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Intellectual properties law
Introduction: Creation, enjoyment and accumulation of ‘property’ has been a central activity of human
life. Out of four objects of human life, i.e., (Artha), (Kama), (Dharma) and (Moksha) the first object is i.e.,
money. It is a fundamental requirement of sustaining material life.
According to Haisbury’s Laws of England’ property is that which belongs to a person exclusively of others
and can be subject to bargain and sale. It includes goodwill, trademarks, licences to use a patent, book
debts, options to purchase, life policies and other rights under a contract.
Property can be classified into two broad categories
(i) Tangible—(Movable and Immovable)
(ii) Intangible—(Intellectual Property)
The subject-matter of this book is intellectual property and its legal protection. Therefore, in forthcoming
pages all aspects of intellectual property rights and various laws regulating IPRs will be discussed in
comprehensive- manner.
The meaning of intellectual property - The person who creates an intellectual piece of work owns it like
any other tangible property like land or movable goods. The owner of the intellectual property may assign
intellectual property itself or any interest in the intellectual property in the favour of any other person in
consideration of monetary gain.
Intellectual property is basically a creation of intellect or relates to intellect and it is a right pervaded in
some property of real nature, as such it is only a property in fiction or a fictional property and not a real
property even though it is pervading some real property. For instance, copyright, patent, trade marks,
designs are the intellectual properties.
Why Legal Protection for intellectual Property?
Every human attempt which promotes economic, social, scientific and cultural development of society
must be encouraged and the creator must be suitably rewarded by affording legal protection to his
intellectual creation. Thus the Intellectual Property Rights (IPRs) are the legal rights governing the use of
creations of human minds.
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The intellectual property law regulates the creation, use and exploitation of mental or creative labour. It
prevents third parties from becoming unjustly enriched by reaping what they have not sown. This is a
branch of the law which protects some of the finer manifestations of human achievement.
Scope of Intellectual Property Rights
The Convention establishing World Intellectual Property Organisation (WIPO) has given a wider definition
of IPRs. According to this definition the IPRs shall include the rights relating to
(i) Literary, artistic and scientific work;
(ii) Performances of performing artists, phonograms and broadcasts;
(iii) Inventions in all fields of human effort;
(iv) Scientific discoveries;
(v) Industrial designs;
(vi) Trade marks, service marks, and commercial names and designations;
(vii) Protection against unfair competition and; all other rights resulting from intellectual activity in the
industrial, scientific literary or artistic fields.
The main forms of intellectual property
Intellectual property may be mainly divided into, the following four kinds…
1. Copyright: It is an exclusive privilege of printing, multiplying, publishing and selling a literary or artistic
work or a technical production like a map, blue-print or motion picture or a sound recording or musical
work, etc.
Copyright law has been developed to give legal protection to ‘copyright’. Right to “copyright” has become
a statutory right under the copyright Law. Copyright Law prevents the reproduction, sale or any other act
with respect to a work if it is done without the consent of the owner of the copyright in that work. Because
any act done with respect to a work in which a copyright subsists without the authority of the owner of
such copyright is deemed to be an infringement of the copyright. The copy right Law achieves the
following objectives:
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1. Protection of individual commercial interest in an intellectual work.
2. Protection of social interest.
Copyright law existed in India even prior to its independence. The copyright law in India can be traced to
Indian Copyright Act, 1847. The Indian Copy-right Act, 1847 was enacted during East India Company’s
regime, Later the imperial copyright Act, 1911 of United Kingdom was extended to India as part of his
Majesty’s dominion. Then in 1914, Indian legislature passed the Indian Copyright Act of 1914. To this Act
was annexed the modified version of the Imperial copyright Act, 1911 for its application in India. Thus prior
to its independence, the copyright law applicable in India consisted of Indian copyright Act, 1914 and the
Imperial copyright Act, 1911 of United Kingdom as modified in its application to India by the Indian
copyright Act, 1957 to be applicable in India.
The Copyright Act, 1957 came into force on 21-1-1958 and extends to the whole of India.
2. Trade Marks Some mark, symbol or pattern or other device with or without words, affixed to goods
offered for sale whereby the goods offered for sale, whereby the goods of a manufacturer or dealer can
be at once distinguished from similar goods of other manufacturers or dealers.
The Trade and Merchandise Marks Act, 1958 for the first time codified the law relating to trade marks and
provided for registration of trade marks already in use and even those proposed to be used. Since 1958 it
has been amended several times. In view of the developments in trading and commercial practices,
increasing globalization of trade and industry, the need to simplify and harmonize trade mark
management systems, it has been considered, by the parliament, necessary to bring out a
comprehensive legislation on the subject. Accordingly the Trade Marks Act, 1999 was passed to replace
the Act of 1958.
3. Patents Patent is an exclusive right granted to inventor or discoverer to make, sell or use his
inventions or discovery. Its characteristic lies in the power of excluding others even if the patentee does
not desire to use the patent himself. The history of patent law in India may be traced to the Act IV of 1856
which granted exclusive privileges to inventors in India. The Act of 1856 was modified by the Act of 1859,
which enabled the British patent holders to register their exclusive privileges in India. Then in 1872 the
Patent and Designs protection Act was enacted which extended protection of law to the designs also. The
Patent and Designs Protection Act, 1872 was followed by the protection of Invention Act, 1883 which
further was followed by a consolidated Act in 1888. Finally, a comprehensive legislation on the patent and
designs was enacted in the form of the Indian Patents and Designs Act, 1911. The Indian Patents and
Designs Act, 1911 remained in force in India until India became independent and the Patents Act, 1970
passed by the Indian Parliament came into force in the year 1972.
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4. Design The term ‘design’ has been defined in Section 2(d) of the Designs Act, 2000 to mean only the
features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article
whether in two dimensional or three dimensional or in both forms, by any industrial process or means
whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to
and are judged solely by the eye; but does not include any made or principle of construction or anything
which in substance a mere, mechanical device and does not include any trade mark as defined in section
2(1) (v) of the Trade and Merchandise Marks Act, 1958 or, property mark as defined in section 2(c) of the
Copyright Act, 1957.
Before independence, in India, statutory protection to designs was accorded by the Designs Act, 1911.
The Designs Act, 1911 was passed by the British Government of India. Since the enactment of the
Designs Act, 1911, there has been tremendous progress in the field of science and technology. Therefore,
Designs Act, 1911 has been repealed by the Designs Act, 2000.
5. Geographical Indications An indication which identifies goods, such as agricultural goods, natural
goods or manufactured goods as originating in the territory of a country; or a region or locality in that
territory are called as geographical indications. These indications denote quality, reputation or other
characteristics of such goods essentially attributable to its geographical origin. The right conferred on
geographical indication confers the right to prevent competition from commercially exploiting the
respective rights to the detriment of the owner of that property.
6. Industrial Designs Industrial design means only the features of shape, configuration, pattern,
ornament or composition of lines or colour applied to any article whether in two dimensional or three
dimensional or in both forms, by any industrial process or means whether manual, mechanical or
chemical, separate or combined which in the finished article appeal to and are judged solely by the eye;
but does not include any mode or principle of construction and does not include any trade mark. In the
case of industrial designs the property consists in the exclusive right to apply the design registered under
the statute.
WIPO (short note)
Introduction Establishment of WIPO has made the task of implementation of various international
instruments easier and effective. It has emerged as a coordinating and regulatory organization in the field
of IPRs. Similarly, emergence of WTO and its related instrument of TRIPs have strengthened and
globalize the legal regime of IPRs.
World Intellectual Property Organization (WIPO) Establishment of WIPO is a landmark event in the
history of promotion and protection of intellectual property rights at global level. The convention
establishing the WIPO was signed at Stockholm on 14th July, 1967. The WIPO has been designated as
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specialized body of United Nations and it also acts as a complimentary body with WTO in so far as
promotion and protection of IPRs is concerned. The Head Quarter of WIPO is at Geneva.
Objectives of WIPO
(i) To promote the protection of intellectual property throughout the world through co-operation among
states and where appropriate in collaboration with any international organization;
(ii) To harmonize national intellectual property legislation and procedures;
(iii) Provide services for international applications for intellectual property rights;
(iv) Exchange information on intellectual property;
(v) Provide legal and technical assistance to developing and other countries;
(vi) Facilitate the resolution of private intellectual property disputes;
(vii) Marshal information technology as a tool for storing, accessing and using valuable intellectual
property information.
Membership of WIPO
Membership of WIPO is open to any state which is member of any Unions.1 Even if it is not a member of
Union; a nation can become member of WIPO if it is a member of United Nations or other specialized
agencies. The membership of WIPO has gone up to 177 countries.
Programmes and activities of WIPO
(i) advice and expertise in the modification of national legislation is particularly important for those WIPO
member States with obligations under the TRIPs Agreement;
(ii)comprehensive education and training programmes at national and regional levels for officials dealing
with intellectual property, including those concerned with enforcement and; for traditional and new groups
of users, on the value of intellectual property and how to create their own economic assets through better
use of the intellectual property system;
(iii) widespread computerization assistance to help developing countries acquire the information
technology resources (both in human and material terms) to streamline administrative procedures for
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managing and administering their own intellectual property resources, and to participate in WIPO, global
information network;
(iv) Financial assistance to facilitate participation in WIPO activities and meetings, especially those
concerned with the progressive development of new international norms and practices.
WTO (short note)
In the background of the structural changes in the world economy, the successful conclusion of the
Uruguay Round of trade negotiations paved the way for a new era of profound significance for the
emerging trading system. The Uruguay Round negotiations formally began in 1986 and it took seven
years for its conclusion on the 15th December, 1993 and thereupon the Final Act was signed on 15th
April, 1994 at Marrakash (Morocco). As a result, replacing the GATT the World Trade Organization (WTO)
was established on the 1st January; 1995.
The creation of WTO is, in fact a landmark in the history of mutual trading system. Although there are
many disturbing features as regards economic interests of developing countries in comparison with
developed countries especially in the field of labour, environmental subsides and intellectual property
rights, yet this compromising deal have come to stay. One of the major agreements having far-reaching
impact on IPRs is the agreement on trade related aspects of Intellectual Property Rights.
TRIPs (short note)
The TRIPs Agreement for the first time creates a mutual framework for enforcement of all IPRs which
were so far left to the nation states to carry out at their discretion under national laws.’ It is a mandatory
agreement attached to WTO. Every member of WTO is required to observe the provisions of TRIPs and
provide minimum level of IPRs in their national laws. Failure to comply with the minimum prescribed
requirement will cause penal provisions of WTO.
Need and Justification of TRIPs –
(i) To reduce impediments to international trade by taking into account the need to promote effective and
adequate protection of IPRs, and to ensure that measures and procedures to enforce IPRs do not
themselves become barriers to legitimate trade.
(ii) To provide a mutual frame work of principles, rules and disciplines dealing with international trade in
counterfeit goods.
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(iii) To provide to the special needs of the least developed countries in respect of maximum flexibility in
the domestic implementation of laws and regulations in order to enable them to create a sound and viable
technological base.
(iv) To resolve disputes on trade-related intellectual property issues through mutual procedures.
(v) To establish a mutually supportive relationship between the WTO and the WIPO as well as other
relevant organization.
(vi) To provide for adequate standards and principles concerning the availability, scope and use of trade
related Intellectual Property Rights.
(vii) To provide effective and expeditious procedure for the multilateral prevention and settlement of
disputes between governments.
(viii) To provide effective and appropriate means for the enforcement of trade-related intellectual property
right, taking into consideration differences in national legal system.
Geographical Indication (short note)
Introduction
Certain goods, whether, naturally found, agriculturally cultivated or manufactured in a particular territory of
a country or a region or locality have specific characteristics with regard to taste, aroma or quality. These
goods are marketed on the basis of their appellation of origin or geographical indication. Paris perfume,
Scotch whisky, Russian vodka, French Champagne, Basmati Rice, Darjeeling Tea, Swiss Chocolates,
Nagpur orange, Kashmiri apple, Bikaneri bhujiya. Benaras silk, are some of the illustrations where goods
have acquired a special importance on account of their association with indication of source.
There has been growing tendency to use false or deceptive indication or source of goods to lure
customers. At international level the Madrid Convention and Lisbon Agreement’ have laid down the norms
for protection against false and misleading indication.
Meaning of Geographical Indication
According to Section 2(1)(e) geographical indication in relation to goods, means “an indication which
identifies such goods as agricultural goods, natural goods or manufactured goods or originating, or
manufactured in the territory of a country, or a region or locality in that territory, where a given quality,
reputation or other characteristic of such goods is essentially attributable to its geographical origin and in
case where such goods are manufactured goods one of the activities of either the production or of
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processing or preparation of the goods concerned takes place in such territory region or locality, as the
case may be.”
Explanation.—For the purposes of this clause, any name which is not the name of country, region or
locality of that country shall also be considered as the geographical indication if it relates to a specific
geographical area and is used upon or in relation to particular goods originating from the country, region
or locality, as the case may be.
Good means any agricultural, natural or manufactured goods or any goods of handicraft or of industry and
include foodstuff.
The Basmati Controversy
The grant of US patent to Ricetect Inc a US multinational company in the name of Basmati necessitated
the urgency of enacting law for protection of geographical indications.
After hard work of two and a half years, India put together the data and challenged the patents of Ricetec
Inc. in April 2000. The US Patent and Trademark Office (USPTO) issued patents to only three strains of
hybrid “basmati” grain out of 20 claims developed by the Ricetec while rejecting a more sweeping claim
by the company. The three strains of Basmati to which protection was afforded, were patently and
noticeably different. As far as the use of geographical indication “Basmati’ by Ricetec mci. was concerned,
the patent office stated that Ricetec could use the Basmati appellation because it was not a trade marked
name or a geographic indicator, unlike “champagne” or “Port” which were specific to a region. It was
further stated that “Basmati” was not a geographic indicator even in India. It was grown all over India,
Pakistan and even in Thailand.
This ruling of USPTO goes against Indian interest so far as geographical indication of “Basmati” is
concerned. The Basmati controversy was an eye opener and India enacted the Geographical Indications
of Goods (Registration and Protection) Act, 1999 (hereinafter an Act.). This is the first specific law which
provides for the registration and protection of geographical indications.’
Know-how (short note)
Know-how can be defined as confidentially held, or better, 'closely-held' information in the form of
unpatented inventions, formulae, designs, drawings, procedures and methods, together with accumulated
skills and experience in the hands of a licensor firm's professional personnel which could assist a
transferee/licensee of the object product in its manufacture and use and bring to it a competitive
advantage. It can be further supported with privately-maintained expert knowledge on the operation,
maintenance, use/application of the object product and of its sale, usage or disposition.
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The inherent proprietary value of know-how lies embedded in the legal protection afforded to trade
secrets in general law, particularly, 'case law'. Know-how, in short, is "private intellectual property". The
'trade secret law' varies from country to country, unlike the case for patents, trademarks and copyright
where there are formal 'conventions' through which subscribing countries grant the same protection to the
'property' as the others; examples of which are the Paris Convention for the Protection of Industrial
Property and the World Intellectual Property Organization (WIPO), under United Nations, a supportive
organization designed "to encourage creative activity, [and] to promote the protection of intellectual
property throughout the world".
A trade- secret may be defined as:
a. it is information
b. it is secret, not absolutely so
c. there is intent to keep it secret
d. it has industrial, financial or trade application
e. it has economic value
For purposes of illustration, the following may be a provision in a license agreement serving to define
know-how:
Know-how shall mean technical data, formulae, standards, technical information, specifications,
processes, methods, code books, raw materials, as well as all information, knowledge, assistance, trade
practices and secrets, and improvements thereto, divulged, disclosed, or in any way communicated to the
Licensee under this Agreement, unless such information was, at the time of disclosure, or thereafter
becomes part of the general knowledge or literature which is generally available for public use from other
lawful sources. The burden of proving that any information disclosed hereunder is not confidential
information shall rest on the licensee.
Traditional Knowledge (short note)
We are living into the world dominated by power of knowledge. It is true that the present generation has
better opportunities and facilities to acquire knowledge and transform it into creation of wealth. But
generations over generations a great treasure of knowledge and wisdom has been created by people who
might not have been formerly educated in class rooms. But they have had strong commonsense, great
understanding of nature, rich experience and selfless attitude. The indigenous people, local communities,
legends are great reservoir of traditional knowledge.
It is equally true that in this competitive global era only those nations will survive and flourish who have
the potential to convert the knowledge into wealth.
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People at large do not have the capacity to transform their knowledge into formal specification and
consequently into wealth. Some people who are vulnerable because of their poverty, illiteracy, isolative
habitat, lack of information and technological gadgets are unable to convert their knowledge into wealth.
On the other hand, some are able, strong and effective to use traditional knowledge for profiteering.
Neem and Turmeric Case
The Indian Council for Scientific and Industrial Research (CSIR) filed a case with the US Patent Office
challenging the patent on the grounds of ‘prior art’, i.e. existing public knowledge. CSIR said turmeric has
been used for thousands of years for healing wounds and rashes and therefore its use as a medicine was
not a new invention. OSIR also presented an ancient Sanskrit text and a paper published in 1953 in the
Journal of the Indian Medical Association. The US Patent Office upheld the objection and cancelled the
patent. The turmeric case failed to meet the novelty criterion.
The European Patent Office (EPO) revoked in its entirety Patent Number 436257 which had been granted
to the United States of America and the multinational corporation W.R. Grace for a fungicide derived from
the seeds of the Neem tree.
Need for Protection of Traditional Knowledge
The need and justification for protecting traditional knowledge can be underlined as under –
1. Traditional knowledge has potential of being transformed into wealth by providing leads/clues for
development of useful practices and processes for the benefit of mankind.
2. The valuable leads/clues provided by traditional knowledge can save time, money investment in
modern biotechnology and other industries into research and product development.’
3. Existing IPR system is based on individual private property rights. Traditional knowledge is
incompatible with IPR because it emphasized collective creation and ownership.
In traditional knowledge system, information is classified into four groups-
1. Information is well documented and available to the public for examination and use, e.g. ayurvedic text,
information in the palm leaves.
2. Information that is not documented or commonly known outside small group of people and not revealed
outside the group e.g. tribal knowledge.
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3. Information known to society with or without documentation and is in constant use by people, e.g.
common use of Neem and Turmeric.
4. Information known only to individuals and member of families, e.g. cure of asthma by Goud family of
Hyderabad using specific fish variety as a means for a dispensing anti- asthmatic drug.
Information which falls within public domain do not satisfy IPR viz, newness, non-obviousness and
innovativeness. Thus the IPR is not applicable to protect traditional knowledge.
The Protection of Plant Varieties and Farmers’ Rights Act, 2001 (short note)
Introduction Scientific advancement in the field of biotechnology and tissue culture has ushered in an
agricultural revolution. Development of new plant varieties and better quality of seeds has accelerated the
agricultural development. It has, therefore, been internationality recognized that rights of plant breeders
should not only be recognized but protect as well.
India being a member of WTO also realized the need to protect interests of plant breeders, farmers and
promote conservation of genetic resources and seed industry. It was thought proper to enact a separate
legislation for this purpose.
According to the Act “breeder’ means
(a) the person who breed, or discovered and developed a variety,
(b) the person who is the employer of the aforementioned person or who has commissioned the latter’s
work, where the laws of the relevant Contracting Party so provide, or
(c) the successor in title of the first or second aforementioned person, as the case may be.
The Act seeks to achieve following objectives
(a) To stimulate investments for research and development both in the public and the private sector for
the development of new availability of high quality seeds and planting material to Indian farmers; and
(b) To facilitate the growth of the seed industry in the country through domestic and foreign investment
which will ensure the availability of high quality seeds and planting material to Indian farmer; and
(c) To recognize the role of farmers as cultivators and conservers and the contribution of traditional rural
and tribal communities to the country’s agro-biodiversity by rewarding them for their contribution through
benefit sharing and protecting the traditional rights of the farmers.
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(d) While providing for an effective system of protection of plant breeders’ rights, the proposed legislation
seeks to safeguard farmers’ and researchers’ rights. It also contains provisions for safeguarding the larger
public interest.
The farmer’s rights include his traditional rights to save, use, share or sell his farm produce of a variety
protected under this Act provided the sale is not for the purpose of reproduction under a commercial
marketing arrangement.
(e) The proposed legislation contains provisions to facilitate equitable sharing of benefits arising out of the
use of plant genetic resources that may accrue to a breeder from the sale disposal etc. of seeds/planting
material of a protected variety.
The village and farming community will be compensated in case their traditional or local variety is used for
the development of new varieties.
(f) To collect statistics with regard to plant varieties seeds.
Farmers Rights (Section 39)
1. Notwithstanding anything contained in this Act -
(i) a farmer who had breed or developed a new variety shall be entitled for registration and other
protection in like manner as a breeder of a variety under this Act;
(ii) the farmers’ variety shall be entitled for registration if the application contains declaration as specified
in clause (h) of sub-section (1) of Section 18;
(iii) a farmer who is engaged in the conservation of genetic resources of land races and wild relatives of
economic plants and their improvements through selection and preservation shall be entitled in the
prescribed manner for recognition and reward from the Gene Fund;
(iv) a farmer shall be deemed to be entitled to save, use, sow, resow, exchange, share or sell his farm
produce including seed of a variety protected under this Act in the same manner as he was entitled before
the coming into force of this Act .
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The Indian Patents Act, 1970
Q.1. What are the objects of Patents Act 1970? Define ‘Invention’, which inventions are patentable.
Introduction
Modern era is an era of science and technology. A legal system should reward innovative enterprise by
conferring monopoly rights for the commercial exploitation of an invention. The patent law recognizes
exclusive right of a patentee. In Section 1, Chapter 2, we have discussed international legal regime
relating to various intellectual property rights, including patent. In this chapter the evolution, growth and
recent developments of patent law in India is discussed. Patent Act of 1970 has been amended from time
to time.
Origin of Patent Law in India
The patent system in India emerged when India was a colony of the British and therefore the British used
their own system as a drawing account while drafting the Indian Patent Act. The first Act for protection of
inventions in India was based on the British Patent Law of 1852. Certain exclusive privileges were
granted to the inventors of new manufactures for a period of 14 years. The Act was modified in 1859 and
certain exclusive privileges were granted to inventors for making, selling and using inventions in India and
authorizing them to do so for 14 years from the date of filing specifications. Thereafter the Patent and
Designs Act, 1911 was a detailed legislation and it occupied the field in India, till the passing of the Patent
Act of 1970.
Dawn of industrial revolution, change in economic and political scenario throughout the world and
freedom of India from British rule necessitated a comprehensive law on Patent so as to evolve more
effective patent system in India.
In 1957, the Government of India appointed Justice N. Rajagopala Ayyangar to examine a fresh and
review the Patents Law in India and advise the Government on necessary changes. Justice Ayyangar
submitted a comprehensive report on Patents Law Revision in September 1959. The Patents Bill, 1965
based mainly on the recommendations contained in his detailed report and incorporating a few more
changes in the light of further examination made particularly with reference to patents for food, drugs and
medicines, was introduced in the Lok Sabha on 21st September, 1965. The Patents Bill having been
passed by both the Houses of Parliament on 19th September, 1970, it came on the statute book as the
Patents Act, 1970.
The Indian Patents Act, 1970 provides patent protection in India. The same is in accordance with the
provisions of the TRIPS Agreement.
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The following are the salient features/objects of the Act
1. The Patents Act protects and balances the need of i] inventor as well as ii]the development of entire
country or society by making the knowledge available to the society for further research.
2. The law encourages the inventions and the inventions are worked or made in India on commercial
scale.
3. The patents allow the patentee to enjoy monopoly right over the patented product or process.
4. The recognition of Patent rights has the following effects-
i. It encourages scientific research and new technology.

ii. It grants to the patentee the right to own and sale the patented product or process for a limited given
period
iii. After the fixed period of monopoly right (20 years), the knowledge passes in public domain and
anybody from public can use such knowledge for commercial gain.
iv. The Patent recognition raises the economic prosperity of the country.
v. The knowledge, technological innovations don’t remain secret and the entire world is benefited out of
it.
vi. It encourages the development of research in any country.
vii. The compulsory licensing allows the use of invention for the common welfare of the society.
5. The inventor is rewarded (by monopoly right over his patented product/process). Therefore he is
ready to disclose the invention freely, giving the details of invention and methods of working. This
helps the general public, to use such information after the expiry of patent right.
6. As it provides good earning to the inventor, the research and invention is encouraged. Thus the
technical progress is stimulated.
7. The creation of monopoly rights is able to attract the investment of capital for the production of such
invented goods or process.
8. The industrial growth of the Country has become very profitable as it creates the multiple jobs
available for citizens, thereby increasing national wealth. So it boasts the economy of the country.
9. After the monopoly period, many people can use the concept of goods which creates a healthy
competition favorable for the people.
10. The Worldwide exchange of scientific information has become possible because of such patent
publications. There is no fear of loss of, benefit of invention to the competitor.
11. The law even takes care of abuse of Patent rights, if a Patent is not worked on by the Patentee.
There is a provision of compulsory licensing, revoking license which ultimately helps the intellectual
property being utilized for the benefit of people.
12. The competitor is forced to design the inventions around the patent. Thus it produces the alternative
to the patented product/process. This enables the public to get substitute for patented
product/process which indirectly compels the Patentee not to overcharge his product.
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Definition
PATENT The term ‘patent’ has its origin from Latin word ‘patene’ this means ‘To open’. In legal parlance-
the patent is a legal grant of monopoly right for some fixed term to the creator of new and useful invention
in return of his disclosing the invention. It is an important species of intellectual property. The grant and
use of patent is regulated by law.
Patent, under the Act, is a grant from the Government to the inventor for a limited period of time, the
exclusive right to make use, exercise and vend his invention. After the expiry of the duration of patent,
anybody can make use of the invention.
Sec. 2 (1) (m) of the Patents Act 1970 defines patent…means patent granted under this Act and includes
for the purposes of Sections 44,49,50,51, 52, 54-58, 63, 65, 66, 68-70, 78, 134, 140, 153, 154 and 56 and
Chapter XVI, XVII and XVIII, Aa patent granted under Indian Patents and Design Act 1911
INVENTION Sec. 2 (1) (j) Invention means any new and useful -
a. art, process, method or manner of manufacture,

b. machine, apparatus or other article,
c. substance produced by manufacture,
and includes any new and useful improvement of any of them, and alleged invention
Therefore an invention is the creation of intellect applied to capital and labour, to produce something new
and useful. Such creation becomes the exclusive property of the inventor on grant of patent.
Patent can be obtained for the new and useful invention. Such invention must relate to some machine,
article, substance or process of manufacture.
In case of medicines, drugs or certain chemicals, the patent is not granted for the substance but only for
the process of manufacturing.
PATENTABLE INVENTION-
Every invention is not worthy of grant of patent. In order to obtain patent an invention has to pass through
the triple requirement of newness (novelty), non-obviousness and usefulness. Further even if these
conditions are fulfilled, an invention may be denied grant of patent if it is prohibited under law. In this
chapter essential requirements for grant of patent and details of non-patentable inventions are discussed.
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The above definition of invention reveals that following attributes are essential in a product or process so
as to qualify for patent. They are explained hereunder:
(I) Novelty (newness, uniqueness)- Novelty is of core value. As defined in Patent (Amendment) Act,
2005 a new invention means any invention or technology which has not been anticipated by publication in
any document or used in the country or elsewhere in the world before the date of filing of patent
application with complete specification. There would be no novelty if there has been prior publication and
prior use of an identical invention. For instance, the recent grant of patent in the USA to turmeric products
was challenged on this ground. The Indian Council of Scientific and Industrial Research (CSIR)
challenged the grant of patent on turmeric by the U.S. Patent Office on the plea that the patent could not
be granted since there was no novelty in the invention. Also that what was patented was already
published in Indian texts and use of turmeric preparations has been made in our country since times
immemorial. The CSIR was successful in getting the grant of patent to an American Company revoked.
This instance highlights the importance of the element of novelty for an invention to qualify for grant of
patent.
(II) Non-obviousness - Patent rights are not available for new, useful and non-obvious advances that are
merely obvious extensions or modifications of prior designs that could be achieved without the lure of
patent rights. A patent may not be obtained though the invention is not identically disclosed or described,
if the differences between the subject-matter sought to be patented and the prior art are such that the
subject-matter as a whole would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which the said subject-matter pertains. In addition to novelty, potentiality
is to depend, upon the “non- obvious” nature of the “subject-matter sought to be patented” to a person
having ordinary skill in the pertinent art.
Patents ought not be granted for every trivial advancement. Minor improvements were considered as
reflecting the work of a skilful mechanic for which protection ought not be granted. It is often difficult to
determine whether a given improvement is a mere mechanical advance or the result of the exercise of the
creative faculty amounting to a meritorious invention. The fact that the invention seems simple after it is
made does not determine th question.2
(Ill) Usefulness - Utility of an invention means that the invention must be useful for the purposes
indicated by the inventor or patentee. However it need not mean commercial utility alone. The position in
England is that, if an invention does not have any industrial applications whatsoever it may also clearly
pass the test of utility and qualify for a patent. Section 2(j) of the Act only requires that the invention must
be useful.
Non-Patentable Inventions
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As mentioned earlier, every invention is not patentable. Law forbids grant of patent to certain categories of
invention. Section 3 states that ‘following are not inventions within the meaning of the Act:
(i) An invention which is frivolous (laughing) or which claims anything obviously contrary to well
established natural laws.
(ii) An invention the primary or intended use or commercial exploitation of which could be contrary to
public order or morality or which causes serious prejudice to human, animal or plant life or health or to the
environment.
(iii) The mere discovery of a scientific principle or the formulation of/or discovery of any living thing or non-
living substance occurring in nature.
(iv) The mere discovery of any new property or new use for a known substance or pf the mere use of a
known process, machine or apparatus unless such known process results in a new product or employs at
least one new reactant.
(v) A substance obtained by a mere admixture resulting only in the aggregation of the properties of the
components thereof or a process for producing such substance.
(vi) The mere arrangement or re-arrangement or duplication of known devices each functioning
independently of one another in a known way.
(vii) A method of agriculture or horticulture.
(viii) Any process for the medicinal, surgical, curative, prophylactic (diagnostic, therapeutic) or other
treatment of human beings or any other process.
(ix) Plants and animals in whole or any part thereof other than micro organisms but including seeds,
varieties and species and essentially biological processes for production or propagation of plants and
animals.
(x) A mathematical or business method or a computer program per se or algorithms.
(xi) A literary, dramatic, musical or artistic work or any other aesthetic creation, whatsoever including
cinematographic works and television productions.
(xii) A mere scheme or rule or method of performing mental act or method of playing game.
(xiii) A presentation of information.
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(xiv) Topography of integrated circuits.
(xv) An invention which, in effect, is traditional knowledge or which is an aggregation or duplication of

known properties of traditionally known component or components.
Inventions relating to atomic energy are not patentable - Section 4 clearly states that no patent shall
be granted in respect of an invention relating to atomic energy falling within sub-section (1) or Section 20
of the Atomic Energy Act, 1962? This is obviously for security reasons that invention in the field of atomic
energy is excluded from patent system.
The above description has thus made it clear that every invention is not capable of being patented. In
order to claim patent an invention has to qualify the criteria laid down under Section 2 of the Patent Act
and further the invention should not be covered under prohibited category mentioned under Sections 3
and 4.
Q.2. WHO CAN MAKE APPLICATION FOR A PATENT? DISCUSS THE PROCEDURE FOR
REGISTRATION OF PATENTS, INFRINGEMENT OF THE PATENT AND REMEDY FOR
INFRINGEMENT OF PATENT.
Introduction
Unlike copyright which becomes vested in the author the moment he creates the work, the invention of a
person cannot and does not become entitled for patent unless the procedure prescribed in the Patent Act,
1970 (as amended upto 2005) are fulfilled, and the invention is approved for grant of patent. There is no
ipse dixit claim of patent nor there is suo motu grant of patent by authorities. The Act has prescribed a
detailed procedure which begins with filing of application and is completed with grant and sealing of
patent. Various steps are discussed hereunder
a. APPLICATION FOR A PATENT An application for a patent may be made by-
1. the actual inventor of the invention, or

2. an assignee of the right to make an application or
3. a legal representative of either inventor or assignee.
4. The financial partner, firm or corporation may also claim as assignee (assignee by operation of law)
but the name of actual inventor should be mentioned in the application.
5. In case of inventions done by employee, the ownership of patents belongs to either employer or
employee depending on the specific condition in their contract. If there is no contract, the patent
belongs to the actual inventor.
It is the person who first applies for a patent who is entitled to the grant. A prior inventor of the
invention who applies subsequently will not get the patent as against the first applicant.
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b. FORM OF APPLICATION
1. An application for a patent in the prescribed form along with the prescribed fee should be led in the
patent office and every application shall be for one invention only.
2. Where the application is made by virtue of assignment (by assignee) of right to apply, proof of such
right shall be filed.
3. The application shall state that the applicant is in possession of the invention and give the name of the
owner claiming to be the true and first inventor and where the person so claiming is not the applicant the
application shall contain a declaration that the applicant believes the person so named to be the true and
first owner.
4. Every such application is to be accompanied by a provisional or complete specification.
5. Where the application is accompanied by a provisional specification, a complete specification should

be filed within twelve months from the date of filing the application. If this is not done the application shall
be deemed to be abandoned.
6. The complete specification should fully describe the invention and the method by which it is to be
carried out. It should disclose the best method of performing the invention known to the applicant and end
with a claim or claims defining the scope of the invention for which protection is claimed.
c. PROCEDURE ON RECEIPT OF APPLICATION
1.The application filed is referred by the Controller to the Examiner who makes an inquiry to see whether
it complies with the requirements of the Act and Rules, whether there is any lawful ground of objection of
the grant of the patent, and whether the invention has already been published or claimed by some other
person.
2. The examiner makes a search in the patent office for specifications of prior applications and Patents to
see whether the same invention has ready been published or claimed or is the subject matter of existing
or expired patens.
A report is accordingly made to the Controller within 14 months from the date of reference.
3. The patent office after examination of the application will communicate to the applicant the objections, if
any to the grant of a patent. If the objections are not satisfactorily met the Controller of Patents after
giving an opportunity of hearing to the applicant will refuse the application.
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4. If the applicant satisfactorily removes the objections the controller will accept the complete specification
and advertise it in the official Gazette.
5. A request for sealing the patent can be made not later than the expiration of six months from the date of
publication.
6. From the date of acceptance to the date of sealing of the patent, the applicant will get the benefit of the
grant except that he will not be entitled to institute infringement proceedings until the patent is sealed.
7. Any person interested may give notice of opposition within 3 months from the date of advertisement in
the official gazette.
8. The controller will forward a copy of notice of opposition to the applicant who may file a reply statement
within one month from the date of receipt of copy.
9. Thereafter the parties may file their evidence in support of their respective cases and the matter will be
heard and decided.
10. When the application is accepted either without opposition or after opposition, a patent will be granted
if a request of sealing is made by the applicant.
11. An inventor if he so desires may make a request for mentioning his name in the Patent. The
Controller, if satisfied, will cause his name to be mentioned as inventor in the patent granted, in the
complete specification & in the register of Patents. The mention of inventors name in the patent will not
confer or derogate from any rights under the patent.
d. PERIOD OF PATENT
1. In respect of process patents relating to drugs and food, the term is five years from the date of sealing
the patents or seven years from the date of the patent whichever is shorter.
2. In respect of all other patents the term is fourteen years from the date of the patent. A patent is kept
alive only by paying the renewal fee from time to time.
INFRINGEMENT OF THE PATENT
Introduction ‘Infringement’ means violation of one’s rights granted by law. When a patent right is violated
by an other either illegally the patentee in whose favour the patent is granted can bring a suit for such
infringement.
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Sections 104 to 115 under chapter XVIII of the Patents Act, 1970 deals with the suits concerning
infringement of the patents.
Following acts may constitute infringement
(i) The colorable imitation of an invention
(ii) Immaterial variations in the invention
(iii) Mechanical equivalent
(iv) Taking essential features of the invention
1. Colorable imitation:- In this kind of infringement infringer takes all the essential features claimed in
the patent but alters one or more unessential features or adds some additional features. Such thing may
or may not involve a new inventive steps, it is called colorable imitation’.
2. Immaterial variations: In this kind of infringement infringer makes silent modification in the process or
product.
3. Mechanical equivalents: In this kind of infringement infringer uses mere substitutes for those features
so as to get the same result for the same purpose as obtained by the patentee.
4. Essential features: In this kind of infringement infringer adopts all the essential features of the
invention and thereby indulges in infringement of patent.
If infringer adopts any of the modes mentioned above for the infringement of patent will be held liable for
violation of infringement of patent granted to original patentee.
Onus of proof (Burdon of proof)
In any suit for infringement of a patent, where the subject matter of patent is a process for obtaining a
product, the court may direct the defendant to prove that the process used by him to obtain the product,
identical to the product of the patented process, is different from the patented process .
Defenses in suits of infringement
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In a suit for infringement of patents the defendant (infringer) may plead one or more defenses of the
following. They are…
1. Plaintiff is not entitled to sue for infringement
2. Denial of infringement
3. Leave or license or expre8s or Implied to U89 the Invention.
4. Doctrine of Estoppels or resjudlcata
5. The alleged acts complained of are in accordance with section 47 of the Act.
6. Existence of a restrictive contract declared unlawful.
7. Acts complained of come within the scope of innocent infringement or done after failure to pay renewal
fee.
8. Alleged infringement not novel or it is obvious.
The patent grants to the owner of patent, the right to prevent third parties from making, using, offering for
sale, selling or importing the products in India without the consent of the patent holder. Any violation of the
rights of patentee will constitute infringement of patent. Unlike the patent statute in USA, the Indian Patent
Act does not address the issue of Infringement directly.
But the Act provides the procedure and remedies for preventing infringement. In this chapter issues
relating to infringement and remedies are discussed in detail.
REMEDY FOR INFRINGEMENT OF PATENT
An action for infringement must be instituted by way of a suit in any District Court or a High Court having
jurisdiction to entertain the suit. Suit must be filed within 3 years from the date of infringement. There is no
need to give notice to the defendant before filing suit.
The plaintiff on satisfying the court about infringement of his patent would be entitled to the following
relief:
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1. Interlocutory injunction 2. Final injunction, 3. Damages, 4. Account of profits 5. Delivery up or
destruction of infringing goods, 6. Certificate of validity
INTELOCUTORY INJUNCTION
The Plaintiff may at the commencement of the action move for an interim injunction to restrain the
defendant from committing the acts complained of until the hearing of the action or further orders. The
plaintiff should make out a prima facie case and also show that the balance of convenience lies in his
favour.
FINAL INJUNCTION
Final Injunction Such injunction is granted at the conclusion of suit. The final injunction will remain in
force till the remaining term of the patent. But when the infringement relates to a patent endorsed as
‘License or right’, no injunction will be granted if the defendant is willing to take a license.
DAMAGES
In assessing the damages the important question is what is the loss sustained by the patentee. The loss
must be the natural and direct consequence of the defendant’s acts. The object of damages is to
compensate for loss or injury.
ACCOUNTS OF PROFITS
Where a patentee claims the profits made by the unauthorised use of his patent, it is important to
ascertain how much of his invention was appropriated, in order to determine what proportion of the net
profits realized by the infringer was attributable to its use.
DELIVERY UP OR DESTRUCTION OF INFRINGING GOODS An order for delivery up or destruction is

made with a view to prevent the defendant from making use of the infringing articles which might be in his
possession. It is a discretionary order. The property in the articles which are made in violation of a patent
resides in the infringer though he is prevented from using them.
CERTIFICATE OF VALIDITY If in any proceeding before a High Court for the revocation of a patent the
validity of any claim of a specification is contested and that claim is found by the courts to be valid, the
court may certify that the validity of that claim was contested in that proceeding and was upheld. Where a
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certificate has been granted in respect of a claim, in a subsequent suit for infringement or proceeding for
revocation if the patentee relying on the validity of that claim obtains a final judgment in his favour he will
be entitled to full costs in respect of that claim.
Q. 3. Discuss the law relating to revocation, surrender and restoration of laps patent?
Introduction
The monopoly rights granted to patentee is subject to certain obligations and restrictions. A patentee can
surrender his patent, if he is not willing to carry out those obligations. Similarly if the Patent is obtained
erroneously or contrary to legal provisions of Patent Act, it can be revoked. The Patent Act also provides
an opportunity to patentee to get his lapsed patent restored on fulfilling some conditions. All these issues
are discussed hereunder …
Surrender of Patent
According to Section 63, a patentee may, at any time by giving notice in prescribed manner to the
Controller, offer to surrender his patent.
Where such an offer is made, the Controller should advertise the offer in the prescribed manner and
should also notify every other interested person whose name appears in the Register. Thereafter any
person interested should give notice to the Controller, of opposition to surrender and the Controller should
notify the patentee, of such opposition.
The persons who may oppose include co-patentees, licensees, assignees, and the mortgagees. If the
Controller is satisfied, after hearing both the parties that the patent may properly be surrendered, he may
accept the offer and by an order revoke the patent.
REVOCATION OF PATENTS
Revocation of patents can be made under Section 64 of the Indian Patents Act 1970.
A patent may be revoked on a petition of any person interested or of the Central Government by the
Appellate Board or on a counter claim in a suit for infringement of the patent by the High Court.
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A person interested must be a person who has a direct, present and tangible commercial interest which is
injured or affected by the continuance of the patent on the register.
The revocation proceedings can be initiated by the following:
1. Central Government directs the Controller to revoke the patent,

2. if the invention relates to defense purposes,
3. if the patent is for an invention relating to atomic energy, and
4. if the Central Government feels that the patent or the manner in which it is exercised is prejudicial to
public
5. Controller:
6. If a compulsory license has been granted for a patent, and if a person applies to the Controller on the
ground that the patented invention is not worked at the optimum to meet the requirements of the
public.
7. If an independent patent has been granted for any modification or improvement on the main
invention, the Controller on the patentee’s request may revoke the independent patent on
modification of that invention and grant him patent of addition.
8. If the patentee surrenders the patent the Controller may revoke the patent.
Section 104 of the Patents Act, 1970 (as amended by Patents (Amendment) Act, 2005) expresses that no
suit for infringement of a patent shall be instituted in any court inferior to a district court having jurisdiction
to try the suit and where, in a suit for infringement of a patent, a counter-claim for revocation of the patent
is made by the defendant, the suit, along with the counter-claim is transferred to the High Court for
decision. Further there is no statutory requirement that in a case where a suit for infringement is pending,
revocation of patent can be sought for only by way of a counter-claim and not by way of separate and
independent application.
GROUNDS FOR REVOCATION OF PATENT
Section 64 enumerates various grounds on the basis of which petition can be flied for revocation of
patent. These grounds may relate to
(i) Patentee and his conduct,
(ii) Invention and its quality, and
(iii) Description of invention.
A list of these grounds is enumerated hereunder: ‘
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(a)Patent granted earlier - that the invention, so far as claimed, in any claim of the complete
specification, was claimed as a valid claim of earlier priority date contained in the complete specification
of another patent granted in India;
(b) Application of a person not entitled - That the patent was granted on the application of a person not
entitled under the provisions of this Act to apply therefore;
(c) That the patent was obtained wrongfully in contravention of the rights of the petitioner or any
person under or through whom he claims;
(d) Subject is not an invention - That the subject of any claim of the complete specification is not an
invention within the meaning of this Act;
(e) the invention is not new - that the invention so far as claimed in any claim of the complete
specification is not new, having regard to what was publicly known or publicly used in India before the
priority date of the claim or to what was published in India or elsewhere in any of the documents referred
to in section.
(f) the invention not involve any inventive step - that the invention so far as claimed in any claim of the
complete specification is obvious or does not involve any inventive step, having regard to what was
publicly known or publicly used in India or what was published in India or elsewhere before the priority
date of the claim.
(g) Scope of any claim not sufficiently and clearly defined - that the scope of any claim of the
complete specification is not sufficiently and clearly defined or that any claim of the complete specification
is not fairly based on the matter disclosed in the specification;
(h) That the patent was obtained on a false suggestion or representation;
(i) that the complete specification does not sufficiently and fairly describe the invention and the
method by which it is to be performed, that is to say, that the description of the method or the
instructions for the working of the invention as contained in the complete specification are not by
themselves sufficient to enable a person in India possessing average skill in, and average knowledge of,
the art to which the invention relates, to work the invention, or that it does not disclose the best method of
performing it which was known to the applicant for the patent and for which he was entitled to claim
protection;
(j) is not useful invention that the invention, so far as claimed in any claim of the complete specification,
is not useful;
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(k) That the subject of any claim of the complete specification is not patentable under this Act;
(l) that the invention so far as claimed in any claim of the complete specification was secretly used in
India, otherwise than as mentioned in sub-section (3), before the priority date of the claim;
(m) that the applicant for the patent has failed to disclose to the Controller the information required
by Section 8 or has furnished information which in. any material particular was false to his knowledge;
(n) The applicant contravened any direction for secrecy passed under Section 35 (or made or
caused to be made on application for the grant of a patent outside India in contravention of Section 39);
that leave to amend the complete specification under Section 57 or Section 58 was obtained by fraud.
(0) that the complete specification does not disclose or wrongly mentions the source or
geographical origin of biological material used for the invention;
(p) that the invention so far as claimed in any claim of the complete specification was anticipated having
regard to the knowledge, oral or otherwise, available within any local or indigenous community in
India or elsewhere.
The various grounds mentioned hereinabove reveal that Patent Act has prescribed very strict norms for
obtaining patent and any patent erroneously granted may be revoked by raising any of the
abovementioned grounds.
Revocation of patent in public Interest
If the Central Government is of the opinion that’ a patent or the mode in which it is exercised is
mischievous (bad) to the State or generally prejudicial to the public, it may, after giving patentee an
opportunity of hearing, revoke the patent by making a declaration in the official Gazette.
Restoration of lapsed patent (Sections 60-62)
A patent may lapse for the non-payment of renewal fee in time under Section 53(3). However, the
Controller may within twelve months (from the date on which the patent ceased to have effect) allow the
payment of renewal fee. If the Controller is satisfied that there existed the circumstance and the failure to
pay renewal fee was unintentional he may restore the patent after accepting renewal fee and an
additional fee as levied by him.
However no legal proceedings for infringement of patent shall be maintainable during the period of lapse
of patent.
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It is, thus, clear that the legal grant of patent is subject to legal scrutiny even after the grant and the
patentee may be deprived of patent in certain circumstances.
Q. 4 What are the rights and obligations of patentee?
Introduction A patent shall confer on the patentee a monopoly right for a fixed term,
but subject to certain conditions and obligations. A patentee has exclusive right to exploit, use, and sale or
transfers his patent. He can exclude others from exercising those rights which are available to him alone,
it shall be made clear that the rights discussed hereunder are not absolute rights; they are subject to
some limitations. Further, a patentee has some duties also which are found necessary in larger interest of
public.
Rights of Patentee
(i) Right to exploit patent (Sections 48 and 50) Section 48 confers the rights to exploit the patent on
patentee or his licensee or assignee or agent. It means the patentee or the person legally authorized by
him can make commercial use of the patented invention. He can exclude third parties who do not have
his consent. However, this right is subject to the conditions laid down in Section 47 which empower the
Government to import or use the patent product for its own use. The co-owners of a patent shall also be
entitled to equal undivided share in patent.
(ii) Right’ to license (Section 70) If a patentee is not able or willing to exploit the patent himself, he can
grant license to some other person and authorize him to exploit the patent
and pay him the consideration or royalty.
(iii) Right to assign (Sections 70 and 68) A patentee can fully or partially assign his patent to another
person through sale, gift or any other legal mode. Section 67 requires that such assignment should be in
writing. In case of joint patent the co-owner can assign his share in patent.
(iv) Right to surrender the patent (Section 63) Under Section 63 of the Act, the patentee has the right
to surrender his patent. A patentee, if he so wants may offer to surrender his patent, at any time by giving
notice in the prescribed manner. When such an offer is made, the Controller should advertise the offer
with a view to notifying every person other than the patentee whose name appears in the register as
having an interest in the patent. It is necessary to protect the interests of person like licensees, equitable
assignees, and others with whom the patentee might have contractual obligations which are dependent
on the continuance of the patent.
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(v) Right to be issued duplicate Patent (Sections 154 and 118) If a patent is lost or destroyed or its
non-production is explained satisfactorily to the Controller, the patentee has a right to apply for duplicate
patent.
(vi) Rights against infringement (Sections 104-108) The exclusive rights of patentee can be legally
protected by excluding unauthorized persons from exploiting patent of others. Violation of rights of
patentee amounts to infringement. Patentee has right to seek legal remedies including civil suit against
infringer.2
Limitation on Rights of Patentee
The rights of patentee as mentioned in the introductory remarks are not absolute. They are subject to
certain limitations, following conditions and limitations can be imposed
(i) Use of Patent by Government (Sections 99-103)
A patent has the same effect as against the Government as it has against any other person. But the
Government may use the patented invention, and even acquire it, under certain circumstances and terms,
or prohibit a person from using an invention. The Government may import the patented article or make
the article for its own use, or use the patented process for its own use or for distribution to hospitals or
medical institutions. The aforesaid use can be made without the consent of the patentee or payment of
any royalties. Apart from this, the Government has also power to make use of the patented invention on
payment of royalties.
(ii) Acquisition of invention and patent by Government Section 102 lays down that the Central
Government on being satisfied that it is necessary that an invention mentioned in an application for a
patent or in any already granted patent, should be acquire& for public purpose, it would publish a
notification to that effect in the official Gazette. Upon such publication, the invention or the patent and all
the rights in respect of the same shall stand transferred and be vested in the Central Government.
Notice of acquisition shall be given by Government to the applicant, and where a patent has been granted
to the patentee and other persons having interest in the patent.
The applicant or the patentee in such a case, shall be paid compensation, as may be agreed upon
between the Central Government and the applicant or the patentee. If no such agreement is arrived at,
the compensation will be determined by the High Court on a reference made to it under Section 103 of
the Act.
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The Central Government shall pay compensation to the patentee or applicant or any other Person
appearing in the register, as per the agreement.
If there is no agreement as stated above then it shall be determined by the High Court on a reference
under section 103.
High Court shall decide the compensation having regard to-

 the expenditure incurred in connection with the invention and,
 in the case of a patent, the term thereof, the period during which and the manner in which it has
already been worked (including the profits made during such period by the patentee or by his licensee
whether exclusive or otherwise) and
 Other relevant factors.
In this way the Central Government can acquire any invention or patent by paying compensation to the
patentee or applicant, in the interest of public.
Compulsory Licenses (Sections 84-94)
Under the Indian Patent Act compulsory licenses can be granted after the expiration of three years from
the grant of the patent on the grounds that’
1. Reasonable requirements of the public have not been satisfied;
2. Patented invention is not available to the public at a reasonably affordable price; and
3. Patented invention is not worked in the territory of India.
What constitutes “requirements of the public”?
Reasonable requirements of the public shall be deemed not to have been satisfied if…
(1) Due to the refusal of the patentee to grant license on reasonable terms,
(a) A trade or industry is prejudiced,
(b) Demand for the patented article has not been met to an adequate extent,
(c) An export market of the patented article is not being supplied, or
(d) The development of commercial activities in India is prejudiced,
30
(2) Imposition of condition by the patentee;•
(3) Non-working of the patent in the territory of India;
(4) Working of the patented invention in the territory of India on a commercial scale is prevented by the
importation from abroad,
A compulsory license by notification by Central Government can be granted at any time after the sealing
of the patent on such terms and conditions as the Controller thinks fit. The Controller shall secure that the
articles manufactured under the patent shall be made available to the public at the lowest prices. The
procedures for obtaining a compulsory license need not be complied with in cases of national emergency
or extreme urgency or in case of public non-commercial use which may arise, including public health
crises, relating to Acquired Immuno Deficiency Syndrome, Human Immuno Deficiency virus, tuberculosis,
malaria or other epidemics. The Patents (Amendment) Act, 2005 has inserted a new provision on
compulsory licensing for manufacture and export of patented pharmaceutical products into any country
that does not have sufficient manufacturing capability.
Licenses of Right A particular modality of compulsory licenses was the licenses of right” provided in
many countries. Licenses of rights are available when a patentee voluntarily throws his invention open to
anyone who asks for a license on terms to be agreed upon with him in the absence of agreement on
terms to be settled by the Patent Office. A patent may be endorsed with the words “License of Right” after
3 years from the date of sealing of the patent. When a patent is endorsed with the words “License of
Right” any person who is interested in the working of the patented invention may require the patentee to
grant him a licence. The TRIPs Agreement prohibits the automatic and across the board “Licence of
Right” of the kind that was envisaged in the Indian Patent Act, 1970. The provisions relating to licenses as
of right that were available in the Indian Patent Act have been repealed by the Patent Amendment Act,
2002.
Termination of compulsory licenses
A patentee can seek termination of compulsory licence granted under Section 84 by making an
application to Controller on the ground that the circumstances that gave rise to the grant of compulsory
licence no longer exist and such circumstances are unlikely to re-occur. The Controller shall, on receipt of
an application in the prescribed manner, grant a compulsory licence solely for manufacture and export of
the concerned pharmaceutical product to such country under such terms and conditions as may be
specified and published by him. Sec. 94.
Obligations of Patentee
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(i) Duty to work out patent and make it available to public
The possession of a patent confers on the patentee not only certain valuable monopoly rights and
privileges, but also certain obligations and duties. Patents are granted not only to encourage inventions
but also to secure that the inventions are worked in India on a commercial scale and to the fullest extent
that is practicable without undue delay.
It is also essential that the monopoly created by the patent should not unfairly prejudice the interests of
the public. If the patent is not used or the monopoly is abused, compulsory licence may be granted to any
person who is willing to work the patent or the patent may even be revoked.
It is an implied responsibility of the patentee to work the patent in India in such a manner that the
reasonable requirements of the public with respect to the patented invention are satisfied and the
products of the invention are made available to the public at a reasonable price. Failure to discharge this
obligation may amount to abuse of the monopoly granted.
(ii) Duty to furnish information
It is the duty of patentee to furnish information demanded by Controller under Sections 100 and 146. If he
fails to furnish such information he is liable for penalty up to rupees twenty thousand. The above study
reveals that while Patent Act has granted rights to patentee for taking full advantage of his patent, it has
also imposed some limitations in general public interest. The Act thus seeks to maintain a balance
between individual monopoly rights of patentee and national interest and interest of general public.
In simple words patentee is under following obligations…
1. The patent granted should not be used unfairly.
2. The patent should not be used to prejudice the interest of the public.
3. It should be worked in India.
4. Patent should be available in the market at reasonable price.
5. The periodical statements should be submitted regularly to the Government. V
6. The patentee should not make baseless and unjustified threats of an action for infringement of the
patent.
Opposition to Grant of Patent (Section 25) (short note)
32
In the Amendment Act of 2005 provision for both pre-grant and post-grant opposition has been made.
This provision will provide full opportunity for local common companies, as well as other interested
parties, to challenge and prevent the issuing of trivial patents, Pre-grant opposition is important, since it
could prevent the issuing of trivial patents without litigation, which is often time consuming and expensive,
and may be beyond the means of local companies and organizations. Where an application for a patent
has been published but a patent has not been granted, any person may, in writing, represent by way of
opposition to the Controller against the grant of patent. All relevant grounds which are available in the
post-grant stage are also available in the pre-grant stage.
After the grant of patent but before the expiry of a period of one year from the date of publication of grant
of a patent, any person interested may give notice of opposition to the Controller. After receipt of notice
the Controller will constitute Opposition Board. On the basis of report of Board,
the Controller may revoke the patent. Appeal against decision of Controller can be filed before Appellate
Board.
Compulsory Licenses (Sections 84-94) (short note)
Under the Indian Patent Act compulsory licenses can be granted after the expiration of three years from
the grant of the patent on the grounds that’
1. Reasonable requirements of the public have not been satisfied;
2. Patented invention is not available to the public at a reasonably affordable price; and
3. Patented invention is not worked in the territory of India.
What constitutes “requirements of the public”?
Reasonable requirements of the public shall be deemed not to have been satisfied if…
(1) Due to the refusal of the patentee to grant license on reasonable terms,
(a) A trade or industry is prejudiced,
(b) Demand for the patented article has not been met to an adequate extent,
(c) An export market of the patented article is not being supplied, or
(d) The development of commercial activities in India is prejudiced,
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(2) Imposition of condition by the patentee;•
(3) Non-working of the patent in the territory of India;
(4) Working of the patented invention in the territory of India on a commercial scale is prevented by the
importation from abroad,
A compulsory license by notification by Central Government can be granted at any time after the sealing
of the patent on such terms and conditions as the Controller thinks fit. The Controller shall secure that the
articles manufactured under the patent shall be made available to the public at the lowest prices. The
procedures for obtaining a compulsory license need not be complied with in cases of national emergency
or extreme urgency or in case of public non-commercial use which may arise, including public health
crises, relating to Acquired Immuno Deficiency Syndrome, Human Immuno Deficiency virus, tuberculosis,
malaria or other epidemics. The Patents (Amendment) Act, 2005 has inserted a new provision on
compulsory licensing for manufacture and export of patented pharmaceutical products into any country
that does not have sufficient manufacturing capability.
Termination of compulsory licenses
A patentee can seek termination of compulsory licence granted under Section 84 by making an
application to Controller on the ground that the circumstances that gave rise to the grant of compulsory
licence no longer exist and such circumstances are unlikely to re-occur. The Controller shall, on receipt of
an application in the prescribed manner, grant a compulsory licence solely for manufacture and export of
the concerned pharmaceutical product to such country under such terms and conditions as may be
specified and published by him. Sec. 94.
PATENTS OFFICE (short note)
The Patent head office is at Calcutta and there are branch offices at Bombay, Delhi and Madras.
SOME RESTRICTED USE OF PATENTED INVENTION PERMISSIBLE UNDER THE LAW (short note)
The essence of a patent is conferring of the exclusive right on the patentee. Yet some restricted use of a
patented invention by a person other than the patentee is permissible under the law.
For example, use of a patented invention is permissible for research or experimental purposes or for
imparting knowledge or instructions to students
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GRANT OF PATENT DOES NOT GUARANTEE ITS VALIDITY. (Short note)
1. Validity of Patent is not guaranteed
2. The Act provides for search among the records of the patent office for anticipation based on published
material. Such a search cannot however be exhaustive or final.
3. Further there is no provision for examination by the office- to test the presence of inventiveness.
4. This is because the question of inventiveness depends upon the state of Art at a particular point of time
which includes not only published material but also public knowledge and public user..
5.Besides, the question of obviousness or inventiveness has to be judged from the point of view of a man
skilled in the art which requires evidence of experts.
6. This question can be resolved only in opposition or revocation proceedings. But many patents are
granted unopposed.
7. The Act therefore does not guarantee the validity of the patent, which can finally be decided only by
high court in infringement or revocation proceedings.
8. There is no system of patents in existence which guarantees absolutely the validity of a patent when
granted.
9. There are many patents which are invalid but the patentee has some advantage of retaining them. The
existence of such patents often causes competitors to buy such patents or obtain licenses from the
owners for working them.
10. Thus many patents are doubtfully valid. This may be happening in different countries.
11. Probably this is due to enormous development of technology all over the world which makes it
impossible to make a thorough search for novelty and obviousness before the grant of patent.
Assignment and license of patent (short note)
35
Introduction Like physical property, intellectual property may also be transferred by the owner. As such,
patent is a transferable property. The owner of patent, i.e. patentee can transfer partially or frilly his patent
to another person, either for consideration or without consideration. Transfer of patent can take place in
the following manners…
(A) Assignment.
(B) Licence.
(C) Transmission by operation of law.
We shall discuss each mode separately,
A. Assignment (Sections 68 and 70) According to Black’s Law Dictionary assignment means the
transfer by a party all of its rights or interest in the property, It may be through sale for consideration of gift
where no monetary consideration prevails. Assignment differs from licence. In licence only limited and
personal privilege to do some particular act or acts is conferred, whereas, in assignment all rights and
privileges available to patentee (assignor) are transferred to assignee. There can be three kinds of
assignments
(i) Legal assignment.
(ii) Equitable assignment.
(iii) Mortgage.
Legal Assignment An assignment of an existing patent through an agreement which has been duly
registered is a legal assignment. A legal assignee has the right to have his name entered in the Register
of Patents maintained in the Controller’s Office as proprietor of the patent and can thereafter exercise all
the rights conferred on him by the proprietor of patent.
For instance, A, a patentee in respect of a machine useful in the automobile industry assigns his right in
the patent to B through an agreement which is written and duly registered in the patent office. Thereupon,
B becomes the proprietor of the patent.
Equitable Assignment Any document such as letter but not being an agreement, which is duly
registered with the Controller in which patentee agrees to give another person certain defined rights in the
patent with immediate effect, is an equitable assignment. An assignee in such a case cannot have his
name entered in the Register as the proprietor of patent. He can only have a notice of his interest entered
36
in the Register. He can convert the equitable assignment to legal assignment by getting a written
agreement to this effect and having it duly registered.
Mortgage A mortgage is also a form of assignment. A mortgage is a document transferring the patent
rights either wholly or partly to the mortgagee with a view to secure the payment of a specified sum of
money. The mortgagee (a person in whose favour a mortgage is made) is not entitled to have his name
entered in the Register as the proprietor, but he can get his name entered in the Register as a mortgagee.
B. Licence (Sections 84 to 94) A licence is a permission to make, use or exercise the patented
invention which would otherwise be illegal to do so. In licence the ownership of patent remains with
patentee, mere partial use is permitted. The licence may be exclusive or non-exclusive, depending upon
the degree and extent of right conferred. Licence may be classified into two categories viz, voluntary
licence and compulsory licence.
(i) Voluntary Licence Voluntary licence is a written authority granted by the owner of the patent to
another person(s) empowering the latter to make, use, and sell the patented article in the manner and on
terms and conditions provided in the licence. The terms and conditions are settled between the patenter
and the licensee. Controller or Government has no role in the matter of grant of licence. So it is termed as
voluntary licence.
(ii) Compulsory licence Mode and manner of grant of compulsory licence has already been discussed in
preceding chapter.
Registration of Assignment and Licence
Section 68 provides that the assignment of a patent shall be valid only if the assignment is in writing and
the agreement of assigning is reduced to the form of a document which embodies all the terms and
conditions governing the rights and obligations of the parties and the application for registration of such
deed of assignment is filed with the Controller within six months of the execution of such document,’
C. Transmission by Law Transfer of patent by operation of law occurs when the patentee dies or
becomes bankrupt or, in the case of a company, it is dissolved. On the death of the patentee, his interest
in the patent passes to his legal representative in the same manner as any other form of property. In the
case of bankruptcy or dissolution of a company, devolution of property in the patent takes place in the
same manner as in any other property.
37
Certain Restrictive Conditions not to be imposed The restrictive conditions which cannot be imposed
on a licensee in any contract for sale or lease of patented articles or licence to manufacture or use such
articles or licence to work any patented process are provided in Section 140 of the Act as follow …
(i) To require the licensee to acquire from the licensor or the patentee or to prohibit him from acquiring any
article other than the patented article or the article made by the patented process.
(ii) To prohibit the licensee or to restrict him to use an article other than the patented article or the article
made by the patented process which is not supplied by the licensor.
(iii) To prohibit the licensee or to restrict him to use any process other than the patented process.
Any such condition laid down by the patentee on a licensee shall be void.
However, a patentee who has licensed a wholesaler or retailer to sell the patented article may prohibit
them from selling his competitors’ goods. He can also insist that spare parts required for repairing the
patented article leased or licensed should be purchased from him only. This is reasonable requirement to
preserve the quality of the patented article.
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Copy Right law, 1957
Intro: Literary and artistic work is the unique feature of human beings. This intellectual creativity has
been recognized and protected by law in the form of copy rights. It is an exclusive right given by law for
certain term to an author or composer, etc. to print, publish and sale copies of his original works.
Copy Right law existed in India even prior to its independence. The Copy Right law in India can be
stressed to Indian Copy Right Act, 1847 was enacted during East India Company regime. Later, the
imperial Copy Right Act, 1911 of U.K. extended to India as a part of his majesty’s dominion.
In 1914 Indian legislature passed the Indian Copy Right Act, 1914. Thus, prior to its independence the
copy right law applicable in India consisted of Copy Right Act, 1914 and Imperial Copy Right Act, 1911.
After independence the Indian Parliament enacted the Copy Right law, 1957 to be applicable in India.It
came into force on 21st Jan, 1958. It extends to the whole of India.
Features or objectives or purpose of Copy Right Act, 1957 –
1) Definition of various categories of work in which copy right subsists and the scope of rights conferred
on the author under the Act.
2) Provision to determine first ownership of copy right in various categories of work.
3) Terms of copy right for different categories of work.
4) Provisions relating to transfer of ownership and licensing of copy right.
5) Provisions relating to performing rights.
6) Broadcasting rights.
7) International copy right.
8) Definition of infringement of copy right.
9) Exception to the exclusive right conferred on the authors which do not constitute infringement.
10) Authors special rights.
11) Civil and criminal remedies against infringement.
12) Creation of copy right board to facilitate registration of copy right and to settle certain kinds of dispute
arising under the Act.
Characteristics of Copy Right
1) Multiple Rights
Copy right is not a single right rather it is a bundle of right in the same work. It comprises of in case of
literary work, right to reproduction, right to translation, right to adaptation, right to dramatic and
cinematographic version, right to public per formation, and right to serial publication. It is also in the form
of monopoly right restraining other from exercising all or any of the rights and it is also a negative right
restraining others from copying or reproducing the work.
2) The work must be original
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The first and essential requirement for claiming copy right is the originality of work. There can’t claim of
copy right in copy of other than work of in a similar work. Use of original skill and labour is essential to
acquire copy right in a work.
3) Copy right exist in expression of idea and not mere idea
The copy rights exist only in expression of idea in some material form i.e. book, films, photograph, or
musical tone.
Example- A person may have brilliant idea for a story or a picture in his mind. He there narrates his idea
to another person who works on the idea and writes a book. The person who communicate the idea can’t
claim copy right and it is second person who gave expression to the idea, he will become entitled to claim
copy right. It was held in
R.G. Anand V/S Delux Films,
It has declared that there can be no copy right in an idea subject matter, themes or historical facts.
Subject matter of copy right protection
With the help of cases decided by SC the meaning of each class of work is explained through following
illustration.
1) Literary Work
The expression literary work has been defined in section- 2(o) of the Act which includes following subject
matter.
i) Dissertation
The research thesis prepared by scholar involves considerable amount of labour and skill and thus,
entitled for copy right protection.
In Fathesingh Mehta V/S O.P. Single and Oths. (1990)
The Rajasthan High Court granted injunction against use of material by guide from Ph.d thesis of his
student, O.P. Single and Others.
ii) Question Papers

In Jagdish Prasad V/S Parmeshwar Prasad (1960)
SC held that the person who sets question papers in vest labour skill and time on the preparation. He is
the author of question paper and the copy right vest in him.
iii) Encyclopedia and Dictionary
Preparation of dictionary or any subject involves considerable amount of labour, skill and judgment. The
author of dictionary has its copy right.
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iv) Head note of law report
The head note is a systematic clear and concise presentation of principle of law laid down by the court in
a judgment. Preparation of head note requires art and skill of editor.
v) Translation
It is a literary work itself a literary work and is entitled to copy right protection, reproduction
publication of translation without consent or license of a owner of copy right in the original would amount
to infringement.
2) Artistic Work
According to section-2(C) artistic work means,
i) Painting, sculpture, a drawing, including diagrams, maps, charts, or plans whether or not such work
possesses artistic quality.
ii)A work of architecture.
iii) Any other work of architecture craftsmanship.
iv) Painting
It is an artistic work even if it possesses no artistic quality. What is sufficient to entitled to it for a copy
right is that it must be original i.e. the painting should be the creation of the painter and not a mere copy of
another painting.
v) Photography
A photograph is an artistic work entitled to copy right. A photograph must be original i.e. originally taken
by the photographer to be entitled to protection. A photograph of a public object i.e. a public building
when photograph in a particular manner by a particular individual is a subject matter of a copy right.
Case- In Associated Publisher V/S Bashayam (1964)
In this case the portrait of Mahatma Gandhi was made based on two photograph will be entitled to copy
right if it produce a result different from the photograph and the portrait itself is original.
3) Musical Work
Section- 2 (p) defines musical work as work consisting of music including any words intended to be sung,
spoken, or performed with music.
There is no copy right in a song. The words of song create copy right. In the author of the song and the
music of the song is the copy right of the composer. In case where a song is written and the music is
composed by the same man he would won the copy right in the song.
Old song with different music composition (remix)- The remix songs which are very popular among
the young generation is very in the definition of adaptation of musical work. Such adaptation is not an
infringement of original musical composition.
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Gramophone Company of India V/S Super Cassette Industry 1996.
The SC held that version recording done by skillful and laborious re-arrangement of different music with
due permission of the original owner of song may claim protection.
Cinematograph Films
Section-13(1)(b) incorporate cinematograph film as eligible for copy right protection. Cinematograph is a
film which by rapid projection produces the illusion of motion on a screen of many photographs taken
successfully on a long film. The sound track associated with film is also a part of the cinematograph.
Sound Recording
In section-13 (1) (c) added by Amendment Act, 1994. The sound recording has also been eligible for
copy right protection. According to section-2 (xx) sound recording means recording of sounds from which
such sound may be produced / reproduced.
Computer Software
Article-10 of TRIPS and Bern Convention of 1971 require copy right protection for computer programmers
including software and issues relating to internet.
Computer programs means a set of instruction express in words or in any other form including a machine
readable medium capable of causing a computer to perform a particular task.
Computer software includes many items like the program manual and papers required for operation of
computer.
4) Work of Architecture
The work of architecture according to section-2 (b) means any building or structure having an artistic
character or design or any model for such building or structure. It is eligible for copy right protection as
artistic. The work must have an artistic quality. A layout of garden containing steps, ponds, walls,
fountain etc. can be considers a piece of architecture.
Definition of Copy Right Section-14 of the Act has given comprehensive definition of copy right, it is
reproduced here under –
Copy right means, the exclusive right-
a) in case of literary, dramatic or musical work -
i. To reproduce the work in any material form including the story of it in any medium of electronic
means;
ii. To issue copies of work;
iii. To perform the work in public or communicate it to the public;
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iv. To make any cinematograph film or sound recording in respect of the work;
v. To make any translation of the work;
vi. To make adaption of work.
b) In case of computer programs -

i. To do any of the act specified in clause;
ii. To sale or to give on commercial rental.
c) In case of an artistic work -

i. To reproduce the work in immaterial form;
ii. To sale or give on heir;
iii. To communicate the work to public;
iv. To issue the copy of the work;
v. To include the work in any cinematograph film;
vi. To make any adaption of work.
d) In case of cinematograph film -

i. To make a copy of film including a photograph of image, forming part thereof;
iii. To communicate the film to the public.
e) In case of sound recording-

i. To make any other sound recording embodying it;
iii. To communicate the sound recording to public.
Registration of Copy Right

As stated earlier copy right is statutory right and it can be enjoined within the parameter of Copy Right
Act. Although there is no provision in the Act of compulsory registration of copy right, yet the registration
of copy right offer some advantages over non registration. In other words the registration is optional but
beneficial.
Procedure for Registration
Section 44 makes it obligatory for every copy right office to maintain register in the precise form in which
names or titles of works and names and addresses of authors of copy right may be entered on the
application of interested person.
Section 44 prescribes detail procedure for registration. The stepwise formalities are as under –
i. The author or publisher or owner or other person interested in the copy right in any work may make
an application in the prescribe form accompanied by prescribe fee to the registrar of copy right.
ii. The person applying for copy right has to give notice for his application to every person who claims or
has any interest in the subject matter of the copy right or disputes rights of the applicant to the copy
right. In case of joint authorship when only one of the authors makes an application. A notice of such
an application is to be given to the other author.
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iii. If no objection of such registration is received by the registrar of copy right within 30 days and he is
satisfied by the correctness of the particulars given in the application enters the particulars in the
register of copy right.
iv. If the registrar of copy right received any objection to such registration within the time of 30 days he
may enter such particulars of the work in the register of copy right as he deems proper after holding
such inquiry as he deems fit.
v. The registrar of copy right shall as soon as may be sent wherever practicable a copy of the entries
made in the register to the parties concern.
vi. The appeal against decision of the register may be filed to the copy right board within 3 months.
Evidentiary value of Register:

As per section- 48 of Copy Right Act the register of copy right is prima-facie evidence of the particulars
entered therein and shall be admissible as evidence in all courts.
Rectification of Register
Section-50 registration obtains by fraud, mistake, or separation of fact is liable to be rectification from
register of copy right. It was held in
Triloknath Gupta V/S Durga Prasad Gupta.

Section-50 empowers copy right board to correct the register after observing proper procedure.
Publication
Section- 50 (A) added in 1984 requires publication of entries in register as rectified from time to time in
the official gazette or by some other mode.
The term of the copy right - The term of the copy right has been limited to 60 years from the
publication.
1. Sound Recording sec-27
The term is fixed as 60 years from the publication of sound recording. The term was raised to 60 years
from the Amendment Act, 1992.
2. Government Work sec-28
The copy right in respect of government work subsists until 60 years from its publication.
3. Work of public undertaking sec-28 (A)
The term of copy right will be 60 years from its publication.
4. Work of International Organization sec-29
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The copy right shall subsists until 60 years from the Publication of the work.
Assignment and license of copy right
One of the attribute of the ownership right in property or corporal property is the right to transfer it to
others. Therefore, the owner of copy right may either exploit himself the work in multiple ways or he can
transfer it either in a full or in part to others through different ways like assignment or license for
immediate term.
In this chapter we will discuss the various modes of transfer such as-
1. Transfer by assignment - The owner of copy right of work has right to assign copy right to any person.
A person who assign the copy right is called assignee. The effect of assignment is that the assignee
becomes entitled to all rights related to assigned copy right work.
However, mere grant of right to publish and sale the work is a reserving copy right does not amount
assignment of copy right.
Mode of Assignment sec-19
i. Assignment is valid only when it is writing signed by the assigner or by his duly authorized agent.
ii. The assignment instrument shall identify the work and specify the rights assigned and duration and
territorial extent of such assignment.
iii. The instrument of assignment of copy right shall also specify the amount of royalty payable if any to
author or his legal heir.
iv. If the assignee does not exercise the right assign to him within 1 year from the date of assignment
such right shall seem to have lapsed after the expiry of the said period unless otherwise specified in
the assignment instrument.
v. When the period of assignment is not stated the period shall be deemed to be 5 years from the date
of assignment.
vi. If the territorial extent of any assignment of the right is not specified. It shall be presumed extent
within whole of India.
Oral Assignment not valid
On careful analysis of above provisions it becomes clear that the assignment must be in writing only. Oral
assignment is not valid. However there is no specific prescribe from but the deed of assignment should
certain the following details –
i. Identity of work.
ii. The right assigned.
iii. The duration and territorial extent.
iv. The amount to royalty payable.
Shrimangal & co. V/S Books Pvt.Ltd.1973
45
The Madras High Court held that no particular form of assignment under section is required and
assignment can be concluded order in any form in writing on document.
Assignment in future work sec-18(i)
The assignment of copy right may be of existing as well as of future work. But in that case the
assignment will become effective only when the work comes to in existence.
2. Transfer by operation of law sec-20 When the owner of copy right whether it is published or
unpublished dies the copy right will passed on his personal representative as a part of estate provided
that no will has been executed by operation of law.
3. Relinquishment of copy right sec-21 According to sec-21 the author of the work may relinquish or of
any of the right comprised in the work by giving notice to the registrar of copy right. The registrar shall
cause it to be published in the official gazette.
4. Licensing of copy right sec-30-32 The owner of copy right may grant license to do any of the act in
respect of which he has an exclusive right to do. The license can be classified into two categories.
A. Voluntary License sec-30 This section of the copy right Act empowers the owner of the copy right to
grant any interest in the right by license in writing signed by him or his duly authorized agent. The license
relating to future work will however take effect only when the work comes into existence.
B. Compulsory License sec-31 Under certain circumstances the copy right board empowered to grant
compulsory license on suitable terms and conditions in respect of an Indian work. The circumstances
necessary for grant of such compulsory licenses are the following-
a. The work must have been published or performed in public.

b. The author must have refused to allow republication.
c. That by reason of refused the work is kept away from public.
d. The author must have refused to allow communication to the public of such work by broadcast on
reasonable terms.
Q . What is an infringement of copyright? Discuss the remedies available in case of its breach.
Introduction
The owner of a copyright has the monopoly right to exploit his work for commercial gains in different
ways. The nature of rights depends on the nature of work. If any person, without proper authorization of
the owner of the copyright, exploits his work in a manner such as reproduction in any material form
performing the work in public and communication of the work to the public or such other form, with
intention to reap monetary gain, is said to have committed infringement of the copyright of the owner.
46
The Copyright Act clearly defines the acts which amount to the infringement. However, the Copyright Act
also permits use of copyright work in certain manner without committing infringement. The Act also
provides adequate remedies for preventing infringement.
What is infringement (Section 51) Infringement prima facie means unauthorized and illegal
reproduction of work of others. Under Section 51 of the Act the infringement of copyright in general sense
has been explained.
According to Section 51 the copyright in a work shall be deemed to be infringed…
(a) when any person without a licence from the owner of the copyright or the Registrar of Copyright, or in
contravention of the conditions of a licence granted or any conditions imposed by a competent authority
under the Act
(i) does anything, the exclusive right of doing which is conferred upon the owner of the copyright; or
(ii) permits for profit any place to be used for the ‘ communication of the work to the public where such
communication constitutes an infringement of the copyright in the work, or
(b) where a person-
(i) makes for sale or hire, or sells or lets for hire or by way of trade displays or offers for sale or hire any
infringing copies of the work, or
(ii) distributes, either for the purpose of trade or to such an extent as to affect prejudicially the owner of
the copyright, any infringing copies of the work, or
(iii) exhibits to public by way of trade any infringing copies of the work, or
(iv) imports into India any infringing copies of the work except one copy of any work, for the private and
domestic use of the importer.
The explanatory note attached to Section 51 clarifies that the reproduction of a literary, dramatic, musical
or artistic work in the form of a cinematographic film shall be deemed to be an infringing copy.
Illustration A producer, without authorization from the writer of a novel, makes film based on the story of
novel. The said film is deemed as an “infringed copy” of the novel.
Modes of infringement / Factors causing infringement -
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In determining the infringement the plaintiff must prove that directly or indirectly the defendant’s alleged
work is taken from the work or subject-matter in which he claims copyright. The relevant factors which
need to be addressed in determining the infringement are-
Copying.- A person publishes the research article of another person in his name. It is an illustration of
direct copying.
Substantial copying.- A reads the book of B. He uses contents of 5 chapters of B’s book in his book
exactly. In this case there has been substantial copying. Even a small part of work used may constitute
infringement.
D. Narayan Rao v. V Prasad, 2001
The defendant had borrowed a part of speech which was only of 2 and1/2 minutes duration in a film of 3
hours. Yet it was held that substantial part of speech has been copied.
Indirect copying - A work may be copied by making copy from a pre-existing copy of the same work. If a
defendant makes a two dimensional copy of the plaintiffs three dimensional architectural plan he is guilty
of indirect copying. Similarly a play based on novel which in turn was based upon some original play
amounted to infringement of original play.
Burden of Proof - The question whether there has been infringement of copyright depends on whether
colorable imitation has been made and whether the work complained of is or is not a colorable imitation of
another, is essentially a question of fact and the burden of providing that fact is on the plaintiff.
Specific Area of Infringement
Literary work
Drama - In a leading case of R.G. Anand v. Delux Film, 1978 Supreme Court rejected the claims of
plaintiff claiming copying in the theme of his drama, “Hum Hindustani”. In this case the defendant
produced a Film “New Delhi” which according to plaintiff was based on his drama “Hum Hindustani”.
Rejecting the allegation of infringement Supreme Court held that the film was not a substantial or material
copy of the play.
Commentaries on Acts and law books, - Commentaries made by author on the statutes are the original
work of author and eligible for copyright. Reproduction of whole passage or substantial copying amounts
to infringement. However, decision reported in law reports are common property for commentators on law
and use by them is not infringement.
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Novel- Student’s guide book based on novel in which the passages from novel are extensively quoted
will not amount to infringement. In
E.M. Forster v. A.N. Parasuram, 1964
Respondent published a guide book for student novel, “A Passage to India” written by E.M. Forster. The
author alleged that passages from his novel have been extensively copied. The court held the purpose of
the respondent was simply to prepare a study material on the novel and it is neither an abridgement nor a
literary piece of criticism, thus there has been no infringement.
Artistic Work
Artistic work includes painting, sculpture, drawings, engraving, photographic work of architecture and any
other work of artistic craftsmanship. A person acquires copying in his painting by putting element of
originality and application of skill and labour. Any person through a photographic process reproduces the
painting and prepares posters for commercial sale. The same would amount to infringement
Artistic logo and artistic feature in label - The artistic logo and labels are protected under Copyright
Act. When used for commercial goods they are also protected under Trade Mark Act. They are, therefore,
entitled to twofold protection. In
Asian Paint Ltd. v. Jaikrishan Paints, 2002
The Bombay High Court restrained defendant from using label “UTKARSH” which was found as colorable
imitation of plaintiff’s label UTSAV registered under Section 45 of Copyright Act.
Musical Work
Performance in public and reproduction of audio cassettes - Performance of a musical work in public
for monetary gain without obtaining licence from owner constitutes infringement.
Gramophone Company of India v. Super Cassettes Industries, 1999
The court found that audio cassette released by defendant as titled “Ganpati Aarti Ashtvinayak” is an
infringement of plaintiff’s cassettes in contents and sequence of songs as well as lay out of the title and
cover.
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Cinematograph films including video films and TV serials
Video parlors and cable TV - showing video films in video parlors without obtaining licence is an
infringement of copyright of the film. Similarly, without obtaining permission display of TV programmes
through cable TV and dish antenna system on commercial basis is also an infringement of copyright
which is also very common in the society.
TV Serial based on some work - Merely borrowing some character or plot from a book for making a TV
serial would not amount to an infringement.
Celador Production Ltd. v. Gaurav Mehrotra, 2003’
The Delhi High Court found that the defendant’s website using domain name “Crorepati Kaun.com” with
logos and names and identical photographs of plaintiff’s famous T.V. Show KAUN BANEGA KROREPATI
was an act of infringement of plaintiff’s copyright. The ex parte injunction was granted in favour of plaintiff.
Infringement in sound recording (Home Taping) - Home taping of sound recording is a most common
form of infringement of copyright in sound recording. Under the English law home taping is not treated as
infringement but in Indian Copyright Act there is no such concession.
Version Recording - (Remix old songs with different music composition) - Version recording
produced by employing skill and labour may claim protection against infringement but version recording of
old songs by remixing process made without compliance of Section 52(1)(j) of the Act may not be treated
as infringement because of substantial new arrangement and worth of copyright.
Reprography (Xeroxing)
Reproduction by the use of modern equipment like Xeroxing Machines, is called reprography. Section 2(x)
of the Act provides “Reprography mans the making of copies of a work by photo-copy or similar means.”
Duplicating machines are used for reproduction of literary work, documents and drawings. Tape recorders
are used for reproducing music and video-grams are used for reproducing films. Infringement of copyright
by means of “Reprography” is a world-wide phenomenon. Since such infringement is more often at
domestic levels (in the hon. s of people), prevention of such infringement is rather difficult.
Bootlegging
Unauthorised recording of a live performance is called bootlegging. Since there is no copyright in live
performance, the bootlegging cannot be effectively prevented. However, Section 38 confers some special
rights to performers, which include bar on sound or used recording or performance without the consent of
performer.
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Remedies for infringement of copyright
Introduction
Ubi jus ibi remediem (where there is a right, there is a remedy). The Copyright Act has not only conferred
the copyright but laid down effective system for protecting copyright by various remedies, which may be
classified in following categories.
1. Civil Remedies (Sec 54 - 62) A plaintiff in suit for infringement of his copyright can seek following civil
remedies
(a) Anton Pillar Order (Search and Seizure Order)
It is a kind of preventive measure. The courts in England have devised the Anton Pillar Orders in
response to growing concern over the current volume of sound recording, video and other copyright
piracy. In appropriate cases the court may, on application by the plaintiff, pass an ex parte order requiring
the defendant to permit the plaintiff, accompanied by solicitor or attorney to enter the premises and make
an inspection of relevant documents and articles, take copies thereof and remove them for safe custody.
It may be equated with ex parte interlocutory order to inspect premises of defendant and take inventory of
the offending articles. Court, before passing Anton Pillar Order, should ensure that…
(i) Plaintiff makes full disclosure of all details and facts within knowledge and that his conduct is equitable;
(ii) there is an urgency of situation and delay might give the defendant an opportunity to destroy the
offending material. Further the court should not make an Anton Pillar Order which is likely to have safe
incriminating impact on defendant.
(b) Injunction
The plaintiff may seek the relief by way of restraining defendant from infringing his copyright through
temporary, permanent or interlocutory injunction in a civil suit at various stages of trial. The provisions
explained in Order XXXIX, Civil Procedure Code are guiding principles.
(c) Interlocutory Injunction
Interlocutory injunction secures the immediate protection of copyright from an existent infringement or
from the continuance of infringement or an anticipated infringement. A plaintiff may pray for an
interlocutory injunction pending trial or further orders. For obtaining an interlocutory injunction the plaintiff
has to establish…
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(i) a prima facie case;
(ii) balance of convenience in his favour; and
(iii) that refusal to grant interlocutory injunction would cause irreparable injury to the plaintiff.
The defendant, if injured as a result of such injunction, is entitled to compensation by virtue of an

undertaking as to damages, which is made by the plaintiff. Such an undertaking on the part of plaintiff is a
condition precedent for the grant of interlocutory injunction.
(d) Damages on account of profits – The plaintiff is entitled to two types of damages viz.,
(a) one for infringement of his copyright; and
(b) the other for conversion of his copyrighted work into another form.
Account of profits A plaintiff, if successful, is also entitled to account of profits as an alternative to

damages.
Jurisdiction of Court (Section 62) Every suit or civil proceeding in respect of infringement of copyright in
any work or the infringement of any other rights viz., special right to broadcasting organization or
performance shall be instituted in the District Court having jurisdiction.
2. Criminal Remedies
The person found guilty of infringement can also be punished. The plaintiff can, in addition to civil suit,
also file criminal proceedings against infringer. The infringement of copyright is not a civil wrong but also
an offence. For easy and quick reference the offences and punishment provided under various provisions
is presented in tabular form.’
Sec. 63 Knowingly infringing or abetting the infringement of the copyright in a work, or any other work
conferred by this Act (except in case of resale share right in original copies under Section 53A). -
Minimum 6 months’ imprisonment, Maximum 3 years imprisonments fine not less than Rs. 50,000/- up to
Rs. 2 lakhs.
Sec. 63-A For Second and subsequent conviction - Imprisonment Minimum 1 year, Maximum 3 years
Fine Minimum Rs. I Lakh, Maximum Rs. 2 Lakhs.
Sec. 63-B Knowingly using of infringing copies of computer programmes - Imprisonment: Minimum 7
days, Maximum 3 years Fine Minimum Rs. 50,000/-, Maximum Rs. 2 Lakhs.
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Sec. 67 Making false entries in Register of Copyright etc. for producing or tendering false entries -
Imprisonment up to 1 year or fine or both
Sec. 68 Making false statements for deceiving or influencing any authority/officer.- Imprisonment up to 1
year or fine or both
Sec. 68-A Publishing a sound recording or a video film in violation of Sec. 52-A (Video & Audio Piracy).-
Imprisonment up to 3 years and fine
Sec. 65 Possession of plates/other materials used for making infringing copies.- Imprisonment up to 2
years and fine.
Jurisdiction of Court
The criminal proceeding may be initiated in the court of the Presidency Magistrate or the Magistrate of
the first class. The procedure envisaged in Code of Criminal Procedure, 1973 will be applicable. The trial
court may also direct police officer not below the rank of sub-inspector to seize without warrant, all
infringing copies of the work and accessories used for production of infringing work.’
3. Administrative Remedies The Registrar and Copyright Board have also been vested with some
powers to check violation of copyright.
Ban on Importation of Infringing Copies (Section 53)
The Registrar may, on application of owner of copyright or his duly authorized agent, impose ban on
importation of infringed copies of such work, Registrar will make necessary enquiry before passing an
order. He may also pass order directing delivery of confiscated infringed copies to the owner of the work.
A detailed description of remedies available under the Act makes it clear that they are adequate and
effective. But still we find that in India the infringed copies of original work are in very wide circulation in
the market. This may be partly due to lack of awareness about legal remedies and partly due to time
consuming legal process. The time has how come to develop a strong legal environment for copyright
protection and pro active approach in safeguarding the copyright of the owners.
Rights of Owner of Copyright (Short note)
Owner of copyright enjoys bundle of rights with regard to his work. They can be enumerated as under
1. Multiple Statutory Right
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The copyright is a creation of statute. It is granted and protected according to the Copyright Act. It is not a
common law right. But the copyright is not a single right. The owner of the work can exploit and enjoy
monopoly right in his work in several manners. Section 14 of the Act confers exclusive rights to do or
authorize doing of any of the following acts in respect of a work or any substantial part thereof, namely
2. Right to transfer
The author can transfer his rights through assignment or grant permissive use of his copyright to any
person.
3. Negative Right (Right against Infringement)
Unauthorised use of copyright amounts to infringement. This right forms the core of ownership claim
4. Moral Right (Special Right of Author)
Berne Convention1 has recognized the moral right of author which are included as(i) Paternity right, i.e.,
to claim authority of the work even after the assignment of work, and integrity right, i.e., the right to protect
author’s honor and reputation. These rights remain with the author even after the transfer of copyright and
they continue through the term of the copyright. These rights are in addition to economic rights.
Section 57(1) of the Copyright Act (as amended in 1994) has recognized moral rights as author’s special
rights. These rights are…
(a) To claim authorship of the work; and
(b) to restrain or claim damages in respect of any distortion ( misrepresentation), mutilation

(disfigurement), modification or other act in relation to the said work, if such distortion, mutilation or
modification or other act would be prejudicial to his honor or reputation.
Smt. Mannu Bhandari v. Kala Vikas Picture, 1987
The Delhi High Court declared that author’s right to restrain distortion of her work is not limited only to
cases of literary reproduction but it extends to a film based on such work.
Copyright Societies (Short note)
Copyright Societies (Sections 33 to 39-A)
It may generally happen that owners of copyright may individually not be able to derive economic gains of
their work either due to lack of commercial skills or financial resources required for publication of the
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work. It is at this occasion that they may form societies and collectively safeguard their interests. The
Copyright Society is a voluntary association of owners of copyright which is legally registered under the
Copyright Act. It is a representative body of owners of copyright and shall work under the collective
control of the owners of copyright.
Before the Copyright (Amendment) Act, 1994, Sections 33 to 36 dealt with Performing Right Societies,
which had limited powers of granting licenses for performance of a literary, dramatic or musical work such
as stage play based on a novel or story. The 1994 Amendment Act changed the organization of
Performing Right Societies to Copyright Societies and enlarged their power by authorizing them to grant
licence in respect of all rights relating to any class of work in which copyright subsists.
Registration-
Registration of Copyright Society is mandatory and it cannot grant licence without obtaining registration.
Section 33 read with Copyright Rules, 1958 deals with registration. Any association of persons comprising
of seven or more owners of copyright formed for purpose of carrying on business of issuing licence in
respect of any class of work in which copyright subsists may file an application to the Registrar of
Copyright for onward submission to Central Government for grant of permission to carry on such business
and for its registration as Copyright Society.
The Central Government may, having regard to the interest of the authors and other owners of the right
under the Act, the interest and convenience of the public and the ability and competence of the
applicants, register such association of person as a Copyright Society subject to such conditions as
prescribed.
Cancellation of Registration
The Central Government may, if it is satisfied that a Copyright Society’s being managed in a manner
detrimental to the interests of the owners of copyright, cancel the registration of such society after
conducting enquiry.
Powers and functions of Copyright Society (Section 34)
(i) A Copyright Society may accept from an owner an exclusive right of authorization to administer any
right in any work by issue of licence or collection of licence fee or both.
(ii) A Copyright Society may, after obtaining authorization from owner, issue a licence.
(iii) It can collect fee in pursuance of licence.
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(iv) Distribute such fee among owners of right after making deductions for its own expenses.
(v) It may also enter into agreement with foreign society for organizing administering similar rights in other
countries.
If there is any dispute regarding reasonableness of tariff announced by the Society or the authority of
Society to grant licence and fixed rates are challenged the Copyright Board has jurisdiction to decide the
question.
Duties of Copyright Society - A Copyright Society is required to observe following duties
(a) It shall pay remuneration to the owners of copyright by framing proper scheme for determination of the
quantum of remuneration.
(b) It shall submit report and returns to the Registrar of Copyright in prescribed form.
(c) It shall maintain proper annual accounts and other relevant record and submit them to the Central
Government
International Copyright (Short note)
Introduction –
In recent times we have witnessed the emergence of a strong international legal regime in the field of
intellectual property rights. The Indian Copyright Act makes provisions for grant of copyright to foreign
works published by foreign nationals outside India on reciprocal basis and subject to certain limitations.
Section 13(a) of the Copyright Act provides that copyright will be granted only to those works which are
either first published in India or if first published outside India, the author on the relevant date is an Indian
citizen, but these provisions do not apply to international copyrights granted under Sections 40 and 41
read with International Copyright Order, 1999.
Categories of Foreign Works Entitled to Copyright (Sections 40-41)
Under Section 40 the Government of India has been authorized to apply provisions relating to
international copyright. As such the Government of India has issued International Copyright Order, 1992
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overriding earlier International Copyright Order, 1991.
Following categories of foreign works are entitled to copyright protection in India
(1) Works first published outside India to which the International Copyright Order, 1999 applies. Such
works are treated in like manner as if they were first published in India. (The work published by U.S.
citizen in U.S.A. is entitled to copyright in India.)
(ii) Unpublished works of foreign nationals to which the Order of 1999 applies in like manner if the authors
were citizens of India.
(iii) Special right available to Broadcasting organizations and performers under Sections 37, 38 and 39
may be granted to foreign Broadcasting organizations and performers with certain conditions and
limitations.
(iv) Works of International organizations including United Nations first published by them.’
Term of International Copyright
Section 40 makes it clear that the term of copyright to a foreign work in India shall not exceed the term
provided in the law of that country; which means, if the term of copyright is 50 years in that country and
for similar work the term in India is 60 years, the foreign work shall enjoy copyright for 50 years only.
The Trade Marks Act, 1999
Introduction
provided for registration of trade marks already in use and even those proposed to be Used. Since 1958 it
increasing globalization of trade and industry, the need to encourage investment flows and transfer of
technology and the need to simplify and harmonies trade mark management systems, it has been
considered by the parliament, necessary to bring out a comprehensive legislation on the subject.
Accordingly the Trade Marks Act, 1999 was passed to replace the Act of 1958.
By providing for the registration of the trademarks for their better protection and by preventing the use of
fraudulent trade marks, the Trade Mark Law achieves the following twin objectives:
The salient features of the Indian Trademarks Act, 1999*
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With the Trade Marks Act, 1999, being brought into force on September15, 2003, India has made a step
towards fulfilling its international obligations.
Consequently, the Indian trademark law has now become fully compatible with the International standards
laid down in the TRIPS Agreement.
The New Act primarily consolidates and amends the old Trade & Merchandise Marks Act, 1958 and
provides for better protection of goods and services.
The salient features of the New Act are the following:
1. Expanded definition for Trademark The definition of Trademark has been expanded to cover any
mark capable of distinguishing the goods and services of one, from the goods and services of another
and may include any mark capable of graphical representation including aspects of shape of goods, their
packaging, and combination of colors.
As a result, even well known designs can now avail protection under trademark law.
2. Service marks One of the most significant additions in the New Act is the provision for Service mark
registrations. It is a direct effect of the enlargement of the definition of trademark to include services. It is
now possible for business houses and individuals offering any kind of service to register their mark. The
definition of services under the New Act is an inclusive one; therefore entities providing services of any
description in connection with business, industrial or commercial matters can get their Service marks
registered.
3. Collective Marks Sec (2) (g ) (short note)

Collective mark means a trade mark distinguishing the goods or services of the members of an
association of persons not being a partnership firm, which is the proprietor of the mark from those of
others, whereas the trade mark belongs to an individual but a collective mark belongs to an association of
persons, other than partnership firm. Illustration Bajaj, Godrej etc.
As regard registration a collective mark is not registered if it is likely to deceive or cause confusion on the
part of public, particularly if it is likely to be taken to be something other than a collective mark. Collective
mark, a new concept brought into the Act makes it possible for any association to get registration for its
mark.
Collective mark is a trademark or service mark used, or intended to be used by the members of an
association, indicating their membership in such Association.
The Association is the owner of the mark and the members are the authorized users.
For example, the Advertising Club of India can register its name and logo as collective marks and prohibit
non- members from using or associating with the mark.
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4. Well known trademarks Sec.(2) (z g) (short note)
The concept of well-known trademark is a milestone of the new Act.

This provision is adopted to accommodate the requirement of Art 16 of the TRIPS agreement.
The Registrar as per the provisions of the New Act is enjoined not to register a mark that is confusing
similar with a well-known trademark.
The well-known trademark is a mark used over particular goods or services that has obtained sufficient
recognition among the consumers using such goods or services.
The conditions laid down for the determination of a well-known trademark are (1) Knowledge of
recognitions, (2) Promotion of trademark, (3) Duration, extent and geographical area, (4) Registration and
use.
It should be noted that a trademark may be considered as a well known trademark even if it is not,
registered in India or used in India, or if such an application is pending in India or the trademark is not well
known in India to public at large.
The Indian Trademark law has made a remarkable provision, setting out a detailed criteria for the
identification of a well-known trademark in an area where international consensus in lacking.
5. Single Register The system of maintaining registration of trademarks in part A and part B is omitted.
Only a single register will be maintained hereafter, thereby giving no room for discrimination between
applicants, as was done formerly.
All applicants are now given equal rights and opportunities.
Single application for registration under many class of goods
As one of the means to simplify and streamline the procedure of registration, it is now made possible to
file one single application for registration of a mark in different classes of goods or services, instead of
filing separate applications.
This is expected to shorten the process of search of similar marks during registration.
6. Enhanced term of protection and renewal One of the significant changes of the Act relates to the
term of protection of trademarks. It is enhanced from the previous 7 years to 10 years. Renewal is
possible before completion of 10 years in perpetuity.
7. Intellectual Property Appellate Board An Appellate Board has been established having its national
headquarters in Chennai. It is ‘roving in nature’ having its sittings at Kolkata, Mumbai, Delhi &
Ahmedabad periodically depending upon the work demand.
It will hear appeals from the decisions of the Registrar and decide on rectification applications.
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This facilitates speedy disposal of matters in addition to reducing the existing burden on the High Court,
before which appeals used to lie under the old Act.
The Board shall not be bound by the Civil Procedure Code; nevertheless it shall be guided by the
principles of natural justice.
8. Associated goods and services The New Act provides the registered proprietor who has a trademark
over goods, a pre-emptive right over associated services and vice versa.
Thus it prohibits any other trader from using the mark even over similar goods or services. It therefore
differs from the old act which provided protection of imitation of ‘same’ goods thereby effectively
enhancing the protection given to a mark.
9. Prohibition of use of trademark as a corporate name The protection of trademark is extended to

prevent any ‘corporate’ or ‘business concern’ from using someone else mark as its trade name or name of
its business concern dealing in goods and services in respect of which the mark is registered.
10. Providing enhanced punishment for offences To prevent the sale of spurious goods and
falsification of trademarks, enhanced punishment is incorporated. Punishment will be a minimum of 6
months and can extend to 3 years and a fine of rupees 50,000 to 3 lakhs.
It is a hope that this will act as a deterrent to the infringers.

Further the New Act has made these offences cognizable in nature, meaning; the law enforcement
agencies like the police can arrest the violators with out a warrant as they come to know of such activities
as these are considered serious offences.
11. Jurisdiction of courts enlarged The jurisdiction of courts has been enlarged empowering them to
grant ex parte injunction or other interlocutory orders relating to
(i) discovery of documents,
(ii) Preserving the infringing goods or other evidence,
(iii) restraining the offender from disposing off or dealing with the assets in a manner which may adversely
affect the plaintiff’s ability to recover damages, costs or other pecuniary remedies, thereby securing the
trademark owner’s right immediately and effectively.
12. Assignment of unregistered trademarks The impeding provision imposed on the unregistered
trademark owners to assign their trademark with the goodwill of the business has now been removed.
The present Act permits the unregistered trademarks owners to assign and transmit their marks even
without the goodwill of the business.
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13. Defensive registration omitted. The previous Act enabled a trademark owner to register a mark in
other classes as a defensive mechanism; the same is omitted.
With the advent of the complimentary concept of Well-known trademark and the inherent right to secure
registration in associated goods or services being recognized in the New Act, the need for this type of
registration is no longer felt.
14. Widened definition of Infringement The scope of bringing an infringement suit is widened.
Representation of any mark in an advertisement by an unauthorized user constitutes infringement,
provided such advertising takes unfair advantage or is contrary to honest practice of industrial or
commercial matters; or it is detrimental to its distinctive character; or is against the reputation of the
trademark. Any oral use of a word mark also constitutes infringement.
15. Miscellaneous provisions The definition of permitted user is enlarged to include red licensees also,
and the procedure for registration of ‘registered user is simplified.
The final authority in matters relating to registration of Certification marks is shifted to the Registrar from
the Central Government.
The Act also extends the applicability of convention countries to include members of Group or Union of
countries and Inter-governmental organizations such as members of the WTO.
Some major changes brought about in the law of trade marks in India by the Trade Marks Act,
1999 are summarized as under:
a) Inclusion of trade mark for services in the definition of trade mark;
b) A new provision for registration of Collective Marks;
c) Prohibition of registration of certain marks which mere reproductions are of or imitations of well known
marks;
d) Provision for filing a single application for registration in more than one class of goods and/or services;
e) Increasing the term of registration of a trade marks from 7 to 10 years and providing a grace period of
six months for payment of renewal fees;
f) Amplification of circumstances in which validity of registration can be contested;
g) Vesting the final authority in the Registrar for disposing of application for registration of Certification
Trade Marks;
h) Harmonizing penal provisions of the Trade Marks Law with The Copyright Law;
i) Provision for establishment of an Appellate Board.
Conclusion
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On the whole the Trademarks Act, 1999 has removed the inconvenient provisions of the old Act and has
fostered the rights of the traders and other service providers significantly.
It also sends a warning to infringers. Surely, the New Act caters to the developments in trading and
commercial practices, increasing globalization of trade and industry, the need to encourage investment
flows and transfers of technology, need for simplification and harmonization of trademark management
systems and gives effect to important judicial decisions. This legislation has been much awaited by the
legal as well as the business community.
(* students can write any 10 points out of these)
Q. 1 What is Trademark? And explain evolution of Trademark laws.
Introduction- A trade mark, as currently recognized in India, is a visual symbol (in the form of a word, a
name, a device, a symbol, or a label) which identifies any merchant's or manufacturer's goods or services
and distinguishes them from similar goods or services of competitors in the trade. It may include shape of
goods, their packaging and combination of colours.
The Act makes a distinction between a trade mark and a well-known trade mark.
If a substantial segment of public associates a trade mark with a particular class of goods and services,
and if this trade mark is used for other goods or services, and the public is inclined to associate the new
goods/services with the earlier goods/services, then the mark is a well known trade mark.
If the proprietor of a trade mark is an association of persons, who do not make a partnership within the
meaning of the Indian Partnership Act, 1932, the trade mark is called a collective mark.
A special class of trade marks is termed as certification trade marks. These trade marks do not indicate
the origin of the goods, but are certified by the proprietor of the mark as conforming to certain
characteristics, like quality, ingredients, geographical origin etc. Agmark used for food items in India is a
certification mark.
A trade mark is a sign used on, or in connection with the marketing of goods. Saying that the sign is used
on the goods means that it may appear not only on the goods themselves but also on the container or
wrapper of the goods. Saying that the sign is used in connection with the marketing of the goods refers
mainly to the appearance of the sign in advertisements (in newspaper, on television, etc.) or in the
windows of the shops in which the goods are sold.
Where a trade mark is used in connection with services, it may be called service mark, e.g. service
marks used by hotels, restaurants, airlines, tourist agencies. The worth of a trade mark may amount to
huge sums.
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According to Business Week/Inter brand’s Annual Ranking of the 100 Best Global Brands, 2003, the
value of the brand name "Coca-Cola" is estimated to be $70 billion and that of "Nescafe" $12 billion!
A person who sells his product under a particular trade mark acquires an exclusive right to the use of the
mark in relation to those goods. Such a right can be registered under the new Trade Mark Act 1999,
which repealed the Trade Mark and Merchandise Marks Act 1958.
A registered trade mark can be protected against unauthorised use by others by an action for
infringement. An unregistered trade mark can also be protected against unauthorised use by others by an
action of passing off.
A trader is guilty of passing off, if he attempts to pass off his goods by misrepresentation that leads the
consumer to believe that the goods are the same as those of another better-known trader in those goods.
For example, using Coco Cola to cause confusion with Coca Cola is an action of passing off.
Evolution of trade mark law.
Trade marks are a diverse and familiar feature in both industrial and commercial markets. For more than
one thousand years and up to the middle of the eighteenth century, the Great Britain was importing the
textiles, ornaments, etc. from India. The Indian mark goods were very popular in Europe. In Roman times,
it was common for pottery to be embossed or impressed with a mark, for example a representation of a
dolphin or the maker’s initials, as a visit to the British Museum will testify. Merchants’ marks were used in
commerce in Britain from the thirteenth century. Gold and silver articles were hallmarked as early as the
fourteenth century. By the end of the sixteenth century it was very common for shopkeepers to erect signs
illustrating their trade. The Common Law Courts in England used to respect the trade marks of the
owners, and used to give injunction orders restraining the infringers.
Southern vs How. (1618)
possibly it was the first trademark case-law. In that case, Howa dealer in cloth business applied
Southern’s mark to his own inferior cloth. The plaintiff/Southern sued How for damages. The Chancery
Court gave judgment in favor of the plaintiff, and awarded damages against the defendant for his
infringement of mark.
The industrial revolution saw an enormous growth in the use of names and marks in advertising and the
modern trade mark was born. Since the industrial revolution, marks have been treated as a very valuable
form of intellectual property, because they become associated with quality and consumer expectations in
a product or service. Some goods become almost synonymous with their trade name, for example, Coca-
Cola for soft drinks, Nescafe for coffee, Cadbury for chocolate, etc.
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Although the application of distinguishing marks to goods has a long history, the law relating to trade
marks is relatively young, going back to the early part of the nineteenth century.
The First Statute on trade marks was ‘the Trade Marks Registration Act, 1875’ was enacted in Great
Britain with the sole object to protect the trade marks. The very first mark registered was one used for
beer, a label for pale ale bearing the famous Bass red triangle, the Great Britain’s No. I trade mark. It is
surprised to learn that the said trade mark still remains registered as a trade mark to-day and still very
much in use. It is also surprised to know that this No. I trade mark was infringed about 1900 times, and
every time, the owners Of this trade mark were successful in the courts.
In 1862, the Merchandise Marks Act was passed in Great Britain. There were several small or big
amendments for these two Acts. In 1883 a consolidated statute was brought into effect under the title of
‘the Patents, Designs and Trade Marks Act, 1883’.
In 1905, the Trade Marks Act, 1905 was enacted separately for trade marks. In place of the Trade
Marks Act, 1905, a new Act ‘the Trade Marks Act, 1919’ was enacted, since 1919, a register having
two parts – Part A and Part B, came into existence. In place of Act, 1919, a new Act ‘the trade Marks
Act, 1938’ came into force with effect from 27th July, 1938
After a long period, and due to several changes throughout the world, the Great Britain enacted ‘the
Trade Marks Act, 1994.
INDIA: The Indian Penal Code, 1860 (Act No. 45 of 1860) was enacted one hundred forty years ago. Ss.
463 to 489-E of the Indian Penal Code, 1860 explains the provisions about “Offences relating to
Documents and to Property Marks”. Sections 478 to 489 explain the provisions about “Property and other
Marks”. These Sections had the important provisions for the protection of trade marks.
Sections 478 and 480 of the Indian Penal Code, 1860 were repealed by Section 135 and Schedule of the
Trade and Merchandise Marks Act, 1958, thinking that when a separate Act has been enacted for the
protection of trade marks, there was no necessary of retaining those provisions in the Indian Penal Code,
1860.
Besides the Indian Penal Code, the Specific Relief Act., 1877 also contained certain important provisions,
specifically Section 54, granting protection’ and temporary injunctions, if any trade mark was violated. The
same provision has also been incorporated in Section 38 of the Specific Relief Act, 1963.
In 1889, the then British rulers framed the Indian Merchandise Marks Act, 1889 (Act No 4 of 1889) and
the Trade Marks Act, 1940 (5 of 1940) for protecting the trade marks. After independence, the Indian
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Parliament enacted the Indian Trade and Merchandise Marks Act, 1958 and also framed rules the Indian
Trade and Merchandise Marks Rules, 1959.
There are 136 Sections and one schedule in the Indian Trade and Merchandise Marks Act, 1958. These
136 sections are housed in 11 Chapters.
Chapter-I consists three sections, and explains “preliminary” matters, including definitions (in Section’2).
Chapter-Il (Ss. 4 to 17) explains the provisions about “The Register and Conditions for Registration”.
Chapter-Ill (Ss. 18-26) explains the provisions, about “Procedure for and duration of registration”.
Chapter-IV, containing Sections 27.to 35, explains the provisions about “Effect of Registration”.
Chapter-V, containing Sections 36 to 44, explains the provisions about “Assignment and Transmission”.
Chapter-VI, containing Sections 45 to 55, explains about “Use of Trade Marks and Registered Users”.
Chapter-VII (Ss. 56-59) explains the provisions for “Rectification and Correction of the Register”.
Chapter-VIll, Ss. 60 to 70, explains “Certification Trade Marks”.
Chapter-lX narrates “Special Provisions for Textile Goods” in Sections 71 to 75
Chapter-X defines the offences, imposes penalties and explains the procedure in Sections 76 to 95.
Chapter-XI is the miscellaneous chapter, containing Sections 96 to 136.
Q. 2 Define Trademark and discuss the procedure for registration of Trademark.
Introduction
provided for registration of trade marks already in use and even those proposed to be used. Since 1958 it
increasing globalization of trade and industry, the need to encourage investment flows and transfer of
technology and the need to simplify and harmonies trade mark management systems, it has been
considered by the parliament, necessary to bring out a comprehensive legislation on the subject.
Accordingly the Trade Marks Act, 1999 was passed to replace the Act of 1958.
By providing for the registration of the trademarks for their better protection and by preventing the use of
fraudulent trade marks, the Trade Mark Law achieves the following twin objectives:
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(i) Protection of individual interest of the proprietor of trade mark:
The trade mark law protects the following individual interests of the proprietor of trade mark.
(ii) Protection of exclusive right of the proprietor of trade mark over his trade mark In case of infringement
of registered or unregistered trade marks,
Definition of Trade Mark
The Trade Marks Act, 1999 defines trade mark, as follows:
S.2 (1) (26). “Trade Mark” means a mark capable of being represented graphically and which is capable
of distinguishing the goods or services of one person from those of others and may include shape of
goods, their packaging and combination of colors; and
(i) in relation to chapter XII (other than section 107), a registered trade mark or a mark used in relation, to
goods or services for the purpose of indicating or so as to indicate a connection in the course of trade
between the goods or services, as the case may be and some person having the right as proprietor to use
the trade mark; and
(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or
services for the purpose of indicating or so to indicate a connection in the course of trade between the
goods or services, as the case may be, and some person having the right, either as proprietor or by way
of permitted user, to use the mark whether of that person, and includes a certification trade mark.
Anglo-Dutch Paints, Colour and Varnish Works RA Ltd. V India Trading House, AIR 1977,
The trade mark was combination of violet background and grey lettering. This distinct combination of
colors was held to be a trade mark within the definition of trade mark under Trade Mark Law.
Kirloskar Diseal Recon Pvt. Ltd.V. Kirloskar proprietary Ltd., AIR 1996
The respondents had been using the trade ‘Kirloskar’ for its huge business for a very long time. The use
of the word ‘Kirloskar’ as its trade name for a long time has earned distinctiveness and goodwill for the
respondents. Whereas the existence of the appellant’s company with the trade name “Kirloskar’ was very
recent. Therefore, the Bombay High Court granted injunction in the favour of the respondent by which the
appellants were prevented from the use of the word ‘Kirloskar’ for, their business. It was held that
respondent’s reputation earned over such long period was likely to be adversely affected from using the
word ‘Kirloskar’ as part of their corporate name for their business.
M/s Helpage India V. M/s Helpage Garhwal AIR 2001
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Both plaintiff and defendant are social welfare organizations. The plaintiff organization, founded in the
year 1978, extends services to the elderly people throughout India by providing consultancy, training and
financial support through 531 voluntary agencies The plaintiff’s application for registration of trade mark
“Helpage India” in respect of paper articles, card board articles, printed matter, newspaper periodical
books, greeting cards, calendars and gift items, etc. was pending for registration of trade mark. Whereas
the defendant, i.e., Helpage Garhwal who claims that it also running social services as that of plaintiff was
registered under the Societies Registration Act in 1993. The plaintiff contended that it has been using the
key word “Helpage” as trade mark for its organization for 14 years before the registration of the defendant
organization with the similar key word “Helpage”. As the use of the word “Helpage” by the defendant is
bound to create confusion in the minds of people which is an infringement of the trade mark of the plaintiff
organization under the trade mark law. Therefore, the defendant should be injuncted from the use of the
word “Helpage” for its organization. The Delhi High Court accepted the contention of the plaintiff in this
case and observed that if the defendant allowed to use “Helpage” as part of its name, it will cause
irreparable injury to the plaintiff organization and granted the order of injunction in the favour of the
plaintiff by which the defendant was restrained from the use of the word “Helpage” for its organization.
Rediff communications Ltd. V. Cyber booth AIR. 2000
The Bombay High Court restrained Cyber booth i.e., the defendant from using the domain name Radiff.
Because “Rediff” is deceptively similar to “Rediff’. Simlarly in- Sony Corporation V. Park Kwangsoo,
2001 492 (WIPO), the domain name “NEW. SONY. COM” is virtually identical and confusingly similar to
the domain name of the complainant “SONY. COM” Therefore, the defendant was restrained from the use
of domain name “NEWSONY. COM”.
Registration of a trade mark
Registration of a trade mark is not a compulsory requirement of the Act. But a user of a trade mark also
cannot prevent another person from its unauthorised use by the latter and cannot recover damages even
for its wrongful use by the other person. Such person has to give much and sufficient evidence to prove
his case even to defend himself. In the case a registered trade mark, the registration certificate of the
trade mark is a sufficient evidence to prove one’s case conclusively. Registration of a trade mark is prima
facie evidence of the validity of the trade mark.
The registration of a trade mark, if valid, gives its proprietor the exclusive right to use of the trade mark in
relation to the goods or services in respect of which the trade mark is registered and to obtain relief in
respect of which the trade mark is registered and to obtain relief in respect of infringement of the . trade
mark in the manner provided in the set. .
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The basic qualification for registrability of a mark is contained in the definition of the trademark
itself-
1] Capable of being represented graphically
2] Capable of distinguishing the goods/services of one person from those of others
WHAT KIND OF TRADE MARKS CAN BE REGISTERED?

A trade mark which consists of at least one of the following essential characteristics can be registered.
a) The name of a company, individual or firm represented in a particular or special manner;
b) The signature of the applicant for registration;
c) One or more invented words;
d) One or more words having no direct reference to the character or quality of the goods except the
exceptions listed in the next section;
e) Any other distinctive trade mark; and
f) A trade mark which has acquired distinctiveness by use over a prolonged period of time.
A part of trade mark can be registered separately in addition to a whole trade mark if it satisfies the
requirements of registration of a trade mark.
ABSOLUTE GROUNDS FOR REFUSAL OF REGISTRATION Sec. 9
a. Devoid of any distinctive (unique) character
b. Which indicates quality or other descriptive character of goods or services
c. Which has become customary in current language or in bona fide or established practice of trade.
Hindustan Development Corpn. V. Registrar, A.I.R. 1955 .
The word ‘Rasoi’ was refused registration as a trade mark for a vegetable oil as it had direct reference to
the character of the goods. The trade mark is objectionable under section 9 of the Trade Marks Act, 1999
as it consists exclusively of an indication which designates the intended purpose of the vegetable oil
under section 9 of the Trade Marks Act, 1999 if as a result of its use, the word Rasoi’ with respect to that
vegetable oil has acquired a distinctive character.
In Vishnu Cement V. B.S. Cement (P) Ltd., 1998 PTC (18) 130 Mad,
The word VISHNU was refused registration as a trade mark as it is a personal name, customary in
current language as well as has religious susceptibility.
TRADE MARKS NOT REGISTRABLE
The Act debars a trade mark from registration if it is not distinctive, or consists exclusively of marks or
indications which have become customary in the current language and practice.
Also, mark falling in any of the following categories is not registerable:
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• a mark which is identical with or deceptively similar to a trade mark already registered in respect of the
same goods or goods of the same description;
• a mark the use of which would be contrary to any law or which would be disentitled for protection in a
court of law;
• a mark comprising or containing scandalous or obscene matter;
• a mark comprising or containing any matter likely to hurt the religious susceptibilities of any class or
section;
• a word which is the commonly used and accepted name of any single chemical element or compound,
in respect of chemical substances; and
• a geographical name or a surname or a personal name or any common abbreviation thereof or the
name of a sect, caste or tribe in India.
Shape trade marks attract prohibition from registration in certain conditions which may arise in a very
limited number of cases, and it would be difficult in those cases to satisfy the distinctiveness criterion.
A mark cannot be registered as a trade mark, if it consists exclusively of the shape of goods
• which results from the nature of goods themselves. For example, shape of an apple used for apples or
their packaging;
• which is necessary to obtain a technical result. An exclusively technical shape will be the one if no other
shape will perform its function;
• which gives substantial value to the goods. There may be difficulty in interpreting this provision.
The word exclusively is to be noted here. If a mark has a shape of any of the descriptions given
above but has other additional features, it could be considered for registration subject to other essential
qualifications for a trade mark.
Also, an unregistered trade mark can continue to have a shape of a description that makes it ineligible for
registration.
There are also relative grounds for refusal of registration.
If a trade mark is identical with an earlier trade mark, or if it is similar to an earlier trade mark and covers
identical goods and services so as to cause confusion in the mind of the public, it will not be registered.
If a trade mark has similarity or identity with an earlier well-known trade mark but is sought to be applied
to a different category of goods, it will not be registered, as it seeks to exploit a well known brand for an
unfair advantage or may harm the reputation of the earlier, well known trade mark.
WHEN MARKS ARE SIMILAR BUT GOODS ARE DIFFERENT-

Then following factors are taken into account
a. The extent to which the earlier TM is a well known TM in India.
b. Whether the use of the applicant’s mark would take unfair advantage of the earlier TM.
c. Whether the use of applicant’s mark would be detrimental to the distinctive character or repute of the
earlier mark.
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Further a mark should not be registered if its use is likely to be prevented under the law of passing off or
the law of copyright.
PROCEDURE FOR REGISTRATION
SEARCH:
It is recommended to conduct a Trademark availability search in order to check if any similar Trademark
has been filed in India, which may oppose your registration. The cost of the search is generally quite
insignificant (less) in comparison to the costs of re-branding if there is difficulty in using the Trademark
because it infringes the right of others.
FILING:
A Trademark application is filed with Trademark office. Now the Trademark application can be filed for
more than one class of goods in one application. An application with priority rights shall be filed within 6
months from the date of initial grant of the registration application of the mark in other country.
EXAMINATION:
The Trademark Office will examine the registrability of the application, which includes distinctiveness,
existing similarity with prior registrations, and completion of supporting documents, if accepted, the
Trademark Office will issue an acceptance order and the Trademark is ordered for publication.
Examination generally occurs within 3-4 months of filling of Trademark application, but the request for the
quick examination of an application can also be made, which costs 5 times the govt. fee for filling the
Trademark application.
PUBLICATION:
Trademark applications accepted by the Registrar are published in Trademark Journal. Any interested
party may file a notice of opposition to the registration of the mark within 3 months from the date of last
publication.
OPPOSITION:
When the Trademark is advertised in the Trademark Journal, then third party can oppose the registration
of the Trademark within the 3 months from the date of the Trademark journal made available to the public.
Normally the following person opposes the registration of Trademark:
a) The owner of an earlier Trademark application or registration covering a similar Trademark for similar
goods.
b) A person who has used the same or a similar Trademark prior to the client, but who has not sought
registration of the Trademark.
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If the Trademark application is opposed, then the Trademark office will request evidence in writing from
both parties. If the dispute is not settled by the parties, then matter is determined at a hearing.
Registration of an opposed Trademark application will be delayed pending till the determination of the
opposition.
REGISTRATION:
In the absences of opposition, a Trademark is registered, and the relative certificate of registration is
issued for 10 years from the date of filing of an application. Now it is taking 24-30 months from the filling
of the Trademark application to the final registration of the Trademark.
Q. 3 Discuss the law relating to infringement and passing of trade mark.
Introduction
A trade mark owner has right either to use himself or assign others the use of his trade mark.
Unauthorized use of trade mark which may be the same or deceptively similar to the original trade mark
would amount to infringement. In case of registered trade mark the registered proprietor or registered
user may take action against infringement. But in case of trade mark which is not registered the common
law remedy of passing off action is maintainable. What are the various grounds on which infringement
and passing off action is determined. How the case law has developed the parameters of judging
infringement and passing off action, is the subject matter of this chapter. The various legal remedies
against infringement and passing off will be discussed separately bellow.
Infringement of Registered Trade Mark (Section 29)
If a person, who is not the owner of a registered trade mark, without permission from the owner uses the
same trade mark, or a deceptively similar trade mark in the course of trade, he infringes the trade mark
and is liable to be sued for legal remedies by the rightful owner, or persons so authorized.
Essential Conditions of Infringement
In order to constitute infringement following requirements must be fulfilled:
(i) The person is not authorized to use the trade mark.
(ii) The infringing trade mark is either similar or identical or deceptively similar to the already registered
trade mark.
(iii) The infringing trade mark must be used in the course of regular trade in which the registered
proprietor or user is already engaged.
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(iv) The use of the infringing trade mark must be printed or in case of usual representation of mark in
advertisement, invoices or bills. Mere oral use of trade mark is not infringement.
(v) Using either whole of the registered trade mark or an adopted one by making a few addition and
alteration.
Test for determining Infringement
In order to decide whether there has been an infringement of a trade mark or not the likely impact of
infringing of trade mark on purchaser is viewed. If the totality of impression of trade mark is likely to cause
confusion or deception in the mind of purchaser, it amount to infringement. Tangible charges of confusion
by a substantial proof are the main test to find out whether the infringing mark is deceptively similar to the
infringed mark. The likelihood of confusion is sufficient and there is no need to prove that actual confusion
has been caused.’ In other words deception, fraud or confusion on the part of infringer is essential
requirement to determine infringement.
Common forms of Infringement (Section 29)
A trade mark can be infringed in different ways. Some commonly noticed forms of infringement are
mentioned hereunder:
(i) Using of mark identical or similar to trade mark by unauthorized person in relation to similar or same
trade. Use of identical or similar marks in trade not similar or sam’ may also ‘mount to infringement.
(ii) Advertisement of registered trade mark of another for promotion of one’s trade also amounts to
infringement.
(iii) A registered trade mark is also infringed when a person makes unauthorized application of such trade
mark to a material intended to be used for labeling or packaging his goods.
(iv) A registered trade mark is also infringed by the spoken use of words as well as their usual
representation in cases where the distinctive elements of that mark consist of or include such work.
(v) Use of deceptive similar mark as to goods or services and as to trade origin which results into
confusion or deception in the mind of buyer.
(vi) Taking substantial features of already registered trade mark which is in use, amounts to infringement.
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(vii) Unauthorized use of registered trade mark on reconditioned or second-hand articles may constitute
infringement.
(viii) Unauthorized printing of label of registered trade mark would also amount to infringement. If the label
has copyright, it will cause infringement of copyright.
(ix) When the owner of trade mark gets the goods manufactured by third party solely for mark, sale of
goods bearing that mark by third party manufacturer to other persons would constitute infringement.
Pidilite Industries Ltd. v. S.M. Associates,2004
The plaintiff was registered proprietor of trade mark “M-SEAL”. The defendant adapted and used mark
‘SM SEAL’, with all essential characters of trade mark ‘M-SEAL’. The Bombay High Court ruled that
defendant’s use of impugned mark was causing confusion and deception. The Court restrained defendant
from using trade mark “SM-SEAL’.
Playboy Enterprises, Inc. v. Bharat Malik, 2001
the Delhi High Court restrained defendant from using trade name “PLAY WAY” on the ground that
defendant have adopted word ‘PLAY’ which is the soul of the name of plaintiff’s magazine PLAYBOY with
the sole object to exploit the trade on its goodwill and widespread reputation.
Bhavnesh Mohan Lal Amin v. Nima Chemical 2005
The respondent was a registered proprietor of two trade marks ‘NIRMA and ‘NIMA’ for detergent powder.
The trade mark NIMA was not being used. Appellant started using trade mark NIMA for flour. The Gujarat
High Court restrained appellant from using NIMA which was already registered in favour of respondent.
The court rejected this contention that use of trade mark is a condition precedent for claiming legal
protection.
No action for infringement is available in respect of unregistered trade marks; however, common
law rights for action against ‘passing off’ are not affected.
The Act prohibits adoption of a registered trade mark by another person as trade name, i.e. the
name of an enterprise.
A suit for infringement of registered trade mark must be filed in the district court within whose
territorial jurisdiction, the plaintiff (or if there are more than one such person, any one of them)
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instituting the suit or proceeding actually and voluntarily resides or carries on business or
personally works for gain.
Passing off action
Introduction -The passing off action depends upon the principle that nobody has a right to represent his
goods as the goods of somebody. In other words a man is not to sell his goods or services under the
pretence that they are those of another person.
Passing off is not defined in the Act. It is referred to in section 27(2), 134(1) (c) and 135.
Section 27(2) states that the rights of action against any person for passing off goods as the goods of
another person or the remedies in respect thereof.
Section 134(1) (c) refers to injunction of courts to try suits for passing off arising out of the use of any
trade mark.
Section 135 specifies the remedies available in respect of passing off arising from the use of a
trademark.
Now the question is arise that why passing off is necessary because already trademark given the
protection to goods and services?
The Trademark is providing protection to registered goods and services, but the passing off action is
providing a protection to unregistered goods and services. The most important point is that the remedy is
same in both the cases but the Trademark is available to only the registered goods and services and
passing off is available to unregistered goods and services.
To more knowledge of this context we can summaries the case of Durga Dutt vs. Navaratna
Pharmaceutical in this case the Supreme Court is set out the distinction between infringement and
passing off. The action for infringement is a statutory remedy conferred on the registered owner of a
registered Trade mark and has an exclusive right to the use of the trade mark in relation to those goods.
And the passing off is available to the unregistered goods and services.
The second most important point is that the use by the defendant of the trade mark of the plaintiff is not
essential in an action for passing off, but in the case of an action for infringement this is essential.
In the cases of infringement the burden is always lies to the plaintiff.
What the plaintiff must prove in a passing off action?
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1. That he has acquired a sufficient goodwill and reputation in a trademark, get up, or other trade name
in relation to goods or business in India
2. That what the defendant is doing has actually caused or likely to cause deception among particular
class of customers of the goods/business.
3. That the plaintiff has suffered or is reasonably likely to suffer damage or injury to his business or
goodwill due to defendant’s act.
Means adopted for passing off
1. Direct false representation

2. Adoption of TM which is same or colorable copy of TM of a rival trader
3. Adoption of essential part of rival traders name
4. Copying the get up or colour scheme of the label used by the trader
5. Imitating the dsign or shape of goods
6. Adopting the word or name by which the rival trader’s goods or business is known in the market
7. Any other ingenious method.
Essential requirements for passing off action
1. The Claimant’s Goodwill: Although damage is the gist of an action for passing off, but the plaintiff must
show that there is a reasonable reason of his being injured by the defendant’s action, even if the conduct
of the defendant might be calculated to deceive the public. A private individual cannot institute a suit for
passing off even if the defendant practices deception upon the public, unless it is proved that the
defendant’s action is likely to cause damage to the individual.
2. Misrepresentation: Misrepresentation in the simplest form of passing off. If A says falsely these goods I
am selling are B’s goods. It is a clear case of passing off. In simple way we can say that
misrepresentation should lead. Or be likely to lead confusion on the part of consumers. In case of
Khemraj v. Garg in this case the defendants had copied the get up, layout, design and colour scheme,
etc. and the name “manavpanchang,mani ram panchang” and “shri vallabh Mani Ram panchang” of the
plaintiff’s panchang. The court held that it is similar to the plaintiff’s product and Interim injunction was
granted.
In the case of Rupa & Co. Ltd v. Dawn Mills Co. Ltd., In this case the defendant manufacture an
underwear which named dawn as similar to the plaintiff’s manufactured underwear don, which is creating
confusion in the minds of people because the layout, get up and colour combination is same to the
plaintiff’s product.
3. Damage: Damages are available in a passing off action. And remedy is available in both cases whether
the infringement suit or passing off action in both the cases remedy is given.
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Now the question of how the passing off action arises?
The question of how the passing off action established. I just referred the two cases first case is relating
to passing off action in domain name in this regard I just refer the case of Akash Arora vs. Yahoo Inc, in
this case the court held that the yahoo India is creating a confusion in the mind of the people. And the
defendant yahoo India is same as the plaintiff’s yahoo.
CONCLUSION In the conclusion I conclude that the passing off action is applied in unregistered goods
and services, and in infringement of suit and passing off in both the cases the remedy will be same. Then
the passing off is arise in three cases first when it is injured the claimants good will, secondly in
misrepresentation and thirdly in damages, where the position is same like in infringement suit.
Remedies for infringement and passing off: (short note)
According to section 135 of the Trade Marks Act, 1999 in a suit for ‘infringement’ or for ‘passing off of the
trade mark, the aggrieved party may obtain the following reliefs.
1. Injunction:
Injunction is one of the relief’s which an aggrieved person may obtain in any suit for the infringement of
registered trade mark or for passing off of the registered or unregistered trade mark.
Horlicks Limited & others V. Kartick Sadhukan, 2002
The plaintiff i.e., the Horlicks Ltd., is the proprietor of the trade mark “HORLICKS” for the products like
energy boosting food products, including foods for infants, malted milk, biscuits, toffees, etc. The
defendant trading as Kartick confectionery started manufacturing toffees under the trade mark
“HORLICKS” as it was deceptively similar to the trade mark “Horlicks” of the plaintiff.
Novarites AG & Anr V. Dr. Mukundkam Sharma, 2003
Delhi High Court restrained the defendant from the use of the trade mark NOVERAN for the
pharmaceutical products as it was similar to the trade mark NOVRAN used by the plaintiff for its
pharmaceutical products.
Pizza Hut International V. Pizza Hut India Pvt. Ltd., 2003
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Bombay High Court restrained the defendant from the use of the words Pizza Hut for his business as the
words Pizza Hut has been used by the plaintiff as trade mark for his business relating to food which
enjoys world wide reputation.
In Honda Motors Co. Ltd. V. Charanjit Sigh-&Ors, 2003
Plaintiff used trade Mark HONDA in respect of automobiles and the trade mark HONDA in respect of
automobiles and power equipments used by the plaintiff during the last five decades has earned world-
wide reputation for the plaintiff. Whereas the defendant started using the trade mark HONDA for its
pressure cookers. The defendants were restrained from using the trade mark HONDA for their pressure
cooker as the court held that such use of the trade mark by the defendant for its pressure cooker has the
effect of diluting the global reputation of the plaintiff. Because the public may buy the defendant does
product believe the same as coming from the house of HONDA of the plaintiff.
2. Damages:
Damages are the compensations awarded to the plaintiff by the defendant for the legal injury caused by
him to the plaintiff. Damages are the hypothetical compensation paid to the plaintiff irrespective of the
actual amount of loss suffered by the plaintiff.
3. Accounts of profit:
Accounts of profits are not compensatory in their nature. On the contrary accounts of profits are the
actual profits which the defendant has made by infringing the legal right of the plaintiff.
RIGHTS OF TRADE MARK HOLDER (short note)
Introduction
Trade mark holder possesses certain rights provided under the Act. A registered trade mark stands on
advantageous position in comparison to non-registered trade mark. But the Act also protects the claim of
unregistered trade mark holder through passing off action. The rights conferred under the Act are subject
to conditions and limitations imposed at the time of registration.
The various rights granted under the Act are as follows…
1. Right to Exclusive use A registered trade mark gives the registered proprietor the exclusive right to
use the trade mark in relation to goods or services in respect of which the trade mark is registered.
However this right shall be subject to any conditions and limitations to which the registration is subject.
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In case if there are more proprietors than one each of them has the same rights against other persons not
being the registered users using by way of permitted use as he would have if he were the sole registered
proprietor.
A co-owner of partnership, which has been dissolved also has the right to use and get himself registered
as independent proprietor of the trade mark.
In Babul Products v. Zen Products,2005 the Gujarat High Court has held that a licensee cannot take
action for infringement and passing off against partner of previous partnership firm as on dissolution of
partnership firm, the partners having acquired goodwill by use can continue to be co-owners of the mark.
2. Right to assign A registered proprietor of a trade mark has the right to transfer his rights through
license or assignment of his trade mark and give effectual receipts for any consideration for such
assignment.
3. Right to seek Legal Remedies against Infringement Since the Act confers exclusive right to use
trade mark by proprietor or his authorized user, any unauthorised use of a trade mark would amount to
infringement. The holder of Trade mark has the right to obtain legal relief against alleged infringement of a
registered trade mark. In case of a trade mark which is not registered the unauthorised use is prevented
through passing off action.
4. Right to seek Correction of Register In addition to three abovementioned important rights the
registered proprietor has the right to apply for correction of register with regard to name, address or
description of registered proprietor, to cancel the entry of a trade mark on the register and to strike out
any goods or classes of goods or services from those in respect of which a trade mark is registered.
Limitation on Rights of copyright holder…The rights mentioned above are subject to the conditions
and limitations which may be either expressly imposed at the time of registration or which are expressly
laid down in the Act. They are explained hereunder…
1. The exclusive right to use a trade mark is subject to limitations imposed at the time of registration. Any
use beyond those limitations is not protected by registration and an action for infringement shall not lie
against such use by others. Where a trade mark is granted for a particular product, say biscuits, it cannot
be used by the proprietor for his other product such as confectionary.
2. Registration ipso facto will not operate against persons who are already registered proprietor of
identical or similar mark.
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3. The registered proprietor cannot interfere with the prior use of the same or similar mark. In N.R. Dongre
v. Whirlpool Corporation, 1996 the Supreme Court held that passing off action against registered owner of
trade mark at the instance of prior user of the same or similar mark is maintainable.
4. The registered proprietor cannot interfere with any bona fide use by a person of his own name or that
of his place of business; or the use of any bona fide description of the character or quality of goods.
5. In the case of the word/mark, if in the course of time it becomes the name of an article or substance,
then the right conferred by registration ceases.
6. The right to seek legal remedy against infringement is subject to limitations prescribed in Sec. 30.
Falsifying and falsely applying Trade Marks (short note)
A person making a registered trade mark or a deceptively similar mark is deemed to falsify a trade mark if
he is doing it without the consent of the proprietor of the trade mark.
Any alteration, addition, effacement of a genuine trade mark also amounts to its falsification.
A person who, without authorization, applies registered trade mark or a deceptively similar mark to goods
or services or any package containing goods is deemed to falsely apply the genuine trade mark.
If any person uses any package bearing a mark which is identical with or deceptively similar to the
registered trade mark for the purpose of packing, filling or wrapping any goods other than the genuine
goods of the proprietor of the trade mark he is guilty of falsely applying the trade mark.
Offences and penalties (short note)
Offence under the Act is committed if a person makes, disposes of, or has in his possession, any die,
block, machine, plate or other instrument for the purpose of falsifying or of being used for falsifying a trade
mark:
• applies any false trade description to goods or services, or
• applies a false indication of the country or place where the goods were produced
or name and address of the manufacturer, or of the person for whom they are produced.
• tampers with, alters or effaces an indication of origin which has been applied to any goods to which it is
required to be applied,
The above mentioned offences shall be punishable with imprisonment for a term of minimum of six
months but which may extend to three years and with a minimum fine of fifty thousand rupees but which
may extend to two lakh rupees.
For adequate and special reasons mentioned in the judgment, the court may impose a sentence of
imprisonment for a term of less than six months or a fine of less than fifty thousand rupees.
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Penalty for selling goods or providing services to which false trade mark or false trade description is
applied is punishable with imprisonment for a minimum term of six months but which may extend to three
years and with a minimum fine of fifty thousand rupees but which may extend to two lakh rupees.
Enhanced penalty can be imposed on second or subsequent conviction.

Such offences shall be punishable with imprisonment for a term between one to three years and with fine
between one lakh rupees to two lakh rupees.
A person, who represents an unregistered trade mark as a registered trade mark, shall be punishable with
imprisonment for a term which may extend to three years, or with fine, or with both.
The penalty for falsification of entries in the register is imprisonment for a term, which may extend to two
years, or a fine, or both.
The use of words, which may falsely suggest that a person’s place of business is officially connected with
the trade mark office, attracts Imprisonment for a term up to two years or a fine or both.
If the person committing an offence under this Act is a company, the company as well as every person in
charge of, and responsible to, the company for the conduct of its business at the time of the commission
of the offence shall be deemed to be guilty of the offence. A company means any corporate body and
includes a firm or other Association of individuals. Abetment of any offence is punishable as if the abettor
himself committed that offence.
Deceptive Similarity/ Doctrine of Deceptive similarity (short note)
Sec. 2 (1) (h) of Trade Marks Act 1999 deals with the doctrine of deceptive similarity. A trade mark is
deceptively similar to another mark if it so nearly resembles that other mark as to be likely to mislead or
cause confusion.
No trade mark shall be identical: with or deceptively similar to a trade mark which is already registered
in the name of a different proprietor in respect of the same goods or description methods. The earlier
trade mark may be registered or unregistered.
The question of similarity between two trade marks or the likelihood of deception will depend upon the
surrounding circumstances.
Info Edge (India) Pvt. Ltd. V. Shailesh Gupta, 2002
Where the plaintiff who owned a website NAUKARI. COM which had earned considerable goodwill in the
business and the defendant also started his business under this website. NAUKARI.COM’ filed a suit for
injunction against the latter. The Delhi High Court decreed the suit holding that a domain name is more
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than an Internet address, entitled to equal protection as that of trade mark since it is settled law that when
a defendant does business under a name which is sufficiently close to the name under which the plaintiff
is trading and that name has acquired a reputation, the public at large is likely to be deceived and misled
that the defendant’s business is the business of the plaintiff. The use of similar word by the defendant
coupled with dishonest intention and bad faith empowers the court to restrain the defendant from doing
business under such name.
The word similar is not defined in the Act. However, a trade mark is said to be deceptively similar to
another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.
The deceptively similar mark includes not only confusion but deception also. Near resemblance is
mentioned in the Act in connection with registered trade marks in the name of the same proprietor which
may closely resemble each other, so as to deceive or cause confusion in the mind of a user. The
Registrar may require them to be registered as associated trade marks.
The following factors are to be taken into consideration when deciding the question of similarity:
• The nature of the marks;
• The degree of resemblance;
• The nature of goods in which they are likely to be used as trade marks;
• The similarity in nature, character and nature of goods in which it is used;
• The nature of the potential class of consumers; and
• The visual and phonetic similarity.
GOOD TRADEMARK (short note)

A trade mark should be distinctive. Distinctiveness may be inherent or acquired. An invented word may
be inherently distinctive as a trade mark e.g. RIN. Other trademarks may have acquired distinctiveness
through usage e.g. TATA, Reliance, Revlon. Most brands acquire distinctiveness through use. A brand
may depend on the class of goods e.g. Hawkins and Prestige are two distinctive brands in pressure
cookers. If the trade name is a word, it should be short and easy to spell, pronounce and remember; if it
is a device it should be expressible in a word. The word should be an invented word. Zen, Avon, RIN,
Flex are all fine examples. The mark can be denied if it is not considered distinctive.
ASSIGNMENT AND TRANSMISSION OF TRADEMARKS (short note)
Introduction Like other forms of intellectual properties, trade mark is also capable of being transferred.
The owner of trade mark can assign with or without goodwill his trade marks to another person on receipt
of consideration. Similarly, a trade mark can be transmitted to the successor of the owner upon his death
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or by operation of law. In this chapter the provisions relating to assignment and transmission of trade
mark are discussed.
a. A registered trademark can be assigned or transmitted whether with or without the goodwill of the
business concerned.
b. Under the 1999 Act, an unregistered trademark is assignable or transmissible with or without the
goodwill of the business concerned.
c. Certain restrictions are imposed on assignment/transmission to prevent creation of multiple exclusive
rights.
d. When assignment is without the goodwill of the business, special conditions are imposed.
e. Assignment of a trademark must be in writing.
f. No specific form is prescribed.
g. TRANSMISSION means transfer by operation of law, transfer on personal representative of
deceased person and any other mode not being an assignment.
h. The law relating to transmission of TM is same as that of assignment.
i. TM is the part of goodwill of business, so if the TM is transferred, the goodwill is also transferred
along with it. Even though it is not specifically mentioned in the deed of assignment.
j. ASSIGNMENT OF AN UNREGISTERED TM- may be assigned with or without the goodwill
k. If without goodwill, the assignee will not be able to protect the TM, since in the absence of goodwill of
business, no action for passing off will lie. However criminal prosecution may be available.
l. RESTRICTIONS ON ASSIGNMENT OR TRANSMISSION- assignment or transmission should not
result in concurrent exclusive rights in more than one person to the use of same mark or similar mark
in respect of same or similar goods or services if such use in exercise of those rights would be likely
to deceive or cause confusion.
m. Assignment or transmission which would create exclusive right to use the mark in different parts of
India is not permitted.
n. Confusion or deception can be avoided by territorial limitations or limitation of goods.
o. ASSIGNMENT WITHOUT THE GOODWILL OF THE BUSINESS-
The assignee should advertise the assignment in newspapers in accordance with the directions of
the registrar. The purpose of the advertisement is to give notice of the assignment to the public.
p. REGISTRATION OF ASSIGNMENT AND TRANSMISSION- The procedure for entering the name of
subsequent proprietor as a result of assignment or transmission is contained in S.45.
q. An application for registration of subsequent proprietor should be accompanied by proof of title to the
mark. It may be in the form of deed of assignment, deed of Partnership or its dissolution or any other
document establishing title to the mark.
r. Registration of assignment or transmission is necessary to establish title to the registered mark.
The Register of Trade Marks (short note)
a. A record called the Register of Trade Marks shall be kept at the head office of the Trade Marks
Registry,
b. It shall contain
 All registered trade marks with the names, addresses and description of the proprietors,
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 Notifications of assignment and transmissions,
 The names, addresses and descriptions of registered users, conditions, limitations and such other
matter relating to registered trade marks as may be prescribed.
c. The Registrar can lawfully keep the records wholly or partly in computer floppies diskettes or in any
other electronic form subject to such safeguards as may be prescribed.
d. No notice of any trust, express or implied or constructive, shall be entered in the register and no such
notice shall be receivable by the Registrar.
e. The register shall be kept under the control and management of the Registrar.
f. There shall be kept at each branch office of the Trade Marks Registry a copy of the register and such
of the other documents mentioned in section 148 as the Central Government may, by notification in
the Official Gazette, direct.
g. The Register of Trade Marks, both Part A and Part B, existing at the commencements of this Act, shall
be incorporated in and form part of the register under this Act.
RECTIFICATION AND CORRECTION OF THE REGISTER (short note)
S. 57. Power to cancel or vary registration and to rectify the register
(1) On application made in the prescribed manner to the Appellate Board or to the Registrar by any
person aggrieved, the tribunal may make such order as it may think fit for canceling or varying the
registration of a trade mark on the ground of any contravention, or failure to observe a condition entered
on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made
in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error
or defect in any entry in the register, may apply in the prescribed manner to the Appellate Board or to the
Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may
think fit.
(3) The tribunal may in any proceeding under this section decide any question that may be necessary or
expedient to decide in connection with the rectification of the register.
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(4) The tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties
concerned and after giving them an opportunity of being heard, make any order referred to in sub-section
(1) or sub-section (2).
(5) Any order of the Appellate Board rectifying the register shall direct thatnotice of the rectification shall
be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the
register accordingly.
S. 58. Correction of register
(1) The Registrar may, on application made in the prescribed manner by the registered proprietor,-
(a) Correct any error in the name, address or description of the registered proprietor of a trade mark, or
any other entry; relating to the trade mark;
(b) Enter any change in the name, address or description of the person who is registered as proprietor of
a trade mark;
(c) Cancel the entry of a trade mark on the register;
(d) Strike out any goods or classes of goods or services from those in respect of which a trade mark is
registered, and may make any consequential amendment or alteration in the certificate of registration,
and for that purpose, may require the certificate of registration to be produced to him.
(2) The Registrar may, on application made in the prescribed manner by a registered user of a trade
mark, and after notice to the registered proprietor, correct any error, or enter any change, in the name,
address or description of the registered user.
SPECIAL PROVISIONS FOR TEXTILE GOODS (Short note)
The Central Government may prescribe classes of textile goods to the trade marks used and the
provisions shall apply to the classes of textile goods as they apply to trade marks used in relation to other
classes of goods (Sec.79).
In respect of textile goods being piece goods, no mark consisting of line heading alone shall be
registrable as a trade mark.
In respect of any textile goods, the registration of letters or numbers, or any combination thereof, shall be
subject to such conditions and restrictions as may be prescribed (Sec. 80).
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No sale without marked conspicuously- Piece goods such as are ordinarily sold by length or by the
piece and cotton yarn and thread which have been manufactured, bleached, dyed, printed or finished in
premises which are a factory shall not be removed for sale from the last of such premises in which they
underwent any of the said process without having conspicuously stamped in international form of Indian
numerals on each piece the length thereof in standard yards, or in standard meters, according to the real
length of the piece, and , except when the goods are sold from the factory for export from India, without
being conspicuously marked on each piece with the name of the manufacturer or of the occupier of the
premises in which the piece was finally processed or of the wholesale purchaser in India of the piece
(Sec. 81).
The Central Government may make rules to provide, with respect to any goods which purport or are
alleged to be of uniform number, quantity, measure, gauge or weight, for the number of samples to be
selected and tested and for the selection of the samples and to provide, for the manner in which cotton
yarn and cotton thread shall be marked with the particulars and for the exemption or certain premises
used for the manufacture, bleaching, dyeing or finishing of cotton yarn or cotton thread. The Central
Government may make rules declaring what classes of goods are includeui hi -cxpression “piece goods
such as. a ‘ii’irruiThy sdld by length or by the piece”. With respect to any goods for the selection and
testing of samples of which provision is not made in any rules for the time being in force, the court or
officer of customs, as the case may be, having occasion to ascertain the number, quantity, measure,
gauge or weight of the goods, shall determine the number of samples to be selecied and tested and the
manner in which the samples are to be selected (Sec. 82).
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Deigns Act, 2000
Introduction Like Copyright, Patent, Trade Marks, etc. Design is also one of the intellectual properties.
From the beginning of 20th century fashions crept in the ordinary people’s life. Designs play an important
role in fashions, dresses, clothes, etc. They are also important in vehicles, machineries, etc. For
developing or creating a design, the designer should incur the considerable amount of time and amount
arises from research and development of the new products.
Products which are artistically designed immediately attract the attention of customers. A design gives
artistic sense and appearance to the product. When people go for selecting goods for their purchase may
it be textile, electronic items, tools, cosmetic items, jewellery etc., they get attracted by the shape and
designs of goods or its container. Therefore, to attract customers the manufacturers give much attention
to the design of the products. The creative originality of a design needs legal protection against copying.
Therefore the law provides for registration of original design and prohibits its copy by others.
B. Development of Design Law in India In India, the first law on designs enacted during British regime
was Patents and Designs Act, 1872. Later the Inventions and Designs Act 1888 was enacted to protect
invention and designs. Thereafter, following the British Patent and Design Act, 1907 the Indian Patent and
Designs Act 1911 was enacted. When a separate Patent Act was enacted in 1970 the provisions relating
to patents were repealed from Patent and Designs Act, 1911 and the Act was renamed as Designs Act,
1911. This Act continued to deal with designs till the new Designs Act was enacted in the year 2000.
C. Salient features / object of Deigns Act, 2000 – Since the enactment of Design Act, 1911
considerable progress has been made in the field of science and technology. It was felt that legal system
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of protection of industrial designs required more effective protection. The Act not only promotes creation
of new and original designs for products but also aims to balance the competing interests by granting
time-bound monopoly right to use registered industrial design by owner. The salient features of the
Designs
Act of 2000 may be summarized hereunder
(a) It enlarges the scope of definition of ‘article” and ‘design” and introduces definition of “original”.
(b) It amplifies the scope of “prior publication”.
(c) It incorporates the provisions for delegation of powers of the Controller to other officers and duties of
examiners.
(d) It contains provisions for identification of non-registrable designs.
(e) It contains provisions for substitution of application before registration of a design.
(f) It introduces internationally followed system of classification in the place of Indian classification.
(g) It contains provisions for maintaining the Register of designs on computer.
(h) In contains provisions for restoration of lapsed designs.
(i) It contains provision for appeal against the order of the Controller before the High Court instead of
Central Government as existing.
(j) It revokes the period of secrecy of two years of a registered design.
(k) It provides for compulsory registration of any document for transfer of right in the registered design.
(l) It introduces additional grounds in cancellation proceedings and makes provision for initiating the
cancellation proceedings before the Controller in place of High Court.
(m) It enhances the quantum of penalty imposed for infringement of registered design.
(n) It contains provisions for grounds of cancellation to be taken as defense in the infringement
proceedings to be initiated in any Court not below the Court of the District Judge.
(o) It enhances initial period of registration from 5 to 10 years, to be followed by a further extension of a
period of 5 years.
87
(p) It contains provisions for allowing of priority to other convention countries and countries belonging to
the group of countries or inter-governmental organizations apart from United Kingdom and other
Commonwealth countries.
(q) It contains provisions for avoidance of certain restrictive conditions for the control of anti-competitive
practices in contractual licences.
(r) It contains specific provisions to protect the security of India.
Some important definitions -
‘Design’ means the appearance of the whole or a part of a product resulting from the feature of, in
particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its
ornamentation. Three dimensional artistic works where copyright does apply include sculptures, models
and works of artistic craftsmanship.
Where copyright protected work is reproduced in larger quantities or by industrial processes, articles are
regarded as industrial design’. It is to be noted that although copyright may protect the drawing of an
industrial design of artistic merit, it does not generally protect the industrial article. Therefore, in cases of
industrially produced designs one should instead make use of ‘design rights’ which deal specifically with
the industrial application of design products.
Sec. 2 (5) ‘design’
“Design” means only the features of shape, configuration, pattern or ornament applied to any article
by any industrial process or means, whether manual, mechanical or chemical, separate or combined,
which in the finished article appeal to and are judged solely by the eye; but does not include any mode
or principle of construction or anything which is in substance a mere mechanical device, and does not
include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and
Merchandise Marks Act, 1958, or property mark as defined in Section 479 of the Indian Penal Code,
1860.
Sec. 2 (14). “Proprietor of a new or original deign”,--
(a )where the author of the design, for good consideration, executes the work for some other person,
means the person for whom the design is so executed; and
(b) where any person acquires the design or the right to apply the design to any article, either exclusively
of any other person or otherwise means, in the respect and to the extent in and to which the design or
right has been so acquired, the person by whom the design or right is so acquired; and
88
(c) in any other case, means the author of the design; and where the property in, or the right to apply,
the design has devolved from the original proprietor upon any other person, includes that other person.
Sec. 2 (2). “Article” Means any article of manufacture and any substance, artificial or natural, or partly
artificial and partly natural.
Sec. 2,(3). “Controller” Means the Controller General of Patents, Designs and Trade Marks appointed
under sub-sec. (1) V of Section 4 of the Trade and Merchandise Marks Act, 1958.
Registration of designs-
Introduction
In order to seek legal protection against infringement of copyright in design it is necessary that the
proprietors of a new and original design should get his design registered with registering authority.
The Designs Act, 2000 has provided simple procedure for registration of designs. In this chapter following
aspects of registration are discussed …
(i) Essential Requirements of Registration. (ii) Designs which are not registrable. (iii) Who is entitled to
seek Registration? (iv) Procedure for Registration. (v) Cancellation of Registration.
Essential Requirements of Registration A design in order to be eligible for registration should fulfill the
following conditions…
(i) Novelty and originality.—A design can be registered only when it is new and original with respect to
class of article to which it has been applied. A combination of previously known design can be registered if
the combination produces new visual appeal. The novelty or originality is to be judged on the evidence of
expert in the trade.
Hello Mineral Water Put. Ltd. v. Thermo king California Pure,2000
A design of water vending machine in a cylindrical shape was not considered as new on the ground that
mere novelty of form or shape is not sufficient, It should involve presence of some element or new
position of an old element in combination, different from anything found in any prior structure.
89
(ii) No prior publication of design.—The design should not have been published anywhere in India or in
any other country by publication in tangible form or in any other way prior to the filing of application.
Display of designs in fashion show would amount to publication. However the exhibition of design in an
industrial or other exhibition, notified by the Central government, would not amount to publication of the
design provided the prior notice is given to Controller of Patents and Designs and an application for
registration is made within six months of the date of first exhibition.’ Similarly, private or secret use or an
experimental use of design will not amount to publication.
Kemp and Company v. Prima Plastics Ltd. 2000
It was held that disclosure of design by proprietor to any other person in good faith is not deemed
publication.
(iii) Application of Design to Article.—The design should be made applicable to article itself in the form
of shape or configuration in three dimensional form, i.e., an ornament, a toy, a bottle or a flower vase or in
two dimensional form, i.e., a design on wall paper, bed sheet or garment which attract and appeal to the
eyes of a customer.
Designs which are not Registrable - According to Section 4 of the Designs Act, 2000 following designs
are prohibited from registration
(a) is not new or original, or
(b) it has been disclosed to the public anywhere in India or in any other country by publication in tangible
form or by use or in any other way prior to the filing date, or where applicable, the priority date of the
application for registration, or
(c) it is not significantly distinguishable from known designs or combination of known designs, or
(d) it comprises or contains scandalous or obscene matter.
Who is entitled to seek Registration According to Section 5 any person claiming to be proprietor of any
new or original design not previously published in any country and which is not contrary to public order or
morality can file application for registration.
Proprietor, according to Section 2(j), may be following persons
(a) author of the design;
(b) any person who has obtained a design from author for good consideration; and
90
(c) any person on whom the design has devolved from the original proprietor.
Where a creation of design involves more than one person the joint authorship can also be claimed.
Registration ‘of Designs by Foreigners The Designs Act, 2000 has incorporated provisions for
registration of designs by foreigners in India on the basis of reciprocity and based on priority date.
Section 44 states as under:
1. Any person who has applied for protection for any design in the United Kingdom or any of other
convention countries or group of countries or countries which are members of Inter Governmental
Organization or his legal representative or assignee shall, either alone or jointly with any other person, be
entitled to claim that the registration of the said design under this Act shall be in priority to other applicants
and shall have the same date as the date of the application in the United Kingdom or any of such other
convention countries or group of countries or countries which are members of Inter Governmental
Organizations, as the case may be
Provided that—
(a) the application is made within six months from the date of the application for protection in the United
Kingdom or any such other convention countries or group of countries or countries which are members of
Inter Governmental Organisation, as the case may be; and
(b) Nothing in this section shall entitle the proprietor of the design to recover damages for piracy of design
happening prior to the actual date on which the design is registered in India.
2. The registration of a design shall not be invalidated by reason only of the exhibition or use of or the
publication of a description or representation of the design in India during the period specified in this
section as that within which the application may be made.
3. The application for registration of a design under this section has been made in the same manner as
an ordinary application under this Act.
4. Where it is made to appear to the Central Government that the Legislature of the United Kingdom or
any such other convention country or a country which is member of any group of countries or Inter
Governmental Organization as may be notified by the Central Government in this behalf has made
satisfactory provision for the protection of designs registered in India, the Central Government may, by
notification in the Official Gazette, direct that the provisions of this section, with such variations or
additions, if any, as may be set out in such notification, shall apply for the protection of designs registered
91
in the United Kingdom or that other convention country or such country which is member of any group of
countries or Inter Governmental Organization as the case may be.”
Procedure for Registration (Sections 5 to 10) – Every application for registration of design shall be
made before Controller of Patents, Designs and Trade Marks who is also appointed as Controller of
Designs’ in the prescribed manner and shall be accompanied by fee.
(i) A design may be registered in not more than one class, and, in case of doubt as to be class in which a
design ought to be registered; the Controller may decide the question.
(ii) The Controller may, if he thinks fit, refuse to register any design presented to him for registration; but
any person aggrieved by any such refusal may appeal to the High Court.
(iii) An application which, owing to any default or neglect on the part of the applicant, has not been
completed so as to enable registration to be effected within the prescribed time shall be deemed to be
abandoned.
(iv) A design, when registered, shall be registered as of the date of the application for registration.
The design so registered with particulars of designs shall be entered in the Register and the said Register
shall be open for public inspection.’ Sec. 7
The Controller shall also grant a certificate of registration to the proprietor of registered designs, Sec. 9
Notification of assignment and of transmission of registered designs shall be recorded in the Register to
be maintained by the Controller. Sec. 10
Cancellation of Registration (Section 19)
Any person interested may present a petition for the cancellation of the registration of a design at any
time after the registration of that design, to the Controller on any of the following grounds, namely :—
(a) that the design has been previously registered in India; or
(b) that it has been published in India or in any other country prior to the date of registration; or
(c) that the design is not a new or original design; or
(d) that the design f not registrable under this Act; or
(e) that it is not a design as defined under clause (d) of Sec. 2.
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In Designs Act, 1911 the power of cancellation was conferred upon High Court, but under the Designs
Act, 2000 the power of cancellation has been given to Controller. However the appeal against the order of
Controller shall lie to High Court.
Joginder Singh v. Tabu Enterprises, 1989
The High Court of Delhi directed Controller to cancel the registration of design on the ground that the
design was not original and has been published prior to registration. Similarly, in
National Trading Company v. Monica Chawla, 1994
The defendant accepted that the design BABY BOUNCER was being used since the year 1987. The
Court was of the opinion that use of design prior to registration was sufficient for cancellation of
registrations accordingly the court directed cancellation of registration.
Rights of Proprietor of Designs
The proprietor of a design on registration is conferred with ‘copyright in design’. This copyright in design
according to Section 2(i) is an exclusive right to apply a design to any article in any class in which the
design is registered. If the ‘copyright in design’ is infringed by another person it is called ‘piracy of design’.
When a design is registered the registered proprietor of the design shall have ‘copyright in the design’ for
a period of ten years from the date of registration.
This period of ten years can be further extended for five years if an application is made for extension
before expiry of the period of ten years. It thus means that the maximum period for which the copyright in
design can be claimed is ten years plus five years i.e. fifteen years.’
The provision of Section 11 makes it further clear that the copyright in design can be claimed only on
registered designs.
Infringement of Copyright in Design (Piracy of Design)
Infringement of a copyright in registered design is known as piracy of registered design. It shall not be
lawful for any person during the existence of copyright in design to do the following acts:
(a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which
the design is registered, the design or any fraudulent or obvious imitation thereof, except with the
licence or written consent of the registered proprietor, or to do anything with a view to enable the design
to be so applied, or
93
(b.) to import for the purpose of sale, without the consent of the registered proprietor, any article
belonging to the class in which the design has been registered, and having applied to it the design or any
fraudulent or obvious imitation thereof, or
(c) Knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article
in any class of articles in which the design is registered without the consent of the registered
proprietor, to publish or expose or cause to be published or exposed for sale of the article.
Legal Remedies (Section 22)
Following legal remedies are available to the plaintiff.
(i) Damages and/or
(ii) Injunction
The person found guilty of piracy of design may be made liable to pay a sum of rupees twenty five
thousand recoverable as contract debt for every contravention. But the total sum recoverable in respect of
any one design shall not exceed rupees fifty thousand.
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Intellectual properties law

Property can be classified into two broad categories

(i) Tangible—(Movable and Immovable)

(ii) Intangible—(Intellectual Property)

Why Legal Protection for intellectual Property?

Scope of Intellectual Property Rights

(i) Literary, artistic and scientific work;

(ii) Performances of performing artists, phonograms and broadcasts;

(iii) Inventions in all fields of human effort;

(iv) Scientific discoveries;

(v) Industrial designs;

The main forms of intellectual property

2. Protection of social interest.

WIPO (short note)

(ii) To harmonize national intellectual property legislation and procedures;

(iv) Exchange information on intellectual property;

(vi) Facilitate the resolution of private intellectual property disputes;

Programmes and activities of WIPO

WTO (short note)

TRIPs (short note)

Need and Justification of TRIPs –

Geographical Indication (short note)

Meaning of Geographical Indication

The Basmati Controversy

Know-how (short note)

A trade- secret may be defined as:

Traditional Knowledge (short note)

Neem and Turmeric Case

Need for Protection of Traditional Knowledge

In traditional knowledge system, information is classified into four groups-

According to the Act “breeder’ means

(a) the person who breed, or discovered and developed a variety,

The Act seeks to achieve following objectives

(f) To collect statistics with regard to plant varieties seeds.

Farmers Rights (Section 39)

1. Notwithstanding anything contained in this Act -

Origin of Patent Law in India

i. It encourages scientific research and new technology.

a. art, process, method or manner of manufacture,

(vii) A method of agriculture or horticulture.

(x) A mathematical or business method or a computer program per se or algorithms.

(xiii) A presentation of information.

(xv) An invention which, in effect, is traditional knowledge or which is an aggregation or duplication of

a. APPLICATION FOR A PATENT An application for a patent may be made by-

1. the actual inventor of the invention, or

4. Every such application is to be accompanied by a provisional or complete specification.

5. Where the application is accompanied by a provisional specification, a complete specification should

c. PROCEDURE ON RECEIPT OF APPLICATION

INFRINGEMENT OF THE PATENT

Following acts may constitute infringement

(i) The colorable imitation of an invention

(ii) Immaterial variations in the invention

(iii) Mechanical equivalent

(iv) Taking essential features of the invention

Onus of proof (Burdon of proof)

Defenses in suits of infringement

1. Plaintiff is not entitled to sue for infringement

3. Leave or license or expre8s or Implied to U89 the Invention.

4. Doctrine of Estoppels or resjudlcata

6. Existence of a restrictive contract declared unlawful.

8. Alleged infringement not novel or it is obvious.

REMEDY FOR INFRINGEMENT OF PATENT

DELIVERY UP OR DESTRUCTION OF INFRINGING GOODS An order for delivery up or destruction is

The revocation proceedings can be initiated by the following: