Module 4

Copyrights and Related Rights

Syllabus:

Copyrights and Related Rights: Classes of Copyrights. Criteria for Copyright. Own-
ership of Copyright. Copyrights of the Author. Copyright Infringements. Copyright
Infringement is a Criminal Offence. Copyright Infringement is a Cognizable Offence. Fair
Use Doctrine. Copyrights and Internet. Non-Copyright Work. Copyright Registration.
Judicial Powers of the Registrar of Copyrights. Fee Structure. Copyright Symbol. Valid-
ity of Copyright. Copyright Profile of India. Copyright and the word ‘Publish’. Transfer
of Copyrights to a Publisher. Copyrights and the Word ‘Adaptation’. Copyrights and the
Word ‘Indian Work’. Joint Authorship. Copyright Society. Copyright Board. Copyright
Enforcement Advisory Council (CEAC). International Copyright Agreements, Conven-
tions and Treaties. Interesting Copyrights Cases.
Trademarks: Eligibility Criteria. Who Can Apply for a Trademark. Acts and Laws.
Designation of Trademark Symbols. Classification of Trademarks. Registration of a
Trademark is Not Compulsory. Validity of Trademark. Types of Trademark Registered
in India. Trademark Registry. Process for Trademarks Registration. Prior Art Search.
Famous Case Law: Coca-Cola Company vs. Bisleri International Pvt. Ltd.
Textbook :
Intellectual Property A Primer for Academia by Prof. Rupinder Tewari Ms. Mamta
Bhardwaj
Reference Book:
Intellectual Property Rights by N.K.Acharya Asia Law House 6th Edition. ISBN: 978- 93-
81849-30-9.

125
 Copyrights and Related Rights

Copyrights :
‘Copyrights’ refer to the legal rights provided by law to the original creator of the work
in the fields of literature and computer software. The ’Related Rights’ encompass the
au- thor’s work in the fields of dramatics, sound recording, film/video recordings,
paintings, architecture, etc.
Copyrights and Related Rights as Categories of IP:
Copyrights and Related Rights are one of the categories of IP and governed by the Copy-
right Act, 1957 of India. This Act provides rights of reproduction, communication to the
masses, adaptation, and translation of the work.

Classes of Copyrights(Types or Categories)

In India, following classes of Copyrights exist:

1.Literature

Books, Essays, Research articles, Oral speeches, Lectures, Compilations

Computer programme, Software, Databases

2.Dramatics

Screenplays

Dramas

3. Sound Recordings
Recording of sounds regardless of the medium on which such recording is made, e.g., a
Phonogram and a CD-ROM.
4. Artistic

Drawing, Painting, Logo, Map, Chart, Photographs

Work of Architecture, Engravings, and Craftsmanship

5. Musical
Musical notations, excluding any words or any action intended to be sung, spoken, or
performed with the music. A musical work need not be written down to enjoy Copyright
protection.
6. Cinematograph Films
‘Cinematograph Film‘ is a visual recording performed by any medium, formed through a
process and includes a sound recording. For example, Motion Pictures, TV Programmes,
Visual Recording, Sound Recording, etc.
Key Terms Author and Work in Copyrights :

The words ‘author’ and ’work’ need to be understood from the perspective of Copy-
rights. The term ’author’ refers to an individual who develops the content (of work).
The author can be a writer (literary work), computer programmer (software), com-
poser (musical work), producer (cinema films, sound recording), photographer (pho-
tos).

The term ’work’ is a task undertaken in the fields of literature, dramas, music,
artistic, cinematograph film, and sound recording.

Criteria for Copyright

1. Qualification for Copyright Protection

To qualify for Copyright protection, a work must exist in some physical (or tangible)
form. The duration of the existence of the physical form may vary from a very short
period to many years. Virtually any form of expression which can be viewed or listened
to is eligible to qualify as Copyright. Even hurriedly scribbled notes for an impromptu
speech are considered copyrightable material.
2. Originality and Original Work of Authorship (OWA)
The Copyright work has to be expressed by the creator in his frame of thought. In other
words, the work has to be original, i.e., the author created it from independent think-
ing void of duplication. This type of work is termed as an Original Work of Authorship
(OWA). It may appear similar to already existing works but should not be the same. The
original work may lack quality or quantity or aesthetic merit or all these parameters;
still, it will pass the test of copyrightable work.
3. Creative effort: In addition to originality for the work, Copyright protection also re-
quires at least some creative effort on the part of the author. There is no minimum limit
for the extent of creativeness; it is a subjective matter. The minimal level of creativity
needed for Copyright protection depends on the judgment of the evaluator (adjudicated
by the Office of Registrar of Copyright).
As an example, mere changing the dimensions of a book will not be granted Copyright
protection. Similarly, an address book of alphabetically arranged telephone numbers does
not qualify for Copyright protection as it involves a straightforward alphabetical listing
of phone numbers rather than a creative selection of listings.

Ownership of Copyright

1. Ownership of Copyright
The Copyright laws clearly state the ownership of Copyright.

The person who created the work is considered as the first (original) holder (owner)
of the Copyright.

In case the author is an employee and has been contracted to do the work by
a proprietor (of the company/firm/society/organization, etc.), the owner of the
Copyright shall be the proprietor.

The government will be the primary owner of the government work in the absence
of any kind of arrangement.

The person delivering a speech is the first owner of the Copyright.

2. Obtaining Permission to use Copyrighted Material

To obtain permission to use copyrighted material, a request should be made to the legal
owner (of the copyrighted material), which could be the original author, the legal heir
(in case of the death of the author), publisher, etc. The request must mention the
following:

Title, author and/or editor, and edition.

Precise material to be used.

The number of copies.

The purpose of the material (e.g., educational, research, etc.).

Form of distribution (e.g., hard copy to classroom, posted on the internet).

Whether the material is to be sold (e.g., as part of a course pack).

 Copyrights of the Author

The Copyrights of the creator/author are legally protected under Section 14 of the Copy-
right Act, 1957. The content (i.e. work) created by the author cannot be used or published
by anyone without the author‘s consent. Copyrights provide exclusive rights to the
author in the areas of publication, distribution, and usage. A Copyright owner enjoys
two types of rights i.e. Economic Rights (or Proprietary Rights) and Moral Rights (or
Personal Rights).
1. Economic Rights
Economic Rights are associated with financial benefits accruing from the sale of copy-
rights. As per the Act, Copyright owners can authorize or prohibit:

Reproduction of the work in any form, including printed publications or sound

recordings.

Distribution of copies of the work.

Public performance of the work.

Broadcasting/communicating the work to the public.

Translating the work into other languages.

Adaptation of the work, such as converting a novel into a screenplay.

2. Moral Rights :
Moral Rights include ‘Right of Paternity’ and ‘Right of Integrity’.

The ‘Right of Paternity’ - even if the Copyright has been licensed to another party,
the original author of the work retains the right to claim authorship i.e. the name of
the author/s will remain even though Copyrights have been transferred to another
party e.g. a book publisher.

The ‘Right of Integrity’ - the original author has the right to prevent misuse of the
work e.g. alterations/additions/deletions in work resulting in misrepresentation of
the said work or harming the honor and reputation of the author.

Multiple Rights Holders

It is pertinent to mention that for a work, there can be more than one rights holders, for
instance, a musical sound recording has many rights holders, such as the lyricist, music
composer, singer, musicians and sound recorders.
 Copyright Infringements

1. Which acts are Copyright Infringements?

As per the Copyrights Act, 1957, the following acts are regarded as an infringement of
Copyrights:

Making copies for sale or hire or selling or letting them for hire without permission.

Permitting any place for the performance of owned work (in public) where such
performance constitutes an infringement of Copyright.

Distributing infringing copies for trade or to such an extent to affect the interest of
the owner of the Copyright prejudicially.

Public exhibition of infringing copies for trade purposes.

Importation of infringing copies.

Translating a work without the permission of the owner.

2. Liability of Owner of an Auditorium/Hall

The owner of an auditorium/hall is liable for punishment if he knowingly allows his
premises to be used for communication of illegal copyright material (songs, music, dramas,
etc.) to the public. If a person permits for profit any place to be used for communicating
the work to the public, where such communication establishes an infringement of the
Copyright unless he was not aware of and had no reasonable ground for believing that
such communication to the public would be an infringement of Copyright, he will be
deemed to have committed an offence under the Copyright Act.
3. Copyright Infringement is a Criminal Offence
According to Section 63 of the Copyright Act, 1957, if any person knowingly infringes
the Copyright, he qualifies for the criminal offence. The punishment awarded for the
infringement (of Copyright) is imprisonment for six months with the minimum fine of
Rs 50,000/-. In case of a second and subsequent conviction, the minimum punishment is
imprisonment for one year and a fine of Rs 1,00,000. There is a dedicated IP division to
deal with Copyright cases. Also, there is a Copyright Board constituted by the Central
Government in 1958 to adjudicate certain claims about Copyright.
4. Copyright Infringement is a Cognizable Offence
A police officer (rank of a sub-inspector or higher) can confiscate the infringed Copyright
material without issuing a warrant and produce the same in the court of law.
 Fair Use Doctrine

1. Fair Use Doctrine :

Any person not possessing a valid license from the owner of the Copyright is not entitled
to exploit the said work. However, Section 52 of the Copyright Act, 1957, provides for
certain exceptions to the infringement of Copyright. As per the rule of law, Copyrighted
materials cannot be used by anybody without the proper consent of the legal owners (of
the Copyright).
2. The Fair Use Doctrine - Four-Part Test:
However, limited use of Copyrighted materials for teaching and research purposes is legally
permitted, under ‘The Fair Use Doctrine‘, which comprises of the four-part test:

1. The character of the use - use of the work is purely educational, non-profit and
personal.

2. Nature of the work - The use of work is factual in nature and not imaginative.

3. Amount of the portion to be used - permission is not needed if only a small

portion of Copyright protected material is to be used. However, this parameter is
debatable now.

4. Impact of use on the value of the Copyrighted material - If a small portion

of the work is copied and is not affecting the author‘s economic and moral rights,
it will be excused from the infringement.

3. Fair Use Doctrine Examples :

Detailed information on the examples of the Fair Use Doctrine can be accessed from
the official website (http://copyright.gov.in/exceptions.aspx). A few examples are
listed below:

If the Copyrighted work is used for personal use i.e. studies or research.

Quotation mentioned in the Copyrighted work.

Reporting of current events in the media, such as newspapers, magazines or ra-

dios/television.

Reproduction of the work by teachers or scientific researchers.

 Performance is free of charge by government officials in the performance of their
duties e.g. reproduction of any work for a judicial proceeding or a report of a
judicial proceeding.

Use of any work prepared by the Secretariat of a Legislature.

Use of the work in a certified copy made or supplied in accordance with any law for
the time being in force.

Making three or less than three copies of a book (including a pamphlet, sheet of
music, map, chart or plan).

Bonafide religious ceremony, including a marriage function.

Copyrights and Internet

1. Challenges in the Digital Era :

The twenty-first century is an era of digitization. The Copyrighted data is quickly trans-
mitted via the internet. This method of data transmission has brought amendments to
the existing Copyright laws. One should be careful of Copyright/fair use principles when
downloading material from the internet. There is growing concern about the ability to
pull Copyrighted material from the internet without permission. Note that material may
have been placed on the internet without the author‘s permission.
2. Internet Use and Copyright:
In general, posting material on the internet by the Copyright owner gives an internet
user the right to use that material for his personal use, but he cannot use the work for
commercial purposes. Electronic distribution of a Copyrighted work should mention the
statement that —This work is protected by Copyright laws and is provided for educa-
tional instruction only. Any infringing use may be subject to disciplinary action and/or
civil or criminal liability as provided by law”.
3. Inclusion of Computer Programmes in Literary Work :
As per Section 2(o) of the Copyright Act, 1957, ‘Literary Work‘ includes computer pro-
grammes, tables and compilations, including computer databases. It is mandatory to
supply ‘Source Code‘ and ‘Object Code‘ along with the application for registration of
Copyright.
 Non-Copyright Work

Works which are exclusions from Copyright Protection :

The works not under the jurisdiction of Copyrights are as follows:

Exclusion of Copyright for Ideas, Concepts, and Principles :The ideas,

concepts, and principles themselves cannot be protected under Copyright, only
the form in which they are expressed can be copyrighted.

Exclusion of Copyright for Facts and Discoveries Facts, such as scientific or

historical discoveries, are not copyright protected. Any fact a person discovers in
the course of research cannot be Copyright protected. For example, an author of a
book on ‘Buddhism‘ takes ten-fifteen years to gather all the necessary materials
and information for his work. At a great expense, the author travels to various
museums, libraries and excavations sites. However, after the book is published,
anyone is free to use the underlying facts, provided they express the information
on their own.

Non-Copyrightable Elements : Copyright does not protect titles, names, slo-

gans, short phrases, short word combinations, methods, or factual information.

Certificates : Certificates are not considered as Copyrightable subject matter as

there is not much scope for creativity.

Digital Works: Digitally created works and Copyrighted works transformed into
a digital format and placed on the internet are Copyright protected.

Copyright Registration for Websites and Apps: Copyright registration for a

website as a whole is not possible. However, different components/rudiments can be
granted Copyright registration. e.g. computer programmes/software, compilations
including computer databases (’literary works’ ); photographs, paintings, diagram,
map, chart or plan (’artistic works’ ); and works consisting of music including graph-
ical notation of such work (’musical works’ ). However, a separate application for
each component of work has to be filed for seeking Copyright registration.

Copyright Registration for Computer or Mobile Apps : A computer or

mobile App qualifies for Copyright registration. An Application is a complete, self-
contained computer program that is designed to perform a specific task. An App
usually has dynamic content and is designed for user interaction. It may be used
 directly or indirectly in a computer or handheld electronic device.

Copyright Infringement: Unauthorized Use of Digital Content If someone

swipes your picture/song/video from the internet and uses it for their purposes, it
is a Copyright infringement. By the way - the same is true if you nick some else‘s
material for your purposes.

Copyright Registration

1. Automatic Copyright Protection:

It is not necessary to register a work to claim Copyright. Once a work is created via any
medium, the work receives automatic Copyright protection. In other words, there is no
formal request to be submitted to the office of the Copyright for acquiring Copyright.
The act of creation itself grants the creator inherent Copyright rights to their work.
2. Role of Copyright Registration :
Copyright registration itself does not grant any new rights to the creator; rather, it
serves as prima facie proof(In legal terms, ”prima facie” means that, on the face of it or
at first glance) of an entry in respect of the work in the Copyright register maintained by
the Registrar of Copyrights. The certificate of registration serves as prima facie evidence
in a court in cases of disputes relating to ownership or creation of Copyright, financial
matters, transfer of rights, etc.
3. Copyright Registration Advice:
It is advisable that the author of the work registers for Copyright for better legal pro-
tection. In India, Copyright matters, including Copyright registration, are administered
under the Copyright Act, 1957, and Copyright Rules, 2013.
4. Prominent Forms for Copyright Registration
Prominent forms for copyright registration can be accessed on the official website: https:
//copyright.gov.in/. FORM No. XIV is used for an application for copyright registra-
tion under section 45 of the Copyright Act, 1957. It includes a request for the Registrar
of Copyrights to make entries in the Register of Copyrights based on the enclosed
statement of particulars, and it declares that, to the best of the applicant’s knowledge,
there are no other claims or disputes regarding the copyright of the work. The
”Statement of Par- ticulars” in this form provides detailed information for copyright
registration, including the registration number, applicant details, nature of interest, class
and description of the work, title, language, author information, publication details,
rights owners, authorized
persons, and additional details specific to artistic works, such as location, registration
under the Designs Act 2000, and industrial reproduction information.
5. Judicial Powers of the Registrar of Copyrights:
The Registrar of Copyrights has the powers of a civil court when trying a suit under the
Code of Civil Procedure in respect of the following matters:

Summoning and enforcing the attendance of any person and examining him on oath.

Requiring the discovery and production of any document.

Receiving evidence on affidavit.

Issuing commissions for the examination of witnesses or documents.

Requisitioning any public record or copy thereof from any court or office.

Any other matters which may be prescribed.

6. Application Submission
A completed application (Form XIV) for copyright registration can be submitted to the
Copyright Office at the address: The Registrar of Copyright, Plot no. 32, Boudhik
Sampada Bhawan, Sector 14, Dwarka, New Delhi - 110075. The submission can be
made by post or through the online registration using the ’E-filing facility’ available at
www.copyright.gov.in. Eligible applicants, whether authors of the work or assignees of
the work, can file the copyright application.
7. Application Evaluation
Usually, it takes around 2-3 months to get the work registered by the Copyright Office.
After applying, there is a mandatory waiting period of 30 days. If any person has any
objection to the claim/s made in the application, he can contact the office of the Registrar
of Copyrights. After giving an opportunity of hearing to both the parties, the Registrar
may decide the case in favor or against the author of the work. Once the objections (if
any) are cleared, the application is evaluated by the examiners. If any doubts/queries are
raised, the applicant is given ample time (around 45 days) to clear these objections.
The elements included in Copyright filing to grant are depicted below in the flow chart:
 Important Copyright Forms :

Name of Form Form No.

Application for registration of Copyright Form-XIV
Application for registration of changes in particulars of Copyright Form-XV Source:
Registration of a Copyright Society Form-VIII
Application for the relinquishment of Copyright Form-I
http://Copyright.gov.in/frmformsDownload.aspx

Fee Structure

For each work, a separate application form needs to be submitted, along with the requisite fee. The fee
is not reimbursable in case the application for registration is rejected.
Attributes and Fee :

Application for registration of Copyright (Literary, Dramatic, Musical, or Artistic work): Rs 500
 per work

Application for registration of Copyright in a Cinematograph Film: Rs 5,000

Application for registration of Copyright in a Sound Recording: Rs 2,000

Making any change in Literary, Dramatic, Musical, or Artistic work: Rs 200

Making any change in a Literary or Artistic work used in relation to goods or services: Rs 1,000

Application for change in particulars of Copyright in a Cinematograph Film: Rs 2,000

Application for change in particulars of Copyright in a Sound Recording: Rs 1,000

Application for prevention of importation of infringing copies per place of entry: Rs 1,200

Copyright Symbol

It is not necessary to place the Copyright symbol with your name and ‘year created’ near your published
or printed materials - but if you do, it‘s easier to nail someone for infringement on your Copyright if you
go to court. The important things which may be mentioned as a Copyright mark on Copyright creation
are:

The Copyright symbol (the letter C in a circle), or the word. ‘Copyright’, or the abbreviation
‘Copr.’

In the case of compilations or derivative works incorporating previously published material, the
year with the date of the first publication of the compilation or derivative work should be
mentioned. The year date may be omitted for pictorial, graphic, sculptural work, greeting cards,
postcards, stationery, jewellery, dolls and toys.

The name or the abbreviation by which the name can be recognized of the owner of the Copyright,
or a generally known alternative designation of the owner can be mentioned.

The elements for sound recordings generally require the same three elements, except the symbol
is (the letter P in a circle) instead.

Validity of Copyright

In general, the validity of Copyright is for 60 years. This period starts either from the year after the death
of the author (in case of literature, dramatic, musical and artistic works) or from the date of publication
of the work (in case of cinematograph films, sound recordings, photographs, posthumous publications,
works of government and works of international organisations).
 Copyright Profile of India

A comparative five years (2015-20) study revealed a gradual increase in the number of Copyright appli-
cations in the first four years of the study, with a maximum number of applications (21,905) recorded in
the 2019-20 period. The number of applications examined was maximum (34,388) in 2017-18. However,
it tapered down to 22,658 in 2018-19 and 19,460 in 2019-20. A similar trend was observed in the number
of Copyright registrations, with a peak (19,997) observed in 2017-18.

Copyright and the word ‘Publish’

Key Terms Author and Work in Copyrights :

The words ‘author’ and ’work’ need to be understood from the perspective of Copyrights. The
term ’author’ refers to an individual who develops the content (of work). The author can be
a writer (literary work), computer programmer (software), composer (musical work), producer
(cinema films, sound recording), photographer (photos).

The term ’work’ is a task undertaken in the fields of literature, dramas, music, artistic, cinemato-
graph film, and sound recording.

Copyright and the word ‘Publish’ :

A work is considered published when it is in the public domain on an unrestricted basis.

For example, if a person writes an article called ’Life in Himalayas’ and distributes it with restric-
tions on disclosure, it is not considered published in the Copyright sense.

If the author removes the condition of non-disclosure or posts the article on the internet (i.e.,
public domain), it would be considered as published.

It is to be noted that both published and unpublished works can be registered under Copyright.

Transfer of Copyrights to a Publisher

The original authors of the Copyrighted work may not have the wherewithal(i.e.the resources or financial
capability ) to widely publicise their work. Usually, they transfer their rights to publishers for financial
benefits, which could be a one-time lump sum amount or royalties or a combination of the two.
Repercussions of Unconditional Transfer :
However, transferring Copyrights unconditionally to the publishers (or anybody else) may have some
repercussions for the owner of the Copyright. A publisher may prevent author/s from displaying their
articles on the institute‘s websites. The new owner of Copyright may not even allow the author to revise
his work. In other instances, a publisher might print an insufficient number of hard copies and also does
not show interest in uploading the soft copy of the work on the internet. Hence, one must be careful in
signing an agreement with the publishers.
Selective Rights Transfer :
The author may not transfer all the legal rights bestowed upon him as an author. An agreement may be
signed permitting only the print and sale of hard copies by the publishers while retaining digital rights
for the said work. An author may also put a time limit for the printing and sale of the books/articles,
etc.
Changing Landscape with the Internet Era :
Before the digital era, authors used to rely completely on publishers for the dissemination of their work.
However, in the internet era, the dependency on publishers has almost diminished. The author is in a
position to bypass the publishers and bring his work into the public domain. But this freedom cannot be
enjoyed by those who are already under the publishing contract.
Statutory Termination Right :
Even though the author has completely and exclusively licensed out his work, the Copyright Act has
a provision under ‘termination of transfer’ to reclaim his Copyright. Under this provision, certain
Copyright agreements can be terminated after 35 years of the agreement. This statutory termination
right applies even though it is not incorporated in the agreement.
Author’s Caution :
It is strongly advised that authors must apply their mind while signing the Copyright agreement.

Copyrights and the Word ‘Adaptation’

In the world of Copyright, the word ‘Adaptation‘ signifies the creation of a similar work based upon
contemporary work. The Copyright Act defines the following actions as adaptations:
Actions Considered as Adaptations :

1. Transformation of a dramatic work into a non-dramatic work.

2. Changing a literary or artistic work into a drama.

3. Re-arrangement of a literary or dramatic work.

4. Depiction through pictures of a literary or dramatic work.

5. The making of a cinematograph film of a literary or dramatic or musical work.

Copyrights and the Word ‘Indian Work’

‘Indian work‘ means a literary, dramatic, or musical work provided

1. The author of the work is an Indian citizen.

2. The work is first published in India.

3. In the case of an unpublished work, at the time of the making of the work, the author of the work
was a citizen of India.
 Joint Authorship

‘Work of Joint Authorship‘ means a work produced by the collaboration of two or more authors in which
the contribution of one author is not distinct from the contribution of the other author or authors.

Copyright Society

Many a time, authors and other owners of Copyrights are either unable or lose track of all the uses of
their work, including the collection of royalties, infringement issues, etc. To overcome these hurdles,
Copyright Societies have cropped up. As per Section 33 of the Copyright Act, 1957, a Copyright Society
is a registered collective administration society formed by authors and other owners of the Copyright.
Society can perform the following functions :

Keep track of all the rights and infringements related to their clients.

Issue licences in respect of the rights administered by the society.

Collect fees in pursuance of such licences.

Distribute such fees among owners of Copyright after making deductions for the administrative
expenses.

Formation of Copyright Society :

A Copyright Society can be formed by a group of seven or more copyright holders. The term of
registration of a Copyright Society is for five years. The registered Copyright Societies in India are:
Registered Copyright Societies in India :

Society for Copyright Regulation of Indian Producers for Film and Television (SCRIPT) 135
Continental Building, Dr. A.B. Road, Worli, Mumbai 400 018, (for cinematograph and television
films).

The Indian Performing Right Society Limited (IPRSL), 208, Golden Chambers, 2nd Floor, New
Andheri Link Road, Andheri (W), Mumbai- 400 058 (for musical works).

Phonographic Performance Limited (PPL) Flame Proof Equipment Building, B.39, Off New Link
Road, Andheri (West), Mumbai 400 053 (for sound recordings).

Copyright Board

The Copyright Board is a regulatory body constituted by the government, to perform judicial functions
as per the Copyright Act of India. The Board comprises of a Chairman and members (2-14) to arbitrate
on Copyright cases. The Chairman of the Board is of the level of a judge of a High Court. As per the
Act, the Board has the power to:
Appeals against Orders:
The Copyright Board has the authority to hear appeals against the orders of the Registrar of Copyrights.
Rectification of Entries :
The Board can hear applications for rectification of entries in the Register of Copyrights.
Disputes on Assignment:
It adjudicates upon disputes related to the assignment of Copyrights.
Compulsory Licences :
The Board has the power to grant compulsory licences to publish or republish works in certain circum-
stances. It can also grant compulsory licences to produce and publish translations of literary or dramatic
works in any language after seven years from the first publication.
International Disputes :
The Copyright Board is involved in hearing and deciding disputes concerning the publication status or
the term of Copyright of a work in another country.
Royalty Rates :
It is responsible for fixing rates of royalties, particularly in respect of sound recordings under the cover-
version provision.
Resale Share Right:
The Board determines the resale share right in original copies of paintings, sculptures, drawings, and
original manuscripts of literary, dramatic, or musical works.

Copyright Enforcement Advisory Council (CEAC)

In 1991, the Government set up a CEAC to review the progress of enforcement of the Copyright Act
periodically and advise the Government regarding measures for improving the enforcement of the Act.
The term of the CEAC is three years. The CEAC is reconstituted periodically after the expiry of the
term.

International Copyright Agreements, Conven-

tions and Treaties

Any creative work is not protected and enforced automatically worldwide because Copyright laws are
territorial by nature i.e. Laws are valid only in the country in which they have been created. To secure
protection to Indian works in foreign countries, the author needs to apply separately to each country or
through dedicated international ‘Conventions on Copyright and Neighbouring (related) Rights‘, provided
a country is a member of such Conventions. India is a member of the following Conventions:

Berne Convention for the Protection of Literary and Artistic Works, 1886. (https:
//www.wipo.int/treaties/en/ip/berne/)

Universal Copyright Convention, 1952. (http://www.unesco.org/new/en/culture/themes/

creativity/creative-industries/copyright/universal-copyright-convention/)

Rome Convention for the Protection of Performers, Producers of Phonograms and

 Broadcasting Organizations, 1961. (https://www.wipo.int/treaties/en/ip/rome/)

Multilateral Convention for the Avoidance of Double Taxation of Copyright Roy-

alties, 1979. (https://treaties.un.org/doc/Treaties/1979/12/19791213%2009-00%20AM/
Ch$_$_XXVIII$_$_01$_$_ap.pdf)

Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, 1995.

(https://www.wto.org/english/tratop_e/trips$_$_e/intel2$_$_e.htm)

In India, Copyrights of foreign authors, whose countries are members of the Berne Convention for the
Protection of Literary and Artistic Works (1888), Universal Copyright Convention (1952) and the TRIPS
Agreement (1995) are protected through the International Copyright Order.

Interesting Copyrights Cases :

Copyrights Cases 1. David vs. Macaques, Indonesia, 2011

In 2011, a UK-based photographer David Slater put his camera on a tripod in the wildlife sanctuary
to click the photograph of Macaques monkeys. The Macaques were very curious about the equip-
ment and they found the flashlight fascinating. One monkey clicked a selfie photograph which be-
came very famous and legally controversial on the matter of Copyright. Theoretically, the monkey
is the holder of Copyright as he clicked the photo. Practically, David Slater was the claimant of
the Copyright. The dispute entered judicial quarters between People for the Ethical Treatment of
Animals (PETA) and David Slater. Now, the settlement has been concluded. The photographer
i.e. David Slater withholds the Copyright of the picture for having a substantial contribution, but
he would pay 25% of the royalty share to the wildlife sanctuary where the monkey lives (https:
//www.wipo.int/wipo$_$_magazine/en/2018/01/article$_$_0007.html).

Copyrights Cases 2.‘Happy Birthday to you’ case law

According to the Guinness World Records, 1998, it is the most recognized song in the English
language. The melody of ‘Happy Birthday to You‘ originates from the song ‘Good Morning to All‘,
which has traditionally been attributed to American Sisters, namely Patty Smith Hill and Mildred J.
Hill, in 1893. The sisters composed the melody of ‘Good Morning to All‘ to make it more interesting
for the chil- dren. In 1935, Summy Company registered the Copyright on the Piano Setting on the
Song. In 1999 Warner/Chappell acquired the company and started taking royalty for the happy
birthday song and earned a huge amount. After mediation by the Federal court, Warner Music,
through its publishing subsidiary Warner/Chappell, agreed to pay the settlement to a class of ‘thousands
of people and entities‘ who had paid licensing fees to use the song since 1949 because only the melody
was registered and not the lyrics. Now the song is in the public domain.

Copyrights Cases 3.Amitabh Bachchan to lose Copyrights over his father’s works in 2063
Father of renowned actor Mr. Amitabh Bachchan, (late) Shree Harivansh Rai Bachchan was a noted poet
and Hindi writer. His most famous work was Madhushaala (1935). He was the recipient of the Sahitya
Akademi award and the Padma Bhushan. He also did Hindi translations of Shakespeare‘s Macbeth and
Othello. He passed away on 18th January 2003, at the age of 95. As per the Copyright Act, 1957, the
rights over his work will be completed in the year 2063 (rights remain with the author for his lifetime
plus 60 years).

Trademark Definition

In simple language, a Trademark (or Trade Mark) is a unique symbol which is capable of identifying as
well as differentiating products or services of one organization from those of others. The word ’Mark’
stands for a sign, design, phrase, slogan, symbol, name, numeral, devise, or a combination of these.
Essentially, the Trademark is anything that identifies a brand to a common consumer.

Eligibility Criteria for Trademarks

For goods/services to be legally classified as Trademark, they need to pass the following conditions:

Distinctiveness - The goods and services for which the protection is sought should possess enough
uniqueness to identify it as a Trademark. It must be capable of identifying the source of goods
or services in the target market.

Descriptiveness - The Trademark should not be describing the description of the concerned
goods or services. Descriptive marks are unlikely to be protected under Trademark law. However,
descriptive words may be registered if they acquire ”secondary meaning”, such as the brand name
’Apple’ is used by a USA based multinational company that manufactures electronic gadgets.

Similarity to the prior marks - The mark should be unique and should not be having similarity
to the existing marks.

Who Can Apply for a Trademark:

Any person who is a proprietor of the Trademark is eligible to apply for registration of Trademark. The
mark can be filed collectively by two or more applicants and for that purpose, support documents need
to be submitted.
Collective Marks:
An organization or association can file for a collective mark. This mark is then used by its members to
collectively identify their products or services. An example of a collective mark is the ’Reliance’ symbol,
which indicates all products falling under the umbrella of the organization.
 Acts and Laws

In India, Trademarks are governed under The Trademarks Act, 1999

(http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1 43 1 trade-marks-act.pdf).
The Trademark rules are governed by Trademarks Rules, 2002 (http://www.ipindia.nic.in/writeread
data/Portal/IPO Rule/1 56 1 1 59 1 tmr rules 2002 1 .pdf). The Acts and Rules have been
amended from time to time. The latest amendments were done in 2010 and 2017 for Trademarks Acts
and Trademarks, respectively. The administration of matters pertaining to Trademarks is carried out by
the Office of CGDPDTM, Government of India.

Designation of Trademark Symbols

Trademark symbols play a crucial role in indicating the status of protection associated with a particular
mark. Here are the commonly used trademark symbols:

O :
This symbol represents that the Trademark is unregistered. It can be used for promoting the goods
of the company. The TM symbol indicates that the company is using the mark as a trademark,
but it has not yet been officially registered.

O :
Similar to TM, SM represents that the Trademark is unregistered. However, SM is specifically
used for promoting brand services. It signifies that the company is claiming the mark as a service
mark for its services.

:
The R symbol represents a registered Trademark or Service Mark. The presence of this symbol
indicates that the Trademark has been officially registered, and the applicant is its legal owner. It
provides a higher level of protection and exclusivity.

Classification of Trademarks

Goods and Services under Trademarks are classified as per the ‘Nice Agreement‘ (1957) adminis-
tered by WIPO. A total of 149 countries (84 state parties who are signatory to the Agreement and
65 additional states who are following this classification for the Trademarks) and others (African In-
tellectual Property Organization, African Regional IP Organization and Trademark Office of European
Union) are using the same Trademark classification. Trademark classification comprises of 45 classes,
out of which 34 are for goods and 11 are for services (http://euipo.europa.eu/ec2/ static/html/nice-
general-remarksen.html;jsessionid=8FBC790A663FAC9092ACCDD9ED1AC65E.ec2t1). Two examples
of the classes are:
 Class 1: Chemicals for use in industry, science and photography, agriculture, horticulture and
forestry; Unprocessed artificial resins, unprocessed plastics; Fire extinguishing and fire prevention
compositions; Tempering and soldering preparations; Substances for tanning animal skins and
hides; Adhesives for use in industry; Putties and other paste fillers; Compost, manures fertilizers;
Biological preparations for use in industry and science.

Class 45: Legal services; Security services for the physical protection of tangible property and
individuals; Personal and social services rendered by others to meet the individuals‘ needs.

The Vienna codification established under the Vienna Agreement (1973) is an international classifi-
cation of the figurative elements of marks. The relevant Vienna code class can be searched on the link:
https://www.wipo.int/classifications/nivilo/vienna/index.htm?lang=EN/#. The classification is used to
divide all figurative elements into categories (from 1 to 29), divisions (from 1 to 19) and sections
(from 1 to 30).
For example, the representation of ”a little girl eating” belongs to Category 2 (Human beings), Division 5
(Children), Main Section 3 (Girls). If auxiliary sections are used, the figurative element can be identified
additionally with the Auxiliary Section 18 (Children drinking or eating, Code A 2.5.18). The codification
of this example will be then indicated as 2.5.3, 18 (main and auxiliary sections).

Registration of a Trademark is Not Compulsory

Although registration of a Trademark is not compulsory, registration provides certain advantages to the
proprietor of the Trademark, such as:

Legal Protection: Prevents the exploitation of the Registering Trademark by other compa-
nies/organizations/individuals without proper authorization by the legal owner/s of the Trade-
mark. In legal suits, a registered Trademark can serve as potent evidence of the lawful proprietor-
ship of the Trademark.

Exclusive Right: Grants the Trademark owner full rights to use it in any lawful manner to
promote his business.

Brand Recognition: Products/services are identified by their logo, which helps create brand
value over time. A strong brand is a huge pull for new customers and an anchor for existing
customers. Registering a Trademark early and using it will create goodwill and generate more
business for the brand owner.

Asset Creation: A registered Trademark is an intangible property of the organization. It can be

used for enhancing the business of the company as well as drawing new clients and retaining old
ones by the account of brand identification.

To find out more about Registered Trademarks in India, one may look at
http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/well-known-trademarks-updated-newone.pdf.

It is pertinent to mention that no legal course of action can be taken against the unlawful use of an
unregistered Trademark. For unregistered marks (sometimes known as ‘Common Law Trademarks‘,
which are defined as the law rights that generally do not require formal registration for enforcement),
action can be brought against any person for the passing off goods or services as the goods or services
provided by another person. In such cases, the unregistered Trademarks have to prove the establishment
of goodwill or reputation connected with the goods or service.

Validity of Trademark

In India, a registered Trademark is valid for 10 years. The period can be extended every 10 years,
perpetually. As per the Indian Trademarks Act, the renewal request is to be filed in the form ‘TM-R‘
within one year before the expiry of the last registration of the mark.

Types of Trademark Registered in India

Trademark can be a word that must be able to speak, spell and remember. It is highly recommended
that one should choose the Trademark like invented word, created words, and unique geographical name.
One should refrain from Trademarks like common geographical name, common personal name and the
praising words which describe the quality of goods, such as best, perfect, super, etc. To ensure all these
characteristics in a Trademark, it is suggested to conduct a market survey to ensure if a similar mark is
used in the market. Following are some examples of the registerable Trademarks:

Any name including personal or surname of the applicant or predecessor in business or the
signature of the person e.g. the Trademark ‘BAJAJ‘ is named after industrialist Mr. Jamnalal
Bajaj.

A word having no relevance to the product/services e.g. Trademark ‘INDIA GATE‘ is being used
for food grains and allied products.

Letters or numerals or any combination thereof e.g. ‘YAHOO‘ is the abbreviation of the phrase
‘Yet Another Hierarchical Officious Oracle‘. It has now become a worldwide famous Trademark.

Some of the Famous Examples of Trademarks :

Here are examples of different types of trademarks:

1. Distinctive General Word & ’Apple’ (IT Company): Apple is a distinctive general word
used as a trademark by the well-known IT company.

2. Fanciful Designation & ’Kodak’ (Photograph Film): Kodak is a fanciful designation created
for the specific purpose of serving as a trademark for photographic films.

3. Distinctive Personal Names & ’Ford’ (Automotive): Ford, a distinctive personal name, is
used as a trademark in the automotive industry.

4. Device & ’Udhaar’ (Financial Technology): Udhaar, with a unique design or device, serves
as a trademark in the field of financial technology.

5. Number & ’4711’ (Perfume): The number 4711 is used as a trademark in the perfume industry.
 6. Picture & Allegator (Knitwear Manufacturing): The picture of an alligator is used as a
trademark in the knitwear manufacturing sector.

7. Slogan & ’Drink it to believe it’ (Soft Drinks): The slogan ”Drink it to believe it” serves
as a trademark for a brand in the soft drinks industry.

Note: Trademark Registry Objections and Search :

The Trademark Registry may object to a yet-to-be-registered Trademark if it appears similar in looks or
sound to existing registered marks. For example, a keyword like ’Ford’ might face objections if similar-
sounding terms like Foard, Phord, Fordd, Forrd already exist.

It is advisable to carry out a search for both identical and similar trademarks.

Use the free government portal for trademark searches: http://ipindiaservices.gov.in/tmrpublicsearch/

frmmain.aspx.

Trademark Registry

In India, Trademark operations are managed from five cities: Delhi, Mumbai, Ahmadabad, Kolkata, and
Chennai. Each city is assigned a group of states, and businesses located in a particular state can use the
services of the assigned Trademark Registration Office.
In the case of foreign applicants, jurisdiction is based on the location of the office of the applicant‘s agent
or attorney.

Territorial Jurisdiction of Trademark Registration Offices :

Office Location States Covered

Mumbai Maharashtra, Madhya Pradesh, Chhattisgarh, Goa
Ahmedabad Gujarat, Rajasthan, Daman, Diu, Dadra and Nagar Haveli
Kolkata Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mi-
zoram, Meghalaya, Sikkim, Tripura, Jharkhand, Nagaland, Andaman &
Nicobar Islands
New Delhi Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh,
Uttarakhand, Delhi, Chandigarh
Chennai Andhra Pradesh, Telangana, Kerala, Tamil Nadu, Karnataka,
Pondicherry, Lakshadweep Island
Soursce : http://www.ipindia.nic.in/trade-marks.html

Process for Trademarks Registration

To seek Trademark registration, the proprietor of the Trademark has to fill an application. The propri-
etor may choose to hire an agent to fill and submit the application on his behalf. Before applying, the
applicant needs to conduct a prior art search to ensure the registration criteria.
Prior Art Search :
Prior to applying for Trademark registration, it is always prudent to check whether the intended Trade-
mark is already registered or not. Also, it is ascertained whether the intended Trademark is not similar
to the ones already registered. The requisite search can be carried out using various web portals, such
as:

Public search for Trademarks by CGPDTM (https://ipindiaservices.gov.in/tmrpublicsearch/

frmmain.aspx).

WIPO‘s Global Brand Database (https://www3.wipo.int/branddb/en/).

Trademark Electronic Search System (TESS) (http://tmsearch.uspto.gov/bin/gate.exe?f=

tess&state=4805:za847u.1.1).

MARKARIA Trademark Search Engine (https://trademarksearch.marcaria.com/en/asia/

india-trademark-search).

VAKIL Search (https://vakilsearch.com/trademarksearch/trademarks?search=bajaj).

Once the ‘prior art search‘ is over and the applicant is convinced about the distinctiveness of the Trade-
mark, he can proceed to fill the application form for registration (TM-A). The application is filed at the
Trademarks Office subject to the jurisdiction of the applicant. The steps involved in the registration
process are as follows :

Filing the Application: After the prior art search has been conducted, the applicant can apply
for the registration on his own or with the help of a certified agent.

Application Assignment: The application is assigned an application number within a few days.
The same can be tracked online at https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.
aspx.

Examination by Professional Examiner: The application is scrutinized by a professional

examiner. If everything is in order, the particulars of the application are published in the official
Trademark journal (http://www.ipindia.nic.in/journal-tm.htm). Otherwise, he will send the
objections to the applicant for rectification. Based on the satisfactory response, the examiner
would recommend the revised application to be published in the journal. If the application is
rejected, the applicant may approach the Intellectual Property Division to challenge the rejection
of an application by the examiner.

Publication and Objection Period: Once the Trademark is published in the official journal,
the public has an opportunity to file an objection, if any, within 90 days. After hearing both the
parties, the officer decides whether to proceed further for the grant of Trademark or disallow the
grant of Trademark. In case of unfavourable outcome, the applicant has the right to contest the
decision in front of the IPAB. Trademark Registration Certificate: Once the application has
successfully completed all formalities, a Trademark registration certificate is issued in the name of
the applicant.

Language Requirements: One should keep in mind that while filing an application for the
registration of a Trademark, an English translation of the non-English words has to be provided.
 Priority Claim: If the applicant wishes to claim the priority from an earlier-filed application,
he has to provide details like application number, filing date, country, and goods/services of that
application.

Famous Case Law related to Trademarks :

Coca-Cola Company vs. Bisleri International Pvt. Ltd.

‘MAAZA‘, a popular mango fruit drink in India, is a registered Trademark of an Indian company,
Bisleri International Pvt. Ltd. The company transferred the rights (formulation, IPR, and goodwill,
etc.) to a beverage company, Coca-Cola, for the Indian Territory. However, in 2008, the Bisleri
Company ap- plied for registration of Trademark ‘Maaza‘ in Turkey and started exporting the product
with the mark ‘MAAZA‘. This was unacceptable to the Coca-Cola Company and thus filed a petition
for permanent injunction and damages for passing-off and infringement of the Trademark.

It was argued on behalf of Plaintiff (Coca-Cola Company) that as the mark ‘Maaza‘ concerning the Indian
market was assigned to Coca-Cola, and the manufacture of the product with such mark, whether for sale
in India or for export, would be considered as an infringement. After hearing both the parties, the court
finally granted an interim injunction against the defendant (Bisleri) from using the Trademark MAAZA
in India as well as for the export market, which was held to be an infringement of Trademark.

Question Bank

1. Explain the concept of ’Copyrights’ and ’Related Rights’ and how they are categorized under
intellectual property. Provide examples of works covered under these rights.
2. Examine the classes(types) of copyrights existing in India, highlighting the types of works covered
under each class.

3. Elaborate on the criteria for copyright protection, focusing on the qualifications, originality, and
creative effort required. Provide examples to illustrate these criteria.
4. Discuss the ownership of copyright, including the initial owner and scenarios involving employment
or government work.

5. Explain the process and requirements for obtaining permission to use copyrighted material. High-
light the factors to be mentioned in a permission request.
6. Distinguish between economic rights and moral rights of copyright owners. Provide examples of
activities covered under each type of right.

7. Explore the concept of copyright infringements, listing acts considered as infringements under the
Copyrights Act, 1957. Discuss the liabilities of the owner of an auditorium/hall in the context of
copyright.

8. Discuss the Fair Use Doctrine and its four-part test. Provide examples of situations where the
Fair Use Doctrine may be applicable.
 9. Examine the challenges posed by the digital era in the context of copyrights. Discuss the implica-
tions of internet use on copyright and the inclusion of computer programs in literary works.

10. Explain the concept of automatic copyright protection. What rights does the creator obtain upon
the act of creation?

11. Discuss the role of copyright registration. How does the certificate of registration serve as prima
facie evidence in legal disputes?

12. Describe the prominent forms used for copyright registration in India. Explain the information
required in Form No. XIV.

13. Outline the judicial powers of the Registrar of Copyrights. In what situations can the Registrar
exercise powers similar to a civil court?

14. Explain the process of copyright application submission in India. What are the options for sub-
mitting the application, and who is eligible to file the application?

15. Discuss the time frame and steps involved in the evaluation of a copyright application. How are
objections handled during the evaluation process?

16. Provide details on the fee structure for copyright registration in India. Include information on
different types of works and their corresponding fees.

17. Examine the significance of copyright symbols. What elements can be included as a copyright
mark on creative works?

18. Discuss the validity period of copyright in India. What factors determine the starting point of
this validity period?

19. Analyze the copyright profile of India based on a five-year study. Highlight trends in the number
of applications and registrations during this period.

20. Discuss the legal controversy surrounding the ”David vs. Macaques” Copyright case in
Indonesia, 2011. Analyze the settlement reached between David Slater and People for the Ethical
Treatment of Animals (PETA).

21. Examine the legal history and settlement of the ”Happy Birthday to you” case, highlighting the
origins of the song and the Copyright issues involved. Discuss the implications of the song entering
the public domain.

22. Explore the future Copyright implications for the works of Harivansh Rai Bachchan, the father
of Amitabh Bachchan. Analyze the provisions of the Copyright Act, 1957, and discuss the rights
duration as per the Act.

23. Explain the eligibility criteria for trademarks, emphasizing distinctiveness, descriptiveness, and
similarity to prior marks. Provide examples to illustrate these criteria.

24. Discuss the concept of collective marks and provide an example, such as the use of the ’Reliance’
symbol. Explain how organizations or associations can file for and use collective marks.

25. Explore the acts and laws governing trademarks in India, focusing on The Trademarks Act, 1999,
and Trademarks Rules, 2002. Highlight the key amendments made in 2010 and 2017.

26. Examine the classification of trademarks under the ’Nice Agreement’ and provide examples of
goods and services falling under different classes.
27. Discuss the significance of trademark symbols, including ,OSM , . Explain the legal

OTM and OR
implications and protection associated with each symbol.
Module 5

Industrial Designs & Geographical

Indications

Syllabus:

Industrial Designs Eligibility Criteria. Acts and Laws to Govern Industrial Designs. Design Rights.
Enforcement of Design Rights. Non-Protectable Industrial Designs India. Protection Term. Procedure
for Registration of Industrial Designs. Prior Art Search. Application for Registration. Duration of the
Registration of a Design. Importance of Design Registration. Cancellation of the Registered Design. Ap-
plication Forms. Classification of Industrial Designs. Designs Registration Trend in India. International
Treaties. Famous Case Law: Apple Inc. vs. Samsung Electronics Co.
Geographical Indications: Acts, Laws and Rules Pertaining to GI. Ownership of GI. Rights Granted
to the Holders. Registered GI in India. Identification of Registered GI. Classes of GI. Non-Registerable
GI. Protection of GI. Collective or Certification Marks. Enforcement of GI Rights. Procedure for GI
Registration Documents Required for GI Registration. GI Ecosystem in India. Case Studies on Patents.
Case study of Curcuma (Turmeric) Patent, Case study of Neem Patent, Case study of Basmati patent.
IP Organizations In India. Schemes and Programmes
Textbook :
Intellectual Property A Primer for Academia by Prof. Rupinder Tewari Ms. Mamta Bhardwaj
Reference Book:
Intellectual Property Rights by N.K.Acharya Asia Law House 6th Edition. ISBN: 978-93-81849-30-9.

Industrial Designs

Definition of Design:
The word ‘Design’ is defined as the features of shape, configuration, pattern, ornament, or composition

152
of lines or colors applied to any article. The Design may be of any dimension, i.e., one or two or three
dimensional or a combination of these. In addition, it may be created by any industrial process or means,
whether manual, mechanical, or chemical, separate or combined, which in the finished article appeals to
and is judged solely by the eye. However, the word ‘Design’ does not include any mode or principle of
construction or anything that is in substance a merely mechanical device.

Example : Consider a smartphone case with a unique pattern embossed on its surface. The pattern
and its arrangement contribute to the design of the case.

Object of Registration:
The main object of registration of industrial designs is to protect and incentivize the original creativity
of the originator and encourage others to work towards the art of creativity.

Example : If an artist creates a novel and unique design for a chair, registering that design ensures that
the artist is recognized as the originator and has exclusive rights to the design.

Eligibility Criteria

The Design for which protection is being sought must be novel or original, i.e., it should not be disclosed
to the public by prior publication or by prior use or in any other way. The Design should be significantly
distinguishable from the already registered Designs existing in the public domain.
Example : Consider a new and unique chair design that has not been publicly disclosed or used before.
To be eligible for protection, this design must not closely resemble any existing registered designs in the
public domain.

Acts and Laws to Govern Industrial Designs

In India, Industrial Designs are governed under The Designs Act, 2000 (http://www.ipindia.nic. in/acts-
designs.htm) and Design Rules, 2001 (http://www.ipindia.nic.in/rules-designs.htm), which have
been amended from time to time in 2008, 2013, 2014, and 2019. The Design should include the following
characteristics:

It should be novel and original.

It should be applicable to a functional article.

It should be visible on a finished article.

There should be no prior publication or disclosure of the Design.

List of Industrial Designs :

A list of Industrial Designs can be accessed from https://www.creativebloq.com/product-design/
examples-industrial-design-12121488. Some of the famous Industrial Designs are mentioned below:

1. Coca-Cola Bottle: The contoured-shaped glass bottle of the Coca-Cola Company is marvelled as
a master showpiece in the field of industrial design. It was designed in 1915 and is still a cynosure
for all eyes.

2. Piaggio Vespa: Piaggio is an Italian company famous for manufacturing Vespa scooters. These
scooters are sold worldwide since the 1940s. The structural design of the scooter is pleasing to
the eyes, with a painted steel body concealing the engine, comfortable driver’s feet rest, and a
well-designed front portion.

3. iPhone: A highly popular mobile phone manufactured by the American company ’Apple Inc.’
The sleek, handy, and rectangular body is pleasing to the eyes, with round and smooth corners.
The features, such as on/off and speech volume, are easy to operate.

4. Mini Cooper: An automobile car manufactured by the British Motor Corporation. Its unique
shape provides plenty of space (nearly 80

5. Rocking Wheel Chair: A sleek, circular-shaped chair that provides a smooth rocking motion.
There is a provision for a headlight in the upper part of the chair.

6. Juicy Salif: A citrus juice squeezer considered an iconic structural design. The alumina-based
body has been molded in the shape of a fish called a squid.

Design Rights

The Design registration also confers a monopolistic right to the Proprietor by which he can legally exclude
others from reproducing, manufacturing, selling, or dealing in the said registered Design without his prior
consent. The Design registration is particularly useful for entities where the shape of the product has
aesthetic value, and the entity wishes to have exclusivity over the said novel and original Design applied
to its product(s) or article(s).
Example : Consider a company that designs a unique and aesthetically pleasing chair. By registering
the design, the company obtains exclusive rights to the design. This means that no other entity can
reproduce, manufacture, sell, or deal in a chair with the same registered design without the prior consent
of the proprietor.

Enforcement of Design Rights:

Once the applicant has been conferred with the rights over a specific Design, he has the right to sue the
person (natural/entity) if the pirated products of his registered design are being used. He can file the
infringement case in the court (not lower than District Court) to stop such exploitation and for claiming
any damage to which the registered proprietor is legally entitled. The court will ensure first that the
Design of the said product is registered under the Designs Act, 2000. If the Design is found not registered
under the Act, there will not be legal action against the infringer. If the infringer is found guilty of piracy
or infringement, the court can ask him to pay the damage (Rs. 50,000/-) in respect of infringement of
one registered Design.
Example : Consider a scenario where a company discovers that another entity is producing and selling
products with an identical design that is registered under the Designs Act, 2000. The registered proprietor
can enforce their design rights by filing an infringement case in the court (not lower than District Court).
If the court finds the infringer guilty, they may be required to pay damages (Rs. 50,000/-) for the
infringement of one registered Design.

Non-Protectable Industrial Designs in India

Any Industrial Design which is against public moral values.

Industrial Designs including flags, emblems, or signs of any country. Industrial Designs of inte-
grated circuits.

Any Design describing the ’process of making of an article’.

Industrial Designs of – books, calendars, certificates, forms, and other documents, dressmaking
patterns, greeting cards, leaflets, maps and plan cards, postcards, stamps, medals.

The artistic work defined under Section 2(c) of the Copyright Act, 1957 is not a subject matter
for registration for Industrial Designs, such as:

– Paintings, sculptures, drawings including a diagram, map, chart, or plan.

– Photographs and work of architecture.

– Any other work related to artistic craftsmanship.

Industrial Designs do not include any Trademark (The Designs Act, 2000).

Protection Term

The outer ’Shape or Design’ of a product makes it more appealing and acts as the value-adding factor to
the product. Therefore, there is a need to protect one’s creation from being used by third parties without
consent from the original creator. The registered Designs are protected for 10 years in India and can be
extended by 5 years after making a renewal application.
Example : Consider a company that registers the design of a unique and aesthetically appealing chair.
The protection term for this registered design will initially be 10 years. However, to continue the pro-
tection beyond the initial term, the company can apply for a renewal, extending the protection by an
additional 5 years.
 Procedure for Registration of Industrial Designs

1. Prior Art Search:

Before filing an application for the registration of Industrial Designs, it is prudent to ensure that the same
or similar Design has not been registered earlier. This search can be carried out using various search
engines, such as:

Design Search Utility (CGPDTM): (https://ipindiaservices.gov.in/designsearch/).

Global Design Database (WIPO): (https://www3.wipo.int/designdb/en/index.jsp).

Hague Express Database (WIPO): (https://www3.wipo.int/designdb/hague/en/#).

Design View (EUIPO): (https://www.tmdn.org/tmdsviewweb/welcome#/dsview).

2. Application for Registration :

Once the applicant is satisfied that his Design is novel and significantly distinguishable from other De-
signs, he can proceed with filing an application for Design registration. The application for registration
of Design can be filed by an individual, small entity, institution, organization, and industry. The appli-
cation may be filed through a professional patent agent or legal practitioner. If the applicant is not a
resident of India, an agent residing in India has to be employed for this purpose. The applicant submits
the registration application at the Design Office Deputy Controller of Patents & Designs, Patent Office,
Intellectual Property Office Building, CP-2 Sector V, Salt Lake City, Kolkata-700091.
After the application has been filed, an officer (examiner) analyses the application for qualifying the
minimum standards laid down for eligibility criteria for registration. In case of any query, the same is
sent to the applicant, and he is supposed to respond within 6 months from the objection raised. Once
the objections are removed, the application is accepted for registration. The particulars of the applica-
tion, along with the representation of the article, are published in the Official Journal of Patent Office
(http://www.ipindia.nic.in/journal-patents.htm). If no objection is received from the public, the
Design is registered.

After the registration of the Design, the applicant becomes the proprietor of the Design and is conferred
with the exclusive right to apply that Design to the article belonging to the class in which it is registered.
The applicant puts up a request for issuance of a certificate of registration (for an Industrial Design). A
flow chart of the registration process is mentioned below:
 Duration of the Registration of a Design :

Initially, the Design registration is valid for ten years from the date of registration. In the case wherein
the priority date has been claimed, the duration of the registration is counted from the priority date. The
period of registration may be extended further for five years. An application has to be made in Form-3
accompanied by prescribed fees to the Controller General before the expiry of the said initial period of
ten years.
Example : Consider a company that successfully registers the design of a new and innovative electronic
device. The initial duration of protection for this registered design will be ten years from the date of
registration. If the company wishes to continue the protection beyond the initial ten years, they can
apply for an extension by submitting Form-3 along with the prescribed fees to the Controller General
before the expiry of the initial ten-year period.

Importance of Design Registration

Registration of Design ensures the exclusive rights of the applicant on the Design. The owner can prevent
the registered Design products from piracy and imitation. This helps the owner to boost the sale of the
products and establish goodwill in the market.
Example : Consider a fashion designer who creates a unique and trendy clothing design. By registering
the design, the fashion designer obtains exclusive rights, preventing others from producing identical or
similar clothing items without consent. This exclusivity not only safeguards the designer’s creative efforts
but also enhances the market value of the designer’s clothing line, as consumers are more likely to associate
the unique design with the original creator, thereby establishing goodwill in the fashion industry.

Cancellation of the Registered Design

The registration of a Design may be cancelled at any time. The petition has to be filed in Form-8 with
prescribed fees to the Controller of Designs. The application can be made on the following grounds:

Design has already been registered.

Design has been published in India or elsewhere before the date of registration.

Design is not novel and original.

It is not a Design under Clause (d) of Section 2.

Example : Consider a scenario where a company discovers that another entity has registered a design
that is identical to their own and was already registered. The aggrieved company can file a petition
in Form-8 with the prescribed fees to the Controller of Designs, citing the ground that the design has
already been registered. If the Controller finds merit in the petition, the registration of the design may
be canceled.

Application Forms

There are a total of 24 forms pertaining to Industrial Designs. A list of important forms is mentioned
below.

S. Name of the Form Form Fee(Natural Fee(Small Fee(Large

No No. Person) Entity) Entity)
1. Application for registration of Design. Form-1 1,000 2,000 4,000
2. Application for the Restoration of Design. Form-4 1,000 2,000 4,000
3. Application for renewal of Design. Form-3 2,000 4,000 8,000
4. Petition for cancellation for registration of Form-8 1,500 3,000 6,000
a Design.
5. Notice of intended exhibition or publica- Form-9 500 1,000 2,000
tion of unregistered Design.
6. Application for entry of name of propri- Form-11 500 1,000 2,000
etor or part proprietor in the Register.
7. Request for correction of clerical error. Form-14 500 1,000 2,000
8. Request for certified copy. Form-15 500 1,000 2,000
9. Application for rectification of Register. Form-17 500 1,000 2,000
10. Notice of opposition. Form-19 100 200 400
 Classification of Industrial Designs

Designs are registered in different classes as per the Locarno Agreement, 1968 (https://www.wipo.
int/classifications/locarno/locpub/en/fr/). It is used to classify goods for the registration of
Industrial Designs as well as for Design searches. The signatory parties have to indicate these classes
in the official documents too. The classification comprises a list of classes and subclasses with a list of
goods that constitute Industrial Designs. There are 32 classes and 237 subclasses that can be searched
in two languages, i.e., English and French.

For example, Class 1 includes foodstuff for human beings, foodstuffs for animals, and dietetic foods
excluding packages because they are classified under Class 9 (Bottles, Flasks, Pots, Carboys, Demijohns,
and Pressurized Containers). Class 32 classifies the Design of graphic symbols and logos, surface patterns,
ornamentation.

Designs Registration Trend in India

Figure 2.11 represents the statistics for Industrial Designs (filed, examined, and registered) for the period
2010-20. During this period, an increase of 88%, 117%, and 33% was observed in the parameters of
Designs filed, examined, and registered, respectively. In all three parameters, the graph depicts a similar
pattern (more or less) with the highest numbers observed in 2019-20 for Designs filed (12,268), examined
(13,644), and registered (14,272).

Famous Case Law: Apple Inc. vs. Samsung

Electronics Co.

In 2011, Apple Inc. filed a case against Samsung Electronics Co. in the United States District Court for
the Northern District of California for infringing their Designs and Utility Patents of the user interface like
screen app grid and tap to zoom. As evidence, Apple Inc. submitted the side-by-side image comparison of
the iPhone 3GS and the i9000 Galaxy S to demonstrate the alleged similarities in both models. However,
later it was found that the images were tempered by the Apple Company to match the dimensions and
features of the controversial Designs. So the counsel for Samsung Electronics blamed Apple of submitting
false and misleading evidence to the court, and the company countersued the Apple Company in Seoul,
South Korea; Tokyo, Japan; and Mannheim, Germany, United States District Court for the District of
Delaware, and with the United States International Trade Commission (ITC) in Washington D.C. The
proceedings continued for 7 years in various courts. In June 2018, both companies reached a settlement,
and Samsung was ordered to pay $539 million to Apple Inc. for infringing on its patents.
 Geographical Indications

Introduction:
In every country, there are certain regions famous for their traditional knowledge/heritage in various
sectors, such as agriculture, food products, textiles, etc. People from far-off places used to travel to buy
these products. For example, Christopher Columbus sailed from Spain to import world-famous spices
from India. British people traveled to Arabian countries to import Arabian horses for siring fast running
horses for commercial gains. Similarly, China silk and Dhaka Muslin have been in great demand from
times immemorial. The reputation of these products was built upon and painstakingly maintained by
the experts/masters of respective geographical locations. The know-how of these reputed products was
passed onto future generations. With the passage of time, a specific link between the goods produced
and geographical location evolved, resulting in the growth of Geographical Indications (GI).

Definition of Geographical Indications :

A GI is defined as a sign that can be used on products belonging to a particular geographical loca-
tion/region and possesses qualities or a reputation associated with that region. In GI, there is a strong
link between the product and its original place of production.

Examples of Geographical Indications :

Darjeeling Tea: Known for its unique flavor and aroma, Darjeeling Tea is a Geographical Indi-
cation associated with the Darjeeling region in India.

Parmigiano-Reggiano: An Italian cheese known for its high quality, Parmigiano-Reggiano is a

Geographical Indication linked to specific regions in Italy where it is produced.

Champagne: The sparkling wine produced in the Champagne region of France is a classic example
of a Geographical Indication.

Acts, Laws and Rules Pertaining to GI

In India, GI was introduced in 2003 and is governed under the Geographical Indications of Goods
(Reg- istration & Protection) Act, 1999 and the Geographical Indications of Goods (Registration &
Protection) Rules, 2002.

Ownership of GI

The ownership/holders of GI (registered) can be of the producers, as a group/association/cooperative

society, or association, or in certain cases, the government.
 Rights Granted to the Holders

Right to grant the license to others: The holder has the right to gift, sell, transfer/grant a
license, mortgage, or enter into any other arrangement for consideration regarding their product.
A license or assignment must be given in writing and registered with the Registrar of GI for it
to be valid and legitimate.

Right to sue: The holder of GI has the right to use and take legal action against a person who
uses the product without his consent.

Right to exploit: The holder of GI can authorize users with the exclusive right to use goods for
which the GI is registered.

Right to get reliefs: Registered proprietors and authorized users have the right to obtain relief
concerning the violation of such GI products.

Registered GI in India:

GI products registered in India belong to various domains, including handicrafts, agriculture, foodstuffs,
alcoholic beverages, etc.
Historical Context : The first GI tag was granted in 2004 to Darjeeling Tea, and the latest were
Kashmir Saffron and Manipur Black Rice (Chakhao) in May 2020.
Total GI Registrations : As of May 2020, a total of 370 GI have been registered in India.
Distribution by Category:

Handicrafts: 58%

Agriculture: 30%

Other categories: foodstuffs, manufacturing, natural goods, etc.

Regional Distribution in Handicrafts : In the Handicraft category, Tamil Nadu holds the maximum
number (21) of GIs, followed by Uttar Pradesh (20) and Karnataka (19).
Notable GIs :
A few popular GIs are mentioned in the following Table.

GI Type State
Darjeeling Tea Agriculture West Bengal
Mysore Silk Handicraft Karnataka
Kashmir Pashmina Handicraft Jammu & Kashmir
Banaras Brocades and Sarees Handicraft Uttar Pradesh
Naga Mircha Agriculture Nagaland
Tirupathi Laddu Foodstuff Andhra Pradesh
Phulkari Handicraft Punjab, Haryana, Rajasthan
Basmati Agriculture India
International countries, such as Thailand, France, Portugal, Italy, Mexico, Peru, and the United Kingdom,
have also filed GI in India, e.g., Champagne (wine) of France and Scotch Whisky of the United Kingdom.

Identification of Registered GI

Registered GI products are granted a tag, which is printed on the registered products. The tag confirms
the genuineness of the product in terms of its production (by set standards) and location of production.
Non-registered GI products cannot use/exploit this tag. By and large, GI tags represent the place of
origin (of the product) along with cultural and/or historical identity, e.g., Darjeeling Tea, Mysore Silk,
Tirupathi Laddu, etc.

Issuance of GI Tags :
In India, GI tags are issued by the Geographical Indication Registry under the Department for Promo-
tion of Industry and Internal Trade, Ministry of Commerce and Industry. The head of the GI registry
is located at Geographical Indications Registry, Intellectual Property Office Building, Industrial Estate,
G.S.T Road, Guindy, Chennai - 600032.

Global Standards :
GI registered products can be grown/produced anywhere in the world using standards laid down by the
GI Registry. However, these products cannot be labeled as GI unless they are produced/manufactured
in a specific geographical location, as mentioned in the official records maintained by the GI Office. For
example, plants of Darjeeling Tea can be grown in any part of India. Still, the tea leaves of these plants
cannot be sold under the brand name of Darjeeling Tea, as the concerned plants were not grown in the
soil and climate of the Darjeeling area.

Classes of GI

GI certified goods are classified under 34 different classes.

For example:

Class 1: Chemicals used in industry, science, photography, agriculture, horticulture, and forestry;
unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tem-
pering and soldering preparations; chemical substances for preserving foodstuffs; tanning sub-
stances; adhesives used in industry.

Class 33: Alcoholic beverages (except beers).

Class 34: Tobacco, smokers‘ articles, matches.

More details can be extracted from the official website of CGPDTM Office (http://www.ipindia.nic.
in/writereaddata/images/pdf/classificationof-goods.pdf).
 Non-Registerable GI

For GI registration, the indications must fall within the scope of Section 2(1)(e) of the GI Act, 1999. Being
so, it has to also satisfy the provisions of Section 9, which prohibits the registration of a GI mentioned
below:

The use of which would be likely to deceive or cause confusion.

The use of which would be contrary to any law.

Which comprises or contains scandalous or obscene matter.

Which comprises or contains any matter likely to hurt the sentiments of society.

Religious susceptibilities of any class or section of the citizens of India.

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.

Protection of GI

The IP rights to GI are enforced by the court of law of the concerned country. The GI registration
of a product has certain advantages. It enables to identify pirated/non-genuine stuff, provides more
commercial value to the product, and also strengthens the case if it reaches the judicial courts.
The two common methods of protecting a GI are:

1. Sui generis systems: Special regimes of protection.

2. Certification or Collective Mark Systems: Under these systems, GI is protected through

certification marks or collective marks. Many countries, including India, protect GI using the
sui generis system. This decision was taken after the TRIPS agreement (1995), and an option
was given to the countries to choose either TRIPS standards or the sui generis system. This
was decided by considering the fact that every country has different legislation and geographical
structures & resources. Therefore, this system is not uniform in all countries and varies according
to the jurisdiction and legislation of the particular country.

Collective or Certification Marks

Certification marks aim to certify the products comply with specific quality standards irrespective of
their origin. These standards include permitted materials and manufacturing methods. Therefore, the
purpose of certification marks is to distinguish certified goods from non-certified ones.
Collective marks are owned by associations ensuring compliance with the agreed standards. Collective
marks signify that a good or service originates from a member of a particular association. The collective
mark is used by cooperating enterprises that have agreed to comply with defined quality standards for
goods or services that share common characteristics.
 Enforcement of GI Rights

The rights to GI protection are typically enforced by the court of law. The sanctions provided could
be civil (injunctions restraining or prohibiting unlawful acts, actions for damages, etc.), criminal, or
administrative.

Procedure for GI Registration

Prior to filing an application for registering GI, it is prudent to search whether the concerned GI is
already protected or not. This can be done by using search engines created by WIPO (https://www.
wipo.int/ipdl/en/search/lisbon/search-struct.jsp) where ‘Search of Appellations of Origin and
Geographical Indications’ both can be conducted.

Additionally, WIPO has created a directory of all IP offices of its member countries. The registered GI
of any country can be searched by accessing the website of the respective country (https://www.wipo.int/
directory/en/urls.jsp). The list of registered GI in India can be accessed from the official website of
CGPDTM http://www.ipindia.nic.in/writereaddata/Portal/News/367_1_Registered_GI.pdf.

Once the prior search for registered GI is done, the applicant has to file an application. The application for
GI can be forwarded by an individual or an organization or authority of people established under Indian
law. The application in a prescribed format is submitted to the Registrar, Geographical Indications
along with the prescribed fee (http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_27_
1_girules.pdf). In the application, the applicant needs to mention the interest of the producers of the
concerned product. The application should be duly signed by the applicant or his agent with all the
details about the GI that how its standard will be maintained. The submission of three certified
copies of the map of the region where the GI belongs is mandatory.

Once the application is filed at GI Registry, the Examiner will scrutinize the application for any de-
ficiencies or similarities. If the examiner finds any discrepancy, he will communicate the same to the
applicant, which is to be replied within one month of the communication of the discrepancy. Once the
examiner is satisfied with the response/s, he files an examination report and hands over the same to the
Registrar. Once again, the application is scrutinized. If need be, the applicant is asked to clear any
doubts/objections within two months of the communication otherwise, the application will be rejected.
After getting a green signal from the Registrar, the application is published in the official
Geographical Indication Journal (http://www.ipindia.nic.in/journal-gi.htm) for seeking any
objections to the claims mentioned in the application. The objections have to be filed within four
months of the publica- tion. If no opposition is received, the GI gets registered by allotting the filing
date as the registration date. Initially, GI is registered for ten years but is renewable on the payment
of the fee.
 Documents Required for GI Registration

The following documents are required for the registration of Geographical Indications:

Details about the applicant‘s name, address, and particulars.

Application form GI-1A.

Statement about the designated goods being protected under GI.

Class of goods.

Affidavit to establish the claim of genuinely representing the interest of the producers.

Characteristics of GI.

The special human skill required (if any).

Application Forms for GI Registration in India

The important forms to file Geographical Indication (GI) in India under various classes are mentioned
below:

1. Form GI-1: Application for the registration of a Geographical Indication for goods included in
one class.
 Requisite Fee: Rs. 5000

2. Form GI-1A: Application for the registration of a Geographical Indication for goods included in
one class from a Convention country.

Requisite Fee: Rs. 5000

3. Form GI-2: A single application for the registration of a Geographical Indication for goods in
different classes.

Requisite Fee: Rs. 5000 for each class

4. Form GI-2A: A single application for the registration of a Geographical Indication for goods in
different classes from a Convention country.

Requisite Fee: Rs. 5000 for each class

5. Form GI-3: Notice of opposition to the registration of a Geographical Indication or an

opposition or an authorized user.

Requisite Fee: Rs. 1000 for each class

6. Form GI-3A: Form of counter-statement.

Requisite Fee: Rs. 1000

7. Form GI-3B: Application for extension of time for filing notice of opposition.

Requisite Fee: Rs. 300

8. Form GI-4: Application for the registration of an authorized user of a registered Geographical
Indication.

Requisite Fee: Rs. 500

9. Form GI-5: Request for issuance of a registration certificate as an authorized user.

Requisite Fee: Rs. 100

10. Form GI-6: For renewal of an authorized user.

Requisite Fee: Rs. 1000

11. Form GI-7: Renewal of the registration of a Geographical Indication at the expiration of the
last registration.

Requisite Fee: Rs. 3000

12. Form GI-7A: Application for restoration of a Geographical Indication or an authorized user
removed from the Register.

Requisite Fee: Rs. 1000 plus applicable renewal fee

13. Form GI-7B: Application for renewal within six months from the expiration of the last registra-
tion of Geographical Indication.

Requisite Fee: Rs. 3500

 14. Form GI-8: Application for registration of a Geographical Indications agent.

Requisite Fee: Rs. 1000

15. Form GI-10: Application for cancellation of an entry in the Register or to strike out goods.

Requisite Fee: Rs. 300

GI Ecosystem in India

India is among the geographically and traditionally rich countries. The scope of generating Geographical
Indication (GI) products in India is enormous. These products can contribute to the economic
develop- ment of a particular region or society. However, till June 2021, a total of 370 GI have been
registered in India, which is much below its potential
(https://ipindia.gov.in/writereaddata/Portal/Images/ pdf/GI_Application_Register_10-09-2019.pdf).
Figure 2.13 represents the statistics for GI (filed and registered) for the period 2010-20. The
maximum number (148) of GI was filed in 2011-12, whereas the minimum number (17) was observed in
2015-16. Not much change in the number of GI registrations was observed during the period 2010-20.
Each year, the number hovered around in the twenties, with the maximum registrations (34) seen in
2016-17.

Turmeric Patent Case

Turmeric Plant:
Turmeric, scientifically known as Cucurma, is a prominent Geographical Indication (GI) in India. Turmeric(Curcuma
longa) is a flowering plant from the ginger family, originating from rhizomes plants. It is used as a spice
in Indian cooking and has medicinal and cosmetic uses, traditionally known for its wound-healing and
anti-parasitic properties.
Turmeric Patent Battle:
The Turmeric Case is one of the most publicized cases involves the patenting of the wound healing
properties of turmeric (Curcuma longa) by two scientists of Indian origin in the United States in 1994.
Turmeric powder, specifically for wound healing, was patented in the US by the University of Mississippi
Medical Center. Although existing knowledge is not patentable, and the essential criterion of novelty
should disqualify it as an invention, the patent was granted due to a failure by the Patent Office to
identify the existing knowledge. This case sparked considerable discussion and debate in India as the
knowledge was available in ancient Ayurvedic texts. The Council of Scientific and Industrial Research
(CSIR) , New Delhi challenged the patent’s grant before the US Patent and Trademark Office (USPTO)
and a re-examination application was filed with US Patent Office claiming the use of turmeric powder
was no novel invention and the medicinal use existed since ages. All the supporting evidence of ancient
Sanskrit were presented. Later, the US Patent Office revoked this patent stating the patent were obvious
and agreeing the use of turmeric having been known in India for centuries.
 Neem Patent Case

Neem :
Another instance involves the medicinal plant Neem (Azadirachta indica), whose properties were well-
known in India but not as recognized in the US and Europe. Neem extracts are used in agriculture for
pest and fungal control, and neem oil has medicinal properties. It has been used traditionally to treat
various diseases, and neem twigs are used as toothbrushes.
Neem Patent Battle:
In 1994, the European Patent Office (EPO) granted a patent to the US corporation W.R. Grace Company
and the US Department of Agriculture for a ”method for controlling fungi on plants by the aid of
hydrophobic extracted neem oil.” This patent was opposed by various non-governmental organizations
and Indian farmers, providing evidence of neem’s traditional use. The European Patent Office later
revoked the patent in 2000, stating it lacked inventive steps.

Basmati Patent Case

Basmati Rice :
Basmati rice is an aromatic variety grown in India and Pakistan. It has a long history in the region, with
farmers conserving distinct varieties for centuries.
Basmati Patent Battle:
An American company ‘RiceTec’ was granted US Patent on ‘basmati rice lines and grains’. The patent
includes basmati and basmati-like rice. The company also claimed that it’s the novel innovation of them
creating such rice. Which also caused crisis between India and United States. The Indians claimed
that the innovation they are claiming are false, India threateningly took the matter to WTO as
violation of TRIPS. Later, RiceTec withdrew the claims of the patent. This controversy highlighted
issues related to traditional knowledge.

These case studies underscore the importance of protecting traditional knowledge from misappropria-
tion through patents. These cases also emphasize the need for a balanced approach that respects both
traditional practices and modern innovations.

IP Organizations In India- Schemes and Pro-

grammes

In India, the key organizations engaged in IP affairs are mentioned below.

Department for Promotion of Industry and Internal Trade (DPIIT), New Delhi
DPIIT, formerly known as the Department of Industrial Policy and Promotion (DIPP), operates under
the Ministry of Commerce and Industry, Government of India. It is the apex body for intellectual property
(IP) in India and was established in 1995. DPIIT plays a crucial role in regulating and administering the
industrial sector. The major categories of intellectual properties governed and administered by DPIIT
are listed in Table 5.1.

S. No. Type of IP Governing Body

1. Patents
Copyrights
Industrial Designs
Trademarks
Geographical Indications
Semiconductor Integrated Circuits Layout-Design
Department for Promotion of Industry and Internal Trade, New Delhi
2. Traditional Knowledge Digital Library
Governed by CSIR & Ministry of AYUSH*
3. Plant Variety Protection
Governed by Ministry of Agriculture and Farmers Welfare, New Delhi
4. Biological Diversity Protection
Governed by Ministry of Environment, Forest and Climate Change, New Delhi
5. Trade Secrets
No specific body governs Trade Secrets.
Protected under various statutes like
Indian Contract Act, 1872
Copyright Act, 1957
Information Technology Act, 2000, etc.

DPIIT and Office of the Controller General of Patents, Designs, and Trade Marks (CG-
PDTM)
DPIIT has established a dedicated and robust Office of the Controller General of Patents, Designs, and
Trade Marks (CGPDTM). This office is responsible for formulating and implementing policies, rules,
and regulations related to Intellectual Property Rights (IPR). In addition to its core responsibilities,
DPIIT undertakes various IPR-related activities, including:

Modernization and strengthening of the Intellectual Property Office.

Strengthening of physical infrastructure.

Enhancement of human resources.

Expansion of physical infrastructure in Delhi, Mumbai, Kolkata, and Chennai.

IT up-gradation.

Development of software required for International Searching Authority (ISA)/International

Pre- liminary Examining Authority (IPEA) and Madrid Protocol.

Subscription to non-patent literature required for Patent Cooperation Treaty (PCT) minimum
documentation.

Digitization of records.

Sensitization and awareness programs.

 Establishment of the electronic library.
Furniture and office equipment for the modernized environment in IP offices.

DPIIT actively engages in collaborations with the World Intellectual Property Organization (WIPO) and
other apex industry organizations to promote and strengthen the Intellectual Property (IP) ecosystem.
These collaborative efforts aim to foster innovation, protect intellectual property rights, and contribute
to the overall development of the IP landscape.

In addition to collaboration, DPIIT plays a significant role in providing valuable inputs on various
issues related to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS
agreement). This involvement underscores India’s commitment to contributing to global discussions on
intellectual property matters and ensuring alignment with international standards.

Through these collaborative initiatives and informed contributions, DPIIT strives to enhance the
effec- tiveness and coherence of intellectual property frameworks, both at the national and international
levels. Intellectual Property Appellate Board (IPAB) and Recent Changes

In response to the increasing importance of Intellectual Property Rights (IPR) worldwide, the Indian
government established the Intellectual Property Appellate Board (IPAB) in 2003. IPAB, operating
under DPIIT, aimed to address the rising number of disputes related to IPR.

Originally, IPAB handled appeals against decisions made by the Registrars of Trademarks and Geograph-
ical Indications, and the Controller of Patents. The Copyright Office also had a dedicated board under
IPAB for determining rates, royalties, licensing, and assessment of compensation.

In 2017, the Copyright Board and Plant Varieties Protection Appellate Tribunal were merged with
IPAB, operating according to their respective Acts and Rules.

However, recent amendments in the Tribunal Reforms Ordinance led to the abolishment of various
Boards/Appellate Tribunals, including IPAB, as of April 4, 2021. Chief Justice D.N. Patel directed the
creation of a dedicated Intellectual Property Division (IPD) within High Courts to handle all IPR-
related matters, preventing conflicting decisions and reducing the burden on the judicial system.

All pending IPAB cases (around 3000) were transferred to IPD. Delhi High Court is in the process of
formulating comprehensive rules for IPD, including the creation of specific rules for patent disputes,
following the model of IPDs in other countries like the UK, Japan, Malaysia, Thailand, and China.

This decision is considered a landmark in the history of IPRs in India, streamlining procedures and
avoiding multiplicity of proceedings.
Draft Model Guidelines on Implementation of IPR Policy for Academic Institutions

To enhance the Intellectual Property (IP) ecosystem, IP commercialization, and the entrepreneurship
and start-up ecosystem in academic institutions, the Department for Promotion of Industry and Internal
Trade (DPIIT) has developed draft model guidelines for the implementation of an IPR policy.

The draft guidelines are designed to provide a framework for academic institutions to effectively imple-
ment policies related to Intellectual Property Rights (IPR). These guidelines aim to foster a culture of
innovation, protect intellectual property, and encourage the commercialization of IP.
The draft guidelines were made available for public feedback and suggestions from September 9th, 2019,
to October 25th, 2019. Interested parties could access the draft on the official DPIIT website (https://
dipp.gov.in/draft-model-guidelines-implementation-ipr-policy-academic-institutions). The
department actively sought input from the public during this period.

As of now, DPIIT is in the process of finalizing the guidelines, and the official release is expected soon.
Scheme for Facilitating Start-ups Intellectual Property Protection (SIPP)

To safeguard and promote Intellectual Property (IP) in India, the Department for Promotion of Indus-
try and Internal Trade (DPIIT) introduced the Scheme for Facilitating Start-ups Intellectual Property
Protection (SIPP) in 2016.

The details of the scheme can be found on the official DPIIT website (http://www.ipindia.nic.in/
writereaddata/Portal/News/323_1_Scheme_for_facilitating_start-ups.pdf). SIPP is specifically
designed to facilitate the protection of Patents, Trademarks, and Designs generated by start-up compa-
nies.

The primary objective of the scheme is to foster the growth of innovative and emerging technologies
within start-ups. SIPP aims to support these start-ups by providing mentorship and assistance in the
protection and commercialization of their intellectual property. This support is extended by granting
access to high-quality IP services and resources.

Through SIPP, DPIIT seeks to create an environment that encourages the development and safeguarding
of intellectual property within the start-up ecosystem.

Intellectual Property Initiatives in India

Intellectual Property Office (IPO) India

The IPO India, under the Department for Promotion of Industry and Internal Trade (DPIIT), is the pri-
mary government agency responsible for the administration and regulation of intellectual property rights
in the country. It oversees the grant and registration of patents, trademarks, designs, and geographical
indications.
National Intellectual Property Rights (IPR) Policy
The National IPR Policy, launched in 2016 by the Government of India, aims to foster innovation, pro-
mote creativity, and enhance access to intellectual property protection. The policy focuses on creating
awareness, strengthening enforcement mechanisms, and facilitating the commercialization of IP.
Patent Information Centers (PICs)
The IPO India has established Patent Information Centers across the country to provide information and
support on patents and the patenting process.
Technology and Innovation Support Centers (TISCs)
TISCs, set up in collaboration with the World Intellectual Property Organization (WIPO), provide patent-
related information and services, fostering innovation and technology transfer.
R&D and IP Facilitation
Various government departments and agencies offer schemes and programs to encourage research and de-
velopment (R&D) with a focus on intellectual property. These initiatives often include funding support
and incentives for innovation.
Start-up India and Make in India
The Start-up India initiative and the Make in India campaign encourage entrepreneurship and innova-
tion. They provide support for startups, including facilitation of IP protection and fast-tracking of patent
applications.
IP Awareness and Training Programs
The IPO India conducts awareness and training programs to educate stakeholders about intellectual
property rights, their importance, and the process of obtaining protection.
Innovations in Science Pursuit for Inspired Research (INSPIRE)
INSPIRE is a program under the Department of Science and Technology that aims to attract talent to
the study of science at an early age. It also promotes research and innovation among students.

Question Bank

1. Discuss the eligibility criteria for industrial design protection. Explain the concept of novelty and
originality in relation to industrial designs.

2. Discuss the eligibility criteria for industrial designs. Explore the enforcement of design rights and
non-protectable industrial designs in India. Provide insights into a famous case law related to
industrial designs.

3. Describe the procedure for registration of industrial designs in India. Explain the importance of
conducting a prior art search before filing an application.

4. What are the rights granted to the holders of geographical indications? Discuss the procedure for
registration of geographical indications and the documents required for the registration process.

5. Explain the concept of design rights. Discuss the enforcement mechanisms available for protecting
design rights in India.

6. Discuss the classification of industrial designs based on the Locarno Classification. Explain the
significance of classifying industrial designs in the registration process.

7. Describe the protection term and renewal process for registered industrial designs in India. Discuss
the importance of design registration for businesses.

8. Explain the concept of non-protectable industrial designs in India. Discuss the criteria for deter-
mining the non-protectability of industrial designs.

9. Explain the concept of non-protectable industrial designs in India. Discuss the famous case law
between Apple Inc. and Samsung Electronics Co., highlighting the key legal issues, and the
prolonged legal proceedings.

10. Discuss the acts, laws, and rules governing geographical indications in India. Explain the ownership
of geographical indications and the rights granted to the holders.

11. Define Geographical Indications with example. Explain the procedure for GI Registration.

12. Describe the ecosystem for geographical indications in India. Discuss the role of various organiza-

13. tions and bodies involved in the promotion and protection of geographical indications.
 14. Explain the ownership of geographical indications (GIs) and the rights granted to
holders. Discuss the classes of GIs and the protection of GIs. Explore collective
or certification marks in the context of GIs.

15. Choose one of the case studies on patents (Curcuma, Neem, or Basmati) and
discuss the key issues and outcomes of the case. Analyze the impact of these
case studies on the protection of traditional knowledge and intellectual
property rights.
Explore the eligibility criteria and laws governing industrial designs. Discuss the importance of design
registration, the procedure for registration, and the duration of the registration of a design.