UNIT 1

Introduction

Intellectual property Right (IPR) is a term used for various legal entitlements which attach to
certain types of information, ideas, or other intangibles in their expressed form. The holder of
this legal entitlement is generally entitled to exercise various exclusive rights in relation to the
subject matter of the Intellectual Property. The term intellectual property reflects the idea that
this subject matter is the product of the mind or the intellect, and that Intellectual Property rights
may be protected at law in the same way as any other form of property. Intellectual property laws
vary from jurisdiction to jurisdiction, such that the acquisition, registration or enforcement of IP
rights must be pursued or obtained separately in each territory of interest.

Intellectual property rights (IPR) can be defined as the rights given to people over the creation of
their minds. They usually give the creator an exclusive right over the use of his/her creations for
a certain period of time.

What is Intellectual Property?

Intellectual property is an intangible creation of the human mind, usually expressed or translated
into a tangible form that is assigned certain rights of property. Examples of intellectual property
include an author's copyright on a book or article, a distinctive logo design representing a soft
drink company and its products, unique design elements of a web site, or a patent on the process
to manufacture chewing gum.

What is Intellectual Property Rights?

Intellectual property rights (IPR) can be defined as the rights given to people over the creation of
their minds. They usually give the creator an exclusive right over the use of his/her creations for
a certain period of time.

Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works,
and symbols, names, images, and designs used in commerce.

Categories of Intellectual Property

One can broadly classify the various forms of IPRs into two categories:

• IPRs that stimulate inventive and creative activities (patents, utility models, industrial designs,
copyright, plant breeders’ rights and layout designs for integrated circuits) and

• IPRs that offer information to consumers (trademarks and geographical indications). IPRs in
both categories seek to address certain failures of private markets to provide for an efficient
allocation of resources
IP is divided into two categories for ease of understanding:

1. Industrial Property

2. Copyright

Industrial property, which includes inventions (patents), trademarks, industrial designs, and
geographic indications of source; and

Copyright, which includes literary and artistic works such as novels, poems and plays, films,
musical works, artistic works such as drawings, paintings, photographs and sculptures, and
architectural designs. Rights related to copyright include those of performing artists in their
performances, producers of phonograms in their recordings, and those of broadcasters in their
radio and television programs

Intellectual property shall include the right relating to:

i. Literary, artistic and scientific works;

ii. Performance of performing artists;

iii. Inventions in all fields of human endeavour;

iv. Scientific discoveries;

v. Industrial designs;

vi. Trademarks, service marks and etc;

vii. Protection against unfair competition.

What is a property?

Property designates those things that are commonly recognized as being the possessions of an
individual or a group. A right of ownership is associated with property that establishes the good
as being "one's own thing" in relation to other individuals or groups, assuring the owner the right
to dispense with the property in a manner he or she deems fit, whether to use or not use, exclude
others from using, or to transfer ownership.

Properties are of two types - tangible property and intangible property i.e. one that is physically
present and the other which is not in any physical form. Building, land, house, cash, jewellery
are few examples of tangible properties which can be seen and felt physically. On the other hand
there is a kind of valuable property that cannot be felt physically as it does not have a physical
form. Intellectual property is one of the forms of intangible property which commands a material
value which can also be higher than the value of a tangible asset or property.
Rights protected under Intellectual Property

The different types of Intellectual Property Rights are:

i. Patents

ii. Copyrights

iii. Trademarks

iv. Industrial designs

v. Protection of Integrated Circuits layout design

vi. Geographical indications of goods

vii. Biological diversity

viii. Plant varieties and farmers rights

ix. Undisclosed information

a. Intellectual Property

1. Inventions

2. Trademarks

3. Industrial design

4. Geographical indications

b. Copyright

1. Writings

2. Paintings

3. Musical works

4. Dramatics works

5. Audiovisual works

6. Sound recordings

7. Photographic works
8. Broadcast

9. Sculpture

10. Drawings

11. Architectural works etc.

IPR as Instruments of Development

a. Key drivers of economic performance in R&D based growth models

b. Intellectual property policies do affect the extent and nature of investments undertaken by
multinational enterprises. At the same time, relative to other factors determining foreign
investment decisions, IPRs seem to be of relatively minor importance.

Duration of Intellectual Property Rights in a nutshell

1) Term of every patent will be 20 years from the date of filing of patent application, irrespective
of whether it is filed with provisional or complete specification. Date of patent is the date on
which the application for patent is filed.

2) Term of every trademark registration is 10 years from the date of making of the application
which is deemed to be the date of registration.

3) Copyright generally lasts for a period of sixty years.

4) The registration of a geographical indication is valid for a period of 10 years.

5) The duration of registration of Chip Layout Design is for a period of 10 years counted from
the date of filing an application for registration or from the date of first commercial exploitation
anywhere in India or in any convention country or country specified by Government of India
whichever is earlier.

6) The duration of protection of registered varieties is different for different crops namely 18
years for trees and vines, 15 years for other crops and extant varieties.

Global Intellectual Property Trends

 With over 3 million applications filed per year, trademark protection is the most sought
after form of IP worldwide with growth rates of a similar magnitude as those for patents.
 In 2009, one quarter of all trademark applications were filed at the China Trademark
Office. When combined with the shares held by India, the Republic of Korea and Japan,
these four offices located in Asia accounted for 37 percent of total trademark
applications. India showed the highest five-year growth (13.5%) from 2005 to 2009,
whereas China had one of the highest annual growth rates (20.8%) from 2008 to 2009.
  In 2009, China accounted for 50 percent of total industrial design filing activity while
growing by 12.3 percent from 2008 to 2009. India was in the 9th place.
 In 2009, 1,41,943 trademark applications were filed, 34,287 patent applications were
filed and 6,092 Industrial designs applications were filed.

Initiatives of Government of India towards protection of IPR

1. The Government has brought out A Handbook of Copyright Law to create awareness of
copyright laws amongst the stakeholders, enforcement agencies, professional users like the
scientific and academic communities and members of the public.

2. National Police Academy, Hyderabad and National Academy of Customs, Excise and
Narcotics conducted several training programs on copyright laws for the police and customs
officers.

3. The Department of Education, Ministry of Human Resource Development, Government of

India has initiated several measures in the past for strengthening the enforcement of copyrights
that include constitution of a Copyright Enforcement Advisory Council (CEAC), creation of
separate cells in state police headquarters, encouraging setting up of collective administration
societies and organization of seminars and workshops to create greater awareness of copyright
laws among the enforcement personnel and the general public.

4. Special cells for copyright enforcement have so far been set up in 23 States and Union
Territories, i.e. Andhra Pradesh, Assam, Andaman & Nicobar Islands, Chandigarh, Dadra &
Nagar Haveli, Daman & Diu, Delhi, Goa, Gujarat, Haryana, Himachal Pradesh, Jammu &
Kashmir, Karnataka, Kerala, Madhya Pradesh, Meghalaya, Orissa, Pondicherry, Punjab, Sikkim,
Tamil Nadu, Tripura and West Bengal.

5. The Government also initiates a number of seminars/workshops on copyright issues. The

participants in these seminars include enforcement personnel as well as representatives of
industry organizations.

Types of Intellectual Property

The term intellectual property is usually thought of as comprising four separate legal fields:

1. Trademarks

2. Copyrights

3. Patents

4. Trade secrets
1. Trademarks and Service Marks: A trademark or service mark is a word, name, symbol, or
device used to indicate the source, quality and ownership of a product or service. A trademark is
used in the marketing is recognizable sign, design or expression which identifies products or
service of a particular source from those of others. The trademark owner can be an individual,
business organization, or any legal entity. A trademark may be located on a package, a label, a
voucher or on the product itself. For the sake of corporate identity trademarks are also being.

2. Copyrights: Copyright is a form of protection provided by U.S. law (17 U.S.C 101 et seq) to
the authors of "original works of authorship" fixed in any tangible medium of expression. The
manner and medium of fixation are virtually unlimited. Creative expression may be captured in
words, numbers, notes, sounds, pictures, or any other graphic or symbolic media. The subject
matter of copyright is extremely broad, including literary, dramatic, musical, artistic,
audiovisual, and architectural works.

Copyright protection is available to both published and unpublished works. Copyright protection
is available for more than merely serious works of fiction or art. Marketing materials, advertising
copy and cartoons are also protectable. Copyright is available for original working protectable by
copyright, such as titles, names, short phrases, or lists of ingredients. Similarly, ideas methods
and processes are not protectable by copyright, although the expression of those ideas is.

Copyright protection exists automatically from the time a work is created in fixed form. The
owner of a copyright has the right to reproduce the work, prepare derivative works based on the
original work (such as a sequel to the original), distribute copies of the work, and to perform and
display the work. Violations of such rights are protectable by infringement actions. Nevertheless,
some uses of copyrighted works are considered “fair use” and do not constitute infringement,
such as use of an insignificant portion of a work for noncommercial purposes or parody of a
copyrighted work.

Definition: General Definition of copyright “Copyright owner”, with respect to any one of the
exclusive rights comprised in a copyright, refers to the owner of that particular right.

3. Patents: A patent for an invention is the grant of a property right to the inventor, issued by
the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years
from the date on which the application for the patent was filed in the United States or, in special
cases, from the date an earlier related application was filed, subject to the payment of
maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories,
and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may
be available.

The right conferred by the patent grant is, in the language of the statute and of the grant itself,
“the right to exclude others from making, using, offering for sale, or selling” the invention in the
United States or “importing” the invention into the United States. What is granted is not the right
to make, use, offer for sale, sell or import, but the right to exclude others from making, using,
offering for sale, selling or importing the invention. Once a patent is issued, the patentee must
enforce the patent without aid of the USPTO.

There are three types of patents:

Utility patents may be granted to anyone who invents or discovers any new and useful process,
machine, article of manufacture, or composition of matter, or any new and useful improvement
thereof;

Design patents may be granted to anyone who invents a new, original, and ornamental design
for an article of manufacture; and

Plant patents may be granted to anyone who invents or discovers and asexually reproduces any
distinct and new variety of plant.

4. Design:

Design means any features of shape, configuration, pattern, ornament or composition of lines or
colours, industrially applied to an article or to a part, that gives aesthetic value to such article.
Designs Act, 2000 deals with protection of industrial design in India. This page gives
information as to Indian Law on Designs and has full texts of Legislation’s, Cases and
International Conventions.

What is a Design? Design can be described as the totality of the ornamental or aesthetic aspects
of a useful article. Manufactures of diverse products such as shoes, clothing, consumer
appliances, automobiles, furniture and computer software invest billions of dollars to develop
industrial designs to make their products more attractive to consumers.

5. Geographical Indications:

Geographical indication is an indication that identifies a good as originating in a territory where

a given quality, reputation or other characteristic of the good is essentially attributable to its
geographical origin.
UNIT 3

PATENTS

Patent is a grant for an invention by the Government to the inventor in exchange for full

disclosure of the invention. A patent is an exclusive right granted by law to applicants / assignees
to make use of and exploit their inventions for a limited period of time (generally 20 years from
filing). The patent holder has the legal right to exclude others from commercially exploiting his
invention for the duration of this period. In return for exclusive rights, the applicant is obliged to
disclose the invention to the public in a manner that enables others, skilled in the art, to replicate
the invention. The patent system is designed to balance the interests of applicants / assignees
(exclusive rights) and the interests of society (disclosure of invention).

Meaning of ‘Invention’ under Patent Law

Sec.2(1)(J) - Invention” means a new product or process involving an inventive step and capable
of industrial application

What is not an ‘Invention’?

According to Sec 3 of the Patent Act, 1970

• Frivolous inventions

• Inventions contrary to well established natural laws

• Commercial exploitation or primary use of inventions,

o which is contrary to public order or morality

o which causes serious prejudice to health or human, animal, plant life or to the

environment

• Mere Discovery of a Scientific Principle or

• Formulation of an Abstract Theory or

• Discovery of any living thing or

• Discovery of non–living substance occurring in nature

• Mere discovery of any new property or new use for a known substance or of the mere use
of a known process, machine or apparatus, unless such known process results in a new
product or employs at least one new reactant.
• Substance obtained by mere admixture resulting only in the aggregation of the properties
of the components thereof or a process for producing such substance

• Mere arrangement or re-arrangement or duplication of known devices, each functioning

independently of one another in a known way

• Method of Agriculture or Horticulture

• Any process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or

other treatment of human beings or a similar treatment of animals to render them free of
disease or to increase their economic value or that of their products

• Plants & animals in whole or any part thereof other than micro- organisms, but including
seeds, varieties an d species and essentially biological process for production or propagation of
plants & animals

• mathematical method or

• business method or

• algorithms or

• computer programme per se

• A literary,dramatic, musical or artistic work or any other aesthetic creation including

cinematographic work and television productions

• Presentation of information

• Topography of integrated circuits.

• Inventions which are Traditional Knowledge or an aggregation or duplication of known

properties of traditionally known component or components

What is meant by ‘New”?

The invention to be patented must not be published in India or elsewhere, or in prior public
knowledge or prior public use with in India or claimed before in any specification in India

A feature of an invention that involves technical advance as compared to the existing knowledge
or have economic significance or both and makes the invention not obvious to a person skilled in
the art.

What can be patented?

Any invention concerning with composition, construction or manufacture of a substance, of an

article or of an apparatus or an industrial type of process.
What cannot be patented?

Inventions falling within Section 20(1) of the Atomic Energy Act, 1962

HISTORY OF IPR IN INDIA

George Alfred DePenning is supposed to have made the first application for a patent in India in
the year 1856. On February 28, 1856, the Government of India promulgated legislation to grant
what was then termed as "exclusive privileges for the encouragement of inventions of new
manufactures" i.e the Patents Act. On March 3, 1856, a civil engineer, George Alfred DePenning
of 7, Grant’s Lane, Calcutta petitioned the Government of India for grant of exclusive privileges
for his invention - "An Efficient Punkah Pulling Machine". On September 2, DePenning,
submitted the Specifications for his invention along with drawings to illustrate its working.
These were accepted and the invention was granted the first ever Intellectual Property protection
in India.

HISTORY OF PATENT LAW IN INDIA

The first legislation in India relating to patents was the Act VI of 1856. The objective of this
legislation was to encourage inventions of new and useful manufactures and to induce inventors
to disclose secret of their inventions. The Act was subsequently repealed by Act IX of 1857 since
it had been enacted without the approval of the sovereign. Fresh legislation for granting
‘exclusive privileges’ was introduced in 1859 as Act XV of 1859. This legislation contained
certain modifications of the earlier legislation, namely, grant of exclusive privileges to useful
inventions only and extension of priority period from 6 to 12 months. The Act excluded
importers from the definition of inventor. The 1856 Act was based on the United Kingdom Act
of 1852 with certain departures including allowing assignees to make application in India and
also taking prior public use or publication in India or United Kingdom for the purpose of
ascertaining novelty.

The Act of 1859 provided protection for invention only and not for designs whereas United
Kingdom had been protecting designs from 1842 onwards. To remove this lacuna, the ‘Patterns
and Designs Protection Act’ (Act XIII) was passed in 1872. This Act amended the 1859 Act to
include any new and original pattern or design or the application of such pattern to any substance
or article of manufacture within the meaning of ‘new manufacture’. The Act XV of 1859 was
further amended in 1883 by XVI of 1883 to introduce a provision to protect novelty of the
invention, which prior to making application for their protection were disclosed in the
Exhibitions of India. A grace period of 6 months was provided for filing such applications after
the date of the opening of such Exhibition.

In 1888, new legislation was introduced to consolidate and amend the law relating to invention
and designs in conformity with the amendments made in the UK law. In 1911, the Indian Patents
and Designs Act, 1911, (Act II of 1911) was brought in replacing all the previous legislations on
patents and designs. This Act brought patent administration under the management of Controller
of Patents for the first time. This Act was amended in 1920 to provide for entering into reciprocal
arrangements with UK and other countries for securing priority. In 1930, further amendments
were made to incorporate, inter-alia, provisions relating to grant of secret patents, patent of
addition, use of invention by Government, powers of the Controller to rectify register of patent
and increase of term of the patent from 14 years to 16 years. In 1945, another amendment was
made to provide for filing of provisional specification and submission of complete specification
within nine months.

After Independence, it was felt that the Indian Patents & Designs Act, 1911 was not fulfilling its
objective. It was found desirable to enact comprehensive patent law owing to substantial changes
in political and economic conditions in the country. Accordingly, the Government of India
constituted a committee under the Chairmanship of Justice (Dr.) Bakshi Tek Chand, a retired
Judge of Lahore High Court, in 1949, to review the patent law in India in order to ensure that the
patent system is conducive to the national interest.

The Committee submitted its interim report on 4th August, 1949 with recommendations for
prevention of misuse or abuse of patent right in India and for amendments to sections 22, 23 &
23A of the Patents & Designs Act, 1911 on the lines of the United Kingdom Acts of 1919 and
1949.

Based on the recommendations of the Committee, the 1911 Act was amended in 1950 (Act
XXXII of 1950) in relation to working of inventions and compulsory licence/ revocation.

In 1952, an amendment was made to provide compulsory licence in relation to patents in respect
of food and medicines, insecticide, germicide or fungicide and a process for producing substance
or any invention relating to surgical or curative devices, through Act LXX of 1952. The
compulsory licence was also available on notification by the Central Government. Based on the
recommendations of the Committee, a bill was introduced in the Parliament in 1953 (Bill No.59
of 1953). However, the bill lapsed on dissolution of the Lok Sabha.

In 1957, the Government of India appointed Justice N. Rajagopala Ayyangar Committee to

examine the question of revision of the Patent Law and advise government accordingly. The
report of the Committee, which comprised of two parts, was submitted in September, 1959. The
first part dealt with general aspects of the patent law and the second part gave detailed note on
the several clauses of the lapsed bill of 1953. The first part also dealt with evils of the patent
system and solution with recommendations in regard to the law. The committee recommended
retention of the patent system, despite its shortcomings. This report recommended major changes
in the law which formed the basis of the introduction of the Patents Bill, 1965. This bill was
introduced in the Lok Sabha on 21st September, 1965, which, however, lapsed.

In 1967, an amended bill was introduced which was referred to a Joint Parliamentary Committee
and on the final recommendation of the Committee, the Patents Act, 1970 was passed. This Act
repealed and replaced the 1911 Act so far as the patents law was concerned. However, the 1911
Act continued to be applicable to designs. Most of the provisions of the 1970 Act were brought
into force on 20th April, 1972 with the publication of the Patents Rules, 1972.

This Act remained in force for about 24 years till December 1994 without any change. An
ordinance effecting certain changes in the Act was issued on 31st December 1994, which ceased
to operate after six months. Subsequently, another ordinance was issued in 1999. This ordinance
was later replaced by the Patents (Amendment) Act, 1999 that was brought into force
retrospectively from 1st January, 1995. The amended Act provided for filing of applications for
product patents in the areas of drugs, pharmaceuticals and agro chemicals though such patents
were not allowed. However, such applications were to be examined only after 31st December,
2004. Meanwhile, the applicants could be allowed Exclusive Marketing Rights (EMRs) to sell or
distribute these products in India, subject to fulfillment of certain conditions.

The second amendment to the 1970 Act was made through the Patents (Amendment) Act, 2002
(Act 38 0f 2002). This Act came into force on 20th May, 2003 with the introduction of the new
Patents Rules, 2003 by replacing the earlier Patents Rules, 1972.

The third amendment to the Patents Act, 1970 was introduced through the Patents (Amendment)
Ordinance, 2004 with effect from 1st January, 2005. This Ordinance was later replaced by the
Patents (Amendment) Act, 2005 (Act 15 Of 2005) on 4th April, 2005 which was brought into
force from 1st January, 2005.

RIGHTS OF PATENTEES

As we have already discussed, a patent is a grant conferring certain monopoly rights on the
grantee for a definite period, subject to certain conditions. A grant of patent gives the patentee
the exclusive right to make or use the patented article or use of the patented process. Apart from
this right a patentee has also the powers to assign the patent, grant licenses under and deal with it
otherwise; for any consideration. However, these rights are not absolute and are circumscribed
by various conditions and limitations.

he Patent Act, 1970 contains various provisions in Section 24, Chapter IVA, Sections 24-A to
24-F, 28, 48, 50, 53, 63 and 58 etc. relating to the specified or implied rights of the patentees. For
the sake of convenience and easy comprehension, the same have been summarised as under:

Rights in respect of Patents Granted before the Patents Act, 1970 commenced (Under Section
48):

Once a patent is granted, the patentee has the exclusive right to make use, exercise, sell or
distribute the patented article or substance in India. In case of a process patent he has the right to
use or exercise the method or process. These rights can be exercised not only by the patentee but
also by his agents or licensees. This right to exploit the patent can be graphically explained as
under:

Right to assign and license:

A patentee is vested with the power to assign, grant licenses or to deal with the patent for a
consideration. This is in a case where the patentee himself is not willing to work the patent. If
there are more than one owner of the patent, the co-owner can assign his share of the patent or
grant licenses in respect thereof, provided the other co-owners consent and permitted by the
controller.

Right to surrender the patent:

Under Section 63 of the Act, the patentee has the right to surrender his patent. A patentee, at any
time by giving notice in the prescribed manner. When such an offer is made, the controller
should advertise the offer with a view to notifying every person other than the patentee whose
name appears in the register as having an interest in the patent. It is necessary to protect the
interests of persons like licensees, equitable assignees, and others with whom the patentee might
have contractual obligations which are dependent on the continuance of the patent.

Rights before sealing: The patentee enjoys certain rights even before the sealing of the patent
also, under Section 24 of the Act. Under this provision, on and from the date of advertisement of
the acceptance of a complete specification and until the date of sealing of patent, the applicant
will be entitled to the like privileges and rights as if a patent for the invention had been sealed on
the date of advertisement of acceptance of the complete specification. However, the applicant
will not be entitled to institute any legal proceedings for infringement until the patent has been
sealed.

Right to apply for “patents of addition”:

Chapter IX of the Act, Sections 54 deal with “patents of addition”. A patent of addition is the
improvement or modification of an invention disclosed in the complete specification of the
“main invention”. Under Section 54 of the Act, a patentee has a right to apply for a “patent of
addition” relating to his ‘main invention’.

Right in case of “infringements”

Infringement is the violation of the violation of the rights conferred by the grant of patent. It
consists in the violation of any of the rights like the exclusive right to make, use, exercise, sell or
distribute the invention in India. Whenever a patent is infringed, the patentee has a right to
institute suits in a court of law, not inferior to a District Court having jurisdiction to try the suit.
The patentee may bring in suit for declaration, injuction and also for damages and account of
profits
Right to make a convention application

Every patentee in India has a right to make a convention application or a “basic application”, for
protection of his patent in other convention countries, in case of international instruments being
signed by India and those other convention countries. Generally, this right is dependent on the
principle of ‘reciprocity’ and ‘national treatment’ in international law. However, this position is
proposed to be changed under the 2002 (Am) Act which provides for filing of an International
application under the PCT.

Right to make a convention application

If a Patent is lost or destroyed or its non-production is explained satisfactorily to the controller,

the patentee has a right to apply for a duplicate patent; and

Right to be supplied copies and certificates

Certified copies of any entry in the register, or certificates of or extracts from patents,
specifications and other public documents in the patent office or from the registers and other
records kept there, may be obtained by the patentees and also others by paying the prescribed
fee.

LIMITATIONS OF THE RIGHTS OF PATENTEES

It has been already mentioned here before that the rights of the patentees are not absolute. They
are subject to many limitations and restrictions which are mentioned briefly hereunder.

Use for Experiment, Research and Teaching

Any machine, article or apparatus in respect of which patent is granted or any process patent may
be used by any person for the purpose only of experiment or research including the imparting of
instructions to pupils; not withstanding the rights of the patentee.

Use by Government

Any patented product or process may be used by the Government for its exclusive use or on
behalf of it. The Government may also import such product or patent. Obviously, such a
provision has been made in the interest of public service.

Compulsory Licenses

If the patent has not been worked so as to satisfy the reasonable requirements of the public at a
reasonable price, the controller may grant compulsory licenses to any applicant to work the
patent. Further the central Government also has the power to declare that compulsory licenses
should be granted in respect of any patent or class of patents. The controller decides the terms of
the license.
In case of patents related to food, medicine or drug they are deemed to be endorsed with the
words “Licenses of right” after the expiration of three years from the date of sealing. The legal
effect of such an endorsement is that, any person interested in working the patented invention
may require the patentee to grant him a licensee on terms mutually agreed upon or settled by the
controller.

Invention for Defense Purposes

Certain inventions relevant for defence purposes may be subjected secrecy provisions by the
controller. He may direct restrict or prohibit the publication or communication of information
relating to such inventions. In such an event application will not be refused but the complete
specification if accepted, will not be advertised and no patent will be granted for the invention.
During the continuance of such directions, the central Government may use the invention by
debarring the applicant from using it provided the royalties are paid to him.

Use in Foreign Vessels etc.

Where a vessel or aircraft registered in a foreign country or a land vehicle owned by a foreigner
comes to India or its territorial waters temporarily or accidently, the patented article, substance or
process may be used in such vessels, and aircrafts etc., without infringing the rights of the
patentee legally. Such a use must be for its actual needs or in the consultation or working of the
aircraft, or land vehicle only to a foreign vessel, aircraft or land vehicle owned by residents of
only those countries which confer similar rights on the residents of India. In other words, this
right and limitation are based on the principle of national treatment.

DUTIES OF PATENTEE

The patent granted confers not only certain rights on the patentee but also imposes certain duties
and obligations. If the patent is not used and the granted monopoly is abused, compulsory license
may be granted to any person who is willing to work the patent or even the patent also may be
revoked. It is the implied duty of the patentee to work the patent is India in such a manner so as
not to deprive the reasonable requirements of the public and also to make the products of patent
available to the public at reasonable prices. Further, the patentees are restrained from making
baseless and unjustifiable threats of an action for infringement of the patent. Similarly, every
patentee should submit periodical statements to the controller as to the extent to which the
patented invention has been worked on a commercial basis in India. Failure to supply such
information is punishable.

INFRINGEMENT OF PATENTS

The monopoly of a patentee over his patent may be violated by unscrupulous elements. If the
rights in relation to patent are infringed, the patented has right to take recourse to legal action.
What constitutes infringement of a patent is not defined in the Patents act, 1970. However it may
be understood as violation of the monopoly rights of the patentee to make, use, exercise, sell or
distribute the invention in India.

Infringer is a person who actually manufacturers a patented article without authorization, or uses
a patented process likewise. Similarly any one who uses, exercises sells or distributes a patented
article or process without any lawful authority would be an infringer.

However an innocent use of a patent, use for experiments and instructions, use of invention in
foreign vessels do not amount infringements Where the infringer has taken all the essential
features claimed in the patent, while manufacturing an article, it will be a direct infringement.
Where he uses all features claimed in the patent but alters one or more unessential feature then
also it will be an infringement but since it is indirect it is called ‘colorable imitation’. Copying
the ‘essential features’ of the invention is sometimes referred to as taking the ‘pith and marrow’
of the invention.

 Time of Infringement
 Remedy for infringement
 Limitation period
 Who can file a suit?
 Who may petition the High Court
 Who may be sued?
 Defenses available to Defendants
 Relieves that may be granted

How is a patent obtained?

 File an application for patent

 With one of the patent offices based on territorial jurisdiction of the place of office or
 residence of the applicant /agent
 Pay the required fee
 Information concerning application form and details of fee available at
www.ipindia.nic.in
 Guidelines for applicants also available on this website

The Patent Office then

 Conducts searches to ascertain the prerequisites

 Publishes the application
 Conducts in-depth examination
 Raises objection to the application
 Grants the patent
General precautions for an applicant

The first to file system is employed, in which, among persons having filed the same invention,
first one is granted a patent, therefore, a patent application should be filed promptly after
conceiving the invention. It is common experience that through ignorance of patent law,
inventors act unknowingly and jeopardize the chance of obtaining patents for their inventions.

The most common of these indiscretions is to publish their inventions in newspapers or scientific
and technical journals, before applying for patents. Publication of an invention, even by the
inventor himself, would (except under certain rare circumstances) constitute a bar for the
subsequent patenting of it. Similarly, the use of the invention in Public, or the commercial use of
the invention, prior to the date of filing patent application would be a fatal objection to the grant
of a patent for such invention, thereafter. There is, however, no objection to the secret working of
the invention by way of reasonable trial or experiment, or to the disclosure of the invention to
others, confidentially.

Another mistake, which is frequently made by the inventors, is to wait until their inventions are
fully developed for commercial working, before applying for patents. It is, therefore, advisable to
apply for a patent as soon as the inventor's idea of the nature of the invention has taken a definite
shape.

It is permissible to file an application for a patent accompanied by a "Provisional Specification"

describing the invention. The application may, therefore, be made even before the full details of
working of the invention are developed. The filing of an application for a patent disclosing the
invention would secure priority date of the invention, and thereby, enable the inventor to work
out the practical details of the invention and to file complete specification within 12 months from
the date of filing of provisional specification.

What is meant by patentable invention?

A new product or process, involving an inventive step and capable of being made or used in an
industry. It means the invention to be patentable should be technical in nature and should meet
the following criteria –

 Novelty: The matter disclosed in the specification is not published in India or elsewhere
 before the date of filing of the patent application in India.
 Inventive Step: The invention is not obvious to a person skilled in the art in the light of
the prior publication/knowledge/ document.
 Industrially applicable: Invention should possess utility, so that it can be made or used in
an industry.

Appropriate office for filing an application & for other Proceedings

Application is required to be filed according to the territorial limits where the applicant or the
first mentioned applicant in case of joint applicants, for a patent normally resides or has domicile
or has a place of business or the place from where the invention actually originated. If the
applicant for the patent or party in a proceeding having no business place or domicile in India,
the appropriate office will be according to the address for service in India given by the applicant
or party in a proceeding . The appropriate office once decided in respect of any proceedings
under the Act shall not ordinarily be changed. The four patent offices are located at Kolkatta,
Mumbai, Delhi & Chennai.

From 20th July, 2007 the Indian Patent Office has put in place an online filing system for patent
application.

Publication and Examination of Patent Applications

Publication:

All the applications for patent, except the applications prejudicial to the defence of India or
abandoned due to non-filing of complete specification within 12 months after filing the
provisional or withdrawn within 15 months of filing the application, are published in the Patent
Office Journal just after 18 months from the date of filing of the application or the date of
priority whichever is earlier. The publication includes the particulars of the date of the
application, application number, name and address of the applicant along with the abstract. The
applications for patent are not open for public inspection before publication. After the date of
publication of the application, as stated above, the complete specification along with provisional
and drawing, if any, abstract , application on any form or on plain paper and any correspondence
between the office and applicant may be inspected at the appropriate office by making a written
request to the Controller in the prescribed manner and on the payment of prescribed fee.

Request for examination

An application for patent will not be examined if no request is made by the applicant or by any
other interested person in Form-18 with prescribed fee of Rs.2,500/- or Rs.10,000/- for natural
person and other than natural person respectively, within a period of 48 months from the date of
priority of the application or from the date of filing of the application, whichever is earlier.

Where no request for examination of the application for patent has been filed within the
prescribed period, the aforesaid application will be treated as withdrawn and, thereafter,
application cannot be revived.

Examination

Application for patent, where request has been made by the applicant or by any other interested
person, will be taken up for examination, according to the serial number of the requests received
on Form 18. A First Examination Report (FER) stating the objections/requirements is
communicated to the applicant or his agent according to the address for service ordinarily within
six (06) months from the date of request for examination or date of publication whichever is
later. Application or complete specification should be amended in order to meet the
objections/requirements within a period of 12 months from the date of First Examination Report
(FER). No further extension of time is available in this regard. If all the objections are not
complied with within the period of 12 months, the application shall be deemed to have been
abandoned. When all the requirements are met the patent is granted, after 6 months from the date
of publication, the letter patent is issued, entry is made in the register of patents and it is notif ied
in the Patent Office, Journal.

Withdrawal of patent application

The application for patent can be withdrawn at least 3 (Three) months before the first publication
which will be 18 (Eighteen) months from the date of filing or date of priority whichever is
earlier. The application can also be withdrawn at any time before the grant of the patent. The
application withdrawn after the date of publication cannot be filed again as it is already laid open
for public inspection. However, application withdrawn before the publication can be filed again
provided it is not opened to public otherwise.

Opposition proceedings to grant of patents

Where an application for a patent has been published but a patent has not been granted, any
person may, in writing represent by way of opposition to the Controller against the grant of any
Patent. The representation shall be filed at the appropriate office and shall include a statement
and evidence, if any, in support of the representation and a request for hearing if so desired.

The above representation may be made on the following grounds

(a) that the applicant for the patent or the person under or through whom he claims, wrongfully
obtained the invention or any part thereof from him or from a person under or through whom he
claims;

(b) that the invention so far as claimed in any claim of the complete specification has been
published before the priority date of the claim—

(i) in any specification filed in pursuance of an application for a patent made in India on or after
the 1st day of January, 1912; or (ii) in India or elsewhere, in any other document:

Provided that the ground specified in sub-clause (ii) shall not be available where such publication
does not constitute an anticipation of the invention by virtue of sub-section (2) or sub-section (3)
of section 29;

(c) that the invention so far as claimed in any claim of the complete specification is claimed in a
claim of a complete specification published on or after the priority date of the applicant's claim
and filed in pursuance of an application for a patent in India, being a claim of which the priority
date is earlier than that of the applicant's claim;

(d) that the invention so far as claimed in any claim of the complete specification was publicly
known or publicly used in India before the priority date of that claim.

Explanation —For the purposes of this clause, an invention relating to a process for which a
patent is claimed shall be deemed to have been publicly known or publicly used in India before
the priority date of the claim if a product made by that process had already been imported into
India before that date except where such importation has been for the purpose of reasonable trial
or experiment only;

(e) that the invention so far as claimed in any claim of the complete specification is obvious and
clearly does not involve any inventive step, having regard to the matter published as mentioned
in clause (b) or having regard to what was used in India before the priority date of the applicant's
claim;

(f) that the subject of any claim of the complete specification is not an invention within the
meaning of this Act, or is not patentable under this Act;

(g) that the complete specification does not sufficiently and clearly describe the invention or the
method by which it is to be performed;

(h) that the applicant has failed to disclose to the Controller the information required by section 8
or has furnished the information which in any material particular was false to his knowledge;

(i) that in the case of convention application, the application was not made within twelve months
from the date of the first application for protection for the invention made in a convention
country by the applicant or a person from whom he derives title;

(j) that the complete specification does not disclose or wrongly mentions the source or
geographical origin of biological material used for the invention;

(k) that the invention so far as claimed in any claim of the complete specification is anticipated
having regard to the knowledge, oral or otherwise, available within any local or indigenous
community in India or elsewhere, but on no other ground.

The Controller shall, if requested by such person for being heard, hear him and dispose of such
representation. If the opposition is decided in favour of the applicant, the patent is granted and
the grant of Patent is published in the Patent Office Journal thereby opening the application,
specification and other related documents for public inspection on payment of prescribed fee.

Post grant opposition - Any interested person can file notice of opposition (along with written
statement and evidence, if any) anytime 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 in the Patent Office Journal .The
above notice under Section 25(2) should be filed on Form-7 along with a fee of Rs. 1500/ or Rs.
6000/- for natural person and other than natural person respectively, in duplicate at the
appropriate office. The grounds of opposition under section 25 (2) are the same as given before
in case of pre grant opposition. The post grant opposition is decided by an Opposition Board
followed by a hearing and the reasoned decision by the Controller.

Grant of Patent

When all the requirements are met or in case of opposition under section 25(1),if the opposition
is decided in favour of the applicant ,the patent is granted, after 6 months from the date of
publication under section 11 A, the letter patent is issued, entry is made in the register of patents
and it is notified in the Patent Office, Journal, thereafter opening the application, specification
and other related documents for public inspection on payment of prescribed fee.

Term and Date of Patent

Term of every patent will be 20 years from the date of filing of patent application, irrespective of
whether it is filed with provisional or complete specification. Date of patent is the date on which
the application for patent is filed. The term of patent in case of International applications filed
under the Patent Cooperation Treaty designating India, will be 20 years from the International
filing date accorded under the Patent Cooperation Treaty.A patent will have cease to effect on

the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid
within the prescribed period.

Renewal and restoration

To keep the patent in force, Renewal fee is to be paid every year. The first renewal fee is payable
for the third year and must be paid before the expiration of the second year from the date of
patent If the patent has not been granted within two years the renewal fees may be accumulated
and paid immediately after the patent is granted, or within three months of its record in Register
of Patents or within extended period of 9 months, by paying extension fees of six month on Form
4, from the date of record. If the renewal fee is not paid within the prescribed time, the patent
will cease to have effect. However, provision to restore the patent is possible provided
application is made within eighteen months from the date of cessation.

Renewal fee is counted from the date of filing of the Patent application. Six month's grace time is
available with extension fee for payment of renewal fee. No renewal fees is payable on Patents
of Addition, unless the original patent is revoked and if the Patent of Addition is converted into
an independent patent; renewal fee, then, becomes payable for the remainder of the term of the
main patent. Application for restoration of a patent that lapses due to non-payment of renewal
fees must be made within 18 months of lapse. The application is to be filed in the appropriate
office according to the jurisdiction.
Infringement of Patents

Infringement of a patent consists of the unauthorized making, importing, using, offering for sale
or selling any patented invention within the India.

Remedies against infringement of a patented invention

1. Interlocutory Injunction

A patent owner at the start of a trial can request for an interim injunction to restrain the defendant
from committing the acts complained of until the hearing of the action or further orders.
Permanent injunction is given based on the merits of the case at the end of the trial.

2. Relief of damages: An award of damages focuses on the losses sustained by the claimant. A
patent owner is entitled to the relief of damages as compensation to the patentee and not
punishment to the infringer.

3. Account of profits: Account of profits focuses on the profits made by the defendant, without
reference to the damage suffered by the claimant at the hands of the defendant. The purpose of
the account is to prevent the unjust enrichment of the defendant by the use of the claimant’s
invention. The patent owner may also opt for the account of profits where he has to prove use of
invention and the amount of profit derived from such illegal use.

Penalties

1) Contravention of secrecy provisions relating to certain inventions (Sec.118) - If any person

fails to comply with any directions given under section 35 or makes or causes to be made an
application in contravention of section 39 he shall be punishable with imprisonment up to 2 years
or with fine or with both. (Section 35 deals with secrecy directions relating to inventions relevant
for defence purposes and Section 39 deals with residents not to apply for patents outside India
without prior permission.

2) Falsification of entries in register etc (Sec.119) - If any person makes, or causes to be made, a
false entry in any register kept under this Act, he shall be punishable with imprisonment for a
term that may extend to 2 years or with fine or with both.

3) Unauthorized claim of patent rights (Sec.120) - If any person falsely represents that any article
sold by him is patented in India or is the subject of an application for a patent in India, he will be
punishable with fine that may extend to Rs.1,00,000. The use of words 'patent', Patented', 'Patent
applied for', 'Patent pending', 'Patent registered' without mentioning the name of the country
means they are patented in India or patent applied for in India.

4) Wrongful use of words, "patent office" (Sec.121) - If any person uses on his place of business
or any document issued by him or otherwise the words “patent office” or any 61 other words
which reasonably lead to the belief that his place of business is, or is officially connected with,
the patent office, he will be punishable with imprisonment for a term that may extend to 6
months, or with fine, or with both.

5) Refusal or failure to supply information (Sec.122) - If any person refuses or fails to furnish
information as required under section 100(5) and 146 he shall be punishable with fine, which
may go up to Rs 10,00,000/-. If he furnishes false information knowingly he shall be punishable
with imprisonment that may extend to 6 months or with fine or with both.

6) Practice by non-registered patent agents (Sec.123) - Any person practicing as patent agent
without registering is liable to be punished with a fine of Rs 1,00,000/ - in the first offence and
Rs.5,00,000/- for subsequent offence.

7) Deals with offences by companies (Sec.124) - When offence is committed by a company as

well as every person in charge of and responsible to the company for the conducts of its business
at the time of the commission of the offence will be deemed to be guilty and will be liable to be
preceded against and punished accordingly. Provided that nothing contained in this sub-section
shall render any such person liable to any punishment if he proves that the offence was
committed without his knowledge or that he exercised all due diligence to prevent the
commission of such offence.
UNIT 4

COPYRIGHTS

Copyright is the set of exclusive rights granted to the author or creator of an original work,
including the right to copy, distribute and adapt the work. Copyright lasts for a certain time
period after which the work is said to enter the public domain. Copyright gives protection for the
expression of an idea and not for the idea itself. For example, many authors write textbooks on
physics covering various aspects like mechanics, heat, optics etc. Even though these topics are
covered in several books by different authors, each author will have a copyright on the book
written by him / her, provided the book is not a copy of some other book published earlier.

Copyright ensures certain minimum safeguards of the rights of authors over their creations,
thereby protecting and rewarding creativity. Creativity being the keystone of progress, no
civilized society can afford to ignore the basic requirement of encouraging the same. Economic
and social development of a society is dependent on creativity. The protection provided by
copyright to the efforts of writers, artists, designers, dramatists, musicians, architects and
producers of sound recordings, cinematograph films and computer software, creates an
atmosphere conducive to creativity, which induces them to create more and motivates others to
create.

HISTORY OF COPYRIGHT LAW IN INDIA

Modern copyright law developed in India gradually, in a span of more than 150 years.

Copyright law entered India in 1847 through an enactment during the East India Company's
regime. According to the 1847 enactment, the term of copyright was for the lifetime of the author
plus seven years post-mortem. But in no case could the total term of copyright exceed a period of
forty-two years. The government could grant a compulsory licence to publish a book if the owner
of copyright, upon the death of the author, refused to allow its publication. The act of
infringement comprised in a person’s unauthorized printing of a copyright work for (or as a part
of attempt of) "sale hire, or exportation", or "for selling, publishing or exposing to sale or hire".
Suit or action for infringement was to be instituted in the "highest local court exercising original
civil jurisdiction." The Act provided specifically that under a contract of service copyright in
"any encyclopedia, review, magazine, periodical work or work published in a series of books or
parts" shall vest in the "proprietor, projector, publisher or conductor." Infringing copies were
deemed to be copies of the proprietor of copyrighted work. Importantly, unlike today, copyright
in a work was not automatic. Registration of copyright with the Home Office was mandatory for
the enforcement of rights under the Act. However, the Act also specifically reserved the
subsistence of copyright in the author, and his right to sue for its infringement to the extent
available in law other than the 1847 Act. At the time of its introduction in India, copyright law
had already been under development in Britain for over a century and the provisions of the 1847
enactment reflected the learnings from deliberations during this period.
In 1914, the then Indian legislature enacted a new Copyright Act which merely extended most
portions of the United Kingdom Copyright Act of 1911 to India. It did, however, make a few
minor modifications. First, it introduced criminal sanctions for copyright infringement (sections
7 to 12). Second, it modified the scope of the term of copyright; under section 4 the "sole right"
of the author to "produce, reproduce, perform or publish a translation of the work shall subsist
only for a period of ten years from the date of the first publication of the work." The author,
however, retained her "sole rights" if within the period of ten years she published or authorised
publication of her work a translation in any language in respect of that language.

The 1914 Act was continued with minor adaptations and modifications till the 1957 Act was
brought into force on 24th January, 1958.

Copyright law in India: The Copyright Act of 1957, The Copyright Rules, 1958 and the
International Copyright Order, 1999 governs the copyright protection in India. It came into effect
from January 1958. The Act has been amended in 1983, 1984, 1992, 1994 and 1999. Before the
Act of 1957, copyright protection was governed by the Copyright Act of 1914 which was the
extension of British Copyright Act, 1911.

The Copyright Act, 1957 consists of 79 sections under 15 chapters while the Copyright Rules,
1958 consists of 28 rules under 9 chapters and 2 schedules.

Meaning of copyright

According to Section 14 of the Act, “copyright” means the exclusive right subject to the
provisions of this Act, to do or authorise the doing of any of the following acts in respect of a
work or any substantial part thereof, namely:-

(a) in the case of a literary, dramatic or musical work, not being a computer programme, -

(i) to reproduce the work in any material form including the storing of it in any medium by
electronic means;

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

(iii) to perform the work in public, or communicate it to the public;

(iv) to make any cinematograph film or sound recording in respect of the work;

(v) to make any translation of the work;

(vi) to make any adaptation of the work;

(vii) to do, in relation to a translation or an adaptation of the work, any of the acts specified
in relation to the work in sub-clauses (i) to (vi);

(b) in the case of a computer programme,-

 (i) to do any of the acts specified in clause (a);

(ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy
of the computer programme:

Provided that such commercial rental does not apply in respect of computer programmes
where the programme itself is not the essential object of the rental.

(c) in the case of an artistic work,-

(i) to reproduce the work in any material form including depiction in three dimensions of a
two dimensional work or in two dimensions of a three dimensional work;

(ii) to communicate the work to the public;

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

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

(v) to make any adaptation of the work;

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

(d) In the case of cinematograph film, -

(i) to make a copy of the film, including a photograph of any image forming part thereof;

(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;

(e) In the case of sound recording, -

(i) to make any other sound recording embodying it;

(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.

Explanation : For the purposes of this section, a copy which has been sold once shall be deemed
to be a copy already in circulation.

Classes of works for which copyright protection is available

Indian Copyright Act affords separate and exclusive copyright protection to the following 7
clauses of work:

1. Original Literary Work

2. Original Dramatic Work

3. Original Musical Work

4. Original Artistic Work

5. Cinematograph Films

6. Sound recording

7. Computer Programme

Copyright will not subsist in any cinematograph film if a substantial part of the film is an
infringement of the copyright in any other work or in any sound recording made in respect of a
literary, dramatic or musical work, if in making the sound recording, copyright in such work has
been infringed. In case of work of architecture, copyright will subsist only in the artistic
character and design and will not extend to processes or methods of construction.

OWNERSHIP OF COPYRIGHT

The author of the work will be the first owner of the copyright in the following instances:

i. In the case of a literary, dramatic or artistic work made by the author in the course of
his employment by the proprietor of a newspaper, magazine or similar periodical
under a contract of service or apprenticeship, for the purpose of publication in a
newspaper, magazine or similar periodical, the said proprietor will, in the absence of
any agreement to the contrary, be the first owner of the copyright in the work in so far
as the copyright relates to the publication of the work in any newspaper, magazine or
similar periodical, or to the reproduction of the work for the purpose of its being so
published, but in all other respects the author will be the first owner of the copyright
in the work.
ii. ii. In the case of a photograph taken, or a painting or portrait drawn, or an engraving
or a cinematograph film made, for valuable consideration at the instance of any
person, such person will, in the absence of any agreement to the contrary, be the first
owner of the copyright therein.
iii. iii. In the case of a work made in the course of the author’s employment under a
contract of service or apprenticeship, the employer will, in the absence of any
agreement to the contrary, be the first owner of the copyright therein.
iv. In the case of any address or speech delivered in public, the person who has delivered
such address or speech or if such person has delivered such address or speech on
 behalf of any other person, such other person will be the first owner of the copyright
therein notwithstanding that the person who delivers such address or speech, or, as
the case may be, the person on whose behalf such address or speech is delivered, is
employed by any other person who arranges such address or speech or on whose
behalf or premises such address or speech is delivered.
v. In the case of a government work, government in the absence of any agreement to the
contrary, will be the first owner of the copyright therein.
vi. In the case of a work made or first published by or under the direction or control of
any public undertaking, such public undertaking in the absence of any agreement to
the contrary, will be the first owner of the copyright therein.
vii. In case of any work which is made or first published by or under the directions or
control of any international organisation, such international organisation will be the
first owner of the copyright therein.

ASSIGNMENT OF COPYRIGHT

Sec.18 of the Copyright Act, 1957 deals with assignment of copyright. The owner of the
copyright in an existing work or the prospective owner of the copyright in a future work may
assign to any person the copyright either wholly or partially and either generally or subject to
limitations and either for the whole term of the copyright or any part thereof. The mode of
assignment should be in the following manner:

 Assignment should be given in writing and signed by the assignor or by his duly
authorized agent.
 The assignment should indentify the work and specify the rights assigned and the
duration and territorial extent of such assignment.
 The assignment should also specify the amount of royalty payable, if any, to the
author or his legal heirs during the currency of the assignment and the assignment
may be subject to revision, extension or termination on terms mutually agreed upon
by the parties.
 Where the assignee does not exercise the rights assigned to him within a period of
one year from the date of assignment, the assignment in respect of such rights will be
deemed to have lapsed after the expiry of the said period unless otherwise specified in
the assignment.

The period of assignment will be deemed to be 5 years from the date of assignment unless
specifically mentioned. If the territorial extent of assignment of the rights is not specified, it will
be presumed to extend within India.

If any dispute arises with respect to the assignment of any copyright the Copyright Board may,
on receipt of a complaint from the aggrieved party and after holding such inquiry as it considers
necessary, pass such order as it may deem fit including an order for the recovery of any royalty
payable, provided that the Copyright Board may not pass any order to revoke the assignment
unless it is satisfied that the terms of assignment are harsh to the assignor, in case the assignor is
also the author, provided further that no order of revocation of assignment, be made within a
period of five years from the date of such assignment.

Computer Software
In India, the Intellectual Property Rights (IPR) of computer software is covered under the
Copyright Law. Accordingly, the copyright of computer software is protected under the
provisions of Indian Copyright Act 1957. Major changes to Indian Copyright Law were
introduced in 1994 and came into effect from 10 May 1995. These changes or amendments made
the Indian Copyright law one of the toughest in the world.
The amendments to the Copyright Act introduced in June 1994 were, in themselves, a landmark
in the India's copyright arena. For the first time in India, the Copyright Law clearly explained:

• The rights of a copyright holder

• Position on rentals of software

• The rights of the user to make backup copies

Since most software is easy to duplicate, and the copy is usually as good as original, the
Copyright Act was needed.

Some of the key aspects of the law are:

• According to section 14 of this Act, it is illegal to make or distribute copies of copyrighted
software without proper or specific authorization.

• The violator can be tried under both civil and criminal law.
• A civil and criminal action may be instituted for injunction, actual damages (including
violator's profits) or statutory damages per infringement etc.
• Heavy punishment and fines for infringement of software copyright.

• Section 63 B stipulates a minimum jail term of 7 days, which can be extended up to 3 years

INFRINGEMENT OF COPYRIGHT

Copyright protection gives exclusive rights to the owners of the work to reproduce the work
enabling them to derive financial benefits by exercising such rights. If any person without
authorization from the owner exercises these rights in respect of the work which has copyright
protection it constitutes an infringement of the copyright. If the reproduction of the work is
carried out after the expiry of the copyright term it will not amount to an infringement.
In Penguin Books Ltd., England v. M/s India Book Distributors & Others AIR 1985 Del. 29, it
was observed that whenever there is misappropriation of intellectual property of which the
primary beneficiary is the copyright owner there is infringement of copyright. Copyright is a
property right. Throughout the world it is regarded as a form of property worthy of special
protection in the ultimate public interest. The law starts from the premise that protection would
be as long and as broad as possible and should provide only those exceptions and limitations
which are essential in the public interest.

Section 51 of the Act contemplates situations where copyright in a work shall be deemed to be
infringed. As per this section copyright in a work is infringed when any person without a licence
granted by the owner of the copyright or the Registrar of Copyright or in contravention of the
conditions of a licence so granted or of any condition imposed by a competent authority does —

(1) anything for which the exclusive right is conferred upon the owner of the copyright, or

(2) permits for profit any place to be used for the communication of the work to public where
such a communication constitutes an infringement of the copyright in the work, unless he was
not aware and had no reasonable ground for believing that such communication would be an
infringement of copyright.

(3) when any person

(i) makes for sale or hire or lets for hire or by way of trade display or offers for sale or hire,
or

(ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially
the owner of the copyright, or

(iii) by way of trade, exhibits in public, or

(iv) imports into India any infringing copies of the work.

However, import of one copy of any work is allowed for private and domestic use of the
importer. Explanation to Section 51 clarifies that the reproduction of literary, dramatic, musical
or artistic work in the form of cinematograph film shall be deemed to be an infringing copy.

The copyright in a work shall be deemed to be infringed by any person who, without the consent
of the owner of the copyright, does anything, the sole right to do which is conferred on the owner
of the copyright. Kartar Singh Giani v. Ladha Singh & Others AIR 1934, Lah 777 (DB).

The concept of honest and concurrent user found in Section 12(3) of the 1958 Act for securing
concurrent registration is totally irrelevant as defence in a suit for infringement and copyright
arising out of a different Act, namely, 1957 Act (M/s Power Control Appliances & Others v.
Sumeet Machines Pvt. Ltd. (1994) 2 SCC 448).
In Ushodaya Enterprises Ltd v T.V. Venugopal, 2001 PTC 727, the division bench of the Andhra
Pradesh High Court held that even though the defendant has registered the carton under the
Trademark Act, that may not come to the aid of the defendant as the case of the plaintiff is that it
owns a copyright of the artistic work under the Copyright Act and no registration is required for
the same. Thus the court held that the plaintiff was justified in alleging infringement of his
artistic work.

One of the surest test to determine whether or not there has been a violation of copy right is to
see if the reader, spectator, or the viewer after having read or seen both the works would be
clearly of the opinion and get an unmistakable impression that the subsequent work appears to be
a copy of the first. In other words, dealing with the question of infringement of copy right of the
applicant’s work by the respondent’s work, the Court is to test on the visual appearance of the
object and drawing, design, or artistic work in question and by applying the test viz., `lay
observer test’ whether to persons who are not experts in relation to objects of that description,
the object appears to be a reproduction. If to the `lay observer’, it would not appear to be
reproduction, there is no infringement of the artistic copy right in the work. A bare look at these
two artistic works `Sharp’ and `Sharp tools’. Moreover, the work `sharp’ in the work of the
appellant is embedded in a semi-circle design with rays emitting from it as if it were a rising Sub;
whereas, in the respondent’s work it is plainly `Sharp Tools’ with no design super imposing it.
Judging by the eye alone, they appear to Court to be totally different. One does not think that any
one looking at these two works would say that they are similar in any manner nor do any one
would say the design, the lay-out and the manner in which the words written in the works of the
respondent was on obvious imitation, much less an imitation of the appellant’s work. Applying
the various tests set out above, it cannot be said that the respondent had committed an act of
piracy by way of copying the copyright of the appellant. As rightly pointed out by the Copyright
Board that there can be no copyright in the word or words, but the right can only be in the artistic
manner in which the same is written, and in this case the works were totally dissimilar.
[Associated Electronic & Electrical Industries (Bangalore) Pvt. Ltd. v. M/s Sharp Tools AIR
1991 Kar 406].

M/s. Video Master & another v. M/s. Nishi Productions & others, 1998(3) Bom. CR 782. The
given case examined the circumstances under which the exhibition of film by various modes
infringed copy rights. The plaintiff was assigned video playback and cable T.V rights and he
objected to the defendants being given the satellite broadcasting rights. The Court observed that
there were various modes of communication to public and each one was separate and divisible. It
was held that each of the modes of communication could exist in different persons at the same
time without infringing copy right of the other.

The Bombay High Court in Hindustan Lever Ltd., v. Nirma Private Limited, Ahmedabad, AIR
1991 held that the dissimilarities were totally inadequate to wipe out general impression of the
unwary purchaser. Thus, there was prima facie infringement of copyright. The case dealt with
the infringement of the copyright in the label when there were only few changes made in the
colourable imitation of label.

In Eastern Book Company & Others v. Navin J. Desai & Another 2001 PTC (21) 57 Del., Delhi
High Court has held: 166 PP-IPRL&P Copyright is a limited monopoly having its origin in
protection. There cannot be any monopoly in the subject matter which the author has borrowed
from public domain. Others are at liberty to use the same material. Material in which no one has
a copyright is available to all. Every man can take what is useful from the, improve, add and give
to the public the whole comprising the original work with his additions and improvements.
Under the guise of the copyright, the plaintiffs cannot ask the Court to restrain the defendants
from making this material available to public. Judgements/orders published by the plaintiffs in
their law reports ‘Supreme Court Cases’ is not their original literary work but has been
composed of, complied and prepared from and reproduction of the judgements of the Supreme
Court of India, open to all. Merely by correcting certain typographical or grammatical mistakes
in the raw source and by adding commas, full stops and by giving paragraph numbers to the
judgement will not their work as the original literary work entitled to protection under the
Copyright Act. Plaintiffs, therefore, have no copyright in the judgements published in their law
reports. There being no copyright in the plaintiffs, there is no question of the defendant
infringing any alleged copyright. Plaintiffs have failed to make out any prima facie case in their
favour and are, therefore, not entitled to any relief in the application.

In Godrej Soaps (P) Ltd. v. Dora Cosmetics Co.2001 PTC (21) 407 Del. It was held that the
Delhi High Court held that where the carton was designed for valuable consideration by a person
in the course of his employment for and on behalf of the plaintiff and the defendant had led no
evidence in his favour, the plaintiff is the assignee and the legal owner of copyright in the carton
including the logo.

Crowning Glory carton was designed for valuable consideration by a person who produced the
said work in the course of his employment with advertising company under a contract of service
for and on behalf of the plaintiff. By the reason of the circumstances in which the said artistic
work was produced, the plaintiff is the owner of the legal and equitable title in the artistic work.
As a matter of abundant caution the copyright in the carton was assigned to the plaintiff. Plaintiff
has proved that it is the assignee of the copyright in the carton for ‘Crowning Glory’.

FAIRDEALING: Fair dealing is permitted for private use including for the purpose of
educational study or research or criticism or review. Such a 'fair dealing' provisions also extends
to reproduce literary, dramatic, musical or artistic work for the purposes of reporting current
events in a newspaper, magazine or similar periodically or by broadcast or even in a
cinematograph film or by means of photographs or using excerpts of a performance or of a
broadcast in the reporting of current events or for bonafide review, teaching or research. Further,
it has been inserted through an amendment in 1994 that the act of making copies or adaptation or
a computer programme by the lawful possessor of such copy constitutes fair use if the use is to
utilize the programme for the purpose for which it was supplied or as a means to offer temporary
protection against loss, destruction or damage of the programme.

In the case of Civic Chandran Vs Ammini Amma, 255 the court observed:

''The terms 'fair dealing' has been not defined as such in the Act. But section 52(l)(a) and (b)
specifically refers to 'fair dealing' of the work and not to reproduction of the work. Accordingly,
it may be reasonable . to hold that the re-production of the whole work or a substantial portion of
it as such will alone be permitted even as 'fair dealing'. Further the court held that 'in a case like
the one on hand, court will have to take into inconsideration; ( 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' similar to the four factor test of the U.S.
fair use doctrine."

The same Court quoting Lord Justice Denning and held that: "It is impossible to define what is
'fair dealing'. It must be a question of degree. The 'Fair Dealing' provisions can be said to reflect
the notions which were instrumental in shaping the Berne Three-Step-Test".

In fact, Senftleben opines that in so far as the making of quotations for criticism and review and
the reporting of current events are concerned, the fair dealing provisions automatically constitute
a special case in sense of the threestep test. Fair dealing is not a license to violate the exclusive
right of the copyright owner. One cannot copy from another and claim protection under the garb
of fair dealing. Simply giving the credit to the original author would not help either. Even where
the user has copied a substantial part of the work, it would be considered as 'fair' and 'legitimate'
since copyright protection requires reseanable skill and labour to reach the threshold of
originality and quality for protection. Nevertheless, in the case of fair dealing, the British
concepts somewhat narrower than the US doctrine of 'fair use' which may not be entirely relevant
to the Indian copyright statute? Notwithstanding, there has been applicability of 'fair use' in at
least one case law.

In one case before the High Court of Andhra Pradesh, involving an appeal where the trial court
had held that the film was an adaptation of the novel and since copyright permission had not
been obtained, the act constituted piracy. The Court read the four~factor~test as an important
criteria in adjudging where the cinematographic film infringes the copyrighted literary work and
arrived at the conclusion that if the person, infringing the copyrighted work obtains, a direct
pecuniary benefit from the use of the copy in its stream of commerce, then it would be
considered to be an unfair use for profit
UNIT 5

TRADEMARKS

Trademark means any mark used represent or identify a product or its maker. In a market
economy trademarks are most important because it is the biggest assets of a company that really
sells the products. This page gives information as to Indian Law on trademark and has full texts
of Legislation’s, Cases and International Conventions.

A Trademark can be generally defined as a sign or mark that individualizes and distinguishes the
goods of a given enterprise from the goods of other enterprises.

A trade mark (popularly known as brand name) in layman’s language is a visual symbol which
may be a word signature, name, device, label, numerals or combination of colours used by one
undertaking on goods or services or other articles of commerce to distinguish it from other
similar goods or services originating from a different undertaking.

• The selected mark should be capable of being represented graphically (that is in the paper
form).

• It should be capable of distinguishing the goods or services of one undertaking from those of
others.
• It should be used or proposed to be used mark in relation to goods or services for the purpose of
indicating or so as to indicate a connection in the course of trade between the goods or services
and some person have the right to use the mark with or without identity of that person.
The modern definition of trademark is that “it is a word, name, symbol, or device or a
combination thereof, used by a person [including a business entity], or which a person has a
bonafide intention to use, to identify and distinguish his or her goods from those manufactured
by others and to indicate the source of those goods.”
Trade Marks are distinctive symbols, signs, logos that help consumer to distinguish between
competing goods or services. A trade name is the name of an enterprise which individualizes the
enterprise in consumer’s mind. It is legally not linked to quality. But, linked in consumer’s mind
to quality expectation.

Key Features of Trademark

• Trademark must be Distinctive
• Trademark must be used in Commerce

Types of Trademark
• Trademark,

• Servicemark,
• Collectivemark,
• Certification Mark

Functions of Trademark
Trademark performs four functions –

• It identifies the goods / or services and its origin;

• It guarantees its unchanged quality;

• It advertises the goods/services;

• It creates an image for the goods/ services.

6.2. Trade Marks law of India

The Trade Marks Act, 1999 and the Trade Marks Rules, 2002 govern the law relating to Trade
Marks in India. The Trade Marks Act, 1999 (TMA) protects the trade marks and their
infringement can be challenged by a passing off or/and infringement action. The Act protects a
trade mark for goods or services, on the basis of either use or registration or on basis of both
elements.

6.2.1. Who can apply for Trademark?

Any person claiming to be the proprietor of a trade mark used or proposed to be used by him
may apply in writing in Form TM-1 for registration. The application should contain the trade
mark, the goods/services, name and address of applicant and agent (if any) with power of
attorney, period of use of the mark and signature. The application should be in English or Hindi.
It should be filed at the appropriate office.
A trade mark application should be filed at the appropriate office of the Registry within whose
territorial limits, the principal place of business in India of the applicant is situate. In the case of
joint applicants, the principal place of business in India of the applicant will be that of the person
whose name is first mentioned as having a place of business. If the applicant has no principal
place of business in India, he should file the application at that office within whose territorial
jurisdiction, the address for service in India given by him is located. No change in the principal
place of business in India or in the address for service in India shall affect the jurisdiction of the
appropriate office once entered.
Particulars to be filed with application for registration
The application should be filed in triplicate with the following particulars –
• Graphic representation of the trademark.

• Five Additional representations are to be provided corresponding exactly with one another.

• In the case of three dimensional mark, the reproduction of the mark should consist of a two
dimensional or photographic reproduction.

• Where the trade mark contains a word or words in scripts other than Hindi or English, a
transliteration and translation of each word in English or in Hindi should be given indicating the
language to which the word belongs, at the time of filing the application to facilitate completion
of data entry at the initial stage itself.
• The application may contain a declaration claiming priority as per the Paris Convention.

6.2.5. Procedure for series registration

Section 15 (3) makes provision for registration of trade mark as series in respect of the same or
similar goods /services where the marks, while resembling each other in the material particulars
thereof and yet differ in respect of –
1. Statement of goods or services in relation to which they are respectively used or proposed to
be used; or

2. Statement of number, price, quality or names of places; or

3. Other matter of a non-distinctive character which does not substantially affect the identity of
the trade mark; or
4. Colour
Application for registration of series marks is to be on form TM-8 or TM-37 as the case may be.
Though it is permissible to file a single application for registration of trade mark in more than
one class, it is to be noted that each series marks must be in respect of the same goods or services
or description of goods/services. Where a group of marks are applied for registration as series in
one registration and the Registrar does not consider them eligible for registration of series marks
under section 15 the applicant will be required to delete any of the mark which is under
objection. It is also open to the applicant to apply on form TM-53 for division of the application
to conform to the provision of section 22. All trademarks registered as series in one registration
are deemed to be registered as associated trade mark.

6.2.6. Registration of Collective Marks

Special provisions have been made for registration of collective marks in section 61 to 68 of the
Act. “Collective mark” is defined to mean a trade mark distinguishing the goods or services of
members of an association of persons (not being a partnership within the meaning of Indian
Partnership Act, 1932 ) which is the proprietor of the mark from those of others”- section
2(1)(g). To be registerable, the collective mark must be capable of being represented graphically
and meet other requirements as are applicable to registration of trade marks in general. The
following points should be noted for registering collective marks -
• The collective mark is owned by an association of persons not being a partnership.

• The collective marks belong to a group and its use thereof is reserved for members of the
group.
• The association may not use itself the collective mark but it ensures compliance of certain
quality standards by its members who may use the collective mark.
• The primary function of a collective mark is to indicate a trade connection with the association
or organization who is the proprietor of the mark.
Application for registration as collective mark should be made on form TM-3. Where appropriate
form TM-66 , 64 or TM-67 can be used.

6.2.7. Administrative procedure of registration of trademarks

An application for registration of trademarks is received at the Head office of Trademark
Registry, Mumbai and its branches according to territorial jurisdiction. Applications are then
examined mainly with regard to the distinctiveness, possibility of deceptiveness and conflicting
trademarks. The registrar on consideration of the application and any evidence of use or
distinctiveness decides whether the application should be accepted for registration or not, and if
accepted, publishes the same in the official gazette i.e. Trade Marks Journal (published in
CDRom).
Within a prescribed period any person can file an opposition, a copy of which is served to the
applicants who is required to file a counterstatement within two months failing which the
application shall be treated as abandoned.
Thereafter, the opponent leads evidence in support of his case by way of affidavit followed by
the applicant’s evidence also by way of affidavit in support of the application. After that the
opponent files evidence by way of rebuttal. On completion of evidence, the matter is set down
for a hearing and the case is decided by a Hearing officer. The registrar’s decision is appealable
to the Intellectual Property Appellate Board.

Almost all functions of the Registry have now been decentralized and executed by respective
offices except publication of journal, issuance of Registration Certificate and post registration
activities including renewal which is done at TMR, Mumbai (Head Office).

6.2.8. Correction and amendment of registration application

An applicant for registration of a trade mark can before the registration of the mark, apply in
Form TM-16 for correction of any error in connection with his application. But the correction
should not alter the trade mark that has been applied for or substitute a new specification of
goods or services not included in the application.

6.2.9. Renewal of registration

The period of registration which was 7 years until recently under 1958 Act, has been increased to
10 years under the present Act. The 10 year period of registration is reckoned from the date of
making of the application which is deemed to be the date of registration.
Registrations can be renewed by payment of prescribed renewal fees in all cases (trademark /
collective marks/certification marks) on form TM-12. The application is filed by the proprietor
of the registered trade mark or his agent. If there is any change in the proprietorship of the mark,
and it has not been brought on record, proof of title should be filed in the first instance.
Trademark Passing Off

The Trademark Act, 1999 under Section 27 provides for the remedy of passing off for misuse of
an unregistered trademark by the Defendant. It enumerates that no person shall be entitled to
institute any proceeding to prevent infringement of an unregistered trademark. The law further
entails that the provision shall not affect the rights of action against any person for passing off
goods or services as the goods of another person or as services provided by another person, or
the remedies in respect thereof.

Section 27 of the Act recognizes common law rights of the trademark owner to take action
against any person for passing of goods as the goods of another person or as services provided by
another person or remedies thereof. The remedy made available under Section 27 protects the
rights of the proprietor of an unregistered trademark to register complaint against another person
for passing off his goods as goods the goods of proprietor. An unregistered proprietor of
trademark can also oppose an application for registration on grounds as enumerated under
Section 11 of the Act[20].

In an action of passing off, the Plaintiff has to establish prior use to secure an injunction and that
the registration of the mark or similar mark in point of time, is irrelevant[21].

Classical Trinity Test in Passing off Action

Lord Oliver in the case of Reckitt & Colman Products Ltd. v. Borden Inc.[22] enumerated three
elements for a successful passing off action: (1) Goodwill owned by a trader, (2)
Misrepresentation and (3) Damage to goodwill. Thus, the passing action is essentially an action
in deceit where the common law rule is that no person is entitled to carry on his or her business
on pretext that the said business is of that of another[23].

Tests in the case of passing off

The Supreme Court in the case of Cadila Healthcare Ltd. v. Cadila Pharmaceutical
Ltd.[24], laid down the test of passing off and observed that a passing off action depends upon
the principle that nobody has a right to represent his goods as the goods of some body. In other
words a man is not to sell his goods or services under the pretence that they are those of another
person. As per Lord Diplock in Erwen Warnink BV v. J.Townend & Sons[25], the modern tort
of passing off has five elements, namely

 a misrepresentation
 made by a trader in the course of trade
 to prospective customers of his or ultimate consumers of goods or services supplied by
him
 which is calculated to injure the business or goodwill of another trade (in the sense
that this is a reasonably foreseeable consequence), and
 which causes actual damage to a business or goodwill of the trader by whom the
action is brought or (in a quia timet action) will probably do so.

Further in the case of Corn Products Refining Co. v. Shangrila Food Products Ltd.[26], it was
observed that the principle of similarity could not to be very rigidly applied and that if it could
be prima facie shown that there was a dishonest intention on the part of the defendant in passing
off goods, an injunction should ordinarily follow and the mere delay in bringing the matter to
Court was not a ground to defeat the case of the plaintiff.

Is fraud an essential element of passing-off

According to Kerly[27]– Passing off cases are often cases of deliberate and intentional
misrepresentation, but it is well-settled that fraud is not a necessary element of the right of
action, and the absence of an intention to deceive is not a defence though proof of fraudulent
intention may materially assist a plaintiff in establishing probability of deception. The burden to
prove passing off is on the Plaintiff[28].

The defendant may escape liability in an action for passing off if he can show that his mark or
goods, besides the essential features which are sufficient to distinguish the same from that of the
plaintiff. Thus, while in an action for infringement of a registered trade mark the plaintiff has to
establish either an use of his registered trade mark as such or of an identical mark or of a
deceptively similar mark by the defendant, he has to establish in an action for passing off that the
defendant’s mark or goods are such that the defendant can pass off his goods as those of the
plaintiff[29].

Trademark Infringement
Section 29 of the Act provides remedy in cases of trademark infringement. The statutory
provision also enlists the circumstances under which a mark is infringed:

1. Infringement of a mark occurs when a person not being registered proprietor uses a
mark which is identical or deceptively similar to a registered mark in relation to goods
or services in respect of which the trademark is registered.
2. When a person not being a registered proprietor uses a registered trademark which
because of its identity with registered trademark and similarity with goods or services
is likely to cause confusion in public.
3. When a person not being registered proprietor of a mark uses mark which is identical
or similar to the registered trademark in relation to similar goods or services and the
registered mark has a reputation in India.
4. A registered trademark is infringed by a person if he uses such registered trademark as
part of his trade name of his business concern dealing in goods or services in respect
of which the trade mark is registered.
5. A registered trademark is infringed by any advertising of that trademark if such
advertising takes unfair advantage and is detrimental to its distinctive character.

Under this Section we would deal with cases in which the Judiciary has shed light on trademark
infringement law in India.

When mark adopted by Defendant is identical to Plaintiff’s registered trademark

If on comparison of the trademarks of the two parties in case the trademark adopted by the
Defendant is identical to that of the Plaintiff, the Plaintiff may not be required to prove anything
further. Section 29 of the Trademarks Act, 1999 statutorily mandates so as well. However, when
the two marks are not identical, then the plaintiff would be required to establish that the mark
used by the defendant so nearly resembles the plaintiff’s registered trademark as is likely to
deceive or cause confusion in the minds of the consumer public[30].

Onus to prove infringement on Plaintiff

The Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma v. Navratna
Pharmaceutical Laboratories[31] held that in an action for infringement the onus would be on
the Plaintiff to establish that the trade mark used by the defendant in the course of trade in the
goods in respect of which his mark is registered, is deceptively similar.
How can the Plaintiff establish that the Defendant’s mark is identical or resembles the
Plaintiff’s mark

This issue was elaborately discussed by the Delhi High Court in the case of Atlas Cycle
Industries Ltd. v. Hind Cycles Limited[32], wherein the Court stated that in a case of trademark
infringement, the plaintiff may establish that its trademark is identical with or so nearly
resembles the plaintiff’s work either visually or phonetically or otherwise, that it is likely to
deceive or cause confusion in relation to the case in respect of which the plaintiff got his mark
registered.

Thus, if the essential features of the trade mark of the plaintiff have been adopted by the
defendant, the fact that there are some additional features in the defendant’s mark which show
marked differences is immaterial in an action for infringement.

Test of deception in trademark infringement cases

The Bombay High Court in the case of Thomas Bear And Sons (India) v. Prayag
Narain[33], held that in judging the probability of deception, the test is not whether the ignorant
the thoughtless, or the incautious purchaser is likely to be misled, but we have to consider the
average purchaser buying with ordinary caution.

The Supreme Court’s decision in the case of James Chadwick & Bros. Ltd. v. The National
Sewing Thread Co. Ltd.[34], can be regarded as an essential obiter dicta which aided in
streamlining the interpretation of trademark infringement law in India. The Court in the case
stated that in an action of alleged infringement of a registered trade mark, it has first to be seen
whether the impugned mark of the defendant is identical with the registered mark of the plaintiff.
If the mark is found to be identical, no further question arises, and it has to be held that there was
infringement.

If the mark of the defendant is not identical, it has to be seen whether the mark of the defendant
is deceptively similar in the sense that it is likely to deceive or cause confusion in relation to
goods in respect of which the plaintiff got his mark registered. For that purpose, the two marks
have to be compared.

How to compare marks for deception

In James Chadwick’s case, the Supreme Court held that to ascertain deception between two
marks the mark need not be placed side by side, but by asking itself whether having due regard
to relevant surrounding circumstances, the defendant’s mark as used is similar to the plaintiff’s
mark as it would be remembered by persons possessed of an average memory with its usual
imperfections, and it has then to be determined whether the defendant’s mark is likely to deceive
or cause confusion.

How to determine likelihood of confusion between disputed marks

For such determination the essential features of the two marks and the main idea, if any,
underlying the two marks which a purchaser of average intelligence and imperfect memory
would retain in his mind after seeing the marks, have to be noticed. It has then to be seen
whether they are broadly the same or there is an overall similarity or resemblance, and whether
the resemblance or similarity is such that there is a reasonable probability of deception or
confusion. In doing so, the approach has to be from the point of view of purchaser of average
intelligence and imperfect memory or recollection, and not an ignorant, thoughtless and
incautious purchaser.

Difference between Trademark Infringement and Passing off

The difference between a passing off action and an action for trademark infringement was
expounded by the Delhi High Court in the case of Cadbury India Limited and Ors. v. Neeraj
Food Products[35] as under:

 An action for passing off is a common law remedy whereas an action for trademark
infringement is a statutory remedy.
 Passing off action in essence is an action of deceit that is, a passing off by a person of
his own goods as those of another whereas in case of infringement, the Plaintiff on
account of being registered proprietor of the disputed trademark, claims to have an
exclusive right to use the mark in relation to those goods.
 The use by the defendant of the trademark of the plaintiff may be prerequisite in the
case of an action for infringement while it is not an essential feature of an action for
passing off.
 If the essential features of the trademark of the plaintiff have been adopted by the
defendant, the fact that the getup, packing and other writing or marks on the goods or
on the packets in which the defendant offers his goods for sale show marked
 differences or indicate clearly a trade origin different from that of a registered
proprietor of the mark, would be immaterial for the case of infringement of the
trademark. The liability of the defendant for such infringement may be absolute. In the
case of passing off, the defendant may escape liability if he can show that the added
material is sufficient to distinguish his goods from those of the plaintiff.

The distinction between passing off and infringement was examined by Judge Clauson in the
case of Listen Ltd. V. Harley[36], wherein he opined that if you are restraining the infringement
of a registered mark, you can restrain the man from using the mark; but, restrain him from
selling the articles under the label containing that word without clearly distinguishing his goods
from the goods of the Plaintiff is quite a different thing.

The Supreme Court in a recent case of S. Syed Mohideen v. P. Sulochana Bai[37], stated that
passing off right is a broader remedy than that of infringement. This is due to the reason that the
passing off doctrine operates on the general principle that no person is entitled to represent his or
her business as business of other person. The said action in deceit is maintainable for diverse
reasons other than that of registered rights which are allocated rights under the Act.

[20] Kaviraj Pandit Durga Dut Sharma v. Navratna Pharmaceutical Laboratories, AIR 1965 SC 980
[21] Century Traders v. Roshan Lal Duggar & Co., AIR 1978 Delhi 250
[22] (1940) 42 BOMLR 734
[23] 1953 SCR 1028
[24] 2007 (35) PTC 95 Del
[25] 1979 (2) AER 927
[26] (1929) 4 RPC 11 (2)
[27] Kerly’s Law of Trademarks and Trade names (para 16.16)
[28] National Sewing Thread Co. v. James Chadwick & Bros., ILR (1949) Mad 4
[29] Atlas Cycle Industries Ltd. vs Hind Cycles Limited; ILR 1973 Del 393
[30] Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories; 1997 PTC (17)(DB) 779
[31] ibid
[32] ILR 1973 Delhi 393
[33] (1940) 42 BOMLR 734
[34] 1953 SCR 1028
[35] 2007 (35) PTC 95 Del
[36] (1929) 4 RPC 11 (2)
[37] 2016 (66) PTC 1