UNIT -1

Intellectual property

Intellectual property rights (IPR) are the legal privileges granted to the inventor or creator to safeguard their
intellectual work (in the arts, sciences, literature, etc.) for a specific period of time. These legal rights grant the
inventor or creator, or his assignee, the sole right to fully exploit their invention or creation for a specific amount of
time. These Intellectual property rights are outlined in Article 27 of the Universal Declaration of Human Rights,
which grants the right to gain protection for one's material and moral interests as a result of the authorship of works
of science, literature, or the arts.
The significant body that oversees the global protection of IPRs is the World Intellectual Property Organisation
(WIPO). It oversees the first international treaties to acknowledge the significance of intellectual property, which
were the Paris Convention for the Protection of Industrial Property (1883) and the Berne Convention for the
Protection of Literary and Artistic Works (1886).
Objectives of Intellectual Property Rights
The term "intellectual property" (IP) refers to any original work of the human mind, including those in the arts,
sciences, literature, technology, or other fields. Intellectual property rights are granted by considering the following
objectives:
● Allowing people to profit financially or gain popularity from their inventions and creations
● to promote an environment where creativity and innovation can thrive by striking a balance between the
interests of innovators and the larger public interest
● To protect traditional knowledge
Types of Intellectual Property Rights
Traditionally, the two main categories of intellectual property rights are copyright and rights associated with
copyright and industrial property. Industrial property includes trademarks, geographical indications, industrial
designs, and trade secrets.
Patent in Intellectual Property Rights
When an invention satisfies the requirements of general novelty, non-obviousness, and industrial or commercial
application, a patent is granted.
● Products as well as processes are eligible for patent protection.
● A patent gives the owner the authority to decide whether or how others may use an invention.
● In exchange for this privilege, the holder of the patent publishes technical details about the invention in the
patent document for public consumption.
Copyrights
The legal term "copyright" is defined as the ownership rights of authors and artists over their creative works.
● The works protected by copyright can include computer programs, databases, advertisements, maps, and
technical drawings, in addition to books, music, paintings, sculptures, and films.
● Copyright protects the author's rights to literary and artistic works for at least 50 years after the owner's
death.
● The rights of performers (such as actors, singers, and musicians), phonogram producers, and broadcasting
organisations are all safeguarded by copyright and related rights.
Trademarks
A trademark can be defined as a symbol that can be used to separate the products or services of one company from
those of another company.
● Trademarks have existed since the earliest days when artisans would sign or "mark" their creations.
Industrial Designs
Industrial design represents the decorative or aesthetic component of an object. The designs can include two-
dimensional elements like patterns, lines, or colours and three-dimensional elements like the shape or surface of an
object.
Geographical Indications
Geographical indications and appellations of origin are labels applied to products that have a particular geographical
origin and that have qualities, a reputation, or other characteristics that can primarily be linked to that location of
origin.
● The name of the location where the goods were made is most frequently included in a geographical
indication.
Trade Secrets
Trade secrets are intellectual property rights on private information (about a product, like Pepsi) that can be licensed
or sold.
● It is considered an unfair practice and a breach of trade secret protection when others obtain, use, or
disclose such secret information without authorization in a way that is inconsistent with honest commercial
practices.
International Bodies/Conventions on Intellectual Property Rights
To safeguard intellectual property rights, the international community has come up with various conventions and
established bodies, as listed below.
World Intellectual Property Organisation (WIPO)
The promotion of the global protection of intellectual property rights is the responsibility of the WIPO. It also
supervises the following treaties and conventions.
● Paris Convention for the Protection of Industrial Property (1883): In its broadest sense, this convention
covers all forms of industrial property, including patents, trademarks, industrial designs, utility models,
service marks, trade names, geographical indications, and the stifling of unfair competition.
○ It was the first significant action taken to assist creators in making sure that their intellectual
property was protected in other nations.
○ The provision of national treatment was established by this convention.
● Berne Convention for the Protection of Literary and Artistic Works (1886): It is a convention that governs
copyright internationally. The Convention covers the rights of authors as well as the protection of works.
● Budapest Treaty: On the International Recognition of the Deposit of Microorganisms for the Purposes of
Patent Procedure.
● The Marrakesh Treaty, which is overseen by WIPO, facilitates the creation and international transfer of
books that have been specially adapted for those who are blind or have visual impairments.
○ It accomplishes this by defining a set of restrictions and exclusions from conventional copyright
law.
● Patent Cooperation Treaty (1970): It offers a standardised process for submitting patent applications to
safeguard inventions in all of its signatory states.
○ It focuses on making the world accessible, streamlining the process of meeting various formality
requirements, delaying the significant costs related to international patent protection, and
providing a solid basis for patenting decisions.
TRIPS (Trade Related Intellectual Property Rights) Agreement, 1994
The TRIPS Agreement is one of the most significant agreements of the WTO.
● At a broad level, it covers
○ Copyright and related rights (the rights of performers, record companies, and broadcasting
organisations);
○ trademarks, including service marks;
○ geographical indications, such as appellations of origin;
○ industrial designs;
○ patents, which protect novel plant varieties;
○ integrated circuit layout-designs; and undisclosed information, such as trade secrets and test data.
● The agreement's three primary characteristics are:
○ Standards: The TRIPS Agreement specifies the minimum standards of protection that each
member must offer with regard to each of the primary intellectual property domains that it covers.
 ■ The subject matter to be protected, the rights to be granted, the permissible changes from
those rights, and the minimum length of protection are all defined as the essential
components of protection.
○ Enforcement: Intellectual property rights enforcement on a domestic level is addressed by
enforcement procedures and remedies.
■ The agreement establishes a few broad guidelines that apply to every IPR enforcement
process.
■ It also includes detailed provisions on criminal procedures, special requirements related
to border measures, interim measures, and civil and administrative procedures and
remedies.
○ Dispute settlement: According to the Agreement, differences amongst WTO Members regarding
observance of the TRIPS obligations are resolved through the WTO's dispute resolution processes.
● Furthermore, the agreement stipulates fundamental concepts like national and most-favored-nation
treatment.
Intellectual Property Rights in India
Since the inception of intellectual property rights, India has been committed to their preservation in domestic as well
as international frameworks.
● KAPILA: A systematic, comprehensive effort called "KAPILA, Kalam Programme for IP Literacy and
Awareness" addresses the current barriers in the innovation ecosystem, particularly in our HEIs.
○ This programme will raise appropriate awareness among students and faculty of higher education
institutions about the value of filing IP, the processes involved, and the laws governing IP filing in
India and worldwide.
● International membership:
○ Being a member of the World Trade Organisation, India is committed to the Agreement on Trade-
Related Aspects of Intellectual Property (TRIPS Agreement).
○ India is also a member of the World Intellectual Property Organisation.
Legal Provisions
The legal provisions for various types of intellectual property rights are:
● Indian Patents Act: The law that oversees patents in India is the Patents Act of 1970.
○ The Indian Patent Act is administered by the Office of the Controller General of Patents, Designs,
and Trade Marks, or CGPDTM.
○ Its major amendment was in 2005.
● Design Act of 2000: The act's protections support innovation and serve to safeguard both manufacturers'
and consumers' interests.
● Trademarks Act of 1999 and its amendment of 2010: It has unique clauses associated with trade mark
registration internationally. Within eighteen months, an international application may be filed in India to
extend protection to the specified nations.
● The Geographical Indications of Goods (Registration and Protection) Act, 1999: A law to improve the
protection and registration of geographical indications associated with products.
○ Also, there are various guidelines related to patents, trademarks and geographical indications.
Cell for IPR Promotion and Management (CIPAM)
CIPAM was established in order to advance the implementation of the National Intellectual Property Rights (IPR)
Policy 2016.
● It operates under the Department for Promotion of Industry and Internal Trade (DPIIT) ensures targeted
action on IPR-related issues and attends to the policy's seven stated objectives.
● In addition to taking action to promote IPR awareness, commercialization, and enforcement, CIPAM helps
to simplify and streamline IP processes.
National IPR Policy 2016
It unifies all IPRs on one platform. It establishes a formal system for implementation, oversight, and evaluation.
Importantly, it also seeks to incorporate and modify best practices from around the world for the Indian context.
● In addition, it gives communities more power to advance their traditional knowledge, regulate its uses, and
profit from its commercial exploitation.
Advantages of Intellectual Property Rights
The main advantage of intellectual property rights (IPRs) is to encourage and protect the creation, distribution, and
offering of new goods and services that are based on the development and use of inventions, trademarks, designs,
creative works, and other intangible assets.
● Economic growth: Giving statutory expression to the creators' economic rights and fostering fair trade,
intellectual property rights can support economic growth by fostering economic development.
○ IPRs can generate income not only from direct marketing but also by licencing them to third
parties.
● Fostering of culture: Copyright allows authors, performers, producers, and other creators to receive an
economic reward for their works that enrich cultural heritage, enhance cultural diversity, and benefit
society as a whole. These creative industries include publishing, music, and film.
● Technical information dissemination: Any member of the public, including researchers, can use patent
information even when a company, university, or research institution does not intend to use its own
patented inventions.
● Impetus to fair competition: By allowing consumers to make informed decisions about various products
and services, the protection of IPRs such as distinctive signs aims to encourage and ensure fair competition
as well as to protect consumers.
● Research and development: IPRs promote R and D activities due to the financial benefits indirectly
provided to the creators. These R and D facilitate two things:
○ It facilitates the innovations and production of new technology, like a new formula of drugs
against any life-threatening disease.
○ This new technology/formula, after the patent period, helps a large population (for example,
through the development of generics). Thus, it serves the social purpose of IPRs.
● "Open source" is dependent on IPR: In industries like software, open source mechanisms like General
Public Licences (GPLs) are common.
○ With no contractual obligation to use a single vendor, its benefits include reduced startup costs,
quicker project launches, quicker iterations, more adaptable software development processes,
strong community-driven support, and simpler licence management.
○ It's important to note that a typical GPL actually depends on IPRs since it is generally a copyright
licence that is only valid as long as certain requirements are met.
● Collateral used to secure financing: IPRs, which are intangible assets, frequently aid small and medium
enterprises (including start-ups) in their efforts to persuade outside parties to provide them with financing
(such as investing equity or granting loans).
○ The financial industry, particularly knowledge-intensive SMEs, depends heavily on the valuation
of intangible assets, such as patents.
Disadvantages of Intellectual Property Rights
Here are a few disadvantages to intellectual property rights:
● Extra Charges for Creators: It might be a bit costly to obtain protection for the first time, especially if the
product is complex and includes methods, designs, and processes.
● Piracy: Sometimes it becomes difficult to stop someone from copying the inventory work, even after
obtaining IP protection. It becomes disadvantageous for the original creator of the patent.
● Decreasing Quality: As time goes on, the quality of intellectual property degrades along with the rights to
it.
 ● Worldwide Inequities: The laws governing intellectual property are sometimes different. Different IP laws
in different nations can result in unequal access to innovations and technologies, which disproportionately
affects and impedes the development of developing nations.
● Costly nature of patented products: Due to high prices for patent registration, research and development,
and evergreening of patents, the price of patented products like pharmaceuticals has skyrocketed. It harms
the interests of the general public, as they rely on these drugs.
Issues regarding Intellectual Property Rights in India
With advantages and disadvantages regarding intellectual property in India, the issues that persist are,
● Evergreening: The Indian Patent Act 1970 (as amended in 2005) prohibits the granting of patents for
inventions involving new forms of known substances unless there are significant differences in the
substance's properties regarding efficacy.
○ This indicates that the Indian Patent Act forbids the evergreening of patents. This has caused
issues for the pharmaceutical companies.
● Compulsory licensing: This is when the government authorises organisations to make, sell, import, or use a
patented invention without the patent owner's consent. CL is covered by the Indian Patents Act.
○ For foreign investors who bring technology, compulsory licencing presents a challenge because
they worry that CL will be abused to copy their products.
Geographical Indications of Goods (Registration and Protection) Act, 1999
What do we mean by ‘Geographical Indication’?
Under the Section 2 (e) of the G.I. Act, 1999 defines “Geographical Indication, in relation to goods, means an
indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or
manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation
or other characteristics of such goods is essentially attributable to its geographical origin and in a 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.”
Why G.I. Act, 1999 got introduced in India?
Under the TRIPS (Trade-Related Aspects of Intellectual Property), countries do not have a mandatory obligation to
protect a geographical indication if that geographical indication is not covered within the country of its origin.
Moreover, India did not have any laws before 1999 related to geographical indication which could protect the
interest of the producers of G.I. goods.
So what made India introduce the Geographical Indications of Goods (Registration and Protection) Act, 1999? It
was due to three controversial cases related to neem, turmeric, and basmati.
In the case of Neem, a US Company, WR Grace & Co. was granted patents for storage process and extraction. The
Indian Government filed a complaint against WR Grace & Co. with the U.S. Patent Office accusing WR Grace &
Co. of copying an Indian Invention. However, later on, they realised that WR Grace & Co. had created a new
invention for the neem extraction process. The Patent was not based on traditional Indian knowledge, so the Indian
Government withdrew its complaint.
In March 1995, in the case of turmeric, a US Patent was granted to two NRI’s for turmeric to be used as a wound-
healing agent. CSIR opposed this Patent at the USPTO based on “Prior Art”, it claimed that turmeric had been used
for thousand years for treating wounds and rashes in India, and hence it was not a new invention. CSIR showed an
antique Sanskrit manuscript and a paper published in 1953 in the Indian Medical Association Journal as
documentary evidence. The U.S. patent office upheld the objections and cancelled the Patent.
In the case of basmati, a US Patent granted to Texas-based Rice Tec Inc claimed that their invention is related to a
new breed of rice plants and grains. The USPTO approved the Patent on “Basmati Rice Line and Grains” in 997.
After three years of examination and accepted 20 claims put forward by Rice Tec Inc., India opposed the Patent and
challenged it. A team of agricultural scientists presented various proofs and supporting information to establish
prior art in this area in India. Evidence against the claim was so strong that the company withdrew 15 claims, and
only five claims out of 20 claims of the company RiceTec Inc. survived Indian challenges. The patent granted to
new hybrid variants that have nothing to do with basmati.
After these three cases, the Indian government, to prevent unfair exploitation, realised the importance of having
comprehensive legislation for the registration and providing adequate legal protection to geographical indications.
The Parliament enacted the Geographical Indications of Goods (Registration and Protection) Act, 1999, which came
into power with effect from 15th September 2003.
The present G.I. is governed by the Geographical Indications of Goods (Registration & Protection) Act, 1999, and
the Geographical Indication of Goods (Regulation and Protection) Rules, 2002.
Objectives of the G.I. Act,1999
The objectives of the G.I. Act 1999 is threefold,
1. It is to prohibit unauthorised persons from misusing geographical indications and to protect consumers
from deception,
2. Particular law governing the geographical indication of goods in India which could well enough to cover
the concern of yielders of such goods, and
3. To encourage and promote exports of the goods bearing India Geographical Indication.
Features of G.I. Act, 1999
1. Definitions and interpretations of various essential terms like “geographical indication”, “goods”,
“producers”, “registered proprietor”, “authorized user”etc.
2. Prerequisite for keeping a register of G.I. in Part A and Part B. Part A will include all registered G.I. . Part
B will have the complete information of registered authorised users.
3. Registration of G.I. of goods in specified categories.
4. Refusal of registration of specific G.I.
5. Prerequisites for framing of rules by Central Government for filing the application, its contents and
materials relating to the substantive examination of geographical indication applications.
6. Compulsory publication of all approved geographical indication applications and for inviting oppositions.
7. Listing authorised users of registered geographical indications and giving terms for infringement action
either by a registered proprietor or an authorised user.
8. Requirements for a higher level of protection for notified goods.
9. Prohibition of assignment etc. of a G.I. as it is public property.
10. Prohibition on the registration of a geographical indication as a trademark.
11. Filing appeal against Registrar’s decision to the Intellectual Property Appellate Board established under the
Trade Mark legislation.
12. Provision relating to offences and penalties.
13. Requirement describing the impacts of registration and the rights given by registration.
14. Requirement for interchange powers of the registrar, keeping of Index, protection of homonymous
geographical indications etc.
Geographical Indication registration
Section 8 of the G.I. Act gives that a Geographical Indication may be registered regarding any or all of the goods,
included in such types of goods as may be listed by the registrar. Moreover, regarding a particular area of a country,
or a region or locality in that territory, as the case may be. According to the prescribed manner, the registrar may
also classify the goods according to the international division of goods to register geographical indications and
publish in an alphabetical index of various goods.
Who can apply for G.I.?
Any union of persons or producers or any organisation or authority established by or under any law expressing the
concern of the producers of the concerned goods can apply for registration of a geographical indication.
A producer will apply for the registration as an approved user of a registered geographical indication and
collectively by the registered proprietor of the said G.I. The ‘producer’ means in G.I. Act-
● anyone who provides the goods in case agricultural goods, and involves the person who prepares or
packages such goods;
● anyone who utilises the goods in case of natural goods;
● anyone who creates or produces the handiwork or manufactured goods,
 ● anyone who purchases or trades in such production, exploitation, building or manufacturing of the goods.
Filling of application
1. An application for the registration of a geographical indication can be done in three in Form G.I. – 1(A) for
a single class and in G.I. – 1 (C) for multiple categories.
2. An application shall be made in triplicate in Form G.I. –1(B) for a single class and in G.I. –1(D) for
multiple categories.
3. Power of Attorney, if required.
4. The applicant or his agent shall sign an application.
Contents of application
The application should add the requirements and guidelines for processing a G.I. application as defined below:
● A description showing as to how the geographical indication helps to show the goods as coming from the
particular region of the country or territory;
● Providing a geographical map of the area or region in which goods are produced;
● The categories of goods;
● Details of producers;
● An affidavit of how the applicant claims to denote the interest in the G.I.;
● The standards benchmark for the usage or other features of the G.I.;
● The particulars of unique features;
● The written description of the suggested boundary;
● The growth attributes regarding the G.I. relevant to the application;
● Three certified copies of the map of the territory, region or locality;
● Details of special human skill associated, if any;
● Location and the full name of the organisation and association of person;
● Number of producers; and
● Details of examination structures, if any, to monitor the use of the G.I. [Rule32].
The registration process of G.I. in India
1. Filling an application and a number is allotted on the receipt of the application.
2. After that, the application goes to the examiner for scrutiny
3. Examiner scrutinises the application to verify whether it satisfies the conditions of the G.I. Act and the
Rules.
4. If any deficiencies found through a preliminary examination will be communicated to the applicant by the
Examiner.
5. The deficiencies need to comply with the limit mentioned in the communication sent by Examiner to
Applicant.[Rule31]
6. After the compliance of the deficiencies, the Registrar will constitute a Consultative Group of experts to
ensure the accuracy of the details provided in the statement of the case. [Rule33]
7. Submissions of the applicant would be accepted after the issuance of the Examination Report.
8. The application will be admitted and published (within three months of approval) in the Geographical
Indications Journal. If no further objection is raised. Rule, 34&38]
9. Any person may, within three months, oppose the registration of an application for G.I. after the
publication of a Geographical Indication in the Geographical Indications Journal.
10. After applying and paying the prescribed fee to the Registrar, this objection
11. the period may be extended by a period not exceeding one month.
12. The Notice of Opposition/Objection can only be filed before the Registrar of Geographical Indications in
Chennai. [Section 14, Form GI-2].
13. If no opposition/objection is filed within the specified time or where an opposition/objection is filed, it is
rejected. The submission time is over, and the Registrar registers the geographical indication in Part A of
the Register.
 14. The Registrar shall give a certificate sealed with the seal of the Geographical Indications Registry to each
applicant and the authorised users after the registration of a geographical indication. The date of filing of
the application will be considered the date of registration.
Duration of registration
The validity of a registered geographical indication is ten years and can be renewed from time to time on payment of
the renewal fee.
Prohibition of registration of certain Geographical Indications
For registration, the G.I. must fall within the extent of the definition of the expression “geographical indication” as
provided under Section 2 (1) (e) of the G.I. Act. In addition, such a G.I. should not fall in the purview of prohibiting
acts contained in Section 9, which are as follows:
● the use of which will likely to deceive or confuse; or
● the use of which will be opposed to any law which is in the force at that time; or
● which includes or contains disreputable or offensive matter; or
● which constitutes or contains any element likely to hurt the religious sensitivities of any group or
community of the citizens of India; or
● which will contrarily be disentitled to safeguard in a court; or
● which are confirmed to be nonexclusive names or indications of goods and are, hence, not or discontinued
to be guarded in their country of origin, or which have come into disuse in that country; or
● which, although belongs to another territory, region or locality in which the goods originate, but
dishonestly represent to the persons that the goods originate in another territory, area or locality, whatever
the case may be.
Offences and penalties
Chapter VIII of the Act describes specific acts as offences punishable by confinement or with a fine, or with both.
● The penalty for falsification of G.I.s and the situations in which a person uses false G.I. are mentioned in
Section 39.
● Selling goods to which false G.I. is used as described in Section 40.
● Increased penalty for succeeding convictions for falsifying, falsifying G.I.s or selling goods with false
G.I.s.
● Falsely representing a G.I. as listed in Section 42. Misrepresenting the G.I. as Registered, which has not
been registered, is an offence.
● They were inadequately describing a place of business as related to the G.I.s Registry as listed in Section
43.
● Falsification of records in the Register as listed in Section 44.
● No offence in some cases as given under Section 45.
● Immunity of certain persons employed in the day to day activities of the business as provided under
Section46.
● Procedure where the invalidity of registration is appealed by the accused as given in Section18.
Conclusion
India is still an agricultural economy even though the GDP contribution of the agricultural sector is about 18 per
cent. However, approximately 60 per cent of India’s population still works in the agricultural industry. That is why
having a law like the G.I. act, 1999 and making it even stricter and better is crucial to protect farmers’ rights and
prevent farmers and workers that work in the agricultural sector.
What are Neighboring Rights?
With the advancement in media and technology, the protection of the rights of those who authored literary, musical,
dramatic, and artistic works grew to those who helped in the communication and publicizing of these works to the
public. This brought in a new concept of Neighboring Rights. These rights, also referred to as Related or Secondary
Rights, grew as a concept parallel to Copyright. The main purpose behind it was to protect the rights of those
intellectual creators who put in efforts to convey the message of the author to the public.
The author himself is not always capable of disseminating the message of his art to the public at large. For instance,
poetry by Gulzar might not be enjoyed by the public, if it is not sung by a famous singer like Arjit Singh. It may also
not garner as much recognition if it is not telecasted by a music channel, say B4U Music. These channels of
communication, therefore, deserve their fair share of protection under the law. Not only do they communicate the
work, but they also bring in reach and add in their own set of skills, be it their artistic skills, or their marketing skills.
Neighboring Rights protect the rights of these channels of communication. These rights were first recognized under
the Rome Convention of 1961. The convention provided them with a protection tenure of 20 years, which could be
extended in the national laws to up to 50 years. “They divide these rights into three categories:
● Rights of Performers
● Rights of Producers of Phonograms
● Rights of Broadcasting Organizations”[i]
Rights of Performers dealt with the rights of actors, singers, musicians, dancers, etc., and those who performed
literary or artistic works. Rights of Phonogram Producers dealt with the rights of those who produced phonograms.
Phonograms are the aural fixation of a sound on a storage device. Rights of Broadcasting Organizations dealt with
the rights of those organizations that help in the transmission and re-transmission of audio and video work.
Neighboring Rights in India
The Indian Act of Copyright did not originally protect Neighboring Rights under it. It was only after the amendment
of 1994 when specific sections were inserted into the Act for the same in Chapter VIII. Section 37 and 38 were
inserted to protect the rights of Broadcasting Organizations and Performer’s rights, respectively. Producers of
Phonograms were on the other hand protected by the insertion of ‘sound recording’ under Section 13 and their rights
under Section 14. Section 39 was also inserted, which dealt with all those acts which would not amount to an
infringement on the rights of Performers and Broadcasting Organizations.
Further on, through the amendment of 2012, there was an insertion of exclusive and moral rights of performers
through Section 38A and 38B. Section 39A was also inserted, which dealt with certain provisions that would apply
in the case of Performers rights and Broadcaster’s reproduction rights.
Rights of Phonogram Producers
The rights of the producers of phonograms were added with the other rights of copyright that are in Sections 13 and
14. Section 13 (1) (c) talks about the right of copyright that subsists for sound recordings while Section 14 (e) talks
about the exclusive rights that are available to sound recordings when it comes to copyright. Since phonogram
producers have been added under this section, they are provided with all the major rights, both economic and moral,
that are provided under the general copyright production.
Rights of Broadcasting Organizations
The term ‘broadcast’ is defined under Section 2 (dd) of the Act. It defines it as “communication to the public-
(i) by any means of wireless diffusion, whether in any one or more of the forms of
signs, sounds or visual images; or
(ii) by wire, and includes a re-broadcast.”
The rights with regards to broadcasting should not be confused with the rights of Broadcasting organizations. The
former deals with the right of the intellectual creator to reserve his rights with regards to the broadcast or
communication of his work to the public. This is protected under Section 14. However, Section 37 deals with the
latter, which means the rights that are available to the Broadcasting Organizations as an intermediary in the process
of disseminating the work of the author to the public.
These exclusive rights that are available to the author are known as Broadcast Reproduction Rights. These rights
allow the broadcaster to have an exclusive right over their broadcast for the next 25 years. These rights allow the
broadcaster to act against any infringement that takes place against him if any person without a license tries to
rebroadcast any of his broadcast, causes his broadcast to be viewed or heard by the public for the exchange of a
payment, records the broadcast both visually or through audio, reproduces such recording for the public without
taking an exclusive license for the same, sell or provide for commercial rental.
Section 39 however also allows for the use of the broadcast without causing infringement in certain cases. This
includes when the use of the broadcast is made for the sole purpose of use by a person or research and teaching
purpose, when the performance is used for the reporting of an event or any other bonafide activity, or if any act does
not constitute as infringement under Section 52 of the act.
Rights of Performing Artists
The word ‘performer’ is defined in Section 2 (qq) of the Act. It states that “performer includes an actor, singer,
musician, dancer, acrobat, juggler, conjuror, snake charmer, a person delivering a lecture or any other person who
makes performance.” Section 2 (q) defines performance about the performer's right as “any visual or acoustic
presentation made live by one or more performers”[ii]. The amendment of 2012 however added that when in a
cinematographic film, if a person’s performance is informal or incidental, and that in the usual industry practices, is
not credited anywhere including the credits of the film, the performance shall not be treated as that of a performer
except for sub-clause (b) of Section 38B”[iii].
The act provides an exclusive right to every performer over his performance. This gives them the right to allow or
bar the recording or broadcasting of their performance to the public in an audio or video form. These rights were the
result of the development of media and its various channels of communication as modern invention allowed for the
permanent storage of the performances of these artists. Their performances could reach the masses in a flick of a
finger without their consent. The new law provides them a decent amount of protection.
Just like copyright, protection of the rights of a performer initiates as the performance takes place. There is no
requirement for registration. The rights allow the performers to exclude any party from recording, communicating,
issuing copies of, selling, or giving to commercial rental their performance. It also prohibits the broadcasting or
communication of their performances to the public unless the performance has already been broadcasted. The act
provides performers with the economic rights of 50 years.
Section 39 however does add its special circumstance when the rights of a performer are not infringed. These
include when the recording of the performance is made for the sole use of a person or research and teaching
purposes. The use is consistent with fair dealing in the reporting of current events or for Bonafide review, teaching,
or research. Finally, if any act does not constitute infringement under Section 52 of the act, it shall not be considered
as an act of infringement for the rights of the performer.
Moral Rights of Performers
Moral rights are inalienable rights that are bestowed upon the creators of any work of intellectual labor. Just like the
authors of a work protected under copyright, the performers of performance have their moral rights as well. These
are provided under Section 38B of the Act. There are two moral rights available to the performers. “These are:
· The right to be identified as the artist in their performance unless where the exclusion is made through the Right of
Paternity of another.
· The right to Restrain or claim damages in respect of any distortion, mutilation or other modification to their
performance that can be damaging to their reputation”[iv]
Conclusion
Neighboring Rights are a relatively less talked about a bundle of rights that are equally important in the field of
intellectual property rights. With the recognition of these rights with WIPO, there has been a slower yet strong
adaption of these rights into the national legislations. They are of equal importance as they protect the rights of
performing artists along with the producers and broadcasters who are gradually growing bigger as an industry.
Though there is a need for better research on the topic, the Indian Legislation has put strong regulations for the same
which are commendable.

New forms of intellectual property rights:

Important provisions regarding the Protection of Plant Varieties and Farmers Rights Act, 2001
In India, rural and agricultural research including the advancement of new plant assortments has to a great extent
been the worry of the legislature and open section organizations. Prior to this, India didn’t have any enactments to
secure the plant assortments and, truth be told, no prompt need was felt. Notwithstanding, after India became a
signatory to the Trade-Related Aspects of Intellectual Property Rights Agreement (TRIPs) in 1994, such an
enactment was required. Article 27(b) of this agreement requires the part nations to accommodate insurance of plant
assortments either by a patent or by a viable sui generis framework or by any mix thereof.
Subsequently, the part nations had the decision to outline enactments fitting their own framework and India
practiced this choice. The current Indian Patent Act, 1970 avoided agribusiness and agricultural strategies for
creation from patentability. The sui generis framework for insurance of plant assortments was created coordinating
the privileges of reproducers, farmers and town networks, and dealing with the worries for impartial sharing of
advantages. It offers adaptability with respect to ensured genera/species, level, and time of insurance when
contrasted with other comparable enactments existing or being planned in various countries. The Act covers all the
classifications of plants, with the exception of microorganisms. The general and types of protection assortments will
be informed by the gazette following the implementation of the Act in accordance with the appropriate guidelines
and regulations.

History of the Protection of Plant Varieties and Farmers’ Rights Act

The Protection of Plant Varieties and Farmers’ Rights Act was enacted in 2001 and discussions took place in the
nation after drawing on how licensed innovation rights ought to be presented in Indian horticulture after the nation
joined the World Trade Organization in 1995 and consented to actualize the Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS).
The decision before India had to take was to either sanction a law that ensured the interests of cultivating networks
or to acknowledge the system of plant reproducers’ privileges given by the International Union for Protection of
New Plant Varieties (UPOV Convention). The last alternative was dismissed basically in light of the fact that the
current adaptation of UPOV, which was embraced in 1991, denied the farmers the opportunity to reuse ranch spared
seeds and to trade them with their neighbours.
Along these lines, in The Protection of Plant Varieties and Farmers’ Rights Act, India presented a section on
Farmers’ Rights, which has three legs:
● one, farmers are perceived as plant raisers and they can enlist their assortments;
● two, farmers occupied with the protection of hereditary assets of landraces and wild family members of
financial plants and their improvement through choice and safeguarding are perceived and remunerated;
and
● three, ensuring the customary acts of the farmers of sparing seeds from one gather and utilizing the spared
seeds either for planting for their next reap or offering them to their homestead neighbours.

Objectives of the Protection of Plant Varieties and Farmers’ Rights Act, 2000
The objective of the act acknowledges, to set up a compelling framework for the insurance of plant assortments, the
privileges of farmers and plant reproducers, and to energize the advancement of new assortments of plants. To
perceive and secure the privileges of farmers in regard to their commitments made whenever monitoring, improving,
and making accessible plant hereditary assets for the advancement of new plant assortments.
To quicken rural advancement in the nation, ensure plant reproducers’ privileges and to animate speculation for
innovative work both in the open and private part for the improvement of new plant assortments. To encourage the
development of the seed industry in the nation which will guarantee the accessibility of top-notch seeds and planting
material to the farmers.

Implementation of the Act

To execute the arrangements of the Act the Department of Agriculture, Cooperation and Farmers Welfare, Ministry
of Agriculture, and Farmers Welfare built up the Protection of Plant Varieties and Farmers’ Rights Authority, 2001.
The chairperson is the chief executive of the authority. Other than the chairperson, the authority has 15 individuals,
as advised by the Government of India (GOI). Eight of them are ex-officio individuals speaking to different
departments/ministries, three from SAUs and the State Governments, one delegate each for farmers, ancestral
association, seed industry, and ladies association related with horticultural exercises are assigned by the Central
Government. The Registrar General is the ex-officio member secretary of the authority.

General functions of the Authority

● Registration of new plant assortments, basically inferred assortments (EDV), surviving assortments;
● Developing DUS (Distinctiveness, Uniformity, and Stability) test rules for new plant species;
● Developing portrayal and documentation of assortments enlisted;
● Compulsory listing offices for all assortment of plants;
● Documentation, ordering, and listing of farmers’ assortments;
● Recognizing and remunerating farmers, network of farmers, especially inborn and provincial network
occupied with protection and improvement;
● Preservation of plant hereditary assets of financial plants and their wild family members;
● Maintenance of the national register of plant varieties; and
● Maintenance of the National Gene Bank.

Convention countries
Convention countries implies a nation which has consented to a global show for the security of plant assortments to
which India has likewise acquiesced or a nation which has the law of assurance of plant assortments based on which
India has gone into an understanding for allowing plant raisers’ privileges to the resident of both the nations. Any
individual if applies for the enlistment of an assortment in India within a year after the date on which the application
was made in the show nation, such assortment will, whenever enrolled under this Act, be enlisted as of the date on
which the application was made in show nation and that date will be esteemed with the end goal of this Act to be the
date of enlistment.

Plant Varieties Protection Appellate Tribunal

There is a momentary arrangement by which it is given that until the PVPAT is built up, the Intellectual Property
Appellate Board (IPAB) will practice the ward of PVPAT. Therefore, the Plant Varieties Protection Appellate
Tribunal (PVPAT) has been set up by delegating technical members. All requests or choices of the registrar of
authority identifying with an enrollment of assortment and requests or choices of the registrar identifying with
enlistment as specialist or licensee can be bid in the Tribunal. Further, all requests or choices of authority identifying
with advantage sharing, renouncement of an obligatory permit, and installment of pay can likewise be offered in the
Tribunal. The choices of the PVPAT can be tested in the High Court. The Tribunal will discard the intrigue inside
one year.

International Union for Protection of New Plant Varieties (UPOV Convention)

The International Union for the Protection of New Varieties of Plants (UPOV) is an intergovernmental association
with a home office in Geneva (Switzerland). UPOV was built up by the International Convention for the Protection
of New Varieties of Plants. The Convention was received in Paris in 1961 and it was changed in 1972, 1978 and
1991. The strategy of UPOV is to ensure compelling plant safety arrangements to enable the improvement of new
plant ranges to promote society. The UPOV Convention gives the premise to individuals to support plant rearing by
giving raisers of new plant assortments, a licensed innovation right: the producers correct.
In the instance of an assortment ensured by a raiser’s correct, the approval of the reproducer is required to proliferate
the assortment for business purposes. The reproducer’s privilege is conceded by the individual UPOV individuals.
Only the reproduction of another plant assortment can ensure that new plant assortment. It isn’t allowed for
somebody other than the raiser to get insurance for an assortment. There are no limitations on who can be viewed as
a reproducer under the UPOV framework, a raiser may be an individual, a farmer, an analyst, an open organization,
a privately owned business, and so forth. However, India isn’t apart as a member.

Notable highlights of the Act

Authority
The Central Government will set up an Authority to be known as the Protection of Plant Varieties and Farmers’
Rights Authority. It will consist of a director and fifteen individuals as delegates of various concerned services and
offices, seed industry, farmers associations, inborn networks, and State-level ladies’ association, and so on.

Eligibility
For an assortment to be qualified for enrollment, it must fit in with the standards of curiosity, peculiarity,
consistency, and strength (NDUS), as portrayed beneath under Section 15 (1)– (3):
For the motivations behind the Act, another assortment will be esteemed to be:
(a) The novel, if, at the date of documenting of the application for enlistment for insurance, the engendering or
collected material of such an assortment has not been sold or in any case discarded by or with the assent of its raiser
or his replacement for the reasons for misuse of such assortment.
(i) In India, sooner than one year,
(ii) or outside India, on account of trees or vines sooner than six years, or, in some other case, sooner than four
years, before the date of documenting such applications.
Given that a preliminary of another assortment that has not been auctioned or in any case arranged off will not
influence the privilege of insurance.
Given further the way on the date of documenting the application for enrollment, the spreading or collected material
of such assortment has gotten a matter of basic information other than through the previously mentioned way will
not influence the rules of an oddity for such assortment.
(b) Distinct, on the off chance that it is obviously recognizable by at any rate, one basic trademark from whatever
other assortments whose presence involves basic information in any nation at the hour of documenting the
application.
(c) Uniform, if subject to the variety that might be normal from the specific highlights of its spread, it is adequately
uniform in its basic attributes.
(d) Stable, if its basic qualities stay unaltered after rehashed engendering or, on account of a specific pattern of
proliferation, towards the finish of each such cycle. The assortment will be exposed to such uniqueness, consistency,
and solidness tests as will be endorsed.

Application structure
Each application for enlistment should go with the accompanying data as mentioned in Section 18 (a–h)]:
(a) division allowed to such assortment by the candidate;
(b) an oath depended on the candidate that such assortment doesn’t contain any quality or quality arrangement
including eliminator innovation;
(c) the application ought to be in such structure as might be determined by guidelines;
(d) total visa information of the parental lines from which the assortment has been determined alongside the
topographical area in India from where the hereditary material has been taken and all such data identifying with the
commitment, assuming any, of any farmer, town network, foundation or association in reproducing, advancing or
building up the assortment;
(e) an announcement containing a short portrayal of the assortment, drawing out its qualities of curiosity,
uniqueness, consistency, and strength as required for enrollment;
(f) such charges as might be endorsed;
(g) contain an assertion that the hereditary material or parental material procured for reproducing, advancing or
building up the assortment has been legitimately gained; and
(h) such different points of interest might be endorsed. The conditions expressed over (a–h), will not have any
significant bearing in regard to utilization for enrollment of farmers’ assortments.

The time period of protection

The authentication of enlistment given under Section 24 or subsection 9 of Section 23 will be legitimate for a long
time on account of trees and vines and six years on account of different harvests and might be investigated and
restored for the rest of the period on an installment of such charges as might be fixed by the principles made for this
sake subject to the conditions that the absolute time of legitimacy will not surpass.
(i) on account of trees and vines, eighteen years from the date of enrollment of the assortment;
(ii) on account of surviving assortments, fifteen years from the date of the warning of that assortment by the Central
Government under Section 5 of the Seed Act, 1996, and
(iii) in the other case, fifteen years from the date of enrollment of the assortment.

Installment of annual charge

The authority may, with the earlier endorsement of the Central Government, by notice in the Official Gazette, force
an expense to be paid yearly, by each reproducer of an assortment, operator and licensee thereof enlisted under this
Act decided based on advantage or sovereignty picked up by such raiser, specialist or licensee, by and large, in
regard of the assortment, for the maintenance of their enrollment under this Section 35(1) of the act.

Breeder’s right
The testament of enrollment for an assortment given under this Act will present a restrictive right on the raiser or his
replacement or his specialist or licensee, to create, sell, advertise, appropriate, import, or fare the range under the
Section 28 (1) of the Act.

Researchers’ right
The researchers have been given access to secured assortments for true blue exploration and research purposes
mentioned under Section 30 of the Act. This Section states, ‘Nothing contained in this Act will forestall (a) the
utilization of any assortment enrolled under this Act by any individual utilizing such assortment for directing
investigations or exploration; and (b) The use of a range by any person as an underlying source for a diverse
assortment gave rise to the requirement of approval of the raiser of the range when the recurrent use, as parental line,
of such range is important in the creation of such a newly created range.’

Farmers’ right
The farmers’ privileges of the Act characterize the benefit of farmers and their entitlement to secure assortments
created or rationed by them [Chapter VI of the Act]. Farmers can spare, use, sow, resow, trade, offer and sell ranch
produce of a secured assortment with the exception of the offer under a business advertising game plan (marked
seeds) mentioned under the Section 39(1)(i)–(iv) of the Act. Further, the farmers have likewise been given assurance
of blameless encroachment when, at the hour of encroachment, a farmer doesn’t know about the presence of
reproducer rights mentioned under Section 42 of the Act.
A farmer who is occupied with the protection of hereditary assets of landraces and wild family members of
monetary plants and their improvement through choice and conservation, will be entitled in an endorsed way for
acknowledgment and award from the Gene Fund, gave the material so chosen and protected is used in assortiments
registered in accordance with the Act as a contributor of qualities.
The normal execution of an assortment is to be revealed to the farmers at the hour of an offering of seed/spreading
material. A farmer or a gathering of farmers or an association of farmers can guarantee pay as per the Act if an
assortment or the proliferating material neglects to give the normal execution under given conditions, as asserted by
the raiser of the assortment.

Communities rights
The privileges of the networks as characterized, accommodate remuneration for the commitment of networks in the
advancement of new assortments in quantum to be controlled by The Protection of Plant Varieties and Farmers’
Rights Act Authority under Section 41 (1) of the Act.

Registration of essentially derived varieties

The breeder of the basically determined assortment will have indistinguishable rights from the plant reproducer of
other new assortments, which incorporate creation, selling, promoting, and dissemination, including fare and import
of the assortment. The other qualification standards for grant of enrollment are likewise equivalent to for new
assortment enlistment under Section 23(1), (6) of the Act.

Compulsory license
The authority can give an obligatory permit if there should be an occurrence of any objections about the accessibility
of the seeds of any enrolled assortment to open at a sensible cost. The permit can be conceded to any individual
intrigued to take up such exercises after the expiry of the time of three years from the date of issue of declaration of
enlistment to embrace creation, dissemination, and offer of the seed or other engendering material of the assortment
under the Section 47(1) of the Act.

Benefit-sharing
Sharing of advantages accumulating to a breeder from an assortment created from indigenously determined plant
hereditary assets has likewise been given under Section 26(1) of the Act. The authority may welcome cases of
advantage sharing of any assortment enrolled under the Act and will decide the quantum of such honor in the wake
of finding out the degree and nature of the advantage guarantee, in the wake of giving a chance to be heard, to both
the plant raiser and the claimer.

Legitimately procured parental material

Section 18(j) in regards to information to be submitted alongside an application, requires the candidate to confirm
that the hereditary or parental material utilized for reproducing the assortment has been legitimately procured. Such
a revelation would be troublesome in situations where the identification data identifying with the material has not
been recorded. Further, it would not generally be feasible for a raiser to get data identifying with the commitment of
a rancher, town network, and so on since there may not be a bona fide wellspring of such data. Such data, if not
accessible, might be left to the Authority to conclude, which can welcome cases later through media/open
notification, and so on.
National Gene Fund
The National Gene Fund to be comprised under the Act will be credited thereto:
(a) The advantage of sharing from the raiser.
(b) The yearly expense payable to the authority by a method of eminences.
(c) By the remuneration given to the networks as characterized under Section 41(1).
(d) Contribution from any national and global association and different sources.
The fund will be applied for disbursing shares to benefit claimants, either individuals or organizations, and for
compensation to village communities. The fund will also be used for supporting conservation and sustainable use of
genetic resources, including in situ and ex-situ collection, and for strengthening the capabilities of the panchayat in
carrying out such conservation and sustainable use, under Section (45) of the Act.

Integrated implementation
There is a requirement for the viable and incorporated usage of different new acts/bills concerning biodiversity,
condition, and seed, which have some interphases due to the regular wear, that is the ‘seed’. These are in the zone of
advantage, sharing components for conservers of agro-biodiversity and the foundation of a store for cases of
advantage sharing. The Biological Diversity Act (2002), and a seed Act (the Seed Act is under amendment) could be
incorporated and successfully integrated for smooth implementation simultaneously and through the management of
conservation and access to biodiversity and the protection of plant varieties and farmer rights Act. Albeit, some
covering issues have been shifted through to bring congruity between the Seed Act and The Protection of Plant
Varieties and Farmers’ Rights Act, in the New Seed Policy 2002, usage of The Protection of Plant Varieties and
Farmers’ Rights Act and Biological Diversity Act might be fit further.

Consideration for effective implementation of the Act

India has opted for a sui generis system of protection of plant varieties and has provided for farmers’ rights,
breeders’ rights, researchers’ rights, and equity concerns in the same legislation. All these provisions in one
legislation make it a unique Act when compared to similar legislations in other countries. Although, a few countries
have provided for farmers’ rights, all types of rights for farmers, viz. as a breeder, conserver, seed producer and
consumer have not been considered elsewhere in the world. It is this uniqueness of the Act which poses many
challenges for its effective implementation. The balance between breeders’ rights and farmers’ rights could be tough
to strike. A critical analysis of the provisions in the Act is therefore essential for its effective implementation.

Way forward
The Protection of Plant Varieties and Farmers’ Rights Act is a successful sui generis framework creating harmony
between plant reproducers’ privileges alongside ranchers’ privileges and specialists’ privileges. The act of little,
minimal ranchers to trade the gathered material with others is fundamental for their work and rehearsals to a vast
extent both in India and the major part of Asia-Pacific’s creative nations. All endeavors are being made by The
Protection of Plant Varieties and Farmers’ Rights Act, Authority to actualize various arrangements of The Protection
of Plant Varieties and Farmers’ Rights Act and furthermore to make the accessibility of value seeds of enlisted
assortments yet, in addition, to help ranch families for preservation and reasonable utilization of hereditary assets
remembering for situ and ex-situ assortments and for reinforcing the ability of the partners in completing such
protection and feasible use.
The ranchers can exploit this Act to get IPR on their developments as enhancements in plant assortments and
furthermore for their work in their land race and customary assortment protection and preservation. A portion of the
significant difficulties which we predict are:
 ● Popularization of farmers’ job in preservation and advancement of new assortment and readiness of
database of the equivalent for granting ranchers and cultivating networks and enrollment of farmers’
assortments.
● Mainstreaming and commercialization of enlisted ranchers’ assortments.
● Notification of ranchers’ assortments under Seeds Act, 1966.

Conclusion
As of late, the Government of India in their National Intellectual Property Rights Policy has demonstrated the
number of filings and enlistments by the Protection of Plant Varieties and Farmers’ Rights Authority requesting to
offer help to different partners for expanded enrollment of new, surviving and basically determined assortments of
plants. It has additionally underscored to set up joins between the Authority and Agricultural Universities, Research
Institutions, Technology Development, and Management Centers, and Krishi Vigyan Kendras and encourage the
advancement of seeds and their commercialization by ranchers. It makes the authority increasingly capable of
concentrating on techniques for mainstreaming of enlisted ranchers’ assortments and to take reproducers rights as
visualized in the Protection of Plant Varieties and Farmers’ Rights Act, 2001, to each concerned partner and make
India as a harbinger in the execution of not exclusively ranchers’ privileges yet additionally the raisers’ privileges.

Role of Intellectual Property Rights in Biotechnology

Introduction of the Intellectual Property Rights

Licensed innovation eludes the elite rights allowed by the nation above manifestations of personality, specifically,
developments, abstract and imaginative works, particular signs and plans utilized in trade.
Modern innovation is critical for the medicinal business. Utilization of the Intellectual Property framework by Small
and Medium Enterprises in the medicinal business relies generally upon the business technique of an organization,
its size, assets, imaginative limit, serious setting and field of ability. Research-based, advancement drove
organizations that look to grow new medications improve or adjust existing medications or grow new
pharmaceutical/medicinal hardware or forms, will, in general, depend vigorously on the patent framework to
guarantee they recuperate the ventures caused in innovative work.
The present Intellectual Property Rights (IPR) system is empowering commercialization of seed improvement,
monoculture, the security of new plant assortments, microorganisms, and hereditarily changed living beings. As a
result, our rich biogenetic decent variety is being dissolved irreversibly. We should discover a way to make an
elective methodology that will acquire harmony between the formal Intellectual Property (IP) framework and
maintainable parts of biodiversity.
Associations that rely upon allowing in giving approvals pharmaceutical things ought to be instructed about the
patent system so they can deal sensible and balanced approving understandings. Small and Medium Enterprises in
the medical business may utilize the abundance of data contained in patent reports as essential info to their Research
& Development, to get thoughts for additional development, to guarantee their “opportunity to work” or to discover.
Present-day structures, plant combination security, is normally less relevant to generally Small and Medium
Enterprises in the medicinal branch. However, this could vary depending upon the item offering and technique of
every association. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) gives for least
standards and principles in regard to the accompanying classes of IPR.

Meaning of the Biotechnology

Biotechnology is an innovation that uses natural frameworks, living creatures or parts of this to create or make
various items.
With the improvement of a hereditary building during the 1970s, inquire about in biotechnology (and other related
zones, for example, medication, science and so forth.) grew quickly on account of the new probability to make
changes in the life forms’ hereditary material (DNA).
Today, biotechnology covers a wide range of controls (eg. hereditary qualities, natural chemistry, atomic science,
and so forth). New innovations and items are built up each year inside the regions of medication (advancement of
new meds and treatments), farming (improvement of hereditarily adjusted plants, biofuels, organic treatment) or
modern biotechnology (generation of synthetic compounds, paper, materials, and nourishment).
Biotechnology helps living beings to fight against the illness. At present, there are in excess of 250 biotechnology
human services items and antibodies accessible to patients, numerous for already untreatable maladies. More than
13.3 million ranchers around the globe utilize rural biotechnology to build yields, keep harm from creepy crawlies
and bothers and lessen cultivating effect on the earth.
What’s more, more than 50 biorefineries are being worked across Northern America to test and refine advances to
create biofuels and synthetic compounds from sustainable biomass, which can help diminish ozone-depleting
substance emanations.

Uses of the Biotechnology

Ageing to Produce Foods

Ageing may be the eldest biotechnological revelation. More than 10,000 years prior to humanity was delivering
wine, lager, vinegar and bread utilizing microorganisms, principally yeast. Yoghurt was created by lactic corrosive
microscopic organisms in milk and shape was utilized to deliver cheddar. These procedures are still being used
today for the creation of present-day nourishments.

Modern Fermentation
In 1897 the disclosure that compounds from yeast can change over sugar to liquor lead to mechanical procedures for
synthetics, for example, butanol, CH3)2CO and glycerol. Ageing procedures are still being used today in numerous
cutting edge biotech associations, regularly for the generation of chemicals to be utilized in pharmaceutical
procedures, natural remediation, and other modern procedures.

Nourishment Preservation
Drying, salting and freezing sustenances to thwart disintegration by microorganisms were penetrated at some point
before anyone genuinely understood why they worked or even totally acknowledged what made the sustenance ruin
regardless.

Isolates
The act of isolating to forestall the spread of ailment was set up sometime before the starting points of infection
were known. In any case, it exhibits early acknowledgement that sickness could be passed from a tainted individual
to another sound person, who might then start to have manifestations of the ailment.
Specific Plant Breeding
Harvest improvement, by choosing seeds from the best or most advantageous plants, to get another yield having the
most attractive qualities, is a type of early harvest innovation. Ranchers discovered that utilizing just the seeds from
the best plants would inevitably upgrade and reinforce the ideal qualities in resulting crops. In the mid-1860s,
Gregor Mendel’s investigations on inheritable qualities of peas improved our comprehension of hereditary legacy
and lead to practices of cross-reproducing (presently known as hybridization).
Intellectual Property Rights & Biotechnology
Advancements of the biotechnology have been underlined by the various departments of the biotechnology.
Interestingly, most creating nations don’t have solid IPR systems and achievement instalments. Licensed innovation
(IP) is key to the biotechnology business, and carries with it a measurement, encouraging community-oriented
action, regardless of whether it is a medication disclosure or clinical or advertisement related preliminaries.
Basically, collective movement is the cooperative energy between India’s capacity to give conditions to explore,
clinical preliminaries and advancement, innovative lead and capital accessibility in created countries. The fruitful
interpretation of these cooperative energies into economically reasonable applications and attractive items basically
relies upon the similarity of guidelines that manage the enlistment and insurance of intellectual property, beginning
from the shared procedure.

Importance of Biotechnology
The Biological Diversity Act, 2002 (hereinafter referred to as BD Act) provides a mechanism for access to the
genetic resources and benefit-sharing accrued therefrom. Section 6 of the BD Act came into force on 1st July 2004
and prescribes that obtaining IPRs from the utilization of biological resources in India is subject to the approval of
the National Biodiversity Authority (hereinafter referred to as NBA).
It is considered to be a science relating to life and that includes the utilization of innovation, drugs, and various
valuable things. Present-day use of the term incorporates hereditary building just as tissue culture and cell advance.
The idea envelops a wide scope of techniques for changing living beings as per human purposes – returning to the
training of creatures, development of plants, and “upgrades” to these through reproducing plans that utilize
counterfeit determination and hybridization.
For the learning of basic normal methods, the ability to isolate and escalate a particular quality from the enormous
number in a living being’s genome (the finished arrangement of qualities or hereditary material present in a cell or
life form). Doubtlessly, the closeness of complete genome movements for an expanding number of living things
vows to change the way by which these sciences – and the undertakings subject to them.

How Intellectual Property Rights can Protect Biotechnology?

Intellectual property rights protect one’s innovation. And in biotechnology also the inventor can be protected by
intellectual property rights, but to protect his/her rights one should prove his/her novelty and innovation of that
particular product. According to section 2(1)(j) of the Patents Act, 1970 talks about the invention. It says that for the
grant and protection of the invention there should be a novelty in that invention.
The below following examples in which the intellectual property rights protected the biotechnology:
Here is one case of how protected innovation rights work in the medicinal services industry. Government assurance
permits organizations to utilize the ® image with a trademark name to show that it has an enrolled trademark and
that nobody else can utilize that name. More than one organization may sell a similar substance compound, which
implies a similar medication, however, just one organization can legitimately utilize the trademarked name to
advertise that medication.
For instance, while numerous organizations sell the energizer tranquillize fluoxetine hydrochloride, just Eli Lilly can
call it Prozac. In like manner, no one but Roche can utilize the trademarked name Tamiflu to showcase a medication
called Oseltamivir that is intended to forestall and treat flu. Trademarks aren’t simply utilized with drugs, in any
case; they’re additionally utilized with medical clinic names, doctor practice names and different elements with
particular marking. This is vital to organizations right now, where marking, promoting and pictures are focal parts of
business tasks and vital situating.
As another instance, biotechnology organizations use licenses to secure their protected innovation rights to medicate
conveyance gadgets. AstraZeneca possesses the licensed innovation rights to the Symbicort Turbuhaler, which is the
medication budesonide/formoterol in a dry powder inhaler for the support treatment of asthma and COPD. Other
human services organizations use licenses to secure their protected innovation rights to gadgets, for example, braces,
prostheses, vision testing machines and the PC frameworks utilized in social insurance the executives.

Indian Pharmaceutical Industry

The Patent Law Treaty (PLT), The Trademark Law Treaty (TLT) has made some amazing progress, being nearly
non-existent prior to 1970 to a noticeable supplier of human services items, meeting just about 95 for each penny of
the nation’s medicinal requirements. Nowadays the business is the front position of scientific technology-based
enterprises with vast going capacities in the intricate field of medication production and innovation. The positions
are extremely high in developing countries, regarding innovation, quality, and scope of meds fabricated.
From straightforward migraine pills to modern anti-toxins and complex cardiovascular mixes, pretty much every
sort of medication is presently made domestically. Worldwide organizations related to this area have invigorated,
helped and initiated this dynamic advancement in the previous years and assisted with putting developing countries
on the medical guide to the universe. The medical segment developing is exceptionally divided into enlisted
elements with serious value rivalry and government value control. It has extended radically over the most recent two
decades.

Governments’ Role in Biotechnology

The innovation strategy of the legislature and the Vision Statement on Biotechnology has been given by DBT to
give a system and give vital heading to various divisions to quicken the pace of improvement of biotechnology in
developing countries. This arrangement further intends to chalk out the way of progress in divisions, for example,
farming and nourishment biotechnology, modern biotechnology, restorative and therapeutic drug, demonstrative
biotechnology, bio-building, nanotechnology, clinical biotechnology, condition and intellectual property and, patent
law, copyright law, trademark law, design law etc.

Licensing Biotechnology Inventions in India

The IPO considers biotechnological developments to be identified with living elements of characteristic starting
point, for example, creatures, people including parts thereof, living elements of the fake starting point, for example,
small scale life forms, immunizations, transgenic creatures and plants, organic materials, for example, DNA,
plasmids, qualities, vector, tissues, cells, replicons, forms identifying with living elements, forms relating to organic
material, strategies for treatment of human or creature body, natural forms or basically organic procedures. The
accompanying biotechnological developments are not considered patentable under Section 3 of the Indian Patent
(Amendment) Act 2005.
1. Living elements of the characteristic root, for example, creatures, plants, in entire or any parts thereof, plant
assortments, seeds, species, qualities also, smaller scale living beings.
2. Any procedure of assembling or generation identifying with such living substances.
3. Any strategy for treatment, for example, therapeutic, careful, therapeutic, prophylactic indicative also,
remedial, of people or creatures or on the other hand different medications of comparable nature.
4. Any living substance of fake beginning, for example, transgenic creatures and plants, or any part thereof.
5. Natural materials, for example, organs, tissues, cells, infections and all the way toward getting them ready.
Basically natural procedures for the creation of plants and creatures, for example, a technique for
intersection or reproducing.
Rights of Plant Varieties
PBR’s are utilized to secure new assortments of plants by giving restrictive business rights for around 20-25 a long
time to advertise another assortment or its regenerative material. The assortment must be novel, particular, uniform,
and stable.
This insurance keeps anybody from developing or selling the assortment without the proprietor’s consent. Special
cases might be made, nevertheless, for both research and use of seed spared by a rancher for replanting. International
Union for the Protection of New Varieties of Plants system of the plant variety protection says that in section 3 it
talks about the protection of Genera and some specified species.

Patents
A patent is a restrictive right given to an innovator to prohibit all others from making, utilizing, selling or offering to
sell the creation in the nation that conceded the patent right, and bringing it into that nation. In horticultural
biotechnology, licenses may cover, for instance, plant change techniques, vectors, qualities, and so forth.
Furthermore, in nations that permit protecting of higher living things, transgenic plants or creatures. Section 3,5 of
the Patents Act, 1970 protects the inventions.

Conclusion
Obligations and Resources would make a significant start in the progress of proficient and powerful utilization of
medical usage for the construction of developing countries. The developing countries medical industry will
guarantee that basic medications at moderate costs are accessible to the immense populace of this sub-landmass and
furthermore keep giving work for a large number of people.
The fundamental course of instruction ought to be intended to guarantee that the recently qualified drug specialist
has the vital information and aptitudes to initiate rehearsing skillfully in an assortment of settings including network
and emergency clinic drug store and the pharmaceutical industry. Continuing with capable improvement should then
be a durable obligation for each practising medication master.
The possibility of National schools of medication stores should be set up to make and present a model instructive
program. Medication authorities should get figured out how to look into medication the officials and result checking.
Medication store calling ought to mastermind the possibility of drugstore practice at system and crisis facility sedate
stores through reasonable planning and pay. Structures of Medicine into a standard game plan of prescription of
things to seek widely inclusive human administrations besides, ensuring human administrations for all – especially
for the welfare of destitute individuals.
India has cruised through the venture from a condition of an all-out absence of IP attention to the current situation
with the proactive quest for IP in the outskirts territories of innovation. Having released India’s IT potential in the
later past, the opportunity has now come to bridle the colossal qualities and energies of the nations in the
Biotechnology Sector.
Besides, IPs produced by the open part can be viewed as resources that can be traded for private division claimed
IPs or utilized as negotiating concessions in innovation move dealings. Organization between the private and open
divisions in innovation improvement through sharing of ability, what’s more, IP can rush innovation move and
obtain on the two sides.

WIPO Treaty Protecting Genetic Resources and Traditional Knowledge

The recently concluded World Intellectual Property Organization (WIPO) treaty on Intellectual Property (IP),
Genetic Resources (GRs), and Associated Traditional Knowledge (ATK) is a significant win for countries of the
global South including India.
■ The treaty has been adopted at a multilateral forum with a consensus among more than 150 countries,
including the majority of the developed economies.
What is the Significance of the WIPO Treaty?
■ Inscription of TK and Wisdom into the Global IP System: The treaty marks the first time that traditional
knowledge and wisdom systems are being inscribed into the global intellectual property (IP) system.
○ The treaty sets unprecedented global standards within the IP system for provider countries of GRs
and ATK.
■ Protection of Biodiversity: The WIPO Treaty aims to balance the rights of countries rich in biodiversity and
traditional wisdom with the global Intellectual Property Rights (IPR) system.
■ Inclusive Innovation: It promotes inclusive innovation by recognising the connection between local
communities and their GRs and ATK.
○ The treaty protects the wealth of traditional knowledge on medicinal plants, agriculture, and other
aspects of life, passed down through generations, from misappropriation.
■ Disclosure Requirements: The treaty will require contracting parties to put in place mandatory disclosure
obligations for patent applicants to disclose the country of origin or source of the genetic resources when
the claimed invention is based on genetic resources or associated traditional knowledge.
○ The WIPO Treaty helps combat biopiracy by establishing a legal framework to protect GRs and
traditional knowledge from unauthorised commercial exploitation.
■ Prevention of Misappropriation: The treaty establishes mandatory disclosure obligations, which offer added
protection to prevent the misappropriation of GRs and ATK in countries without existing disclosure laws.
○ The recognition is crucial as several traditional herbs and products have been falsely claimed as
foreign inventions in the past, leading to contested patent applications.

World Intellectual Property Organisation

■ It is the global forum for Intellectual Property (IP) services, policy, information and cooperation. It is a
self-funding agency of the United Nations, with 193 member states including India.
■ Its mission is to lead the development of a balanced and effective international IP system that enables
innovation and creativity for the benefit of all.
■ WIPO defines Traditional knowledge (TK) as knowledge, know-how, skills and practices that are
developed, sustained and passed on from generation to generation within a community, often forming part
of its cultural or spiritual identity.

Note
■ Genetic resources (GRs) are defined in the Convention on Biological Diversity, 1992 (CBD) as genetic
material of plant, animal, microbial or other origin containing functional units of heredity that has actual or
potential value.
■ Examples include medicinal plants, agricultural crops and animal breeds.

What are the Past Cases Surrounding Traditional Knowledge and Genetic Resources in IPR?
■ Traditional Knowledge:
○ The Turmeric Case: Turmeric, a tropical herb from India, is widely used in the country for
medicinal, culinary, and dye purposes. It is used as a blood purifier, for treating the common cold,
and as an antiparasitic for skin infections.
● In 1995, the US issued a patent for using turmeric powder for wound healing to the
University of Mississippi Medical Center, but it was later revoked due to prior art
evidence provided by the Indian Council for Science and Industrial Research (CSIR).
○ The Neem Case: It raised a controversy over a patent granted to a company W.R. Grace for a
formulation using the active ingredient azadirachtin from the neem plant.
 ● Traditional medicine systems like Ayurveda and Unani have long recognised neem's
medicinal and pesticide properties.
● However, the patent granted the company exclusive rights to use azadirachtin (extract of
fruit from the Neem tree) in a specific storage solution.
● This sparked an outcry and led to re-examination and opposition proceedings at the
United States Patent and Trademark Office (USPTO) and the European Patent Office
(EPO). While the USPTO upheld the patent, the EPO ultimately ruled against it, stating it
lacked innovation.
■ Genetic Resources:
○ Wheat Varieties Case (2003): The case involves biopiracy of Indian wheat varieties known as Nap
Hal and Nap Hal-49, which were patented by a European company claiming to be the inventors.
● Indian authorities intervened and provided evidence that these wheat varieties originally
belonged to India, were its natural resources and crop varieties, and were not novel
inventions. As a result, the patents were revoked.
○ Basmati Rice Case (2000): It involved a US company being granted a patent for Basmati rice by
the USPTO.
● The applicants falsely claimed to have invented the new variety, leading to conflict
between Indian and American agricultural organisations.
● Eventually, the patent claims were narrowed down when the applicants admitted they
didn't invent Basmati rice.

What are India’s Initiatives Related to Protecting Traditional Knowledge and Genetic Resources?
■ Traditional Knowledge:
○ Traditional Knowledge Digital Library:
● The TKDL is a comprehensive database of medicinal formulations in various languages.
● Established in 2001, the TKDL was created in response to India’s challenges in
overturning patents on traditional remedies like turmeric and neem.
● This initiative, a joint effort by the CSIR and the Department of AYUSH, aims to
safeguard India’s rich medicinal knowledge from being patented erroneously, which was
happening at an estimated rate of 2,000 cases per year.
● The TKDL has been pivotal in protecting India’s traditional medicinal systems from
misappropriation globally.
○ Patents (Amendment) Act, 2005: It aims to protect the rights of indigenous communities by
obligating patent applicants to disclose the origin of biological resources in their inventions.
● Failure to disclose this information, especially related to TK, may result in the refusal of
the patent.
○ Trademark Act, 1999: Trademarks are based on the principles of distinguishability and avoiding
confusion. They differentiate goods and prevent confusion about the source of a product.
● The act allows for the protection of agricultural and biological products, including those
from indigenous communities.
● Indigenous groups can use trademark registration to differentiate their brand and
guarantee unique quality.
○ Biological Diversity Act, 2002 :It was enacted to provide for the conservation of biological
diversity, sustainable use of its components, and fair and equitable sharing of the benefits arising
out of the use of biological resources and traditional knowledge.
○ Geographical Indications (GI) : It is a designation applied to products originating from a specific
geographical area, indicating that the qualities or reputation of the products are inherently linked
to that particular origin.
 ■ Genetic Resources:
○ National Gene Bank : It was established in 1996 to preserve the seeds of Plant Genetic Resources
(PGR) for future generations. It has the capacity to preserve about one million germplasm (living
tissue from which new plants can be grown) in the form of seeds.
○ Plant Varieties and Farmers’ Rights (PPV&FR) Act, 2001: Plant breeders and farmers providing
Plant Genetic Resources (PGR) for developing new varieties should receive a fair share of
commercial gains.
● The PPV&FR Act 2001, is the first to include a provision for access and benefit-sharing
(ABS) along with Plant Breeder’s Rights (PBRs).
○ National Bureau of Plant Genetic Resources (NBPGR): It is an Indian institute working under the
Indian Council of Agricultural Research (ICAR). It plays a pivotal role in conserving and
protecting the genetic diversity of cultivated plants and their wild relatives in India.
○ National Bureau of Animal Genetic Resources (NBAGR): As a part of ICAR, NBAGR aims to
conserve, characterise, and utilise animal genetic resources for sustainable livestock development
in India. It maintains a genbank repository of the National Bureau of Animal Genetic Resources.
○ Microbial and Insect Biodiversity: National Bureau of Agriculturally Important Insects (NBAII)
serves as a nodal agency for collection, characterization, documentation, conservation, exchange,
and utilisation of agriculturally important insect resources.

Semiconductor Integrated Circuit Layout Design (SICLD) Act, 2000

Semiconductor Integrated Circuit Layout Design(SICLD) Act, 2000, has come into operation in India w.e.f. 4th
September 2000. As per the provisions of this Act, Registrar Semiconductor Integrated Circuits Layout-Design
Registry under the Ministry of Electronics and Information Technology (MeitY) has been appointed with its head
office at Electronics Niketan, 6 CGO Complex, Lodi Road New Delhi-110003.The Registry maintains the Register
of Layout-Designs and records in it the registered layout-designs with the names, addresses, and descriptions of the
proprietor and such other matters related to the registered layout-designs.

Procedure for Registration of Layout design

Acceptance of Application

Any person who wants to register his layout-design is required to apply in writing to the Registrar Semiconductor
Integrated Circuits Layout-Design Registry in the concerned territorial jurisdiction, as per the procedure prescribed
in the SICLD Act, 2000.

The Registrar after scrutiny may refuse the application or may accept it absolutely or with amendments or
modifications, as he may consider necessary.

Prohibition of registration of certain layout-designs

The SICLD Act, 2000 prohibits the registration of certain Layout designs. Layout design which is not original is
prohibited. Similarly, the registration of layout design which has been commercially exploited anywhere in India or
a convention country has been prohibited. Layout design which is not inherently distinctive or which is not
inherently capable of being distinguishable from any other registered layout-design also cannot be registered. The
Act, however, provides that a layout-design which has been commercially exploited for not more than two years
from the date on which an application for its registration has been filed either in India or a convention country shall
be considered as not having been commercially exploited.

According to SICLD Act, 2000, layout-design is to be considered as original if it is the result of its creator’s
intellectual efforts and is not commonly known to the creators of layout-designs and manufacturers of
semiconductor integrated circuits at the time of its creation. The Act further provides that a layout-design consisting
of such combination of elements and interconnections that are commonly known among creators of layout-designs
and manufacturers of semiconductor integrated circuits shall be considered as original if such combination taken as
a whole is the result of its creator’s intellectual efforts. Furthermore, this Act provides that where an original layout-
design has been created in execution of a commission or a contract of employment, the right of registration to such
layout-design shall belong, in the absence of any contractual provision to the contrary, to the person who
commissioned the work or to the employer.

Withdrawal of acceptance

As per provisions of SICLD Act, 2000, the Registrar has the power to withdraw the acceptance of an application for
registration (before registration of layout design) if it comes to his knowledge that the layout-design is prohibited of
registration under the provisions of this Act.The Registrar may however, provide the opportunity of being heard to
the applicant if he so desires, before the withdrawal of the acceptance.

Advertisement of application

According to SICLD Act, 2000, when an application for registration of a layout-design has been accepted, the
Registrar is bound to advertise the accepted application within fourteen days after the date of acceptance. After the
advertisement, the Registrar has the discretion to advertise the application again if the application has been corrected
or is permitted to be amended under the Act and notify in the prescribed manner the correction or amendment made.

Opposition to registration

Any person under the SICLD Act, 2000 can oppose the proposed registration of layout design. After an application
for registration of a layout-design has been accepted, any person can give notice in writing to the Registrar of his
opposition, within three months from the date of advertisement or re-advertisement or within further period not
exceeding one month in the aggregate, ( as may be allowed by the Registrar ) as per the procedure provided .

The Registrar is required to serve a copy of the notice to the applicant for registration. The applicant for registration
may send a counter-statement of grounds on which he relies, within two months of the receipt of notice of
opposition and if he does not do so, he shall be deemed to have abandoned his application. The Registrar shall send
a copy of the counter-statement of the grounds to the person giving notice of opposition. Both the applicant and the
opponent may also submit any evidence relied upon to the Registrar if they so desire. If the applicant for registration
or the opponent sending notice of opposition neither resides nor carries on business in India, the Registrar may
require them to give security for the costs of proceedings before him and, in default may treat the opposition or
application, as the case may be, as abandoned. The Registrar then decides the matter regarding the registration based
on the material before him. The application for registration is treated as abandoned if it is not completed within 12
months due to the reason of default on the part of the applicant or within such extended time as may be allowed by
the Registrar.
Registration

According to the SICLD Act, 2000, Registrar shall register the layout-design in the register, if the application has
not been opposed within the prescribed time limit or the application has been opposed and the opposition has been
decided for the applicant. The date of making the application is considered to be the date of registration of layout-
design. After registration, the Registrar issues certificate of registration sealed with the seal of the Semiconductor
Integrated Circuits Layout-Design Registry. Registration gives exclusive rights to the creator of layout-design for 10
years. It enables him to exploit the creation commercially and in the case of infringement, get reliefs permitted under
the Act. Once the layout design is registered, the original registration and all subsequent assignments and
transmissions of layout-design are admissible as a prima facie evidence of its validity. It cannot be held invalid on
the ground that it was not a registerable layout design except upon evidence of originality and if such evidence was
not submitted to the Registrar before. The Act confer all the powers of a civil court to the Registrar for the purposes
of receiving evidence, administering oaths, enforcing the attendance of witnesses compelling the discovery and
production of documents and issuing commissions for examination the of witnesses. It can also refer disputes to the
Appellate Board.

Duration of registration

As per SICLD Act, 2000, the registration of a layout-design is done only for ten years w.e.f. from the date of filing
an application for registration or from the date of first commercial exploitation anywhere in India or any country,
whichever is earlier.

Infringement of layout-design

Only a registered proprietor of the layout-design or a registered user can make use the layout design. What will
constitute the infringement of layout design has been explained in detail in the SICLD Act, 2000. Under the Act any
person who infringes the layout design shall be liable to pay the proprietor of the registered layout-design, royalty
to be determined by negotiation between registered proprietor and that person or by the Appellate Board. Such
royalty is negotiated keeping in view the benefit that accrued to the person who has infringed the layout design as
per the SICLD Act, 2000. The users/purchaser of infringed layout design is entitled to the immunity from
infringement under this Act. Use of registered layout-design with the written consent of the registered proprietor of a
registered layout-design also shall not constitute infringement. Also, where any person creates a layout design by
application of independent intellect which is identical to a registered layout-design, then, such act shall not
constitute infringement of the registered layout-design.

Assignment and transmission of registered layout-design

The proprietor of a registered layout-design has powers under the Act to assign the layout-design for any
consideration. The registered layout-design may be transferred with or without good will. However, the person who
becomes entitled by assignment or transmission to a registered layout-design shall also have to register his title with
the Registrar as per the procedure provided in the Act.

Use of registered layout-design by registered users

When registered layout-design is intended to be allowed to be used by some other person, then such person is
required to be registered with the Registrar as registered user. Registered proprietor and the proposed registered user
shall have to make a joint application in writing to the Registrar in a prescribed manner along with agreement in
writing (or a authenticated copy ) , entered into between them with regard to use of layout design showing
particulars of the relationship, existing or proposed, including the degree of control by the proprietor over the
permitted use which this relationship will confer. The particulars should also clarify whether the proposed
registered user shall be sole registered user and mention the place and duration of permitted use. After getting the
compliance of requirements under the Act, the Registrar registers the proposed registered user.

The Registrar has powers under the Act to cancel the registration as a registered user of layout design on some of the
following grounds:

1. registered user has not used the layout-design in accordance with the agreement
2. the proprietor or the registered user misrepresented, or failed to disclose some material facts at the time
of application which would have an adverse bearing on the registration of the registered user
● the circumstances have changed since the date of registration in such a way that at the date of such
application for cancellation they would not have justified registration of the registered user
1. that the registration ought not to have been effected having regard to right vested in the applicant by a
contract in the performance of which he is interested
2. registration may be canceled by the Registrar of his motion or on the application in writing by any
person on the ground that any stipulation in the agreement between the registered proprietor and the
registered user regarding the topographical dimensions of the layout design is either not being enforced
or is not being complied with
3. registration may be canceled by the Registrar if the layout-design is no longer registered

The Registrar is required to issue notice in respect of every application received for cancellation of registration of
registered user to the registered proprietor and each registered user (not being the applicant) of the layout-design.
However, before canceling of registration, the registered proprietor shall be given a reasonable opportunity of being
heard.

Thus, it would be seen that the SICLD Act, 2000 Act has been enacted to provide for the protection of Intellectual
Property of semiconductor integrated circuits layout-designs and matters connected therewith or incidental thereto.
It defines layout-designs of integrated circuits which can be registered under the Act. It also defines the rights
conferred by registration of layout-designs. It clarifies as to what constitute an infringement of layout design. It also
provides for a penalty for infringement of layout designs. It almost covers all aspects of protecting intellectual
property rights of semiconductor integrated circuits layout-designs.

Protecting software under intellectual property rights

The fast-paced growth of the software industry has made it essential to protect the intellectual property vested in the
software programmes and the machines using such software programmes. Software is a set of instructions that
commands the operation of a system to perform a particular task or to achieve a particular result and it is intangible
in nature. Unlike traditional products, when the software is sold, the buyer gets a license to use the software along
with some specified rights indicating the dos and don’ts for the licensee. The competitive nature of the software
market makes it vulnerable to piracy or being copied. This necessitates the protection of the software under IP Laws.

IP for software
Copyright and patent are the two things which come to our mind while talking about protecting software. Software
is expressed in the form of source and object code and is similar to that of a literary work. Hence Copyright is the
preferred method in protecting a software programme. But a patent can also be granted on fulfilment of stringent
criteria imposed by Patent Laws. Comparatively, patents offer stronger protection than copyright. This article will
provide an insight on when software can be Copyrighted when it can be patented and the level of protection granted
under both Copyright and Patent.

IPR What is protected Criteria for grant of IPR

Copyright Expression of the idea in the literal form (Source & Object The originality of Source &
Code) along with the overall structure of the programme. (Visual Object code.
Display)

Patent Both the idea and its functional aspect. Means+function i.e. hardware
limitation.

Software and copyright

Copyright is one of the kinds of intellectual property rights which protect original literary, musical, artistic, dramatic
works etc. from its unauthorized use. As a basic principle, the copyright law confers protection only to the
expression of an idea and not the idea itself. The effect of this being, a single idea can be expressed in many forms
and each of such expressions can be protected under the copyright law. Originality is the basis of copyright
protection and so, need for an artistic quality is not necessary for obtaining copyright protection.

What is protected under Copyright

● “Literary work” which includes any written work like books etc. Software is a kind of literary work.
● “Artistic work” which includes painting, drawing, photography, engravings, sculpture, architectural
work etc.
● Under the “Musical Works”, only the music is copyrighted and not the words or actions done in
performing the music.
● “Sound recording” means a recording of sounds from which sounds may be produced regardless of the
medium on which such recording is made or the method by which the sounds are produced. A
phonogram and a CD-ROM are sound recordings.
● “Cinematography” which in its widest sense includes all video clips and visual recordings.

Registration of Copyright
A copyright comes into existence as soon as the work is created. The law does not say that the registration of a
copyright is compulsory. The registration is preferable because the registration certificate issued by the Registrar of
Copyrights will act as a prima facie evidence in a Court of law while dealing with cases of infringement.

Registration – The Procedure

Every copyrightable work falls in any one of the six categories viz. Literary, Musical, Artistic, Cinematography,
Sound recording and Computer program. The Registration can be made both by way of online filing and manual
offline filing. The application can be filed either by the author of the work or its owner. If the application is filed by
the owner, a no-objection certificate has to be obtained from the author. It is not necessary that the work should be
an unpublished one. Even a published work can be copyrighted provided the application is accompanied by
necessary documentary evidence as to its publication.

While filing the application, the author/owner is required to give notice to the persons interested in the work to be
copyrighted. If the Registrar does not receive any objection from the interested parties within 30 days from date of
filing and the Registrar is satisfied with the originality of the work, he will enter the particulars of the work in the
Register of Copyrights. A copy of the same will be signed and issued to the applicant.

Term of Protection

The general term of protection under Copyright Law is a lifetime of author + 60 years.

What will be protected when you copyright a software

A copyright protects original literary works which are expressed in some material form. Computer programmes
(software) are considered as literary works as they are expressed by way of source code and object code. The source
and object code of software constitutes the literal elements of a computer programme and are protected under the
Copyright. However, some appropriate non-literal elements like the overall structure of the programme are also
protected under the Copyright. To put it in other words, the visual appearance of the software can also be protected
though it is not a literary element per se. Nevertheless, if the source & object code contains any algorithm which is
frequently used in computer programming, it is not capable of protection under copyright.

Internationally, there is a concept of “idea-expression” dichotomy. It means that copyright protection extends only to
the expressions of an idea and not the idea itself, procedure, methods of operation, etc. But this dichotomy has not
been recognized in Indian Law. Because protecting the expression of ideas related to the visual display of a
programme can be of more importance than its expression. Such an idea, though is a non-literal part of the computer
programme, can be protected as a part of the overall structure of the computer programme. Nevertheless, the basic
idea and the functionality of the software are not protected by copyright law. To put it in other words, owners cannot
protect the idea, concept & principle behind the software, its procedure & process, method of its operation, etc.

Rights of an owner over a copyrighted software

The owner of a copyright has the right to assign or grant a license in respect of his copyrighted work. The agreement
for an assignment needs to be in writing and must contain the following details viz. duration, royalty, revision,
extension and termination of License. At the end of the license period, all the rights over the software will return to
the owner, unless the agreement is renewed.
Exceptions to Infringement

As computer software is categorized as literary work, the owner’s rights are limited by ‘fair use’ and ‘reverse
engineering’. That is to say, the following acts are not considered as an infringement of copyright in relation to a
computer programme. Under the fair use, making of copies or adaptations of the computer programme by the lawful
possessor in order to back up for protection against temporary loss and for using it for the purpose for which it is
supplied is permissible. And, reverse engineering is permissible for developmental needs.

Software and Patent

A Patent is a grant of a monopoly over an invention to its inventor. Unlike Copyright, a Patent protects both the idea
and its functional aspect. The issuance of a patent creates a legal situation where the patented invention can be
exploited only with the consent of the patent holder.

What is protected under Patent?

In order to qualify for a patent, an invention must satisfy three conditions viz.

● Novelty i.e. newness. While examining the patent application, the invention must answer the following
question to fulfil the criteria of novelty. i.e. what is new at the time of filing the patent application? Or
what the inventor has added to the existing human knowledge on the subject.
● Non-Obviousness – The invention must contain an inventive step which has not been anticipated by a
person skilled in the art.
● Capable of industrial application.

Further, the Patent Act provides an exhaustive list of subject matters under section 3 which are not patentable.

Registration

To get a monopoly over the invention, registration is mandatory. The monopoly is granted in exchange for the
information about the invention which the inventor is supposed to disclose at the time of registration. The exclusive
right to exploit the invention is granted to motivate the inventors for technological advancement.

Registration – The Procedure

Application for registration of Patent can be made either by the inventor himself or his assignee or his legal
representative. The application should be filed at the appropriate Patent Office based on the applicant’s residence
and principal place of business. The application should be accompanied by a provisional or complete specification.
If the application is filed with provisional specification, the complete specification must be filed within one year
from the date of application. After the application is filed, it shall be published to receive opposition.
After filing the application and its publication, a request for examination has to be made within 48 months from the
date of filing. The application will be examined by the examiner in respect of the following questions viz.

● Whether the application complies with the requirements of the Patent Act?
● Whether there is any lawful ground for objection to granting of Patent?
 ● Whether there is the anticipation of the invention by Prior Art? (Patent Search)

The examiner will submit his report to the controller of Patent. If the complete specification is accepted and the
application is unopposed, Patent shall be granted to the applicant. The term of protection for a patent is 20 years
from the date of filing of an application.

Term of Protection

The patented invention will be protected for a period of 20 years from the date of filing the application.

What will be protected when you patent a Software

A patent provides more secure protection when compared to copyright. In a patent, the precise boundary of patented
software is known due to the very nature of claims laid down by the patentee in the patent document. It can protect
both the ideas and the functional aspect of the software. But, under section 3 of the Patent Act, computer
programmes “per se” are explicitly excluded from patentability. This, however, is not a blanket exclusion of
computer programmes from the ambit of Patent. A computer programme will become patentable when it transcends
the “per se” status. It is said to have transcended the status of “per se” when such a computer programme is
implemented in hardware to solve a technical problem, provided the hardware component is shown to form an
essential part of the invention. Some sort of interdependence must be shown between the software and hardware
components to claim protection under Patent.

Examination of patent applications involving computer programmes is the same as that for any other invention. The
invention must be “novel”, “non-obvious” i.e. must contain an inventive step, must have “industrial applicability”
and there must be “sufficient disclosure of information”.

While examining patent applications concerning computer programmes, more attention is given to the substance of
the claim rather than the form in which it is expressed. The substance of the claim must be analyzed to ascertain the
connection between software and hardware components i.e. the means and function. Means corresponds to the
computer programme and the function corresponds to structural feature/hardware functioning with the help of the
computer programme.

What needs to be shown is some sort of “interdependence” between the software and hardware components and not
“complete dependence” of hardware on the software. That is to say, if the structural feature performs the invention
solely by the computer programme, then, in that case, means plus function claims shall be rejected as these means
are nothing but computer programmes per se.

The patent applications involving computer software is widely categorized into three types viz.

● Claims concerning method/process in which the software produces a technical solution are patentable
provided it does not contain business methods, mathematical formulae, algorithms, and computer
programmes per se.
● Claims concerning apparatus or system are patentable if it satisfies the means+function format as
explained above.
● Claims concerning computer-readable medium or computer programme products are nothing but
computer programmes per se and hence not patentable.
To put it in other words, a computer programme can be patented when it has hardware limitations, implements a
technical process and has a technical effect. These considerations help a computer programme surpass the status of
“per se” thereby making section 3(k) of the Patent Act inapplicable.

Conclusion

Depending on the nature of software to be protected, the applicant can either opt for Copyright or Patent. If it is
purely a computer programme aimed at performing a particular task or achieving a particular result, it can only be
copyrighted. Though the Patent promises more secure protection, the software can qualify for the grant of a patent
only if it has a hardware limitation.

Interaction of artificial intelligence and intellectual property

Introduction

Intellectual Property Rights (IPRs) are those intangible assets that are granted to the creator or inventor of a valuable
creation of mind or invention that can be monetized and gain a certain reputation. Intellectual Property Rights
include copyright, industrial properties like trademarks, patents, trade secrets, designs, and traditional rights.
Intellectual property is an evolving yet very important aspect of the global money market.

Artificial Intelligence (AI) is a type of machine with human-like intelligence built from complex algorithms and
mathematical functions. A machine will only become artificially intelligent if it has generalised learning skills,
reasoning ability, and problem solving capacity. In the general sense, it is a programmed machine mimicking human
behaviour. There are mainly three different categories of artificial intelligence. They are:

● Artificial Narrow Intelligence

This type of AI is considered weak. They are programmed to perform only specific Tasks. The best examples of this
weak AI are Alexa, social humanoid Sophia, etc.

● Artificial General Intelligence

This type of AI is considered strong AI. They are programmed to perform any task that requires human intelligence.

● Artificial Superintelligence

This type of AI is hypothetical because it is not programmed in reality. It is calculated that this type of AI can
surpass humans with its programmed intelligence.

Intellectual property and its interaction with artificial intelligence have created new works in the present time. Many
controversies have been raised about it. The main dilemma is whether the machines are conquerors of human
creativity or creators of new works.

Artificial Intelligence and copyright

Chapter 3, Section 13 of the Copyright Act of 1957 defines the work that will get copyright. Copyright law only
recognises the creation of minds that are original; that is, they should have a human author.

Artificial Intelligence has been used in works of art since the 1970s. The Artificial Intelligence tools have been used
and are currently being used at a more advanced level in writing literary works, journalism, music creation, drawing,
and gaming. For example, Google owns an AI company named Google DeepMind. This company’s deep learning
algorithm does not have any rules, but their motto is to learn. To be more specific with its creation, the computer
software can generate music while listening to sound recordings.

India’s Copyright Act, 1957, expressly defines who is an author of a computer programme under Section 2(d)(6)
and what is a computer programme under Section 2(ffc). The computer software is copyrighted under literary works,
and this copyright can be protected for a period of 70 years after the death of the author. But whether the artistic
work created by an AI is copyrighted under the respective law will be a topic of discussion. Recently, the US
Copyright Office issued rules regarding the use of AI in newly created artistic works, stating that copyright will only
be granted to the material part that a human created and not to AI.

In the landmark case of Infopaq International A/S vs. Danske Dagblades Forening (2009), the Court of Justice of
the European Union held that a work generated from a computer programme can only be protected if the author’s
creativity is included.

Even though the law does not expressly prohibit copyright for AI art works, the laws are not amenable to works
lacking human creativity.

Who will be the owner

The core question regarding the new creative work generated by an artificially intelligent machine is that who is the
owner of the work? Whether it is the programmer of the AI software, the person who is using the particular AI to
create that work, or the AI itself. Generally, the author gets the copyright over the created work, but if the author is
an AI software, then the generality cannot be followed. If the AI software is to be recognised as the author of the
created work, then the AI machine should be granted the status and rights of a human.

At present, when AI generates creative work, usually that part will be excluded from the copyright, and only the
human creativity in the work will get copyrighted. It is because AI is not actually producing new work; it is
mimicking what it learns during its programming. Because the creative work that AI software makes will have a
substantive similarity to what it learns, The introduction of ChatGPT into the writing world has compressed the
complex writing process to a single click. Because AI software learns from millions of pieces of information and
utilises the information when it creates new works. AI can function for a minimum of time and generate complex
tasks that may be impossible for humans to do alone. The newly created masterpiece ‘The Next Rembrandt’ using
cutting-edge information technology has astonished the world because AI has reclaimed the classic era of
masterpieces.

Artificial Intelligence and trademarks

Section 2 (1)(zb) of the Trade Marks Act of 1999 defines the term trademark.

The trademarks, logos, and brands are the source of identity for the products or services offered by the particular
company, trade, or commerce. Trademarks are an important aspect of the current economy because new businesses
and start-ups are emerging each and every day. There are thousands of brands and thousands of creatives to support
those brands. Thereby resulting in continuous growth in the number of registered trademarks and the number of
applications for trademark registration.

Artificial Intelligence has a significant effect on the creation of a trade mark or logo. The trade mark can be well
groomed, from its font style to the impression that can be left on a customer, with the help of AI software. But
unlike copyright, here the ultimate idea of the respective mark will be the creation of a human mind, and the AI can
make it more appealing to the eyes of the customers.

The important aspect of the AI software on trade marks is its efficiency to collect a broad level of data and analyse it
within seconds, thereby saving human labour, money, and time. The AI tools can make better use of databases and
search engines. Due to the increase in registered trademarks and trademark applications for registration, it will be
hard for a human to scrutinise every single application and identify deceptively similar marks, identical goods, and
similar services from them. Whereas an AI software can exploit the search engines to the fullest and thereby find
deceptively similar and confusing products and services by comparing one mark with another, and even the AI
software can assess to some extent whether the trademark will get approved by the registry for registration.

One of the landmark cases related to trademark infringement is Lush vs. Amazon (2014). In this case, it was held that
Amazon used the Lush keyword on Google to achieve wrongful gain by utilising the reputation of the Lush
cosmetics company, where Lush was not interested in selling their products on the Amazon e-commerce platform.
Thereby, Amazon has infringed on the Lush trademark.

As far as trademarks are concerned, the success rate of the products and services in the market will mostly depend
on the perception of the customers. The AI software can help with customer searches, recommendations, and
suggestions. The AI can make the product recommendation by highlighting the product’s use, quality, and efficiency
and thereby boost the interaction between the products and customers, but the ultimate discretion will be on the
customers to decide whether to buy the product or not.

What if AI does not give desired result

The artificially intelligent machine can help with trademark searches and customer interaction to a great extent. But
if the AI software does not give the exact search results, has a default in their analytical review, or does not notify
similar marks, then it will be a problem for the person who is using it. Even though the AI software offers a global
range of monitoring solutions for trademarks, how much can we trust it?

Artifical Intelligence and patent

A patent is a type of intellectual property that prevents a third-party from using, selling,or making the invention of
the patent holder. The patent is for a period of 20 years, which can be renewed by payment of a prescribed fee. The
invention should be subjected to the inventive steps under Section 2(1)(ja) of the Patents Act of 1970 and need to
have some essential features if it wants to get patented. They are:

● Novelty
● Non-obviousness
● Industrial application

Section 3(k) of the Indian Patent Act of 1970 expressly prohibits granting a patent to an invention by an Artificial
Intelligence. Even though there are software patents or business method patents related to technology, when it
comes to the inventions made by Artificial Intelligence, it is an entirely different scenario.
Machine learning, deep learning, and artificial Intelligence have taken innovations to the next level. But what
happens if the inventor is itself a machine? The patent has granted a monopoly to its inventor, so the inventor can
commercially exploit the invention. Because the intellectual property laws provide recognition for the invention as a
reward for the innovation of the inventor. Currently, well developed countries use AI software to stimulate their
innovative abilities and use the AI to create inventions too. If these inventions are not patented due to the
participation of AI in them, then what will happen to the money and time they invested in their creation? The reality
is that AI is used to assist with the potential database and simulation for the invention. Human creativity as well as
machine learning skills are combined and used to create innovation.

But there is an actual instance where the inventor of an innovation is an AI machine.

In the landmark case of DABUS (Device for the Autonomous Bootstrapping of Unified Sentience), created by Dr.
Stephen Thaler, the applicant was the AI machine itself. The patent offices of the USA, England, and Australia have
rejected the application on the basis that the inventor should be a natural person and not a machine. At last, for the
first time in the history of intellectual property rights, an AI machine has been granted a patent from South Africa on
July 28, 2021.

Artificial Intelligence and design

Section 2(d) defines the term design under The Designs Act of 2000. Designs are the functional aspects of a product
that can make a relevant impact on the minds of customers. The designs can portray the aesthetic values of the
products, thus forming relevant parts of them.

Artificial Intelligence has the ability to design not only logos but also web pages and apps. Artificial Intelligence’s
introduction to the world of design has opened a new age of mass communication and the utilisation of diverse art
styles and software, different from the decades of traditional ways of designing. With the help of AI, any person can
create a design that depicts exactly what the designer intends to say through the design work. There are AI image
generating creative platforms like DALL E 2 and MIDJOURNEY. These types of AI can generate realistic images
and designs from simple descriptions in the natural language, that is, prompts. The prompt should not be
complicated for the AI to perceive, and the description given can be in different styles. But the most insane feature
of this AI software, like DALL E 2 is that it is free.

The most astonishing AI machine that looks like an emerging threat to designers is Uizard and their newly
discovered creation, Uizard Autodesigner. They are also creative platforms that generate unique image prompts. But
Uizard can even generate designs from a sketch or doodle drawn on a piece of paper and screenshots of an app. The
Uizard Autodesigner is the next frontier of AI design and can generate original multi screen designs with a single
text prompt. The possible question that will arise in the minds of readers will be, Whether AI will replace
Designers? The answer is No, because human creativity and AI design are co-existing in nature. Actually, AI design
acts as a catalyst for human creativity in design.

IP laws and AI in long run

Intellectual Property Rights should be subjected to flexible changes to accommodate the creation of Artificial
Intelligence. In a decade, Artificial Intelligence will be present in every aspect of intellectual property. So the
recognition of the work made by AI, protection of the work created, and liabilities to the AI if they infringe any right
of another person and if they make any work that is against human morals and the law and order of the country are
needed to be subjected to discussion. All of these will become reality if there is a human entity to represent the AI as
a legal entity. A person who can be sued and sue on its behalf.
If AI creates more work and human creativity shrinks to the point where they have to just click a button to create an
artistic work or an invention, that will be a serious problem. Human creativity will die out, and machines will take
over. In the World Economic Forum’s The Future Of Jobs Report, 2020 has reported that, by 2025, AI will replace
85 million jobs worldwide and, at the same time, create 97 million jobs.

If AI software dominates, then human to human interaction will be seriously affected. Still, a controlled use of AI in
invention and creation co-existing with humans can do wonders. They can upgrade our standard of living, save time
and money, increase the efficiency of invention, and give new horizons to the creation of minds and other
intellectual properties.

Conclusion

Artificial Intelligence is both terrifying and fascinating. AI has vast and deep influence in the area of intellectual
property. The creation of mind and inventions made by artificial Intelligence are not protected under IP laws in the
normal sense, but they can be if the overall AI machine is disassembled and examined. That the AI machine should
be differentiated into respective parts like core, technology, and technical aspects. The core of AI, which is usually a
complex algorithm or mathematical function, should be kept hidden as a trade secret, whereas technology can be
exposed to the public, thereby allowing new innovations to be made. The technical use of Artificial Intelligence has
been recognised and patented in countries like the United States, China, and Europe.

In this continuously developing world, AI inventions need to be protected on a broader level with suitable and strong
laws across all countries because of their influence on large scale businesses, startups, and even individual
innovations. For example, let’s look at a scenario where a gaming company invests millions for the music creation
of the game with AI, but it cannot be protected under Copyright law, and anyone can use it without payment. It will
be an injustice to that creation. The recognition of the rights of an AI machine for its creation and invention is
debatable, but it is not impossible.

UNIT-2

Evolution of international protection of IPRs:

Intellectual Property; sounds like a very complex and complicated idea, but is something that we come across a lot
of times in our daily life. Intellectual property means creation/innovation by men and the thought to protect them
was since medieval period. In the 19th century, various IP laws were enacted to protect the rights of the people.
This article talks about Intellectual Property Rights, its history, origin and evolution.

Introduction:
Tangible properties, be, movable or immovable, have a physical structure and presence. They have been recognized
as goods since time immemorial. Conversely, intangible properties have only been recognized as properties in the
recent past, let alone affording protection to them under IP Rights.

A brand has a plethora of Intellectual Property Rights (IPR) built around it. Let's take an example of the most
common necessity nowadays- a smartphone. It is protected by layers and layers of IP rights. The brand name, the
logo of a brand, words associated with the logo, color combination used or the shape and size of the logo, these are
all protected as Trademarks. Similarly, the technologies inside a phone are protected by patents.
The case of a phone, its water proof materials, its networking and data storage technologies, the sensors, and the
electromagnetic applications are all protected as Patents. Further, the source codes underlying programs in a phone
are protected by Copyrights.

Thus, Intellectual Property is something that always surrounds us, something which is internal and external to us,
something that we live on.

What Is An Intellectual Property:

Intellectual Property refers to:

1. Inventions,
2. Innovative designs,
3. Products of human creativity,
4. Identifiers of organizations or their products and services or
5. Unique products that have a geographical attribute.
As per Oxford Dictionary: An Intellectual Property is an intangible property that is the result of creativity.

According to World Intellectual Property Organization (WIPO), the global forum for intellectual property,
'Intellectual Property (IP) refers to the creations of mind, such as inventions; literary and artistic works; designs; and
symbols, names, and images used in commerce'. [1]

What Are Intellectual Property Rights:

As per World Trade Organisation (WTO):

Intellectual property rights are the rights given to persons over the creations of their minds. They usually give the
creator an exclusive right over the use of his/her creation for a certain period of time. [2]

However, an IPR is not just a right to exclude others from using, selling or producing the protected asset. It is also
designated to provide the holder with the right to assign or license the rights for commercial or other bonafide uses.
This includes the right to reproduce, distribute and sell the asset.

Intellectual Property Rights are of various types, but the three most important ones are as follows:
1. Patent: A patent is an exclusive right granted for an invention, which is a product or a process that provides,
in general, a new way of doing something, or offers a new technical solution to a problem. [3]

2. Copyright: Copyright (or author's right) is a legal term used to describe the rights that creators have over
their literary and artistic works. Works covered by copyright range from books, music, paintings, sculpture,
and films, to computer programs, databases, advertisements, maps, and technical drawings.[4]

3. Trademark: 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 shape of goods,
their packaging and combination of colours.[5]
History Of IPR:
Intellectual Property law dates at least as far back as medieval Europe. The first known use of the term Intellectual
Property dates back to the time, when an article published in the Monthly Review in 1769 used it as a phrase.[6]

The history and origin of patents, copyrights, trademark and its emergence at global level have been explained
further:
1. Origin And History Of Patents:
The origin of patents can be dated back to the year 1331. On 16th July, 1331, King Edward III of England
created history by providing King's protection through a letter's patent. It was given to a Flemish weaver of
woolen clothes by the name John Kemp. Kemp was allowed by the monarch to exploit his invention and
conduct trade on woolen clothes made by his craft in England.

Besides, he also got the right to teach his weaving technique to people he chose to. Thus, the protection
gave Kemp exclusive rights to work and disseminate his knowledge and skills. In many ways, this case lies
at the root of the present day patents.

Patents evolved from letters patent which were given by the monarchs that granted monopoly over
particular industries with new techniques. This power was used mostly for raising money for the crown and
was abused most of the times. Elizabeth I used this system on a large scale, issuing patents even for
common commodities like salt, starch, etc. These odious monopolies led to a conflict between the
Parliament and the Crown, which was finally settled in 1601. It was decided that the power to administer
patents would be turned over to the common law courts. [7]

At the same time, Elizabeth I revoked many other restrictive and damaging monopolies. However, James I,
Elizabeth's first successor continued using patents to create monopolies. But, after public outcry, James I of
England was forced to revoke all existing monopolies. This was incorporated into the Statute of
Monopolies in which the Parliament restricted the power of the Crown explicitly so that letter patents could
be introduced to the inventors of original inventions for a fixed number of years.

Origin In India:
The 1st legislation in India relating to patents was the Act VI of 1856. The objective was to encourage
inventions and to induce inventors to disclose secret of their inventions. Later, to grant exclusive privilege,
a fresh legislation was introduced as Act XV of 1859. However, in 1872, the act was renamed as The
Patterns and Designs Protection Act. The act remained in force for 30 years with only 1 amendment in the
year 1883.

The Indian Patents and Design Act replaced all the previous laws in India. In this act, provisions relating to
grant of secret patents, patent of addition, and increase of term of patent from 14 years to 16 years were
made. Later, after independence, various committees were made to examine the revisions in the law and
thus a bill was introduced in the Lok Sabha in 1965 which however lapsed. Though it lapsed in 1965, in
1967, an amended bill was introduced and then on the final recommendation of the committee, the Patents
Act, 1970 was passed which is presently used in India.

2. Origin And History Of Copyright:

Copyright developed quite similarly as the patents, by which certain authors and printers were given
exclusive rights to publish books and other materials. The motive behind this was not to protect the author's
right but to raise the revenues of the government and to give control to the government for controlling
publications.
 For example, in the year 1556, the establishment of the Stationers' Company's monopoly in England was
intended solely to help limit the Protestant Reformation movement's power. The entire printing industry
was put in the control of the company and thus the government and the church could prevent the
dissemination of ideas.

The Statute of Anne which was passed in 1710 was a milestone in the history of copyright law. It
recognized that it is the authors who should be primary beneficiaries of the copyright law and also
recognized that such copyright ideas should have limited duration (then set at 28 years), after which the
work would pass into public domain. Similar laws were enacted in United States in 1790 and in France in
1793.

Origin In India:
Copyright law entered in the year 1847 in India through an enactment during the regime of the East India
Company. At that time, the term of the copyright was for 42 years plus 7 years post-mortem. The
government could grant a compulsory license for publishing a book if the owner of the copyright, upon the
death of the author, denied its publication. Registration of Copyright was mandatory to enforce rights under
this act.

In 1914, the then Indian legislature enacted a new Copyright Law under the British Raj which was quite
similar to United Kingdom Copyright Act, 1911. However, there were few major differences. The most
important one being- it introduced criminal sanctions for copyright infringement under sections 7 to 12.
The 1911 Act was amended many times until 1957 and thus, in the year 1957 the Copyright Act was
enacted by independent India in order to suit to the provisions of the Berne Convention. This 1957 Act has
been amended many times, the latest being in the year 2012.

3. Origin And History Of Trademark:

Trademarks have been used since the 13th century in England. Bakers were the first ones to take advantage
of trademark. In the year 1266, under the reign of King Henry III, Trademark legislation was passed in
England. Bakers in England used a distinctive mark of their own to distinguish their products.

However, the origin of the first modern trademark legislation is dated by in the year 1857 in France,
followed by the Merchandise Act in England in 1862. The oldest registered trademark in UK was in the
year 1876- The Bass Brewery's label which had three triangles logo for ale.

The dictum nobody has any right to represent his goods as the goods of somebody else and nobody has the
right to pass off his goods as the goods of somebody else were established where a clothier who had gained
great reputation by putting his marks on clothes made by him was used by another to deceive and make
profits. The Courts thereafter followed these principles as the law. They recognized such disputes and gave
remedies as 'passing off'.[8]

Origin In India:
India prepared the first act related to trademarks as Trademark Act, 1940 which was borrowed from British
Trademark Act, 1938. Further, post independence the Trade and Merchandise Act, 1958 was enacted.
Various amendments were made until 30th December 1999, when the Trade Mark Act, 1999 was enacted
which is presently used in India.

The two key needs fulfilled under this act are- a) protect the owner from disorder and duplicity of marks by
 competitors. b) secure trademark owner's business and trade and also goodwill which is added to the
trademark.

Need Of Universal Law For International Protection:

In the year 1873, there was an event called 'The World Exposition' in Vienna. The idea behind it was to promote
exchange of education, knowledge and culture. However, the American inventors announced their boycott of this
event. During the 18th and the 19th century, technology in its modern form did not exist and rights of an inventor
were confined to his/her country. Many budding inventors who desired to participate in the event felt that their novel
inventions would be copied by onlookers, who would commercialize them without any regard to their interest.

Thus, there was a need to have an international legal regime that would provide protection for an invention across
countries. The incident associated with the exposition led to the passage of a special law to provide provisional
protection to the objects that were being exhibited in the exposition. This also led to the idea of creating a universal
law for the international protection of inventions.

The origin of international IP regime was the Paris Convention for the protection of industrial property and
inventions in 1883.

Further, following a campaign by French writer Victor Hugo and his Association Litt �raire et Artistique
Internationale, the Berne Convention for the Protection of Literary and Artistic Works was agreed in the year 1886.
The aim was to give creators the right to control and receive payment for their creative works on an international
level.[9]

With the adoption of the Madrid Agreement, the first international IP filing service was launched in 1891: the
Madrid System for the international registration of marks.[10]

Eventually, in 1893, the United International Bureau for the Protection of Intellectual Property was constituted.
Their organization was a common platform to administer both the Paris and the Berne Conventions. It was popularly
known by its French acronym BIPRI.

In 1970, BIPRI turned into the World Intellectual Property Organization, which is referred as WIPO. The World
Intellectual Property Organization was established through a convention which was signed in the year 1967. In
1974, The WIPO became part of the United Nations as a specialized agency to promote intellectual activities,
stimulate creativity, and facilitate technology transfer for accelerating economic development all over the world.
Presently, the WIPO has 193 member states. It administers 26 treaties including the WIPO convention.

Conclusion:
Intellectual property means the creation of mind: logos, symbols, writings, machines, etc. This creation of mind is
worthy as it contributes enormously to the nation's economy. These creations encourage innovations and reward
entrepreneurs in many ways.
The concept of Intellectual Property emerged way back in time and is considered one of the most important rights by
industries. Many industries have relied on these rights since centuries for the protection of their work, whereas,
consumers use IP to ensure that they purchase safe, genuine and guaranteed products.
Treaties for Intellectual Property Rights (IPR) protection
According to the World Trade Organisation, intellectual property rights are those rights that are given to persons
over the creation of their minds. Intellectual property rights are important rights in both the domestic and
international spheres. There have been various multilateral and bilateral treaties in the field of intellectual property
law to mark its international development.

Although the protection of intellectual property rights seems like a recent concept, it can be traced back to the early
days when most of the writings used to happen on leaves and parchments and the need for protection was realised in
terms of copyright protection and originated the printing rights protection and subsequently censorship. It finally led
to the passage of the Statute of Anne which recognised the rights of the authors.

Similarly, the ancient Greeks mostly used certain kinds of symbols and marks to indicate the source of artefacts and
potteries. Some symbols we used on swords as well for the differentiation. With the increase in trademarks were
eventually associated with merchandise makers. When a lot of cases regarding the infringement of such marks and
symbols began to see light the need for its regulation arose and subsequently Merchandise Marks Act 1862 was
introduced and it allowed traders to bring actions on the basis of deceiving the owner of the mark.

Another intellectual property right which can be traced long back is patent laws. The system of guilds is one of the
first which granted a certain amount of monopoly to the guilds. Then subsequently statute of monopolies was
introduced.

Furthermore, with evolving society and technology, people have become more creative in terms of both innovation
as well as misuse regarding such innovation which led to the need for a universal regulation regarding the protection
of intellectual property rights.

The conventions are more than a hundred years old, yet they provide a vital basis for the international dimensions of
the current position of intellectual property rights.

These international treaties and conventions provide international protection for intellectual property rights by
creating a broad framework of protection containing certain common elements. The primary regulation of the
conduct of intellectual property rights within a country emanates from domestic legislation. However, the provisions
of these national laws are shaped by the obligations created by international conventions and treaties.

Let us discuss them in detail.

Intellectual property rights (IPR)

Intellectual property, being intangible property, indicates the creation of the human mind. The creation of the human
mind mainly includes inventions and literary and artistic works, including symbols, names, images, and designs used
in commerce.

There are three components to intellectual property rights –

● It is related to the intelligence of the human mind, which is new and unique.
● It is an intangible commodity that is protected. The most important difference between any other form
of property and intellectual property is that intellectual property is intangible and does not qualify to be
defined or identified by the medium of physical parameters.
 ● The idea per se is not protected. The idea has to be published as a form of intellectual property, and
only then is it granted protection.

The meaning and scope of intellectual property are, with time, evolving and thus are involved with the inclusion of
newer forms of intellectual property in addition to its four separate and distinct types, namely, patents, trademarks,
copyrights and trade secrets. In current times, the protection of geographical indication, protection of varieties of
plants, the protection of semiconductors and integrated circuits and undisclosed information have been covered
under the ambit of Intellectual Property Rights

Principles of the international intellectual property regime

It was with the Paris Convention for the Protection of Industrial Properties, 1883, which is commonly known as the
Paris Convention, that the principles of intellectual property rights began to take shape. It was followed by the
Convention for the Protection of Literary and Artistic Works, 1886 which is infamously known as the Berne
Convention.

Both the above-mentioned conventions were negotiated and also re-negotiated as well as amended throughout the
years, and eventually, they were finally incorporated and advanced in Trade-Related Aspects of Intellectual Property
Rights (TRIPS) through the Uruguay Round of Negotiations from 1986 to 1994, which came into effect from the 1st
of January 1995. Let’s understand each convention in detail.

Paris Convention, 1883

The Paris Convention covers all forms of industrial property, such as patents, trademarks, industrial designs, utility
models, geographical indications, service marks, trade names, and the prevention of unfair competition.

The Paris Convention was created with two goals, which are-

● first, to prevent the unforeseen loss of patent protection eligibility by publishing 81 patent applications
and taking part in international exhibitions before submitting national patent applications; and
● second, to some extent, harmonise the various patent laws of the various countries.

The substantive provisions of the Paris Convention can be divided into three main categories-

1. National treatment– As per the terms and conditions of the convention, every secretary state must
ensure that the citizens of their nation and the citizens of other contracting states have an equivalent
degree of protection regarding industrial property. Citizens of non-contracting states shall be entitled to
national treatment under the convention in the same manner as in their own state if they reside in the
contracting state or have a lawful and functioning industrial or commercial presence there.
2. Priority rights– It covers within its ambit industrial designs, trademarks, and utility models. This right
gives the holder the ability to file an application for protection in any other contracting state within a
certain amount of time, that is, 6 months for industrial designs and trademarks and 12 months for
patents and utility models, based on a standard initial application that was filed in one of the contracting
states. It would be assumed that these additional applications were filed on the same day as the first
application. To state it otherwise, it means that they will supersede any application filed by third parties
for the same invention, utility model, trademark or industrial design during the previously indicated
term.
The subsequent applications would not be influenced by any subsequent event, including the publication of an
invention or the sale of items bearing an industrial design or mark, because they have their foundation in the original
application.

1. Common rules – They are as under:

● Patents– Patents issued for the same invention in different Contracting States are independent of one
another. A patent cannot be refused, cancelled, or terminated in any Contracting State on the grounds
that it has already been so in another Contracting State, and the granting of a patent in one Contracting
State does not obligate other Contracting States to do the same. The refusal to award a patent or the
invalidation of a patent on the grounds that the sale of the product or of a product made using the
patented technique is subject to domestic legal restrictions or limitations is not permitted.
● Marks– The filing and registration requirements for marks are governed by local law in each
Contracting State and are not governed by the Paris Convention. As a result, neither a registration nor a
request for registration of a mark that is put forward by a citizen of any Contracting State may be
denied or invalidated on the grounds that the application, registration, or renewal was unaffected in the
country of origin.
● Registration– A trademark’s registration in one Contracting State is unrelated to any potential
registrations in other nations, including the place of origin.
● Industrial Designs– Each Contracting State is required to preserve industrial designs, and protection
cannot be revoked because products containing the design were not produced there.
● Trade Names– Trade names must be protected in every Contracting State without being required to
file or register the names.
● An indication of Source– Each Contracting State is required to take action to prevent the direct or
indirect use of misrepresentations regarding the origin of commodities or the identity of their producer,
maker, or trader.
● Unfair competition– Each Contracting State shall offer adequate safeguards against unfair
competition.

Berne Convention, 1886

States began to become more interested in the potential for international cooperation on intellectual property during
the nineteenth century because of increased literacy piracy. Literary pirates misrepresent someone else’s ideas as
their own. This desire of such cooperation initially showed itself through bilateral agreements. Most country
copyright laws were only a few decades old in 1886. The only protection offered was that provided by monopolies,
or privileges granted for the publication of specific works.

Eight countries ratified the Berne Convention for the first time in 1886, namely- Belgium, France, Germany, Italy,
Spain, Switzerland, Tunisia, and the United Kingdom. India has been a member of the Berne Convention since
April 1928.

The Berne Convention, like the Paris Convention, was based on the idea of national treatment and stipulated a set of
basic rights that all nations had to uphold. The multilateral age of global intellectual property cooperation began
with the Paris and Berne Conventions.

The Berne Convention covers the rights of authors as well as the preservation of works. The treaty is founded on the
below-mentioned fundamental principles and includes a number of provisions that specify the minimum level of
protection that must be provided, as well as exceptional measures that developing nations may apply.

Principles Enshrined
The principles which got enshrined in the Berne Convention of 1886 and form the bedrock of intellectual property
laws today are-

● Principle of national treatment– According to the principle of national treatment, treatment is no less
favourable than that provided to people belonging to other member countries as people of one’s own
country. This principle is enshrined very much in general agreements regarding tariffs and trade. It
forms one of the most important principles of the World Trade Organization structure.

The works of authors who are citizens of such States, or works first published in such States, should be accorded in
each of the other Contracting States the same protection as such other Contracting States provide to the works of
their own citizens.

● Principle of automatic protection– The principle of automatic protection provides unconditional

protection which does not require any compliance with any formalities in all the member countries.
● Principle of independence of protection– This principle provides for intellectual Property Rights
protection, specifically for copyright protection, to be affordable irrespective of whether the protection
is given in the country of origin or not.

Protection is provided in accordance with the convention, regardless of whether there is protection in the nation
where the work was created. However, if a Contracting State grants a longer period of protection than the minimum
period required by the Convention and the work loses its protection in the place of origin, protection may be
withdrawn.

The works and rights that must be protected, as well as the length of the protection, are addressed by the minimum
requirements of protection. Each production in the literary, scientific, and creative fields must be protected,
regardless of how it is expressed.

● Principle of minimum standard protection– This principle concerns original works and rights to be
protected. For example, for copyright, the different rights protected are transaction, adaptation and
arrangement of work, performance in public, citation, communication, broadcast, reproductions, and
basis of audio-visual works.
● Principle of moral rights of authors– The Convention also establishes the rights pertaining to morals,
i.e., “moral rights”. The moral rights include the right to claim authorship of a work as well as the right
to object to any alteration of the work, mutilation, deformation, or modification. It also contains the
right against derogatory actions that would be detrimental to the honour or reputation of the author.

The rights recognised as exclusive rights of permission include the following, subject to any permissible
reservations, restrictions, or exceptions:

● The right to translate;

● the right to adapt and arrange the work;
● the right to perform musical, theatrical, and dramatical-musical works in public;
● the freedom to do literary readings in public;
● being able to publicise the performance of such works;
● the privilege of broadcasting; and
● the freedom to create copies in any way or form, with the potential for a contracting State to allow
copies without permission in specific circumstances as long as they don’t interfere with the work’s
 regular exploitation or unfairly damage the author’s legitimate interests; and the potential for a
Contracting State to grant the right to just compensation for music sound recordings.

The Madrid Agreement

In 1891, the Madrid Agreement for the International Registration of Marks and the Protocol of 1989 thereto were
concluded. It was adopted in Madrid, Spain. It had 55 members as a party to it when it was stated, which currently
reached 114 members. By acquiring an international registration that is valid in all specified Contracting Parties, this
procedure enables the protection of a mark in various nations. The agreement provides for the cases and the manner
in which seizure may be requested and affected in the case of goods bearing a false or deceptive indication of the
source. It prohibits the use, in connection with the sale, display or offering for sale of any goods, of all indications in
the nature of publicity capable of deceiving the public as to the source of the goods. However, the agreement does
not provide for the establishment of a union, governing body or budget.

Application for trademark registration in Madrid Agreement

A natural person or legal entity with an affiliation to a Contracting Party to the Agreement or the Protocol by
establishment, domicile, or nationality may only submit an international application for international registration of
a mark.

Only marks that have already been registered with the trademark office of the contracting member country with
which the applicant has the required links, referred to as the ‘office of origin’, are eligible to be the subject of
international applications. The international application may, however, be based solely on a registration application
submitted to the office of origin in cases where all designations are implemented in accordance with the Protocol.

The World Intellectual Property Organization’s Overseas Bureau must receive an overseas application through the
office of origin.

One or more Contracting Parties in which protection is desired must be specified in an application for international
registration. Later, more designations may be made. Only Contracting Parties that are signatories to the same treaty
as the Contracting Party whose office serves as the office of origin may be named. The International Bureau
conducts an examination after receiving an international application to see whether it complies with the Agreement,
the Protocol, and its Common Regulations.

An international registration, from the date of the international registration, has the same consequences for each
designated Contracting Party as if the mark had been registered directly with that Contracting Party’s office.

World Intellectual Property Organization Convention

The World Intellectual Property Organization Convention, which serves as the organisation governing document,
was signed in Stockholm on July 14, 1967. It went into effect in 1970 and underwent an amendment in 1979. The
World Intellectual Property Organisation is an intergovernmental organisation that joined the United Nations system
of organisations’ specialised agencies in 1974.

WIPO
The World Intellectual Property Organization is an agency of the United Nations that specialises in the promotion
and protection of intellectual property rights throughout the world. It was established in 1967, with its headquarters
in Geneva, Switzerland. It carries or mandates poster innovation economic development and creativity by providing
a framework for the protection of intellectual property globally.

The primary mission of the World Intellectual Property Organisation is to encourage the use and protection of
intellectual property with the aim of creating a balanced and effective international intellectual property system
which facilitates innovation investment as well as technology advancement. It is one of the largest specialised
agencies within the United Nations system, and its membership is open to any UN member state. It administers
various International treaties and agreements which are related to intellectual property. It provides a platform on an
international level for the filing of patterns, making it easy for investors as well as companies to see protection of
patterns in multiple countries with just a single application.

Its Madrid system simplifies the registration and management of trademarks across multiple jurisdictions. It also
supports the protection of copyright and other related rights. Furthermore, it offers various services relating to
intellectual property information and capacity building, including various training programs.

The World Intellectual Property Organisation conducts research and analysis on intellectual property trends and
policies across the world and publishes its report along with various valuable insights worldwide.

It offers arbitration and mediation services as a form of dispute resolution between parties without the need for
costly and time-consuming litigation. It takes the initiative in bringing about development programmes across
countries to build their capacity in intellectual property protection and management. It also encourages the transfer
of knowledge and technology from developed to developing countries in order to promote economic growth and
development, considering the development of the world as a whole.

It plays a crucial role in harmonising the facilities for global protection of intellectual property rights.

World Intellectual Property Organization’s Development

The Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of
Literary and Artistic Works, respectively, were the founding documents of the World Intellectual Property
Organisation. An “International Bureau” was to be established under both Conventions. Due to the World
Intellectual Property Organisation Convention, the two bureaus were combined in 1893 and replaced by the World
Intellectual Property Organisation in 1970.

The goals of the World Intellectual Property Organisation

The two main goals of the World Intellectual Property Organisation are-

1. to encourage the protection of intellectual property around the world; and

2. to ensure administrative cooperation between the intellectual property Associations established by the
treaties that the World Intellectual Property Organisation oversees.

In addition to carrying out the administrative duties of the Unions, the World Intellectual Property Organisation
engages in a number of activities to achieve these goals, such as
 ● normative activities, which encompass the formation of international trees to create norms and
standards for the protection and enforcement of intellectual property rights.,
● programme activities, involving legal and technical assistance to States in the area of intellectual
property,
● international classification and standardisation activities; and
● trademark and industrial design registration, as well as filing and registration services relating to
foreign applications for patents on inventions.

Membership in the World Intellectual Property Organisation

Any country that satisfies the following requirements is eligible to join the World Intellectual Property Organisation-

● Must be a member of the United Nations, any of the specialised agencies associated with the United
Nations, or the International Atomic Energy Agency,
● Must be a party to the Statute of the International Court of Justice; or
● Must have received an invitation from the General Assembly.

Membership in the World Intellectual Property Organisation does not impose any duties on a party with regard to
other treaties that it manages. To become a member of the World Intellectual Property Organisation, an instrument
of admission to the convention must be filed with the director general of the organisation.

The Patent Cooperation Treaty

According to the Patent Cooperation Treaty of 1970, by submitting an international patent application, an invention
can receive simultaneous patent protection in several different countries. An application may be submitted by any
citizen or resident of a contracting member state. After meeting the connection through establishment requirement, it
can typically be filed with the national patent of the contracting member state where the applicant resides or is a
citizen, or, at the applicant’s option, to the World Intellectual Property Organisation’s Geneva-based International
Bureau as well as its regional offices.

The treaty regulates in considerable detail the formal requirements that must be fulfilled by international
applications. All contracting states that are parties to the treaty as of the international filing date are automatically
identified upon submission of an application under the patent cooperation treaty. On the international application, a
global search is carried out. Such a search is carried out by one of the authorised international search authorities in
accordance with the provisions of the Patent Cooperation Treaty. In light of the search report’s result, a preliminary
and non-binding written opinion is also offered about whether the invention seems to meet the standards of
patentability. After receiving the written opinion and international search report, the applicant may choose to modify
the clauses of the application or withdraw it altogether, especially if the content of the report and opinion suggest
that patent issuance is unlikely. The overseas bureau publishes the foreign application and the findings of the
worldwide search if it is not withdrawn.

A union was established with an assembly as a consequence of the Patent Co-operation Treaty. Every state that has
ratified the Patent Cooperation Treaty is a member of that assembly. Adopting the biennial agenda and budget of the
union, updating the regulations issued under the Patent Cooperation Treaty and changing some costs associated with
utilising the system are among the key goals of this assembly.
Trade-Related Aspects of Intellectual Property Rights (TRIPS)

International intellectual property laws developed in the 20th century. Numerous changes were also made to the
Paris and Berne Conventions. International organisational structures developed together with the signing of
intellectual property treaties. International bureaux were established as a result of the Paris and Berne Conventions,
and they united to become the United International Bureaux for the Protection of Intellectual Property in 1893. A
new organisation, the World Intellectual Property Organisation, replaced it in 1967. The international intellectual
property community, which was governed by the United International Bureaux for the Protection of Intellectual
Property and later the World Intellectual Property Organisation, was governed by a set of guiding principles, the
most significant of which was the concept of national treatment.

It was not, however, a world where technical regulations were standardised. States maintained a great deal of
sovereign flexibility in establishing intellectual property rules.

Intellectual property was added as a negotiating topic at the Ministerial Meeting in Punta del Este in September
1986, the meeting that launched the Uruguay Round of trade negotiations. With the signing of the Final Act
Embodying the Results of the Uruguay Round of Multilateral Trade Negotiations on April 15, 1994, the Uruguay
Round came to an end in Marrakech. The Final Act was ratified by more than 100 nations. It included a number of
accords, notably the Trade-related aspects of the Intellectual Property Rights Agreement and the Agreement
Establishing the World Trade Organisation. There was no way for a state to avoid the TRIPS Agreement if they
wanted to join or stay in the multilateral trade system.

Structure of Trade-Related Aspects of Intellectual Property Rights

The TRIPS Agreement is regarded as a comprehensive new framework defining norms of intellectual property
protection and addresses the protection of intellectual property in trade-related industries to a major extent. The
TRIPS Agreement also holds the distinction of being the first global agreement that covers all forms of intellectual
property and includes a wide range of substantive provisions.

The TRIPS Agreement is a comprehensive and in-depth agreement with 73 Articles broken down into 7 Parts.
General regulations and fundamental principles are included in Part I. The TRIPS Agreement, which defines
“intellectual property” as “all categories of intellectual property that are the subject of Sections 1 to 7 of Part II” of
the Agreement, requires member countries to implement domestic legislation to give effect to its provisions.
Additionally, the TRIPS Agreement mandates that Members honour their commitments to uphold their obligations
related to intellectual property rights under existing agreements.

The Paris Convention for the Protection of Industrial Property, the Berne Convention for the Protection of Literary
and Artistic Works, the Rome Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organisations, and the Treaty on Intellectual Property in Respect of Integrated Circuits are among the
treaties that must be complied with. Both national treatment and most-favorable-nation treatment were stipulated as
fundamental concepts in the TRIPS Agreement. The TRIPS Agreement’s Part II sets rules for the accessibility,
scope, and application of intellectual property rights.

Purpose of Trade-Related Aspects of Intellectual Property Rights Agreement

The preamble of The Trade-Related Aspects of Intellectual Property Rights agreement along with Article 7 clearly
lists out the purposes for the TRIPS agreement-

1. To reduce distortion and impediment to international trade.

 2. To promote effective and adequate protection of intellectual property rights.
3. To ensure that measures and procedures to enforce intellectual property rights do not themselves
become barriers to legitimate trade.

Article 7 of the TRIPS agreement gives its objective, which is that the protection and enforcement of intellectual
property rights should contribute to the promotion of technological innovation and the transfer and dissemination of
technology, to the mutual advantage of producers and users of technology, and in a manner conducive to social and
economic welfare as well as to balance the rights and obligations.

Features of Trade-Related Aspects of Intellectual Property Rights Agreement

The three main features of the TRIPS agreement are-

1. Standards– it sets the minimum standard of protection for the intellectual properties provided by each
member country.
2. Enforcement– it entails domestic legislation, procedures, and remedies provided by member countries
for the enforcement of intellectual property rights.
3. Dispute settlement– it is a unique feature of the World Trade Organisation which provides for a
complex system of dispute settlement through dispute settlement understanding.

Trade-Related Aspects of Intellectual Property Rights about several intellectual property rights

The Paris Convention for the Protection of Industrial Property has been included in the TRIPS Agreement, and it
stipulates that Members shall abide by its substantive requirements even if they are not parties to the Convention.
The Agreement on TRIPS has been reported to have adopted a “Paris Plus” approach as an outcome. The ‘Berne
Convention for the Protection of Literary and Artistic Works’ is also included in the TRIPS Agreement, and it is
stated that Members must abide by its substantive requirements even if they are not parties to the Convention. The
TRIPS Agreement is supposed to take a “Berne Plus” approach as a result. The level of protection for writers’ moral
rights under the TRIPS Agreement is, however, less than it is under Article 6bis of the Berne Convention because it
is not included in the TRIPS Agreement.

Copyright

The Berne Convention is the fundamental international agreement that safeguards copyright. The TRIPS Agreement
further elevates and widens the levels of protection to include application of the law of the forum, automatic
protection, and national treatment, in addition to making compliance with the standards of protection under the
Berne Convention a fundamental condition for Members. Applying the law of the forum means that the country
where protection for the work is sought, not the country of the author’s nationality or the place of origin of the work,
will determine how the work is protected.

When a work is automatically protected, it means that no formalities are required and the rights attached to the work
are established as soon as the work is created. As a result, by virtue of the act of creating the work, the author
automatically acquires the copyright.

The following is outlined for the duration of copyright protection-

● The author’s life, and fifty years after his passing,

 ● Cinematographic works,
● Works with anonymous or fictitious names: fifty years after the work has been properly made public,
and
● Photographic works and works of applied art that are protected as artistic works are subject to the laws
of each country, but the duration of the protection must be at least 25 years from the day the work was
created.

The TRIPS Agreement allows for the licencing or prohibition of the commercial rental of phonograms, and it grants
rental rights to phonogram manufacturers and any other phonogram right holders as established by a Member’s law.

Trademarks

According to the TRIPS Agreement, “any sign, or any combination of signs, capable of distinguishing the goods or
services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.” As a
result, the TRIPS Agreement treats service markings that identify services as well as trademarks related to goods,
and Members are now required to set up a service mark registration system. The TRIPS Agreement also states that
“signs, in particular words, including personal names, letters, numerals, figurative elements, and combinations of
colours, as well as any combination of such signs, shall be eligible for registration as trademarks.”

The TRIPS Agreement also acknowledges that Members may make the need for registration that a sign be visually
recognizable in situations when the sign is not inherently able to distinguish the relevant products or services, or
base registrability on distinctiveness obtained through use.

Although a Member may enable the registration of a trademark due to use under the terms of the TRIPS Agreement,
it is specified that-

● actual use of a trademark shall not be a requirement for filing an application for registration; and
● an application shall not be refused solely on the basis that the intended use has not occurred prior to the
passing of a period of three years from the date of application.

In addition, the TRIPS Agreement mandates that Members shall publish each trademark either before it is registered
or right away after it has been registered. They also must provide a platform for opposition to a trademark’s
registration, as well as petitions to cancel the registration.

According to Article 16(1) of the TRIPS Agreement, the owner of a registered trademark has the exclusive right to
prevent any third parties from using identical or similar signs for goods or services that are identical to or similar to
those for which the trademark is registered. This prohibition extends to all third parties without the owner’s consent.
It has also been acknowledged that certain rights are protected under the Paris Convention.

Geographical Indications

With regard to wines and spirits, the TRIPS Agreement offers more comprehensive protection. Geographical
indications are defined by the TRIPS Agreement as “indications which identify a good as originating in the
territory of a Member, or a region or locality in that territory, where a given quality, reputation, or other
characteristic of the good is essentially attributable to its geographical origin.” Regarding the preservation of
geographical indications, the TRIPS Agreement also lists a few restrictions.
The geographical indicators of wines and spirits are further protected under the TRIPS Agreements. It includes
exclusions from the enhanced protection for wine and spirit geographical indicators. The TRIPS Agreement also
calls for the creation of a multinational framework, which strengthens protection.

Industrial Designs

Both the requirements for protection and the protection of industrial designs themselves are covered by the TRIPS
Agreement. The TRIPS Agreement specifies that Members may protect industrial designs under either system, since
some nations use the registration approach to protect industrial designs in the same manner as patents and other
nations protect them as creative works in the same way as copyright.

According to the TRIPS Agreement-

● Members must protect independently created industrial designs that are new or original,
● Members may specify that this protection does not apply to designs that are not new or original because
they do not significantly differ from existing designs or combinations of existing design elements.

This clause was created to cover both the copyright technique and the patent strategy that are employed in various
jurisdictions. The TRIPS Agreement further stipulates that the conditions for acquiring protection for textile or
clothing designs shall not unreasonably limit the ability to apply for and get such protection.

This aims to guarantee that registration is completed quickly for Members using the patent strategy for registering
industrial designs which have a limited lifecycle, such as textiles or clothing.

Patents

In terms of patentable subject matter, the TRIPS Agreement stipulates that-

● patents shall be available for all inventions, whether products or processes, in all technological fields,
provided that they are novel, inventive, and capable of industrial application, and
● patents shall be available and patent rights enjoyed without regard to the location of the invention, the
technological field, or whether products are imported or produced locally.

However, the TRIPS Agreement specifies the following restrictions on what constitutes patentable subject matter –
Members may exclude from patentability plants and animals other than microorganisms, diagnostic, therapeutic and
surgical methods for treating humans and animals, as well as essential biological processes for producing plants or
animals other than microorganisms. Members may do this in order to upload morality or public order, including to
safeguard the health or well-being of people, animals, or plants or to prevent grave environmental harm.

The TRIPS Agreement further states that Members must take steps to safeguard unique plant varieties using patents,
an efficient sui generis system, or any combination of the two.

Apart from a few specific exceptions, the TRIPS Agreement forbids Members from making unreasonable exceptions
to the patentable subject matter and establishes the general rule that any invention—be it a product or a process—in
any area of technology should be eligible for patent protection if it satisfies the patent requirements. Thus,
provisions that in the past had been passed specifically in the laws of developing countries, excluding inventions in
specific fields from being patentable subject matter, such as pharmaceuticals, chemicals, and foods, conflicting with
the TRIPS Agreement, give rise to the expectation that protection of inventions in developing countries will be
improved.

Additionally, as will be discussed later, the TRIPS Agreement recognises a 10-year grace period for developing
nations to establish a product patent system if they did not already have one at the time the World Trade
Organisation Agreement entered into force. However, even in relation to these nations, when a member party does
not provide patent protection for the pharmaceutical and agricultural chemical products as of the World Trade
Organisation Agreement’s entry into force date, they are required to put in place measures that are equivalent to
recognising patent applications for these inventions as of the World Trade Organisation Agreement’s entry into
force date.

In addition, the TRIPS Agreement has clauses that categorically forbid discrimination, including-

● discrimination based on the country of invention,

● discrimination based on the technical sector, and
● discrimination based on whether a product is imported or made domestically.

According to the TRIPS Agreement, a patent grants its owner the following exclusive rights:

● The acts of making, using, offering for sale, selling, or importing that product for these purposes when
a patent’s subject matter is a product, and
● The acts of using, offering for sale, selling, or importing at least the 30 products obtained directly by
that process when a patent’s subject matter is a process.

The TRIPS Agreement further affirms that the owner of a patent may enter into licencing agreements and that patent
rights may be licenced or passed through succession.

The TRIPS Agreement states that regarding a patent owner’s obligations when applying for a patent, applicants must
efficiently disclose their innovations and members must also ask them to specify the best way to implement their
invention. The reason for this is to acknowledge that patent rights are exclusive once which are given in exchange
for disclosing the innovation to the public. The TRIPS Agreement also stipulates that data related to international
patent applications must be submitted.

According to the TRIPS Agreement, Members may grant limited exceptions to the rights granted by a patent as long
as those exceptions do not unreasonably conflict with a patent’s normal exploitation and do not unreasonably
adversely harm the legitimate interests of the patent owner while also taking into account the legitimate interests of
third parties. This clause replicates the requirements of many nations’ patent laws pertaining to activities including-

● using a patented invention for testing-related research and

● prescription medicine dispensing by medical professionals.

Standard essential patents refer to a breed of patents where compliance to a standard is absolutely essential and there
is no non-infringing alternative to the patent if the third party wishes to comply with the technological standards.
Each of the technology standards is formulated from a consensual mechanism by a standard-setting organisation.
The manner in which the owner of the standard essential patent is expected to conduct in order to ensure the fair
adoption of standards from all third parties and fair and reasonable access to technology standards to all third parties
affects the enforcement of such patents.

There were attempts to include a small number of definite exceptions to patent rights in the TRIPS Agreement, but it
was ultimately decided to instead include an umbrella clause that clearly outlined the requirements for exceptions
and took into consideration, both, the interests of the patent owner and third parties.

The Doha Declaration, 2001 on the TRIPS agreement highlighted and stressed that individual governments have the
ability to grant compulsory licences in circumstances of public emergencies. The TRIPS Agreement has clear and
comprehensive provisions regarding compulsory licences.

The Doha Declaration makes reference to a number of TRIPS provisions, including the freedom to establish the
regime of exhaustion of intellectual property rights, the freedom to establish what constitutes a national emergency
and circumstances of extreme urgency, the freedom to grant compulsory licences and the freedom to determine the
grounds upon which licences are granted. By defining these provisions, the Doha Declaration clarifies the conditions
under which licences may be granted.

Trade Secrets

The TRIPS Agreement protects information that has been provided to governments or governmental agencies as
well as information that has been kept hidden, such as know-how and trade secrets. The TRIPS Agreement has the
additional feature of including rules for the intellectual property rights enforceability. The TRIPS Agreement
includes measures for the acquisition and upkeep of intellectual property rights, as well as related inter-party
processes for dispute prevention and resolution, temporary arrangements, institutional arrangements, and final
provisions.

Members are required to establish basic standards of protection under the TRIPS Agreement. The term “minimum
standards” refers to-

● minimum requirements that must be consistently met by all Members; and

● the freedom for Members to enact more comprehensive protection in their legal systems than what is
mandated by the TRIPS Agreement.

Utility Models

The so-called minor patents are protected by the utility model systems. However, there are no restrictions pertaining
to utility models in the TRIPS Agreement. As a result, there are no requirements for utility model systems under the
TRIPS Agreement, and each country is free to design its own unique utility model system. Utility model systems are
currently used in numerous nations, and this number is rising. Systems for protecting utility models vary from nation
to nation, depending on factors like the length of the protection and whether or not registration should be subject to
inspection. It is clear that each nation uses the utility model system to safeguard and expand its industries.

Enforcement of intellectual property rights

If rights cannot be effectively enforced in response to infringements, there is no use in implementing intellectual
property rules and regulations. As a result, rules relating to the protection of intellectual property rights are included
in the TRIPS Agreement. Since a country’s legal system is determined by its Constitution, many of the rules in the
TRIPS Agreement regulating the enforcement of IP rights are restricted to broad and abstract terms. However, the
enforcement of IP rights involves not just IP law but also civil and criminal law. However, the fact that a global
agreement was established on the enforcement of intellectual property rights is quite significant.

According to the TRIPS Agreement, members must make sure that legal enforcement processes are accessible to
them in order to take action against any violation of intellectual property rights. Members may handle cases of
intellectual property rights violations using their regular legal systems, and this provision does not require Members
to establish a unique judicial system for the enforcement of intellectual property rights. The TRIPS Agreement
further stipulates that processes for enforcing intellectual property rights must be just and equitable. They must not
be overly complicated, involve arbitrary deadlines, or cause unneeded delays.

The TRIPS Agreement mandates that Members publish their internal rules and regulations and notify the Council
for TRIPS of them in order to prevent disputes from forming between nations as much as possible and to ensure the
openness of domestic laws.

According to the TRIPS Agreement, Members must use the new World Trade Organisation dispute resolution
procedures to resolve any actual disputes that emerge about the application of the TRIPS Agreement and must
refrain from acting unilaterally.

Trade-Related Aspects of Intellectual Property Rights regarding anti-competitive practices

Certain contractual licences could have provisions that limit competition, like grant-back clauses that give the
licensor an exclusive licence over an improved invention made by the licensee. The TRIPS Agreement addresses
these issues by stating that-

● Clauses that restrict competition may have negative effects on trade and may obstruct the transfer and
dissemination of technology,
● Members have the right to specify and control anti-competitive practices,
● If anti-competitive practices are used with regard to a Member country, that country may request
consultations with the country of the intellectual property right owner, and
● The country of the intellectual property right owner may request consultations with the country that has
imposed the regulations.

Criticism of Trade-Related Aspects of Intellectual Property Rights

Although the TRIPS agreement sets fundamental and compulsory obligations on signature member states to
implement the bare minimum standards of IP protection in all of its components, the agreement is not free from
criticism.

● TRIPS effectively have little to do with trade directly and have instead led to trade being negatively
impacted and restricted, which goes against the ideologies of the World Trade Organisation.
● Intellectual property rights are domestic and territorial. They are governed by domestic laws and
regulations. There is no worldwide patent.
● The approach of ‘one size fits all’ is inappropriate for countries that are in their developing stage, and
have not yet been developed completely.
● Companies doing ‘generic’ are not doing something innovative and have gotten unwarranted rights and
protections on them.
 ● The rationale for the TRIPS agreement was trans-border and not domestic, but domestic rights and
protection of intellectual property have proliferated over the years. There is nothing trans-border in it.

Patent Law Treaty, 2000

The Patent Law Treaty of 2000 aims to harmonize, simplify, and make more user-friendly formal processes relating
to national and regional patent applications and patents.

The Patent Law Treaty specifies the maximum set of conditions that the office of a Contracting Party may impose,
with the notable exception of filing date restrictions. This means that while a Contracting Party is permitted to
establish standards that are more lenient towards applicants and owners, the Patent Law Treaty’s requirements are
necessary with regard to the imposition of as many conditions as an office may demand of applicants or owners. To
reduce the chances that applicants would unintentionally lose the filing date, which is crucial to the patent process,
the Treaty includes standards for acquiring a filing date.

The Patent Law Treaty mandates that upon satisfaction of three straightforward formal requirements (mentioned
below), the office of any Contracting Party shall award a filing date to an application. A Contracting Party is
permitted to require indications on both the identification and the contact of the applicant. The formalities are given
below-

● An indication that the elements received by the office are meant to be a patent application for an
invention.
● A statement indicating the information received by the office is intended to constitute a patent
application for an invention.
● Indications that would enable the office to locate or get in touch with the applicant. A Contracting Party
may, however, demand indications on both, and

A component that seems to be an inventive description. A filing date cannot be assigned based on any additional
criteria. For instance, a Contracting Party is not allowed to incorporate a filing fee or one or more claims in a filing
date requirement. As was previously stated, these requirements are absolute requirements, rather than maximum
requirements, and a Contracting Party would not be permitted to grant a filing date until all of those requirements
are met.

The Patent Law Treaty outlines procedures to follow in order to prevent substantive rights from unintentionally
being lost due to formality violations or missed deadlines. These include the requirement that offices give applicants
or other concerned parties notice, extensions of deadlines, ongoing processing, restoration of rights, and limitations
on revocation or invalidation of a patent for formal flaws in cases where they were not discovered by the office
during the application stage.

World Intellectual Property Organization Copyright Treaty (WCT Treaty)1996

Under the Berne Convention, the World Intellectual Property Organization Copyright Treaty, 1996, is a special
agreement. Any Contracting Party shall adhere to the substantive terms of the 1971 Act of the Berne Convention for
the Protection of Literary and Artistic Works, 1886, even if that party is not bound by the Berne Convention.

Additionally, the treaty lists items that are protected by copyright:

 ● computer programs, regardless of the way they are expressed, and
● collections of data or other materials, in any format, that are considered intellectual creations because
of the way their contents have been chosen or arranged.

The Treaty addresses three rights related to writers’ rights:

(i) The right of distribution is the authority to permit the sale of or other transfer of ownership that makes the
original and copies of a work available to the public.

(ii) The right to rent is the legal authority to permit the original and copies of three different types of works to be
commercially rented to the general public, they are-

● Computer programs, with the exception of situations where the computer program itself is not the
primary object of the rental,
● Cinematographic Works, but only in situations where commercial rental has led to widespread copying
of such works, materially impairing the exclusive right of reproduction, and
● Works incorporated in phonograms as defined in the national law of contracting parties.

(iii) The right to communicate with the public involves making works accessible to the public in a way that allows
users to access the work from a location and at a time of their choice. This covers any wired or wireless public
communication. It must be noted that interactive and on-demand communication over the internet is referred to.

According to this treaty, Contracting Parties must offer legal recourse for the management of authors’ rights against
the removal or alteration of information, including specific data that identifies works or their authors, and against the
evasion of technological safeguards used by authors in connection with the exercise of their rights.

Each Contracting Party is required by the Treaty to take the steps necessary to ensure that the Treaty is applied, in
conformity with its own legal framework. To enable effective action against any act infringing on rights protected
by the Treaty, each Contracting Party shall guarantee that enforcement measures are accessible under its law.

Such action must include quick fixes to stop infringement and fixes that operate as a deterrent to future
infringement. The Treaty creates an Assembly of Contracting Parties, whose major responsibility is to discuss issues
pertaining to the upkeep and development of the Treaty. It assigns the administrative responsibilities for the Treaty
to the World Intellectual Property Organisation Secretariat.

The Treaty was finalised in 1996, and on March 6, 2002, it became operative. The European Community and States
that are World Intellectual Property Organisation members are eligible to sign the Treaty. Other international
organisations may be permitted to join the Assembly established by the Treaty.

UNIT-3

What do you mean by copyright-meaning-nature -scope

Copyright is a means of protecting, promoting, spreading, and enriching the cultural heritage of the country. It
protects the creativity and originality of the creator whereby the creator is remunerated morally or monetarily. The
Copyright Act of 1957 entitles the creator to do or authorise to do certain acts with respect to his work.
 1. Being the author of literary, dramatic, and musical work, gives the person the right to reproduce the work in
any form, to adapt it to any form or authorise anyone to adapt his work or reproduce his work, additionally
to store the work in any form including electronic form.
2. It gives the creator the right to communicate his work to the public through public performance, allowing
the work to be made into a cinematographic film, translating the work to any language, and printing copies
to be circulated to the public.
3. Where the work is an artistic work it allows the creator to reproduce the work and store it in any medium
plus depicting it in any dimension. It also allows the creator to reproduce as many copies as he desires, to
communicate his work to the general public, to adapt it to any form, or to include his work in any
cinematograph film.
4. Where the creator is the creator of a cinematographic film, the creator is entitled to make copies of such
films and to communicate the work to the public. Additionally, he has a right to take and store still
photographs from the film and store his creation in any medium.
5. Having exclusive rights in sound recording enables the creator to communicate his piece to the public, and
make another piece by assimilating it and storing it in any medium.
6. Having exclusive rights in computer programmes entitles the creator to reproduce, adapt, make copies, and
store the programme and codes.
7. The author or creator has the right to sell his creation or give on rental his creations. It prohibits any person
to use an author’s creation in any way without his consent.

Copyright and originality

A person can enjoy the benefits of the Copyright Act, 1957 only if the work is original. Originality is a basic feature
of copyright. When a work is not original but a copy of some earlier work it is liable to be charged with
infringement. The word ‘originality’ is not explained in the Act. One has to rely on the rulings of the Courts to
understand ‘originality’.
One of the earliest rulings is the case of University of London Press, Limited vs. University Tutorial Press Limited
(1916). The Court held that ‘original’ does not mean that the work must be inventive or a thought over which no one
has expressed anything. It is not concerned with the idea but the way the idea is expressed. It does not require that
the idea is novel, but the work must not be a copy of another work. The expression of work should originate from
the author. Courts in India have been following this principle. A work is said to be a copy of another when after
seeing, reading, or hearing both works, one gets a feeling that the latter appears to be similar to the former.
In Veerabhadra Rao v. B.N.Sarma (1960) the issue was originality in the context of translation. The case involved a
Telugu rendering translation of the English book ‘Indian Police Action against Hyderabad’. The author had drawn
some materials from the English work and added many things from history and other sources. The book was more
informative and lucid. The Court held that it was an original composition of Mr. Sarma, though he had gathered
materials from the appellant’s book and historical facts. The original composition should not be confined to an idea
that has never been traversed by any person, in respect of ideas or materials. Original ideas are few, and many works
are based on the contribution or ideas of others. It depends upon the knowledge and talent of the author to assimilate
and reproduce a product that is different from the earlier work and is able to distinguish his work from the earlier
work. Copyright requires a very low standard of ‘originality’. A person seeking copyright must show his effort and
creativity in making the work.
Copyright need not be registered. The author of a book or the publisher of a book has a copyright over the book till
the day it comes into public view. The creator of a painting, drawing, sound recording, performer, or cinematograph
film has a copyright from the day it is in the public domain. Nobody can reproduce, adapt, or use any part of it
without the consent of the author or creator. It would be like trespassing into the private property of the author.
Author and owner under copyright
The author and owner of a work can be two different people.
1. The author is the person who creates the work. The owner may be a different person or entity. An owner is
a person who has bought the rights over the work from the author.
2. The author may be commissioned by the owner for some remuneration. The person commissioning the
work is the owner of the copyright unless there is an agreement to the contrary. The owner hires the
services of the author to create the work. In such a case the author has a moral right over his work.
3. The author has a right to be identified as to be the author and object in case his work is mutilated, distorted,
or modified without his consent and prohibits the owner of copyright from doing any act that would be to
the detriment of the honour or reputation of the author. This is known as the moral right as laid down under
Section 57 of the Copyright Act, 1957. They are non-transferable. An author can seek damages or
restraining orders even after the author has sold the rights of his work.
The Court interpreted Section 57 of the Copyright Act, 1957 in the case of Manu Bhandari vs Kala Vikas Pictures
Pvt. Ltd (1986). Manu Bhandari, a reputed novelist had sold her rights of a Hindi novel to producers for producing
the novel into a Hindi film. Manu Bhandari objected to the changes made in the film as they would likely damage
the reputation of the author. The Court held that though the author had sold her rights in the novel, and considering
she had agreed to certain changes in the novel as is bound to be in its adaptation from novel to film, it is the duty of
the director, to interpret the novel and make it into a film and to see that the reputation of the author is not tarnished.
The Court directed the release of the film after the deletion of some scenes from the film.

Performer’s rights under copyright law

The Copyright Act of 1957 grants rights to performers, who may be a singer, an actor, a musician, a dancer, a
magician, person delivering a lecture or any such person giving a performance. Sections 38 and 39 of the Copyright
Act, 1957 lay out the rights of performers. It gives the right to the performers against recording and exhibiting their
performance without their consent. The owner of the place exhibiting such recording is also liable to be charged as
an infringer. It shall not apply to a rebroadcast of a consented broadcast. A performer has a right to claim damages in
case of distortion, mutilation, or any modification of his performance without his consent, that may prejudice his
reputation and honour. Singer Neha Bhasin claimed her name to be displayed as a singer and not as a backup singer
where it was proved her song was recorded and later exploited without her consent.

Term of copyright under the Copyright Act of 1957

The term of copyright in literary, dramatic, artistic, or musical work is for a period of the lifetime of the creator plus
a period of sixty years after the death of the creator. Where there is the presence of multiple authors, the term 60
years is calculated post the death of the last author. The same has been guaranteed by the Copyright Act, 1957.
It is necessary to note that for cinematograph films, sound recordings, photographs, posthumous publications,
anonymous and pseudonymous publications, works of government and works of international organisations, the 60
years period is calculated from the year of publication. In case these ranges of work remain unpublished, copyright
subsites up to 60 years from the date the original work is said to have been created.
Further, when it comes to sound recordings, the period of 60 years is calculated from the end of the year in which
that sound recording is said to have been published for the first time. When it comes to the rights of the broadcasters,
the validity of the right has been provided with a period of 25 years from the year of broadcast, whereas the
performer’s rights that have been our subject matter of discussion previously last for a period of 50 years from the
year in which the performance was made.
Scope of copyright in India
The scope of copyright in India has received an understanding in the previous paras already. All one needs to know
is that Section 13 of the Copyright Act, 1957 is the express provision that lays down the scope of copyright in India.
Each category of work that has received the attention of the statute, have been detailed separately in different
provisions of the Act thereby making room for exclusive rights that have been associated with each of the
provisions. Sections 14, 37, 38 A are some of the significant provisions of the Act that have added to the concept of
laying down established rights for the owner of such work.
Further, a look into Section 16 of the Copyright Act, 1957 states that no copyright shall be in subsistence on works,
other than those which have been provided under the Copyright Act, 1957. Thus in simple terms, it can be stated that
copyright is a creation of a statute. It was in the case of Akuate Internet Services Pvt Ltd vs. Star India Pvt Ltd
(2013), where the concept of ‘hot news’ doctrine was introduced and the court had also interpreted who was
responsible for filing a suit thereby preventing others from publishing or sharing match information. This matter
awaits the view of the Supreme Court of India as of April 2021.

Recent developments made in the field of copyright in India

In the year 2021, certain changes were introduced in light of the advancement coming up in the field of copyright in
India, in the Copyright Act, 1957, by means of the Copyright (Amendment) Rules, 2021. The changes were
noticeable on 30th March, 2021, in the following ways:
1. The primary objective of introducing these rules was to bring the rules that were existing in conformity
with other relevant legislations in relation to copyright thereby also ensuring accountability and
transparency in governing of the rules.
2. The amendment of the Copyright rules was brought in with the purpose of smoothening the functioning of
the Copyright Office by means of making it work digitally with resources that were available. This also
reduced the burden of the Office.
3. The amendments have sought to incorporate a new provision in concern to the publication of a copyrights
journal which will thereafter be made available for the public to see in the Copyright Office.
4. Accountability and transparency was also to be ensured for the Copyright societies to function and
effectively work. The consequence of such demand has made the Societies to now draw up an Annual
Transparency Report for the public. This kind of report is typically inclusive of royalties collected and also
distributed, refusal of licences if any, transactions made with foreign societies for developed work, etc.
5. The extension of the period of deciding an application whether to be accepted or rejected for the purpose of
being granted with copyright, by the Registrar, from 60 to that of 180 days, is another notable change that
has been introduced by the amended rules. A thing to understand here is that the Registrar should not be
burdened with applications that would otherwise make him proceed with each of them in a speedy manner
thus resulting in errors. Thus a sufficient period of time must be vested on the Registrar.
6. The present requirement that the new amendment has been introduced for a copyright applicant to abide by
is the need to submit the first 10 and the last 10 pages of source code (the entire source code can be
submitted if the same is less than 20 pages, with no blocked portions).

Conclusion
As we come to the end of this article, it is ideal to state that copyright being a bundle of rights has been recognised
as one of the foremost forms of intellectual property rights that have been protecting creations in the form of
expressions since 1957. Alongside protecting the moral and economic rights of the author, it also serves as a
requirement for the public welfare or public necessity at large for that’s why a period has been specified, upon
completion of which, the work falls under public domain for learning and usage. Thus copyright being a collection
of rights have remained relevant since time immemorial.
Evolution of copyright

How did the concept of copyright evolve in India?

Pre-independence

The roots of copyright law in India can be traced back to the East India Company’s regime in 1847. During that
time, the work was not automatic and the registration with the Home office was compulsory in order to enforce the
copyright. The term of copyright extended to the lifetime of the author plus seven-years of post-mortem. In 1914 a
new copyright legislation was passed in India with a few modifications which are as follows:

1. Introduction of criminal sanctions in the case of infringement of copyright.

2. It broadened the term copyright and modified it as a ‘sole right’ wherein the author has the right to
reproduce, change, produce or publish a translation of work.

The legislation of 1914 continued till the coming of a new legislation in 1957 i.e. post independence era.

Post-independence

In 1957 a new Copyright law was enacted. Before the Act of 1957, the Act of 1914 was prevalent, which was an
extension of the British Copyright Act, 1911. Further in May, 2012 the Parliament of India unanimously passed a
bill named Copyright Amendment Bill, 2012. This Bill aimed to bring Indian copyright laws at international level
and in compliance with the World Intellectual Property Organisation treaties such as the WIPO Copyright Treaty
(WCT) and the WIPO Performance and Programme Treaty (WPPT). Further, the main highlights of the 2012
Amendment bill are:

1. Amendments in the right to artistic work such as cinematograph films and sound recordings.
2. Amendments in accordance with WCT and WPPT.
3. Amendments in the mode of grant of license and assignments.
4. Protection against internet piracy.

Copyright act 1957:

The Copyright Act, 1957, governs the law pertaining to copyright in India. The major goals of this copyright law are
twofold: first, to guarantee authors, musicians, painters, designers, and other creative individuals the right to their
creative interpretation; and second, to enable others to openly develop upon the concepts and knowledge made
available by a work. India’s history with copyright laws dates back to the British Empire’s colonial rule. A law
called the Indian Copyright Act, 1957, was passed; it went into effect in January 1958 and has since undergone five
revisions, in 1983, 1984, 1992, 1994, and 1999. The Copyright Act of 1957 was India’s first copyright law
following independence, and six amendments have been made since then. The Copyright (Amendment) Act 2012,
which was passed in 2012, was the most recent amendment. The concept of copyright in India is governed by the
Indian Copyright Act, 1957, as modified from time to time, and the Indian Copyright Rules, 1958 (Rules).

Copyright law as its name suggests is the simple law that suggests if you create something you own it and only you
get to decide what happens next with it. The objective of this copyright law is mainly twofold: first to assure
authors, composers, artists, designers and other creative people, who risk their capital in putting their works before
the public, the right of their original expression, and second to encourage others to build freely upon the ideas and
information conveyed by a work.

What is copyright

Copyright is a type of intellectual property right. Authors who have original works such as works of literature
(including computer programs, tables, collections, computer datasets, expressed in words, codes, schemes, or in any
other context, along with a device readable medium), dramatic, musical, and artistic works, cinematographic films,
and audio recordings are all awarded copyright safeguards under Indian law. Instead of protecting the ideas
themselves, Copyright Law safeguards manifestations of ideas. Literary works, theatrical works, musical works,
creative works, cinematographic films, and sound recordings all have copyright protection under Section 13 of the
Copyright Act of 1957. For instance, the Act protects literary works such as books and computer programs.

The term “copyright” refers to a collection of exclusive rights that Section 14 of the Act grants to the owner of the
copyright. Only the copyright owner or another person who has permission to do so from the copyright owner may
exercise these rights. These rights include the ability to adapt, reproduce, publish, translate, and communicate with
the public, among other things. Copyright registration just establishes an entry for the work in the Copyright
Register kept by the Registrar of Copyrights and does not grant any rights.

Historical development in India

In India, the earliest law of copyright was enacted by the British during the realm of East India Company that is the
Indian Copyright Act, 1847 which was passed for the enforcement of rules of English copyright in India. After it, by
Copyright Act 1911, this law was repealed, replaced and applied to all British colonies including India. Further, it
was again modified in 1914 by the Indian Copyright Act, 1914, which remained applicable in India until replaced by
the Copyright Act, 1957 by the parliament of sovereign India.

Objectives of copyright law

Copyright is primarily intended to advance science and useful art and to compensate authors for their labour. In
order to do this, copyright guarantees authors the right to their creative expression while allowing others to openly
expand upon the concepts and knowledge presented in a work. The primary goals of copyright law are twofold. First
and foremost, copyright laws were created by nations to guarantee the original expression of writers, songwriters,
designers, artists, and other creatives, as well as film and sound recording producers, who risked their money to
present their works to the public.

Second, a work’s knowledge and suggestions can be freely expanded upon by others, thanks to copyright legislation.
Additionally, it permits some unrestricted uses of copyrighted content. The Copyright Act of 1957 outlines the range
of these permissible uses. To establish harmony between the rights of the copyright owner and the welfare of people
to the greatest possible degree in the interest of society, measures relating to free use are included in the Act. The
Madras High Court held that “copyright law is to preserve the fruits of a man’s effort, labour, talent, or test from
annexation by other persons” in Sulamangalam R. Jayalakshmi v. Meta Musicals, Chennai (2000).

Nature of copyright

In nature, copyright is an incorporeal property. The premise that the legitimate owner developed or created the work
justifies the property in it. The property owner has two options for disposing of his property: outright sale
(assignment of his rights) or licensing. Copyright is also a collection of exclusive rights. A negative right is one that
allows the owner to stop someone from copying his creation or carrying out any other actions that, under Copyright
Law, are only permitted to be carried out by him. The exclusive rights to works protected by copyright have a term
limit. In contrast to physical property, which endures for the lifetime of the thing on which it is bestowed, copyright
only exists for a finite amount of time. After this time period has passed, the work enters the ‘public domain’. In
other words, it becomes public property and is available for use without restriction by everyone. Therefore, the
public interest is served by exclusive rights to copyrighted works for a short time.

Salient features of the Copyright Act, 1957

The salient features of the Copyright Act, 1957 are herein mentioned below:

Scope of rights conferred to the author

Literary works, musical works, theatrical works, creative works, sound recordings, and cinematographic films are all
protected by copyright under Section 13 of the Copyright Act of 1957. Literary works, for instance, books,
manuscripts, poetry, and theses are safeguarded by the Act. Original literary, dramatic, musical, and artistic works as
well as cinematographic and sound recordings are shielded from illegal access under the Copyright Act of 1957. In
contrast to patents, copyright safeguards expressions rather than ideas.

Provisions to assert the ownership

The original owner of the copyright is the creator of the work itself, as stated in Section 17 of the Copyrights Act of
1957. The one exception to this rule is when an employee creates work while performing duties as part of their
employment, in which case the employer assumes ownership of the copyright.

Civil and criminal remedies

Section 55 of the Copyright Act of 1957 addresses civil remedies for copyright infringement. These civil remedies
encompass restitution, injunctions, account interpretation, deletion and surrender of copies made infringing, as well
as conversion damages. Section 63 of the Copyright Act of 1957 specifies criminal penalties for copyright
infringement. These criminal penalties can take the form of jail time, fines, searches, the seizure of contraband, etc.
The maximum sentence for imprisonment is 3 years, but it cannot be less than 6, and the maximum fine is between
50,000 and 2,00,000 rupees.

Establishment of copyright boards and offices

The Copyright Act of 1957 also makes provisions for the establishment of a copyright board to assist in resolving
copyright-related issues and a copyright office, which comes under the jurisdiction of the Registrar of the Copyright,
for the registration of books and other “works” of art. The establishment of an office to be known as the Copyright
Office for Act purposes is provided for under Section 9 of the Copyright Act, 1957. The Copyright Board was
established under Section 11 of the Copyright Act of 1957.

Important sections of the Copyright Act, 1957

The following are the important sections of the Copyright Act of 1957:
 ● Section 2 deals with various definitions of the work which can be covered under the definition of
copyright. For example, Section 2(o) deals with literary works, Section 2(h) includes all dramatic
works under the definition of copyright protection, and Section (p) deals with musical and graphical
works.
● Section 13 of the Copyright Act, 1957, is the most requisite Section as it deals with the subject matter
of copyright protection. According to Section 13(1), all of India is under the purview of the Copyright,
and the following classifications of works are protected by the Copyright:
1. Original artistic, musical, dramatic, and literary works
2. Sound recording
3. Cinematograph films

The published and unpublished works of architecture are discussed in Section 13(2). If the work is published, it must
be published in India. If the work is published outside of India, the author must be an Indian citizen at the time of
publication or at the time of his death. Except for works of architecture, the authors of unpublished works must be
Indian citizens or have a place of residence in India. When it comes to architectural works, only the work itself must
be from India and not the architect, because architectural works can also be done in written form. The copyright in
an architectural work shall only apply to the creative character and design and shall not include the construction
process or processes.

● A few rights are protected under copyright legislation. These three types of rights are common or
economic, moral, and neighbouring. According to Section 14, moral rights are granted under Section
57, economic rights are granted under Section 14 and neighbouring rights are granted under Sections
37A and 378.

Fee application for copyright registration in India

Based on the kind of work covered by copyright legislation, creators interested in registering for copyright
registration must pay a specified fee. See what these costs are for the different kinds of projects below.

Copyright protection for Fee charged by the copyright office

Artistic, musical, drama and literary works Rs. 500 per work

Artistic and literary works used for goods Rs. 2000 per work

Sound recording Rs. 2000 per work

Cinematograph films Rs. 5000 per work

Subject matter of copyright

All subject matters protected by copyright are called ‘works’. Thus according to Section 13 of The Copyright Act
1957, it may be subjected for the following works:

● Original Literary Work,

● Original Dramatic work,
● Original Musical work,
● Original Artistic Work,
● Cinematography films, and
● Sound recordings.

Original Literary Work

It is the product of the human mind which may consist of a series of verbal or numerical statements, not necessarily
possessing aesthetic merit, capable of being expressed in writing, and which has been arrived at by the exercise of
substantial independent skill, creative labor, or judgment. The Copyright Act, 1957 provides an inclusive definition
of literary work, according to which the literary work includes computer programming, tablets, and compilations
including computer databases.

Original Dramatic Work

According to the Copyright Act,1957, the dramatic work includes any piece for recitation, choreographic work or
entertainment in dumb shows, the scenic arrangement or acting form which is fixed in writing or otherwise but does
not include a cinematographic film. Since the definition is an inclusive one, the other things fall within the general
meaning of dramatic work, and may also be covered by the definition.

Original Musical Work

According to the Copyright Act, 1957, musical work means any work consisting of music and includes any
graphical notion of such work, but does not include any words or any action intended to be sung, spoken or
performed with the music. In order to qualify for copyright protection, a musical work must be original.

Original Artistic Work

According to the Copyright Act, 1957, artistic work includes any painting, sculpture, drawing, or engraving
photograph of any work possessing artistic qualities. However, it also includes the architecture and artistic
craftsmanship of such works.

Cinematographic Films
According to the Copyright Act,1957 cinematographic films includes any work of visual recording and a sound
recording accompanying such visual recording and the expression cinematograph shall be construed as including
any work produced by any process analogous to cinematographic including video films.

Sound Recording

According to The Copyright Act, 1957, sound recording suggests a recording of sounds from which that sound may
be produced regardless of the medium on which such recording is made or the method by which the sounds are
produced.

Clause (a) of this Section 13 provides the definition of original work whereas clauses (b) and (c) protect by-product
works. This Section stipulates that copyright is subject to the provisions of the aforesaid Section and therefore the
different provisions of the Act don’t exist de-hora and outside the ambit of the Act, it’s a right created under the
statute and no right outside the aforesaid Act is claimed.

Rights of the copyright holder

In the Copyright Act, 1957, the owner possesses the negative rights which are to prevent others from using his
works in certain ways and to claim compensation for the usurpation of that right. In this Act, there are two types of
rights given to the owner:

● Economical rights;
● Moral rights.

Economic rights

This right is also known as the Exclusive Rights of the copyright holder provided under Section 14. In this Act
different types of work come with different types of rights. Such as:

In the case of original literary, musical, and dramatic work:

● Right to reproduce;
● Right to issue copies;
● Right to perform at public;
● Right to make cinematography and sound recording;
● Right to make any translation;
● Right to adaptation; and
● Right to do any other activities related to the translation or adaptation.

In the case, of computer program work:

● Right to do any act aforesaid mentioned; and

● Right to sell, rent, offer for sale of the copyrighted work.

In the case of artistic work:

 ● Right to reproduce;
● Right to communicate;
● Right to issue copies;
● Right to make any cinematography and sound recording;
● Right to make an adaptation; and
● Right to do any other activities related to the translation or adaptation.

In case of a cinematograph film work:

● Right to sell, rent, offer for sale of the copyrighted work; and
● Right to communicate.

In the case of a sound recording work:

● Right to communicate;
● Right to issue copies; and
● Right to sell, rent, offer for sale of the copyrighted work.

Moral rights

In addition to the protection of economic rights, the Copyright Act, 1957 conjointly protects ethical rights, that is
due to the actual fact that a literary or inventive work reflects the temperament of the creator, just as much as the
economic rights reflect the author’s need to keep the body and the soul of his work out from commercial
exploitation and infringement. These rights are supported by Article 6 of the Berne Convention of 1886, formally
referred to as a world convention for the protection of literary and inventive works, whose core provision relies on
the principle of national treatment, i.e. treats the opposite good as one’s own.

Section 57 of The Copyright Act,1957 recognize two types of moral rights which are:

● Right to paternity– which incorporates the right to assert the authorship of the work, and the right to
forestall others from claiming authorship of his work; and
● Right to integrity- which incorporates right to restrain, or claim of damages in respect of any
distortion, modification, mutilation, or any other act relates to the said work if such distortion,
multiplication or alternative act would be prejudiced to claimant honor or name.

Authorship and Ownership in copyright

Section 17 of this Act recognizes the author as the first owner, which states that subject to the provision of this Act,
the author of a work shall be the first owner of the copyright therein:

● In the case of literary or dramatic composition, the author,

● In the case of musical work, the musician,
● In the case of creative work apart from photography, the artist,
● In the case of photographic work, the artist,
● In the case of cinematographic or recording work, the producer,
 ● In case of any work generated by any computer virus, the one who created.

However, this provision provided to bound exception:

● In case of creation is made by the author underemployment of the proprietor of any newspaper,
magazine or any periodic, the said proprietor,
● In the case where a photograph is taken, painting or portrait is drawn, cinematograph is made for the
valuable consideration of any person, such person,
● In case of a work done in the course of the author’s employment under the contract of service, such
employer,
● In case of address or speech delivered on behalf of another person in public, such person,
● In the case of government works, the government,
● In the case of work done under direction and control of public undertaking such public undertaking,
and
● In the case of work done in which provision of Section 41 apply, concerned international organizations.

Assignment of copyright

The owner of the copyright can generate wealth not only by exploiting it but also by sharing it with others for
mutual benefit. This can be done by the way of assignment and licensing of copyright.

Only the owner of the copyright has the right to assign his existing or future copyrighted work either wholly or
partly and as a result of such assignment the assignee becomes entitled to all the rights related to copyright to the
assigned work, and he shall be treated as the owner of the copyright in respect of those rights.

Mode of the assignment agreement

As per Section 19, these conditions are necessary for a valid assignment:

● It should be in writing and signed;

● It should specify the kinds of rights assigned and the duration or territorial extent; and
● It should specify the amount of royalty payable if required in any case.

It is also provided that, if the period is not mentioned in the agreement it will be considered as five years and if the
territorial extent is not stipulated in the agreement, it will be considered as applicable to the whole of India.

Disputes related to the assignment of copyright

According to the Copyright Act, 1957, the appellant board where the receipt of the complaint by the assignor and
after holding necessary inquiry finds that the assignee has failed to make the exercise of the rights assigned to him,
and such failure is attributed to any act or omission of the assignor, may by suitable order, revoke such assignment.
However, if the dispute arises with respect to the assignment of any copyright then that appellate board may also
order the recovery of any royalty payable.

Operation of law in assignment

According to The Copyright Act, 1957, where under a bequest a person is entitled to the manuscript of any literary,
dramatic or any other kind of work and such work has not been published before the death of the testator, unless the
contrary is proved such person shall be treated as the owner for such work.

Infringement and remedies

Where a person intentionally or unintentionally infringes the rights of the copyright holder, the holder may be
subject to the following remedies available under this Act.

Civil remedies

These remedies are given under Section 55 of the Copyright Act,1957 which are:

Interlocutory injunction

This is the most important remedy against copyright infringement, it means a judicial process by which one who is
threatening to invade or has invaded the legal or equitable rights of another is restrained from commencing or
continuing such act, or is commanded to restore matters to the position in which they stood previous to the relation.
Thus for granting the interlocutory injunction, the following three factors are considered as necessary:

● Prima facie case, is an assumption of the court that the plaintiff can succeed in the case and become
eligible for relief.
● Balance of convenience, in it the court will determine which parties suffer the greater harm, this
determination can vary with the facts of each case.
● Irreparable injury, it is difficult to decide and determine on a case-by-case basis. Some examples of it
include- loss of goodwill or irrevocable damages to reputation, and loss of market share.

Mareva injunction

This is a particular form of the interlocutory injunction which restrains the defendant from disposing of assets that
may be required to satisfy the plaintiff’s claim or for removing them from the jurisdiction of the Court.

Anton Piller order

This order is passed to take into possession the infringed documents, copies and other relevant material of the
defendant, by the solicitor of the plaintiff. This order is named after the famous case of Anton Piller KG v/s
Manufacturing Process Ltd, 1976. In this case, the plaintiff Antone Piller, the German manufacturer is successful in
passing ex-parte awards of restraining the use of his copyrighted products against the defendant.

John Deo’s order

In this order, the Court has the power to injunct rather than those impeded in the suit, who may be found violating
the rights in the field of copyright. Thus this order is issued against the unknown person, who has allegedly
committed some wrong, but whose identities cannot entertain the plaintiff.

Pecuniary remedies
There are three types of pecuniary remedies provided:

1. An account of profit, lets the owner seek the sum of money made, equal to the profit made through
unlawful conduct.
2. Compensatory damages, which let the copyright owner seek the damages he suffered.
3. Conversational damages are assessed to the value of the article.

Criminal remedies

Section 63 of the Copyright Act provides for criminal remedies if there is any copyright infringement. According to
Section 63 of the Act, anyone found guilty of willfully violating or aiding in the violation of a work’s copyright will
be sentenced to at least six months in prison and a fine of at least 50,000 rupees. A person who is found guilty under
Section 63A a second time faces an additional sentence of imprisonment for a term not less than one year and a fine
that cannot be less than one lakh rupees due to the widespread copyright infringement. According to Section 63B, a
person who intentionally uses an illegal copy of computer software on a computer faces a minimum seven-day
sentence in jail and a fine of at least 50,000 rupees.

For infringement of copyright, the criminal remedies provided under Section 63:

● Imprisonment, not less than 6 months which may extend up to 3 years;

● Fine may not be less than 50,000 which may extend up to 2,00,000;
● Search and seizure of copyrighted goods; and
● Delivery of copyrighted goods to the copyrighted owner.

In the case of repeat offenders, minimum punishment terms of 1 year and fine of 1 lakh however, the highest
punishment will be the same as the first time offender.

Exceptions

This act shall not constitute copyright infringement in cases of:

Fair Dealing

Fair dealing is the statutory limitation on the exclusive right of the copyright owner which permits reproduction or
use of copyrighted work in a manner that otherwise would have constituted infringement. This law is given under
Section 52 of the Copyright Act,1957 according to which the free uses can be made for any work except computer
program for the purposes:

● For private and personal use including research,

● For criticism and review,
● For reporting of current events or issues including lectures in public,
● For broadcasting in cinematographic films or by posting photographs,
● For reproduction and reporting of any judicial proceeding,
● For reproduction, or publication of any kind of work prepared by the secretariat of a legislature,
● For reproduction of any kind of work in a certified copy made or supplied accordance with any law,
 ● For reading and recitation of any literary or dramatic work in the public domain,
● For publication of any non-copyright matter bonafide intended for the use of educational institutes, and
● For recording any sound by the owner of the right in the work.

Landmark case laws

R.G. Anand v. M/S. Delux Films and Others (1978)

Facts

The respondent is a film production firm, while the appellant is a playwright and an architect by profession. In the
year 1953, the appellant wrote a play titled “Hum Hindustani,” which was performed in New Delhi the following
year, in the year 1954. The play was so popular that it was presented again in Calcutta in the years 1954, 1955, and
1956. Due to the play’s popularity, the appellant sought to have it made into a movie. The appellant’s purpose was
made known to the respondent, and the two met in New Delhi to talk about the possibility of hearing it. The
respondent was given a detailed explanation of the entire play by the appellant, but no promise to film it was made
by the respondent. In 1956, the respondent produced a film titled “New Delhi,” which was thereafter released. After
watching the film, the appellant claimed that the respondents had plagiarised his play and used it as the basis for a
movie without his consent. The appellant then presented a case to the Delhi District Judge. The appellants argued in
court that the play and movie share striking parallels and are both founded on the same concept, namely
“Provincialism.” The District Judge, however, disagreed with the appellant’s assertion following the arguments.

Issues

Whether the plaintiff’s copyright in the play “Hum Hindustani” was violated by the defendants’ distribution,
production, and screening of the movie “New Delhi”?

Judgment

The Court’s judgment was given by Justice Fazal Ali. The Court determined that even if both the play and the movie
may have been inspired by the concept of “Provincialism,” they are very different from one another. The movie also
depicts other aspects of “Provincialism,” such as “Provincialism” in the leasing of outhouses, which are not depicted
in the play when it comes to marriage. The play doesn’t illustrate the evils of dowry, but the movie does. Because
the concept in both the play and the movie is identical, the court struck down the appellants’ claim because it is
well-established law that a concept cannot be protected by copyright. The Court cited N.T. Raghunathan and Anr. v.
All India Reporter Ltd., Bombay (1957), and held that there may be some similarities. According to the Court, a
regular person would not consider the play and the movie to be a duplicate of the play if they were to view both. The
claim made by the appellants that their copyright has been violated cannot stand due to the significant disparities
between the play and the movie. The Delhi High Court’s decision has been maintained court. As a result, the Court
ruled in favour of the respondents on both matters, and thus there was no violation.

Super Cassettes Industries Ltd. v. Music Broadcast Pvt. Ltd. (2012)

Facts
The case between Music Broadcast Pvt. Ltd. (MBPL) and Super Cassette Industries Limited (SCIL) over the
determination of a licence agreement’s royalty rate gave rise to the interim orders made by the Copyright Board,
which are the subject of this appeal. In accordance with the Memorandum of Understanding (MoU) between the two
parties, if the parties are involved in lawsuits and a court or arbitration board, whether in an interim or final order,
specifies a rate that is distinct from what the parties have agreed upon, MBPL shall make payments to SCIL at the
altered rate so specified by the court or arbitration board, with immediate effect so specified in such an order. The
appellant had sought the Copyright Board in 2001 to seek redress against the respondent’s inflated royalty fee claim.
The Board had granted an obligatory licence in favour of the appellant for 661/- per needle hour based on the initial
evidence, the balance of convenience, and irreparable damage. The respondent argues that, in accordance with
Section 31 of the Copyright Act of 1957, the Copyright Board lacks the express authority to issue such interim
decisions and asks for the orders granted by the Copyright Board to be revoked.

Issue

Whether the Copyright Board has the authority to issue temporary orders and determine the royalties for a temporary
order in proceedings under Section 31 of the Copyright Act, 1957?

Judgment

The Copyright Board was ordered for the purpose of setting an interim fee, and this Court stated that the Board had
the authority to rule on both the interim and final terms of a compulsory licence. Considering the subject matter of
the Special Leave Petitions, the Court declined to issue an interim stay of the Copyright Board’s order.

Tips Industries Ltd. v. Wynk Ltd. and Anr. (2019)

Facts

The Indian music label Tips Industries Ltd. (Plaintiff) has the copyright to a sizable music archive, and in 2016 it
allowed Wynk Music Ltd. (Defendant) permission to access this archive. Both parties attempted to renegotiate the
licensing terms at the licence’s expiration but were unsuccessful, thus Wynk sought protection under Section 31D of
the Copyright Act. Tips contested Wynk’s use of Section 31D and filed a lawsuit against Wynk under Section 14(1)
(e) for violating their exclusive sound recording rights.

Issue

Whether the Copyright Act has a legislative licensing scheme for streaming platforms?

Judgment

The Bombay High Court reached a decision after hearing the arguments from both parties and concluded that Wynk
had engaged in direct violation on two counts: firstly, by making the copyrighted work available under Section 14(1)
(e)(ii), which allowed users to download and subscribe to the plaintiff’s work offline; and secondly, by making the
plaintiff’s works available to users via their streaming platform. The decision was made in the plaintiff’s direction,
and the Court determined that the plaintiff was eligible for an interim injunction since they had presented a strong
case and would incur severe financial damage.

Sanjeev Pillai v. Vennu Kunnapalli (2019)

Facts

The appellant, director, and screenwriter Sajeev Pillai, asserted to have done a background study on the great
festival of Mamankam and written a script for a film based on the same epic. He signed a Memorandum of
Understanding with the Kunnapalli-related Kavya Film Company after meeting Venu Kunnapalli. Initially
designated as the director, Sajeev’s position was later removed and filled by someone else. After that, the movie’s
filming was finished, according to Sajeev, who claimed that his script had been altered, mutilated, and otherwise
changed. In light of this, Sajeev filed a lawsuit and requested a number of reliefs. A request for an interim injunction
was also made to prevent the respondents from publishing, releasing, disseminating, and exploiting the movie and
from releasing pre-release advertising without adequately crediting Pillai as the author in accordance with film
industry norms.

Issue

Whether Section 57(1) of the Copyright Act grant the creator of a work particular rights to assert authorship of that
work even after the assignment of that work?

Judgment

In reaching its decision, the Court stated that Section 57(1) grants the author the right to enjoin third parties, and its
second sub-section grants the author the right to sue those third parties for damages if their actions result in
deformations, destruction, or other alteration of his work or in any other action related thereto that would be
detrimental to his dignity or reputation. This gave the appellant an unmatched edge in the situation and ensured that
his assignment of the work would preserve his legal claim to authorship.

Lacunae in the Copyright Act

The development of copyright law has a lengthy and complicated history. It has been in the evolving phase for
centuries. This is a result of how quickly technology is evolving. The old law is becoming obsolete when new
methods are discovered, especially when it comes to non-literal works. Because copyright infringement is so
subjective in nature, it is frequently exceedingly challenging to come to a verdict on cases involving it. Thus, in
order to reduce this subjectivity and effectively address this issue, we need new regulations that are specifically
related to copyright.

Conclusion

The copyright law is considered as an essential law of protection for a country because it enriches its national
cultural heritage of it. However, higher the level of protection given to literary, dramatic, musical or artistic work in
any country, automatically higher is the number of intelligent creation, i.e. higher its renown. Thus, in the final
analysis, we can say for economic, cultural and social development, it is the basic perquisites.

Doctrine of fair use:

What is fair use

As mentioned above, fair use is an exception to the infringement of copyright and enables a narrow usage of
copyrighted works without the prior consent of the individual holding copyright against the original copyrighted
work. It allows the usage of copyrighted work, provided some value is added to the original copyrighted piece of
work. It is pertinent to know that adaptive and derivative works of an original work do not fall under the category of
fair use doctrine exceptions. The factors considered for a piece of work to fall under the ambit of fair use are
discussed in detail below.

What is fair dealing

Fair dealing is another exception to copyright infringement in countries like Canada, Australia, Great Britain, New
Zealand, etc. These countries’ copyright acts include provisions for copyrighted works that do not constitute
infringement if the dealing is specified in the act; in other words, if an original work is copied for a purpose other
than the statutory fair dealing purposes, the copyright cannot be considered a fair dealing, regardless of the
intentions of the individual copying the work.

In India, the terms “fair use” and “fair dealings” are used interchangeably. Let us understand the key differences
between the two terms.

Difference between fair use and fair dealing: a tabular representation

Prima facie the terms ‘fair use’ and ‘fair dealing’ may sound synonymous to each other, but their scope and meaning
are distinct as portrayed below:

Fair use Fair dealing

Applicability For fair use, the application list is quite Fair dealings only apply to those uses or
illustrative and subjective. exceptions mentioned in the law.

Scope Fair use has a wider scope, as only the Whereas the scope of fair dealings is narrower in
test of fairness has to be passed, even if comparison to fair use, as fair dealings are
used for an unspecified purpose. applicable only for specific purposes as opposed
to fair use.

Nature Fair use is flexible and resistant to The fair dealing exceptions are said to be
change, especially those that lead to uncertain too, especially for terms like ‘parody’
uncertainty. and ‘satire’ that are not defined under any
provision.

Where is the principle of fair use applicable

As mentioned above, the principle of fair use is applicable in cases of “transformative work”. For instance, one can
refer to or copy certain parts of the copyrighted work to create their own work in cases of criticism or parody,
among other things.
The quantity and whether the usage is just under the fair use doctrine will depend on the discretion of the court to a
large extent. The court, while determining the same, will consider the circumstances and facts of the case.

Fair use under Indian Copyright Law: an overview

Section 52 of the Copyright Act, 1957

Section 52 of the Copyright Act, 1957, has provisions regarding exceptions to copyright infringement and limited
usage of the already copyrighted work of an individual without prior permission. The entire Section has provisions
on what constitutes fair use and fair dealings under the Copyright Act. These exceptions, along with other
exceptions to the fair use doctrine, are discussed in brief below.

Berne Convention and TRIPS Agreements

The Berne Convention for the Protection of the Literary and Artistic Works, 1886, commonly known as the “Berne
Convention,” along with the TRIPS (Trade-Related Aspects of Intellectual Property Rights) Agreement, has
provisions for the incorporation of the “fair use concept” in national legislation.

Three-step test under the Berne Convention

The Berne Convention has a three-step test for fair use. It also asserts that the laws of the countries must mandatorily
have provisions for reproducing work in the following instances:

1. In certain special cases.

2. The original work must not be milked/exploited by the reproductive work.
3. The new reproductory work must not be prejudicial against the interest of its author(s).

Examples of fair use

There is no straight-jacket formula to establish whether something qualifies as fair use; hence, it is always advisable
to seek advice from a copyright attorney before taking on a significant activity that would depend on the fair use
doctrine as a copyright infringement defence. However, there are some instances that have been used to portray the
activities to which the doctrine is applicable. The following are some examples:

Quoting a few lines from a play

Re-quoting or using a couple of lines from a play, say, in a blog is permissible under the doctrine of fair use. The
reason behind this is that the amount of work copied is quite small, and the work in the blog is oftentimes used for
critical analysis. In other words, quoting or excerpting a work for the purpose of review, criticism, or comment is
acceptable under the fair use doctrine.

Sharing a video parody of a renowned song online

Let us assume someone has uploaded a video parody of a popular song to Instagram. Now a question might occur in
your mind, “Will that be fair use?” The answer will be yes because a parody is considered a transformative work as
it creates something new.

Non-profit educational uses

Suppose a professor, say, Ms. A, has uploaded a picture of the current president on her class website, stating that this
will be the topic of discussion in the next social science class as a part of the curriculum; this will be said to be fair
use considering the educational motive behind it.

New reporting

In a news report, if there is a summary of an article with proper annotations and credit, such use can come under the
fair use doctrine.

Any non-commercial use

Any work that is published for private commercial gain will not come under the principle of fair use.

Adaptation, derivative work, and transformative work under fair use doctrine

Before we dive into the nitty-gritty of the fair use doctrine, it is crucial that we understand the basics of it, and to do
so, we need to know the following:

What is adaptation

Adaptation can be described as the original work presented distinctly. Say, the transition of a novel like that of
Shakespeare’s Hamlet into a screenplay or J. K. Rowling’s famous novel, Harry Potter, into a movie.

What is derivative work

A derivative work can be defined as a work that is derived from one or more existing works but has enough original
elements. For instance, the Spiderman or Superman movie series.

What is transformative work

The term “transformative work” can refer to work that is entirely new yet has been inspired by an already existing
copyrighted work. For instance, the Assamese song “Bistirnapaarore” by Dr. Bhupen Hazarika took inspiration
from the song “Old Man River” by Paul Robson and also translated it into Bengali and Hindi by changing the lyrics
totally but keeping the essence of the song intact.

The conditions of fair use

Under copyright law, the only way to determine whether a particular use is fair use or not is via the federal courts.
The judges determine the fair usage policy with the four conditions, which are discussed in detail below. It is
pertinent to note that these factors act as guidelines for the courts to reach a decision; however, they are free to make
decisions based on the facts of the case at hand. In simple words, the judge has the right to determine whether a
particular usage is a fair use at his discretion.

The purpose and character of the use

The purpose and character of your intended use are of utmost importance when deciding whether the particular use
is fair use or not. While dealing with it, a question can be asked like the one mentioned below:

1. Whether you are creating something new or whether the news immaterial is just a copy of the original
piece.
2. Whether any value has been added to the original work by the new creation, such as new information,
new aesthetics, new insights, or the like.
3. Whether the new material that has been taken from the original work transformed into a new creation
by adding new expression or meaning to it.

It is pertinent to note that it is not a cakewalk to determine which creation is transformative or to what extent the
original work has been transformed. For instance, in the case of Warner Bros. Entertainment, Inc. v. RDR Books
(2008), the creation of the Harry Potter encyclopaedia (that made Harry Potter conditions available in one volume)
has been said to be “slightly transformative,” but the transformative quality was not sufficient for the creation to
come under the fair use doctrine.

The nature of the copyrighted work

There is more leeway in copying from factual works like biographies than from fictional works like plays and
novels, as the same proves beneficial to the public at large. Moreover, there will be a greater advantage in copying
from materials that are already published than from unpublished work, the reason being that the scope of fair use for
unpublished work is not as broad as it is for published work because it is at the author’s discretion to determine how
he/she would want to announce it to the public. Simply put, using information from primarily factual works will
have a greater advantage under the fair use doctrine than using purely fictional works.

The volume and substantiality of the part borrowed

It is oftentimes believed that the smaller the quantity of copied material, the greater the chances of it being excused
under the fair use doctrine, but that is not the case. Even if a small portion of work is copied, the same will not come
under the fair use doctrine if the copied work is said to have been taken from the “heart” of the original work. So, an
individual may get into trouble if he/she copies the most noteworthy aspects of the original creation. For instance, it
will most likely not be fair use to copy the words “I can’t get no satisfaction” from the song “Satisfaction.”

There is no straightjacket formula for how much quantity is a fair use; however, it is said one must not quote more
than a few words or paragraphs from a book, article, or poem, or add more than a chart, image, illustration, or any
other artwork in a book or newsletter without the permission of the artist. However, there is no absolute word limit
on fair use; for instance, adding 200 words from the copyrighted work to a 300-word new creation will not amount
to fair use. Nonetheless, copying 2,000 words from a work consisting of 500,000 words may amount to fair usage.
Ultimately, it all depends on the circumstances and the facts of the case.
The volume and substantiality of the part borrowed in the case of parody

The aforementioned rule does not have to be true in the case of parodies because the Supreme Court in the US case
of Campbell v. Acuff-Rose Music (1994) affirmed that “the heart is also what most readily conjures up the (original)
for parody, and it is the heart at which parody takes aim.” In short, as per the Supreme Court’s decision, a parodist
is allowed to borrow a larger portion, even the heart of the original work, to conjure up the original work.

The effect of the usage on the prospective market

Another crucial condition under fair use is whether the new creation divests the original copyright owner of income
or hinders the creation of a new or potential market for the copyrighted work. In any circumstance, if the original
copyright owner is deprived of any source of income, it is very likely that a lawsuit will be filed against the owner of
the transformative work, and the same will be so even when the new work is not competing with the original work.

For instance, in the case of Rogers v. Koons (1992), an artist, without taking prior permission from the owner of the
copyrighted work, i.e., the creator, created wood sculptures using the copyrighted photographs of the creator and
earned a huge amount of money by selling these sculptures. When the creator of the photographs sued the artist, the
artist contended that the sculptures were fair use as the photographer would never have considered making
sculptures using his photographs as a reference. However, the Court opined that it did not matter if the photographer
had considered making sculptures or not; what actually matters is whether there is scope for a potential market for
selling sculptures of the photographs or not.

The effect of the usage on the prospective market in case of parody

Even here, parody is given a distinct fair use analysis for the impact it would cause on the market, for there is a
possibility that a parody may reduce or even destroy the market value of the original work, i.e., there is a possibility
that the parody is so good that the public can never take the original work seriously ever again. Yashraj Mukhate’s
“Rasode Me Kon Tha Song” is one such example.

A circuit judge in the case of Fisher v. Dees (1986) asserted, “The economic effect of a parody with which we are
concerned is not its potential to destroy or diminish the market for the original—any bad review can have that effect
—but whether it fulfils the demand for the original.”

The fifth fair use factor: Are you good or bad

While studying cases on fair use, you might come across situations where the rules contradict the ones expressed in
this doctrine. Fair use includes subjective judgments, often affected by elements like the discretion of a judge or jury
or his individual sense of right or wrong. Irrespective of the fact that offending a judge is not fair use, an individual
should be aware that a morally offended judge or jury may rationalise its decision against fair use.

For instance, in the case of Original Appalachian Artworks, Inc. v. Topps Chewing Gum, Inc. (1986), a
manufacturer of novelty cards parodied the successful children’s dolls, the Cabbage Patch Kids. The parody series
was named “Garbage Pail Kids” and used repulsive and bizarre names and characters to ridicule the wholesome
image of Cabbage Patch.

Exceptions to infringement under fair use principle

Exceptions to infringement under Copyright Act, 1957

Under the Copyright Act, 1957, certain acts do not amount to infringement of copyright. Some of the exceptions are
as follows:

1. A fair dealing with any creation, not being a computer programme, for the purpose of-

i. Private or personal use, including research;

ii. Criticism or review, whether of the work or any other work;

iii. Covering current affairs and current events, including the coverage of a lecture given in public.

2. The reading or recitation in public of reasonable extracts from an already published literary or dramatic
work;
3. Reproducing any research work or private study with the motive of publication of an unpublished
literary, dramatic, or musical work kept in a library, museum, or other institution that is accessible to
the public at large.
4. The production or publication of any Act or set of rules or orders in a language that is not already
translated in or published, or produced by the Government.

The de minimus defence

There have been certain cases in the history of copyright law wherein courts, without even conducting the fair use
policy have given the authority to individuals to use it considering the amount of material copied. For instance, in
the motion picture Seven, a few copyrighted photographs appeared in the film, which prompted the copyright owner
to file a suit against the producer of the movie. The Court in this case [Sandoval v. New Line Cinema Corp. (1998)]
concluded that the photos “appear fleetingly and are obscured, severely out of focus, and virtually unidentifiable.”
The Court affirmed that the quantity of the copyrighted work occurring in the movie was less, excused the use of
photographs under the “de minimus” doctrine, and stated there was no need for any fair use analysis.

However, there have been cases where this doctrine has been declared unacceptable. For instance, in the case of
Ringgold v. Black Entertainment Television, Inc. (1997), the Court opined that using a copyrighted poster for 27
seconds in the background of the TV show “Roc” was not de minimus.

So, now you might wonder, what made this case any different from the one mentioned above, and why was the use
of photographs in the Seven case accepted and the use of posters denied? The Court stated that in the case at hand,
the poster was clearly visible and could be identified with enough observation for the “ average lay observer” to
view the imagery and colourful style of the creator.

Inspired work and fair use principle

While reading about fair use, a question might occur in your mind as to “whether inspired work will be an exception
under the fair use doctrine?” Let’s find out.
The exception of fair use doctrine for adaptive and derivative works

As stated above, adaptive and derivative works are not novel in nature, the reason being that they use and rely
particularly on the original work. So, they do not fall under the purview of fair use exceptions. Further, it is pertinent
to note that adaptive and derivative works are entitled to protection only after receiving proper licensing from the
owner of the original copyrighted work.

The exception of fair use doctrine for transformative work

Now you might think, “What about transformative work?” In the case of transformative work, the original work is
used as inspiration for creating the new work, perhaps an idea or expression transformed into something new, thus
offering insights into the previous work.

Chancellor Masters & Scholars of The University of Oxford v. Narendra Publishing House and Ors. (2008)

In this famous case, the Delhi High Court opined that the “fair use” doctrine is an essential part of copyright law.
One idea can be moulded into distinct ways to create new work, and the question of copyright infringement does not
arise here.

The main issue here was that a renowned publisher had published a book and mentioned in the agreement (between
the defendant and the publisher) that the copyright in the book vested with the publisher. It later occurred to the
publisher that the defendant was publishing guidebooks containing similar questions. The publisher then filed a suit
against the defendant on the grounds of copyright infringement.

The Delhi High Court held that since the manner of use of the defendant’s publication and that of the publisher’s
textbook was dissimilar, the defendant was said to have created a “transformative” work, not amounting to
infringement.

Interesting fact:

There is a week particularly dedicated to fair use and dealing in the United States and Canada, amongst other
jurisdictions. The 2023 Fair Use/Fair Dealing Week will commence on February 20, 2023. This annual week is
celebrated with the motive of promoting and discussing the opportunities presented, celebrating the stories of
success, and explaining the doctrine of fair use and fair dealing. Further, individuals from various sectors, like art,
music, film, academia, etc., flock together to share their experiences and promote the importance of fair use in their
community.

Fair use and freedom of speech

Fair use is another exception to the fair use doctrine and is quite an important legal tool in a free, democratic society
like ours. It will not be an exaggeration to state that fair use is as important as any of the fundamental rights
enshrined in the Constitution of India. Copyright holders have the legal right to protect their work from duplication
or distribution of copies in the public domain, as well as to prevent someone from creating derivatives of their work
or portraying their work to the general public; however, there are limitations to this right. If these exclusive rights
had not been limited, copyright holders would have had complete or near-complete control over the use of their
work. Without this fair use doctrine, the following consequences would have occurred:
 1. A politician would have complete control over the delivery of his speech and no news channel would
have the authority to publish it.
2. A researcher would have complete control over his/her work and could preclude another individual
from producing criticism or quoting the research.
3. An artist would have the right to charge every visitor who visited a museum where his work was on
display.
4. A publisher would have the right to charge a school for asking for remuneration every time a child
reads a book.
5. The entire genres of music like jazz, rap, and hip-hop would stop existing as the first person to create
the type would have the sole copyright to that genre of music.
6. A journalist would barely have any news to publish or address the audience at large, and the first
person to witness it would claim its copyright.
7. Academic fields like history, art, and modern literature would nearly disappear.

We, as a society, value education, individual participation in government, and free speech. Without a healthy use of
the fair use doctrine, there is a threat that individuals will lose their rights, which is why we need to balance the
usage of the fair use doctrine, even though the struggle to do so is ongoing.

Case laws on freedom of speech and fair use doctrine

Consim Info Pvt. Ltd v. Google India Pvt. Ltd. (2012)

The Madras High Court, in this case, ruled that any unauthorised use of a trademark must meet three conditions in
order to be considered “normative fair use,” namely:

1. The product or service in question must not be easily recognised without the use of the trademark.
2. Only as much of the mark or marks as is fairly important to recognise the product or service should be
engaged in.
3. The consumer must not do anything that implies sponsorship or endorsement by the trademark owner
while using the mark.

If only the aforementioned conditions are met, the defence of fair usage will be accepted.

Havells v. Amritanshu (2015)

In this case, the Delhi High Court reached a verdict that for any advertisement to be qualified as normative use under
the fair use doctrine and under Article 19 (freedom of speech and expression), it is important that the specific quality
or qualities of the product be specified, which distinguish the product from that of its competitor, and that the
comparison must be accurate and true.

UNIT-4

intellectual property in trademarks and the rationale of their protection:

Introduction
Trademarks were created to identify the economic origin of services or commodities in a certain location, but it has
long been assumed that trademark law was created to protect consumers’ interests and enhance the quality of
information accessible in the marketplace. Even in conventional trademark law, public interest has always played a
secondary role, as seen by the countless cases where courts rejected relief despite overwhelming proof that
consumers would not be misled. With the evolution and development of trademark law, it has been recognized that
the primary justification for trademark protection is and should be the intrinsic interest of commercial organizations
in preserving their brand value, rather than catering to public interests.

Trademarks – an overview

Any term, phrase, symbol, design, or combination of these things that distinguishes your goods or services can be
used as a trademark. It’s how clients know you and tell you apart from your rivals in the marketplace. Both
trademarks and service marks are referred to as “trademarks.” For products, a trademark is used, whereas, for
services, a service mark is used. A trademark helps you in the following ways:

● It identifies the source of your goods,

● It provides legal protection to your goods,
● It acts as a guard that protects your goods against fraud and counterfeiting.

The use of a trademark prohibits others from copying a company’s or individual’s products or services without
authorization. They also restrict any marks that have a high possibility of being confused with one that already
exists. This implies that a company can’t use a sign or brand name that looks or sounds the same as, or has the same
meaning as, one that’s already registered—especially if the products or services are comparable. Also, you can use
symbols with trademarks. The symbol helps customers and competitors know that you’re claiming the trademark as
yours. Even if you haven’t filed a trademark application, you can use Trademark (TM) for products and Service
Mark (SM) for services.

Trademark laws in India

The revised Trade Marks Act, 1999, which came into action on September 15, 2003, codified the Indian trademark
law. At the same time, the previous Trade and Merchandise Marks Act of 1958 was abolished. The revised
Trademarks Act of 1999 complies with World Trade Organization (WTO) guidelines and the TRIPS Agreement
(Trade-Related Aspects of Intellectual Property Rights), which India is a signatory to. The Trademark Act’s goal is
to give legal protection to trademark users, direct the conditions on the property, and provide legal remedies for the
enforcement of trademark rights.

The Trademark Act of 1999 empowers the police to make arrests in situations of trademark infringement. The Act
provides a comprehensive definition of the term “infringement,” which is commonly used. The Trademark Act
stipulates fines and punishments for violators. It also lengthens the time it takes to register a trademark, as well as
the time it takes to register a non-traditional trademark.

Why are trademarks important in a business

Business owners must understand why trademarks are valuable assets that may help them expand their company.
Below mentioned are some of the reasons which prove that trademarks are important for businesses:
 ● Trademarks are a powerful means of communication. Trademarks may express intellectual and
emotional qualities and signals about you, your organization, and its reputation, goods, and services in
a single brand or logo.
● Customers can easily discover you, thanks to trademarks. The market is saturated, and it’s difficult to
set your company apart from the competition. Trademarks/brands are a powerful commercial
communication tool for capturing customer attention and distinguishing your company, products, and
services. Customers who see a trademark quickly recognize whom they’re dealing with and the
company’s reputation and they’re less inclined to search for alternatives. Your brand might be the
deciding factor in a customer’s choice to buy it.
● Trademarks are valuable assets. Over time, trademarks can gain more value. Your brand will become
more valuable as your company’s reputation grows.
● Trademarks never expire.
● Trademarks can make the employment process go more smoothly. Brands can evoke pleasant emotions
in people’s thoughts. As a result, job possibilities are more appealing to job seekers. Employee
retention may be improved if employees are enthusiastic about the company’s brand and the products
and services it provides.

Importance of brand and its protection

● A brand is described as a name, design, symbol, or word that differentiates a seller’s services or goods
from those of others and is legally known as a trademark. Trademarks and brands, on the other hand,
are two distinct ideas that are frequently misunderstood. A trademark is primarily a legal term, but a
brand is a marketing notion that aids any firm in expanding its customer base. Trademarks are physical
objects such as a logo, picture, or design, whereas brands are intangibles that include a company’s
personality, identity, or connection.
● Businesses are continuously looking for ways to preserve their brand image by registering trademarks
since they know that once registered, their trademarks will endure as long as they are renewed
regularly. However, the brand value may vary as a result of a change in stance or profile, which
corporate groups vigorously resist using trademark protection.
● Businesses want trademark protection because it lowers customer search costs and identifies the
product’s point of origin, allowing them to reach a larger consumer base. It is also believed that most
companies follow the brand image and get trademarks registered so that they may get the goodwill of
their business. Companies use trademark protection to thwart pirates and unfair competition that harm
the company’s goodwill.
● Today, trademark law recognizes and protects merchandising rights, preventing competitors from
manufacturing identical items and passing them off as the original by utilizing the original company’s
logo or brand image. This demonstrates that the public interest comes second to brand image
preservation, because individuals who buy counterfeit items are aware that they are not licensed, and
they are not confused about the source or origin of the counterfeit products.

The economic aspect of trademarks

According to Article 15 of the TRIPS Agreement, a trademark is a symbol that distinguishes one product or service
from similar products or services. As a result, a commercial interest takes precedence over any public interest. The
TRIPS Agreement is based on the WIPO (World Intellectual Property Organization), Paris Convention, which also
provides trademark owners with an authorization right, which allows them to authorize a third party to use their
brand in exchange for a fee. These characteristics emphasize the economic justification for trademarks and
demonstrate why firms attempt to benefit from their registered trademarks.

The fundamental role of every profit-seeking firm should be the safeguarding of brand value to sustain consumer
loyalty. This can only be accomplished by trademark registration, as it allows buyers to identify between items or
services provided by various businesses. Furthermore, trademarks reduce transaction costs and provide vertical
restrictions that are cost-effective for every business. Any firm with a trademark registration holds the exclusive
right to use the mark and can sell or give nominal use rights to other businesses. Franchisors commonly use
trademarks to prevent franchisees from producing goods or services created by the parent business, while allowing
franchisees to focus on the distribution of such goods or services. This reduces market competition and aids the
trademark owner in maintaining his or her reputation without regard for the public interest. Economists claim that
trademarks serve as information capital by lowering consumer costs in determining the origin of any goods.

Case studies

In recent years, there has been a steady increase in the number of major trademark lawsuits in India. Some of the
rulings were historic in terms of the precedents they established. Here’s a look at some of India’s recent major
trademark disputes which show the importance of trademark in protecting the brand value of a company. Let us take
three famous cases which can show the role and importance of a trademark in the protection of brand value.

Yahoo!, Inc. v. Akash Arora & Anr (1999)

The first landmark case is of Yahoo!, Inc. v. Akash Arora & Anr (1999) which is based on cybersquatting. For the
first time in India, the Delhi High Court ruled that a domain name serves the same purpose as a trademark and is
entitled to the same level of protection. The defendant owned a domain name called “Yahooindia” that was identical
to and phonetically similar to the plaintiff’s trademark “Yahoo!” and the domain name “Yahoo.com”. According to
the Court, internet users would be deceived and misled into assuming that both domain names are from the same
source. The defendant claimed that it had posted a disclaimer on its website as a defense. However, it was noted that
a simple disclaimer was insufficient since the nature of the internet is such that the use of a similar domain name
cannot be remedied by a disclaimer, and it makes no difference whether or not ‘yahoo’ is a dictionary term. The
plaintiff’s name has acquired individuality and uniqueness as a result of its association with him. Hence, the
trademark protected the brand value of “Yahoo”.

The Coca Cola Company v. Bisleri International Pvt. Ltd. (2009)

The second most famous case is The Coca Cola Company v. Bisleri International Pvt. Ltd. (2009). In this case,
Bisleri, the defendant, had sold and transferred the trademark MAAZA, including formulation rights, know-how,
intellectual property rights, and goodwill for India, to Coca-Cola under a master agreement.

The defendant firm registered the mark MAAZA in Turkey in 2008 and began exporting fruit drinks under the name
MAAZA. Coca-Cola, the plaintiff, sought a permanent injunction as well as damages for trademark infringement
and passing off. The Court, in this case, issued an interim restraining order prohibiting the defendant (Bisleri) from
using the brand MAAZA in India or for export, citing trademark infringement.

Conclusion

Trademarks are helpful for business organizations as they allow the products to reach a better consumer base. The
primary justification for trademark protection is and should be the preservation of brand value since trademark
owners should be able to utilize their marks in whatever way they see fit. Because corporations cannot be obliged to
control their products according to public demands, the public interest is just a secondary consideration. Businesses
must earn a profit on their investment and utilize their resources to the fullest extent feasible. Because, typically
when a corporate entity registers a trademark that is not yet renowned, there is no underlying public interest in
registering that property, the fundamental goal of trademark law is to protect brand value and business.
The primary goal of any business is to make money, and this should be the primary motivation for trademark owners
to seek trademark protection. Only by creating a brand value that is identifiable and dependable will clients or the
general public be able to distinguish between different items or services. As a result, the public interest is a
secondary factor that motivates businesses to seek trademark protection by registering their marks, images, logos,
signs, and names. The advantages derived from a company’s goodwill cannot be denied to it in the name of public
interest, and this should be the most essential aspect of trademark law.

The Trade Marks Act, 1999

Introduction

With the globalisation of commerce, brand names, trade names, marks, and so on have become extremely valuable,
necessitating consistent minimum standards of protection and effective enforcement mechanisms, as recognised by
the Trade-Related Aspects of Intellectual Property Rights,1994 (TRIPS). In light of this, the previous Indian Trade
and Merchandise Marks Act, 1958 (repealed), was thoroughly reviewed and amended, and the new Trade Marks
Act, 1999, was adopted. The aforementioned Act of 1999, adheres to TRIPS and is in compliance with international
systems and practices.

The Trade Marks Act, among other things, allows for the registration of service marks, the filing of multiclass
applications, the extension of the period of registration of a trade mark to ten years, and the recognition of the idea
of well-known marks. India observes not only codified law but also common law principles, and as such allows for
infringement and passing off lawsuits against trade mark infringement.

The author will analyse The Trade Mark Act, 1999 in this article by discussing its genesis or history, as well as the
necessity for and aspects of the Act. The author will also go over the subject of trade mark registration in depth in
the article.

What is a trademark

Trade Marks are significant corporate assets, and while registration is not required by law, it is recommended since
unregistered trademarks receive little protection. If another firm tries to use the same or a similar mark after
registration, there will be a suitable legal procedure to block it. A trademarked name distinguishes all of the
proprietor’s products and services from those of others, and it also protects the proprietor’s reputation from damage
due to counterfeit items.

A trademark is valid for ten years and can be renewed indefinitely if further payments are paid from time to time in
the manner prescribed by the country’s laws. Trade Mark rights are private property rights that are enforced by
judicial orders. Because India is a party to the Paris Convention and the TRIPS agreement, the Act complies with its
principles.

To comprehend the legal definition of a trademark in India, we must first comprehend ‘The Trade Mark Act, of
1999’. (Hereinafter the Act). A Trade Mark must be a ‘mark’ in addition to possessing other basic features and being
free of prohibited characteristics. As a result, the legal definition of the mark as provided in Section 2(1)(m) of the
Act is critical, which states that a mark comprises a device, brand, heading, label, ticket, name, signature, word,
letter, numerical, form of products, packaging, or combinations of colours or any combination thereof.

As a result, the definition is inclusive rather than exhaustive. So, everything that can be represented graphically in
single-dimensional, two-dimensional, or three-dimensional space may be regarded as a mark. A company’s emblem
is a mark, as is a graphical depiction of a certain combination of characters, style, or combination of multiple colours
on a product or in the company’s name.

Similarly, the definition of the term “trade mark” is defined under Section 2(1)(zb) of the Act. It can be stated as
follows:

1. The trade mark must be a mark. That is, nothing else than a mark as defined in Section 2 (1)(m) of the
Act is capable of being designated as a trade mark if additional conditions are met.
2. That such a mark is capable of being represented graphically. That is to say, if a mark cannot be
represented visually, it cannot be accorded trade mark registration.
3. Such a mark must be capable of identifying one person’s goods or services from those of others. It
implies that the mark must have certain distinguishing qualities, either phonetically, structurally, or
aesthetically, to allow consumers to associate a product bearing that mark with a certain proprietor or
authorised user without much misunderstanding. Such differentiation can be innate, as in coined and
created terms, or learned.

To sum up, a trade mark must be a mark that can be graphically represented and has specific distinguishing qualities
that allow a customer of ordinary intelligence and faulty recall to associate it with the proprietor or user without
generating confusion.

A growing number of nations also permit the registration of non-traditional trade marks such as single colours,
three-dimensional signs like product packaging shapes, audio signals or sounds, or olfactory indicators like smell,
etc. A trade mark is always a brand, but a brand is not necessarily a trade mark. This is mentioned because there is
sometimes confusion between trade marks and brands; a brand is just a name, logo, or symbol, but a trade mark is a
unique sign or signal of some type in a commercial organisation; as a result, trade marks have a broader connotation
than brands.

A trade mark may also serve to represent or ensure the quality of the items bearing the brand. People are frequently
persuaded to purchase a certain product because of its distinguishing trade mark, which symbolises quality. Trade
Marks represent the value or goodwill connected with the goods, which may be measured by the extent to which the
public perceives their quality and specific source. In general, trade marks are placed in any fashion on the items,
their containers, and displays, as well as on tags or labels linked to the goods or services. The great economic value
of a successful trade mark is the key reason for legal protection.

Trade mark owners generate brand loyalty and product uniqueness through compelling advertising campaigns in
conjunction with licensees. This results in the establishment of enviable goodwill and market strength, thus
preventing new enterprises from entering that specific sphere of operation.

Legal history of Trade Marks Law in India

Until 1940, there was no statute law governing trade marks in India, and the relevant law was based on common
law, which was essentially the same as that in England prior to the passage of the first Registration Act in 1908. The
Trade Marks Act of 1940 (repealed) established for the first time in India the machinery for the registration and
legislative protection of trade marks. This Act was repealed in 1958 by the Trade and Merchandise Act of 1958.
This Act was likewise abolished by the Trade Marks Act of 1999, which took effect in 2003. The law governing
trade marks has undergone significant revisions since the Trade Marks Act of 1999. Some legal principles relating to
unregistered trade marks are codified, while others are still dependent on common law, necessitating the use of court
rulings.
In addition to safeguarding the purchasing public from imposition and fraud by infringers of genuine trade marks, it
has been determined that the statutory rights granted by the registration of a trade mark are so broad and complex
that it is necessary to protect the legitimate interests of other traders from litigation and harassment by registered
owners of trade marks. As a result, the Act has evolved into a complex body of legislation with long Sections,
numerous cross-references, and several provisions and exclusions.

The more essential elements have been clarified through judicial interpretation, while several portions have yet to be
subjected to judicial inspection and study. Apart from streamlining the legislation, the current Act of 1999 has added
several additional rules that benefit both trade mark owners and consumers of goods. For historical reasons, both
Indian common law and statutory trade mark law have largely followed the pattern of English law.

Apart from significant changes to the previous law, this Act unified the Merchandise Marks Act, of 1889, and
various regulations about trade marks found in the India Penal Code,1860 the Criminal Procedure Code,1973 and
the Sea Customs Act,1878 into a single piece of legislation.

Need for trade marks

A trade mark safeguards your brand and gives you the means to stop someone from profiting off of your brand. The
shape of the items, their packaging, and a colour combination are all examples of trade marks that may set one
person’s goods or services apart from those of another. They enable clients to pinpoint a company as the provider of
a good or service. Let us know more reasons for the need for Trade Mark Registration in India.

Important assets

For your business, a registered trade mark might prove to be a significant asset. These assets continue to increase in
value over time. Over time, as your firm expands, the value of your trade marks increases naturally. As a result, the
value of your trade mark increases as your business does.

Safeguarding your brand

A trade mark registration establishes ownership of a brand, name, or logo. It safeguards your brand against unlawful
third-party use. The registered trade mark establishes that the product is entirely yours, and you have the exclusive
right to use, sell, and change the brand or items in any way you see fit. Aside from that, having a trademark fosters a
trusting relationship with clients, allowing a firm to build a loyal customer base and boost its reputation.

Bringing individuality to a brand

Every firm requires a distinctive brand or logo that sets it apart from the competition, hence, such a brand must be
registered. As a result, a registered trade mark provides your brand with a distinct identity. It also helps to avoid
customer confusion by indicating the source of the items as well as a constant degree of quality.

Tool for simple communication

Trade Marks may prove to be useful and simple communication tools. They are self-explanatory. With a registered
trade mark, the brand to which your goods belong may be determined. For instance, you can tell that a gadget is an
Apple when you see a half-bitten apple in silver on it, whether it’s a laptop or a phone.
Customers can easily locate you

A registered trade mark makes it easier for buyers to locate the goods since it attracts the consumer’s attention and
makes the product stand out. It is also an effective instrument with a distinct identity; registered trade marks are
easily traceable, and buyers can quickly find your goods.

A trade mark lasts forever

Once registered, a trade mark can remain in effect in perpetuity. Any company’s registered trade mark is theirs
forever, and thus a trade mark registration must be renewed every ten years as it will maintain the brand’s identity
and go on in perpetuity.

Objectives of The Trade Marks Act

The goal of a legal system for trade mark protection in India can be deduced from an examination of constitutional
provisions to protect trade, statutory provisions and common law rights, and their judicial interpretation, as well as
fulfilment of international obligations under various international treaties to which India is a signatory.

Based on Constitution’s provisions

Article 19 of the Indian Constitution lists freedom of trade and movement as one of the essential rights. In addition
to this, several additional fundamental rights ensure the safety of the trade and profession of its residents as well as
non-citizens including jural/legal people. As a result, one of the goals of the Trade Mark Act is to secure the
preservation and fulfilment of these fundamental rights.

Based on statutory provisions and common law rights

The granting of specific civil rights in each civilised society to protect its people, trading partners, and others from
any harm, whether criminal or civil, is essential to the civilization’s survival and progress. The fundamental right to
freely trade includes the freedom to establish, develop, and grow one’s own business by legal means.

As a tool for promoting one’s own business, a trade mark must be protected from illegal uses to safeguard the
legitimate owner from dishonest and criminally motivated individuals. Additionally, safeguarding the standard of
goods and services is the only way to advance the greater good of the public. The availability of identical items on
the market results in the duplication of well-known and well-liked products and services by unlicensed users, as well
as the original proprietor’s incapacity to maintain the quality owing to losses in terms of revenue, reputation, and
public confidence. As a result, the Trade Marks Act was created to safeguard people’s basic, constitutional, and civil
rights, as well as to serve the public interest.

Based on Act’s preamble

The Trade Marks Act, 1999’s preamble states that the Act’s purpose is to protect trade marks and prohibit fraudulent
use of trade marks. Similarly, one goal of the Indian Penal Code involves the preservation of people’s civill rights,
including the right to grow one’s own business through the creation of a brand through the use of certain trade marks
and the advancement of public interest. As a result, both Acts allow for the penalty of any unauthorised person who
uses a trade mark fraudulently.
Based on Judicial Interpretation

The Supreme Court provided the following explanation of the purpose of the Trade Mark Act in Dau Dayal v. State
of Uttar Pradesh (1959):

The goal of trade mark law is to defend the rights of individuals who produce and sell items bearing distinctive trade
marks against infringement by third parties that misrepresent the origin of their products by using trade marks that
are not their own.

In light of India’s duties to other countries

India is required to consolidate its municipal law by such treaties and conventions because it is a signatory to
numerous significant international treaties, such as the Trade-Related Aspects of Intellectual Property Rights
(TRIPS), and because it is a part of various conventions and agreements under these conventions, such as the Paris
Convention and Madrid Agreement. Additionally, it must safeguard the commercial interests of local traders from
unwarranted harm brought on by unfair competition from outside. With these goals in mind, India has modernised
and strengthened its legal framework for trade marks.

Salient features of The Trade Marks Act

The Trade Marks Act, of 1940 was India’s first trade mark law. Before then, trade mark protection was controlled
by common law. The Trade Marks Act, 1999, as modified, is the current controlling legislation in India for trade
marks. The 1999 Act was passed to comply with the TRIPS rules. The salient features brought about in Indian trade
mark law by the Trade Marks Act, 1999, are as follows:

1. Including a service mark in the definition of a trade mark;

2. A new clause for collective marks’ registration;
3. Prohibition on registering some marks that are merely replicas or imitations of well-known marks;
4. Provision for filing a single registration application for several classes of products and/or services;
5. Increasing the term of registration of a trade mark from 7 to 10 years, including a six-month grace
period for payment of renewal costs.
6. Expansion of conditions under which registration validity may be challenged;
7. Giving the Registrar ultimate power over applications for registration of Certification Trade Marks;
8. Aligning the punitive provisions of the Trade Marks Law with those of the Copyright Law;
9. Provision for the formation of an Appellate Board.

Registration of Trade Marks under the Act

Anyone claiming to be the trade mark’s owner or who intends to use the trade mark in the future may submit an
application in writing to the relevant Registrar by the established procedures. The application must include the name
of the goods, mark, and services, as well as the class of goods and services it belongs to, the applicant’s name and
address, and the amount of time the mark has been in use. Here, the term “person” refers to a group of businesses, a
partnership, a corporation, a trust, a state government, or the federal government.

Application for registration

Section 18 of the Act outlines the process for registering a trade mark. Thus, in order to apply for registration, the
applicant must meet the requirements outlined in the Act.

Subsection 1 states that any person claiming the trade mark may submit an application in writing to the Registrar in
the appropriate way. A single registration application can be submitted for many classifications of products or
services. However, as stated in Section 2 of the Act, various fees will apply to each kind of product or service. If the
applicant or joint applicants desire to apply, they must do so within the geographical limitations of their primary
place of business. If they do not conduct any business, the application must be lodged inside the geographical limits
of the site for services.

Subsection 4 specifies that the Registrar has the authority to accept, reject, or make certain adjustments and revisions
subject to specific restrictions or limits. If the Registrar refuses or imposes restrictions, he must explain why and
what materials were utilised.

Registration requirements

The central government appoints a person to be known as the controller general of patents, designs, and trade marks,
who will be the Registrar of the trade mark, by stating it in the official gazette. The central government may
designate additional officials if they believe they are appropriate for discharging, and the Registrar may permit them
to discharge under the supervision and control of the Registrar.

The Registrar has the authority to transfer or remove cases by a written request with justification. It is covered under
Section 6 of the Act on how to keep a registered trade mark active. Except for the trust notice, all specified details,
including those of registered trade marks, must be recorded at the main office. Each branch office is required to
maintain a copy of the register. It permits the preservation of documents on diskettes, computers, or in any other
electronic format.

Absolute grounds for registration denial

Section 9 of the Act defines absolute grounds for registration refusal. Any trade mark that falls under one of the
reasons specified in this Section cannot be registered. The following are the absolute grounds for denying
registration:

1. Trade Marks that do not have any distinguishing characteristics. Distinctive character refers to trade
marks that are capable of differentiating one person’s goods or services from those of another.
2. Trade Marks that consist only of markings or indications used in commerce to designate the kind,
quality, amount, intended purpose, values, or geographical origin of products or services delivered.
3. Trade Marks that only comprise markings or indications that have become usual in the present
language or established trade practices.
4. Trade Marks that deceive or confuse the public.
5. Trade Marks that contain anything likely to offend the religious sensibilities of any class or section of
Indian people.
6. Trade Marks containing or including scandalous or indecent material.
7. If the trade mark’s use is forbidden under the Emblems and Names (Prevention of Improper Use) Act
of 1950.
8. Marks are derived from the form of the items themselves and are used as trade marks.
9. Trade Marks consist of markings on items whose shapes are required to achieve a technological
outcome.
 10. Trade Marks are made up of symbols resembling the form that provides products with their
significant value.

The Act makes an exemption for the first three points, namely where the trade marks lack uniqueness, comprise
exclusive marks used in the trade to indicate sort, quality, etc., or contain marks that have become usual in trade
practices.

Similarity test

In conclusion, if one mark appears to be deceptively similar to another, the essential features of both must be
considered. They should not be placed side by side to determine whether there are any differences in the design and,
if so, to prevent one design from being mistaken for the other. It would suffice if the disputed mark is so similar to
the registered mark that a person normally dealing with one would be duped into accepting the other if it were
offered to him.

In addition to structural, visual, and phonetic similarity or dissimilarity, it is also important to consider the average
human intelligence and imperfect data collection. Thirdly, the question of his impressions is raised because it is
viewed as a whole.

In the case of Mohd. Iqbal v. Mohd. Wasim (2001), it was said that it is common knowledge that ‘bidis’ are being
used by persons belonging to the poorer and illiterate or semi-literate class. They don’t have a lot of knowledge.
They cannot be expected to comprehend and understand the subtle distinctions between the two labels, which can
often be seen when comparing the two labels. Thus, it was held that the two labels seemed to be misleadingly
similar in light of the aforementioned.

Relative grounds for registration refusal

Section 11 of the Act provides related reasons for denying trade mark registration. A trade mark cannot be registered
if there is a likelihood of confusion due to its identity with an earlier brand and resemblance of products or services,
or its likeness to an earlier trade mark and similarity of goods.

It also states that a trade mark that is identical or similar to an earlier brand cannot be registered. Also, if or to the
extent that the previous trade mark is well recognized in India, which is to be registered for products and services
that are not identical to those for which the earlier trade mark is registered in the name of a different proprietor. It
further states that a trade mark cannot be registered if or to the extent that its use in India is likely to be prohibited by
law.

Proceedings in opposition

Section 21 of the Trade Marks Act, 1999, addresses opposition to registration and should be read in connection with
the Trade Marks Rules, 2002.

Rule 42 talks of notice of opposition, it states that within four months of the date of publication of the trade mark
journal in which the application for registration of the trade mark was advertised or re-advertised, a notice of
opposition to the registration of a trade mark under the sub-section (1) of Section 21, with the particulars specified in
Rule 43, shall be filed as prescribed.
Rule 43 mentions the requirements of a notice of opposition, it states that a notice of objection must include the
grounds for the opposition in the case of an application, an earlier trade mark or earlier right on which the opposition
is based, or in the case of the opposing party.

Rule 44 states that the counter statement required by subsection (2) of Section 21 must be submitted within two
months of the applicant receiving a copy of the notice of opposition from the Registrar. It must include a list of any
facts the applicant has admitted that were alleged in the notice of opposition. The Registrar must typically serve a
copy of the counterstatement to the opponent within two months of the date of receipt.

Rule 45 talks of evidence in favour of the opposition, it states that:

1. The opponent must either leave with the Registrar any affidavit-based evidence he may wish to present
in support of his opposition within two months of the service of a copy of the counterstatement, or;
2. He must notify the Registrar and the applicant in writing that he does not wish to present any evidence
in support of his opposition but intends to rely solely on the information provided in the notice of
opposition.

By this sub-rule, he must give copies of any evidence, including any exhibits, to the applicant and notify the
Registrar in writing of the delivery. An opponent is assumed to have given up on his opposition if he does not take
any action under sub-rule (1) within the time frame specified therein.

Rule 46 talks about supporting documentation for application purposes.

It states that within two months of the applicant receiving copies of affidavits in opposition or notice that the
opposition’s opponent does not wish to provide any evidence in opposition, the applicant must leave with the
Registrar any affidavit-based evidence he wishes to present in support of his application and deliver copies to the
opposing party.

Alternatively, the applicant may inform both the Registrar and the opposing party that he does not wish to present
any evidence and instead intends to rely on the facts outlined in the opposing party’s counterstatement and/or on any
evidence previously left by him in connection with the application at hand. If the applicant provides additional
information or relies on material previously provided by him in connection with the application,

He shall give copies of the same to the opponent, including any evidence, and shall notify the Registrar in writing of
such delivery. If an applicant does not take action under sub-rule (1) within the period specified, he is presumed to
have abandoned his application.

Rule 47 talks of the opponent’s evidence in reply.

The opponent may provide the Registrar with evidence by affidavit in reply within one month of receiving copies of
the applicant’s affidavit from the applicant and shall give copies of the same to the applicant, along with any
exhibits, and shall notify the Registrar in writing of such delivery. Following the conclusion of the evidence, the
Registrar is required to notify the parties on the first day of the hearing.

Rule 50 mentions the provision for hearing and decision.

The hearing must take place at least one month following the initial notice date. A hearing between the two parties
may be requested by the Registrar. He will then make a decision based on the arguments made by the two sides. If
he grants the applicant’s request, the trade mark will be registered. The trade mark will be taken down from the
Journal and the registration request will be denied if he rules in favour of the opposing party.

Procedure and registration period

Section 25 states the procedure and registration period of a trade mark, and subsection 1 provides that the Registrar
after receiving an application from the trade mark owner in the required format, within the allotted time frame, and
with the required payment of costs, may register a trade mark for a term of ten years, and it may also be renewed for
a further ten years after the initial registration or the most recent renewal of registration has expired.

Before the final registration expires, the Registrar must give the registered proprietor a notification in the manner
specified. If the criteria have not been properly met by the period specified in the notice, the Registrar may withdraw
the trade mark from the register. The notification specifies the date of expiration, the payment of fees, and the
circumstances under which a renewal of registration may be acquired. However, if the implication is made in the
prescribed manner and the prescribed fee is paid within six months of the trade mark’s final registration expiring, the
Registrar shall not remove the trade mark from the register and shall instead renew the registration of the trade mark
for ten years.

If a trade mark is withdrawn from the register due to non-payment of the specified fee, the Registrar must renew the
registration within six months and one year of the expiration of the last registration of the trade mark as mentioned
in subsection 3 of the Act.

In addition, upon receipt of an implication in the specified form and payment of the prescribed fee, the Registrar
restores the trade mark to the register and renews the registration of the trade mark for ten years from the expiration
of the previous registration, as mentioned in the subsection 4 of the Act.

No action for an unregistered trade mark

This is defined under Section 27 of the Act, which states that no infringement will lie concerning an unregistered
trade mark but recognises the common law rights of the trade mark owner to take action against any person for
passing off goods as the goods of another person or as the services of another person or the remedies thereof.

Trade mark infringement

Infringement of trade marks occurs when someone other than the registered proprietor uses the same mark or one
that is confusingly similar in the course of business in relation to the same products or services for which the trade
mark is registered. In general, trade mark infringement suits entail the problems of the likelihood of confusion,
counterfeit marks, and mark dilution. The likelihood of misunderstanding occurs when customers are likely to be
confused or misled regarding two parties’ usage of marks.

The plaintiff must demonstrate that many customers are likely to be confused or misled regarding the origins of the
items bearing these marks as a result of the identical markings. Dilution is a trade mark law term that prohibits the
use of a well-known trade mark in a way that diminishes its distinctiveness. Most incidents of trade mark dilution
involve the unlawful use of another’s trade mark on items that do not compete with and have little in common with,
the trade mark owners.
Section 29 talks about the infringement of registered trade marks under the Act. Infringement refers to the violation
of someone’s rights. As a result, trade mark infringement implies a breach of trade mark rights. Infringement of a
trade mark occurs when an unauthorised use of a trade mark or a substantially similar mark on goods or services of a
comparable type occurs. In such a scenario, the court will consider whether the use of the trade mark would lead to
consumer confusion about the genuine brand they are purchasing. Thus, the following elements must be completed
to categorise trade mark infringement as provided under Section 29 of the Act:

1. If the trade mark is a copy of an existing trade mark with minor modifications or changes.
2. If the infringing trade mark is printed or utilised in advertising.
3. If the infringing mark is employed in commerce
4. If the mark utilised is sufficiently similar to a registered mark a customer is likely to be confused or
misled when picking a product category.

Apart from this, Section 103 of the Act talks of the provisions for penalties for applying false trade marks, trade
descriptions, etc. According to this Section, a person is deemed to be filing for a trade mark incorrectly under the
following circumstances:

1. If a trade mark fabrication has occurred;

2. If a trade mark has been wrongfully applied to products or services;
3. Makes, acquires or disposes of any device with the intent to falsify a trade mark;
4. Falsely represents the name of the nation or location where the items were manufactured, as well as the
name or address of the person responsible for their production.
5. Tampers with the origin indication that is applied or needed to be applied to a product.

Infringement of trade marks as a consequence of falsification shall result in a penalty of not less than six months, but
not less than three years, and a fine of not less than fifty thousand rupees, but not less than two lakh rupees.
Provided, however, that the accused offender did not perpetrate such deception on the following grounds:

1. All reasonable efforts were taken to avoid the commission of such fabrication, and there was no
legitimate reason to doubt the legitimacy of the trade mark at the time of the alleged violation.
2. That he had done lawfully.
3. On the prosecutor’s request, such relevant documentation about the way and person from whom the
products were received.

Concept of Passing Off

The term “passing-off” is not defined in the Trade Marks Act, 1999. Section 27 of the Trade Marks Act, 1999
acknowledges the trade mark owner’s common law rights to pursue legal action against anybody who misrepresents
his goods or services as those of a third party or seeks to exploit such rights. In Cadila Healthcare Ltd v. Cadila
Pharmaceuticals Ltd, (2001) the Supreme Court of India defined “passing-off” as a type of unfair commercial
competition or actionable unfair dealing in which one person, by deceit, seeks to get an economic benefit from the
reputation earned by the other in a particular trade or company.

A few key elements must be proven for a passing off action, as maintained by courts in a series of judgements,
which are listed below:

1. Misrepresentation,
 2. The defendant must do the conduct in the course of his or her business.
3. The plaintiff’s goods and services have been misrepresented to prospective or final clients.
4. Such deception is intended to harm the plaintiff’s company or reputation, and
5. Such conduct creates genuine harm to the plaintiff’s company or reputation.

The defendant’s motive is irrelevant in a passing-off suit. Once the plaintiff has created a reputation, no additional
proof of the defendant’s fraudulent intent is necessary to be proven or established.

The comparison between an infringement action and passing off is portrayed below:

Infringement Action Passing Off Action

It is a legal remedy. It is a remedy under common law.

The defendant must use the infringing mark on the Defendant’s products do not have to be identical; they
same items as the plaintiff’s registered mark. might be related or even distinct.

The sole requirement to prove trade mark In a passing-off lawsuit, it is not enough to simply show
infringement in relation to a registered trade mark is that the markings are the same or confusingly similar.
that the infringing mark is identical to or The mark’s usage must be liable to mislead or create
misleadingly similar to the registered mark. misunderstanding.

There is no requirement that the defendant’s use of It must be demonstrated that the defendant’s use of the
the mark harms the plaintiff in any way. trade mark is likely to harm or impair the plaintiff’s
goodwill.

Appeals to the Appellate board

Section 91 of the Trade Marks Act of 1999 addresses appeals to the appellate board.

Earlier, the applicant’s ultimate recourse, once the registration is rejected, is to file an appeal with the Intellectual
Property Appellate Board (hereinafter referred to as the “IPAB”) within three months after the day the Registrar
issued the rejection decision. But recently, the Tribunals Reforms (Rationalisation and Conditions of Service) Act,
2021, was proclaimed, dissolving the Intellectual Property Appellate Board by revising the Trade Marks Act, 1999.
Some of the most recent modifications to the Trade Marks Act, 1999, are detailed below:

1. The IPAB has been abolished.

2. Any procedures for cancellation of a mark based on non-use under Section 47 of the Act will
henceforth be heard exclusively by the Registrar or the High Court.
3. In addition to the Registrar of Trade Marks, any procedures for correction of a mark under Section 57
of the Act can now be brought before the relevant High Court possessing jurisdiction.
 4. All appeals under Section 91 of the Act will be heard by the High Court rather than the IPAB.
5. A claim for trade mark infringement is delayed under Section 124 of the Act if the defendant pleads
invalidity of the mark or raises a defence under Section 30(2)(e) of the Act and if rectification
procedures against the defendant’s mark are underway before the Registrar or the High Court prior to
the initiation of suit, the plaintiff pleads invalidity.
6. If rectification proceedings are not ongoing and the court determines that the invalidity of the mark
claim is plausible at first glance, it will raise the matter and postpone the case for three months so that
the party in question can apply to the High Court for rectification of the mark. It will also raise the issue
if the rectification application is made within three months, at which point the court may permit the trial
of the claim.
7. Appeals from the Registrar of Trade Marks orders will henceforth be heard by the relevant High Court
depending on the jurisdiction of the Registrar making the orders and must be submitted within three
months of the date the order was informed to the appellant. In such cases, the phrase “prescribed” has
been enlarged to cover regulations imposed by the High Court as well as rules made under the Trade
Marks Act.

Relief in lawsuits for passing off or infringement

According to Section 134 of the Trade Marks Act, 1999, a lawsuit for trade mark infringement may be filed before a
District Court or High Court if the person filing the lawsuit, or if multiple people are filing the lawsuit, any of them,
actually and voluntarily resides, conducts business, or engages in gainful employment within the local limits of the
court’s jurisdiction at the time of filing the lawsuit or other proceeding. A person, according to the Act, includes
both the registered proprietor and the registered user. Section 20 of the Code of Civil Procedure, 1908, governs an
action for passing off. Section 20 of the Code grants jurisdiction to courts within the geographical borders of where
the defendant resides, conducts business, or personally works for gain, or where the cause of action has arisen
entirely or partly.

According to Section 135(1), the following are typical reliefs that a judge may issue in a complaint for infringement
or passing off:

1. Permanent and temporary injunctions preventing further trade mark usage.

2. Compensation or profit account.
3. The requirement to transmit the infringing labels and destruction or erasure of markings.

An order seeking any of the following may be among the interim reliefs sought in the lawsuit:

1. A local commissioner is appointed to conduct searches, seize illegally obtained commodities, preserve
them, prepare inventories, and more.
2. Restricting the infringement from disposing of or dealing with the assets in a way that may jeopardise
the plaintiff’s capacity to recover damages, costs, or other monetary remedies that may be awarded to
the plaintiff in the end.

A criminal complaint can also be brought in the event of trade mark infringement or passing off. The limitation
period for commencing an action for trade mark infringement/passing off is three years from the date of
infringement/passing off. When the infringement/passing is ongoing, a fresh course of action is required each time
an infringement occurs.

Acquired distinctiveness
Each trade mark designates the products sold under it as coming from a certain source. With time, it becomes
stronger, and a specific trade mark is either registered or becomes conceptually connected with the product and its
source in the minds of the consumers. Some trade marks receive legal protection right once after being used as a
trade mark because of their distinctive characteristics, while other marks do so because of a secondary meaning they
gradually come to have. Thus, there is a connection between a trade mark’s strength and secondary meaning.

In essence, this suggests that some words, even while they are primarily used to describe the personality and calibre
of products or services, may lose their descriptive connotations and come to have distinctive meanings as a result of
usage. A mark that is not fundamentally unique but, by prolonged and meaningful usage over time, persuades
consumers to associate the mark with a product or service that is said to have ‘acquired distinctiveness’ or
‘secondary meaning.’

Sections 9(1) and 32 of the Trade Marks Act of 1999 deal with “acquired distinctiveness” or ‘secondary meaning’ in
a roundabout way. It specifies that even if a trade mark has acquired a secondary meaning or importance, it will not
be refused registration if it falls into one of the categories stated in Section 9 of the Act.

It is a well-known rule that no merchant may trade mark common language terms, descriptive words, or common
words and names until such trade names have created such a strong reputation and goodwill in the market that the
common language word has acquired secondary significance. The secondary meaning here is that other traders in
that line of business realise that such common phrases have evolved to designate things unique to that trade. Section
9(1)(b) of the Act prohibits the registration of descriptive trade marks. However, a provision to Section 9(1) states
that a trade mark should not be rejected for registration if it has developed a distinctive character as a consequence
of usage before the date of application for registration or is a well-known trade mark.

Section 32 also states that where a trade mark is registered in contravention of sub-section (1) of Section 9, it shall
not be declared invalid if, as a result of the use which has been made of it, it has acquired a distinctive character
about the goods or services for which it is registered after registration and before the commencement of any legal
proceedings challenging the validity of such registration.

The Act is notably silent on the considerations to be examined for determining whether a mark has ‘acquired
distinctiveness’ or ‘acquired secondary meaning,’ in contrast to the US and other countries that have defined
standards to deal with these issues of law. In India, the Court and the Intellectual Property Appellate Board have
played critical roles in establishing standards for determining whether a mark has acquired uniqueness or not. The
mere usage of a mark does not constitute it unique, and increased use does not either. The usage and expanded use
of any substance should be done separately. It is both allowed and required to ascertain the meaning and significance
of a sign on a certain day. The usage in question extends not only to the customers or end users of the items, but also
to others involved in the trade, such as producers, distributors, and retailers.

In Godfrey Phillips India Ltd v. Girnar Foods and Beverages Ltd (1997), it was determined that a descriptive trade
mark may be protected if it has acquired a secondary meaning that identifies it with a certain product or as coming
from a specific source. Developing uniqueness is a time-consuming and arduous process. Nonetheless, no time limit
has been set for a trade mark to become unique, unlike the British Act of 1919, which stated that two years of bona
fide usage was sufficient. There may be instances where a trade mark becomes unique in a very short period of time
for various reasons, or where a brand never gains distinctiveness. As a result, there is no clear and fast rule
governing the period necessary to achieve uniqueness.

It was ruled in Ishi Khosla v. Anil Aggarwal (2007), that a product does not have to be on the market for years to
gain secondary meaning; if a new idea is exciting and appealing to the public, it may become a hit immediately.
Although it has been demonstrated in various determined decisions that a common descriptive word can acquire a
secondary distinctive meaning by being used about the products. However, establishing that such a term has become
unique in actuality and has acquired a secondary meaning separate from its original meaning can be exceedingly
difficult. When the mark is not just descriptive but also incorporates the name of the product, such as Diabolo for
top or shredded wheat, the complexity increases. This challenge can be addressed if the putative trade mark includes
a description of products, but the public recognizes it as a fancy term rather than a descriptive word.

The petitioner must demonstrate that the term, which is largely descriptive of the quality of products, has become
descriptive. The applicant must discharge the onus with respect to each piece for which the trade mark is registered,
not simply one of the numerous products for which the mark is used. When a case is on the borderline, the Registrar
will normally decline to issue the registration; nevertheless, he will not investigate the grounds for the refusal.
However, the merchant should be given a fair chance to demonstrate his entitlement to statutory protection.

The competent authority must undertake an overall evaluation of the evidence that the mark has come to identify the
goods in question as coming from a certain source when deciding whether a mark has developed a unique character
as a result of long and continuous use. The following factors should be considered when analysing the unique
character of a mark for which registration has been applied:

1. The mark’s share of the market.

2. The extent to which the mark has been used intensively, geographically, widely, and for a long time.
3. The amount expended by the company in the market promotion.
4. The proportion of the relevant class of people who identify the items as emanating from a certain
enterprise.
5. Statements from numerous business and trade organisations.
6. If based on these characteristics, the competent authority determines that a considerable number of
people recognize the products as coming from a certain source because of the trade mark, it must
conclude that the condition for registration of the mark has been met.

Judicial pronouncements

Yahoo!, Inc. v. Akash Arora and Anr,1999

For the first time ever in India, the Delhi High Court ruled in the case of Yahoo!, Inc. v. Akash Arora and Anr
(1999), that a domain name serves the same purpose as a trade mark and is entitled to the same level of protection.
The accused’s domain name was “Yahoo India!” This was the same as the plaintiff’s trade mark “Yahoo!” and was
phonically comparable. According to the court, internet users would be misled and duped into thinking that both
domain names originated from the same source. The argument used by the defendant was that a disclaimer had been
posted on its website.

However, it was revealed that a mere disclaimer was insufficient since the internet is structured in such a way that
the use of a similar domain name cannot be corrected by a disclaimer, regardless of whether ‘yahoo’ is a dictionary
term. The appellation has gained distinctiveness and originality, and it is strongly associated with the plaintiff.

Milmet Oftho Industries et al. v. Allergan Inc., 2004

A well-known international brand was given trade mark protection by the Supreme Court in the case of Milmet
Oftho Industries et al. v. Allergan Inc. (2004). The court barred an Indian firm from using the OCUFLOX trade
mark. The decision was made despite the fact that the mark has never been used or registered in India. According to
the court, the respondent was the first to enter the market and use the mark. If the respondent is the first to join the
global market, it makes no difference that they have not utilised the mark in India. In the realm of healthcare, it is
critical to eliminate any possibility of deceit or confusion, while also ensuring that the public interest is not
threatened.

Sony Corporation v. K. Selvamurthy, 2021

In the case of Sony Corporation v. K. Selvamurthy (2021), Sony Corporation filed a lawsuit for trade mark
infringement against a sole owner operating a tours and travel company under the name Sony Tours and Travels,
alleging dilution of its well-known ‘SONY’ trade mark. The District Court concluded after considering the available
evidence that Defendant had not unfairly exploited or damaged Plaintiff’s SONY mark’s unique character or
reputation. The Court reached this determination because Sony Corporation’s business is restricted to electronics
and media, which may be distinguished from the defendant’s tours and trips business.

The Court further recognised that there was no misunderstanding among consumers as a result of Defendant’s usage
of the phrase “Sony.” Additionally, it noted the plaintiff’s excessive delay in contacting the court and awarded the
defendants Rs. 25, 000 as costs.

ITC Limited v. Maurya Hotel (Madra) Pvt Ltd, 2021

The Madras High Court in ITC Limited v. Maurya Hotel (Madra) Pvt Ltd (2021), allowed the plaintiff to add a
remedy for trade mark infringement to a passing off complaint based on the plaintiff’s later registration of the trade
mark. The Court in the case stated that adding a remedy is permissible and aids in avoiding several litigations. It
further said that the conclusion may change if the application was for the conversion of the plaintiff from passing off
relief to an infringement remedy.

Sun Pharmaceutical Industries Limited v. Cipla Limited, 2021

In this case of Sun Pharmaceutical Industries Limited v. Cipla Limited (2021), the respondent/plaintiff filed a
perpetual injunction suit against the applicant/defendant before the Madras High Court for violation of its copyright
and trade mark. In this case, the Court awarded an interim injunction in favour of the respondent/plaintiff. Following
that, the applicant/defendant filed three petitions, each with a request to dismiss the temporary relief granted on the
grounds of urgency. The appeal was predicated on the fact that the medications were in large quantities, had a one-
year expiration date, and were in high demand because of the ongoing epidemic since they helped relieve Covid-19
symptoms. The balance of convenience remained in favour of the respondent/plaintiff, thus the court determined that
they had shown a prima facie case for the continuation of the interim injunction.

Despite the nation dealing with an unprecedented medical emergency, the Court noted that they could not let a party
violate another person’s intellectual property rights when ruling. The interim injunction was maintained by the court,
and it was decided that it would remain in effect pending the outcome of the case.

Conclusion

The whole of the Trade Marks Act, 1999, does away with the cumbersome requirements of the previous Act, and it
has undoubtedly greatly bolstered the rights of business owners and other service providers. This Trade Marks Act
functions as a warning to those who infringe. Positively, this Act takes into account changes in business and
commercial practices, the growing globalisation of trade and industry, the need to promote investment flows and
technology transfers, the need for trade mark management systems to be simplified and harmonised, and it also
gives effect to pertinent judicial decisions. The legal and corporate communities both eagerly awaited this law. The
long-standing ambition has now been satisfied.

What is Trade Description?

As the name suggests it briefly describes the service or product that a company or an individual is providing. The
main aim of adding a trade description is to prevent manufacturers, retailers or service providers from misleading
customers as to what they are spending their money on. Trade Marks Act, 1999 gives power to the judiciary to
punish companies or individuals who make false claims about the products or services that they sell. Section 104 of
the Trade Marks Act, levies punishment on a person or a company who sells, lets for hire or exposes for sale, any
product or service on which any false trade mark or false trade description is applied.

Importance of Trade Description:

The trademark registered will provide the exclusive rights to its proprietor only with respect to trade description
provided in the application. Although the class applied for covers various activities, the scope of protection by TM
will be limited only to the area defined by the trade description in the trademark registration application. This base
can be both limitation and advantageous for the proprietor based on his position. For instance, if Company A deals
in the software industry with the brand name “PQR”, another person may use the said brand name for the trade of
other description such as in legal industry or for sports purpose. Whether under different class or even for under
same class, if the trade description does not match to another one may apply for registration. However, the discretion
to accept the application lies with the Registry only. The approval of trademark is circumstantial and depends on
many other grounds.

The importance of filing true and correct trade description can be easily understood supported by famous case laws.

First case law that refers to the case of Yahoo! Inc. v. Akash Arora and another, 1999 Arb. L. R. 620 (Delhi High
Court) is a great example of how a specific trade description can secure a trademark. Here the specific trade
description for Yahoo! Inc. barred the defendant from taking advantage of the goodwill of the original trademark.
The defendant was stopped from using a deceptively similar mark as they offered almost similar services. Trade
descriptions help to differentiate the goods and services of one trader and it lets public connect the mark with any
identity. Here Akash was sued for sweeping benefits with a similar name and he was held liable as ‘Yahoo!’ and
‘Yahoo India!’ were almost similar. The court held Akash legally responsible for passing off and restrained him
from using the similar domain name.

P. Manikam v. Assistant Commissioner, 15 JUN, 2017 (Madras High Court) is a similar case where a company was
selling similar products with the same trade name and description. The complainant had manufactured and sold
beedies under the name and style ‘Syed Beedi’. Petitioner and another also sold duplicate beedies under the said
name. They used deceptively similar labels as that of the complainant and thereby caused damage to its reputation
and cheated the public. Hence, they were charged under sections 103 and 104 of the Trade Marks Act, 1999 that
deals with false trade description and its penal provisions.

Conclusion:

When applying for a trademark, trade description plays a vital role as the logo the nature of the goods,
characteristics, etc. is mentioned in trade description, so it should have a broader view but also be specific. In most
cases providing an appropriate trade description is easy, like in class 5 which includes footwear, clothing, and
headgear. But sometimes writing a trade description needs skill when the service or product is tricky or confusing.

Accuracy in writing the trade description is extremely essential as it determines,

(1) Whether your application will conflict with a prior registration or application, and
(2) The extent to which your registration will act to block later applicant from registration on similar marks.

To conclude, the description and class selection impact the scope of your trademark protection making it the most
important element of brand name registration.

Types of trademarks

Product mark

It is a mark used for products or goods but not on services. Product mark is used to identify the provider, the
reputation and the origin of the product. Applications for a trademark filed under class 1-34 The Fourth Schedule To
Trade Marks Rules, 2002 are generally termed as product marks.

Service mark

It is similar to a product mark, but it is specifically used to identify a service and not a product. Applications for a
trademark filed under class 35-45 The Fourth Schedule To Trade Marks Rules, 2002 can be termed as a service
mark.

Word mark

Typically, a trademark is filed under a wordmark or a device mark. In a wordmark, only a word or text is used to
denote a trademark, without any stylization or additional artistic elements. This type of registration gives the
broadest legal protection to a trademark because it allows the owner to use such a wordmark in all styles, forms and
representations. A few examples of registered work marks are LITTLE HEARTS, COCA-COLA

Device mark

A device mark usually has an artistic element such as symbols, or an artistic or pictorial depiction in addition to the
element of the wordmark. It generally comprises a wordmark along with multiple artistic elements. Such elements
present in a device mark can be a combination of trademarkable and non- trademarkable features. Such a type of
mark grants protection over the composite mark which is being registered but not the individual elements.
Interestingly, a device mark when registered in colour is limited in protection to the colour combination in which it
gets registered. However, a registered device mark that is black and white in colour gives broader protection wherein
the owner can claim protection for colours for such a device registration.

Certificate trademarks

These marks are typically used by the owner in order to certify the origin, material, quality, mode of manufacture or
performance of services and other characteristics of goods or services to which they are applied. Some examples of
certified marks include the ISI Mark which is issued by the Bureau of Indian Standards (BIS), AGMARK which is
issued by the Director of Marketing and Inspection of the Government of India.

Collective trademarks
This trademark is different from the ones we have studied above. This type of mark is typically used by an
organisation or association of members in order to distinguish the goods or services of the members from those who
are non-members. A very common example of this type of trademark is the CA mark which can only be used by
registered members of the Institute of Chartered Accountants.

Series trademarks

When an owner owns several trademarks in relation to the same or similar goods, wherein all trademarks seem to
possess a material resemblance to each other and are different in respect of non-distinctive character, such
trademarks may be registered as series trademarks.

Unconventional trademarks

Above were the trademarks that are generally registered. Now let’s understand some of the unconventional
trademarks.

Colour trademark

Since the definition of a trademark under the Trademark Act, 1999 includes the words ‘combination of colours’ they
are protected as a trademark. However, such a combination of colours to get registered as a colour mark must be
unique, distinctive and must identify the product and its source. A simple combination of red and yellow to indicate
orange will not be considered distinctive. The colour to get registered under this type of trademark must be
extremely distinct and must be recognisable by its consumers.

Sound trademarks

Graphical representation is an essential element in trademark registration and this applies to sound marks as well. To
register a sound under the trademark, it must be in such a form that it is distinctive and identifiable by the consumer.
Certain categories of sounds are specifically excluded from being registered as a sound mark as per the TM Manual.
They are as follows:

● Songs used as chimes,

● Simple pieces of music consisting 1 or 2 notes,
● Nursery rhymes of children,
● Music that is strongly associated with a particular region,
● Popular music.

Shape trademarks

As per the definition of Trademark under the Trademark Act, 1999 the term ‘shapes of goods’ are used. So, under
the Trademark Act, 1999 protection is granted to shape marks as well. However, a limitation is provided under
Section 9(3) of the Act, wherein it expressly excludes registration of a trademark which consists only of:

● Shapes that result from the nature of the goods itself.

● Shapes which are necessary to obtain a technical result.
 ● Shapes which add substantial value to the goods.

Additionally, when such an application is made, it should be in relation to the goods and not in relation to the
container of the goods.

Smell trademarks

A few trademarks registered under this type have been granted registration internationally. However, in India, for a
mark to qualify as a trademark, it must be capable of being graphically represented. Such a representation should be
recognised and identifiable by the public. Additionally, a smell that is functional cannot be granted registration.

Apart from the same, a smell that is either functional or descriptive also cannot be granted registration. For example,
a perfume with an added nail polish remover to mask the chemical odour can qualify as a functional smell. A smell
that is the natural result of a combination of the ingredients can also not be protected as a trademark. If an
application for a trademark under this type is able to pass these tests and prove its distinctiveness, then it can be
registered as a trademark.

Importance of types of trademarks

Before making an application for a trademark, it is important to understand the difference between each type of
trademark. Firstly, a mark should not be generic, it must be unique and distinctive in order to seek legal protection
under the Trademark Act, 1999. If your trademark seems to be a little similar to the ones existing in the market then,
you may consider modifying your mark so that it qualifies to get registered.

The distinctiveness of a trademark is extremely important because it gives identity to the product. Prior to the
regulation of the laws with respect to trademarks, there was a lot of ambiguity and confusion in the market. It was
difficult to attain brand loyalty from the public since they were not able to immediately identify the provider of the
goods or services.

Conclusion

It is important to understand the kind of protection each type of trademark grants to the owner before he gets it
registered. The reason is that all of them have specific elements and essentials involved. Trademark is an important
tool that an owner can use to monetize his trademark as well as his product. Trademark also acts as a shield that
protects the rights of the registered trademark owner from the other competitors in the market. And lastly, a
trademark acts as a weapon wherein the owner can use the rights granted to him and take legal action against those
who infringe his trademark. Therefore, one must pay utmost importance to a trademark and its types before its
registration.

trademarks and internet domains in ipr law: Introduction

In 2020 when the world was engaged in a continuous grapple with COVID-19, many business entrepreneurs took to
this situation as an opportunity to build their career, mostly via the internet as it is the fastest mode of spreading
information and having a name in the market. Moreover, have you ever come across the ad for GoDaddy where
M.S. Dhoni endorses Go Daddy by stating “to grow your business grow your business through GoDaddy.”
Operating a business virtually is similar to operating it physically in the market, though both have different means of
carrying it out but face similar challenges in their day-to-day business. It is very easy to copy up with someone’s
work to avail unfruitful benefit but can it be done in the virtual world as well? Can someone take away your online
traffic/outreach by using a similar domain name and is it covered under the Trademarks Act 1999?

What is a Trademark?

In layman’s terms, the term Trademark is described as any mark which is used in terms of trade and used to
distinguish your product from the competitor’s product. The mark can be a word, symbol, configuration, device, or
any combination which the trade owner can adopt and use to Identify and distinguish it from the competitor’s
product. As per Section 2(1)(Zb) of TradeMark Act,1999 a “trademark” means:-

Any mark which is used in relation to/for indication of goods or service which is capable of being represented
graphically and able to distinguish the goods or service of one person from those of others and may include the
shape of goods, their packaging and combination of colours which are permissible in the Act.

In Cadbury India Limited And Ors. vs Neeraj Food Products, the court laid down the purpose of “trademark” that
Trademark is a mark used to protect traders and the consumers against malafide use/adoption of another’s well-
known trademark to deceive the general public to avail unfruitful benefits in the market.

Functions of Trademark

Functions of Trademark

What are domain names?

Technically, domain names are essential keywords of the internet infrastructure which provides a human-readable
address on a web server. Generally, domain names are formed by the combination of domain name systems (DNS)
which is administered by ICANN. Any name can be registered under DNS to become a domain name.

To know more about domain name please visit

As a layman’s term, domain names are user-friendly names that are easily identifiable, remembered and help to
distinguish one website/web address from another’s website/web address. Since they are easily remembered, they
are being used as business identifiers and are being used to attract potential customers to their websites. For example
Lawsikho.com

In the case of Bombay High Court in People Interactive (India) Pvt. Ltd. vs. Vivek Pahwa & Ors, the court gave a
proper definition of the term “domain name” that a “domain name” is the territorial address of a business on the
internet where, it directs a user to a particular part of the web where the particular domain name of the registrant
stores and display all the necessary information, offers and service available on the internet.

Domain name as a Trademark

Any person reaching to the world wide web with an intention to expand their business as it is noticeable by the
public at large as the domain name serves dual functions.

● Firstly, domain names are easily remembered names that serve as a Trademark for the owner as the
prospective customer or any person visiting can easily visit the web page and can immediately connect
with the particular company.
● Secondly, every big company is willing to illustrate the popularity of their company and needs to
establish it in the virtual world as well.

In the case of Celador Productions Ltd. Gaurav Mehrotra, the defendant used a name on its website i.e
crorepatrikaun.com or KAUN BANEGA CROREPATI as a second-level domain which was similar to that of the
plaintiff’s game show name i.e KAUN BANEYGA CROREPATI. Apart from copying the format of the show, the
defendant used a similar logo, similar font, and the plaintiff’s representative voice. In this case, where everything
was similar to someone’s original product, the court held that “a domain name is more than a web address, it
provides information about the owner’s goods and service, therefore the owner can seek the protection of its
domain.”

● As per section 2(1)Z of the Trade Mark Act,1999 which defines “Service” refers to it as any service,
any illustration or information which is made available to the potential customer which includes the
provision of services in connection with business enterprise goods/service related to any industry. A
domain name provides specific information about the service/goods and helps to distinguish one’s
website from other website domain name may pertain to the provision of Trademark law as a domain
name is also considered as a service of the business owner which provides information. Therefore, it
should be considered a trademark of the business.

Courts have also highlighted the importance of a domain name as equal to a Trademark for the company on the
internet as a domain name must be unique to its business and have maintained an exclusive identity. Where in Rajat
Agarwal vs. Spartan Online, the court held that a domain name should not be used as an instrument of commercial
enterprise as it facilitates the ability of the consumer to navigate the internet to find websites which are looking for,
but also should be used to identify and distinguish the business itself, or its goods or services, and to specify its
corresponding internet location.
Applicability of Trademark Law to a domain name

For any word, logo, symbol, or combination of words to be registered as a Trademark as per the Trade Mark Act,
1999 it has to pass through various tests which are mentioned in Section 9 and Section 11 of the Trade Mark Act,
1999. Where Section 9 talks about the absolute grounds for refusal of registration (majorly known as a test for
distinctiveness or similarity) and Section 11 talks about relative grounds for refusal of registration (majorly known
as a test for deceptiveness or confusion).

As per, Section 9 of the Trade Marks Act, 1999 which states any mark which qualifies under one or more of the
following absolute grounds is not registrable under the Act. :-

● Any mark which is not capable of distinguishing the goods/service of the applicant from those of
others.
● Any mark which may serve in trade to a particular kind, quality, purpose, value, geographical origin.
● Any mark which may cause confusion or deception amongst the general public or traders.
● Any mark which may hurt religious sentiments of class, a particular section of citizens in India; a mark
which compromises/contain scandalous/obscene matter which is against the morality of citizens of the
country.
● Any mark which is disqualified under the Emblems and Names Act, 1950.
● Any mark which contains exclusively the shape of goods or resulting from the nature of that goods
themselves or a technical result of it.

The distinctiveness when coming to the goods and services of other proprietors in trade

The term ‘distinctiveness’ means any mark which is used to distinguish its goods and service of the proprietor from
other goods and services of other proprietors in trade. To have a good domain name it should be distinctive from
other people’s domain names.

In one of the famous booking websites cases (Bigtree Entertainment vs. Brain Seed Sportainment) where the
plaintiff had registered a Trademark for its mark BOOKMYSHOW under 41 & 42 and the defendant has a domain
name under www.bookmysports.com. Here, the court held that the term “BOOK MY” was descriptive but not
distinctive. That conjoining of two English words “BOOK MY” is not an innovative word, which is distinctive but a
description of the business or a type of business that is being run.

As per Section 11 of Trade Marks Act, 1999 which states that ay one or two grounds mentioned in the section can
refuse your mark to be registered if:-

● Have used a similar mark or similar goods.

● Have a similar market or trading channel which will create confusion.
● Have filed similar to any well-known mark, geographical area, or a generic term of the trade.
● The mark is similar to a word that is commonly used by traders in trade or channel.
● Deceive someone’s existing IP.

Is it a similarity or the creation of confusion?

Section 2(1)(h) of the Trade Marks Act, 1999 defines the term ‘deceptive similarity.’ In Maruti Udyog & Suzuki
Motors Corporation vs. World Information Pages, “Marutisuzuki.com” was a similar domain name that was being
used by the defendant and was creating confusion amongst the consumer with the plaintiff’s Trademark. It was held
that as per the WIPO, arbitration, the respondent does not have any legitimate interest in the domain and it was
being used under Clause 4(b)(iv) of the UDRP and the defendant should transfer all the IP related to the domain
name to the plaintiff.

In Times Internet Ltd vs. Jonathan S. And Another, it was held that the defendant has been using a deceptively
similar Trademark of the plaintiff i.e Indiatimes, which would take the consumer who was searching for the
plaintiff’s domain to another domain site. It was held that the domain name cannot be similar to that of the plaintiff’s
as it would deceive the consumer who is looking for the particular domain.

Malpractice against domain names

Since domain names are the extended version of a Trademark concept, they are bound to similar contraventions,
malpractices like Trademarks have. i.e law of passing-off and infringement of domain names.

The act of passing-off

The act of passing-off is a civil wrong that is derived from common law in which a person is engaged in a common
field of activities and business to take over its goods and services. The act will create a deceptive similarity with the
goods and will create confusion amongst the consumers and traders in trade which would create a huge loss to the
original proprietor’s business.

Though, there is no statutory definition about passing off but Section 27(1) of the Trade Marks Act, 1999 talks about
passing off. In Singer Manufacturing Co. vs. Loog, the court explained that no person is entitled to deceive someone
by falsely representing his goods as the goods of another person; and no one is allowed to use any mark, sign, or
symbol which would create a false representation of someone else’s goods or services.

Domain names also face the same issues a Trademark and Trademark law applies to internet activities as well. In
one of the famous search engine cases i.e In the Yahoo Inc. Akash Arora Case, where the court accepted that the law
of passing off can also be liable to the domain name as there was a similarity between the marks which is an
important aspect in the action of passing off as there is a high possibility of likelihood of confusion and deception
being caused.

In Satyam Infoway Ltd. Vs. Sifynet Solutions (P) Ltd., the court laid out a three-element in which action of passing
off against a domain name can be taken.

1. It is an action taken to protect the reputation of the Plaintiff’s goods and service as the defendant’s
product is deceiving the public into thinking they are purchasing Plaintiff’s product.
2. There is misrepresentation done with a malafide intention to deceive the general public for unfruitful
benefit.
3. There is a high chance of likelihood.

Court also observed that if the domain name has all the characteristics of a Trademark and could find an action for
passing off.
Infringement : using a deceptively similar Trademark with unfair intentions

Infringement occurs when someone with an unfair intention uses a deceptively similar Trademark and creates
confusion amongst the consumers which will eventually harm the reputation of the proprietor and cause loss of
profit as well. As per Section 29 of the Trade Mark, 1999 following acts constitute infringement –

● Using an identical mark by a person who is not a registered proprietor of the mark.
● Unauthorised use of someone’s identical mark in the course of trade and will create confusion between
the mark.
● Unfair advantage of identical marks to gain profit or to harm the reputation.
● If someone uses another person’s registered mark in his trade or business or on the packaging.
● If someone takes unfair advantage of someone’s registered Trademark by way of advertisement, have a
distinctive element of a Trademark that contains some words which are identically representative of
someone else’s Trademark.
1. Times Internet v. M/s Belize Domain Whois Service Ltd & Others, highlighted the issue of the
defendant using the essential elements of the plaintiff i.e. “Indiatimes” without any explanation and that
essential element will create confusion amongst the consumers and could result in associating the
defendant’s domain with that of the plaintiff company.
2. In Acqua Minerals Ltd. vs. Mr Pramod Borse & Anr, the court held that the defendant has registered
and used a domain name similar to that of the plaintiff i.e bisleri.com and he is guilty of cyber-squatting
which is a type of infringement, and the plaintiff to seek the transfer of the website in its name.

Conclusion

The concept of a domain name is an extended version of Trademark and has all the similar things of being seen as a
Trademark. The case of Arun Jaitley, V. Network Solutions Private Ltd., laid out a few important points regarding
domain names as Trademark by the following points –

1. That the domain name is not just an address but is used for a known person or the prospective customer
to visit the webpage and immediately connect with that particular individual’s services.
2. Domain names are the personality goodwill of the company in the virtual world which is similar to
goodwill in the physical world.
3. It is important to have protection for domain names to protect them from cybersquatting or trafficking
like Trademark law.

Since domain names act as a reputation for brands in a virtual world, there is a high chance of it being
misrepresented by someone else to harm the reputation. Therefore, it should be seen as a Trademark and should be
protected as a Trademark.

Rights of trademarks in ipr law

Rights of an Unregistered Trademark Owner

The owner of an unregistered trademark can prevent any third party from using a deceptively identical trademark.
Such unauthorized use by rivals results in passing off. The proceedings for an unregistered trademark infringement
can be initiated under Common Law Rights.
Vakilsearch‘s free trademark search tool helps you to check trademark availability before you begin the registration
process.
The proprietor must be able to prove the infringement by establishing the following important factors to bring action
against the pass-off:
1. The trademark owners acquired goodwill in the market
2. Misrepresentation of the defendant’s act
3. The loss suffered by the owner or likely to be suffered by the owner

Rights of a Registered Trademark Owner

It is not mandatory to register your trademark. However, registering it provides broader rights as compared to the
rights of an unregistered trademark. It is a cumbersome process. But once registered, it leaves with the owner certain
valuable rights. Let us list them out.

1. The Right to Exclusive Use

The exclusive right to use the trademark concerning the products and goods for which it was registered, under some
conditions. If there are more than one proprietors in whose name the trademark is registered, each of them will have
the same right as other unregistered users

2. The Right to Statutory Remedy for Any Infringement

As the owner has exclusive rights over the registered trademark, he/she can seek legal solutions to any sort of
infringement of their registered trademark, in a manner prescribed by law.

3. Right to Assign
A registered trademark owner has the right to transfer ownership by the way of license or assignment. They can
provide effectual receipts for such assignments.

4. Right to Register Correction

The Owner of a Registered Trademark can apply for correction of the register with regards to the name, address, or
description of the registered proprietor. He has the right to even cancel out any entry of trademark on the register, or
strike out any class of goods and services from the register.
Conclusion
A trademark in India is registered under the Trademark Act, 2016. The Act authorises the owner of the trademark to
sue for damages and trademark infringement when contraventions of the trademark occur. To obtain the
aforementioned rights of a registered trademark owner, you might want to get your trademark registered

Designs act 2000:

In our day to day life, we encounter various objects which we can recognize by observing their design. Products
which are artistically designed can grab the attention of the customer the moment they see it. These designs can take
the form of Art, drawings, graphics etc. These designs may be created by professionals which includes engineered
designs or architectures blueprints for any property, interior designs etc.

The term ‘design’ does not include any procedures such as mode of construction of an article. Earlier this Act was
governed by Design Act, 1911. So as to bring the Design Act at par with International Law enactment of the new act
came into being. Presently, design laws are maintained by the Design Act, 2000.
Intellectual property laws in India cover the rights related to trademarks, copyrights, patents, designs and
geographical indications of goods. The basis of this Act was ‘first to file, first to get’ system which means that an
innovator or owner of any design should file an application to register the same as soon as possible to prevent it
from piracy and for claiming certain rights over that particular design.

Design act 2000

Earlier this Act was governed by the Design Act, 1911. In order to bring the Design Act at par with the International
law the enactment of the Design Act, 2000 took place. So, presently the design laws are regulated by the Design Act
of 2000. It is an Act to consolidate and amend the law relating to the protection of designs. It was published in the
Gazette of India and came into force on 12.05.2000. This Act is a complete code in itself and is statutory in nature. It
extends to the whole of India.

Design act 2000 definition

“Design” means features of shape, pattern, configuration, ornament or composition of colors or lines which is
applied in three dimensional or two dimensional or in both the forms using any of the process whether manual,
chemical, mechanical, separate or combined which in the finished article appeal to or judged wholly by the eye.

What it does not include?

● It does not include any mode of construction or any trademark as defined under clause (v) of sub-
section (1) of Section 2 of the Trade and Merchandise Marks Act, 1958.
● It does not include ‘property mark’ as defined in section 479 of the Indian Penal Code, 1860.
● It does not include any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

Origin and development of design act in India

 ● The origin of the Design Act in India traces back to the British period.
● The first Act that gave privileges and protection to designs was the Patent and Designs Act, 1872. This
Act supplemented the Act of 1859 which was passed by the Governor-General of India to protect
industrial designs and grant privileges to inventors.
● The Inventions and Designs Act of 1888 repealed this Act of 1872.
● The Act of 1888 was a reflection of the Designs Act of the United Kingdom.
● In the year 1911, the British government enacted a new law in the form of the Patent and Designs Act
repealing all the prior legislations.
● In 1930, this Act was amended and the government came up with some changes in the process of
registration of designs in which the concept of new and original design changed to the new or original
design.
● This legislation used to govern the matters related to both patents as well as designs.
● In 1970, the Patent Act was enacted to deal with the matters of patent specifically. All the provisions
regarding patents from this Act were repealed and it continued to deal with Industrial designs till 2000.
● India became a member state of the WTO in the year 1995. Consequently, the Patents and Designs Act
of 1911 was repealed and a new act called the Designs Act, 2000 was enacted in compliance with
TRIPS (Trade-Related aspects of Intellectual Property Rights) to make design laws for the country.
● This new Act was enforced on 11th May 2001.

Salient features of design act 2000

● India is a member of the World Trade Organization’s Paris Convention. It has signed the Patent
Cooperation Treaty which allows all the signatories of the convention to claim priority rights.
● Under the Act of 2000, Locarno classification has been adopted in which the classification is based
only on the subject matter of design. Under the previous provisions, the classification was made on the
basis of the material which has been used to make that material.
● The introduction of “Absolute Novelty” makes it possible to judge a novelty on the basis of prior
publication of any article. This is applicable in other countries also.
● As per the new law, a design can be restored which was absent in the previous enactment. Now, the
registration of a design can be restored.
● The Act allows the district courts to transfer cases to the high courts where the jurisdiction is present. It
is possible only in cases where a person is challenging the validity of any registration.
● Laws regarding the delegation of powers of the controllers to other controllers and the duty of examiner
are also mentioned in the new Act.
● The quantum of punishment is also enhanced under the Act in case of any infringement.
● The secrecy of two years of a registered design is also revoked.
● Provisions regarding the avoidance of certain restrictive conditions are also there so as to regulate anti-
competitive practices in contractual licenses.
● Whenever a license is brought within the domain of public records and that too publicly, the
registration is likely to be taken into consideration. Anyone can get a certified copy of it in order to
inspect the same.
● The laws regarding the substitution of the application before registering a design are also mentioned in
the new enactment.
● Under new provisions, power has been given to district court to transfer cases to the high court where
the court is having jurisdiction. This is only possible if the person is challenging the validity of the
design registration.
● Incorporates the provisions regarding delegation of powers of the controller to other controllers and
duty of examiner.
● Under the new provision, the quantum of punishment is also enhanced in case of infringement.
● It revokes the secrecy of two years of a registered design.
 ● It contains provisions for the avoidance of certain restrictive conditions so as to regulate anti-
competitive practices within contractual licenses.
● The registration is taken into consideration when it is brought within the domain of public records that
too physically. Anyone can inspect the records and get a certified copy of it.
● It contains provisions for substitution of the application before registering the design.

Objectives of design act 2000

● The primary objective of the Design Act is to protect the designs.

● The Design Act 0f 2000 is an Act to consolidate and amend the law relating to the protection of
designs.
● Its main objective is to protect new or original designs from getting copied which causes loss to the
proprietor.
● The important purpose of design registration is to see that the creator, originator or artisan of any
design is not deprived of his reward for creating that design by others copying it to their goods or
products.
● An industrial design helps in drawing a customer’s attention and helps in increasing the commercial
value of an article. Therefore, helps in expanding its market.
● There are many competitors who adopt evil ways to reduce the competition in the rival groups by
exploiting the designs to their advantage. Thus, it is necessary to have laws to safeguard the interests of
the owners of these designs. In order to fulfill this objective, the Design Act of 2002 came into
existence.

What is design all about?

The term ‘Design’ under Design Act is defined as :

“Features of shape, any configuration, pattern, ornament or composition of lines or colours which is applied to
Two dimensional or three dimensional or in both the forms using any process including manual, chemical or
mechanical, separate or combined which in the finished article appeal to or judged solely by the eye.”

It neither includes any mode of construction nor any trademark as defined under clause (v) of sub-section (1) of
section 2 of Trade and Merchandise Marks Act, 1958. It even does not includes property mark as defined in section
479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.[1]

With reference to the Design Act, 2000 what are articles?

Under the provisions of Design Act, 2000, any manufactured object is known to be “article”. The object can be of
any substance irrespective of artificial or natural. The article must be capable of being made and sold separately.

Essential Requirements for registration

Novelty and originality

A design can be considered for registration only if they are unique. A combination of previously registered design
can also be considered only if the combination produces new visuals. In a case Hello Mineral Water PVT. LTD. v.
Thermoking California Pure, a design of water dispenser having a cylindrical shape was not considered as new on
the grounds that mere shape and form is not sufficient to prove novelty.

Design must be unique, a Prior publication is not acceptable

The design must not be a published one. If the design is already published than the design is not eligible for the
publication. There should not be any tangible copy available already in the market if you are seeking registration of
the design that is in digital format. Displaying of the design in any fashion show by the creator is the publication of
that design. Secret and private use of the design does not amount to the publication and can be used for the
experimental purpose.

It was held in Kemp and company v. Prima Plastics LTD. that disclosure of design by the proprietor to any third
person cannot be claimed as publication provided that the disclosure must be in good faith.

Making application of design to an Article

The applicability of the design should be to the article itself. It can be informed of a three-dimensional figure. There
are two-dimensional figures also included in this act i.e any painting or any graffiti on the walls or print on the
bedsheets.

The design must not be contrary to the order and morality

The design must be registrable under the Design Act, 2000. It must not be prohibited by the Government of India or
any institution so authorized. The design must be capable of registering under Section 5 of this act. The design
which can cause a breach of peace and may hurt the sentiments of the people may not be allowed to get register.

What is to be considered to register under this Act?

Looking forward to registering a design under Design Act, 2000, one must ensure following features in your design
which are:

● The work must be capable of selling and made separately.

● It must be original and new to the market. The plagiarised design will not be considered under this act.
● It should be purely distinguishable from other designs.
● It must not relate to obscenity or any material which is inappropriate.

Rights of the proprietor of the design

When a proprietor applies for the registration of the design he shall automatically get ‘copyrights in design’ for the
period of 10 years from the date of registration. This period can be extended if the proprietor wants to continue with
the design. The Design Act should not be confused with the Copyrights act because there are many products which
can be registered under both the acts but their remedies cannot be sought in both the acts individually.

Who is entitled to seek Registration?

As per the provisions of Design Act, 2000 any proprietor who is seeking registration of a design which is original
and unpublished previously in any country which does not seems to be contrary to any law and order of that country
can file an application for registration. A proprietor as per Section 2(j) includes that person who

1. is the author of that design

2. acquired design for a valid consideration and
3. Any person to whom the design has been devolved from the original proprietor.

In case there is more than one author than the design must be applied by the joint authors only.

Locarno classification

Locarno agreement is an agreement as per which the designs are registered under the Act. It classifies goods for the
purpose of registering them which helps in Design searches. It divides designs into different classes which are
mainly function-oriented.

Procedure for registration of design in India

Chapter 2 of the Design Act deals with the registration of designs and the procedure to be followed for the same.
The following steps must be followed:

● An application for the registration shall be made in the patent office in the prescribed form along with
the prescribed fee. The class in which the design is to be registered must be specified in the application
and the article(s) to which it is to be applied. There are separate applications which need to be filed for
each class of article.
● The controller will give the application for examining it so as to check whether the design is capable of
being registered or not. If everything seems perfect then the controller will accept the application and
proceed further.
● If there is any objection, then the applicant or his agent will be asked to make necessary amendments so
as to register the design and nullify the objection.
● If the objection does not get removed within three months after the hearing, the application will be
withdrawn and it must be noted that

Application for registration of designs

The application for registration of designs is given under Section 5 of the Design Act, 2000.

● The controller registers a design under this Act after verifying that the design of any person, claiming
to be the proprietor, is the new or original design not previously published anywhere and is not against
any public policy or morality. Provided that such a design should be capable of being registered under
this Act.
● The applications under the Act shall be filed in the Patent Office in the prescribed manner along with
the prescribed fee for filling the form.
● The design should be registered in a specific class and not in more than one class. In case of any doubt
regarding the class in which the design should be registered, the Controller will decide the matter.
 ● The controller may even reject any design and not register it. In such a case, the person aggrieved may
file an appeal before the High Court.
● If any application is not complete within the prescribed time limit owing to the fault of the applicant
then it shall be abandoned.
● A design when registered shall be registered as of the date of the application for registration.

A wide variety of items that can be registered under the Act include cutlery, dresses, etc.

Items that cannot be registered as a design under the Act

● Signs, emblems or flags of any country.

● Size of any article, if changed.
● Structures and buildings.
● Integrated circuits’ layout designs.
● Trade variations.
● Any principle or mode of construction of any article such as labels, tokens, cartoons, cards, etc.
● Books, calendars, certificates, jackets, forms-and other documents, greeting cards, maps and plan cards,
postcards, leaflets, stamps, medals, dressmaking patterns.
● A mechanical contrivance.
● Workshop alterations of components of an assembly.
● Parts of any article which is not manufactured and sold separately.

Duration of the registration of a design

The total time for which a design can be registered is 15 years. Initially, it was 10 years, which could be extended
for another 5 years by paying a fee of Rs. 2000 to the Controller but it should be done before the expiry of that 10
years period. The proprietor of any design may even file an application as soon as the design gets registered for such
an extension.

Appeal for cancellation of the registration of a design

The registration of any design can be canceled anytime after it gets registered by filing a petition for such
cancellation in Form 8 along with a fee of Rs. 1,500 to the Controller.

The grounds for such cancellation are as follows:

● The design has been already registered in India previously.

● It has been published in India or somewhere else before the date of registration.
● The design is not original or new.
● It is not registrable under the Act.

Entitlement of registration under design act 2000

According to the Design Act of 2000, a proprietor who wants to get his design registered and it is original and is not
published previously anywhere in any country and the one which does not seem to be clashing to any law and order
of that country, can file an application for getting the design registered. A proprietor includes the persons who:

● Is the author of the design;

● Has acquired the design for a valid consideration and
● Anyone to whom that design has been devolved from the original titleholder.

In case if there is more than one author of the design, then the design must be applied by the joint authors.

Copyright in registered designs

After the registration of a design, the proprietor shall have the copyright of the design for 10 years from the date of
registration.

If you want to extend the copyright period for the second period of 5 years then before the expiry of the original said
ten years an application must be filed in the Controller’s office along with the prescribed fee.

Register of designs

A book named ‘Register of Designs’ shall be kept at the Patent Office which contains all the details regarding the
registered designs such as names, addresses of proprietors of registered designs, notifications and transmissions of
designs and other important information. Such register must be maintained wholly or partly on computer diskettes
or floppies as may be prescribed.

Importance of Design

A design reflects someone’s intellect and creativity which afterward becomes a product. The design of any product
makes a long-lasting effect on the consumers’ minds. A design helps the consumers to recognize any product. If a
design is attractive then it adds value to the business of that product. Thus, in order to protect a design from
infringement, it is necessary to get it registered under the Designs Act, 2000. A mechanism has been pre-determined
by the government to fulfill this purpose.

It adds value to the product and helps in gaining fair returns on investment. It gives you fair competition in the
market.

Infringement of design

Just like any other Intellectual Property, the designs are also prone to infringement and they can also be copied by
the competitors or some other person. If a design has been copied then the owner of that design can claim damages
and can also apply for an injunction so that the design cannot be used further.

If there arises any question regarding the ascertainment of infringement then the Court will directly look for the
design from the point of view of an average customer. In other words, the Court will consider whether there is any
confusion which is obvious or some material facts in the minds of the customers regarding the two articles.
Industrial design infringement cases

In Disney Enterprises Inc. v. Prime Housewares Ltd., the international registration of industrial designs became a
matter of conflict in India. A Mumbai based company Prime Housewares used to manufacture characters like
Mickey Mouse, Donald Duck, etc. a suit was filed by the Disney enterprises for the infringement of their
international registered designs.

The court held that the plaintiff’s trademark is protected but not the designs under the Indian law. An order was
passed by the court for the infringement of the trademark of the enterprises. The Indian company was asked to
deliver all the infringing material to the enterprises so that it could not be used further.

Piracy of registered designs

Section 22 of the Designs Act, 2000 deals with the piracy of registered designs. According to this section, any
obvious or fraudulent imitation of a design which is already registered without the consent of its proprietor is
unlawful. It also prohibits the import of any material which closely resembles a registered design.

This section also provides that in case if a civil suit is brought against any piracy of a design, then the compensation
shall not exceed Rs. 50,000 for the infringement of one registered design. The compensation is statutorily fixed so it
serves a good ground for an interim injunction even before the trial commencement.

In the case of Bharat Glass Tube Limited v. Gopal Gas Works Ltd., the respondents (Gopal Glass Works) had
registered their design for diamond-shaped glass sheets and had a certificate of the same. The appellants started
using this design for marketing. These designs were made in collaboration with a German company.

After knowing that the appellants are using their design, they moved to the Court. The appellants contended that the
respondents’ designs were not new since the German company had been using it since 1992 and it was already
published in the U.K. Patent Office so it lost its originality. When the matter went to the High Court on appeal then
it restored the designs to the respondents. When the matter reached the Supreme Court, it upheld the decision of the
Calcutta High Court.

Conclusion

Design Act, 2000 brings about many changes which are observed in the features. When a developer develop
something for example If an architect develops the structure of a building there is an expectation that my structure
will not be infringed. Many designs are capable of providing the author with copyrights also.

In that case infringement of both cannot be claimed separately. The owner must have to choose which is more
beneficial. High intellects are involved in making a design look good and have an everlasting impact. Government
come up with a great policy of protecting designs. Moreover, these designs can also have a negative impact on the
value of the business if infringed. A good design is always remembered.

UNIT-V

Meaning of patent
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. The
main motto to enact patent law is to encourage inventors to contribute more in their field by awarding them
exclusive rights for their inventions. 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. The word “patent” is referred from a Latin term “patere” which means “to lay open,” i.e. to make
available for public inspection. There are three basic tests for any invention to be patentable:

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

An invention considered as new if, on the date of filing the application, any such invention is not known to the
public in any form, i.e. oral, writing, or any other form. Anything shall not be termed as inventive if such a thing is
already known to the public domain. The patent has a limited term of 20 years, which is counted from the date of
filing of the patent application. A patent is a territorial right. Thus it can only be applied in the country where it has
been granted. A patent is a territorial right. Thus it can only be applied in the country where it has been granted.
Therefore, any legal action against infringement or infringement of patent rights can only be taken in that country.
To obtain patent protection in different countries, each country must apply for a patent. The Patent Cooperation
Treaty (PCT) provides a way to file an international patent application in which a patent can be filed through a
single patent application in a large number of countries. However, the PCT of a patent remains discretionary of the
individual patent office only after the application is filed.

Under the Indian patent law, a patent can be obtained only for an invention which is new and useful. The invention
must relate to the machine, article or substance produced by a manufacturer, or the process of manufacture of an
article. A patent may also be obtained for innovation of an article or of a process of manufacture. In respect to
medicine or drug and certain classes of chemicals, no patent is granted for the substance itself even if it is new, but
the process of manufacturing and substance is patentable. The application for a patent must be true and the first
inventor or the person who has derived title from him, the right to apply for a patent being assignable.

Some inventions cannot be patented. In the European Patent Convention (EPC) law there is the list of non-
patentable subject-matter which includes methods of medical treatment or diagnosis, and new plant or animal
varieties. Further information on such fields can be obtained from a patent attorney. Nor many patents be granted for
inventions whose exploitation would be contrary to public order or morality (obvious examples being land-mines or
letter-bombs).The following are not regarded as inventions, discoveries, innovations, scientific theories and
mathematical methods, aesthetic creations, such as art or literature works or art of writing, schemes, rules and
methods for performing mental acts, playing games or doing business, presentations of information, computer
software.

History of Patent

The first step of the patent in India was Act VI of 1856. The main objective of the legislation was to encourage the
respective inventions of new and useful manufactures and to induce inventors to reveal their inventions and make
available for public. The Act was repealed by Act IX of 1857 as it had been enacted without the approval of the
British Crown. Fresh legislation was enacted for granting ‘exclusive privileges’ was introduced in 1859 as Act XV
of 1859. This legislation undergoes specific modifications of the previous legislation, namely, grant of exclusive
privileges to useful inventions only, an extension of priority period from 6 months to 12 months. The Act excluded
importers from the definition of an inventor. The Act was then amended in 1872, 1883 and 1888.
The Indian Patent and Design Act, 1911 repealed all previous acts. The Patents Act 1970, along with the Patent
Rules 1972, came into force on 20 April 1972, replacing the Indian Patent and Design Act 1911. The Patent Act is
basically based on the recommendations of the report Justice Ann. The Ayyangar Committee headed by Rajagopala
Iyengar. One of the recommendations was the allowance of process patents in relation to inventions related to drugs,
drugs, food and chemicals. Again The Patents Act, 1970 was amended by the Patents (Amendment) Act, 2005
regarding extending product patents in all areas of technology including food, medicine, chemicals and
microorganisms. Following the amendment, provisions relating to exclusive marketing rights (EMR) have been
repealed, and a provision has been introduced to enable the grant of compulsory licenses. Provisions related to pre-
grant and anti-post protests have also been introduced.

What can be patented?

Sections 3 and 4 of the Indian Patents Act, 1970 clearly mentioned the exclusions regarding what can be patented in
India. There are certain criteria which have to be fulfilled to obtain a patent in India. They are:

● Patent subject:

The most important consideration is to determine whether the Invention relates to a patent subject matter. Sections 3
and 4 of the Patents Act list non-patentable subject matter. Unless the Invention comes under any provision of
Section 3 or 4, it means that it consists of a subject for a patent.

● Novelty:

Innovation is an important criterion in determining the patent potential of an invention. Under Section 2(l) of the
Patent Act, a novelty or new Invention is defined as “no invention or technology published in any document before
the date of filing of a patent application, anywhere in the country or the world”. The complete specification, that is,
the subject matter has not fallen into the public domain or is not part of state of the art”.

Simply, the novelty requirement basically states that an invention that should never have been published in the
public domain. It must be the newest which have no same or similar prior arts.

● Inventive steps or non-clarity:

Under Section 2(ja) of the Patents Act, an inventive step is defined as “the characteristic of an invention that
involves technological advancement or is of economic importance or both, as compared to existing knowledge, and
invention not obvious to a person skilled in the art.” This means that the invention should not be obvious to a person
skilled in the same field where the invention is concerned. It should not be inventive and obvious for a person skilled
in the same field.

● Capable of industrial application:

Industrial applicability is defined in Section 2 (ac) of the Patents Act as “the invention is capable of being made or
used in an industry”. This basically means that the Invention cannot exist in the abstract. It must be capable of being
applied in any industry, which means that it must have practical utility in respect of patent.
These are statutory criteria for the patent of an invention. In addition, other important criteria for obtaining a patent
is the disclosure of a competent patent. A competent patent disclosure means a patent draft specification must
adequately disclose the Invention, so as to enable a person skilled in the same field related to carrying out the
Invention with undue efforts.

Rights and obligations of the patentee

Rights of Patentee

● Right to exploit patent: A patentee has the exclusive right to make use, exercise, sell or distribute the
patented article or substance in India, or to use or exercise the method or process if the patent is for a
person. This right can be exercised either by the patentee himself or by his agent or licensees. The
patentee’s rights are exercisable only during the term of the patent.
● Right to grant license: The patentee has the discretion to transfer rights or grant licenses or enter into
some other arrangement for a consideration. 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.
● Right to Surrender: 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.
● Right to sue for infringement: The patentee has a right to institute proceedings for infringement of the
patent in a District Court having jurisdiction to try the suit.

Obligations of patentee

● 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.
● Compulsory licenses: 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.
● 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.
● 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.
● 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.

Procedure of Patent

● 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

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

The examiner makes the first examination report of the patent application upon a review for the above conditions.
This is called patent prosecution. Everything that happens for a patent application before the grant of a patent is
usually called patent prosecution.

The first examination report submitted to the Controller by the examiner usually includes prior art (existing
documents prior to the filing date) that are similar to the claimed invention and is also reported to the patent
applicant.

● Step 8: Answer the objections

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:

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.

Grounds for opposition

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.

What are the Authorities concerning patent

The Controller of Patents is considered as the principal officer responsible for administering the patent system in
India. The Controller is regarded as the overall supervisor of the four Patent Offices in Chennai, Delhi, Mumbai and
Kolkata. Since the Controller also acts as the Registrar of Trademarks with the Head Office of the Trade Office in
Mumbai, the Controller acts as a patent from his office in Mumbai. Officially, the patent has its head office in
Kolkata (Calcutta). Patents granted under the Patents Act and other officers of the Patent Office discharge their
functions under the direction or regulation of the Controller.

Patent Infringement

Patent infringement is a violation which involves the unauthorized use, production, sale, or offer of sale of the
subject matter or Invention of another’s patent. There are many different types of patents, such as utility patents,
design patents, and plant patents. The basic idea behind patent infringement is that unauthorized parties are not
allowed to use patents without the owner’s permission.

When there is infringement of patent, the court generally compares the subject matter covered under the patent with
the used subject matter by the “infringer”, infringement occurs when the infringer Uses patent material from in the
exact form. Patent infringement is an act of any unauthorized manufacture, sale, or use of a patented invention.
Patent infringement occurs directly or indirectly.

Direct patent infringement: The most common form of infringement is direct infringement, where the Invention that
infringes patent claims is actually described, or the Invention performs substantially the same function.

Indirect patent infringement: Another form of patent infringement is indirect infringement, which is divided into two
types:

● Infringement by inducement is any activity by any third party that causes another person to infringe the
patent directly. This may include selling parts that can only be used realistically for a patented
invention, selling an invention with instructions to use in a certain method that infringes on a method
patent or licenses an invention that is covered by the patent of another. The inducer must assist
intentional infringement, but does not require intent to infringe on the patent.
● Contributory infringement is the sale of components of material that are made for use in a patented
invention and have no other commercial use. There is a significant overlap with indications, but
contributor violations require a high level of delay. Violations of the seller must have direct
infringement intent. To be an obligation for indirect violations, a direct violation must also be an
indirect act.

Doctrine of Equivalents And Doctrine of Colourable Variation

Patent infringement generally categorized into two, i.e. literal infringement and infringement in the doctrine of
equivalents. The term “literal infringement” means that each element heard in a claim has the same correspondence
in the alleged infringement device or process. However, even if there are no literal violations, a claim can be
infringed under the doctrine of equivalents if the accused device or some other element of the process performs the
same function, in substantially the same way to obtain substantially the same result. The principle of equivalence is
a legal rule in most patent systems in the world that allows a court to hold a party liable for patent infringement,
even though the infringing instrument or process does not fall within the literal scope of the patent claim, but Still
equal to the claimed Invention.

This is not an expansion of coverage of a claim permitted by the principle of equivalence. Rather, the scope of
coverage given to the patent owner is limited by

(i) the “prosecution history estoppel” and

(ii) the principle of the prior art.

The analysis of infringement determines whether a claim claimed in a patent “literally reads on the accused
infringer’s instrument or process”, or covers the allegedly infringing device in the doctrine of equivalents.

The steps in the analysis are:

● Oppose the scope of the “literal” language of claims.

● Comparing claims with the accused device or process to determine if there is a literal violation.
● If there is no literal violation, reduce the scope of claims under the principle of equality.

The doctrine of equivalents is considered as an equitable doctrine which effectively expands the scope of the claims
beyond their literal language to the true scope of the inventor’s contribution to the art. However, there are limitations
in the scope of equivalents to which the patent owner is entitled.

Remedies for Patent Infringement

Patent infringement lawsuits can result in significantly higher losses than other types of lawsuits. Some laws, such as
the Patent Act, allow plaintiffs to recover damages. Patent infringement is the illegal manufacture or usage of an
invention or improvement of someone else’s invention or subject matter who owns a patent issued by the
Government, without taking the owner’s consent either by consent, license or waiver. Several remedies are available
to patent owners in the event of an infringement. Measures available in patent infringement litigation may include
monetary relief, equal relief and costs, and attorneys’ fees.

Monetary Relief: Monetary relief in the form of compensatory damages is available to prevent patent infringement:

1. Indemnity compensation – A patent owner may have lost profits for infringement when they
established the value of the patent.
2. Increased damage – Up to three times, compensation charges can be charged in cases of will or
violation of will.
3. The time period for damages – The right to damages can be claimed only after the date when the patent
was issued and only 6 years before the infringement claim is filed.

Equitable relief: Orders are issued by the court to prevent a person from doing anything or Act. Injections are
available in two forms:
 1. Preliminary injunction – Orders made in the initial stage of lawsuits or lawsuits that prevent parties
from doing an act that is in dispute (such as making a patent product)
2. Permanent injunction – A final order of a court which permanently ceases certain activities or takes
various other actions.

Conclusion

Patents can provide great value and increased returns to individuals and companies on the investment made in
developing new technology. Patenting should be done with an intelligent strategy that aligns business interests to
implement the technology with a wide range of options in the search for how, where and when to patent. As an
example, with a focus on international considerations and regulations in specific countries, it is possible for a
company to achieve significant savings and improve the rights gained using patents.

Patentability: Applying For Patent

As we know that not every invention get patented, Patent is granted to the owner of the Patent when his/her
invention satisfies the conditions for Patentability. Such conditions are as follows:

● Novelty
● Inventive step or non-obviousness
● Industrial Application

Section 3 and Section 4 deals with the list of exceptions that do not fall under the invention and hence are non-
patentable.

Procedure for Grant of Patent

Persons entitled to apply for patents

—(1) Subject to the arrangements contained in section 134, an application for a patent for an invention might be
made by any of the accompanying persons, in other words,—

(a) By any individual professing to be the valid and first creator of the invention;

(b) By any individual being the assignee of the individual professing to be the valid and first innovator in regard of
the privilege to make such an application;

(c) By the legitimate agent of any deceased individual who is preceding his demise and is qualified to make such an
application.

(2) An application under sub-section (1) might be made by any of the persons alluded to in that either alone or
mutually with some other individual.
Filing of Application- Provisional/Complete: The Patent Application should be filed in form 1 accompanied by
either provisional or complete specification in form 2 (If an applicant is not ready with the complete invention and
need some more time for it then filing for the provisional application is recommended).

Publication of Application: The publication of the application is made after the expiry of 18 months from the
priority date and no fees are required by the inventor. A prior- request for publication can be made (Rule 24A) under
section 11A(2) in form 9 (optional step).

Request for Examination(REF): The request for examination to examine the patent application is made in form 18
(including fee) within 48 months from the filing date by the applicant.

Examination issue of First Examination Report(FER): The controller sends the patent application to the
examiner who checks for patentability as per the patentability criteria and creates the first examination report (FER).

Any objection raised regarding the patentability requirements during examining the patent application has to have
complied within 12 months.

Grant of Patent: Once the application meets all the requirements of patentability, the patent is granted to the
inventor with the seal form patent office and is notified in the journal from time to time.

Opposition: Section 25 of the Act deals with the opposition to grant of patents and are of two types: Pre Grant
(before the patent is granted) and Post Grant (after 1 year of grant of the patent). The opposition can be filed by
anyone interested in the field of the invention in form 7 with the prescribed fee within 12 months from the date of
publication of the patent.

Grounds of Opposition to Patent

● Obtained wrongly or fraudulently.

● The invention has been already published and known.
● Not involved in any of the inventive step.
● Not completed within 12 months.
● No clear and explicit description of the invention.
● Not considered an invention based on the subject matters for the invention.

Types of Patent Application

There are four types of Patent Application namely:

Provisional Application: This application is filed when the inventor is not quite ready with the invention and needs
more time for the development of his invention and also don’t want to lose the priority date. After 12 months of
filing the provisional application, the complete application should be filed otherwise the patent application will not
be considered. The provisional certificate may or may not have claimed.

Complete Application: Filing of the complete application, describes that the invention is complete. The complete
application have claims.
Elements of complete application:

● Description of invention
● The best method of performing
● Claims
● Abstract

Convention Application: When an inventor or an applicant files the patent application in Indian Patent Office
claiming for a priority date based on a similar application filed in convention countries, such applications are
convention application.

Patent Cooperation Treaty (PCT) – International Application: A PCT application is an international application
governed by the Patent Cooperation Treaty further administered by the World Intellectual Property Rights (WIPO).

Divisional Application: When an applicant feels that he has come across an invention which is a slight modification
of the invention for which he has already applied for or has obtained the patent, the applicant can go for the patent of
addition if the invention does not involve a substantial inventive step. There is no need to pay the separate renewal
fee for the patent of addition during the term of the main patent and it expires along with the main patent.

Patent of Addition: when application made by applicant claims more than one invention, the applicant on his own
files two or more applications, as applicable for each of the inventions. This type of application, divided out of the
parent one, is called a Divisional Application. The priority date for all the divisional applications will be the same as
that claimed by the Parent Application.

Documents Required For Patent Application

○ Application for grant of the patent in form 1

○ Proof of right to file the application from the inventor.
○ Provisional/complete specification in form -2
○ Statement and undertaking under section 8 in Form 3
○ Declaration as to inventorship
○ Power of authority in form 26
○ Applicant’s signature and an appropriate date
○ If application pertains to a biological material obtained from India, submission of the
permission from the National Biodiversity Authority
○ Request for Examination- Form 18
○ Requisite Statutory Fees

Rights of Patentee

Section 48 of the Act deals with the rights of conferring upon the patentee after the grant of the Patent.

● Exclusion of the third party to use, sell, or import the patented product without the patentee’s consent.
● Exclusion of the third party from using, selling or importing the patented product (if the subject matter
is the process) without the patentee’s consent.
Infringement and Remedies for patent

Infringement of patent refers to the violation of the rights of the patent holder that is whenever a person exercises the
rights of the patent holder without the patent owner’s consent, he causes infringement.

Types of Patent Infringement:

● Direct Infringement – Directly selling, marketing, or using commercially, any product which is
substantially close to the patented product without the consent of the patentee.
● Indirect Infringement- Deceitful and accidental patent infringement in any incident is an indirect
infringement.
● Contributory infringement- If the person knowingly infringes the rights of the patent holder, it refers
to contributory infringement.

Some acts that would not lead to infringement are as follows.

● Government use: As per Section 100 a patented invention can be used by the central government for its
own use and as per section 47, the patented invention can be imported by the government.
● Exemption on experiments and research: the use of a patented invention for experiments and teaching
purposes does not come under infringement.
● Patented inventions on drugs and medicines can be imported by the government.
● Any patented invention on foreign vessel/ aircraft/ vehicle comes to India is not an infringement.

Filing suits for infringement

Section 104 of the Patent Act, 1970 deals with the filing of the suit by the patentee against the infringement. The
patentee can file a suit in a district court or directly in the high court. Suit for patent infringement can be filed after
the grant of patent yet the patentee can also claim for damages committed between the publication of patent
application to the grant of the patent.

The burden of proof is on the patentee after the grant of the patent but if the invention is a process than the burden to
prove for infringement lies on the defendant.

Remedies for patent

Section 108 deals with relief or remedies against the infringement.

Injunction

The injunction is the most common form of Remedy granted in Patent infringement proceedings. The injunction is
the order of the court restricting a person from beginning or continuing a course of action (infringing in this case)
threatening or invading legal rights of a person.

Types of Injunction
There are two types of an injunction-

1. Interim Injunction
2. Permanent Injunction

Interim Injunction restricts the person temporarily from doing act and is granted before the full-fledged trial.

Permanent Injunction, on the other hand, restrains a person from doing a specified act and can be granted after the
full-fledged trial.

Injunctions are preventive, prohibitive or restrictive that is restricting someone from doing a specified act or
mandatory that is, they compel or orders a person to do something.

The plaintiff can obtain interlocutory order in the form of a temporary injunction whenever a case of patent
infringement occurs from the court by proving the following facts:

1. The prima facie case of infringement

2. The balance of convenience in his favour
3. If the injunction is not granted he/she shall suffer irreparable damage.

Damages and account of profit

If the suit is in favour of the plaintiff, the court can award either damages or directs the defendant to render an
account of profits but not both.

Exceptions and Limitations of Patent in India

Types of Exceptions & Limitations

Article 30 of TRIPS (Trade-Related Aspects of Intellectual Property Rights) allows for limited exceptions to the
exclusive rights conferred by a patent.

● Exception on Non-Commercial use

The exclusive rights conferred by a patent does not allow the private or commercial activity.

The Government has the power to grant a license, known as Compulsory License (CL) , to a third party to use the
patented invention (when the patentee is not using the invention for profit) so as to restrict the rights of the patentee
for the purpose of preventing the abuse/ misuse of the rights by the property holder and to prevent the negative
effect of such action on the public.

When the patented invention is not commercialized in India or the invention is not available to the public at
reasonable prices or the invention is not manufactured in requisite amount, then the government grant such license.
 ● Exception on Experimental / Scientific Research

Section 47 of the Act subsection 3 deals with the exception on experimental and scientific use of Patented
invention, the grant of a patent is subject to the condition that any product or process, in respect of which the patent
is granted, may be made or used by any person for the purpose merely of experiment or research including the
imparting of instructions to the students.

This form of exception grants third parties to carry out experiments and scientific processes for teaching students
without infringing the rights of the patent holder.

● Exception on Regulatory use or Private use

Section 107A of the Indian Patent (Amendment) Act, 2005 deals with the exception of regulatory and private use
also referred as bolar Provision, this exemption allows the manufacturers of generic drugs to undertake steps
reasonably related to the development and submission of information required for obtaining marketing approval
anywhere in the world in respect of a patented product without the consent of the patentee.

This provision allows the generic producers to market and manufacture their goods before the expiration of the term
of the patent. Bolar Provision has been upheld as conforming to the TRIPS agreement and is used in several
countries to advance science and technology.

● Exception on Foreign Vessels, Aircraft or Land Vehicles

Section 49 the Indian Patents Act deals with the said exception, when the foreign vessels, aircraft, or land vehicles
accidentally or temporarily comes to India, the patent rights are not infringed when the patented invention is used
exclusively for the needs of foreign vessels, aircraft, or land vehicles and other accessories.

Conclusion

Patenting in India has protected the intellectual property of many innovators and has been useful in the growth of
commerce and technology in India. One has to go through a certain process for the grant of Patent. Grant of Patent
confers monopolistic rights upon the Patentee excluding the third party to sell, use, manufacture or import of the
patented product without the consent of the patentee. If someone tries to use, sell, manufacture or import such
patented products leading to the infringement of the rights of the patentee, the patentee can sue the person.