INTELLECTUAL PROPERTY LAW

Concept and meaning of IPR

Physical property is protected by law.

But we still needed protection for our Intellectual property.

Intellectual Property - The property which is a result of your Intellect

(Intelligence) It is Intangible property.
Intangible -
something which
you can’t touch

The most important point in IPR related event for the world is:

TRIPS - Agreement on Trade-Related Aspects of Intellectual

Property Rights

Effective from 1ST January 1995

Parties are all WTO members.

TRIPS agreement was negotiated at the Uruguay Round of GATT

(Authority before WTO)

WIPO
Headquarters is in Geneva, Switzerland

The World Intellectual Property Organization is one of the 15

specialized agencies of the United Nations (UN). WIPO was created
in 1967 "to encourage creative activity, to promote the protection of
intellectual property throughout the world".

26 April was chosen as the date for World intellectual Property Day
because it coincides with the date on which the Convention
Establishing the World Intellectual Property Organization entered into
force in 1970.
WIPO convention, Stockholm, 1967 Defines IPR in
Article 2 (viii)

"Intellectual property shall include the rights relating to:

1. literary, artistic and scientific works,

2. performances of performing artists, phonograms, and broadcasts,

3. inventions in all fields of human endeavour,

4. scientific discoveries,

5. industrial designs,

6. trademarks, service marks, and commercial names and

designations,

7. protection against unfair competition,

and all other rights resulting from intellectual activity in the industrial,
scientific literary or artistic fields.

India also amended its legislations regarding IPR after the TRIPS
agreement to comply with it

Indian Legislations on IPR

1. Patent act, 2005

2. Trademarks Act, 1999

3. Copyright Act, 1957

4. The Designs Act, 2000

5. The Geographical Indications of Goods (Registration and Protection)

Act, 1999

6. The Protection of Plant Varieties and Farmers Rights Act, 2001

7. The Semiconductor Integrated Circuits Layout Design Act, 2000

8. The Biological Diversity Act, 2002 (Not an IPR legislation per se but
Certain Aspects of Traditional Knowledge are covered in it)

Theories of Intellectual Property

NATURAL RIGHTS THEORY (Labour Theory/moral

desert theory)

The essence of this theory emanates mainly from John Lock's idea that
an author has a natural right over the productions of their intellectual
labour.
This theory does not make any difference between intellectual property
and the traditional tangible property including the right to use, to
exclude others from use and the right to transfer the owned object.

So anyone who violates the intellectual right of an author, creator or

inventor is considered to commit a theft

Problem: new creators inevitably and usefully build on predecessors. In

this sense, intellectual property is rarely a creation from nothing and
that creates a problem in calling it a property of someone completely

THE UTILITARIAN THEORY (Incentive Theory)

This theory is based on the fact that the industrial progress and cultural
goods have a beneficial effect on the society.

In order to promote the inventions and creations, the titular needs a

guarantee that the outcome will be superior to the costs of his work

The incentive theory justifies the intellectual rights because of the profit
they bring for the whole society

Social Planning Theory is a wider aspect of Incentive theory.

THE ETHIC AND REWARD THEORY

This theory justifies the exclusive rights of intellectual property with

some moral and ethical aspect.

The exclusive rights are "an expression of gratitude to an author for

doing more than society expects or feels that they are obliged to do”

But this theory suggests that the inventor could benefit more than his
amount of hard work in the initial period and letting him keep the rights
for a long time is excessive.

THE PERSONHOOD THEORY (Personality Theory)

Hegel, who is the main source of this theory, claims that intellectual
rights permit and protect the developing of the personality, which
extends to the material things. In the same way, the copier is
considered as a thief who offers to the public someone else's spirit.

Problem: But one view that when the creation is done, the work is
independent from its creator but dependent on the public. As a matter
of fact, the work obtains substance only because the others decided to
attach importance to it.

International Conventions of IPR

UDHR

Adopted by UNGA on 10th December 1948

The Declaration consists of 30 articles affirming an individual's rights

which, although not legally binding in themselves, have been
elaborated in subsequent international treaties, economic transfers,
regional human rights instruments, national constitutions, and other
laws, The Declaration was the first step in the process formulating the
International Bill of Human Rights, which was completed in 1966, and
came into force in 1976, after a sufficient number of countries had
ratified them.

Article 27 of the Universal Declaration of Human Rights states that

"everyone has the right freely to participate in the cultural life of the
community, to enjoy the arts and to share in scientific advancement
and its benefits."

Paris Convention for protection of Industrial Property

(1883)

International exhibition of inventions held in 1873 at Vienna, in which

participation was hampered by the fact that many foreign visitors were
not willing to exhibit their inventions at that exhibition in view of the
inadequate legal protection offered to exhibited inventions. So, a
Conference was convened in Paris in 1883. 11 States signed the
Convention for the Protection of Industrial Property at the Conference
and certain rules were formed:

National Treatment: It means that regarding protection of industrial

Property, each country party to the convention must grant the same
protection to nationals of the other member countries as it grants to its
own nationals. (No Discrimination) (Article 2 and 3)

Right of Priority: If an industrial property right is filed by a given

applicant in one of the members countries, then the same applicant or
his successor in title may file it in other member countries in a time
period (6-12 months) and it will be considered as filed on the same
date as the first country.

Independence of Patents: If one country gives a patent or rejects a

patent it does not mean that the patent will be accepted or rejected by
the other country, any country has no influence over the fate of a
patent in other country.

Patent Co-operation Treaty - PCT (1970)

Signed in Washington United States

Treaty for international co-operation in field of patents.

No concept of International Patents, all powers still reside with the

countries

Complimentary Treaty to Paris Convention and is open to only those

who are member of the Paris Convention

PCT establishes

1 An international system - Filling in a single Patent Office "receiving

office with a single application international application", in one
language which will have effect in all countries party to the PCT
2. International publication of international applications

3. International preliminary examination of the application which gives

the Patent office in the country a report containing opinion about the
patentability of the Application,

Berne Convention for the Protection of Literary and

Artistic Works (1886) (Modified at Paris in 1971)

Oldest Treaty in field of Copyrights

Aim was to "Protect, in as effective and uniform a manner as possible,

the rights of authors in their literary and artistic works”

3 Principles

National Treatment

Automatic Protection- National Protection not dependant on

formalities like registration, fee deposit etc.

Independence of Protection: Protection is independent of the

existence of protection in the country of origin of the work

Concept of "Folklore”

Though the word wasn't used but the convention gives the rights to the
country if the author is unknown and there is a ground to presume that
work originated from that country.

Universal Copyright Convention-UCC (1952)

Adopted in Geneva Switzerland

Developed by UNESCO as an alternative to Berne Convention for

states who didn't agree with Berne Convention but still wanted to be
part of a multilateral copyright treaty.

The Berne Convention did not require registration or the inclusion of a

copyright notice for copyright to exist and provided copyright for single
term based on the life of the Author
Under UCC copyright protection was provided for a fixed renewable
period and for copyrighting it must contain a copyright notice and be
registered at a Copyright Office.
These totally different procedures created difference between Berne
convention members and UCC members, but today most states are
members of the TRIPS agreement, the UCC has lost significance.

Madrid Agreement Concerning the International

Registration of Marks, 1891 (followed by a protocol in
1989)

The Madrid system provides a centrally administered system of

obtaining a bundle of trademark registrations in separate Jurisdictions

The Madrid Protocol system provides for the international registration

of trademarks by way of one application that can cover more than one
country.

The 18 treaties with the 1989 protocol form the system of international
registration of marks (trademark) -Madrid System

The Madrid system is administered by the International Bureau of the

World Intellectual Property Organization (WIPO) in Geneva,
Switzerland.

There are 90 countries part of the Madrid System

Rome Convention, 1961

First Convention to deal with neighbouring rights.

Rome Convention for the Protection of Performers, Producers of

Phonograms and Broadcasting Organisations (1961)

Protection to Performers, Producers etc (Actors, Singers, Musicians,

Dancers and those who perform or produce literary or artistic work)

Protection from acts which they have not consented to such as

broadcasting, Communication or reproduction

The Rome Convention allows for limitations and exceptions to the

above-mentioned rights in national laws regards private use, use of
short excerpts in connection with reporting current events, ephemeral
fixation by a broadcasting organization by means of its own facilities
and for its own broadcasts, use solely for the purpose of teaching or
scientific research and in any other cases where national law provides
exceptions to copyright in literary and artistic works

Duration of protection must be at least 20 years

TRIPS agreement, 1994

Came into force: 1st Jan 1995, includes most of Berne Convention
Rules had to be implemented within 6 years for developed countries
that is 31 December 2000 and within 10 years for developing
countries i.e., 31 December 2004

Agreement on Trade-Related Aspects of Intellectual Property Rights

(TRIPS) is an international agreement administered by the World Trade
Organization (WTO) that sets down minimum standards for many
forms of intellectual property (IP) regulation as applied to nationals of
other WTO Members

The TRIPS agreement introduced intellectual property law into the

international trading system for the first time and remains the most
comprehensive international agreement on intellectual property to date.
Obligations under TRIPS apply all members equally but developing
countries were given more time to make changes in their national laws.

TRIPS included provisions regarding

National Treatment (Article 3)

Most Favoured Nation (Article 4): With regard to the protection of

intellectual property, any advantage, favour, privilege or immunity
granted by a Member to the nationals of any other country shall be
accorded immediately and unconditionally to the nationals of all other
Members

Standards of protection to its members

Enforcement of IPR's, provides procedures, remedies, provisional

measures in detail

WTO's dispute settlement procedures apply in case of disputes

TRIPS plus: In recent years, many developing countries have been
coming under pressure to enact or implement even tougher or more
restrictive conditions in their patent laws than are required by the
TRIPS Agreement - these are known as TRIPS plus provisions
The Internet Treaties

WCT (WIPO Copyright Treaty) (2002) - Copyright protection to literary

works, computer programs & databases, musical works, audio visual
works, works of fine art and photographs

WPPT (WIPO Performance and Phonograms Treaty) (1996) - Deals

with the rights of performers and producers of phonograms such as
tapes, CD's and Mp3's etc.

Marrakesh VIP Treaty

Marrakesh Treaty to Facilitate Access to Published Works by Visually

Impaired Persons and Persons with Print Disabilities)

Adopted in Marrakesh, Morocco in June 2013. India first country to

ratify the treaty.
 COPYRIGHT
Industrial

property Patents

Industrial Designs
Intellectual property

Trademarks

Geographical
Indication
Copyright

Copyright grants exclusive rights to the creators to control the copying

and some other forms of exploitation of copyright material.

2 Doctrines to test copyright protection

• Sweat of Brow Doctrine

An Author gets protection over his work if he has put simple diligence
in the creation of the work, Substantial Creativity or originality is not
required. Example Creator of a database or telephone directory. There
is nothing creative but it requires time hard work and expense in
creating a telephone directory

• Modicum of Creativity Doctrine

According to this doctrine for getting protection there should be a

minimum level of creativity, this totally negates the Sweat of Brow
Doctrine.

What could be protected under Copyright?

• Typographic works

• Literary works

• Dramatic works
• Musical Works

• Artistic Works

• Films

• Sound Recording

• Broadcasts

Protects the expression of Idea not the idea itself. (R.G.Anand v.

Delux Films, (AIR 1978 SC 1613)

- It has to be Tangible (written/printed) on a paper CD, DVD etc.

Copyright protection is given as soon as the work comes into

existence.

Copyright Symbol

© Introduced in 1952 by the Universal Copyright Convention and is

used for all works except sound recordings and collections.

℗ For sound recording the symbol of P inside. A circle

is used

Legislation
COPYRIGHT ACT, 1957 (LATEST AMENDMENT 2012)

Came into force January 1958

Amended 6 times, 2012 Amendment makes it compliant to WCT and

WPPT

The Act includes the definition of Computer Software in its ambit

Meaning of Copyright (sec. 14).

Copyright Authorities
Copyright Office, Copyright Board, Copyright Societies

Neighbouring Rights
In copyright law, related rights (or neighbouring rights) are the rights of
a creative work not connected with the work's actual author. It is used
in opposition to the term "authors' rights"

Rome Convention for the Protection of Performers, Producers of

Phonograms and Broadcasting Organisations (1961) - Protection to
Performers, Producers etc (Actors, Singers, Musicians, Dancers
and those who perform or produce literary or artistic work)

Types of Rights in Copyright.

1. Economic Right

2. Moral Right - Right to be identified as the creator and the right to

prohibit destruction or degradation of the work. (Even after economic
rights are transferred, moral rights still belong to the author)

Ownership

The author of the property shall have ownership on the property. But, If
the work is created within the scope of employment, the copyright is
held by the employer, not the employee. (Section 17) The moral right
shall still remain with the author.

V.T. Thomas and Ors. vs Malayala Manorama Co.Ltd.

(1989)

Cartoon named 'Boban and Molly, which was created before starting
employment at Manorama so the copyright is held by V. Thomas and
not the employer.
Registration
Registration of Copyright is not compulsory - Nav Sahitya Prakash
and Ors, vs Anand Kumar and Ors.

Section 44 directs Copyright office to maintain a register of the

registrations with title of work and authors details.

Section 45 read with Rule 16 of Copyright Rules mention about the

registration process of copyright.

Term of Copyright
TRIPS suggest minimum protection of 50 years

For a term of copyright, we need to determine the time of publication.

Section 3 defines publication as 'making a work available to the public
by issue of copies or by communicating the work to the public’

Term of copyright - Section 22 to Section 29

Original Literary, dramatic, musical and artistic works-

Author's Lifetime + 60 years from the beginning of the calendar year
next following the year in which the author dies.

Films, Sound Recordings, Posthumous Publications

Anonymous and pseudonymous publications, works of
government and International organisations -60 year from
the date of publication:

If the anonymous author is found then authors lifetime + 60 years.

If there is joint authorship in posthumous publication and one of the

authors is living then also authors lifetime + 60 years

Photographs-earlier 60 years from publications after 2012

amendment 60 years from the death of the photographer
Licenses and Assignments
License

Voluntary Licence (Section 30) - Granting of interest in the right by

license.

Compulsory License (Section 31) - For Orphan works or if the work is

withheld from public.

Assignment - Copyright is transferred to another party on

contractual basis. Different transfers can be made for the same work,
an author may permit her book to be made into a play, merchandise,
theme park etc. (J.K Rowling and Harry Potter)

Section 18 and 19 talks about assignment and mode of assignment

respectively.

Both Assignment and License could be for existing or future work

Infringement

- Unauthorized use of works or unauthorized reproduction without

permission of the copyright holder. (Section 51)

-Infringement could also be of the moral rights

- Damages can be claimed.

Copyright work may be copied or used in certain

situations:

1. Public Domain Work - Works which do not have protection or which

have an expired copyright or Orphan Works after granting of
compulsory license.

2. Fair Use Doctrine- Use for educational and non-commercial purpose

with certain restrictions e.g., review, research, teaching, parody etc.

3. Permission
Fair Use Doctrine (Section 52 - Certain Acts not to be infringement
of copyright)

-Single copy for private, personal and non-commercial purposes for

research and study

-Criticism or review of that work

- Making of Copies or adaptations of a computer program by the lawful

possessor of such program

- Making of backup copies purely as a temporary protection against

loss or damage

-Use of work for the purpose of reporting current events in a

newspaper etc

- Use of work for judicial proceedings Reproduction or publication of a

work prepared by the
Secretariat of a legislature

-Read or Recitation in public of any extract

-The reproduction by a teacher or a pupil in the course of instruction

- The making of not more than three copies of a book by or under the
direction of the person in charge of a public library for the use of the
library if such book is not available for sale in in India
-2012 amendment now covers all works (films, sound recordings etc)
with regard to fair use, except software

Remedies

CRIMINAL REMEDIES (SECTION 63-69)

Punishment

First Offence - 6 months - 3 years, 50k-2lakh

Subsequent conviction - 1-3-year, 1-3 lakhs

Cognizable offence - sub inspector and above may if he is satisfied that

an offence has been committed, seize without warrant, all copies of the
work and the equipment used for making infringing copies of the work
CIVIL REMEDIES (SECTION 54-62) (OTHER THAN DAMAGES)

Injunctions

Temporary, Permanent, or interlocutory Injunctions. Provisions under

Order XXXIX, CPC

Mareva Injunction

A court order freezing a debtor's assets to prevent them being taken

abroad

Order XXXVIII, Rule 5 of The Civil Procedure Code, 1908.

John Doe Order

When the person committing the breach is not known, Jon doe' is used
to denote those persons in U.S.A and U.K, in India the name 'Ashok
Kumar” has been used This order can be given under Order XXX, rule
1 of CPC. First used in Taj Television v. Rajan Mandal (2003) - Issue
of unauthorized telecasting of FIFA world Cup 2002 on cable networks.

Search and Seizure Orders (Anton Piller Orders) (Anton

Piller Case) (1976)

A court order allowing a party to litigation to enter the premises of

another to search for and, if found, remove specified documents or
items.

Only when:

1. There is an extremely strong prima facie case against the

respondent,

2. The damage, potential or actual, must be very serious for the

applicant, and

3. There must be clear evidence that the respondents have in their

possession relevant documents or things and that there is a real
possibility that they may destroy such material,
Administrative remedies

Administrative remedies consist of moving the Registrar of copyrights

to ban the import of infringing copies into India when the infringement is
by way of such importation and the delivery of the confiscated
infringing copies to the owner of the copyright and seeking the delivery

Jurisdiction of Courts

A suit or other civil proceedings relating to infringement of copyright is

filed in the District Court or High Court within whose jurisdiction the
plaintiff resides or carries on business or where the cause of action
arose irrespective of the place of residence or place of business of the
defendant.

Limitation

The period of limitation for filing the suit is three years from the date of
infringement

Groundless Threats

If someone is threatening you of legal action by claiming as the owner

of the copyright. You can file a declaratory suit under Section 60 to
obtain injunction against continuation of such threats and get damages
for it. But you have to prove that the threat does not have a ground and
is baseless.

Section 60 can’t be used once the person threatening has filed a suit
for infringement of his rights against you.
 Patents
Patents
Industrial

property
Industrial Designs
Intellectual property

Trademarks

Geographical
Indication
Copyright

Indian Legislation Indian Patent Act, 1970

Definition

A patent is defined as a statutory privilege granted by the government

to inventors, and to other persons deriving their rights from the
inventor, for fixed years, to exclude other persons from manufacturing,
using or selling a patented product or process. Hence a patent can be
for a process or for a product. Period of time (20 years) (Section53)

(Becomes 'off patent' after 20 years)

Invention defined under Section 2(j)

"Invention means a new product or process involving an inventive step

and capable of industrial application"

Patent Defined under Section 2(m)

"a patent for any invention granted under this Act"

Brief Timeline

First Patent Statute in the world.

The Venetian Patent Statute of March 19, 1474, established in the

Republic of Venice.

In India first act in 1911 by British government.

In 1970, Indian Patent Act passed, In 1972, Patent Rules.

-Both process patent and product patents were given

- Process patent mainly given in food and pharmaceutical industry

1995 - India Joined WTO, TRIPS

2005 - The Patent Amendment Act

"Process Patent' v. 'Product Patent

Under a process patent, the patent is granted for a particular

manufacturing process, and not for the product itself. Any other person
can produce the same product through some other PROCESS,
modifying the various parameters.

Weakness of the process patent regime is that it gives less protection

for the inventor. There is high tendency for competitors to reengineer
the original invention by discovering a new process with less strain and
investment Benefit of process patent regime is that it reduces the
element of monopoly

Patent Act, 1970

Fast Track Mechanism to dispose of appeals

Provisions for protection of bio diversity and traditional knowledge,

public health emergency and revocation of patent in public interest and
also on security considerations
Object of Patent Act

Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries

“The object of patent law is to encourage scientific research new

technology and industrial progress, Grant of exclusive privilege to own,
use or sell the method or the product patented for a limited period.
stimulates new inventions of commercial utility. The price of the grant
of the monopoly is the disclosure of the invention at the Patent Office
which after expiry of the fixed period of the monopoly, passes into the
public domain”

3 Tests of patentability

1. NOVELTY -- In order to have novelty, the invention must not have

been disclosed publicly anywhere in the world. The novelty of an
invention is lost on a first sale. Only two countries in the World give the
inventor a grace period of 12 months to file a patent application after
the novelty of the invention has been lost. These countries are Canada
and USA. All other countries require absolute novelty. Some countries
do not even allow "secret use" of the invention before the filing date.

Novartis Case (Ever Greening of Patents)

In this case the company was trying to patent a new medicine which
was a slightly altered (not better) version of a already patented
medicine. This was rejected by the Supreme court as an action to
prevent ever greening of patent

Not allowed under Section 3(d) of the act

2. UTILITY - A patentable invention must have commercial utility. The

invention must be related to a field of technology: "the branch of
knowledge dealing with engineering or applied sciences". The invention
must be more than a mere scientific principle or an abstract theorem.
The invention must have a practical or practicable form. The invention
must have one or more physical elements.

3. INVENTIVENESS - The biggest test of all is perhaps the test of

inventiveness. The question to be asked is whether or not there is
teaching, suggestion, or motivation in the prior art that could have led a
person of "ordinary skills" and "ordinary creativity to modify or to
combine the teachings in the prior art to arrive at the claimed invention.
The test goes further by asking whether the claimed subject matter is
obvious because the route to the invention, the inventor's approach),
would have been "obvious to try". Inventiveness also means that the
invention has a new and unexpected result. A patentable combination
gives a result which is more than the sum of the individual elements

Procedure for grant of patent

1. Filling of Application (Provisional or Complete) - complete application

within 12 months of filling provisional (Priority Date)- term of twenty
years also begins from this date

2. Request for examination of the application by the Indian Patent

Office.

3. Patent Office examines and issues - 1st Examination Report

4. Applicant gets 12 months to comply with the objections raised in the

1st Examination report (Otherwise application is considered as
abandoned)

5. Applicant gets 12 months from first filing date file in foreign

countries. Can file individually via Paris convention in each country you
are interested in or can file under PCT to get right over patent in 153
countries.

Pre Grant-Opposition: (Section 25(1)) can be filed by any person

under Section 11A of the Patents Act, 1970 within six months from the
date of publication of the application

Post Grant Opposition: (Section 25(2)) Any interested person can file
post-grant opposition within twelve months from the date of publication
of the grant of patent in the official journal of the patent office

Grounds for Opposition

Some of the grounds for filing pre-and post-grant opposition are as

under:

• Patent wrongfully obtained;

• Prior publication;
• The invention was publicly known or publicly used in India before the
priority date of that claim;

• The invention is obvious and does not involve any inventive step: •
That the subject of any claim is not an invention within the meaning of
this Act, or is not patentable under this Act;

• Insufficient disclosure of the invention or the method by which it is to

be performed;

• That in the case of a patent granted on convention application, the

application for patent was not made within twelve months from the date
of the first application for protection for the invention made in a
convention country or in India;

• That the complete specification does not disclose or wrongly

mentions the source and geographical origin of biological material used
for the invention; and

• That the invention was anticipated having regard to the knowledge,

oral or otherwise, available within any local or indigenous community in
India or elsewhere

Limitation and exceptions

Section 3 - what are not inventions

1. an invention which is frivolous or which claims anything obviously

contrary to well established natural laws.
2. An invention the primary or intended use or commercial exploitation
of which would be contrary to public order or morality or which causes
serious prejudice to human, animal or plant life or health or to the
environment.

3. The mere discovery of a scientific principle or the formulation of/or

discovery of any living thing or non-living substance occurring in
nature.

4. The mere discovery of new form of a known substance which does

not result in the enhancement of the know efficacy.

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

aggregation of the properties of the components thereof or a process
for producing such substance
6. The mere arrangement or re-arrangement or duplication of known
devices, each functioning independently of one another in a known
way.

7. A method of agriculture or horticulture.

8. Any process for the medicinal, surgical, curative, prophylactic

(diagnostic, therapeutic) or other treatment of human beings or any
other process.

9. Plants and animals in whole or any part thereof other than

microorganisms but including seeds, varieties and species and
essentially biological processes for production or propagation of plants
and animals.

10. A mathematical or business method or a computer program per se

or algorithms.

11. A literary, dramatic, musical or artistic work or any other aesthetic

creation, whatsoever including cinematographic works and television
productions

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

method of playing game.

13 A presentation of information

14, Topography of integrated circuits.

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.

Exceptions

Article 30 of TRIPS - limited exceptions to the exclusive rights by a

patent. The exceptions must not unfairly prejudice the legitimate
interests of the patent Owner.

Private and Non-commercial Use Exception

The exclusive rights conferred by a patent do not allow private use or
monopoly over commercial activity
Compulsory licensing
It is when a government allows someone else to produce a patented
product or process without the consent of the. patent owner or plans to
use the patent protected invention itself.

At any time after the expiration of three years from the date of the
sealing of a patent, any person interested may make an application to
the Controller of Patents for grant of compulsory license of the patent,
subject to the fulfilment of following conditions (Section 84(1)), i.e.

• the reasonable requirements of the public with respect to the patented

invention have not been satisfied; or

• that the patented invention is not available to the public at a

reasonable price; or

• that the patented invention is not worked in the territory of India.

The concept of Compulsory licenses comes into play when the

patented invention is not commercialized in India or the invention is not
available to the public at reasonable prices or the invention is not
manufactured in requisite amount. The provisions of private and non-
commercial use exception have been provided under Section 84
(Compulsory licenses), Section 85 (Revocation of patents by the
Controller for non-working) and Section 92 (Special provision for
compulsory licences on notifications by Central Government) of
Patents Act, 1970 (herein after the Act"). Currently, the provision of CL
is seen as the only optimum solution of improving access to costly
patented drugs in India while creating an atmosphere that harnesses
R&D.

Experimental / Scientific Use Exception

The experimental use exemption is incorporated under Section 47 of

the Act. Under sub section 3 of the said section, the grant of a patent is
subject to the condition that any product or process, in respect of which
the patent is granted, may be made or used by any person for the
purpose merely of experiment or research including the imparting of
instructions to pupils.

Regulatory-use/ Prior-use Exemption

The patent rights, on the one hand, provide economic incentives to

innovate, but on the other hand, the exclusive rights they confer result
into monopoly and unaffordable pharmaceutical products.
Consequently, the Indian Patents (Amendment) Act, 2005 incorporated
the regulatory-use or prior-use exemption under section 107A to offer a
trade-off between incentives to the innovators, and limited access and
costs to consumers,

This exemption is also referred as Bolar Provision and is a statutorily

created exemption to patent rights that allows the manufacturers of
generic drugs to undertake steps reasonably related to the
development and submission of information required for obtaining
marketing approval anywhere in the world in respect of a patented
product without the consent of the patentee. Some countries permit the
generic drug manufacturers to use the technology of a patented drug to
generate data and to demonstrate bioequivalence that would assist in
the regulatory or marketing approval of the generic product, while the
patent is still in force.

This provision allows the generic producers to market and manufacture

their goods as soon as the patent term expires. Bolar Provision has
been upheld as conforming to the TRIPS agreement and is used in
several countries to advance science and technology. However,
exemption under Section 107A of the Act does not allow for the use of
patented drug to obtain the license to manufacture and distribute the
generic drug before the expiry of the term of patent.

Foreign Vessels, Aircraft or Land Vehicles Exception

Section 49. Patent rights not infringed when used on foreign

vessels etc., temporarily or accidentally in India.

(1) Where a vessel or aircraft registered in a foreign country or a land

vehicle owned by a person ordinarily resident in such country comes
into India (including the territorial waters thereof) temporarily or
accidentally only, the rights conferred by a patent for an invention shall
not be deemed to be infringed by the use of the invention

(a) in the body of the vessel or in the machinery, tackle, apparatus or

other accessories thereof, so far as the invention is used on board the
vessel and for its actual needs only; or

(b) in the construction or working of the aircraft or land vehicle or of the

accessories thereof, as the case may be.

(2) This section shall not extend to vessels, aircrafts or land vehicles
owned by persons ordinarily resident in a foreign country the laws of
which do not confer corresponding rights with respect to the use of
inventions in vessels, aircraft or land vehicles owned by persons
ordinarily resident in India while in the ports or within the territorial
waters of that foreign country or otherwise within the jurisdiction of its
courts.
Exhaustion of Patent Rights

After a product covered by an IP right, such as by a patent right, has

been sold by the IP right owner or by others with the consent of the
owner, the IP right is said to be exhausted. It can no longer be
exercised by the owner. This limitation is also referred to as the
exhaustion doctrine or first sale doctrine. For example, if an inventor
obtains a patent on a new kind of umbrella, the inventor (or anyone
else to whom he sells his patent) can legally prohibit other companies
from making and selling this kind of umbrella, but cannot prohibit
customers who have bought this umbrella from the patent owner from
reselling the umbrella to third parties.

Infringement

Patent Infringement occurs when someone makes, uses or sells a

product which is covered by a patent. One of the main benefits of a
patent is the ability to exclude others. A patent gives the owner the
right to stop someone from infringing their patent rights. The law is a
balance between encouraging an inventor to invent and allowing
society to grow.

As per the provisions mentioned in the Indian Patents Act, 1970,

following amount as an act of Patent Infringement:

• The colourable imitation of the invention

• Mechanical Equivalents
• Carrying essential features of the invention
• Immaterial variation in the invention

Mechanical equivalents here mean use of substitutes for some

features, just to obtain same results for the same use as done by the
patentee.

The limitation period for instituting suit for the patent infringement is 3
years from the date of infringement and jurisdiction is the geographic
area where the infringement has taken place. Also, the burden of proof
to establish that an infringement has occurred lies on the patentee.

Following can institute a suit in patent infringement proceedings:

• Patentee
• Exclusive licensee, if the license is registered

• A compulsory licensee

•Assignee

Another important point to be kept in mind is that a suit for infringement

can only be instituted when the patent has been sealed. During the
phase when the specification has been accepted, published and
oppositions have been called; the suit for infringement cannot be
instituted. Also, for the damages sustained due to the infringement
committed during the period between date of publication and date of
grant; a separate suit for damages can be instituted.

Remedies / Relief provided

1. Administrative remedy: The patent owner can reach the collector
of customs and prohibit the entry of these goods into Indian market.
The patent owner must provide the name of the exporter, consignee,
port of entry, name etc. details. the ship

2. Civil remedies:

• Injunctions: When there is a prima facie case and/or balance of

convenience is in the favour of the plaintiff; Interim injunction is
granted. Whereas after the complete trial permanent injunctions are
granted. (Section 108)

• Damages or accounts of profits is granted if it is established that on

the date of the infringement; the defendant was aware about the prior
existence of the patent. (Section 108)

The court may also order delivery up of the infringing goods. This is
mentioned in order XXXIX rule 7 of the Civil Procedure Code. As per
the provisions mentioned under this relief, a commissioner appointed
by the court visits the defendant's premises and take the inventory of
the infringing articles that are present in the defendant's premises.
These orders are usually passed without sending notice to the
infringer.

Groundless Threat (Section 106)

Whereas the law provides relief against infringement, the law also
discourages the unjustified and groundless threats of infringement
proceedings given by a patentee or any person on his behalf.
The threat may be made directly or indirectly through letters, circulars
or notification.

The aggrieved person may bring a suit against the person making
groundless threat. The court may grant following relief.

A declaration to the effect that threats are unjustifiable.

An injunction against continuation of threat; and Such damages, if any,

as sustained by plaintiff.
 TRADEMARK

Intellectual
property Patents

Industrial Designs
Intellectual property

Trademarks

Geographical
Indication
Copyright

• A trademark is given to provide legal protection to marks of trade like

brand names, signs, symbols etc.

• Trademark is an identity that certain products or services are

provided by a certain person or entity

• The difference between Trademark and other IPR is that Trademark

is given for an indefinite time. Initially a trademark is registered for 10
years but it can be renewed again and again indefinitely

• Definition of 'trademark' is in Section 2(zb) of Trademarks ACT, 1999

trade mark" means a mark capable of being represented graphically
and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their
packaging and combination of colours.

Trademark should be distinct.

Imperial Tobacco v. Registrar, Trademarks (1977)

The word 'Simla' was asked as a trademark and was refused by the
court Word 'Simla' which forms the essential and distinguishing feature
of the mark is a famous geographical name and is not registrable
except on very strong evidence of distinctiveness. No such evidence is
possible as the mark is proposed to be used."
Domain Names also fall under the purview of trademarks.

Celador Productions Ltd. vs Gaurav Mehrotra & Anr.

(2002)

Dispute regarding not using anything related to "Kaun Banega

Crorepati'

Court restrained the defendants from directly or indirectly running

any website using the name 'crorepatikaun' or anything related to
kaun banega crorepati.

Types of Trademarks

1. Word Marks - Right only in words, letters or numerals, no protection

in representation of the mark. (Word only)

2. Device Marks - Right of Unique representation of a word, letter or

numeral.

(word + logo)

3. Service Marks - Used only for services not goods.

(45 classes in trademark, 1-34 goods, 35-45 services)

4. Collective Marks - Marks used by a group of companies

collectively

(Sony used by bravia, Xperia etc)

5. Certification Marks - Used to define standards. (ISI)

6. Well Known Marks - When a mark is recognised among a large

percentage of population it is termed as a well-known mark, well known
marks enjoy greater protection. (Extra fees) (either on application or if
court has declared)

7. Unconventional Trademarks: Marks which get recognition for their

inherently distinctive feature
a. Colour Trademark:

b. Sound Marks: (phone ringtone on start-up)

c. Shape Marks (2d 3d shapes)

d. Smell Marks (lush green smell in tennis balls, only in USA)

Registration of Trademark

Registration is prima facie evidence of ownership of trademark, if you

don't register then also you can prove your right over it but registration
makes it easier.

Procedure of Registration (Sections 18-23)

Section 18 - Application for registration to Registrar, Single application

for registration in different categories, fee payable for each category

If the Registrar refuses the application, he will record reasons for it

Section 19 - The registrar may Withdraw the application after it’s been
accepted but before the trademark is registered if he has reasons for it
after hearing the applicant.

Section 20 - Advertisement of Application

Section 21 - Opposition to registration (within 3 months of date of

advertisement)

Section 22 - Correction and amendment of application

Section 23 - Registration

A Trademark shall be initially be given for 10 years and this period may
be renewed indefinitely

In 2010 amendment 36A-36G have been added for protection of Trade

marks through international registration under Madrid Protocol

Section 9 - Trademarks which can't be registered.

(a) which are devoid of any distinctive character, that is to say, not
capable of distinguishing the goods or services of one person from
those of another person:

(b) which consist exclusively of marks or indications which may serve

in trade to designate the kind, quality, quantity, intended purpose,
values, geographical origin or the time of production of the goods or
rendering of the service or other characteristics of the goods or
services;
(c) which consist exclusively of marks or indications which have
become customary in the current language or in the bona fide and
established practices of the trade.

(d) it is of such nature as to deceive the public or cause confusion:

(e) it contains or comprises of any matter likely to hurt the religious

susceptibilities of any class or section of the citizens of India; (f)it
comprises or contains scandalous or obscene matter;

(6) its use is prohibited under the Emblems and Names

(Prevention of Improper Use) Act, 1950.

(h) the shape of goods which results from the nature of the goods
themselves; or which is necessary to obtain a technical result, or which
gives substantial value to the goods.

The nature of goods or services in relation to which the trade mark is

used or proposed to be used shall not be a ground for refusal of
registration.
A trademark shall not be refused a registration if before the date of
application for registration it has acquired a distinctive character as a
result of the use made of it or is a well-known trademark.

Section 10 - Limitation as to colour

A trademark may be limited wholly or in part to any combination of

colours, if not then trademark shall be deemed to be registered for all
colours. Cadbury (purple)

Section 11 - Relative Grounds for Refusal of Registration

No Registration if identity or similarity to an earlier trade mark or goods

and services offered by an earlier trade mark or If the earlier trademark
is a well-known trademark and the new trademark will get benefit out of
it.
If the owner of earlier trademark consents, then the new trademark can
be registered.

M/S. Hitachi Ltd. vs Ajay Kumar Agarwal (1996)

Hitachi was already a registered trademark and the defendant wanted
to register HITAISHI which was very similar to HITACHI and so it was
refused.

Section 12 -Similar Trademark may be given in case of honest

concurrent use

Section 13 - No registration of names of chemicals elements or

compounds which are declared by WHO as an international non-
proprietary name or which is similar to such name.

Section 14 - Using a person's name (living or dead in the last 20

years) will require that person or his legal representatives'
consent.

Passing off

Passing off is used to enforce unregistered trademark rights

Remedy is provided under Section 27.

Used to prevent activities of one person from causing damage or injury

to the goodwill of another person or group of persons and the activities
associated with them.

The question is whether the defendants activities/conduct is as such

that it misleads the public to believe that the defendants’ business is
the plaintiff's business,

If it is the case the defendant is passing of the business of the plaintiff

3 Basic elements of Passing of are Reputation, Misrepresentation,

Damage which was called as Classical Trinity in the case of Reckitt
& Coleman Ltd. V. Barden Inc.
Modern Elements of passing off given in the case of Erven Warnink
Vs. Towned.
1. Misrepresentation

2. Made by person in the course of trade

3. To prospective customers or consumers of other traders’ goods or

services.

4. Which injures the trader’s business or goodwill

5. Causing actual damage to a business or goodwill of the trader by

whom the action is brought.

Honda Motors Co. Ltd. V. Charanjit Singh & Others.

Plaintiff had trademark for 'HONDA' for automobiles, Defendants was

using "HONDA' for pressure cookers. Plaintiff brought action against
defendants for passing of their business

Court held that HONDA pressure cookers are not an honest adoption
and will likely cause confusion in mind of public so therefore application
of plaintiff was allowed.

S.Sayed Moideen v. P.Sulochana Bai (AIR 2005 SC 1999)

A right over registered trademark is not absolute, subject to rights of

prior user for passing off.

Infringement
Unauthorized use of trademark or any mark which is similar to the
registered trademark and is of a deceiving nature amounts to
infringement. If the trademark is registered then action for infringement.
If the trademark is not registered than the remedy is by a passing off
action.

Section 29 and 30 deal with infringement.

Section 29 talks about when a Trademark is infringed

-When the person using is not authorized to use the trademark

-Using a registered trademark after making a little alteration or addition

-Infringing mark is either deceptively similar or identical to registered
trademark - Infringing trademark must be used in the course of regular
trade in which the registered trademark owner is involved in.

-The infringing trademark must be written/printed etc, just oral use is

not infringement.

Section 30 talks about when trademark is not infringed

- Use of trademark for identifying goods or services as those of

proprietor

- Use in accordance with honest practises in industrial or commercial

matters

- Use not taking Unfair advantage or being detrimental to the repute of

trademark

Difference between trademark infringement and passing

off.

The Trademark is providing protection to registered goods and

services, but the passing off action is providing a protection to
unregistered goods and services. Remedy is same in both cases. In
trademark infringement the plaintiff does not have to show anything

In passing off it is essential for the plaintiff to show that the disputed
mark has a distinctive identity for the user of plaintiff's goods or
services.

Remedies

Criminal remedies

First Offence - Section 103, 104

Fine - 50k 2L, Imprisonment -6 months - 3 years

Subsequent Offence - Section 105

Fine - 1L- 2L, Imprisonment -1-3 years

Various Criminal Remedies from Section 101-121

Civil remedies

Section 135 - Relief for infringement or passing off

- Injunction - Ex parte injunction or interlocutory order for:

o Discovery of documents

o Preserving of infringing other evidence goods,

documents or any

o Restraining the defendant from disposing off his assets.

-Damages

o Nominal damages only in cases of infringement of a

certification mark or collective mark or where defendant
satisfies the court that his intentions were not of deceiving

Section 134 - Suit shall be filled in No court inferior than District Court

Jurisdiction (Section 134)

A plaintiff can file a suit for trademark infringement in a district court
within the jurisdiction

Where the plaintiff is actually and voluntarily residing or carrying on

business or personally working for gain.

Where the defendant resides/carries on business or where the cause

of action arises.

Limitation Period - 3 years

 Protection of Geographical Indications

Industrial

property Patents

Industrial Designs
Intellectual property

Trademarks

Geographical
Indication
Copyright

Article 22 of the TRIPS Agreements defines Geographical Indication

as

"Indications which identify a good as originating in the territory of a

member, or a region or locality in that territory where a given quality,
reputation or other characteristic of the good is essentially attributable
to its geographical origin”

The term 'Geographical indication' is defined under Section 2(1)(e) of

Geographical Indication Act.

A registered Geographical Indication prohibits a third party to use such

Geographical indication by any means in the designations or
presentations of goods that indicate that such goods originate in a
geographical area.

Darjeeling Tea (2004) was India's 1st GI tag since then 300 plus
goods have been given Gi tag.

Karnataka is leading in filing of Geographical Indications with a total of

39 Geographical Indications registered till date followed by Tamil Nadu
and Kerala. The latest product from Karnataka to get Geographical
Indication Tag is Mysore Saree. Till now Karnataka has obtained
Geographical Indication tag for 19 handicrafts, 16 agricultural, 3
manufactured and one for food product.

Kadaknath Chicken - Chattisgarh, prices increased from 500 rs per kg

to 1000 rs per kg after getting Gl tag.

Geographical Indications of Goods (Registration and

Protection) Act, 1999

sui generis (unique) act

India enacted its GI legislations for the country to put in place national
intellectual property laws in compliance with India's obligations under
TRIPS.

Purpose

1. By specific law governing the geographical indication of goods in the

country which could adequately protect the interest of producers of
such goods,

2. To exclude unauthorized persons from misusing geographical

indications and to protect consumers from deception and,

3. To promote goods bearing Indian Geographical Indication in the

export market

The Geographical Indications of Goods (Registration & Protection) Act,

1999' (GI Act), and the 'Geographical Indications of Goods
(Registration and Protection) Rules, 2002 (GI Rules).

GI Act, came into force, along with the GI Rules (2002), with effect from
15 September 2003

A Geographical Indication is registered for a period of 10 years and the

registration may be renewed from time to time for a period of 10 years
at a time.

Geographical Indications Registry with all-India jurisdiction, at

Chennai
Geographical Indication defined under section 2 (1)(e)

"geographical indication", in relation to goods, means an indication

which identifies such goods as agricultural goods, natural goods or
manufactured goods as originating, or manufactured in the territory of a
country, or a region or locality in that territory, where a given quality,
reputation or other characteristic of such goods is essentially
attributable to its geographical origin and in case where such goods are
manufactured goods one of the activities of either the production or of
processing or preparation of the goods concerned takes place in such
territory, region or locality, as the case may be.

A GI is forbidden to be registered as a trademark (Section 25)

Geographical Indication is a public property so therefore it can't be

licensed, sold, assigned etc.

On death of an Authorised user of GI his right in registered GI will

transfer to his successor in Title (Section 24)

Section 6 - Register

The GI Registry with all India jurisdictions is located in Chennai GI

Register to be divided into two parts: Part A and Part B.

Part A has the particulars relating to the registration of the Gls.

Part B has particulars relating to the registration of the authorized

users.

Registration
While registration of Gl is not mandatory in India,

Section 20 (1) of the GI Act states that no person shall be

entitled to institute any proceeding to prevent, or to
recover damages for, the infringement of an
"unregistered" GI.

The registration of a Gl gives its registered owner and its authorized

users the right to obtain relief for infringement
Section 20 (2) says that nothing in this act shall be deemed to affect
rights of action against any person for passing off goods of
another person or the remedies in respect thereof

In India a Gl may initially be registered for a period of ten years, and it

can be renewed from time to time for further periods of 10 years.

Section 11 - Application - To registrar

Section 12 - Withdrawal of Acceptance

Section 13 - Advertisement of Application

Section 14 - Opposition to Registration

Section 15 - Correction and Amendment

Section 16 - Registration

Section 9 - Grounds of prohibition of Registration of Certain

Geographical Indications (7 grounds)

a) the use of which would be likely to deceive or cause confusion; or

b) the use of which would be contrary to any law for the time being in
force; or

c) which comprises or contains scandalous or obscene matter; or

d) which comprise or contains any matter likely to hurt the religious

susceptibilities of any class or section of the citizens of India; or

e) which would otherwise be disentitled to protection in a court; or

f) which are determined to be generic names or indications of goods

and are, therefore, not or ceased to be protected in their country of
origin, or which have fallen into disuse in that country; or

g) which although literally true as to the territory, region or locality in

which the goods originate, but falsely represent to the persons that the
goods originate in another territory, region or locality, as the case may
be, shall not be registered as a geographical indication.

Remedies for Infringement and Passing off

Infringement - Section 22

Jurisdiction - District court or higher

Limitation - 3 years

• Civil action in case of infringement or passing off of a registered

Geographical Indication.

o Injunction

o Discovery of documents.

o Damages or accounts of profits.

o Delivery-up of the infringing labels and indications for destruction or

erasure.

• Criminal action in case of falsification and false application of

Geographical Indications,

o 6 Months - 3 years; 50k to 2 lakhs fine

o in special cases court may give fine less than 50K and imprisonment
less than 6 months.

Biodiversity and Traditional Knowledge

New varieties of Plants

Under Article 27 (3) of TRIPS Agreement countries have the choice

to give the new variety of plant a patent or make a sui generis law for
its protection

International Union for the Protection of New Varieties of Plants or

UPOV
(French: Union internationale pour la protection des obtentions
végétales)

The Convention was adopted in Paris in 1961

Objective is to provide protection to new varieties of plants as

intellectual property.

So that plant breeders get encouragement for development of new

varieties of plants for the benefit of society

UN convention on biological diversity (CBD)

Signed IN Rio Dio Janerio in June 1992

Came into force on 29th December, 1993

196 parties

The Protection of Plant Varieties and Farmer's Rights

Act, 2001

Provisions of the act are regarding

- Protection of plant varieties

- Protection of rights of farmers and plant breeders

-Encourage development and cultivation of new varieties of plants

-Benefit sharing and compensation for traditional rural and tribal

communities

-Protecting traditional rights of farmers.

Biological Diversity Act, 2002

-Enacted to meet obligations under CBD
- For preservation of biological diversity in India, and provides
mechanism for equitable sharing of benefits arising out of the use of
traditional biological resources and knowledge

-To secure sharing of benefits with local people as conservers of

biological resources and holders of knowledge and information relating
to the use of biological resources

- Protection and rehabilitation of threatened species;

- Involvement of institution of self-government in the broad scheme of

the implementation of the Act through constitution of committees.

- Free access to biological resources for use within India for any
purpose other than commercial use for Indian people.

-free access to the Indian citizens to use biological resources within the
country for research purposes.

Punishment under section 58 for unauthorised use of biological

resources and doing biopiracy

Imprisonment up to five years, fine up to 10 lakhs, more

if the damage is more than 10 lakh rupees

Traditional knowledge

Article 8 (j) of Convention of biological Diversity (CBD) talks about

traditional knowledge

Traditional knowledge is the driving force for income for many people in
developing countries.

It is more affordable than the modern alternatives. Example Healthcare

(Ayurveda, Siddha medicine of Tamil Nadu, Unani Medicine, Yoga etc.)

Traditional knowledge refers to knowledge as such, in particular the

knowledge resulting from intellectual activity in a traditional context,
and includes know-how, practices, skills, and innovations. Traditional
knowledge can be found in a wide variety of contexts, including:
agricultural, scientific, technical, ecological and medicinal knowledge
as well as biodiversity-related knowledge.
TKDL - Traditional Knowledge Digitial Library

Database of traditional medicine systems in India in 2001 - Ayurveda,

Siddha, Unani, Yoga etc.

Made by a collaboration of AYUSH (Ayurvedic, Yoga and Naturopathy,

Unani, Siddha and Homeopathy) and CSIR (Council of Scientific and
Industrial Research)

According to a study more than 2000 patents were given in the world
which were based on Indian system of medicines. The main reason for
that was most traditional knowledge of these medicinal systems is in
local languages and patent examiners can't access or consider them.
Patents were given for wound healing properties of Turmeric and
antifungal properties of Neem. Both of these knowledges existed as
traditional knowledge in India since forever (Dadi nani ke time se, aur
unki bhi dadi nani ke time se)

TKDL has converted and structured ancient texts into 34 million A4-
sized pages along the lines of a patent application. These have been
translated into English, French, German, Japanese and Spanish.

So TKDL is made to give a comprehensible platform for such

knowledge to be considered prior art and sop bio piracy

Dhanpath Seth and Ors. v. Nil Kamal Plastic Crates Ltd.,

(AIR 2008 H.P. 23)

Patent for device which was used for manual hauling of agriculture
produce was owned by Plaintiff, he filled suit far injunction against the
defendants for using that patented device.

The Device was proved to be made by using traditional knowledge So

the plaintiff was not given the injunction he sought but as he owned the
patent some other measures were taken if in case, he succeeds a
future suite
IMPORTANT CASE LAWS

Copyright

R.G.Anand v. Delux Films, (1978)

Copyright protects the expression of Idea not the idea itself.

Appellant created a play called 'Hum Hindustani (1953) which was a

very successful play. Appellant narrated the entire play to respondent
and there were plans to film the play in January 1955, after that no
communication between appellant and respondent occurred. Later the
respondent carried on with the film "New Delhi (1954)"

The appellant filed for copyright infringement.

The Court clarified the following important aspects in this case-

1. There can be no copyright in an idea, subject matter, themes, plots

or historical or legendary facts and violation of the copyright in such
cases is confined to the form, manner and arrangement and
expression of the idea by the author of the copyrighted work.

2. It has to be seen whether similarities are fundamental or substantial

aspects of the mode of expression adopted in the copyrighted work.
Copying should be substantial or material one.

3. Test: Whether the viewer after having read or seen both the works is
clearly of the opinion and gets an unmistakable impression that the
subsequent work appears to be a copy of the original.

4. Where theme is same but presented differently, there can be no

question of infringement.

5. If there are material and broad dissimilarities along with similarities, it

negatives the intention to copy the original work. If the coincidences
appearing in the work are clearly incidental then there can't be
infringement.

6. If the viewer after the incident gets the idea that the film is by and
large a copy of the original play, violation of the copyright may be said
to be proved

7. Burden of proof is on the plaintiff in cases where a stage play has

been infringed by a movie director
After applying the principles enunciated above the court ruled that it
cannot be said that the film is a "substantial or material copy of the play
written by the plaintiff." the judges were of the opinion that no prudent
person after seeing both the works will get the impression that there is
a copy

Nav Sahitya Prakash and Ors. vs Anand Kumar and Ors.

Registration of Copyright is not mandatory, it will always help to

register but it is not mandatory

Eastern Book Company and others v. DB Modak (2008)

Appellants were involved in the printing and publishing "supreme court

cases", Respondents published these judgements through their
softwares on CD-ROM's. Appellants filled suit for copyright
infringement.

Court held that though the respondent may publish any text of the
original judgement given by the Supreme Court, but they can’t copy
any of the extra content which the appellant added.

The Supreme Court prompted 'creative originality' and laid down the
new test to protect the creation on basis of the minimal creativity. This
doctrine stipulates that originality subsists in a work where a sufficient
amount of intellectual creativity and judgment has gone into the
creation of that work.

Indian Performing Rights Society v. Eastern Indian

Motion Pictures Itd (1977)

If a producer has hired under contract of service a musician, a lyricist

or any other such professional for a production and there is no other
agreement about ownership of the copyright of the production, then the
producer who hired such professionals for a consideration under
contract of service will be the absolute owner of the production.

Krishika Lulla v. Shyam Vithalrao Devkatta, (2016)

Desi Boys v. Desi Boyz, too common a name to be given protection.

Anil Gupta v. Kunal Dasgupta (2002)

Idea of show 'Swayamvar', copied into 'Shubh Vivah' despite of a

confidential agreement being there when the idea was shared. Court
said the concept of show was unique and novel and thus is protected
under Copyright.

Pepsico Inc.v Hindustan Coca Cola (2001).

Slogan 'Yeh Dil Maange More' registered as a copyright by Pepsico

used by Coca Cola Court Held Slogans not protected under copyright,
they can be protected under Trademarks though.

Gramophone Co. of India Ltd. V. SuperCasette

Industries, (1996)

Remixing songs if done with skill and labour and with due permission of
the original owner of song, can be given protection. A remix is an
example of a Derivative Work. A derivative work adapts or modifies an
existing work, That Derivative work is given its own copyright.
Permission has to be obtained from the original copyright owner.

Raghunathan v. All India Reporter, (1971)

Head Notes of Law Reports are literary works, because they require
skill and art.

V.T. Thomas and Ors. vs Malayala Manorama Co. Ltd.

(1989)

Cartoon named 'Boban and Molly, which was created before starting
employment at Manorama so the copyright is held by V.T Thomas and
not the employer.

Taj Television v. Rajan Mandal (2003)

First case to use John Doe' order

Jon Doe order - Remedy used when the person committing the
breach is not known. 'jon doe' is used to denote those persons in U.S.A
and

U.K, in india the name 'Ashok Kumar' has been used. In this case the
Issue was of unauthorized telecasting of Fifa world Cup 2002 on cable
networks.

Trademark
Imperial Tobacco v. Registrar, Trademarks (1977)

Trademark should be Distinct. The word Simla was asked as a

trademark and was refused by the court.

" Word 'Simla' which forms the essential and distinguishing feature of
the mark is a famous geographical name and is not registrable except
on very strong evidence of distinctiveness. No such evidence is
possible as the mark is proposed to be used."

Celador Productions Ltd. vs Gaurav Mehrotra & Anr.

(2002)

Domain names (Websites) also in ambit for trademark.

Dispute regarding not using anything related to 'Kaun Banega

Crorepati'. Court restrained the defendants from directly or indirectly
running any website using the name 'crorepatikaun' or anything related
to 'kaun banega crorepati.

Yahoo!, Inc. V. Akash Arora and Anr.

Plaintiff was the owner of 'Yahoo!' trademark, defendant owned

website named 'Yahoolndia' which was made for similar services as
plaintiff.

This satisfies the situation of passing off the trademark of plaintiff by

the defendant Injunction was granted in favour of plaintiff.
Betco Enterprises and another v. Pradhan
perfumes and another
Trademark exists independently of the registration; registration is just
an extra evidence for protection.

Honda Motors Co. Ltd. V. Charanjit Singh & Others.

Plaintiff had trademark for 'HONDA' for automobiles, Defendants was

using 'HONDA for pressure cookers. Plaintiff brought action against
defendants for passing of their business

Court held that HONDA pressure cookers are not an honest adoption
and will likely cause confusion in mind of public so therefore application
of plaintiff was allowed.

Reckitt & Coleman Ltd. V. Borden Inc.

Three Basic elements of Passing of are Reputation, Misrepresentation,
Damage which was called as Classical Trinity

S. Sayed Moideen v. P.Sulochana bai (2005)

A right over registered trademark is not absolute, subject to rights of
prior user for passing off

Patents

Novartis V. Union of India (2013)

Ever Greening of Patents

Issue was rejection of patent of anti-cancer drug 'Glivec by the patent

office

Patent application was filled in 1998 after which product patent were
also allowed, earlier only process patent was allowed.

Madras patent office rejected the patent because it failed to satisfy the
condition of novelty.

It stated that the Drug didn't show any major changes in therapeutic
efficacy over its pre-existing form i.e. Zimmermann patent. The matter
went to IPAB (Intellectual Property Appellant Tribunal) in 2007 and it
also rejected it.

The reasoning of IPAB was that it couldn't allow ever greening of

patents. (Introducing minor changes to already patented item)

Novartis filled SLP (Special leave petition) under Article 136.

Supreme Court decided this case de novo De novo - Latin for

"anew."
which means
starting over, as in
a trial de novo. Fo

Supreme Court of India rejected the appeal filed by Novartis and

upheld that the beta crystalline form of Imatinib Mesylate is a new form
of the known substance i.e., Imatinib Mesylate

Supreme Court made it crystal clear that in the case of medicine

"Efficacy" in section-3(d) only means "Therapeutic Efficacy" and states
that all properties of drug are not relevant, the properties which directly
relate to efficacy in case of medicine is its therapeutic efficacy.

And in this case Novartis has not shown that the therapeutic efficacy of
"Beta Crystalline form of Imatinib Mesylate" is more compared to the
efficacy of "Imatinib Mesylate"

The judgment given by the Hon'ble Supreme Court is to prevent the

ever-greening of patented products and gives relief to those who can't
afford the lifesaving drug as these pharmaceutical companies sell such
lifesaving drugs at a very high price hence unaffordable for the
common man.

F. Hoffmann-La Roche Ltd vs. Cipla Ltd.

Ever Greening of Patents

First patent litigation after 2005 amendment

Ever greening of patents, Section 3(d)

Roche (Multinational) - Cipla (National generic company)

Roche filled the suit against cipla for infringing their patent on a drug
which cipla was selling for 1/3 of the price
Court found out that the drug was a different variant of a similar drug in
market with no increase in efficacy. So, in interest of public and
because of section 3(d) their claim against cipla was rejected

Bajaj Auto Limited v. TVS Motor Company Limited (2008)

4-month time limit

Doctrine of Pith and Marrow also called the Doctrine of Equivalents

The Doctrine of Equivalents, sometimes referred to as "DOE" is a

remedy that has its basis in equity, and the underpinning of the
doctrine is that there could be an infringement of a patent when a
subsequent infringing device is deemed to be an equivalent to the
claims of an existing patent.

A patent holder invokes this doctrine against a device (or a process in

the case of process patents) if the device in question "performs
substantially the same function in substantially the same way to obtain
the same result".

This Case law is regarding unauthorized application of the patent of

DTSI Technology.

Bajaj wanted damages and also injunction for sale/marketing of the

new 125cc Flame bike because it used their patented DTSi technology.

Supreme Court observed that the plaintiff was asking for the Injunction
for last 2 years and directed all courts and tribunals in the country to
resolve IPR related disputes by hearing them on day-to-day basis and
resolve the dispute in 4 months at max.

Dr. Snehlata C. Gupte v. Union of India (2007)

Date of grant of Patent

The patent Act has a gap in the process in between the Grant of Patent
and the issuance of patent certificate.

The court held that the date of the grant of a patent is the date on
which the controller passes an order to that effect on the file i.e., on the
day in which the Controller makes a decision to grant a patent. The
issue of a certificate at a later date is then nothing more than a mere
formality
Bayer Corporation Vs. Union of India (2009)

Compulsory License

On March 9, 2012, the Indian Patent Office granted its first Compulsory
License to Natco Pharma Ltd. for producing generic version of Bayer
Corporations's patented medicine nexavar (sorafenib tosylate ) which is
used in the treatment of liver and kidney cancer.

Bayer used to charge INR 2.8 Lakh for a month of course for the
medicine.

Natco Promised to charge INR 8800 (3% of Bayer's price) only

Natco was ordered to pay 6% of the net sales of the drug to Bayer.
Natco was only allowed to manufacture the drug at their own
manufacturing facility, can only sell in India, and had to supply this drug
free of cost to at least 600 needy patients free of cost every year.

Bayer filed suit in Intellectual Property Appellate Board (IPAB) for stay
on the license.

Their contention was that the Compulsory license was illegal and
unsustainable.

The claim was rejected, Bayer filled an appeal to Controller General.

The Board stated that the invention must be available to the public at a
reasonably affordable price and if not, compulsory licence can be
issued and observed that the Sub-sections (a), (b) and (c) of Section
84(1) are separated by the disjunctive 'or' and therefore, even if one
conditions satisfied, the Controller will be well within his rights to order
compulsory licence.

On the percentage of royalty that was to be paid by the Respondent to

the Appellant (6% that was fixed by the Controller), IPAB increased it
by 1 percent but did not change any other terms and conditions of the
licence.

The IPAB dismissed the appeal and confirmed the grant of Compulsory
license stating that it has dealt with each of the issue in detail in view of
the significance of the order of compulsory licence made in India for the
first time.