INTELLECTUAL PROPERTY LAW

UNIT – 1

NATURE OF INTELLECTUAL PROPERTY:

THE MAIN FORMS OF INTELLECTUAL PROPERTY:

Intellectual property refers to legal rights granted to individuals or entities for their creations or inventions,
which can be tangible or intangible. It provides exclusive rights to the creators or owners of intellectual assets,
allowing them to protect and control the use of their creations or inventions. The main purpose of intellectual
property is to encourage and incentivize innovation and creativity by providing legal protection and economic
benefits to the creators.

There are several types of intellectual property rights, including:

1. Copyright: Copyright protects original works of authorship, such as literature, music, art, and software.
It grants exclusive rights to the creator, allowing them to control the reproduction, distribution, public
display, and adaptation of their work for a specific period. In most countries, copyright protection lasts
for the creator's lifetime plus a certain number of years after their death.
2. Trademarks: Trademarks are distinctive signs, symbols, logos, or names used to identify and
distinguish goods or services from others in the marketplace. They provide brand recognition and
prevent others from using similar marks that could cause confusion among consumers.
3. Patents: Patents protect inventions and new technologies, granting exclusive rights to the inventor for a
limited period. They provide the right to exclude others from making, using, selling, or importing the
patented invention without permission.
4. Trade Secrets: Trade secrets are valuable and confidential business information, such as formulas,
manufacturing processes, customer lists, or marketing strategies. Unlike patents, trade secrets are
protected by keeping them confidential and taking reasonable measures to maintain secrecy.
 5. Industrial Design Rights: Industrial design rights protect the visual appearance or aesthetic aspects of a
product or object. They ensure that the unique design elements of a product are protected from being
copied or imitated.
6. Geographical Indications: Geographical indications (GIs) are used to identify products originating
from a specific geographic location that possess certain qualities, reputation, or characteristics due to
their geographical origin. They protect the reputation and uniqueness associated with products from
specific regions.
7. Giving an exclusive right to the owner: It means others, who are not owners, are prohibited from
using the right. Most intellectual property rights cannot be implemented in practice as soon as the owner
got exclusive rights. Most of them need to be tested by some public laws. The creator or author of an
intellectual property enjoys rights inherent in his work to the exclusion of anybody else.

These intellectual property rights aim to provide a legal framework for creators, inventors, and innovators to
safeguard their ideas, creations, and investments, fostering innovation, economic growth, and fair competition.
RATIONALE FOR PROTECTION OF RIGHTS : The protection of intellectual property rights is crucial
for several reasons:

1. Encouraging Innovation: Intellectual property rights provide incentives for individuals and
organizations to invest time, effort, and resources into creating and developing new ideas, inventions,
and artistic works. By granting exclusive rights and rewards to creators and innovators, intellectual
property protection stimulates innovation and encourages the creation of new knowledge, technologies,
and creative expressions.

2. Economic Growth and Competitiveness: Intellectual property can be a valuable asset for individuals,
businesses, and nations. It encourages entrepreneurship and investment, fostering economic growth and
job creation. By safeguarding intellectual property rights, countries create an environment that attracts
foreign direct investment, encourages research and development activities, and stimulates the growth of
industries that rely on intellectual property, such as technology, pharmaceuticals, and entertainment.

3. Fair Return on Investment: Intellectual property protection enables creators and inventors to reap the
benefits of their hard work and investment. Without legal protection, there would be little incentive for
individuals and businesses to invest in research, development, and the creation of new products, as they
could be easily copied or imitated by competitors. By ensuring a fair return on investment, intellectual
property rights promote a culture of innovation and provide an avenue for creators to monetize their
creations.

4. Consumer Protection and Safety: Intellectual property rights help protect consumers by ensuring the
safety and quality of products and services. Patents, for example, require inventors to disclose their
inventions in detail, which promotes transparency and enables others to build upon previous knowledge.
This disclosure requirement allows for the dissemination of crucial information related to product safety,
manufacturing processes, and technological advancements.

5. Cultural and Artistic Preservation: Intellectual property rights protect the cultural and artistic heritage
of a society. They provide artists, authors, musicians, and other creators with the means to control and
 profit from their work. This protection encourages the creation and preservation of diverse cultural
expressions and ensures that artists and creators can continue their creative endeavors.

6. International Cooperation and Collaboration: Intellectual property rights play a significant role in
fostering international cooperation and collaboration. By establishing a framework for the protection and
enforcement of intellectual property, countries can engage in mutually beneficial trade and technology
transfer. Such collaborations promote the sharing of knowledge, innovation, and best practices across
borders, contributing to global progress and development.

Overall, the protection of intellectual property rights is essential for promoting innovation, economic growth,
consumer protection, cultural preservation, and international cooperation. It incentivizes creativity and rewards
inventors and creators, ensuring a fair and thriving environment for innovation and progress.
 INTELLECTUAL PROPERTY AND ECONOMIC DEVELOPMENT IN INDIA

Intellectual Property (IP) encompasses the legal rights granted to individuals and organizations for their
creations, inventions, and innovations. As nations become increasingly interconnected through globalization,
the significance of IP in fostering economic development has gained prominence, especially in developing
economies like India. India, with its rich cultural heritage and burgeoning technological landscape, recognizes
that a robust IP framework is essential for promoting innovation, attracting foreign investment, and enhancing
competitive advantage in the global market. This document explores the intricate relationship between
intellectual property and economic development in India, examining the historical context, current landscape,
challenges, and the role of government initiatives.

India's engagement with intellectual property dates back to colonial times when the British introduced various
forms of IP protection, primarily to benefit their own industries. Post-independence, India adopted a more
comprehensive approach to IP rights. The Patents Act of 1970 was a landmark legislation that set the foundation
for patent protection in the country. This act was characterized by a relatively restrictive patent regime, aimed at
promoting indigenous innovation and ensuring access to essential goods.

The landscape of IP underwent significant changes after India became a member of the World Trade
Organization (WTO) in 1995, agreeing to comply with the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS). This agreement necessitated a shift towards stronger IP protection, leading to
amendments in existing laws and the introduction of new legislation in areas like trademarks, copyrights, and
geographical indications. The transition aimed to balance the need for protecting creators' rights while ensuring
that public interests, especially in sectors like health and agriculture, were not compromised.

The Role of Intellectual Property in Economic Development

1. Incentivizing Innovation and Creativity: Intellectual property serves as a catalyst for innovation by
providing legal protection to creators and inventors. When individuals and businesses know that their creations
will be safeguarded, they are more likely to invest time and resources into research and development (R&D). In
India, sectors such as pharmaceuticals, biotechnology, information technology, and creative industries have
witnessed significant growth driven by a culture of innovation fostered by IP protection. For example, the
pharmaceutical sector, supported by robust patent laws, has enabled Indian companies to develop new drugs
and treatments, contributing to both domestic and global health.

2. Attracting Foreign Direct Investment (FDI): A strong intellectual property framework is crucial for
attracting foreign direct investment. Multinational corporations are more likely to invest in countries where their
intellectual property is protected, as it assures them that their innovations and investments will be safe from
infringement. India has emerged as an attractive destination for FDI, largely due to its commitment to
strengthening IP laws. The growth of the Indian IT and software services industry, which has attracted
significant foreign investment, is a testament to the importance of IP in fostering an environment conducive to
business growth.

3. Supporting Small and Medium Enterprises (SMEs): Small and medium enterprises play a vital role in
India's economy, contributing significantly to employment and GDP. Effective IP protection empowers these
enterprises by enabling them to secure their innovations and establish a competitive edge in the market.
Government initiatives, such as the Startup India program, have been introduced to promote awareness of IP
rights among SMEs, encouraging them to leverage IP as a strategic asset. By safeguarding their innovations,
SMEs can enhance their market position and explore opportunities for growth, both domestically and
internationally.

4. Enhancing Global Competitiveness: In a globalized economy, countries compete for market share based on
their innovation capabilities. A strong IP framework enhances a nation's competitive advantage by fostering a
culture of creativity and innovation. India has the potential to position itself as a leader in various sectors,
including technology, design, and entertainment, by effectively utilizing its IP resources. The success of Indian
companies in the global market, such as the rise of Bollywood and the expansion of Indian software firms,
underscores the importance of IP in enhancing global competitiveness.

Current Landscape of Intellectual Property in India: India's IP landscape has evolved significantly over the
past few decades, characterized by a series of legislative reforms and government initiatives aimed at
strengthening IP protection. Key developments include:
1. Legislative Framework: India's IP laws encompass various forms of protection, including patents,
trademarks, copyrights, and geographical indications. The Patents Act, 1970, has undergone multiple
amendments to comply with TRIPS standards, allowing for product and process patents in various fields. The
Trade Marks Act, 1999, and the Copyright Act, 1957, have also been revised to enhance protection and
streamline registration processes.

2. Geographical Indications (GIs): Geographical indications play a significant role in protecting traditional
knowledge and cultural heritage. India has registered numerous GIs, such as Darjeeling tea, Basmati rice, and
Pashmina wool, which not only safeguard traditional crafts but also enhance the marketability of these products
on a global scale. GIs provide local artisans and farmers with a means to secure their livelihoods while
promoting sustainable economic development.

3. Digital Transformation: The advent of digital technologies has presented new challenges and opportunities
for IP protection. The rise of the internet and digital platforms has led to increased instances of copyright
infringement and piracy. In response, the Indian government has taken steps to strengthen its IP enforcement
mechanisms, including the establishment of dedicated IP cells and specialized courts to expedite IP-related
cases.

Challenges in the IP Landscape

Despite significant progress in strengthening IP laws and frameworks, India faces several challenges that hinder
the effective utilization of intellectual property in driving economic development:

1. Enforcement Issues: One of the most significant challenges in India's IP landscape is the enforcement of IP
rights. Despite having robust laws in place, infringement of patents, trademarks, and copyrights remains
prevalent. The legal process for addressing IP violations can be lengthy, expensive, and complex, discouraging
creators from pursuing legal action. Strengthening the judicial system and enhancing the capacity of
enforcement agencies is crucial for ensuring that IP rights are effectively protected.

2. Awareness and Education: There is a general lack of awareness about intellectual property rights among
entrepreneurs, particularly in rural and semi-urban areas. Many creators are unaware of the importance of
protecting their innovations, leading to underutilization of IP rights. Educational initiatives and outreach
programs are essential to bridge this knowledge gap. The government and industry stakeholders must
collaborate to develop awareness campaigns that inform entrepreneurs about the benefits of IP protection and
the processes involved.

3. Balancing Access and Protection: Striking a balance between protecting intellectual property and ensuring
access to essential goods, such as medicines and technology, is a contentious issue. The pharmaceutical sector,
in particular, faces scrutiny over patent practices that can limit access to affordable medicines. Policymakers
must navigate this complex terrain to ensure that the protection of IP does not come at the expense of public
health and welfare. Initiatives such as compulsory licensing have been introduced to address this issue, allowing
for the production of generic versions of patented drugs under specific circumstances.

4. High Costs of Protection: The costs associated with obtaining and maintaining IP rights can be prohibitive,
especially for small businesses and individual inventors. The application and renewal fees for patents,
trademarks, and copyrights can present significant financial burdens. The government can play a role in
reducing these costs through subsidies, grants, or streamlined processes, making it easier for innovators to
secure their rights.

Government Initiatives and Policies: The Indian government has recognized the importance of intellectual
property in economic development and has implemented various initiatives to bolster its IP regime:

1. National Intellectual Property Rights Policy (2016): The National IPR Policy aims to create an ecosystem
that promotes innovation, creativity, and entrepreneurship. It emphasizes the need for public awareness,
effective enforcement, and the facilitation of technology transfer. The policy outlines a roadmap for
strengthening IP protection and fostering a culture of innovation across various sectors.

2. Startup India Initiative: Launched in 2016, the Startup India initiative encourages entrepreneurship by
providing financial support, mentorship, and facilitating access to IP protection. The government has
established a dedicated fund to support startups in obtaining patents and trademarks, making it easier for them
to secure their innovations.
3. Make in India: The Make in India initiative aims to transform India into a global manufacturing hub. By
promoting IP protection, the government seeks to attract foreign investment and encourage domestic
manufacturing, driving economic growth. The initiative emphasizes the importance of innovation and IP in
enhancing the competitiveness of Indian industries.

4. Awareness Campaigns: Various campaigns and workshops are organized to educate entrepreneurs,
particularly in rural areas, about the importance of IP rights. These initiatives aim to foster a culture of
innovation and encourage creators to protect their ideas. Collaborations between government agencies, industry
associations, and educational institutions can enhance outreach efforts and promote IP awareness.

Several examples illustrate how intellectual property has contributed to economic development in India:

1. Pharmaceutical Sector: India's pharmaceutical industry is a global leader in generic medicines. The
effective use of IP laws has enabled Indian companies to innovate and produce affordable drugs, significantly
impacting global healthcare. For instance, the production of antiretroviral drugs for HIV/AIDS treatment has
made a profound difference in access to medication. Indian pharmaceutical companies like Cipla and Dr.
Reddy's Laboratories have successfully navigated the complexities of IP protection to expand their market
presence internationally while providing affordable healthcare solutions.

2. Information Technology: The IT sector in India has thrived due to a strong emphasis on software copyrights
and trade secrets. Companies like Infosys and Tata Consultancy Services (TCS) have leveraged IP to create
proprietary software solutions, enhancing their competitiveness in the global market. The rise of India's IT
services industry, driven by innovation and IP protection, has made significant contributions to economic
growth and employment generation.

3. Traditional Arts and Crafts: Protecting traditional knowledge and cultural expressions through
geographical indications (GIs) has provided artisans and craftsmen with a means to secure their livelihoods.
Products like Darjeeling tea and Pashmina shawls have gained international recognition, contributing to rural
economic development. By safeguarding traditional crafts, India can promote sustainable development while
preserving its cultural heritage.
4. Startups and Innovation Hubs: The rise of startups in India, particularly in technology and e-commerce,
has been fueled by a culture of innovation and IP protection. Initiatives like the Atal Innovation Mission aim to
foster entrepreneurship and innovation by providing support for startups and promoting IP awareness. The
success of companies like Flipkart and Zomato exemplifies how effective IP strategies can drive growth and
create employment opportunities.

CONCLUSION: Intellectual property is a vital driver of economic development in India, playing a crucial
role in fostering innovation, attracting investment, and enhancing global competitiveness. While significant
progress has been made in strengthening the IP framework, challenges remain that need to be addressed through
effective enforcement, education, and policy reforms. As India continues to evolve into a knowledge-driven
economy, a strategic focus on intellectual property will be essential for harnessing the potential of its human
capital and creative resources. By cultivating a robust IP ecosystem, India can pave the way for sustainable
economic growth and development in the years to come, ultimately positioning itself as a leader in innovation
on the global stage.
 WORLD INTELLECTUAL PROPERTY ORGANIZATION

The World Intellectual Property Organisation or WIPO is a UN specialized agency created in 1967 to promote
intellectual property (IP) protection and encourage creative activity all over the world. WIPO is basically a
global forum for IP policy, services, information and cooperation.

The World Intellectual Property Organisation or WIPO is a global body for the promotion and protection of
Intellectual Property Rights (IPR).

 It acts as a global forum for IP Services.

 WIPO is a self-funded agency of the United Nations.

 With 192 members, WIPO’s motto is to encourage creative activity, to promote the protection of
intellectual property throughout the world.

 It is at present headed by Francis Gurry, who is its Director-General. WIPO is headquartered in

Geneva, Switzerland.

 WIPO has its origins in the United International Bureaux for the Protection of Intellectual Property
(BIRPI), which was established in 1893.

The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations responsible
for promoting and protecting intellectual property (IP) rights worldwide. WIPO was established in 1967 and is
headquartered in Geneva, Switzerland.

The primary goal of WIPO is to encourage creativity and innovation by providing a balanced and effective
international framework for IP rights. It works to develop international legal frameworks, policies, and services
that facilitate the protection of intellectual property across different countries.
WIPO CORE VALUES:

1. SHAPING THE FUTURE:

• Seeing the big picture : Seek to understand how your work fits within the wider organizational context.
Bear in mind the overall purpose while undertaking the immediate tasks at hand.

• Seeking change and innovation: Remain agile and adapt to changing organizational requirements.
Challenge outdated assumptions in the pursuit of new, creative and innovative solutions.

• Developing yourself and others: Make a deliberate effort to continuously improve competencies,
knowledge and skills. Embrace new technologies. Support others in their development.

2. WORKING AS ONE:

• Communicating effectively: Speak and write clearly, listen actively and use appropriate language and
communication channels to deliver the content with the intended impact. Share ideas, knowledge and
information within and outside of WIPO.

• Showing team spirit: Value the contribution of others to achieve results. Collaborate with others and
strive for agreement on shared purpose, direction and delivery.

3. ACTING RESPONSIBLY:

• Demonstrating integrity: Demonstrate the highest standard of conduct in compliance with WIPO´s
legal and ethical standards and practices. Demonstrate commitment to WIPO and its mission.

• Valuing diversity: Treat all people with fairness, dignity and respect.

4. DELIVERING EXCELLENCE:
 • Producing results: Produce high-quality results in conformity with needs to the highest standards of
organizational delivery.

• Showing service orientation: Anticipate, understand and effectively address business needs and focus on
delivering high-quality services.

FUNCTIONS:

 To help governments, businesses and society realise the benefits of IP.

 To provide a policy forum to shape balanced international IP rules for a changing world .

 To provide global services to protect IP accross borders and to resolve the disputes.

 To provide technical infrastructure to connect IP systems and share knowledge.

 To provide co-operation and capacity building programmes to enable all the countries to use IP for
economic,social and cultural development.

 To provide a world reference source for IP information.

1883 - Paris convention for the protection of Industrial property .The first step taken to protect intellectual
intellectual work in other countries ,It covers :

 Inventions (patents)

 Trademarks

 Industrial Design.

1886 - Berne Convention For the protection of Literary and artistic works. It covers :

 Novels,short stories,poems, plays

  Songs,opera , musicals,

 Drawings, paintings, sculptures, architectural works.

1891- Madrid Agreement. Launched The first International IP filing service. 1970- BIPRI becomes WIPO.

WIPO becomes a member state-led intergovernmental organization. 1974- WIPO joins the UNIV.

1893- BIRPI(BUREAUX FOR THE PROTECTION OF INTELLECTUAL PROPERTY) established . Two

secretariats set up to administer the Paris and Berne Conventions combine to form the United International
BUREAUX for the Protection of Intellectual Property.

1978 - Patent Cooperation Treaty(PCT) system launched By filing one international patent application under
PCT, applicants can simultaneously seek protection for an invention in a very large number of countries.

1994 - Arbitration and Mediation Centre (AMC) establish. The centre offers alternative disputes resolution
services to help solve international commercial disputes between private parties.

WIPO's activities include:

1. International Treaties and Agreements: WIPO administers a range of international treaties and
agreements that establish standards for the protection of IP rights. Notable treaties include the Paris
Convention for the Protection of Industrial Property and the Berne Convention for the Protection of
Literary and Artistic Works.

2. IP Policy Development: WIPO helps member states develop IP policies and strategies that foster
innovation and economic development. It provides technical assistance, capacity building, and advisory
services to governments, particularly those from developing countries.

3. IP Registration Systems: WIPO manages international registration systems for various types of IP,
such as trademarks (Madrid System), patents (Patent Cooperation Treaty), industrial designs (Hague
 System), and appellations of origin (Lisbon System). These systems simplify and streamline the process
of seeking protection in multiple countries.

4. Dispute Resolution and Mediation: WIPO offers services for the resolution of IP disputes, including
arbitration, mediation, and domain name dispute resolution. It provides a neutral platform for parties to
resolve conflicts without resorting to expensive and time-consuming litigation.

5. IP Data and Research: WIPO collects and analyzes data on global IP activity, including patents,
trademarks, and designs. It publishes reports and statistical publications that provide insights into IP
trends, innovation, and economic impact.

6. Global IP Cooperation: WIPO facilitates international cooperation among governments, organizations,

and other stakeholders in the field of IP. It organizes conferences, seminars, and workshops to foster
knowledge sharing and collaboration.

WIPO comprises 193 member states, making it one of the largest international organizations. It acts as a global
forum for policymakers, experts, and stakeholders to address emerging IP challenges and develop norms that
balance the interests of creators, innovators, and the public.
 IPR & HUMAN RIGHTS

Intellectual Property Rights (IPR) and Human Rights are two domains of law that exist independently but still
impact each other. The relationship between them is an interesting one. Currently, IPR and Human Rights
overlap each other much more than expected. The right to intellectual property finds its place in the Universal
Declaration of Human Rights (UDHR) and the United Nations Declaration for the Right of Indigenous People
(UNDRIP). The major concern which arises is ‘whether IPR is embedded in Human Rights or do human rights
hinder IPR’.

Human rights are non-discriminatory and inherent to all humans, and they have a right to experience the feeling
of being equal all around the globe. These rights may be civil rights like the right to life, liberty and security;
political rights like the right to protection of law and equality before the law; economic rights like the right to
work or equal pay; social rights like the right to education; and cultural rights and collective rights like the right
to self-determination.

IPR are the rights people get based on the creations of their minds. It includes the exclusive right given to a
creator to use their creation. The two broad categories of IPR are copyrights and industrial property rights. The
four basic categories of IPR are trade secrets, trademarks, copyrights and patents. The main purpose of
copyright is to protect the rights of authors and artists and reward their creative work. Industrial property rights
include the right to use trademarks that distinguish goods from others, and patents that protect technology
creations. The purpose is to give protection to research and developmental activities.

Intellectual Property Rights (IPR) and human rights are two distinct areas of law that often intersect and can
sometimes create tensions or conflicts.

IPR refers to the legal rights that are granted to individuals or entities to protect their creations or inventions.
These rights include copyrights, trademarks, patents, and trade secrets. The primary purpose of IPR is to
incentivize innovation and creativity by granting exclusive rights to the creators or inventors, allowing them to
profit from their work and encourage further innovation.
Human rights, on the other hand, are inherent rights and freedoms that are recognized and protected for all
individuals, regardless of their nationality, race, gender, religion, or any other status. Human rights encompass a
wide range of rights, including civil and political rights, economic and social rights, and cultural rights. They
are designed to ensure dignity, equality, and freedom for all individuals.

While IPR and human rights are distinct legal frameworks, there can be situations where conflicts or tensions
arise. Some common points of tension include:

1. Access to essential medicines: Intellectual property protection, particularly in the pharmaceutical

industry, can restrict access to affordable medications, especially in developing countries. This can
conflict with the right to health, which is considered a fundamental human right.

2. Freedom of expression: Copyright laws and other forms of IPR protection can sometimes clash with
freedom of expression and access to information. Strict enforcement of copyright can lead to limitations
on the sharing of knowledge, creative works, and cultural expressions.

3. Indigenous rights: Indigenous communities often have traditional knowledge and cultural expressions
that may be subject to appropriation or exploitation through IPR regimes. Protecting indigenous rights
while recognizing the value of traditional knowledge can be a challenge.

To address these conflicts, efforts have been made to strike a balance between IPR protection and the protection
of human rights. International organizations, such as the World Intellectual Property Organization (WIPO),
recognize the need for a holistic approach that considers both the rights of creators and the broader public
interest.

Moreover, some legal frameworks and initiatives aim to reconcile IPR and human rights concerns. For example,
the Doha Declaration on the TRIPS Agreement and Public Health allows for flexibility in intellectual property
rules to promote access to medicines in public health emergencies. Similarly, the United Nations Declaration on
the Rights of Indigenous Peoples recognizes the importance of protecting indigenous intellectual property and
traditional knowledge.
Overall, the relationship between IPR and human rights is complex, and striking a balance between the two
requires careful consideration of the specific circumstances and interests involved. Efforts are ongoing to ensure
that intellectual property protection promotes innovation while upholding fundamental human rights.
 PARIS CONVENTION:

The Paris Convention for the Protection of Industrial Property is an international treaty that is related to
intellectual property law. It was first established in 1883 and has undergone several revisions and amendments
since then. The primary objective of the Paris Convention is to encourage and facilitate the protection of
intellectual property rights, particularly patents, trademarks, industrial designs, and trade secrets.

key features and provisions of the Paris Convention:

1. National Treatment: The convention provides for the principle of national treatment, which means that
each member country must provide the same level of protection to foreign applicants for intellectual
property rights as it provides to its own citizens.

2. Priority Right: The convention introduced the concept of priority right, which allows an applicant to
claim priority for their invention or trademark in other member countries based on their initial filing in
one member country. This means that if an inventor or a trademark owner files an application in one
member country, they have a certain period of time to file in other member countries and still enjoy the
priority date of the initial filing.

3. Right of Exhibition: The convention grants the right of exhibition to creators of artistic works, such as
paintings and sculptures, ensuring that they have the right to prevent the unauthorized public display of
their works.

4. Industrial Designs: The Paris Convention includes provisions for the protection of industrial designs,
allowing creators of new and original designs for industrial products to seek protection in member
countries.

5. Enforcement and Dispute Resolution: The convention provides for mechanisms and procedures for
the enforcement of intellectual property rights, including remedies and procedures for infringement, as
well as dispute resolution mechanisms among member countries.
It is important to note that the Paris Convention is one of the oldest and most significant international treaties in
the field of intellectual property. It has been instrumental in harmonizing intellectual property laws and
providing a framework for cooperation and mutual protection among member countries. Currently, there are
over 170 countries that are members of the Paris Convention.

The Paris Convention also includes provisions on the enforcement of IP rights. Member countries are required
to provide effective remedies for the infringement of IP rights, including injunctive relief, damages, and other
appropriate remedies. The Convention also provides for cooperation between member countries in the
enforcement of IP rights, and it establishes a system for the exchange of information on IP rights between
member countries.

The Paris Convention for the Protection of Industrial Property, commonly known as the Paris Convention, has a
long and complex history that spans more than a century. The Convention was first adopted in Paris on March
20, 1883, and has been revised several times since then. Here is a brief overview of the historical development
of the Paris Convention:

1. Adoption of the Paris Convention in 1883: The Paris Convention was adopted on March 20, 1883, by
11 countries, including France, Belgium, and Switzerland. The Convention was the first international
treaty that aimed to provide a framework for the protection of intellectual property rights such as
patents, trademarks, and industrial designs.

2. Expansion of the Paris Convention in the early 20th century: In the early 20th century, the Paris
Convention was expanded to include more countries. By 1914, there were 29 member countries,
including the United States, Japan, and Australia.

3. Revision of the Paris Convention in 1925: In 1925, the Paris Convention was revised to include new
provisions on trademarks, trade names, and unfair competition. The revision also introduced the
principle of national treatment, which required member countries to treat foreign applicants the same as
domestic applicants.
 4. Revision of the Paris Convention in 1934: In 1934, the Paris Convention was revised again to include
new provisions on industrial designs. The revision also introduced the principle of reciprocity, which
required member countries to provide protection for intellectual property rights to nationals of other
member countries on a reciprocal basis.

5. Revision of the Paris Convention in 1958: In 1958, the Paris Convention was revised to include new
provisions on patents. The revision introduced the concept of the "inventive step," which required that
an invention must not be obvious to a person skilled in the relevant field in order to be patentable.

6. Revision of the Paris Convention in 1967: The most recent revision of the Paris Convention was
adopted in Stockholm in 1967. The revision expanded the scope of the Convention to include new types
of intellectual property, such as layout designs (topographies) of integrated circuits. It also strengthened
the provisions on the enforcement of intellectual property rights and introduced the principle of priority,
which allows an applicant who has filed a patent, trademark, or industrial design application in one
member country to claim priority for the same application in another member country.

Today, the Paris Convention has 177 member countries and is one of the oldest and most important
international agreements on intellectual property. Its provisions continue to provide a framework for the
protection of intellectual property rights and promote the development of international trade.

Merit of Paris convention for the protection of Intellectual Property Rights:

The Paris Convention for the Protection of Industrial Property, commonly known as the Paris Convention, has
several merits that have made it an important international agreement on intellectual property. Here are some of
the key merits of the Paris Convention:

1. Protection of Intellectual Property Rights: The Paris Convention provides a framework for the
protection of intellectual property rights such as patents, trademarks, and industrial designs. It sets
minimum standards for the protection of these rights in member countries, which helps to prevent the
unauthorized use and exploitation of intellectual property.
 2. National Treatment: The Paris Convention requires member countries to provide foreign applicants
with the same protection for their intellectual property rights as they provide to their own nationals. This
principle of national treatment helps to ensure that foreign investors and businesses are not discriminated
against in member countries.

3. Reciprocity: The Paris Convention also promotes reciprocity in the protection of intellectual property
rights. Member countries are required to provide protection to the nationals of other member countries
on a reciprocal basis. This helps to create a level playing field for businesses and investors from
different countries.

4. Priority: The Paris Convention allows an applicant who has filed a patent, trademark, or industrial
design application in one member country to claim priority for the same application in another member
country. This principle of priority helps to simplify the application process for intellectual property
rights and reduces the administrative burden on businesses and investors.

5. Enforcement of Intellectual Property Rights: The Paris Convention includes provisions on the
enforcement of intellectual property rights, which help to prevent the infringement of these rights.
Member countries are required to provide effective legal remedies and procedures for the enforcement
of intellectual property rights.

6. Promotion of International Cooperation: The Paris Convention promotes international cooperation in

the field of intellectual property. Member countries are encouraged to exchange information and
experiences on the protection and enforcement of intellectual property rights. This helps to promote the
development of international trade and the exchange of technology and knowledge.

The Paris Convention has played an important role in promoting the protection and enforcement of intellectual
property rights, and has helped to create a more level playing field for businesses and investors from different
countries. Its provisions continue to be relevant today and provide a foundation for the development of
international standards for intellectual property rights.
Drawbacks of Paris convention for the protection of Intellectual Property Rights:

While the Paris Convention for the Protection of Industrial Property has many merits, it has also been subject to
criticism over the years. Some of the main criticisms of the Paris Convention include:

1. Lack of Flexibility: One of the criticisms of the Paris Convention is that its provisions are not flexible
enough to accommodate the varying needs of different countries. Some critics argue that the one-size-
fits-all approach of the Convention may not be suitable for developing countries or countries with
different legal systems.

2. Imbalance of Interests: Another criticism of the Paris Convention is that it tends to favor the interests
of developed countries and multinational corporations over the interests of developing countries and
small businesses. Critics argue that the Convention's provisions on intellectual property rights may limit
the access of developing countries to technology and knowledge, and may lead to a concentration of
power and wealth in the hands of a few.

3. Costly and Time-Consuming: The process of obtaining and enforcing intellectual property rights under
the Paris Convention can be costly and time-consuming, particularly for small businesses and
individuals. This may limit the ability of these stakeholders to compete on a level playing field with
larger businesses and corporations.

4. Inadequate Protection of Traditional Knowledge: Some critics argue that the Paris Convention does
not adequately protect traditional knowledge, which is often held by indigenous communities and is an
important part of cultural heritage. They argue that the Convention's provisions on intellectual property
rights may lead to the misappropriation of traditional knowledge by corporations and other entities.

5. Conflict with other International Agreements: The Paris Convention has been criticized for
conflicting with other international agreements, particularly those related to trade and development.
Critics argue that the Convention's provisions may limit the ability of developing countries to promote
their own economic and social development.
Overall, while the Paris Convention has played an important role in promoting the protection and enforcement
of intellectual property rights, it has also been subject to criticism for its perceived limitations and imbalances.
It is important for policymakers to consider these criticisms and address them in order to ensure that the benefits
of intellectual property rights are distributed fairly and equitably.

Landmark cases of Paris convention for the protection of Intellectual Property Rights:

There have been several landmark cases that have relied on the provisions of the Paris Convention for the
Protection of Industrial Property. Some notable cases include:

1. Philip Morris v. Uruguay: In this case, the tobacco company Philip Morris challenged Uruguay's
tobacco control measures, arguing that they violated its intellectual property rights. The case went to an
international tribunal, which upheld Uruguay's right to regulate public health, citing Article 8 of the
Paris Convention, which allows countries to adopt measures necessary to protect public health.

2. Novartis v. Union of India: In this case, the pharmaceutical company Novartis challenged India's patent
law, which denied patent protection for minor modifications to existing drugs. The case went to the
Indian Supreme Court, which upheld the law, citing the flexibilities allowed under the TRIPS
Agreement and the Doha Declaration, both of which are based on the Paris Convention.

3. Eli Lilly v. Canada: In this case, the pharmaceutical company Eli Lilly challenged Canada's patent law,
which invalidated Eli Lilly's patents on two drugs. The case went to an international tribunal, which
ruled that the law did not violate the Paris Convention or other international agreements, and that Eli
Lilly had not met the patentability requirements under Canadian law.

These cases demonstrate the importance of the Paris Convention in shaping international intellectual property
law and its role in balancing the interests of intellectual property holders with those of the public.

Conclusion: The Paris Convention for the Protection of Industrial Property is an international treaty that
provides minimum standards for the protection of intellectual property, including patents, trademarks, and
industrial designs. It was established in 1883 and currently has 177 member countries. The Convention aims to
promote innovation and creativity by providing protection for intellectual property rights, encouraging
international standardization, and protecting consumers. It also promotes economic development by
encouraging innovation and creativity, and by providing protection for intellectual property rights that can be
important assets for businesses seeking to enter foreign markets. The Paris Convention has been instrumental in
shaping international intellectual property law, and several landmark cases have relied on its provisions.
Overall, the Paris Convention remains a critical treaty in the protection and enforcement of intellectual property
rights in the global economy.
 BERNE CONVENTION

The Berne Convention for the Protection of Literary and Artistic Works, usually referred to as the Berne
Convention, is an international agreement governing copyright and related rights. It is one of the key treaties in
the field of intellectual property law. The Berne Convention was first adopted in 1886 and has since been
revised several times. Its main purpose is to establish minimum standards for the protection of literary and
artistic works among member countries. The convention provides creators with automatic copyright protection
without the need for formalities such as registration or notice.

Fundamental Principles of the BERN Convention:

1. Automatic Protection: A cornerstone principle of the BERN Convention is that copyright protection is
granted automatically and does not necessitate formal registration. As soon as a work is created and fixed in a
tangible medium, it is protected under copyright law without the need for any formalities. This principle ensures
that authors can focus on their creative pursuits without being burdened by bureaucratic processes.

2.Minimum Standards of Protection: The Convention establishes a set of minimum standards for copyright
protection that member states are obligated to uphold. These standards include:

- The duration of copyright protection must extend for at least the lifetime of the author plus a minimum
of 50 years. In certain jurisdictions, such as the United States and the European Union, this duration has
been extended to 70 years.

- The exclusive rights granted to authors encompass the rights to reproduce, distribute, publicly
perform, and display their works. These rights are essential for authors to control how their works are
used and to receive compensation for their creations.

3. National Treatment: The principle of national treatment mandates that works originating in one member
country must receive the same level of protection in other member states as works created by their own
nationals. This principle is crucial in ensuring that foreign authors enjoy equal rights and protections under
national laws, fostering a sense of fairness in the global creative landscape.
4. Moral Rights: The BERN Convention acknowledges the moral rights of authors, which include the right to
attribution and the right to object to any derogatory treatment of their works. Moral rights hold particular
significance in the realm of artistic works, where the integrity of the creation is often intimately linked to the
identity and reputation of the author.

5. Exceptions and Limitations: While the Convention places a strong emphasis on the protection of authors'
rights, it also recognizes the necessity for certain exceptions and limitations. These include provisions for fair
use or fair dealing, which allow for limited use of copyrighted materials without the need for authorization,
thereby balancing the interests of authors with the public’s right to access information.

Membership and Implementation: The BERN Convention is administered by the World Intellectual Property
Organization (WIPO), a specialized agency of the United Nations. As of now, the Convention boasts over 170
member countries, making it one of the most widely adopted treaties in the realm of copyright law. Each
member nation is responsible for incorporating the provisions of the Convention into its national legal
framework. This can lead to variations in how copyright is enforced and interpreted across different
jurisdictions, reflecting local legal traditions and cultural contexts.

Case Law and Judicial Interpretation

1. Case of "The Berne Convention for the Protection of Literary and Artistic Works" (1989): This pivotal case,
adjudicated by the European Court of Justice (ECJ), reinforced the principle of national treatment. The court
ruled that member states are required to provide foreign authors with the same rights and protections as those
afforded to domestic authors, underscoring the fundamental importance of this principle to the Convention's
objectives.

2. Case of "Golan v. Holder" (2012): This landmark case addressed the constitutionality of the Copyright Term
Extension Act in the United States, which extended copyright protection for works that had previously entered
the public domain. The Supreme Court ruled that the extension was constitutional and did not violate the BERN
Convention, reaffirming that the Convention permits member states to establish the duration of copyright
protection, provided they adhere to the established minimum standards.

3. Case of "Peterson v. Google" (2012): This case examined the issue of moral rights under the BERN
Convention. The court found that Google’s use of Peterson's work without proper attribution constituted a
violation of his moral rights, highlighting the significance of safeguarding an author’s reputation and the
integrity of their work, especially in the rapidly evolving digital landscape.

4.Case of "The Authors Guild v. Google" (2015): This significant case revolved around Google's digitization of
millions of books and the implications for copyright law. The court's ruling recognized the doctrine of fair use,
allowing Google to continue its digitization project while balancing the rights of copyright holders with the
public interest in access to information. This case reflects the ongoing tension between the need to protect
copyright and the public's right to access knowledge.

CONCLUSION: The BERN Convention remains a foundational element of international copyright law,
providing essential safeguards for authors and creators around the globe. Through its key principles of
automatic protection, national treatment, and the recognition of moral rights, it seeks to cultivate a global
environment that respects and upholds the rights of creators. However, as societal norms and technological
landscapes continue to evolve, so too must the Convention and its interpretations.

Patent Co-operative Treaty

The Patent Cooperation Treaty (PCT) is an international treaty that facilitates the process of obtaining patent
protection in multiple jurisdictions through a unified procedure. It provides a framework for filing international
patent applications, streamlining the process for inventors and businesses seeking to protect their inventions
globally. This essay provides a detailed overview of the PCT, its mechanisms, benefits, and relevant case law.

The PCT was established by the World Intellectual Property Organization (WIPO) in 1970 and came into force
in 1978. As of October 2023, it has 155 contracting states, making it one of the most significant treaties in the
realm of intellectual property. The PCT allows a single international patent application to be filed, which can
then lead to patent protection in multiple countries.
Objectives of the PCT

1. Simplification of the Filing Process : The PCT aims to simplify the complexities involved in filing patent
applications across different jurisdictions. By allowing inventors to file a single application, it reduces
administrative burdens.

2. International Search and Preliminary Examination : The treaty provides mechanisms for conducting
international searches and preliminary examinations, which help applicants understand the patentability of their
invention before proceeding with national filings.

3. Delay in National Filings : The PCT allows applicants to delay the decision on which countries to pursue
patent protection in, providing valuable time for market assessment and business planning.

Structure of the PCT Process: The PCT process consists of several key stages:

1. International Application : An applicant submits a PCT application to a national patent office or the
International Bureau (IB) of WIPO. This application can claim priority from an earlier national application.

2. International Search : An International Searching Authority (ISA) conducts a search for prior art and issues
an International Search Report (ISR) along with a written opinion on the potential patentability of the invention.

3. International Publication : The application is published 18 months after the priority date, making the details
of the invention publicly available.

4. International Preliminary Examination (optional) : If desired, the applicant can request a preliminary
examination to receive a more comprehensive assessment of patentability.

5. National Phase Entry : Within 30 or 31 months from the priority date, the applicant must enter the national
phase in the countries where they seek protection. This involves filing the necessary documents and paying the
required fees to each jurisdiction.
Benefits of the PCT

1. Cost-Effective : While the PCT process involves initial costs, it can be more economical than filing separate
applications in multiple countries, especially when considering the potential for rejections or amendments.

2. Increased Market Opportunities : The PCT allows inventors to evaluate the potential of their inventions in
various markets before committing to national filings.

3. Enhanced Patent Quality : The international search and examination processes can lead to higher-quality
patents by identifying prior art and providing valuable feedback.

4. Flexibility in Timing : Applicants have the flexibility to enter the national phase at their discretion within the
stipulated time frame, allowing for strategic business decisions.

Challenges and Criticisms of the PCT:

1. Complexity of National Laws : While the PCT streamlines the international filing process, applicants must
still navigate the complexities of national patent laws during the national phase. Each country has its own
requirements and practices, which can lead to confusion.

2. Costs : The initial costs associated with the PCT process can be significant, particularly for small businesses
and individual inventors. While the PCT can save costs in the long run, the upfront fees may pose a barrier.

3. Uncertain Outcomes : The preliminary examination does not guarantee that a patent will be granted in
national phases, leading to uncertainty for applicants. The varying standards of patentability across jurisdictions
can lead to differing outcomes.

4. Backlogs in Processing : Some national patent offices face significant backlogs, which can delay the
examination and grant of patents, affecting the overall timeliness of the process.

Conclusion: The Patent Cooperation Treaty is a vital instrument in the global patent system, providing a
streamlined process for obtaining patent protection in multiple jurisdictions. While it offers numerous benefits,
such as cost-effectiveness, increased market opportunities, and enhanced patent quality, it also presents
challenges related to complexity and compliance with national laws. Understanding the PCT, its processes, and
relevant case law is crucial for inventors and businesses seeking to navigate the intricacies of international
patent protection. As the global landscape of innovation continues to evolve, the PCT will remain an essential
tool for fostering creativity and protecting intellectual property rights worldwide.

TRIPS Agreement

The Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement is a pivotal international treaty
that emerged from the Uruguay Round of trade negotiations under the auspices of the World Trade
Organization (WTO). Enacted in 1995, TRIPS established comprehensive standards for intellectual property
(IP) protection and enforcement, harmonizing the various national laws governing IP. This essay will delve into
the TRIPS Agreement’s structure, its implications for international trade and development, key provisions, and
relevant case law that have shaped its interpretation and application.

The TRIPS Agreement was created to address the growing concerns about the lack of adequate and effective IP
protection in many countries, which was seen as a barrier to international trade and investment. The agreement
aims to strike a balance between the interests of IP holders and the broader goals of promoting innovation,
technology transfer, and public welfare.

Objectives of TRIPS

1. Standardization of IP Protection : The TRIPS Agreement seeks to establish minimum standards of IP

protection that all WTO members must adhere to, thereby reducing disparities in national laws.

2. Facilitating Trade and Investment : By creating a predictable environment for IP protection, TRIPS aims to
foster international trade and attract foreign investments.

3. Encouraging Innovation : The agreement encourages innovation by ensuring that creators and inventors can
benefit from their inventions and creations through adequate protection.
4. Public Health Considerations : The TRIPS Agreement acknowledges the need for access to medicines and
public health, allowing for flexibility in IP enforcement to address health crises.

The TRIPS Agreement encompasses several key areas of intellectual property, including copyright, trademarks,
geographical indications, industrial designs, patents, and trade secrets. The main provisions include:

1. Copyright and Related Rights : TRIPS sets minimum protection standards for literary and artistic works,
including the duration of copyright protection (at least 50 years after the author’s death). It also covers rights
related to performances, phonograms, and broadcasts.

2. Trademarks : The agreement mandates that trademarks be protected for at least seven years, with the
possibility of renewal. It also emphasizes protection against the use of misleading trademarks and unfair
competition.

3. Geographical Indications : TRIPS provides for the protection of geographical indications (GIs), which are
signs used on goods that have a specific geographical origin and possess qualities or a reputation due to that
origin. This protection aims to prevent misleading practices and ensures that consumers can identify authentic
products.

4. Industrial Designs : The agreement mandates protection for industrial designs, requiring signatory countries
to provide protection for at least ten years.

5. Patents : One of the most significant aspects of TRIPS is its provisions on patents. The agreement requires
members to provide patent protection for inventions in all fields of technology for a minimum term of 20 years
from the filing date. It also mandates that patents be granted regardless of the place of invention, and it permits
exceptions for specific situations, such as public health.

6. Trade Secrets : TRIPS requires member countries to protect undisclosed information that is valuable and kept
secret, ensuring that businesses can safeguard their proprietary information.
7. Enforcement Measures : The agreement emphasizes the enforcement of IP rights, requiring members to
establish effective legal remedies and procedures to combat infringement. This includes border measures to
prevent the importation of infringing goods.

TRIPS and Public Health: One of the most debated aspects of the TRIPS Agreement is its implications for
public health, particularly in developing countries. The agreement’s provision on patents has raised concerns
about access to essential medicines. In response to these concerns, the Doha Declaration on the TRIPS
Agreement and Public Health was adopted in 2001, affirming that TRIPS should not prevent members from
taking measures to protect public health and access to medicines.

Key Points of the Doha Declaration

1. Flexibility in Implementation : The declaration emphasizes the flexibility available to countries in

implementing TRIPS provisions, particularly regarding compulsory licensing and parallel importing.

2. Compulsory Licensing : It allows countries to issue compulsory licenses, enabling them to produce or import
generic versions of patented medicines without the patent holder’s consent in cases of national emergencies or
public health crises.

3. Public Health as a Priority : The declaration reinforces the idea that public health should take precedence
over IP rights, allowing for the prioritization of access to essential medicines over patent protections.

Case Law Related to TRIPS

1. India’s Patent Act : In 2005, India amended its Patent Act to comply with TRIPS requirements, transitioning
from a product patent regime to a process patent regime. The case of Novartis AG v. Union of India (2013)
became emblematic of the TRIPS compliance challenge. Novartis sought a patent for Gleevec, a cancer
medication, but was denied under Section 3(d) of the Indian Patent Act, which prevents the patenting of new
forms of known substances unless they demonstrate significantly enhanced efficacy. The Supreme Court of
India upheld the rejection, emphasizing the need for access to affordable medicines over stringent patent
protections.
2. Brazil’s Pharmaceutical Policy : In 2007, Brazil faced a significant case regarding the TRIPS Agreement
when it issued a compulsory license for the HIV/AIDS medication Efavirenz. The Brazilian government
justified the move by citing high prices and the need to ensure access to treatment for its population. The
decision was contested by the patent holder, Merck, but was widely viewed as a successful application of the
TRIPS flexibilities regarding public health.

3. US – Section 211 Appropriations Act : In this case, the WTO Dispute Settlement Body ruled against the
United States for its Section 211 law, which sought to prevent foreign companies from registering trademarks
associated with Cuban products. The WTO held that the US law violated TRIPS provisions on trademarks and
was inconsistent with the obligations of the United States under the agreement.

4. EC – Biotech Patents : In the landmark case of European Commission v. European Patent Office (2005),
the European Court of Justice ruled on the patentability of biotechnological inventions, particularly those
involving human embryonic stem cells. The court emphasized that such inventions could violate ethical
principles, thus setting a precedent on how ethical considerations intersect with IP rights under TRIPS.

5. Australia – Plain Packaging : The case of Philip Morris Asia Ltd. V. Commonwealth of Australia (2011)
involved Australia’s introduction of plain packaging laws for tobacco products, which Philip Morris claimed
violated its trademarks under TRIPS. The case raised important questions about the balance between IP rights
and public health policies, illustrating the ongoing tensions that can arise in the context of TRIPS compliance.

Conclusion: The TRIPS Agreement is a landmark treaty that has fundamentally shaped the landscape of
intellectual property protection and enforcement on a global scale. By establishing minimum standards for IP
protection, it aims to facilitate international trade, encourage innovation, and protect the rights of creators and
inventors. However, the agreement also presents challenges, particularly regarding access to medicines and the
balance between IP rights and public health. The evolving case law surrounding TRIPS continues to influence
its interpretation and application, highlighting the dynamic nature of international IP law.

As global challenges persist, including public health crises, environmental concerns, and technological
advancements, the TRIPS Agreement will remain a critical instrument in navigating the complex relationship
between trade, development, and intellectual property rights. The ongoing dialogue among member states,
stakeholders, and civil society will be essential in ensuring that the TRIPS framework evolves to meet
contemporary needs while promoting innovation and protecting public welfare.
UNIT -2

ANALYSIS OF INDIAN PATENT ACT

MEANING OF PATENT

Patent is an intellectual property right, to make, use or sell an invention for a limited period of 20 years. A
Patent is granted to an entity on disclosing a technical invention, which may be a product
(system/apparatus/device) or process (method/manufacturing) or both, which is novel or new and demonstrate
inventive step or technological advancement over the existing technologies.

In India, a patent is a form of intellectual property right granted to inventors for their new inventions. The patent
system aims to promote innovation by providing inventors with exclusive rights to their inventions for a limited
period. This exclusive right allows the inventor to prevent others from making, using, selling, or importing the
patented invention without their permission.

To be eligible for a patent in India, an invention must meet certain criteria:

1. Novelty: The invention must be new and not previously disclosed or known to the public anywhere in
the world before the date of filing the patent application.

2. Inventive Step: The invention must involve an inventive step that is not obvious to a person skilled in
the relevant field of technology.

3. Industrial Applicability: The invention must have practical utility and be capable of being made or
used in some kind of industry.

Patents in India are governed by the Patents Act, 1970, and are granted by the Indian Patent Office, which
operates under the Controller General of Patents, Designs, and Trademarks. The patent term is generally 20
years from the date of filing the patent application, subject to the payment of annual renewal fees.
It's essential to understand that patents are territorial rights, meaning a patent granted in India will only be valid
within the boundaries of India. If an inventor wants protection in multiple countries, they must file separate
patent applications in each country or opt for regional patent systems like the European Patent Office (EPO) for
protection in European countries.
HISTORICAL EVOLUTION OF THE CONCEPT OF PATENT

The concept of patents in India has evolved over centuries, influenced by various historical, social, and
economic factors. Here's a brief overview of the historical evolution of the patent system in India:

1. Ancient India: While there is no evidence of a formal patent system, ancient Indian texts such as the
Manusmriti and Arthashastra showed respect for the rights of innovators and their inventions. The texts
recognized the importance of protecting intellectual property and ensuring that inventors received due
credit for their creations.

2. British Colonial Rule: The modern patent system was introduced in India during British colonial rule.
The British East India Company enacted the first patent law in India in 1856, based on the British Patent
Law of 1852. This law provided protection for inventions and encouraged innovation by granting
exclusive rights to inventors for a fixed period.

3. The Indian Patents and Designs Act of 1911: The 1856 patent law was replaced by the Indian Patents
and Designs Act of 1911. This act aimed to encourage local inventions and innovations by offering
protection for both patents and industrial designs. However, it was often criticized for favoring foreign
inventors and lacked sufficient provisions to benefit Indian inventors.

4. Post-Independence Period: After India gained independence in 1947, the Indian government sought to
reform the patent system to support domestic innovation and technological growth. The Patents Act of
1970 was a significant milestone in this regard. It abolished the system of product patents for certain
categories of inventions, particularly pharmaceuticals, chemicals, and food items. This move was seen
as a way to prevent monopolies and make essential medicines more affordable for the Indian population.

5. TRIPS Agreement and Amendments: In the 1990s, India faced pressure to bring its patent laws in line
with international standards. As a member of the World Trade Organization (WTO), India had to
comply with the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement. In 1999,
India amended its Patents Act to reintroduce product patents for all areas of technology, including
 pharmaceuticals. However, the amendments also included safeguards, such as compulsory licensing and
restrictions on evergreening (extending patents on trivial modifications).

6. Recent Developments: In subsequent years, India continued to refine its patent system to strike a
balance between incentivizing innovation and promoting access to affordable healthcare. Several
landmark legal cases have shaped the interpretation and application of patent laws in India. Notably, the
Novartis-Glivec case in 2013 clarified the standards for patentability, ensuring that only genuine
innovations received patent protection.

The concept of patents in India has continued to evolve, influenced by global trends, economic considerations,
and societal needs. The country remains committed to promoting innovation while addressing public health
concerns and ensuring access to essential medicines for its citizens.

History of Patent:Patents have their origins in 15th century Venice where the Republic of Venice held that
new inventions “had to be communicated to the Republic to obtain a right to prevent others from using them”.
In Britain, Henry VI granted John of Utynam a Flemish born artist exclusive 20-year monopolistic rights to a
method of making stained glass. Under Queen Elizabeth’s reign patents were issued for knives, starch, iron
paper, and soap. Patent applications were also an effortless revenue for the crown. But sometimes patents were
issued for inventions that weren’t even new this led to a rise in corruptive practices. Following a massive protest
from the public, King James 1 banned all monopolies in 1610.

Statute of Monopolies:This statute was enacted in 1624 in England stating that patents could be issued only for
new inventions and they should not be detrimental to the public interest. It introduced the principles of novelty,
public interest, and limited time and is a precedent for trademark laws even today.

In 1796 James Watt issued a patent for his steam engine thus establishing a principle that patents could be
granted for making unobvious improvements in an already existing machine. By the 18th century under John
Locke’s influence patents started to be viewed as Intellectual Property Rights.

During the mid-19th century during the Industrial Revolution, the preexisting British Patent System seemed
obsolete hence the Patent Law Amendment was enacted in 1852 to make several improvements. It established a
Patent office to centralize the process and an officer was appointed to investigate the novelty of each applicant’s
product. Soon countries like the USA, New Zealand, and Australia with common law heritage began to follow
suit.

In 1641 North America granted its first patent to Samuel Winslow for a new method of making salt. State-level
patenting laws emerged by the late 18th century and centralized bypassing the federal law, Patent Act of 1790.
They also published a report listing all the existing patents which were available in all public libraries to ensure
no one applied for already patented items thus reducing the number of applications dramatically.

Paris Convention: This was the first of many international treaties to protect intellectual property all over the
world. It was signed on 20th March 1883. It guaranteed equal treatment of all its member states. It initially had
only 20 members but now is followed all over the world. India joined the Paris convention in 1999.

European Patent Convention: This convention has been operation since June 1978 and was a culmination of
the patent laws of all its then member states. It is a centralized patent system for the European countries and has
a head office in Munich. It provides the benefit of filing a single application for a patent that will be relevant in
all its European country members that the applicant mentions.

Patent Cooperation Treaty: This has been operating since 1978 and has 108 member states. However, the
PCT just does an international search and an international preliminary examination for the applicant; it does not
grant a patent. The authority to grant a patent still resides in the respective National Patent office.

TRIPS agreement: This treaty acts as a model for most developing countries in the 20th century. The Trade-
Related Aspects of Intellectual Property (TRIPS) was formed in 1994 and has more than 120 country members
today. It has improved legal protection for patents worldwide. It’s most significant contribution is imposing
limits on compulsory licenses.

Patent Law in India:The first patent was enacted in 1856, it gave inventors exclusive privileges fo 14 years. It
was based in the UK act Several amendments were made over the years. The Patterns and Designs Protection
Act,1882 and Protections of Inventions Act,1883 were replaced by the Indian Patents and Designs Act,1911,
and all former acts were eliminated. Many amendments were made later on to incorporate arrangements with
the UK and other countries, additional patents, governments using inventions, and increasing the term period to
16 years.

After Independence, a committee headed by retd. Judge Dr. Bakshi Tekchand was made and the act was
amended again in 1950. The Ayyanger report was submitted in 1989 suggesting radical changes. The Indian
Patents Act,1970 came into force in 1972. It precisely defined many terms like invention and declaration of the
invention. It prohibited patenting food and agrochemicals, product patents for drugs (medicines), and put
forward stringent requirements for the description of an invention. It also let innovations that were patented
elsewhere be freely copied and marketed in India. The act was not detrimental to MNC’s and did not comply
with the global patent system.

Since India was a member of the WTO, it had to abide by the TRIPS agreement. A concept called Exclusive
Marketing Rights (EMR) was introduced as per which international pharmaceuticals could market their product
for a period of five years. this was incorporated in later amendments.

The Patents amendment act in 2005 tried to incorporate more of the global goals like mandating licensing,
product patents in all fields of technology like food drugs and chemicals.

The Final Amendment was in 2019 intending to bring more transparency and to include a framework for
technological innovations. It seeks to make the procedure simpler and also includes provisions for easy
registration of computer programs.
ACQUISITION AND LOSS OF THE RIGHT TO THE PATENTEE

In Indian Intellectual Property Rights, the right to a patentee refers to the exclusive rights granted to the
inventor or applicant of a patented invention. These rights allow the patent holder to exploit, use, and protect the
invention from unauthorized use by others for a limited period. However, there are circumstances where these
rights can be acquired or lost. Let's delve into each aspect:

1. Acquisition of Rights to the Patentee:

a. Filing a Patent Application: In India, the right to a patent is acquired by filing a patent application with the
Indian Patent Office. Once the application is granted, the applicant becomes the patentee and obtains the
exclusive rights to the invention.

b. Novelty and Inventive Step: To be eligible for a patent, the invention must be novel, involve an inventive
step, and be capable of industrial application. If these criteria are met, the applicant may acquire the right to the
patentee upon successful examination and grant of the patent.

c. First-to-File System: India follows a first-to-file system, which means that the first person or entity to file a
patent application for an invention will have priority over others claiming the same invention. So, it is essential
to file a patent application as soon as possible to secure the rights.

2. Loss of Rights to the Patentee:

a. Patent Expiry: Patents in India have a limited duration, typically 20 years from the filing date of the patent
application. Once the patent term expires, the exclusive rights of the patentee cease, and the invention enters the
public domain, becoming available for public use.

b. Non-Payment of Maintenance Fees: To keep a patent in force throughout its term, maintenance fees must
be paid at regular intervals. Failure to pay these fees can result in the patent being declared lapsed, and the
patentee will lose the rights to the invention.
c. Revocation or Invalidation: A patent can be revoked or invalidated through legal proceedings if it is found
that the invention does not meet the necessary criteria for patentability or if it was granted based on incorrect or
misleading information.

d. Surrender: The patentee can choose to surrender the patent voluntarily by filing a request with the patent
office. Once the surrender is accepted, the patent rights will be relinquished.

e. Compulsory Licensing: In certain circumstances, the government may grant compulsory licenses to third
parties to use the patented invention without the consent of the patentee. This can happen if the patentee fails to
work the invention in India, or if the invention is not available to the public at a reasonable price.

Case Law:

1. Bristol-Myers Squibb Co. v. Association of Pharmaceutical Teachers of India (2018) Bristol-Myers Squibb
(BMS) was involved in a dispute regarding the patentability of its cancer drug, Dasatinib. The application faced
challenges based on claims of lack of novelty and inventive step.

Judgment: The Intellectual Property Appellate Board (IPAB) ruled in favor of the petitioner, emphasizing that
the patentee must prove that the invention is truly novel and non-obvious. The case highlighted the rigorous
scrutiny that patent applications undergo in India and the importance of demonstrating significant advancements
over existing products to maintain patent rights.

2. Bayer Corporation v. Union of India (2010) Bayer Corporation sought to patent its anti-cancer drug,
Sorafenib, which had already been marketed globally. The patent was granted, but it faced objections in India,
leading to a legal challenge concerning the patentability of the drug.

Judgment:The IPAB revoked the patent on the grounds that the drug was not novel and did not meet the
requirements of inventive step. This case underscored the importance of novelty and the patentability criteria
outlined in the Patents Act, illustrating how patents can be lost through revocation if the criteria are not strictly
adhered to.
3. B. V. S. Reddy v. Union of India (2003) In this case, B.V. S. Reddy applied for a patent for a pharmaceutical
compound, but the application was rejected due to lack of novelty. The applicant appealed the decision, arguing
that the invention was indeed novel and met the required criteria.

Judgment:The Delhi High Court upheld the decision of the patent office, emphasizing the necessity for a clear
demonstration of novelty and inventive step. The court reinforced the idea that mere improvements to existing
products do not warrant patent protection unless they present a significant advancement. This case exemplifies
how the loss of patent rights can result from failures to demonstrate the necessary criteria during the application
process.

It's crucial for patentees to be aware of the conditions that can lead to the loss of their rights to protect their
inventions effectively. Likewise, inventors seeking to obtain patent rights must adhere to the patent application
process and fulfill the required criteria to secure their rights as a patentee.
GROUNDS OF OPPOSITION

The Indian Patent Act, 1970 provides a mechanism that allows the public to raise objections against the grant of
a patent by filing an opposition with the Patent office. There are 2 types of opposition proceedings in place
depending on the stage of grant of the patent:

1. Pre-grant opposition: Where the opponent can challenge a pending application prior to the grant of a
patent.

2. Post-grant opposition: Where the opponent challenges the validity of a patent that has already been
granted.

Before 2005, only the ‘pre’ grant opposition system prevailed and there was no way of challenging a patent
once it had been granted. However, the Indian patent system underwent a significant transformation on 1st
January 2005 in pursuance of the TRIPS agreement (Trade-Related Aspects of Intellectual Property Rights). In
order to comply with the International agreement, India amended its Patent Act and a post-grant opposition
system was introduced in Section 25 of the Act.

Pre-grant opposition in India: Section 25(1) of the Indian Patent Act, 1970 along with Rule 55 of Patents
Rules, 2003 lays down the law relating to pre-grant opposition in India. The opposition can be filed by any
person in writing, any time after the publication of the patent application and before it is granted. It is necessary
to obtain the complete specification from the official website as opposition cannot be made solely based on the
abstract. The purpose of this mechanism is to act as a defensive shield that verifies the validity of the
application before the actual grant of patent rights. The opposition is known as making a “representation.”

Grounds for pre-grant opposition: Section 25(1) clauses (a) to (k) of the Patent Act lays down an exhaustive list
of the grounds based on which the patent application can be opposed. These grounds are:

1. Wrongful obtainment: The invention or any part thereof was wrongfully obtained from the opponent.
 2. Prior publication: The invention was published before the priority date (earliest filing date which
discloses the invention). This objection is subject to Section 29 of the Act, which talks about situations
where the publication does not constitute an anticipation of the product or process.
3. Prior claim: The invention was previously claimed in another Indian patent application, which was
published on or after the priority date of the applicant’s claim but whose priority date is earlier than that
of the applicant.
4. Prior knowledge or use: The invention is known or used by the public before the priority date. In the
case of a process that is being patented, it is deemed to have been publicly known or used if a product
made by that process was imported in India, before the first date of filing of the application.
5. Obviousness: The invention is obvious and does not involve any inventive step. This means that no
advancements have been to the existing use or literature on the subject.
6. Non-patentable subject matter: The subject of the application is not considered to be an invention
under the Patent Act or falls in the category of “non-patentable inventions”.
7. Insufficient description: The patent specification does not properly explain the invention or the method
of performing it.
8. Non-disclosure: The applicant has failed to disclose all the details which were required under Section 8
of the Act.
9. False disclosure: The applicant has provided materially false information.
10. Time limit: The conventional application was not filed within the specified period of 12 months from
the date of the first patent application made in a conventional country.
11. Biological material: The specification failed to disclose the origin or source of the biological material,
if any, used in making the invention or has mentioned the incorrect source.
12. Traditional knowledge: The invention was anticipated taking into consideration the knowledge
possessed by indigenous communities anywhere in the world.

Procedure for pre-grant opposition: The procedure for filing the opposition is given in Rule 55 of the Patent
Rules. The rule states that all representations for opposition must be made in accordance with Form 7A of the
Act to the Controller General of Patents. The Indian legislature has intentionally made a provision that prohibits
the grant of patents until a period of 6 months from the date of publication has gone by. This gives a sufficient
window to third parties who wish to oppose the patent. If the examiner believes that the arguments put forth in
the statement of opposition are without merit, he will reject the opposition by passing a speaking order. On the
other hand, if the statement is found to have merit, the Examiner shall send a notice to the applicant. The
applicant is then required to submit his own statement and evidence, if any, within a 3-month time frame from
the date of the notice. The Controller considers the statements and issues a speaking order, which may:

 Grant the patent, Refuse the patent, and

 Require the amendment of the patent specification or other documents after which the patent can be
granted.

Case law

1. Bayer Corporation v. Union of India (2016) - Bayer applied for a patent for the cancer drug Nexavar
(sorafenib tosylate). Various NGOs and stakeholders opposed the patent on grounds of lack of novelty
and public interest due to high pricing.
Judgment: The Intellectual Property Appellate Board (IPAB) considered the opposition and emphasized
the need for patents to serve public interest. The case highlighted the role of public health in pre-grant
opposition, leading to a subsequent compulsory licensing decision.
2. S. S. Khemka v. Union of India (2017)- This case involved a pre-grant opposition against a
pharmaceutical patent application. The opponent argued that the invention was not novel and lacked an
inventive step.
Judgment: The IPAB upheld the opposition and rejected the patent application, stating that the
application did not satisfy the requirements of novelty and inventive step under Sections 2(1)(j) and 2(1)
(ja) of the Patents Act.
3. Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer (2001) -Bristol-Myers Squibb filed for a patent on a
specific drug formulation. An opposition was filed by Rhone-Poulenc Rorer, arguing that the
formulation lacked novelty. –
Judgment: The court ruled in favor of Rhone-Poulenc, emphasizing that the patent lacked sufficient
inventive step and did not fulfill the requirements for patentability.
Post-grant opposition in India: Once the patent has been granted, there is still a way for third parties to oppose
the grant. This was done by way of a ‘notice of opposition’. The notice has to be filed with the Controller of the
appropriate patent office at any time within 12 months from the date on which the grant of the patent was
published in the Indian Patent Journal.

Unlike pre-grant opposition, this type of opposition can only be filed by an “interested party”. Section 2(1)(t) of
the Patent Act, 1970 gives an inclusive definition of the term “person interested. ” It includes an individual
involved in or promoting research in the field to which the patent pertains. It may also refer to an entity that has
a manufacturing, trading, or financial interest in the patented goods.

Grounds for post-grant opposition: Under the Act, there is no difference in the grounds on which pre-grant
and post-grant oppositions can be made. Section 25(2) specifies the same grounds which were listed in
subsection 1 of the provision. Nevertheless, there are substantial differences in the procedures of both the
oppositions, which will be discussed in the following sections.

Procedure for post-grant opposition: Rules 55A to 70 of Patent Rules, 2003 lay down the procedure for a
post-grant opposition. The notice of opposition under Section 25(2) has to be filed with the Controller of the
appropriate office in accordance with Form 7.

Constitution of the board: Rule 56 provides that once the Controller receives the notice of opposition, he shall
establish an ‘Opposition Board’ comprising 3 members. The duty of the board is to examine the notice filed,
along with statements and evidence of both parties, and issue a report with reasons regarding each ground
challenged by the opponent.

Hearing: Rule 62 states that any party who wishes to be heard must send a notice and the prescribed fees to the
Controller. After hearing both parties and taking into consideration the recommendation made by the
Opposition Board, the Controller shall decide the case.

Appeal: The Controller’s decision of both pre and post-grant opposition can be appealed to the IPAB
(Intellectual Property Appellate Board) with a period of 3 months from the date of order.
However, if the Controller grants a patent after refusing a pre- grant opposition, an appeal can only be made to
the High Court and not to IPAB.

Case Laws:

1. Bayer Corporation v. Union of India (2016) - After Bayer was granted a patent for Nexavar, a post-grant
opposition was filed by various parties, including NGOs, arguing that the patent was not being worked in India
and was priced excessively.

Judgment: The IPAB granted a compulsory license, ruling that Bayer's conduct constituted an abuse of patent
rights, thereby allowing the generic production of the drug to ensure public access.

2. Merck Sharp & Dohme Corp v. Glenmark Pharmaceuticals (2018) - Merck's patent for a specific
formulation of a drug was challenged through post-grant opposition by Glenmark. The opposition claimed that
the patented formulation did not demonstrate significant inventive step.

Judgment: The IPAB ruled in favor of Glenmark, stating that the patent lacked sufficient inventive merit and
upheld the grounds of opposition under the Patents Act, thereby invalidating the patent.

3. Roche Products (India) Pvt Ltd v. Cipla Ltd (2010) - Roche's post-grant patent for the drug Erlotinib faced
opposition. Cipla contested the patent, citing lack of novelty and that the drug was not being worked in India.

Judgment: The Delhi High Court upheld the opposition, ruling that Roche's patent did not meet the legal
requirements for patentability, emphasizing the importance of public health and access to medicines.
WRONGFULLY OBTAINING THE INVENTION

Wrongfully obtaining an invention under the Indian Patent Act refers to the act of obtaining a patent for an
invention through fraudulent or deceptive means, violating the legal requirements or provisions laid out in the
Indian Patent Act. This could involve misrepresenting the invention, providing false information, or engaging in
any other dishonest practices during the patent application process.

Under the Indian Patent Act, obtaining a patent wrongfully is considered a serious offense and can lead to legal
consequences. If someone is found to have wrongfully obtained a patent, the patent may be revoked, and the
person may face fines or other penalties as per the provisions of the Patent Act.

It's essential to uphold the integrity of the patent system to ensure that genuine inventors and innovators are
protected, and their rights are respected. If you suspect any case of wrongful obtaining of a patent, it is essential
to bring it to the attention of the appropriate authorities so that they can investigate the matter and take
necessary actions to rectify the situation.

A patent (defined in section 2(1) (m)) is a type of intellectual property that gives its owner the legal right to
exclude others from making, using or selling an invention for a limited period of time in exchange for
disclosure of an invention that meets the criteria of global novelty, non-obviousness and industrial use. During
this time, the inventor is entitled to exclude anyone else from commercial exploitation of his invention. Patent
law is statutory in nature. However, nowadays we can see that fraud related to intellectual property is increasing
at a very alarming rate. Patent infringement is the illegal manufacture or use of the invention or improvement of
the invention or subject matter of someone else who owns a government-issued patent without obtaining the
owner’s consent, whether by consent, license or waiver. If a patent is fraudulently obtained by another person,
the patent owner can prevent that person from misusing it along with charging heavy damages.

Patent obtained by Fraud: Section 25(1) of the Patents Act 1970 clearly provides that a person may oppose
the grant of a patent on the ground that the patent applicant or the person under or through whom he claims has
wrongfully or fraudulently obtained the patent or any other part thereof or from the person under or through
whom the claim is made. The term “improperly obtained” does not necessarily mean that the patent was
obtained by fraud. The burden of proof in all these cases is on the side of the respondent. Every interested party
can submit objections against the patent to the administrator in the prescribed manner within one year. The
board will then examine the patent.

Revocation of Patent: When a patent is sealed or granted, it is not always the case that the patent should
remain unimpeded by any person or third party for the duration of the patent. Some people can challenge a
patent for several reasons and the way a patent can be challenged is by revocation of the patent. This means that
the granting and sealing of a patent or the decision of the administrator in case of opposition does not guarantee
the validity of the patent, which can be challenged for various reasons. Under Section 64, any of the following
may apply to the High Court to revoke a patent:

1. Anyone interested

2. Central Govt.

3. A person making a counterclaim in an action for patent infringement

There are various grounds for revocation (Section 64) such as failure to disclose complete specification, does
not include any inventive step, wrong attribution or one such ground for revocation is when the patent was
obtained wrongfully in violation of the rights of the applicant or through any person who or through which he
asserts a clearly given claim according to 64(c).

Reliefs: In any infringement action, a court may grant interim relief including an injunction and, at the
plaintiff’s option, either damages or an accounting of profits. The remedy of damages and the accounting of
profit are not cumulative but alternative. Relief is only available for infringements that occur during the term of
the patent. No relief applies to acts that occur while the patent is pending in the Patent and Trademark Office.
The remedy against continued patent infringement is an injunction.

1. In a patent infringement action, an injunction is issued, which is a court order prohibiting the
manufacture, use, or sale of the patented invention. This may include prohibiting further use of articles
 produced before the patent was granted. Violation of a court order is considered contempt of court and is
dealt with in contempt proceedings.

2. The remedy for a past breach is an award of damages. At the discretion of the court, it can be increased
up to 3 times. The plaintiff is entitled to damages or an account of profits. The plaintiff must choose any
of them. If the plaintiff chooses a remedy on account of profit, he will be entitled to claim only the profit
that the defendant obtained by using the plaintiff’s invention. It would be unwise to provide the patentee
with profits that were not obtained from the use of his invention.

3. The court may also order that the goods found to be infringing and the materials or patent inventions
used to create the infringing goods be seized, forfeited or destroyed as the court thinks fit.

In Bishwanath Prasad Radhe Shyam v. Hindustan Metal Industries, the patented machine is merely an
application of an old invention, known decades before 1951, for the traditional purpose of scraping and turning
utensils, with a slight change of mode. application, which is no more than a “workshop improvement,” a normal
development of an existing method of production not involving anything new beyond the probable ability of the
craftsman. The alleged discovery is not off the mark of what was previously unknown. This would be apparent
to any skilled worker in the art. There has been no substantial exercise of inventive power or innovative ability.
Thus, the SC held that it was obtained wrongfully by disguising the patented device. Therefore, the patent was
revoked.
PRIOR PUBLICATION

Section 29 of the Act refers to prior art as that which was published before the claim of a completed
specification in:

(i) any specification filed for obtaining a patent in India on or after January 1, 1912;

(ii) in India or elsewhere and also in any other documents. The only exception is where the applicant can prove
that the matter published was taken from him and published without his consent and that he had applied for the
patent as soon as reasonably practicable after knowing about the publication. However, this exception will not
be available where the invention has been commercially worked in India otherwise than for the purpose of
reasonable trial.

Publicly Known/Use:

The "publicly known or publicly used" expression is not a ground for the opposition of a patent application.
Under the explanation paragraph to s 25(1)(d), importation into India before the priority date of a product made
by the patented process would amount to public knowledge or public use, except where such importation was
for the purpose of reasonable trial or experiment. While one of the grounds for the revocation of the patent
under s 64(1)(e) is that the invention is not new, regard needs to be had as to what was publicly known or
publicly used in India before the priority date of the claim or to what was published in India or elsewhere.

There is a distinction in this section as to what is publicly known and what is merely published. Mere
publication is not sufficient to establish public knowledge. On the other hand, a thing is publicly known,
without being published in a document, if it has been publicly used.

The issue of public use and knowledge was examined by the Calcutta High Court in the case of Poysha
Industries Ltd v. Deputy Controller of Patents and Designs (AIR 1975 Cal 178). The main contention of the
appellants in support of their opposition was that the invention has been publicly used in a part of India or has
been made publicly known in any part of India. In support of their contention it was alleged that the appellants
have been manufacturing and selling tin containers with crimped diaphragms to M/s Zandu Pharmaceuticals and
another company since February 1960. They contended that the method used by the applicant for crimping the
top portion of the container was common and known to the industry and did not require any particular technique
or skill. However, since the appellants failed to establish that the invention claimed was used and known
publicly, the appeal failed.
LACK OF INVENTIVE STEP

The term "inventive step" has been defined with the provision of Section 2(1)(ja) of the Indian Patents Act
1970. This provision defines "an inventive step" as "a feature of an invention that involves a technical
advancement over existing knowledge or has economic significance, or both, and that makes the invention not
obvious to a person skilled in the art."

Section 25 (1)(e) of the Indian Patent Act 1970 provides a ground on which lack of inventive step can be taken
as a ground in a pre grant notice of opposition. While Section 25 (2) (e) of the Indian Patent Act 1970 provides
a ground in which lack of inventive step can be taken as a ground in post grant notice of opposition, Section 64
(1) (f) of the Indian Patent Act 1970 provides a ground in which lack of inventive step can be taken as a ground
for revocation of a patent in a counter claim or in a revocation petition.

In the Indian Patent Act, inventive step is one of the key requirements for an invention to be granted a patent.
Section 2(1)(ja) of the Indian Patent Act defines "inventive step" as a feature of an invention that involves
technical advance as compared to the existing knowledge or having economic significance or both and that
makes the invention not obvious to a person skilled in the art.

To determine whether an invention meets the requirement of inventive step, the Indian Patent Act adopts a
standard known as the "non-obviousness" standard. This means that the invention must not be obvious to a
person skilled in the relevant field of technology.

The test for inventive step involves assessing whether the invention involves an inventive step that is beyond
the capabilities of an ordinary person skilled in the art. In other words, if a person with average knowledge and
experience in the specific field would have arrived at the same invention based on the existing knowledge, then
the invention lacks an inventive step.The lack of inventive step is a ground on which a patent application may
be rejected or a granted patent may be challenged in India. In the patent examination process, the patent
examiner will analyze the prior art (existing knowledge) in the relevant field and evaluate whether the claimed
invention involves a technical advance or economic significance that is not obvious to a skilled person.
To support the presence of an inventive step, the patent applicant may provide evidence of unexpected technical
effects, surprising results, or superior advantages of the invention over the prior art. It's essential to note that the
determination of inventive step can be subjective to some extent and may vary from one case to another. Patent
offices and courts in India make these determinations based on the specific facts and technical details of each
individual case.

Overall, to obtain a patent in India, an invention must meet several criteria, including novelty, inventive step,
and industrial applicability. Meeting the inventive step requirement demonstrates that the invention is not an
obvious variation of existing knowledge and has made a significant technical or economic contribution to the
field.

INSUFFICIENT DESCRIPTION

The Indian Patent Act is the legislation that governs the patent system in India. It provides guidelines and
regulations related to the grant and enforcement of patents in the country. The Act includes provisions for
patentable subject matter, the application process, examination, opposition, rights of the patent holder, and
infringement, among other aspects. In the patent context, a "description" refers to the written part of the patent
application that discloses the invention in sufficient detail to enable a person skilled in the relevant technical
field to carry out the invention. This description is often provided in the form of a patent specification.

Under the Indian Patent Act, Section 10(4) specifies the requirements for the complete specification, which is
a part of the patent application. According to this section, the complete specification must:

1. Fully and particularly describe the invention and its operation or use.

2. Disclose the best method of performing the invention, which is known to the applicant and for which
they are entitled to claim protection.

If the description in the patent application is considered insufficient or lacks the necessary details to meet these
requirements, it may lead to objections or rejections during the examination process. The applicant might be
asked to provide more information or clarify certain aspects of the invention.
It's essential to provide a detailed and comprehensive description in a patent application to ensure that the
invention is properly disclosed and protected under the Indian Patent Act. Failure to meet these requirements
can significantly impact the chances of obtaining a patent or may result in the patent being invalidated or
challenged in the future. Therefore, patent applicants are advised to work with experienced patent attorneys or
agents to ensure that their applications meet the necessary legal standards and have a higher likelihood of
successful patent protection.
RIGHTS CONFERRED BY PATENTS AND OBLIGATION OF PATENTEE

Under the Indian Patent Act, patents confer certain rights to the patent holder (patentee) and impose certain
obligations. These rights and obligations are outlined below:

Rights conferred by patents under the Indian Patent Act:

1. Exclusive rights: The patentee has the exclusive right to make, use, sell, import, or offer for sale the
patented invention. This means that during the patent's term, no one else can commercially use the
patented invention without the patentee's permission.

2. Protection period: Patents are granted for a limited period, which is generally 20 years from the filing
date of the patent application. During this time, only the patentee can exercise the exclusive rights to the
invention.

3. Legal remedies: The patentee has the right to take legal action against any individual or entity that
infringes on their patent rights. If someone uses the patented invention without authorization, the
patentee can seek damages, injunctions, or other appropriate legal remedies.

Obligations of the patentee under the Indian Patent Act:

1. Disclosure: In exchange for the exclusive rights granted by the patent, the patentee must fully disclose
the invention. This means providing enough information in the patent application to enable a person
skilled in the relevant field to reproduce the invention. This disclosure promotes innovation and the
dissemination of knowledge.

2. Annual renewal fee: To maintain the patent in force, the patentee must pay annual renewal fees to the
Indian Patent Office. Failure to pay these fees will result in the patent lapsing, and the invention will
enter the public domain.
 3. Working the invention: The patentee has an obligation to work the patented invention in India. This
means that the patented invention should be available to the public to some extent, and it should not be
kept unused or unexploited. If the invention is not worked within three years from the date of the patent
grant (four years for patents filed before 2005), or if it is not adequately worked, any interested party can
apply to the Controller of Patents for a compulsory license.

4. Compulsory licensing: If the patentee fails to work the invention or make it available to the public on
reasonable terms, any interested person can apply for a compulsory license. The Controller of Patents
may grant a compulsory license, which allows the applicant to use the patented invention without the
patentee's consent under certain conditions.

5. Patent term extension: In some cases, the patentee may apply for a patent term extension due to delays
in obtaining regulatory approval for pharmaceutical and agrochemical products. If approved, the patent
term can be extended to compensate for the time lost during the regulatory approval process.

What Are The Rights Of Patentee As Per The Patent Act, 1970?

A grant of Patent in India gives the Patentee the exclusive model to utilize or make the patented invention or
utilize the patented procedure related to the invention. Certain Rights and Obligations of Patentee are enshrined
under the Patent Act, 1970. The various kinds of Rights of Patentee are as follows:

 Where the grant of Patent is done for a product, the exclusive right to prevent any third party, who is no
having his/her consent, from any act of offering, using, making for sale, importing or exporting for such
products in the territory of India;

 Where the subject matter associated with the Patent is a process, the exclusive right to prevent any third
party, who is no having his/her consent, from any act of offering, using, making for sale, importing or
exporting for such products that are directly obtained from the process in the territory of India;
  Moreover, the product produced by the Patentee should not be such that it cannot be patented in India as
per Section 48 of the Patent Act, 1970.

The elaborated Rights of Patentee in India are as follows:

1. Right To Exploit The Patent: When the new invention is a product, the Patentee has the exclusive
rights to use, make, import, or sell for these purposes related to an invention in India. On the other hand,
when the invention of the inventor is a procedure or process of manufacturing of any article or
substance, the right to exploit means the exclusive right exercise or use the procedure or method in the
territory of India.

2. Right To Grant License: The Patentee of a Patent is given the right to grant license or transfer rights
or enter into some arrangement for some consideration. The assignment or license to be valid and
legitimate it is required to be in writing and should be registered with the Controller of Patent. Unless a
document of assignment of a Patent is not registered, it is not admitted as evidence of title of the Patent,
and such a rule is applicable to the assignee, not the assignor. (As per Section 69(5) of the Patent Act,
1970)

3. Right To Surrender: By giving notice in the prescribed manner, the Patentee of a Patent has the right
to surrender a Patent at any time and at his/her own discretion. The advertisement for such an offer of
surrender is required to be done in the Journal. The publication is done to give an opportunity to the
people to oppose the offer of surrender of the Patentee. This is done when the Patentee apprehends
his/her non-performance of the Patent in the future and upon which he/she decides to surrender the
Patent.

4. Right To Sue For Infringement: The Patentee has the right to sue for Infringement of Patent in
District Court has the jurisdiction to try the suit.

5. Right To Use And Enjoy Patent: The Patentee of the Patent has the exclusive right to exercise, make,
utilize, convey or offer or the patented substance or article in India or to practice or utilize or the process
 or techniques associated with the invention. Such rights can be exercised either by the Patentee
himself/herself or by his/her licensees or agents.

Case Law :

Bristol-Myers Squibb Co. v. D.K. Eley (2011) - This case involved a patent on a specific drug formulation.
Bristol-Myers sought to enforce its patent rights against a competitor.

Judgment: The court upheld the exclusivity of patent rights, allowing Bristol-Myers to stop the competitor from
selling the infringing product, highlighting the importance of patent rights in protecting innovations.

Bharat Heavy Electricals Ltd. v. State of U.P. (2005) In this case, BHEL was involved in licensing its
technology to a public sector enterprise.

Judgment: The court reinforced the patent holder's right to license their invention and emphasized that licensing
agreements are enforceable, demonstrating the commercial value of patent rights.

Sukhram v. Ram Ratan (2008) The issue was about the assignment of a patent and whether the new assignee
could enforce the rights.

Judgment: The court recognized the validity of assignment agreements, confirming that the assignee inherits all
the rights of the original patent holder.

Novartis AG v. Union of India (2013) This landmark case involved Novartis seeking patent protection for
Glivec, a cancer treatment drug. The application was rejected on grounds of Section 3(d) concerning the
"evergreening" of patents.

Judgment: The Supreme Court reaffirmed that mere modifications cannot be patented if they do not
significantly enhance efficacy, stressing the need for genuine innovation.
What Are The Obligations Of Patentee As Per The Patent Act, 1970?

Once a Patent is granted to a Patentee, there are certain Rights and Obligations of Patentee. The Obligations of
Patentee are as follows:

1. Duty To Disclose: Sec 8 of the Patent Act, 1970, accomplishes the obligation to disclose of the
Patentee. Section 8(1) of the Patent Act, 1970, tells that the Patentee has an obligation to disclose all
required data related to the remote uses of comparative or same invention documented by him/her or
through him/her or through someone by him/her at the time of applying or within 6 months of applying.

The Patentee of a Patent is required to record an announcement of all the listed particulars viewing the
applications and, in addition to the above, an endeavor to disclose all the points of interest of any
subsequent applications that might be documented at the future stages.

Section 8(2) of the Patent Act, 1970, puts an obligation on the Patentee to provide all the data required
by the Controller of Patent with regards to the relating of any remote applications at whatever point
demand is made by the Controller of Patents within a time period of 6 months of such a demand by the
Controller of Patent. The first part of the obligation of Patentee begins when a man records an application
of Patent. On the other hand, the second part begins after a demand is made by the Controller of Patents
under the Patents Act, 1970.

2. Duty To Request For Examination: Not like other Intellectual Property Rights, the Registration process
of Registration of Patent does not accommodate any kind of programmed examination of the grant of
Patent application. In the procedure above mentioned, as indicated by Section 11(B) of the Patents Act,
1970, the obligation is thrown on the Patentee himself/herself to ask for the Controller of Patents to look
at the growth or development connected for Patent.

3. Duty To Respond To Objections: The Controller of Patent before accepting the examination request
passes it to the analyst who looks at the growth and gives a report to the Controller of Patent known as the
First Examination Report (FER). On certain cases there may be some protests which will be brought up in
 the First Examination Report, it is the right of Patentee to reply to such opposition complaints and consent
to the corresponding within a time period of a year of the issuance of the First Examination Report (FER)
falling which the application of the Patentee will be considered to be surrendered by the Controller of
Patent.

4. Duty To Clear All Objections: It is the obligation of the owner of the Patent to respond to the raised
objections as well as to clear and remove each one of the raised objections and, in addition, certain
oppositions raised against his/her invention. In the event that the Controller of Patent has not fulfilled
he/she, it may also require a meeting also. Furthermore, it is the obligation of the owner of Patent to go for
a consultation and clear all the objections and, in addition, oppositions, if are raised any, against the
invention of the inventor.

5. Duty To Pay Statutory Fees: The Patentee has an obligation to pay all the statutory expenses required to
get a grant of a Patent in the process of Registration without failure generally, his/her application for the
grant of Patent won’t be managed. Sec 142 of the Patent Act, 1970, accomplishes the provisions
recognized with payment of charges and, in addition, the consequences for non-payment of such
prescribed fees.

Case Law:

Novartis AG v. Union of India (2013) The Supreme Court rejected Novartis's patent application for Glivec
primarily on the grounds that the invention did not meet the requirement of "newness" and adequate disclosure.

Judgment: The court emphasized the necessity for patent applications to demonstrate clear and complete
disclosure. This case highlighted that the patent system must advance genuine technical innovation rather than
mere incremental changes.

K.K. Verma v. Union of India (2009) In this case, the issue was whether a patent lapse due to non-payment of
renewal fees can be reinstated.
Judgment: The court acknowledged that while patent holders have a right to their patents, they must also fulfill
their financial obligations to maintain them. It ruled that a patent cannot be revived once it has lapsed and
emphasized the importance of compliance with renewal payments.

Bharat Heavy Electricals Ltd. v. State of U.P. (2005) In this instance, BHEL was challenged regarding
compliance with statutory requirements related to their licensing agreements.

Judgment: The court reiterated that compliance with legal obligations is paramount. Patent holders must ensure
transparency and legality in their patent management.

Smita Tiwari v. Union of India (2009) This case involved a request for information about the working of a
specific patent.

Judgment: The court upheld that patent holders must be transparent about how they are exploiting their patents
in order to inform public policy and meet obligations under the Act.

After this process is imitated to and the Patentee of Patent clears every one of the restrictions and protests raised
against his/her invention, if the Controller of Patent is fulfilled, he/she will grant a Patent to the invention and
publishes it in the Journal, or generally, the Controller rejects such a Patent.
DURATION FOR PATENT

A patent is issued for such a product, technique, or innovation for a period of 20 years under the Indian Patents
Act, 1970. As a result, the life of a patent in India is 20 years from the date of filing of the patent application.
You simply cannot prolong the patent's life. Whenever a patent's lifespan ends, the innovation loses its patent
protection and enters the public domain. This implies that somebody can create, use, or sell the innovation
without fear of being sued for infringement. Thus, according to Section 53 and Rule 80 of the Indian Patents
Act, 1970, patent holders must renew their patent rights on a regular basis. This is done to guarantee that the
patent stays valid throughout its life.

If a person is an innovator, they will wish to prevent the unlawful use and distribution of their innovations.
Patents are provided to innovators in order to prevent others from "producing, using, offering for sale, or selling
the invention" under federal patent laws. As a result, innovators are issued patents to fully preserve their
innovations. A patent is normally valid for 20 years and can be used for any invention in the sphere of
technology or industry. A patent is a component of a World Trade Organization international agreement
(WTO). As a result, WTO members are supposed to recognise and enforce lawful patents.

How Long Does a Patent Last?

A patent that was submitted after June 8, 1995, is valid for 20 years after the submission of the patent
application. If a patent was submitted before June 8, 1995, it is valid for either 17 years from the date of
issuance or 20 years from the date of filing, whichever is longer.

The validity of the patent will also be determined by the type of invention filed. A patent's validity comprises
the following:

 Utility Patent: 20 years from the date of filing if submitted before June 8, 1995, or 17 years from the
date of issuance, whichever is longer.

 Design Patent: Design patents have a 14-year term from the date of issuance.
  Plant Patent: Plant patents have a 17-year term from the day the invention was issued.

Case Law :

1. Bristol-Myers Squibb Co. v. Pharmacia Corp. (2005) This case revolved around a dispute regarding the
interpretation of the patent term for a pharmaceutical product. The plaintiff, Bristol-Myers Squibb, argued that
their patent should be granted an extension based on their marketing efforts.

Judgment: The Supreme Court of India ruled that the duration of a patent is strictly 20 years from the filing
date, as stipulated by the Patents Act. The court emphasized that any extension or variation of this term must be
based on legislative provisions and cannot be determined by judicial discretion.

2.Novartis AG v. Union of India (2013) Novartis challenged the rejection of its patent application for the
cancer drug imatinib, arguing that it had made significant innovations. The case highlighted issues regarding the
patentability criteria and duration in the context of incremental innovations.

Judgment: The Supreme Court upheld the decision of the Indian Patent Office, stating that the patent was not
granted because it did not meet the criteria of novelty and non-obviousness. The judgment reinforced that the
20-year patent term applies strictly, and any new claims must meet the rigorous standards set by the Act.

3.Eli Lilly and Company v. The Government of India (2017) Eli Lilly sought a patent for a new chemical
entity related to a treatment for diabetes. The patent was denied under Section 3(d) of the Patent Act, which
prohibits the patenting of mere discoveries of new forms of known substances.

Judgment: The Supreme Court upheld the rejection of the patent application, reaffirming that the duration of
patent protection is only applicable if the invention meets the necessary criteria to be granted a patent. The
ruling clarified that the 20-year term is contingent on the validity of the patent grant itself.
Right of secrecy

PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS

Section 35. Secrecy directions relating to inventions relevant for defence purposes

1. If it appears to the Controller that the invention is one of a class notified to him by the Central
Government as relevant for defence purposes, or, where otherwise the invention appears to him to be so
relevant, he may give directions for prohibiting or restricting the publication of information with respect
to the invention or the communication of such information.

2. The controller shall give notice of the application and of the directions to the Central Government, and
the Central Government shall, upon receipt of such notice, consider whether the publication of the
invention would be prejudicial to the defence of India, and if upon such consideration, it appears to it
that the publication of the invention would not so prejudice, give notice to the Controller to that effect,
who shall thereupon revoke the directions and notify the applicant accordingly

Section 36 Secrecy directions to be periodically reviewed—

(1) The question whether an invention in respect of which directions have been given under section 35
continues to be relevant for defence purposes shall be reconsidered by the Central Government at
intervals of six months or on a request made by the applicant which is found to be reasonable by the
Controller and if, on such reconsideration it appears to the Central Government that the publication of
the invention would no longer be prejudicial to the defence of India or in case of an application filed by
a foreign applicant it is found that the invention is published outside India it shall forthwith give notice
to the Controller to revoke the direction and the Controllers shall thereupon revoke the directions
previously given by him.

(2) The result of every re-consideration under sub-section (1), shall be communicated to the applicant
within such time and in such manner as may be prescribed.
Section 37. Consequences of secrecy directions.—

1. The Controller shall not pass an order refusing to grant the same

2. No appeal shall lie from any order of the Controller passed in respect thereof

3. If it appears to the Central Government that the applicant for the patent has suffered hardship by reason
of the continuance in force of the directions, the Central Government may make to him such payment (if
any) by way of solatium as appears to the Central Government to be reasonable having regard to the
novelty and utility of the invention and the purpose for which it is designed, and to any other relevant
circumstances

Case Laws:

1. Boehringer Ingelheim v. Glenmark Pharmaceuticals (2018): This case highlighted the importance of
maintaining secrecy around patent applications and the implications of disclosing sensitive information. The
court ruled in favor of Boehringer, emphasizing that the confidentiality of patent applications must be upheld to
protect the interests of the patent holders.

2. Shree Ram Urban Infrastructure Ltd. v. State of Maharashtra (2015): In this case, the issue of disclosure of
confidential information was pivotal. The court recognized that the secrets of a patent application should not be
disclosed to the public until the patent is granted, reinforcing the importance of maintaining secrecy during the
application process.

3. Indian Oil Corporation Ltd. v. Oil & Natural Gas Corporation Ltd. (2006): This case dealt with the
unauthorized disclosure of confidential information related to a patented process. The court ruled that the parties
involved must respect the confidentiality of the information and that any breach could result in legal
consequences.
Introduction of Abuse of patents rights :

Section 83. General principles applicable to working of patented inventions

(a) that patents are granted to encourage inventions and to secure that the inventions are worked in India on a
commercial scale and to the fullest extent that is reasonably practicable without undue delay

(b) that they are not granted merely to enable patentees to enjoy a monopoly for the importation of the patented
article

(c) that the protection and enforcement of patent rights contribute to the promotion of technological innovation
and to the transfer and dissemination of technology, to the mutual advantage of producers and users of
technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights
and obligations

(d) that patents granted do not hold back protection of public health and nutrition and should act as instrument
to promote public interest specially in sectors of vital importance for socio-economic and technological
development of India

(e) that patents granted do not in any way prohibit Central Government in taking measures to protect public
health

(f) the patentee or a person deriving title or interest on patent from the patentee does not resort to practices
which unreasonably hold back trade or harmfully affect the international transfer of technology

(g) that patents are granted to make the benefit of the patented invention available at reasonably affordable
prices to the public.

Abuse of patents rights :

The patent monopoly is abused when the economic and social objectives of the patent system are jeopardized
by the performance of the patentee
 1. Insufficient disclosure of the invention

2. Lack of use or inadequate use of the patented

3. Abusive practices in licensing agreements

4. Patent expiration

5. Non availability and non- working of the invention discourage further invention and its working on
commercial scale which in the end take away the common people to get the benefit of the patented
invention at affordable price.

The multinational companies used their patent right to prevent the indigenous companies from
manufacturing

The Hindustan Antibiotics Ltd (HAL) v Pfizer case: HAL developed in 1960s a local process for
manufacturing oxtetracycline.In the same year Pfizer manufacturing a same type of medicine .On the ground of
infringement Pfizer stop HAL from producing the drugs.

Cipla Ltd sued an indigenous firm when the local company started importing a medicine at a cheaper price.

Hoecht v Hoftkine Institute 1969 AIR

Hoecht acquired an open ended patent wide enough to cover all methods related to manufacturing the drugs
tolbutamide and then prevented Hoftkine institute and Unichem Laboratories from producing the same drugs
using different methods.
Compulsory Licensing: Compulsory licensing is a concept that enables a third party to manufacture a patented
product in certain exceptional circumstances. However, only people who have been granted the compulsory
licence by the controller, can do so. A compulsory licence is granted by the controller upon an application made
by a person seeking the licence and upon satisfaction of certain conditions and reasons for the grant of the
licence. The concept has been introduced for the benefit of the public at large so that patented products can be
made available to the public at affordable prices. The concept of compulsory licence is mainly concerned with
patents, but its scope is not limited to just patents but extends to copyrights as well. During the COVID-19
pandemic, the concept of compulsory licensing was the talk of the town. This was a period where people
realised the importance of health and the need to regulate the patent system and impact of intellectual property
rights. This is where the concept of compulsory licensing comes into picture whereby a third party is granted a
licence by the concerned authority, to manufacture, sell and distribute the patented product without permission
of the patentee. This is the reason why the government and manufacturers relied on the option of compulsory
licence during the health crises in the period of pandemic.

Licence under Patents Act, 1970: A licence can be understood as a permission given by the owner of a thing
to a person to use, make, or exercise certain rights with respect to the subject matter. Thus, in patents, it means a
permission to make, use, or exercise rights related to any invention that is patented. A licence only grants or
permits partial use of a product or invention; however, the ownership remains with the patentee. It can either be
exclusive or non-exclusive, which depends on the degree and extent of the right.

Types of licence Licence can further be divided into two categories:

i) Voluntary licence : A voluntary licence is a written permission or authority given by the patentee or
owner of the patented invention to any other person to make, use, sell, etc., the patented product in
such a manner and on terms and conditions provided in the licence. This kind of licence is given by
the owner or patentee directly. There is no role of the controller or government in granting the
licence in any manner. Thus, it is known as a voluntary licence.
 ii) Compulsory licence: It is a licence through which a third person is authorised by the government or
controller to make, sell or use a patented product or patented process. In simple terms, compulsory
licences are authorisations given to a third-party by the government to make, use, or sell a particular
product or use a particular process which has been patented without the need of the permission of the
patent owner. The provisions regarding compulsory licences are given in the Indian Patents Act,
1970 and in the TRIPS Agreement at the international level. There are certain pre-requisite which
need to be fulfilled if the government wants to grant a compulsory licence in favour of someone. A
compulsory licence is granted by the Controller and is specifically dealt with under Chapter XVI,
Section 84–94 of the Patents Act, 1970.

Purpose of granting compulsory licence: Section 89 provides that the purpose of granting a compulsory
licence is:

i. to get the patented invention to work commercially in the country without any undue delay to the fullest
extent to be called as a reasonable practice.
ii. to prevent unfair prejudice with respect to the interests of any person who is working or developing an
invention in India and is protected by a patent.

Compulsory licence under the Patents Act, 1970

Grounds for compulsory licence : Section 84 of the Act deals with compulsory licences. According to the
Section, any person interested can make an application to the Controller for the grant of a compulsory licence
after expiry of 3 years from the time when the patent was granted. Application for grant of compulsory licence
can be made on the following grounds:

i. Requirements of the public are not satisfied with respect to patented inventions.
ii. The patented invention is not available at affordable prices to the public.
iii. The invention is not working in the country.
Any person can make an application under this Section, irrespective of the fact that he is a holder of a licence
and alleges the above-mentioned grounds in the application. The application will also contain a statement
stating the nature of interest of applicants and other particulars as prescribed. If the controller is satisfied with
the above-mentioned grounds, he/she may grant a licence with the necessary terms. While considering the
application, the controller must consider (Section 84(6)):

i. Nature of invention, time elapsed since the sealing of patent, and measures taken by patentee or licensee
to use the invention.
ii. Ability of the applicant to use an invention for the benefit of the public.
iii. Capacity to undertake risk if the application is granted.
iv. Efforts made by the applicant to obtain a licence from the patentee and such efforts have been
successful.
Section 84(7) provides that reasonable requirements of the public will not be considered as satisfied if: Due to
the refusal to grant a licence by patentee –
A trade or industry already existing or the establishment of new trade or industry in India is prejudiced. There is
not much demand for the patented product. There is prejudice with respect to the establishment or development
of commercial activities in the country. There is no supply or development of the market for the export of
patented products.
There is prejudice with respect to the use of patented products or processes, the manufacture, use, or sale of
materials that are not protected, or the establishment of any trade or industry due to conditions imposed by the
patentee on the grant of a licence. The patentee imposed a condition to provide an exclusive grant back and to
prevent challenges to the validity of the patent or licensing of coercive packaging. The invention is not
commercially used in India to an adequate extent or fullest extent, which can be considered as a reasonable
practice. The commercial use of patented invention is prevented or obstructed by importation of the patented
product from any foreign country by:
Patentee or any person claiming under him. Persons who are purchasing the product from the patentee directly
or indirectly. Any other person against whom no proceedings for infringement have been initiated by the
patentee.
Procedure for the grant of compulsory licence : Section 87 of the Act provides the procedure for the grant of
compulsory licences. The licence is granted by the controller under the Act. The section provides that when an
application for compulsory licensing is made and the controller is satisfied with the grounds, the applicant will
be asked to serve a notice to the patentee or any other person interested in the patent. The application will then
be published in the official journal. In case of any objection, the patentee or any other interested person may
give the notice of such opposition or objection to the controller within the time prescribed by the controller. The
notice of opposition must contain the grounds of objection with respect to the application made by the applicant
for grant of a compulsory licence. The controller is under an obligation to notify the applicant about such
opposition and is given an opportunity to be heard by both the parties i.e., the applicant and the opponent,
before deciding the application.
Revocation of patents: Section 85 of the Act deals with the revocation of patents by the controller due to non-
working. Any person interested or the central government makes an application to the controller to revoke the
patent, after the expiration of 2 years from the date when the first compulsory licence was granted, on the
following grounds:
The patented invention is not worked on or used in the country. Requirements of the public are not satisfied
with respect to the patented invention. It is not available to the public at a reasonable and affordable price.
The application must also contain other particulars as prescribed and the nature of interest of applicants if made
by any person other than the Central Government. If the controller is satisfied with the above-mentioned
grounds, he may grant the order to revoke the patent. The section also provides that every application made in
this regard must be decided within one year from the date when it is presented before the Controller.
Termination of compulsory licences: Section 94 of the Act deals with termination of compulsory licences,
which can be done on an application made in this regard and upon the satisfaction of the controller that the
circumstances giving rise to a compulsory licence do not exist any more. The Section provides that such an
application for termination can be made by:
The patentee or Any person deriving title or interest in the patent for which compulsory licence was granted.
However, if such an application is made by any other person, an objection can be raised by the holder of the
licence. While granting the application, the controller has to consider whether the interest of the person having
the licence is affected or not.
Powers of controller: Section 88 of the Act deals with the powers of the controller to grant compulsory
licences. It provides that the controller can:
 Order the grant of licences to the customers of the applicant where an application has been made stating
that there is prejudice regarding manufacture, use, or sale of materials that are not protected by patent
due to conditions imposed by the patentee or upon purchase, hire, or use of such a product or process.
 Order to amend the existing licence where an application is made by a person holding a licence under
the patent.
 If more than two patents are held by the same patentee and an applicant making an application for
compulsory licence establishes that the requirements of the public that are reasonable have not been
satisfied, the controller may direct to grant the licence of other patents if he is satisfied that –
i. The applicant cannot work efficiently without infringement of any other patent and
ii. The patents involve technical advancements that are important or
iii. Economic significance with respect to other patents.
 The section also provides that a licensee can make an application to the controller to revise terms and
conditions on the ground that the settled terms and conditions have proved to be onerous and that the
licensee is not able to work the invention and is suffering a loss. This application is made after the
licensee has worked or commercially used the invention for not less than 12 months.

Section 86 of the Act provides the power of Controller to adjourn the hearing of applications for a period not
exceeding 12 months in cases where the application states that:
 The invention patented has not been worked on in India,
 Controller is satisfied that the time has elapsed since the patent was sealed for any reason due to which
the invention was not worked on a commercial scale to such an extent which can be called a reasonable
practice.
However, if it is established by the patentee that the invention was not worked on due to any state or central act,
rule or regulations made by the government, the period of adjournment will be reckoned in this case from the
date during which the working of the invention was prevented.
Terms and conditions of compulsory licences: Section 90 of the Act deals with the terms and conditions of
compulsory licences and provides that while settling the terms and conditions, the controller must try to secure:

 Reasonable royalty and remuneration are reserved for the patentee or any other reasonable beneficiary of
the patent with respect to the nature of the invention, and expenditure incurred by the patentee in
developing and obtaining the patent.
 Working on patented inventions to the fullest extent, along with profit.
 Availability of patented products to the public at affordable costs.
 Grant of non-exclusive licence.
 Non-assignable right of the licensee.
 Grant of licence for a balance term unless a shorter term is consistent with the interests of the public.
 Licence is granted mainly to supply in the Indian market.
 The purpose of granting a licence in case of semiconductor technology is to work/use the invention for
non-commercial use by the public.
 A permit for exportation of patented products under the licence is granted in order to remedy an anti-
competitive practice.
The Section also provides that no licence would authorise the licensee to import any patented article or product
made by a patented process from a foreign country where it would result in infringement of patentee’s rights.
Compulsory licence for export of patented pharmaceutical products: Section 92 of the Act provides special
provisions for compulsory licences as notified by the Central Government. It provides that the Central
Government can make a declaration through a notification regarding the grant of a compulsory licence for any
patent in cases of:
 National emergency,
 Extreme urgency,
 Non-commercial use by the public.
The Controller will grant the licence to the application upon an application made by him and also settle terms
and conditions. While doing so, the Controller will have to make sure that the patented product is available to
the public at the lowest prices and also that the patentees are able to take reasonable advantage of their rights.
However, the Controller will not apply the procedure given under Section 87 of the Act, in cases where a
national emergency or extreme urgency, or non-commercial use by the public arises. This also includes crises
related to public health, such as AIDS, HIV, tuberculosis, malaria or other epidemics.
Section 92A further deals with the compulsory licence for the export of pharmaceutical products that are
patented. It provides that in order to address problems of public health in countries where there is no
manufacturing capacity or insufficient manufacturing capacity of pharmaceutical products, a compulsory
licence will be available for the export and manufacture of such products to such countries and will be granted
by the controller upon an application made in this regard. The pharmaceutical products in this situation include
any patented product or products manufactured by a patented process required to address the public health
crisis.
Compulsory licence under the Copyrights Act, 1957: Chapter VI, Section 31-31B of the Copyrights Act,
1957 deals with compulsory licences. Section 31 provides that a compulsory licence can be granted by the
Registrar of Copyrights under the directions of the commercial court, if there is a complaint regarding any work
which is published or performed in public, during the term of the copyright, stating that:
 The owner refused to republish the work or allow the same, or refused to allow the performance of such
work in public because of which it was withheld from the public.
 The owner refused to broadcast the work or communicate it to the public.

The commercial court, upon satisfaction that there is no reasonable cause for such refusal, can direct the
Registrar of Copyrights to grant the licence to the complainant after giving an opportunity to be heard to the
owner of the copyright. The licence will allow the complainant to:
i. Republish the work
ii. Perform the work in public
iii. Communicate the work by broadcasting it.
However, the owner must be given compensation for the same, and the complainant has to abide by the terms
and conditions imposed by the registrar in order to exercise the rights mentioned above. It is interesting to note
the term ‘commercial court’ in the above section has been inserted recently. The Tribunal Reforms
(Rationalisation and Conditions of Service) Ordinance, 2021 which came into force on 5 April, 2021 abolished
various tribunals under different statutes including Intellectual Property Appellate Board (IPAB) as a result of
which an amendment was done in the Copyrights Act, 1957 to omit the term ‘Appellate board’ and to insert the
term ‘commercial court’.

Section 31A further deals with compulsory licences in cases of unpublished or published work. If the author of
any unpublished work or published work, or work withheld from the public in India, is dead or unknown, or
cannot be found along with the owner, any person can apply for a grant of licence to the Commercial Court to
publish or communicate such work. However, before making any such application, the applicant is supposed to
publish the proposal in one issue of a daily newspaper circulated in major parts of the country in English
language. If the work includes translation, then in the daily newspaper of that language.

The application must be accompanied by the advertisement and the prescribed fee. The commercial court, after
an inquiry, will direct the registrar of copyrights to grant a licence. After doing so, the registrar will ask the
applicant to deposit the royalty, which is determined by the Commercial Court in the public account or any
other account specified by the court. The Section further provides that if the original author of the work is dead,
the Central Government may ask the heirs, executors, or legal representatives of the author to publish the work
within a given time period, if it is beneficial for the national interest. If the work is not published within the
prescribed time limit, the central government may permit any person to publish the work upon application made
by the person in this regard. This will be done after giving the parties an opportunity to be heard and upon
payment of royalty by the applicant. Section 31B further provides provision for the grant of compulsory
licences for the benefit of disabled persons. A person working for the benefit of any person with a disability in a
business or for profit may apply for a compulsory licence to the Commercial Court. Such an application will be
disposed of by the court within 2 months from the date when such application was made. While doing so, the
court will inquire or direct an inquiry in order to establish the credentials of the applicant to satisfy itself as to
whether the application was made in good faith or not. The Court will direct the Registrar to grant a licence to
the applicant in order to make the work available to persons with disabilities. The Court can also extend the
period of compulsory licence. All the compulsory licences issued under this Section will specifically provide:
i. Means of publication
ii. Format of publication
 iii. Period or time limit to exercise the licence,
iv. Number of copies to be issued,
v. Rate or royalty.

Impact of compulsory licence: A compulsory licence has the following effects:

Innovation: Underdeveloped countries mostly prefer getting the compulsory licence for a generic drug rather
than funding the research & development separately, which is often a very costly thing. Moreover, research-
based pharmaceutical companies do not launch patent modules in the developing countries as there is always
the risk of losing the patent, and losing money in research. However, with the introduction of compulsory
licence, the scope of innovation has increased. The developing countries and underdeveloped countries have
realised the importance of innovation and are striving to achieve it in order to sustain in the market which is also
beneficial for their economy.
Competition and cost: Compulsory licensing will increase the number of companies producing generic
medicines. Hence, there will be an increase in the supply leading to lower product cost. This will also force the
innovator countries to introduce differential pricing for their patent modules so that they can stand on the
market. However, it will increase the competition among the suppliers and manufacturers.
Access to patented invention : With the help of a compulsory licence, a patented invention can be accessed
easily without the consent of the patentee or the owner of the invention. This further results in the availability of
patented processes and products to a larger public.
Transfer of technology or patented product: The compulsory licensing has enabled the transfer of a patented
product to any foreign country having no resources or capacity to manufacture the said product. For example,
Section 92A of the Patents Act, 1970 provides for the export of patented pharmaceutical products to countries
which are in need and have no capacity to manufacture the product.
Public interest : The concept of compulsory licensing works in favour of public interest and enables a patented
product to be available at an affordable price to the public. It also helps in balancing intellectual property rights
and public interest like public health, development, etc. This also leads to controversy between the exclusive
rights of patentees over intellectual property and promoting access to patented products.
First case of compulsory licensing in India India granted its first ever compulsory licence during the dispute
between Bayer Corporation and NATCO Pharma Ltd., in 2012 to an Indian Company named Natco Pharma.

NATCO-BAYER Case : India granted its first ever compulsory licence during the dispute between Bayer
Corporation and NATCO Pharma Ltd., in 2012 to an Indian company named Natco Pharma. In this case, Bayer
Corporation, a German pharmaceutical company, invented a drug named ‘Nexavar’ for the treatment of kidney
cancer. This drug was granted patent protection in India in 2008. Thereafter, an Indian pharmaceutical company
approached Bayer Corporation with an aim to seek a voluntary licence to manufacture the drug in 2010.
However, their request was denied due to which they applied to the Controller for a grant of compulsory
licence. The licence was granted in 2012, aggrieved by which the Bayer Corporation approached the Intellectual
Property Appellate Board (IPAB). The decision of the board was similar to that of the Controller. The board
also opined that since the patentee is enjoying the rights conferred upon it, the patentee must also ensure that the
drug is available to the public at large. Further, in this case, all the three conditions mentioned in Section 84
were fulfilled. This medicine is used for treating liver and kidney cancer, and one month’s worth of dosage
costs around Rs 2.8 Lakh. Natco Pharma offered to sell it for around Rs 9000, making this potentially life-
saving drug easily accessible to all parts of society and not just the rich people. This decision benefited the
general public at large. However, it was criticised by the pharmaceutical companies, as they felt the licence
should not have been given due to fear of losing their rights over their patented products and inventions.
However, Natco Pharma is paying the royalties to Bayer at a rate of 6% of all sales on a quarterly basis in
accordance with the guidelines set by the United Nations Development Programme (UNDP). In January 2013,
the Health Ministry of India recommended three anti-cancer drugs trastuzumab, ixabepilone, and dasatinib for
compulsory licences. This will allow the Government to sell these drugs at a significantly lower price and will
also allow the people who cannot afford the drugs originally, access to these drugs.

Lee Pharma v. Astrazeneca (2015) : It is another case where a compulsory licence was sought wherein, an
Indian Pharmaceutical manufacturer sought compulsory licence for a drug named ‘sexagliptin’ that is used for
the treatment of type-II diabetics. It is amongst the very few medicines available for the treatment of type-II
diabetics in the country. The drug was first given to Bristol Myers Squibb and later to Astrazeneca, an Anglo
Swedish Company. However, the application for the grant of compulsory licence was rejected on the ground
that the conditions or reasons mentioned in Section 84 of the Act were not fulfilled.
Remedies

 Section 118. Contravention of secrecy provisions relating to certain inventions. If any person fails to
comply with any direction given under section 35 or makes or causes to be made an application for the
grant of a patent in contravention of section 39 he shall be punishable with imprisonment for a' term
which may extend to two years, or with fine, or with both.

 Section 119. Falsification of entries in register, etc.—If any person makes, or causes to be made, a
false entry in any register kept under this Act, or a writing falsely purporting to be a copy of an entry in
such a register, or produces or tenders, or causes to be produced or tendered, in evidence any such
writing knowing the entry or writing to be false, he shall be punishable with imprisonment for a term
which may extend to two years, or with fine, or with both.

 Section 120. Unauthorised claim of patent rights.—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 shall be
punishable with fine which may extend to one lakh rupees

 Section 121. Wrongful use of words "patent office".—If any person uses on his place of business or
any document issued by him or otherwise the words "patent office" or any other words which would
reasonably lead to the belief that his place of business is, or is officially connected with, the patent
office, he shall be punishable with imprisonment for a term which may extend to six months, or with
fine, or with both.

Section 122. Refusal or failure to supply information.- (1) If any person refuses or fails to furnish—

(a) to the Central Government any information which he is required to furnish under sub-section (5) of
section 100

(b) to the Controller any information or statement which he is required to furnish by or under section 146,
he shall be punishable with fine which may extend to ten lakh rupees.
(2) If any person, being required to furnish any such information as is referred to in subsection (1), furnishes
information or statement which is false, and which he either knows or has reason to believe to be false or does
not believe to be true, he shall be punishable with imprisonment which may extend to six months, or with fine,
or with both.

Section 123. Practice by non-registered patent agents.—If any person contravenes the provisions of section
129, he shall be punishable with fine which may extend to one lakh rupees in the case of a first offence and five
lakh rupees in the case of a second or subsequent offence

Section 124. Offences by companies.—If the person committing an offence under this Act is a company, the
company as well as every person in charge of, and responsible to, the company for the conduct of its business at
the time of the commission of the offence shall be deemed to be guilty of the offence and shall be liable to be
proceeded against and punished accordingly:

But that 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. where an
offence under this Act has been committed by a company and it is proved that the offence has been
committed with the consent or connivance of, or that the commission of the offence is attributable to any
neglect on the part of any director, manager, secretary or other officer of the company, such director,
manager, secretary or other officer shall also be deemed to be guilty of that offence and shall be liable to
be proceeded against and punished accordingly
Infringement of Patent

1. When the rights of the patentee are infringed by the third person

2. When the patented product is infringed by third person by producing the identical of the patented product but
by using different process and the process is not patented

3. When the third party used the patented process for producing different product and the product is not
patented.

4. The patent infringe must be a valid patent at the time when the suits for infringement is brought.

5. Jurisdiction - —A suit for infringement of a patent shall be instituted in any court inferior to a district court
having jurisdiction to try the suit

Provided that where a counter-claim for revocation of the patent is made by the defendant, the suit, along with
the counter-claim, shall be transferred to the High Court for decision.

6. The court in a suit of infringement of patent has two kinds of power :

a. The court can pass interlocutory order in favour of plaintiff with such terms and condition

b. The court can order seizer, forfeited or destroyed, as the court deems fit under the circumstances of the
case without payment of any compensation

7. But the power of the court in granting damages or on accounts of profit in a suit of infringement is
restricted where the defendant can prove successfully that on the date of infringement he was not aware
and had no reasonable grounds for believing that the patent existed.

8. Defence for defendant-

a. He can argue that the patent in question is revocable and therefore no infringement lies by advancing the
grounds on which the patent can be revoked.
b. The patented product or process is not an invention

c. It was used on behalf of the government

d. Used merely for the purpose of experiment or research and imparting of instructions to pupil
UNIT – 3

HISTORICAL EVOLUTION OF TRADE MARK LAW:

The historical evolution of trademark law can be traced back to ancient times, although the modern concept and
framework of trademark law have developed over centuries. Here is a general overview of the historical
evolution of trademark law:

1. Ancient Origins: The use of trademarks can be traced back to ancient civilizations such as Ancient
Egypt, where artisans marked their products with unique symbols. Similar practices existed in Ancient
Greece and the Roman Empire, where marks were used to identify the origin and quality of goods.

2. Medieval Guilds and Marks: During the Middle Ages, trade guilds emerged, and craftsmen began to use
specific marks or symbols to identify their products and protect their reputations. These marks served as
early forms of trademarks.

3. Early Statutory Protection: The first recorded legal protection for trademarks dates back to medieval
Europe. In 1266, England enacted the Statute of Merchants, which granted limited protection to certain
marks used in trade.

4. Development of Common Law: Common law principles, developed through court decisions and
customs, played a significant role in shaping trademark law. In England, the Court of Chancery enforced
rights associated with trademarks, focusing on preventing unfair competition and protecting consumers.

5. Industrial Revolution and Early Legislation: With the advent of the Industrial Revolution in the 18th
century, the need for stronger trademark protection grew. The United Kingdom passed the Merchandise
Marks Act in 1862, which established a registration system and provided legal remedies against
trademark infringement.
 6. International Expansion: As trade expanded globally, the need for international trademark protection
arose. The Paris Convention for the Protection of Industrial Property was signed in 1883, providing a
framework for the mutual recognition of trademarks and establishing the principle of national treatment.

7. U.S. Trademark Act of 1905: In the United States, the Trademark Act of 1905 was a significant
development. It introduced the concept of registering trademarks with the U.S. Patent and Trademark
Office (USPTO) and provided federal protection against trademark infringement.

8. Lanham Act: The Lanham Act, enacted in the United States in 1946, is a comprehensive federal law
governing trademarks. It established a modern system for registering and protecting trademarks,
including provisions for distinctive marks, dilution, and unfair competition.

9. International Harmonization: In the second half of the 20th century, international efforts were made to
harmonize trademark laws. The World Intellectual Property Organization (WIPO) was established in
1967 and played a crucial role in developing international agreements, such as the Madrid Agreement
and the Madrid Protocol, which simplify the international registration of trademarks.

10. Digital Age and Globalization: The rise of the internet and e-commerce in the late 20th century
presented new challenges for trademark law. Issues such as domain name disputes, online infringement,
and counterfeiting required adaptations and updates to existing laws and regulations.

Trademark law continues to evolve in response to technological advancements, global trade, and consumer
protection needs. Each country has its own trademark laws, but efforts for harmonization and cooperation
among nations persist to ensure effective protection of trademarks in the global marketplace.

HISTORICAL EVOLUTION OF TRADE MARK LAW IN INDIA:

The historical evolution of trademark law in India can be traced back to the colonial era and has undergone
significant developments over time. Here is an overview of the key milestones in the evolution of trademark law
in India:
1. The Trade Marks Act, 1940: This was the first legislation that governed trademarks in India. It provided
for the registration and protection of trademarks and established the framework for trademark
administration.

2. The Trade and Merchandise Marks Act, 1958: This Act replaced the earlier legislation and introduced
several important provisions. It expanded the definition of trademarks, introduced the concept of service
marks, and established the Registrar of Trademarks.

3. India's accession to international conventions: India became a signatory to the Paris Convention for the
Protection of Industrial Property in 1998 and the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS) in 1995. These agreements led to the harmonization of India's trademark laws
with international standards.

4. The Trade Marks Act, 1999: This Act replaced the Trade and Merchandise Marks Act, 1958, and
brought significant changes to the Indian trademark system. It introduced new concepts such as well-
known trademarks, collective marks, and certification marks. The Act also aligned Indian law with
international practices and provided enhanced protection to trademark owners.

5. Amendments and rule changes: Over the years, several amendments have been made to the Trade Marks
Act, 1999, to address emerging challenges and streamline trademark procedures. These amendments
introduced provisions for the electronic filing of trademarks, expedited registration, and simplification of
procedures.

6. Establishment of the Intellectual Property Appellate Board (IPAB): The IPAB was established in 2003
as a specialized tribunal to hear appeals and disputes related to intellectual property rights, including
trademarks. It played a crucial role in the effective enforcement and adjudication of trademark-related
matters.

7. India's compliance with Madrid Protocol: In 2013, India acceded to the Madrid Protocol, an
international treaty for the registration of trademarks. This enabled Indian trademark owners to seek
protection in multiple member countries through a single application.
 8. Recent developments: In recent years, India has continued to modernize its trademark regime. The
country has implemented online filing systems, strengthened enforcement mechanisms against
trademark infringement, and enhanced cooperation with international trademark authorities.

Trademark

A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other
enterprises.

According to Article 15(1) of the TRIPS Agreement the World Intellectual Property Organization (WIPO)
defines trademark as:

"Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from
those of other undertakings, shall be capable of constituting a trademark. These signs, in particular words,
including personal names, letters, numerals, figurative elements and combinations of colours as well as any
combination of such signs, are capable of being represented graphically."

Characteristics of Trademark

1. Distinctiveness: Trademarks must possess distinctiveness, setting them apart from generic or descriptive
terms commonly used in the relevant industry. Distinctive marks are more likely to receive legal protection and
effectively represent the brand in the market.

2. Non-Functionality: Trademarks should not serve a functional purpose beyond distinguishing the goods or
services of one entity from another. Functionality may hinder trademark registration and enforcement.

3. Memorability: Memorable trademarks are easily recalled by consumers, contributing to brand recognition
and loyalty. Creative and unique marks tend to be more memorable, facilitating brand visibility and recall.

4. Descriptiveness: Descriptive marks directly describe the goods or services offered, making them less
distinctive and challenging to protect. Trademarks with suggestive, arbitrary, or fanciful elements are generally
preferred for stronger legal protection.
5. Durability: A trademark’s durability refers to its ability to withstand the test of time and remain relevant
amidst evolving market trends. Timeless and adaptable marks ensure long-term brand recognition and value.

6. Universality: Trademarks with universal appeal transcend geographic and cultural boundaries, enabling
businesses to expand their presence globally. Universal marks resonate with diverse audiences, fostering brand
consistency and acceptance worldwide.

7. Legality: Trademarks must comply with legal standards and regulations governing intellectual property
rights. Unlawful or infringing marks may face legal challenges, resulting in costly litigation and reputational
damage.

8. Adaptability: In today’s dynamic business landscape, trademarks should be adaptable to accommodate

changing market dynamics and consumer preferences. Agile marks allow businesses to pivot and innovate
while maintaining brand continuity.

9. Brand Alignment: Effective trademarks align with the brand’s values, messaging, and overall identity,
reinforcing brand positioning and differentiation. Consistency between the trademark and brand enhances
consumer trust and loyalty.

10. Protection: Trademarks offer legal protection against unauthorized use or imitation, safeguarding the
brand’s reputation and market share. Registered trademarks enjoy exclusive rights, empowering businesses to
take legal action against infringers.

Essentials of a Good Trademark

1. An ideal trade mark should be attractive to sound and appearance and suggest the quality of the product.
Most importantly an ideal trademark should be made in such a manner that it can be distinctive from
other trademarks of the same class and should be able to be registered and protected. The following are
the few attributes of a good trademark that should be considered before Trademark Registration.

2. A trademark must be a mark which includes a device, heading, brand, label, ticket, signature, word,
letter, name, numeral, packaging or combination of colors or any combination of the above attributes.
 3. It should be easy to speak and spell. A good trademark is such that the public can easily spell and speak.

4. It should be easy to remember. A good trademark that is easy to speak and spell can be easily
remembered as well. So that it becomes easy for public to

5. It should not be too lengthy and complicated to be forgotten easily. If it is lengthy or complicated,
people will not bother to take the effort to memorize it and ultimately it will be forgotten.

6. It must be distinctive. It can be natural distinctiveness or acquired distinctiveness.

7. The best trademarks are invented words or coined words or unique geometrical designs

8. It can only be suggestive of the quality of the products, but not descriptive

9. A good trademark should not be barred under the Trade Marks Act under the Prohibited classes of
trademarks

Ultimately a trademark should be easy to remember whether it is a word, or any other feature like color
combination, labels, etc. It should not be too lengthy and complicated to be forgotten easily. It can only be
suggestive of the quality of the products, but not descriptive; as it is against the law to include words like pure,
excellent, best, perfect, etc. A good trademark should not be barred under the Trade Marks Act under the
Prohibited classes of trademarks.

Functions of Trademark

The following functions are performed by a trademark:

1. Firstly, a trademark indicates the source or origin of the goods, products, or services. In this case, it is
presumed that any particular good can have only one origin.

2. It assures the quality of the goods bearing the trademark to the consumers.
 3. Apart from the quality which is related to the goodwill of the product, the trademark also creates brand
awareness and serves the marketing purposes and advertising aspects. In other words, companies put a
great amount of resources into developing any product, marketing it to customers, providing customer
support and backing up their products with warranties. Trademark assures that the effort to serve the
consumers pays back.

4. Provides legal protection and guards against counterfeiting and fraud of a particular brand.

5. Finally, trademarks are used to differentiate the product from others. This is the distinguishing factor
that falls under distinctiveness. The idea is that trademarks would distinguish marketed goods and
services from those of competitors.

Term of Trademark

1. Initial Duration: A registered trademark in India lasts for 10 years from the date of registration.

2. Renewal Periods: After the initial 10 years, it can be renewed indefinitely in additional 10-year periods.

3. Use Requirement: The trademark must be actively used in commerce to avoid potential cancellation
due to non-use.

4. Renewal Filing: The renewal request can be filed six months before the expiry of the trademark's 10-
year term.

5. Grace Period: Even after expiration, there is a six-month grace period for late renewal, subject to an
additional fee. After that, restoration might be needed.

TRADEMARK, MEANING AND KINDS

Meaning: It is a mark that efficiently helps us to identify a product by distinguishing it from other goods and
services belonging to the same class. It helps to identify the product when there is competition in the market. As
per Section 2(zb) of the Trademark Act, 1999 a trademark means a mark capable of graphical representation
and which is capable of distinguishing goods and services owned by one person from those of others in the
market and includes the shape of goods, the combination of colours and their packaging. The primary function
of the trademark is to stand out from the other brands belonging to the same class of goods and services and
hence a mark that is distinctive is the best kind of trademark.

A trademark gives protection for a symbol, word, phrase, design, logo or combination of all of them. It gives an
identity to a product that represents a source of goods or services. A trademark in India is protected under the
Trademark Act, 1999 and common law. As per the trademark Act, it is not mandatory to register your
trademark. However, a trademark once registered shall provide legal rights and protection to its owner for 10
years, and such a period shall be extended upon renewal. The benefits of a trademark include ease to market,
creating a distinct identity and being a source identifier.

Types of trademarks

Product mark: It is a mark used for products or goods but not on services. Product mark is used to identify the
provider, the reputation and the origin of the product. Applications for a trademark filed under class 1-34 The
Fourth Schedule To Trade Marks Rules, 2002 are generally termed as product marks.

Service mark: It is similar to a product mark, but it is specifically used to identify a service and not a product.
Applications for a trademark filed under class 35-45 The Fourth Schedule To Trade Marks Rules, 2002 can be
termed as a service mark.

Word mark Typically, a trademark is filed under a wordmark or a device mark. In a wordmark, only a word or
text is used to denote a trademark, without any stylization or additional artistic elements. This type of
registration gives the broadest legal protection to a trademark because it allows the owner to use such a
wordmark in all styles, forms and representations. A few examples of registered work marks are LITTLE
HEARTS, COCA-COLA

Device mark: A device mark usually has an artistic element such as symbols, or an artistic or pictorial
depiction in addition to the element of the wordmark. It generally comprises a wordmark along with multiple
artistic elements. Such elements present in a device mark can be a combination of trademarkable and non-
trademarkable features. Such a type of mark grants protection over the composite mark which is being
registered but not the individual elements. Interestingly, a device mark when registered in colour is limited in
protection to the colour combination in which it gets registered. However, a registered device mark that is black
and white in colour gives broader protection wherein the owner can claim protection for colours for such a
device registration.

Certificate trademarks: These marks are typically used by the owner in order to certify the origin, material,
quality, mode of manufacture or performance of services and other characteristics of goods or services to which
they are applied. Some examples of certified marks include the ISI Mark which is issued by the Bureau of
Indian Standards (BIS), AGMARK which is issued by the Director of Marketing and Inspection of the
Government of India.

Collective trademarks: This trademark is different from the ones we have studied above. This type of mark is
typically used by an organisation or association of members in order to distinguish the goods or services of the
members from those who are non-members. A very common example of this type of trademark is the CA mark
which can only be used by registered members of the Institute of Chartered Accountants.

Series trademarks: When an owner owns several trademarks in relation to the same or similar goods, wherein
all trademarks seem to possess a material resemblance to each other and are different in respect of non-
distinctive character, such trademarks may be registered as series trademarks.

Unconventional trademarks: Above were the trademarks that are generally registered. Now let’s understand
some of the unconventional trademarks.

Colour trademark: Since the definition of a trademark under the Trademark Act, 1999 includes the words
‘combination of colours’ they are protected as a trademark. However, such a combination of colours to get
registered as a colour mark must be unique, distinctive and must identify the product and its source. A simple
combination of red and yellow to indicate orange will not be considered distinctive. The colour to get registered
under this type of trademark must be extremely distinct and must be recognisable by its consumers.
Sound trademarks : Graphical representation is an essential element in trademark registration and this applies
to sound marks as well. To register a sound under the trademark, it must be in such a form that it is distinctive
and identifiable by the consumer. Certain categories of sounds are specifically excluded from being registered
as a sound mark as per the TM Manual. They are as follows:

 Songs used as chimes,

 Simple pieces of music consisting 1 or 2 notes,

 Nursery rhymes of children,

 Music that is strongly associated with a particular region,

 Popular music.

Shape trademarks: As per the definition of Trademark under the Trademark Act, 1999 the term ‘shapes of
goods’ are used. So, under the Trademark Act, 1999 protection is granted to shape marks as well. However, a
limitation is provided under Section 9(3) of the Act, wherein it expressly excludes registration of a trademark
which consists only of:

 Shapes that result from the nature of the goods itself.

 Shapes which are necessary to obtain a technical result.

 Shapes which add substantial value to the goods.

Additionally, when such an application is made, it should be in relation to the goods and not in relation to the
container of the goods.

Smell trademarks : A few trademarks registered under this type have been granted registration internationally.
However, in India, for a mark to qualify as a trademark, it must be capable of being graphically represented.
Such a representation should be recognised and identifiable by the public. Additionally, a smell that is
functional cannot be granted registration.
Apart from the same, a smell that is either functional or descriptive also cannot be granted registration. For
example, a perfume with an added nail polish remover to mask the chemical odour can qualify as a functional
smell. A smell that is the natural result of a combination of the ingredients can also not be protected as a
trademark. If an application for a trademark under this type is able to pass these tests and prove its
distinctiveness, then it can be registered as a trademark.

Importance of types of trademarks

Before making an application for a trademark, it is important to understand the difference between each type of
trademark. Firstly, a mark should not be generic, it must be unique and distinctive in order to seek legal
protection under the Trademark Act, 1999. The distinctiveness of a trademark is extremely important because it
gives identity to the product. Prior to the regulation of the laws with respect to trademarks, there was a lot of
ambiguity and confusion in the market. It was difficult to attain brand loyalty from the public since they were
not able to immediately identify the provider of the goods or services.

Conclusion: It is important to understand the kind of protection each type of trademark grants to the owner
before he gets it registered. The reason is that all of them have specific elements and essentials involved.
Trademark is an important tool that an owner can use to monetize his trademark as well as his product.
Trademark also acts as a shield that protects the rights of the registered trademark owner from the other
competitors in the market. And lastly, a trademark acts as a weapon wherein the owner can use the rights
granted to him and take legal action against those who infringe his trademark. Therefore, one must pay utmost
importance to a trademark and its types before its registration.
Assignment and transmission of Trademark

Assignment and transmission of trademarks involve transferring ownership rights from one party to another.
The Trademark Act provides guidelines and conditions for such assignments and transmissions, distinguishing
between assignments with or without the goodwill and specifying requirements for registration and
documentation.

Meaning of Assignment and Transmission of Trademark

Assignment and transmission of a trademark involve transferring ownership rights from one party to another.
Assignment is a voluntary, complete transfer, where the assignee gains full control of the trademark, while the
assignor relinquishes all rights.

Transmission, on the other hand, typically occurs due to legal processes like inheritance, bankruptcy, or court
orders, where ownership passes involuntarily.

Both registered and unregistered trademarks can be transferred through either method. Registered trademarks
offer statutory protection, while unregistered marks may still have some common law protection based on usage
and recognition.

Types of Assignment and Transmission of Trademark:

1. Complete Assignment: Transfers all rights associated with the trademark to another party, including the right
to further transfer, use, and receive royalties. The new owner has full control over its usage without needing
approval from the original owner.

2. Partial Assignment: Restricts the transfer to specific goods or services. The original owner retains rights over
other products or services.

3. Assignment with Goodwill: Transfers the trademark along with its associated business value and reputation,
allowing the new owner to use it for existing and future products.

4. Assignment without Goodwill: Transfers the trademark but restricts its use to purposes different from the
original products or services associated with it.

Conditions for assignment and transmission as given in section 42 : Section 42 of the Trademark Act
specifies conditions for the assignment and transmission of a trademark without goodwill. In such cases, the
assignment will only be effective if the assignee applies to the Registrar for directions on how the assignment
should be advertised. The assignment must be advertised within the timeframe set by the Registrar, typically
within six months from the assignment date, with a possible extension of three months if allowed.
If the assignment includes the goodwill of the business for specific goods or services, it is not considered an
assignment without goodwill. Assignments involving goods for export or services used outside India, including
goodwill, are also permissible.

Restrictions on Assignment of Trademarks: The Trademark Act imposes certain restrictions on the
assignment and transmission of trademarks to prevent confusion among users or the general public. These
restrictions include

1. Restriction on assignment or transmission that would create multiple exclusive rights.

2. Restriction on assignment or transmission that would create exclusive rights in different parts of India.

Process of Assignment and Transmission of Trademark (Section 45):

1. Application: Submit Form TM-P to the Registrar of Trademarks, along with certified original documents.

2. Review: The Registrar reviews the application and provides a decision within three months. Additional proof
may be requested if needed.

3. Entry in the Register: If approved, the assignment is entered in the register, detailing the assignee’s
information, assignment date, rights transferred, and the date of registration.

4. Dispute Handling: In case of disputes, the Registrar may refuse registration until the issue is resolved.

Assignment and Transmission of Registered Trademark (Section 38): A registered trademark can be
assigned or transmitted with or without goodwill. This may apply to all goods/services covered by the
trademark or specific ones.

Assignment and Transmission of Unregistered Trademarks (Section 39): Unregistered trademarks can also
be assigned or transmitted, with or without goodwill.

Benefits of Assignment and Transmission of Trademark:

Business Expansion: Allows the trademark to be used in multiple locations or by multiple assignees.

Established Brand: Assignees benefit from a brand’s existing market presence, avoiding the effort of creating
a new brand.

Legal Proof: Provides clear legal documentation of rights and liabilities.

Monetary Benefits: Trademark owners gain financial benefits from assignments or transmissions and increase
brand value through broader use.

Case Laws:

1. Structural Waterproofing and ORS v. Amit Gupta ORS: The court ruled that a registrar could refuse to
register an assignment during a dispute and clarified that a change in the registered proprietor’s name does not
render a trademark invalid.

2. Cinni Foundation v. Raj Kumar Shah and Sons: The court ruled that an assignee gains no rights to a
trademark without registering the assignment deed, dismissing the defendant’s claim.

Difference between Assignment and Transmission of a Trademark:

Assignment: Ownership of the trademark is completely transferred to another party, who then holds full rights
to its use.

Transmission: The original owner retains ownership but grants limited rights to a third party to use the
trademark.

For example, if X assigns the trademark "œ" to Y, Y gains full ownership. If X transmits the trademark, X
remains the owner but allows Y limited use of the trademark.

Conclusion
The assignment and transmission of trademarks are crucial processes that allow businesses to transfer
ownership or usage rights, with or without the goodwill of the business. They help in business expansion,
leveraging established brands, and provide legal protection through proper registration. Section 45 outlines the
procedure, while sections 38 and 39 cover the assignment of registered and unregistered trademarks. Proper
documentation and adherence to legal requirements ensure valid and enforceable assignments, as seen in key
case rulings emphasizing the importance of registration.

Meaning
• Copyright is a type of
intellectual property
right. Authors who have
original works such as
works of literature
(including computer
programs, tables,
collections, computer
datasets, expressed in
words,
codes, schemes, or in
any other context, along
with a device readable
medium), dramatic,
musical, and artistic
works, cinematographic
films, and audio
recordings are all
awarded copyright
safeguards
under Indian law.
•Instead of protecting
the ideas themselves,
Copyright Law
safeguards
manifestations of ideas.
Literary works, theatrical
works, musical
works, creative works,
cinematographic films,
and sound recordings
all have copyright
protection under Section
13 of the Copyright Act
of
1957. For instance, the
Act protects literary
works such as books and
computer programs.
• The term “copyright”
refers to a collection of
exclusive rights
that Section 14 of the Act
grants to the owner of
the copyright. Only
the copyright owner or
another person who has
permission to do so
from the copyright owner
may exercise these
rights.
• These rights include
the ability to adapt,
reproduce, publish,
translate, and
communicate with the
public, among other
things.
Copyright registration
just establishes an entry
for the work in the
Copyright Register kept
by the Registrar of
Copyrights and does not
grant any rights
Meaning
• Copyright is a type of
intellectual property
right. Authors who have
original works such as
works of literature
(including computer
programs, tables,
collections, computer
datasets, expressed in
words,
codes, schemes, or in
any other context, along
with a device readable
medium), dramatic,
musical, and artistic
works, cinematographic
films, and audio
recordings are all
awarded copyright
safeguards
under Indian law.
•Instead of protecting
the ideas themselves,
Copyright Law
safeguards
manifestations of ideas.
Literary works, theatrical
works, musical
works, creative works,
cinematographic films,
and sound recordings
all have copyright
protection under Section
13 of the Copyright Act
of
1957. For instance, the
Act protects literary
works such as books and
computer programs.
• The term “copyright”
refers to a collection of
exclusive rights
that Section 14 of the Act
grants to the owner of
the copyright. Only
the copyright owner or
another person who has
permission to do so
from the copyright owner
may exercise these
rights.
• These rights include
the ability to adapt,
reproduce, publish,
translate, and
communicate with the
public, among other
things.
Copyright registration
just establishes an entry
for the work in the
Copyright Register kept
by the Registrar of
Copyrights and does not
grant any rights
Meaning
• Copyright is a type of
intellectual property
right. Authors who have
original works such as
works of literature
(including computer
programs, tables,
collections, computer
datasets, expressed in
words,
codes, schemes, or in
any other context, along
with a device readable
medium), dramatic,
musical, and artistic
works, cinematographic
films, and audio
recordings are all
awarded copyright
safeguards
under Indian law.
•Instead of protecting
the ideas themselves,
Copyright Law
safeguards
manifestations of ideas.
Literary works, theatrical
works, musical
works, creative works,
cinematographic films,
and sound recordings
all have copyright
protection under Section
13 of the Copyright Act
of
1957. For instance, the
Act protects literary
works such as books and
computer programs.
• The term “copyright”
refers to a collection of
exclusive rights
that Section 14 of the Act
grants to the owner of
the copyright. Only
the copyright owner or
another person who has
permission to do so
from the copyright owner
may exercise these
rights.
• These rights include
the ability to adapt,
reproduce, publish,
translate, and
communicate with the
public, among other
things.
Copyright registration
just establishes an entry
for the work in the
Copyright Register kept
by the Registrar of
Copyrights and does not
grant any rights
Meaning
• Copyright is a type of
intellectual property
right. Authors who have
original works such as
works of literature
(including computer
programs, tables,
collections, computer
datasets, expressed in
words,
codes, schemes, or in
any other context, along
with a device readable
medium), dramatic,
musical, and artistic
works, cinematographic
films, and audio
recordings are all
awarded copyright
safeguards
under Indian law.
•Instead of protecting
the ideas themselves,
Copyright Law
safeguards
manifestations of ideas.
Literary works, theatrical
works, musical
works, creative works,
cinematographic films,
and sound recordings
all have copyright
protection under Section
13 of the Copyright Act
of
1957. For instance, the
Act protects literary
works such as books and
computer programs.
• The term “copyright”
refers to a collection of
exclusive rights
that Section 14 of the Act
grants to the owner of
the copyright. Only
the copyright owner or
another person who has
permission to do so
from the copyright owner
may exercise these
rights.
• These rights include
the ability to adapt,
reproduce, publish,
translate, and
communicate with the
public, among other
things.
Copyright registration
just establishes an entry
for the work in the
Copyright Register kept
by the Registrar of
Copyrights and does not
grant any rights
UNIT-4

Definition : The word ‘copyright’ is derived from the expression ‘copier of words’ first used in the context,
according to Oxford Dictionary, in 1586. Word ‘copy’ according to Black’s Law Dictionary means ‘transcript,
imitation, reproduction of an original writing, painting, instrument or the like” Copy right according to Black’s
Law Dictionary is the right in literary property as recognized and sanctioned by positive law.

An intangible incorporeal right granted to the author or originator of certain literary or artistic production
whereby he is invested for a specific period with the sole and exclusive privilege of multiplying copies of the
same and publishing and selling them”. Copyright as defined in the Oxford English Dictionary is an exclusive
right given by law for a certain term of years to an author, composer etc.,(or his assignee) to print, publish and
sell copies of his original work’.

Nature and scope of Copyright: The law does not permit one to appropriate to himself what has been
produced by the labour, skill and capital of another. This is the very foundation of copyright law. The object of
the copyright law is to protect the author of the copyright work from an unlawful reproduction or exploitation of
his work by others.

The exploitation is done by entrepreneurs like publishers, film producers etc., to whom the owner of copyright
assigns or licenses the particular rights. If the entrepreneur is to recover the capital invested and earn profits he
has to be protected from unauthorized reproduction.
Otherwise a pirate would reproduce the work at a fraction of the original cost of production and undersell the
producer. In ancient times copying was a laborious and expensive process.The importance of copyright
protection was recognized only after the invention of the printing. Press in the 15th century which enabled
reproduction of books in larger numbers practicable.

Copyright is a creation of the statute. No person is entitled to copyright or any similar right in any work except
those provided under the copyright act. It is a negative right where the author of the original work is protected
from the unauthorized reproduction or exploitation of his work. This right also extends to prevent others, from
exercising without authority any other form of right attached to copyright.Example: In the case of literary work
the scope of copyright extends to the making of a dramatic or cinematographic version of the literary work.
Copyright is a multiple right consisting of a bundle of different rights in the same work.

There is no copyright in ideas. Copyright subsists only in the material form in which the ideas are expressed.
Thus it is not an infringement of copyright to adopt the ideas of another. Also there is nothing in the notion of
copyright to prevent another person from providing an identical result (and himself enjoying a copyright in that
work) provided it is arrived at through on independent process. There is no copyright in ideas. Copyright
subsists only in the material form to which the ideas are translated. In the field of literary work the words
chosen by the author to express his ideas are peculiar to himself and no two descriptions of the same idea or fact
can be in the same words, just as no two answers written by two different individuals to the same question can
be the same. The order and arrangement of each man’s words is as singular as his countenance. It is the form in
which a particular idea, which is translated that is, protected. The above ratio was said down in Jaffroys v.
Boorey (1854)

In order to secure copyright protection what is required is that the author must have bestowed upon the work
“sufficient judgement, skill and labour or capital”. It is immaterial whether the work is wise or foolish, accurate
or inaccurate, or whether it has or has not any literary merit as laid down in Walter v. Lane (1990)

There is no copyright in live events. No license is required to transmit programmes of sporting events and news
events. This is subject to the special rights conferred on performers. Copyright protection in however not
granted where the work is grossly immoral, illegal, defamatory, seditious, irreligious or contrary to public
policy or calculated to deceive the public.
Definition of Copyright: The statutory definition of copyright is as follows:

Copyright means the exclusive right to do or authorize others to do certain acts in relation to:

1) Literary, dramatic and musical works

2) Artistic works

3) Cinematograph film and

4) Sound recordings.

The various acts for which copyright extends is listed in section 14 of the Act. Copyright does not extend to any
right beyond the scope of section 14. The exclusive right for doing the respective acts extends not only to the
whole of the work but to any substantial part thereof or to any translation or adaptation thereof, where
applicable.

Characteristics of Copyright:

a) Creation of a statute: Copyright is creation of a specific statute under the present law. There is no such
thing as common law copyright.

b) Form of intellectual property: A copyright is a form of intellectual property since the product over which
the right is granted is the result of utilization and investment of intellect.

c) Monopoly right: Copyright is a monopoly right restraining the others from exercising that right which has
been conferred on the owner of copyright under the provisions of the Act.

d) Negative right: Copyright is a negative right meaning thereby that it is prohibitory in nature. It is a right to
prevent others from copying or reproducing the work.

e) Multiple rights: Copyright is not a single right. It consists of a bundle of different rights in the same work.
For instance, in case of a literary work copyright comprises the right of eproduction in hard back and paper back
editions, the right of dramatic and cinematographic versions etc.,
f) Neighbouring rights: Copyright consists not merely of the right to reproduction. It also consists of the right
to works derived from the original works rights like the right of public performance, or the broadcasting rights.
Such related rights are termed neighbouring rights.

Subject matter of Copyright : All subject matters protected by copyright are called protected works. Thus,
according to Section 13 of the Copyright Act 1957, it may be subjected for the following works: Original
Musical work, Original Literary Work, Original Dramatic work, Cinematography films, Original Artistic work
and Sound recordings.

Original Musical work – Musical work was defined as “a work consisting of music and includes any graphical
notation of such work but does not include any work or any action intended to be sung, spoken or performed
with the music”. In 2012 Amendment, there was a grant of statutory license for cover versions.A song typically
contains both literary and musical work. Therefore, the tune and lyrics together forms the song. Lyric of a song
is the literary part and it is protected as a literary work and the writer of the lyrics is the author of the work.
Music accompanying the song is treated as a musical work and the author of the musical work is the composer
of the musical work. So, in the song there can be two rights that are set of rights in the literary work and rights
in the musical work and they are owned by different people. The author of this right is different people.

Original literary work – Literary work refers to works that are in writing. The Act does not classify literary
work, but we understand that as work that are captured in writing. The act says that literary work includes
computer programmes, tables, and compilations including computer databases. The literary work need not have
any literary merit and it is not the job of the courts to look into the literary merit of copyright work.

So, courts have found that football fixture lists, mathematical tables, tombola tickets, etc. are capable of
copyright protection. The number of words in a copyrighted material is not an indicator of quality and the
author of copyrighted work is the author who makes the work or who creates the work. There are certain things
that cannot be protected under a copyright. For instance, phrases, names, invented words and slogans cannot
form a part of copyright protections. The names especially used in commerce or in trade are protected by
trademarks and invented work and slogans, for example the slogan which Pepsi used a while ago “Yeh Dill
Mange more”, which is an advertising slogan was held something that can not protected under the copyright
Act.
Secondary or derivative works can also be protected. They can be prospected only if, it involves the right kind
of labor, it should be of such a nature that the effort brings a material change in the work. Therefore, the work
should get changed based on the effort that change should be of the right kind and the prior work should be
different from the secondary work. When the author assigns the copyright to another person, the new work will
be entitled to a copyright as well. Adaptations and abridgment of existing works can have a copyright;
translations can also be entitled to a copyright. Compilations and collective works can have copyrights. A
copyright can subsist in the individual item as well as in the collection as a whole. For computer programs the
source code can be protected as a literary work.

Original dramatic work – It defined as “including any piece of recitation, choreographic work or
entertainment in dumb show, the scenic arrangement or acting, form of which is fixed in writing or otherwise
but does not include a cinematograph film”. The terms literary and dramatic are used together and the principle
applicable to literary work will be applicable to dramatic work as well. The author of a dramatic work is the
person who authors the work.

Cinematography films – It means any work of visual recording and includes a sound recording accompanying
such visual recording and sound recording accompanying such visual recording and “cinematograph” shall be
construed as including any work produced by any process analogous to cinematography including video films.
The author of cinematography films is the producer of the films.

Original artistic work – An artistic work as mentioned in the Act, a painting, a sculpture, a drawing includes a
diagram, map, chart or plan, an engraving or a photograph, and whether or not any such work possesses artistic
quality. A work of architecture is included as an artistic work and any work of artistic craftsmanship can also
come under the ambit of an artistic work. The author of an artistic work is the artist of the artistic work other
than photograph. The photograph is a person who takes the photograph, who is regarded as the author. Recently
there was an issue with regard to a selfie taken by a monkey. The Court has held that, the person has to be a
human being and so far intellectual property rights have only covered Intellectual work of humans.

Sound recordings – It means a recording of sound from which such sounds may be produced regardless of the
medium on which such recording is made or the method by which the sounds are produced. The author of sound
recording is the producer of the sound recording. The sound recording may involve musicians, it may involve
singers, but the author is the producer.

The term of copyright varies depending on the kind of work that is protected. Literary, musical, dramatic and
artistic works are protected for the life of the author and after the death for a period of 60 years. For posthumous
work published after the death of the author. It is 60 years from the time the work is first published.Therefore,
cinematograph films sound recording, government works, works of international organizations all are
prospected for 60 years from the work first published.

Here the ownership in copyright may vest in different persons under different circumstances. Like of a work is
created by an employee in the course of his or her employment, the employer owns the copyright. If the work is
created by an independent contractor and the independent contractor signs a written agreement stating that the
work shall be “made for hire,” the commission person or organization owns the copyright only if the work is a
part of the larger literary work, such as an article in a magazine or a poem or story in anthology; part of a
motion picture or other audiovisual work, such as screenplay, a translation, a supplementary work, such as an
afterword, an introduction, chart, editorial note, bibliography, appendix or index; a compilation; an instructional
text; a test or answer material for a test; or an atlas. Works that do not fall within one of these eight
classifications constitute works made for hire only if created by an employee within the scope of his or her
employment. If the creator has sold the entire copyright, the purchasing business or person becomes the
copyright owner.

Eastern Book company v/s Navin J. desai 2001The question involved was whether there is any copyright in
the reporting of the judgment of a court. The Delhi High court held that it is not denied that under section 2(k)
of the Copyright Act, a work which is made or published under the direction or control of any Court, tribunal or
other judicial authority in India is a Government work. Under section 52(q), the reproduction or publication of
any judgment or order of a court, tribunal or other judicial authority shall not constitute infringement of
copyright of the government in these works. It is thus clear that it is open to everybody to reproduce and publish
the government work including the judgment/ order of a court. However, in case, a person by extensive reading,
careful study and comparison and with the exercise of taste and judgment has made certain comments about
judgment or has written a commentary thereon, may be such a comment and commentary is entitled to
protection under the Copyright Act. The court further observed: In terms of section 52(1)(q) of the Act,
reproduction of a judgment of the court is an exception to the infringement of the Copyright. The orders and
judgments of the court are in the public domain and anyone can publish them. Not only that being a
Government work, no-copyright exists in these orders and judgments. No one can claim copyright in these
judgments and orders of the court merely on the ground that he had first published them in his book. Changes
consisting of elimination, changes of spelling, elimination or addition of quotations and corrections of
typographical mistakes are trivial and hence no copyright exists therein.

Godrej Soaps (P) Ltd v/s Dora Cosmetics Co. 2001

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 favor;
the plaintiff is the assignee and the legal owner of copyright in the carton including the logo.
 Determination of ownership & Rights of Owner

The principle of ‘ownership of copyrights’ would be the very first instance where the essence of a copyright
begins, which is a statutory right, vested on the person who owns the copyright. A key variation should be
clearly understood by the readers on the difference between ‘ownership’ and ‘authorship’ of copyrights, since
both the terms sounds similar like ‘ownership’ and ‘possession’.

Section 17 of the Copyright Act, 1957 (hereinafter referred as ‘the principal Act’), has categorically mentioned
and clarified the difference among the two terms which has laid down the essential conditions to acquire the
position of ownership to whom the copyright belongs and has provided what constitutes the first ownership of
the copyright. All the works that has been initiated and governed by a person would not constitute a right of
ownership which has been made understood through a landmark judgment ofEastern Book Co. v Navin J
Desai AIR 2001 where an issue has been raised with regards to the ownership of copyright on Government
works. The Court held that the reproduction of any order or judgment delivered by the Court or judicial
authority would not make up an act of infringement and are open to the public to reproduce and publish the
same.

Section 17 of the Copyright Act, 1957:

The conditions that are ought to be specifically kept in mind while interpreting the state of ownership has been
provided statutorily under Section 17 of the principal Act are discussed as follows –

 For literary, dramatic or artistic works – The author who creates them would be the first owner;

 Works performed under contractual service as an employment – ownership lies upon the employer;

 In case of photographs shot for cinematographic films – ownership lies at whose instance it has been
taken;

 Works done under a value of consideration – ownership lies on the person who pays for such work;

 For a speech delivered at public – ownership lies on who delivers such speech;
  If a speech is made on behalf of another person – the person who assigned the work to deliver such
speech would be the owner of the same;

 Works published or orders passed by the Government or any organization – ownership lies on the
Government or the organization which has published it.

Rights of the owner of a Copyright: In order to exercise and enjoy the position of ownership of the
copyrighted work, certain rights have been conferred to the owner in terms of morality and on monetary
benefits by the copyright Act, 1957, and are also recognized by International conventions like TRIPS and
Berne.

Economic rights of a Copyright Owner – Any right that yields or payoffs the owner monetarily are said to be
the economic rights. The economic right of the owner are been listed out in Section 14 of the principal Act,
under the meaning of copyright.

Right to reproduce the work : Reproduction is an act of copying from the previously finished works or giving
it a differential form by adding, editing or modifying the same. In short in means the right to copy. Such right
shall exclusively be exercised by the owner of the work and shall not be infringed by any other person since the
act of reproduction of the work may economically make benefits to its owner. Be it a book which has been
published or a compact disc that has been recorded and manufactured, right of reproduction of copyrighted
works are the basis to protect a work from the act of exploitation. The concept of substantial and material
copying has also been enclosed within the reproductive right. In regards to the violation of copyright of the
owner, it is not necessary to copy the entire subject matter of the work to held responsible for such infringement
and a part of the reproduction of a particular work would be enough for the infringement of the same.

Right to distribute in market : Similar to the right of reproduction, the owner of the copyrighted work also has
a right to distribute in the market and make money out of it. The act of distribution may be in the form of sale,
lending for free or for a consideration, rental, or free distribution by the way of gift. The right of distribution
differs from case to case and shall not be exercised in a similar manner at each instance. If the work that has
been sold is a book, the rule of exhaustion shall be applied. Wherein the right to distribute the book will be
exhausted and ceases to exist after the first sale of it and the buyer of the book will be further entitled to resale it
as a second hand material. Whereas this condition is not the same in case if the owner of copyright set ups a
library and charges rental fee to read the books available there and the law does not prohibit to do so also the
rule of exhaustion will not come to play.

Right to communicate to the public : It means letting or making the product/work available to the public by
way of broadcasting, simulcasting or webcasting. If a person not being the owner of the work, communicates it
to the public would amount to the act of infringement. In Indian performing right society Ltd. V Aditya
Pandey, the Delhi High Court held that “the defendant is accordingly restrained from communicating any of
such works to the public, or performing them, in the public, without such appropriate authorization, or
licensing”. 2011

Right of adaptation : Conversion, alteration, transcription or rearranging a copyrighted work means and
includes the right of adaptation. These rights are exclusively available only to musical, literary or dramatical
works and are not extended to the computer programmes. Although the right of adaptation are being protected
by the statute, it is also been governed by the principles laid down under a classical case, by the Privy Counsel,
in Macmillan and Company Ltd. V K. and J. Cooper 1924. The defendants were alleged on infringing the book
published by the plaintiff and the nature of the book which was previously published by the Plaintiff was put to
test and was figured out thework was made out of a non – copyrighted source, such that the Plaintiffs book
lacked its nature of originality and held that the defendants are not guilty of infringement. The principle
employed here is that, although a work has been adapted from such source it must possess a quality of
originality to an extent.

Right to translate : The owner of the copyrighted work has a right to translate his work to any other languages
he wants.

In Academy of General Edu., Manipal & ANR. Vs. B. Malini Mallya[2009] – petition was filed by the
plaintiff, alleging on the use of his idea without authorization. The Court held that “mere adaption of an idea
would not amount the act of infringement and there must be a substantial copy of work to attain the same.

Moral rights of a Copyright Owner: A moral right would stand a step ahead of an economic right in which it
is based on the dignity, uniqueness and the reputation that a work has gained and maintained. It has been well
illustrated in the case ofAmarnath Sehgal v Union of India 2005,the plaintiff’s masterpiece was damaged by
the defendant by which it lost its aesthetic and market value. A mandatory injunction was passed by the court in
addition of fine amount of 50 lacs as the cost of damage.

The moral rights of the copyright owner has been provided under Section 57 of the principal Act that
encompasses three basic moral rights.

i. Right of paternity;

ii. Right of integrity; and

iii. Right to retraction.

Right of paternity : The right of an owner of copyright to claim and prevent others to claim the ownership of
his copyrighted work is said to be a right of paternity.Sholay Media Entertainment and Pvt. Ltd. V Parag M.
Sanghavi 2015 was a landmark judgement delivered on the Right of paternity of the copyright owner, where the
court granted protection to the title of the movie which made the defendant to replace his’ movie title
completely by refraining the use of the name which causes damage to the cult of the name “Sholay” since it was
deceptively similar with the same.

Right of integrity : The right of the owner of the copyright to protect the reputation of his own work from
exploitation is the right of integrity. Sajeev Pillai v. Venu Kunnapalli & ors 2019., the respondent was alleged
on the act of pre – release publicity of the movie which was yet to be released without ant authorized
permission. The court granted relief to the aggrieved petitioner by restraining the respondent to carry on such
act which damages the exclusiveness and reputation of the movie.

Right to retraction : Retraction is an act of taking back the previous assertion made. The author at times may
feel to give up his own right as an act of honoring the dignity of his work which sounds like assassinating ones
own life for the sake of protecting the so far gained reputation. The principal Act, under section 57 grants the
author the right to withdraw from the publication of his work. In simple terms it means waiving of his granted
rights for the sake of protection of reputation or integrity.
In Amarnath Sehgal v Union of India2005, the court pointed out the right to retraction as to withdraw ones
own publication if the author feels the condition of his work is derogatory in nature and are advisable to do the
withdrawal of the same. This would be the author’s right to retraction.

Conclusion :

Hereby, it is to be concluded that the above made discussion on the concept of ownership of copyrights
positively implies the position of Indian legislature and the judiciary in making and interpreting the laws
respectively to its finest possible form. The rights conferred under the provisions has spelled out the
significance and importance given to acquire the title of ownership, especially by way of honoring the efforts
given in by an artist at various facets of his career in order to produce valuable outcome and their rights are
been protected both under the economic and moral aspect.
 Registration of Copy Right

Copyright is established the moment a work is created, and noformalities are necessary for its acquisition.
However, registering your copyright with the appropriate authorities offers many benefits. These include:

Legal Presumption of Ownership: Registration creates a legal presumption of ownership, making it easier to
assert your rights in cases of legal disputes. The certificate of copyright registration and the recorded entries
therein act as prima facie evidence in legal proceedings, particularly in disputes concerning copyright
ownership.

Public Notice: Registration puts the public on notice that your work is protected, deterring potential infringers.

Access to Legal Remedies: Registered works are eligible for statutory damages in cases of infringement,
providing more robust legal remedies.

International Protection: Registration with certain offices can facilitate protection in multiple countries
through international treaties.

Enhanced Market Value: A registered copyright can enhance the market value of your creative work, making
it more attractive to potential buyers, licensees, or collaborators who may see the formalised protection as a
valuable asset.

Registration of Copyright

Section 44 to 50A of the Copyright Act, 1957, deals with the provisions relating to the registration of copyright.

1. Creation of the work: The work must be in its final form before applying for copyright registration.
Considering our example, the book should be in its final form, whether published or unpublished.

2. Determine the type of work: Ensure that the work falls under the categories eligible for copyright protection,
such as literary works, artistic works, musical works, cinematographic films, sound recordings, etc. A book
shall fall under the category of “literary work.”
3. Online registration & filing of applications: Copyright registration needs to be done online through the e-
filing facility provided by the Copyright Office. After the work is ready, navigate to the official website of the
Copyright Office, viz., www.copyright.gov.in. Now, create an account and login.

* Fill out the application form: Complete the online application form. The form requires details about the work,
the author, the title of the work, a statement of particulars, and other relevant information.

* Upload Work: Upload a copy of the work to be registered. The format and requirements for the deposit may
vary depending on the type of work.

* Fee Payment: Pay the prescribed copyright registration fee. The fee can be paid online through the designated
payment modes.

* Submission of Hard Copy: After successful online submission, a hard copy of the application form, along
with the requisite documents, needs to be sent to the Copyright Office in New Delhi within 30 days of online
filing.

4. Copyright Journal: Once the application is submitted to the Registrar of Copyrights, the same shall be
published in the Copyright Journal, which is open for a period of 30 days, whereby objections from the public
may be filed against the claim of the author/applicant. If any such objection is filed by any person, the Registrar
of Copyrights shall hear both parties & decide whether or not to process the application further for registration.

5. Processing and Examination: The Registrar of Copyrights, if no objections are received or all objections are
rejected, will process the application further once the period of 30 days is over. The Registrar may issue
queries/objections or ask for any additional information from the author/applicant.

6. Issuance of Registration Certificate: Once the Registrar of Copyrights is completely satisfied, the application
is approved, and all formalities are considered completed. The Copyright Office shall enter the particulars of the
copyright in the Register of Copyrights and issue a certificate of registration of copyright. This entire process
may take several months or years, depending on the case, and it’s essential to keep track of the status of
application on the Copyright Office’s website.
Case Law

Sanjay Soya Private Ltd. v. Narayani Trading Company (2021) In this case, it was held by the Bombay
High Court that the registration of a copyright is not mandatory in India under the Copyright Act, 1957. The
Court took into consideration the Berne Convention and TRIPS agreement to come to this conclusion. The
Court took a literal rule of construction by understanding the language used in [105]Section 45(1) of the Act,
where the word “may” has been used, and hence, the Court held that it is not mandatory for a copyright to be
registered. It was further observed that under Section 51, infringement of copyright is not limited to registered
work.

Shree Venkatesh Films Pvt. Ltd. v. Vipul Amrutlal Shah and Ors (2009) In this case, the issue was regarding
the infringement of copyright on the film Namastey London (in Hindi), produced and directed by Vipul
Amrutlal & Ors., but Shree Venkatesh Films in 2009 produced an imitation of the original film and titled it
“Poran Jaye Joliya Rae” (in Bengali) and released it. The parties tried to negotiate the same, which was a
failure. After 10 days of the Bengali film’s release, a copyright infringement suit was filed by the
plaintiff/respondent. The Court held it an infringement under [107]Section 14(d)(i) of the Copyright Act, 1957,
and passed an injunction against exhibiting the film. On appeal, the High Court upheld the injunction against
exhibition of the film, holding it as an infringement of copyright, and stated that “copy” as per Section 14(d)(i)
of the Copyright Act, 1957, is not just limited to the duplication of the film but also includes the making of
another film that substantially resembles the original film. Here, the Calcutta High Court gave a broader view
of Section 14(d)(i) of the Act.

Conclusion: Copyright registration helps creators by giving them legal rights to their work. It stops others from
copying it without permission and helps you take legal action if needed. Knowing how to register your
copyright helps you protect your ideas and feel more secure about your creative work. It’s like adding a strong
lock to your creations, making sure they stay yours for a long time.
 Assignment & License of copyright

Introduction

Copyright is a protection given to the creators of certain types of works as an acknowledgment to their
intellectual input. The objective of copyright has always been the protection of the interest of a creator, coupled
with dissemination of knowledge. Though this protection started with the recognition of rights of authors in
their books, but modern technology has substantially changed the nature of work and its mode of exploitation.

Assignment of Copyrights: Section 18 of Copyrights Act

The owner of the copyright of a work has the right to assign his copyright to any other person. The effect of
assignment is that the assignee becomes entitled to all the rights related to the copyright to the assigned
work. However, mere grant of right to publish and sell the copyrighted work amounts to publishing right and
not assignment of copyright.

Where the assignee of a copyright becomes entitled to any right comprised in the copyright, he shall be treated
as the owner of the copyright in respect of those rights. The assignor shall also be treated as the owner of
copyright with respect to unassigned rights. The legal representatives of the assignee shall be entitled to the
benefits of assignment, if the assignee dies before the work comes into existence.

In Video Master v. Nishi Production 1998, the Bombay High Court considered the issue whether assignment of
video rights would include the right of satellite broadcast as well. The Court agreed with the contentions of
defendant that there were different modes of communication to the public such as terrestrial television
broadcasting (Doordarshan), satellite broadcasting and video TV. The owner of the film had separate copyright
in all those modes, and he could assign it to different persons. Thus, satellite broadcast copyright of film was a
separate right of the owner of the film and the video copyright assigned to the plaintiff would not include this.

Mode of Assignment: Section 18 of Copyrights Act

As per section 19, assignment of copyright is valid only if it is in writing and signed by the assignor or his duly
authorized agent. The assignment of a copyright in a work should identify the work and specify kind of rights
assigned and the duration and territorial extent of such assignment. Further, it should specify the amount of
royalty payable, if any, to the author or his legal heirs during the continuance of assignment and the assignment
will be subject to revision, extension or termination on terms mutually agreed upon by the parties.

If the period of assignment is not mentioned it will be deemed to be taken as five years from the date of
assignment. If the territorial extent of such assignment is not stipulated, it will be taken as applicable in whole
of India.

Also, Section 19(8) contemplates that the assignment of copyright work against the terms and conditions on
which rights have been assigned to a particular copyright society where the author of the work is a member
shall be void. Further, Section 19(9) and section 19(10) opine that the assignment of copyright for making
cinematograph film or sound recording shall not affect the right of the author to claim an equal share of the
royalties and consideration payable with respect to use of his protected work.

In Saregama India Ltd v. Suresh Jindal 2007, it was held that the owner of the copyright in a future work may
assign the copyright to any person either wholly or partially for the whole of the copyright or any part thereof
and once the assignment is made the assignee for the purpose of this Act is treated as the owner of the
copyright.

Licensing of Copyright

The owner of copyright may grant a license to do any of the act in respect of which he has an exclusive right to
do. The license can be classified into following categories:

Voluntary license: Section 18 of Copyrights Act

The author or the copyright owner has exclusive rights in his creative work and he alone has right to grant
license with respect to such work. According to section 30 of the Copyright Act 1957, the owner of the
copyright in a work may grant any interest in his copyright to any person by license in writing, which is to be
signed by him or by his duly authorised agent. A license can be granted not only in existing work but also in
respect of the future work, in this situation assignment shall come into force when such future work comes into
existence. Where a licensee of the copyright in a future work dies before such work comes into existence, his
legal representatives shall be entitled to the benefit of the license if there is no provision to contrary.
The mode of license is like an assignment deed, with necessary adaptations and modifications in section 19
(section 30A). Therefore, like an assignment, a license deed in relation to a work should comprise of following
particulars:

a. Duration of license

b. The rights which have been licensed

c. Territorial extent of the licensed

d. The quantum of royalty payable

e. Terms regarding revision

f. Extension and termination

Voluntary licenses can be:

Exclusive – The term exclusive license has been defined in Section 2(j) as a license which confers on the
licensee and persons authorized by him, to the exclusion of all other persons, any right comprised in the
copyright work.

Non-exclusive – It does not confer right of exclusion. It is mere grant of an authority to do a particular thing
which otherwise would have constituted an infringement. When owner grants an exclusive right, he denudes
himself of all rights and retains no claim on the economic rights so transferred.

Co-exclusive – Here the licensor grants a license to more than one licensee but agrees that it will only grant
licences to a limited group of other licensees.

Sole license – Where only the licensor and the licensee can use it to the exclusion of any other third party.

Implied license – Author impliedly allows or permits the use of his work. For example, he had knowledge that
someone is using his work but he did not take any action.

Compulsory Licenses
Compulsory and statutory licenses can impact both the identity of the licensee who the owner chooses to deal
with and the terms, including rates of royalty, that the owner may stipulate for such dealing. Viewed from this
perspective, compulsory licenses are less of an infraction on owner autonomy, on both these counts. The owner
does retain a fair bit of autonomy to enter into appropriate licensing arrangements with those who he may deem
fit, and he is also permitted to negotiate on the terms of the license within the zone of reasonableness. Normally,
it is an unreasonable refusal to deal with a person that gives rise to a compulsory license. This brings us to the
third important distinction between a compulsory and statutory license. The former is always granted upon
specific application by an individual to the competent authority. The latter, on the other hand, is a blanket
fixation of rates of royalty by the authority and a grant of standardised licenses to all those who are interested in
availing the same. The owner, as a necessary corollary, has no autonomy on the identity of those who obtain the
license, or what they pay as royalty for the same.

Categories of Compulsory Licenses

There are five main categories of compulsory licenses currently operating in India.

These are:

1. Licenses in respect of works unreasonably withheld from the public;

2. Licenses in respect of orphan works;

3. Licenses in respect of works for the differently abled;

4. Licenses in respect of translations;

5. Licenses in respect of reproduction and sale of works unavailable in India.

Statutory Licenses

As seen from the above discussion of compulsory licenses, such licenses can be understood as a particularised
expropriation of owner autonomy in respect of the copyrighted work. The need for such expropriation arises
only upon acts or inaction on the part of the owner that render the work unavailable to the public or differently
abled persons. Statutory licenses, on the other hand, do not require any examination into the conduct of the
owner. It attempts a wholesale expropriation of owner autonomy, once the work fits within the broader class of
works that can be so licensed.

There are two such categories of statutory licenses, namely cover version recording licenses (Section 31C) and
broadcasting licenses (Section 31D).

The first has existed, though as part of the fair dealing exceptions in Section 52, from the very beginning. The
second is a very recent addition to the Act vide the 2012 amendment.

Conclusion

The term ‘assignment’ and ‘license’ are not interchangeable. An assignment is different from a license.
Generally, in absence of any provision to the contrary the assignee becomes the owner of the assigned work,
whereas in case of a license the licensee gets the right to exercise particular rights only.

An assignment may be general, i.e. without limitation or an assignment may be subject to limitations. It may be
for the whole term of copyright or any part thereof. An assignment transfers an interest in and deals with
copyright itself as provided under section 14 of the Act, but license does not convey the copyright but only
grants a right to do something, which in absence of license would be unlawful. An assignment transfers title in
copyright, a license merely permits certain things to be done by licensee. The assignee being invested with the
title in the copyright may reassign
Special Rights of Broadcasting Organisation & Performers Right

The first Copyright Act, in India, was passed in the year 1914 which formed the base for the current governing
act, The Copyright Act of 1957 which has been amended several times since it’s formation as per the needs of
the market. The rights of the performers were not recognised by the legislature for about thirty-seven years. An
amendment act was bought in force in the year 1994 to protect the livelihood of the performers which was in
danger due to lack of recognition of their work by the laws and another reason being, advancement in
technology. This amendment of 1994 brought the rights of the performers in force under Section 38 of The
Copyright Act. Later on, in 2012, further another amendment was made to increase the rights provided to the
performers, being exclusive and moral rights under the Sections 38-A & 38-B, respectively, which have been
discussed in detail in the article later.

Performance & Performer: Performers are the artist who display their art before the audience with their own
skill set and knowledge.

“The term “performer” includes an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a
person delivering a lecture or any other person who makes a performance.”

A proviso was added in the Amendment Act, 2012 to the definition of the performer to include the performers
who play casual and incidental performance, known as “extras” so as to protect their moral rights.

The term performance means, the work performed by any performer covered under Section 2(qq) of the Act.
The term earlier included literary and artistic work only but later on it’s scope was broadened to include
dramatic and musical work, cinematograph films and the sound recordings.

Performance in relation to performer’s right means any visual or acoustic presentation made live by one or more
performers.”

Rights of The Performer’s under the Copyright Act: Where any performer appears or engages in any
performance, he shall have a special right to be known as the “performer’s right” in relation to such
performance.

Following are the rights currently available to the performers, in India, under The Copyright Act :
Exclusive Rights of The Performer – The amendment act has introduced affirmative performers right by
amending Section 38 which granted only negative rights by prohibiting acts in sub-section (3) and (4) which
have now been omitted and a new section 38-A has been inserted which provides the performer’s rights as the
exclusive rights to do or authorize doing any of the acts in respect of the performance, without prejudice to the
rights conferred on authors. Exclusive rights of the performers include the following rights :

To Make A Sound Recording or A Visual Recording of The Performance – The law permits the performer
to make a sound recording, visual recording, record his live performance as his exclusive right to his work. The
record will be granted the copyright under the law only when it does not includes any part which amounts to
infringement of any other work and has been recorded lawfully, as per the provisions of the act.

“The term “sound recording” here means a recording of sounds from which such sounds may be produced
regardless of the medium on which such recording is made or the method by which the sounds are produced.”4

“The term “visual recording” above means the recording in any medium, by any method including the storing of
it by any electronic means, of moving images or of the representations thereof, from which they can be
perceived, reproduced or communicated by any method.”

Reproduction of The Sound Recording or Visual Recording of The Performance –The Copyright Act not
only provides the performer with the right of recording his own performance but also provides him the
opportunity to reproduce his own performance. The law states, reproduction of it in any material form including
the storing of it in any medium by electronic or any other means.

Other than reproduction his own work, performer can also issue copies of his work to the general public,
keeping in mind that the copies that are being issued are not the ones that are already in circulation in the public.

Moreover, the performer also owes the right to sell his work or can even give either of his entire work or copy
of of his recording on commercial rent or can even offer the same for sale.

Right to Broadcast the Performance – Performer has been given the sole right to decide if he wants to
communicate his performance to the general public.
Performer can also choose to stop the broadcasting of his work, if the work been broadcasted is different from
the work for which his consent has been taken to broadcast. Moreover, if the broadcast is without the consent of
the performer, the broadcast will be considered illegal under the act.

However, the work that is being broadcast or communicated to the public must not include entire or any part of
the performance which has already been broadcasted by the performer or the broadcasting organisation.

Right to Royalty –Major amendment that has been brought to the rights of the performer through The
Amendment Act of 2012 was the idea of introducing the concept of royalties for the performer so as to protect
his livelihood and provide him the benefits for his work. As per the act, the performer shall be entitled for
royalties, in case he takes the decision of giving his performance or work for commercial use in any form.

It has also been provided that, if a performer once gives his consent, by the way of a written agreement, to
incorporate his performance in a cinematograph film, he cannot afterwards object the enjoyment by the
producer of the film of the performer’s right, in the same film, unless there exists a contract to the contrary.

Moral Rights of The Performer – Another major amendment made in the performer’s right by The
Amendment Act of 2012 was brought by the way of Section 38B, which replaced the earlier provisions under
the section 38(3) & 38(4). Section 38B states, even after the assignment of his right, may it be wholly or
partially, the performer still has the rights to the following under the Act :

(a) Right to claim to be identified as the performer of his performance unless where the omission has been
dictated by the manner of the use of the performance

(b) Right to restrain or claim damage in respect of any distortion, mutilation or other modification of his
performance that would be prejudicial to his reputation.

However, it has also been clarified in the same section that mere removal of any portion of a performance for
the purpose of editing, or to fit it within a limited duration, or any other modification required for purely
technical reasons shall not be deemed to be prejudicial to the performer’s reputation.

Right to The Performance–The act not only provides with the copyright and protection of performer’s right
during the life of the performance but also for a long time period after the performance. The performer’s right
shall subsist until ‘fifty years’ from the beginning of the calendar year next following the year in which the
performance is made.
Broadcast & Broadcasting Organization: Literal meaning of the term “broadcast” is the transmission or
distribution of programme or information or audio or video content to a dispersed audience via radio or
television.

As per the section 2(dd) of The Copyright Act, “broadcast” means “communication to the public—

(i) by any means of wireless diffusion, whether in any one or more of the forms of signs, sounds or visual
images; or

(ii) by wire, and includes a re-broadcast.”

Broadcasting organisation, such as radio or television are also popularly known as electronic media, play a vital
role in the society. They are powerful media for entertainment, dissemination of information, knowledge, art
and culture. Such broadcasting organisation have also been provided with the rights to protect their interest after
the Amendment of 2012 in The Copyrights Act, other than the performers.

Rights of The Broadcasting Organization: Just as performer’s rights have been protected by the legislature
undee the Section 38 of the act, similarly, broadcaster’s rights have also been protected by the Act under section
37.

Every broadcasting organisation shall have a special right to be known as “broadcast reproduction right” in
respect of its broadcasts.

Right to The Broadcasting for A Term – Just like performer’s right has been granted for an entire term,
similarly, broadcaster’s rights have also been provided for an entire term. The broadcast reproduction right shall
subsist until ‘twenty-five years’ from the beginning of the calendar year next following the year in which the
broadcast is made.

The Amendment Act of 2012 might have introduced the affirmative rights for the performer by omitting the
provisions in which negative rights were given but the same is not the case with the rights of the broadcasting
organisation. Rights protecting the broadcaster are given in the form of the infringements that would be
considered during the continuance of the broadcast reproduction right, with regards to the broadcast.
Any person who has not obtained the licence from the owner of the work and does any of the following acts, in
regards to the broadcast or any substantial part of it will deemed to have infringed broadcast reproduction
right of the broadcaster :

(a) re-broadcast the broadcast

(b) causes the broadcast to be heard or seen by the public on payment of any charges

(c) makes any sound recording or visual recording of the broadcast.

(d) makes any reproduction of such sound recording or visual recording where such initial recording was done
without licence or, where it was licensed, for any purpose not envisaged by such licence

(e) sells or gives on commercial rental or offer for sale or for such rental, any such sound recording or visual
recording referred to in clause (c) or clause (d), subject to the provision of Section 39.

Judicial Pronouncement Related to The Chapter VIII of The Copyright Act, 1957

The very first case, Fortune Films International v. Dev Anand, where the issue of whether the copyright of the
work of the actor has been recognised or protected by the Copyright Act was raised in the Bombay High Court.
The Honourable Supreme Court held that an actor in a film has no rights over his performance in the film and
thereby denied the existence of the rights of the performers under the Indian copyright laws back then.

In the case of Super Cassettes Industries v. Bathla Cassette Industries the Delhi High Court stated that since the
incorporation of the Amendment Act of 2012, performer’s right and copyright are two different concept. This
case established a step ahead towards the recognition of the performer’s rights by stating that the rerecording of
any work or song without the consent of the original maker of the song is an infringement to the performer’s
rights.

In the case of Neha Bhasin v. Anand Raj Anand, issue in matter was related to the live performance. The Delhi
High Court held that every performance has to be live in the first instance, whether it is before an audience or in
a studio. If this performance is recorded and thereafter exploited without the permission of the performer, then
the performer’s right is infringed.
In the lastest case of Star India Pvt. Ltd. V Piyush Aggarwal, the issue that was raised was whether a cricket
match would constitute a “performance” or not under the copyright act. The Delhi High Court observed that a
cricket match will be considered a “performance” and therefore, cricketers, commentators and umpires are
performers under the Act.
 Ingringement Of Copyrights

When Copyright is infringed

Section 51(b) (iv) states: “Copyright in a work shall be deemed to be infringed when:

1. any person, without a license granted by the owner of the Copyright or the Registrar of Copyrights under
this Act, or in violation of the conditions of a license so granted or of any conditions imposed by a
competent authority under this Act-

2. Does anything, the exclusive right to which is conferred on the owner of the Copyright by this Act.

 When any person-

 Make for hire for sale, sells or lets for hire, or trade displays or offers for sale or hire

 Distributes either for commercial purposes or in such a way as to harm the owner of the copyright.

 By way of public trade shows.

 Imports into India of any infringing copies of the work (omitted by Act 65 of 1984, S.3 (effective 8-10-
1984))

The Doctrine of Fair Dealing

The word “fair dealing” was not set out in the Act. The law permits a person to use copyright work in limited
numbers without the permission of the owner. Fair trade is an exception and limitation to the exclusive right
granted to the author of a creative piece by copyright law. It enables copyrighted work to be reproduced or
utilized in a way which, however, would have amounted to a violation of copyright for the exception. It was
thus excluded from copyright law’s misfortune.

Initially the defence of “fair dealing” emerged as a doctrine of equity allowing certain copyright-proof works to
be used, which would otherwise have been prohibited and would have constituted a violation of copyright. The
main idea behind this doctrine is that the creativity growth whose progress the law has been designed should not
be stagnated. Over time, India has undergone enormous improvements in technology, but still has a very narrow
scope of fair trade law. However, if we look westward, continuous progress has been made in this field through
innovative interpretations and legal activism.

Explanation of Fair Dealing : This would be entirely up to the facts and circumstances of a particular case
whether a person uses the copyright material “fairly.” There is a narrow line between ‘fair trade’ and violation.
In India, the number of words or phrases that can be used without authorisation by a person is not defined by
specific guidelines. This can only be determined by the Court using basic common sense. However, it can be
said that the extracted portion should not affect the Author’s significant interest.

Fair trade is a considerable constraint of the copyright owner’s exclusive right. On a number of occasions, the
courts have interpreted it by assessing the financial impact on the proprietor. In the absence of significant
economic impact, the use can be a fair deal. The fairness of the deal depends on the four factors that follow:

 The purpose of the application

 The work’s nature

 The quantity of work used

 The impact of the work on the original

We must all have read and heard about the infringement of copyright, but this does not apply in any case as
such. The exception to Section 52 of the Copyright Act of 1957 which is read as, “Certain acts not infringed on
copyright.” However, since Section 52 is very extensive, only in few parts distributed among many articles will
we write about the same. We’ll write about Exception in Fair Dealing with any work in this special article.”

Section 52(1) the following act shall not constitute an infringement of copyright, namely, —

A fair dealing with any work, not being a computer programme, for the purposes of—

 Private or personal use, including research;

 Criticism or review, whether of that work or of any other work;

 The reporting of current events and current affairs, including the reporting of a lecture delivered in
public.
Explanations—The storage of any work in any electronic media, including by-laws of any computer program
which does not itself constitute a breach of copy for the purpose set forth in this clause, shall not constitute a
breach of copyright.

Section 52: Certain acts not to be infringement of copyright

(1) The following acts shall not constitute an infringement of copyright, namely:—

(a) a fair dealing with a literary, dramatic, musical or artistic work 1[not being a computer programme] for the
purposes of— 1[(i) Private use including research;]

(ii) criticism or review, whether of that work or of any other work; 2[(aa) the making of copies or adaptation of
a computer programme by the lawful possessor of a copy of such computer programme from such copy—
1[(aa) the making of copies or adaptation of a computer programme by the lawful possessor of a copy of such
computer programme from such copy—”

(i) in order to utilise the computer programme for the purpose for which it was supplied; or

(ii) to make back-up copies purely as a temporary protection against loss, destruction or damage in order
only to utilise the computer programme for the purpose for which it was supplied;] 3[(ab) the doing of
any act necessary to obtain information essential for operating inter-operability of an independently
created computer programme with other programmes by a lawful possessor of a computer programme
provided that such information is not otherwise readily available; 3[(ab) the doing of any act necessary
to obtain information essential for operating inter-operability of an independently created computer
programme with other programmes by a lawful possessor of a computer programme provided that such
information is not otherwise readily available;”

(ac) the observation, study or test of functioning of the computer programme in order to determine the ideas and
principles which underline any elements of the programme while performing such acts necessary for the
functions for which the computer programme was supplied;

(ad) the making of copies or adaption of the computer programme from a personally legally obtained copy for
non-commercial personal use;]
(b) a fair dealing with a literary, dramatic, musical or artistic work for the purpose of reporting current events—

(i) in a newspaper, magazine or similar periodical; or

(ii) by 4[broadcast] or in a cinematograph film or by means of photographs. 4[broadcast] or in a

cinematograph film or by means of photographs.” 5[Explanation.—The publication of a compilation of
addresses or speeches delivered in public is not a fair dealing of such work within the meaning of this
clause;]

(c) the reproduction of a literary, dramatic, musical or artistic work for the purpose of a judicial proceeding or
for the purpose of a report of a judicial proceeding;

(d) the reproduction or publication of a literary, dramatic, musical or artistic work in any work prepared by the
Secretariat of a Legislature or, where the Legislature consists of two Houses, by the Secretariat of either House
of the Legislature, exclusively for the use of the members of that Legislature;

(e) the reproduction of any literary, dramatic or musical work in a certified copy made or supplied in
accordance with any law for the time being in force;

(f) the reading or recitation in public of any reasonable extract from a published literary or dramatic work;

(g) the publication in a collection, mainly composed of non-copyright matter, bona fide intended for the use of
educational institutions, and so described in the title and in any advertisement issued by or on behalf of the
publisher, of short passages from published literary or dramatic works, not themselves published for the use of
educational institutions, in which copyright subsists: Provided that not more than two such passages from works
by the same author are published by the same publisher during any period of five years. Explanation.—In the
case of a work of joint authorship, references in this clause to passage from works shall include references to
passages from works by any one or more of the authors of those passages or by any one or more of those
authors in collaboration with any other person;

(h) the reproduction of a literary, dramatic, musical or artistic work—

(i) by a teacher or a pupil in the course of instruction; or

 (ii) as part of the questions to be answered in an examination; or

(iii) in answers, to such questions;

(i) the performance, in the course of the activities of an educational institution, of a literary, dramatic or musical
work by the staff and student of the institution, or of a cinematograph film or a 6[sound recording], if the
audience is limited to such staff and students, the parents and guardians of the students and persons directly
connected with the activities of the institution 7[or the communication to such an audience of a cinematograph
film or sound recording]; 8[(j) the making of sound recordings in respect of any literary, dramatic or musical
work, if—

(i) sound recordings of that work have been made by or with the licence or consent of the owner of the right in
the work;

(ii) the person making the sound recordings has given a notice of his intention to make the sound recordings,
has provided copies of all covers or labels with which the sound recordings are to be sold, and has paid in the
prescribed manner to the owner of rights in the work royalties in respect of all such sound recordings to be
made by him, at the rate fixed by the Copyright Board in this behalf: Provided that—

(i) no alterations shall be made which have not been made previously by or with the consent of the
owner of rights, or which are not reasonably necessary for the adaptation of the work for the purpose of
making the sound recordings;

(ii) the sound recordings shall not be issued in any form of packaging or with any label which is likely to
mislead or confuse the public as to their identity;

(iii) no such sound recording shall be made until the expiration of two calendar years after the end of the
year in which the first recording of the work was made; and

(iv) the person making such sound recordings shall allow the owner of rights or his duly authorised
agent or representative to inspect all records and books of account relating to such sound recording:
Provided further that if on a complaint brought before the Copyright Board to the effect that the owner
of rights has not been paid in full for any sound recordings purporting to be made in pursuance of this
 clause, the Copyright Board is, prima facie satisfied that the complaint is genuine, it may pass an order
ex parte directing the person making the sound recording to cease from making further copies and, after
holding such inquiry as it considers necessary, make such further order as it may deem fit, including an
order for payment of royalty;

(k) the causing of a recording to be heard in public by utilising it,—

(i) in an enclosed room or hall meant for the common use of residents in any residential premises (not
being a hotel or similar commercial establishment) as part of the amenities provided exclusively or
mainly for residents therein; or

(ii) as part of the activities of a club or similar organisation which is not established or conducted for
profit;]

(l) the performance of a literary, dramatic or musical work by an amateur club or society, if the performance is
given to a non-paying audience, or for the benefit of a religious institution;

(m) the reproduction in a newspaper, magazine or other periodical of an article on current economic, political,
social or religious topics, unless the author of such article has expressly reserved to himself the right of such
reproduction;

(n) the publication in a newspaper, magazine or other periodical of a report of a lecture delivered in public;

(o) the making of not more than three copies of a book (including a pamphlet, sheet of music, map, chart or
plan) by or under the direction of the person in charge of a public library for the use of the library if such book
is not available for sale in India;

(p) the reproduction, for the purpose of research or private study, or with a view to publication, of an
unpublished literary, dramatic or musical works kept in a library, museum or other institution to which the
public has access: Provided that where the identity of the author of any such work or, in the case of a work of
joint authorship, of any of the authors is known to the library, museum or other institution, as the case may be,
the provisions of this clause shall apply only if such reproduction is made at a time more than 9[sixty years]
from the date of the death of the author or, in the case of a work of joint authorship, from the death of the author
whose identity is known or, if the identity of more authors than one is known from the death of such of those
authors who died last;

(q) the reproduction or publication of—

(i) any matter which has been published in any Official Gazette except an Act of a Legislature;

(ii) any Act of a Legislature subject to the condition that such Act is reproduced or published together
with any commentary thereon or any other original matter;

(iii) the report of any committee, commission, council, board or other like body appointed by the
Legislature, unless the reproduction or publication of such report is prohibited by the Government;

(iv) any judgment or order of a court, Tribunal or other judicial authority, unless the reproduction or
publication of such judgment or order is prohibited by the court, the Tribunal or other judicial authority,
as the case may be;

(r) the production or publication of a translation in any Indian language of an Act of a Legislature and of any
rules or orders made thereunder—

(i) if no translation of such Act or rules or orders in that language has previously been produced or
published by the Government; or

(ii) where a translation of such Act or rules or orders in that language has been produced or published by
the Government, if the translation is not available for sale to the public: Provided that such translation
contains a statement at a prominent place to the effect that the translation has not been authorised or
accepted as authentic by the Government; 10[(s) the making or publishing of a painting, drawing,
engraving or photograph of a work of architecture or the display of a work of architecture;]

(t) the making or publishing of a painting, drawing, engraving or photograph of a sculpture, or other artistic
work falling under sub-clause (iii) of clause (c) of section 2, if such work is permanently situate in a public
place or any premises to which the public has access;

(u) the inclusion in a cinematograph film of—

 (i) any artistic work permanently situate in a public place or any premises to which the public has
access; or

(ii) any other artistic work, if such inclusion is only by way of background or is otherwise incidental to
the principal matters represented in the film;

(v) the use by the author of an artistic work, where the author of such work is not the owner of the copyright
therein, of any would, cast, sketch, plan, model or study made by him for the purpose of the work: Provided that
he does not thereby repeat or imitate the main design of the work; 11[***]

(x) the reconstruction of a building or structure in accordance with the architectural drawings or plans by
reference to which the building or structure was originally constructed: Provided that the original construction
was made with the consent or licence of the owner of the copyright in such drawings and plans;

(y) in relation to a literary, dramatic or musical work recorded or reproduced in any cinematograph film, the
exhibition of such film after the expiration of the term of copyright therein: Provided that the provisions of sub-
clause (ii) of clause (a), sub-clause (i) of clause (b) and clauses (d), (f), (g), (m) and (p) shall not apply as
respects any act unless that act is accompanied by an acknowledgement—

(i) identifying the work by its title or other description; and

(ii) unless the work is anonymous or the author of the work has previously agreed or required that no
acknowledgement of his name should be made, also identifying the author; 12[(z) the making of an
ephemeral recording, by a broadcasting organisation using its own facilities for its own broadcast by a
broadcasting organisation of a work which it has the right to broadcast; and the retention of such
recording for achival purposes on the ground of its exceptional documentary character;

(za) the performance of a literary, dramatic or musical work or the communication to the public of such work or
of a sound recording in the course of any bona fide religious ceremony or an official ceremony held by the
Central Government or the State Government or any local authority. Explanation.—For the purpose of this
clause, religious ceremony including a marriage procession and other social festivities associated with a
marriage.]
(2) The provisions of sub-section (1) shall apply to the doing of any act in relation to the translation of a literary,
dramatic or musical work or the adaptation of a literary, dramatic, musical or artistic work as they apply in
relation to the work itself.

Fair Dealing was used in this particular Benchmark Case Judgement: The High Court held in the case
of Kartar Singh Giani v. Ladha Singh that “two points in relation to the meaning of fair expression were
raised, in fair dealings:

 An intention to compete with and profit from such competition was necessary in order to be unfair.

 An infringement unless the infringer’s motive was unfair, in the sense of being wrong the dealer.

Exceptions to the reproduction right (the 3-step test)

The three step test made its debut in the Berne in 1967, as Article 9(2), for exceptions to the new right of
reproduction.

1967 Article 9

1. The authors of literary or artistic works protected by this Convention have the exclusive right, in any
way or in any form, to authorize the reproduction of those works.

2. It is up to legislation in Union countries, where this work does not conflict with the normal use of the
work and does not irrationally prejudicial to the legitimate interests of the author, to enable the copying
of such work in certain special cases.

3. For the purposes of this Convention, any sound or visual recording shall be treated as a reproduction.

Recent Developments: The Copyright Act (Amendment) 2012 included some of the modifications. Any work
for personal and private use with the exception of a computer program has been subject to the current clause (1)
(a). With this amendment, film and music were also subject to the works to which the provisions on fair use
were extended. This amendment was implemented. This amendment also ensures that work for the benefit of
the disabled is fairly exploited. It makes it possible for disabled people to access works, including sharing them
with any disabled person, for private or personal use for research or any other educational purpose, to
reproducing, publishing copies, adapting or communicating any work to the public.

Case Laws

These famous court cases have generated a major public copyright discourse—how we handle it, what it means,
and why we all should look after it.

1. Rogers vs. Koons

A photograph of a couple holding a line of puppies in a row was photographed by Art Rogers and sold to be
used in greeting cards and other similar products. In the process of making an exhibit about the banality of
everyday items, renowned artist Jeff Koons crossed Rodgers’ photographing internationally and used this as a
set of image-based statues. Koons sold several of these structures and made a considerable profit. Rodgers sued
Koons for copyright when he discovered the copy. Koons answered by saying that parody is fair use.

Result: The Court held that the two images were similar enough and that the copy would be recognized by a
“typical person.” The defence of Koon was rejected on the grounds that he could make the same statement with
a more generic source, without copying the works of Rogers. Koons had to pay Rodgers a currency settlement.

Significance: This is one of the famous cases of the issue of appropriation art that included a major issue in the
world of art. Can you build on the work of others to make your own original work? And if you do, is that
derivative work? He also mentioned the question of photography as an art, was photography just a
documentation of the world? Of course, neither of these issues has been fully addressed, but has also, in many
cases, become a reference.

 The Associated Press vs. Fairey

During President Obama’s first run for presidential election in 2008, renowned street artist Shepherd Fairey
created the Hope poster. The design quickly symbolized Obama’s campaign, which was technically
independent but with his approval. The photos of the Association Press reportedly based on the design by AP
freelance company Mannie Garcia were disclosed in January 2009 with the AP demanding compensation for
their use in works of Fairey. Fairey answered by advocating fair use and claimed that his work did not diminish
the value of the original photograph.

Results: In January 2011, the artist and the AP press arrived at a private settlement, part of which was divided
into profits.

Significance: Although there was not a court case and a true verdict, in these battles with copyright this case
created a lot of talk about the value of work. The work of Garcia could never have reached the level of fame if
not for the poster of Fairey. Garcia himself said he was «so proud of the photograph he had done and the result
Fairey had», yet had a problem with Fairey’s picture taking, without permission and without credit, the
originator of the picture.

 Cariou vs. Prince

A known appropriation artist, Richard Prince transforms the works of others into a new meaning in his own
work. Prince took 41 photographs of Patrick Cariou’s photo book for an exhibition at the Gagosian Gallery and
claimed it was fairly utilized for his creation of a new meaning from the photographs. Cariou claimed it was not
fair use but a violation of copyright.

Results: In 2011, a judge decided in favour of Cariou, claiming that Cariou’s changes in photographs were not
important enough to make a change — fair use. The case is in appeal at the moment but the final decision has
still not been reached.

Significance: The initial decision for Cariou in this case has created enormous divisions in the artistic
community. It raises questions concerning artistic intent and the subjectivity of art and asks “Who this judge is
to decide whether the appropriate artwork has sufficient meaning for its consideration as fair use” when every
individual who viewed it could interpret the art differently. This is still the case for the jury.

Police power to seize copies of the violations:

Any officer who is not under the rank of a sub-inspector may seize copies without a warrant to be issued before
a Magistrate if he is satisfied that an offense under section 63 is committed in relation to an act of infringement
of copyright.
Importation of Infringing Copies

Section 53 states: Importation of Infringing Copies

1. On application by the owner of the copyright in any work or by his duly authorized agent, and upon
payment of the prescribed fee, the Registrar of Copyrights may, after making such inquiry as he deems
fit, order that copies made outside of India of the work, which if made in India would infringe copyright,
shall not be imported.

2. Subject to any riles made under this Act, the Registrar of Copyrights or any person authorized by him in
this behalf may enter and examine any ship, dock, or premises where any of the copies referred to in
subsection (1) may be found.

3. All copies to which any order issued under subsection (1) apply are deemed to be goods whose import is
prohibited or restricted.

Section 53-A states: Resale share right in original copies –

1. In the case of resale for more than ten thousand rupees of the original copy of a painting, sculpture on
drawing, or original manuscript of a literary or dramatic work or musical work, the author of such work,
if he was the first owner of rights under Section 17, or his legal heirs, shall have a right to share in the
resale price, notwithstanding any assignment of copyright in such work.

2. The share referred to in subsection (1) shall be determined by the Copyright Board, and the Copyright
Board’s decision in this regard shall be final:

3. Provided, however, that the Copyright Board may establish different shares for different types of work:

4. Provided, however, that in no case shall the share exceed 10% of the resale price.

5. If a dispute arises concerning the rights granted by this section, it shall be referred to the Copyright
Board, whose decision shall be final.

Exceptions- Three main exceptions are commonly used by educators in the case of copyright law: fair use,
face-to-face instruction and virtual education. Without the permission of the copyright owner and possible
charges, the exemptions allow the use of the work. When the use is not covered by face-to-face instructions or
virtual instructions, fair use is commonly used since it is much wider and flexible.

It is the person who uses the job to determine which exception applies. It should be a deliberate decision, not a
default decision. The exemption and good faith determination of that use of a copyrighted work is authorized
with one of these exceptions is the responsibility of all members of the Purdue University community. A good
faith determination means that a person has to understand, articulate and reasonably apply the exception he
selects to their particular situation. If none of the exceptions apply, permission for the use of the work should be
sought.

Copyright violation remedies

 Civil correction: pursuant to Section 55 of the Copyright Act of 1957, the owner is entitled to all such
remedies by injunction, damages & accounts in cases where copyright in any work has been violated.

 Criminal redress: The copyright owner is entitled under Section 63 of the 1957 Copyright Law to
prosecute a contravener in which a penalty can be extended to at least 6 months, with a fine of Rs.
50,000, extending to two lakhs.

If the accused has proven that he was not aware of the infringement and had no reasonable reason to believe that
copyright was subsistent in the work at the date of its infringement, the complainant is not entitled to any
rectification in the circumstances that the defendant considers reasonable for all or any portion of the profits
made by it through the sale of the infringing copies.
 AUTHORITIES UNDER THE COPYRIGHT ACT, 1957

The Indian copyright legislation namely the Copyright Act, 1957 provides three important authorities and
institutions for registration of copyright, effective protection of copyright and for better enforcement of the
copyright laws. These bodies are namely:

• Copyright Office

• Copyright Board

• Copyright Societies

Copyright Office: The Copyright Act contains certain provisions for compliance of which an office called the
Copyright Office has been created. This office is headed by the person called Registrar of Copyright appointed
by the Central Government. The Registrar shall act under the superintendence and direction of the central
government and will be assisted by one or more Deputy Registrars of Copyright, who shall also be appointed by
Central Government and other officers and staff. The Copyright Office will also have a separate seal of its own.

Copyright Board: It is a body constituted under the Act to discharge certain judicial functions. The creation of
this Board is a novel feature of the Act. The Board was constituted in the year 1958 and has been functioning
since then. Main features of this Board are as follows:-

1. This body was formed with the commencement of this Act and consists of not less than two and not more
than fourteen {subs. By Act 38 of 1994, section 5 (w.e.f. 10-5-1995) other members).

2. They are appointed for such terms and conditions, as may be prescribed.

3. The Chairman of the Copyright Board must be a person who is or has been a judge of a High Court or is
qualified for appointment as the judge of a High Court.

4. The Registrar of Copyright shall be Secretary of the Copyright Board and shall perform such functions as
may be prescribed.

The Board has the power to:

 i) hear appeals against the orders of the Registrar of Copyright;
ii) hear applications for rectification of entries in the Register of Copyrights;
iii) adjudicate upon disputes on assignment of copyright;
iv) grant compulsory licences to publish or republish works (in certain circumstances);
v) grant compulsory licence to produce and publish a translation of a literary or dramatic work
in any language after a period of seven years from the first publication of the work;
vi) hear and decide disputes as to whether a work has been published or about the date of
publication or about the term of copyright of a work in another country;
vii) fix rates of royalties in respect of sound recordings under the cover-version provision; and
viii) fix the resale share right in original copies of a painting, a sculpture or a drawing and of
original manuscripts of a literary or dramatic or musical work.

Therefore, the above discussion on the basic constitution of the Copyright Office and Copyright Board shows
the importance of the Registrar as the head of the Copyright Office and also as the Secretary of the Copyright
Board. The powers of the Registrar of the Copyright are possessed individually and/or collectively with the
Copyright Board.

POWERS OF REGISTRAR AS THE HEAD OF THE COPYRIGHT OFFICE

• The Registrar of Copyright as the head of the Copyright Office manages the office according to the provisions
of the Copyright Act and directions and orders of the Central Government, whenever given to him.

• The Deputy Registrar appointed by the Central Government under section 10(1), shall discharge under the
superintendence and the direction of the Registrar, such functions of the Registrar under this Act as the
Registrar may, from time to time , assign to him; and any reference in this Act to the Registrar of Copyrights
shall include a reference to a Deputy Registrar of Copyrights when so discharging any such functions.

• The Register of Copyright will be maintaining a Register containing the name or titles of works and the names
and addresses of the authors, publishers and owners of copyright and other particulars as maybe prescribed
(under section 44 of the Act.). It will contain the particulars specified in Form III. Every entry made in the
Register of Copyright should be published in the official Gazette or in such manner as the Registrar may deem
fit.

• The Registrar has the power to register the work of the copyright holder on receipt of an application in the
prescribed format along with the prescribed fee and after holding such enquiry as he may deem fit.

• The Registrar has the power to refuse the registration of the copyright work in the case of an artistic work
which is used or capable of being used as a trademark, if the application has not been accompanied by a
certificate from the Registrar of Trade Marks to the effect that no trade mark identical with or deceptively
similar to such artistic work has been registered or applied for, under the Trade and Merchandise Marks Act, in
the name of another person

• The Registrar of Copyright may in the prescribed cases and subject to the prescribed conditions amend or alter
the Register of Copyright by: (a) correcting any error in any name, address or particulars, or (b) correcting any
other error which may have arisen therein by accidental slip or omission. The Registrar may amend or alter the
entries in the Register as above on his own motion or on an application by an interested person. The application
should be on Form V accompanied by the prescribed fee. Before making the amendment or alteration an
opportunity to show cause against such amendment or alteration shall be given to the person affected by such
amendment or alteration .The entries of the correction made in the Register will be published in the Official
Gazette or in some other manner9 . The Registrar will also communicate such alteration made to the person so
affected (under Rule 17). Any order of the Registrar in this respect is subject to appeal to the Copyright Board.

Administration of Copyright and Related Rights in India:

• The Registrar of Copyright or any person aggrieved may make an application to the Copyright Board
for rectification of the Register of Copyright.

• The basic internal management of the office,

• The number of the clerical staff and other officers to be maintained.

• The distribution of the work among these officers and clerical staff.
 • The Registrar can make rules, regulations and byelaws to manage the Copyright office effectively and
efficiently.

• The other miscellaneous authorities to fulfill the above mention powers efficiently.

POWERS OF THE REGISTRAR AS SECRETARY OF THE COPYRIGHT BOARD: Under section

11(3) of the Copyright Act, the Registrar of Copyright shall be Secretary of the Copyright Board and shall
perform such functions as may be prescribed. Therefore all the powers that is deemed to be vested to the office
of the Secretary of the Board can be exercised by the Registrar of the Copyright. The common powers of the
secretary are to arrange all the meetings of the Board, keep the proper records of the meetings, provide proper
feedbacks to the members of the board about the minutes of meetings and give briefings of the action taken on
any resolution passed by the Board.

The Board with the assistance of the Registrar under section 12 of the Act, has power to regulate its own
procedure, including the fixation of places and times of its sittings. This is subject to the Copyright Rules 1958.
Ordinarily, The Board hears any proceedings instituted before it within the zone in which the person instituting
the proceedings actually or voluntarily resides, or carries on business or personally works for gain. For this
purpose the country is divided into five zones; namely Northern, Eastern, Western, Southern and Central zones.
The Board has been given the power to regulate its own procedure which implies that the procedure shall be
reasonable and in conformity with the principles of natural justice.

The Board is empowered to exercise and discharge its powers and functions through Benches constituted by its
Chairman, from among its members, each consisting of not less than 3 members. The Chairman may also
constitute a Special Bench consisting of 5 members, to hear a matter of importance. In case of difference of
opinion between the members, the prevalence of the majority opinion is the rule. The principles of natural
justice are supposed to be followed by the members of the Board in the hearing proceedings.

The Registrar of Copyright and the Copyright Board under section 74 of the Act, have the powers of a Civil
Court when trying a suit under the Code of Civil Procedure 1908, in respect of the following matter, namely:
 a) Summoning and enforcing the attendance of any person and examining him on oath;

b) Requiring the discovery and production of any document;

c) Receiving evidence on affidavits;

d) Issuing commissions for the examination of witnesses or documents;

e) Requisitioning any public record or copy thereof from any court or office;

f) Any other matter which may be prescribed.

.
Infringement and Passing off Action in Trademark

Introduction

A trademark represents the origin and quality of goods, serving as a visual symbol of goodwill and business
reputation. It distinguishes a company’s products from others, making it essential for businesses to protect their
trademarks from misuse by competitors. The Trademark Act of 1999 encourages fair trade while preventing
fraudulent actions that harm another's business. Though trademark protection was initially governed by
common law, the Act provides statutory rights, allowing both registered and unregistered trademarks to be
protected through infringement and passing off actions.

Passing Off of Trademarks:

Passing Off of Trademarks refers to a common law tort aimed at preventing one party from misrepresenting its
goods or services as those of another, leading to consumer confusion and harm to business reputation. The
principle is that "a man may not sell his own goods under the pretense that they are the goods of another." This
is reflected in the case of ICC Development (International) Ltd. vs. Arvee Enterprises, emphasizing that no one
can represent their goods as those of another.

Although passing off is not explicitly defined in the Trademark Act, 1999, sections such as 27(2), 134(1)(c),
and 135 indirectly address it. Section 27(2) preserves the right to act against passing off irrespective of
trademark registration. Section 134(1)(c) refers to the jurisdiction of courts over such suits, while Section 135
outlines available remedies.

While passing off traditionally focused on misrepresentation of goods, it has evolved to include business
services, professions, and non-trading activities. Now, it covers broader unfair competition practices that cause
harm to another's goodwill. Fraud is not required to prove passing off, though proving intent to deceive can
strengthen the case.

Factors to be considered in case of an action for passing off:-

In the case of Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd., the Hon’ble Supreme Court outlined
several factors to consider when assessing an action for passing off involving an unregistered trademark. These
factors help determine whether there is deceptive similarity between the marks in question:

1. Nature of the Marks: Identify whether the marks are word marks, label marks, or composite marks (a
combination of words and labels).

2. Degree of Resemblance: Evaluate the phonetic similarity and conceptual resemblance between the marks.

3. Nature of Goods: Consider the type of goods for which the trademarks are used, as this influences consumer
perception.

4. Similarity in Goods: Assess the nature, character, and performance of the goods offered by the rival traders.

5. Class of Purchasers: Analyze the type of consumers likely to purchase the goods and their purchasing
behavior.

6. Mode of Purchasing: Examine how consumers buy or place orders for the goods in question.

7. Surrounding Circumstances: Take into account any additional factors that may highlight the dissimilarity
between the competing marks.

Defences to a passing off action:-

In a passing off action, the defendant can raise several defenses to counter the plaintiff's claims. These defenses
include:

1. Fraudulent Business: The defendant can prove that the plaintiff’s business is fraudulent or prohibited by
law. For instance, a trader selling counterfeit goods cannot claim passing off protection against another
counterfeiter.
2. False Representation: If the mark itself contains a false representation, it may serve as a defense. If the
trademark is used in connection with a fraudulent trade, the fraudulent nature of the trade can protect the
defendant.

3. Lack of Distinctiveness: The defendant can argue that the mark in question is not distinctive of the
plaintiff’s business and that there is no likelihood of passing off due to the defendant's use of the mark.

4. Acquiescence or Delay: If the plaintiff has acquiesced to the defendant’s use of the mark or delayed taking
action, this may be used as a defense. The defendant may also prove prior use of the mark.

5. Use of Own Name: The defendant can argue that the mark represents their own name, which they have the
right to use, as long as it does not create confusion.

6. Different Fields of Activity: If the parties operate in completely different fields, this can be a valid defense
against passing off claims.

7. Concurrent Use: The defendant may claim the right to concurrently use the mark, demonstrating honest and
established use of the trademark.

8. Bona Fide Description: The defendant's use of the mark as a bona fide description of the goods or services
can serve as a defense. However, this defense does not apply to corporate bodies using a surname or personal
name.

9. Innocent Misrepresentation: Under Section 135(3), an innocent misrepresentation by the defendant can
also serve as a valid defense against a passing off action.

Infringement of a Trademark

Section 27(1) of the Trademarks Act, 1999 allows individuals to initiate legal proceedings to prevent or recover
damages for the infringement of a registered trademark. Infringement occurs when a party uses a trademark that
is identical or deceptively similar to a registered trademark for identical or similar goods or services, leading to
consumer confusion. The right to bring an infringement action is outlined in Section 28, which grants the
proprietor exclusive rights to use the trademark concerning the registered goods and services.

Trademark infringement cases typically involve issues of likelihood of confusion, deceptive marks, identical
marks, and dilution. Likelihood of confusion arises when consumers may be misled about the origin of products
due to similar marks. The plaintiff must show that many consumers are likely to be confused regarding the
source of the goods bearing these marks. Dilution involves unauthorized use of a famous trademark that
diminishes its uniqueness, even when the products are unrelated. For example, a famous trademark used for hair
care products may be diluted if a similar mark is used for entirely different products, like breakfast
cereals or spark plugs.

What Constitutes Infringement?

Section 29 of the Trademarks Act, 1999 addresses trademark infringement. Key elements include:

1. The plaintiff’s mark must be registered.

2. The defendant’s mark must be identical or deceptively similar to the plaintiff’s mark.

3. The defendant has used an essential feature or the entirety of the mark, with minor alterations.

4. The defendant's use occurs in the course of trade related to the registered goods/services.

5. Infringing use must appear in printed materials like advertisements or invoices; oral use is not considered
infringement.

6. The defendant's usage must suggest it is a trademark.

7. The defendant's use must be unauthorized and not a permitted use.

Difference Between Passing-Off and Infringement

Conceptual Differences:
1. Basis of Action: Passing off is grounded in common law, preventing false representation of goods, and
applies to both registered and unregistered trademarks. Infringement arises from the statutory rights of
registered trademarks.

2. Nature of Rights: Infringement is a statutory right dependent on valid registration, while passing off relies on
goodwill established through use of the mark, making registration irrelevant.

3. Legal Recourse: Owners of unregistered trademarks cannot sue for infringement; they must pursue a passing
off action.

4. Reputation Requirement: Infringement does not require proof of mark reputation, while passing off
necessitates demonstrating the mark's established reputation.

5. Relief Granted: Infringement can restrain the defendant from using a registered trademark, whereas passing
off prevents selling without distinguishing from the plaintiff's goods.

6. Focus of Action: Infringement requires proof of trademark use related to goods, while passing off focuses on
public deceit rather than trademark usage.

Procedural Differences:

1. Imitation and Get-Up: Infringement actions can disregard different get-up if there’s colorable imitation, while
passing off considers the get-up relevant.

2. Confusion Requirement: Passing off requires proving likelihood of confusion alongside mark similarity;
infringement only needs identical or similar marks.

3. Proprietary Rights: Infringement focuses on violating proprietary rights, while passing off centers exclusively
on deception.

4. Use of Trademark: Infringement claims can be made even without prior use of the mark; passing off requires
evidence of distinctiveness through use.
5. Imitation Evidence: Infringement requires showing the defendant's mark is visually or phonetically similar
without further evidence; passing off allows a defense if distinguishing factors are present.

6. Goods Comparison: Goods in passing off can be different from the plaintiff's; in infringement, the
defendant's goods must relate to those covered by the registered mark.

Combined action for infringement and passing off

Where a mark is registered, the plaintiff may combine his action for infringement along with an action for
passing off, where the plaintiff has used his mark and can establish goodwill and reputation in connection with
his business. This provides for a better protection of trademark.

Conclusion:

In conclusion, trademark protection is crucial for safeguarding businesses and consumers from fraud. It is
advantageous to combine claims of infringement and passing off in a single suit, as a registered mark can be
amended if necessary. Conversely, a plaintiff in an infringement action may not introduce a new passing off
claim to preserve the action. Given that passing off has a broader scope, a failure in one claim could lead to
success in the other. The Trademarks Act, 1999, aims to enhance trademark protection and recognizes both
common law remedies, effectively safeguarding registered and unregistered trademarks from misuse.
Legal Remedies for Infringement and passing Off Action in Trademark

Remedies for Passing Off

Passing off is a form of legal action designed to protect unregistered trademarks. It protects businesses from
competitors who attempt to mislead consumers by using similar branding or packaging that could confuse
customers about the origin of goods or services. To succeed in a passing-off claim, the plaintiff must prove
three key elements: goodwill, misrepresentation, and damage.

The remedies available in passing-off cases include:

1. Injunction: An injunction prevents the defendant from using the disputed trademark or passing off goods as
those of the plaintiff. An interim injunction may be granted to halt the infringement until the case is fully heard,
protecting the plaintiff's goodwill during litigation. The Trademark Act, 1999, under Section 135, provides for
various forms of injunctive relief:

Anton Piller Order: This allows for the inspection of the defendant’s premises, typically used when there is a
risk that the defendant might destroy or dispose of evidence.

Mareva Injunction: This order freezes the defendant’s assets to ensure that any judgment in favor of the
plaintiff can be enforced. It is particularly relevant if there is a risk that the defendant will dissipate assets before
the case is decided.

Interlocutory Injunction: A temporary injunction that restricts the defendant from continuing the offending
act until the court reaches a final decision. This is often used when the plaintiff can show that the defendant’s
continued use of the mark will cause irreparable harm.

Perpetual Injunction: Once the case is decided in the plaintiff’s favor, the court may issue a perpetual
injunction that permanently bars the defendant from infringing on the plaintiff’s rights.
Destruction of Infringing Goods: In some cases, the court may order the destruction of infringing goods that
bear the disputed trademark or trade dress. This ensures that the infringing goods do not remain in circulation,
which could further harm the plaintiff's business.

2. Damages or Account of Profits: The plaintiff may seek compensation for losses caused by the defendant’s
actions. This includes financial losses or damage to the reputation of the plaintiff’s business. The court may
award damages based on the actual loss suffered or on the profits that the defendant earned through the
wrongful use of the plaintiff's goodwill. The award depends on the nature and extent of the harm caused by the
passing off.

In a passing-off claim, the plaintiff faces the burden of proving goodwill, misrepresentation, and damage.
Goodwill refers to the reputation that the plaintiff's business enjoys in the market, while misrepresentation
means that the defendant's actions are likely to deceive customers into believing that the goods or services
offered by the defendant are associated with the plaintiff. Finally, damage refers to the harm caused to the
plaintiff's business, such as loss of customers or dilution of the brand's reputation.

Defenses in Passing Off Cases

1. Use of Own Name: A defendant may argue that they are entitled to use their own name or brand as long as
they take reasonable care to prevent confusion. If confusion arises, the defendant must take steps to clarify the
distinction between their products and those of the plaintiff.

2. Lack of Goodwill: The defendant can challenge the plaintiff’s claim by arguing that the plaintiff does not
have sufficient goodwill or reputation in the market to claim protection. If the plaintiff has not established a
reputation or is new to the market, it becomes difficult to prove goodwill.

3. Consent: If the plaintiff has previously allowed or encouraged the use of the mark by the defendant, the
plaintiff may be estopped from bringing a claim of passing off.

4. Different Goods or Services: If the defendant is using the disputed trademark for completely different goods
or services from those of the plaintiff, the court may find that there is no likelihood of confusion. For instance,
if the plaintiff uses the mark for educational services and the defendant uses it for household appliances, the
defense may succeed in showing that consumers are unlikely to be misled.

Case Laws

1. Britannia Industries Ltd. v. ITC Ltd. (2017): The court ruled that color combinations aren't inherently
distinctive unless proven to have acquired uniqueness through use. ITC's claim failed as it couldn't establish
goodwill in its packaging.

2. Nirma Limited v. Nimma International and Anr. (2010): The court restrained Nimma from using a
similar-sounding mark, finding it likely to confuse consumers with Nirma’s established brand.

Conclusion

Passing off is crucial for protecting businesses with unregistered trademarks from unfair competition. While the
remedies available in passing-off cases are similar to those in trademark infringement cases, the burden of proof
is higher, as the plaintiff must prove goodwill, misrepresentation, and damage. Establishing goodwill is
particularly challenging for unregistered marks, as it requires proof of market recognition and consumer
association with the plaintiff’s brand. Nonetheless, passing-off actions serve to protect businesses from
misleading practices and ensure that customers are not deceived about the source of goods or services.

Remedies for Infringement

Trademark remedies serve to protect both registered and unregistered marks. For registered trademarks, they
initiate legal proceedings for infringement, while for unregistered trademarks, they provide common law
remedies for passing off. In India, Sections 29 and 30 of the Trade Marks Act, 1999, outline the remedies
available for trademark infringement. These remedies are applied based on the facts and circumstances of each
case.
Civil Remedies

The Trade Marks Act, 1999 provides several civil remedies for trademark infringement:

1. Injunction: The court can issue an injunction, either temporary or perpetual, to prevent further use of the
infringing mark. A temporary injunction is in effect until the court issues a final order, while a perpetual
injunction permanently restrains the infringing activity after a decree is passed. These are provided under Order
39 Rule 1 and 2 of the Code of Civil Procedure.

2. Damages: The aggrieved party can claim damages for financial losses resulting from the infringement. This
compensates the plaintiff for the loss of exclusive use of their trademark.

3. Handling of Profit Accounts and Removal of Infringing Products: Courts can order the defendant to
deliver the infringing products or handle the profits gained from the wrongful use of the plaintiff’s trademark.

Section 135 of the Trade Marks Act, 1999, allows courts to issue an Anton Piller Order, which prevents the
defendant from removing assets from the court’s jurisdiction. The court may also appoint a commissioner to
seal the infringing goods. If civil remedies do not adequately compensate the plaintiff, the court may resort to
further measures to provide relief.

Criminal Remedies

Criminal remedies under the Trade Marks Act, 1999, include:

1. Section 103: Imposes a prison term of six months to three years for trademark infringement.

2. Section 104: Establishes penalties, including fines ranging from ₹50,000 to ₹2 lakhs for those found guilty
of infringing trademark rights.

3. Section 105: Provides for enhanced punishment in cases of repeat offenses.

Additionally, authorities may seize goods based on reasonable grounds of infringement under these sections,
making criminal remedies an important enforcement tool.
Administrative Remedies

Administrative remedies complement civil and criminal actions. These remedies help manage trademark issues
preemptively through opposition and correction mechanisms:

1. Opposition of a Similar Mark: Under Sections 9(1) or 11 of the Trade Marks Act, 1999, third parties can
oppose the registration of marks that are confusingly similar to an existing one. This prevents future disputes by
stopping infringement at the registration stage.

2. Correction of a Registered Trademark: Administrative authorities can correct a registered trademark if it

causes confusion, ensuring clarity between different marks.

3. Regulation of Trade Activity: Authorities can prevent the import or export of goods bearing a fraudulent or
infringing trademark. This is aimed at curbing the spread of counterfeit products across borders.

Landmark Judgments

1. DM Entertainment v. Baby Gift House & Ors.:

The Delhi High Court awarded ₹1 lakh in damages to the plaintiff, Daler Mehndi, whose publicity rights were
infringed by the defendants through unauthorized merchandising of miniature toys. This case highlighted the
protection of character merchandising and publicity rights under trademark law.

2. The Coca-Cola Company v. Bisleri International Pvt. Ltd.:

The court ruled in favor of Coca-Cola, issuing an interim injunction against Bisleri for continuing to use the
trademark "Maaza" in both domestic and international markets beyond permissible limits, leading to trademark
infringement.

3. Makemytrip (India) Pvt. Ltd. v. Orbit Corporate Leisure Travels:

The court dismissed the plaintiff’s claim, ruling that the defendant could continue using the mark
"GETMYTRIP" since the plaintiff had acquiesced to its use. This case underscored the importance of timely
action in trademark disputes and the doctrine of acquiescence.

Conclusion

With increasing trademark registrations, businesses in India are becoming more aware of the importance of
protecting their brand identity. Trademark infringement is common, and the remedies provided by law are
crucial in maintaining the integrity and value of trademarks. However, the enforcement of these remedies is
sometimes inadequate due to procedural loopholes. Ensuring proper legal action and awareness among
businesses is essential to minimize infringement and safeguard intellectual property.
ANALYSIS OF COPYRIGHT ACT

HISTORICAL EVOLUTION OF COPYRIGHT LAW : The Statute of Queen Anne, passed in England in
1710, first recognized that the authors should be the primary beneficiaries of copyright for a limited period of
duration after which the work will be the public property. The legislative development of law on copyright in
India is not old compared to England.

India under the British rule did not have its own law on copyright and the Copyright Act, 1911 of England was
made applicable in India by a proclamation in 1912. This Act was amended by Copyright Act 1914 with certain
modifications and amendments. The Copyright Act 1914 continued to be governing law on the copyright even
after independence.

The Copyright Act, 1911 and the Indian Copyright Act, 1914 was repealed by the Copyright Act, 1957. The
Copyright Act, 1957 came into force on 21st January, 1958 and extends to the whole of India. The Copyright
Act 1957 was the first post-independence copyright legislation in India and the law has been amended six times
since 1957.. The most recent amendment was in the year 2012, through the Copyright (Amendment) Act 2012.

MEANING OF COPYRIGHT: Copyright is an exclusive right exercised over a work produced by the
intellectual labour of a person. In Sulmanglam R. Jayalakshmi vs. Meta Musical, the Madras HC held that
‘The right which a person acquires in his literary or artistic work which is the result of his intellectual labour is
called his copyright’.

Copyright is not restricted to literary or artistic work. It applies to different other kinds of works also like
dramatic, musical, cinematographic film, computer programme, work of architecture and sound recording and
any other work which is produced by the intellectual labour of a person.

Different kinds of works which are the results of intellectual labour of person fall within the purview of the
‘copyright’. As the subject matter of copyright is the work produced by the intellectual labour of a person,
therefore, the right to copyright is a right to ‘intellectual property of a person.’ Copyright can be claimed by
either the creator or the person who has inherited the rights of ownership from the original creator or an agent
who is allowed to act on behalf of the creator.

The ‘exclusive right’ to copyright exercised by a person includes his right to assign the copyright either wholly
or partially in the favour of any other person. It also entitled the owner of copyright to restrain any person from
doing any unauthorised act with respect to the work in which his copyright subsists.

COPYRIGHT LAW: Copyright Law has been developed to give legal protection to ‘copyright’. Right to copy
has become a statutory right under the Copyright Law. Copyright law protects the original expression of
information and ideas of the copyright owner. Copyright Law prevents the reproduction, sale or any other act
with respect to a work if it is done without the consent of the owner of the copyright in that work.

Copyright Law provides for the civil as well as criminal remedies against the infringement of copyright.
Copyright Law provides for civil remedies in the form of injunctions, damages or accounts against the
infringement of copyright. It also provides punishments in the form of imprisonments and fines as a criminal
remedy for the offences of infringement of the copyright.

Section 63 of Copyright Act provides that any person who knowingly infringes or abets the infringement of a
copyright that exists in any work, shall be punishable with imprisonment for a term which shall not be less than
six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees
but which may extend to two lakh rupees.

Provided that where the infringement has not been made for gain in the course of trade or business the court
may, for adequate and special reasons to be mentioned in the judgment, impose a sentence of imprisonment for
a term of less than six months or a fine of less than fifty thousand rupees.

Explanation - Construction of a building or other structure which infringes or which, if completed, would
infringe the copyright in some other work shall not be an offence under this section.
The explanation to this section states that for the purpose of enforcing the attendance of witnesses, the local
limits of the jurisdiction of the Registrar of Copyright or the Copyright Board, as the case may be, shall be the
limit of the territory of India.

Under this Act, both the Registrar of Copyrights and the Copyright Board are vested with the power, and owe
the responsibility, to make decisions which are judicial in character. The Act, therefore, arms the above
authorities with the powers mentioned in clauses (a) to (f) of section 74, as they are necessary for fully and
effectively securing all necessary evidence to enable them effectively to adjudicate on the subject-matter of the
enquiry before them.

The power to summon and enforce attendance of the witnesses and examining them on oath, is provided by
Order XVI, C.P.C. Discovery is provided for by Order XI. The rules, regarding evidence on affidavits, are
governed by Order XIX. Commissions to examine witnesses have to be issued in accordance with the
provisions of Order XXVI. The requisition to any court or office to produce any public record or copies should
be made in the form of a letter of request, on an application made as for the issue of summons.

By virtue of the Explanation, the Registrar of Copyrights or the Copyright Board can issue processes extending
to the whole of India. But, for the purpose of examination, a witness cannot be compelled to attend, if he resides
beyond two hundred miles of office of the Registrar or of the Copyright Board. In such a case, a commission
will have to be applied for, as provided in the Civil Procedure Code.

The Orders passed by the Registrar of Copyright or the Copyright Board for the payment of money or by the
High Court on appeal against such order of the Copyright Board will be deemed to be a decree of a Civil Court
and will be executable in the same manner as a decree of the Civil Court. (under section 75)

This provision has the power to protect the Registrar of Copyright and staff members of his office or the
Copyright Board of any suit or legal proceedings instituted against them in the discharge of their duties in good
faith under the Act (under section 76). In other words, this section protects all persons from all kinds of suits or
other legal proceedings in respect of all things done in good faith, in pursuance of the provision of this Act. A
thing is said to be done in good faith, if the person concerned does it in the bona fide belief that he is doing it in
accordance with what he conceives to be his duty under the Act. The person concerned must not do any act,
(a)which is beyond his competence to do, and (b) which he is not warranted to do under the provisions of this
Act. If he acts in bad faith, or acts ultra vires of the Act, he will not be protected.

REGISTRAR’S POWERS IN IMPORTATION OF INFRINGING COPIES : The owner of the copyright in any
work or his duly authorized agent may make an application to the Registrar of Copyright on Form IV
accompanied by the prescribed fee giving particulars of the importation of the infringing copies of his work for
an order not to import such copies of the work. The Registrar after making such enquiries as he may deem fit
order that copies made outside India of the work which are infringing copies of the work should not to be
imported. The Registrar of Copyright or any person authorized by him may enter any ship, dock or premises
where any such copies may be found and examine them12. The Registrar or the person authorized should act in
collaboration with the custom authorities. All copies of the work to which the order of the Registrar applies will
be deemed to be goods of which the import has been prohibited under the Customs Act, 1962. All copies
confiscated under the Custom Act will not vest in the Government but should be delivered to the owner of the
copyright in the work (under section 53(3)).

FUNCTIONS OF THE REGISTRAR: The Registrar as the head of the Copyright office will perform primarily
all the necessary functions which the Copyright office is required to perform under the provisions of the Act.
These duties includes maintaining the Register of copyrights, consider the application for registration of
copyright,, maintain the indexes arranged alphabetically in the form of cards, correction of entries in the
Register and publication of the entries of correction made in the Register in the official Gazette or in some other
manner. The secondary functions includes all activities assigned to him as the Secretary of the Copyright Board
by the Chairman of the Copyright Board and other Board related activities as and when assigned by the
Chairman of the Board.

REGISTER OF COPYRIGHT: There shall be a register in the Copyright Office in the prescribed form
containing the names or titles of works and the names and addresses of the authors, publishers and owners of
Copyright and other particulars. This Register helps the public to know about the all particulars relating to
existence of copyright. This Register of Copyright will be kept in the following manner and will make the
categorization as prescribed in Rule 13 of the Copyright Rules, 1958-

i) Literary, dramatic and musical works.

ii) Artistic works.
iii) Cinematograph films.
iv) Sound recordings.

The Register shall also contain such other particulars as may be prescribed in the Form III. A few examples of
particulars as prescribed by Form III of the Copyright Rules, 1958 are given below:

i) Registration number.
ii) Name, address and nationality of the applicant.
iii) Language of the work.
iv) Whether the work is published or unpublished.
v) Year and country of first publication, and name, address and nationality of the publisher.
vi) Nature of the applicant’s interest in the Copyright of the work.
copyright societies

Copyright Society is referred to as a legal body that protects or safeguards the interest of owners of the work in
which copyright subsists. The Copyright Society gives assurance to the creative authors for the commercial
management of their works.

Copyright societies are collectively formed by a group of authors and other owners of such copyrighted works
in order to manage and protect the authors or owners against copyright infringement because it is difficult for
authors as well as owners of the copyright to keep track of the use of their copyrighted work.

A member of the society is entitled to organizational facilities such as the Copyright Society keeps a better vigil
of the use or monetization of a member’s copyrighted work throughout the country and collects royalties from
those who use the registered work.

India being a member of international conventions, the copyright societies in India can collect royalties for the
use of Indian works in other member countries through reciprocal agreements made with similar societies in
such countries. Hence, it is beneficial for copyright owners to become a member of such a copyright society to
ensure proper protection of their copyrighted work and to obtain the maximum benefit for their creations.

‘Copyright Society’ means a society registered under Section33 (3) of the Copyright Act, 1956 which provides
that the copyright society duly registered under the act can only conduct the business of issuing/granting
licenses to the copyrighted work i.e., literary, dramatic, musical, or artistic works incorporated in cinematograph
films or sound recordings.

This collective licensing is necessary for managing performance rights. And they should file an application with
the Registrar of Copyrights on Form VIII.

Functions of copyright societies: The copyright Societies discharge the following functions:

1. It grants license of the Copyright in the work for reproduction, performance, or communication to the
public.
 2. It locates the infringement of the Copyright and initiates legal proceedings.

To regulate these activities of such copyright societies Sections 33 to 36A have been enacted under the
Copyright Act 1956.

Evolution of copyright societies: Before the commencement of the Copyright (Amendment) Act, 1944,
Section 33 to Section 36 used to deal with the performing rights societies. This society used to carry on the
business of issuing or granting of licences for the performance of any work in which copyright subsisted in
India.

However, power of such society was limited to the field of literary, dramatic, musical work. In 1994, after the
commencement of the Copyright (Amendment) Act, 1994 performing rights societies was replaced by copyright
societies in the said Act.

The reason behind the development of copyright societies: It has been usually observed that the authors of
creative works are not business-minded, or interested in financial resources and are often prone to the
exploitation of their work. For example, if an author has created an original piece of literary work, then the
author might get a monetary benefit by reproducing copies of his work and selling them to the public at large.

However, this is only possible if the work is licensed to a publisher. It is also extremely difficult for the owner
of the work to prevent infringement of the work.

At times, it has been also observed that they are unable to keep track of all the uses others make of their work.
Therefore, to overcome such difficulties, owners of copyright works decided to form copyright societies to
licence their works for performance or communication to the public. The societies are authorised to do such
work based on payment.

Copyright societies in India: In India, now a copyright society is governed under the Copyright Act, of 1957.
A copyright society is established by authors and copyright owners for the protection of their work from
exploitation. The minimum membership for the registration of a copyright society is seven. There are different
kinds of societies assigned to different classes of work.
For example, a copyright society is especially dedicated to literary work. The registration granted to the
copyright society is almost for 5 years. It can be renewed from time to time at the end of every five years
through a request application. However, the acceptance of such a request will only be declared by the central
government after analysing certain reports. There had also been an amendment to the Copyright Act in 2012.

For those copyright societies who had already registered themselves before this act came into existence, they
will themselves get registered under this act within one year from the date of commencement of the Copyright
(Amendment) Act, 2012.

Section 33 (3) of the Copyright Act, 1956 provides that the copyright society duly registered under the act can
only conduct the business of issuing/granting licenses to the copyrighted work i.e., literary, dramatic, musical,
or artistic works incorporated in cinematograph films or sound recordings. This collective licensing is necessary
for managing performance rights. And they should file an application with the Registrar of Copyrights. The
application should consist of:

 A true copy of the application that establishes or incorporates the Applicant.

 All members of the Governing Body of the Application have given their consent to serve as
members of the Governing Body of the Application.

 A declaration setting down the Applicant’s aims, the entities through which it will operate, and
accounting and auditing arrangements; and

 An undertaking that the instrument is constituted or incorporated requires it to comply with the
provisions of the Act and these Rules.

The term period granted for registered copyright is for five years and can be renewed before the end of the term
of five years by a request through the prescribed form and the central government will renew the registration
after on the basis of the report from the Registrar of the Copyrights about the functions and duties performed by
the copyright society as stated under section 36 of the Copyright Act, 1957.
The copyright society’s registration renewal is subject to the copyright society’s continued collective control
being shared with the authors of works in their capacity as owners of copyright or the right to receive a royalty.
Every copyright society that was already registered prior to the enactment of the Copyright (Amendment) Act,
2012, must be registered within one year of the enactment of the Copyright (Amendment) Act, 2012.

The Copyright societies are also authorized to watch out for infringement of the copyrighted work and take
appropriate legal action against the infringers.

Currently active copyright societies in India: A copyright society is created to track and monitor the
copyrighted works of its members and enforce the author’s rights in case of any violations.

It is difficult to keep a check on every individual or entity using a registered work. The process is tedious and
time-consuming. A copyright society ensures security, enforcement of rights, and the successful and timely
receipt of royalties to the authors of creative works. A copyright society provides optimum economic benefits to
the original creators in the form of royalties or monetary benefits.

Copyright societies are registered in India under section 33, and there are three currently active copyright
societies in India which are as follows;

 Indian Reprographic Rights Organisation (IRRO)

Indian Reprographic Rights Organisation is a copyright society founded in 2000 under Section 33 of the
Copyright Act of 1957. It protects the rights of authors and publishers of literary works and is affiliated with
international organizations such as IFRRO on a global scale. The Ministry of Human Resource Development,
Government of India, has granted IRRO the exclusive right to begin and carry on the copyright business of
“reprographic rights in the field of literary works” in India.

It is the sole licensing authority for issuing licenses to users of its members’ copyrighted works, collecting and
distributing royalties on behalf of rights holders. IRRO’s mission is to work towards ensuring that the
copyrights of authors, visual artists, and publishers are protected and to build a strong network that supports the
economic and moral rights of creators and publishers.
  Indian Performing Rights Society (IPRS)

The IPRS was established on 23 rd August 1969. It is a representative body of music owners, namely composers,
lyricists (or authors), and music publishers, and it is also the sole authorized body to issue licenses for the use of
musical works in India.

Its mission is to legitimize the use of copyrighted musical works by issuing licenses and collecting royalties
from Users for and on behalf of IPRS members, who are Authors, Composers, and Publishers of Music. After
deducting IPRS’s administrative costs, the royalties collected are distributed to members.

 Phonographic Performance Limited India (PPL India)

Phonographic Performance Limited India, is a performance rights organization that licenses its member’s sound
recordings for communication to the public in the areas of public performance and broadcast. It was founded in
1941. PPL owns and/or controls the Public Performance rights of over 400 music labels, representing over 4.5
million international and domestic sound recordings.

PPL India accounts for the lion’s share of total sound recordings in both international and domestic music. PPL
India represents some of the world’s and India’s largest record labels, including Aditya Music, Lahari Music,
Sony Music Entertainment, Speed Records, T-Series, Universal Music, and Warner Music, and is India’s largest
and most respected public performance rights organization, both in terms of membership and revenue.

Provisions for the registration of copyright societies: The provisions for registration of copyright societies
are stated in Section 33 of The Copyright Act, 1957. The Section states that no persons or body of persons or
associations are permitted to carry on the business of issuing or granting of licenses for any work in which
copyright subsists as mentioned in Section 13 of this Act.

However, those associations or bodies of persons or persons will be exempted from this provision who had
registered themselves under Section 33 of this Act. The Section further states that the owner of any copyrighted
work in his capacity will continue to have the power to grant licenses regarding his work with his/her
obligation, if any, as a member of the registered copyright society.
According to this Section, any kind of business of issuing or granting license in respect to the aspect of literary,
dramatic, musical, and artistic work incorporated in a cinematograph film or sound recording will only be
carried out through a registered copyright society.

As we already know, before the copyright society, the performing rights society was deemed as a legal body to
grant licences and its provisions were mentioned in Sections 33 to 36. With the onset of copyright societies, the
performing rights societies under the former provisions of Section 33 will be deemed to be a copyright societies
if such societies had registered themselves under the new Section 33 of the Copyright Act.

To register a copyright society under this Act, an application should be made to the registrar of copyright. The
registrar will eventually forward the application to the Central Government. The central government will take a
few considerations in order to grant registration. The conditions are:

 The interest of the authors and other owners of rights under the Act.

 Interest and convenience of the public.

 The interest of the class of persons who want to seek licences in respect of relevant rights.

 Capacity and professional competence of those who apply.

The central government usually does not register more than one copyright society for one class of work. If the
central government feels that a copyright society is being managed detrimental to the interest of authors and
other owners then they might cancel the registration of the copyright society. At times, the central government
may suspend the registration of a copyright society during the pendency of an enquiry for a period of not
exceeding one year.

Provisions regarding tariff scheme: As per Rule 14 J of the Copyright Rules, 1958, the Copyright Society
shall frame a scheme of tariff to be called the ‘Tariff Scheme’.

It helps to set out the nature and quantum of fees or royalties which it purposes to collect in respect of such
copyright or other rights administered by it within three months from the date on which it has become entitled
to commence its copyright business. Tariff schemes help to get any sort of monetary benefit in the respect of
any copyright or any such right administered by it. This scheme provides a transparent mechanism to all the
stakeholders and licensees.

Under Indian law, the provisions for Tariff Scheme are stated in Section 33A of this Act. This Section states
that every copyright society might publish its Tariff Scheme in a manner as prescribed in Copyright Rules,
2013. The Section further states that if any person is aggrieved by such a scheme, he/she may appeal to the
appellate board.

After such an appeal, the board will hold an enquiry and if it feels necessary then might make orders to remove
any unreasonable element. However, the aggrieved person must continue to pay to the copyright society until
the appeal is decided. During an enquiry, the board might also fix an interim tariff and direct the parties
accordingly.

Provisions relating to the power of copyright societies: The powers of copyright societies are mentioned
in Section 34 of the Act. The Section states that:

 A copyright society might accept exclusive authorisation of any copyrighted work from the author and
other owners of such rights. By accepting such exclusive authority, they issue licenses or collect the
license fees or both.

 An author or any other owner of rights might withdraw search authorisation, without injuring any rights
of the copyright society under any contract.

The copyright society might enter into an agreement with any foreign society or organisation administrating
rights corresponding to rights under this act to entrusting to such a society in any foreign country the rights
administered by the said copyright society in India and vice versa. However, such a society should not
discriminate in regard to the terms of licence or distribution of fees collected between rights in India and other
works.

The Section further states certain powers of copyright societies. The powers are:
  Any copyright society can issue a licence under Section 30.

 Such societies can collect fees regarding licenses.

 They can also distribute fees among authors or other owners, provided that they had kept the money for
their expenses.

 They are also permitted to perform any other functions under Section 35.

Provisions regarding the control of copyright societies: According to Section 35, every copyright society is
subjected to the collective control of the authors and other owners of rights, whose rights are being administered
by the society. However, foreign societies are exempted from this control.

The manner in which the copyright societies are being controlled are:

 The copyright society needs to obtain the approval of authors and other owners of rights for the
procedure of collection and distribution of fees.

 They also need to obtain approval from authors and other owners for the utilisation of any amounts
collected as fees.

 They also need to provide full and detailed information to authors or other owners of rights regularly
regarding all the activities about administration.

The Section further states that all the fees which are required to be distributed among the authors and other
owners of rights must be distributed in proportion to the actual use of their works. Every copyright society must
have a governing body with the members elected from the members of the society. Lastly, all the members of
copyright societies must enjoy equal membership and should not be discriminated against.

Provisions regarding the submission of returns and reports: According to Section 36, every copyright
society must submit reports or returns to the Registrar of Copyright. The Central Government can also appoint
any officer who would be assigned to take and scrutinize all the reports of the copyright society.
Provisions regarding the rights and liabilities of performing rights society: As per Section 36A, the rights
and liabilities of performing rights societies that had accrued on or before the day before the commencement of
the Copyright (Amendment) Act, 2012, will not be affected by anything mentioned under chapter VII of the
Copyright Act, 1957.

Confusion among certain provisions: There might be an ambiguity that arises in the mind of the people while
reading Section 18 along with Section 30 and Section 33. Section 18 of the Act states that the owner or author
of any work had the right to grant the copyright to any person of his/her choice.

On the other hand, the owners of copyright had the power to grant a licence under Section 30 of this Act.
However, Section 33 creates a specific bar on any other person to grant a licence except those who are
registered as a copyright society under this Act. The Act does not clarify this ambiguity in the statutes, thereby
leading to confusion.

In the case of Event and Entertainment Management Association vs. Union of India and others, (2010), the
Delhi High Court held that Novex Communication Pvt. Ltd. which is not a registered copyright society under
Section 33 can continue to operate its business within the ambit of Section 18 and Section 30.

However, in the case of Leopold Cafe and Stores vs. Novex Communication Pvt. Ltd., (2014), the Bombay High
Court banned Novex Communication Pvt ltd. and restricted its business to grant licenses. These two opposite
judgments created confusion among the people. This issue of a conflict between the Sections had still not been
addressed as such.
Case laws

1. IPRS Limited vs. Hello FM Radio (Malar publications Limited).

Facts:
According to this case the Indian Performing Rights Society Limited (IPRS) secured an injunction from the
Delhi High Court against Hello FM Radio (Malar Publications Limited).

The defendants were broadcasting the songs without obtaining licenses from the Indian Performing Rights
Society Limited (IPRS).In this case IPRS wanted either Hello FM Radio (Malar Publications Limited) should
obtain license or have to stop broadcasting the songs, or both.

Held:

In this case the Delhi High Court granted the injunction. By restricting Hello FM Radio from playing music
without obtaining license from the Indian Performing Rights Limited (IPRS).

2. The Indian Performing Rights vs. Kolkata knight Riders.

Facts: A suit on copyright violation against Kolkata Knight Riders (KKR) was filed on May 14th, 2008 by The
Indian Performing Rights Society (IPRS). The allegation was about playing 14 popular Hindi film songs like
“Om Shanti Om” during IPL matches at Eden Gardens without permission.

Held: The Kolkata High Court refused the application for an injunction on the use of the songs and directed the
parties to file affidavits. This matter is yet to be decided.

3. Indian Performing Rights Society vs. Eastern India Motion Pictures Association & Others, AIR 1977
SC 1443.

In this case the Supreme Court held that the author/ composer of a lyrics or musical work and thereby permitted
him to appropriate his work by incorporating or recording it on the sound track of a cinematograph film cannot
restrain the owner of the film from causing the accosted portion of the film to be performed or projected or
screened in public for profit or from making any record embodying the recording in any part of the sound track
associated with the film by utilizing such sound track or from communicating or authorizing the communication
of the film by radio diffusion as Section 14(1)(c) of the Copyright Act permits the owner of the Copyright of the
cinematograph film to do all these things.

4. Eastern India Motion Pictures vs. The Indian Performing Right Society, AIR 1978 Cal 477.

Facts: When a Cinematograph film producer commissions a composer of music or a lyricist for valuable
consideration for film or composing music or lyrics for that film, i.e.; the sounds for incorporation in the sound
track, he becomes the first owner of the copyright therein’ No Copyright subsist in the composer of the lyrics or
music so composed unless there is a contract to the contrary between the composer of the music and the film
producer.

Held: Following the decision of the Supreme Court in AIR 1977 SC 1443, the High Court allowed the appeal
and the order under appeal was set aside.

5. Indian Performing Rights Society vs. Debashish Patnaik and Another, 2007.

Facts: In this case, Justice Geeta Mittal of the Delhi High Court while examining the claim of copyright
infringement made by the IPRS against a hotel in Orissa, held that the defendants are liable for the infringement
of copyright by communication of musical works of the plaintiff to the public in the hotel rooms in the
defendant’s hotel without authorization of or permission from the IPR’s.

Held: Even if the defendant stayed away from the judicial proceedings, a plaintiff could not be deprived of its
claim for damages. The Court decreed the suit in favour of IPRS, granting a sum of RS. 141788/- towards the
actual compensatory damages and the sum of three lakh rupees as punitive damages, along with the interest of
10% a year on the amount from the date of decree till payment.

6. Phonographic Performance Limited and Others vs. Music Broadcast Private Limited and Others
[Bombay High Court].
Facts: In this case, Phonographic Performance Limited filed an appeal in the High Court of Bombay to which
the FM Radio companies filed a cross-appeal. For the first time, a court interpreted the Compulsory License
Provision could be granted for the Copyrighted work. Differentiating between the thresholds for approaching
the Copyright Board in Section 31 compliant.

Held: In this case, the Court held that a reasonable royalty rate is only a criterion when entertaining a complaint
for compulsory licensing relating to broadcasts. In respect of each other types of publication, the complainant
had to establish that the work had been withheld from the public by virtue of the copyright owner’s refusal to
grant a license.

Amendment in 2012: The Copyright Act has been amended five times including the amendment in 2012. The
amendment is of vital importance because it created conformity with the international standards established
by WIPO Copyright Treaty or known as WCT and WIPO Performances and Phonograms Treaty also known as
WPPT.

This amendment also holds special importance regarding the copyright societies. Previously, the copyright
society did not recognise the rights of the authors. This created several legal issues between the authors and the
owners of rights along with the copyright societies.

However, with this amendment, the term ‘author’ was introduced in the provisions. The inclusion of the authors
in the copyright society ensured that the governing body of every copyright society shall have an equal number
of authors and owners for administration and there will be no discrimination between authors and owners of
rights in the distribution of royalties.

The amendment also inserted the provisions for Tariff schemes and repealed the provisions for payment of
remuneration by copyright society.

Conclusion

Copyright is very essential in today’s world. There are different copyright societies in India for different
purposes. Copyright society plays an important role in the life of those authors and owners who have copyright
on their work. Society helps such authors and owners in the field of business regarding earning monetary
benefits. It also helps the authors and the owners to be associated with foreign societies.

The aim of the Copyright Societies is to collect the royalty and to take appropriate actions against any
infringement in various copyrighted works. Thus, different Copyright Societies help copyright owners to make
an association with foreign countries. Hence, the Copyright Societies play an important role in order to make
Copyright owners associate with business people easily and earn money.
Remedies against Infringement of Copyright

Protection of rights under the copyright law, which is basically a negative right is as much a problem of
complying with the mandatory provisions of the procedural law as the effective exercise of investigative and
adjudicatory functions by the enforcing authorities and the courts.

Section 54 to Section 62 of the Copyright Act provide for civil remedies under the Act. Section 55 provides that
where copyright in any work has been infringed, the owner of the copyright can, except as otherwise provided
in the Act, be entitled to all remedies like injunctions, damages and accounts as are conferred by law for the
infringement of a right. However, if the defendant proves that at the date of the infringement he was not aware
and had no reasonable ground to believe that copyright subsisted in the work, the plaintiff will not be entitled to
any remedy other than an injunction in respect of the infringement and a decree for the whole or part of the
profits made by the defendant by the sale of the infringing copies as the court may, in the circumstances, deem
reasonable.

In Zee Telefilm Limited v. Aalia Productions & Others 2000 PTC 382 Bom. there was a dispute relating to
transfer of copyright in TV serial ‘India’s Most Wanted’. It was held that in the absence of any specific rights
assigned by the defendants in respect of concept/script/story/synopsis/structure and/or format of programme, the
plaintiffs cannot seek injunction against the defendant. The assignment agreement executed between the
plaintiff and the defendants as regards structure, format, concept, synopsis and script vague and uncertain, the
plaintiffs are not entitled to any interim relief.

The case of Hawkins Cookers Ltd. v. Magicook Appliances Co., 100(2002) DLT698 discussed the grant of
permanent injunction to the plaintiff for restraining the defendant from using a label for pressure cookers, which
was deceptively similar to the registered trade mark ‘HAWKINS’ of the plaintiff – On non-appearance of the
plaintiff, an ex-parte order was passed and it was ruled that, the unjust enrichment by the infringing party, was a
mischief and the plaintiff was to be protected from it as per Section 55 of the Copyright Act, 1957. Hence
permanent injunction was granted.
In any civil proceedings under the Copyright Act for infringement of copyright, it is the District Court which
will have jurisdiction over such matters. Section 62 (2) further provides that notwithstanding anything contained
in the Civil Procedure Code, 1908 or any other law for the time being in force, the District Court within the
local limits of whose jurisdiction the person instituting the suit is actually or voluntarily residing or carrying on
business or personally working for gain will have jurisdiction in the matter.

Administrative remedies consist of moving the Registrar of Copyrights under Section 53 to ban the import of
infringing copies into India and the delivery of infringing copies confiscated to the owner of the copyright.

Criminal remedies provide for the imprisonment of the accused or imposition of fine or both, seizure of
infringing Copies and delivery of infringing copies to the owner of the copyright. Prior to the maximum
punishment for infringement of copyright under Section 63 of the Copyright Act, 1957 was one year's
imprisonment and fine. These punishments were enhanced by the Copyright (Amendment) Act, 1984 with a
view to curbing widespread piracy in video-taping and musical records. Under these provisions, a person who
knowingly infringes or abets the infringement of copyright in a work or any other right conferred by the
Copyright Act, is punishable with imprisonment for a term of not less than six months but which may extend to
three years and fine which shall not be less than ` 50,000/-, but which may extend to ` 2.00,000/-. However, the
court has the discretion to reduce the minimum ter n of imprisonment and the minimum fine for adequate and
special reasons. For the second and subsequent convictions, the minimum term of imprisonment has been
prescribed as one year and the minimum fine ` 1,00,000/-. The amendment in 1994, has further restricted the
discretion of the court to impose lesser penalties than the minimum prescribed in the Act. The imposition of
lesser penalties than the minimum prescribed in the Act has been restricted to cases where the infringement has
not been made for gain in the course of trade and business. In other words, courts have been given a discretion
to impose a lesser penalty where the infringement is of a technical nature and not motivated by business
considerations.

Section 54 defines the term owner of copyright. In Rupendra Kashyap v. Jiwan Publishing House 1996 PTC
(16) 439 Del., it was held that CBSE is a public undertaking; examination papers are literary work made under
the direction and control of CBSE and applicability of Section 17(dd) of Copyright Act is squarely attracted to
the facts of the case. CBSE is the first owner of the copyright in the examination papers on which examinations
are conducted by it.

In another case Allahabad high Court has held that the copyright in the question papers set for the High School
and Intermediate examinations belongs to the paper-setters and since this copyright neither belonged to nor has
been assigned to the Board, the notification which declares that ‘copyright of the question papers set at the
examinations conducted by Board shall vest in the Board’ is clearly bad. Simply by issuing a notification under
the Intermediate Education Act, the State Government could not arrogate to itself or to the Board a right which
neither of them possessed under the law relating to copyright, embodied in the Copyright Act of 1957
(Agarwala Publishing House v. Board of High School and Intermediate Education & Another AIR 91: 1996 All
LJ 550).

Section 58 entitles the owner of the copyright to initiate proceedings for the possession of infringing copies and
other materials related thereto. In this context, the section clarifies that all infringing copies of any work in
which copyright subsists and all plates used or intended to be used for the production of such infringing copies
shall be deemed to be the property of the owner of the copyright.

Moral Rights — Author’s Special Right

Apart from remedies for infringement of copyright, the Act expressly provides for the protection of special
rights of the author known as moral rights. Under Section 57 of the Act an author of copyright work can
restrain or claim damages in respect of any distortion or mutilation of the work or any other action in relation to
the said work which would be prejudicial to his honour or reputation. These rights can be exercised even after
the assignment of the copyright. They can be enforced by an action for breach of contract or confidence, a suit
for defamation, or passing off, as the case may be.

Anton Pillar Injunctive Relief in India

Besides traditional remedies the non-traditional forms of remedies like, Anton Piller Order, interlocutory
injunction, etc, have assumed more popularity nowadays.

The first use of such order was made by Templeman J, in EMI v. Pandit, (1975) 1All E R 418, to protect the
offending evidences from being destroyed. However, it was only after the case of Anton Piller KG v.
Manufacturing Process,(1976) 1All E R 779.418, that it gained recognition and popularity.

The statutes governing intellectual property in India like Copyright Act, 1957, Trade Marks Act, 1999; Patents
Act, 1970 (as amended by Patents (Amendment) Act, 2005, Designs Act, 2000 etc. stipulate the rights that are
available to the intellectual property owner, besides containing a sound mechanism to prevent the infringement
of intellectual property rights. The remedies available for protection of IPR are broadly classified into civil and
criminal remedies.

The orders in line of Anton Piller order are made under the head of civil remedies. The application of Anton
Piller order in India is still in a nascent stage. There is not much case-laws debating over the aspects of Anton
Piller order. One of the earliest case that dealt with the concept of Anton Piller order, though cursorily was
National Garments v. National Apparels,(1990) PTC98.

In Bucyrus Europe Ltd. v. Vulcan Industries Engineering Co. Pvt. Ltd., 2005(30) PTC 279, the court observed
that an Anton Piller order can be passed in the following situations:

 Where the plaintiff has an extremely strongly prima facie case;

 Where the actual or potential damage to the plaintiff is very serious.

  Where it was clear that the defendant possessed vital evidence; and

 There was a real possibility that the defendant might destroy or dispose of such material so as to defeat
the ends of justice.

The purpose of Anton Piller order is the preservation of evidences.

The application of Anton Piller order in India is still in nascent stage and lot many questions are still left
unanswered.

APPEALS

An appeal under the the Copyright Act, 1957 lies against (a) certain orders of magistrate & (b) against orders of
Registrar of Copyrights and Copyright Board:-

As per Section 71 of the Act any person aggrieved by an order under sub-section (2) of Section 64 or Section 66
may, within thirty days of the date of such order, appeal to the court to which appeals from the court making the
order ordinarily lie, and such appellate court may direct that execution of the order be stayed pending disposal
of the appeal.

Section 72(1) provides that any person aggrieved by any final decision or order of the Registrar of Copyrights
may, within three months from the date of the order or decision, appeal to the Copyright Board.
Any person aggrieved by any final decision or order of the Copyright Board, not being a decision or order
made in an appeal under sub-section (1), may, within three months from the date of such decision or order,
appeal to the High Court within whose jurisdiction the appellant actually and voluntarily resides or carries
on business or personally works for gain :

However, no such appeal shall lie against a decision of the Copyright Board under Section 6.

INTERNATIONAL CONVENTIONS

The first multilateral agreement on copyright is the Berne Convention which was concluded in 1886 and was
meant for providing protection to literary and artistic works. A country joining the Convention has to
provide copyright protection to literary and artistic works of member countries in its own territory and also
entitled for enjoying reciprocal protection from others. The Berne Convention was revised seven times in
1896 (at Paris), 1908 (at Berlin), 1928 (at Rome), 1948 (at Brussels), 1967 (at Stockholm) and 1971 (at
Paris) and finally in 1978. Among these, the 1971 revision (the Paris Act) is of particular importance to the
developing countries as it provided special concessions to these countries in making translations and
reproduction of foreign literary works for educational purposes. Ninety countries are at present member of
the Berne Convention.

The post Second World War era saw the emergence of the need for protecting copyright on an universal
basis. Till then countries in the North America were not party to the Berne Convention and copyright
protection in these countries were governed by various national and regional agreements.

In August, 1952 the Intergovernmental Copyright Conference was convened in Geneva which led to the
adoption of another historical copyright convention, namely the Universal Copyright Convention (UCC).
The UCC is not a substitute for the Berne Convention. Rather it tried to establish the link between the
countries on the Bern Union and those in North America. India is a member of both the Berne Convention
and the UCC.

TRIPS Agreement negotiated at the Uruguay Round of General Agreement on Tariffs and Trade (GATT) in
1994 came into effect on 1 January 1995. The text comprises 73 articles grouped in seven different parts.
The standards for specific IPRs such as copyright and related rights are discussed under articles 9-14.
 UNIT - 5

GEOGRAPHICAL INDICATIONS

Introduction

A Geographical Indication (GI) is a sign used on products that have a specific geographical origin and
possess qualities, reputation, or characteristics inherent to that location. This system of intellectual property
(IP) protection acknowledges that certain products have distinct qualities due to their place of production,
whether that distinction comes from natural factors (like climate, soil) or human factors (like traditional
methods of production or craftsmanship). Geographical Indications (GIs) serve not only as marketing tools
but also as mechanisms for protecting cultural heritage and promoting rural economies.

GIs are an important element of global trade and local identity, playing a role in promoting products ranging
from agricultural goods like Champagne and Darjeeling tea to artisanal crafts like Swiss watches and
Kanjeevaram silk. However, there are legal and economic complexities involved in securing and enforcing
GI protection both domestically and internationally.

Definition and Characteristics of Geographical Indications

1. Specific Origin: A product must come from a particular geographical location.

2. Unique Qualities: The product must possess qualities, reputation, or characteristics due to its geographical
origin, often related to climate, soil, or traditional knowledge.

3. Link between Product and Territory: There must be a strong connection between the product and its
region of origin, in terms of production, processing, or preparation methods.

The use of GIs is essential for safeguarding traditional production methods, promoting local cultures, and
protecting consumers from misleading information regarding the origin or quality of products.

Purpose of Protecting Geographical Indications

1. Protection of Local and Traditional Knowledge: GI protection ensures the preservation of traditional
knowledge and cultural heritage associated with specific products, often handed down through generations.

2. Promotion of Economic Development: GI-labeled products are often associated with higher quality and
can fetch premium prices in both domestic and international markets. This promotes the development of
rural economies, offering farmers, artisans, and local producers a competitive advantage.
3. Consumer Protection: GIs help consumers make informed choices by assuring the quality and authenticity
of products. They prevent consumer deception by ensuring that only those products truly originating from
the designated regions can use the GI label.

4. Preventing Misuse: GIs prevent the unauthorized use of a geographical name by businesses outside the
designated region, which might exploit the name for marketing benefits without adhering to the traditional
methods or maintaining the product’s quality.

5. Fostering Fair Trade: GI protection helps in preventing unfair competition by ensuring that non-regional
producers cannot capitalize on the reputation of region-specific products.

International Legal Framework for Geographical Indications

1. Paris Convention for the Protection of Industrial Property (1883): The Paris Convention, one of the
earliest international agreements on intellectual property, recognized indications of source and appellations
of origin as forms of intellectual property. It paved the way for further development of GI protection.

2. TRIPS Agreement (1994): The Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS) under the World Trade Organization (WTO) sets the minimum standards for GI protection
globally. Article 22 of TRIPS defines GIs and obligates members to provide legal means to prevent the use
of misleading indications of origin. Article 23 offers enhanced protection for GIs for wines and spirits,
prohibiting the use of such names even when the true origin of the product is indicated (e.g., "Champagne-
style").

- Article 22: Provides general protection for all products.

- Article 23: Provides additional protection for wines and spirits, prohibiting any use that even hints at a
false geographical origin (e.g., "Champagne-style" sparkling wine from outside the Champagne region).

3. Lisbon Agreement for the Protection of Appellations of Origin (1958): Administered by the World
Intellectual Property Organization (WIPO), the Lisbon Agreement provides protection for appellations of
origin and ensures that products from a designated area are given a higher level of protection. The Lisbon
Agreement, though, has fewer members compared to TRIPS.

4. Madrid Agreement (1891): The Madrid Agreement primarily deals with the repression of false or
misleading indications of source on goods, helping to prevent unfair competition involving GIs.

5. Geneva Act of the Lisbon Agreement (2015): This act expanded the scope of the Lisbon Agreement by
allowing the protection of GIs, not just appellations of origin. The Geneva Act also aimed at making the
system more accessible to a wider range of products.

National Systems for GI Protection

Various countries have implemented their own systems for protecting GIs based on international
agreements, tailored to their economic, cultural, and legal contexts. Some key national approaches include:

1. European Union: The EU has one of the most developed systems for protecting GIs. It distinguishes
between:

- Protected Designation of Origin (PDO): For products where all stages of production, processing, and
preparation take place in the defined region (e.g., Parmigiano-Reggiano cheese).

- Protected Geographical Indication (PGI): For products that have at least one stage of production,
processing, or preparation within the defined region (e.g., Melton Mowbray pork pies).

- Traditional Specialty Guaranteed (TSG): Protects traditional recipes and production methods, even if
they don’t depend on a specific geographic area (e.g., Mozzarella cheese).

2. India’s Geographical Indications of Goods (Registration and Protection) Act, 1999: India introduced its
GI Act to provide comprehensive protection for GIs, covering a wide range of products, including
agricultural goods, handicrafts, and manufactured products. The act has been instrumental in protecting
famous Indian GIs like Darjeeling tea, Basmati rice, and Kanjeevaram silk.

3. United States: In the U.S., GIs are generally protected under trademark law. Producers can seek protection
under certification marks or collective marks if they can demonstrate that the products originate from a
particular region and adhere to specific standards. For example, Napa Valley wines are protected through a
certification mark.

Forms of Protection for GIs

1. Certification Marks: GIs can be registered as certification marks, indicating that the product meets certain
standards or comes from a particular geographical region. For example, Roquefort cheese is protected by a
certification mark in the U.S.

2. Collective Marks: GIs may also be protected as collective marks, used by members of a specific
association to indicate that their products originate from a particular region and meet specific quality criteria.
For example, the Consorzio del Parmigiano Reggiano uses a collective mark to protect the reputation of
Parmigiano-Reggiano cheese.

3. Sui Generis Systems: Some countries, like India and the European Union, have developed dedicated sui
generis systems for protecting GIs. These systems provide specific legal frameworks that protect GIs
independently of trademark law. The EU's PDO and PGI systems are examples of sui generis GI protection.

Leading Case Laws on Geographical Indications

1. Champagne (France) vs. U.S. Producers

 - Champagne is one of the most famous GIs and is protected under both the TRIPS Agreement and the
EU's PDO system. Producers outside the Champagne region of France (notably in the U.S.) have used the
name "Champagne" for sparkling wines, leading to international disputes. The Comité Interprofessionnel du
vin de Champagne (CIVC), the regulatory body for Champagne, has successfully fought to stop non-French
producers from using the term "Champagne."

- In a notable case, the U.S. agreed to protect the term "Champagne" under a bilateral trade agreement with
the EU, although existing producers were allowed to continue using the term as a "grandfathered" right. This
reflects ongoing tension between protecting traditional European GIs and more liberal U.S. trademark
practices.

2. Darjeeling Tea Case (India)

- Darjeeling tea was the first GI to be registered under India’s GI Act in 2004. The Tea Board of India has
worked extensively to protect Darjeeling tea against misappropriation, particularly from foreign companies
using the name "Darjeeling" for tea that did not originate from the region.

- A major legal success occurred when the European Court of Justice ruled that Darjeeling tea was a
protected GI in Europe, and any misleading use of the name could be stopped. The ruling helped prevent
foreign producers from marketing their tea as Darjeeling, protecting both the reputation of the tea and the
livelihoods of its growers.

3. Basmati Rice Case (India-Pakistan)

- Basmati rice is a long-grain aromatic rice traditionally grown in the Indian subcontinent, particularly in
the regions of India and Pakistan. Attempts by companies outside of these countries to trademark the name
"Basmati" have led to international disputes.

- In 1997, RiceTec Inc., a U.S. company, attempted to patent certain strains of Basmati rice and trademark
the term "Texmati." India and Pakistan objected, arguing that Basmati is a traditional product of the region
and cannot be monopolized by foreign companies.

- After legal proceedings, RiceTec was forced to drop most of its patent claims, and the case underscored
the need for cross-border cooperation in protecting shared GIs like Basmati rice.
 Traditional Knowledge and Its Protection

Introduction

Traditional knowledge (TK) refers to the long-established knowledge, innovations, and practices of
indigenous and local communities that are passed down through generations. TK is often related to
agriculture, health, biodiversity, environmental management, and cultural expressions. This knowledge has
contributed to sustainable practices, medicinal use, and various innovations. However, the protection of TK
has increasingly become a pressing issue due to the potential exploitation by corporations, biopiracy, and the
lack of recognition or benefit-sharing with the communities that hold such knowledge.

Protecting TK involves legal, ethical, and policy-related challenges. The growing concern over biopiracy,
patenting of TK-based products without fair compensation, and the need to respect and preserve the cultural
identity of indigenous communities have pushed for an evolving legal landscape both internationally and
domestically.

Characteristics of Traditional Knowledge

1. Collective Ownership: TK is generally owned collectively by a community rather than by individuals.

2. Intergenerational Transfer: TK is passed from generation to generation, making it dynamic and evolving
over time.

3. Cultural Context: TK is rooted in the culture, spiritual beliefs, and practices of the community.

4. Oral Transmission: Much of TK is unwritten and passed down orally, posing a challenge in
documentation and legal protection.

5. Holistic Nature: It often integrates knowledge systems across various domains such as biodiversity,
medicine, agriculture, and cosmology.

Protect Traditional Knowledge

1. Prevent Biopiracy: Biopiracy involves the unethical or unauthorized use of TK or biological resources by
individuals or companies for commercial gain. For instance, corporations have patented plants or processes
based on TK without acknowledging the source communities.

2. Preserve Cultural Heritage: TK forms an integral part of the cultural heritage and identity of indigenous
communities. Loss of TK could mean the loss of cultural diversity and indigenous ways of life.
3. Fair and Equitable Benefit Sharing: Protection of TK ensures that the communities that possess such
knowledge receive fair compensation or benefits when their knowledge is used for commercial purposes.

4. Sustainable Development: TK plays a key role in conservation and the sustainable use of biodiversity,
agriculture, and natural resources. The preservation of TK promotes environmental sustainability.

5. Recognition and Respect for Indigenous Rights: Protecting TK is closely linked to the broader issue of
indigenous rights, including land rights, self-determination, and cultural integrity.

Legal Frameworks for Protecting Traditional Knowledge

1. International Legal Frameworks - Convention on Biological Diversity (CBD), 1992: The CBD recognizes
the importance of TK and encourages the equitable sharing of benefits arising from the use of genetic
resources. Article 8(j) of the CBD explicitly requires parties to respect and preserve TK and promote its
wider application with the approval and involvement of TK holders.

- Nagoya Protocol, 2010: A supplement to the CBD, the Nagoya Protocol provides a legal framework for
the fair and equitable sharing of benefits arising from the utilization of genetic resources, including TK. It
also emphasizes obtaining prior informed consent (PIC) from indigenous communities before using their
knowledge.

- World Intellectual Property Organization (WIPO): WIPO has been at the forefront of developing
frameworks for TK protection through its Intergovernmental Committee on Intellectual Property and
Genetic Resources, Traditional Knowledge, and Folklore. WIPO aims to bridge the gap between intellectual
property law and the protection of TK through the establishment of sui generis systems.

- United Nations Declaration on the Rights of Indigenous Peoples (UNDRIP), 2007: UNDRIP affirms the
rights of indigenous peoples to maintain, control, and protect their cultural heritage, TK, and traditional
cultural expressions.

2. Regional and National Approaches

- Peru’s Law No. 27811 (2002): Peru introduced a sui generis law to protect collective knowledge of
indigenous peoples related to biodiversity. The law establishes a framework for access to TK and ensures
equitable benefit sharing.

- India’s Biological Diversity Act, 2002: India has enacted the Biological Diversity Act, which
incorporates measures for the protection of TK and provides for a National Biodiversity Authority (NBA) to
regulate the access to biological resources and associated TK. The NBA also facilitates benefit-sharing
arrangements.
 - African Union Model Law: The African Union developed a model law on community rights and access
to biological resources. This law emphasizes the protection of TK, ensuring that indigenous and local
communities have control over the use of their knowledge.

Forms of Legal Protection

1. Sui Generis Systems: A sui generis system is a unique form of protection that is specifically tailored to the
nature and needs of TK. This system recognizes the communal ownership of TK and provides for its
protection outside the conventional intellectual property framework. Examples include Peru’s Law No.
27811 and India’s Biological Diversity Act.

2. Intellectual Property (IP) Protection: While conventional IP systems like patents, copyrights, and
trademarks are not well-suited for TK due to its collective ownership and the fact that it evolves over time,
some aspects of TK may still be protected under existing IP regimes:

- Geographical Indications (GIs): GI protection can be used to safeguard products based on TK by linking
them to a specific geographical region. For example, Darjeeling tea from India has been protected as a GI.

- Patents: Some elements of TK can be patented if they meet the criteria of novelty, non-obviousness, and
industrial applicability. However, the patenting of TK-based knowledge by individuals or corporations
without the consent of TK holders raises ethical concerns.

- Trade Secrets: TK can be protected as a trade secret if it is kept confidential within the community.

3. Customary Law: Indigenous and local communities often have their own systems of customary law that
govern the use and transmission of TK. Recognizing and integrating customary law into national legal
systems is another approach to protecting TK.

Key Case Laws on Traditional Knowledge Protection

1. Turmeric Patent Case (India)

- In 1995, two U.S. researchers were granted a patent for the use of turmeric in wound healing. However,
turmeric has been used in India for centuries for its medicinal properties. The Indian government challenged
the patent, arguing that the use of turmeric was part of India's traditional knowledge and therefore not novel.
The U.S. Patent Office eventually revoked the patent in 1997. This case highlighted the need to document
and protect TK from being misappropriated.

2. Neem Patent Case (India)

- In the 1990s, the European Patent Office (EPO) granted a patent to a U.S. company for the use of neem
extract in pesticides. Neem has been used in India for centuries for its medicinal and agricultural properties.
The patent was challenged by Indian organizations and the patent was eventually revoked in 2000, as the
EPO recognized that the use of neem was part of traditional knowledge in India.

3. Ayahuasca Case (U.S.)

- In 1986, a U.S. citizen was granted a patent for a variety of the Ayahuasca plant, which is used by
indigenous communities in the Amazon for spiritual and medicinal purposes. Indigenous groups and
environmental organizations challenged the patent, claiming it was an act of biopiracy. In 1999, the U.S.
Patent Office revoked the patent on the grounds that the plant had been known and used by indigenous
peoples for centuries.

4. Basmati Rice Patent Case (India-U.S.)

- In 1997, the U.S. company RiceTec was granted a patent for certain strains of Basmati rice, a staple in
India and Pakistan. India challenged the patent, arguing that Basmati rice is a product of traditional
agricultural practices in the Indian subcontinent. After a long legal battle, RiceTec lost several claims of the
patent in 2001, but retained some.

Challenges in Protecting Traditional Knowledge

1. Documentation and Codification: Much of TK is transmitted orally, making it difficult to document and
codify in a way that is recognized by modern legal systems. There are also concerns about the possible loss
of secrecy and control once TK is documented.

2. Defining Ownership: TK is collectively owned by communities, but modern IP systems focus on

individual ownership. This creates difficulties in determining who has the right to control and benefit from
TK.

3. Consent and Benefit Sharing: Ensuring that communities give their free, prior, and informed consent
(FPIC) before their TK is accessed, and that they receive a fair share of the benefits, can be difficult to
enforce.

4. Global Enforcement: Even when TK is protected at the national level, enforcing protection across borders
is challenging, particularly in cases of biopiracy or international trade.

5. Cultural Sensitivity: TK is often linked to the spiritual and cultural identity of a community. Legal
frameworks must be sensitive to the cultural context of TK, which may not align with commercial or legal
definitions of property rights.

The Role of Databases in TK Protection :One way to prevent the misappropriation of TK is through the
creation of TK databases. For example:
- India’s Traditional Knowledge Digital Library (TKDL): TKDL is a collaborative project between the
Council of Scientific and Industrial Research (CSIR) and the Ministry of AYUSH in India. It aims to
prevent the misappropriation of TK, particularly in the fields of medicine and agriculture, by documenting
and translating TK into formats accessible to patent offices worldwide.

Conclusion: The protection of traditional knowledge is crucial for safeguarding the cultural heritage, rights,
and sustainable practices of indigenous and local communities. While the current legal frameworks, both at
the
 CONFIDENTIAL INFORMATION AND TRADE SECRETS

Introduction

Confidential informationandtrade secretsare vital components of intellectual property (IP) law, playing an
essential role in protecting business practices, technological innovations, and commercially valuable
information. Unlike patents, copyrights, or trademarks, which provide publicly registered rights, confidential
information and trade secrets protect knowledge that is kept secret, deriving its value from being unknown
to competitors.

Trade secrets include formulas, practices, processes, designs, instruments, or compilations of information
that provide a business advantage over competitors. Businesses and individuals often rely on confidentiality
agreements and legal protections under trade secret laws to safeguard sensitive information that provides a
competitive edge.

The challenge in protecting confidential information lies in balancing the need for legal protection with the
realities of open markets and employee mobility. Trade secret law protects against misappropriation, which
refers to unauthorized acquisition, disclosure, or use of confidential information.

Definition of Confidential Information and Trade Secrets

1.Confidential Information :

- Confidential information is broadly defined as any information that is not public and has value to the
business because it is kept secret. This could include business plans, customer lists, pricing strategies, or
product designs.

- The information must be confidential, meaning it is not generally known or easily accessible, and must
be shared with an expectation of confidentiality.

2.Trade Secrets :

- Trade secrets are a subset of confidential information that meets specific legal criteria. Trade secrets can
include formulas, practices, processes, methods, or compilations of information, such as the recipe for Coca-
Cola, Google's search algorithm, or customer databases.

- To qualify as a trade secret, the information must:

- Be valuable because it is secret.

- Be known only to a limited group of people within the company.

- Be subject to reasonable efforts to maintain its secrecy (e.g., non-disclosure agreements, restricted access).

Importance of Protecting Confidential Information and Trade Secrets

1.Competitive Advantage : Businesses derive significant value from information that is not publicly
available. Trade secrets allow companies to maintain a competitive edge by preventing rivals from gaining
access to vital knowledge.

2.Cost-Effective Protection : Unlike patents, which require disclosure of the invention to the public and are
costly to obtain and maintain, trade secrets can be protected indefinitely as long as reasonable steps are taken
to keep the information confidential.

3.Innovation and Economic Growth : Trade secret protection encourages innovation by providing
businesses with a framework to invest in research and development (R&D) without fear of immediate
disclosure or copying by competitors.

4.Flexibility : Trade secrets cover a wide variety of business information, including customer lists,
manufacturing processes, financial strategies, marketing techniques, and software source code. This
flexibility allows businesses to protect a broad range of assets that may not be eligible for patent protection.

Legal Framework for Confidential Information and Trade Secret Protection

1.Common Law Protection

- Historically, confidential information and trade secrets have been protected under the common law
doctrine ofbreach of confidence . This doctrine imposes a duty of confidentiality on individuals who
receive sensitive information in circumstances where it is clear that the information was provided in
confidence.

- Breach of confidence can occur in various scenarios, such as when an employee leaves a company and
shares proprietary information with a competitor or when sensitive business data is disclosed in a contractual
relationship.

2.Statutory Protection

- In addition to common law protections, many countries have enacted statutory frameworks to safeguard
trade secrets. These statutes define what constitutes a trade secret and establish remedies for
misappropriation.

Key Statutory Frameworks :

 -United States: Uniform Trade Secrets Act (UTSA) : Adopted by most U.S. states, the UTSA provides a
uniform legal framework for the protection of trade secrets and defines trade secret misappropriation.

-Defend Trade Secrets Act (DTSA), 2016 : This federal law provides trade secret owners with the ability
to bring a civil lawsuit for misappropriation in federal courts. The DTSA supplements state laws and aims to
enhance protection, particularly in cases with cross-border elements.

-European Union: EU Trade Secrets Directive (2016/943) : The directive harmonizes the protection of
trade secrets across EU member states. It defines trade secrets and outlines measures to protect against their
unlawful acquisition, use, and disclosure. It also provides civil remedies for trade secret holders in cases of
misappropriation.

-India: While India does not have a specific trade secrets statute, trade secrets are protected under common
law principles, including contract law, equity, and tort law. Indian courts have historically enforced
confidentiality agreements and non-disclosure agreements (NDAs) to protect trade secrets.

-China: Trade secrets in China are primarily protected under theAnti-Unfair Competition Law . In recent
years, China has strengthened its trade secret laws as part of its broader efforts to improve intellectual
property protection.

3.Contractual Protection

-Non-Disclosure Agreements (NDAs) : NDAs are commonly used to protect confidential information.
These agreements legally bind the parties to maintain secrecy and not disclose or use the information for
unauthorized purposes.

-Non-Compete Agreements (NCAs) : Some businesses also use NCAs to prevent employees from
joining competitors and taking valuable trade secrets with them. However, the enforceability of non-
compete clauses varies significantly across jurisdictions, with some countries or states limiting or
prohibiting such agreements.

4.Reasonable Efforts to Maintain Secrecy

- To qualify as a trade secret, the information must be subject to "reasonable efforts" to maintain its
secrecy. This can include:

- Limiting access to the information.

- Using encryption and secure storage for sensitive documents.

- Requiring employees and contractors to sign NDAs.

- Implementing clear policies and procedures for handling confidential information.

 Elements of Trade Secret Protection

1.Confidentiality : The information must be kept confidential and not be generally known or readily
accessible by competitors or the public.

2.Economic Value : The information must derive its value from being secret. If competitors could gain an
economic advantage by knowing the information, it is more likely to qualify as a trade secret.

3.Efforts to Maintain Secrecy : The business must take reasonable steps to protect the secrecy of the
information, such as implementing security measures, confidentiality agreements, and restricted access.

Misappropriation of Trade Secrets

Trade secretmisappropriationoccurs when a trade secret is acquired, disclosed, or used without the consent
of the owner and in a manner contrary to legal or contractual obligations.

Common forms of misappropriation include:

-Theft or Espionage : When an individual unlawfully acquires a trade secret, such as by hacking into a
computer system or physically stealing documents.

-Breach of Contract : When an employee or business partner violates an NDA or other agreement by
disclosing or using confidential information.

-Industrial Espionage : This includes covert efforts by companies or states to obtain trade secrets from
competitors, often using illegal means.

Remedies for Trade Secret Misappropriation

When trade secret misappropriation occurs, the trade secret owner can seek various remedies, including:

1.Injunctions : Courts can issue injunctions to prevent the further use or disclosure of the trade secret.

2.Damages : Courts may award damages for the economic harm caused by the misappropriation. This can
include compensatory damages, unjust enrichment, and, in some cases, punitive damages.

3.Seizure Orders : In certain jurisdictions, trade secret owners can request a seizure order to prevent the
dissemination of misappropriated information. For example, under the DTSA in the U.S., courts can issue
seizure orders to recover trade secret materials from the misappropriator.

4.Criminal Prosecution : In some cases, trade secret misappropriation can lead to criminal charges,
particularly when the misappropriation involves theft, fraud, or espionage.
 Leading Case Laws on Confidential Information and Trade Secrets

1.Coca-Cola Trade Secret Case (U.S.)

- Coca-Cola’s recipe is one of the most famous examples of a trade secret. The company has taken
extraordinary measures to keep the formula confidential for over a century.

- In 2006, a former Coca-Cola employee, Joya Williams, was convicted of attempting to sell trade secrets
to Pepsi. Williams had stolen confidential information related to Coca-Cola’s product development and
offered to sell it to Pepsi for $1.5 million. Pepsi, however, reported the incident to Coca-Cola and law
enforcement authorities. Williams was sentenced to eight years in prison.

- This case underscores the importance of internal security measures and the potential for severe penalties
in trade secret theft.

2.DuPont v. Christopher (U.S.)

- In this 1970 case,DuPont , a chemical company, was developing a new plant that used a secret process
for producing methanol. Two men,Christopher and another individual , flew over the plant in a plane and
took aerial photographs of the construction site. DuPont sued, arguing that the men had misappropriated
their trade secret by gaining access to the confidential manufacturing process.

- The court ruled in favor of DuPont, holding that the defendants had committed "improper means" to
acquire the trade secret. The case established the principle that trade secret owners can take action even if
the information was obtained through non-traditional methods, such as aerial photography.

-Significance : This case expanded the definition of trade secret misappropriation, showing that any
improper acquisition of confidential information, even without direct theft, can result in legal liability.