO including India. At present there are 153 members of WTO i.e., almost
90% of World’s nations. WTO is responsible for the negotiation and
implementation of new trade agreements. It is also in-charge of ensuring strict
adherence to the trade agreements signed by majority of the world’s trading
nations.

One of the most important agreements of WTO is the TRIPS Agreement. This
Agreement came into force on 1st January, 1995. The TRIPS Agreement is an
international agreement administered by WTO and it sets down the minimum
standard for many forms of intellectual property regulations. The Agreement is
till date the most comprehensive agreement of a multilateral nature on IP.

The objective of TRIPS Agreement is:

 to reduce distortions and impediments to international trade,

 to promote effective and adequate protection of IPR, and
 to ensure that measures and procedures to enforce intellectual property
rights do not themselves become barriers to legitimate trade.

The TRIPS Agreement is divided into seven parts and consists of seventy-three
articles.

 Part I deals with general provisions and basic principles.

 Part II deals with standard concerning the availability, scope and use of
IPR’s.
 Part III deals with the enforcement of IPR’s.
 Part IV deals with acquisition and maintenance of IPR’s.
 Part V deals with dispute prevention and settlement.
 Part VI deals with transitional arrangements.
 Part VII deals with institutional arrangements and final provisions.
Features of TRIPS Agreement

Standards – In respect of each of the IP areas covered by the Agreement, all

member nations are obliged to provide a minimum set of standards for the
protection of IPRs. Under each of the areas of IP covered by the Agreement, the
main elements of protection are defined, namely the subject- matter to be
protected, the rights to be conferred and permissible exceptions to those rights,
and the minimum duration of protection.

Enforcement – Each member nation is obliged to provide domestic procedures

and remedies with respect to protection of IPR. Further, the agreement lays down
certain provisions so that right holders can effectively enforce their rights. These
provisions relate to civil and administrative procedures and remedies and detailed
specifications as to special requirements related to border measures and criminal
procedures.

Dispute Settlement – All the disputes arising between members of WTO with
respect to the obligations arising out of the TRIPS Agreement are subject to
WTO’s dispute settlement procedures.

Part 1 of the Agreement sets out general provisions and basic principles, like the
principle of national-treatment under which the member nations would provide
same treatment to the nationals of other member nations as the former would
grant to its own nationals with regard to protection of Intellectual Property Rights.

It also contains a most-favored-nation clause, under which any advantage, favour,

privilege or immunity accorded to the nationals of one member nation by another
member nation shall automatically be accorded to all the other member nations.

Part II of the Agreement sets out Substantive standards of protection:

1. Copyrights And Related Rights

The Agreement states that protection of copyrights extends to expressions but not
to ideas, procedures, methods of operation and mathematical concepts. The
Agreement ensures that computer programs will be protected as literary works
under the Berne Convention and lays down on what basis databases should be
protected by copyright. Rental rights have also been added in the area of copyright
and related rights.

2. Trademarks

The Agreement recognizes any sign or combination of signs, personal names,

letters, numerals, figurative elements, combinations of colours etc. eligible for
registration as trademarks. However, where signs are not inherently
distinguishable, registrability depends on distinctiveness acquired through use.

It provides that owner of a trademark has the exclusive right to prevent all third
parties from using identical or similar signs for goods or services which are
identical or similar to those in respect of which the trademark is registered.

The Agreement defines what types of signs must be eligible for protection as a
trademark. The Agreement also provides for the minimum rights to be conferred
on their owners. Marks that have become well-known in a particular country shall
enjoy additional protection. In addition, the Agreement lays down a number of
obligations with regard to the use of trademarks, their term of protection, and their
licensing or assignment.

3. Geographical Indication

As per the Agreement, Geographical Indications are those indications which

identify a good as originating in territory of a member nation where a given
quality, reputation or other characteristic of the good is essentially attributable to
its geographical origin.
The Agreement obligates all Parties to provide means to prevent the use of any
indication which misleads the consumer as to the origin of goods, and any use
which would constitute an act of unfair competition.

A higher level of protection is provided for geographical indications for wines

and spirits, which are protected even where there is no danger of the public's being
misled as to the true origin.

4. Industrial Designs

Member nations have to provide for the protection of independently created

industrial designs that are innovative and original. Designs can be denied
protection on the ground that they are not new or original or do not significantly
differ from the known design features. The term of protection of Industrial
Designs is 10 years from the creation of the industrial design.

5. Patents

As regards patents, there is a general obligation to comply with the substantive

provisions of the Paris Convention. In addition, the Agreement requires that 20-
year patent protection be available for all inventions, whether of products of
processes, in all fields of technology.

Inventions may be excluded from patentability if their commercial exploitation is

prohibited for reasons of public order or morality. The Agreement also allows
exclusions from patentability for diagnostic, therapeutic and surgical methods,
and for plants, animals (other than microorganisms) and essentially biological
processes for the production of plants or animals.

Plant varieties, however, must be protectable either by patents or by a sui generis

system. The Agreement lays down conditions for the grant of compulsory
licensing or governmental use of patents without the authorization of the patent
owner.
 6. Lay-Out Designs of Integrated Circuits

The Agreement provides that importing, selling, or distribution (for commercial

purposes) of a protected layout-design, an integrated circuit in which a protected
layout-design is incorporated, or an article incorporating such a circuit is
unlawful. The protection provided in this field of IP is not less than 10 years from
the date of filing of application for lay-out designs. However, member nations
may limit the duration of protection up to fifteen years from the date of creation
of the lay-out design.

7. Protection of Undisclosed Information (Trade Secret)

The Agreement obligates member nations to offer protection for trade secrets as
per the provision of the Agreement. TRIPS mandates that member countries
should create national legislation to prevent such information from being revealed
to, obtained by, or used by third parties without the agreement of the person who
is lawfully in possession of it, in a manner that is inconsistent with fair trade
practices.

Such information must be confidential, have commercial value as a result of its

confidentiality, and have been subjected to reasonable efforts to keep it hidden in
order to be granted protection.

Part III of the Agreement sets out the obligations of Member nations to provide
procedures and remedies under their domestic law to ensure that intellectual
property rights are effectively enforced by foreign right holders as well as by their
own nationals. Procedures should permit effective action against infringement of
intellectual property rights but should be fair and equitable, not unnecessarily
complicated or costly, and should not entail unreasonable time limits or
unwarranted delays.

The civil & administrative procedures and remedies include provisions on

evidence of proof, injunctions, damages and other remedies which would include
the right of judicial authorities to order the disposal or destruction of infringing
goods.

The Agreement establishes a Council for Trade-Related Aspects of Intellectual

Property Rights to monitor the operation of the Agreement and governments
compliance with it. Dispute settlement would take place under the integrated
GATT dispute-settlement procedures as revised in the Uruguay Round.

TRADEMARK LAW TREATY (1994)

The Trade Mark Law Treaty (TLT) was signed in Geneva on 28th October 1994.
The Trademark Law Treaty aims to regulate and rationalize the procedures of
national and regional trademark registration.

This is achieved through the simplification and harmonization of certain features

of those procedures, thus making trademark applications and the administration
of trademark registrations in multiple jurisdictions less complex and more
predictable.

The Treaty mainly concerns with the procedure before trademark office. The
majority of provisions of the Treaty may be divided into three main phases. The
rules concerning each phase are so constructed as to make clear the requirements
for an application or a specific request.

a) Application for registration

The contracting parties may be required to follow certain directions such as

submitting a request, the name & address and other indications concerning the
applicant and his representative; various indications related to the mark including
a certain number of trademark representations; the goods and services together
with the relevant classification; and a declaration of intention to use that mark.

b) Changes after registration

The second phase of the trademark procedure under the Treaty concerns changes
in names or addresses and changes in the ownership of the registration. Here too,
the applicable formal requirements are exhaustively listed in the Treaty. A single
request is sufficient even where the change relates to more than of trademark
applications or registrations, provided that the holder of the registrations or
applications and the new owner are the same for all registrations or applications
concerned.

c) Renewal

The Treaty standardizes the duration of the initial period of the registration and
the duration of each renewal to 10 years each.

SINGAPORE TREATY ON THE LAW OF TRADEMARKS, 2006

The Treaty was concluded on 27th March 2006 and entered into force on 16th
March 2009. The objective of the Singapore Treaty is to create a modern and
dynamic international framework for the harmonization of administrative
trademark registration procedures.

The Singapore Treaty is mainly concerned with procedural aspects of trade mark
registration and licensing and introduces greater flexibilities and efficiencies into
the delivery of trade mark registration services.

According to the World Intellectual Property Organization (WIPO), benefits of

this the Treaty will occur through "eliminating red tape, enabling trade mark
authorities to take advantage of modern communications technologies, and
further simplifying and standardizing trade mark office procedures". As such it
"promises to reduce transaction costs for brand owners".

The Singapore Treaty applies generally to all marks that can be registered under
the law of a Contracting Party. Most significantly, it is the first international
instrument dealing with trademark law to explicitly recognize non-traditional
marks such as holograms, three-dimensional marks, color, movement, sound,
taste and feel marks. The Regulations Under the Singapore Treaty provide for the
mode of representation of these marks in applications, which may include non-
graphic or photographic reproductions.

Means of Communication: The Singapore Treaty leaves the Contracting Parties

free to choose the means of communication with their offices. The Treaty
maintains a very important provision of the TLT, namely that the authentication,
certification or attestation of any signature on paper communications cannot be
required. However, Contracting Parties are free to determine whether and how
they wish to implement a system of authentication of electronic communications.

Relief measures in respect of time limits: The Treaty provides for relief measures
when an applicant has missed a time limit in an action for trademark office
procedure. Contracting Parties must make available at least one of the following
relief measures:

 extension of the time limit;

 continued processing; and
 reinstatement of rights,

if the failure to meet the time limit was unintentional or occurred in spite of due
care required by the circumstances.

Recordal of License: The Treaty also establishes common rules for the recording,
amendment and cancellation of trade mark licenses. It is hoped that the common
standards will ultimately result in greater legal certainty, cost savings and
efficiencies especially important in post-corporate transactions where trade mark
authorities must be informed of new terms, ownership, etc. In brief, recordal of a
license may not be required as a condition for the use of the mark by a licensee
in proceedings relating to the acquisition, maintenance and enforcement of marks.
Recordal of a license may also not be required as a condition for a licensee to join
infringement proceedings initiated by the trade mark holder or to obtain
infringement damages. However, any state or intergovernmental organisation
may still declare through a reservation that it requires licensee recordal as a
condition.

Establishment of Assembly: The creation of an Assembly of the Contracting

Parties introduced a degree of flexibility in defining the details of administrative
procedures to be implemented by national trademark offices. The Assembly is
endowed with powers to modify the Regulations and the Model International
Forms, and can also addresses questions relating to the future development of the
Treaty at a preliminary level.

Furthermore, the Diplomatic Conference adopted a Resolution supplementary to

the Singapore Treaty and the Regulations thereunder, with a view to declaring an
understanding by the Contracting Parties on several areas covered by the Treaty,
namely, that the Treaty does not impose any obligations on Contracting Parties
to

 register new types of marks, or

 implement electronic filing systems or other automation systems.

The Resolution also contains special provisions to provide additional technical

assistance and technological support to developing and least developed countries
with which enable them to take full advantage of the provisions of the Treaty. It
was recognized that LDCs shall be the primary and main beneficiaries of
technical assistance by Contracting Parties. The Assembly monitors and
evaluates, at every ordinary session, the progress of the assistance granted. Any
dispute arising in relation to the interpretation or application of the Treaty is to
be settled amicably through consultation and mediation under the auspices of the
Director General of WIPO.

TRADEMARK - Section 2(zb)

Trademark means a mark capable of being represented graphically and which is
capable of distinguishing the goods or services of one person from those of others
and may include the shape of goods, their packaging and combination of colours.”

A trademark must be a mark which include numerous things such as device,

brand, heading, label, ticket, name, signature, word, letter, numeral, shape of
goods, packaging or combination of colours. – Section 2(m).

Trademark is a symbol that allows a purchaser to identify goods or services that

have been proved satisfactory and not to buy goods or services that have not been
satisfactory.

Trademark is a marketing tool which increases financing of the business. With

the help of Trademark, Marketing of goods or services becomes much easier
because recognition of product with the trademark is assured and easier. The
owner can prevent the use of his mark or sign by another competitor.

Trademark renders an exclusive right on the owner of the mark to use the
trademark to identify good produced or services rendered by it.

It prevents other from making fraudulent use of the mark. A trademark owner can
commence legal proceedings of trademark infringement for preventing
unauthorized use of his registered mark by a third party. It prevents unfair
competitors from the usage of similar or deceptively similar marks.

An unregistered trademark can be protected under the common law principle of

passing off.

Functions of Trademark

 It identifies the product and its origin.

 It guarantees the quality of goods and services.
 It advertises the product.
 It creates an image for the product.
  It protects the skill and intellect of any company.

Essentials of Trademark

 It should be easy to speak and spell (if it is a word mark).

 If it is a device mark, then it should be capable of being described by a
single word.
 It should be easy to remember.
 It should not be too lengthy and complicated to be forgotten easily.
 It should be in the nature of being represented graphically.
 It must be used or proposed to be used in relation to goods or services.
 It must be distinctive. It should not be similar to any trademark that is
already popular or registered.
 It should appeal to the eye as well as the ear.
 It should satisfy the requirements of registration.
 The best trademarks are invented words or coined words or unique
geometrical designs.
 It can only be suggestive of the quality of the products, but not descriptive.
 The trademark should not be come under Prohibited classes of trademarks
mentioned under Trade Marks Act.

Case: Laxmi Kant Patel vs. Chetan Bhat Shah & Anr.: The Supreme Court has
observed that - “The law does not permit anyone to conduct his business in a
manner that may persuade customers to believe that goods or services belonging
to someone else belong to him or are related to him.” There are two reasons
behind this: –

 Honesty and fairness should be basic policies in the business world;

 When a person adopts in relation to his business or services that already
belongs to someone else, this creates confusion and is likely to turn
someone else’s customers and clients to his and result in damage.
 DESIGNATION OF TRADEMARK

Trademark is designated by:

 ™ (It is used for an unregistered trademark. It is used to promote or brand

goods).
 ℠ (It is used for an unregistered service [Link] is used to promote or brand
services).
 ® (It is used for registered trademark).

SOME IMP. DEFINITIONS UNDER TRADEMARK ACT, 1999

SERVICE MARK [section 2(z)]

Service means service of any description which is made available to potential

users. Service includes the provision of services in connection with business of
any industrial or commercial matters such as banking, communication, education,
financing, insurance, chit funds, real estate, transport, storage, material treatment,
processing, supply of electrical or other energy, boarding, lodging, entertainment,
amusement, construction, repair, conveying of news or information and
advertising.

Where a trademark is used in connection with services, it may be called "service

mark". A service mark is any symbol name, sign, device or word which is
intentionally used in trade to recognize and differentiate the services of one
provider from others.

Service marks do not cover material goods but only the allocation of services. For
ex: McDonald’s, Domino’s etc.

COLLECTIVE MARK – [section 2(g)]

Collective mark means a trade mark which distinguish the goods or services of
members of an association of persons (not being a partnership), from those of
others. – (The association of persons is the proprietor of the mark).
For example - CA logo of the Institute of Chartered Accountants for India, is only
used by registered member of the Institute of Chartered Accountants.

A Collective Mark is any specific sign or indication which distinguishes products

or services of a certain group of enterprises. This group may be an organization,
association, and so on.

Only the member companies or enterprises can use the collective mark.
Generally, such an association or organization is established as being distinct in
respect of certain specific quality, characteristics, geographical origin, or any
other criteria.

A collective trademark, on the other hand, represents an organisation or its

members as opposed to a regular trademark, which represents goods and services.

Collective Marks can aid the public in recognizing a specific quality, level of
qualification, or geographic origin.

CERTIFICATION TRADE MARK [section 2(e)]

A certification mark is a mark that indicates that certain properties of the goods
or services in respect of which the mark is used have been certified.

A certification mark indicates that your products and services have been
thoroughly tested in terms of their quality, safety, origin & durability.
Certification bodies certify that a product complies with all the set standards and
grant permission to businesses to use a certain kind of certification mark on their
products as trademark. For example: ISI, WOOLMARK, AGMARK,
HALLMARK etc.

It enables a business to tell their customers that its goods are of a high standard,
meet all regulations, and have the required documentation.

A certification mark shows the agreement between producers of goods and testing
organizations on a national level.
 TRADE DESCRIPTION [section 2(za)]

Trade Description briefly describes the goods or services, that a company or an

individual is going to sell. The main aim of adding the description is to prevent
retailers, manufacturers, or service providers from misleading customers.

Trade description means any description, statement, or other indication regarding:

 Number, quantity, measures, weight of goods.

 Standard of quality of any goods or services.
 Fitness, strength, performance or behavior of any goods.
 Place or Country where goods or services were made or produced.
 Name & address indicating the manufacturers.
 Mode of manufacturing, producing the goods or providing services.
 Material of which any goods are composed.
 Goods, being the subject of an existing Patent, Privilege or Copyright.

TRADE DRESS

Trade dress is a term that refers to the visual appearance of a product or its
packaging that denote the source of the product to customers.

The main objective behind providing protection to trade dress is to prevent the
customers from getting deceived who might purchase the deceptively similar
product with a similar packaging instead of the original product.

The features in trade dress are size, colour, texture, graphics, design, shape,
packaging, and many more.

REGISTRATION OF TRADEMARKS

Trade mark registration can help in preventing the duplication of a goods or

service by competitors or other persons. Today most businesses are involved in
building a brand and invest significant number of resources into advertising and
marketing initiatives. For such businesses, a trade mark registration will ensure
that their investment and efforts are protected from unscrupulous copy-cats.

Any person claiming to be the owner of the trademark or supposed to use the
trademark in future, may apply in writing to the appropriate registrar in a
prescribed manner.

The application must contain the name of the goods, mark and services, class of
goods and the services in which it falls, name and address of the applicant and
duration of use of the mark.

Conditions of registration

 [section 3]

The central government by mentioning in the official gazette appoint a person to

be known as the controller general of patents, designs and trademark who shall
be the registrar of the trademark. The central government may appoint other
officers as it thinks fit, for the purpose of discharging such functions of Registrar,
but under the superintendence and direction of the registrar.

 [section 4]

The Registrar may withdraw any matter pending before an officer and deal with
such matter himself either from the beginning or from the stage it was so
withdrawn or transfer the same to another officer who may proceed with the
matter either from the beginning or from the stage it was so transferred subject to
special directions in the order of transfer.

Registrar is to make an order in writing for the withdrawal of such matter and
record the reasons for doing so.

 [section 5]
The Register of Trade Marks shall be kept at the head office of the Trade Marks
Registry. And it shall be kept under the control and management of the Registrar.

All registered trademarks with the names, addresses and description of the
proprietors, notifications of assignment and transmissions, the names, addresses
and descriptions of registered users, conditions, limitations and such other matter
relating to registered trademarks are to be entered in the Register.

The Registrar may keep the records wholly or partly in computer floppies,
diskettes or in any other electronic form subject to prescribed safeguards.

GROUNDS FOR REFUSAL OF REGISTRATION

Absolute Grounds for Refusal of Registration [Section 9]

Section 9 of the Act lists down the absolute grounds for refusal of registration. If
any trademark comes under the grounds listed in this section, it cannot be
registered. The legislative intent behind this provision is to protect the interest of
the traders as well as the public who are genuine and bona fide users of various
marks in the form of signs, symbols, logos, words, etc. which have been acquired
by them in relation to their goods/services.

The absolute grounds for refusing registration are –

 Trademarks which do not possess any distinctive character. Distinctive

character means, trademarks which are not capable of distinguishing the
goods or services of one person from that of another person.
 Trademarks that consist of marks or indications which are meant to serve
in trade to define the kind, quality, quantity, intended purpose, values or
geographical origin of goods or services rendered.
 Trademarks which comprise of marks or indications which have become
customary in the current language or the established practices of the trade.
  Trademark which is likely to deceive the public or can even cause
confusion.
 Trademark which is hurting the religious sentiment of any class or section
of Indian citizens.
 Trademark which contains any kind of scandalous or obscene matters.
 Trademark which is prohibited under the Emblem & Names (Prevention of
Improper use) Act, 1950.
 A mark shall not be registered if it consists exclusively of:
o The shape of goods which result from the nature of the goods
themselves.
o The shape of goods which is necessary to obtain a technical result.
o The shape of goods which adds substantial value to the goods

Test of similarity

If one mark is deceptively similar to another the essential features of both must
be considered. They should not be placed side by side to find out if there are any
differences in the design. It would be enough if the disputed mark has such an
overall similarity to the registered mark as it likely to deceive a person usually
dealing with one to accept the other if offered to him.

Case: Mohd. Iqbal v. Mohd. Wasim (2002): It was held that “it is common
knowledge that ‘bidis’ are being used by persons belonging to the poorer and
illiterate or semi-literate class. Their level of knowledge is not high. It cannot be
expected of them that they would comprehend and understand the fine differences
between the two labels, which may be detected on comparing the two labels are
common. In view of the above, there appears to be a deceptive similarity between
the two labels”.

Case: Hindustan Development Corp. vs. Deputy Registrar of Trademark: The

issue involved was centered around the word “Rasoi” and whether it could be
registered as a trademark for hydrogenated groundnut oil or not. It was held that
the grammatical significance of a mark does not refer to the quality of goods,
instead, it must be construed from the point of view of the public at large. Thus,
to the general public, the word “rasoi” means cooking.

The word “rasoi” did not directly impute the good’s character or quality, the word
must be “distinctive” for it to be registrable. This distinctiveness must indicate
that the goods for which the mark is used is capable of distinguishing the goods
of the proprietor from those of others. Moreover, even if the word “rasoi” is
distinctive it cannot be registered because it is a common word and no one can
exclusively use such words and deprive others of using the common words of a
language which are public property. Therefore, in the instant case, the word
“rasoi” could not be registered as it lacked distinctiveness associated with the
applicant’s goods.

Case: Imperial Tobacco Co. of India Ltd. vs. The Registrar of Trade Marks:
The Imperial Tobacco Company manufactured and distributed cigarettes with a
label “SIMLA” all over the country. ITC ltd. made an application to the Registrar
for the registration in the year 1960 and 1966. But both the times the registration
application was refused by the registrar. The Calcutta High Court rejected the
appeal on the ground that the term “SIMLA” is a famous geographical place. This
term cannot be registered as a trademark.

Case: SBL Ltd v. Himalayan Drug Company: Division Bench of Delhi High
Court held that exclusive right over such word, abbreviation or acronym which
has become publici juris cannot be claimed.

Case: Amritpal Singh vs. Lal Babu Priyadarshi: The word RAMAYAN was
refused for registration as trademark. Intention of the applicant was to sought to
be registered as trade mark for fragrance spreading products. Registration
opposed inter alia on the ground that mark was a religious word and lacked
distinctiveness. It was also held that it would have been a case if “Ramayan” had
been prefixed or suffixed with some other word or words so that “Ramayan” was
not the prominent feature of the mark.

Case: Geep Flashlight Industries vs. Registrar of Trade Marks: The word
“Janta” used for electric torches was sought for registration. The Registrar refused
registration on the ground that it was neither distinctive nor had the capability to
distinguish the product of the applicant from those of others. The word “Janta” is
a common word and indicative of the fact that the goods are not expensive and
meant for the common man and did not have a direct reference to the quality or
character of the goods.

[Section 10] - Limitation as to Colour to Decide the Distinctive Character

A trade mark may be limited wholly or in part to any combination of colours.

Any such limitation is to be taken into consideration by the Registrar or the High
Court, while deciding the distinctive character of the trade mark. So far as a trade
mark is registered without limitation of colour, it is deemed to have been
registered for all colours.

Relative Grounds for Refusal of Registration [Section 11]

Section 11 lays down relative grounds for refusal of registration of a trade mark.
The relative grounds for refusal are applicable only when there already exists a
trade mark, in comparison to which the new trade mark is not registrable.

Section 11(1) states the following grounds for refusal –

 Trademarks which confuse the public as it is identical with an earlier

similar trademark of goods or services.
 Trademarks which confuse the public as it is similar with an earlier
identical trademark of goods or services.
Case: Toshiba Appliances Co. vs. Kabushiki Kaisha Toshiba: The applicant’s
mark ‘TOSIBA’ which was applied for registration had a close resemblance to
the opponent’s trademark ‘TOSHIBA’ which was used in respect of electronic
goods. This resemblance in the two marks was likely to confuse or deceive the
users. The court in the instant case held that the applicant’s mark ‘TOSIBA’ was
deceptively similar to the opponent’s mark ‘TOSHIBA’. There was a phonetic
similarity between the two marks.

Case: Amrit Dhara Pharmacy vs. Satya Deo Gupta: The word "Lakshman
Dhara" for a medicinal preparation was refused registration as a trademark, as it
could cause confusion in the minds of public, being deceptively similar to a
registered trademark "Amrit Dhara". The Supreme Court held that a critical
comparison of the two names might disclose some points of difference but an
ordinary purchaser who is of average intelligence & imperfect recollection would
be deceived by the overall similarity of the 2 names. The similarity of the 2 names
is misleading as to the type of drug he was looking for with a vague memory that
he had purchased a similar drug on a previous occasion with a similar name.

Section 11(2) states the following grounds for refusal –

 Trademarks which would take unfair advantage of a similar or identical,

earlier well-known trademark in India.
 Trademarks which would be detrimental to the distinctive character of a
similar or identical, earlier well-known trademark in India.

Section 11(3) prescribes that a trademark shall not be registered, if its use in India
is prevented due to the following reasons:

 where an unregistered trademark used in the course of trade is protected by

the law of passing-off or by virtue of any other law; or
 by the law of copyright.
The trademarks mentioned in Section 11(2) and 11(3) shall not be refused
registration unless an objection is raised in opposition proceedings by the
proprietor of the earlier trademark. – [Section 11(5)]

Section 11(4) provides an exception to all the grounds mentioned above. It states
that the trademarks that fall under Section 11 can be registered if the proprietor
of the earlier trademark consents to the registration. If the proprietor of the earlier
well-known trademark gives his consent to register the latter trademark, the
Registrar can register it.

[Section 12] - Registration in the case of honest concurrent use

Section 12 provides for the registration of identical or similar trademark by more

than one proprietor in the case of honest concurrent use or other special
circumstances.

It provides that in case of honest concurrent use or other special circumstances

which in the opinion of the Registrar, make it proper to do so, he may permit the
registration by more than one proprietor of the trademarks which are identical or
similar (whether any such trade mark is already registered or not) in respect of
the same or similar goods or services, subject to such conditions and limitations,
as the Registrar may think fit to impose.

WELL-KNOWN TRADEMARK [Section 2(zg)]

Well-known trademarks are the ‘marks which have gained enough recognition
among a significant portion of the public who uses such goods or obtain such
services, that the use of such mark in relation to other goods or services would
likely to be taken as a connection between those goods or services and the person
using the mark in connection with the first mentioned goods or services.
When such mark is used by others to promote the products/ services totally
different from that of the genuine products, then the target customers may be
deceived due to overwhelming popularity of brand name.

Unlike other trademarks whose goodwill and reputation are limited to a certain
specified geographical area and to a certain range of products, well-known
trademarks have its goodwill and reputation protected across the nation and
across categories of goods and services.

The Trade Mark Registry is prohibited by law from registering any mark as a
trademark that is deceptively similar to one of the well-known trademarks.

For instance, Google has been registered as a well-known trademark of Alphabet

Inc., which thereby means only Alphabet Inc. can register the term 'Google' for
any category of goods and services. Even if the service is not related to the
Internet industry, no other company but Alphabet Inc. can register 'Google' as its
trademark.

E.g., Coca-Cola, Pepsi, McDonald’s, Domino, etc., are popular brands that
qualify as well-known trademarks. In India, some of the familiar brands such as
“Bajaj, Bisleri, Honda, Horlicks, Infosys, Intel, Pizza Hut, Amul” are recognized
as well-known trademarks.

The importance of a well-known trademark lies in the fact that they bring
substantial commercial value to the trademark owners. Registration and
unauthorized use of such a trademark is an infringement of the trademark. The
unauthorized use of such a mark creates confusion about the quality of the product
among consumers, damaging the brand’s reputation. Illegitimate imitation of
trademarks is a punishable offense.

Section 11(6) - Well-known trademark: determining factors

Before a trademark is recognized as a well-known trademark, several factors
listed in Section 11(6) of the TM Act must be taken into account:

 Knowledge & Recognition of trademark in relevant sections of the public.

 Duration, extent and geographical area in which the trademark is used.
 Duration, extent and geographical area in which the trademark is promoted
with respect to the goods and services to which it applies.
 Registration or application for registration of the trademark to the extent
they reflect the use or recognition of the trade mark;
 The record of successful enforcement of the rights in that trade mark
including the record stating that the trademark has been recognized as well-
known by any court or Registrar.

Section 11(7) - The Registrar has to take into account following factors while
determining as to whether a trade mark is known or recognized in a relevant
section of the public-

 No. of actual or potential consumers of the goods or services to which that

trade mark applies;
 No. of persons involved in the channels of distribution of such goods or
services; and
 The business circles dealing with such goods or services.

Section 11(8) – Where a trade mark has been determined to be well known in at
least one relevant section of the public in India by any court or Registrar, the
Registrar shall consider that trade mark as a well-known trade mark for
registration under this Act.

Section 11(9) – Conditions not necessary for a Trademark to be Well-Known

The section specifically lays down the conditions that are not necessary for a
trademark to be considered as Well-known. These conditions are-
  That the TM has been used in India.
 That the TM has been registered.
 That the application for registration has been filed in India.
 That the TM is well-known or registered in any jurisdiction other than India
 That the trademark is well-known to the public at large in India.

Thus, it can be stated that for a trademark to be granted protection in India, it is

not necessary that the mark owner has his business in India or its trademark is
registered within India, nor is it required that the trademark is known to the
masses as a whole.

Section 11(10) – Obligation on the Registrar

It is an obligation on the Registrar of Trade Marks that while considering an

application for registration of a trade mark and opposition filed in respect thereof,

 He shall protect a well-known trade mark against the identical or similar

trademarks.
 He shall take into consideration the bad faith involved either of the
applicant or the opponent.

Section 11(11) – Trademark registered in good faith

Where a trade mark has been registered in good faith disclosing the material
information to the Registrar or where right to use a trade mark has been acquired
in good faith before the commencement of this Act, then, nothing in this Act shall
prejudice the validity of the registration of that trade mark or right to use that
trade mark on the ground that such trade mark is identical with or similar to a
well-known trade mark.

Case: Rolex Sa vs. Alex Jewelry Pvt. Ltd. & Ors., 2009: The defendants were
using the trade name "Rolex" of the plaintiff while dealing in artificial jewelry
for which the plaintiff brought an action against the defendant in order to prevent
him from using his trade name further. The court held that the plaintiff's business
dealt with watches, and the section of public using watches recognizes the trade
name Rolex, for which it is a well-known trademark. The same segment of people
if finds artificial jewelries with the same trade name might assume the artificial
jewelry to be from plaintiff's business. For the same reasons, the court considering
Rolex to be a well-known trademark granted injunction against the acts of
defendants.

Case: Whirlpool Co. vs. NR Dongre: In this case the Plaintiff i.e., Whirlpool had
not subsequently registered their trademark in India. However, the Plaintiff by
virtue of use and advertisements in international magazines had a worldwide
reputation and used to sell their machines in the US embassy in India. Meanwhile,
the Defendant started using the impugned mark on its washing machines.
Thereafter the Plaintiff brought an action against the Defendant and the Court
held that the plaintiff had an established transborder reputation in India and hence
the Defendants were injuncted from using the same for their products.

Case: Daimler Benz vs. Hybo Hindustan, 1994: The Plaintiff sought an
injunction against the Defendants who were using the Plaintiff's famous logo (the
roundel logo) and the word 'Benz. In this case, the Court considering the
Plaintiff's mark to be well known on account of trans-border reputation and
goodwill, granted injunction against the Defendants who were using the
impugned marks for selling their apparel.

Case: Kamal Trading Co. vs. Gillette UK Limited, 1998: An injunction was
sought against the defendants for using the mark 7’O Clock on their toothbrushes.
The Bombay High Court held that the plaintiff had acquired an extensive
reputation worldwide, including in India, by using the mark 7’O Clock on razors
and shaving creams; as such, it was a well-known mark. Using an identical mark
by the defendant would lead to the customer being deceived. As such, the
defendant was prohibited from using the mark.
Case: Aveda Corp. vs. Dabur India Ltd. (2010): Plaintiff sold beauty products
under the trade name “Aveda” in his business. On the other hand, the defendant
began utilizing the name “Uveda” as their trademark when they began marketing
their own line of cosmetics. It was held that the supply was of Plaintiff’s product
was limited to a single spa in India, Rishikesh. Therefore, there is very little
chance of confusion in people’s minds because the defendant, Dabur, has a much
larger consumer base than the plaintiff. As a result, the court only made a minor
suggestion to the defendant to reduce the likelihood of confusion by increasing
the font size of their name.

NAMES WHICH CANNOT BE REGISTERED

Section 13 and 14 of the Act provides that trademarks containing specific names
cannot be registered.

 Trademarks which have a word that is commonly used of any single

chemical element or chemical compound in relation to a chemical
substance or preparation cannot be registered.
 Trademarks which falsely suggest a connection with any living person can
be declined registration by the Registrar unless the consent of such living
person is obtained.
 Similarly, trademarks which falsely suggest a connection with any dead
person within twenty years of submitting the application for registration
can be declined by the Registrar unless the consent of legal representatives
of such person is obtained.

PROCEDURE OF TRADEMARK REGISTRATION

Step 1: Trademark Search

This step is very crucial before filing for trademark registration because
conducting a detailed search will help a trademark owner to know whether their
trademark is unique and distinct in nature and also check whether there is any
similar or identical mark already existing or not.

The trademark owner will get to know whether they have any existing
competition in the same trade or not, since, all the existing trademarks are
available with the Trademark Registry. Conducting a search gives a warning that
whether the owner will have any risk of using that trademark or is it safe.

Step 2: Application for Registration [section 18]

 Any person claiming the Trademark may make an application in writing to

the Registrar in the prescribed manner.
 A single application can be made for registration under different classes of
goods or services. However, different fees shall be applicable to each class
of the goods or services.
 The application for registration of a trade mark is to be filed in the office
of the Trade Marks Registry within whose territorial limits the principal
place of business in India of the applicant is situated. And in the case of
joint applicants the principal place of business of the first applicant is
situated.
However, where the applicant or any of the joint applicants does not carry
on business in India, the application is to be filed in the office of the Trade
Marks Registry within whose territorial limits the place mentioned in the
address for service in India (as disclosed in the application) is situated.

Step 3: Acceptance or Refusal of Application

The Registrar may reject the application or may accept it absolutely or make
certain amendments, modifications with some conditions or limitations.

In the case of a refusal or conditional acceptance of an application, the Registrar

shall record in writing the grounds for such refusal or conditional acceptance and
the materials used by him in arriving at his decision.
Step 4: Withdrawal of acceptance

After the acceptance of an application for registration of trademark but before its
registration, if the Registrar is satisfied:

 that the application has been accepted in error, or

 that circumstances are such that trade mark should not be registered,

then the Registrar may withdraw the acceptance after hearing the applicant if he
so desires, and proceed as if the application had not been accepted.

Step 5: Advertisement of Application

When an application for registration of a trade mark has been accepted whether
absolutely or subject to conditions, the Registrar shall advertise the application as
accepted together with the conditions or limitations, if any.

The purpose of advertisement is to give information to the public at large in

respect of the trademark advertised and afford an opportunity to oppose the
registration of the mark on given grounds.

Step 6: Opposition to Registration

Any person can file notice of opposition to registration to the Registrar in writing
within 4 months from the date of advertisement of an application for registration.

The registrar shall serve a copy of such notice of opposition to the applicant. The
applicant shall send a counter-statement of the grounds on which he relies for his
application, to the Registrar, within 2 months from the receipt of copy of notice
of opposition.

If the applicant fails to do so, he shall be deemed to have abandoned his

application. If the applicant sends such counter statement, the Registrar shall
serve a copy of statement to the opponent.

Step 7: Submission of Evidences & Decision of Registrar

Any evidence upon which the opponent and the applicant may rely is to be
submitted to the Registrar within the prescribed time. The Registrar shall give
them an opportunity of being heard, if they so desire.

Thereafter, the Registrar, after giving an opportunity of being heard to the

applicant and his opponent, decide that whether the registration is to be permitted
absolutely or subject to such conditions, as he thinks fit. He may take into account
the grounds of objection whether relied upon by the opponent or not.

The Registrar may require the opponent or applicant to give security for the costs
of proceedings before him, where such opponent or applicant, as the case may be,
neither resides nor carries on business in India subsequently. In default of such
security being duly given, the Registrar may treat the opposition or application,
as the case may be, as abandoned.

The Registrar may, on request, permit correction of any error or any amendment
in a notice of opposition or a counter-statement on such terms as he thinks just.

Correction & Amendment: The Registrar may at any time, whether before or
after acceptance of an application for registration, permit the correction of any
error in application or permit an amendment of the application.

Step 8: Registration

When an application for registration of a trade mark has been accepted and either

 the application has not been opposed and the time for notice of opposition
has expired; or
 the application has been opposed and the opposition has been decided in
favour of the applicant,

the Registrar shall register the said trade mark within eighteen months of the filing
of the application unless the Central Government directs otherwise.
A trade mark shall be registered as of the date of the making of the said
application. The date of application is to be deemed to be the date of registration.

On the registration of a trade mark, the Registrar shall issue to the applicant a
certificate of registration, sealed with the seal of the Trade Marks Registry.

Abandonment of application

Where the application for registration of a trademark is not completed within 12

months from the date of the application by reason of default on the part of applicant,
the Registrar may, after giving notice to the applicant treat the application as
abandoned unless it is completed within the time specified in notice.

The Registrar may amend the register or a certificate of registration for the
purpose of correcting a clerical error or an obvious mistake.

Duration of Registration

The duration of registration of a trademark shall be for a period of 10 years. But

it may be renewed from time to time.

Renewal of Registration

On an application made by the registered proprietor of a trade mark in the

prescribed manner and within the prescribed period and subject to the payment
of the prescribed fee, the Registrar shall renew the registration of the trade mark
for a period of 10 years from the date of expiration of the original registration or
of the last renewal of registration, as the case may be.

Removal of trademark

Before the expiration of the last registration of a trade mark, the Registrar is duty
bound to send notice at the prescribed time and in the prescribed manner to the
registered proprietor regarding the date of expiration and the conditions as to
payment of fees, upon which a renewal of registration may be obtained.
The Registrar may remove the trade mark from the register if at the expiration of
the prescribed time, those conditions have not been duly complied with.

The Registrar shall, however, not remove the trade mark from the register and
renew it for a period of 10 years if an application is made in the prescribed form
and the prescribed fee and surcharge is paid within 6 months from the expiration
of the last registration of the trade mark.

Restoration of registration

Where a trade mark has been removed from the register for non-payment of the
prescribed fee, the Registrar shall on receipt of an application and on payment of
the prescribed fee between 6 months to 1 year from the expiration of the last
registration of trademark, if satisfied that it is just so to do, restore the trademark
to the register and renew the registration of the trademark for a period of 10 years
either generally or subject to such conditions as he thinks fit to impose.

Case: Milmet Oftho Industries & Ors. V. Allergan Inc.: The Supreme Court
granted trademark protection to a well-known foreign brand. The court restrained
an Indian company from using the mark OCUFLOX. The judgment was given
irrespective of the fact that the mark was neither used nor registered in India. The
court held that the respondent was the first to enter the market and adopt the mark.
It does not matter that the respondent has not used the mark in India if they are
the first to enter the world market.

In the field of health care, it is highly important that all chance of confusion
should be avoided, keeping in mind that the public interest is not jeopardized.

PASSING OFF [Section 27]

Passing off is recognized as a common law tort which is used to protect and
enforce unregistered trademarks in India. It also prevents a person from
misrepresenting its goods and services from that of the other.
If the trademark has not been registered by the owner and infringement happens,
then it becomes a case of passing off.

Passing off occurs when a person makes a false representation to their customer
to lead them in believing that the goods or services, they are delivering are the
property of another person. In order to prevent this conduct, the Law of Passing-
Off was created.

Passing off applies to many forms of unfair trade and unfair competition where
one person’s activities harm the goodwill associated with the activities of another
person or group of individuals.

 Section 134 (1)(c) establishes the law of passing off.

 A common law remedy is provided by Section 27 of the Act.

Case: Reckitt & Colman Products Ltd., vs. Borden Inc., 1990: The court
enumerated 3 essentials elements of passing off:

 Goodwill
 Misrepresentation
 Damage to goodwill

It was stated in this case that in a suit for passing off, the plaintiff must establish
firstly, goodwill or reputation attached to his goods or services. Secondly, he must
prove a misrepresentation by the defendant to the public i.e., leading or likely to
lead the public to believe that the goods and services offered by him are that of
the plaintiffs. Lastly, he must demonstrate that he has suffered a loss due to the
belief that the defendant's goods and services are those of the plaintiffs.

Modern elements of passing off: Common law courts have come up with a few
basic characteristics of passing off which include the following:

 Misrepresentation
 Made by a person in the course of trade
  To prospective or ultimate consumers of goods and services
 To injure the business or goodwill of the other person
 It causes actual damage to the person by whom the action is brought about.

Section 27 provides that no person is entitled to institute any proceeding to

prevent the infringement of an unregistered trade mark. Neither such person is
entitled to recover damages from such infringement.

Section 27(2) recognizes the common law rights of the trademark owner to take
action against any person for passing off their goods and services as provided by
another person.

In an action for passing off, the plaintiff can only avail civil remedies.

The law of Passing Off is used to safeguard or protect the reputation and goodwill
attached to an unregistered Trademark. The Passing Off of Trademark is not a
statutory remedy, instead, it is a common law remedy.

Case: Honda Motors Co. Ltd vs. Charanjit Singh & Ors.: Plaintiff was using
trademark "HONDA" in respect of automobiles and power equipment’s.
Defendants started using the mark "HONDA" for its pressure cookers. Plaintiff
bought an action against the defendants for passing off 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.

Case: Cadila Health Care vs. Cadila Pharmaceutical Ltd.: The Court laid down
the following criteria to ascertain an act of passing off:

 Nature of marks.
 Degree of resemblance.
 Nature of the goods or services used in the marks.
 The resemblance in the nature and character of the goods or services.
  Class of public who will buy the goods or avail the services.
 Method of purchasing the goods or availing the services.
 Any other circumstance which may affect the act of passing off.

The Court also observed that it does not matter whether the two competing
companies are in the same or similar line of business. It is always necessary for
companies to prove the above-mentioned criteria.

Difference between Passing off and Infringement

The difference between an action in passing off and trademark infringement was
expounded by the Delhi High Court in the landmark case of Cadbury India
Limited and Ors. v. Neeraj Food Products, 2007, as follows:

 An action for passing off is a common law remedy whereas an action for
trademark infringement is a statutory remedy.
 The use of the trademark of the plaintiff by the defendant is a prerequisite
in the case of an action for infringement while it is not an essential feature
for an action for passing off.
 In order to establish infringement with respect to a registered trademark, it
is only required to prove that the infringing mark is same or deceptively
similar to the registered mark and no more proof is required while in case
of a passing off, only proving that the marks are same or deceptively
similar is not sufficient.
 In a passing off claim it is necessary to verify that the use of the trademark
by the defendant is expected to cause injury or damage to the plaintiff’s
goodwill, whereas, in an infringement suit, the use of the mark by the
defendant must not cause any injury to the plaintiff.
 When a trademark is registered, registration is given only with respect to a
particular category of goods. Protection is, therefore, provided only to
 these goods in infringement action whereas in a passing off action, the
defendant’s goods need not be the same; it may be different.

RIGHTS CONFERRED BY REGISTRATION [section 28]

 The registration of a trade mark provides exclusive right to the registered

proprietor of the trade mark to use the trade mark in relation to the goods
or services in respect of which the trade mark is registered.
 It also makes the registered proprietor entitled to obtain relief in respect of
infringement of the trade mark.
 The exclusive right to the use of a trade mark shall be subject to any
conditions and limitations to which the registration is subject to.

INFRINGMENT OF TRADEMARK [Section 29]

Infringement is the violation of exclusive right granted to a registered proprietor

of a trademark.

Infringement may occur when one party, the “infringer”, uses a trademark which
is identical or confusingly similar to a trademark owned by another party, for the
identical or similar goods or services as to cause confusion in the mind of the
public. Therefore, according to the Act, a trademark is infringed if:

 If the trademark is a copy of a registered trademark with a few additions or

alterations.
 If the infringed mark is printed or used in advertisements.
 If the infringed mark is used in the course of trade
 If the mark used is so similar to a registered mark that it is likely to confuse
or deceive a consumer when selecting a category of product.
 If Infringing trademark takes unfair advantage or is detrimental to the
reputation of the registered trademark.

In an action for infringement of trademark, the following conditions must be met:

  The person filing the suit (plaintiff) must be the registered owner of the
trademark.
 The person who is infringing must be using a mark that is similar to that of
the plaintiff and such use is likely to confuse the consumer.
 Such use by the defendant is not accidental in nature.
 The use of the mark by the defendant must be in the course of trade of
similar goods or services to that which the trademark is registered to.

Types Of Trademark Infringement

DIRECT INFRINGEMENT

Section 29 lays down the law related to direct infringement of the trademark. As
per the law, direct infringement has been defined as in the following cases:

 Similar or Deceptive: If the trademark is identical to that registered

trademark or somehow creates confusion in people's minds with the
registered one, it also falls under direct infringement.
 Used without Owner's Permission: If the use of a registered trademark has
been done without the owner's authorization.
 Use of a similar trademark in the same class: The unauthorized person
should use the trademark for the propagation of goods and services which
fall under the same category or class of products or services under which
the original trademark is registered.

INDIRECT INFRINGEMENT

 Vicarious Infringement: When a person can control the actions of a direct

infringer to infringe, then it is said to be vicarious infringement.
 Contributory Infringement: When the person knew about the infringement,
& contributes to direct infringement, & influences the principal infringer
for committing infringement, is said to be contributory infringement.
Case: DM Entertainment v. Baby Gift House and Ors.: The appellant company
was incorporated in 1996 to manage & improve the career of the Punjabi singer,
Daler Mehndi to reach a wider audience. The defendants began to sell toys of
Daler Mehndi, but appellant company sued them for wrongfully endorsing the
singer and infringing his right of publicity. The appellant company had full rights,
titles and interests to endorse the singer under the Trademark, Daler Mehndi.

Section 29 of the Trade Marks Act, 1999 states the aspects of infringement stating
that when anyone uses a Trademark which is similar or deceptively similar to an
already existing Trademark and has not been entitled to do so, has committed an
infringement of Trademark. Trade Marks Act, 1999 does not, however, speak
about passing-off. Through previous judicial decisions, it has been drawn that
passing off does not only involve using marks of similar nature but also creating
confusion in the public of the rightful proprietor of the mark.

In the claim for false endorsement, the court argued that where an individual or a
group of persons uses the name of another sell a product in such a way that the
society believes the products were either from the person it is sold under or was
endorsed by him or her, it will amount to false endorsement.

Therefore, the defendants were infringing on the name, brand, and trademark of
the Daler Mehndi by relying on his fame to market the toys. They ought to have
obtained permission prior to producing those toys.

Case: Castrol Limited vs. P.K. Sharma: Plaintiff is the registered owner of the
trademarks Castrol, Castrol Gtx and Castrol Gtx 2 in respect of oils for heating,
lighting and lubricating. During the month of December 1994, plaintiffs came to
know that the defendant was carrying on business of selling multigrade engine
oil and lubricants under the trade mark 'Castrol Gtx & Castrol CRB' in identical
containers as used by the plaintiffs. Plaintiff filed a suit for perpetual injunction.
It was held that the use of the said trade marks by the defendants is an attempt of
infringement. The prayer of the plaintiff is accepted.

Case: The Coca Cola Company vs. Bisleri International Pvt. Ltd.: The
defendant, Bisleri by a master agreement, had sold and assigned the trademark
MAAZA including formulation rights, know-how, intellectual property rights
and goodwill for India with respect to a mango fruit drink known as MAAZA to
Coca Cola. In 2008, the defendant company filed for registration of the mark
MAAZA in Turkey and started exporting fruit drink under the name MAAZA.
The plaintiff, Coca Cola claimed permanent injunction and damages for
infringement of trademark and passing off. The court granted an interim
injunction against the defendant (Bisleri) from using the trademark MAAZA in
India as well as for export, which was an infringement of the trademark.

Case: Clinique Laboratories LLC & Anr. v. GUFIC Limited & Anr.: The issue
was between the registered trademark of the plaintiff and the defendant. In the
present case, the plaintiff had registered the trademark of CLINIQUE whereas,
the defendant filed for the trademark on 'CLINIQ At this juncture, the plaintiff
filed for the revocation of the defendant's trademark since it was said to infringe
the trademark of the plaintiff. It was also said to cause confusion in the mind of
the consumers. The Hon'ble Court favored the plaintiff and discerned that the
defendant's mark is similar and identical to that of the plaintiff, it was also
ascertained that such a similarity had the tendency to deceive the general public.
The Court regarded that it was imperative to grant a temporary injunction in the
favor of the plaintiff till the disposal of suit by the competent authority.

Case: Torrent Pharmaceutics Ltd. vs. Welcome Foundation Ltd.: In case of

marks that have acquired an international reputation, an action for its protection
against un-authorized use will lie even if the owner of the trademark does not
have any business activity in India.
Case: Compaq vs. Dell: "Dell" computers published an advertisement claiming
that their home computers functioned similarly to "Compaq" computers but were
cheaper. Their claims about function were untrue in various important details.
The court found it to be an infringement and granted interlocutory relief in respect
of injurious falsehood.

WHAT DOES NOT AMOUNT INFRINGEMENT OF TRADEMARKS?

[section 30]

Section 30 of the Trademarks Act, 1999 lays down the certain conditions wherein
a trademark cannot be said to have been infringed. Such conditions can be used
by the alleged infringer as defenses in suits for infringement of trademark and
hence escape his liability. These conditions include:

 When any person makes use of a trademark in accordance with honest

practices in industrial or commercial matters.
 When the use of a registered Trademark is not in pursuit of taking any
undue advantage or prove the use to be detrimental to the distinctive
character or reputation of the trademark.
 Use of a mark for the indication- When the registered trademark is used to
indicate the quality, kind, intended purpose, geographical origin, value,
time of production or any other characteristics of goods or services.
 Use of mark which is outside the scope of registration- When trademarks
are registered, there are certain cases where they are subjected to certain
conditions and limitations. Whenever the alleged infringement is under the
ambit of those limitations, then it does not constitute to be a case of
infringement of trademarks.
 Implied consent – Where a person uses the mark in relation to goods or
services for which the registered owner had once applied the mark and had
not subsequently removed it or impliedly consented to its use: in such cases
the use cannot be said to be an infringement.
  Use of two registered Trademark identical or similar to each other: The use
of registered trade mark being one of two or more registered trademarks
which are identical or similar, the exercise of the right to the use of that
registered trademark does not amount to infringement.
 Use of a Trademark is in relation to accessories and parts: If a registered
trademark for any goods and services is used in relation to parts and
accessories to other goods and services. Such usage is reasonably
necessary and the effect of such usage may not be considered as the deceit
of the original.

EXCEPTIONS OF TRADEMARK INFRINGEMENT

The exceptions are as follows:

1. Fair Use

It allows the use of a trademark without permission in certain circumstances. Fair

use includes uses for purposes such as commentary, criticism, news reporting,
teaching, scholarship, or research.

The Courts will determine that whether a particular use is fair or not, by
considering factors such as:

o purpose and character of the use,

o nature of the trademark,
o amount and substance of the use, and
o effect on the market for the trademark owner’s products or services.

For example, a news article that uses a trademark to identify a company or

product would likely be considered fair use.

2. Nominative Use

It allows the use of a trademark to refer to the product or service of the owner of
trademark. Nominative use is often used in comparative advertising, where a
company compares its product to a competitor’s product by using the
competitor’s trademark.

To qualify as nominative use, such mark is used for facilitating the identification
of the goods, and the use must not create confusion or suggest endorsement or
affiliation with the trademark owner.

For example, a car company may use a competitor’s trademark to compare its
own car’s fuel efficiency to the competitor’s car. The use of the competitor’s
trademark is necessary to identify the product being compared, and as long as the
comparison is truthful and not misleading, the user would likely be considered
nominative use.

3. First Sale Doctrine

It allows the resale of trademarked products without permission from the owner
of a trademark. Once a trademarked product has been sold, the trademark owner’s
rights to control the product’s distribution and use are exhausted. This means that
the purchaser of the product has the right to resell, lend, or give away the product
without the trademark owner’s permission.

For example, if you purchase a shirt with a Nike logo on it, you have the right to
resell the shirt without Nike’s permission. However, the first sale doctrine does
not allow you to modify or alter the trademarked product before reselling it.

4. Descriptive Fair Use

It allows the use of a trademark to describe or refer to a product or service, as

long as the use is not misleading or confusing to consumers. This exception is
often used in the context of product reviews or critiques, where a trademark is
used to identify the product being reviewed.
For example, a food critic may use a trademark to identify a particular restaurant
or dish being reviewed. As long as the use is not misleading or confusing, the use
would likely be considered descriptive fair use.

5. Parody

Parody is an imitation of someone else's work with a view to ridicule or criticize

such work. In order to avail the defense of fair dealing the parodist must show
that there was no intention, to compete with the copyright holder of the work and
to derive profits from such competition and also, the motive of the alleged
infringer in dealing with the work must not be improper.

Case: Tata Sons Ltd vs. Greenpeace International and Greenpeace India: It was
held by the Delhi High Court that reasonable comment, ridicule or parody of a
registered trademark can be made if the intention of the maker is to draw attention
to some activity of the owner of the trademark. Where the use is not completely
for a commercial purpose, the court allows parody. This emerged because the
courts gave more importance to the freedom of speech and expression as against
trademark law.

6. Acquiescence

Where there has been a delay in bringing action of the infringement by the
plaintiff it is often ruled that the plaintiff has waived his rights as the trademark
owner and implicitly or explicitly permitted use of its mark by the subsequent
user.

Effect of Acquiescence: Section 33 of the Act allows the defendant to take the
plea of ‘acquiescence’ against the proprietor of the trademark for his ignorance
and inaction even after being aware of the use of the proprietor’s mark in good
faith for the continuous period of five years.
Case: Khoday India Ltd vs. The Scotch Whisky Association & Ors.: The Plaintiff
manufactured whiskey under the mark PETER SCOT since 1968. The defendant
found about the plaintiff’s use of such a mark in 1974 and filed for rectification
in 1986 because of two factors, one being the presence of the term Scot in the
PETER SCOT mark, and second because of the presence of the slogan on the
Whiskey bottle under the mark, which they alleged that had persuaded customers
to think that PETER SCOT brand Whiskey was also a Scotch Whiskey. Khoday
pleaded the defense of delay and acquiescence which was ruled in their favour.

7. Prior Use

(Saving for vested Rights): Section 34 of the Indian trademark act protects the
rights of owners of a trademark who have not registered their trademark but are
using it before anyone else for a period of time.

The rights of the prior user of the mark will override the subsequent user even if
the subsequent user has registered the trademark. This allows a defendant to take
up this defense where the defendant has been using the mark for a longer duration
of time as compared to the registered user and has gained a reputation in the trade
concerned.

Case: M/s R.J. Components & Shafts v. M/s Deepak Industries Ltd.: The
plaintiff was the sole proprietor of the registered trademark NAW who was in the
business of manufacturing and marketing of ‘gears’ being tractor parts. The mark
was registered in 1983 and was still valid at the time this dispute took place. The
defendant argued that the trademark was obtained by fraud and the plaintiff was
aware that the trademark belonged to the defendant who was using the same mark
uninterrupted with respect to gears being tractor parts since 1971 from their
manufacturing unit M/s New Allenberry Works, Faridabad, the abbreviation of
which was used as a trademark. The goods of the defendant were being supplied
to various government departments and semi-government departments on
contract basis in addition to sale to the general public, therefore the trademark
had become distinctive and associated with the name of the defendant alone.
Although the trademark was never registered by the defendant, the court held in
their favour. The defense of prior use may also be pleaded where the defendant
has not renewed a previously registered trademark but has continued to conduct
business under the same mark.

JURISDICTION [section 134]

Suit for infringement or for passing off shall be instituted in any court not inferior
to a District Court having jurisdiction to try the suit.

The suit can be instituted at the place, where the rights holder or one of the rights
holders

 actually, and voluntarily reside or

 work for gain or
 carries on business.

REMEDIES OF TRADEMARK INFRINGEMENT or FOR PASSING OFF

CIVIL REMEDIES

Section 135 provides that in any suit for infringement or passing off, the court
may grant relief which includes injunction and at the option of the plaintiff, either
damages or an account of profits, together with or without any order for the
delivery-up of the infringing labels and marks for destruction or erasure.

1. Injunction

An injunction is stated as stopping one individual from carrying out particular

activity or action during the judicial proceedings. An Injunction is an order which
will restrict the further use of the infringing trademark.

The court can pass Ex parte or Interlocutory Injunction in the following matters:
  for the discovery of documents,
 restraining the defendant from disposing of any assets which can cause
adverse effect to the plaintiff,
 preservation of infringing goods, documents or other evidences.

If proceedings are going on and it doesn’t become clear whether there is

trademark infringement or not, in that case, the court can pass a temporary order
to stay the use of the trademark by the accused.

2. Perpetual Injunction

It is an injunction that prohibits and prevents the defendant completely, for all
time, from performing any such acts that violate the exclusive rights of the owner
of the unregistered or registered Trademark. Usually, a perpetual injunction is
granted when the suit of Infringement is finally settled by the court.

Case: Intel Corporation vs. Dinakaran Nair & Ors.: In this case, the plaintiff's
mark was INTEL, which was well known. The defendants started using the mark
ARTINTEL. The court observed that the use of the word INTEL by the
defendants in their mark was with the object of showing some connection with
the mark of the plaintiff INTEL and to take advantage of the goodwill and
reputation of the plaintiff. The chances of such deception increased when the
product range was same or similar. In the case permanent injunction was granted.

3. Damages

Damages refer to monetary compensation awarded to the person who suffered

any wrongful loss because of the act of another person. The monetary value of
financial loss or loss for the reputation of the brand is recovered under damages.

Damages can be claimed by the aggrieved party on grounds that the exclusive
right of using the trademark he owns has been ceased and this subsequently has
led to him or his enterprise suffering losses.
 4. Custody of infringing materials

The court is empowered to direct the infringer to deliver up all printed material
bearing the mark/name of the plaintiff, including name boards, stationery,
invoices, business cards, goods, dyes, blocks, cartons, labels, packaging boxes,
plastic covers etc. to the plaintiff for the purpose of their destruction.

A search and seizure order of the court prohibits and prevents the defendant from
delivering all products or goods that are labelled or branded with the brand name
of the plaintiff. Here, the court can direct the defendant for the return of such
related material accounts and also to destroy all such goods or products
resembling the products or goods of the plaintiff.

5. Account of Profits

Account of profits is an equitable remedy which requires the defendant to hand

over to the plaintiff the actual profits made due to the infringing activities.
Account of profits are the actual profits which the defendant has made by
infringing the legal rights of the plaintiff.

Measure for recovery of reputation

The court may direct the infringer to take measure to restore the reputation of the
company/business which suffered because of him. This can be achieved through
an apology in advertisements or by giving a statement which brings back the faith
of the public in the company or business whose trademark was infringed.

6. Anton Piller Order

These are prior partial orders to inspect the defendant’s premises. A court order
which requires the defendant to permit the plaintiff or their legal representative
to enter into the defendant’s premises to obtain the legal evidences for that
particular case.

7. Mareva injunction
In such order, the court has the power to freeze the assets of the defendant where
the property is likely to be dissolved or cancelled. Basically, the court restrains
the defendant from disposing of his assets, which may be required to satisfy the
plaintiff’s claim or to prevent the defendant from removing his assets outside the
jurisdiction while hearing is pending.

CRIMINAL REMEDIES

Trade Marks Act,1999 also provides several provisions that could be counted as
a criminal remedy for the infringement of the trademark which are as follows:

 Section 103- Any person falsifies any trademark or falsely applies to goods
or services any trade mark shall be punishable with imprisonment for a
term which shall not be less than 6 months but which may extend to 3 years
and with fine which shall not be less than Rs. 50,000 but which may extend
to Rs. 2,00,000.
 Section 104- Any person who sells goods or providing services in which
false trademark or false trade description is applied, then he shall be
punishable with imprisonment for a term which shall not be less than 6
months but which may extend to 3 years and with fine which shall not be
less than Rs. 50,000 but which may extend to Rs. 2,00,000.
 Section 105- It provides that if a person who has already been convicted
of an offence under section 103 or 104 is again convicted, he shall be
punishable for the second and for every subsequent offence with
imprisonment which shall not be less than one year but which may extend
to three years and with fine which shall not be less than 1 lakh rupees but
which may extend to 2 lakh rupees.

ADMINISTRATIVE REMEDIES

The registration of a deceptively similar trademark can also be stopped by filing

the opposition within four months from date of publication.
One can also apply for rectification of Register by applying for removal of
deceptively similar trademark in case if it is registered.

ASSIGNMENT AND LICENSING

A brand or Trademark owner can transfer his rights with respect to his trademark
either by way of assignment or by licensing. In India, The Trade Marks Act, 1999
deals with assignment as well licensing of trademarks.

To put it summarily, in case of an assignment of a trademark, there is a change in

the ownership of the registered brand and in case of licensing, the right in the
trade mark continues to vest with the original owner but only few restricted rights
to use the brand/mark are given to the third party.

ASSIGNMENT OF A TRADEMARK

Assignment means transferring rights, interests, titles and benefits from one
person to another. Assignment of a trademark means to transfer the owner’s right
in a trademark to another person. The transferring party is called the assignor, and
the receiving party is called the assignee.

Section 2(b) of the Trade Marks Act, 1999 states that assignment means an
assignment of a trademark in writing by the act of the concerned parties, i.e., the
assignment of trademarks is conducted by way of a properly executed Trademark
Assignment Agreement.

In general, the terms Assignment and Transmission are used interchangeably, but
Section 2 of the Trademark Act clearly distinguishes between the two. In the case
of a trademark assignment, ownership of the registered brand transfers to the
assignee, whereas in the case of a trademark transmission, the right in the
trademark remains with the original owner but only a few limited rights to use
the brand/mark are granted to the third party.
Section 2(zc) of the Trade Marks Act, 1999 states that transmission” means
transmission by operation of law, devolution on the personal representative of a
deceased person and any other mode of transfer, not being assignment;

Section 37 - Power of Registered Proprietor to assign and give receipts

Any person who is registered as proprietor of trademark in the register of

trademarks has the power to assign a trademark and give receipts in lieu of
consideration received for such assignment. Thus, a trademark proprietor can
assign a trademark to another person.

Section 38 - Assignment and Transmission of Registered Trademark

A registered trademark may be assigned or transmitted with or without the

goodwill of the business concerned and in respect either of all the goods or
services or of some only of those goods or services.

In case of a registered Trademark, such assignment is required to be recorded in

the Register of trade marks.

Section 39 - Assignment and Transmission of Unregistered Trademark

An unregistered trademark may be assigned or transmitted with or without the

goodwill of the business concerned.

Kinds of Trademark Assignment

1. Complete Assignment

The trademark proprietor transfers all rights in the trademark to another person,
including the right to earn royalties, to further transfer, etc.

For example: X is the proprietor of brand ‘ABC’. X assigns his trademark ‘ABC’
completely through an agreement to Y. After this, X will not have any rights with
respect to the brand ‘ABC’.

2. Partial Assignment
The trademark proprietor assigns the trademark to another person with respect to
only specific goods and services. The transfer of ownership in the trademark is
restricted to specific goods and services.

For example: X is the proprietor of a brand ‘ABC’ which deals with sauces and
dairy products. X assigns the rights in the brand ‘ABC’ with respect to only dairy
products to Y and retains the rights in the brand ‘ABC’ with respect to sauces.

3. Assignment with Goodwill of Business

The trademark proprietor assigns the rights, entitlements and values associated
with a trademark to another person. When the trademark is assigned with
goodwill, the assignee can use the trademark for any class of goods or services,
including the goods or services which were already in use by the assignor.

For example: X is the proprietor of ‘Sherry’ brand relating to hair products. X

assigns the brand ‘Sherry’ to Y with goodwill. Y will be able to use the brand
‘Sherry’ with respect to hair products and any other products Y manufacture.

4. Assignment without the Goodwill of Business

The trademark proprietor assigns to the assignee rights and entitlements in a

trademark with respect to the products or services that are not in use. The assignor
assigns with the condition that the assignee is not entitled to use the trademark
relating to the goods or services already in use by the assignor.

For ex: X is the proprietor of a brand ‘Sherry’ that he uses for manufacturing and
selling bags. X assigns the brand ‘Sherry’ without goodwill to Y. Y will be able
to use the brand ‘Sherry’ for any other product other than bags.

Restriction on Assignment of a Trademark

The Trade Mark Act 1999 also puts certain restrictions on the assignment of a
registered trade mark wherein there exist possibilities of creating confusion in the
mind of public/users. Such restrictions are:
Parallel Use Restriction – Section 40

 The assignor cannot assign a trademark when the assignment results in the
creation of exclusive rights in more than one person with relation to the
same or similar products or services.
 Thus, multiple exclusive rights relating to the same/similar products or
services in more than one person are not allowed.
 It prevents the parallel use of a trademark by more than one person in
relation to the same/similar products or services.

Multiple Territorial Use Restriction – Section 41

 The assignor cannot assign a trademark when the assignment results in the
creation of an exclusive right in different persons in various parts of India
relating to the same/similar products or services.
 The assignor cannot assign a trademark when the assignment results in the
creation of an exclusive right in different persons in various parts of India
relating to the same/similar products or services sold or delivered outside
India.
 Thus, assigning rights in different parts of India relating to the same/similar
products or services is not allowed.

Pre-Requisites for Assignment of Trademark

The pre-requisites for assignment of a trademark are as follows: –

 The trademark assignment should be in writing.

 The assignment should be between two identifying parties, i.e., assignor
(owner of the trademark) and the assignee (buyer of the trademark).
 The assignor should have the intent and must consent for the trademark
assignment.
  The trademark assignment should be for a proper and adequate
consideration (amount).
 Assignment Agreement must be duly executed i.e., it must be notarized,
stamped as per the applicable Stamp Act, stamp duty.

Case: Cinni foundation vs. Raj Kumar Shah & Sons: It was found that the
trademark CINNI was used by the owner. The deed of assignment has been
created and duly signed between the parties. After a certain time, it is found that
the trademark is not a registered trademark and so the defendant tries to claim the
trademark in which court decided that according to the law, assignee acquire no
title without registration of the assignment deed.

[section 42] - Conditions for assignment

Where an Assignment of a Trademark is made otherwise than in connection with

the goodwill of a business. Then, the assignment shall not take effect unless
assignee apply to the registrar for directions w.r.t advisement of the assignment
and advertises it in such form and manner and within such period as the Registrar
may direct but not later than 6 months from the date on which the assignment is
made or after an extended period of 3 months if registrar allows for it.

But the below mentioned scenarios would not be considered as an assignment of

trademark otherwise than in connection with the goodwill of the business:

 if the trademark is assigned for some goods and services along with the
goodwill of the business concerned for those goods and services.
 the assignment is done for those goods which are exported and those
services which are used outside India with the assignment of goodwill.

[Section 45] - Registration of Assignment

 When a person becomes entitled by assignment to a registered trademark,

he shall apply in the prescribed manner to the Registrar to register his title.
  The Registrar shall, on receipt of the application, register him as the
proprietor of the trade mark in respect of the goods or services in respect
of which the assignment has effect.
 He shall also enter all the particulars of the assignment in his register.

When there is a reasonable doubt about the veracity of any statement or any
document furnished, the Registrar may require the applicant to furnish evidence
or further evidence for proof of title.

Where the validity of an assignment is in dispute between the parties, the

Registrar may refuse to register the assignment until the rights of the parties have
been determined by a competent court and in all other cases the Registrar shall
dispose of the application within the prescribed period.

LICENSING OF A TRADEMARK

Trademark licensing is the process wherein a registered proprietor of a trademark

authorizes a third party to use the mark in the course of trade without transferring
the ownership of the mark.

Through the process of trademark licensing, the owner of a specific trademark

has the ability to provide a third party the right to use the trademark in a restricted
manner and in exchange for a royalty.

The most important thing to remember is that ‘licensing’ is not sale of the mark
or absolute transfer. The ownership to the mark is retained by the owner/holder
and only a limited right to use, sell products under the mark etc. are given to the
third party.

The Trademark owner can also put some other restrictions on the usage of
registered Trademark via the terms that they put into the Trademark Licensing
Agreement. For example, the proprietor may license a trademark to be used for
only particular goods and services.
The term License or Licensing is not mentioned in the Trademark Act,1999. The
term “Registered user” is used for licensee. Section 2(1)(r) of the Trademark
Act,1999 defines “Permitted use” means the use of a registered trademark by a
registered user with the consent of registered proprietor.

Though the Act is silent on the issue of license of an unregistered trademark, such
licensing is deemed lawful under common law and is commonly referred to as
common law licensing. Nothing in the Act suggests that the rights of a licensee
in the case of an unregistered trademark are different from that in the case of a
registered trademark.

Trademark licensing benefits both the licensor and the licensee. The licensor
earns money by way of royalty, while the licensee gets to commercially exploit
the mark. In addition to monetary benefits, the licensor also benefits due to the
expanding reach and popularity of the mark. But, if left unchecked, licensing
could also harm the repute of the mark. Hence, it is of utmost importance to
incorporate clauses with respect to quality checks of goods or services in the
license agreement.

Who can grant a Trademark License?

The trademark license can only be given by the registered trademark’s owner.

In India, there are 2 types of licenses for trademarks that are registered:

 A simple license agreement that pertains to permissive use and

 A registered user, where the license agreement is registered with the
Registrar of trademark. The licensee is granted specific legal rights under
this license.

Licensing of Trademarks is generally based on some agreed terms & conditions

concerning the quality standard of the proposed product, maintenance of the
established status of the concerned product and Trademark, exclusiveness for the
same, the different ways the Trademark may be used, etc.

Trademark Licensing is undertaken for a specified time. The Indian Trademarks

Act has not advised any legal terms or tenure for Trademarks Licensing in India.

Section 48 – Registered Users

A person (other than the registered proprietor of a trade mark) may be registered
as a registered user in respect of all or any of the goods or services in respect of
which the trade mark is registered.

The use of the word "may" in Section 48(1) of the Act makes it apparent that
registration of a licensing agreement is not mandatory for it to be licensed. The
agreement, however, must be in writing as oral licensing is no licensing.

Section 49 – Registration as registered user

For registering an individual as a Registered User or Licensee of a Trademark,

the registered owner (Licensor) and the proposed registered User (Licensee) shall
jointly apply in writing to the Registrar along with:

 A written Agreement or duly authenticated copy thereof, entered into

between the registered owner and the proposed Registered User concerning
the permitted use of the Trademark.
 An Affidavit made by the registered owner which should contain details
such as:
o Relationship between the registered owner and the proposed
registered user
o Degree of control by the registered owner over the permitted use by
the Licensee.
o Stating the goods & services in respect of which registration is
proposed.
 o Duration of the use of Trademark.
o Conditions or restriction, if any, w.r.t the mode of use, place or
region to use the trademark.
 Extra documents or proofs as may be required by the Trademark Registrar
or as may be prescribed.

Once the Registrar is satisfied with the aforesaid application and all the
particulars, he registers the proposed registered user/ licensee in respect of the
goods or services as to which he is satisfied.

The Registrar shall issue notice of such registration to other registered users of
the trademark, if any.

Therefore, upon request by the applicant, the Registrar shall take steps to ensure
that the information given for the purpose of an application under this section
(other than matters entered in the register) are not disclosed to rivals in trade.

Section 50 - Cancellation/Variation of Registration as a Registered User

The registration may be cancelled by the Registrar on the application in writing

by registered proprietor or the registered user or any other registered user, if any.

The registration may be cancelled on any of these grounds:

 If the Registered User or Licensee has used the Trademark in any way not
stipulated in the Agreement.
 If the mark is used to cause confusion in the minds of people/consumers.
 If either party misrepresented or fails to disclose material facts crucial to
the agreement or registration.
 If circumstances have changed since the date of registration in such a way
that at the date of such application for cancellation, they would not have
justified registration of the registered user
 If the terms of the license agreement are violated.
  If there is any fraud or misrepresentation committed by either party.
 If the Trademark is no longer registered in respect to goods or services.

Before cancelling the registration, the registered proprietor shall be given an

opportunity of being heard.

The registrar shall issue notice to the registered proprietor and other registered
users who will get affected by this cancellation.

Section 51 – Power of registrar to call for information relating to agreement

in respect of registered users.

In order to ascertain whether the registered user agreement is in force - The

Registrar may at any time during the continuance of the registration, require the
registered proprietor to confirm as to whether the agreement under section
49(1)(a) on the basis of which registered user was registered, was still in force.

If the registered proprietor fails to furnish the confirmation within one month, the
registered user shall cease to be the registered user on the day immediately after
the expiry of the said period of one month and the Registrar shall notify the same.

Sec 52 – Right of Registered user to take proceedings against infringement.

 The registered user may institute any proceedings in his name for the
infringement, keeping in mind that there is an agreement between the
parties.
 The proceedings will be initiated as if the registered user were the
registered proprietor himself.
 In this situation, the registered proprietor will be made a defendant.
 The rights and obligations of such registered user in such cases are
concurrent with those of the registered proprietor.
  However, the registered proprietor who has been made the defendant shall
not be liable for any cost unless he enters an appearance and further takes
part in the proceedings.

Sec 53 - No right of permitted user to take proceeding against infringement

Any person referred in section 2(r)(ii) shall have no right to institute any
proceeding for any infringement.

APPEALS

Section 83 - 100 deals with appeals, but all the provisions are omitted except the
below mentioned sections.

Section 91 - Appeals to the High Court

Any person aggrieved by the order / decision of the Registrar may prefer an
appeal to the High Court within three months from the date on which the order or
decision sought to be appealed against is communicated to the person preferring
the appeal.

An appeal may be admitted after the expiry of the aforesaid period, if the
appellant satisfies the High Court that he had sufficient cause for not preferring
the appeal within the specified period.

An appeal to the High Court shall be:

 in the prescribed form

 verified in the prescribed manner
 accompanied by a copy of the order or decision appealed against &
 by such fees as may be prescribed.

Section 97 –Rectification of Register

 A certified copy of every order or judgement of the High Court relating to

a registered trade mark shall be communicated to the Registrar by the HC.
  The Registrar shall give effect to the order of the High Court and shall
rectify the register in accordance with such order.

UNCONVENTIONAL TRADEMARKS

 A non-conventional trademark is a trademark that does not fall in the pre-

existing statutory conventional categories of trademarks.
 Unconventional trademarks are those trademarks which get recognition for
their inherently distinctive feature.
 An unconventional trademark must possess the communicative ability to
differentiate the products & services of one company or individual from
those of others.

Certain conditions are required to be fulfilled to register an unconventional

trademark:

 The mark should be inherently distinctive.

 The mark should be able to distinguish the particular product from other
products.
 The mark should be capable of graphical representation.

Types of Unconventional Trademarks

The Indian Trademarks law recognizes only colour, shape of goods, and sound
marks as registrable marks. The Act specifically states that in order to secure
trademark protection, a mark must either be graphically representable or should
have acquired distinctiveness. As various unconventional marks, such as smell,
taste, touch/texture, and hologram marks, cannot be graphically represented,
therefore, they are not registrable in India.

1. Sound Marks
Sound mark can be anything which is auditory in nature. When compared to other
non-conventional trademarks, sound mark is the most registered and protected
one and it is gaining wide popularity in many countries.

While the Act of 1999, allowed the registration of sound marks, there were no
specific guidelines or requirements for filing the application for sound marks.
However, with the introduction of Trade Marks Rules in 2017 (‘Rules’), specific
rules for registering sound marks have been provided. In order to register a sound
mark, the proprietor is now required to reproduce a sound clip along with the
musical notations (not exceeding 30 seconds) in the trademark application.

The purpose of a sound mark is to help customers in easily identifying a specific

product on the commercial market, without causing much confusion.

Sound mark has the capability to be graphically represented using a series of

musical notes with or without the usage of words.

The sound of Harley Davidson, Nokia melody, Tarzan Yell, the corporate jingle
“Dhin Chik Dhin Chik” of ICICI Bank are the examples of registered trademarks.

2. Colour marks

The colour can be perceived by our visual senses, which can be interpreted to
give distinct meaning. Therefore, it becomes eligible to be registered as a
trademark.

The colour trademark is recognized for colour combinations, because registration

of a single colour mark remains ambiguous since it lacks the inherent potential to
be unique and because there are numerous shades of a single colour.

Another issue with registering a single colour is that because there are so few colours
available, allowing trademark registration for a single colour will result in conflicts
with competitors and prevent anyone from using the colour.
The combination of colours can make the mark look distinct and recognizable.
For instance, purple colour wrapper of Cadbury is one of the most well-known
colour trademark in the world today and has been in use since a long period of
time. This is the feature by which people can now differentiate Cadbury from
other brand chocolates.

Case: Colgate Palmolive Co. v. Anchor Health and Beauty Care Pvt. Ltd.: The
Delhi High Court observed that the plaintiffs successfully established a prima
facie case for injuncting the defendant from using the colour combination of ‘red
and white’ as a trade dress on the container and packaging of their products.

3. Shape Marks

The shape of a product can also be protected if the customer identifies that
specific shape with the product.

If the shape has acquired distinctiveness through its widespread usage, then the
same can be registered as a trademark.

Shapes are recognized as marks under the Trade Mark Act of 1999.

Note: Shape mark is not registrable if the shape results from the nature of goods
themselves or gives some substantial value to the product.

Protection of shape mark can be sought by simply reproducing 2D graphical

image of various angles of the product so that the trade dress is perceivable.

However, just like other non-traditional trademarks, registration of shape mark

faces a lot of challenges due to its inability to be graphically represented as well
as difficulty in showing distinctiveness. However, many businesses have been
successful in preserving the shape of their products, such as Toblerone chocolate
bar, Zippo lighters, Coco-Cola bottles, etc.

4. Smell Marks
Smell that is associated with a particular product and is a source identifier of the
said products can be termed as a smell mark.

When the smell is distinctive and cannot be mistaken for an associated product,
it can be registered as a smell mark. For example, Perfumes.

Smell is one of the most powerful senses of human beings, which has the ability
to recollect past experience effortlessly.

Though many countries have accepted the registration and protection of the smell
of products as trademarks, the registration still continues to be a difficult process
due to its inability to be graphically represented and to shows its distinctiveness
from the product.

In many cases, the smell has been illustrated by writing down the chemical
formula of the substance. However, there are companies that completed all the
required tests successfully and registered smell as their trademark.

For instance, the scent of roses of a UK tyre company, smell of beer in the dart
flights of a London- based company are famous examples of smell trademarks

5. Motion Marks

A motion trade mark is a moving logo that is used as part of a creative marketing
plan to attract customers to the products. Motion marks are created with the help
of computer programmes and animation software.

Famous motion picture trademarks include Nokia’s connecting hands clip,

Windows logo that displays when we launch a Windows desktop, among others.

Thus, the moving elements need to be represented on the paper to grant a motion
mark. It is a very difficult process to represent the movement of elements along
with the sound on a paper. As a result, only limited number of motion marks have
been registered so far.
Only a small number of nations permit the trademark registration of moving
images, videos, cinematography etc. But, due to the presence of numerous major
film studios in India, the registration of motion marks is becoming more and more
popular as compared to other non-conventional marks.

CONFLICTS OF TRADEMARKS WITH DOMAIN NAME

In today’s world Domain Name serves as an on-line trademark. Registering a

domain name for your online business is a vital step to establish your name on
the internet. Domain name registrations promote brands which use internet as a
platform to do business, by helping netizens identify and recognize these brands.
Domain name can be registered as trademark if it satisfies the requirements for
being registered as a trademark.

A domain name is the internet address for your website. Domain names are used
to locate a website and are popularly known as Uniform Resource Locator (URL).

Domain Names consist of two parts, top-level and second-level domain names.
These are easily identifiable, for e.g., [Link], here ‘com' is the top-
level domain and ‘google' is the second-level domain. Any individual can
purchase a Domain Name from a certified Registrar for a limited amount of time
which can be renewed by the registrants upon its expiry.

Domain Names can be registered and protected as trademarks as long as it meets

the requirements of a trademark under the Trade Marks Act 1999. Domain Names
that are registered trademarks are universally protected primarily by the Internet
Corporation for Assigned Names and Numbers (ICANN).

Resultantly, in case of any abusive registrations or infringement of existing rights,

an individual has the option to file a Domain Name Dispute complaint under the:

 Uniform Domain Name Dispute Resolution Policy (UDRP) - (at

international level)
  .IN Domain Name Dispute Resolution Policy (INDRP) - (at national level).

As the internet is not restricted by any borders or boundaries, and due to the global
presence of most businesses, a Domain Name infringement can occur in a country
different from where it is registered. In the event of such a trans-border
infringement, the person can use the Uniform Domain Name Dispute Resolution
Policy (UDRP), a standard and a uniform Policy across the world, unlike
domestic laws that can vary across jurisdictions.

Broadly, there are three different ways in which a Domain Name is infringed:

Cyber-Squatting: Cyber-squatting involves buying an internet domain name that

might be wanted by any person or is the Trademark of another person, business,
or organization, with the intention of selling it to them and making a profit.

Linking & Framing: Linking & Framing is when a user clicks on a text hyperlink
that takes them to a different website. This website is similar to a well-known
company, and is created solely to deceive the consumers into believing that their
domain name barely associated with successful business entities that have a
strong online presence.

Meta Tagging: Meta Tagging is when words and tags are used to manipulate
search engines into displaying the infringed website.

Domain Name Disputes can be resolved using various mechanisms. Proceedings

before (UDRP) or (INDRP) are governed by arbitral proceedings. The former
provides for the Complainant to choose the arbitrator from a list of providers
whereas in the case of the latter, the arbitration proceedings are conducted under
the provisions of the India's Arbitration and Conciliation Act, 1996.

Alternatively, the Complainant can also resort to civil remedies i.e., by filing an
infringement suit before a commercial court. Notably, in the latter case, the
domain name dispute is resolved under the Trade Marks Act, 1999 and
proceedings are conducted in accordance with the Civil Procedure Code, 1908.
Moreover, the Complainant can opt for out of court settlement as well, avoiding
litigation costs and prolonged pendency of the dispute. Evidently, the
Complainants are free to choose their dispute resolution mechanism.

The ICANN is a world-wide internet administration and with the introduction of

UDRP together they form the best possible redressal system for international
Domain Name Disputes as they are cost-effective and efficient.

UDRP – UDRP was formulated to resolve the issues of cyber piracy, trade mark
dilution, etc. The adoption of UDRP was a result of consultations between WIPO
and ICANN, a non-profit organization managing the domain name system
(DNS). The UDRP provides for a mechanism for resolution of domain names
disputes before Administrative Panels of the WIPO Arbitration and Mediation
Centre. This Policy provides for arbitration of the dispute instead of litigation in
respect of Domain Name Disputes.

As per Paragraph 4 of the UDRP, any person (Complainant) can bring an action
on the grounds that:

 A domain name is identical or confusingly similar to a trademark in respect

of which the Complainant has rights,
 The domain name owner has no rights or legitimate interests in the domain
name, and
 The domain name has been registered and is used in bad faith.

But the Complainant is required to prove all these elements if he wants his action
to succeed. If the abusive registration is proved, the domain name registration is
cancelled or transferred to the Complainant, however no financial remedies are
available.

WIPO Arbitration and Mediation Centre – WIPO is the principal Domain

Name Dispute resolution service provider under the UDRP. WIPO provides
qualified panelists, thorough and expeditious administrative procedures, and
serves as an overall impartial and credible dispute resolution center. A Domain
Name case filed with WIPO is normally concluded with a minimal fee, within
two months and using online procedures.

In India, no legislation explicitly refers to Cyber-Squatting or other Domain

Name Disputes. However, Domain Names are considered to be trademarks based
on their use and brand reputation. In the absence of an appropriate law to resolve
Cyber-Squatting, Domain Name owners can initiate an action for passing-off and
infringement of trademarks under the Trade Marks Act, 1999, against the
infringer.

INDRP – The INDRP has been adopted by National Internet Exchange of India
(NIXI). It provides the terms and conditions that govern any dispute in connection
with .IN or .Bharat Domain Names.

Any Person who considers that a registered domain name conflicts with his/her
legitimate rights or interests may file a Complaint to the .IN Registry on the
following grounds:

 The Registrant's domain name is identical or confusingly similar to a name,

trademark in which complainant has rights;
 The registrant has no rights or legitimate interests in respect of the domain
name, and
 The Registrant's domain name has been registered or is being used in bad
faith.

The .IN Registry shall appoint an Arbitrator from the list of empaneled
Arbitrators maintained by the Registry. The List of the Arbitrators shall be
published on line by the .IN Registry on its website at [Link]. The
Arbitrator shall conduct the Arbitration Proceedings in accordance with the
Arbitration & Conciliation Act, 1996.
Case: Bennett Coleman & Co. Ltd vs. Long Distance Telephone Company: This
was the first on its kind case where an Indian Company got relief under ICANN’s
URDP mechanism. The complainant company was engaged in the publication of
Articles in Daily newspapers like “The Economic Times” and “The Times of
India”. The complainant also published online version of their respective
newspapers under the domain name “[Link]” and
“[Link]”. The respondents registered domain name were
“[Link]” and “[Link]”. The complainant
contended that the Second Level Domain of the respondent company was same
as theirs and that it was meant to attract customers using complainant’s goodwill.
Hence, the use of the respective domain names similar to that of complainant was
in bad faith. The matter came before the panel of Mediation and Arbitration
Centre of WIPO and the panel decided that the two domain names of respondent
should stand transferred to complainant.

Case: Yahoo! Inc. vs. Akash Arora & Anr.: The Delhi High Court, for the first
time ever in India, held that a domain name serves the same function as a
trademark and is entitled to equal protection. The defendant had a domain name
‘[Link]’ which was identical and phonetically similar to the plaintiff’s
trademark ‘Yahoo!’ and domain name [Link]. The court held that internet
users would be confused and deceived into believing that both the domain names
have the same source. The defendant took a defense that it had put a disclaimer
on its website. However, it was observed that a mere disclaimer was not sufficient
because it would still confuse the public and will not be effective to prevent
infringement. The name possesses acquired distinctiveness and uniqueness and
was largely associated with the plaintiff.
 UNIT – III: THE PATENTS ACT, 1970
INTERNATIONAL TREATIES & CONVENTIONS

PATENT COOPERATION TREATY (1970)

The Patent Cooperation Treaty (PCT) is an international IP agreement that

provides patent protection in several countries through the filing of a single
international application. PCT is an international treaty which is duly
administered by the (WIPO). The Patent Cooperation Treaty (PCT) is an
international treaty with more than 150 Contracting States. The PCT is an
international treaty which provides a system for filing a patent application and
allow us to obtain patents in multiple countries around the world on the basis of
a single patent application.

As PCT simplifies the procedure for obtaining Patent protection in many

countries, making it more efficient and economical for inventors and National
Offices. The PCT simplifies the patent filing process for applicant and the
ultimate decision to grant a patent vest exclusively with each national or regional
Patent Office. A single PCT application has the same legal effect as a national
Patent application in each of the PCT Contracting States. Without the PCT, we
would have to file a separate patent application in each country separately and
independently. PCT save inventor’s time, effort and expense of preparing
separate applications in various languages and file it in different signatories’
states.

Advantages of the Patent Cooperation Treaty

 International Patent Protection

Patents only apply to limited areas. If you file a patent application with the Indian
Patent Office, it only protects your invention in India only. With a PCT
application, you can make your patent go further. This is important if your
company makes or sells products in other countries.

 Streamlined Application Process

Applying for patents in individual countries can be time-consuming and

expensive. You might have to amend your application for several different
countries. PCT streamlines the application process and helps you save money.

 Strong Basis for Patenting Decisions

During the PCT application process, WIPO sends a written opinion and an
international search report. These are very important because they give you a
strong case for the patentability of your invention. If the report and opinion are
good, you can usually get international patents very easily.

 Global Patent Search

When you file a patent application with the Indian Patent office, the patent search
usually covers inventions patented in India only. When you file an application
under the PCT, the patent search is global. A PCT application will help you
understand how patentable your invention is around the world, not just in India.
This could change your mind about patenting or marketing your invention at all.

Disadvantages of the Patent Cooperation Treaty

 Lengthy Application Process

The PCT application process doesn't move quickly. If you only need to file a
patent application in one other country, you can consider filing it with the
individual country directly. If you file in a Paris Convention member country,
you should do so within 12 months of your original patent application filing date.

 High Costs
The PCT process is designed for companies with a global outlook. If you do
business in just one other country, you can save money by filing a patent
application directly with that country. This way you can save the additional cost
of the PCT application.

 Limited Patent Coverage

Applications filed under the PCT only apply to utility patents. If you need to
patent a design, you can't use this process. File a patent application with the
individual countries instead. The process also creates examination delays and it
takes more time to acquire patent via PCT route.

Deadline

You must file an international patent application within 12 months of your

original filing date. This allows you to claim priority of your original filing. That
means patent publications or product sales that happen in the meantime don't
affect the outcome of your application.

STRASBOURG AGREEMENT concerning the international patent

classification (1971)

The Strasbourg Agreement commonly referred to as the IPC Agreement, was

concluded in 1971 and amended in 1979. States that are parties to the Paris
Convention may become party to the Strasbourg Agreement.

The Strasbourg Agreement establishes the International Patent Classification

(IPC) which divides technology into 8 sections with approximately 80,000
subdivisions. Each subdivision is denoted by a symbol consisting of Arabic
numerals and letters of the Latin alphabet.

The appropriate IPC symbols are indicated on each patent documents (published
patent applications and granted patents). The appropriate symbols are allotted by
the national or regional industrial property office that publishes the patent
document.

Classification is very important for the retrieval of patent documents in the search
for "prior art". Such retrieval is needed by patent-issuing authorities, potential
inventors, research and development units and others concerned with the
application or development of technology.

In order to keep the IPC up to date, it is continuously revised and a new edition
enters into force each year on January 1.

The revision of the IPC is carried out by the IPC Committee of Experts set up
under the Agreement. All States party to the Agreement are members of the
Committee of Experts.

The Strasbourg Agreement created a Union, which has an Assembly. Every State
that is a member of the Union is a member of the Assembly. Among the most
important tasks of the Assembly is the adoption of the biennial program and
budget of the Union.

BUDAPEST TREATY on the International Recognition of the Deposit of

Microorganisms for the Purposes of Patent Procedure (1977)

The Budapest Treaty was signed on April 28, 1977. The Budapest Treaty
eliminates the need to deposit microorganisms in each country where patent
protection is sought.

Disclosure of the invention is a requirement for the grant of patents. Normally,

an invention is disclosed by means of a written description. Where an invention
involves a microorganism or the use of a microorganism, disclosure of invention
for the purpose of grant of patent is not possible in writing but can only be effected
by the deposit of a sample of the microorganism with a specialized institution.
The deposit of microorganism, which also includes biological material, is
necessary for the purposes of disclosure particularly for inventions relating to the
food and pharmaceutical fields.

So, in order to eliminate the need to deposit the microorganism in each country
in which protection is sought, the Treaty provides that the deposit of a
microorganism with any "international depositary authority" is sufficient for the
purposes of patent procedure before the national patent offices of all of the
contracting States. There is no need for the applicant to deposit microorganism in
each country in which protection is sought.

An "international depositary authority" is a scientific institution - typically a

"culture collection" - which is capable of storing microorganisms.

The Treaty makes the patent system of the contracting State more attractive
because it is primarily advantageous to the depositor who intends to seek patent
protection in several countries. The inventor will be able to save time and money
under this procedure.

The member country in which an IDA is located has to assure the Director
General of WIPO that the institution complies with the provisions of the Treaty.
An IDA will accept deposits of microorganisms both from within the country
where it is situated and from other countries as well.

The Treaty also increases the security of the depositor by establishing a uniform
system of deposit, recognition, and furnishing of samples of microorganisms. As
of January 26, 2023 there were 49 IDA’s.

The applicant must also provide the geographical origin of the biological
material. If the geographical origin is from India, then the applicant has to submit
permission from the National Biodiversity Authority of India before granting of
a patent over the application.
 INTRODUCTION TO PATENT LAW

According to Section 2(m), patent means a patent for any invention granted under
this Act.

A patent is an exclusive right granted by the Government to the inventor to

exclude others to use, make and sell an invention in a specific period of time. A
patent is also available for improvement in their previous Invention. The main
motto to enact patent law is to encourage inventors to contribute more in their
field by awarding them exclusive rights for their inventions.

The word “patent” is referred from a Latin term “patere” which means “to lay
open,” i.e., to make available for public inspection.

A patent is an exclusive right granted for an invention, which is a product or a

process that provides a new way of doing something, or offers a new technical
solution to a problem. To get a patent, technical information about the invention
must be disclosed to the public in a patent application. There are three basic tests
for any invention to be patentable:

 Firstly, the invention must be novel, meaning thereby that the Invention
must not be in existence.
 Secondly, the Invention must be non- obvious, i.e., the Invention must be
a significant improvement to the previous one; mere change in technology
will not give the right of the patent to the inventor.
 Thirdly, the invention must be useful in a bonafide manner, meaning
thereby that the Invention must not be solely used in any illegal work and
is useful to the world in a bonafide manner.

An invention is considered as new if, on the date of filing the application, any
such invention is not known to the public in any form, i.e., oral, writing, or any
other form. Anything shall not be termed as inventive if such a thing is already
known to the public domain.
The patent has a limited term of 20 years, which is counted from the date of filing
of the patent application. It is obligatory for the inventor to disclose complete
details of the invention to ensure that it can be worked on a commercial scale.
Once the term of patent expires, the invention comes into the public domain.

A patent is a territorial right. Thus, it can only be applied in the country where it
has been granted. Therefore, any legal action against infringement or
infringement of patent rights can only be taken in that country. To obtain patent
protection in different countries, the applicant has to apply in each country.

The Patent Cooperation Treaty (PCT) provides a way to file an international

patent application in which a patent can be filed through a single patent
application in a large number of countries. However, the ultimate decision to
grant a patent vest exclusively with each national or regional Patent Office.

A system of patents serves many useful purposes. If the invention is commercially

utilized, the patent ensures just reward in terms of money and recognition for the
inventor, for the time, effort, knowledge, skills, and other resources invested to
come up with the invention.

For the society, commercial exploitation of an invention means newer and better
products, higher productivity, and more efficient means of production. The
objective of granting the patent is to ensure that it is worked (utilized) in the
country; and it is not meant to block production or further research and
development. A patent system encourages technological innovation and
dissemination of technology. This in turn stimulates the growth and helps in better
utilization of resources.

Patents act is the subset of the intellectual property laws and a branch which deals
with new inventions. According to the Patents Act 1970, there are two types of
patents i.e., product patents and process patents. The product patent is the end
result or the output produces of a product and the process patent is the journey of
a product being produced. Under the Patent Act, both processes and products are
entitled to qualify as inventions if they are new, involve an inventive step, and
are capable of industrial application.

Is it mandatory to get a patent?

It is not mandatory for an inventor to apply for a patent in respect of his invention.
It is optional. The inventor may prefer to keep his invention secret instead of
applying for a patent by disclosing it.

However, where an inventor does not apply for a patent and exploit his invention
by keeping it secret, he runs with the risk of his invention being disclosed to his
competitors either by way of reverse engineering or by communication of
information by someone who possesses such information and is under no
obligation to keep it secret or by an independent discovery. In such a case, other
persons may start manufacturing the article by using the same invention. No
remedy shall be available to the inventor in such a case.

Case: Shinning Industries vs. Shri Krishna Industries: The Allahabad High
Court held that an invention is not a property right unless it has been patented. It
is due to this reason that inventors normally apply for patents and get monopoly
rights for a specific period of time to exploit their inventions to the exclusion of
all others.

Brief History

The history of patent law in India begins with the enactment of the Indian Patents
and Designs Act in 1911. Subsequently, in 1972, the current Patents Act 1970,
came into effect, amending and consolidating the established patent legislation in
India. The Patent Act essentially is based on the recommendations of the Justice
Ann report. One of the recommendations was the granting of process patents in
relation to drug, food, and chemical inventions. The Patents Act, 1970 was
amended once again by the Patents (Amendment) Act, 2005 concerning the
extension of product patents in all areas of technology including food, medicine,
chemicals, and microorganisms. Following the amendment, provisions relating
to Exclusive marketing rights (EMR) have been repealed, and a provision has
been introduced to enable the grant of compulsory licenses. Provisions related to
pre-grant and post grant opposition have also been introduced.

CRITERION FOR PATENTABILITY

By international agreements, patents are available for any inventions, whether

processes or products, in all areas of technology.

So, an invention is patentable, if it meets the following criteria –

 It should be novel.
 It should have an inventive step or it must be non-obvious.
 It should be capable of Industrial application.
 It should not attract the provisions of Sec 3 and 4 of the Patents Act 1970.

According to Section 2(j) of the Act, "Invention" means a new product or process
involving an inventive step and capable of industrial application. The definition
of invention clearly shows that even a process involving an inventive step is an
invention within the meaning of the Act. It is, therefore, not necessary that the
product developed should be a totally new product. Even if a product is
substantially improved by an inventive step, it would be termed to be an
invention."

NOVELTY (NEW)

According to Section 2(l) of the Act, "New invention" means any invention or
technology which has not been anticipated by publication in any document or
used in the country or elsewhere in the world before the date of filing of patent
application with complete specification. That is the subject matter has not fallen
in public domain or that it does not form part of the state of the art."
Simply, the novelty requirement basically states that an invention should never
have been published in the public domain. It must be the newest which have no
same or similar prior arts.

The Patents Act, 1970 requires an invention is considered as new if on the date
of filing of patent application, it should not form a part of the state of the art. The
state of art comprises all the matter made available to the public by written or oral
description, before the priority date of the invention.

Prior written or oral disclosure of the invention or any other way of making the
knowledge available in a public before the date of filing of the patent application
makes the invention a part of the prior art or state of the art.

Case: Novartis AG & Ors. vs. Union of India & Ors.: The Supreme Court stated
that "new product in chemicals and especially pharmaceuticals may not
necessarily mean something altogether new or completely unfamiliar or strange
or not existing before. It may mean something "different from a recent previous"
or "one regarded as better than what went before" or "in addition to another or
others of the same kind". However, in case of chemicals and especially
pharmaceuticals if the product for which patent protection is claimed is a new
form of a known substance with known efficacy, then the subject product must
pass the invention and new invention clause as well as the test of enhanced
efficacy as provided in section 3(d)."

INVENTIVE STEP

According to Section 2(ja) of the Act, "Inventive step means a feature of an

invention that involves technical advancement as compared to the existing
knowledge or having economic significance or both and that makes the invention
not obvious to a person skilled in the art."

To meet the inventive step criterion, the patentee will either have to show that the
invention includes technical advancement or has economic significance, or both.
The requirement of technical advancement is, therefore, compromised and diluted
by the fact that a patent could simply be granted on economic significance alone.

If an inventor is solving some technical problem by inventing something and if

the person skilled in the art who is from the same field is providing the same
solution by using his acquired knowledge or by teaching, suggestion or
motivation, in that case the technical solution provided by the inventor will not
be considered as inventive in nature.

Case: M/s. Bishwanath Prasad Radhey Shyam vs. M/s. Hindustan Metal
Industries: The Supreme Court laid down the following criteria for assessing
inventive step. “It is important that in order to be patentable an improvement on
something known before or a combination of different matters already known,
should be something more than a mere workshop improvement; and must
independently satisfy the test of invention or an ‘inventive step’. To be patentable
the improvement or the combination must produce a new result, or a new article
or a better or cheaper article than before. The combination of old known integers
may be so combined that by their working interrelation they produce a new
process or improved result. Mere collection of more than one integers or things,
not involving the exercise of any inventive faculty, does not qualify for the grant
of a patent.”

Non – Obviousness

The person possessing the skills in the particular field of the invention must not
find any obviousness in the invention.

Simple or obvious changes to an existing invention cannot be called an invention.

The invention must show a notable change in the field. The particular feature
must add to existing technical knowledge i.e., in terms of uniqueness and
commercial viability.
To determine obviousness - find out whether the person, with ordinary skill in the
art, would have come up with similar innovation for the technical problem under
similar circumstances without being provided with the solution. Obviousness is
judged based on the hypothetical construct of a "person of ordinary skill in the
art". The person of ordinary skill in the art must:

 belong to the relevant field.

 look at the prior art from a position of his personality, considering his/her
interest in risk taking.
 be well aware of the fact that even a small structural change in a product
or in a procedure can produce dramatic functional changes.

Thus, even if any of the two ingredients, viz., technical advance or economic
significance or both are available, if such invention enables a person of skill in
the field, by going through the specification would complete the product, such
invention can never be treated as an "inventive step" and consequently no patent
can be validly issued.

Capable of industrial application

According to Section 2(ac) of the Act, capable of industrial application", in

relation to an invention, means that the invention is capable of being made or used
in an industry.

Patents are granted to ensure that the inventor can exploit his/her invention freely,
without the fear of competition. In this context, it is necessary that the invention
is capable of being used and has industrial application

Case: Cipla Ltd. vs. F Hoffmann-La Roche Ltd. (2015): The Court observed that
according to the definitions of ‘invention’ and ‘capable of industrial application’
under the Act, an invention must have a commercial use so that it can be utilized
in the industries.
Case: Indian Vacuum Brake Co. Ltd. vs, E.S. Luard (1925): The Court observed
that the term ‘utility’ has not been used in an abstract sense in the Act. In order
to qualify for a patent, an invention must have some utility. Mere usefulness is
not enough.

NON-PATETABLE INVENTIONS

Section 3 & 4 of the Act, deals with non-patentable inventions:

 Inventions which are frivolous or contrary to well established natural laws.

 Invention that are contrary to public order or morality or causes a serious
threat & prejudice to human, animal or plant life.

Ex: Any machine or method for counterfeiting of currency notes, Invention of

artificial sexual devices or sex toys etc.

 Mere Discovery of a Scientific Principle or Abstract Theory.

Ex: Newton's theories and other principles etc. If these theories will be patentable,
how wills students study them if they are not given freely in the public domain.

 Mere Discovery of a New Form of a Known Substance.

Mere discovery of something that is already existing freely in nature is a

discovery and not an invention and hence cannot be patented unless it is used in
the process of manufacturing an article or substance. For instance, the mere
discovery of a micro-organism is not patentable.

Case: Novartis A.G. vs. Union of India: In 1998, one of the largest international
pharmaceutical companies i.e., Novartis AG filed an application before the
Chennai Indian patent office for the grant of a patent for an anticancer drug
‘Glivec’ which is used to treat Chronic Myeloid Leukemia (CML) and
Gastrointestinal Stromal Tumors (GIST) invented from Beta crystalline form of
"Imatinib mesylate. This drug is famously used in the treatment of cancer and the
same is patented in more than 35 countries.
In April 2013, the Supreme Court rejected the appeal filed by Novartis and upheld
that the ‘beta crystalline’ form of Imatinib Mesylate is a new form of the known
substance Imatinib Mesylate, wherein the efficacy was well known.

The SC compared the efficacy of "Beta Crystalline form of Imatinib Mesylate"

with "imatinib Mesylate" with reference to its flow properties, better stability, and
held that none of these properties contribute to increasing in therapeutic efficacy
according to section-3(d) of Patent Act, 1970. Even, Novartis had not provided
any document that shows that the efficacy of "Beta Crystalline form of Imatinib
Mesylate is more as compared to the efficacy of "Imatinib Mesylate".

The Supreme Court held that for pharmaceutical patents, apart from tests of
novelty, inventive step and application, there is a new test of enhanced therapeutic
efficacy for claims that cover incremental changes to existing drugs, which
Novartis’s drug did not qualify”.

 Substance Obtained by a Mere Admixture.

This exception is generally for Chemical substances such as H20, H2SO4, etc.
The mere addition of elements does not form a completely new product and thus
is not patentable. The addition shall give rise to the synergistic effect i.e., the
amalgamation shall have a greater effect than the separate effects.

 Arrangement or Re-arrangement or Duplication of Known Devices

The mere arrangement or re-arrangement or duplication of known devices each

functioning independently of one another in a known way is not an invention. To
be patentable, the improvement or the combination must produce a new result, or
a new article or a better or cheaper article than before.

 Method of Agriculture or Horticulture

Ex: A method of producing a plant or a method of producing improved soil or a

method of producing mangoes cannot be patented.
  Process for Medicinal, Curative, Surgical or other Treatment of Human
Beings or animals.

Medicinal methods, curative methods, or surgical methods for the cure of diseases
are not patentable.

 Plants and Animals

Plants and animals (other than micro-organisms) but including seeds, varieties
and species and essentially biological processes for production or propagation of
plants and animals are not patentable inventions. Only, a genetically modified
microorganisms may be patentable subject to other requirements of patentability.

 Mathematical or Business Methods or Computer Programs

The reason for not giving patent protection to business methods may be that it
may unnecessarily cut competition can promote monopoly, which may ultimately
give rise to unnecessary litigations.

 Literary, Dramatic, Musical or Artistic Work

All these works cannot be patented but will fall under the ambit of copyright.

 Scheme or Rule of Performing Mental Act

A mere scheme or rule or method of performing mental act or method of playing

game, are excluded from patentability, because they are considered as outcome
of mere mental process. Ex: A method of playing chess or a method of teaching.

 Presentation of Information

Any manner, means or method of expressing information by words, codes,

signals, symbols, diagrams or any other mode of representation is not patentable.

 Topography of Integrated Circuits

Protection of layout designs of integrated circuits is governed separately under
the Designs Act, 2000. Hence, 3D configuration of the electronic circuits used in
microchips and semiconductor chips is not patentable.

 Traditional Knowledge or Aggregation of Known Properties

An invention falling within the scope of traditional knowledge such as the use of
herbal medicines is not an invention.

 Inventions relating to Atomic-Energy are non -patentable. [Section 4]

No patent shall be granted in respect of an Atomic Energy invention falling within

section 20(1) of the Atomic Energy Act, 1962.

PROCEDURE FOR FILING PATENT APPLICATION

Green headings are important.

PERSON ENTITLED TO APPLY FOR PATENTS [Section 6]

An application for a patent for an invention can be made by any of the following
persons either alone or jointly with another:

 true and first inventor

 his /her legal assignee
 legal representative of deceased inventor or assignee.

“True and first Inventor" means a person who has first made an invention. Where
two persons have made the same invention independently and not disclosed it
then the inventor who applied first for the patent is to be taken as the first and true
inventor of the invention, irrespective of the fact that he made the invention later
than the other inventor.

Any person to whom an invention has been assigned by the true and first inventor
is also eligible to apply for patent. "Assignee" includes an assignee of the assignee
or the legal representative of a deceased assignee." Invention assigned to a firm
is a valid assignment. A firm, therefore, can also apply for a patent as assignee.
A corporation can also apply for a patent as assignee.

The legal representative of any deceased person who immediately before his
death was entitled to make an application for a patent for an invention is also
eligible to apply for patent.

FORM OF APPLICATION [Section 7]

Every application for a patent shall be for one invention only. An application for
a patent is to be made in the prescribed form and filed in the appropriate patent
office. [Sec 7(1)]

Every international application under the Patent Cooperation Treaty (PCT), filed
designating India is to be deemed to be an application under this Act, if a
corresponding application has also been filed before the Controller General of
Patents, Designs and Trademarks in India. The filing date of such application and
its complete specification processed by the Patents Office as designated office or
elected office shall be the international filing date accorded under the PCT. [Sec
7(1A & IB)]

An applicant in respect of an international application designating India shall

before the aforesaid time

 pay the prescribed national fee and other fee to the patent office,
 and where the international application was either not filed or has not been
published in English, then file with the patent office, a translation of the
application in English, duly verified by the applicant or the person duly
authorized by him that the contents thereof are correct and complete.

Where an application is made by virtue of an assignment of the right to apply for a

patent for the invention, a proof of the right to make the application is to be furnished
either along with the application or thereafter in the prescribed time. [Sec 7(2)].
Every application shall state that the applicant is in possession of the invention.
It shall name the true and first inventor. Where the true and first inventor is not
the applicant, the application shall contain a declaration that the applicant
believes the person so named to be the true and first inventor. [Sec 7(3)].

Every such application (not being a convention application or an application filed

under the PCT designating India) shall be accompanied by a provisional or a
complete specification. [Sec 7(4)].

Information and undertaking regarding foreign applications [Section 8]

An applicant for the patent has to provide a statement disclosing the particulars of
application(s) relating to the same or substantially similar invention filed outside
India, corresponding to its Indian patent application.

The applicant must provide an undertaking that he would keep the controller updated
with regard to the filing of the applications outside India relating to the same or
substantially similar invention upto the grant of patent in India. The Applicant must
provide the information within 6 months from the date of such filing.

Section 8(2) gives the Controller the power to ask the Applicant to furnish details
regarding the processing of the applications filed outside India. The Applicant must
furnish the details sought by the Controller within six months from the date of such
communication by the Controller.

PROVISIONAL AND COMPLETE SPECIFICATIONS [SECTION 9]

A provisional specification provides a general description of the invention

whereas, a complete specification gives full and complete details of the invention.

When the provisional specifications are submitted with the patent application,
then the complete specifications must be filed within 12 months from the date of
filing the patent application and on failure to do so, the application will be deemed
abandoned.
Where an applicant files two or more applications for inventions that are
interconnected or where one is a modified version of the other and are
accompanied by provisional specifications, in that case, if the Controller is of the
opinion that the entire invention constitutes a single invention and can be made
part of a single patent, a single complete specification can be filed for all the
provisional specifications.

However, in such a case the 12-month period of filing the complete specification
shall commence from the date the earliest provisional specification was filed.

Furthermore, where the specification accompanying a patent application is

claimed to be a complete specification, then at the request of the applicant within
12 months of filing the application, the Controller may direct the specification to
be treated as a provisional specification. [sec 9(3)]

When a complete specification has been filed, then a provisional specification

can be cancelled any time before the patent is granted, by the Controller at the
request of the applicant and the date of the application can be changed to the date
when the complete specification was filed.

CONTENTS OF SPECIFICATION [SECTION 10]

Both provisional and complete specifications shall begin with a title that specifies
the subject-matter of the invention and also provides a description of the
invention.

Drawings: The Controller may require the applicant to supply drawings for the
purposes of complete or provisional specifications. And any such drawing shall
be deemed to be a part of the specification, unless the Controller directs
otherwise.

Model or Sample: Where there is a need that the application should be

supplemented with a model or a sample illustrating the invention, then the
Controller may require such a model or sample to be presented before the grant
of patent. However, such a model or sample will not be considered a part of the
specification.

CLAIM: The claim should fully and particularly describe the invention and its
operation or use and the method by which it is to be performed. It should also
disclose the best method of performing the invention, which is known to the
applicant and for which he is entitled to claim protection.

The function of the claims is to define clearly and with precision the monopoly
claimed, so that others may know the exact boundaries of the area within which
they will be trespassers. Their primary object is to limit and not to extend the
monopoly.

Case: Ram Narain Kher vs. Ambassador Industries New Delhi & Anr.: The
Delhi High Court stated that the function of the claim was "to define the scope of
the invention claimed." Claim must be clear. The applicant must describe the
advantage sought to be achieved by his invention in the claim.

Essentials of Complete specification: A complete specification must:

 provide a complete description of the invention and its operation and fully
explain the use and the procedure by which it is performed;
 disclose the best method of performing the invention which is known to
the applicant and for which protection is claimed by him;
 define the scope of the invention;
 include an abstract providing technical information on the invention.

However, the Controller in order to provide the third parties better information
may amend the abstract.

Where a biological material is mentioned by the applicant in the specification and

such material is not available to the public, in order to complete the application,
the material must be deposited to an international depositary authority and it must
fulfil the following conditions:

 the material should not be deposited on a date later than the date of filing
the patent application;
 for a material to be identified correctly, the specification should include all
its characteristics which include the name, address of the depository
institution and the date and number of depositing the material at the
institution;
 the material can be accessed in the depository institution only after the date
of the patent application in India or if a priority is claimed after the date of
the priority;
 the specification must disclose the source and geographical origin of the
biological material.

International application: In case of an international application designating

India, the title, description. drawings, abstract and claims filed with the
application are to be taken as the complete specification.

Declaration as to inventorship: A declaration as to the inventorship of the

invention shall in prescribed cases be furnished with the complete specification
or within prescribed period after the filing of that specification.

PRIORITY DATES of claims of a complete specification [Section 11]

The priority date is the date on which the patentee claims his/her invention.
Section 11 provides a detailed procedure for fixing priority dates, which are
specified as under:

 Every claim of a complete specification shall have a priority date.

 When a complete specification is filed in pursuance of a single application
accompanied by:
 o a provisional specification or
o a specification which is treated as a provisional specification by
virtue of a direction under section 9(3),

the priority date of that claim shall be the date of filing the specification.

 Where the complete specification is filed or proceeded with in pursuance

of two or more applications and the claim is based on the matter disclosed;
the priority date of one of those specifications will be the date of filing of
the application accompanied by that specification
Where the claim is based on the matter disclosed partly in one and partly
in another, the priority date of that claim shall be the date of filing the
application accompanied by specification of the later date.
 Where a complete specification based on a previously filed application in
India, has been filed within 12 months from the date of that application,
and the claim is based on the matter disclosed in the previously filed
application, the priority date shall be the date of the previously filed
application in which the matter was first disclosed.
 Where a complete specification has been filed in pursuance of a further
application and the claim is based on the matter disclosed in any of the
earlier specifications, whether provisional or complete, the priority date of
a claim shall be the date of filing of that specification in which the matter
was first disclosed.
 Where there are 2 or more priority dates for any claim of a complete
specification, then the priority date of that claim will be the earlier of those
dates.
 In any case, to which the aforesaid provisions are not applicable, the
priority date of a claim shall be the date of filing of complete specification.

PUBLICATION OF APPLICATION [Section 11A]

Every application is ordinarily published (open to public) after the expiry of 18
months period form the date of filing of the application or the date of priority of
the application whichever is earlier.

The applicant in a specified manner may requests the Controller to publish his
application at any time before the expiry of the 18 months. The Controller shall
publish such application as soon as possible.

The controller will publish the application for a patent on the expiry of the 18
months except when:

 any secrecy directions are imposed in the application,

 the application has been abandoned because of not providing a complete
specification of the patent within 12 months of its filing or
 application has been withdrawn 3 months before the period specified (18
months).

When secrecy directions have been given to a patent application than patent
application will be published after the expiry of the specified period (18 months)
or when the secrecy directions has ceased to operate, whichever is later.

The publication of every application will include the date and number of
applications, name and address of the applicant and an abstract of the application.

After the publication of a patent application under section 11A:

 On payment of prescribed fees, the patent office will make specifications

and drawings of the application available to the public.
 The Depository institution is to make the biological material mentioned in
the specification available to the public.

On and from the publication of the patent application and until the date of grant
of a patent, the applicant will have the like privileges and rights as if a patent for
the invention has been granted on the date of publication of the application.
However, provided that the applicant shall not be entitled to institute any
proceedings for infringement until the patent has been granted.

REQUEST FOR EXAMINATION [Section 11B]

No application for patent shall be examined unless the applicant or any other
interested person makes a request for such examination within a prescribed period
to the controller.

In case the applicant or any other interested person does not make a request for
examination of the application for a patent within 48 months, the application is
to be treated as withdrawn by the applicant. However, the applicant may at any
time after filing the application but before the grant of a patent withdraw the
application by making a request.

In the case where secrecy direction has been issued, the request for examination
may be made within forty-eight months from the date of priority or from the date
of filing of the application, or within six months from the date of revocation of
the secrecy direction, whichever is later.

EXAMINATION OF APPLICATION [Section 12]

On receiving a request for examination, the Controller refers the application and
specification and other documents to the Examiner for making a report in respect
of the following matters:

 Whether the application and the specification and other documents relating
thereto are in accordance with the requirements of this Act.
 Whether there is any lawful ground of objection to the grant of the patent
under this Act in pursuance of the application.
 The result of investigations made under section 13; and
 Any other matter which may be prescribed.
The examiner to whom such application and the specification and other
documents are referred shall ordinarily make the report to the Controller within
one month. However, this period shall not exceed 3 months from the date of
reference of the application.

The examiner will issue the First Examination Report (FER) to the applicant or
authorized agent within the specified time.

The first examination report contains of formal and technical objections if any, to
ensure that said application is novel, non-obvious and capable of industrial
application. Thereafter the applicant is required to respond to the objections
within a period of 6 months from the date of FER which can be extended by 3
months. Meanwhile, if the applicant fails to respond within the stipulated time,
the Indian Patent Office will consider the application abandoned.

OPPOSITION TO THE PATENT [Section 25]

Section 25 of the Act states that any person may object to the application for
patent after it has been published. There are two types of objections:

Pre-grant objection: It states that after the publication of the application and
before the grant of the patent, any person in writing may represent their opposition
against the grant of the patent. The grounds on which such objections can be
raised are mentioned in Section 25(1).

 The invention was wrongfully obtained by the inventor/applicant.

 If publication is made before the priority date claimed in the application
(Prior publication).
 If invention had been publicly used before the priority date of the claim.
(Prior public use).
 If invention is obvious and does not include any inventive step. (Obvious).
 If invention falls under the list of non-patentable inventions.
  If the applicant does not describe the invention properly in the specification
(Insufficient description).
 If the applicant has failed to disclose or furnished false info. relating to
foreign applications.
 If the convention application is not made within 12 months.
 If the source and geographical origin of biological material in the complete
specification, is not disclosed or wrongfully disclosed.
 If 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 pre grant representation may be filed by any person within 6 months of date
of publication of application or before the grant of the patent whichever is later.

The pre-grant opposition proceeding may be carried out in parallel with the
Examination proceeding.

The opponent is required to submit statement and evidence, if any, in support of

the representation and request for a hearing if he so desires. However, the
representation is not considered by the Controller unless a request for
examination of application is filed.

On receipt of the request for examination, the Controller initiates Examination

proceeding and also issues a notice to the applicant along with the copy of the
statement and evidence filed by the opponent.

The applicant may file his statement and evidence in support of his application
within three months from the date of the notice. Thereafter, after the Controller
has considered the submission and the representations made, the patent is either
granted or rejected. The acceptance may be with or without amendment to the
specification. The decision is issued ordinarily within one month from the date of
the completion of the proceedings.
Post-grant objection: Post grant objections are raised after the grant of the patent
to the applicant. These objections are supposed to be raised within one year of the
publication of grant of patent by way of giving notice of opposition to the
Controller. The grounds on which such objections can be raised are mentioned in
Section 25(2) of the Act. (And these grounds are similar to the grounds of pre-
grant objection).

The process of post grant opposition initiates with a notice of opposition filed by
the opponent (who is an ‘interested person’) within 1 year from the date of
publication of grant along with full written statement and evidence to the
Controller. The patentee is required to file a reply statement and evidence within
2 months from the date of receipt of the copy of the written statement and
Opponent's evidence, failing which, the application will be abandoned.

On receipt of such notice of opposition, the Controller shall constitute a Board to

be known as the Opposition Board consisting of such officers as he may
determine. The Board shall conduct the examination in accordance with
prescribed procedure.

The Controller shall, on receipt of the recommendation of the Opposition Board

and after giving the patentee and the opponent an opportunity of being heard, pass
an order either to maintain or to amend or to revoke the patent.

GRANT OF PATENT [SECTION 43]

Where a patent application has been found to be in order for grant of the patent and

 either the application has not been refused by the Controller,

 or the application has not been found to be in contravention of any of the
provisions of the Act,

then the patent is to be granted as expeditiously as possible to the applicant or, in the
case of a joint application, to the applicants jointly, with the seal of the patent office.
The date on which the patent is granted is to be entered in the register.

On the grant of patent, the Controller shall publish the fact that the patent has
been granted and thereupon the application, specification and other documents
related thereto shall be open for public inspection.

Case: Novartis AG vs. Mehar Pharma: The Bombay High Court stated that
whilst registration of trademarks and copyright in one country has a persuasive
value in another, patent and design rights are statutory creatures, territorial in
nature and dependent only on specific registration in each country. Registration
of patent rights in one country does not automatically confer protection in other
countries nor does it have any persuasive value. Registration in each country may
be obtained only after passing the tests prescribed in each country. Without
registration, the invention or design in question enters the public domain in that
country and the public would be free to copy and use the same. Thus, registration
of a patent or a design in one country is not a condition for protection of those
rights in another country. If this were otherwise, one patent or design right
obtained in one country would have been valid all over the world.

Amendment of patent granted to deceased applicant - [SECTION 44]

If the patent was granted to the applicant and the Controller is satisfied that the
person to whom the patent was granted died before the patent was granted, the
Controller has the power to amend the patent by substituting the name of that
person with the name of the person to whom the patent ‘ought’ to have been
granted.

A similar procedure is followed if a body corporate had ceased to exist.

DATE OF PATENT [Section 45]

 It provides that every patent is to be dated as of the date on which the

application for patent was filed.
  The date of every patent shall be entered in the register.
 No suit or other proceeding is to be commenced or prosecuted in respect
of an infringement committed before the date of publication of the
application.

FORM, EXTENT AND EFFECT OF PATENT [SECTION 46]

 Every patent shall be in the prescribed form and shall have effect
throughout India.
 A patent is to be granted for one invention only.
 However, it is not competent for any person in a suit or other proceeding
to take any objection to a patent on the ground that it has been granted for
more than one invention

Grant of Patents to be subject to certain conditions [Section 47]

The grant of a patent under the Patents Act, 1970 is not absolute. Therefore, the
grant of a patent is subject to the following conditions:

 The patent granted for any machine, apparatus, article or any article made
by using a process, can be imported or made by or on behalf of the
government for its own use;
 A patent granted for any process can be used by or on behalf of the
Government for its own use;
 A patent granted for any machine, apparatus, article or any article made by
using a process or where a patent is granted for any process, can be made
or used by any person, for research or experiment purpose which also
includes conveying instructions to students;
 Where a patent is granted for any medicine or drug, the Government can
import such drug or medicine solely for its own use or distribution in
Government-supported dispensaries, hospitals, and other medical
institutions and also those rendering public service.
Case: Garware Wall Ropes Ltd. vs. A.I. Chopra, Engineers & Contractors &
Ors.: The court observed that words 'merely of its own use' in sec 47 would mean
use for the purposes of the Government, by any department of the Government
and use by servants and agents of the Governments in performance of their duties/
in discharge of their duties assigned to them irrespective of who is benefitted by
such use. This would not include use by any other person like contractor of
railways and the meaning is strictly restricted to the direct use by any department
of the Government or its servants in the performance of their duties.

RIGHT OF CO-OWNERS OF PATENTS [SECTION 50]

Where a patent is granted to two or more persons, each one of them shall be
entitled to an equal undivided share in the patent, unless an agreement to the
contrary is in force.

Where two or more persons are registered as grantee or proprietor of a patent,

then, in absence of an agreement to contrary, each one of such persons shall be
entitled to the right of patentee for his own benefit without accounting to the other
person or persons.

Where two or more persons are registered as grantee or proprietor of a patent,

then a license under the patent shall not be granted and a share in the patent is not
to be assigned by one of such persons except with the consent of the other
person(s).

Where a patented article is sold by one of the co-owners registered as grantee or

proprietor of a patent, the purchaser and any person claiming through him shall
be entitled to deal with the article in the same manner as if the article had been
sold by a sole patentee.

 The law applicable to the ownership and devolution of movable property

shall apply to patents.
  And nothing should affect the mutual rights or obligations of trustees, or
the legal representative of the deceased partner or their rights &
obligations.

Power of controller to give directions to co-owners [section 51]

If a patent is co-owned, the Controller may give directions for the sale or lease of
the patent or any interest therein or the exercise of any right under Section-50 to
any of the co-owners. Such direction is given by the Controller only when
application is made to him in the prescribed manner by any of the co-owners.

If any person registered as grantee or proprietor of a patent, fails

 to execute any instrument or

 to do any other thing required for carrying out of any direction given under
this section,

within 14 days after being requested in writing to do so, by any of the other
persons so registered, the Controller may, upon application made to him in the
prescribed manner by any such other person, give directions empowering any
person to execute that instrument or to do that thing in the name and on behalf of
the person in default.

Before giving any directions in pursuance of an application, drug controller shall

give an opportunity to be heard to the person in default.

Illustration: If a patent has to be licensed in India, it has to be written, duly

executed and registered. If A wants to license the patent to someone, A must
obtain B’s permission. If B is not willing to consent to such licensing, the situation
becomes complicated. In such circumstances A is left with only one option. A
has to approach the Controller, seeking his power to direct B to agree to the
licensing under Section 51 of the Act.
No direction shall be given which affect the mutual rights or obligations of
trustees or of the legal representatives of a deceased person or of their rights or
obligations as such, or which is inconsistent with the terms of any agreement
between persons registered as grantee or proprietor of the patent.

TERM OF PATENT [SECTION 53]

The term shall be 20 years from the date of filing of the application for the patent.

The term of patent in case of international applications filed under the PCT
designating India, shall be 20 years from the international filing date accorded
under the PCT.

A patent ceases on the expiration of the prescribed period, if the renewal fee is
not paid within the said prescribed period or within the prescribed extended
period.

 The renewal fees shall be payable at the expiration of the 2nd year from the
date of the patent or of any succeeding year and the same shall be send to
the patent office before the expiration of the 2nd or the succeeding year.
 The period for payment of renewal fees so specified above may be
extended for not more than 6 months, if the request for such extension of
time is made.

On cessation of the patent right due to non-payment of renewal fee or on expiry

of the term of patent, the subject matter covered by the said patent shall not be
entitled to any protection. The patent thus, falls into public domain and becomes
public property.

REVOCATION OF PATENT [Section 64]

Patent revocation means cancellation of the rights granted to a person by the grant
of a patent.

A patent can be revoked in the following ways:

  on a petition filed by any interested person; or
 on a petition filed by the Central Government; or
 on a counter-claim in a suit for infringement of the patent by the High
Court.

Grounds for Revocation of Patents

A patent may be revoked on any of the following grounds:

 If a similar invention is protected by a patent right with an earlier filing

date.
 The patent was granted to a person who is not entitled to it.
 The Patent was wrongfully obtained by a person from another person who
is actually entitled to the same.
 The invention claimed in the granted patent is not an invention within the
meaning of section 2(j) of the Act.
 Invention claimed in the patent is lacking in novelty with regard to prior
knowledge or prior public use.
 Invention claimed in the patent is obvious with regard to prior knowledge
or prior public use.
 Invention is not useful i.e., either it may not operate at all or it may not
provide the desired result as mentioned in the patent specification.
 Where the invention and the method by which it is to be performed is not
sufficiently and fairly described by the complete specification.
 The scope of any claim of a Patent is not clearly or sufficiently defined in
the specifications of the Patent,
 Where a false suggestion or representation was made to obtain the patent.
 The invention claimed in the patent is not patentable in India i.e., it falls
under section 3 or 4 of the Act.
  If the invention that is being claimed was secretly used in India before the
priority date.
 Where the information w.r.t foreign applicants u/s 8 has not been disclosed
by the applicant to the Controller or the information that has been furnished
is false to his knowledge.
 Non-compliance of secrecy direction issued by the Controller or filing
patent application outside India without prior permission of the Controller.
 Where the permission to amend the complete specification under Section
57 or 58 was obtained by fraud.
 If the source and geographical origin of biological material in the complete
specification, is not disclosed or wrongfully disclosed.
 If the complete specification was anticipated having regard to the
knowledge, oral or otherwise available within any local or indigenous
community in India or elsewhere.

However, A patent may be revoked by the High Court on a petition filed by the
Central Government, if the High Court is satisfied that the patent holder has
without cause failed to comply with the request of the Central Government to
make, use or exercise the patented invention for the purpose of the Government
upon reasonable terms. A notice of any petition for revocation of a patent shall
be served on all mentioned in the register who are proprietors of that patent or
have a share or interest therein.

Case: Upendra Nath Dass & Sons vs. T.C. Martin, 1962: Under the Patents Act,
various rights have been given to a person who wants to complain of the invalidity
of a patent. But so long as no steps are taken to have it revoked, the patent, on the
face of it, is good under the Act and confers on the patentee the exclusive privilege
of making, selling and using the invention throughout India and of authorizing
others to do so.
Case: Enercon (India) Ltd and Ors. vs. Enercon Gmbh, 2014: The Supreme
Court laid down the fact that when post-grant opposition proceedings are
instituted by a party in the Court related to a Patent, then the same party cannot
institute a petition of Patent Revocation or counter-claim of Patent Revocation
proceeding against the same Patent simultaneously.

Revocation in cases related to atomic energy [section 65]

Where after the grant of a patent, the Central Government is satisfied that a patent
is for an invention relating to atomic energy for which no patent can be granted,
the Government can direct the Controller to revoke the patent.

The Controller shall thereafter, give notice to the patentee and every person who
has an interest in the patent and gives them an opportunity of being heard, after
which the Controller revokes the patent.

If the Controller feels that the patent can be sustained by amending something,
instead of revoking the patent he can also allow the patentee to amend the
complete specification in a manner which he considers necessary.

Revocation of patent in public interest [Section 66]

Where the central government is of opinion that a patent or the mode in which it
is exercised is mischievous to the state or prejudicial to the public, can make a
declaration to that effect in the Official Gazette, following which the patent shall
be considered revoked. The decision of revocation may be made after giving the
patent holder an opportunity to be heard.

For example, Company Avesthagen Ltd. was granted a Patent on a product

containing Jamun, Chandan, and Lavangpatti, which was anticipated to be used
in for the treatment of diabetes. The Company Avesthagen filed for Patent for the
same product in the European Patent Office (EPO). The Patent was not granted
on the ground that the Patent is infringed upon the Traditional Knowledge Digital
Library (TKDL).

The Central Government of India, on finding out about the filing of Patent in
EPO, revoked the Patent granted to the company Avesthagen by the Indian Patent
Office under Section 66 of the Indian Patents Act. The ground of rejection was
that the Patent is detrimental to the public interest at large and is also mischievous.

The company Avesthagen argued that though it was traditional knowledge, but it
was not known that these plants when used in the particular combination, show a
faster effect. On the other hand, the Central Government argued and proved that
the fact that these plants specified in the specifications of Patent are used for the
management of diabetes for a very long period and was known to the public at
large for centuries. The Central Government stated that it is very obvious that the
extracts of plants will perform the same function. Hence, the Court held that the
grant of Patent could not be done just for re-validating a traditional knowledge.

Revocation of patents for non-working [Section 85]

Do learn this section under Compulsory Licensing head.

Section 104 states that the Revocation petition claiming Infringement of Patent
should not be filed in any court, which is inferior to District Court having the
jurisdiction to try the Infringement suit. On the other hand, in case of a counter-
claim is filed for the Revocation of Patent made by the defendant, such counter-
claim or suit for Patent Infringement should be transferred to the High Court.

LICENSING

Patent licensing is a process of granting permission to a third party to extract

benefits by selling and using the licensed product.

The patent owner gives license to a third party to use his patented invention based
on the agreement and royalty. The license can be given for a period of time as per
the mutual understanding between patent owner and licensee. During this time
period, the licensee can use patented invention and can take financial benefits.

Licensing is a contract between two parties where licensee agrees the terms and
conditions of patent owner. The License agreement must be in writing.

Types of Licenses

 Voluntary licence

Voluntary licensing is an act of goodwill towards the society. When the patentee,
by a written agreement, empowers another person to make, use or exercise the
patented invention in a particular manner and on agreed terms and conditions it
is called a voluntary licence. The Controller of Patents and the Central
Government do not have any role in such licence.

 Exclusive License

In case of exclusive licence, the patentee confers exclusive right to make, use,
sell or distribute the patented invention to a particular person to the exclusion of
all others. However, licensee cannot license the patent to anyone else. It is
exclusively granted to him/her.

The patentee has the right to impose certain restrictive conditions on the rights of
the licensee. But no such restrictions can be imposed which are against the public
interest. The exclusive licensee has the right to initiate infringement proceedings
against an infringer.

 Non-Exclusive License

In case of non-exclusive license, when the patentee granted the license of the
patent to more than one party and all of them can commercialize the patent into
the market. In this case, all of them have the right to make, use and sell the
patented design. The rights enshrined by this license is not exclusive to a
particular licensee.
  Compulsory License

When the government grants permission to any individuals or organizations to

use, sell or make a patented design or product, irrespective of the will of the patent
owner, for the public good, it is referred to as compulsory license. Compulsory
license is usually seen being granted in the pharmaceutical products and anticthe
products which fulfils the criteria as mentioned in Sec 84 of the Patents Act, 1970.

 Sub License

Licensee has rights to issue Sub license to different organizations for making the
product of patented invention. Patent owner give rights to licensee and the
licensee has the right to issue the license further to a third party that can use
patented invention. The financial benefits will depend on the contract between
the primary licensee and third party.

 Cross-Licensing

Cross-Licensing is the exchange of licenses between different organizations and

creators. When invention requires the support of other products to make its place
in the market, Cross-Licensing process is used. Ericsson and Oppo entered into a
cross license agreement which covered various patent portfolios of both the
companies including portfolios of 2G, 3G and 4G.

 Carrot Licensing

Carrot Licensing is one of the approaches of patent licensing. This approach is

suitable when prospective licensee is not in the practice of the patented invention
and not falls under any obligation to take a license. In this case, patent owner has
to convince the party to use his product and how licensing the product can be
beneficial for them. Carrot Licensing is a marketing policy where the patent
owner tries to show the licensee that what could be achieved by taking a license
for his patent.
  Stick Licensing

Stick Licensing is another approach of licensing which is totally contrast of the

carrot licensing. In Stick Licensing approach, prospective licensee is already
using the patented technology and thus infringing the patent. The patent owner
can file a suit against the infringer or settle with the infringer agreeing to license
his patent.

WORKING OF PATENTS

Section 82 – Definition of “patented article” or “patentee”

 "Patented article" includes any article made by a patented process.

 "Patentee" includes an exclusive licensee.

Section 83 – General principles applicable to working of patented inventions

 Patents are granted to encourage inventions and to secure that the

inventions are worked in India on a commercial scale.
 Patents are not granted merely to enable patentees to enjoy a monopoly for
the importation of the patented article.
 Patents contribute to the promotion of technological innovation and to the
transfer and dissemination of technology.
 Patents granted do not impede protection of public health and nutrition.
 Patent should act as instrument to promote public interest, socio-economic
and technological development of India.
 Patents granted should not prohibit Central Government in taking measures
to protect public health.
 Patent right is not abused by the patentee or person deriving title or interest
on patent from the patentee.
  Patentee or a person deriving title or interest on patent does not resort to
practices which unreasonably restrain trade or adversely affect the
international transfer of technology.
 Patents are granted to make the benefit of the patented invention available
at reasonably affordable prices to the public.

COMPULSORY LICENSES [Section 84]

Compulsory licensing is when a government allows a third party to manufacture,

use or sell a patented product or process without the consent of the patent owner
or plans to use the patent-protected invention itself. This is generally done for the
public health, or in national emergency and health crisis.

For example: If a drug that is already patent is available at a very high price and
poor people of the society cannot buy it, then government can give compulsory
license to the other pharmaceutical companies to make the same drug at a low
rate. This is done so that people can have access to that drug at cheap price also.

Compulsory Licenses are granted in order to:

 Prevent the abuse of patent as a monopoly.

 Make a way for commercial exploitation of the patented invention by an
interested person, and
 Address the public health concern in India.

An application to the Controller for the grant of compulsory license may be made
by any person interested including the license holder after 3 years from the grant
of a patent on any of the following conditions:

 Reasonable requirements of the public w.r.t the patented invention have

not been satisfied.
 Patented invention is not available to the public at a reasonably affordable
price.
  Patented invention is not worked in the territory of India.

Every application must include a statement describing the nature of the applicant's
interest, with prescribed particulars, and facts on which the application is based.

If the Controller is satisfied that any of the above-mentioned grounds subsists, he

may grant a license upon such terms as he deems fit.

Factors taken into account while considering the application

The controller shall take into account:

 Nature of the invention.

 Time which has elapsed since the sealing of the patent.
 Measures that are taken by the patentee or licensee to make full use of the
invention.
 Applicant's ability to use the invention for the benefit of the public
 The capacity of the applicant to undertake the risk in providing capital and
working the invention, if the application were granted.
 Whether the applicant has made efforts to obtain a license from the
patentee on reasonable terms and conditions and such efforts have not been
successful within a reasonable period. The ‘reasonable period’ shall not
exceed a period of 6 months.

However, the Controller shall not take the aforementioned details of the
application into account under the following situations:

 in case of national emergency; or

 in circumstances of extreme urgency; or
 in case of public non-commercial use; or
 on the adoption of anti-competitive practices by the patentee.

Case: Bayer Corporation vs. Natco Pharma Limited: Natco Pharma Ltd. is the
first company to file for compulsory licensing for producing generic version of
Bayer’s Corporation’s (US based Pharmaceutical Co.) patented medicine
‘Nexavar’, which is used in the treatment of kidney and liver cancer.

According to the Natco, the drug was imported in India to a very limited extent
and the drug was available only in a few cities and pharmacies. Moreover, the
drug was highly-priced at Rs. 2.8 Lakh for one month of therapy, which was
beyond the financial reach and unaffordable for the ordinary public. Natco
Pharma proposed to sell the drug at Rs 8800 for a month’s dosage and make this
life-saving drug easily accessible and affordable for the ordinary public.

It was argued by the Natco that all the 3 conditions of sec 84 was fulfilled that:

 The reasonable requirements of the public were not fulfilled.

 That it is not available at an affordable price
 Patented invention was not worked around in India.

So, Natco applied for the compulsory license under section 84 of the Patent Act
for Bayer’s patented drug Nexavar. So, in 2012, the Patent office by keeping in
mind the health of general public, granted the compulsory license to the Natco
Pharma. In addition to this, Natco was directed to pay 6 % of the net sales of the
drug as royalty to the Bayer.

[Section 85] - Revocation of patents for non-working

When a compulsory license has been granted in respect of a patent, the Central
Government or any interested person may request the Controller to order
cancellation of the patent on the following grounds —

 That the patented invention has not been worked on in the territory of India.
 The reasonable needs of the public have not been satisfied.
 That the patented invention is not available to the public at a reasonably
affordable price.
Note: Application to the Controller by the Central Government or any interested
person shall be made after the expiry of two years from the date of the order of
grant of the compulsory license.

The applicant needs to mention the particulars in the application, by clearly

stating out the facts on which such application is based along with the nature of
applicant's interest. The application has to be decided within 1 year of it being
presented to the controller.

[Sec 86] Power of Controller to adjourn applications for compulsory licenses

When an application is filed on the grounds:

 that the patented invention has not been worked in India or

 that the reasonable requirements of the public have not been met,

and the Controller is satisfied that the time, since the patent's sealing, has been
insufficient for any person to enable the invention to be worked on a commercial
scale to an adequate extent or to the fullest extent possible. He may postpone the
subsequent hearing of the application for a period of not more than 12 months in
total if he believes it is necessary for the invention to be worked.

No adjournment shall be ordered unless the Controller is satisfied that the

patentee has taken prompt, adequate and reasonable steps to start the working of
the invention on a commercial scale and to an adequate extent.

[Section 87] - Procedure for Dealing with Applications u/s 84 and 85

Where an application is submitted under section 84 or 85 and the Controller is

satisfied that a prima facie case exists to make an order, the applicant is directed
to provide copies of the application to the patentee and any other person interested
in the patent and the application is published in the official journal.

A notice of opposition to the application can be presented by the patentee or any

other person to the Controller, within a prescribed time period or within such time
which the Controller may allow. The notice of opposition should be sent to the
Controller within 2 months from the date of publication of the application.

Such notice of opposition shall contain a statement setting out the grounds on
which the grant of compulsory license is opposed.

When such notice is served, the controller will notify the applicant and give both
the applicant & opponent an opportunity to be heard before deciding the case.

[Section 88] - Powers of Controller in granting compulsory licenses

Where the Controller is satisfied on an application made for the grant of

compulsory license u/s 84 - that the manufacture, use or sale of materials not
protected by the patent is prejudiced due to the conditions imposed by the
patentee

 upon the grant of licenses under the patent, or

 upon the purchase, hire or use of the patented article or process,

then, he may order the grant of licenses under the patent to the applicant and its
customers, as he thinks fit. [Sec 88(1)]

Where an application u/s 84 is made by a licence holder under the patent, the
controller can cancel an existing licence or instead of making an order for the
grant of a licence to the applicant, he may order the amendment of the existing
licence. [Sec 88(2)]

When the same patentee holds two or more patents and an applicant for a
compulsory licence establishes that the reasonable requirements of the public
have not been satisfied with respect to some of the patents, then,

 if the Controller is satisfied that the applicant cannot efficiently or

satisfactorily work the licence granted to him under those patents without
infringing the other patents of the patentee
  and if those patents involve technical advancement or are of an economic
significance in relation to the other patents,

the Controller by order may direct the grant of a licence in respect of the other
patents to enable the licensee to work the patents with respect to which a patent
is granted u/s 84. [Sec 88(3)]

Where the terms and conditions of a licence have been settled by the Controller,
the licensee, (at any time after he has worked the invention on a commercial scale
for a period of at least 12 months), may make an application to the Controller for
the revision of the terms and conditions on the ground that the terms and
conditions settled have proved to be more onerous than originally expected and
that in consequence thereof the licensee is unable to work the invention except at
a loss. [Sec 88(4)].

Proviso: No such application, however, is to be entertained for a second time.

[Section 89] - Purpose for Granting Compulsory Licenses

The controller must use his powers to grant a compulsory licence to ensure the
following general objectives:

 Patented inventions are worked on a commercial scale in India's territory

without undue delay and to the fullest extent reasonably possible; and
 The interests of anyone currently working on or developing an invention
in India under the protection of a patent are not unfairly prejudiced.

[Section 90] - Terms and Conditions of Compulsory Licences

The Controller while settling the terms and conditions of a licence u/s 84 shall
seek to secure the following:

 the royalty and remuneration for the patentee or other person who is
entitled to benefit from the patent is reasonable;
  the person to whom the licence is granted shall work the patented invention
to the fullest extent and with a reasonable profit;
 the patented articles are made available to the public at affordable prices;
 the license granted is a non-exclusive licence;
 the right of the licensee is non-assignable;
 the licence is granted for the remaining term of the patent;
 the licence is granted with the purpose of supply in the Indian market and
if required the licensee may export the patented product;
 that the license is granted with a pre-dominant purpose of supply in the
Indian Market and that the licensee may also export the patented product,
if required.
 the licence granted in case of semiconductor technology is to work the
invention for public non-commercial use;
 where the licence is granted to remedy a practice which is anti-competitive,
if required, the licensee is allowed to export the patented product.

However, a licensee is not authorized by the grant of licence to import from

abroad patented articles or products which are made by a patented process, where
importing such articles or substances constitutes an infringement of the patentee’s
rights unless it is authorized.

If in the opinion of the Central Government, it is necessary for the public interest,
it may direct the Controller to authorize any licensee in respect of a patent to
import from abroad the patented article or a substance or article made by a
patented process. The Controller may impose such conditions that relate to
royalty and remuneration payable to the patentee, quantum of import, the sale
price of the imported article and the period of importation.

[Section 91] - Licensing of related patents

At any time after the sealing of a patent, any person who has the right to work on
any other patented invention either as a patentee or a licensee, may apply to the
controller for the grant of license of the first mentioned patent. In order to get the
license, the applicant must establish that he is prevented or hindered without such
licence from working the other invention efficiently or to the best advantage
possible.

No such order shall be made unless the Controller is satisfied that:

 the applicant is able and willing to grant, or procure the grant of a licence
w.r.t the other invention on reasonable terms, to the patentee and his
licensees, if they so desire,
 the other invention has made a substantial contribution to the establishment
or development of commercial or industrial activities in India.

When the controller is satisfied with conditions established by the applicant, he

may make an order by granting a license under the first mentioned patent and a
similar order under the other patent if required by the proprietor of the first
mentioned patent or his licensees.

The License granted by the controller shall be non-assignable except with the
assignment of the respective patents.

[Section 92] – Compulsory License on Notification by Central Government

In circumstances of national emergency or extreme urgency or in case of public

non-commercial use, if the Central Government is satisfied that it is necessary
that compulsory licenses should be granted at any time after the patent is sealed
to work the invention, it may make a declaration to that effect by notification in
Official Gazette.

[Section 92A] - Compulsory License for exporting Patented Pharmaceutical

Products
Compulsory license shall also be available for manufacture and export of patented
pharmaceutical products to any country having insufficient or no manufacturing
capacity in the pharmaceutical sector for the concerned product to address public
health problems. Provided that, compulsory license has been granted by such
country or such country has allowed importation of the patented pharmaceutical
products from India.

Upon receipt of an application in the prescribed manner the Controller shall grant
a compulsory license solely for manufacture and export of the concerned
pharmaceutical product to such country under such terms and conditions as may
be specified and published by him.

[Section 93] – Order for license to operate as a deed b/w parties concerned

Any order for grant of a compulsory licence will have the same effect like a deed
granting a licence signed by the patentee and all other necessary parties and
containing the terms and conditions settled by the Controller.

[Section 94] – Termination of Compulsory License

On an application made by the patentee or any other person deriving title or

interest in the patent, a compulsory license granted under section 84 may be
terminated by the controller, if and when the circumstances that led to its issuance
no longer exist and are unlikely to recur.

Further, the holder of the compulsory license shall have the right to object to such
termination.

While considering an application, the Controller shall take into account that the
interest of the person who had previously been granted the licence is not unduly
prejudiced.

PARALLEL IMPORTS [Section 107A]

Section 107 A (b) of the Patents Act, 1970 is based on the concept of "Doctrine
of Exhaustion" enshrined in TRIPS.

Doctrine of Exhaustion

Doctrine of Exhaustion is defined as exhaustion of patentee's right after first sale

of the patented product. It means once the patentee has sold out his patented
product, he cannot regulate its movement after sale i.e., he cannot regulate its re-
sale and redistribution of the sold patented product as he has already exhausted
his exclusive right vested in him.

In short, after patented product has been sold by the patentee or by others with
the consent of the patentee, the IP right is set to be exhausted. It can no longer be
exercised by the owner.

For instance: If an inventor obtains a patent on a new kind of pen, the inventor
can legally prohibit other companies from making and selling this kind of pen,
but cannot prohibit customers who have bought this pen from the patent owner
from reselling the pen to third parties.

A buyer of an IP protected product is free to what he wishes to do with that

product. It means he has all the rights which includes right to use, re-sell it etc.,
without the fear of being sued for IP infringement. Thus, it can be said that this
doctrine is an exemption to the infringement of I.P holder rights.

The rationale underlying the theory of ‘exhaustion’ and the doctrine of first sale
is that the patentee has already been rewarded through the first sale and should
not be allowed to profit again and again on the same goods by controlling its use,
re-sale or distribution.

In Patents Act, 1970, Doctrine of Exhaustion is mentioned u/s 107A(b). This

section talks about certain acts not to be considered as infringement of patents,
like: -
“Importation of patented products by any person from a person, who is duly
authorized under the law to produce and sell or distribute the product,” shall not
be considered as an infringement of patent rights. – This concept is called as
‘Parallel Imports’.

Parallel Import

According to the concept of ‘Parallel Import’, importation of patented products

from any person authorized by the patentee shall not be considered as an
infringement of patent rights.

It means when the IP protected goods are sold or exported by the patentee or
through his authorized licensee in the foreign market, and simultaneously
imported in the country where it has received patent protection without the
consent of IP holder is known as parallel import.

Therefore, it is possible to import the patented products from the licensee of the
patentee in any country without the permission of the Patentee.

The purpose of Parallel import is to check the abuse of patent rights and to control
the price of patented product by taking away the monopolistic power of the patent
holder.

Parallel import (also called grey market imports) is not unauthorized, unofficial
or illegal sale, nor it the sale of pirated and counterfeited products, rather parallel
imports are genuine, often branded, products that do not violate an IP right and
legal in most of the nations.

The main object of parallel import is to help the consumers to avail the goods at
a cheaper price, this is the reason due to which many developing countries
promotes parallel import to make available the goods from the international
market at a cheap rate.
For Example: Suppose, a company called ‘Blue Pharma’ has a patent for a drug
in India. This company has licensed its patent to ‘Red Pharma’ in USA. Here,
‘Blue Pharma’ is patentee, while ‘Red Pharma’ is licensee. And ‘Red Pharma’ is
authorized by the patentee or patent holder to sell the drug. Now, a company,
‘Green Pharma’ in India, buys the drug from ‘Red Pharma’ and imports to India.
Even though ‘Blue Pharma’ has rights in India and it can prevent ‘Green Pharma’
from importing the drug in India, here the Principle of Exhaustion of Patent rights
comes into picture. Since, ‘Green Pharma is buying and getting the drug imported
from ‘Red Pharma’, where ‘Red Pharma’ is duly authorised under law to produce,
sell and distribute the product. So, importation of drug by ‘Green Pharma’ in India
shall not be considered as infringement of patent rights.

So, this provision makes it amply clear that once the first sale of product is made
by patentee, his rights are exhausted with respect to those products and he can no
more control the resale or re distribution of the sold article. This gives the
importer freedom to purchase the product from any person (including reseller)
and not only from the person who is authorised by the patentee and this will not
constitute infringement.

So, it is important to know that for the application of principle of international

exhaustion, first sale must have to be made or authorised by patentee. If the first
sale was not authorised, then each subsequent sale and use of the patented article
will constitute separate infringement of the patent.

RIGHTS OF PATENTEE [SECTION 48]

The Patentee has the following rights:

 Where the subject matter of the patent is a product: The patent provides
the exclusive right to the Patentee to prevent third parties, from the act of
making, using, offering for sale, selling or importing for those purposes,
that product in India without the consent of the Patentee.
  Where the subject matter of a patent is a process: The exclusive right
to prevent the third party from the act of using that process and from any
act of offering for sale, selling or importing the products obtained by that
process in India, without the consent of the Patentee.

There are also other rights of the Patentee which are as follows:

 Right to exploit patent

A patentee has the exclusive right to make use, exercise, sell or distribute the
patented article or substance, or to use or exercise the method or process
associated with the invention in India. This right can be exercised either by the
patentee himself or by his agent or licensees. The patentee’s rights are exercisable
only during the term of the patent.

 Right to grant license

The patentee has the discretion to transfer rights or grant licenses or enter into
some other arrangement for a consideration. A license or an assignment is to be
valid if it is in writing and registered with the Controller of Patents.

 Right to Surrender

A patentee has the right to surrender his patent after seeking permission from the
controller. The controller then advertises the patent and notify the interested
parties. The parties interested in getting the ownership of the patent can then
approach the controller. The controller examines the party’s claims and
surrenders the ownership respectively.

 Right to apply for the patent of addition

This right is provided in Section 54 to 56 of the Act. This right allows the Patentee
to make modifications or changes in the existing invention after the notification
of the acceptance is granted. Once the notification is presented, the owner is
provided with the same rights as provided to the previous patent.
  Right to sue for infringement

The patentee has a right to institute proceedings for infringement of the patent in
a District Court having jurisdiction to try the suit.

PATENT INFRINGEMENT & DEFENCES

The Indian Patents Act 1970 does not specifically define activities that constitute
infringement of patents.

However, Section 48 of the Indian Patents Act 1970, confers exclusive rights
upon the patentee to exclude third parties from making, importing, using, offering
for sale or selling the patented invention, product or process. It can therefore be
concluded that violation of aforementioned monopoly rights would constitute
infringement of a patent.

Under Section 88 of the Limitation Act, a suit for infringement must be instituted
within 3 years from the date on which the plaintiff first knew of the infringement.

Types of Infringement

Direct Infringement –

 This is the most common type of patent infringement.

 When a patented product or method is used, marketed, sold, offered for
sale, or imported without permission of the patentee during the term of
such a patent, it constitutes direct infringement.
 Where the infringer has made an equivalent product or process to the
patented product or process and has been using, selling, marketing,
offering for sale, or importing the same without permission of the patentee
during the term of such a patent, also constitutes direct infringement

Indirect Infringement –

 There are actually two types of indirect infringement.

  Inducted infringement – where one actively induces the other person to
infringe a patent by encouraging, assisting, aiding, inducing him to do so.
Patent infringement by inducement typically means that the inducer
willingly and knowingly aided in the infringement but may or may not have
specifically intended to violate a patent. For example, the person might
provide someone with instructions for creating the patented invention.
 Contributory infringement – A person commits contributory infringement
when they supply components of a patented invention knowing that the
components will be used to infringe a patent.
It is a type of indirect infringement, where a person or corporation is held
liable for infringement even if they have not actively participated in
infringing activities. Therefore, it happens when a party sells a product
which they know is used in the infringing product. Typically, this product
will have no commercial value, as a result of its use in the infringing
product.

[Section 104] – Jurisdiction

A suit for,

 declaration u/s 105,

 relief u/s 106,
 infringement of a patent,

shall be instituted in any court not inferior to a district court, having jurisdiction
to try the suit.

However, where counter-claims for revocation of the patent is made by the

defendant, the suit along with the counter claims are transferred to the High Court
for a decision on the validity of the patent.

[Section 104A] - Burden of proof in case of Infringement of Patents

When the subject matter of the patent is a product, the burden of proof lies on the
plaintiff to show that his patent has been infringed.

However, where the subject matter of the patent is a process, the burden of proof
lies on the defendant to prove that the process used to make the product is
different from the patented process. Provided that the patentee is unable to
determine the process used by the infringer through reasonable efforts.

[Section 105] – Power of court to make declaration as to non-infringement

At any time after the publication of grant of a patent, any person may institute a
suit for a declaration that the use of any process by him, or the making, use or
sale of any article by him would not constitute an infringement of a patent against
the patentee or his exclusive licence.

This procedure is subject to fulfillment of certain conditions:

 The plaintiff has applied in writing to the patentee or his licensee with a
request to issue a declaration.
 The plaintiff has furnished to the patentee or his licensee, all the particulars
of its products or process in question.
 The defendant has refused or neglected to give such a declaration.

If the plaintiff is successful in such a declaratory suit, the court can issue a
declaratory judgment that the specific product or process of the plaintiff does not
infringe the identified patent.

Note: The cost of all the parties in this suit for declaration will be borne by the
plaintiff. And, in such a suit the validity of the patent cannot be called in question.

[Section 106] – Power of court to grant relief in case of groundless threats of

infringement proceedings
When any person (patent holder or not) threatens any other person for
proceedings for infringement of a patent, then the aggrieved person may bring a
suit against him by praying for the following reliefs:

 He can ask for the declaration that threats are unjustifiable.

 An injunction against the threats.
 Damages.

But, when the patentee (defendant) is able to successfully prove that the threats
were against the activities which indeed were infringing the patent, then such
relief’s will not be granted to the plaintiff.

[Section 107] - Defences in a suit for infringement

 It says that every ground on which the patent may be revoked under section
64 shall be available as a ground for defence.
 Any making, using or importation of any machine, apparatus or other
article or by the using of any process or by the importation, use or
distribution of any medicine or drug, - it shall be a ground for defence that
such making, using, importation or distribution is in accordance with any
one or more of the conditions specified in section 47. - (Govt. use)

[Section 107A] – Certain Acts not to be considered as infringement

“Bolar Provision”: Any act of making, constructing, using, selling, importing a

patented invention solely for development and submission of information as
required under law in India or elsewhere, to an authority that regulates the
activities related to the product.

Generally, this provision enables generic drug manufacturers to get marketing

approval for their products before the expiry of the patent on the corresponding
patented product.
“Parallel Import”: It means when the IP protected goods are sold or exported by
the patentee or through his authorized licensee in the foreign market, and
simultaneously imported in the country where it has received patent protection
without the consent of IP holder is known as parallel import.

[Section 108] - Reliefs in suits for patent infringement

The court may grant the relief in any suit for the patent infringement which
includes:

 Injunction,
 Damages and
 Accounts of profits.

The court can also order the goods found to be infringing or predominant use of
which is in the creation of infringing goods shall be seized, destroyed or forfeited.

Case: Bishwanath Prasad Radhey Shyam vs. Hindustan Metal Industries,

1982: In this case, Plaintiff had a business of manufacturing utensils at Mirzapur
and similar was the business of the defendant. The old method of manufacture
was risky for the workers. Thus, plaintiff invented a device and method for the
manufacture of utensils and got it patented. The defendant was using Plaintiff`s
method on which plaintiff filed a suit for infringement. But in the counter claim,
defendant prayed for revocation of the patent contending that the patented
invention did not involve any inventive step. The contention of the defendant was
accepted.

Case: F. Hoffmann-La Roche Ltd vs. Cipla Ltd., Mumbai Central: This was one
of the first cases of patent infringement in India after independence. In this case,
the plaintiff pleaded for an interim injunction order to be passed against the
defendant’s sale of a generic form of the drug. The Delhi High Court rejected the
case, saying that the sale of the generic form of patented product was in the public
interest.
 UNIT IV: THE DESIGNS ACT, 2000
INTRODUCTION TO DESIGNS LAW

Customer’s attraction towards a product is guided by multiple factors. One of the

factors which influence a customer’s decision is the appearance of the article. The
appearance of an article plays a pivotal role in affecting the sale of the product. It
is for the same reason that the sellers invest a good deal of time and money to
create a design for their product which is distinct from the other designs in order
to increase the sale of the same and earn profit.

A design is something that is applied to an article and it is not an article itself. It

has to be delivered by the producer as finished goods. It cannot be separated from
an article. An industrial design is the ornamental or aesthetic aspect of an article.
It may consist of 3D features such as shape or surface and 2D features such as
patterns, line or colours.

In order to be protected, the design of an article must appeal to an eye. This means
that a design is primarily of an aesthetic nature.

The protection of industrial design is important as it encourages the creativity in

the industrial and manufacturing sectors and helps in the economic development
of a nation. An industrial design adds commercial value to a product by making
it attractive. The manufacturers, therefore, pay adequate attention to the designs
of the articles they produce. For this purpose, they invest substantial capital and
carry out research.

Legal protection, therefore, becomes necessary for the creation of new designs
and their application to articles, as it ensures a fair return on investment. An
effective system of protection promotes fair competition and honest trade
practices, encourages creativity and promotes more aesthetically attractive
products.
HISTORY

Earlier the Design Law in India was governed by Design Act 1911. Since, the
enactment of the Design Act, 1911, there has been considerable growth in the
area of science and technology. It was felt that a better legal system is required to
ensure effective protection of a registered Design. The enactment of new act was
also necessary in order to bring the Indian Design Law at par with the
International Law. The Design Act 1911 has been repealed and replaced by
Design Act 2000. Presently the Law pertaining to Design in India is governed by
Design Act 2000.

Finally, the Designs Act, 2000 came into force in India from 11th May 2001. The
new Act contains most of the provisions as were contained in the Designs Act,
1911, except for some minor changes in addition to some provisions relating to
the TRIPS Agreement and other international conventions.

It is necessary to note that the substantive law of Designs Act, 2000 has to be read
along with the provisions of its subordinate legislation i.e., the Designs Rules,
2001, which is a procedural overview.

Designs act was enacted to protect and safeguard the original industrial designs
which are applied to particular articles manufactured by industrial process.
Nowadays each mechanical or business company has its own unmistakable,
unique and apparent Designs.

The Design Act follows the ‘first to file, first to get’ rule which simply means that
an innovator of a design should get his design registered by filing an application
to the concerned authority at the earliest in order to make his design exclusive
and to protect it from piracy. By registering the design, the innovator who can
now be called as the owner obtains certain exclusive rights over the design so
registered.
The Designs Act, 2000 consists of eleven chapters which inter alia deal with the
registration of a design, copyright in registered designs, industrial and
international exhibitions, legal proceedings, powers and duties of Controller of
Design etc.

Objectives of design act 2000

 The primary objective of the Design Act is to protect the designs.

 It is an Act to consolidate and amend the law relating to the protection of
designs.
 Its main objective is to protect new or original designs from getting copied
which causes loss to the proprietor.
 The purpose of design registration is to see that the creator, originator or
artisan of any design is not deprived of his reward for creating that design.
 An industrial design helps in drawing a customer’s attention and helps in
increasing the commercial value of an article. Therefore, helps in
expanding its market.
 There are many competitors who adopt evil ways to reduce the competition
in the rival groups by exploiting the designs to their advantage. Thus, it is
necessary to have laws to safeguard the interests of the owners of these
designs.

INTERNATIONAL TREATIES AND CONVENTIONES

HAGUE AGREEMENT Concerning the International Registration of
Industrial Designs (1925)

The Hague Agreement governs the international registration of industrial designs.

It was first adopted in 1925.

The Agreement effectively establishes an international system i.e., The Hague

System – that allows industrial designs to be protected in multiple countries or
regions with minimal formalities.
Two Acts of the Hague Agreement are currently in operation – the 1999 Act and
the 1960 Act.

An international design registration may be obtained only by a natural person or

legal entity having a connection – through establishment, domicile, nationality
or, under the 1999 Act – with a Contracting Party to either of the two Acts.

The Hague Agreement allows applicants to register an industrial design by filing

a single application with the International Bureau of WIPO, which enable design
owners to protect their designs with minimum formalities in multiple countries
or regions.

The Hague Agreement also simplifies the management of an industrial design

registration, since it is possible to record subsequent changes and to renew the
international registration through a single procedural step.

An international application may be governed by the 1999 Act, the 1960 Act or
both, depending on the Contracting Party with which the applicant has the
connection described above (hereafter referred to as "Contracting Party of
origin").

International design applications may be filed with the International Bureau of

WIPO, either directly or through the industrial property office of the Contracting
Party of origin, if the law of that Contracting Party so permits or requires. In
practice, however, virtually all international applications are filed directly with
the International Bureau, and the majority are filed using the electronic filing
interface on WIPO's website.

International applications may include up to 100 designs, provided they all belong
to the same class of the International Classification for Industrial Designs
(Locarno Classification). Applicants may choose to file an application in English,
French or Spanish. International applications must contain one or several
reproductions of the industrial design(s) and must designate (mention) the list of
Contracting parties in which protection is sought.

Each Contracting Party designated by the applicant may refuse protection within
6 months, or possibly 12 months under the 1999 Act, from the date of publication
of international registration. Refusal of protection can only be based on
requirements of the domestic law, rather than the formalities & administrative acts.

But, if no refusal is notified by a given designated Contracting Party within the

prescribed time limit, the international registration has effect as a grant of
protection in that Contracting Party, under the law of that Contracting Party.

The term of protection is five years. It may be renewed for another term of 5 years
(under the 1960 Act). And, it may be renewed for another two terms of 5 years
(under the 1999 Act).

If the legislation of a Contracting Party provides for a longer term of protection,

protection of the same duration shall, on the basis of the international registration
and its renewals, be granted in that Contracting Party to designs that have been
the subject of an international registration.

To facilitate access to the Hague system for design creators from least developed
countries (LDCs), the fees for an international application are, in their case,
reduced to 10 per cent of the prescribed amounts.

The 1999 Act of the Agreement is open to any WIPO Member State and to certain
intergovernmental organizations. While the 1960 Act remains open to States
party to the Paris Convention (1883). Instruments of ratification or accession
must be deposited with the Director General of WIPO.

LOCARNO AGREEMENT Establishing an International Classification for

Industrial Designs (1968)
The Locarno Agreement was concluded at Locarno in 1968 and amended in 1979.
The Agreement establishes a classification for industrial designs.

The competent offices of the Contracting States must indicate in official

documents and in any publication, they issue in respect of the deposit or
registration of industrial designs - the numbers of the classes and subclasses of
the Classification.

The Locarno Classification basically comprises of:

 a list of classes and subclasses;

 an alphabetical list of goods which constitute industrial designs, with an
indication of the classes and subclasses into which they fall;
 explanatory notes.

The Locarno Agreement created a Union, which has an Assembly. Every State
that is a member of the Union is a member of the Assembly. Among the most
important tasks of the Assembly is the adoption of the biennial program and
budget of the Union.

The Agreement also set up a Committee of Experts in which all members of the
Union are represented. The main task of the Committee is the periodical revision
of the Classification.

The Agreement is open to States party to the Paris Convention for the Protection
of Industrial Property (1883). Instruments of ratification or accession must be
deposited with the Director General of WIPO.

WASHINGTON TREATY on Intellectual Property in Respect of

Integrated Circuits, 1989

The Washington Treaty was adopted in 1989 and provides protection for the
layout designs (topographies) of integrated circuits. The Treaty has not yet
entered into force, but has been ratified by the following States: Bosnia and
Herzegovina, Egypt and Saint Lucia.

The provisions of Washington Treaty have been incorporated by reference in the

TRIPS Agreement of the World Trade Organization (WTO) with some
modifications. Under the Treaty, each Contracting Party is obliged to secure,
throughout its territory, intellectual property protection of original layout-designs
(topographies) of integrated circuits, whether or not the integrated circuit is
incorporated in an article.

The Contracting Parties are under obligation to provide national treatment to the
persons of other Contracting Parties. Contracting Parties must have to consider
following acts as unlawful if performed without the authorization of the right
holder: the reproduction of the layout-design, and the importation, sale or other
distribution for commercial purposes of the layout-design or an integrated circuit
in which the layout-design is incorporated.

However, certain acts may be freely performed for private purposes or for the
sole purpose of evaluation, analysis, research or teaching.

In the context of the integrated circuits industry, reverse engineering is the use of
an existing layout design in order to improve upon it. It is considered desirable to
permit reverse engineering even if it involves the copying of an existing layout
design, provided that an improved layout design has thereby created an advance
of technology which is in the general public interest.

The Contracting Parties may make protection of layout designs dependent on

their commercial exploitation or on the filing of their registration application.

DESIGN [Section 2(d)]

The Design Act 2000 defines a Design as 2D or 3D features of shape,

configuration, pattern, ornament, composition of lines or colours applied to any
article by any manual, chemical, or mechanical industrial process, which resulting
in the finished article, appeal to and is judged solely by the eyes.

The Design Act 2000 in India specifically excludes:

 any mode or principle of construction,

 anything which is in substance a mere mechanical device,
 any trade mark,
 property mark, or
 any artistic work.

Case: Polymer Papers Ltd. v. Gurmit Singh & Ors. 2002: The plaintiff was a
company engaged in the production of filter papers for various automobiles. The
defendant was a manager in the company who was responsible for creating
designs for the manufacture of the filter papers. The plaintiffs contend that the
defendant left the job and sold off the industrial drawings to the other defendants
thereby infringing on their Copyright. The Delhi High Court thus held that
industrial drawings and designs in which the copyright was claimed clearly fell
within the definition of design u/s 2(d) of Designs Act, 2000. However, since the
design was not registered under the Design Act, the plaintiff could not claim
copyright over it.

Mere Mechanical Device

A mere mechanical device or a functional design is not registrable. While pattern

or an ornament would ordinarily be applied to an article and the shape or
configuration becomes the article itself. So, Design in that sense relate to the non-
functional features of the article.

Therefore, a design which has functional attributes cannot be registered under the
Designs Act. This is the essence of section 2(d) of the Designs Act. The protection
under the Designs Act is granted only to those designs which have an aesthetic
value or is appeal to the eye.
Case: Escorts Construction Equipment Ltd. vs. Action Construction Equipment
Pvt. Ltd.: The case was concerning the alleged illegal copying of a design by the
respondent of Pick-N-Carry Hydraulic Self Mobile Cranes manufactured by the
plaintiff. Though the case was not directly coming under the Designs Act, the
Court examined whether the said design was capable of registration under the
Designs Act. After examining the definition of design under the Act, the Court
held that the design in question was incapable of registration.

Rejecting the contention of the plaintiff who claimed protection of certain specific
parts of the crane, the Court held: "The aforesaid parts of the crane are made in a
particular shape so as to interrelate with others mechanically. These parts of the
crane are not made to appeal to the eye but solely to make the crane work or
function. Most of the key components or parts, unseen in the crane for which they
were required, had only to pass the test of being able to perform their function.
They would be judged by performance and not by appearance. Consequently, the
aforesaid key components or parts are incapable of being registered as designs."

Case: Kestos Ltd. vs. Kempat Ltd.: The House of Lords held that where a design
would perform a particular function, but the designer had also added some
features of shape that appealed to the eye and was additional to or supplementary
to the function, the design could be registered.

Eye Appeal

A cardinal rule of the law on designs is that the product or article to which a
design is applied must appeal to the eye of a potential customer.

Case: Gammeter vs. Controller of Patents & Designs: Calcutta High Court went
on to rule that the test of novelty was the eye of the judge who must place the two
designs side by side and see whether the one for which novelty was claimed was
in fact new. In this case, the court upheld the claim of novelty or originality for
the registered design of a metal wrist-band for watches – although gold bracelet
of the same kind was used as jewellery from several years. The court opined that,
although the shape of the band was not new or original, but its application to the
watch was for a purpose so different from the purpose and use of a bracelet and
thus, this design may be said to be original.

Article [section 2(a)]

“Article” means any article of manufacture and any substance, artificial, or partly
artificial and partly natural. It also includes any part of an article capable of being
made and sold separately.

The article must be capable of being made and sold separately in the sense that
the article has a commercial identity in the market of its own and not as a part of
another article.

ESSENTIAL REQUIREMENTS FOR REGISTRATION OF DESIGN

Before the registration of design as per the Designs Act, 2000 it is essential that
the following requirements are fulfilled:

1. The design should be Novel and Original.

It is pertinent to point out that only a unique design which is novel and original
can be registered.

According to section 2(g) of the Act, “Original” in relation to a design, means

originating from the author of such design and includes the cases which though
old in themselves are new in their application.

 The word 'new' in relation to a design means a design which is invented or

created for the first time and was hitherto unknown.
 The word 'original' in relation to a design may mean a new application of
an existing or known design to a subject-matter.
 Thus, a design may not be new in the sense that it is completely new. It
may be an existing or known design but has been applied to a particular
 article for the first time. Such a design, therefore, may be original in the
sense that its application to the article is new.
 However, a combination of two or more previously published designs can
be registered only if the combination produces new visuals or designs.

Case: Bharat Glass Tube Ltd. vs. Gopal Glass Works Ltd.: It was held that a
design which has been invented for the very first time by the author and has never
been reproduced, registered or published anywhere in India or outside India could
be considered to be novel or original.

Case: Hello Mineral Water Pvt. Ltd. vs. Thermo king California Pure (1999):
The plaintiff is a company engaged in selling water coolers. It claims that the
defendants who are also engaged in selling water coolers, have infringed their
copyright by using their same design on water coolers. The defendant has been
trying to advertise its product in the market using pamphlets, which makes it
obvious for the plaintiff that his design has been copied and his copyright
infringed. The defendant claims that the plaintiff has no novelty in the design as
it was already in use. The plaintiff seeks injunction for restraining the defendants
from using his design.

The Court held that the plaintiff did not have novelty in the design because for a
design to be a novelty there should be presence of some new element or
combination of element different from anything found in the prior structure.
Mere form or shape is not sufficient for the purpose of novelty. The colour
combination, the location of the cup holders and the brand labels of the defendant
gives the impression that it is not a copy of the design used by the plaintiff. Also,
the plaintiff did not have copyright over the design because that design was
already in use for air conditioners, washing machines etc. in other advanced
countries of the World. There was no newness or anything inventive about the
design and so the registration by the plaintiff is liable to be cancelled.
Case: B Chawla & Sons vs. Bright Auto Industries (1980): The Delhi High Court
observed only a slight difference existed between the two impugned designs
presented before it. The Court further held that minor addition or alteration in
shape which is a well-recognized shape of another product that exists in the
market, cannot provide such design the status of a new and novel design.

2. The design should not be previously published.

The design must not be a published one. If the design is already published than
the design is not eligible for the publication.

 Secret and Private use of the design does not amount to publication and
can be used for the experimental purpose.
 But, if a copy of the publication is already available in the public library
where the general public has access, the same may be sufficient to
constitute publication.
 Displaying of the design in any fashion show by the creator is the
publication of that design.

Therefore, in order to get the design registered, it should not be publicly

accessible.

Case: Kemp and Co. & Ors. vs. Prima Plastics Ltd., 2000: In this case it was held
that if the proprietor of a design discloses it to any other person in good faith, it
is not deemed to be a publication. Subsequently, if the registration is obtained of
the said design, the earlier disclosure would not invalidate the copyright thereof.

And, if the other person to whom the design has been disclosed, if acts in contrary
to good faith and subsequently uses and publishes the said design, then such use
and publication by him shall not deemed to be a publication of the design
sufficient to invalidate copyright.

3. Distinctiveness
A design which is not significantly distinguishable from known designs or
combination of known designs is not registrable. The question whether a design
is significantly distinguishable from the other, is to be judged solely by the eye.

Thus, for a design to be significantly distinguishable from known designs or

combination of known designs, there should be significant variations in it and not
merely small or superficial variations.

4. Design must not contain scandalous or obscene matter

If the design of article is such which contains the scandalous or obscene matter,
the Controller may refuse to register it. Whether a design contains scandalous or
obscene matter, it should be decided from the perspectives of Indian society, as
the meaning of scandalous or obscene may differ from society to society.

5. Design should not be contrary to public order and morality

The design which is opposed to morality or is forbidden by the Government of

India or any authorised institution or which can cause disturbance or breach of
public order and peace is simply not eligible for registration.

REGISTRATION OF DESIGNS

[Section 3] – Controller & other officers

 The Controller General of Patents, Designs and Trademarks shall be the

Controller of Designs for the purposes of this Act.
 The Central Government may appoint as many examiners and other
officers with such designations as it thinks fit.
 The officers appointed by the Central Govt. shall discharge such functions
of the Controller as he may authorize time to time by general or special
order (but under the superintendence and directions of the Controller).
 The Controller may, by order in writing and for reasons to be recorded
therein, withdraw any matter pending before an officer and deal with such
 matter himself either from the starting or from the stage it was so
withdrawn or transfer the same to another officer, who may subject to
special directions in the order of transfer, proceed with the matter either
from the starting or from the stage it was so transferred.

[Section 4] – Prohibition of registration of certain design

A design shall not be registered if it:

 is not new or original; or

 has been disclosed to the public; or
 is not significantly distinguishable from known designs or combination of
known designs; or
 contains scandalous or obscene matter.

[Section 5] – Application for registration of designs

Any person claiming to be the proprietor of any new or original design which has
not been previously published anywhere and is not against any public policy or
morality can make an application for registration of the design and accordingly,
the controller may register the design after the examination by the examiner.

 Every application shall be filed in the appropriate patent office in the

prescribed form and in the prescribed manner and shall be accompanied by
the prescribed fee.
 A design has to be registered only in one class. In case of any doubt
regarding the class in which the design should be registered, the controller
who would decide the matter.
 The Controller can refuse to register any design that is presented before
him for registration. In this case, the aggrieved person has the option to
prefer an appeal to the high court.
  If any application is not complete within 6 months, owing to the fault of
the applicant then it shall be abandoned.
 The date of the application for registration is the date of registration of a
design.

[Section 6] – Registration to be in respect of particular article.

A design may be registered in respect of any or all the articles comprised in a

prescribed class of articles.

The controller shall determine any question regarding the class within which any
article falls and his decision shall be final.

If a design is registered in respect of one article comprised in a class of article,

then the registration of one or more other articles comprised in that same class of
articles cannot be refused, nor shall the registration thereof be invalidated, on the
ground that:

 the design is not new or original.

 the design having been previously published in India or elsewhere.

Provided that, such subsequent registration shall not extend the period of
copyright in the design beyond that arising from previous registration.

[Section 7] – Publication of particulars of registered designs

After the registration of the design, the Controller shall publish the prescribed
particulars of the design and the representation of the article to which the design
is applied in the official Gazette and opens it for public inspection.

[Section 8] – Power of controller to make orders regarding substitution of

applications

The Controller, if satisfied, has the power to substitute another person in place of
the original applicant, if on a claim by such person that he is entitled to an
undivided share or has an interest in the design. Thereafter, the Controller may
direct that the application shall proceed in the names of the claimant or in the
names of the claimants and the applicant accordingly.

[Section 9] – Certificate of Registration

 The Controller shall grant a certificate of registration to the proprietor of

the design when the design is registered.
 The controller in case of loss of the original certificate, furnish one or more
copies of the certificate.

[Section 10] – Register of Designs

The register of designs is kept at the patent office. The names and addresses of
proprietors of registered designs, notifications of assignments and transmissions
of registered designs, and such other matter as may be prescribed are to be entered
in the register.

Such register may be maintained wholly or partly on computer under floppies or

diskettes and such computer floppies or diskettes shall be maintained under
superintendence and control of Controller.

And, in case of any dispute or doubt with regard to information of designs, the
information as contained in the backup file or master file shall be final.

The register of designs shall be prima facie evidence of any matter directed or
authorized to be entered therein.

PROCEDURE FOR REGISTRATION OF DESIGN IN INDIA

1. Filing an application

The first step is to file an application in the prescribed form along with the
prescribed fees before the patent office. The application shall specify the class in
which the design is to be registered and the articles to which it is to be applied.
There shall be a separate application that shall be filed for each class of articles.

2. Examination

After receiving the application for the registration of the design the controller will
send the application for an examination, in order to check whether the design is
capable of registration or not. After receiving the green signal from the examiner,
the controller will accept the application and proceed further.

3. Communication of objections

But, if the examiner finds any defects in the application, the same has to be
notified to the applicant. After the defects are communicated to the applicant, the
applicant is required to remove all the objections and shall resubmit the
application to the Patent Office for the acceptance of the application within six
months from the official date of the application. If all the objections are not
removed within 3 months after communication the same to the applicant, the
application will be withdrawn.

4. Publication

Once the application for the registration of the design is accepted by the patent
office the Controller shall publish the prescribed particulars of the design and the
representation of the article to which the design is applied in the official Gazette
and opens it for public inspection.

5. Registration

The controller shall grant a certificate of registration to the proprietor of the

design when registered.

COPYRIGHT IN REGISTERED DESIGNS

According to section 2(c) of the Act, "Copyright" means the exclusive right to
apply a design to any article in any class in which the design is registered." This
means that if a design is registered in respect of several articles in one class, the
proprietor of such design shall have the exclusive right to apply the design to all
of them.

[Section 11] – Copyright on Registration (Tenure)

When the design gets registered, the proprietor of the design shall have copyright
in the design for 10 years from the date of registration.

However, if an application for the extension of the period of copyright is made to

the Controller before the expiration of the said period of 10 years, then the
Controller shall extend the period of copyright for a period of 5 years from the
expiration of the original period of 10 years on payment of the prescribed fee.

The total duration of copyright in design shall not exceed 15 years. After 15 years,
the design will fall in public domain and will become public property.

[Section 12] – Restoration of Lapsed Designs

If the design ceases to have effect because of non-payment of the prescribed fees
for the extension of copyright in the design, the proprietor of such design has an
option to restore the design provided an application for the restoration of the
design is made within one year from the date on which the design ceased to have
an effect, in the prescribed manner accompanied by payment of such fees as may
be prescribed along with the reason which led to the failure to pay the fees.

If the controller is satisfied that the failure to pay the fee for extension was not
intentional, he shall upon the payment of any unpaid fee for extension restore the
registration of the design.

EFFECT OF DISCLOSURE ON COPYRIGHT [SECTION 16]

Section 16 provides certain disclosures made prior to the registration of design
shall not be deemed to be a publication sufficient to invalidate the copyright
thereof. They are:

 Where the proprietor of the design discloses his design to a person in good
faith, and that person uses and publishes that design in breach of good faith.
 Acceptance of a first and confidential order for registration of articles
bearing a novel or original textile design.

INSPECTION OF REGISTERED DESIGN [SECTION 17]

During the existence of copyright in a design any person can inspect the design
on making an application giving particulars to identify the design and paying the
prescribed fee.

Any person, on an application to the Controller and on payment of prescribed fees

may obtain a certified copy of any registered design.

PROVISIONS AS TO EXHIBITIONS [SECTION 21]

Section 21 mentions circumstances related to exhibition under which design is

not invalidated or prevented from registration. The circumstances are as follows:

 The exhibition of a design, or of any article to which a design is applied, at

an industrial or other exhibition to which the provisions of this section have
been extended by the Central Govt. by notification in the Official Gazette.
 The publication of a description of the design, during or after the period of
exhibition.
 The exhibition of the design or the article or the publication of a description
of the design by any person elsewhere during or after the period of
exhibition, without the privity or consent of the proprietor.

However, there are certain requirements to be fulfilled to register the design after
the exhibition:
  A prior notice has to be furnished to the controller in the prescribed manner
by the exhibitor.
 An application for registration of the design is made within 6 months of
the date of the first exhibition.

CANCELLATION OF REGISTRATION [SECTION 19]

There is no concept of a Pre-Grant Opposition in the Design law, like in the case
of Patents law. Hence, the Design law, on the lines of the Post-Grant Opposition
in Patents Law, provides an opportunity for invalidating any Design only after
Registration of such Design.

Any person interested may file a petition to the Controller for cancellation of the
registration of a design after the registration of design on any of the following
grounds:

 The design is not a new or original design.

 It has been previously registered in India.
 The design is not registrable under the act.
 It has been published in India or any other country before the date of
registration.
 The design is not a design as defined u/s 2(d) of the Designs Act, 2000.

An appeal shall lie to the High court against any order of the Controller, and the
Controller may at any time refer any such petition to the High Court, and the High
Court shall decide any petition so referred.

Rules for Cancellation

i. If the petition for the cancellation of the registration of a design is made by

person who is not the registered proprietor, a copy of the petition along
with the statement shall be transmitted by the Controller to the registered
proprietor.
 ii. If the registered proprietor intends to oppose the application, he shall
within a time to be specified by the Controller, leave at the office a counter
statement setting out the grounds on which he intends to oppose the
application and shall, within the same time, deliver to the applicant a copy
of the counter-statement.
iii. The applicant may, after delivery to him of the copy of the registered
proprietor’s counterstatement, leave at the office, evidence by way of
affidavits in support of his case and shall also deliver to the registered
proprietor a copy thereof.
iv. The registered proprietor may, after delivery to him of the applicant’s
evidence, leave at the office, evidence by way of affidavits in support of
his case and shall also deliver to the applicant a copy thereof.
v. The applicant may, after delivery to him of a copy of the registered
proprietor’s evidence, leave at the office, evidence in reply by way of
affidavits and shall also deliver to the registered proprietor a copy of such
evidence.
vi. No further statement of evidence shall be left by either party except if
demanded by the Controller.
vii. Where a statement or evidence is in a language other than English, then an
attested translation thereof in English shall be furnished in duplicate.
viii. The time allowed for filling the counter-statement or for leaving evidence
shall ordinarily be 1 month which may be extended only by a special order
of the Controller. But the extension so granted shall in no case exceed 3
months in aggregate.
ix. On completion of the filing of the statement and the evidences, the
Controller shall appoint a hearing of the petition for cancellation and shall
give the parties not less than ten days’ notice of such hearing.
x. If either party desires to be heard, he shall give to the Controller a notice
of his intention to attend the hearing.
xi. If, at the hearing, either party intends to refer to any publication, he shall
give to the Controller and to the other party not less than five days’ notice
of such intention, together with the details of the publication to which he
intends to refer.
xii. After hearing the parties, the Controller shall decide on the petition and the
opposition, if any, and notify his decision to the parties.

Case: Reckitt Benckiser India Ltd. vs. Wyeth Ltd., 2013: The court stated that
registration of a design in abroad per se cannot be a ground for cancellation or
rejection of a design in India.

But, once the foreign registered design becomes registered in India within six
months of the date of application made in the convention country abroad, it
becomes a design registered in India with an earlier priority date. Therefore, this
registration can be a ground for cancellation of a design subsequently registered
in India.

Case: Haji Sayed Sikander Shah vs. Mian Rahim Baksh: The court ordered a
registered design to be cancelled on the ground that a design which was already
well-known did not become new or original by being applied to the same article
by a new method. The court observed that to the eye, which was to be the sole
judge in those cases, there was no difference in shape, configuration, pattern or
ornament, although there was a different mode or principle of construction.

Case: Joginder Singh vs. Tobu Enterprises P. Ltd., 1989: Delhi High Court
ordered the cancellation of two designs on the ground that prior to the date of
their registration the registered proprietor of same design had manufactured and
marketed a bicycle of a similar design and that, therefore the design had been
previously published in India and was not a new or original design.

PIRACY OF REGISTERED DESIGN [SECTION 22]

If the copyright in a design has been infringed, it is known as “Piracy of Design”.
In other words, if there is unauthorized use of designs or duplication of such
designs, which is then, being used for commercial purpose, during the existence
of such copyright, without having consent or license from the registered
proprietor of the design, it shall be considered as an unlawful act (design piracy).

Section 22(1) of the Act, provides that during the existence of copyright in the
design, it shall not be lawful for any person to do the following acts without the
licence or written consent of the registered proprietor:

 If an article whose design is registered is used for sale by fraudulent or

obvious imitation of that design.
 If an article whose design is registered is imported for sale without the
consent of the proprietor of the registered design.
 If an article whose design is registered or such registered design is been
published or exposed for sale having prior knowledge that it has obvious
or fraudulent imitation.

Case: Ampro Food Products vs. Ashoka Biscuit Works, 1973: The appellants
and the respondents manufacture biscuits. The appellant’s biscuits have AF
embossed on them while the respondents have AB embossed on them. The
appellants alleged that the respondents have copied their design and thus they
have committed infringement of the design. The respondents contend that the act
cannot be an act of piracy since they have already applied for the registration of
the mark as a trademark. The court held that a design is different from a
trademark. A design is necessarily a part of the product but a trademark is not.
Embossing on a biscuit is an integral part of the biscuit and hence it is a design
and not a trademark. This is because a trademark need not necessarily be present
on the product but a design has to be an inherent part of it. So, the respondents
could not legally use AB on their biscuits.
Case: Bharat glass tube Limited vs. Gopal glass Works Ltd.: The respondent had
registered their design for diamond-shaped glass sheets company in collaboration
with German company and had a certificate of the same as well. The appellant
started using the design for their marketing which resulted in an infringement suit
filed by the respondents. The appellants contended that the respondent’s Design
were not Novel as the German company has already been using it since 1992 and
it was already published in UK Patent Office and it has lost its originality.
Rejecting all such of the arguments of the appellants the High Court on its appeal
restored the Designs to the respondents which was later on upheld by the Supreme
Court of India as well.

Case: Cello Household Products vs. Modware India: A case was filed by Cello
against Modware India stating that the bottle manufactured by the defendant
under the name KUDOZ was deceptively similar to the plaintiff's bottles that
were being manufactured under the name Puro. Bottles under the PURO series
were produced with distinctive and unique features, it had an oval shaped curve
with a flip cap that was divided into two parts. These bottles were tinted with the
combination of two colours. It was observed that the defendants were using a
similar get up and colour combination. The Court held that "The products and
designs must be seen as a whole, from the perspective of the common consumer.
The test is of visual appeal and the task is to see if the essentials of that which
makes it visually appealing have been substantially but not necessarily exactly
copied. Hence, considering the facts, the Bombay HC granted an injunction and
damages in favour of the plaintiff.

Case: Troika Pharmaceuticals vs. Pro Laboratories: The Gujarat High Court
held in favour of the plaintiffs wherein they were the registered proprietors to the
design that was being used to manufacture a 'D' shaped tablet. The defendants
started manufacturing similar tablets under the defence that it was a common
design and did not deserve any protection. The Court ruled that even if the 'D'
shaped design was not novel, the usage of the same in tablets was new and
original and hence was entitled to protection under the Designs Act.

Case: M/S. Whirlpool of India Ltd. vs. M/S Videocon Industries Ltd.: In this
case the Whirlpool would have got two designs registered. Videocon also got a
design registered which covers the same features of shapes and configuration and
that was evident at its first look to be replica of Whirlpool. The Videocon
contended that it has already got the design registered and therefore it is not liable
for the infringement or passing off. The Court rejected the contention of the
Videocon and held that there are similarities between the plaintiff and the
defendant and therefore Videocon was held liable for the infringement and for
the passing of the plaintiff design.

Case: Good Earth vs. Krishna Mehta: In this case, the company Good Earth sued
India Circus for Passing Off of some of the Designs of the company Good Earth.
The company India Circus took a defence that the designs used are not new or
novel. The court decided in the case that even the Designs are not new but they
are applied to a new article and therefore, should be protected. The court
interpreted the term “original,” which includes Designs that are old but are unique
in its applications.

The court also held that if both the Designs are registered in a case, then the courts
should take a different approach by giving priority to the time period of usage and
similarity of appeal, which would be the suitable method to examine Design
Infringement.

Fraudulent or obvious imitation

To constitute piracy of registered design, Fraudulent or obvious imitation has to

be present for infringement of copyright in the design.
In a fraudulent imitation, the intention is to deceive the person and violate his
rights knowingly by imitating his registered design. It may be less apparent than
obvious imitation.

On the other hand, an obvious imitation means imitating a registered design by

slightly adding modifications to it. Thus, this is to say that such imitation must
constitute the exact duplication of the registered design to constitute piracy.

Case: Gopal Glass Works Ltd. vs. IAG Company Ltd. & Ors.: Plaintiff had
registered his design named ‘Diamond Square’ prior to registration of ‘Kohinoor’
by the defendant. When contentions were raised, the defendant had claimed that
its design was not a fraudulent imitation of the plaintiff’s design. Both designs
were found to be similar after an examination. It was held that the plaintiff is
entitled to interim protection from piracy and an interim injunction was granted.

REMEDIES AGAINST THE PIRACY OF REGISTERED DESIGNS

Section 22(2) of the Act provides the remedies against piracy of registered
designs. It is crucial to note that the Designs Act, 2000 only provides civil remedy
for the infringement of copyright in a design. There is no provision for criminal
proceedings against the piracy of registered designs.

Mainly, 2 alternative remedies are available against the piracy of registered

design. The proprietor has to choose one of the following remedies:

 Person involved in piracy is liable to pay the registered proprietor of the

design a sum not exceeding Rs 25,000 for every contravention recoverable
as a contract debt. However, the total sum recoverable in respect of one
design should not exceed Rs. 50,000.
 Proprietor may bring a suit for the recovery of damages for any such
contravention, and for an injunction against the repetition thereof. If he
succeeds, he will be entitled to recover such damages as may be awarded
 by the court and restrain the defendant in terms of the injunction granted
by the court.

No suit or any other proceedings for the relief shall be instituted in any court
below the court of District Judge.

Section 22(3) allows the defendant in an infringement suit, to plead his defence
grounds which are available u/s 19, for cancellation of registered design.

Section 22(4): However, where the defendant avails any of the grounds on which
registration of a design may be cancelled u/s 19, the Court shall transfer the suit
or such other proceeding to the High Court for decision.

Section 22(5): When the court makes the decree in a suit u/s 22(2), it shall send a
copy of the decree to the Controller, who shall make an entry in the register of
designs.

The remedies available to the plaintiff are explained below:

1. DAMAGES

The plaintiff in an infringement suit is entitled to recover damages where he

establishes infringement. The measure of damages is the loss caused to the
plaintiff by the defendant's wrongful conduct.

A practical method of assessing damages is to assess them on the basis of a

reasonable royalty upon all infringing articles made and sold by the defendant.
Alternatively, damages may be assessed to compensate plaintiff for the loss of
sales suffered by him on account of the sale of the infringing articles by the
defendant, or other damage caused to him thereby, e.g., reduction in price.

However, the plaintiff cannot recover damages or penalty for infringement if he

has failed to mark his articles in the prescribed manner denoting that the design
was registered, unless he shows that he took all steps to ensure the marking of the
article or that the defendant knew or had received notice of the existence of the
copyright at or before the time the infringement took place.

Damages may also be awarded in the case of innocent infringement i.e., where
the defendant did not know that the design applied was one in which copyright
subsisted, or that the article imported was an infringing article.

Case: Tobu Enterprises vs. Joginder Metal Works: Delhi HC held that a person
complaining infringement of his design can certainly ask for accounts from the
defendant to show the profits earned by the defendant by unlawfully using the
design of the registered proprietor. The plaintiff might say that the profit earned
by the defendant would be the loss sustained by him which he could claim as
damages. It is not disputed that damages can be claimed. The dispute is at best as
to the method of assessing the damages.

2. ACCOUNT OF PROFITS

The court can direct the defendants to maintain accounts of profits during the
period of the pendency of infringement and these accounts can be used for
assessing the damages.

3. INJUNCTION

The injunction is of two kinds:

 Temporary/interlocutory Injunction

The plaintiff may seek interlocutory injunction under Rules 1 & 2 of Order 39
CPC, during the pendency of infringement suit. Provided that the plaintiff must
make out a prima facie case and show that the balance of convenience lies in his
favour.

Case: Niki Tasha India Pvt Ltd. vs. Faridabad Gas Gadgets Pvt Ltd.: It was held
that the court would not grant an interlocutory injunction unless satisfied that
there is a real probability of the plaintiff succeeding on the trial of the suit.
Case: Rotomac Pens Ltd. vs. Milap Chand & Co.: Interlocutory injunction was
granted in this case. Court held that where the damages were not the adequate
remedy and to direct the respondent only to furnish accounts to the appellant of
its sales was no protection against the infringement of copyright in the design at
all.

 Permanent injunction

If the plaintiff succeeds at the trial in establishing infringement of his registered

design, he will normally be entitled to a permanent injunction to restrain future
infringement because there is always a possibility of the recurrence of such
infringement. The object of granting injunction is to prevent such recurrence and
restore the status quo.

In exceptional cases, however, if it can be definitely shown that there is no such

likelihood of any recurrence, then an injunction may be refused. On the other
hand, even if there is no infringement, the court may grant an injunction if it is
shown that the defendant had the intention of infringing or had threatened to
infringe.

4. DELIVERY UP OR DESTRUCTION

Case: Calico Printers Association Ltd. vs. Ahmed Abdul Karim: In this case, the
court held that in the matter of industrial design infringement, the order for
delivery up of the infringed articles could be made by the court as a reasonable
or equitable relief to the registered design’s proprietor, even though the same was
not expressly provided in the Act.

OVERLAPPING B/W DESIGNS, COPYRIGHTS & TRADEMARK

Intellectual property rights are the rights given to a person to enjoy monetary
benefits and get exclusive recognition for a unique creation of their mind. The
main objective of IP rights is to establish a balanced system between the interests
of an innovator and general public. The types of intellectual property consist of
design, copyright, trademark, geographical indications, patents and trade secrets.

The issue of overlapping begins when an innovator who holds an IP right tries to
seek protection under more than one concept. Like, Shapes and patterns are
protected under Designs Act 2000, Trademark Act ,1999 & Copyright Act, 1957.

Although these Laws were drafted to fulfil different purposes, but their practical
applications show frequent overlaps, like computer software have been given
protection under the design act but in certain instances can acquire protection
under trademark or copyright.

When issues arise due to overlapping of various types of Intellectual Property

Rights, the courts have majorly followed two approaches:

 Either the courts should let the parties enforce such rights and benefit from
such overlap or
 it should limit the scope by forcing them to demand protection under just
one of the doctrines.

The benefit of the latter option results in clear demarcation and better
implementation of the rights as the scope and limitation of every right is different.

Overlap in many cases is unavoidable therefore, a need arises to maintain a

harmonious coexistence between these rights.

Overlap between COPYRIGHT AND DESIGN

Section 15 of the Copyright Act,1957 provides clarification on the issue of design

and copyright overlap. The section clarifies that copyright is not going to subsist
in a design which has been registered under the Designs Act, 2000. Therefore, if
a design is registered under the designs act, then the innovator has to let go of his
rights provided in Copyright Act.
And if an issue arises, where the design has not been registered under the design
Act, but the article is reproduced 50 times in an industrial process, then in that
case, the copyright in the article’s design comes to an end.

Case: Ritika Pvt Ltd. vs. Biba Apparels Pvt Ltd.: The applicability of this section
was seen in this case, where the plaintiff had not acquired registration for her
sketches under the designs act and the same were reproduced more than 50 times.
The court denied any protection for her sketches against the infringement by the
defendant under both design and copyright act.

Case: Microfibres Inc. vs. Girdhar & Co & Anr.: It was held that if there is an
artistic painting and the design created out of it is not registered and reproduced
50 times, only the copyright of the design will be waived and the copyright in the
original work i.e., the painting would continue to subsist. The intention of the
legislature was inferred as giving more importance to the original work of the
author and fewer merits to an industrially produced design.

Case: Rajesh Masrani vs. Tahiliani Design Pvt Ltd.: Delhi HC addressed an
issue raised due to overlapping between copyright and design protection where
the plaintiff submitted that the drawings made for the purpose of developing
garments are his artistic works protected under section 2(c)(i) of the Copyright
Act and the defendant argued that garments or drawings cannot be considered as
artistic works and should seek registration under Section 15(2) of the Copyright
Act. The court granted protection to plaintiff against the infringing activity
merely because the copies were not reproduced 50 times.

Overlap between DESIGN AND TRADEMARK

A Trademark is a mark used in business which acts as a source identifier and

distinguishes goods/services of one manufacturer from that of the other. Whereas
a Design is any shape, configuration, pattern, colour combination, which is
applied to an article to enhance the aesthetic value of that article.
The main distinction between the two lies in the purpose that they solve. The
purpose fulfilled by a Trademark is that of ‘identifying a source’, while the
purpose of a design is to enhance the visual appeal of an article and make it more
aesthetically valuable.

The overlap between the two is created by their respective definitions under the
law. And, it is the latter part of the definition of Trademarks which overlaps with
the definition of Design.

Section 2(1) (zb) of Trademark Act - “Trademark means a mark capable of being
represented graphically and which is capable of distinguishing the goods or
services of one person from those of others and may include shape of goods, their
packaging and combination of colours;” -

Section 2(1)(d) of Design Act - “Design means only the features of shape,
configuration, pattern, ornament or composition of lines or colours applied to any
article whether in 2D or 3D or in both….”

Can Trade Marks be registered as Designs and vice-versa?

This question has been clearly answered by Section 2(1)(d) of the Designs Act,
which categorically excludes Trademarks from the ambit of a design. Thus,
anything which is a Trademark u/s 2(1) (zb), cannot be registered as a Design.

The situation regarding trademarks being registered as designs are very clear, but
the vice versa situation of Designs being registered as Trademarks has not been
clarified by the statues and has developed overtime by Judicial interpretations.

1. Acquiring common law rights

Where any design capable of being registered under the Designs Act, as well as
under the Trade marks Act, has been registered as a design, the statutory
protection over the same will lapse after a period of maximum 15 years.
However, there may be situations wherein an intellectual property initially
registered as a design, has over the years acquired a secondary meaning and has
started acting as a source identifier of the goods. For example, the unique design
of the Coca Cola bottle has now become its Trademark and people associate the
bottle directly with the brand Coca Cola. In this situation, apart from just
protecting the design, it is also important to protect the same as a Trade Mark.

Generally, For registered designs, the common law remedy for passing off is not
available. However, the Delhi High Court in the case of Mohan Lal and Ors. vs.
Sona Paint & Hardware and Ors. has held that where a Design starts functioning
as a Trade Mark, then the common law remedy of ‘Passing off’ is available,
provided the mark has attained secondary meaning. This action of passing off is
maintainable during the subsistence of a design registration as well as post its
expiry. A passing off action and an action for Design infringement can be taken
in the same suit.

2. Acquiring Statutory Rights

The acquisition of common law rights has been adequately clarified by the court
in Mohan Lal’s case, however the question of whether a Trademark registration
could be obtained for a design, simultaneously while a Design registration exists
is unclear.

Contrary to the Designs act which does not allow trademarks to be registered as
designs, but under the Trade Marks Act, there is no bar to filing a trademark
application for any design which has been registered under the Designs Act.

However, although the filing of an application is not barred, there are high
chances of it getting refused or challenged on the grounds of an existing Design
registration on the same. This is so because a person cannot be allowed to claim
the benefits of two different rights at the same time.
Thus, during the subsistence of a Design registration, a Trade mark registration
cannot be obtained, however it can be obtained post the expiry of the Design
registration - in the event of the Design acquiring a secondary meaning of acting
as a source identifier.

Overlap between TRADEMARK AND COPYRIGHT

It's common for trademark and copyright to overlap. Such overlaps are generally
seen on CDs, novels, websites etc. On these products, trademark protects the
brand of the company or publisher and copyright protects the text, music and
other original content. Such overlaps are usually seen on the same product.

Like, the logo of the product amounts to overlap, because if the logo is used for
trade purposes it can be used as trademark but can also amount to copyright if its
artistic enough.

In general, the conflict arises in the areas of logos, artistic signs, emblems, short
sentences, use of fictional characters as commercial signs etc. Wherever such
overlap occurs the people try to get a cumulative benefit under both the Copyright
and the Trademark Act.

For example, a T-shirt with a print on it could be covered by trademark and

copyright at the same time. Trademark protects the brand or logo on the t-shirt.
The print is protected by copyright.

Conclusion: So, in a situation of such overlaps, the court can either permit the
parties to enjoy protection under two Act or more Acts or can either restrict the
parties to acquire protection only under one Act. And, in the cases of infringement
the court applies either the interpretation of the statues or in absence of legislation
the court often uses its own conscience to pass the judgement. So, it is the need
of the hour that the legislature comes with better laws that govern the issues
related to overlapping strictly and unambiguously.