SWAYAM COURSE ON INTELLECTUAL PROPERTY RIGHTS

AND COMPETITION LAW IN INDIA

COURSE CO-ORDINATOR, : Prof. (Dr.) G. B. REDDY

SUBJECT EXPERT & AUTHOR
TEACHING ASSISTANT
Professor of Law, University College of Law,
Osmania University, Hyderabad.
: Dr. S.B. Md. IRFAN ALI ABBAS
Visiting Faculty, University College of Law,
Osmania University, Hyderabad.

LESSON-9: TRADEMARKS

Introduction

A trademark is any symbol, sign or mark that individualizes the goods or services of a
given enterprise and distinguishes them from those of its competitors. In order to individualize a
product for the consumer, the trademark must indicate its source. Trademarks already existed in
the ancient world. Even at times when people either prepared what they needed themselves or,
more usually, acquired it from local craftsmen, there were already creative entrepreneurs who
marketed their goods beyond their localities and sometimes over considerable distances. As long
as 3,000 years ago, Indian craftsmen used to engrave their signatures on their artistic creations
before sending them to Iran.

Trademarks started to play an important role in the 19th century with industrialization,
and they have since become a key factor in the modern world of international trade and market-
oriented economies. Industrialization and the growth of the system of the market-oriented
economy allow competing manufacturers and traders to offer consumers a variety of goods in
the same category. Often without any apparent differences for the consumer, they do generally
differ in quality, price and other characteristics. Clearly consumers need to be given the guidance
that will allow them to consider the alternatives and make their choice between the competing
goods. Consequently, the goods and services must be named. The medium for naming goods and
services on the market is precisely the trademark. By enabling consumers to make their choice
between the various goods available on the market, trademarks encourage their owners to
maintain and improve the quality of the products sold under the trademark, in order to meet
consumer expectations. Thus trademarks reward the manufacturer who constantly produces
high-quality goods, and as a result they stimulate economic progress.

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 SWAYAM Course on Intellectual Property Rights and Competition Law in India

Kinds of Trademarks

Trademarks may be different in terms of purpose, object of protection and appearance.

Broadly they are as under:

Service Marks: In modern times, the consumers are confronted not only with a vast choice
of goods of all kinds, but also with an increasing variety of services which tend more and
more to be offered on a national and even international scale. There is therefore also a need
for signs that enable the consumers to distinguish between the different services such as
insurance companies, banking companies, car rental firms, airlines, etc. These signs are called
service marks, and fulfill essentially the same origin-indicating and distinguishing function
for services as trademarks do for goods.

Collective Marks: Trademarks typically identify individual enterprises as the origin of

marked goods or services. Some countries provide for the registration of collective marks,
which are used to indicate the affiliation of enterprises using the mark or which refer to
identifiable standards met by the products for which a mark is used. A collective mark may be
owned by an association which itself does not use the collective-mark but whose members
may use the collective mark; An enterprise entitled to use the collective mark may in addition
also use its own trademark. In India such collective marks can be registered by industrial
groups and companies.

Certification Marks: These marks serve the purpose of certifying the quality of goods
which are traded. This is an important safeguard for the protection of the public against
misleading practices. The definition of “certification mark” is not the same in all countries. In
India, certification marks such as Ag Mark for agricultural products, Hall Mark for jewellery,
Silk Mark for silk product and ISI mark for certain other products are registered. The
internationally accepted “ISO 9000” quality standards are an example of such widely
recognized certifications.

Well-known Trademarks: Due to long and continuous usage of a trademark, it may

become a well-known trade mark to a substantial segment of consumers. Such mark is called
Well-known trademark. Thus, Coca cola for soft drinks, Champagne for wines, Tata for steel

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 Lesson-9: Trademarks

and other products, and Benz for cars are well-known trademarks, and they cannot be
registered by those not concerned with the owners of such marks, even in respect of the
goods and services not traded by them.

What is Protected as a Trademark?

The possibilities are almost limitless. Trademarks may be one or a combination of words,
letters, and numerals. They may consist of drawings, symbols, three-dimensional signs such as
the shape and packaging of goods, audible signs such as music or vocal sounds, fragrances, or
colors used as distinguishing features. In addition to trademarks identifying the commercial
source of goods or services, several other categories of marks exist.

It follows from the purpose of the trademark that virtually any sign that can serve to
distinguish goods from other goods is capable of constituting a trademark. Trademark laws
should not therefore attempt to draw up an exhaustive list of signs admitted for registration. If
examples are given, they should be a practical illustration of what can be registered, without
being exhaustive. If there are to be limitations, they should be based on practical considerations
only, such as the need for a workable register and the need for publication of the registered
trademark. If we adhere strictly to the principle that the sign must serve to distinguish the goods
of a given enterprise from those of others, the following types and categories of signs can be
imagined:

Words: This category includes company names, surnames, forenames, geographical names
and any other words or sets of words, whether invented or not, and slogans.

Letters and Numerals: Examples are one or more letters, one or more numerals or any
combination thereof.

Internet Domain Names: Domain names like google.com and pepsi.com can be registered as
trademarks in countries like India

Devices: This category includes fancy devices, drawings and symbols and also two
dimensional representations of goods or containers. Combinations of any of those listed
above, including logotypes and labels.
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 SWAYAM Course on Intellectual Property Rights and Competition Law in India

Colored Marks: This category includes words, devices and any combinations thereof in color,
as well as color combinations and color as such.

Three-Dimensional Signs: A typical category of three-dimensional signs is the shape of the

goods or their packaging. However, other three-dimensional signs such as the three-pointed
Mercedes star can serve as a trademark.

Audible Signs (Sound Marks): Two typical categories of sound marks can be distinguished,
namely those that can be transcribed in musical notes or other symbols and others (e.g. the
cry of an animal).

Olfactory Marks (Smell Marks): Imagine that a company sells its goods (e.g. writing paper)
with a certain fragrance and the consumer becomes accustomed to recognizing the goods by
their smell.

Other (Invisible) Signs: Examples of these are signs recognized by touch.

It may be noted that the last three categories fall under the category of non-conventional
trademarks, and many countries trademark laws do not recognize or register them formally. The
countries may set limits on registrability for practical purposes. The majority of countries allow
the registration only of signs that can be represented graphically, since only they can be
physically registered and published in a trademark journal to inform the public of the
registration of the trademark.

Characteristics of a Good Trademark

The requirements which a sign must fulfill in order to serve as a trademark are
reasonably standard throughout the world. Generally speaking, two different kinds of
requirement are to be distinguished. The first kind of requirement relates to the basic function of
a trademark, namely, its function to distinguish the products or services of one enterprise from
the products or services of other enterprises. From that function it follows that a trademark must
be distinguishable among different products. The second kind of requirement relates to the
possible harmful effects of a trademark if it has a misleading character or if it violates public

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 Lesson-9: Trademarks

order or morality. These two kinds of requirement exist in practically all national trademark
laws. They also appear in Article 6quinquies B of the Paris Convention where it is stated that
trademarks enjoying protection under Article 6quinquies A may be denied registration only if
“they are devoid of any distinctive character” or if “they are contrary to morality or public order
and, in particular, of such a nature as to deceive the public.” Thus a good trademark must have
the following features:

1. Requirement of Distinctiveness: A trademark, in order to function, must be distinctive. A

sign that is not distinctive cannot help the consumer to identify the goods of his choice. The
word “apple” or an apple device cannot be registered for apples, but it is highly distinctive for
computers. This shows that distinctive character must be evaluated in relation to the goods
to which the trademark is applied. If a sign is not distinguishable, it cannot function as a
trademark and its registration should be refused. Thus use of Generis Terms such as
“furniture” (for furniture in general, and also for tables, chairs, etc.) and “chair” (for chairs)
and “drinks”, “coffee” and “instant coffee”, which shows that there are larger and narrower
categories and groups of goods, all having in common that the broad term consistently used
to describe them is generic, cannot be registered as a trademark.

2. Not Descriptive in Nature: Descriptive signs are those that serve in trade to designate the
kind, quality, intended purpose, value, place of origin, time of production or any other
characteristic of the goods for which the sign is intended to be used or is being used. In line
with the definition of the distinctive sign given earlier, the test to be applied must establish
whether consumers are likely to regard a sign as a reference to the origin of the product
(distinctive sign) or whether they will rather look on it as a reference to the characteristics of
the goods or their geographical origin (descriptive sign).

3. Easy to remember; and

4. Not deceptively similar to other marks.

It may be noted that the signs lacking distinctiveness, containing reference to

geographical origin, letters, numerals and basic geometrical shapes devoid of distinctiveness,
foreign script and transliterations, colors, names, and surnames may not be generally registered

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as trademarks. Similarly the signs contrary to morality or public policy, and signs reserved for
use by the State, public institutions or international organizations also cannot be used or
registered as trademarks.

Protection of Trademark Rights

A trademark can be protected on the basis of either use or registration. Both approaches
have developed historically, but today trademark protection systems generally combine both
elements. The Paris Convention places contracting countries under the obligation to provide for
a trademark register. Over one hundred and fifty States have adhered to the Paris Convention.
Nearly all countries today provide for a trademark register, and full trademark protection is
properly secured only by registration.

Trademark Registration

It may be noted that though it is not mandatory to register a trademark, it is desirable that
it is registered for its effective protection. Applications for registration of a trademark are to be
filed with the competent government authority which in most countries is the same as the
authority competent for processing patent applications. Usually, it is called “Industrial Property
Office” or “Patent and Trademark Office” or “Trademark Office.” In India, the office is called the
Registrar of Trademarks. Generally the steps involved in the registration of trademark are:
1. Application for Registration
2. Acceptance of Application
3. Advertisement of Application
4. Opposition to Registration, if any and
5. Registration

Under the Trademarks Act,1999 of India the Registrar is required to look into the
absolute grounds for refusal of registration as laid down under Sec.9 and also the relative
grounds. They include marks devoid of any distinctive character, marks indicating kind, quality,
quantity, intended purpose and value etc and also those marks which have become customary in
the current language. A registered trademark is valid for 10 years from the date of
registration. However it can be renewed after the expiry of the said period.

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 Lesson-9: Trademarks

Rights Arising from Trademark Registration

The registered owner has the exclusive right to use the trademark. The trademark rights
encompass two things: the right to use the trademark and the right to exclude others from using
it. The Right to Use the Trademark belonging to the trademark owner is recognized in most
trademark laws. It would indeed be contradictory not to grant such a positive right of use while
imposing an obligation to use. Of course, the right of use is subject to other laws and rights, as is
any other right provided by law.

Another important right given to the trademark owner is the right to object to the use of
confusingly similar marks in order to prevent consumers and the public in general from being
misled. Furthermore, since consumers are to be protected against confusion, protection
generally extends to the use of similar trademarks for similar goods, if such use is likely to
confuse the consumer. Many laws not only provide for an infringement action, but also offer an
administrative opposition procedure against an application for registration of a confusingly
similar trademark.

Remedies for Trademark Infringement

A successful infringement action leads to prohibition of the use of the confusingly similar
mark. If the infringing mark is registered, cancellation of the registration is ordered. The
trademark owner can also, in principle, ask for compensation for damages. Damages are difficult
to prove in trademark infringement cases, however, so this remedy is not very important in
practice. The situation is of course different in cases of counterfeiting.

Counterfeiting: It is first of all the imitation of a product. The counterfeit is not only
identical in the generic sense of the term. It also gives the impression of being the genuine
product originating from the genuine manufacturer or trader. The offering of such a
counterfeit product is only meaningful, of course, if the genuine product is known to the
consumer. Consequently, counterfeit goods often belong to the category of luxury goods and
bear a well-known trademark. Some very typical and widely-known examples of counterfeit
goods have been, for example, the false LOUIS VUITTON bags, the false ROLEX, CARTIER and
other luxury watches, the false PUMA and REEBOK sports shoes, the false LACOSTE sports

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 SWAYAM Course on Intellectual Property Rights and Competition Law in India

shirts and so on. Although it is not a condition and not always the case, counterfeit goods
generally bear a trademark. This has the advantage of making counterfeiting actionable as
trademark infringement, which is generally easier than fighting against infringement of other
intellectual property rights, which may also be involved.

Imitation of Labels and Packaging: The cases discussed in this category lie between
normal trademark infringement and counterfeiting, sometimes coming very close to
counterfeiting. Instead of developing at his own expense a label and packaging with an image
of his own for his product, the imitator tries to take advantage of the reputation of the
competing product by giving his product an appearance so similar to it that confusion arises
in the market place. In law of Torts, this phenomenon falls under injurious falsehood and
passing-off. Often the imitator uses a trademark (in the sense of a product name) which is
confusingly similar to that of his competitor. If he does that he is committing trademark
infringement.

In India, the Trademarks Act, 1999 awards both civil and criminal remedies. For
registered Trade Mark, civil remedy includes Suits for infringement under Section 134 and
Injunction under Section 135.For unregistered Trade Mark, Action for Passing Off can be
instituted. The tort of Passing off reputation, deception and damage the classical trinity is
permitted. Similarly, suit for damages and for rendition of Accounts can also be instituted.

Protection of Trademarks in India

India affords full protection to trade marks under the Trade Marks and Merchandise Act.
The Indian law of trademarks is protected by the Trade & Merchandise Marks Act, 1958. A new
statute i.e. the Trade Mark Act, 1999 has been enacted in India to bring it in conformity with the
TRIPs Agreement, to which India is a signatory. The Trademarks Act, 1999, came into force on
September 15, 2003 and India has made a step towards fulfilling its international obligations.
Consequently, the Indian Trade Mark Law has now become fully compatible with the
International standards laid down in the TRIPs agreement. The New Act primarily consolidates
and amends the Old Act of 1958 and provides for better protection of goods and services.

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 Lesson-9: Trademarks

Conclusion

Dear Viewers! In this lesson we have discussed in detail, the most important aspects of
trademarks ranging from the definition, registration, licensing, infringement and protection. I
have discussed only the rudimentary aspects of trademark protection in this lesson.

*******

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 SWAYAM COURSE ON INTELLECTUAL PROPERTY RIGHTS
AND COMPETITION LAW IN INDIA

COURSE CO-ORDINATOR, : Prof. (Dr.) G. B. REDDY

SUBJECT EXPERT & AUTHOR
TEACHING ASSISTANT
Professor of Law, University College of Law,
Osmania University, Hyderabad.
: Dr. S.B. Md. IRFAN ALI ABBAS
Visiting Faculty, University College of Law,
Osmania University, Hyderabad.

LESSON-10: PROTECTION OF INDUSTRIAL DESIGNS IN INDIA

Introduction

The intellectual Property has varied forms and all of them may not have any utility or
usefulness. Thus even the ornamental or decorative value, which is the result of mental labour,
also constitutes an important form of IP more particularly in the case of Industrial designs. In the
post-industrial revolution era, an article or goods used in commerce is distinguished not only by
its utility but also by its visual appeal that plays an important role in influencing the buyer’s
preference for the article.

Objective of Protecting Designs

Industrial designs are what make an article attractive and appealing; hence, they add to
the commercial value of a product and increase its marketability. When an industrial design is
protected, the owner- the person or entity that has registered the design - is assured an exclusive
right against unauthorized copying or imitation of the design by third parties. This helps to
ensure a fair return on investment. An effective system of protection also benefits consumers
and the public at large, by promoting fair competition and honest trade practices, encouraging
creativity, and promoting more aesthetically attractive products.

Protecting industrial designs helps economic development, by encouraging creativity in

the industrial and manufacturing sectors, as well as in traditional arts and crafts. They contribute
to the expansion of commercial activities and the export of national products. Industrial designs
can be relatively simple and inexpensive to develop and protect. They are reasonably accessible
to small and medium-sized enterprises as well as to individual artists and craftsmen, in both
industrialized and developing countries. Generally, industrial design protection is limited to the
country in which protection is granted. Under Hague Agreement Concerning the International
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Deposit of Industrial Designs, a WIPO-administered treaty, a procedure for an international

registration is offered. An applicant can file a single international deposit either with WIPO or the
national office of a country, which is party to the treaty. The design will then be protected in as
many member countries of the treaty as the applicant wishes.

Great Britain was the first country in the world to offer protection to designers. The
textile designs were the first to receive legal protection in 1787. In 1839, the protection was
enlarged to cover designs for printing woven fabrics and soon thereafter the designs of other
articles of manufacture came to be protected 1. Insofar as India is concerned, the first law relating
to designs was the Patents and Designs Act, 1872. Subsequently the Patents and Designs Act,
1911 was enacted and all these laws were aimed at protecting the inventions as well as new
patterns or designs. In 1970, the Patents Act, 1970 repealed the provisions with respect to the
patents law from the Act of 1911. Thereafter the Designs Act, 1911 continued to be the only
enactment dealing with industrial designs in India until the Designs Act, 2000 has been enacted 2.
The new law of designs enlarged the scope of the definition of “design” by including the
composition of lines and colours, and multi-dimensional articles to which a design can be
applied 3. It further introduces an internationally followed system of classification in the place of
Indian classification apart from making many substantial changes relating to identification of
non-registerable designs, restoration of lapsed designs and introduction of compulsory
registration of any document for transfer of rights in the registered design.

Meaning of Design and its Protection

‘Design’ is defined as ‘only the features of shape, configuration, pattern, ornament or

composition of lines or colors applied to any article, whether in two dimensional or three
dimensional or in both forms, by any industrial process or means, whether manual, mechanical,
or chemical, separate or combined, which in the finished article appeal to and are judged solely
by the eye. However design does not include (I) any mode or principle of construction or (ii)
anything, which is a mechanical device and (iii) any trademark; or (iv) any property mark; or (v)
any other artistic work.

1
See generally, K.Ponnuswami, Design Protection in India-The Designs Act, 1911, (1994), Ed.by P.S.Sangal and
K.Ponnuswami at pp.19 ff
2
Which came into force from 11-05-2002
3
u/s. 2(d)

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 Lesson-10: Protection of Industrial Designs in India

Under the provisions of the Designs Act, 2000, designs are protected in respect of about
30 different classes of goods. The classification of goods include: (i) articles of clothing and
haberdashery (class 2); (ii) brush ware (class 4); (iii) textile piece goods artificial and natural
sheet material (class 5); (iv) furnishing (class 6); (v) Household goods (class 7); (vi) articles of
adornment (class 11) etc. This is only illustrative. All these goods including their sub-classes, can
be protected as registered designs provided the same are: (1) New or Original; (2) Not disclosed
to the public either in India or outside; (3) Distinguishable from known designs or combinations
of known designs; and (4) Not containing/comprising scandalous or obscene matter.

Essentials of Design

1) It must be applied to Articles: A design is something, which is applied to an article and not
the article itself. An article to which the design is to be applied must be something, which can
be delivered to the purchaser/customer as a finished article. Therefore, buildings and
structures like a 5-star hotel or a petrol filling station cannot be considered as articles within
the definition of design. On the other hand, portable/movable structures, which can be sold
as finished articles, may be the subject matter for registration as design. E.g., Models of
buildings and structures, and toys etc. An article for the purpose of a design means any article
of manufacture and any substance, which is capable of being made and sold separately 4.

2) Appealing to the eye: As can be seen from the definition under the 1911 as well as the
2000 Acts, features of shape, etc., which in the finished article must appeal to the eye and be
capable of being judged solely by the eye. In other words, all shapes or configurations or
patterns are not capable of being registered. The features should appeal to the eye and should
be judged solely by the eye and not by any functional considerations. There must be a special,
peculiar, distinctive, significant or striking appearance – something which catches the eye.
The designs must appeal to the eye i.e., they must have visual representation and be capable
of being judged by a mere look. According to the Black’s Law Dictionary 5, design is a term of
art, the giving of a visible form to the conceptions of the mind, or invention.

4
Rotila Auto components (P) Ltd. v. Jaspal Singh, 2002 (2) RAJ 34
5
5th Edition, 1979, West Publishing Co., St Paul Minn.
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3) Novelty and Originality: A design, for the purpose of registration must be both new
and original, not previously published in India. It should be substantially different from pre-
existing designs applied to the class of article. The introduction of ordinary trade variants
into an old design cannot make it new or original. For E.g. colour may form an element into a
design, unless the change of colour creates a new pattern or ornament. In deciding the
question of novelty or originally, the evidence of experts in the trade is admissible. What
amounts to a substantial difference must depend on the particular facts of each case. A
design, which is a fraudulent or obvious imitation of an existing design, will be considered a
pirated copy. Similarly a design of a water dispenser in a cylindrical shape has been held to be
“no novelty” in Hello Mineral Water Pvt. Ltd. v. Thermoking California Pure 6, on the ground
that mere novelty of form or shape is insufficient. Novelty involves the presence of some
element or new position of an old element in combination, different from anything found in
any prior structure. In order to be original and novel, a design must not have been the subject
matter of prior use in full view of the general public, prior publication or prior exhibition.
Publication before registration defeats the proprietors’ right to protection under the Law 7.

• Presumption of Originality: Where the statement of novelty filed by the petitioner was
in respect of shape, configuration and surface pattern particularly the ridged side of the
container. The novelty was not claimed either in relationship to the proportion of the
shape or in the colour used. Therefore the difference in the proportion of the container
and the difference in colour between the petitioner’s containers and the defendant’s
containers are immaterial, as neither the colour nor the proportions were part of the
registered design.

4) No Prior Publication: An application for registration of a design should be for a new or

original design, not previously published in India. The Designs Act does not define
“publication”. In order to constitute publication, a design must be made available to the
public or it is shown to be disclosed to some person without any obligation to keep it a
secret/confidential. It is not necessary that the design should be actually used. Generally the
publication may be classified into two types viz., (1) publication in prior document: and (2)

6
2000 PTC 177 (Del)
7
The Designs Act, 2000 does not define “publication” .In order to constitute publication, a design must be made available
to the public or it is shown to be disclosed to some person without any obligation to keep it a secret/confidential.

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 Lesson-10: Protection of Industrial Designs in India

publication by prior user. If it is published already, it cannot be registered as a ‘design’ under

the act. In Kemp and Company and others v. Prima Plastics Ltd. 8 the Bombay High Court held
that a disclosure of a design by the proprietor to any other person in good faith is not deemed
to be a publication of design sufficient to invalidate the copyright thereof, if the registration is
obtained subsequent to the disclosure.

For instance, if goods are imported from abroad and are used by the importer without its
disclosure to anyone else and goods of such design are not available freely in India, then,
possibly, can be said that there is no publication of the design of the goods so imported.
However, if such imported goods are used in full view of general public, then the design of the
goods so imported and use, will have to be regarded as having been published in India, apart
from the fact that such a design, if later used for manufacture of goods in India, would not be
regarded as a new or original design. If for example, an importer imports a car, which works on
solar energy and even though the car so imported may be only is of its kind in India, but when it
is driven on the roads here, it would mean that design of the car has been made public in India.

Word ‘published’ used in Section 9 or under Section 4 of the Act it has not been defined
under the Act. It is published if a design is no longer a secret. There is publication if the design
has been disclosed to the public or public has been put in possession of the design. Russell
Clarke 9 says that: “It is sufficient, and there will be publication if the knowledge was either – (1)
Available to members of the public; or (2) Actually in fact shown and disclosed to some individual
member of the public who was under no obligation to keep it secret. It is not necessary design
should have been actually used. There will just as much is publication if it is shown that the public
knew it without ever having been actually put into use.” Thus, publication may be of two types: (1)
Publication in prior documents, and (2) publication by prior user. If it has been pre-published, it
cannot claim protection, as such, publication before registration defeats the proprietor’s right to
protection under the Act.

Registration of Designs

Section 3 to 10 of the Designs Act, 2000 and Rules 11 to 25 of the Designs Rules, 2001 deal
with the registration or designs. The Registering authority is the Controller-General of Patents,
8
2000 PTC (20) 96 (Bom)
9
In Copyright in Industrial Design, 4th Edn, pages 41-42
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 SWAYAM Course on Intellectual Property Rights and Competition Law in India

Designs and Trademarks, appointed by the Central Government. He will be the controller of
Designs for the purpose of the Act.

1. Persons Entitled to Apply for Registration: An application for registration of a design may
be filed by any person claiming to be proprietor of any new or original design, not previously
registered in India. For this purpose, the proprietor of new or original design must be:
(i) either the author of the design; or

(ii) any other person who acquired the design or right to apply the design to any article; or

(iii) person on whom such rights have evolved.

The essential conditions as stated above must be fulfilled before any application is made for
registration.

2. Contents of Application: The application filed should be accompanied by four copies of

the design duly signed by the applicant. It should state that class in which the design is to be
registered and, also the article/articles to which the design is to be applied. It may be noted
that, for the purposes of registration of designs, goods are classified in the manner specified
in the Third Schedule to be 2000 Act. There are altogether 31 classes, each consisting of many
sub-classes mentioned in this schedule. For example, class 01 contains Foodstuffs, class 01
contains articles pertaining to furnishing and class 11 contains articles of adornment. Under
the old Act of 1911, there/were only 14 classes of articles but the number has been increased
to 31 under the new Act.

3. Statement of Novelty: Apartment from the above-mentioned contents, the

application should also contain an endorsement and a brief statement of the novelty claimed
by the applicant for his design. Each of such representation should be of the prescribed size,
depicting the perspective view, front view and side view. Where words, letters or numerals
are not of the essence of the design they should be removed from the representations or
specimens. However where they are of the essence of the design, the controller may require
the insertion of a disclaimer of any right to their exclusive use. If the names or
representations of living persons appear on a design, the controller should be furnished with
consents from such persons before proceeding to register the design. In the case of persons

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 Lesson-10: Protection of Industrial Designs in India

recently dead, the controller may call for consents from their legal representatives before
proceeding with registration of a design on which their names or representation appear.

4. Prohibition of Registration of Certain Designs: Generally, a design which is not new or

original; or has been disclosed to the public anywhere in India or in any other country by
publication in tangible form or by use or in any other way prior to the filing date, or where
applicable, the priority date of the application for registration; or is not significantly
distinguishable from known designs or combination of designs; or comprises or contains
scandalous or obscene matter; shall not be registered under the Act.

5. Acceptance of Application: Upon receipt of an application for registration, the controller

should consider it and may accept it if he considers that there is no objection to the design
being registered.

6. Objections: If on consideration of the application any objections appear to the

controller, a statement of these objections should be sent to the applicant or his agent in
writing. Unless the applicant or his agent removes those objections within one month or
applies for a hearing, the applicant will be deemed to have withdrawn his application.

7. Decision of Controller: After hearing the applicant or his agent with regard to the objections
raised, Controller should take a decision and communicate them in writing to the applicant.
Thereafter the applicant may require the controller, within one month, to state the grounds
for such decision. This provision helps the applicant to appeal to the central government.

8. Certificate of Registration: When the design is registered, the controller should grant a
certificate of registration, to the proprietor of the design. It shall be entered in the Register of
Designs, in addition to the other particulars like the number of the design, the class in which
it is registered, the date of filing of application for registration and other matters that would
affect the validity or proprietorship of the design.

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 SWAYAM Course on Intellectual Property Rights and Competition Law in India

9. Effect of Registration: When a design is registered, the registered proprietor of the design
will be entitled to the right to exclusive use of the design i.e., the copyright in the design 10; and
the right to protect the design from piracy.

When the process of registration is complete, the articles on which the design is applied
must carry the word “Regd” or “RD” along with the registration number. However this condition
is waived in the case of textile goods or lace where it is practically difficult to imprint the word.
Further, the registration of a design excludes all persons from using the design including the
Government. A registered design shall have for all intents, the like effect as against Government
as it has against any person. It means, even the Government is bound to honour the copyright in
the design. It can however, use the design or acquire it or even prohibit a person from using or
misusing the design in certain circumstances, e.g., when the article is not made available to the
public at reasonable prices. Once a design is registered, it can be protected for a total period of
15 years i.e., 10 years from the date of registration initially and which may be extended for a
further period of 5 years 11.

Designs and Traditional Knowledge

Perhaps India is the only country in the world, which can be better described as the
richest nation in the world in terms of culture and knowledge. It is the rich culture and heritage
that make our country one of the most unique regions throughout the globe. Their ancestors are
passing on these cultural properties to the succeeding generations. They are manifested in many
forms like the handicrafts, architectural designs, literary and artistic works.

The handicrafts, artifacts and designs created by the traditional communities and
traditional people inhabiting different parts of India, have great cultural as well as commercial
value, recognized universally. Most of them have been produced from the time immemorial on
by/from one generation to another. Therefore, the knowledge, which has been preserved for
centuries and transmitted through generations, can be rightly called the Traditional Knowledge
and the same has been recognized as one of the main forms of IP. Therefore, it has become

10
This should not be confused with the exclusive rights granted for literary and artistic works etc even though there may be
certain works, which can qualify for registration, both under the Copyright and Design Legislations, however both of them
cannot be applied at the same time.
11
u/s. 11 of Designs Act, 2000

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 Lesson-10: Protection of Industrial Designs in India

essential to preserve and protect our TK in the form of handicrafts and textile designs etc. by
exploring all means of legal protection available under the IPR regime.

Conclusion

We have discussed various aspects of industrial designs in this lesson. It is important to

note that many new developments are taking place in the field of industrial designs, and the
present legal regime of IPR in India is probably not ready to address them.

*******

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 SWAYAM COURSE ON INTELLECTUAL PROPERTY RIGHTS
AND COMPETITION LAW IN INDIA

COURSE CO-ORDINATOR, : Prof. (Dr.) G. B. REDDY

SUBJECT EXPERT & AUTHOR
TEACHING ASSISTANT
Professor of Law, University College of Law,
Osmania University, Hyderabad.
: Dr. S.B. Md. IRFAN ALI ABBAS
Visiting Faculty, University College of Law,
Osmania University, Hyderabad.

LESSON-11: TRADITIONAL KNOWLEDGE AND GEOGRAPHICAL INDICATIONS

Introduction

The human beings use everyday many things like the traditional food items, designed
clothes, indigenous medicines, classical music, classical dance, traditional artefacts for various
purposes. They have always generated, refined and passed on the knowledge relating to the
above from generation to generation. Such knowledge is called the Traditional Knowledge (TK).
It is often an important part of their cultural identities. Traditional knowledge has played, and
still plays, a vital role in the daily lives of the vast majority of people. Traditional knowledge is
essential to the food security and health of millions of people in the developing world. In many
countries, traditional medicines provide the only affordable treatment available to poor people.
In addition, knowledge of the healing properties of plants has been the source of many modern
medicines. The use and continuous development by local farmers of plant varieties and the
sharing and diffusion of these varieties and the knowledge associated with them play an
essential role in agricultural systems in developing countries.

The international community has sought to recognize and protect traditional knowledge
only during 1980s. In 1981, WIPO and UNESCO adopted a model law on folklore. In 1989 the
concept of Farmers’ Rights was introduced by the FAO into its International Undertaking on
Plant Genetic Resources and in 1992 the Convention on Biological Diversity (CBD) highlighted
the need to promote and preserve traditional knowledge. In spite of these efforts which have
spanned more than two decades, final and universally acceptable solutions for the protection
and promotion of traditional knowledge have not yet emerged so far. The CBD also set out
principles governing access to genetic resources and the knowledge associated with them, and
the sharing of benefits arising from such access.

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 SWAYAM Course on Intellectual Property Rights and Competition Law in India

We in this lesson shall also discuss Geographical Indications (GIs) which have a nexus
with the protection of Traditional Knowledge.

Traditional Knowledge and Bio-Piracy

During the 1990s, number of cases relating to traditional knowledge had attracted
international attention. As a result, the issue of traditional knowledge has been brought to the
fore of the general debate surrounding intellectual property. These cases involve what is often
referred to as “bio-piracy”. The examples of Turmeric, Neem and ayahuasca illustrate the issues
that can arise when patent protection is granted to inventions relating to traditional knowledge
which is already in the public domain. In these cases, invalid patents were issued because the
patent examiners were not aware of the relevant traditional knowledge. In another example, a
patent was granted on a plant species called Hoodia. Here, the issue was not whether the patent
should or should not have been granted, but rather on whether the local people known as the
San, who had nurtured the traditional knowledge underpinning the invention, were entitled to
receive a fair share of any benefits arising from commercialization.

There is no accepted definition of “bio-piracy.” It is defined as “the appropriation of the

knowledge and genetic resources of farming and indigenous communities by individuals or
institutions seeking exclusive monopoly control (usually patents or plant breeders' rights) over
these resources and knowledge.” The bio-piracy is committed by granting of ‘wrong’ patents,
lowering the Patenting, and obtaining patents by unauthorised persons and corporations by
ignoring the real stakeholders.

Some Well Known Cases of Bio-Piracy

There are number of cases where bio-piracy was committed by unauthorised persons.
Some of the well known cases 1 are:

a) Turmeric patent in USA: Turmeric (Curcuma longa) is a plant of the ginger family yielding
saffron-coloured rhizomes used as a spice for flavouring Indian cooking. It also has
properties that make it an effective ingredient in medicines, cosmetics and as a colour dye. As
1
See the Report of the Commission on IPRs set up by the British government 12th September 2002 available at
http://www.iprcommission.org

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 Lesson-11: Traditional Knowledge and Geographical Indications

a medicine, it is traditionally used to heal wounds and rashes. In 1995, two Indian nationals
at the University of Mississippi Medical Centre were granted US patent on "use of Turmeric
in wound healing". The Indian Council of Scientific and Industrial Research (CSIR) requested
the US Patent and Trademark Office (USPTO) to re-examine the patent. CSIR argued that
Turmeric has been used for thousands of years for healing wounds and rashes and therefore
its medicinal use was not novel and produced documentary evidence of TK, including an
ancient Sanskrit text and a paper published in 1953 in the Journal of the Indian Medical
Association. Despite arguments by the patentees, the USPTO upheld the CSIR objections and
revoked the patent. Thus a patent based on the traditional knowledge of a developing country
had been successfully challenged in this case.

b) Neem Patent: It is a tree from India and other parts of South and Southeast Asia, has
properties as a natural medicine, pesticide and fertilizer. Its products are used as pesticides,
medicines and even as soaps. In 1994 the EPO granted a European Patent (EP 257) to the US
Corporation W.R. Grace and USDA for a “method for controlling fungi on plants by the aid of
hydrophobic extracted Neem oil”. In 1995 a group of international NGOs and representatives
of Indian farmers filed a legal opposition against the patent contending that there is prior art
relating to the fungicidal effect of extracts of Neem seeds had been known and used for
centuries in Indian agriculture to protect crops. In 1999 the EPO determined that according
to the evidence “all features of the present claim have been disclosed to the public prior to
the patent application… and [the patent] was considered not to involve an inventive step”.
The patent was revoked by the EPO in 2000.

c) Ayahuasca: For generations, shamans 2 of indigenous tribes throughout the Amazon

Basin have processed the bark of Banisteriopsis caapi (B caapi) to produce a ceremonial drink
known as "ayahuasca". The shamans use ayahuasca (which means "vine of the soul") in
religious and healing ceremonies to diagnose and treat illnesses, meet with spirits, and divine
the future. An American obtained Plant Patent in June 1986, granting him rights over an
alleged variety of B. caapi he had called "Da Vine". The patent description stated that the
“plant was discovered growing in a domestic garden in the Amazon rain-forest of South

2
A member of certain traditional societies, especially of northern Asia and of North andSouth America, who acts as a mediu
m between the visible world and an invisible spiritworld and who practices magic or sorcery for purposes of healing, divina
tion, and control over natural events. See http://www.thefreedictionary.com/shaman
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 SWAYAM Course on Intellectual Property Rights and Competition Law in India

America.” The patentee claimed that Da Vine represented a new and distinct variety of B.
caapi, primarily because of the flower colour. In 1994, a re-examination request on the patent
was filed arguing that a review of the prior art revealed that Da Vine was neither new nor
distinct. Initially in November 1999, the USPTO rejected the patent claim agreeing that Da
Vine was not distinguishable from the prior art however, further arguments by the patentee
persuaded the USPTO to reverse its decision and announce in early 2001 that the patent
should stand.

d) Hoodia Cactus Controversy: The San, who live around the Kalahari Desert in southern
Africa, have traditionally eaten the Hoodia cactus to stave off hunger and thirst on long
hunting trips. In 1937, a Dutch anthropologist studying the San noted this use of Hoodia.
Scientists at the South African Council for Scientific and Industrial Research (CSIR) only
recently found his report and began studying the plant. In 1995 CSIR patented Hoodoo’s
appetite-suppressing element (P57). In 1997 they licensed P57 to the UK biotech company,
Phytopharm. In 1998, the pharmaceutical company Pfizer acquired the rights to develop and
market P57 as a potential slimming drug and cure for obesity, from Phytopharm for up to $32
million in royalty and milestone payments. On hearing of possible exploitation of their TK, the
San People claimed that their traditional knowledge had been stolen, in the absence of prior
informed consent of all stakeholders, including the original discoverers and users. In March
2002, an understanding was reached between the CSIR and the San whereby the San,
recognized as the custodians of traditional knowledge associated with the Hoodia plant, will
receive a share of any future royalties.

Thus, it is clear that many developing countries, holders of traditional knowledge, and
campaigning organizations are pressing in a multitude of flora for traditional knowledge to be
better protected. Such pressure has led, to the creation of an Intergovernmental Committee on
Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore in WIPO. The
WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional
Knowledge and Folklore (IGC) meets several times a year in Geneva. The thirty-fourth session of
the IGC (June 12 to 16, 2017) was held to address the themes of traditional cultural expressions
and to take stock.

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 Lesson-11: Traditional Knowledge and Geographical Indications

Use of the Existing IP System to Protect and Promote TK

In the absence of a universally agreed mode of protecting TK under IP regime, different

methods are employed in the world. For example, Aboriginal and Torres Strait Islander artists in
Australia have obtained a national certification trademark to help promote the marketing of their
art and cultural products and deter the sale of products falsely claiming to be of Aboriginal
origin. These include the use of copyright protection in Canada to protect tradition-based
creations including masks, totem poles and sound recordings of Aboriginal artists; the use of
industrial designs to protect the external appearance of articles such as head dresses and carpets
in Kazakhstan and use of geographical indications to protect traditional products such as liquors,
sauces and teas in Venezuela and Vietnam. Philippines has enacted legislation, and is considering
further provisions, giving indigenous communities rights over their traditional knowledge.

The ability to extend the life of trademarks and Geographical Indications of Goods (GI)
indefinitely and the possibility of collective ownership of such rights suggest that they may be
especially suitable for protecting traditional knowledge.

Position in India: Traditional Knowledge Digital Library (TKDL) – An Indian View

Traditional Knowledge Digital Library (TKDL) is a pioneer initiative of India in 2001, to

prevent misappropriation of country’s traditional medicinal knowledge at International Patent
Offices on which healthcare needs of more than 70% population and livelihood of millions of
people in India is dependent. Its genesis dates back to the Indian effort on revocation of patent
on wound healing properties of turmeric at the USPTO.

TKDL technology integrates diverse disciplines and languages such as Ayurveda, Unani,
Siddha, Yoga, Sanskrit, Arabic, Urdu, Persian, Tamil, English, Japanese, Spanish, French, German,
modern science & modern medicine. Till date, TKDL is based on more than 350 books of Indian
Systems of Medicine, which are available in open domain and can be sourced by any individual/
organization at national/international level. TKDL acts as a bridge between these books (Prior-
art) and International patent examiners. It is the TKDL technology which has created a unique
mechanism for a Sanskrit verse to be read in languages like German, Japanese, English, Spanish
and French by an examiner at any International Patent Office on his computer screen.

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 SWAYAM Course on Intellectual Property Rights and Competition Law in India

Geographical Indications of Goods

Geographical Indication, in relation to goods, means an indication which identifies such

goods as agricultural goods, natural goods or manufactured goods as originating, or
manufactured in the territory of a country, or a region or locality in that territory, where a given
quality, reputation or other characteristic of such goods is essentially attributable to its
geographical origin and in case where such goods are manufactured goods one of the activities of
either the production or of processing or preparation of the goods concerned takes place in such
territory, region or locality, as the case may be. Any name which is not the name of a country,
region or locality of that country shall also be considered as the geographical indication if it
relates to a specific geographical area and is used upon or in relation to particular goods
originating from that country, region or locality, as the case may be.

Goods used by human beings may be natural, agricultural or manufactured. Some of them
have unique characteristics owing to certain geographical factors like Champagne, Darjeeling Tea
or Kashmir Apple or Basmati rice. A geographical indication (GI) is a name or sign used on
certain products which corresponds to a specific geographical location or origin (e.g. a town,
region, or country). India, as a member of the World Trade Organization (WTO), enacted the
Geographical Indications of Goods (Registration and Protection) Act, 1999 which has come into
force with effect from 15 September 2003. The Geogrpahical Indications have been defined
under Article 22(1) of the WTO Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS) Agreement as: "Indications which identify a good as originating in the territory of
a member, or a region or a locality in that territory, where a given quality, reputation or
characteristic of the good is essentially attributable to its geographic origin."

The GI tag ensures that none other than those registered as authorized users (or at least
those residing inside the geographic territory) are allowed to use the popular product name.
Darjeeling tea became the first GI tagged product in India, in 2004-05, since then by April 2017,
as many as 282 GIs had been added to the list.

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 Lesson-11: Traditional Knowledge and Geographical Indications

The Basmati Case

Basmati is a variety of rice from the Punjab provinces of India and Pakistan. The rice is a
slender, aromatic long grain variety that originated in this region and is a major export crop for
both countries. Annual basmati exports represent the livelihood of thousands of farmers. The
“Battle for Basmati” started in 1997 when US Rice breeding firm Rice Tec Inc. was awarded a
patent (US5663484) relating to plants and seeds, seeking a monopoly over various rice lines
including some having characteristics similar to Basmati lines. Concerned about the potential
effect on exports, India requested a re-examination of this patent in 2000. The patentee in
response to this request withdrew a number of claims including those covering basmati type
lines. Further claims were also withdrawn following concerns raised by the USPTO. The dispute
has however moved on from the patent to the misuse of the name “Basmati.”

In some countries the term “Basmati” can be applied only to the long grain aromatic rice
grown in India and Pakistan. Rice Tec also applied for registration of the trademark ‘Texmati’ in
the UK claiming that “Basmati” was a generic term. It was successfully opposed, and the UK has
established a code of practice for marketing rice. Saudi Arabia (the world’s largest importer of
Basmati rice) has similar regulations on the labelling of Basmati rice.

In 1998 the US Rice Federation submitted that the term “Basmati” is generic and refers to a
type of aromatic rice. In response, a collective of US and Indian civil society organizations filed a
petition seeking to prevent US-grown rice from being advertised with the word “Basmati”. The
US Department of Agriculture and the US Federal Trade Commission rejected it in May 2001.
Neither considered the labelling of rice as ‘American-grown Basmati’ misleading, and deemed
"Basmati" a generic term. The problem is not just limited to the US; Australia, Egypt, Thailand
and France also grow basmati type rice and may take the lead from the US and officially deem
“basmati” a generic term. The name "Basmati" is now protected by registering it as a
Geographical Indication under the Geographical Indications of Goods (Registration and
Protection) Act 1999.

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 SWAYAM Course on Intellectual Property Rights and Competition Law in India

Conclusion

Dear Viewers, I am sure that after listening to this lecture you must have understood the
concept of traditional knowledge, need for its protection, the contemporary developments
relating thereto. Similarly you must have also got a clear idea as to the concept of GIs and
evolution of their protection in India. I hope that you have enjoyed this lecture.

Thank you.

*******

Page 8 of 8
 SWAYAM COURSE ON INTELLECTUAL PROPERTY RIGHTS
AND COMPETITION LAW IN INDIA

COURSE CO-ORDINATOR, : Prof. (Dr.) G. B. REDDY

SUBJECT EXPERT & AUTHOR
TEACHING ASSISTANT
Professor of Law, University College of Law,
Osmania University, Hyderabad.
: Dr. S.B. Md. IRFAN ALI ABBAS
Visiting Faculty, University College of Law,
Osmania University, Hyderabad.

LESSON-12: COPYRIGHT PROTECTION AND EMERGING ISSUES

Introduction

Copyright, which is one of the oldest forms of the Intellectual Property Rights, has been
facing certain technological and also legal challenges to its effective protection. It is said that, in
the race between legal development and technological advancement, the latter always takes a
lead. It is also applicable to the Copyright Protection. The copyright protection has two objectives
viz., to provide economic incentive to the author and to promote dissemination of information.
Each of these two rights is exclusive to the author, and such rights have been guaranteed under
various international and national laws.

In recent times, the stakeholders in the copyright in respect of the works have been
facing, a variety of issues and challenges. They include, demand for copyleft, protection of
celebrity rights, copyright in sporting events, preserving traditional cultural expressions and
more particularly, the issues of piracy. The emergence of remix culture and use of artificial
intelligence also made the traditional copyright protection a complex issue. In this lesson, we
shall try to understand some of these issues and challenges in detail.

Copyright Protection in Digital Age

Copyright protection was originally introduced as a response to the evolution of print

media in the 15th Century but, the advent of digital age in the 20th and 21st centuries has
challenged the traditional legal framework of the Copyright Law. Today, the world is witnessing,
convenient use of technology and the worldwide web, which are facilitating replication,
modification and transmission of information at different levels. Consequently, certain
movements like “open access” movement, and also “free culture” movement have emerged. For
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 SWAYAM Course on Intellectual Property Rights and Competition Law in India

instance, the question arises, as to the justification of producing remixes and mashups, as an
exception to copyright protection and by way of fair use.

Due to the cumulative use of digital media, it is felt that, the existing legal framework of
copyright protection doesn’t fit the digital age. Remix, which is a mixture of pre-existing work
though cannot be described as original, but certain advocates like Lawrence Lessig believe that
remixing is a creation out of prior work. Similarly, mashup also is believed to be a work of remix.
Another, consequence of digital age is the emergence of the system of openness. Person like
Peter Drucker and Alvin Toffler in the 1970s and Lawrence Lessig in the first decade of the
present century, have contributed to free culture movement and certain new concepts like
creative commons.

The remixes and mashups prima facie appear to be infringement of the right of
reproduction as recognized by Article 9 of the Berne Convention and Section 14 of the Copyright
Act, 1957. However, the Court of Justice of the European Union in the case of Eva Maria Painer v.
Standard Verlags GmbH & others 1 decided in 2011, held that, the reproduction is lawful if due
credit is given to the author by indicating his name in the reproduced segment. In the Indian
Context, version recordings which were considered as instances of fair use u/S 52(1)(j) of the
Copyright Act, 1957 (before its amendment in 2012) were held to be lawful subject to certain
conditions. One may recollect, the decision of Hum Aapke Hain Kaun case 2 where it was held that
version recordings do not violate copyright. It is also equally relevant to mention that by way of
2012 amendment the Statutory Licenses in respect of such version recordings cannot be
obtained so easily as before, since the number of copies of such version recordings should be
minimum 50,000 and the producer of such recordings should wait for minimum 5 years after the
release of the original musical work. The 2012 amendment introduced a new Section 31-C
under the title “Statutory License for Cover Versions”. It is for the first time that the “cover
version” is being used in the statute. The possible implication of this amendment is that for the
first-time cover versions are recognized under a statutory licensing framework and not merely
as a defense to an infringement of a copyright .

1
CJEU – C/145/10
2
Gramophone Company of India Ltd. v. Super Cassette Industries Ltd. 1995 (1) ARBLR 555 Delhi
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 Lesson-12: Copyright and Emerging Issues

A strange paradox about the copyright protection is that many believe that excellent
works are mostly copied. In 1994, Steve Jobs the founder of Apple was asked in an interview
whether he had stolen the idea of the Graphic User Interface (GUI) for Xerox and he said that
“Picasso had a saying-‘Good artist copy, great artists steal’ 3”, apparently copying Pablo Ruiz
Picasso, the Spanish painter, sculptor, printmaker, ceramicist, stage designer, poet and
playwright who was one of the most influential artists of the 20th century. It appears that Pablo
probably borrowed the phrase from the Russian conductor Igor Stravinsky who once said,
‘Lesser artists borrow, great artists steal’. 4 In turn, Mr.Stravinsky, an appreciator of the arts,
clearly had T.S. Elliot in mind, who in turn had once stated, “Immature poets imitate, mature
poets steal” 5. This may have been influenced by an article written by W.H.Davenport, who,
almost comically enough, was referring to the poet Alfred Tennyson when he wrote in 1892,
“that great poets imitate and improve, whereas small one steal and spoil. 6” Thus it appears that
imitation has been in existence from a long time, especially in the case of copyrighted works.

Copyleft

Copyleft is a strategy of utilizing copyright law to pursue the goal of fostering and
encouraging the equal and inalienable right to copy, share, modify and improve creative works of
authorship. This concept is usually implemented in the details of a specific copyright license,
such as the GNU General Public License (GPL) and the Creative Commons Attribution Share Alike
License. Copyright holders of creative works can unilaterally choose these licenses for their own
works to build communities that collaboratively share and improve those copylefted creative
works. Copyleft.org is a collaborative project to create and disseminate useful information,
tutorial material, and new policy ideas regarding all forms of copyleft licensing.

3
Christopher Dernbarch, Steve Jobs: Good artists copy great artists steal, YouTube (January 10, 2020)
4
Peter Yates, Twentieth Century Music: Its Evolution from the End of the Harmonic Era into the Present Era of
Sound, 41 (Pantheon Books New York 1967).
5
T.S. Eliot, The Sacred Wood: Essays on Poetry and Criticism, 114 (Methuen & Company Ltd. London 1920)
6
W.H. Davenport Adams, Imitators and Plagiarists (Part 2 of 2), The Gentleman’s Magazine, June 1892 at
627, 628. See also Nikhil Joseph Zacharias, Do You Copy? Roger, Selected Essays From the National Level
Essay Competition on Intellectual Property Rights, Centre for Intellectual Property Rights, The National
University of Advanced Legal Studies, Kochi, Kerala, at 80
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 SWAYAM Course on Intellectual Property Rights and Competition Law in India

Creative Commons

Creative Commons project was originally created in December 2002. Since then, more
than 50 countries have joined this initiative and more than 500 million works have been licensed
under Creative Commons. There are six main Creative Commons licenses creatives can use when
publishing their work under CC terms. They are:

1. Attribution (CC BY): This license lets others distribute, remix, tweak, and build upon the work,
even commercially, as long as credit is given for the original creation. This is the most
accommodating of licenses offered and is recommended for maximum dissemination and use
of licensed materials.

2. Attribution ShareAlike (CC BY-SA): This license lets others remix, tweak, and build upon
the work even for commercial purposes, as long as they credit the work and license their new
creations under the identical terms. This license is often compared to “copyleft” Free and
Open Source Software (FOSS) licenses. All new works based on the work will carry the same
license, so any derivatives will also allow commercial use. This is the license used by
Wikipedia, and is recommended for materials that would benefit from incorporating content
from Wikipedia and similarly licensed projects.

3. Attribution-NoDerivs (CC BY-ND): This license lets others reuse the work for any
purpose, including commercially; however, it cannot be shared with others in adapted form,
and credit must be provided to the original author.

4. Attribution-NonCommercial (CC BY-NC): This license lets others remix, tweak, and build upon
the work non-commercially, and although their new works must also acknowledge the
original author and be non-commercial, they don’t have to license their derivative works on
the same terms.

5. Attribution-NonCommercial-ShareAlike (CC BY-NC-SA): This license lets others remix, tweak,

and build upon the work non-commercially, as long as credit is given and the new creations
are licensed under the identical terms.

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 Lesson-12: Copyright and Emerging Issues

6. Attribution-NonCommercial-NoDerivs (CC BY-NC-ND): This license is the most

restrictive of the six main licenses, only allowing others to download the works and share
them with others as long as the credit is given, but the work can’t be changed in any way or
used commercially.

Thus, it could be seen that we are shifting from the copyright regime of “all rights reserved” to
“some rights reserved” in the digital arena particularly.

From Picasso to Pigcasso

In the good old days, and even till now it is only the human beings who created literary
and artistic works, though the copyright in respect of them could be claimed by humans as well
as legal persons. Of late a new trend appears to be emerging. Even animals and machines are also
creating certain works in the nature of literary and artistic works. It happened in the case of the
Monkey’s Selfie case. The facts of this case are that a British nature photographer, David Slater
had traveled to Indonesia since 2008 to take photographs of the critically endangered Celebes
crested macaques (Black Apes). In 2011 he licensed several images (self-portraits taken by the
monkeys) published in magazines and claimed Copyright in them. Then People for the Ethical
Treatment of Animals (PETA), an American animal rights organization based in Norfolk, Virginia
filed a suit in an American district Court claiming violation of copyright of the monkey. The
Federal Ninth Circuit court held that a non-human being cannot hold copyright.

In another very interesting case involving a piglet named Pigcasso, the painting pig which
was rescued from an industrialized hog farm in South Africa it was found that the pig indeed
painted certain beautiful pictures painting pictures. Some of the paintings were even purchased
by the Swiss Airlines. The question that arises is as to the ownership of copyright in paintings.
Though no litigation appears to have been file in this case, the issue still remains to be addressed.

Similarly, the questions relating to the literary works and paintings made by a computer
programme also whether driven by Artificial Intelligence (AI) or otherwise, pose certain
challenges to the established notions of ownership of copyright. Projects such as Deep Dream, a
program that uses neural networks to produce new visuals, let anyone use AI approaches to
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 SWAYAM Course on Intellectual Property Rights and Competition Law in India

generate, ostensibly, art. In a 2016 charity auction in San Francisco, prints made by using Deep
Dream sold for as high as $8,000, raising questions about whether the uploader or the algorithms
should get credit7. The same thing can be said in case of any works created by Sophia the
humanoid robot, Siri and Alexa. Probably, a new jurisprudence needs to be created in such cases.

Claims in case of TCEs

WIPO states that Traditional cultural expressions (TCEs), also called "expressions of
folklore", may include music, dance, art, designs, names, signs and symbols, performances,
ceremonies, architectural forms, handicrafts and narratives, or many other artistic or cultural
expressions, because TCEs raise some particular legal and policy questions in intellectual
property (IP), they receive a distinct focus in many national and regional IP laws and in WIPO’s
work. TCEs can sometimes be protected by existing systems, such as copyright and related
rights, geographical indications, appellations of origin and trademarks. For Ex: contemporary
adaptations of folklore are copyrightable, while performances of traditional songs and music
may come under the WIPO Performances and Phonograms Treaty and Beijing Treaty on Audio-
visual Performances. WIPO’s Intergovernmental Committee on Intellectual Property and Genetic
Resources, Traditional Knowledge and Folklore is negotiating international legal protection of
Traditional Cultural Expressions. The possible issues relating to this could be identification of
stakeholders, their documentation, exercise of economic and moral rights by the stakeholders,
and undue commercial exploitation of TCEs.

From Google Books Case to DU Photocopying Case

The purpose of copyright protection is not only to incentivize the authors and owners but
also to serve the larger public interest through dissemination of knowledge and information. It is
the precise reason for including so many exceptions to copyright infringement by way of ‘fair
use’ or ‘fair dealing’. However, sometimes giving access to the published and copyrighted works
to those persons who are not having license or permission to use them poses certain challenges,

7
See Science and Culture: Computers take art in new directions, challenging the meaning of “creativity” by
Stephen Ornes, dated March 12, 2019 available at https://www.pnas.org/content/116/11/4760 last visited on
23rd January 2020.

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 Lesson-12: Copyright and Emerging Issues

particularly when such users are large in number. To enhance access to affordable knowledge
and resources to the users, Google had come out in 2004 with the Library Project, under which it
collaborated with major libraries, collected their books and scanned them into a machine-
readable format. For this, Google did not obtain permission from the authors of the books. The
readers could search for the relevant terms they wanted to know, by the help of ‘snippet’ i.e. only
certain portion of the book (not more than 16% of the book) related with the search, and google
would display the books which contained the search words along with the information regarding
the purchase of that book. Further, google permitted the concerned libraries to download a
scanned copy of the book subject to the condition that copyright laws should be respected. 8

In 2005, Authors Guild and number of authors filed a suit against Google, contending that
scanning the complete book and displaying it through snippets would constitute substitution of
the work, rather than its transformation, and further that, since Google acts like a commercial
entity, it cannot take the fair-use shield. The Second Circuit Court affirmed the decision of the
lower court, declaring that the service offered would amount to fair use, since it was for
expansion of public knowledge. The court, relied upon factors like purpose and character of the
use, nature of copyrighted work, the amount of substantiality of the portion used and the effect
of use on potential market. This decision drew criticism from many publishers and authors.

Coming back to India, in the Delhi University Photocopy case 9, a photocopying/xerox

center on the Delhi University Campus along with the Delhi University were sued by many
international publishers, including Oxford University Press for photocopying course packs i.e.
relevant pages on a given topic from different books, at a subsidized rate. In this case also, the
permission of the authors and publishers was not taken by either the University or the
Rameshwari Xerox Center. The Delhi High Court in the instant case ruled that Photocopying and
supplying such course packs does not amount to infringement of copyright, and that it amounts
to fair use. The fact that no appeals were filed against the judgement and the solitary appeal was
forced to be withdrawn, shows that final word in India at least is yet to emerge.

8
Google Press Centre, Legal Analysis – Google Books, available at:
www.google.com/googlebooks/perspectives/legal.html
9
The Chancellors, Masters and Scholars of the University of Oxford and Others v. Rameshwari Photocopy
Services and Others, December 9 2016
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 SWAYAM Course on Intellectual Property Rights and Competition Law in India

The above two cases demonstrate the emerging conflicts between copyright and fair use
and probably the Courts have to take a call to settle this issue, once and for all.

Celebrity Rights and Personal Branding

The celebrities have certain unique rights, due to their popularity. Their appearance,
name, voice, mannerism etc. may be the subject matter of imitation by many. It may be
sometimes even for commercial purposes. The question that arises is whether, such celebrities
have any copyright or other kinds of intellectual property rights.

In Fortune Films International v. Dev Anand 10, the Hon’ble Supreme Court stated that an
actor in a film has no rights over his performance in the film. However, this position changed in
1994 with the amendment to the Copyright Act, 1957 extending recognition to Performer’s
Rights with the inclusion of Sections 38 and 39. Now, Section 2(qq) of Indian Copyright Act, 1957
defines a performer as someone including “an actor, singer, musician, dancer, acrobat, juggler,
conjurer, snake charmer, a person delivering a lecture or any other person who makes a
performance” and ‘performance’ as any visual or acoustic presentation made live by one or more
performers. The Delhi High Court, in Neha Bhasin v. Anand Raj Anand 11, addressing the question
of what would constitute a ‘live performance’ observed that “Every performance has to be live in
the first instance whether it is before an audience or in a studio. If this performance is recorded and
thereafter exploited without the permission of the performer, then the performer’s right is
infringed.”

In the famous case of Martin Luther King Jr. Center for Social Change v. American Heritage
Products Inc 12, the word celebrity was defined from the legal point of view and right was
extended to public figures like Martin Luther King Jr. too which was earlier extended only to
professional athletes, comedians, actors and actresses, and other entertainers. Today, anyone
who has reached a state of prominence or is yet to reach prominence in the society and seeks to
gain public attention by their acts can be called as a celebrity.

10
AIR 1979 Bom 17
11
2006 (32) PTC 779 Del.
12
No. 38748 Supreme Court of Georgia 250 Ga. 135; 296 S.E.2d 697 October 28, 1982, the case can be
accessed at: http://rightofpublicity.com/pdf/cases/mlkcenter.pdf
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 Lesson-12: Copyright and Emerging Issues

In India, the authoritative precedent or a concrete legislative measure is awaited as to the

IPRs more particularly, the copyright and performer’s rights of the celebrities.

Copyright in Sporting Events

In Union of India v. Board of Control for Cricket in India & Ors.,13 the Supreme Court held
that, the Sports Broadcasting Signals (Mandatory Sharing with Prasar Bharati) Act, 2007
mandates sharing of the live broadcasting signals of sporting events of national importance
with the Prasar Bharati, which owns the erstwhile Doordarshan's channels/networks for
retransmission of the same through its terrestrial and Direct-to-Home networks. The Court
further observed that ‘the live feed received by Prasar Bharati from content rights owners or
holders is only for the purpose of re-transmission of the said signals on its own terrestrial and DTH
networks and not to Cable Operators …..’
This issue also could be one of the emerging issues given the involvement of large stakes
involved, and the right to use of free electronic waves being a fundamental freedom.

Conclusion

In view of some of the pressing issues as discussed above, it is in the interest of all those
concerned with the IPRs in general and copyright in particular to clear the air and to avoid
ambiguity in interpretation and implementation of the law.
****

13
2018(73) PTC 31(SC)
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