INTELLECT

UAL
PROPERTY
RIGHTS
ADITI SINGH KAVIA
 Patent Copyright Trademark
TRADEMARKS

Geographic
Industrial Trade
al
Design secrets
Indications
Semi
conductor Plant
layout Variety
design
IP LAWS
The
The
Geographic
Semi-Condu
al
ctor
The Trade The Indications
The Patents The Designs Integrated
Marks Act, Copyrights of Goods
Act, 1970 Act, 2000 Circuit
1999 Act, 1957 (Registratio
Layout
n&
Design Act,
Protection)
2000
Act, 1999
TRADEMARKS
Protection
of Goodwill

10 Years
Term
Can be
renewed Identify Goods
& Services of
Companies &
Individuals
Name, Word,
Sounds, Numerals,
Color shades,
Symbols or
Drawings etc.
TRADEMARK CRITERIA
Graphical
representation
Distinctivenes
s
Trade
connection
TYPES OF TRADEMARKS

Non
Convention Goods Service Collective Certificatio Domain
al Convention marks marks marks n marks names
al
TYPES
Word
symbol
Trade dress
Colour
Device
Signature
Shape
Numeral
TYPES
CERTIFICATION AND
COLLECTIVE MARKS
HOW TO INDICATE A
TRADEMARK
• The ™ sign is used when a trademark has been filed and the registration under process
• Once registered, ® symbol can be used which indicates that the brand name is
registered now
• a mark as “any device, brand, heading, label, ticket, name, signature, word, letter, numeral,
shape of goods, packaging, or combination of colors or any combination thereof

Trademark application
has been filed Registered Mark
CONVENTIONAL
TRADEMARKS
UNCONVENTIONAL
TRADEMARKS

Sound Smell
Taste marks
marks marks
SOUND TRADEMARKS

Metro-Gold
wyn-Mayer Raymond Nokia
Renault Netflix “Ta
Lion Airtel Musical Guitar
“Passion for dum” heard McDonald’s
ICICI Bank Corporation Ringtone sequence of sound heard
Life” heard at the Five note
Corporate The lion’s composed Raymond: after
in car beginning “I’m Lovin’
jingle tune roar at the by A.R. The switching
commercial with the it” jingle
beginning Rehman Complete on a Nokia
s Netflix logo
of an MGM Man phone
film
MOTION MARK
SMELL MARKS
DURATION

10 years Renewal
RIGHTS
Exclusive right
Reproductive right
Licensing and assignment
Protection against infringement
Distribution and Sale
Activity: Find the famous Trademarks?
ACTIVITY: FIND THE FAMOUS TRADEMARKS?
COPYRIGHT

Expression Registration
Of Idea not mandatory

Bundle of
Rights
WORKS COVERED UNDER COPYRIGHTS

Literary including Artistic – Drawing,

Software – Books, Essay, Painting, Logo, Map,
Compilations, Computer Chart, Photographs,
Programs Work of Architecture

Dramatic – Screenplay, Musical – Musical

Drama Notations

Cinematograph Films –
Sound Recording – Visual Recording which
Compact Disc includes sound
recording
CRITERIA
Originali
ty

Creativit
y
DURATION
Literary, Dramatic, Musical, and Artistic Works- lifetime of the author plus 60 years from the
year of the author's death.

Cinematograph Films- 60 years from the date of publication

Sound recording - 60 years from the date of publication

Broadcast - 25 years from the year of first broadcast

Government works - government have a copyright duration of 60 years from the year of
publication.
ECONOMIC RIGHTS
reproduce the work in any form, such as print, sound ,
video, etc

use the work for a public performance, such as a play or a

musical work;

make copies/recordings of the work, such as via compact

discs, cassettes, etc.;

broadcast it in various forms; or

translate the same to other languages

MORAL RIGHTS

Right to Right to Non

paternity integrity Waivable
PATENTS
Exclusive Rights
granted to the
inventor

Territorial 20 Years term

Right

Novel
Inventive
Industrial Civil Remedy
applicability
CRITERIA
Novelty

Non
Inventive Step
Obviousness

Industrial
application
SUBJECT MATTER
Product
Patent
Process
Patent
EXCEPTIONS
Frivolous

Against Public Morality or Public order

discovery of a scientific principle

the formulation of an abstract theory

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

substance obtained by a mere admixture resulting only in the aggregation of the

properties of the components

a method of agriculture or horticulture;

EXCEPTIONS
process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic, or other treatment
of human beings
plants and animals in whole or any part thereof other than microorganisms

mathematical or business method or a computer program per se or algorithms;

a literary, dramatic, musical, or artistic work or any cinematographic works and sound recording. ;

a mere scheme or rule or method of performing mental act or method of playing game;

a presentation of information;

topography of integrated circuits;

traditional knowledge
DURATION

20 years Renewal
RIGHTS
Exclusive Right

Right to issue a license

Right to sue for infringement

Right to sale

Right to assignement
Patents
DESIGN

Design should be
applied or applicable
to any article by an
a industrial process

It is registered for
10 years (can extend
by 5 years)

Design is a shape,
pattern, arrangement
of lines or color
combination which is
ornamental in nature
that is applied to any
article
DEFINITION
Includes 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 mode or principle of construction or anything
which is in substance a mere mechanical device”
CRITERIA

Not against
Prior Not disclosed
Originality Unique public order
Publication to the public
or morality
EXCEPTIONS
principle of construction or anything which is in substance
a mere mechanical device as they are protected by Patents

does not include the Trademark

property mark’ as defined in section 479 of the Indian

Penal Code, 1860
artistic work as defined in clause (c) of section 2 of the
Copyright Act, 1957.
DURATION
10 years

Extensio
n 5 Years
GEOGRAPHICAL INDICATION

Mysore Silk

GI is a sign used on
products that have a
specific
geographical origin and
Nagpur Orange
possess qualities or a
reputation that are due to
that origin

Tuscany Olives

Darjeeling Tea

THE GEOGRAPHICAL INDICATIONS OF GOODS

(REGISTRATION & PROTECTION) ACT, 1999
MEANING
"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 good
is essentially attributed 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 on
locality as the case may be
KINDS

Manufacturing Natural goods Agricultural goods

goods
DURATION

Protection for 10 Renewal

years
Right to RIGHTS
sue for
infringement

Right to use, sale and

distribute
PARTIES

AUTHORIZED PRODUCERS
USERS
· Basmati rice

· Darjeeling tea
EXAMPLES
· Banaras Brocades and Sarees

· Coorg orange

· Phulkari

· Kolhapuri chappals

· Kangivaram sarees

· Agra Petha
 PLANT
Objectives VARIETIES
PROTECTION
ACT, 2001
provides exclusive rights to both
farmers and commercial plant
breeders of the registered variety.

It stimulates investment,
accelerates agricultural
development

incentive for research and

development of various seed
varieties
MEANING
“breeder” means a person or group of persons
or a farmer or group of farmers or any institution
which has bred, evolved or developed any
variety

“farmer” means any person who—

(i) cultivates crops by cultivating the land himself

(ii) cultivates crops by directly supervising the

cultivation of land through any other person

(iii) conserves and preserves, severally or

jointly, with any person any wild species or
traditional varieties or adds value to such wild
species or traditional varieties through selection
and identification of their useful properties;
TYPES OF VARIETY

Essentially Extant variety Farmers new variety

derived variety
variety
 Bread
Black gram Chickpea
wheat
EXAMPLES

Kidney
Field pea Green gram
bean

Lentil,
Rice,
Maize Pearl Pigeon pea
Sorghum
millet
CRITERIA

NOVELTY DISTINCTIVENE UNIFORMITY STABILITY

SS
 PROTECTION
OF PLANT
VARIETIES AND
Chairperson + 15
FARMERS’
members RIGHTS
AUTHORITY

Meetings

Appointment by central
government
FUNCTIONS
(a) the registration of extant varieties subject to such terms and conditions and in the
manner as may be prescribed

(b) developing characterisation and documentation of varieties registered under this

Act

(c) documentation, indexing and cataloguing of farmers’ varieties

(d) compulsory cataloguing facilities for all varieties of plants

(e) ensuring that seeds of the varieties registered under this Act are available to the
farmers and providing for compulsory licensing of such varieties if the breeder of
such varieties
1.Breeders’ Rights : Breeders will have exclusive rights to produce, sell, market,
distribute, import or export the protected variety. Breeder can appoint agent/
licensee and may exercise for civil remedy in case of infringement of rights.

2.Researchers’ Rights : Researcher can use any of the registered variety under
the Act for conducting experiment or research. This includes the use of a RIGHTS
variety as an initial source of variety for the purpose of developing another
variety but repeated use needs prior permission of the registered breeder.
FARMER’S RIGHTS
• registration and protection
• A farmer can save, use, sow, re-sow, exchange, share or sell his farm produce
including seed of a variety protected
• Farmers are eligible for recognition and rewards
• There is also a provision for compensation to the farmers for non-performance of
variety
1.It is compensation to village or local communities for their significant
contribution in the evolution of variety which has been registered under the Act.
COMMUNITY
2.Any person/group of persons/governmental or non- governmental organization,
on behalf of any village/local community in India, can file in any notified centre,
RIGHTS
claim for contribution in the evolution of any variety.
Trees and vines - 18 years.

DURATION

Other crops - 15 years.

Extant varieties - 15 years from

the date of notification of that
variety by the Central
Government under Seed Act,
1966.
 OR
INTEGRATED
CIRCUITS AND
LAYOUT
DESIGN ACT,
2000
“layout-design” means a layout of transistors and other circuitry elements and
includes lead wires connecting such elements and expressed in any manner in a
semiconductor integrated circuit

semiconductor integrated circuit” means a product having transistors and other

circuitry elements which are inseparably formed on a semiconductor material or
an insulating material or inside the semiconductor material and designed to
perform an electronic circuitry function
CONDITIONS
a) original

(b) which has not been commercially exploited

anywhere in India or in a convention country

(c) distinctive

(d) which is nherently capable of being

distinguishable from any other registered layout
design,
PARTIES

Proprieto Register
Assignee
r ed User
DURATION
10 YEARS
RIGHTS

RIGHT TO RIGHT TO SUE

COMMERCIALLY USE
INFRINGEMENT
1 2
Using original layout Buying, selling, importing,
design without distributing for
authorization commercial purpose
trade secret’ in Black’s Law Dictionary is a formula,
process, device or other business information that is TRADE
kept confidential to maintain an advantage over
competitors. The information includes a formula, SECRET
pattern, compilation, programme, device, method, DEFINITION
technique or process ‘

Section 27 of the Contract Act - Law that bound the

parties not to disclose information contrary to the
terms of the contract between the parties i.e., Non
Disclosure Agreements
TRADE SECRET
it is secret in the sense that it is not, as a body or in the precise configuration and
assembly of its components, generally known among or readily accessible to
persons within the circles that normally deal with the kind of information in
question;

it has commercial value because it is secret

it has been subject to reasonable steps under the circumstances, by the person
lawfully in control of the information, to keep it secret.
 NOT
PROTECTED
Know how of employees

Information in public
domain
Coca cola formula

KFC's Original Recipe: EXAMPLES

Google's Search
Algorithm:

IBM's Deep Blue Chess

Algorithm:

Twinkies' Filling Recipe:

TRADITIONAL KNOWLEDGE
The definition of traditional knowledge used by the World Intellectual Property Office
(WIPO) includes indigenous knowledge relating to categories such as agricultural
knowledge, medicinal knowledge, biodiversity related knowledge, and expressions
of folklore in the form of music, dance, song, handicraft, designs, stories and artwork.
OBJECTIVES
respect, preserve and maintain knowledge,

promote their wider application with the approval and

involvement of the holders of such knowledge,

Promotion of community rights

KINDS OF PROTECTION

Positive Defensive
protection protection
TKDL
This particular aspect of documenting formulations in the Ayurvedic
system of medicine in India in the shape of Traditional Knowledge Digital
Library (TKDL)

CSIR with Ministry of Ayush , 2001, unani, siddha, yoga, sow rigpa

transcription of 35,000 formulations used in Ayurvedic system of

medicines.
THEORIES
Personalit Labour Utilitarian
y theory theory Theory

social
planning
 LABOUR
In 17th Century, John Locke's labor theory of THEORY
property, this theory argues that individuals
have a property right in the fruits of their labor. LOCKEAN
THEORY

In the context of intellectual property, it posits

that creators have a right to control the use of
their intellectual creations because of the labor
and effort invested in producing them.

"Second Treatise of Government."

Jeremy Bentham

UTILITARIAN
THEORY
The exclusive rights provided by IP
laws incentivize creators by allowing
them to control the use of their
creations, which may lead to
economic and societal benefits.

The ultimate goal is to promote

progress and benefit society as a
whole by encouraging the
dissemination of knowledge and the
development of new technologies.
PERSONALITY THEORY
Immanuel Kant and Georg Wilhelm Friedrich Hegel.

This theory focuses on the connection between creative works and

the personal expression of the creator. It sees intellectual property as
an extension of an individual's personality and natural rights.

individual creativity and expression could be connected to the idea

that creative works are an extension of an individual's autonomy and
personal expression.
Non recognition of
specific rights
CRITICISM
Too abstract

Impossibility of
inheritance
non applicability
Fisher propounded this theory, focuses on systematically
organizing and structuring societal resources to address
social issues, promote equity, and achieve collective goals.
SOCIAL
PLANNING
According to it, property must be protected in order to create
THEORY
a rich and robust cultural environment. It is similar to the
utilitarian theory as they both place the society at its base.
They both differ as social planning theory doesn’t concern
itself with economic welfare per se; it is only concerned with
the promotion of culture.
basic aim of intellectual property right should be to discharge
welfare and interests of the community at large .

integral part of social structure and it will ultimately promote

the standards of the society, .
Individualistic

CRITICISM
against social justice

IPR as private property

Limited utility
COPYRIGHT HISTORY
HISTORY OF COPYRIGHT
The invention of the printing press by Johannes Gutenberg in the mid-15th century
revolutionized the reproduction of books

In England, the Stationers' Company was established in 1557, and it was granted a
monopoly over the publication of books.

The Stationers' Company Charter of 1557 was an early attempt to regulate the
printing industry and control the publication of books.

first modern copyright law, the Statute of Anne was enacted in England in 1710., 21
years protection
The internationalization of copyright began with the Berne
Convention, established in 1886 BERNE
CONVENTION
Berne Convention introduced several key principles,
including the automatic protection of copyright upon the
(1886)
creation of a work, the minimum duration of copyright
protection, death plus 50 years
primary objective of the Berne Convention, as stated in its
preamble, is to protect the rights of authors in their
literary and artistic works.

fundamental principle of the Convention is "national

treatment," ensuring that individuals entitled to
protection enjoy the advantages granted by the host
country's law to its nationals.
Automatic registration and moral rights
UK doctrine SWEAT OF
THE BROW
The Sweat of the Brow theory suggests that THEORY
copyright protection should be granted based on
the effort, skill, and labor expended in the creation
of a work, regardless of the level of creativity
involved.

It focuses on the labor and resources invested in

creating a work rather than the degree of
creativity.

Eg- telephone directory, compilations

UNIVERSITY OF LONDON PRESS V. UNIVERSITY
TUTORIAL PRESS 1916 2 CH 601

•The Court held that the Copyright Act does not require that expression be in an
original or novel form. It does, however, require that the work not be copied from
another work. It must originate from the author. The question papers are original
within the meaning of copyright laws as they were originated from the authors. The
court held that merely because similar questions have been asked by other
examiners, the plaintiff shall not be denied copyright.
USA doctrine
MODICUM OF
CREATIVITY
The doctrine of “sweat of the brow”
provides copyright protection on
basis of the labour, skill and
investment of capital put in by the
creator instead of the originality.
US Supreme Court totally negated
this doctrine and held that in order
to be original a work must not only
have been the product of
independent creation, but it must
also exhibit a “modicum of
creativity”or minimum amount or
creativity to constitute original
work.
 Feist Publication Inc. v. Rural Telephone Service 499 U.S.
340, 342 (1991)

court held that the facts like names, addresses etc are not
copyrightable, but compilations of facts are copyrightable. This is
majorly owing to the unique way of expression by way
of arrangement and if it possesses at least some minimal degree
of creativity, it will be copyrightable.

The Court held that Rural’s directory displayed a lack of requisite

standards for copyright protection as it was just a compilation of
data without any minimum creativity, which was a requirement for
copyright protection.
India strongly followed the doctrine
of ‘sweat of the brow’ for a
considerably long time. Later,
shifted to doctrine of modicum of INDIAN
creativity
POSITION

In Eastern Book Company v. D.B.

Modak,

In this case the Supreme Court

discarded the ‘Sweat of the Brow’
doctrine and shifted to a ‘Modicum
of creativity’approach as followed in
the US.
 Eastern Book Company and Ors. v. D.B. Modak and Anr.
(2008) 1 SCC 1

The appellants were engaged in the printing and publishing of legal books, including the
renowned "Supreme Court Cases" law report. The original judgments were edited by the
appellant's assistant staff to enhance user-friendliness through additions like
cross-references, standardization, formatting, paragraph numbering, and other inputs.

Additionally, the appellants prepared headnotes consisting of short notes with catch/lead
words in bold and long notes comprising brief discussions of facts and relevant extracts
from court judgments and orders.
The SCC reports were not a mere copy of the
judicial decisions. There were additions made to it in
the form of headnotes, cross references, divisions of
paragraphs etc. Therefore if the respondents had
only copied the judicial decisions, it would not
amount to infringement.

However, they had copied the cross references,

headnotes and other additions as well. Therefore it
was a clear violation of the plaintiff’s copyright. The
Court held that mere application of skill, labor, and
judgment is not sufficient for copyright protection
Merger Doctrine

The Merger Doctrine holds that when the idea and its
expression are so intertwined or inseparable that
protecting the expression would effectively grant a
monopoly over the underlying idea, copyright
protection may be denied

aims to prevent monopolies over fundamental ideas,

ensuring that others can freely express the same ideas
without infringing on copyright.
OXFORD V. NARENDRA
PUBLISHING HOUSE (2005)
the Supreme Court of India held that mathematical questions are expressions of laws
of nature. Since language is a limited medium, such laws of nature can be expressed
only in a few ways. Hence, extension of copyright protection for questions would
deny access to ideas that they encompass. For these reasons, the Court held that
copyright could not be extended to the questions.

Applying this doctrine courts have refused to protect (through copyright) the
expression of an idea, which can be expressed only in a very limited manner,
because doing so would confer monopoly on the idea itself.
The Idea-Expression Dichotomy is a
fundamental principle in copyright law
IDEA/EXPRES
that distinguishes between the idea
(concept or theme) behind a work and
SION
the expression (specific way the idea is
manifested) of that idea.
DICHOTOMY

Copyright protects the expression of

ideas but not the ideas themselves.
R G ANAND V. M/S DELUX
FILMS AND ORS. (1978)
plaintiff, who was a part-time playwright and producer of stage plays alleged that
the defendant, who was a film-maker had copied substantial portions from his play
and had remade it into a film.

there can be no copyright in an idea, subject-matter, themes, plots or historical or

legendry facts and violation of the copyright in such cases is confined to the form,
manner and arrangement and expression of the idea by the author of the
copyrighted work.
One may also contemplate instances where the
expression of an idea cannot be made without the use
of certain elements, such that the idea cannot exist
without those elements or form of expression. The SCENES A
Courts consider these essential elements of FAIRE
features as non-copyrightable since protecting
these will effectively lead to the protection of the
idea. Such essential elements are referred to as Scenes
a Faire.

a gun shot in an action scene/sequence.

Soldiers marching in a movie

The word ‘original’ does not mean that the work must
be the expression of original and inventive thought. It
need not be novel, new or unique in order to constitute
originality.

Originality with respect to the expression of the

ORIGINALITY
thought does not require novelty of the expression.

An original work is one which is originated by the

author and is not copied from any other work.
SUBJECT MATTER: SECTION 13

SEC 2 (H) SEC 2(O) SEC 2 (C SEC 2 (P) SEC 2(F SEC 2(XX)
DRAMATIC LITERARY )ARTISTIC MUSICAL WORK )CINEMATOGRA SOUND
WORK WORK WORK PH WORK RECORDING
COMPUTER
PROGRAMME
Section 2 (ffc), A “Computer
Programme” is a set of instructions
communicated using words, codes,
diagrams, or any other method,
including machine-readable formats.
These instructions have the capability to
instruct a computer to perform a
particular task or accomplish a specific
result
Infringement COPYRIGHT
SHALL NOT
SUBSIST
Method of construction

Work not located in

India – work of
architecture
to reproduce the work in any material form including the
storing of it in any medium by electronic means; SECTION 14:
to issue copies of the work to the public not being copies ECONOMIC
already in circulation;
RIGHTS
to perform the work in public
in the case of a literary, dramatic or
musical work,
communicate it to the public

to make any cinematograph film or sound recording in

respect of the work;
to make any translation of the work;

to make any adaptation of the work;

to do, in relation to a translation or an adaptation of the

work,
(i) to do any of the acts
specified in clause (a); SECTION 14
in the case of a computer
programme,—

to sell or give on
commercial rental or offer
for sale or for commercial
rental any copy of the
computer programme:
to reproduce the work in any material form
including depiction in three dimensions of a two
dimensional work or in two dimensions of a three
dimensional work;
to communicate the work to the public;
SECTION 14
in the case of an artistic work,—

to issue copies of the work to the public not being

copies already in circulation;

to include the work in any cinematograph film;

to make any adaptation of the work;

(i) to make a copy of the film SECTION 14-
including a photograph of any image
forming part thereof;
CINEMATOG
RAPH FILMS
in the case of a cinematograph
film,—
(ii) to sell or give on hire or offer for
sale or hire, any copy of the film,
regardless of whether such copy has
been sold or given on hire on earlier
occasions;

(iii) to communicate the film to the

public;
(i) to make any other sound
recording embodying it;
SECTION 14
Sound recording

(ii) to sell or give on hire, or offer for

sale or hire, any copy of the sound
recording, regardless of whether
such copy has been sold or given on
hire on earlier occasions;

(iii) to communicate the sound

recording to the public.
Ladbroke Ltd v William Hill Ltd

Held: that reproduction means copying, and does not

include cases where an author or compiler produces a
substantially similar result by independent work without
copying. It must also be noted that to constitute
reproduction, copying need not be in toto; even
substantial reproduction will amount to infringement.
Doctrine of Exhaustion implies that once a valid
transaction of sale takes place then the owner of the DOCTRINE
intellectual property in question cannot control or
prevent the further sale of the goods bearing the said OF
intellectual property. EXHAUSTION
Article 6 of the Trade Related Aspects of Intellectual
Property Rights (TRIPS)
TYPES

NATIONAL INTERNATIONAL REGIONAL

EXHAUSTION EXHAUSTION EXHAUSTION
The Plaintiffs alleged Defendants for making available JOHN WILEY &
their books for sale at low prices in the countries for SONS INC. & ORS.
which the books were not meant for like USA, UK and VS PRABHAT
others. Hence, the same amounted to infringement of CHANDER KUMAR
their copyright under Section 51 of the Copyright Act, JAIN & ORS.-
1957.

The Hon’ble Delhi High Court while ruling in favor of

the Plaintiffs, denied to recognize the principle of
international exhaustion of copyright in India and
noted that there was no express provision for
international exhaustion is absent under the Indian law,
hence it would be appropriate to confine the
applicability of the same to regional exhaustion.
They are the author’s or creator’s
special right which includes the MORAL
right to paternity and the right to RIGHTS:
integrity.
Right to authorship
SECTION 57

Right against distortion

Moral rights continues even after

assignment
Amarnath Sehgal filed a petition under Section 57 of AMARNATH
the Indian Copyright Act before the Delhi High Court SEHGAL V.
seeking for enforcement of his moral rights. He sought
for an apology from the defendants, a permanent UNION OF
injunction on the defendants to restrain them from INDIA
distorting, mutilating or damaging the plaintiff's mural.

PradeepNandrajog J. ruled: “mural whatever be its

form today is too precious to be reduced to scrap and
languish in the warehouse of the Government of India.
It is only Mr. Sehgal who has the right to recreate his
work and therefore has the right to receive the broken
down mural.
 BHANDARI V.
KALA VIKAS
Apart from the economic rights, Section 57 confers
additional rights i.e the moral rights on the author of a
PICTURES PVT.
literary work as compared to the owner of a general LTD. AND ANR.
copyright. Since the remedies of a restraint order or (1987)
damages can be claimed even after the assignment
(either wholly or partially) of the copyright, the Section
over-rides the contract of assignment. An assignee of a
copyright cannot claim any rights or immunities based on
the contract which are inconsistent with Section 57.
AUTHORSHIP AND
OWNERSHIP: SECTION 2(D)
1. in case of literary or dramatic work, the author of the work

2. in case of musical work, the composer

3. in case of an artistic work other than a photograph, the artist

4. in case of cinematographic film, the producer

5. in case of sound recording, the producer

6. in case of literary, dramatic, musical or artistic work which is computer generated, the person who causes the
work to be created.
Contract of service – employer is the owner
AUTHORSHIP
Commissioned work
AND
OWNERSHIP
Contract for service

Assignment

Governmental work

Cinematograph and sound recording

Facts :
V.T THOMAS V.
Tom was a cartoonist and has made cartoons for manorma
during his tenure in the company. Later, he left the MALAYALA
company. the question before the court was after MANORAMA
termination of employment of employee (Tom) from
Manorama regarding the future work of Tom manorama can
claim authorship
Held: it was held that in the case of termination of the
employment, the employee is entitled to the ownership of
copyright in the works created subsequently and the
former employer has no copyright over the subsequent
work so created.
Court also held that tom was making these cartoons even
before the employment . So termination of his employment
cant restrict him to draw cartoons in the future.
 UNIVERSITY OF
Facts: the examiner was free to prepare his questions at his
LONDON PRESS
convenience so long as they were ready by the appointment for the LTD VS.
examinations, and it was left to his skill the syllabus, the book work, and
the standard of knowledge to be expected at the matriculation UNIVERSITY
examination, and in view of this aspect of matter, the examiner was not
acting under the contract of service but contract for service. TUTORIAL
Held: court held that it is a contract for service and not contract of PRESS LTD
service
Factors to be looked into
Degree of control
Whether integral part of the employment
Degree of independence
Course of employment
Nature of relationship
Financial arrangement between the parties
IPRS V.
EASTERN
INDIA
MOTION
PICTURES
Facts: The question before the court was
whether the producer of a cinematography
film can defeat the rights of composer of
music or lyrist and the court held that
u/s17(b) there is automatic transfer of all
rights of the author.

Held: copyright in a cinematographic film or

a sound recording shall not affect the
separate copyright in any work with respect
to composers, artists, lyricist

cinematography film can be made under

contract for employment in such cases
copyright of composers and lyrists still
remains with them.

producer cannot defeat right of the

composer of music or lyrist.
JOINT AUTHORSHIP –
SECTION 2(Z)
Donoghue v. allied Newspapers ltd

In this case Mr. Felstead a freelance journalist, worked on behalf of Mr. Donoghue entered into a contract
with the ‘News of the World’ newspaper for the sum of $2,000.

Mr. Donoghue did not write any article, he used to communicate the ideas to Felstead who then wrote the
article based on the conversation.

After the series of articles appeared Sunday after Sunday then Mr. Felstead entered into the agreement
with another newspaper, ‘Guidelines and Ideas’ to publish an article called ‘My Racing secrets by Steve
Donoghue’ after adding some material without taking the permission of Donoghue.

Held- court further observed if the idea, however brilliant and however clever it may be, is nothing more
than an idea and is not put into any form of words or any form of expression and there is no such
copyright in all these ideas.
Assignment is transfer of all
rights or some rights in the
copyright work to the third
party by the copyright
owner.
ASSIGNMENT
Section 18

two parties : assignor and

assignee

Owner of exiting or future

work ?
ASSIGNMENT DEED: SECTION
19
Copyright Assignment must be in writing and signed by the assignor or by his duly authorized agent.

Duration - duration of assignment should be specified.

Territory- agreement deed may specify the territorial extent of such assignment. If silent, it shall be presumed
to extend within India.

Termination- Where the assignee fails to exercise his rights within one year from the date of assignment, the
assignment in respect of such right shall be deemed to have lapsed
Contrary to terms – void
SECTION 19A- DISPUTE
REDRESSAL

Reasonable
Commercial opportunity
6 months
Board and conducts
enquiry
 DURATION OF
if the assignment deed is THE
silent about the duration, it ASSIGNMENT
shall be deemed to be 5
years from the date of
assignment

5 years
 SAREGAMA
INDIA V.
SURESH
JINDAL
Facts: plaintiff entered into three separate agreement for movies such as
Rajnigandha , satranj ka khiladi and katha with the producers to assign the
AIR 2006 CAL
record, cassette and sound recording. He claimed respondent exercising
sound recording rights are violative of his rights
340
Issue : whether plaintiff is the sole owner of the sound recording rights as
mentioned in the agreement entered with the producers?

Held : It was held that owner or prospective owner can assign either wholly
or partially for whole of the copyright or a part of it. once an assignment is
done the assignee is treated as the owner of the work
INDIAN PERFORMING RIGHTS SOCIETY V.
EASTERN MOTION PICTURES ASSOCIATIONS

IPRS claimed that it is entitled to a royalty in case the literary work used in
cinematograph films is broadcasted on radio stations

Once an agreement is entered into between the production house and the composer
for incorporating the composer’s composition; the composer loses his rights over the
composition and the production house becomes the owner of the copyright. The
agreement can be a present as well as a future one. In either case, IPRS cannot claim
royalty as it has absolutely no rights over it. However, it is different in case of lack of
any agreement.
Economic rights
RIGHTS OF
THE
Assignor is entitled to economic ASSIGNEE
rights as mentioned under the
assignment deed
Moral rights

moral rights are non assignable

Moral rights vests with the author

even after assignment
Transfer of title
DIFFERENCES
Right to sue for Licensing and assignment

infringement
Right to reassign

proprietary right
Facts: & Company Publishers (P) Ltd. Pune, a leading
publisher of books; filed a suit that none of the defendants DESHMUSK PVT
has any right to print or publish the same during the LTD V. AVINASH
subsistence of the copyright in its favour with regard to VISHNU (2006)
publishing rights of the books
32 PTC 358
Held: Assignment only valid when is it in writing and duly
signed by assignor or his authorized agent and assignee
Court also discussed the difference between license and
assignment
In assignment, assignee become the owner whereas in
license , licensee gets the right to exercise particular rights
Assignment conveys copyright whereas license only grants
a interest in the copyright to do something
TYPES OF LICENSING-
SECTION 30-32

VOLUNTARY COMPULSORY STATUTORY

LICENSING LICENSING LICENSING
SECTION 30- VOLUNTARY
LICENSE
The owner of any existing or future work may grant any interest to
another person by way of licensing, made in writing by him or his
duly assigned agent.

If the license related to future work then the interest is deemed to

be granted only when the work comes into existence.
SECTION 31- COMPULSORY
LICENSE
The section
states that if refused to allow
the owner of republish republication
the rights has

allow
allow
communication
performance
to the public
SECTION 31
The Appellate Board, after giving reasonable opportunity of being
heard to the owner, may hold an inquiry.

If the Board is satisfied that the grounds put by the owner are not
reasonable then it shall direct the Registrar of Copyrights to grant
the license to the complainant upon payment of such fees to the
owner.
Section Section 31 A deals with compulsory license
in unpublished or published works
SECTION 31
Compulsory licensing and statutory
licensing

Section Section 31 B deals with compulsory license

for benefit of disabled

Section 31 C deals with statutory licensing

Section to make cover versions
work is unpublished, or if it has been published but
withheld from the public in India, and the author is
deceased, unknown, cannot be traced,
any person can apply to the Appellate Board for a
license to publish or communicate the work to the
public, including translations. SECTION 31 A
Advertisement in newspaper Compulsory licensing for published
or unpublished work when author
not found, dead or cannot be traced.

prescribed form and accompanied by a copy of the

advertisement issued as per the requirement

holding such inquiry, direct the Registrar of Copyrights

to grant to the applicant a licence to publish the work
or a translation thereof
national interest
Any individual or entity working for the benefit of persons
with disabilities on a profit basis or for business purposes
can apply to the commercial court for a compulsory
license to publish a copyrighted work.

Appellate Board may conduct an inquiry , complete in two

months
SECTION 31B
Compulsory Licensing for disabled
people

ensure the application is made in good faith.

reasonable opportunity to be heard.

extend the period of the compulsory license and allow for

the issue of more copies
Making cover version of a literary, dramatic, or musical 31C.
work in the form of a sound recording, provided STATUTORY
previous sound recordings of the work have been made LICENCE FOR
with the consent of the copyright owner.
COVER
person making the sound recordings must give prior VERSIONS.—
notice of their intention to do so, provide copies of
covers or labels in advance, and pay royalties to the
copyright owner at a rate determined by the
Commercial Courtmust not be sold in packaging that
Sound recordings
could mislead the public about their identity.

recordings cannot be made until five calendar years

after the first recording of the work.

No altercation without permission

Broadcasting organizations can transmit published
literary or musical works and sound recordings to the
public through broadcast or performance Section 31 D- Statutory
License of of literary
Broadcasting organizations must provide prior notice of and musical works and
their intention to broadcast, including details of duration sound recording
and territorial coverage, and pay royalties to the copyright
owners at rates determined by the Commercial Court.
Names of Authors and principal performers of the work
must be announced during the broadcast, except in the
case of performance by the broadcasting organization.

No alterations without permission

Record keeping
apply to the Commercial Court for a license to produce and publish a
translation of a literary or dramatic work in any language.

applying for a translation license for non-Indian works, for purposes

like teaching, scholarship, or research, after a shorter period of three
years from the first publication. If the translation is in a language not
commonly used in developed countries, the application can be made
SECTION 32
after just one year. Licence to produce and publish
translations.

prescribed form and should include the proposed retail price of the
translated work.

Payment of royalties

restriction on exporting copies of the translation outside India, and

every copy of the translation must contain a notice stating that it's
only available for distribution within India.
TERMINATION OF LICENSE

That the License In contravention

licensee has obtained by of any of the
failed to fraud or terms and
republish the misrepresentati conditions of
work on license deed.
SUPER
CASSETTE V.
BATHLA
CASETTE
(2003)
Delhi HC observed Version
recording would really be sound
recording which are being inspired
from the original melody , a distinct
interpretation both in rhythm,
presentation, orchestral
arrangement.
INDIA LTD V. SUPER CASSETTE
INDUSTRIES LTD
Facts: copyright owner is communicating the work through radio channels but
refused to broadcast it

Issue: whether the copyright board has jurisdiction to direct the copyright owner to
issue compulsory license to broadcast such work when such work is already available
through radio channels

Held:

Sound recording stands on a different footing than literary, dramatic or musical work
and there is no statutory requirement which says license can be granted when the
work is withheld from the public. It was held hat compulsory license can be granted
even when the work is not withheld from the public
 PHONOGRAPHIC
Issue: question was that whether the FM radio industry PERFORMANCE
could claim compulsory licensing on music owned by LTD V. MUSIC
music providers such as PPL. This was based on the
argument that the latter were being unreasonable in
BROADCAST PVT
charging exorbitant royalties of FM radio channel LTD.
providers for music owned by the latter which in turn
was affecting public interest at large.
Held: Board held that keeping in mind the fact the
radio service providers, though private commercial
ventures, worked within the social development plan of
the government, the only reasonable license fee model
was wherein the music providers charge a fixed
percentage of the net advertisement revenue. In fact
the Board reasons that this would generate far more
income for music providers as more broadcasters
would be willing to come into the foray throughout the
country which would generate further income.
COPYRIGHT SOCIETY :
SECTION 33

Registration Any
associations of persons who
carry out the business of
Section 2 (ffd) : definition Example: Performing rights issuing license or granting
copyright society society license in any copyright work
shall get it registered with
the central government as a
copyright society.
Composition: 7 or more owners

SECTION 33
Do work in same class of work

duration : 5 years and can be renewed

file an application in form II C with the registrar

of copyright for submission to the Central
Government for registration as a copyright
Society.
Interests of the authors and owners FACTORS TO
BE
Interest and convenience of the public CONSIDERED

Ability and professional competence of the Section 33

applicant

Example :

Phonographic Performance ltd : sound

recording

Indian performing rights society :Musical

works
Central govt may accept the application CONDITIONS
within 60 days or can reject the FOR
application if
REGISTRATIO
Applicant has no professional
competence or has no sufficient funds to N
manage its affairs

there exist another society which deals in

same class of works

Members of copyright society are not

bonafide copyright owners

Application is incomplete in any respect.

 CANCELLATI
By central govt ON OF
COPYRIGHT
If it is satisfied that the society is SOCIETY
working against the interest of the Section 33

authors and owners of the copyright

work.

No publication of tariff scheme

Issuing or granting license in different

class of work which is not registered.
Issue license

Collect fees FUNCTIONS –

SECTION 34
Distribute such fees among authors and owners

Enter into reciprocal agreements with foreign copyright

society to collect local royalties and distribute to foreign
copyright owners
Supervise use of copyright work

Keep a vigil on infringement of copyright

Take appropriate legal action

Copyright society : collective control of
owners and authors

Copyright society shall SECTION 35

Control by owners and authors

Obtain approvals for procedures of

collection and distribution of fees

Obtain approvals for utilisation of any

amounts for purpose other than
distribution

Provide full and detailed information

CASE LAWS
IPRS ltd v. Hello FM Radio
FACTS:
According to this case the Indian Performing Rights Society Limited (IPRS) secured an
injunction from the Delhi High Court against Hello FM Radio (Malar Publications
Limited).The defendants were broadcasting the songs without obtaining licenses
from the Indian Performing Rights Society Limited (IPRS).

HELD:
In this case the Delhi High Court granted the injunction. By restricting the Hello FM
Radio from playing music without obtaining license from the Indian Performing Rights
Limited (IPRS).
PERFORMER
Section 2(qq) “performer” includes
an actor, singer, musician, dancer,
acrobat, juggler, conjurer, snake
charmer, a person delivering a
lecture or any other person who
makes a performance

Section 2 (q) of the Copyright Act

defines “performance” in relation
to performer’s right to mean
any visual or acoustic presentation
made live by one or more
performers
•Performers rights was first conferred to performers
under copyright ( amendment) act, 1994 and later
exclusive performer rights were included by
Copyright (Amendment) Act, 2012. PERFORMER’
S RIGHTS

•International Position

•Rome Convention

•Performers’ rights are protected under various

international treaties such as the Rome Convention and
the WIPO Performances and Phonograms Treaty.
(1) Where any performer appears
or engages in any performance,
he shall have a special right to be
known as the “performer’s right” SECTION 38
in relation to such performance. Performer’s Right

(2) 50 year from the date of

performance.
 INFRINGEMEN
Tvisual
makes a sound recording or GROUNDS
recording of the
performance
FOR
PERFORMER'S
reproduces a sound recording or visual recording of the
performance, which sound recording or visual recording
was- RIGHTS
Section 38

made without the performer's consent

made for purposes different from those for which the

performer gave his consent

Broadcast the performance

Communicate the work to public

Performer has right to make sound or
visual recording
PERFORMER'
Performer has the right to produce the S RIGHTS
sound or visual recording Section 38A

Performer has the right to broadcast

performance

Performer has the right to communicate

the work other than by broadcast

Section 38B- Moral Rights of the

performers
the making of any sound recording or visual
recording for the private use of the person
making such recording

solely for purposes of bona fide teaching or

research
SECTION 39
Exceptions to Infringement

the use, consistent with fair dealing, of

excerpts of a performance

broadcast in the reporting of current events

for bona fide review, teaching or research

Separate broadcast
reproduction right to the
performers
SECTION 39A
Broadcast Reproduction Rights and
performer's right

performers' right in any

performance as they apply
in relation to copyright in a
work
FORTUNE FILM INTERNATIONAL V. DEV
ANAND (AIR 1979 BOM 17)

The question whether

copyright subsisted in
performance of a performer
was decided in negative in
this case. Court held that
the actor does not have
copyright over his work in
the film as a whole.
Plaintiff (Neha Bhasin), a singer, claims that her
voice has been used by the defendants for the
NEHA BHASIN
three version of the song "ek look ek look" in the V. ANAND RAJ
forthcoming hindi feature film "Aryan " ANAND (2006)
The court addressed the issue that what will
constitute as the live performance, here it held
that whether the performance is recorded in the
studio or in front of the audience, for the first
instance, both will be called live performance and
if anyone use such performance without the
consent of the performer then performer’s rights
is said to be infringed.
COPYRIGHT INFRINGEMENT :
SECTION 51

unauthorized
use of author or
Primary Secondary
owner’s
Infringement infringement
copyrighted
work.
PRIMARY INFRINGEMENT-
SECTION 51(A)
does anything, the exclusive right to do which is by this Act
conferred upon the owner of the copyright

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, unless without his
knowledge
 SECONDARY
(b) when any person—
INFRINGEME
NT – SECTION
makes for sale or hire, or sells or lets for hire, or 51(B)
by way of trade displays or offers for sale

distributes either for the purpose of trade or to

such an extent as to affect prejudicially the
owner of the copyright

by way of trade exhibits in public

imports into India any infringing copies of the

work
REQUIREMENTS

Without the
Whole or
Either directly permission of
substantial
or indirectly author or
part of it
owner
FACTORS TO BE CONSIDERED

Objective similarly
Quality over quantity
Lay observer Test
Casual Connection between two
works
 LADBROKE V.
Depends more on quality WILLIAM HILL
than on quantity (1964)

Single note in a song can lead

to infringement, if it
constitute essential part of
the song
Copying should be
substantial and not mere
chance of occurrence
 BILLHOFER
Mistakes, resemblances in MASCHINENFABR
IK V. TH DIXON
inessentials, small redundant CO LTD (1990)
errors carry the greatest
weight
Some parts copied , some
not

They constitute substantial

part of the work.
TYPES OF COPYING

Direct Copying Indirect Copying Subconscious

Copying
SECONDARY INFRINGEMENT
Penguin Books Ltd. v India Book Distributors and Others
Penguin Books Ltd. is a British publishing house co-founded in 1935 by Sir Allen
Lane with his brothers. The plaintiff ( Penguin Books Ltd. ) instituted a suit for
perpetual injunction against the defendants, M/s. India Book Distributors, the
largest book distributor in India, restraining them from infringing Penguins'
territorial license.
The Delhi High Court decided that the copyrights of the plaintiffs, overthrown by
admitting that it is essential for the foreign publishers to import them in India. After
importation, it can be said to be issued to the public. The court of justice states that
the exclusive right of Penguin to ' print, publish and sell ' these titles in India would
expand to the exclusive right to import copies in India.
SECTION 52- FAIR DEALING
Exceptions to Copyright
private or personal use, including
research
FAIR
DEALING
Section 52
criticism or review

the reporting of current events

and current affairs, including the
reporting of a lecture delivered in
public.
The storing of any work in any electronic medium,
including the incidental storage of any computer
programme

COMPUTER
the making of copies by the lawful possessor PROGRAMME

to make back-up copies purely the doing of any

act necessary for inter-operability

the observation, study or test of functioning of the

computer programme

the making of copies or adaptation of the

computer programme from a personally legally
obtained copy for non-commercial personal use
the transient or incidental storage of a work or
performance purely in the technical process of
electronic transmission or communication to the
public; COMPUTER
PROGRAMME
transient or incidental storage of a work or Incidental storage
performance for the purpose of providing electronic
links, access or integration, where such links, access
or integration has not been expressly prohibited by
the right holder

EXCEPTION : that if the person responsible for the

storage of the copy has received a written complaint
from the owner of copyright in the work, complaining
that such transient or incidental storage is an
infringement, such person responsible for the
storage shall refrain from facilitating such access for
a period of twenty-one days
the reproduction of any work for the
purpose of a judicial proceeding or for the
purpose of a report of a judicial
proceeding; LEGAL
WORKS
the reproduction or publication of any
work prepared by the Secretariat of a
Legislature

the reproduction of any work in a

certified copy made or supplied in
accordance with any law for the time
being in force

the reproduction in a newspaper,

magazine or other periodical of an article
on current economic, political, social or
religious topics
any matter which has been published in any
Official Gazette
LEGAL
any Act of a Legislature subject to the
WORKS
condition that such Act is reproduced or
published together with any commentary
thereon or any other original matter;

the report of any committee, commission,

council, board or other like body appointed by
the Government if such report has been laid on
the Table of the Legislature

any judgment or order of a court, tribunal or

other judicial authority,
reading or recitation in public of reasonable extracts from a
published literacy or dramatic work.
PUBLIC
Performance of a literary, dramatic or musical work or of a
cinematograph film or a sound recording by staff and PERFORMAN
students in any educational institution for non paying
audience. CE WORKS
activities of a club or similar organization which is not
established or conducted for profit

causing of a recording to be heard in public by utilizing it in

an enclosed room or hall meant for the common use of
residents not for commercial purpose.

the performance of a literary, dramatic or musical work by

an amateur club or society if the performance is given to a
non-paying audience

for the benefit of a religious institution

 WORKS
RELATING TO
the reproduction of any work—
EDUCATIONA
L
performance in an educational institution
INSTITUTION
S
by a teacher or a pupil in the course of
instruction

as part of the question to be answered in an

examination; or

in answers to such questions;

instructional use
the storing of a work in any medium by
electronic means by a non-commercial public
library, for preservation if the library already
possesses a non-digital copy of the work
LIBRARY
WORKS
the making of not more than three copies of a
book (including a pamphlet, sheet of music,
map, chart or plan).

Reproduction of book if not available in India.

the reproduction, for the purpose of research

or private study or with a view to publication,
of an unpublished literary, dramatic or musical
work kept in a library
UNIVERSITY OF OXFORD & ORS.
V. RAMESHWARI PHOTOCOPY
SERVICES & ANR. (2016)
Delhi School of Economics had developed course packets that included pages
from books published by various international publishing houses. Rameshwari
Photocopy Service was entrusted with duplicating and binding these pages and
distributing them to students

The main provision over which the entire legal battle proceeded was Section
52(1)(i). Section 52 talks about certain acts which do not constitute copyright
infringement. Section 52(1)(i) in particular stated that the reproduction of any
work, by a teacher or a pupil in the course of instruction; or as part of the
question to be answered in an examination; or answers to such questions all
constituted fair dealing of that work.
 CIVIC CHANDRAN VS
AMMINI AMMA (1996)
•In this case, the Court considered that a parody did not constitute an
infringement of copyright as long as it has not been misused or
misappropriated. In consonance with this case, the Court established the
following three tests which is to be taken into consideration to determine
work to be an infringement of copyright:

1.“the quantum and value of the matter taken in relation to the comments or
criticism;

2.the purpose for which it is taken; and

3.the likelihood of competition between the two works.

the Court noted that the purpose was not to
misappropriate the theme, form of presentation, theme,
character, dialogues and the techniques adopted in
writing the drama. The aim was not to imitate the drama
or to produce anything similar. The real objective of the
counter-drama was to criticize the ideology depicted in
the drama and to show how the drama had been
unsuccessful in achieving the targets it had purported to
have aimed for. Moreover, the counter-drama also
contained references to popular social and political
leaders of Kerala which was not there in the drama.
 FAIR USE
Purpose and character of the
DOCTRINE –
use
UNITED
STATES
Nature of the copyrighted
work

Amount and substantiality of

the portion used

Effect on the potential market

for or value of the copyrighted
work
the Authors Guild, along with individual authors, sued
Google for copyright infringement related to its
Google Books project. Google Books is a massive AUTHORS
digital library project that involves scanning and GUILD V.
digitizing millions of books, including both public GOOGLE (2015)
domain works and copyrighted books. Users can
search for and view snippets of text from these books
online.
Purpose and character of the use: The court found that
Google's use was highly transformative.
Nature of the copyrighted work:Many of the books
included in Google Books were factual or informational
in nature, rather than creative works of fiction or poetry
Amount and substantiality of the portion used:
Although Google scanned and digitized entire books, it
only displayed small "snippets" of text in response to
user search queries.

Effect on the potential market for or value of the

copyrighted work: The court determined that Google
Books did not harm the market for the original works.
REMEDIES

Civil Criminal
Remedy Remedy
CIVIL REMEDIES- SECTION 55
Mareva
Interlocutory Injunction- Perpetual
Injunction freeze bank Injunction
accounts
John Doe order
Anton Pillar
or Ashok
Order- search
Kumar – Damages
and seizure by
defendant
plaintiff
unknown
 TAJ
variety of cable operators/parties/networks who
are unauthorizedly transmitting their Ten Sports
TELEVISION VS
channel and reaping huge dividends. RAJAN MANDAL
(2003)
The Delhi High Court restrained unlicensed cable
operators from unlawfully broadcasting the 2002
FIFA World Cup, who were alleged to be illegally
transmitting the plaintiff’s channel, and thereby
infringing on their rights.

John Doe orders was first introduced in this case

CRIMINAL REMEDIES

Imprisonme Search and

Fine
nt seizure
CRIMINAL OFFENCE-
SECTION 63
Any person who knowingly infringes or abets the infringement of—

(a)the copyright in a work

(b)any other right conferred by this Act, shall be punishable

6 months to 3 years

50,000 to 2 lakhs

Provided that where the infringement has not been made for gain impose a sentence
of imprisonment for a term of less than six months or a fine of less than fifty thousand
rupees.
SECTION 64- POLICE TO
SEIZE INFRINGING COPIES
It empowers police
deals with the power of officers, not below the
the police to seize rank of a sub-inspector,
infringing copies of to seize, without warrant,
copyrighted works and copies of any work which
related articles. appear to be infringing
copies.
 SECTION 65-
POSSESSION OF
Possession of plates or INFRINGING
copies for purpose of COPIES
making infringing copies

2 years and fine

Protection of technological measures.—
Any person who circumvents an effective technological
measure applied for the purpose of protecting any of
the rights conferred by this Act, with the intention of
infringing such rights
2 years and Fine SECTION 65A
Exceptions –
conduct encryption research
lawful investigation
testing the security of a computer system
intended for identification or surveillance of a user
National security
removes or alters any rights management
information without authority

SECTION 65B
Protection of Rights Management
distributes, imports for distribution, Information.
broadcasts or communicates to the public,
without authority, copies of any work, or
performance knowing that electronic rights
management information has been removed
or altered without authority,

2 years and Fine

Offences by Companies

Where any offence under this Act has been committed by a

company, every person who at the time the offence was
committed was in charge of, and was responsible to the
company for, the conduct of the business of the company, as SECTION 69
well as the company shall be deemed to be guilty of such offence
and shall be liable to be proceeded against and punished
accordingly:

Exception- without his knowledge or exercised due diligence

the offence was committed with the consent or connivance of, or

is attributable to any negligence on the part of, any director,
manager, secretary or other officer of the company, such
director, manager, secretary or other officer shall also be
deemed to be guilty of that offence and shall be liable to be
proceeded against and punished accordingly.
Dr A.K. Mukherjee had filed a complaint before a AK
Metropolitan Magistrate under Section 63 of the MUKHERJEE
Copyright Act, 1957 and alleged that the Respondent
had knowingly infringed the copyright vested in a book VS. STATE
written by him. In the judgement, Justice Jaspal Singh (1994)
highlighted the importance of the word ‘knowingly
infringes’ as mentioned in the provision.

There has to be a clear and conclusive proof of the

requisite knowledge. Even the existence of reasonable
means of knowing would not be enough. Thus, there
must be mens rea in the full sense.
TRUST AND ORS
V. THE STATE
OF
MAHARASHTRA
2016

This case was significant because

it demonstrated the relevance of
Section 482 of the Code of Criminal
Procedure, particularly in the
context of a copyright-related FIR.
Despite the petitioner's apology,
the respondent filed a criminal case
against him for playing his music
without copyright. The petitioner
thus invoked a clause of the Code
of Criminal Procedure ancillary to
the Copyright Act to have the FIR
dismissed, which the court did
when it took cognisance of the
case.
TRADEMA
RK
Section 2 (1) (m) : Mark

Mark includes “mark” includes a device, brand, heading,

label, ticket, name, signature, word, letter, numeral, shape of
goods, packaging or combination of colours or any
combination thereof TRADEMARK
Section 2 (1) (zb): Trademark

graphical representation

capable of distinguishing the goods or services of one

person from those of others

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
Conventional
Non conventional TYPES

Certification marks
Collective marks
Well- known
Trademarks
device marks :which has word with a pictorial
representation
CONVENTION
domain name
AL
brand: symbols branded on goods TRADEMARKS
Heading

label: words + pictorial representation attached with the

product

ticket: stitched or tagged on goods

Name

signature
NON CONVENTIONAL

Smell mark shape mark Sound Taste mark Colour Motion

mark mark mark
SOUND MARKS
graphical representation of sound marks shall consist of a musical notation on a stave,
a description of the sound constituting the mark, or an analog or digital recording of
that sound – or of any combination thereof. Where electronic filing is available, an
electronic file may be attached to the application.
some of the famous sound marks registered in USA are the sound of the famous
Tarzan yell, the lion roar of Metro-Goldwyn-Mayer Corporation, the music consisting
of drums, trumpets and strings in the Twentieth Century Fox Films, the sound of the
crowd and the bell of New York Stock Exchange, McDonald’s Corporation's five-note
"I'm lovin' it" jingle.
The first sound mark to be granted registration by the Trademark Registry was the
Yahoo! Yodel in the year 2008.
CRITERIA
1. The application must clearly state that the mark is a sound
mark, failing which the application will be considered as if it were a
word / device mark.

2. Sound marks must be represented with graphic representation

of the sign by a musical stave divided into measures and showing
in particular, a clef, musical notes and rest.
SMELL MARKS
registration of a smell mark applicants must be able to visually represent the
product’s scent and must show it is distinctive from the product itself and
must not result from the nature of the good itelf

Some of the examples of smell marks that are registered by the USPTO are
bubble gum scent for sandals, toothbrush with the smell of strawberry,
lubricants for combustion engines with the smell of strawberry, cherry and
grape.
HOLOGRAM
Holography is a photographic technique that records the light scattered from an
object, and then presents it in a way that appears three-dimensional. A hologram is a
cross between what happens when you take a photograph and what happens when
you look at something for real. Like a photograph, a hologram is a permanent record
of the light reflected off an object.

American Express owns a trademark registration in USA for a hologram that is

applied on the surface of its credit card.
MOTION MARK
A motion mark is moving animated
object or logo which is used by a
company as a marketing strategy to
gain a customer base. A motion mark is
made by using computer programs and
software along with animation
techniques. A well-known example of a
motion mark registered is Microsoft
windows logo
COLLECTIVE MARK- SECTION
2(1)(G)
It says, it is
a trademark distinguishing the
goods or services of members
Collective trademark’ has been of an association of persons
defined under section. 2(1)(g) of (not being a partnership with
the Trade Marks Act,1999. the meaning of the Indian
Partnership Act,1932) which is
the proprietor of the marks
from those of others.
CERTIFICATION MARKS-
SECTION 2(1)(E)

Section 2(1) (e) of Indian Trade Marks Act defines a certification mark

A mark capable of distinguishing the goods or services in connection with which it is

used in the course of trade which are certified by the proprietor of the mark in
respect of origin, material, mode of manufacture of goods or performance of
services, quality, accuracy or other characteristics from goods or services not so
certified".
SERVICE
MARK
service mark is the same as
a trademark, but instead of a
particular product, it identifies and
differentiates the source of
a service.
Section 2(1)(zg)
well-known trade mark”, in relation to any goods or services, means a mark which
has become sopopular to the substantial segment of the public which uses such
goods or receives such services that the use of such mark in relation to other
WELL KNOWN
goods or services would be likely to be taken as indicating a connection in the TRADEMARKS
course of trade or rendering of services between those goods or services and a “
person using the mark in relation to the first-mentioned goods or services
▪ (i) the knowledge or recognition of that trade mark in the
relevant section of the public including knowledge in India
obtained as a result of promotion of the trade mark FACTORS TO
▪ (ii) the duration, extent and geographical area of any use of that
trade mark
BE
▪ (iii) the duration, extent and geographical area of any CONSIDERED
promotion of the trade mark, including advertising or publicity
and presentation, at fairs or exhibition of the goods or services
to which the trade mark applies
▪ (iv) the duration and geographical area of any registration of or
any application for registration of that trade mark under this Act
to the extent they reflect the use or recognition of the trade
mark
▪ (v) the record of successful enforcement of, the rights in that
trade mark, in particular, the extend to which the trade mark has
been recognised as a well-known trade mark by any court or
Registrar under that record
▪ (i) the number of actual or potential consumers of the
goods or services
▪ (ii) the number of persons involved in the channels of
distribution of the goods or services
▪ (iii) the business circles dealing with the goods or
services to which that trade
▪ The Registrar shall not require as a condition for
determining whether a trade mark is a well-known
trade mark, any of the following, namely---- FACTORS NOT
▪ (i) that the trade mark has been used in India TO BE
▪ (ii) that the trade mark has been registered CONSIDERED
▪ (iii) has been filed in India
▪ (10) While considering an application for registration
of a trade mark and opposition filed in respect thereof,
the Registrar shall---
▪ (i) protect a well-known trade mark against the INFRINGEME
identical or similar trade marks: NT
▪ (ii) take into consideration the bad faith involved
▪ Registration of other mark happened before
commencement of the trademark act and registered in
good faith vide {section 11(11)}
▪ Honest and concurrent use { section 12 }
EXCEPTIONS
Tata sons v. Gina Kilindo (2014)
▪ Court held that TATA is a well known trademark as it
enjoys expansive reputation and goodwill and is used
for wide spectrum of activities using the trademark
TATA. Due to excessive advertisement and promotion
and large reach to the masses it has acquired the
CASE LAWS
status of well known trademark.
▪ The plaintiff was owner of well known trade mark
Rolex for Watches which has popularity over the
world. Defendants were involved in the business of
selling artificial jewellery in the name of Rolex. ROLEX S A V.
Analyzing the definition of well known trade mark ALEX JEWELLERY PVT.
under section 2(1)(zg) LTD.
▪ Delhi High Court held that according to the section
2(1)(zg) well known trade mark is the mark which in
relation to goods, means a mark which has become so
known to the substantial segment of the public which
uses such goods that the use of such mark in relation
to any other goods that the use of such mark in
relation to other goods would be likely to be taken as
indicating a connection in the course of trade between
those goods and a person using the mark in relation to
the first mentioned goods.
SPECTRUM OF
DISTINCTIVENESS
GENERIC TRADEMARKS
FANCIFUL TRADEMARK
▪ A fanciful / inherently distinctive trademark

▪ is prima facie registrable, and comprises an entirely invented or "fanciful" sign.

▪ For example, Kodak, Bata, deetol had no meaning before it was adopted .it ncludes Invented marks
without any meaning of its own.
ARBITRARY MARKS

▪ An arbitrary trademark is usually a common word which is used in a meaningless context Such
marks consist of words or images which have some dictionary meaning before being adopted as
trademarks, but which are used in connection with products or services unrelated to that
dictionary meaning.
▪ e.g. "Apple" for laptops
▪ A suggestive mark tends to indicate the nature, quality, or a characteristic of
the products or services in relation to which it is used, but does not describe
this characteristic, and requires imagination on the part of the consumer to
identify the characteristic. Suggestive marks invoke the consumer’s
perceptive imagination.
SUGGESTIVE M
▪ example: Blu-ray, a new technology of high-capacity
data storage that utilizes a
ARK
"blue" (actually violet) laser.
▪ Microsoft, vaporub
▪ A descriptive mark is a term with a dictionary
meaning which is used in connection with products or
services directly related to that meaning and describe
characteristic, quality, quantity of the product. Such
terms are not registrable unless it can be shown that
DESCRIPTIVE
distinctive character has been established in the term MARKS
through extensive use in the marketplace and has
acquired a secondary meaning.
▪ Eg: Café coffee Day
▪ A generic term is the common name for the products
or services in connection with which it is used, such as
"salt" when used in connection with sodium chloride.
A generic term is not capable of serving the essential
trademark function of distinguishing the products or
GENERIC TER
services of a business from the products or services of MS
other businesses, and therefore cannot be afforded
any legal protection.
▪ Eg: Xerox ,aspirin, Band aid
GROUNDS OF REFUSAL

Conditional
Absolute
▪ The mark lacks distinctiveness.
SECTION 9 –
▪ The mark is descriptive of the characteristics, quality,
ABSOLUTE
quanitity of the goods or services
GROUNDS OF
▪ The mark consists exclusively of marks or indications
REFUSAL
which have become customary or in the bonafide and
established practices of the trade.

▪ Shape = nature of goods

▪ Shape = technical result

▪ Substantial value
▪ Identity with an earlier trademark and similarity in

goods or services RELATIVE

▪ Similarity to earlier trademark and identity or
GROUNDS OF
similarity with goods or services
REFUSAL
▪ Which may lead to Likelihood of association and

Likelihood of confusion

▪ ection 11
▪ Identical or similar to earlier trademark
▪ Dissimilar goods or services RELATIVE
▪ Not registered, if it is a well known trademark GROUNDS OF
REFUSAL
SECTION 11

Law of Law of
passing off copyright
DECEPTIVE SIMILARITY
▪ Customer of Average intelligence and of imperfect recollection should be made a
point of view of comparison
▪ The structural, visual & phonetic similarity, the similarity of the idea in the two
marks, and the fact as to whether it is reasonable likelihood to cause confusion
should be taken into consideration.
▪ A trademark should not be dissected and then compared. It should be taken as a
whole and then compared with the other mark
IMPERIAL TOBACCO CO. V.
REGISTRAR OF TRADEMARKS
▪ The subject matter of the dispute was a wrapper of packet of cigarette bearing the
device of snow clad hills in outline with the word ‘Simla’ written prominently. The
Deputy Registrar of Trademarks held that though the trade mark was composite in
character, its essential feature was ‘Simla’. The similarity in its only and obvious
signification is a well known geographical name and the chief town of a State, and
further, the word ‘Simla’ was inherently not adapted to distinguish the goods of any
particular trader.
▪ Court held that simla is a significant geographical location and can’t be registered.
NANDHINI DELUXE V.
KARNATAKA COOPERATIVE MILK
PRODUCERS (2018)
DECISION
▪ The Supreme Court held that though there was a phonetic similarity between the
words NANDHINI and NANDINI, the trademark with logo adopted by the two
parties were altogether different. The manner, style and other aesthetics of the
mark adopted were different. Further, the Appellant used and added the word
'Deluxe' to its mark and, thus, its trademark was 'NANDHINI DELUXE’.
▪ A bare perusal of the two marks would show that there was hardly any similarity
between the two marks when seen in totality. Examining its salient features, it would
be difficult to sustain that the mark adopted by the Appellant would cause any
confusion or deception in the mind of consumers. The Supreme Court found that
not only visual appearance of the two marks was different, they even related to
different products. Further, considering the manner in which they were traded by
the Appellant and Respondent, it was difficult to imagine that an average man of
ordinary intelligence would associate the goods of the Appellant as that of the
Respondent.
AMRITDHARA PHARMACY V. SATYA
DEO GUPTA (1962)
▪ Amritdhara and lakmandhara- two medicine brands
▪ Factors to be taken into consideration:
Customer of Average intelligence and Imperfect recollection
▪ Court held that a critical comparison of the two names may disclose some points of
difference, but an unwary purchaser of average intelligence and imperfect
recollection would be deceived by the overall similarity of the two names having
regard to the nature of the medicine he is looking for with a somewhat vague
recollection that he had purchased a similar medicine on a previous occasion with a
similar name. The trade mark is the whole thing - the whole word has to be
considered.
N.R. DONGRE AND ORS. V
WHIRLPOOL CORPORATION AND
ANR
▪
((1996) 5 SCC 714.)
The subject matter of the appeal was the manufacture, sale and advertisement of
washing machines under a mark which included WHIRLPOOL.Whirlpool based its
claim on its prior use of the WHIRLPOOL mark and a trans-border reputation, which
suggested that any goods marketed under the WHIRLPOOLmark had been
marketed by the Plaintiff.The Court held that the term ‘use’ under The Trade Marks
Act, 1999 has acquired a broad meaning and does not necessarily mean the
physical presence of the goods in India. Presence of the trademark on the Internet
and publication in international magazines and journals having circulation in India
are also considered as use in India.
DECISION
▪ The Court, therefore, held that a rights holder can maintain a passing off action
against an infringer on the basis of the trans-border reputation of its trademarks
and that the actual presence of the goods or the actual use of 10 the mark in India is
not mandatory.
ASSOCIATED MARKS –
SECTION 16
▪ Where a trade mark which is registered, or is the subject of an application for
registration, in respect of any goods or services is identical with another trade
mark which is registered, or is the subject of an application for registration, in the
name of the same proprietor in respect of the same goods or description of goods
or same services or description of services or so nearly resembles it as to be likely
to deceive or cause confusion if used by a person other than the proprietor, the
Registrar may, at any time, require that the trade marks shall be entered on the
register as associated trade marks
PASSING OFF

passing off occurs when a

person makes a false
representation to their customer Section 27
to lead them in believing that
the goods or services they are
delivering are the property of
another person.
ESSENTIAL ELEMENTS
goodwill or reputation in the goods or services

misrepresentation by the defendant

damage
INFRINGEMENT
▪ Trademark infringement occurs when a registered trademark is unlawfully used by
another party without authorization.
▪ It involves the unauthorized use of a trademark or a confusingly similar mark in
connection with goods or services that are identical or similar to those covered by
the registered trademark.
▪ Trademark infringement is typically governed by statutory law, and it often
requires the trademark to be registered
▪ Infringement doesn't necessarily require proof of damage to the goodwill or
reputation of the trademark owner; the unauthorized use of the mark alone can
constitute infringement.
CADILA HEALTHCARE LTD. V.
CADILA PHARMACEUTICALS,
200
▪ To check the nature of the marks which includes word marks, label marks and composite
marks.
▪ To check the degree of similarity between such marks which include ideological and
phonetic similarity.
▪ To check the similarity of nature, performance and character of the goods of both traders
involved.
▪ To identify the class of consumers who might buy the goods based on the marks they
require, their intelligence, education and the degree of care they might employ in buying
or consuming such goods.
▪ To check the nature of the goods for which they are used as trademarks.
▪ To identify the mode of purchase when buying such goods.
▪ Any other such related circumstances which may be relevant in the matter of dissimilarity
between such competitive marks.
RIGHTS – SECTION 28
Exclusive Right to Use

Relief in Case of Infringement

Rights of Multiple Proprietors

Rights Against Unregistered Users:

SECTION 29- INFRINGEMENT
▪ Infringement by Similar Mark in Relation to Similar Goods/Services:
▪ If a person, not being the registered proprietor or a permitted user, uses a mark
identical or deceptively similar to a registered trademark in relation to goods or
services for which the trademark is registered, and in a manner that suggests it is
being used as a trademark, it constitutes infringement.
▪ Likelihood of Confusion:
▪ In cases where the similarity between the infringing mark and the registered
trademark is likely to cause confusion among the public, the use of such a mark is
considered infringement.
▪ Infringement by Use of Identical/Similar Mark for Dissimilar
Goods/Services:
INFRINGEMENT – SECTION 29
▪ A registered trade mark is infringed by a person if he uses such registered trade
mark, as his trade name or part of his trade name, or name of his business concern
or part of the name, of his business concern dealing in goods or services in respect
of which the trade mark is registered.
DOMAIN NAMES
▪ Times Internet Ltd vs Jonathan S. And Another (2012)
▪ M/s. Bennett Coleman & Co. Ltd. under the Trade Name/Logo of "Indiatimes" and
for this purpose the said company created a portal named "indiatimes.com".
▪ Defendant got the domain name as myindiatimes.com which is identical with and
deceptively similar to that of the plaintiff‟s domain name
▪ Infringement
PFIZER PRODUCTS, INC. VS G.S.
PHARMACEUTICALS PVT. LTD & ANR. 2013

▪ VIAGRA' is a coined word and has no denotative meaning. The plaintiff further
contends that as part of their marketing strategy, the plaintiff adopted a unique and
unusual colour and shape for its product, namely, a distinctive blue diamond-
shaped tablet.
▪ The plaintiff contends that not only the defendants have used the mark 'V-GRA'
which is confusingly similar to plaintiff's registered trade mark VIAGRA but
defendants have also adopted a tablet colour and shape that is deceptively similar
to the trade dress of the plaintiff.
▪ decree is passed in favour of the plaintiff and against the defendant for permanent
injunction restraining the defendants, their directors, distributors etc. from
manufacturing, marketing, offering for sale etc. or advertising etc. under the mark
V- GRA
SECTION 29- ACTS CONSTITUTING USE OF
REGISTERED MARK

▪ Various acts such as affixing the mark to goods or packaging

▪ offering or exposing goods for sale under the mark
▪ importing or exporting goods under the mark
▪ or using the mark on business papers or in advertising are considered uses of the
registered mark.
 ▪ ‘Comparative advertising’ is the term used to
describe advertisements where the goods or
COMPARAT services of one trader are compared with the
goods and services of another trader

IVE ▪ Disparagement means matter which is intended

by its publisher to be understood or which is
reasonably understood to cast doubt upon the
ADVERTISE existence or quality of another's property. In the
context of goods, when a competitor brings a
MENT doubt about the other brand's goods in the
minds of the customers not to buy the same, it
may be called disparagement.
COMPAQ V. DELL
▪ 'Dell' computers published an advertisement claiming that their home computers
functioned similarly to 'Compaq' computers but were way cheaper. Their claims
about function were untrue in various important details. The Hon'ble Court found it
to be an infringement and granted interlocutory relief in respect of injurious
falsehood.
ELEMENTS

That the statement The deception is

A false or misleading
either deceived, or has material, in that it is
statement of fact has
the capacity to deceive, likely to influence
been made about his
substantial segment of consumers' purchasing
product
potential consumer decisions.
INFRINGEMENT- SECTION
29(8)
any advertising which is not in accordance with
honest practices, takes unfair advantage

is detrimental to the distinctive character

to the repute of the mark, shall be an act

constituting infringement
DECISION
▪ Upheld the order passed by the Single Judge bench
▪ The mention of RIN detergent bar for comparison shall not be permitted
▪ The advertisement is not disparagement as it was in the interest of the public
backed with scientific facts regarding Ph value.
▪ Advertisement was permitted with some changes; however the comparison was still
permitted.
▪ Change the word to ideal
HINDUSTAN UNILEVER LIMITED
AND ANOTHER V. USV PRIVATE
LIMITED (2021)
▪ SebaMed came into focus as it started advertising its soap, and it openly pointed
out the Ph level of other soaps like Dove, LUX & Pears and ultimately concluded that
SebaMed soaps are safe to use and not the rest in the market. Further, it also
claimed that any level higher than 6 is not safe to use and thereafter showed the Ph
level of Dove, LUX & Pears as above 6 and hence concluded it to be harmful on
skin. Thus, the appellants, being Hindustan Unilever, claimed that such an
advertisement is a clear disparagement of their goods and hence an injunction was
demanded.
RECKITT & COLMAN OF INDIA
LTD. V. KIWI T.T.K. LTD
▪ the plaintiff company is engaged in manufacture and sale of consumer products
and one of the products of the plaintiff is liquid shoe polish being manufactured
and marketed by them under the name and style of Cherry Blossom Premium
Liquid Wax Polish. Defendant is also engaged in the manufacture of polish and one
of the brand being manufactured and marketed by the defendant is "KIWI" brand
of liquid polish.
▪ It was held that a manufacturer is entitled to make a statement that his goods are
the best and also make some statements for puffing of his goods and the same will
not give a cause of action to other traders or manufacturers of similar goods to
institute proceedings as there is no disparagement or defamation to the goods of
the manufacturer so doing. However, a manufacturer is not entitled to say that his
competitor's goods are bad so as to puff and promote his goods.
SECTION 30-
LIMITS ON
INFRINGEMENT
1. Use of a registered trademark is allowed
if:
• honest practices in industrial or
commercial matters
• It doesn't take unfair advantage of or be
detrimental to the distinctive character or
repute of the trade mark.
 (a) is in accordance with honest practices in industrial or
commercial matters

SECTION 30 – (b) is not such as to take unfair advantage of or be

detrimental to the distinctive character or repute of the
EXCEPTIONS trade mark.

TO
INFRINGEME (2) A registered trade mark is not infringed where—
NT
(a) the use in relation to goods or services indicates the
kind, quality, quantity, intended purpose, value,
geographical origin, the time of production of goods or of
rendering of services or other characteristics of goods or
services
SECTION 30
The use indicates characteristics of goods or services (quality, origin, etc.).
• The trademark is used within specified conditions or limitations.
• in relation to goods connected in the course of trade - permitted use has applied
the trade mark and has not subsequently removed or obliterated it, or has at any
time expressly or impliedly consented to the use of the trade mark
• (ii)in relation to services to which the proprietor - where the purpose and effect of
the use of the mark is to indicate, in accordance with the fact, that those services
have been performed by the proprietor or a registered user of the mark;
• The use is necessary to indicate adaptation to other goods/services.
• The trademark is one of several identical or similar ones registered under the law.
EXHAUSTION OF RIGHTS

the registered trade mark

the goods having been put
having been assigned by
on the market under the
the registered proprietor to
registered trade mark by
some other person, after
the proprietor or with his
the acquisition of those
consent.
goods
FAIR USE – TRADEMARK

Descriptive Fair Use Normative Fair Use

PRIUS AUTO INDUSTRIES LTD. VS.
TOYOTA JIDOSHA KABUSHIKI KAISHA
▪ dealt with the nominative fair use defense, against unauthorized use of the plaintiff's trademarks 'TOYOTA', TOYOTA

Device and INNOVA in connection with the defendant's car accessories and spare parts. While the Single Judge of Delhi

High Court set aside6 the ex parte injunction order7 passed retraining the defendants from using the plaintiff's

registered trademarks, the Division Bench8, which balancing equities, imposed an interim arrangement (pending

disposal of suit) between parties with their consent, wherein the defendants – (1) were restrained from using plaintiff's

registered marks, except for the purposes of identifying that the defendant's products can be used in the cars; (2) were

to ensure that the words 'TOYOTA' and 'INNOVA' were not written in the same font as written by Toyota; and (3) were to

use the words "Genuine Accessories" only in conjunction with the defendant's (manufacturer of spare parts) name.
▪ In view of the foregoing, the key factors which the Courts in India look at for assessing

applicability of the 'nominative fair use' defense are – (1) whether such use is bona fide and
reasonably necessary for identification purposes; (2) whether such use is intended to suggest
sponsorship or endorsement with the proprietor; (3) whether such use is likely to lead to
consumer confusion or deception as to the source of origin; and (4) the manner in which the brand
owner's trademark is used and whether stylization and font is copied.

▪
PASSING OFF CASE LAW
▪ Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] A.C. 731
▪ he five characteristics recognized are:
▪ (i) Misrepresentation
▪ (ii) the act must be made by the defendant in course of trade
▪ (iii) the prospective or ultimate customers of the plaintiff’s goods and services have been
misrepresented
▪ (iv) such an act of misrepresentation is calculated to injure the business or goodwill of the
plaintiff
▪ (v) such act causes actual damage to the business or goodwill of the plaintiff. Essentiality of
these characteristics has also been recognized by the Indian courts. Ascertainment of these
characteristics is highly subjective in nature and varies from case to case depending upon the
facts of the case.
 Cadila Healthcare Ltd. (the appellant) and Cadila
Pharmaceuticals (the respondent) were two
pharmaceutical companies that introduced medicine for
the treatment of cerebral malaria commonly known as
Falciparum. The appellant launched the medicine by
the name and style ‘Falcitab’ and the respondent
named their medicine ‘Falcigo’. The appellant got their
trademark registered in 1996 after being granted
permission by the Drugs Controller of India, whereas,
CADILA the respondent registered their trademark in 1997.
HEALTHCARE LTD
V. CADILA as the species of unfair trade competition or of
PHARMACEUTICAL actionable unfair trading by which one person, through
S LTD (2001) deception, attempts to obtain an economic benefit of
the reputation , which the other has established for
himself in a particular trade or business.“
• To check the nature of the marks which includes word marks, label marks and composite
marks.
• To check the degree of similarity between such marks which include ideological and
phonetic similarity.
• To check the similarity of nature, performance and character of the goods of both
traders involved.
• To identify the class of consumers who might buy the goods based on the marks they
require, their intelligence, education and the degree of care they might employ in buying
or consuming such goods.
• To check the nature of the goods for which they are used as trademarks.
• To identify the mode of purchase when buying such goods.
• Any other such related circumstances which may be relevant in the matter of
dissimilarity between such competitive marks.
▪
CLASSICAL TRINITY TEST.
▪ Reckitt & Colman Products Ltd. v. Bordan Incorporation.
▪ (i) that the plaintiff had acquired a reputation or goodwill in his goods, name or mark
▪ (ii) there was a misrepresentation, whether intentional or unintentional, which was done by
the defendants by the use of mark of the plaintiff or by any other means (which includes use
of similar marks) and which led the purchasers/consumers to believe that the goods and
services which were being offered by the defendants are goods and services of the plaintiff
or were associated with the plaintiff’s goods and services
▪ (iii) that the plaintiff has already suffered damage or is likely to suffer damage due to such
misrepresentation.

▪ The apex court of India has also upheld this test and has applied it in the case of Laxmikant
V. Patel v. Chetanbhat Shah.
KAVIRAJ PANDIT DURGA DAS SHARMA V.
NAVARATNA PHARMACEUTICAL (1965)

▪ The plaintiffs-appellants before us are manufacturers of biscuits and confectionery

and are owners of certain registered trade marks. One of them is the word "Gluco"
used on their half pound biscuit packets.
▪ "While an action for passing off is a Common Law remedy being in substance an
action for deceit, that is, a passing off by a person of his own goods as those of
another, that is not the gist of an action for infringement. The action for infringement
is a statutory remedy conferred on the registered proprietor of a registered trade
mark for the vindication of the exclusive right to the use of t he trade mark, in
relation to those goods (vide s. 21 of the Act). The, use, by the defendant of the
trade mark of the plantiff is not essential in an action for passing off, but is the sine
qua non in the case of an action for infringement."
DECISION
▪ It is therefore clear that in order to come to the conclusion whether one mark is
deceptively similar to another, the broad and essential features of the two are to be
considered. They should not be placed side by side to find out if there are any
differences in the design and if so, whether they are of such character as to prevent
one design from being mistaken for the other. It would be enough if the impugned
mark bears such an overall similarity to the registered mark as would be likely to
mislead a person usually dealing with one to accept the other if offered to him.
▪ In this case we find that the packets are practically of the same size, the color
scheme of the two wrappers is almost the same; the design on both though not
identical bears such a close resemblance that one can easily be mistaken for the
other.
PASSING OFF IN
INTERNET DOMAIN
NAMES
▪ Satyam Infoway Ltd v. Sifynet Solutions (P) Ltd, (2004)

▪ In this case, the appellant, Satyam Infoway Ltd., alleged that the
respondent, Sifynet Solutions Pvt. Ltd., deliberately registered
and ran a domain name that was confusing and similar to the one
owned by them.
• www.sifynet,

• www.sifymall.com,

• The respondent started their business of internet marketing in

2001 under the domain names:
• www.siffynet.net.
• www.siffynet.com.
▪ By looking at the evidence of sales and prior use and similarity in the
domain names and other factors, the Supreme Court held that domain
name has the same characteristics as that of trademark and hence the
rules of passing off as laid down in the Trademark Act, 1999 will apply in
this case.
▪ The Supreme Court also made a very pertinent observation that the use of
similar domain names has similar essentials of passing off like protection of
Goodwill, the reputation of the business in the market, and not misguiding
the public by creating confusion in their minds, and lastly the loss thereby.
 ▪ essentially means that you are "passively
ACQUIESC consenting" to let another user use your
registered trademark even when you are aware
ENCE of it
 ▪ Sec 33 subsection (1) talks about the five-year-
limitation period to acquiesce the use of your
registered trademark after being aware of the
SECTION 33 use of it by someone else.
▪ It will be considered as your passive consent
unless challenged otherwise or proven malafide
usage by the later user.
WAIVER OF RIGHTS
▪ (a) to apply for a declaration that the registration of the later trade mark is invalid,
▪ (b) to oppose the use of the later trade mark in relation to the goods or services in
relation to which it has been so used

▪ unless the registration of the later trade mark was not applied in good faith.
SECTION 34- VESTED RIGHTS
▪ Nothing in this Act shall entitle the proprietor or a registered user of a registered
trade mark to interfere with or restrain the use by any person of a trade mark
identical with or nearly resembling it in relation to goods or services in relation to
which that person or a predecessor in title of his has continuously used that trade
mark from a date prior—
▪ (a) to the use of the first-mentioned trade mark about those goods or services be
the proprietor or a predecessor in title of his
▪ (b) to the date of registration of the first-mentioned trade mark in respect of
those goods or services in the name of the proprietor of a predecessor-in-title of
his; whichever is the earlier,
▪ and the Registrar shall not refuse (on such use being proved), to register the
second mentioned trade mark by reason only of the registration of the first
mentioned trade mark.
▪ This section palpably holds that a proprietor of
a trade mark does not have the right to prevent
the use by another party of an identical or
similar mark where that user commenced prior
to the user or date of registration of the
proprietor. This “first user” rule is a seminal part
of the Act...
NEON LABORATORIES LTD. V.
MEDICAL TECHNOLOGIES LTD.
▪ the Court ruled that: “We must hasten to clarify that – had the defendant-appellant commenced user of its
trade mark ROFOL prior to or even simultaneous with or even shortly after the plaintiff-respondents
marketing of their products under the trade mark PROFOL, on the defendant-appellant being accorded
registration in respect of ROFOL which registration would retrospectively have efficacy from 19-10-1992,
the situation would have been unassailably favourable to it.
▪ What has transpired is that after applying for registration of its trade mark ROFOL in 1992, the
defendant-appellant took no steps whatsoever in placing its product on the market till 2004. It also was
legally lethargic in not seeking a curial restraint against the plaintiff-respondents. This reluctance to protect
its mark could well be interpreted as an indication that the defendant-appellant had abandoned its mark at
some point during the twelve-year interregnum between its application and the commencement of its user,
and that in 2004 it sought to exercise its rights afresh. It would not be unfair or fanciful to favour the view
that the defendant-appellant’s delayed user was to exploit the niche already created and built-up by the
plaintiff-respondents for themselves in the market. The “first in the market test” has always enjoyed
pre-eminence. ...
S. SYED MOHIDEEN V. P.
SULOCHANA BAI (2016) 2 SCC
683
▪ This particular legal case establishes a precedent by emphasizing the
significance of prior use rights. This highlights that registering a trademark
does not confer an unconditional monopoly, particularly if another party has
been utilizing it prior to registration.
▪ The Supreme Court herein observed that “the scheme of the Act is such
where rights of prior user are recognized superior than that of the
registration and even the registered proprietor cannot disturb/interfere with
the rights of the prior user.”
ASSIGNMEN
T AND
TRANSMISSI
ON
▪ Section 37

▪ Power of registered proprietor to assign

and give receipts.—The person for the
time being entered in the register as
proprietor of a trade mark shall, subject
to the provisions of this Act and to any
rights appearing from the register to be
vested in any other person, have power
to assign the trade mark, and to give
effectual receipts for any consideration
for such assignment.

ASSIGNMENT
 ▪ Transmission, as defined by the Act, is the
transfer of a trademark by operation of law
or devolution on the personal
representative of a deceased person that is
not an assignment. It indicates that a
trademark is legally transferred from the
TRANSMISSION proprietor to the other person or his legal
representatives upon death.
▪ Transmission might apply to either some or
all of the trademarks in the products and
services. It can be done with or without the
goodwill of the company in question.
SECTION 38-
.
ASSIGNABILI ▪ Notwithstanding anything in any other law to the
contrary, a registered trade mark shall, subject to
TY AND the provisions of this Chapter, be assignable and
transmissible, whether with or without the
TRANSMISSIB goodwill of the business
▪ either of all the goods or services in respect of
ILITY OF which the trade mark

REGISTERED ▪ is registered or of some only of those goods or

services.
TRADE
MARKS.
SECTION 39 - ASSIGNABILITY AND
TRANSMISSIBILITY OF UNREGISTERED
TRADE MARKS.

Section 39

An unregistered trade mark may be assigned or transmitted

with or without the goodwill of the business concerned
40. RESTRICTION ON ASSIGNMENT OR
TRANSMISSION WHERE MULTIPLE
EXCLUSIVE RIGHTS WOULD BE CREATED
1) Notwithstanding anything in sections 38 and 39, a trade mark shall not be assignable or transmissible in a case in
which as a result of the assignment or transmission there would in the circumstances subsist, whether under this
Act or any other law, exclusive rights in more than one of the persons concerned to the use, in relation to—

(a) same goods or services

(b) same description of goods or services

(c) goods or services or description of goods or services which are associated with each other
SECTION 47- REMOVAL FROM
REGISTER AND IMPOSITION OF
LIMITATIONS ON GROUND OF
NON-USE.—
▪A registered trade mark may be taken off the register in respect of the goods or
services in respect of which it is registered
▪ that the trade mark was registered without any bona fide intention on the part of the
applicant
▪ that up to a date three months before the date of the application, a continuous
period of five years from the date on which the trade mark is actually entered in the
register or longer had elapsed during which the trade mark was registered and
during which there was no bona fide use
▪ Exception - special circumstances in the trade, which includes restrictions on the
use of the trade mark in India imposed by any law or regulation and not to any
intention to abandon or not to use the trade mark in relation to the goods or
services to which the application relates.
SECTION 48- REGISTERED
USERS-
a person other than the registered proprietor of a trade mark may be
registered as a registered user thereof in respect of any or all of the
goods or services in respect of which the trade mark is registered.

Use by proprietor

Section 49- Registration

SECTION 50- CANCELLATION
BY REGISTRAR
▪ used the trade mark otherwise than in accordance with the agreement under
clause
▪ that the proprietor or the registered user misrepresented, or failed to disclose,
some fact material to the application for registration
▪ may be cancelled by the Registrar on his own motion or on the application in
writing in the prescribed manner by any person, on the ground that any stipulation
in the agreement between the registered proprietor and the registered user
regarding the quality of the goods or services in relation to which the trade mark is
to be used is either not being enforced
▪ any goods or services in relation to which the trade mark is no longer registered.
COLLECTIVE MARK- SECTION
61
In relation to a collective mark the reference in clause
(zb) of sub-section (1) of section 2 to distinguishing
the goods or services of one person from those of
others shall be construed as a reference to
distinguishing the goods or services of members of an
association of persons which is the proprietor of the
mark from those of others.
SECTION 62- COLLECTIVE MARK
NOT TO BE MISLEADING AS TO
CHARACTER OR
SIGNIFICANCE.—
▪ A collective mark shall not be registered if it is likely to deceive or cause confusion
on the part of public in particular if it is likely to be taken to be something other
than a collective mark, and in such case the Registrar may require that a mark in
respect of which application is made for registration comprise some indication that
it is a collective mark
SECTION 63. APPLICATION TO BE
ACCOMPANIED BY
REGULATIONS GOVERNING USE
OF COLLECTIVE MARKS.
▪ An application for registration of a collective mark shall be accompanied by the
regulations governing the use of such collective mark.
▪ The regulations referred to in sub-section (1) shall specify the persons authorised
to use the mark,
▪ the conditions of membership of the
▪ the conditions of use of the mark, including any sanctions against misuse and such
other matters as may be prescribed
CERTIFICATION TRADE
MARKS
70. Registration of certification
trade marks.—

A mark shall not be registrable

as a certification trade mark in
the name of a person who
carries on a trade in goods of
the kind certified or a trade of
the provision of services of the
kind certified.
SECTION 72. CONSIDERATION OF
APPLICATION FOR
REGISTRATION BY REGISTRAR
(a) whether the applicant is competent to certify the
goods in respect of which the mark is to be registered

(b) whether the draft of the regulations to be filed under

section 74 is satisfactory

(c) whether in all the circumstances the registration

applied for would be to the public advantage
SECTION 77. CANCELLATION OR
VARYING OF REGISTRATION OF
CERTIFICATION TRADE MARKS
▪ that the proprietor is no longer competent, in the case of any of the goods or
services in respect of which the mark is registered, to certify those goods or
services
▪ that the proprietor has failed to observe any provisions of the regulations to be
observed on his part
▪ that it is no longer to the public advantage that the mark should remain registered.
OFFENCES

102. Falsifying and falsely applying trade marks.—

(a) without the assent of the proprietor of the trade mark

makes that trade mark or a deceptively similar mark

(b) falsifies any genuine trade mark, whether by alteration,

addition, effacement or otherwise.
▪ A person shall be deemed to falsely apply to goods or services a trade mark who,
without the assent of the proprietor of the trade mark,
▪ (a) applies such trade mark or a deceptively similar mark to goods or services or
any package containing goods
▪ (b) uses any package bearing a mark which is identical with or deceptively similar
to the trade mark of such proprietor, for the purpose of packing, filling or wrapping
therein any goods other than the genuine goods of the proprietor of the trade mark.
103. PENALTY FOR APPLYING
FALSE TRADE MARKS, TRADE
DESCRIPTIONS, ETC.
▪ (a) falsifies any trade mark; or (b) falsely applies to goods or services any trade
mark; or (c) 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; or (d) applies any false trade description to goods or
services; or
▪ , a false indication of such country, place, name or address
▪ tampers with, alters or effaces an indication of origin
▪ unless he proves that he acted, without intent to defraud,
▪ 6Months To 3 Years
▪ 50,000 to 2 lakhs
SECTION 104- PENALTY FOR SELLING GOODS OR PROVIDING SERVICES
TO WHICH FALSE TRADE MARK OR FALSE TRADE DESCRIPTION IS APPLIED.

▪ Any person who sells, lets for hire or exposes for sale, or hires or has in his possession for
sale, goods or things, or provides or hires services, to which any false trade mark or false
trade description is applied
▪ Unless he proves
▪ (a) that, having taken all reasonable precautions against committing an offence against
this section, he had at the time of commission of the alleged offence no reason to suspect
the genuineness of the trade mark
▪ (b) that, on demand by or on behalf of the prosecutor, he gave all the information in his
power with respect to the person from whom he obtained such goods or things or services
▪ (c) that otherwise he had acted innocently,
▪ 6 months to 3 years
▪ 50,000 to 2 lakhs
SECTION 107. PENALTY FOR FALSELY
REPRESENTING A TRADE MARK AS REGISTERED.
▪ (a) with respect to a mark, not being a registered trade mark, to the effect that it is a
registered trade mark
▪ (b) with respect to a part of a registered trade mark, not being a part separately
registered as a trade mark, to the effect that it is separately registered as a trade
mark
▪ (c) to the effect that a registered trade mark is registered in respect of any goods or
services in respect of which it is not in fact registered
▪ (d) to the effect that registration of a trade mark gives an exclusive right to the use
thereof in any circumstances in which, having regard to limitation entered on the
register, the registration does not in fact give that right.
▪ 3 years and fine
PATENT
DEFINITIONS

Section 2(1)(j)"invention"
Section 2(1) (m) "patent"
means a new product or
means a patent for any
process involving an
invention granted under
inventive step and capable
this Act;
of industrial application
 Section 2 1(1) (l) "new invention" means
any invention or technology which has not
been anticipated by publication in any
Section 2(1) (ja) Inventive step : which
document or used in the country or
involves technical advance or having
elsewhere in the world before the date of
economic significance or both and makes
filing of patent application with complete
it non obvious to person skilled in the art.
specification, i.e., the subject matter has
not fallen in public domain or that it does
not form part of the state of the art;
Section 2 1 (ac) capable of
Section 2 1 (p) "patentee"
industrial application", in
means the person for the
relation to an invention,
time being entered on the
means that the invention is
register as the grantee or
capable of being made or
proprietor of the patent;
used in an industry
CRITERIA

Novelty Non – Industrial Inventive step

obviousness application
PRIOR ART

ii. Prior Publications

iii. Prior commercial
relating to the invention,
working of the product or
i. Prior patents relating to which include any
process in India before
the invention document published
the priority date of the
before the priority date of
patent application;
the patent application
NOVELTY EXCEPTIONS

Public display in a A grace period of twelve

Government Also, prior publication of (12) months is also
recognised exhibition the invention before a available for prior public
will also not negate learned society working, which amounts
novelty of the invention. to a reasonable trial.
INDUSTRIAL APPLICATION
▪ Hoffmann la roche v. Cipla Ltd (2016)
▪ Delhi High Court observed that an invention must be commercially viable. It must
have a commercial use, and commercial success need not be proved. At a basic
level, the invention must have a practical use and has to be useful for the purpose
claimed in the patent specification. Nothing more will be required to prove utility of
an invention for patentability.
MERCK & DOHME CORP. V.
GLENMARK
PHARMACEUTICALS
▪
Generic medicines by Glenmark
(2015)
▪ the Delhi High Court applied principles for industrial applicability laid down by
the UK Court of Appeals to arrive at the conclusion that Sitagliptin, a
pharmaceutical compound, is industrially applicable.
▪ The principles cited by the Court are as follows:
▪ The patent must disclose a “ practical application” and “some profitable use” for
some commercial benefit”;
▪ A merely “speculative” use will not suffice, actual use is impetrative.
▪ The patent and common general knowledge must enable the skilled person “to
reproduce” or “exploit” the claimed invention without “undue burden”, or having
to carry out “a research programme”
HOFFMANN ROCHE V.
CIPLA(2008)
▪ Delhi High Court reviewed if selecting one compound from several compounds
disclosed in the prior art and modifying the selected compound by substituting
ethynyl with methyl at a specific position is obvious.
▪ The case involved Erlotinib Hydrochloride, which demonstrated capabilities as an
Epidermal Growth Factor Receptor (EGFR) inhibitor which spiked survival benefit
in cancer including non-small cell lung cancer (NSLC) patients. After reviewing
relevant prior art references, the Court came to the conclusion that a person with
ordinary skill would not have found the selection of the compound from a number
of compounds and its modification obvious, and that structural similarities between
compounds would not prima facie make the claimed compound obvious. While
arriving at its conclusion, the Court expounded some important principles with
respect to inventive step analysis, which read as follows:
▪ From the decisions noted above to determine obviousness/lack of inventive steps the
following enquiries are required to be conducted:
▪ Step No.1 – To identify an ordinary person skilled in the art,

▪ Step No.2 – To identify the inventive concept embodied in the patent,

▪ Step No.3 – To impute to a normal skilled but unimaginative ordinary person skilled in the
art what was common general knowledge in the art at the priority date,
▪ Step No.4 – To identify the differences, if any, between the matter cited and the alleged
invention and ascertain whether the differences are ordinary application of law or involve
various different steps requiring multiple, theoretical and practical applications,
▪ Step No.5 – To decide whether those differences, viewed in the knowledge of alleged
invention, constituted steps which would have been obvious to the ordinary person skilled
in the art
GRAHAM V. JOHN DEERE CO.
OF KANSAS CITY (1966)
▪ the U.S. Supreme Court established that the element of non-obviousness must be
assessed with the help of the following factors: (1) the scope and content of prior
art, (2) the differences between the prior art and the claims at issue and (3) the
level of ordinary skill in the concerned art. Furthermore, secondary considerations
may be commercial success, long felt but unresolved needs or the failure of others
to find a solution.
NON- PATENTABLE
INVENTIONS – SECTION 3
an invention whose primary or
intended use or commercial
an invention which is frivolous or
exploitation is contrary to public the mere discovery of a scientific
which claims anything obviously
order or morality or which causes principle or the formulation of an
contrary to well-established
serious prejudice to human, abstract theory;
natural laws;
animal or plant life, health or the
environment;

the mere discovery of a new a substance obtained by a mere

form of a known substance admixture resulting only in the
the discovery of a living thing or
which does not enhance the aggregation of the properties of
a non-living substance occurring
known efficacy of that substance, the components thereof or a
in nature;
unless the new product results process for producing such
improved efficacy. substance
NON-PATENTABLE
INVENTIONS
the mere arrangement, rearrangement or duplication of known devices which function independently of one another
in a known way;

a method of agriculture or horticulture;

any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human
beings, or any process for a similar treatment of animals to render them free of disease or to increase their economic
value or that of their products;

plants and animals in whole or any part thereof other than microorganisms, including seeds, varieties and species
and essentially biological processes for production or propagation of plants and animals;

a mathematical or business method, a computer programme per se or algorithms;

NON PATENTABLE
INVENTIONS
▪ a literary, dramatic, musical or artistic work or any other aesthetic creation,
including cinematographic works and television productions;
▪ a mere scheme, rule or method of performing a mental act or playing a game;
▪ a presentation of information;
▪ the topography of integrated circuits;
▪ an invention which, in effect, is traditional knowledge or an aggregation or
duplication of known properties of traditionally known component or components;
and
▪ inventions relating to atomic energy (section 4)
GLOCHEM INDUSTRIES LTD VS
CADILA HEALTHCARE LTD
(2009)
▪ Glochem Industries Ltd. [hereinafter referred to as Glochem] filed a pre-grant
opposition against the grant of the patent application filed by Cadila Healthcare
Ltd. [hereinafter referred to as Cadila/ the Applicant], titled “crystalline
clopidogrel besylate and process for preparation thereof”.
▪ The Bombay High Court held that “Section 3 (d) consists of all fields including the
field of pharmacology. Further, in this case, the court held that “the test to decide
whether the discovery is an invention or not? It is on the patent applicant to show
that the discovery has resulted in enhancement of known therapeutic efficacy of the
original substance and if the discovery is nothing other than the derivative of a
known substance, then, it must be shown that the properties in derivatives are
significantly different in terms of efficacy. So under this sub-section, the very
discovery of a new form of a known substance which does not result in the
enhancement of the known efficacy of that substance will not be treated as an
invention.
▪ In view of the advantageous effects of
Crystalline Clopidogrel besylate of
instant invention over the known
clopidogrel bisulphate and also over the
solvated forms of Clopidogrel besylate
in different characterization aspects, it
can be held that the Crystalline
Clopidogrel besylate of present
invention compound is patentable and
cannot be rejected under Section 3(d) of
the Patents Act, 1970”.
NOVARTIS V. UNION OF
INDIA (2013)
▪ a Swiss-based pharmaceutical company with a business presence in India, against
rejection by the Indian Patent Office of a product patent application for a specific
compound, the beta crystalline form of Imatinib Mesylate
▪ The Supreme Court of India said that “mere discovery of an existing substance
would not amount to the invention”. The Supreme Court of India further
▪ In this case, held that for pharmaceutical patents apart from tests of novelty,
inventive step and application, there is a new test of enhanced therapeutic efficacy
for claims that cover incremental changes to existing drugs which also Novartis’s
drug did not qualify”
▪ The Supreme Court case hinged on the
interpretation of section 3(d). The
Supreme Court decided that the
substance that Novartis sought to patent
was indeed a modification of a known
drug (the raw form of imatinib, which
was publicly disclosed in the 1993 patent
application and in scientific articles), that
Novartis did not present evidence of a
difference in therapeutic efficacy
between the final form of Gleevec and
the raw form of imatinib, and that
therefore the patent application was
properly rejected by the patent office
and lower courts.
SECTION 6: WHO CAN APPLY?
▪ (1) Subject to the provisions contained in section 134, an application for a patent for
an invention may be made by any of the following persons, that is to say,—
▪ (a) by any person claiming to be the true and first inventor of the invention;
▪ (b) by any person being the assignee of the person claiming to be the true and
first inventor in respect of the right to make such an application;
▪ (c) by the legal representative of any deceased person who immediately before his
death was entitled to make such an application.
▪ (2) An application under sub-section
▪ (1) may be made by any of the persons referred to therein either alone or jointly
with any other person.
REGISTRATION
Section 7: Application
Section 9 Provisional specification
Section 9 and 10 : complete specification (Within 12 months)
Section 11A: Publication
Section 25 Pre grant opposition
Section 11B: Request for examination
Section 12: First examination report
Section 14 : report to be considered by the controller
Section 15: controller to accept or reject
Section 43: Grant of patent
Section 25: Post grant opposition ( within 1 year)
If amended accordingly, patent shall be maintained after post grant opposition.
PROVISIONAL AND
COMPLETE SPECIFICATION-
DIFFERENCE
▪ Provisional specification is filed to secure a priority date when the invention is still
in developing stage. It discusses the scope of the invention. Hence, in a provisional
specification, covering the broad scope of inventive idea is emphasized. The
details of the invention are narrated in a sufficiently comprehensible and absolute
manner in the complete specification.
▪ Claims section is included in complete specification and not in provisional
specification
▪ Complete specification should be completed within 12 months of filing provisional
specification.
▪ The purpose of provisional specification is to ascertain nature of invention on the
other hand complete specification also explain the manner in which invention is to
be carried out,
DIFFERENCES
Complete specification includes
Title of the invention,
Preamble to the invention,
Abstract
Field of invention, model of invention
Background of invention,
Objects of invention,
Brief description of figures,
Statement of invention,
Detailed description of invention,
Claims
PROVISIONAL
SPECIFICATION
▪ provisional specification includes brief
description, scope and nature of the
invention.
▪ Relevant sections: sections 9 and 10

▪ Case law: Imperial Chemical Industries

ltd. Application (1969)
PROVISIONAL APPLICATION
▪ Form 1 ( Application for grant of patent), THE PATENTS ACT 1970 (39 of 1970) and THE PATENTS
RULES, 2003.
▪ Form 2 (Provisional Specifications), THE PATENTS ACT 1970 (39 of 1970) and THE PATENTS RULES,
2003.
▪ Form 5 ( Declaration of Inventorship) THE PATENTS ACT 1970 (39 of 1970) and THE PATENTS
RULES, 2003.
▪ Form 26 (Power of Attorney). THE PATENTS ACT 1970 (39 of 1970) and THE PATENTS RULES, 2003.
If your patent is filed by a Patent Agent then this form is necessary, otherwise not.
▪ E-filing fees (Patent Statutory fee) THE PATENTS ACT 1970 (39 of 1970) and THE PATENTS RULES,
2003 (Electronic Payment).
▪ Form 3 (Corresponding foreign patent application statement and undertakings) THE PATENTS
ACT 1970 (39 of 1970) and THE PATENTS RULES, 2003.
▪ Priority Document ( This is used for convention applications if priority date is claimed).
▪ Illustrations/Drawings of the invention
DIFFERENCES
▪ Priority date
▪ Cost-effective
▪ Mandatory
▪ International application priority date
▪ Scope
▪ Time-consuming
▪ section
11A. PUBLICATION OF
APPLICATIONS.—
▪ (1) Save as otherwise provided, no application for patent shall ordinarily be open
to the public for such period as may be prescribed.
▪ (2) The applicant may, in the prescribed manner, request the Controller to publish
his application
▪ Publish application as soon as possible.
▪ Exceptions —
▪ (a) in which secrecy direction is imposed under section 35
▪ (b) has been abandoned under sub-section (1) of section 9
▪ (c) has been withdrawn three months prior
▪ Form 9 early publication
▪ Within 18 months
11B. REQUEST FOR
EXAMINATION—
▪ (1) No application for a patent shall be examined unless the applicant or any other
interested person makes a request in the prescribed manner for such examination
within the prescribed period
▪ the application shall be treated as withdrawn by the applicant
▪ Provided that— the applicant may, at any time after filing the application but
before the grant of a patent, withdraw the application by making a request in the
prescribed manner
▪ in a case where secrecy direction has been issued under section 35, the request for
examination may be made within the prescribed period from the date of
revocation of the secrecy direction.
▪ Form 8- examination
12. EXAMINATION OF
APPLICATION.
▪ the application and specification and other documents related thereto shall be
referred at the earliest by the Controller to an examiner for making a report to him
in respect of the following matters
▪ (a) whether the application and the specification and other documents relating
thereto are in accordance with the requirements of this Act and of any rules made
thereunder
▪ (b) whether there is any lawful ground of objection to the grant of the patent under
this Act in pursuance of the application
▪ (c) the result of investigations made under section 13; and (d) any other matter
which may be prescribed.
▪ Examiner report
13. SEARCH FOR ANTICIPATION
BY PREVIOUS PUBLICATION AND
BY
▪
PRIOR CLAIM
patent made in India and dated on or after the 1st day of January, 1912
▪ published on or after the date of filing of the applicant's complete specification
▪ make such investigation for the purpose of ascertaining whether the invention, so
far as claimed in any claim of the complete specification, has been anticipated by
publication in India or elsewhere in any document
▪ section shall not be deemed in any way to warrant the validity of any patent,
14. CONSIDERATION OF THE
REPORT OF EXAMINER BY
CONTROLLER.
▪ report of the examiner received by the Controller is adverse to the applicant or
requires any amendment of the application, the specification or other documents to
ensure compliance with the provisions of this Act or of the rules
▪ give him an opportunity of being heard.
SEC 15- POWER OF CONTROLLER
TO REFUSE OR REQUIRE
AMENDED APPLICATIONS, ETC.,
IN
▪
CERTAIN
the Controller may refuse theCASE
application or may require the application,
specification or the other documents, as the case may be, to be amended to his
satisfaction before he proceeds with the application and refuse the application on
failure to do so.
16. POWER OF CONTROLLER TO
MAKE ORDERS RESPECTING
DIVISION
▪
OF APPLICATION.
A person who has made an application for a patent under this Act may, at any time
before the grant of the patent, if he so desires, or with a view to remedy the
objection raised by the Controller on the ground that the claims of the complete
specification relate to more than one invention, file a further application in respect
of an invention disclosed in the provisional or complete specification already filed
in respect of the first mentioned application for division of applications
17. POWER OF CONTROLLER TO
MAKE ORDERS RESPECTING
DATING
▪
OF APPLICATION.—
at the request of the -applicant made in the prescribed manner, direct that the
application shall be post-dated to such date as may be specified in the request, and
proceed with the application accordingly:
18. POWERS OF CONTROLLER
IN CASES OF
ANTICIPATION.—
▪ Controller refuse application if anticipated unless
▪ Relevant document published later
▪ amends his complete specification to the satisfaction of the Controller
▪ direct that a reference to that other specification shall be inserted by way of notice
to the public in the applicant's complete specification
▪ Applicant shows
▪ priority date of the other claim is later
▪ the complete specification is amended to the satisfaction of the Controller
▪ complete specification was published on or after the priority date of the applicant's
claim
19. POWERS OF CONTROLLER
IN CASE OF POTENTIAL
INFRINGEMENT.—
▪ patent has been made cannot be performed without substantial risk of
infringement of a claim of any other patent, reference to that other patent shall be
inserted in the applicant's complete specification
▪ Unless applicant proves
▪ reasonable grounds for contesting the validity of the said claim of the other patent
▪ complete specification is amended to the satisfaction of the Controller
NOT INFRINGEMENT
▪ that other patent is revoked or otherwise ceases to be in force
▪ the specification of that other patent is amended by the deletion of the relevant
claim
▪ relevant claim of that other patent is invalid
20. POWERS OF CONTROLLER TO
MAKE ORDERS REGARDING
SUBSTITUTION
▪
OF APPLICANTS
No such direction as aforesaid shall be given by virtue of any assignment or
agreement made by one of two or more joint applicants for a patent except with the
cons ent of the other joint applicant or applicants.
OPPOSITION
▪ Pre – grant opposition

▪ Post grant – opposition

▪ Section 25
PRE GRANT OPPOSITION
▪ After publication before grant, Pre-grant opposition to a patent can be made by any
person in writing to the Controller. The grounds for opposition include:
1. Wrongful Obtaining of Invention
2. Prior Publication: If the invention claimed in the patent application has been published
before the priority date of the claim in:
1. A specification filed for an Indian patent application since January 1, 1912, or
2. Any document, whether in India or elsewhere.

3. Interference with a Published Claim: If the invention claimed in the patent application
interferes with a claim in a complete specification published after the priority date of
the applicant's claim but with an earlier priority date.
4. Prior Public Knowledge or Use: If the invention claimed in the patent application was
publicly known or used in India before the priority date of the claim.
GROUNDS
Lack of Inventive Step
Not an Invention or Not Patentable
Insufficient Description
Failure to Disclose Information
Delay in Convention Application
Incorrect Source or Geographical Origin
Indigenous knowledge
DIFFERENCES
▪ Within 6 months oppose it

▪ 3 months to the applicant to give counter

▪ Form 7 A

▪ Any person

▪ Post opposition

▪ Notice of opposition

▪ Within 1 year

▪ Interested party

▪ It includes an individual involved in or promoting research in the field to

which the patent pertains. It may also refer to an entity that has a
manufacturing, trading, or financial interest in the patented goods. Section
2(1)(t)
POST-GRANT
OPPOSITION
▪ At any time 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 in the
prescribed manner on any of the following
grounds
OPPOSITION
BOARD
▪ 3 members constituted by the controller

▪ Decision- 3 months

▪ examine the notice filed, along with statements

and evidence of both parties, and issue a report
with reasons regarding each ground challenged
by the opponent.

▪
Person

Fees

Infringement
DIFFERENC
Time
ES
Form 7A for Pre- grant and 7 for Post- grant

Purpose

Appeal
SECTION 29- 33
EXCEPTIONS TO
ANTICIPATION
▪ 29. Anticipation by previous publication- 1
Jan 1912
▪ 30. Anticipation by previous
communication to Government.
▪ 31. Anticipation by public display, etc.

▪ 33. Anticipation by use and publication

after provisional Specification.—
43. GRANT OF PATENTS.
▪ 1) Where an application for a patent has been found to be in order for grant of the
patent and either—
▪ (a) the application has not been refused by the Controller
▪ (b) the application has not been found to be in contravention of any of the
provisions of this Act
▪ (2) On the grant of a patent, the Controller shall publish the fact that the patent has
been granted and thereupon the application, specification and other documents
related thereto shall be open for public inspection.

▪ Section 45- date of filing as date of registration

SECTION 47-EXCEPTIONS
▪ Product patent –use , import for Government own use use
▪ Process patent- government own use
▪ experiment or research including the imparting of instructions to pupils
▪ any medicine or drug, the medicine or drug may be imported by the Government
for the purpose merely of its own use or for distribution in any dispensary, hospital
SECTION 48. RIGHTS OF
PATENTEES.—

(b) Process patent- to prevent

(a) Product patent - to prevent
third parties, who do not have
third parties, who do not have
his consent, from the act of
his consent, from the act of
using, offering for sale, selling
making, using, offering for sale,
or importing for those purposes
selling or importing for those
the product obtained directly by
purposes that product in India
that process in India
SECTION 53- TERM

Non-
20 years
renewal
SECTION 63-SURRENDER OF
PATENTS
▪ —(1) A patentee may, at any time by giving notice in the prescribed manner to the
Controller, offer to surrender his patent.
▪ (2) Where such an offer is made, the Controller shall publish the offer in the
prescribed manner, and also notify the interested party
▪ (3) Any person interested may, give opposition to the surrender
▪ (4) If the Controller is satisfied after hearing the patentee and any opponent, if
desirous of being heard, that the patent may properly be surrendered, he may
accept the offer and, by order, revoke the patent.
REVOCATION
OF PATENT-
SECTION 64
▪ Who can revoke ?

▪ Interested person or central government

▪ Through Appellant board

▪ Through High court

GROUNDS
Invention claimed in a valid claim of earlier priority date in another Indian patent
Patent granted to a person not entitled under the Indian Patent Act
Patent obtained wrongfully in violation of petitioner's rights
Subject of a claim not meeting the definition of an invention under the Indian Patent Act
Invention not new, obvious, or lacking inventive step
Invention not useful
Specification does not sufficiently describe the invention or method of performing it
Claims not clearly defined or not based on disclosed matter
Patent obtained based on false suggestion or representation
GROUNDS
Subject of claim not patentable under Indian law

Invention secretly used in India before priority date

Failure to disclose required information or furnishing false information

Contravention of secrecy directions or filing for a patent outside India in violation of law

Amendment of specification obtained by fraud

Incorrect disclosure of source or geographical origin of biological material used in the invention

Invention anticipated based on knowledge within local or indigenous communities in India or elsewhere
REVOCATION
▪ Section 65- Revocation of patent or
amendment of complete specification on
directions from Government in cases
relating to atomic energy.
▪ Section 66.- Revocation of patent in public
interest.
▪ Section 85-Revocation by Controller
for Non-Working:
DR. ALOYS WOBBEN & ANR.
VS. YOGESH MEHRA & ORS
▪ that, in accordance with Section 64 of the Patent Act, 1970, a patent may be
revoked either through the submission of a revocation petition to the Intellectual
Property Appellate Board (IPAB) or through the filing of a counterclaim in a lawsuit
alleging patent infringement. The patent holder cannot be sued in both cases at
the same time by the person challenging the validity of the patent. The challenger
won’t be able to use the other remedy if the court tries to use one of the remedies.
▪
LICENSING

Voluntary compulsory
 84. Compulsory licences.—

(1) application to controller

a) that the reasonable requirements of the public

COMPULSOR with respect to the patented invention have not
Y LICENSE- been satisfied

SECTION (b) that the patented invention is not available to

the public at a reasonably affordable price, or
84-92
(c) that the patented invention is not worked in
the territory of India.

only after expiration of 3 years

CONTROLLER SHALL TAKE
INTO ACCOUNT
the nature of the invention, the time which has elapsed

the ability of the applicant to work the invention to the public advantage;

the capacity of the applicant to undertake the risk in providing capital and working the invention, if the application
were granted

as to whether the applicant has made efforts to obtain a licence from the patentee

Provided that this clause shall not be applicable in case of national emergency or other circumstances of extreme
urgency or in case of public non-commercial use or on establishment of a ground of anticompetitive practices
adopted by the patentee
▪ National emergency: section 92
▪ Extreme urgency : section 92
▪ Public non commercial use : section 92
▪ Public health crisis: section 92
▪ In case of export to less developed countries with no or insufficient manufacturing
capacity to address public health crisis: section 92A
SECTION 85- REVOCATION
1) Where, in respect of a patent, a compulsory licence has been
granted, the Central Government or any person interested may, after the
expiration of

2 years from the date of the order granting the first compulsory licence,

apply to the Controller for an order revoking the patent

 87.
Notice of
PROCEDURE opposition
FOR DEALING
WITH
APPLICATION
S UNDER
SECTIONS 84 Reasonable
AND 85 opportunity to
the patentee
90. TERMS AND CONDITIONS
OF COMPULSORY LICENCES
(i) that the royalty and other remuneration, if any is reasonable, having regard to the nature of the invention.

(ii) that the patented invention is worked to the fullest extent

(iii) that the patented articles are made available to the public at reasonably affordable prices;

(iv) that the licence granted is a non-exclusive licence;

(v) that the right of the licensee is non-assignable;

(vi) that the licence is for the balance term of the patent unless a shorter term is consistent with public interest;
91. LICENSING OF RELATED
PATENTS
▪ 1) Notwithstanding anything contained in the other provisions of this Chapter, at
any time after the sealing of a patent,
▪ any person who has the right to work any other patented invention either as
patentee or as licensee thereof, exclusive or otherwise, may apply to the Controller
for the grant of a licence of the first mentioned patent on the ground that he is
prevented or hindered without such licence from working the other invention
efficiently or to the best advantage possible.
SECTION 92
If the Central Government is satisfied, in respect of any patent in force in
circumstances of
▪ national emergency
▪ extreme urgency
▪ in case of public noncommercial use
▪ Public health crisis
▪ Can issue compulsory licence.
▪ If the controller is satisfied that any such circumstance exist, he shall not apply any
procedure as mentioned under section 87.
SECTION 92A- EXPORT OF
PHARMA DRUGS
▪ 1) Compulsory licence shall be available for
manufacture and export of patented pharmaceutical
products to any country having insufficient or no
manufacturing capacity in the pharmaceutical sector
for the concerned product to address public health
problems.
▪ (2) The Controller shall 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.
SECTION 94- TERMINATION
OF COMPULSORY LICENSE
1) On an application made by the patentee or any other person deriving title or interest in the
patent, a compulsory licence granted under section 84 may be terminated by the controller, if
the circumstances that gave rise to the grant thereof no longer exist and such circumstances
are unlikely to recur.

Provided that the holder of the compulsory licence shall have the right to object to such
termination.
BAYER CORPORATION V.
NATCO PHARMA (2012)
▪ India’s first ever compulsory license was granted by the Patent Office on March 9,
2012, to Hyderabad-based Natco Pharma for the production of generic version of
Bayer’s Nexavar, an anti-cancer agent used in the treatment of liver and kidney
cancer.
▪ It was held in this case that only 2% of the cancer patient population had an easy
access to the drug and that the drug was being sold by Bayer at an exorbitant price
of 2.8 lakh INR for a month’s treatment.
▪ Further, on the ground that Nexavar was being imported within the territory of
India, the Indian Patent Office issued a compulsory license to Natco Pharma, which
assured that the tablets would be sold for Rs. 8,880/- per month.
PRINCIPLE OF EXHAUSTION
▪ A patent grants the Patent holder exclusive rights to prevent others from making,
using, selling, offering for sale in the territory of patent grant or importing an
invention into the territory of patent grant.
▪ Once a legitimate sale of the patented invention is made, the rights of the patent
holder with respect to the product are exhausted and this is called as the Doctrine
of Exhaustion or First Sale Doctrine.
▪ As per the Doctrine of exhaustion the first unrestricted sale of a patented item
exhausts the patentee’s control over that particular item. In other words, if patented
product is sold without any restriction, the Patent holder loses his rights over it.
 ▪ The rationale underlying the Doctrine of
exhaustion is that a patent holder, who
has already been rewarded through the
first sale must not be allowed to profit
repeatedly on the same good by
RATIONALE controlling its use, resale or distribution.
Under the doctrine, a patent holder’s
exclusive right as manifested in a patent
claim ends at the first sale of patented
goods.
TYPES

INTERNATIONAL REGIONAL NATIONAL

EXHAUSTION EXHAUSTION EXHAUSTION
PARALLEL IMPORTS- SECTION
107A
▪ Exhaustion Provision in India
▪ The principle of exhaustion manifests under many laws as parallel imports
exception. As per the exception, importation of a patented product into a country
after it has been purchased in another country from the patent holder or a person
authorized by him does not amount to patent infringement. The Indian provision
with respect to parallel imports reads as follows:
▪ “107A. Certain acts not to be considered as infringement. …
▪ (b) importation of patented products by any person from a person who is duly
authorised under the law to produce and sell or distribute the product, shall not be
considered as an infringement of patent rights.”
INFRINGEMENT- SECTION
104-115

Non Literal ( Doctrine

Literal
of Equivalence )
DOCTRINE OF EQUIVALENTS

When two devices (the one that is claimed and the other being alleged for infringement) operate in
substantially the same way, and accomplish substantially the same result, and if so, they may be the
same, even though they differ in name, form, or shape.

The doctrine is applied to ascertain whether there is an infringement by excluding any insubstantial,
minor, or trivial changes that are designed to deprive the patentee of the benefits of his invention.13 The
doctrine is applicable only in cases where the variation or difference between the product or process and
the patented claim is insignificant, insubstantial, and not essential to the patented claim.
 language of the patent claims

DOCTRINE the overall purpose of the invention

OF
EQUIVALENC
E the knowledge of one skilled in the
art

whether the change made by the

accused infringer was only an
insubstantial variation.
POLAROID CORP. VS. EASTMAN
KODAK CO (1986)
▪ Polaroid claimed that Kodak had violated its patent right related to instant
photography. The central dispute revolved around Kodak’s instant photography
system, which Polaroid argued had utilised its patented technology. Polaroid
believed that four of its patents related to instant photography, including the
process of developing an instant image and the instant camera itself, were
infringed by Kodak. After a prolonged trial, the court ruled in favour of Polaroid,
determining that Kodak had indeed infringed upon Polaroid’s patents
DEFENCES
▪ Parallel Imports – section 107A

▪ Bolar Exception – Section 107A

▪ Government Use

▪ Section 47 and Section 107

▪ Research and experimentation

▪ Section 64
DEFENSES – 107
▪ 1) In any suit for infringement of a patent every ground on which it may be revoked under
section 64 shall be available as a ground for defence.
▪ (2) In any suit for infringement of a patent by the making, using or importation of any machine,
apparatus of other article or by the using of any process or by the importation, use or
distribution or any medicine or drug, it shall be a ground for defence that such making, using,
importation or distribution is in accordance with any one or more of the conditions specified in
section 47.
 ▪ For the purposes of this Act,—
▪ (a) any act of making, constructing,
using, selling or importing a patented
invention solely for uses reasonably related to
the development and submission of
information required under any law for the
time being in force, in India, or in a country
SECTION other than India, that regulates the
manufacture, construction, use, sale or import
107A- of any product ( Bolar Exception)
▪ (b) importation of patented products
by any person from a person who is duly
authorised under the law to produce and sell or
distribute the product, shall not be considered
as a infringement of patent rights.
▪ ( Parallel Imports)
BAYER CORPORATION VS. UNION
OF INDIA & ANR. (2009)
▪ Natco applied to Bayer for permission to export 1 kilogram of the active pharmaceutical
ingredient Sorafenib to China to conduct a clinical trial and research the development of
the drug for regulatory purposes. Bayer rejected the application and filed a writ petition,
arguing that the grant of such permission to Natco would be contrary to the provisions of
Section 107A, as the transaction would be tantamount to commercial activity and hence
infringes Bayer’s rights. The Delhi High Court rejected Bayer’s plea and held that Section
107-A is in line with the TRIPS Agreement, International guidelines as well as Articles 47
and 21 of the Indian constitution, therefore, decided that the Indian Constitution upholds
export as a valid part of the bolar exemption, therefore, exporting for research and
clinical trials come under the scope of Section 107-A

▪ It can be concluded that due to limited precedence of usage of Bolar exemption for the
marketing authorizations and clinical trials by pharmaceuticals companies so far in India,
we interpret marketing authorizations and clinical trials are also part of Bolar exemption.
MONSANTO CANADA INC. V.
SCHMEISER,
▪ it was defined to mean 'any act that interferes with the full enjoyment of the
monopoly granted to the patentee' or 'any activity that deprives the inventor, in
whole or in part, directly or indirectly, of full enjoyment of the monopoly ' Hence, it
is the invention that defines the boundaries of the monopoly rights that shall be
conferred upon the patentee.l However, this monopoly shall end if the limits of the
claims as specified in the specification by the patentee fall under the mischief of
any of the grounds that culminate to revoke his patent under section 64 or if the
claims are absolutely beyond the ambit of the patentable inventions.
NEON LABORATORIES PVT. LTD.
V. TROIKAA PHARMA LIMITED
[2011
▪
(45) PTC 357 (BOM)]
• Issue: If the person opposing the grant of a patent files his opposition and also
prays that he should be heard on the amended claims as well, then, whether it is
incumbent upon the authorities to grant a personal hearing to the Opponent? •
▪ Observations: The Court in the present case observed that - “the opportunity
provided in Section 25(1) is not an empty formality. Once the Legislature has
devised such a safeguard in public interest and provided for pre-grant opposition,
so also, set out the manner in which the same has to be dealt with, then, we cannot
place a narrow interpretation on the said provision so as to defeat the legislative
mandate.
▪ In this context, it must be understood that the opposition under Section 25(1) is to
the grant of a patent. If the opposition is raised to the grant, then, until the same is
dealt with, no patent can be granted. If the original claim/application is amended,
and the amendments are also opposed, then, a personal hearing to the objector on
the amended claims is required to be given if specifically requested
DECISION
▪ The Court held that, in this case, the Controller has not given the Petitioner any
chance of hearing even though the Petitioner admittedly requested for the same.
Therefore, the Petitioner’s statutory right of making submissions during the hearing
was denied. But the patent was granted to the Respondent by denying the
Petitioner any chance to make a submission on his representation. • The High Court
finally set aside the grant of patent and directed the Controller to give a hearing to
the Petitioner with respect to the amended claims filed as well.
F. HOFFMAN-LA ROCHE LTD. V.
CIPLA LTD. (2012)
▪ Hoffman-La Roche and Pfizer (“the Plaintiffs”) were the joint claimants of a patented
drug called Erlotinib. This drug was used in cancer treatment and was claimed to be a
breakthrough in cancer research as the drug eliminated cancer cells without causing
much harm to other cells. Plaintiff was granted patents in India over this invention on
6th July 2007.
▪ Cipla, an Indian pharmaceutical company (“the Defendant”) produced and planned to
sell a generic version of the same drug.
▪ TARCEVA
▪ It was noted in January 2008 that Cipla intends to release a nonexclusive variety of "Erlotinib."
As a result, Hoffman-La Roche Ltd. filed an infringement claim against Cipla. Hoffman-La
Roche Ltd. assured that Cipla had violated Patent No. 774, also known as "Erlotinib
Hydrochloride," which he owns a license to.
▪ In appeal, the division bench reversed the order partially and clarified that
infringement has to be measured by comparing the contents of a patent and the
alleged infringing product.
▪ The court adopted the “Markmen Test” to determine whether infringement took place.
The test involves determining the meaning and scope of patent claims and then
comparing it with the alleged infringing item.
▪ The Division Bench, therefore, found Defendant’s product to have infringed the
Plaintiffs’ patent and awarded Roche a sum of Rs.5,00,000.
BAJAJ AUTO LIMITED VS. TVS
MOTOR COMPANY LIMITED JT
2009 (12) SC 103
▪ The case involved the unauthorized application and use of the patented Digital
Twin Spark Ignition (DTSi) technology by TVS Motor Company (Defendant). The
DTSi was the intellectual property of BAJAJ auto limited (Plaintiff). Plaintiff had
applied for a patent application for the technology in the year 2002 and was
granted a patent in 2005.
▪ he SC dismissed the appeal by stating that all matters in relation with IPR
infringements must be expeditiously decided by the trial courts especially at the
point of granting/ refusing injunctions.
▪ The HC used the Doctrine of Equivalence and stated that, “It is also clear as per the
decisions, for the purpose of deciding the novel features to constitute “pith and
marrow” a purposive construction has to be given in order to make it essential
requirement of the invention that any variant would follow outside the monopoly
even if it could not have material effect upon the working of invention.
DIMMINACO A.G. V. CONTROLLER
OF PATENTS AND DESIGNS,
(2002)
▪
I.P.L.R. 255 (CAL)
The appellant had applied for a patent for the process that he had invented for the
creation of a “Bursitis vaccine” to protect poultry from Bursitis infection. The
process dealt with the creation of a Bursitis vaccine and involved the use of a live
virus both during such creation and in the final vaccine.
▪ The Court’s interpretation, leaning towards the rationale provided by the appellate
counsel, noted that the mere fact that a product contained a living organism would
not render the manner of its manufacture un-patentable. The patentability instead
would have to be determined through the test of novelty and usefulness.
NOVARTIS V. U.O.I.(2012)
▪ Novartis International AG which invented a drug named “Gleevic” which was an
anti-cancer drug. It was used for the treatment of Chronic Myeloid Leukemia (CML)
and Gastrointestinal Stromal Tumours (GIST) but the major thing was it was a beta
crystalline form of Imatinib mesylate.
▪ it was said that it lacks the requirement of novelty and non-obviousness therefore, it
is not capable of patented.
▪ It was further held that the ever greening of the patent is not permitted; introducing
the minor modifications in the generic drugs is not novelty and hence cannot be
patented. After that Novartis filed Special Leave Petition in the Supreme Court in
2009 against the order of IPAB.
DECISION
▪ It was held by the court that the beta crystalline form of Imatinib Mesylate is only a
new and modification of the substance Imatinib Mesylate. It was further elaborated
by the court that “Efficacy” in section-3(d) only means “Therapeutic Efficacy” and
the properties which are directly related with the drug is its therapeutic efficacy.
After comparing both the forms of the said drug, the court held that the properties
of the drug in question do not contribute to the increased therapeutic efficacy.
REMEDIES- SECTION 108
Injunction

Account of Profits

Damages

Forfeiture
2002 AMENDMENT
The term of a patent has been extended to 20 years in respect of all inventions.

The following have been added :plants and animals (other than micro-organisms) including seeds, varieties and species
and biological processes for production or propagation of plants and animals

a mathematical or business method or a computer program per se or algorithms

a literary, dramatic, musical or artistic work or any other aesthetic creation including cinematographic works and television
productions

a mere scheme or rule or method of performing mental act or method of playing game

a presentation of information

topography of integrated

traditional knowledge
2002
AMENDMENT
▪ In process patent infringement suits, the defendant
may be directed to prove that the process used by
him to obtain a particular product, which is identical
to the product of the patented process, is different
from the patented process. The concept of reversal
of burden of proof has thus been introduced.
▪ Section 107A – Bolar exemption

▪ Forfeiture of goods

▪ additional ground for the grant of a Compulsory

License has been inserted, viz. "the patented
invention is not worked in the territory of India".
2005 AMENDMENT
Product patent

Introduction of a provision for enabling grant of compulsory licence for export of medicines to countries which have
insufficient or no manufacturing capacity, to meet emergent public health situations- section 92A

Modification in the provisions relating to opposition procedures with a view to streamlining the system by having
both Pre-grant and Post-grant opposition in the Patent Office

Section 107A (b) provided for 'parallel import'. 'duly authorised under the law’. Section 3 (d)

Extension of time for filing pre-grant opposition- 6 months

2021
AMENDMENT
▪ IPAB abolished by Tribunal Reforms Act,
2021
▪ Matters to be transferred to the High Court

▪ Section 117A- Transfer to High Court

▪ Section 117E- appearance of controller in

High court
▪ Section 124- A- Adjudication of penalties
DESIGNS
DEFINITION
▪ Section 2(d)- the features of shape, configuration, pattern or ornament or
composition of lines or color or a combination thereof applied to any article
whether 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.”
▪ Section 2(a) “article” means any article of manufacture and any substance, artificial,
or partly artificial and partly natural; and includes any part of an article capable of
being made and sold separately;
 ▪ any new or original design

CRITERIA – ▪ not previously published in any country

▪ not contrary to public order or morality
SECTION ▪ applied to an article

5(1) ▪ industrial process

▪ visible in the final article
WHO CAN APPLY

Person
Legal
individually or Assignee
representative
jointly
SECTION 4- WHAT IS NOT
DESIGN
▪ (a) is not new or original
▪ (b) 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
▪ (c) is not significantly distinguishable from known designs or combination of
known designs
▪ (d) comprises or contains scandalous or obscene matter, shall not be registered.
REGISTRATION
PROCESS
▪ Application- section 5

▪ Criteria, examination

▪ Application Submission

▪ Examination

▪ Class Registration

▪ Registration Decision

▪ Abandonment

▪ Effective Date
SECTION 6- PREVIOUS
PUBLICATION
▪ Registration Scope- any or all articles
▪ Class Determination
▪ Registration Extension not beyond the term
▪ Previous Registration Consideration
▪ If the applicant becomes the registered proprietor of the previously registered
design during the application process, the provisions regarding registration and
validity apply as if the applicant had been the registered proprietor from the start
of the application.
7. PUBLICATION OF
PARTICULARS OF
REGISTERED DESIGNS
▪ .—The Controller shall, as soon as may be
after the registration of a design, cause
publication of the prescribed particulars of
the design to be published in such manner
as may be prescribed and thereafter the
design shall be open to public inspection.
SECTION 8-
POWERS OF ▪ Controller's Decision on Claim:
CONTROLL ▪ The claimant must demonstrate entitlement to the
design or its interest through assignment,
ER agreement, or operation of law.
▪ Consent Requirement for Joint Applicants:
REGARDIN ▪ Conditions for Direction Based on Assignment
or Agreement:
G ▪ Joint Applicants' Death

SUBSTITUTI
ON
SECTION 9. CERTIFICATE OF
REGISTRATION

(1) The Controller shall grant a certificate of registration to the

proprietor of the design when registered.

(2) The Controller may, in case of loss of the original certificate, or in

any other case in which he deems it expedient, furnish one or more
copies of the certificate.
 SECTION ▪ 1) There shall be kept at the patent office a book
called the register of designs, wherein shall be
10. entered the names and addresses of proprietors
of registered designs, notifications of
assignments and of transmissions of registered
REGISTER designs, and such other matter as may be
prescribed and such register may be maintained
OF wholly or partly on computer, floppies or
diskettes, subject to such safeguards as may be
DESIGNS prescribed.
 SECTION-
11.
COPYRIGH ▪ 10 years
▪ Extension 5 years
T ON
REGISTRATI
ON
EXCLUSIVE RIGHTS

Sale to apply the Import To pubish or expose

design to an y article for sale
MICROFIBRES INC. V. GIRDHAR &
CO., 2009 SCC ONLINE DEL 1647
▪ Microfibres and Girdhar are engaged in the business of upholstery fabrics. The impugned judgment held
that the designs of Girdhar were a substantial reproduction of the Microfibres artistic works. Microfibres
were however Aggrieved by the judge's decision that the designs in question were capable of being
registered under the Designs Act, 2000 and in the event of were not capable of being protected under the
Copyright Act, 1957. Microfibres had not sought registration under the Designs Act.
▪ The court rejected the plea of company ‘Microfiber’ by stating that:-
• Company ‘Girdhar’ have not incorporated the designs and artistic patterns of the former
• The absence of design registration ceases of Microfiber to entitle any relief.
• The aim and object of the work is significant to determine while deciding the nature of protection applied
for.
• Drawings created for application to fabric must be allotted as designs and had no reasoning for
independent existence.
• The Bench went on to conclude that the design, which was a slight variant of the original artistic work, was
industrially applied to an article to produce a product, can only claim registration under the Designs Act
and not under the Copyrights Act, irrespective of the intention of the creator.
DECISION
▪ The original painting was said to be entitled to copyright protection, but the
design derived therefrom for the purposes of industrial production were said to
be covered by the limitations placed in Section 15 of the Copyright Act and the
same be protected if it was registered as a Design under the Designs Act.
SECTION 12. RESTORATION
OF LAPSED DESIGNS
▪ Where a design has ceased to have effect by reason of failure to pay the fee for the
extension of copyright under sub-section (2) of section 11, the proprietor of such
design or his legal representative and where the design was held by two or more
persons jointly, then, with the leave of the Controller one or more of them without
joining the others, may, within one year from the date on which the design ceased
to have effect, make an application for the restoration of the design in the
prescribed manner on payment of such fee as may be prescribed.
SECTION 19. CANCELLATION
OF REGISTRATION.
▪ 1) Any person interested may present a petition for the cancellation of the
registration of a design at any time after the registration of the design, to the
Controller on any of the following grounds, namely:—
▪ (a) that the design has been previously registered in India
▪ (b) that it has been published in India or in any other country prior to the date of
registration
▪ (c) that the design is not a new or original design
▪ (d) that the design is not registrable under this Act
▪ (e) that it is not a design as defined under clause (d) of section 2.
RECKITT BENCKISER (INDIA)
LTD. V. WYETH LTD (2010)
▪ Reckitt had claimed infringement by Wyeth of the design registered by Reckitt, having
Design No.193988, dated December 5, 2003, in Class 99-00 with respect to an
S-shaped spatula that was to be used for applying a cream for hair removal. However,
Wyeth had contended that Reckitt’s design lacked originality insofar as the same had
also been registered, published as well as used in countries other than India before
the Indian registration had taken place
▪ While dealing with the matter, the Single-judge Bench had decided that prior
registration in foreign registrations such the U.K., U.S.A. and Australia should be
considered as ‘prior disclosure’ as per Section 4(b) of the Designs Act, 2000
▪ The Court held that if any person who has applied for registration in a convention country
abroad fails to make an application for registration of the design in India within six months
from the date on which the design in India within six months from the date on which the design
was applied for in a convention country, then such an application will lose its entitlement to
priority
industrial or other exhibition to which the
provisions of this section have been
extended by the Central Government by
notification in the Official Gazette, without
the privity or consent of the proprietor, shall
not prevent the design from being
registered or invalidate the registration
SECTION
21.
PROVISION
gives to the Controller previous notice in the
prescribed form S AS TO
EXHIBITION
S
application for registration is made within six
months from exhibition
SECTION 22. PIRACY OF
REGISTERED DESIGN.
▪ During the existence of copyright in any design it shall not be lawful for any person
▪ 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 license
▪ to import for the purposes of sale
▪ 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
PASSING OFF
▪ MICOLUBE INDIA LIMITED VS. RAKESH KUMAR & ORS. (CS(OS) NO. 384/2008)
▪ Plaintiff was in the business if manufacturing and marketing petroleum products and other allied
and cognate goods. It claimed to have created two novel designs in containers used for selling the
said products and obtaining registration for the same. When the Plaintiff found out that the
Defendants were selling their goods in identical containers and are thus committing piracy of
registered design of the Plaintiff, the Plaintiff instituted an action for permanent injunction against
the Defendants.
▪ Passing off action can be passed-
▪ That there was goodwill or reputation attached to the goods or services which the Plaintiff;
▪ ii. That the Defendant had employed mis-representation which made the consumers believe that
the Defendants goods were those of the Plaintiff. It was no defence in an action of passing off that
the mis-representation was unintentional or lacked fraudulent intent
▪ iii. That the Defendant's action had caused damage or was calculated to cause damage.
▪ The Court ruled that while simultaneous registration as a Trade Mark and design was not
permitted, there was no bar on a design being used as a Trade Mark post its registration. The
Court therefore held that dual protection under Design law and Trade Mark law was permitted.
DECISION
▪ The plaintiff would be entitled to institute an action of passing off in respect of a
design used by him as a trade mark provided the action contains the necessary
ingredients to maintain such a proceeding.
▪ While Section 2(d) of the Designs Act excludes from the definition of a design, any
trademark which is defined as such in clause (v) of sub-Section (1) of Section 2 of
the 1958 Act or property mark, as defined in Section 479 of the IPC, or any artistic
work as defined in clause (c) of Section 2 of the Copyright Act –
▪ the use of the design as a trademark post its registration, is not stipulated as a
ground for cancellation under Section 19 of the Designs Act.
GORBATSCHOW WODKA K.G.
V. JOHN DISTILLERIES LIMITED
2011 (47) PTC 100
▪ The Ld. Judge granted an interim injunction in a passing off action against a
defendant, which had a registered design in its favour. The plaintiff in that case filed
a passing off action against the defendant in which he asserted that the shape of its
Wodka bottles was distinctive and formed an intrinsic part of its goodwill and
reputation.
▪ The fact that the Defendant has obtained registration under the Designs Act, 2000,
does not impinge the right of the Plaintiff to move an action for passing off.
▪ Section 27(2) of the Trade Marks Act, 1999 provides that nothing in the Act shall be
deemed to affect the right of action against any person for passing off goods or
services.
▪ A potential customer for such a washing machine will also include persons who had
visited houses of others and have seen or heard reports about the Plaintiff’s products.
These persons will more often than not only have had a fleeting glimpse or distinct view of
the Plaintiff’s product in another household but may have received very positive reports
about the machine from the purchaser thereof without naming the brand. Such persons
may have also seenthe Plaintiff’s machine figure in advertisements or photogra phs and
with the passage of time may have a fleeting recollection thereof, which are largely based
on its distinctive shape and appearance.
▪ If such a person were to come across the Defendant’s washing machine, such a person
would immediately believe that this is exactly the machine he or she saw either at the
residence of somebody else or in the photographs or advertisements seen earlier. In such
circumstances, such person would immediately assume that the Defendant’s products
were what he or she had seen and/or heard so highly spoken about. Such a person would
purchase the Defendant’s product on the belief that it was the Plaintiff’s product or was
associated with the Plaintiff. This clearly constitutes passing off
DEFENSES
Design different

Design applied with consent

Plaintiff , not proprietor

Doesn’t meet eligibility criteria

Not new
GEOGRAPHICAL
INDICATION
DEFINITIONS
▪ Section 2 (b) “authorised user” means the authorised user of a geographical
indication registered under section 17
▪ Section 2 (e) “geographical indication”, in relation to goods, means an indication
which identifies such goods as agricultural goods, natural goods or manufactured
goods as originating, or manufactured in the territory of a country, or a region or
locality in that territory, where a given quality, reputation or other characteristic of
such goods is essentially attributable to its geographical origin and in case where
such goods are manufactured goods one of the activities of either the production or
of processing or preparation of the goods concerned takes place in such territory,
region or locality, as the case may be.
DEFINITIONS- PRODUCER
▪ Section (k) producer
▪ in relation to goods, means any person who,—
▪ (i) if such goods are agricultural goods, produces the goods and includes the
person who processes or packages such goods
▪ (ii) if such goods are natural goods, exploits the goods
▪ (iii) if such goods are handicraft or industrial goods, makes or manufactures the
goods, and includes any person who trades or deals in such production,
exploitation, making or manufacturing, as the case may be, of the goods
▪ Section 2 (n) registered proprietor
▪ in relation to a geographical indication, means any association of persons or of
producers or any organisation for the time being entered in the register as
proprietor of the geographical indication;
 NATURAL AGRICULTURAL
GOODS GOODS
TYPES OF
GOODS

MANUFACTURED
GOODS
 Producer
WHO CAN
APPLY
Authorized user
SECTION 9- NOT
REGISTRABLE
the use of which would be likely to deceive or cause confusion

the use of which would be contrary to any law for the time being in force

which comprises or contains scandalous or obscene matter

which comprises or contains any matter likely to hurt the time being in force; religious susceptibilities of any
class or section of the citizens of India which would otherwise be disentitled to protection in a court

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

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.
REGISTRATION PROCESS- S .
11- 16
REGISTRATION PROCESS

1 2 3 4 5 6

STEP 1 : Filing of STEP 2 and 3: STEP 4: Show STEP 5: STEP 6: STEP 7:

application Preliminary cause notice Publication in the Opposition to Registration
Section 11 scrutiny and geographical Registration (
examination indications within 3 months, 2
( applicant remedy Journal ( within 3 months counter
1 month) months of statement)
acceptance)
Section 11
SECTION 11- APPLICATION
• Any association of persons or producers or any organisation or authority established by or under any law for the time being
in force representing the interest of the producers of the concerned goods, who are desirous of registering a geographical
indication in relation to such goods shall apply in writing to the Registrar in such form and in such manner
• Geographical indication (GI) serves to designate goods as originating from a specific territory, region, or locality in a
country.
• This designation is based on specific qualities, reputation, or other characteristics of the goods that are exclusively or
essentially due to the geographical environment, including natural and human factors.
• The production, processing, or preparation of these goods must take place in the designated territory, region, or locality.

• The class of goods to which the geographical indication applies must be specified.

• A geographical map of the territory, region, or locality where the goods originate or are manufactured should be included.

• Details about the appearance of the geographical indication, whether it consists of words, figurative elements, or both, must
be provided.
• Information about the producers of the goods proposed for initial registration under the geographical indication should be
included as prescribed.
SECTION 12. WITHDRAWAL OF
ACCEPTANCE.—
▪ Where, after the acceptance of an application for registration of a geographical
indication but before its registration, the Registrar is satisfied,—
▪ (a) that the application has been accepted in error
▪ (b) that in the circumstances of the case the geographical indication should not be
registered or should be registered subject to conditions or limitations or to
conditions additional to or different from the conditions or limitations subject to
which the application has been accepted, the Registrar may, after hearing the
applicant if he so desires, withdraw the acceptance and proceed as if the
application had not been accepted.
13. ADVERTISEMENT OF
APPLICATION.—(
▪ 1) When an application for registration of a geographical indication has been
accepted, whether absolutely or subject to conditions if any, subject to which it has
been accepted, to be advertised in such manner as may be prescribed.
▪ (2) Where after advertisement of an application—
▪ (a) an error in the application has been corrected
▪ (b) the application has been permitted to be amended under section 15
▪ the Registrar may, in his discretion cause the application to be advertised again o
SECTION 14- OPPOSITION
1. Notice of Opposition: Any person can oppose the registration of intellectual property within
three months of its advertisement.
2. Counter-Statement: The applicant must respond to the opposition by submitting a
counter-statement within two months of receiving the notice. Failure to do so will result in the
application being deemed abandoned.
3. Evidence Submission: Both the opponent and the applicant can submit evidence supporting
their positions within the prescribed time and manner.
4. Hearing: The Registrar will provide an opportunity for both parties to be heard if they desire.
5. Decision: After considering the evidence and hearing both parties, the Registrar will decide
whether to permit the registration and may impose conditions or limitations if necessary. The
Registrar may also consider objections not initially raised by the opponent.
6. Correction or Amendment: The Registrar has the authority to permit corrections or
amendments to the notice of opposition or counter-statement upon request, on terms
deemed just.
SECTION 15. CORRECTION
AND AMENDMENT.—
▪ The Registrar may, on such terms, as he thinks just, at any time, whether before or
after acceptance of an application for registration under section 11, permit the
correction of any error or in connection with the application or permit an
amendment of the application:
SECTION 16- REGISTRATION

If an application for a geographical indication is accepted and not opposed within the specified
time or if opposition is resolved in favor of the applicant, the Registrar will register the
geographical indication and any authorized users mentioned in the application.

Certificate of Registration:

Abandonment due to Default: ( within 12 months )

SECTION 17. APPLICATION
FOR REGISTRATION AS
AUTHORISED USER
▪ (1) Any person claiming to be the producer of the goods in respect of which a
geographical indication has been registered under section 16 may apply in writing
to the Registrar in the prescribed manner for registering him as an authorised user
of such geographical indication.
▪ Process of registration is same
SECTION 18- DURATION OF
REGISTRATION

10 years Authorized users – Renewal 10 years Application for

10 years restoration within 1
year
SECTION 20- PASSING OFF

Unregistered trademark

Passing of remedy
SECTION 21-
RIGHTS
▪ Right to sue

▪ Right to use

▪ Rights of authorized user

SECTION 22- INFRINGEMENT
• Infringement occurs when a person not authorized to use a registered geographical
indication:
• Uses the indication in a way that misleads consumers about the true origin of goods.
• Engages in unfair competition including passing off in respect of registered
geographical indication.
• Makes false allegations or engages in acts that create confusion or discredit
competitors.
• uses another geographical indication to the goods which, although literally true as to
the territory, region or locality in which the goods originate, falsely represents to the
persons that the goods originate in the territory, region or locality in respect of which
such registered geographical indication relates.
 SECTION
24. ▪ Notwithstanding anything contained in any law

PROHIBITIO for the time being in force, any right to a

registered geographical indication shall not be
the subject matter of assignment, transmission,
N OF licensing, pledge, mortgage or any such other
agreement:
ASSIGNME ▪ Provided that on the death of an authorised user
his right in a registered geographical indication
NT OR shall devolve on his successor in title under the
law for the time being in force.
TRANSMISSI
ON, ETC.—
SECTION 25. PROHIBITION OF
REGISTRATION OF
GEOGRAPHICAL INDICATION AS
TRADE
▪Notwithstanding MARK.—
anything contained in the Trade Marks Act, 1999 (47 of 1999), the
Registrar of Trade Marks referred to in section 3 of that Act, shall, suo motu or at the
request of an interested party, refuse or invalidate the registration of a trade mark
which—
▪ (a) contains or consists of a geographical indication with respect to the goods or
class or classes of goods not originating in the territory of a country, or a region or
locality in that territory which such geographical indication indicates, if use of such
geographical indications in the trade mark for such goods, is of such a nature as to
confuse or mislead the persons as to the true place of origin of such goods or class
or classes of goods
▪ (b) contains or consists of a geographical indication identifying goods or class or
classes of goods notified under sub-section (2) of section 22. ( infringement)
 SECTION • Trade marks containing or consisting of a
geographical indication, applied for or registered in
good faith under the existing trade marks law, are
26- protected.
▪ Before the commencement of the act
PROTECTIO ▪ before filing for registration of the geographical

N OF indication under this Act.

▪ Geographical indications that are identical to
TRADEMAR common names for goods used in India before
January 1, 1995, are not covered under this Act.

K
 ▪ Individuals can still use their names or their
predecessors' names in trade unless it causes
confusion or misleading.
▪ Not acted for 5 years – trademark known to the
registered proprietor or authorized user of the
geographical indication.
SECTION 26 ▪ if the geographical indication is not used or
registered in bad faith.
DIFFERENCE BETWEEN
APPELLATION OF ORIGIN AND
GEOGRAPHICAL INDICATION
▪ Lisbon Agreement, 1966
▪ name of the product’s place of origin
▪ Origin- The basic difference between the two concepts is that the link with
the place of origin must be stronger in the case of an appellation of origin.
▪ Quality - This generally means that the raw materials should be sourced in the
place of origin and that the processing of the product should also take place
there.
▪ In the case of GIs, a single criterion attributable to geographical origin is
sufficient – be it a quality or other characteristic of the product – or even just its
reputation.
▪ IP Right
▪ TRIPS
REMEDIES
▪ Injunction
▪ Damages
▪ Account of profits
▪ Punishment and Fine
▪ Forfeiture