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8.4 LAW RELATING TO INTELLECTUAL PROPERTY

Unit 1

1. Patent office [Section 74]

There shall be an office which is shall be known as patent office whose name were
specify by the central government through official gazette. The head office and its branch
were situated at such places where the control government deems fit.
2. Controller
I. Controller General of patents, design and trademark is appointed under Section
3[1]
II. Central government may appoint as may examiners and officer as it thinks fit
III. The controller on discharge the officers appointed under sub section [2] in writing
IV. The reason of everything is recorded.
3. Functions and Powers
I. Controller to have certain powers of civil court [77]
i. Summoning and enforcing the attendance of any person and examining
him on oath.
ii. Requiring the discovery and production of any document
iii. Receiving evidence on affidavit
iv. Issuing commissions for the examination of witness or docment
v. Awarding costs
II. Power of controller to correct clerical errors [78]
i. Correct any error which entered in register
ii. A correction is made upon request in writing with prescribed fees or
without such request
iii. A notice is given to patentee or to applicant for the patent on request of
correction
III. Evidence how to be given and power of controller in respect [79]
IV. Exercise of discretionary power by controller [80]
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V. Disposal by controller of application for extension of time. [81]

4. Working of patents
I. To encourage inventor and secure
II. Not merely granted to enjoy monopoly
III. For promotion of invention of technology
IV. For protection of public health and public interest
V. Do not prohibit central government in taking measure to protect public health
VI. Abuse ofpatent right by resorting to unfair trade practice is not allowed
VII. Grant for public interest at affordable price
5. Compulsory licenses
It can be granted after the expiration of 3 years from the grant of the patent on the
grounds
i. Reasonable requirement of the public have not been satisfied
ii. Not available to the public at a reasonable affordable price
iii. Is not worked in the territory of India.
6. Revocation [Section 85]
I. Where, in respect of a patent, a compulsory licence has been granted, the Central
Government or any person interested may, after the expiration of two years from
the date of the order granting the first compulsory licence, apply to the Controller
for an order revoking the patent on the ground that the patented invention has not
been worked in the territory of India or that reasonable requirements of the public
with respect to the patented invention has not been satisfied or that the patented
invention is not available to the public at a reasonably affordable price.
II. Every application under sub-section (1) shall contain such particulars as may be
prescribed, the facts upon which the application is based, and, in the case of an
application other than by the Central Government, shall also set out the nature of
the applicant's interest.
III. The Controller, if satisfied that the reasonable requirements of the public with
respect to the patented invention has not been satisfied or that patented invention
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has not been worked in the territory of India or that the patented invention is not
available to the public at a reasonably affordable price, may make an order
revoking the patent.
IV. Every application under sub-section (1) shall ordinarily be decided within one
year of its being presented to the Controller.

7. Acquisition of patent by Central Government [Section 102]

I. The Central Government may, if satisfied that it is necessary that an invention
which is the subject of an application for a patent or a patent should be acquired
from the applicant or the patentee for a public purpose, publish a notification to
that effect in the Official Gazette, and thereupon the invention or patent and all
rights in respect of the invention or patent shall, by force of this section, stand
transferred to and be vested in the Central Government.
II. Notice of the acquisition shall be given to the applicant, and, where a patent has
been granted, to the patentee and other persons, if any, appearing in the register as
having an interest in the patent.
III. The Central Government shall pay to the applicant, or, as the case may be, the
patentee and other persons appearing on the register as having an interest in the
patent such compensation as may be agreed upon between the Central
Government and the applicant, or the patentee and other persons; or, as may, in
default of agreement, be determined by the High Court on a reference under
section 103 to be just having regard to the expenditure incurred in connection
with the invention and, in the case of a patent, the term thereof, the period during
which and the manner in which it has already been worked (including the profits
made during such period by the patentee or by his licensee whether exclusive or
otherwise) and other relevant factors.

Unit 2

1. Infringement
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I. Jurisdiction – in Court Inferior to District Court

II. Burden of Proof – on Defend to prove process used by him to obtain the product
III. Power of court to make declaration as to non infringement
i. When the process is either sold or given
ii. Unless it is special reason
IV. Power of court to rant relief in cases of groundless threats of infringement
2. Remedies
Patent Infringement occurs when someone makes, uses or sells a product which is
covered by a patent.  One of the main benefits of a patent is the ability to exclude others. 
A patent gives the owner the right to stop someone from infringing their patent rights. 
However determining what you are entitled to when someone violates your patent, is very
difficult.
The law is a balance between encouraging an inventor to invent and allowing society to
grow.  Encouraging the investment of time, cost and ingenuity of an inventor required to
invent something new is rewarded by granting them a patent which covers the invention
and grants them an exclusive right to their invention for a limited time.  The registration
is a reward for the inventor inventing.  Society grows as a result of the invention because
everyone can use the invention after the patent expires.  The law also provides a
mechanism for protecting and enforcing rights related to an invention, although contracts
can also be crafted which also protect an inventor in certain situations.
Remedies for Patent Infringement include:
i. An injunction issued by a court;
ii. Monetary Damages (if willful, trebled);
iii. Attorney’s Fees; and
iv. Seizure, Destruction and/or Impoundment of the infringing goods.
Generally, the law allows an inventor to enforce it rights by stopping any infringing use
and obtain payment for any damages suffered by the unauthorized use of the patented
invention.  Typically, the court will stop the infringement through an injunction which is
an order issued by a court which can be temporary or permanently prevent the infringer
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from making, using or selling the product.  In addition, the court may allow the inventor
to collect money for any losses suffered as a result of the infringement.
Patent infringement remedies are typically awarded as a result of a lawsuit filed in federal
court against the infringer.  Alternatively, the parties can agree to settle their dispute
through arbitration.  When the infringing goods come from outside the U.S., the
International Trade Commission (ITC) may also help resolve the dispute.  However, no
compensation for past infringement or attorney’s fees are available in an ITC proceeding.
In an infringement suit, the patent owner may sue to recover monetary damages. When
trying to determine the amount of money to award, the court will typically look towards
the amount of cash necessary to restore the patent owner to the same financial position he
or she would have been in had the infringer violated the patent owner’s rights.
3. Offences and Penalties
I. Contravention of secrecy provision relating to certain invention – 2 years of
prison or fine or both
II. Falsification of entries in register – 2 years of prison or fine or both
III. Unathorised claim of patent right – fine upto 1 lakh rupee
IV. Wrongful patent of words – prison of 6 months or fine
V. Refusal or failure to supply information – 10 lakh rupees fine
VI. Practice by non-registered patent agent – in case of first offence fine of 1 lank and
in subsequent offence fine of 10 lakh
4. Patenting life forms and animal variety
A biological patent is a patent on an invention in the field of biology that by law allows
the patent holder to exclude others from making, using, selling, or importing the
protected invention for a limited period of time. The scope and reach of biological patents
vary among jurisdictions, and may include biological technology and products,
genetically modified organisms and genetic material. The applicability of patents to
substances and processes wholly or partially natural in origin is a subject of debate.
5. Meaning of Trade Marks
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A trademark is a name or symbol that a company uses on its products and that cannot
legally be used by another company. If you say that something is the trademark of a
particular person or place, you mean that it is characteristic of them or typically
associated with them.
A trademark, trade mark, or trade-mark is a recognizable sign, design, or expression
which identifies products or services of a particular source from those of others, although
trademarks used to identify services are usually called service marks. The trademark
owner can be an individual, business organization, or any legal entity. A trademark may
be located on a package, a label, a voucher, or on the product itself. For the sake
of corporate identity, trademarks are often displayed on company buildings.
The first legislative act concerning trademarks was passed by the Parliament of
England in 1266 under the reign of Henry III, requiring all bakers to use a distinctive
mark for the bread they sold. The first modern trademark laws emerged in the late 19th
century. In France the first comprehensive trademark system in the world was passed into
law in 1857. The Trade Marks Act 1938 of the United Kingdom changed the system,
permitting registration based on "intent-to-use”, creating an examination based process,
and creating an application publication system. The 1938 Act, which served as a model
for similar legislation elsewhere, contained other novel concepts such as "associated
trademarks", a consent to use system, a defensive mark system, and non claiming right
system.
6. Kinds of Trade Marks
There are several forms of a trademark based on their characteristics and features, the major division
of trademark types are done based on their categories. However, in India, a product mark, service
mark, collective mark, certification mark, shape mark, pattern mark and sound mark can be
registered as a trademark.
I. Product Mark
A product mark is similar to trademark only, but it is to identify the products or goods
instead of services. Herein the product is the unique selling feature of the company. To
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safeguard the product category and avoid any duplicity of the same a product mark is
registered.
Initially, the product marks are denoted by TM, which states that the mark is not yet
registered but in the process of registration. Once they are registered, they have to use ® to
give it recognition in the market. This applies to all types of trademarks.
So product marks are those that are attached to the goods and products specifically to give it
a distinct identity in the marketplace. Examples: Pepsi®, Maggi®, PHILIPS® etc.
II. Service Mark
This type of trademark is used to identify and distinguish the services rather than the
products provided by any enterprise. The service mark is for the intangible products which
include the action of helping or doing work for someone; it can also be a system supplying
public needs such as transport, communication or other utilities such as electricity, water,
etc. Service marks are also applicable for the routine maintenance or repair work.
The Service marks have their particular symbol which is SM and not TM. There is a very
thin line of difference between other trademark and service mark so many companies end
up having both. A very prominent example is McDonald's, which is a service mark for
restaurant services.
III. Collective Mark
As the name suggests these marks are linked with a group of people and not one single
product or service. These trademarks are primarily owned by an organization, institutes or
any association that is related to several members. The Collective marks are used by the
members to identify themselves with the level of quality or accuracy, also geographical
origin or other characteristics set by the organization they are related with.
Collective trademarks are "Badges of origin" which indicates the source of the individual. A
variety of traders uses not only individuals but the collective marks provided that the trader
belongs to that association.
To get a collective trademark certain regulations are to be fulfilled by specifying the
following information:
i. The name and seat of the organization,
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ii. The complete valid information contact details(name, address, etc.) about the
members under that association,
iii. The conditions of membership is also required to be mentioned,
iv. Mentioning the terms & conditions are applicable for using collective trademark,
v. The prescriptions relating to the control of the use of the collective trademark,
vi. The order of proceedings against unauthorized use of the collective trademark.
Examples are like "CA" device is used by the members who fall under Institute of
Chartered Accountants; another example is "CPA" which denotes members of the Society
of Certified Public Accountants.
IV. Certification Mark
The certification mark is created to show the standard of a company i.e. it is to show that a
trader's goods or services are certified as meeting particular standards. The issue of
certification mark states that the product has successfully passed a test that further says about
a certain standard that is reached by the product.
It assures the consumer that the manufacturers have gone through regular process of audit to
ensure the standard of production. The certification mark identifies the origin, material, and
most importantly, the quality of the goods and services that separates a particular
brand/company from the competitors in the market. These marks are used to access the
worth of labor in manufacturing goods and services.
In brief, Certification marks are used to define "standard" of goods and services.
Example: Woolmark, which is certified for the fabrics on clothing, Agmark, and ISI.
V. Shape marks
These marks can also be categorized in Trade Dress wherein, other than the logo, label, and
other identifiable symbols; a product can also be distinguished based on its packaging. An
example can be the Galliano liquor bottle.
By shape, it means the 3-D marks which are capable of making a difference in the goods
and services of one businessman from another. There is a new Trade Marks Ordinance
(Cap.559) which permits registration of such marks.
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To give you a more clear idea this is an example of shape mark which the Mogen David
wine bottle has registered for serving wine bottles: This is specifically known as trade dress
and the uniqueness can be protected under principles of trademark.
The competitors however intended to create confusion by labelling similar bottles but
Mogen David was able to stop them and revive its original distinctive nature to use it as a
trademark in the market.
To sum up shape trademarks, it has facilitated promotion of products and emerged into the
trademark type after the technological advancement of graphics and other forms of
animation technology. The graphical representation which is able to make a difference
amongst the products can be shape marked.
VI. Pattern Mark
The general meaning of pattern is a repetition of similar design, so it is a type of trademark
wherein the pattern is able to distinguish the product and services of one brand from another.
These are difficult to be distinguished and have high chances of infringement with near
similar designs. They at times, fail to make a distinction and the registration would not be
accepted unless they have evidence of distinctiveness.
A repeating pattern mark is any mark that is composed of a single element repeated to form
a combination of designs, numbers, letters, or other characters, forming a complete pattern
that is displayed on goods, on product packaging, the pattern can also be associated with the
material, advertising or provision of services.
In a repeating pattern mark, the repeating pattern/element is to be mentioned specifically in
the application for registering the trademark for avoiding any confusion. There are chances
the pattern mark can be rejected based on the below-written reasons:
i. Common or Widely Used Pattern
ii. Pattern Creates a Distinct Commercial Impression Apart from Other Matter
iii. Nature of Elements in the Repeating Pattern
iv. Industry Practice
v. It can be rejected because the mark fails to function as a source indicator.
VII. Sound Mark
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There has been an introduction of another form of trademark where the "mark" is of sound
graphics that distinguish the products and services of one from the other. Only those
notations of sound that are graphically represented can be registered as trademarks. Sound
marks being audio form of trademark is challenging but to figure out the accurate nature of
the sound mark based on its registration, there needs clarity in graphical representation of the
sound design.
The sound logo can comprise musical notes, words and sound graphics. The first Sound
Mark to be registered in India was Yahoo yodel followed by Nokia tune.

Unit 3

1. Registration of Trade Marks

I. Appointment of Registrar and other officers [Sec. 3]—
i. The Central Government may, by notification in the Official Gazette,
appoint a person to be known as the Controller-General of Patents,
Designs and Trade Marks, who shall be the Registrar of Trade Marks for
the purposes of this Act.
ii. The Central Government may appoint such other officers with such
designations as it thinks fit for the purpose of discharging, under the
superintendence and direction of the Registrar, such functions of the
Registrar under this Act as he may from time to time authorise them to
discharge.
II. Power of Registrar to withdraw or transfer cases, etc [Section 4]
Without prejudice to the generality of the provisions of sub-section (2) of section
3, the Registrar may, by order in writing and for reasons to be recorded therein,
withdraw any matter pending before an officer appointed under the said sub-
section (2) and deal with such matter himself either de novo or from the stage it
was so withdrawn or transfer the same to another officer so appointed who may,
subject to special directions in the order of transfer, proceed with the matter either
de novo or from the stage it was so transferred.
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III. Trade Marks Registry and offices thereof [Section 5]

i. For the purposes of this Act, there shall be a trade marks registry and the
Trade Marks Registry established under the Trade and Merchandise Marks
Act, 1958 (43 of 1958) shall be the Trade Marks Registry under this Act.
ii. The head office of the Trade Marks Registry shall be at such place as the
Central Government may specify, and for the purpose of facilitating the
registration of trade marks, there may be established at such places as the
Central Government may think fit branch offices of the Trade Marks
Registry.
iii. The Central Government may, by notification in the Official Gazette,
define the territorial limits within which an office of the Trade Marks
Registry may exercise its functions.
iv. There shall be a seal of the Trade Marks Registry.
IV. The Register of Trade Marks [Section 6]
i. For the purposes of this Act, a record called the Register of Trade Marks
shall be kept at the head office of the Trade Marks Registry, wherein shall
be entered all registered trade marks with the names, addresses and
description of the proprietors, notifications of assignment and
transmissions, the names, addresses and descriptions of registered users,
conditions, limitations and such other matter relating to registered trade
marks as may be prescribed.
ii. Notwithstanding anything contained in sub-section (1), it shall be lawful
for the Registrar to keep the records wholly or partly in computer floppies,
diskettes or in any other electronic form subject to such safeguards as may
be prescribed.
iii. Where such register is maintained wholly or partly on computer under
sub-section (2) any reference in this Act to entry in the register shall be
construed as the reference to any entry as maintained on computer or in
any other electronic form.
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iv. No notice of any trust, express or implied or constructive, shall be entered

in the register and no such notice shall be receivable by the Registrar.
v. The register shall be kept under the control and management of the
Registrar.
vi. There shall be kept at each branch office of the Trade Marks Registry a
copy of the register and such of the other documents mentioned in section
148 as the Central Government may, by notification in the Official
Gazette, direct.
vii. The Register of Trade Marks, both Part A and Part B, existing at the
commencement of this Act, shall be incorporated in and form part of the
register under this Act.
V. Registration in the case of honest concurrent use, etc [Section 12]
In the case of honest concurrent use or of other special circumstances which in the
opinion of the Registrar, make it proper so to do, he may permit the registration
by more than one proprietor of the trade marks which are identical or similar
(whether any such trade mark is already registered or not) in respect of the same
or similar goods or services, subject to such conditions and limitations, if any, as
the Registrar may think fit to impose.
VI. Prohibition of registration of names of chemical elements or international non-
proprietary names[ Section 13]
i. which is the commonly used and accepted name of any single chemical
element or any single chemical compound (as distinguished from a
mixture) in respect of a chemical substance or preparation, or
ii. which is declared by the World Health Organisation and notified in the
prescribed manner by the Registrar from time to time, as an international
non-proprietary name or which is deceptively similar to such name, shall
be registered as a trade mark and any such registration shall be deemed for
the purpose of section 57 to be an entry made in the register without
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sufficient cause or an entry wrongly remaining on the register, as the

circumstances may require.
VII. Use of names and representations of living persons or persons recently dead
[Section 14]
Where an application is made for the registration of a trade mark which falsely
suggests a connection with any living person, or a person whose death took place
within twenty years prior to the date of application for registration of the trade
mark, the Registrar may, before he proceeds with the application, require the
applicant to furnish him with the consent in writing of such living person or, as
the case may be, of the legal representative of the deceased person to the
connection appearing on the trade mark, and may refuse to proceed with the
application unless the applicant furnishes the registrar with such consent.
VIII. Registration of parts of trade marks and of trade marks as a series [Sec. 15]
i. Where the proprietor of a trade mark claims to be entitled to the exclusive
use of any part thereof separately, he may apply to register the whole and
the part as separate trade marks.
ii. Each such separate trade mark shall satisfy all the conditions applying to
and have all the incidents of, an independent trade mark.
iii. Where a person claiming to be the proprietor of several trade marks in
respect of the same or similar goods or services or description of goods or
description of services, which, while resembling each other in the material
particulars thereof, yet differ in respect of—
a. statement of the goods or services in relation to which they are
respectively used or proposed to be used; or
b. statement of number, price, quality or names of places; or
c. other matter of a non-distinctive character which does not substantially
affect the identity of the trade mark; or
d. colour, seeks to register those trade marks, they may be registered as a
series in one registration.
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2. Procedure
I. Application for registration [Section 18 ]
i. Any person claiming to be the proprietor of a trade mark used or proposed to
be used by him, who is desirous of registering it, shall apply in writing to the
Registrar in the prescribed manner for the registration of his trade mark.
ii. A single application may be made for registration of a trade mark for different
classes of goods and services and fee payable therefor shall be in respect of
each such class of goods or services.
iii. Every application under sub-section (1) shall be filed in the office of the Trade
Marks Registry within whose territorial limits the principal place of business
in India of the applicant or in the case of joint applicants the principal place of
business in India of the applicant whose name is first mentioned in the
application as having a place of business in India, is situate: Provided that
where the applicant or any of the joint applicants does not carry on business in
India, the application shall be filed in the office of the Trade Marks Registry
within whose territorial limits the place mentioned in the address for service in
India as disclosed in the application, is situate.
iv. Subject to the provisions of this Act, the Registrar may refuse the application
or may accept it absolutely or subject to such amendments, modifications,
conditions or limitations, if any, as he may think fit.
v. In the case of a refusal or conditional acceptance of an application, the
Registrar shall record in writing the grounds for such refusal or conditional
acceptance and the materials used by him in arriving at his decision.
II. Withdrawal of acceptance [Section 19 ]
Where, after the acceptance of an application for registration of a trade mark but
before its registration, the Registrar is satisfied—
a. that the application has been accepted in error; or
b. That in the circumstances of the case the trade mark should not be registered or
should be registered subject to conditions or limitations or to conditions additional
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to or different from the conditions or limitations subject to which the application

has been accepted, the Registrar may, after hearing the applicant if he so desires,
withdraw the acceptance and proceed as if the application had not been accepted.
III. Advertisement of application [Section 20]
i. When an application for registration of a trade mark has been accepted
whether absolutely or subject to conditions or limitations, the Registrar shall,
as soon as may be after acceptance, cause the application as accepted together
with the conditions or limitations, if any, subject to which it has been
accepted, to be advertised in the prescribed manner: Provided that the
Registrar may cause the application to be advertised before acceptance if it
relates to a trade mark to which sub-section (1) of section 9 and sub-sections
(1) and (2) of section 11 apply, or in any other case where it appears to him
that it is expedient by reason of any exceptional circumstances so to do.
ii. Where—
a. an application has been advertised before acceptance under sub-section
(1); or
b. after advertisement of an application,—
 an error in the application has been corrected; or
 the application has been permitted to be amended under section 22, the
Registrar may in his discretion cause the application to be advertised
again or in any case falling under clause (b) may, instead of causing
the application to be advertised again, notify in the prescribed manner
the correction or amendment made in the application.
IV. Opposition to registration [Section 21]
i. Any person may, within three months from the date of the advertisement or
re-advertisement of an application for registration or within such further
period, not exceeding one month in the aggregate, as the Registrar, on
application made to him in the prescribed manner and on payment of the
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prescribed fee, allows, give notice in writing in the prescribed manner to the
Registrar, of opposition to the registration.
ii. The Registrar shall serve a copy of the notice on the applicant for registration
and, within two months from the receipt by the applicant of such copy of the
notice of opposition, the applicant shall send to the Registrar in the prescribed
manner a counter-statement of the grounds on which he relies for his
application, and if he does not do so he shall be deemed to have abandoned his
application.
iii. If the applicant sends such counter-statement, the Registrar shall serve a copy
thereof on the person giving notice of opposition.
iv. Any evidence upon which the opponent and the applicant may rely shall be
submitted in the prescribed manner and within the prescribed time to the
Registrar, and the Registrar shall give an opportunity to them to be heard, if
they so desire.
v. The Registrar shall, after hearing the parties, if so required, and considering
the evidence, decide whether and subject to what conditions or limitations, if
any, the registration is to be permitted, and may take into account a ground of
objection whether relied upon by the opponent or not.
vi. Where a person giving notice of opposition or an applicant sending a counter-
statement after receipt of a copy of such notice neither resides nor carries on
business in India, the Registrar may require him to give security for the costs
of proceedings before him, and in default of such security being duly given,
may treat the opposition or application, as the case may be, as abandoned.
vii. The Registrar may, on request, permit correction of any error in, or any
amendment of, a notice of opposition or a counter-statement on such terms as
he thinks just.
V. Correction and amendment [Section 22]
The Registrar may, on such terms as he thinks just, at any time, whether before or
after acceptance of an application for registration under section 18, permit the
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correction of any error in or in connection with the application or permit an

amendment of the application: Provided that if an amendment is made to a single
application referred to in sub-section (2) of section 18 involving division of such
application into two or more applications, the date of making of the initial application
shall be deemed to be the date of making of the divided applications so divided.
3. Duration of the Trademark and its renewal
I. Duration, renewal, removal and restoration of registration [Section 25]
i. The registration of a trade mark, after the commencement of this Act, shall be
for a period of ten years, but may be renewed from time to time in accordance
with the provisions of this section.
ii. The Registrar shall, on application made by the registered proprietor of a trade
mark in the prescribed manner and within the prescribed period and subject to
payment of the prescribed fee, renew the registration of the trade mark for a
period of ten years from the date of expiration of the original registration or of
the last renewal of registration, as the case may be (which date is in this
section referred to as the expiration of the last registration).
iii. At the prescribed time before the expiration of the last registration of a trade
mark the Registrar shall send notice in the prescribed manner to the registered
proprietor of the date of expiration and the conditions as to payment of fees
and otherwise upon which a renewal of registration may be obtained, and, if at
the expiration of the time prescribed in that behalf those conditions have not
been duly complied with the Registrar may remove the trade mark from the
register: Provided that the Registrar shall not remove the trade mark from the
register if an application is made in the prescribed form and the prescribed fee
and surcharge is paid within six months from the expiration of the last
registration of the trade mark and shall renew the registration of the trade
mark for a period of ten years under sub-section (2).
iv. Where a trade mark has been removed from the register for non-payment of
the prescribed fee, the Registrar shall, after six months and within one year
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from the expiration of the last registration of the trade mark, on receipt of an
application in the prescribed form and on payment of the prescribed fee, if
satisfied that it is just so to do, restore the trade mark to the register and renew
the registration of the trade mark either generally or subject to such conditions
or limitations as he thinks fit to impose, for a period of ten years from the
expiration of the last registration.
II. Effect of removal from register for failure to pay fee for renewal [Section 26]
Where a trade mark has been removed from the register for failure to pay the fee
for renewal, it shall nevertheless, for the purpose of any application for the
registration of another trade mark during one year, next after the date of the
removal, be deemed to be a trade mark already on the register, unless the tribunal
is satisfied either—
a. that there has been no bona fide trade use of the trade mark which has been
removed during the two years immediately preceding its removal; or
b. that no deception or confusion would be likely to arise from the use of the trade
mark which is the subject of the application for registration by reason of any
previous use of the trade mark which has been removed.
III. No action for infringement of unregistered trade mark [Section 27]
i. No person shall be entitled to institute any proceeding to prevent, or to recover
damages for, the infringement of an unregistered trade mark.
ii. Nothing in this Act shall be deemed to affect rights of action against any
person for passing off goods or services as the goods of another person or as
services provided by another person, or the remedies in respect thereof.
4. Effect of Registration
I. No action for infringement of unregistered trade mark [ Section 27]
i. No person shall be entitled to institute to institute any proceeding to
prevent, or to recover damages for, the infringement of an unregistered
trade mark.
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ii. Nothing in this Act shall be deemed to affect rights of action against any
person for passing off goods or services as the goods of another person or
as services provided by another person, or the remedies in respect thereof.
II. Rights conferred by registration [Section 28]
i. Subject to the other provisions of this Act, the registration of a trade mark
shall, if valid, give to the registered proprietor of the trade mark the
exclusive right to the use of the trade mark in relation to the goods or
service in respect of which the trade mark is registered and to obtain relief
in respect of infringement of the trade mark in the manner provided by this
Act.
ii. The exclusive right to the use of a trade mark given under sub-section (1)
shall be subject to any conditions and limitations to which the registration
is subject.
iii. Where two or more persons are registered proprietors of trade marks,
which are identical with or nearly resemble reach other, the exclusive right
to the use of any of those trade marks shall not (except so far as their
respective rights are subject to any conditions or limitations entered on the
register) be deemed to have been acquired by any one of those persons as
against any other of those persons merely by registration of the trade
marks but each of those persons have otherwise the same rights as against
other persons (not being registered proprietor.
III. Registration to be prima facie evidence of validity [Section 31]
i. In all legal proceedings relating to a trade mark registered under this Act
(including applications under section 57), the original registration of the
trade mark and of all subsequent assignments and transmissions of the
trade mark shall be prima facie evidence of the validity thereof.
ii. In all legal proceeding as aforesaid a registered trade mark shall not be
held to be invalid on the ground that it was not a registrable trade mark
under section 9 except upon evidence of distinctiveness and that such
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evidence was not submitted to the Registrar before registration, if it is

proved that the trade mark had been so used by the registered proprietor or
his predecessor in title as to have become distinctive at the date of
registration.
IV. Protection of registration on ground of distinctiveness in certain cases
[Section 32]
Where a trade mark is registered in breach of sub-section (1) of section 9, it shall
not be declared invalid if, no consequence of the use which has been made it, it
has after registration and before commencement of any legal proceedings
challenging the validity of such registration, acquired a distinctive character in
relation to the goods or services for which it is registered.
V. Effect of acquiescence [Section 33]
i. Where the proprietor of an earlier trade mark has acquiesced for a
continuous period of five years in the use of a registered trade mark, being
aware of that use, he shall no longer be entitled on the basis of that earlier
trade mark-
(a) to apply for a declaration that the registration of the later trade mark is
invalid, or
(b) to oppose the use of the later trade mark in relation to the goods or
services in relation to which it has been so used, unless the registration
of the later trade mark was not applied in good faith.
ii. Where sub-section (1) applies, the proprietor of the later trade mark is not
entitled to oppose the use of the earlier trade mark, or as the case may be,
the exploitation of the earlier right, notwithstanding that the earlier mark
may no longer be invoked against his later trade mark.
VI. Saving for vested rights [Section 34]
Nothing in this Act shall entitle the proprietor or a registered user of registered
trade mark to interfere with or restrain the use by any person of a trade mark
identical with or nearly resembling it in relation to goods or services in relation to
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which that person or a predecessor in title of his has continuously used that trade
mark from a date prior-
(a) to the use of the first-mentioned trade mark in relation to those goods or
services be the proprietor or a predecessor in title of his, or
(b) to the date of registration of the first-mentioned trade mark in respect of those
goods or services in the name of the proprietor of a predecessor in title of his.
Whichever is the earlier, and the Registrar shall not refuse (on such use being
proved), to register the second mentioned trade mark by reason only of the
registration of the first mentioned trade mark.
VII. Saving for use of name, address or description of goods or services [Section
35] Nothing in this Act shall entitle the proprietor or a registered user of a
registered trade mark to interfere with any bona fide use by a person of his own
name or that of this place of business, or of the name, or of the name of the name
of the place of business, of any of his predecessors in business, or the use by any
person of any bona fide description of the character or quality of his goods or
services
5. Infringement of Trade Marks and remedies
I. Infringement of registered trade marks [Section 29]
i. A registered trade mark is infringed by a person who, not being a
registered proprietor or a person using by way of permitted use, uses in the
course of trade, a mark which is identical with, or deceptively similar to,
the trade mark in relation to goods or services in respect of which the trade
mark is registered and in such manner as to render the use of the mark
likely to be taken as being used as a trade mark.
ii. A registered trade mark is infringed by a person who, not being a
registered proprietor or a person using by way of permitted use, uses in the
course of trade, a mark which because of—
a. its identity with the registered trade mark and the similarity of the
goods or services covered by such registered trade mark; or
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b. its similarity to the registered trade mark and the identity or similarity
of the goods or services covered by such registered trade mark; or
c. its identity with the registered trade mark and the identity of the goods
or services covered by such registered trade mark, is likely to cause
confusion on the part of the public, or which is likely to have an
association with the registered trade mark.
iii. In any case falling under clause (c) of sub-section (2), the court shall
presume that it is likely to cause confusion on the part of the public.
iv. A registered trade mark is infringed by a person who, not being a
registered proprietor or a person using by way of permitted use, uses in the
course of trade, a mark which—
a. is identical with or similar to the registered trade mark; and
b. is used in relation to goods or services which are not similar to those
for which the trade mark is registered; and
c. the registered trade mark has a reputation in India and the use of the
mark without due cause takes unfair advantage of or is detrimental to,
the distinctive character or repute of the registered trade mark.
v. A registered trade mark is infringed by a person if he uses such registered
trade mark, as his trade name or part of his trade name, or name of his
business concern or part of the name, of his business concern dealing in
goods or services in respect of which the trade mark is registered.
vi. For the purposes of this section, a person uses a registered mark, if, in
particular, he—
a. affixes it to goods or the packaging thereof;
b. offers or exposes goods for sale, puts them on the market, or stocks
them for those purposes under the registered trade mark, or offers or
supplies services under the registered trade mark;
c. imports or exports goods under the mark; or
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d. uses the registered trade mark on business papers or in advertising.

vii. A registered trade mark is infringed by a person who applies such
registered trade mark to a material intended to be used for labelling or
packaging goods, as a business paper, or for advertising goods or services,
provided such person, when he applied the mark, knew or had reason to
believe that the application of the mark was not duly authorised by the
proprietor or a licensee.
viii. A registered trade mark is infringed by any advertising of that trade mark
if such advertising—
a. takes unfair advantage of and is contrary to honest practices in
industrial or commercial matters; or
b. is detrimental to its distinctive character; or
c. is against the reputation of the trade mark.
ix.  Where the distinctive elements of a registered trade mark consist of or
include words, the trade mark may be infringed by the spoken use of those
words as well as by their visual representation and reference in this section
to the use of a mark shall be construed accordingly.
6. Transfer and transmission of trade Marks
A registered trade mark can be assigned or transmitted whether with or without the
goodwill of the business concerned. Under the act of 1999 an unregistered trade mark is
assignable or transmissible with or without the goodwill of the business concerned.
Certain restrictions on assignment or transmission are imposed to prevent the creation of
multiple exclusive rights. Where the assignment is without the goodwill of business,
special conditions are imposed. Associated trade marks can be assigned or transmitted
only as whole. Certification trade marks cannot be assigned or transmitted without the
consent of the registrar of trade marks.
An assignment of a trade mark must in writing. No specific form has been prescribed.
Transmission means transmission by operation of law, devolution on the personeal
representative of a deceased person and any other mode of transfer not being an
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assignment. The law relating to transmission of a trademark is the same as that for
assignment.
7. Registered user of trade marks [Section 48]
I. Subject to the provisions of section 49, a person other than the registered
proprietor of a trade mark may be registered as a registered user thereof in respect
of any or all of the goods or services in respect of which the trade mark is
registered.
II. The permitted use of a trade mark shall be deemed to be used by the proprietor
thereof, and shall be deemed not to be used by a person other than the proprietor,
for the purposes of section 47 or for any other purpose for which such use is
material under this Act or any other law.

Unit 4

1. Certification of trade Marks

There is a species of trade mark called certificarion trade mark whose function is not to
indicate trade origin as an ordinary trade mark but to indicate that the goods bearing the
mark have been certified by the proprietor of the mark as to certain characteristics of the
goods like geographical origin, ingredient and so on.
2. Textile goods and Trade marks
I. Textile goods [Section 79]
The Central Government may prescribe classes of goods (in this Chapter referred
to as textile goods) to the trade marks used in relation to which the provisions of
this Chapter shall apply; and subject to the said provisions, the other provisions of
this Act shall apply to such trade marks as they apply to trade marks used in
relation to other classes of goods.
II. Restriction on registration of textile goods [Section 80]
i. In respect of textile goods being piece goods—
a. no mark consisting of a line heading alone shall be registrable as a
trade mark;
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b. a line heading shall not be deemed to be capable of distinguishing;

c. the registration of trade mark shall not give any exclusive right to the
use of a line heading.
ii. In respect of any textile goods, the registration of letters or numerals, or
any combination thereof, shall be subject to such conditions and
restrictions as may be prescribed.
III. Stamping of piece goods, cotton yarn and thread [Section 81]
i. Piece goods, such as are ordinarily sold by length or by the piece, which
have been manufactured, bleached, dyed, printed or finished in premises
which are a factory, as defined in the Factories Act, 1948 (63 of 1948),
shall not be removed for sale from the last of such premises in which they
underwent any of the said processes without having conspicuously
stamped in international form of Indian numerals on each piece the length
thereof in standard yards, or in standard yards and a fraction of such a
yard, or in standard metres or in standard metres and a fraction of such a
metre, according to the real length of the piece, and, except when the
goods are sold from the factory for export from India, without being
conspicuously marked on each piece with the name of the manufacturer or
of the occupier of the premises in which the piece was finally processed or
of the wholesale purchaser in India of the piece.
ii. Cotton yarn such as is ordinarily sold in bundles, and cotton thread,
namely, sewing, darning, crochet or handicraft thread, which have been
manufactured, bleached, dyed or finished in any premises not exempted by
the rules made under section 82 shall not be removed for sale from those
premises unless, in accordance with the said rules in the case of yarn—
a. the bundles are conspicuously marked with an indication of the weight
of yarn in English or the metric system in each bundles; and
b. the count of the yarn contained in the bundles and in the case of thread
each unit is conspicuously marked with the length or weight of thread
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in the unit and in such other manner as may be required by the said
rules; and
c. except where the goods are sold from the premises for export from
India, unless each bundle or unit is conspicuously marked with the
name of the manufacturer or of the wholesale purchaser in India of the
goods: Provided that the rules made under section 82 shall exempt all
premises where the work is done by members of one family with or
without the assistance of not more than ten other employees, and all
premises controlled by a co-operative society where not more than
twenty workers are employed in the premises.
3. Offence and Penalties
I. Penalty for applying false trade marks, trade descriptions, etc [Section 103]
Any person who—
i. falsifies any trade mark; or
ii. falsely applies to goods or services any trade mark; or
iii. makes, disposes of, or has in his possession, any die, block, machine, plate
or other instrument for the purpose of falsifying or of being used for
falsifying, a trade mark; or
iv. applies any false trade description to goods or services; or
II. Penalty for selling goods or providing services to which false trade mark or false
trade description is applied [Section104]
Any person who sells, lets for hire or exposes for sale, or hires or has in his
possession for sale, goods or things, or provides or hires services, to which any
false trade mark or false trade description is applied or which, being required
under section 139 to have applied to them an indication of the country or place in
which they were made or produced or the name and address of the manufacturer,
or person for whom the goods are manufactured or services provided, as the case
may be, are without the indications so required, shall, unless he proves.
III. Enhanced penalty on second or subsequent conviction [Section 105]
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Whoever having already been convicted of an offence under section 103 or

section 104 is again convicted of any such offence shall be punishable for the
second and for every subsequent offence, with imprisonment for a term which
shall not be less than one year but which may extend to three years and with fine
which shall not be less than one lakh rupees but which may extend to two lakh
rupees: Provided that the court may, for adequate and special reasons to be
mentioned in the judgment, impose a sentence of imprisonment for a term of less
than one year or a fine of less than one lakh rupees: Provided further that for the
purposes of this section, no cognizance shall be taken of any conviction made
before the commencement of this Act.
IV. Penalty for removing piece goods, etc., contrary to section 81 [Section 106] If any
person removes or attempts to remove or causes or attempts to cause to be
removed for sale from any premises referred to in section 81 or sells or exposes
for sale or has in his possession for sale or for any purpose of trade or
manufacture piece goods or cotton yarn or cotton thread which is not marked as
required by that section, every such piece and every such bundle of yarn and all
such thread and everything used for the packing thereof shall be forfeited to
Government and such person shall be punishable with fine which may extend to
one thousand rupees.
V. Penalty for falsely representing a trade mark as registered [Section 107]
No person shall make any representation
i. with respect to a mark, not being a registered trade mark, to the effect that
it is a registered trade mark; or
ii. with respect to a part of a registered trade mark, not being a part separately
registered as a trade mark, to the effect that it is separately registered as a
trade mark; or
iii. to the effect that a registered trade mark is registered in respect of any
goods or services in respect of which it is not in fact registered; or
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iv. to the effect that registration of a trade mark gives an exclusive right to the
use thereof in any circumstances in which, having regard to limitation
entered on the register, the registration does not in fact give that right.
VI. Penalty for improperly describing a place of business as connected with the Trade
Marks Office [Section 108]
If any person uses on his place of business, or on any document issued by him, or
otherwise, words which would reasonably lead to the belief that his place of
business is, or is officially connected with, the Trade Marks Office, he shall be
punishable with imprisonment for a term which may extend to two years, or with
fine, or with both.
VII. Penalty for falsification of entries in the register [Section 109]
If any person makes, or causes to be made, a false entry in the register, or a
writing falsely purporting to be a copy of an entry in the register, or produces or
tenders or causes to be produced or tendered, in evidence any such writing,
knowing the entry or writing to be false, he shall be punishable with
imprisonment for a term which may extend to two years, or with fine, or with
both.
4. Law relating to protection of Plant Breeders Rights
Plant breeders' rights (PBR), also known as plant variety rights (PVR), are rights granted
to the breeder of a new variety of plant that give the breeder exclusive control over the
propagating material (including seed, cuttings, divisions, tissue culture) and harvested
material (cut flowers, fruit, foliage) of a new variety for a number of years.
With these rights, the breeder can choose to become the exclusive marketer of the variety,
or to license the variety to others. In order to qualify for these exclusive rights, a variety
must be new, distinct, uniform, and stable. A variety is:
i. new if it has not been commercialized for more than one year in the country of
protection;
ii. distinct if it differs from all other known varieties by one or more important
botanical characteristics, such as height, maturity, color, etc.;
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iii. uniform if the plant characteristics are consistent from plant to plant within the
variety;
iv. stable if the plant characteristics are genetically fixed and therefore remain the
same from generation to generation, or after a cycle of reproduction in the case
of hybrid varieties.
The breeder must also give the variety an acceptable "denomination", which becomes its
generic name and must be used by anyone who markets the variety.
Typically, plant variety rights are granted by national offices after examination. Seed is
submitted to the plant variety office, who grow it for one or more seasons, to check that it
is distinct, stable, and uniform. If these tests are passed, exclusive rights are granted for a
specified period (typically 20/25 years, or 25/30 years for trees and vines). Annual
renewal fees are required to maintain the rights.
Breeders can bring suit to enforce their rights and can recover damages for infringement.
Plant breeders' rights contain exemptions from infringement that are not recognized under
patent law. Commonly, there is an exemption for farm-saved seed. Farmers may store
this production in their own bins for their own use as seed, but this does not necessarily
extend to brown-bag sales of seed. Further sales for propagation purposes are not allowed
without the written approval of the breeder. There is also a breeders' exemption (research
exemption in the 1991 Act) that allows breeders to use protected varieties as sources of
initial variation to create new varieties of plants (1978 Act), or for other experimental
purposes (1991 Act). There is also a provision for compulsory licensing to assure public
access to protected varieties if the national interest requires it and the breeder is unable to
meet the demand.
There is tension over the relationship between patent rights and plant breeder's rights.
There has been litigation in Australia, the United States, and Canada over the overlap
between such rights. Each of these cases was decided on the principle that patents and
plant breeders' rights were overlapping and not mutually exclusive. Thus, the exemptions
from infringement of plant breeders' rights, such as the saved seed exemption, do not
create corresponding exemptions from infringement of the patents covering the same
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plants. Likewise, acts that infringe the plant breeders' rights, such as exportation of the
variety, would not necessarily infringe a patent on the variety, which only allows the
patent owner to prohibit making, using, or selling the patented invention.
5.
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Unit 5

1. Geographical Indications of Goods

The Geographical Indications of Goods (Registration and Protection) Act, 1999 (GI Act)
is a sui generis Act of the Parliament of India for protection of geographical indications
in India. India, as a member of the World Trade Organization (WTO), enacted the Act to
comply with the Agreement on Trade-Related Aspects of Intellectual Property Rights.
The GI tag ensures that none other than those registered as authorised users (or at least
those residing inside the geographic territory) are allowed to use the popular product
name. Darjeeling tea became the first GI tagged product in India, in 2004–05, since then
323 goods had been added to the list as of August 2018.
I. Geographical Indication
According to section 2 (1)(e) of the Act, Geographical indication has been defined
as "an indication which identifies such goods as agricultural goods, natural goods
or manufactured goods as originating, or manufactured in the territory of a
country, or a region or locality in that territory, where a given quality, reputation
or other characteristic of such goods is essentially attributable to its geographical
origin and in case where such goods are manufactured goods one of the activities
of either the production or of processing or preparation of the goods concerned
takes place in such territory, region or locality, as the case may be.
Some of the registered geographical indications includes, agricultural goods
like Darjeeling tea, Malabar Pepper, Bangalore Blue Grapes, manufactured goods
like Pochampalli Ikat, Kancheepuram Silk, solapuri chadars Bagh Prints,
Madhubani paintings etc. The complete list is available at List of Geographical
Indications in India.
II. Registration Process
i. An application for registration must be made before the Registrar of
Geographical Indications by any association of persons or producers or
any organization or authority established by or under any law for the time
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being in force representing the interest of the producers of the concerned

goods.
ii. The application must be made in an appropriate form containing the
nature, quality, reputation or other characteristics of which are due
exclusively or essentially to the geographical environment, manufacturing
process, natural and human factors, map of territory of production,
appearance of geographical indication (figurative or words), list of
producers, along with prescribed fees.
iii. The examiner will make a preliminary scrutiny for deficiencies, in case of
deficiencies, the applicant have to remedy it within a period of one month
from the date of communication.
iv. The Registrar may accept, partially accept or refuse the application. In
case of refusal, the Registrar will give written grounds for non acceptance.
The applicant must within two months file reply. In case of re-refusal, the
applicant can make an appeal within one month of such decision.
v. Registrar shall, within three months of acceptance may advertise the
application in the GI Journal.
vi. If there is no opposition, the Registrar will grant a certificate of
registration to the applicant and authorised users.
III. Exclusion
Under Section 9 of the Act, the following indications cannot be registered:
i. which would likely to deceive or cause confusion
ii. which would be contrary to any law for the time being in force; or
iii. which comprises or contains scandalous or obscene matter; or
iv. which comprise or contains any matter likely to hurt the religious
susceptibilities of any class or section of the citizens of India; or
v. which would otherwise be disentitled to protection in a court; or
vi. generic names
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vii. falsely represent to the persons that the goods originate in another
territory, region or locality, as the case may be
IV. Effect of Registration and Infringement
Registration of a GI gives its owner and the authorised users the exclusive right to
use the indications on the good in which it is registered. Further, registration gives
right to institution of suit against infringement and recovery of damages for such
infringement. Infringement can be caused by use of the GI on such goods which
indicates that such goods originate in such place other than its true place of origin
or due to unfair competition. However, in case of non-registered GIs, a case
of passing off can be instituted. Registration acts as a prima facie evidence of
validity of the indication and ownership. The registration cannot be transferred,
mortgaged, assigned or licensed, except in case of inheritance of the mark upon
death of an authorised user.
Any person who falsely applies or falsifies any geographical indication, tampers
the origin of a good, make or have in possession of dye, blocks, machines to use
in falsification of GI may be punished 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 lakhs rupees. In case of second and for every
subsequent offence, a person can be punished with imprisonment for a term which
shall not be less than one year but which may extend to three years and with fine
which shall not be less than one lakh rupees but which may extend to two lakh
rupees. However, the judge may under certain condition may reduce the sentence,
and reasons for reduction of punishment must be written in the judgment. Other
offences includes, falsely represent a GI to be registered, falsification of entries in
register, falsely representing a place to be connected with GI Registry.
2. Bio-diversiaty Act
The Biological Diversity Act, 2002 is an Act of the Parliament of India for preservation
of biological diversity in India, and provides mechanism for equitable sharing of benefits
arising out of the use of traditional biological resources and knowledge. The Act was
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enacted to meet the obligations under Convention on Biological Diversity (CBD), to

which India is a party.
Biodiversity has been defined under Section 2(b) of the Act as "the variability among
living organisms from all sources and the ecological complexes of which they are part,
and includes diversity within species or between species and of eco-systems". The Act
also defines, Biological resources as "plants, animals and micro-organisms or parts
thereof, their genetic material and by-products (excluding value added products) with
actual or potential use or value, but does not include human genetic material."
The National Biodiversity Authority (NBA) is a statutory autonomous body,
headquartered in Chennai, under the Ministry of Environment and Forests, Government
of India established in 2003 to implement the provisions under the Act. State Biodiversity
Boards (SBB) has been created in 29 States along with 31,574 Biological management
committees (for each local body) across India. following are the Functions of Board
i. Regulation of acts prohibited under the Act
ii. Advise the Government on conservation of biodiversity
iii. Advise the Government on selection of biological heritage sites
iv. Take appropriate steps to oppose grant of intellectual property rights in foreign
countries, arising from the use of biological resources or associated traditional
knowledge.
If a person, violates the regulatory provisions he will be "punishable with imprisonment
for a term which may extend to five years, or with fine which may extend to ten lakh
rupees and where the damage caused exceeds ten lakh rupees such fine may
commensurate with the damage caused, or with both." Any offence under this Act is non-
bailable and cognizable.
3. Trade in Intellectual Property
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is
an international legal agreement between all the member nations of the World Trade
Organization (WTO). It sets down minimum standards for the regulation by national
governments of many forms of intellectual property (IP) as applied to nationals of other
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WTO member nations. TRIPS was negotiated at the end of the Uruguay Round of
the General Agreement on Tariffs and Trade (GATT) between 1989 and 1990 and is
administered by the WTO.
The TRIPS agreement introduced intellectual property law into the multilateral trading
system for the first time and remains the most comprehensive multilateral agreement on
intellectual property to date. In 2001, developing countries, concerned that developed
countries were insisting on an overly narrow reading of TRIPS, initiated a round of talks
that resulted in the Doha Declaration. The Doha declaration is a WTO statement that
clarifies the scope of TRIPS, stating for example that TRIPS can and should be
interpreted in light of the goal "to promote access to medicines for all."
Specifically, TRIPS requires WTO members to provide copyright rights, covering
authors and other copyright holders, as well as holders of related rights, namely
performers, sound recording producers and broadcasting organisations; geographical
indications; industrial designs; integrated circuit layout-designs; patents; new plant
varieties; trademarks; trade names and undisclosed or confidential information. TRIPS
also specify enforcement procedures, remedies, and dispute resolution procedures.
Protection and enforcement of all intellectual property rights shall meet the objectives to
contribute to the promotion of technological innovation and to the transfer and
dissemination of technology, to the mutual advantage of producers and users of
technological knowledge and in a manner conducive to social and economic welfare, and
to a balance of rights and obligations.