Intellectual Property Rights

Lecture 1 – 24/09/2023
Intellectual Property – Definitions
1. Bently and Sherman
Intellectual – indicates character of some of the material this area of law protects – products of
human mind/ intellect
Property – form of regulation – grant of exclusive rights which operate in a manner similar to
property rights over tangibles

2. WIPO – IP refers to the creations of the mind: inventions; literary and artistic works; and symbols,
names and images used in commerce.
There is no homogenous body of law – collection of distinct, but related, legal doctrines – over diverse
subject matter

Intellectual Properties
Similarities Differences
Both can be assigned and bequeathed Non-rivalrous character of consumptions –
Trespassers can be prosecuted multiple people can enjoy the property without
destroying other’s enjoyment
Ownership gives exclusive rights to exploit the How to mark boundaries of IP – demarcate the
property or license it to allow others to do so difference between two IPs

Types of IP:
• Patents – exclusive right granted for an invention – process or product which provides a technical
solution / novel way of doing something
• Copyrights – exclusive right given to owner to copy / distribute / display / perform etc. a creative
work
• Trademarks – recognition provided to sign / design or expression which is identification of a
product or brand
• Geo. Indicators – distinctive signs used to identify products / produces of a specific geographical
area – indicates that the products bear a certain specific quality / character or reputation
• Industrial Designs – practice of designing products, devices, objects, and services - typically focus
on the physical appearance, functionality, and manufacturability of a product – protects the visible
design features
• Trade Secrets – information related to the practice / process of a company that is kept secret to
the outsiders (ex. Coca Cola / KFC etc.)
• Plant Varieties – protection of plant varieties, the rights of farmers and plant breeders - provide
exclusive rights to a breeder of the registered variety
• Utility Models (Innovations) – a registered right that gives the holder exclusive use of a technical
invention – limited period right is given in exchange for public disclosure of the workings of the
invention
• Database Rights – exclusive right which is granted to the maker of a database where there has
been a substantial investment in obtaining, verifying or presenting the contents of the database -
over and above the copyright that a person may have in the database – protects the information
itself, instead of the presentation of such data (copyright doesn’t protect the data per se)

Lecture 2 – 08/10/2023
Philosophical Foundations of IP
Welfare Theory / Incentive Theory: Law and Economics approach – roots in utilitarianism, i.e. greatest
happiness to greatest number of people – This theory is supported by economic principles as it seeks to

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maximize social welfare. According to it, protection of intellectual property is necessary if such protection
causes economically positive output in favor of the majority in a society.
Most of the information goods are ‘public goods’ in characteristic; i.e. 1) non-rivalrous character in
consumptions (ex. music / movies etc.), 2) relative non-excludability – people cannot be excluded from
the enjoyment of such things (books / medicines etc.)
Potential Consequences of the theory – things which can lead to the problem of underproduction of the
public goods:
• High fixed cost of production – compared to low marginal costs for reproduction
• High uncertainty of economic rewards or recouping the money spent on the development
• Ease of reverse engineering
• High positive externalities from the public good
Possible Solutions:
• Govt. providing the goods / subsidizing private innovators
• Government issued prices to successful producers
• Legal reinforcement of self-help strategies
• Government protects the producers against competition (IP rights)
Fairness Theory – everyone has a natural right to the fruits of his labor (including intellectual labor) –
resources that are unowned or ‘held in common’ vs. facts / concepts – if you use the facts / concepts to
create something, the one has right over such thing created – the rights are vested only to the creation
and to the facts per se.

Personality Theory – Kant & Hegel – private property rights are required to satisfy some of the basic
human needs – policy makers should try to create and allocate the entitlements to resources so that
people can fulfil those needs – w.r.t. IP it is argued that the IP works are manifestation or extension of the
personalities of the creators, and therefore IPR is needed to shield the creator from the misappropriation
and modification from others.

Culture Theory / Social Planning Theory – roots in philosophy, law and economics – property and IP rights
should be shaped to help in fostering the achievement of a just and attractive culture – ‘human nature’
blooms better under certain conditions and therefore social and political institutions should adapt to
facilitate such blooming – i.e. try to expand the degree of equalized access – it’s a theory that balances the
rights of the creator vs. right of the society (ex. patent on a lifesaving drugs)

Lecture 3 – 15/10/2023
The current IP protection regime is based on “faith-based IP system” which means that the present system
is guided more by the belief that the protection of IP is required to protect the innovation; rather than the
economic evidence – new scholars are arguing that we may need to see IP from different approaches
“Data Driven Creativity” – Raustiala & Sprigmann – evolution of digital disruption

• First digital disruption – Naspter and data sharing platforms

• Second digital disruption – gathering of consumer data – people who are in data business have
information about the preferences of the consumers

Alternatives to IP Rights

• State Support -

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 • Complementary Assets – combining the IP with some other form of assets, ex. combining the
products with services
• Contracts – NDAs / EULAs – terms and conditions imposed on employment / using content on
certain devices – ex. Kindle, the books available on kindle are licensed under EULA wherein the
usage us licensed and the book is not brought and therefore kindle may revoke access if the
conditions are violated
• Norms vs. Formal Rules – there are certain formal / informal rules in certain industries wherein
the IP creators do not use the contents of other; and if it is used then due credit is given to the
creator – ex. food and beverage / standup comedy / tattoo artists
• Open Movement – no one owns the content, and the same is created and curated by public at large
– ex. Wikipedia / open-source software
• Creative Commons – the work is targeted to reach to the larger public and when the same is used
the person using has to follow the conditions mentioned therein – ex. creator gets
acknowledgement by credits; permission to create derivative work; usage / non-usage in
commercial works

Copyright Laws
Sec 2 – Definitions
2(c) – “artistic work” means –
i. a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or
a photograph, whether or not any such work possesses artistic quality;
ii. a work of architecture; and
iii. any other work of artistic craftsmanship;
2(h) – “dramatic work” includes any piece for recitation, choreographic work or entertainment in dumb
show, the scenic arrangement or acting, form of which is fixed in writing or otherwise but does
not include a cinematograph film;
2(o) – “literary work” includes computer programmes, tables and compilations including computer
databases;
2(p) – “musical work” means a work consisting of music and includes any graphical notation of such
work but does not include any words or any action intended to be sung, spoken or performed
with the music; (lyrics would be covered under literary work)
2(f) – “cinematograph film” means any work of visual recording and includes a sound recording
accompanying such visual recording and “cinematograph” shall be construed as including any
work produced by any process analogous to cinematography including video films;
2(xx) – “sound recording” means a recording of sounds from which such sounds may be produced
regardless of the medium on which such recording is made or the method by which the sounds
are produced;

What is covered under Indian Copyright Law – Sec 13 r/w Sec 16 of the CR Act, 1957 – only things covered
under these sections are covered, and protection is extended to these things only – India follows a middle
path approach, things which can be copyrighted are limited to the ones defined under Sec 13(1), however
the definitions of those things is broad enough to cover multiple aspects and provides flexibility to cover
a varied types of creations

Sec 13 – Works in which copyright subsists –

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 (1) Subject to the provisions of this section and the other provisions of this Act, copyright shall subsist
throughout India in the following classes of works, that is to say –
a. original literary, dramatic, musical and artistic works;
b. cinematograph films; and
c. sound recording.
(2) Copyright shall not subsist in any work specified in sub-section (1), other than a work to which the
provisions of section 40 or section 41 apply, unless –
i. in the case of a published work, the work is first published in India, or where the work is first
published outside India, the author is at the date of such publication, or in a case where the
author was dead at that date, was at the time of his death, a citizen of India;
ii. in the case of an unpublished work other than a work of architecture, the author is at the date of
the making of the work a citizen of India or domiciled in India; and
iii. in the case of work of architecture, the work is located in India.
Explanation – In the case of a work of joint authorship, the conditions conferring copyright specified in
this sub-section shall be satisfied by all the authors of the work.
(3) Copyright shall not subsist—
a. in any cinematograph film if a substantial part of the film is an infringement of the copyright in
any other work;
b. in any sound recording made in respect of a literary, dramatic or musical work, if in making the
sound recording, copyright in such work has been infringed.
(4) The copyright in a cinematograph film or a sound recording shall not affect the separate copyright in
any work in respect of which or a substantial part of which, the film, or, as the case may be, the sound
recording is made.
(5) In the case of work of architecture, copyright shall subsist only in the artistic character and design and
shall not extend to processes or methods of construction.

Sec 16 – 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 of 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 a breach of trust or confidence.

Under Indian law copyright protection is granted in 06 types of work only, namely:
• literary – need to be original
• dramatic – need to be original
• musical – need to be original
• artistic works – need to be original
• cinematographic films
• sound recordings

Lecture 4 – 29/10/2023
Idea / Expression Dichotomy – it means that ideas per se are not protectable under copyright laws, but
expressions of those ideas are – accordingly, an idea that is not manifested into a specific, particular
arrangement of words, designs, or other forms may not be protected under copyright laws.
R.G. Anand v. Delux Films (1978, SC) – scriptwriter discussed the idea of a movie with a movie director –
movie director made a movie on similar lines – scriptwriter went to court claiming copyright violation –
SC held that there can be no copyright in ideas, subject matter, themes, plots or historical and legendary

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facts – violation of the copyright in such cases is confined to the form, manner and arrangement and
expression of the idea by the author or copyrighted work
It was further held that where the same idea is developed in a different manner, it is manifest that the
source being common, similarities are bound to happen – in such cases it is to be determined whether or
not the similarities are fundamental or substantial aspects of the mode of expression adopted in the
copyrighted work [this implies that in in cases of similar source, what should be monitored is expression
of the idea and not the idea itself]

Originality – the most important aspect and requirement for protection under the copyright law is the
requirement of originality – it is on the yardstick of originality that a work is checked to be deserving
copyright protection or not / it also ensures that no one claims copyrights for the work which is in public
domain – originality means that the work must be (1) independent creation (work must have started
from the creator of the work) [objective test] and (2) there must be creativity involved (there must be
modicum of creativity) [subjective test and depends upon discretion of the court]
Originality is one of the key in balancing the copyright and public right – copyright is purely a creation of
statute in India, there is no natural right of copyright

Sweat of the Brow Doctrine – UK courts evolved this doctrine – it relies entirely on the skill and labor of
the author, rendering the requirement of "creativity" in a work nearly redundant – the work seeking
protection must originate from the author, but does not require that expression be in an original or novel
form
University of London Press v. University Tutorial Press – the court held that according to UK Copyright law
it is not required that expressions must be original or novel – the only requirement is that it must not be
copied from others and must originate from the author himself.

Modicum of Creativity – this theory gives importance to both creativity and subjective contribution of the
author – it means that in order to claim copyright over a creation, the work needs to be originating from
independent creation as well as there must be some creative input from the author of the work – merely
spending of labour and time would not entitle anyone to claim copyright – originality subsists in a work
where a sufficient amount of intellectual creativity and judgment has gone into the creation of that work
– the standard of creativity need not be very high; but there should be a minimum level of creativity
involved

Feist Publication v Rural Telephone Services Co. (1991, US) – RTS was a telephone company enjoying
monopoly in a region – statue required them to print an annual telephone directory “While & Yellow
Pages” and the same was distributed free of cost – FP made directories but contained additional details
over “white & yellow pages” – FP included details of RTS monopoly area too – RTS denied license to usage
of such information by FT
Court held - for a work to qualify as ‘original’ under the copyright law, the work must be created
independently by the author and should have some minimum degree of creativity – RTS directory was
just a compilation of data without any creativity involved and hence it was mere tabulation of facts and
as such facts could not be copyrighted – RTS does not has copyright as there was no modicum of creativity

CCH Canadian v. Law Society of Canada – the author needs to produce the material with his skill and
judgement – the creativity might not be in the sense that something novel or non-obvious has been
created – however it cannot also be merely labour and capital – the derivative work produced by the
author must have some distinguishable feature and flavor to the raw text of the judgements delivered by
the court – trivial variation or inputs put in judgement would not satisfy the test of originality

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What is required to attract copyright protection in the expression of idea is an exercise of skill and
judgement – skills means use of knowledge, developed aptitude or practiced ability in producing the work
– judgement means using one’s ability to form an opinion; capability for discernment; evaluating different
possible options in producing the work – exercise of skill and judgement will necessarily involve
intellectual effort – therefore work should not be so trivial that it could be characterized as purely
mechanical exercise

Eastern Book Company v. D.B. Modak & Anr (2008, SC) – matter related to law reports – EBC argued that it
created headnotes and did some work in renumbering of paragraphs etc. – Court revisited the copyright
jurisprudence – copyright law presents a balance b/n right of authors and interests of public in protecting
the public domain/claiming copyright protection – one of the key requirements is that of originality which
contributes and has nexus in maintaining the interests of the authors as well as that of public in protecting
the matters in public domain – it was held that apart from labour, time and capital; there must be some
creativity/originality involved in the process – modicum of creativity was too high of a standard whereas
sweat of the brow test was too low of a standard; and the court followed test of "skill and judgement".
According to the court, skill meant those which are not trivial and are substantial – it was held that EBC
has a copyright on the headnotes, and data created by them for internal referencing, as well as opinion of
EBC about dissenting and concurring opinions in the judgement – however no copyright was given over
the judgement per se, as it was in public domain

Authorship – Sec 2(d) – author means

i. in relation to a literary or dramatic work, the author of the work;
ii. in relation to a musical work, the composer;
iii. in relation to an artistic work other than a photograph, the artist;
iv. in relation to a photograph, the person taking the photograph;
v. in relation to a cinematograph film or sound recording, the producer; and
vi. in relation to any literary, dramatic, musical or artistic work which is computer-generated, the
person who causes the work to be created
Authorship v. Ownership – author can transfer the ownership of the work to someone else – in this case
the economic rights would belong to the owner
Joint Authorship
Najma Heptulla v Orient Londman Ltd (1989, Delhi) – controversy related to authorship of book ‘India
Wins Freedom’ – books showed Maulana Abul Kalam Azad as author, however Prof. Humayun Kabir also
played a role in transcribing and giving final form to the book – question can HK also have authorship
over the book – held that if 2 person collaborate together and with common design produce a literary
work, then they would be regarded as joint authors – here there was pre-concerted joint design b/n two
in writing the book – hence both are joint authors.
Institute of Inner Studies v. Charlotte Anderson – Pranic Healing – IIS was trying to restrain anyone from
carrying out activities of spreading Pranic Healing teachings, techniques, practices and courses etc.
invented by Master Choa Kok Sui – also restraining organizing workshops, trainings programmes,
seminars on Pranic Healing without permission of IIS
CA argues that she transcribed, compiled and edited the 9 books and she was co-author & master had also
acknowledged her efforts – name of master appeared on the books as author – IIS claimed she was merely
transcriber and not the author
Delhi HC – the copyright protection in literary work did not extend to the performance of techniques of
Pranic Healing – there are 3 ingredients of co-authorship 1) collaboration, 2) non distinction of the

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contribution of one and other, and 3) creative input – the ingredients exist in this case, hence she was
accepted as co-author of the work.

Work for Hire – the copyright has no reference to this, however this is still recognized in Indian
jurisprudence
Work for Hire v Contract for Service – Chitty on Contracts – factors identifying contract of employment

• degree of control exercised by the employer – their view of their own relationship
• whether the workers’ interest in relationship involve any prospect of profit or loss
• whether the worker was regarded as a part of employer’s organization
• whether the worker was carrying on business in his own or carrying on business with employer
• provision of equipment
• incidence of tax or insurance
• traditional structure of the trade or profession – and the arrangements within it
Sec 17 - the author of a work shall be the first owner of the copyright therein
Exceptions:
1. in the case of a literary, dramatic or artistic work made by the author in the course of his
employment by the proprietor of a newspaper, magazine or similar periodical under a contract of
service or apprenticeship, for the purpose of 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 copyright in the work – for publication in such things – apart from these, the author
is first owner

2. subject to (1), in the case of a photograph taken, or a painting or portrait drawn, or an engraving
or a cinematograph film made, for valuable consideration at the instance of any person, such
person shall, in the absence of any agreement to the contrary, be the first owner of the copyright

3. work made in the course of the author’s employment under a contract of service or
apprenticeship, to which clause (1) or clause (2) does not apply, the employer shall, in the absence
of any agreement to the contrary, be the first owner of the copyright therein

4. in the case of a Government work, Government shall, in the absence of any agreement to the
contrary, be the first owner of the copyright

Lecture 5 – 05/11/2023
Indian Performing Rights Society v, Eastern India Motion Pictures Assn. (SC) - IPRS published a tariff laying
down the fees, charges and royalties that it proposed to collect for the grant of licenses for performance
in public of works in respect of which it claims to have authority to grant such licenses – the producers of
cinematograph films who claimed to be owners of the respective films including the sound track thereof
raised objections to the imposition of the proposed tariff, claiming that they are the first copyright-holders
of the cinematograph films including the musical work contained in the sound track – SC held that on the
reading of Sec 17(b) and (c) it is clear that the rights of a music composer or lyricist can be defeated by
the producer of a cinematograph film if producer hires them to create such work for the film – if there is
a contract of service between the composer and production house. In this case, the producer of the
cinematograph film becomes the absolute owner and the authority cannot be questioned.
PROF – this was based on erroneous interpretation of law, as the relevant subject matter here was ‘music’
and not creation of ‘cinematographic film’
R. D. Bansal & Co. v. Harper Collins Publishers (2023, Delhi) – RDB was producer of a movie – invited Satyajit
Ray to write script for a movie ‘Nayak’ – 2018, Bhaskar Chattopadhyay wanted to novelize the screenplay

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of Nayak movie – novel published and released by HCP in May 2018 – RDB sued HCP for copyright
infringement – HCP argued that copyright vested in Satyajit Ray and after his death with his son Sandip
Ray and Society for Preservation of Satyajit Ray Archives & HCP obtained license from them to novelize
the screenplay
Court held – that screenplay is not covered under ‘cinematographic film’ contained u/r Sec 17(b) – the
protection under the provision would apply only to the cases where someone is hired to make a film per
se – Sec 17(c) would not be applicable as from the reading of it appears that the clause does not apply
when the contract is between equals – such a contract would be ‘contract for service’ and not ‘contract of
service’ – i.e. for application of 17(c) the contract must be employment and not that on the independent
contractors
Copyright (Amendment) Act, 2012 was introduced to clarify certain aspects:
Proviso to Sec 17 – in case of work incorporated cinematograph film, nothing contained under Sec 17(b)
& (c) shall effect the rights of author under Sec 13(1)(a)
Sec 18 – incorporated several author friendly provisions
Sec 19(9) – No assignment of copyright in any work to make a cinematograph film shall affect the right of
the author of the work to claim an equal share of royalties and consideration payable in case of utilization
of the work in any form other than for the communication to the public of the work, along with the
cinematograph film in a cinema hall

Types of Licensing
• Voluntary Licensing – Sec 30 – the owner of the copyright in a work may grant any interest in his
copyright to any person by license in writing – can be granted not only in existing work but also
in respect of the future work, in this situation assignment shall come into force when such future
work comes into existence

• Compulsory Licensing
Sec 31 – compulsory licenses in work which has been published or performed in public –
empowers the Appellate Board to direct the Registrar to grant license, if a complaint is made to it
in writing under the Act, during the subsistence of copyright stating the necessary facts which are
conditions precedent to its exercise of power
o owner has been approached in the first instance for the grant of license and
o the author has refused to publish or allow the republication of the work and
o by the reason of such refusal the work is withheld from the public

Sec 31A – where the author is dead or unknown or cannot be traced, or the owner of the copyright
in such work cannot be found, any person may apply to the Copyright Board for a license to
publish such work or translation thereof in any language

Sec 31B – Any person working for the benefit of persons with disability on a profit basis or for
business may apply in prescribed manner to the Appellate Board for a compulsory license to
publish any work in which copyright subsists for the benefit of such persons

• Statutory Licensing
Sec 31C – for cover songs

Sec 31D - Any broadcasting organization, desirous of communicating published work to the public
by way of broadcast (by way of television broadcast or radio) or a performance of any published
musical/ lyrical work and sound recording, can do so by giving prior notice of this intention to the
owners

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 • Sec 32 – after expiry of a period of seven years from the first publication of a literary or dramatic
work, any person may apply to the Copyright Board for a license to produce and publish a
translation of work.

Rights under Copyright – bundle of rights – Copyright law provides different bundles of right w.r.t.
different subject matters – economic rights and non-economic rights
Sec 14 – Meaning of Copyright - copyright means the exclusive right to do or authorize the doing of any of
the following acts in respect of a work or any substantial part thereof
a. literary, dramatic or musical work, not being a computer programme
i. to reproduce the work in any material form including the storing of it in any medium by
electronic means;
ii. to issue copies of the work to the public not being copies already in circulation;
iii. to perform the work in public, or communicate it to the public;
iv. to make any cinematograph film or sound recording in respect of the work;
v. to make any translation of the work;
vi. to make any adaptation of the work;
vii. to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation
to the work in sub-clauses (i) to (vi);

b. computer programme
i. to do any of the acts specified in clause (a);
ii. to sell or give on commercial rental or offer for sale or for commercial rental any copy of the
computer programmer

c. artistic work - to reproduce the work in any material form including

• storing in any medium, electronic or otherwise
• depiction in 3Ds of 2D work
• depiction of 2D of 3D works

d. cinematograph film
i. to make a copy of the film, including
A. a photograph of any image forming part thereof
B. storing of it in any medium by electronic or other means;
ii. to sell or give on commercial rental or offer for sale or for such rental, any copy of the film
iii. to communicate the film to the public

e. sound recording
i. to make any other sound recording embodying it – including storing of it in any medium by
electronic or other means
ii. to sell or give on commercial rental or offer for sale or for such rental, any copy of the sound
recording
iii. to communicate the sound recording to the public.

Sec 57 – Author’s special rights – Independently of the author’s copyright and even after the assignment
either wholly or partially of the said copyright, the author of a work shall have the right-
(a) to claim authorship of the work; and
(b) to restrain or claim damages in respect of any distortion, mutilation, modification or other act
in relation to the said work which is done before the expiration of the term of copyright if such
distortion, mutilation, modification or other act would be prejudicial to his honour or reputation:

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The right to attribution (moral rights) is an inalienable right which vests in the author of a work – all other
rights can be transferred by not these
Mannu Bhandari v Kala Vikas Pictures (1987, Delhi) – novel was being adapted into a movie – movie was
shown to the author – she was of the opinion that film contained distorted and modified versions of her
novel, which if allowed to be screened, would lower her image and the special reputation of her novel –
Court held that although changes are inevitable in the process of converting a novel into a film, these
changes must not completely modify the original theme and characters – modifications that convert the
film into an entirely new version from the original novel, and distort or mutilate the novel should not be
permitted – further it held that certain scenes in the film must be changed before the screening to
maintain the original plot of the novel – the parties arrived at a settlement before the pronouncement of
the judgement – filmmakers agreed to delete the names of the author and her novel from the film credits,
while Mannu Bhandari agreed to not claim any rights or interest in the film.

Amarnath Sehgal v. Union of India (Delhi) – AS a well-known sculptor, was commissioned to prepare a
mural by the Indian Government for the Vigyan Bhavan – government decided to remove the mural and
store the said mural in a storage space of the building due to ongoing renovations and failed to notify or
seek authorization from AS – the mural got slightly damaged due to mishandling and negligence – AS sued
the Government over the mistreatment of his mural, claiming it to be a violation of his moral rights
government argued that once the sale was complete and due consideration had been paid, it had the
power to utilize the work as it deemed fit, including its decision to remove the work from public display.
Court held – the mutilation and part destruction of the mural was prejudicial to the reputation of the
author itself, regardless of who is the owner – AS got compensation and the court ordered govt to return
the mural to AS

Infringement of Rights – Sec 51 – Copyright in a work shall be deemed to be infringed

a) any person without a license from owner / registrar of copyright – or in contravention of
conditions of license granted
i. does anything for which the exclusive right is vested with the owner
ii. permits for profit any place to be used for the communication of the work to the public
where such communication constitutes an infringement – unless he was not aware and
had no reasonable ground for believing that such communication to the public would be
an infringement
iii.
b) when any 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
ii. distributes either for the purpose of trade or to such an extent as to affect prejudicially the
owner of the copyright
iii. by way of trade exhibits in public
iv. imports into India, any infringing copies of the work (one copy for personal usage – not
infringement)
R. G. Anand v. Delux Films (1978, SC) – the court laid down the test for ascertaining infringement of
copyright – surest way to determine whether violation of copyright has taken place or not is see the reader
spectator or the viewer of the work in question, after having seen or read both the works – and to check
if there is an unmistakable impression that the subsequent work is a copy of an earlier work

Secondary Liability

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 • Contributory Liability – there was knowledge of infringement + there was material contribution
to such violation
• Vicarious Liability – there is right and ability to supervise / control the infringing activity + direct
financial interest in such activities
MySpace v. Super Cassettes (Delhi) – MS was user generated content website – allows users a platform to
upload, view and share music and entertainment related content – SC (T-Series) a music company with
vast number of copyrighted songs and their business is of sale and licensing of their copyrighted songs –
some users uploaded SC songs in the website – SC gave notice to take down – some were removed and
some were still streaming
Court held – if intermediaries are pointed to specific infringing material by rights holders then they must
remove such content, without the necessity of a court order – however it was also held that held that if
intermediaries are tasked with the responsibility of identifying illegal content, it could have a chilling
effect on free speech – accordingly SC was ordered to provide a detailed list of the works being infringed
along with URLs to those & MS was asked to remove those links within 36 hours after receiving the info

Exceptions to Infringement – Sec 52

• Fair Dealing Exception – Sec 52(1)(a) – it’s a three-step test for determination of fair usage
o whether there was a dealing – private or personal use, including research
o whether the said dealing was for purposes specifically allowed – criticism or review,
whether of that work or of any other work / the reporting of current events and current
affairs, including the reporting of a lecture delivered in public
o was the dealing fair – question of degree and impression – discretion of the court
Hubbard v. Vosper (1972, England) – fair dealing is a question degree and impression:
Degree – consider the number and extent of quotation and extracts – whether too long and too
many to be fair
Usage – used as a basis for criticism, comment or review – maybe fair dealing / used to convey
same or rival information as of original author – not fair
Proportion – too long extracts and attaching short comments to the same – not fair
After this it is a matter of impression
Univ. of Oxford v. Rameshwari Photocopy Service (Delhi) – UOP claimed unauthorized use and
reproduction of Oxford’s publications to create and sell “course packs”, which were bundles of study
material for students’ reference
Court held – the present matter is covered under Sec 52(1)(i) of the Copyrights Act – this is applicable not
only to the individualized teacher-student interaction, but also would apply to reproduction by the
educational institutions in their course of instruction – there is no quantitative limitations under this
provision
Sec 52 cannot be read as Proviso to Sec 51 – the exceptions are individual to the infringements

Anti-circumventions & DRM

Sec 65A – protection of technological measures – if the technological measures placed to protect the
content are tampered with – then additional liability would be fastened
Sec 65B – protection of Rights Management Information – if there is usage of some marks / watermarks
signifying it is protected and such markings are tampered with – then also infringer renders himself open
for additional liability

Patel, S.
Page 11 of 11
 IPR Law – FA – II
Lecture 6 – 17/12/2023
Designs – designs seek to protect the external appearances of the products – these do not relate to the
functional aspect of the product itself
Sec 2(d) Design Act, 2000 defines design –
• features of shape, configuration, pattern, ornament or composition of lines or colors
• applied to any article whether in two dimensional or three dimensional or in both forms
• by an industrial process or means, whether manual, mechanical or chemical, separate or combined
• which in the finished article appeal to and are judged solely by the eyes
• EXCLUDES –
o A principle of construction or a mere mechanical design
o Trade Mark u/r S2(1)(v) of the Trade Marks Act, 1999
o Property u/r Sec 479 of IPC
o Artistic work u/r Sec 2(c) of the Copyright Act, 1957
o Sec 4(d) – design containing ‘scandalous or obscene subject matter’
o Sec 5(1) – design ‘contrary to public order or morality’
o Sec 46 – designs which may run counter to protection of security of India
Sec 2(g) defines originality w.r.t. designs – ‘original’ in relation to design means originating from the author
of such design and includes cases which are old in themselves by new in their application (old design in
newer product)

Novelty in Designs
• Sec 4(a) – design must be new / original
• Sec 4(b) – no prior disclosure (before prior filing / priority date), published or otherwise
• Sec 16 – disclosure in good faith – exemption
• Sec 21 – disclosure in an exhibition notified by the govt – exemption
Bharat Glass Tube vs. Gopal Gas Works (2008 SC) – GGS had design registration from diamond pattern
shaped glass sheets – BGT manufactured similar glass sheets and were sued by GGW – design in the sheets
were formed using engraved rollers developed by a German company, which has assigned all rights in India
to GGW
BGT filed application for cancellation of GGWs design due to lack of novelty and originality – BGT claimed
that the design was already published by the German comp. in 1992 – GGW claimed that German comp. only
manufactured the engraved rollers and not the glass sheets; and rollers can be used to engrave on multiple
surfaces like glass or plastic – registrar cancelled the registration – Cal HC reversed this – BGT appealed
SC held – originality u/r 2(d) means application of shape / configuration to any article – since GGW while
application had specifically mentioned about application of design to the glass sheet, he shall have exclusive
rights to do so, despite the fact that design existed in the engraved rollers – appellant failed to show that the
design was already published – publication of design in UK was dismissed as it did not mention that the
design was applied specifically to the glass sheet – and also did not match on visual comparison

Lecture 7 – 07/01/2024
Deigo vs. Great Galleon (2022 Del) – D alleged that GG was infringing their ‘Hispter’ bottle in shape of
mobile phones – GG argued that the registration was invalid as the such elements of design are common to
such bottles
Court held that in order to counter the claim of novelty what is needed to be shown is that there is one single
prior art which existed before registration – multiple prior arts cannot be combined together, i.e. no
mosaicing of prior arts – court should not dissect individual features of a design and try to find them
individually in prior art, instead conspectus of features as a whole must be seen – it is possible that existing

1
features of known design can be combined in an unseen manner which can result in a design which is novel
– D’s design was found novel
Glaxo Smithkline CH GmbH vs. Anchor Health & Beautycare Pvt Ltd. (2004 Del) – GSCG argued that AHBP
was trying to copy their design of toothbrushes – AHBP contended that the zig-zag S band was not protected
u/r the design act as it was mechanical design – ques - whether the design was merely mechanical design
Court held – the zig-zag S bend is a utilitarian and functional band for which GSCG already had a patent on
the ground that it introduces flexibility in the toothbrush – by mere addition of rubber cushions in the gaps
this would not become a design to preclude others from using it – the rubber cushions may increase the
flexibility and as such are utilitarian components – therefore no protection can be given u/r designs

Ownership of Design – Rights

• Right in design – called ‘copyright in design’ – valid for 10 years, can be renewed for another 5 years
• Has to be registered in a particular class of as per classification u/r Schedule 3 of the Design Rules
• After registration design register remains open for inspection
• Registration can be cancelled by filing an application for cancellation u/r Sec 19
Infringement – Piracy in design – Sec 22
Sec 22(1) – to apply or to cause to apply any design or fraudulent or obvious imitation of the design on an
article for sale in the same class as the design is registered
Sec 22(b) – import of such article
Sec 22(c) – publication or exposure of such an article

Dunlop Rubber vs. Gold Ball Developments Ltd. (1931 Eng) – difference between obvious and fraudulent
imitation – obvious means something which as soon as one looks, strikes as being so like the original design
as to be almost unmistakable, obvious imitation is something which is very close to the original design and
the resemblance to the original design is immediately apparent to eye looking at it
Fraudulent imitation seems to be an imitation which is deliberately based upon the registered design – is an
imitation which may be less apparent than obvious imitation; meaning that there may be some subtle
differences between the original design and fraudulent imitation, yet there still would be imitation
perceptible when both designs are closely scanned

Sec 19 – Grounds of Cancellation

a. the design has been previously registered in India
b. publication in any country prior to the date of registration in India
c. not a new / original design
d. design is not registrable u/r Design Act
e. not a design u/r Sec 2(d)

Overlaps with Copyright

• Sec 15(1) Copyright Act – Copyright does not lies in registered as design
• Sec 15(2) Copyright Act – if the object which is capable of being registered as a design & has been
reproduced more than 50 times by mechanical means would be disqualified from copyright
protection
• Sec 52(1)(w) Copyright Act – copyright is not violated if a 3D object is made from a 2D artistic work
– for industrial application of any purely functional part of a useful device

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Microfibers vs. Girdahr (2009 Del) – MF manufactured & sold upholstery fabrics with designs derived from
the original and unique artistic works – the artistic works came from either employees or from those who
owned the copyrights – G allegedly infringed upon the works
Court held – there is a clear distinction b/n the original artistic work and design derived from it for industrial
application on an article – the original artistic work which may have inspired creation of the design, is not
merely feature of shape, configuration, patter, ornament or composition of lines or colors which are created
to apply to an article by industrial process (as required u/r Designs Act) – original artistic work is different
from design – moreover, artistic works are excluded from the definition of designs
It is not necessary that in every case a design has to be preceded by an artistic work upon which it is founded
– design may also be created without creating an artistic work first

Overlaps with Trade Marks

There may be claims of passing off along with design infringement
Mohan Lal & Anr. vs. Sona Paint & Hardware (2013 Del) – 2 cases – P1 developed novel & distinguishable
designs of mirror frames and obtained design registration over the same – P2 designed containers and
obtained design registration for them – Ds started to copy these designs and were sued for infringement and
passing off – Ds argued that (i) the design was not novel and (ii) the design was already registered as trade
mark by the D
Court held – registration of design creates only a ‘rebuttable presumption’ in favor of the holder of the design
right, this implies that the right can be dislodged if there are sufficient evidence – passing off action would
be maintainable for an unregistered design – post registration of the design, trademark could be registered
as Sec 19 does not mentions this as a ground for cancellation – there cannot be a composite suit for
infringement of registered design as well as passing off action.
Carlsberg Breweries vs. Som Distilleries (2018 Del) – CB sued SD for infringement of design and passing
off – court overruled Mohan Lal judgement – held that a composite suit has the advantage of the bird’s eye
view by the court on the common set of facts – design infringement is prima facie weak and plaintiff cannot
seek interim relief whereas the same can be given in action for passing off – there is common question of
laws and facts, avoids multiplicity of proceedings – composite suit can be filed for passing off and design
infringement

Lecture 8 – 03/02/2024
Trademarks -
Sec 2 (zb) Trademarks Act – defines trademarks
• a mark
• capable of being represented graphically
• capable of distinguishing the goods or services of one person from those of others
• used or intended to be used in relation to goods or services
Sec 2(1)(m) – 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 (flexible definition)
Qualitex Co. vs. Jacobson Products (1995 US) – question was can colors be trademarks – court held yes,
there is no theoretical objection on use of colors are TM – but limited to only those cases where the colors
have attained ‘secondary meaning’ and the color itself identifies and distinguishes a particular brand, i.e.
people relate the color to the product
Ralf Sieckmann vs. Deutsches Patent & Markenamt (2002 EU) – RS applied for smell mark for 3 services
in 3 different categories – based on chemical formula + odour sample of the sign in a container + description
(balsamically fruity with a slight hint of cinnamon) – was rejected, question was whether any of this fulfilled

3
requirement of graphical representation – ECJ held that graphical representation requirement is to
determine the precise subject of protection afforded by the registered mark to its proprietor – it is important
for the authorities to enable them to fulfil their obligations – it is important for public and economic
operators to find out what registration has been sought by their current or potential competition & find out
information about rights of 3rd parties – TMs may consist of sign which is not itself capable of being perceived
visually, provided it can be represented graphically particularly by means of lines, images or characters and
that representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective – ECJ
rejected the claim stating that the claim here did not fulfil the graphical representation requirement
In re Clarke (1990 SC) – TM was “high impact, fresh, floral fragrance reminiscent of plumeria blossoms” for
sewing thread embroidery yarn – was allowed – applicant was able to demonstrate that customers, dealers
and distributors of schemed yarns and threads have come to recognize applicant as source of goods (here
the view of US regime is different from the regime in EU – no requirement of graphical representation)
Shield Mark BV vs. Joost Kist (2003 EU) – SM applied for 14 TMs for various services and products like
computer software, seminars in areas of promotion, IP ad commercial communication, legal services etc. –
different approach 4 TMs consisted of musical stave with first 9 notes of the musical composition ‘Fur Elise’
by Beethoven / 2 TMs of them stated sound marks and consisted the musical melody formed by the notes
(graphically) transcribed on the stave + played on a piano / onomatopoeia imitating a cockcrow / 1 TM used
crow of a rooster, was used for a computer software for lawyers and TM specialist
JK was communication consultant – organized seminars on IP & Marketing, conducted and ad campaign –
SM claimed infringement
Initially claimed was rejected by lower courts based on ground that TM law precluded sound signs from
being register as TM – appeal went to highest court – 2 question (i) recognition of sounds as TMs and (ii)
requirement of graphical representation in it
Court held – (i) sounds can be registered as TM provided that they are capable of distinguishing the goods
or services of one undertaking from those of others and capable of being represented graphically; (ii)
representation of such sound must be clear precise, self-contained, easily accessible, intelligible, durable and
objective (stave divided into measures and showing in particular clef, musical notes and rests whose form
indicates the relative value and where appropriate accidentals – helpful in determine the pitch and duration
of sounds); and (iii) graphical representation would not be satisfied by mere tests such as ‘first nine note of
Fur Elise’ / ‘crow of a rooster’ etc. – here TMs were recognized due to (ii) (INDIA also follows similar position)
EU after 2017 has diluted the requirement of graphical representation

Sony Ericsson Motion Mark – TM was animated sequence consisting of 20 stills that make up the sequence
which runs within a time frame of approximately 6 seconds – animation at the time of starting of the phone
– sequence is a colored stream of liquid which flows across the screen.
Fluid Marks – can be a word, phrase, symbol, or design identifying and distinguishing a product or service
source – mark based on the original TM, altered deliberately to appear as a variant of original TM
Trade Dress Protection – protects the overall appearance of products / setups – intended to protect
consumers from packaging or appearance of products that are designed to imitate other products – u/r
Indian law trade dress has not been specifically protected – u/r US law trade dress has been protected u/r
Lanhman Act (Sec 43(a)) – trade dress defines as visual or sensual appearance of product, may include
packaging, shape, combination of colors or any combination of those aspects, and should serve as same
source identifying function as TMs
Collective Marks – distinguishes the goods or services of the members of one association of persons from
those of others – Sec 2(g) TM Act
Certification Marks – marks used to certify that the goods or services on which the mark is applied have
certain characteristics – origin, material, mode of manufacture, performance of services etc. – don’t indicate
the source of goods – Sec 2(e) TM Act

4
Well Known TM – means a mark which has become so to the substantial segment of the public which uses
such goods or receives such services that the use of such mark in relation to other goods or services would
be likely to be taken as indicating a connection in the course of trade/business between those goods or
services and the person using such well known TM on his goods or services

Economic Foundations of TM
• reduced customer search cost – allows the consumer to obtain same services / goods without undue
search
• incentivizes the firms to invest in quality – self-enforcing feature
• cost involved in imitating the TM is marginal compared to developing the recognition – the stronger
the TM the higher incentives of imitating it – absence of legal regulations would lead to higher
incentives for imitation
Economic Costs of TM
• creates monopoly on TM
• may transform rents into additional costs to customers – as one firm’s expenditure on promoting its
mark cancels out that of other firms
• waste of economic resources

Lecture 9 – 04/02/2024
Historical Foundations of TM
• marking of goods – dates back to ancient times
• earlier times – indicated ownership of the goods to which it was affixed
o proprietary character – optional
o usually affixed to goods by the owner
o for benefit of illiterate clerks – easy to identify and claim in case of shipwreck / piracy
o essentially a merchants’ mark rather than a craftsman’s mark – nothing to do with the source
of production of the goods in question
• Medieval times
o regulatory character – compulsory nature – guild regulations
o tracing the defective works to the craftsman
o preventing entry of foreign goods
o after the demise of guilds became non-obligatory
• Mid-modern times
o industrial revolution – growth of regional trade
o beginning of advertisement of goods by reference to marks
o reliance of purchasers on marks – indication of source of goods
• Hanover Star Mining Co vs. Metcalf (1916 US) – primary and proper function of TM is to identify
the origin or ownership of the goods to which it is affixed
• ‘The Rational Basis of TM Protection’ by Frank L. Schecter, Harvard Law Review (1927) – TM is not
merely the symbol of good will but often the most effective agent for creation of good will, imprinting
upon public mind an anonymous and impersonal guaranty of satisfaction, creating a desire for
further satisfaction. The marks usually sells the goods – this paper was of enormous significance
towards the awareness for TM protection
Major International Treaties
• Paris Convention for Protection of Industrial Property
• TRIPS Agreement
• Madrid Agreement Concerning the International Registration of Marks
• Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks
• Nairobi Treaty on the Protection of the Olympic Symbol

5
 • NICE Agreement Concerning the International Classification of Goods and Services for the Purposes
of the Registration of Marks
• Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks
• TM Law Treaty
• Singapore Treaty on Law of TM
Paris Convention on Industrial Property, 1883
National Treatment – Art 2 – nationals of member countries enjoy in all other member countries the
advantages that each national law grants to their own citizens – member countries would give equal
treatment / would not discriminate against the citizens of other member countries
nationals of non-member countries shall also be entitled to National Treatment if they are domiciled or have
real and effective industrial / commercial establishment in the member country
Priority Rights – Art 4 – if one files an application for registration of TM in a member country – he can claim
the priority date if he applies within 6 months in other member countries

TRIPS Agreement
• Must comply with the minimum rights provided u/r Paris Convention
• Most Favored Nation (MFN) – Art 4 - any advantage, favor, privilege or immunity granted by a
member to the nationals of any other country shall be accorded immediately and unconditionally to
the nationals of all other Members
• Protection of service marks
• Usage cannot be a precondition for application of registration (Art 15(3))
• Removal for non-usage – uninterrupted period of 3 years of non-usage (Art 19)
• Minimum term – renewal – 7 years (Art 18)
• Enforcement Measures (Part III)
• Dispute Settlement Mechanism

Madrid Protocol
• Single Application – Single Language – Single set of fees – Single currency requirement
• filing at home country – application for international registration can be based on a pending national
registration – EU a member to protocol, possibility of single registration valid across EU
• easier renewal across jurisdictions
• flexibility in change of names of owners, address changes etc.

TM: Overview of Registration Process:

1. Identification of the ‘mark’ / ‘word’ – can be fanciful, arbitrary, suggestive, descriptive, generic
2. Searching is the same / similar mark already exists
3. Identifying the TM Office which will have jurisdiction – India – principal place of business must be in
India – if there is no principal place of business in India, then appropriate TM Office would be where
the address of service is given
4. Application -> Examination -> if objections by TM office then clear them -> if objections cleared then
publication in TM Journal -> there may be objections -> clearing of objections -> proceeds to
registration
In Paris Conventions the person desirous of getting TM protection would apply for TM registration in each
and every jurisdiction separately – advantage of this is every registration is independent and is not
dependent upon outcome of earlier application – disadvantage of this is that it is added cost for every
jurisdiction
Madrid Protocol – centrally administered system for obtaining a bundle of TM registration in different
jurisdiction – administered by WIPO – India became a member in 2013

6
 • Basic application in jurisdiction – filing of application at the office of origin u/r Madrid Protocol
(including the names of the places where TM is sought)
• Certificate by Office of Origin – details in the international application correspond to the details in
the basic application / basic registration
• WIPO – formal examination / registration of the mark in the international register / publication in
the international gazette / certificate / notification to designated contracting parties
• Substantive time is done at designated office, i.e. individual countries – if there is refusal then the
same would be notified to WIPO
• Registration is dependent upon the fate of TM in the home country – if the
refusal/withdrawal/cancellation happens in the home country within 05 years of international
registration – then international registration is also cancelled – this is called risk of central attack
Lecture 10 – 05/02/2024
Madrid Protocol vs. Madrid Agreement

• MP – 144 countries – MA – 55 countries

• Application – MP a/r the filing of application in the home country – MA a/r registration in the country
of origin
• Central Attack – registrations under both gets cancelled – u/r MP the application do retain their
priority date – u/r MA the right gets limited to the outcome a/r the central attack
• Time Period for notifying IB about objections – MA 12 months – MP 12/18 months (longer in case of
objection-based oppositions)

Grounds of Rejections
• Absolute Grounds
1. Sec 9(1)(a) TM Act – devoid of distinctive character – not capable of distinguishing the goods or
services of one person from another – aimed to prohibit registration of marks which do not fulfil the
function of TM
British Sugar Plc. vs. James Robertson & Sons (1996 Eng) – BSP has TM ‘treat’ for dessert sauces and
syrup and used its TM ‘silver spoon treat’ on a sweet syrup in a range of flavors to pour onto ice-cream
– JRS had a product ‘robertson’s toffee treat’ for sweat spread – BSP claimed infringement – JRS went of
cancellation of TM of BSP – court held that a TM is devoid of distinctive nature if the people do not relate
it with the product – a common work, absent use and recognition as TM, is in itself devoid of any
distinctive inherently character
National Bell Co. vs. Metal Goods Mgf. Co. (1970 SC) – TM was in numeral ‘50’ and figure ‘FIFTY’ – NBC
manufacturers and also dealers in cycle bells and were selling their cycle bells with the numeral '50'
inscribed on them they claimed MGM was passing off and infringing their TM – MGM took the defence
that the subject matter trademark of the plaintiff is being used by various third parties and that the same
is common to trade – TM challenged validity of TM on the ground of distinctiveness – court held
distinctiveness may be lost in variety of ways – when goods are not capable of being distinguished as
the goods of such a proprietor – extensive piracy may make a mark become publici juris
Sec 32 of TM Act – when a TM is registered in breach of Sec 9(1) it shall not be declared invalid, if as a
consequence of usage of such TM, the TM has acquired a distinctive character in relation to the goods or
services for which it has been registered - before the commencement of legal proceedings
Distinctiveness:
o Prior to registration – date for checking distinctive nature is b/r registarion
o After registration – the date of checking the distinctive nature is b/r the date of commencement of
legal proceedings
Windsurfing Chiemsee (CJEU) – factors while assessing whether the TM has acquired a distinctive
character:
i. market share held by the mark
ii. how intensive, geographically widespread and long standing the use of mark has been

7
 iii. the amount spent on promotion of the mark
iv. the proportion of the relevant class of persons, who because of mark, identify the goods as
originating from that particular source
v. statement from chambers of commerce and industry or other trade and professional associations
Distinctiveness – Domain Names
• neither automatically qualifies nor disqualifies for registration of TM
• key question – whether the domain name has the ability to function not just as a domain name, but
also as a TM for the goods or services of the applicant
• use of the mark as domain name will not help unless the applicant shows through evidence that the
relevant goods/services have been offered for sale using the domain name

2. Sec 9(1)(b) – TMs which consist exclusively of marks or indications which may serve in trade to
designate kind, quality, quantity, intended purpose, values, geographical origin, time of production
of goods or rendering of services or other characteristics of goods & services – cannot be registered
as TM
3. Sec 9(1)(c) – marks 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
4. Exceptions to (a), (b) & (c)
i. if b/r the date of application for registration – acquired a distinctive character as a result of
usage
ii. if b/r the date of application for registration – is a well-known TM

5. Sec 9(2) – a mark shall not be registered as TM if-

a) is of the nature as to deceive the public or cause confusion
Swiss Miss Application (1977) – mark ‘swiss miss’ for mixes and preparations for making hot
or cold chocolate or cocoa beverages; non-dairy cream and milk substitutes; coffee/tea
whiteners etc – produced by a US company – application was rejected as the consumer may think
that the product was manufactured in Switzerland
b) contains or comprises of any matter likely to hurt religious susceptibilities of any class or
section of the citizens of India
Babu Lal Priyadarshi vs. Amritpal Singh (SC) – TM was sought for the work ‘Ramayan’ to be
used in incense sticks etc – SC held that the ‘the answer to the question whether a person can
claim name of a holy or religious book as a TM is strictly NO’
c) comprises of obscene or scandalous matter – what is obscene / scandalous is a question of
fact
d) marks prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950

6. Sec 9(3) – a mark shall not be registered as TM – if it exclusively consists of

a) the shape of goods which result from the nature of goods itself

b) the shape of goods which is necessary to obtain a technical result

Philips Electronics NV vs. Remington Consumer Products Ltd (CJEU) - PE had invented a
shaver with 3 heads, gave close and smooth shave – PE had patent protection for 20 years a/r
that they sough the protection as TM – RCPL opposed the TM on the grounds of technical result
(close and smooth shave) – PE contended that the same result can be obtained from other
shaped shavers too
Court held – the acceptance of claim of PE would lead to circumstances where the undertakings
might register all the shapes which can achieve the same results, this would lead to creation of
permanent monopolies – therefore if a shape leads to technical result then no TM in such shape

c) the shape which gives substantial value to the goods

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 Bang & Olufsen vs. OHIM (2011) – BO is a manufacturer of speakers etc – filed TM for shape of
a speaker – court denied – held that the purpose for barring registration of merely functional
shapes or shapes which give substantial value to the goods is to prevent the exclusive and
permanent right which a TM confers from serving to extend the life of other rights which the
legislature has sought to make for limited times

Nestle SA vs. Cadbury UK (CJEU) – Nestle wanted to TM the shape of KitKat – denied
Lecture 11 – 06/02/2024

• Relative Grounds
1. Sec 11(1) – a TM shall not be registered – (a) identical marks in similar goods/services; (b) similar
marks – identical or similar goods/services – this is because there is a likelihood of confusion on the
part of the public, which includes the likelihood of association with the earlier TM
LTJ Diffusion vs. Sadas Verbaudet – the question related to usage of word ‘Arthur ET Felicie’ in form of
signs or signatures – court held that a sign is considered identical where it reproduces, without any
modification or addition, all the elements constituting the TM or where, viewed as a whole, it contains
differences so insignificant that they may go unnoticed by an average consumer – even though the signs
have a similar name, but by the way they were represented they cannot be called identical
British Sugar Plc. vs. James Robertson & Sons (1996 Eng) – threshold for considering goods or
services same or similar:
a. respective uses of the goods and services
b. respective users of those goods and services
c. physical nature of good or acts of services
d. respective trade channels through which the goods or services reach the market
e. in case of self-serve consumer – where the said goods are respectively found / likely to be found
in the supermarkets and particularly whether they are to be found in the same shelves or
different shelves
f. extent to which such goods and services are competitive – may take into account how those in
trade classify the goods, whether the market research companies put the goods and services in
the similar category
Canon Kabushiki Kaisha vs. Metro-Goldwyn-Mayer Inc. (CJEU) – MGM filed an application in Germany
for ‘CANNON’ for files recorded on video tape cassettes, production and projection of films for cinema
and television organizations – opposed by CKK on grounds that work ‘CANON’ was already registered
in Germany for still and motion picture cameras and projectors, television filing and recording devices
etc. including tape and disc devices for TV recording and reproduction – held that a global assessment
of likelihood of confusion implies some interdependence between relevant factors like similarity b/n
TMs or b/n goods and services; accordingly a lesser degree of similarity b/n goods and services may be
offset by a greater degree of similarity b/n the marks & vice versa
o the more distinctive the earlier mark, the greater the risk of confusion
o marks with highly distinctive nature – either per se or because of reputation – enjoy braoder
protection than less distinctive ones
Cadila Healthcare Limited vs. Cadila Pharmaceutical Limited (2001 SC) – CHL had TM on ‘Falcigo’
which contained ‘Artesunate’ used for treatment of Falciparum Malaria – CPL had mark ‘Falcitab’ which
contained ‘Mefloquine Hydrochloride’ also used for treatment of Falciparum Malaria – CHL claimed
infringement – CPL claimed that ‘falci’ is term taken from the disease which is a common practice in
trade, also the medicines were Schedule L drugs which were not over the counter in nature and can be
sold only by the hospitals or clinics
Court held – strict approach to be adopted – that extra judicial scrutiny is needed if there is a possibility
of confusion over marks on the medical products because the potential of harm is far more dire than
compared to other products

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 2. Sec 11(3) – a TM shall not be registered if its use in India is liable to be prevented – (a) by virtue of
any law (in particular the law of passing off protecting an unregistered TM used in course of trade –
(b) by virtue of law of copyright

3. Sec 11(2) – identical / similar marks on dissimilar goods – TM shall not be registered in the earlier
TM is a well known TM in India and use of later mark w/o due cause would take unfair advantage of
or be detrimental to the distinctive character or repute of the earlier TM

4. Sec 11(6) – factors considered in determining whether a mark is well known TM

a. knowledge or recognition of the mark along the relevant section of public (users of the
goods or services) – including knowledge obtained as a result of promotion of TM
b. duration, extent and geographical area of any
i. use of the mark
ii. promotion of the mark (including ads or publicity and presentation at fairs /
exhibitions of those goods or services to which TM is applied)
c. duration and geographical area of any registration of or any application for registration of
the mark u/r TM Act to the extent they reflect the use or recognition of the mark
d. successful enforcement history (in particular where it has been recognized as well known
TM by any court or registrar)

5. Sec 11(7) – factors considered in determining knowledge or recognition of the mark among the
relevant sections of public in India:
a. number of actual or potential consumers of goods or services
b. number of persons involved in channels of distribution
c. business circles dealing with the goods or services to which TM applies

6. Sec 11(8) – where a TM has been determined to be well known TM in atleast one relevant section of
public in India by a court or registrar – registrar shall consider that TM as well known for registration
u/r the TM Act

7. Sec 11(9) – the registrar shall not require as a condition for determining whether a TM is well known
mark or not
a. mark has been used in India
b. mark has been registered
c. application for registration of TM has been applied in India
d. mark is well known / has been registered / application for registration has been filed in any
jurisdiction other than India
e. mark is well known to public at large in India

8. Sec 11(5) – a TM shall not be refused registration on the grounds mentioned in (2) or (3), unless an
objection on any one or more of the grounds is raised in the opposition proceedings by the proprietor
of earlier TM
EXCEPTION – Honest Concurrent Usage – Sec 12 – in case of honest concurrent use or of other special
circumstances – the registrar may permit – identical/similar marks for identical/similar goods or services –
registrar may also impose certain conditions/limitations on usage

General principles for similarity

• analysis based on consumer of average intelligence and imperfect recollection
• mark to be compared as a whole
• lesser degree of similarity b/n the goods or services would be set off by the higher similarity in TMs
• the more distinctive the mark, the higher the chance of confusion.

10
How to get the well known TM status:
1. During opposition / rectification by registry / proceedings b/r High Court
2. During infringement proceedings b/r the courts
3. TM Rules, 2017 – Rule 124 – any TM owner may file a request to the registrar to declare the TM ‘well
known’
Passing Off
• common law cause of action – can apply to different factual situations
• based on the principle that no man may pass off his goods as those of another
• regarded as action of deceit
Reciktt & Colman Products vs. Borden (1990) – the law of passing off could be summarized in one short,
general proposition – no man may pass off his goods as those of another – there are three elements to it, each
one is a question of fact – (1) was there goodwill – (2) was there misrepresentation, i.e. likely lead public to
believe the goods or services offered by him were the goods or services of the other – and (3) damage or
likely damage, i.e. by he reason of the erroneous belief engendered by the defendant’s misrepresentation
Heads of Damage
• loss of existing sales and profit
• loss of potential trade and profits
• damage to reputation
• dilution
• even in absence of direct financial loss – the confusion w.r.t. source can put goodwill of the claimant
at risk
• likely to suffer damage by misrepresentation

Infringement Analysis
Sec 29(1) – When a registered TM is infringed:
• a person other than the registered proprietor is using the mark (or a person using by way of
permitted use)
• mark used is identical with / deceptively similar to the registered TM
• in course of a trade
• in relation to the goods or services for which the mark is registered
• in a manner where the use of mark is likely to be taken as being used as TM

Example of Usage – illustrative – Sec 2(2) / Sec 29(6)

• affixing to goods or the packaging
• offering or exposing the goods for sale, putting them in market or stocking them or offering or
supplying services under the registered TM
• importing or exporting goods under the mark
• using on business papers or in advertising

Sec 29(2)(a) – usage of identical marks on similar goods or services – infringement – if likely to cause
confusion on the part of public or is likely to have an association with the registered TM
Sec 29(2)(b) – usage of similar marks on identical / similar goods or services – infringement – if likely to
cause confusion on the part of public or is likely to have an association with the registered TM
Sec 29(2)(c) – usage of identical marks on identical goods or services – infringement – presumption of
likelihood of confusion
Sec 29(4) – usage of identical / similar marks on dissimilar goods or services – infringement – if use of the
mark without due cause take unfair advantage of or is detrimental to the distinctive character or repute of
registered TM

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Aktiebolaget Volvo vs. Vinod Kumar - TM was ‘Volvo’ for cars and vehicles – VK used term Volvo for ice-
creams – court found there was infringement even though the usage was for different goods and services as
the usage may lead to dilution of distinctive nature

Sec 29(8) – a registered TM is infringed by any advertisement of that TM – if such advertising

a. takes unfair advantage of and is contrary to the honest practices in industrial or commercial matters
b. is detrimental to its distinctive character
c. is against the reputation of the TM
Sec 30(1) – Exception to Sec 29 – nothing contained in Sec 29 shall be construed as preventing the use of
registered TM by any person for the purpose of indentifying the goods or services as those of the proprietor,
provided the use is
a. in accordance to the honest practices in industrial or commercial matter
b. not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the
TM
PepsiCo Inc vs. Hindustan Coca Cola (2001 Del) – comparative advertisement are admissible – ads should
not be in a manner as to disparage the goods of the competitor – mere puffing of goods with disparagement
is not actionable
For a successful action – plaintiff must show

• a false or misleading statement of fact about a product

• that statement either deceived, or had the capacity to deceive, substantial segment of potential
consumers
• the deception was material, in that it was likely to influence consumers’ purchasing decisions

Lecture 12 – 16/03/2024
Parodies – usage of TM in parody is an exception to infringement of TM
Tata Sons Ltd. vs. Greenpeace International (2011 PTC) – TSL was engaged in development of a hydro
project and a post project – GPI is engaged in promoting awareness about environmental damage – GI
launched a game in which monsters were depicted in ‘TATA’ logo and the turtles were supposed to eat the
monsters, name TATA was also used in the name ‘TATA vs. Turtle’ – TSL initiated a infringement action
against GPI
Court held that there would be infringement only in cases where the user is in a similar / competitive profit-
making endeavor – here GPI was not involved in profit making endeavor or competitive business against
TSL, hence there was no infringement – usage of TM as object of critical comment or even attack cannot be
said to result in infringement – treating such instances as infringement could lead to freezing of public
discourse on the matter
Jack Daniel’s Properties vs. VIP Products (2023 US SC) – JDP is engaged in business of making alcohol under
the name Jack Daniel’s – VP was engaged in making dog toys, they made parody toys of several beverage
bottles – VP made parody of bottle of JD with name ‘Bad Spaniels’ – JD claimed infringement of TM
US SC found that the toys of VP were infringing and diluting the TM of JDP – mere fact that the mark includes
expressive element does not exempt it from the likelihood of confusion analysis – “fair use” exception,
provides that parody, criticism, and commentary qualify as fair use, but only if the alleged diluter does not
use the trademark as a designator of source for their own goods
Gillette Co. vs. L.A. Laboratories (2005 CJEU) – GC is engaged in the business of making shaving razors –
LAL sells razors in Finland which composed of a handle and a replaceable blade, similar to those marked by
GC – LAL product’s sticker had information that their blades are compatible with GC razors – GC claimed
infringement – held no infringement – usage of TM by 3rd party who is not the owner is necessary in order
to indicate the intended purpose of a product marketed by that 3rd party where such use is in practice
constitutes the only mean of providing the public with comprehensible and complete info on that intended

12
purpose in order to preserve the undistorted system of competition in the market for that product – this
implies that if the intended purpose is to preserve the competition then there would be no infringement

Parallel Imports – exhaustion doctrine / first sale doctrine – Parallel import is a practice whereby an
unauthorized third party exploits the doctrine of exhaustion and imports goods which are less expensive in
one country to be sold in parallel with more expensive goods which are either non-imported or imported
from a source controlled by the trademark owner
National Exhaustion – once the trademarked products are placed on the market by the owner, or with his
consent, the owner’s rights are considered exhausted (w.r.t. sopping access) only in the domestic territory –
the owner will still be free to oppose the importation of genuine goods bearing his trademark that have been
put on the market outside the domestic territory – i.e. those goods cannot be imported by a 3rd party in a
country where such goods have not been launched
International Exhaustion – if a trademark owner, or someone with his consent, places the trademarked goods
on the market in any of the national jurisdictions where the trademark owner enjoys protection, the owner’s
rights are exhausted in other national jurisdictions where he enjoys similar rights and consequently, the
trademark owner will not be free to prevent international importation of genuine products bearing his
trademark – the IP rights are exhausted once the product has been sold by the IP owner or with his consent
in any part of the world
Sec 29(1) and Sec 29(6)(b) deal with infringement of TM w.r.t. their usage for sale
Sec 30(3)(b) provides that where the goods bearing a registered TM are lawfully acquired by a person – the
sale of the goods in the market or otherwise dealing in those goods – by that person or by a person claiming
under or through him – is not infringement of a TM – by reason of the goods having been put on the market
under the registered trade mark by the proprietor or with his consent
Sec 30(4) provides that the above sub-section (3) shall not apply where there exists legitimate reasons for
the proprietor to oppose further dealings in the goods in particular, where the condition of the goods, has
been changed or impaired after they have been put on the market
Kapil Wadhwa vs. Samsung Electronics (2013 Delhi) – KW and others were importing printers from other
countries and selling in India – same printers were cheaply available in other countries – SE found this and
initiated TM infringement proceedings against KW – court held that India is following position of
International Exhaustion – therefore no violation of TM – however the sellers would have to carry the
information that the products are imported ones and SE would not be liable for warranty – court concluded
that India follows the principle of international exhaustion on basis of Sec 29 r/w Sec 30 of TM Act; Statement
of Objects & Reasons of TM Bill; Position taken by India in WTO

Lecture – 13/04/2024
Geographical Indicators (GI)
GI has three dimensions – indication or marks / originating from particular territory or region / quality or
reputation must be essentially attributable to the geographical origin
terms of protection is 10 years and it is renewable in nature
Sec 2(1)(e) GI Act, 1999 – defined GI – means an indication which identified such goods as agricultural goods,
natural goods, or manufactured goods as originating/manufactured in the territory of a
country/region/locality – where a given quality/reputation/characteristic of such goods is essentially
attributable to its geographical origin and in case the goods are manufactured, one of the activity of either
production/processing/preparation of the goods concerned takes place in such territory/region/locality
Sec 2(1)(f) – goods means any agricultural, natural or manufactured goods or any goods of
handicraft/industry – also includes food stuff

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GI vs. Appellations of Origin – in GI there must be geographical linkage – in case of appellations of origin
system the geographical linkage needs to be very strong

Economic rationale of GI
• address information asymmetry and free-riding on reputation – in absence of GI any producer would
attempt to leverage the tag for their product, even in cases their product is not linked to the particular
area – GI attempts to stop this factor
• strong differentiation tool through the creation of collective monopolies – collective monopoly from
GI protection may enable producers to charge a premium
• development of the particular geographical region – may help in preserving local culture and
traditions
Advantage of GI
• GI registration is prima facie evidence
• Quality control over the products is easier – as the entire users are maintained in the register

Who may apply for GI – GI is collective right -

• any association of persons/producers/organization with authority established by/under any law –
representing the interest of the producers of the concerned goods may apply
• prohibitions on assignment/transmission/licensing/pledges and mortgage

TRIPS Agreement

• Art 22 – Protection of GIs

• Art 23 – Additional Protection for GI for Wine and Spirits
• Art 24(1) – “members agree to enter into negotiations aimed at increasing the protection of
individual GI u/r Art”
• Art 24(9) – there shall be no obligation to protect GIs which are not/have ceased to be protected in
their country of origin / or those which have fallen into disuse in that country

Different approaches to GI protection

• Sui generis system – separate law for protection of GI – ex. India

• Collective Mark / Certification Mark – no need for separate GI law, the item is covered u/r TM law
using marks – ex. USA
• Law on business practices – in addition to sui-generis / collective or certification marks, the GI might
also be protected u/r other laws (ex. unfair competition/consumer protection etc.)

Registration Process

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Important components of application
• geographical area – must be clear and precise identification – latitude and longitude identification
• class of goods
• specification of goods indicating the unique characteristics, quality etc.
• method of production
• geographical linkage to the goods (includes human factors and environmental factors)
• uniqueness of the product in consideration

Sec 22 – Infringement – a person, who is not authorized user, infringes GI when he:
• uses the GI by any means in the designation or presentation of goods – to indicate/suggest that such
goods originate in a geographical area other than the true place of origin of such goods – in a manner
which misleads the persons as to the geographical origin of such goods
• uses any GI in such manner that constitutes an act of unfair competition including passing off in
respect of registered GI
• uses another GI to the goods – which is literally true as to the territory/region/locality in which the
goods originate – but falsely represents to the persons that such goods originate in the
territory/region/locality in respect of which the GI relates

Scotch Whisky Association vs. Golden Bottling Ltd. (2006 Delhi) – GBL was engaged alcohol production,
they were using the word ‘Red Scot’ as name for their whiskey – SWA filed a case claiming that GBL was
trying to pass-off the goodwill of Scotch whiskey – court found that by using the word ‘Red Scot’ GBL was
trying to pass off their product as a produce of Scotland – restrained and damages of Rs. 5 lakh were granted

Tea Board India vs. ITC Ltd. (2019 Cal) – TBI has a GI resisted in the name of ‘Darjeeling Tea’ – ITC had a
hotel where they had a lounge by the name of ‘Darjeeling Lounge’ – TBI claimed infringement and contended
that the act of ITC was of infringement and passing off as the usage of the word might lead the customers to
believe that the goods sold in the lounge belonged to the region named – the contention was both for GI as
well as TM – ITC claimed that there was no violation – court held that there were no infringement as ITC was
not passing off the products, there was no violation of TM or copyright infringement – TBI was fined Rs. 1
lakh

Subhash Jewellery vs. Payyannur Pavithra Ring Artisans (2012 IPAB) – PPRA had a GI on Payyannur
rings – SJ challenged the registration of GI and claimed that RRPA did not

Patents

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WIPO – patent is a) exclusive right granted for an invention – b) which is a product or process – c) that
provides in general a new way of doing something or offers a new technical solution to a problem
Are patent necessary – Yes – maybe for certain sectors more than others
• in absence of protection the incentive to R&D would be very less
• knowledge disclosure – as in order to obtain a patent disclosure of information is required – hence
the public in general is able to obtain more knowledge
History of Patents:
• 500 BCE – Greek City of Sybaris – cooks who created delicious new dishes were given 1 year absolute
right – no other cook was allowed to prepare the said dish for 1 year
• Venetian Patent Statute, 1474 – person making new and ingenious contrivance – a/r the same has
been perfected to be used and exercised – had to give notice to State Judicial Office – thereafter it was
forbidden to anyone to make anything in form and resemblance for the said device (for 10 years) –
w/o the consent and license of the author
• UK – crown had prerogative to grant letters patent – a tool that conferred the privileges to individuals
in furtherance of royal policy – aim was to attract tradesmen and industrialists to come to England –
this led to creation of monopolies
o Darcy vs. Allen (1598) – D was granted letters patent w.r.t. playing cards – this led to complete
monopolization over all manufacture, import and sales of playing cards – matter went to
court and certain common-law limitation on use of letters patent were declared – dealt with
creation of monopoly vis-à-vis market conditions and public good
o 1623 – Statute of Monopolies was passed by English Parliament – contained specific
exemption about patents [patents would apply to any new manner of manufacture – manner
of manufacture refers to both creation of object or process of creation of such object –
applicable for 14 years or less]
• 17th century
o primary reason for grant of patent was to introduce and establish new industries – incentive
o no formal written disclosure was required
o patents for improvements were of doubtful validity
• 18th & 19th century
o reason for grant changed from establishment of industry to sharing information – now
disclosure of invention to public was made mandatory
o actual working of the invention was not necessary – novelty was made a requirement
o patents for improvement were good in law
• Indian Law
o 1856 – based on British Patent Law, 1852 – first law on patent
o 1911 – Indian Patent and Design Act – this was also followed in post-independence law
o Post-independence – GOI constituted Justice (Dr.) Bakshi Tek Chand Committee to review
patent law in India and to ensure that the patent system was conducive to national interest –
focused on prevention of abuse of patent / need of special restrictions w.r.t. patents on foods
and medicines
o 1957 – Justice Rajagopala Ayyangar Committee – committee recommended retention of
patent system – suggested major changes, including no patents on food or medicine.
o 1970 – Patents Act was passed
o changes introduced after India became member of TRIPS Agreement

Sec 2(1)(j) Patent Act – invention means a a) new product or process – b) involving an inventive step and c)
capable of industrial application

Rights granted u/r Patent – Sec 48

• product – exclusive right to prevent third parties who do not have his consent – from making, using,
offering for sale, selling or importing for those purposes that product in India
• process – exclusive right to prevent third parties who do not have his consent – from the act of using
that process, and from the act of using, offering for sale, selling or importing for those purposes the
product obtained directly by that process in India
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Types of Patent application – Sec
• provisional application – filed if an invention is still under experimentation stage – this manages to
give priority date to the application and safeguards the invention against the possibility of someone
else completing the invention first and making application for it
• ordinary application – filed in Patent Office – w/o claiming priority in a convention country / or w/o
any reference to any other earlier application under process in the office
• patent of addition – when an invention is a slight modification of the earlier invention for which he
has already applied for / has obtained patent – applicant can go for patent of addition if the
modification in the invention is new
• divisional application – claim of more than one invention – the application on his own / to meet
official objection on the ground of plurality / distinct invention may divide application and file two
or more applications – for each invention separately
Boehringer Ingelheim vs. The Controller (2022 Delhi) -a divisional application has to be an application
which arises from a patent application disclosing a ‘plurality of inventions’
Types of International Patent application – patents/IP are territorial in nature – hence is a person wants to
seek protection in several jurisdiction, he shall have to apply for patent in all those jurisdictions
• PCT application – filed in India as Receiving Office (RO) under Patent Cooperation Treaty –
international application which can be filed in more than 150 countries by single application
• PCT National Phase application – international application is made according to PCT designating
India – an applicant can file national phase application in India within 31 months from the date of
international filing
• Paris Convention application – filed in Patent Office – claiming a priority date based on the same or
substantially similar application filed in one or more of the convention countries – 12 months – all
application operate independently

Lecture 14 – 14/01/2024
Stages of Patent Application
• application
o Provisional Application – within12 months complete application is to be filed
o Complete Application
o PCT International Application – within 31 months Indian National Phase application is to be
filed
o Basic Convention Application – within 12 months Indian Convention Application
o Divisional Application
• publication of Application – automatic in operation
• request for Examination – applicant has to file – within 31 months (earlier limit was 48 months) –
examination is done by the examiners – first examination report
• objections are conveyed to the applicant vide first examination report – applicant is to reply to those
objections within specified time – may be given an opportunity of hearing also
• if objections are overcome – Grant of Patent / if not overcome – rejection of application
o if application is rejected – applicant can move to HC
o if patent is granted – post grant opposition starts (anyone who has an opposition can file
their application opposing the grant within 12 months from the date of grant)
• publication of grant
• fee / annuity payment

Patent Filter Model – Dr. Kalyan – patentability requirement may be viewed as filters arranged in succession
for purpose of analyzing patentability of inventions – only inventions that pass through all the filters will be
eligible for patent grant and rest will get filtered out

Novelty

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Sec 2(1)(l) – new invention – a) invention which has not been anticipated by publication in any document,
b) or used in any country elsewhere in the world, c) before the date of filing patent application with complete
specification – the subject-matter has not fallen in public domain or does not form part of the state of art
Important points in novelty analysis
• date of filing of application with complete specification is taken as cut-off date for novelty analysis
• even disclosure made to one person can affect novelty
• novelty is determined in light of single prior art reference – even if one piece of evidence of direct
prior art is shown then there would be no novelty – MOSAICKING is not permitted, i.e. combining
multiple references and technological features therein is not permitted – single same material is
needed
• there must be complete match b/n all the technological features as disclosed in the application and
the prior art reference
• check whether any of the exceptions to anticipate are applicable

Inventive Step
Sec 2(1)(j) – inventive step – a) feature of an invention, b) that includes technical advance, c) as compared
to existing knowledge or having economic significance or both, d) and makes the invention not obvious to a
person skilled in the art
Important points in Inventive Step analysis – analysis is to be done with view of a person skilled in the art
(PSITA) – i.e. person skilled in that particular field
Enercon India Ltd. vs. Aloys Wobben (2003 IPAB) – PSITA to determine non-obvious nature does not has a
territorial limit and may not be an Indian person – PSITA is not described as ‘ordinary’ or ‘average’ for the
purpose of obviousness; hence the PSITA cannot be a dullard and needs to have a certain modicum of
creativity – there is a difference between ‘person who has average skill and average knowledge in the art’
and ‘person who has average skill’
Biswanath Prasad Radhey Shyam vs. Hindustan Metal Ind. (1978 SC) – whether an alleged inventions
involves ‘novelty’ and ‘inventive step’ is a mixed question of law and facts – it depends largely on the
circumstances of the case – no absolute test can be uniformly applicable, however, broad criteria may be
devised
Inventive Step Analysis – MPOP 2019 - identify
i. ‘person skilled in the art’ i.e. competent craftsman or engineer as distinguished from mere artisan
ii. relevant common general knowledge of the person at priority date
iii. inventive concept of the claim in question or if that cannot be readily done – construe it
iv. what differences, if any, exist b/n the matter cited as forming part of the ‘stte of the art’ and inventive
concept of the claim
v. viewed w/o any knowledge of the alleged invention as claimed, do those differences constitute steps
which would have been obvious to the person skilled in the art / or do they require any degree of
inventive ingenuity

Capable of Industrial Application

Sec 2(1)(ac) – capable of inventive application – in relation to an invention means that the invention is
capable of being made or used in an industry
this is a globally accepted requirement of patentability – different names are used at different jurisdiction,
but same concept, ex. useful (USA); susceptible of industrial application (EU); TRIPS (27.1) has a footnote
which mentions that these terms maybe used as synonyms – all what is required is capability of usage
Farbewerke Hoechst & Bruning Corp vs. Unichem Labs (1968 Bom) – FHBC had patent of manufacture of
new sulphonyl-reas, salts of those compounds and of anti-diabetic preparation containing such compounds
– one chemical compound comprised in the patent was Tolbutamide marked as anti-diabetic dug in India
and all over the world u/r TM ‘rastinon’ – UC manufactured an anti-diabetic drug and sold it u/r name ‘Uni-
Tolbid’ or ‘Tolbutamide’ – FHBC claimed violation of patent

18
court held - u/r patent law ‘not-useful’ means that the invention will not work in the sense that it will not
operate or would not be able to function as it promises – therefore if the invention works as per the invention
it would be deemed useful

Sec 3 – what are not inventions – inventions which are not eligible for grant of patent
• 3(d) – mere discovery of a new form of a known substance which does not result in the enhancement
of the known efficacy of that substance or the mere discovery of any new property or new use for a
known substance or of the mere use of a known process, machine or apparatus unless such known
process results in a new product or employs at least one new reactant
• 3(k) – a mathematical or business method or a computer programme per se or algorithms
• 3(p) – an invention which, in effect, is traditional knowledge or which is an aggregation or duplication
of known properties of traditionally known component or components

Sec 4 – inventions related to atomic energy falling u/r Sec 20(1) of Atomic Energy Act, 1962 are not
patentable

Lecture 15 – 05/05/2024
Disclosure – importance of disclosure
Sec 10 – Contents of specifications
1. every specification, whether provisional or complete, shall describe the invention and shall begin
with title sufficiently indicating the subject-matter to which the invention relates
4. every complete specification shall
a. fully and particularly describe the invention and its operation or use and the method
by which it is to be performed
b. disclose the best method of performing the invention which is known to the applicant and
for which he is entitled to claim protection
c. end with a claim or claims defining the scope of the invention for which protection is claimed
d. be accompanied by abstract to provide technical info on the invention
5. the claim or claims of a complete specification shall related to a single invention, or to a group of
inventions linked so as to form single inventive concept – shall be clear and succinct – and fairly
based on the matter disclosed

Sec 64 – revocation of patents (h) & (i) – if

h) the complete specification does not sufficiently and fairly describe the invention and the method by which
it is to be performed – i.e. not sufficient to enable a person in India possessing average skill in, and average
knowledge of, the art to which the invention relates, to work the invention – or it does not disclose the best
method of performing it which was known to the applicant for the patent and for which he was entitled to
claim protection

i) scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of
the complete specification is not fairly based on the matter disclosed in the specification
Allepy Co. Ltd. vs. Controller of Patents (2010 IPAB) – invention in question was ‘rubber backed brushed
mats having non-skid backing’ – ACL was manufacturers / exporters of coir mats and sought revocation of
the patent – APL contended that the patent has insufficient and unfair description – on examination IPAB
found that the specifications were in obscure and ambiguous language and did not contain other details
related to temperature etc. – patent was revoked on non-disclosure

Patent Scope and Patent Infringement

Certain Important aspects relating to drafting of claims:

19
 • no exclusivity granted to the inventor unless it is specifically claimed in the claims – what is not
claimed is considered disclaimed – even if the subject matter was disclosed in the description
• each claim will be evaluated on its own merit
• claims must not be too broad or too narrow to embrace more than what the applicant has in fact
invented
• Sec 10(5)

Scope of Patent – Sec 10(4)(c) – every complete specification shall end with a claim or claims defining the
scope of the invention for which protection is claimed
• claims – characteristics of a techno-legal statement
• scope of patent is determined by claims
• claim construction – determines the extent of rights of patentee
• claim construction by courts should ensure that patentee’s claim is limited to what the patentee has
disclosed in the application
• term of protection must be looked into while examining the claim of infringement

Roche vs. Cipla (2015 Delhi) – R claimed that if the method of X-Ray diffraction was utilized it would appear
that C was infringing it’s patent – held that it was incorrect to use these methods to ascertain if competing
products are identical in nature – correct test of infringement would be to map C’s product against R’s patent
claims – essentials of claim construction
• construe claims w/o reference to specification – a reference to the specification should be exception
– only in cases of ambiguity
• courts can consider patent prosecution history to understand how the inventor or patent examiner
understood the invention – but patent prosecution is an ongoing process and it often lacks clarity of
the specification – thus less useful for claim construction
• extrinsic evidence such as investor testimony, dictionaries and treaties are permissible – extrinsic
evidence has lesser value compared to intrinsic evidence (wordings of the claim)
• statement made during prosecution of foreign application are irrelevant – they might be responses
to unique patentability requirement of those jurisdictions
• statement made in later unrelated application cannot be used to interpret the claims of prior patent

Rights of Patentee
Sec 48 – subject to other provisions and the conditions specified in Sec 47 – a patent granted shall confer
upon the patentee –
a. where the subject matter of the patent is a product – exclusive right to prevent third parties who do
not have his consent – from making, using, offering for sale, selling or importing for those purposes
that product in India
b. where the subject matter of the patent is a process – exclusive right to prevent third parties who do
not have his consent – from act of using that process, and from the act of using, offering for sale,
selling or importing for those purposes the product obtained directly by that process in India
Merck vs. Sanjeev Gupta & Ors. (2019 Delhi) – Indian patent for Sitagliptim, used for treatment of Type 2
diabetes – in claim of infringement it was contended by SG that the manufacture was for export only and not
for sale in India and as such is not covered u/r Sec 48 as word ‘export’ has not been used therein – held that
the argument is flawed as word ‘manufacture’ / ‘making’ is used and therefore covered manufacture for
export too

Defense to Infringement – three broad categories – 1) invalidity of patent; 2) defense of non-infringement;

and 3) statutory defense
1. Invalidity of Patent
2. Non-infringement
3. Statutory Defense
Sec 47 – Grant of patent shall be subject to certain conditions:

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 1. any machine, apparatus or other article / any article made by using a process – may be imported or
made on behalf of govt, for purpose merely of its own use
2. any process – may be imported or made on behalf of govt, for purpose merely of its own use
3. any machine, apparatus or other article / any article made by using a process – may be used for the
purpose merely of experiment or research including imparting instructions to pupils
4. w.r.t. medicine or drug – may be imported by the govt – merely of its own use or for distribution in
any dispensary, hospital or other medical institution maintained by or on behalf of the Government
or any other dispensary, hospital or other medical institution which the Central Government may,
having regard to the public service
Sec 49 – patent rights not infringed when used on foreign vessels – temporarily or accidently in India –
1. where a vessel or aircraft registered in foreign country / land vehicle owned by a person ordinarily
resident in such country – comes to India temporarily or accidently – the rights conferred by a patent
shall not be deemed to be infringed by the use of invention
a. if body of the vessel / in the machinery / tackle / apparatus / other accessories thereof – so
far as the invention is used – for actual needs only
b. the construction or working of the aircraft or land vehicle or of the accessories thereof, as the
case may be
2. this section not applicable if the laws of the other country does not offer corresponding rights to India
BOLAR Exception – Sec 107 A – certain acts not to be considered as infringement – for the purpose of this
Act
a. any act of making, constructing, using, selling or importing a patented invention solely for uses
reasonably related to the development and submission of information require under any law for the
time being in force in India, or a country other than India, that regulates the manufacture,
construction, use or sale of any product
b. importation of patented products by any person from a person who is duly authorized under law to
produce and sell or distribute the product [parallel imports]
H Lundbeck vs. Hetero Drug Ltd. (2020 Delhi) – patent granted from Vortioxetine Hydrobromide, an anti-
depressant – HDL contended that they were producing the drugs for exporting related to R&D; thus claimed
exception u/r Sec 107A – court found that there was no material to substantiate the conclusion that the
quantity being manufactured was used solely for R&D purpose
Compulsory Licenses (CL)
Sec 84 – at any time a/r expiration of 3 years from the date of grant of a patent – any person interested may
make an application to the controller – for grant of CL on patent – on any of the following grounds:
a. that reasonable requirement of public w.r.t. patented invention have not been satisfied,
b. that patented invention is not available to the public at a reasonably affordable price
c. that the patented invention is not worked in the territory of India
Sec 85 – revocation of patents in cases wherein CL hasn’t been helpful
1. where i.r.t. patent – a CL has been granted – the Central Govt. or any person interested may, a/r the
expiration of 2 years from the date of order granting the first compulsory license – apply to the
controller for an order revoking the patent on the ground that – a) patent has not worked in India, or
b) that reasonable requirement of the public w.r.t. patent has not been satisfied, or c) patented
invention is not available to the public at a reasonably affordable price
Sec 92 – compulsory license on notifications by the Central Govt.
1. Central Govt – if satisfied w.r.t. a patent – in circumstances of national emergency / external
emergency / in case of public non-commercial use – that it is necessary that CL should be granted at
any time after the sealing thereof to work the invention – may make declaration to that effect by
notification in the official gazette – and thereafter the following provisions shall have effect
i. the controller shall – on application made a/r notification – grant a license under the patent
at such terms and conditions as he thinks fit

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 ii. in settling the T&C of license granted u/r this section – the controller shall endeavor to secure
that article manufactured u/r the patent shall be available to the public at the lowest prices
consistent with the patentees deriving a reasonable advantage from their patent rights
Sec 92A – CL for export of patented pharmaceutical products
1. CL shall be available for manufacture and export of patented pharmaceutical products to any country
– having insufficient or no manufacturing capacity in the pharmaceutical sector for the concerned
product – to address public health problems – provided CL has been granted by such country or such
country has by notification allowed importation of the patented pharmaceutical products from India
Bayer Corp vs. UOI (2014 Bom) – BC had a patent on Sorafenib Tosylate (Nexavar) – ST/N was used for
treatment of patients with kidney cancer and worked to alleviate pain and to slow down the spread of cancer
– patent for ST/N was granted in 2008 – 2010 Natco went to Bayer seeking a Voluntary License to
manufacture and sell the drug – Natco offered price of Rs. 10000 instead of BC’s Rs. 2.8 lakh – BC rejected
the offer
thereafter Natco went to controller claiming that all conditions u/r Sec 84(1) were complied with and sought
a CL – Natco offered to sell the drug at Rs. 8800 – March 2012, controller granted non-exclusive non-
assignable CL to manufacture the drug and pay BC a royalty of 6% – challenged, IPAB increased the royalty
to 7% – matter went to HC and it held that the CL was valid as 1) Natco had applied for voluntary license
which was not accepted by BC; 2) Patient Assistance Programme, where a certain population was provided
free of cost medicines, was not an exception u/r Sec 84; 3) drug was not worked in India, however in order
to establish working of drug it is not required that the drug must have been manufactured in India (not
sufficient number of doses were being made available by BC as well as BC priced the drug very high)

Lecture 16 – 12/05/2024
Protection of Plant Varieties and Farmers Rights
Art 27.3 – TRIPS Agreement – members may exclude from patentability
a. diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
b. plants and animals other than micro-organisms, and essentially biological processes for the
production of plants or animals other than non-biological and microbiological processes. However,
members shall provide for the protection of plant varieties either by patents or by an effective sui-
generis system or by combination thereof
India opted for sui generis system – this was majorly driven by the reason that a patent regime could have
been problematic for agricultural driven economy like India – Plant Varieties and Farmers’ Rights Act, 2001
– Plant Varieties and Farmers’ Rights Authority established in 2005
Key features:
• a farmer shall be deemed to be entitled to save, sue, sow, resow exchange, share or sell his farm
produce including seeds of a variety protected u/r the Act in the same manner as he was entitled b/r
the Act – provided that he does not sell branded seed of the protected variety
• compensation in case a breed does not perform as indicated
• protection from innocent infringement
• establishment of gene fund
Types of varieties protected u/r PPVFRA
1. new variety – variety which has not been in trade or in use as a breeding line – for more than 1 year
b/r the date of submission of application if it is from India and for more than 4/6 years (trees/veins)
before the date of submission of application if it is from any other country

Sec 15 – new variety shall be registered – if it conforms to the criteria of i) novelty; ii) distinctiveness;
iii) uniformity; and iv) stability

novelty – no exploitation by sale or disposal

• in India – 1 year before date of application

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 • outside India
o trees or vines – 6 years
o any other types – 4 years
• exception – usage for trial
distinctiveness – distinguishable by at least one essential characteristic from any other variety
uniformity – sufficiently uniform in its essential characteristics
stability – essential characteristics remain stable a/r propagation multiple times or in case of a
particular cycle of propagation, at the end of each such cycle

2. essentially derived variety – Sec 2(i)

o a variety derived for a targeted train that is missing in an existing variety (initial variety)
o retains the expression of the essential characteristics that results from the genotype or
combination of genotypes of the initial variety
o can be developed through any of the known methods of breeding like genetic engineering,
mutation breeding etc. – which change only limited character in the initial variety
3. extant variety – Sec 2(j) – extant variety means variety available in India which is
o notified u/r Sec 5 of the Seeds Act, 1966
o farmer’s variety
o a variety about which there is common knowledge
o any other variety which is in public domain

4. farmer’s variety – Sec 2(l) – farmers variety means a variety which – i) has been traditionally
cultivated and evolved by the farmers in their fields; or ii) is a wild relative or land race of a variety
about which the farmers possess common knowledge
Who can apply for protection of a variety – Sec 16(1)
• any person claiming to be the breeder of the variety
• any successor of the breeder of the variety
• any person being assignee of the breeder of the variety
• any farmer or group of farmers or community of farmers claiming to be the breeder of the variety
• any person authorized in the prescribed manner by person mentioned above
• any university or publicly funded agricultural institution claiming to be the breeder of the variety
Exclusions from protection
Sec 29(1) – necessary to protect public order, morality, or human, animal and plant life and health or to avoid
serious prejudice to the environment
Sec 29(3) – variety of any genera or species which involved any technology which is injurious to the life or
health of human being, animals or plants – any technology includes genetic use restriction technology and
terminator technology
Grounds of opposition – Sec 21(3)
a. that person opposing the application is entitled to the breeder’s right as against the applicant
b. that the variety is not registrable u/r the Act
c. that the grant of certificate of registration may not be in public interest
d. that the variety may have adverse effect on the environment
Rights conferred to breeders
a. exclusive right to produce, sell, marker, distribute, import or export the variety
b. Owner of extant variety – unless a breeder of his successor establishes his/her right – the central
govt (state govt in cases the variety is notified for a state) – shall be deemed owner of such right
Farmers’ Rights – Sec 39
• right to register a plant variety

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 • right of recognition and reward from gene fund if the farmer is involved in the conservation of genetic
resources of land races and wild relatives of economic plants and their improvement through
selection and preservation
• right to save, use, sow, resow, exchange, share, sell his farm produce including seed of a variety
protected under the Act – in the same manner as he was entitled b/r the coming of the Act
• compensation – failure in expected performance under given conditions
• protection from innocent infringement
Compulsory License – Sec 57
• if reasonable public requirement are not being met
• seeds are not available at reasonable price
• 3 years have lapsed since the issue of certificate

Trade Secrets
What is TS:
• commercially valuable because it is secret
• known only to a limited group of persons
• subject to reasonable steps taken by the rightful holder of the information to keep it secret – including
the use of confidentiality agreements for business partners and employees
Why protect TS:
• asd
• contrary view – TS should not be given too much protection – as the very nature of TS is to avoid
information to come known to public
Art 39(2) TRIPS – natural and legal persons shall have possibility of preventing information lawfully within
their control from being disclosed to, acquired by, or used by others w/o their consent in a manner contrary
to honest commercial practices so long as such information:
a. the secret in the sense that it is not, as a bdy or in the precise precise configuration and assembly of
its components, generally known among or readily accessible to persons within the circles that
normally deal with the kind of information in question;
b. has commercial value because it is secret;
c. has been subject to reasonable steps u/r the circumstances – by the persons lawfully in control of
the information to keep it secret
Major TS disputes
1. employer – employee disputes – governed by contracts
Sec 27 – ICA – every agreement by which any one is restrained from exercising a lawful profession,
trade or business of any kind – is to that extant void – exception of goodwill

Niranjan Shankar Golikari vs. Century Spinning & Manufacturing Co. (1967 SC) – employment
contract barred employee from directly or indirectly engaging in business with competed with
employer for a period of 5 years – held that the provision of the contract was valid – as information
and knowledge which was disclosed to employee was different from the general knowledge which
he might have gained while in service of the company; and the clause in the contract was against his
disclosing the former to the rival company, which required protection

Superintendence Company of India vs. Krishan Murgai (1980 SC) – contract had post service
restraint that the employee shall not serve any other competitive firm/nor carry on business on his
own on similar lines to that of the company for 2 years at the place of his posting – employee was
terminated w/o notice – court recognized the inequality of bargaining power which the employee
has vis-à-vis employer – that has to be taken into consideration while interpreting the restrictive
clauses

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 2. breach of confidence - implied duty of confidence between the parties
Saltman Engg. vs. Campbell Engg. (1948 UK) – SE instructed CE to make tools for the manufacture
of leather punches in accordance to drawing provided by SE – CE used the drawing to make tools and
the tools to make leather punches on their own account – on the question of can there be
confidentiality w/o a contract; court held that breach of confidentiality may happen w/o a contract

John Richard Brady & Ors. vs. Chemical Process Equipment (1987 Delhi) – JRB contended that
CPE misused technical information, know-how, specifications and drawings of their fodder
production unit, entrusted u/r express condition of strict confidentiality – CPE contended that there
was no express contract and hence no deal/agreement b/n them – court held that in certain cases
the breach may even happen w/o a contract

Diljeet Titus vs. Alfred Adebere (2006 PTC) – AA worked in a law firm of DT – AA opened his own
law firm and took some privileged information (client database) which belonged to DT – AA argued
that he would have anyways approached the clients even w/o the database – court held that when
an advocate permits his associate/colleague to assist him or handle the matter of his client there is
an implicit obligation to maintain trust and confidence; and thus in case of breach of the same there
is a legal remedy
American Express Bank vs. Priya Puri (2006 Delhi) – PP was employee of AE, she resigned from
AE – AE alleged that she was in possession of AE client list and other confidential data and applied
for suit of injunction to hand over confidential info and to refrain her from approaching any clients
of AE – it was held that in garb of confidentiality the employer cannot be allowed to perpetuate forced
employment – freedom of changing employment is a vital right of an employee which cannot be
curtailed or restricted on grounds that employee had employer’s data and confidential information

Divya Raghunandan vs. Deptt. of Biotechnology (2009 CIC) – Monsanto submitted data on trials of
crops to GEAC u/r Deptt. of Biotechnology – applicant wanted info u/r RTI Act – DoB refused the info
based on Sec 8(1)(d) and Sec 11(1) Proviso of RTI Act – CIC held that since the info related to broader
public interest, the access to it cannot be restricted – CIC directed disclosure of info

3. action against journalist

4. action under IPC for criminal breach of trust

• Sec 405 / 408 / 418 / 420 of IPC
• Sec 72 / 72A of IT Act
Google Case Study – Google algorithms are protected as TS and not patents – as protection u/r patent require
disclosure of information to the public

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