Chapter 4.

Intellectual Property Laws

Intellectual Property Rights, Global scenario and the importance of Intellectual Property, Legislation -
Connotations of The Copyright Act, 1957, Entitlements under Copyright Act 1957; The Trademarks Act,
1999; Significance of Trademarks, The Patent Act, 1970; Protection of ‘Inventions’, The Geographical
Indications of Goods (Registration and Protection) Act, 1999; International Aspect of the protection of
Geographical Indications.

(i) Intellectual Property Rights – definition, The Agreement on Trade-related aspects of Intellectual Property
Rights (TRIPS)-objectives and features, The World Intellectual Property Organization (WIPO)- objectives and
features.

(ii) The Copyright Act, 1957- Connotations of Copyright- Idea-Expression Dichotomy; Definition (Section 13
& 14); Criteria for Duration of Copyright.

(iii) The Trademark Act, 1999 - What is a Trademark? Prerequisites of being a Trademark, Importance of
protecting Trademarks, Duration of Trademark.

(iv) Patent Act, 1970- Definition and Patentable Subject matter (Novelty, Inventive Step, Industrial
Application), Non-patentable Inventions, Duration of Patent rights,

(v) Geographical Indication (GI) of Goods - Understanding from the perspective of International Intellectual
Property Rights regime; The Geographical Indications of Goods (Registration and protection) Act, 1999;
Definition, Conditions required to obtain GI, Duration, Who can apply and who is an Authorised User.

Chapter 1
INTELLECTUAL PROPERTY RIGHTS

Definition of Intellectual Property Rights

● Intellectual property rights are like any other property right. They allow creators, or owners, of
industrial designs, patents, trademarks or copyrighted works to benefit from their own work or
investment in a creation. These rights are outlined in Article 27 of the Universal Declaration of

pg. 1
 Human Rights which provides for the right to benefit from the protection of moral and material
interests resulting from authorship of scientific, literary or artistic productions.
● The term "Intellectual Property Rights" refers to the legal rights granted with the aim to protect the
creations of the intellect. These rights include Industrial Property Rights (e.g. patents, industrial designs
and trademarks) and Copyright (right of the author or creator) and Related Rights (rights of the
performers, producers and broadcasting organisations).
● Intellectual property rights refer to the general term for the assignment of property rights through
patents, copyrights and trademarks. These property rights allow the holder to exercise a monopoly on
the use of the item for a specified period.
● According to WTO, Intellectual property rights are the rights given to persons over the creations of
their minds. They usually give the creator an exclusive right over the use of his/her creation for a
certain period of time.
● Intellectual property rights are the legal rights that cover the privileges given to individuals who are the
owners and inventors of a work, and have created something with their intellectual creativity.
Individuals related to areas such as literature, music, invention, etc., can be granted such rights, which
can then be used in the business practices by them.

The creator/inventor gets exclusive rights against any misuse or use of work without his/her prior information.
However, the rights are granted for a limited period of time to maintain equilibrium.

The following list of activities which are covered by the intellectual property rights are laid down by the World
Intellectual Property Organization (WIPO) −

▪ Industrial designs

▪ Scientific discoveries

▪ Protection against unfair competition

▪ Literary, artistic, and scientific works

▪ Inventions in all fields of human endeavor

▪ Performances of performing artists, phonograms, and broadcasts

▪ Trademarks, service marks, commercial names, and designations

▪ All other rights resulting from intellectual activity in the industrial, scientific, literary, or artistic fields

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 1. The Agreement on Trade-related aspects of Intellectual Property Rights (TRIPS)

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is an international

agreement administered by the World Trade Organization (WTO) that sets down minimum standards for
many forms of intellectual property (IP) regulation as applied to nationals of other WTO Members. It was
negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) in
1994, which came into force from 1st January 1995. The obligations under the TRIPS Agreement relate to
provision of minimum standard of protection of intellectual property rights within the member countries
legal systems and practices.

In 2001, developing countries, concerned that developed countries were insisting on an overly narrow
reading of TRIPS, initiated a round of talks that resulted in the Doha Declaration. The Doha declaration is
a WTO statement that clarifies the scope of TRIPS, stating for example that TRIPS can and should be
interpreted in light of the goal “to promote access to medicines for all."

Specifically, TRIPS requires WTO members to provide-

● copyright rights, covering content producers including performers, producers of sound recordings and
broadcasting organizations;
● geographical indications, including appellations of origin;

● industrial designs;

● integrated circuit layout-designs;

● patents;

● new plant varieties;

● trademarks;

● trade dress; and

● undisclosed or confidential information

Objectives of TRIPS Agreement

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The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is the most
comprehensive multilateral agreement on intellectual property (IP). The primary objectives of TRIPS are as
follows:

1. It lays down minimum standards for protection and enforcement of intellectual property rights in member
countries which are required to promote effective and adequate protection of intellectual property rights with a
view to reducing distortions and impediments to international trade.

2. It also specifies enforcement procedures, remedies, and dispute resolution procedures.

3. It plays a central role in facilitating trade in knowledge and creativity, in resolving trade disputes over IP,
and in assuring WTO members the latitude to achieve their domestic policy objectives.

4. It frames the IP system in terms of innovation, technology transfer and public welfare. The Agreement is a
legal recognition of the significance of links between IP and trade and the need for a balanced IP system.

The general goals of the TRIPS Agreement are contained in the Preamble of the Agreement include –

● the reduction of distortions and impediments to international trade,

● promotion of effective and adequate protection of intellectual property rights, and

● ensuring that measures and procedures to enforce intellectual property rights do not themselves become
barriers to legitimate trade.
● the protection and enforcement of intellectual property rights should contribute to the promotion of
technological innovation and to the transfer and dissemination of technology, to the mutual advantage
of producers and users of technological knowledge and in a manner conducive to social and economic
welfare, and to a balance of rights and obligations.
● recognizing the rights of Members to adopt measures for public health and other public interest
reasons and to prevent the abuse of intellectual property rights, provided that such measures are
consistent with the provisions of the TRIPS Agreement.

Features of TRIPS

The areas of intellectual property that it covers are: copyright and related rights (i.e. the rights of performers,
producers of sound recordings and broadcasting organizations); trademarks including service marks;
geographical indications including appellations of origin; industrial designs; patents including the protection of
new varieties of plants; the layout-designs of integrated circuits; and undisclosed information including trade
secrets and test data.

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The three main features of the Agreement are:

● Standards

In respect of each of the main areas of intellectual property covered by the TRIPS Agreement, the
Agreement sets out the minimum standards of protection to be provided by each Member. Each of
the main elements of protection is defined, namely the subject-matter to be protected, the rights to
be conferred and permissible exceptions to those rights, and the minimum duration of protection.
The Agreement sets these standards by requiring, first, that the substantive obligations of the main
conventions of the WIPO, the Paris Convention for the Protection of Industrial Property (Paris
Convention) and the Berne Convention for the Protection of Literary and Artistic Works (Berne
Convention) in their most recent versions, must be complied with.Secondly, the TRIPS Agreement
adds a substantial number of additional obligations on matters where the pre-existing conventions
are silent or were seen as being inadequate. The TRIPS Agreement is thus sometimes referred to as
a Berne and Paris-plus agreement.

● Enforcement

The second main set of provisions deals with domestic procedures and remedies for the enforcement
of intellectual property rights. The Agreement lays down certain general principles applicable to all
IPR enforcement procedures. In addition, it contains provisions on civil and administrative
procedures and remedies, provisional measures, special requirements related to border measures and
criminal procedures, which specify, in a certain amount of detail, the procedures and remedies that
must be available so that right holders can effectively enforce their rights.

● Dispute settlement

The Agreement makes disputes between WTO Members with respect of the TRIPS obligations
subject to the WTO's dispute settlement procedures.

In addition, the Agreement provides for certain basic principles, such as national and most-favoured-nation
treatment, and some general rules to ensure that procedural difficulties in acquiring or maintaining IPRs do not
nullify the substantive benefits that should flow from the Agreement. The obligations under the Agreement
will apply equally to all Member countries, but developing countries will have a longer period to phase them
in. Members are left free to determine the appropriate method of implementing the provisions of the
Agreement within their own legal system and practice.

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3. The World Intellectual Property Organization (WIPO)

The World Intellectual Property Organization (WIPO) is one of the 16 specialized agencies of the United
Nations. The WIPO Convention, the Constituent instrument of the World Intellectual Property Organizations,
was signed at Stockholm on July 14, 1967 entered into force in 1970 and was amended in 1979. WIPO is an
intergovernmental organization that became in 1974 one of the specialized agencies of the United Nations
System of Organizations.

The origins of WIPO go back to 1883 and 1886 when the Paris Convention for the Protection of Industrial
Property and the Berne Convention for the Protection of Literary and Artistic Works, respectively, were
concluded. Both Conventions provided for the establishment of an "International Bureau". The two bureaus
were united in 1893 and, in 1970, were replaced by the World Intellectual Property Organization, by virtue of
the WIPO Convention. WIPO. India joined WIPO in 1975.

Objectives of WIPO
The World Intellectual Property Organisation (WIPO) aims to promote intellectual property rights (IPRs)
worldwide by strategic partnership through carefully formulated national IP strategy adjusting it with the
country’s existing development policies and objectives. The objectives of WIPO are as follows-

1. To promote the protection of and the respect for intellectual property throughout the world through
cooperation among Member States; and, where appropriate, in collaboration with other international
organizations;
2. To ensure administrative cooperation among the intellectual property Unions established by the treaties
that are administered by WIPO;
3. To harmonize national intellectual property legislations and procedures;
4. To make IP speak the language of the economic circumstances and social context that it serves;
5. To provide technical expertise and advice, support and assistance in the implementation of national IP
strategy;
6. To create better functional linkages between the national economic objectives, development priorities
and resources, and the IP system of the country concerned;
7. To provide services for international applications for intellectual property rights;
8. To facilitate exchange of information on intellectual property rights.

Features of WIPO

Activities of WIPO:

1. Assistance to developing countries constitutes the first pillar of WIPO’s activities, and takes the form of
training (groups and individuals, in general or specialized courses, seminars to provide for an exchange of
information and experience), promotion of creative activities and of technology transfer, the provision of

pg. 6
technological information contained in patent documents, the provision of advice on laws and regulations as
well as the management of industrial property offices and copyright collective administration societies, as well
as the provision of equipment.

2, The second pillar relates to activities in the setting of international standards and norms for the protection
and administration of intellectual property. They are concerned with revision of existing treaties or creation of
new ones, simplifying procedures at the national, regional or international levels for the granting of intellectual
property rights, the effective enforcement and protection of such rights,

3. The registration activities are the third pillar of WIPO and involve direct services to applicants for, or
owners of, industrial property rights. These activities concern the receiving and processing of international
applications for the protection of inventions, or for the international registration of marks or deposit of
industrial designs.

Functions of WIPO:

● Acts as a policy forum to shape balanced international IP rules for a changing world to enable a
country to use its IP system in an effective and optimal manner while ensuring that it contributes to
overall national development policies and goals
● Provides a clear picture of where a country wants to go and how it will get there by using the IP system

● Helps to ensure the development of a balanced national IP system that fits with the specific needs and
expectations of a country
● Provides an effective framework of cooperation between the country concerned and WIPO (and other
agencies providing technical assistance) in the areas related to IP
● To provide Global services to protect IP across borders and to resolve disputes.

● Provides technical infrastructure to connect IP systems and share knowledge.

● To ensure cooperation and capacity-building programs to enable all countries to use IP for economic,
social and cultural development.

2. THE COPYRIGHT ACT, 1957

Definition of Copyright

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Copyright law protects expressions of ideas rather than the ideas themselves. Copyright involves exclusive
ownership over a person’s creation. Copyright is a major aspect of intellectual property law and in India, it is
governed by the Copyright Act, 1957 and the Copyright Rules, 2013. The Copyright Rules were revamped in
2013 and replaced the original Copyright Rules, 1958. Under section 13 of the Copyright Act 1957, copyright
protection is conferred on literary works, dramatic works, musical works, artistic works, cinematograph films
and sound recording. For example, books, computer programs are protected under the Act as literary works.

Copyright is a form of intellectual property protection granted under Indian law to the creators of original
works of authorship such as literary works (including computer programs, tables and compilations including
computer databases which may be expressed in words, codes, schemes or in any other form, including a
machine readable medium), dramatic, musical and artistic works, cinematographic films and sound recordings.

Original means, that the work has not been copied from any other source. Copyright protection commences the
moment a work is created, and its registration is optional. However it is always advisable to obtain a
registration for a better protection. Copyright registration does not confer any rights and is merely a prima
facie proof of an entry in respect of the work in the Copyright Register maintained by the Registrar of
Copyrights.

Copyright refers to a bundle of exclusive rights vested in the owner of copyright by virtue of Section 14 of the
Act. These rights can be exercised only by the owner of copyright or by any other person who is duly licensed
in this regard by the owner of copyright. These rights include the right of adaptation, right of reproduction,
right of publication, right to make translations, communication to public etc.

Copyright protection is conferred on all original literary, artistic, musical or dramatic, cinematograph and
sound recording works. Section 14 of the Copyright Act provides that for the purposes of this Act, “copyright”
means the exclusive right to do or authorise the doing of any of the following acts in respect of a work or any
substantial part thereof, namely:—

❖ (a) in the case of a literary, dramatic or musical work, not being a Computer Program—
(i) to reproduce the work in any material form including the storing of it in any medium by
electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public, or communicate it to the public;
(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 any adaptation of the work;
(vii) to do, in relation to a translation or an adaptation of the work, any of the acts specified in
relation to the work in sub-clauses (i) to (vi);
❖ (b) In the case of a Computer Program—

pg. 8
(i) to do any of the acts specified in clause (a)

(ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of the computer
program: Provided that such commercial rental does not apply in respect of computer programs where the
program itself is not the essential object of the rental.

❖ (c) In the case of an Artistic work—

(i) to reproduce the work in any material form including—

(A) the storing of it in any medium by electronic or other means; or

(B) depiction in three-dimensions of a two-dimensional work; or

(C) depiction in two-dimensions of a three-dimensional work;

(ii) to communicate the work to the public;

(iii) to issue copies of the work to the public not being copies already in circulation;

(iv) to include the work in any cinematograph film;

(v) to make any adaptation of the work;

(vi) to do in relation to adaptation of the work any of the acts specified in relation to the work in sub-clauses (i)
to (iv);

❖ (d) In the case of a Cinematograph film—

(i) to make a copy of the film, including— (A) a photograph of any image forming part thereof; or (B) storing
of it in any medium by electronic or other means;

(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the film

(iii) to communicate the film to the public;

❖ (e) In the case of a sound recording—

(i) to make any other sound recording embodying it including storing of it in any medium by electronic or
other means;

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(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the sound recording;

(iii) to communicate the sound recording to the public.

Various works covered under Copyright

Section 13 of Copyright Act provides that

(1) Subject to the provisions of this section and the other provisions of this Act, copyright shall subsist
throughout India in the following classes of works, that is to say,—

(a) original literary, dramatic, musical and artistic works;

(b) cinematograph films; and

(c) sound recording.

(2) Copyright shall not subsist in any work specified in sub-section (1)unless,—

(i) in the case of a published work, the work is first published in India, or where the work is first published
outside India, the author is at the date of such publication, or in a case where the author was dead at that date,
was at the time of his death, a citizen of India;

(ii) in the case of an unpublished work [other than a work of architecture], the author is at the date of the
making of the work a citizen of India or domiciled in India; and

(iii) in the case of work of architecture, the work is located in India.

(3) Copyright shall not subsist—

(a) in any cinematograph film if a substantial part of the film is an infringement of the copyright in any other
work;

(b) in any sound recording made in respect of a literary, dramatic or musical work, if in making the sound
recording, copyright in such work has been infringed.

(4) The copyright in a cinematograph film or a sound recording shall not affect the separate copyright in any
work in respect of which or a substantial part of which, the film, or, as the case may be, the sound recording is
made.

(5) In the case of work of architecture, copyright shall subsist only in the artistic character and design and shall
not extend to processes or methods of construction.

pg. 10
Definitions of Various Works

● Literary Work - “Literary work” includes computer programmes, tables and compilations including
computer databases
● Dramatic Work-“Dramatic work” includes any piece for recitation, choreographic work or
entertainment in dumb show, the scenic arrangement or acting, form of which is fixed in writing or
otherwise but does not include a cinematograph film
● Musical Work- “musical work” means a work consisting of music and includes any graphical notation
of such work but does not include any words or any action intended to be sung, spoken or performed
with the music
● Artistic Work- “artistic work” means,— (i) a painting, a sculpture, a drawing (including a diagram,
map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic
quality; (ii) a work of architecture; and (iii) any other work of artistic craftsmanship
● Sound Recordings- “sound recording” means a recording of sounds from which such sounds may be
produced regardless of the medium on which such recording is made or the method by which the
sounds are produced
● Broadcasts - “Broadcast” means communication to the public— (i) by any means of wireless
diffusion, whether in any one or more of the forms of signs, sounds or visual images; or (ii) by wire,
and includes a re-broadcast.

Idea-Expression Dichotomy-

A very important aspect of copyright laws is that it protects expressions of ideas rather than the ideas
themselves. That is, copyright can be sought for the novelty of the way a particular idea is expressed, not only
for the originality of the idea itself. This is called the idea-expression dichotomy and is a frequently used legal
doctrine in copyright dispute resolution.

The term Idea means an idea in our mind of what something is like or should be like. The term Expression
means something that we say, write or show or what we think or feel. The term Dichotomy means conflict or
difference between idea and expression

The idea-expression dichotomy was formulated to ensure that the manifestation of an idea (i.e. an expression)
is protected rather than the idea itself. The doctrine has been widely used in the United States and is not really
alien to Indian jurisprudence. Courts have repeatedly opined that ideas per se are not copyrightable; only the
expression of an idea is copyrightable.

pg. 11
An idea is the formulation of thought on a particular subject whereas an expression constitutes the
implementation of the said idea. While many persons may individually arrive at the same idea, they can claim
copyright only in the form of an expression to this idea. Such expression must be a specific, particular
arrangement of words, designs or other forms.

There exists no copyright in ideas. Copyright subsists only in the material form to which the ideas are
translated. Two authors may have the same idea for a book. However the way they express themselves i.e., the
way they put down their idea in a tangible form is what that makes a difference. It is the form in which a
particular idea, which is translated that is, protected.

The primary reason for granting protection to expressions and not ideas is to protect the free flow of ideas.
Ideas are too valuable to be copyrighted. The copyrighting of ideas would eventually bring creativity and
innovation to a standstill. It is for this reason that the freedom to copy ideas is central to the structure of
copyright law. Thus, it provided that copyright protection only fixed on the expression of the idea, but not on
the idea as such. No copyright infringement will be found if no expression but idea or method or system is
copied.

This principle recognizes that ideas are abstract and can be common to everyone. What deserves legal
protection is the creative way an arctic expresses the said idea. Thus it becomes important to be able to
distinguish between ideas and expression. Till now, courts across every jurisdiction have been unable to
develop a straight-jacket formula that can properly differentiate between ideas and expression. This is
primarily because sometimes there exists a very thin line between the two concepts and thus every case varies
according to the specific factual circumstance.

RG ANAND v. DELUXE FILMS (1978) SC 1613:

Facts of the Case : This case was about a play and a movie. The play named ‘HUM HINDUSTANI’ was
written by R.G. Anand in 1953. It was about two neighbors, a boy who belongs to a Punjabi family and a girl
who belongs to a Madrasi family. Both of them fell in love and wanted to get married. However, the parents
were against this relationship as they wanted them to marry a person who belonged to their community. When
the couple got to know about this, they decided to run away and commit suicide. In the end, the parents regret
their decision and accept their marriage.

On the other hand, the plot of the movie was similar which raised the issue between the petitioner and the
defendant. The film was named "NEW DELHI" released in the year 1956.[6]

The problem arises when the appellant R.G Anand, the writer of the play "Hum Hindustani," wanted his play
to be turned into a movie. However, the respondent, i.e., the producing company, somehow knew about Mr.
Anand’s intention and approached him. Discussion started between RG Anand (petitioner) and the production
firm (respondent), but later, the respondent did not revert to the petitioner for some reason. [7]

pg. 12
Later on, the petitioner got to know that the producing company was making a movie based on his play. He
confronted the respondent, but they denied it. When the film was released, the plaintiff observed that the film
was similar to his play, and he contended that the respondent copied his play without his permission.[8]

Issues: The issue raised in this case was; whether the new film ‘New Delhi’ was infringing the plaintiff's
copyrighted play 'Hum Hindustani.

Reasoning of the Court: The court, in this case, stated some significant aspects related to copyright
infringement:

● The most critical facet defined was that there could be no copyright in an idea. Also, there can be no
copyright in historical, legendary facts, subject matter. The copyright in such a case should depend on
the exhibition of the copied work.
● Whether the work is copied or not, should be determined by considering the similarities in the plot of
the original work and the copied work.
● A test should be established to point out the similarities between the subsequent and the original work.

● If the theme is the same, but the exhibition is different, there cannot be any violation of copyright.

● If there are similarities of the exhibition, the intention should be observed. If the copied work was
unintentional, then there can be no copyright infringement.
● There should be dissimilarities between the original work and the copied work. If there are
dissimilarities in a broad sense, then it cannot be considered copyright infringement.
● If the spectator finds an out large area of similarities between the subsequent work and the original
work in the mentioned test, then it should be proved. The burden of proof regarding copyright
infringement is on the plaintiff.

Judgement: The Supreme Court of India decided that the film 'New Delhi' was not a copyright infringement on
the petitioner's written play 'Hum Hindustani.' The Supreme Court held that the similarities between the play
and the movie were negligible. The defendant showed creativity in the film, and the creativity came from their
mind. The court also stated that there were several plots in the movie which were not included in the play.

It was held by the court that there could be no copyright protection for an idea, according to Section 1 (2) (d)
of the Copyright Act, 1911. And if there are similarities in extreme level, then it cannot be avoidable. Even the
name of the title of the work can be similar, but the execution and exhibition of the work should be different.

The judgment given by the court in the case of RG Anand vs. Deluxe Films is considered a significant
judgment related to copyright infringement. It stated that copyright protection is only applicable to the

pg. 13
expression of an idea and not to a mere idea itself because it might halt the economy and free flow of ideas, as
ideas are considered precious substances.

In the Eastern Book Company Ltd. vs. D.B Modak & Ors(2008) 1 SCC 1, the Supreme Court of India held
the same. There cannot be any copyright protection for an idea or any material available to the public domain.
Similarly, In Donoghue vs. Allied Newspaper Ltd (1937) 3 Ch. D. 503, the court was of the opinion that there
could not be any copyright protection over an idea. The idea can be a brilliant one, but still, it cannot be
protected from copyright infringement. If a person communicates his idea with another person, and over his
idea, a play or film or anything has been made in material form, still the idea cannot be copyrighted.

Hence, from the given case it can be concluded that copyright protection can only be provided to an expression
of an idea. This is done so that there is no monopoly in a market. If copyright protection is started to provide to
ideas, it might create a hindrance in the market of creation and innovation. Therefore, protection should only
be provided to expressions and not to an idea.

Criteria for Copyright protection,

The following three requirements must all be met in order for copyright to subsist in a work-

a. The work must be reduced to material form

An idea itself will not receive copyright protection. The idea must be reduced to material form (whether it is
written, recorded (including in musical or dance notation), filmed, painted, etc) before it is capable of copyright
protection. The idea will only receive protection in the form in which it is expressed. So the creative idea must
be locked in a permanent state. To protect a song, for example, it must be notated on paper or recorded onto
tape or CD. A live performance of that song won’t be protected.

b. The work must be Creative

To satisfy the creativity requirement a work need only to demonstrate a very small amount of creativity. Very
few creations fail to satisfy this requirement. Expression goes hand-in-hand with the fixation requirement. Ideas
can’t be copyrighted, but the “expression” of an idea can be copyrighted.

c. The work must be original and the result of the author's skill and effort

Thework must be original. This does not mean the work must be independently created. In other words, it
cannot be copied from something else. Original meaning, created from inspiration and not borrowed from any
other existing sources. The work must have been created for the first time. There is no requirement that the
work be novel (as in patent law), unique, imaginative or inventive, it must be the product of the author's
independent skill and effort.

pg. 14
d. The work must be first publication

The work must be an original work should not have been published before.

e. Other criteria

In the event of work published in India, the author must be a citizen of India at that time. In case a work
published after the death of the author; at the time of death, the author must be a citizen of India.

Authorship and Ownership of Copyright

Generally, an author is that person who writes or composes the work, either all by himself or according to the
direction given by another person. Whenever a copyrightable work is created, the author puts in his intellectual
ability in order to create the work. Hence, the Copyright Act, 1957, recognizing the efforts put by the authors,
grants authorship rights to the author of the creation. Since copyright is a universal right, it doesn’t matter what
the nationality of the author is in order to acquire authorship rights. However, the Copyright Act, 1957
specifies certain requisites under Section 13 of the said Act which needs to be met in order to own copyright.

Definition of Author

The Copyright Act, 1957 has set a general rule under the definition of the author of various works laid down
under Section 2(d), which states that the author is the first owner of the Copyright. Section 2(d) of the
Copyright Act, 1957. The section reads as follows:

● In literary or dramatic works, the author of such work shall be the author.

● In musical works, the music composer shall be the author.

● In artistic works, the artist shall be the author.

● For a photograph, the person clicking such photograph shall be the author.

● In cinematographic films, the producer of such a film shall be the author.

● For a sound recording, the producer of such sound recording shall be the author.

● When a literary, dramatic, artistic or musical work is a computer generated then the person who causes
such work to be created is the author.

In Chidambare v. Renga, where a person rests under an obligation to do something, and in discharge of such
obligation, he transfer a certain interests, such transfer is for valuable consideration.
pg. 15
Who is an owner?

The concept of ownership is very different under the Copyright Act. As we discussed above, the general rule is
that the author is the first owner of the copyright. However, the Copyright Act, 1957 specifies certain
exceptions to this general rule. Therefore, it becomes very important to understand the difference between
authorship and ownership of copyright. Let us understand with the help of illustrations.

Illustration: If ‘A’ asks ‘B’, a painter to paint his portrait for an agreed sum of money, then although B has
created the painting, he shall be the author and A who paid consideration for the portrait shall become the first
owner of the copyright arising and accruing out of the portrait.

In many scenarios, the work may be commissioned or made through the course of employment. In such a
situation, the person who commissions the work or who is the employer becomes the owner of the rights in
that work. The statutory provision that recognizes such a person as the owner is laid down under Section 17.
Let’s understand the same in the next subheading of this article.

Thomas vs Manorama: - In this case, it was held that once the employment agreement is terminated, the work
created by a person subsequent to such termination shall be the first and true owner of copyright arising out of
such subsequent works and the former employer shall possess no copyright on such subsequent copyrightable
work.

Section 17 of the Copyright Act, 1957 is an exception to the general rule of the author being the first owner of
the copyright. This section simply lays down that a person who pays a consideration for the work to be done
shall become the first owner of the copyright.

● Section 17 (a) of Copyright Act, 1957 : literary, dramatic and artistic works

This clause of Section 17 talks about literary, dramatic and artistic works. It says that whenever such a work is
made by an author during the course of his employment or service to the owner of a newspaper, magazine,
book etc under a contract for publishing such work, then subject to an agreement in contrary, the owner of
such newspaper or magazine shall become the first owner of the copyright.

Illustration: - If ‘A’ is a journalist employed at Mirror Now, a newspaper agency, then he shall only enjoy
authorship rights over that article. The first owner of the article shall be the owner of Mirror Now.

● Section 17 (b) of Copyright Act, 1957 : photograph, painting, engraving, cinematographic film

pg. 16
This clause talks about the cases when an artist is hired for creating a painting, or when a photographer is hired
for clicking images, or a cinematographer is hired to shoot a cinematographic film then the person causing
such work to be created shall become the first owner of the copyright. However, this rule shall apply only if
there’s no agreement to the contrary between the parties.

Illustration: If ‘X’ who is an artist has been hired by ‘Y’ to create a portrait of his son, then ‘Y’ shall be the
first owner of the copyright arising and accruing from the portrait created by ‘X’ in lieu of consideration.
However, ‘X’ shall retain authorship rights over the portrait.

● Section 17 (c), Copyright Act, 1957 : work made during the course of employment

This section provides that, when a work is made by a person in the course of his employment under a contract
of service or traineeship, then the employer shall become the first owner of all the work created during such
employment unless there’s an agreement in contrary between the parties.

Illustration: If ‘M’ is a programmer employed at XYZ company, then all the copyright arising from codes
created by ‘M’ shall be owned by XYZ company as the first owner.

● Section 17 (cc), Copyright Act, 1957 : lectures delivered in public on behalf of another

As per this clause, if a person is delivering a speech on behalf of another then, the person on behalf of whom
the lecture is given in the public is the first owner of such copyright. However, if a person gives a lecture in
public by himself and not representing anyone else then, he becomes the author and first owner of such
copyright.

Illustration: If ‘A’ the spokesperson of ‘B’ a political leader delivers a speech in public, then although ‘A’ is
delivering the speech in public, ‘B’ shall be the first owner of the copyright of such speech.

● Section 17 (d) of Copyright Act, 1957 : work assigned by Government

Suppose if a copyrightable work is created on being tendered by the government, then such government shall
be the first owner of the copyright arising and accruing from such works unless there’s an agreement to the
contrary between the parties.

Illustration: - If ‘A’ a sculptor, has been tendered to create a sculpture of national heroes to be affixed on the
road by the State Government then, the State government shall own first ownership of copyright arising from
such sculpture.

● Section 17 (dd) of Copyright Act, 1957 : copyrightable work made on behalf of a public undertaking

pg. 17
When a copyrightable work is created as per the direction of the public undertaking, then such public
undertaking shall be the first owner of the copyright.

● Section 17 (dd) and Section 41 of Copyright Act, 1957 : copyrightable works created for certain
international organization

Suppose if an international organisation assigns a person to create a copyrightable work for them then, that
international organization shall become the first owner of such copyrightable work.

● Ownership in Commissioned Work

The term commissioned work in general means the work performed by a body of persons under the authority
for valuable consideration. In connection with copyright law we could understand that an author may create a
work at the instance of another person for valuable consideration and in the absence of any agreement to the
contrary, the person at whose instance the work is made are the owner of copyright

● Ownership in collective work

Collective Works include Encyclopedia, dictionary year book, newspaper magazine or generally a work in
which works or parts by different authors are incorporate. In such cases the person who has collected, edited
and organized the work is the first owner of such copyright.

Duration of Copyright

The general rule is that copyright lasts for 60 years. The periods of the substance of different works in relation
to copyright are-

● In the case of original literary, dramatic, musical and artistic works the 60-year period is counted from the
year following the death of the author.

● In the case of cinematograph films, sound recordings, photographs, posthumous publications, anonymous
and pseudonymous publications, works of government and works of international organisations, the 60-
year period is counted from the date of publication.

● The Broadcast reproduction right shall subsists until 25 years from the calendar year next following the
year in which broadcast is made.
● The performer rights shall subsist until 50 years from the beginning of the calendar year next following
the year in which performance is made.
pg. 18
There is no renewal of copyright under Indian law as neither registration nor renewal are required for
subsistence of copyright in a work for its entire term.

4. THE INDIAN TRADEMARKS ACT, 1999 -

What is a Trademark

● Trademark is a recognizable insignia, phrase, word, or symbol that denotes a specific product and
legally differentiates it from all other products of its kind. A trademark exclusively identifies a product
as belonging to a specific company and recognizes the company's ownership of the brand.
● Trademark is a unique symbol or word(s) used to represent a business or its products. Once
registered, that same symbol or series of words cannot be used by any other organization, forever, as
long as it remains in use and proper paperwork and fees are paid.
● The Term “Trade mark” is defined under Section 2(zb) of the Indian Trademarks Act, 1999 as
follows:
Trademark is 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 a shape of goods, their
packaging, and combination of colors.
(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 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 with or without any indication of the identity of that person,
and includes a certification trade mark or collective mark.

Furthermore, the Act also provided for definition of ‘mark’ under Section 2(m) which enumerates a mark to
include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods,
packaging or combination of colours or any combination thereof.

pg. 19
Thus to sum up, a trademark is any word, name, symbol, or design, or any combination thereof, used in
commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to
indicate the source of the goods.

Prerequisites of being a Trademark:

In general, two basic requirements must be met for a mark to be eligible for trademark protection: it must be in
use in commerce and it must be distinctive.

The legal requirements to register a trademark under the Act are:

● The selected mark should be capable of being represented graphically (that is in the paper form):
‘Graphical representation’ has been defined under Section 2(1) (k) of Trademark Rules, 2007 as
representation of a trademark for goods or services represented or capable of being represented in paper
form and include representation in digitized form. Such graphical representation of a trademark also
encompasses within its purview shape of goods, their packaging, combination of colours, in other
words it brings within its ambit “trade dress.” This essential requisite for qualification as a valid
trademark merely implies that the mark should be capable of being put on the register in a physical
form and also being published in the Journal. Two primary reasons for grahical representation a
trademark:
i. Enable traders to identify with clarity what other traders have applied for registration as trademark
and for what product;
ii. Enable public to determine with precision the sign which forms the subject of trademark
registration
● It should be capable of distinguishing the goods or services of one undertaking from those of
others: The definition of “trade mark” under Section 2(1)(zb)of the 1999 Act means a mark “which is
capable of distinguishing the goods or services of one person from those of others”. Therefore, the use
of a mark that is not capable of distinguishing the goods of such proprietor of the trade mark would not
qualify for the protection under the Trademark Act. This requisite of a trademark primarily enumerates
that a trademark must be distinctive i.e. it should not be devoid of a distinctive character.

The second requirement, that a mark be distinctive, addresses a trademark's capacity for identifying and
distinguishing particular goods as emanating from one producer or source and not another. Trademarks
are traditionally divided into four categories of distinctiveness: arbitrary/fanciful, suggestive,
descriptive, and generic.
✔ If a mark is categorized as either arbitrary/fanciful or suggestive, it is considered to be
inherently distinctive and exclusive rights to the mark are determined solely by priority of use.

pg. 20
 ✔ A trademark that is categorized as descriptive is only protectable as a trademark if it has
acquired a secondary meaning in the minds of the consuming public.
✔ Secondary meaning is also necessary to establish trademark protection for a personal name or a
geographic term.
✔ Generic terms are never eligible for trademark protection because they refer to a general class
of products rather than indicating a unique source.

● It should be used for trade purposes: The Trademark should be used or proposed to be used mark 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 and some person having the right to use the mark with or
without identity of that person.The requirement, that a mark be used in commerce, arises because
trademark law is constitutionally grounded to regulate interstate commerce. Trademark is a mark used
in commerce, or registered with a bona fide intent to use it in commerce.

Trademark - beyond words or symbols:

Under some circumstances, trademark protection can extend beyond words, symbols, and phrases to include
other aspects of a product, such as its color or its packaging. For example, the unique shape of a Coca-Cola
bottle might serve as identifying features. Such features fall generally under the term "trade dress," and may be
protected if consumers associate that feature with a particular manufacturer rather than the product in general.
However, such features will not be protected if they confer any sort of functional or competitive advantage.
So, for example, a manufacturer cannot lock up the use of a particular unique bottle shape if that shape confers
some sort of functional advantage (e.g. is easier to stack or easier to grip).

Trademarks make it easier for consumers to quickly identify the source of a given good. Instead of reading the
fine print on a can of cola, consumers can look for the Coca-Cola trademark. Instead of asking a store clerk
who made a certain athletic shoe, consumers can look for particular identifying symbols, such as a swoosh
(Nike) or a unique pattern of stripes (Adidas). By making goods easier to identify, trademarks also give
manufacturers an incentive to invest in the quality of their goods. After all, if a consumer tries a can of Coca-
Cola and finds the quality lacking, it will be easy for the consumer to avoid Coca-Cola in the future and
instead buy another brand. Trademark law furthers these goals by regulating the proper use of trademarks.

pg. 21
Types of Trademarks

Protection under the Trade Marks Act, 1999 allows registration of those marks which are sufficiently
‘distinctive’ in nature. Not all marks can be registered as trademarks. Various types of trademarks are
discussed below:

Conventional Trademarks:

1. Generic Marks: A Generic mark is a mark which does not qualify for statutory protection. However,
some marks become generic due to their uninterrupted and extensive use over a period of time. In such
cases, the product or the service itself comes to be identified with the trademark. A generic mark
requires a greater degree of proof to be protected and the burden of proof lies upon the one who claims
the distinctiveness of the generic mark to be much higher. For example, in the case of E. Griffiths
Hughes Ltd. v. Vick Chemical Co., AIR 1959 Cal 654, the Court held that "VapoRub" was not an
invented or a coined word however, it was allowed to be registered upon production of evidence of
acquired distinctiveness. It was held that the mark "VapoRub"ofVicks Chemical Company had been
in use, continuously in India much before the date of application for its registration and therefore had
acquired sufficient distinctiveness making it fit to be registered as a Trademark.

2. Descriptive Marks: Descriptive marks are marks which describe a characteristic(s) of the
goods/services in question. The descriptive element may be a quality, quantity, kind, etc. of the product
or service. However, if these marks manage to achieve a secondary meaning, then they can qualify for
protection. For example, use of terms such as ‘Cold and Creamy’ for ice cream.

3. Suggestive Marks: Suggestive marks are merely suggestive of the purpose of the goods/services
covered under the trademark. Such marks require the imagination of the consumer to establish a
relation between the mark and the goods/services it covers. For example, Microsoft, Netflix, etc.

4. Arbitrary Marks: Arbitrary marks are commonly used words or words which have no dictionary
meaning and have no relation to products or the services they are applied to. These qualify for a
stronger protection than others. For example, Chicago for Pizza or Starbucks for Coffee or even for that
matter, Apple being an arbitrary mark for it being used as a brand name for the technological giant.

5. Fanciful Marks: Fanciful marks are invented for the sole purpose being used and registered as
trademarks as they have no other meaning. Since they are inherently distinctive and unique, they enjoy
the widest scope of protection. For example, Kodak, Pepsi.

pg. 22
Non-Conventional Trademarks:

1. Service Marks: A service mark is a type of a trademark. However, it is important to understand that,
Service marks represent the services offered by the company instead of a product or a good. A service
mark distinguishes the services of one service provider from that of another. These are usually filed by
large business chains which identify the source of service. Such as a company such as Yahoo may
brand certain products with a trademark, but use a service mark on the internet searching service that it
provides. It denoted as ‘SM’.A service mark means a mark that distinguishes the services of one
proprietor/owner from that of another. For example, Agarwal Packers and Movers for representing
packers and mover’s services. Similarly McDonalds, Wal-Mart, etc.

2. Collective Marks: These are the trademarks used by a group of companies and also protected by the
group collectively. Collective marks normally used to inform the public about a particular
characteristic of the product for which the collective mark used. The owner of such marks normally is
an association or public institution or it may be a cooperative. Collective marks also used to promote
particular products which have certain characteristics specific to the producer in a given field. Thus, a
collective trademark can be used by more than one trader, provided that the trader belongs to that
particular association.

The trader associated with a particular collective mark have a responsibility of ensuring the compliance
with certain standards which fixed by its members. Thus, the purpose of the collective mark is to
inform the public about certain features of the product for which the collective mark is used. For
example, the mark “CA” is used by the members who are a part of the Institute of Charted
Accountants, or the mark “CPA” which is used to denote the members of the Society of Certified
Public Accountants.

3. Certification Marks: These marks define the standards of the goods/services with respect to origin,
quality, material, genuineness etc. They guarantee that the product/service meets safety and other such
prescribed standards of the consumers. The certification mark is usually embodied upon the product.
Presence of a certification mark upon a product indicates that, the product has gone through the
specified standard tests. The requirements for filing a certification mark are elaborate and exhaustive as
compared to a trademark.

Government of India has created some standards for almost every product to protect the economic
interests of all citizens. These standards are like "AGMARK" for agricultural products, ISI mark for
“industrial or electrical products,” BIS Hallmark mark for “gold ornaments” and “FPO mark" for all
the "processed fruit products", FSSAI for "all the food products" etc.

4. Shape Marks: A trademark may also include the shape of goods or any particular packaging of such
goods if any, according to the Indian Trade Marks Act, 1999, as long as it is possible to graphically
represent the shape clearly. Shape marks help in distinguishing the products sold under such marks
from those of another manufacturer. The new Trade Marks Ordinance continues to allow registration of
pg. 23
 such marks when the shape of goods, packaging have some distinctive feature it can be registered. For
example, the shape of Ornamental Lamps or Zippo lighters.

In certain cases, the three-dimensional shape of a product or packaging can be a trademark (for
example a specially designed bottle of perfume or that of a soft drink).

5. Pattern Marks: These consist of specifically designed patterns which act as a distinguishing factor of
the product and are capable of identifying the goods or services from any particular
manufacturer/proprietor. It is important to understand that, Patterns which fail to stand out as
remarkable or distinct are generally rejected since they do not serve any purpose. However, in cases
where the pattern mark has become considerably recognised in the minds of the public, it acquires
‘distinctiveness’ and therefore qualifies for registration. For example, the ‘LV’ pattern of the brand
Louis Vuitton affixed upon their products.

6. Sound Marks: When a particular sound identifies any product or a service uniquely, it is to be
understood as a sound mark. A sound mark refers to a certain sound which is associated with a
company or its product or services, thus enabling the general public to identify the same from other
manufacturer. It is technically referred to as an ‘audio mnemonic’, which is an important tool used for
branding. It may be a short distinctive sound which is positioned at the beginning or at the end of a
commercial for a product or a service. Therefore, in such cases, this sound may be regarded as a
trademark eligible for registration as per the Trade Marks Act, 1999. In order to register a sound mark
the sound has to be represented graphically along with submitting the tune in the required format with
the Trade Marks Registry. For example, the Metro Goldwyn Mayer (MGM’s) lion roar, or the distinct
tone of ‘TITAN’.

Importance of protecting Trademarks

Trademarks and related intellectual property encourage vibrant competition for the benefit of consumers,
workers, brand owners and society at large.

1. Trademarks are the basis to create a company’s brand and identity: Trademark serves as a unique marker
of identity. They allow customers to identify a business as the source of a product or service. Consumers
connect with the company by looking at the Trademarks. Trademark brings transparency as it helps the
consumers to identify the manufacturer or service provider.
2. Trademarks are mark of standard and quality: Trademarks project the quality that a particular brand
stands for as it conveys a certain standard and quality of the product that consumers can easily identify.
Trademarks indicate the source of the products and a consistent level of quality.
3. Trademarks protect the reputation of companies: Trademark gives an exclusive right to the owner over its
use with a view to provide protection to the goodwill that the manufacturer’s product enjoys in the market.
pg. 24
 To maintain its reputation and to enhance its goodwill, trademarked companies will often work harder to
provide better quality services and products.

4. Trademarks help to prevent consumer confusion and allow consumers to base their purchasing decisions:
Trademarks are signs used to distinguish in the marketplace the goods or services of one enterprise from
those of other enterprises. They capture the consumer’s attention and make products stand out. Thus, it
also works as an advertising tool and promote freedom of choice. Trademarks enable consumers not get
confused and to make quick, confident and safe purchasing decisions.

5. Trademarks strengthen market footing of a product or company: Trademarks create a relationship of trust
with customers, which enable a business to establish a loyal client base. Some companies use Trademarks
for many years and have a reputation that is difficult to beat. So, it is very important to protect Trademarks
from unlawful use so that it doesn't tarnish the reputation of the company.

6. Trademarks give monopoly rights to its user: Registration of Trademarks provide the owner with a
monopoly in the use of that Trade Mark in relation to the goods for which is registered and the owner has
the full right to sue in the courts of law for infringement of the trademark.

7. Trademarks are also used as a way of protecting consumers: Trademarks provide protection for both
businesses and consumers, making them an important part of running a successful company and in
promoting global economic growth. When the manufacturers are responsible for any products or services
bearing their trademark, they tend to take more pride in products.

8. Trademarks guarantee certain financial benefits: Trademarks add value and recognition to a company. It
also makes it easy for the company or service provider to raise money from the stock market, or borrow
from lenders to expand. It makes it easier to find partners and collaborators based on its goodwill in the
market.

9. Trademarks are valuable intangible asset: A Trademark is acquired after a lot of research and cost. It is
important to protect it as it is a valuable intangible asset.

Duration of Trademark – Section 25

Section 25 provides for Duration, renewal, removal and restoration and registration as follows:

(1) The registration of trade mark, after the commencement of this Act, shall be for a period of ten years, but
may be renewed from time to time in accordance with the provisions of this section.

(2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed
manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration

pg. 25
of the trade mark for a period of ten years from the date of expiration of the original registration or of the last
renewal of registration, as the case may be (which date is in this section referred to as the expiration of the last
registration).

(3) At the prescribed time before the explanation of the last registration of a trade mark the Registrar shall send
notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to
payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration
of the time prescribed in that behalf those conditions have not been duly complied with the Registrar may
remove the trade mark from the register.

Provided that the Registrar shall not remove the trade mark from the register if an application is made in the
prescribed form and the prescribed fee and surcharge is paid within six months from the expiration f the last
registration of the trade mark and shall renew the registration of the trade mark for a period of ten years under
sub-section (2).

(4) Where a trade mark has been removed from the register for non-payment of the prescribed fee, the
Registrar shall, after six months and within one year from the expiration of the last registration of the trade
mark, on receipt of an application in the prescribed form and on payment of the prescribed fee, it satisfied that
it is just so to do, restore the trade mark to the register and renew the registration of the trade mark either
generally or subject to such conditions or limitations as he thinks fit to impose, for a period of ten years from
the expiration of the last registration.

5. THE PATENTS ACT 1970 - Regime Of Patent Rights

Definition of Patent

The word “Patent” is referred from a Latin term “patere” which means “to lay open,” i.e. to make available for
public inspection. As per Section 2(1)(m) of Patent Act, 1970"Patent" means a patent for any invention
granted under this Act. So a patent is an exclusive right granted by the Government to the inventor to exclude
others to use, make and sell an invention for a specific period of time in exchange of full disclosure of the
invention.

A patent is also available for improvement in their previous Invention. The main motto to enact patent law is
to encourage inventors to contribute more in their field by awarding them exclusive rights for their inventions.
In modern terms, the patent is usually referred to as the right granted to an inventor for his invention of any
new, useful, non-obvious process, machine, article of manufacture, or composition of matter.

Patent is a grant or right to exclude others from making, using or selling one's invention and includes right to
license others to make, use or sell it. It is an official document conferring a right or privilege, letters patent;
writing securing to an inventor for a limited term of years the exclusive right to make, use and sell his
pg. 26
invention; the monopoly or right so granted. After the expiry of the duration of patent, anybody can make use
of the invention.

Social Interests vs Private Incentives - the Monopoly debate

The object of granting patent is to encourage and develop new technology and industry. An inventor may
disclose the new invention only if he is rewarded for it by grant of exclusive rights (private incentive),
otherwise he may work on it secretly. In consideration of this grant of monopoly for a limited period of time,
the inventor full disclosure i.e. the discloses the details of the new invention and the method of working it so
that after the expiry of monopoly period - others can use the invention or work upon it's improvement (social
interest).

Thus the theory upon which the patent system is based is that the opportunity of acquiring of exclusive rights
in the invention (private incentives) stimulates technical progress (social interest) in following four ways:

1. It encourages future research and invention

2. It induces an inventor to disclose his discoveries instead of keeping them as trade secrets
3. It offers a reward for the expenses of developing inventions to the stage at which they are commercially
practicable
4. It provides an inducement to invest capital in new lines of production which might not appear
profitable if many competing producers embarked on them simultaneously. Manufacturers would not
be prepared to develop and produce important machinery if others could get the results of their work
without any penalty.

Thus the considerations which are said to constitute essentials for Grant of a patent monopoly are:

● The working of the invention within the country so as to result in the establishment of a new industry in
the country or an improvement of an existing industry which would profitably employ the labour and
capital of the country, thereby increasing the national wealth.
● Disclosure of the invention to the public and the manner of it's working so that on the expiry of the life
of the patent, the public are enabled to work the invention themselves and in competition with each
other.

Today invention of new products or new processes, particularly in the field of medicine, involves the
collective efforts of many highly skilled professionals and expenditure of considerable amount of money and
time which only big corporations and institutions can afford. Besides, the manufacture of the article or product
on a commercial scale requires further efforts and money. Accordingly under modern conditions only the big
corporations or institutions can afford to engage in such expensive research and development of new products
or processes. Further, even if an individual research scientist or technologist invents a new product or process,
he will have seldom the financial resources for developing the invention for commercial use and fighting

pg. 27
against infringement of the patent by competitors. Thus it may be seen that almost all the major patents
relating to new useful inventions, particularly in the medical field, are held by big transnational corporations.

Patentable Subject Matter

Patent law protects and encourages inventions. As per Section 2 (1) (j) of the Patents Act 1970, 'invention'
means a new product or process involving an inventive step and capable of industrial application.

The Act provides for the definition of the invention, which is now compliant with the provisions of TRIPS.
The criteria for patentability of an invention are novelty, inventive step and industrial applicability. Thus there
are certain criteria which have to be fulfilled to obtain a patent in India. It is called the Triple Requirement
Test.

Conditions for grant of Patent:

● Novelty

Innovation is an important criterion in determining the patent potential of an invention. Novelty means new.
So a new invention is the foremost criteria for grant of patent. Under Section 2 (1) (l) of the Patent Act, a
novelty or new Invention is defined as “no invention or technology published in any document before the date
of filing of a patent application, anywhere in the country or the world”. The complete specification, that is, the
subject matter has not fallen into the public domain or is not part of state of the art”.

Simply, the novelty requirement basically states that an invention that should neither have been published in
the public domain ever, nor have been anticipated before by anyone. It must be the newest which have no same
or similar prior arts.

Exceptions to the Novelty Rule:

There are a few exceptions where the rule of novelty is not applicable. These cases are as follows:

i. Subject matter published without the consent of the inventor.

pg. 28
 ii. The invention was published in consequence of the display in an exhibition notified by the
Government or reading the paper before a Learned Society. Grace period of 12 months is given in
such cases to file the patent application.

iii. Previous communication to Government of India.

iv. Public working for reasonable trials.

● Inventive steps or non-clarity or lack of obviousness

To be eligible for patent, an invention must include an inventive step. UnderSection 2 (1) (ja) of the Patents
Act, an inventive step is defined as “the characteristic of an invention that involves technological advancement
or is of economic importance or both, as compared to existing knowledge, and invention not obvious to a
person skilled in the art.” This means that the invention should not be obvious to a person skilled in the same
field where the invention is concerned. It should not be inventive and obvious for a person skilled in the same
field.

● Capable of industrial application:

Industrial applicability is defined in Section 2 (1) (ac) of the Patents Act as “the invention is capable of being
made or used in an industry”. This basically means that the Invention cannot exist in the abstract. It must be
capable of being applied in any industry, which means that it must have practical utility in respect of patent. It
means that invention should not merely be always for profit earning motive, but should be for some actual use
by the industry.

These are statutory criteria for the patent of an invention. In addition, other important criterion for obtaining a
patent is sufficient description of the product alongside full disclosure of a competent patent. A competent
patent disclosure means a patent draft specification must adequately disclose the Invention, so as to enable a
person skilled in the same field related to carrying out the Invention with undue efforts.

So we can see that a patent can be obtained for an invention which is new and useful. A patent can also be
obtained for an improvement of an article or a process of manufacture. As regards to medicine or drugs or
certain chemicals - no patent is granted on the substance itself even if new, but s process of manufacturing the
substance is patentable.

Non-patentable Inventions

A patent is a form of industrial property or intellectual property. The owner of patent can sell this or can also
grant license to others to exploit it. The property in a patent is similar in many ways to other forms of property.
pg. 29
However the most important consideration is to determine whether the Invention relates to a patent subject
matter. Sections 3 and 4 of the Patents Act,1 970 list non-patentable subject matter. Unless the Invention
comes under any provision of Section 3 or 4, it means that it consists of a subject for a patent. A patent is not
granted for an idea or principle as such, but for some article or process of making some article by applying the
particular idea.

Non-patentable inventions are enumerated under Section 3 and 4 of the Patent Act, 1970. Such inventions are
delineated below-

1. An idea or discovery cannot be a subject matter of a patent application.

2. Invention which is frivolous or which claims anything obviously contrary to well established natural
laws is not patentable, for example a machine that gives more than 100% performance, a perpetual
machine, etc.
3. Inventions which are contrary to public order or morality is not patentable, for example the
Oncomouse, genetically modified to develop cancer for medical research was not patentable as cancer
can be transmitted to public.
4. A mere discovery of a scientific principle or formula or formulation of an abstract theory, or discovery
of any living or non-living substances occurring in the nature ( e.g. the theory of relativity is not
patentable), for example Newton's law of gravity, etc.
5. Inventions pertaining to known substances and known processes are not patentable i.e. mere discovery
of a new form of a known substance which does not enhance the known efficacy of that substance is
not patentable, for example mere new use of neem or use of Aspirin for heart ailments etc.
6. An invention obtained through a mere admixture or arrangement is not patentable, for example solution
of sugar plus color additives in water to form a new soft drink.
7. The mere arrangement or rearrangement or duplication of known devices - each functioning
independently of one another in a known way, for example an umbrella with fan, a clock and radio in a
single cabinet, etc.
8. A method of agriculture or horticulture cannot be subject matter of patent (but not agricultural
equipments), for example production of new form of a plant, preparation of improved soil etc.
9. A process involving medical treatment of human and animals or to increase their economic value
cannot be subject matter of a patent, for example surgical processes, removal of cancer tumor or dental
plaque, etc.
10. Plants and animals in whole or in part are not patentable, for example clones and new varieties of
plants, a process for production of new plants and animals by crossing which is a biological process.
11. A mathematical or business method or a computer program per se or algorithms is excluded from
patent protection, for example method to do a mathematical problem or online chatting method etc.
12. Matters that are subject matter of copyright protection like literary, dramatic, musical or artistic work is
not patentable. These are subject matter of copyright.
13. Any scheme or rule or method of performing mental act or method of playing a game, for example
method of solving a crossword puzzle.

pg. 30
 14. Presentation of information, for example some spoken words, used symbols or diagrams etc.
15. Topography of integrated circuits for example mask works or circuit layouts ( chips or microchips)for
electronic products like radio, television, etc.
16. Traditional knowledge, for example medicinal use of turmeric.
17. Inventions relating to atomic energy, for example inventions relating to compounds of uranium,
beryllium, lithium, graphite etc.

Duration of Patent - Section 53

Term of Patent -- The term of every patent in India is twenty years from the date of filing the patent
application, irrespective of whether it is filed with provisional or complete specification.

Payment of Renewal Fee & Restoration of Patent

It is important to note that a patentee has to renew the patent every year by paying the renewal fee, which can
be paid every year or in lump sum.

A request for restoration of patent can be filed within eighteen months from the date of cessation of patent
along with the prescribed fee. After the receipt of the request, the matter is notified in the official journal for
further processing of the request.

6. THE GEOGRAPHICAL INDICATIONS OF GOODS (REGISTRATION AND

PROTECTION) ACT, 1999

Geographical Indications of Goods are defined as that aspect of industrial property which refer to the
geographical indication referring to a country or to a place situated therein as being the country or place of
origin of that product. Typically, such a name conveys an assurance of quality and distinctiveness which is
essentially attributable to the fact of its origin in that defined geographical locality, region or country. Under
Articles 1 (2) and 10 of the Paris Convention for the Protection of Industrial Property, geographical indications
are covered as an element of IPRs. They are also covered under Articles 22 to 24 of the Trade Related Aspects
of Intellectual Property Rights (TRIPS) Agreement, which was part of the Agreements concluding the
Uruguay Round of GATT negotiations.

A product’s quality, reputation or other characteristics can be determined by where it comes from.
Geographical indications are place names (in some countries also words associated with a place) used to

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identify products that come from these places and have these characteristics (for example, “Champagne”,
“Tequila” or “Roquefort”). Protection required under the TRIPS Agreement is defined in two articles.

All products are covered by Article 22, which defines a standard level of protection. This says geographical
indications have to be protected in order to avoid misleading the public and to prevent unfair competition.

TRIPS definition of geographical indications

Article 22.1 defines 'geographical indications' for the purposes of the Agreement as indications which identify
a good as originating in the territory of a member, or a region or locality in that territory, where a given
quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.

(b) Elements of the Article 22.1 definition According to that definition in Article 22.1, a GI:

❖ is a sign

❖ used to identify

❖ a good

❖ coming from a specific location, which could be:

▪ the territory of that member,

▪ a region in that territory, or

▪ a locality in that territory,

❖ having:

● a given quality,

● reputation, or

● other characteristics

❖ that are essentially due to that geographical origin.

The packaging of a single product may contain a number of designations. To illustrate this, consider two
bottles of brandy in a wine store: one with a label bearing in large characters the word ‘Cognac’ and, under
that word, ‘Maria®’; the other with a label bearing the words ‘Cognac’ and ‘Henry®’. Both labels bear in
small characters the words ‘Produce of France’. ‘Cognac' is a French appellation of origin identifying the
geographical region from which the product originates, ‘Henry®’ and ‘Maria®’ are individual trademarks

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identifying the enterprise producing the product, and ‘Produce of France’ is an indication of source identifying
the country or place of origin.

Article 23 of TRIPS provides a higher or enhanced level of protection for geographical indications for wines
and spirits: subject to a number of exceptions, they have to be protected even if misuse would not cause the
public to be misled.

Exceptions (Article 24). In some cases, geographical indications do not have to be protected or the protection
can be limited. Among the exceptions that the agreement allows are: when a name has become the common (or
“generic”) term (for example, “cheddar” now refers to a particular type of cheese not necessarily made in
Cheddar, in the UK), and when a term has already been registered as a trademark.

Definition of GI under The Geographical Indications of Goods (Registration and protection) Act, 1999

● A Geographical Indication (GI) is a sign used on products that have a specific geographical origin and
possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must
identify a product as originating in a given place. In addition, the qualities, characteristics or reputation
of the product should be essentially due to the place of origin. Since the qualities depend on the
geographical place of production, there is a clear link between the product and its original place of
production.

● Section2(1)(e) of Geographical Indications of Goods (Registration and protection) Act, 1999 provides
that "geographical indication", in relation to goods, means an indication which identifies such goods as
agricultural goods, natural goods or manufactured goods as originating, or manufactured in the
territory of a country, or a region or locality in that territory, where a given quality, reputation or other
characteristic of such goods is essentially attributable to its geographical origin and in case where such
goods are manufactured goods one of the activities of either the production or of processing or
preparation of the goods concerned takes place in such territory, region or locality, as the case may be.

So Geographical indication can be summed up as following :

1. It is an indication or sign used on products.

2. It originates from a definite geographical territory.
3. It is used to identify agricultural, natural, or manufactured goods.
4. The manufactured goods should be produced or processed or prepared in that territory.

Examples of Indian Geographical Indications- Basmati Rice, Darjeeling Tea, Kanchipuram silk saree,
Nagpur orange, Kolhapurichappal, Bikaneribhujia, Agra petha etc.

pg. 33
Conditions for Registration

1. A geographical indication (GI) is a sign used on products that have a specific geographical origin and
possess special quality or reputation or other characteristics/attributes that are due to that locality or origin. In
order to function as a GI, a sign must identify a product as originating in a given place.

2. These special characteristics, qualities or reputation may be due to various factors, for example –

● natural factors such as raw materials, soil, regional climate, temperature, moisture etc;

● or the method of manufacture, preparation of the product such as traditional production methods;

● or other human factors such as concentration of similar businesses in the same region, specialization in
the production or preparation of certain products and the maintaining of certain quality standards.

3. In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of
origin. Generally, an important requirement under the definition, is that the good identified by the GI needs to
have a link to the geographical origin. Since the qualities depend on the geographical place of production,
there is a clear link between the product and its original place of production. This link may be determined by
a given quality, reputation or other characteristic essentially due to the geographical origin.

4. The connection between the goods and place becomes so famous that any reference to the place reminds the
goods being produced there and vice versa.

Sections 8 to 10 lay down the conditions for registration of a geographical indication in India.

Section 8 provides for Registration to be in respect of particular goods and area.-

1. A geographical indication may be registered in respect of any or all of the goods, comprised in such class of
goods as may be classified by a region or locality in that territory, as the case may be the Registrar and in
respect of a definite territory of a country, or

2. The Registrar shall classify the goods under sub-section (1), as far as may be, in accordance with the
International classification of goods for the purposes of registration of geographical indications.

3. The Registrar may publish in the prescribed manner an alphabetical index of classification of goods
referred to in sub-section (2).

4. Any question arising as to the class within which any goods fall or the definite area as referred to in sub-
section (1) in respect of which the geographical indication is to be registered or where any goods are not
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specified in the alphabetical index of goods published under sub-section (3) shall be determined by the
Registrar whose decision in the matter shall be final.

Section 9 lays down prohibition of registration of certain geographical indications.-

A sign must qualify as a geographical indication under the applicable law and not be subject to any obstacles
to registering a geographical indication (GI).

A geographical indication-

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

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

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

d. which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of
the citizens of India; or

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

f. which are determined to be generic names or indications of goods and are, therefore, not or ceased to be
protected in their country of origin, or which have fallen into disuse in that country; or

g. which, although literally true as to the territory, region or locality in which the goods originate, but falsely
represent to the persons that the goods originate in another territory, region or locality, as the case may be,

-- shall not be registered as a geographical indication.

Explanation 1.- For the purposes of this section, "generic names or indications'', in relation to goods, means
the name of a goods which, although relates to the place or the region where the goods was originally
produced or manufactured, has lost its original meaning and has become the common name of such goods and
serves as a designation for or indication of the kind, nature, type or other property or characteristic of the
goods.

Explanation 2.- In determining whether the name has become generic, account shall be taken of all factors
including the existing situation in the region or place in which the name originates and the area of consumption
of the goods.

Section 10 provides for Registration of homonymous geographical indications.-

pg. 35
Subject to the provisions of section 7, a homonymous geographical indication may be registered under this
Act, if the Registrar is satisfied, after considering the practical conditions under which he homonymous
indication in question shall be differentiated from other homonymous indications and the need to ensure
equitable treatment of the producers of the goods concerned, that the consumers of such goods registration.

Who can apply for registration?

Section 11(1) of Geographical Indications of Goods (Registration and Protection) Act, 1999 provides that An
application for registration of the Geographical Indication can be made by an association of persons or
producers or any organisations or authority established by or under any law for time being in force, who must
be representing the interest of the producers of the concerned goods; and desirous of registering a geographical
indication in relation to such goods.

So any association of persons, producers, organisation or authority established by or under the law can
apply: The applicant must represent the interest of the producers.

Any person, manufacturer, organization or authority established by or under the law may apply for the
registration of Geographical Indication of their product fulfilling the following conditions:

1. The respective Applicant should represent the interest of producers.

2. The Application should be in the prescribed form in writing, which mentions each and every detail
about the product.
3. The Application should be addressed to the Registrar of Geographical Indicators along with the
prescribed fee for the registration of the product.

Who is an Authorised User:

An authorised user is a person who has been registered as such under Section 17 of the Geographical
Indications of Goods (Registration and Protection) Act,1999 act. A producer of the goods in respect of which
geographical indication has been registered is eligible to register himself as an authorised user.

In order to register oneself as an authorised user, the producer needs to provide a statement and other
documents of facts which would allow the registrar to ascertain the veracity of their claims. The registration of
an authorised user is valid for 10 years, or till the date on which the registration of the related geographical
indication expires.

● A producer of goods can apply for registration as an authorised user

● It must be in respect of a registered geographical indication

pg. 36
 ● He should apply in writing in the prescribed form alongwith prescribed fee

Duration of GI:

In India a GI may initially be registered for a period of 10 years, and it can be renewed from time to time for
further periods of 10 years on payment of renewal fees.

pg. 37