Intellectual Property

Rights
Summary Notes

Hemant Patil. 1/2/25 GLC, 2025

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Contents
Previous Year Questions – Repeat Frequency ........................................................... 2
My scribbles - Key Principles & Provisions ................................................................ 2
Module 1: Introduction to IPR ................................................................................ 6
A. Meaning and Scope of Intellectual Property Rights (IPR) .................................. 6
B. Classification of IPR .................................................................................... 8
C. Importance and Need for IPR ..................................................................... 10
D. Intellectual Property as a Form of Property .................................................. 11
E. Ownership and Assignment of IPR .............................................................. 12
F. Case Studies on IPR Infringement .............................................................. 14
Module 2: Copyrights ......................................................................................... 15
A. Definition and Scope of Copyright ............................................................... 15
B. Works in which Copyright Subsists .............................................................. 16
C. Term of Copyright (e.g., Artistic, Musical, Literary Works) .............................. 17
D. Rights of Authors and Performers ............................................................... 18
E. Copyright Infringement and Exceptions ....................................................... 20
F. Fair Use Provisions under S52 of the Copyright Act, 1957............................... 21
G. Ownership of Copyright ............................................................................. 22
H. Copyright Societies................................................................................... 23
Module 3: Patents .............................................................................................. 25
A. Definition and Scope of Patents .................................................................. 25
B. Patentable and Non-Patentable Inventions ................................................... 26
C. Procedure for Filing a Patent Application ...................................................... 27
D. Rights and Obligations of Patentees ............................................................ 29
E. Compulsory Licensing ............................................................................... 30
F. Revocation or Opposition to Grant of Patents ................................................ 31
G. Patents of Addition ................................................................................... 33
H. Anticipation in Patents .............................................................................. 34
Module 4: Trademarks ........................................................................................ 35
A. Definition and Scope of Trademarks ............................................................ 35
B. Procedure for Registration of Trademarks ..................................................... 37
C. Passing Off vs Infringement ....................................................................... 39
D. Well-Known Trademarks ............................................................................ 40
E. Grounds for Refusal of Trademark Registration ............................................. 42
F. Certification Marks ................................................................................... 43
G. Collective Marks ....................................................................................... 45
Module 5: Industrial Designs ............................................................................... 46
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A. Definition and Scope of Industrial Designs ................................................... 46

B. Rights Conferred by Registration ................................................................ 48
C. Term of Protection for Industrial Designs ..................................................... 49
D. Grounds for Cancellation of Registration ...................................................... 49
Module 6: International Treaties ........................................................................... 50
A. Berne Convention..................................................................................... 50
B. Budapest Treaty ....................................................................................... 52
C. TRIPS Agreement ..................................................................................... 53
Disclaimer......................................................................................................... 55

Previous Year Questions – Repeat Frequency

My scribbles - Key Principles & Provisions

The Copyright Act, 1957 governs the protection of intellectual property in India, safeguarding the
rights of creators over their original works. It provides automatic protection upon creation and
includes both economic and moral rights.
Key Features
1. Nature of Copyright:
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o Protects original works of literature, art, music, drama, cinematograph films, sound
recordings, and photography.
o Covers both Sweat of Brow (hard work) and Modicum of Creativity (creativity in
theme).
o Protects tangible expressions of ideas, not ideas themselves (RG Anand Case).
2. Rights Granted:
o Economic Rights: Reproduce, distribute, perform, translate, create derivatives, and
display works.
o Moral Rights:
 Paternity: Right to claim authorship.
 Integrity: Prevent distortion or mutilation of work.
3. Duration (Sections 22-29):
o Life of the author + 60 years (for literary, dramatic, musical, artistic works).
o 60 years from publication for cinematograph films, sound recordings, posthumous
works, and government works.
4. Registration:
o Not mandatory but provides prima facie evidence of ownership.
o Registration process: Application → Diary Number → 30-day objection period →
Scrutiny → Approval/Certificate.
5. Amendments:
o 12 amendments to date; major ones include:
 1994: Moral rights aligned with Berne Convention.
 2012: Protection for internet-based works and software.
6. Neighbouring Rights: Performers’ rights (Rome Convention), producers’ rights
(phonograms), and broadcasting rights.
7. Ownership (Section 17): Creator is the owner unless created under employment (VT Thomas
v. Malayalam Manorama).
Infringement (Section 51)
1. Unauthorized use of copyrighted work without permission.
2. Includes infringement of both economic and moral rights.
Remedies for Infringement
1. Civil Remedies:
o Injunctions (John Doe/Ashok Kumar orders).
o Damages or accounts of profits.
o Delivery/destruction of infringing copies.
2. Criminal Remedies:
o Imprisonment: 6 months–3 years.
o Fines: ₹50K–₹2L (enhanced for repeat offenses).
3. Administrative Remedies: Ban on imports by Registrar.
4. Anton Piller Orders: Seizure of infringing goods if there’s a prima facie case and risk of
irreparable harm.
Limitations to Copyright
1. Only tangible expressions are protected; ideas are not.
2. Fair Use Doctrine (Section 52): Non-commercial use for research, teaching, criticism,
reporting, judicial proceedings, or performances for non-paying audiences.
3. Government Works: Acts, judgments, reports are exempt.
Licensing & Assignment
1. Licensing (Section 30): Voluntary or compulsory (e.g., orphaned works).
2. Assignment: Transfer of ownership rights temporarily or permanently.
Copyright Societies (Section 33)
1. Collective management organizations authorized by members to license works and collect
royalties.
2. Functions include:
o Preventing theft.
o Licensing works on behalf of members.
o Collecting fees proportionally and distributing them fairly.
This Act ensures creators retain control over their work while balancing public access through fair
use provisions and neighbouring rights protections.
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The Patent Act, 1970, governs the protection of inventions in India, ensuring a balance between
public interest and inventor rights. The 2005 amendment aligned it with TRIPS requirements,
introducing product patents in all fields.
Key Features
1. Definition of Invention (Section 2(j)):
o A new product or process involving an inventive step and capable of industrial
application.
o Does not cover ideas or principles.
2. Term of Patent (Section 53):
o Valid for 20 years from the application date.
o No renewal; the invention enters the public domain after expiry.
3. Patentability Tests:
o Novelty: Must be new and not disclosed publicly before application.
o Inventiveness: Should not be obvious to a person skilled in the field.
o Utility: Must have industrial or commercial application.
4. Evergreening Prohibition (Section 3(d)):
o Slight alterations to extend patent life are not allowed unless they show substantial
inventiveness (Novartis case).
5. Process vs. Product Patent:
o Process patents protect only the method, not the final product.
o Encourages competition by allowing others to create the same product using a
different process.
Procedure for Patent Grant
1. File a provisional or complete application.
2. Complete specification within 12 months of provisional filing.
3. Publish application (18 months from filing).
4. Request examination (within 48 months).
5. Respond to objections (6 months from notice).
6. Grant issued if all criteria are met.
Opposition Mechanisms
1. Pre-Grant Opposition (Section 25(1)): Any person can oppose within 6 months of publication.
2. Post-Grant Opposition (Section 25(2)): Can be filed within 12 months of grant publication.
Grounds for Opposition (Section 25)
• Wrongful obtaining.
• Prior publication/use/claim.
• Obviousness or lack of inventive step.
• Non-patentable subject matter.
• Insufficient disclosure or false information.
• Use of traditional knowledge or biological sources without disclosure.
Non-Patentable Inventions (Section 3)
• Frivolous or contrary to natural laws.
• Mere discoveries, abstract theories, or known substances/properties.
• Business methods, algorithms, artistic works, or traditional knowledge.
• Methods of treatment or agriculture.
Exceptions
1. Compulsory Licensing (Section 84):
o After three years, anyone can apply if:
 Public needs are unmet.
 The invention is unavailable at a reasonable price.
 The invention is not worked in India.
2. Regulatory Exemption (Bolar Provision, Section 107(A)): Use of patented inventions for R&D
before patent expiry is allowed.
3. Experimental/Scientific Use Exception (Section 47): Patents can be used for academic
research without infringement.
4. First Sale Doctrine: Patentee's rights end after the first authorized sale of a patented product.
Infringement (Section 48)
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1. Unauthorized use, sale, offer for sale, or importation of a patented product/process without
consent.
2. Includes colorable imitation and immaterial variations that carry essential features of the
invention.
Remedies for Infringement
1. Civil Remedies:
o Injunctions (interim and perpetual).
o Damages or accounts of profit.
o Delivery/destruction of infringing goods.
2. Administrative Remedies: Customs prohibition on infringing imports.
3. Criminal Penalties: Groundless threats under Section 106.
Patents of Addition
• For improvements/modifications to an existing patent.
• Does not require inventive steps or separate renewal fees.
Revocation and Surrender
1. Revocation by High Court (Sections 64-66): Lack of novelty, utility, inventive step, public
interest, etc.
2. Voluntary surrender with Controller's approval (Section 63).
International Agreements
1. Paris Convention: Priority filing rights across member countries.
2. Patent Cooperation Treaty (PCT): Single-window filing for multiple jurisdictions.
3. TRIPS Agreement: Minimum standards for IP protection.
This Act ensures innovation while balancing consumer interests through mechanisms like compulsory
licensing and process patents.

The Trademark Act, 1999 governs the registration, protection, and enforcement of trademarks in
India. It aligns with international standards like the TRIPS Agreement and Paris Convention to
safeguard brand identity and prevent fraudulent use.
Key Features
1. Definition of Trademark:
o A unique symbol, word, logo, or combination that distinguishes goods or services of
one entity from others.
o Includes product marks, service marks, collective marks, certification marks, and
non-traditional marks (shape, sound, colour, smell).
2. Duration: Initial registration is valid for 10 years and can be renewed indefinitely.
3. Classification:
o Goods: Classes 1-34.
o Services: Classes 35-45.
o Single application can cover multiple classes.
4. Essentials for Registration:
o Must be distinctive, graphically representable, and capable of indicating a trade
connection.
o Cannot be descriptive, deceptive, offensive, or similar to existing marks.
5. Grounds for Rejection:
o Absolute Grounds (Section 9): Lack of distinctiveness, customary use, offensive
content, or functional shapes.
o Additional Grounds: Conflict with unregistered marks (passing off), public policy
violations (e.g., Hitachi v. Hitaishi case).
6. Registration Process:
o Conduct a trademark search.
o File an application with required details (logo, owner details, class).
o Examination and publication in the Trademark Journal.
o Opposition period (90 days).
o Final registration if no valid objections are raised.
Types of Infringement
1. Trademark Infringement: Unauthorized use of a mark identical or deceptively similar to a
registered trademark causing confusion.
2. Passing Off: Misrepresentation of goods/services as those of another (applies to both
registered and unregistered marks).
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3. Other Violations:
o Misappropriation (e.g., stealing customer lists).
o Product Disparagement (false claims harming reputation).
o Trade Dress Infringement (copying packaging/design).
o Dilution: Weakening distinctiveness through tarnishment or blurring.
Exceptions to Infringement (Section 30)
• Honest use for descriptive purposes or trade practices.
• Use with the proprietor's consent.
• No harm to the trademark's distinctiveness or reputation.
Remedies for Infringement
1. Civil Remedies:
o Injunctions.
o Damages or accounts of profits.
o Seizure/destruction of infringing goods.
2. Criminal Penalties:
o Imprisonment: 6 months to 3 years.
o Fines: ₹50,000 to ₹2 lakhs (enhanced for repeat offenses).
International Agreements
1. Paris Convention: Protection of industrial property.
2. Madrid Protocol: Simplified international registration process.
3. TRIPS Agreement: Minimum IP protection standards.
4. Nice Agreement: Classification of goods/services.
5. Singapore Treaty: Harmonization of trademark laws.
Notable Case Laws
1. Cadila Healthcare v. Cadila Pharmaceuticals: Importance of preventing consumer confusion
in passing off cases.
2. Honda Pressure Cookers Case: Rights over unregistered trademarks based on long-term
use.
This Act ensures fair competition by protecting trademarks while balancing public interest and
innovation in commerce.

Differentiation between Infringement & Passing-off

Aspect Infringement Passing Off
Nature of Remedy Statutory remedy under the Trade Marks Common law remedy based on
Act, 1999. protecting goodwill.
Registration Requires the trademark to be registered. Does not require registration; applies to
Requirement both registered and unregistered
trademarks.
Proof Required Registration is stronger evidence; Plaintiff No evidence of mark ownership, need
must prove that the infringing mark is substantial proof. Also prove deceptive
deceptively similar to the registered mark; similarity, actual confusion or deception,
confusion is presumed. and damage to goodwill.
Scope of Protection Limited to goods/services for which the Can extend to unrelated goods/services
trademark is registered or similar if goodwill is affected.
goods/services.
Criminal Remedies Easier to prosecute under criminal Harder to prosecute criminally as
provisions. misrepresentation must be proven.
Jurisdiction Plaintiff can file under Section 134 of the Jurisdiction follows Section 20 of CPC,
Trade Marks Act, 1999, where they reside or i.e., where the defendant resides or
conduct business. cause of action arises.
Focus of Action Focuses on unauthorized use of a registered Focuses on misrepresentation causing
trademark. harm to goodwill, irrespective of
registration.
Similarity Identity or similarity of marks is sufficient Requires proof of misrepresentation and
Requirement for action. likelihood of confusion beyond similarity.

Module 1: Introduction to IPR

A. Meaning and Scope of Intellectual Property Rights (IPR)
Meaning of Intellectual Property Rights: Intellectual Property Rights (IPR) refer to the
legal rights granted to individuals or entities over their creations or inventions, which are
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products of human intellect. These rights provide creators with exclusive control over the
use and commercialization of their intellectual outputs for a specified period, thereby
incentivizing innovation and creativity. According to the World Intellectual Property
Organization (WIPO), intellectual property includes rights related to:
• Literary, artistic, and scientific works.
• Performances of performing artists, phonograms, and broadcasts.
• Inventions in all fields of human endeavour.
• Industrial designs.
• Trademarks, service marks, and commercial names.
• Protection against unfair competition and other rights arising from intellectual
activity in industrial, scientific, literary, or artistic fields.
IPR is categorized as intangible property because it protects non-physical assets like ideas,
expressions, or innovations that have economic value. The primary purpose of IPR is to
balance the interests of creators and the public by granting creators exclusive rights while
ensuring societal access to knowledge and innovation.
Scope of Intellectual Property Rights: The scope of IPR is broad and covers various
forms of intellectual creations. The major categories include:
1. Patents:
o Protect inventions that are novel, involve an inventive step, and are
industrially applicable.
o Example: A new drug formulation.
o Duration: 20 years from the filing date under Indian law.
2. Copyrights:
o Protect original literary, artistic, musical, dramatic works, cinematographic
films, and software.
o Example: Copyright on a novel or a film script.
o Duration: Life of the author plus 60 years in India.
3. Trademarks:
o Protect distinctive signs, symbols, words, or logos identifying goods or
services.
o Example: The "Apple" logo for Apple Inc.
o Duration: Renewable every 10 years.
4. Industrial Designs:
o Protect the aesthetic aspects of products (shape, pattern, or colour).
o Example: Design of a smartphone case.
o Duration: 10 years (renewable for an additional 5 years).
5. Geographical Indications (GI):
o Protect products originating from specific geographical regions with unique
qualities.
o Example: Darjeeling Tea from India.
o Duration: 10 years (renewable).
6. Trade Secrets:
o Protect confidential business information providing competitive advantages.
o Example: Coca-Cola’s recipe.
o Duration: Indefinite as long as secrecy is maintained.
7. Plant Varieties Protection:
o Protect new plant varieties developed through breeding efforts under the
Protection of Plant Varieties and Farmers’ Rights Act.
8. Integrated Circuits Layout Designs:
o Protect the layout designs of semiconductor chips.
Objectives and Importance: The objectives of IPR include:
• Encouraging creativity by granting exclusive rights to creators and inventors.
• Promoting economic growth by enabling commercialization of intellectual assets.
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• Ensuring fair competition by preventing misuse or infringement.

• Facilitating international trade by harmonizing IP laws globally under agreements
like TRIPS (Trade-Related Aspects of Intellectual Property Rights).
Legal Framework in India: India’s IPR regime aligns with international standards under
TRIPS. Key legislations include:
• The Patents Act, 1970 (amended in 2005).
• The Copyright Act, 1957 (amended in 2012).
• The Trademarks Act, 1999.
• The Geographical Indications of Goods Act, 1999.
• The Designs Act, 2000.
These laws aim to protect creators' rights while balancing public interest concerns such as
access to knowledge and affordable healthcare.
Judicial Interpretation in India: Indian courts have played a critical role in shaping IPR
jurisprudence. Notable cases include:
1. Novartis AG v. Union of India [(2013) 6 SCC 1]:
o Issue: Patent protection for incremental pharmaceutical innovations under
S3(d) of the Patents Act.
o Judgment: SC denied Novartis a patent for its cancer drug Glivec on grounds
that it did not significantly enhance efficacy over existing drugs. This case
emphasized public health concerns over monopolistic practices.
2. Eastern Book Company v. D.B. Modak [(2008) 1 SCC 1]:
o Issue: Copyright protection for original compilations like law reports.
o Judgment: The court held that originality requires skill and judgment
beyond mere labor or effort.
3. Tata Sons Ltd v. Manu Kosuri [AIR 2001 Del 326]:
o Issue: Trademark protection for domain names.
o Judgment: Domain names were recognized as trademarks if they served as
unique identifiers for businesses.
Economic Significance: IPR fosters economic development by:
• Encouraging research and development (R&D) through financial incentives for
innovators.
• Enhancing global competitiveness in sectors like IT and pharmaceuticals.
• Boosting rural economies via GI-tagged products like Pashmina shawls.
In conclusion, IPR is vital for safeguarding creativity while promoting societal progress
through innovation-driven economic growth. Its effective enforcement ensures a balance
between private rights and public welfare.
B. Classification of IPR
Intellectual Property Rights (IPR) are broadly categorized based on the type of intellectual
creation they protect. These classifications ensure that various forms of creativity and
innovation receive appropriate legal recognition and protection. Below is a detailed
classification of IPR:
1. Patents
• Definition: A patent is an exclusive right granted for an invention, which may
be a product or process offering a new way of doing something or providing a
new technical solution to a problem.
• Purpose: To encourage innovation by granting inventors a temporary
monopoly to exploit their inventions.
• Examples: Pharmaceutical drugs, technological innovations like smartphones,
and industrial machinery.
• Duration: 20 years from the date of filing in India.
2. Copyrights
• Definition: Copyright protects original works of authorship, including literary,
artistic, musical, and dramatic works as well as software.
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• Purpose: To safeguard the creator’s expression of ideas - but not the ideas
themselves.
• Examples: Books, films, paintings, music compositions, software codes.
• Duration: Life of the author plus 60 years in India.
3. Trademarks
• Definition: A trademark is a distinctive sign, symbol, word, or design that
identifies and distinguishes goods or services of one entity from those of others.
• Purpose: To build brand identity and prevent consumer confusion.
• Examples: The Nike "Swoosh" logo, McDonald’s "Golden Arches."
• Duration: Renewable every 10 years.
4. Industrial Designs
• Definition: Industrial designs protect the aesthetic or ornamental aspects of
an article rather than its functional features.
• Purpose: To safeguard the visual appeal of products that contribute to their
marketability.
• Examples: The shape of a Coca-Cola bottle, patterns on textiles.
• Duration: 10 years (renewable for an additional 5 years).
5. Geographical Indications (GI)
• Definition: GI tags are used to identify products originating from specific
geographical regions that possess unique qualities or reputations attributable
to their origin.
• Purpose: To protect traditional knowledge and promote rural economies.
• Examples: Darjeeling Tea, Kanchipuram Silk Sarees, Pashmina Shawls.
• Duration: 10 years (renewable).
6. Trade Secrets
• Definition: Trade secrets encompass confidential business information that
provides a competitive edge in the marketplace.
• Purpose: To protect proprietary knowledge without formal registration
requirements.
• Examples: Coca-Cola’s recipe, Google’s search algorithm.
• Duration: Indefinite as long as secrecy is maintained.
7. Plant Varieties Protection
• Definition: This protects new plant varieties developed through breeding
efforts under the Protection of Plant Varieties and Farmers’ Rights Act in India.
• Purpose: To encourage agricultural innovation while safeguarding farmers'
rights.
• Examples: Hybrid crops like Bt Cotton.
8. Layout Designs for Integrated Circuits
• Definition: Protects the unique design and configuration of semiconductor
chips.
• Purpose: To prevent unauthorized copying or reproduction of chip designs.
• Examples: Microchip layouts used in electronic devices.
Key Features Across Classifications:
1. All categories aim to incentivize creativity and innovation by granting exclusive
rights to creators or inventors for a limited period.
2. Protection is contingent on fulfilling specific criteria such as originality, novelty,
distinctiveness, or utility.
Legal Framework in India: The classification of IPR is governed by legislations:
1. The Patents Act, 1970 (amended in 2005) – Patents
2. The Copyright Act, 1957 (amended in 2012) – Copyrights
3. The Trademarks Act, 1999 – Trademarks
4. The Designs Act, 2000 – Industrial Designs
5. The Geographical Indications of Goods Act, 1999 – GI Tags
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6. The Protection of Plant Varieties and Farmers’ Rights Act, 2001 – Plant Varieties
7. The Semiconductor Integrated Circuits Layout Design Act, 2000 – Layout
Designs
Judicial Precedents:
1. Novartis AG v. Union of India [(2013) 6 SCC 1]: Clarified patentability criteria
under S3(d) of the Patents Act to prevent evergreening.
2. Tata Sons Ltd v. Manu Kosuri [AIR 2001 Del 326]: Recognized domain names
as trademarks if they serve as unique identifiers akin to traditional trademarks.
C. Importance and Need for IPR
Importance of IPR: IP Rights (IPR) are critical in fostering innovation, creativity, and
economic growth. They provide a legal framework for protecting the rights of creators,
inventors, and businesses, ensuring that their intellectual efforts are recognized and
rewarded. The significance of IPR can be understood through the following aspects:
1. Encouragement of Innovation and Creativity: IPR incentivizes individuals and
organizations to invest time, resources, and effort into creating new ideas,
products, and technologies by granting them exclusive rights over their creations.
For example, patents encourage research and development in industries like
pharmaceuticals by providing inventors with a temporary monopoly.
2. Economic Growth: IPR contributes significantly to the economy by promoting
innovation-driven industries such as IT, biotechnology, and entertainment. It
enables commercialization of intellectual assets, thereby creating jobs, generating
revenue, and enhancing global competitiveness.
3. Protection Against Infringement: IPR ensures that creators can protect their
works from unauthorized use or exploitation by others. For instance, trademarks
safeguard brand identity, while copyrights protect artistic and literary works.
4. Promotion of Fair Competition: By protecting intellectual creations, IPR fosters
a competitive environment where businesses can thrive based on innovation rather
than unfair practices like counterfeiting or piracy.
5. Cultural and Social Development:
o Copyrights play a vital role in preserving cultural heritage by protecting
literary, artistic, and musical works.
o Geographical Indications (GI) promote traditional knowledge and local
craftsmanship, benefiting rural economies.
6. Facilitation of International Trade:
o In the era of globalization, robust IPR systems are essential for attracting
foreign investments and facilitating technology transfer.
o Agreements like TRIPS harmonize IP laws globally, ensuring uniform
protection across member countries.
Need for IPR: The necessity of IPR arises from its ability to balance the interests of
creators and society while promoting innovation and economic progress.
Key reasons include:
1. Incentivizing Innovation: Without legal protection, creators may hesitate to
share their ideas due to fear of exploitation. IPR provides them with the confidence
to innovate.
2. Encouraging Investment in R&D: Industries like pharmaceuticals and
technology require substantial investment in research and development. Patents
ensure that innovators can recover these costs through exclusive rights.
3. Preventing Misappropriation: IPR prevents unauthorized use of intellectual
creations, ensuring that the benefits accrue to the rightful owners.
4. Enhancing Consumer Confidence: Trademarks assure consumers about the
quality and authenticity of products or services they purchase.
5. Boosting Global Competitiveness: Countries with strong IPR regimes attract
more foreign investments and technology collaborations.
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6. Addressing Public Interest Concerns: While protecting private rights, IPR laws
also address public interest issues like access to essential medicines through
provisions like compulsory licensing under Indian patent law (S84).
Judicial Interpretation in India: Indian courts have emphasized the importance of
balancing private rights with public welfare in several landmark cases:
1. Novartis AG v. Union of India [(2013) 6 SCC 1]: SC denied a patent for an
incremental innovation under S3(d) of the Patents Act to prevent "evergreening"
practices by pharmaceutical companies while ensuring affordable access to
medicines.
2. Gramophone Company v. Birendra Bahadur Pandey [AIR 1984 SC 667]: The
court highlighted that copyright protection is essential not only for authors but also
for societal progress by encouraging creative works.
D. Intellectual Property as a Form of Property
Understanding Intellectual Property as Property: The concept of property
traditionally refers to tangible assets like land, buildings, or goods that can be owned,
transferred, and controlled. However, intellectual property (IP) differs as it pertains to
creations of the mind—intangible assets such as inventions, literary works, artistic
creations, symbols, designs, and trade secrets. Despite its intangible nature, intellectual
property is recognized as a form of property by law because it grants exclusive rights to
creators or owners over their intellectual contributions. The World Intellectual Property
Organization (WIPO) defines intellectual property as including rights relating to:
• Literary, artistic, and scientific works.
• Inventions in all fields of human endeavour.
• Trademarks, service marks, and industrial designs.
• Protection against unfair competition and other rights resulting from intellectual
activity.
Classification of Property: Tangible vs. Intangible
Property is generally classified into two categories:
1. Tangible Property: Physical assets such as land, buildings, and goods that can
be touched and possessed.
2. Intangible Property: Non-physical assets that exist in legal or conceptual form.
Intellectual property falls under this category as it represents the ownership of
ideas, innovations, and creative expressions.
Characteristics of Intellectual Property as a Form of Property
1. Intangibility: Unlike physical property, IP exists in a non-physical form and cannot
be directly perceived or possessed. For example, a patent protects the idea behind
an invention rather than the physical product itself.
2. Exclusivity: IP laws grant exclusive rights to creators or owners to use and exploit
their creations for a specified period. These rights prevent unauthorized use by
others and ensure that the creator benefits from their work.
3. Economic Value: IP has significant commercial value because it can be licensed,
sold, or used to generate revenue. For instance, trademarks like "Coca-Cola" or
patents for pharmaceutical drugs are highly valuable assets.
4. Transferability: Like tangible property, IP rights can be transferred through sale,
licensing agreements, or inheritance.
5. Time-Bound Protection: Most forms of IP are protected for a limited duration
(e.g., patents for 20 years), after which they enter the public domain.
Legal Recognition of Intellectual Property as Property: Intellectual property is
considered a form of incorporeal or intangible property under various legal systems
worldwide. The recognition stems from the idea that creators should have control over
their intellectual contributions in the same way owners control tangible assets. This legal
recognition is rooted in both national laws (e.g., the Indian Patents Act) and international
agreements like the TRIPS Agreement under the World Trade Organization. In India, Article
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300A of the Constitution guarantees the right to property as a constitutional right. While
this primarily applies to tangible property, intellectual property is indirectly protected
through statutory frameworks such as:
• The Patents Act, 1970.
• The Copyright Act, 1957.
• The Trademarks Act, 1999.
• The Geographical Indications of Goods Act, 1999.
Judicial Perspective: Indian courts have consistently upheld intellectual property as a
form of property. For instance:
1. Entertainment Network India Ltd v. Super Cassette Industries Ltd [(2008)
13 SCC 30]: The Supreme Court recognized copyright as a form of intangible
property with significant commercial value.
2. Bajaj Auto Ltd v. TVS Motor Company Ltd [(2009) 9 SCC 797]: The court
emphasized that patents are proprietary rights granted for inventions and must be
protected like any other form of property.
Economic Significance: The treatment of intellectual property as a form of property has
profound economic implications:
1. It encourages investment in research and development by ensuring returns on
innovation.
2. It fosters creativity by rewarding authors and inventors with exclusive rights.
3. It contributes to national economic growth by enabling commercialization and
international trade.
For example:
• A patented pharmaceutical drug generates revenue for its inventor while
addressing public health needs.
• A GI tag like "Darjeeling Tea" promotes rural economies by protecting unique
regional products.
E. Ownership and Assignment of IPR
Ownership of Intellectual Property Rights: Ownership of Intellectual Property Rights
(IPR) refers to the legal entitlement of an individual, entity, or organization to control and
benefit from the intellectual property they create or acquire. It is essential to determine
ownership to establish who has the right to use, license, or transfer the intellectual
property.
1. Creators as Original Owners: The general rule is that the creator or inventor of
an intellectual property is its first owner.
o For instance:
 In copyrights, the author of a literary, artistic, or musical work is the
original owner.
 In patents, the inventor of a novel and useful invention holds
ownership.
 In trademarks, ownership belongs to the person or entity that first
uses the mark in commerce.
2. Exceptions to Creator Ownership:
o Works Made for Hire: When an employee creates intellectual property
within the scope of their employment, ownership typically vests with the
employer. Example: A software developer working for a company does not
own the code they write; it belongs to the employer.
o Commissioned Works: If a work is specifically commissioned under a
contract, ownership may be assigned to the commissioning party based on
agreement terms.
o Joint Ownership: When multiple parties contribute to creating intellectual
property with an intention to merge their contributions into a single whole,
 Page 13 of 55

they share joint ownership. Example: Co-authors of a book share copyright

ownership.
3. Statutory Provisions in India: The Indian statutes governing IPR (e.g., Patents
Act, Copyright Act, Trademarks Act) provide detailed rules on determining
ownership. For instance:
o Under S17 of the Copyright Act, 1957, authorship determines initial
ownership unless otherwise agreed upon.
o S2(y) of the Patents Act, 1970 defines true and first inventor as the rightful
owner.
Assignment of Intellectual Property Rights: Assignment refers to the transfer of
ownership rights in intellectual property from one party (assignor) to another (assignee).
It is a legal mechanism that allows creators or owners to monetize their intellectual
property by transferring their rights in exchange for consideration.
1. Types of Assignment:
o Full Assignment: The assignor transfers all rights in the intellectual
property to the assignee. Example: An author selling all rights to their book
to a publishing house.
o Partial Assignment: Only specific rights are transferred while others are
retained by the assignor. Example: Assigning only translation rights for a
book while retaining reproduction rights.
o Conditional Assignment: The transfer is subject to certain conditions
being met. Example: A patent license that becomes effective only upon
payment of royalties.
2. Requirements for Valid Assignment:
o Written Agreement: Assignments must be documented in writing and
signed by both parties. This ensures clarity and enforceability.
o Consideration: Assignments are usually made for monetary compensation
or other valuable consideration.
o Registration: Certain types of assignments (e.g., trademarks) require
registration with appropriate authorities like the Trademark Registry in
India.
3. Legal Framework in India: The assignment process is governed by specific
provisions under Indian laws:
o Copyright Act, 1957: S19 mandates that copyright assignments must
specify the rights being transferred and their duration.
o Trademarks Act, 1999: S37 allows trademark assignments but requires
them to be registered for enforceability.
o Patents Act, 1970: S68 requires patent assignments to be in writing and
duly executed.
Judicial Precedents: Indian courts have clarified several aspects regarding ownership
and assignment:
1. Narayanan v. Suryakant Balakrishna Joshi (AIR 2005 SC 2313): The
Supreme Court held that an employer owns intellectual property created by
employees during employment unless there is an agreement stating otherwise.
2. Gramophone Co. v. Birendra Bahadur Pandey (AIR 1984 SC 667): The court
emphasized that assignments must clearly define the scope and duration of
transferred rights.
3. Eastern Book Company v. D.B. Modak [(2008) 1 SCC 1]: Clarified that
originality in copyright law requires skill and judgment; thus, only original creators
can claim initial ownership unless assigned otherwise.
Importance of Ownership and Assignment
1. Economic Benefits: Ownership allows creators to monetize their intellectual
efforts through licensing or assignment agreements.
 Page 14 of 55

2. Clarity in Rights: Proper documentation of ownership and assignment avoids

disputes over usage rights.
3. Encouraging Innovation: Clear rules on ownership and assignment incentivize
creators and investors by ensuring legal protection and financial returns.
F. Case Studies on IPR Infringement
Understanding Intellectual Property Rights (IPR) infringement through real-life case
studies provides clarity on how laws are applied and enforced. Below are notable case
studies from India and globally, highlighting various types of IPR violations and their legal
implications.
1. Copyright Infringement: R.G. Anand v. Deluxe Films
Citation: AIR 1978 SC 1613
• Facts: R.G. Anand, a playwright, alleged that the movie New Delhi produced
by Deluxe Films was a copy of his play Hum Hindustani. He argued that the
storyline, characters, and themes were substantially similar to his work.
• Issue: Whether the movie constituted copyright infringement.
• Judgment: The SC held that mere similarity in ideas does not amount to
copyright infringement unless there is substantial reproduction of the
expression of the idea. The court ruled in favor of Deluxe Films, stating that
the movie was an independent work.
• Principle: Copyright protects the expression of ideas, not the ideas
themselves.
2. Trademark Infringement: Tata Sons Ltd v. Manu Kosuri
Citation: AIR 2001 Del 326
• Facts: The defendant registered domain names like [Link] and
[Link], which were deceptively similar to the trademarks owned by
Tata Sons Ltd.
• Issue: Whether registering domain names similar to a trademark
constitutes infringement.
• Judgment: The Delhi High Court held that domain names function as
trademarks in cyberspace and granted an injunction against the defendant
for trademark infringement and passing off.
• Principle: Trademark protection extends to domain names, ensuring brand
identity in cyberspace.
3. Patent Infringement: Novartis AG v. Union of India
Citation: (2013) 6 SCC 1
• Facts: Novartis sought a patent for its cancer drug Glivec, claiming it was
a new invention. The Indian Patent Office rejected the application under
S3(d) of the Patents Act, which prevents patents for incremental innovations
unless they show enhanced efficacy.
• Issue: Whether Glivec qualified as a patentable invention under Indian law.
• Judgment: The Supreme Court upheld the rejection, stating that Novartis
failed to demonstrate significant therapeutic efficacy over existing drugs.
This decision prioritized public health over monopolistic practices.
• Principle: S3(d) prevents "evergreening" by requiring substantial
improvement in efficacy for patentability.
4. Geographical Indication (GI) Violation: Darjeeling Tea Case
• Facts: Unauthorized use of "Darjeeling Tea" by foreign tea producers diluted
its reputation as a GI-tagged product.
• Issue: Whether unauthorized use of a GI tag constitutes infringement.
• Resolution: The Tea Board of India successfully enforced GI rights
internationally, ensuring only authentic tea from Darjeeling could use the
name.
 Page 15 of 55

• Principle: GI tags protect products with unique qualities tied to specific

regions.
5. Trade Secret Misappropriation: Coca-Cola Recipe Theft Attempt
• Facts: A former Coca-Cola employee attempted to sell confidential trade
secrets related to Coca-Cola's formula to PepsiCo.
• Issue: Whether trade secret theft constitutes actionable misappropriation
under IPR laws.
• Outcome: PepsiCo reported the incident to Coca-Cola, and legal action was
taken against the employee for violating trade secret protections.
• Principle: Trade secrets are protected under confidentiality agreements
and laws against misappropriation.
6. Design Infringement: Honda Motors v. Shriram Automobiles
• Facts: Honda alleged that Shriram Automobiles copied its scooter design
for their product.
• Issue: Whether copying an industrial design without authorization amounts
to infringement.
• Judgment: The court held that Shriram Automobiles had infringed Honda’s
registered design and granted an injunction against further production.
• Principle: Registered industrial designs are protected against unauthorized
reproduction.
Key Takeaways from Case Studies
1. Each type of intellectual property—copyrights, trademarks, patents,
designs, trade secrets, and geographical indications—has specific
protections under law.
2. Courts consider substantial similarity, likelihood of confusion, and economic
harm when adjudicating IPR disputes.
3. Indian courts have adopted a balanced approach by protecting IPR while
ensuring public interest (e.g., access to medicines in Novartis case).
4. Global cooperation is essential for enforcing IPR across borders, as seen in
GI protection cases like Darjeeling Tea.

Module 2: Copyrights
A. Definition and Scope of Copyright
Definition of Copyright: Copyright is a legal right granted to the creators of original
works of authorship, such as literary, dramatic, musical, artistic works, and more. It
provides protection to the expression of ideas fixed in a tangible medium, ensuring
that the creator has exclusive rights over their work for a specific period. In India,
copyright is governed by the Copyright Act, 1957, which defines copyright under S14
as a bundle of exclusive rights conferred upon the creator or owner of a work.
According to S13 of the Act, copyright protection applies to:
1. Original Literary Works: Books, articles, computer programs, etc.
2. Dramatic Works: Plays and scripts.
3. Musical Works: Compositions excluding sound recordings.
4. Artistic Works: Paintings, drawings, photographs, sculptures, etc.
5. Cinematographic Films: Visual recordings with or without sound.
6. Sound Recordings: Audio recordings of songs or other sounds.
The essence of copyright lies in protecting the expression of ideas rather than the ideas
themselves.
Scope of Copyright: The scope of copyright extends to granting exclusive rights to
the creator or owner over their work. These rights are not absolute but subject to
limitations and exceptions under Indian law. The key features of the scope include:
1. Exclusive Rights (S14): The copyright owner has the sole right to:
o Reproduce the work in any material form.
 Page 16 of 55

o Issue copies of the work to the public.

o Perform or communicate the work publicly.
o Make adaptations or translations.
o Prepare derivative works based on the original work.
2. Duration of Protection (S22): Copyright protection lasts for:
o The lifetime of the author plus 60 years after their death for literary,
dramatic, musical, and artistic works.
o For cinematographic films and sound recordings, it lasts for 60 years from
publication.
3. Moral Rights (S57): Authors have moral rights to claim authorship and object
to distortion or mutilation of their work that could harm their reputation.
4. Limitations and Exceptions (Fair Use Doctrine): Certain uses are
permitted without infringement under S52 of the Act:
o Private study or research.
o Criticism or review.
o Reporting current events.
o Educational purposes in institutions.
5. International Scope: India is a signatory to international treaties like the
Berne Convention and TRIPS Agreement, which ensure that Indian copyrights
are recognized globally and vice versa.
Judicial Interpretation: Indian courts have played a significant role in defining and
expanding the scope of copyright:
1. R.G. Anand v. Deluxe Films (AIR 1978 SC 1613): The Supreme Court held
that copyright protects only the expression of an idea and not the idea itself
unless there is substantial similarity in expression.
2. Eastern Book Company v. D.B. Modak [(2008) 1 SCC 1]: The court
clarified that originality under copyright law requires skill and judgment beyond
mere labor or effort.
3. Gramophone Co. v. Birendra Bahadur Pandey (AIR 1984 SC 667):
Highlighted that unauthorized importation and distribution of copyrighted works
constitute infringement.
Significance: The definition and scope of copyright ensure that creators are
incentivized for their intellectual efforts while balancing societal needs for access to
knowledge and culture. By granting exclusive rights with reasonable limitations,
copyright law fosters creativity, innovation, and economic growth while protecting
public interest through fair use provisions
B. Works in which Copyright Subsists
Legal Basis: The Copyright Act, 1957 governs the subsistence of copyright in India.
S13 of the Act explicitly outlines the types of works eligible for copyright protection.
Copyright applies to original works that are fixed in a tangible medium and meet the
criteria of originality and creativity.
Categories of Works Protected by Copyright: Under S13(1) of the Copyright Act,
1957, copyright subsists in the following categories:
1. Original Literary, Dramatic, and Musical Works:
o Literary Works: Includes books, articles, poems, computer programs,
compilations, and tables. Example: Novels like The God of Small Things
by Arundhati Roy.
o Dramatic Works: Includes scripts for plays, screenplays, or
choreographed performances. Example: The script for a Bollywood
movie like Lagaan.
o Musical Works: Refers to compositions consisting of music but
excludes lyrics or sound recordings. Example: A musical score composed
by A.R. Rahman.
 Page 17 of 55

2. Artistic Works: Includes paintings, sculptures, drawings (including maps and

charts), photographs, and architectural designs. Example: M.F. Husain's
paintings or the design of iconic buildings like the Lotus Temple.
3. Cinematographic Films: Refers to visual recordings with or without sound
that can be reproduced. Example: Indian movies like Sholay.
4. Sound Recordings: Includes recordings of sounds from which they can be
reproduced regardless of the medium used. Example: Audio recordings of songs
by Lata Mangeshkar.
5. Government and International Works: Copyright also extends to works
created by public sector undertakings, government publications, and
international organizations as per S13(2).
Conditions for Copyright Protection: For copyright to subsist in a work:
1. The work must be original (not copied from another source).
2. It must be fixed in a tangible medium (written on paper or recorded digitally).
3. It must fall under one of the protected categories mentioned above.
Exclusions from Copyright Protection
S13(3) explicitly excludes certain works from copyright protection:
1. Ideas, Procedures, or Methods: Copyright does not protect ideas but only
their expression. Example: The concept of a love story is not protected; only its
specific expression in a novel or film is protected.
2. Titles, Names, and Short Phrases: These are considered too trivial to
warrant copyright protection unless trademarked.
3. Government Acts and Judicial Decisions: Official texts such as laws,
judgments, and government notifications are excluded.
4. Public Domain Works: Works that have entered the public domain due to the
expiration of copyright protection are not protected.
Judicial Precedents
1. R.G. Anand v. Deluxe Films (AIR 1978 SC 1613): The Supreme Court
clarified that copyright protects only the expression of ideas and not ideas
themselves unless there is substantial similarity in expression.
2. Eastern Book Company v. D.B. Modak [(2008) 1 SCC 1]: The court held
that originality requires skill and judgment beyond mere labor or effort for
literary compilations like law reports to qualify for copyright protection.

C. Term of Copyright (e.g., Artistic, Musical, Literary Works)

The term of copyright refers to the duration for which copyright protection subsists in
a particular work. In India, the term of copyright is governed by Chapter V (Sections
22 to 29) of the Copyright Act, 1957. The duration varies depending on the type of
work and its authorship.
1. Literary, Dramatic, Musical, and Artistic Works
• Duration: Copyright subsists for the lifetime of the author plus 60 years.
• The 60-year period begins from the start of the calendar year following the year
in which the author dies.
• Example: If an author dies in 2025, copyright protection will last until
December 31, 2085.
• Joint Authorship: In cases where a work is created by multiple authors, the
term is calculated from the death of the last surviving author.
2. Cinematographic Films
• Duration: Copyright lasts for 60 years from the beginning of the calendar year
following the year in which the film was first published.
• Example: If a film is published in 2025, its copyright will expire on December
31, 2085.
3. Sound Recordings
 Page 18 of 55

• Duration: Copyright protection extends for 60 years from the beginning of the
calendar year following the year in which the sound recording was first
published.
• Example: If a sound recording is published in 2025, its copyright will expire on
December 31, 2085.
4. Anonymous and Pseudonymous Works
• Duration: For works published anonymously or under a pseudonym:
o Copyright lasts for 60 years from the beginning of the calendar year
following the year of publication.
o If the identity of the author becomes known during this period, then it
is treated as a literary work authored by an individual (lifetime plus 60
years).
5. Posthumous Works
• Duration: For works published after the death of an author:
o Copyright subsists for 60 years from the beginning of the calendar year
following its first publication.
6. Government Works: As per S28:
o Copyright in works created or published by government entities lasts for
60 years from the beginning of the calendar year following publication.
7. International Organizations
• Works created by international organizations recognized by India enjoy
copyright protection for 60 years from publication unless otherwise specified by
treaties or agreements.
Important Provisions and Clarifications
1. The term begins on January 1 of the year immediately following:
o The author's death (for literary, dramatic, musical, or artistic works).
o The date of first publication (for cinematographic films and sound
recordings).
2. Once copyright expires: The work enters the public domain, meaning it can be
used freely by anyone without seeking permission.
3. For joint authorship: The term is calculated based on the death of the last
surviving author.
Judicial Interpretation
1. Gramophone Co. v. Birendra Bahadur Pandey (AIR 1984 SC 667): The
court emphasized that copyright protection is time-bound and ensures that
works eventually enter the public domain to benefit society.
2. Amarnath Sehgal v. Union of India (2005): Highlighted that the moral
rights (e.g., attribution) may continue even after copyright has expired but are
distinct from economic rights tied to copyright duration.
D. Rights of Authors and Performers
The Copyright Act, 1957 in India provides a comprehensive framework for the rights
of authors and performers. These rights ensure that creators and performers are
adequately rewarded for their intellectual and creative efforts, while also protecting
their moral and economic interests.
1. Rights of Authors: Under S14 of the Copyright Act, 1957, authors are granted
exclusive rights over their works. These rights are broadly categorized into two types:
economic rights and moral rights.
A. Economic Rights: Economic rights allow the author to commercially exploit
their work. These include:
1. Reproduction Rights: The right to reproduce the work in any material
form. Example: Printing copies of a book or creating digital versions.
2. Adaptation Rights: The right to create derivative works based on the
original. Example: Turning a novel into a screenplay.
 Page 19 of 55

3. Distribution Rights: The right to distribute copies of the work to the public
by sale, lease, or rental. Example: Selling physical or digital copies of a
music album.
4. Public Performance Rights: The right to perform the work publicly or
communicate it to the public. Example: Performing a play or broadcasting a
song on television.
5. Translation and Communication Rights: The right to translate the work
into other languages or communicate it through any medium. Example:
Translating a book into another language or streaming it online.
B. Moral Rights: S57 of the Copyright Act provides authors with moral rights,
which protect their personal connection to their work:
1. Right of Paternity: The right to claim authorship of the work. Example:
An author can demand acknowledgment as the creator in all reproductions.
2. Right of Integrity: The right to object to any distortion, mutilation, or
modification that harms the author's reputation. Example: Preventing
unauthorized edits to a film script that misrepresent its intended message.
2. Rights of Performers: Performers' rights are specifically addressed under Sections
38 and 38A of the Copyright Act, 1957. These rights recognize the contributions of
singers, actors, dancers, musicians, and other performers in creative works.
A. Economic Rights: Performers have exclusive rights over their performances,
which include:
1. Right to Make Sound or Visual Recordings: Performers have the right
to control recordings of their live performances. Example: A singer can
authorize or prohibit recording their concert.
2. Right to Reproduce Performances: The right to reproduce recordings of
their performances in any medium. Example: Releasing an audio recording
of a live music performance.
3. Right to Broadcast Performances: The right to broadcast or
communicate performances to the public. Example: Streaming a live dance
performance on television or online platforms.
4. Right to Issue Copies: Performers have the right to issue copies of
recordings for commercial purposes. Example: Selling DVDs or digital
downloads of a recorded stage play.
B. Moral Rights: S38B grants performers moral rights similar to those enjoyed by
authors:
1. Right Against Unauthorized Use: Performers can object if their
performance is used without consent in a manner that harms their
reputation.
2. Right Against Distortion: They can prevent any distortion or modification
that could damage their Honor or reputation.
Duration of Rights
• For authors, economic rights last for the lifetime of the author plus 60 years
after death (S22).
• For performers, economic rights last for 50 years from the year of performance
(S38A(2)).
Judicial Precedents
1. Amarnath Sehgal v. Union of India (2005): The Delhi High Court upheld an
artist’s moral rights when his sculpture was removed from its original location
without consent, emphasizing that moral rights continue even after economic
rights expire.
2. Indian Performing Right Society Ltd v. Eastern Indian Motion Pictures
Association (1977): The Supreme Court clarified that copyright includes both
 Page 20 of 55

economic and moral rights, ensuring fair compensation for creators while
protecting their personal connection with their works.
E. Copyright Infringement and Exceptions
1. Copyright Infringement: Copyright infringement occurs when any of the exclusive
rights granted to a copyright owner under the Copyright Act, 1957 are violated without
authorization. These rights, as outlined in S14 of the Act, include reproduction,
distribution, public performance, adaptation, and translation of the copyrighted work.
Acts Constituting Infringement (S51): A person is said to infringe copyright if:
1. Unauthorized Use: They do anything that violates the exclusive rights of
the copyright owner. Example: Reproducing a book without permission.
2. Importation: Importing infringing copies of a work into India for sale or
distribution.
3. Selling or Distributing Infringing Copies: Selling, hiring, or distributing
copies that infringe on the copyright owner's rights.
4. Public Performance Without Authorization: Performing a copyrighted
work publicly without obtaining the necessary license.
5. Secondary Infringement: Possessing or dealing with infringing copies
knowingly for commercial purposes.
Key Elements of Infringement
• The work must be copyrighted.
• The alleged infringer must have used the work without permission.
• The act must involve substantial copying or reproduction of the original
work.
Landmark Case on Copyright Infringement
R.G. Anand v. Deluxe Films (AIR 1978 SC 1613): The Supreme Court held
that copyright protects only the expression of an idea and not the idea itself
unless there is substantial similarity in expression.
2. Exceptions to Copyright Infringement: The Copyright Act, 1957 provides certain
exceptions to infringement under S52. These exceptions are based on the principle of
"fair use" or "fair dealing," which allows limited use of copyrighted works without
permission in specific circumstances.
Fair Dealing Exceptions
1. Private Use and Research: Use of copyrighted works for private study or
research purposes. Example: Copying a few pages from a book for academic
research.
2. Criticism or Review: Using copyrighted material for criticism, review, or
commentary. Example: Quoting excerpts from a novel in a book review.
3. Reporting Current Events: Use of copyrighted works for reporting news or
current events in print, broadcast, or other media. Example: Using a
photograph in a news report about an ongoing event.
4. Judicial Proceedings: Reproduction of works for judicial proceedings or legal
purposes is exempted.
Specific Educational and Public Uses
1. Educational Institutions: Reproduction by teachers or students for
educational purposes. Example: Displaying parts of a textbook during
classroom teaching.
2. Public Libraries and Archives: Making copies for preservation purposes or
replacing lost/damaged copies.
3. Public Performances by Non-Profit Organizations: Performances given by
charitable organizations for non-commercial purposes are permitted.
4. Use in Legislative and Governmental Proceedings: Use of copyrighted
material in parliamentary debates or government reports is not considered
infringement.
 Page 21 of 55

Technological Exceptions
1. Temporary Storage by Intermediaries: Temporary storage of data by
internet service providers (ISPs) as part of their service is exempted.
2. Reverse Engineering for Software Interoperability: Reproducing software
code to achieve compatibility with other programs is allowed under specific
conditions.
Judicial Precedents on Exceptions
1. Eastern Book Company v. D.B. Modak [(2008) 1 SCC 1]: The court
clarified that fair dealing requires skill and judgment but does not allow
wholesale copying under the guise of criticism or review.
2. Academy of General Education v. B. Malini Mallya (2009): Held that
reproduction for educational purposes must be reasonable and limited to what
is necessary for teaching.
Conclusion: The balance between protecting creators' rights and ensuring public
access to knowledge is at the core of copyright law in India. While infringement laws
safeguard creators from unauthorized exploitation, exceptions like fair dealing ensure
that societal needs such as education, research, and news reporting are not hindered
by overly restrictive copyright enforcement mechanisms.
F. Fair Use Provisions under S52 of the Copyright Act, 1957
Introduction: The Copyright Act, 1957, under S52, provides for certain exceptions to
copyright infringement. These exceptions are based on the principle of "fair use" or
"fair dealing," which allows limited use of copyrighted works without requiring the
permission of the copyright owner. The objective of these provisions is to strike a
balance between protecting the rights of creators and ensuring public access to
knowledge and creativity for purposes such as education, research, and criticism.
Key Fair Use Provisions under S52: Specific acts that do not constitute copyright
infringement include:
1. Private Use and Research: The use of copyrighted works for private study or
research is permitted. Example: A student photocopying a few pages of a book
for personal study.
2. Criticism or Review: Reproduction of a copyrighted work for criticism or
review purposes is allowed, provided proper acknowledgment is given.
Example: Quoting excerpts from a novel in a book review.
3. Reporting Current Events: Use of copyrighted material in reporting current
events through newspapers, magazines, or broadcasts is permissible. Example:
Using a photograph in a news article about an ongoing event.
4. Judicial and Legislative Proceedings: Reproduction of works for judicial
proceedings or legislative purposes is exempted. Example: Using copyrighted
material as evidence in court.
5. Educational Institutions: Performance or reproduction of copyrighted works
in educational institutions for instructional purposes is allowed. Example: A
teacher displaying parts of a textbook during classroom teaching.
6. Public Libraries and Archives: Making copies for preservation purposes or
replacing lost/damaged copies is permitted. Example: A library creating a
backup copy of an old manuscript.
7. Public Performances by Non-Profit Organizations: Public performances by
charitable organizations for non-commercial purposes are exempted. Example:
A school performing a play without charging an admission fee.
8. Reproduction for Official Use by Government: Use of copyrighted works by
the government for official purposes is allowed. Example: Reproducing material
for government reports.
 Page 22 of 55

9. Reverse Engineering for Interoperability: Reproduction of software code

to achieve compatibility with other programs is permitted under specific
conditions.
10. Temporary Storage by Intermediaries: Temporary storage or caching by
internet service providers (ISPs) as part of their service is exempted.
11. Reproduction in Connection with Public Access to Information:
Reproduction of works published in official gazettes, acts, rules, regulations,
notifications, etc., is allowed. Example: Publishing legal texts in public interest.
Judicial Interpretation
Indian courts have clarified the scope and application of fair use provisions:
1. Eastern Book Company v. D.B. Modak [(2008) 1 SCC 1]: The Supreme
Court held that fair dealing requires skill and judgment but does not allow
wholesale copying under the guise of criticism or review.
2. Academy of General Education v. B. Malini Mallya (2009): The court ruled
that reproduction for educational purposes must be reasonable and limited to
what is necessary for teaching.
3. Civic Chandran v. Ammini Amma (1996): The Kerala High Court held that
fair dealing includes using copyrighted material if it serves public interest
without harming the original work's market value.
Limitations on Fair Use: While S52 allows certain uses, these exceptions are subject
to limitations:
• The use must not conflict with the normal exploitation of the work.
• It should not unreasonably prejudice the legitimate interests of the copyright
owner.
• Proper acknowledgment must be given to the author where applicable.
G. Ownership of Copyright
Legal Framework: The ownership of copyright in India is governed by S17 of the
Copyright Act, 1957. It establishes the general rule that the author of a work is the
first owner of the copyright, subject to certain exceptions. Ownership of copyright
encompasses both economic and moral rights, granting the owner control over how
their work is used and ensuring recognition for their creative contributions.
1. General Rule: Author as the First Owner
• The author of a work is generally considered the first owner of the copyright.
• The term "author" varies based on the type of work:
o Literary or Artistic Work: The individual who creates it.
o Photograph: The person who takes the photograph.
o Cinematographic Film: The producer.
o Sound Recording: The producer.
o Government Work: The government is deemed the first owner.
o Work by International Organizations: The organization is
considered the owner.
2. Exceptions to Author Ownership: Ownership may deviate from the general rule
in specific situations:
1. Works Created Under Employment (Work for Hire): If a work is created
during the course of employment under a contract, the employer is deemed the
first owner unless otherwise agreed. Example: A software developer employed
by a company creates code as part of their job; the company owns the
copyright.
2. Commissioned Works: When a work is specifically commissioned (e.g.,
portraits, architectural plans), ownership depends on contractual terms
between parties.
3. Government Works (S17(c)): For works created under government direction
or control, the government is deemed the first owner unless otherwise agreed.
 Page 23 of 55

4. Works by Public Undertakings (S17(d)): Public sector undertakings are

considered owners if works are created under their control or direction.
5. Anonymous and Pseudonymous Works (S17(e)): In cases where
authorship is unknown, ownership rests with the publisher until the author's
identity becomes known.
6. Joint Authorship (S2(z)): If two or more individuals collaborate with an
intention to merge their contributions into a single whole, they are considered
joint owners of copyright.
3. Rights of Copyright Owners: Ownership includes both economic and moral rights:
Economic Rights (S14):
• Reproduction of work in any material form.
• Distribution or sale of copies.
• Public performance or communication.
• Adaptation and translation rights.
Moral Rights (S57):
• Right to claim authorship.
• Right to prevent distortion or mutilation that harms reputation.
4. Transfer and Assignment of Copyright: Ownership can be transferred through
assignment or licensing:
1. Assignment (S18): Copyright can be assigned wholly or partially to another
party through a written agreement specifying terms, duration, and territory.
Example: An author assigns publishing rights to a publisher for a specific period.
2. Licensing (S30): A license allows others to use copyrighted material under
specific conditions without transferring ownership. Example: Licensing music
for use in advertisements.
3. Transfer upon Death: Copyright can be inherited by legal heirs after the death
of the original owner.
Judicial Precedents
1. Amarnath Sehgal v. Union of India (2005): The Delhi High Court upheld an
artist's moral rights when his sculpture was removed from its original location
without his consent.
2. Indian Performing Right Society Ltd v. Eastern Indian Motion Pictures
Association (1977): Clarified that authors retain ownership unless explicitly
assigned, even when works are used commercially by others.
3. Najma Heptulla v. Orient Longman Ltd (1989): Highlighted that contracts
must clearly specify ownership terms in commissioned works; otherwise,
authors retain copyright.
H. Copyright Societies
Definition of Copyright Societies: A copyright society is a collective administration
organization formed under S33 of the Copyright Act, 1957. It is registered to manage
and protect the rights of authors and other copyright owners. These societies act as
intermediaries between copyright owners and users, ensuring proper licensing,
collection of royalties, and enforcement of rights. As per S2(ffd) of the Act, a "Copyright
Society" refers to a society registered under S33(3) to administer the rights of authors
or other owners in literary, dramatic, musical, artistic works, cinematographic films, or
sound recordings.
Functions of Copyright Societies: The primary role of copyright societies is to
simplify the management of copyrights for both creators and users. Their functions
include:
1. Granting Licenses: They issue licenses for reproduction, performance, or
communication of copyrighted works to the public. Example: Licensing music
for use in films or advertisements.
 Page 24 of 55

2. Collecting Royalties: Copyright societies collect royalties on behalf of their

members (authors and copyright owners) from licensees who use their works.
3. Distributing Royalties: After deducting administrative expenses (not
exceeding 15% as per S34), societies distribute the remaining royalties among
their members proportionate to the use of their works.
4. Enforcing Copyrights: They monitor unauthorized use of copyrighted works
and initiate legal action against infringement.
5. International Collaboration: Copyright societies can enter into reciprocal
agreements with foreign societies to collect royalties for Indian works used
abroad and vice versa.
6. Maintaining Records: They maintain detailed records of copyrighted works
and their usage to ensure transparency.
Registration of Copyright Societies: The registration process for copyright societies
is governed by S33 of the Copyright Act, 1957 and Chapter XI of the Copyright Rules,
2013. Key provisions include:
1. Eligibility: A minimum of 7 members (authors or copyright owners) is required
to form a society. Only 1 society can be registered for a particular category of
work (e.g., literary works, musical works).
2. Application Process: An application must be filed with the Registrar of
Copyrights in Form VIII. The Registrar forwards it to the Central Government
for approval.
3. Validity and Renewal: Registration is granted for 5 years and can be renewed
periodically upon application.
4. Conditions for Registration: The Central Government considers factors such
as public interest, competence of applicants, and benefits to authors before
granting registration.
Powers of Copyright Societies: Under S34, copyright societies are vested with
several powers:
1. Exclusive Authorization: Societies can accept exclusive authorization from
authors or owners to administer their rights by issuing licenses or collecting
fees.
2. Withdrawal Rights: Authors or owners can withdraw authorization without
affecting existing contracts with the society.
3. Legal Action: Societies can initiate legal proceedings against infringement on
behalf of their members.
4. Fee Collection and Distribution: They are authorized to collect fees for
licenses issued and distribute them equitably among members based on usage.
5. Representation Agreements: Societies can enter into agreements with
foreign organizations for reciprocal administration of rights.
Control and Governance: As per S35, copyright societies are subject to collective
control by their members (authors and owners). Key governance provisions include:
1. Equal representation in governing bodies between authors and other rights
holders.
2. Approval from members for procedures related to fee collection, distribution,
and utilization.
3. Submission of annual reports or returns detailing activities to the Registrar of
Copyrights under S36.
Active Copyright Societies in India
Currently, there are three major registered copyright societies in India:
1. Indian Performing Rights Society (IPRS):
o Manages rights related to musical works and lyrics.
o Issues licenses for public performances and collects royalties from
broadcasters, event organizers, etc.
 Page 25 of 55

2. Phonographic Performance Limited (PPL):

o Administers rights over sound recordings.
o Issues licenses for playing recorded music at public events or
broadcasting it via radio/TV.
3. Indian Reprographic Rights Organisation (IRRO):
o Protects rights related to literary works.
o Issues licenses for photocopying or digital reproduction in educational
institutions or businesses.
Judicial Precedents
1. Indian Performing Right Society Ltd v. Eastern Indian Motion Pictures
Association (1977): The Supreme Court upheld that copyright societies play
a crucial role in ensuring fair compensation for creators while balancing public
access through licensing mechanisms.
2. Super Cassettes Industries Ltd v. Music Broadcast Pvt Ltd (2012):
Highlighted that copyright societies must act transparently while collecting
royalties on behalf of creators.
Significance of Copyright Societies
1. Simplifies Licensing: Users can obtain licenses from a single entity rather
than negotiating with individual authors.
2. Ensures Fair Compensation: Creators receive royalties proportional to the
usage of their work.
3. Protects Rights: Societies actively monitor unauthorized use and enforce
copyrights through legal action.
4. Facilitates International Royalties: Reciprocal agreements with foreign
societies ensure global protection and revenue collection.

Module 3: Patents
A. Definition and Scope of Patents
Definition of Patent: A patent is a statutory right granted to an inventor or applicant by
the government, which allows the patent holder to exclude others from making, using,
selling, or distributing the patented invention without permission for a specific period. In
India, patents are governed by the Patents Act, 1970, as amended by subsequent
legislation, including the Patents (Amendment) Act, 2005. As per S2(1)(m) of the Patents
Act, 1970, a patent is defined as "a patent for any invention granted under this Act." The
term "invention" is further defined under S2(1)(j) as "a new product or process involving
an inventive step and capable of industrial application." Key elements of a patent include:
1. Novelty: The invention must be new and not disclosed to the public in any form.
2. Inventive Step: The invention must involve technical advancement or economic
significance that is not obvious to a person skilled in the art.
3. Industrial Applicability: The invention must be capable of being used in an
industry.
Scope of Patents: The scope of patents refers to the range of rights and protections
granted to patent holders under the law. It also includes the types of inventions that can
be patented and the limitations imposed by law.
1. Rights Conferred by a Patent S48: A patent grants the patentee exclusive
rights to:
• Make, use, sell, or distribute the patented product.
• Use or exercise the patented process.
• Prevent others from exploiting the patented invention without authorization.
These rights are territorial and time-bound (20 years from the date of filing S53).
2. Types of Inventions Eligible for Patent Protection: According to Indian law
and international standards (e.g., TRIPS Agreement), patents may be granted for:
 Page 26 of 55

1. Products: Machines, devices, tools, pharmaceutical compositions.

Example: A new drug formulation for treating cancer.
2. Processes: Methods or processes for manufacturing a product. Example:
A novel method for producing biodegradable plastics.
3. Exclusions from Patentability: Certain inventions are excluded from patent
protection under S3 and S4 of the Patents Act. These include:
• Frivolous inventions or those contrary to public morality (S3(a)).
• Mere discoveries of scientific principles (S3(c)).
• Mathematical or business methods (S3(k)).
• Traditional knowledge or agricultural methods (S3(p)).
• Atomic energy-related inventions (S4).
4. Limitations on Patent Rights: While patents grant exclusive rights, these are
subject to certain limitations:
1. Compulsory Licensing: Under S84–92A, compulsory licenses may be
issued in cases where patented products are not reasonably affordable or
accessible to the public. Example: The case of Natco Pharma Ltd v. Bayer
Corporation (2012), where Natco was granted a compulsory license for
Bayer's cancer drug Nexavar due to its high cost.
2. Research and Experimentation Exception: S47 allows patented
inventions to be used for educational or research purposes without
constituting infringement.
3. Government Use: S100 permits government use of patented inventions
without authorization during emergencies.
Judicial Precedents on Scope
1. Novartis AG v. Union of India [(2013) 6 SCC 1]: The Supreme Court clarified
that incremental innovations (evergreening) do not qualify for patents unless they
show significant therapeutic efficacy under S3(d).
2. Bajaj Auto Ltd v. TVS Motor Company Ltd [(2009) 9 SCC 797]: The court
emphasized that patent protection extends only to what is specifically claimed in
the patent specification.
Significance: The definition and scope of patents ensure that inventors are incentivized
while balancing societal interests such as access to technology and public health. By
granting exclusive rights with reasonable limitations, patents foster innovation and
contribute to economic growth while ensuring that knowledge ultimately benefits society
after entering the public domain.
B. Patentable and Non-Patentable Inventions
The criteria for determining whether an invention is patentable or non-patentable are
governed by the Patents Act, 1970 (as amended) in India. While patents are granted
to encourage innovation, the law also imposes restrictions to ensure that patents are
not granted for ideas or inventions that are contrary to public interest, morality, or
existing knowledge.
1. Patentable Inventions: An invention must meet the following criteria under
S2(1)(j) of the Patents Act, 1970 to qualify as patentable:
A. Criteria for Patentability
1. Novelty (Newness): The invention must be new and not disclosed to the
public in any form (written, oral, or otherwise) before the filing date of the
patent application. Example: A new drug formulation for treating a disease.
2. Inventive Step (Non-Obviousness): The invention must involve a
technical advancement or economic significance that is not obvious to a
person skilled in the relevant field. Example: A unique mechanism in a
machine that improves its efficiency.
 Page 27 of 55

3. Industrial Applicability: The invention must be capable of being

manufactured or used in an industry. Example: A method for producing
biodegradable plastic.
4. Subject Matter: The invention must fall within the categories of patentable
subject matter as defined under Indian law.
B. Examples of Patentable Inventions
1. Products such as machines, devices, pharmaceuticals, and chemical
compositions.
2. Processes such as methods for manufacturing goods or improving industrial
techniques.
3. Biotechnological inventions like genetically modified organisms (subject to
ethical considerations).
4. Software integrated with hardware that provides a technical solution.
2. Non-Patentable Inventions: Under S3 & 4, certain inventions are specifically
excluded from patentability. These exclusions ensure that patents are not granted for
discoveries, abstract ideas, or inventions that conflict with public policy or morality.
A. Exclusions under S3
1. Frivolous Inventions (S3(a)): Inventions that are frivolous or contrary
to well-established natural laws. Example: A machine claiming perpetual
motion.
2. Inventions Contrary to Public Morality (S3(b)): Inventions whose use
could harm public health, morality, or the environment. Example: A device
designed solely for illegal activities.
3. Mere Discovery (S3(c)): Discoveries of scientific principles or naturally
occurring substances. Example: Discovery of a new species of plant.
4. Abstract Theories and Algorithms (S3(k)): Mathematical methods,
business methods, and algorithms are not patentable unless integrated with
hardware providing a technical effect. Example: A standalone algorithm for
data encryption.
5. Traditional Knowledge (S3(p)): Inventions based on traditional
knowledge or known properties of substances. Example: Use of turmeric for
wound healing (already part of traditional knowledge).
6. Plants and Animals (S3(j)): Plants and animals in whole or any part
thereof other than microorganisms are excluded from patentability.
Example: Genetic modification of plants without industrial application.
7. Methods of Medical Treatment (S3(i)): Methods of treatment for
humans or animals are non-patentable. Example: A surgical procedure for
treating heart disease.
8. Aesthetic Creations (S3(d) and S3(f)): Mere rearrangements or
duplication of known devices leading to no significant improvement are
excluded. Example: A cosmetic process with no technical advancement.
B. Exclusions under S4: Inventions related to atomic energy cannot be patented
under Indian law due to national security concerns.
Judicial Precedents
1. Novartis AG v. Union of India [(2013) 6 SCC 1]: The Supreme Court denied
a patent for Glivec under S3(d), emphasizing that incremental innovations must
demonstrate enhanced efficacy to qualify as patentable.
2. Dimminaco AG v. Controller of Patents & Designs (2002): The Calcutta
High Court held that a process involving microorganisms is patentable if it
meets the criteria of novelty, inventive step, and industrial applicability.
C. Procedure for Filing a Patent Application
The procedure for filing a patent application in India is governed by the Patents Act,
1970, as amended, and the Patent Rules, 2003. The process involves several stages,
 Page 28 of 55

from drafting the application to its examination and eventual grant. Below is a detailed
explanation of the procedure:
1. Pre-Filing Considerations: Before filing a patent application, the following steps
are essential:
1. Determine Patentability: Conduct a prior art search to ensure the invention
is novel, involves an inventive step, and is capable of industrial application. This
can be done using resources like the Indian Patent Office database or
international databases like WIPO's PATENTSCOPE.
2. Prepare the Invention Disclosure: Draft a detailed description of the
invention, including its technical field, background, objectives, and advantages.
3. Choose the Type of Application: Decide whether to file a provisional or
complete specification:
o Provisional Specification: Filed when the invention is not fully developed;
gives a priority date.
o Complete Specification: Filed when the invention is fully developed; must
be filed within 12 months of the provisional application.
2. Filing the Patent Application: The application can be filed with the Indian Patent
Office online or physically at one of its branches (Mumbai, Delhi, Kolkata, or Chennai).
The key steps are:
1. Forms Required:
o Form 1: Application for grant of a patent.
o Form 2: Provisional or complete specification.
o Form 3: Statement and undertaking regarding foreign applications.
o Form 5: Declaration as to inventorship.
o Form 9 (Optional): Request for early publication.
o Form 18/18A: Request for examination or expedited examination.
2. Details to be Submitted:
o Title of the invention.
o Applicant's details (name, address, nationality).
o Description of the invention (technical details, drawings if any).
o Claims defining the scope of protection sought.
o Abstract summarizing the invention.
3. Filing Fees: Fees vary based on applicant type (individuals, startups, small
entities, or large entities) and number of claims/pages.
3. Publication of Application
• As per S11A of the Patents Act, every patent application is published in the
official Patent Journal after 18 months from the filing date or priority date.
• Applicants can request early publication under Form 9 by paying an additional
fee.
4. Examination
1. Request for Examination (RFE): A request for examination must be filed
using Form 18 within 48 months from the filing/priority date. For expedited
examination (Form 18A), eligibility criteria apply (e.g., startups or international
applications under specific agreements).
2. Examination Process: The Controller assigns an examiner who reviews the
application for compliance with patentability criteria (novelty, inventive step,
industrial applicability). The examiner issues a First Examination Report (FER)
highlighting objections or deficiencies.
5. Response to FER: The applicant must respond to objections raised in the FER
within 6 months (extendable by 3 months). Amendments to claims or specifications
may be made during this stage to address objections.
6. Pre-Grant Opposition: Any third party can file a pre-grant opposition under S25(1)
before the patent is granted, citing reasons such as lack of novelty or inventive step.
 Page 29 of 55

7. Grant of Patent: If all objections are resolved and no opposition is sustained, the
patent is granted under S43. A certificate of grant is issued to the applicant, and details
are published in the Patent Journal.
8. Post-Grant Procedures
1. Post-Grant Opposition: Within 1 year of grant, any interested party can file
an opposition under S25(2).
2. Renewal Fees: Annual renewal fees must be paid starting from the 3rd year to
keep the patent in force for its term (20 years from filing/priority date).
Judicial Precedents
1. Dimminaco AG v. Controller of Patents & Designs (2002): Recognized
that processes involving microorganisms are patentable if they meet statutory
requirements.
2. Novartis AG v. Union of India [(2013) 6 SCC 1]: Clarified that incremental
innovations must demonstrate enhanced efficacy to qualify for patent protection
under S3(d).
D. Rights and Obligations of Patentees
The rights and obligations of patentees in India are governed by the Patents Act, 1970,
as amended. These provisions ensure that patentees can enjoy exclusive rights over
their inventions while also imposing certain responsibilities to balance their interests
with public welfare.
1. Rights of Patentees: Upon the grant of a patent, the patentee is entitled to a set
of exclusive rights under S48 of the Patents Act, 1970. These rights empower the
patentee to control the use of their invention and derive commercial benefits from it.
A. Exclusive Rights
1. Right to Prevent Unauthorized Use: The patentee has the exclusive right to
prevent others from making, using, selling, offering for sale, or distributing the
patented product or process without their consent. Example: A pharmaceutical
company holding a patent for a drug can stop others from manufacturing or
selling it.
2. Right to License: The patentee can license their invention to others for use,
often in exchange for royalties. Example: Licensing a patented technology to
another company for commercial production.
3. Right to Assign: The patentee can transfer ownership of the patent through
assignment agreements. Example: Selling the patent rights to another entity.
4. Right to Sue for Infringement: The patentee can initiate legal action against
anyone who infringes on their patent rights under S104. Remedies include
injunctions, damages, or accounts of profits.
5. Right to Exploit the Patent: The patentee has the right to exploit the
patented invention commercially during its term (20 years from the filing date).
B. Territorial Nature of Rights: Patent rights are territorial and apply only within
India unless extended through international agreements or treaties.
C. Right Against Compulsory Licensing (Limited): While patentees have exclusive
rights, these may be subject to compulsory licensing under specific conditions (e.g.,
public health emergencies).
2. Obligations of Patentees: To maintain and enforce a patent, patentees must fulfill
certain statutory obligations under the Patents Act, 1970. These obligations ensure
that patents are used responsibly and contribute to societal benefit.
A. Working of Patents (S83): The patentee must ensure that the patented
invention is worked in India on a commercial scale and reasonably meets public
demand. Non-working may lead to compulsory licensing under S84.
B. Payment of Renewal Fees (S53): The patentee must pay annual renewal fees
starting from the 3rd year to keep the patent in force. Failure to pay renewal fees
results in the lapse of the patent.
 Page 30 of 55

C. Disclosure of Invention (S10): The patentee must fully and clearly disclose
the invention in the specification so that others can replicate it after the patent
expires. Concealment or insufficient disclosure may render the patent invalid.
D. Compliance with Government Use Provisions (S47 & 100): The
government has certain rights over patents:
• Under S47, patented inventions can be used by government entities for
research or education without infringement.
• Under S100, patents may be used by or licensed to third parties on behalf of
the government during emergencies.
E. Submission of Working Statement (S146): The patentee must submit an
annual statement detailing whether and how the patent has been worked in India.
Non-compliance may lead to penalties or compulsory licensing.
F. Avoidance of Abuse of Rights: Patentees must not abuse their monopoly
rights by restricting access or charging exorbitant prices, as this could lead to
revocation under S85 or compulsory licensing.
Judicial Precedents
1. Natco Pharma Ltd v. Bayer Corporation (2012): Natco was granted a
compulsory license for Bayer's cancer drug Nexavar due to its high cost and
limited availability in India. This case reinforced patentees' obligation to make
their inventions accessible and affordable.
2. Monsanto Technology LLC v. Nuziveedu Seeds Ltd (2019): The Supreme
Court emphasized that patentees must balance their exclusive rights with public
interest, particularly in cases involving essential technologies like genetically
modified seeds.

E. Compulsory Licensing
Definition of Compulsory Licensing: Compulsory licensing refers to the statutory
authorization granted by the government to a third party to use a patented invention
without the consent of the patent holder. This mechanism ensures that patents, while
granting exclusive rights to inventors, do not hinder public access to essential goods
and services, particularly in cases of public health emergencies or national interest. In
India, compulsory licensing is governed by Sections 84 to 92A of the Patents Act, 1970.
These provisions aim to balance the rights of patentees with societal needs, ensuring
that patented inventions are accessible and affordable.
Grounds for Granting Compulsory Licenses: Under S84, any person can apply for
a compulsory license after 3 years from the grant of a patent on the following grounds:
1. Reasonable Requirements of the Public Not Satisfied: If the patented
invention is not available in adequate quantities to meet public demand.
Example: A life-saving drug not being manufactured in sufficient quantities.
2. Non-Affordability: If the patented product is priced excessively, making it
unaffordable for the general public. Example: High costs of patented medicines.
3. Non-Working of Patent in India: If the patent is not being worked (used) in
India on a commercial scale, thereby depriving public access. Example: A
patented technology being used only abroad without local manufacturing or
availability.
Special Provisions for Public Health
1. S92: The government can issue compulsory licenses in cases of national
emergencies (e.g., pandemics), extreme urgency, or for public non-commercial
use. Example: Manufacturing vaccines during a health crisis like COVID-19.
2. S92A (Export of Patented Pharmaceuticals): Allows compulsory licensing for
manufacturing and exporting patented pharmaceutical products to countries
with insufficient manufacturing capacity, as per international obligations under
the TRIPS Agreement.
 Page 31 of 55

Procedure for Granting Compulsory Licenses

1. Application: An interested party must file an application with the Controller
General of Patents under S84, specifying the grounds for seeking a license.
2. Examination: The Controller examines whether the grounds under S84 are
satisfied and considers factors such as:
o Nature of the invention.
o Efforts made by the applicant to obtain a voluntary license from the
patentee.
o Public interest and affordability.
3. Grant of License: If satisfied, the Controller grants a compulsory license with
specific terms, including royalty payments to the patentee.
4. Appeals: Decisions of the Controller can be appealed before the Intellectual
Property Appellate Board (IPAB).
Royalty Payments: The patentee is entitled to receive reasonable royalties or
compensation as determined by the Controller while granting a compulsory license.
The amount is decided based on factors such as:
• Nature and utility of the invention.
• Economic value derived from its use.
Judicial Precedents
1. Natco Pharma Ltd v. Bayer Corporation (2012): Natco was granted India’s
first compulsory license for Bayer’s cancer drug Nexavar under S84.
o Grounds: High cost (₹2.8 lakh per month) made it unaffordable, and
Bayer had failed to manufacture it locally in sufficient quantities.
o Outcome: Natco was allowed to sell Nexavar at ₹8,800 per month,
making it affordable while paying 6% royalty to Bayer.
2. Lee Pharma v. AstraZeneca AB (2015): Application for a compulsory license
for AstraZeneca’s diabetes drug Saxagliptin was rejected as Lee Pharma failed
to demonstrate sufficient efforts to obtain a voluntary license and prove unmet
public demand.
International Context: India’s compulsory licensing provisions align with Article 31
of the TRIPS Agreement, which allows member countries to issue compulsory licenses
under specific conditions. India has also used these provisions effectively for public
health concerns.
Significance
1. Ensures Access: Compulsory licensing prevents monopolistic practices by
patentees and ensures access to essential goods like medicines at affordable
prices.
2. Balances Interests: It balances patent holders' rights with societal needs,
fostering innovation while addressing public welfare concerns.
3. Promotes Local Manufacturing: Encourages local production of patented
products, reducing dependency on imports.
Conclusion: Compulsory licensing is a critical tool under Indian patent law that
ensures equitable access to essential inventions while respecting patentees' rights. By
addressing issues like affordability and availability, it strikes a balance between
incentivizing innovation and fulfilling societal needs, particularly in areas like
healthcare and technology transfer.
F. Revocation or Opposition to Grant of Patents
The Patents Act, 1970 provides mechanisms for challenging the grant of patents to
ensure that only genuine, valid, and deserving inventions are protected under the law.
These mechanisms include opposition proceedings (both pre-grant and post-grant) and
revocation of patents. These provisions safeguard public interest and prevent the
misuse of patent rights.
 Page 32 of 55

1. Opposition to Grant of Patents: Opposition refers to a formal challenge made by

an interested party against the grant of a patent. The Act allows for both pre-grant
opposition (before a patent is granted) and post-grant opposition (after a patent is
granted).
A. Pre-Grant Opposition (S25(1))
• Who Can File: Any person or entity can file a pre-grant opposition.
• When to File: A pre-grant opposition can be filed after the publication of
the patent application but before the grant of the patent.
• Grounds for Opposition:
o The invention lacks novelty, inventive step, or industrial applicability.
o The invention is not patentable under Sections 3 or 4.
o The specification does not sufficiently describe the invention.
o False information was provided by the applicant.
o Invention was publicly known or used in India before the filing date.
o Non-disclosure or wrongful disclosure of biological material used in
the invention.
• Procedure:
o File a written representation with supporting evidence before the
Controller of Patents.
o The Controller considers the representation, hears both parties if
required, and decides whether to grant or reject the application.
B. Post-Grant Opposition (S25(2))
• Who Can File: Only "interested persons" (e.g., competitors, industry
stakeholders) can file a post-grant opposition.
• When to File: A post-grant opposition must be filed within one year from
the date of publication of the grant of the patent.
• Grounds for Opposition: Similar grounds as pre-grant opposition:
 Non-disclosure or wrongful disclosure of biological material.
 Incomplete or insufficient disclosure in the specification.
 Prior public use or knowledge in India.
• Procedure:
o File a notice of opposition with supporting evidence before the
Opposition Board constituted by the Controller.
o The Opposition Board examines the evidence, hears both parties,
and submits its recommendations to the Controller.
o The Controller makes a final decision based on these
recommendations.
2. Revocation of Patents: Revocation refers to cancelling an already granted patent
on specified grounds. It can be initiated through legal proceedings or administrative
processes.
A. Revocation by High Court (S64): A patent can be revoked by filing a petition
before the High Court on grounds such as:
1) Lack of novelty, inventive step, or industrial applicability.
2) Non-patentable subject matter under Sections 3 and 4.
3) Insufficient disclosure in the specification.
4) Fraudulent procurement of the patent.
5) Prior public use or knowledge in India before filing.
6) Failure to disclose foreign applications under S8.
B. Revocation by Counterclaim in Infringement Proceedings: A defendant in
a patent infringement lawsuit can file a counterclaim seeking revocation of the
plaintiff's patent on any grounds mentioned in S64.
 Page 33 of 55

C. Revocation by Central Government (S66): The Central Government may

revoke a patent if it is prejudicial to public interest (e.g., harmful to health or
detrimental to public welfare).
D. Revocation for Non-Working (S85): If a patented invention is not worked in
India within 3 years from its grant, any interested party may apply for revocation
on grounds of non-working.
Judicial Precedents
1. Enercon (India) Ltd v. Aloys Wobben (2014): The Supreme Court clarified
that both pre-grant and post-grant oppositions are integral mechanisms for
ensuring that only valid patents are granted.
2. Novartis AG v. Union of India [(2013) 6 SCC 1]: The Supreme Court upheld
revocation under S3(d), stating that incremental innovations must demonstrate
enhanced efficacy to qualify for patents.
3. F. Hoffmann-La Roche Ltd v. Cipla Ltd (2009): Revocation was sought
based on insufficient disclosure and lack of inventive step during an
infringement counterclaim.
Significance
1. Ensures Patent Quality: Opposition and revocation mechanisms prevent
frivolous or undeserving patents from being granted or retained.
2. Protects Public Interest: Safeguards against monopolies that may harm
public health, access to essential goods, or innovation.
3. Encourages Transparency: Promotes full disclosure during patent
applications, ensuring that only genuine inventions benefit from protection.
G. Patents of Addition
Definition: A Patent of Addition is a type of patent granted for an improvement or
modification of an already patented invention. It allows the patentee to protect
advancements or improvements made to their original invention without having to file
a completely new patent application. The concept is governed by Sections 54 to 56 of
the Patents Act, 1970.
Key Features of Patents of Addition
1. Improvement or Modification: A Patent of Addition is granted for any
improvement or modification to an existing patented invention. Example: If a
patent is granted for a machine, and the inventor later develops an improved
version of the machine, they can apply for a Patent of Addition.
2. No Separate Term: The term of a Patent of Addition is not independent; it
expires along with the main (original) patent. Example: If the main patent
expires in 15 years, the Patent of Addition will also expire at the same time,
even if it was granted later.
3. No Renewal Fee: No separate renewal fee is required for a Patent of Addition;
it is covered under the renewal fees paid for the main patent.
4. Dependent on Main Patent: A Patent of Addition cannot exist independently.
If the main patent is revoked, the Patent of Addition also becomes invalid.
Procedure for Filing a Patent of Addition
1. Eligibility:
o Only the owner of the main patent can apply for a Patent of Addition.
o The improvement or modification must be related to and based on the
subject matter of the main patent.
2. Application Process:
o File an application with the Indian Patent Office using Form 1 (Application
for Grant of Patent).
o Clearly specify that it is a Patent of Addition and provide details about
the main patent.
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3. Examination: The application undergoes examination like any other patent

application to ensure that it meets criteria such as novelty, inventive step, and
industrial applicability.
4. Grant: If approved, the Patent of Addition is granted and linked to the main
patent.
Advantages
1. Cost-Effective: Since no separate renewal fees are required, it reduces
financial burden on inventors.
2. Simplifies Protection: Allows inventors to protect improvements without filing
a new patent application.
3. Encourages Innovation: Provides an incentive for patentees to continue
improving their inventions.
Limitations
1. Dependency on Main Patent: If the main patent is revoked or lapses, the
Patent of Addition also becomes invalid.
2. Limited Term: The term of protection for the improvement is tied to that of
the main patent, even if filed later.
Judicial Precedent
1. Standipack Pvt Ltd v. Oswal Trading Co Ltd (2000): The Delhi High Court
clarified that a Patent of Addition must be an improvement or modification
directly connected with the subject matter of the main patent.
2. Bajaj Auto Ltd v. TVS Motor Company Ltd (2009): Reinforced that
improvements qualifying as Patents of Addition must meet all statutory
requirements like novelty and inventive step.
H. Anticipation in Patents
Definition of Anticipation: In patent law, anticipation refers to the prior disclosure
or public use of an invention before the filing date of a patent application. If an
invention is anticipated, it means that it is not novel and therefore does not meet one
of the essential criteria for patentability. Anticipation can occur through prior art, which
includes publications, prior patents, public demonstrations, or any other means by
which the invention becomes publicly known. Anticipation is addressed under Sections
13 and 29 to 34 of the Patents Act, 1970, which provide detailed provisions regarding
circumstances under which an invention may or may not be deemed anticipated.
Key Concepts in Anticipation
1. Novelty and Prior Art:
o Novelty is a fundamental requirement for patentability. If an invention is
disclosed in prior art before the priority date of the patent application, it
is considered anticipated.
o Prior art includes earlier patents, publications, public use, or any
disclosure that makes the invention available to the public.
2. Explicit vs. Implicit Anticipation:
o Explicit Anticipation: When all elements of a claimed invention are
disclosed in a single prior art reference.
o Implicit Anticipation: When some elements are not explicitly disclosed
but are inherently present in prior art.
3. Enabling Disclosure: For anticipation to invalidate a patent, the prior art must
disclose the invention in sufficient detail to enable a person skilled in the art to
replicate it.
Provisions Under Indian Patent Law
The Patents Act, 1970 provides specific rules regarding anticipation:
1. S13: Search for Anticipation: During examination, the Controller
investigates whether the claimed invention has been anticipated by prior
publication or prior claims in existing patents.
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2. S29: Anticipation by Previous Publication: An invention is considered

anticipated if it has been published before the priority date of the patent
application. Exception: If the publication occurred without the inventor's
consent and they filed for a patent as soon as reasonably practicable after
learning of it.
3. S30: Anticipation by Communication to Government: Disclosure of an
invention to a government department or officer does not constitute
anticipation.
4. S31: Anticipation by Public Display or Use: Public display or use of an
invention (e.g., at exhibitions) does not amount to anticipation if proper notice
was given and a patent application was filed within 12 months.
5. S32: Anticipation by Public Working: Public working of an invention for
reasonable trial purposes does not constitute anticipation if done with the
consent of the inventor.
6. S33: Use and Publication After Provisional Specification: If an applicant
files a provisional specification and publicly discloses the invention afterward, it
will not be considered anticipated as long as a complete specification is filed
within 12 months.
7. S34: Exceptions to Anticipation: Circumstances described in Sections 29–
32 are exceptions where disclosure does not destroy novelty.
Judicial Precedents
1. Farbwerke Hoechst A.G. v. Unichem Labs (AIR 1969 SC 255): The court
held that for an invention to be anticipated, prior art must disclose all elements
of the claimed invention clearly and unambiguously.
2. General Tire & Rubber Co v. Firestone Tyre & Rubber Co (1972): It was
established that a prior publication must provide clear instructions on how to
make or use the claimed invention for it to anticipate a patent.
3. Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (AIR
1982 SC 1444): The Supreme Court emphasized that anticipation requires
prior disclosure of all essential features of an invention.
Implications of Anticipation
1. If an invention is anticipated by prior art, it fails the novelty test and cannot be
patented.
2. During opposition or revocation proceedings, anticipation can be used as a
ground to challenge or invalidate a granted patent.
3. Inventors must ensure confidentiality and avoid premature disclosure before
filing their patent applications.
Significance: Anticipation serves as a safeguard against granting patents for
inventions that are already known or obvious from existing knowledge. It ensures that
patents are granted only for truly novel inventions while preventing monopolies over
publicly available knowledge. By understanding and addressing issues related to
anticipation during the patent application process, inventors can strengthen their
claims and avoid rejection or invalidation due to lack of novelty.

Module 4: Trademarks
A. Definition and Scope of Trademarks
Definition of Trademark: A trademark is a distinctive sign, symbol, word, name,
logo, design, or combination thereof that identifies and distinguishes the goods or
services of one person or entity from those of others. It serves as a badge of origin
and ensures that consumers can identify the source of goods or services. In India,
trademarks are governed by the Trade Marks Act, 1999. As per S2(1)(zb) of the Trade
Marks Act, 1999:
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• A trademark is defined as "a mark capable of being represented graphically and

capable of distinguishing the goods or services of one person from those of
others."
• It may include:
o Shape of goods.
o Packaging.
o Combination of colours.
Trademarks can also include collective marks, certification marks, and well-known
marks.
Purpose and Functions of Trademarks
Trademarks play a vital role in commerce by performing the following functions:
1. Identification: They identify the source or origin of goods or services.
Example: The "Apple" logo for Apple Inc.
2. Quality Assurance: Trademarks assure consumers about the consistent
quality of products or services offered under the mark.
3. Brand Recognition: They help businesses build goodwill and brand loyalty
among consumers.
4. Distinction: Trademarks distinguish one business's goods or services from
those of competitors.
5. Advertising Tool: They serve as an effective marketing and advertising
device. Example: The slogan "Just Do It" for Nike.
Scope of Trademarks
The scope of trademarks is broad and encompasses various forms and uses:
1. Types of Trademarks
• Word Marks: A trademark consisting solely of words or letters. Example:
"Google."
• Device Marks: A trademark consisting of a logo or design. Example: The
"Mercedes-Benz" three-pointed star logo.
• Shape Marks: Protection for the shape of goods if it distinguishes them
from others. Example: The Coca-Cola bottle shape.
• Colour Marks: A specific colour or combination of colours can be
trademarked if they are distinctive. Example: Cadbury's purple packaging
for chocolates.
• Sound Marks: Unique sounds associated with a brand. Example: The Intel
or Nokia jingle.
• Collective Marks: Used by members of an association to indicate
membership. Example: CA (Chartered Accountant) mark in India.
• Certification Marks: Used to certify certain qualities like origin, material,
or manufacturing process. Example: ISI mark in India.
2. Goods and Services: Trademarks apply to both goods and services. Under
Indian law, trademarks are classified according to the Nice Classification system
(International Classification), which categorizes goods and services into different
classes for registration purposes.
3. Well-Known Trademarks: As per S2(1)(zg) of the Act, a well-known
trademark is one that has gained recognition among a substantial segment of the
public due to its use and reputation. Such marks enjoy broader protection across
all classes. Example: "McDonald's" is protected even in unrelated industries
because it is well-known globally.
4. Territorial Scope: Trademarks are territorial in nature, meaning they are
protected only in jurisdictions where they are registered unless protected under
international treaties like the Madrid Protocol.
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5. Duration: A registered trademark is valid for 10 years from the date of

registration and can be renewed indefinitely for further periods of 10 years each
(S25).
Legal Framework in India: The Trade Marks Act, 1999 consolidates laws relating
to trademarks in India to provide better protection for trademarks used in trade
and prevent fraudulent practices. Key features include:
1. Registration process (Sections 18–23).
2. Rights conferred by registration (S28).
3. Infringement remedies (Sections 29–30).
4. Provisions for well-known trademarks (S11).
Judicial Precedents
1. Cadila Healthcare Ltd v. Cadila Pharmaceuticals Ltd [(2001) AIR SC
1952]: The Supreme Court emphasized that trademarks must avoid
confusion among consumers regarding the origin or quality of
goods/services.
2. ITC Ltd v. Britannia Industries Ltd (2016): The Delhi High Court held
that deceptive similarity between packaging could constitute trademark
infringement even if the brand names differ.

B. Procedure for Registration of Trademarks

The procedure for registering a trademark in India is governed by the Trade Marks Act,
1999, and the Trade Marks Rules, 2017. The registration process ensures that
trademarks are protected under law, granting exclusive rights to the owner and
preventing unauthorized use by others. Below is a step-by-step explanation of the
procedure:
1. Pre-Filing Steps: Before filing a trademark application, certain preparatory steps
are essential:
1. Trademark Search:
o Conduct a trademark search to ensure that the proposed mark is unique
and not identical or deceptively similar to any existing registered or
pending trademarks.
o This search can be performed on the Indian Trademark Office's online
database.
2. Determine Class of Goods/Services: Trademarks are registered under
specific classes as per the Nice Classification system, which categorizes goods
and services into 45 classes. Example: Class 25 covers clothing, while Class 41
covers educational services.
3. Choose Type of Application:
o Decide whether to file as an individual, company, partnership, or
proprietor.
o Determine whether the application will be for a word mark, logo, device
mark, or combination.
2. Filing the Application: The application for trademark registration must be filed
with the Registrar of Trademarks at one of the five Trademark Registry offices (Mumbai,
Delhi, Kolkata, Chennai, and Ahmedabad). The steps include:
1. Submission of Form TM-A:
o Form TM-A is used for applying for a new trademark.
o The application can be filed online through the IP India portal or
physically at the Trademark Registry office.
2. Details Required in the Application:
o Name and address of the applicant.
o Description of the trademark (wordmark/logo/device).
o Class of goods/services.
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o Date of first use (if applicable).

o Power of Attorney (if filed through an agent).
o A clear representation of the mark.
3. Payment of Fees: The application fee varies based on the type of applicant:
o ₹4,500 for individuals/startups/small enterprises (per class).
o ₹9,000 for companies/large enterprises (per class).
3. Examination by Registrar: After filing, the application is examined by the
Registrar to ensure compliance with legal requirements under Sections 9 and 11 of the
Trade Marks Act. The examination process includes:
1. Absolute Grounds for Refusal (S9): The Registrar checks whether the mark
lacks distinctiveness or is descriptive. Example: A generic term like "Soap"
cannot be registered as a trademark. Absolute grounds include:
o Lack of Distinctiveness: Marks that cannot distinguish the goods or services
of one person from another.
o Descriptive Marks: Marks that describe the kind, quality, quantity, purpose,
value, or geographical origin of goods or services.
o Customary Terms: Marks that have become common in trade or language
practices.
o Deceptive Nature: Marks that are likely to mislead or confuse the public.
o Offensive Content: Marks containing scandalous, obscene, or immoral
matter.
o Religious Sensitivities: Marks likely to hurt the religious sentiments of any
group.
o Prohibited Symbols: Marks using emblems, flags, or symbols protected
under the Emblems and Names (Prevention of Improper Use) Act, 1950.
o Functional Shapes: Marks consisting solely of shapes necessary for the
goods' function or adding substantial value to them.
2. Relative Grounds for Refusal (S11): The Registrar ensures that the mark
does not conflict with existing registered trademarks or pending applications.
Such relative grounds include:
o Identical Marks: The applied trademark is identical to an earlier trademark
and is used for similar goods or services, likely causing confusion.
o Similar Marks: The applied trademark is similar to an earlier trademark and
is used for identical or similar goods or services, leading to confusion or
association.
o Well-Known Trademarks: The applied mark is identical or similar to a well-
known trademark, potentially taking unfair advantage of or harming its
reputation.
o Unregistered Rights: Use of the applied mark is restricted by laws like
passing off (protecting unregistered trademarks) or copyright laws.
3. Examination Report:
o If objections are found, an Examination Report is issued.
o The applicant must respond to objections within 1 month from receipt of
the report.
4. Publication in Trademark Journal: If the application is accepted (either initially
or after resolving objections), it is published in the Trademark Journal to invite public
opposition:
1. Opposition Period: Any person can file an opposition within 3 months
(extendable by one month) from the date of publication under S21.
2. Opposition Proceedings: If opposed, both parties submit evidence and
arguments before the Registrar decides whether to grant or reject registration.
5. Registration: If no opposition is filed or if opposition is resolved in favor of the
applicant:
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1. Grant of Registration: The trademark is registered under S23 and entered

into the Register of Trademarks.
2. Issuance of Certificate: A certificate of registration is issued with effect from
the date of filing.
3. Validity: The trademark is valid for 10 years from the date of filing and can be
renewed indefinitely every 10 years by paying renewal fees under S25.
6. Post-Registration Obligations
1. Renewal: File Form TM-R to renew registration 6 months before expiry.
2. Use Requirement: Ensure continuous use to avoid cancellation on grounds of
non-use under S47.
3. Monitoring and Enforcement: Monitor unauthorized use and take legal action
against infringement under S29.
Judicial Precedents
1. Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449): SC
emphasized that trademarks must avoid confusion among consumers regarding
origin or quality.
2. ITC Ltd v. Britannia Industries Ltd (2016): Highlighted that deceptive
similarity in packaging could constitute infringement even if brand names differ.

C. Passing Off vs Infringement

Introduction: Both passing off and infringement are legal remedies available to
protect trademarks. While infringement applies to registered trademarks under the
Trade Marks Act, 1999, passing off is a common law remedy that protects the goodwill
of unregistered trademarks. These concepts aim to prevent misuse of a trademark or
trade name that could deceive consumers or harm the reputation of the rightful owner.
1. Passing Off: Passing off is a tort (civil wrong) under common law that protects the
goodwill and reputation associated with a business or its products/services. It prevents
one party from misrepresenting their goods or services as those of another.
Key Elements of Passing Off: To succeed in a passing off action, the plaintiff must
establish the following elements, commonly referred to as the "Classic Trinity" from
the case Reckitt & Colman Ltd v. Borden Inc. (1990):
1. Goodwill: The plaintiff must show that their goods or services have acquired
goodwill or reputation in the market, which distinguishes them from others.
Example: A local bakery known for its unique cakes.
2. Misrepresentation: The defendant must have made a false representation
leading consumers to believe that their goods or services are associated with
the plaintiff. Example: Using similar packaging or branding to mislead
consumers.
3. Damage: The plaintiff must demonstrate that they suffered or are likely to
suffer damage due to the defendant's actions. Example: Loss of sales or harm
to reputation.
Characteristics of Passing Off
• Protects unregistered trademarks.
• Focuses on preventing misrepresentation and protecting goodwill.
• Requires proof of consumer confusion.
Judicial Precedent
Cadila Healthcare Ltd v. Cadila Pharmaceuticals Ltd [(2001) AIR SC 1952]:
The Supreme Court emphasized that in passing off cases, even minor similarities in
marks that can cause consumer confusion are actionable.
2. Infringement: Trademark infringement occurs when a registered trademark is
used without authorization in a manner that is likely to cause confusion among
consumers. It is a statutory remedy provided under S29 of the Trade Marks Act, 1999.
Key Elements of Infringement
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1. Registered Trademark: The plaintiff must own a validly registered trademark

under the Act.
2. Unauthorized Use: The defendant must have used an identical or deceptively
similar mark without permission.
3. Likelihood of Confusion: The unauthorized use must create confusion among
consumers regarding the source of goods/services.
Characteristics of Infringement
• Protects only registered trademarks.
• Does not require proof of goodwill or damage; likelihood of confusion is
sufficient.
• Statutory remedy under Indian law.
Judicial Precedent
Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449): The Supreme
Court held that deceptive similarity between marks is sufficient for infringement, even
if there is no actual confusion among consumers.
3. Key Differences Between Passing Off and Infringement
Aspect Passing Off Infringement
Legal Basis Common law remedy. Statutory remedy under Trade Marks
Act, 1999.
Trademark Protects unregistered Protects only registered trademarks.
Status trademarks.
Focus Protects goodwill and prevents Prevents unauthorized use of a
misrepresentation. registered trademark.
Proof Plaintiff must prove goodwill, Likelihood of confusion is sufficient;
Required misrepresentation, and no need to prove damage or goodwill.
damage.
Scope Broader; includes trade Limited to trademark use as defined
names, get-up, packaging, under S29 of the Act.
etc.
Consumer Actual or likely confusion must Likelihood of confusion presumed in
Confusion be proven. certain cases (e.g., identical marks).

4. Overlap Between Passing Off and Infringement

In some cases, both passing off and infringement can be invoked simultaneously
if:
• The plaintiff owns both registered and unregistered rights.
• The defendant's actions involve both statutory violation (infringement) and
common law misrepresentation (passing off).
Example: A competitor uses a deceptively similar logo (registered trademark) and
trade dress (unregistered) to confuse customers into believing their products are
from the plaintiff's brand.
D. Well-Known Trademarks
Definition of Well-Known Trademarks: A well-known trademark refers to a mark that
has achieved significant recognition among the public or a substantial segment of
consumers due to its extensive use, reputation, and association with particular goods or
services. Even if such a mark is not registered in India, it enjoys protection under the
Trade Marks Act, 1999. As per S2(1)(zg) of the Trade Marks Act, 1999:
• A well-known trademark is defined as "a mark which has become so well-known to
the substantial segment of the public that the use of such a mark in relation to
other goods or services would likely indicate a connection between those goods or
services and the person using the mark in relation to the first-mentioned goods or
services."
Characteristics of Well-Known Trademarks
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1. Recognition Across Sectors: The mark is widely recognized by consumers in its

industry or even beyond its primary sector. Example: Coca-Cola is recognized
globally across industries.
2. Reputation: The mark has built goodwill and consumer trust due to its consistent
quality and extensive use.
3. Cross-Class Protection: Well-known trademarks are protected even for unrelated
goods or services. Example: Apple is protected not just for electronics but also for
other unrelated products.
4. No Registration Requirement: A trademark can be considered well-known even
if it is not registered in India.
Legal Framework in India: Well-known trademarks are protected under various
provisions of the Trade Marks Act, 1999:
1. S11(6): The Registrar considers factors such as:
o Knowledge or recognition of the trademark among the relevant public.
o Duration, extent, and geographical area of use and promotion.
o Record of successful enforcement actions.
2. S11(7): The Registrar assesses whether a trademark is recognized in a relevant
segment of the public, considering:
o Actual or potential consumers.
o Distribution channels.
o Business circles dealing with similar goods/services.
3. S11(9): A trademark can be declared well-known without requiring:
o Use in India.
o Registration in India.
o Application for registration in India.
o Recognition among the general public (it suffices if it is known to a
substantial segment).
4. S11(10): The Registrar must protect well-known trademarks from being registered
as identical or similar marks by others.
5. S29(4): Protects well-known trademarks from dilution, where their reputation
could be harmed by unauthorized use on unrelated goods or services.
Criteria for Determining Well-Known Trademarks: The following factors are
considered while determining whether a trademark qualifies as well-known:
1. Extent of Use: Duration and geographical area where the trademark has been
used.
2. Extent of Promotion: Advertising campaigns, sponsorships, and other
promotional activities that have enhanced recognition.
3. Registration and Enforcement: Number of jurisdictions where the trademark is
registered. Record of enforcement actions against infringement.
4. Consumer Recognition: Surveys or evidence showing consumer awareness and
association with the brand.
5. Judicial Recognition: Previous court rulings or decisions recognizing the mark as
well-known.
Examples of Well-Known Trademarks
1. TATA – Recognized across industries like automobiles, steel, IT, etc.
2. AMUL – Known for dairy products but protected across unrelated sectors.
3. NIKE – Famous globally for sportswear and accessories.
4. McDONALD'S – Recognized for fast food but enjoys cross-class protection.
Judicial Precedents
1. Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd (2018): The
Supreme Court held that recognition as a well-known trademark requires evidence
of reputation among Indian consumers, not just global recognition.
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2. Daimler Benz Aktiegesellschaft v. Hybo Hindustan (1994): The Delhi High

Court ruled that "Benz," being a globally renowned trademark, cannot be used even
for unrelated products like underwear due to its reputation.
3. ITC Ltd v. Philip Morris Products SA (2010): The Delhi High Court emphasized
that well-known trademarks deserve protection from dilution and tarnishment.
Significance of Well-Known Trademarks
1. Cross-Class Protection: Prevents others from using similar marks even for
unrelated goods/services to avoid dilution or harm to reputation.
2. Consumer Trust: Ensures consumers are not misled into associating inferior
products with reputed brands.
3. Global Recognition: Encourages businesses to build strong brands with
international appeal while ensuring legal protection in India.
E. Grounds for Refusal of Trademark Registration
The Trade Marks Act, 1999 provides specific grounds under which the registration of a
trademark can be refused. These grounds are categorized into absolute grounds and
relative grounds, ensuring that trademarks meet legal standards and do not conflict
with public interest or existing rights.
1. Absolute Grounds for Refusal (S9): Absolute grounds focus on the inherent
characteristics of the trademark itself, irrespective of any prior rights or existing
trademarks.
A. Lack of Distinctiveness (S9(1)(a)): A trademark must be capable of
distinguishing the goods or services of one person from those of another. Marks
that are generic, descriptive, or incapable of serving as a source identifier are not
registrable. Example: "Soap" for soap products.
B. Descriptive Marks (S9(1)(b)): Marks that consist exclusively of indications
about the kind, quality, quantity, intended purpose, value, geographical origin, or
other characteristics of goods or services. Example: "Fresh Milk" for dairy products.
C. Customary Marks (S9(1)(c)): Marks that have become customary in the
current language or established trade practices. Example: "Cotton" for cotton
textiles.
D. Deceptive or Confusing Marks (S9(2)(a)): Marks that are likely to deceive
the public or cause confusion due to their nature. Example: A mark falsely
suggesting a product is organic when it is not.
E. Offensive or Scandalous Marks (S9(2)(b)): Marks containing obscene,
scandalous, or offensive material that may hurt public morals or sentiments.
Example: A mark with vulgar language.
F. Prohibited Under Other Laws (S9(2)(d)): Marks whose use is prohibited
under other laws, such as the Emblems and Names (Prevention of Improper Use)
Act, 1950. Example: National emblems like the Ashoka Chakra.
G. Shape-Based Refusals (S9(3)): A trademark consisting exclusively of:
a) The shape resulting from the nature of the goods themselves.
b) The shape necessary to obtain a technical result.
c) The shape giving substantial value to the goods.
Example: A functional design like a standard screwdriver shape.
2. Relative Grounds for Refusal (S11): Relative grounds focus on conflicts with
earlier trademarks or rights.
A. Identical or Similar to Earlier Trademarks (S11(1)): A trademark cannot
be registered if it is:
a) Identical to an earlier trademark and used for identical goods/services.
b) Similar to an earlier trademark and used for similar goods/services, causing
confusion among consumers.
B. Well-Known Trademarks (S11(2)): A trademark cannot be registered if it is
identical or similar to a well-known trademark, even if used for unrelated
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goods/services, as it may dilute the distinctiveness or harm the reputation of the

well-known mark. Example: Using "Nike" for unrelated goods like furniture.
C. Passing Off and Copyright Conflict (S11(3)): A trademark may be refused
if its use would:
a) Be prevented by law protecting unregistered trademarks under passing off.
b) Conflict with copyright law due to unauthorized use of copyrighted material.
D. Consent Exception (S11(4)): Registration may still be allowed if the
proprietor of an earlier mark consents to the registration of a similar mark under
special circumstances.
3. Additional Grounds for Refusal
1. Prohibited Names/Representations: Use of names or representations
falsely suggesting connections with living persons without their consent (or
their legal representatives if deceased within 20 years).
2. Chemical Names: Words commonly used as names of chemical
elements/compounds cannot be registered as trademarks.
3. International Non-Proprietary Names: Names declared by WHO as
international non-proprietary names are prohibited from registration. Examples
include Paracetamol, Ibuprofen, Erythromycin, Ciprofloxacin, and Xenon.
Exceptions to Refusal
1. If a mark has acquired distinctiveness through extensive use before filing the
application, it may overcome refusal based on lack of distinctiveness (S9
Proviso).
2. Honest concurrent use or special circumstances may allow registration despite
objections (S12).
Judicial Precedents
1. ITC Ltd v. Nestle India Ltd (2015): The Delhi High Court held that
descriptive marks can acquire distinctiveness through extensive use and
consumer recognition.
2. Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449): The
Supreme Court ruled that likelihood of confusion among consumers is sufficient
ground for refusal under relative grounds.
3. Tata Sons Ltd v. Manoj Dodia (2011): The court emphasized protection
against dilution for well-known trademarks like "TATA."
F. Certification Marks
Definition of Certification Marks
A certification mark is a type of trademark used to certify that the goods or services
provided by others meet specific standards regarding origin, material, mode of
manufacture, quality, accuracy, or other characteristics. Unlike regular trademarks,
certification marks are not used by the owner but are licensed to others to signify
compliance with certain standards. As per S2(1)(e) of the Trade Marks Act, 1999:
• A certification mark is defined as "a mark capable of distinguishing the goods
or services in connection with which it is used in the course of trade which are
certified by the proprietor of the mark in respect of origin, material, mode of
manufacture of goods or performance of services, quality, accuracy or other
characteristics from goods or services not so certified."
Purpose and Features
1. Certification Function:
o Certification marks indicate that the goods or services meet specific
standards set by the certifying authority.
o Example: The "ISI" mark certifies compliance with Indian safety
standards for products.
2. Owner's Role:
 Page 44 of 55

o The owner does not use the certification mark themselves but licenses
it to others who meet the required standards.
o Example: The "Agmark" certifies agricultural products meeting
government quality standards.
3. Non-Competitive Nature:
o The owner cannot compete in the business for which they issue the
certification mark to avoid conflicts of interest.
4. Distinction from Trademarks:
o While trademarks identify the source of goods or services, certification
marks indicate compliance with specific standards.
Examples of Certification Marks
1. ISI Mark (India):
o Certifies that products conform to Indian safety and quality standards.
2. Agmark (India):
o Certifies agricultural products like spices and cereals for quality.
3. Woolmark (International):
o Certifies that products are made from 100% pure wool.
4. CE Marking (European Union):
o Indicates conformity with EU health, safety, and environmental
protection standards.
Legal Framework in India
The registration and regulation of certification marks are governed by Chapter IX
(Sections 69–77) of the Trade Marks Act, 1999.
1. Registration Process
• An application for registering a certification mark must be filed under S71.
• The application must include:
o A draft of regulations governing the use of the certification mark.
o Details about who can use it and under what conditions.
2. Examination by Registrar (S72)
• The Registrar examines whether:
o The applicant is competent to certify goods or services.
o The draft regulations are satisfactory.
o Registration would benefit public interest.
3. Regulations Governing Use (S74)
• Regulations must specify:
o Standards for certification.
o Conditions for granting authorization to use the mark.
o Procedures for resolving disputes over its use.
4. Opposition and Registration (S73)
• Once accepted, the application is advertised in the Trademark Journal to invite
opposition.
• If no opposition is filed or resolved in favor of the applicant, the certification
mark is registered.
Infringement and Protection
1. Infringement (S75):
o Unauthorized use of a certification mark by someone who does not meet
the prescribed standards constitutes infringement.
o Example: Using an "Agmark" label on substandard agricultural products.
2. Defenses Against Infringement (S76):
o Use within limitations specified during registration does not constitute
infringement.
o Use with consent from the certifying authority is also exempted.
3. Rectification (S77):
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o Any aggrieved person can apply for rectification if there is misuse or

non-compliance with regulations governing the certification mark.
Judicial Precedents
1. Tea Board v. ITC Ltd (2019):
o The Calcutta High Court upheld that "Darjeeling" as a certification mark
protects tea originating from that region and meeting specific standards.
2. Bureau of Indian Standards v. Western Trading Company (2008):
o Highlighted that unauthorized use of an ISI mark constitutes
infringement and misrepresentation under trademark law.
Significance
1. Ensures Quality Assurance:
o Certification marks build consumer trust by guaranteeing compliance
with specific quality standards.
2. Promotes Fair Trade Practices:
o Prevents misuse of labels that could mislead consumers about product
quality or origin.
3. Protects Consumer Interests:
o Helps consumers make informed decisions based on reliable
certifications.
4. Encourages Industry Compliance:
o Motivates businesses to adhere to established standards for better
market acceptance.
G. Collective Marks
Definition of Collective Marks: A collective mark is a type of trademark used by
members of an association or organization to distinguish their goods or services from
those of non-members. Unlike regular trademarks, collective marks are not owned by
an individual business but by an association or group, which allows its members to use
the mark under specific conditions. As per S2(1)(g) of the Trade Marks Act, 1999:
• A collective mark is defined as "a trademark distinguishing the goods or services
of members of an association of persons (not being a partnership within the
meaning of the Indian Partnership Act, 1932) which is the proprietor of the
mark from those of others."
Purpose and Features of Collective Marks
1. Identification of Membership: Collective marks are used to indicate that
goods or services originate from members of a specific group or association.
Example: The "CA" mark used by members of the Institute of Chartered
Accountants of India.
2. Not for Individual Use: The owner (association) does not use the collective
mark themselves but licenses it to their members.
3. Quality Assurance: Collective marks often signify that goods or services meet
certain quality standards set by the association.
4. Distinction from Certification Marks: While certification marks certify that
goods/services meet certain standards; collective marks signify membership in
an association.
Examples of Collective Marks
1. CA: Used by qualified chartered accountants in India.
2. FICCI (Federation of Indian Chambers of Commerce and Industry): Used by
members associated with FICCI.
3. The Rotary International Emblem: Used by members of Rotary
International.
Legal Framework in India: The registration and regulation of collective marks are
governed by Chapter VIII (Sections 61–68) of the Trade Marks Act, 1999.
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1. Registration Process: An application for a collective mark must be filed (S63)

along with regulations governing its use. The regulations must specify:
o Who is authorized to use the mark.
o Conditions for membership in the association.
o Conditions for using the mark and sanctions for misuse.
2. Examination and Acceptance (S64): The Registrar examines whether:
o The applicant is competent to own and regulate the collective mark.
o The regulations governing its use are satisfactory.
• If accepted, the application and regulations are published for public inspection.
3. Public Inspection (S65): Regulations governing collective marks are open to
public inspection, ensuring transparency.
4. Amendment of Regulations (S66): Any amendment to the regulations must be
approved and published by the Registrar before taking effect.
Grounds for Refusal or Cancellation
1. Misleading Nature (S62): A collective mark cannot be registered if it is likely
to deceive or confuse the public regarding its character or significance.
2. Failure to Observe Regulations (S68): Registration may be cancelled if:
o The proprietor fails to enforce compliance with regulations.
o The manner in which the mark is used misleads the public about its nature
as a collective mark.
Infringement and Protection
1. Infringement Proceedings (S67): In infringement cases, courts may
consider losses suffered by authorized users and direct compensation
accordingly.
2. Use by Non-Members: Unauthorized use by non-members constitutes
infringement and can be legally challenged.
Judicial Precedents
1. Tea Board v. ITC Ltd (2019): The Calcutta High Court upheld that
"Darjeeling" as a collective mark protects tea originating from that region and
meeting specific standards set by the Tea Board.
2. Rotary International v. Rotary Club of Kakinada (2004): Unauthorized
use of a collective mark damages both its reputation and its members' interests.
Significance
1. Ensures Quality Standards: Collective marks help maintain uniformity in
quality among goods/services offered by members.
2. Promotes Group Identity: They foster unity among members while
distinguishing them from non-members in commerce.
3. Protects Consumer Interests: Consumers can trust that goods/services
bearing a collective mark meet specific standards or originate from credible
sources.

Module 5: Industrial Designs

A. Definition and Scope of Industrial Designs
Definition of Industrial Design: An industrial design refers to the ornamental or
aesthetic aspect of an article. It includes features such as shape, configuration, pattern,
ornamentation, or composition of lines or colours applied to an article, whether in two-
dimensional or three-dimensional form. Industrial designs enhance the visual appeal
of a product and make it more attractive to consumers. Under S2(d) of the Designs
Act, 2000 (India):
• An industrial design is defined as "the features of shape, configuration, pattern,
ornament, or composition of lines or colours applied to any article, whether in
two-dimensional or three-dimensional form, by any industrial process or
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means, whether manual, mechanical, or chemical, separate or combined, which

in the finished article appeal to and are judged solely by the eye."
Scope of Industrial Designs: The scope of industrial designs is broad and
encompasses various aspects related to the aesthetic appearance of products. The
following points highlight its scope:
1. Protectable Features: Industrial designs protect only the visual and aesthetic
aspects of a product. These include:
• Shape and configuration (e.g., the unique shape of a bottle).
• Patterns and ornamentation (e.g., floral patterns on textiles).
• Combination of colours (e.g., artistic colour schemes on ceramic tiles).
2. Articles Covered: Industrial design protection applies to physical articles that
are manufactured through an industrial process. Examples include:
• Consumer goods: Furniture, toys, electronic devices.
• Packaging: Bottles, containers.
• Textiles: Printed fabrics with unique patterns.
3. Exclusions from Protection: Certain aspects are excluded from industrial
design protection under S2(d) and S4 of the Designs Act:
• Functional features: Designs dictated solely by function (e.g., mechanical
parts).
• Methods or principles of construction.
• Designs that are not new or original.
• Designs that are contrary to public order or morality.
4. Duration of Protection (S11):
• The initial term of protection for a registered design is 10 years from the
date of registration.
• It can be renewed for an additional 5 years by filing an application for
renewal.
5. Territorial Nature: Industrial design rights are territorial in nature. Protection
is granted only in countries where the design is registered.
Legal Framework in India: The Designs Act, 2000 governs the protection of
industrial designs in India. Key provisions include:
1. Novelty and Originality (S4): A design must be new and original to qualify
for registration. It must not have been disclosed to the public anywhere before
the filing date.
2. Registration Process (Sections 5–9): The applicant must file a design
application with the Controller General of Patents, Designs, and Trademarks.
The application must include representations (drawings) showing all views of
the design.
3. Rights Conferred by Registration (S22): The registered owner has
exclusive rights to use the design and prevent others from copying it without
permission.
Judicial Precedents
1. Kohler Co. v. Somany Ceramics Ltd (2017): Delhi HC upheld that designs
must appeal solely to the eye and not be dictated by functional requirements.
2. Dart Industries Inc v. Techno Plast (2016): Novelty in design is essential
for registration; mere replication of existing designs does not qualify.
Significance
1. Encourages Innovation: Protecting industrial designs incentivizes creators to
develop innovative and aesthetically appealing products.
2. Enhances Marketability: Unique designs improve consumer appeal and brand
recognition.
3. Prevents Unfair Competition: Design registration prevents unauthorized
copying and ensures fair competition in the market.
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B. Rights Conferred by Registration

Introduction: The registration of an industrial design under the Designs Act, 2000
grants the owner exclusive rights to protect the aesthetic aspects of their product.
These rights ensure that the registered design cannot be used, copied, or imitated by
others without authorization, thereby safeguarding the creator's intellectual property
and encouraging innovation.
Rights Conferred by Registration: The following are the key rights conferred upon
the owner of a registered industrial design:
1. Exclusive Right to Use the Design (S11): The registered proprietor has the
exclusive right to apply the design to any article in the class in which it is registered.
Example: If a unique bottle shape is registered as a design, only the owner can use
that design for manufacturing bottles.
2. Right to Prevent Unauthorized Use (S22): The owner can prevent others
from using, reproducing, or imitating the registered design without permission.
Unauthorized use includes:
o Applying the design to articles for sale.
o Importing articles bearing the design for commercial purposes.
o Selling or distributing such articles.
3. Right to License or Assign: The proprietor can license or assign their rights to
another party through a formal agreement. Example: A furniture designer may
license their unique chair design to a manufacturer for mass production.
4. Right to Sue for Infringement: If someone infringes on the registered design,
the proprietor can initiate legal proceedings under S22 of the Act. Remedies for
infringement include:
o Injunctions (to stop further unauthorized use).
o Damages or accounts of profits earned by the infringer.
5. Protection Against Imitation: The registration protects against imitation or
replication of the design, ensuring that competitors cannot exploit the aesthetic
value of the product.
6. Term of Protection: Per S11, registration initially lasts for 10 years from the
date of registration and can be renewed for an additional 5 years. During this
period, only the proprietor has legal rights over the design.
Limitations on Rights: While registration confers significant rights, there are certain
limitations:
1. Functional Features Not Protected: Only aesthetic aspects are protected;
functional or technical features are excluded under S2(d). Example: A gear
mechanism cannot be protected as a design.
2. Territorial Scope: Rights are limited to India unless international protection is
sought in other jurisdictions.
3. Non-Renewal: If renewal fees are not paid after 10 years, the protection
lapses.
Judicial Precedents
1. Dart Industries Inc v. Techno Plast (2016): Delhi HC upheld that copying
even minor aesthetic features of a registered design constitutes infringement.
2. Kohler Co. v. Somany Ceramics Ltd (2017): Designs must appeal solely to
the eye and not be dictated by functional requirements to qualify for protection.
Significance
1. Encourages Creativity: By granting exclusive rights, registration incentivizes
designers to create innovative and appealing products.
2. Prevents Unfair Competition: Protects businesses from competitors who
may try to replicate successful designs without authorization.
3. Enhances Market Value: Registered designs add commercial value by
distinguishing products in competitive markets.
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C. Term of Protection for Industrial Designs

Introduction: The Designs Act, 2000 governs the protection of industrial designs in
India. Registration of an industrial design provides the owner with exclusive rights to
use and protect the design for a specific period. The term of protection ensures that
designers can benefit commercially from their creations while eventually allowing the
design to enter the public domain for broader societal use.
Term of Protection: The term of protection for industrial designs in India is outlined
under S11 of the Designs Act, 2000. The following key points explain the duration and
renewal process:
1. Initial Term: A registered design is protected for an initial period of 10 years
from the date of registration. If priority is claimed under the Paris Convention,
the term begins from the priority date.
2. Renewal: The initial term can be extended by an additional 5 years, making
the total term of protection 15 years. To renew, the owner must file an
application for extension along with the prescribed fee before the expiry of the
initial 10-year period.
3. Lapse and Restoration: If the renewal fee is not paid within the prescribed
time, the registration lapses. However, under Rule 29 of the Designs Rules,
2001, restoration may be sought within 1 year from the date of lapse by
providing a valid reason and paying a surcharge.
Significance of Term
1. Encourages Innovation: The limited term incentivizes designers to create
new designs while ensuring that their creations eventually benefit society.
2. Commercial Advantage: The exclusive rights during the protection period
allow owners to monetize their designs through manufacturing, licensing, or
assignments.
3. Public Domain Access: After expiration, designs enter the public domain,
allowing others to use them freely without infringement concerns.
Judicial Precedents
1. Dart Industries Inc v. Techno Plast (2016): The Delhi High Court
emphasized that registered designs must be renewed within the prescribed time
to maintain exclusivity.
2. Kohler Co. v. Somany Ceramics Ltd (2017): Highlighted that expired
designs cannot be enforced against third parties as they enter the public
domain.
D. Grounds for Cancellation of Registration
Introduction: The Designs Act, 2000 provides a mechanism for the cancellation of a
registered design to ensure that only valid and deserving designs enjoy legal
protection. Cancellation proceedings can be initiated by any aggrieved person before
the Controller of Designs, based on specific grounds outlined in the Act. These
provisions aim to prevent misuse of design rights and maintain the integrity of the
design registration system.
Grounds for Cancellation: As per S19 of the Designs Act, 2000, a registered design
can be cancelled on any of the following grounds:
1. Lack of Novelty or Originality: The design is not new or original. Example:
If a design is found to have been published in India or elsewhere before the
date of registration, it lacks novelty and can be cancelled.
2. Prior Publication or Disclosure: The design has been disclosed to the public
anywhere in India or abroad before the filing date. Example: A design displayed
at an international trade fair prior to registration may be deemed as prior
publication.
 Page 50 of 55

3. Not Registrable Under the Act: The design does not meet the criteria for
registrability under the Act. Example: Functional features or designs dictated
solely by technical requirements are not registrable under S2(d).
4. Already Registered Design: The design is identical with or substantially
similar to an already registered design. Example: If two designs are found to
be deceptively similar, one may be cancelled.
5. Not Applied to an Article: The design is not applied to any article as defined
under S2(a) of the Act. Example: If a registered design is purely conceptual
and not applied to a tangible article, it can be cancelled.
6. Contrary to Public Order or Morality: The design is contrary to public order
or morality. Example: A design promoting illegal activities or offensive symbols
may be cancelled.
Procedure for Cancellation
1. Application for Cancellation: Any aggrieved person can file an application for
cancellation with the Controller of Designs using Form 8 along with prescribed
fees.
2. Hearing by Controller: The Controller examines the application and may
conduct hearings where both parties (the applicant and the registered
proprietor) are given an opportunity to present their case.
3. Decision: After considering evidence and arguments, the Controller may either
cancel the registration or reject the application.
4. Appeal: Any party aggrieved by the Controller's decision can appeal to the High
Court within 3 months from the date of the decision.
Judicial Precedents
1. Dart Industries Inc v. Techno Plast (2016): The Delhi High Court held that
lack of novelty is a valid ground for cancellation if prior publication is proven.
2. Kohler Co. v. Somany Ceramics Ltd (2017): Designs dictated solely by
functional requirements are not registrable & can be challenged on this ground.
Significance
1. Ensures Validity: Cancellation provisions ensure that only genuine, novel, and
original designs receive protection under law.
2. Prevents Abuse: Protects against frivolous registrations that may harm
competition or mislead consumers.
3. Maintains Integrity: Upholds the credibility of the industrial design
registration system by removing undeserving registrations.

Module 6: International Treaties

A. Berne Convention
Introduction: The Berne Convention for the Protection of Literary and Artistic Works,
commonly referred to as the Berne Convention, is an international treaty that
establishes a framework for the protection of copyrights across member countries. It
was adopted in 1886 in Berne, Switzerland, under the leadership of Victor Hugo and is
administered by the World Intellectual Property Organization (WIPO). The Berne
Convention ensures that creators (authors, musicians, artists, etc.) receive recognition
and protection for their works in all member countries, without the need for formal
registration or compliance with local procedures. India became a member of the Berne
Convention on April 1, 1928.
Key Principles of the Berne Convention
The Berne Convention operates on several fundamental principles:
1. Automatic Protection: Copyright protection is automatic and does not require
registration or other formalities. Example: A book published in a member
country is automatically protected in all other member countries.
 Page 51 of 55

2. National Treatment: Each member country must provide the same level of
copyright protection to works originating from other member countries as it
provides to its own nationals. Example: An Indian author’s work is protected in
France under French copyright laws as if it were created by a French national.
3. Minimum Standards of Protection: The convention establishes minimum
standards for copyright protection that all member countries must adhere to,
including:
o Protection of literary and artistic works (e.g., books, music, paintings).
o Duration of copyright protection (life of the author plus 50 years or more).
o Exclusive rights for authors, such as reproduction, adaptation, and public
performance.
4. Independence of Protection: Copyright protection in one country is
independent of whether the work is protected in its country of origin. Example:
Even if a work loses copyright protection in its home country, it may still be
protected in other member countries.
5. Moral Rights: Authors have moral rights to claim authorship and object to any
distortion or modification that could harm their reputation.
Scope of Protection: The Berne Convention covers a wide range of works, including:
• Literary works (e.g., novels, poems).
• Musical compositions.
• Artistic works (e.g., paintings, sculptures).
• Cinematographic works.
• Architectural designs.
• Derivative works such as translations and adaptations.
Duration of Protection: Under Article 7 of the Berne Convention:
• The standard duration of copyright protection is the life of the author plus 50
years.
• Member countries are free to provide longer durations (e.g., India provides life
plus 60 years under the Copyright Act, 1957).
Special Provisions
1. Three-Step Test: Limitations or exceptions to exclusive rights are allowed only
if they:
o Are confined to certain special cases.
o Do not conflict with the normal exploitation of the work.
o Do not unreasonably prejudice the legitimate interests of the author.
2. Cinematographic Works: Protected for at least 50 years after their release.
3. Developing Countries: Special provisions allow developing countries to adopt
measures that promote access to copyrighted works while respecting authors'
rights.
Administration: The Berne Convention is administered by WIPO. Member states meet
periodically to discuss updates and implementation issues.
India’s Compliance with the Berne Convention: India complies with the principles
of the Berne Convention through its domestic legislation, particularly the Copyright
Act, 1957. Key features include:
• Automatic protection without formalities.
• Moral rights for authors under S57.
• Duration of copyright protection for life plus 60 years.
Judicial Precedents
1. Gramophone Co. v. Birendra Bahadur Pandey (1984): The Supreme Court
held that India’s Copyright Act aligns with international obligations under the
Berne Convention by ensuring adequate protection for foreign works.
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2. Eastern Book Company v. D.B. Modak (2008): The court emphasized

originality as a key requirement for copyright protection under both Indian law
and international treaties like the Berne Convention.
Significance
1. Global Harmonization: The convention harmonizes copyright laws across
member countries, ensuring consistent protection worldwide.
2. Encourages Creativity: By providing robust protections, it incentivizes
authors and creators to produce more works.
3. Promotes Trade and Cultural Exchange: Facilitates international trade in
creative works and fosters cultural exchange among nations.
4. Protects Moral Rights: Ensures respect for authors’ personal connection with
their creations.

B. Budapest Treaty
Introduction: The Budapest Treaty on the International Recognition of the Deposit of
Microorganisms for the Purposes of Patent Procedure is an international treaty
administered by the World Intellectual Property Organization (WIPO). It was adopted
in 1977 and came into force in 1980. The treaty simplifies the process of patenting
inventions that involve microorganisms by allowing a single deposit of a microorganism
with an internationally recognized depository to satisfy patent requirements in all
member countries. India became a member of the Budapest Treaty on December 17,
2001, and it is implemented domestically under the Patents Act, 1970.
Purpose of the Budapest Treaty: The treaty addresses challenges in patenting
microorganisms, which cannot be described adequately in words or drawings. It
provides a mechanism for:
1. Ensuring that microorganisms used in inventions are accessible for examination
during patent procedures.
2. Avoiding the need for multiple deposits of microorganisms in different countries
where patent protection is sought.
Key Features of the Budapest Treaty
1. International Recognition of Deposits: A single deposit of a microorganism
with an International Depositary Authority (IDA) is recognized by all member
countries, eliminating the need for multiple deposits.
2. International Depositary Authorities (IDAs): IDAs are institutions
designated under the treaty to receive, store, and furnish samples of deposited
microorganisms. Example: In India, institutions like the Microbial Type Culture
Collection and Gene Bank (MTCC) and National Centre for Cell Science (NCCS)
are recognized as IDAs.
3. Scope: The treaty applies to microorganisms that are required to be deposited
as part of patent applications.
4. Confidentiality: The IDA maintains confidentiality regarding deposited
microorganisms until they are made available under patent law requirements.
5. Access to Deposited Material: Samples of deposited microorganisms are
made available only to authorized parties, such as patent examiners or
licensees, as per national laws.
6. Standardized Procedures: The treaty establishes uniform procedures for
depositing and accessing microorganisms, ensuring consistency across member
countries.
Advantages
1. Simplified Patent Process: Inventors need to deposit microorganisms only
once with an IDA, reducing administrative and financial burdens.
2. Global Recognition: Deposits are recognized in all member countries,
facilitating international patent applications.
 Page 53 of 55

3. Legal Certainty: The treaty ensures that deposited microorganisms are

securely stored and accessible when needed during patent examination or
enforcement.
4. Encourages Innovation: By simplifying the process, it encourages research
and development in biotechnology and related fields.
India’s Implementation: In India, compliance with the Budapest Treaty is governed
by the Patents Act, 1970, specifically under S10(4)(ii), which requires that biological
material mentioned in a patent application must be deposited with an IDA if it cannot
be fully described in writing. Recognized Indian IDAs include:
• Microbial Type Culture Collection (MTCC) at Chandigarh.
• National Centre for Cell Science (NCCS) at Pune.
Judicial Precedents
1. Dimminaco AG v. Controller of Patents & Designs (2002): The Calcutta
High Court upheld that biological inventions involving microorganisms could be
patented if they meet statutory requirements, including deposit under the
Budapest Treaty.
2. Monsanto Technology LLC v. Nuziveedu Seeds Ltd (2019): Highlighted
the importance of compliance with deposit requirements for biological material
in biotechnology patents.
Significance
1. Facilitates Biotechnology Patents: The treaty plays a crucial role in
protecting inventions in biotechnology, pharmaceuticals, agriculture, and other
fields involving microorganisms.
2. Enhances Global Cooperation: By harmonizing procedures across member
countries, it promotes international collaboration in research and innovation.
3. Reduces Costs and Complexity: A single deposit saves inventors from
duplicating efforts across jurisdictions, making the process more efficient.

C. TRIPS Agreement
Introduction: The Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS) is a comprehensive international treaty that establishes minimum
standards for the protection and enforcement of intellectual property rights (IPRs)
globally. It is administered by the World Trade Organization (WTO) and came into effect
on January 1, 1995. TRIPS is considered one of the most significant developments in
international intellectual property law, as it integrates IPRs into the global trading
system. India, as a member of the WTO, is a signatory to the TRIPS Agreement and
has amended its domestic laws, including the Patents Act, 1970, Copyright Act, 1957,
and Trade Marks Act, 1999, to comply with TRIPS obligations.
Objectives of TRIPS: The TRIPS Agreement aims to:
1. Promote effective and adequate protection of intellectual property rights.
2. Reduce distortions and impediments to international trade caused by
differences in IPR laws.
3. Ensure that measures to enforce IPRs do not themselves create barriers to
legitimate trade.
4. Provide a framework for resolving disputes related to IPRs under the WTO's
dispute settlement mechanism.
Key Features of the TRIPS Agreement: TRIPS sets out minimum standards for
various categories of intellectual property rights and provides guidelines for their
enforcement:
1. Categories of Intellectual Property Rights Covered
TRIPS covers the following areas:
• Copyrights:
 Page 54 of 55

o Protection extends to literary, artistic, and scientific works, including

computer programs and databases.
o Minimum term: Life of the author plus 50 years (Article 12).
• Trademarks:
o Protection for distinctive signs used in commerce.
o Minimum duration: 7 years, renewable indefinitely (Article 18).
• Patents:
o Protection for inventions that are new, involve an inventive step, and
are industrially applicable.
o Minimum term: 20 years from the filing date (Article 33).
• Industrial Designs:
o Protection for aesthetic features of products.
o Minimum term: 10 years (Article 26).
• Geographical Indications (GIs): Protection for products linked to specific
regions (e.g., Darjeeling Tea).
• Trade Secrets: Protection against unauthorized use or disclosure of
confidential business information.
• Integrated Circuits: Protection for layout designs under specific
conditions.
2. Enforcement Provisions:
TRIPS includes detailed provisions on enforcing IPRs:
• Civil and administrative procedures.
• Provisional measures (e.g., injunctions).
• Border measures to prevent importation of infringing goods.
• Criminal penalties for willful trademark counterfeiting or copyright piracy.
3. Dispute Resolution: Disputes arising under TRIPS are resolved through the
WTO's dispute settlement mechanism, ensuring compliance by member states.
Flexibilities Under TRIPS: To balance innovation with public interest, TRIPS provides
certain flexibilities for member countries:
1. Compulsory Licensing (Article 31): Allows governments to authorize third
parties to use a patented invention without the patent holder's consent under
specific conditions (e.g., public health emergencies).
2. Parallel Importation: Permits importing patented products from another
country where they are sold at lower prices.
3. Transition Periods: Developing countries were initially given time to
implement TRIPS provisions fully. Least Developed Countries (LDCs) have
extended deadlines for compliance.
4. Public Health Exception: The Doha Declaration on TRIPS and Public Health
(2001) affirmed that TRIPS should not prevent members from addressing public
health crises like access to medicines.
India’s Compliance with TRIPS: India has amended its intellectual property laws to
align with TRIPS requirements:
1. Patents Act, 1970:
o Introduced product patents in pharmaceuticals and agriculture in
compliance with Article 27.
o Provides compulsory licensing provisions under S84.
2. Trade Marks Act, 1999:
o Complies with trademark protection standards under Articles 15–21.
3. Copyright Act, 1957:
o Amended in 2012 to incorporate digital rights management and align
with Article 9.
4. Geographical Indications of Goods Act, 1999:
o Protects GIs like Darjeeling Tea in compliance with Article 22.
 Page 55 of 55

Judicial Precedents
1. Novartis AG v. Union of India [(2013) 6 SCC 1]: The Supreme Court upheld
India's interpretation of S3(d) of the Patents Act to prevent "evergreening"
practices while ensuring compliance with TRIPS flexibilities.
2. Bayer Corporation v. Natco Pharma Ltd (2014): Granted India's first
compulsory license for Bayer's cancer drug Nexavar under S84 of the Patents
Act, balancing public health needs with patent rights.
Significance of TRIPS
1. Harmonizes Intellectual Property Laws Globally: Establishes uniform
minimum standards across member countries.
2. Balances Innovation and Public Interest: Provides flexibilities like
compulsory licensing to address societal needs.
3. Enhances International Trade: Reduces trade barriers arising from
differences in IPR laws.
4. Strengthens Enforcement Mechanisms: Ensures effective protection
against infringement through legal remedies.
Criticism
1. Imbalance Between Developed and Developing Countries: Critics argue
that TRIPS favours developed nations by imposing stringent IPR standards on
developing countries.
2. Access to Medicines Issue: Patent protections may limit access to affordable
medicines in poorer nations despite public health exceptions.
Conclusion
The TRIPS Agreement is a cornerstone of global intellectual property law, providing a
comprehensive framework for protecting IPRs while allowing flexibilities to address
public interest concerns. India's adoption of TRIPS-compliant laws demonstrates its
commitment to fostering innovation while safeguarding societal welfare through
mechanisms like compulsory licensing and public health exceptions.

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