Intellectual Property Law NOTES

1. Nature, Scope and meaning about IPR.

Synopsis:
1. Introduction
2. Meaning
3. Nature
4. Scope
5. Conclusion
Intro
Intellectual Property Rights (IPR) refer to the legal rights that are
granted to individuals or entities to protect their creations,
inventions, or ideas. In India, IPR is governed by various laws such
as the Patents Act, 1970, the Trademarks Act, 1999, the Copyright
Act, 1957, the Designs Act, 2000, and the Geographical Indications
of Goods (Registration and Protection) Act, 1999.

Meaning of IPR in India:

The meaning of IPR in India is that it is a legal right granted to
individuals or entities to protect their intellectual creations or
inventions. IPR enables creators or inventors to benefit from their
creations or inventions by providing them with exclusive rights to
use, sell, license, or transfer the rights to their creations or
inventions. IPR encourages innovation and creativity by providing a
legal framework for protecting the rights of creators or inventors.

Nature of IPR in India:

IPR in India is a statutory right granted to individuals or entities for a
limited period of time. It is based on the premise that creators or
inventors have the right to benefit from their creations or inventions.

The nature of IPR is exclusive, meaning that the holder of the right
has the exclusive right to use, sell, license, or transfer the right, so to
the creation or invention. IPR is territorial in nature, meaning that it
is only applicable within the geographical boundaries of the country
where it is granted.

Scope of IPR in India:

The scope of IPR in India is wide-ranging, covering various areas
such as patents, trademarks, copyrights, designs, and geographical
indications.
1.Patents protect inventions that are new, non-obvious, and useful.
2.Trademarks protect distinctive signs, logos, or symbols used by
businesses to distinguish their goods or services from those of others.
3. Copyrights protect original works of authorship such as books,
music, software, and art. Designs protect the appearance or aesthetic
features of a product. Geographical indications protect the origin of
goods that have a specific geographical origin and possess certain
qualities, reputation, or characteristics.

Conclusion:
IPR in India is a statutory right granted to individuals or entities to
protect their intellectual creations or inventions. The scope of IPR in
India covers various areas such as patents, trademarks, copyrights,
designs, and geographical indications. The nature of IPR in India is
exclusive, territorial, and time-bound. IPR plays a crucial role in
promoting innovation, creativity, and economic growth in the
country.

2. Trademark
Synopsis:
1. Introduction
2. Meaning
3. Types
4. Procedure for Registration
5. Infringement
6. Conclusion
Introduction:
A trademark is a symbol, word, phrase, or design that identifies and
distinguishes the source of goods or services of one party from those
of others. Trademarks are important for businesses as they help to
create brand recognition and protect their products or services from
being used by competitors. In India, trademarks are governed by the
Trademarks Act, 1999.
Meaning of Trademark:
A trademark is a unique symbol, word, or phrase that identifies and
distinguishes the source of goods or services of one party from those
of others. A trademark can be a word, name, device, label, signature,
numeral, or combination of colors used by a business to identify and
distinguish its goods or services from those of others.
Types of Trademarks:
There are several types of trademarks, including:
1. Associated Trademark: Associated trademarks refer to those
trademarks which are owned by the same proprietor in respect of
identical or similar goods and services.
2. Certification Trademark: Certification marks are used to
define standards. They assure the consumers that the product
meets specific prescribed standards. A certification mark on a
product indicates that the product has successfully passed a
standard test specified.
3. Collective Trademark: A collective mark is a type of trademark
that is used by members of a group or organization to identify
themselves as members of that group or organization.
 4. Well-known Trademark: Well-known trademark is defined as
marks of companies that have become so substantial to a section
of the public that uses such goods or receives services from those
companies, that the use of that mark while using other goods or
services would also be taken as a connection with the company
that renders such goods or services.
Procedure for Registration of Trademark:
The procedure for registering a trademark in India is as follows:
1. Trademark Search: Conduct a search to ensure that the
proposed trademark is not similar to any existing trademarks.
2. Filing of Application: File a trademark application with the
appropriate Trademark Registry.
3. Examination of Application: The Registrar examines the
application to ensure that it complies with the requirements of
the Trademarks Act.
4. Publication of Application: If the application is accepted, it is
published in the Trademark Journal.
5. Opposition Proceedings: If there is any objection to the
publication of the trademark, it can be opposed by any person
within a period of four months.
6. Registration: If there is no opposition to the trademark, the
trademark is registered and a certificate of registration is issued.
Infringement of Trademark:
Infringement of trademark occurs when a third party uses a
trademark that is identical or deceptively similar to a registered
trademark. Infringement can occur in various forms such as
counterfeiting, passing off, or unauthorized use of the trademark.
Refusal Grounds for Trademark:
The Trademarks Act provides several grounds for refusing the
registration of a trademark, including:
1. Lack of Distinctiveness: If the proposed trademark is not
capable of distinguishing the goods or services of the applicant
from those of others.
2. Descriptive Trademarks: If the proposed trademark is
descriptive of the goods or services for which it is proposed to be
used.
3. Similarity to Existing Trademarks: If the proposed trademark
is similar or identical to an existing trademark.
4. Prohibited Trademarks: If the proposed trademark contains
words or designs that are prohibited under the Emblems and
Names (Prevention of Improper Use) Act, 1950.

Conclusion:
A trademark is a unique symbol, word, or phrase that identifies and
distinguishes the source of goods or services of one party from those
of others. The types of trademarks include wordmarks, device marks,
service marks, and collective marks. The procedure for registering a
trademark in India involves conducting a trademark search, filing an
application, examination of the application, publication of the
application, opposition proceedings, and registration. Infringement of
trademark occurs when a third party uses a trademark that is identical
or deceptively similar to a registered trademark. The refusal grounds
for trademark include lack of distinctiveness, descriptive trademarks,
similarity to existing trademarks

3. Patent
Synopsis:
1.Introduction
2. Meaning
3. Need to register a Patent
4. Patentable & Non-patentable inventions in India
5. Patent registration in India
6. Conclusion

Introduction:
A patent is a form of intellectual property that gives the owner
exclusive rights to make, use, and sell an invention for a limited
period. Patents are granted for new and useful inventions, processes,
machines, or any other new and useful improvements thereof. In
India, patents are governed by the Patents Act, 1970.

Meaning of Patent:
A patent is a legal right granted by the government to the inventor of
a new and useful invention. The patent gives the inventor exclusive
rights to prevent others from making, using, or selling the invention
for a limited period of time.
Need for Registering a Patent:
Registering a patent provides the inventor with several benefits,
including:
1. Exclusive Rights: The inventor is granted exclusive rights to
make, use, and sell the invention.
2. Commercial Advantage: The inventor can use the patent as a
tool for commercial advantage in the market.
3. Protection against Infringement: The patent provides legal
protection against infringement of the invention by others.
4. Licensing Opportunities: The inventor can license the
invention to others for commercial purposes.
Procedure for Registering Patent:
The procedure for registering a patent in India involves the following
steps:
 1. Filing of Application: File a patent application with the
appropriate Patent Office.
2. Publication of Application: If the application is accepted, it is
published in the Patent Office Journal.
3. Examination of Application: The Patent Office examines the
application to ensure that it meets the requirements of the Patents
Act.
4. Grant of Patent: If the application meets the requirements, the
patent is granted and a certificate of grant is issued.
Patentable and Non-Patentable Inventions in India:
In India, patentable inventions are defined under Section 3 of the
Patents Act, 1970. The following inventions are considered
patentable in India:
1. New Inventions: Inventions that are new or novel and have not
been published or publicly disclosed in any way prior to the
filing of the patent application.
2. Inventive Step: Inventions that involve an inventive step or non-
obviousness, meaning they are not obvious to a person having
ordinary skill in the relevant field.
3. Industrial Applicability: Inventions that are capable of being
made or used in any kind of industry.
Non-patentable inventions in India include:
 1. Discoveries, scientific theories, mathematical methods, and
computer programs.
2. Aesthetic creations, literary, dramatic or artistic works, or any
other purely aesthetic creations.
3. Methods of agriculture, horticulture, or animal husbandry.
4. Diagnostic, therapeutic, and surgical methods for the treatment
of humans or animals.
Conclusion:
A patent is a legal right granted by the government to the inventor of
a new and useful invention. Registering a patent provides the
inventor with several benefits, including exclusive rights,
commercial advantage, protection against infringement, and
licensing opportunities. The procedure for registering a patent in
India involves filing an application, publication of the application,
examination of the application, and grant of the patent. Patentable
inventions in India include new inventions, inventive step, and
industrial applicability, while non-patentable inventions include
discoveries, aesthetic creations, methods of agriculture, and
diagnostic or therapeutic methods.

4. PCT and Paris Convention

Synopsis:
 1. Introduction
2. Benefits
3. Procedure for Filing Under the PCT
4. Paris Convention
5. Provisions and Benefits
6. Differences b/w PCT & Paris Convention
7. Conclusion
Introduction:
The Patent Cooperation Treaty (PCT) is an international treaty that
simplifies the patent application process for inventors who want to
protect their inventions in multiple countries. The PCT provides a
unified application process that allows inventors to file a single
application and obtain a preliminary examination and search report
before entering the national phase in individual countries. The PCT
is administered by the World Intellectual Property Organization
(WIPO).
Benefits of the PCT:
1. Simplifies the Patent Application Process: The PCT simplifies
the patent application process by allowing inventors to file a
single application in one language with one patent office, rather
than filing separate applications in each country where they want
to protect their invention.
2. Provides a Preliminary Examination: The PCT provides a
preliminary examination of the application and a search report,
 which helps inventors identify potential issues with their
application before entering the national phase in individual
countries.
3. Gives Inventors Time to Assess Market Demand: The PCT
provides inventors with time to assess market demand for their
invention before incurring the expense of filing separate patent
applications in multiple countries.

Procedure for Filing Under the PCT:

1. Filing of International Application: The inventor files an
international patent application with the appropriate national
patent office, which acts as a receiving office for the PCT.
2. International Search Report: Within a few months, the
International Searching Authority (ISA) conducts a search of the
prior art to determine if the invention is novel and non-obvious.
The ISA then issues an International Search Report (ISR) and a
written opinion on the patentability of the invention.
3. Publication: The international application is published by WIPO
after 18 months from the priority date.
4. National Phase: The inventor enters the national phase in
individual countries by filing national applications within 30
months of the priority date.
 5. Examination: The national patent office examines the
application and issues a patent if the application meets the
patentability requirements of that country.

Paris Convention:
The Paris Convention for the Protection of Industrial Property is an
international treaty that was established in 1883. The Paris
Convention is the oldest international agreement on intellectual
property rights and has been ratified by over 177 countries
worldwide. The Paris Convention provides a framework for
protecting industrial property, which includes patents, trademarks,
industrial designs, and trade secrets.
Provisions and Benefits of the Paris Convention:
1. Priority Right: The Paris Convention provides for priority right,
which means that if an inventor files a patent application in one
country, they have the right to file subsequent applications in
other countries within a specified period, usually 12 months,
while retaining the original filing date. This provision prevents
competitors from filing similar patents in other countries before
the original inventor.
2. National Treatment: The Paris Convention provides for
national treatment, which means that foreign nationals and
companies must be given the same level of protection for their
 intellectual property rights as domestic nationals and companies.
This provision ensures that inventors are not discriminated
against based on their nationality.
3. Protection Against Unfair Competition: The Paris Convention
provides protection against unfair competition, which includes
actions such as misleading advertising, false indication of the
origin of goods, and unfair use of trade secrets.
Differences between Paris Convention and PCT:
1. Scope: The Paris Convention covers a wide range of intellectual
property rights, including patents, trademarks, industrial designs,
and trade secrets, while the PCT only covers patents.
2. Filing: The Paris Convention provides for priority right, which
allows inventors to file subsequent applications in other
countries while retaining the original filing date, while the PCT
provides for a unified application process.
3. Examination: The Paris Convention does not provide for a
unified examination process, while the PCT provides for a
preliminary examination of the application and a search report.
Conclusion:
The Paris Convention for the Protection of Industrial Property is an
international treaty that provides a framework for protecting
industrial property, which includes patents, trademarks, industrial
designs, and trade secrets. Provisions and benefits of the Paris
Convention include priority right, national treatment, and protection
against unfair competition. The main differences between the Paris
Convention and the PCT include scope, filing, and examination.

7. WIPO
Synopsis:
1. Introduction
2. Mission
3. History
4. Function
5. Conclusion
Introduction:
The World Intellectual Property Organization (WIPO) is a
specialized agency of the United Nations that was established in
1967 to promote the protection of intellectual property rights (IPR)
worldwide. WIPO is headquartered in Geneva, Switzerland and has
193 member states.
Mission:
WIPO's mission is to promote the use and protection of intellectual
property worldwide by encouraging innovation and creativity and by
providing services to protect IPR. WIPO's goal is to create a
balanced and effective international IP system that promotes
innovation, creativity, and economic development.
History:
 WIPO's history can be traced back to 1883, when the Paris
Convention for the Protection of Industrial Property was
established.
 In 1893, the Berne Convention for the Protection of Literary
and Artistic Works was established.
 In 1967, these two conventions were merged to form the World
Intellectual Property Organization.

Functions:
WIPO's functions include:
1. Developing international IP standards and treaties, such as the
Paris Convention, the Berne Convention, and the Patent
Cooperation Treaty (PCT).
2. Providing global IP services, such as patent and trademark
applications, and dispute resolution.
3. Providing training and capacity-building programs to help
member states develop their IP systems.
4. Conducting research and analysis on IP-related issues and
providing information and data to policymakers.
5. Promoting public awareness of the importance of IP and the role
it plays in innovation, creativity, and economic development.
Conclusion:
WIPO is a specialized agency of the United Nations that was
established in 1967 to promote the protection of intellectual property
rights (IPR) worldwide. WIPO's mission is to promote the use and
protection of intellectual property worldwide by encouraging
innovation and creativity and by providing services to protect IPR.
WIPO's functions include developing international IP standards and
treaties, providing global IP services, providing training and
capacity-building programs, conducting research and analysis on IP-
related issues, and promoting public awareness of the importance of
IP.

7. TRIPS
Synopsis:
1. Introduction
2. Need and Justification
3. Outer Framework of TRIPS
4. Categories of IP covered by TRIPS agreements
5. Nature and Scope of Protection under TRIPS agreements
6. Conclusion

Introduction:
The Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS) is an international agreement administered by the
World Trade Organization (WTO) that sets minimum standards for
the protection and enforcement of intellectual property rights (IPR)
among its member countries. The TRIPS agreement was signed in
1994 and came into effect on January 1, 1995.

Need and Justification:

The TRIPS agreement was established to address the growing
concern over inadequate protection and enforcement of IPR
worldwide. The agreement aims to provide a framework for
promoting and protecting innovation, creativity, and economic
growth by setting minimum standards for IP protection and
enforcement that all WTO member countries must comply with.
Outer Framework:
The TRIPS agreement is part of the legal framework of the WTO
and applies to all WTO member countries. The agreement sets out
the minimum standards for IP protection and enforcement that
member countries must comply with.

Categories of IP covered by TRIPS Agreement:

The TRIPS agreement covers several categories of IP, including:
1. Patents
2. Trademarks
 3. Copyrights
4. Industrial designs
5. Geographical indications
6. Trade secrets

Nature and Scope of Protection under TRIPS Agreement:

 The TRIPS agreement provides for the minimum standards of
protection and enforcement of IP rights that all WTO member
countries must comply with.
 The scope of protection provided under the TRIPS agreement
includes the exclusive right to use and control the use of the
protected IP, as well as the right to prevent others from using or
infringing on the IP.
 The TRIPS agreement also provides for the enforcement of IP
rights through civil and criminal remedies, such as injunctions,
damages, and fines.

Conclusion:
The TRIPS agreement is an international agreement administered by
the WTO that sets minimum standards for the protection and
enforcement of intellectual property rights among its member
countries. The TRIPS agreement covers several categories of IP,
including patents, trademarks, copyrights, industrial designs,
geographical indications, and trade secrets. The scope of protection
provided under the TRIPS agreement includes the exclusive right to
use and control the use of the protected IP, as well as the right to
prevent others from using or infringing on the IP.

8. Copyright
Synopsis:
1. Introduction
2. Nature and Scope
3. Objectives
4. Essentials
5. Types of Copyright Infringements
6. Subject-Matter
7. Conclusion

Introduction:
Copyright is a form of intellectual property protection that applies to
original works of authorship, including literary, artistic, musical, and
dramatic works, as well as software and other digital content.
Copyright laws grant exclusive rights to the creator of the original
work, allowing them to control how their work is used and
distributed.
Nature and Scope:
 The nature of copyright protection is to provide creators with an
exclusive right to control the use of their original works.
 Monopoly Right which restrain others from exercising that right
which has been conferred on the owner of the copyright.
 Copyright consists of bundle of rights in the same work which
can be licensed as a whole or separately, this type of right is
termed as Multiple Rights
The scope of copyright protection varies depending on the
jurisdiction and the type of work being protected.
Generally, copyright protection grants the creator the exclusive right
to reproduce, distribute, perform, display, and prepare derivative
works based on their original work.

Objectives:
The objective of copyright protection is to encourage the creation
and dissemination of original works of authorship by providing
creators with an economic incentive to create and distribute their
works.

In Sulamangalam R. Jayalakshmi v. Meta Musicals, the Madras

High Court stated that "copyright law is to protect the fruits of a
man's work, labour, skill or test from annexation by other people."
Essentials:
To be eligible for copyright protection, a work must meet three
essential requirements:
1. Originality: The work must be original and not copied from
another source.
2. Fixation: The work must be fixed in a tangible medium of
expression, such as a book, recording, or computer file.
3. Creativity: The work must be the product of creative expression
and not simply a factual or functional work.

Types of copyright infringement in India:

• Direct infringement: This occurs when someone reproduces,
distributes, performs, or displays a copyrighted work without the
owner's permission.
• Indirect infringement: This occurs when someone contributes
to or facilitates direct infringement by another person. Examples
include supplying infringing copies of a work, providing tools or
services to infringe, or inducing someone to infringe.
• Secondary infringement: This refers to activities that occur
after the initial act of infringement, such as importing or selling
infringing copies of a work.
 • Online infringement: This includes activities that take place
over the internet, such as sharing copyrighted files without
permission, streaming copyrighted content without authorization,
or selling infringing copies through e-commerce platforms.
• Plagiarism: This occurs when someone uses another person's
work without giving proper credit, such as copying text or
images from a website or academic paper.
• Piracy: This refers to the unauthorized copying, distribution, or
sale of copyrighted works, such as movies, music, or software.

Subject Matter:
Copyright protection applies to a broad range of works, including:
1. Literary works, such as books, articles, and poems
2. Artistic works, such as paintings, sculptures, and photographs
3. Musical works, including both compositions and recordings
4. Dramatic works, such as plays and screenplays
5. Software and other digital content
Conclusion
Copyright is a form of intellectual property protection that applies to
original works of authorship. Copyright laws grant exclusive rights
to the creator of the original work, allowing them to control how
their work is used and distributed. Copyright protection encourages
the creation and dissemination of original works by providing
creators with an economic incentive to create and distribute their
works. To be eligible for copyright protection, a work must meet the
requirements of originality, fixation, and creativity. Copyright
protection applies to a broad range of works, including literary,
artistic, musical, and dramatic works, as well as software and other
digital content.

8. Industrial Designs Act

Synopsis:
1. Introduction
2. Features of IDA
3. Controller of Design
4. Essential requirement for Registration
5. Conclusion

Introduction:
The Designs Act of India was enacted in 2000 and it provides for the
registration and protection of industrial designs in India. The Act is
administered by the Office of the Controller General of Patents,
Designs and Trade Marks.
According to section 2 (d) of the Designs Act of India, 'Design'
means only the features of shape, configuration, pattern, ornament or
composition of lines or colors applied to any article whether in two
dimensional or three dimensional or in both forms, by any industrial
process or means, whether manual, mechanical or chemical, separate
or combined, which in the finished article appeal to and are judged
solely by the eye; but does not include any mode or principle of
construction or anything which is in substance a mere mechanical
device. and does not include any trademark or property mark or any
artistic work.

Features of IDA:

 The Act provides for the registration of designs that are new or
original.
 The design should be applied to an article and should appeal to
the eye.
 The design should not have been disclosed to the public
anywhere in India or in any other country before the date of
application for registration.
 The term of registration is ten years from the date of
registration.
  The Act provides for both civil and criminal remedies for
infringement of registered designs.

Controller of Designs:
The Controller of Designs is responsible for administering the
Industrial Designs Act in India. The Controller is appointed by the
Central Government and has powers to grant or refuse registration of
designs. The Controller also has powers to cancel or amend a
registration.
The procedure for registration of designs involves filing an
application with the Controller along with a representation of the
design. The application should include a statement of novelty and
originality of the design.
Once an application is filed, it is examined by the Controller to
ensure that it meets all requirements under the Act. If all
requirements are met, the design is registered and a certificate of
registration is issued.
The Office of the Controller General of Patents, Designs and Trade
Marks is responsible for administering the Act and has offices in
Kolkata, Delhi, Mumbai and Chennai.

Essential requirement for Registration:

Some essential requirements for registration include:
  The design should be new or original.
 The design should be applied to an article and should appeal to
the eye.
 The design should not have been disclosed to the public
anywhere in India or in any other country before the date of
application for registration.

Conclusion:
Overall, the Industrial Designs Act and its Controller of Designs play
an important role in protecting and promoting innovation in India by
providing legal protection for industrial designs.

9. CASE STUDIES

i. NOVARTIS AG v. UNION OF INDIA

Bench - Aftab Alam, Ranjana Prakash Desai
Citation – (2013) 6 SCC 1
Date – 01 April, 2013
Facts
In 1997, Novartis, a Swiss based pharmaceutical giant filed an
application to grant patent to an anticancer drug Glivec which is used
to treat Chronic Myeloid Leukemia (CML) and Gastrointestinal
Stromal Tumours (GIST) on the basis that it invented the beta
crystalline salt form (imatinib mesylate) of the free base, imatinib...
It is a critical drug which is patented in about 35 countries of the
world. However, during those days, India did not grant patent to
pharmaceutical products and agrochemical products. It was in the
year 2005 in India; the drug products became the subject of patent in
compliance with the TRIPS agreement. After the 2005 amendment,
which included patents for products along with processes, the
application for patenting Glivec was taken into consideration.
The application by the appellant, when first filed, was rejected by the
Madras Patent Office as well as the IPAB, on the grounds that the
drug in question is a known substance and does not induce any
‘enhanced efficacy’ than the previous drug ‘Zimmermann’ patented
in the US. Thus, it cannot be considered to include an inventive step
under Section 3(d) of the Act. The IPAB’s reasoning for the rejection
involved the prevention of ‘evergreening’ of an already patented
product which would eventually cause an obstacle in the provision of
affordable medicines.
Thus, a SLP was filed by the appellants in the Supreme Court of
India under Article 136.

Analysis/Judgement
The Hon’ble Court in its judgement, clearly stated that since India is
a developing country, the availability of medicines at affordable rates
is a necessity.
In April 2013, the two judge bench of Supreme Court of India
rejected the appeal filed by Novartis and upheld that the beta
crystalline form of Imatinib Mesylate is a new form of the known
substance i.e., Imatinib Mesylate, wherein the efficacy was well
known. Supreme Court made it crystal clear that in the case of
medicine "Efficacy" in section-3(d) only means "Therapeutic
Efficacy" and states that all properties of drug are not relevant, the
properties which directly relate to efficacy in case of medicine is its
therapeutic efficacy.
Section-3(d) of Patent Act, 1970 prevents by obtaining secondary
patent by introducing minor changes in existing technology from
these big pharmaceutical companies. Novartis failed to prove that the
therapeutic efficacy of "Beta Crystalline form of Imatinib Mesylate"
is more as compared to the therapeutic efficacy of "Imatinib
Mesylate". So that the application of Novartis for patent rejected by
Supreme Court.
ii. NATCO PHARMA LIMITED v. BAYER HEALTHCARE
LLC
Bench – S Muralidhar, Talwant Singh
Citation – (COMM) 158 of 2019
Date – 11 July, 2019

Facts
Natco Pharma Ltd. is an Indian generic pharmaceutical company.
Natco Pharma proposed Bayer for a voluntary license of the drug,
but Bayer Corporation denied for it. Natco Pharma later approached
the controller of patents court for a compulsory license. The
applicant i.e. Natco Pharm claimed for compulsory license in
accordance to section 84 (1) of the Patent (Amendment) Act, 2005. It
argued upon this section and stated that the patentee i.e. Bayer
Corporation did not comply to the provisions under section 84 (1).

 1990: Bayer Corp. invented a drug named Sofraneib Tosylate.

 1999: Bayer had originally applied for the patent in the United
States.
 2000: Bayer filed a PCT International Application. (Patent
Cooperation Treaty).
 2005: Bayer launched the drug, with the brand name Nexavar.
  2008 (9th March): For Bayer, the patent was granted in India
for the drug.
 2010: M/S Cipla, another drug manufacturer, starts selling a
generic version of Nexavar.
 2011 (July): Natco applied for a compulsory license to the
Controller of Patents to manufacture and sell a generic version
of Nexavar under Section 84(1) of the Indian Patent Act, 1970
(amended in 2005).
 2012 (9th March): First compulsory license granted in India
permitting Natco to produce and sell a generic version of
Nexavar.
 2012: Bayer appealed against the Controller’s decision to the
Intellectual Property Appellate Board (IPAB) in the Bombay
High court with the contention that the order weakens the
international patent system and endangers research.

Analysis/Judgement
While dealing with the issue of the drug being reasonably available
to meet the requirement alone with it being priced at a reasonable
price the IPAB was in the view of public interest and that the Bayer
Corporation failed to fulfil these conditions. While deciding over the
drug being worked in the territory of India, the board took an
extended meaning in consideration but despite that Bayer failed to
prove the availability or adequate importation of the drug. Hence,
compulsory license was granted to Natco Pharma with certain
conditions in relation to section 90 of the Patents Act. The license
was granted on March 9, 2012.
Natco Pharma v Bayer Corporation being the first case of
compulsory license in India opened doors for many debates.

iii. YAHOO INC v. AKASH ARORA

Bench – M Sharma
Citation – 1999 IIAD Delhi 229
Date – 19 February, 1999

Facts
The plaintiff Yahoo INC. was the owner of the trademark 'Yahoo'
and the domain name 'yahoo.com', and both of these were famous
marks that had a distinct identity and reputation in the eyes of the
global public. Additionally, Yahoo was also a registered company
since 1995 and possessed a registered trademark in 69 countries
except for India.
The defendant, Akash Arora, started a company with the domain
name 'Yahoo India', with a similar purpose of providing internet
services as Yahoo INC. As a result, Yahoo INC. applied for an
interim injunction to prevent the defendant from using the domain
name 'yahooindia.com' or any other name bearing its likeness. It sued
Akash Arora for using a deceptively similar trademark as itself and
for passing-off of his services as those under Yahoo INC.

Analysis/Judgement
The Plaintiff claimed that the Defendant took up the Yahoo domain
name to offer services similar to that of Yahoo INC. to cash in the
goodwill generated by the same name. This was based on the
argument that there was a high possibility of confusion and
deception thus leading consumers to believe that both 'Yahoo' and
Yahoo India' belonged to the Plaintiff. Therefore, Yahoo INC.
argued that Akash Arora was liable for infringement of the
trademark “Yahoo”.
The court decided that Akash Arora was liable for infringement of
the “Yahoo” trademark and restrained him under the premise that he
was using a deceptively similar domain name while offering services
similar to Yahoo INC., which constituted cybersquatting. This
decision was based upon the rationale that the goodwill of a
business's reputation lies majorly in its name and its trademark,
especially so in Yahoo INC.'s case. Thus, it was held that the word
'Yahoo' had acquired its reputation and that the defendant's use of the
domain name 'yahooindia.com' ought to be permanently
discontinued. The remedy of passing off was granted to Yahoo Inc.
iv. COCA-COLA COMPANY v. BISLERI INTERNATIONAL
PVT. LTD.
Bench – M Sharma
Citation – 1999 IIAD Delhi 229
Date – 19 February, 1999

Facts
The plaintiff is the largest brand of soft drinks operating in 200
countries and the defendant in this case is a well-known Indian brand
which is highly regarded for its bottled water. On September 18,
1993 the defendant sold the trade marks, formulation rights know
how, intellectual property rights and goodwill etc. of their products
THUMS UP, LIMCA, GOLD SPOT, CITRA and MAAZA inter alia
to the plaintiff. The present case concerns with the product MAAZA
only.
On November 12, 1993, the plaintiff and defendant entered into a
deed of assignment by way of which the following agreements as
regards MAAZA were concluded. Finally, in October 1994 the
Licensing Agreement for MAAZA between the plaintiff and Golden
Agro Products Pvt. Ltd. was entered into and executed. It is the
plaintiff's case that by this agreement all the trademarks, formulation
rights etc. were irrevocably conveyed to the plaintiff forever. In
March 2008, the defendant became aware of the fact that the plaintiff
had filed for registration of MAAZA trademark in Turkey. On
September 7, 2008 the defendant sent the plaintiff a legal notice
repudiating the Licensing Agreement thereby ceasing the plaintiff
from manufacturing MAAZA and using its trademarks etc. directly
or indirectly, by itself or through its affiliates. As per the plaintiff,
the notice claimed that the plaintiff had breached the said agreement
by attempting to register MAAZA in Turkey as the
agreements/assignments between the parties allowed the plaintiff to
use MAAZA in India alone. The notice also stated the defendant’s
intention to start using the trademark MAAZA in India. The plaintiff
subsequently filed a law suit.

Analysis/Judgement
The Delhi high court restricted the sale of Mazza product by Bisleri
in India and an interim order of injunction was passed against the
defendant company Bisleri preventing them to use the trademark
each purchasable in India and export merchandise. It absolutely was
worn out in order to stop the plaintiff from suffering irreparable loss
and injury and the appeal filed by the Bisleri company was
invalidated by the court.
It was also held that the manufacture of goods was meant to be for
the sale in other countries and Bisleri still had the right to sell
products in other countries, the court should have passed an order of
injunction only for its sale in India and not for the exports.