Notes On IPR

Study Notes on IPR, by Dr. M. S. Khairnar, Asst. Prof.
BV YCLC Karad | Intellectual Property Law
DSC – 602 INTRODUCTION TO INTELLECTUAL PROPERTY LAW (Paper – II)
SYLLABUS –
Unit-I: Introduction to the Principles of Intellectual Property and Relevant Laws in India
1.1 Introduction to Intellectual Property
1.1.1Concept of property
1.1.2 Various forms of property
1.1.3 Nature of Intellectual Property Rights
1.1.4 Economic importance of Intellectual Property
1.2 Major Philosophical Justifications for Intellectual Property Protection: Western and Indian
Philosophies related to Intellectual Property
1.2.1 Natural Rights Theory
1.2.2 The Utilitarian Theory
1.2.3 Personality Theory
1.2.4 Constitution of India and Aspects of Property and Intellectual Property
1.3 An overview of Kinds of Intellectual Properties and Laws relating thereto in India
1.3.1 Kinds of Intellectual Properties Trade Marks, Patents, Copyrights and Related
Rights, Industrial Designs, Geographical Indications, Layout Designs of Integrated
Circuits, Plant Varieties, Information Technology and Data Protection, Trade Secrets
1.3.2 Statutory and Common Law Protection to various Kinds of Intellectual Properties:
A Brief Overview of relevant Indian laws.
Unit-II: International Intellectual Property Regime
2.1 Historical Development of IPRs at International Level
2.2. Introduction to the leading international instruments concerning intellectual property rights:
2. 2.1 Paris Convention
2.2.2 Berne Convention
2.2.3 WIPO and agreements under it: WCT, PCT, Madrid, Hague,
2.2.4 Budapest Treaty
2.2.5 Trade Related Aspects of Intellectual Property Rights
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Study Notes on IPR, by Dr. M. S. Khairnar, Asst. Prof. BV YCLC Karad | Intellectual Property Law
2.3 Introduction to other International Agreements, Conventions and Enforcement Mechanism

dealing with Specific Intellectual Properties
Unit III: Introduction to the Concept and International Legal Instruments Relating to
Copyright Law
3.1. Concept of copyright
3.2. Justification for Copyright Protection
3.3. Brief Historical development of Copyright Law
3.3.1. Indian History of Copyright Law
3.3.2International Instruments related to Copyright
3.3.2.1. The Berne Convention for the Protection of Literary and Artistic Works,
1886.
3.3.2.2. Rome Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organizations (1961).
3.3.2.3. Universal Copyright Convention, 1952
3.3.2.4. Trade Related Aspects of Intellectual Property Rights, 1995. (TRIPs),
3.3.2.5. WIPO Performances and Phonograms Treaty, 1996 (WPPT),
3.3.2.6. WIPO Copyright Treaty, 1996 (WCT),
3.4 Subject and Criteria of Protection under Copyright law
3.4.1.1 Basic requirements to seek Copyright Protection over any work
3.4.1.2 Works in which Copyright Subsist: Copyright Act Provisions
3.5 Related Rights
3.5. 1 Performer’s Right
3.5. 2 Broadcasting Organization’s Right
Unit IV: Commercial dealing with Copyrighted Work
4.1 Who is an owner?
4. 2 Economic and Moral Rights associated with Copyright recognised in India
4.3 Duration of copyright

4.4 Assignment of Copyright

4.5 Licensing of copyright
4.5.1 Voluntary
4.5 2 Compulsory
4.5.3 Statutory
4.6 Infringement of Copyright
4.6.1 Elements of infringement of copyright
4.6.1.1 Who can sue?
4.6.1.2 Burden of Proof
4.6.1.3 Secondary liability for infringement
4.6.1.4 Exceptions: Purpose and usage of fair dealing – fair use
4.7 Remedies for infringement
4.7.1 Civil remedies
4.7.2 Criminal Remedies
4.7.3 Administrative remedies
Unit V: An Introduction to Trademarks
5.1 Meaning, Characteristics and Functions of trademark and Need for Trademarks Protection
5.2 Evolution of Trademark Law in India
5.3 International Developments and Dimensions of Trademark Protection
5.3.1 Paris Convention 1883
5.3.2 TRIPS 1995
5.3.3 Madrid System of International Registration of Marks
5.3.4 Trademark Law Treaty 1994
5.3.5 Nice Agreement 1957
5.3.6 Vienna Agreement 1973
5.4 Kinds of Trademarks
5.5 Creation of Trademark

5.5.1 The distinctive Spectrum

5.5.2 Concept of Acquired Distinctiveness and Generic Marks
5.6 Bars to Trademark Protection
5.6.1 Absolute grounds of refusal
5.6.2 Relative grounds of refusal
Unit VI: Law regarding Registration, Rights, Infringement and Remedies related to
Trademarks
6.1 Procedure for registration of Trademarks
6.2 Honest and Concurrent Use
6.3 Effects of registration: Rights of Registered Trademark owners
6.4 Assignment and licensing of Trademarks
6.5 Infringement of Trademarks
6.6 Protection of Well-known Trademarks
6.7 Statutory Remedies for Trademarks Infringement and Common Law remedy of Passing Off
6.8 Defenses against Trademarks Infringement
Unit VII :Fundamentals of Patenting
7.1 Meaning and Concept of Patent
7.2 Significance of Patent System
7.3 Historical Background of Patents
7.3.1 History of Patent Law in India
7.3.2 Position of Patent Law in India
7.3.2.1 Nature and Extent of Patent Rights
7.3.2.2 Rights of the Co-owners
7.3.2.3 Persons Entitled to Exercise the Patent Rights
7.3.3 History of Patent Law in Other Countries
7.4 Types of Patents
7.5 World Patent


7.5.2 Patent Cooperation Treaty
7.5.3 International Application
7.6 Things that may be patented (Sec-2)
7.7 Things that cannot be patented (Sec-3)
7.8 Basic Elements of Patentability in an Invention
Unit VIII: Law relating to Patent Application, Patent Infringement
8.1 Procedure for filing Patent Application
8.1.1 Revocation of Patent, Licensing, Compulsory Licensing
8.1.2 Parallel Import
8.1.3 Prior publication or anticipation
8.1.4 Obviousness and the lack of inventive step
8.1.5 Insufficient description
8.2 Infringement
8.2.1 Criteria of infringement
8.2.2 Onus of proof
8.2.3 Patent Infringement
8.2.4 Defenses in suits of infringement

Introduction to Intellectual Property Law

Question Bank
1. Explain the concept trademark with its characteristics & discuss effects of registration of
trademark.
2. Discuss the procedure for registration of trademarks in detail.
3. Write detail note on infringement of trademarks with illustrations & discuss the defences
against the infringement of trademark.
4. Discuss the rights of Registered Trademark owners & explain in detail remedies for
infringement of trademark.
5. Explain about infringement of trademarks & discuss the remedies for infringement of
trademark.
6. Explain the meaning, concept and types of Patent along with the historical background of
the law relating thereto.
7. Explain the Substantive Patentability Requirements as per the Patents Act 1970.
8. Explain in detail the procedure for filing Patent Application under the Patents Act 1970.
9. Explain in detail the provisions relating to Infringement of Patent under Patents Act 1970.
10. Discuss the concept 'Patent' explain about infringement of patent with defences in suit for
infringement of patent.
11. Explain in detail concept of copyright and analyze the subject matters of copyrights.
12. Discuss briefly historical development of copyright law and explain subject & criteria of
protection under copyright law.
13. Explain fully performer's rights and Broadcasting Organization's rights.
14. Discuss the international instruments related to copyright in detail.
15. Write a detail note on Author of copyrights and various rights of author.
16. Explain fully terms of copyright in different categories of creative work.
17. Write a brief note on transfer and licensing of copyrights.
18. Write a full note on Infringement of copyright.
19. Explain fully which Act does not amount to Infringement of copyrights & Briefly explain
remedies available against infringement of copyrights.
20. Write detail introduction and nature to Intellectual Property with the concept and Various
forms of property.
21. Explain Nature of Intellectual Property Rights. What is the Economic importance Under
Intellectual Property?
22. Explain Introduction and Nature to Intellectual Property. Write Philosophical
Justification for Intellectual property protection with various theories under IPRs.
23. What is Intellectual Property? Write in detail various kinds of intellectual property.
24. What are the Statutory and Common Law Protection to various kinds of Intellectual
Properties under Indian laws?
25. What are the Western and Indian Philosophies related to Intellectual Property? Elaborate
natural rights theory and the utilitarian theory.

26. Write Historical Development of International Intellectual Property Regime.

27. Write Detail note on Following International instruments concerning IPRs.
A) Paris Convention.
B) Berne Convention.
C) WIPO and agreements under it: WCT, PCT, Madrid, Hague.
D) Budapest Treaty.
E) Trade Related Aspects of Intellectual Property Rights.
28. Write Historical Development of IPRs. Elaborate other International Agreements,
Conventions and Enforcement Mechanism dealing with Specific Intellectual Properties.
A) Budapest Treaty.
B) Trade Related Aspects of Intellectual Property Rights.
31. Explain the Concept of "Owner" under copyright Law? Discuss Various Rights of Owner
of Copyright?
32. Explain the provisions relating to works protected under Copyright Act.
33. Explain Civil, Criminal and Administrative remedies available for Infringement of
Copyright.
34. Who is the first owner of copyright? Explain rights associated with copyright and Explain
the term of copyright with respect to each work under copyright law.
35. Discuss Meaning, Characteristics and Functions of trademark and Need for Trademarks
Protection.
36. Explain in detail International Developments and Dimensions of Trademark.
37. Define Trademark with characteristics. Explain in detail evolution of Trademark Law in
India.
38. Explain Absolute and Relative grounds for refusal of registration of Trademark.
Write notes on-
1. Trademark Law Treaty, 1994
2. Madrid System of International Registration of Marks
3. Paris Convention 1883
39. Explain the term copyright. Discuss about assignment & licencing of copyright.
40. Explain the term trademark. Discuss about Bars to Trademark Protection.
41. Explain the concept trademark with effect of registration & discuss about assignment &
licencing of trademark.
42. Explain the concept 'Patent & discuss the position of patent law in India.
43. Explain trademark & discuss kinds of trademarks with functions of trademark.

Short notes on-

1. Assignment & licensing of trademark.
2. Defences against trademarks infringement.
3. Passing off-common law remedy
4. Protection of trademarks
5. Rights of Registered Trademark owners.
6. Defences in Suit for Infringement of Patent
7. Nature and Extent of Rights
8. Types of Patent
9. International Patent Application Filing under Patent Act 1970
10. Patent Cooperation Treaty
11. Who can file Patent Application under Patents Act 1970
12. Budapest Treaty related to Patent
13. WIPO Copyright Treaty 1996
14. Universal Copyright Convention 1952
15. Berne Convention for the protection of Literary and Artistic Works, 1886
16. Rome Convention for the protection of Performer, Producer of Phonograms & Broadcasting
Organisation 1961.
17. Licensing of copyright
18. Assignment of copyright
19. Civil Remedies for infringement of copyright.
20. Criminal Remedies for infringement of copyright.
21. Administrative Remedies for infringement of copyright.
22. Natural Rights Theory
23. The Utilitarian Theory
24. Personality Theory
25. Historical development of copyright.
26. Trade Related Aspects of Intellectual Property Rights.
27. Constitution of India and Aspects of Property and Intellectual Property
28. Economic importance of Intellectual Property
29. Paris Convention concerning IPT
30. Berne Convention concerning IPRs
31. WIPO and agreements under : WCT, PCT, Madrid, Hagu
32. Berne Convention for the Protection of Literary and Artistic Works 1886.
33. Mode of assignment of copyright
34. Performer's rights
35. Compulsory licence in unpublished or published work
36. Term of copyright
37. Fair Dealing "fair Use" Doctrine under Copyright law

38. Anton Pillor Order under Copyright law

40. Essentials of a trade mark
41. Internet Domain Names and Trade Marks
42. Service Macks and Collective Marks
43. Associated Marks and Certification Marks
44. Well known trade mark
45. World Intellectual Property Organization.
46. Effects of registration of trademark
47. World Patent
48. Significance of Patent System.
49. Basic elements of patentability in an invention.
50. Patent infringement

Unit-I: Introduction to the Principles of Intellectual Property and Relevant Laws in India
1.2 Major Philosophical Justifications for Intellectual Property Protection: Western and Indian
Philosophies related to Intellectual Property
Questions
1. Write detail introduction and nature to Intellectual Property with the concept and
Various forms of property.
2. Explain Nature of Intellectual Property Rights. What is the Economic importance
Under Intellectual Property?
3. Explain Introduction and Nature to Intellectual Property. Write Philosophical
4. What is Intellectual Property? Write in detail various kinds of intellectual property.
5. What are the Statutory and Common Law Protection to various kinds of Intellectual
6. What are the Western and Indian Philosophies related to Intellectual Property?
Elaborate natural rights theory and the utilitarian theory.

Que. Write detail introduction and nature to Intellectual Property with the concept and
Various forms of property.

The word property is used in numerous senses in general. Every object, whether tangible or
intangible having some value to human beings, may be termed as Property. The essential
characteristic of Property is the value attached to it.
It is the right to enjoy and to dispose of certain things in an absolute manner as one thinks it fit.
The word “property” is derived from the Latin word proprietary and the French equivalent
properties, which means a thing owned. The concept of property and ownership are very similar
to each other.
According to Bentham, the term property includes ownership of material objects alone.
According to Salmond while defining the term property, observed that the term might be
understood in one of the three senses mentioned below:
(i) The term property includes all the legal rights of a person. That is to say that it includes complete
ownership of a man on material as well as incorporeal things.
(ii) The term includes not a man’s personal rights, but only his proprietary rights.
Kinds of properties
Property is basically of two categories : Corporeal Property and Incorporeal Property. Corporeal
Property is visible and tangible, whereas incorporeal Property is not. Moreover, corporeal Property
is the right of ownership in material things, whereas incorporeal Property is an incorporeal right
in rem.
Corporeal Property is further categorized into Movable and Immovable Property. Incorporeal
Property is classified into two categories : in re propria and rights in re aliena or encumbrances.
Major types of property:

• Movable property and Immovable property.
• Tangible property and Intangible property.
• Private property and Public property.
• Personal property and Real property.
• Corporeal property Incorporeal property.

Intellectual Property
Meaning
Intellectual Property is, in simpler terms, creation of intellect or wisdom or of the human mind. It
is related to intellectual innovation and innovation in the literary, scientific and artistic fields.
Nations around the world are making efforts toward protecting intellectual property.
Kinds of Intellectual Property

Intellectual Property may be classified into various categories.
However, a few of the most widely utilized and owned intellectual properties have been discussed
below:
Patent
A patent is a kind of Property that has intellectual worth attached to it. It is an exclusive right
granted for an invention which is a product which is a result of a person’s ability to of doing
something or offers a new technological solution to a problem.
In order to obtain a patent, it is necessary that the technological information must be disclosed to
the public in a patent application. A patent so obtained remains in force for twenty years.
Trademark
Another widely popular form of intellectual Property is a trademark. Trademark is a sign capable
of distinguishing goods and services of one enterprise from another. These are basically a means
to protect the unique identity of renowned brands.
It enables a customer to recognize the brand or the product instantly without being misled. An
example of a trademark would be the logos or slogans used by brands to make their products
uniquely identifiable.
Copyright
Copyright is available to the creators of literary, dramatic, musical, artistic, producer of
cinematograph acts or sound recording. It determines whether and in what conditions the original
work may be used by persons other than the owner of the unique intellectual property.
Almost every product has copyright. These include the visible symbols on the product packaging
and label etc. Copyrights protect original creative work has been written down on a piece of paper,
saved on electronic storage hard drive device or preserved in some other tangible format.
Geographical Indicators (gi)

It is an indicator used on products having a specific geographical origin and possess qualities that
exist due to their basic origin. The sign must identify a product as originating in a given place, and
the quality, characteristics or reputation should be due to the place of origin. Recently, Rasgulla
from Orissa and Kadaknath chicken from Madhya Pradesh has been granted the geographical
indication tag in India.

Industrial Design
Industrial design is related to the products which are a part of the industrial set up. It refers to the
shape, configuration, colour or pattern which may be an ornamental or aesthetic aspect of a
product. The owners of a registered industrial design have a right to prevent third parties from
making, selling, importing articles bearing a design which is a copy. Thereby any person using
someone else’s industrial design may be liable to pay damages to the owner of the industrial
design.
Trade Secret
Trade secret in simpler terms implies the strategy adopted by the owner of the business. It may be
any confidential business information which provides an organization with a complete edge in the
world market of the respective product it deals with.
A trade secret is an initial step for an investor. It is essential that the idea or formula behind the
unique trade opportunity remains secretive. Any person or organization indulging in unauthorized
use of trade secrets is regarded to be guilty of unfair trade practice. For example, the recipe of any
popular noodles brand may be considered as a trade secret of that brand.
Commercial Goodwill
Commercial goodwill is a prominent form of incorporeal right. The goodwill of a commercial
business is a valuable right acquired by the owner by his labour and skill. The owner has the
exclusive right of use and profit from the business and anyone who seeks to make use of it by
falsely representing to the public that he is himself carrying on the business in question shall be
violating this right.
Que. Explain Nature of Intellectual Property Rights. What is the Economic importance
Under Intellectual Property?

In its broadest sense, the term “Intellectual Property” includes ideas, concepts know-how, and
other creative abstractions, and also, the literary, artistic, or mechanical expressions that embody
such abstractions.
1.The IP rights are intangible rights over the tangible rights.
2.If there is an infringement in the use of rights by some other party, the owner of such
rights has the right to sue such party for the infringement.
3.There are rights as well as duties on the owner. It means that IP does not only confer the
rights.
4.Many a times it is seen that there is co-existence of different rights at the same time.
5.It is also pertinent to note that there are exhaustion of rights in the case of IP rights.
Need to protect IPR

1.New inventions in the field of science and technology.
2.It encourages the publication, distribution, etc in the public and the world is benefitted.

3.For the promotion of economic development which thereby increases the quality of life.
In India, there are various legislations enacted for the protection of intellectual property rights. It
is based on the TRIPS agreement.
Intellectual Property is that property that is developed by the human mind and by human intellect.
Now intellectual property and rights attached to intellectual property are becoming very precious
and valuable.
Intellectual property rights have great importance in the growth of a country. IPR promotes
innovation which leads to economic growth.
The Connection between Intellectual Property and Economy
The role of Intellectual property in the economy are:
• To provide exclusive rights to the and to protect the interest of the creator and encourage
investment in research and information creation;
• Forbid the competitors or anybody from exploiting or misuse the property without the
permission of the creator; and
• To create a market for that invention so that it could be given to good use and will motivate
others to innovation and creation.
Que. Explain Introduction and Nature to Intellectual Property. Write Philosophical

1.2 Major Philosophical Justifications for Intellectual Property Protection: Western and
Indian Philosophies related to Intellectual Property
The ancient Greek philosophers are credited with laying down the foundations of western
philosophy. Both Socrates and Plato were against private rights and advocated collective rights.
In recent centuries, we have witnessed tremendous technological changes and scientific
innovations, accompanied by a drastic change in the economy and our lifestyles.
The present era is known as the knowledge economy or information economy wherein the
production of goods and services depends on knowledge-intensive activities.
The intellectual property rights function with the underlying principle of protecting the products
of human intellect in the same way physical properties are safeguarded.
The theories of intellectual property rights play a definite role in making someone understand the
rights offered and the reason behind the same.
The five theories that this article encompasses are;
1. The natural rights theory has been constructed on the basis of John Locke’s idea.
2. The utilitarian theory is based on the Benthamite ideal of “the greatest good for the
greatest number.”
3. The deterrence theory supports morality.

4. The ethic and reward theory promotes the ethical and moral aspect of intellectual
property rights.
5. The personhood theory, which was propounded by Kant and Hegel.
Immanuel Kant (1724-1804) proposed a metaphysical theory wherein he asserted the inviolability
of individual human personality (Mishra, 2009). Kant states ‘Nothing is originally mine without a
judicial act’.
John Locke advocated private property on the basis of labour and division of labour.
Perhaps, in the modern context, we need to understand ‘labour’ in a broad sense as ‘efforts’ (e.g.,
expenditure in terms of resources) for justifying intellectual property rights. After all, the
production of intellectual outputs such as inventions, books, movies, paintings, etc.
According to Leon Duguit, it is the duty of the individual to employ his physical, intellectual, and
moral forces to enrich social interdependence.
The term “natural right” signifies a fundamental right that a person has in his possession. The
natural rights theory takes into consideration that everyone has a natural property right on his, or
her ideas. This is because creation is the result of both labour, and creativity of the person putting
it into effect.
Drawing its roots from John Locke’s philosophy that says an author has a natural right over the
output of his, or her intellectual endeavours, the natural rights theory is applicable to both tangible
and intangible properties.
The extension of this theory incorporates the right to use or to exclude others from use and the
right to transfer the object owned. As ownership over a creation becomes a natural right of the
owner, infringement, or unauthorized use of the same will be considered as an offence. This idea
has been incorporated by different categories of intellectual property as well.
The utilitarian theory derived from thoughts of Jeremy Bentham, and John Stuart Mill. They
focused on the “greatest good for the greatest number”. While the term “utilitarian” signifies
“social welfare”.
The utilitarian theory is also known as the incentive theory because the theory endorses society’s
duty to respect the innovator’s right to ownership on his/her creation which is not only a source of
profit for the creator himself/herself but the society as a whole.
The personhood theory provides that it is the creator’s creation that builds his or her personality
thereby clarifying an individual’s personality is inherent to his or her property right.
The theory is based on Hegel’s philosophy, which provides that intellectual property rights are
also associated with safeguarding personality development that extends to material things.


Intellectual Property and India has a good long history dating back to the ancient years of Indus
Valley Civilization.
Intellectual Property Law was first brought to mainstream in India by the British Empire by
implementing the British Patent Act, 1852.
The recognition of Intellectual Property as a property by the Indian Constitution is vague and
unambiguous. The Constitution of India does not openly declare an Intellectual Property as a
property but at the same time it also does not reject the same.
Preamble of the Constitution of India permits mixed economy system and recognises the economic
liberty as one of the most important liberties.
The substitution of Article 19 (f) didn’t mean the end of “Right to Property”, the insertion of
another Article i.e. Article 300A through the 44th Amendment Act 1978. This has changed it to a
Constitutional right from fundamental right. Due to this change any legislation violating the
constitutional “Right to Property” could now be challenged only in High Courts and not directly
in the Supreme Court.
Article 300A of the Indian Constitution provides constitutional safeguards against unlawful
deprivation of property.
Que. What are the Statutory and Common Law Protection to various kinds of Intellectual
Common types of IP include:
• Copyright – this protects written or published works such as books, songs, films, web
content, and artistic works;
• Patents – this protects commercial inventions, for example, a new business pr
• product or process;
• Designs – this protects structures, such as drawings or computer models;
• Trademarks – this protects signs, symbols, logos, words, or sounds that distinguish your
products and services from your competitors.
There are well-established statutory, administrative, and judicial frameworks for safeguarding
IPRs in India. Therefore, it becomes pertinent here that India has complied with its obligations
under the Agreement on Trade-Related Intellectual Property Rights (“TRIPS”) by enacting the

necessary statutes and amending the existing laws. In addition, India is also a member of the World
Intellectual Property Organization, a body responsible for promoting intellectual property rights
throughout the world.
Since 1995, India has been a member of the World Trade Organization (WTO). WTO members
must include some form of intellectual property protection in their national legislation. This
implies that if you conduct business with India, you will notice certain similarities between local
intellectual property legislation and enforcement procedures and those in the UK.
India is also a signatory to the following international intellectual property treaties:
• The Paris Convention – According to this, any individual from a signatory state can file for
a patent or trade mark in any other signatory state and be granted the same enforcement
rights and status as a national of that country.
• The Berne Convention – According to this, each member state recognizes the copyright of
authors from other member countries in the same way as it recognizes the copyright of its
nationals.
• The Madrid Protocol – A person can file a single trademark application with their national
office to grant protection in numerous countries.
• The Patent Cooperation Treaty – This is a centralized approach for getting a ‘bundle’ of
national patent applications in many countries via a single application.
India also has many subordinate governing legislations for IPR. Intellectual property rights in India
are administered by Department of Industrial Policy & Promotion, under Ministry of Commerce
and Industry.
In India, there are 7 types of intellectual property rights, namely – copyright, trademarks, patents,
geographical indications, plant varieties, industrial designs and semiconductor integrated circuit
layout designs.
Intellectual properties rights in India is governed under the following Acts:
1. The Copyrights Act, 1957 (“Copyright Act”)

Copyright protects the expression of an idea rather than the idea itself. Under section 13 of the
Copyright Act, a protection under copyright can be obtained for ‘original literary, dramatic,
musical and artistic works; cinematograph films; and sound recording’.
2. The Trade Marks Act, 1999 (“Trade marks Act”)

The Trade Marks Act, under section 2(zb) defines a ‘trade mark’ as ‘a 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 shape of goods, their packaging and combination of
colours…’. In simpler words, a trademark provides protection for symbols, colours, shapes, words,
etc. representing and relating to a good or a service.

3. The Patents Act, 1970 (“Patents Act”)

A ‘Patent’ is an intellectual property right which protects any new invention. It is an exclusive
right that protects the rights of the inventor and prevents other people to unauthorizedly use and
misappropriate the registered patent.
A patent is granted for a term of 20 (twenty) years from the date of filling of the application.
4. The Design Act, 2000 (“Design Act”)

A ‘design’ under the Designs Act [section 2(d)] means and includes ‘only the features of shape,
configuration, pattern, ornaments 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 an are judged solely by the eye’.
5. The Geographical Indications of Goods (Registration and Protection) Act, 1999 (“GI Act”)
Many goods in India are widely popular owing to their place of origin. For instance, ‘Darjeeling
tea’ is unique and popular owing to many factors including but not limited to its origin, the skill
set of the tea farmers of Darjeeling and the weather prevailing in that area. Other such examples
of products which have a bearing of the place of origin (or factors specific to the place of origin
includes Banarsi Saree; Basmati Rice, etc).
6. The Protection of Plant Varieties and Farmer’s Rights Act, 2001 (“Plant Varieties Act”)
The objective of the Protection of Plant Varieties and Farmer’s Right Act, 2007, is to recognize
rights of Indian farmers and to provide protection to plant varieties in order to encourage the
growth and development of more plant varieties.
7. The Semiconductor Integrated Circuits Layout- Design Act, 2000 (“SICLD Act”)
A ‘semiconductor integrated circuit’ is defined as ‘a product having transistors and other circuitry
elements which are inseparably formed on a semiconductor material or an insulating material or
inside the semiconductor material and designed to perform an electronic circuitry function’.
The National Intellectual Property Rights (IPR) Policy, 2016 was a vision project of Indian
government, to guide the future developments of the Intellectual Property and its Rights in the
country. It seemed to place an institutional mechanism for implementation and monitoring of
developments in global as well as national IPR’s.

Unit-II: International Intellectual Property Regime

2.2. Introduction to the leading international instruments concerning intellectual property rights:
2.3 Introduction to other International Agreements, Conventions and Enforcement Mechanism
dealing with Specific Intellectual Properties
Questions
1. Write Historical Development of International Intellectual Property Regime.
D) Budapest Treaty.
Conventions and Enforcement Mechanism dealing with Specific Intellectual Properties.
A) Budapest Treaty.
Que. Write Historical Development of International Intellectual Property Regime.

Origin of Intellectual Property (IP)
The Intellectual Property (IP) is a term referred to work or inventions that are a result of some
individual’s original creativity. It basically, means the legal rights arising out of an intellectual
activity in any field like literary, industrial and artistic or industrial etc.
The Statute of Monopolies (1624) and the British Statute of Anne (1710) are seen as the origins
of patent law and copyright respectively, firmly establishing the concept of intellectual property.

The first known use of the term intellectual property dates to this time, when a piece published in
the Monthly Review in 1769 used the phrase.
The importance of the Intellectual Property was first recognised by the Paris Convention for the
Protection of Intellectual property (1883) and the Berne Convention for the Protection of Literary
and Artistic Works (1886). Both these treaties were originally administered by WIPO.
Prior to the General Agreement on Tariffs and Trade (GATT), the Intellectual Property and its
related rights were not a subject, to any international trade negotiations.
The laws and legislation procedures relating to the IPR have their roots in Europe. The trend of
Patents started in the 14th Century, they were technologically less advanced than England.
The World Intellectual Property Organisation or WIPO is a specialized agency of the United
Nations (UN) that was created in 1967 and is headquartered in Geneva, Switzerland.
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995 is an
international agreement, among the member countries of the World Trade Organisation (WTO).
Question
D) Budapest Treaty.
Conventions and Enforcement Mechanism dealing with Specific Intellectual
Properties.
A) Budapest Treaty.
2.2. Introduction to the leading international instruments concerning intellectual property

rights:
Paris Convention for the Protection of Industrial Property of March 20, 1883

The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on 20
March 1883, was one of the first intellectual property treaties. It established a Union for the
protection of industrial property. The convention is currently still in force.
The Paris Convention is administered by the World Intellectual Property Organization (WIPO).
As of 21 April 2022, the convention has 179 contracting member countries.
The Paris Convention adopted in 1883 applies to industrial property in the widest sense, including
patents, trademarks, industrial designs, utility models (a kind of "small-scale patent" provided for
by the laws of some countries), service marks, trade names (designations under which an industrial
or commercial activity is carried out), geographical indications (indications of source and
appellations of origin) and the repression of unfair competition.
The substantive provisions of the Convention fall into three main categories: national treatment,
right of priority, common rules.
• Under the provisions on national treatment, the Convention provides that, each
Contracting State must grant the same protection to nationals of other Contracting States
that it grants to its own nationals.
• The Convention provides for the right of priority in the case of patents (and utility models
where they exist), marks and industrial designs.
• The Convention lays down a few common rules that all Contracting States must follow.
The Berne Convention for the Protection of Literary and Artistic Works 1886, usually known
as the Berne Convention.
The Berne Convention, was an international assembly held in 1886 in the Swiss city of Bern by
ten European countries with the goal to agree on a set of legal principles for the protection
of original work.
The Berne Convention introduced the concept that protection exists the moment a work is "fixed",
that is, written or recorded on some physical medium, its author is automatically entitled to all
copyrights in the work and to any derivative works,
It provides creators such as authors, musicians, poets, painters etc. with the means to control how
their works are used, by whom, and on what terms.
It is based on three basic principles and contains a series of provisions determining the minimum
protection to be granted, as well as special provisions available to developing countries that want
to make use of them.

It is based on three basic principles and contains a series of provisions determining the minimum
protection to be granted, as well as special provisions available to developing countries that want
to make use of them.
(1) The three basic principles are the following:
(a) Works originating in one of the Contracting States (that is, works the author of which is a
national of such a State or works first published in such a State) must be given the same protection
in each of the other Contracting States as the latter grants to the works of its own nationals
(principle of "national treatment").
(b) Protection must not be conditional upon compliance with any formality (principle of
"automatic" protection).
(c) Protection is independent of the existence of protection in the country of origin of the work
(principle of "independence" of protection). If, however, a Contracting State provides for a longer
term of protection than the minimum prescribed by the Convention and the work ceases to be
protected in the country of origin, protection may be denied once protection in the country of origin
ceases.
(2) The minimum standards of protection relate to the works and rights to be protected, and to
the duration of protection:
the following are among the rights that must be recognized as exclusive rights of authorization:
▪ the right to translate,
▪ the right to make adaptations and arrangements of the work,
▪ the right to perform in public dramatic, dramatico-musical and musical works,
▪ the right to recite literary works in public,
▪ the right to communicate to the public the performance of such works,
▪ the right to broadcast (with the possibility that a Contracting State may provide for a
mere right to equitable remuneration instead of a right of authorization),
▪ the right to make reproductions in any manner or form
The World Intellectual Property Organization (WIPO) is one of the 15 specialized agencies of
the United Nations (UN).
Pursuant to the 1967 Convention Establishing the World Intellectual Property Organization, WIPO
was created to promote and protect intellectual property (IP) across the world by cooperating with
countries as well as international organizations. It began operations on 26 April 1970 when the
convention entered into force.

The Bureaus created to administer the Berne Convention for the Protection of Literary and Artistic
Works and the Paris Convention for the Protection of Industrial Property were under "the high
supervision" of the Government of the Swiss Confederation. In 1893 the Swiss government
combined them with the same director and same staff as United International Bureaux for the
Protection of Intellectual Property, Bureaux internationaux réunis pour la protection de la
propriété intellectuelle (BIRPI).
BIRPI was the predecessor of the World Intellectual Property Organization (WIPO) which
superseded it 87 years later, in 1970. WIPO was formally created by the Convention Establishing
the World Intellectual Property Organization, which entered into force on 26 April 1970.
Functions of WIPO
WIPO's activities include-
- hosting forums to discuss and shape international IP rules and policies,
- providing global services that register and protect IP in different countries,
- resolving transboundary IP disputes,
- helping connect IP systems through uniform standards and infrastructure, and
- serving as a general reference database on all IP matters; this includes providing reports and
statistics on the state of IP protection or innovation both globally and in specific countries.
The WIPO Copyright Treaty (WCT) is a special agreement under the Berne Convention that deals
with the protection of works and the rights of their authors in the digital environment.
Any Contracting Party (even if it is not bound by the Berne Convention) must comply with the
substantive provisions of the 1971 (Paris) Act of the Berne Convention for the Protection of
Literary and Artistic Works (1886).
Patent Cooperation Treaty
The Patent Cooperation Treaty (PCT) (1970) established a service which assists individuals,
companies, and institutions in seeking patent protection internationally for their inventions. 153
countries are currently party to the PCT.
Under the PCT, an applicant can file one PCT application in one language, at one patent office,
within 12 months from the date of the earliest patent application which has been filed for the same
invention (the "priority date"). This one PCT application has the same legal effect as filing separate
regional or national patent applications in all PCT member countries.

Madrid System
The Madrid System for the International Registration of Marks serves as a means to seek
protection for trademarks worldwide, in over 120 countries.
Created in 1891, the Madrid System is now governed by the Madrid Protocol Relating to
the Madrid Agreement Concerning the International Registration of Marks (1989). In order to
become a member of the Madrid System, a state or intergovernmental organization must already
be a party to the Paris Convention for the Protection of Industrial Property (1883).
Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the
Purposes of Patent Procedure
Budapest Treaty is an international treaty signed in Budapest, Hungary, on April 28, 1977.
Adopted in 1977, the Budapest Treaty concerns a specific topic in the international patent process:
microorganisms.
The Treaty is open to States party to the Paris Convention for the Protection of Industrial
Property (1883).
All states party to the Treaty are obliged to recognize microorganisms deposited as a part of the
patent procedure, irrespective of where the depository authority is located.
In practice this means that the requirement to submit microorganisms to each and every national
authority in which patent protection is sought no longer exists.
Trade Related Aspects of Intellectual Property Right (TRIPS) is an agreement on international IP

rights.
• TRIPS came into force in 1995, as part of the agreement that established the World Trade
Organisation (WTO).
• TRIPS establishes minimum standards for the availability, scope, and use of seven forms
of intellectual property namely, trademarks, copyrights, geographical indications, patents,
industrial designs, layout designs for integrated circuits, and undisclosed information or
trade secrets.
• It applies basic international trade principles regarding intellectual property to member

states.

• It is applicable to all WTO members.
• TRIPS Agreement lays down the permissible exceptions and limitations for balancing the
interests of intellectual property with the interests of public health and economic
development.
Features of the TRIPS
There are three main feature of the TRIPS agreement which are as follow:
1. Standard
2. Enforcement
3. Dispute settlement
Standard: The main element of trade related aspect of intellectual property is to protect the subject
matter.
Enforcement: The second element is about domestic procedure and remedies provisional measure
special related to border measure.
Dispute settlement: The agreement makes dispute between world trade organization members
arising with respect to the trade related aspect of intellectual property obligation subject to the
world trade organization dispute settlement procedure.
2.3 Introduction to other International Agreements, Conventions and Enforcement

Mechanism dealing with Specific Intellectual Properties
The Universal Copyright Convention (UCC)
The Universal Copyright Convention (UCC), was first created in 1952 in Geneva, as an alternative
to the Berne Convention. Some countries were not in favour of certain articles in the Berne
Convention and did not agree to sign the terms of the Berne Convention.
There are two main bodies – World Intellectual Property Organization (WIPO) under UN which
administers 1-7 treaties mentioned below. the 8th treaty is independent of any organization.
Another relevant body is the World Trading Organization. 9th (or TRIPS) is administered by the
WTO. the 10th treaty comes under UNESCO.
1. Paris Convention for Industrial Property, 1883 – Since it deals only with
Industrial property, it covered only Patents and Trademarks. It was among the first
treaties to recognize various principles of international trade like National
Treatment, Right of Priority, Common rules etc.

2. Bern convention for literary and artistic works, 1886 – It provided for a
copyright system. It doesn’t provide for any formality to claim protection.
Protection is automatically accorded to any creation, provided work is original and
other conditions under the treaty are fulfilled. It means that your work, if original,
is already protected. You can claim that you have copyright.
3. Madrid Agreement, 1881 – Governs the international recognition of trademarks.

Made international fillings easy and cheap.
4. Patent cooperation treaty, 1970 – It was earlier not possible for an entity to claim
protection in different countries by single application. This was made possible as it
aimed for co-operation and it was open for all parties to the Paris con vention.
5. Budapest Treaty of 1980 – It made possible patenting for microorganisms.

Claimant is required to deposit his invention on micro-organisms with an Authority
– ‘International depository of Micro-Organisms’ under WIPO. He shall make all the
adequate disclosures.
6. Trademark Law Treaty, 1994 – Harmonized administrative procedures and

introduced ‘service marks’ in ambit of trade marks. Earlier trademarks were
accorded only to goods.
7. The Hague agreement concerning the International Deposit of ‘Industrial

Design’ 1925 – It created the International Design Bureau of WIPO.
8. International Union for protection of new varieties of plants, 1961 – This

provides breeders and farmers the right to new plant varieties.
9. Agreement on Trade Related Aspects of Intellectual Property – It is a landmark

and most comprehensive treaty on Intellectual property. While earlier treaties’
subject matters were specific, TRIPS deal with 8 kinds of property rights – Patents,
Trademarks, trade dress, Copyrights, Industrial Designs, Plant Varieties, Integrated
Circuits and layouts, and Geographical Indication. Further, almost all countries are
party to TRIP. In earlier treaties only limited countries participated. It also provides
an enforcement mechanism which was not available in WIPO treaties. It mandated
all member countries to make their domestic laws compliant to TRIPS. India passed
certain laws and amended others. India’s IPR regime now stands fully compliant to
TRIPS. For E.g. India amended patent law in 2005 to provide ‘product’ pat ent
protection. Earlier protection was available only to ‘processes’.

Unit III: Introduction to the Concept and International Legal Instruments Relating to
Copyright Law
3.3.2International Instruments related to Copyright
3.3.2.1. The Berne Convention for the Protection of Literary and Artistic Works, 1886.
3.3.2.2. Rome Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organizations (1961).
3.5 Related Rights
Questions
1. Explain in detail concept of copyright and analyze the subject matters of copyrights.
2. Discuss briefly historical development of copyright law and explain subject & criteria of
protection under copyright law.
3. Explain fully performer's rights and Broadcasting Organization's rights.
4. Discuss the international instruments related to copyright in detail.
Que. Explain in detail concept of copyright and analyze the subject matters of copyrights.
Copyright preserves works of heritage, such as literature, dramatic, musical, and sculpture.
Protection of copyright is immediately granted under the 1968 Copyright Act
Copyright (or author’s right) is a legal term used to describe the rights that creators have over their
literary and artistic works. Works covered by copyright range from books, music, paintings,
sculpture, and films, to computer programs, databases, advertisements, maps, and technical
drawings.

What can be protected using copyright?
Exhaustive lists of works covered by copyright are usually not to be found in legislation.
Nonetheless, broadly speaking, works commonly protected by copyright throughout the world
include:
• literary works such as novels, poems, plays, reference works, newspaper articles;
• computer programs, databases;
• films, musical compositions, and choreography;
• artistic works such as paintings, drawings, photographs, and sculpture;
• architecture; and
• advertisements, maps, and technical drawings.
Copyright protection extends only to expressions, and not to ideas, procedures, methods of
operation or mathematical concepts as such. Copyright may or may not be available for a number
of objects such as titles, slogans, or logos, depending on whether they contain sufficient authorship.
Copyright ensures certain minimum safeguards of the rights of authors over their creations, thereby
protecting and rewarding creativity.
Copyrights should be protected because it ensures certain minimum safeguards for author’s rights
over their creations, thus protecting and rewarding their creativity.
The economic and social development of a society depends on creativity.
Copyright law will forever be a delicate balance between the rights of content owners and the
rights of users.
Lockean and Hegelian philosophies- Both theories are creator-centric, using notions of labor or
self-actualization by or of the individual creator to justify protection of his/her creations.
Que. Discuss briefly historical development of copyright law and explain subject & criteria
of protection under copyright law.
Copyright (or author's right) is a legal term used to describe the rights that creators have over their
literary and artistic works. Works covered by copyright range from books, music, paintings,
sculpture and films, to computer programs, databases, advertisements, maps and technical
drawings.1

EVOLUTION OF COPYRIGHT LAW IN UK
The history of copyright protection began to emerge with the invention of the printing machine
which made it possible to duplicate literary works by a mechanical process. The printing press was
invented by Johannes Gutenberg in Germany around 1440.
In 1483, Gutenberg's invention reached England, and the then Monarch King Richard III lifted the
ban on import of manuscripts and books. As a result, authors started sending their books in England
for printing. They enjoyed a royal license and dueto proliferation of books, England soon became
the Centre of printing across the length and breadth of Europe.
In 1529, King Henry VII constituted a system of privilege, thus making printing business a
monopoly of the crown. It was during this time that all the people who were earlier involved in
writing manuscripts and making copies came together to form the Stationer's Guild.
In 1516, the stationer's guild constituted into a company. The members of the company had
exclusive right to reprint works in perpetuity in the name of other members of the company who
had sole right to publish the work. The registered members had the right to both print and publish
the books.
In 1533, King Henry banned the imports of books and stationery under the pretense of growth and
development of England's publishers and printers.
In 1557, the Stationer's Company received a royal charter and was granted the privilege of
regulating the book trade. The company was necessary for three reasons-
1. Protect trade quality
2. Minimize unprofessional practices
3. Limit Competition
LICENSING ACT
Act of 1661
In 1661, the first licensing act was passed. The right of members of the stationary company to
publish was later referred to as copyright. However, the members did not have the status of an
owner of the book they published. The right was given to them as part of a commercial deal.
Act of 1662
The licensing act of 1662 empowered the company to take action against the infringement of their
right. A register of licensed books was maintained, and certain designated members had the right
to conduct search and seizure of unlicensed books. This was the first act to check piracy.
The Licensing Act could however didn't survive the test of time. As system weakened overtime,
the ban on unlicensed printing was removed; as a result, independent printers entered the market.

The Licensing Act could not distinguish between mechanical and intellectual piracy. It was
eventually repealed in 1681.
STATUTE OF ANNE
The statute of Anne came into force on 10th April 1710. This act caused a paradigm shift in the
copyright world. It acknowledged the rights of authors of published work. This came to be known
world's first copyright law. The purpose of the act was twofold:
1. To promote learning
2. To give the author protection against piracy
Main rules of the Act
1. Author of a book not yet printed shall have the sole right of printing for 14 years and if
after 14 years he is alive then additional 14 years.
2. Infringers would forfeit the infringing books found in their custody and shall pay half
amount of the fine to the crown and the other half to the plaintiff.
3. No book shall be bought for infringement unless the title of the book has been entered
before publication in the 'Register Book' of Stationer's Company.
THE COPYRIGHT ACT, 1911
Before the act of 1911, the books and literary works were protected under the statute of Anne and
other art such as music, painting or photographs were protected under legislation such as
the Engraving Copyright Act 1734 and the Fine Arts Copyright Act 1862
The 1911 act consolidated all the acts into one and implemented the Berne Convention. Major
features of this act are:
1. Extension of term of copyright to life and 50 years.
2. No need for prior registry in 'Register of Stationers' to receive protection under the act.
3. Unpublished work is also entitled to protection
4. Summary remedies in suits of infringement
5. The act to include all form of arts such as literature, painting, music, photography etc.
EVOLUTION OF COPYRIGHT LAW IN INDIA
Pre-Independence Copyright law in India
The Copyright Law of India was enacted by the British colony and like most of the acts of that
time; it was an imitation of the English law.

The first copyright act of India was enacted in 1847, during the regime of East India Company. As
per the act, the term of copyright was either, for the lifetime of author plus 7 years or 42 years.
The government had the power to grant the publishing license after the death of the author if the
owner of the copyright refused permission. All suits and infringement related to copyright came
under the jurisdiction of the highest local civil court. The act was replaced by the copyright act of
1914.
The act of 1914 was the first 'modern' copyright law of India. It was the first law to include all
works of art and literature under the ambit of copyright. It was a replica of the English law of 1911.
It was done by the British to ease the passage of literature over colonial subcontinent.
Post-Independence Copyright law in India
The Copyright Act of 1957 came into force on the 21st of January, 1958 replacing the 1911 act.
The act besides amending the copyright law also introduced milestone changes such as provisions
for setting up copyright office under the control of Registrar of copyright for registration of books
and other works of art. It also established a copyright board to deal with the disputes relating to
copyright.
Que. Discuss the international instruments related to copyright in detail.
3.3.2 International Instruments related to Copyright
3.3.2.1. The Berne Convention for the Protection of Literary and Artistic Works, 1886.
The Berne Convention is the primeval international treaty in the field of copyright. It is open to all
states. Adopted on September 9, 1886, at Berne and entered into force on December 4, 1887.
Originally signed in 1886 at Berne, Switzerland, it was revised in 1914, 1928, 1948, 1967, 1971,
and 1979.
This Convention is based on three fundamental principles:
1. Works in one of the contracting states (works of which the author is a national of such
state or a work already published in such a state) should be given equal protection to
each of the other contracting or non contracting states(the principle of “national
treatment”).
2. Protection should not be conditional upon compliance with any formalities (the
principle of “automatic” protection).
3. Protection must be independent of the existence of protection in the origin country of

the work (principle of “independence” of protection). If a contracting State provides
protection for a longer term than the minimum term prescribed by the Convention and

the work ceases to be protected in the country of origin, protection may be denied once
if protection in the country of origin ceases.
The minimum standards of protection relate to the works and rights to be protected, and to the
duration of protection:
1. As to works, protection must include “every production in the literary, scientific and
artistic domain, whatever the mode or form of its expression” (Article 2(1) of the
Convention).
2. Subject to certain allowed reservations, limitations or exceptions, the following are
among the rights that must be recognized as exclusive rights of authorization:
• the right to translate,
• the right to make adaptations and arrangements of the work,
• the right to perform in public dramatic, dramatico-musical and musical works,
• the right to recite literary works in public,
• the right to communicate to the public the performance of such works,
• the right to broadcast,
• the right to make reproductions in any manner or form,
• the right to use the work as a basis for an audiovisual work, and
• the right to reproduce, distribute, perform in public or communicate to the public that
audiovisual work.
Que. Explain fully performer's rights and Broadcasting Organization's rights.
3.3.2.2. Rome Convention for the Protection of Performers, Producers of Phonograms

and Broadcasting Organizations (1961).
The Rome Convention secures protection in performances for performers, in phonograms for
producers of phonograms and in broadcasts for broadcasting organizations.
WIPO is responsible for the administration of the convention jointly with the International Labour
Organization (ILO) and the United Nations Educational, Scientific and Cultural Organization
(UNESCO).
(1) Performers (actors, singers, musicians, dancers and those who perform literary or artistic
works) are protected against certain acts to which they have not consented, such as the broadcasting
and communication to the public of a live performance; the fixation of the live performance; the
reproduction of the fixation if the original fixation was made without the performer's consent or if
the reproduction was made for purposes different from those for which consent was given.
(2) Producers of phonograms have the right to authorize or prohibit the direct or indirect
reproduction of their phonograms. In the Rome Convention, “phonograms” means any exclusively

aural fixation of sounds of a performance or of other sounds. Where a phonogram published for
commercial purposes gives rise to secondary uses (such as broadcasting or communication to the
public in any form), a single equitable remuneration must be paid by the user to the performers, to
the producers of the phonograms, or to both. Contracting States are free, however, not to apply
this rule or to limit its application.
(3) Broadcasting organizations have the right to authorize or prohibit certain acts, namely the
rebroadcasting of their broadcasts; the fixation of their broadcasts; the reproduction of such
fixations; the communication to the public of their television broadcasts if such communication is
made in places accessible to the public against payment of an entrance fee.
The Rome Convention allows for limitations and exceptions to the above-mentioned rights in
national laws as regards private use, use of short excerpts in connection with reporting current
events, ephemeral fixation by a broadcasting organization by means of its own facilities and for
its own broadcasts, use solely for the purpose of teaching or scientific research and in any other
cases where national law provides exceptions to copyright in literary and artistic works.
Furthermore, once a performer has consented to the incorporation of a performance in a visual or
audiovisual fixation, the provisions on performers' rights have no further application.
Que. Discuss the international instruments related to copyright in detail.
The Universal Copyright Convention (UCC) is an international instrument which was drawn up in
1952 under the auspices of UNESCO.
The 1952 Convention created a legal structure which could accommodate the United States, the
USSR, the industrially developed countries and the developing countries.
There was no legal mechanism whereby a work originating in the United States could be protected
in Japan or in the countries of Western Europe, or whereby a work originating in the latter countries
could be protected in the United States except when the requirements of American law were
observed.
The Universal Copyright Convention of 1952 provides a simple and ingenious solution to this
problem. The 1952 Convention created a legal structure which could accommodate the United
States, the USSR, the industrially developed countries and the developing countries.
Trade Related Aspects of Intellectual Property Right (TRIPS) is an agreement on international IP

rights.

• TRIPS came into force in 1995, as part of the agreement that established the World Trade
Organisation (WTO).
• TRIPS establishes minimum standards for the availability, scope, and use of seven forms
of intellectual property namely, trademarks, copyrights, geographical indications, patents,
industrial designs, layout designs for integrated circuits, and undisclosed information or
trade secrets.
• It applies basic international trade principles regarding intellectual property to member

states.
• It is applicable to all WTO members.
• TRIPS Agreement lays down the permissible exceptions and limitations for balancing the
interests of intellectual property with the interests of public health and economic
development.
Features of the TRIPS
There are three main feature of the TRIPS agreement which are as follow:
1. Standard
2. Enforcement
3. Dispute settlement
Standard: The main element of trade related aspect of intellectual property is to protect the subject
matter.
Enforcement: The second element is about domestic procedure and remedies provisional measure
special related to border measure.
Dispute settlement: The agreement makes dispute between world trade organization members
arising with respect to the trade related aspect of intellectual property obligation subject to the
world trade organization dispute settlement procedure.
The WIPO Performances and Phonograms Treaty (WPPT) deals with the rights of two kinds of
beneficiaries, particularly in the digital environment:
(i) performers (actors, singers, musicians, etc.); and
(ii) producers of phonograms (persons or legal entities that take the initiative and have the
responsibility for the fixation of sounds).

The Treaty was concluded in 1996 and entered into force in 2002.
The Treaty is open to States members of WIPO and to the European Community.
The WIPO Copyright Treaty (WCT) is a special agreement under the Berne Convention which
deals with the protection of works and the rights of their authors in the digital environment.
In addition to the rights recognized by the Berne Convention, they are granted certain economic
rights.
The Treaty also deals with two subject matters to be protected by copyright: (i) computer
programs, whatever the mode or form of their expression; and (ii) compilations of data or other
material ("databases").
copyright means the exclusive right

• To reproduce the work
• To issue copies of the work to the public
• To perform the work in public
• To communicate the work to the public.
• To make cinematograph film or sound recording in respect of the work
• To make any translation of the work
• To make any adaptation of the work.
Conditions for Copyright Protection
Copyright does not protect ideas or facts themselves. Copyright does protect the selection and
arrangement of ideas: i.e., their original and creative expression, as soon as they are fixed in some
tangible form. The Requirements to Claim Copyright Are:
1. Fixation
The ideas must be fixed in some tangible medium of expression. Copyright protection
is automatic, although there are benefits to officially registering your work with the
Copyright Office. Copyright protection is immediate, as soon as the expression is fixed

in tangible form. That is, it applies to drafts and completed works, both published and
unpublished.
2. Originality
A fixed expression of ideas is protected by copyright if and only if it is original.
Neither quality nor uniqueness is required.
1. Even bad work is subject to copyright protection.
2. Works that are similar, but independently created, are individually subject to
copyright protection.
3. Minimal Creativity
Hard work is not enough to gain copyright protection.
At least minimal creativity is also required.
Examples:
1. A list of parts for a child’s toy is probably not subject to copyright.
a. A sheet of instructions for assembling a toy from its parts may be subject to
copyright.
2. A complete telephone white page is not subject to copyright.
a. A categorized yellow pages directory may be subject to copyright.
b. A web-site that provides the means for searching a white pages database may be
subject to copyright.

As per the Indian Copyright Act section 13 of Chapter III, the protection is given to the following
works:
1. Literary works;
2. Musical works;
3. Dramatic works;
4. Artistic works;
5. Cinematograph films;
6. Architectural works;
7. Sound recordings;
8. Computer program/software.
3.5 Related Rights
Meaning- performer

As per the Indian Copyright Act, a "Performer" includes an actor, singer, musician, dancer,
acrobat, juggler, conjurer, snake charmer, a person delivering a lecture or any other person who
makes a performance.
Meaning- performance
"Performance" in relation to performer’s right, means any visual or acoustic presentation made
live by one or more performers.
Rights of a performer
A performer has the following rights in his/her performance:
• Right to make a sound recording or visual recording of the performance;

• Right to reproduce the sound recording or visual recording of the performance;
• Right to broadcast the performance;
• Right to communicate the performance to the public otherwise than by broadcast.
Term of protection of performer’s rights
Performer’s rights subsist for 25 years.
What are the rights of a performer in a cinematograph film?
Once a performer has consented for incorporation of his performance in a cinematograph film, he
shall have no more performer’s rights to that performance.
Que. Explain fully performer's rights and Broadcasting Organization's rights.

Meaning- broadcast
"Broadcast" means communication to the public:
• by any means of wireless diffusion, whether in any one or more of the forms of signs,
sounds or visual images; or
• by wire.
Rights of a broadcasting organization
The rights of a broadcasting organization with reference to a broadcast are :

• right to re-broadcast the broadcast;
• right to cause the broadcast to be heard or seen by the public on payment of any charges;
• right to make any sound recording or visual recording of the broadcast;

• right to make any reproduction of such sound recording or visual recording where such
initial recording was done without licence or, where it was licensed, for any purpose not
envisaged by such licence; and
• right to sell or hire to the public, or offer for such sale or hire, any sound recording or visual
recording of the broadcast.
Term of protection of broadcaster’s rights
The term of protection for broadcaster’s rights is 25 years.
Which are the common copyright infringements?

The following are some of the commonly known acts involving infringement of copyright:
i. Making infringing copies for sale or hire or selling or letting them for hire;
ii. Permitting any place for the performance of works in public where such performance
constitutes infringement of copyright;
iii. Distributing infringing copies for the purpose of trade or to such an extent so as to affect
prejudicially the interest of the owner of copyright ;
iv. Public exhibition of infringing copies by way of trade; and
v. Importation of infringing copies into India.


4. 2 Economic and Moral Rights associated with Copyright recognised in India
4.5.1 Voluntary
4.5 2 Compulsory
4.5.3 Statutory
Questions
1. Explain the term copyright. Discuss about assignment & licencing of copyright.
2. Write a detail note on Author of copyrights and various rights of author.
3. Explain fully terms of copyright in different categories of creative work.
4. Write a brief note on transfer and licensing of copyrights.
5. Write a full note on Infringement of copyright.
6. Explain fully which Act does not amount to Infringement of copyrights & Briefly explain
remedies available against infringement of copyrights.
7. Explain the Concept of "Owner" under copyright Law? Discuss Various Rights of Owner
of Copyright?
8. Explain the provisions relating to works protected under Copyright Act.
9. Explain Civil, Criminal and Administrative remedies available for Infringement of
Copyright.
10. Who is the first owner of copyright? Explain rights associated with copyright and Explain
the term of copyright with respect to each work under copyright law.

Que. Write a detail note on Author of copyrights and various rights of author.
Introduction and meaning-
Copyright is one of the Intellectual Property Rights. It is considered a natural right as it is

automatically granted to the creator of the original literary (including computer programs),
dramatic, musical and artistic works; cinematographic films; and sound recordings. Registration
of work is not mandatory for availing the protection under the Copyright Act, 1957.
According to Section 17 of the Copyright Act, 1957, the author of a work shall be the first owner
of the copyright.
“Author” means as contained in the Act, “(i) in relation to a literary or dramatic work, the author
of the work; (ii) in relation to a musical work, the composer; (iii) in relation to an artistic work
other than a photograph, the artist; (iv) in relation to a photograph, the person taking the
photograph; (v) in relation to a cinematograph film or sound recording, the producer; and (vi) in
relation to any literary, dramatic, musical or artistic work which is computer-generated, the person
who causes the work to be created.”
One of the most important concerns in copyright law is the determination of copyright
ownership. The general rule is that the creator of the work is the owner of all copyright
interests in the work.
Generally, the creator or the author of the work is the owner of the work and therefore entitled to
get the copyright for the work.
When several people work together to create a single work, a joint work may be created under the
Copyright Act.
As per Section 17 of the I T Act, 2000 the author or creator of the work is the first owner of
copyright. An exception to this rule is that, the employer becomes the owner of copyright in
circumstances where the employee creates a work in the course of and scope of employment.

RIGHTS OF OWNERS OF THE COPYRIGHT
Statutory rights of the owners of the copyright
The following are the rights listed in the Act in respect of a copyright owner.
• In the case of literary, dramatic or musical works – the exclusive right to reproduce,
including storage in any medium by electronic means, issue copies, public
performance, make any film or sound recording in respect of that work, to translate
and adapt the work and the right of communication to the public (which is defined
widely enough to cover dissemination over the internet).
• In the case of computer programs – all rights as mentioned for literary works in
addition to selling or giving on hire, or offering for sale or hire for commercial rental
any copy of the computer program.
• In the case of artistic works – to reproduce the work in any material form. This may
include storing it in any medium by electronic or other means or depicting a two-
dimensional work in three dimensions or vice versa. Copyright in an artistic work also
includes the exclusive right to communicate the work in public, issue copies of it,
include it in a cinematograph film, and translate or adapt the work in any way.
• In the case of cinematograph films – to make copies of the film (on any medium,
electronic or otherwise) including copies in the form of photographs that form a part
of the film, sell or give on hire, or offer for sale or hire any copy of the film, to sell,
give or offer for sale on commercial rental copies of the film and communicate the
film to the public.
• In the case of sound recordings – to make any other sound recording embodying it on
any medium including storing of it on any medium, to sell or give on commercial
rental or offer for sale such rental and to communicate the sound recording to the
public.
4. 2 Economic and Moral Rights associated with Copyright recognized in India
Moral rights of the owners of the copyright
The author enjoys moral rights independent of copyright, being the right to paternity and integrity,
which exists despite the assignment of copyright. However, this does not extend to the adaptation
of a computer program for fair dealing purposes. It is also specifically stated that violation of moral
rights (specific to the right to integrity) is judged objectively.

Moral rights can be enforced by the legal representatives of the author. The 2012 amendments to
the Act provide that a legal representative of an author can exercise both paternity as well as
integrity rights in a work. The 2012 amendments also consciously omit the previous co-extensive
term of moral rights with copyright by specifically removing the copyright term restriction on a
claim for the right to integrity by the legal representative. Moral rights are not assignable (although
on general principles as it is a civil right and not a fundamental right under the Indian constitution,
moral rights can be waived).
Chapter V(section 22-29) of the act covers the term of copyright.
The term of subsisting copyright for literary, artistic, musical or dramatic works published within
the owner’s lifetime will be sixty years from the beginning of the calendar year of the following
year the author dies(Section 22).
The duration of subsistence of copyright will be sixty years from the beginning of the following
year’s calendar in which the work is first published(Section 23).
Que. Explain the term copyright. Discuss about assignment & licencing of copyright.
Section 18 of the Copyright Act, 1957 confers ownership rights in copyright on the assignment.
Section 18 of the Copyright Act discusses “assignment of copyright.” The owner of the copyright
in an existing work or the prospective owner of future work has the right to assign to any person
the copyright of that work. Since copyright per se is a bundle of rights, assignment of copyright
could be:
1. Whole or partial,
2. Subject to certain conditions/limitations,
3. For the whole term of the copyright or any part thereof.
If the work is not yet in existence at the time of assignment (future work), the assignment shall
take effect only when the work comes into existence.
As per section 19, assignment of copyright is valid only if it is in writing and signed by the assignor
or his duly authorized agent.
When the owner of a copyright dies the copyright will pass on to his personal representative as
part of the estate, provided that no will has been executed- Section 20.

Essentials of a Copyright Assignment agreement in India-
An assignment agreement shall have the following essentials:
1. It shall be made in writing and identify the work assigned.
2. It shall specify the scope of rights assigned and consideration.
3. It shall mention the duration and territorial extent of such assignment.
It is sufficient if the assignment is made in writing bearing the signature of the author or their
authorised agent. Furthermore, in case where the duration of the assignment is not mentioned, as
per law, it is deemed to be five years from the date of the assignment and in the case where the
territorial extent of such assignment is not mentioned, as per law, it is presumed to extend within
India. The assignment shall be exercised within one year from the date of assignment failing which
the rights so assigned shall be deemed to have lapsed.
The author or the copyright owner has exclusive rights in his creative work and he alone has right
to grant license with respect to such work.
According to section 30 of the Copyright Act 1957, the owner of the copyright in a work may grant
any interest in his copyright to any person by license in writing, which is to be signed by him or
by his duly authorised agent. A license can be granted not only in existing work but also in respect
of the future work.
Where a licensee of the copyright in a future work dies before such work comes into existence, his
legal representatives shall be entitled to the benefit of the license if there is no provision to contrary.
The mode of license is like an assignment deed, with necessary adaptations and modifications in
section 19 (section 30A). Therefore, like an assignment, a license deed in relation to a work should
comprise of following particulars:
a. Duration of license
b. The rights which have been licensed
c. Territorial extent of the licensed
d. The quantum of royalty payable
e. Terms regarding revision
f. Extension and termination

4.5.1 Voluntary
Voluntary licenses can be:
Exclusive - The term exclusive license has been defined in Section 2(j) as a license which confers
on the licensee and persons authorized by him, to the exclusion of all other persons, any right
comprised in the copyright work.
Non-exclusive – It does not confer right of exclusion. It is mere grant of an authority to do a

particular thing which otherwise would have constituted an infringement. When owner grants an
exclusive right, he denudes himself of all rights and retains no claim on the economic rights so
transferred.
Co-exclusive – Here the licensor grants a license to more than one licensee but agrees that it will
only grant licences to a limited group of other licensees.
Sole license – Where only the licensor and the licensee can use it to the exclusion of any other
third party.
Implied license – Author impliedly allows or permits the use of his work. For example, he had
knowledge that someone is using his work but he did not take any action.
4.5 2 Compulsory
The Act provides for grant of compulsory license for Indian work in the public interest, in certain
circumstances:
Works Withheld from Public
The Indian Copyright Act provides for the grant of compulsory licences in work which has been
published or performed in public.
a) Compulsory licenses for works withheld from the public: According to this
provision, any person may approach the copyright board, for issuance of a compulsory license to
publish a work that is withheld from the public by the copyright owner. However, before
approaching the Copyright Board, the complainant should have approached the copyright owner
first for a license to republish or perform the work and the copyright owner should have
unreasonably rejected the request of the complainant.
b) Compulsory licenses for unpublished works of unknown authors: In case of unpublished

works of unknown or dead authors, any person may apply to the Copyright Board for a license to
publish or communicate to the public such works or translations thereof. However, before making

such an application, the applicant is required by law, to publish his proposal to do so in a national
newspaper.
Compulsory License in Unpublished or Published Work (Section 31-A)
According to this section, where the author is dead or unknown or cannot be traced , or the owner
of the copyright in such work cannot be found, any person may apply to the Copyright Board for
a licence to publish such work or translation thereof in any language.
c) Compulsory licenses for the benefit of the disabled: Compulsory License for the Benefit
of Disabled Persons (Section 31-B)
Any person or non-profit organization working for the benefit of the disabled may apply to the
Copyright Board for a compulsory license to publish any work in a format suitable for their
accessibility.
4.5.3 Statutory license
Statutory licenses for Cover Version: Section 31C of the Copyright Act provides for the grant
of statutory licenses for making cover versions of any sound recordings. This section specifically
requires the Copyright Board to fix the minimum amount of royalty to be paid for the creation of
such a version.
Statutory licenses for Broadcasting literary, musical works and sound recordings: This
license is issued by the Copyright Board in favour of any broadcasting organization desirous of
broadcasting to the public any literary, musical work or sound recording which is already published
by the copyright holder. Although the Copyright Board is authorized to determine the royalties
payable under this license, the Board is yet to convene and determine these royalties.
License to Produce and Publish Translation of Literary or Dramatic Work in any Language
(Section 32)
Section 32 of the Copyright Act provides that after expiry of a period of seven years from the first
publication of a literary or dramatic work, any person may apply to the Copyright Board for a
license to produce and publish a translation of work.
License to Reproduce and Publish Works for Certain Purposes (Section 32-A)
According to this section, any person may apply to the Copyright Board for a license to reproduce
and publish any literary, scientific or artistic work after the expiration of the relevant period from
the date of first publication of an edition of such work, if the copies of such edition are not made

available in India , or such copies have not been put on sale in India for a period of six months to
the general public or in connection with systematically instructional activities at a price reasonably
related to that normally charged in India for comparable works by the owner of the right of
reproduction or by any person authorised by him in this behalf.
The period prescribed are:
• Seven years for work related to fiction, poetry, drama, music or art
• Three years for works related to natural science, physical science mathematics or
technology
• Five years for any other work
An assignment may be general, i.e. without limitation or an assignment may be subject to

limitations. It may be for the whole term of copyright or any part thereof. An assignment transfers
an interest in and deals with copyright itself as provided under section 14 of the Act, but license
does not convey the copyright but only grants a right to do something, which in absence of license
would be unlawful. An assignment transfers title in copyright, a license merely permits certain
things to be done by licensee. The assignee being invested with the title in the copyright may
reassign.
Que. Explain fully which Act does not amount to Infringement of copyrights & Briefly
explain remedies available against infringement of copyrights.
Section 2(m) of the Copyright Act 1957 gives out the meaning of infringing copy.
The use or creation of copyright-protected work without the authorization of the copyright owners
is known as copyright infringement and which is not a fair dealing of work and offence of
infringement of copyright is given under Section 63 of The Copyright Act, 1957.
Copyright infringement refers to the unauthorized use of someone’s copyrighted work. Thus, it is
the use of someone’s copyrighted work without permission thereby infringing certain rights of the
copyright holder, such as the right to reproduce, distribute, display or perform the protected work.
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.
Types of Copyright Infringement
Copyright infringement can be broadly classified into two categories:
1. Primary Infringement
2. Secondary Infringement
Primary Infringement
Primary infringement refers to the real act of copying the work of the copyright holder. For
example, photocopying a book and then distributing it for commercial purposes.
However, sometimes a person may only copy a part of the work, for example, a paragraph of an
article. In such a case, the copyright holder is required to establish two things:
• Substantial Taking
A copyright is infringed only when an unauthorized person copies a substantial part of the work.
For example, copying a catchy phrase of a lyricist.
• Casual Connection
The copyright holder must prove that there is a similarity in the works of the copyright holder and
the infringer. However, this may be because of several other reasons like both of them have used
the same source for the research. In such a case, the copyright holder can not claim for
infringement.
Secondary Infringement
Secondary Infringement refers to the infringement of copyright work without actually copying it.
This can happen in the following ways:

• Providing a place for Copyright Infringement
If a person provides the place or permits the place (for profit) to be used for communicating of the
work the public and such work amounts to copyright infringement then such person can be made
liable for the offence of copyright imprisonment.
• Selling Infringing Copies
If a person sells the copies that infringe the right of the copyright holder then it will amount to
copyright infringement.
• Distributing Infringing Copies
When a person distributes infringing copies of the copyright holder works then it will amount to
copyright infringement. For example, if a person uploads a movie on the internet for free then it is
an infringement of copyright.
• Importing Infringing Copies
Importing the infringed work of the copyright holder in India also amounts to infringement of
Copyright. However, if the person has imported the infringed work for the domestic or personal
use then it will not amount to Copyright Infringement.
A suit is instituted by the Presentation of a plaint. The procedure to be followed in suits is contained
in The Procedure to be followed in the suits is contained in Section 26 to 35A of the Civil procedure
Code and the rules of procedure in the First Schedule.
The suit for infringement of copyright should be filed before the District Court having jurisdiction
or before the High Court having original jurisdiction.
Either the copyright holder or an exclusive licensee can sue for copyright infringement.
Burden of Proof is the legal obligation on a party to prove the allegation made by him against
another party.

The term 'Burden of Proof' means when a person states something and considers it to be fact he or
she needs to prove the statement made by him.
The burden of proof of an act of copyright infringement is on the owner.
Plaintiff has to establish:
(1) he is the owner of the copyright within the meaning of Section 54, i.e. he is the actual owner
of the copyright, or he is one who is entitled to the remedies provided for infringement in Section
55.
(2) copyright subsists in the work infringed at the time the defendant committed the infringement
(3) particulars of the infringement complained of,
(4) the nature of the damage if any suffered by him or likely to suffer,
(5) what the defendant has done or is proposing to do (in a quia timet action) constitutes
infringement of copyright.
A person is liable for primary infringement when he himself does an act which infringes the right
of the copyright holder whereas a person or a party who indirectly contributes to the copyright
infringement or gets benefitted from such exploitation is liable for secondary infringement.
Section 52 of the Copyright Act, 1957, enumerates specific activities or works that are not deemed
infringements of copyright, including fair dealing with a literary, dramatic, musical, or aesthetic
work that is not a computer programme for the purposes of these regulations of-
• "Fair treatment of any work that is not a computer program for the purposes of –
(i) private or personal use, including study;
(ii) criticism or review, whether of that work or any other work;
(iii) the coverage of current events and current affairs, including the coverage of a public lecture.
• solely in the technological process of electronic transmission or communication to the

public, the temporary or accidental storage of a work or performance;

• unless the person responsible is aware or has reasonable grounds to believe that such
storage is of an infringing copy, transient or incidental storage of a work or performance
for the purpose of providing electronic links, access, or integration, where the right holder
has not expressly banned such linkages, access, or integration,
• the reproduction of any work for the purpose of a judicial proceeding or a judicial
procedure report."
In the Section 52 the word used "fair dealing". The word "Fair Dealing" is not defined in the
Copyright Act of 1957. It is a legal notion that enables a person to make limited use of a
copyrighted work without the owner's consent.
Civil Remedies
The civil actions against copyright infringement are given under Section 55 of the Copyright Act,
1957. Under a civil action against copyright infringement, the court can grant the following reliefs:
• Injunction
• Damages
• An Account of Profits
• Damages for conversion.
Injunction
Section 55(1) of the copyright act, provides that the copyright holder is entitled to remedy by way
of injunction. The injunction is the most effective remedy in case of copyright infringement.
Damages
Section 55(1) of the copyright act, further provides that the copyright holder is entitled to damages
for copyright infringement.
An Account of Profits
The account of profits is an alternative to damages. The court may order payment to the owner of
copyright of the profit made by the infringer as a result of the infringement.
Damages for conversion.
The damages for conversion is given generally where the infringement is deliberate.

Criminal Remedies
The copyright holder can take criminal proceedings against the infringer. The criminal remedy is
not an alternative to the civil remedy but is complementary to it. Thus, the copyright holder can
bring both civil and criminal proceedings simultaneously.
Section 63 of the Copyright Act, states that copyright infringement is a criminal offence.
When the copyright owner files a criminal suit for copyright infringement, the minimum
punishment for the infringement is imprisonment for six months, which can extend to three years,
with a minimum fine of Rs. 50,000, which can extend up to Rs.2 lakhs.
In the case of a subsequent and second conviction, the punishment is imprisonment for a minimum
of one year, extending to three years and a fine of Rs.1 lakhs, extending to Rs.2 lakhs.
Administrative remedies consist of moving the Registrar of Copyrights to ban the import of
infringing copies into India when the infringement is by way of such importation and the delivery
of the confiscated infringing copies to the owner of the copyright and seeking the delivery.

Unit V: An Introduction to Trademarks
5.1 Meaning, Characteristics and Functions of trademark and Need for Trademarks Protection
5.3.2 TRIPS 1995
Questions
1. Discuss Meaning, Characteristics and Functions of trademark and Need for Trademarks
Protection.
2. Explain in detail International Developments and Dimensions of Trademark.
3. Define Trademark with characteristics. Explain in detail evolution of Trademark Law in
India.
4. Explain Absolute and Relative grounds for refusal of registration of Trademark.
5. Write notes on-

o Trademark Law Treaty, 1994

o Madrid System of International Registration of Marks
o Paris Convention 1883
6. Explain the term trademark. Discuss about Bars to Trademark Protection.
7. Explain the concept trademark with effect of registration & discuss about assignment &
licencing of trademark.
Que. Discuss Meaning, Characteristics and Functions of trademark and Need for
Trademarks Protection. OR
Que. Define Trademark with characteristics. Explain in detail evolution of Trademark
Law in India.
5.1 Meaning, Characteristics and Functions of trademark and Need for Trademarks
Protection
Meaning-
Trademark is a branch of intellectual property rights. Intellectual property rights permit people to
maintain ownership rights of their innovative product and creative activity.
A trademark includes a name, word, or sign that differentiates goods from the goods of other
enterprises.
A trademark is an established or legally registered mark that identifies a manufacturer's unique

goods and services.
The following are the few attributes of a good trademark that should be considered
before Trademark Registration.
• A trademark must be a mark which includes a device, heading, brand, label, ticket,
signature, word, letter, name, numeral, packaging or combination of colors or any
combination of the above attributes.
• It should be easy to speak and spell. A good trademark is such that the public can easily
spell and speak.
• It should be easy to remember. A good trademark that is easy to speak and spell can be
easily remembered as well. So that it becomes easy for public to

• It should not be too lengthy and complicated to be forgotten easily. If it is lengthy or

complicated, people will not bother to take the effort to memorize it and ultimately it will
be forgotten.
• It must be distinctive. It can be natural distinctiveness or acquired distinctiveness.
• The best trademarks are invented words or coined words or unique geometrical designs
• It can only be suggestive of the quality of the products, but not descriptive
• A good trademark should not be barred under the Trade Marks Act under the
Prohibited classes of trademarks
Need for Trademarks Protection
A trademark registration provides the following benefits that are not available for an unregistered
trademark in India:
• It provides prima facie evidence of validity and ownership.
• It provides statutory protection.
• It helps to prevent others from unlawful usage of the trademark.
• It allows for filing a suit for infringement.
The Trademarks Act, 1999, regulates the registration and functions of a trademark.
Primary Functions of Trademarks
A trademark primarily serves the purpose of identifying the origin or source of goods, products or
services. In India, a trademark performs the following functions:
• It identifies the product and its origin
• It proposes to guarantee the quality of the product
• It advertises the product as it represents the product
• It creates the image of a product in the minds of the public, especially the consumers
or the prospective consumers of the product

Product Differentiation Function
Trademarks serve as the basic means of achieving product or service differentiation. The
trademarks enable a customer to distinguish goods, products or services in the market without
confusion and make him/her arrive at a decision on what to purchase.
Identification of Source and Origin Function
One of the most important functions of a trademark is to serve as information to the customers for
identifying the origin or source of a product. The trademark guarantees the identity of the origin
of the trademarked services or goods to the consumer or end-user. It enables the consumer to
distinguish the trademarked goods or services from others that have another origin without any
confusion.
Quality Function
A trademark ensures customers of the quality of the trademarked products or services. Customers
select goods or services known for their quality. Thus, trademarks help the customers decide the
products they need to purchase or the service they need to avail of. Reputation and identification
of quality are the key features of trademarks.
Advertising Function
The trademark represents a product or service. Another significant function of trademarks is

promoting products and services, thus providing an effective mode of advertising them. The
intention of the use of trademarks is to make consumers aware of the trademark and attract their
attention to the trademarked products or services. Customers can be attracted through
advertisements, which reinforce the image of a product or service.
Creation of Image Function
Trademarks create an image of the product or service they are associated with. Trademarks
essentially function to create goodwill for the company. The goodwill embodied in a trademark
constitutes a company’s intellectual property or asset. The prolonged usage of a trademark
associated with a particular business helps the business gain reputation and goodwill regarding its
particular trademark.
In the 20 century prior to 1940 there was no official Trademark Law in India. Numerous problems
aroused on infringement, passing-off, etc and these were solved by application of section 54 of the
Specific Relief Act 1877. the registration was adjudicated by obtaining a declaration for the

ownership of a trademark under Indian Registration Act 1908. To overcome the above difficulties
the Indian Trademarks Act was passed in 1940.
The replacement to this act was the Trademark and Merchandise Act, 1958. India became a party
to the WTO at its very inception. One of the agreements in that related to the Intellectual Property
Rights (TRIPS). In December, 1998 India acceded to the Paris Convention.
Increasing globalization of trade and industry, the need to encourage investment owes and transfer
of technology, need for simplification of trademark management system and to give effect to
important judicial decisions. To achieve these purposes, the Trademarks Bill was introduced in
1994.
The Trademarks Bill of 1999 was passed the by Parliament that received the assent of the President
on 30 December, 1999 as Trade Marks Act, 1999 thereby replacing the Trade and Merchandise
Mark Act of 1958.
The act of 1999 gave police the right to arrest in case of infringement. There are some points of
changes that are present between the 1958 act and 1999 act.
It can be said that the 1999 act is a modification of the 1958 Act. The rules of this act are called as
Trademark Rules 2002. Both the Act and its set of rules came to effect on 15 September 2003. The
Trademark Act 1999 and Trademark rules 2002 presently govern Indian Trademark Laws in India.
Que. Explain in detail International Developments and Dimensions of Trademark. OR

Que. Write notes on-
1. Trademark Law Treaty, 1994
2. Madrid System of International Registration of Marks
The treaties WIPO administers, together with national and regional laws, make up the international
legal framework for trademarks.
The Standing Committee on the Law of Trademarks, Industrial Designs and Geographical
Indications (SCT) is the forum where WIPO's member states discuss policy and legal issues
relating to the international development of trademark law and standards.

The Paris Convention, adopted in 1883, applies to industrial property in the widest sense,
including patents, trademarks, industrial designs, utility models, service marks, trade
names, geographical indications and the repression of unfair competition.
This international agreement was the first major step taken to help creators ensure that their
intellectual works were protected in other countries.
Regarding patents, trademarks, and industrial designs, the Convention grants the right of
protection based on a first come first served basis (Paris Convention Article 4).
India become a party / member of Paris Convention in1998.
5.3.2 TRIPS 1995
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is

an international legal agreement between all the member nations of the World Trade
Organization (WTO). It establishes minimum standards for the regulation by national governments
of different forms of intellectual property (IP) as applied to nationals of other WTO member
nations.
TRIPS was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and
Trade (GATT) between 1989 and 1990 and is administered by the WTO.
The three main features of TRIPS are standards, enforcement and dispute settlement.
Part II of TRIPS sets out minimum standards of IP protection to be provided by each Member.
Part III of TRIPS deals with domestic procedures and remedies for the enforcement of IPRs, and
Part V deals with dispute prevention and settlement.
India become a party / member of TRIPS. For India, the WTO's TRIPs agreement became
binding from 2005 onwards .
The Madrid System, also known as the Madrid Protocol. It is the primary international system
for facilitating the registration of trademarks in multiple jurisdictions around the world.
The Madrid system comprises two treaties;
i. the Madrid Agreement Concerning the International Registration of Marks, which was
concluded in 1891, and entered into force in 1892, and

ii. the Protocol Relating to the Madrid Agreement, which came into operation on 1 April
1996.
The Madrid Agreement and Madrid Protocol were adopted at diplomatic conferences held
in Madrid, Spain.
The Madrid System is a centrally administered system (by the International Bureau of the World
Intellectual Property Organization, WIPO) for obtaining a bundle of trademark registrations in
separate jurisdictions, creating in effect a basis for an "international registration" of marks.
The Madrid System is a convenient and cost-effective solution for registering and
managing trademarks worldwide. File a single international trademark application and pay one set
of fees to apply for protection in up to 130 countries. Modify, renew or expand your global
trademark portfolio through one centralized system.
India became the 90th Member of Madrid System since July 8th of 2013.
The Trademark Law Treaty (TLT), adopted on October 27, 1994, entered into force on August
1, 1996.
New opportunities and challenges can be observed due to globalization and an increase in
borderless trade and business activities. Therefore, to rationalize and to make a uniform substantive
law on trademarks the Trademark Law Treaty (TLT) was adopted.
The purpose of enacting the Trademark Law Treaty was to standardize and regulate a set of
principles or procedural rules to simplify the national and regional process for application and
registration process.
International Classification of Goods and Services also known as the Nice Classification was
established by the Nice Agreement (1957).
The Nice Agreement establishes a classification of goods and services for the purposes of
registering trademarks and service marks (the Nice Classification).
It is updated every five years. The classification system is specified by the World Intellectual
Property Organization (WIPO). The Nice Agreement is open to states who are parties to the "Paris
Convention for the Protection of Industrial Property".

India become a party in 2019. India is now the 88th member of the Nice Agreement.
The Vienna classification is an international classification system of the figurative elements of

trademarks. The system was established in 1973 by the Vienna Agreement and is managed by the
World Intellectual Property Organisation (WIPO).
The purpose of the Classification is essentially to facilitate trademark anticipation searches and
remove substantial reclassification work when documents are exchanged at the international level.
India become a 34th member of the Vienna Agreement in 2019.
Types of trademarks that can be registered in India
The following are a few types of trademarks which can be registered in India.
Words and service marks
Where word marks refer to any marks that are used to identify the products and services of a
trading company or a service-providing company. While the service marks are indicating the
services that a company is dealing in.
Shape marks
Shape marks are the marks which are the shapes of the product or packaging of the business.
Appearance of the product can distinguish the product from other products.
Logos and symbols
Logos and symbols are the printed figure / design or character or painted design or figures that
indicate the company’s name, service or product’s name.
Collective marks
When the marks are linked with a group of people or services collectively It is said to be the
Collective Mark. The trademark is owned by the organization but it can be used by multiple people.
Series Marks
These are the marks which are registered to use before or after a chain of products where there
would be a common suffix / prefix or symbol.

The Certification mark
This is a mark which proves that the company has met with the standards and quality of the
products. This would make the public aware of the fact that a particular company’s product has
met the standards laid down by the certifying body.
It is always advisable to register your Trademark to save the same from unauthorized use by some
one else.
TYPES OF TRADEMARKS
A trademark may be divided into the following categories:
1. Word marks: They may be words, letters or numerals. Eg: COCO CHANEL and APPLE
2. Device marks: These marks consist of exclusive representation of a word, letter or

numerical. Eg: The way in which AMAZON is written or EBAY is written.
3. Figurative marks / logos: They consist of a figure or a logo. Eg: The YELLOW M of
Mc Donlads or the SWOOSH sign of Nike.
4. Service Marks: A service mark basically differentiates the services (and not goods) of
one person from that of another. Eg: The name UNITED AIRLINES, the FLY THE
FRIENDLY SKIES tagline, and the logo of a world map are service marks. This is
because United provides a service: airline flights around the world.
5. Collective Marks: Marks being used by a group of companies. The owner of such marks
may be an association or public institution or cooperative. Eg: CA used by the Institute of
Chartered Accountants and the mark CPA, to indicate members of the Society of Certified
Public Accountants.
6. Certification Marks: Certification marks are used to define standards. They assure the
consumers that the product meets certain prescribed standards. Eg: ISI mark and FSSAI
mark.

7. Well-known marks: When a mark is easily recognised among a large percentage of the
population it achieves the status of a well-known mark. Example: ROLEX, CARTIER,
FERRARI.
8. Unconventional Trademarks: Unconventional trademarks are those trademarks which

get recognition for their inherently distinctive feature:
• Colour Trademark: Purple colour trademark of Cadbury Chocolates
• Sound Marks: A well-known sound trademark is the Hemglass ice cream van jingle.
• Shape Marks (3D marks): The coca cola bottle.
• Smell Marks: Brazilian footwear company Grendene successfully trademarked their line
of bubble gum-scented jelly sandals in June, 2015
Any individual, a company and an LLP can be an applicant and may file the application for the
registration of the particular trademark.
The primary purpose of a trademark is that it serves to distinguish the goods or services of one
person from those of another.
If a mark is not distinctive, it could lead to confusion in the minds of consumers and deceive them
as to the origin of the product or service it represents.
To prevent such confusion and deception, Section 9(1)(a) of the Trade Marks Act prohibits the
registration of any mark which lacks distinctiveness.
It is thus important to examine how a person wishing to have a mark registered can ensure that it
is distinctive.
In Abercombie & Fitch Co. v. Huntington World Inc., decided in 1976, the United States Court of
Appeals for the Second Circuit established a spectrum of trademark distinctiveness under which
marks can be broadly classified into five categories.
Each of these categories has different degrees of distinctiveness. On the basis of the degree of
distinctiveness of a mark, it can be perceived whether a mark is capable of being registered or not.

Categorizing trademarks through the trademark distinctiveness spectrum is a useful exercise to

determine which end of the spectrum the trademark falls.
The following are the five categories:
a) Fanciful Marks
These are words, symbol or devices which have been expressly invented/coined for the purpose of
serving as a trademark. They have no relationship with the good or service being sold. This type
of mark is considered to be the strongest for registration due to its unique nature which leaves no
room for ambiguity as to the origin of the product or service it represents. E.g: Konica and Adidas.
b) Arbitrary Marks
These marks are words which are used commonly but do not have any relationship with the
products or services they represent. Arbitrary marks are also strong marks which are capable of
being registered. E.g., Apple, Uber and Kindle.
c) Suggestive Marks
This type of mark suggests that the good or service it represents has a particular quality without
describing it completely. A leap of imagination on the part of the general public is required to
understand the product or service the mark is used for. While these marks are considered
registerable, they are not considered to be as strong as fanciful or arbitrary marks as there is a
danger that they might not be distinctive enough. E.g., Galaxy Tab, iPhone and redBus.
d) Descriptive Marks
These marks describe the purpose, nature or an attribute of the product or service and are not
considered to be eligible for registration. However, in exceptional circumstances, a descriptive
mark could be registerable if it has acquired distinctiveness—through long-term usage in the eyes
of consumers. E.g., if the mark “Car Wash” were used to represent a car washing business, it would
not be registerable.
e) Generic Marks
These marks are the actual names of the products or services they represent. They are not eligible
for registration under any circumstance. E.g., the mark “Phone” for a phone would be ineligible
for registration.

ACQUIRED DISTINCTIVENESS
Every trademark identifies the goods sold under them as emanating from a particular source.
With passage of time it gets strengthened and a particular trademark gets registered or mentally
associated in the minds of the consumers as distinctive of the product and its source.
For e.g. - If we consider the case of DETTOL or DALDA, they were originally brand names but
they have diluted to now bear reference to the product itself to such an extent that even if we buy
the same product under another brand name, the image that comes to our mind is that of Dettol
and Dalda only. This is acquired distinctiveness.
The acquisition of distinctiveness is a laborious and time consuming process.
Concept of Generic Marks
A generic mark is a word understood by the public as the common term for a product or
service. For example, the word “apple” would be generic for the fruit.
Generic terms can never receive trademark protection. They are words or symbols that
communicate what type of product or service is being offered. “
For e.g. - Email” and “modem” are generic terms. Similarly, “cereal” is a grass, the edible part of
which is used for a breakfast food. Many different manufacturers can manufacture “cereal,” and
each of those manufacturers is entitled to use the generic term “cereal” to refer to its product.
Que. Explain the term trademark. Discuss about Bars to Trademark Protection.
No one can register a trademark if it has been used by other parties prior to its use by the applicant.
Indeed, if the applicant uses such a mark, he or she may be liable for trademark infringement.
Trademarks in India are registered under the Trademarks Act, 1999 (“Act”). An application is filed
to the Registrar of Trademarks (“Registrar”) for registration. The Registrar may accept the
application and proceed to register the trademark. He can also reject the application if he finds any
fault in it. The Act also provides a list of trademarks which cannot be registered.

Names Which Cannot Be Registered
Section 13 and 14 of the Act provides that trademarks containing specific names cannot be
registered. Trademarks which have a word that is commonly used of any single chemical element
or chemical compound in relation to a chemical substance or preparation cannot be registered.
Trademarks which falsely suggest a connection with any living person can be declined registration
by the Registrar unless the consent of such living person is obtained. Similarly, trademarks which
falsely suggest a connection with any dead person within twenty years of submitting the
application for registration can be declined by the Registrar unless the consent of legal
representatives of such person is obtained.
Que. Explain Absolute and Relative grounds for refusal of registration of Trademark.
Absolute Grounds for Refusal
Trademarks which are not capable of distinguishing the goods/services of one person from those
of another person are devoid of distinctive character (if the trademark lacks distinctive character.)
and thus liable for objection under absolute grounds for refusal of trademarks.
Section 9 of the Act lists down the absolute grounds for refusal of registration. If any trademark
comes under the grounds listed in this section, it cannot be registered. The absolute grounds for
refusing registration are –
• Trademarks which do not possess any distinctive character. Distinctive character

means trademarks which are not capable of distinguishing the goods or services of
one person from those of another.
• Trademarks which exclusively contain marks or indications which serve in trade to

define the kind, quality, quantity, intended purpose, values or geographical origin of
goods or services rendered.
• Trademarks which exclusively contain marks or indications which have become

customary in the current language or the established practices of the trade.
• Trademarks are of such a nature which deceives or cause confusion to the public.
• Trademarks which contain or comprise matter likely to hurt the religious

susceptibilities of any class or sections of citizens of India.
• Trademarks which contain or comprise scandalous or obscene matter.

• If the usage of the trademark is prohibited under the Emblems and Names
(Prevention of Improper Use) Act, 1950.
• Trademarks which consist of marks of the shape of goods which result from the
nature of goods themselves.
• Trademarks which consist of marks of the shape of goods which is necessary to

obtain a technical result.
• Trademarks which consist of marks of the shape which gives substantial value to the
goods.
Section 11 of the Act provides relative grounds for refusal of registration. This section provides
exceptions to the grounds of refusal. If the exceptions are complied with, then the trademarks
under section 11 can be registered.
Section 11(1) states the following grounds for refusal –
• Trademarks which confuse the public as it is identical with an earlier similar

trademark of goods or services.
• Trademarks which confuse the public as it is similar with an earlier identical

trademark of goods or services.
An exception to this section is if there is an honest concurrent use of the trademark, the Registrar
of Trademarks may allow the registration.
• Trademarks which would take unfair advantage of a similar or identical earlier well-
known trademark in India.
• Trademarks which would be detrimental to the distinctive character or repute of a

similar or identical earlier well-known trademark in India.
• The usage of the trademark is bound to be prevented by the law of passing off
protecting an unregistered trademark used in the course of trade.
• The usage of the trademark is bound to be prevented by the law of copyright.

Unit VI: Law regarding Registration, Rights, Infringement and Remedies related to
Trademarks
6.7 Statutory Remedies for Trademarks Infringement and Common Law remedy of Passing Off
Question
1. Explain the concept trademark with its characteristics & discuss effects of registration of
trademark.
2. Discuss the procedure for registration of trademarks in detail.
3. Write detail note on infringement of trademarks with illustrations & discuss the defences
against the infringement of trademark.
4. Discuss the rights of Registered Trademark owners & explain in detail remedies for
5. Explain about infringement of trademarks & discuss the remedies for infringement of
trademark.
6. Explain trademark & discuss kinds of trademarks with functions of trademark.
Que. Discuss the procedure for registration of trademarks in detail.
Documents Required for Trade Mark Registration
The following is the list of documents required for trade mark registration in India:
• A copy of the trademark or of the logo. In case of trade mark for word, logo is not required.

• Applicant’s details like name, address and nationality.
• In case of company or LLP, the incorporation certificate.
• Udyog Aadhar registration, in case the company is eligible for lower filing fee.
• Description of goods or services represented by the mark.
• Trademark class under the application must be filed.
• Power of attorney in Form 48 Format should be signed by the applicant
Trade Mark Registration Process
Registration for trade mark can be easily done in four steps and they are as follows:
Step 1: Trademark Search
The first step is trade mark search. The search should be done in both for various combination of
similar marks on the intellectual property website. In case similar marks are found, check the
description to see if the mark represents the same set of goods or services proposed by you.
Step 2: Application Preparartion
In the second step, an application is prepared by the Trade Mark Attorney. Form 48 and TM-1 will
be prepare for approval and signature of the trade mark applicant.
Step 3: Application Filing
In the third step, the trade mark filing is completed with the Trade Mark Registry. The Government
fee for registering a trade mark for an individual, startup, small enterprise is Rs.4500. For all other
types of applicant, the Government fee is Rs.9000. there is a separate fee setup for the attorney
professional which is Rs.3500 for each application.
Step 4: Government Processing
Once a trade mark application is filed and the Government is processing the application, the status
of the trade mark application must be checked periodically. In case of objection, an objection reply
must be submitted by the applicant within 30 days. Similarly, in case of opposition, the applicant
must respond in a time-bound manner to allay the concerns of the counter-party.
Validity of Registered Trade Mark
Once a trade mark application is filed with the Trade Mark office, the applicant can begin using
the TM symbol. If the trademark is registered, the applicant can use the R symbol. All registered

trade marks are valid for a period of 10 years from the date of application. At the end of its validity,
a trade mark can be renewed easily by paying the Government fee for registration.
Honest Use
The main contention to prove the honest concurrent use is that the applicant has been using the
mark in good faith and/or he didn't have the knowledge of the earlier registered trademark.
Concurrent Use
Concurrent use is when users have similar marks on similar or non-similar goods.
For example, one party may be permitted to use a trademark within a 50 mile radius, while
another party may be permitted to use the same trademark within a different radius.
Where two separate entities have co-existed for a long period, honestly using the same or
closely similar names, the inevitable confusion that arises may have to be tolerated.
Honest and concurrent user may be a defence in cases where the goods are not identical, or the
marks are not identical, i.e., in cases in which there is no scope of confusion as to the source of
the goods or services of the two parties being the same.
Trademark is a kind of intellectual property rights representing a symbol word or words unique to
a product or company which is registered under Trademarks Act 1999. It grants protection to the
registered owners against others to misuse their unique identity. Any person who uses similar or
identical registered marks with the intention to deceive others shall be deemed to have infringed
the laws and will be subjected to legal consequences. However there are certain circumstances
where a person may be allowed to use identical or similar trademarks if they fulfil certain
conditions.
HONEST CONCURRENT USE:
Section 12 of the Trade Marks Act, 1999 allows registration of identical trademarks in case of
honest concurrent use. The Registrar may permit the registration of trademark by more than one
proprietor which is identical or similar in respect of same or similar goods or services. The
Registrar is given the discretion to register an honest concurrent user and is not obliged to do it.

John Fitton and Co. (1949) was the first international case which laid down the factors to use
honest concurrent use defense. They are:
1. The extent of time and quantity the mark has been used in trade.
2. The measure of public inconvenience that is likely to arise due to confusion from the
resemblance of marks.
3. The honesty of concurrent user.
4. Instances where the confusion has been proved,
5. The relative inconvenience that would be caused if the trademark is registered
In India, Kores (India) Ltd Vs. Khoday Eshwarsa and Son case laid down the facts that are required
to be taken notice while registering an honest concurrent user under Section 12(3) of trade and
Merchandise Marks Act, 1958. The guidelines were similar to the conditions laid down in John
Fittons Case
Thus if a person can prove the following, he can be registered as an honest concurrent user of a
trademark.
• The petitioner should prove the honesty of concurrent use.

• The petitioners should show the quantum of concurrent use regarding the duration area and
volume of trade and goods concerned.
• The chances of confusion that might result from the similarity of applicant's and opponent's
trademarks.
• The public inconvenience or damage to public interest that might be caused due to
• the confusion.
• There is no previous instances of confusions that have been proved.
• The damage and inconvenience that can be caused to the parties concerned if the mark is
registered.
DOCUMENTS TO PROVE HONEST CONCURRENT USE:
Documentary evidence can be produced to prove honest concurrent use under Section 12 of the
Act. They are:
• If the mark is already in use, evidences to prove the time period of usage of the mark

• Advertisements of the mark and the proofs that amount has been spent on such
advertisement.
• Accounting books that shows yearly sales for goods or services offered under the mark can
also be produced.
These evidences show that the consumers have been associated with the mark and products offered
under the mark by the applicant.
Que. Explain the concept trademark with its characteristics & discuss effects of
registration of trademark.
It is not mandatory to register your trademark. However, registering it provides broader rights as
compared to the rights of an unregistered trademark. It is a cumbersome process. But once
registered, it leaves with the owner certain valuable rights.
1. The Right to Exclusive Use
The exclusive right to use the trademark concerning the products and goods for which it was
registered, under some conditions. If there are more than one proprietors in whose name the
trademark is registered, each of them will have the same right as other unregistered users
2. The Right to Statutory Remedy for Any Infringement
As the owner has exclusive rights over the registered trademark, he/she can seek legal solutions to
any sort of infringement of their registered trademark, in a manner prescribed by law.
3. Right to Assign
A registered trademark owner has the right to transfer ownership by the way of license or
assignment. They can provide effectual receipts for such assignments.
4. Right to Register Correction
The Owner of a Registered Trademark can apply for correction of the register with regards to the
name, address, or description of the registered proprietor. He has the right to even cancel out any
entry of trademark on the register, or strike out any class of goods and services from the register.

Que. Explain the concept trademark with effect of registration & discuss about assignment
& licencing of trademark.
Trademark Assignment is a change in the ownership of a registered trademark. Whereas,

trademark licensing is transfer of certain rights (In a restricted manner) of a registered trademark
while retaining the ownership over the trademark.
Trademark licensing
Trademarks are important business assets that offer protection to your brand. Licensing your
trademark can benefit your business strategy by expanding the reach of your brand to new markets
and territories. In licensing of trademark, owner of a particular trademark can give the right to use
the trademark to a third party in a restricted manner and in return for a royalty, while retaining the
ownership with himself/herself.
Benefits of trademark licensing
• It helps in expanding the brand reach of the said mark.
• It can have a positive impact on business life and operations.
• Through licensing, the mark tends to become more popular and well-known.
• The workload of the company reduces
Trademark Assignment
As per the Trade Mark Act, 1999, the person entered in the register of trademark, as the proprietor
of a trademark, shall have the power to assign a trademark and to give an effectual receipt of for
any consideration for such Assignment. Assignment is complete transfer of ownership by the
owner of the trademark to a third party.
There are two types of trademark assignments:
1. Assignment without goodwill – the assignor restricts the assignee with the condition that the
assignee cannot use the trademark assigned with the goods and services already in use by the
assignor.
For example, the brand “KL” relating to his stationery product sells his brand to X. He will not use
the mark “KL” concerning stationery products but can use this brand for any other products being
manufactured.

2. Assignment with goodwill – the assignor assigns the rights and value of the trademark
associated with the product is also transferred to the assignee.
For example, the brand “KL” relating to his stationery products sells his brand to X. He can use
the brand concerning stationery products or any other products he wants to manufacture.
Benefits of Trademark Assignment
• Every Assignment of a trademark is entered in the registry records and acts as a proof of
ownership of the trademark.
• It takes less time than registering a new brand name.
• Both parties are advantageous as the assignor gets a reasonable amount for the brand name.
The assignee will enjoy the already established brand while known in the market.
Que. Write detail note on infringement of trademarks with illustrations & discuss the
defences against the infringement of trademark.
Infringement of trademarks as per Section 29 of the Trademarks Act, 1999 is defined as a use of a
mark, by an unauthorised or an authorised person or a person who is not the registered proprietor,
which is identical or deceptively similar to the trademark in relation to the goods or services in
respect of which the trademark is registered.
In simple words, it is defined as the violation of exclusive rights that are attached to a registered
trademark without the permission of the registered owner or licensees.
According to Section 103, a person is said to be applying for a trademark wrongfully in the
following conditions:
1. If falsification of trademark has been committed;
2. If any trademark has been falsely applied to goods and services;
3. Makes, possesses or disposes of any instrument with the object and purpose of falsifying
a trademark;
4. Falsely indicates name of the country or place where the goods have been made or the
name or address of the person who is responsible for its manufacturing;

5. Alters or tampers with the indication of origin that is applied or required to be applied
to a product.
The punishment for infringement of trademarks as a result of falsification shall not be less than six
months but which may extend to three years and with fine which shall not be less than fifty
thousand rupees but which may extend to two lakh rupees. Provided that the alleged offender has
not committed such falsification based on the following grounds:
1. All reasonable precautions were taken against commission of such falsification and that
at the time of commission of the alleged offence there was no genuine reason to suspect
the genuineness of the trademark
2. That he had acted innocently
3. On demand of the prosecutor, such necessary documents of the manner and person from
whom the goods were received.
Legal action and remedies can be taken against infringement of Trademarks
Whenever a trademark is said to be infringed, both civil and criminal action can be brought about.
The complaining party can either file a criminal complaint.
The Trademark Act, 1999 recognises infringement of trademarks as a cognizable offence i.e. a
police complaint can be lodged, and the infringers can be prosecuted directly. Even the courts are
empowered with the authority to suo moto conduct raids and seizure operations.
"Well-Known Trademarks"
In India, Section 2 (1) (zg) of the Trademarks Act, 1999 clearly defines a 'well – known trademark'
in relation to any goods or services, as "a mark which has become so to the substantial segment of
the public which uses such goods or receives such services that the use of such mark in relation to
other goods or services would be likely to be taken as indicating a connection in the course of trade
or rendering of services between those goods or services and a person using the mark in relation
to the first-mentioned goods or services."
The above definition clearly demonstrates extraordinary protection provided to a well-known mark
which is not restricted to a particular category of goods and/or services.

Relevant Provisions under the Trade Marks Act, 1999:
1. Section 11(2) – recognises one of the relative grounds of refusal of a trade mark stating
that a trade mark shall not be registered if or to the extent the earlier trade mark being a
well-known trade mark in India.
2. Section 11(6) – This section lays down the criteria for determination of a well-known mark,
which is as follows:
o The knowledge or recognition of that trade mark in the relevant section of the public
including knowledge in India obtained as a result of promotion of the trade mark;
o the duration, extent and geographical area of any use of that trade mark;
o the duration, extent and geographical area of any promotion of the trade mark,
including advertising or publicity and presentation, at fairs or exhibition of the
goods or services to which the trade mark applies;
o the duration and geographical area of any registration of or any application for
registration of that trade mark under this Act to the extent that they reflect the use
or recognition of the trade mark;
o the record of successful enforcement of the rights in that trade mark, in particular
the extent to which the trade mark has been recognised as a well-known trade mark
by any court or Registrar under that record.
3. Section 11(9) – It lays down the conditions/factors which are taken into consideration for
grant of a well-known trademark. There are:
o That the Trademark is registered in India
o That public at large has knowledge of the trademark
o That the Trademark has been used in India
o Application for registration of trademark is underway in India
o That the trademark is registered in any other jurisdiction
4. Section 11(10) – This section sets out an obligation on to the Registrar of Trade Marks to
protect a well-known trademark against marks which are identical and/or similar.

In Tata Sons Ltd. vs. Manoj Dodia, [CS(OS) No. 264/2008 and CS(OS) No. 232/2009], the Court
while granting reliefs, laid down a 10-factor test to determine whether or not a trademark maybe
identified as "well-known," which is as follows:
• The extent of knowledge of the mark vis-à-vis the relevant public segment
• Duration of use
• Extend of product and services to which the mark is being used
• Method, frequency and duration of advertising and promotion of the mark
• Geographical extent of trading area where the mark is being used
• Registration of the mark
• Volume of goods and services being sold under the mark
• Nature and extent of use of same or similar marks by other parties
• Extent to which rights claimed in the mark have been successfully enforced
• Actual number of consumers consuming goods or availing services under the brand.
Enforcement of Well-known Trademark
Well-known marks, as mentioned above, is accorded an extraordinary protection under the Trade
Marks Act, 1999 and may be enforced as follows:
1. At the registration stage, a conflicting and/or similar mark under any classes would be
objected by the Examiner of Trade Marks under Section 11(2);
2. The owner of a well-known mark can institute an infringement and passing off proceedings
before a civil suit seeking injunction and damages against anyone who is found to be using
a deceptively similar/identical mark for same, similar or different business activities.

Que. Discuss the rights of Registered Trademark owners & explain in detail remedies for
6.7 Statutory Remedies for Trademarks Infringement and Common Law remedy of Passing
Off
Statutory Remedies for Trademarks Infringement
According to Section 29 of the Trade Marks Act 1999, it states the infringement of a
trademark. Basically, when the exclusive rights of the possessor of the
registered Trademark are infringed, it is alleged to be an infringement of the Trademark.
The registration of a trademark gives exclusive rights to the brand name to the applicant.
The trademark registration certificate gives exclusive rights to the owner to use the brand
name for their business activity which falls under the class in which it’s registered. If a
third party makes use of the brand name in course of trade without taking permission of
the possessor, it is an infringement of the right of the owner and is termed as the
infringement of Trademark.
The trademark infringement includes using closely or misleadingly identical brand

names or logos for related products and services; and using a mark that makes a false
impression or confusion with the registered trademark.
Indian Trademark Law on Infringement:
The lawful protection of a trademark is directed by the Controller General of Patents,

Designs and Trade Marks, a government agency that reports to the Department of Industrial
Policy and Promotion (DIPP), under the Ministry of Commerce and Industry.
Remedies for Trademark Infringement?
The possessor of the Registered Trademark could start legal proceedings against the
violator who had infringed the registered trademark by stating the unfair business actions.
In India, Section 29 and Section 30 of the Trade Marks Act, 1999 states the remedies for
infringement of trademarks.
There are two categories of remedies that are available to the possessor of the trademark
against the unauthorized usage of its restriction by the third party. The Trade Marks Act
1999 shields the trademark with civil and criminal remedies. Civil proceedings could be
started by the owner of the trademark before the District Court in whose jurisdiction the
owner exists.

Civil Remedies for Trademark Infringement are available which consists of:
1.Injunction:
An injunction is stated as stopping one individual from carrying out particular activity or
action through the judicial procedure. Regarding trademark infringement, it is limiting
an individual from unauthorized usage of the trademark. By means of a temporary or
permanent stay, the Court allows protection towards the trademark holder.
2.Damages:
Damages state towards the recovery of loss suffered by the trademark holder through
the trademark infringement. The fiscal value of financial loss or brand damage is
recovered under this remedy. The sum of damages would be allowed by the court after
considering the actual as well as the expected loss of the owner because of infringement.
3.Custody of infringing materials:
This type of remedy proposes that the Court might ask the violator to deliver all the
products or products that are categorized with the brand name. In such cases, the Court
might direct the authorities to withhold the associated materials accounts and destruct all
such products. Where the trademark relates towards services, that is if a Service Mark has
been infringed; the order might be passed to stop the provision of the services instantly by
the violator.
Criminal remedies
The Trade Marks Act,1999 also provides several provisions that could be counted as a
criminal remedy for the infringement of the trademark. The following are:
Sections 103 of the Act states the criminal remedy for the infringement of the trademark
of any person or business which specifies a period of 6 months of imprisonment which
could be extended till a time frame of 3 years for infringing trademark rights.
Section 104 of the Act also states penalties that need to be granted as a sanction against an
infringement. The section lays down a penalty of fifty thousand rupees which could be
increased to an extent of two lakhs in case any person is found to contravene the trademark
rights.
Also, the punishment of trademark infringement is also stated in Section 105 of the same
Act.

A seizure of powers of the individual responsible for infringing could be carried out as a
criminal remedy for an effectual adaptation towards the above provisions. This process
carried out by police is subjected to rational grounds of proving the infringement only.
Administrative Remedies
Along with civil and criminal remedies of trademark infringement, administrative

remedies are also available for trademark infringement. The administrative remedies which
are available are:
Opposing a trademark that is identical to the original mark, could be carried out under
Sections 9(1) or 11 of the Trade Marks Act, 1999. If such a condition arises, questionings
could be done through the examiner upon the trademark registration. A trademark
opposition is filed by a third party, in that way opposing the prevailing trademark in the
trademark journal after the completion of its registration process. One another way of
carrying out administrative remedy is by means of correcting the trademark which has
been already registered. In this way, it could remove the confusion of trademarks. Since
this type of remedy is administrative in nature, it is carried out through keeping a check in
the trade activity of the products that stand an infringed trademark. Therefore, import and
export of goods that are termed with a trademark that is deceitful by nature are limited with
the intention of avoiding hesitation.
Common Law remedy of Passing Off
Meaning-
Passing off is a common law tort, which can be used to enforce unregistered trademark rights. The
law of passing off prevents one person from misrepresenting his goods or services as that of
another. The concept of passing off has undergone changes in the course of time.
Passing off means that the defendant-
a- by making a false representation,
b- sells goods,
c- with the intention to deceive the purchaser, and,
d- the plaintiff believes that the goods being sold by are of the defendant.
The protection of commercial goodwill is the objective of the tort of passing off. It ensures that
exploitation of the people’s business reputation does not take place. “No man can have any right

to present his goods as the goods of someone else” is the underlying philosophy of the tort of
passing off.
Law of Passing off in India
Actionable under common law, the law of passing off in India is mainly to protect the goodwill
that is attached to unregistered trademarks. One should not get benefit from the labor of another
person is founded in the basic principle of law.
In the Trademarks Act, passing off is defined in section 27 (2), 134 (1) (c) and Section 135. The
jurisdiction or power of the district courts in the matter of passing off suits, to try the suit or issue
injunction is referred in section 134(1)(c). Establishment of the case and the irreparable injury or
loss causes is done by the plaintiff.
No person is entitled to represent the goods of another person as his own. Using of any signs,
symbols, marks, devices or some other means wherein a direct false representation to a person is
permitted.
Passing off through deception, was a kind of unfair trade or actionable unfair trade through the
means of which a person obtains economic benefit of the established reputation by another person.
An action for a trademark in passing off where infringement based on a registered trademark is of
a particular significance as it is unlikely to be successful. This is as a result of the differences
arising between registered mark and the unregistered trademarks.
Que. discuss the defences against the infringement of trademark.
Registration of a trademark is not mandatory. When a dispute arises regarding the use of a mark,
it is the first commercial user who has a claim over the subsequent registered user.
Rights arising from registration of trademark
1. Exclusive right to use trademark for the designated goods or services.
2. Right to exclude others from using the mark.
3. Restriction of the exclusive right in the public interest.

A plaintiff in an infringement case must prove it has a valid trademark, seniority use, and that
defendant’s mark is likely to cause confusion, dilution, and/or tarnishment. Since federal
registration creates a legal presumption of validity and ownership, a defendant has the burden to
prove otherwise.
Plaintiffs in trademark infringement lawsuits can include claims of:
• Unfair Competition
• Trademark Dilution
• Unjust Enrichment
• False Advertising
• Injury to Business Reputation
• Dilution
Defenses against Trademarks Infringement
The following are some defenses to trademark infringement claims, including affirmative
defenses:
• Descriptive Fair Use
• Nominative Fair Use
• Invalid Mark or Registration
• Priority also known as Senior Use
• Laches – Delay in Enforcement
• Unclean Hands – Plaintiff’s Conduct Forfeited Rights
• Misuse of Trademark

Available Defences
• Fair Use
In order to plead this defence successfully, the accused infringer will have to prove that he had
obtained the consent of the trademark owner or establish that he acted without any intention to
defraud the consumers of the goods.
There are two types of fair use:
Descriptive fair use
This refers to a situation where a mark has been used in good faith, primarily for a descriptive
purpose rather than in order to refer to a specific mark or product.
Nominative fair use
This refers to the situation where a mark is incorporated in order to refer to the registered
proprietor’s product and not for the user’s product. This is justified where the use of the mark is
necessary in order to facilitate identification of the product.
The application of this defence requires the following conditions to be satisfied:
1. The product or service is not identifiable without the mark,
2. The mark was used only to a reasonable extent to facilitate its identification,
3. The use does not falsely suggest endorsement or sponsorship by the trademark owner.
In neither of these cases would the court conclude of the defendant having infringed the plaintiff’s
trademark.
• Prior Use
The rights of the prior user of the mark will override the subsequent user even if the subsequent
user has registered the trademark. This allows a defendant to take up this defence where the
defendant has been using the mark for a longer duration of time as compared to the registered user
and has gained a reputation in the trade concerned.
• Marks Used in Different Market
The difference in the market in which the mark is used may be a difference in the geographical
location or the difference in the class of goods and services. However, this defence is not

considered to be a good one since it could hinder the plans of the trademark owner to expand into
a market of different products or to different geographical locations.
• Delay and Acquiescence
In the case where there has been a delay in bringing action of the infringement by the plaintiff it is
often ruled that the plaintiff has waived his rights as the trademark owner and implicitly or
explicitly permitted use of its mark by the subsequent user. Acquiescence would amount to waiver,
if not abandonment, of their rights.
• Invalidity of Registered Mark
In a case of trademark infringement, the defendant may argue that the registered mark of the
plaintiff itself is invalid. Such a defence would succeed where the defence is able to establish that
the registration has taken place in such a way that it creates an unfair advantage in favour of the
plaintiff.

Unit VII :Fundamentals of Patenting
7.3 Historical Background of Patents
7.3.1 History of Patent Law in India
7.3.2 Position of Patent Law in India
7.3.2.1 Nature and Extent of Patent Rights
7.5 World Patent

Question
1. Explain the meaning, concept and types of Patent along with the historical background of
the law relating thereto.
2. Explain the Substantive Patentability Requirements as per the Patents Act 1970.
4. Explain the concept 'Patent & discuss the position of patent law in India.

Que. Explain the meaning, concept and types of Patent along with the historical
background of the law relating thereto.
A patent is a type of intellectual property that gives its owner the legal right to exclude others
from making, using, or selling an invention for a limited period of time in exchange for publishing
an enabling disclosure of the invention.
A patent is an exclusive right granted for an invention, which is a product or a process that
provides, in general, a new way of doing something, or offers a new technical solution to a
problem.
Etymology
The word “Patent” is referred from a Latin term “patere” which means “to lay open,” i.e. to
make available for public inspection. To obtain a patent, technical information about the invention
must be disclosed to the public in the patent application.
Patent is a recognition for an invention, which satisfies the criteria of global novelty, non-
obviousness, and industrial application.
There are mainly three patent types – utility patents, design patents, and plant patents. Each type
of patents has own specific eligibility criteria and protects a particular type of invention idea.
When an inventor obtains a patent, they secure the right to exclude others from using, making and
selling their product or method of use for 20 years, while maintaining the right to sell the item
exclusively and for a higher price.
Following are the possible benefits of the patent registration that helps the owner to grow
consistently over the course of time.
- Ensure Complete Protection Against Infringement
A patent renders you the legal right to prevent others from counterfeiting, manufacturing, or selling
the invention without your consent. You get the protection for a limited timeline (20 years to be
exact), allowing you to keep the infringers and the competitors at the bay. Keeping the infringers
out of the equation is perhaps the one of the most vital benefits of the patent registration.

- Patented Invention Is Tradable
Alternatively, you can license the patent to gain royalties for an extended timeline. This can
provide a sustainable source of revenue for your business. Some businesses work on the same
principle, i.e., gaining royalties from licensed patents, perhaps in combination with registered
trademark and design. Out of all the benefits of the patent registration, this is certainly the most
productive one.
- Renders Access To All Rights At Early Filing
The first step in patenting is the filing of the provisional patent application. The inventor usually
files this application when their invention is in the R&D stage.
After filing this application, the invention gets exclusive 12 months protection from the patent
office against any claim raised by other parties. If any individual or firm files an identical patent
application, the request will be denied by the authority.
- Authorizes Complete Freedom Of Reform
The granted patent empowers the inventor to use the invention for any purpose for a valid timeline,
i.e., 20 years in India. Within this timeframe, any individual other than the inventor cannot use,
sell or modify the existing invention with the consent of the inventor. Furthermore, the inventor
has the exclusive right to take advantage of legal proceedings in case of any dispute against the
concerned parties.
- Limit The Competition
Patenting a design, notion, or product can help a firm in limiting the competition. For instance,
suppose there are two rivals- A and B. Both are engaged in the trading of similar widgets. Company
B, who invented the widget, applies for & obtains a patent for the same. As per the law, Company
A can force Company B to cease production & sales of the product, thereby accessing more market
share & weeding out the competition.
- Generates Substantial Income And ROI (Return On Investment)
If the owner has reason to believe that his invention may offer better ROI through licensing, then
he/she can hand over some rights to a deserving person who is willing to commercialize the
invention. This way, the inventor can earn substantial revenue consistently without bearing
expenses to triggers the sales.
The exclusivity associated with the patented products & ideas provides the inventor with
opportunities to escalate the profit. Not only can the inventor sell the concept or product, but the
firm also can license the patented concept or product to other firms & generate stable income.

- Improves The Market Presence
The patent law allows the inventor to shares his/her invention in the public domain. With such
right at hand, the owner obtains an incredible public impression & improves his existing portfolio.
Also, this can help build the reputation of the inventor in the target market. All these factors would
lead to improved sales figures.
- Permits Public Disclosure
Patent rights permit the inventor to opt for public disclosure for the sake of increasing the
company’s funds, market value[1], and business partners. Sharing the technicality of an invention
publicly will manifest the inventor’s good command & specialization in the respective technical
field. It will help the owner attracts investors, business partners, stakeholders, and end-users.
- Triggers Innovation
Rights of Patentee
The Rights of Patentee are given as follows: –
1. Right to Exercise Patent: – A patentee has an exclusive right to use, sell or distribute
a patented article or substance in India or to use or exercise any law or process if the
patent is for any person. This right may be exercised either by the patentee himself or
by his agents or licensors. The rights of the patent holder can be exercised only during
the term of the patent.
2. Right to Grant License: – The patent holder has the discretion to transfer the right or
license or enter into any other arrangement for consideration. A license or assignment
must be in writing and registered with the Patent Controller, so that it is valid. The
document granting a patent is not accepted as evidence of a person’s title to the patent
unless it is registered and applies to the assignee and not the assignor.
3. Right to Surrender: – A patentee has the right to surrender his patent, but before
accepting the offer of surrender, a notice of surrender is given to persons whose name
is entered in the register as having an interest in the patent and their objections, if any,
considered. The application for surrender is also published in the Official Gazette to
enable interested persons to oppose.
4. Right to Sue for Infringement: – The District Court having jurisdiction to sue for
infringement of patent has the power to initiate proceedings for infringement of patent.

Obligations of Patentee
The Obligations of Patentee are given as follows: –
1. Government Use of Patents: – A patented invention may be used or even acquired

by the Government, for its use only; it is to be understood that the Government may
also restrict or prohibit the usage of the patent under specific circumstances. In case of
a patent in respect of any medicine or drug, it may be imported by the Government for
its own use or for distribution in any dispensary, hospital or other medical institution
run by or on behalf of the Government. The aforesaid use can be made without the
consent of the patentee or payment of any royalties. Apart from this, the Government
may also sell the article manufactured by patented process on royalties or may also
require a patent on paying suitable compensation.
2. Compulsory License: – If the patent does not work satisfactorily at a reasonable price
to meet the reasonable needs of the public, the Controller may grant a compulsory
license to any applicant to operate on the patent. A compulsory license is a provision
under the Indian Patent Act that empowers the government to mandate a generic drug
manufacturer to make a drug cheaper in the public interest, even if the product has a
valid patent. Compulsory licenses can also be obtained in respect of related patents
where a patent cannot be worked out without the use of the relevant patent.
3. Revocation of Patent: – A patent can be revoked in cases where there is no work or

an unsatisfactory result for public demand in respect of the patented invention.
4. Invention for Defence Purposes: – Such patents may be subject to certain secrecy
provisions, i.e., publication of the Invention may be restricted or prohibited by
directions of Controller. Upon continuance of such order or prohibition of publication
or communication of patented Invention, the application is debarred for using it, and the
Central Government might use it on payment of royalties to the applicant.
5. Restored Patent: – Once lapsed, a patent may be reinstated, provided certain

limitations are imposed on the right of the patentee. When the infringement was
committed between the period of the date of infringement and the date of advertisement
of the application for reinstatement, the patent has no right to take action for the
infringement.
Co-owner which means a person who owns something jointly with another or others. In the case
of Patents, a person gets patent rights jointly. Section 50 provides rights of co-owners of Patents.
Section 50- Rights of the Co-owners of patent

Section 50 of the Patent Act 1970 speaks about the Rights of co-owners of patents —
• Joint owners are entitled to an equal and undivided share.

• Moreover, a joint owner of the patent is free to exploit and retain profits in the patent,
without sharing profits with the other owner(s) (Section 50(2)).
• A joint owner cannot assign its ownership interest without the consent of another joint
owner (s) or grant an exclusive license of the patent without the consent of another joint
owner (s) (Section 50(3)).
• Generally, joint ownership may become unavoidable in scenarios wherein two or more
parties have invested together equally or have a common interest in the commercialization
of the product.
Therefore, if proper care and attention are not given while drafting these clauses in the contract, it
may lead to big legal trouble.
The right to the patent belongs to the true and actual inventor, his heirs, legal representatives
or assigns.
If two or more persons have an invention jointly, the right to the patent belongs to them jointly.
There is some evidence that some form of patent rights was recognized in Ancient Greece.
In England, grants in the form of letters patent were issued by the sovereign to inventors who
petitioned and were approved. These letters patent provided the recipient with a monopoly to
produce particular goods or provide particular services.
The first extant Italian patent was awarded by the Republic of Venice in 1416 for a device for
turning wool into felt.
Patents were systematically granted in Venice as of 1450, where they issued a decree by which
new and inventive devices had to be communicated to the Republic in order to obtain legal
protection against potential infringers.
King Henry II of France introduced the concept of publishing the description of an invention in a
patent in 1555.
The first Patent Act of the U.S. Congress was passed on April 10, 1790, titled "An Act to promote
the progress of useful Arts."

Different types of patent
There are different types of patents that are granted across the world, and naturally, they vary
across the world as patent rights are territorial rights (i.e., patent rights are enforceable only in the
territory they are granted in). The different types of patents are discussed as follows:
Product patents
Simply speaking, sometimes the inventors develop a product and/or method that provides a
technical solution to a problem or is a new method of doing something.
Process patents
As the name suggests, process patents are those patents where the claims envisage the process of
making something. In other words, only the methods are protected under patent rights and not the
end product.
Provisional patents
As the name suggests, provisional patents are temporary patents. In other words, the rights enjoyed
by the patentee by virtue of a provisional patent are provisional in nature and can become
mainstream upon fulfilling the territorial criteria of patentability within a prescribed time.
Design patents
At the outset, it is pertinent to mention that the concept of design patents is a US concept and not
permitted in India. Designs get protected in India under the Designs Act, 2000, subject to
fulfillment of related laws and rules, but the same is not patent protection but only design
protection (proprietor gets copyright for design) for 10 years (extendable by 5 years upon
fulfillment of certain conditions).
Utility patents
Utility patents are another US concept and are not granted in India. Anyone who invents or
discovers any new and useful process, machine, article of manufacture, composition of matter, or
any new useful improvement thereof can get utility patent protection for 20 years just like regular
patents.

Plant patents
Plant patents are granted in the US, but not in India. In India, there is the Protection of Plant
Varieties and Farmers Rights Act, 2001, with equivalent purposes and adjusted to serve India.
7.5 World Patent
The World Intellectual Property Organization (WIPO) has formed several treaties that help
inventors and applicants protect their intellectual property in different countries.
Two major international conventions control the application of an international patent:
1. Patent Cooperation Treaty
2. Paris Convention Treaty
The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for
the Purposes of Patent Procedure, or Budapest Treaty, is an international treaty signed
in Budapest, Hungary, on April 28, 1977.
The treaty is administered by the World Intellectual Property Organization (WIPO).
Contents of Treaty
• The treaty allows "deposits of microorganisms at an international depositary authority to

be recognized for the purposes of patent procedure".
• The Budapest Treaty ensures that an applicant, i.e. a person who applies for a patent, needs
not to deposit the biological material in all countries where he/she wants to obtain a patent.
• The applicant needs only to deposit the biological material at one recognised institution,
and this deposit will be recognised in all countries party to the Budapest Treaty.
• The deposits are made at an international depositary authority (IDA) in accordance with
the rules of the Treaty on or before the filing date of the complete patent application.
The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970.

Any contracting state to the Paris Convention for the Protection of Industrial Property can become
a member of the PCT.
It provides a unified procedure for filing patent applications to protect inventions in each of its
contracting states in order to safeguard inventions.
The PCT was created to simplify the initial filing procedure by making it easier and less
expensive to file a patent application in a wide number of nations.
A patent application filed under the PCT is called an international application, or PCT
application.
It can be submitted with the national patent office of the Contracting State in which the applicant
is a national or resident, or with the International Bureau of WIPO in Geneva at the applicant's
request.
When a PCT application is filed, the Applicant is given a choice to select the Contracting States
bound by the PCT in which he intends to file his patent. In each designated State; the international
application has the same effect as if a national patent application had been submitted with that
State's national patent office.
Benefits of Patent Cooperation Treaty:
1. Inventors can submit a single international phase patent application to acquire protection
in all 117 PCT signatory nations at the same time.
2. The formality criteria, international search, and preliminary review reports, as well as the
PCT system's centralized international publishing, are all standardized.
3. The PCT aids in the growth of scientific knowledge.
4. It provides appropriate legal protection for innovations.
5. It simplifies and reduces the cost of invention.
6. It raises the country's international standing in the field of intellectual property.
7. The PCT facilitates the management of patent portfolios.
8. Evaluate and design incentives to keep an innovation alive before it incurs significant
expenditures in another country.

National Treatment:
The concept of National Treatment under the Paris Convention stipulates that every Contracting
State must give the same level of protection to nationals of Member States as it does to the nationals
of its own state, including the same legal remedies. As a result, this Concept resists two different
sets of regulations for the protection of industrial property for nationals of a Contracting state and
for nationals of the concerned state.
Right to Priority:
In the case of patents, utility models, marks, and industrial designs, the Convention establishes a
Right to Priority. The right to priority means that, following the filing of a regular first application
in one of the Contracting States, the applicant may apply for protection in any of the other
Contracting States within a set amount of time – Patents and utility models have a 12-month time
limit, while Industrial designs and trademarks have a six-month time limit.
According to the Patent Act (of India), those that fall under the category of “Inventions” can be
patented, as defined in Section 2 (j) of the Act which involves anything that is novel, capable of
industrial application, and is not frivolous (subject-matters eligible for patentability).
As defined in Section 2 (j) the term “invention means a new product or process involving an
inventive step and capable of application”.
Section 3 and Section 4 of the Patent Act provides Following are not the “inventions” under the
meaning of this act:
(a) Inventions that are frivolous and contrary to natural laws.
Inventions which are frivolous or contrary to well established natural laws.
b) Inventions which go against public morality
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.

(c) Inventions that are a mere discovery of something that already exists in nature.
The mere discovery of a scientific principle or the formulation of an abstract theory or discovery
of any living or non-living substances occurring in nature.
As per Sections 3 and 4 of the Indian Patent Act, the following innovations are not Patentable in
India:
1. An invention that is frivolous or trivial
2. An invention that claims anything obviously contrary to well established natural laws
3. The mere discovery of a scientific principle
4. Moreover, an invention whose primary goal or intended use is contrary to law or morality
or is injurious to public health
5. The formulation of an abstract theory
6. Further, 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
7. 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
8. A substance obtained by a mere admixture resulting only in the aggregation of the

properties of the components thereof or a process for producing such substance
9. Similarly, the mere arrangement or rearrangement or duplication of known devices, each

functioning independently of one another in a known way
10. A method of agriculture or horticulture
11. Inventions relating to atomic energy
12. Any process for the medicinal, surgical, curative, prophylactic, or any other type of
treatment of people or animals or other creatures
13. Plants and animals in whole or any part thereof other than microorganisms but including
seeds, varieties, and species and essentially biological processes for production or
propagation of plants and animals
14. A mathematical or business method or a computer programme per se or algorithms

15. Likewise, a literary, dramatic, musical, or artistic work or any other aesthetic creation
whatsoever including cinematographic works and television productions
16. Similarly, a mere scheme or rule or method of performing a mental act or method of
playing a game
17. Presentation of information
18. Topography of integrated circuits
19. An invention which in effect is traditional knowledge or is based on the properties of

traditional knowledge.
Que. Explain the Substantive Patentability Requirements as per the Patents Act 1970.
There Are Three Basic Parameters for an Invention to Be Patentable, Which are:
1. Novelty - The invention must be novel, which means it must not already be in existence
2. Non-obviousness -The invention must be non-obvious, which means that even a person
who is well-versed in the area to which the invention pertains might not be able to come
up with that invention without exerting or acquiring exceptional mental skills and
ability
3. Industrial application -Further, the invention must be beneficial to mankind and have a
bonafide purpose. A useless or illegal innovation is Cannot Be Patented.

Unit VIII: Law relating to Patent Application, Patent Infringement
8.2 Infringement
8.2.2 Onus of proof
Question
2. Explain in detail the provisions relating to Infringement of Patent under Patents Act 1970.
3. Discuss the concept 'Patent' explain about infringement of patent with defences in suit for
infringement of patent.
Que. Explain in detail the procedure for filing Patent Application under the Patents Act
1970.
Thumb Rule:
Do not disclose your invention in public domain before filing a patent application failing which
the innovation loses its novelty.
Inventors can file a patent in two ways:

• The inventor can file the patent on his/her own
• The inventor can take the help of a patent filing professional or agency.
Since the patent filing process is long and complicated, most inventors prefer to engage the services
of patent filing professionals or agencies. Such individuals or firms charge a fee for since they
have years if experience under their belt. They can complete the necessary patent filing procedures
on your behalf.
Now let’s understand the patent filing procedure.
Step 1 – Check if your invention is patentable
Before you begin the patent registration process, you need to check if your invention is patentable.
This means that you need to check if another individual has filed a patent for a similar technology
for which you are filing. Performing an in-depth patentability search helps you understand whether
or not you have a chance of getting a patent. While this step is optional, it can save time and help
you understand whether or not you should file for a patent in the first place.
Step 2 – Draft the patent application
You can now begin the patent application process. Indian applicants need to fill Indian Patent
Application Form 1. For every patent you file, you need to mandatorily provide a Form 2 patent
specification. You can choose between a provisional and complete patent application, based on the
stage of invention. This means that if you are still testing your invention, you need to apply for a
provisional patent application. You get a period of 12 months to complete the invention and file
for a complete patent.
Step 3 – Filing the patent application:
Your patent application needs to be submitted with several application forms. As per the patent
filing procedure in India, you need to submit all of the below mentioned forms. Links to all forms
and an applicable fee is http://www.ipindia.nic.in/form-and-fees.htm
• Form 1 – Application for patent grant
• Form 2 – Patent specification form (provisional or complete)
• Form 3 – Undertaking and statement with regards to foreign applications under section 8
(mandatory only in case a corresponding application for patent is filed in a foreign country)
• Form 5 – Declaration of invention to be filed with complete application

• Form 26 – Form authorizing patent agent (applicable only if you opt for an agent to help
file the patent)
• Form 28 – Mandatory only if applicant is claiming small entity or start-up status
• Priority Documents – You need to provide priority documents only if priority is being
claimed from a foreign patent claim or application.
Step 4 – Publishing the patent application
After you submit all the documents, the patent application is safely secured by the Indian Patent
Office. The patent is then published in an official patent journal after a period of 18 months
approximately. However, inventors who wish to have their patent application published before this
18 month period can submit Form 9 (early publication request).
Step 5 – Examining the patent application
Before your patent is granted, it needs to be examined substantively. As per rules of the patent
application process in India, your patent is thoroughly examined based on the merits of your
invention as claimed and described in the patent specification form. Unlike the publication process,
this is not an automatic process and the applicant needs to make a request to examine their patent
application by submitting Form 18. The patent office queues the application for examination only
after a formal request for examination is made. You can also expedite this process by filling and
submitting Form 18 (A).
Step 6 – Decision to grant patent
Once the examiner finds no objections in the patent application, he grants the patent. The patent is
then published in the official patent gazette.
Step 7 – Renewing the Patent
The patent holder also needs to renew his patent by paying an annual renewal fee. In India, it is
possible to renew your patent for a period of 20 years at maximum, from the date the patent was
first filed.
Revocation means the act of taking back something that has already been granted.

Revocation instituted by any (Interested) Person-
Section 64 of the Patents Act provides that a person interested can file a petition before the IPAB,
or in a counter-claim in a suit for infringement of the Patent before the High Court, on any of the
grounds mentioned in this Section.
The person under the Act refers to an interested person. It means that the person filing for
revocation of the patent shall have some interest or share in the patent or its revocation, whatever
the case may be.
Section 64 of the Patent Act, 1970, does not restrict the grounds of Patent Revocation to only
those provided in Section 64, whereas section 25 (2) also set out grounds that are used in post-
grant opposition proceedings is restrictive in nature. Hence, it can be said that Section 64 is not
exhaustive.
The Patent Act, 1970, in Section 64 provides for the persons who can file the petition of
Revocation of Patent. The persons are as follows:
• any interested person;
• the Central Government;
• the person is making the counter-claim for the infringement of a patent in a suit.
Where Can A Revocation Of Patent Petition Be Filed?
A petition for the Revocation of Patent should be filed in the Intellectual Property Appellate
Board (IAPB) by any of the persons specified under section 64 of the Patent Act, 1970. As
per Section 104 of the Patent Act, 1970, provides for the jurisdiction aspect for filing of the
Revocation of Patent petition.
Section 104 states that the Revocation petition claiming Infringement of Patent should not be filed
in any court, which is inferior to District Court having the jurisdiction to try the Infringement suit.
On the other hand, in case of a counter-claim is filed for the Revocation of Patent made by the
defendant, such counter-claim or suit for Patent Infringement should be transferred to the High
Court.
The grounds for Revocation are provided under section 64, 65, 66 and 85 of the Patent Act,
1970.
The grounds for revocation of a patent under Section 64 of the Patents Act 1970 are as under:

a. that the invention, so far as claimed in any claim of the complete specification, was claimed
in a valid claim of earlier priority date contained in the complete specification of another
patent granted in India;
b. that the patent was granted on the application of a person not entitled under the provisions
of this Act to apply therefor:
c. that the patent was obtained wrongfully in contravention of the rights of the petitioner or
any person under or through whom he claims;
d. that the subject of any claim of the complete specification is not an invention within the
meaning of this Act;
e. that the invention so far as claimed in any claim of the complete specification is not new,
having regard to what was publicly known or publicly used in India before the priority date
of the claim or to what was published in India or elsewhere in any of the documents referred
to in section 1315;
f. that the invention so far as claimed in any claim of the complete specification is
a. obvious or
b. does not involve any inventive step,
having regard to what was publicly known or publicly used in India or what was published
in India or elsewhere before the priority date of the claim;
g. that the invention, so far as claimed in any claim of the complete specification, is not useful;
h. that the complete specification does not sufficiently and fairly describe the invention and
the method by which it is to be performed, that is to say, that the description of the method
or the instructions for the working of the invention as contained in the complete
specification are not by themselves sufficient to enable a person in India possessing average
skill in, and average knowledge of, the art to which the invention relates, to work the
invention, or that it does not disclose the best method of performing it which was known
to the applicant for the patent and for which he was entitled to claim protection;
i. that the scope of any claim of the complete specification is not sufficiently and clearly
defined or that any claim of the complete specification is not fairly based on the matter
disclosed in the specification;
j. that the patent was obtained on a false suggestion or representation;
k. that the subject of any claim of the complete specification is not patentable under this Act;

l. that the invention so far as claimed in any claim of the complete specification was secretly
used in India, otherwise than as mentioned in sub-section (3), before the priority date of
the claim;
m. that the applicant for the patent has failed to disclose to the Controller the information
required by section 8 or has furnished information which in any material particular was
false to his knowledge;
n. that the applicant contravened any direction for secrecy passed under section 35 or made
or caused to be made an application for the grant of a patent outside India in contravention
of section 39;
o. that leave to amend the complete specification under section 57 or section 58 was obtained
by fraud;
p. that the complete specification does not disclose or wrongly mentions the source or
geographical origin of biological material used for the invention;
q. that the invention so far as claimed in any claim of the complete specification was
anticipated having regard to the knowledge, oral or otherwise, available within any local
or indigenous community in India or elsewhere.
The revocation of a patent is not restricted to Section 64 only. Section 25(2)16 also specifies certain
grounds, which could be used for post-grant opposition, which essentially means that a person
claiming that a patent granted under the Act is not valid on the basis of grounds mentioned under
Section 25 and could reach the controller for revocation by way of an opposition to the grant of
such patent. This remedy is available until one year from the date of publication of the grant of
patent. These grounds are somewhat similar to those of Section 64.
Section 65-Revocation In Cases Related To Atomic Energy
Section 65 of the Patent Act 1970, provides that the Revocation of Patent can be done by the
Central Government. The Central Government can revoke the Patent only after may revoke a
Patent after establishing that the invention specified in the Patent is related to Atomic Energy. The
grant of Patent for an invention on Atomic Energy is restricted as per the provisions of the Atomic
Energy Act, 1962. Hence, the Central Government cannot allow the grant of Patent for an invention
related to Atomic Energy in India.
Section 66-Revocation Of Patent In Public Interest
Section 66 of the Patent Act, 1970, states that where the Central Government is of the opinion
that the Patent or the manner in which the rights related to Patent are exercised Is
disadvantageous to the public at large or the State, then such a detrimental Patent should be

revoked. The Patent holder should be given proper opportunity with respect to his/her right of
being heard. After the opportunity is given to the Patent holder and observing all the circumstances,
the decision for the Revocation of Patent will be given accordingly.
Section 85-Revocation By Controller For Non-Working
As per Section 85 of the Patents Act, 1970, the Patent can be revoked for non-working. Any person
interested or the Government can apply for the Revocation of Patent to the Controller with respect
to the Patent for which compulsory license is granted. The Patent Revocation should be filed
within two years of the grant of the compulsory license.
The grounds for Revocation are:
• The invention which is patented is not working the territory of India;
• The reasonable requirements of the common public from the Patent is not being met;
• The invention which is patented is not available to the common public at a reasonable,
affordable price.
The application made by any person or the Government should be made in Form 19 along with
the evidences supporting the Revocation. The application if is made by a person interested, so
such an interested person should disclose the nature of his/her interest.
Patent licensing
Patent licensing is a concept that provides that patent holder can further delegate his/her rights to
a person who can further use it according to the patent holder and take his invention forward and
in return pay royalty or remuneration to the holder.
A patent license is a right granted to a person to protect and authorize a patent to that person so
that nobody can sell, use, or exploit his patent.
Compulsory license
Compulsory license is the license which could only be granted after the expiration of 3 years from
the date of grant of a patent by the controller.
In response to an application filed by an interested person, an interested person along with the
application for grant of a compulsory license should also state the particulars mentioning what is
'his' interest that is connected with the grant of such license.

In India, the idea of Compulsory Licensing is in play. It alludes to a permit given to a person
involved with assembling, sell or utilize the item or product which has been conceded a patent
without the consent of the proprietor.
The conditions for compulsory licensing is secured under section 84 and 92 of the Indian Patent
Act 1970 which expresses that:-
There are three grounds that are mentioned under Section 84 providing that if any of the following
three requirements are not fulfilled, an application for grant of compulsory license could be filed:
• A patented invention does not satisfy the reasonable requirements of the public.
• A patented invention is not available to the public at a reasonably affordable price.
• A patented invention is not working in the territory of India. Demotivating
If the controller is satisfied that any of these three requirements are not satisfied and if the
controller thinks fit, he may grant a license upon such terms as he may deem fit. The controller
also has to take into account other relevant factors like the ability of the applicant to exploit the
licensed patent, the nature of such invention, whether the applicant tried to get a license from the
patent holder, etc. Section 84(7)24 mentions the circumstances, which are to be looked at while
deciding whether the reasonable requirements pertaining to the public at large are satisfied or not.
The basic purpose of a compulsory license is to enable the general public to avail the benefits,
which is due to the patent holder's inefficient use of the invention could not be availed otherwise.
Hence, an interested person with adequate capabilities may be granted with a compulsory license
which will eventually not only function in the territory of India but will also help in satisfying the
basic requirements of the general public at reasonably affordable prices.
Section 92 of Patent Act, 1970, manages different grounds on which the compulsory licensing will
be allowed. These are unique arrangements or special provisions for compulsory licensing on
warnings by Central Government. Government awards necessary licenses on the accompanying
grounds:
• For trades, on the off chance that the item is utilized for sending out to another nation, at
that point government can allow licenses yet this is just in uncommon conditions.
• In circumstances of national emergency or if there is a public crisis, where the item is

required in earnest conditions like in war or in wellbeing.

Parallel import means that patented or marked goods are purchased in a foreign market and
resold in the domestic market. These are known as passive parallel imports. Instead, active
parallel imports occur when foreign licensees enter the market in competition with the holder of
the patent or of the trade mark.
Section 29 of the Act refers to prior art as that which was published before the claim of a completed
specification in: (i) any specification filed for obtaining a patent in India on or after January 1,
1912; (ii) in India or elsewhere and also in any other documents.
An anticipation of an invention under the patent law refers to the prior invention or the disclosure
of the claimed invention by another or it can also be the disclosure of the claimed invention by the
inventor for an invention sale, publication or an offer to sell prior to the inventors application for
a patent.
In India, a patent must meet the requirements detailed under Section 2(1)(j) regarding novelty, U/S
2(1)(ja) for inventive step means technical advancement or economic significance or both, and
U/S 2(1)(ac) for industrial application in addition to not falling U/S 3 and 4 of the Indian Patent
Act, 1970, to be granted.
Non-obviousness of the invention is one of the three desiderata for the grant of Patent, others being
novelty and industrial application. Simply put nonobvious as a patent term means that the
invention shall not be obvious or apparent to a person ordinary skilled in the field relating
to the invention.
The Patents Act 2013 requires that a claim for an invention involves an inventive step. A claim
involves an inventive step if it is not obvious to a person skilled in the art, having regard to
any matter which forms part of the prior art base.
The term “sufficiency of disclosure” means that the information provided in the patent
specification should be adequate for an average skilled person in that field to perform the
invention. The specific requirements of sufficient disclosure vary slightly from one jurisdiction to
another.

Que. Explain in detail the provisions relating to Infringement of Patent under Patents Act
1970.
8.2 Infringement
Proving patent infringement in court requires a plaintiff to prove two broad elements: ownership
and validity of the patent, and infringement of the patent by the defendant.
Patent infringement means the violation of the exclusive rights of the patent holder. As
discussed earlier, patent rights are the exclusive rights granted by the Government to an inventor
over his invention for a limited period of time.
8.2.2 Onus of proof
The burden of proof is on the defendant to prove that consent has been given and that such
consent covers the infringement in issue. Typical facts relied upon by claimants A given product
falls within one or more of the product claims of the patent.
Meaning of Patent Infringement: – Patent infringement is a violation which involves

the unauthorized use, production, sale, or offer of sale of the subject matter or Invention of
another’s patent. There are many different types of patents, such as utility patents, design patents,
and plant patents. The basic idea behind patent infringement is that unauthorized parties are not
allowed to use patents without the owner’s permission.
When there is infringement of patent, the court generally compares the subject matter covered
under the patent with the used subject matter by the “infringer”, infringement occurs when the
infringer uses patent material from in the exact form. Patent infringement is an act of any
unauthorized manufacture, sale, or use of a patented invention. Patent infringement occurs directly
or indirectly.
1. Direct Patent Infringement: – The most common form of infringement is direct

infringement, where the Invention that infringes patent claims is actually described, or
the Invention performs substantially the same function.
2. Indirect Patent Infringement: – Another form of patent infringement is indirect

infringement, which is divided into two types: –
A. Infringement by inducement is any activity by any third party that causes

another person to infringe the patent directly. This may include selling parts

that can only be used realistically for a patented invention, selling an

invention with instructions to use in a certain method that infringes on a
method patent or licenses an invention that is covered by the patent of
another. The inducer must assist intentional infringement, but does not
require intent to infringe on the patent.
B. Contributory infringement is the sale of components of material that are

made for use in a patented invention and have no other commercial use.
There is a significant overlap with indications, but contributor violations
require a high level of delay. Violations of the seller must have direct
infringement intent. To be an obligation for indirect violations, a direct
violation must also be an indirect act.
Remedies for Patent Infringement
Patent infringement lawsuits can result in significantly higher losses than other types of lawsuits.
Some laws, such as the Patent Act, allow plaintiffs to recover damages. Patent infringement is the
illegal manufacture or usage of an invention or improvement of someone else’s invention or
subject matter who owns a patent issued by the Government, without taking the owner’s consent
either by consent, license or waiver. Several remedies are available to patent owners in the event
of an infringement. Measures available in patent infringement litigation may include monetary
relief, equal relief and costs, and attorneys’ fees.
1. Monetary Relief: – Monetary relief in the form of compensatory damages is available to

prevent patent infringement: –
A. Indemnity Compensation: – A patent owner may have lost profits for

infringement when they established the value of the patent.
B. Increased Damage: – Up to three times, compensation charges can be charged in

cases of will or violation of will.
C. The Time Period for Damages: – The right to damages can be claimed only after
the date when the patent was issued and only 6 years before the infringement claim
is filed.
2. Equitable Relief: – Orders are issued by the court to prevent a person from doing anything
or Act. Injections are available in two forms: –

A. Preliminary Injunction: – Orders made in the initial stage of lawsuits or lawsuits

that prevent parties from doing an act that is in dispute (such as making a patent
product)
B. Permanent Injunction: – A final order of a court which permanently ceases certain

activities or takes various other actions.
Que. Discuss the concept 'Patent' explain about infringement of patent with defences in suit
for infringement of patent.
Defences Against Infringement of Intellectual Property Laws
A defendant may provide a defence (or defences) in civil actions and criminal prosecutions under
common law in an effort to avoid criminal or civil liability. A defendant may raise a defence or
make claims against the prosecution or plaintiff in addition to contesting the accuracy of any
allegations brought against them in a criminal or civil action and other than that a defendant may
also make allegations against the prosecutor or plaintiff or raise a defence, arguing that even if the
allegations put up against the defendant are true. The defendant is nevertheless not liable for the
same. Likewise, there are few defences in the intellectual property law.
Common Defences to Patent Infringement
1. Non-Infringement: – It states that the product or process invented is not the same as
the patent that is already protected by the laws. The accused party can argue that the
patent owner has failed to show that their product or process infringes upon the patent’s
claims by poking holes in the patent holder’s infringement analysis, for example, by
negating their arguments for literal or equivalent infringement.
2. Invalidity: – Another way to defend against patent infringement is to argue that the
patent claim, which is allegedly being infringed, is invalid because it does not satisfy
any of the five patentability requirements discussed above: patentable subject matter,
utility, novelty, non-obviousness, and enablement. However, at the litigation stage,
there is a presumption of validity of patent claims, so the accused party would need
clear and convincing evidence, a higher burden of proof, to successfully show that the
patent claim in question is invalid.

3. Inequitable conduct: – Instead of arguing that a particular patent claim is invalid

because it does not satisfy the patentability requirements outlined above, the accused
can also argue as a defense that the patent owner engaged in inequitable conduct during
the prosecution of the patent application, which will invalidate the whole
patent. Because the presumption of validity of a patent applies, the accused would also
need to show inequitable conduct using the higher clear and convincing evidence
standard.To successfully prove that the patent holder engaged in inequitable conduct
the accused needs to show the following elements: –
A. The patent holder deliberately misleads the examiner;
B. The patent holder withheld knowledge of crucial information;
C. There can be no infringement because the patent is invalid;
D. Some sort of honesty guideline was broken.
4. First Sale Doctrine: – You are reselling an item legally sold to you. This defence is
available because patent rights exhaust on a specific item once that item is sold.
5. Repair Principle: – You are repairing the device by replacing components that are
not patented. This defence does not allow you to completely reconstruct an invention.
6. Patent Abuse: – The following examples are considered patent abuses: –
A. Using it to violate antitrust
B. Using it to Crush the Competition
C. Using it to engage in business practices that are unethical, such as pricing.
7. Licensing: – The patent holder has granted you permission or rights to use the patent
and you have used the invention in compliance with said rights or permission.
8. Expiration of Patent: – The accused’s supplier upstream has legally purchased the
patented invention from either the patent holder or a licensee of the same. Current laws
forbid a patent holder from attempting to collect payment from multiple levels of a
supply chain for a single patented invention.
9. Estopel: – There are two forms of Estopel: –
A. File wrapper estoppel: – If the inventor has denied rights or admitted any
limitation of rights in his patent application, those denied rights cannot be
used as part of a patent infringement case.

B. Equitable estoppel: – The patent holder assures you that there will be no
enforcement of the patent. This can be either from failure to make promises
or to implement. This means that the accused relied on that belief or
assurance in continuing his business practices.
10. Experimental Use: – Under common law, experimental use defense is only allowed if
the accused was using the patented invention for amusement, to satisfy idle curiosity,
or for strictly philosophical inquiry. This is a very narrow defense and does not apply
when the use is even slightly commercial in nature. You can use a patented invention if
it is related to the development of information. You may also use it if it relates to
submission of it under federal laws regulating the use, sale and manufacture of drugs.
Defences in suit for infringement of patent.
Patent Infringement Defence
1. The defendant can prove by showing the data they are not infringing the patent.
2. The defendant may stop selling or making the infringing product.
3. The defendant can negotiate a license fee with the patent owner by crossing over your
patent portfolio (if the plaintiff is not an NPE).
4. The defendant may begin with a non-infringement defence to avoid a claim of

infringement. The cost of hiring a specialist for non-infringement defence is considered
the best of all available options.
5. The defendant can prove that the patent has been wrongly obtained by the plaintiff. that
the subject of that claim is not an invention within the meaning of this Act, or is not
patentable under the Act of the Patents Act, 1970.
6. Inadequate disclosure of the invention or the manner by which it is to be made.
7. In the case of a patent granted on a Convention application, if the application for a patent
was not made within twelve months from the date of the first application for protection
for an invention made in a Convention country or India.

Notes On IPR

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Study Notes on IPR, by Dr. M. S. Khairnar, Asst. Prof.

BV YCLC Karad | Intellectual Property Law

DSC – 602 INTRODUCTION TO INTELLECTUAL PROPERTY LAW (Paper – II)

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2.3 Introduction to other International Agreements, Conventions and Enforcement Mechanism

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4.4 Assignment of Copyright

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5.5.1 The distinctive Spectrum

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7.5.1 Budapest Treaty

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Introduction to Intellectual Property Law

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26. Write Historical Development of International Intellectual Property Regime.

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Short notes on-

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38. Anton Pillor Order under Copyright law

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1.1 Introduction to Intellectual Property

1.1.2 Various forms of property

Major types of property:

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Kinds of Intellectual Property

Geographical Indicators (gi)

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1.1.3 Nature of Intellectual Property Rights

Need to protect IPR

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1.1.4 Economic importance of Intellectual Property

Que. Explain Introduction and Nature to Intellectual Property. Write Philosophical

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1.2.4 Constitution of India and Aspects of Property and Intellectual Property

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1. The Copyrights Act, 1957 (“Copyright Act”)

2. The Trade Marks Act, 1999 (“Trade marks Act”)

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3. The Patents Act, 1970 (“Patents Act”)

4. The Design Act, 2000 (“Design Act”)

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Unit-II: International Intellectual Property Regime

Que. Write Historical Development of International Intellectual Property Regime.

2.1 Historical Development of IPRs at International Level

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2.2. Introduction to the leading international instruments concerning intellectual property

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2.2.2 Berne Convention

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(1) The three basic principles are the following:

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WIPO's activities include-

- hosting forums to discuss and shape international IP rules and policies,

- providing global services that register and protect IP in different countries,

- resolving transboundary IP disputes,

- helping connect IP systems through uniform standards and infrastructure, and

Patent Cooperation Treaty

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2.2.4 Budapest Treaty

2.2.5 Trade Related Aspects of Intellectual Property Rights