UNIT 1.

1. What is intellectual property ? Explain the need for protecting intellectual property.

Ans:- Intellectual property is all about human creativity, ingenuity and innovation. It is the result of
application of mind in the execution of creative and innovative thoughts.

 Acc to WIPO “Intellectual property (IP) refers to creations of the mind, such as inventions,
literary and artistic works, designs, symbols, names, and images used in commerce”. IP is
protected by law through patents, copyrights, trademarks, and trade secrets, which give creators
exclusive rights to their creations for a specified period.

The need for protecting intellectual property arises from several reasons:

 1. Incentivizing Innovation: Intellectual property rights encourage innovation by rewarding

creators and inventors with exclusive rights to their creations. This motivates individuals and
companies to invest time, resources, and effort into developing new products, technologies, or
creative works.

 2. Fostering Economic Growth: Strong intellectual property protection contributes to economic

growth by promoting entrepreneurship, attracting investment, creating jobs, and fostering
competition. IP-intensive industries drive economic development and contribute significantly to
GDP in many countries.

 3. Ensuring Fair Competition: Intellectual property rights help prevent unauthorized use or
exploitation of others' innovations and creations. By providing legal recourse against
infringement or counterfeiting, IP protection ensures fair competition and protects the interests of
creators and innovators.

 4. Preserving Cultural Heritage: Copyrights protect cultural expressions, traditional knowledge,

folklore, and indigenous creations from misappropriation or misuse. IP rights help preserve and
promote cultural diversity while respecting the rights of communities and individuals.

 5. Promoting Trade and Investment: Intellectual property rights facilitate international trade and
investment by providing a framework for protecting innovations, brands, and creative works
across borders. Strong IP protection enhances market access, fosters technology transfer, and
boosts collaboration between countries.

 6. Enhancing Consumer Trust: Intellectual property rights assure consumers of the quality,
authenticity, and origin of products or services bearing trademarks or copyrights. By safeguarding
brands and reputations, IP protection builds consumer trust and loyalty in the marketplace.

 7. Supporting Research and Development: Patents incentivize research and development

activities by granting inventors exclusive rights to commercialize their inventions. IP protection
enables technology transfer, collaboration between academia and industry, and the dissemination
of knowledge for societal benefit.

Overall, intellectual property rights play a vital role in promoting creativity, innovation, economic
development, cultural preservation, fair competition, consumer confidence, and international
cooperation. By safeguarding intellectual assets through patents, copyrights, trademarks, and
 trade secrets, societies can harness the power of innovation while balancing the interests of
creators, users, businesses, and the public at large.

Types of IP

 Patent :- A patent is an exclusive right granted for an invention. Generally speaking, a patent provides the
patent owner with the right to decide how - or whether - the invention can be used by others. In
exchange for this right, the patent owner makes technical information about the invention publicly
available in the published patent document.

 Copyright :- Copyright is a legal term used to describe the rights that creators have over their literary and
artistic works. Works covered by copyright range from books, music, paintings, sculpture and films, to
computer programs, databases, advertisements, maps and technical drawings.

 Trademark :- A trademark is a sign capable of distinguishing the goods or services of one enterprise from
those of other enterprises. Trademarks date back to ancient times when artisans used to put their
signature or "mark" on their products.

 Industrial Design :- An industrial design constitutes the ornamental or aesthetic aspect of an article. A
design may consist of three-dimensional features, such as the shape or surface of an article, or of two-
dimensional features, such as patterns, lines or color.

 Geographical Indication : - Geographical indications and appellations of origin are signs used on goods
that have a specific geographical origin and possess qualities, a reputation or characteristics that are
essentially attributable to that place of origin. Most commonly, a geographical indication includes the
name of the place of origin of the goods

 Plant Variety protection :- Plant variety protection provides legal protection of a plant variety to a breeder
in the form of Plant Breeder’s Rights (PBRs). PBRs are intellectual property rights that provide
exclusive rights to a breeder of the registered variety. In India, the Plant Variety Protection And Farmers
Rights (PPVFR) Act, 2001 is a sui generis system that aims to provide for the establishment of an
effective system for protection of plant varieties and the rights of plant breeders and farmers.

Patents

History

 The history of patent system dates back to the Seventh Century BC, when Greeks began granting
short-term exclusive rights to cooks to prepare new recipes.
 The first known patent was issued in 1416 from the Great Council of Venice to Ser Franciscus
Petri for a term of 50 years.[4] Petri, a citizen of Rhodes and a foreigner, developed a device that
turned wool into felt, and his patent was the first known to feature a “right to exclude”.
 In 1471, the Venetian senate passed the first patent statute, the basis of what would become the
first statute-based patent system in Europe.
 The first step of the patent in India was Act VI of 1856. The main objective of the legislation was
to encourage the respective inventions of new and useful manufactures and to induce inventors to
reveal their inventions and make available for public. The Act was repealed by Act IX of 1857 as
 it had been enacted without the approval of the British Crown. Fresh legislation was enacted for
granting ‘exclusive privileges’ was introduced in 1859 as Act XV of 1859.
 The Indian Patent and Design Act, 1911 repealed all previous acts. The Patents Act 1970, along
with the Patent Rules 1972, came into force on 20 April 1972, replacing the Indian Patent and
Design Act 1911. The Patent Act is basically based on the recommendations of the report Justice
Ann.

Definition

 A Patent Is An Exclusive Right Granted By Government For An Invention & Gives The Inventor
The Right To Stop Others, For A Limited Period, From Making, Using Or Selling The Invention
Without Their Permission.
 Acc To S. 2(m) "patent" means a patent for any invention granted under this Act.
 Patent is an Exclusive monopoly rights granted to a person who has invented a new & useful
article or process to manufacture such Article.

Requirement of Patents

1. Novelty.
 Invention must be ‘new’, Something that is already known is not patentable. An invention is
deemed to be new on the priority date if it does not form part of the state-of-the-art i.e., part
of the knowledge available to the public. Priority date is usually the date on which the
applicant for patenting his invention first makes the application.
 Section 2(1)(l) “new invention” means any invention or technology which has not
been anticipated by publication in any document or used in the country or elsewhere in the
world before the date of filing of patent application with complete specification, i.e., the
subject matter has not fallen in public domain or that it does not form part of the state of
the art;
 Criteria to determine Novelty1. Prior use 2. Prior Publication.
 A.E. Short In this case , the plaintiff marketed his product first then applied for patent due
which the patent office rejected his application stating that it is already in market & lacks
novelty , the Cal High Court held that process of manufacturing that product was not known
to public & till the date of filling no product was purchased & hence the novelty is not lost.
 In Fomento V. Mentmore(1956) R.P.C. 87 here The plaintiffs invention was an improved nib
for a ballpoint pen, which makes continuous and uniform flow of link. The case was that the
patentees themselves had published a description of making ballpoint pens which would be
taken as the performance of invention . Also they had made pens embodying the invention
available to the public without any restriction as to what they might do with them. It was held
that these acts were held to amount to anticipation of the invention, both through prior
publication and prior use thus defeating the requirement of novelty.

 In Re Hall Here Hall’s application for a patent was rejected because a doctoral thesis was
available as a printed publication in Library more than one year prior to the application’s
effective date. Hall appealed, claiming that there was no evidence that the dissertation was
indexed properly in the library catalog before the critical date and that, even if it were, the
presence of a single catalogued thesis in one university library does not establish sufficient
accessibility of the publication’s teachings to those interested in the art and who practice
reasonable diligence. Held the rule that a publication becomes public as of the date it
becomes available to at least one member of the general public.
  Lallubai Chakabai Jariwala v. Shamaldas Sakalchand Shah (1934) In February 1931, Plaintiff
established a modified process which ensured taste of the almonds despite their shell being
polished to white colour. During this time, a Chemist called Virmani helped the Plaintiff in his
experiments and learned about the process in confidence. Harakchand Shivji & Co. started paying
Rs. 300 per month to the Plaintiff and they started to sell almonds dealt with under the new
process.

In January 1931, Varmani ceased to be employed by Jasco & Co., and made an arrangement of
Rs. 100/- per month with the Defendant during June to teach the Defendant how to bleach
almonds in his factory, and the Defendant made arrangements with the merchants with whom he
was doing business by which the latter agreed to purchase from the Defendant almonds treated
under the process explained by Varmani and to erect a factory where the process could be
employed. This was done by October 1931.

In July 1931, the Plaintiff applied for letters patent in respect of his process of treating almonds.
The Patent was granted in 1932. The court observed that it is possible that sale of an article
manufactured under a secret process may amount to a public user of the process, because the
article may be of such a character the expert may ascertain the secret then it will be prior use or if
they could’nt make it out then it is not prior use.

 In Mariappan v. A R Safiullah , The plaintiff created artificial banana leaf as plate & Applied for
patent & It was granted , Defendant opposed stating that lamination is known technology in US &
it was patented & hence the patent of Plaintiff was revoked.

2. Non-Obviousness

 According to the definition of the inventive step, the invention must be non-obvious to a person
skilled in that particular art, i.e. it must not follow plainly or logically from what is already
known. The question whether an invention involves an inventive step has to be decided in the
context of any prior publication or public use.

 Many common examples of an inventive step can be cited from pharmaceutical, chemical or
mineral processing industries where the process improvement can result into efficient use of
resources. One example of such inventive step can be drying of substances without detriment to
desired characteristics but enhancing other characteristics like shelf life or stability etc.

 BEECHAM GROUPS AMOXICILLIN APPLICATION( 1980) Patent application was with

regard to to improvised version of penicillin as being compounds valuable as antibiotic. Patent
was rejected on the ground of anticipation and obviousness in the prior specification.

 POZZOLI V. BDMO( 2007) Structured approach to decide obviousness in the invention

1. a) Identify in notional person skilled in the art b) identify the common general knowledge of
that person
2. Identify the inventive concept of the claim in question and if that cannot readily done construe
it
3. Identify what if any differences exist between the matter cited acid forming the part of of the
state of art and the inventive concept or the claim so construed; and
 4. View without any knowledge of the alleged invention as claimed, do those differences institute
step switch board have been obvious to the person skilled in the art or do they require any degree
of invention.

 M/S. Bishwanath Prasad Radhey Shyam Appellant v. M/S. Hindustan Metal Industries
"It is important that in order to be patentable an improvement on something known before or a
combination of different matters already known, should be something more than a mere
workshop improvement; and must independently satisfy the test of invention or an 'inventive
step'. To be patentable the improvement or the combination must produce a new result, or a new
article or a better or cheaper article than before. The combination of old known integers may be
so combined that by their working interrelation they produce a new process or improved result.
Mere collection of more than one integers or things, not involving the exercise of any inventive
faculty, does not qualify for the grant of a patent.”

 Rickett & Colman Of India Ltd. V Godrej Hi Care Ltd. The Application of M/s. Rickitt &
Colman of India Ltd for grant of patent for "A mosquito/insect repellant device" - challenged by
opponents on various grounds of section 25 of the Act including lack of inventive step , It was
held that the alleged device is obvious and clearly does not involve any inventive step.

3 Invention must be having ‘industrial application’ / Utility

 To be patentable, the invention has to be capable of industrial application, that is, it can be made
or used in an industry. However, An invention does not lack utility merely because the particular
embodiment disclosed in the patent lacks perfection or it performs crudely. Commercial success
is not essential to decide whether there is utility.

 Brenner V. Manson , The Problems arose with chemical compounds. Chemical compounds were
synthesized without any particular specified use but which the chemist believed to be useful for
something someday. Hence courts relied on three types of utility to decide patent applications: •

 General utility- whether and invention is operable are capable of any use, that is, whether the
invention as claimed really do anything

 Specific utility- whether the invention works to solve the problem it is a design to solve.
Operability of the invention to serve its intended purpose is the important criteria in specific
utility.

 Beneficial or moral utility- whether the intended purpose of the invention has some minimum
social benefit. At least it is not harmful or deleterious To the environment.

What Are Not Inventions/ Non Patentable.

• The section “inventions - non-patentable” describes certain products and processes, which are not to be
regarded as patentable inventions as per the act.

• The following are not inventions within the meaning of this act, -

1. Section 3(a) an invention which is frivolous or which claims anything obviously contrary to well
established natural laws;
 Examples: • A machine alleged to be giving output without any input is not patentable as it is
contrary to natural law.
 “A method of showing time on the basis of metric system” wherein dial of time piece having
three hands for indicating, hour, minutes and seconds was divided into 10 parts for hours, each
hour into 100 minutes and each minute into 100 seconds. The invention was held frivolous and
not considered a patentable invention. (Indian patent application no. 101/Bom/72)
 Merely making in one piece, articles previously made in two or more pieces is frivolous. Mere
usefulness is not sufficient [Indian Vacuum Brake’ Company Ltd Vs Laurd (AIR 1962, Cal
152)].

2. Section 3(b) an invention the primary or intended use or commercial exploitation of which could
be contrary public order or morality or which causes serious prejudice to human, animal or plant
life or health or to the environment;
 For example: Any device, apparatus or machine or method for committing theft/burglary •Any
machine or method for counterfeiting of currency notes.

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
 Kirin-amgen V. Hoechst Marion Roussel [2005] In this case Finding of a new type of micro
organism occurring freely in nature is a discovery and not an invention, and therefore, cannot be
patentable.
 In Guaranty Trust Co. of Newyork v. Union Solvents Corpn. The bacteria invented to produce
butyl alcohol and acetone was considered patentable

4. the mere discovery of a new form of a known substance which does not result in the enhancement
of the known efficacy of that substance or the mere discovery of any new property or new use for
a known substance or of the mere use of a known process, machine or apparatus unless such
known process results in a new product or employs at least one new reactant.

5. Section 3(e) 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;
 Example: A composition of two drugs, i.e., Paracetamol and ibuprofen for curing fever and pain
or process of preparation thereof is not patentable for the reason that the composition is a mere
admixture of two drug components resulting into aggregation of properties thereof; since
paracetamol is well known for treatment of fever and ibuprofen for treatment of pain.

6. the mere arrangement or re-arrangement or duplication of known devices each functioning

independently of one another in a known way
 In Figurette and cosmetics private limited (applicant) for application no. 388/bom/73- an
umbrella with fan(388/bom/73), cooling devices” and the complete specification relates to
umbrellas or parasols which provides ventilation and circulation of air in addition to providing
protection to rain or sun.

7. S.3(H) a method of agriculture or horticulture.

 a method of producing improved soil from the soil with nematodes by treating the soil with a
preparation containing specified phosphorathioates was held not patentable (virginia carolina
chemical corporation application
8. S.3(i) any process for the medicinal, surgical, curative, prophylactic, diagnostic therapeutic or
other treatment of human beings or any process for a similar treatment of animals to render them
free of disease or to increase their economic value or that of their products.
  Lee Pharmaceuticals Application [(1978) RPC 51] Since one of the reasons of sealing of pits and
fissures on the grinding surface of the teeth was to prevent the onset of dental decay, the purpose
of the treatment was therapeutic rather than cosmetic, hence not patentable.

9. 3(j) plants and animals in whole or any part thereof other than micro-organisms but including
seeds, varieties and species and essentially biological processes for production or propagation of
plants and animals.. (Dimminaco – A.G v. Controller of Patents & Designs And Others-
Protecting Poultry)

10. a mathematical or business method or a computer programme per se or algorithms;

 Diamond V Dier (US) In this case application for rubber making machine used computer
programs The could that joint patent could be given to CP & The invention. Usually CP are not
patentable

11. a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including
cinematographic works and television production these works are not patentable & They are
covered under the domain of Copyright law

12. Method of performing mental act or method of playing game or a mere scheme or rule are as such
excluded from patentability, because they are considered as outcome of mere mental process. Eg.,
Method of learning a language. • Method of playing chess. • Method of teaching.

13. A presentation of information.

 For example, a speech instruction means in the form of printed text where horizontal underlining
indicated stress and vertical separating lines divided the works into rhythmic groups is held not
patentable.

14. topography of integrated circuits

 Since protection of layout designs of integrated circuits is governed separately under the
semiconductor integrated circuit lay-out designs act, 2000,
 Three-dimensional configuration of the electronic circuits used in microchips and semiconductor
chips is held not patentable

15. an invention which in effect, is traditional knowledge or which is an aggregation or duplication of

known properties of traditionally known component or components. Eg., Use of turmeric for
wound healing is traditional knowledge of india and hence, cannot be patented.

16. Section 4: “no patent shall be granted in respect of an invention relating to atomic energy falling
within subsection (1) of section 20 of the atomic energy act, 1962.

Procedure For Grant Of Patent

Who can apply?

a.. First and true inventor

• Means who has the first made an invention. Two or more persons have made the same inventions
independently and not disclosed then be in winter who applied first for the patent is to be taken as the first
and true inventor. (V.B. Mohd Ibrahim v. Alfred Schafranek)
b..Assignee

• Any person to whom and invention has been assigned by true and first inventor is eligible to apply

• Assignee includes an assignee of the assignee and the legal representative of a deceased assignee.

In Shining industries v. Shri Krishna industries(1975) • An invention assigned to a firm is a valid

assignment. Therefore a firm can apply for a patent as valid assignee. • Assignment can be by words of
mouth. The date of grant of patent invention is not a property right it need not be in writing.

Employer- Employee Relation • Generally, an invention made in the course of employment by the
employee belongs to his employer In

Patchett v. Sterling • It is an implied term in the contract of service of any workman that what he produces
by the strength of his arm or the skill of his hand or the exercise of his inventive faculty it shall become
the property of his employer.,However, it is essential to show that either a positive contract in employer’s
favour or an implied duty of Trust of the employee.

In Marshall and Naylor’s patent (1900) Unless the terms of employment states otherwise, if an employee
invents an invention during the course of employment, then the employee himself is the first and true
inventor.

In Worthington v. Moore • Invention may belong to employee even though made in employer’s time and
with his material.

Form of application(Section 7)

(1) Every application for a patent shall be for one invention only and shall be made in the prescribed
form and filed in the patent office.
(2) (1A) Every international application under the Patent Cooperation Treaty for a patent, as may be
filed designating India shall be deemed to be an application under this Act, if a corresponding
application has also been filed before the Controller in India.
(3) (1B) The filing date of an application referred to in sub-section (1A) and its complete specification
processed by the patent office as designated office or elected office shall be the international filing
date accorded under the Patent Cooperation Treaty.
(4) (2) Where the application is made by virtue of an assignment of the right to apply for a patent for the
invention, there shall be furnished with the application, or within such period as may be prescribed
after the filing of the application, proof of the right to make the application.
(5) (3) Every application under this section shall state that the applicant is in possession of the invention
and shall name the person claiming to be the true and first inventor; and where the person so claiming
is not the applicant or one of the applicants, the application shall contain a declaration that the
applicant believes the person so named to be the true and first inventor.
(6) (4) Every such application (not being a convention application or an application filed under the
Patent Cooperation Treaty designating India) shall be accompanied by a provisional or a complete
specification

Information & Undertaking regarding foreign applications.

 Section 8 mandates applicant(s) filing an application for a patent in India to furnish information
pertaining to applications for a patent for ‘the same or substantially the same invention’ filed in
 any country outside India with Furnish a statement setting out detailed particulars of applications
for a patent & Undertaking to furnish information of ‘every other application,’ if any, filed
elsewhere subsequent to the filing of the statement.

 To Claim benefits of patent act always file first in your own country & then in others.

 In HUL v. Tata ., In this case HUL a UK company applied first in UK & then clubbed HUL the
applied in India , HUL is required to mention about its application in UK with an undertaking . it
was rejected . Water purifier for soldier.
 S.35 R/W S.8 provision for secret direction ., an invention useful for Govt/defence system when
such application is filed they are locked for 18 months for verification & when govt is informed
of such invention by controller then Govt gives direction to maintain secrecy of such invention .

Provisional & Complete Specification

 Specification is a scientific and technical document that explains the invention applied for
patenting

 Though it is technical in nature it has very significant role as a legal document because on the
basis of specification patents are granted.

 Imperial chemical Industries Limited application- provisional specification needed to contain

only a description of of the general nature of the invention its field of application and anticipated
result

 Indians gets 12 months time after filing of provisional specification to provide complete
specification But for non –Indians it is compulsory to provide complete specifications ., if
Complete specification is not filed with time then Controller consider it as abandon

 the period of 12 months time can be extended for 3 months

 Division of Application :- if that application contains more than one invention for eg., a car & its
parts needs pantent then if any one part is not pantentable only that will be rejected & not the
whole

 Also if there are separate application for one invention then controller can club all.

Contents of Specification

 Section 10 of the Patents Act, 1970, clearly defines the various contents of specification:

 Title of the patent invention :- The title must clearly and concisely indicate the subject matter to
which the invention/innovation relates and must be the same as the title on the Request Form and
Abstract

 Background of the invention :- Background of the invention should describe what others have
done in the field, and what problems have not been solved by this prior work. It is always better
 to mention the status of the closest technology, experiments, patents and patent applications in
this section

• Summary of the invention/ Object of the invention:- : It describes a broad overview of the invention
and, thus, provide a structure for understanding the detailed Description and Claim sections of the
specification. The summary of the invention describes the invention overall,

• Description of the invention/ Specification:- The detailed description describes in detail what the
invention is and how it is made and used. Examples showing how the invention works in a particular
application may or may not be present. It should reflect the complete picture of the invention and should
be sufficient for a person skilled in the art to perform the invention by developing necessary technical
know‐how

• Description if any of the patent drawings :- The brief description includes a written description of the
invention that explains how to make and use it. It should point the reference numerals used in the
drawings and should be specific. The details should be sufficient enough for a person skilled in the art to
understand and perform the invention

• Patent Claims :- Claims are the essence of a patent. The claims define the invention which the inventor
holds as his exclusive property and has the right to exclude others from making, using and selling

• Patent Abstract of the disclosure

• Sequence listing, if any.

Examination of Patent Application:

The patent application will be examined by the Patent Office to determine if the invention meets the
criteria for patentability, such as novelty, inventive step, and industrial applicability. Examination of the
application is of two types:

• Formal examination- whether the application complies with the prescribed form fee particular to be
furnished and documents to be submitted.(Section 12)

• Substantive examination- whether the matter is an invention and whether this specification requirement
under the Act are complied with. This includes are search to determine prior use, prior claims, prior
publication and prior public Working (Section 13)

• Request for examination :- No application for a patent shall be examined unless the applicant or any
other interested person makes a request in the prescribed manner for such examination within the
prescribed period.

Publication of Patent Application:

Once the patent application is found to be in order, it will be published in the official journal of the
Patent Office.

The applicant may, in the prescribed manner, request the Controller to publish his application at any time
before the expiry of the period prescribe.,
 except in cases where the application— (a) in which secrecy direction is imposed under section 35; or
(b) has been abandoned under sub-section (1) of section 9; or (c) Has been withdrawn three months prior
to the period specified under sub-section.

Examination Report

• The examiner considers requirement of patent grant like novelty utility inventive step and prior
anticipation and submit his report to the controller within 18 months date of reference to him for
examination

• Controller examines the report for further objections. Controller has certain powers in this regard for
correction of the application in cases where it is permitted

• In other cases controller has the discretion where the application or specification does not comply with
the requirement of the Act or Rules To refuse to proceed with the application; Or To require the
application or specification or drawing to be amended to his satisfaction before he proceeds with the
application

Grant of Patent.

Once the patent application has successfully gone through the examination process, and any objections
raised by the Patent Office have been satisfactorily addressed by the applicant, the Patent Office will
proceed with the grant of the patent.

Revocation of Patents

Section 64 of the Patents Act, 1970 deals with the ‘Revocation of patents’. A patent that has been granted
to an invention can be revoked by the Appellate Board in the following ways:

 on a petition filed by any interested person; or

 on a petition filed by the Central Government; or

 on a counter-claim in a suit for infringement of the patent by the High Court.

Grounds for Revocation

1. S. 64
 If an identical invention has already been protected by the patent right with an earlier filing date.
 If the person provided with the patent is not the original owner and has by misrepresentation or
fraud obtained the patent protection, the original owner can seek the remedy of patent revocation.
 An obvious invention can’t be shed by patent protection.

 A patent can be revoked if granted to a person who is not entitled under the patent act 1970.
 If the invention fails to provide the service as specified in specification while applying for the
patent.
 As per Section 8 of the Patent Act 1970, the inventor is bound to disclose all the information
required by the section and if such inventor fails or misrepresent any of the asked information,
the patent shall be revoked.
 If the invention does not meet the standard of Section 2(1) (j) of the Patent Act 1970, the
patent granted on such invention can be revoked.
 If an invention lacks newness about prior public use or prior knowledge in such a scenario the
patent can be revoked.
 Under Section 35 of the Patent Act, 1970, the Controller provides some compliance of the
secrecy direction which has to be respected however, if any inventor fails to comply with
provided compliances his patent may be revoked.
 Section 57 or Section 58 of the Patent Act, 1970 talks about the permission for amendment of
complete specifications of Patent, however, if any inventor utilizing fraud obtains the
permission under the mentioned section his patent comes at the sake where it can be revoked.
 The inventions that come under the umbrella of Section 3 of the Patent Act, 1970, are not
eligible to be patented.
 If the invention claimed by the inventor is already in the knowledge of any local or native
community in India.
 The inventor is bound to disclose the geographical origin or source of the biological material
used in the invention, if he fails to disclose them appropriately, he may invite an unwanted
revocation threat.
 In the instances, where the inventor obtains the invention from abroad and that invention is
already familiar with the public of India.

 Dhanpat Seth and Ors. V. Nilkamal Plastic Ltd, In this The revocation was granted on the
Ground that "Kilta" a device used for the purpose of storage or collection of agricultural
produce does not qualify as an invention as it does not include any "inventive step" and as a
result does not lead to any technological advancement or any economic significance
 Nuziveedu Seeds Ltd. and Ors v . Monsanto Technology LLC and Ors The revocation was
granted by the Hon'ble Court by relying on Section 3(j) of the Patents Act, 1970 and the
observation to that effect which stated that considering the nature of the invention, it should
be protected under Plant Variety Act and not under the Patent Act

2. Section 65: Revocation of patent or amendment of complete specification on directions

from Government in cases relating to atomic energy.

 Here, this section empowers the central government with the right to ask the appellate board
or the controller to revoke the patent of the license of a patentee and every other person whose
name has been entered in the register as having an interest in the patent, if patent acquired by
them contradict the sub-section (1) of section 20 of the Atomic Energy Act, 1962 (33 of
1962), which says that no patent can be granted if such patent is for an invention relating to
atomic energy. However, the controller may provide the patentee and every other person
whose name has been entered in the register as having an interest in the patent an option to
make a satisfactory amendment which further does not hamper the sub-section (1) of section
20 of the Atomic Energy Act, 1962.
 3. Section 66 Revocation of patent in the public interest.

 Law does not allow any individual to be selfish, i.e if, something you discoveris very
beneficial for you, but is harming the public at large or the process through which it gets
prepared is injurious for the public at large, the law won’t permit you to continue with your
discovery.
 For example, Company Avesthagen Ltd. was granted a Patent on a product containing Jamun,
Chandan, and Lavangpatti, which was anticipated to be used in for the treatment of diabetes.
The Company Avesthagen filed for Patent for the same product in the European Patent Office
(EPO). The Patent was turned down under the ground that the Patent is infringed upon the
Traditional Knowledge Digital Library (TKDL)

4. Section 85: Revocation of patents by the Controller for non-working.

 This section pronounces that when a compulsory license has been granted with relation to a
patent, the Central Government or any person interested may request the Controller for an
order revoking the patent on the following grounds-

 That the patented invention has not been worked in the territory of India.
 That the reasonable requirements of the public concerning the patented invention have not
been satisfied.
 That the patented invention is not available to the public at a reasonably affordable price.
Note- Application to the controller by the Central Government or any person interested shall be made
after the expiration of two years from the date of the order granting the first compulsory licence.

Rights & Limitation of Patent Holder

The rights of patentee are not absolute; they come with certain conditions. Here are the key rights of a
patentee:

Exclusive Right

The exclusive right is detailed in Section 48 of the Patent Act of 1970. Whether it’s a method or a
product, this section grants exclusive rights. If the patent covers a product, the patentee has the exclusive
right to prevent others from manufacturing, selling, importing or using the patented product without
permission. If it’s a method, the patentee can prevent others from using, selling or importing products
made using that method.

Right to Exploit the Patent

A patentee has the exclusive right to make, use, exercise, sell or distribute the patented product or use the
patented method. This right can be exercised by the patentee, their agents or licensees. However, these
rights are only valid during the patent’s term, which is 20 years from the date of filing the patent
application. The patent remains in force as long as the required renewal fees are paid.
Right to License

Section 70 of the Indian Patents Act, 1970, provides the right of patentee to grant licenses to others for
using the patented invention in exchange for consideration. If there are multiple owners of the patent, all
owners must collectively grant the license to a third party. The license must be in writing and documented
(registered) with the Controller of Patent.

Right to Assign

Section 69(5) of the Patent Act of 1970 provides the right of patentee to assign or give licenses to third
parties for producing and distributing the patented goods. In cases where multiple owners share the
patent, all owners must agree to grant the license collectively. The license is only considered valid after
the administrator has properly authorised the request. Therefore, for the assignment or license to be legal
and valid, it must be in writing and submitted to the Patent Authority.

Right to Surrender the Patent

Under Section 63 of the Indian Patents Act, 1970, there is a right of patentee has the option to surrender
their patent. There’s no obligation to maintain the monopoly right for the entire 20-year term. The
patentee can submit a surrender application to the Controller, who then publishes it in the official gazette.
Interested parties can oppose the surrender and if the Controller finds sufficient grounds, a hearing is
conducted to make a decision.

Right to Sue for Infringement

Infringement occurs when the patentee’s rights are violated, involving the unauthorised making, using,
selling or distributing of the invention. The patentee, their assignee, licensee or agent has the right to file a
civil suit for infringement in a court not lower than the District Court. If the court establishes a violation,
it may grant an injunction or award damages.

Right to be Issued a Duplicate Patent

Section 154 of the Indian Patents Act, 1970, addresses the loss or destruction of patents. It is the right of
patentee apply for a duplicate patent if the original is lost, destroyed or if its non-production is
satisfactorily explained to the Controller.

Right to Make a Convention Application

Every patentee in India has the right to make a Convention Application for patent protection in
Convention Countries. This right of patentee is based on the principles of reciprocity and national
treatment in international law.

Right to Make a Patent of Addition

Sections 54 to 56 of the Indian Patents Act, 1970, provide right of patentee for a Patent of Addition,
allowing modifications to an existing invention. The patent holder is granted rights to the modified
invention after the notification of acceptance. These rights are equivalent to those provided in the original
patent, but only when the notification is presented
Limitations

A..Government use of patent

A patented invention may be used or even acquired by the Government, for its use only; it is understood
that Government may also restrict or prohibit the use of a patent under certain circumstances. In case of a
patent in respect of any medicine or drug, it may be imported by the Government for its own use or for
distribution in any dispensary, hospital or other medical institution maintained by or on behalf of the
Government. This a government can do without consent of the patentee or even without payment of
royalties. The Government may also sell the article manufactured by patented process on royalties or may
also acquire a patent on paying a suitable compensation.

B.. Compulsory Licenses

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

C.. . Revocation of Patents

A patent may be revoked in cases where there has been no work or unsatisfactory result to the demand of
the public in respect of the patented invention.

D.. Restored Patents

Once lapsed, a patent may be restored, provided that few limitations are imposed on the right of the
patentee. When infringement was done during the period between date of lapse and date of advertisement
of the application for restoration, then the patentee has no right to seek action for infringement.

E.. Invention for defense purposes

Such patents may be subject to certain secrecy provisions, i.e. publication of the same may be restricted
or prohibited by directions of the controller. Upon continuance of such order or prohibition of publication
or communication of patented invention, applicant is debarred for using it and Central Government might
use it on payment of royalties to applicant.

..F Exception of experimental/scientific use

This limitation is provided under sub-section 3 of Section 47 of the act. This exception provides that the
patented process/product can be used by any person for the purpose of undertaking any scientific
experiment or carrying out research. The introduction of this exception was important to protect those
 conducting ‘bona fide’ research and experiments. It permits the third parties to conduct research using the
patented material without being accused of infringing the patent holder’s rights.

Transfer of patent.

A patent is a transferable property . it can be transferred from original patentee to any other person by
assignment or by operation of law, for eg., devolution of the right on legal heir . transfer of patent can
occur by grant of licence by patentee.

Forms of Transfer of patent rights.

The patentee is authorized to assign , grant licence or otherwise deal with the patent for consideration

a) Assignment.

 Assignment, as defined in Black's Law Dictionary, means the transfer by a party of all of its rights or
interest in the property.
 There can be three kinds of assignments:— (i) Legal assignment. (ii) Equitable assignment. (iii)
Mortgage.

i. Legal assignment :- An assignment of an existing patent through an agreement which has been duly
registered is a legal assignment. A legal assignee has the right to have his name entered in the Register
of patents maintained in the Controller's Office as proprietor of the patent and can thereafter exercise all
the rights conferred on him by the proprietor of patent.

 For instance, a patentee A in respect of a machine useful in the automobile industry assigns his right in
the patent to B through an agreement which is written and duly registered in the Patent Office.
Thereupon, B becomes the proprietor of the patent.

ii. Equitable assignment :- Any document such as letter but not being an agreement, which is duly
registered with the Controller in which patentee agrees to give another person certain defined right in
the patent with immediate effect, is an equitable assignment.

 For instance, a patentee D writes a letter to E whereby he assigns to E the right to make and sell the
invention within the territory of Delhi. D has transferred his proprietary right through equitable
assignment to E to the extent mentioned in his letter.

iii. Mortgage A mortgage is also a form of assignment. A mortgage is a document transferring the patent
rights either wholly or partly to the mortgagee with a view to secure the payment of a specified sum of
money.

 Conditions to create a valid assignment The creation of any interest in the patent has to satisfy the
following conditions:— (1) The assignment is reduced to writing in a document containing all the terms
 and conditions governing the rights and obligations between the parties. (2) The written agreement is duly
registered under the provisions of Indian Patents Act.

b) LICENCE

 A patentee can transfer a right by a licence agreement permitting a licensee to make, use or exercise the
invention. Licence agreement contains all the terms and conditions of licensing between the licensor and
the licensee. .
 The different kinds of licences are

i. Voluntary Licence

 Voluntary licence is a written authority granted by the owner of the patent to another person(s)
empowering the latter to make, use, sell the patented ‘article in the manner and on terms and conditions
provided in the licence. The terms and “conditions are settled between the patentee and the licensee.
Controller or Government have no role in the matter of grant of licence. So it is termed as voluntary
licence.

ii. Statutory Licence

 Examples of statutory licensing in patents are ‘compulsory licences’ and ‘licences of right’. In statutory
licensing, the Controller and the Central Government play -an important role. The circumstances of grant
of such licences, their terms—and conditions do not depend upon the will of the parties as is the case in
grant of voluntary licences.

iii. Exclusive/limited licence

 Depending upon the degree and extent of rights conferred on the licensee, a licence may be exclusive or
non-exclusive limited licence.
 An exclusive licence confers all exclusive rights, (to make, distribute or sell) on the licensee excluding all
other persons. For example, A, a patentee in India grants a licence to B to exploit the invention in India. A
does not confer any other person such right. B gets an exclusive licence in the patent.
 A limited licence imposes certain limitations on the right of the licensee. The limitations may relate to
persons, time, place of manufacture, use or sale. For example, A grants a licence to B to manufacture the
patented article, and gives C the licence to sell it in the territory of Uttar Pradesh only. Both B and C get
limited licences.

iv. Express/implied .

 An express licence is the one in which the permission to use the patent is given in express terms. For
example, “I, the patentee Of «sss authorises X to seventies ea ” would constitute a clause in an express
licence. It is not valid unless it is written in a document embodying the terms and conditions of the
licence and the document is registered with the Patent Office.
 In an implied licence, the permission is not given in express terms in writing but it is implied from the
circumstances. For example, where a person buys a patented article either directly or indirectly from the
 patentee or his licensee, there 1s an implied licence to the buyer to use the article in any way or to resell
it.

c) Transmission Of Patent By Operation Of Law

 When a patentee dies, his interest in the patent passes to his legal representative. A patent also can
be acquired by the Government under the Act when reasonable requirements of public have not
been met.

Novartis A G v UOI Case Analysis for Patentability

Facts

 Novartis, a multinational pharmaceutical company with headquarters in Switzerland, applied in

1997 for a patent of Glivec, an anticancer medication used to treat gastrointestinal stromal tumors
and chronic myeloid leukaemia. The company claimed to have invented the beta crystalline salt
form of imatinib., which is imatinib mesylate. The medication was a vital one, which had already
been granted the status of patent in thirty-five other nations.
 In 2005 patent application of Novartis for the drug Glivec was taken into consideration and the
same was rejected by Madras Patent Office on the ground that the drug was anticipated by prior
publication and failed to satisfy the requirement of novelty and non-obviousness, further stating
the alleged invention as un-patentable under the provision of section-3(d) of Patent Act, 1970 as
the said drug did not exhibit any major changes in therapeutic efficacy over its pre-existing form
i.e. Zimmermann patent.
 After that Novartis filed SLP (Special Leave Petition) in 2009 before the Supreme Court of India
against the order passed by IPAB under Article-136 of Constitution of India

Issues involved

 The main issues that came before the Supreme Court were:

[Link] the invention is inconsistent with Section 3(d) of the Patent Act or not?
[Link] should efficacy be interpreted under Section 3(d) of the Patent Act?
[Link] the invention qualify for the test of novelty and invention for the alleged product?
[Link] the invention of the ‘beta crystalline form of imatinib mesylate’ claimed by Novartis is
more efficient than the substance from which it is derived, i.e., ‘imatinib mesylate’

Court Observation
 The Supreme Court in the Novartis case examined the relationship between Section 2(1)(j) and Section 3.
It found that they create separate filters, that is, even though a product or a process might be considered
as an invention under Section 2(1)(j), it could still be denied a patent under Section 3 if it falls within
any of the enshrined listed items of Section 2(1)(j).
 The court recognized that Section 2(1)(j) states that there are three elements of invention, which are given
as follows
 It must be new, and it must possess novelty
 One of the most important factors in determining whether an invention may be patentable is its
uniqueness. “Any invention or technology that, as long as the subject matter has not entered the public
domain or is not part of the state of the art, has not been anticipated by publication in any document or
used in the nation or abroad in the world before the date of filing of a patent application with complete
specification.” Stated differently, the originality requirement mandates that an innovation must never
have been disclosed to the public. It must be entirely original and unrelated to any previous works of the
same or similar kind.
 In addition to being a completely novel product or service, the innovation has to generate new data and a
fresh approach. It has to be different from all that is known at this time. Second, no prior publication of
this innovation exists. On the other hand, a straightforward discovery with a few special characteristics
does not qualify as an innovation. Furthermore, these two requirements must be met in order to grant
patent rights: invention and usefulness. To be eligible for patent protection, an invention must be new
and distinct. Novelty by itself does not constitute a complete criteria. Additionally, the product needs to
be sufficiently original and helpful.
 It must have an inventive step. In some jurisdictions, it is also called the non-obviousness
requirement, that is, the invention must not be obvious
 A feature of an innovation that makes it difficult for someone with experience in the field to understand
and involves either technological advancement relative to what is known already or economic
significance. This implies that an individual who is informed about the subject matter of the invention
must not be able to recognize the innovation. It ought to be distinct and difficult for an expert in the
field to notice.
 To develop a product, the inventor or creator must have used their own unique and innovative ideas. The
invention should be of the kind that, under normal circumstances, a specialist in the same subject would
not have predicted. However, one must bear in mind that the technological answer offered by someone
would not be considered creative.
 It must be capable of industrial applications
 “The invention is capable of being manufactured or employed in an industry” is the definition of
industrial applicability. In essence, this indicates that the invention is not feasible in theory only. The
requirement that a product should be relevant to all industries suggests that an idea cannot be patented
unless it has real-world applications. In order to protect and ensure that the inventor may profit from
their invention without fear of competition, patent certificates are granted. It is imperative, therefore,
that the innovation be practical and have industrial uses.
 Hence Honourable Supreme Court has seen these elements as the core test for patentability.

Held

Because imatinib mesylate was already covered under the patents for the original drug imatinib, the
Supreme Court ruled that it lacked originality. The court examined several scientific publications that
explain imatinib, the free base, as well as imatinib mesylate, its salt form. The court further ruled that a
patent holder cannot use a restricted interpretation of an already-existing invention when assessing its
novelty in relation to a salt derivative while simultaneously asserting a wide interpretation of the same
patent in infringement proceedings. The court agreed with the Intellectual Property Appellate Board’s
assessment that the beta crystalline form was not a patentable “invention” since it did not satisfy the
increased efficacy criteria outlined in Section 3(d) of the Patents Act and could not be regarded as
innovative.
 Unit-2.

 Trade Mark is a sign or symbol which is used by a person to distinguish his goods or articles from the
goods or articles of others.
 Section 2(1) (zb) defines Trade Mark as- “Trade Mark means a mark capable of being represented
graphically and which is capable of distinguishing goods or services of one person from those of others
and may include shape of goods, their packaging and combination of colours.
 Section 2(1) (m) of TM Act, 1999 defines ‘Mark’ as: “Mark includes a – Device, brand, heading, label,
ticket, name, signature, word, letter, numeral, shape of goods, packing or combination of colours or any
combination thereof

Objective of Trademark

 Distinctive identification
 Legal protection
 Consumer Trust & Assurance
 Asset value
 Global Expansion
Features of Trademark

Trade mark should have the following essential elements:

1. A Trademark should have Distinctive Character (Distinctiveness of the Trademark) • A trade mark would be
considered a good trade mark when it is distinctive either inherently or if it acquires distinctiveness.

2. Trademark should preferably be an invented word. E.g. ZEN (car) , LUX, PONDS etc.

3. Trademark, if it is a word, or name, then it should be easy to pronounce and remember. E.g. Maruti Zen or
Mercedes for cars, Levis for jeans, Reynolds or Parker for pens etc.

4. In case of a device mark, the device should be capable of being described by a single worD. E.g. Camel for
Camel Ink, butterfly for stoves.

5. Trade mark should be easy to spell correctly and write legibly.

6. It should not be descriptive but may be suggestive of the quality of goods. • For example, a mark A-I would
generally suggest superior quality. Avon (A-1) cycles for instance.

7. It should be short. E.g. ‘Flex’, ‘Bru’, ‘Rin’.

8. It should appeal to the eye as well as ear.

9. It should satisfy the requirements of registration.

10. It should not belong to the class of marks prohibited for registration. E.g. Mark prohibited under the
Emblems and Names (Prevention of Improper Use) Act, 1950.

Distinctiveness of Trademark.

 In simplest way , Distinctiveness would mean the quality or state of being different .

 According to Cambridge dictionary Distinctiveness means the quality of being easy to recognize because
of being different from other things
 In another landmark case of Imperial Tobacco Co. of India Ltd. V. Registrar of Trademark , the word
distinctiveness was held to be some quality in the trademark which earmarked the goods marked as distinct
from those of other products or such goods.

spectrum of trademark distinctiveness

 When it comes to distinctiveness, not all marks are treated equally. Trademark distinctiveness exists on a
spectrum. The spectrum is known to be the ‘Abercrombie Spectrum of Distinctiveness.

a) Fanciful marks or invented word

 Fanciful marks consist of words which are invented, which do not exist earlier and their meaning is not
being found in any dictionary.
 What constitutes an “ Imvented “ word was defined as follows in the Diabolo case “ the word must not
only be newly coined, in the sense of not being already current in the English language , but must be
such as not to convey any meaning or at any rate any obvious meaning to ordinary English men , it
must be word having no meaning unit one has been assigned to it
 The following are the examples for fanciful marks: – RIN for Soaps. – KODAK for Camera films. –
ONIDA for Television. – NOKIA for mobile phones.

b) Arbitrary marks
 Arbitrary marks consist of words which have a fixed meaning but they neither have any connection
to the goods or services nor do they suggest anything about the goods and services for which they
have been used. Unlike fanciful marks arbitrary marks carry some definite meaning but there would
no connection between the marks and the goods. The following are some of the examples of
arbitrary marks: –
 Apple: used in relation to computers –
 Ship: used for match sticks –
c) Suggestive marks

 Suggestive marks consist of words which provide information to the consumers about certain
characteristics, nature or quality of the goods or services. There will be some definite and
proximate connection between the mark and the goods or services. The mark might indicate to the
consumer about the special quality of the product or the nature of the product or the service
 Ever youth- stay young: used in relation to a face wash
 – Fair and Lovely: used for face cream
d) Descriptive marks

 A mark which describes about the goods or services on which it is used are considered
descriptive marks. Descriptive mark conveys direct information to the consumers as to the
function, intended purpose, quality, ingredients, nature or characteristics of goods or services

e) Generic Trademark

 This is the brand's weakest form. Most of the time, it isn't even a brand. It's merely a general
name that everyone uses to refer to a specific item or service that they provide
 for instance. If you sell ice cream, you cannot trademark the word "ice cream

Inherent distinctiveness

The mark which do not provide any information as to the nature, quality or characteristics of the goods on
which they are affixed are considered inherently distinctive marks.
Acquired distinctiveness

The concept of Acquired Distinctiveness comes to the rescue by recognizing that such descriptive or
generic marks can acquire distinctiveness and secondary meaning over time through extensive and
exclusive use in the marketplace. As a result, they may qualify for trademark registration and protection,
serving as identifiers of a particular business source and gaining a distinctive association in the minds of
consumers.

 Living Media India Limited v. Jitender V. Jain and Anr- aaj tak.
 Reddaway and Co Ltd v Banham and Co Ltd- camel hair
 M/S P.K. Overseas Pvt. Ltd.v. M/S KRBL Ltd – Bemisal

Significance of distinctiveness in the protection of trademark

1. Brand Recognition:- Distinctive trademarks help businesses differentiate their products or services from
competitors in the market. A unique and distinctive mark makes a brand easily recognizable to
consumers, enhancing brand awareness and loyalty.

2. Consumer Perception:- Trademark distinctiveness influences consumer perception of a brand's reputation,

quality, and trustworthiness. A strong and distinctive trademark can convey a sense of professionalism
and reliability, influencing consumer purchasing decisions.

3. Legal Protection:- Distinctive trademarks are easier to protect legally compared to generic or descriptive
marks. They have stronger legal standing in cases of infringement, dilution, or counterfeiting, providing
better opportunities for enforcing intellectual property rights.

4. Market Positioning:- A distinct trademark can help a business carve out a unique market position and stand
out in a crowded marketplace. It can communicate specific attributes, values, or characteristics associated
with the brand, helping to target specific consumer segments effectively.

5. Prevention of Confusion: -Trademark distinctiveness reduces the likelihood of consumer confusion between
brands with similar names or logos. Clear differentiation through distinctive trademarks helps avoid
misrepresentation and safeguards consumer trust.
6. Global Expansion: Distinctive trademarks facilitate expansion into international markets by providing a
consistent brand identity that transcends language barriers. A unique and recognizable mark can help
businesses establish a strong presence globally.

7. Value and Recognition:- Distinctive trademarks contribute to the overall value of a brand and can become
valuable assets for the business. Well-known, distinctive trademarks have the potential to be recognized
and respected across different industries and regions.

8. Marketing and Advertising:- Distinctive trademarks serve as powerful marketing tools, enhancing brand
visibility and recall in advertising campaigns. Memorable and unique marks can create a lasting
impression on consumers, reinforcing brand messaging.

9. Long-Term Brand Equity:- Establishing a distinctive trademark builds long-term brand equity, which can lead
to sustained customer loyalty and competitive advantage. Brands with strong trademarks tend to
withstand market fluctuations and maintain relevance over time.

10. Innovation and Creativity :- Trademark distinctiveness encourages businesses to innovate and create unique
brand identities that resonate with consumers. It fosters creativity in brand development and promotes a
culture of uniqueness and originality in the marketplace

Different forms of Trademark..

1. Service Mark

 Section 2 (1) (z)- service means service of any description that is made available to any potential
users and includes the provision of service in connection with business of any industrial or
commercial matters such as banking, communications, education, financing, insurance, chit funds,
real estate, transport, storage,
 A service mark is a brand name or logo that identifies the provider of a service. A service mark may
consist of a word, phrase, symbol, design or some combination of these elements
 Eg;- Logos of SBI, ICICI, LIC, Hotels and other service provider industries

2. Collective Mark.

 Section 2(1) (g) - “A Trade mark distinguishing the goods or services of members of an association
of persons not being partnership firm from those of others”
  It is important to note that collective marks can only be used by members of a particular company
or association who own the mark
 There are three types of Collective Marks or legal entity for differentiation with other goods or
services of same kind. They are
 Collective Trademarks and collective Service marks :- Conventional collective marks that are
capable of distinguishing the goods or services of the members of an association from those of other
undertakings according to their origin from a given enterprise. These are used to indicate the source.
Example – flowers from Colombia.
 Collective Membership Mark :- These marks are not used to indicate source of goods or services
but they indicate that the seller is part of a defined group
 Example :- Khadi mark , Silk Mark etc..
 Collective geographical indication (GI) :- marks designating the geographical origin of goods or
services are those products belonging to a specific geographical origin and possesses origin-based
qualities and reputation in the region.
 Example :- Kashmir Pashmina , Assam CTC etc..

3. Certification mark

 It is a mark used by the proprietor to signifies the quality, origin, material etc. of his product or
service. The certification mark adds as an added advantage to the products, ensuring the customers
the product or service meets a particular standard.
 Example :- FASSAI for Food safety, Agmark for food items, Hallmark for Jewellery and others.

4. Textile trademarks These are marks relating to textile goods

5. Word mark and Letter mark

 Word marks and letter marks are the common forms of which a trademark is registered under. Like
the name suggests a word mark or letter mark consists of a particular set of words or letters in a
specific arrangement that one wans to register.
 A few examples of registered work marks are LITTLE HEARTS, COCA-COLA

6. Color mark

 A unique and distinctive Trademark with catchy colours which can be easily distinguished by
consumers. However, in practice, a combination of colours stands a better chance of registration,
provided that it is capable of distinguishing the goods of one trader from those of another.
 Eg :- John deere

7. Sound mark

 Sounds, jingle or a tune can also play a major role in identifying a product. It is easy to differentiate
a Microsoft computer from that of an Apple computer from the tune that plays when the computer
 is switched on. A sound mark can be a registered too. To register a sound markx , the musical
sound must be graphically represented and the same needs to be filed in a MP3 format not
exceeding 30 seconds.

8. Shape Mark

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

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

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

9. Pattern marks
 Pattern marks are those products that have specific designed patterns that come out as the
distinguishing factor of the product. Patterns which fail to stand out as a remarkable mark is
generally rejected since it does not serve any purpose. For a pattern to be registered, it has to show
evidence of its uniqueness.

10. Smell Mark

 One of the strongest sense that is associated with a fond product is with its smell. For registering a
smell as a mark, the smell should be visually represented and the scent must be distinct from the
product
 Some examples of this are Grendene’s Bubble Gum Scent for Sandalsxviii, Play-Dohxix which is
described as a scent of a sweet, slightly musky, vanilla fragrance.
11. Property Mark.
 Section 479 of Indian Penal Code, 1860 provides that “A mark used for denoting that moveable
property belongs to a particular person is called a property mark.”

Deceptive Similarity.

 A deceptively similar trade mark means a trade mark which is very identical to an already existing
trade mark and which is capable of easily deceiving and creating confusion in the minds of the
consumers.
 It is presumed that a mark which is so nearly resembles cannot indicate the proper source or origin
or quality. It confuses or deceives the consumers with regard to their choice of goods or services.
Choosing or using deceptively similar marks amounts to unfair competition.
 Section 2(1)(h) defines the term "deceptively similar” as: • A mark shall be deemed to be
deceptively similar to another mark if it so nearly resembles that other mark as to be likely to
deceive or cause confusion.
 Deceptive similarity is one of the factors for trademark infringement.

Types of similarity
 a) Visual similarity

 Visual similarity refers to the similarity in appearance between two marks. It will include length
of the respective marks, use of prefixes, suffixes, common syllables, and shared elements of
shape. For instance, two marks may have similar logos, designs, or color schemes.
 Pidilite Industries Pvt. Ltd. v. Mittees Corporation, - FEVICOL and TREVICOL were held to be
visually similar and identical marks.
 M/S Lakme Ltd .v. M/S Subhash Trading - LAKME and LIKEME

b) Phonetic similarity

 Phonetic similarity refers to the similarity in sound between two marks. It turns on similarity
when the marks are pronounced. It depends upon the length of the marks, the number of syllables
and the pronunciation of the marks. For example, two marks may have similar pronunciations or
similar sounding words
 Ranbaxy Laboratories Ltd. v. Dua Pharmaceuticals Pvt. Ltd - It was held by the court that both
the marks "CALMPOSE" & "CALMPROSE" are used for the same class of products and that
they are both phonetically and visually similar and hence was held to be deceptively similar.

c) Conceptual similarity

 Conceptual similarity refers to the similarity in meaning between two marks. Certain marks may
not look or sound alike but may be similar in concept. The relevant point is to see the overall
message of the mark. For instance, two marks may have similar meanings or convey similar
messages.

d) Similarity in Meaning
 Similarity in meaning or connotation in relation to the named goods or services.
 Even if 2 marks are identical in sound and appearance, they may create significantly different
commercial impressions so that there is no likelihood of confusion
 M/s Surya Roshini Ltd. v. M/s Electronic Sound Components Co
 Delhi HC had held that there was deceptive similarity between the trademarks “Surya”
and “Bhaskar” as both marks are literal translations of the word ‘Sun’

Criteria For Determining Deceptive Similarity

In Cadila Health Care Ltd .v. Cadila Pharmaceutical Ltd, Supreme Court provided the grounds for testing
“Deceptive Similarity”. The factors which are to be taken into consideration for determining deceptive
similarity are as follows:-

i. Nature of mark (word, label or composite mark)

ii. The degree of resemblance between the marks

 iii. The nature of goods (services for which the Trade mark is used)

iv. The level of care and intelligence exercised by the purchaser while purchasing goods or services

v. The mode used by the purchaser to purchase or place the order

vi. The similarity in the nature, performance and character of goods of the rival traders.

Tests to Determine Deceptively Similar Marks

1. Common observer test.

 The 'ordinary observer' test is applied to determine if two works are substantially similar.
 The factors creating confusion depends upon the nature of mark itself, the class of
customers, trade channel, etc
 In Anglo-Dutch Paint, Colour and Vanish Works Pvt. Ltd. v. India Trading House, (the
tests laid down for comparing the two marks are:
 i. The question whether the two marks are so similar that likely to cause confusion or
deceive in the first appearance -applying the doctrine of fading memory i.e. From the
point of view of a man of average intelligence having imperfect recollection.
 ii. Whether the overall visual and phonetic similarity of the two marks is likely to deceive
such a man or cause confusion that he may make mistake as to the goods of the defendant
for those of the plaintiff.
 iii. The other questions which arise are: a) who are the persons who are likely to be
deceived and b) what rules of comparison are to be adopted in judging whether such
resemblance exist

2. Totality Test

 It is important that while comparing the two marks, one must compare the mark as a whole.
The practice of taking a portion of the word and saying that it is different from the other
mark is not a right practice. The marks must be compared in totality to ascertain if any
deception or confusion exists. In order to ascertain whether the misrepresentation is
deceptive or not, the marks should be looked at as a whole.
 While examining the question of misrepresentation or deception, a comparison has to be
made between the two trademarks as a whole.
 The Anti-Dissection Rule compare composites as whole conflicting composite marks are
to be compared by looking at them as a whole, rather than breaking the marks up into their
component parts for comparison.
 The marks must be compared as a whole. If there are some differences in the portion of a
word or in the corresponding portion, then also it may cause confusion.
 Cadbury India Limited and Ors. v. Neeraj Food Products.,
3. Test of Resemblance

 As far as the similarity is concerned what is required is “a mere resemblance” or close

similarity and not the close resemblance .
 The test is to see whether A man of average intelligence and imperfect recollection, can
identify the original / senior mark. If the overall structure and phonetic similarity and
similarities of ideas in the two marks is reasonably likely to cause confusion between
them then the mark of the defendant is deemed to be infringing mark.
 The 'ordinary observer' test is applied to determine if two works are substantially similar.
The Court will look to the response of an ‘average lay observer’ to ascertain whether a
copyright holder's original expression is identifiable in the allegedly infringing work.
 The test would depend upon the criteria of phonetic, visual and structural similarity
 Pepsico, Inc v. Psi Ganesh Marketing .,Pepsico India Holdings Pvt Ltd.’s trademark
‘Aquafina’ used for its packaged drinking water was copied by the defendant by using
deceptively similar trademark ‘Aqua Fies’. The Delhi High Court held it to be
infringement.

4. Test of Similarity

 The factors creating confusion depends upon various factors like, the nature of mark itself,
the class of customers, trade channel, etc., which has to be taken into consideration to
determine whether there is a likelihood of confusion or deception by the use of a mark
 Astra IDL v. TTK Pharma The Bombay High Court commented that scheduled drugs
which were supposed to be sold on prescription were sold without prescription in India,
which reduced the weight to be given to this factor when evaluating deceptive similarity.
The court pointed out that to decide what are the goods of a same description courts should
look into-
 I. nature and composition of the goods
 it uses and functions of the goods
 it trade channels through which they are purchased and sold.

5. Reputation Test

 Nature of goods is very important factor in deciding likelihood of confusion or deception.

Reputation of the earlier remark will act as good ground to protect the registered trademark
 Scotch Visky Association v. Pravana Shankar Shakkar Kharkhana Ltd. – Drum Beater

6. Trans-border Reputation Test

 When two goods are already in the market it is necessary to find actual evidence of
confusion in the minds of the customers.
 Actual consumer confusion must be proved before the courts in case of passing off
 In case of a well known trademarks reputation of the manufacturer will be considered to be
a good ground of Defence to protect his mark.
  the Indian courts have recognised the concept of trans-border reputation in IP cases.
 A prior adopter of a trademark in any part of the world can successfully enforce its rights
in India, provided that there is spillover reputation which can be substantiated through
documentary evidence
 In Whirlpool Int. v. N R Dongre ., Whirlpool Corporation brought a suit for passing off to
restrain the defendants from manufacturing, selling, advertising or in any way using the
WHIRLPOOL mark as part of another mark in respect of its goods. The subject matter of
the appeal was the manufacture, sale and advertisement of washing machines under a mark
which included WHIRLPOOL.
 Whirlpool based its claim on its prior use of the WHIRLPOOL mark and a trans-border
reputation, which suggested that any goods marketed under the WHIRLPOOL mark had
been marketed by the plaintiff.
 The Apex Court confirmed that advertising a trademark is considered to be use and is
sufficient to prove reputation and goodwill in India, even when no goods are being sold on
the market

Registrations of trademark

 Registration confers bundle of rights to the owner of the trademark. Registration is not
compulsory for using a trademark, but if one intends protect his trademark, Registration is
conferred on those trademarks which fulfill certain minimum requirements.

Who may Apply for Trademark registration

 User of the trademark ● Owner of the trademark ● Authorized agent ● Assignee ● Licensee.

Absolute grounds

 The application could be refused by the trademark registry on various grounds. These grounds
have been classified into two different categories, namely absolute grounds for refusal of
registration and relative grounds for refusal of registration section 9 of the Act talks about the
absolute grounds for refusal of registration. There are few grounds which are considered to be
absolute grounds for refusal of registration. These grounds are as follows:

1. Marks devoid of distinctive character : Marks devoid of distinctive character can't be registered since
those marks can't distinguish the goods and services. Section 9(1)(a) of the Act states that if a mark is
not capable of distinguishing the goods and services it is an absolute ground for refusal of registration.
2. Marks indicating nature and characteristics of goods and services: A mark which indicates the kind,
quality, quantity, function, value, purpose, geographical origin etc., cannot be registered. Section 9(1)(b)
of the Act talks about this ground. In general, a mark which tends to indicate or describe the nature and
 characteristics of goods and services which it is representing or which it is purporting to represent
cannot be registered as a valid trademark.
3. Marks common to trade Marks common to trade such as generic marks, customary marks used commonly
in the trade cannot be registered as trademarks. The Trademarks Act talks about the marks which are
common to trade. On these marks no one can enjoy monopoly in exclusion of others. Anybody can use
these marks without claiming proprietorship or ownership over the marks.
4. Marks of such nature to deceive the public: If the mark is tending to confuse or deceive the public, such
marks are not registered as a trademark. The Act speaks about this ground on which application for
trademark could be rejected. If the usage of a particular mark is going to deceive the public with
reference to its origin and the owner shall not be registered.
5. Marks likely to hurt religious sentiments: India being a multi religious country with a number of cultures
and traditions, there is a need to have religious and communal harmony. If any trader intends to use a
mark which is against the interests or sentiments of any religion or community such marks shall not be
registered.
6. Marks containing obscene or scandalous material: Marks should not indicate or contain anything which is
obscene and scandalous. There shall not be anything which is objectionable to the moral standards of
the society. Therefore, while choosing a mark one should keep in mind the societal standards which
prohibit use, indication or any representation which is obscene or scandalous
7. Marks prohibited under the Names and Emblems Act: The Names and emblems Act of India prohibits
certain names, marks and indications from being used for commercial purposes. These marks and names
are the property of the nation and hence are prohibited from being used as a trademark. Prohibition
under the Act, and as well under the Names and Emblems Act is an absolute ground for rejecting the
trademark application.
8. A mark shall not be registered as a trade mark if it consists exclusively of- (a) the shape of goods which
results from the nature of the goods themselves; or (b) the shape of goods which is necessary to obtain a
technical result; or (c) the shape which gives substantial value to the goods.

Relative grounds

 Apart from absolute grounds for refusal of application for registration of marks there are certain
other grounds on the basis of which applications for trademark can be refused. These other
grounds are called as relative grounds and section 11 of the Act mentions these grounds. These
grounds need to be established before rejecting the application. However, in case of absolute
grounds no further proof is required and the application could be straight away rejected.
 It is identical/similar to an existing trademark –
 There is any likelihood of confusion on the part of the public –
 There is any likelihood of wrongful association with the earlier mark
 A trade mark shall not be registered if, or to the extent that, its use in India is liable to be
preventeda)by virtue of any law in particular the law of passing off protecting an unregistered
trade mark used in the course of trade; or b) by virtue of law of copyright.

Procedure for Registration of Trademark

i. Step 1 Application for registration S. 18

The person who is the proprietor of the trademark should apply for the registration of the trademark with
proper fees in the office of the trademark registry under whose territorial limit or jurisdiction the main
place of business will be. A single application may be made for the registration of a trademark for
 different classes of goods and services. Hence, the fee payable for registration shall be decided in respect
of each such class of goods or services accordingly.

The Registrar may refuse, accept it absolutely or may ask to amend the application.

Section 19 provides the party the capacity to withdraw the application after acceptance of the application
by the Registrar, provided that the Registrar is satisfied with the reasons for the withdrawal of the
acceptance.

ii. Step 2: Advertisement of application

Section 20 provides that after an application for a trademark has been accepted by the Registrar and there
are no discrepancies or amendments in the application, it should be advertised in the official Gazette. The
section further provides that if an application has been advertised before acceptance, the error in the
application should be amended after it.

The purpose of the advertisement is to provide an opportunity for interested persons to file an opposition
if it affects their trade interests.

iii. Step 3: Opposition to registration

Under Section 21 of the Act, any person has to file an opposition by filing a notice in writing to the
Registrar with payment of the prescribed fees within four months from the date of the advertisement or
re-advertisement of an application for registration. Thereafter, the Registrar shall serve a copy of the
notice to the applicant, and the applicant should send a counter-statement within two months. The
Registrar should serve a copy of the counter-statement to the person who filed an opposition.

The Section further provides that the Registrar should give the parties the opportunity to be heard if
required, and thereafter will decide whether to provide registration or not.

If the person filing the opposition or the applicant sending a counter-statement does not reside or run
business operations in India, the Registrar should give security for the cost of proceedings and treat the
opposition or application as abandoned.

iv. Step 4: Correction and amendment of the application

Section 22 of the Act provides that before or after acceptance of an application for registration, the
Registrar should permit the correction of any error in the application or permit the amendment of the
application.

However, if the amendment is to be made in connection with the single application under Section 18(2),
involving the division of such application into two or more than two applications, the date of making of
the initial application should be held as the date of making of the divided applications.

v. Step 5: Registration of the application

After completing all the formalities, the registration of the trademark application is the last and final step.
Under Section 23, when an application for registration of a trademark has been accepted and no notice of
opposition was filed or the time for filing notice of opposition has expired or the opposition was decided
in favour of applicant, the Registrar shall register the said trade mark within eighteen months of the filing
of the application if the Central Government makes no objection.
 After registration, a certificate should be issued to the applicant with the seal of the Trade Marks Registry.

If the registration of the trademark is not completed within twelve months of the date of the application
due to the fault of the applicant, the Registrar after serving notice may treat the application as abandoned
if it is not completed within the time specified in the notice.

Under Section 24, the Act also permits the registration of a jointly owned trademark.

vi. Duration and renewal of registration

The registration of a trade mark provides protection for a period of ten years, but the registration may be
renewed from time to time by filing a renewal application with payment of prescribed fees for a period of
ten years from the date of expiration of the original registration or of the last renewal of the registration

Trademark Infringement

 Trademark infringement is the unauthorised usage of a mark that is identical or deceptively

similar to a registered trademark.
 Trademark infringement in India is defined under Section 29 of the Trademarks Act, 1999

What constitutes infringement?

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

a) If the mark in dispute is identical with or deceptively similar to the registered trademark and is in
relation to the same or similar goods or services;

b) If the identical or similar mark can cause confusion in the minds of general public to have an
association with the registered trademark

c) If the registered trademark is used as a part of trade name or business concern for goods and services in
respect of which the trademark is registered

d) If the trademark is advertised and as a result it takes unfair advantage or is contrary to the honest
practices or is detrimental to the distinctive character and reputation of the registered trademark

. e) If the registered trademark is used in the material meant for packaging or labelling of other goods or
as a business paper without due authorization of the registered user.

Types of Infringement

1. Direct infringement

Direct infringement is defined by Section 29 of the Act. There a few elements that have to be met for a
direct breach to occur; they are as follows:

i. Use by an unauthorized person

ii. Identical or deceptively similar
[Link] trademark- The Act extends only to protect trademarks that have been registered with the
trademark registry of India. In the case of breach of an unregistered mark, the common law of passing
off is used to settle disputes. It is a tort law that is used where injury or damage is caused to the
goodwill associated with the activities of another person or group of persons.
iv. Class of goods or services: For the infringement of the trademark, the unauthorized use of the mark has to
be used for the propagation of goods or services that fall under the same class of the registered
trademark.

Section 29 provides that a registered trademark is infringed when a person not being a registered proprietor
or licensee, uses in course of trade:

1. Identity with registered mark & Similarity of goods/ services

A mark which is identical to the registered trademark & there is similarity of the goods or services covered
by the trademark in manner causing confusion to the general public. Or

2. Similarity with registered & Identity of Goods/services

3. Identity with registered mark & Identity of Goods/services- the court will presume that such use will
cause confusion on part of public or

4. Identity with registered mark having reputation

A mark which is identical or similar to the registered trademark having reputation in India, even if such
mark is used in relation to goods or services which are not similar to those for which the trademark is
registered.

5. similarity of trade name with registered trademark

A trade name or part of trade name & such concern is dealing in the goods or services in respect of which
the trademark is registered.

6. Application of registered mark on labeling or packing etc with knowledge that such application is without
authorization.

Applies registered trademark to material intended to be used for labeling, packaging, business paper or
advertisement provided such person when he applied the mark knew or had reasons to believe that the
application of the mark was not duly authorized by the registered user or licensee thereof.

7. Use of registered trademark in advertising , when such use takes unfair advantage, is detrimental or
against the reputation of registered trademark.

Takes unfair advantage of & contrary to honest practices in industrial or commercial matters or

Is detrimental to its distinctive character or

Is against the reputation of the trademark

2. Indirect Infringement
Unlike direct infringement, there is no provision in the Act that deals with indirect infringement specifically.
This does not mean that there is no liability for indirect infringement. The principle and application of
indirect infringement arise from the universal law principle. It holds accountable not only the principal
infringer but also anyone that abets, induces that direct offender to infringe. • There are two types of indirect
infringement:

a. Vicarious liability: According to Section 114 of the Act, if a company commits an offence under this
Act, then the whole company will be liable. Therefore not only the principal infringer but, every person
responsible for the company will be liable for indirect infringement, except for a person who acted in good
faith and without knowledge of the infringement

• The elements for vicarious liability are: –

i. When the person can control the activities of the principal infringer –

ii. When the person knows of the infringement and contributes to it –

iii. When the person may derive financial gains from the infringement

• The only exception to vicarious liability of a company for infringement is when the company has acted in
good faith and had no idea about the infringement

b. Contributory infringement There are three basic elements to contributory infringement:

• When the person knows of the infringement

•When the person materially contributes to the direct infringement

•When the person induces the principal infringer to commit infringement

• In the case of contributory infringement, there is no exception as there exists no chance of the
contributory infringer to act in good faith.

Passing Off Action

 The law of passing off in India is a legal claim recognized under common law. It serves as a crucial
mechanism to safeguard the goodwill associated with unregistered trademarks. Founded on the
principle that one should not unfairly benefit from the efforts of another, passing off enables the
original trademark owner to take action against unauthorized parties who engage in deceptive
practices.
 False representation of goods or using unfair means to obtain business gains is not permitted.
Passing the goods and services by falsely representing them as the goods and services of some
reputed business man or trader is known as passing off.
 Section 27 of the Act recognizes common law rights of the trademark owner to take action against
any person for passing of goods as the goods of another person or as services provided by another
person or remedies thereof
  In the case of Perry vs. Truefitt [1842], the principle of Passing Off was laid down for the first time.
The principle of Passing Off was that no one has the right to represent his goods as the goods of
someone else. The law of Passing Off has changed a lot over the time.

Types of passing off

I. Contributory passing off: Contributory passing off does not involve use of some established trademark or
misrepresentation but it involves assisting or aiding somebody to use the established trademark and pass
off his goods as of some reputed trader. By aiding the false use or misrepresentation the defendant
contributes to the act of passing off.
II. Reverse passing off: In general passing off involves passing the goods as if they belong to a reputed
trader. In case of reverse passing off it involves passing somebody else's goods as his goods. Reverse
passing off is also equally punishable.
III. Passing off in a regular sense: It is passing off in a general sense involving passing off one's goods or
services as belonging to some reputed trader. It is the most common type of passing off involving
misrepresentation and false indication.

What Constitute Passing off

 In Reckitt & Colman v Borden the issue with regard to what constitute passing off was discussed
and it was held that to constitute passing off there must be:

1. established goodwill of a trader

2. Misrepresentation by somebody

3. Damage to the trader

4. Likelihood of deception and confusion among the consumers

 Ervin Warnik B. V. v. J. Townend & Sons (Hull) Ltd. • The five characteristics recognized are:

1. Misrepresentation

2. The act must be made by the defendant in course of trade

3. The prospective or ultimate customers of the plaintiff’s goods and services have been
misrepresented,

4. Such an act of misrepresentation is calculated to injure the business or goodwill of the plaintiff,
and

5. Such act causes actual damage to the business or goodwill of the plaintiff

 Harrods v. Harrodian School • There are three main elements of the tort of passing off which were
also referred as “classical trinity” – • Reputation; • Deception; • Damage

Requirements of Passing off Action in India

  Misrepresentation The plaintiff is required to show false intention or misrepresentation on behalf of the
defendant. In misrepresentation, the defendant tries to make the common public believe that the
products and services provided by the defendant are of the plaintiff. There should be some actual
confusion or deception among the common public.
 Goodwill It should be proved by the plaintiff that the person or the goods and services own some kind of
reputation in the mark used by the other person, and such an act of using an identical or similar mark
will confuse the public with the specific goods or services of the plaintiff.
 Damage In order to stop the infringing party, the offended party is required to prove that he/she has
suffered an actual or reasonable loss of business due to the alleged misrepresentation of the infringing
party. Generally, the loss is difficult to prove and involves the inspection of books of account of both
parties on certain practical grounds. The possibility of loss is sufficient to prove that there is damage to
goodwill of the plaintiff. Hence, the plaintiff is required to prove that the misrepresentation from the
side of the defendant has harmed the goodwill or cause loss to the reputation of the plaintiff.
 in the case of Honda Motors Co. Ltd V Charanjit Singh & Others, wherein Plaintiff was using trademark
"HONDA" in respect of automobiles and power equipments. Defendants started using the mark
"HONDA" for its pressure cookers. Plaintiff bought an action against the defendants for passing of the
business of the plaintiff. It was thus held that the use of the mark "Honda" by the defendants couldn't be
said to be an honest adoption. Its usage by the defendant is likely to cause confusion in the minds of the
public and the injunction was granted for the same.
 In the case of Rupa & Co. Ltd v. Dawn Mills Co. Ltd., the defendant manufactures an underwear which
named dawn as similar to the plaintiff’s manufactured underwear don, which is creating confusion in
the minds of people because the layout, get up and colour combination is same to the plaintiff’s product.
The injunction was granted.
 In Manus v Fulwood, it was held that if the infringement is proved on the establishment of loss suffered
by the trademark owner damages or accounts of profits could be awarded

Remedies available for Infringement & Passing Off

1. Civil Remedies

Section 134 of act provides that district court has jurisdiction

Section 135(1) lists the reliefs, which may be granted to the plaintiff who established his case by the court in
case of infringement and passing off are:

The types of relief to which a plaintiff is entitled are—

(1) An injunction restraining further use of the infringing mark.

(2) Damages or an account of profits.

(3) An order for delivery-up of infringing labels and marks for destruction or erasure

I. Injunction
  An injunction is a judicial process or order restraining a person from continuing with wrongful
act.
 The general rules governing the grant of injunction are contained in sections 36 to 42 of the
Indian Specific Relief Act, 1963 and Order XXXIX Rules.1 & 2 and section 151 (Inherent power
of the Court) of the Code of Civil Procedure, 1908.
 Injunction may be of the following types

a) Anton piller order

 These are ex parte orders to inspect defendant’s premises. A court may grant such an order to the
plaintiff where there is a possibility of the defendant destroying or disposing of the incriminating
material. Such an order is for inspection of the premises of the defendant.
 An ex parte order means an order passed on the application of the plaintiff without giving the
defendant a notice of the application. Such a notice would enable the defendant to tamper with
the evidence of his infringement; hence ex parte order.
 The three conditions requisite for making an order are:
 (1) There must be a strong prima facie case in favour of the plaintiff.
 (2) Such an order if not granted will cause irreparable damage to the applicant for injunction.
 (3) There must be clear evidence that the defendants have in their possession incriminating
documents or things and that there is a real possibility that they may destroy such material if any
notice of application is served.

b) Mareva injunction

 In such an order the Court has power to freeze defendant's assets where there exists a probability
of the assets being dissipated or cancelled so as to make a judgement against him worthless and
un-enforceable.

c) John Doe order

 It is a type of pre-infringement injunction used to safeguard the creator's intellectual property

rights. The Rolling Anton Pillar, Anton Pillar, or Ashok Kumar order is another name for the
John Doe order.
 An injunction order is issued against an unknown defendant, allowing the plaintiff to search and
seize the infringer's premises with the goal of preserving evidence that might be destroyed.
 In Delhi High Court, Taj Television Ltd. & Anr. vs. Rajan Mandal & Ors., The first ex-parte
interim order was issued, allowing the plaintiff to search and seize the equipment and gadgets of
unknown defendants, kicking off the jurisprudence of issuing orders against unknown defendants,
which is known as John Doe's/ Ashok Kumar's order

d) Order give to produce document in court of law

e) Perpetual injunction

 Perpetual injunction is an order restraining the defendant totally, for all times to come, from
doing any act which infringes the rights of the proprietor of the Trade Mark. Perpetual injunction
is generally granted when the suit is finally decided.

II. Damages, Account Of Profits

  The plaintiff in an action for infringement may be granted either damages or an account of profits
but not both. In an account of profits the infringer is required to give up his ill-gotten gains in
favour of the plaintiff whose rights he has infringed.

 In case of damages the defendant has to compensate the plaintiff. The damages may even be more
than the monetary profits reaped by the defendant by the misuse of the plaintiff's mark.

III. An order for delivery-up

 This type of remedy proposes that the Court might ask the violator to deliver all the products or
products that are categorized with the brand name. In such cases, the Court might direct the
authorities to withhold the associated materials accounts and destruct all such products. Where
the trademark relates towards services, that is if a Service Mark has been infringed; the order
might be passed to stop the provision of the services instantly by the violator.

2. Criminal Remedies

The Trade Marks Act,1999 also provides several provisions that could be counted as a criminal remedy
for the infringement of the trademark. The following are:

Sections 103 of the Act states the criminal remedy for the infringement of the trademark of any person or
business which specifies a period of 6 months of imprisonment which could be extended till a time frame
of 3 years for infringing trademark rights.

Section 104 of the Act also states penalties that need to be granted as a sanction against an infringement.
The section lays down a penalty of fifty thousand rupees which could be increased to an extent of two
lakhs in case any person is found to contravene the trademark rights.

Also, the punishment of trademark infringement is also stated in Section 105 of the same Act.

Defenses in case of infringement

 The defendant in the infringement proceedings can have certain defenses. The Trademarks Act
under section 30 to 35 talks about the defenses that are available for the defendant in the
infringement proceedings. The defendant can claim against the leveled infringement action by the
trademark owner. There are various grounds on the basis of which the defendant can counter
claim against the alleged infringement. These grounds form the defenses for the defendant. The
following are the grounds of defense:

1. Fair use of the mark : - If the use of mark is permitted under the Act it amounts to fair use of the
protected mark. Fair use could be for study or research or for any non-commercial purpose. Fair use or
permitted use of the mark is a valid defense in the infringement proceedings.

2. Generic mark: If the protected mark has become generic or common in the course of trade and
commerce, it would be a valid ground of defense in infringement proceedings. On generic marks or
 marks which are commonly used in trade one cannot have monopoly and therefore, the question of
infringement does not arise

3. Prior use of the trademark :If the defendant in the infringement proceedings is a prior user of the
registered trademark, the same would be a valid defense for the defendant

4. Concurrent registration of trademark: If the defendant has concurrently registered the trademark
which is being registered by the petitioner, the defendant also being the registered owner of the mark
can claim against the infringement proceedings.

5. Invalid registration: The defendant can counterclaim invalidity of the registration of the trademark. At
the same time, revocation of the registration can also be claimed by the defendant. If the registration of
trademark of the petitioner in the infringement proceedings is invalid or if the same is revocable it
would be a valid defense in infringement proceedings.

6. Use is with the consent of the owner of the trademark : Use of the mark with the consent of the owner
would be a valid defense. If the defendant has obtained the consent of the owner before using the mark,
later the owner cannot claim infringement of the trademark.

7. The use is bona fide use of the defendants own name: Everybody would have natural and bona fide
right to use their personal name in their business. Bona fide use of personal name could be a valid
defense in infringement proceedings.

8. Defendant is innocent and unaware of the registration by the proprietor: Innocent use of a registered
trademark without any knowledge about the registration of the mark could be a valid defense. Here,
innocence shall be proved and established before the court of law

9. Alleged act is not infringement: If the alleged act does not amount to violation of the rights of the owner
the same could be a valid defense. However, the same shall be proven and established beyond doubt by
the defendant

10. The plaintiff is not entitled to file the suit: The owner or user of the trademark sometimes becomes
ineligible to institute infringement proceedings. There are certain reasons why the petitioner becomes
ineligible or not entitled to file suit for infringement, which are as follows:

● The owner is not using the trademark

 ● The petitioner is not authorized by the owner eligible to file the suit

● His conduct amounts waiver of his rights

The owner of a trademark may lose the proprietorship over a trademark by non-use. Continuous non-
use for 5 years makes a registered trademark owner lose proprietorship, since the trademark is protected
on the basis of use.

Assignment And Transmission

 Assignment and transmission of trademarks in India are governed by the Trade Marks Act, 1999,
and the Trade Marks Rules, 2017. Section 2(b) “assignment” means an assignment in writing by
act of the parties concerned; Section 2 (zc) “transmission” means transmission by operation of
law, devolution on the personal representative of a deceased person and any other mode of
transfer, not being an assignment.

 Section 38 provides for Assignment and transmission of a registered trademark.

 Section 39 provides for Assignment and transmission of a unregistered trademark

Types of assignment and transmission

 Complete Assignment and Transmission: It means the transfer of all rights including rights to
further transfer, rights to royalties, etc from one individual to another

 Partial Assignment: It means the transfer of ownership specified or restricted to certain services
or products

Eg., For example, A, owner of a tea and a biscuit brand, transfers proprietary rights only with
respect to the tea brand and retains the rights over the biscuit brand, this is said to be a partial
assignment.

 Assignment with goodwill: It means to transfer and assignment of the trademark with all the
rights and values associated with the trademark from one person to another.
 Eg., Vijaya Karnataka- Vijay Sankeshwar- Times Group MTR- the packaged foods business of
MTR Foods- Sadanand Maiya- Orkla Group.

 Assignment without goodwill

• This is an assignment where the owner restricts the assignee not to use trademark of the assignor for
the products he produces. That is, the goodwill attached to the owner’s brand with respect to the
product already being sold under such brand, is not transferred to the buyer. This means that assignor
& assignee both can use the same trademark but in dissimilar goods or services.

• Such assignment also referred to as gross assignment, is where the owner of the brand restricts the
right of the buyer and does not allow him to use such brand for the products being used by the
original owner

Restrictions on assignment

 Section 40 and 41 of the Act imposes certain restrictions on the Assignment and Transmission of
the Trademark where there is a possibility of creation of confusion among users or public.

1. Restriction on assignment or transmission where multiple exclusive rights would be created.

2. Restriction on assignment or Transmission where exclusive rights would be created in different

parts of India

Conditions for assignment and transmission as given in section 42

Section 42 of the Trademark Act describes Conditions for Assignment and Transmission of a Trademark
otherwise than in connection with the goodwill of a business. It states that assignment and transmission of
the trademark otherwise than in connection with goodwill will not take effect until and unless assignee
apply to the registrar concerning the directions for the advisement of the assignment and advertises it in
such form and manner and within such period as the Registrar may direct but not later than 6 months of
which the assignment is made or after an extended period of 3 months if registrar allows for it.
 Unit – 3

 Copyright is a unique kind of intellectual property. The right which a person acquires in a work,
which is the result of his intellectual labour, is called his copyright.

 The primary function of a copyright law is to protect the fruits of a man’s work, labour, skill or
test from being taken away by other people.

 It is universal right- without formal registration procedures also one can get copyright protection
in all the member countries of Berne Union

 The word ‘copyright’ is derived from the expression ‘copier of words’ first used in the context,
according to Oxford Dictionary, in 1586. The word ‘copy’ is presumed to date back to circa
(approximate date) 1485 AD and was used to connote a manuscript or other matter prepared for
printing.

 Section 14 The statutory definition of copyright means the exclusive right to do or authorise
other(s) to do certain acts in relation to—

1. literary, dramatic or musical works

2. artistic work;

3, cinematograph film; and

4. sound recording.
Basic requirements of Copyright.

1. Expression not idea

 Idea-Expression Dichotomy means that ideas per se are not protectable under copyright laws, but
expressions of these ideas are.

 the primary reason being that otherwise, it would result in providing an undue scope of monopoly to the
copyright holder and would amount to anti-competitive practice

 Section 13 of Indian Copyright Act-1957 speaks about “works” in which copyright subsists. It protects
only expression and not idea

 Examples of Idea-Expression Dichotomy:

If a film based on a gangster from Mumbai is made, it does not prevent other filmmakers from making a
film having a similar plot. Recently, in India, Scam 1992 (directed by Hansal Mehta, starring Pratik
Gandhi) and The Big Bull (directed by Kookie Gulati, starring Abhishek Bachchan) were released. Both
the motion pictures were based on Harshad Mehta’s story. Even though the idea/plot of these films was
similar, their expressions were unique.

 Baker v. Selden, which concerned the copyright over an account book. Selden had written a book which
described an improved system of book keeping by a particular arrangement of columns and headings
which made the ledger book easier to read. Baker accomplished a similar result, but using a different
means of arrangement of columns and headings. The court held that while a copyright may exist over
the publishing and sale of a book, it does not extend to the ideas and “art” illustrated in the book

 In [Link] v. Deluxe Films9 is the only Supreme Court decision that seems to have given some
credence to idea expression dichotomy. That case dealt with the alleged infringement of the script of a
play, arising from the adaption of the same into a cinematograph film. The main theme of the play was
provincialism, where the plot involved persons belonging to different provinces (Punjab and Tamil
Nadu). The film retained the same theme, simply reversing the gender of the person originating of the
above provinces. The Court first compared the play and the movie from a broad perspective and opined
that the film’s theme was broader in scope, covering both provincialism and dowry. In concluding that
 infringement was no established, the Court held that copyright can not be acquired over an idea (the
idea being provincialism in this case), and factually held that the dissimilarities between the two works
was substantial enough for one to conclude that there was no colourable imitation of his play’s script.
Being a Supreme Court decision, the principles established in this case form part of the law of the land
and holds good even today.

 Test laid in this case

 Firstly, ideas, themes, historical facts and subject matter cannot be copyrighted but the ways/
expressions in which those ideas are manifested can claim copyright.

 Secondly, if the idea is the same then the court will have to determine these similarities. They will
have to check whether the similarity between the works is substantial or not and whether a
reasonable or a prudent man (substantial similarity test) would find those works similar or not
(average viewers’ test)

 Lastly, if only ideas are the same and the expression is totally different then there is no question
of infringement

2. Original Expression not Original ideas

 Sec 13 (1) (a) of the Copyright Act-1957, “Original literary, dramatic, musical and artistic works”.

 Originality is the aspect of a created or invented work that makes it new or novel,

 In University of London Press v. University Tutorial Press Ltd ., The plaintiff published a compilation of
examination papers of the University of London, with the consent of the University and the examiners
who had set the papers. The defendant induced some students of University of London to hand over
copies of their mathematics exam papers, and published its own compilation, together with answers and
criticism. The plaintiff sued the defendant for copyright infringement. Under the Copyright Act, only
“original” literary works were protected; so the defendant argued that the exam papers lacked originality
and so could be free copied by all. The court rejected this argument and held: "The word 'original' does
not in this connection mean that the work must be the expression of original or inventive thought, and,
in the case of 'literary work', with the expression of thought in print or writing. The originality which is
required relates to the expression of thought.“
  It is clearly stated here that the originality required by the law is not that of revolutionary new ideas but
of the way that the thought is expressed.

 In Ladbroke (Football) Ltd v. William Hill (Football) Ltd ., The plaintiff devised a popular football
betting coupon. The defendant copied the format and bets from the plaintiff’s coupon, but gave some
bets new names and worked out the odds independently. The plaintiff sued for copyright infringement
of its work as a compilation. The defendant denied that the plaintiff’s work was “original”. The House
of Lords commenting on the ‘vast amount of skill, judgement, experience and work’ that had gone into
creating the betting coupon, confirmed that the work was protected by copyright and that Ladbroke had
infringed that copyright.

 Anil Gupta v. Kunal Dasgupta – Swayamvar- Shub vivah

 Barbara Taylor Bradford v. Sahara Media Entertainment Ltd.- miracle of destiny – Kashrima .

 Pepsico Inc. v. Hindustan Cococola Advertising slogans like YEH DIL MANGE MORE are not
protectable under copyright law

 The Copyright Act expressly recognizes copyright in derivative works, but this right covers only the
original contribution of the author who prepares the derivative work, and does not extend to any portion
of the underlying work upon which it is based.

Test to find originality

1. Sweat of the Brow Test

 This test was originally propounded in University London Press v. University Tutorial Press, which
conferred copyrights on work merely because time, energy, skill and labour were spent (ie,
originality of skill and labour)

 In Burlington Home Shopping Co. v Rajnish Chibber The plaintiff in this case, Burlington Home
Shopping Pvt. Ltd.,was a mail order service company. The defendant was a former employee of the
company, who after leaving the company started another similar business, utilising the plaintiff’s
database of contacts. The contention in this case was whether the database of contacts constituted
an “original literary work”, and whether it consequently could possess a copyright. The Court held
“A compilation of addresses developed by anyone by devoting time, money, labour and skill
 though the source may be commonly situated amounts to a ‘literary work’ wherein the author has a
copyright.” Other than this, client lists as databases are also protected under the law relating to
confidential information and trade secrets.

Modicum of Creativity

 this approach was developed by the U.S. Courts through Feist Publications Inc. v. Rural Telephone
Service Co. , the defendant copied the telephone diary of plaintiffs company but add a new area only

 it acknowledges that not every effort or industry, or expending of skill, results in copyrightable work, but
only those activities which create works that are somewhat different in character, involve some
intellectual effort, and involve a certain degree of creativity. According to this test, for a work to be
original and copyrightable, it should contain a ‘minimal degree of creativity.

2. Skill and Judgement Test

 This test provides for the Indian approach to determine whether the ‘work’ in question is ‘original
work’ or not

 Thus, it is observed that India adopts a middle path between the two extreme approaches i.e. the
U.K. approach (sweat of the brow doctrine) and U.S. approach (modicum of creativity)

 In Eastern Book Company and Others v. D.B. Modak & Anr., The Supreme Court Case reporter,
was aggrieved by other parties infringing their copyright and launching software containing the
judgements edited by SCC along with other additions made by the editors of SCC like cross
references, head notes, the short notes comprising of lead words and the long note which comprises
of a brief description of the facts and relevant extract from the judgments of the court and
standardization and formatting of text, etc. The question raised before the Court was whether the
work of law reporters infringes the copyright of the judgements delivered by Courts in India , it was
held that there was no originality of expression of the idea

3. Doctrine Of “Merger

 where the idea and expression are intrinsically connected, and that the expression is
indistinguishable from the idea, copyright protection cannot be granted
  On certain occasions, there may just be one way to express an idea. In such cases, as per this
doctrine of merger, the idea and its expression are said to be ‘merged’ and the work cannot be
copyrightable

 In Chancellor Masters of Oxford v. Narendra Publishing House., The question before the Court
was whether guide books, comprising of the answers of mathematical questions provided in the
plaintiff`s book, published by the defendant would constitute copyright infringement. The Court
while applying the test of originality as held in EBC case, held that such publication of guide
books would not constitute copyright infringement. The Supreme Court of India reasoned that
mathematical questions are expressions of laws of nature. Since language is a limited medium,
such laws of nature can be expressed only in a few ways. Hence extension of copyright protection
for questions would deny access to ideas that they encompass. This would obviate one of the
primary objectives of copyright law i.e, promotion of creativity. For these reasons, the Court held
that copyright could not be extended to the questions.

4. Doctrine of Scène à faire

 Scène à faire is a French term which means "scene to be made" or "scene that must be done". It is a
concept in Copyright Law which holds that certain works of a creative work are held to be not
protectable because they are mandated by or are customary to a particular genre.

 There are sometimes specific conditions when there is no other way to present an idea but only by
using certain fixed elements then those elements are identified by the term "scenes à faire"

 In Schwartz v. Universal Pictures Co., Two scenarios wish to treat the unprotected idea of police
life in the South Bronx, for each it will be only natural to depict" drinks, prostitutes, vermin and
derelict cars", juxtaposed against hard drinking Irish cops chasing fleeing criminals. The court
concluded such incidents" scenes a faire" i.e., "scenes which 'must' be done.

3. Fixation

 The ideas must be fixed in some tangible medium of expression and it should be in a permanent form.

 Fixation is one of the prerequisites of subsistence, that a work must be in a recorded or "material" form in
order for protection under copyright laws.
  Berne Convention- Article 2 (1):- It shall be a matter for legislation in the countries of the Union to
prescribe that works in general or any specified categories of works shall not be protected unless they
have been fixed in some material form.

 In Walter v. Lane .,Plaintiff’s (Reporters) from ‘The Time Newspaper’ took down shorthand notes of a
series of speeches given by the ‘Defendant’ and later transcribed them, adding punctuation, corrections
and revisions to reproduce verbatim (in the exact words) speeches. These were then published in The
times. The Respondent in the case published a book including these speeches, taken substantially from
the reports of those speeches in The Times. The question before the court was whether the reporters of
the speech could be considered "authors" under the terms of the Literary Copyright Act. It was held that
a journalist who transcribed a public speech was entitled to copyright in his record of that speech.

Fair Use

 The rights given to the Copyright Owner are not absolute.

 Use of Copyrighted material without authorization does not amounts to infringement in some cases. This
is called as the doctrine of ‘Fair Use’.

 Doctrine of Fair Use tries to achieve a socially optimal level of protection to provide the rightful owner
his due while leaving the public with sufficient information vital for the progress of the society.

 Global view of Fair dealing

 In US ., Section 107 also sets out four factors to be considered in determining whether or not a particular
use is fair: ◦ The purpose and character of the use, including whether such use is of commercial nature
or is for nonprofit educational purposes ◦ The nature of the copyrighted work ◦ The amount and
substantiality of the portion used in relation to the copyrighted work as a whole ◦ The effect of the use
upon the potential market for, or value of, the copyrighted work

 Berne Convention: 1886, Art 10 (1) It is permissible to make quotations from a work which has already
been lawfully made available to the public, provided that their making is compatible with fair practice.

 Section 52(1) of Copyright Act-1957 Fair dealing with literary, dramatic, musical or artistic work for the
following purposes does not constitute infringement:
 i. Any kind of private use - research is considered in the same category as personal and private use if
not exploited commercially.

ii. Noted purpose of criticism or review of the works or any otherwork.

iii. Reporting current events in newspapers, magazine, periodical,broadcast, cinematograph or

photograph.

iv. Making the copies in adaptation of a computer program by the lawful possessor of a copy of such
computer program.

v. The reproduction of work for the purpose of judicial proceeding or for purpose of a report of a
judicial proceeding.

vi. The reproduction of work in any work prepared by the Secretariat of a Legislature, exclusively for
the use of the members of the Legislature.

vii. The reproduction of the work in the certified copy to be used as per requirement of Law or Rule of
the country. T

viii. he reading or recitation in public for non-commercial use.

ix. The publication in a collection, where the collection is intended for use of educational institutions.

x. The reproduction of a work by a teacher or a pupil in the course of instruction, or as part of

questions or answers in an Examination or in the course of activities of an educational institution or
published to a non-paying audience or for the Benefit of a religious institution

xi. The reproduction of a work for use in public library (not more than 3 copies) if not available for sale
in India.

xii. The making of an ephemeral recording by a broadcasting organization under some condition.

xiii. the causing of a recording to be heard in public by utilising it,-

 (i) in an enclosed room or hall meant for the common use of residents in any residential premises
(not being a hotel or similar commercial establishment) as part of the amenities provided
exclusively or mainly for residents therein; or

(ii) as part of the activities of a club or similar organisation which is not established or conducted
for profit;

(iii) as part of the activities of a club, society or other organisation which is not established or
conducted for profit;

Research and Private Study

 The rationale for this defence lies in the belief that research and study is necessary to generate new works.
It also recognizes that non-commercial research and study does not normally interfere with the
incentives and rewards that copyright provides to creators and owners. In effect, the defence helps to
achieve copyright’s goal of maximizing theproduction of work

 In Romesh Chowdhry and Others v. Kh. Ali Mohamad Nowsheri and Others ., Publishing notes on
original books namely, Modern English Prose, Foot Hills, Gathering Buds etc. (including certain
quotations from them) that serve as a guide to the students to understand the books - Filed criminal
complaint under section 63 of the Act by Asst. Registrar,Ali Mohd. - no colourable imitation for profit -
in the nature of review of original books - title of notes clearly shows that it’s a guide - quotations given
to help explain their significance - Court held no infringement.

 In The Chancellor, Masters & Scholars of the University of Oxford and Ors. v. Rameshwari Photocopy
Services and Ors – Photocopie case

Parodies , Criticisms, commentaries

 Parody as an infringement to copyright is a significant concern.

 Criticism, parody, research and satire are integral parts of fair use and fair dealing. They are justified
because they promote freedom of speech and expression.

 Commentaries and criticism use the text of copyrighted material and provide a review.
  A criticism discusses the merits and demerits of work. It is not limited only to the literary style, but
also the doctrine, philosophies and ideals.

 Parodies fall within the broader framework of criticisms.

 A parody is ahumorous piece of writing or drama, which imitates the writing style of a particular artist.
It critically comments on existing work to expose its flaws. Parody criticises an individual piece of
work; satire is a critique of society

 Civic Chandran v Ammini Amma., The Court heavily relied on the case Hubbard v Vosper and laid
down the following three guidelines to determine whether taking from the source amounted to
infringement or was protected by fair dealing: (1) the quantum and value of the matter taken in relation
to the comments or criticism; (2) the purpose for which it is taken; (3) the likelihood of competition
between the two work

 Super cassette Industries v Nirulas Corner House (P) Ltd- using of music in hotel

 Super Cassettes Industries Ltd v. Hamar Television Network Private Ltd – plaintiff used the work T
series in there tv channel without permission amounts to infringement

 Academy of General Education, Manipal and Others v. B. Malini Mallya- ., A news item published in
“Vijay Karnataka” News paper dated 19.9.2001 revealed that the Yakshagana Ballet directed by Dr.
Karanth was performed at New Delhi., Dr. Karanth evolved a new distinctive dance, drama troop or
theoretical system which was named by him as “Yaksha Ranga” which in his own words mean
“creative extension of traditional Yakshagana”. Dr. Karanth apart from bringing in changes in the
traditional form of Yakshagana on all those aspects viz., Raga, Tala, scenic arrangement, costumes
etc., and also composed 7 verses or prasangas for stagingYakshagana Ballet.

 India TV Independent News Services Pvt. Ltd v Yashraj Films Private Limited ., The issue of dispute
was a TV Show broadcasted by India TV wherein documentaries were shown on the life of singers and
they would sing their own songs. While they sang, movie clips of scenes would be shown in the
background. The plaintiffs contented that this was an infringement of their copyright.

Subject Matter of Copyright – S.13

1. Literary work
  Literary work includes all those works, which are in print or written form. It also includes computer
programs, software and databases. For instance, novels, stories, poems, poetry, prose, lyrics are
considered as literary work.

 A database is an accumulation of information stored in such a way that it can be systematically

searched and retrieved by computer.

 Abridgement of literary work “An abridgement of a literary work, is entitled to copy right if it is
new and original and the author has bestowed sufficient skill and labour upon it.” - Macmillan &
Co. v. Cooper.

 Translation A translation of a literary work is itself a literary work and is entitled to copyright
protection

2. Dramatic work

 A dramatic work includes any piece of recitation, choreographic work or entertainment in dumb
show, the scenic arrangement or acting form of which is fixed in writing or otherwise, but does not
include a cinematograph film. [section 2(h)

 Further, "Choreography" which is the art of arranging or designing ballet or stage dance in symbolic
language is a form of dramatic work. In order to qualify for copyright protection choreography must
be reduced to writing usually in the form of some notation and notes. Scenic arrangement or acting
form must be fixed in writing or otherwise

3. Musical Works

 It means: “a work consisting of music & includes any graphical notation of such work, but does not
include an words or any action, intended to be sung, spoken or performed with the music.” [Section
2(p)]

 the composer alone has copyright in a musical work. The singer has none.

 Singer has performer’s rights after 1994 Amendment.

4. Artistic work means: Section 2(c)

  A painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a
photograph, whether or not any such work possesses artistic quality;

 A work of architecture, and

 Any other work of artistic craftsmanship

5. Cinematographic films

 Cinematograph film" means any work of visual recording on any medium produced through a
process from which a moving image may be produced by any means and includes a sound
recording accompanying such visual recording and cinematograph shall be construed as including
any work produced by any process analogous to cinematography including video films.

6. Sound Recording

 Sound recording means a recording of sounds from which such sounds may be produced
regardless of the medium on which such recording is made or the method by which the sounds
are reproduced. section 2(xx

Author & Ownership

 Section 2 (d) defines “author” as and means, —

● in relation to a literary or dramatic work, the author of the work;

● in relation to a musical work, the composer;

● in relation to an artistic work other than a photograph, the artist;

● in relation to a photograph, the person taking the photograph;

● in relation to a cinematograph film or sound recording, the producer; and

● in relation to any literary, dramatic, musical or artistic work which is computer-generated, the
person who causes the work to be created;
 the Copyright Act under section 17 (Chapter: IV) talks about the ownership of copyright. In case
of literary, dramatic or artistic works, the author is regarded as its first owner. However if such
work is made in course of employment in a newspaper, magazine or similar periodical under a
contract of service or apprenticeship, and which is made for the purpose of its publication in the
said newspaper, magazine, etc., then the ownership of it lies with the proprietor in absence of a
contrary agreement.

 In V.T. Thomas v. Malayala Manorama- Cartoon case

 It is important to remember that an author may create a work when he is working under a contract
or when he is not under any contractual obligation to anybody. In the case of a contract, it could
be in the form of a contract of service or a contract for service.

 In a contract of service, the employer directs and controls the time, and the way; the employee
would work and deliver the work.

 In the contract for service, a person is hired to do a certain work but left free to decide on the
course of action and the way to work in order to deliver the work.

 In a contract of service, the employer is the first owner of the copyright; in a contract for service,
the copyright vests in the creator of the work

 S. 17 (b) In case of a photograph, a painting or a portrait or an engraving or a cinematograph film,

which is made at the instance of another, for a valuable consideration, the person at whose
instance it is made will have its ownership, in absence of any contrary agreement

 17(cc) If the subject matter of copyright is a speech delivered or an address made in public, one
who delivers it will have the copyright over it. However, if one on behalf of another delivers the
work, the person on whose behalf it is delivered, delivers it will be its owner.

 17(d) Government Work: In the case of Government, the Government in the absence of any
agreement to the contrary, will be the first owner of copyright.

 17(dd) Work made on behalf of a public undertaking: In the case of a work first made and
published by or under the direction or control of any public undertaking will, in the absence of
any agreement to the contrary will be the first owner of the copyright therein.
  17(e) Works of certain international organisations : s.41 In such cases the international
organisation concerned will be the first owner of the copyright.

 In a computer program is made by an employee during the course of employment, then

ownership of that computer program rests with the employer, subject to the agreement to the
contrary.

 But for everything made by employee during course of employment, the employer may not
necessarily own copyright in that.

 For ex: if the employee creates a program which helps in his work but the designation of the
creator was not computer programmer, and his task did not include making computer program. In
such cases, employer will not have ownership

 Whereas the computer program was created outside the normal courses of his duties but
employee used employer’s equipment to make that program, then employer will be the owner of
that computer’s program copyright.

 Najma Heptulla [Link] longman Ltd- The question before the Court was whether a person who
gives form to the narration will become the joint author of the book India Wins freedom’., Court
concluded that the work “India Wins Freedom” was the product of the active and close
intellectual collaboration between Maulana Azad and Humayun Kabir in pursuance of pre-
concerted joint design between the two that Azad would contribute the material for the book, and
kabir will write the same in English. Such a work could neither be regarded as sole creation of
either one of them, but as the work of Joint Authorship

 Gee Pee Film Pvt Ltd v. Pratik Chowdhary and others- Plaintiff paid all the expenses for music &
claimed to be producer ., the held that it not only financial responsibility but Legal responsibility

 Ramesh Sippy v. Shaan Ranjeet Uttamsingh - The court held that the “cinematography is not an
original work of composition” of one person. Rather, it is a work of collective efforts that are
joined by the “entrepreneurship thread’ of the producer.

Rights of the copyright Owner.

 The Copyright Act, 1957 provides both economic and moral rights to authors.

 Economic rights are those rights which help the author to commercially exploit his creation

 while moral rights are those rights which relate to protection of personality of the author and integrity of
this work, and similar matters.

 These rights have been recognized by the Berne Convention, 1886, the TRIPS and various domestic laws.
On the other hand Moral Rights of the author are those rights which help the author to protect his image
and reputation under the TRIPs Agreement brought a notable difference that the Member States do not
have any obligation to protect moral rights of authors; the obligation is confined to economic rights as
per Article 9 of TRIPS.

 The economic rights of the author are enumerated in Section 14, mainly, and the moral rights are
provided via Section 57 of the Copyright Act, 1957.

1. Economic Rights of the copyright Owner.

a) Right of Reproduction

 In all types of work, i.e., literary, dramatic, musical, artistic, cinematograph film and sound
recording, the exclusive right to reproduce the work is with the author. Though the Copyright Act
has recognized this right in all types of work, the terminology used is different and so is the ambit
of the right

 It was held by the House of Lords in Ladbroke Ltd v William Hill Ltd that reproduction means
copying, and does not include cases where an author or compiler produces a substantially similar
result by independent work without copying.

 Under the Act, the right to reproduction of literary work also includes storing it in electronic
form. This essentially means that storing into a computer or compact disk will amount to
reproduction, even though the copy is in a different form when compared with the original.- MAI
Systems Corp v Peak Computers Inc

b) Right of Distribution
  Apart from the right to reproduce the work, the author is also vested with the right to distribute
the work. It is the right to put copies of the copyrighted work into the commercial market i.e. it
relates to the control over dissemination of actual physical copies of the work. The scope and
extent of this right is not uniform i.e. it differs with the work. Once copies are in circulation the
right no longer exists i.e. the right gets exhausted. Exhaustion can be of three types:

 ● National exhaustion- where the author loses the right to control the re-sale of the product in
that particular nation.

 ● Regional exhaustion- where the author loses the right to control re-sale of the product over a
specified region but can exercise such right beyond such region.

 ● International exhaustion- where the author loses the right to control re-sale of the product
anywhere in the world after the first authorized sale. The exhaustion principle gives rise to what
is commonly called as 'parallel imports

 In Penguin Books Limited v India Book Distributors and others- the plaintiff had 23 copyrighted
work they were imported from American to India by defendant & sold held infringement.

c) Right to Communicate Work to the Public

 The right to communicate his work to the public is the exclusive right to do this vest with the
author, irrespective of the nature of the work.

 Change in technology has brought change to the nature of communication and also to the notion
of 'public'. This has enabled basically three kinds of communication, such being public
performance, being carried on in the presence of an audience, transmission through cable network
and also wireless broad casting. Meaning of the words 'communication' and 'public'.:

 The Section 2 (ff) of the Copyright Act, 1957 has defined the term 'Communication to Public' to
mean making the work available to the public for their enjoyment, irrespective of whether they
actually enjoy it. The Act has specifically provided that communication through satellite and
other cable means will also come within the purview of communication to public

 Garware Plastics and Polyester Ltd, and others v M/s Telelink and other – movie telecast through
cable network held infringement
 d) Right to make Derivative Works

 The copyright owner has the right to use his work in various ways, for instance making
adaptations or translations.

 One example of adaptation is making a movie based on a novel, here to make any derivative
work the consent of the owner is mandatorily required. In these situations, certain other rights of
the owner also come into play, like the right to integrity which protects the owner against
deformation, defacement or modification of his work in a way that is harmful for his reputation.

e) Right to Publicly Perform

 The owner of the copyright has the right to publicly perform his works. Example, he may perform
dramas based on his work or may perform at concerts, etc. This also includes the right of the
owner to broadcast his work. This includes the right of the owner to make his work accessible to
the public on the internet. This empowers the owner to decide the terms and conditions to access
his work.

2. Moral Rights

 Section 57 of the Act defines the two basic "moral rights" of an author. These are: The right of
paternity, and Right of integrity.

 The right of paternity refers to the right of an author to claim authorship of work and a right to
prevent all others from claiming authorship of his work.

 The right of integrity empowers the author to prevent distortion, mutilation or other alterations of
his work, or any other action in relation to said work, which would be prejudicial to his honour or
reputation

1. The Right of Attribution ("Paternity")

 The right of attribution also referred to as the right of paternity, is "the right of authors to claim
authorship of their works." It aims to determine "whether and how the author's name shall be
affixed to the work."

 It establishes three separate but related protections.

 1. First, it is an author's right to be "made known to the public as the creator of the work." If the
author so desires, his or her name must appear on all copies as well as advertising and other
publicity for the work.

2. Second, that an author can "prevent others from usurping his or her work by naming another
person as the author.? This allows the author to prevent plagiarism of the work.

3. Finally, an author can "prevent others from wrongfully attributing to him or her a work he or
she has not written. This protects the author from false attribution of authorship and from being
named as the author of a work that has been mutilated.

2. Right To Integrity

 The right of integrity has been called "the most important moral right." The notion of the right to
integrity is that since "the work of art is an expression of the artist's personality so distortion,
dismemberment or misrepresentation of the work mistreats an expression of the artist's
personality, affects his artistic identity, personality, and honor, and thus impairs a legally
protected personality interest.!"

 The right provides authors with a right to "prohibit modifications of their works without their
consent" regardless of whether "the modification would negatively impact or objectively improve
the work.

 Mannu Bhandari v. Kala Vikas Pictures (P) Ltd- The defendant had produced the motion picture
Samay Ki Dhara under assignment of filming rights of the plaintiff’s novel Aap Ka Bunty , there
was change in the title & change in ending & characters were also added so it was violation of
section 57.

 Amar Nath Sehgal v. Union of India & Anr- Mr. Amar Nath Sehgal is the world-renowned
sculpturist and has been conferred with several awards for his beautiful creations and contribution
to the Indian heritage. In the year 1957, the Government of India commissioned Mr. Sehgal for
the creating bronze mural for the most prominent International Convention Hall in the Capital of
the Country, after some years it was throw in store room & he filed it is violation of Section 57/
right to integrity.

Neighboring Rights/ Related Rights

 Neighboring rights (also called related rights) protect the rights of performers, producers of
phonograms (sound recordings), and broadcasting organizations. Phonograms are sound recordings
such as audiotapes, records, or music CDs.

 Protection of neighboring rights The expression of neighbor rights means copyright related rights such
as the rights of performing artists in their performance; the rights of producers of phonogram in their
phonograms' and right of broadcasting organizations in their radio and television broadcasts.

 The Copyright Act, 1957 apart from protecting the rights the owners of the copyright also provides for
the protection of allied or neighboring rights such as broadcasting organizations rights and performer's
rights. These rights are the special types of copyrights which are granted to the broadcasters and
performers.

1. Broadcaster's rights (Section 37)

 The Broadcasting Organization is conferred with certain special right known as "Broadcast
Reproduction Right" with respect to its broadcasts, for a term of twenty- five years, from the
beginning of the calendar year following the year in which the broadcast is made. The Broadcast
Reproduction Right includes the following rights.

 Broadcasting and rebroadcasting the broadcast;

 Causing the broadcast to be heard or seen by the public on payment of any charges; or

 Making any sound recording or visual recording of the broadcast; or

 Making any reproduction of such sound recording or visual recording where such initial
recording was done without license or, where it was licensed, for any purpose not
envisaged by such license; or

 Selling or hires to the public, or offers for such sale or hire, any such sound recording or
visual recording.

2. Performer's rights (section 38)

  The WIPO treaty on performers protects certain "related rights" which are the rights of the
performers and producers of phonograms. The Indian Copyright Law is also structured to the tune
of recognizing the rights of the performers

 The term "Performer" includes an actor, singer, musician, dancer, acrobat, juggler, conjurer,
snake charmer, a person delivering a lecture or any other person who makes a performance. The
term for the subsistence of the performer's right is twenty-five years from the beginning of the
calendar year following the year in which the performance is made. Under the Copyright Act the
performer will have the following right:

 Making a sound recording or visual recording of the performance;

 Reproduction of such sound recording or visual recording;

 Broadcasting of the performance; and

 Communication of the performance

Moral rights of the performers (section 38 B)

 The performer of a performance shall, independently of his right after assignment, either wholly
or partially of his rights, have the right to restrain or claim damages in respect of any distortion,
mutilation or other modification of his performance that would be prejudicial to his reputation'.

 Performers can have his or her view heard before the performance is finalized and let for the use
and screening before the audience. The other rights recognized there under ensures that a
performer would have the right to claim to be identified as the performer of his performance
except where omission is dictated by the manner of the use of the performance.

 This would ensure that the actual performer is duly acknowledged for the work or performance.
"Moral Rights" intended to be accorded to performers, and are analogous to the "Moral Rights"
which are accorded to the authors of works protected by copyright both are offered protection.

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

 Copyright infringement can be primary or secondary. In case of primary infringement, the infringer
copies the original work without the owner's authorization. Secondary infringement covers
unauthorized dealings such as selling of infringing copies of the work, etc.

 Section 51 Provides A person without obtaining the permission of the copyright holder does any act
which only the copyright holder is authorized to do.
 A person permits the place to be used for communication, selling, distribution or exhibition of an
infringing work unless he was not aware or has no reason to believe that such permission will
result in the violation of copyright.
 A person imports infringing copies of a work
 A person without obtaining the authority from the copyright holder reproduces his work in any
form.
 In V. Govindan v. Gopalakrishna - The plaintiff had published an English Tamil dictionary. the
defendant had subsequently published another English-Tamil dictionary. the plaintiff sued the
defendant alleging that the copyright in his work had been infringed by the defendant.

Ways of Committing Infringement

1. Direct Copying

Primary infringement & Secondary Infringement

2. Indirect Copying

3. Subconscious Copying

Primary Infringement

 Primary infringement refers to the real act of copying the work of the copyright holder. Sometimes a
person may only copy a part of the work, for example, a paragraph of an article. In such a case, the
copyright holder is required to establish two things:

 Substantial Taking A copyright is infringed only when an unauthorized person copies a substantial part
of the work. For example, copying a catchy phrase of a lyricist. While deciding the case, the court also
tries to conceive how an ordinary person will perceive the work. If an ordinary person will perceive
 that the work is copied from a different source then it will be considered infringement. If the writing
style, language and errors are similar to the copyrighted work then it will serve as evidence of copying
in a court of law. The minor alterations made by the person in the work of a copyright holder will not
affect the claim of infringement.

 Matters to be taken into account as to substantial copying

 Brooke Bond v. Balaji [1990] ● The volume of the material taken, bearing in mind that quality is more
important than quantity. ● How much of such material is the subject-matter of copyright & how much
is not. ● Whether there has been an animus furandi on the part of the defendant, equivalent to an
intention on the part of the defendant to take for the purpose of saving himself labour. ● The extent to
which the plaintiff's and defendant's books are competing works.

Secondary Infringement

Secondary Infringement refers to the infringement of copyright work without actually copying it. This can
happen in the following ways:

● Providing a place for Copyright Infringement: If a person provides the place or permits the place (for
profit) to be used for communicating of the work to the public and such work amounts to copyright
infringement then such person can be made liable for the offence of copyright imprisonment. However, if
the person is unaware or has no reason to believe that the place is used for copyright infringement then
cannot be made liable for the same.

● Selling Infringing Copies: If a person sells the copies that infringe the right of the copyright holder then it
will amount to copyright infringement.

● Distributing Infringing Copies : When a person distributes infringing copies of the copyright holder
works then it will amount to copyright infringement. For example, if a person uploads a movie on the
internet for free then it is an infringement of copyright.

● Importing Infringing Copies: Importing the infringed work of the copyright holder in India also amounts
to infringement of Copyright. However, if the person has imported the infringed work for the domestic or
personal use then it will not amount to Copyright Infringement.

Indirect copying
  Indirect copying means copying the work of a person by changing its form. If the plaintiff wants
copyright in the drawing and this is copied in three dimensions by the defendant in direct copying, the
drawing will be said to have taken place.

 If the defendants have reached the drawing by reverse engineering and thereafter produced their product
based on the drawings so reached, there may not be an infringement of the copyright in the drawings of
the plaintiffs.

 In J.C. Bamford Excavators Limited V. Action Construction Equipment Limited, Delhi High Court held
that where the defendant produced their products on the basis of the drawings they reached, by way of
reverse engineering of the plaintiff's products there was no infringement of copyright in the drawings of
the plane tales. In this case the defendant's produce evidence showing that the components used were
not exact replicas of the plaintiff's components

Subconscious Copying

 Copying may occur subconsciously where a person who reads, sees or hears a work, forgets about it ,but
then produces it, genuinely believing it to be his own. In such cases, proof of copying depends on
number of composite elements:

● degree of a familiarity with the plaintiffs work

● character of the work, particularly its qualities of impressing the mind and memory

● objective similarity of the defendants work - inherent probability that such similarity as was found
could be due to coincidence

● the existence of other influences on the defendant

● quality of the defendants own evidence on the presence or otherwise in his mind of plaintiff's work.
What the plaintiff has to establish

1. He is the owner of the copyright within the meaning of s. 54 or one entitled for remedies u/ s. 55.

2. Copyright subsists in the work infringed at the time the defendant committed the infringement. 3.
Particulars of the infringement complained of.

4. The nature of the damage if any suffered by him or likely to suffer.

5. What the defendant has done or is proposing to do (in a quia timet action) constitutes infringement of
copyrigh

Remedies

1. Civil: injunction, damages & accounts, delivery of infringing copies and damages for conversion.

2. Criminal: imprisonment & fine, seizure of infringing copies, & delivery of them to the owner.

3. Administrative: moving the Registrar to ban the import of infringing copies and delivery of the confiscated
infringing copies to the owner

Civil Remedies

 Section 55(1) of the Copyright Act, provides that the copyright holder is entitled to remedy.

 Section 55 (1) – “Where copyright in any work has been infringed, the owner of the copyright shall,
except as otherwise provided by this Act, be entitled to all such remedies by way of injunction,
damages, accounts and otherwise as are or may be conferred by law for the infringement of a right:

Provided that if the defendant proves that at the date of the infringement he was not aware and had no
reasonable ground for believing that copyright subsisted in the work, the plaintiff shall not be entitled to
any remedy other than an injunction in respect of the infringement and a decree for the whole or part of
the profits made by the defendant by the sale of the infringing copies as the court may in the
circumstances deem reasonable.

Pecuniary Remedies
  Copyright owners can also seek three pecuniary remedies under Section 55 and 58 of the Copyright Act
of 1957.

 An account of profits which lets the owner seek the sum of money made equal to the profit made through
unlawful conduct.

 Compensatory damages which let the copyright owner seek the damages he suffered due to the
infringement

Norwich Pharmaceutical Order

 Orders of this kind are granted to determine relevant information from third parties to support any
evidence which is presented before the court by either the plaintiff or the defendant. These orders are
preferred when copyright infringement takes place online, which requires the disclosure of the
infringers from online service providers.

 In India, Norwich Pharmacal Order was passed in the case of Souza Cruz v. N.K. Jain, also known as the
Hollywood Cigarettes Case, the Court directed the Commissioner of Customs and Excise at Hyderabad
to disclose the complete details of the infringing goods, cigarettes in this case, which were being
exported in from Ukraine

Criminal proceedings

 Infringement is punishable with imprisonment of 6 months to 3years & 50 thousand to 2 lakh

rupees fine. S. 63

 For 2nd & subsequent convictions minimum imprisonment is 1 year & 1 lakh fine. S. 63A

 For computer programmes 7 days to 3 years imprisonment & 50 thousand to 2 lakh rupees fine.
S.63B

 Police empowered to seize without warrant s.64

 Possession of plates for making infringing copies is punished with 2 years imprisonment & fine s.
65 I

 Infringing copies or plates to be the property of the owner. S.66

 Unit – 4

 Protection of industrial designs is important as it encourages the creativity in the industrial and
manufacturing sector and helps in the economic development of a nation. An industrial design adds
commercial value to a product by making it attractive. The manufacturers therefore adequate attention
to the designs of the articles and invest substantial capital to carry out research. Hence, legal
protection is necessary for the creation of new designs and their application over the articles.

What is Design ?

 Section 2(d) of the Designs Act 2000 defines design as

 features of shape

 configuration,

 pattern,

 ornament

 composition of lines

 colours applied to any article whether in two dimensional or three dimensional or in both forms

 by any industrial process or means, whether manual, mechanical or chemical, separate or

combined,

 which in the finished article appeal to and are judged solely by the eye; but does not include any
mode or principle of construction or anything which is in substance a mere mechanical device,
and does not include any trade mark
Basic Requirements of Design Protection.

a) Novelty and originality

 A design is capable of being registered only if it is new or original.

 Novelty :-The world new in relation to design means a design which is completely new in the sense that
it is invented or created for the first time and was hitherto unknown.

 Originality:-As per Section 2(g), “Original” in relation to a design, meansa. originating from the author of
design, and b. includes the cases, which though old in themselves yet are new in their application. The
design has not been new may also be considered as novel and original, If the existing or known design
has been applied to a particular article for the first time.

 For instance, the figure of Taj Mahal is centuries old. But if a person conceives for the first time, the idea
of making a flower vase or an ash tray in the form of figure of Taj Mahal, that may be an original design
and shall be registrable.

 In Selvel industries v. Om plast (India) , the Bombay High Court observed that the word new appears
clean means not in existence before. Originality speaks to an element of creativity. Novelty is a term
that embraces both: something that is new and original is novel.

 In Gammeter v. The Controller of Patents and Designs, their Lordships observed : “ a design in order to
be new original within the meaning of the Act, need not be new or original in the sense of never having
been seen before as applied to any article whatever, there might be a Novelty in applying an old thing to
a new use, provided it is not merely analogous.

 Glass tube Limited v. Gopal glass Works Limited ., A design which was registered has been reproduced
in the glass article. To the question whether the act amounts to infringement, the Supreme Court held
that the expression new or original appearing in Section 4 means that the design which has been
registered has not been published anywhere it has been known to the public. The expression “new or
original” means that it has been invented for the first time or it has not been reproduced by anyone.

 In the present case there is no evidence to show that this design was registered earlier to be reproduced
on glass in India or any other part of the country or in UK, therefore, it is for the first time registered in
India which is new and original design which is to be reproduced on glass sheet.
Test of Novelty

 it is in the eye of the customer who must place two designs side by side and see whether the one for
which Novelty is cleaned is in fact new. It is the matter of first impression.

 In The Wimco Limited v. Meena Match Industries, the court held that : “ in the matter of novelty the eye
has to be the ultimate arbiter and determination has to rest on the general ocular impression. The court
has to consider and look at two designs in question with an instructed eye whether there is or there is not
substantial difference between them that which has been published previously and the registered design
to say that at the date of registration that was not published in India previously

 Designer Guild Limited v. Russell Williams (Textiles) Limited., In this case the claimant, Designer Guild,
designed and manufactured fabrics and wallpapers. One of their wallpaper designs, called the Ixia, had
been inspired by the work of the French impressionist painter Henri Matisse and was a great
commercial success. Designer Guild sued Russell Williams for copying the Ixia design. The defendants
denied any copying. It was held no infringement

b) Design must be unique, a Prior publication is not acceptable

 According to Section 4, design which has been disclosed to the public anywhere in India or in
any other country by Publication in the tangible form or by use or in any other way prior to the
filing date or the priority date of the application for registration shall not be registered.
 In National Trading Company v. Monika Chawla., it was observed that publication of a design if
disclosed to any individual member of the public who is not under an obligation to keep it a
secret, would constitute publication of the design.
 The expression tangible form used in Section 44 (b) refers to a specific physical form or shape
as applied to an article and not Mere ability to replicate, convert and give a physical shape to the
design. To fall under the category of tangible form it is necessary that the article should have
been used either for actual use or for Publication.

c) Distinctiveness

 Design which is not significantly distinguishable from known designs or combination of known
designs is not registrable.
 The question whether a design is significantly distinguishable from the other is to be decided by
the eye. It is to be seen whether appearance of one design is substantially similar to the
appearance of another design or not?
 For a design to be significantly distinguishable from known designs for combination of known
designs there should be significant variations in it and not nearly small or superficial variations.
Substantial difference depends upon the particular facts in each case.
  Sometimes a small variation in the details of a design maybe enough to make the design
different from existing design, in some cases even the large alterations in the design may not
make the two designs different.
 Troikaa Pharmaceuticals v. Pro Laboratories., The plaintiff in this case was manufacturing ‘D’
shaped tablets and had registered the design with the Controller General of Patents, Designs and
Trademarks. The Controller after verification registered the design under Class 28 and awarded
the plaintiff with a certificate of registration in the year 2001. The plaintiff therefore had an
exclusive right to use the design for a period of 10 years and he was there entitled to sue anybody
who infringed the use of this design.

d) comprises or contains scandalous or obscene matter,

e) Applied to Article

 Section 2(a) of the Act defines “article” as- “Article means any article of manufacture and any
substance, artificial, or partly artificial and partly natural and includes any part of an article
capable of being made and sold separately”
 In Re Littlewoods Pools Ltd’s Application [(1949) 66 RPC 309[ application was made to register
a form of football coupon consisting of a rectangular sheet of paper on which a pattern was
formed by straight lines, the spaces between were filled with literary matter. Wynn-Parry J in
holding that the paper was not an article stated that as the function of the paper was ―solely to
carry the imprint of the design and did not have any other function it was not an article, within the
meaning of the Act.

f) Made and sold separately

 An article must be capable of being made and sold separately in the sense that the article has a
commercial identity in the market of its whole and not when incorporated as part of another
article.
 In Marico Limited V. Raj Oil Mills Limited, the court observed that the phrase capable of being
made and sold separately covers the cases not only that an article upon which a design article can
be made but also can be sold separately.
 An article which is separate from the other parts of the goods and registered as a separate
design if intended or designed by the proprietor of the registered article as capable of being made
or sold are being saleable in the market Separately. Therefore its registrable.

g) Appeal to and judged solely by the Eye

 Design must have eye appeal. The design features in the finished article must be such that their
appeal to and judged solely by the eye.
  The appeal must be such that it attracts people towards the article. Hence, it must have A special
or distinct appearance, the effect of which has some perceptible appearance of an individual
character, which is distinct from the fundamental form of the article.
 The design must be judged not by the objective measurement or scientific evidence, but by a
visual comparison of previously existing shape configuration pattern for ornamentation.
 In Amp. V. Utilux., In considering eye appeal, the court devised the important test of
“influencing customer preference”.
 In other words, whatever appeal might mean, it is the eye of the customer not the court which is
the judge. The real importance of this is not so much the reference to the customer but rather
the fact that the court itself can not properly assess the matter without assistance. Thus, faced
with evidence that a design does not have eye appeal, eg., because it was devised with functional
intent, evidence confirming that the design is attractive to the appropriate person will be needed
to support registrability.
 The appropriate person would normally be the customer (whether a purchasing member of the
general public or a manufacturer), although it could also be a consumer

Test of Notice ability

 Eye appeal essentially consist notice ability.

 In Ferrero and CspA’s application (1978 RPC 473, HL) the design at issue was an inner layer
of a chocolate, which formed an essential part of the design. The court upheld the decision of
design office and observed ― “I think it is fairly plain that the underlying reason was that the
design feature was present all the time, even though it only becomes apparent when the article,
that is to say the egg, was being used for its purpose, when it had been broken so that it could be
eaten”.

h) Mere mechanical device

 Mere Mechanical contrivance does not qualify for design registration. In other words,
functional designs are not registrable.
 In Kestos Ltd. v. Kempat Ltd. & Kemp. [(1936) 53 RPC 139] the court held that, “ A mere
mechanical device is a shape in which all the features are dictated solely by the function or
functions which the article has to be performed

Who can apply for registration:

 Any person or the legal representative or the assignee can apply separately or jointly for the registration
of a design. The term "person" includes firm, partnership and a body corporate. An application may also
be filed through an agent in which case a power of attorney is required to be filed. An Application for
registration of design may be prepared either by the applicant or with the professional help of attorneys.

Procedure for Protection:

  Application and Registration of Design:
 Section 5 provides that the Controller may, on the application of any person claiming to be the proprietor
of any new or original design not previously published in any country and which is not contrary to
public order or morality, register the design under the Act. Every application for registration is required
to be in the prescribed manner and accompanied by the prescribed fee. A design when registered shall
be registered as of the date of the application for registration.
 As per Section 7, the Controller shall, as soon as may be after the registration of a design, cause
publication of the prescribed particulars of the design to be published in the prescribed manner and the
design be open to public inspection.
 Under Section 9 of the Design Act, the Controller grants a certificate of registration to the proprietor of
the design when it is registered. The important purpose of design Registration is to see that the artisan,
creator, the originator of a design having aesthetic look is not deprived of his bonafide reward by others
applying it to their goods.
 Register of Design: The Register of Designs is a document maintained by the Patent Office, Kolkata as a
statutory requirement. It contains the design number, date of filing and reciprocity date (if any), name
and address of proprietor and such other matters as would affect the validity of proprietorship of the
design such as notifications of assignments and of transmissions of registered designs, etc. and it is open
for public inspection on payment of prescribed fee and extract from register may also be obtained on
request with the prescribed fee

Rights of registered design holder

 The exclusive right to apply the design to any article in any class in which the design is registered;
 The exclusive right to publish or expose, or cause to be published or exposed, any article in any class of
goods in which the design is registered to which such design is applied; and
 The exclusive right to import for the purposes of sale any article belonging to the class in which the
design is registered and having applied to it that design

Cancellation of registration of Design: s. 19

The registration of a design may be cancelled at any time after the registration of design on a petition for
cancellation in form 8 with a fee of Rs. 1,500/-to the Controller of Designs on the following grounds:

● That the design has been previously registered in India; or

● That it has been published in India or elsewhere prior to date of registration; or

● The design is not new or original; or

● Design is not registrable; or

 ● It is not a design under Clause (d) of Section 2

Piracy Of Design – S.22

 During the existence of copyright over any design, other persons are prohibited from using the
design except or with the permission of the proprietor, his licensee or assignee. The following
activities are considered to be infringement.

1. To apply the design or any fraudulent imitation of it to any article for sale;

2. To import for sale any article to which the design or fraudulent or obvious imitation of it, has
been applied;

3. To publish or to expose for sale knowing that the design or any fraudulent or obvious imitation of
it has been applied to it.

Tests to determine the piracy

Judged soley by the eye

Substantial similarity

Shape, configuration, pattern, ornament or composition of lines or colours applied

Jurisdiction:

 According to Section 22 a suit is to be instituted in a District Court or a High Court depending upon
the quantum of damages claimed. The provisions of this section do not exclude action for passing
off and for rendition of accounts.

Remedies against Infringement of Copyright in a Design

 Section 22(2) of the Act provides that: If any person acts in contravention of this section, he shall
be liable for every contravention-
 (a) to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand
rupees recoverable as a contract debt, or
 (b) if the proprietor elects to bring a suit for the recovery of damages for any such contravention,
and for an injunction against the repetition thereof, to pay such damages as may be awarded and to
be restrained by injunction accordingly:
 Provided that the total sum recoverable in respect of any one design under clause (a) shall not
exceed fifty thousand rupees:
  Provided further that no suit or any other proceeding for relief under this subsection shall be
instituted in any court below the court of District Judge.
 Section 55 of the Copyright Act, 1957 provides for civil remedies that can be availed by the
registered proprietor wherein, if any person who is intentionally infringing such work as covered in
the Copyright Act, 1957 are entitled to seek remedy in the form of either claiming damages,
accounts or by filing a suit for injunction against the person who has infringed the right of the
registered proprietor.
 The registered proprietor is also entitled to receive such profit which was gained by the wrongdoer
during the time of using the infringed design of the registered proprietor.
 The registered proprietor may also seek an interlocutory injunction as under Order 39, Rules 1 and
2 of The Code of Civil Procedure, 1908 wherein, the registered proprietor has to establish a prima
facie case showing “balance of convenience” in its favour

Computer Program

 Computer program or "software" in general means a collection of computer programs,

procedures and documentation that perform some tasks on a computer system.
 Dictionary of Computing describes software as "a generic term for those components
of the computer system that are intangible rather than physical".
 Software is a series of instructions joined together in a language which is
understandable by the programmer or the operator, on the one hand, and translated
into a language understandable by the computer, on the other.
 Software contains literal and non-literal elements.
 Literal elements consist of source code and object code, which are two-levels of
computer language.
 Non-literal elements comprise of programmes, structure, sequence, organization,
screen displays, menu structure and general flow chart.
 A computer program is a set of instructions capable, when incorporated in machine
readable medium, of causing a machine having information- processing capabilities
to indicate, perform or achieve a particular function, task or result.
 Computer software includes many items like the programme manuals and papers,
punched cards and magnetic tapes or discs required for understanding or operation of
computers
Computer program is defined by section 2(ffc) of the Indian Copyright Act, 1957 to mean, “set
of instructions which are expressed in words, codes, schemes or in any other form, which also
includes a machine readable medium, capable of causing a computer to perform a particular
task or achieve a particular result”.

A. Copyright Protection to Computer Programs

Foreign Perspective

 Earlier computer programmes, software and such other digital rights were not
considered as subject matter of copyright. However, the developments in USA
have brought computer software the status of subject matter of copyright.
Where in, USA tried to protect software through patent and trade secret but the
limitations of patent and trade secret law have resulted in reliance on copyright
law as the major source of protection for software.
 In 1976 US Copyright Act, as amended by the Computer Software Act of
1980, extends copyright protection to software.
 In Apple Computer, Inc v Franklin Computer Corp, 5 the defendant, Franklin,
had allegedly copied fourteen of Apple's copyrighted operating programs which
were stored on floppy discs and in ROM's. Franklin then allegedly incorporated
these duplicated programs into a personal computer on which virtually all
software designed for Apple's personal computer could be utilized. Apple
brought suit in the United States District Court for the Eastern District of
Pennsylvania alleging copyright infringement of its operating programs and
seeking a preliminary injunction to prevent the continued use of Apple's
operating programs by Franklin. It was argued that an operating system is
either a process or a system or a method of operation and as such not capable of
receiving copyright protection.
 The test for to see whether it amounts to fair dealing
 the purpose and character of the use, (e.g., is the use commercial?
Educational?);
 2. the nature of the copyrighted work;
 3. the amount and substantiality of the copied material in relation to the
copyrighted work as a whole; and
 4. the effect on the market

Indian perspective

 Software in India is considered as literary work under section 2(o) of the

Copyright Act. Copyright Act, 1957 has been amended in 1994 to make
necessary changes in the subject matter of copyright to include software and
computer program within the meaning of the literary work. Thus being literary
work software is protected under the copyright regime.
 The owner of the copyright in India has the exclusive right to reproduce and
distribute his work and also to make derivative works out of that. Section 14(b)
of the Indian Copyright Act, 1957
 Any unlicensed storage, reproduction, issuance of copies or adaptation of an
item of copyrighted software would constitute an infringement of software
under the provisions of Indian copyright law. Furthermore, it is clear that if any
 person other than the owner of the copyright or any person licensed by him,
sells or hires the programme to any other person, the former is in infringement
of the copyright in the programme
 The term of copyright is for life plus 60 years which is no different in case of
computer programme or software as both have been considered as literary
work.

B. Patent Protection to Computer Programs

 computer programs and software were not considered patentable. Perhaps there was increasing
demand for patenting of software production of which is considered to be the most stringent.
Though software was protected under the copyright regime, it was considered insufficient and
patent regime was considered to be the most efficient, stringent vibrant and suitable regime for
the protection of inventions of software and computer programs
 Software is, however, different in many respects from the conventional technology. Firstly, it is
more complicated than any other product. It is observed that in most of the industries, a
product could contain 22-25 parts. A major computer programme may contain up to 10,000
million lines of code. Therefore, unlike other products, which contain a few parts, software
product contains a large number of factors leading the complete inventions. Secondly, software
is more abstract. A software product depends on different computer technologies. One cannot
make a distinction between these technologies. Thirdly, unlike the conventional industry, which
generates a new product in a very long span of time, the software industry product changes its
generation much faster. Therefore, the application of patent regime for the protection of
software invention when compared with the conventional industry is found to be incapable of
achieving any of its desired goals
 US post 1981 started allocating patent protection to software.
 For the first time in Re Toma the US Patent Office Board of Appeals taking a complete departure
from the earlier practices and the decision of the Supreme Court in the earlier case held a
software that translate one language into another as patentable. It was the first case where
computer software was considered as patentable. In fact there was no statutory support for
considering or patenting computer software. However, judiciary interpreted the existing patent
laws in an innovative way to patent software. It was considered that software technically
satisfies the requirements of patentability and there is no reason why it should not be patented.
 In Arrythmia Research Technology Inc v Carasonix Corp a computer process for diagnosing heart
attacks was given patent. The claim was for the process to analyze electro cardiac signals to
determine specific heart activity, which involves the use of an algorithm. Through the process
data pertaining to electro cardiac signals can be transferred to computer for determining
patient's vulnerability to heart attacks.
 However we don't grant patents for computer program and software per se in India. Section
3(k) of India Patens Act makes it clear that software is not patentable in India. However, section
4.11 of the Draft Manual makes an attempt to inform the inventors and potential Patent
applicants that while software per se is not patentable but software in combination with
hardware can be patented. The draft appears to make a room for this possibility