IPR NOTES

Nature and Concept of Trademarks under Indian Trademark Act –

A “Trade mark” [TM] is defined under Section 2(zb) of the Indian Trademarks Act, 1999 as
“mark capable of being represented graphically and which is capable of distinguishing the
goods or services of one person from those of others and may include a shape of goods, their
packaging, and combination of colours.”

3 essentials of trade mark –

• It should be mark
• It should be capable of being represented graphically
• It should be able to distinguish the goods and services of one person from those of
others.

MARK –

Section 2(1)(m) to include a device brand, heading (Inscriptions), label, ticket (stitched or
tagged on the goods), name signature word letter, numeral shape of goods, packaging or
combination of colours (scheme of colours) or any combination.

REPRESENTED GRAPHICALLY

• In paper form
• Representation in digitised form
• Indicated the purpose and use of applicant without supporting samples
• Reasonably practicable

Distinctiveness – to be able to distinguish the goods of the one from the one person from others,
qualities and character.

Non traditional mark/modern mark - protected only in some countries, 3 dimensional marks.

Smell Marks – visually represent the product scent and be distinctive ( Chanel)

Sound Marks – Musicial notation or description of sound constituting the mark (India’s frst is
Yahoo three note yodel)

Taste Mark – written description of taste, distinctive

Color Marks – filled in form of written description, with relevant internationally recognised
Color identification system. It should acquire secondary meaning to it. (Cadbury).

Moving Images hologram and gestures – application must represent each of the various views
depicted in the hologram. (Motion Marks)

3dimensional Trade Marks – product shape and packaging qualify

In Bloomberg Finance Lp v. Prafull Saklecha & Ors [2013], the court simply interpreted the
definition of a Well-known trademark under Section 2(1)(zg) of The Trademark Act [1999],
and found it sufficient to consider the trademark as Well-known.

Function of Trade Mark –

• Identify and distinguish from others.

• Signifies all goods bearing a particular trade mark come from a single source
• Signifies all goods bearing a particular trade mark are on equal level
• For advertising and selling

Objective of trade mark law –

Protects from confusion and deception

Protects the goodwill of the owner’s trade and business.

In United States trademark law, Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2nd
Cir. 1976)[1] established the spectrum of trademark distinctiveness in the US, breaking
trademarks into classes which are accorded differing degrees of protection. Courts often speak
of marks falling along the following "spectrum of distinctiveness," also known within the US
as the "Abercrombie classification" or "Abercrombie factors". The Abercrombie court
determined that descriptive words can get trademark protection if they develop a secondary
meaning. The protection only exists for source-designating uses of the word, not descriptive or
generic uses of the word.

Conventional and Non-Conventional Trademarks

unconventional Trade Marks types

Colour trademarks −Sound marks − Shape of goods, packaging, − Smell trade marks

Conventional trademarks –
Generic Mark, Descriptive mark, suggestive mark, fanciful mark, arbitrary mark, service mark,
trade dress.

Spectrum of Distinctiveness –

Fanciful marks – arbitrary marks – suggestive marks – descriptive marks – Generic

GROUNDS FOR REFUSAL OF REGISTRATION OF TRADE MARK –

One can reject a trademark application for absolute or relative grounds in compliance with
Sections 9 and 11.

ABSOLUTE GROUNDS

According to section 9(1), following trademarks cannot be registered:

• not capable of distinguishing the goods or services of one person from that of another
person.
• such marks or of such indications which may function in trade to specify the kind,
quality, quality, geographical origin, or time of production of goods or services or other
characteristics of goods or services.
• such marks or indication which have become customary in the current language.
nobody can claim exclusive right over the use of any word, abbreviation or acronym
which has become publici juris

section 9(2) following trademark shall not be registered:

• likely to deceive the public or can even cause confusion.

• hurting the religious sentiment of any class or section of Indian citizens.
• -contains any kind of scandalous or obscene matters
• use of such trademark is prohibited under the Emblem & Names (Prevention of
Improper use) Act, 1950

Section 9 (3), we cannot register a mark if it consists exclusively of:

• The shape of goods which are due to the nature of the goods itself. For instance, round
or lever type door handles will fall within the scope of section 9(3) (a). hence, they are
unregistrable.
 • The shape of goods that are essential to obtain a technical result.
• The shape which adds substantial value to the goods- The shape should have a visual
appeal for added value.

RELATIVE GROUNDS

Section 11 lays down relative grounds for refusal of registration of the trademark –

• It creates confusion in public

• Identical to the other marks
• Liable to be presented by passing off or the copyright law

WELL KNOWN TRADE MARKS

Well-known trademarks are ‘special trademarks’, which are defined in Section 2(1)(zg) of The
Trademark Act [1999].

The section defines Well-known trademarks as, ‘marks of companies that have become so
substantial to a section of the public that uses such goods or receives services from those
companies, that the use of that mark while using other goods or services would also be taken
as a connection with the company that renders such goods or services.’

Well-known trademarks protect the same across the nation and for all types of goods and
services.

Section 11(6) of The Trademarks Act, [1999] lists down the factors to be considered while
deciding if a trademark is Well-known or not -

• Knowledge and Recognition of the Trade Mark in a relevant section of the public.
• Extent, Duration, and the Geographical Area in which the patent is used.
• Extent, Duration, and the Geographical Area in which the patent is promoted.
• Duration or Geographical Area of registration or application of registration.
• Record of successful enforcement of Rights enshrined with a Trademark.

Registrar to take into account following factors –

 • No. of actual or potential consumers of the goods or services to which that trade mark
applies.
• The number of people involved in the channels of distribution of such goods or services.
• The business circles dealing with such goods or services.

Conditions not necessary for a Trademark to be Well-Known –

Section 11(9) of The Trademarks Act [1999], lays down the conditions that are not necessary
for a trademark to be considered as Well-known -
• That it has been used in India.
• That it has been registered.
• That the application for registration has been filed in India.
• That it is Well-known or registered in any jurisdiction other than India.
• That it is known by the public at large.

Trade Mark registered in good faith is to remain –

Section 11 of the Trademark Act, 1999 provides protection of Well- Known Trade mark and
protection for the marks which are registered in good faith – by disclosing material information
to the registrar.

When artificial jewelleries were sold in the name of ‘Rolex’, the court in the case Rolex Sa v.
Alex Jewellery Pvt Ltd & Ors [2009], granted an injunction towards it; even when Rolex only
manufactures watches. This is the extraordinary protection that a brand gets after being
recognized as Well-known

INFRINGEMENT OF TRADE MARK

Section 29 of trademark act,1999 provides the precise which means of Trademark
Infringement, which states regarding varied aspects regarding the infringement.
One would be liable for the infringement of a trademark –
• When a person is deceptive using a trademark of another person.
• When a person has not registered his mark and therefore causing confusion in the in the
minds of the general public.
• When a person not being a registered proprietor and uses a registered trademark for the
goods and services.
 • When a person uses registered trade mark to a material intended to be used for labelling
and packaging
• When distinctive elements of registered trade mark include words, the trade mark be
infringed when spoken use or visual representation of that word.
• When an unregistered proprietor uses it for the business advantage or any unfair
advantage.

DILUTION OF TRADE MARK –

Dilution of a Trademark is a surface of Trademark infringement, where the owner of a well-
known trademark has the power to prevent others from using their mark on the ground that it
kills their uniqueness or lessen their reputation.
Dilution protection aims to protect sufficiently strong and well-known trademarks from losing
their singular association in the public mind with a particular product.
Trademark dilution 2 main forms – blurring and tarnishments
Blurring” takes places when the third party’s mark weakens the consumer’s insight that the
famed mark is connected to the plaintiff’s goods or services or when a renowned mark’s
uniqueness has tampered.
Tarnishing” occurs when the famous mark’s standing is injured through connection with a
similar mark or trade name.
In Daimler Benz Aktiegesellschaft vs Hybo Hindustan one of the issues before the single judge
bench was whether the defendant could use the mark ‘BENZ’ on underwear, herein the Hon’ble
Judge applied the doctrine of dilution without using the word ‘dilution’.
In ITC v Philip Morris Products SA & Ors, Court while referring to section 29(4) of the Trade
Marks Act, 1999 held a dilution cause of action established if the following essential elements
are satisfied:

1. The impugned mark is identical or similar to the well-known mark

2. The well-known or the injured mark has a reputation in India

3. The use of the impugned mark is without due cause

4. The use of the impugned mark amounts to taking unfair advantage of or is detrimental to
the distinctive character or reputation of the registered trademark.
As per section 29(4) of The Trade Marks Act, trademark infringement in the form of dilution
will occur only when the person uses the mark which is:

• Identical or similar to the registered trademark which already has a reputation in India
and

• Use is on different goods or services than those covered by the registration.

EXCEPTIONS TO DILUTION OF TRADEMARKS

The following shall not be actionable as dilution:

Any rightful use, including a nominative or descriptive fair use, or facilitation of such fair use,
of a famed mark by another individual other than as a designation of source for the person’s
own goods or services, including use in connection with–

• Advertising or promotion that permits consumers to compare goods or services; or

• Identifying and parodying, criticizing, or commenting upon the famous mark owner r
the goods or services.
• All forms of news reporting and news commentary.
• Any mark which includes parodies, criticism or comments. The exception of parodies
was used in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, where the
defendant manufacture apparels for dogs under the mark ‘Chewy Vuitton’

PASSING OFF

If any person sells his/her goods as the goods of another person, then the owner of Trademark
can take action regarding the act of such other person as this act becomes a case of Passing Off
of Trademark.

The law of Passing Off is used to safeguard or protect the reputation and goodwill attached to
an unregistered Trademark. When any Trademark which is already registered by the owner and
any kind of Infringement happens, then it becomes a suit for Trademark Infringement, on the
other hand, if the Trademark is not registered by the owner and Infringement happens in such
case it becomes a case of Passing Off.

In the Trademarks Act,

1999[1], Passing Off is defined in Section 27 (2), 134 (1)(c), and Section 135. The power or
jurisdiction of the District Courts in the matter related to Passing Off of Trademark suits.

There are three essential elements of Passing Off. The three essential elements are also known
as the Classical Trinity, as the House of Lords restored them in the case of Reckitt & Colman
Ltd v Borden Inc. This case established the three elements of Passing Off –

• Goodwill or reputation attached to the goods

• Misrepresentation to the public
• Plaintiff suffered, occurred damages

Misrepresentation

The plaintiff is required to show false intention or misrepresentation on behalf of the defendant.
In misrepresentation, the defendant tries to make the common public believe that the products
and services provided by the defendant are of the plaintiff.

Goodwill

It should be proved by the plaintiff that the person or the goods and services own some kind of
reputation in the mark used by the other person, and such an act of using an identical or similar
mark will confuse the public with the specific goods or services of the plaintiff.

Damage

In order to stop the infringing party, the offended party is required to prove that he/she has
suffered an actual or reasonable loss of business due to the alleged misrepresentation of the
infringing party.

In cedilla health care ltd v. cedilla pharmaceuticals ltd., the supreme court laid down test to
ascertain the passing off. The following factors be considered for deciding question of
deceptive similarity–

• Nature of the mark

• Degree of resemblance
• Nature of goods in respect of which they are used as trade marks
• Similarity in nature, character and performance.
 • Class of purchaser who are going to purchase
• Mode of purchasing the goods
• Any other surrounding circumstances.

WHAT ARE THE DEFENCES AVAILABLE TO THE INFRINGING PARTY FOR PASSING OFF OF

TRADEMARK IN INDIA?
Defences are -

• The sign, name, or other marks that are sought to be withdrawn should not be specific
or similar to the goods or business of the plaintiff.
• There is no existence of goodwill in the mark used by the infringing party.
• The plaintiff has already given consent or encouraged the use of the mark.
• A separate case of Passing Off.
• The products and services or business of the plaintiff are completely different from that
of the defendant.

Registration is not a defence to passing off action – Via Section 27(2) of the trade mark act. it
has overriding effect over Section 29. Passing off remedy is a broader remedy and can defeat
the rights of proprietor of a registered trade mark.

Intention Is immaterial in infringement or passing off.

S. No. Infringement Passing off

1. Type of The statutory remedy under Section Common-Law remedy

remedy 29(1) of the Trade mark Act, 1999

2. Registration It is a pre-requisite It is not required

3. Proof Plaintiff is only required to show Apart from proving deceptive

deceptive similarity, as there is a similarity, the Plaintiff is also
presumption of confusion required to prove confusion in
public and the likelihood of
injury to the plaintiff's goodwill
4. Jurisdiction The registered proprietor or registered Section 20 of the Civil
user of the trade mark can institute the Procedure Code, 1908 would
suit where they actually and apply
voluntarily reside or carries his
business or personally work for gain

5. Protection To the registered trademarks The goodwill of the trademark,

not necessarily

Effects of Trade Mark Registration

The trademark registration consults the following rights on the registered proprietor:

1. the use of the trademark with total rights in association to the goods or services of which
trademark is registered.

2.If the trademark contains of various matters, a complete right to the use of the trade mark
taken as a whole.

3. It entitles the registered proprietor to get relief in respect of infringement of the trade mark
provided by the 1999 act.

4. The registration entitles the registered trademark to restrain others from using any mark or
packaging which would depict an association with the registered mark or in any manner which
would dilute the value or tarnish the image of the trademark.
5. The trademark registration forbids every other person to use or to obtain the registration
of an identical.
6. After trademark registration for goods or services, there shall be no registration for the same
or confusingly similar trademark, not only for the same goods or services.

7. After registration of the trade mark for goods or services and if the trademark is found to be
well known, there shall be no registration for the same or confusingly similar trade mark to the
well-known mark.

LIMITATION ON REGISTRATION
Registrar can impose suitable conditions or limitations while accepting the application for
registration of a trade mark – without the said descriptive condition, the artificial conditions
cannot be imposed upon the rights of the applicant.

TRADE MARK – COPYRIGHT AND ID INTERFACE

Copyright - It is a bundle of rights vested in the author/owner or a creator of the copyright

under Section 14 of the Indian Copyrights Act, 1957. Copyright protection is granted to
creators of original works.

DESIGN - As defined under Section 2(d) of The Designs Act, 2000 a design majorly comprises
of aesthetics of any article or product of manufacture and includes features of:

• Shape

• Configuration

• Pattern

• Ornament

• Composition of lines or colours

Overlap between design and Trade Mark - Shapes can be used both as a trademark (if used for
trade) and as a design (if it fulfils the criteria). Therefore, an overlap between design and
trademark does exist. The question or the conundrum always appears when it comes to claiming
protection from infringement.

Whether a shape that has been registered as a design under the Designs Act, 2000 gets started
being used for trade as a trademark would lose its protection under the Designs Act, 2000?

Affirmative Answer - In Dart Industries Inc and Ors vs Techno Plast & Ors, it was held that
the action of passing off is a common law right, independent of Designs Act, but it wasn’t
pleaded in this case that the public associated the design with the company. The same was held
in Smithkline vs Hindustan Lever that passing off is a right based on the common law structure
and despite the remedies for the infringement being provided in Section 22 of the Design Act,
2000, it will be available to a person.
A suit against infringement of design is brought when the uniqueness or originality of the
design is violated by an act of the infringer whereas a trademark infringement occurs when the
infringer tries to benefit or make a profit from the goodwill and an established presence of the
business.

Negative Ans –

CONCEPT OF COPYRIGHTS, SUBJECT MATTER OF COPYRIGHT UNDER

INDIAN COPYRIGHT ACT

The Copyright Act, 1957, along with the Copyright Rules, 1958, is the governing law for
copyright protection in India.

Copyright laws serve to create property rights for certain kinds of intellectual property,
generally called works of authorship. Copyright laws protect the legal rights of the creator of
an ‘original work’ by preventing others from reproducing the work in any other way.

Objective of copyright law –

The objective of this copyright law is mainly twofold:

• first to assure authors, composers, artists, designers and other creative people, who risk
their capital in putting their works before the public, the right of their original
expression, and

• second to encourage others to build freely upon the ideas and information conveyed
by a work.

Nature of Copyright –

• Incorporeal property in nature.

• It gives dominium over the work

• It originates in the mind of a person before it is reduced to material form.

• It is bundle of exclusive rights.

• It is a negative right as the owner of the work prevent others from benefiting it from
them .
 • The exclusive right in the copyright work is not for long time, it is limited.

SUBJECT MATTER OF COPYRIGHT

Section 13(a) – protects original work.

Section 13 (b) (c) – protects derivative works/ commercial manifestation of original work.

Subject matters protected by copyright are called works. Work defined – Section 2(y). Thus
according to Section 13 of The Copyright Act 1957, it may be subjected for the following
works:

• Original Literary Work,

• Original Dramatic work,

• Original Musical work,

• Original Artistic Work,

• Cinematography films, and

• Sound recordings.

Original literary Work – It is the product of the human mind which may consist of a series
of verbal or numerical statements, not necessarily possessing aesthetic merit, capable of being
expressed in writing, and which has been arrived at by the exercise of substantial independent
skill, creative labour, or judgment.

Literary work – anything in writing which could be said to come within the ambit of literature
work.

2 classes of literary work –

• primary or prior work, work not based on existing subject matter.

• secondary or derivative work – based on existing subject matter.

Test of originality –

Macmillan v. cooper – product of labour, skill and capital of one man which must not be
appropriated by another – it is explained sufficiently to impart to the product some quality or
character – standard of creativity in derivative literary work should be higher than the standard
of quality in primary work.

Original Dramatic Work - According to the Copyright Act,1957, the dramatic work includes
any piece for recitation, choreographic work or entertainment in dumb shows, the scenic
arrangement or acting form which is fixed in writing or otherwise but does not include a
cinematographic film.

ESSETIALS – Inner studies v. charlotte Anderson –

• Work capable of physically performed or accompanied action

• Fixation of matter in form of writing – to ensure certainty if performance of the work.

Original Musical Work - the musical work means any work consisting of music and includes
any graphical notion of such work, but does not include any words or any action intended to
be sung, spoken or performed with the music. In order to qualify for copyright protection, a
musical work must be original.

Section 2(p) – clears upon musical work as the music itself and its graphical notation not
include words intended to be sung. Distinction between musical work and a song.

It is also different from sound i.e., music, musical work is only the notes which are found on
paper not what was heard.

Original Artistic Work – Section 2(c)

Includes – engraving, painting, sculpture, drawing, photograph, graphic character, work of

architecture, work of artistic craftsmanship.

Cinematographic Films -

includes any work of visual recording and a sound recording accompanying such visual
recording and the expression cinematograph shall be construed as including any work produced
by any process analogous to cinematographic including video films.

Sound Recording
According to The Copyright Act, 1957, sound recording suggests that a recording of sounds
from which that sound may be produced regardless of the medium on which such recording is
made or the method by which the sounds are produced.

Clause (a) of this Section 13 provides the definition of original work whereas clause (b) and
(c) protect by-product works. This Section stipulates that copyright is subject to the provisions
of the aforesaid Section and therefore the different provisions of the Act don’t exist de-hora
and outside the ambit of the Act, it’s a right created under the statute and no right outside the
aforesaid Act is claimed.

IDEA EXPRESSION DICHOTOMY - DOCTRINE OF MERGER

Copyright extends protection to works such as original literary, artistic, musical and dramatic
works. However, it is important to note that this protection is extended to the expression and
not the idea. In other words, the protection of copyright lies in the materialised form of abstract
ideas which are expressions.

Dichotomy, literally, means distinction, so Idea-Expression Dichotomy is concerned with the

distinction between the idea and the expression. An idea essentially is intangible and abstract
and it is the expression which gives it a tangible form capable of protection. It is because the
same abstract idea can be expressed in numerous forms of expression and if the ideas are
copyrighted along with the expression apart from the original creator of the work, nobody else
would be able to formulate its own expressions on the basis of the same idea.

In situations where the idea and expression are inseparable or merged, doctrine of merger is
applied by the Courts. This doctrine postulates that where the idea and expression are
intrinsically connected, and that the expression is indistinguishable from the idea, copyright
protection cannot be granted. Therefore, if the idea and expression are so well merged that the
idea itself becomes copyrightable, it would hinder the growth of creativity which is against the
very objective of copyright law.

The doctrine of merger provides that when the expression is the idea, and vice-versa, and there
is only one way to express the underlying idea, the idea will merge with the expression as to
make them indistinguishable. Consequently, the expression becomes non-copyrightable.
RIGHTS OF THE COPYRIGHT OWNER

Copyright gives an exclusive right to the owner to do certain acts in relation to literary,
dramatic, musical, and artistic works, cinematography and sound recordings.

The Copyright Act, 1957 provides copyright protection in India. It confers copyright protection
in the following two forms:

o Economic rights of the author, and

o Moral Rights of the author.

ECONOMIC RIGHTS

Section 14 provides for Exclusive rights subject to provision of act –

• To reproduce the work in material form

• To issue copies of the work.
• To perform the work in public, communicate in public
• To make cinematographic film sound recording
• To make any translation of the work
• To make adaptation of the work

Reproduction of work

Principles to consider whether the acts of defendant constitute reproduction of plaintiff work-

• Sufficient degree of objective similarity between two works

• Defendant consciously aware or not is irrelevant
• If Objective similarity– it is prima facie evidence

To reproduce in material form also include, storing in electronic medium.

In dramatic work, if incidents in common between two work, drawn from common stock or
common knowledge, if worked out separately on independent lines, not result of infringement.

Issue of copies to the public

Right holder can only control the first sale of the article and exercise the rights, cannot complain
of infringement of each and every subsequent sale.
Communication to the public

Section 2(ff) defines it, work or performance being able to seen or heard or enjoyed directly or
indirectly.

Exclusive right to communicating to public, not of private audience.

Music played on any establishments without permission of copyright owner infringes the right.

Performance of the work to the public

Section 2(q) – performance

Any mode of visual or acoustic presentation lives by one or more performers. Private
performance is allowed here.

Public – not a group of domestic and quasi domestic circle, everything outside will be
considered as public,

To make cinematographic film sound recording

The author of any literary, dramatic or musical work authorises producer of the
cinematographic film to make cinematographic film of his composition, he cannot complain of
the infringement of his copyright if he cinematographer causes the lyrics or musical work
recorded on sound track to be heard in public.

Adaptation of the work

Section 2 (a) – adaptation mean –

• In relation to a literary work, conversion of it into dramatic work.

• In relation to dramatic work, conversion into non dramatic work.
• In relation to musical work, arrangement of transcription of the work.
• In relation to any work, any such work in relation to re-arrangement.

Re sale share right in the original copies

Section 53A – in case of re sale of price exceeding Rs. 10,000 of original manuscript – the
owner of such work if he was the first owner of rights under Section 17 – have a right to share
in the resale price of such original manuscript.

Right of the original owner to have a share in the subsequent sales of the product.
MORAL RIGHTS –

Right of Paternity –

Author has right to claim authorship of his work and can prevent all others from claiming
authorship of his work. Right to demand that his name should appear in all copies of his work
at the appropriate place.

Right to Integrity -

Owner has right to prevent distortion, mutilation or other alteration of work, or any other action
in relation to said work.

MORAL RIGHTS IN INDIA

Section 57 of Copyright Act, 1957 recognises moral rights of the owner. Author of a work shall
have the right –

▪ to claim authorship of the work,

▪ to restrain or claim damages in respect of any distortion, mutilation, modifications or
other act in relation.

Failure to display a work or to display it to the satisfaction of the author shall not be deemed
to be infringement of right conferred by the author.

Section 57 provide remedies to the author in respect of distortion, mutilation, modifications or

other aspect in respect of any work, whether such work would be prejudicial to his honour or
reputation.

Section 57 confers additional rights to the author, which are independent of author’s copyright
and the remedies available to him. The principle under Section 57 is that damage to the
reputation of an author is something apart from infringement of work itself.

Manu Bhandari V. Kala Vikas Pictures Ltd.

First case which came in respect of Author’s Moral Rights.

Case on the interpretation of Section 57.

Facts –

The plaintiff in this case, Mannu Bhandari, was a famous Hindi language novelist. The
defendant produced a motion picture titled Samay Ki Dhara based on plaintiff’s novel Aap Ka
Bunty. Though the movie was made under an agreement with the plaintiff, the plaintiff was not
happy with the way her work was treated during the adaptation of the novel into the movie.
The plaintiff feared that her image would be tarnished if the distorted version of her novel was
allowed to be presented through the movie. Hence the plaintiff sought permanent injunction
against the screening and exhibition of the movie.

Though the parties in the case reached a settlement before the judgment was delivered by the
Court, the parties requested the Court to deliver its judgment, as the scope of protection of
moral rights in India had not yet been clarified by the higher judiciary in India.

JUDGMENT –

• Section 57 of the Copyright Act, 1957, which deals with moral rights protection in India,
lifts the author’s status beyond the material gains of copyright and gives it a special status.
• Author’s right to restrain distortion of his work is not limited to cases of literary
reproduction of his work. The restraint order in the nature of injunction can be passed
even in cases where a film is produced based on the author’s novel.
• The language of section 57 is of the widest amplitude and cannot be restricted to ‘literary’
expression only. Visual and audio manifestations are directly covered.
• The special protection given to the authors under the Indian copyright law is emphasised
by the fact that the remedies of a restraint order or damages can be claimed "even after
the assignment either wholly or partially of the said copyright"
• Section 57 thus clearly over-rides the terms of the contract of assignment of copyright.
To put it differently, any contract of assignment has to be read subject to the provisions
of Section 57 and the terms of contract cannot negate the special rights and remedies
guaranteed by Section 57.
• By reading the contract with section 57, it is obvious that modifications, which are
permissible, are such modifications, which do not convert the film into an entirely new
version from the original novel.
• The modifications should not distort or mutilate the original novel.

Amarnath Sehgal v. Union of India - Amar Nath Sehgal v. Union of India is a landmark
Indian case decided by the Delhi High Court, which for the first time upheld the moral right of
an author under the Indian Copyright Act and awarded damages. The government was also
asked to return his mural.

FACTS –

The plaintiff, Amar Nath Sehgal is a renowned artist and sculptor, who created a mural in the
lobby of Vigyan Bhawan, Delhi on the direction of appropriate authority. In the year 1957, the
Government of India commissioned Mr. Sehgal for creating a bronze mural for Vigyan Bhavan.

In 1979, the mural was pulled down and consigned to the store room of the Union without
notice or permission or authorization of Amarnath. When Mr. Sehgal came to know of this ill
treatment, he made representations to the government authorities for restoration of the mural,
to no avail. As this act of destruction of the mural as it was improperly handled which cause
minor damage to the sculpture. He filed a petition under Section 57 of the Copyright Act, 1957
in the Delhi High Court praying for an apology from the defendants, a permanent injunction
on the defendants to restrain them from distorting, mutilating or damaging the plaintiff’s mural
and damages to the tune of Rs. 50 lacs.

JUDGMENT –

The decision taken by the single bench of the Delhi High Court was instrumental in determining
the course of moral rights in the country.

It also gave a broad construction to the term moral rights in the country, by not only providing
for the right of the author in the case of any distortion, mutilation, modification or other act in
relation to the work if such distortion etc. would be prejudicial to his honour or reputation but
also ‘right of the author to receive the copyrighted work for the purposes of restoration and sell
it’.

It included within the moral right of integrity the right to protect an artistic work from outright
destruction. The interim decision in the case, given by Justice Jaspal Singh, given in favour of
the plaintiff, restricted the Indian Government from causing any further loss to the plaintiff by
destroying the property.

ASSIGNMENT OF COPYRIGHT –

Nobody is entitled to copy, reproduce, publish or sell an original writing, painting, dramatic
production, sculpture, etc. without the permission of the creator. Thus, law provides a right to
the owner of the copyright (i.e., the creator) to transfer the ownership of the copyright to a third
party.

This can be done by assignment of copyright in the work or by licensing it to others.

Serves 2 purpose –

• For assignee – confers on him the right of exploitation of work for specified period in
specific territory.
• For assignor – right to receive royalty

Assignment does not automatically mean it is an absolute assignment, there must be intention
of the parties for the nature and extent.

When assignee of copyright becomes entitles to any rights comprised in the copyright, he shall
be treated as owner of the copyright in respect of those rights. Assignor shall also be treated as
owner of copyright is respect on unassigned rights.

Legal representative of assignee to get benefit of assignment, if assignee dies before the work
come into existence.

ASSIGNEMNT BY PROSPECTIVE OWNER

Assignment can be done by the owner of the copyright in an existing work. Section 18 permits
assignment by a prospective owner (Future owner) – person who is not the first owner as
defined in Section 17, in a future work.

Condition under section 18 - Assignment takes place only after work come into existence not
before.

MODE OF ASSIGNMENT

Section 19 lays down the conditions for the assignment of copyright.

Essential Condition –

• Writing and signed by the assignor or his duly authorized agent. Otherwise not Valid.
• Assignment of copyright must identify such work and specify the rights assigned
• It should specify duration and territorial extent of assignment.
• Intention parties must be cleared with the bare reading of the agreements.
Assignment cannot lead towards permanent agreement; or full rights it fortify the objective of
assignment.

The assignment of copyright shall be deemed to be for period of 5 Year from the date of
assignment of copyright, if the period is not specified in the agreement.

If the territorial extent of agreement of the rights is not specified, it shall be presumed to extent
within India.

When assignees do not exercise the rights assigned to him under the provision of Secton 19,
the assignment in respect of such rights shall be deemed to have been lapsed during the expiry
of period mentioned otherwise specified in the agreement.

LICENSES

License is right to do some positive act. It is personal right and creates no more personal
obligation between a licensor and licensee. It is recoverable at the will of the grantor.

Kinds of License –

Exclusive and non-exclusive -

• Exclusive licensee means a license which confers on licensor or licensee and persons
authorized by him to the exclusion of all other persons any rights comprised in the
copyright in a work.
• In non-exclusive license, the owner pf copyright retains the right to grant licenses to
more than one person or to exercise it himself.

Section 30 of the act, the owner of copyright in a work may grant any interest in his copyright
to any person by license in writing by him or by his duly authorized agent. Same could be done
by prospective owner, only when work come into existence.

Conditions of Section 19 of assignment is also applicable in license as well.

Compulsory License
Being a member of Berne Convention, India has incorporated the provision of compulsory
license in the Copyright Act, 1957. The Act provides for grant of compulsory license for Indian
work in the public interest.

CANCELLATION OF THE LICENSE –

Board after giving an opportunity to the licensee of being heard, can cancel the licensee on
following grounds –

• Failed to produce the work, publish the work within the time.
• Obtained by fraud or misinterpretation
• Contravened any of the terms and conditions of the license

TERMINATION OF THE LICENSE

Section 32B – provided for termination of licensee issued under section 32 and 32A.

Grounds –

License to produce non-Indian work in any language, if any time after granting the license the
owner of the work has published a translation of the work in same language in same content of
reasonable price, same standard and similar subject – the license granted will be terminated.

Conditions –

Cannot take place after the expiration of 3 months from the date of service of the notice.

DIFFERENCE BETWEEN ASSIGNMENT & LICENSEE

The term assignment and licensee are not interchangeable.

In absence of any provision to the contrary in the assignment, in case of an assignment, the
assignor becomes the owner of the interest assigned whereas

In case of license, the license gets the right to exercise particular rights only.

In Deskhmukh & Co. v. Avinash Vishnu Khandekar, court provided distinction between
assignment and licensee –

Assignment – it transfers an interest in, and deals with the copyright itself as provided under
Section 14 of the Act. It transfers title in the copyright. The assignee being invested with the
title in copyright may reassign. The assignee can sue for infringement without joining the
assignor.
Licensee – it does not convey the copyright but only grants a right to do something, which is
in the absence of license would be unlawful. It merely permits certain things to be done by the
license. The licensee is person and is not transferable without grantor’s consent. He licensee
cannot sue in his own name for infringement of the copyright.

OWNERSHIP OF THE COPYRIGHT

For Literary, dramatic and musical work –

•
• Author is the first owner.
• A person who merely suggests the plot of play, novel to the writer will not be the author,
therefore not the owner of the copyright.

Joint authorship –

• Collaboration of 2 or more authors in which the collaboration of authors is not distinct

from the other.

Author of Compilation –

• For collective or composite works, there will be distinct copyrights. Copyright in the
entire nd copyright of the separate parts.
• Person who collects the entire work and arranges will be the Author and other will
merely be the person who wrote them.

Author of the work may not be the first owner in the 2 Circumstances –

• Work of employees of newspaper, magazines and similar periodicals.

• Work of employees generally.

Ownership of copyright in lectures and addresses –

Any person who delivers the speech in public hall have the copyright of the same being the
first owner. If other person delivers on behalf, such person shall be the first owner. If other
person was employed, then he will be the author and thus the owner of the copyright.
Ownership In Artistic Work –

Owner of the artistic work is the artist, in photography, the person who takes photograph is the
owner.

Section 17 (b) – when work is done for some consideration at the instance of the person, such
person will be the first owner of the copyright of the work, in absence of any agreement.

The same tangent of Artistic work goes for Computer games, cinematographic films,
sound recordings.

Ownership in Government Work –

In absence of any agreement, government in the first owner of the copyright.

Government Work - Section 2(k), work done, made or published in direction and control of

• Government or any department of the government.

• Legislature in India
• Court, tribunal or other judicial authority

The same tangent of Government work goes for public undertaking, international
organisations.

REGISTRATION OF THE COPYRIGHT –

It is optional and not mandatory.

Not a pre-requisite condition for claiming copyright in the work.

It merely raises a presumption in respect of particulars registered in the register of the

copyright.

Registration is a piece of evidence as to when a certain author started claiming the copyright
in the artistic or other work.
Bare reading of Section 51 (grounds of infringement), section 55 (remedies for infringement)
together would voice for not compulsory registration of registration for availing the remedy
provided.

COPYRIGHT INFRINGEMENT –

Section 51 of the Copyright Act specifies when a copyright is infringed. According to Section
51 of the Act, Copyright is deemed to be infringed if:

• A person without obtaining the permission of the copyright holder does any act which
only the copyright holder is authorised to do.

• A person permits the place to be used for communication, selling, distribution or

exhibition of an infringing work unless he was not aware or has no reason to believe that
such permission will result in the violation of copyright.

• A person imports infringing copies of a work

• A person without obtaining the authority from the copyright holder reproduces his work
in any form.

COPYRIGHT PROTECTION

Copyright protection is given to all original literary, artistic, musical or dramatic, sound
recording and cinematography. The originality of the work is the prerequisite to claim for
copyright. Original work means that the work has not been copied. A work is protected
irrespective of its content or quality.

DOCTRINE OF FAIR DEALING –

A fair dealing with any work (except computer programmes) is allowed in India for the
purposes of -

1. private or personal use, including research,[19]

2. criticism or review,[20]
3. reporting of current events and current affairs, including the reporting of a
lecture delivered in public.[21]
The term fair dealing has not been defined anywhere in the Copyright Act 1957

Fair dealing is a user’s right in copyright law permitting use of, or “dealing” with, a copyright
protected work without permission or payment of copyright royalties. The fair dealing
exception in the Copyright Act allows you to use other people’s copyright protected material
for the purpose of research, private study, education, satire, parody, criticism, review or news
reporting, provided that what you do with the work is ‘fair’. If your purpose is criticism, review
or news reporting, you must also mention the source and author of the work for it to be fair
dealing.

Whether something is ‘fair’ will depend on the circumstances. Courts will normally consider
factors such as:

• The purpose of the dealing (Is it commercial or research / educational?)

• The character of the dealing (What was done with the work? Was it an isolated use or
an ongoing, repetitive use? How widely was it distributed?)
• The amount of the dealing (How much was copied?)
• Alternatives to the dealing (Was the work necessary for the end result? Could a different
work have been used instead?)
• The nature of the work (Is there a public interest in its dissemination? Was it previously
unpublished?)
• The effect of the dealing on the original work (Does the use compete with the market
of the original work?)

Civic Chandran and Ors. v. C. Ammini Amma and Ors. is a 1996 Kerala High Court judgement
that deals with the concept of fair dealing in India.

INDUSTRIAL DESIGN

DESIGN – Section 2(d) - Design means only the features of shape, configuration, pattern,
ornament or composition of lines or colours applied to any article whether in two dimensional
or three dimensional or in both forms, by any industrial process or means, whether manual,
mechanical or chemical, separate or combined, which in the finished article appeal to and are
judged solely by the eye; but does not include any trade mark.
General rule, design consists of –

• 3D features, such as shape of the product.

• 2D feature, such as ornamentation, patterns, line or Color of a product.
• A combination of one or such features.

Following are excluded from the definition of design –

• Any mode or principle of construction

• Anything in substance of mechanical device.
• Any trademark
• Any property defined in Section 479 IPC,
• Any artistic work defined in Section 2(c) of the copyright act 1957.

INDUSTRIAL DESIGN -

Industrial design protection is provided only for the aesthetic feature of a product, not for its
functional design. Industrial design laws generally protect designs applied on industrial
products which are aesthetic and non-functional. Such designs merely enhance the aesthetic
appeal of industrial products. Typically, industrial designs are applied on products like
furniture, packaging, watches, textiles and handicrafts. The economic value of these products
lies in enhancing their aesthetic appeal to consumers.

REQUIREMENTS FOR REGISTRATION OF DESIGNS -

DESIGN MUST BE APPLIED TO ARICLES.

A Design is something which is applied to an article and not the article itself. An article to
which the design is to be applied must be something which is to be delivered to the purchaser
as a finished article.

APPEAL TO THE EYE.

The design must be capable of being applied to an article in such a way that the article to which
it is applied will appeal to and judged solely by the eye. The particular shape, configuration,
pattern or ornamentation must have a visual appeal.
NOVELTY OR ORIGINALITY

A design can be registered only when it is new or original and not previously published in
India. A design would be registrable if the pattern though already known is applied to new
article. Registration could not be deemed to be effective unless the design, which sought to be
protected, was new and original and not of a pre-existing common
type.

NO PRIOR PUBLICATION

A design can be registered only when it is not previously published in India. In the case of
Wimco Ltd. v. Meena Match Industries,[10] the Court held that publication means the opposite
of being kept secret. The disclosure even to one person is sufficient to constitute publication.
The design cannot be registered under Design Act if it is not significantly distinguishable from
known designs or combination of known designs.

WHO CAN APPLY FOR REGISTRATION OF A DESIGN?

As per Section 5 of Design Act, 2000, any person who claims to be the proprietor of any new
or original design can apply for the registration of the design.

A foreigner can also apply for the registration of the design. However, the convention followed
is that if a country does not offer the identical registration right to Indian citizen for their
designs in their country, its citizen would not be eligible to apply for registration of design in
India.

PIRACY OF A REGISTERED DESIGN

Infringement of a copyright in design is termed as "Piracy of a registered Design".

It is not lawful for any person during the existence of copyright to do the following acts without
the consent or license of the registered proprietor of the design.

Section 22 of the Designs Act, 2000, lays down that the following acts amount to piracy -

▪ To publish or to have it published or expose for sale any article of the class in question
on which either the design or any fraudulent or obvious imitation has been applied.
 ▪ To either apply or cause to apply the design that is registered to any class of goods
covered by the registration, the design or any imitation of it.
▪ To import for the purpose of sale any article belonging to the class in which the design
has been registered and to which the design or a fraudulent or obvious imitation thereof
has been applied.

In fact any unauthorised application of the registered design or a fraudulent or obvious

imitation thereof to any article covered by the registration for trade purpose or the import of
such articles for sale is a piracy or infringement of the copyright in the design.

REMEDIES AGAINST THE PIRACY OF THE REGISTERED DESIGN –

Section 22(2) states that if any person acts in contravention of this section, he shall be liable
for every contravention:

• to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand
rupees recoverable as a contract debt, or

• if the proprietor elects to bring a suit for the recovery of damages for any such
contravention, and for an injunction against the repetition thereof, to pay such damages
as may be awarded and to be restrained by injunction accordingly.

The plaintiff/ registered proprietor can only elect one remedy and cannot avail both the
remedies simultaneously.

A registered proprietor can institute a suit in a court not below the district court.

COPYRIGHT AND DESIGN INTERFACE –

The inherent nature of intellectual property is such that the overlap between the bundle of rights
available to an owner in a single subject matter is unavoidable.

One such blurred line arises between copyright and designs law, particularly in relation to
artistic works. The law governing copyright and designs in India however provides a fairly
clear and simple distinction between both types of IP.
Copyright protection in India is granted from the moment an original work is created. However,
protection under the Designs Act is made available to an owner only when the design is granted
registration. Therefore, copyright is often referred to as an inherent right, and a design is
referred to as a statutory right.

The Copyright Act even addresses the issue of dual protection with designs explicitly in Section
15. As per Section 15(1), an owner of a design will forego protection under copyright law, once
the design has been granted registration. Section 15(2) states that a copyright in an unregistered
design shall cease, as soon as the article to which the design has been applied, has been
reproduced more than fifty times by an industrial process.

One of the consistent trends that seem to have arisen out of these judgments is that copyright
in a subject matter will exist until put to industrial use, at which time the subject matter will be
covered under the ambit of the Designs Act. Courts have, time and again, propounded that any
other interpretation would render the registration of a subject matter under the Designs Act as
meaningless, thereby enunciating the importance of maintaining exclusive protection under the
Designs Act separate from the Copyright Act. However, formulating an interpretation that
leads to erosion of the perpetual rights of copyright owners subsisting in their original works
is not a good precedent to set for the intellectual property regime in India.

PATENT LAW

PATENT – Section 2(1)(m) patent for any invention granted under this act. It is a monopoly
right conferred by patent office on an inventor to exploit his invention for limited period of a
time.

PUBLICATION OF APPLICATION –

Section 11A(1) – No application opens to the public for 18 months from the date of filing the
application or the date of priority whichever is earlier.

Application shall be published on expiry except in following cases where the application –

• In which secrecy direction is imposed under Section 35.

 • Has been abandoned under Section 9(1).
• Has been withdrawn 3 months prior to the prescribed period.

EXAMINATION OF PATENT APPLICATION

The examination of a patent is not an automatic process. The examination is undertaken under
the following circumstances:

• on receipt of the request for examination in Form 18 from the applicant or any interested
person (third party); or
• on receipt of Form 18A for expedited examination.
The request for the examination should be filed within 48 months from the date of priority or
date of filing of the application, whichever is earlier. 2 Therefore, the examination of a patent
application is subject to filing a request for examination under section 11B of the Patents Act,
1970

Once a request for examination has been made in respect of a patent application, the Controller
must refer the application, specifications of the patent and other documents related to the patent
to the Examiner who prepares a report by taking into account the various considerations for
granting a patent.4 These include:
• the subject matter of a patent, whether or not it is patentable;
• novelty;
• inventive step;
• capable of industrial application.

The Examiner must also take the following matters into consideration while preparing a report:

• ensure that the application, specifications and other documents related to the patent are
in accordance with the provisions of the Patents Act, 1970 and the rules made under the
Act;
• while pursuing the application, consider whether the grant of the patent can be objected
on any lawful ground;
• consider the investigation results found under Section 13.
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.

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.

REVOCATION OF PATENT

Revocation means cancellation or annulment of something by the respective authority. After

revocation, the title and privilege of the person or institution are taken away from them.

Revocation of the patent is filed after the patent is granted, by way of a revocation petition, the rights
and privilege gained after the grant of a patent is taken away from the inventor or the patent applicant.

CONDITIONS FOR REVOCATION OF PATENTS

The patent which is ambiguous or vague in its mode of application, and is not considered in the interest
of the public is revoked by the Central Government. The notice of revocation is mentioned in the
Official Gazette, along with the reasons for the same.

GROUNDS OF REVOCATION OF PATENT APPLICATION

There are four basic grounds through which a patent application can be revoked:

• Surrender of Patent
• A revocation under Section 64 of the Patents Act
• Revocation of patent related to atomic energy
• Revocation of a patent that is not in public interest
• Revocation on the grounds of being 'Non-Working'

The party interested or the central government can file an application on the following grounds
for revocation:

• The claims mentioned in the complete specification do not involve a patentable subject matter
• The person who has applied for a patent application is not entitled to claim the invention
• The claims mentioned in the invention are not novel as they are either the part of claims
mentioned in the complete specification with a priority date before the date of the application.
 • The patent granted has been obtained through a fraudulent manner or suggestion.
• The patent granted is contrary to law.
• If the invention lacks an inventive step
• The information provided by the patentee regarding the invention is false

Section 64 lays down grounds for revocation under the Indian Patents Act. However, the grounds
mentioned in this section is not exhaustive.

Therefore, Section 65, 66 and 85 are also used for defining the grounds for revocation proceedings.

TRANSFER OF PATENT
• A patent is a transferable property.
• It can be transferred from original patentee to any other person. Section 68 of the Patent
Act 1970 provides for the mortgage of, license in or creation of interest in the patent.
Forms of transfer of patent rights-
The patentee is authorized to assign, grant license/s or otherwise deal with the patent for a
consideration. The transfer of patent is generally in the following form: 1. Assignment 2.
License 3. Transmission of patent by operation of law.