Ip Full Note-2

COOPERATIVE SCHOOL OF LAW, THODUPUZHA
IPR MANAGEMENT
STUDY MATERIAL
SEMESTER 10
This document is intended solely for academic purposes. No copyright is claimed for any third-party copyrighted material included in this document
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UNIT – I
Concept of Intellectual property - It’s meaning and characteristics - Different types of Intellectual
property - Importance and need for legal protection - International instruments and institutions for
protection of IP-an overview.
The Law recognises and protects right to property. The term property is being used in law
to denote proprietary right in rem. Proprietary rights are those which constitute a man's property
or wealth. The aggregate of a man's proprietary right constitutes his estate or his assets or his
property. Any right which has an economic value is considered as his property.
Property of a person may broadly be classified into two heads, namely, Corporeal Property and
Incorporeal Property, Corporeal Property refers to the right of ownership of any material thing.
Corporeal Property may again be classified into two heads, namely, movable property and
immovable property. Incorporeal property refers to right of ownership in an immaterial thing. It
includes proprietary right over immaterial things and also right in re aliena over all things
Intellectual property (IP) refers to the creations of the human mind like inventions, literary and
artistic works, and symbols, names, images and designs used in commerce. Intellectual property
is intangible and incorporeal property. Law recognises and protects right to intellectual property
as in the case of right to corporeal property. Here, what is being recognised as property is the
intellect of a person.
A person who has invented a new and useful article by applying his mental ability or
intellectual capacity shall have an interest that the product invented by him should not be
manufactured and sold by any other person other than himself. Another person who has written a
novel, by spending a long period of time and his creativity, shall have an interest in printing and
publishing the copies of that novel by himself and by no other. Yet another person who has
composed a song shall have an interest in reproducing the work in any material form and to issue
copies of the work to the public by himself and by no other. The law has thus recognised several
rights resulting from intellectual activity and given exclusive rights to the inventor, writer, com
poser and designer for its exploitation by way of sale, assignment, licence, etc.
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Intellectual property is divided into two categories: Industrial property, which includes
inventions patents, trademarks, industrial designs, and geographic indications of source; and
Copyright, which includes literary and artistic works such as novels, poems and plays, films,
musical works, artistic works such as drawings, paintings, photographs and sculptures, and
architectural designs. Rights related to copyright include those of performing artists in their
performances, producers of phonograms in their recordings, and those of broadcasters in their radio
and television programs. Intellectual property rights protect the interests of creators by giving them
property rights over their creations.
The most noticeable difference between intellectual property and other forms of property,
however, is that intellectual property is intangible, that is, it cannot be defined or identified by its
own physical parameters. It must be expressed in some discernible way to be protectable.
THE CONCEPT OF INTELLECTUAL PROPERTY
The concept of intellectual property is not new as Renaissance northern Italy is thought to
be the cradle of the Intellectual Property system. A Venetian Law of 1474 made the first systematic
attempt to protect inventions by a form of patent, which granted an exclusive right to an individual
for the first time. In the same century, the invention of movable type and the printing press by
Johannes Gutenberg around 1450, contributed to the origin of the first copyright system in the
world.
Towards the end of 19th century, new inventive ways of manufacture helped trigger large-
scale industrialization accompanied by rapid growth of cities, expansion of railway networks, the
investment of capital and a growing transoceanic trade. New ideals of industrialism, the emergence
of stronger centralized governments, and nationalism led many countries to establish their modern
Intellectual Property laws. At this point of time, the International Intellectual Property system also
started to take shape with the setting up of the Paris Convention for the Protection of Industrial
Property in 1883 and the Berne Convention for the Protection of Literary and Artistic Works in
1886. The premise underlying Intellectual Property throughout its history has been that the
recognition and rewards associated with ownership of inventions and creative works stimulate
further inventive and creative activity that, in turn, stimulates economic growth.
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Over a period of time and particularly in contemporary corporate paradigm, ideas and
knowledge have become increasingly important parts of trade. Most of the value of high
technology products and new medicines lies in the amount of invention, innovation, research,
design and testing involved. Films, music recordings, books, computer software and on-line
services are bought and sold because of the information and creativity they contain, not usually
because of the plastic, metal or paper used to make them. Many products that used to be traded as
low-technology goods or commodities now contain a higher proportion of invention and design in
their value, for example, brand-named clothing or new varieties of plants. Therefore, creators are
given the right to prevent others from using their inventions, designs or other creations. These
rights are known as intellectual property rights.
The Convention establishing the World Intellectual Property Organization (1967) gives the
following list of the subject matter protected by intellectual property rights:
• literary, artistic and scientific works;

• performances of performing artists, phonograms, and broadcasts;
• inventions in all fields of human endeavour;
• scientific discoveries;
• industrial designs;
• trademarks, service marks, and commercial names and designations;
• protection against unfair competition; and
• “all other rights resulting from intellectual activity in the industrial, scientific,
literary or artistic fields.”
With the establishment of the world trade Organization (WTO), the importance and role of
the intellectual property protection has been crystallized in the Trade-Related Intellectual Property
Systems (TRIPS) Agreement. It was negotiated at the end of the Uruguay Round of the General
Agreement on Tariffs and Trade (GATT) treaty in 1994.
The TRIPS Agreement encompasses, in principle, all forms of intellectual property and
aims at harmonizing and strengthening standards of protection and providing for effective
enforcement at both national and international levels. It addresses applicability of general GATT
principles as well as the provisions in international agreements on IP (Part I). It establishes
standards for availability, scope, use (Part II), enforcement (Part III), acquisition and maintenance
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(Part IV) of Intellectual Property Rights. Furthermore, it addresses related dispute prevention and
settlement mechanisms (Part V). Formal provisions are addressed in Part VI and VII of the
Agreement, which cover transitional, and institutional arrangements, respectively.
The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most
comprehensive multilateral agreement on intellectual property. The areas of intellectual property
that it covers are:
(i) Copyright and related rights (i.e. the rights of performers, producers of sound
recordings and broadcasting organisations);
(ii) Trade marks including service marks;
(iii) Geographical indications including appellations of origin;
(iv) Industrial designs;
(v) Patents including protection of new varieties of plants;
(vi) The lay-out designs (topographies) of integrated circuits;
(vii) The undisclosed information including trade secrets and test data.
NATURE OF INTELLECTUAL PROPERTY
• Intangible Rights over Tangible Property: The main Property that distinguishes IP from
other forms of Property is its intangibility. It allows creators or owners to benefit from their
works when they are used commercially.
• Right to sue: In the language of the law, IP is an asset that can be owned and dealt with. Most
forms of IP are contested in rights of action that are enforced only by legal action and by those
who have rights. IP is a property right and can, therefore, be inherited, bought, gifted, sold,
licensed, entrusted or pledged. The holder of an IPR owner has a type of Property that he can
use the way he likes subject to certain conditions and takes legal action against the person who
without his consent used his invention and can receive compensation against real Property.
• Rights and Duties: IP gives rise not only to property rights but also duties. The owner of the
IP has the right to perform certain functions in relation to his work/product. He has the
exclusive right to produce the work, make copies of the work, market work, etc. There is also
a negative right to prevent third parties from exercising their statutory rights.
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• Coexistence of different rights: Different types of IPRs can co-exist in relation to a particular
function. For example, an invention may be patented, and the invention photograph may be
copyrighted. A design can be protected under the Design Act, and the design can also be
incorporated into a trademark.
• Exhaustion of rights: Intellectual property rights are generally subject to the doctrine of
exhaustion. Exhaustion basically means that after the first sale by the right holder or by its
exhaustion authority, his right ceases and he is not entitled to stop further movement of the
goods. Thus, once an IP rights holder has sold a physical product to which IPRs are attached,
it cannot prevent subsequent resale of that product. The right terminates with the first consent.
This principle is based on the concept of free movement of goods which is in force by consent
or right of the rights holder. The exclusive right to sell goods cannot be exercised twice in
relation to the same goods. The right to restrict further movements has expired as the right
holder has already earned his share by the act of placing goods for the first sale in the market.
• Dynamism: IPR is in the process of continuous development. As technology is rapidly
evolving in all areas of human activities, the field of IP is also growing. As per the requirement
of scientific and technological progress, new items are being added to the scope of IPR, and
the scope of its preservation is being expanded. Bio Patents, Software Copyrights, Plant
Diversity Protection, are few names which reflect contemporary developments in the field of
IPR.
OBJECTIVES OF IP
• To protect the rights of the product, its innovators, inventors, research sponsors and the public.
• To eliminate the infringement, improper exploitation and abuse of the project's intellectual
assets belonging to the product or the other persons.
• To optimize the environment and incentives for research and for the creation of new
knowledge.
• To promote linkages with industry and stimulate research through developing and utilizing
novel technologies and creative works for commercialization and plough back resources to the
interested parties.
• To promote creativity and innovation.
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• To ensure fair and equitable distribution of all benefits accruing from all innovations and
inventions.
DIFFERENT KINDS OF INTELLECTUAL PROPERTY
Patent: A patent is an exclusive right granted for an invention. Generally speaking, a patent
provides the patent owner with the right to decide how - or whether - the invention can be used by
others. In exchange for this right, the patent owner makes technical information about the invention
publicly available in the published patent document.
Copyright: Copyright 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.
Trademark: A trademark is a sign capable of distinguishing the goods or services of one

enterprise from those of other enterprises. Trademarks date back to ancient times when artisans
used to put their signature or "mark" on their products.
Trade secrets: Trade secrets are IP rights on confidential information which may be sold or
licensed. The unauthorized acquisition, use or disclosure of such secret information in a manner
contrary to honest commercial practices by others is regarded as an unfair practice and a violation
of the trade secret protection.
Industrial design: An industrial design constitutes the ornamental or aesthetic aspect of an article.
A design may consist of three-dimensional features, such as the shape or surface of an article, or
of two-dimensional features, such as patterns, lines or color.
Geographical indications: Geographical indications and appellations of origin are signs used on
goods that have a specific geographical origin and possess qualities, a reputation or characteristics
that are essentially attributable to that place of origin. Most commonly, a geographical indication
includes the name of the place of origin of the goods.
NEED FOR PROTECTION OF INTELLECTUAL PROPERTY
1. IP creates a balance of interest between public and private.
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2. Only through IP Protection, more and more inventions will come.
3. National growth depends upon IP belonging to a nation.
4. More and more competitive products come into markets.
5. Ensures quality of the products.
6. More and more research and development of a country.
THEORIES AS TO WHY INTELLECTUAL PROPERTY SHOULD BE PROTECTED
1. The Natural Rights Theory

The main justification behind this theory is that everyone has a right to consider his/ her ideas
as natural property right by the reason that the creation originates from the effort, originality and
inventiveness of the creator. The backbone of this theory is based on famous philosopher John
Locke’s idea that an author has a natural right over his creation applying his intellectual labour.
2. The Utilitarian Theory / Incentive Theory

The primary essence of this theory is that the industrial progress and cultural goods can create
a better and important economic impact on the society. Consequently, to fill the need of promoting
the inventions and creations, there should be nominal certification that the outcome will be superior
as compared to the expenses incurred for his work. The incentive theory validates the duty of
society to respect the innovators and their right to ownership because it brings profit for the whole
society.
3. The Social Planning Theory

In this theory intellectual property rights are considered particularly as a part of general
property laws and it must be shaped cultivate the attainment of a fair and attractive culture.
4. The Ethic & Reward Theory

This theory rationalizes the exclusive rights of intellectual property from moralistic and ethical
aspect. The concept of ethic requires an equitable and proportional contribution from the side of
creator or innovator who has invented something for the social utility. Here the IPR are viewed as
“an expression of acknowledgement and indebtedness to an author for doing more than society
expects or feels that they are obliged to do”.
5. The Personhood Theory
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The theory claims that intellectual rights permit and protect the development of the personality,
extending to material things. As per this theory, the personality of everyone frames itself up in the
environment of work, innovation, ideas and creation. The augmentation of the personality is deep
seated to our property rights.
6. Moral Desert Theory

This theory compensates a worker’s performance for his “effort, ability, persistence,
industriousness, luck, time spent, the difficulty, danger of the work, leadership” etc.
7. Economic Theory
Economic theory of Intellectual property rights is directly related to its value in market economy.
For intellectual property, an incentive must be created to overcome the losses and market failure
because every time the innovators loss a huge amount of money due to high initial creation costs
and marginal distribution costs of intellectual products.
INTERNATIONAL INSTRUMENTS RELATED TO INTELLECTUAL

PROPERTY RIGHTS
Intellectual property has a dual nature, i.e. it has both national and international dimensions.
For example, patents are governed by national laws and related country regulations, while
international conventions on patents protect minimum rights and provide some measures for
enforcement of rights by contracted states. Strong protection for intellectual property rights (IPR)
worldwide is really important for the future economic growth and development of all countries.
Because they include common rules and regulations, international IPR treaties, in turn, are
essential to achieving strong intellectual property protection that promotes global economic
expansion and the growth of new technologies. Some of the important international treaties related
to intellectual property rights, are as follows:
Paris Convention for the Protection of Industrial Property
Adopted on March 20, 1883 at Paris and entered into force on July 7, 1884. It provides
basic guidelines for the protection of industrial property (patents, utility models, industrial designs,
trademarks, service marks, trade names, indications of source or appellations of origin, and the
repression of unfair competition). It has substantive provisions for
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1. National treatment - ensures that foreign applicants or owners of intellectual property
rights are granted the same legal protection and privileges as those given to nationals
of the member countries.
2. Right of priority -The right of priority, as established under the Paris Convention,
allows an applicant who has filed a patent, trademark, or industrial design application
in one member country to subsequently file an application for the same invention or
design in another member country while retaining the original filing date. This means
that the subsequent application will be treated as if it had been filed on the same date
as the original application. This provision aims to help applicants secure their
intellectual property rights internationally without losing the benefits of the earlier
filing date.
3. Uniform rules.
Under the convention, in the anti-discrimination principle, a member country is empowered

to grant nationals of other member countries the equal protection and advantages as it grants to its
own nationals. This anti-discrimination policy of the convention is also a fundamental principle of
many other intellectual property agreements and treaties. This treaty came into force in India from
December 7, 1998.
Budapest Treaty on the International Recognition of the Deposit of Micro -

organisms for the Purposes of Patent Procedure
Adopted on April 28, 1977 at Budapest and entered into force on August 19, 1980. It provides
guidelines for the deposition of micro-organisms with "international depositary authority" for the
purpose of patent procedures. The main purpose of the Budapest Treaty is to ensure that patent
applicants who have invented or discovered a microorganism and wish to claim it in a patent
application can fulfill the disclosure requirements without disclosing the actual microorganism
itself in the patent application. Instead, they can deposit the microorganism with an international
depository authority, which acts as a neutral third party, maintaining the microorganism in a viable
and accessible form.
Once a microorganism has been deposited with an international depository authority under
the Budapest Treaty, the deposit is recognized by all member countries of the treaty as fulfilling
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the requirements for patent applications. This treaty came into force in India from December 17,
2001.
Protocol Relating to the Madrid Agreement Concerning the International

Registration of Marks
Adopted on June 27, 1989 at Madrid and entered into force on December 1, 1995. The main
purpose of the Madrid Protocol is to simplify the process of obtaining and managing trademark
protection in multiple countries through a single application. It allows trademark owners to seek
protection for their marks in multiple countries that are party to the Protocol by submitting a single
application in their home country's trademark office, known as the Office of Origin.
In the international application, the applicant designates the countries where they seek
trademark protection. These countries must be members of the Madrid Protocol. Each designated
country will independently examine the trademark application according to its national laws and
regulations. If the application meets the country's requirements, the mark will be registered in that
country. The Madrid Protocol can be cost-effective for trademark owners seeking protection in
multiple countries since it reduces the need for separate applications and fees.
Madrid Protocol does not create a unified "international trademark" but rather simplifies the
process of extending trademark protection to multiple countries through a streamlined application
and management system.
Berne Convention for the Protection of Literary and Artistic Works
Adopted on September 9, 1886 at Berne and entered into force on December 4, 1887. This
Convention on Copyrights rests on three basic principles
1. National Treatment: Works in one of the contracting states should be given equal
protection to each of the other contracting or non-contracting states
2. Automatic Protection: Protection should not be conditional upon compliance with any
formalities
3. Independence of Protection: Protection must be independent of the existence of
protection in the origin country of the work
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It also contains a series of provisions determining the minimum protection to be granted.
It came into force in India on April 1, 1928.
Convention Establishing the World Intellectual Property Organization (WIPO)
Adopted on July 14, 1967 at Stockholm and entered into force on April 26, 1970. WIPO
was established under this Convention with two main objectives –
1. to promote the protection of intellectual property worldwide

2. to ensure administrative cooperation among the intellectual property Unions
established by the treaties that WIPO administers.
In 1974, WIPO became a specialized agency of the United Nations and in 1996, WIPO
expanded its role into globalized trade by entering into a cooperation agreement with the World
Trade Organization. WIPO administers 25 treaties (three of those jointly with other international
organizations) and carries out a rich and varied program of work, through its member States and
the secretariat, that seeks to:
• To integrate national laws and procedures related to intellectual property.

• To provide an international registration service for the industrial property.
• To exchange information about intellectual property.
• To provide legal and technical assistance to developing countries and others.
• To assist during the settlement of disputes related to intellectual properties among
individuals.
• To keep a check on the use of information technology as an instrument for access
and exploit valuable information about intellectual property.
Agreement establishing the World Trade Organization (WTO)
Adopted on April 15, 1994 at Marrakesh and entered into force on January 1, 1995. WTO
was established to provide the common institutional framework for the conduct of trade relations
among its Members in matters related to the agreements and associated legal instruments. India
became a member to this agreement on January 1, 1995.
The main objectives of the WTO, as outlined in its Agreement, include:
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• Facilitating Trade: The WTO seeks to facilitate the smooth flow of trade between member
countries by reducing trade barriers such as tariffs and quotas and promoting the elimination
of discriminatory trade practices.
• Providing a Forum for Trade Negotiations: The WTO provides a platform for member
countries to negotiate and reach agreements on trade-related issues, including the reduction
of trade barriers and the formulation of trade rules.
• Ensuring Fair Trade Practices: The WTO aims to establish and enforce rules to prevent unfair
trade practices, such as dumping (selling products at an artificially low price) and subsidies
that distort trade.
• Assisting Developing Countries: The WTO recognizes the special needs of developing
countries and aims to support their integration into the global trading system by providing
technical assistance and capacity-building programs.
World Trade Organization (WTO) agreement on Trade -Related Aspects of

Intellectual Property Rights (TRIPS Agreement)
Adopted on April 15, 1994 at Marrakesh and entered into force on January 1, 1995. The
TRIPS agreement covers various types of intellectual property and provides guidelines for
minimum standards for protection, procedures and remedies for enforcement of IPR rights and for
issues related to dispute settlement. India became a member on January 1, 1995.
TRIPS proved to be one of the most important agreements to promote intellectual property
at the international level. TRIPS mainly introduced the global minimum standard for the protection
and enforcing of all forms of intellectual property but it failed to specify the global minimum
standard for the patent. The main object of the trade related aspect of intellectual property is to
promote effective and adequate protection of intellectual property rights and ensuring that
measures and procedures to enforce intellectual property rights do not themselves become barriers
to legitimate trade.
There are three main feature of the TRIPS agreement which are:
1. Standard: The main element of trade related aspect of intellectual property is to protect
the subject matter.
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2. Enforcement: The second element is about domestic procedure and remedies provisional
measure special related to border measure.
3. 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.
Patent Cooperation Treaty (PCT)
• Adopted on June 19, 1970 at Washington D.C. and entered into force on January 24, 1978.
The Patent Cooperation Treaty (PCT) is an international treaty established to simplify and
streamline the process of filing and obtaining patents in multiple countries. The main objective
of the PCT is to provide a unified and cost-effective system for filing a single international
patent application, which can later be pursued in various member countries. It allows inventors
and applicants to seek patent protection simultaneously in multiple jurisdictions without the
need to file separate patent applications in each country, which can be time-consuming and
costly.
• International Filing: Under the PCT, an applicant can file a single international patent
application, often referred to as a PCT application, with the WIPO in one of the three official
languages: English, French, or Spanish. The application can then be translated into other
languages during the international phase.
• International Search: After filing the PCT application, a designated International Searching
Authority (ISA) conducts a prior art search to determine if the claimed invention is novel and
non-obvious. The ISA also issues a written opinion on the patentability of the invention.
• International Publication: The PCT application is published by the WIPO after 18 months from
the priority date (the filing date of the first patent application for the invention).
• International Preliminary Examination: If desired, an applicant can request an International
Preliminary Examination (IPE) conducted by a competent International Preliminary
Examining Authority (IPEA). The IPEA examines the PCT application more comprehensively
and issues an international preliminary examination report.
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• National Phase: Following the international phase, the PCT application enters the national
phase, where the applicant can proceed with seeking patent protection in individual member
countries of their choice.
The PCT does not grant international patents but streamlines the process and provides a
pathway for applicants to seek patent protection globally. Each country or regional patent office
where protection is sought will still evaluate the patent application independently according to its
own patent laws and requirements.
The Universal Copyright Convention (UCC)
The Universal Copyright Convention (UCC), was first created in 1952 in Geneva, as an
alternative to the Berne Convention. The UCC international protection was available to authors
even in countries that would not become parties to the Berne Convention. The Berne convention
countries also became members of the UCC to ensure that the work of citizens in Berne Convention
countries must be protected in non-Berne Convention countries.
Key features of the Universal Copyright Convention include:
• National Treatment: The UCC requires member countries to extend to nationals of

other member countries the same copyright protection they provide to their own
nationals. This principle ensures that foreign creators are granted similar rights and
privileges as domestic creators in each member co Works Covered: The UCC covers
various categories of works, including literary, scientific, and artistic works such as
books, music, paintings, photographs, and films. The protection applies to both
published and unpublished works.
• Formalities: Unlike some earlier copyright conventions, the UCC does not require
registration or other formalities to establish copyright protection. Copyright is granted
automatically upon the creation of the work.
• Reservations: Member countries may make reservations regarding certain provisions
of the Convention, allowing them to opt-out of specific obligations while remaining
bound by the rest of the treaty.
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TRADE RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS)
AGREEMENT
The Agreement on Trade related Aspects of Intellectual Property Rights of the WTO is
commonly known as the TRIPS Agreement or simply TRIPS. TRIPS is one of the main
agreements comprising the World Trade Organisation (WTO) Agreement. The agreement
contains 73 articles divided into 7 parts.
With the establishment of the world trade Organization (WTO), the importance and role of
the intellectual property protection has been Crystallized in the Trade-Related Intellectual Property
Systems (TRIPS) Agreement. It was negotiated at the end of the Uruguay Round of the General
Agreement on Tariffs and Trade (GATT) treaty in 1994.
Objectives
The general goals of the TRIPS Agreement are contained in the Preamble to the
Agreement, which reproduces the basic Uruguay Round negotiating objectives established in the
TRIPS area by the 1986 Punta del Este Declaration and the 1988-89 Mid-Term Review. These
objectives include:
• the reduction of distortions and impediments to international trade,

• promotion of effective and adequate protection of intellectual property rights,
• ensuring that measures and procedures to enforce intellectual property rights do not
themselves become barriers to legitimate trade.
The TRIPS Agreement encompasses, in principle, all forms of intellectual property and
aims at harmonizing and strengthening standards of protection and providing for effective
enforcement at both national and international levels. It addresses applicability of general GATT
principles as well as the provisions in international agreements on IP (Part I). It establishes
standards for availability, scope, use (Part II), enforcement (Part III), acquisition and maintenance
(Part IV) of Intellectual Property Rights. Furthermore, it addresses related dispute prevention and
settlement mechanisms (Part V). Formal provisions are addressed in Part VI and VII of the
Agreement, which cover transitional, and institutional arrangements, respectively.
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The obligations under TRIPS apply equally to all member states. The TRIPS Agreement,
which came into effect on 1 January 1995, is to date the most comprehensive multilateral
agreement on intellectual property. The areas of intellectual property that it covers are:
(i) Copyright and related rights (i.e. the rights of performers, producers of sound
recordings and broadcasting organisations);
(ii) Trade marks including service marks;
(iii) Geographical indications including appellations of origin;
(iv) Industrial designs;
(v) Patents including protection of new varieties of plants;
(vi) The lay-out designs (topographies) of integrated circuits;
(vii) The undisclosed information including trade secrets and test data.
Issues Covered under TRIPS Agreement
The TRIPS agreement broadly focuses on following issues:
• How basic principles of the trading system and other international intellectual property
agreements should be applied.
• How to give adequate protection to intellectual property rights.
• How countries should enforce those rights adequately in their own territories.
• How to settle disputes on intellectual property between members of the WTO.
• Special transitional agreements during the period when the new system is being
introduced.
Features of the Agreement
The main three features of the TRIPS Agreement are as follows-
• Standards: The TRIPS Agreement sets out the minimum standards of protection to be
provided by each Member.
• Enforcement: The second main set of provisions deals with domestic procedures and
remedies for the enforcement of intellectual property rights. The Agreement lays down
certain general principles applicable to all IPR enforcement procedures.
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• Dispute settlement: The Agreement makes disputes between WTO Members about the
respect of the TRIPS obligations subject to the WTO's dispute settlement procedures.
In addition, the Agreement provides for certain basic principles, such as national and most-
favoured-nation treatment (non-discrimination), and some general rules to ensure that
procedural difficulties in acquiring or maintaining IPRs do not nullify the substantive benefits that
should flow from the Agreement.
• National Treatment: The TRIPS Agreement provides for national treatment under Article
3(1). National treatment means that Members are required to treat nationals of other
countries the same as their own nationals.
• Most-Favoured-Nation Treatment: The TRIPS Agreement provides for Most-Favoured-
Nation treatment in Article 12 (4). The difference between national treatment and Most-
Favoured-Nation treatment is that while national treatment requires that foreign nationals
are treated the same or better than domestic nationals, Most-Favoured-Nation treatment is
the principle that all foreign nationals must be treated equally. Consequently, according to
Most-Favoured-Nation treatment, if country A offers country B certain benefits or
privileges, it must automatically offer these to all other countries.
The TRIPS Agreement is a minimum standards agreement, which allows Members to provide
more extensive protection of intellectual property if they so wish. Members are left free to
determine the appropriate method of implementing the provisions of the Agreement within their
own legal system and practice.
Protection of Intellectual Property under TRIPS
The TRIPS Agreement provides for protection of various kinds of intellectual property
rights to ensure that adequate standards of protection exist in all member countries. The starting
point is the obligations of the main international agreement of the World Intellectual Property
Organization (WIPO) that already existed before the WTO was created; namely, the Paris
Convention for the Protection of Industrial Property (patents, industrial designs, etc.) and the Berne
Convention for the Protection of Literary and Artistic Works (copyright). However, some areas
were not covered by these conventions while in some cases, the standards of protection prescribed
were thought inadequate. So the TRIPS agreement adds a significant number of new or higher
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standards for the protection of intellectual property rights. Part II of the Agreement addresses, in
its various sections, the different kinds of IPR and establishes standards for each category.
Enforcement of Intellectual Property Rights
The provisions on enforcement are contained in Part III of the Agreement, which is divided
into five Sections. The first Section lays down general obligations that all enforcement procedures
must meet. These are notably aimed at ensuring their effectiveness and that certain basic principles
of due process are met. The following Sections deal with civil and administrative procedures and
remedies, provisional measures, special requirements related to border measures and criminal
procedures. These provisions have two basic objectives: one is to ensure that effective means of
enforcement are available to right holders; the second is to ensure that enforcement procedures are
applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for
safeguards against their abuse.
INTERNATIONAL ORGANISATIONS RELATING TO INTELLECTUAL PROPERTY

RIGHTS
One can see establishment of international organisations for protection of intellectual

property rights even from second half of nineteenth century. Those organisations like the
Assembly of Paris Union, the Executive Committee and International Bureau of Borne are only
institutional mechanisms under a single treaty and the functions of such organs were limited.
The following are the two main International Organs established with the object of
protecting intellectual property rights.
1. The World Intellectual Property Organisation (WIPO)

2. The World Trade Organisation (WTO)
(1) THE WORLD INTELLECTUAL PROPERTY ORGANISATION (WIPO)
The World Intellectual Property Organization (WIPO) is one of the 17 specialized agencies
of the United Nations. WIPO was created in 1967 to encourage creative activity and to promote
the protection of intellectual property throughout the world. WIPO was formally created by the
Convention Establishing the World Intellectual Property Organization, which entered into force
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on April 26, 1970. Under Article 3 of this Convention, WIPO seeks to promote the protection of
intellectual property throughout the world. WIPO became a specialized agency of the UN in 1974.
The following are the Objects and Functions of the WIPO
Objects
i. To promote the protection of intellectual property throughout the world through co-
operation among the states and in collaboration with any international organisation
ii. To ensure administrative co-operation among the Unions
Functions
i. To promote the development of measures designed to facilitate the efficient protection of

Intellectual Property Rights throughout the world and to harmonise the national legislation
in this field.
ii. To encourage the conclusion of international agreements designed to promote the
protection of Intellectual property
iii. To offer its co-operation to states requesting legal- technical assistance in the field of
intellectual property.
iv. To assemble and disseminate information concerning the protection of intellectual
property.
v. To carry out and promote studies the field of intellectual property and publish the results
of such studies
(2) WORLD TRADE ORGANISATION (WTO)

The World Trade Organization (WTO) is an inter-governmental organization which
regulates international trade. The WTO has 161 members and 23 observer governments. In
addition to states, the European Union is a member. WTO members do not have to be full
sovereign nation-members. Instead, they must be a customs territory with full autonomy in the
conduct of their external commercial relations.
The WTO officially commenced on 1 January 1995 under the Marrakech Agreement,
signed by 123 nations on 15 April 1994. It replaced the General Agreement on Tariffs and Trade
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(GATT), which commenced In 1948. The headquarters of the World Trade Organization is in
Geneva, Switzerland.
The WTO's predecessor, the General Agreement on Tariffs and Trade (GATT), was
established after World War II. The GATT was the only multilateral instrument governing
international trade from 1946 until the WTO was established on 1 January 1995. The GATT still
exists as the WTO's umbrella treaty for trade in goods, updated as a result of the Uruguay Round
negotiations 1994. GATT 1994 is not however the only legally binding agreement included via
the Final Act at Marrakesh. A long list of about 60 agreements, annexes, decisions and
understandings was adopted.
The most important contribution of WTO in the field of intellectual property rights is the
agreement reached under it, namely, TRIPS Agreement, The TRIPS agreement is added to the
Agreement establishing the World Trade Organisation (WTO) as Annexure IC.
The highest decision-making body of the WTO is the Ministerial Conference, which usually
meets every two years. It brings together all members of the WTO, all of which are countries or
customs unions. The Ministerial Conference can take decisions on all matters under any of the
multilateral trade agreements. Among the various functions of the WTO, these are regarded as the
most important:
i. It oversees the implementation, administration and operation of the multilateral trade

agreements.
ii. It provides the forum for negotiations among its members concerning their multilateral
trade relations.
iii. It reviews and propagates the national trade policies, and policies ensures the coherence
and transparency of trade through surveillance in global economic policy-making.
iv. It assists developing, least-developed and low-income countries in transition to adjust to
WTO rules and disciplines through technical co-operation and training.
The WTO is a center of economic research and analysis. The WTO co-operates closely with
the IMF and the World Bank.
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The WTO members are required to publish their trade regulations, to maintain institutions
allowing for the review of administrative decisions affecting trade, to respond to requests for
information by other members, and to notify changes in trade policies to the WTO.
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UNIT 2
Patent - Concept and objectives - Patentable and non-patentable inventions -Procedure for
obtaining patent – Specifications - Opposition to grant of patent - Register of patents
Intellectual property refers to creations of human mind, like inventions, literary and artistic
works, signals, names, images, designs etc. Intellectual property is intangible and incorporeal
property. Law recognises and protects right to intellectual property as in the case of right to
corporeal property. Here what is being recognised as property is the intellect of a person.
A patent is a form of intellectual property. A patent is an exclusive right granted to a person

who has invented a new and useful article or an improvement of an existing article or a new process
of making an article. It consists of an exclusive right to manufacture the new article invented or
manufacture an article according to the invented process for a limited period. After the expiry of
the duration of patent, anybody can make use of the invention.
The owner of the patent can sell this property. He can also grant licences to others to exploit
the patent. A patent being a creation of statute is territorial in extent. A patent is not granted for an
idea or principle as such, but for some article or the process of making some article applying the
idea.
DEFINITION AND OBJECTIVES
The term ‘patent’ means an official document giving the holder the sole right to make, to
use or to sell an article and preventing other from imitating it. A patent is a monopoly right granted
to a person who has invented a new and useful article or an improvement of an existing article or
a new process of making an article.
Patent means a grant of some privilege or right by the government to one or more
individuals who invented a new article or a new process for making an article. The instruments by
which such grant is made is known as patent. A patent conveys to the inventor (patentee)
substantive rights and secures to him the valuable monetary right which can enforce for his own
advantage either by using it himself or by conveying the privilege to other for consideration.
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OBJECT OF PATENT LAW
The object of granting a patent is to encourage and develop new technology and industry. An
inventor may disclose the new invention only if he is rewarded otherwise he may work it secretly.
In consideration of the grant of monopoly for a limited period, the inventor discloses the details of
the new invention and the method of working it so that after the expiry of monopoly period others
can use the invention or improve upon it.
Thus the theory upon which the patent system is based is that the opportunity of acquiring
exclusive rights in an invention stimulates technical progress in four ways
• it encourages research and invention;

• it induces an inventor to disclose his discoveries instead of keeping them as a trade secret;
• it offers a reward for the expenses of developing inventions to the stage at which they are
commercially practicable; and
• it provides an inducement to invest capital in new lines of production which might not
appear profitable if many competing producers embarked on them simultaneously.
Manufacturers would not be prepared to develop and produce important machinery if others
could get the results of their work with impunity.
In Biswanath Prasad Radhay Shyam v. Hindustan Metal Industries, the Supreme Court of India
held that the object of patent law is to encourage scientific research, new technology and industrial
progress. Grant of exclusive privilege to own, use or sell the method or the product patented for a
limited period stimulates new invention of commercial utility.
NEED FOR PATENT
A patent is granted to encourage and develop new technology and industry. An inventor
may disclose the new Invention only if he is rewarded. In consideration of the disclosure the
patentee will be granted with a monopoly right for a limited period. After the expiry of the period
for which exclusive right is granted to the inventor, the invention can be put to use by any person
other than the one to whom a patent is granted.
Patent right is conferred for the invention of a new article or process for manufacturing of
an article. An invention is the creation of intellect applied to produce something new and useful.
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Such creation becomes the exclusive property of the inventor when the patent is granted. The
patentee's exclusive proprietary right over the patented product is an intellectual property right.
The patentee is entitled to deal with the patented product in the same manner as the owner of any
other property deals with such other property.
The main object of patent law is to confer exclusive right to the patentee to gain commercial
advantage out of his invention. The conferring of exclusive. right encourage the inventors to apply
their creative faculties. Unless protection is conferred to the patentee, the inventor may not disclose
the invention and he may keep it secret. Disclosing the invention for getting the privilege of
monopoly right would benefit the society.
TYPES OF PATENTS
The Patent Act, 1970 recognised two kinds of Patent. They are:
1. Product Patent
2. Process Patent.
A Product Patent is granted to a new and useful product invented by a person. In the case of
Product Patent, the patent is granted not to the method or process of manufacture of a substance
but to the substance itself. The patent holder or patentee will have absolute right to produce and
market the patented product. A product patentee has the right to make, use, exercise, sell or
distribute such article or substance in India.
When the method or the process of manufacture of a substance is given patent it is known as
Process Patent. In the case of process patent, the substance is not patented but only the process of
manufacture is patented. The patentee of a process has the exclusive right to use or exercise the
method or process in India.
PATENTABLE INVENTIONS
In Section 2(1)(j) an invention is defined as: Invention means a new product or process involving
an Inventive step and capable of industrial application.
It has been held that a method or process is a manufacture if it :
(1) results in the production of some vendible product, or
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(2) improves, or restores to its former condition a vendible product, or
(3) has the effect of preserving from deterioration some vendible products to which it
is applied.
A patent can be obtained only for an invention which is new and useful. The invention
must relate to a machine, article or sub-stance produced by manufacture, or the process of
manufacture of an article. A patent may also be obtained for an improvement of an article or of a
process of manufacture.
The term 'patent' has its origin from Latin word ‘patene’ which means ‘to open’. In legal
parlance the patent is a legal grant of monopoly right for some fixed term to the creator of new and
useful invention in return of his disclosing the invention. Patent rights have territorial operation.
The patent is granted by each country in accordance with its patent law. Although with the coming
into force of Patent Co-operation Treaty (PCT) a single application can be filed in any of the
member country. For claiming priority invention has to obtain patent in each country separately.
There is nothing like global patent.
The applicant for a patent must be the true and first inventor or a person who has derived
title from him, the right to apply for a patent being assignable. He must give a full and sufficient
disclosure of the invention and specify the precise limits of the monopoly claimed. The invention
claimed must be novel and must not be obvious to those who are skilled in the art to which it
relates. The three essential requirements of a patentable invention are, novelty, inventiveness and
utility. There are some inventions which may satisfy the above criteria but yet are not patentable.
CONDITIONS FOR OBTAINING PATENT
The fundamental principle of patent law is that a patent is granted only for an invention which
must be new, non-obvious and useful. In order to patent a product or process, the following
essential conditions are to be satisfied.
In order to constitute ‘invention" the following conditions are to be satisfied
1. There should be a new product or process.

2. The product or process should involve an "inventive step".
3. It should be capable of industrial application.
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1. Novelty: -
The invention must be new. Novelty of an invention plays a significant role in the grant of
patent. In other words, what has been patented once cannot be the subject matter of another patent
because it is no longer new.
The Supreme Court has observed, in Bishwanath Prasad vs. Hindusthan Metal Industries that
the fundamental principle of patent law is that a patent is granted only for an invention that must
be new and useful. That is to say, it must have novelty and utility. It is essential for the validity of
a patent that it must be the inventor's own discovery as opposed to mere verification of what was
already known before the date of the patent.
In England, the classical test for novelty adopted in that country was whether the invention
was in practice or used by anyone in the memory of an Englishman. The test applied in recent
times to satisfy novelty, is to look whether there has been a prior publication or use of the invention.
Therefore, only a true and first inventor will get the benefit of a patent registration. Section 2(1)
(y) of the Patent Act clearly states that a "true and first inventor" does not include either the first
importer of an invention into India, or a person to whom an invention is first communicated outside
India.
In Narayan Chandra Das vs. Jolly Guhathakurata the respondent obtained a patent for an
invention involving merely stitching of a head scarf and muffler together called ‘Head scarf cum
neck covering apparel for women’. In an application for revocation filed under Section 64 of the
Patents Act, 1970 the I.P.A.B. revoked the grant of patent on the ground that it was only a mere
juxtaposition of known components therefore there was no novelty in it.
2. Inventiveness/Non obviousness
There should be an invention and not a discovery. Under the Patents Act, a patent can be
granted to a new and useful product or process. The protectable subject-matter of a patent is an
'invention'. The expression ‘Invention’ is defined in Section 2(1)(j) of Patents Act, 1970.
‘Invention means a new product or process involving an inventive step and capable of industrial
application.’ Inventive step means a feature of invention that involves technical advance as
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compared to the existing knowledge or having economic significance or both and that makes the
invention not obvious to a person skilled in the art. (Sec 2(1) (ja))
A patent may not be obtained though the invention is not identically disclosed or described, if
the differences between the subject-matter sought to be patented and the prior art are such that the
subject-matter as a whole would have been obvious at the time the invention was made to ‘a person
having ordinary skill in the art’ to which the said subject-matter pertains. In addition to novelty,
potentiality is to depend, upon the non-obvious nature of the subject-matter sought to be patented
to a person having ordinary skill in the pertinent art. Patents ought not be granted for every trivial
advancement.
In Bajaj Auto Ltd. v TVS Motor Company Ltd., Madras High Court observed that the term
‘obvious’ is a circumstance where a person of skill in the field, on going through the specification
would complete the product. Therefore, even if any of the two ingredients, viz., technical advance
or economic significance or both are available, if such invention enables a person of skill in the
field, on going through the specification would complete the product, such invention can never be
treated as an “inventive step” and consequently no patent can be validly issued. It further observed
that even after the grant of patent under section 43 of the patents act, 1970, which is given effect
from the date of filing of application for the patent, it is open to a party, who is opposing the patent
to prove that there is no inventive step in the invention of a patentee.
3. Utility
The third essential prerequisite of a patent is that it must have utility i.e. usefulness. Utility of
an invention means that the invention must be useful for the purposes indicated by the inventor or
patentee. However, it need not mean commercial utility alone.
The position in England is that, if an invention does not have any industrial application, it
cannot obtain a patent in that country. However, the Indian position is different. In India, an
invention which does not have any industrial application, whatsoever also may clearly pass the test
of utility and qualify for a patent. Section 20 of the Act says that the invention must be useful,
apart from being novel and involving an inventive step.
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The Indian law is also silent on the amount of utility. The amount of utility of a patent
depends entirely on the complete specifications put out by the inventor. It is sufficient that the
invention should be capable of the features that distinguish it from earlier proposals, and be of
some use to the public.
Therefore, unless an invention satisfies the three conditions i.e. (i) being an inventive step
(ii) being new and novel and (iii) having utility, it cannot qualify for a patent protection.
INVENTIONS NOT PATENTABLE
According to sections 3 and 4, the following inventions are not patentable:
(1) An invention which is frivolous or which claims anything obviously or contrary to well-
established natural laws.
(2) An invention the primary or intended use of which would be contrary to law or morality
or injurious to public health.
(3) 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 (e.g. the theory of
relativity is not patentable).
(4) The mere discovery of any new form of a known substance which does not result in the
enhancement of the known efficacy of that substance or the mare 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 process result in a new product or employs at least one new
reactant.
(5) 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.
(6) The mere arrangement or rearrangement or duplication of known devices each functioning
independently of one another in a known way.
(7) A method of agriculture or horticulture.
(8) A process for the medical, surgical, curative, prophylactic diagnostic, therapeutic or other
treatment of human beings or any process for a similar treatment of animals to render
them free of disease or to increase their economic value or that of their products.
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(9) Plants and animals in whole or any part thereof other than micro-organisms but including
seeds, varieties and species and essentially biological processes for production or
propagation of plants and animals.
(10) A mathematical or business method or a computer programme per se or algorithms.
(11) Literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever
including cinematographic works and television productions.
(12) A mere scheme or rule or method of performing mental act or method of playing game.
(13) A presentation of information.
(14) Topography of integrated circuits
(15) An invention which in effect, is traditional knowledge or which is an aggregation or
duplication of known properties of traditionally known component or components.
(16) An invention relating to atomic energy
In Hindustan Lever Ltd v. Godrej Soaps Ltd. and others, the plaintiff filed a suit for
injunction for infringement of patent relating to soaps manufactured in accordance with the patent
and marked under the trademark 'VIGIL'. The defendant contended that making detergent bar
containing varying amounts of percentage of soaps including non -soap detergent and water
insoluble fillers including starch and varying ranges of moisture is not new and therefore due to
non-novelty it cannot be a subject matter of the patent. The Court held that mere arrangement or
re-arrangement of known devices each functioning independently on one another in a known way
is not an invention under section 3 of the Patent Act, 1970.
In Novartis AG & Anr. v. Union of India, Novartis drug Gleevec (imatinib mesylate), used
mainly in the treatment of Blood Cancer, examined for patent protection in 2005. The Chennai
patent office denied protection on the ground that the application claimed only a new form of a
known substance without demonstrating any added efficacy under Section 3(d).The Supreme
Court of India decided that the substance which Novartis sought to patent is known and thus does
not qualify the test of invention as laid down in Section 2(1)(j) and Section 2(1)(ja) of the Indian
Patent Act. The Supreme Court of India rejected the Novartis patent claim for cancer drug 'Glivec'.
It also upheld the constitutional validity of the Section 3(d) of the Indian Patent Act.
PROCEDURE FOR OBTAINING PATENTS
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The inventor of a new article or process of manufacturing is entitled to get his product or
process patented if he satisfies the Controller that the product or process is patentable. Unlike
copyright which becomes vested in the author the moment he creates the work, the invention of a
person cannot and does not become entitled for patent unless the procedure prescribed in the Patent
Act, 1970 are fulfilled, and the invention is approved for grant of patent. There is no ipse dixit
claim of patent nor there is suo moto grant of patent by authorities.
The Act has prescribed a detailed procedure which begins with filing of application and is
completed with grant of patent. In order to obtain a patent, the following are the procedures.
1) Filing of application (Sections 6 -11)
In order to obtain patent for an invention only one application can be made. It is to be made
in the prescribed form and field in the Patent Office. The following persons can apply for patent.
1) A person who claims to be the true and first inventor of the invention. The expression
"true and first inventor" does not include either the first importer of an invention into
India, or a person to whom an invention is first communicated from outside India.
2) An assignee of a person claiming to be the true and first inventor. If an assignee makes
an application he should furnish with the application the proof or right to make an
application i.e., document of assignment. If the proof of right to make application is
not furnished with the application, the applicant shall within a period of three months
after the filing of such application furnish such proof.
3) A legal representative of any deceased person who was entitled to make such an
application for patent. The expression "Legal Representative means a person who in
law represents the estate of a deceased person.
A person who is the first one to convert the ideas and scientific principles into a working
invention is the first and true inventor. A person who merely communicates an idea to another
cannot claim to be the true and first inventor and so is not entitled to apply for a patent.
According to Section 7 of the Act, every application for a patent shall be for one invention
only and shall be made in the prescribed form and filed in the patent office.
Invention by an Employee
32
If an employee makes an invention during his employment, he would be entitled to apply
for a patent. Generally, the right of an employee to apply for, patent will be regulated by the
contract between-the employer and employee. Normally the employee can apply for patent for his
invention even though made during employer's time and with employer's materials and expense.
However, there can be a contract to the contrary. In the case of employees specifically employed
for research and development, the invention always belongs to the employer and he is entitled to
apply for patent.
Can a foreigner apply for patent in India?
A foreigner can also apply for a patent in India. If an applicant is a foreigner, he shall
furnish information setting out the name of the country in which he has already filed an application,
serial number and date of filing of such application. He should also give an undertaking that up to
the date of acceptance of complete specification by the Controller he would inform the Controller
in writing of the details and development in any patent application filed out side India.
2. Provisional and Complete Specification (Section 9-11)
A patent specification is a techno legal document describing the invention. A specification

may be provisional or complete. If the specification gives only initial description of an invention,
it is provisional specification. A complete specification gives full and sufficient details of an
invention. It should be such that a person skilled in the art can use the invention when he reads
such a description.
An application made by a citizen of India for patent should be accompanied with a

provisional or complete specification. If the application is accompanied by a provisional
specification, the complete specification has to be filed within twelve months from the date of
filing of the application. If the complete specification is not so filed, the application shall be
deemed to have been abandoned. The time period of twelve months may be extended to fifteen
months, if such a request for extension is accepted by the Controller.
If the application is made by a foreign national of a conventional country, the patent

application is to be accompanied with complete specification and not provisional specification.
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The purpose of filing a specification is to make available the invention to the public on the
expiry of term of the patent The complete specification shall contain the following. (Section 10)
1) Title, sufficiently indicating the subject matter to which the invention relates.
2) A full and particular description of the invention and its operation or use and the method
by which it is to be performed.
3) A disclosure of the best method of performing the invention which is known to the
applicant and for which he is entitled to claim protection.
4) Claim or claims defining the scope of the invention. The claim must relate to one invention
only. The claim must be clear and precise.
5) The drawings if any required to be furnished by the controller would also form part of
specification.
6) A declaration as to the inventorship of the invention.
Claim: In a patent or patent application, the claim defined in technical terms, the extent i.e. the
scope of protection conferred by a patent or the protection sought in a patent application. The
claims are of utmost importance both during prosecution and litigation alike. In F. Hoffman la
Roche Limited v. Cipla Limited, the Delhi High Court stated that claim should not only describe
the invention and its operation but also disclose the best method of performing the invention.
Priority date : The date on which patentee claims his invention. Since a provisional specification
is generally filed much before the filing of complete specification, the priority date is the date of
filing of the provisional specification provided the claims contained therein are fairly based on the
description of the invention as given in the provisional specification.
Where the provisional application is not filed and the application is directly accompanied
by complete specification, the priority date shall be the date of filing of the complete specification.
The novelty of an invention is tested with reference to the existing state of knowledge on such
priority date.
3. Publication of Application (Section 11A)
An application for patent shall not be open to the public for eighteen months from the date
of filing of application. After the expiry of 18 months the application for a patent shall be
34
published. The applicant may request the Controller to publish his application at any time before
the expiry of 18 months. In such a case, the Controller shall publish such application as soon as
possible, The publication of the application shall include to particulars of the date of application,
number of application, name and address of the applicant identifying the application and an
abstract. Upon publication of an application for a patent, the patent office may, on payment of the
prescribed fee make the specification and drawings of such application available to the public.
On and from the date of publication of the application for patent and until the date of grant
of a patent in respect of such application, the applicant shall have the like privileges and rights as
if a patent for the invention had been granted on the date of publication of the application. But the
applicant shall not be entitled to institute any proceedings for infringement until the patent has
been granted.
4. Opposition by Representation (Section 25(1))
By section 25, if an application for a patent has been published but a patent has not been
granted, any person may, in writing, represent by way of opposition to the Controller against the
grant of patent on the following grounds
(a) that the applicant for the patent or the person under or through whom he claims, wrongfully
obtained the invention or any part thereof from him or from a person under or through
whom he claims;
(b) that the invention so far as claimed in any claim of the complete specification has been
published before the priority date of the claim—
(i) in any specification filed in pursuance of an application for a patent
made in India on or after the 1st day of January, 1912; or
(ii) in India or elsewhere, in any other document:
(c) that the invention so far as claimed in any claim of the complete specification is claimed
in a claim of a complete specification published on or after priority date of the applicant's
claim and filed in pursuance of an application for a patent in India, being a claim of which
the priority date is earlier than that of the applicant's claim;
(d) that the invention so far as claimed in any claim of the complete specification was publicly
known or publicly used in India before the priority date of that claim.
35
(e) that the invention so far as claimed in any claim of the complete specification is obvious
and clearly does not involve any inventive step.
(f) that the subject of any claim of the complete specification is not an invention within the
meaning of this Act, or is not patentable under this Act;
(g) that the complete specification does not sufficiently and clearly describe the invention or
the method by which it is to be performed;
(h) that the applicant has failed to disclose to the Controller the information required by section
8 or has furnished the information which in any material particular was false to his
knowledge;
(i) that in the case of a convention application, the application was not made within twelve
months from the date of the first application for protection for the invention made in a
convention country by the applicant or a person from whom he derives title;
(j) that the complete specification does not disclose or wrongly mentions the source or
geographical origin of biological material used for the invention;
(k) that the invention so far as claimed in any claim of the complete specification is anticipated
having regard to the knowledge, oral or otherwise, available within any local or indigenous
community in India or elsewhere,
but on no other ground, and the Controller shall, if requested by such person for being heard,
hear him and dispose of such representation in such manner and within such period as may be
prescribed.
The representation for opposition shall be filed within a period not exceeding three months
from the date of publication of the application or before the grant of patent whichever is later and
shall include a statement and evidence in support of the representation and a request for hearing if
so desired.
The Controller shall consider such representation only when a request for examination of the
application is filed by the applicant for grant of patent. On consideration of the representation if
the Controller in of the opinion that application for patent shall be refused he shall give a notice to
the applicant. On receiving the notice, the applicant shall, if he so desires, file his statement and
evidence within one month from the date of notice. On consideration of the statement and evidence
36
filed by the applicant, the Controller may either refuse to grant a patent on the application or reject
the representation.
5. Examination of Application (Section 12)
An application for a patent shall not be examined unless the applicant makes a request
within 48 months from the date of filing of the application under Section 11B. If no request is
made within the prescribed time limit, the application shall be treated as withdrawn by the
applicant.
When a request for examination is made, the application will be sent to the Examiner of
Patents for making a report to the Controller. Thereupon the Examiner will consider the following
three aspects.
1) Whether the application complies with the requirements of Act and Rules made thereunder.
2) Whether there exists any ground of objection to the patent.
3) Whether the invention has already been published or claimed by any other person.
The examiner makes a search in the publications, specifications of prior applications and
specifications of patent already granted to see whether the same invention has already been
published or claimed or is the subject matter of existing or expired patent.
6. Communication to the Applicant
On the examination of application, if any objection is raised by the Patent Examiner, the
Patent Office will communicate to the applicant the objection so raised. The applicant will be given
an opportunity to rectify the objection. If the objections are not satisfactorily rectified the
Controller may refuse the acceptance of the application after giving an opportunity of being heard
to the applicant.
7. Grant of Patents (Sections 43 and 47)
If an application for a patent is found to be in order for grant of the patent, the patent shall
be granted to the applicant with the seal of the patent office and the date on which the patent is
granted shall be entered in the register. On the grant of patent, the Controller shall publish the fact
37
that the patent has been granted and thereupon the application, specification and other documents
related thereto shall be open for public inspection.
Section 43: Grant of patents.
(1) Where an application for a patent has been found to be in order for grant of the patent and
either—
(a) the application has not been refused by the Controller by virtue of any power
vested in him by this Act; or
(b) (b) the application has not been found to be in contravention of any of the
provisions of this Act,
the patent shall be granted as expeditiously as possible to the applicant or, in the case of a
joint application, to the applicants jointly, with the seal of the patent office and the date on
which the patent is granted shall be entered in the register.
(2) On the grant of patent, the Controller shall publish the fact that the patent has been granted
and thereupon the application, specification and other documents related thereto shall be
open for public inspection.
8. Post grant opposition (Section 25(2))
After the grant of patent but before the expiry of a period of one year from the date of
publication of grant of a patent, any person interested may give notice of opposition to the
Controller on the following grounds:
1) The patentee had wrongfully obtained the complete invention or a part thereof from a
person under or through whom he claims,
2) The Invention is already published in an Indian Specification or in any other document or
elsewhere.
3) The invention has been the subject matter of a prior claim in an application which is prior
in time than the applicant's claim.
4) The invention as claimed in the complete specification was publicly known or publicly
used in India before applicant's claim.
38
5) The invention as claimed by the applicant in his complete specification is obvious and does
not involve any inventive step.
6) The subject of any claim of the complete specification is not an invention or is not
patentable under the Act.
7) The complete specification of the applicant does not sufficiently and clearly describe the
invention or the method by which it is to be performed.
8) In case of foreign application, the failure to disclose information relating to applications
filed in foreign countries.
9) In the case of convention application, the application was not made with in twelve months
from the date of first application for the protection of Invention made in a convention
country by the applicant or a person from whom he derives title.
When the Controller receives a notice of opposition, the Controller shall notify the patentee.
On receipt of such notice of opposition, the Controller shall, by order in writing, constitute a Board
to be known as the Opposition Board consisting of three members and nominate one of the
members as the Chairman of the Board. The Controller shall refer the notice of opposition along
with the documents to that Board for examination and submission of its recommendations to the
Controller. On receiving the recommendation of Opposition Board the Controller shall fix a date
and time for the hearing of the opposition and shall give parties not less than ten days' notice of
such hearing and may require members of Opposition Board to be present in the hearing. After
giving the patentee and the opponent an opportunity of being heard, the Controller shall order
either to maintain or to amend or to revoke the patent.
In Imperial Chemical Industries Ltd. v. Controller General of Patents, Designs and Trade
Marks the court declared the following propositions of law as binding for granting patent.
1) The patent must be in respect of an invention and not a discovery.

2) The patent may be in respect of a substance or a process.
3) In order to have a complete patent, the specifications and claims must be clearly and
distinctively mentioned.
39
40
REGISTER OF PATENTS
Register of patent contains all the updated information regarding a patent that is granted. It
serves as a database and prima facia evidence for every proceeding instigated under the Indian
Patent’s Act before the Controller or the Appellate Board. When there is any change in the title,
interest, or information contained in the patent, the patentee or the title owner is under the
obligation to intimate it to the controller so that he can make the necessary changes in the register.
The register of a patent is dealt under section 7 of the Patents Act, 1970. At the patent
office, a register of patents is maintained which contains the names and addresses of patents. It
also contains the notifications of assignments, extension, and revocations of patents. Apart from
this, the particulars of orders which affect the validity or proprietorship of patents shall also be
included in the register or patent. A notice of trust irrespective of it being express, implied or
constructive, shall not be included in the register. The controller shall manage and control over the
register subject to the superintendence and directions of the Central Government. The controller
at his discretion can keep the whole of the register or a part in the electronic form provided it fulfils
the safeguards that are provided. When a register is kept in an electronic form, the reference to an
entry, rectification, or any particulars in the register would mean a reference made to the record
maintained in the electronic form. A copy of or an extract from the register is admissible evidence
in all Court proceedings if it is certified to be a true copy under the hand of the Controller or any
officer duly authorized by the Controller.
Chapter XII of Patent Rules, 2003 deals with the register of patents. The Controller shall
enter the following details in the register at each appropriate office upon the granting of patent-
1. name, address and nationality of the grantee as the patentee

2. title of the invention
3. date of the patent
4. date of grant
5. address for service of the patentee
The controller shall also enter the particulars regarding the proceeding that takes place
under this Act before the controller or the Appellate Board.
41
PRE GRANT OPPOSITION AND POST GRANT OPPOSITION
• Read Section 25 and the note given above
In the Amendment Act of 2005 provision for both pre-grant and post-grant opposition has
been made. Pre-grant opposition prevents the issuing of trivial patents without litigation, which is
often time consuming and expensive. Where an application for a patent has been published but a
patent has not been granted, any person may, in writing, represent by way of opposition to the
Controller against the grant of patent. All relevant grounds which are available in the post-grant
stage are also available in the pre-grant stage.
The basic difference between the pre-grant opposition and post-grant opposition is that, in
pre-grant opposition any person can file a representation under Section 25(1), while in post-grant
opposition only the interested persons can file the opposition, under Section 25(2).
The meaning given to the term 'Interested Person' under Section 2(1)(t), i.e., a person
engaged in, or promoting research in the same field as that to which the invention relates, is not
exhaustive and can be broadly interpreted.
After the grant of patent but before the expiry of a period of one year from the date of
publication of grant of a patent, any person interested may give notice of opposition to the
Controller. After receipt of notice the Controller will constitute Opposition Board. On the basis of
report of Board, the Controller may revoke the patent. Appeal against decision of Controller can
be filed before Appellate Board.
In the case of J. Mitra & Co. v. Asst. Controller of Patents & Design, the Honorable
Supreme Court has explained the rationale and the relationship between pre-grant and post-grant
opposition in the following words: “The ground of challenge under Section 25(1) is identical to
Section 25(2) of the 1970 Act. However, Section 25(1) is wider than Section 25(2) as the latter is
available only to a "person aggrieved". The main difference between Section 25(1) and Section
25(2) is that even after a patent is granted, "post-grant opposition" can be filed under Section 25(2)
for a period of one year. The reason is obvious. In relation to patents that are of recent origin, a
higher scrutiny is necessary. This is the main rationale underlying Section 25(2) of the 1970 Act.”
42
In Indian Network for People Living With HIV/AIDS v. Union of India, Madras High Court
held that, grant of patent virtually confers the right of monopoly, which is a right in rem granted
in favour of the respondent. Before such a right is granted, law has provided the right of objection
to any person. As the patent right is a right in rem, law by confers right of objection also on very
wide terms on any person.
In Alloys Wobben v. Yogesh Mehra, the Supreme Court explained in detail the nature and
scope of pre grant and post grant opposition. The court clarified that grounds for opposition
whether pre-grant or post grant are same and reiterated that application for opposition of patent
after grant should be made within one year of publication of grant of patent.
DATE OF PATENT (SECTION 45)
Subject to the other provisions contained in this Act, every patent shall be dated as of the
date on which the application for patent was filed. The date of every patent shall be entered in the
register. Notwithstanding anything contained in this section, no suit or other proceeding shall be
commenced or prosecuted in respect of an infringement committed before the date of publication
of the complete specification.
TERM OF PATENT (SECTION 53)
Prior to Patent Amendment Act, 2002, the term of patent in India was ranging between 5
and 14 years. (from date of sealing) depending upon the categories of invention. But as required
under Section 27 of TRIPS agreement, a uniform term of 20 years has been provided. This period
of 20 years shall be reckoned from date of filing of application for patent. But to keep the patent
alive and effective a periodic renewal fee is also required to be deposited, failing which the patent
shall cease to have effect, and shall not be eligible to any protection.
PATENTS OF ADDITION (SECTION 54)
Patent of addition is a patent granted in respect to any improvement in or modification of

a pervious invention called the main invention for which a patent has been granted or an application
has been made.' The rights conferred by a patent of addition are the same as those for other patents.
An application for a patent of addition may not proceed unless it is in respect of one main
application or patent.
43
A patent of addition will not be granted before the grant of the patent for the main invention.
The term of the patent of addition will run concurrently, that is for a term equal to that of the patent
for the main invention. If the patent for the main invention is revoked under the Act, the patent of
addition shall become an independent patent for the remainder of the term of patent for the main
invention if the court or Controller so orders on the application made by the patentee.
No renewal fee is payable in respect of a patent of addition as long as the main patent
remains in force. However, if patent of addition becomes an independent patent, the same fee shall
be payable upon the same dates as if the patent has been originally granted as an independent
patent.
44
UNIT 3
Rights and obligations of patentee - Limitation of patent Rights -Government use of Patent -
Compulsory License - Revocation for non working -Transfer of patents -Surrender and revocation
of patents -Infringement of patents - Offences and remedies - Patent agent.
RIGHTS OF PATENTEES
A patent is a grant conferring certain monopoly rights on the grantee for a definite period,
subject to certain conditions. A grant of patent gives the patentee the exclusive right to make or
use the patented article or use of the patented process. Apart from this right a patentee has also the
powers to assign the patent, grant licences under and deal with it otherwise, for any consideration.
However, these rights are not absolute and are circumscribed by various conditions and limitations.
Once a patent is granted, the patentee has the exclusive right to make use, exercise, sell or
distribute the patented article or substance in India. In case of a process patent he has the right to
use or exercise the method or process. These rights can be exercised not only by the patentee but
also by his agents or licensees.
1. Right to exploit patent (Sections 48 and 50)
Section 48 confers the rights to exploit the patent on patentee or his licensee or assignee or
agent. It means the patentee or the person legally authorised by him can make commercial use of
the patented invention. He can exclude third parties who do not have his consent. However, this
right is subject to the conditions laid down in Section 47 which empower the Government to import
or use the patent product for its own use. The co-owners of a patent shall also be entitled to equal
undivided share in patent.
2. Right to licence (Section 70)
If a patentee is not able or willing to exploit the patent himself, he can grant licence to some
other person and authorise him to exploit the patent and pay him the consideration or royalty.
3. Right to assign (Sections 70 and 68)
45
A patentee can fully or partially assign his patent to another person through sale, gift or any
other legal mode. Section 68 requires that such assignment should be in writing. In case of joint
patent, the co-owner can assign his share in patent.
4. Right to surrender the patent (Section 63)
Under Section 63 of the Act, the patentee has the right to surrender his patent. A patentee, if
he so wants may offer to surrender his patent, at any time by giving notice in the prescribed manner.
When such an offer is made, the controller should advertise the offer with a view to notifying every
person other than the patentee whose name appears in the register as having an interest in the
patent. It is necessary to protect the interests of persons like licencees, equitable assignees, and
others with whom the patentee might have contractual obligations which are dependent on the
continuance of the patent.
5. Rights before sealing (Section 24)
The patentee enjoyed certain rights even before the sealing of the patent, under Section 24 of
the Act. Under this provision, on and from the date of advertisement of the acceptance of a
complete specification and until the date of sealing of patent, the applicant will be entitled to the
like privileges and rights as if a patent for the invention been sealed on of advertisement of
acceptance of the complete specification. However, the applicant will not be entitled to institute
any legal proceedings for infringement until the patent has been sealed.
6. Right to be issued duplicate Patent (Sections 154 and 118)
If a patent is lost or destroyed or its non-production is explained satisfactorily to the Controller,

the patentee has a right to apply for duplicate patent.
7. Rights against infringements (Sections 104 – 108)
Infringement is the violation of the rights conferred by the grant of patent. It consists in the
violation of any of the rights like the exclusive right to make, use, exercise, sell or distribute the
invention in India. Whenever a patent is infringed, the patentee has a right to institute suits in a
court of law, not inferior to a District Court having jurisdiction to try the suit. The patentee may
bring in a suit for declaration, injunction and also for damages and account of profits.
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8. Right to apply for ‘patents of addition’(Sections 54 – 56)
Chapter IX of the Act, Sections 54 to 56 deal with ‘patents of addition’. A patent of addition
is the improvement or modification of an invention disclosed in the complete specification of the
‘main invention’. Under Section 54 of the Act, a patentee has a right to apply for a patent of
addition relating to his 'main invention'.
9. Right to make a convention application
Every patentee in India has a right to make a convention application or a "basic application",
for protection of his patent in other convention countries, in case of international instruments being
signed by India and those other convention countries. Generally, this right is dependent on the
principle of 'reciprocity' and 'national treatment’ in international law.
10. Right to be supplied copies and certificates
Certified copies of any entry in the register, or certificates of or extracts from patents,
specifications and other public documents in the patent office or from the registers and other
records kept there, may be obtained by the patentees and also others by paying the prescribed fee,
These rights can be enforced by a suit for infringement of the patent, or an action for recovery
of royalties or an action for specific performance of contract depending on the nature of rights
violated.
DUTIES OF PATENTEE
The patent granted confers not only certain rights on the patentee but also imposes certain
duties and obligations. If the patent is not used and the granted monopoly is abused, compulsory
licence may be granted to any person who is willing to work the patent or even the patent also may
be revoked. It is the implied duty of the patentee to work the patent is India in such a manner so
as not to deprive the reasonable requirements of the public and also to make the products of patent
available to the public at reasonable prices. Further the patentees are restrained from making
baseless and unjustifiable threats of an action for infringement of the patent. Similarly, every
patentee should submit periodical statements to the controller as to the extent to which the patented
invention has been worked on a commercial basis in India. Failure to supply such information is
punishable.
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LIMITATIONS OF THE RIGHTS OF PATENTEES
Rights of the patentees are not absolute. They are subject to many limitations and
restrictions.
1. Use for experiment, research and teaching (Section 47(3))
Any machine, article or apparatus in respect of which patent is granted or any process patent
may be used by any person for the purpose only of experiment or research including the imparting
of instructions to pupils; notwithstanding the rights of the patentee.
2. Use by Government (Sections 99 -103)
Any patented product or process may be used by the Government for its exclusive use or on behalf
of it. The Government may also import such product or patent. Obviously, such a provision has
been made in the interest of public service.
3. Compulsory licences (Sections 84- 94)
If the patent has not been worked so as to satisfy the reasonable requirements of the public at a
reasonable price, the controller may grant compulsory licences to any applicant to work the patent.
Further the central Government also has the power to declare that compulsory licences should be
granted in respect of any patent or class of patents. The controller decides the terms of the licence.
4. Invention for defence purposes (Section 35)
Certain inventions relevant for defence purposes may be subjected secrecy provisions by the
controller. He may direct, restrict or prohibit the publication or communication of information
relating to such inventions. In such an event application will not be refused but the complete
specification if accepted, will not be advertised and no patent will be granted for the invention.
During the continuance of such directions, the central Government may use the invention by
debarring the applicant from using it provided the royalties are paid to him. If the applicant suffers
consequently, he may also be paid solatium.
5. Use in foreign vessels etc
48
Where a vessel or aircraft registered in a foreign country or a land vehicle owned by a
foreigner comes to India or its territorial waters temporarily or accidently, the patented article,
substance or process may be used such vessels, and aircrafts etc., without infringing the rights of
the patentee legally. Such a use must be for its actual needs or in the consultation or working of
the aircraft or land vehicle or of the accessions only. However, this right is available only to a
foreign vessel, aircraft or land vehicle owned by residents of only those countries which confer
similar rights on the residents of India. In other words, this right and limitation are based on the
principle of national treatment.
In addition to the above restrictions and limitations, a patent may also be revoked for non-
working or where the working has not resulted in the satisfaction of the reasonable requirements
of the public in respect of the patented invention at a reasonable price. In the case of those patents
which lapsed once but have been restored, certain limitations are imposed on the patentee. If the
patent is infringed during the period between the date of lapse and the date of advertisement of the
application for restoration, the patentee is debarred from taking any legal action in respect of such
infringement.
GOVERNMENT USE OF PATENT (Sections 99 -103)

A patent has the same effect against the Government as against any other person. This is,
however, subject to the right of the Government to use the patented invention in specified
circumstances. In some cases, the use can be made without the payment of any royalty or
compensation, while in others the use is subject to payment of royalty as may be agreed upon or
as determined by the High Court. The power of the Government to use patents relating to medicine
or drug is very wide. It includes: the right to make, exercise and vend the invention and also to
import and sell the patented article.
All patents granted under the Act are subject to the condition that the patented article can
be imported or made, or the patented process used, by the Central or State Government for the
purpose of its own use. In respect of drug patents, the drug or medicine may be imported by the
Central and State Governments for the purposes of their own use as well as for distribution to
Government hospitals, dispensaries, and medical institutions and similar institutions notified by
the Central Government. Such use of the patent by the Government does not require any payment
of royalties to the patentee.
49
The Government can use a patented invention for the benefit of in-and-out patients of
dispensaries and hospitals maintained by Government including hospitals under the Central Health
Scheme without payment of any royalty.
1. Use without payment of royalty
In the following circumstances the use of a patented invention may be made by or on behalf of
the Government without payment of royalty
(a) To import or make the patented article for the purpose merely of its own use. It may also
use any patented process for its own use: Patented medicines or drugs can be imported by
the Government for its own use or for distribution to Government dispensaries, hospitals
or other medical institutions or similar institutions specified by the Government. It cannot,
however, manufacture them in India. The Government cannot sell any patented article.
(b) Where an invention has been recorded, tested or tried on behalf of the Government of
Government Undertaking before the priority date of the relevant claim of the complete
specification, otherwise than as a result of a communication from the patentee, it may be
used for the purpose of Government without payment of royalty. The right to use them
includes the right to make, use, exercise, vend and sell the goods made in exercise of that
right. The patented article can also be imported for its own use.
2. Use on payment of royalty
In all cases other than those mentioned above the use of an invention for the purposes of
Government will require payment of royalty or other remuneration to the patentee. The terms upon
which use of the invention may be made for the purpose of Government may be settled between
the Central Government and the patentee. If the terms could not be agreed upon they will be
determined by the High Court on a reference made to it. In respect of any patent relating to
medicine or drug or article of food the royalty should not exceed four per cent of the net ex-factory
sale price in bulk of the patented article.
Where an invention has been used under the authority of the Central Government for the
purposes of Government the Government should notify the patentee of the fact and furnish him
information as to the extent of use from time to time,
50
3. Acquisition of invention by Government (Section 102)
The Central Government can acquire an invention for a public purpose, either before the grant
or after the grant. Notice of acquisition will be given to the applicant, or to the patentee and other
persons, if any, appearing on the register as the case may be. Compensation for the acquisition will
be paid to the persons interested in the invention or patent, the amount of which being determined
either by agreement or by a reference to the High Court. In determining the compensation, the
Government will take into consideration:
(1) the expenditure incurred in connection with the invention,

(2) the terms under which, the period during which and the manner in which the
invention has been worked,
(3) the profits made during such period, by the patentee or his licensees, and
(4) other relevant factors.
Disputes arising in connection with the use of invention for the purpose of Government or
acquisition of the patent may be referred to the High Court by either party to the dispute. If the
dispute is between an employee of the Government or Government Undertaking, then such
disputes will be disposed of by the Central Government after giving an opportunity to the patentee
and other parties having an interest in the matter to be heard.
4. Inventions relevant to defence
The Central Government will notify to the Controller the classes of invention relevant for
defence purposes. In respect of any such invention the Controller may give directions prohibiting
or restricting the publication of information regarding the invention to any person or class of
persons. The directions may be revoked by the Central Government subsequently if the publication
will not be prejudicial to the defence of India. No patent will be granted in respect of an invention
which is relevant for defence purposes but the application for a patent may proceed up to the
acceptance stage. Where a complete specification has been accepted in respect of such an invention
the use of the invention by the Government will be subject to payment of royalty as in the case of
other patents. Where the applicant has suffered hardship due to the continuance of the directions,
the Central Government may pay the applicant a suitable sum by way of solatium.
51
COMPULSORY LICENCE (Sections 84 – 94)
The patentee is entitled to give licence of right for making use of the patent to any person in
accordance with the procedure prescribed in the patent Act and Rules.
There are three types of licences, viz.,
1. Voluntary license
2. Compulsory licence
3. Licences of related patents.
1. Voluntary license
Voluntary license is where the patentee himself gives the right to another person voluntarily.
2. Compulsory licence
Chapter 26 of the Patent Act deals with compulsory licence. Compulsory licences are granted by
controller of patent. It can be granted
1. on application of any persons interested

2. by notification by Central Government
Grounds for grant of compulsory licences.
Section 83 of the patents act give the general principles applicable to the working of patented
inventions. These principles are
(a) that patents are granted to encourage inventions and to secure that the inventions are
worked in India on a commercial scale and to the fullest extent that is reasonably
practicable without undue delay;
(b) that they are not granted merely to enable patentees to enjoy a monopoly for the importation
of the patented article;
(c) that the protection and enforcement of patent rights contribute to the promotion of
technological innovation and to the transfer and dissemination of technology, to the mutual
advantage of producers and users of technological knowledge and in a manner conducive
to social and economic welfare, and to a balance of rights and obligations;
52
(d) that patents granted do not impede protection of public health and nutrition and should act
as instrument to promote public interest specially in sectors of vital importance for socio-
economic and technological development of India;
(e) that patents granted do not in any way prohibit Central Government in taking measures to
protect public health;
(f) that the patent right is not abused by the patentee or person deriving title or interest on
patent from the patentee, and the patentee or a person deriving title or interest on patent
from the patentee does not resort to practices which unreasonably restrain trade or
adversely affect the international transfer of technology; and
(g) that patents are granted to make the benefit of the patented invention available at
reasonably affordable prices to the public.
Granting of compulsory licenses

Under Section 84(1) of the Patents Act,1970 compulsory licences can be granted after the
expiration of three years from the grant of the patent on the grounds that:
1. reasonable requirements of the public have not been satisfied;
2. patented invention is not available to the public at a reasonably affordable price; and
3. patented invention is not worked in the territory of India.
The Patent Act has included provisions as to what constitutes "requirements of the public".
Reasonable requirements of the public shall be deemed not to have been satisfied if-
(1) due to the refusal of the patentee to grant licence on reasonable terms,
(a) a trade or industry is prejudiced,
(b) demand for the patented article has not been met to an adequate extent,
(c) an export market of the patented article is not being supplied, or
(d) the development of commercial activities in India is prejudiced,
(2) imposition of condition by the patentee;
(3) non-working of the patent in the territory of India;
(4) working of the patented invention in the territory of India on a commercial scale is prevented
by the importation from abroad.
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A compulsory licence by notification by Central Government can be granted at any time after
the grant of the patent on such terms and conditions as the Controller thinks fit. The Controller
shall secure that the articles manufactured under the patent shall be made available to the pulic at
the lowest prices.
Ways of granting compulsory licenses
1. On application of any persons interested
As per Section 84, whenever the reasonable requirements of the public with respect to the
patented invention have not been satisfied or that the patented invention is not available to the
public at a reasonable price, any person who is interested may make, an application to the
controller, at any time after the expiration of three years from the date of sealing, praying for the
grant of a compulsory licence to work the patented invention.
In such a case, the controller may grant a compulsory licence, provided he takes into account
(a) nature of the invention and the measures already taken by the patentee or any licencee to
make full use of the invention;
(b) ability of the applicant to work the invention to the public advantage;
(c) capacity of the applicant to undertake the risk in providing capital and working the
invention.
The power to grant a compulsory licence is exercised in case of public need. If the patentee or
his licence fails to produce the patented article within the period of three years, the controller is
empowered to issue licence on public need. Any person including a licensee and the central
Government may make an application for compulsory licence.
M/s. Natco Pharma Ltd v M/s. Bayer Corporation
The Controller General of Patents, Designs and Trademarks has given a compulsory license
to Hyderabad based NATCO, a local drug maker to manufacture and sell its generic version of
German multinational Bayer's patent-protected cancer medicine, Nexavar (Sorafenib tosylate), at
about 30 times lower than charged by its Bayer Corporation.
54
Indian Patent Office's decision to allow Natco Pharma to sell Bayer's patented cancer drug
Nexavar on the grounds that Bayer could not be able to make the liver and kidney cancer drug
available to a majority of needy patients because of its high cost is a historic initiative. Nexavar
helps extend life by a few months, and about 8,000 patients in advanced stages of renal cancer are
in need of the drug. As per TRIPS agreement, a compulsory license can be invoked by a national
government allowing someone else to produce a patented product or process without the consent
of the patent owner. It is done for the cause of public health. The license was valid till expiry of
the patent in 2021 as the Bayer has filed for the patent in 2001 and has been granted the same in
2008. The drug will be available to the public at a cost of Rs. 8,880 for a pack of 120 tablets (one
month's therapy) as against Rs. 2.8 lakhs sold by Bayer. In the past, Bayer has dragged Natco and
Cipla to court with a patent infringement suit for producing low-cost versions of Nexavar. Now
Cipla is also selling the product at a slightly higher price of Rs. 28,000. The government orders
also make it necessary for Natco to supply the drug free of cost to at least 600 needy and deserving
patients per year. Natco is expecting revenue of Rs. 25-30 crore per year thus, causing an increase
of 6.4% in its share. In addition to this Natco will have to pay 6% royalty payment on net sales to
Bayer on quarterly basis and will have to manufacture the drug only at its own plant since it is not
allowed to outsource production.
Reasons behind the compulsory licensing: There are three main reasons behind this licensing to
Natco Pharma. First, the German firm was able to supply its drugs to only 2 per cent of the
country's patient population and did not meet the reasonable public criteria requirement. Second,
its prices were not reasonably affordable, and third, it was imported and not manufactured in the
country and Bayer did not import the drug at all in 2008 and imported in small quantities in 2009
and 2010 thus making it almost insufficient to meet the requirements.
In 2011, M/s. Natco Pharma Ltd. filed an application for compulsory Licence under Section
84 (1) of the Patent Act 1970, seeking the same from M/s. Bayer on the ground that it can produce
the same drug at a cost of Rs. 8800/ for one month as compared to Rs. 2,80,428/- charged by the
patentee. After hearing both the parties, Mr. P.H. Kurien, the controller of patents granted the first
compulsory licence in India to M/s. Natco Pharma Ltd. in Patent No. 215758 granted to M/s. Bayer
Corporation, subject to the usual conditions of such grant. This marks a milestone in the history of
compulsory licensing in India.
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General purposes for granting compulsory licences. –
As per Section 89 of The Patents Act, 1970 the general purposes for granting compulsory licences
are
(a) that patented inventions are worked on a commercial scale in the territory of India without
undue delay and to the fullest extent that is reasonably practicable;
(b) that the interests of any person for the time being working or developing an invention in
the territory of India under the protection of a patent are not unfairly prejudiced.
Terms and conditions of compulsory licences.

As per Section 90 of The Patents Act, 1970, terms and conditions of compulsory licences are:
(1) reasonable royalty and remuneration to the patentee or other person beneficially entitled to
the patent
(2) working of patented invention to the fullest extent by the person to whom the licence is
granted and with reasonable profit to him;
(3) availability of patented articles to the public at reasonably affordable prices;
(4) the licence granted is a non-exclusive licence;
(5) the right of the licensee is non-assignable;
(6) the licence is for the balance term of the patent unless a shorter term is consistent with
public interest;
2. By notifications by Central Government

As per Section 92 in The Patents Act, 1970 if the Central Government is satisfied, in respect
of any patent in force in circumstances of national emergency or in circumstances of extreme
urgency or in case of public non-commercial use, that it is necessary that compulsory licenses
should be granted at any time after the sealing thereof to work the invention, it may make a
declaration to that effect, by notification in the Official Gazette.
The Controller should be satisfied that it is necessary in-

1. a circumstance of national emergency; or
2. a circumstance of extreme urgency; or
3. a case of public non-commercial use,
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which may arise or is required, as the case may be, including public health crises, relating to
Acquired Immuno Deficiency Syndrome, Human Immuno Deficiency Virus, tuberculosis, malaria
or other epidemics.
Termination of compulsory licences
A patentee can seek termination of compulsory licence granted under Section 84 by making
an application to Controller on the ground that the circumstances that gave rise to the grant of
compulsory licence no longer exist and such circumstances are unlikely to re-occur.
TRANSFER OF PATENT RIGHT
A patent is a transferable property. It is also a heritable property. The patentee can transfer
the patent by assignment or licence. When the patent right is transferred from patentee to another
person by operation of law it is called transmission.
1. Assignment (Sections 68 and 70)
Assignment means transfer of interest in the patent. Assignment may be whole or part of
the patent right. The person in whose favour patent right is assigned is known as 'assignee'. The
person who transfers the right is known as 'assignor'.
Assignment, may be of three types. They are:
(a) Legal Assignment
An assignment of an existing patent right through an agreement which has been duly
registered is a legal assignment. A legal assignee has the right to have his name entered in the
register of patents as proprietor of the patent. Sale of a patent right is an example of legal
assignment. So also gift.
(b) Equitable Assignment
Equitable Assignment results from the transfer of patent right without a formal agreement
which is to be registered with the controller. It may result from a letter written by the patentee
agreeing to assign the patent right with immediate effect. An assignee in such a case cannot enter
his name in the register as proprietor of patent. He can only have a notice of his interest entered in
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the register. He can convert the equitable assignment to legal assignment by getting a written
agreement to this effect and registering it with the controller.
(c) Mortgage
A mortgage is a form of assignment. A mortgage is a document transferring the patent

rights to the mortgagee with a view to secure the payment of a specified sum of money. The
mortgagee cannot register his name as proprietor of patent. He can register his name as a
mortgagee.
Assignment of patent shall be valid only if the following conditions are satisfied
• The assignment should be reduced to writing in a document containing all the terms and
conditions governing the rights and obligations between the parties.
• The written agreement should be registered with the controller.
• The application for registration of such deed of assignment is to be filed with the controller
within 6 months from the date of execution of the document.
2. Licence (Sections 84 to 94)
A patentee can transfer a right by licence agreement permitting the licencee to make use of
the invention. The licence agreement should contain the terms and conditions governing the
parties. A licence merely confers personal privilege to the licensee. There is no transfer of interest
in licence.
Licence may be different kinds. They are the following:
(a) Voluntary Licence
Voluntary licence is a written authority granted by the owner of patent to another person
to make use of the invention in the manner and the terms and conditions imposed in the licence
agreement. In the case of voluntary licence the controller or government shall have no role to play.
(b) Statutory Licence
In statutory licensing, the Controller and Central Government play an important role.
Compulsory licences and licences of right are examples of statutory licence. At any time after the
expiration of 3 years from the date of sealing of patent any person interested may make an
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application to the Controller alleging that reasonable requirements of public with respect to the
patented invention have not been satisfied or that the patented invention is not available to the
public at reasonable price. The applicant may seek the grant of a compulsory licence to work the
patented invention.
At any time after the expiration of three years from the sealing of the patent the Central
Government may make an application to the Controller for an order that the patent may be
endorsed with the word 'Licences of Right' on the ground that the requirements of public have not
been satisfied or that the patented invention is not available to the public at a reasonable price.
If the controller is satisfied about the allegation that the patented invention is not available,
he may make an order that the patent be endorsed with the word 'licences of right'. If the patent is
endorsed with the words 'licences of right any person interested in the working of the patented
invention may require the patentee to grant him a licence on mutual acceptable terms.
In case the terms are not settled mutually the Controller would decide the terms after giving
notice to the parties. The patentee has to give licence to the applicant as per the terms so fixed by
the Controller.
A licence which is valid and registered confers to the licencee the right to make use of
patented invention subject to the conditions and limitations imposed in the licence.
A licencee will have right to initiate proceedings against infringement of rights accruing to
him under the licence if he holds exclusive licence. An exclusive licence confers an exclusive right
to the licensee to make, distribute or sell the patented invention to the exclusion of all others. If
the licence is nonexclusive, the licensee cannot institute proceedings against infringement unless
there is a clause in the licence authority the licensee to institute such proceedings.
3. Transmission of patent
The patent right is heritable. When a patentee dies his interest in the patent devolve upon his
legal heirs. It is transmission of patent. The Government can acquire the patent. In such a case the
right of the patentee will be transferred to the Government by operation of law. In case of
bankruptcy or dissolution of a company, devolution of property takes place as in the case of any
other property.
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SURRENDER AND REVOCATION OF PATENT
A patent is a kind of limited monopoly granted to the true and first inventor as a reward for
the creation of something new and useful which might benefit the public. However, no patent is
absolute and can be revoked by the Government or be surrendered by the patentee under certain
circumstances. Chapter XII of the Act, 1970 in Sections 63 to 66 deal with the surrender and
revocation of patents.
A patent may be revoked by
1. Controller, Sections.63,85
2. High Court, Section 64
3. Central Government, Section 66
1. Revocation by controller
(a) When the patentee himself makes an application for surrender
(b) When central government or interested persons applies on ground of non-working of patent
(c) Central government gives direction on ground of atomic energy
(a) Surrender of patents
As per Section 63 in The Patents Act, 1970
• A patentee may, at any time by giving notice in the prescribed manner to the Controller,
offer to surrender his patent.
• Where such an offer is made, the Controller shall publish the offer in the prescribed manner
• Any person interested may, within the prescribed period after such publication, give notice
to the Controller of opposition to the surrender, and where any such notice is given the
Controller shall notify the patentee.
• If the Controller is satisfied after hearing the patentee and any opponent, that the patent
may properly be surrendered, he may accept the offer and by order, revoke the patent.
(b) Revocation of patents by the Controller for non-working
As per Section 85 of The Patents Act, 1970 were a compulsory licence has been granted, the
Central Government or any person interested may, after the expiration of two years from the date
of the order granting the first compulsory licence, apply to the Controller for an order revoking the
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patent on the ground that the patented invention has not been worked in the territory of India or
that reasonable requirements of the public with respect to the patented invention has not been
satisfied or that the patented invention is not available to the public at a reasonably affordable
price.
The Controller, if satisfied that the reasonable requirements of the public with respect to
the patented invention has not been satisfied or that patented invention has not been worked in the
territory of India or that the patented invention is not available to the public at a reasonably
affordable price, may make an order revoking the patent.
(c) Revocation of patent on directions from Government in cases relating to atomic energy.
-
Where at any time after grant of a patent, the Central Government is satisfied that a patent is for
an invention relating to atomic energy, for which no patent can be granted, it may direct the
Controller to revoke the patent, and thereupon the Controller, after giving notice, to the patentee
and every other person whose name has been entered in the register as having an interest in the
patent, and after giving them an opportunity of being heard, may revoke the patent.
2. Revocation of patent by High Court

As per Section 64, the patent may be revoked by the High Court on a petition of any person
interested or of the Central Government on the following grounds.
• If the invention claimed in the complete specification was already claimed in a claim of
earlier date and a patent is granted in India.
• If the patent was granted on an application of the person not entitled to apply to the patent.
• The patent was obtained wrongfully in contravention of the rights of the petitioner.
• The claim of complete specification is not an invention within the meaning of the Act.
• The invention is not new and it is publically known or used in India before the date of
application for patent.
• The invention is obvious or does not involve any inventive step.
• The invention is not useful.
• The complete specification does not sufficiently describe the Invention and the method by
which it is to be performed.
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• The patent was obtained on a false suggestion or representation.
• The subject matter of claim is not patentable under the Act.
• The invention claimed was secretly used in India.
• The claimed invention failed to disclose the requisite information regarding the foreign
application.
• The revocation is necessary in the interest of security of India.
In Star Textile Engineering Works Ltd v. James make and holding Ltd and others, the court
revoked the patent right granted for the reason that the complete specifications of the patent do not
sufficiently and clearly describe the invention and methods by which it was to be performed and
the specifications by themselves are not sufficient to enable a person in India possessing average
skill and knowledge of the art to which the invention relates to work that invention.
3. Revocation by Central Government

As per Section 66 in The Patents Act, 1970, where the Central Government is of opinion that
a patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to
the public, it may, after giving the patentee an opportunity to be heard, make a declaration to that
effect in the Official Gazette and thereupon the patent shall be deemed to be revoked.
INFRINGEMENT OF PATENT AND REMEDIES
The monopoly of a patentee over his patent may be violated by unscrupulous elements. If
the rights in relation to a patent are infringed, the patentee has a right to take recourse to legal
action. What constitutes infringement of a patent is not defined in the Patents Act, 1970. However,
it may be understood as violation of the monopoly rights of the patentee to make, use, exercise,
sell or distribute the invention in India.
Infringer is a person who actually manufactures a patented article without authorisation, or

uses a patented process likewise. Similarly, anyone who uses, exercises, sell or distributes a
patented article or process without any lawful authority would be an infringer. However, an
innocent use of a patent, use for experiments and instruction, use of invention in foreign vessels
do not amount to infringements.
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Where the infringer has taken all the essential features claimed in the patent, while
manufacturing an article, it will be a direct infringement. Where he uses all features claimed in the
patent but alters one or more unessential features, then also it will be an infringement but since it
is indirect it is called 'colourable imitation'. Copying the 'essential features' of the invention is
sometimes referred to as taking the 'pith and marrow' of the invention
Who can file a suit ?
The right to sue for infringement belongs to the patentee. The exclusive licensee, if the
licence is registered, may file a suit. Similarly, a compulsory licencee, an assignee and a co-owner
also may file a suit for infringement.
Who may be sued?
Any person who infringes the patent, may be sued for infringement. Therefore,
manufacturers, importers, and dealers, their servants and agents, sometimes even users of the
patented articles may be made defendants in a suit for infringement. A person who threatens to
infringe may also be sued. In the case of a company guilty of infringement, its directors cannot be
personally sued for infringement unless. the evidence establishes the relationship of principal and
agent between the directors and the company.
Limitation period
The period of limitation for bringing the suit is three years from the date of infringement.
No notice of infringement to the defendant before filing the suit is necessary.
Factors which constitute infringement
1. Colourable imitation of invention

2. Immaterial variations in invention
3. Mechanical equivalents
4. Taking essential features of the invention
• Where the infringer has taken all the essential features claimed in the patent but has altered
one or more unessential features, or has added some additional feature which may or may not
of itself involves a new inventive step, it is called a 'colourable imitation’.
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• A person is guilty of infringement if he makes what is in substance the equivalent of the
patented article. He cannot get out of it by some trifling or unessential variation. One cannot
avoid infringement by substituting an obvious equivalent for an unessential integer.
• Infringement by mechanical variants is when there is a substitution for those features so as to
get same purpose and same result
• Copying the 'essential features' of the invention is sometimes referred to as taking the 'pith and
marrow of the invention.
• Chemical equivalents -The use of chemical equivalents in place of chemicals used in a patented
process will not avoid infringement if the chemical equivalents, were known at the time of the
specification. But if they were not so known the use of such chemical equivalents will not
infringe the patent.
Defences available to Defendants
Every ground on which a patent may be revoked, will be available as a ground for defence. A
defendant in a suit for infringement may take one or more of the defences mentioned hereunder;
that:
• plaintiff is not entitled to sue for infringement;

• the allegation of infringements is false:
• there was permission or licence to use the Invention;
• the principle of estoppel or res judicata is attracted;
• the claims alleged to be infringed are invalid:
• the existence of a restrictive contract is declared unlawful
• the act complained is covered within the scope of Innocent infringement or done after lapse
of patent; and
• the alleged infringement of the patent which is not novel or it is obvious.
Reliefs that may be granted
The reliefs available to a successful plaintiff in a suit for infringement include
(1) an injunction and/or

(2) damages or
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(3) an account of profits: or
(4) an order for deliver-up or destruction
(5) certificate of validity and/or
(6) costs.
The courts take into consideration, the terms of patent. specification, extent of violation, and
balance of convenience, while deciding the suits.
Injunction
An injunction is an order of the court prohibiting someone from doing a specified act to undo
some wrong or injury. Injunctions are of two types temporary and perpetual.
An interlocutory or temporary injunction may granted at any time after the institution of the
suit and before the final decision.
The following are the main principles which govern the courts in granting temporary
injunction.
1) The plaintiff must establish a prima-facie case in his favour

2) He must establish a balance of convenience in his favour
In Hindustan Lever Ltd v. Godrej Soaps Ltd. And others the plaintiff filed a suit for injunction
for infringement of, patent relating to soaps manufactured in accordance with the patent and
marked under the trademark 'VIGIL. The defendant contended that making detergent bar
containing varying amounts of percentage of soaps including non -soap detergent and water
insoluble fillers including starch and varying ranges of moisture is not new and therefore due to
non-novelty it cannot be a subject matter of the patent. Accepting this contention, the court refused
to grant interim injunction.
Perpetual injunction is granted of the end of the trial by a decree. The time for which perpetual
injunction is to be in force is until expiry of the period of patent.
Damages
A successful plaintiff in a suit for infringement is entitled to relief of compensation or account

of profits. Under the following circumstances damages or account of profit will not be granted.
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1) If the infringement was without knowledge of the patent right.
2) If the infringement was committed after the failure to pay renewal fee.
The amount of damages shall be proportionate to the injuries suffered by the plaintiff. It should
put the injured party in the same position as if there was not infringement.
In India, however, the Civil Procedure Code, 1908, provides the jurisdiction to the Courts vide
Order XXXVIII, Rule 5 to grant such remedy. It states that if, at any stage of a suit, the court is
satisfied...that the defendant, with intent to obstruct or delay the execution of any decree that may
be passed against him, is about to dispose of, or remove from the Court's jurisdiction, the whole
or any part of his property, the court may direct the defendant... to furnish security in a specified
sum, and place at the court's disposal the property or equivalent value...as may be sufficient to
satisfy the decree against him.
In Anton Piller v Manufacturing Processes Ltd the plaintiffs made electrical equipment and
employed the defendants as their agent in the UK. They suspected that he was selling their
technical drawings to competitors and so applied for an order. The court held that an ex parte
mandatory injunction would be granted, to the effect that the plaintiff could enter the defendant's
premises and inspect relevant documents.
PATENT AGENT
A patent agent is a person who is entitled to practice before the controller and prepare all
documents, transact all business and discharge such other functions as may be prescribed by the
controller.
To practice as a Patent Agent a person has to get his name registered as a patent agent by
making an application in the prescribed form at the head office or patent office.
Qualifications of Patent Agent
1) He should be a citizen of India.

2) He should have completed 21 years of age
3) He should be a degree holder from any recognized university and has passed qualifying
examination for the purpose or should be an advocate.
4) He should have paid the prescribed fee.
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Disqualifications
A person shall not be eligible to be registered as a Patent Agent if
1) he has been adjudged to be of unsound mind by a competent court.

2) he is an undischarged insolvent
3) he has been convicted by a competent court to undergo a term of imprisonment.
4) he being an advocate has been guilty of professional misconduct
5) he being a Chartered Accountant has been guilty of negligence or misconduct.
Licences of Right
A patent may be endorsed with the words "Licences of Right" after three years from the date of
sealing the patent. Where so endorsed any person who is interested in working the patented
invention may require the patentee to grant him a licence. If the terms of the licence cannot be
mutually agreed upon they will be settled by the Controller. Thus any person may obtain a licence
as a matter of right without having to establish a case as in a compulsory licence. Patents for
inventions relating to food and medicine are deemed to be endorsed with the words "Licences of
Right" immediately on completion of three years from the date of sealing of the patent.
Revocation for non-working
It may so happen that in spite of the grant of a compulsory licence or the endorsement "Licences
of right" having been made or deemed to have been made, the reasonable requirement of the public
with respect to the patented invention remains unsatisfied or that the patented invention is not
available to the public at a reasonably affordable price. In such a case the patent may be revoked
by the Controller under the provisions of s. 89 on application made to him by either the Central
Government or any person interested.
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UNIT 4
Copyright – Concept – Subject matter – ownership – registration - term- Rights: Economic, moral,
performer's, broadcasting – Assignment – Infringement – Remedies - Offences and Penalties
Copyright deals with the rights of intellectual creators in their creation. The copyright law
deals with the particular forms of creativity, concerned primarily with mass communication. The
Copyright Act, 1957 protects original literary, dramatic, musical and artistic works and
cinematograph films and sound recordings from unauthorized uses. There is no copyright
protection for ideas, procedures, methods of operation or mathematical concepts as such.
Copyright ensures certain minimum safeguards of the rights of authors over their creations,
thereby protecting and rewarding creativity. Creativity being the keystone of progress, no civilized
society can afford to ignore the basic requirements of encouraging the same.
Meaning of Copyright:
Section 14 of the act defines copyright as:
1. In case of literary, dramatic or musical work:
a) Reproducing the work in any material form which includes storing of it in any medium by
electronic means,
b) Issuing copies of the work to the public which are not already in circulation,
c) Performing the work in public or communicating it to the public,
d) Making any cinematograph film or sound recording in the respect of work,
e) Making any translation or adaptation of the work.
2. In case of a computer programme:
a) To do any of the acts specified in respect of a literary, dramatic or musical works,
b) To sell or give on commercial rental or offer for sale or for commercial rental any copy
of the computer programme.
3. In the case of artistic works:
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a) To reproduce the work in any material from including storing of it in any medium by
electronic or other means, depiction in three dimensions of a two dimensional work
and depiction in two dimensions of a three dimensional work,
b) Communicating the work to the public,
c) Issuing copies of work to the public which are not already in existence,
d) Including work in any cinematograph films,
e) Making adaptation of the work, and to do any of the above acts in relation to an
adaptation of the work.
4. In the case of cinematograph film:
a) To make a copy of the film, including photograph of any image forming part thereof
or storing of it in any medium by electronic means or otherwise.
b) To sell or give on commercial rental or offer for sale or for such rental, any copy of
the film,
c) To communicate the film to the public.
5. In the case of sound recording:
a) To make any other sound recording embodying it “including storing of it in any

medium by electronic or other means,
b) To sell or give on commercial rental or offer for sale or for such rental, any copy of
the sound recording,
c) To communicate the sound recording to the public.
TERM OF COPYRIGHT (SECTIONS 25 TO 29)
(i) For published literary, dramatic, musical and artistic work (other than a photograph)
(Section 22). : The term is 60 years from the beginning of the calendar year next following
the year in which author dies. In other words the copyright shall exist till the life time of
the author plus 60 years after his death.
(ii) Anonymous and pseudonymous works (Section 23)-An anonymous work is that work
in which author's identity is not disclosed, whereas in pseudonymous work the real identity
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of author is concealed and a fictitious name of author is exhibited. In both these categories
of work the copyright shall subsist for 60 years from date of publication. However, if before
expiry of 60 years, the real identity of author is disclosed, the term shall extend to life time
of author plus 60 years.
(iii) Posthumous work (Section 24). When the work is published after death of the author, it
is called as posthumous work. The term of copyright shall be 60 years from the date of
publication after death. However, in case of joint authorship, the 60 years will be computed
after the death of last of joint authors.
(iv) Photographs (Section 25).-Photograph has been defined under Section 2(3) as including
a photolithograph and any work produced by a process analogous to photography but does
not include any part of cinematograph film. Photographs; under Amendment Act, 2012 are
treated as artistic work and instead of enjoying a sixty year post-publication term, the
copyright in photographs now effectively subsist till sixty years after the death of the
photographer.
(v) Cinematograph films (Section 26).-Cinematograph film' has been construed as including
video films, T.V. Serials, cinema, and documentary. The term of copyright has been limited
to 60 years from the publication of film. It may be mentioned that the term as initially fixed
was 25 years which was raised to 50 years in the Amendment Act, 1992 and it was further
raised to 60 years.
(vi) Sound recording (Section 27). The term is fixed as 60 years from the publication of sound
recording. The term was raised to sixty years in the Amendment Act, 1994.
(vii) Government works (Section 28). The copyright in respect of government works subsists
until 60 years from its publication.
(viii) Works of public undertakings (Section 28-A).'-The term of copyright will also be 60
years from publication of the work.
(ix) Works of International Organization (Section 29). The works of international
organization have been explained in Section 41. The copyright shall subsist until 60 years
from the publication of the work.
OBJECTIVES OF COPYRIGHT LAW
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Copyright is primarily intended to advance science and useful art and to compensate
authors for their labour. In order to do this, copyright guarantees authors the right to their creative
expression while allowing others to openly expand upon the concepts and knowledge presented in
a work. The primary goals of copyright law are twofold. First and foremost, copyright laws were
created by nations to guarantee the original expression of writers, songwriters, designers, artists,
and other creatives, as well as film and sound recording producers, who risked their money to
present their works to the public.
Second, a work’s knowledge and suggestions can be freely expanded upon by others,
thanks to copyright legislation. Additionally, it permits some unrestricted uses of copyrighted
content. The Copyright Act of 1957 outlines the range of these permissible uses. To establish
harmony between the rights of the copyright owner and the welfare of people to the greatest
possible degree in the interest of society, measures relating to free use are included in the Act. The
Madras High Court held that “copyright law is to preserve the fruits of a man’s effort, labour,
talent, or test from annexation by other persons” in Sulamangalam R. Jayalakshmi v. Meta
Musicals, Chennai (2000).
CHARACTERISTICS OF COPYRIGHT
(i) Creation of statute.-The copyright is granted and protected according to Copyright Act.
There is no common law right. No copyright can exist in any work except as provided
in Section 16 which reads as under :- "No copyright except as provided in this Act.-No
person shall be entitled to copyright or any similar right in any work, whether published
or unpublished, otherwise than under and in accordance with the provisions of this Act
or any other law for the time being in force, but nothing in this section shall be construed
as abrogating any right or jurisdiction to restrain breach of trust or confidence."
(ii) Multiple Rights: Copyright is not a single right, rather it is a bundle of rights in the
same work. It comprises of, in case of literary work right to reproduction, right to
translation, right to adaptation, right to dramatic and cinematographic version, right to
public peformation and right to serial publication. It is also in the form of monopoly
right restraining others from exercising all or any of the rights and it is also a negative
right, restraining others from copying or reproducing the work
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(iii) The work must be original: The first and essential requirement for claiming copyright
is the originality of work. There cannot be a claim of copyright in a copy of any other's
work or in a similar work. Use of original skill and labour is essential to acquire
copyright in a work.
(iv) Copyright exists in expression of idea and not mere idea: The copyright exists only
in expression of idea in some material form, i.e. book, film, photograph or musical tone.
Mere idea unless expressed is not capable of claiming any copyright. The Supreme
Court of India in a leading case R.G. Anand v. Delux Films, has declared that there can
be no copyright in an idea, subject-matter, themes, plot or historical facts.
R.G. Anand v. Delux Films
‘Hum Hindustani’ was a play written by Mr. R.G. Anand, the in 1953. It was a hit amongst
the masses when performed the first time and was re-performed in the subsequent years. This
success got the appellant thinking about turning the play into a film. The respondent, a film
producing company, somehow came to know of the appellant’s intent and approached him to take
things forward in this respect. However, even after a brief discussion in 1955, the respondent did
not revert to the appellant on the same.
The appellant got wind that the respondent was making a film titled ‘New Delhi’, which he
believed was an imitation of his famous play Hum Hindustani. When he pulled up the respondent
about it, the latter assured him that the film was not in any way a copy of his theatrical stage show
and he need not worry about it. But when the appellant watched it after the release in 1956, the
film managed to convince him that it was indeed a copy of his stage show.
Issue: The primary issue involved herein was whether the film titled ‘New Delhi’, created by the
respondent breaches the appellant’s copyright for the play titled ‘Hum Hindustani’ or not.
The Supreme Court stated that even though the film and the play had a foundation based
on the idea of provincialism, similarities were negligible. Both of them were very different in their
context. There were various plots in the film that were not present in the play. The apex court also
stated that an ordinary man would not scan any similarity between the two. Thus, it was held that
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there was no breach of the appellant’s copyright. The Supreme Court accordingly rejected the
appellant’s plea, upholding the Trial Court and the Delhi High Court’s decision.
SUBJECT MATTER OF COPYRIGHT
All subject matters protected by copyright are called ‘works’. Thus according to Section
13 of The Copyright Act 1957, it may be subjected for the following works:
• Original Literary Work,

• Original Dramatic work,
• Original Musical work,
• Original Artistic Work,
• Cinematography films, and
• Sound recordings.
Original Literary Work: It is the product of the human mind which may consist of a series of
verbal or numerical statements, not necessarily possessing aesthetic merit, capable of being
expressed in writing, and which has been arrived at by the exercise of substantial independent skill,
creative labor, or judgment. The Copyright Act, 1957 provides an inclusive definition of literary
work, according to which the literary work includes computer programming, tablets, and
compilations including computer databases.
Original Dramatic Work: According to the Copyright Act,1957, the dramatic work includes any
piece for recitation, choreographic work or entertainment in dumb shows, the scenic arrangement
or acting form which is fixed in writing or otherwise but does not include a cinematographic film.
Since the definition is an inclusive one, the other things fall within the general meaning of dramatic
work, and may also be covered by the definition.
Original Musical Work: According to the Copyright Act, 1957, musical work means any work
consisting of music and includes any graphical notion of such work, but does not include any
words or any action intended to be sung, spoken or performed with the music. In order to qualify
for copyright protection, a musical work must be original.
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Original Artistic Work: According to the Copyright Act, 1957, artistic work includes any
painting, sculpture, drawing, or engraving photograph of any work possessing artistic qualities.
However, it also includes the architecture and artistic craftsmanship of such works.
Cinematographic Films: According to the Copyright Act,1957 cinematographic films includes

any work of visual recording and a sound recording accompanying such visual recording and the
expression cinematograph shall be construed as including any work produced by any process
analogous to cinematographic including video films.
Sound Recording: According to The Copyright Act, 1957, sound recording suggests a recording
of sounds from which that sound may be produced regardless of the medium on which such
recording is made or the method by which the sounds are produced.
DETERMINATION OF OWNERSHIP AND RIGHTS OF OWNER OF COPYRIGHT

The claim of first ownership is based on the authorship. Under Section 17 the first
ownership of copyright is given to the author of the work.
Who is Author
The expression 'author' has been defined under Section 2 (d) of the Act.
Following category of persons will be deemed as 'author' in relation to various categories of work:
1. Literary or dramatic work, the author of the work.

2. Musical work, the composer in relation to a musical work
3. An artistic work other than a photograph, the artist.
4. Photograph, the person who takes the photograph.
5. Cinematograph film, the producer.
6. Sound recording, the producer.
7. Literary, dramatic, musical or artistic work which is computer generated, the
person who causes the work to be created.
In Tata Consultancy Services v. State of A.P., the Supreme Court has made it clear that
copyright remains with originator of the intellectual property (in this case the software).
Authorship Claim during Employment or Contract of Service
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The claim of ownership by author is subject to some limitations. According to Section
17(a), in case of literary, dramatic and artistic work where the work is made by an employee in the
course of employment by the proprietor of a newspaper, magazine or similar periodical under a
contract of service or apprenticeship, for the publication in a newspaper, magazine or similar
periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first
owner of the work in so far as the copyright relates to publication of the work in any newspaper,
magazine or similar periodical or to the reproduction of the work for the purpose of its being so
published, but in all other respects the author shall be the first owner of the copyright of the work.
The general principle is that if a person is employed to do a work and paid for the work,
the product of his labour, subject to any agreement to the contrary, belongs to the employer.
However, any work done by employee or agent outside his employment or contract belongs to
him.
In V.T. Thomas (Toms) v. Manorama (1989), V.T. Thomas (Toms), a famous cartoonist,
was employed by Malayala Manorama Co. Ltd in the year 1967 to draw the cartoon 'Boban and
Molly' in the weekly called 'Manorama'. He retired from that concern on 30th June 1987. Even
after retirement Toms continued his artistic productions and those presentations appeared in a rival
publication - the Kala Kaumudi. Then Manorama filed a suit alleging that their Copyright to draw
the childish characters, 'Boban and Molly' is violated by the appellant and obtained an order of
interim injunction against Toms. Against the order of interim injunction Toms filed an appeal.
While deciding the appeal it was held that as regards works of Toms, made and published in
Manorama during the time he was an employee of Manorama, the copyright vest with Manorama
and thus neither Toms nor any other publisher could have right to republish the series of cartoons
drawn by Toms and published by Manorama. As regards future productions of Toms, there is no
inhibition arising out of statutory sanction under section 17(c). He is free to draw. He is
independent to take his brush and draw the lines and create the figures. He can give life to his
characters as he wishes; and he can present them in such media as he prefers. Thus in the case of
termination of the employment the terminated employee is entitled to the ownership of copyright
in the works created subsequently and the former employer has no copyright over the subsequent
works so created.
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In Hafiz v. Abdurahiman Makhdoomi, the Kerala High Court held that the translator of
Quran can claim copyright over the same and not over the Quran. In translating Quran the plaintiff
/ respondent spent about 2 years and during this period of two years, he coined words and in fact
he did literary work. By doing so, he has obtained copyright over the same. The appellant copied
the same in verbatim. The court held that even in the translation where brain, labour and skill have
been used or where some literary works are carried out, the person who did the said work in the
translation is the author having copyright over the same. The Court granted injunction against the
defendant/appellant.
In Acqua Minerals Ltd. vs. Pramod Bose, the plaintiff was the owner/regd. proprietor of
TM 'BISLERI', for carrying the business of bottled mineral water. After acquiring a
distinctiveness/reputation, it wanted to register a domain name called 'Bisleri. Com', to have easy
access to its consumers, manufactures or traders etc., therefore applied for registration. However,
they came to know that the defendants had already registered the said name "illegally and
unlawfully" with the Internet Corporation for Assigned Name and Numbers (ICANN), eventhough
they also had other domain name viz; infor@cyberworld.com'. After going through the facts of the
case, the court held that the registration of the domain name 'Bisleri.com' by defendants,
eventhough dealing with a different business was in 'bad faith', and injucted them from using the
same in future.
Where the work is created by active and close intellectual collaboration and co-operation
between two persons, both are joint authors entitled to ownership of copyright. In Najma Heptulla
v. Orient Longman Ltd., the Delhi High Court observed that both narrator and writer shall have
to be regarded as joint author of the work. In this case, the plaintiff is the legal heir of the author
of the book India Wins Freedom. The defendant is the publisher of said book. The defendant
entered into an agreement with one Prof. Humayun Kabir to make contents of the book known to
the public. The plaintiff obtained an injunction restraining defendants from breaking seals of
covers of the complete book India Wins Freedom and from making its contents known to the
public. According to the preface to the said book written by Kabir, Maulana Azad used to describe
his experiences in Urdu, on the basis of which a draft in English would be prepared by Kabir. The
court held that active and close intellectual collaboration and cooperation between Maulana Azad
implied that Kabir is a joint author of the book with Maulana Azad. Hence, the defendants were
76
allowed to break the seals of the covers of the complete book India Wins Freedom and make its
contents known to the public.
Limitation on copyright
The statutory rights conferred on a copyright owner is not absolute and unconditional.
There are certain statutory limitations placed on the abovementioned right. They are related to
grant of compulsory licence in case the work in withheld from public' and use of copyright work
by other persons in specified circumstances without infringement.
ESSENTIAL CONDITIONS FOR THE SUBSISTENCE OF COPYRIGHT
Inorder to subsist copyright the following conditions should be satisfied.
a) In the case of any published work, the work should be first published in India.
b) If the work was first-published outside India, the author should be a citizen of India on the
date of such publication.
c) In the case of publication outside India, if the author was dead on the date of publication,
he should be a citizen of India on the date of his death.
d) In the case of an unpublished work (other than a work of architecture), the author should
be, at the date of making of the work, a citizen of India or domiciled in India.
e) In the case of a work of architecture, the work should be located in India.
f) In the case of cinematograph film, if a substantial part of the film is an infringement of
copy right in any other work, copyright shall not subsist. The cinematograph should not be
an infringement of the copyright in any other work.
g) In any sound recording, made in respect of a literary, dramatic or musical work, if in
making the sound recording copy right in such work has been infringed, copy right not
subsist for the new work.
GENERAL PRINCIPLES RELATING TO COPYRIGHT
1. Non-registration of copyright does not affect the copyright. Registration is not a pre -
condition for bringing an action for infringement of copyright.
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In Nava Sahitya Prakashan v. Anand Kumar (1981), it was held that registration is only
optional. Registration serves the purpose of showing a prima facie proof of possession of
copyright in the person.
2. There can be no copyright in an idea. Copyright subsists only in the form to which the ideas
are translated.
In Civic Chandren v. Animini Amma the defendant appellant Mr. Civic Chandran
had written a drama 'Ningal Are Communistakki’ and published it in 1995 in the annual
issue of 'India Today'. Later on the defendant / appellant had started preparations to play
the drama on stages and given wide publicity. At that time the plaintiffs / respondents
instituted a suit before the Additional District Judge, Alleppy, alleging infringement of the
copyright of the famous drama 'Ningal enne Communistakki' written in the year 1952 by
Late Toppil Bhasi, one of the famous Malayalam playwright. The plaintiffs were the legal
representatives of Thoppil Bhasi. The Additional District Judge granted temporary
injunction against appellant and restrained him from playing the drama. Against the order,
the appellant preferred an appeal to the High Court of Kerala. The High Court held that
there can be no copyright in an idea, subject-matter, themes, plots or historical or legendary
facts and violation of copyright in such cases is confined to the form, manner and
arrangement and expression of the idea by the author of the copyrighted work.
3. What is protected under copyright is not original thought or information but the protection
is to the original expression, thought or information in some concrete form.
4. If theme is the same but presented and treated differently, the subsequent work becomes a
completely new work and the question of violation of copyright does not arise.
5. Copyright Act does not require that the thought must necessarily be original or novel.
6. In order to get copyright the work must not be copies from another work. The manner of
expression of thought must be original. The expenditure of skill and labour in the manner
of expression must be original.
In Jagadesh Prasad V Parameshwar the court held that no original thought or original
research is required to treat a literary work as original.
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In R.G.Anand v. M/s Deluxe Film, the Supreme Court held that there can be no copyright in
any idea, subject matter, themes, plots or historical or legendary facts. What is required for
copyright is originality in the form of expression.
RIGHTS OF COPYRIGHT OWNERS
The Copyright owners enjoy many rights in respect of the artistic, dramatic and literary
works and other subject matters of copyright. Apart from those rights the copyright owners enjoy
the following rights also.
1. Right of Assignment
The owner of the copyright in an existing work or the prospective owner of the copyright in a
future work has the right to assign copyright to any person. The copyright may be assigned either
wholly or partially. Therefore there is an absolute freedom given to the owner of the copyright to
enter into a contract of assignment. However in the case of assignment of copyright in any future
work, the assignment will take effect only when the work comes into existence. Thus copyright in
a future work cannot be assigned effectively, unless it comes into existence.
The person who assigns the copyright is called the assignor and the person to whom it is
assigned is called the assignee. The effect of the assignment is that, the assignee becomes entitled
to any right comprised in the copyright and will be treated as the owner of the copyright for the
purposes of the Act, in respect of the rights so assigned. In respect of the rights not specifically
assigned, the assignor will be treated as the owner of copyright. In the case of assignment of future
works, the 'assignee' includes the legal representatives of the assignee, if the original assignee dies
before the work comes into existence. In the case of joint ownership of copyright, which is a bundle
of rights and several rights comprising copyright that may be owned by different persons,
assignment may be done by one person.'
Under Section 19 of the Act, the mode of assignment of copyright is clearly mentioned. The
conditions for valid assignment are as under-
i. Assignment of copyright should be in writing and signed by the assignor or his

authorised agent. Therefore oral assignment of copyright is neither permissible nor
valid.
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ii. Assignment should identity the work, specify the rights assigned and the duration and
territorial extent of such assignment; and
iii. It should specify the amount of royalty if any, payable to the author or his legal heirs
during the currency of the assignment.
A deed of assignment of copyright is not compulsorily registrable. The assignment is

subject to revision, extension or termination on terms mutually agreed upon by the parties. Failure
to exercise the rights assigned, within a period of one year from the date of assignment will have
the effect of lapse of assignment after the expiry of the said period unless otherwise specified in
the agreement of assignment.
If the period of assignment is not stated, it is deemed that it will be 5 years from the date
of assignment. If the territorial extent is not stated, it will be presumed to extend to India.
2. Right of author to relinquish copyright
The author of a work has a right to relinquish all or any of the rights in the copyright in the
work, by giving notice to the Registrar of copyrights. The effect of such notice is that from the
date of notice, all his rights cease to exist. However, such relinquishment of all or any rights
comprised in the copyright in a work, does not affect any rights subsisting in favour of any person
on the date of notice. In other words, a copyright owner can relinquish only those rights which he
can, on his own, without affecting the rights of other persons like assignees.
3. Right to grant licences
The owner of the copyright in any existing work may grant his interest in the right by licence
in writing signed by him. Even a prospective owner of the copyright in any future work may also
grant licence in respect of such work, provided that the licence will take effect only when the work
comes into existence. If the licence of a future work dies before the work comes into existence, his
legal representatives, in the absence of any contrary agreement will be entitled to the benefit of
such licence.
A joint owner of a copyright cannot, without the consent of the other joint owner grant a licence
or interest in it and the other owner aggrieved by such grant can sue the licensee for infringement
of the right. The joint owners guilty of such dealing will also be answerable to the owners.
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The Copyright Act, 1957 also provides for COMPULSORY LICENSING in works withheld
from the public. Under section 31 of the Act, if at any time during the term of copyright in any
Indian work which has been published or performed in public, a complaint is made to the copyright
Board that the owner of copyright in the work-
(a) has refused to republish or allow the republication of the work or has refused to
allow the performance in public of the work, and by reason of such refusal the work
is withheld from the public; or
(b) has refused to allow communication to the public by broadcast, of such work or in
the case of a sound recording, the work recorded in such sound recordings, on terms
which the complainant considers reasonable;
the copyright Board, after giving to the owner of the copyright in the work a reasonable opportunity
of being heard and after holding such inquiry as it deems fit, may, if it is satisfied that the grounds
for such refusal are not reasonable, direct the Registrar of copyright to grant to the complainant a
licence to republish the work, perform the work in public, in payment to the owner of copyright of
such compensation and subject to such other conditions or terms.
Generally this provision is invoked in the larger interest of the society. Similarly there is a
provision for granting compulsory licensing in unpublished Indian works.
4. Broadcast Reproduction right
Every Broadcasting organisation has a special right under the Act, known as "broadcast
reproduction right" in respect of its broadcasts, which subsists until 25 years from the beginning
of the calender year next, following the year in which the broadcast is made. During the subsistence
of a broadcast reproduction right in relation to any broadcast, no person can do any of the following
acts of the broadcast or any substantial part of it, without the licence of the owner of such right-
(a) re-broadcasting of the broadcast; or

(b) causing the broadcast to be heard or seen by the public on payment of any charges; or
(c) making any sound recording or visual recording of the broadcast; or
(d) making any reproduction of such sound recording or visual recording, where the same
was done without any licence; or
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(e) selling or hiring to the public, or offering to do it, any sound recording or visual
recording.
If any person does any of the aforementioned acts without the licence of the owner, it would
amount to infringement of broadcast reproduction right. However no broadcast reproduction right
will be deemed to be infringed by making any sound recording or visual recording for the private
use of the person making such recording or solely for the purpose of bonafide teaching or research
or using the same in the reporting of current events. But such use must be consistent with 'fair
dealing
5. Performer's rights
Where any performer appears or engages in any performance, he will be entitled to a special
right known as the "performer's right" in relation to such performance, which subsists for 50 years
from the beginning of the calender year next, following the year in which the performance is made.
During the continuance of a performer's right in relation to any performance, no person can do the
following acts without the consent of the performer in respect of the performance.
(a) making a sound recording or visual recording of the performance; or

(b) reproduction thereof; or
(c) broadcasting the performance; or
(d) communicating the performance to the public;
However these restrictions are not applicable, once a performer has consented to the
incorporation of his performance in a cinematograph film. Similarly the performer's right will not
be deemed to be infringed if its use is made for private use, bonafide teaching or research, or for
reporting of current events etc.
Every performance has to be live in the first instance, whether it is before an audience or in
a studio. If this performance is recorded and thereafter exploited without the permission of the
performer then the performer's right is infringed.
6. Right to enter names in Register of Copyrights and other incidental Rights
Registration of copyright is not necessary and it is not a condition precedent for maintaining a
suit for damages for infringement of copyright." Incidental to the above right to get his name
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entered in the copyright register are other rights like the right to get the entries corrected in the
Register of copyrights' to get the entries rectified by the copyright Board? and to get the entries in
the Register Published.
7. Special Rights of Authors
Independent of the author's copyright and even after the assignment of the said copyright either
wholly or partly, the author of a work will have a special right-
(a) to claim authorship of the work;

(b) to restrain or claim damages in respect of any distortion, mutilation, modification done
to his work before the expiration of his copyright, if such distortion, mutilation,
modification or other act would be prejudicial to his honour or reputation.
The Author's Special Rights are also called moral rights or droit moral. They are parallel
to and independent of the author's economic rights.
The Berne Convention in Article 6 bis directs the member States to protect the moral rights
of authors which are (i) the paternity right i.e., the right to claim authorship of work and (ii) the
integrity rights i.e., the right to protect his honour and reputation.
In India Section 57 of the Copyright Act fulfills this obligation. The rights under Section
57 are independent of author's copyright and the remedies open to the author under Section 55. In
other words Section 57 confers additional rights on the author of a literary work as compared to
the owner of a general copyright. This is a special provision for the protection of special rights of
authors, the object of which is to put the intellectual property on higher footing than the normal
objects of copyright. These rights can be enforced even if the economic rights of the author are
transferred.
In K.P.M. Sundaram vs. Rattan Prakashan Mandir. The defendants had mutilated and
distorted the original works of the plaintiff, a reputed author of the works known as "principles of
Economics in Hindi & English, Text Book of Economics Theory in English and Theory of Income,
Price and Growth in English etc", by publishing various books in modified form as admitted by
the defendants. The defendants were restrained from printing, publishing and selling the books
written by the plaintiff till the disposal of suit.
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8. Resale Share right in original copies
In the case of resale for a price exceeding Rs. 10,000 of the original copy of a painting,
sculpture or drawing, or of the original manuscript of a literary, dramatic or musical work, the
author of such work if he was the first owner of rights under Section 17 of the Act have a right to
share in the resale price of such original copy or manuscript, notwithstanding any assignment of
copyright in such work.
9. Rights of owner against persons possessing or dealing with infringing copies
All infringing copies of any work in which copyright subsists or any of substantial parts
thereof, become the property of the owner of the copyright. He has the right to recover the
possession of the infringing copies unsold and the piece of copies sold. Further, the infringing
copies which have been sold being regarded as the property of the owner, he is entitled to the
money in which they were actually sold.
10. Right to sue for infringement
Where copyright in any work has been infringed, the owners of the copyright will be
entitled to all such remedies by way of (i) injunction (ii) damages (iii) accounts and otherwise.
Further, they also have a right to initiate criminal proceedings under Section 63 of the Act.
Amarnath Sehgal v Union of India: In this case, the plaintiff who was a famous sculptor kept his
master piece in Vigyan Bhawan for decoration the work remained there from 1962 to 1979. In
1979, the government proposed to remove the mural without plaintiffs permission and in the
process of removal, due to mishandling the mural got damaged and lost its aesthetic and market
value. The court passed mandatory injunction against the UOI directing it to return the mural to
the plaintiff within two weeks from the date of judgement. The court also granted damages to the
of Rs 5 lakhs and cost of suit to him.
REGISTRATION OF COPYRIGHT
Copyright is a statutory right and it can be enjoyed within the parameters of Copyright Act.
Although there is no provision in the Act which deprives an author of his rights thereunder merely
for non-registration of his copyright yet the registration of copyright offer some advantages over
non-registration. In other words the registration is optional but beneficial.
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Procedure for Registration
Section 44 makes it obligatory for every copyright office to maintain a register in the
prescribed form in which names or titles of works and names and addresses of authors, publishers
and owners of copyright may be entered on the application by interested person. Section 45 read
with rule 16 of Copyright Rules, 1958 prescribes detailed procedure for registration. The step-wise
formalities are as under :-
1. The author or publisher of, or the owner of or other person interested in the copyright in
any work may make an application in the prescribed form accompanied by prescribed fee
to the Registrar of Copyright for entering particulars of the work in the Register of
Copyright.
2. The persons applying for a copyright has to give notice of his application to every person
who claims or has any interest in the subject-matter of the copyright or disputes the rights
of the applicant to the copyright, for instance, in case of joint authorship when only one of
the authors makes an application, a notice of such an application is to be given to the other
author.
3. If no objection to such registration is received by the Registrar of Copyrights within thirty
days and he is satisfied by the correctness of the particulars given in the application, enter
the particulars in the Register of Copyrights.
4. If the Registrar of Copyright receives any objection to such registration within the time of
thirty days, he may, after holding such inquiry as he deems fit, enter such particulars of the
work in the Register of Copyrights as he deems proper.
5. The Registrar of Copyright shall, as soon as may be, send, wherever practicable, a copy of
the entries made in the Register to the parties concerned.
6. The appeal against decision of Registrar may be filed to Copyright Board within three
months.
Evidentiary Value of Register: As per Section 48, Register of Copyright is prima facie evidence
of the particulars entered therein and shall be admissible in evidence in all courts. This statutory
preference will help the owner of registered copyright an effective protection of his copyright
against infringement because the person who got the registration earlier can be presumed to be the
author or original creator of the work.'
85
Rectification of Register (Section 50): Registration obtained by fraud, mistake or suppression of
facts is liable to be expunged from Register of Copyright. Section 50 empowers Copyright Board
to rectify the Register after observing proper procedure. The Copyright Board, on application of
Registrar of Copyright or any person aggrieved, shall order the rectification of Register by-
(a) making of any entry wrongly omitted to be made in the register, or

(b) expunging of any entry wrongly made in the register, or
(c) correction of any error or defect in the register.
Appeals: An appeal will lie against a decision of the Registrar of Copyright, the Copyright Board,
the Magistrate in a criminal proceeding and judges in infringement suits. An appeal against the
decision of Registrar should be filed before the Copyright Board, which will lie to the High Court.
INFRINGEMENT OF COPYRIGHT
Infringement prima facie means unauthorized and illegal reproduction of work of others.
Under Section 51 of the Act the infringement of copyright in general sense has been explained.
According to Section 51 the copyright in a work shall be deemed to be infringed-
(a) when any person without a licence from the owner of the copyright or the Registrar of
Copyright, or in contravention of the conditions of a licence granted or any conditions imposed
by a competent authority under the Act-
i. does anything, the exclusive right of doing which is conferred upon the owner of the
copyright; or
ii. permits for profit any place to be used for the communication of the work to the
public where such communication constitutes an infringement of the copyright in the
work, unless he was not aware and had no reasonable grounds for believing that such
communication to the public would be an infringement of copyright; or
(b) where a person-
i. makes for sale or hire, or sells or lets for hire or by way of trade displays or offers for
sale or hire any infringing copies of the work, or
86
ii. distributes, either for the purpose of trade or to such an extent as to affect prejudicially
the owner of the copyright, any infringing copies of the work, or
iii. exhibits to public by way of trade any infringing copies of the work, or
iv. imports into India any infringing copies of the work except one copy of any work, for
the private and domestic use of the importer.
Illustration: A producer, without authorization from the writer of a novel, makes film based on the
story of novel. The said film is deemed as an "infringed copy" of the novel.
Guidelines for Measuring Infringement
The copyright law prohibits reproduction of the original work of others, created by
employing innovative skills and labour. Any original material/work which is capable of being
copied need protection against infringement. In determining whether the copyright subsists in a
work, whether there is infringement of copyright, the question is whether the subject-matter of the
work in original work of the author? The traditional Sweat of the Brow' doctrine i.e. employment
of skill, labour and capital has undergone a sea change and the Flavour of Creativity has become
the deciding principle.
Under a "sweat of the brow" doctrine, the creator of a work, even if it is completely
unoriginal, is entitled to have that effort and expense protected; no one else may use such a work
without permission, but must instead recreate the work by independent research or effort. Flavour
of Creativity doctrine stipulates that originality subsists in a work where enough intellectual
creativity and judgment has gone into the creation of that work. The standard of creativity need
not be high but a minimum level of creativity should be there for copyright protection.
Under the English law of Copyright, for copyright to subsist in a work, that work must be
original. However, courts have not adopted a literal reading of this requirement. For over a hundred
years, English courts have held that a significant expenditure of skill, labour, and judgment, but
not the creativity or inventiveness, was required.
In Walter v. Lane, reporters took shorthand notes of a speech, punctuated them, etc., and
published them in the Times Newspaper. The court held that the reporters were authors of the
87
published speech, and, as such, owned a copyright in the published speeches, because of the
considerable skill, labour, and judgment which they exercised.
In University of London Press v. University Tutorial Press,' the question arose as to

whether certain mathematics exam papers were original literary works. The court held that
originality does not mean that the work must be an expression of individual thought. The simple
fact that the authors drew on a body of knowledge which was common to mathematicians did not
compromise originality. The requirement of originality, it was held, does not require that
expression be in an original or novel form. It does, however, require that the work not be copied
from another work. It must originate from the author. As such, even though these were the same
old math problems which every student is familiar with, and even though there was no creative
input, the skill, labour, and judgment of the authors was sufficient as to make the papers original
literary works.
The United States rejected this doctrine in 1991, in a Supreme Court judgment of Feist
Publications v. Rural Telephone Service, commonly called Feist v. Rural, in which Feist had
copied information from Rural's telephone listings to include in its own, after Rural had refused to
licence the information. Rural had sued for copyright infringement. The Court ruled that
information contained in Rural's phone directory was not copyrightable, and that therefore, no
infringement existed.
Prior to this case, the subsistence of copyright in United States law followed the sweat of
the brow doctrine which gave copyright to anyone who invested significant amount of time and
energy into their work. At trial and appeal level the courts followed this doctrine, siding with Rural.
The court ruled that Rural's directory was nothing more than an alphabetic list of all subscribers to
its service, which it was required to compile under law, and that no creative expression was
involved. The fact that Rural spent considerable time and money collecting the data was irrelevant
to copyright law, and Rural's copyright claim was dismissed.
The Indian Supreme Court has laid down the principle of Minimum Degree of Creativity
refusing the English Sweat of the Brow test. In Eastern Book Company & Ors. v. D.B. Modak &
Anr, the appellants have claimed that the copyright subsists in Supreme Court Cases (SCC) as a
law report as a whole based, cumulatively and compendiously, on all the substantial contributions
88
of skill, labour and capital in the creation of various parts of SCC, i.e., head notes, editorial notes,
footnotes, the version of the copy-edited text of judgments, the selection of cases, the sequence
and arrangement of cases as published in SCC and the index, table of cases, etc. which are
published in each volume of SCC, that give it the SCC volumes and thereby complete SCC set, its
character as a work as a whole.
The Honorable Supreme Court held that the judicial pronouncements of the Apex Court
would be in the public domain and its reproduction or publication would not infringe the copyright.
But the copy-edited judgments would not satisfy the copyright merely by establishing amount of
skill, labour and capital put in the inputs of the copy-edited judgments. Accordingly, original or
innovative thoughts are necessary to establish copyright in the authors work. To secure a copyright
for the judgments delivered by the court, it is necessary that the labour, skill and capital invested
should be sufficient to communicate or impart to the judgment printed in SCC some quality or
character which the original judgment does not possess and which differentiates the original
judgment from the printed one.
The derivative work produced by the author must have some distinguishable features and
flavour to raw text of the judgments delivered by the court. The trivial variation or inputs put in
the judgment would not satisfy the test of copyright of an author. The Court ruled that, the inputs
put in the original text by the appellants in (i) segregating the existing paragraphs in the original
text by breaking them into separate paragraphs; (ii) adding internal paragraph numbering within a
judgment after providing uniform paragraph numbering to the multiple judgments; and (iii)
indicating in the judgment the Judges who have dissented or concurred by introducing the phrases
like concurring, 'partly concurring', 'partly dissenting', 'dissenting', 'supplementing', 'majority
expressing no opinion', etc., requires careful consideration, discernment and choice and thus it can
be called as a work of an author. Creation of paragraphs would obviously require extensive
reading, careful study of subject and the exercise of judgment to make paragraph which has dealt
with particular aspect of the case, and separating intermixing of a different subject has a flavour
of minimum amount of creativity.
In the case of R.G. Anand v. Delux Film, the Supreme Court laid down
seven lists or guidelines to determine infringement and liabilities arising out of it, which are as
follows:
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1. There can be no copyright of ideas, subject-matter themes, plots or historical or legendary
facts.
2. Where the same idea is being developed in a different manner, it is manifest that the source
being common, similarities are bound to occur. In such cases, the court should determine
that whether the similarities are fundamental or substantial aspects of the mode of
expression adopted in the copyrighted work. If the defendant's work is literal limitation of
copyrighted work, then it amounts to piracy.
3. One of the surest test to determine, whether there has been violation of copyright, if the
readers, spectator or viewer after having read, is clearly of the opinion, and gets an
unmistakable expression that the subsequent work appears to be a copy of the original.
4. If the theme remains same, but presented and treated differently, that does not amount to
copyright.
5. If there is material and broad similarities of the work, which somehow appears similar, it
does not amount to copyright.
6. Copyright must be proved with clear and cogent evidence.
7. In case of films, if the viewer is of the opinion that large part of the film is the copy of
original, it amounts to copyright.
In the case of Gramophone Co. of India v. Birendra Bahadur Pandey, in

this case one Universal Overseas Ltd. of Singapore were manufacturing duplicate CD of Indian
music and films. Petitioner purchased some CDs from the said company. Petitioner was resident
of Kathmandu (Nepal). Since Nepal is land locked State, so they bring all the goods through Indian
ports. Gramophone Company made a complaint in Copyright Board against Universal Overseas
Ltd. of Singapore for infringement of its copyright under Section 53 of the Copyright Act. The
judgment given by Jeevan Reddy J. of Supreme Court stating that once infringing copies comes
under Indian Territory then Universal Overseas Co, as well as Birendra Bahadur Pandey are liable
to copyright infringement.
In the case of Star Indian (Pvt.) Ltd. v. Leo Burnet India (Pvt.) Ltd., in this case all
characters of a serial named 'Kyunki Sas Bhi Kabhi Bahu Thi' made by Balaji Films which was
shown on Star TV. network appeared in the advertisement of Tide detergent whose slogan was
"Kyunki Bahu Bhi Kabhi Sas Banegi". They acted in the same manner as they had acted in the
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said T.V. serial Star T.V. filed a case of copyright infringement. However, Bombay High Court,
held that there is no copyright of Star T.V. because detergent company is paying to the actors who
acted in the serial and it is a free decision of the actors to perform in the advertisement. Secondly,
idea is not a matter of copyright violation.
Relevant Factors
In determining the infringement the plaintiff must prove that directly or indirectly the
defendant's alleged work is taken from the work or subject-matter in which he claims copyright.
The relevant factors which need to be addressed in determining the infringement are-
(i) copying and substantial copying;

(ii) subconscious copying,
(iii) indirect copying; and
(iv) direct evidence of copying from the work in which copyright subsists.
Copying: A person publishes the research article of another person in his name. It is an illustration
of direct copying.
Substantial copying.-A reads the book of B. He uses contents of 5 chapters of B's book in his
book verbatim. In this case there has been substantial copying. Even a small part of work used may
constitute infringement.
In D. Narayan Rao v. V. Prasad, the defendant had borrowed a part of speech which was
only of 21/2 minutes duration in a film of 3 hours. Yet it was held that substantial part of speech
has been copied. In case of copying there should be established a causal connection between the
original and alleged infringed copy apart from sufficient degree of objective similarity.
Indirect copying.-A work may be copied by making copy from a pre-existing copy of the same
work. If a defendant makes a two dimensional copy of the plaintiff's three dimensional
architectural plan, he is guilty of indirect copying. Similarly, a play based on novel which in turn
was based upon some original play amounted to infringement of original play.
In J.C. Bamford Excavators Limited v. Action Construction Equipment Ltd., Delhi High
Court held that product of defendant based on drawing they reached by reverse engineering of the
plaintiff's product did not amount to infringement of copyright in the drawing of the plaintiff.
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Direct evidence of copying.-Generally direct evidence of copying may not be easily available,
but the same can be derived from surrounding circumstances. Evidence of copying can be found
when the defendant's work contains the same errors, mistakes as those present in the plaintiff's
work.
In C. Cunniah & Co. v. Balraj & Co., the court observed that one picture could be said to
be a copy of another picture only if a substantial part of the former picture find place in
reproduction. Similarity of product and similarity in theme may not always be deemed as copying
unless evidence of direct copying is produced. In Telmark Teleproducts Ltd. v. Bond
International, it was held that, though the product of rivals and films were similar in nature, yet
the defendant had not copied the visuals, images and sound which together made up the plaintiffs
film.
Lay Observer Test: Whether or not there has been violation of copyright is to see if the reader,
spectator or the viewer after having read or seen both the works should be clearly of the opinion
and gets an unmistakable impression that the subsequent work appears to be the copy of the first.
If the impression formed by a lay observer is so the subsequent work is an infringed work. This
test known as 'lay observer test' was applied in R. Madhavan v. S.K. Nayar, in which the Kerala
High Court held that dissimilar novels do not involve infringement of copyright.
In E.M. Forster v. A.N. Parasuram, respondent published a guide book for student novel,
"A Passage to India" written by E.M. Forster. The author alleged that passages from his novel have
been extensively copied. The court held the purpose of the respondent was simply to prepare a
study material on the novel and it is neither an abridgement nor a literary piece of criticism, thus,
there has been no infringement.
In Celador Production Ltd. v. Gaurav Mehrotra, the Delhi High Court found that the
defendant's website using domain name "Crorepati Kaun.com" with logos and names and identical
photographs of plaintiff's famous T.V. Show KAUN BANEGA KROREPATI was an act of
infringement of plaintiff's copyright. The ex parte injunction was granted in favour of plaintiff.
In Super Cassettes Industries Ltd. v. Myspace Inc., the plaintiff alleged that defendant has
uploaded pictures, movies, songs and other entertainment material on its website "Myspace.com",
the copyright of which belongs to plaintiff under license agreement. The Court held that the
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plaintiff has been able to make out a prima facie case as the plaintiff was owner of copyright in
the works. The Court granted necessary relief.
Acts which do not constitute Infringement (Section 52)
The Copyright Act has defined and laid down the parameters of determining infringement
of copyright, the Act has also permitted certain acts which though done by other than owner of
copyright would not amount to infringement of the copyright. The object behind these exceptions
is to allow fair dealing of work for the purposes of education, research and promotion of public
good.
According to Section 52, following acts do not constitute infringement of copyright.
1. A fair dealing with a literary, dramatic, musical or artistic work, not being a computer
programme, for the purpose of private use including research, criticism or review, making
copies of computer programme for certain purposes, reporting current events in newspapers
and magazines or by broadcasting or in a cinematograph film or by means of photographs.
2. Publication in a collection for the use of educational institutions in certain circumstances.
3. Reproduction by teacher or pupil in the course of instructions or in question papers.
4. Performance in the course of the activities of educational institutions in certain circumstances.
5. Reproduction in newspaper and magazine of an article on current economic, political, social
or religious topics in certain circumstances.
6. Publication in newspapers or magazines a report of a lecture delivered in public.
7. Making a maximum of 3 copies for the use of a public library.
8. Making of sound recording under certain circumstances subject to certain conditions.
9. Causing of a sound recording to be heard in public by utilizing it in an enclosed room or in
clubs in certain circumstances
10. Performance in an amateur club given to a non-paying audience or for religious institutions.
11. Reproduction of unpublished work kept in a museum or library for the purpose of study or
research.
12. Reproduction or publication of any matter published in official gazette or reports of
government, commission or other bodies appointed by government.
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13. Reproduction of any judgment or order of court, tribunal or other judicial authority not
prohibited from publication.
14. Production or publication of a translation of Acts of Legislature or rules.
15. Making or publishing of a painting, drawing or photographs of a work of architecture.
16. Reproduction for judicial proceedings and reports thereof, reproduction exclusively for the
use of members of Legislature, reproduction (artistic work excluded) in a certified copy
supplied in accordance with law.
17. Reading or recitation in public of extracts (literary or dramatic work).
18. Making or publishing of a painting, drawings or photographs or engraving of sculpture or
other artistic work permanently situate in a public place.
19. Inclusion in a cinematograph film of any artistic work permanently situate in a public place
and other artistic work by way of background or incidental to the principal matter represented
in the film.
20. Reproduction for purpose of research or private study or view to publication of an unpublished
literary, dramatic or musical work kept in library, museum or other institution to which the
public has access, provided the reproduction is made after 60 years from the date of death of
author.
Fair Dealing
Limited use of copyright work of other based on the notion of the fair use which implies
the use for non-commercial purposes. As mentioned above, Section 52(1) permits fair dealing with
literary, dramatic, musical or artistic work for following purposes:
(i) Research or private study.

(ii) Criticism or review, whether of that work or any other work.
(iii) Reporting current events in a newspaper, magazine or similar periodical or by
broadcast or in a cinematograph film or by means of photograph
Concept of fair dealing, however, cannot be a grant for substantial copyright. The degree
of substantiality, that is to say, the quantity and value of matter taken, is an important factor in
considering whether or not there has been fair dealing
ENFORCEMENT OF COPYRIGHT (REMEDIES AGAINST INFRINGEMENT)
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Copyright Act has not only conferred the copyright but laid down effective system for
protecting copyright by various remedies, which may be classified in following categories.
1. Civil remedies
2. Criminal remedies and
3. Administrative remedies
In Tata Oil Co. Ltd. v. Hansa Chemical, the Delhi High Court held remedies available to
holder of copyright are independent of each other entitling the aggrieved party to sue for any or all
relief available to him under law.
Civil Remedies (Sections 54-62)
A plaintiff in suit for infringement of his copyright can seek following civil remedies:
(a) Anton Pillar Order (Search and Seizure Order)
It is a kind of preventive measure. The courts in England have devised the Anton Pillar
Orders in response to growing concern over the current volume of sound recording, video and
other copyright piracy. In appropriate cases the court may, on application by the plaintiff, pass an
ex parte order requiring the defendant to permit the plaintiff, accompanied by solicitor or attorney
to enter the premises and make an inspection of relevant documents and articles, take copies
thereof and remove them for safe custody. It may be equated with ex parte interlocutory order to
inspect premises of defendant and take inventory of the offending articles.
Court, before passing Anton Pillar Order, should ensure that-
(i) plaintiff makes full disclosure of all details and facts within knowledge and that his
conduct is equitable;
(ii) there is an urgency of situation and delay might give the defendant an opportunity
to destroy the offending material.
(iii) Further the court should not make an Anton Pillar Order which is likely to have
safe incriminating impact on defendant.
(b) Injunction
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The plaintiff may seek the relief by way of restraining defendant from infringing his
copyright through temporary, permanent or interlocutory injunction in a civil suit at various stages
of trial. The provisions explained in Order XXXIX, Civil Procedure Code are guiding principles.
(c) Interlocutory Injunction
Interlocutory injunction secures the immediate protection of copyright from an existent

infringement or from the continuance of infringement or an anticipated infringement. A plaintiff
may pray for an interlocutory injunction pending trial or further orders. In Gujarat Bottling
Company Ltd. v. Coca Cola Company, explained that the object and purpose of grant of
interlocutory injunction.
In Mirabai Films Pvt. Ltd. v. Siti Cable Network, the unauthorized telecast of appellant
film 'Monsoon Wedding' by respondent cable operator was prohibited by grant of temporary
injection, as the court found the balance of convenience was on appellant side and denial of
injunction would cause irreparable loss and injury.
In Microsoft Corporation v. Yogesh Papat, Delhi High Court granted injunction against
defendant restraining him to down load software produced by plaintiff on the computers of their
customers without any permission from appellant.
For obtaining an interlocutory injunction the plaintiff has to establish-
(i) a prima facie case;

(ii) balance of convenience in his favour; and
(iii) that refusal to grant interlocutory injunction would cause irreparable injury to the
plaintiff.
(d) Mareva Injunction
This form of interlocutory injunction is issued to restrain the defendant from disposing of
assests which may be required to satisfy the plaintiff's claim or removing them from jurisdiction
of court. In CBS v. Lambart, the mareva injunction was issued to locate the whereabouts of the
defendant and his assets.
(e) John Doe Order
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This kind of order is issued against unknown persons who have or may have committed
breach of copyright and or trademark and whose identities cannot be ascertained by plaintiff. This
is a kind of preventive remedy and acts as deterrent against alleged violation. The name John Doe'
is used against a fictious or unidentified person in USA and U.K. In India the name 'Ashok Kumar'
has been used.
It is a cease and desist order given under Order 30 Rule 1 of the Code of Civil Procedure,
where the plaintiff have made a prima facia case establishing the likelihood of violation of their
copyright work, which will affect their financial objectives leading to massive loss.
In India the passing of John Doe (Ashok Kumar) order started in famous Taj Television v.
Rajan Mandal, where telecasting of FIFA world cup 2002 was stopped on various cable networks
without licensing and their equipment were ceased. Protecting of books before release, prevention
of movie piracy have been achieved through passing of John Doe Orders.
(f) Damages on account of profits
The plaintiff is entitled to two types of damages viz.,
(a) one for infringement of his copyright; and

(b) the other for conversion of his copyrighted work into another form.
(g) Account of profits
A plaintiff, if successful, is also entitled to account of profits as an alternative to damages,
Jurisdiction of Court (Section 62)
Every suit or civil proceeding in respect of infringement of copyright in any work or the
infringement of any other rights viz., special right to broadcasting organization or performance
shall be instituted in the District Court having jurisdiction.
The suit for infringement can be instituted at the place where cause of action (i.e.
infringement has taken place) has arisen or where the plaintiff voluntarily resides or comes on
business. This is a departure from the general principle as laid down in Section 20 of Civil
Procedure Code, 1908, wherein the place of suit is determined on the basis of residence of
defendant.
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The civil infringement suit can be filed within three years from the date of infringement.
Following persons can file suit for infringement of copyright:
(i) Owner or in case of joint ownership any co-owner.

(ii) Assignee of copyright.
(iii)The legatee.
(iv) In case of anonymous or pseudonymous work, the publisher.
(v) Licensee: provided the owner of copyright is made party, unless exempted from court.
Defences which may be raised by defendant
The defendant against whom the infringement is alleged may raise all or any of the
following defences to refute the allegation of infringement:
1. no copyright subsists in the work alleged to be infringed,

2. the plaintiff is not entitled to sue (not the owner of copyright),
3. the alleged copyright work is not original,
4. the alleged copyright is not entitled to protection being immoral, seditious or otherwise
against public policy,
5. the defendants' work is independent and is not copied from the plaintiff's work,
6. the defendants' action does not constitute infringement of the plaintiff's work and is
permitted under one or more of the exceptions to infringement,
7. the suit is barred by limitation,
8. the plaintiff is guilty of estoppel, laches and acquiescence or consent,
9. the infringement is innocent and the plaintiff is only entitled to the profits made by the
Criminal Remedies
Section 63 of the Copyright Act provides for criminal remedies if there is any copyright
infringement. According to Section 63 of the Act, anyone found guilty of willfully violating or
aiding in the violation of a work’s copyright will be sentenced to at least six months in prison and
a fine of at least 50,000 rupees. A person who is found guilty under Section 63A a second time
faces an additional sentence of imprisonment for a term not less than one year and a fine that
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cannot be less than one lakh rupees due to the widespread copyright infringement. According to
Section 63B, a person who intentionally uses an illegal copy of computer software on a computer
faces a minimum seven-day sentence in jail and a fine of at least 50,000 rupees.
For infringement of copyright, the criminal remedies provided under Section 63:
• Imprisonment, not less than 6 months which may extend up to 3 years;

• Fine may not be less than 50,000 which may extend up to 2,00,000;
• Search and seizure of copyrighted goods; and
• Delivery of copyrighted goods to the copyrighted owner.
In the case of repeat offenders, minimum punishment terms of 1 year and fine of 1 lakh however,
the highest punishment will be the same as the first time offender.
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UNIT 5
Trademarks – Concepts – functions - different types - domain name - deceptive similarities –

distinctiveness – Goodwill – Registration – Infringement - Passing off - Remedies
A trademark is a symbol or word that characterizes your product or service and

distinguishes it from other products or services on the market. It makes your customers
recognize your product or service. A trademark is a type of intellectual property consisting of a
recognizable sign, design, or expression which identifies products or services of a particular
source from those of others although trademarks used to identify services are usually called service
marks.
The trademark owner can be an individual, business organization, or any legal

entity. A trademark may be located on a package, a label, a voucher, or on the product itself. For
the sake of corporate identity, trademarks are often displayed on company buildings. It is legally
recognized as a type of intellectual property.
Definition of Trademark under Trademarks Act, 1999: Sec 2 (zb) defines trade mark as:
A mark capable of being represented graphically and which is capable of distinguishing

the goods or services of one person from choose of others and may include shape of goods, their
packaging and combination of colors and:
i. in relation to Chapter XII (other than section 107), a registered trade mark or mark
used in relation to goods or services for the purpose of indicating or so as to indicate a
connection in the course of trade between the goods or services, as the case may be,
and some person having the right as proprietor to use the mark and
ii. in relation to other provisions of this Act, a mark used or proposed to be used in
relation to goods or services for the purpose of indicating or so to indicate to a
connection in the course of trade between the goods or services, as the case may be, and
some person having the right, either as proprietor or by way of permitted user, to use the
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mark whether with or without any indication of the identity of that person, and includes a
certification trade mark or collective mark.
Sec 2 (1)(m) defines Mark : mark includes a device, brand, heading, label, ticket, name, signature,
word, letter, numeral, shape of goods, packaging or combination of colors or any combination
thereof.
ESSENTIALS OF A TRADEMARK
• It must be a mark.
• It must be capable of being represented graphically.
• It must be capable of distinguishing the goods or services of one person from those
of others.
• It must be used or proposed to be used in relation to goods or services.
• There must be a visual representation of the mark.
ADVANTAGES OF TRADEMARK
• Exclusive Rights: The owner of Registered Trademark enjoys exclusive right over the
trademark. The owner can use the same for all the products falling under the classes applied
and can stop other from the unauthorised use of the Trademark under the same class where
it is registered. It gives the right to sue the unauthorized user of the Trademark Registered.
• Builds trust and Goodwill: The established quality of your product and services are known
by everyone through the trademark and which establishes trust and goodwill among the
customers in market. It helps in creating permanent customers who are loyal and always opt
for the same brand.
• Differentiates Product: It makes easy for customers to find your products. It makes your
product and identity of products different from that of the existing and foreseen competitors
and acts as efficient commercial tool.
• Recognition to product’s Quality: It gives recognition to the quality of the product.
Customers attach the product’s quality with the brand name and this image is created in the
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market about the quality of a particular brand which helps in attracting new customers as
they can differentiate the quality of a product by the logo/brand name.
• Creation of Asset: Registration of Trademark creates an intangible asset i.e. Intellectual
Property for an organisation. Registered trademark is a right created which can be sold,
assigned, franchised or commercially contracted.
• Protection against infringement: No competitor or other person can use the wordmark or
logo registered by you under trademark. However, if in any case one uses it without the
approval of the owner of trademark or make any deceptive use of same, the owner can get
the legal protection under the Act and stop the person doing so.
FUNCTIONS OF TRADE MARK
A trade mark performs five main functions:
(a) To identify the origin or source of goods and services and distinguish them from
similar products or services of other enterprises.
(b) To signify that all goods bearing the same trade mark have a single source.
(c) To signify that all goods bearing the same trade mark are of the same quality.
(d) To serve as the principal instrument in advertising and selling of goods and services.
(e) To protect the trade and business interests of the owner of the brand, as also the
goodwill associated with the brand, in case of infringement of trade mark.
The object of trade mark law has been explained by the Supreme Court in Dau Dayal v. State
of Utttar Pradesh in the following words: “The object of trade mark law is to protect the rights of
persons who manufacture and sell goods with distinct trade marks against invasion by other
persons passing off their goods fraudulently and with counterfeit trade marks as those of the
manufacturers. Normally, the remedy for such infringement will be by action in Civil Courts.
THE SALIENT FEATURES OF THE TRADE MARKS ACT, 1999
(a) Providing for registration of trade mark for services, in addition to goods.
(b) Amplification of definition of trade mark to include registration of shape of goods,
packaging and combination of colours.
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(c) All 42 international classification of goods and services (as earlier used) now applicable
to India as well.
(d) Recognition of the concept of “well-known trade marks”.
(e) Increasing the period of registration and renewal of trade marks from 7 to 10 years, to
bring it in conformity with the accepted international practice.
(f) Widening the scope of infringement of trade marks. For instance, use of a registered trade
mark as trade name or as a part of a trade name or use of a mark which is identical or
deceptively similar to a registered trade mark.
(g) Creation of an “Intellectual property Appellate Board” for hearing appeals against orders
and decisions of the Registrar of Trade Marks for speedy disposal of cases and
rectification applications which hitherto lie before High Courts.
(h) Criminal remedies in case of falsification of trade marks.
(i) Recognition of use of trade mark by even an unregistered licensee.
(j) Expeditious examination of a trade mark application on payment of five times the
application fee.
TYPES OF TRADEMARK
Trademarks are of various types. The purpose of the trademark is the same, irrespective of its
type. It allows the consumers to distinguish the source of the product/service and assures the
quality of the product or service. The basic purpose of all these trademarks is to help customers
identify origin and quality of the underlying products or services.
1. Product Mark: A product refers to trademarks related to products or goods and not
services. It is used to identify the source of a product and to distinguish a manufacturer’s
products from others.
2. Service Mark: A service mark is a mark that distinguishes the services of one
proprietor/owner from that of another. Service marks do not represent goods, but the
services offered by the company. They are used in a service business where actual goods
under the mark are not traded. The rules governing for the service marks are fundamentally
the same as any other trademarks
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3. Collective Mark: These are the trademarks used by a group of companies and can
be protected by the group collectively. Collective marks are used to inform the public
about a particular characteristic of the product for which the collective mark is used. The
owner of such marks may be an association or public institution or it may be cooperative.
Collective marks are also used to promote particular products which have certain
characteristics specific to the producer in a given field. Thus, a collective trademark
can be used by a more than one trader, provided that the trader belongs to the association.
4. Certification Mark: It is a sign indicating that the goods/services are certified by the
owner of the sign in terms of origin, material, quality, accuracy or other characteristics.
This differs from a standard trademark whose function is to distinguish the goods/services
that originate from a single company. Certification marks are used to define the standard.
They guarantee the consumers that the product meets certain prescribed standards.
5. Unconventional Trademarks: Unconventional trademarks are those trademarks that
get recognition for their inherently distinctive feature. Unconventional trademarks
include the following categories:
• Colour Trademark: If a particular color has become a distinctive feature

indicating the goods of a particular trader it can be registered as a trademark. For
example, Red Wine.
• Sound Marks: Signs which are perceived by hearing and which is distinguishable
by their distinctive and exclusive sound can be registered as sound marks. For
example, Musical notes.
• Shape Marks: When the shape of goods, packaging has some distinctive feature it
can be registered. For example, Ornamental Lamps.
• Smell Marks: When the smell is distinctive and cannot be mistaken for an
associated product it can be registered as a smell mark. For example, Perfumes
REGISTRATION OF TRADEMARK
Trademark may be registered or unregistered. Legal remedies against infringement are

provided for both. The registration offers prima facie evidence of ownership of trademark,
whereas, in case of non-registration the user of trademark has to establish the prior use and passing
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off. The whole subject of registration can be explained in two parts viz., conditions and grounds
for registration and procedure for registration.
Conditions and Grounds for Registration (Sections 6 to 17)
• Register of Trademark: All trademarks, which are accepted for registration, are entered into
a Register maintained by Registrar.
• Classification of Goods (Sections 7 & 8): The Registrar shall classify goods and services, as
far as may be, in accordance with the international classification of goods and services for the
purposes of registration of trademarks. Any question arising as to the class within which any
goods or services falls shall be determined by the Registrar whose decision shall be final.
• Duration of registration: The registration of a trademark is initially made for a period for 10
years but may be renewed from time to time by payment of prescribed fee.
In K.R. Chinna Krishna Chettiar v. Sri Ambal and Company, the Supreme Court found that
the word 'Ambal' used with the trademark of the respondents had got a distinctive character in the
mind of an average purchaser who was likely to be confused by the word 'Andal' used by the
appellant with their trademark.
In Biochem Pharmaceatical Industries v. Astron Pharmaceuticals, it was held that the

respondent could not get registered as his trademark the word 'Bicillin' as it is deceptively similar
to the earlier registered trademark of the appellate ie., 'Biocillin'.
• RELEVANT FACTORS TO BE CONSIDERED BY REGISTRAR
Every trademark is not registrable. For obtaining registration trademark has to fulfil the
conditions laid down under the law; in other words, the registration may be refused if the trademark
is covered under prohibited grounds. These grounds are further classified into absolute grounds
and relative grounds. Before granting registration the Registrar shall examine the application
keeping in mind the following factors:
(i) absolute grounds for refusal of registration;

(ii) limitations as to colour;
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(iii)relative grounds for refusal of registration;
(iv) honest and concurrent uses;
(v) names of chemical elements etc., and
(vi) names and representations of living persons or persons who recently died etc.
(i) Absolute Grounds for refusal of registration
Under Section 9 following categories of trademarks shall not be registered:
a) Which are devoid of any distinctive character, that is to say, not capable of
distinguishing the goods or services of one person from those of another person.
b) Which consist exclusively of marks or indications which may serve in trade to designate
the kind, quality, quantity, intended purpose, values, geographical origin or the time of
production of the goods or rendering of the service or other characteristics of the goods
or service.
c) Which consist exclusively of marks or indications, which have become customary in the
current language or in the bona fide and established practices of the trade.
d) It is of such nature as to deceive the public or cause confusion.
e) It contains or comprises of any matter likely to hurt the religious susceptibilities of any
class or section of the citizens of India.
f) It comprises or contains scandalous or obscene matter.
g) Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act,
1950.
Further, a mark shall not be registered as a trademark if it consists exclusively of-
a) the shape of goods which results from the nature of the goods themselves; or
b) the shape of goods which is necessary to obtain a technical result; or
c) the shape, which gives substantial value to the goods.
However, if a trademark before making an application has acquired distinctive character as a result
of the use made of it or is a well-known trademark, the registration shall not be refused.
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(ii) Limitation as to Colour:
A trademark may be registered either subject to limitation as to certain colours or any

combination thereof, or without limitation of colour. In deciding the distinctive character of the
trademark, the tribunal should take such limitation into consideration.
(iii) Relative grounds for refusal of registration
In Section 11 the grounds mentioned are 'relative' in nature. It means the Registrar may also refuse
registration if
(a) there is likelihood of confusion caused to the public including the likelihood of association
with an earlier trademark by virtue of its identity with the earlier trademark and similarity
of goods or services caused by the earlier trademark or by virtue of its similarity to an
earlier trademark and identity or similarity of the goods or services caused by the earlier
trademark;
(b) the earlier trademark is well-known trademark in India and the later mark would take
unfair advantage of the earlier mark or would be detrimental to the distinctive character
or repute of the earlier trademark;
(c) its use in India is liable to be prevented by virtue of any law of passing off protecting an
unregistered trademark used in the course of trade or its use in India is liable to be
prevented by virtue of law of copyright.
However, if the proprietor of the earlier trademark or proprietor of other earlier right
consents to the registration of the later trademark, the same may be registered by the Registrar.
Further, a trademark shall not be refused registration on the above grounds unless objection is
raised in opposition preceedings by the proprietor of the earlier trademark.
In the case of Khoday Khoday India Limited v. The Scotch Whiskey Association, Khoday
India Ltd. (KIL) manufactures whiskey under the mark Peter Scot, started producing in 1968 and
got the trademark registered in 1974. After 13 years, a well-known Scotch Whiskey Distillers
Association (SWDA), an industry body of distillers, blenders and exporters of Scotch whiskey,
moved the Assistant Registrar Trademarks for cancellation of the registered trademark Peter Scot'
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on the ground of its deceptive similarity to a foreign geographic indication (Scotch whiskey of
Scotland). As per the Appellant, the brand name Scot was coined with his father in mind, using
his forename, Peter, and his nationality. Another factor behind the coining of this brand name was
the internationally known British explorer, Captain Scott, and his son Peter Scott, who is widely
known as an artist, naturalist and Chairman of the World Wildlife Fund. Although the name Scott
is spelt with two, it is phonetically the same as Scot.
The Supreme Court held in favour of KIL’s right to continue being the registered proprietor
of the Peter Scot mark. One of the factors that influenced the court to hold the way it did was the
delay/acquiescence on the part of SWA i.e. although SWA had knowledge about registration of
the ‘Peter Scot’ trademark as early as September 1974, it waited for more than 12 years to move
the Registrar for deletion of the said mark. The judge held that “We, therefore, in the peculiar facts
and circumstances of this case, are of the opinion that action of the respondents is barred under the
principles of acquiescence and/ or waiver.”
(iv) Honest and Concurrent use
Under Section 12, the Registrar may permit the registration to more than one proprietor of
the trademarks which are identical or similar, irrespective of an earlier registration in respect of
one of them, on the ground of honest and concurrent use or other special circumstances.
How far the length of concurrent and uninterrupted user is required to claim the
registration, was the issue addressed by Delhi High Court in S. Mehar Singh v. M.C. Gupta &
Co. The Court narrated the following parameters:
(i) the extent of use in time, quantity and the area of the trade;
(ii) the degree of confusion likely to ensure from the resemblance of the marks which is to
a large extent indicative of the measure of public inconvenience;
(iii) the honesty of the concurrent use;
(iv) whether any instances of confusion have in fact been proved; and
(v) the relative inconvenience which would be caused if the marks were registered.
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But, if a person deliberately and knowingly uses a similar trademark which is already
registered with a hope that if will also be registered on subsequent date, such a user cannot be
considered as an honest concurrent user.
In Gupta Enterprises v. Gupta Enterprises, the court allowed registration of trademark

"MBS" on the ground that there was no complaint from public in relation to the goods under the
rival marks even after the user of mark for 25 years and there was nothing to suggest that the user
of trademark was not innocent, honest and bona fide.
(v) Names of chemical elements or international non-proprietary names not registrable
No word, which is commonly used and accepted name of any single chemical element or
any single chemical compound in respect of a chemical substance or preparation, or which is
declared by the World Health Organisation and notified in the prescribed manner by the Registrar
from time to time, as an international non-proprietary name or which is deceptively similar to such
name, shall be registered as a trademark.
(vi) Names and representations of living persons or persons who recently died
Where an application is made for the registration of a trademark which falsely suggests a
connection with any living person, or a person whose death took place within twenty years prior
to the date of application for registration of the trademark, the Registrar may, before he proceeds
with the application, require the applicant to furnish him with the consent in writing of such living
person or, as the case may be, of the legal representative of the deceased person to the connection
appearing on the trademark, and may refuse to proceed with the application unless the applicant
furnishes the registrar with such consent.
DECEPTIVE SIMILARITY
Deceptive similar Trademarks are those trademarks which are very similar to an already
existing Trademark, so as to deceive or cause confusion among the customers.
109
Section 2(h) of The Trade Marks Act, 1999 defines the concept of deceptive similarity Trademark
as – A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles
that other mark as to be likely to deceive or cause confusion.
An important factor while considering a mark to be “deceptive” is if the public with an

average intelligence gets confused regarding the source of the good or service.
Various factors are to be considered while determining the deceptive similarity as nature
of marks, degree of resemblance between the marks- phonetic, visual of idea, nature of goods,
class of purchasers or their level of education, intelligence and degree of care, mode of purchase,
etc.
In Intel Corporation v Dinakaran Nair, it was held that, ‘ARJ’ and suffix INTEL of
ARINTEL are the prefix pronounced separately, would be similar to INTEL. and both marks are
misleading the public as both are in similar trade, In Apex Laboratories Ltd. v. Zeventus Health
Care Ltd., the Court held that the mark Zinconia is phonetically as well as visually dissimilar than
Zincovit, and hence no confusion.
DISTINCTIVENESS
Distinctiveness is the primary requirement of a trademark. In Imperial Tobacco v Registrar

of Trademarks, the distinctiveness has been understood as some quality in the trademark which
earmarks the goods so marked as distinct from those of other products or such goods. The burden
is on the applicant to prove distinctiveness of the mark or its capability of being distinguished so
as to claim monopoly of using the mark.
In W.N. Sharpe Ltd. v. Solomon Bros Ltd, it was held that certain words such as 'good',
'best', 'superfine' were incapable of adoption. They could not have secondary meaning and were
not capable of registration. In Britannia Industries Ltd. v. Cremica Agro Goods Ltd., Delhi High
Court did not find claim for distinctiveness and acquisition of secondary meaning in relation to its
mark Greetings. In Godfrey Philips India Ltd. Grinar Food Beverages, the Supreme Court held
that a descriptive trade mark may be entitled to protection if it has assumed a secondary meaning
which identifies it with particular product or as being from a particular source.
110
PROCEDURE FOR REGISTRATION (SECTIONS 18 TO 26)
Sections 18 to 26 of Trademarks Act, 1999 deal with procedure for registration.
1. Who can apply?
a) Any person claiming to be the proprietor of a trademark used or proposed to be used by

him, who is desirous of registering it, shall apply in writing to the Registrar in the
prescribed manner for the registration of his trademark.
b) A single application may be made for registration of a trademark for different classes of
goods and services and fee payable therefor shall be in respect of each such class of goods
or services.
2. Place of filing application: Every application shall be filed in the office of the Trademark
Registry within whose territorial limits the principal place of business in India of the applicant
3. Acceptance or refusal of application: On receipt of application the Registrar may accept or
refuse to accept the application. But if he refuses to accept the application he will record the
reasons for refusal.
4. Advertisement of application (Section 20): As soon as after the acceptance the Registrar
shall cause the application along with the conditions or limitations, to be advertised in the
prescribed manner. The application is advertised in the Trademark Journal. The purpose of
advertisement is to invite objections from interested persons whose trade interests are likely to
suffer.
5. Opposition of Application (Section 21): Any person may, within three months from the date
of the advertisement or re-advertisement of an application for registration or within such
further period, not exceeding one month in the aggregate, as the Registrar, on application made
to him in the prescribed manner and on payment of the prescribed fee, allows, give notice in
writing in the prescribed manner to the Registrar, of opposition to the registration. The
Registrar shall send the copy of notice to the applicant and the applicant is required to give his
counter-statement within two months from the receipt of notice. If he fails to send counter-
statement within two months' period, it will be presumed that he has withdrawn the application.
After considering their case, based on the application, opposition, counter-statement and oral
111
representation etc., the Registrar should decide whether and subject to what conditions or
limitations, if any, the registration is to be permitted.
6. Registration (Section 22): After accepting application for registration and disposing the
objections, if made by any relevant person, the Registrar shall, unless the Central Government
otherwise directs, register the said trademark with effect from date of application. After
registering the trademark, the Registrar shall issue to the applicant a certificate in prescribed
form.
RIGHTS OF TRADEMARK HOLDER

A registered trademark stands on advantageous position in comparison to non-registered
trademark. But the Act also protects the claim of unregistered trademark holder through passing
off action. The rights conferred under the Act are subject to conditions and limitations imposed at
the time of registration. The various rights granted under the Act are as follows:
1. Right to Exclusive use: A registered trademark gives the registered proprietor the exclusive
right to use the trademark in relation to goods or services in respect of which the trademark
is registered. However, this right shall be subject to any conditions and limitations to which
the registration is subject.
2. Right to assign: A registered proprietor of a trademark has the right to transfer his rights
through licence or assignment of his trademark and give effectual receipts for any
consideration for such assignment.
3. Right to seek Legal Remedies against Infringement: The holder of Trademark has the
right to obtain legal relief against alleged infringement of a registered trademark. In case of
a trademark which is not registered, the unauthorised use is prevented through passing off
action.
4. Right to seek Correction of Register: The registered proprietor has the right to apply for
correction of register with regard to name, address or description of registered proprietor,
to cancel the entry of a trademark on the register and to strike out any goods or classes of
goods or services from those in respect of which a trademark is registered.
112
LIMITATION ON RIGHTS
The rights mentioned above are subject to the conditions and limitations which may be either
expressly imposed at the time of registration or which are expressly laid down in the Act.
1. The exclusive right to use a trademark is subject to limitations imposed at the time of
registration. Any use beyond those limitations is not protected by registration and an action
for infringement shall not lie against such use by others. Where a trademark is granted for
a particular product, say biscuits, it cannot be used by the proprietor for his other product
such as confectionary.
2. Registration ipso facto will not operate against persons who are already registered
proprietor of identical or similar mark.
3. The registered proprietor cannot interfere with the prior use of the same or similar mark.
In N.R. Dongre v. Whirlpool Corporation, the Supreme Court held that passing off action
against registered owner of trademark at the instance of prior user of the same or similar
mark is maintainable.
4. The registered proprietor cannot interfere with any bona fide use by a person of his own
name or that of his place of business, or the use of any bona fide description of the character
or quality of goods.
5. In the case of the word/mark, if in the course of time it becomes the name of an article or
substance, then the right conferred by registration ceases.
6. The right to seek legal remedy against infringement is subject to limitations prescribed in
Section 30.
Well-known Trademark and Trans-border Reputation
The terms “Well-known Trademark” and “Principle of Trans-border Reputation” are

recognised in India. A mark that has gained enough recognition among a sizable portion of the
public who use such goods or receive such services to make it likely that the use of the mark in
relation to other goods and services will be interpreted as indicating a connection between the two
marks is considered to be a well-known trademark in relation to any goods or services.
113
Whirlpool v. N R. Dongre : Even, if a company is not doing business in country, but if it is a well-
known company or well-known goods, then also it would be entitled to get authority over its
trademark. In this case, where the defendants have failed to renew their trademark 'WHIRLPOOL'
and in the meantime the plaintiffs have got registration of the same. In this case court said that
though there was no sale in India, the reputation of the plaintiff company was travelling trans-
border to India a well through commercial publicity made in magazines which are available or
brought in India.
The WHIRLPOOL has acquired reputation and goodwill in this country and the same has
become associated in the minds of the public. Even advertisement of trademark without existence
of goods in the mark in also to be considered as use of the trademark. The magazines which contain
the advertisement do have a circulation in the higher and upper middle income strata of Indian
Society. Therefore, the plaintiff acquired trans-border reputation in respect of the trademark
'WHIRLPOOL' and has a right to protect the invasion thereof.
EFFECT OF NON-USE OF TRADEMARK
The main effect of non-use is removal of the trademark from the trademark registry.
However, sometimes new goods or services are launched to the market using trademarks which
have not been re-registered or which have not been used for a very long period of time. In such
cases, most of the trademark proprietors keep quiet about the new trademark which infringes their
existing mark because of the fear of the new user attacking the trademark on the ground of non-
use and in such a case it would result in the trademark being completely removed from the registry.
In India, rectification on the ground of non-use arises usually in the course of opposition
proceedings or infringement action as a counterblast. Where the proprietor has not used the mark
for more than five years and has not taken any steps to use it may tend not to object to the
registration of similar marks by others or launch infringement proceedings.
Section-47 removal from register and imposition of limitation on ground of non use of trade
mark: A trade mark once registered can be removed or taken off from the register upon application
to concerned body on the following grounds.
114
▪ No valid intention existed to use the trade mark:
An application for removing trademark can be made by any person on the ground that the
trademark was registered by proprietor without any intention to use such trademark in relation to
those goods and services. There should be no bona fide use of the trademark in relation to those
goods and services since three months before the date of such application under the section 47
• No use of trademark by the proprietor for 5 years:
A registered trademark can be removed from the registered if it has not been used by the
proprietor for a continuous period of 5 years or more relation to those goods and services. Under
these provision the period of 5 years has been calculated from the date from which the trade mark
is actually entered in the registered.
Exception to this rule- if special reasons have been proved by the proprietor for non-use of trade
mark such as restriction imposed by law and not with any intent to not use the mark, then such
Trade mark will not be removed from the register.
The Supreme court in the case of Kabushiki kaisha Toshiba v. TOSIBA appliances held
that the intention to use a trade mark sought to be registered must be genuine and real. The division
bench further explained that when a trademark is registered, it confers a valuable right. It seeks to
distinguish the goods made by one person from those made by another. The person therefore, who
does not have any bona fide intention to use the trade mark is not expected to get his product
registered as to prevent any other person from using the same.
In Ruston and Hornby Ltd. v. Zamindara Engineering Co., it was held that since the
trademark has been registered in the name of the plaintiff validly which was renewed, the
defendant had no right to use the said mark of the plaintiff as it would amount to infringement of
the plaintiff’s exclusive rights. In that case, noticeably it was established as a fact that, non-use of
the trademark by the plaintiff was not willingly but due to limitations imposed by the Government
in respect of dairy business and in the circumstances, there was no abandonment.
115
In K.R Beri & Co. vs. The Metal Goods Mfg. Co Pvt Ltd. and Anr, the Division Bench in
lieu of Section 48(2) held that an unregistered user of the trade mark even with the consent of the
proprietor, cannot be construed to be a registered user under Section 48(1) and such construction
renders violation of sub-section (2) of Section 48. On a strict interpretation, the view of the
Division Bench may be correct, but it is not correct to hold that by a bona fide user of an
unregistered user when connection between the proprietor of the trade mark and the permitted user
in relation to passing off the goods under the trade mark are proved, it does not render violation of
sub-section (2) of Section 48.
A trademark may be removed from the register for non-use incessantly for five years except
when it is shown that the non-use has been due to existence of ‘special circumstances’ in the trade
and not due to any intention to abandon or not to use the trade mark. In the instant case, the
applicants failed to prove such ‘special circumstances’. The Court said that word ‘use’ does not
necessarily mean an imply actual physical sale and even more advertisement without having even
the existence of the goods can be said to be a ‘use’ of the mark.
INFRINGEMENT AND PASSING OFF ACTION IN TRADEMARK
Unauthorized use of trademark which may be identical or deceptively similar to the

original trademark would amount to infringement. In case of registered trademark, the registered
proprietor or registered user may take action against infringement. But in case of trademark which
is not registered the common law remedy of passing off action is maintainable.
Infringement of Registered Trademark (Section 29)
A registered trademark is infringed by a person who, not being a registered proprietor or

the registered user, uses in the course of trade, a mark which is identical or deceptively similar in
relation to the same goods or services in respect of which the trademark is registered.
In order to constitute infringement following requirements must be fulfilled:
(i) The person is not authorized to use the trademark.
116
(ii) The infringing trademark is either similar or identical or deceptively similar to the
already registered trademark.
(iii) The infringing trademark must be used in the course of regular trade in which the
registered proprietor or user is already engaged.
(iv) The use of the infringing trademark must be printed or in case of usual representation
of mark in advertisement, invoices or bills. Mere oral use of trademark is not
infringement.
(v) Using either whole of the registered trademark or an adopted one by making a few
addition and alteration.
In order to decide whether there has been an infringement of a trademark or not, the likely
impact of infringing of trademark on purchaser is viewed. If the totality of impression of trademark
is likely to cause confusion or deception in the mind of purchaser, it amounts to infringement.
Tangible charges of confusion by a substantial proof are the main test to find out whether the
infringing mark is deceptively similar to the infringed mark. The likelihood of confusion is
sufficient and there is no need to prove that actual confusion has been caused. In other words
deception, fraud or confusion on the part of infringer is essential requirement to determine
infringement.
When trademark is not infringed - Section 30, Trade Mark Act,1999
In Pidilite Industries Ltd. v. S.M. Associates, the plaintiff was registered proprietor of
trademark ‘M-SEAL’. The defendant adapted and used mark 'SM SEAL', with all essential
characters of trademark M-SEAL The Bombay High Court ruled that defendant's use of impugned
mark was causing confusion and deception. The Court restrained defendant from using trademark
"SM-SEAL".
In Bombay Oil Industries Pvt. Ltd. v. Ballarpur Industries, the Delhi High Court found
that use of trademark "SHAPOLA" for edible oil which is similar to the registered trademark
'SAFFOLA' is an act of infringement. The Court held that both the marks are in respect of edible
oil, therefore, the nature of goods is same. There is marked degree of phonetic similarity. The
Court restrained defendant to use trademark "SHAPOLA".
117
Use of trademark 'LIKE ME' by defendant is similar to the mark "LAKME" which is a
registered trademark of plaintiff. In Lakme Ltd. v. Subhash Trading, the Delhi High Court held
that both the trademarks were, apart from dealing with the same range of cosmetic products,
phonetically also similar. There was, therefore, every possibility of deception. and confusion being
caused in the minds of prospective buyer. The court restrained defendant from using mark "LIKE
ME".
In Vinayak Tea Co. v. Kothari Products Ltd., the plaintiff is the manufacturer and seller
of pan masala under registered trademark Parag. Defendant is dealing in tea, prefixing the words
of goods manufactured and sold by it. The tea and pan masala are different commodities. The
Allahabad High Court vacated the injunction on the ground that there is no prima facie evidence
to show confusion or deception.
PASSING OFF ACTION
In case of unregistered trademark, the remedy based on passing off action has been
provided under Section 27(2). Section 27 is reproduced hereunder:
Section 27: “No action for infringement of unregistered trademark.-
(1) No person shall be entitled to institute any proceedings to prevent, or to recover damages
for the infringement of an unregistered trademark.
(2) Nothing in this Act shall be deemed to affect the right of action against any person for
passing off goods or services as goods of another person or as services provided by
another person, or the remedies in respect thereof."
Essential Features of Passing off Action
The object of this remedy is to protect the goodwill and reputation of a business from
encroachment by dishonest competition. The basis of passing off action is misrepresentation. It is
an actionable wrong for any person to pass off his goods or business as and for the goods or
business of another person. In an action based on passing off the plaintiff must show that
118
(i) there is a misrepresentation made by defendant in trade, to prospective customers or
ultimate customers of goods or services supplied by him;
(ii) there is a misrepresentation calculated to injure his business or goodwill; and
(iii) the plaintiff has suffered damage to business or goodwill.
PASSING OFF DOMAIN NAME
The ever expanding role of internet has raised host of issues in the arena of trademark as
well. The use of domain names originally made as an address for computers and internet has now
assumed great importance. It not only serve as an address for internet, but also identify the specific
internet site. In the commercial field, each domain name owner provides information/services
which are associated with such domain name. Thus, the domain name falls under the term services
within meaning of Section 2 (z) of the Trademarks Act, 1999.
In Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., the Supreme Court of India
observed: “As far as India is concerned, there is no legislation which explicitly refers to dispute
resolution in connection with domain names. But although the operation of Trademarks Act, 1999
itself is not extra-territorial and may not allow for adequate protection of domain name, this does
not mean that domain names are not legally protected to the extent possible under the laws relating
to passing off.”
The Delhi High Court ruled in the case of Yahoo!, Inc. v. Akash Arora and Anr, that a
domain name serves the same purpose as a trade mark and is entitled to the same level of
protection. The accused’s domain name was “Yahoo India!” This was the same as the plaintiff’s
trade mark “Yahoo!” and was comparable. According to the court, internet users would be misled
and duped into thinking that both domain names originated from the same source.
The argument used by the defendant was that a disclaimer had been posted on its website.
However, it was revealed that a mere disclaimer was insufficient since the internet is structured in
such a way that the use of a similar domain name cannot be corrected by a disclaimer, regardless
of whether ‘yahoo’ is a dictionary term. The appellation has gained distinctiveness and originality,
and it is strongly associated with the plaintiff.
119
Differences Between Passing off and Infringement
For a passing off action, registration of trademark is not relevant. It is based on property in
goodwill acquired by use of the mark. On the other hand infringement is based on statutory right
acquired by registration of trademark. In case of passing off action, the defendant's goods need not
be same as that of the plaintiff, they may be allied or even different. In case of an action for
infringement, the defendant's use of the offending mark may be in respect of the goods for which
the mark is registered or similar goods. In the claims of infringement based on well-known
trademarks, the barrier of goods stands further diluted in view of the provisions of the Trademarks
Act, 1999. Another difference between the two is that in passing off action, identity or similarity
of marks is not sufficient, there must also be likelihood of confusion. But in case of infringement,
if the marks are identical no further proof is required.
In Kavi Raj Pandit Durga Das Sharma v. Nav Rattan Pharmaceutical, the Supreme Court
laid the difference between the two and held that “An action for passing off is a common law
remedy, being in substance an action for decent, that is, passing off by a person of his own goods
as those of another. But that is not the gist of an action of infringement. The action for infringement
is a statutory remedy conferred on the registered proprietor of a registered trademark for the
vindication of the exclusive right to use the trademark."
In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., following factors have been
stated by Supreme Court in determining deceptive similarity in action based on passing off:
(a) The nature of the marks, i.e. whether the marks are word marks or label marks or
composite marks, i.e. both words and label marks.
(b) The degree of resemblance between the marks, phonetically similar and hence similar
in idea.
(c) The nature of the goods in respect of which they are used as trademarks.
(d) The similarity in the nature, character and performance of goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require,
on their education and intelligence and a degree of care they are likely to exercise in
purchasing and/or the using the goods.
120
(f) The mode of purchasing the goods or placing orders for the goods.
(g) Any other surrounding circumstances which may be relevant in the extent of
dissimilarity between the competing marks.
In Laxmikant Patel v. Chetan Bhat, the plaintiff appellant was running a studio in the
name of MUKTIVAN COLOUR. The defendant respondent who was running the studio in the
name Gokul Studio later changed the name as "MUKTI JIVAN COLOUR LAB STUDIO" with
the intention to make use of business name of plaintiff. Since the plaintiff had acquired goodwill
as to quality of service being rendered, there is likelihood of injury which could be caused to him.
The Supreme Court restrained defendant-respondent from using name "MUKTI JIVAN COLOUR
LAB STUDIO".
In Midas Hygine Industries v. Sudhir Bhatiya, the Supreme Court allowing the appeal
found that use of name "MAGIC LAXMAN REKHA" by defendant respondent was an attempt to
pass off the goods by using the goodwill of the plaintiff trademark "LAXMAN REKHA". The
Court further held that mere delay is no ground to refuse injunction.
When there is a dispute over infringement of registered trademark vis-a-vis prior use of
unregistered trademark, Supreme Court has clarified the position in Syed Mohideen v. P.
Sulochana Bai. In the instant case, however respondent plaintiff has been able to establish that
trademark 'Iruttukadai Halwa' has been used by her and her predecessors since 1900. Registration
of trademark by appellant as ‘Tirunelveli Iruttukadai Halwa' was an attempt to pass of the
trademark of respondent. The Supreme Court held that respondent has proven the prior user of
said trademark for about a century, no one can claim the name 'Iruttakadai Halwa' as his trademark
except respondent.
RELIEF IN LAWSUITS FOR PASSING OFF OR INFRINGEMENT
According to Section 134 of the Trade Marks Act, 1999, a lawsuit for trade mark
infringement may be filed before a District Court or High Court if the person filing the lawsuit, or
if multiple people are filing the lawsuit, any of them, actually and voluntarily resides, conducts
business, or engages in gainful employment within the local limits of the court’s jurisdiction at the
121
time of filing the lawsuit or other proceeding. A person, according to the Act, includes both the
registered proprietor and the registered user.
Section 20 of the Code of Civil Procedure, 1908, governs an action for passing off. Section
20 of the Code grants jurisdiction to courts within the geographical borders of where the defendant
resides, conducts business, or personally works for gain, or where the cause of action has arisen
entirely or partly.
According to Section 135(1), the following are typical reliefs that a judge may issue in a complaint
for infringement or passing off:
(a) Permanent and temporary injunctions preventing further trade mark usage.
(b) Compensation or profit account.
(c) The requirement to transmit the infringing labels and destruction or erasure of
markings.
An order seeking any of the following may be among the interim reliefs sought in the lawsuit:
(a) A local commissioner is appointed to conduct searches, seize illegally obtained

commodities, preserve them, prepare inventories, and more.
(b) Restricting the infringement from disposing of or dealing with the assets in a
way that may jeopardise the plaintiff’s capacity to recover damages, costs, or
other monetary remedies that may be awarded to the plaintiff in the end.
A criminal complaint can also be brought in the event of trade mark infringement or passing
off. The limitation period for commencing an action for trade mark infringement/passing off is
three years from the date of infringement/passing off. When the infringement/passing is ongoing,
a fresh course of action is required each time an infringement occurs.
122

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COOPERATIVE SCHOOL OF LAW, THODUPUZHA

THE CONCEPT OF INTELLECTUAL PROPERTY

• literary, artistic and scientific works;

NATURE OF INTELLECTUAL PROPERTY

DIFFERENT KINDS OF INTELLECTUAL PROPERTY

Trademark: A trademark is a sign capable of distinguishing the goods or services of one

NEED FOR PROTECTION OF INTELLECTUAL PROPERTY

1. IP creates a balance of interest between public and private.

THEORIES AS TO WHY INTELLECTUAL PROPERTY SHOULD BE PROTECTED

1. The Natural Rights Theory

2. The Utilitarian Theory / Incentive Theory

3. The Social Planning Theory

4. The Ethic & Reward Theory

5. The Personhood Theory

6. Moral Desert Theory

INTERNATIONAL INSTRUMENTS RELATED TO INTELLECTUAL

Paris Convention for the Protection of Industrial Property

Under the convention, in the anti-discrimination principle, a member country is empowered

Budapest Treaty on the International Recognition of the Deposit of Micro -

Protocol Relating to the Madrid Agreement Concerning the International

Berne Convention for the Protection of Literary and Artistic Works

Convention Establishing the World Intellectual Property Organization (WIPO)

1. to promote the protection of intellectual property worldwide

• To integrate national laws and procedures related to intellectual property.

Agreement establishing the World Trade Organization (WTO)

The main objectives of the WTO, as outlined in its Agreement, include:

World Trade Organization (WTO) agreement on Trade -Related Aspects of

Patent Cooperation Treaty (PCT)

The Universal Copyright Convention (UCC)

Key features of the Universal Copyright Convention include:

• National Treatment: The UCC requires member countries to extend to nationals of

• the reduction of distortions and impediments to international trade,

Issues Covered under TRIPS Agreement

The TRIPS agreement broadly focuses on following issues:

Features of the Agreement

The main three features of the TRIPS Agreement are as follows-

Protection of Intellectual Property under TRIPS

Enforcement of Intellectual Property Rights

INTERNATIONAL ORGANISATIONS RELATING TO INTELLECTUAL PROPERTY

One can see establishment of international organisations for protection of intellectual

1. The World Intellectual Property Organisation (WIPO)

(1) THE WORLD INTELLECTUAL PROPERTY ORGANISATION (WIPO)

The following are the Objects and Functions of the WIPO

i. To promote the development of measures designed to facilitate the efficient protection of

(2) WORLD TRADE ORGANISATION (WTO)

i. It oversees the implementation, administration and operation of the multilateral trade

A patent is a form of intellectual property. A patent is an exclusive right granted to a person

DEFINITION AND OBJECTIVES

• it encourages research and invention;

NEED FOR PATENT

It has been held that a method or process is a manufacture if it :

(1) results in the production of some vendible product, or

CONDITIONS FOR OBTAINING PATENT

In order to constitute ‘invention" the following conditions are to be satisfied

1. There should be a new product or process.

INVENTIONS NOT PATENTABLE

According to sections 3 and 4, the following inventions are not patentable:

PROCEDURE FOR OBTAINING PATENTS

1) Filing of application (Sections 6 -11)

Can a foreigner apply for patent in India?

2. Provisional and Complete Specification (Section 9-11)

A patent specification is a techno legal document describing the invention. A specification