Lesson 1

INTRODUCTION
LESSON OUTLINE LEARNING OBJECTIVES
• Introduction Over the past two decades, intellectual property
rights have grown to a stature from where it plays a
• Meaning, Relevance, Business Impact
major role in the development of global economy. In
• Protection of Intellectual Property the 1990s, many countries unilaterally strengthened
• Copyrights their laws and regulations in this area, and many
others were poised to do likewise. At the multilateral
• Trademarks
level, the successful conclusion of the Agreement on
• Patents Trade-Related Aspects of Intellectual Property Rights
• Designs (TRIPS) in the World Trade Organization enhanced
the protection and enforcement of IPRs to the level of
• Utility Models
solemn international commitment. The new global
• Trade Secrets IPR system comes with both benefits and costs.

• Geographical Indications The domain of intellectual property is vast.

• Bio-diversity and IPR Copyrights, Patents Trademarks and Designs are
known to have received recognition for a long time.
• Competing Rationales for Protection of
Newer forms of the protection are also emerging
IPRs
particularly stimulated by the exciting developments
• Berne Convention in scientific and technological activities.
• Universal Copyright Convention The study lesson provides an in-depth understanding
• The Paris Convention to the students about the various forms of the
intellectual property, its relevance and business
• Patent Co-operation Treaty
impact in the changing global business environment.
• TRIPS Besides, the students will also be acclimatised with
• The World Intellectual Property the leading International Instruments concerning
Organization (WIPO) Intellectual Property Rights.

• UNESCO

• Lesson Round Up

• Self Test Questions

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INTRODUCTION

Intellectual property (IP) refers to the creations of the human mind like inventions, literary and artistic works,
and symbols, names, images and designs used in commerce. Intellectual property is divided into two
categories: Industrial property, which includes inventions (patents), trademarks, industrial designs, and
geographic indications of source; and Copyright, which includes literary and artistic works such as novels,
poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and
sculptures, and architectural designs. Rights related to copyright include those of performing artists in their
performances, producers of phonograms in their recordings, and those of broadcasters in their radio and
television programs. Intellectual property rights protect the interests of creators by giving them property rights
over their creations.

The most noticeable difference between intellectual property and other forms of property, however, is that
intellectual property is intangible, that is, it cannot be defined or identified by its own physical parameters. It
must be expressed in some discernible way to be protectable. Generally, it encompasses four separate and
distinct types of intangible property namely — patents, trademarks, copyrights, and trade secrets, which
collectively are referred to as “intellectual property.” However, the scope and definition of intellectual property
is constantly evolving with the inclusion of newer forms under the gambit of intellectual property. In recent
times, geographical indications, protection of plant varieties, protection for semi-conductors and integrated
circuits, and undisclosed information have been brought under the umbrella of intellectual property.

The Concept of Intellectual Property

The concept of intellectual property is not new as Renaissance northern Italy is thought to be the cradle of
the Intellectual Property system. A Venetian Law of 1474 made the first systematic attempt to protect
inventions by a form of patent, which granted an exclusive right to an individual for the first time. In the same
century, the invention of movable type and the printing press by Johannes Gutenberg around 1450,
contributed to the origin of the first copyright system in the world.

Towards the end of 19th century, new inventive ways of manufacture helped trigger large-scale
industrialization accompanied by rapid growth of cities, expansion of railway networks, the investment of
capital and a growing transoceanic trade. New ideals of industrialism, the emergence of stronger centralized
governments, and nationalism led many countries to establish their modern Intellectual Property laws. At this
point of time, the International Intellectual Property system also started to take shape with the setting up of
the Paris Convention for the Protection of Industrial Property in 1883 and the Berne Convention for the
Protection of Literary and Artistic Works in 1886. The premise underlying Intellectual Property throughout its
history has been that the recognition and rewards associated with ownership of inventions and creative
works stimulate further inventive and creative activity that, in turn, stimulates economic growth.

Over a period of time and particularly in contemporary corporate paradigm, ideas and knowledge have
become increasingly important parts of trade. Most of the value of high technology products and new
medicines lies in the amount of invention, innovation, research, design and testing involved. Films, music
recordings, books, computer software and on-line services are bought and sold because of the information
and creativity they contain, not usually because of the plastic, metal or paper used to make them. Many
products that used to be traded as low-technology goods or commodities now contain a higher proportion of
invention and design in their value, for example, brand-named clothing or new varieties of plants. Therefore,
creators are given the right to prevent others from using their inventions, designs or other creations. These
rights are known as intellectual property rights.
 Lesson 1 Introduction 3

The Convention establishing the World Intellectual Property Organization (1967) gives the following list of the
subject matter protected by intellectual property rights:
• literary, artistic and scientific works;
• performances of performing artists, phonograms, and broadcasts;
• inventions in all fields of human endeavor;
• scientific discoveries;
• industrial designs;
• trademarks, service marks, and commercial names and designations;
• protection against unfair competition; and
• “all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields.”

With the establishment of the world trade Organization (WTO), the importance and role of the intellectual
property protection has been crystallized in the Trade-Related Intellectual Property Systems (TRIPS)
Agreement. It was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and
Trade (GATT) treaty in 1994.

The TRIPS Agreement encompasses, in principle, all forms of intellectual property and aims at harmonizing
and strengthening standards of protection and providing for effective enforcement at both national and
international levels. It addresses applicability of general GATT principles as well as the provisions in
international agreements on IP (Part I). It establishes standards for availability, scope, use (Part II),
enforcement (Part III), acquisition and maintenance (Part IV) of Intellectual Property Rights. Furthermore, it
addresses related dispute prevention and settlement mechanisms (Part V). Formal provisions are addressed
in Part VI and VII of the Agreement, which cover transitional, and institutional arrangements, respectively.

The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most comprehensive
multilateral agreement on intellectual property. The areas of intellectual property that it covers are:

(i) Copyright and related rights (i.e. the rights of performers, producers of sound recordings and
broadcasting organisations);

(ii) Trade marks including service marks;

(iii) Geographical indications including appellations of origin;

(iv) Industrial designs;

(v) Patents including protection of new varieties of plants;

(vi) The lay-out designs (topographies) of integrated circuits;

(vii) The undisclosed information including trade secrets and test data.

Intellectual Property System in India

As discussed above, historically the first system of protection of intellectual property came in the form of
(Venetian Ordinance) in 1485. This was followed by Statute of Monopolies in England in 1623, which
extended patent rights for Technology Inventions. In the United States, patent laws were introduced in
1760. Most European countries developed their Patent Laws between 1880 to 1889. In India Patent Act
was introduced in the year 1856 which remained in force for over 50 years, which was subsequently modified
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distortions and impediments to international trade, promotion of effective and adequate protection of
intellectual property rights, and ensuring that measures and procedures to enforce intellectual property rights
do not themselves become barriers to legitimate trade.

The TRIPS Agreement encompasses, in principle, all forms of intellectual property and aims at harmonizing
and strengthening standards of protection and providing for effective enforcement at both national and
international levels. It addresses applicability of general GATT principles as well as the provisions in
international agreements on IP (Part I). It establishes standards for availability, scope, use (Part II),
enforcement (Part III), acquisition and maintenance (Part IV) of Intellectual Property Rights. Furthermore, it
addresses related dispute prevention and settlement mechanisms (Part V). Formal provisions are addressed
in Part VI and VII of the Agreement, which cover transitional, and institutional arrangements, respectively.

The obligations under TRIPS apply equally to all member states. However developing countries were
allowed extra time to implement the applicable changes to their national laws, in two tiers of transition
according to their level of development. The transition period for developing countries expired in 2005. For
least developed countries, the transition period has been extended to 2016, and could be extended beyond
that.

The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most comprehensive
multilateral agreement on intellectual property. The areas of intellectual property that it covers are:
(i) Copyright and related rights (i.e. the rights of performers, producers of sound recordings and
broadcasting organisations);
(ii) Trade marks including service marks;
(iii) Geographical indications including appellations of origin;
(iv) Industrial designs;
(v) Patents including protection of new varieties of plants;
(vi) The lay-out designs (topographies) of integrated circuits;
(vii) The undisclosed information including trade secrets and test data.

Issues Covered under TRIPS Agreement

The TRIPS agreement broadly focuses on following issues:
— How basic principles of the trading system and other international intellectual property agreements
should be applied.
— How to give adequate protection to intellectual property rights.
— How countries should enforce those rights adequately in their own territories.
— How to settle disputes on intellectual property between members of the WTO.
— Special transitional agreements during the period when the new system is being introduced.

Features of the Agreement

The main three features of the TRIPS Agreement are as follows-
Standards: The TRIPS Agreement sets out the minimum standards of protection to be provided by
each Member.
Enforcement: The second main set of provisions deals with domestic procedures and remedies for
 Lesson 1 Introduction 21

the enforcement of intellectual property rights. The Agreement lays down certain general principles
applicable to all IPR enforcement procedures.
Dispute settlement: The Agreement makes disputes between WTO Members about the respect of
the TRIPS obligations subject to the WTO's dispute settlement procedures.

In addition the Agreement provides for certain basic principles, such as national and most-favoured-nation
treatment (non-discrimination), and some general rules to ensure that procedural difficulties in acquiring or
maintaining IPRs do not nullify the substantive benefits that should flow from the Agreement.

The TRIPS Agreement is a minimum standards agreement, which allows Members to provide more
extensive protection of intellectual property if they so wish. Members are left free to determine the
appropriate method of implementing the provisions of the Agreement within their own legal system and
practice.

Protection of Intellectual Property under TRIPS

The TRIPS Agreement provides for protection of various kinds of intellectual property rights to ensure that
adequate standards of protection exist in all member countries. The starting point is the obligations of the
main international agreement of the World Intellectual Property Organization (WIPO) that already existed
before the WTO was created; namely, the Paris Convention for the Protection of Industrial Property (patents,
industrial designs, etc.) and the Berne Convention for the Protection of Literary and Artistic Works
(copyright). However, some areas were not covered by these conventions while in some cases, the
standards of protection prescribed were thought inadequate. So the TRIPS agreement adds a significant
number of new or higher standards for the protection of intellectual property rights. Part II of the Agreement
addresses, in its various sections, the different kinds of IPR and establishes standards for each category.

Copyright and Related Rights

The TRIPS Agreement requires member countries to comply with the basic standards of the Berne
Convention. This is expressed in Article 9.1 of the Agreement which makes reference to the Berne
Convention for the Protection of Literary and Artistic Works of 1971 and establishes that Members should
comply with Articles 1 through 21 and the Appendix thereto.

However, Members do not have rights or obligations under the TRIPS Agreement in respect of the rights
conferred under Article 6bis of that Convention, i.e. the moral rights (the right to claim authorship and to
object to any derogatory action in relation to a work, which would be prejudicial to the author's honour or
reputation), or of the rights derived therefrom. The provisions of the Berne Convention referred to deal with
questions such as subject-matter to be protected, minimum term of protection, and rights to be conferred and
permissible limitations to those rights. The Appendix allows developing countries, under certain conditions, to
make some limitations to the right of translation and the right of reproduction. That apart, the TRIPS
Agreement clarifies and adds certain specific points.

Article 9.2 of the Agreement confirms that copyright protection shall extend to expressions and not to ideas,
procedures, methods of operation or mathematical concepts as such.

Computer programs and Compilation: Article 10.1 provides that computer programs, whether in source or
object code, shall be protected as literary works under the Berne Convention (1971). This provision confirms
that computer programs must be protected under copyright and that those provisions of the Berne
Convention that apply to literary works shall be applied also to them. It confirms further, that the form in
which a program is, whether in source or object code, does not affect the protection. The obligation to protect
computer programs as literary works means e.g. that only those limitations that are applicable to literary
 Lesson 1 Introduction 29

protect the interest of producers of such goods. This resulted into controversial cases like turmeric, neem
and basmati. To cover up such situations it became necessary to have a comprehensive legislation for
registration and for providing adequate protection for geographical indications and accordingly the
Parliament has passed a legislation, namely, the Geographical indication of Goods (Registration and
Protection) Act, 1999.

• TRIPS Agreement under WTO contains provisions with regard to setting up of standards concerning
availability, scope and use of Intellectual Property Rights, Geographical Indications, Layout-Design of
Integrated Circuits etc. Therefore, the Government enacted the Semi-conductor Integrated Circuits Layout-
Designs Act, 2000 providing for protection of Semi-conductor Integrated Circuits Layout-Designs

• The Protection of Plant Varieties and Farmers’ Rights Act 2001 was enacted in India to protect the new
plant varieties. The various modifications and amendments to earlier Intellectual Property Laws are an
indication of India's move towards new IPR regime so as to prepare ourselves for the global trade
competition.

• Only a small but significant number of countries and regions provide the option of utility model protection. At
present India does not have legislation on Utility Models.

• Following India’s ratification of the Convention on Biological Diversity (CBD) at international level, the
Biological Diversity Act, 2002 was adopted. The Biological Diversity Act aims at conservation of biological
resources and associated knowledge as well as facilitating access to them in a sustainable manner and
through a just process.

• Strong intellectual property rights help consumers make an educated choice about the safety, reliability,
and effectiveness of their purchases. Enforced intellectual property rights ensure that products are
authentic, and of the high-quality that consumers recognize and expect. IP rights foster the confidence and
ease of mind that consumers demand and markets rely on.

• There are number of International Treaties/Conventions which deal with the various aspects of intellectual
property and industrial property. These Conventions are administered by World Intellectual Property
Organisation, popularly known as WIPO.

SELF TEST QUESTIONS

These are meant for re-capitulation only. Answers to these questions are not to be submitted for
evaluation.
1. What is meant by Intellectual Property?
2. What are “intellectual property rights?
3. Why does intellectual property need to be promoted and protected?
4. What are the legislations covering IPRs in India?
5. Who are responsible for administration of IPRs in the country?
6. India provides protection to Intellectual Property Rights in accordance with its obligations under the
TRIPS Agreement of the WTO. Discuss.
7. List out the subject matter protected by intellectual property rights under the World Intellectual
Property Organization(WIPO).
8. Enumerate the salient features of the Design Act 2000.
9. Outline the main differences between utility models and patents. Does India have legislation on
Utility models?
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10. What is Convention on Biological Diversity (CBD)? Is India a member of CBD? If yes, explain the
approach adopted by India towards Biological Diversity.
11. What is the legal position in India for protecting New Plant Varieties?
12. What are the objects and purposes behind plant varieties protection law?
13. Explain the competing rationales for protection of IPRs.
14. What is TRIPS Agreement? Outline the main three features of the TRIPS Agreement.
15. Summarize the provisions of Paris Convention for the Protection of Industrial Property.
16. What is the World Intellectual Property Organization?
17. How does WIPO promote the protection of intellectual property?
18. Write short notes on the following:
(i) Utility Models
(ii) The Berne Convention
(iii) Advantages of PCT Filing
(iv) Issues covered under TRIPS Agreement.
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CONCEPT OF PATENT

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

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

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

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

In England during the 16th and 17th Century, the inventor’s patent of monopoly had become of great national
importance. From the mid-seventeenth Century through the mid-nineteenth Century, the laws recognising
the patent monopoly spread throughout Europe and North America, but these privileges were not granted
without the opposition.

The origin of the Indian Patent System could be traced to the Act of 1856 granting exclusive privileges to
inventors. The patent regime at the time of Independence was governed by the Patents and Designs Act,
1911, which had provisions both for product and process patents. It was, however, generally felt that the
patent law had done little good to the people of the country. The way the Act was designed benefited
foreigners far more than Indians. It did not help at all in the promotion of scientific research and
industrialization in the country, and it curbed the innovativeness and inventiveness of Indians.

Shortly after Independence, therefore, in 1949, a committee was constituted under the chairmanship of
Justice (Dr.) Bakshi Tek Chand, a retired judge of the Lahore High Court, to undertake a comprehensive
review of the working of the 1911 Act. The Committee submitted its interim report on August 4, 1949 and the
 Lesson 2 Patents 33

final report in1950 making recommendations for prevention of misuse or abuse of patent rights in India. It
also observed that the Patent Act should contain a clear indication that food and medicine and surgical and
curative devices were to be made available to the public at the cheapest price commensurate with giving
reasonable compensation to the patentee. Based on the committee’s recommendations, the 1911 Act was
amended in 1950 (by Act XXXII of 1950) in relation to working of inventions, including compulsory licensing
and revocation of patents. In 1952, a further amendment was made (by Act LXX of 1952) to provide for
compulsory license in respect of food and medicines, insecticide, germicide or fungicide, and a process for
producing substance or any invention relating to surgical or curative devices. The committee’s
recommendation prompted the Government to introduce a bill (Bill no. 59 of 1953) in Parliament, but the bill
was not pressed and it was allowed to lapse.

In 1957, another committee came to be appointed under the chairmanship of Justice N. Rajagopala
Ayyangar to take a fresh look at the law of patent and to completely revamp and recast it to best sub-serve
the contemporary needs of the country. Justice Ayyangar’s report specially discussed (a) patents for
chemical inventions; and (b) patents for inventions relating to food and medicine. Justice Ayyangar submitted
a comprehensive Report on Patent Law Revision in September 1959 and the new law of patent, namely, the
Patents Act, 1970, came to be enacted mainly based on the recommendations of the report, and came into
force on April 20, 1972 replacing the Patents and Designs Act, 1911. However, the 1911 Act continued to be
applicable to designs.

Patents Act, 1970

The Patents Act, 1970 remained in force for about 24 years without any change till December 1994. Being a
landmark in the industrial development of India, the basic philosophy of the Act is that patents are granted to
encourage inventions and to secure that these inventions are worked on a commercial scale without undue
delay; and patents are granted not merely to enable patentee to enjoy a monopoly for the importation of the
patented article into the country. The said philosophy is being implemented through compulsory licensing,
registration of only process patents for food, medicine or drug, pesticides and substances produced by
chemical processes which, apart from chemical substances normally understood, also include items such as
alloys, optical glass, semi-conductors, inter metallic compounds etc. It may, however, be noted that products
vital for our economy such as agriculture & horticulture products, atomic energy inventions and all living
things are not patentable. Thus, the Patents Act 1970 was expected to provide a reasonable balance
between adequate and effective protection of patents on the one hand and the technology development,
public interest and specific needs of the country on the other hand.

Uruguay round of GATT negotiations paved the way for WTO. Therefore, India was put under the contractual
obligation to amend its Patents Act in compliance with the provisions of TRIPS. India had to meet the first set
of requirements on 1-1-1995. Accordingly an Ordinance effecting certain changes in the Act was issued on
31st December 1994, which ceased to operate after six months. Subsequently, another Ordinance was
issued in 1999. This Ordinance was subsequently replaced by the Patents (Amendment) Act, 1999 that was
brought into force retrospectively from 1st January, 1995. The amended Act provided for filing of applications
for product patents in the areas of drugs, pharmaceuticals and agro chemicals though such patents were not
allowed. However, such applications were to be examined only after 31-12-2004. Meanwhile, the applicants
could be allowed Exclusive Marketing Rights (EMR) to sell or distribute these products in India, subject to
fulfilment of certain conditions.

India amended its Patents Act again in 2002 through the Patents (Amendment) Act, 2002 increasing the term
of patent to 20 years for all technology, Reversal of burden of proof, compulsory licences etc. This Act came
into force on 20th May 2003 with the introduction of the new Patent Rules, 2003 by replacing the earlier
Patents Rules, 1972.
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The third amendment to the Patents Act 1970 was introduced through the Patents (Amendment) Ordinance,
2004 w.e.f. 1st January, 2005 incorporating provisions for granting product patent in all fields of Technology
including chemicals, food, drugs & agrochemicals. This Ordinance was later replaced by the Patents
(Amendment) Act 2005 on 4th April, 2005 which is in force now having effect from 1-1-2005.

Patents Rules: Under the provisions of Section 159 of the Patents Act, 1970 the Central Government is
empowered to make rules for implementing the Act and regulating patent administration. Accordingly, the
Patents Rules, 1972 were notified and brought into force w.e.f. 20.4.1972. These Rules were amended from
time to time till 20th May 2003 when new Patents Rules, 2003 were brought into force by replacing the 1972
rules. These rules were further amended by the Patents (Amendment) Rules, 2005 and the Patents
(Amendment) Rules, 2006. The last amendments are made effective from 5th May 2006.

There are four Schedules to the Patents (Amendment) Rules 2005; the First Schedule prescribes the fees to
be paid; the Second Schedule specifies the list of forms and the texts of various forms required in connection
with various activities under the Patents Act. These forms are to be used wherever required and if needed,
they can be modified with the consent of the Controller. The Third Schedule prescribes form of Patent to be
issued on Grant of the Patent. The Fourth Schedule prescribes costs to be awarded in various proceedings
before the Controller under the Act.

SALIENT FEATURES OF THE ACT

A patent is an exclusive right granted by a country to the owner of an invention to make, use, manufacture
and market the invention, provided the invention satisfies certain conditions stipulated in the law. Exclusivity
of right implies that no one else can make, use, manufacture or market the invention without the consent of
the patent holder. This right is available only for a limited period of time. However, the use or exploitation of a
patent may be affected by other laws of the country which has awarded the patent.

These laws may relate to health, safety, food, security etc. Further, existing patents in similar area may also
come in the way. A patent in the law is a property right and hence, can be gifted, inherited, assigned, sold or
licensed. As the right is conferred by the State, it can be revoked by the State under very special
circumstances even if the patent has been sold or licensed or manufactured or marketed in the meantime.
The patent right is territorial in nature and inventors/their assignees will have to file separate patent
applications in countries of their interest, along with necessary fees, for obtaining patents in those countries.

A patent is an official document given to an inventor by the government allowing him to exclude anyone else
from commercially exploiting his invention for a limited period which is 20 years at present. As per the
Supreme Court, the object of Patent Law is to encourage scientific research, new technology and industrial
progress. Grant of exclusive privilege to own, use or sell the method or the product patented for a limited
period, stimulates new inventions of commercial utility. The price of the grant of the monopoly is the
disclosure of the invention at the Patent Office, which, after the expiry of the fixed period of the monopoly,
passes into the public domain [M/s Bishwanath Prasad v. Hindustan Metal Industries, AIR1982 SC 1444]. By
granting an exclusive right, patents provide incentives to individuals, offering them recognition for their
creativity and material reward for their marketable inventions. In return for the exclusive right, the inventor
has to adequately disclose the patented invention to the public, so that others can gain the new knowledge
and can further develop the technology. The disclosure of the invention is thus an essential consideration in
any patent granting procedure.

Product/Process Patents
Section 5 of the Patent Act 1970 had provided for grant of only process patents in certain categories of
inventions. It may be pointed out here that under the Patent Act, 1970, in all other areas product and process
 Lesson 2 Patents 35

patents could be issued and have been issued. The Paris Convention has left this issue to be dealt with in
the States legislation in a manner of its own choice.

The TRIPs Agreement under Article 27.1 stipulates that patents shall be available for any inventions,
whether products or processes in all fields of technology except for the exclusion stipulated under Article
27.2 and 27.3.

Pursuant to the TRIPs agreement, the Patent Act, 1970 was amended in 2002. Section 5 of the Patents Act,
1970 (as it stood after the 2002 amendments) provided that, in the case of inventions being claimed relating
to food, medicine, drugs or chemical substances, only patents relating to the methods or processes of
manufacture of such substances could be obtained.

An explanation appended to the Section 5 provided that “chemical process” includes biochemical,
biotechnological and microbiological processes. Subsequently, Section 5 of the Patents Act, 1970 was
deleted by the Patents (Amendment) Act, 2005 that came into force on 01.01.2005, thereby paving the way
for product patents.

This deliberate strategy of denying product patent protection to pharmaceutical inventions is traceable to the
Ayyangar Committee Report, a report that formed the very basis of the Patents Act, 1970. The Committee
found that foreigners held between eighty and ninety percent of Indian patents and that more than ninety
percent of these patents were not even worked in India. The Committee concluded that the system was
being exploited by multinationals to achieve monopolistic control over the market, especially in relation to
vital industries such as food, chemicals and pharmaceuticals.

The Patents Act has been amended keeping in view the development of technological capability in India,
coupled with the need for integrating the intellectual property system with international practices and
intellectual property regimes. The amendments have also been aimed at making the Act a modern,
harmonised and user-friendly legislation to adequately protect national and public interests while
simultaneously meeting India’s international obligations.

DURATION OF PATENTS
Section 53 provides that the term of every patent granted after the commencement of the Patents
(Amendment) Act, 2002 and the term of every patent which has not expired and has not ceased to have
effect, on the date of such commencement, shall be twenty years from the date of filing of application for the
patent.

Explanation to Section 53(1) clarifies that the term of patent in case of international applications filed under
the PCT designating India, shall be twenty years from the international filing date accorded under the Patent
Cooperation Treaty.

A patent shall cease to have effect on the expiration of the period prescribed for the payment of any renewal
fee, if that fee is not paid within the prescribed period or within such extended period as may be prescribed.
Further on cessation of the patent right due to non-payment of renewal fee or on expiry of the term of patent,
the subject matter covered by the said patent shall not be entitled to any protection.

Rule 80 requires that to keep a patent in force, the renewal fees specified in the First Schedule should be
paid at the expiration of the second year from the date of the patent or of any succeeding year and the same
should be remitted to the patent office before the expiration of the second or the succeeding year. Sub-rule
(1A) inserted by Patents (Amendment) Rules, 2005 provides that the period for payment of renewal fees may
be extended to such period not being more than six months if the request for such extension of time is made
36 PP-IPRL&P

in Form 4 with the fee specified in the First Schedule. While paying the renewal fee, the number and date of
the patent concerned and the year in respect of which the fee is paid is required to be quoted. The annual
renewal fees payable in respect of two or more years may be paid in advance

PATENTABLE SUBJECT MATTER

Elements of Patentability

As stated above, a patent is granted for an invention which may be related to any process or product. An
invention is different from a discovery. Discovery is something that already existed but had not been found.

Not all inventions are patentable. An invention must fulfill certain requirements known as conditions of
patentability. The word “invention” under the Patents Act 1970 means “a new product or process involving an
inventive step and capable of industrial application. (Section 2(1)(j)).

The patent must be in respect of an invention and not a discovery. The fundamental principle of Patent Law
is that a patent is granted only for an invention which must be new and useful. That is to say, it must have
novelty and utility. It is essential for the validity of a patent that it must be the inventor’s own discovery as
opposed to mere verification of what was already known before the date of the patent… It is important to
bear in mind that in order to be patentable an improvement on something known before or a combination of
different matters already known, should be something more than a mere workshop improvement; and must
independently satisfy the test of invention or an “inventive step”. To be patentable the improvement or the
combination must produce a new result, or a new article or a better or cheaper article than before.

“New invention” is defined as any invention or technology which has not been anticipated by publication in
any document or used in the country or elsewhere in the world before the date of filing of patent application
with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form
part of the state of the art [Section 2(1)(l); Where, capable of industrial application, in relation to an invention,
means that the invention is capable of being made or used in an industry [Section 2(1)(ac)].

In Raj Prakash v. Mangat Ram Choudhary AIR 1978 Del.1, it was held that invention, as is well known, is to
find out some thing or discover some thing not found or discovered by anyone before. It is not necessary that
the invention should be any thing complicated. The essential thing is that the inventor was first to adopt it.
The principal therefore, is that every simple invention that is claimed, so long as it is something which is
novel or new, it would be an invention and the claims and specifications have to be read in that light.

Therefore, the conditions of patentability are:

• Novelty
• Inventive step (non-obviousness) and
• Industrial applicability (utility)

Novelty
A novel invention is one, which has not been disclosed, in the prior art where prior art means everything that
has been published, presented or otherwise disclosed to the public on the date of patent (The prior art
includes documents in foreign languages disclosed in any format in any country of the world.) For an
invention to be judged as novel, the disclosed information should not be available in the 'prior art'. This
means that there should not be any prior disclosure of any information contained in the application for patent
(anywhere in the public domain, either written or in any other form, or in any language) before the date on
which the application is first filed i.e. the 'priority date'.
 Lesson 2 Patents 37

Therefore, an invention shall be considered to be new, if it does not form part of the prior art. Although the
term prior art has not been defined under the Indian Patents Act, it shall be determined by the provisions of
Section 13 read with the provisions of Sections 29 to 34.
(a) An invention shall not be considered to be novel if it has been anticipated by publication before the
date of the filing of the application in any of the specification filed in pursuance of application for
patent in India on or after the 1st day of January 1912.
(b) An invention shall not be considered to be novel if it has been anticipated by publication made
before the date of filing of the application in any of the documents in any country.
(c) An invention shall not be considered to be novel if it has been claimed in any claim of any other
complete specification filed in India which is filed before the application but published after said
application.
(d) An invention shall not be considered to be novel if it has been anticipated having regard to the
knowledge, oral or otherwise, available within any local or indigenous community in India or
elsewhere.
In Ganendro Nath Banerji v. Dhanpal Das Gupta, AIR1945 Oudh 6, it was held that no general rule can be
laid down as to what does or does not constitute an invention. The general criterion seems to be whether
that which is claimed lies within the limits of development of some existing trade, in the sense that it is such a
development as an ordinary person skilled in that trade could, if he wishes so to do, naturally, make without
any inventive step. But novelty need only be established in the process of manufacturing, not in the article
produced. Novel combination of two known ideas may be sufficient to establish novelty of subject matter in
this respect.
In Ram Narain Kher v. M/s Ambassador Industries, AIR 1976 Del 87, the Delhi High Court has held that at
the time the patent is granted to a party it is essential that the party claiming patent should specify what
particular features of his device distinguish it from those which had gone before and show the nature of the
improvement which is said to constitute the invention. A person claiming a patent has not only to allege the
improvement in art in the form but also that the improvement effected a new and very useful addition to the
existing state of knowledge. The novelty or the invention has to be succinctly stated in the claim.
Inventive Step (Non-obviousness)
Inventive step is a feature of an invention that involves technical advance as compared to existing knowledge
or having economic significance or both, making the invention non obvious to a person skilled in art. Here
definition of inventive step has been enlarged to include economic significance of the invention apart from
already existing criteria for determining inventive step.
An invention shall not be considered as involving an inventive step, if, having regard to the state of the art, it
is obvious to a person skilled in the art. The term "obvious" means that which does not go beyond the normal
progress of technology but merely follows plainly or logically from the prior art, i.e. something which does not
involve the exercise of any skill or ability beyond that to be expected of the person skilled in the Art.
For this purpose a “person skilled in the art” should be presumed to be an ordinary practitioner aware of what
was general common knowledge in the relevant art at the relevant date. In some cases the person skilled in
the art may be thought of as a group or team of persons rather than as a single person.
Industrial Applicability
An invention is capable of industrial application if it satisfies three conditions, cumulatively:
• can be made;
38 PP-IPRL&P

• can be used in at least one field of activity;

• can be reproduced with the same characteristics as many times as necessary.

1. An invention to be patentable must be useful. If the subject matter is devoid of utility it does not satisfy the
requirement of invention.

2. For the purpose of utility, the element of commercial or pecuniary success has no relation to the question
of utility in patent law.

3. The usefulness of an alleged invention depends not on whether by following the directions in the complete
specification all the results not necessary for commercial success can be obtained, but on whether by such
directions the effects that the application/patentee professed to produce could be obtained.

4. The meaning of usefulness is therefore useful for the purpose indicated by the applicant or patentee
whether a non-commercial utility is involved.

5. The usefulness of the invention is to be judged, by the reference to the state of things at the date of filing
of the patent application, if the invention was then useful, the fact that subsequent improvement have
replaced the patented invention render it obsolete and commercially of no value, does not invalidate the
patent.

6. Speculation or imaginary industrial uses are not considered to satisfy the industrial application
requirement.

NON PATENTABLE SUBJECT MATTER

An invention may satisfy the condition of novelty, inventiveness and usefulness but it may not qualify for a
patent. The following are not inventions within the meaning of Section 3 of the Patents Act, 1970:
(a) an invention which is frivolous or which claims anything obviously contrary to well established
natural laws;
(b) an invention the primary or intended use or commercial exploitation of which could be contrary to
public order or morality or which causes serious prejudice to human, animal or plant life or health or
to the environment;
(c) the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of
any living thing or non-living substances occurring in nature;
(d) the mere discovery of a new form of a known substance which does not result in the enhancement
of the known efficacy of that substance or the mere discovery of any property or mere new use for a
known substance or of the mere use of a known process, machine or apparatus unless such known
process results in a new product or employs at least one new reactant; Explanation to clause (d)
clarifies that salts, esters, polymorphs, metabolites, pure form, particle size, isomers, mixtures of
isomers, complexes, combinations and other derivatives of known substance shall be considered to
be the same substance, unless they differ significantly in properties with regard to efficacy.
(e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the
components thereof or a process for producing such substance;
(f) the mere arrangement or re-arrangement or duplication of known devices each functioning
independently of one another in a known way;
(g) omitted by Patents (Amendment) Act, 2002.
 Lesson 2 Patents 39

(h) a method of agriculture or horticulture;

(i) any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other
treatment of human beings or any process for a similar treatment of animals to render them free of
disease or to increase their economic value or that of their products;
(j) plants and animals in whole or any part thereof other than micro-organisms but including seeds,
varieties and species and essentially biological processes for production or propagation of plants
and animals;
(k) a computer programme per se other than its technical application to industry or a combination with
hardware;
(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including
cinematographic works and television productions;
(m) a mere scheme or rule or method of performing mental act or method of playing game;
(n) a presentation of information;
(o) topography of integrated circuits;
(p) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of
known properties of traditionally known component or components.

Section 4 prohibits the grant of patent in respect of an invention relating to atomic energy falling within Sub-
section (1) of Section 20 of the Atomic Energy Act, 1962.

Section 20 of the Atomic Energy Act, 1962 contains special provision relating to inventions. Under Section 20
(1) of the Atomic Energy Act, 1962 “no patents shall be granted for inventions which in the opinion of the
Central Government are useful for or relate to the production, control, use or disposal of atomic energy or the
prospecting, mining, extraction, production, physical and chemical treatment, fabrication, enrichment,
canning or use of any prescribed substance or radioactive substance or the ensuring of safety in atomic
energy operations”.

Application for Patent

Section 6 of the Act provides that an application for a patent for an invention may be made by any of the
following persons either alone or jointly with another:
(a) by any person claiming to be the true and first inventor of the invention;
(b) by any person being the assignee of the person claiming to be the true and first inventor in respect
of the right to make such an application;
(c) by the legal representative of any deceased person who immediately before his death was entitled
to make such an application.

As per Section 2(1)(y), “true and first Inventor” does not include either the first importer of an invention into
India or a person to whom an invention is first communicated from outside India. The applicant should
disclose the name, address and nationality of the true and first applicant.

Assignee can be a natural person or other than natural person like registered company, research
organization, educational institute or Government (S.2 (1)(s)). Assignee includes assignee of the assignee
also (S. 2(1)(ab)). ‘Proof of right’ to apply such as assignment deed should be submitted by the assignee.
 Lesson 7
TRADE MARKS
LESSON OUTLINE LEARNING OBJECTIVES
• Introduction & Historical Perspective A trade mark provides protection to the owner of the
mark by ensuring the exclusive right to use it, or to
• Definitions
authorize another to use the same in return for
• Different Kinds of Marks payment. The period of protection varies, but a
• Registration of Trade Marks trademark can be renewed indefinitely beyond the
time limit on payment of additional fees.
• Procedure for Registration

• Opposition to Registration & Procedure In a larger sense, trade marks promote initiative and
enterprise worldwide by rewarding the owners of
• Grounds for Refusal to Registration trademarks with recognition and financial profit.
• Infringement of Trade Marks Trade mark protection also hinders the efforts of
unfair competitors, such as counterfeiters, to use
• Assignment& Transmission
similar distinctive signs to market inferior or different
• Offences Penalties products or services. The system enables people
• Madrid Agreement with skill and enterprise to produce and market
goods and services in the fairest possible conditions,
• Domain Names
thereby facilitating international trade.
• Lesson Round Up
With the advent of WTO, the law of trade marks is
• Self Test Questions now modernized under the Trade Marks Act of 1999
and is in harmony with two major international
treaties on the subject, namely, The Paris
Convention for Protection of Industrial Property and
TRIPS Agreement.

Trade marks being an important aspect of the

intellectual property, students need to be well versed
with the conceptual and legal framework, and
procedural requirements relating to trade marks.
114 PP-IPRL&P

A trade mark (popularly known as brand name in layman’s language) is a visual symbol which may be a
word to indicate the source of the goods, a signature, name, device, label, numerals, or combination of
colours used, or services, or other articles of commerce to distinguish it from other similar goods or services
originating from another. It is a distinctive sign which identifies certain goods or services as those produced
or provided by a specific person or enterprise. Its origin dates back to ancient times, when craftsmen
reproduced their signatures, or "marks" on their artistic or utilitarian products. Over the years these marks
evolved into today's system of trade mark registration and protection. The system helps consumers identify
and purchase a product or service because its nature and quality, indicated by its unique trade mark, meets
their needs.

A trade mark provides protection to the owner of the mark by ensuring the exclusive right to use it or to
authorize another to use the same in return for payment. The period of protection varies, but a trade mark
can be renewed indefinitely beyond the time limit on payment of additional fees. Trade mark protection is
enforced by the courts, which in most systems have the authority to block trade mark infringement.

In a larger sense, trade marks promote initiative and enterprise worldwide by rewarding the owners of trade
marks with recognition and financial profit. Trade mark protection also hinders the efforts of unfair
competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or
services. The system enables people with skill and enterprise to produce and market goods and services in
the fairest possible conditions, thereby facilitating international trade.

Historical Perspective

The Indian Trade Marks Act, 1940 was the first statute law on trade marks in India. Prior to that protection of
trade marks was governed by Common Law. Cases concerning trade marks were decided in the light of
Section 54 of Specific Relief Act, 1877, while registration was secured by obtaining a declaration as to
ownership under the Indian Registration Act, 1908. Some of the provisions of the first Trade Marks Act, 1940
came into force on 11.3.1940 and the rest became effective on 1.6.1942 (Gazette of India Extraordinary,
1942. p.684)

The said enactment was amended by the Trade Marks (Amendment) Act, 1941 and later by two other
amendments. By the Trade Marks (Amendment) Act, 1943, the Trade Marks Registry, which was formerly a
part of the Patent Office, Calcutta (now Kolkata) was separated from the Patent Office to constitute a
separate Trade Marks Registry under a Registrar of Trade Marks at Bombay (now Mumbai). Thereafter, the
Act was amended by the Trade Marks (Amendment) Act, 1946, to give effect to the reciprocal arrangement
relating to trade marks between the Government of India and the then Indian States and further amendments
introduced by Part B States Laws Act, 1951.

The Trade Marks Enquiry Committee, which was constituted by the Government of India in November 1953,
recommended some changes, but since the report showed some divergence of opinion among the
members, Mr. Justice Rajagopala Ayyangar (then a Judge of the Madras High Court, who later served and
retired as a judge of the Supreme Court) was appointed by the Government of India to examine the Trade
Marks Act, 1940, with reference to the report of the Trade Marks Enquiry Committee and to recommend as
to what changes in the then law were necessary. On the basis of the report of Mr. Justice Ayyangar, the
Trade Marks Act, 1940 was replaced by the Trade & Merchandise Marks Act, 1958. The Trade &
Merchandise Marks Act, 1958 consolidated the provisions of the Trade Marks Act, 1940, the Indian
Merchandise Marks Act, 1889 (which was in force since 1.4.1889) and the provisions relating to trade marks
in the Indian Penal Code. The Trade & Merchandise Marks Act, 1958 was brought into force on 25th
122 PP-IPRL&P

Preliminary Approval and Publication, Show Cause Hearing or Rejection of the Application
During the process of examination, the Trade Marks Office determines if the trade mark is barred for
registration either under absolute grounds for refusal and/or relative grounds for refusal as prescribed in the
Trade Marks Act, 1999. Accordingly, they issue an examination report and the Applicant must respond to the
objections that have been raised in the examination report within a period of one month from the issuance of
the examination report. Thereafter and based on the response to the examination report that has been filed
by the Applicant, the Registrar of Trade Marks determines if the application should be refused, accepted for
advertisement, accepted subject to certain limitations or put up for a “show cause” hearing, during which the
application might be accepted, rejected or accepted subject to certain limitations. Should the application be
rejected, the Applicant can approach the Intellectual Property Appellate Board to appeal the order of the
Registrar of Trade Marks.

Registration
Within three months of the publication of the trade mark in the Trade Marks Journal, should the trade mark
not be opposed by a third party, it will proceed for registration and the Trade Marks Registry will accordingly
issue a registration certificate.

Requisites for Registration

The Trade Marks Act, 1999 does not expressly list any requisites for registration. The requirements for
registration and the definition of trade mark have converged. Instead of detailing requisites for registration,
grounds for refusal are listed in Section 9(1), (2) and (3) & Section 11 which conversely are requisites for
registration. Most of the substantive law laid down by the Trade & Merchandise Marks Act, 1958 remains
valid and would hold the ground for administering the provisions of Trade Marks Act, 1999. From previous
operation of trade mark law, four categories of trade marks were made out i.e., names, signatures, words
and other distinctive marks. Most of the principles relating thereto would hold good under the new
dispensation.

Now any mark which is a trade mark may be registered for any goods or services if it is not hit by any of the
two kinds of grounds for refusal or other specific prohibitions. The first requisite is that it should be a trade
mark within the meaning of Trade Marks Act, 1999 which concept itself imports many conditions as has been
mentioned earlier in the legal concept of trade mark. There emerge many conditions from the definition of
trade mark in Section 2(1) (zb). The identification and distinguishing functions performed by the trade mark
must be fulfilled by the trade mark sought to be registered in India. That the trade mark is registered in any
other member country of Paris Convention* or has been refused to be registered is not a factor to be
considered in relation to registration of the trade mark. Explanation to Section 9 has been inserted to dispel
the fears in relation to fulfillment of Article 7 of the Paris Convention.

The next pre-requisite—distinctive character emerges from the presence of words ”capable of distinguishing
goods of one person from those of others….” in the definition of trade mark in Section 2(1)( zb). A mark shall
be trade mark only if, in addition to fulfilling other conditions in the definition of trade mark, also satisfies the
requirement of distinctive character. The term ‘distinctiveness’ has been changed to distinctive character,
which would bring jurisprudence of distinguishing function of the trade mark in conformity with international
practice. The Trade Marks Act, 1999, as in earlier laws also, recognizes that distinctive character may be
inherent or acquired.

“Capable of Distinguishing the Goods or Services”

A mark which has a direct reference to the character or quality of the goods/services is considered as
 Lesson 7 Trade Marks 123

inherently not capable of distinguishing. If the reference to the character or quality is only indirect or
suggestive, the mark may be considered as possessing sufficient degree of inherent capacity to distinguish.
As under the old law in determining whether a trade mark is capable of distinguishing, the tribunal should
have regard to the extent to which the mark is inherently capable of distinguishing and also the extent to
which it is in fact capable of distinguishing by virtue of use of the mark or of other circumstances. The
fundamental principle is that “traders should not obtain any monopoly in the use of words as trade marks to
the detriment of the members of the public, who, in the future and in connection with their goods might desire
to use them”. [York Trade Mark 1982 FSR 101(House of Lords)]

Thus, the legal requirements to register a trade mark under the Act are:
— The selected mark should be capable of being represented graphically (that is in the paper form).
— It should be capable of distinguishing the goods or services of one undertaking from those of others.

It should be used or proposed to be used as a mark in relation to goods or services for the purpose of
indicating or so as to indicate a connection in the course of trade between the goods or services and some
person having the right either as proprietor or by way of permitted user, to use the mark whether with or
without any indication of the identity of that person.

Duration and Renewal of Trade Mark Registration

Trade mark protection in India is perpetual subject to renewal of the registration after every 10 years. The
application for renewal can be filed six months before the expiry of the validity period of the trade mark.

Section 25 of the Act allows registration of a trade mark for a period of 10 years. In keeping with the
generally accepted international practice and to reduce the work-load of the Trade Marks Office, Section 25
allows renewal of registration for successive periods of 10 years, from the date of the original registration or
the last renewal. With a view to facilitate renewal of registration, Section 25(3) provides for a grace period of
six months for payment of renewal fee after expiry of registration, subject to the payment of the prescribed
surcharge. Sub-section (4) provides for restoration of the trade marks to the register and renew the
registration on payment of renewal fees.

Unlike patents, copyright or industrial designs, trade mark rights can last indefinitely if the owner continues to
use the mark. However, if a registered trade mark is not renewed, it is liable to be removed from the register.

Should the rights holder of a trade mark come across a trade mark that is deceptively similar to their mark
and which has been published in the Trade Marks Journal, they can oppose the impugned mark within three
months of the publication of the journal.

A trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his
goods irrespective of the length of such user and the extent of his trade. Priority in adoption and use of a
trade mark is superior to priority in registration [Consolidated Foods Corporation v. Brandon & Co. Pvt. Ltd.,
AIR 1965 Bom.35].

The Supreme Court in Commissioner of Income-tax v. Finlay Mills Ltd., AIR 1951 SC 464, has held that the
expenditure incurred on registration of trade mark is capital expenditure thus allowable deduction under the
Income-tax Act.

In Ramdev Food Products (P) Ltd. v. Arvind Bhai Rambai Patel, 2006 (8) SCC 726, the Apex Court held that
the registration of trade marks is envisaged to remove any confusion in the minds of the consumers. If, thus,
goods are sold which are produced from two sources, the same may lead to confusion in the mind of the
consumers. In a given situation, it may also amount to fraud on the public. A proprietor of a registered trade
124 PP-IPRL&P

mark indisputably has a statutory right thereto. In the event of such use by any person other than the person
in whose name the trade mark is registered, he will have a statutory remedy in terms of Section 21 of the
Trade & Merchandise Marks Act, 1958. Ordinarily, therefore, two people are not entitled to the same trade
mark, unless there exists an express licence in that behalf.

OPPOSITION TO REGISTRATION
Section 21 provides that “any person” may give a Notice of Opposition to the application for registration of a
trade mark whether he has or has not any commercial or personal interest in the [Link] person need not
be a prior registered trade mark owner. He can be a customer, a purchaser or member of the public likely to
use the goods. The question of bona fides of the opponent does not arise.

Essential requirements for filing Notice of Opposition:

• In all cases (whether an ordinary trade mark, collective mark or certification mark), the Notice of
Opposition should be on the prescribed form TM-5, accompanied by the prescribed fee of ` 2,500.
• It should be filed at the appropriate office – see rule 8
• The provisions of rule 18 regarding 'address for service' must be complied with, where
necessary.
• The Notice of Opposition should contain particulars as prescribed in Rule 48, which runs as
follows:

A Notice of Opposition shall contain,-

(a) in respect of an application against which opposition is entered-
(i) the application number against which opposition is entered;
(ii) an indication of the goods or services listed in the trade mark application against which
opposition is entered; and
(iii) the name of the applicant for the trade mark.
(b) in respect of the earlier mark or the earlier right on which the opposition is based,-
(i) where the opposition is based on an earlier mark, a statement to that effect and an indication of
the status of earlier mark;
(ii) where available, the application number or registration number and the filing date, including the
priority date of the earlier mark;
(iii) where the opposition is based on an earlier mark which is alleged to be a well-known trade
mark within the meaning of sub-section (2) of section 11, an indication to that effect that an
indication of the country or countries in which the earlier mark is recognized to be well known.
(iv) Where the opposition is based on an earlier trade mark having a reputation within the meaning
of paragraph (b) of sub-clause (2) of section 11 of the Act, an indication to that effect and an
indication of whether the earlier mark is registered or applied for;
(v) A representation of the mark of the opponent and where appropriate, a description of the mark
or earlier right, and
(vi) Where the goods or services in respect of which earlier mark has been registered or applied for
an in respect of which the earlier mark is well-known within the meaning of sub-section (2) of
section 11 or has a reputation within the meaning of that section, the opponent shall when
 Lesson 8
COPYRIGHT
LESSON OUTLINE LEARNING OBJECTIVES
• Introduction Copyright is a right given by the law to creators of
literary, dramatic, musical and artistic works and
• Meaning of Copyright
producers of cinematograph films and sound
• Works in which Copyright Subsists recordings. Unlike the case with patents, copyright
• Author & Ownership of Copyright protects the expressions and not the ideas. There is
no copyright in an idea.
• Term of Copyright

• Copyright Societies & Copyright Board Just as you would want to protect anything that you
own, creators want to protect their works. Copyright
• Assignment and Licensing of Copyright ensures certain minimum safeguards of the rights of
• Registration of Copyright authors over their creations, thereby protecting and
rewarding creativity.
• Infringement of Copyright

• Remedies against Infringement of Creativity being the keystone of progress, no civilized

Copyright society can afford to ignore the basic requirement of
encouraging the same. Economic and social
• Appeals
development of a society is dependent on creativity.
• International Conventions The protection provided by copyright to the efforts of
• Lesson Round Up writers, artists, designers, dramatists, musicians,
architects and producers of sound recordings,
• Self Test Questions cinematograph films and computer software, creates
an atmosphere conducive to creativity, which induces
them to create more and motivates others to create.

Often students are taught the value of original

thinking and the importance of not plagiarizing the
works of others. The objective of the study lesson is
to make them realize the ethical/moral aspects
involved in using materials protected by copyright,
besides increase their knowledge and understanding
of the copyright law as such, why copyright law exists
and where it all started and the key changes that
have occurred in the domain of copyright.
148 PP-IPRL&P

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

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

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

Copyright ensures certain minimum safeguards of the rights of authors over their creations, thereby
protecting and rewarding creativity. Creativity being the keystone of progress, no civilized society can afford
to ignore the basic requirement of encouraging the same. Economic and social development of a society is
dependent on creativity. The protection provided by copyright to the efforts of writers, artists, designers,
dramatists, musicians, architects and producers of sound recordings, cinematograph films and computer
software, creates an atmosphere conducive to creativity, which induces them to create more and motivates
others to create.

In India, the law relating to copyright is governed by the Copyright Act, 1957 which has been amended in
1983, 1984, 1985, 1991, 1992, 1994, 1999 and 2012 to meet with the national and international
requirements. The amendment introduced in 1984 included computer program within the definition of literary
work and a new definition of computer program was inserted by the 1994 amendment. The philosophical
justification for including computer programs under literary work has been that computer programs are also
products of intellectual skill like any other literary work.

In 1999, the Copyright Act, 1957 was further amended to give effect to the provisions of the TRIPs
agreement providing for term of protection to performers rights at least until the end of a period of fifty years
computed from the end of the calendar year in which the performance took place. The Amendment Act also
inserted new Section 40A empowering the Central Government to extend the provisions of the Copyright Act
to broadcasts and performances made in other countries subject to the condition however that such
countries extend similar protection to broadcasts and performances made in India. Another new Section 42A
empowers the Central Government to restrict rights of foreign broadcasting organisations and performers.

The Act is now amended in 2012 with the object of making certain changes for clarity, to remove operational
 Lesson 8 Copyright 149

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

MEANING OF COPYRIGHT AND THE RIGHTS CONFERRED

Copyright is a right given by the law to creators of literary, dramatic, musical and artistic works and producers
of cinematograph films and sound recordings. In fact, it is a bundle of rights including, inter alia, rights of
reproduction, communication to the public, adaptation and translation of the work. It means the sole right to
produce or reproduce the work or any substantial part thereof in any material form whatsoever (Kartar Singh
Giani v. Ladha Singh & Others AIR 1934 Lah 777).

Section 14 of the Act defines the term Copyright as to mean the exclusive right to do or authorise the doing
of the following acts in respect of a work or any substantial part thereof, namely

In the case of literary, dramatic or musical work (except computer programme):

(i) reproducing the work in any material form which includes storing of it in any medium by electronic
means;
(ii) issuing copies of the work to the public which are not already in circulation;
(iii) performing the work in public or communicating it to the public;
(iv) making any cinematograph film or sound recording in respect of the work;

making any translation or adaptation of the work.

Further any of the above mentioned acts in relation to work can be done in the case of translation or
adaptation of the work.

In the case of a computer programme:

(i) to do any of the acts specified in respect of a literary, dramatic or musical work; and
(ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of the
computer programme. However, such commercial rental does not apply in respect of computer
programmes where the programme itself is not the essential object of the rental.

In the case of an artistic work:

(i) reproducing the work in any material form including depiction in three dimensions of a two
dimensional work or in two dimensions of a three dimensional work;
(ii) communicating the work to the public;
(iii) issuing copies of work to the public which are not already in existence;
(iv) including work in any cinematograph film;

making adaptation of the work, and to do any of the above acts in relation to an adaptation of the work.

In the case of cinematograph film and sound recording:

(i) making a copy of the film including a photograph of any image or making any other sound recording
embodying it;
152 PP-IPRL&P

COPYRIGHT PERTAINING TO SOFTWARE

The definition of ”Literary wok” under section 2 (o) of the Copy right Act,1957 includes computer
programmes, tables and compilations including computer "literary data bases. Computer programme as
stated above was included within the definition of "literary work" in 1984 and the new definition of "computer
programme" under Section 2 (ffc) introduced in 1994 means a set of instructions expressed in words, codes
or in any other form, including a machine-readable medium, capable of causing a computer to perform a
particular task or achieve a particular result.

Computer programmes (also known as "software") originated with the invention of the computer itself.
However, it was only with the advent of Personal Computers (PCs) in the 1980s that software became w'dely
available and the need for protecting software under Copyright law became an issue. In the initial stages,
computer programmes were developed by the manufacturers of computers themselves. With the emergence
of wide use of PCs, production of software became delinked from manufacturers of computers. Development
and manufacturing of software has now become an independent activity and the number of companies
engaged in this activity has also increased. It is however the output and variety which has grown manifold
which has given rise to problems of enforcement of Copyright in them. While vigorous competition among
producers of software has, on the one hand brought about improvement in the quality of computer
programmes and brought down the prices, the increased opportunities have also given rise to what is
commonly known as "software piracy'' - the activity of duplicating and distributing software without authority
from the holder of the copyright.

The philosophical justification for including computer programmes within the definition of ' 'literary work'' has
been that computer programmes are also products of intellectual skill like any other literary work. Developing
a computer programme is an activity which is comparable to the writing of a novel or other literary work
excepting that the "language" used as well as its uses are of a very different kind. Though a software can be
written by individual programmer, most of the major software’s are the outcome of group efforts, where
medium to large sized teams spend months or even years to write a programme.

Like the unauthorised copying of literary works, unauthorised copying of computer programmes also attracts
the same legal consequences under the Copyright law. However, since the facility of copying a computer
software and its duplication is within the easy reach of a potential pirate and since copies of software are
indistinguishable from the original, publishers/owners of software are also confronted with daunting problems
for safeguarding their interests under the Copyright law when large scale software piracy takes place.
Software piracy has assumed enormous proportions in certain countries and has become a friction point in
international trade negotiations. Within domestic jurisdictions also software piracy has thrown up serious
challenges to enforcement authorities. The Copyright (Amendment) Act, 1994 has tried to address these
questions and has incorporated internationally recognised standards and procedures for enforcement of
copyright in the field of computer programmes. The relevant provisions have been discussed under remedies
against infringement of copyright

AUTHORSHIP AND OWNERSHIP

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

“Author” as per Section 2(d) of the Act means

• In the case of a literary or dramatic work the author, i.e., the person who creates the work.
• In the case of a musical work, the composer.
 Lesson 8 Copyright 153

• In the case of a cinematograph film, the producer.

• In the case of a sound recording, the producer.
• In the case of a photograph, the photographer.
• In the case of any literary, dramatic, musical or artistic work which is computer-generated, the
person who causes the work to be created.

In a musical sound recording there are many right holders. For example, the lyricist who wrote the lyrics, the
composer who set the music, the singer who sang the song, the musician (s) who performed the background
music, and the person or company who produced the sound recording.

A sound recording generally comprises various rights. It is necessary to obtain the licences from each and
every right owner in the sound recording. This would ,inter alia, include the producer of the sound recording,
the lyricist who wrote the lyrics, and the musician who composed the music.

In the case of a government work, government shall, in the absence of any agreement to the contrary, be the
first owner of the copyright therein.

In the case of a work made or first published by or under the direction or control of any public undertaking,
such public undertaking shall, in the absence of any agreement to the contrary, be the first owner of the
copyright therein.

In the case of a literary, dramatic or artistic work made by the author in the course of his employment by the
proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, for
the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall, in the
absence of any agreement to the contrary, be the first owner of the copyright in the work in so far as the
copyright relates to the publication of the work in any newspaper, magazine or similar periodical, or to the
reproduction of the work for the purpose of its being so published, but in all other respects the author shall be
the first owner of the copyright in the work.

In the case of a work made in the course of the author’s employment under a contract of service or
apprenticeship, the employer shall, in the absence of any agreement to the contrary, be the first owner of the
copyright therein.

In the case of a photograph taken, or a painting or portrait drawn, or an engraving or a cinematograph film
made, for valuable consideration at the instance of any person, such person shall, in the absence of any
agreement to the contrary, be the first owner of the copyright therein.

Term of Copyright
Sections 22 to 29 deal with term of copyright in respect of published literary, dramatic, musical and artistic
works; anonymous and pseudonymous; posthumous, photographs, cinematograph films, sound recording,
Government works, works of PSUs and works of international organisations.

Literary, dramatic, musical or artistic works enjoy copyright protection for the life time of the author plus 60
years beyond i.e. 60 years after his death. In the case of joint authorship which implies collaboration of two
or more authors in the production of the work, the term of copyright is to be construed as a reference to the
author who dies last.

In the case of copyright in posthumous, anonymous and pseudonymous works, photographs, cinematograph
films, sound recordings, works of Government, public undertaking and international organisations, the term
of protection is 60 years from the beginning of the calendar year next following the year in which the work
has been first published.
154 PP-IPRL&P

The Copyright (Amendment) Act, 1994 has given special right to every broadcasting organisation known as
broadcast reproduction right in respect of its broadcasts. This right is to be enjoyed by every broadcasting
organisation for a period of twenty-five years from the beginning of the calendar year next following the year
in which the broadcast is made. In terms of Copyright (Amendment) Act, 1999 if any performer appears or
engages in any performance, he has a special right in relation to such performance called performers right to
be enjoyed for a period of fifty years.

COPYRIGHT OFFICE
Section 9 of the Copyright Act requires for establishment of an office to be called the Copyright Office for the
purpose of the Act. The Copyright Office is to be under the immediate control of a Registrar of Copyrights to
be appointed by the Central Government, who would act under the superintendence and directions of the
Central Government.

Copyright Board
Section 11 of the Act provides for the establishment of the Copyright Board and empowers the Central
Government to constitute the same consisting of a Chairman and not less than two, but not more than
fourteen members. Chairman of the Board should be a sitting or retired judge of the High Court or a person
qualified to be appointed as judge of the High Court. The Registrar of Copyright to act as Secretary of the
Copyright Board.

Functions of the Copyright Board

The main functions of the Copyright Board are as under:
1. Settlement of disputes as to whether copies of any literary, dramatic or artistic work or records are
issued to the public in sufficient numbers.
2. Settlement of disputes as to whether the term of copyright for any work is shorter in any other
country than that provided for that work under the Act.
3. Settlement of disputes with respect to assignment of copyright as dealt with in Section 19A.
4. Granting of compulsory licences in respect of Indian works withheld from public.
5. Granting of compulsory licence to publish unpublished Indian works.
6. Granting of compulsory licence to produce and publish translation of literary and dramatic works.
7. Granting of compulsory licence to reproduce and publish literary, scientific or artistic works for
certain purposes.
8. Determination of royalties payable to the owner of copyright.
9. Determination of objection lodged by any person as to the fees charged by Performing Rights
Societies.
10. Rectification of Register on the application of the Registrar of Copyright or of any person aggrieved.

The Copyright Board has no powers to limit the user of copyright to any particular territorial area. The appeal
against orders passed by the Copyright Board except under Section 6 lies to the High Court within whose
jurisdiction the appellant resides or carries on business.

The scope of the powers of the Copyright Board has been explained in the case of Shri Urmila Charan Gupta
v. Shri Charushila Sharan Gupta and Sumitra Nandand Gupta 1983 PTC 84. In this case it has been held
 Lesson 10
GEOGRAPHICAL INDICATIONS
LESSON OUTLINE LEARNING OBJECTIVES
• Introduction A geographical indication is a sign used on goods
that have a specific geographical origin and possess
• Meaning and Nature of Geographical
qualities, reputation or characteristics that are
Indications
essentially attributable to that place of origin. Most
• Registration commonly, a geographical indication includes the
• Conditions & Procedure for Registration name of the place of origin of the goods. Agricultural
products typically have qualities that derive from their
• Offences and Penalties
place of production and are influenced by specific
• Lesson Round Up local factors, such as climate and soil.
• Self Test Questions Geographical indications are protected in accordance
with international treaties and national laws. Under
the Agreement on Trade Related Aspects of
Intellectual Property Rights (TRIPS), there is no
obligation for other countries to extend reciprocal
protection unless a geographical indication is
protected in the country of its origin. India, as a
member of the World Trade Organization (WTO),
enacted the Geographical Indications of Goods
(Registration & Protection) Act, 1999.

It is important for the students to know the legal

position relating to geographical indications of goods
in India; why do geographical indications need
protection and how geographical indications are
protected; who are entitled for registration; which of
the geographical indications cannot be registered;
and when is a registered geographical indication said
to be infringed etc.
190 PP-IPRL&P

INTRODUCTION
A product’s quality, reputation or other characteristics can be determined by where it comes from.
Geographical indications (GIs) are place names (in some countries also words associated with a place) used
to identify products that come from these places and have these characteristics (for example, “Champagne”,
‘Scotch whisky’ “Tequila” or “Roquefort”).

Geographical indications serve to recognize the essential role geographic and climatic factors and/or human
know-how can play in the end quality of a product. Like trademarks or commercial names GIs are also IPRs,
which are used to identify products and to develop their reputation and goodwill in the market. The
Agreement on Trade Related Aspects of Intellectual Property (TRIPS), prescribes minimum standards of
protection of GIs and additional protection for wines and spirits. Articles 22 to 24 of Part II Section III of the
TRIPS prescribe minimum standards of protection to the geographical indications that WTO members must
provide. Moreover, TRIPS leaves it up to the Member countries to determine the appropriate method of
implementing the provisions of the Agreement (including the provisions on GIs) within their own legal
framework (Article 1.1).

Notably, under the Agreement on Trade Related Aspects of Intellectual Property (TRIPS), countries are
under no obligation to extend protection to a particular geographical indication unless that geographical
indication is protected in the country of its origin. India did not have such a specific law governing
geographical indications of goods which could adequately protect the interest of producers of such goods.
This resulted into controversial cases like turmeric, neem and basmati. In the case of turmeric, in March
1995, a US Patent was granted to two NRIs at the University of Mississippi Medical Centre Jackson, for
turmeric to be used as wound healing agent. This patent was challenged by CSIR at the USPTO on the
ground of "Prior Art" claiming that turmeric has been used for thousand years for healing wounds and rashes
and hence this was not a new invention. Even CSIR presented an ancient Sanskrit text and a paper
published in 1953 in the Journal of the Indian Medical Association as documentary evidence. Upholding the
objections, the US patent office cancelled the Patent.

In the case of neem, patents were granted to the US Company WR Grace & Co. for extraction and storage
processes. The Indian Government filed a complaint with the US Patent Office accusing WR Grace of
copying an Indian Invention but later on they realized that the US based company had in fact created a new
invention for the neem extraction process and the patent was not based on traditional knowledge and hence
government withdrew its complaint.

The third case which triggered a lot of controversy was granting of a US-patent to Texas based Rice Tec Inc
who claimed that this invention pertains to a novel breed of rice plants and grains. The USPTO granted the
patent on ‘Basmati Rice Lines and Grains’ in September 1997 after three years examination and accepted all
the 20 claims put forward by them. India challenged the patent. A team of agricultural scientists screened
several research papers, reports and proceedings of seminars, conferences, symposia, journals, news
papers and archives for relevant supporting information to establish the existence of prior art in this area in India.
The documentary evidences against the claim Nos. 15, 16 and 17 of the company for novelty were so strong
that Rice Tec had to withdraw these claims. The company further withdrew 11 claims. Thus only five of the Rice
Tec's original 20 claims survived the Indian challenges. The patent granted simply gives three hybrid varieties
Bas 867, RT 1117 and RT 1121. The new rice has nothing to do with basmati. Importantly, none of the claims
granted by the patent pertain to basmati rice as a generic category. Also, the Rice Tec. application was for a
patent and not for basmati as a trade mark, so there is no question of Rice Tec getting exclusive rights to use
the term basmati. The patent granted, therefore, neither prevents Indian Basmati from being exported to the US
nor puts it at a disadvantage in the market.
 Lesson 10 Geographical Indications 191

It may be pointed out here that under US patent laws a patent can not be challenged until after it has been
granted, unlike in India where notice is given inviting objections to the patent before it is granted. Therefore,
India could challenge the patent only after it was granted.

To prevent such unfair exploitation, it became necessary to have a comprehensive legislation for registration
and for providing adequate legal protection to geographical indications. Accordingly the Parliament enacted a
legislation titled the Geographical Indications of Goods (Registration and Protection) Act, 1999 which came
into force with effect from 15th September 2003. The present geographical indications regime in India is
governed by the Geographical Indications of Goods (Registration & Protection) Act, 1999 and the
Geographical Indication of Goods (Regulation and Protection) Rules, 2002.

The Object of the Geographical Indications of Goods (Registration and Protection) Act, 1999 is three fold,
firstly by specific law governing the geographical indications of goods in the country which could adequately
protect the interest of producers of such goods, secondly, to exclude unauthorized persons from misusing
geographical indications and to protect consumers from deception and thirdly, to promote goods bearing
Indian geographical indications in the export market.

This Act is administered through the Geographical Indications Registry established in Chennai under the
overall charge of the Controller General of Patents, Designs and Trade Marks. Appeal against the Registrar's
decision would be to the Intellectual Property Appellate Board established under the Trade Marks legislation.

Some commodities that have been recently granted the status of a Geographical Indication by the
Government of India include Gir Kesar Mango, Bhalia wheat, Kinhal Toys, Nashik Valley wine, Monsoon
Malabar Arabica Coffee, Malabar Pepper, Alleppy Green Cardamom and Nilgiris Orthodox Tea. Other
examples include Darjeeling Tea, Mysore Silk, Paithani Sarees, Kota Masuria, Kolhapuri Chappals, Bikaneri
Bhujia and Agra Petha.

SALIENT FEATURES
The salient features of Geographical Indications of Goods (Registration & Protection) Act, 1999 are as under:
(a) Definitions and interpretations of several important terms like "geographical indication", "goods",
"producers", "packages", "registered proprietor", "authorized user" etc.
(b) Provision for the maintenance of a Register of Geographical Indications in two parts-Part A and Part
B and use of computers etc. for maintenance of such Register. While Part A will contain all
registered geographical indications, Part B will contain particulars of registered authorized users.
(c) Registration of geographical indications of goods in specified classes.
(d) Prohibition of registration of certain geographical indications.
(e) Provisions for framing of rules by Central Government for filing of application, its contents and
matters relating to substantive examination of geographical indication applications.
(f) Compulsory advertisement of all accepted geographical indication applications and for inviting
objections.
(g) Registration of authorized users of registered geographical indications and providing provisions for
taking infringement action either by a registered proprietor or an authorized user.
(h) Provisions for higher level of protection for notified goods.
(i) Prohibition of assignment etc. of a geographical indication as it is public property.
(j) Prohibition of registration of geographical indication as a trademark.
192 PP-IPRL&P

(k) Appeal against Registrar's decision would be to the Intellectual Property Appellate Board
established under the Trade Mark legislation.
(l) Provision relating to offences and penalties.
(m) Provision detailing the effects of registration and the rights conferred by registration.
(n) Provision for reciprocity powers of the registrar, maintenance of Index, protection of homonymous
geographical indications etc.

Definitions
Section 2 of the Act defines the terms used in the Act. The definition of some notable terms is given below:

Authorised User
“Authorised user” means the authorised user of a geographical indication registered under Section 17.
[Section 2(1) (b)]

Any person claiming to be a producer of the goods in respect of which a geographical indication has been
registered may apply for registration as an authorized user

Geographical Indication
“Geographical indication” in relation to goods means an indication which identifies such goods as agricultural
goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a
region or locality in that territory, where a given quality, reputation or other characteristic of such goods is
essentially attributable to its geographical origin and in case where such goods are manufactured goods one
of the activities of either the production or of processing r preparation of the goods concerned takes place in
such territory, region or locality, as the case may be.

It may be noted that any name which is not the name of a country, region or locality of that country shall also
be considered as the geographical indication if it relates to a specific geographical area and is used upon or
in relation to particular goods originating from that country, region or locality, as the case may be. [Section
2(1) (e)]

Goods
“Goods” mean any agricultural, natural or manufactured goods or any goods of handicraft or of industry and
includes food stuff. [Section 2(f)]

Indication
“Indication” includes any name, geographical or figurative representation or any combination of them
conveying or suggesting the geographical origin of goods to which it applies. [Section 2(1) (g)]

Producer
“Producer” in relation to goods, means any person who,-
(i) if such goods are agricultural goods, produces the goods and includes the person who processes or
packages such goods;
(ii) if such goods are natural goods, exploits the goods;
(iii) if such goods are handicraft or industrial goods, makes or manufactures the goods,
 Lesson 10 Geographical Indications 193

(iv) and includes any person who trades or deals in such production, exploitation, making or
manufacturing, as the case may be, of the goods. [Section 2(1) (k)]

Registrar
“Registrar” means the Registrar of Geographical Indications referred to in Section 3. [Section 2(1) (o]

Under Section 3 of the Act Registrar of Geographical Indications is the Controller General of Patents,
Designs and Trade Marks appointed under sub-section (1) of Section 3 of the Trade Marks Act, 1999.

Registration of Geographical Indications

Section 8 of the Act provides that a geographical indication may be registered in respect of any or all of the
goods, comprised in such class of goods as may be classified by the Registrar and in respect of a definite
territory of a country, or a region or locality in that territory, as the case may be.

The Registrar may also classify the goods under in accordance with the International classification of goods
for the purposes of registration of geographical indications and publish in the prescribed manner in an
alphabetical index of classification of goods.

Any question arising as to the class within which any goods fall or the definite area in respect of which the
geographical indication is to be registered or where any goods are not specified in the alphabetical index of
goods published shall be determined by the Registrar whose decision in the matter shall be final.

Who are Entitled for Registration?

As per Section 11 any association of persons or producers or any organisation or authority established by or
under any law representing the interest of the producers of the concerned goods can apply for the
registration of a geographical indication.

The Applicant has to be a legal entity and should be representing the interest of producers of the goods
applied for. Any such organisation or association being not that of the producers may have to prove that they
represent the interest of producers. Any Applicant Authority also has to prove that they represent the interest
of producers.

An application for registration of a geographical indication is to be made in writing, along with the prescribed
fees (as specified under First Schedule), and should be addressed to the Registrar of Geographical
Indications. [Rule 12 &, 13]

Jurisdiction: The Geographical Indication Registry is situated at Geographical Indications Registry,

Intellectual Property Office Building, G.S.T. Road, Guindy, Chennai – 600032 having all-India Jurisdiction.
Application or any other document may be filed directly in the GI Registry, Chennai, or may be sent by post
or registered post or speed post or courier services.

Filing of Application
(i) An Indian application for the registration of a geographical indication can be made in triplicate in
Form GI – 1(A) for single class and in GI – 1 (C) for multiple classes.
(ii) A Convention Application shall be made in triplicate in Form GI – 1(B) for single class and in GI – 1
(D) for multiple classes.
(iii) Power of Attorney, if required.
(iv) An Application shall be signed by the applicant or his agent.
 Lesson 10 Geographical Indications 193

(iv) and includes any person who trades or deals in such production, exploitation, making or
manufacturing, as the case may be, of the goods. [Section 2(1) (k)]

Registrar
“Registrar” means the Registrar of Geographical Indications referred to in Section 3. [Section 2(1) (o]

Under Section 3 of the Act Registrar of Geographical Indications is the Controller General of Patents,
Designs and Trade Marks appointed under sub-section (1) of Section 3 of the Trade Marks Act, 1999.

Registration of Geographical Indications

Section 8 of the Act provides that a geographical indication may be registered in respect of any or all of the
goods, comprised in such class of goods as may be classified by the Registrar and in respect of a definite
territory of a country, or a region or locality in that territory, as the case may be.

The Registrar may also classify the goods under in accordance with the International classification of goods
for the purposes of registration of geographical indications and publish in the prescribed manner in an
alphabetical index of classification of goods.

Any question arising as to the class within which any goods fall or the definite area in respect of which the
geographical indication is to be registered or where any goods are not specified in the alphabetical index of
goods published shall be determined by the Registrar whose decision in the matter shall be final.

Who are Entitled for Registration?

As per Section 11 any association of persons or producers or any organisation or authority established by or
under any law representing the interest of the producers of the concerned goods can apply for the
registration of a geographical indication.

The Applicant has to be a legal entity and should be representing the interest of producers of the goods
applied for. Any such organisation or association being not that of the producers may have to prove that they
represent the interest of producers. Any Applicant Authority also has to prove that they represent the interest
of producers.

An application for registration of a geographical indication is to be made in writing, along with the prescribed
fees (as specified under First Schedule), and should be addressed to the Registrar of Geographical
Indications. [Rule 12 &, 13]

Jurisdiction: The Geographical Indication Registry is situated at Geographical Indications Registry,

Intellectual Property Office Building, G.S.T. Road, Guindy, Chennai – 600032 having all-India Jurisdiction.
Application or any other document may be filed directly in the GI Registry, Chennai, or may be sent by post
or registered post or speed post or courier services.

Filing of Application
(i) An Indian application for the registration of a geographical indication can be made in triplicate in
Form GI – 1(A) for single class and in GI – 1 (C) for multiple classes.
(ii) A Convention Application shall be made in triplicate in Form GI – 1(B) for single class and in GI – 1
(D) for multiple classes.
(iii) Power of Attorney, if required.
(iv) An Application shall be signed by the applicant or his agent.
 Lesson 10 Geographical Indications 195

appeal period is over, the Registrar registers the geographical indication in Part A of the Register unless the
Central Government otherwise directs.

On the registration of a geographical indication, the Registrar shall issue each to the applicant and the
authorised users, if registered with the geographical indication, a certificate sealed with the seal of the
Geographical Indications Registry. The date of filing of the application shall be deemed to be the date of
registration.

It may be noted that where registration of a geographical indication is not completed within twelve months
from the date of the application by reason of default on the part of the applicant, the Registrar may, after
giving notice to the applicant in the prescribed manner treat the application as abandoned unless it is
completed within the time specified in that behalf in the notice. [Section 16]

Duration of Registration
According to Section 18, a registered geographical indication shall be valid for 10 years and can be renewed
from time to time on payment of renewal fee.

Any person aggrieved by an order or decision of the Registrar may prefer an appeal to the intellectual
property appellate board (IPAB) within three months. [Section31]

Benefits of Registration
Geographical Indications registration gives to the registered proprietor and its authorised users, the legal
right to the exclusive use of the GI and also the right to obtain relief in case of its infringement. Exclusion of
unauthorized persons from misusing GI would ensure that genuine products of the rightful producers are
marketed.

Prohibition of Registration of Certain Geographical Indications

For registrability, the GI must fall within the scope of the definition of the expression “geographical indication‟
as given under Section 2 (1) (e) of GI Act. In addition, such a GI should not fall within the purview of
prohibitions contained in Section 9 which are as follows:
(a) the use of which would be likely to deceive or cause confusion; or
(b) the use of which would be contrary to any law for the time being in force; or
(c) which comprises or contains scandalous or obscene matter; or
(d) which comprises or contains any matter likely to hurt the religious susceptibilities of any class or
section of the citizens of India; or
(e) which would otherwise be disentitled to protection in a court; or
(f) which are determined to be generic names or indications of goods and are, therefore, not or ceased
to be protected in their country of origin, or which have fallen into disuse in that country; or
(g) which, although literally true as to the territory, region or locality in which the goods originate, but
falsely represent to the persons that the goods originate in another territory, region or locality, as the
case may be;

shall not be registered as a geographical indication.

It may be noted that “generic names or indications'', in relation to goods, means the name of a goods which,
although relates to the place or the region where the goods was originally produced or manufactured has lost