INTELLECTUAL PROPERTY RIGHTS

UNIT I: INTORDUCTION
Meaning Intellectual Property Rights:
Intellectual Property Rights (IPR) are legal rights given to people or organizations over their mental
creations, such as inventions, books, music, software, brand names, designs, and secret business
information. These rights allow the creator to control how others use their work for a certain period
and to get economic and moral benefits from it.

Meaning of Intellectual Property

Intellectual Property (IP) means creations of the mind—things you cannot touch but which have
value, like ideas expressed in a particular form (a novel, a machine, a logo, a design, a formula).
Unlike physical property, IP is intangible, but the law treats it as a kind of “property” because it can
be owned, licensed, sold, or inherited.

Main Types of Intellectual Property Rights

The major types of IPR usually studied in law are:
• Patents: Protect new inventions that are novel, involve an inventive step, and are capable of
industrial application, usually for 20 years.
• Copyright: Protects original literary, artistic, musical, dramatic works, films, and computer
programs, giving rights like reproduction, adaptation, and public communication.
• Trademarks: Protect signs, logos, brand names, shapes, or combinations that distinguish one
trader’s goods or services from another’s.
• Industrial Designs: Protect the aesthetic or ornamental features of a product, such as shape,
pattern, or composition of lines or colors.
• Geographical Indications (GI): Identify goods as originating from a specific place where a
given quality, reputation, or characteristic is essentially linked to that origin (for example,
Darjeeling tea).
• Trade Secrets / Confidential Information: Protect commercially valuable secret information,
such as formulas, processes, customer lists, and strategies.
• Other recognized forms (in India): Plant variety protection and semiconductor integrated
circuit layout designs are also treated as IP.

Objectives and Importance of IPR

The law of IPR serves both private and public interests:
• Encourage innovation and creativity: By granting exclusive rights, the law motivates
individuals and firms to invest time and money in research, art, and technology.
• Reward and protect creators: It ensures that authors, inventors, and businesses are recognized
and can earn from their work, preventing free-riding and piracy.
• Promote economic growth and fair competition: Strong IPR systems help build new
industries, attract investment, and curb counterfeiting and passing off.
• Facilitate technology transfer and global trade: International IP standards under treaties and
organizations like WIPO and TRIPS make cross-border licensing and trade more predictable
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 organizations like WIPO and TRIPS make cross-border licensing and trade more predictable
and secure.
• Preserve culture and traditional knowledge: IPR tools increasingly aim to protect cultural
expressions, folklore, and traditional practices from misappropriation.

Key Features of IPR

IPR have some common legal characteristics across categories:
• Territorial: Rights are generally valid only in the country where they are granted, unless
covered by specific international arrangements.
• Time-bound: Most rights (for example, patents, designs) exist for a fixed duration, after which
the work falls into the public domain; some, like trademarks, can be renewed indefinitely.
• Exclusive but limited monopoly: The owner gets a legal monopoly, but subject to exceptions
and limitations such as fair use, compulsory licences, and public interest.
• Transferable and licensable: IP can be assigned, licensed, mortgaged, or franchised like other
forms of property, creating valuable commercial assets.

Concept and Theories

Intellectual Property Rights (IPR) are exclusive legal rights granted to individuals or organizations
over the fruits of their mental labor—creations like inventions, artistic works, brands, and designs.
These rights give the owner a temporary monopoly to use, license, or exclude others from exploiting
their creation, balancing individual reward with public benefit. The justification for these rights lies in
theories that explain why society should grant such monopolies.

Major Theories Justifying IPR

1. Labour Theory (John Locke's Natural Rights Theory)
Core Idea: "You work hard to create something, so it belongs to you"
• Origin: John Locke said when you mix your labor with raw materials (like an idea floating
around), the result is yours. Think of a writer spending years on a novel—shouldn't they own it?
• Logic:
1. God/Nature gave us our body and talents.
2. When we mix our labor with unowned resources (ideas in the "public domain"), we create
something new.
3. This new creation belongs to us because we invested our labor.
• Example: An inventor spends years in a lab developing a new drug. The formula was "common
knowledge" before, but their sweat and effort transformed it into a valuable invention. They
deserve exclusive rights to it.
• Strength: Appeals to justice and fairness. "I worked hard, I should benefit."
• Limitation: Ideas are not "scarce" like land. Once shared, they can be copied infinitely at zero
cost. Unlimited rights could harm society.
Modern Application: Copyright law reflects this—authors get rights because they labored to write
the book.

2. Incentive Theory (Utilitarian / Economic Theory)

Core Idea: "Grant monopolies to encourage more innovation." (Protect creators so they'll keep
creating.)

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creating.)
• Origin: Based on utilitarianism (greatest good for greatest number) by thinkers like Jeremy
Bentham and economists like Adam Smith. ("Without protection, why spend millions on R&D
when copycats can steal it for free? Give temporary monopoly → more inventions → everyone
wins.")
• Logic:
1. Creating IP is expensive (R&D costs millions).
2. Without protection, copycats would steal the idea for free (zero R&D cost).
3. No one would invest in innovation if they can't recover costs + profit.
4. Temporary monopoly (patent/copyright) gives incentive to create → More innovation →
Society benefits overall.
• Example: Pharmaceutical companies spend $2.6 billion developing a new drug. Patent gives 20
years exclusivity to recover costs. Without it, they'd stop inventing new medicines.
• Strength: Practical and economic. Explains why governments grant IPR.
• Limitation: Focuses only on economics, ignores moral rights of creators.
Modern Application: Patent laws worldwide (TRIPS Agreement) are based on this—20-year term is
calculated to provide just enough incentive without excessive monopoly.

3. Utility Theory (Social/Public Interest Theory)

Core Idea: "IP rights serve the larger public good, not just private profit." (IP rights help society
overall, not just rich creators.)
• Origin: Developed by legal scholars and international bodies like (World Intellectual
Property Organization) WIPO. Balances individual rights with societal needs.

• Logic:
1. IP rights promote knowledge dissemination (creators must disclose inventions for
patent).
2. Temporary monopoly → Technology transfer → Public gets improved products.
3. Prevents free-riding while ensuring public domain after expiry.
4. Exceptions like compulsory licensing ensure access during emergencies (public health).
• Key Features:
Aspect Individual Benefits Public Benefits
Patents Inventor gets profit Invention disclosed, others improve it
Copyrights Author gets royalties Culture/literature preserved
Trademark Brand protection Consumers avoid confusion

• Example: During COVID-19, India issued compulsory licenses for generic drugs. Utility
theory justifies this—public health > private monopoly.
• Strength: Holistic. Balances creator incentives with public access.
• Limitation: Can be abused by governments issuing too many compulsory licenses.
Modern Application: TRIPS Agreement (WTO) embodies this—flexibilities for developing
countries.

Comparison of Theories
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Comparison of Theories

Theory Focus Key Thinker Strength Weakness

Labour Moral Right(What I create is John Locke Fairness Ignores social cost of
mine) monopoly
Incentive Economic Benefit(More Bentham, Practical Too profit-focused
innovation) Economists
Utility Social Balance(Public good) WIPO, Modern Balanced Government intervention
scholars risks

Why Multiple Theories Exist

No single theory is perfect. Labour justifies moral ownership, Incentive explains economic rationale,
and Utility ensures social balance. Modern IPR laws (Patents Act 1970, Copyright Act 1957)
combine all three:
• Labour: Moral rights (author's right to be identified).
• Incentive: Fixed terms (20 years patent).
• Utility: Compulsory licensing, fair use exceptions.

Types Of Intellectual Property Rights

1. Copyright:
Copyright protects original creative works like books, music, films, software, and other artistic works.
It gives creators the exclusive right to reproduce, distribute, perform, or adapt their works. This means
only the author or copyright owner can authorize others to use their creation.

It starts automatically as soon as a work is created and fixed in a tangible form—there’s usually no
need to register it formally. The protection usually lasts for the creator’s lifetime plus an additional 50
to 70 years (60 years in India), depending on the country. This long duration allows both creators and
their heirs to benefit financially from the work for many years.

Section 14 of the Copyright Act, 1957, gives copyright holders a set of exclusive rights to protect
their creative works. These rights include:
• The right to reproduce the work in any material form, which includes making digital copies or
storing the work electronically.
• The right to distribute copies of the work to the public.
• The right to perform the work publicly, such as in concerts, plays, or readings.
• The right to communicate the work to the public, for example, broadcasting or transmitting it
over the internet.
• The right to make adaptations or modifications of the work, like translations or film adaptations.
These exclusive rights allow creators to control how their work is used and ensure they can benefit
from their creativity and effort. This legal protection helps prevent unauthorized copying, distribution,
or modification of their works.

However, copyright law also includes exceptions like “fair use” or “fair dealing” which allow limited

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However, copyright law also includes exceptions like “fair use” or “fair dealing” which allow limited
use of copyrighted material without permission for purposes including criticism, teaching, research,
and news reporting. These exceptions balance the creator’s rights with public interests like sharing
knowledge and encouraging cultural development

2. Trademark:
A trademark is a unique sign, such as a word, symbol, logo, or phrase, that identifies and
distinguishes goods or services of one business from those of others. Trademarks help consumers
recognize brands and associate them with quality and reputation.
Must be:
• For strong legal protection, a trademark must be distinctive, meaning it should not be generic or
merely descriptive of the product

Registration Benefits:
• Easier to sue infringers
• National protection
• Presumption of ownership
While trademarks can be used without registration, registering a trademark provides stronger legal
rights and easier enforcement against counterfeit or confusingly similar marks.

Trademark infringement happens when someone uses a mark so similar to another’s registered
trademark that consumers could be misled. Trademark owners have the right to stop such misuse to
protect their brand’s value and reputation.

3. Patent:
A patent gives an inventor exclusive rights over a new invention for a limited period, usually 20
years. It prevents others from making, using, or selling the invention without the inventor’s
permission. Patents encourage innovation by rewarding inventors for their efforts.

Patents apply to inventions that are new, involve an inventive step (non-obvious), and are useful or
industrially applicable.
Requirements (to get a patent):
1. Novel (new, never disclosed before)
2. Inventive step (not obvious to experts)
3. Industrial application (useful, makeable)

There are different kinds of patents:

1. utility patents (functional inventions like machines or processes),
2. design patents (new decorative designs of products)
3. plant patents (new plant varieties).

Patent rights arise only after a formal examination confirms the invention’s novelty. After patent
expiry, the invention enters the public domain, allowing further innovation and competition.

Example: New smartphone tech or life-saving drug formula.

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4. Geographical Indication (GI):
GI tags say: "This product's special qualities come from its specific place." Protects regional
specialties tied to climate, soil, or tradition. GIs help preserve the authenticity and uniqueness of
regional products, protecting both producers and consumers.

Key Features:
• Product must originate from that exact place
• Unique qualities/reputation linked to geography
• Prevents fake copies from elsewhere

For example, Darjeeling tea is valued because of the unique climate and soil of the Darjeeling region,
Banarasi Saree (specific weaving from Varanasi) and Champagne (only from Champagne region,
France

The GI prevents producers outside that region from using the name “Darjeeling.” It ensures that only
products genuinely originating from a given area can carry the GI label, which helps maintain
consumer trust and the product’s reputation.

GIs protect both the product’s uniqueness and the goodwill associated with its geographic origin,
discouraging misuse.

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 UNIT II: THE TRADE MARKS ACT, 1999

Meaning and concept of Trademark:

A trademark is a distinctive symbol, word, phrase, logo, or design that identifies and distinguishes the
goods or services of one business from those of others. It helps consumers recognize the origin of a
product or service and builds brand loyalty and confidence in quality. Trademarks protect a brand’s
identity and prevent others from using confusingly similar marks that could mislead customers.

According to the Trade Marks Act, 1999 in India: A trademark is any mark capable of being
represented graphically, which distinguishes the goods or services of one person from those of others.
A trademark may include words, logos, symbols, and other identifiers, aiming to protect the interests
of both businesses and consumers.

Types of Trademarks
1. Collective Trademark
This is a trademark used by members of a collective group or association to indicate
membership or a common origin. It identifies that the products or services come from members
who adhere to certain standards set by the group. For example, a collective trademark may be
used by a group of producers from a particular region or industry.

2. Associated Trademark
An associated trademark is a mark that is linked or connected to another trademark, usually
because the owner of the original mark also owns the associated mark. Often, associated
trademarks are used for related goods or services and help maintain brand consistency across
product lines.

3. Well-Known Trademark
A well-known trademark is a mark that has gained widespread recognition and reputation
among the public, extending protection beyond the specific goods or services it is registered for.
Well-known trademarks have strong legal protection against infringement even if an infringing
use is in an unrelated category, owing to their established fame and goodwill (like “Coca-Cola”
or “Apple”).

Non-Traditional Trademarks
Non-traditional trademarks are unconventional trademarks that go beyond the usual words, logos, and
symbols. They include unique sensory elements or special features that identify a brand’s goods or
services but are perceived by senses other than just sight.

Types of Non-Traditional Trademarks

1. Colour Mark
A colour or combination of colours used distinctively to identify a brand or product. For
example, the specific magenta used by T-Mobile or the unique shade of purple historically
associated with Cadbury chocolate. Colour marks help consumers instantly recognize products
based on color alone
.
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 .
2. Sound Mark
These are unique sounds or jingles that help identify a brand. Examples include the NBC
chimes or the Intel jingle. Sound marks act as audio signatures for brands.

3. Smell Mark (Olfactory Mark)

A smell or fragrance that is distinctive enough to serve as a mark to identify the brand. An
example is the bubble-gum scent used in shoes by a Brazilian manufacturer. These are rare and
require special proof of distinctiveness.

4. Motion Mark
This type protects moving images or animations. For example, the opening sequence of a TV
channel logo or the motion of a door’s opening by Lamborghini (the upward-opening car doors)
can be trademarked as motion marks.

Note: In India, non-traditional marks are registrable under the Trademarks Act, 1999 if they serve as
source identifiers. Courts require proof of secondary meaning (public association with the brand).
Famous examples include Yahoo!'s yodel sound mark.

Registration of trademark and removal of trademark

In India, registration under the Trade Marks Act, 1999 generally involves:
1. Searching to ensure no conflicting mark exists.
2. Filing an application with details of the mark, proprietor and goods/services (Nice
classification).
3. Examination by the Registrar on absolute and relative grounds and issuance of examination
report.
4. Response to objections and possible hearing.
5. Advertisement in the Trade Marks Journal inviting oppositions.
6. If no opposition or opposition fails, the mark is entered in the register and a registration
certificate is issued, conferring statutory exclusive rights subject to renewal

Trademark Refusal Grounds & Removal

1. Absolute Grounds of Refusal (Section 9, Trade Marks Act, 1999)
These are inherent defects in the mark itself. Even if no one else is using it, the Registrar can refuse
registration.
Key Grounds:
• Lack of Distinctiveness: Mark is generic or descriptive of the goods/services (e.g., "MILK" for
dairy products).
• Customary in Trade : Mark is commonly used in the trade (e.g., "SUPER" for detergents).
• Deceptive/Misleading : Mark misleads public about quality/origin (e.g., "WOOL" on synthetic
fabric).
• Prohibited/Scandalous : Immoral, obscene, or against law/public policy.
• Shapes: 3D shapes that are functional or dictated by nature (S.9(3)).
Exception: Marks can overcome absolute grounds with acquired distinctiveness (long use +
reputation).

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2. Relative Grounds of Refusal (Section 11)
These arise due to conflict with existing trademarks. Registrar checks for similarity with earlier
marks.
Key Grounds:
• Identical/Similar Marks (S.11(1)): Identical mark for identical goods OR similar mark for
identical/similar goods likely to confuse.
• Well-Known Trademarks (S.11(2)): Protection extends even to dissimilar goods if
confusion/reputation damage likely.
• Earlier Rights: Passing off, copyright, registered designs, or personality rights.

3. Removal of Registration on Grounds of Non-Use (Section 47)

Rectification on Non-Use: Any person can apply to cancel/remove a registered mark if not used for 5
continuous years immediately before application.

Key Points:
Aspect Details
Time Period 5 years continuous non-use

Who Can Apply Any aggrieved person (competitor, applicant refused due to this
mark)
Burden of Proof On registered proprietor to prove use

Exceptions Import restrictions, govt regulations, legitimate reasons

Procedure File Rectification Application → Hearing → Order

Example: If "XYZ" brand is registered but never used for 5+ years, a competitor can seek its removal
to register their own similar mark.
Purpose: Prevents "deadwood" marks squatting on the register, blocking legitimate users.

Trademark Infringement & Passing OFF Actions.

Trademark infringement occurs when a person or business uses a registered trademark or a mark
confusingly similar to it without the permission of the registered owner, in relation to identical or
similar goods/services. This unauthorized use can mislead consumers into believing that the
infringer’s goods or services are associated with the trademark owner.

Legal Framework in India:

• Governed by Section 29 of the Trade Marks Act, 1999.
• The owner of a registered trademark has the exclusive right to use it.
• Infringement can lead to civil and criminal actions.
• Remedies for infringement include injunctions to stop further use, monetary damages for losses

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 • Remedies for infringement include injunctions to stop further use, monetary damages for losses
suffered, destruction or confiscation of infringing goods, and in severe cases, criminal
penalties—including imprisonment (minimum 6 months up to 3 years) and fines (up to
₹2,00,000).
• Courts can also order costs to be paid by the infringer.
• To succeed, the owner must prove ownership of the trademark and that the infringing use is
likely to cause confusion or damage.

Procedure:
• A cease and desist letter is often sent first.
• If unresolved, the owner files a lawsuit in District or High Court with jurisdiction over the
matter.
• Temporary or permanent injunctions may be sought.
• The court examines evidence, hears both parties, and decides on remedies.

Passing Off
Passing off is an action used to protect unregistered trademarks or brand goodwill from
misrepresentation. It prevents a trader from presenting their goods or services as those of another
trader by copying names, signs, get-up, or other distinctive identifiers that can confuse the public.
Key Features:
• Common law action based on the tort of unfair competition.
• The plaintiff must prove:
○ They have goodwill and reputation in the mark or get-up.
○ There is a misrepresentation by the defendant leading to public confusion.
○ The plaintiff suffers or is likely to suffer damage due to this misrepresentation.

Differences Between Passing Off and Infringement:

• Infringement involves registered trademarks with statutory protection.
• Passing off protects unregistered marks and goodwill through common law.

Legal Actions & Remedies

1. Civil Remedies (Available for Both)
○ Injunction: Court order to stop infringing use immediately (temporary/permanent).
○ Damages/Profits: Compensation for losses or defendant's profits.
○ Destruction: Of infringing goods/packaging.
○ Legal Costs: Recovery of court fees/attorney fees.
○ File Suit: District Court/High Court (Section 134).
2. Criminal Remedies (Section 103-104)
○ Cognizable Offense: Police can arrest without warrant.
○ Punishment: first time offender : 6 months - 3 years imprisonment + ₹50,000-₹2 lakh
fine. Subsequently the offender punished for 1-3 years imprisonment + ₹1-2 lakh fine
○ FIR: File with police + Magistrate complaint.

Both trademark infringement and passing off aim to protect businesses from unfair use of their marks
or reputation, ensuring consumers aren’t misled. Trademark infringement applies to registered marks
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or reputation, ensuring consumers aren’t misled. Trademark infringement applies to registered marks
with statutory remedies, while passing off protects unregistered marks relying on goodwill and public
recognition. In India, creators and brand owners have strong legal avenues to enforce their rights and
maintain their brand identity and reputation.

Unit III : The Copyright Act, 1957

What is Copyright?
Copyright is an intellectual property right that protects original works of authorship and gives the
creator (or copyright owner) the exclusive right to reproduce, distribute, display, perform, and create
derivative works based on the original work.
Copyright protects the expression of ideas in a tangible medium, not the ideas themselves. For
example, copyright protects a specific novel, song, film, or software code, but not the underlying plot
idea or concept.
Basic Features of Copyright
1. Protects Expression, Not Idea (Idea-Expression Dichotomy)
 The Rule: Copyright protects the specific, tangible form in which an idea is expressed (the
actual writing, the specific painting, the recorded song). It does not protect the abstract idea,
concept, fact, or principle behind the work.
 Example: You cannot copyright the idea of a detective solving a crime in London. You can
copyright the specific novel (the literary expression) detailing the plot, characters, and dialogue.
2. Requirements for Protection
A work must satisfy two primary requirements to be eligible for copyright:

Requireme Explanation
nt
A. The work must have originated from the author. It must not be copied from another
Originality source and must reflect the author's own skill, judgment, or effort (even if that
threshold is minimal).
B. Fixation The work must be fixed in a tangible medium of expression. It must be written down,
recorded, painted, saved as a file, etc., so that it can be perceived, reproduced, or
communicated.

3. Automatic Right
 No Formalities: Copyright protection is automatic the moment the work is created and fixed
in a tangible form.
 Registration: Registration with a Copyright Office (like in India) is not mandatory to acquire

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  Registration: Registration with a Copyright Office (like in India) is not mandatory to acquire
copyright, but it is highly recommended as it serves as prima facie evidence of ownership in
case of a legal dispute.
4. Limited Duration
 Not Perpetual: Unlike a trademark, copyright protection is not permanent. It lasts only for a
specific, statutorily defined period.
 Duration in India: For most works (Literary, Dramatic, Musical, and Artistic), the term is the
life of the author plus 60 years after their death. After this period, the work falls into the Public
Domain.
5. Bundle of Exclusive Rights (Economic Rights)
Copyright is often described as a "bundle of rights" (Section 14 of the Indian Act), which are
exclusive to the owner. These include the right to:
 Reproduce the work (make copies).
 Issue copies to the public (distribute).
 Perform the work in public.
 Communicate the work to the public (e.g., broadcasting, digital transmission).
 Make an Adaptation (e.g., turning a book into a film).
 Make a Translation.
6. Moral Rights (Author's Rights)
In addition to economic rights, copyright law protects the author's personal rights (Section 57 of the
Indian Act), which remain with the author even if the economic rights are transferred.
 Right of Paternity: The right to claim authorship of the work.
 Right of Integrity: The right to restrain or claim damages for any distortion, mutilation, or
modification of the work that is prejudicial to the author's honour or reputation.

UK: Sweat of the Brow Doctrine

This doctrine, historically dominant in the UK and common law jurisdictions like India before recent
shifts, sets a low threshold for originality.
 Definition: A work is considered "original" if the author has expended sufficient "sweat,
labor, skill, and capital" in its creation. The focus is on the effort put in, rather than the
presence of creative or intellectual novelty.
 Result: Simple compilations of facts (like a telephone directory or simple list) could be
protected, as the sheer effort of compiling the data was considered enough to merit a copyright
reward.
Case: University of London Press v. University of Tutorial Press [1916] 2 Ch. 601
 Facts: The plaintiff (ULP) was the assignee of the copyright in several university examination

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  Facts: The plaintiff (ULP) was the assignee of the copyright in several university examination
papers set by external examiners. The defendant (UTP) copied some of these papers and
published them.
 Holding/Principle: The Court (Peterson J.) held that the examination papers were "original
literary works". The work did not need to be an expression of an original idea or be expressed
in a novel or unique form. It only had to be shown that the work was not copied from another
source and was the product of the author's own labor, skill, and judgment in selecting,
compiling, and arranging the questions. This solidified the "Sweat of the Brow" standard in
UK copyright law.

US: Modicum of Creativity Doctrine

The US standard for originality explicitly rejects the older "Sweat of the Brow" doctrine and
establishes a higher threshold.
 Doctrine: Modicum of Creativity (Minimal Level of Creativity)
o This requires that a work possess at least some minimal degree of creativity.
o The work must be independently created by the author and possess a "spark" or
"minimal level of creative originality."
o Mere effort, labor, or expense (the "sweat of the brow") is not sufficient if the
resulting work is entirely devoid of creative choice or judgment.
Case: Feist Publications, Inc. v. Rural Telephone Service Co. 499 U.S. 340 (1991)
 Facts: Feist copied names and telephone numbers from Rural's white pages telephone directory.
Rural sued for copyright infringement.
 Holding/Principle: The U.S. Supreme Court ruled against Rural Telephone. It held that the
factual information in the white pages (names, towns, and telephone numbers) was arranged in
a purely alphabetical, non-creative, and self-evident manner.
 Significance: The Court established that facts are not copyrightable, and the simple,
mechanical effort of collecting them (Sweat of the Brow) does not make the resulting
compilation original. To be copyrightable, the arrangement, selection, or coordination of facts
must involve a "modicum of creativity." The alphabetical listing failed this test.
🇮🇳 India: Shift to Skill and Judgment (Post-2008)
While India initially followed the UK's "Sweat of the Brow," the Supreme Court introduced a more
stringent test, moving closer to the US standard without fully adopting the "Modicum of Creativity"
phrase.
 Doctrine: Skill and Judgment (and the Doctrine of Merger)
o The Indian Supreme Court rejected pure "Sweat of the Brow" and established that a
work must show the author's "skill and judgment" which must not be minimal or
trivial.
o This is often viewed as a middle path between the low UK standard and the high US
standard.
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 standard.
Case: Eastern Book Company v. D.B. Modak (2008) 1 SCC 1
 Facts: EBC published Indian Supreme Court judgments and claimed copyright in the edited
versions, including headnotes, footnotes, and the "uniform pagination" (the sequential page
numbering) of their law reports. D.B. Modak reproduced these judgments, including the
pagination and other elements, in their competing software.
 Holding/Principle:
1. The Court held that the headnotes and footnotes showed enough skill and judgment to be
original and copyrightable.
2. However, the simple pagination (the page numbers) was deemed a mechanical effort and not
original.
 Significance:
o This case formally rejected the "Sweat of the Brow" as the sole test in India.
o It adopted the "Skill and Judgment" test, meaning mere effort is insufficient; the
work must show non-trivial mental contribution.

Idea-Expression Dichotomy and Its Exceptions

1. Idea-Expression Dichotomy
This is the central axiom of copyright law.
 The Principle: Copyright law grants exclusive rights only to the expression (the tangible form,
words, design, or arrangement) of an idea, not the idea itself.
 Purpose: To strike a balance between rewarding the author for their creative effort (protecting
the expression) and promoting the free flow of knowledge and creativity (leaving the idea free
for everyone else to use and express differently).
 Simple Example:
o Idea (Unprotected): A poor boy falls in love with a rich girl on a doomed ship.
o Expression (Protected): The specific script, dialogue, characters, and scenes of the
film Titanic.
2. Exceptions (Limitations on Protection)
The next two doctrines act as exceptions or limitations to the Idea-Expression Dichotomy. They
apply when the line between the idea and its expression becomes blurred, preventing the author from
getting a monopoly over the underlying idea.

Doctrine of Merger
The reference to the "Doctrine of Merger" in your prompt relates to the reason why non-creative
works are denied protection:

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works are denied protection:
 Definition: This doctrine states that when an idea can only be expressed in one or a very
limited number of ways, the idea and the expression merge together.
 Result: In such cases, granting copyright to the expression would effectively grant a monopoly
over the underlying idea itself, which is prohibited. The Modak court used this principle to deny
protection to the mechanical arrangement of page numbers, as there's often no creative way to
number pages sequentially.
Simple Example:
o Idea: The rules of a simple children's board game.
o Expression: The words used to describe those rules.
o Application of Merger: Since the idea of the rules can only be described in a few
basic ways without changing the game itself, the idea and expression are said to
merge. Therefore, the specific wording of the rules is not copyrightable.

B. Scènes à Faire (Scenes which must be done)

This French term refers to elements that are standard, common, or indispensable to the treatment of
a particular topic or genre.
 The Principle: Copyright protection is denied to elements that are customary, essential, or
conventional to the setting or theme of a work.
 Reasoning: These elements are considered part of the unprotectable "idea" or raw material of
the genre, and forcing every creator to invent entirely new tropes for common subjects would
unduly burden creativity.
 Simple Example:
o Genre: A spy thriller movie.
o Scènes à Faire: Scenes involving a car chase, a secret meeting in a dimly lit bar, a
handsome spy with a high-tech gadget, or using a fake passport.
o Application: These elements are so common to the spy genre that they are deemed
unprotectable. An infringement claim must focus on the unique way these scenes
are executed (the specific creative expression), not their mere presence.

Authorship vs. Ownership of Copyright

1. Authorship: The Creator
The author is the individual who, through their skill and judgment, physically brings the work into
existence. Authorship is determined by the nature of the work (Section 2(d)):
 Literary/Dramatic Work: The writer/composer.
 Musical Work: The composer of the music.

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  Artistic Work (e.g., painting): The artist.
 Photograph: The photographer.
 Cinematograph Film / Sound Recording: The producer (who arranges for the creation and
recording).
 Computer-Generated Work: The person who causes the work to be created.
Crucial Point: Authorship is inalienable. Even if an author sells all their rights, they are still legally
the author and retain their Moral Rights.
2. Ownership: Who Controls the Rights (Section 17)
The general rule established by Section 17 is: The Author of a work shall be the first owner of the
copyright therein.
However, the majority of the section is dedicated to exceptions where the ownership shifts away from
the author based on the circumstances of creation. This is often referred to as the "Work for Hire"
concept in other jurisdictions.

Works in Which Copyright Subsists (Section 13)

A. Original Literary, Dramatic, Musical, and Artistic Works
These four categories are often referred to as "Author's Works," and copyright in them is generally
calculated based on the life of the author.
1. Literary Work
A very broad category that includes all works expressed in writing, print, or any other notation. It
requires originality in the selection, arrangement, or expression of words, figures, or symbols.
 Examples: Books, novels, poems, computer programs (source code and object code), tables,
compilations, articles, song lyrics (separate from the music).
2. Dramatic Work
Any piece for recitation, choreographic work, or entertainment in dumb show, the scenic arrangement
or acting form of which is fixed in writing or otherwise. It does not include a cinematograph film
itself.
 Examples: Stage plays, screenplays/scripts, choreography (dance steps fixed in writing or
notation), mimes.
3. Musical Work
A work consisting of music and includes any graphical notation of such work (like sheet music). It
does not include any words or actions intended to be sung, spoken, or performed with the music
(lyrics are protected separately as Literary Works).
 Examples: Melodies, musical compositions, scores, and instrumental arrangements.
4. Artistic Work
A painting, a sculpture, a drawing, an engraving, a photograph, and a work of architecture.

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A painting, a sculpture, a drawing, an engraving, a photograph, and a work of architecture.

B. Cinematograph Films
Any work of visual recording on any medium produced through a process from which a moving
image can be reproduced, and includes a sound recording incorporated into such visual recording.
 Examples: Feature films, documentaries, short films, music videos, and video content (like
original YouTube videos).
 Important Note (Section 13(4)): The copyright in the cinematograph film is separate from the
copyright in the underlying works (like the script, music, and song lyrics) that were used to
make the film.

C. Sound Recordings
Any recording of sounds, regardless of the medium on which such recording is made.
 Examples: The recorded version of a song (the master track), a recorded speech, a podcast, or
an audiobook.
 Important Note (The 'Dual Copyright' in Songs): A song has two main copyrights:
1. Musical/Literary Copyright: In the original composition (melody and lyrics).

2. Sound Recording Copyright: In the actual recording of the performance.

Statutory aspects of copyright law

The statutory aspects of copyright law are primarily defined by comprehensive national legislation,
such as the Copyright Act, 1957 (in India) and they establish the rules for protection, ownership,
rights, and enforcement.

Here are the key statutory aspects commonly found in copyright law:

Statutory Foundations and Definitions

• Governing Act: The national law (e.g., The Copyright Act) that is the primary legal source for
copyright protection.
• Subject Matter (What is Protected): The Act defines the categories of works eligible for
copyright. These typically include:
○ Literary works (books, software, articles).
○ Dramatic works (plays, screenplays).
○ Musical works (compositions, scores).
○ Artistic works (paintings, sculptures, photographs, architectural works).
○ Cinematograph Films and Sound Recordings.
• Originality: The work must meet a statutory requirement of being original, meaning it was
independently created and possesses a minimum degree of creativity.

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 independently created and possesses a minimum degree of creativity.

Rights of the Owner

Copyright statutes grant the owner a "bundle of exclusive rights," often separated into two types:
1. Economic Rights (Section 14 in the Indian Act): These are rights to commercially exploit the
work, including the exclusive right to:
○ Reproduce the work (make copies).
○ Issue copies to the public (distribution).
○ Perform the work in public.
○ Communicate the work to the public (e.g., broadcasting, digital transmission).
○ Make an Adaptation (e.g., turning a book into a film).
○ Make a Translation of the work.
2. Moral Rights (Section 57 in the Indian Act): These rights protect the author's personal
connection to their work and generally remain with the author even if the economic rights are
sold. They include:
1. Right of Paternity (Right to Attribution)
The author has the right to claim authorship of the work. This means the author can
insist on being named and credited when the work is used publicly.
 Purpose: To prevent false attribution or the denial of credit (plagiarism).
2. Right of Integrity
The author has the right to restrain or claim damages for any distortion, mutilation,
modification, or other act in relation to the work that would be prejudicial to the
author's honor or reputation.
 Purpose: To protect the artistic vision and reputation of the author by preventing
unauthorized, derogatory changes to the work.
Key Features of Moral Rights
○ Perpetual: Unlike economic rights, the right to integrity can be enforced even after the
economic copyright term has expired.
○ Inalienable: Moral rights generally cannot be waived or transferred to another person,
as they belong to the author's personhood, not their property
Term of Copyright
The term of copyright refers to the duration for which the exclusive rights granted by law are valid.
After the term expires, the work falls into the Public Domain and can be used freely by anyone.
The term varies based on the type of work and its creator:
A. General Rule (Author's Lifetime + 60 Years)
For Literary, Dramatic, Musical, and Artistic Works (excluding photographs), the copyright subsists
for:
Life of the Author + Sixty Years
 The 60-year period is calculated from the beginning of the calendar year next following the

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  The 60-year period is calculated from the beginning of the calendar year next following the
year in which the author dies.
 Joint Authorship: If a work has two or more authors, the term is calculated based on the life of
the last surviving author plus 60 years.

Registration of Copyright (Section 45).

Copyright protection is automatic upon the creation of an original work in a tangible form.
Registration of copyright is not mandatory in India (under the Copyright Act, 1957), but it is
highly recommended as it serves as prima facie (first-hand) evidence of ownership in a court of law
during an infringement case.

The registration process is primarily governed by the Copyright Act, 1957, and the Copyright Rules,
2013, and is handled by the Copyright Office in New Delhi.

I. Procedure for Copyright Registration in India

The registration process in India is handled by the Copyright Office and generally involves the
following steps:
1. Application Filing: The applicant (author or owner) files an application in the prescribed
format (Form XIV) along with the Statement of Particulars, the requisite fee, and copies of the
work.
2. Diary Number: A diary number is issued to the applicant.
3. Mandatory Waiting Period: A 30-day waiting period is imposed to allow for any objections
to be filed against the claim.
4. Examination and Scrutiny:
○ If no objections are received, the Registrar's office examines the application for any
discrepancies.
5. Issuance of Certificate: If the Registrar is fully satisfied, the details are entered into the
Register of Copyrights, and a Certificate of Registration is issued.

Infringement of Copyright (Section 51)

Copyright in a work is considered infringed when any person does any act that is the exclusive right
of the copyright owner, without a proper license from the owner or the Registrar of Copyrights.
Infringement generally occurs in two ways:
A. Primary Infringement
This involves the direct, unauthorized use of the exclusive rights conferred upon the owner. This
includes:
 Reproduction: Making copies of the work (e.g., photocopying a book, downloading a song).
 Adaptation: Converting a work into another form (e.g., turning a novel into a film script).

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  Adaptation: Converting a work into another form (e.g., turning a novel into a film script).
 Public Communication: Broadcasting or playing the work in public without permission.
B. Secondary Infringement
This involves dealing with infringing copies, even if the person did not create the copy themselves.
This includes:
 Selling or renting infringing copies.
 Distributing infringing copies for the purpose of trade.
 Importing infringing copies into India (with an exception for a single copy for private use).
 Permitting any place to be used for profit for the communication of the work to the public
where such communication constitutes infringement.
Test of Infringement: Courts often use the "Substantial Similarity" test (from the landmark case of
R.G. Anand v. Delux Films), which asks: Would an ordinary, reasonable person, after seeing both
works, feel that the subsequent work is a copy of the original?

Exceptions to Infringement: Fair Dealing (Section 52)

Section 52 provides a list of acts that do not constitute copyright infringement. These are known as
statutory exceptions or "fair dealing" provisions, which balance the rights of the creator with the
public interest in education, criticism, and information flow.
The key categories of Fair Dealing are:

Purpose of Use Description

Private Use & Research Fair dealing with any work (not being a computer program) for private
or personal use, including research.
Criticism & Review Fair dealing for the purpose of criticism or review, whether of that work
or any other work.
News Reporting Fair dealing for the purpose of reporting current events and current
affairs, including the reporting of a lecture delivered in public.
Educational Purposes Reproduction by a teacher or a pupil in the course of instruction, or as
part of questions for an examination. Also, performance in the course of
the activities of an educational institution to a limited audience.
Judicial/Legislative Reproduction of a work for the purpose of a judicial proceeding or a
Proceedings report of a judicial proceeding.
Computer Programs Making a backup copy by the lawful possessor of a program, or making
copies/adaptations to achieve inter-operability with other programs, or
for the purpose of research or private use.
Incidental Use in Film Inclusion in a cinematograph film of an artistic work permanently
situate in a public place, or any other artistic work if the inclusion is
only by way of background or is incidental to the main subject.
Note: Unlike the US 'Fair Use' doctrine, India's 'Fair Dealing' is a closed set of permitted activities

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Note: Unlike the US 'Fair Use' doctrine, India's 'Fair Dealing' is a closed set of permitted activities
listed in Section 52.

Remedies for Infringement

The Copyright Act provides for three main types of remedies available to the copyright owner against
an infringer:
A. Civil Remedies (Section 55)
These are sought through a civil suit to compensate the owner for losses and stop future infringement.
1. Injunction: The most important remedy. It is a court order restraining the infringer from
continuing or repeating the infringing act (can be temporary or permanent).
2. Damages: Monetary compensation awarded to the owner for the financial losses suffered due
to the infringement.
3. Accounts of Profit: An order compelling the infringer to surrender the profits they made from
the illegal use of the copyrighted work.
4. Delivery Up: The court can order the destruction or delivery of all infringing copies and the
plates or equipment used to make them (Section 58).
B. Criminal Remedies (Section 63 onwards)
These are invoked for serious or repeated infringement, often pursued by the State (Police).
 Punishment: The infringer can face imprisonment (minimum 6 months, maximum 3 years)
and fine (minimum ₹50,000, maximum ₹2,00,000).
 Search & Seizure: A police officer can seize infringing copies without a warrant and produce
them before a Magistrate (Section 64).
C. Administrative Remedies
These involve government intervention, primarily related to imports.
 The copyright owner can apply to the Registrar of Copyrights or the Customs authorities to
prohibit the importation of infringing copies into India.

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 Unit IV: The Patent Act, 1970
What is a Patent?
A patent is an exclusive right granted by the state to an inventor for a limited period (usually 20 years
from the date of filing) to make, use, sell, or distribute an invention. The inventor discloses the
invention to the public in exchange for this monopoly right. In India, patents are governed by the
Patents Act, 1970.
Patentability Standards – Core Concept
For an invention to be patentable in India, it must satisfy three main standards:
1. Novelty – the invention must be new

2. Utility – the invention must be useful

3. Non-obviousness – the invention must involve an inventive step that is not obvious to a person
skilled in the art
These three are the foundation of global patent law and are embedded in the Indian Patents Act, 1970.

Patentable Subject Matter: Sections 3 and 4

• Section 3 of the Patents Act, 1970 lists what is NOT patentable. These are excluded from
patent protection.
• Section 4 is not a major section dealing with patentability directly; the core exclusions are in
Section 3.
Section 3 – What CANNOT be patented (Excluded Matter)
The following are NOT patentable inventions:
a. An invention the use of which would be contrary to law or morality, or which would cause
injury to public health or welfare – for example, methods to make dangerous drugs for illegal
purposes.
b. The mere discovery of a scientific principle or formulation of an abstract theory – simply
finding that something exists in nature is not patentable; there must be an application or
practical use.
c. The mere discovery of any new property of a known substance – if a chemical compound is
already known, merely discovering a new use or property of it is not patentable by itself.
d. A method of agriculture or horticulture – farming methods are not patentable. (But machines
used in agriculture can be patented.)
e. Any method relatable to atomic energy (sec. 4) – these are excluded for public policy
reasons.
f. A literary, dramatic, musical, or artistic work – these are protected under copyright, not

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 f. A literary, dramatic, musical, or artistic work – these are protected under copyright, not
patent law.
g. A method of performing a mental act, playing a game, or doing business – these abstract
methods are not patentable. (But if a specific technical implementation or algorithm is involved,
it may be patentable.)
h. A method of treatment of the human or animal body by surgery or therapy or diagnostic
methods – treatment methods are excluded, though medical devices and apparatus can be
patented.
i. Any variety of plants or animals and essentially biological processes for production –
seeds, plant varieties, and pure breeding methods are not patentable in India (they have a
separate sui generis system under the Plant Varieties Protection Act, 1994).
j. A mathematical or business method or algorithm – pure mathematical formulas, accounting
methods, business strategies are not patentable.
k. Computer programs per se – a standalone software code or computer program by itself is not
patentable. However, if software is embedded in a machine or produces a technical effect, it
may be patentable.

(A) Novelty
means the invention must be new – it must not have been disclosed or published anywhere in the
world before the filing or priority date of the patent application.
In India (Section 2(l)), means any invention or technology which has not been anticipated by publicly
available anywhere in the world, whether in writing, oral disclosure, use, or any other form, before the
priority date of the application.
Key points on novelty:
 The invention must not be disclosed in any single document or prior art reference before the
filing date.
 If the invention has been used publicly or sold before filing, it loses novelty.
 There is a grace period of 12 months in India under Section 32 – if the applicant or his legal
representative publishes the invention, then files a patent application within 12 months, it is not
considered a loss of novelty.
 The test of novelty is strict: even a single prior disclosure that shows all essential features of the
invention destroys novelty.
Simple example: If someone has already published a method to make a new alloy, and you file a
patent for the same method, your invention lacks novelty and cannot be patented.

(B) Utility (or Industrial Application)

Utility means the invention must be capable of industrial application or must be useful.
In India, Section 2(ac) defines "invention" as something capable of being made or used in an industry.

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 In India, Section 2(ac) defines "invention" as something capable of being made or used in an industry.
The Patents Act requires that:
 The invention must have some practical application – it must be capable of being made or used.
 It must produce a beneficial result.
 Useless or purely theoretical inventions are not patentable.
 The utility must be specific, substantial, and credible – vague claims like "may be useful in
future" are not acceptable.
Simple example: A new machine that performs a specific industrial process, or a chemical compound
that can be used to manufacture pharmaceuticals, has utility. But an invention that is purely
theoretical or speculative does not have utility.

(C) Non-obviousness (Inventive Step)

Non-obviousness (called "inventive step" in Indian law) means the invention must involve a step
that is not obvious to a person skilled in the art at the time of filing the patent application.
In India, Section 2(ja) defines "inventive step" as a feature of an invention that involves technical
advance as compared to the existing knowledge or having economic significance or both, and that
makes the invention not obvious to a person skilled in the art.
Key points:
 The test is: would a skilled person in that field find it obvious to combine known elements to
arrive at the invention? If yes, the invention lacks an inventive step.
 The person "skilled in the art" is a hypothetical expert in that field with knowledge of all prior
art and common general knowledge.
 The invention must represent a non-obvious or unexpected result compared to what would be
expected from the combination of known prior art.
 The inventive step can be in the product, the process, the combination, or the use.
Simple example: If you have two known drugs A and B, and simply combining them in a known
ratio is obvious to a chemist, there is no inventive step. But if combining them produces an
unexpected synergistic effect, there may be an inventive step.

Patent Registration Process in India

The entire process generally takes several years but can be expedited under certain conditions.

1. Invention Disclosure and Search

• Patentability Search (Recommended, not mandatory): Conduct a worldwide search (prior
art search) to determine if your invention is truly novel (new) and non-obvious (involves an
inventive step). This search helps you assess the likelihood of success before committing to the
full filing process.
2. Drafting and Filing the Application

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2. Drafting and Filing the Application
• Drafting the Patent Specification: This is a crucial step, as the specification is a "techno-
legal" document. It includes a detailed description, drawings, and, most importantly, the claims
that define the legal scope of your invention's protection.
• Filing the Application: File your application with the Indian Patent Office (IPO) using Form 1
(Application for Grant of Patent) and Form 2 (Provisional or Complete Specification), along
with other required forms (e.g., Form 3, Form 5).
○ Provisional Specification: Allows you to secure a priority date (filing date) for your
invention while you finalize the details. You must file the Complete Specification within
12 months.
○ Complete Specification: Filed when the invention is finalized and includes the claims.
3. Publication
• Your application is usually published in the official Patent Journal after 18 months from the
date of first filing. You can request an early publication with a fee if you don't want to wait.
4. Examination
• Request for Examination (RFE): The application is not automatically examined. You must
file a formal Request for Examination (RFE) using Form 18 within 48 months of the filing
date.
• First Examination Report (FER): The Patent Examiner reviews your application against
patentability criteria (novelty, inventive step, industrial applicability) and sends a report
detailing any objections.
• Response to Objections: You must respond to the FER within a prescribed time (usually 6
months, extendable by 3) by clarifying, amending claims, or providing arguments to satisfy the
examiner.
5. Grant of Patent
• Once all objections are resolved and the examiner is satisfied, the patent is granted, published
in the Patent Journal, and you are issued a Patent Certificate.
• A patent is valid for 20 years from the filing date, provided annual renewal/maintenance fees
are paid after the grant.

PCT – National Phase

The Patent Cooperation Treaty (PCT) is an international treaty administered by the World Intellectual
Property Organization (WIPO). It provides a unified procedure for filing patent applications in
multiple countries simultaneously, rather than filing separate applications in each country.
The PCT simplifies and reduces the cost of seeking patent protection internationally. India is a
member of the PCT as of 1998.
How PCT Works – Basic Concept
Think of it as a two-stage process:
a. International Phase: You file one international application (called a PCT application) with a
receiving office, which is published internationally, and an international search and preliminary
examination are conducted.
National Phase: After the international phase, you enter the "national phase" in each country

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 b. National Phase: After the international phase, you enter the "national phase" in each country
where you want patent protection. You file applications with the national patent offices of those
countries, which then examine and grant or refuse the patent according to their own national
laws.
The National Phase –
The national phase is the stage in the PCT process when an applicant transitions from the
international application system to seeking patent protection in individual countries. Each country has
its own national patent laws, examination requirements, and procedures.
When Does the National Phase Begin?
The national phase typically begins around 30 months after the priority date (the filing date of your
first application). However, you can enter the national phase earlier if you wish.
The applicant must decide: "In which countries do I want patent protection?" and file national
applications in those countries before the deadline.
Key Deadlines in the National Phase
30-Month Deadline (from priority date)
This is the standard deadline for entering the national phase in most countries. You must file
applications in the national patent offices of your chosen countries before this date. If you miss this
deadline, you lose the priority date and cannot file in those countries using the PCT route.
Exception: Some countries have different deadlines. Always check the specific country's requirements

Patent Term and Enforcement (India – Patents Act, 1970)

1. Term of a Patent
a. Present rule: The term of every patent in India is 20 years from the date of filing of the patent
application.
b. PCT (international) applications:
Where a patent is granted in India on a PCT national phase application, the 20-year term is
counted from the international filing date of the PCT application.
c. Renewal / annual fees:
– The patentee must pay annual renewal fees (maintenance fees) from the 3rd year
onwards to keep the patent in force.
– If renewal fees are not paid, the patent lapses.
– A lapsed patent can be restored within a prescribed time (subject to conditions and payment
of fee), but if not restored, the invention falls into the public domain and can be freely used.
d. Effect of expiry:
After the 20-year term ends, the patented invention becomes public property. Anyone can
make, use, sell, or import it without permission and without paying royalty.

2. Patent Infringement

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2. Patent Infringement
A. What rights does a patent give? (So what is infringed?)
Under the Patents Act, a patent gives the patentee the exclusive right to:
 In case of a product patent: To make, use, sell, offer for sale, or import the patented product in
India.
 In case of a process patent: To use or exercise the patented process and to use, sell, offer for
sale, or import the product obtained directly by that process in India.
Any person doing these acts without the consent (license) of the patentee during the term of the
patent is prima facie committing infringement.
B. Acts that amount to infringement
Typical acts that constitute infringement:
 Making the patented product without authorization.
 Using the patented process without authorization.
 Selling, offering for sale, or stocking for sale the patented product.
 Importing the patented product or a product directly obtained by the patented process.
There must be substantial identity between the defendant’s product/process and the patented claims.
Infringement is always judged against the claims of the patent, not just the description.
C. Period from publication to grant
After a patent application is published but before grant:
 The applicant gets a kind of provisional right.
 Once the patent is ultimately granted, the patentee can claim reasonable compensation for acts
of infringement done between publication and grant (but cannot sue until the patent is actually
granted).
 Full enforceable right arises only on grant.
D. Defences and exceptions (no infringement)
Certain acts are not considered infringement, for example:
 Experimental use / research: Using a patented invention for experiment or research, including
educational purposes, is generally treated as non-infringing.
 Bolar exception (regulatory use): Making, using or importing a patented invention purely for
purposes of development and submission of information to a regulatory authority, e.g., for
getting marketing approval for a generic drug, is not infringement.
 Government use / compulsory licensing in specified conditions.
 Use of the invention after expiry or lapse of the patent.

3. Remedies for Patent Infringement

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3. Remedies for Patent Infringement
In India, enforcement is primarily civil. There is no criminal punishment for ordinary patent
infringement (unlike trademarks and copyright).
Main civil remedies:
A. Injunction
Most important and immediate remedy.
 Interim (temporary) injunction: Granted at an early stage to restrain the defendant from
continuing infringement during the pendency of the suit, if the court finds:
– A prima facie case
– Balance of convenience in favour of the patentee
– Risk of irreparable harm.
 Permanent injunction: Granted after final hearing, permanently restraining the defendant from
committing infringement.
Courts also use special forms of injunctions (Anton Piller orders for search/seizure, Mareva-type
orders for freezing assets) through CPC principles.
B. Damages or Account of Profits
The patentee may claim either:
 Damages: Monetary compensation for loss suffered due to infringement (e.g., lost profits, loss
of market share).
 Account of profits: Instead of damages, the patentee can ask the court to order the defendant
to disgorge the profits earned from the infringement.
The patentee usually elects one of these remedies, not both.
C. Delivery up / Destruction
The court can order:
 Delivery up or destruction of infringing goods, labels, packaging, dies or plates used to produce
them, to prevent further misuse.
D. Costs
Courts can award costs of the suit to the successful party, including legal expenses.

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 Unit V Geographical Indications of Goods Act,1999
The Geographical Indications of Goods (Registration and Protection) Act, 1999 creates a sui
generis system to protect names/signs that identify goods with a particular place (like Darjeeling Tea,
Kanchipuram Silk), distinct from individual business identifiers like trademarks or quality logos like
certification marks.
1. Geographical Indications of Goods Act, 1999 – Background & Objective
The Geographical Indications of Goods (Registration and Protection) Act, 1999 is a special Indian
statute to register and protect geographical indications (GIs), enacted to comply with TRIPS
Agreement (Art. 22–24) and to safeguard Indian traditional products
Key objectives:
 To provide legal protection to GIs in India.
 To prevent unauthorised use of registered GIs by others (misuse, passing off).
 To promote rural and regional development by enhancing market value of local products.
 To implement India’s obligations under WTO–TRIPS and earlier international norms like
the Paris Convention.
Meaning of “Geographical Indication” – Definition
Under Section 2(1)(e) of the GI Act (wording paraphrased), a geographical indication in relation to
goods means: "An indication which identifies goods as agricultural, natural or manufactured goods,
as originating or manufactured in the territory of a country, or a region or locality in that territory,
where a given quality, reputation or other characteristic of such goods is essentially attributable to its
geographical origin; and in case of manufactured goods, at least one of the production, processing or
preparation activities must take place in that area."
Important elements from the definition:
 It is an indication (name, word, sign, symbol, etc.).
 It relates to goods only (not services).
Goods may be:
 Agricultural (e.g., Darjeeling tea, Basmati rice).
 Natural (e.g., Makrana marble).
 Manufactured/handicraft (e.g., Kanchipuram silk, Pochampalli ikat)
The quality, reputation or other characteristic is essentially attributable to geographical
origin (climate, soil, traditional know-how, etc.).
For manufactured goods, at least one step of production/processing/preparation must happen in that
region.
Scope
You can remember with this line:
“ALL INDIA – ONLY GOODS – THROUGH REGISTRATION – WITH PROTECTION.”

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  All India: Act applies to the whole of India.
 Only goods: agricultural, natural, manufactured goods, handicrafts, food items etc. (not
services).
 Through registration: GI must be registered; there is a Register, Registrar and GI Registry.
 With protection: only authorised users can use the GI; others using it falsely can be stopped and
punished.

GI vs Trademark
Feature Geographical Indication (GI) Trademark (TM)
Primary Purpose To protect a product's geographical To protect a brand's
origin and the unique quality, commercial source (a
reputation, or characteristics derived company/individual) and
from that origin. distinguish its goods/services
from competitors.
Link to Place Intrinsic and Mandatory. The Optional. A TM is not required
product's qualities must be essentially to be linked to a geographical
attributable to its place of origin location. It can be used
(e.g., climate, soil, local methods). anywhere.
Ownership Collective Right. Owned by an Individual Right. Owned by a
association, community, or group of single person, company, or
producers within the designated business entity.
geographical region.
Who Can Use It? All producers in the defined Only the registered owner (or
geographic area can use the GI, those licensed by the owner) can
provided their product meets the use the TM.
stipulated standards/quality controls.
Subject Matter Primarily for Goods (agricultural, For Goods and Services (e.g.,
natural, handicrafts, food products, brand names, logos, slogans,
wines, etc.). unique symbols, sounds).
Transferability Cannot be sold, assigned, or Can be sold, assigned, or
licensed to a producer outside the licensed to anyone, anywhere in
designated geographical area. the world.
Examples Darjeeling Tea, Champagne, Puma, Ford, Apple, Coca-
Mysore Silk, Scotch Whisky, Cola.
Kolhapuri Chappal.

Can a Product Have Both?

Yes, a product can (and often does) carry both a GI and a Trademark.
This creates a powerful, two-layered system of protection for the product:
1. The GI protects the collective regional name and the unique quality associated with the location
(e.g., Darjeeling Tea). This prevents non-local producers from using the name "Darjeeling" on

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 (e.g., Darjeeling Tea). This prevents non-local producers from using the name "Darjeeling" on
their tea.
2. The Trademark protects the individual brand identity of a specific producer within that region
(e.g., "XYZ" Darjeeling Tea). This allows the producer to distinguish their particular brand,
quality, and packaging from other legitimate Darjeeling Tea producers

Certification Mark?
A Certification Mark is a special type of mark (a word, name, symbol, or device) used to indicate that
the goods or services on which it is applied meet specific standards established by the mark's owner.

Unlike a regular trademark, which tells you who made the product (the commercial source/brand), a
Certification Mark tells you what the characteristics of the product are, regardless of who made it.
Common Examples
Certification marks are widespread in everyday life and are essential for consumer trust:
• Quality/Safety:
○ ISI Mark (India): Certifies that industrial products meet the standards set by the Bureau
of Indian Standards (BIS).
○ BIS Hallmark (India): Certifies the purity of gold and silver jewellery.
○ UL Mark (Underwriters Laboratories): Certifies product safety and compliance with
safety standards (common in electronics).
• Origin/Quality:
○ AGMARK (India): Certifies quality standards for agricultural products.
○ Woolmark: Certifies that a product is made of 100% new wool.
○ Fair Trade Certified™: Certifies that social and environmental standards were met in
the production of the goods.
• Environmental/Organic:
○ Energy Star: Certifies that a product meets specific energy efficiency guidelines.
○ USDA Organic (US): Certifies compliance with organic agricultural standards.
The Indian Context
In India, the situation is clearer because GIs and Certification Marks are governed by separate,
dedicated laws:

The Fundamental Relationship

At its heart, a Geographical Indication (GI) is a concept, while a Certification Mark is a legal tool.
• The GI Concept: Always certifies origin-linked quality. It says: "This product is good
because it comes from this specific place and follows the traditions of that place."
• The Certification Mark Tool: Certifies compliance with a standard. It says: "This product is
good because it meets the set standard for quality, safety, or manufacture."
In many countries (like the US, UK, and Australia), a GI is legally protected by registering the place
name (e.g., Idaho Potatoes, Napa Valley) as a Certification Mark of Origin under the national
trademark law.

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Feature Geographical Indication (GI) Certification Mark (CM)
Governing Geographical Indications of Goods Trade Marks Act, 1999 (Sections 69-78)
Law (Registration and Protection) Act,
1999
Focus of the Origin, Quality, Reputation (must be Origin, Material, Mode of Manufacture,
Standard essentially attributable to the Quality, Accuracy (can be any definable
geographical environment). standard).
Applicabilty Only applies to Goods (agricultural, Applies to Goods and Services.
natural, manufactured/handicrafts).
Ownership Collective Right. Vested in an Certifying Authority. Owned by an impartial
association or group of producers body (like the BIS or a standards
from the region. organization).
Key Non-assignable/Non-transferable. Owner Cannot Use the Mark. The owner
Restriction The right stays with the geographical can only license it to others; they cannot trade
region and the collective group. in the certified goods/services themselves.
Example Darjeeling Tea: Certifies that the tea ISI Mark: Certifies that a product (e.g., a
is grown in the Darjeeling region helmet or electrical appliance) meets the
using specific methods, giving it its safety and quality standards set by the Bureau
unique flavour. of Indian Standards (BIS).

International Agreements Related to GI

1. TRIPS Agreement - Articles 22-24:
The TRIPS Agreement's Articles 22, 23, and 24 establish the minimum international standards
for the protection of Geographical Indications (GIs), creating a two-tiered system: a basic level
for all products and an enhanced level for wines and spirits.
Article 22: Basic Protection for All Goods
Article 22 sets the general, minimum standard of protection applicable to GIs for all products
(agricultural, manufactured, handicrafts, etc.).
1. Definition (Art. 22.1)
A GI is defined as an indication that identifies a good as originating in a territory, where a given
quality, reputation, or other characteristic of the good is essentially attributable to its
geographical origin.
2. Obligation to Prevent Misleading Use (Art. 22.2)
Members must provide the legal means to prevent:
• The use of any designation that misleads the public as to the true geographical origin of
the good.
• Any use that constitutes an act of unfair competition (as defined by the Paris Convention).
The key here is that protection is triggered by consumer deception or misleading use.
3. Trademark Refusal (Art. 22.3)
Members must refuse or invalidate a trademark registration that consists of a GI for non-
originating goods, if the use of the GI in the trademark would mislead the public.

Article 23: Additional Protection for Wines and Spirits

Article 23 provides a higher, absolute level of protection specifically for GIs identifying wines
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 Article 23 provides a higher, absolute level of protection specifically for GIs identifying wines
and spirits, known as "enhanced protection."
1. Absolute Prohibition (Art. 23.1)
Members must prevent the use of a GI identifying wines or spirits for products not originating
in the indicated place, even where:
• The true origin of the goods is indicated (e.g., "South African Champagne").
• The GI is used in translation.
• The use is accompanied by qualifying expressions such as "kind," "type," or "style."
The crucial difference from Article 22 is that proof of misleading the public is NOT required;
the unauthorized use itself is prohibited.
2. Stricter Trademark Refusal (Art. 23.2)
The registration of a trademark for wines or spirits consisting of a GI must be refused or
invalidated if the product does not have that origin. This requirement is absolute.
3. Multilateral Register (Art. 23.4)
Members are obligated to negotiate the establishment of a multilateral system for the
notification and registration of GIs for wines and spirits to facilitate their international
protection.

Article 24: International Negotiations and Exceptions

Article 24 is vital as it addresses ongoing negotiations for expanded protection and defines key
exceptions to GI obligations.
1. International Negotiations (Art. 24.1)
Members agree to continue negotiations aimed at increasing the protection of GIs, particularly
concerning the extension of the Article 23 enhanced protection to products beyond wines and
spirits (a major point of disagreement in the WTO).
2. Exceptions to Protection
Article 24 outlines specific situations where GI protection is not required:
○ Generic Terms (Art. 24.6): There is no obligation to protect GIs that have become the
common or customary name for the goods in that Member's territory (e.g., "cheddar" or
"bologna").
○ Prior Good Faith Use (Art. 24.5): Protection shall not prejudice the rights of a person
who has used a trademark identical or similar to a GI in good faith before the TRIPS
Agreement's application date or before the GI was protected in its country of origin.
○ Personal Name Use (Art. 24.3): The right to use one's own personal name in business is
generally protected, provided it is not used in a manner that misleads the public.

What GI cannot be registered (Section 9)

A geographical indication will not be registered if it falls into any of these categories. In simple
words:
 If its use is likely to deceive or cause confusion – for example, a name that may mislead people
about real place of origin.
 If its use would be contrary to any law in force in India.
 If it contains scandalous or obscene matter.

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  If it contains anything likely to hurt religious feelings of any class or section of Indian citizens.
 If it would otherwise not be entitled to protection in a court (e.g., against public policy).
 If it has become a generic name or indication of goods – that is, the name has turned into a
common name for that product, not associated with a particular place.
 Even if literally true for one region, if it is used in a way that falsely represents to people that
the goods come from another region, it will be refused.

Procedure of registration of GI
The procedure is given mainly in Sections 11–16 of the GI Act and the GI Rules.
“Apply – Examine – Advertise – Oppose – Decide – Register”.
1) Application (Section 11)
Application is filed to the GI Registry (Chennai) in the prescribed form (GI-1), in triplicate,
with fee.
It can be filed by an association of persons, producers, or any organisation or authority
representing the interests of the producers.
The application must contain:
○ name, address of applicant,
○ the GI and its graphical representation,
○ class of goods,
○ geographical area with map,
○ proof that the GI relates to that area,
○ description of product, method of production, uniqueness, and
○ details of inspection/quality control mechanism.
2) Preliminary scrutiny and examination (Section 11(5))
The Registrar examines the application to check formalities and substantive conditions (for
example, whether it fits definition in Section 2(1)(e) and is not hit by Section 9).
Registrar may ask for corrections, clarifications, or additional documents.
After examination, he may accept, accept with conditions, or refuse.
3) Show-cause notice and hearing (Section 12)
If the Registrar has objections, he issues a written show-cause notice.
The applicant must reply within the prescribed time and may request a hearing.
After hearing and considering the reply, the Registrar may accept (with or without conditions)
or refuse the application.
4) Advertisement in GI Journal (Section 13)
If accepted, the application is advertised in the Geographical Indications Journal within the
prescribed time.
This is to give public notice and allow any person to oppose the registration.
5) Opposition proceedings (Section 14)

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5) Opposition proceedings (Section 14)
Any person can file a notice of opposition within three months from the date of advertisement
(extendable by one month).
The Registrar sends a copy to the applicant. The applicant must file a counter-statement within
two months, otherwise the application is treated as abandoned.
Both parties then file evidence (by affidavit and documents) and are heard.
Registrar then decides whether to register the GI, register it with conditions, or refuse it
altogether.
6) Registration and certificate (Section 16)
If there is no opposition, or opposition is decided in favour of the applicant, the GI is registered.
The date of filing of the application becomes the date of registration.
The GI is entered in the Register and a certificate of registration is issued with the seal of the GI
Registry.
7) Duration, renewal, authorised users (Sections 17–18)
Registration is valid for 10 years and is renewable for further periods of 10 years each on
payment of renewal fee.
Producers who actually use the GI have to be registered separately as authorised users, on
whose name also entries are made in the Register.

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