Intellectual Property Rights

Important Questions
Intellectual Property (IP)
University of Mumbai
37 pag.

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Patent Questions:

Q1. State the grounds of revocation of patents under Patent Act 1970

The term “Revocation” means Cancellation of the patent rights acquired to patentee. The revocation of
patent can be applied by making a petition by any person interested or it can be also applied by the
Central Government. In most of the cases revocation are filed on a counter claim against patent
infringement suits in High Court or in IPAB (the Intellectual Property Appellate Board). The provision for
Revocation of patents is mentioned under section 104.

Section 104 of the Patents Act, 1970 states that only IPAB or the High Court can be approached for
revocation as no suit of infringement can be brought before a court inferior to the District Court having
jurisdiction.

Section 64: Grounds for Revocation

Principally, Section 64 contains in-exhaustive grounds that dictate the conditions that warrant the
revocation of patents. These grounds are following:

1. Invention is obvious, lacks an inventive step or utility

2. Invention isn’t new and, has been publicly used or published in India before the priority date or
it is foreseen in light of the knowledge available within any local or native community in India or
elsewhere.
3. Either the party wasn’t entitled to the patent, or the subject isn’t patentable or doesn’t amount
to invention
4. The scope of patent specifications is incomplete or the specifications have either been already
claimed in a patent that is granted
5. The patent was wrongfully obtained in violation of another party’s rights, such as through
incorrect or false representation, or leave to modify specifications was obtained through
fraudulent means
6. The information that has been disclosed under Section 8 is known to be false by the Applicant or
he has been unable to furnish the required details
7. Complete specification omits or erroneously attributes geographical origin or biological matter
used in the invention
8. The invention was either secretly used before the date or claim or the Applicant contravened
secrecy instructions under Section 35
9. The complete specification neither describes the invention and method sufficiently nor does it
disclose the best method of performing it which was known and entitled protection.

Other provisions for revocation of patents

1. A revocation petition can be filed under section 65 if the patent granted relates to atomic energy.

If the Central Government find the facts that a granted patent has been exercising by wrong means and
it is mischievous to the State or prejudicial to the public, the central government has rights in the case to
revoke the concerned patent and such decision is also published in official journal of patents.

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2. Revocation of patent under Section 85 of the Patents Act

An application for revocation of patent can be filed after 2 years of grant of compulsory license.
The grounds for revocation of a patent are same which are covered under Section 85 which
mainly deal with following:-

 Reasonable price,
 Availability in the territory of India, and
 Requirements of the public not met.

Section 85 reveals provision in the benefit of public. In these cases where the patentee does not take
necessary actions that may help in better distribution of the product to the public and more profound
availability at reasonable prices. Such revocations of patent are really useful to public.

Q2: Discuss the procedure for grant of patent under Patent Act 1970

A patent is an exclusive right granted by the Government to the inventor to exclude others to use, make
and sell an invention is a specific period of time. A patent is also available for improvement in their
previous Invention.

In modern terms, the patent is usually referred to as the right granted to an inventor for his Invention of
any new, useful, non-obvious process, machine, article of manufacture, or composition of matter.

Inventions must have following features to ensure that it is being patentable:

1. It should be Novel
2. It must involve an inventive step
3. It should be capable of Industrial Application

There are three basic tests for any invention to be patentable:

1. Invention must be Novel:

Firstly, the invention must be novel, meaning thereby that the Invention must not be in
existence.

2. Invention must be non- obvious:

Secondly, the Invention must be non- obvious, i.e. the Invention must be a significant
improvement to the previous one; mere change in technology will not give the right of the
patent to the inventor.

3. Invention must be useful in a bonafide manner:

Thirdly, the invention must be useful in a bonafide manner, meaning thereby that the Invention
must not be solely used in any illegal work and is useful to the world in a bonafide manner.

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Who can apply patent?

Section 6 sets out an application for a patent for an invention may be made by any of the following
persons, viz:

1. By any person claiming to be the true and first inventor of the invention
2. 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
3. By the legal representative of any deceased person who immediately before his death was
entitled to make an application

Procedure for grant of patent under Patent Act 1970:

Step 1: Write about inventions (idea or concept) with each and every detail.
Collect all information about your Invention such as:

1. Field of Invention
2. What does the Invention describe
3. How does it work
4. Benefits of Invention

If you worked on the Invention and during the research and development phase, you should have some
call lab records which are duly signed with the date by you and the concerned authority.

Step 2: It must involve a diagram, drawing and sketch explains the Invention

Drawings and drawings should be designed so that the visual work can be better explained with the
invention work. They play an important role in patent applications.

Step 3: To check whether the Invention is patentable subject or not.

Not all inventions can be patentable, as per the Indian Patent Act there are some inventions which have
not been declared patentable (inventions are not patentable).

Step 4: Patent Discovery

The next step will be to find out if your Invention meets all patent criteria as per the Indian Patent Act-

1. The invention must be novel.

2. The Invention must be non- obvious.
3. The Invention must have industrial applications.

Step 5: File Patent Application

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If you are at a very early stage in research and development for your Invention, then you can go for a
provisional application. It offers the following benefits:

1. Filing date.
2. 12 months time for filing full specification.
3. Lesser cost.

After filing a provisional application, you secure the filing date, which is very important in the patent
world. You get 12 months to come up with the complete specification; your patent application will be
removed at the end of 12 months.

When you have completed the required documents and your research work is at a level where you can
have prototypes and experimental results to prove your inventive move; you can file the complete
specification with the patent application.

Filing the provisional specification is an optional step if you are in the stage where you have complete
knowledge about your Invention you can go straight to the full specification.

Step 6: Publication of the application

Upon filing the complete specification along with the application for the patent, the application is
published 18 months after the first filing.

If you do not wish to wait until the expiration of 18 months from the filing date to publish your patent
application, an initial publication request may be made with the prescribed fee. The patent application is
usually published early as a one-month form request.

Step 7: Request for Examination

The patent application is scrutinized only after receiving a request for an RFE examination. After
receiving this request, the Controller gives your patent application to a patent examiner who examines
the patent application such as the various patent eligibility criteria:

1. Patent subject
2. Newness
3. Lack of clarity
4. Inventory steps
5. Industrial application
6. By enabling

Step 8: Answer the objections

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Most patent applicants will receive some type of objections based on the examination report. The best
thing is to analyze the examination report with the patent professional (patent agent) and react to the
objections in the examination report.

This is an opportunity for an investor to communicate his novelty over the prior art in examination
reports. Inventors and patent agents create and send a test response that tries to prove that their
Invention is indeed patentable and meets all patent criteria

Step 9: clearance of objections

The Controller and the patent applicant is connected for ensuring that all objections raised regarding the
invention or application is resolved and the inventor has a fair chance to prove his point and establish
novelty and inventive steps on other existing arts.

Upon receiving a patent application in order for grant, it is the first grant for a patent applicant.

Step 10: Grant of Patent:

Once all patent requirements are met, the application will be placed for the grant. The grant of a patent
is notified in the Patent Journal, which is published periodically.

Q3: What are the rights and duties of patentee in respect of Patent granted to him?

Rights of Patentee:

1. Right to exploit patent:

According to Sec 48 of the Patent Act 1970, the patentee or the person legally authorized by him can
make commercial use of the patented invention.

He can exclude third parties who do not have his consent. However, this right is subject to the
conditions laid down in Sec 47 which empower the Govt. to import or use the patent product for its own
use. The co-owners of a patent shall also be entitled to equal undivided share in patent.

The patentee’s rights are exercisable only during the term of the patent.

2. Right to grant license:

According to Sec 70, if a patentee is not able or willing to exploit the patent himself, he can grant license
to some other person or authorize him to exploit the patent and pay him the consideration or royalty.

The patentee has the discretion to transfer rights or grant licenses or enter into some other
arrangement for a consideration.

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A license or an assignment must be in writing and registered with the Controller of Patents, for it to be
legitimate and valid.

The document assigning a patent is not admitted as evidence of title of any person to a patent unless
registered and this is applicable to assignee not to the assignor.

3. Right to Assign Patent:

According to Sec 70 and 68, a patentee can fully or partially assign his patent to another person through
sale, gift or any other legal mode.

4. Right to Surrender: (Sec 63)

A patentee has the right to surrender his patent, but before accepting the offer of surrender, a notice of
surrender is given to persons whose name is entered in the register as having an interest in the patent
and their objections, if any, considered.

The application for surrender is also published in the Official Gazette to enable interested persons to
oppose.

5. Right to sue for infringement: (Sec 104-108)

The exclusive rights of the patentee can be legally protected by preventing unauthorized persons from
exploring the patent of others. Violation of rights of patentee amounts to an infringement. Patentee has
a right to seek legal remedies including civil suit against infringer.

The patentee has a right to institute proceedings for infringement of the patent in a District Court having
jurisdiction to try the suit.

Duties or Obligations of Patentee:

1. Government use of patents:

A patented invention may be used or even acquired by the Government, for its use only; it is to
be understood that the Government may also restrict or prohibit the usage of the patent under
specific circumstances. In case of a patent in respect of any medicine or drug, it may be
imported by the Government for its own use or for distribution in any dispensary, hospital or
other medical institution run by or on behalf of the Government. The aforesaid use can be made
without the consent of the patentee or payment of any royalties. Apart from this, the
Government may also sell the article manufactured by patented process on royalties or may also
require a patent on paying suitable compensation.

2. Compulsory licenses:

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If the patent is not worked satisfactorily to meet the reasonable requirements of the public, at a
reasonable price, the Controller may grant compulsory licenses to any applicant to work the
patent. A compulsory license is a provision under the Indian Patent Act which grants power to
the Government to mandate a generic drug maker to manufacture inexpensive medicine in
public interest even as a patent in the product is valid. Compulsory licenses may also be
obtained in respect of related patents where one patent cannot be worked without using the
related patent.

3. Revocation of patent:
A patent may be revoked in cases where there has been no work or unsatisfactory result to the
demand of the public in respect of the patented invention.
4. Secrecy Directions relating to Invention for defence purposes:
Such patents may be subject to certain secrecy provisions, i.e. publication of the Invention may
be restricted or prohibited by directions of Controller. Upon continuance of such order or
prohibition of publication or communication of patented Invention, the application is debarred
for using it, and the Central Government might use it on payment of royalties to the applicant.

5. Restored Patents:
Once lapsed, a patent may be restored, provided that few limitations are imposed on the right
of the patentee. When the infringement was made between the period of the date of
infringement and the date of the advertisement of the application for reinstatement, the patent
has no authority to take action for infringement.

4. State the grounds of opposition of patent?

Or
Who can oppose grant of patent and on what grounds? What is the procedure for opposing a patent?

A patent is an exclusive right granted to the original inventor for a novel product or a novel process that
provides, a unique way of doing something, or which discloses a new technical solution to a problem.

It provides monopoly right to the inventor to make, sell his invention or product. Hence it is very
essential that patent is only awarded to those innovations which justify the exclusive right and comply
with the patentability criteria.

Opposition proceedings are structured to restrain wrongful obtaining of patents and claiming of the
frivolous or petty inventions. Laws providing under Indian patent act for pre grant and post grant of
patent are essential to obstruct the unlawful grant of patent.

Under Indian Patent act, there are two provisions when opposition may be filed either via pre-grant
opposition or post-grant opposition provision depending upon the stage of the patent. The recent heave
in patent filings in India may be attributed to the revolution in the Indian Patent System on 1st January,
2005, when India signed the Trade Related Aspects Intellectual Property Rights (TRIPS) agreement,
wherein Section 25 of the Act was amended in light of the TRIPS agreement to introduce an "integrated"
system of both pre-grant and post-grant opposition in India.

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An application for a patent may be opposed by either a prior grant or a subsequent grant by any person
on the grounds specified in s 25 (1) and 25 (2) of the former Act. No other grounds stated in the Act can
be taken to oppose the patent. Some major opposition grounds, common to both pre-grant and post-
grant opposition, are mentioned below:

1. The Invention was published previously in India or elsewhere or was claimed previously in India.
2. The Invention is the formation of a part of the prior public knowledge or prior public use or
traditional knowledge of any community.
3. The Invention is obvious and lacks an inventive step.
4. The Invention does not constitute an invention within the meaning of the Act, or the Invention is
not patentable under the Act.
5. Failure to disclose information or furnishing false information relating to foreign by the
applicant.

Pre-Grant Protest: Section 25 (1) of the Patent Act and Rule 55 of the Patent Rules, 2003 provide the
procedure to be followed for pre-grant opposition. Pre-grant opposition can be initiated by anyone after
the application is published and before the patent is granted. If a request for examination is filed to
oppose the application, the Controller considers representation only. If a request for examination has
not been made by the applicant, it is possible for the opponent as an interested person to first file a
request for examination under Section 11B, and then file a pre-grant opposition.

Post-grant opposition: The procedure is followed to oppose the grant under Section 25 (2) of the Patents
Act, 1970 and Rule 55A to 70 of the Patent Rules, 2003. A Post-grant opposition can be filed by any
person interested in any of the specific grounds before a period of one year from the date of publication
of the grant of the patent. Unlike a pre-grant protest, a pre-grant protest must be filed by an individual
and not by a person. The expression (people interested) is defined under section 2(t) of the Patents Act,
1970 wherein a person/party is engaged, or is conducting research in the same field with which the
Invention (which is to be opposed) is concerned.

Q5: Define the term Invention. Explain the inventions which are not patentable under the Patent Act
1970?

According to the Patent Act (of India), those that fall under the category of “Inventions” can be
patented, as defined in Section 2 (j) of the Act which involves anything that is novel, capable of industrial
application, and is not frivolous (subject-matters eligible for patentability).

However, those that cannot satisfy such conditions (or restricts the scope of subject matters eligible for
patentability) are non-patentable as mentioned in Section 3 and Section 4 of the Act.

What Are Inventions?

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As defined in Section 2 (j) the term “invention means a new product or process involving an inventive
step and capable of application”. The invention should be of absolute novelty as neither it has been used
nor published in any part of the world.

Section 3 and Section 4 of the Patent Act deals with the list of exclusions that are non-patentable that
do not satisfy the above conditions. Following are not the “inventions” under the meaning of this act:

1. Inventions that are frivolous and contrary to natural laws.

2. Inventions which go against public morality
3. Inventions that are a mere discovery of something that already exists in nature.
4. The mere discovery of a form already existing in nature does not lead to enhancement of
efficacy.
5. Mere admixing of mixtures leading in the aggregation of properties are non- patentable.
6. Mere aggregation or duplication of devices working in a known way is not an invention.
7. Horticulture or agricultural method is non-patentable.
8. Medicinal, curative, prophylactic, diagnostic, therapeutic for treating diseases in human and
animals are non-patentable.
9. Essential biological processes for the production or propagation of animals and plants is not
an invention.
10. Simple mathematical or business or computer programs are not an invention.
11. Aesthetic creation is not an invention.
12. Mental act, rule or method is not an invention.
13. Presentation of information is non-patentable.
14. The topography of integrated circuits is non-patentable
15. Traditional Knowledge is not an invention.
16. Atomic-Energy inventions are non -patentable.

Landmark Cases of Non-patentable Inventions:

In Bilski V. Kappos,
This case deals with the Patentability of a business method. In this case, Bilski and Warsaw applied for
the patent on hedging risks on commodities trading but their patent got rejected by the US Supreme
Court on grounds that an abstract idea cannot be patented.

In Novartis Ag v. Union of India15,

The Supreme Court of India said that “mere discovery of an existing substance would not amount to the
invention”. The Supreme Court of India further, in this case, held that for pharmaceutical patents apart
from tests of novelty, inventive step and application, there is a new test of enhanced therapeutic
efficacy for claims that cover incremental changes to existing drugs which also Novartis’s drug did not
qualify”.

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Q6: Remedies for patent infringement

Remedy for Infringement of Patent

An action for infringement must be instituted by way of a suit in any District Court or a High Court
having jurisdiction to entertain the suit.

The plaintiff on satisfying the court about infringement of his patent would be entitled to the following
relief:

1. Interlocutory injunction
2. Damages
3. Account of profits

1. Temporary or Interlocutory Injunction

A temporary injunction is invoked by the court at the initial stages of the suit filed by the plaintiff. This is
passed in order to prevent the defendant from getting further gains by using other patented products. In
order to invoke a temporary injunction, it is important for the patentee to prove that the patent is valid
and has been infringed by the defendant. Also, the subsequent infringement in his patent rights has
caused irreparable loss to him.

2. Permanent injunction

A permanent injunction is invoked when the case is finally decided by the court. The interim injunction is
transferred to a permanent injunction if the defendant is found guilty of patent infringement rights. But
if the defendant is absolved from the liability, then the interim injunction stands dissolved and is not
converted into a permanent injunction.

3. Damages

In case the defendant is proven guilty, the plaintiff is either awarded damages or an account of profits by
the defendant. Damages may not be provided to the plaintiff in case the defendant pleads ignorance
and proves that he had no reasonable grounds to believe that the said patent existed at the time of
infringement.

In assessing the damages the important question is what is the loss sustained by the patentee. The loss
must be the natural and direct consequence of the defendants acts. The object of damages is to
compensate for loss or injury.

4. Accounts of Profits

Where a patentee claims the profits made by the unauthorized use of his patent, it is important to
ascertain how much of his invention was appropriated, in order to determine what proportion of the net
profits realized by the infringer was attributable to its use.

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IPR Questions on Trade Mark

Q1: Procedure for registration of trade mark under Trade Marks Act 1999?

Trademark is a branch of intellectual property rights. A Trademark is a sign capable of distinguishing the
goods or services of one enterprise to those of other enterprise’s goods and services.

It can be LOGO or characteristics which shows identity of the product. A trademark includes a name,
word, or sign that differentiates goods from the goods of other enterprises.

A trade mark is visual symbol used in relation to any goods or services to indicate some kind of trade
connection between the goods or services and the person using the mark.

In order to bring it within the scope of the statutory definition, a trade mark should satisfy the following
essential requirements:

1. It must be a mark that is a device, brand, heading, label, ticket, name or an abbreviation of a
name, signature, word, letter or numeral shape of goods, packing or combination of colors or
any combination thereof.
2. It must be capable of being represented graphically.
3. It must be capable of distinguishing the goods or services of one person from those of others.
4. It must be used or proposed to be used in relation to goods or services.
5. The use must be of a printed or other visual representation of the mark.
6. In relation to services, it must be the use of the mark or availability or performance of services.
7. The use must be for the purpose of indicating the connection in the course of trade between the
goods or services, and some person having the right to use the mark either as proprietor or by
way of permitted user as the case may be. It is not necessary that the person using the mark
should reveal his identity.4

Registration of trademarks:

The registration process in India is a first to file' basis. Therefore, it is important to apply for registration
as soon as possible. A trademark usually takes 2-3 years to get registered, if the trademark is not being
opposed by a third party. Trademark applications are handled by the Office of the Controller General of
Patents, Trade Marks, Industrial Designs and Geographical Indications. Branches for these offices are
available in Mumbai, Kolkata, Ahmedabad, Delhi and Chennai.

The application must be filled as per territorial jurisdiction. And as per provisions of trademarks act,1999
section 18.

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To register a trademark in India the following steps must be followed:

1. Select a trademark agent in India:

Proprietors are only allowed to file a trademark application if their place of business is in
India. If this is not the case, the right holder must file a trademark application through
an agent or attorney. The agent or attorney usually takes care of the trivialities such as
searching, preparing, filing and prosecution of the trademark.

2. Determination of the eligibility and availability of the trademark:

The agent usually starts the registration process by determining whether the trademark
is eligible for registration and conducting a clearance search to see if there is a similar
mark in the office of the controller general.

3. Completing the application form and filing:

If the trademark agent has the power of attorney from the right holder he can complete
and file the application form. The form will require details such as name and address of
the proprietor, a description of the goods and services associated with the mark,
whether the mark is in use and a copy of the mark.

4. Review by the trademark office:

The trademark office reviews the application to see if it is complete and then allots the
application a number. If the trademark is registered, this number becomes the
registration number.

5. Preliminary approval and publication, show cause hearing or rejection of the application:
The trademark association determines if the application is barred from registration
either on absolute or relative grounds for refusal as prescribed in the Trade Marks Act,
1999.

6. Objection
After the examiner has scrutinized the mark up for registration he may object to its
registration. In this case, the status of the application will show �Objected�.

At this point, the applicant has the chance to put forward his case to the examiner.
Usually, the objection is either raised under Section 9 or 11 of the Act.

7. Objection under Section 9

Section 9 of the Act gives absolute grounds for refusal of registration. Section 9 rejects any mark
that is:
 descriptive,
 generic,
 deceptive of origin of goods or services,
 deceptive about the nature of the goods or services,
 deceptive about the quality of the goods or services

8. Objection under section 11

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Section 11 of the Act provides for relative grounds for refusal. If the examiner objects under
this section it will be due to the mark having similarities with an already registered
trademark. In this case, the examiner will attach the conflicting parts of the mark as well as
the trademarks that it is conflicting with. At this point, the applicant has to overcome the
objections placed by the examiner. This has to be done according to the section under which
the objection has been raised.

9. Rule 42. Notice of Opposition:

A notice of opposition to the registration of a trademark under sub-section (1) of section 21,
with such particulars as specified in Rule 43, shall be filed in form TM-O within four months from
the date of publication of the trademark journal in which the application for registration of the
trademark was advertised or re advertised.

10. Rule 44: The counterstatement:

The counterstatement required by sub-section (2) of section 21 shall be sent on Form TM-O
within two months from the receipt by the applicant of the copy of the notice of opposition
from the Registrar and shall set out what facts, if any, alleged in the notice of opposition, are
admitted by the applicant. A copy of the counterstatement shall be ordinarily served by the
Registrar to the opponent within two months from the date of receipt of the same.

11. Rule 45. Evidence in support of opposition: (Within 2 months)

12. Rule 46. Evidence in support of application: (Within 2 months)

13. Rule 47. Evidence in reply by opponent: (Within 1month)

14. Appeal:
The Trade Marks Act, 1999 under section 9111 deals with appeal to appellate board.
If the registration is refused the applicant has the final option of appealing to the Intellectual
Property Appellate Board (hereinafter referred to as IPAB). An appeal to the IPAB must e filed
within three months of the date of issuance of the refusal order by the registrar. This time limit
may be extended if the appellant can show reasonable cause as to why he could only approach
the IPAB after the time limit.

Trademarks are the exclusive rights which a person enjoys with respect of his good and services. It
allows the owners to have the benefits from their works when these are exploited commercially. A party
who holds the rights to a certain trademark can sue other parties for trademark infringement.

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Q2: What amounts to an infringement of a trade marks?

Infringement of trademarks as per Section 29 of the Trademarks Act, 1999 is defined as a use of a mark,
by an unauthorized or an authorised person or a person who is not the registered proprietor, which is
identical or deceptively similar to the trademark in relation to the goods or services in respect of which
the trademark is registered.

In simple words, it is defined as the violation of exclusive rights that are attached to a registered
trademark without the permission of the registered owner or licensees.

- Use of trademark by unauthorized person

- Unauthorized use of trademark which is identical or deceptively similar to the original
trademark

A registered trademark is said to be infringed in case of the following situation:

1. If the mark in dispute is identical with or deceptively similar to the registered trademark and is
in relation to the same or similar goods or services;
2. If the identical or similar mark can cause confusion in the minds of general public to have an
association with the registered trademark
3. If the registered trademark is used as a part of trade name or business concern for goods and
services in respect of which the trademark is registered
4. If the trademark is advertised and as a result it takes unfair advantage or is contrary to the
honest practices or is detrimental to the distinctive character and reputation of the registered
trademark.
5. If the registered trademark is used in the material meant for packaging or labelling of other
goods or as a business paper without due authorization of the registered user.
6. If an unauthorized person uses a registered trademark, if , in particular, he:
o Affixes it to goods or the packaging thereof;
o Offers or express goods for sale, puts them on the market, or stocks them for those
purposes under registered trademark
o Imports or exports goods under the mark; or
o Uses the registered trademark on business papers or in advertisement

According to Section 103, a person is said to be applying for a trademark wrongfully in the following
conditions:

1. If falsification of trademark has been committed;

2. If any trademark has been falsely applied to goods and services;
3. Makes, possesses or disposes of any instrument with the object and purpose of falsifying a
trademark;
4. Falsely indicates name of the country or place where the goods have been made or the name or
address of the person who is responsible for its manufacturing;
5. Alters or tampers with the indication of origin that is applied or required to be applied to a
product.

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The punishment for infringement of trademarks as a result of falsification shall not be less than six
months but which may extend to three years and with fine which shall not be less than fifty thousand
rupees but which may extend to two lakh rupees. Provided that the alleged offender has not committed
such falsification based on the following grounds:

1. All reasonable precautions were taken against commission of such falsification and that at the
time of commission of the alleged offence there was no genuine reason to suspect the
genuineness of the trademark
2. That he had acted innocently
3. On demand of the prosecutor, such necessary documents of the manner and person from whom
the goods were received.

Case Law : (Similarity in names creates a confusion in the mind of customers & general public)

Larson & Tourbo Ltd. V. Laxmi Narain Traders & ors (L&T and LNT)
Cadila Health care V. Cadila Pharmaceuical Ltd

Q3. Difference between infringement action and passing off action?

Trademark:
According to the Trademark Act 1999, Section 2 (1) (ZB) ” trademark means a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one person from
those of others and may include the shape of goods, their packaging and combination of colours.”

Trademark is nothing but a logo, symbol, design, phrase, picture or something else which distinguishes
one product from another similar kind of product.

1. According to the Cambridge dictionary, infringement could be defined as an action that breaks a
rule, law, etc. and the synonym of it would be breach, violation. Now, let us look at the
definition of passing off.

According to the Cambridge dictionary, passing off could be defined as the illegal act of selling a
product that is similar to one that another company has legally protected by a trade mark.

2. Infringement of trademark is defined as the violation of exclusive rights that are attached to a
registered trademark without the permission of the registered owner or licensees.
It is the use of trademark by unauthorized person. In simple words, it is unauthorized use of
trademark which is identical or deceptively similar to the original trademark.

Passing off is an act of using trademark which not only deceptively similar to the trademark of
that other company but also capable of creating confusion for the customers which ultimately
results in damage for business of the company.

The fundamental principle behind the tort of passing off is that "A man is not to sell his goods
under the pretense that they are the goods of another man" (Perry v Truefitt (1842)

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In the case of Cadbury India Limited and Ors. V. Neeraj Food Products, the High Court of Delhi explained
the difference between passing off action and an action for trade mark infringement as under:

a) An action for trade mark infringement is a statutory remedy and on the other hand, an action
for passing off is a common law remedy.
b) The use of the trade mark of the plaintiff, by the defendant, is also a prerequisite in the case of
an action for infringement while it is not a necessity of an action for passing off.
c) In an action for infringement of the plaintiff's trade mark, it is immaterial that the outfit, outer
covering and other written marks on the goods originate from a different source than that of a
registered proprietor's trade mark. The liability of the defendant in such a case may be absolute.
However, in case of passing off of trade mark, the defendant may escape liability if he can show
that the material added by him is sufficient to distinguish his goods from that of the plaintiff's
goods.
d) In an action for infringement, the Plaintiff on account of it being a registered trade mark in
dispute claims to have an exclusive right to use the mark concerning those goods. However, a
passing off by a person of his goods as those of another, in essence, is an action of deceit.

Sr.
Basis Infringement Passing off
No.
The statutory remedy under Section
1 Type of remedy Common-Law remedy
29(1) of the Trade mark Act, 1999

2 Registration It is a pre-requisite It is not required

Apart from proving deceptive
Plaintiff is only required to show similarity, the Plaintiff is also required
3 Proof deceptive similarity, as there is a to prove confusion in public and the
presumption of confusion likelihood of injury to the plaintiff's
goodwill
The registered proprietor or
registered user of the trade mark can
Section 20 of the Civil Procedure
4 Jurisdiction institute the suit where they actually
Code, 1908 would apply
and voluntarily resides or carries his
business or personally work for gain

Meaning:

Passing Off:

According to Duhaime’s law dictionary, Passing Off is “making some false representation likely to induce
a person to believe that the goods or services are those of another.”

In simple language, passing off means when a trader/business person /or some other person make false
representation to his/her customer or consumer, to make him/her believe that the goods or services
he/she is providing is of another person.

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Trademark Infringement:
Section 29 of the Trademark Act 1999 deals with trademark infringement. It says that if a person uses
the same trademark which is registered by another company or person and creates confusion in the
minds of people, it will be liable for the trademark infringement.

One of the trademark infringement case:

Apple Corps v/s Apple Inc.:

It is a long-run battle between the two major companies and one of the famous case law for trademark
infringement. In this case, the Beatles found the Apple Corps music before Steve Jobs used the same
word for his company. Steve Jobs was sued by the Beatles and later he agreed not to enter the music
company by paying compensation. But the case again arose when Apple Inc. launched iTunes, again the
suit was filed and the case was resolved when Steve Jobs agreed to purchase the trademark rights from
Apple Corps.

Difference between Passing Off and trademark infringement:

1. Trademark provides protection to registered goods and services whereas Passing Off provides
protection to unregistered goods and services. This is one of the most important differences
between Passing Off and trademark infringement. But the point to be noted here is that the
remedy provided in both Passing Off and trademark infringement is the same.
2. The other difference between Passing Off and trademark infringement is that in Passing off it is
not essential for the defendant to use the trademark of the plaintiff to bring an action of passing
off but in trademark infringement, it is not the case.
3. In the case of trademark infringement, the burden of proof lies on the plaintiff.
4. Passing off is a common law remedy whereas Trademark infringement is a statutory remedy.
5. For trademark infringement prosecution under criminal remedy is quite easy as compared in the
case of Passing off.
6. For the case of Passing off, the remedy has to be sought under Section 20 of Civil procedure
code 1908, whereas trademark infringement suits can be solved under Section 134 of the
Trademarks Act 1999.
7. For trademark infringement registration is essential whereas for passing off Goodwill, damage,
misrepresentation is essential.

4. Discuss the grounds for refusal of registration of a trade mark under the Trade Mark Act, 1999?

Conditions for Registration of Trade Marks:

The proprietor of a trademark must not only use but also register the trademark, failing which a suit for
infringement cannot be filed. Therefore, in order to acquire effective trademark rights, registration, as
well as the use of the said trademark in relation to the particular goods/services, is essential. The Trade

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Marks Act, 1999 does not specifically prescribe the grounds or conditions on the satisfaction of which a
trademark will be granted registration. However, it prescribes the grounds for refusal of registration of
trademarks. The grounds for refusal of registration of a trademark can be dealt under two categories
under the Act, viz.,

 Absolute grounds for refusal of registration (Section 9)

 Relative Grounds for refusal of registration (Section 11)

Absolute Grounds for Refusal of Registration

Section 9 of the Trade Marks Act, 1999 lays down the absolute grounds for refusal of registration. The
absolute grounds for refusal of registration of a trademark is related to public policy. The legislative
intent behind this provision is to protect the legitimate interest of the traders as well as the public who
are genuine and bona fide users of various marks in the form of signs, symbols, logos, words, etc. which
have been acquired by them in relation to their goods/services.

A trademark shall not be registered on the following grounds:

1. the mark lacks any distinctive character;

2. the mark designates the kind, quality, intended purpose, values, geographical origin or the time
of production of the goods or services rendered;
3. the mark has become customary in the current language or in the bonafide and established
practices of the trade;
4. the mark deceives the public or causes confusion;
5. the mark is likely to hurt the religious sensitivities of any class or section;
6. it comprises scandalous or obscene matter;
7. The Emblems and Names (Prevention of Improper Use) Act, 1950 prohibits its use;
8. if the mark exclusively consists of the shape of goods which results from the nature of the goods
themselves;
9. it exclusively consists of the shape of goods which is necessary to obtain a technical result;
10. the shape gives substantial value to the goods.

Relative Grounds for Refusal of Registration:

Section 11(1) provides that where the public is likely to get confused on account of a mark being
identical or similar to an earlier trademark and a subsequent mark for certain goods/services is identical
or similar to the goods/services represented by an earlier mark, such a mark shall not be registered.

There are certain essential principles which must be kept in mind while comparing trademarks that are
likely to confuse or deceive the users viz.:

 The actual probability of deception which can lead to passing off need not be proved. The
likelihood of the mark to confuse or deceive the purchaser is sufficient to bring the mark within
the scope of Section 11(1).
 The confusion or deception caused by two marks has to be judged from the vantage point of a
person with an imperfect recollection, who only knows one word and is not familiar with both
the words. Therefore, a meticulous comparison of two similar words will be of little help.

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 When two words are being compared, they must be compared as a whole. It would be
inappropriate to compare two different parts of two words which are being compared.

Q5: Who can file a suit for the infringement of Trade Mark?
What are the defenses available for defendant?
What relief can court pass?

While any person can set the criminal law in motion in respect of the offence relating to applying false
trademarks or false descriptions, only a registered proprietor of the trademark or a registered user of
the trademark could launch proceedings for infringement of the Mark, according to section 52 of the
Act.

It is important that the mark is registered and renewed from time to time to make sure that the owner
has the right to initiate an infringement suit. The registration gives to the registered proprietor, a
statutory right and title to the mark. Section 27(1) makes it clear that no person shall be entitled to
institute any proceeding to prevent the infringement of an unregistered trademark, although it is open
to him to file for passing off under the common law remedy available to him.

Who can sue for infringement?

1. The registered proprietor or his legal successor. (Registered Proprietor in relation to Trademark
means the person for the time being entered in the Register as Proprietor of the Trademark)
2. Legal heirs of the Registered Proprietor of the Trademark
3. The Registered user (The Registered user means a person who is for the time being registered as
a registered user under section 49 of the Act)
4. The Applicant for registration of Trademark
5. Anyone of the joint proprietors of the Trademark

Who can be sued for Infringement of Trademark?

1. The person who infringes the Trademark

2. The person who threatens to use the Trademark
3. The agents of the infringer
4. In case of a company, directors or promoters cannot be sued unless they are personally liable
5. In a master-servant relationship, the master who orders the servant to make infringing copies is
liable to be sued

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Types of Infringement:

1. Direct Infringement:
Infringer aware of the fact that he is infringing the rights of Trademark holder and still they are
infringing his rights

2. Indirect Infringement:
o Indirect Infringement occurs when a person, though not infringing directly, causes
another person to infringe on a trademark.
o When a person materially contributes or induces the direct infringer to commit the
infringement, it is called contributory infringement.
o When the person has the ability to control the actions of the direct infringer, or
o When a person derives a financial benefit from the infringement or
o When a person has knowledge of the infringement and contributes to it. The person is
said to be vicariously liable.

 Infringement of Registered Trademark in India is described under Section 29 of the Trademark

Act, 1999
 Infringement of Unregistered Trademark (Passing Off) is described under Section 27 of the
Trademark Act, 19999

For any infringement to come under Passing Off action, it must fulfill 3 conditions:
- Trademark has a reputation
- There was Misrepresentation by Infringer
- It has caused Injury or Loss

What are the defenses available for defendant?

1 Fair use

The classic fair use defense concerns the good faith use of a mark for is primary (descriptive) meaning,
rather than its secondary meaning (which is when consumers associate a particular term or mark with a
particular product provider or brand)

2 Nominative fair use

The nominative fair use defense protects your ability to use a trademark to refer to a trademark owner
or its goods or services for purposes of reporting, commentary, criticism, and parody, as well as for

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comparative advertising. Courts impose three requirements on defendants who want to take advantage
of the nominative fair use defense:

(1) The trademark owner, product, or service in question must not be readily identifiable
without use of the trademark;

(2) The defendant must use only as much of the mark as is necessary to identify the trademark
owner, product, or service; and

(3) The defendant must do nothing that would suggest sponsorship or endorsement by the
trademark owner.

Coca-Cola may compare it’s product to Pepsi, and a local news station can report on things like an event
being held at a Starbucks.

3 Descriptive fair use

This refers to a situation where a mark has been used in good faith, primarily for a descriptive purpose
rather than in order to refer to a specific mark or product.

Descriptive fair use permits use of another’s trademark to describe the user’s products or services,
rather than as a trademark to indicate the source of the products or services.

An example of descriptive trademark fair use is the use of the mark PIN in Pinterest Inc v Pintrips Inc.
The court held that the PINTRIPS and PIN marks used by Pintrips did not infringe Pinterest's PIN and
PINTEREST registered trademarks because the defendant's use of the PIN mark was descriptive of a
feature of the service, that is the ability to pin locations on a map, not as a mark.

4 Prior Use

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

Case M/s R.J. Components and Shafts v. M/s Deepak Industries Ltd7,

The defendant had not registered the trademark but the court ruled in the favor of defendant.

5 Non-use of the Mark by the Registered Proprietor

Unused trademarks serve no economic purpose and act as an artificial barrier to the registration of new
mark. If a mark is unused by a registered proprietor from a so long time then it can be a good defense

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In the case of Munish Kumar Singla Trading (Chakshu Food Products) v. Jollibee Foods Corporation which
was discussed above, the defendant had not been using the trademark registered by them even after
twelve years of registration. This is also a case of unjustified non-use of trademark.

6 Delay and Acquiescence

In the case where there has been a delay in bringing action of the infringement by the plaintiff it is often
ruled that the plaintiff has waived his rights as the trademark owner. If it comes to the knowledge of the
plaintiff that his trademark has been used by someone else then he must take action against it. If the
plaintiff does not take action for a long period then the has waived his rights as the trademark owner.

Case Khoday India Ltd v. The Scotch Whisky Association

7 The invalidity of Registered Mark

In the case of trademark infringement, the defendant may argue that the registered mark of the plaintiff
itself is invalid.

Trademark Infringement Remedies

1 Monetary compensation.
2 injunction
3 Court-ordered forfeiture or destruction of the infringing goods
4 Payment of plaintiff’s attorneys’ fees.

Remedies Available for Infringement of Trademark:

- Both Civil and Criminal Remedies are available for infringement of a Trademark
- There is no limit on the time period for filing a suit

A) Civil Remedies

1. Injunction/Stay against the use of Trademark

2. Appropriate Damages (as a compensation for loss)
3. Handing over accounts or profits
4. Appointment of a local commissioner by the respective court for custody or sealing of infringing
material and goods
5. Application under Order 39 rule 1&2 of CPC for grant of temporary or ad interim ex-parte
injunction

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B) Criminal Remedies

1. Imprisonment not less than 6 months up to 3 years & fine not less than 50,000 which may
extended up to 2 Lacs rupees.
2. Provision for enhanced punishment given under section 105 of Trademark Act, 1999
3. Sec 27(1) states that no action for infringement can be taken for unregistered trademark
4. Further Section 27(2) states that there is an alternative remedy available for unregistered
trademark. It is called Passing Off.

For any infringement to come under Passing Off action, it must fulfill 3 conditions:
- Trademark has a reputation
- There was Misrepresentation by Infringer
- It has caused Injury or Loss

C) Administrative Remedies:

1. Examiner carries interrogatories

2. Correcting Trademark already registered
3. Check on goods trading (Restricting import & export of the infringed goods)

Copyright Question Bank:

1. State the acts which do not constitute infringement of Copyright?

What does not amount to an infringement of Copyright?

What is Copyright?

Copyright refers to the collection of rights that are automatically vested on the creator of the original
work of authorship such as a literary work, music, movies or software. The copyright holder i.e. the
creator of the original work has the right over his work, he can transfer his rights to others or keep full
control over his work by not giving the right to anyone to copy or produce his work.

In short and simple words, copyright is basically a right to copy. One is allowed to copy the original work
but only if the author give the permission to the person.

The Copyright Act provides certain exceptions to infringement. The object of these provisions is to
enable the encouragement of private study and research and promotion of education. They provide
defenses in an action for infringement.

The exceptions come under the following categories:

1. Reproduction for use in judicial proceedings and for use of members of the legislature,
2. Publication of short passages, restricted reproduction or performance for educational purposes,

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3. Making of records under license from Copyright Board on payment of royalty,

4. Playing of records or performance by a club or society for the benefit of the members of
religious institutions,
5. Reproduction of an article on current economic, political, social or religious matters in
newspapers, magazines etc,
6. Reproduction of a few copies for use in libraries or for research or private study,
7. Matters published in official gazettes including Act of Parliament (subject to certain conditions )
or its translation,
8. Making of a drawing, engraving or photograph of an architectural work of art, or a sculpture
kept in a public place,
9. Use of artistic work in a cinematography film,
10. Use of an artistic work (author not the owner of copyright) by the author of any mould, cast,
sketch, plan, model, etc., made by him for the work,
11. Making of an object in three dimension of an artistic work in two dimensions subject to certain
condition, and
12. Reconstruction of a building in accordance with architectural drawings.
13. Fair dealing without commercial benefits.

Copyright law does not prevent a person from taking what is useful from an original work and create a
new work with additions and improvements. Under the guise of a copyright the owner of a copyright
cannot ask the court to close all the venues of research and scholarship and all frontiers of human
knowledge.

2. State the term of copyright in various works?

Sec 22 - Term of copyright in published literary, dramatic, musical and artistic works:

Except as otherwise hereinafter provided, copyright shall subsist in any literary, dramatic, musical or
artistic work published within the lifetime of the author until sixty years from the beginning of the
calendar year next following the year in which the author dies.

Sec23 – Term of Copyright in anonymous and pseudonymous works:

If the publication of the work anonymously, that is, publication when the author of such work is
unknown. The copyright term of an anonymous publication, as provided under Section 23 of the
Copyright Act, 1957, is also for a period of sixty years, calculated from the beginning of the calendar year
next following the year in which the work is first published.

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The section also provides for the disclosure of the identity of the author. In its proviso, it is provided that
where the identity of the author is disclosed before the expiry of the said period, the copyright exists for
a period of sixty years, calculated from the beginning of the calendar year next following the year in
which the work is first published.

Sec24 – Term of Copyright in the posthumous work

It is the publication of work after the death of its author. The term of copyright protection of a
posthumous publication subsists for a period of sixty years and unlike in others, here such period is
calculated from the date of publication.

Sec 25 - Term of Copyright for Photographs

While Section 22 contains terms of copyright for all other works, the term for photographs has been set
out separately in Section 25 of the Act. This is in consonance with the Berne convention, which also
arrays separate terms for photographs and other works under Article 7.4 and Article 7.1 of the Berne
Convention (Paris text) respectively.

The Indian Copyright Act provides for copyright in a photograph for a period of 60 years from the
beginning of the calendar year, following the year in which the photograph is published. But this Section
has been omitted by the amendment of 2012.

Sec 26 - Term of Copyright for Cinematograph Films

Copyright of Cinematograph Films shall subsist until sixty years from the beginning of the calendar year
next following the year in which the film is published.

Sec 27 - Term of Copyright in Records (Sound Recordings)

Copyright of sound recordings shall subsist until sixty years from the beginning of the calendar year
following the year in which the sound recording is published.

Sec28 - Term of Copyright of government works

In the case of a Government work, where Government is the first owner of the copyright therein,
copyright subsists until sixty years from the beginning of the calendar year next following the year in
which the work is first published

Sec28A - Term of Copyright where a public undertaking is the first owner

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In the case of a work, where a public undertaking is the first owner of the copyright therein, copyright
subsists until sixty years from the beginning of the calendar year next following the year in which the
work is first published

Sec 29 - Term of Copyright of work of an international organization

In the case of a work of an international organization to which the provisions of section 41 apply,
copyright subsists until sixty years from the beginning of the calendar year next following the year in
which the work is first published

3. What is infringement of copyright? Discuss the law relating to infringement of copyright?

What is Copyright?

Copyright refers to the collection of rights that are automatically vested on the creator of the original
work of authorship such as a literary work, music, movies or software. The copyright holder i.e. the
creator of the original work has the right over his work, he can transfer his rights to others or keep full
control over his work by not giving the right to anyone to copy or produce his work.

In short and simple words, copyright is basically a right to copy. One is allowed to copy the original work
but only if the author give the permission to the person.

Definition:

According to Sec. 14 of the Copyright Act, 1957, copyright means the exclusive right to do or authorize
others to do certain acts in relation to:
1. Literary, Dramatic or Musical Works
2. Artistic works
3. Cinematography film, and
4. Sound recording.

Examples of Copyright:
 Someone publishes the novel, then he gets the copyright for the novel.
 The makers of the film have a copyright over the film.

Why is copyright important?

1. Copyright legally protects the creator’s work

2. Copyright helps the author to exercise control over his work
3. It provides ownership to the creator of the work.

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Purpose of Copyright:

1. To promote the progress of useful arts and science by protecting the exclusive rights of the
creators.
2. To provide incentive and reward to the creators for producing original content. The creators can
be economically benefited by their copyrighted work and receive proper recognition.
3. To encourage the creators to come up with creative ideas.

What is eligible for copyright?

1. Literary works
2. Musical composition
3. Dramatic works
4. Choreographic works
5. Graphics and Sculptural Activities

Copyright Protection:

Copyright protection is given to all original literary, artistic, musical or dramatic, sound recording and
cinematography. The originality of the work is the prerequisite to claim for copyright. Original work
means that the work has not been copied. A work is protected irrespective of its content or quality.

Registration for Copyright:

It is not mandatory to register the work to claim copyright and it commences the moment the work is
created. However, it is advised to register the work for better protection, it will serve as proof in a
matter of dispute.

Section 13 of the Copyright Act, 1957 states that the copyright can be given only for the original work.
Copyright is usually provided for 60 years

What is Copyright Infringement?

Copyright infringement refers to the unauthorized use of someone’s copyrighted work. Thus, it is the
use of someone’s copyrighted work without permission thereby infringing certain rights of the copyright
holder, such as the right to reproduce, distribute, display or perform the protected work.

Section 51 of the Copyright Act specifies when a copyright is infringed. According to Section 51 of the
Act, Copyright is deemed to be infringed if:

1. A person without obtaining the permission of the copyright holder does any act which only the
copyright holder is authorised to do.

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2. A person permits the place to be used for communication, selling, distribution or exhibition of
an infringing work unless he was not aware or has no reason to believe that such permission will
result in the violation of copyright.
3. A person imports infringing copies of a work
4. A person without obtaining the authority from the copyright holder reproduces his work in any
form.

Copyright Infringement examples:

1. If a person uses someone’s song as background music in his/her music video then he could be
made liable for copyright infringement.
2. If a person downloads movies or songs from an unauthorized source then it will amount to
copyright infringement.
3. A person is free to record a TV program to view it later, but if he transfers or distributes it to
others then it becomes a copyright infringement.

Rights of Copyright owners :

Certain Rights are given to the copyright holder under the Copyright Act, 1957. These rights are
discussed below:

1. Right to Reproduction:
The right to reproduction allows the copyright holder to make copies of his work in any form.
The copyright holder can also bring legal action against the person if he reproduces his work i.e.
download or copies his work in any format for commercial purposes.

2. Right to distribute:
The copyright holder has the right to distribute his work in a manner he deems fit. He is also
entitled to transfer his rights or some rights. For example, he may allow someone to translate
his work.

3. Right to make derivative works :

The copyright holder has the right to derivative works. Thus, if a person wants to make a movie
based on a novel then he should take permission from the author of the novel to do so or it may
result in copyright infringement.

4. Right to publicly perform:

The copyright holder has the right to perform his work publicly i.e. a writer of a novel may
showcase his work by performing drama or concert.

5. Right of Paternity:
The right of paternity allows the copyright holder to claim authorship of the work. The author
can claim due credit for his work, thus for example, if a movie is based on a novel but the maker
of the movie does not acknowledge the author of the novel then the author can bring an action
against the makers.

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6. Sui Generis Right:

This right is available to the creators of the database and software. The right exists for a period
of 15 years.

Remedies for Infringement of Copyright:

Under the Copyright Act, 1957 the copyright holder has two types of remedies:

Civil Remedies:

1. Injunction:
Section 55(1) of the copyright act, provides that the copyright holder is entitled to remedy by way of
injunction. The injunction is the most effective remedy in case of copyright infringement.

Injunction refers to the judicial process by which one who is threatening the legal rights of someone is
restrained to continue his acts or is ordered to restore the matter to the position in which they stood
before the action.

2. Damages:
Section 55(1) of the copyright act, further provides that the copyright holder is entitled to damages for
copyright infringement.

The purpose of providing the damages to the copyright holder is to restore him to the earlier position.
There are various factors that determine the amount of damages to be paid to the copyright holder.

Generally, the damages are awarded for the amount that the copyright holder would have got if the
person had obtained the license from him.

However, there are various other factors as well, that determines the amount of damages like the loss
of profit to the copyright holder, loss of reputation, decrease in the sale of the copyright holder’s work
etc.

Criminal Remedies:

1. The copyright holder can take criminal proceedings against the infringer. The criminal remedy is not
an alternative to the civil remedy but is complementary to it. Thus, the copyright holder can bring both
civil and criminal proceedings simultaneously.

2. Section 63 of the Copyright Act, states that copyright infringement is a criminal offence.

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4. Explain the procedure for grant of license to produce and publish translations of literary and
dramatic work in any language?

20) Explain the process of issuing licenses for producing and publishing translations of literary works or
plays in any language. (October 2009)

Answer: Section 32 of the Copyright Act, 1957 deals with the process of issuing licenses for the
production and publication of translations of literary works or plays in any language.

Anyone can apply to the Copyright Board for a license for a period of seven years after publication, to
produce and publish literary works or plays in any language.

Anyone can apply for the production and publication of a foreign language translation within three
years. However, if the language of such translation is not commonly used in developed countries, it is
advisable to make such an application within a year after such publication. License issued for non-indian
work will not be applicable for export of copies of those translation books, outside of India.

The government can export, Such exports may be made for translation of education, scholarship or
research in languages other than English, French and Spanish. It, cannot be used for commercial
purposes.

Before applying to the Board, the applicant has to fulfill the following conditions

1. In order to publish a translation of the work, the applicant must have applied to the copyright owner.

2. If the applicant cannot find the address of the copyright owner, a letter must have been sent to the
publisher of that work.

3. In the case of works in India, the copyright owner should not have published the translation within
three months from the date of receipt of such Letter of Request and in case of work outside India, the
copyright owner should not publish the translation within nine months.

4. In case of translation of a work outside India, the name of the author of the proposed translation and
the title of the specific version of the work should be printed on all copies of the translation.

5. The applicant must be able to produce and publish an accurate translation of the action. And be able
to pay royalties fixed by the board:

6. Authors should not remove copies of the book from the market.

7. The retail price of the copy of the translation should be stated.

8. The Copyright Board will grant the applicant a non-exclusive license. For that,
the applicant, will pay royalties to the copyright owner for copies of the sold translation. The rate of
royalty, as per the prescribed procedure, will be deducted by the Board. As per Section 32-A of the Act,
the price (rate) will be reasonable.

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License to Produce and Publish Translation of Literary or Dramatic Work in any Language (Section 32):
Section 32 of the Copyright Act provides that after expiry of a period of seven years from the
first publication of a literary or dramatic work, any person may apply to the Copyright Board for
a license to produce and publish a translation of work.

Where the work is not Indian work, any person may apply to the Board for a license to produce
and publish a translation in printed or analogous form of reproduction of a literary or dramatic
work in any language in general use in India after a period of three years from the first
publication of such work, if such translation is required for the purpose of teaching, scholarship
or research. But where translation is in a language not in general use in any developed country,
such application may be made after the period of one year from such publication.

License to Reproduce and Publish Works for Certain Purposes (Section 32-A):

According to this section, any person may apply to the Copyright Board for a license to
reproduce and publish any literary, scientific or artistic work after the expiration of the relevant
period from the date of first publication of an edition of such work, if the copies of such edition
are not made available in India , or such copies have not been put on sale in India for a period of
six months to the general public or in connection with systematically instructional activities at a
price reasonably related to that normally charged in India for comparable works by the owner of
the right of reproduction or by any person authorised by him in this behalf.

The period prescribed are:

 Seven years for work related to fiction, poetry, drama, music or art
 Three years for works related to natural science, physical science mathematics or technology
 Five years for any other work

32. (1) Any person may apply to the [Commercial Court] for a licence to produce and publish a
translation of a literary or dramatic work in any language [after a period of seven years from the first
publication of the work].

[(1A) Notwithstanding anything contained in sub-section (1), any person may apply to the [Commercial
Court] for a licence to produce and publish a translation, in printed or analogous forms of reproduction,

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of a literary or dramatic work, other than an Indian work, in any language in general use in India after a
period of three years from the first publication of such work, if such translation is required for the
purposes of teaching, scholarship or research :

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

(2) Every [application under this section] shall be made in such form as may be prescribed and shall state
the proposed retail price of a copy of the translation of the work.

(3) Every applicant for a licence under this section shall, along with his application, deposit with the
Registrar of Copyrights such fee as may be prescribed.

(4) Where an application is made to the [Commercial Court] under this section, it may, after holding
such inquiry as may be prescribed, grant to the applicant a licence, not being an exclusive licence, to
produce and publish a translation of the work in the language mentioned in [the application—

(i) subject to the condition that the applicant shall pay to the owner of the copyright in the
work royalties in respect of copies of the translation of the work sold to the public, calculated at such
rate as the [Commercial Court] may, in the circumstances of each case, determine in the prescribed
manner; and
(ii) where such licence is granted on an application under sub-section (1A), subject also to
the condition that the licence shall not extend to the export of copies of the translation of the work
outside India and every copy of such translation shall contain a notice in the language of such translation
that the copy is available for distribution only in India :
Provided that nothing in clause (ii) shall apply to the export by Government or any authority under the
Government of copies of such translation in a language other than English, French or Spanish to any
country if—

(1) such copies are sent to citizens of India residing outside India or to any association of
such citizens outside India; or
(2) such copies are meant to be used for purposes of teaching, scholarship or research and
not for any commercial purpose; and
(3) in either case, the permission for such export has been given by the Government of that
country :]
[Provided further that no licence under this section] shall be granted, unless—

(a) a translation of the work in the language mentioned in the application has not been
published by the owner of the copyright in the work or any person authorised by him, [within seven
years or three years or one year, as the case may be, of the first publication of the work] or if a
translation has been so published, it has been out of print;
(b) the applicant has proved to the satisfaction of the [Commercial Court] that he had
requested and had been denied authorisation by the owner of the copyright to produce and publish
such translation, or that [he was, after due diligence on his part, unable to find] the owner of the
copyright;
(c) where the applicant was unable to find the owner of the copyright, he had sent a copy
of his request for [such authorisation by registered air mail post to the publisher whose name appears

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from the work, and in the case of an application for a licence under sub-section (1)], not less than two
months before [such application];
[(cc) a period of six months in the case of an application under sub-section (1A) (not being an
application under the proviso thereto), or nine months in the case of an application under the proviso to
that sub-section, has elapsed from the date of making the request under clause (b) of this proviso, or
where a copy of the request has been sent under clause (c) of this proviso, from the date of sending of
such copy, and the translation of the work in the language mentioned in the application has not been
published by the owner of the copyright in the work or any person authorised by him within the said
period of six months or nine months, as the case may be;
(ccc) in the case of any application made under sub-section (1A),—
(i) the name of the author and the title of the particular edition of the work proposed to be
translated are printed on all the copies of the translation;
(ii) if the work is composed mainly of illustrations, the provisions of section 32A are also
complied with;]
(d) the [Commercial Court] is satisfied that the applicant is competent to produce and
publish a correct translation of the work and possesses the means to pay to the owner of the copyright
the royalties payable to him under this section;
(e) the author has not withdrawn from circulation copies of the work; and
(f) an opportunity of being heard is given, wherever practicable, to the owner of the
copyright in the work.
[(5) Any broadcasting authority may apply to the [Commercial Court] for a licence to produce and
publish the translation of—

(a) a work referred to in sub-section (1A) and published in printed or analogous forms of
reproduction; or
(b) any text incorporated in audio-visual fixations prepared and published solely for the
purpose of systematic instructional activities,
for broadcasting such translation for the purposes of teaching or for the dissemination of the results of
specialised, technical or scientific research to the experts in any particular field.

(6) The provisions of sub-sections (2) to (4) insofar as they are relatable to an application under sub-
section (1A), shall, with the necessary modifications, apply to the grant of a licence under sub-section (5)
and such licence shall not also be granted unless—

(a) the translation is made from a work lawfully acquired;

(b) the broadcast is made through the medium of sound and visual recordings;
(c) such recording has been lawfully and exclusively made for the purpose of broadcasting
in India by the applicant or by any other broadcasting agency; and
(d) the translation and the broadcasting of such translation are not used for any commercial
purposes.
Explanation: For the purposes of this section,—

(a) "developed country" means a country which is not a developing country;

(b) "developing country" means a country which is for the time being regarded as such in
conformity with the practice of the General Assembly of the United Nations;
(c) "purposes of research" does not include purposes of industrial research, or purposes of
research by bodies corporate (not being bodies corporate owned or controlled by Government) or other
associations or body of persons for commercial purposes;

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(d) "purposes of teaching, research or scholarship" includes—

(i) purposes of instructional activity at all levels in educational institutions, including
Schools, Colleges, Universities and tutorial institutions; and
(ii) purposes of all other types of organised educational activity.]

5. Define the term broadcast and performer. Discuss the rights of the Broadcasting organizations and
performers. (page 49)
A “performer”, according to the Copyright Act, 1957 means a person who by acting, singing, playing an
instrument, dancing or in some other way performs a literary, artistic, dramatic or musical work.

However, in a cinematograph film a person whose performance is casual or incidental in nature and, in
the normal course of the practice of the industry, is not acknowledged anywhere including in the credits
of the film shall not be treated as a performer except for certain purposes.

A “broadcaster”, refers to a person who makes, with consents as required by law, a radio or television
broadcast.

A “broadcast” means communication to the public by any means of wireless diffusion, whether in any
one or more of the forms of signs, sounds or visual images; or by wire, and includes a re-broadcast.

The visual or acoustic performances of actors, musicians, singers or dancers form a key part of the
creative process and the performers who display their talents through their artistic performances must
be entitled to certain rights over such performances as well as a share in the proceeds from its
commercial exploitation.

However, the rights of the performers were not recognized internationally until the adoption of the
Rome Convention of 1961. This international treaty called for protection against the unauthorized
broadcast of any performances without providing adequate compensation to the performers.

Rights of Broadcasting Organizations:

The broadcasting organizations like Radio, Television etc have been vested certain special rights by the
legislature. Section 37 of the Copyright Act states that every broadcasting organization shall have a
special right to be known as “Broadcast reproduction right” in respect to fits broadcast.

The term of such broadcast reproduction right shall be for twenty-five years from the beginning of
calendar year next following the year in which the broadcast is made.

Infringement of Broadcasting Rights:

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Sec 2 (dd) A “broadcast” means communication to the public –

- by any means of wireless diffusion, whether in any one or more of the forms of signs, sounds or
visual images; or
- by wire, and includes a re-broadcast.

Section 37(3) of the Copyright Act mentions the circumstances under which the Broadcasting rights are
deemed to be infringed which are as follows:

During the continuance of a broadcast reproduction right in relation to any broadcast, any person who,
without the license of the owner of the right does any of the following acts of the broadcast or any
substantial part thereof-

a. Re-broadcasts the broadcast; or

b. Causes the Broadcast to be heard or seen by the public on payment of any charges; or
c. Makes any sound recording or visual recording of the broadcast; or
d. Makes any reproduction of such sound recording or visual recording where such initial recording
was done without license or where it was licensed, for any purpose not envisaged by such
license; or
e. Sells or gives on commercial rental or offer for sale of for such rental, any such sound recording
or visual recording referred to in clause (c) or clause (d).

Rights of performers:

Section 2(qq) defines the term ‘performer’, which includes actor, dancer, musician, singer, acrobat,
conjurer, snake charmer, juggler, a person delivering a lecture or any other person who makes a
performance.

In India, protection is given to performer’s rights for the term of 50 years. Article 7 of the Rome
Convention gives protection to the rights of performers:

a. Performers have the right to prevent others from broadcasting or communicating to the public
by means other than broadcasting without their consent.
b. They have the right to prevent others from fixation of their unfixed live performance without
taking their consent.
c. They have the right to prevent others from reproduction of their live performance without their
consent.
d. They have the right to prevent the commercial exploitation of their performance for any other
purpose, for which the consent is not obtained.

What are the rights of Performer under the Copyright Act?

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1. Performer has right to make sound or visual recording:

A performer has the right to make the sound or visual recording. He can also give consent to
other people to record the live performance. Without the consent of the performer, no other
person can make use of that sound recording. But, in case, their performance is for the
cinematograph film and the written agreement is made consenting the incorporation of his
performance in such film then all the rights will, therefore, be enjoyed by the producer of such
film irrespective of whether the performer is a singer or actor.

2. Performer has the right to produce the sound or visual recording:

A performer may also become producer of the sound or visual recording and can enjoy all the
rights that a producer enjoys such as reproducing a number of copies, giving the copies for
commercial rental, communicating the work to the public etc. But for that purpose, the
performer must have the prior permission from the individual copyright owner like lyricist and
music composer and should have the certificate related to the sound or visual recording by the
competent authority.

3. Performer has the right to broadcast performance:

Performers can prevent others from broadcasting their live performance. In case the consent of
the performer is not taken and any other individual is broadcasting his performance then it will
amount to copyright infringement. But, if the performance is for the cinematograph film and
then rights will be enjoyed by the producer of the cinematograph film but if the performance is
commercially exploited for other purposes than such film then the performer has the right to
claim the royalties.

4. Performer has the right to communicate the work other than by broadcast:

Performer can use other means to communicate with the public than by means of broadcast.
Broadcast means communication to the public either by means of wireless diffusion or by wire.

Acts that constitute the infringement of performer’s rights

1. Reproduction of the work of performer without his consent.

2. Use of performer’s work without his consent.
3. Use of performer’s work for any other purpose for which the consent is not obtained from
performer.
4. Broadcast of the work of performer other than the one mentioned in Section 39 of the
Copyright Act.
5. Communication of the performance without the consent of performer to the public other than
by broadcast.

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Acts that do not constitute infringement of performer’s rights:

1. The act of reproducing any sound or visual recording either for the purpose of private use or for
teaching and research work only.
2. In case the work is reproduced for the purpose of judicial proceeding.
3. Reproduction for the purpose of reporting, reviewing or other things that come under fair
dealing.
4. In case the work is reproduced for the purpose of use by members of legislature.
5. Some other uses that are not considered infringement under Section 52 of the Copyright Act.

Remedies against Performer’s Rights Infringement

The remedies are available against the infringer of performer’s right in Section 55 and also from Section
63 to 70 of the Copyright Act. The following remedies may be availed:

1. Civil Remedies:

The owner of the performer’s right or his exclusive licensee may go to the court and obtain the
injunction either temporary or permanent or they may also claim damages.

2. Criminal Remedies:

Not only civil remedy but criminal remedy is also available against the infringer. The infringer may be
sentenced for six months which may extend up to three years or may be liable to pay a fine of Rs. 50,000
to Rs. 2,00,000 or both.

3. Anton Pillar Order:

Sometimes the court gives permission to the plaintiff, on an application by him, to enter into the
defendant’s place along with the attorney and inspect the relevant documents. This is necessary
because the defendant may remove the documents from his premises if he knows beforehand that the
inspection is going to happen or any search warrant is released by the court.

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