Oic Ipr

Online Introductory Course in
Intellectual
Property
Rights
Online Introductory Course in Intellectual Property Rights
Overview of IP related Legislation in India
1. PATENTS ................................................................................................................... 4
1.1 REGULATORY FRAMEWORK .................................................................................. 4
1.2 CONDITIONS OF PATENTABILITY ........................................................................... 4
1.3 NON-PATENTABLE INVENTIONS ............................................................................. 6
1.4 PROCEDURE TO OBTAIN A PATENT ....................................................................... 9
1.5 RIGHTS OF A PATENTEE ...................................................................................... 12
1.6 EXCEPTIONS TO THE RIGHTS OF A PATENTEE..................................................... 17
1.7 PATENTS IN COMPUTER PROGRAMS .................................................................. 19
1.8 PATENT PROTECTION FOR MICRO-ORGANISMS................................................. 19
2. PROTECTION OF PLANT VARIETIES ............................................................... 21
3. TRADEMARKS ........................................................................................................ 22
3.1 MEANING OF A TRADEMARK ................................................................................ 22
3.2 FUNCTIONS OF A TRADEMARK ............................................................................ 24
3.3 ESSENTIAL FEATURES OF A TRADEMARK ........................................................... 24
3.4 STATUTORY AUTHORITIES ................................................................................... 26
3.5 REGISTRATION OF A TRADEMARK ....................................................................... 27
3.6 LICENSING OF A TRADEMARK .............................................................................. 28
3.7 INFRINGEMENT OF A TRADEMARK ....................................................................... 30
3.8 PASSING OFF A TRADEMARK ............................................................................... 33
3.9 RELIEFS IN INFRINGEMENT AND PASSING OFF SUITS .......................................... 33
4. GEOGRAPHICAL INDICATORS .......................................................................... 35
4.1 MEANING OF GEOGRAPHICAL INDICATORS ......................................................... 35
4.2 GEOGRAPHICAL INDICATORS AND TRADEMARKS .............................................. 35
4.3 GEOGRAPHICAL INDICATORS AND COLLECTIVE MARKS ................................... 36
4.4 REGULATORY AUTHORITIES ............................................................................... 36
4.5 REGISTRATION OF GEOGRAPHICAL INDICATORS ............................................... 36
4.6 INFRINGEMENT OF GEOGRAPHICAL INDICATORS ............................................... 37
5. DESIGNS .................................................................................................................. 38
5.1 REGULATORY FRAMEWORK ................................................................................ 38
5.2 MEANING OF A DESIGN ........................................................................................ 38
5.3 REGISTRATION OF A DESIGN ............................................................................... 40
5.4 RIGHTS GRANTED TO A PROPRIETOR OF A DESIGN ............................................ 41
5.5 INFRINGEMENT OF A DESIGN ............................................................................... 42
6. COPYRIGHT ............................................................................................................ 44
6.1 PROTECTED WORKS ............................................................................................ 44
6.2 OWNERSHIP OF COPYRIGHT ................................................................................ 48
6.3 RIGHTS CONFERRED BY COPYRIGHT................................................................... 50
6.4 LIMITATION ON RIGHTS OF COPYRIGHT OWNERS ................................................ 53
6.5 ASSIGNMENT OF COPYRIGHT .............................................................................. 55
© 2009 Asian School of Cyber Laws. -1-

Introduction
To go home is to enter a place built & filled with human creativity &
invention. From a carpet to a sofa, from the washing machine, the
refrigerator and the telephone, to the music, the books, the paintings and
family photographs, everything with which we live is a product of human
creativity. These things are creations of the human mind and hence
called intellectual property.
The objective of this chapter is to introduce you to the fundamental

concepts of intellectual property rights. Intellectual property is divided into
two categories - Industrial Property and Copyright.
Industrial property deals with patents, trademarks, geographical

indicators, designs and semiconductors. Copyright covers literary,
dramatic, artistic, musical, cinematographic films and sound recording.
-2- © 2009 Asian School of Cyber Laws.

The primary legislations regulating intellectual property in India are:

1) The Patents Act 1970.
2) The Trade Marks Act 1958.
3) The Geographical Indications of Goods (Registration and Protection)

Act 1999.
4) The Designs Act 2000.
5) The Semiconductor Integrated Circuits Layout-Design Act 2000.
6) The Copyright Act 1957.
The concept of intellectual property can be traced back to the Byzantine

Empire where monopolies were granted. For instance, in Greece a one
year monopoly was given to cooks to exploit their recipes. A statutory
legislation in the Senate of Venice provided exclusive privileges to people
who invented any machine or process to speed up silk making.
Thus, from intellectual property being totally alien to the nomadic

community came an era where every new idea was given protection
under the category of intellectual property rights.
For a simple understanding of industrial property, let’s look at a

refrigerator. The branded food products each carry a trademark assuring
the consumer of a particular quality. Their special packaging (canned,
vacuum-packed, key-opened containers or pop tops) can be both
patented inventions as well as examples of industrial designs.
The preservation processes can be patented and the mechanical

elements of the refrigerator e.g. the parts & processes that keep food
cold, are patented inventions.
The aesthetic elements, the design of the drawers, shelves, the style &
appearance of the temperature controls can be protected as industrial
designs. The refrigerator’s operating manual as an original written text
can be protected by copyright.
Therefore, it can be said that inside a refrigerator is a world of intellectual

property!
Set out below, for your study, is a brief discussion on the various types of
industrial property:
1) Patents.
2) Trademarks and Geographical Indication.
3) Designs.
4) Semiconductors.

1. Patents
Inventions are protected by patents. An invention is a product or a
process that provides a new way of doing something or offers a new
technical solution to something.
Illustration
Sanya develops a new vaccine to cure
AIDS. She has made an invention.
Patent protection is usually provided for 20 years from the filing date of
patent application. Once a patent expires, the protection ends & an
invention enters the public domain available for commercial exploitation
by others. This provides valuable information for other inventors as well
as inspiration for future generations of researchers & inventors. This
leads to further invention & innovation.
Therefore, patents not only provide incentives to individuals by ensuring

recognition & material reward but also help enrich the total body of
technical knowledge in the world.
1.1 Regulatory framework

The Indian Patents Act 1970 and the Patent Rules 2003 regulate the
grant, the operative period, the revocation and infringement of patents. In
keeping with the requirements of the Trade Related Aspects of
Intellectual Property Rights Agreement (TRIPS Agreement) the Patents
Act 1970 was amended in 2005 and the Patent Rules 2003 were
amended in 2005 and 2006.
1.2 Conditions of patentability

For an invention to be patentable it must be:
1) a new product or process,
2) non-obvious, and
3) useful and capable of industrial application.
1.2.1 New product or process

The element of newness or novelty will depend upon the state of prior
art. In other words, if a particular invention has already been published or
used or is a part of the existing knowledge, it will no longer be considered
to be novel.
Illustration
Sameer sends invites and a write up on his
invention to his friends to discuss the
invention over coffee. The invention related
to a medicine tablet with a composition
similar to the Crocin tablet. After his friends
approved of it he applied for a product
patent on a tablet.

The patent was not granted as Sameer had

discussed it with his friends and the
composition of the tablet was already a part
of existing knowledge. Hence, his invention
lacked novelty.
Therefore, for an invention to be patentable, it must involve innovation

which has not been anticipated by publication in any document or used in
the country before filing the patent application.
1.2.2 Non-obvious
The invention must be non-obvious to a person skilled in the art to which
the invention relates.
Illustration
Pooja, an architect designs a simple dining
table and applies for a patent.
Although, the making of the dining table is

non-obvious to a layman it is very simple
and obvious to another architect of average
skill. Hence, as the invention lacked non-
obviousness it was rejected.
Therefore, for an invention to be patentable, it must involve innovation

which has not been anticipated by publication in any document or used in
the country or elsewhere in the world before filing the patent application.
1.2.3 Useful and capable of industrial application

The invention must be of beneficial use to mankind. An invention will not
be patentable if it is new and non-obvious but not useful.
Illustration
Tanya applies for a process and product
patent on a water proof jacket which allows
you to swim along with sharks without
causing any injury. The water proof jacket
emits ultrasound waves that ward off the
sharks.
Since, the invention satisfies the

patentability conditions of novelty, non-
obviousness and utility, a patent was
granted to Tanya.
Summing up, it maybe said that an invention is a question of fact in each

case. The end product of an invention is protected. An improvement on
something known is a subject matter of a patent provided it results in a
new product or process or a more useful or economical product or
process.

1.3 Non-patentable inventions

In spite of certain inventions satisfying the foregoing conditions of
patentability, they cannot be patented under the Indian Patents Act 1970.
Set out below for your reference is the list of non-patentable inventions:
1) An invention which is frivolous or contrary to well established natural

laws.
Illustration
Sameer applies for a patent on a “potion”
that can make a person fly! Being contrary
to natural principles, the “potion” cannot be
patented.
2) An invention which is contrary to public order or morality or which

causes serious prejudice to human, animal, plant life, health or
environment.
Illustration
Tanya designs a device which makes pick
pocketing easier, quicker and more
efficient. Although, the invention satisfies
the criteria of novelty and non-obviousness,
it is against public order. Therefore, it
cannot be patented.
3) The mere discovery of a scientific principle or the formulation of an

abstract theory or discovery of any living thing or non-living
substance occurring in nature.
Illustration
Sameer discovers the following scientific
principle:
Work = Force x Distance
In Sameer’s words if you push a table

across a certain distance, work is said to be
done.
Sameer will not get a patent for this

scientific principle.
4) The mere discovery of a new form, property or use of a known

substance without any enhancement of the known efficacy of that
substance.
Illustration
Pooja discovers that turmeric powder has
medicinal properties to cure blood
pressure. As it is a mere discovery of a new
property or new use of a known substance,
Pooja will not get a patent for it.

5) A substance obtained by a mere admixture resulting only in the

aggregation of the properties of the components thereof or a process
for producing such substance.
Illustration
Sanya combines a few pieces of papaya,
one teaspoon of curd, a few drops of honey
and lemon juice to make a beauty pack.
Since the beauty pack is an admixture of

known substances it is not patentable.
6) The mere arrangement or re-arrangement or duplication of known

devices each functioning independently of one another in a known
way.
Illustration
Sanya is a chemical engineer and the
director of Noodle Ltd. The company won a
tender to set up an infrastructure project in
Japan.
For power generation it requires a more

efficient distillation process. Accordingly,
Sanya re-arranged the setting of the heat
source, thermometer, cooling water,
condenser, still pot and distillatory to get
the desired effect.
She will not get a patent on the re-arranged

process of distillation.
7) A method of agriculture or horticulture.
Illustration
Sanya comes up with an innovative
technique of harvesting blackberries. She
will not get a patent on her innovative
farming technique.
8) Any process for the medicinal or other treatment of human beings or

animals to render them free of disease or to increase their economic
value or that of their products.
Illustration
Tanya is a leading cardiologist. She
develops a new artificial heart valve which
does not require an open heart surgery to
clear the blockage.
She will not get a patent on her artificial

heart valve.

9) Plants and animals in whole or any part thereof other than micro-
organisms including seeds, varieties and species and essentially
biological process for production or propagation of plants and
animals.
Illustration
Sanya, a wildlife journalist discovers a new
mammal in Goa. She cannot get a patent
on her discovery.
10) A mathematical or business method or a computer programme per se

or algorithms.
11) Literary, dramatic, musical or artistic work or any other aesthetic

creation including cinematographic works and television productions.
Illustration
Sanya has authored a book ‘Enigma’. She
will not get a patent but a copyright in it.
12) A mere scheme or rule or method of performing mental act or method

of playing game.
Illustration
Tanya has come up with a new technique
to crack sudoku games. She will not get a
patent for that technique.
13) A presentation of information.
Illustration
Sameer has made a comprehensive power
point presentation on his new software
‘Easy Generate’.
He will not have a patent on the

presentation but can have a copyright in it.
14) Topography of integrated circuits.
Illustration
Sameer, an electronics engineer arranges
the lead wires, the electronic circuit and the
insulating material to design an integrated
circuit or chip for a mobile phone.
He will not get a patent as the integrated

circuit is a result of a mere arrangement or
re-arrangement or duplication of known
devices.

15) An invention which in effect is traditional knowledge or which is an

aggregation or duplication of known properties of traditionally known
component.
Illustration
Pooja discovers that turmeric powder has
medicinal properties to cure blood
pressure.
As use of turmeric is a part of traditional

knowledge Pooja will not get a patent for it.
16) An invention relating to atomic energy.
Illustration
As part of her research paper at the Indian
Institute of Technology, Sanya developed a
nuclear reactor. She will not be able to get
a patent on it.
1.4 Procedure to obtain a patent

The steps involved in obtaining a patent include:
1) Submission of application.
2) Publication and examination of application.
3) Opposition to grant of patent.
4) Granting of patent.
1.4.1 Submission of application

A patent application can be made by the true and first inventor of the
invention or his assignee or a legal representative of a deceased person.
The application procedure is based on the first to apply system. Simply

put, the person who applies first gets the patent. In case, an inventor is
first to invent but applies for a patent later, any time after another inventor
has made the application, the first inventor will not be entitled to get a
patent.
Only one application can be made for one invention and it must be made
in the prescribed form and filed in the Patent Office. If an application is
made by an assignee of the true and first inventor, it must be
accompanied by a document authenticating such assignment.
The patent application must be accompanied by a patent specification. A

patent specification is a technical document describing the invention. It
may be provisional or complete.
A provisional specification gives the initial description of an invention. On

the other hand, the complete specification gives a detailed description of

the invention in order to enable a person skilled in the art to use the
invention. The purpose of filing a specification is to make the invention
available to the public on the expiry of the term of the patent.
The patent application must be accompanied by a provisional

specification. However, the complete specification must be filed within 12
months from the date of filing the application. If it is not filed, the
application will be deemed to be abandoned.
1.4.2 Publication and examination of application

After the patent application has been submitted, it is open to the public
for such period as maybe prescribed. On request of the applicant, the
Controller may publish his application before the expiry of the prescribed
period.
On the expiry of the prescribed period, every application will be published

except the following:
1) Where the application is one in which a secrecy direction is

imposed.
2) Where the application is abandoned.
3) Where the application is withdrawn 3 months prior to the

prescribed period.
When an application is published it must include the following:

1) Particulars of the date of application.
2) Number of application.
3) Name and address of the applicant.
4) An abstract.
After the publication of the application, the specifications and drawings

can be made available to the public.
On and from the date of application of patent and until the date of grant
of patent, the applicant is entitled to all the rights and privileges as if a
patent for invention had been granted on the date of publication of the
application. The only thing that the applicant is not entitled to do is to
institute any proceedings for infringement until the patent has been
granted.
The applicant can make a request for examination in respect for a patent
application, the specification and other related documents. On such a
request, the Controller General of Patents will refer the matter to the
examiner for making a report on the following lines:
- 10 - © 2009 Asian School of Cyber Laws.

1) Whether the patent application, the specification and other related

documents are in compliance with the Patents Act 1970 and the
Patent Rules 2003.
2) Whether there are any lawful grounds of objection to the grant of

patent.
3) The result of the investigation and any other related matters.
To write out the report, the examiner makes a search in prior

applications, specifications and other documents of patents already
granted. This is to ascertain whether the same invention has already
been published or claimed or is a subject matter of existing or expired
patents.
If on examination, any objections are raised by the patent examiner, it will

be communicated to the applicant by the patent office. The objections
generally relate to the drafting of the specification and claims, anticipation
of any of the claims in any prior publication of specification or claims or
prior publication of the invention in some book or journal.
If the applicant fails to rectify the objections within 15 months from the
date on which the first statement of objections is forwarded to the
applicant, the application is deemed to be abandoned. The time period
for making amendments may be extended up to a maximum of 18
months. If the objections are not rectified, the Controller may refuse to
accept the application after hearing the applicant.
1.4.3 Opposition to grant of patent

Where an application for a patent is published but a patent is not yet
granted, any person may in writing oppose the grant of the patent. A few
grounds of opposition may be:
1) There maybe an incidence where there are 2 inventors working on an

invention and one of them files an application himself without
including the other inventor. In such a case, the other inventor may
object on the grounds that the invention was wrongfully obtained as
he had invented a major portion of the invention.
2) There may be prior publication of the invention in India or elsewhere.
3) The invention may have been the subject matter of a prior claim in an
application which is prior in time to the applicant’s claim.
4) The invention does not satisfy the conditions of patentability.
5) The invention falls within the category of non-patentable inventions.
6) The complete specification does not describe the invention in detail.
The Controller on hearing the complainant may dispose of the
© 2009 Asian School of Cyber Laws. - 11 -

representation in the prescribed manner. Any person may raise the

foregoing oppositions before the Controller General of Patents any time
after the grant of the patent but before the expiry of one year from the
date of publication of grant of patent. In such a case, the Controller will
notify the patentee and constitute an Opposition Board to examine the
opposition and submit its recommendations to the Controller.
The Opposition Board after hearing the patentee and the complainant will
submit its recommendations to the Controller. Accordingly, the Controller
may maintain, amend or revoke the patent.
1.4.4 Granting of patent

Where the patent application is in order the patent will be granted
expeditiously with the seal of the patent office. The date on which the
patent is granted will be entered in the register.
Thereafter, the Controller will publish the fact that the patent has been
granted and it will be open for public inspection. The patent is granted for
a term of 20 years from the date of filing of the patent application.
1.5 Rights of a patentee

The rights conferred on a patentee are:
1) Exploitation of the patent.
2) Licensing the patent to another.
3) Assigning a patent to another.
4) Surrendering the patent.
5) Suing for infringement of the patent.
1.5.1 Exploitation of the patent

The objective of applying for a patent is to avail of an exclusive right to
use the invention. In other words, a patent will give the patentee the
exclusive right to manufacture and market the invented product.
If an inventor does not apply for a patent, he still has the right to
manufacture and market his product. But he will not be able to exclude
others from producing and marketing the same product. Therefore, to
exclude others from exercising such rights an inventor must file for a
patent and be granted a patent as well.
Illustration 1
Sanya got a patent for her revolutionary
bicycle design. This means that she has an
exclusive right to manufacture and market
the vaccine for 20 years.

Illustration 2
Sameer developed a process by virtue of
which the main component of Aspirin,
namely, Acetyl Salicyclic Acid can be
produced 10 times faster and gives a
greater yield than is currently possible.
Sameer does not apply for a process

patent. Therefore, he does not have an
exclusive right to exploit the invention.
1.5.2 Licensing the patent to another

A patentee can transfer his patent to another person. This is done
through a license agreement permitting the licensee to manufacture, use
or sell the invention.
The license may be voluntary, statutory or exclusive in nature. In a

voluntary license, the terms and conditions are settled between the
patentee and the licensee. In statutory licensing, the Controller and the
Central Government play an important role. An exclusive license confers
all the rights on the licensee excluding all other persons.
Illustration
Sanya has a product patent for a bread
maker which can simultaneously knead the
dough, bake the bread and make
sandwiches out of them.
Sanya grants a voluntary license to Tanya

to manufacture a part of the bread maker
on payment of an annual royalty.
As the bread maker is not available to the

public at a reasonable price the Central
Government obtains a statutory license
(compulsory license) on the bread maker
on compensating Sanya. Sanya grants
Sameer an exclusive license to market the
bread maker in the whole of Asia.
1.5.3 Assigning a patent to another

Assignment means the transfer by a party of all of its rights or interest in
the property. A license merely confers a personal privilege to do some
particular act which the licensee can perform. There is no transfer of
interest in a license.
Illustration
Tanya has developed a machine which
cuts, chisels and polishes wood to give it a
finished look.

She has a patent on the process as well as

the product. Tanya has exploited her
invention for 10 years. For the remaining
tenure she has assigned her invention to
Sanya.
Sanya can now use, manufacture and

market the invention on an exclusive basis.
There can be a legal assignment, an equitable assignment or a

mortgage.
A legal assignment is done through an agreement and is duly registered

with the Controller. After such an assignment, the legal assignee can
have his name entered in the register of patents and can thereafter
exercise all the rights conferred on him by the proprietor of the patent.
In an equitable assignment, the assignment is through a letter and not a

duly registered agreement. Also, the legal assignee’s name is not
entered in the register of patents as a proprietor of the patent. He can
only have a notice of his interest entered in the register.
A mortgage is a document transferring the patent rights to the mortgagee

with a view to secure the payment of a specified sum of money. The
patentee is entitled to have the patent re-transferred to him on refund of
the money to the mortgagee. The mortgagee can have his name entered
in the register as a mortgagee and not as a proprietor.
1.5.4 Surrendering the patent

A patentee can surrender his patent by giving notice to the Controller. On
receipt of such notice, the Controller is required to publish such offer and
notify every interested party. Any interested party may object to the
surrender. The Controller on hearing both the parties may accept the
offer of surrender and revoke the patent.
Illustration
Sameer has a process patent on the
cushioning and technology used in
basketball shoes. He has exploited the
patent for over 12 years.
With technology evolving every day,

Sameer no longer wants to retain his
patent. Accordingly, he surrenders his
patent by giving notice to the Controller.
1.5.5 Suing for infringement of the patent

A patent confers the exclusive right on the patentee to make, distribute or
sell the invention in India. An infringement occurs when any of these
rights are violated.

Infringement maybe in the form of:

1. colourable imitation of an invention,
2. immaterial variations in the invention or
3. by using mechanical equivalents in the invention.
In the case of colourable or immaterial variations amounting to

infringement, the infringer makes slight modification in the process or
product but in fact takes in substance the essential features of the
patentee’s invention.
Illustration
Sanya has a process and product patent on
her drug ‘MetaPhlor’ with the following
composition:
Paracetamol (500 mg) + Phenylpropane

(25 mg) + Caffeine (32 mg) + Sunset
Yellow FCF.
The essential components of the drug

being Paracetamol and Caffeine.
Pooja uses the following composition to

develop another drug ‘BioSphix’:
Water (100 mg) Paracetamol (350 mg) +

Phenylpropane (10 mg) + Caffeine (35 mg)
+ Q.S Colour.
Pooja does not get a patent on her drug

BioSphix as she has taken the essential
components of Sanya’s drug Metaphlor
with minor variations. Accordingly, it maybe
said that Pooja is guilty of colourable
imitation of Sanya’s invention.
Infringement by mechanical equivalents would occur when one uses

mere substitutes for those features so as to get the same result for the
same purpose as obtained by the patentee.
Illustration
Sanya has a process patent on the manner
of improving pavement lights. She has
constructed the lamps in such a manner
that the light from the lamps may be
diverted at a particular angle by using a
single piece of moulded glass.
Sameer also works on the same invention

and merely substitutes the single piece with
series of pieces of moulded glass to get the
desired angle.

Sameer will not get a patent on his

invention as it is an invention using
mechanical equivalents.
An infringement suit can be instituted in the District Court. In certain

cases, it may be instituted in the High Court. For instance, where a suit
has been filed in the District Court and the defendants make a counter
claim for revocation of the patent, the suit will be transferred to the High
Court.
The following persons can file a suit for infringement within 3 years from
the date of infringement. The suit can be filed against the infringer, his
agents or principals or the consignees of the infringing article:
1) A patentee.
2) An exclusive licensee if the license is registered.
3) A compulsory licensee when the patentee refuses or neglects to

institute proceedings.
4) Licensees other than the foregoing, depending upon the terms

and conditions of the license.
5) An assignee.
The onus is on the plaintiff to establish infringement. A few of the

defenses that a defendant may set up are:
1) That the plaintiff is not entitled to sue for infringement. In other

words, the plaintiff is not a patentee, registered assignee or
exclusive licensee.
2) That there has been no infringement or any threat of infringement.

In other words, the defendant may plead that he had a license to
use the patent.
3) That the plaintiff is estopped or barred from denying his previous

conduct. For instance, where the plaintiff has assigned his patent
to the defendant through a registered agreement, he is estopped
or barred from alleging that the defendant has infringed his
patent.
By instituting a suit for infringement the reliefs available to the patentee

are:
1) injunction,
2) damages or account of profits.

Injunction
An injunction is an order of the court prohibiting someone from doing
some specified act. Generally, it is a preventive and protective remedy
aimed at preventing future wrongs. Injunctions are of 2 types:
1) temporary or interlocutory injunctions,
2) permanent injunctions.
A temporary or interlocutory injunction maybe granted at any time during

the proceedings of the suit. It is an injunction to restrain the defendant
from committing and continuing the acts of alleged infringement.
Whereas, a permanent injunction is granted at the termination of the trial

and it will remain in force until the remaining term of the patent.
Damages or account of profits

Every plaintiff is entitled to the relief of damages or account of profits. But
both the reliefs cannot be granted together. Damages are awarded to
compensate for the loss or injury suffered by the plaintiff. The amount of
damages awarded must be such that it puts the plaintiff in the same
position as he would have been if he had not encountered the wrong.
Account of profits is that part of the profits which can be attributed to the
use of the patentee’s invention by the infringer.
1.6 Exceptions to the rights of a patentee

The foregoing rights of the patentee are subject to the following
exceptions:
1) Government use of patent.
2) Compulsory licenses.
3) Use of inventions for defense purposes.
4) Revocation for non-working of patents.
5) Limitation on restored patents.
1.6.1 Government use of patent

At any time after the patent application is filed or the patent is granted,
the Central Government may use the invention for government purposes.
The right to make use of the invention also includes the right to sell the
goods.
If the invention appears on a government record or tests or trials have

been performed by the government, then it will not be liable to pay any
royalty or remuneration to the applicant. On the other hand, if the
invention does not appear on any government records, the government
will be liable to compensate the patentee on mutually agreed terms and
conditions.

To enable the government to make use of the invention, it must notify the
patentee of such use of the invention. If the patentee has granted an
exclusive license of the patent or assigned his patent on payment of
royalty, the Government is required to give notice to such licensee and
assignor as well.
Illustration
Sanya developed the drug ‘MetaPhlor’ to
preempt common cold. Common cold being
a common disease, the Central
Government acquired the patent on the
drug from Sanya by compensating her.
Thereafter, the Central Government

distributed the drug in every dispensary,
hospital or medical institution.
1.6.2 Compulsory licenses

Any person may make an application to the Controller for grant of a
compulsory license on a patent after the expiration of 3 years from the
date of grant of patent on the following grounds:
1) The requirements of the public with respect to the patented invention

have not been satisfied. For instance, since the patentee refused to
grant a license to a person, his existing trade and its development
had suffered.
2) The patented invention is not available to the public at reasonably

affordable price.
3) The patented invention cannot be worked in the territory of India.
Illustration
Sanya has a product patent for a bread
maker which can simultaneously knead the
dough, bake the bread and make
sandwiches out of them.
As the bread maker is not available to the

public at a reasonable price the Central
Government obtains a statutory license
(compulsory license) on the bread maker
after compensating Sanya.
1.6.3 Use of inventions for defense purposes

If the Central Government notifies to the Controller that a particular
invention set out in a patent application can be used for defense
purposes, then the Controller is required to prohibit or restrict the
publication of such invention. Thereafter, the Government may purchase
the invention and if the patent applicant suffers any hardship it may pay
compensation the applicant.

Illustration
Pooja has developed a poisonous gas and
applied for a patent.
The Central Government notifies the

Controller that the poisonous gas can be
used for defense purposes. Accordingly,
Pooja is compensated by the Central
Government and not granted her patent on
the poisonous gas.
1.6.4 Revocation for non-working of patents

If the patented invention cannot be worked in India on a commercial
scale to an adequate extent it may be revoked.
1.6.5 Limitation on restored patents

A patent may lapse on non-payment of renewal fee. During the lapsed
period persons other than the patentee may use the invention.
Accordingly, after the lapsed patent is restored the Controller may
impose conditions for protection or compensation to such other persons.
Also, the patentee loses his right to sue for infringement of a patent
committed by another person during the lapsed period.
1.7 Patents in Computer Programs

The Indian Patents Act 1970 does not set out any protection for computer
programs. Computer programs fall within the ambit of literary works and
accordingly are protected under the Copyright Act 1958. Although, in the
USA, computer programs are patentable inventions, in India computer
programs may be patentable along with hardware.
1.8 Patent Protection for Micro-Organisms

With the advent of molecular biology, genetics, bio-physics, cell biology
and immunology there has been a tremendous growth in modern
technology. Living organisms including plants and animal cells are used
in such technological research activities.
For instance, in the year 1980 the Supreme Court of United States had
granted a patent to a genetically engineered living organism. The
invention belonged to Dr. Ananda Chakraborty and consisted of a
genetically engineered bacterium that was capable of degrading oil spills.
This grant of patent for engineered micro-organism meant grant of
product status to that micro-organism.
Thus, came an era where patents were granted to technologies using

living organisms. This was governed by the Deposit Treaty 1977. In 1977
the Deposit Treaty had 38 members and India too had deposited its
ratification and accession instruments with the World Intellectual Property
Board.

As per the Deposit Treaty, where an invention involves micro-organism

or use of micro-organism, disclosure is not possible in writing. Hence, it
can only be effected by the deposit of a sample of the micro-organism
with the specialized institution. In order to avoid such deposit in every
country, the Budapest Treaty provides that the deposit of the micro-
organism maybe made only with the International Depository Authority.
This will save fees and cost associated with such deposit.

2. Protection of Plant Varieties

In order to protect and develop new plant varieties, the rights of farmers
and plant breeders the Protection of Plant Varieties and Farmers’ Rights
Act 2001 was enacted.
Under this Act, every new extant variety or farmers’ variety that conforms
to the requirements of novelty, uniformity and stability can be registered
with the Plant Varieties and Farmers Rights Authority.
A certificate of registration for a variety will confer an exclusive right on

the breeder or his successor, agent or licensee to produce, sell, market,
distribute, import or export the variety. In case of an extant variety, if the
breeder or his successor does not establish his right, the Central or State
Government, as the case maybe, will be deemed to be the owner of the
right.
Any person may use such variety to conduct experiments or research or

create other varieties provided he obtains the prior permission of the
breeder of the authorised variety.
If a person other than the breeder of a variety, his registered agent or

licensee sells, exports, imports or produces such variety without the
permission of its breeder he will be said to have infringed the rights of the
breeder.
Also, if a person other than the breeder of a variety, his registered agent
or licensee sells, exports, imports or produces a variety which is
deceptively similar to a registered variety and may cause confusion in the
minds of the public he will be said to have infringed the rights of the
breeder.
The registered breeder may file a suit for infringement in the district court
and seek an injunction, damages or accounts of profit.
A register called the National Register of Plant Varieties is kept at the

Head Office of the Registry in which names of all the registered plant
varieties, their seeds and other propagating material, with the names and
addresses of their respective breeders and their rights are entered.
Summing up, it maybe said that this Act was enacted to recognize and
protect the rights of farmers in respect of their contribution made in
conserving, improving and making available plant genetic resources for
the development of new plant varieties. This in turn stimulated
investment in research and development and facilitates the growth of the
seed industry.

3. Trademarks
Pooja goes shopping for weekly provisions. She picks up an attractive
‘Koor Koore’ packet of chips presuming it to be the standard Pepsi Co.
product ‘Kur Kure’. Little does she notice the spelling change on the
packet of chips. When she opens the packet, she discovers stale sub-
standard chips.
Has Pooja been duped? Does Pepsi Co. suffer a loss of reputation?
Yes, a consumer is said to be duped if he buys a commodity presuming it

to have originated from a certain identified source, when actually it is not.
Yes, the reputation of the trader also takes a beating.
Therefore, in order to save the interests of the consumer and the trader it
is said that a definite symbol which marks out the origin of goods from a
definite trade source must be attached to the goods. Such a symbol is
called a trademark.
3.1 Meaning of a trademark

A trademark is a visual representation attached to goods for the purpose
of indicating their trade origin.
Section 2(1)(m) of the Trade Marks Act 1999 defines a mark as:
Mark includes a device, brand, heading,

label, ticket, name, signature, word, letter,
shape of goods, packaging or combination
of colours or any combination thereof.
Section 2(1)(zb) of the Trade Marks Act 1999 defines a trademark as:
A mark capable of being represented

graphically and which is capable of
distinguishing the goods or services of one
person from those of others and may
include the shape of goods, their packaging
& combination of colours.
Illustration 1
Sanya has set up a company Noodle Ltd to
carry on the business of developing,
managing and marketing software
products.
She requests her friend Sameer, a website

designer to create a logo for Noodle Ltd.
Sameer in keeping with the business of
Noodle Ltd designs a logo in the shape of a

computer mouse coloured navy blue and

orange for Noodle Ltd. He also adds the
tag line ‘Click and Buy’ below the computer
mouse.
Therefore, the company’s trademark now is

the name Noodle Ltd, the computer mouse
coloured navy blue and orange and the tag
line ‘Click and Buy’.
Illustration 2
Tanya also carries on the business of
developing, managing and marketing
software products through a company
named Moodle Ltd.
The trademark of Moodle Ltd includes a

silver @ symbol and the name Moodle Ltd
written in black with a red background.
Sanya and Tanya carry on the same

business of developing, managing and
marketing software products. It can be
argued that the consumers may be
confused as to the origin of the goods
bought from the two companies.
But as the trademarks of Noodle Ltd and

Moodle Ltd are so different, consumers will
be able to distinguish the products of the
two companies.
The definition of a trademark includes the concept of service. In other

words, a trademark not only distinguishes goods but also services.
Section 2(1)(z) defines service as:
Service of any description which is made

available to potential users, and includes
the provision of services in connection with
business of any industrial or commercial
matters such as banking, communication,
education, financing, insurance, chit funds,
real estate, transport, storage, material
treatment, processing, supply of electrical
or other energy, boarding, lodging,
entertainment, amusement, construction,
repair, conveying of news or information or
advertising.

3.2 Functions of a trademark

A trademark entails the following functions:
1) It identifies the product and its origin.
2) It guarantees its quality.
3) It advertises the product.
4) It creates an image of the product in the mind of the consumer.
For instance, let us look at the company McDonald’s. All of us identify

with “fillet-o-fish” burger or the “McAloo tikki” burger and know that it
belongs to an American fast food chain called McDonald’s. While eating
the burgers we are assured of a particular quality and know that it is
different from a KFC zinger burger. The trademark of McDonald’s i.e. the
yellow M has created an image in our minds and therefore serves as an
advertising tool for McDonald’s.
We can also look at companies like Levis, Pepe or Lee. Their brand
value is so strong that customers are easily able to identify their
trademarks and are guaranteed a particular quality.
3.3 Essential features of a trademark

A trademark must have the following essential features:
1) It must be distinctive. Distinctiveness can be inherent or acquired.
Inherent distinctiveness means that it is distinct in itself and no one
can justifiably claim its use. Acquired distinctiveness means that it
has acquired distinctiveness through use.
Inherent distinctiveness can be established by the use of invented

words. For instance, invented words like RIN for washing powder,
SONY and AKAI for electronics, YASHIKA and KODAK for cameras
are inherently distinctive. Whereas, surnames or personal names like
CADBURY for chocolates or TATAS for fast moving consumer goods
have acquired distinctiveness through use.
Generally, surnames and personal names are common and

frequently occurring and hence cannot be registered as trademarks.
From a trademark perspective, this characteristic makes surnames
and personal names neither distinctive nor capable of distinguishing
the goods of one person from that of another bearing the same
surname or personal name.
As seen above, an exception maybe created in cases where

extensive use of the surname or personal name has made it acquire
distinctiveness or it is an unusual surname or personal name.
2) It must be a non-descriptive word. In other words, it can be a word

other than an invented word whether it is already existing or newly
coined. For instance, an existing dictionary word like COME can be
prefixed or suffixed to become a new word like COMEX for nylon
socks.

What is important is that, the non-descriptive word must be distinctive

and not have any direct reference to the quality or character of the
goods. In considering whether a mark has reference to the character
or quality of goods, the mark must be looked at, not on its
grammatical significance, but as it would represent itself to the public
at large.
Illustration
Sameer carries on the business of
manufacturing groundnut oil through his
company called RASOI. In keeping with the
competitive business environment, Sameer
applies to register his trademark RASOI.
The trademark is refused registration on

the following grounds:
1. To the general public the word ‘RASOI’

means cooking. The normal use of
groundnut oil is cooking. Thus, the
intended use of the commodity
undoubtedly forms a part of its
character.
2. Accordingly, to the people in the trade

as well as consumers, the word RASOI
would imply a direct reference to the
character of the goods.
3) It must not be a geographical name of a place. Geographical names

of places are prohibited from being registered as trade marks. This is
because the purpose of a trademark is to denote the origin of goods
from a particular trader. In case of a geographical name, the name
would lead the consumer to believe that the goods originate from that
place thus causing confusion and even deception.
However, the names of geographical places like rivers and mountains

can be registered as trademarks if there is a clear evidence of
distinctiveness.
In one instance, in spite of sales and publicity over 3 years, the name
SIMLA was refused registration for manufactured tobacco. This is
because Simla is a well known geographical name.
4) It must satisfy the registration requirements.
5) It must not belong to the class of marks prohibited from

registration. The class of marks prohibited from registration include:
a) A mark prohibited under the Emblems and Names (Prevention of

Improper Use) Act 1950.

b) A mark which is of such a nature as is likely to deceive the public

and cause confusion.
c) A mark which contains or comprises of any matter likely to hurt

religious sentiments of any class of citizens in India.
d) A mark which contains scandalous or obscene matter.
3.4 Statutory authorities

The statutory authority under the Trade Marks Act 1958 is the Controller
General of Patents, Designs and Trade Marks. A Joint Registrar, Deputy
Registrars, Assistant Registrars, Examiners of Trade Marks and
ministerial staff assist the Controller General in discharge of his
functions. The Joint, Deputy and Assistant Registrars exercise powers
that the Registrar delegates to them.
A Trade Mark Registry set up under the Trade Marks Act 1958 is chaired
by the Registrar. He is responsible for the registration of trademarks,
settling opposition proceedings and other related matters. The Trade
Marks Registry has its head office at Mumbai and branch offices at
Kolkata, Delhi, Chennai and Ahmedabad. The jurisdiction of all the
offices is territorially demarcated on a zonal basis.
The trade mark applications for registration are required to be filed in the
office within whose territorial jurisdiction the applicants’ principal place of
business is situated.
Principal place of business means as under:

1) Where a person carries on business in the goods for which the trade
mark is to be registered then the principal place of business is:
a) If the business is carried on in India in only one place then that

place.
b) If the business is carried on in more than one place then the place
mentioned by the applicant himself as the principal place of
business.
2) Where a person does not carry on any business in India but has a
place of residence then such a place of residence.
The opposition or rectification applications are to be filed in the office
where the registration applications are filed. However, all the applications
for registration are processed at the Head Office.
In terms of the Trade Marks Act 1999, a record of all registered

trademarks with names, addresses and descriptions of the proprietors
and notifications of assignments and transmissions must be maintained
at the Head Office of the Trade Mark Registry. A copy of such a record
must be kept at every branch office of the Trade Mark Registry. This
record is known as the Register of Trade Marks.

The Central Government set up the Intellectual Property Appellate Board

in the year 2003. It comprises of a Chairman, Vice-Chairman and other
members. The Central Government has specified Ahmedabad, Chennai,
Delhi, Mumbai and Kolkata as the places at which a Bench of the
Intellectual Property Appellate Board will sit. Each Bench consists of one
judicial member and one technical member.
If any person is aggrieved by an order or decision of the Registrar he

may appeal to the Appellate Board within 3 months from the date on
which the order of the Registrar is communicated to such person.
3.5 Registration of a trademark

Any person who claims to be the proprietor of a trade mark can apply for
registration of the mark. Based on the requirements of a proprietor an
application is required to be filed in the office of the Trade Mark Registrar
within whose territorial limits the applicant carries on its principal place of
business. In case of joint applicants, the applicant whose name features
first on the application, his principal place of business will be considered.
Every application is made for a particular class as per the classification of

goods and services set out in the Trade Marks Act 1958.
For instance, Form No. TM-1 is required to be filed where the proprietor
makes an application to register a trademark for a specification of goods
or services included in one class.
Illustration
Tanya is an interior designer. She wants to
register her trademark for the company
Interno Moda which makes furniture.
To register her trademark ‘Interno Moda’

Tanya will be required to file an application
in Form TM-1 under class 20 on payment
of Rs. 2500.
Form No. TM-51 is required to be filed where a proprietor wants to file a

single application for registration of a trade mark for different classes of
goods or services.
Illustration
Sanya is a business entrepreneur. She has
set up a hang out joint called ‘Chillax’.
Chillax serves a variety of coffee, fruit juice
and other non-alcoholic drinks.
To register her trademark ‘Chillax,’ Sanya

will be required to file an application in
Form TM-51 under classes 30 and 32 on
payment of Rs. 5000 (Rs. 2500 for each
class).

The application is required to be filed in triplicate and must contain a

representation of the mark in the space provided in the application form.
Five additional representations must be provided with the form. In case, a
particular trademark cannot be represented the Trade Mark Office may
accept a specimen or copy of the trade mark.
Once an application is submitted it may be accepted as it is, accepted

subject to certain amendments, initially accepted but later found to be
accepted in error or it may be rejected.
Thus, an application may be accepted completely or accepted subject to

amendments. Soon after acceptance of the application, the application is
advertised in the Trade Marks Journal. Any person may within 3 months
from the date of advertisement or a maximum of 4 months oppose the
registration by giving notice in writing to the Registrar.
The Registrar will serve a copy of the notice of opposition on the

applicant for registration. Within 2 months of receipt of such notice of
opposition, the applicant is required to make his representation before
the Registrar. Or else, his application will be deemed to be abandoned.
Thereafter, the Registrar will call upon both the parties with their
evidence. If the decision goes in favour of the applicant, then the trade
mark is registered in the name of the proprietor.
If the decision goes against the applicant, he may appeal to the High
Court. The High Court may uphold, modify or strike down the decision of
the Registrar.
The trademark will be registered for a period of 10 years. It is renewable

for another period of 10 years from the date of expiration of the original
registration or the last renewal of registration on payment of the renewal
fees.
3.6 Licensing of a trademark

A person other than the registered proprietor of the trademark can be
registered as the registered user of a trademark. All that is required to be
done is that the registered proprietor and the proposed registered user
have to:
1) Jointly apply in the prescribed manner to the Registrar.
2) Enclose with the application, the written agreement between them

along with an affidavit of the registered proprietor or a person
authorised by him. The affidavit will provide particulars of the
relationship between them.
3) If the Registrar requires any further documents or evidence, the same

must be supplied.

4) Upon being satisfied about the compliance of the above stipulations

the Registrar will register the proposed registered user.
5) The Registrar will then issue notice in the prescribed manner of the
registered user to other registered users of the trade mark.
6) A registered user may institute proceedings for infringement in his

own name as if he were the registered proprietor.
Illustration
Sanya is a business entrepreneur. She has
set up her parent company Noodle Ltd in
Delaware, USA.
Noodle Ltd has branch offices in New York,

United Kingdom, Switzerland, Singapore
and China.
Sanya has entered into agreements with

each of her branch offices and permitted
them to use the trademark Noodle Ltd in
business transactions.
Sanya is the registered proprietor of the

trademark and each of the representatives
Tanya, Sameer, Pooja, Sameera and
Siddharth are the registered users of the
mark.
Collective marks are those which distinguish the goods or services of

members of an association of persons from the goods or services of
others.
Illustration
Sanya, Tanya, Sameer, Pooja, Siddharth
and Sameera are an association of
lawyers.
They represent themselves with a black

lawyers’ collar and tie. This mark is known
as a collective mark.
Certification marks are a special species of trade mark whose function is

not to indicate the trade origin as an ordinary trade mark is required to
do. Instead, it is to indicate that the goods bearing the marks have been
certified by the proprietor of the mark to be of certain characteristics like
geographical origin, ingredients or quality.
For example, the mark AGMARK used for spices & food items is a
certification mark certifying the quality of food items covered by the mark
AGMARK.

3.7 Infringement of a trademark

Infringement of a trade mark occurs if a person other than the registered
proprietor in the course of trade, in relation to the same goods or services
for which the mark is registered uses the same mark or a deceptively
similar mark.
Illustration
Pepsi Co. manufactures, markets, sells and
distributes non-alcoholic beverages like
Pepsi and 7up under its brand name Pepsi
and the white, blue and red logo.
A company namely, Tipsi Co. starts

manufacturing, marketing, selling and
distributing non-alcoholic beverages like
Tipsi and 8up under its brand name Tipsi
and a white, blue and red logo .
It maybe said that Tipsi Co. by using a

deceptively similar mark for the same
goods (non-alcoholic beverages) has
infringed Pepsi Co.’s trademark.
Simply put, infringement occurs in the following cases:

1) when an infringer takes the essential features of the mark or takes
the whole of the mark and makes a few additions or alterations,
2) when the infringer uses such a mark in the regular course of

business,
3) when the infringer prints the infringing mark in advertisements,

invoices or bills.
A few of the common forms of infringement are:

1) using a deceptively similar mark,
2) taking substantial features of the mark,
3) addition.
3.7.1 Using a Deceptively Similar Mark

The most common type of deception or confusion is with respect to
goods. A consumer may buy certain goods assuming it to be of a
particular brand which in reality it is not.
Illustration
Sanya buys a Burberry perfume at a duty
free shop. On using it she realizes it to be
fake. She has been duped.

Another instance may be deception or confusion as to trade origin. A

consumer looking at a mark may buy the goods presuming it to come
from the same source as some other goods bearing a similar mark with
which he is familiar.
Illustration
Sanya sells cosmetic products under the
registered trade mark ‘LAKME’. Tanya also
sells cosmetic products using the trade
mark ‘LIKEME’.
Pooja buys cosmetics under the trademark

‘LIKEME’ owing to the striking resemblance
in both the trademarks.
It may be said that Pooja has been duped.
There maybe deception or confusion with respect to trade connection as

well. A consumer may look at a particular trade mark and think that it is
different from the brand he is aware of. But the similarity may make him
believe that the two are connected in some way.
Illustration
Sameer is a reputed manufacturer of dental
cream COLGATE. Pooja uses the mark
COLLEGIATE which is phonetically similar
to COLGATE with deceptively similar
letters in white with a red background.
Tanya assumes that COLGATE and

COLLEGIATE are related brands. She
purchases the dental cream under the
trademark COLLEGIATE. She has been
duped.
3.7.2 Taking Substantial Features of the Mark

A trademark is said to be infringed by another trader if, even without
using the whole of the mark in connection with his goods, he uses one or
more of the essential features.
Illustration
Pepsi is known for its Fido Dido mark on
the non-alcoholic beverage 7up.
Sameer launches a new energy drink in the

market with the Fido Dido mark but
changes the colour combination from the
green and the white to a blue, red and
white. It may be said that by taking the
substantial feature of the 7up mark Sameer
has infringed Pepsi’s trademark.

3.7.3 Addition
Additions of extraneous matter or inconspicuous additions amount to
infringement. Such additions indicate a fraudulent intention and would
only be visible on careful scrutiny which is not expected of an ordinary
customer.
Illustration
Pooja goes shopping for weekly provisions.
She picks up an attractive ‘Koor Koore’
packet of chips presuming it to be the
standard Pepsi Co. product ‘Kur Kure’.
Little does she notice the inconspicuous
spelling change on the packet of chips.
The Koor Koore trademark will be held to

be an infringing mark which has duped
Pooja.
An infringement suit can be instituted in the District Court. The suit can
be filed against the infringer and his agents. In case of a master-servant
relationship, the master will be liable.
The following persons can file a suit for infringement within 3 years from
the date of infringement:
1) a registered proprietor of the trade mark or his legal successor.
2) a registered user.
3) an applicant for registration of a trademark.
4) any one of the joint proprietors of the trademark.
The pertinent issues in a suit for infringement are:

1) whether the plaintiff is entitled to file the suit and claim relief,
2) whether the use of the infringing trade mark actually amounts to

infringement,
3) whether the plaintiff is entitled to any interlocutory relief,
4) whether there have been actual instances of deception and confusion

amongst the public.
A few of the defenses that a defendant may set up are:

1) that the plaintiff is not entitled to sue for infringement,
2) that there has been no infringement or any threat of infringement,
3) that the defendant’s right to use the contested mark arises out of
concurrent registration,

4) that the defendant started using the mark before the plaintiff,
5) that the words used in the disputed mark are within the public domain
and hence the plaintiff cannot claim exclusivity.
However, the defendant cannot plead that he had adopted the plaintiff’s
mark without the knowledge of the existence of the plaintiff’s mark.
3.8 Passing off a trademark

Passing off occurs when one trader attempts to pass off his goods by
misrepresenting them. The trader does this to make the consumers
believe that his goods are the same as those of another trader.
Illustration
Pooja goes shopping for weekly provisions.
She loves snacking on Pepsi Co.’s Kur
Kure.
While shopping she picks up an attractive

‘Koor Koore’ packet of chips presuming it to
be the standard Pepsi Co. product ‘Kur
Kure’.
Little does she notice the inconspicuous

spelling change on the packet of chips.
When she opens the packet, she discovers
stale sub-standard chips.
The Koor Koore trademark will be held to

be an infringing mark as it is designed to
pass off as the Kur Kure mark.
The action against passing off also lies in instituting a suit. Accordingly,
trade practice indicates that a passing off action is often combined with a
suit for infringement.
3.9 Reliefs in infringement and passing off suits

A proprietor of a trade mark has an exclusive right to use the trade mark
in relation to the goods or services in respect of which the trade mark is
obtained. In addition to this exclusive right, the proprietor of a trade mark
has a right to file a suit for infringement of his right and obtain the
following reliefs:
1) injunction.
2) damages or account of profits.
3) order for delivery-up of infringing labels and marks for destruction.

Injunction
An injunction is an order of the court prohibiting someone from doing
some specified act. Generally, it is a preventive and protective remedy
aimed at preventing future wrongs. Injunctions are of 2 types:
1) temporary or interlocutory injunctions.
2) permanent injunctions.
A temporary or interlocutory injunction maybe granted at any time during

the proceedings of the suit. It is an injunction to restrain the defendant
from committing and continuing the acts of alleged infringement.
Whereas, a permanent injunction is granted at the termination of the trial.
Damages or account of profits

Every plaintiff is entitled to the relief of damages or account of profits. But
both the reliefs cannot be granted together. Damages are awarded to
compensate for the loss or injury suffered by the plaintiff. The amount of
damages awarded must be such that it puts the plaintiff in the same
position as he would have been if he had not encountered the wrong.
Account of profits
Thus is that part of the profits which can be attributed to the misuse of
the intellectual property of the rightful owner.

4. Geographical indicators
A need had arisen to protect agricultural, natural or manufactured goods,
handicraft and industry goods like food stuff. The primary reasons for
protection were to prevent unauthorized use of geographical indicators
as well as promote goods bearing the Indian geographical indicators in
the export market.
As per the TRIPS Agreement, other countries were under no obligation to

extend protection unless a geographical indicator is protected in the
country of its origin. But, if India imported goods from a particular country
and that country provided such protection then India would be required to
extend the protection to that country as well.
Accordingly, the Geographical Indications of Goods (Registration and

Protection) Act 1999 was introduced and it came into effect in 2003. The
Geographical Indications of Goods (Registration and Protection) Rules
2002 were published in the year 2002.
4.1 Meaning of geographical indicators

A geographical indication is a sign used on goods that have a specific
geographical origin. The goods (agricultural, natural or manufactured
goods, handicraft and industry goods like food stuff) possess qualities or
a reputation that are due to that place of origin.
Since these qualities depend on the geographical place of production, a

specific link exists between the products and their place of origin.
For example, ‘Darjeeling’ for tea of Darjeeling origin, ‘Kanjeevaram silk’

denotes the product from Kanjeepuram in South India, ‘Kolhapuri
chappals’ from Kolhapur and ‘Alphonso mangoes’ from Mumbai.
4.2 Geographical indicators and Trademarks

Geographical indicators denote that the product originates from a
particular place and the product has certain qualities or a reputation that
are due to that place of origin. On the other hand, a trademark is a mark
used by an enterprise, in relation to goods or services, to distinguish
them from others.
A geographical indicator represents a common heritage of the

community of producers in the geographical region or locality, whose
products all share the same qualities and characteristics. Accordingly,
the geographical indicator maybe used by all the producers engaged in
their production in that region or locality.
On the other hand, a trademark is proprietary in nature with an exclusive

right to the owner to use the mark.

4.3 Geographical Indicators and Collective Marks

As stated earlier, geographical indicators denote that the product
originates from a particular place and the product has certain qualities or
a reputation that are due to that place of origin.
Whereas, a collective mark is a mark which belongs to a particular

association of persons and the use thereof is reserved only for members
of the association.
4.4 Regulatory Authorities

The two regulatory authorities under the Act are the Registrar and the
Appellate Board. The Controller General of Patents, Designs and
Trademarks is to be the Registrar of Geographical Indicators. The
Central Government appoints certain officers to discharge certain
functions under the superintendence of the Registrar.
The Central Government also established the Geographical Indications

Registry with its head office at Chennai to carry out the functions of
registration, opposition, rectification and other related activities.
The Appellate Board will exercise the same powers and functions as the
Intellectual Property Appellate Board set up under the Trade Marks Act
1999.
4.5 Registration of Geographical Indicators

An application for registration of a geographical indicator may be made
by any association of persons or producers or an organization or
authority which has been established under the law and who represent
the interests of the producers.
The application is required to be made in the prescribed Form GL-1 to

GL-3 in triplicate along with 3 copies of a statement as to how the
geographical indicator will serve to designate the goods as originating
from a particular region with qualities specific to that region.
The application must mention the class of goods to which the

geographical indicator will apply.
The other documents required are:
1) The geographical map of the territory of the country or region or

locality in which the goods originate.
2) The particulars regarding the appearance of the geographical

indicator.
3) A statement containing the particulars of the producers of the

concerned goods.

A single application maybe made for registration of a geographical

indicator for different classes of goods and fees must be paid for each
class of goods. After the application is accepted absolutely or subject to
limitations, it must be advertised. Any person may within 3 months from
the date of advertisement oppose the registration by giving notice in
writing to the Registrar.
A register called the Register of Geographical Indications is kept at the

head office of the Geographical Indications Registry. It is divided into 2
parts A and B. Part A consists of particulars relating to the registration of
geographical indicators. Part B consists of particulars relating to the
authorised users of geographical indicators.
The registration of geographical indicators is for a period of 10 years and

may be renewed for a period of 10 years on payment of a renewal fee.
The geographical indicator or its authorized user may be removed from

the register for non-payment of the renewal fee. In such a case, if after 6
months and within 1 year from expiration of the last registration the
authorized user files the appropriate application and pays the renewal
fees, the geographical indicator and the authorized user will be restored
for a period of 10 years from expiration of the last registration.
4.6 Infringement of Geographical Indicators

A registered geographical indicator is infringed by a person who, not
being the registered proprietor or authorized user, uses such indicator on
the goods. Alternatively, he suggests that the goods originate in some
other geographical area other than the true origin of the goods and
thereby misleads the public.
If a false geographical indicator is established the penalty is

imprisonment and fine. Imprisonment maybe for a minimum term of 6
months and may extend to 3 years. Fine maybe for a minimum amount of
Rs. 50,000 which can be extended upto Rs. 2 lakh.

5. Designs
Over the years improved designs have helped make telephones &
televisions more efficient, more attractive and more in tune with our
needs.
An industrial design is the ornamental or aesthetic aspect of an article.

The design may consist of 3 dimensional features such as the shape or
surface of an article or two dimensional features such as patterns, lines
or colours. Industrial designs make an article attractive & appealing &
add to its commercial value. For that reason, they are protected.
Illustration
Sanya is the sole proprietor of Noodle Ltd.
Noodle Ltd designs shoes, jerseys and
other sports accessories for football
players, cricketers and golfers.
As part of their centenary celebrations they

designed a ‘Universal Sport Shoe’ fitted for
any sport. The shoe was specifically
designed and used a patented technology
which controlled the sweat output.
Noodle Ltd had a design registration on the

Universal Sport Shoe.
An owner of a registered design is assured an exclusive right against

unauthorized copying or imitation of the design. Protection generally lasts
for an initial 10 years after which it can be renewed for another 5 years.
This protection helps economic development by encouraging creativity in

industry as well as in traditional arts & crafts. It also helps promote more
innovative & aesthetically attractive products.
5.1 Regulatory framework

In 1911 the Designs Act was passed by the British government in India.
Thereafter, there have been extensive amendments to the Designs Act.
To provide effective protection to registered designs and to promote the

design element in an article the Designs Bill was introduced in the Indian
Parliament. The bill became an Act in the year 2000 and repealed the
Designs Act 1911.
5.2 Meaning of a design

A design to be registered under the Designs Act 2000 must comply with
the following:
1) It must have some shape, configuration, pattern, ornamentation or

composition of lines or colours.

2) It must be applied to an article in any form by any industrial process

or means.
3) It must not include any mode or principle of construction or anything

which is a mere mechanical device.
4) It must not include a trade or property mark or artistic work.
Simply put, an article is distinguished not only by its utility but also by its
visual appeal. Visual appeal plays an important role in shaping the
buyer’s preference for an article. Therefore, the design of an article and
even the design of its packaging are important from a commercial point
of view.
For instance, a consumer may be attracted more to a bar of “Toblerone”

chocolate in comparison to a bar of dairy milk chocolate.
Design must be new or original

A design can be registered only when it is new or original. However, a
design can be registered if the pattern is already known but it is applied
to a new article.
Illustration
Tanya carries on the business of organizing
tailor made birthday parties for children.
In one of her projects, as return gifts to

children aged 2 to 4 years she applied the
shape of the teddy bear to school bags.
Tanya can have a design registration for

the school bags.
Simply put, what is essential is that the design must be new with respect
to the class of article to which it has been applied. A combination of
previously known designs can be registered if the combination produces
a new visual appeal. Colour may form a part of design but the colour by
itself cannot constitute a subject-matter of design. The novelty or
originality is to be judged on the evidence of experts in the trade.
Design must not be previously published in India

The design must not be previously published in India. The Designs Act
2000 does not define the term ‘publication’. In common parlance, to
constitute publication a design must be available to the public, or be
shown or disclosed to some person who is not bound to keep it a secret.
Illustration
Tanya is a fashion designer. She
showcases her winter collection at the
Vogue fashion show in Milan. This amounts
to publication of her designs.

Publication is of 2 types:
1) Publication in prior document.
2) Publication by prior use
Publication in prior document

Publication in prior document would result when the design has already
been published in a document which is easily available.
Illustration
Sanya and Tanya are leading designers in
Milan. While working in different boutiques,
they develop a similar floral print. Sanya
has already made out the floral print on a
piece of paper. Accordingly, the design
forms a part of the inventory of designs in
Sanya’s boutique.
Tanya unaware of Sanya’s design applies

to register her floral print. Her application
will not be considered as the design had
already been published in a prior
document. (The inventory of design in
Sanya’s boutique)
Publication by prior use

Publication by prior use would result when a designer before putting
down the design in paper exhibits the design in a fashion show and the
clothes with the design have also been put to sale.
Illustration
Tanya is a fashion designer. She
showcases her winter collection at the
Vogue fashion show in Milan and offers it
for sale as well. This amounts to publication
of her designs by prior use.
5.3 Registration of a design

Any person who claims to be the proprietor of any new or original design
which has not been previously published in India can apply for
registration of the design.
A proprietor of a design can be the author of the design who executes a

design for another person on payment of some consideration.
Alternatively, a proprietor may also have acquired the design or the right
to apply the design to any article.
The steps involved in registration of a design are:

1) Submission of application.
2) Acceptance / objections / refusal.

3) Removal of objections / appeal to Central Government.

4) Registration of the design.
Submission of application
The proprietor of the design is required to file an application with the
requisite fees with the Controller General of Patents, Designs and
Trademarks. If the design is new or original, has not been previously
published in India and is not contrary to public order or morality then the
design maybe registered.
The application must be accompanied by 4 copies of the representation

of the design and must also state the class in which the design is to be
registered. The applicant is also required to file a brief statement of
novelty along with the application.
Acceptance/objections/refusal
On consideration of the application by the Controller if all the pre-
requisites have been complied with the design will be registered.
Alternatively, the Controller will send the applicant a notice of objections.
Removal of objections/appeal to Central Government

The applicant will be required to remove the objections within one month
from the date of communication of the objections. If the applicant fails to
rectify the objections within the prescribed time line, the application will
be deemed to be withdrawn.
The applicant may ask for a hearing from the Controller. If the Controller
refuses the application, the applicant may directly appeal to the Central
Government. The decision of the Central Government on the registrability
of the design is final.
Registration of the design

Once the design is accepted, the Controller will direct the registration and
publication of the particulars of the application and the representation of
the article to which the design is applied in the Official Gazette.
Thereafter, the design will be entered in the Register of Designs. On
completion of the foregoing process, the Controller will grant a certificate
of registration to the proprietor of the design.
5.4 Rights granted to a proprietor of a design

The exclusive right conferred on a design is termed as ‘copyright in a
design’. This must not be confused with the exclusive right granted for
literary and artistic work in the form of copyrights.
There maybe certain designs which may qualify for registration both
under the Designs Act and the Copyright Act. If a design has been
registered under the Designs Act it cannot be protected by the Copyright
Act even though it may qualify as an original artistic work. But, if the
design has not been registered under the Designs Act, it will be protected
under the Copyright Act.

When a design is registered, the registered proprietor of the design has

copyright in the design for 10 years from the date of registration. It may
be renewed for a further period of 5 years on payment of the renewal fee.
The registration of a design excludes all persons from using the design
including the Government of India. If the article to which the design has
been applied is not available to the public at reasonable prices, the
Government may use or acquire such design.
5.5 Infringement of a design

Infringement of a copyright in a design is termed as piracy of design. The
following acts will amount to piracy:
1) To publish or offer for sale any article to which the registered design
or a fraudulent or obvious imitation of the registered design has been
applied.
Illustration
Sanya the in-house designer of
Buckingham Palace has designed a
wedding gown for the Princess of Wales.
She has a copyright in the design.
Pooja a designer from Milan copies the

design, showcases it at the Wedding
Collection held in New York. Pooja is said
to have infringed Sanya’s copyright in the
design.
2) To apply the registered design or a fraudulent or obvious imitation of

the registered design to the class of articles which are covered by
registration.
Illustration
Sameer is a leading designer of cars. He
takes up any car model and refurbishes it
to the requirements of his clients.
Siddharth is an automobile engineer. He

copies the car designs made by Sameer
and applies it to an SX4. Siddharth is said
to have infringed Sameer’s copyright in the
design.
3) To import for the purpose of sale any article to which the registered
design or a fraudulent or obvious imitation of the registered design
has been applied.
Illustration
Sanya designs shoes for celebrities in
London under the brand name ‘In Time’
and has a design registration on all of
them.

Pooja has a boutique in China and imports

shoes from Sanya’s store and sells it in
China under her brand name ‘The Look’.
Pooja is said to have infringed Sanya’s

copyright in the design.
While determining whether there has been infringement the court must
eliminate the concept of functional similarity. For instance, 2 pens will
necessarily be similar in having an ink-tube, a cap and a nib for writing.
This element of similarity must be eliminated.
A suit for infringement maybe instituted in the District Court or a High

Court depending upon the quantum of damages claimed.
Any person responsible for infringing the monopoly of the proprietor of a

registered design is guilty of piracy and is liable to a fine of a sum not
exceeding Rs. 25,000.
The registered proprietor also has a right to bring a suit for recovery of
damages or for injunction provided that the total sum recoverable in
respect of any one design does not exceed Rs. 50,000.

6. Copyright
Copyright describes the rights given to creators for their literary, musical
and artistic works, such as novels and poetry, songs and musical scores,
paintings and sculpture. Other works protected by copyright include films,
choreography, architecture, advertisements, maps and technical
drawings as well as computer programmes & databases.
Rights related to copyright provide protection for performing artists (such

as actors and musicians) in their performances, producers of sound
recording (such as compact discs) in their recordings and broadcasting
organizations in their radio & television programmes.
Copyright provides exclusive rights to creators to use or authorize others

to use their works. The creator of a work can prohibit or authorize its
reproduction in various forms, including printing, recording, broadcasting,
public performance, translation or adaptation.
Copyright encourages human creativity. It provides economic rights to

creators which allow them or their heirs to benefit financially from their
work usually for a period lasting 60 years after the creator’s death. This
provides not only recognition for their work but also incentives to create
more. As they create we all benefit through a greater access to a wider
variety of culture, knowledge and entertainment.
6.1 Protected works

Literary works covered by copyright include novels, short stories,
screenplays, poems, plays, non-fiction works such as histories &
biographies, newspaper and magazine articles, reference works such as
encyclopedias and dictionaries, computer programs and databases.
Peterson J. had said that literary work covers:

Work which is expressed in print or writing irrespective of the
question whether the quality or style is high…As well as works
embodying the fruits of considerable creative or intellectual
endeavour.
Therefore, it maybe said that the term literary works is understood to

include every original work of authorship, irrespective of its literary or
artistic merit. The ideas in the work do not need to be original. But the
form of expression must be an original creation of the author.
Illustration
Sameer has a brilliant idea for a movie. He
invites Sanya over coffee and shares the
idea with her. Sanya capitalizes on the idea
and makes a movie called ‘Ingenuity’.
Sanya has copyright on the movie and
Sameer cannot claim copyright for his idea.

Literary work also includes an adaptation, abridgement and translation of

the work.
Adaptation of a literary work means the conversion of the work

into a dramatic work by way of performance in public.
Illustration
Sanya has authored the book ‘Enigma’.
Tanya wants to produce a play based on
the book. She will be required to take prior
permission from Sanya before she
produces the play.
Tanya will have an independent copyright

in her play which is an adaptation of
Sanya’s book Enigma.
Abridgement of a literary work means reproduction of an original

work in a more precise and concise way.
Illustration
Pooja has authored the book ‘Zodiac Killer’.
It is a 2000 page book. Sameer with
Pooja’s prior consent selects scripts &
passages from her book, puts in few of his
own words to give it a new look and
publishes another abridged version of the
book.
Sameer will have an independent copyright

in the abridged book.
Translation of a literary work means its reproduction in another

language.
Illustration
Sanya’s book Enigma is in English. Tanya
translates this book into Chinese.

in her book written in Chinese.
Dramatic work includes any piece for recitation, choreographic

work or entertainment in a mime, the scenic arrangement or
acting form of which is fixed in writing.
Illustration
Tanya choreographs the title song in
Sanya’s movie ‘Be Happy’. Tanya will have
an independent copyright for
choreographing the song.

Illustration
In Tanya’s play ‘What If’ the stage is set to
depict a hi-tech 2050 virtual world.
She will have an independent copyright for

the stage settings.
Musical work consists of music and includes any graphical notation of

such work but does not include any words or any action intended to be
sung, spoken or performed with music.
Illustration
Pooja composes a melody ‘A Momentary
Lapse’. She has written the lyrics, given the
music to the song and recorded it in her
studio.
She will have a copyright in the song.
If any musical work is arranged or recorded by adding accompaniments,

new harmonies & new rhythm, it is said to be adapted.
Illustration
Sameer is influenced by Pooja’s song ‘A
Momentary Lapse’. With her prior
permission he composes a remix version of
the song by adding more percussion and
beats.
He will have a copyright in the remixed

song.
Artistic work includes paintings, drawings, photographs, work of

architecture and work of artistic craftsmanship.
Illustration
Sameer is a business tycoon. His company
Noodle Ltd is working on an infrastructure
project. The project scheme includes
drawings of roads, highways, water
pipelines and electricity hubs.
Sameer has a copyright on each of the

mechanical and engineering drawings.
Illustration
Sanya takes a photograph of the sun
setting in the Antarctic.
She has a copyright in the photograph.

Cinematographic film means any work of visual recording on any

medium produced through a process from which a moving image is
produced by any means and includes sound recording accompanying
such visual recording.
Illustration
Tanya is a war journalist. She has covered
the riots in Maharashtra, the bombings and
curfew in Kolkata and the outbreaks in
Gujarat.
Based on her experiences, she made a

documentary and television report on ‘The
Unwanted Outbreaks’.
She will have a copyright in the

documentary and television report.
No specified level of originality is required except that a substantial

part of the film must not infringe any other work. There is no copyright
for the artists except a performer’s rights. The producer of the film
acquires a distinct copyright and the composer of lyrics or musical
work retains the right of public performance.
Illustration
Sanya for her movie ‘All that Counts’
commissions Tanya to compose the title
song for the movie. Tanya composes the
lyrics and music for the song. Sameer is a
renowned artist and does play back singing
of the song.
Sanya as the producer of the film has a

copyright in the movie. Tanya as the
composer of lyrics and music has a
copyright. Sameer, as the singer, has a
performance right.
Sound recording means a recording of sounds regardless of the

medium on which such recording is made or the method by which the
sounds are produced.
Illustration
Pooja is a rock star. She records her album
‘Money’ at the Sony sound recording
studio.
Pooja as the composer of the album has a

copyright. Sony as the sound recording
company has a copyright.

Performers of a musical work such as musicians & singers are covered

by related rights in their performances as are producers of recordings &
broadcasters.
Illustration
Pooja, as a rock star, performs live on the
opening night of the cricket world cup.
Pooja as the composer of the album has a

copyright. As a performer she has a
performer’s right.
6.2 Ownership of copyright

The author of the work is the first owner of the copyright in the work. As
stated earlier, the originator of an idea is not the owner of a copyright,
copyright belongs to the person who gives concrete form to the idea.
Illustration
Sameer and Pooja discuss the idea of
painting the walls of nursing homes in
bright colours.
Based on Sameer’s ideas, Pooja paints

happy faces and baby faces and inscribes
funny one liners on all the nursing home
walls. Pooja is the owner of the copyright in
the paintings.
The author of the work in relation to the various categories are:
1) Literary or dramatic work, the author of the work.
2) Musical work, the composer in relation to the musical work

regardless of whether he records it in any form of graphical notation.
3) An artistic work other than a photograph, the artist.
4) Photograph, the person who takes the photograph.
5) Cinematograph film, the producer.
6) Sound recording, the producers.
7) Literary, dramatic, musical or artistic work which is computer

generated the person who causes the work to be created.
The basic rule that the author of the work is the first owner of the
copyright in the work is subject to certain exceptions.

Illustration 1
While Tanya was interning at Lloyds, she
drafted various insurance products like
Super Annuity Scheme, Safe 35 Insurance
and Future Child Plan.
Although Tanya was the author of the work,

the copyright belonged to Lloyds.
This is because Tanya was training under

Lloyds as an intern for the purpose of
learning the trade. Lloyds was providing her
with the required resources, expertise and
training. Hence, any work created by Pooja
during her internship belonged to them.
Illustration 2
Sanya and Tanya request Sameer to take a
photograph for them along with Shah Rukh
Khan’s wax statue at Madame Tussaud’s
museum. They pay him Rs. 1000.
Although Sameer was the author of the

work, the first owners of the copyright are
Sanya and Tanya because they requested
for the photograph and paid Sameer a
valuable consideration.
Illustration 3
Sanya dictates a book to her stenographer
Sameer. Although Sameer is the author of
the work the copyright owner of the work is
Sanya.
Illustration 4
Sanya as a film producer commissions
Sameer, the music composer to compose
the music for her film ‘The Wonder Kids’.
Sanya does not become the owner of the

copyright in the music but merely gets a
licence to use the music in her film. All
other copyright in the music is retained by
Sameer.
Illustration 5
Pooja is a photographer and is working for
Tanya, the proprietor of the Vogue
magazine. During her employment she
takes pictures of top models which are to
feature in the Vogue magazine.

The copyright in the pictures taken by

Pooja belong to Tanya in so far as they are
featuring in the Vogue magazine.
If Pooja as a photographer organizes a

gallery exhibition of all her photographs,
including the ones featuring in Vogue
magazine, then she will be the copyright
owner. This is because the gallery
exhibition is in no manner related to the
publishing of Vogue magazine or gives it
any competition.
Therefore, the ground rule is that the author may either independently
create a work or may create it under a contract of service or contract for
service.
Illustration 1
Where Sanya employs Sameer to maintain
the employee logs under her control so that
she can set the time lines to complete the
work, give directions to improvise upon the
work and measures to speed up the
process, then Sameer is said to be under a
contract of service.
In a contract of service the first copyright

owner will be the employer.
Illustration 2
Where Sanya employs Sameer to design
her company’s brochures and leaves it to
him to take all the calls and finalise the end
product then Sameer is said to be under a
contract for service. His status is that of an
independent contractor.
In a contract for service the first copyright owner will be the independent
contractor.
6.3 Rights conferred by copyright

Every copyright owner can use his protected work as he wishes. But he
must have regard to the rights and interests of others and also exclude
them from using it without his authorization. Therefore, the rights
conferred to a copyright owner are often referred to as exclusive rights.
The various rights conferred to a copyright owner are:
1) Statutory rights.
2) Economic rights.
3) Moral rights.
4) Negative rights.

Statutory rights state that the author or rights owner has the right to
authorize or prevent certain acts in relation to a work. The rights owner of
a work can prohibit or authorize:
a) Its reproduction in various forms, such as printed publications or

sound recordings.
Illustration
She has given Smart Books, the publisher,
reproduction rights of the book in paper
back and hard bound versions.
b) The distribution of copies.
Illustration
She has sold over a million copies of the
book. One of the buyers is Tanya. Tanya
will not be required to obtain prior
permission of Sanya before she gifts the
book to someone else.
c) Its public performance.
Illustration
Tanya wants to produce a play based on
produces the play.

in her play which is an adaptation of
Sanya’s book, Enigma.
d) Its broadcasting or other communication to the public.
Illustration
Sanya has produced a tele-serial ‘Happy
Gags’. Star World is required to obtain
Sanya’s prior consent before it broadcasts
the tele-serial.
e) Its translation into other languages.
Illustration
Sanya’s book Enigma is in English. Tanya
translates her book into Chinese with
Sanya’s permission. Tanya will have an
independent copyright in her book written in
Chinese.

f) Its adaptation, such as a novel into a screenplay.
Illustration
Tanya wants to produce a movie based on
produces the movie.

in her movie which is an adaptation of
Sanya’s book Enigma.
Economic rights allow the author to derive financial reward by exploiting

his protected work. The author may exploit the work himself or license
others to exploit any one or more of the rights for a consideration which
may be in the form of royalty or a lump-sum payment.
Illustration
She has sold over one million copies of the
book. The book is priced at Rs. 550.
Accordingly, she derives financial rewards
from the sale of the book.
She has licensed to Smart Books, the

publisher, reproduction and distribution
rights of the book in paper back and hard
bound versions on payment of an annual
royalty of Rs. 25 lakh.
Moral rights allow the author to take certain actions to preserve the
personal link between himself & the work.
Moral rights include the right to claim authorship of the work (right of
paternity) and the right to object to any distortion or modification of the
work or other derogatory action in relation to the work, which would be
prejudicial to the author’s honour or reputation (right of integrity).
These rights must be independent of the author’s economic rights and

remain with the author even after he has transferred his economic rights.
Illustration
She has sold over 20 million copies of the
book. Thereafter, on 23rd September 2007
she assigned her copyright to Smart Books,
the publisher.
On 25th December 2007, she discovered

that based on her book Smart Books was

distributing pornographic CDs which

diminished the value of her book. Sanya
has a moral right to bring an action against
Smart Books.
Copyright is a negative right in the sense that it stops others from

exploiting the work of the author for their own benefit without the consent
or license of the author.
Illustration
She has sold over 20 million copies of the
book and retained the reproduction and
distribution rights.
On 25th December 2007, she discovered

that Modern Publishers was selling and
distributing copies of her book without any
authorization or license.
Sanya has a negative right to stop Modern

Publishers from selling her book.
6.4 Limitation on rights of copyright owners

The limitations on the rights of copyright owners are:
1) Temporal.
2) Geographic.
3) Permitted use.
4) Non-material works.
6.4.1 Temporal
Copyright does not continue indefinitely. The period or duration of
copyright protection begins with the creation of the work and continues
until some time after the death of the author.
For instance, in case of literary works, the duration of copyright protection

is the lifetime of the author until 60 years after the death of the author.
Illustration
Pooja has authored the book ‘Insignia’. The
book was published on 6th November 2007.
Pooja’s copyright will continue during her
lifetime and until 60 years from her death.
6.4.2 Geographic
The second limitation is a geographical limitation. Copyright protection is
territorial. If both countries are members of one of the international
conventions on copyright, the practical problems arising from this

geographical limitation are eased.

Illustration
Pooja’s book ‘Insignia’ is for sale only in
India. Therefore, her copyright in the work
is protected only in India. To avail of
protection in any other country India and
the other country must be a party to an
international convention.
6.4.3 Permitted use

Certain acts normally restricted by copyright, may in circumstances
specified in the law, be done without the authorization of the copyright
owner. Such acts will not amount to infringement of copyright.
The purpose of recognizing these exceptions is to enable the

reproduction of the work for certain public purposes for encouragement
of private study, research and promotion of education.
Set out below for your reference are a few of such acts:
1) Free use or fair use of literary, dramatic, musical or artistic work for
the purpose of private use including research, criticism or review.
Such use carries no obligation to compensate the author or rights
owner for the use of work without authorization.
Illustration
Sanya and Tanya as part of Diwali
celebrations at their apartment stage a
dance on the song ‘Hare Rama Hare
Krishna’ from the movie Bhool Bhoolaiya.
They do not take prior permission from the

producer of the movie.
This does not amount to an infringement of

copyright as it is protected under the fair
use clause.
2) Reproduction of judicial proceedings and reports for the use of

members of the legislature.
3) Reading and recitation in public of extracts of literary or dramatic

work.
Illustration
On Children’s Day Pooja organized a
reading session of extracts of Harry Potter
stories at the club.
Pooja is not required to take prior

permission of the author of the book, J.K
Rowling or compensate her before

organizing the reading session.

4) Public performances in the course of the activities of educational
institutions in certain circumstances.
5) Reproduction in a newspaper and magazine of an article on current,

economic, political, social or religious topics.
6) Publication in a newspaper or magazine a report of a lecture

delivered in public.
7) Compulsory licenses which require that compensation be paid to the

rights owner for non-authorised exploitation.
Illustration
Sanya files a complaint with the Copyright
Board that Pooja has refused to re-publish
or allow re-publication of her book
‘Insignia’. Consequently, her book is not
available to the public.
The Copyright Board gave Pooja a

reasonable opportunity of being heard and
after holding a detailed inquiry directed the
Registrar of Copyright to grant Sanya a
license to re-publish the book on payment
of compensation to Pooja.
6.4.4 Non-material works

In India, works are excluded from protection if they are not fixed in some
material form. Also, certain categories of works like pocket diaries,
calendars, reports of judicial proceedings are not protected by copyright.
6.5 Assignment of copyright

Copyright is a bundle of rights. For instance, a novel can be published as
a volume, serialized in a newspaper or magazine or may be licensed foe
being made into a film.
Each of these rights can be assigned or licensed for a limited term. While
assignment is a transfer of ownership in rights to the assignee, a license
is a permission to do something in respect of a work.
Illustration
Sanya may assign all her rights in her book
‘Insignia’ to Tanya.
Thereafter, Tanya may reproduce, sell,

distribute, adapt or translate the book
without taking any prior permission from
Sanya.

She will not be said to have infringed

Sanya’s copyright.
Assignment of copyright can be for the whole of the rights or a part of the
rights. It may be general or subject to certain restrictions. It may be for
the entire term of the copyright or for a limited term of the copyright. It
may be done on a territorial basis.
Illustration
Sanya assigns the right to serialize the
work into into a television serial to Sameer,
the producer for a period of 20 years.
She assigns her right subject to the

limitation that it can be broadcast only
within the territory of India.
It may be said that Sanya has made a

limited assignment for a limited period of
time placing territorial restrictions on the
assignment.
An assignment is said to be valid if it is in writing and duly signed by the

assignor. The assignment instrument must specify the rights assigned to
the assignee and the royalty terms agreed upon between the parties.
If the assignee fails to exercise the rights within one year from the date of
assignment, the assignment will be deemed to have lapsed.

Head Office
6th Floor, Pride Senate,

Opp International Convention Center,
Senapati Bapat Road,
Pune - 411016.
India
Contact Numbers
+91-20-25667148
+91-20-40033365
+91-20-65206029
+91-20-6400 0000
+91-20-6400 6464
Fax: +91-20-25884192
Email: info@asianlaws.org
URL: www.asianlaws.org

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Online Introductory Course in

Overview of IP related Legislation in India

© 2009 Asian School of Cyber Laws. -1-

The objective of this chapter is to introduce you to the fundamental

Industrial property deals with patents, trademarks, geographical

-2- © 2009 Asian School of Cyber Laws.

The primary legislations regulating intellectual property in India are:

2) The Trade Marks Act 1958.

3) The Geographical Indications of Goods (Registration and Protection)

4) The Designs Act 2000.

5) The Semiconductor Integrated Circuits Layout-Design Act 2000.

6) The Copyright Act 1957.

The concept of intellectual property can be traced back to the Byzantine

Thus, from intellectual property being totally alien to the nomadic

For a simple understanding of industrial property, let’s look at a

The preservation processes can be patented and the mechanical

Therefore, it can be said that inside a refrigerator is a world of intellectual

© 2009 Asian School of Cyber Laws. -3-

Therefore, patents not only provide incentives to individuals by ensuring

1.1 Regulatory framework

1.2 Conditions of patentability

1.2.1 New product or process

-4- © 2009 Asian School of Cyber Laws.

The patent was not granted as Sameer had

Therefore, for an invention to be patentable, it must involve innovation

Although, the making of the dining table is

Therefore, for an invention to be patentable, it must involve innovation

1.2.3 Useful and capable of industrial application

Since, the invention satisfies the

Summing up, it maybe said that an invention is a question of fact in each

© 2009 Asian School of Cyber Laws. -5-

1.3 Non-patentable inventions

1) An invention which is frivolous or contrary to well established natural

2) An invention which is contrary to public order or morality or which

3) The mere discovery of a scientific principle or the formulation of an

Work = Force x Distance

In Sameer’s words if you push a table

Sameer will not get a patent for this

4) The mere discovery of a new form, property or use of a known

-6- © 2009 Asian School of Cyber Laws.

5) A substance obtained by a mere admixture resulting only in the

Since the beauty pack is an admixture of

6) The mere arrangement or re-arrangement or duplication of known

For power generation it requires a more

She will not get a patent on the re-arranged

7) A method of agriculture or horticulture.

8) Any process for the medicinal or other treatment of human beings or

She will not get a patent on her artificial

© 2009 Asian School of Cyber Laws. -7-

10) A mathematical or business method or a computer programme per se

11) Literary, dramatic, musical or artistic work or any other aesthetic

12) A mere scheme or rule or method of performing mental act or method

13) A presentation of information.

He will not have a patent on the

14) Topography of integrated circuits.

He will not get a patent as the integrated

-8- © 2009 Asian School of Cyber Laws.

15) An invention which in effect is traditional knowledge or which is an

As use of turmeric is a part of traditional

16) An invention relating to atomic energy.

1.4 Procedure to obtain a patent

2) Publication and examination of application.