QUESTION NO 1

Two inventors A and B worked on the same invention without known about
each other’s. A without completing the invention filed an application for
patent along with provisional specification and was pending for publication of
application. After that B completing the entire invention filed application
along with complete specification. Decide who is entitled to get patent.

🞭 A is entitled to get patent

🞭 Date of priority: The date on which you submitted your application along
with specification, either provisional or complete from which priority is
being claimed is called the priority date.
🞭 Section 11 of Patent Act: Date of Priority of claims of complete
specification.
🞭 Section 13 of Patent Act: the patent application filed first on the same
inventive concept gets the priority over the application filed thereafter.
🞭 Even if it is accompanied by a provisional specification, it will be treated
as complete application provided the applicant filed complete
specification within 12 months.
🞭 Accordingly, the subsequently filed application, although filed along with
the complete specification, is anticipated by the “first filed” application
QUESTION NO 2
Zayer, a multinational pharmaceutical company obtained patent for their
drug named exaver which is used in the treatment of patients suffering
from kidney and liver cancer. The cost of the medicine was very high. Hence
an Indian company, Acto pharma applied for compulsory license. Decide.

Entitled to get if falls under

Compulsory License : Section 84
In accordance with Section 84(1) of the Indian Patent Act, 1970, after three
years from the grant of a patent, any interested person may make an
application for a compulsory license on the grounds that the patented
invention:
(a) Does not satisfy the reasonable requirements of the public or
(b) Is not available to the public at a reasonably affordable price; or
(c) Is not worked in the territory of India.
Apart from that the applicant has to prove that he had made all efforts to
obtain voluntary license from the patentee and applied for compulsory
license only when the same was failed.
Case: Bayer Corporation vs Union of India (Nexavar Case)
QUESTION NO 3
During 1997 Zeevachi, a German based pharmaceutical giant filed an application
to grant patent to an anticancer drug Slivac which is used to treat Chronic Myeloid
Leukemia (CML) and Gastrointestinal Stromal Tumours (GIST) on the basis that it
invented the beta crystalline salt form (imatinib mesylate) of the free base,
imatinib and same was granted. Then they submit an application in the black box
during 2003 for product patent of an improved form of the drug and the same was
rejected by the patent office during 2006 which was confirmed by the intellectual
property appellate board. An appeal was filed by the company. Decide.

Not entitled to get patent.

Section 3(d) of Patent act “the mere discovery of a new form of a known substance
which does not result in the enhancement of the known efficacy of that substance
or the mere discovery of any new property or new use for a known substance or of
the mere use of a known process, machine or apparatus unless such known process
results in a new product or employs at least one new reactant”
The Explanation to this section states that: For the purposes of this clause, salts,
esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures
of isomers, complexes, combinations and other derivatives of known substance
shall be considered to be the same substance, unless they differ significantly in
properties with regard to efficacy.
Novartis v. Union of India
QUESTION NO 4
“SWANIK” is a multinational company engaged in the
business of manufacture and sale of electronic goods
especially refrigerators. They had registered their trade
mark “SWANIK” in India in the year 1948 but failed to
renew registration from 1978 onwards. An Indian company
who was engaged in the manufacture and sale of pressure
cooker went for registration of the word SWANIK for their
pressure cooker and got it registered. The original owners
of the trade mark file a suit for passing off. Decide.

Amounts to passing off and entitled to get remedy

Well known trade mark
Cases: N.R. Dongrev Whirlpool Corpn, Rolex Sa v. Alex
Jewellery Pvt Ltd & Ors
QUESTION NO 5
Both the applicant and respondents were running
hospitals under the Trade Marks “Sarovara Hospitals Pvt
Ltd” and “Sarovara Institute of Medical Science”
respectively one based at Rajasthan and the second
based at Karnataka. Trade Mark of the first hospital was
already registered and the second hospital went for
registration of their trade mark. Decide.

If comes under honest concurrent use both of them

were entitled to get registration
Honest Concurrent Use
Kores (India) Ltd v M/s Khoday Eshwarsa and Son
Goenka Institute of Education and Research v. Anjani
Kumar Goenka and Another
QUESTION NO 6
Mr Rajeev was working as a staff cartoonist in the news
paper “ The Mirror” and he is the creator of a cartoon
character “ Uncle Sam” which was created even before
joining the new paper. His cartoon columns criticizing
politics and current events which was published on a daily
basis in “ The Mirror” gained many viewers. During 2015 Mr
Rajeev resigned from “ The Mirror” and joined “ Real
Frames” another news paper and continued his cartoon
column. Publishers of “ The Mirror “ filed an injunction suit.
Decide.

Author is having right over the cartoons

Author and Owner
Section 17(c) of Copyright Act.
V.T Thomas v. Malayala Manorama
QUESTION NO 7
Mr Krishnadas who is a popular lyrist entered into an agreement with
Anamika Productions, a company engaged in the production and
distribution of films whereby he agreed to write five songs for the
new film. He wrote five songs as agreed and given to the producer.
Out of the five songs only three songs were included in the film but
the other two songs were also included in the CD. Mr Krishnadas had
given the two songs which were not included in the film to another
producer for using the same in his film. Anamika Productions
challenged the same. Decide
Author and Owner
Regarding the Cinematographic film taken as a whole Producer is the
author and also the owner. But when the different works incorporated in
the films are taken individually, the creator of the work is the author and
producer is the owner. (Shree Venkatesh Films Pvt. Ltd. v. Vipul Amrutlal
Shah & Ors Calcutta High Court)
Copy right Act and Law of Contract.
Interpretation of section 17 ( c) and Law of Contract.
Breach of contract. Revert back to the original owner.
QUESTION NO 8
“ Taarsha” is a famous brand selling cosmetics under the trade mark “ Saa Taarsha” all
over India for more than fifty years and also having international reputation, but the
trade mark was not registered in India. Another cosmetic company having area of
business in South India succeeded in registering the trade mark “ Zaa Tarsha” for their
cosmetic
products. Taarsha wants to challenge the same. Advice

Well known trade mark

As per section 11 which deals with relative grounds for refusal of registration of trade
mark well known trade marks are not entitled for registration a
Section 11(6): How to decide a trade mark is well known mark.
section 11(9) : Conditions not required to recognize
Registration is not needed to be recognized as well known trade mark (N.R. Dongrev
Whirlpool Corpn)

But Section 11 (11) states Where a trade mark has been registered in good faith
disclosing the material informations to the Registrar or where right to a trade mark has
been acquired through use in good faith before the commencement of this Act, then,
nothing in this Act shall prejudice the validity of the registration of that trade mark or
right to use that trade mark on the ground that such trade mark is identical with or
similar to a well-known trade mark.
Decision based on the interpretation of the above provisions
QUESTION NO 9
University of Belhara filed an application for infringement against a publishing
company “Support You” who published a guide compiling previous question
papers on the ground that Copy right of the question papers vested with the
University. Decide.

Section 13 of Copyright Act: Requirement of originality.

Concept of originality
U.K : Sweat of the brow doctrine
U.S : Modicum of creativity
India: Flavour of minimum requirement of creativity.
Cases: University of London Press v University of Tutorial Press (UK) it was held
that question papers are eligible for copyright protection.
Agarwala Publishing House vs. Board of High School and Intermediate
Education
Jagdish Prasad v. Parmeshwar Prasad
Rupendra Kashyap vs. Jeevan Publishing House
In all these cases it was held that question papers are original literary works
entitled to copy right protection.
The question of ownership depends on the terms.
QUESTION NO 10
Gautham Raj is a famous south Indian singer who sang more than 1000 songs in films
of various languages. Zee Net a famous Malayalam channel organized a musical show
for supporting the aged and economically weak musicians including singers, lyrist and
composers and also announced that the entire amount receiving in the show both
through tickets and broadcast will be given to a trust working for the benefit of these
musicians. After the show Gautham Raj filed a suit against Zee Net as his songs were
sung without his permission. Decide
Performers right.
Section 38 A : Rights of Performers.
Section 39: Acts not infringing broadcast reproduction right or performer’s right which
also includes those do not constitute infringement of copyright under section 52.
Section 52: Exceptions to copyright infringement
Section 52 (1) (k) (ii): A recording to be heard as part of the activities of a club or
similar organisation which is not established or conducted for profit.
Kartar Singh Giani v. Ladha Singh, the High court held that: “two points have been
urged in connection with the meaning of the expression fair, in fair dealing (1) that in
order to constitute unfairness there must be an intention to compete and to derive
profit from such competition and (2) that unless the motive of the infringer were unfair
in the sense of being improper the dealing would be fair.”
Interpretation of section 38A which mandates consent from the performer and Section
52 which deals with fair dealing.
QUESTION NO 11
“Rackle” a private limited company engaged in the
manufacture of electronic goods launched a new iphone
under the trade mark “Satire” which was a big success.
Their opponent company launched another iphone under the
trade mark “ Lafire”. Rackle wants to challenge it. Decide.

Absolute Grounds for refusal of registration of trade mark

Concept of deceptive similarity
Section 9 (2)
(Corn Products Refining Co. v. Shangrila Food Products Ltd)
Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited
M/S Lakme Ltd. v. M/S Subhash Trading (Lakme and likeme
not deceptively similar)
Not deceptively similar
QUESTION NO 12
Sooraj Automobile Industries was granted patent Titled “An internal improved
combustion engine working on four stroke principle” (DTS-i Technology). Their
invention was on the application of twin plugs in small bore engines with improved
merits of fuel efficiency and emission characteristics. ABS Automobiles, another
famous company announced to launch motorbike of 125 CC which was powered
with a lean burn internal combustion engine having twin spark plug configuration.
Sooraj Automobiles sought remedy for patent infringement. Decide.

Amounts to infringement
Interpretation of Specifications
Doctrine of pith and marrow and
Doctrine of Equivalents: The doctrine of equivalents permits a finding of
infringement even if the accused device or method does not literally fall within the
scope of the construed patent claims. Instead, a device or method may infringe
under the doctrine of equivalents if it performs “substantially the same function in
substantially the same way to obtain the same result” as the patented invention.
(Case: Graver Tank & Mfg Co v Linder Air Products, Warner-Jenkinson Co v Hilton
Davis Chem Co (US Cases), Lallubhai Chakubhai v Chimanlal & Chunilal & CoBajaj
Auto Ltd vs Tvs Motors Ltd,.
QUESTION NO 13
Raja Puthra Productions, a company engaged in
production and distribution of film having its registered
office at Anderi Nagar, Mumbai had produced a movie on
Patriotism during 2015 with the title “HINDUSTHAN
HAMARA HAI” inspired by a Bengali movie BHARATA. Mr
Sandipan Bhatacharya, the script writer of the film
Bharata filed a suit for infringement of copyright against
Raja Puthra Productions at Howrah District Court in West
Bengal.

Idea Expression dichotomy

Ideas not copyrightable.
Baker v. Selden
R.G Anand vs Deluxe Films (Facts similar to this case)
QUESTION NO 14
Mr Sandeep Chopra, a famous hindi lyrist filed a suit
before Anderi District Court against Ram Raj productions,
producers of the film MAASTHA claiming damages
contending that his song used in the Hindi movie SUHANI
was copied in this film in a distorting manner. The
contentions of the defendants were that Sandeep Chopra
is not having any right over the song. Decide

Authorship and ownership

Moral rights of Authors (Section 57)
Section 13 (4)
Amar Nath Sehgal v. Union of India
Sandeep Chopra is having right to claim compensation
for distorting his work as he being the author.
QUESTION NO 15
YK productions production company having its registered office at
Surat Nagar Delhi filed a suit for copy right infringement before
District Court Delhi contending that they had produced a film
during 1995 with the title “HINDUSTHAN HAMARA HAI” and hence
they are having copy right over the film title which was used by
other producer for their film. Decide.

Movie titles explicitly don’t come within the ambit of the Copyright
law (Krishika Lulla and Ors. v. Shyam Vithalrao Devkatta and Ors)
Movies titles, under the Trademarks Act, can be registered under
Schedule 4, class 41 which includes a number of services
including entertainment. Normally movie titles are common name
and hence to qualify for registration, the director has to show that
his movie title acquired a secondary meaning amongst the
masses and that is to say that it was popular enough to be
recognised as a distinctive work (‘Nisshabd’ case).
QUESTION NO 15
In Sholay Media Entertainment Pvt. Ltd. & Ors. v. Parag Sanghavi &
Ors, the plaintiffs were allowed to register and claim protection on the
titles of their movie along with the names of a few characters such as
‘Gabbar Singh’. Here too, the principle of secondary meaning was
applied but what is to be seen is that the movie ‘Sholay’ was one of
the most renowned movies of its time and hence could claim
protection.
The same is applicable in the case of slogans also. Slogan carry the
philosophical burden of a brand. Slogan conveys the message of the
business alongside the brand and at times it is the brand or more
important than the brand. Slogans give a halo to the business or
brand appeal and also referred to a tag line (Procter and Gamble vs.
Anchor: Slogan : All Round Protection).
Slogans are protected as trade mark under Section 2(m) and 2 (zb) of
Trade Marks Act, 1999. Slogan if not registered as trade mark can be
protected through common law remedy of passing off ( Delhi High
Court in the case of Pepsico Inc. vs. Hindustan Coca Cola Ltd. & Anr:
slogan: Dil Mange More).
QUESTION NO 16
A', a beautiful woman asks 'B', a painter to paint her and
offers to portrait, pay ten thousand rupees on completion of
painting. B agrecs and paints. The painting is very beautiful
and attractive. A rich businessman wants to purchase the
painting and offers a lucrative sum. 'B' is ready to sell the
painting. ‘A objects and is ready to pay ten thousand rupees
to 'B as per agreement between them. Decide.

Women is the owner of that photograph,

Section 17 (b): Subject to the provisions of this act in the
case of a photograph taken, or a painting or portrait drawn,
or an engraving or a cinematograph film made, for valuable
consideration at the instance of any person, such person
shall, in the absence of any agreement to the contrary, be
the first owner of the copyright therein;
QUESTION NO 17
'P" had written a novel in Bengali language in the year 1912. 'P
died in 1920. Mr. 'S', translated it into Malayalam in 2006, without
obtaining permission either from the Bengali Publishers or from
P's legal representatives. Discuss the legal consequences under
the provisions of the Copyright Act.

The general rule is that copyright lasts for 60 years. In the case of
original literary, dramatic, musical and artistic works the 60-year
period is counted from the year following the death of the author
(section 22).
Right to translate: Translation is the action/process of turning from
one language into another. Owner is having the right to translate.
As held in Blackwood v Parasuram, translations are also subject to
copyright.
In this case as the term of copyright expired it is in public domain
and hence does not amounts to infringement.
QUESTION NO 18
Mr.X, has been manufacturing certain medicines under the trade
mark of GOODMAN'S' for more than four decades, and his
medicines had become very popular. Mr. Y, applied for registration
of the trade mark of GOODMAN'S for the same type of medicines.
Mr. X objects to it. The contention of Mr. Y is that Mr. X had not
registered his trademark for the medicines sold by him. Decide.

If it is a well known trade mark X will succeed

As per section 11 (2) (b) if the mark which is seeking to be
registered is similar to a well know mark it is not entitled for
registration.
Section 11(6) says how the registrar has to determine a trade
mark as a well known mark. So if X’s trade mark falls under the
criteria mentioned in Section 11 (6) it is a well known mark and Y
is not entitled for registrstion.
Well known trade mark registration not mandatory. (Section 11 (9)
QUESTION NO 19
'A', an Amercian citizen, gets a patent on an invention in America, in January,
2000 °B’, an Indian, applies for patent on the same invention in India. Is 'B'
entitled to get a patent in India. Decide.

No in order to get patent protection in India it should satisfy the conditions of

novelty, inventive step and industrial application. An invention is considered
'novel' if it is not in the public domain anywhere in the world. One of the
prerequisites for granting a patent for an invention is that the invention must
be new or novel. It says that an invention can be termed as a new invention if
it has not been anticipated by publication in India or abroad, before the filing
of the patent application. Lack of novelty is usually referred to as 'anticipation'
and is determined by factors such as prior publication, public knowledge and
public use, commercialized products and selection inventions. While
anticipation is not expressly defined in the Patent Act, sections 29 to 34
provide a few situations in which inventions can be safeguarded from being
called ” anticipated“.
Anticipation of invention is said to occur when the claim filed for a patent
includes subject matter identical to any “prior art reference” i.e. the claim is
not different from previously existing knowledge or a previously patented
invention in the said field.
QUESTION NO 19
If the question is whether the patent granted in America will be extended to
India the answer is No and if any one infringe the right of Mr A in India he
cannot initiate any legal action.
Patents are territorial and must be filed in each country where protection is
sought. Since the rights granted by a U.S. patent extend only throughout the
territory of the United States and have no effect in a foreign country, an
inventor who wishes patent protection in other countries must apply for a
patent in each of the other countries or in regional patent offices. So as per the
Paris Convention commonly known as Paris Route file separate patent
applications at the same time in all of the countries in which you would like to
protect your invention. So the patent granted to A by US patent office does not
extend protection in India
To overcome this difficulty the Patent Cooperation Treaty force on January 24,
1978. The treaty facilitates the filing of applications for patent on the same
invention in member countries by providing, among other things, for
centralized filing procedures and a standardized application format. The timely
filing of an international application affords applicants an international filing
date in each country which is designated in the international application and
provides (1) a search of the invention and (2) a later time period within which
the national applications for patent must be filed.
QUESTION NO 20
Anpat gets a patent for a chemical drug and delivery system solely to be used for curing
common cold in human beings. A year later, tests reveal that its continued use for more than
a week results in blood cancer to the user. Can the patent be revoked on the ground that the
invention is not useful ?

Revocation of patent
Principally, Section 64 contains in-exhaustive grounds that dictate the conditions that warrant
the revocation of patents.
Apart from the grounds mentioned under section 64, according to section 66 If the Central
Government find the facts that a granted patent has been exercising by wrong means and it
is mischievous to the State or prejudicial to the public, the central government has rights in
the case to revoke the concerned patent and such decision is also published in official journal
of patents.
In such cases give the patentee an opportunity to be heard, make a declaration to that effect
in the Official Gazette and thereupon the patent shall be deemed to be revoked.
The provision has been used twice in India to revoke patents. The first instance was in the
year 1994 (Agracerus’s Patent) and the second one happened way later in 2012
(Avasthagen’s Patent ).
During the year 2012 the Government revoked Avasthagen’s Patent invoking the provisions
of Section 66. Avasthagen had obtained a patent protection for a medicine/tonic for
controlling diabetes from the Indian Patent Office. This patent was granted for “synergistic
ayurvedic/ functional food bioactive composition”. The patent which was granted in April,
2012 was revoked on the grounds of being mischievous and prejudicial to the public.
QUESTION NO 21
Anmol is an Indian farmer who has purchased seeds of a registered
plant variety for cultivation in his fields. Anmol wants to use a portion of
his harvest to re-sow his fields in the next season as well as to sell
some to his neighbor for a profit. Will Anmol be infringing the law if he
does what he wants to do?

Farmers Right under Plant variety protection and farmers right act.
As per section 39(1)(iv) farmers are having right to access to seed
which means a farmer can save, use, sow, re-sow, exchange, share or
sell his farm produce including seed of a variety protected under the
PPV&FR Act, 2001 in the same manner as he was entitled before the
coming into force of this Act provided farmer shall not be entitled to sell
branded seed of a variety protected under the PPV&FR Act, 2001.
“Branded seed” means any seed put in a package or any other
container and labelled in a manner indicating that such seed is of a
variety protected under this Act.
Here as Anmol wants to sell a portion of his harvest, it does not
amounts to infringement as it is not a branded seed.
QUESTION NO 22
Blessy, who takes coaching classes for college students, prepares course packs containing
photocopies of relevant portions of copyrighted works for her students. Is she liable for infringing
the copyright of the original authors ?

Economic rights of Owner of Copy right

Right to Reproduce: Infringement of right to reproduce includes photocopying a book, copying a
computer software program, using a cartoon character on a T-shirt, and incorporating a portion of
another’s song into a new song. It is not necessary that the entire original work be copied for an
infringement of the reproduction right to occur. All that is necessary is that the copying be
substantial and material.
Section 52: Exceptions to Copy right infringement / fair use doctrine. The fair nature of the dealing
depends on the following four factors:
the purpose of use
the nature of the work
the amount of the work used, and
the effect of use of the work on the original
In the case of Kartar Singh Giani v. Ladha Singh, the High court held that:
“two points have been urged in connection with the meaning of the expression fair, in fair dealing
(1) that in order to constitute unfairness there must be an intention to compete and to derive profit
from such competition and (2) that unless the motive of the infringer were unfair in the sense of
being improper the dealing would be fair.”
If it is copied for educational or research purpose without profit motive it falls under section 52 and
escaped from copy right infringement.
But here taking coaching class definitely involves commercial element and profit motive and if so
amounts to infringement.
QUESTION NO 23
A huge quantity of coal is mined from Ravi's village by Coal Company Ltd. Ravi wants to use the
provisions of the Biological Diversity Act,2002 to claim for his villagers, by way of a benefit
sharing arrangement with the company, a portion of profits earned from the use of coal by Coal
Company Ltd. Ravi has approached the National Green Tribunal with his plea. Decide.

Ravi will succeed.

Convention on Biological Diversity prohibits illegal access and unauthorized use of genetic
resources and traditional knowledge and obliges that if somebody is going to use genetic
resources to make an invention, he may access the genetic resources with the prior informed
consent by the providers, and has a benefit sharing arrangement with the providers.
In order to comply Convention on Biodiversity our parliament had enacted Biological Diversity
Act in 2002 in order to conserve biodiversity, manage its sustainable use and enable fair and
equitable sharing benefits arising out of the use of biological resources with the local
communities.
At the national level, the National Biodiversity Authority (NBA) is established to deal with all
matters relating to implementation of the Act and the Rules. The National Biodiversity Authority
is mandated to regulate use of India’s biological resources; facilitates/ enable conservation
action and provides advice to Central and State Governments on issues of conservation,
sustainable use and access and benefit sharing.
To check misappropriation of Indian biological resources, the Act provides that access to Indian
biological resources and associated knowledge are subject to terms and conditions, which secure
equitable sharing of benefits. Section 21 of the act deals with determination of equitable
benefit sharing by National Biodiversity Authority for giving approval to access the biological
divorces for research or for commercial purpose.
Benefit sharing under section 21 includes
(a) grant of joint ownership of intellectual property rights to the
National Biodiversity Authority, or where benefit claimers are
identified, to such benefit claimers;
(b) transfer of technology;
(c) location of production, research and development units in
such areas which will facilitate better living standards to the
benefit claimers;
(d) association of Indian scientists, benefit claimers and the local
people with research and development in biological resources
and bio-survey and bio-utilisation;
(e) setting up of venture capital fund for aiding the cause of
benefit claimers;
(f) payment of monetary compensation and other non-monetary
benefits to the benefit claimers as the National Biodiversity
Authority may deem fit.
QUESTION NO 24
A member of the Copy Rights Board who had a personal interest in a work
participated in the decision making process when the matter came before the
Board.. The party against whom the decision came questioned the validity of the
decision of the Board. Decide.

According to Sec. 12(5) of The Copyright Act, 1957 no member of Copyright Board
should take part in any proceedings before the Board in respect of a matter in
which he has a personal interest. It can definitely be challenged.
Copy Right Board
The Copyright Board, a quasi-judicial body, was constituted in September 1958.
The jurisdiction of the Copyright Board extends to the whole of India. The
copyright board is a body constituted by the central govt. to discharge certain
judicial function under the Act. The Board is entrusted with the task of
adjudication of disputes pertaining to copyright registration, assignment of
copyright, grant of Licenses in respect of works withheld from public, unpublished
Indian works, production and publication of translations and works for certain
specified purposes. It consists of a chairman and not more than fourteen other
members who hold office for a period of 5 years. The first and foremost function of
the copyright board is to look after whether the provisions of the Act are followed
without any violation or infringement and to adjudicate certain cases pertaining to
copyrights. They are having the power of a civil court.
QUESTION NO 25
Application for registration of the trade mark filed by
an Indian national. was rejected on the ground that
the application was not filed in the country of its
origin. Decide the legality of the decision

Rejection of the application is valid as eventhough

registration is not mandatory for protection of trade
mark there are some benefits for registered trade
mark. First only registered trade mark holder can
initiate infringement proceedings. Secondly
International Registration of Trade Mark under Madrid
Agreement can be initiated only if it is registered in
the country of its origin as per the national legislation.
QUESTION NO 26
X tried to register and avail protection for a
frivolous invention under the patent law. Y
contented that there is clear violation of law in
providing such patent and hence it shall be
cancelled. Decide.

Section 3 Inventions which are not patentable

Section 3(a): Inventions which are frivolous not
eligible for patent
Section 25 opposition of patent application and
grounds of opposition.
Any person can
QUESTION NO 27
Mr. Kumar was employed with a magazine firm 'X' He created a
cartoon character and published it in the magazine. The cartoon
series become very popular. Later Mr. Kumar moved to a new firm
and began to publish the same cartoon character with different
themes. Firm 'X' sued Mr. Kumar for copyright violation. Decide

Author and Owner

Section 17 (c) of Copyright act
V.T Thomas vs Malayala Manorama
Already discussed
Ownership depends upon whether it is contract of service or for
service.
Even if it is a contract of service the publisher / employer has right
over the character only if it is created during the course of
employment. Otherwise the author is the owner of the character and
magazine has right over the series created during course of
employment.
QUESTION NO 28
'A' was registered proprietors of trademark
"GLUCON-D'". 'B sought for registration of
trademark "GOLDCON" for a similar product. Can
'B° get the trademark registration ?

Deceptive Similarity
Already discussed.
QUESTION NO 29
X a phamaceutical company had patent on its
cancer drug named Y'. The drug "Y' is comprised
of an alpha crystalline form of an organic
compound. Later the same company applied for a
new patent for the beta crystalline form of the
same drug which has a slight variation in its form
from its original drug. The Patent Controller
refused the application. Decide.

Section 3(d) of patent act

Novartis case
Already discussed.
QUESTION NO 30
Firm 'A' manufactured a lock with three levers.
Firm B' also
manufactured lock with two levers and named it
as "New link". Where as firm 'A' named their lock
as "Nav link" and raised an objection against firm
'B' as both the locks are deceptively similar.
Discuss.

Deceptive Similarity
Already discussed.
Mention all the important cases where court
determined what amounts to deceptive similarity
QUESTION NO 31
An employee of a productive company disclosed certain confidential formula to another
company for some money. What wrong he had committed? Discuss.

The employee has committed the offence of breach of confidence

Trade Secrets: Trade secrets are not protected by law in the same manner as trademarks or
patents. Probably one of the most significant differences is that a trade secret is protected
without disclosure of the secret. In India, trade secrets are not covered under any law. How ever
it can be protected under Law of Contract or Breach of confidence or Common law principles.
(Johny Richard Brady vs Chemical Process Equipment Pv ltd.)
Fixing of liability based on Spring Board Doctrine: The Spring Board doctrine has been explained
by the Courts as, “A person who has obtained information in confidence is not allowed to use it
as a springboard for activities detrimental to the person who made the confidential
communication, and springboard it remains even when all the features have been published or
can be ascertained by actual inspection by any member of the public.”
The Delhi High Court in John Richard Brady And Ors v. Chemical Process Equipments P. Ltd. and
Anr held that the law of trade secrets is not subject to contracts and that the breach of
confidential information depends upon the principle of equity that he who receives information in
confidence shall not take unfair advantage of it.
The principle behind this common-law doctrine is that when an ex-employee joins a competitor
with knowledge of a former employer’s trade secrets, he would inevitably disclose the same to
the new employer due to the nature of the new job, and hence, the former employer does not
need to wait for an actual or even threatened use of the trade secrets and he could seek legal
redress to prevent the ex-employee from taking up the job with the competitor and the new
employer from hiring the employee
QUESTION NO 32
X the author of a book has assigned his copyright to Y his publisher without any
written, signed document. There after the agent of the author has entered into an
agreement with another publisher to assign the copyright of the same book. Y
questioned the validity of the said transfer of copyright. Decide.

Assignment of Copyright is governed by three statutes: Copyright Act, Contract Act

and Stamp Act.
The assignment to be valid have to comply the conditions under Contract Act and
should have the following features under Copyright Act:
1) The terms and conditions regarding the revision and termination of the assignment
should be explicit.
2) The total amount of royalty should be mentioned.
3) The assignment should be in writing duly executed by the copyright owner
(Assignor).
4) The copyright work and the rights assigned should be mentioned clearly.
5) If the term of assignment is not mentioned, then the term shall be taken as 5 years
from the date of assignment by default. If the geographical limit is not stated, then it
is assumed to extent within India.
Hence Section 19(1) of the Copyright Act, 1957 clearly states that no assignment of
the copyright in any work shall be valid unless it is in writing signed by the assignor or
by his duly authorized agent. (Srimangal & Co v Books (India) Pvt Ltd, )
Oral Assignment is not permissible and invalid (Gramaphone
Company of India Ltd v Shanti Films Corporation)
In the given problem since the first assignment was not in
writing it is not valid. Assignment by the agent of the author to
another publisher is valid as it is in writing.
The only remedy available to Mr Yis to file a suit for breach of
contract. Under copy right law he is not having any remedy.
The Supreme Court in Indian Performing Rights Society v
Eastern Indian Motion Picture Association held that an existing
and future right of a music composer and lyricist is capable of
assignment, subject to the conditions that the assignment
shall take effect only when the work comes into existence and
the assignment is required to be in writing, signed by the
assignor or his duly authorized agent.
QUESTION NO 33
X filed an application for the registration of trade mark for the utility model in one of the
Paris Union countries. With in 6 months from the date of the application another person
filed a new application for trade mark registration. What will be the protection available
in this regard to the previous applicant?
Trademark registration is limited to territories. Any national trademark registration ends
at the end country’s boundary it does not allow its owner to entertain the rights of
Trademark Registration outside the nation boundaries.
The Paris Convention for the Protection of Industrial Property (Paris Convention) is the
principal international treaty protecting intellectual property rights, including patents
and copyrights as well as trademarks. The Paris Convention establishes that member
countries provide national protection to trademark owners from other countries who
apply for trademark protection, and that member countries afford intellectual property a
minimum level of protection. Hence since Mr X filed the application he is entitled to get
national treatment and if eligible entitled to get trade mark.
But under the Paris Convention, trademark owners must obtain separate trademark
protection in each Paris Union country. Foreign trademark registration was made easier
through an international trademark system established by The Madrid Agreement The
Madrid Agreement and the Madrid Protocol make it possible to file an application for an
International Registration, which will provide trademark protection in any of the
jurisdictions the applicant designates that are party to either or both of those treaties.
Although it is a separate agreement, the Madrid
Agreement flows from the Paris Convention.
QUESTION NO 34
A manufacturing company, tried to mislead the public and its consumers by using the
goodwill and trade secrecy of another company. On a proceedings against the alleged Act
of the company, the petitioner argued that the purpose, quality, and quantity of goods are
different in the said formation. The company contented that on the same ground they
shall be considered as fair competitor in this same field decide.

According to Article 3 of Model Provisions on Protection against Unfair Competition issued

by WIPO in the year 1997 any act or practice, in the course of industrial or commercial
activities, that damages, or is likely to damage, the goodwill or reputation of another's
enterprise shall constitute an act of unfair competition, regardless of whether such act or
practice causes confusion. Damaging another's goodwill or reputation constitutes an act of
unfair competition regardless of whether the act or practice concerned causes confusion
with or takes advantage of another’s goodwill or reputation.
According to Article 4 Any act or practice, in the course of industrial or commercial
activities, that misleads, or is likely to mislead, the public with respect to an enterprise or
its activities, in particular, the products or services offered by such enterprise, shall
constitute an act of unfair competition. Misleading may arise out of advertising or
promotion and may, in particular, occur with respect to (a) the manufacturing process of a
product;(b) the suitability of a product or service for a particular purpose; (c) the quality or
quantity or other characteristics of products or services; (d) the geographical origin of
products or services;(e) the conditions on which products or services are
offered or provided; and (f) the price of products or services or the manner in which it is
calculated.
According to Article 6 any act or practice, in the course
of industrial or commercial activities, that results in the
disclosure, acquisition or use by others of secret
information without the consent of the person lawfully in
control of that information and in a manner contrary to
honest commercial practices shall constitute an act of
unfair competition.
But the Intellectual Property laws were not redrafted
according to this and prevention of unfair competition
even if dealt under Trade Mark is only secondary as per
IPR laws. It can be bought under Infringement (Section
29) if trade mark registered or common law remedy of
passing off if misleading or to cause confusion among
the consumers is there.
Offence of passing off if misuse the good will of another
company and through that misuse misleads the consumers
. Elements of passing off. What constitute passing off
already mentioned in many case laws (Already discussed)
Honest Concurrent use. When it can be claimed.
Here not claiming honest concurrent use but fair
competition. If misusing the good will of a company for
misleading the consumers cannot be considered as fair
use and amounts to passing off.
Infringement will not applicable as it is not mentioned
about trade mark or registration
Trade secrets not protected under any legislation. Can only
brought under Breach of Contract and Breach of
confidence if such a relationship exist.
QUESTION NO 35
An industrial and commercial group utilized its advertisement
page to discredit the establishment, goods and activities of a
competitor company. Examine the liability of the group under
the law.

According to Article 5 of the Model Provisions on Protection

Against Unfair Competition issued by WIPO in the year 1997:
any false or unjustifiable allegation, in the course of industrial
or commercial activities, that discredits, or is likely to discredit,
another's enterprise or its activities, in particular, the products
or services offered by such enterprise, shall constitute an act of
unfair competition.
But this is not incorporated under Intellectual Property Laws. It
is dealt under the Competition Act 2002 and also under
defamation.
QUESTION NO 36
A foreign company distinguished the molecules, which give fragrance to the rice which is
grown in Himalayan Mountains and the company started to grow the rice variety in green
house and patented the same. The National Government brought the subject matter before
the WTO. Decide.

Patent and Geographical Indication

Basmathi Rice issue
During 1997 an American Company Rice Tec was granted patent by the US patent office to
an aromatic rice “ Basmati rice lines and grains” the long-grain rice variety known for its
distinct aroma and unique to the Indian subcontinent grown in the Northern side of India
and Pakistan affirming that it complies all the conditions of patentability including novelty.
India objected to it as India was the major exporter of Basmati rice which is known as the
“crown jewel” of South Asian rice but we were not having any specific legislation for
supporting the contentions. The contention was mainly based on the novelty of the rice
lines and grains and also using the term “ Basmati”. As it is already existing in India and
Pakistan it cannot be considered as Novel.
Under the TRIPS agreement which came into force in 1995, Basmati rice comes under
Geographical Indications and hence not patentable. A geographical indication (GI) is a sign
used on products that have a specific geographical origin and possess qualities or a
reputation that are due to that origin. Since the qualities depend on the geographical place
of production, there is a clear link between the product and its original place of production.
India brought the matter before WTO under the backing of TRIPS. India enacted
Geographical Indication Act and with the support of TRIPS and GL Act India managed to
force Rice Tec to withdraw their major claims on Basmati rice including the name and
patent claim of rice lines and grains.
Turmeric Case: U.S. granted a patent to two Indian
born scientists on the use of turmeric as a wound
healing agent . It was successfully lifted up by CSIR
(Council for Scientific and Industrial Research) stating
turmeric as a wound healing agent and its healing
properties to have been a ‘common knowledge’ in
India for centuries. As evidence they presented a
clause in the U.S. patent laws that it will accept any
information from anywhere in the world regarding
‘common knowledge’. As a result, India was able to
render published evidence in case of turmeric. The
case worked in favour of India and got the patent on
Turmeric revoked successfully.
Comes under Traditional Knowledge.
QUESTION NO 37
A mere discovery of a new form of an existing known substance without
enhancing the known efficacy of the substance was brought before the
patent office for registration. But they refused to grant patent. Examine
the validity of the said decision.

Section 3(d) of patent act.

The main objective of this new section is to prevent several
pharmaceutical companies from obtaining patents on old medicines
which are just a mere increment or trivial improvement of the known
substances and also a refusal to the patent on discovery of new form or
new use of old drugs and also the abolition of patent Evergreening.
“Ever-greening” refers to the different means a pharmaceutical patent
holder employs to exploit the legal loopholes of patenting to
extend/fortify monopoly typically over blockbuster drugs by either filing
disguised or artful patents on previously patented invention just before
the end of the term of the parent patent or employing other related
regulatory policies.
Novartis case (Already Discussed)
QUESTION NO 38
A scientist after conducting research on human genes invents human cloning, and he
applied for patent for his method of human cloning. Discuss.
Cloning generally means the isolation and duplication of genes or cells. Researchers have
been cloning animal, plant and other organism cells and genes for over many years. Cells
can be cloned by isolating them from the body through a biopsy and culturing them. The
cells will grow and divide, producing new cells identical to the original cells. The resulting
cells, called a ‘cell line’, have an identical genetic makeup. On July 5, 1996 Dolly (sheep)
was cloned using a technique known as ‘somatic cell nuclear transfer technology’.
Some countries allowed cloning also grant patent to genetic inventions (Amgen Inc v
Chugai Pharmaceuticals),
But in India by virtue of section 3 of Patent Act especially
Section 3 (a) which excludes those inventions which are against natural laws,
Section 3 (b) “An invention the primary or intended use or commercial exploitation of which
could be contrary to public order or morality or which causes serious prejudice to human,
animal or plant life or health or to the environment;
Section 3 (c) The mere discovery of a scientific principle or the formulation of an abstract
theory or discovery of any living thing or non-living substances occurring in nature;
Section 3 (j) “Plants and animals in whole or any part thereof other than micro-organisms
but including seeds, varieties and species and essentially biological processes for
production or propagation of plants and animals”
Human cloning is not patentable in India.
Not eligible to get patent
QUESTION NO 39
An examiner sets question papers for class 10 th after
putting a lot of efforts. Another teacher who was
asked to set question papers for class 10 th, he simply
copied the question papers set by the first examiner.
Is there any violation of copyright '? Discuss

Question papers entitled for copy right protection: yes

(Already discussed)
Act of infringement is exempted under Section 52: No.
Not falls under fair dealing and amounts to primary
infringement
Conditions to be satisfied for getting exemption under
section 52 already discussed.
QUESTION NO 40
X an American gets patent for a product he manufactured in America in December,
1999. He made an international application to India to extend similar protection for
his product in India too. Examine the matter and decide his entitlement for
protection.

Patent Corporation Treaty: The Patent Cooperation Treaty assists applicants in

seeking patent protection internationally for their inventions, helps patent offices
with their patent granting decisions, and facilitates public access to a wealth of
technical information relating to those inventions.
By filing one international patent application under the PCT, applicants can
simultaneously seek protection for an invention in a large number of countries.
The granting of patents remains under the national or regional legislation of the
national or regional patent offices. It is called the “national phase”.
Applicants and patent offices of contracting states benefit from uniform formality
requirements, international search, supplementary international search and
preliminary examination reports, and centralized international publication.
Moreover as per Article 8 of PCT the applicant can claim priority of one or more
earlier applications filed in or for any country party to the Paris Convention for the
Protection of Industrial Property by filing a declaration. So if the applicant had
already filed an application in any of the Convention county within a period of 12
months that date can be taken as priority date..
QUESTION NO 41
X company manufactured cold cream and
marketed the same under trade name 'Lakme'. 'Y"
company also manufactured cold cream and
marketed it by name "Likeme. 'X° company raised
objection. Decide.

Concept of deceptive similarity

Already discussed. Case: M/S Lakme Ltd. v. M/S
Subhash Trading (Similar facts)
QUESTION NO 42
Mr. "P an employee of "X’ firm sold a secret
formula to "Y firm, which was used in the
manufacture of life saving drug. Discuss his
liability.

Breach of confidence
Trade Secrets
Spring Board Doctrine.
Already Discussed
QUESTION NO 43
Mr. Anand marries Ms. Payal. Mr. Sharma was
engaged as photographer. One week after marriage,
when Anand approached Sharma for the wedding
album, Sharma refused to deliver the album by
raising the objection that he is the author of
copyright in photographs. Advise the parties.

Even though Mr Sharma is the author the owner of

the photograph are Mr. Anand and Ms. Payal as per
section 17 (b). Hence they are entitled to get the
photograph after paying the consideration and
economic rights vest with them even though the
moral rights vest with the photographer.
QUESTION NO 44
Mr. Q files an application for patent in respect of a device
which makes counterfeiting of currency notes easier and
effective. Is the device patentable ?

Not patentable
Conditions for getting patentability
But if falls under section 3 or 4 inventions are not patentable.
Section 3 (b). An invention, the primary or intended use of
which would be contrary to law or injurious to public health is
not patentable. Inventions in which the primary or intended
use or commercial exploitation of which could be contrary to
public order or morality (that is against the accepted norms of
the society and is punishable as a crime) or which causes
serious prejudice to human, animal or plant life or health or to
the environment are not patentable.
QUESTION NO 45
Mahesh is invited to deliver keynote address in an intellectual forum. He
could not attend the same due to unavoidable Circumstances and
entrusted the job to his P.A. Who delivered the address. State with whom
copyright on lecture delivered vests ?

Section 17 (cc) in the case of any address or speech delivered in public,

the person who has delivered such address or speech or if such person
has delivered such address or speech on behalf of any other person, such
other person shall be the first owner of the copyright therein
notwithstanding that the person who delivers such address or speech, or,
as the case may be, the person on whose behalf such address or speech
is delivered, is employed by any other person who arranges such address
or speech or on whose behalf or premises such address or speech is
delivered;

Here there is no issue of course of employment and hence Mahesh himself

is the author of copyright and copyright on the lectures delivered by his
PA vested with him.
QUESTION NO 46
Mr. X' produced the literature and the same was published by
Mr. 'Y’ a publisher without the permission of Mr. 'X and making
money, by paying some royalty to Mr. 'X'. Is it infringement
copyright vested in Mr. 'X' ? Decide.

Yes it amounts to infringement and the copyrights vested with

Mr X.
Even if the work was not published by Mr X, publication was
not mandated as a condition for getting copy right protection
as per section 13. As per section 13 if the work is original
expressed in a fixed form it is eligible for copy right protection.
Hence unpublished work are also eligible for copy right
protection as publication is not included as a condition.
Y is entitled to publish it by paying royalty only with the
consent of X by assignment or license.
QUESTION NO 47
An American firm obtained patent for Basmati
Rice. India filed an objection for the same as
Basmatic Rice is their own product. Nobody is
entitled to get patent for that. Discuss
patentability and liability of American term for
obtaining patent?

Patent and Geographical Indication

TRIPS
Basmati rice case
(Already discussed)
QUESTION NO 48
'P' is the patent holder for the drug named "TYROXINE' which is used in the
treatment of thyroid problems. 'A' a pharmaceutical company started to
produce a drug named 'XENOID 500' which has the same chemical
combination of drug TYROXINE' which is also used in the treatment of thyroid
problems. Advise P.

Amounts to Patent Infringement

Direct and Indirect of Induced Infringement
Doctrine of Equivalence for finding out indirect infringement: The doctrine of
equivalents permits a finding of infringement even if the accused device or
method does not literally fall within the scope of the construed patent claims.
Instead, a device or method may infringe under the doctrine of equivalents if
it performs “substantially the same function in substantially the same way to
obtain the same result” as the patented invention. One purpose of the
doctrine of equivalents is to protect patentees from those who seek “to evade
liability for infringement by making only insubstantial changes to a patented
invention. (Symed Labs vs. Glenmark Pharmaceuticals)
QUESTION NO 49
Mr. Gopal an author dictates a novel to his
stenographer. He took it down and typed it and
made it into a book form. Later on the stenographer
claims copyright in the novel as he has invested
sufficient skill and labour. Decide.

Author of literary work

Works dictated to a stenographer are the property
of the person dictating; in such cases, the copyright
belongs to the person dictating, not to the
addressee. Here the creativity and skill is that of the
person dictating and the stenographer is only
employing his labour
QUESTION NO 50
Arul, a textile designer, gives a confidential order to Jyothi, the owner of a textile mill, to
manufacture cloth as per his design. Due to a miscommunication, Jyothi manufacturers more
cloth than what Arul had ordered and sells the excess to Murugan to offset her loss. Murugan
uses the cloth to come out with his brand of shirts. Would the prior sale of shirts by Murugan
using the cloth originally designed by Arul affect Arul's subsequent application for the
registration of the design and his claim of copyright on the design ?

As per section 4 of the designs act which deals with conditions for registration of design, novelty
or newness is an essential requirement of an admissible design . Design shall be considered to
be new when it has not been disclosed to the public, anywhere in India or in any other Country,
by publication or by use or in any other way, prior to the filing date or priority date.
Another condition is that the design should not be published previously, If a design is made
available to the public or if it has been shown or disclosed to a person who is not bound to keep
it secret , then it constitutes publication of design . In Reckitt Benkiser India Ltd. v. Wyeth Ltd
Delhi High Court provided guidelines as to what amounts to 'prior publication' under The Designs
Act, 2000.
"In practical terms, there are two main ways in which a design can be published: by prior use of
the design, by selling or displaying to the public articles to which the design has been applied;
and by paper publications of one sort or another. It is not, in fact, necessary that publication
should be on paper; an oral disclosure, provided it is non-confidential, will amount to
publication."
What amounts to prior publication is a question of fact. It depends upon case to case.
In this case prior sale of shirts does not amounts to prior publication as the information was
given confidentially. Hence Arul is entitled for getting his design registered.
QUESTION NO 51
Merck pharmaceutical invented and patented a drug for treatment
of hypertension. Dr. Reddy's laboratories manufactured the same
drug using a different process other than that of Merck's and
marketed it under a different trade name in India. Merck filed an
infringement action. Decide.

Amounts to infringement after the patent amendment act 2005.

Before this amendment as per section 5 no product patents
available for food, drugs and medicines including the product of
chemical processes and hence the same product can be
manufactured by a different process and it does not amounts to
infringement. After 2005 amendment section 5 was deleted and
the difference between product patent and process patent was
taken away. Product patent was extended in the area of
pharmaceutical and other chemical inventions. So the inventor is
entitled for a new process or a product as the case may be.
Hence the infringement action by Merck will succeed.
QUESTION NO 52
A has registered a trade mark X. A gives his consent to B to use his trade
mark 'X'. B used X as trade mark in his product. Does it amount to
assignment ?

Section 38 of Trade Mark Act deals with assignment of trade mark which
sates that a registered trade mark shall be assignable and transmissible,
whether with or without the goodwill of the business concerned and in
respect either of all the goods or services in respect of which the trade
mark is registered or of some only of those goods or services.
A trademark shall not be assignable or transmissible in a case in which as
a result of the assignment there would be exclusive rights in more than
one of the persons concerned to the uses of (a) Same goods or services
(b) Same description of goods/service.
Section 45 of the Act deals with Registration of assignment.
Mere consent is not enough for a valid assignment. Assignment of trade
mark is valid only as per the conditions mentioned in section 38 to 40 and
45 and also the exceptions mentioned in section 41 to 44.
In the given problem it cannot be considered as a valid assignment.
QUESTION NO 53
A Physics Professor while doing research in the University laboratory made an invention. He
filed an application for grant of patent for his invention. University in which he is worked
opposed the same and claimed patent. Discuss.

Where employee-created patents are used by the employer, it must be made clear whether
the employee was under a duty to invent, and whether ownership of the patents is to be
assigned to the employer. If employee, without a duty to invent under his contract of
employment, nonetheless uses his employer's resources to conceive inventions, and then
registers the patents for those inventions under his own name. Where an employee is
specifically employed to devise inventions, the employment contract should of course state
that the employee is under a duty or obligation to invent, and that ownership of the
inventions is assigned to the employer.
The Bombay High Court in Darius Rutton Kavasmaneck v Gharda Chemicals Ltd & ors has
recently found that patents filed by employees can belong to the employee if the employee
was not been engaged or instructed to create inventions as part of his employment or during
working hours.
The same principle is applicable in university patent also. There is a confusion whether the
employee (researcher, professor, etc.), the employer (university/Public Research Institutions),
the state or the sponsoring agency will be considered the owner of innovations, inventions
and other research results developed within universities or PRIs using public funds.
If he is under a contract with the university to conduct research and is using public fund and
resources of University, the inventor will be University. Otherwise the researcher should be
the inventor.
QUESTION NO 54
A proposed user of a Trade Mark jewellery applies for registration of the word "KANGANA"
for his jewellery. Will his application be accepted ? If not, on what grounds?

Not eligible for registration

Section 9 (1)(b)
If the mark contains any descriptive words or terms that are commonly used to identify a
product. A trademark which consists only of such marks or of such indications which may
function in trade to specify the kind, quality, quantity, geographical origin, or time of
production of goods or services or other characteristics of goods or services.
In Central Camera Company Private Ltd v. Registrar of Trade Mark the court held that the
word “solar” undoubtedly refers to the sun and understood to be produced by or coming
from the sun as solar energy. It is common knowledge that the photographic work can be
done in artificial light. In present, the goods involved were studio lights, photographic
apparatus, projectors etc and hence have direct reference to character or quality of goods.
In J R Kapoor v Micronix India the Supreme Court held that the word “micro” used for the
production of electronic goods was descriptive of microtechnology and thus no one could
claim exclusive use of it.
But if before the date of application for registration, if the mark has acquired a distinctive
character as a result of the use made of it or if the mark is a well–known mark, the mark
shall not be refused registration.
Kanganam is the Malayalam word for gold and hence not eligible for registration. But if it
falls under the exceptions then can be registered
QUESTION NO 55
A teacher used a copyrighted literary work for
teaching in the
school. She has not taken permission from the
owner of the copyright. Has there been any
infringement of copyright of the literary work.

No comes under section 52. Educational purpose.

QUESTION NO 56
A Cardiologist invents the cure of performing Open Heart Surgery painlessly
and with the minimum expenses involved. Will he be entitled to claim a patent
for such a method of treatment.

Not entitled as the invention falling under Section 3 (i) of the Patents Act, 1970
which states:“any process for the medicinal, surgical, curative, prophylactic,
diagnostic, therapeutic or other treatment of human beings or any process for
a similar treatment of animals to render them free of disease or to increase
their economic value or that of their product”. As per section 3(i), a process or
a method of treatment of human beings or animals to render them free of
disease is non-patentable. So as per Section 3(i), medicinal treatment includes
a process of administering medicines orally (in form of tablets, capsules etc.)
or through injectables, or topically or through a dermal patch and method of
treatment by surgery for therapeutic or cosmetic purpose are not considered
patentable.
Medical devices, apparatus, instrument or products for diagnostic, surgical or
curative purposes are patentable in India.
In this case as the invention is a process for surgical treatment of human
beings it is not patentable. But if it is a device or instrument for treatment it is
patentable.
QUESTION NO 57
A film titled New Delhi' has the theme of problems of regionalism. The theme,
story line and main characters of the film are similar to that of a drama 'Hum
Hindustani'. When the film was released, the owner of drama filed a case
alleging copyright infringement? The producer of the film raised the defence
that copyright does not protect facts and ideas, but only expressions of ideas;
as film is a different 'expression' when compared to drama and it is not a
copyright infringement. Decide.

Idea Expression Dychotomy (R.G anand Case)

Ideas not copyrightable and should remain in the public domain. Only
expression of the ideas can be copy righted.
But cannot take the contention that film is a different expression and hence
making film from drama does not amounts to infringement. As right to
adaptation is one of the economic right of copy right owner. Adaptation
involves the preparation of a new work in the same or different form based
upon an already existing work. The making of a cinematograph film from a
literary or dramatic or musical work is also an adaptation.
Whether it amounts to copyright infringement can be find out through look
and feel / audience test.
QUESTION NO 58
Trademark of Automobile company "Benz' includes
the term BENZ and a logo'. A local manufacturer of
textile garments used the term BENZ and logo
similar to that of automobile company on their
product. When legal action was initiated by the
automobile company, local manufacturer raised the
objection that since automobile company has used
its trademark only in relation to automobiles, use of
a similar trademark on a very different product/
business does not amount to trademark
infringement ? Decide

Infringement. As BENZ is a well known park.

QUESTION NO 59
Respondent company registered the words "CLOUND
NINE as their trademark under Trademark Act, 1999
in December 2013 in respect of their software
business and is using it since then in India. The
petitioner company, which is also a software
company, initiates 'passing off action and proves
before the court that petitioner company is using the
words "CLOUND NINE" as unregistered common law
trademark since the year 2000.

If it is a well known mark even if it is unregistered

they can initiate passing off action.
(Already Discussed)
QUESTION NO 60
A reporter submits his reports in the form of
articles to a news magazine as part of his
employment. After he left the employment, he
published all his articles in the form of a book.
Decide in whom copyright vests ?

Magazine is having the ownership as per section

17 (a) for the works created during the course of
employment
VT Thomas case.
UTILITY MODELS
In some countries, a utility model system provides protection
of so-called “minor inventions” through a system similar to
the patent system. Recognizing that minor improvements of
existing products, which does not fulfill the patentability
requirements, may have an important role in a local
innovation system, utility models protect such inventions
through granting an exclusive right, which allows the right
holder to prevent others from commercially using the
protected invention, without his authorization, for a limited
period of time. Utility model provides a relatively short-term
right (6 to 10 years) without renewal or extension possibility,
granted for inventions/ innovations that may not qualify the
stringent criteria of patentability. USA is granting utility model
patents. In India, utility model protection is not available at
present. It may be useful for small innovators and startups.