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Module-4
Copyrights and Related Rights

[Link] and Related Rights

Copyrights‘ refer to the legal rights provided by law to the original

creator of the work in the fields of literature and computer software.
The ‘Related Rights‘ encompass the author‘s work in the fields of
dramatics, sound recording, film/video recordings, paintings,
architecture, etc.
Copyrights and Related Rights are one of the categories of IP and
governed by the Copyright Act, 1957 of India. This Act provides rights
of reproduction, communication to the masses, adaptation and
translation of the work.
. The term ‘author’ refers to an individual who develops the
content (of work). The author can be a writer (literary work), computer
programmer (software), composer (musical work), producer (cinema
films, sound recording), photographer (photos).
The term ‘work’ is a task undertaken in the fields of literature,
dramas, music, artistic, cinematograph film and sound recording.
Classes of Copyrights
In India, following classes of Copyrights exist:
• Literature: Books, Essays, Research articles, Oral speeches, Lectures,
Compilations, Computer programme, Software, Databases.
• Dramatics: Screenplays, Dramas.
• Sound Recordings: Recording of sounds regardless of the medium on
which such recording is made e.g. a Phonogram and a CD-ROM.
• Artistic: Drawing, Painting, Logo, Map, Chart, Photographs, Work of
Architecture, Engravings, and Craftsmanship.
• Musical: Musical notations, excluding any words or any action
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intended to be sung, spoken or performed with the music. A musical

work need not be written down to enjoy Copyright protection.
• Cinematograph Films: ‗Cinematograph Film‘ is a visual recording
performed by any medium, formed through a processand includes a
sound recording. For example, Motion Pictures, TV Programmes,
Visual Recording, Sound Recording, etc.
Criteria for Copyright
To qualify for Copyright protection, a work must exist in some
physical (or tangible) form. The duration of the existence of the
physical form may vary from a very short period to many years.
Virtually any form of expression which can be viewed or listened to is
eligible to qualify as Copyright. Even hurriedly scribbled notes for an
impromptu speech are considered copyrightable material.
The Copyright work has to be expressed by the creator in his frame
of thought. In other words, the work has to be original i.e. the author
created it from independent thinking void of duplication. This type of
work is termed as an Original Work of Authorship (OWA). It may
appear similar to already existing works but should not be the same.
The original work may lack quality or quantity or aesthetic merit or all
these parameters; still, it will pass the test of copyrightable work.
In addition to originality for the work, Copyright protection also
requires at least some creative effort on the part of the author. There is
no minimum limit for the extent of creativeness. It is a subjective
matter. The minimal level of creativity needed for Copyright protection
depends on the judgment of the evaluator (adjudicated by the Office of
Registrar of Copyright). As an example, mere changing the dimensions
of a book will not be granted Copyright protection. Similarly, an
address book of alphabetically arranged telephone numbers does not
qualify for Copyright protection as it involves a straightforward
alphabetical listing of phone numbers rather than a creative selection of
listings.
2.2.1. Ownership of Copyright
The Copyright laws clearly state the ownership of Copyright.
• The person who created the work is considered as the first
(original) holder (owner) of the Copyright.
• In case the author is an employee and has been contracted to do the
work by a proprietor (of the company/firm/society
/organization, etc.), the owner of the Copyright shall be the
proprietor.
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• The government will be the primary owner of the government work

in the absence of any kind of arrangement.
• The person delivering a speech is the first owner of the Copyright.
To obtain permission to use copyrighted material, a request for the
same should be made to the legal owner (of the copyrighted material),
which could be the original author, the legal heir (in case of the death
of the author), publisher, etc. The request must mention the following:
• Title, author and/or editor, and edition.
• Precise material to be used.
• The number of copies.
• The purpose of the material e.g. educational, research, etc.
• Form of distribution e.g. hard copy to classroom, posted on the
internet.
• Whether the material is to be sold e.g. as part of a course pack.
2. Copyrights of the Author
The Copyrights of the creator/author are legally protected under Section
14 of the Copyright Act, 1957.
A Copyright owner enjoys two types of rights i.e. Economic Rights (or
Proprietary Rights) and Moral Rights (or Personal Rights).
Economic Rights are associated with financial benefits accruing
from the sale of copyrights. Distribution of copies of the work.
• Public performance of the work.
• Broadcasting/communicating the work to the public.
• Translating the work into other languages.
• Adaptation of the work, such as converting a novel into a
screenplay.
Moral Rights- include -Right of Paternity‘ and -Right of Integrity‘.
The ‘Right of Paternity‘ - even if the Copyright has been licensed
toanother party, the original author of the work retains the right to claim
authorship i.e. the name of the author/s will remain even though
Copyrights have been transferred to another party e.g. a book publisher.
The ‘Right of Integrity‘- the original author has the right to prevent
misuse of the work e.g. alterations/additions/ deletions in work
resulting in misrepresentation of the said work or harming the honor
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and reputation of the author.

3. Copyright Infringements
As per the Copyrights Acts, 1957, the following acts are regarded as
an infringement of Copyrights:
• Making copies for sale or hire or selling or letting them for hire
without permission.
• Permitting any place for the performance of owned work (in public)
where such performance constitutes an infringement of Copyright.
• Distributing infringing copies for trade or to such an extent to affect
the interest of the owner of the Copyright prejudicially.
• Public exhibition of infringing copies for trade purposes.
• Importation of infringing copies.
• Translating a work without the permission of the owner.
4. Liability of Owner of an Auditorium/Hall
➢ The owner of an auditorium/hall is liable for punishment if he
knowingly allows his premises to be used for communication of
illegal copyright material (songs, music, dramas, etc.) to the public.
➢ If a person permits for profit any place to be used for
communicating the work to the public, where such communication
establishes an infringement of the Copyright unless he was not
aware of and had no reasonable ground for believing that such
communication to the public would be an infringement of
Copyright, he will be deemed to have committed an offence under
the Copyright Act.
i. Copyright Infringement is a Criminal Offence
According to Section 63 of the Copyright Act, 1957, if any person
knowingly infringes the Copyright, he qualifies for the criminal
offence. The punishment awarded for the infringement (of Copyright) is
imprisonment for six months with the minimum fineof ₹ 50,000/-
In case of a second and subsequent conviction, the minimum
punishment is imprisonment for one year and a fine of ₹ 1,00,000.
ii. Copyright Infringement is a Cognizable Offence
A police officer (rank of a sub-inspector or higher) can confiscate the
infringed Copyright material without issuing a warrant and produce the
same in the court of law.
iii. Fair Use Doctrine
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Any person not possessing a valid license from the owner of the
Copyright is not entitled to exploit the said work.
However, limited use of Copyrighted materials for teaching and
research purposes is legally permitted, under ‗The Fair Use Doctrine‘,
which comprises of the four-part test:
• The character of the use - use of the work is purely educational,
non-profit and personal.
• Nature of the work - The use of work is factual in nature and not
imaginative.
• Amount of the portion to be used - permission is not needed if
only a small portion of Copyright protected material is to be used.
However, this parameter is debatable now.
• Impact of use on the value of the Copyrighted material - If a
small portion of the work is copied and is not affecting the author‘s
economic and moral rights, it will be excused from the
infringement.
A few examples are listed below:
• If the Copyrighted work is used for personal use i.e. studies or
research.
• Quotation mentioned in the Copyrighted work.
• Reporting of current events in the media, such as newspapers,
magazines or radios/television.
• Reproduction of the work by teachers or scientific researchers.
• Performance is free of charge by government officials in the
performance of their duties e.g. reproduction of any work for a
judicial proceeding or a report of a judicial proceeding.
• Use of any work prepared by the Secretariat of a Legislature.
• Use of the work in a certified copy made or supplied in
accordance with any law for the time being in force.
• Making three or less than three copies of a book (including a
pamphlet, sheet of music, map, chart or plan).
• Bonafide religious ceremony, including a marriage function.
iv. Copyrights and Internet
• The Copyrighted data is quickly transmitted via the internet.
• One should be careful of Copyright/fair use principles when
downloading material from the internet.
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• There is growing concern about the ability to pull Copyrighted

material from the internet without permission.

v. Non-Copyright Work
The works not under the jurisdiction of Copyrights are as follows:
• The ideas, concepts, and principles themselves cannot be protected
under Copyright, only the form in which they are expressed can be
copyrighted.
• Facts, such as scientific or historical discoveries, are not copyright
protected. Any fact a person discovers in the course of research
cannot be Copyright protected. For example, an author of a book on
‘Buddhism‘ takes ten-fifteen years to gather all the necessary
materials and information for his work. At a great expense, the
author travels to various museums, libraries and excavations sites.
However, after the book is published, anyone is free to use the
underlying facts, provided they express the information on their
own.
• Copyright does not protect titles, names, slogans, short phrases,
short word combinations, methods, or factual information.
• Certificates are not considered as Copyrightable subject matter as
there is not much scope for creativity.
• Digitally created works and Copyrighted works transformed into a
digital format and placed on the internet are Copyright protected.
• The Copyright registration for a website, as a whole, is not
possible. However, different components/rudiments of a website
can be granted Copyright registration e.g. computer programmes
/software, compilations including computer databases (‘literary
works‘); photographs, paintings, diagram, map, chart or plan
(‘artistic works‘); and works consisting of music including
graphical notation of such work (‘musical works‘). However, a
separate application for each component of work has to be filed for
seeking Copyright registration.
• A computer or mobile App qualifies for Copyright registration. An
Application is a complete, self-contained computer program that is
designed to perform a specific task. An App usually has dynamic
content and is designed for user interaction. It may be used directly
or indirectly in a computer or handheld electronic device.
• If someone swipes your picture/song/video from the internet and uses
it for their purposes, it is a Copyright infringement. By the way - the
same is true if you nick some else‘s material for your purposes.
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vi. Copyright Registration

• It is not necessary to register a work to claim Copyright.
• Once a work is created via any medium, the work receives
automatic Copyright safety.
• The certificate of registration serves as prima facie evidence in a
court in cases of disputes relating to ownership or creation of
Copyright, financial matters, transfer of rights, etc.
• It is advisable that the author of the work registers for Copyright for
better legal protection.
• Below mentioned are prominent forms for copyright registration
([Link]
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FORM – XIV
Application for Registration of Copyright

To

The Registrar of Copyrights,

Copyright Office,
BoudhikSampada Bhawan, Plot No. 32,
Sector 14, Dwarka, New Delhi-110078
Phone: 011-28032496

Sir,

In accordance with section 45 of the Copyright Act, 1957 (14 of 1957), I hereby
apply for registration of Copyright and request that entries may be made in the
Register of Copyrights as in the enclosed statement of Particulars‘ sent herewith.
I also send herewith duly completed the statement of further particulars relating
to the work.
In accordance with rule 70 of the Copyright Rules, 2012, I have sent by pre-paid
registered post copies of this letter and of the enclosed statement(s) to the other
parties concerned, as shown below:

Names and addresses of the parties Date of Dispatch

1 2

The prescribed fee has been paid, as per details below:

Communications on this subject may be addressed to:
I hereby declare that to the best of my knowledge and belief, no person, other
than to whom a notice has been sent as per paragraph 2 above has any claim or
interest or dispute to my Copyright of this work or to its use by me.
I hereby verify that the particulars given in this Form and the Statement of
Particulars and
Statement of Further Particulars are true to the best of my knowledge, belief and
information and nothing has been concealed therefrom.
List of enclosures:

Yours faithfully

(Signature of the Applicant)

Place: ………………….
Date: ……………………
Source: [Link]
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STATEMENT OF PARTICULARS
[Link]. Attributes Details
1. Registration number (To be filled in the Copyright
Office)
2. Name, phone, email, address and nationality of the
applicant
3. Nature of the applicant‘s interest in the Copyright of
the work
4. Class and description of the work
5. Title of the work
6. Language of the work
7. Name, address and nationality of the author and, if the
author is deceased, the date of his decease
8. Whether work is published or unpublished
9. Year and country of first publication and name,
address and nationality of the publishers
10. Years and countries of subsequent publications, if
any, and names, addresses and nationalities of the
publisher
11. Names, address and nationalities of the owners of
the various rights comprising the Copyright in the
work and the extent of rights held by each, together
with particulars of assignment and licenses, if any
12. Names, addresses and nationalities of other persons,
if any, authorized to assign or license the rights
comprising the Copyright
13. If the work is an ―artistic work‖, the location of the
original work, including name, address and
nationality of the person in possession of the work.
(In the case of an architectural work, the year of
completion of the work should also be shown)
14. If the work is an ‗artistic work‘ which is used or is
capable of being used in relation to any goods or
services, the application shall include a certificate
from the Registrar of Trade Marks in terms of the
proviso to sub-section (1) of section 45 of the
Copyright Act, 1957.]
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15. If the work is an ―artistic work‖ whether it is

registered under the Designs Act 2000. If yes give
details.
16. If the work is an ―artistic work‖ capable of being
registered as a design under the Designs Act 2000,
whether it has been applied to an article though an
industrial process and , if yes, the number of times it
is reproduced.
17. Remarks, if any
Place:(Signature of the Applicant)
Date:
Source: [Link]
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STATEMENT OF FURTHER PARTICULARS

(For Literary, including Software, Dramatic, Musical and Artistic
Works only)

[Link]. Attributes Details

1. Is the work to be registered

a) An original work?
b) Translation of a work in the public domain?
c) A translation of a work in which Copyright
subsists?
d) An adaptation of a work in the public domain?
e) An adaptation of a work in which Copyright
subsists?

2. If the work is a translation or adaptation of a work in

which Copyright subsists:
a) Title of the original work.
b) Language of the original work.
c) Name, address and nationality of the author of
the original work and, if the author is deceased,
the date of his decease.
d) Name, address and nationality of the publisher,
if any, of the original work.
e) Particulars of the authorization for a translation
or adaptation including the name, address and
nationality of the party authorizing.
3. Remarks, if any.
Place: (Signature of the Applicant)

Date:
Source: [Link]
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vii. Judicial Powers of the Registrar of Copyrights

The Registrar of Copyrights has the powers of a civil court when
trying a suit under the Code of Civil Procedure in respect of the
following matters:
• Summoning and enforcing the attendance of any person and
examining him on oath.
• Requiring the discovery and production of any document.
• Receiving evidence on affidavit.
• Issuing commissions for the examination of witnesses or
documents.
• Requisitioning any public record or copy thereof from any court or
office.
• Any other matters which may be prescribed.
Process
• A duly filled application (Form XIV) is submitted to the Copyright
Office at the following address:
The Registrar of Copyright,
Plot no. 32, Boudhik Sampada Bhawan, Sector 14,
Dwarka, New Delhi - 110075. T
• The application can be submitted by post or online registration
through the ‗E-filing facility‘ ([Link]).
• Any person who is either an author of the work or assignee of the
concerned work can file an application for Copyright.
Duration
• Usually, it takes around 2-3 months to get the work registered by
the Copyright Office.
• After applying, there is a mandatory waiting period of 30 days.
• If any person has any objection to the claim/s made in the
application, he can contact the office of the Registrar of Copyrights.
• After giving an opportunity of hearing to both the parties, the Registrar
may decide the case in favour or against the author of the work.
• Once the objections (if any) are cleared, the application is evaluated
by the examiners.
• If any doubts/queries are raised, the applicant is given ample time
(around45 days) to clear these objections. The elements included in
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Copyright filing to grant are depicted below in the flow chart:

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Table 2.5: Important forms pertaining to Copyrights.

S. No. Name of Form Form No.

Application form for registration of
1. Form-XIV
Copyright
Application form for registration of
2. Form-XV
changes in particulars of Copyright
3. Registration of a Copyright Society Form-VIII
Application form for the relinquishment
4. Form-I
of Copyright
Source: [Link]

viii. Fee Structure

For each work, a separate application form needs to be submitted,
along with the requisite fee. The fee is not reimbursable in case the
application for registration is rejected.
Table 2.6: Fee structure for Copyrights.
Attribute Fee (₹ )
For an application for registration or Copyright 500/- per
Literary, Dramatic, Musical or Artistic work work
For an application for registration of Copyright in
5,000/-
a Cinematograph Film
For an application for registration of Copyright in
2,000/-
a Sound Recording
Provided that in respect of a Literary or Artistic
work which is used or is capable of being used in 2,000/-
relation to any goods or services
Making any change in Literary, Dramatic,
200/-
Musical or Artistic work
Provided that in respect of a Literary or Artistic
work which is used or is capable of being used in 1,000/-
relation to any goods or services
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For an application for registration of change in

particulars of Copyright entered in the Register 2,000/-
of Copyrights in respect of Cinematograph Film
For an application for registration of changes in
particulars of Copyright entered in the Register 1,000/-
of Copyrights in respect of Sound Recording

For an application for prevention of importation

of infringing copies per place of entry 1,200/-

Source: [Link]

ix. Copyright Symbol

It is not necessary to place the Copyright symbol © with your
name and ‗year created‘ near your published or printed materials -
but if you do, it‘s easier to nail someone for infringement on your
Copyright if you go to court.
The important things which may be mentioned as a Copyright mark
on Copyright creation are:
• The Copyright symbol © (the letter C in a circle), or the word.
‘Copyright‘, or the abbreviation ‘Copr.‘
• In the case of compilations or derivative works incorporating
previously published material, the year with the date of the first
publication of the compilation or derivative work should be
mentioned. The year date may be omitted for pictorial, graphic,
sculptural work, greeting cards, postcards, stationery, jewellery, dolls
and toys.
• The name or the abbreviation by which the name can be recognized
of the owner of the Copyright, or a generally known alternative
designation of the owner can be mentioned.
• The elements for sound recordings generally require the same three
elements, except the symbol is ℗ (the letter P in a circle) instead.
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x. Validity of Copyright
• In general, the validity of Copyright is for 60 years.
• This period starts either from the year after the death of the author
(in case of literature, dramatic, musical and artistic works) or
• from the date of publication of the work (in case of cinematograph
films, sound recordings, photographs, posthumous publications,
works of government and works of international organisations).
xi. Copyright Profile of India
• Copyright applications in the first four years of the study, with a
maximum number of applications (21,905)recorded in the 2019-20
period (Fig. 2.7).
• The number of applications examined was maximum (34,388)
in 2017-18.
• However, it tapered down to 22,658 in 2018-19 and 19,460 in
2019-20.
• A similar trend was observed in the number of Copyright
registrations, with a peak (19,997) observed in 2017-18.

Figure 2.7: Copyrights profile (India) for the period 2015-20.

Source: Annual Reports, Office of CGPDTM, Mumbai (2011-20)

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xii. Copyright and the word ‘Publish’

➢ A work is considered published when it is in the public domain on
an unrestricted basis.
For example, a person writes an article called ‘Life in Himalayas‘
and distributes it to a few individuals and/or societies/organizations
with a restriction not to disclose the contents of the article. ‘Life in
Himalayas‘ has not been “published” in the Copyright sense.
➢ If the author removes the condition of non- disclosure or posts of this
article on the internet (i.e. public domain),it would be considered as
published.
➢ It is to be noted that both published and unpublished works can be
registered under Copyright.
xiii. Transfer of Copyrights to a Publisher
• The original authors of the Copyrighted work may not have the
wherewithal to widely publicise their work.
• Usually, they transfer their rights to publishers for financial benefits,
which could be a one-time lump sum amount or royalties or a
combination of the two.
• However, transferring Copyrights unconditionally to the publishers
(or anybody else) may have some repercussions for the owner of the
Copyright.
• A publisher may prevent author/s from displaying their articles on
the institute‘s websites.
• The new owner of Copyright may not even allow the author to revise
his work.
• Aa publisher might print an insufficient number of hard copies and
also does not show interest in uploading the soft copy of the work on
the internet.
• Hence, one must be careful in signing an agreement with the
publishers.
• The author may not transfer all the legal rights bestowed upon him as
an author.
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• An agreement may be signed permitting only the print and sale of

hard copies by the publishers while retaining digital rights for the
said work
• An author may also put a time limit for the printing and sale of the
books/articles, etc.
However, in theinternet era, the dependency on publishers has
almost diminished. The author is in a position to bypass the publishers
and bring his work in to the public domain. But this freedom cannot be
enjoyed by those who are already under the publishing contract.
Even though the author has completely and exclusively licensed out
his work, the Copyright Act has a provision under ‘termination of
transfer’ to reclaim his Copyright. Under this provision, certain
Copyright agreements can be terminated after 35 years of the
agreement. This statutory termination right applies even though it is not
incorporated in the agreement. It is strongly advised that authors must
apply their mind while signing the Copyright agreement.
xiv. Copyrights and the Word ‘Adaptation’
The Copyright Act defines the following actions as adaptations:
a) Transformation of a dramatic work into a non-dramatic work.
b) Changing a literary or artistic work into a drama.
c) Re-arrangement of a literary or dramatic work.
d) Depiction through pictures of a literary or dramatic work.
e) The making of a cinematograph film of a literary or dramatic or
musical work.
xv. Copyrights and the Word ‘Indian Work’
‘Indian work‘ means a literary, dramatic or musical work provided
• The author of the work is an Indian citizen.
• The work is first published in India.
• In the case of an unpublished work, at the time of the making of the
work, the author of the work was a citizen of India.
xvi. Joint Authorship
‘Work of Joint Authorship‘ means a work produced by the
collaboration of two or more authors in which the contribution of one
author is not distinct from the contribution of the other author or
authors.
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xvii. Copyright Society

As per Section 33 of the Copyright Act, 1957, a Copyright Society is a
registered collective administration society formed by authors and
other owners of the Copyright. Society can perform the following
functions:
• Keep track of all the rights and infringements related to their
clients.
• Issue licences in respect of the rights administered by the society.
• Collect fees in pursuance of such licences.
• Distribute such fees among owners of Copyright after making
deductions for the administrative expenses.
The registered Copyright Societies in India are:
• Society for Copyright Regulation of Indian Producers for Film and
Television (SCRIPT) 135 Continental Building, Dr. A.B. Road,
Worli, Mumbai 400 018, (for cinematograph andtelevision films).
• The Indian Performing Right Society Limited (IPRSL), 208,
Golden Chambers, 2nd Floor, New Andheri Link Road, Andheri
(W), Mumbai- 400 058 (for musical works).
• Phonographic Performance Limited (PPL) Flame Proof Equipment
Building, B.39, Off New Link Road, Andheri (West), Mumbai 400
053 (for sound recordings).
xviii. Copyright Board
The Chairman of the Board is of the level of a judge of a High
Court. As per the Act, the Board has the power to:
• Hear appeals against the orders of the Registrar of Copyrights.
• Hear applications for rectification of entries in the Register of
Copyrights.
• Adjudicate upon disputes on the assignment of Copyrights.
• Grant compulsory licences to publish or republish works (in certain
circumstances).
• Grant compulsory licence to produce and publish a translation of a
literary or dramatic work in any language after seven years from the
first publication of the work.
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• Hear and decide disputes as to whether a work has been published or

about the date of publication or the term of Copyright of a work in
another country.
• Fix rates of royalties in respect of sound recordings under the cover-
version provision.
• Fix the resale share right in original copies of a painting, a sculpture
or a drawing and original manuscripts of a literary or dramatic or
musical work.
xix. Copyright Enforcement Advisory Council (CEAC)
In 1991, the Government set up a CEAC to review the progress of
enforcement of the Copyright Act periodically and advise the
Government regarding measures for improving the enforcement of the
Act. The term of the CEAC is three years. The CEAC is reconstituted
periodically after the expiry of the term.
xx. International Copyright Agreements, Conventions and
Treaties
Any creative work is not protected and enforced automatically
worldwide because Copyright laws are territorial by nature i.e. Laws are
valid only in the country in which they have been created. To secure
protection to Indian works in foreign countries, the author needs to
apply separately to each country or through dedicated international
‘Conventions on Copyright and Neighbouring (related) Rights‘,
provided a country is a member of such Conventions. India is a member
of the following Conventions:
• Berne Convention for the Protection of Literary and Artistic
Works, 1886. ([Link]
• Universal Copyright Convention, 1952.
([Link] ve-
industries/copyright/universal-copyright-convention/).
• Rome Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organizations, 1961.
([Link]
• Multilateral Convention for the Avoidance of Double Taxation of
Copyright Royalties, 1979.
([Link]
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00%20AM/Ch_XXVIII_01_ap.pdf).
• Trade-Related Aspects of Intellectual Property Rights (TRIPS)
Agreement, 1995.
([Link]
In India, Copyrights of foreign authors, whose countries are
members of the Berne Convention for the Protection of Literary and
Artistic Works (1888), Universal Copyright Convention (1952) and the
TRIPS Agreement (1995) are protected through the International
Copyright Order.
xxi. Interesting Copyrights Cases
David vs. Macaques, Indonesia, 2011 - In 2011, a UK-based
photographer David Slater put his camera on a tripod in the wildlife
sanctuary to click the photograph of Macaques monkeys. The
Macaques were very curious about the equipment and they found the
flashlight fascinating. One monkey clicked a selfie photograph which
became very famous and legally controversial on the matter of
Copyright. Theoretically, the monkey is the holder of Copyright as he
clicked the photo. Practically, David Slater was the claimant of the
Copyright. The dispute entered judicial quarters between People for the
Ethical Treatment of Animals (PETA) and David Slater. Now, the
settlement has been concluded. The photographer
i.e. David Slater withholds the Copyright of the picture for having a
substantial contribution, but he would pay 25% of the royalty share to
the wildlife sanctuary where the monkey lives ([Link] [Link]/
wipo_magazine/en/2018/01/article_0007.html).
‘Happy birthday to you’ case law - According to the Guinness World
Records, 1998, it is the most recognized song in the English language.
The melody of ‘Happy Birthday to You‘ originates from the song
‘Good Morning to All‘, which has traditionally been attributed to
American Sisters, namely Patty Smith Hill and Mildred J. Hill, in 1893.
The sisters composed the melody of ‘Good Morning to All‘ to make it
more interesting for the children. In 1935, Summy Company registered
the Copyright on the Piano Setting on the Song. In 1999
Warner/Chappell acquired the company and started taking royalty for
the happy birthday song and earned a huge amount. After mediation
by the Federal court, Warner Music, through its publishing subsidiary
Warner/Chappell, agreed to pay the settlement
 RM and IPR | 21RM56

to a class of ‗thousands of people and entities‘ who had paid licensing

fees to use the song since 1949 because only the melody was registered
and not the lyrics. Now the song is in the public domain.
Amitabh Bachchan to lose Copyrights over his father’s works in 2063
- Father of renowned actor Mr. Amitabh Bachchan, (late)Shree
Harivansh Rai Bachchan was a noted poet and Hindi writer. His most
famous work was Madhushaala (1935). He was the recipient of the
Sahitya Akademi award and the Padma Bhushan. Healso did Hindi
translations of Shakespeare‘s Macbeth and Othello. He passed away on
18th January 2003, at the age of 95. As per the Copyright Act, 1957, the
rights over his work will be completed in the year 2063 (rights remain
with the author for his lifetime plus 60 years).
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[Link]
• A Trademark (or Trade Mark) is a unique symbol which is capable
of identifying as well as differentiating products or services of one
organization from those of others.
• The word ‘Mark‘ stands for a sign, design, phrase, slogan,
symbol,name, numeral, devise, or a combination of these.
• Essentially, the Trademark is anything that identifies a brand to a
common consumer.
2.3.1. Eligibility Criteria
For goods/services to be legally classified as Trademark, they need
to pass the following conditions:
• Distinctiveness - The goods and services for which the protection is
sought should possess enough uniqueness to identify it as a Trademark.
It must be capable of identifying the source of goods or services in the
target market.
• Descriptiveness - The Trademark should not be describing the
description of the concerned goods or services. Descriptive marks are
unlikely to be protected under Trademark law. However, descriptive
words may be registered if they acquire
―secondary meaning‖, such as the brand name ‘Apple‘ is used by a
USA based multinational company that manufactures electronic
gadgets.
• Similarity to the prior marks - The mark should be unique and should
not be having similarity to the existing marks.
2.3.2. Who Can Apply for a Trademark
➢ Any person who is a proprietor of the Trademark is eligible to
apply for registration of Trademark.
➢ The mark can be filed collectively by two or more applicants
and
➢ for that purpose, support documents need to be
submitted.
 RM and IPR | 21RM56

➢ An organization or association canfile for the collective mark and

the same can be used by its members.
➢ The most appropriate example for this mark is the
‘Reliance‘ symbol, which indicates all products falling under the
organization.

2.3.3. Acts and Laws

• In India, Trademarks are governed under The Trademarks
Act,1999
• The Trademark rules are governed by Trademarks Rules, 2002,
• The Acts and Ruleshave been amended from time to time.
• The latest amendments were done in 2010 and 2017 for
Trademarks Acts and Trademarks, respectively.
• The administration of matters pertaining to Trademarks is carried
out by the Office of CGDPDTM, GoI.
3. Designation of Trademark Symbols

TM
Represents that the Trademark is unregistered. This mark
can be used for promoting the goods of the company.
Represents that the Trademark is unregistered. This mark
SM
can be used for promoting brand services.
Represents a registered Trademark/Service. The applicant of
R
the registered Trademark is its legal owner.
4. Classification of Trademarks

Trademark classification comprises of 45 classes, out of which 34

are for goods and 11 are for services. Two examples of the classes are:
Class 1 is for Chemicals for use in industry, science and
photography, agriculture, horticulture and forestry; Unprocessed
artificial resins, unprocessed plastics; Fire extinguishing and fire
prevention compositions; Tempering and soldering preparations;
Substances for tanning animal skins and hides; Adhesives for use in
industry; Putties and other paste fillers; Compost, manures,
 RM and IPR | 21RM56

fertilizers; Biological preparations for use in industry and science.

Class 45 is for legal services; Security services for the physical
protection of tangible property and individuals; Personal and social
services rendered by others to meet the individuals‘ needs.
The Vienna codification established under the Vienna Agreement
(1973) is an international classification of the figurative elements of
marks.
The classification is used to divide all figurative elements into
categories (from 1 to 29), divisions (from 1 to 19) and sections (from 1
to 30). For example, the representationof "a little girl eating" belongs to
Category 2 (Human beings),Division 5 (Children), Main Section 3
(Girls).
If auxiliary sections are used, the figurative element can be
identified additionally with the Auxiliary Section 18 (Children drinking
or eating, Code A 2.5.18). The codification of this example will be then
indicated as 2.5.3, 18 (main and auxiliary sections).
i. Registration of a Trademark is Not Compulsory
Although, registration of a Trademark is not compulsory,
registration provides certain advantages to the proprietor of the
Trademark, such as:
➢ Legal Protection – prevents the exploitation of the Registering
Trademark by other companies/organizations/individuals, without
proper authorization by the legal owner/s of the Trademark. In case of
legal suits, a registered Trademark can serve as a potent evidence of
the lawful proprietorship of the Trademark.
➢ Exclusive Right - grants the Trademark owner full rights to use it
in any lawful manner to promote his business.
➢ Brand Recognition - products/ services are identified by their
logo, which helps create brand value over time. A strong brand is a
huge pull for new customers and an anchor for existing customers.
Registering a Trademark early and using it will create goodwill and
generate more business for the brand owner.
➢ Asset Creation - registered Trademark is an intangible property of
the organization. It can be used for enhancing the business of
 RM and IPR | 21RM56

the company as well as drawing new clients and retaining old one by the
account of brand identification.
ii. Validity of Trademark
• In India, a registered Trademark is valid for 10 years.
• The period can be extended every 10 years, perpetually.
As per the Indian Trademarks Act, the renewal request is to be
filed in the form ‘TM-R‘ within one year before the expiry of the last
registration of the mark.
iii. Types of Trademark Registered in India
Following are some examples of the registerable Trademarks:
• Any name including personal or surname of the applicant or
predecessor in business or the signature of the person e.g. the
Trademark ‗BAJAJ‘ is named after industrialist Mr. Jamnalal
Bajaj.
• A word having no relevance to the product/services e.g. Trademark
‘INDIA GATE‘ is being used for food grains and allied products.
• Letters or numerals or any combination thereof e.g. ‘YAHOO‘ is the
abbreviation of the phrase ‘Yet Another Hierarchical Officious
Oracle‘. It has now become a worldwide famous Trademark.
Table 2.7: Some of the famous examples of Trademarks.
S. No. Type of the Mark Mark Company/Firm
1. Distinctive General Word ‘Apple‘ IT Company
2. Fanciful Designation ‘Kodak‘ Photograph Film
Distinctive Personal
3. ‘Ford‘ Automotive
Names
Financial
4. Device ‘Udhaar‘
Technology
5. Number ‘4711‘ Perfume
Knitwear
6. Picture Allegator
Manufacturing
 RM and IPR | 21RM56

Drink it to
7. Slogan Soft Drinks
believe it
Note: Trademark Registry will object to yet to be registered Trademark if it is similar
in looks or sound to the ones already registered e.g. a keyword like Ford can
have the following terms that are similar sounding: Foard, Phord, Fordd,
Forrd. In case one wishes to carry out a search (identical as well as similarity),
one may use the free government portal [Link]
[Link]/tmrpublicsearch/[Link].

iv. Trademark Registry

In India, the operations of Trademarks are carried out from five
cities i.e. Delhi, Mumbai, Ahmadabad, Kolkata, and Chennai.
Each city has been assigned a bunch of states (Table 2.8).
The businesses located in a particular state can only use the
services of the assigned Trademark Registration Office.
In the case of foreign applicants, jurisdiction is based on the
location of the office of the applicant‘s agent or attorney.

Table 2.8: Territorial jurisdiction of Trademark

registration offices.
S. No. Office Location States
Maharashtra, Madhya Pradesh, Chhattisgarh
1. Mumbai
and Goa.
Gujarat and Rajasthan and Union Territories
2. Ahmedabad
of Daman, Diu, Dadra and Nagar Haveli.
Arunachal Pradesh, Assam, Bihar, Orissa,
West Bengal, Manipur, Mizoram,
3. Kolkata Meghalaya, Sikkim, Tripura, Jharkhand and
Union Territories of Nagaland, Andaman &
Nicobar Islands.
Jammu & Kashmir, Punjab, Haryana, Uttar
4. New Delhi Pradesh, Himachal Pradesh, Uttarakhand,
Delhi and Union Territory of Chandigarh.
Andhra Pradesh, Telangana, Kerala,
5. Chennai Tamilnadu, Karnataka and Union Territories
of Pondicherry and Lakshadweep Island.
Source: [Link]
 RM and IPR | 21RM56

v. Process for Trademarks Registration

To seek Trademark registration, the proprietor of the Trademark
has to fill an application. The proprietor may choose to hire an agent
to fill and submit the application on his behalf. Before applying, the
applicant needs to conduct a prior art search to ensure the registration
criteria.
1. Prior Art Search - Prior to applying for Trademark registration, it
is always prudent to check whether the intendedTrademark is
already registered or not. Also, it is ascertained whether the
intended Trademark is not similar to the ones already registered.
The requisite search can be carried out using various web portals,
such as:
• Public search for Trademarks by CGPDTM
([Link]
• WIPO‘s Global Brand Database

([Link]
• Trademark Electronic Search System (TESS).
([Link]
7u.1.1)
• MARKARIA Trademark Search Engine ([Link]
[Link]/en/asia/india-trademark-search).
• VAKIL Search ([Link]
search/trademarks?search=bajaj).
➢ Once the ‗prior art search‘ is over and the applicant is
convincedabout the distinctiveness of the Trademark,
➢ he can proceed to fill theapplication form for registration
(TM-A).
➢ The application is filed at the Trademarks Office subject to the
jurisdiction of the applicant.
 RM and IPR | 21RM56

The steps involved in the registration process are as follows:

• After the prior art search has been conducted, the applicant can
apply for the registration on his own or with the help of acertified
agent.
• The application is assigned an application number within a few
days. The same can be tracked online at [Link]
[Link]/tmrpublicsearch/[Link].
• The application is scrutinized by a professional examiner. If
everything is in order, the particulars of the application are
published in the official Trademark journal ([Link]
[Link]/[Link]).
• Otherwise, he will send the objections to the applicant for
rectification. Based on the satisfactory response, the examiner
would recommend the revised application to be published in the
journal.
• If the application is rejected, the applicant may approach the
Intellectual Property Division to challenge the rejection of an
application by the examiner.
• Once the Trademark is published in the official journal, the public
has an opportunity to file an objection, if any, within 90 days.
• After hearing both the parties, the officer decides whether to
proceed further for the grant of Trademark or disallow the grant
of Trademark.
• In case of unfavourable outcome, the applicant has the right to
contest the decision in front of the IPAB.
• Once the application has successfully completed all formalities, a
Trademark registration certificate is issued in the name of the
applicant.
 RM and IPR | 21RM56

Figure 2.8: Flow chart for the process of Trademark

registration.
Source: [Link] (slightly modified)

One should keep in mind that while filing an application for the
registration of a Trademark, an English translation of the non-
English words has to be provided. If the applicant wishes to claim
the priority from an earlier-filed application, he has to provide details
like application number, filing date, country andgoods/services of
that application.
 RM and IPR | 21RM56

Table 2.9: Fee and forms related to Trademarks.

Form
Amount (₹ )
Entry No.
Contents
No. Physical
E-filing
Filing
Where the applicant is an
Individual / Start-up/Small 5,000 4,500 TM-A
1. Enterprise.
In all other cases. 10,000 9,000
Opposition/Application for
Rectification of the
2. Register/Counter statement / 3,000 2,700 TM-O
Refusal or invalidation of a
Trademark.
For renewal of registration of a
3. 10,000 9,000 TM-R
Trademark.
On application to register a
subsequent proprietor in case of
4. 10,000 9,000 TM-P
assignment or transfer for each
Trademark.
Application for registration of
Registered User/Variation of
Registered User/Cancellation of
5. Registered Users and Notice of 5,000 4,500 TM-U
intention to intervene in
proceeding in
cancellation/variation.
Request for search and issue of
6. 10,000 9,000 TM-C
the certificate.
Application/Request for any
miscellaneous function in
7. respect of a Trademark 1000 9,000 TM-M
Application/
Opposition/Rectification.
On application for registration of
8. 5,000 4,500 TM-G
a person as a Trademark agent.
Source: [Link]
 RM and IPR | 21RM56

vi. Important Queries/Facts About Trademarks

1. Can any correction be made in the application or register Yes,
The rectifications are possible, but the applicant has to ensure
that the corrections made in the Trademark do not alter its
identity significantly.
2. Can a registered Trademark be removed from the register
Yes, it can be removed if:
a. Trademark was registered without any bona fide intention of using it.
b. If the Trademark is not being used for a continuous period of
5 years from the registration date or 3 months prior to filing the
application for registration.
c. Registered Trademark was disallowed but inadvertently existed in the
official register.
d. Trademark Registrar has the power to terminate a registered
Trademark on a suo moto basis.
3. Is the sound or smell registrable as a Trademark - Yes, sound
or smell is registrable as a mark, as long as it is distinct and can
be reproduced graphically. The Trademark, ‗4711 cologne‘
has been registered as a chemical formula. The sound can be
registered as a Trademark, provided it can be recorded in MP3
format and depicted graphically.
4. Can a registered user restrain the third party from using an
identical or similar mark which is not registered -
There is no clear cut answer for such situations. It depends on the
circumstances of the matter. But ordinarily, a registered user cannot
restrain the third party from using identical or similar marks if the third
party has been continuously using the mark concerning the same goods or
services from a date prior to the date of use of the registered mark or date
of registration.
According to the Trademarks Act, 1999, the rights andprotection
in the form of remedies are not only to the registered mark but also
to the unregistered Trademarks. Although, aregistered Trademark
has been given a statutory remedy under section 28 of the Act, but
27(2) of the Act provides a remedy for an unauthorized use of
unregistered Trademark. Passing off is a common law tort which is
most commonly used to protect goodwill that is attached to the
unregistered Trademarks. The action of passing off is available to
both registered and unregisteredTrademarks, but a suit for
 RM and IPR | 21RM56

infringement is available for only registered Trademarks.

5. Seeking Trademark protection in a foreign country - To
file the Trademark in a foreign country, there are two
options available for the applicant. He can eitherfile
the Trademark application with the
Trademark Office of the country in which he wishes to seek
protection, or he can use WIPO‘s Madrid System through which
the registration can be filed in multiple countries by
claiming priority of one of the signatory countries. This
priority has to be claimed within six months of the first
filing. The applicant can file a single application for seeking
protection in any number of countries that are members of
WIPO by paying a single set of fee. List of jurisdictions that
can be accessed through Madrid Protocol for filing
Trademark is available at [Link]
wipo.i nt/ treaties/en/[Link]?treaty_id= 8.
vii. Trademarks Statistics
Figure 2.9 represents the statistics for Trademarks (filed,
examined and registered) for the period 2010-20. During this period,
an increase of 95%, 65% and 154% was observed in the parameters
of trademarks filed, examined and registered, respectively. Overall,
a gradual increase was seen in the number of TM filed, but a zig-zag
curve was observed for the TM examined for the period 2010-16. The
highest number of TM applications (5,32,230) were examined in
2016-17 followed by dip (nearly two folds) in the following year
(2017-18). The following two years (2018-20) showed some
recovery, with 3,38,551 applications examined in 2019-20. In case
of TM registration, first, five years (2010-15) showed a downward
trend. But, a significant leap of nearly four-folds was observed inthe
next year i.e. 2016-17. The maximum number of TM (3,16,798) were
registered in the year 2018-19.
 RM and IPR | 21RM56

Figure 2.9: Trademarks profile (India) for the period 2010-20.

550000
532230
500000
450000
400000
348918
# tRADEm ARKS

338576
350000 272974
283060 338551
300000 278170 306259 337541
316798
250000 210501 294172
179317 194216 200005 267861 300913
183588
250070

202385 203086
205065
168026

115472 116263
50000
67873 65045
51765 44361 41583

YEAR

Source: Annual Reports, Office of CGPDTM, Mumbai (2011-20)

([Link]

viii. International Treaties and Conventions

There is a provision to file an international application for the
Trademarks to seek protection in other Convention countries. The
rules and regulations to file international applications in Convention
countries are concluded under the following treaties and agreements
administered by WIPO.
• The Madrid Agreement for International Registration of Marks
(1891) ([Link]/treaties/en/registration/madrid/).
• The Nice Agreement for International Classification of Goods
and Services (1957).
([Link]
• The Trademark Law Treaty (TLT) (1994) ([Link]
int/ treaties/en/ip/tlt/summary_tlt.html).
• Vienna Agreement (1973) for the Classification of Figurative
Marks
([Link]
ix. Famous Case Law:
Coca-Cola Company vs. Bisleri International Pvt. Ltd.
‘MAAZA‘, a popular mango fruit drink in India, is a registered
Trademark of an Indian company, Bisleri International Pvt. [Link]
company transferred the rights (formulation, IPR and goodwill, etc.)
to a beverage company, Coca-Cola, for the Indian Territory.
However, in 2008, the Bisleri Company applied for registration of
Trademark ‘Maaza‘ in Turkey and started exporting the product with
the mark ‘MAAZA‘. This was unacceptable to the Coca-Cola
Company and thus filed a petition for permanent injunction and
damages for passing-off and infringement of the Trademark.
It was argued on behalf of Plaintiff (Coca-Cola Company) that as
the mark ‘Maaza‘ concerning the Indian market was assigned to
Coca-Cola, and manufacture of the product with such mark, whether
for sale in India or for export, would be considered as an
infringement. After hearing both the parties, the court finally granted
an interim injunction against the defendant (Bisleri) from using the
Trademark MAAZA in India as well as for the export market, which
was held to be an infringement of Trademark.