Intellectual Property Rights

Unit1 :Introduction to IPR

Concept of Intellectual Property, Origins, Policies and Justifications;
Intellectual property and monopoly – Economic approaches;
Constitutional and Human Rights Dimensions of Intellectual Property –
TRIPs and its impact on India – World Intellectual Property Organization –
Functions and Policies. Classification of intellectual property –
international instruments relating to intellectual property –
International trade agreements.

Unit2 :Patent
Patentable subject matter – Specification –
Licenses of patents and allied rights –
infringement and remedies –
Micro organisms and patentability –
Categories of inventors in biotechnology – patent in computer programmers.

Unit3 :Trade mark

Purpose of protecting trade mark – Registration –
Assignment and licensing of registered marks –
Trade marks in international commerce –
Disincentiveness – Deceptive similarity – Infringement and remedies.
Domain name and trademark

Unit4 :Copyright
Meaning and object – Works in which copyright subsists –
Economic perspective term of copyright –
Fair dealing – Initial ownership –
Assignment and licensing –
control of monopoly –
Right in performances – Infringement and remedies.

Unit 5 :Industrial design

Essential characteristics - Designs Act– Registration – Subject matter Infringement –
Remedies against privacy & Confidential information – As property – Breach of confidence and know – how – Industrial
trade secrets – Remedies.
Geographical Indications of Goods Act 2002 – Object and scope, concept of geographical indications, conditions for
registration, procedure and duration of registration, effect of registration.
Trade Secrets, Plant breeder’s rights and protection and other emerging IPRs in India.

Unit 1 : Introduction to IPR

Concept of Intellectual Property, Origins, Policies and Justifications;

Intellectual property (IP) refers to the creations of the human mind like inventions, literary and artistic works, and
symbols, names, images and designs used in commerce. Intellectual property is divided into two categories: Industrial
property, which includes inventions (patents), trademarks, industrial designs, and geographic indications of source; and
Copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic
works such as drawings, paintings, photographs and sculptures, and architectural designs. Rights related to copyright
include those of performing artists in their performances, producers of phonograms in their recordings, and those of
broadcasters in their radio and television programs. Intellectual property rights protect the interests of creators by giving
them property rights over their creations.

The most noticeable difference between intellectual property and other forms of property, however, is that
intellectual property is intangible, that is, it cannot be defined or identified by its own physical parameters. It must be
expressed in some discernible way to be protectable. Generally, it encompasses four separate and distinct types of
intangible property namely — patents, trademarks, copyrights, and trade secrets, which collectively are referred to as
“intellectual property.” However, the scope and definition of intellectual property is constantly evolving with the
inclusion of newer forms under the gambit of intellectual property. In recent times, geographical indications, protection of
plant varieties, protection for semi-conductors and integrated circuits, and undisclosed information have been brought
under the umbrella of intellectual property.
The Concept of Intellectual Property
The concept of intellectual property is not new as Renaissance northern Italy is thought to be the cradle of
the Intellectual Property system. A Venetian Law of 1474 made the first systematic attempt to protect inventions by a
form of patent, which granted an exclusive right to an individual for the first time. In the same century, the invention of
movable type and the printing press by Johannes Gutenberg around 1450,
contributed to the origin of the first copyright system in the world.

Towards the end of 19th century, new inventive ways of manufacture helped trigger large-scale industrialization
accompanied by rapid growth of cities, expansion of railway networks, the investment of
capital and a growing transoceanic trade. New ideals of industrialism, the emergence of stronger centralized governments,
and nationalism led many countries to establish their modern Intellectual Property laws. At this point of time, the
International Intellectual Property system also started to take shape with the setting up of the Paris Convention for the
Protection of Industrial Property in 1883 and the Berne Convention for the Protection of Literary and Artistic Works in
1886. The premise underlying Intellectual Property throughout its history has been that the recognition and rewards
associated with ownership of inventions and creative works stimulate further inventive and creative activity that, in turn,
stimulates economic growth.

Over a period of time and particularly in contemporary corporate paradigm, ideas and knowledge have become
increasingly important parts of trade. Most of the value of high technology products and new medicines lies in the amount
of invention, innovation, research, design and testing involved. Films, music
recordings, books, computer software and on-line services are bought and sold because of the information and creativity
they contain, not usually because of the plastic, metal or paper used to make them. Many products that used to be traded
as low-technology goods or commodities now contain a higher proportion of invention and design in their value, for
example, brand-named clothing or new varieties of plants. Therefore, creators are given the right to prevent others from
using their inventions, designs or other creations. These rights are known as intellectual property rights.

The Convention establishing the World Intellectual Property Organization (1967) gives the following list of the subject
matter protected by intellectual property rights:
• literary, artistic and scientific works;
• performances of performing artists, phonograms, and broadcasts;
• inventions in all fields of human endeavor;
• scientific discoveries;
• industrial designs;
• trademarks, service marks, and commercial names and designations;
• protection against unfair competition; and
• “all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields.”

With the establishment of the world trade Organization (WTO), the importance and role of the intellectual property
protection has been crystallized in the Trade-Related Intellectual Property Systems (TRIPS) Agreement. It was negotiated
at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) treaty in 1994.

The TRIPS Agreement encompasses, in principle, all forms of intellectual property and aims at harmonizing and
strengthening standards of protection and providing for effective enforcement at both national and international levels. It
addresses applicability of general GATT principles as well as the provisions in international agreements on IP (Part I). It
establishes standards for availability, scope, use (Part II), enforcement (Part III), acquisition and maintenance (Part IV) of
Intellectual Property Rights. Furthermore, it addresses related dispute prevention and settlement mechanisms (Part V).
Formal provisions are addressed in Part VI and VII of the Agreement, which cover transitional, and institutional
arrangements, respectively.

The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most comprehensive multilateral
agreement on intellectual property. The areas of intellectual property that it covers are:

(i) Copyright and related rights (i.e. the rights of performers, producers of sound recordings and
broadcasting organisations);
(ii) Trade marks including service marks;
(iii) Geographical indications including appellations of origin;
(iv) Industrial designs;
(v) Patents including protection of new varieties of plants;
(vi) The lay-out designs (topographies) of integrated circuits;
(vii) The undisclosed information including trade secrets and test data.

Intellectual Property System in India

As discussed above, historically the first system of protection of intellectual property came in the form of (Venetian
Ordinance) in 1485. This was followed by Statute of Monopolies in England in 1623, which extended patent rights for
Technology Inventions. In the United States, patent laws were introduced in 1760. Most European countries developed
their Patent Laws between 1880 to 1889. In India Patent Act was introduced in the year 1856 which remained in force for
over 50 years, which was subsequently modified and amended and was called "The Indian Patents and Designs Act,
1911". After Independence a comprehensive bill on patent rights was enacted in the year 1970 and was called "The
Patents Act, 1970".

Specific statutes protected only certain type of Intellectual output; till recently only four forms were protected. The
protection was in the form of grant of copyrights, patents, designs and trademarks. In India, copyrights were regulated
under the Copyright Act, 1957; patents under Patents Act, 1970; trade marks under Trade and Merchandise Marks Act
1958; and designs under Designs Act, 1911.

With the establishment of WTO and India being signatory to the Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS), several new legislations were passed for the protection of intellectual
property rights to meet the international obligations. These included: Trade Marks, called the Trade Mark Act, 1999;
Designs Act, 1911 was replaced by the Designs Act, 2000; the Copyright Act, 1957 amended a
number of times, the latest is called Copyright (Amendment) Act, 2012; and the latest amendments made to the Patents
Act, 1970 in 2005. Besides, new legislations on geographical indications and plant varieties were also enacted. These are
called Geographical Indications of Goods (Registration and Protection) Act, 1999, and Protection of Plant Varieties and
Farmers’ Rights Act, 2001 respectively.

Over the past fifteen years, intellectual property rights have grown to a stature from where it plays a major
role in the development of global economy. In 1990s, many countries unilaterally strengthened their laws
and regulations in this area, and many others were poised to do likewise. At the multilateral level, the successful
conclusion of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in the World Trade
Organization elevates the protection and enforcement of IPRs to the level of solemn international commitment. It is
strongly felt that under the global competitive environment, stronger IPR protection increases incentives for innovation
and raises returns to international technology transfer.

What are Intellectual Property Rights?

 Intellectual property rights (IPR) are the rights given to persons over the creations of their minds: inventions,
literary and artistic works, and symbols, names and images used in commerce. They usually give the creator an
exclusive right over the use of his/her creation for a certain period of time.
 These rights are outlined in Article 27 of the Universal Declaration of Human Rights, which provides for the
right to benefit from the protection of moral and material interests resulting from authorship of scientific, literary
or artistic productions.
 The importance of intellectual property was first recognized in the Paris Convention for the Protection of
Industrial Property (1883) and the Berne Convention for the Protection of Literary and Artistic Works
(1886). Both treaties are administered by the World Intellectual Property Organization (WIPO).
Intellectual property rights are customarily divided into two main areas:
(i) Copyright and rights related to copyright:
 The rights of authors of literary and artistic works (such as books and other writings, musical compositions,
paintings, sculpture, computer programs and films) are protected by copyright, for a minimum period of 50
years after the death of the author.
(ii) Industrial property: Industrial property can be divided into two main areas:
 Protection of distinctive signs, in particular trademarks and geographical indications.

o Trademarks distinguish the goods or services of one undertaking from those of other undertakings.
o Geographical Indications (GIs) identify a good as originating in a place where a given characteristic of
the good is essentially attributable to its geographical origin.
o The protection of such distinctive signs aims to stimulate and ensure fair competition and to protect
consumers, by enabling them to make informed choices between various goods and services.
o The protection may last indefinitely, provided the sign in question continues to be distinctive.
 Industrial designs and trade secrets: Other types of industrial property are protected primarily to stimulate
innovation, design and the creation of technology. In this category fall inventions (protected
by patents), industrial designs and trade secrets.
What is the need of IPR?
The progress and well-being of humanity rest on its capacity to create and invent new works in the areas of technology
and culture.
 Encourages innovation: The legal protection of new creations encourages the commitment of additional
resources for further innovation.
  Economic growth: The promotion and protection of intellectual property spurs economic growth, creates new
jobs and industries, and enhances the quality and enjoyment of life.
 Safeguard the rights of creators: IPR is required to safeguard creators and other producers of their intellectual
commodity, goods and services by granting them certain time-limited rights to control the use made of the
manufactured goods.
 It promotes innovation and creativity and ensures ease of doing business.
 It facilitates the transfer of technology in the form of foreign direct investment, joint ventures and licensing.
India and IPR
 India is a member of the World Trade Organisation and committed to the Agreement on Trade Related Aspects
of Intellectual Property (TRIPS Agreement).
 India is also a member of World Intellectual Property Organization, a body responsible for the promotion of the
protection of intellectual property rights throughout the world.
 India is also a member of the following important WIPO-administered International Treaties and
Conventions relating to IPRs.

o Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of
Patent Procedure
o Paris Convention for the Protection of Industrial Property
o Convention Establishing the World Intellectual Property Organization
o Berne Convention for the Protection of Literary and Artistic Works
o Patent Cooperation Treaty
o Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks- Madrid
Protocol
o Washington Treaty on Intellectual Property in respect of Integrated Circuits
o Nairobi Treaty on the Protection of the Olympic Symbol
o Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their
Phonograms
o Marrakesh Treaty to facilitate Access to Published Works by Visually Impaired Persons and Persons with
Print Disabilities.
National IPR Policy
 The National Intellectual Property Rights (IPR) Policy 2016 was adopted in May 2016 as a vision document to
guide future development of IPRs in the country.
 It’s clarion call is “Creative India; Innovative India”.
 It encompasses and brings to a single platform all IPRs, taking into account all inter-linkages and thus aims to
create and exploit synergies between all forms of intellectual property (IP), concerned statutes and agencies.
 It sets in place an institutional mechanism for implementation, monitoring and review. It aims to incorporate
and adapt global best practices to the Indian scenario.
 Department of Industrial Policy & Promotion (DIPP), Ministry of Commerce, Government of India, has been
appointed as the nodal department to coordinate, guide and oversee the implementation and future development
of IPRs in India.
 The ‘Cell for IPR Promotion & Management (CIPAM)’, setup under the aegis of DIPP, is to be the single
point of reference for implementation of the objectives of the National IPR Policy.
 India’s IPR regime is in compliance with the WTO's agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS).
Objectives
 IPR Awareness: Outreach and Promotion - To create public awareness about the economic, social and cultural
benefits of IPRs among all sections of society.
 Generation of IPRs - To stimulate the generation of IPRs.
 Legal and Legislative Framework - To have strong and effective IPR laws, which balance the interests of rights
owners with larger public interest.
 Administration and Management - To modernize and strengthen service-oriented IPR administration.
 Commercialization of IPRs - Get value for IPRs through commercialization.
 Enforcement and Adjudication - To strengthen the enforcement and adjudicatory mechanisms for combating
IPR infringements.
 Human Capital Development - To strengthen and expand human resources, institutions and capacities for
teaching, training, research and skill building in IPRs.
Achievements under new IPR policy
 Improvement in GII Ranking: India’s rank in the Global Innovation Index (GII) issued by WIPO has
improved from 81st in 2015 to 52nd place in 2019.
 Strengthening of institutional mechanism regarding IP protection and promotion.
  Clearing Backlog/ Reducing Pendency in IP applications: Augmentation of technical manpower by the
government, has resulted in drastic reduction in pendency in IP applications.

o Automatic issuance of electronically generated patent and trademark certificates has also been
introduced.
 Increase in Patent and trademark Filings: Patent filings have increased by nearly 7% in the first 8 months of
2018-19 vis-à-vis the corresponding period of 2017-18. Trademark filings have increased by nearly 28% in this
duration.
 IP Process Re-engineering Patent Rules, 2003 have been amended to streamline processes and make them more
user friendly. Revamped Trade Marks Rules have been notified in 2017.
 Creating IPR Awareness: IPR Awareness programs have been conducted in academic institutions, including
rural schools through satellite communication, and for industry, police, customs and judiciary.
 Technology and Innovation Support Centres (TISCs): In conjunction with WIPO, TISCs have been
established in various institutions across different states.
Issues in India’s IPR regime
 Section 3(d) of the Indian Patent Act 1970 (as amended in 2005) does not allow patent to be granted to
inventions involving new forms of a known substance unless it differs significantly in properties with regard to
efficacy.

o This means that the Indian Patent Act does not allow evergreening of patents.
o This has been a cause of concern to the pharma companies. Section 3(d) was instrumental in the Indian
Patent Office (IPO) rejecting the patent for Novartis’ drug Glivec (imatinibmesylate).
 Issue of Compulsory licencing (CL): CL is problematic for foreign investors who bring technology as they are
concerned about the misuse of CL to replicate their products. It has been impacting India-EU FTA negotiations.

o CL is the grant of permission by the government to entities to use, manufacture, import or sell a
patented invention without the patent-owner’s consent. Patents Act in India deals with CL.
o CL is permitted under the WTO’s TRIPS (IPR) Agreement provided conditions such as ‘national
emergencies, other circumstances of extreme urgency and anti-competitive practices’ are fulfilled.
 India continues to remain on the United States Trade Representative's (USTR’s) ‘Priority Watch List’ for
alleged violations of intellectual property rights (IPR).

o In its latest Special 301 report released by the United States Trade Representative (USTR), the US
termed India as “one of the world’s most challenging major economies" with respect to protection and
enforcement of IP.
 Data Exclusivity: Foreign investors and MNCs allege that Indian law does not protect against unfair commercial
use of test data or other data submitted to the government during the application for market approval of
pharmaceutical or agro-chemical products. For this they demand a Data Exclusivity law.
 Enforcement of the Copyright act is weak, and piracy of copyrighted materials is widespread.
Way Forward
 Promoting an environment of innovations in schools. The academic curricula need to be rebooted.
 A proper resolution mechanism for resolving IPR related issues is needed.
 India will be unable to take full advantage of the transformative benefits of a strong IP system unless and until it
addresses gaps in its IP laws and regulations.
 Success of India’s flagship programmes - Make in India and Start up India - depends on the boost of
innovation ecosystem with better IPR safeguardings.

o More awareness is needed about the creation, protection and enforcement of IPRs to encourage the Indian
industry not only to innovate but also to protect and enforce their innovations.
Conclusion
 India has made a number of changes in its IPR regime to increase efficiency and has cut down the time required
to issue patents.The culture of innovation is taking centre stage in the country. India is well poised to focus on
R&D. This has been reflected in its improved ranking in Global Innovation Index over the years.
 Government’s effort to strengthen National IPR policy, IP appellate tribunal, e-governance and commitment to
abide by the TRIPS agreement of WTO in letter and spirit will help in improving perception of India globally.
 An efficient and equitable intellectual property system can help all countries to realize intellectual property’s
potential as a catalyst for economic development and social & cultural well-being.

Intellectual property and monopoly – Economic approaches;

1. Introduction At the beginning of this millennium, globalization is an important issue, and intellectual property has
become an essential part of global society, especially due to the fact that the world is moving towards a knowledge
economy. How it will be regulated and managed the production of knowledge, and access to this knowledge will
determine how well it will work this new economy and who will use it. The importance of intellectual property rights for
economic activity in a world that relies on innovation is obvious, but differs from country to country and depends
according to Promo Braga (1998), on one hand on the amount of resources that a country allocates for the creation of
intellectual assets, on the other hand on the amount of protected knowledge and information used in production and
consumption. Protection of intellectual property is considered part of economic policy, despite the fact that economic
theories concerning economic growth and development have ignored or considered it a minor.

2. IPR and the economic development Models and economic studies have obvious conclusions about the role of
intellectual property rights on economic development. As stressed by Keith Maskus (2000), the issue is complex, the
effectiveness of intellectual property rights in the development and growth depends on the circumstances of each country.
Severe systems of intellectual property protection can either stimulate or restrict growth. The effects on economic growth
and technological progress are positive only if they are structured in such a way as to promote competition.

A number of renowned economists, including Joseph Stiglitz (2008), believes that the differences between developed and
developing countries are not only resource gaps but also gaps in knowledge and information. Consequently, the success
of economic development will be to reduce this gap.

As in any research field or issue, there are controversies, contradictions in approaches, pluses and minuses, advantages
and disadvantages, and from this perspective policymakers, both at macroeconomic level of policies and microeconomic
level of firms, need to achieve a trade-off between costs and benefits. Costs arising from greater market power held by
one who has intellectual property, as well as the administrative costs of management and enforcement of these rights must
be outweighed by the benefits resulting from boosting investment in research, development and innovation. Intellectual
property regime, as part of the innovation system, aims to stimulate innovation by allowing innovators to restrict the use
of knowledge produced by imposing rewards in exchange for the use of that knowledge and thus offers the possibility of a
return on investment. But one should bear in mind that the innovation system contains other elements, too. There are
other ways to finance and produce research, eg universities and research laboratories.

According to Stiglitz (Stiglitz, 2008), the most important ideas have emerged in academics and were not protected by
patents, which allowed the use of those ideas and innovations for the benefit of the society. The innovation system is
based on research and basic research occurs mainly in universities and government-funded laboratories. According to
Stiglitz, cash rewards are a small part of what motivates researchers. It is obvious, however, that research must be funded
and the financial needs of research are huge, but Stiglitz believes that "research funding through monopoly profits is
neither efficient nor equitable".

Obviously, in the context of a market economy, an economy which is based on profit, companies must be compensated in
order to be stimulated to innovate. Research, development and innovation are expensive processes. Investing in R & D
and innovation results will imply further protection to give companies time to recover the investment made and to be
motivated to continue these investments.

Intellectual property protection system has two major economic goals: - to stimulate investment in knowledge creation
and innovation by establishing exclusive rights of use and exploitation of new technologies and products; absence of such
protection would allow competitors to use the results for free and would discourage companies to invest in research,
development and innovation; - widespread dissemination of new knowledge. Although intellectual property rights can
foster the acquisition and dissemination of new knowledge and information, this can be made at costs that are often very
high. Information and knowledge, intellectual creations have characteristics of public goods that are non-competitive, and
therefore it is difficult to exclude their use by others. Paul Samuelson has defined public good in 1954 as the good whose
consumption is non-competitive. The fact that it is consumed by someone, does not prevent someone else to consume it.
Knowledge and information have this quality. In other words, there is no marginal cost associated with the consumption
of knowledge and information. Unlike public goods, private goods are those that can be consumed by a single consumer.
From an economic perspective, it is socially efficient to provide broad access to new discoveries.

In a free market, where no intellectual property rights exist, new products and technologies could be easily multiplied at
marginal cost, which would benefit society. According to the concept of public good, it can be said that it is more
efficient to share knowledge freely to all, but to restrict their use by setting a price for the use. Between the two objectives
there should be a trade-off: an overprotected system will limit social gains by limiting the dissemination and use of
results; a weak protection system will reduce innovation due to the lack of an adequate return on investment. The
efficiency in the use of knowledge and information can be addressed statically and dynamically.

From a static point of view, to effectively use knowledge and information would require their free distribution. Providing
temporary exclusive rights through intellectual property rights (IPR) will lead to pricing above marginal cost and a return
on investment made in R & D and innovation. From this point of view, IPR introduce inefficiency in use, distortions, the
most problematic of which is the creation of monopoly power. Monopoly leads to both inequalities in consumption and
distortions in resource allocation. On the other hand, the free distribution of knowledge and information would create
problems in stimulating innovation and here comes the dynamic efficiency. Therefore, the legal system includes on the
one hand intellectual proprietary rights system, on the other hand the anti-trust system to limit abuses of monopoly power.
Between competition policy and intellectual property related policies must strike a balance: Competition Policy envisages
improving consumer welfare by constraining the behavior of companies that have market power; intellectual property
rights confer some monopoly power to those who hold these rights. (Dixon, Greenlagh, 2002).

Although intellectual property rights are promoted as means of achieving economic efficiency, they actually materialize
in static inefficiency that can be justified only by the dynamic efficiency. Stiglitz (Stiglitz, 2008) demonstrated that often
static inefficiency is higher than expected and dynamic benefits lower. Theoretical tensions created between incentives
and access what concerns the economic analysis of intellectual property rights are arising in Posner's view (Posner, 2005),
from the high ratio of fixed to variable costs of intellectual property. Knowledge production costs are high but don’t
depend on result, which gives the status of fixed costs, in contrast to variable costs such as those related to providing
products and technologies to consumers and are small relative to the fixed ones. The alternatives to solve this tension are
represented by a financial system that rewards creators of intellectual property (such as government subsidies) and by a
limited system of property rights (such as patents and copywrites) that allows the exclusion of others to access without
authorization of the author (exclusion is not so complete as in the case of physical property).

A reward system provides incentives and access simultaneously: the creator of intellectual property is compensated for
the costs of creation, but as there is no right to exclude others, the competition will bring price down to marginal cost. The
problem is to compute the optimal reward. The danger lies in the possibility of politicization of this reward system. The
intellectual property rights system can generate a return on investment that exceeds the cost of creation and thus
unnecessarily restrict access to the results of creation. Economists do not yet have an answer regarding the social utility of
protecting intellectual property systems in view of the existence of other incentives for creating intellectual property . Any
way to generate funds for innovation has a social cost (Stiglitz, 2008). When creating a monopoly by offering intellectual
property rights, the funds are obtained from the difference between price and marginal cost.

3. IPR, Market power and Monopoly behaviour Intellectual property rights as patents, copywrite, licenses, trademarks,
etc., provide market power for firms and create barriers to entry in the industry, restricting competition. Companies
holding intellectual property rights may reduce production and sales generating higher monopoly prices for the consumer.
Market power and competition are two forces acting on most markets. The market power is the ability to influence the
market, in particular to influence the price. In a market with perfect competition, firms do not have market power.

They face stiff competition. At the other extreme is monopoly, which has strong market power and faces no competition.
The majority of real markets are competitive, but the competition is not as fierce as in the case of perfect competition,
since in these markets, firms have some market power, but the power is not as strong as in the case of monopoly. Such
markets are neither perfect competition nor monopoly, can be characterized either by monopolistic competition or by
oligopolistic competition. The theory of market power considers the perfect competition model as a reference point for
assessing the performance of a market. Deviation from the model of perfect competition suppresses the certainty of Pareto
optimum: depending on the type of imperfection, the selling price will be higher, the quantity produced will decrease and
profits will be generated. This theory states that the existence of a small number of firms in an industry facilitates formal
or tacit agreements, causing excess profits, which is the result of a weak competitive markets. The standard model of
Arrow-Debreu competitive equilibrium (Arrow, Debreu, 1954) has the fundamental assumption that technology is fixed,
so it ignores innovation. Joseph Schumpeter, in "Capitalism, Socialism and Democracy" published in 1942, has the merit
of highlighting the insufficiency of competition theory and the need to develop other theories. Schumpeter emphasizes
innovation and believes that competition for innovation creates temporary monopolies. ParthaDasgupta and Joseph
Stiglitz in "Uncertainty, Industrial Structure and the Speed of R & D" (Bell Journal of Economics, 1980) consider that
Schumpeter is wrong stating that the monopoly will be temporary. They argue that monopoly power is easily perpetuated
once installed. Not only is it possible, but there is motivation to be perpetuated. For Schumpeter, the principle of
competition, as it lies in neoclassical theory is a principle which excludes the company strategy. In fact, competition
provides as freedom of action the opportunity to enter a market and become subject to terms of market structure and
cancels any possibility of the entrepreneur to influence the market. This is the myth of static equality.

To consider perfect competition as a static equilibrium is excluding, paradoxically, all competitive behavior of firms. The
perfect competition means the absence of any competing activities. Schumpeter emphasized the need to reintroduce
strategy in competition analysis. This means to reconsider the company and its freedom to take risks, to innovate and to
reap the benefits of innovation products. This new vision of competition does not deny that there is a tendency towards
equilibrium, but rather puts the emphasis on a process to achieve a steady evolution towards a goal that is changing as
new ideas, new discoveries, new information influences needs, technologies and accessibility to new resources.
Competitive capitalist markets are subject to creative destruction, since any tendency toward equilibrium is broken
continuously by the innovations produced in the market. The need to take into account the market opportunities becomes
an essential element in a dynamic view of competition. The role of the entrepreneur proves to be key, while it is absent in
the neoclassical model whereas a perfect information excludes any opportunity. If we consider competition as a dynamic
process and if want to study its evolution over time for a given market, it will be impossible to ignore the changes in the
behavior of entrepreneurs and therefore business strategies that are implemented. Managerial revolution gives us from
this point of view an interesting perspective of the historical evolution of the competitive process. Managerial revolution
contributed to reconsideration of competition as a dynamic process. The entrepreneur does not act in a manner to
maximize an objective function under certain exogenous restrictive conditions as stated in neoclassical theory. On the
contrary, through a process of interaction with the environment, the entrepreneur develops new methods of production
and offers new products in response to a specific situation. Despite its exceptional social and political significance,
monopoly has never occupied a secure niche in the economic theory. 'Early' economists, impressed by the predominance
of free competition and small enterprises, regarded monopolies as isolated phenomena.

The development in the U.S., UK, Germany of large chemical plants, petroleum, steel, cement, did not stimulated too
much the examination of large enterprises. Schumpeter's message makes clear that generating economic welfare in terms
of material goods, or economic growth is closely linked to technological success, the size of large firms and even
frequently to restrictions in competition. Therefore, in the 30s, outside fiscal policy issues and unemployment, no other
issue has attracted much attention as a monopoly. There was a time when economists were looking for an explanation of
the crisis of capitalist society. The first step in this area was done in 1926 by PieroSraffa (in the article "The laws of
returns under competitive conditions'). He believes that the monopoly (which is not free competition) is the best market
hypothesis theory. In the years 1932 to 1933, Joan Robinson and Edward Chamberlin wrote two books that have revived
interest in monopoly. The first was based more on ideas of Sraffa, the second has a more independent genesis. Monopoly
is a market structure characterized by a firm that produces a differentiated product in a market with significant barriers to
entry. Since there are close substitutes, the demand curve of a monopolist will have a pronounced negative slope (more
pronounced as in the case of monopolistic competition). Monopoly is the extreme opposite of perfect competition. As
perfectly competitive market structures are rare, pure monopoly markets are rare.

All goods and services have more or less close substitutes. The more distant the substitutes are, the closer the market is to
pure monopoly. Why a monopoly has no competitors? Where does the market power of the monopoly come from? There
are various power sources of various kinds: technological, legal, social, economic, political. They create barriers to entry
that stop other firms to enter the market. Among the main power sources we mention a few: • Patent or copyright.
Owning a patent or a copyright prevents other firms producing the same product. It is a legal barrier for a number of years
during which the company may have monopoly status. To encourage research, governments offer technological
innovation patent. • License or franchise. If a company obtains a license or franchise to be the only manufacturer in a
certain area, for example, it will have a monopoly position. Among the sources of market power that we don’t explain in
details are: economies of scale and scope, control of critical resources, regulations, product differentiation, barriers to exit.
Monopoly may obtain economic profits and the existence of barriers to entry will prevent other firms from entering the
market. Monopoly profits persist as long as they keep their market power.

4. Conclusions Economic theory demonstrates that intellectual property rights can play a role either positive or negative
on economic growth and development. The relationship is basically positive, but dependent on other factors that promote
the benefits of intellectual property protection. Intellectual property protection systems should be based on market
economy mechanisms and overcome the problems imposed by the creation and dissemination of information. But we
have to manage the issues that arise in relation to the social costs and competitive abuses.

Constitutional and Human Rights Dimensions of Intellectual Property –

Intellectual Property and India has a good long history dating back to the ancient years of Indus Valley Civilization.
Evidences show that in the Ancient Era, especially during the Indus Valley Civilization era, activities of town planning,
entertainment industries, musical industry and others were highly prevailing and also trademarks have been also used to
differentiate the products of the producers from one from another. If we take a look at the present scenario, Intellectual
Property like trademarks, are used mainly by every market competitors to differentiate ones product from another. So it is
safe to say that the idea to protect one’s product or service from another has been prevailing since the ancient times in
India. Intellectual Property Law was first brought to mainstream in India by the British Empire by implementing the
British Patent Act, 1852 when an applicant named George A. DePennings made the first application for a patent in India
in the year of 1856, which subsequently gave effect in the making of the Act VI of 1856[1]. The recognition of
Intellectual Property as a property by the Indian Constitution is vague and unambiguous. The Constitution of India does
not openly declare an Intellectual Property as a property but at the same time it also does not reject the same.

The Indian constitution in its preamble permits mixed economy system and recognises the economic liberty as one of the
most important liberty. This has been ensured through property system. If the term “property” used in the Indian
Constitution is analysed it may mean any tangible property but it has a wider concept. Though, it absolutely includes
intellectual property but indirectly. There was a time when “Right to Property” was a fundamental right enshrined in the
Indian Constitution under Article 19 (f) but later it was substituted through the 44 th amendment. However the substitution
of Article 19 (f) didn’t mean the end of “Right to Property”, the insertion of another Article i.e. Article 300A through the
44th Amendment, changed it to a Constitutional right from fundamental right and due to this change any legislation
violating the constitutional “Right to Property” could now be challenged only in High Courts and not directly in the
Supreme Court. However, Intellectual Property as a form of property can be put under Article 300A dealing with property
and be entitled to a legal right. Unlike the Indian Constitution, the United States Constitution specifically protects the
Intellectual Property (Article 1(8) of the U.S. Constitutions which provides “To promote the progress of science and
useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and
discoveries”). However, there is no such Intellectual Property clause in the Indian Constitution. While this means that
Intellectual Property does not have special Constitutional status, it also means that there are no Constitutional restrictions
on the power to make laws on Intellectual Property. Article 300A of the Indian Constitution provides constitutional
safeguards against unlawful deprivation of property it is Article 253 that plays an important role in the context of
Intellectual Property Rights as it mandates the recognition of the international aspect of laws, legislations, and agreements
and empowers the Indian parliament to enforce the international treaties through law making process. Certain provision in
Article 372 also validates the pre-constitutional law subject to certain condition laid down in the provisions. For instance:
Article 372 (1) states that: “Nothing withstanding the repeal……………all the laws in force in the territory of India
immediately before the commencement of this constitution shall continue in force therein until altered or repealed or
amended by a competent legislature or other competent authority”.

Thus due to the presence of these Articles it became possible for the pre-constitutional Intellectual Property Rights laws
to be in force in India and the adoption of various International treaties on Intellectual Property laws by the Indian
legislation. For example, the repealing of 1911 Patent Act and the passage of new Patent Act, 1970 was due to Article 372
(1) of the Indian Constitution which authorizes the legislature or any competent body to repeal, alter or amend the pre-
constitutional laws. Also, majority of the present Intellectual Property laws are influenced by the international laws, such
as the present patent laws is the result of various international instrument like Budapest treaty, TRIPS agreement, UN
convention on Biodiversity and others.

Article 31A protected the legislations providing for acquisition of estate or any right therein or their modification on the
ground that it took away or abridged any of the rights conferred by Part III of the Constitution. Article 31B restricted the
scope for challenge on the plea of violation of fundamental rights. Intellectual Property, in its literal sense, means the
things manifested from the exercise of the human brain, a product emerging out of the Intellectual labour of a human
being. The two chief items are the writings of authors, and inventions made by the inventors. In its broadest sense, the
term “Intellectual Property” includes ideas, concepts know-how, and other creative abstractions, and also, the literary,
artistic, or mechanical expressions that embody such abstractions.

The basic difference between this form of property and other forms is that, in Intellectual Property the focus is on the
produce of the mind, and not on the product itself. For example, in literary property (copy right) it is not the book which
is termed property, but the intellectual creation, which comprises ideas, conceptions, sentiments, thought etc, fixed in a
particular form that is considered property for protection. Traditionally only a few items were included in the category of
Intellectual Property. At present, generally copyright, designs, patents, and trade mark are classified as Intellectual
Property. But by the development of arts, science and technology, many new items have been included in this category.

Further, the mention of Intellectual Property system in the Entries of the Indian Constitutional further provide us with
clues that Intellectual Property is indeed recognized by the Indian Constitution. Entry 12, 13, 14 has been rightly included
in the List 1 of the 7 th Schedule of the Indian Constitution. Entry 49 of List I happens to be the specific one which has
been totally and exclusively devoted to intellectual property system. Entry 49 recognizes only patents designs, copyright,
trademarks and others. However, it does not recognize the concept of traditional knowledge, biodiversity, geographical
indications and others but these categories of intellectual property rights can be included within the existing one. If we
look into entry 97 of List I which read as follows “any other matter not enumerated in List II or List III including any tax
not mentioned in either of those Lists” and Article 248 reads as “parliament has exclusive power to make any law with
respect to any matter not enumerated in the concurrent List or State List”. Thus, it is safe to assume that Traditional
knowledge can be included among other Intellectual Properties and are recognized by the Indian Constitution as
Intellectual property.

Conclusion
The Constitution of India provides the necessary safeguard to protect the right to property in general and the agricultural
property in particular[2]. For example, The Protection of Plant Varieties and Farmers Right Act, 2001 is framed to make
available a number of special safeguard measures to protect and promote the interests of the farmers in order to encourage
the accelerated growth of the agricultural sector which will ultimately result into the overall growth of the Indian
economy. Also the Biodiversity Act, 2002 is framed to provide safeguards to various biological resources like “plants,
animals and micro-organisms and their genetic material and by-products (excluding value added products) with actual or
potential use or value, but not human genetic material against being misused and other unfair commercial or non-
commercial activities. In general it is enacted to protect against bio-piracy[3]. A case of such bio-piracy occurred when
the US Patent Office granted the patent (Patent No. 5, 401 and 504) for turmeric to two expatriate Indians at University of
Mississippi Medical Centre in 1995 which was subsequently challenged by the Indian Council for Scientific and
Industrial Research (CSIR) on the ground of “prior art” or “existing public knowledge”[4]. Although, the CSIR won their
battle, this incident shows how traditional knowledge is vulnerable to bio-piracy and thus the need to protect it has grown
increasingly.
[1] History of Indian Patent System, available on the official website of Intellectual Property India.
Link: http://www.ipindia.nic.in/history-of-indian-patent-system.htm
[2] Article 300A and Article 31A.
[3] Section 2 of Bio-Diversity Act, 2002.
[4] Daima, Dinesh. “Class on Trade Mark Law and Traditional Knowledge”.National Law University, Assam, Guwahati.
5th November, 2016. Class Lecture.

TRIPs and its impact on India – World Intellectual Property Organization –

The areas of intellectual property that it covers are: copyright and related rights (i.e. the rights of performers, producers of
sound recordings and broadcasting organizations); trademarks including service marks; geographical
indications including appellations of origin; industrial designs; patents including the protection of new varieties of plants;
the layout-designs of integrated circuits; and undisclosed information including trade secrets and test data.
The three main features of the Agreement are:

 Standards. In respect of each of the main areas of intellectual property covered by the TRIPS Agreement, the
Agreement sets out the minimum standards of protection to be provided by each Member. Each of the main
elements of protection is defined, namely the subject-matter to be protected, the rights to be conferred and
permissible exceptions to those rights, and the minimum duration of protection. The Agreement sets these
standards by requiring, first, that the substantive obligations of the main conventions of the WIPO, the Paris
Convention for the Protection of Industrial Property (Paris Convention) and the Berne Convention for the
Protection of Literary and Artistic Works (Berne Convention) in their most recent versions, must be complied
with. With the exception of the provisions of the Berne Convention on moral rights, all the main substantive
provisions of these conventions are incorporated by reference and thus become obligations under the TRIPS
Agreement between TRIPS Member countries. The relevant provisions are to be found in Articles 2.1 and 9.1
of the TRIPS Agreement, which relate, respectively, to the Paris Convention and to the Berne Convention.
Secondly, the TRIPS Agreement adds a substantial number of additional obligations on matters where the pre-
existing conventions are silent or were seen as being inadequate. The TRIPS Agreement is thus sometimes
referred to as a Berne and Paris-plus agreement.

 Enforcement. The second main set of provisions deals with domestic procedures and remedies for the
enforcement of intellectual property rights. The Agreement lays down certain general principles applicable to
all IPR enforcement procedures. In addition, it contains provisions on civil and administrative procedures and
remedies, provisional measures, special requirements related to border measures and criminal procedures,
which specify, in a certain amount of detail, the procedures and remedies that must be available so that right
holders can effectively enforce their rights.

 Dispute settlement. The Agreement makes disputes between WTO Members about the respect of the TRIPS
obligations subject to the WTO's dispute settlement procedures.

In addition the Agreement provides for certain basic principles, such as national and most-favoured-nation treatment, and
some general rules to ensure that procedural difficulties in acquiring or maintaining IPRs do not nullify the substantive
benefits that should flow from the Agreement. The obligations under the Agreement will apply equally to all Member
countries, but developing countries will have a longer period to phase them in. Special transition arrangements operate in
the situation where a developing country does not presently provide product patent protection in the area of
pharmaceuticals.
The TRIPS Agreement is a minimum standards agreement, which allows Members to provide more extensive protection
of intellectual property if they so wish. Members are left free to determine the appropriate method of implementing the
provisions of the Agreement within their own legal system and practice.
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Certain general provisions
As in the main pre-existing intellectual property conventions, the basic obligation on each Member country is to accord
the treatment in regard to the protection of intellectual property provided for under the Agreement to the persons of other
Members. Article 1.3 defines who these persons are. These persons are referred to as “nationals” but include persons,
natural or legal, who have a close attachment to other Members without necessarily being nationals. The criteria for
determining which persons must thus benefit from the treatment provided for under the Agreement are those laid down
for this purpose in the main pre-existing intellectual property conventions of WIPO, applied of course with respect to all
WTO Members whether or not they are party to those conventions. These conventions are the Paris Convention, the
Berne Convention, International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting
Organizations (Rome Convention), and the Treaty on Intellectual Property in Respect of Integrated Circuits (IPIC Treaty).
Articles 3, 4 and 5 include the fundamental rules on national and most-favoured-nation treatment of foreign nationals,
which are common to all categories of intellectual property covered by the Agreement. These obligations cover not only
the substantive standards of protection but also matters affecting the availability, acquisition, scope, maintenance and
enforcement of intellectual property rights as well as those matters affecting the use of intellectual property rights
specifically addressed in the Agreement. While the national treatment clause forbids discrimination between a Member's
own nationals and the nationals of other Members, the most-favoured-nation treatment clause forbids discrimination
between the nationals of other Members. In respect of the national treatment obligation, the exceptions allowed under the
pre-existing intellectual property conventions of WIPO are also allowed under TRIPS. Where these exceptions allow
material reciprocity, a consequential exception to MFN treatment is also permitted (e.g. comparison of terms for
copyright protection in excess of the minimum term required by the TRIPS Agreement as provided under Article 7(8) of
the Berne Convention as incorporated into the TRIPS Agreement). Certain other limited exceptions to the MFN
obligation are also provided for.
The general goals of the TRIPS Agreement are contained in the Preamble of the Agreement, which reproduces the basic
Uruguay Round negotiating objectives established in the TRIPS area by the 1986 Punta del Este Declaration and the
1988/89 Mid-Term Review. These objectives include the reduction of distortions and impediments to international trade,
promotion of effective and adequate protection of intellectual property rights, and ensuring that measures and procedures
to enforce intellectual property rights do not themselves become barriers to legitimate trade. These objectives should be
read in conjunction with Article 7, entitled “Objectives”, according to which the protection and enforcement of
intellectual property rights should contribute to the promotion of technological innovation and to the transfer and
dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner
conducive to social and economic welfare, and to a balance of rights and obligations. Article 8, entitled “Principles”,
recognizes the rights of Members to adopt measures for public health and other public interest reasons and to prevent the
abuse of intellectual property rights, provided that such measures are consistent with the provisions of the TRIPS
Agreement.

Substantive standards of protection

Copyright
During the Uruguay Round negotiations, it was recognized that the Berne Convention already, for the most part, provided
adequate basic standards of copyright protection. Thus it was agreed that the point of departure should be the existing
level of protection under the latest Act, the Paris Act of 1971, of that Convention. The point of departure is expressed in
Article 9.1 under which Members are obliged to comply with the substantive provisions of the Paris Act of 1971 of the
Berne Convention, i.e. Articles 1 through 21 of the Berne Convention (1971) and the Appendix thereto. However,
Members do not have rights or obligations under the TRIPS Agreement in respect of the rights conferred under Article
6bis of that Convention, i.e. the moral rights (the right to claim authorship and to object to any derogatory action in
relation to a work, which would be prejudicial to the author's honour or reputation), or of the rights derived therefrom.
The provisions of the Berne Convention referred to deal with questions such as subject-matter to be protected, minimum
term of protection, and rights to be conferred and permissible limitations to those rights. The Appendix allows developing
countries, under certain conditions, to make some limitations to the right of translation and the right of reproduction.
In addition to requiring compliance with the basic standards of the Berne Convention, the TRIPS Agreement clarifies and
adds certain specific points.
Article 9.2 confirms that copyright protection shall extend to expressions and not to ideas, procedures, methods of
operation or mathematical concepts as such.
Article 10.1 provides that computer programs, whether in source or object code, shall be protected as literary works under
the Berne Convention (1971). This provision confirms that computer programs must be protected under copyright and
that those provisions of the Berne Convention that apply to literary works shall be applied also to them. It confirms
further, that the form in which a program is, whether in source or object code, does not affect the protection. The
obligation to protect computer programs as literary works means e.g. that only those limitations that are applicable to
literary works may be applied to computer programs. It also confirms that the general term of protection of 50 years
applies to computer programs. Possible shorter terms applicable to photographic works and works of applied art may not
be applied.
Article 10.2 clarifies that databases and other compilations of data or other material shall be protected as such under
copyright even where the databases include data that as such are not protected under copyright. Databases are eligible for
copyright protection provided that they by reason of the selection or arrangement of their contents constitute intellectual
creations. The provision also confirms that databases have to be protected regardless of which form they are in, whether
machine readable or other form. Furthermore, the provision clarifies that such protection shall not extend to the data or
material itself, and that it shall be without prejudice to any copyright subsisting in the data or material itself.
Article 11 provides that authors shall have in respect of at least computer programs and, in certain circumstances, of
cinematographic works the right to authorize or to prohibit the commercial rental to the public of originals or copies of
their copyright works. With respect to cinematographic works, the exclusive rental right is subject to the so-called
impairment test: a Member is excepted from the obligation unless such rental has led to widespread copying of such
works which is materially impairing the exclusive right of reproduction conferred in that Member on authors and their
successors in title. In respect of computer programs, the obligation does not apply to rentals where the program itself is
not the essential object of the rental.
According to the general rule contained in Article 7(1) of the Berne Convention as incorporated into the TRIPS
Agreement, the term of protection shall be the life of the author and 50 years after his death. Paragraphs 2 through 4 of
that Article specifically allow shorter terms in certain cases. These provisions are supplemented by Article 12 of the
TRIPS Agreement, which provides that whenever the term of protection of a work, other than a photographic work or a
work of applied art, is calculated on a basis other than the life of a natural person, such term shall be no less than 50 years
from the end of the calendar year of authorized publication, or, failing such authorized publication within 50 years from
the making of the work, 50 years from the end of the calendar year of making.
Article 13 requires Members to confine limitations or exceptions to exclusive rights to certain special cases which do not
conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right
holder. This is a horizontal provision that applies to all limitations and exceptions permitted under the provisions of the
Berne Convention and the Appendix thereto as incorporated into the TRIPS Agreement. The application of these
limitations is permitted also under the TRIPS Agreement, but the provision makes it clear that they must be applied in a
manner that does not prejudice the legitimate interests of the right holder.
Related rights
The provisions on protection of performers, producers of phonograms and broadcasting organizations are included in
Article 14. According to Article 14.1, performers shall have the possibility of preventing the unauthorized fixation of their
performance on a phonogram (e.g. the recording of a live musical performance). The fixation right covers only aural, not
audiovisual fixations. Performers must also be in position to prevent the reproduction of such fixations. They shall also
have the possibility of preventing the unauthorized broadcasting by wireless means and the communication to the public
of their live performance.
In accordance with Article 14.2, Members have to grant producers of phonograms an exclusive reproduction right. In
addition to this, they have to grant, in accordance with Article 14.4, an exclusive rental right at least to producers of
phonograms. The provisions on rental rights apply also to any other right holders in phonograms as determined in
national law. This right has the same scope as the rental right in respect of computer programs. Therefore it is not subject
to the impairment test as in respect of cinematographic works. However, it is limited by a so-called grand-fathering
clause, according to which a Member, which on 15 April 1994, i.e. the date of the signature of the Marrakesh Agreement,
had in force a system of equitable remuneration of right holders in respect of the rental of phonograms, may maintain
such system provided that the commercial rental of phonograms is not giving rise to the material impairment of the
exclusive rights of reproduction of right holders.
Broadcasting organizations shall have, in accordance with Article 14.3, the right to prohibit the unauthorized fixation, the
reproduction of fixations, and the rebroadcasting by wireless means of broadcasts, as well as the communication to the
public of their television broadcasts. However, it is not necessary to grant such rights to broadcasting organizations, if
owners of copyright in the subject-matter of broadcasts are provided with the possibility of preventing these acts, subject
to the provisions of the Berne Convention.
The term of protection is at least 50 years for performers and producers of phonograms, and 20 years for broadcasting
organizations (Article 14.5).
Article 14.6 provides that any Member may, in relation to the protection of performers, producers of phonograms and
broadcasting organizations, provide for conditions, limitations, exceptions and reservations to the extent permitted by the
Rome Convention.
Trademarks
The basic rule contained in Article 15 is that any sign, or any combination of signs, capable of distinguishing the goods
and services of one undertaking from those of other undertakings, must be eligible for registration as a trademark,
provided that it is visually perceptible. Such signs, in particular words including personal names, letters, numerals,
figurative elements and combinations of colours as well as any combination of such signs, must be eligible for
registration as trademarks.
Where signs are not inherently capable of distinguishing the relevant goods or services, Member countries are allowed to
require, as an additional condition for eligibility for registration as a trademark, that distinctiveness has been acquired
through use. Members are free to determine whether to allow the registration of signs that are not visually perceptible
(e.g. sound or smell marks).
Members may make registrability depend on use. However, actual use of a trademark shall not be permitted as a condition
for filing an application for registration, and at least three years must have passed after that filing date before failure to
realize an intent to use is allowed as the ground for refusing the application (Article 14.3).
The Agreement requires service marks to be protected in the same way as marks distinguishing goods (see e.g. Articles
15.1, 16.2 and 62.3).
The owner of a registered trademark must be granted the exclusive right to prevent all third parties not having the owner's
consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to
those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of
the use of an identical sign for identical goods or services, a likelihood of confusion must be presumed (Article 16.1).
The TRIPS Agreement contains certain provisions on well-known marks, which supplement the protection required by
Article 6bis of the Paris Convention, as incorporated by reference into the TRIPS Agreement, which obliges Members to
refuse or to cancel the registration, and to prohibit the use of a mark conflicting with a mark which is well known. First,
the provisions of that Article must be applied also to services. Second, it is required that knowledge in the relevant sector
of the public acquired not only as a result of the use of the mark but also by other means, including as a result of its
promotion, be taken into account. Furthermore, the protection of registered well-known marks must extend to goods or
services which are not similar to those in respect of which the trademark has been registered, provided that its use would
indicate a connection between those goods or services and the owner of the registered trademark, and the interests of the
owner are likely to be damaged by such use (Articles 16.2 and 3).
Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms,
provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties
(Article 17).
Initial registration, and each renewal of registration, of a trademark shall be for a term of no less than seven years. The
registration of a trademark shall be renewable indefinitely (Article 18).
Cancellation of a mark on the grounds of non-use cannot take place before three years of uninterrupted non-use has
elapsed unless valid reasons based on the existence of obstacles to such use are shown by the trademark owner.
Circumstances arising independently of the will of the owner of the trademark, such as import restrictions or other
government restrictions, shall be recognized as valid reasons of non-use. Use of a trademark by another person, when
subject to the control of its owner, must be recognized as use of the trademark for the purpose of maintaining the
registration (Article 19).
It is further required that use of the trademark in the course of trade shall not be unjustifiably encumbered by special
requirements, such as use with another trademark, use in a special form, or use in a manner detrimental to its capability to
distinguish the goods or services (Article 20).
Geographical indications
Geographical indications are defined, for the purposes of the Agreement, as indications which identify a good as
originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other
characteristic of the good is essentially attributable to its geographical origin (Article 22.1). Thus, this definition specifies
that the quality, reputation or other characteristics of a good can each be a sufficient basis for eligibility as a geographical
indication, where they are essentially attributable to the geographical origin of the good.
In respect of all geographical indications, interested parties must have legal means to prevent use of indications which
mislead the public as to the geographical origin of the good, and use which constitutes an act of unfair competition within
the meaning of Article 10bis of the Paris Convention (Article 22.2).
The registration of a trademark which uses a geographical indication in a way that misleads the public as to the true place
of origin must be refused or invalidated ex officio if the legislation so permits or at the request of an interested party
(Article 22.3).
Article 23 provides that interested parties must have the legal means to prevent the use of a geographical indication
identifying wines for wines not originating in the place indicated by the geographical indication. This applies even where
the public is not being misled, there is no unfair competition and the true origin of the good is indicated or the
geographical indication is accompanied be expressions such as “kind”, “type”, “style”, “imitation” or the like. Similar
protection must be given to geographical indications identifying spirits when used on spirits. Protection against
registration of a trademark must be provided accordingly.
Article 24 contains a number of exceptions to the protection of geographical indications. These exceptions are of
particular relevance in respect of the additional protection for geographical indications for wines and spirits. For example,
Members are not obliged to bring a geographical indication under protection, where it has become a generic term for
describing the product in question (paragraph 6). Measures to implement these provisions shall not prejudice prior
trademark rights that have been acquired in good faith (paragraph 5). Under certain circumstances, continued use of a
geographical indication for wines or spirits may be allowed on a scale and nature as before (paragraph 4). Members
availing themselves of the use of these exceptions must be willing to enter into negotiations about their continued
application to individual geographical indications (paragraph 1). The exceptions cannot be used to diminish the protection
of geographical indications that existed prior to the entry into force of the TRIPS Agreement (paragraph 3). The TRIPS
Council shall keep under review the application of the provisions on the protection of geographical indications (paragraph
2).
Industrial designs
Article 25.1 of the TRIPS Agreement obliges Members to provide for the protection of independently created industrial
designs that are new or original. Members may provide that designs are not new or original if they do not significantly
differ from known designs or combinations of known design features. Members may provide that such protection shall
not extend to designs dictated essentially by technical or functional considerations.
Article 25.2 contains a special provision aimed at taking into account the short life cycle and sheer number of new designs
in the textile sector: requirements for securing protection of such designs, in particular in regard to any cost, examination
or publication, must not unreasonably impair the opportunity to seek and obtain such protection. Members are free to
meet this obligation through industrial design law or through copyright law.
Article 26.1 requires Members to grant the owner of a protected industrial design the right to prevent third parties not
having the owner's consent from making, selling or importing articles bearing or embodying a design which is a copy, or
substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.
Article 26.2 allows Members to provide limited exceptions to the protection of industrial designs, provided that such
exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not
unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate
interests of third parties.
The duration of protection available shall amount to at least 10 years (Article 26.3). The wording “amount to” allows the
term to be divided into, for example, two periods of five years.
Patents
The TRIPS Agreement requires Member countries to make patents available for any inventions, whether products or
processes, in all fields of technology without discrimination, subject to the normal tests of novelty, inventiveness and
industrial applicability. It is also required that patents be available and patent rights enjoyable without discrimination as to
the place of invention and whether products are imported or locally produced (Article 27.1).
There are three permissible exceptions to the basic rule on patentability. One is for inventions contrary to ordre public or
morality; this explicitly includes inventions dangerous to human, animal or plant life or health or seriously prejudicial to
the environment. The use of this exception is subject to the condition that the commercial exploitation of the invention
must also be prevented and this prevention must be necessary for the protection of ordre public or morality (Article 27.2).
The second exception is that Members may exclude from patentability diagnostic, therapeutic and surgical methods for
the treatment of humans or animals (Article 27.3(a)).
The third is that Members may exclude 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, any
country excluding plant varieties from patent protection must provide an effective sui generis system of protection.
Moreover, the whole provision is subject to review four years after entry into force of the Agreement (Article 27.3(b)).
The exclusive rights that must be conferred by a product patent are the ones of making, using, offering for sale, selling,
and importing for these purposes. Process patent protection must give rights not only over use of the process but also over
products obtained directly by the process. Patent owners shall also have the right to assign, or transfer by succession, the
patent and to conclude licensing contracts (Article 28).
Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do
not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate
interests of the patent owner, taking account of the legitimate interests of third parties (Article 30).
The term of protection available shall not end before the expiration of a period of 20 years counted from the filing date
(Article 33).
Members shall require that an applicant for a patent shall disclose the invention in a manner sufficiently clear and
complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best
mode for carrying out the invention known to the inventor at the filing date or, where priority is claimed, at the priority
date of the application (Article 29.1).
If the subject-matter of a patent is a process for obtaining a product, the judicial authorities shall have the authority to
order the defendant to prove that the process to obtain an identical product is different from the patented process, where
certain conditions indicating a likelihood that the protected process was used are met (Article 34).
Compulsory licensing and government use without the authorization of the right holder are allowed, but are made subject
to conditions aimed at protecting the legitimate interests of the right holder. The conditions are mainly contained in
Article 31. These include the obligation, as a general rule, to grant such licences only if an unsuccessful attempt has been
made to acquire a voluntary licence on reasonable terms and conditions within a reasonable period of time; the
requirement to pay adequate remuneration in the circumstances of each case, taking into account the economic value of
the licence; and a requirement that decisions be subject to judicial or other independent review by a distinct higher
authority. Certain of these conditions are relaxed where compulsory licences are employed to remedy practices that have
been established as anticompetitive by a legal process. These conditions should be read together with the related
provisions of Article 27.1, which require that patent rights shall be enjoyable without discrimination as to the field of
technology, and whether products are imported or locally produced.
Layout-designs of integrated circuits
Article 35 of the TRIPS Agreement requires Member countries to protect the layout-designs of integrated circuits in
accordance with the provisions of the IPIC Treaty (the Treaty on Intellectual Property in Respect of Integrated Circuits),
negotiated under the auspices of WIPO in 1989. These provisions deal with, inter alia, the definitions of “integrated
circuit” and “layout-design (topography)”, requirements for protection, exclusive rights, and limitations, as well as
exploitation, registration and disclosure. An “integrated circuit” means a product, in its final form or an intermediate
form, in which the elements, at least one of which is an active element, and some or all of the interconnections are
integrally formed in and/or on a piece of material and which is intended to perform an electronic function. A “layout-
design (topography)” is defined as the three-dimensional disposition, however expressed, of the elements, at least one of
which is an active element, and of some or all of the interconnections of an integrated circuit, or such a three-dimensional
disposition prepared for an integrated circuit intended for manufacture. The obligation to protect layout-designs applies to
such layout-designs that are original in the sense that they are the result of their creators' own intellectual effort and are
not commonplace among creators of layout-designs and manufacturers of integrated circuits at the time of their creation.
The exclusive rights include the right of reproduction and the right of importation, sale and other distribution for
commercial purposes. Certain limitations to these rights are provided for.
In addition to requiring Member countries to protect the layout-designs of integrated circuits in accordance with the
provisions of the IPIC Treaty, the TRIPS Agreement clarifies and/or builds on four points. These points relate to the term
of protection (ten years instead of eight, Article 38), the applicability of the protection to articles containing infringing
integrated circuits (last sub clause of Article 36) and the treatment of innocent infringers (Article 37.1). The conditions in
Article 31 of the TRIPS Agreement apply mutatis mutandis to compulsory or non-voluntary licensing of a layout-design
or to its use by or for the government without the authorization of the right holder, instead of the provisions of the IPIC
Treaty on compulsory licensing (Article 37.2).
Protection of undisclosed information
The TRIPS Agreement requires undisclosed information -- trade secrets or know-how -- to benefit from protection.
According to Article 39.2, the protection must apply to information that is secret, that has commercial value because it is
secret and that has been subject to reasonable steps to keep it secret. The Agreement does not require undisclosed
information to be treated as a form of property, but it does require that a person lawfully in control of such information
must have the possibility of preventing it from being disclosed to, acquired by, or used by others without his or her
consent in a manner contrary to honest commercial practices. “Manner contrary to honest commercial practices” includes
breach of contract, breach of confidence and inducement to breach, as well as the acquisition of undisclosed information
by third parties who knew, or were grossly negligent in failing to know, that such practices were involved in the
acquisition.
The Agreement also contains provisions on undisclosed test data and other data whose submission is required by
governments as a condition of approving the marketing of pharmaceutical or agricultural chemical products which use
new chemical entities. In such a situation the Member government concerned must protect the data against unfair
commercial use. In addition, Members must protect such data against disclosure, except where necessary to protect the
public, or unless steps are taken to ensure that the data are protected against unfair commercial use.
Control of anti-competitive practices in contractual licences
Article 40 of the TRIPS Agreement recognizes that some licensing practices or conditions pertaining to intellectual
property rights which restrain competition may have adverse effects on trade and may impede the transfer and
dissemination of technology (paragraph 1). Member countries may adopt, consistently with the other provisions of the
Agreement, appropriate measures to prevent or control practices in the licensing of intellectual property rights which are
abusive and anti-competitive (paragraph 2). The Agreement provides for a mechanism whereby a country seeking to take
action against such practices involving the companies of another Member country can enter into consultations with that
other Member and exchange publicly available non-confidential information of relevance to the matter in question and of
other information available to that Member, subject to domestic law and to the conclusion of mutually satisfactory
agreements concerning the safeguarding of its confidentiality by the requesting Member (paragraph 3). Similarly, a
country whose companies are subject to such action in another Member can enter into consultations with that Member
(paragraph 4).
Functions and Policies. Classification of intellectual property –
Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and
symbols, names and images used in commerce.

IP is protected in law by, for example, patents, copyright and trademarks, which enable people to earn recognition or
financial benefit from what they invent or create. By striking the right balance between the interests of innovators and the
wider public interest, the IP system aims to foster an environment in which creativity and innovation can flourish.

Types of intellectual property

Copyright
Copyright is a legal term used to describe the rights that creators have over their literary and artistic works. Works
covered by copyright range from books, music, paintings, sculpture and films, to computer programs, databases,
advertisements, maps and technical drawings.

Patents
A patent is an exclusive right granted for an invention. Generally speaking, a patent provides the patent owner with the
right to decide how - or whether - the invention can be used by others. In exchange for this right, the patent owner makes
technical information about the invention publicly available in the published patent document.

Trademarks
A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.
Trademarks date back to ancient times when artisans used to put their signature or "mark" on their products.

Industrial designs
An industrial design constitutes the ornamental or aesthetic aspect of an article. A design may consist of three-
dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or
color.

Geographical indications
Geographical indications and appellations of origin are signs used on goods that have a specific geographical origin and
possess qualities, a reputation or characteristics that are essentially attributable to that place of origin. Most commonly, a
geographical indication includes the name of the place of origin of the goods.

Trade secrets
Trade secrets are IP rights on confidential information which may be sold or licensed. The unauthorized acquisition, use
or disclosure of such secret information in a manner contrary to honest commercial practices by others is regarded as an
unfair practice and a violation of the trade secret protection.

Nature And Functions of Intellectual Property Law

The Principal object of intellectual property is to ensure consumers a varied variety of products at the lowest possible
price. Intellectual property law ensures private property rights enabling individual and business to appropriate to
themselves the value of the information they produce and encourage them to produce more.

Copyright Law attracts investments to the production and distribution by promising authors and artists and their
publisher's exclusive rights for a limited period.
Patent Law uses property rights to stimulate private investment in new and useful and non-obvious technologies.

Trademarks encourages business to invest in symbolize information signifying the source of their goods and service and
prohibiting competition for using the same symbol.

Information is Intangible and the need for private property rights is comparatively more pressing and equally important as
private property rights for tangible objects such as land and cattle. In Tangible objects a owner can run a fence and keep
his or her property secure, whereas it is unusual for a creator of information to be able to fence his/her product by keeping
it secret and at the same time reap economic rewards from the information in the market place.

Put somewhat differently investment in information suffers special problems of appropriability. The fact that information
is intangible means that absent property rights, a producer of information will find it difficult to appropriate the
information's value in the market place. While most information will have a little value to its producer unless he can sell
it, sale will expose the information to competitors who with absent of property rights will be able freely replicate the
information and sell it at a lower price than the first producer who must charge to recoup his investment in producing his
information. The critical point is that unable to appropriate the value of his information, the producer will from the start
be disinclined to invest in producing information.

The problem of information as the object of Private property does not end with appropriability. The fact is intangible also
means that it is indivisible; an unlimited number of users can consume a piece of information without depleting it. For
example a a motion picture after been consumed by single person the same would be by a million but cant be the same
with tangible products like loaf of bread. Once the information has been produced its use may benefit an indeterminate
number of users without imposing any additional costs on the producer. Because information can be used endlessly and
by unlimited number of people and because no ones use of the information will interfere with the owner's physical
domain over it, legislatures and courts tend to tolerate more extensive inroads into intellectual property than they would If
land or goods were in issue.

This unique characteristic of informational goods that they are not a scarce resource that anyone can use them without
diminishing their availability to anyone else leads to a powerful moral intuition against intellectual property law. Since
intellectual property law enables information producers to charge for access to their information, It inescapably withholds
information from people who cannot or will not pay the prices of admission, even though giving them free access would
harm no one else. When a cable operator demands more rental fee, many subscribers who might gladly have paid a
smaller sum will choose not to see the film. In the crisp calculus this is undesirable because it decreases the welfare of
one class of consumers, the excluded viewers without increasing the welfare of another those willing and able to pay the
asking price.

It should by now be evident that the intellectual property solution to the problem of inappropriability property rights as
private incentive inevitable conflicts with the social benefits of indivisibility unrestricted public access. Intellectual
property as a solution to inapproriability implies that to recover its investment, an information producer will use its
property rights to charge consumers for access to its work. Yet indivisibility implies that ones information has been
produced, its use may confer a benefit on the consumer without imposing any additional cost on the producer. If the
producer charges for access to the information, consumers who are unable or unwilling to pay the price will be deprived
of the information leaving them worse of then they would be in the absence of property rights.

The dilemma is that without a legal monopoly not enough information will be produced but with the legal monopoly too
little of the information will be used.

international instruments relating to intellectual property – International trade agreements.

Introduction
Intellectual property has a dual nature, i.e. it has both national and international dimensions. For example, patents are
governed by national laws and related country regulations, while international conventions on patents protect minimum
rights and provide some measures for enforcement of rights by contracted states. Strong protection for intellectual
property rights (IPR) worldwide is really important for the future economic growth and development of all countries.
Because they include common rules and regulations, international IPR treaties, in turn, are essential to achieving strong
intellectual property protection that promotes global economic expansion and the growth of new technologies.

Role of UNO in development of IPR

The majority countries who are the members of UNO take different approaches for the protection and development of
Intellectual Property Rights with the aim of encouraging innovations and creativity which are considered to be an
important source of long- run economic growth.
UNO plays a very important role in the development and protection of IPR with the help of the World Intellectual
Property Organization (WIPO) which is one of the most significant and important organizations among the 16
organizations working under UNO in different sectors. WIPO aims to promote and protect IPR worldwide and to insure,
utility model, mark or industrial design.

Common rules: The Convention lays down a few common rules that all Contracting States must follow. The most
important are:

1. Patents: Patents granted in different Contracting States for the same invention are independent of each other:
the granting of a patent in one Contracting State does not oblige other Contracting States to grant a patent; a
patent cannot be refused, annulled or terminated in any Contracting State on the ground that it has been
refused or annulled or has terminated in any other Contracting State. The inventor has the right to be named as
such in the patent. Each Contracting State that takes legislative measures providing for the grant of
compulsory licenses to prevent the abuses which might result from the exclusive rights conferred by a patent
may do so only under certain conditions.
2. Marks: The Paris Convention does not regulate the conditions for the filing and registration of marks which
are determined in each Contracting State by domestic law.
3. Industrial Designs: Industrial designs must be protected in each Contracting State, and protection may not be
forfeited on the ground that articles incorporating the design are not manufactured in that State.
4. Trade Names: Protection must be granted to trade names in each Contracting State without there being an
obligation to file or register the names.
5. Indications of Source: Measures must be taken by each Contracting State against direct or indirect use of a
false indication of the source of goods or the identity of their producer, manufacturer or trader.
6. Unfair competition: Each Contracting State must provide for effective protection against unfair competition.

Paris Convention for the protection of Industrial Property

When there was no existence of any international convention in the field of industrial property, it was difficult to obtain
protection for inventions in different countries of the world due to the diversity of laws. In addition, patent applications
were filed at the same time in all countries to prevent a publication in one country destroying the novelty of the invention
in other countries. These practical problems constituted a strong objective to overcome such problems in the case of IPR.
In the late nineteenth century, the development of a more international-oriented flow of technology and increased
international trade increased the need for harmonization of industrial property laws in both the patent and trademark
sectors. The Paris Convention is also administered by WIPO. It came into existence to provide some international
harmony in intellectual property laws and was adopted on March 20, 1883, at Paris and enforced on July 7, 1884. It
provides basic guidelines for the protection of intellectual property such as patents, utility models, industrial designs,
trademarks, service marks, trade names, sources of information or signs of appeal, and some provisions for harassment
and national treatment of unfair competition. This treaty came into existence in India on December 7, 1998. Under the
convention, in the anti-discrimination principle, a member country is empowered to grant nationals of other member
countries the equal protection and advantages as it grants to its own nationals. This anti-discrimination policy of the
convention is also a fundamental principle of many other intellectual property agreements and treaties.

National Treatment: National treatment can be defined with regards to the protection of industrial property as each
country who is a member of the Paris Convention must grant equal protection of their invention to nationals of the other
member countries as it grants to its own nationals. The relevant provisions are included in Articles 2 and 3 of the
Convention. Equal national treatment should be given to citizens of countries that are not members of the Paris
Agreement if they are domiciled in a member country or if they have “legitimate and efficient” industrial or commercial
establishments in the country concerned. However, there is no requirement to be the domicile of the country where
protection is claimed may be imposed upon nationals of member countries as a condition for benefiting from an industrial
property right. The doctrine of national treatment not only guarantees that the foreigners will be protected, but also that
they will not be discriminated on any basis. Example: A Russian national applying for a patent in China will have the
same patent rights and level of protection in China as a Chinese national.

A framework of Priority: Another fundamental principle of the Paris Convention is a ‘framework of priority’. Under the
Paris Convention, an invention can be protected at the same time in various countries. This also means of access to
national patent systems to foreign applicants. An inventor has the authority to claim the filing date of his first patent
application in respective convention country as an effective filing date for further subsequent applications (regarding the
same invention) in any other member country. Further, the applications must be filed within 12 months of the earliest
application in a matter to claim the priority date.

Example: A USA patent application is lodged on 10 March 2000. On 10 March 2001, the same patent application is filed
in China. China is a convention member and as a result, the Chinese application is treated as though it was filed on 10
March 2000. If without the treaty, the patent in the example was treated as though it was filed on 10 March 2002 in
China, the invention would likely already have been disclosed and thus un-patentable in China.

The meaning of the right of priority means that in the foreign country, the application of patent will be filed from the
earliest date of filing in the home country for purposes of the prior art. This is profitable for an inventor , as it allows the
inventor to prevent detrimental effects of public disclosure of his invention that occurred after the earliest application and
before filing in foreign countries.

Berne Convention (Protection of Literary and Artistic Works)

Copyright protection on the international level took its first step in the middle of the nineteenth century on the basis of
bilateral treaties. India became a signatory of the Berne Convention on April 1, 1928. A number of such treaties providing
for mutual recognition of rights were concluded but they were neither comprehensive enough nor of a uniform pattern.
The need for a uniform system led to the formation of the Berne Convention for the preservation of Literary and Artistic
Works. The Berne Convention is the primeval international treaty in the field of copyright. It is open to all states.
Adopted on September 9, 1886, at Berne and entered into force on December 4, 1887. Originally signed in 1886 at Berne,
Switzerland, it was revised in 1914, 1928, 1948, 1967, 1971, and 1979. This Convention is based on three fundamental
principles:

1. Works in one of the contracting states (works of which the author is a national of such state or a work already
published in such a state) should be given equal protection to each of the other contracting or non contracting
states(the principle of “national treatment”).
2. Protection should not be conditional upon compliance with any formalities (the principle of “automatic”
protection).
3. Protection must be independent of the existence of protection in the origin country of the work (principle of
“independence” of protection). If a contracting State provides protection for a longer term than the minimum
term prescribed by the Convention and the work ceases to be protected in the country of origin, protection
may be denied once if protection in the country of origin ceases.
The minimum standards of protection relate to the works and rights to be protected, and to the duration of protection:

1. As to works, protection must include “every production in the literary, scientific and artistic domain, whatever
the mode or form of its expression” (Article 2(1) of the Convention).
2. Subject to certain allowed reservations, limitations or exceptions, the following are among the rights that must
be recognized as exclusive rights of authorization:

 the right to translate,

 the right to make adaptations and arrangements of the work,
 the right to perform in public dramatic, dramatico-musical and musical works,
 the right to recite literary works in public,
 the right to communicate to the public the performance of such works,
 the right to broadcast,
 the right to make reproductions in any manner or form,
 the right to use the work as a basis for an audiovisual work, and
 the right to reproduce, distribute, perform in public or communicate to the public that audiovisual work.
The Universal Copyright Convention (UCC)
The Universal Copyright Convention (UCC), was first created in 1952 in Geneva, as an alternative to the Berne
Convention. Some countries were not in favour of certain articles in the Berne Convention and did not agree to sign the
terms of the Berne Convention. Particularly, the United States who was the only one at the time who provided protection
on a fixed term registration basis via the Library Of Congress, and required that copyright works must always show the ©
symbol. This stated that the US had to make several changes to its laws before it could follow the Berne Convention.

The US finally became an official member of the Berne Convention on the 1st of March 1989, and now one only requires
registration for work first published in the US by US citizens. The UCC international protection was available to authors
even in countries that would not become parties to the Berne Convention. The Berne convention countries also became
members of the UCC to ensure that the work of citizens in Berne Convention countries must be protected in non-Berne
Convention countries. To ensure that the existence of the UCC did not lead to a conflict with the Berne
Convention, Article 17 of the UCC states that the convention does not affect the provisions of the Berne Convention and
also stated that any country who withdraws from the Berne Convention after 1st January 1951 will not get protection
under UCC in countries of the Berne Convention Union.

World Intellectual Property Organisation

The World Intellectual Property Organization (WIPO) is an international organization which grants worldwide protection
to the rights of creators and owners of intellectual property. It was adopted on July 14, 1967, at Stockholm and enforced
on April 26, 1970. WIPO came into establishment under this Convention with two main objectives:

 For the promotion of the protection of intellectual property worldwide and;

 to safeguard administrative cooperation among the intellectual property Unions established by the treaties
which are under WIPO administration.
India became an official member of WIPO on May 1, 1975. WIPO’s origin dates back to 1884 when the Paris Convention
entered into force with 14 member States, which set up an International Bureau to carry out administrative tasks, such as
organizing meetings of the member States. Like the Paris Convention, the Berne Convention also set up an International
Bureau to carry out the tasks of administration. In 1893, these two small bureaux came together and form an international
organization known as the United International Bureaux for the Protection of Intellectual Property. Based in Berne,
Switzerland, with a staff of seven, this small organization was the predecessor of the World Intellectual Property
Organization of today – a dynamic entity with 185 member States, number of staff who are around 938, from 95 different
countries around the world, and with a mission and a mandate that are constantly flourishing. This International Bureau
emerged over time to be recognised in 1970 as WIPO. In 1974, WIPO became a specialized agency of the United Nations
and in 1996, WIPO expanded its role into globalized trade by entering into a cooperation agreement with the World Trade
Organization. WIPO administers 25 treaties (three of those jointly with other international organizations) and carries out a
rich and varied program of work, through its member States and the secretariat, that seeks to:

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

 To provide an international registration service for the industrial property.
 To exchange information about intellectual property.
 To provide legal and technical assistance to developing countries and others.
 To assist during the settlement of disputes related to intellectual properties among individuals.
 To keep a check on the use of information technology as an instrument for access and exploit valuable
information about intellectual property.
According to the Convention held at Stockholm on 14th July 1967 and Article 2(viii) of the convention following rights
are included in Intellectual Property Rights:

1. Literary, artistic and scientific works;

2. Performances of performing artists, phonograms and broadcasts;
3. Inventions in all fields of human behavior;
 4. Scientific discoveries;
5. Industrial designs;
6. Trademarks;
7. Service marks;
8. Commercial names and designations;
9. Protection against unfair competition;
10. All other rights resulting from Intellectual activity in industrial scientific, literary or artistic fields; etc.

International treaties administered by world intellectual property organization

There are 24 international treaties which are administered by world intellectual property organization which are as
follows:

 Berne convention
 Brussels convention
 Budapest treaty
 Film register treaty
 Hague agreement
 Libson agreement
 Locarno agreement
 Madrid agreement
 Madrid agreement mark
 Madrid protocol Nairobi treaty
 Nairobi treaty
 Nice agreement
 Paris convention
 Paris law convention
 PCT
 Phonograms convention
 Rome convention
 Singapore treaty on the law of trade mark
 Strasbourg agreement
 Trademark law treaty
 Vienna agreement
 Washington treaty
 WCT
 WPPT
The secretariat of world intellectual property is called the international bureau which is directed by the director general of
the world intellectual property organization assisted by two or more deputy director generals.

There are three main organ of the world intellectual property organization:
 1. The general assembly
2. The conference
3. The coordination committee

The General Assembly

The general assembly of the world intellectual property organization consists of the state party to this convention the
government of each member state is represented at the general assembly by one delegate, the government pays all the
expenses of the delegate the assembly appoints the director general of the world intellectual property organization. The
assembly appoints the director general of the world intellectual property organization nominated by a coordination
committee. The general assembly adopted the biennial budget of expenses common to the union

The Conference
The general assembly of world intellectual property organizations consists of the state party to this convention. The
government of each member state is represented at the conference by one delegate the government pays all the expenses
of delegate the conference appoint director general of world intellectual property nominated by coordination committee.
The conference discusses the matter of general interest in the field of intellectual property and may adopt
recommendations relating to such matters for the competence and autonomy of the union.
The Coordination Committee
The coordination committee of the world intellectual property organization consists of the state party to this convention
which are members of the executive committee of the Paris union or the executive committee of the Berne union or both.
The coordinate committee gives advice to the organs of the union, the general assembly and to the conference and the
director general, on all administrative, financial and other matters of common interest.
The coordination committee prepares the draft agenda of the general assembly.
Director General of World Intellectual Property Organization
The World Intellectual Property organization is represented by its Director General assisted by two or more Deputy
Director Generals. The Director General is the chief executive of the Organization. He is appointed by the General
Assembly of WIPO upon the nomination of the coordinating assembly of WIPO. He is appointed for a fixed term not less
than six years. AT PRESENT MR FRANCIS GURRY is the director general of WIPO, he was appointed on 13th of May
2008
Membership
At present WIPO has 184 countries as members. India being one of them to become the member of the world intellectual
property organization, a state must deposit an instrument of ratification or accession with the director general of the world
intellectual property organization at Geneva.

Trade-Related Aspects of Intellectual Property Rights (TRIPS)

The Uruguay Round of multilateral trade negotiations held in the framework of the General Agreement on Tariffs and
Trade (“GATT”) was concluded on December 15, 1993.The agreement which established the World Trade Organization
(“WTO Agreement”), was enforced on April 15, 1994, in Marrakech. For the first time the negotiations included within
the GATT, discussions on aspects of intellectual property rights of international trade. The result of those negotiations,
given in an Annexure of WTO Agreement was the agreement on Trade-Related Aspects of Intellectual Property Rights
(the “TRIPS Agreement”).
The WTO Agreement, including the TRIPS Agreement (which is binding on all WTO Members), enforced on January 1,
1995. A new organization was established by the former agreement known as the World Trade Organization, which came
into force from January 1, 1995. Member States of WTO were granted a specific period of time after the enforcement of
the agreement establishing the WTO before being obligated to apply the TRIPS Agreement. Trade-Related Aspects of
Intellectual Property Rights (TRIPS) is the most global and essential international agreement on intellectual property
rights. The member countries of the WTO are automatically binded by the agreement. The agreement consists of most of
the forms of intellectual property like patents, copyright, trademarks, trade secrets, geographical indications, industrial
designs, and exclusionary rights over new plant varieties.
TRIPS proved to be one of the most important agreements to promote intellectual property at the international level.
TRIPS mainly introduced the global minimum standard for the protection and enforcing of all forms of intellectual
property but it failed to specify the global minimum standard for the patent. The main object of the trade related aspect of
intellectual property is to promote effective and adequate protection of intellectual property rights and ensuring that
measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade.

Issues covered by the TRIPS

 How basic principles of the trading system and other international intellectual property agreements should be
applied.
 How to give adequate protection to intellectual property rights.
 How countries should enforce those rights adequately in their own territories.
  How to settle disputes on intellectual property between members.
 Special transitional arrangements during the period when the new system is being introduced.

Features of the TRIPS

There are three main feature of the TRIPS agreement which are as follow:
1. Standard
2. Enforcement
3. Dispute settlement
Standard: The main element of trade related aspect of intellectual property is to protect the subject matter.
Enforcement: The second element is about domestic procedure and remedies provisional measure special related to
border measure.
Dispute settlement: The agreement makes dispute between world trade organization members arising with respect to the
trade related aspect of intellectual property obligation subject to the world trade organization dispute settlement
procedure.

Obligations under TRIPS Agreement

The TRIPS agreement outlines various important business-related aspects of intellectual property. In particular, this
requires Member States to follow their own criteria for intellectual property monopoly grants for limited period along
with adherence to the Paris Agreement, the Berne Convention and other WTO conventions. The norms are the minimum
standards for granting monopolies over any kind of IP, as well as duration limits, enforcement provisions, and methods of
IP dispute settlement. When the TRIPS agreement was enforced on 1 January 1995, all developed countries were given
twelve months from the date of signing the agreement to implement its provisions. Developing countries and transition
economies (under certain conditions) were granted five years until 2000. As of 2006, least developed countries (LDCs)
were given 11 years to comply. Some countries have indicated that the long term should be achieved. For pharmaceutical
patents in these LDCs, the compliance period has been extended to 2016.
Currently, there are 30 LDCs within the WTO organization bound by TRIPS and another 10 LDCs are awaiting
accession. The Most Favored-Nation Principle (MFN) – The TRIPS Agreement contains the most favored nation
doctrine, which has not traditionally been provided in the context of intellectual property rights at the multilateral level.
This doctrine provides that any advantage, favour, privilege or immunity granted to the citizens of any other country shall
be immediately unconditional to all other members (whether or not a member) with a specified exemption. As is the case
for national remedies, the procedures provided in the multilateral agreements discussed under the aegis of the WIPO
relating to the acquisition or maintenance of intellectual property rights are exempt from this principle.

Conclusion
The purpose of these agreements was not only to provide a minimum standard for the protection of IPR, but also to
provide for its purpose. These agreements provide a minimum standard for the enforcement of IPR that allows right
holders to protect their legitimate interests through civil court or administrative proceedings. Part III of the Agreement on
the Enforcement of IPR sets out the obligations of Member States to establish administrative and judicial mechanisms
through which IPR holders can seek effective protection of their interests. The general obligation of member states to
provide enforcement mechanisms requires that the enforcement process be available under their national law to allow
effective action against any act of violation of the IPR covered by these agreements, including immediate measures to
prevent violations and remedies are included. Member nations are obligated to safeguard that enforcement procedures are
“fair and equitable”, and “not unnecessarily complex or costly, or prevent unreasonable deadlines or unreasonable
delays.”

Unit 2 : Patent
Patentable subject matter – Specification –
A basic understanding of patent systems reveals that per se exclusions of patentability based strictly on the invention's
subject matter are usually contrary to the fundamental principles and motivations of patent protection. Patent systems
encourage innovation by making the development of inventions into new products and services commercially feasible."
Ultimately, patent systems benefit society and consumers by delivering new products and services based on technological
innovation.Patents facilitate the commercialization process by enabling innovators to appropriate from their investments
by preventing, for a limited period, the unauthorized copying of the patented invention by competitors. By doing so, the
innovator can secure a commercially viable return on his or her investments in developing the invention into a new
product or service. Moreover, patent systems require clear and complete disclosures of the inventions in the text of the
published patents. Therefore, patent systems encourage the diffusion of knowledge for the benefit of society unlike an
alternative system dependent on trade secrets.The proposed amendments to India's patent law exclude certain categories
of subject matter from eligibility for patent protection. Consequently, excluding per se certain categories of subject matter
from eligibility for patent protection, as the amendments to India's patent law propose, would (1) reduce the incentives for
innovation with respect to that subject matter; (2) reduce the availability of new products and services connected with that
subject matter; and (3) limit the diffusion of knowledge of new discoveries. As detailed below, while Article 27 of the
TRIPS Agreement provides discretion to WTO Members to exclude a small set of subject matter from patentability,
India's proposed exclusions do not fall into this set.

Overview of common standards for patentability

Patent systems impose a number of conditions on those wishing to obtain a patent for an invention. These conditions
ensure that the government awards a patent only when justified, and that the rights provided under the patent correspond
with the contribution made by the inventor. Most patent systems use three standards to determine if the government
should patent an invention:
1) novelty of the invention,
2) inventive steps and,
3) industrial application.

The TRIPS Agreement also reflects these standards.However, TRIPS does not define what an "invention" is, but only
specifies the requirements that an invention should meet in order to be patentable. This ambiguity leaves Members
considerable freedom to determine what an invention is. In addition, Members may also exclude from patentability any
substance that exists in nature as being a mere discovery and not an invention. Apart from the above three standards, there
are other two requirements that should be met for the inventions to be patentable: eligibility and adequate disclosure.

1. Novelty
Under the novelty standard, the invention must not be identically disclosed in the "prior art" (i.e., the entirety of publicly
accessible knowledge existing before the inventor filed the patent application). This requirement generally means that the
information must not have been available to the public prior to the original application date (the priority date)." Under
most systems, information contained in publicly accessible forms (e.g., printed publications, patents, information
disseminated without restriction and accessible through routine effort) is included in the prior art." TRIPS Article 27.1
grants WTO Members the authority to require a showing of novelty as a condition of granting a patent.

Since a Member grants a patent when an inventor discloses something new, then if literature available to the public
discloses the invention, the applicant (the "inventor") can disclose nothing new in return for the grant. In that case, the
inventor is not entitled to a patent. In addition, if the Member has already granted the inventor a patent, he or she may
revoke the patent. The disclosure may have taken place within the jurisdiction or elsewhere in the world." Due to the
nature of invention, the discovery of things already existing in nature,(e.g., a new plant or mineral) is not an invention.

2. Inventive step
This standard measures the degree of "inventiveness" of the invention relative to the prior art. An invention must involve
an inventive step-meaning that the invention must not have been obvious from the prior art to a person of ordinary skill in
that particular field of technology at the time the inventor filed the patent application. An invention that is "novel" can
still lack an inventive step, and therefore the Member will deny the patent. In other words, the invention must not merely
be something new; it must represent a development over prior art. Inventive step, like novelty, must be measured at the
time the inventor files the patent application, rather than after the inventor files the application and has gained additional
perspective and knowledge. The latter improperly employs hindsight to assess the merits of the invention. TRIPS Article
27.1 grants WTO Members the authority to require a showing of inventive step or non-obviousness as a condition of
granting a patent. In Europe and in many other countries this requirement is generally described as an "inventive step," in
the United States lawmakers define the requirement as "non obviousness".

3. Industrial applicability
The invention must be capable of being used in any kind of industry (including agriculture). Industry, in this sense, is any
physical activity of a technical character.

Members considerably differ in their treatment of industrial applicability. In the U.S., lawmakers apply the concept of
"utility". Hence, an inventor can patent certain developments that do not lead to an industrial product in the U.S.. An
invention only needs to be operable and capable of satisfying some function of benefit to humanity (i.e., useful).This
concept is broader than the industrial applicability required in Europe and other countries. The U.S. rule permits the
patentability of purely experimental inventions that cannot be made or used in an industry, or that do not produce a so-
called technical effect. These less stringent requirements are illustrated by the fact that the U.S. government grants a large
number of patents on methods of doing business, and research tools, such as expression sequence tags (ESTs) and single
nucleotide polymorphisms (SNPs) 7 Surgical techniques and diagnostic procedures could arguably fail this requirement,
but can be specifically excluded from patentability under Article 27.3 (a).

4. Eligibility
The standards mentioned above identify which scientific and technological advances are "inventions" and, further, which
"inventions" can be patented. In addition to using a general requirement for industrial applicability of the invention,"
some countries precisely identify categories of subject matter that are not inventions, and which types of inventions the
government will not patent. Other countries define eligibility in broad terms, without per se exclusions. The industrial
application requirement of most countries is inclusive of virtually any type of commercial or industrial enterprise. TRIPS
Agreement limits the authority of WTO Members to define patent eligibility, and requires a showing of industrial
application or usefulness as a condition of granting a patent. Paragraphs two and three of TRIPS Article 27 provide
discretion to Members to exclude certain limited categories of subject matter from patentability, none of which
encompass the exclusions in the proposed amendment to Indian patent law. Pharmaceutical products and micro-
organisms do not figure on this list of TRIPS' designated subject matter exclusions. We will take up this important matter
again in Section II.

5. Adequate disclosure
This standard requires an applicant to provide technical information about the invention such that others are able to
reproduce the full scope of what the inventor claims in his or her patent application." TRIPS Article 29.1 generally refers
to the authority WTO Members have to impose disclosure requirements. These standards vary slightly in how different
countries apply them.5 In principle, however, nearly every country incorporates some form of these five functional
requirements in their patent system." As noted above, the primary international authority defining the requirements of
patent systems is the TRIPS Agreement. The other major treatises that influence international patent law standards are the
Paris Convention for the Protection of Industrial Property (Paris Convention,) the Patent Cooperation Treaty (PCT,)"' and
the Patent Law Treaty (PLT)f' International patent law standards have evolved to reflect and apply these five basic
standards in varying ways, and to address needs of inventors to secure patents in different countries.

Patents provide what are termed "exclusive rights." The principled basis for these exclusive rights has been established in
international law, and defined more explicitly in the TRIPS Agreement. International human rights' norms also recognize
the importance of protecting intellectual property rights, as evidenced by the Universal Declaration of Human Rights
(UDHR), and the International Covenant on Economic, Social and Cultural Rights (ICESCR).

Article 28.1(a) of the TRIPS Agreement specifies that if a WTO Member issues a patent, this patent must confer on their
owners the exclusive right to prevent the unauthorized making, using, selling, offering for sale, or importing of the
patented invention. In addition, Article 28.1(b) of the TRIPS Agreement requires that patents confer the right to prevent
the unauthorized use of a product that results from a patented process invention, including importation of that product into
the country where the process patent originated7 Patents enable their owners to prevent the unauthorized use of the
patented technology through legal interventions.61 Specifically, patent owners can prevent unauthorized use of the
patented technology by commencing an action in a court for infringement.": If infringement is proven, the court generally
issues an injunction prohibiting the continued unauthorized use of the patented invention.7 Ultimately, this ability to
enjoin the unauthorized conduct gives effect to the patent right."1 Part III of the TRIPS Agreement requires WTO
Members to make available adequate and effective judicial and administrative procedures for enforcing intellectual
property rights, including several procedures that are of particular importance to a viable patent right.

Patent rights are generally defined by the claims of the patent. The patent claims reflect what is "novel," what involves an
inventive step and, what is industrially applicable. The patent claims thus reflect and limit the scope of the patent rights.
The claims must avoid encompassing subject matter that is disclosed in or obvious from the prior art, or they will be
subject to rejection or invalidity.7 " A valid patent claim can neither encompass what is literally described in or obvious
from the prior art, nor it can include subject matter that is beyond what the inventor has described and enabled in the
patent disclosure.

Licenses of patents and allied rights –

What is a patent?
An exclusive right granted for an invention, which is either a product or a process, and offers a new way of doing a work
or provides with a new technical solution to an existing problem, is called a patent. 1
What is called Patent Licensing?

Patent Licensing is an act of or a process of granting, to a third party, permissions to extricate benefits by selling and
using the licensed product. The patent owner gives license to a third person to use, sell and extract benefits from his
patented invention, for an amount already decided as royalty.

A patent owner can give away or transfer his interests in a patent to a third person. The licensor gives away his rights on
the invented patented intellectual property for a period of time over a mutual agreement. During such a period, the
licensee can extract benefits and have rights on the interest on the patent. He may use and make the licensed design and
can also gain profits during the licensed period.
As per Section 68 of the Patent Act, 1970, for a patent license to be valid, the agreement must be in writing.
In the case of PVR Pictures Ltd. v. Studio 18 [2009 SCC OnLine Del 1878 : (2009) 41 PTC 70]. Delhi HC held that term
sheet agreement shall not amount to a license agreement.
What are the types of Patent License?
There are following five types of patent licensing

Exclusive License
An exclusive license is one in which all the rights of the patent is transferred to the licensee, but the title. In such case, the
licensee has all the rights as of the patent owner except of transferring the patent to another person. This restriction is
because, in such license even with transfer of all other rights the right over the title still rests with the patent owner. It is
exclusively granted to a particular party and hence cannot be further transferred. In this type of license, the chances of the
patent getting infringed is minimal as the rights are less being exploited and the licensee has the monopoly over the
market.

Non-exclusive License
In a non-exclusive right, the licensee has the right to sell and make the patented design, but such right is not exclusive.
Patent owner may grant permission to use and make such patented design to any other person also. In this case, all of
them have the right to make, use and sell the patented design. The rights enshrined by this license is not exclusive to a
particular licensee.

Sub-license
It is a type if license issued by the licensee to different organizations to make the products. Sublicense can be said to be
granting of certain licensed rights on a product to a third party by the licensee.

Cross License
When a product requires support of some other product to make its place in the market and for better utilization, cross
license is preferred. Cross license can be understood as exchange of license between different organizations and
individuals. Recently, Ericsson and Oppo entered into a cross license agreement between them covering various patent
portfolios of both the companies including portfolios of 2G, 3G and 4G.

Compulsory License
When the government grants permission to any individuals or organizations to use, sell or make a patented design or
product, irrespective of the will of the patent owner, for the public good, it is referred to as compulsory license.
Compulsory license is usually seen being granted in the pharmaceutical products and the products which fulfils the
criteria as mentioned in Section 84 of the Patents Act, 1970. The first compulsory license, in India, was given
to NatcoPharma Ltd. for producing generic version of Nexavar which was a patented medicine of Bayer Corporation, on
March 9, 2012.

What are the advantages of patent licensing?

Transfer of risks
Manufacturing and production of a design or products have a lot many risks involved. With patent licensing the patent
owner can transfer such risks involved in production of patent design or product to the licensee.

Global Market
It becomes difficult for many companies to have a mass production of a product individually. Patent licensing comes to
an aid to overcome this difficulty as it permits other organizations to produce the patent products and thereby help in mass
production. Patent licensing thus can help in introducing ones invention in the global market.

Limited Period
Because patent licensing is done for a limited period, the owner gets back his exclusive rights over his invention as and
when the license duration expires.

Competitive Advantage
If the patent is licensed to an already established organisation with a large customer base, the patent product will have a
larger market to capture in comparison to other patents, giving it a competitive edge over other patents.

What are the disadvantages of patent licensing?

Difficulty in determining licensee
It takes lots of efforts and time to determine the appropriate licensee for the invention. It is essential to get a potential
licensee and have a structured agreement in order to have the greatest chances of success.

Loss of control
For the period of license, the patent owner transfers his rights to the licensee. Result of which is he loses his own control,
either partially or fully, on his own invention.

Risk of licensee's ability

The patent owner relies on the efficiency and abilities of the licensee to effectively commercialize the patent product. The
risk of poor strategy and quality management can adversely affect the patent reputation and success.

What is the difference between Patent License and Patent Assignment?

Patent License can be referred to be an act of the patent owner where he grants permission to extract benefits on interests
on the patent to a third party for a limited period of time. Such transfer of rights are temporary in nature. In patent license,
the licensee is needed to pay the royalty to the licensor for the entire duration of the license period.

Whereas, Patent Assignment can be said to be an act of the patent owner wherein the owner transfers the exclusive rights
of the patent permanently. Such a transfer is recorded in the official patent record. In patent assignment, the assignee is
required to pay the lump-sum amount to the assignor in the beginning and can later receive profits from the patented
invention.

What are the common mistakes committed during patent licensing?

1. The licensee tends to use the patented design or product before signing the license agreement resulting in patent
infringement. The licensee should ensure that he has signed the license agreement before using or selling the
product or design so patented.
2. In a haste of growing rapidly, some inventors fail to find the suitable licensee for their product and end up
granting license to some non-competent party. This results in failure of the invention which could have had
flourished in global market had the owner opted for an efficient licensee.
3. Lack of awareness regarding the liability of the owner also leads to loss for the licensee. The licensor is still the
owner of the patented product or design, even during the license period. Thus, he can be held liable for his
invention even during the license period.
What are the approaches to patent licensing?
There are two ways of approaching patent licensing:
Carrot Licensing
In this case the person or the organisation one wants to do business with is not into using of the patented technology or
the product. The owner of the patent must convince the party to use his product and how licensing the product or
technology be beneficial for them.
Stick Licensing

In this case the person or the organization has already used or is using the patented design, technology or product and
thus, have infringed the patent. The owner can file a suit against the infringer or settle with the infringer agreeing to
license his patent.

What is patent licensing royalty rate?

When an inventor license his patent to any third person, they both enter into the license agreement wherein rights of the
patent is given to the licensee and in return the licensor receives a certain amount of money fixed in the agreement every
time the product is sold.This fixed amount being given to the licensor or the inventor is called as royalty, and the
percentage of net or gross profit decided to be the royalty is referred as patent licensing royalty rate.

Royalty rates generally vary from 0.1 to 25 percent depending on the type of industry and the invention. 3

Conclusion
Recently a company in Bengaluru came up with the concept of e-scooters though the price of it is high making it
inaccessible. Further, Kerela Government asked all the government transport to be e-vehicles. It can be thus suggested
that, patent license should be granted for global reach of the products and those for public good should be either be
compulsory licensed or free licensed.

Infringement and remedies –

Indian Patents Act, 1970 also considers falsification of entries in register, claiming patent rights in an unauthorized way
etc. to be punishable criminal offences.
Such penalties are mentioned under chapter XX of the Indian Patents Act, 1970. Though the Indian Patents Act, 1970
doesn't specifically mention about the consequences of patent infringement but in Section 48 rights conferred to the
patentee are mentioned. These are:
  Where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have
his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product
in India;
 Where the subject matter of the patent is a process, the 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.

As per the provisions mentioned in the Indian Patents Act, 1970; following amount as an act of Patent Infringement:
 The colorable imitation of the invention
 Mechanical Equivalents
 Carrying essential features of the invention
 Immaterial variation in the invention

Mechanical equivalents here mean use of substitutes for some features, just to obtain same results for the same use as
done by the patentee.
The limitation period for instituting suit for the patent infringement is 3 years from the date of infringement and
jurisdiction is the geographic area where the infringement has taken place. Also the burden of proof to establish that an
infringement has occurred lies on the patentee.
Following can institute a suit in patent infringement proceedings:
 Patentee
 Exclusive licensee, if the license is registered
 A compulsory licensee
 Assignee
Another important point to be kept in mind is that a suit for infringement can only be instituted when the patent has been
sealed. During the phase when the specification has been accepted, published and oppositions have been called; the suit
for infringement cannot be instituted. Also for the damages sustained due to the infringement committed during the period
between date of publication and date of grant; a separate suit f or damages can be instituted.

Remedies/Reliefs provided:
1. Administrative remedy: The patent owner can reach the collector of customs and prohibit the entry of these goods
into Indian market. The patent owner must provide the name of the exporter, consignee, port of entry, name of the
ship etc. details.
2. Civil remedies:
3. Injunctions: When there is a prima facie case and/or balance of convenience is in the favor of the plaintiff;
Interim injunction is granted. Whereas after the complete trial permanent injunctions are granted.
4. Damages or accounts of profits is granted if it is established that on the date of the infringement; the defendant
was aware about the prior existence of the patent.

The court may also order delivery up of the infringing goods. This is mentioned in order XXXiX rule 7 of the Civil
Procedure Code. As per the provisions mentioned under this relief, a commissioner appointed by the court visits the
defendant's premises and take the inventory of the infringing articles that are present in the defendant's premises. These
orders are usually passed without sending notice to the infringer.
Groundless threats for Infringement proceedings:
There may be a certain situation where a person is aggrieved by baseless threats of patent infringement. Such person may
seek for the following reliefs:
1. Injunction against such threats;
2. Ask for damages if any sustained;
3. A declaration to the effect that the threats are unjustified.

In India as the awareness regarding IP protection is increasing, people are becoming more and more conscious about the
ways to secure their patents. A concerned and well informed strategy towards securing ones Intellectual property is
always the best approach.
The truth of the moment is "A stitch in time saves nine".

Micro organisms and patentability –

Article 27(3)(b) of TRIPS Agreement allows member states to deny patents for �plants and animals, other than
microorganisms, and essentially biological processes...

Patenting of Micro-Organism in India: An Overview

Biotechnology patenting in India is still in its infancy even in 2009. Three factors are primarily responsible. First, product
patents on substances capable of use as medicine, drug, or food could not be obtained from the Indian Patent Office prior
to January 1, 2005, when India completed implementation of TRIPS required amendments to its Patents Act. Second,
even though process patents had always been available (albeit with short terms) despite the pre-2005 ban on chemical
product patents, it was not until 2002 that a court overturned the Indian Patent Office’s policy of rejecting claims to
processes that produced a live product. Third, India’s patent laws were amended in 2002 to explicitly include
“biochemical, biotechnological, and microbiological processes” within the definition of potentially patentable “chemical
processes.”

These paradigm shifts away from India’s earlier anti-patent product regime, coupled with a rapidly expanding
biotechnology industry fueled by investments from both the private and public sectors,6 portend a surge in biotechnology
patenting activity in India. Moreover, the Indian government symbolically emphasized the importance of biotechnological
innovation by granting the first chemical product patent under India’s post-TRIPS patent regime to a biologic: Hoffman
LaRoche’s Hepatitis C therapy, a branched pegylated interferon sold under the brand name Pegasys.[1] A number of
Indian firms that make “bio-generics”10 or “bio-similars” have developed proprietary processes to manufacture first-
generation biologics no longer under global patent protection, such as recombinant human insulin, erythropoietin,
interferon, and granuloctye colony-stimulating factor.[2]

Subject Matters of Patentability

Any patent application must go through two stages before actual patent rights are awarded by the Patent Office. The first
of these inquiries deals with eligibility of invention to be invention without restriction, that determines what types of
inventions can be considered for patent protection. Patent eligibility thus performs a gatekeeper function. If an invention
is not patent eligible, no other provision of the patent law can secure patent rights for that invention. Patent eligible
inventions are not, however, automatically entitled to protection. Each such invention must thereafter be examined under
a second, well-known set of requirements: novelty, non-obviousness, and disclosure. These are more specific inquiries
that ask whether or not the claimed invention merits the protection of the state by being a sufficient advance over the
existing body of patented materials and by being supported by a sufficient disclosure to provide the public with notice and
scientific teaching.

Invention v. Discovery
The question as to whether certain substances isolated or derived from naturally occurring living organisms are
"inventions" or "discoveries" has triggered widespread discussion. Its operating principle, which is traceable back to the
nineteenth century, is entirely straightforward: one cannot patent a product that occurs in nature in essentially the same
form. For more than a hundred years, the Patent Office and the courts have denied patentability to claims on what have
been regarded as true products of nature. The phrase has actually been used in two different but related ways. In the first
sense, product of nature refers to a composition of matter that does not comprise patentable subject matter because it is
indistinguishable from something that occurs in nature. To illustrate this meaning, the USPTO Manual of Patent
Examining Procedures gives the example of a shrimp with the head and digestive tract removed.[3] In its other sense, the
phrase refers to claims that failing the novelty and/or non-obviousness tests because they are drawn to known natural
products that have been derived from a new source or process,[4] or are in only a marginally purer form than is found in
nature.[5] We shall focus primarily on the first sense subject matter but, as we shall see, the two meanings have
sometimes become intertwined.

The product of nature doctrine appears as early as 1889, when, in Ex Parte Latimer,[6] the Commissioner of Patents
rejected a claim on a new article of manufacture . . . consisting of the cellular tissues of the Pinusaustralis [southern pine]
eliminated in full lengths from the silicious, resinous, and pulpy parts of the pine needles and subdivided into long, pliant
filaments adapted to be spun and woven. In the initial rejection of the claim, the examiner emphasized the identity of the
claimed substance and its natural counterpart: The claim and description do not set forth any physical characteristics by
which the fiber can be distinguished from other vegetable fibers. . . . Hence, since the fiber claimed is not, and cannot be,
distinguished from other fibers by any physical characteristic, the claim therefor must be refused.”[7] This case has laid
down following elements for product of nature:

A product whose physical characteristics are indistinguishable from those of its naturally occurring counterpart does not
constitute patentable subject matter.
Alternatively, it may be said that such a product is non patentable because it lacks novelty.

Neither the novelty of a process used to produce a product of nature, nor the unprecedented status of its discovery, can
cure the inherent non patentability of the product.

The utility and consequent value of the product is irrelevant to its status as patentable subject matter.
However, Section 3© of the Indian Patent Act provides that, ““The mere discovery of a scientific principle or the
formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature”

It is quiet clear that it does not prohibit any invention which is result of human intervention, where living beings has been
used initially for conducting experimentation.

Moreover, Draft Patent Manual of India reads that there is a difference between discovery and invention. A discovery
adds to the amount of human knowledge by disclosing something already existent, which has not been seen before,
whereas an invention adds to the human knowledge by creating a new product or processes involving a technical advance
as compared to the existing knowledge.[8]

A scientific theory is a statement about the natural world. These theories themselves are not considered patentable, no
matter how radical or revolutionary an insight they may provide, since they do not result in a product or process.
However, if the theories lead to practical application in the process of manufacture of article or substance, they may well
be patentable. A claim for formulation of abstract theory is not patentable. For example, the fact that a known material or
article is found to have a hitherto unknown property is a discovery and not an invention. But if the discovery leads to the
conclusion that the material can be used for making a particular article or in a particular process, then the article or
process could be patentable.[9]

Patenting of Micro- organisms

India
Article 27(3)(b) of TRIPS Agreement allows member states to deny patents for “plants and animals, other than
microorganisms, and essentially biological processes for the production of plants or animals other than non-biological and
microbiological processes.” As a result, TRIPS makes it obligatory for all its signatories to extend patents for
microorganisms, non-biological, and microbiological processes. Further, animal and plant parts, and altered plants and
animals are not explicitly included in the exemption, which means TRIPS may also require patenting of biological
organisms. In compliance with TRIPs, the Patents Act 1970, as amended in June 2002, gives patent rights for new
microorganisms. Section 3(j) of the Act excludes from patentability “plants and animals in whole or any part thereof other
than micro-organisms but including seeds, varieties and species and essentially biological processes for production or
propagation of plants and animals.” 2002 Amendment of Indian Patent Act added explanation to chemical process, which
states; chemical processes include biochemical, biotechnological and microbiological process.[10] Other areas involving
microorganisms are also patentable in India. For example, a synergistic composition containing the microorganism, which
is either new or known, and a process using microorganisms to produce a substance can both be patented. Also, the
process of biosynthesis of a new microorganism is patentable.12 Microorganisms that are lyophilized as an end product
are patentable.

The Act does not specify the patentable invention ambit, but it does in specificity limits the non- patentable subject
matters.[11] But even before the amendment Calcutta High has addressed the issue of whether a process involving
microorganisms that are living as an end product can be patented.[12] It should be noted here that the definition of
invention, which was litigated in the case, has been amended since this case was decided.[13] Prior to the case, the
applicant had requested a patent for the process of creating a vaccine to protect poultry from infectious bursitis. The
Controller of Patents determined the process was not an invention because the end product produced by the process
contained a living organism, and thus was not patentable. The applicant appealed the Controller’s decision to the Calcutta
High Court. The Controller claimed a patent is given only for a process that results either in an article, substance, or
manufacture and a vaccine with a living organism is not an article,[14] substance, [15]or manufacture. The court used the
normal dictionary meaning of manufacture, because it was not defined in the Patents Act, and determined manufacture is
where “the material in question after going through the process of manufacture has under-gone any change by the
inventive process and it becomes a material which is different from the starting material.” The court determined this
meaning does not exclude the process of preparing a product that contains a living substance from patentability.
The court found that no statute precluded a living end product from the definition of manufacture. Also, the court decided
that “since the claim process for patent leads to a vendible product, it is certainly a substance after going through the
process of manufacture.” The court ultimately concluded that “a new and useful art or process is an invention,” and
because the process is new and useful, it “is apparently patentable under section 5 read with section 2(j)(i)” of the Patents
Act. The court determined that “where the end product is a new article, the process leading to its manufacture is an
invention.” Although the definition of invention has been amended, this change may actually enhance the court’s
invention argument, because now the elements of manufacture, article, or substance are no longer required. Rather, the
new definition merely calls for a new, non-obvious and useful product or process. As noted above, the court determined
the vaccine was new and useful and made no discussion about the end product containing living material in reaching this
conclusion. However, other changes to the act may change the case’s outcome. For example, section 3(j) was added to the
Patents Act after this case and now excludes essentially biological processes for production or propagation of plants and
animals from the definition of invention. In that case, the court cautioned that claims for patentability should “be
considered by the controller on the principle of section 3” of the Patents Act.[16]

USA
The US Supreme court in Diamond v. AnandChakrabarty,[17] started a new jurisprudence with respect to biotech
patentability. In This case Respondent filed a patent application relating to his invention of a human-made, genetically
engineered bacterium capable of breaking down crude oil, a property which is possessed by no naturally occurring
bacteria. A patent examiner's rejection of the patent application's claims for the new bacteria was affirmed by the Patent
Office Board of Appeals on the ground that living things are not patentable subject matter under 101. The Court of
Customs and Patent Appeals reversed, concluding that the fact that micro-organisms are alive is without legal
significance for purposes of the patent. In this case patent claims were of three types: first, process claims for the method
of producing bacteria; second, claims for an inoculum comprising a carrier material floating on water, such as straw and
the new bacteria; and the third, claims to the bacteria themselves. The patent examiner accepted the first two claims but
rejected third claim on the basis of product of nature and living things are non patentable under US laws.[18]

US Supreme Court held that a live, human-made micro-organism is patentable subject matter under 101. Respondent's
micro-organism constitutes a "manufacture" or "composition of matter" within that statute. In choosing such expansive
terms as "manufacture" and "composition of matter," modified by the comprehensive "any," Congress contemplated that
the patent laws should be given wide scope, and the relevant legislative history also supports a broad construction. While
laws of nature, physical phenomena, and abstract ideas are not patentable, respondent's claim is not to a hitherto unknown
natural phenomenon, but to a non-naturally occurring manufacture or composition of matter - a product of human
ingenuity "having a distinctive name, character [and] use."[19]
Supreme Court added that genetic technology was not unforeseen when Congress enacted 101 require the conclusion that
micro-organisms cannot qualify as patentable subject matter until Congress expressly authorizes such protection. The
unambiguous language of 101 fairly embraces respondent's invention. Arguments against patentability under 101, based
on potential hazards that may be generated by genetic research, should be addressed to the Congress and the Executive,
not to the Judiciary.[20]

Further said that Chakrabarty had produced a new bacterium with markedly different characteristics from any found in the
nature. The Court went on to say that the test for determining whether an invention falls within the scope of product of
nature is whether the invention in question involves a hand of man. The Court further said that micro-organism were
patentable as manufactures or compositions of matter and that congress dide not intend to keep them out of the scope of
patentable subject matter.[21]

Europe
Europe was ahead of the United States regarding issue relating to patenting of living beings. In 1969 in Germany, a patent
was claimed on a method for breeding doves with red plumage, German patent office rejected the patent on the ground
that the method was not repeatable and the Supreme Court confirmed the same. It was the first case, which opened the
door for patenting biotechnology inventions. Further, in the early 1970s, five years before the United States the German
Federal Supreme Court upheld patent protection for new micro-organisms if the inventor were to demonstrate a
reproducible way for its generation.[22] In the meantime the European Union adopted the European Patent Convention
laying down a comprehensive framework on the law relating to patents. The convention excludes patents for essentially
biological processes but it does not exclude patenting of products of non- essentially biological processes.

It was held in T356/93 that micro-organisms are patentable as products of microbiological processes,[23] and micro-
organisms were defined as generally unicellular organisms with dimensions beneath the limits of vision, which can be
propagated and manipulated in laboratory.[24]

Conclusion
The fact that the subject matter of many products of biotechnology is incredibly complex, particularly where the subject-
matter is a living organism. Indeed, they have not been constructed by man, such subject matter truly is a "black box" and
therefore virtually impossible to describe. Complete disclosure of an invention is a fundamental requirement in order to
obtain patent protection. In all other technologies, every aspect of the elements of invention are known.[25] In
jurisdictions which allow for the patenting of biotechnology a concession to this fundamental requirement is made,
namely, allowing for the deposit of samples of the patented subject matter. Such deposits are part of the "complete
description" of the invention and the deposit is said to "supplement" the complete description.

A further feature of invention in biotechnology which distinguishes it from other fields of technology, and which flows
from the fact that the subject matter is so complex, relates to the fundamental requirement that all patentable invention
must be non-obvious. This assessment is made by a mythical "technician skilled in the art." Invention in biotechnology
typically draws on a number of discrete fields of technology. This makes identification of the "skilled technician"
challenging and leads to the concern that the "technician" may not be properly identified.

A further complicating factor peculiar to biotechnology, arises in respect of the fundamental requirement that all
patentable invention must be new. This is a problem in biotechnology because the object of much effort in biotechnology
industries is to produce synthetic versions of substances which exist in nature. If the substance exists in nature, arguably a
synthetic version is not "new." Such fundamental issues raise the following question:
If biotechnology industries are to continue to grow, do the means for acquisition, and the very nature of a bundle of patent
rights for advances in the biotechnology field need to be redefined?

Categories of inventors in biotechnology – patent in computer programmers.

What Is a Patent?

Patents are a part of intellectual property law that work to help protect the innovative processes across all different fields.
A patent is published for the public's inspection, so many times patents are used in research projects. Sometimes
individuals or companies can purchase rights to a patent if they want to use or produce the protected invention.
If a person invents an original product or process, they can gain a kind of monopoly right over that invention to prevent
others from making or using it without their permission. This creates incentive and reward for ingenuity.
Patents don't last forever, and they must be granted by the State. If a person wants to protect their invention, they'll need
to fill out a patent application and go through the process of obtaining a patent through the USPTO (United States Patent
and Trademark Office). If a patent is granted, the details of the invention will be disclosed to the public, but it will also be
protected from patent infringement.

What Is Biotechnology?

Biotechnology is a branch of science that focuses on developing different techniques for applying various biological or
natural organisms and processes to products, creating products, or materials for use in certain industries and the realm of
medicine. Basically, biotechnology tries to find ways to use living organisms practically in industry.
Inventions in biotechnology, whether new processes or discoveries have a right to intellectual property protection.
Various groups, especially religious groups have raised controversy over the patenting of biotechnological inventions
because they involve living things. Many of the inventions and processes used in this field include the DNA
manipulation. Certain organizations view this kind of messing with the natural order of things as unethical.

The Nature of Biotechnology Patents

Patent law has been around for almost 500 years, but patents in the field of biotechnology only began surfacing at the end
of the 19th century, as scientific and industrial advancements were taking flight. Biotechnology patents have become
somewhat of a hot topic over the years, gaining high profiles in some cases. Due to the delicate and complicated nature of
this particular field of study, the patenting process is more involved than in other fields.
Many believe that patents are what encourage growth and innovation in a particular field, so they encourage more and
more inventors to patent their discoveries. Much is learned through the patenting process, especially because it leads to
the publishing of such discoveries so that other scientists can learn more. As certain groups attempt to discourage certain
biotechnology patents, others argue that they are a vital part of the thriving economy and intellectual advancements.
Different countries vary on their laws regarding the patenting of biotechnology. Depending on the country in which a
scientist hopes to patent their invention, they will face specific standards for that country. This is especially important for
those looking to patent their invention in multiple countries. Just because a patent was granted in the US, doesn't mean
every other country would also grant a patent for the same invention.

Types of Biotechnology Patents

In most every field of research, there are two basic types of patents:

 Product patents.
 Process patents.

This also applies to biotechnology. An inventor can protect a certain product they've created or a new process they've
made. Because of the nature of biotechnology, there are some rules regarding what can and cannot be patented. Simply
put, inventions are patentable but discoveries aren't
Discoveries in biotechnology are nature things or processes that essentially belong to nature, so they cannot be "owned"
by one person through a patent. However, if you come up with a specific product or process through the use of natural,
living things, it's worth looking into a patent for it. This can lead to some complicated cases when trying to patent a
biotechnology invention.
If you need help with understanding the nature and types of biotechnology patents, you can post your legal need on
UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come
from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on
behalf of companies like Google, Menlo Ventures, and Airbnb.

What is a Software Patent?

A software patent is a property right that protects computer programs or any performance of a computer from computer
programs. A software patent is considered a type of utility patent with no true legal definition. Software patents are a
topic of controversy both in the United states and around the world.
A software patent differs from a software copyright. Both protect the product, but a copyright only covers the expression
of an idea. For example, it might cover only the exact written code of a software program. Software patents and software
copyrights are both a part of intellectual property law.
According to US law, software (sometimes legally called computer implemented processes) is a patentable item.
However, like any other invention, the software must meet certain criteria.

 There is an industrial or commercial way to use the invention. That means that the software is used with a
machine. This ensures that you're are not trying to patent a "pure business method," such as a process that takes
place in your head.
 The invention is new, unique, and not obvious to anyone with average skills in your industry.
 The patent application is filled out in detail. All the information about the product— known as the disclosure —
meets the guidelines that the United States Patent and Trademark Office (USPTO) sets out.

Getting a Software Patent

Consider Whether You Need a Patent
151 countries are part of the Berne Convention for the Protection of Literary and Artistic Works. That just means that, in
these countries, copyright protection is automatic. When you create your software, it already has a measure of protection.
This protection lasts for the rest of your life and up to seven decades after your death.
Patents, however, are much more complex and expensive. You must apply for a patent in each country where you want
protection. If you want international protection, you have to submit a special patent application under the Patent
Cooperation Treaty. Then each region or country considers and grants the patent according to its own laws.
Despite the complexity of the patent application process, many software developers still choose to apply for patents
because they offer more protection.
Define Your Software
If you have a piece of software that you would like to get a patent for, look at your project as if you were an engineer. Be
able to clearly define your invention's overall design down to the smallest detail. With this detailed understanding, you
and your patent attorney can get the best protection possible for your software. You might ask yourself the following
questions.

 What is unique about my software?

 What is my software's desired function?
 How does the software handle information?
 What is the user interface like?
 What problems does my software solve?
 What parts of my program do I want to protect with a patent?

The software patent application requires you to see your invention from different viewpoints. You'll have to look at it
from the perspective of the end-user and a computer. You also have to look at it from a systematic, architectural point of
view.
Perform Research
Before you start on the patent process, do a patent search. This helps you learn about similar software programs, and it
gives you clear ideas on what is unique about your software. The search also helps you decide if the effort it takes to get a
patent is worth it. If there are already a lot of patents that cover programs like yours, you won't be able to get a broad level
of protection. The time and cost associated with the patent process may not be worth it.
Keep in mind that patent research presents its own expense if you are going to do it properly. You have to sort
through existing patents and try to decide if the owners of those patents would view your product as an infringement.
Patent research is a tricky process, so cooperate with your lawyer during the search. At the end of your search, you should
have a detailed report about other patents that may relate to your invention, and that information helps you fill out your
own patent application.
Work on the Application
A solid software patent application has the following parts:

 A description of the system in which your software works

 A flowchart that gives a general overview of how the software will work
 More flowcharts that give many details about how your software will reach its goal

Flowcharts will make it easier for you and your audience to understand your invention in-depth.
Rely on Your Attorney
A qualified lawyer coaches you through each step of the patent application process. Your attorney is especially useful
when you're drafting your application. This step is so important because after you file the application, it is difficult to
change it. The claims describe the specific parts of your software that you want the patent to protect, so they are an
especially important part of the process.
When you and your attorney work together to fill out the application, it is less likely that the USPTO will reject it.

Why Getting a Software Patent Is Difficult

You face some unique challenges if you wish to get a software patent for one of your inventions. The first challenge is
that defining your invention can be difficult, especially if don't have experience with software patent applications.
The "Machine or Transformation Test"
Consider the case Bilski v. Kappos, which settled in 2010. Before that, the laws about what types of items qualified for a
patent were not as clear as they should have been. This case set up the "machine or transformation test," which meant that
the software — or processes — had to be tied to a machine or turn one thing into another.
But it also means that your invention shouldn't simply be for use with a machine. "More than insignificant extra-solution
activity" should be involved. This means that the software or process should play an important part in achieving a goal.
It is possible that processes that do not pass the "machine or transformation" test could get a patent, but realistically, you
should view passing this test as a requirement for your invention.
Design Is More Important Than Code
You do not need to write the code for a software program before you can get a patent for it. This is because, legally
speaking, code is a language. The software's design and architecture, which are a "road map" for what you want your
program to do, is the important thing.
A properly done patent application thoroughly describes how the computer code will carry out a certain task. The
application describes how a programmer can reach a desired result with a code that makes that possible.

Issues With Software Patents

Here are a few reasons why software patents are such a highly debated topic:

 Although US law states that abstract ideas cannot be protected by patents, this is not the case everywhere. In
places where ideas that have business value can be patented, the definition of an "abstract idea" is not always
clear.
 In the worldwide marketplace, there is not a widely recognized difference between patented and non-patented
software. For example, in the European Union, software can't receive patents. But there has been further
discussion of the issue and an attempt to standardize instructions across the EU.
 Legal and technical programs can hinder innovation and patentability.

Another problem is that because US patent law is fairly uniform across all types of inventions, problems arise. Software
is different from other innovations because it has a short cycle, which means that most software is only profitable for a
few years. It may take even longer than that to get a patent, so in many cases, the process is not worth it.
Software is also unique in that developers continue to create even without getting a patent. Copyrights and Trade
Secret Protection may be enough motivation to innovate even when getting a patent isn't possible. Also, the widespread
use of open source software illustrates that software continues to come into existence without any intellectual property
protection at all.
A third reason software is unique in the world of patents it that these patents are often overly broad. Related to this is the
fact that software is difficult to describe in precise terms.

The History of Software Patents

Software patents have been a topic of debate for decades. Originally, the USPTO avoided granting patents to inventions
that used computers. In 1968, they created guidelines saying that computer programs were unpatentable. However, via a
long series of court cases, this viewpoint gradually changed. These cases included:

 Gottschalk v. Benson
 Parker v. Flook
 Diamond v. Diehr
 State Street Bank & Trust v. Signature Financial Group

In 1996, the USPTO wrote "Final Computer Related Examination Guidelines." However, those guidelines were far from
final. The guidelines are constantly changing as the result of cases in the Supreme Court and the Federal Court of
Appeals. Guidelines issued in 2013 gave direction on both hardware and software patents. One of the primary purposes of
the guidelines is to help the USPTO decide whether specific inventions qualify for patents.
Temporary guidelines were released in late 2014 because of the case Alice Corp v. CLS Bank. The Supreme Court
decided that software for managing settlement risk did not qualify for a patent. It was labeled an abstract idea.
In the Alice case, the court decided that a claim on the patent application focused on an abstract idea. This is notable
because most patents have some sort of abstract idea in them, but in this incident, the claim was specifically directed at
that idea. The court's decision involved a lot of legalese, but the end result had a vast impact on the world of software
patent law.
The Alice case set a precedent. If a piece of software improves the way a computer or another device functions, it is more
likely to qualify for a patent. This case, as well as the Bilski v Kappos case, contributed to the ever-changing guidance on
what is patentable and what is not. Many patents were labeled invalid after the Alice case.
After software was first recognized as deserving of patents, the USPTO still didn't research as well as it should have when
reviewing applications. This resulted in some patents being issued for inventions that did not truly deserve it.

Why Do Some People Feel That Software Should Not Be Patentable?

Many believe that software patents are a threat to innovation. This is because new programs often rely on older, patented
programs to work well. Patents can interfere with developers' ability to put existing programs to use. For example, a
smartphone developer may be stopped from using — and perhaps improving on — a certain type of menu because a
competitor holds the patent for that component.
Thousands of software patents are in effect, and each one gives its holder the right to stop others from using that software
program for 20 years. This puts limits on innovation.
One group, End Software Patents, lists some reasons why they believe that software should not be patentable.

 Software patents make it difficult to standardize across different devices, such as computers and smartphones.
This leads to compatibility problems.
 These patents can discourage or even block people from developing software.
 Software patents create a risk to companies. If they accidentally infringe on a patent (which means they
created something that fit the claims in a patent that already existed), they could face serious fines. This danger
makes small businesses shy away from creating new software. This means that a handful of companies come to
dominate the industry.

According to one estimate, more than $11 billion is spent every year on software patent lawsuits. The suits affect not only
technology companies but many other types of businesses.
It is also worth noting that many modern conveniences, such as email and the internet, came into existence before it was
widely accepted that software is patentable. The creators of these inventions did not need patents to innovate.
Are Software Patents Going to End?

In October 2016, a decision by the US Court of Appeals for the Federal Circuit weighed in on the debate over whether
software should qualify for patents. The ruling said that such patents are a "deadweight loss on the nation's economy" and
threaten the right of free speech that the Constitution grants.
The ruling found that three software patents, held by Intellectual Ventures, were invalid because the patented material
wasn't eligible for patent protection. Intellectual Ventures had a reputation as a "patent troll," which means that it bought
patents and then sought to take advantage of other companies that were supposedly infringing on those patents.
The judge in the case even went so far as to say that the Alice decision mentioned earlier effectively put an end to
software patents. He also stated that the monopolies that patents grant limit free speech. Even copyright law has a
provision for "fair use," and patent law ought to include something similar. He suggested that software should only be
eligible for copyrights, not patents.
Another problem with patents that the case touched on is that many companies race to patent software before the software
is fully developed. This is expensive and discourages innovation by other companies.
Software remains patentable, but that may not always be the case.
2016 Cases that Support Software Patents
Although many patents were invalidated after the Alice ruling, three of those were later found to have been wrongly
invalidated. These may have set up a stronger future for software patents.
Those three cases were:

 Enfish v. Microsoft
 McRO v. Bandai Namco Games America
 Amdocs v. Openet Telecom

Software Patents and You

Software patents and the rules around them are difficult to understand. By going to a lawyer for help, you are teaming up
with an expert who keeps up with the constantly shifting landscape of intellectual property law. If you need help with
your software patent, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top
5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and
average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and
Airbnb.

Unit 3 : Trade mark

Purpose of protecting trade mark – Registration –
What is a trademark?
A trademark is used to let people know the source of goods. Nike® is a trademark for athletic shoes.
A servicemark is used to let people know the source of services. Google® is a servicemark for various services.
On our website, we use “trademark” to indicate both trademarks and servicemarks, because that’s what most people use
when talking about marks. A trademark can be one word or a few words. It can be a design, alone or with words.
Here are examples of some great trademarks other businesses own and use:

What Is Trademark Protection?

Trademark protection refers to safeguarding intellectual property rights to protect a trademark from counterfeiting and
infringement. A trademark is an established or legally registered mark that identifies a manufacturer's unique goods and
services. The owner of a distinctive mark can apply to receive trademark protection. However, trademark protection also
requires you to continually use the mark in commerce.
To protect your trademark from infringement and counterfeiting, you need to make sure your mark is not used by others,
and you need to bring legal charges against those who use your mark without permission. By conducting research, you
can develop a strong trademark or service mark that other competitors will find it difficult to steal.
Once you start using your trademark, you will need to focus on your strategy for defense:

 Using the mark correctly and regularly

 Keeping a lookout for potential counterfeiting or infringement
 Taking action against those who don't respect your rights to the trademark
How to Choose a Strong Trademark

If you're launching a new business, product, or service, you should choose a trademark with the strongest legal status. For
example, a generic term such as sandwiches can't be protected by a trademark. A descriptive name such as Speedy Bikes
may be eligible for trademark registration, but you will need to make sure that no one has already registered that
trademark.
You will receive strong protection for a trademark that creatively and indirectly suggests the nature of your business,
products, or services. Some examples of good trademarks include the following:

 Blu-ray
 Coppertone
 Pasta Pomodoro

An arbitrary or fanciful trademark is one of the strongest types of trademarks eligible for protection. An example of an
arbitrary mark is an English word used in a new context. For example, Apple is the name of a company that sells
smartphones and computers. Blackberry refers to a mobile phone for business.
A fanciful mark is distinctive due to the use of fictitious names. You can find fanciful marks everywhere and in all
industries. Some examples of fanciful marks include the following:

 Kodak
 Viagra
 Verizon
 Prozac

A good trademark is one that no one else is using already. You can use the U.S. Patent and Trademark Office
(USPTO) website (uspto.gov) to do a search of all registered trademarks. However, you should keep in mind that you
won't see common law trademarks. These trademarks get created following a series of rules governed by states, not
federal governance. A business has the legal right to a common law trademark if it is the first to use it.
Before you attempt to register a new trademark, you want to make sure that you're not infringing on the trademark of
another person. You can spend $100 to $400 for the services of a professional trademark search firm. You can count on
such firms to do more thorough research for potential infringement. Another option is to have a trademark attorney
conduct research for you.

How to Maintain Your Trademark for Protection

Once you have a trademark through registration or common law use, you will need to take steps to protect the trademark.

 One of the best methods for protecting your trademark is simply using the mark regularly. Every five or 10 years,
you will need to pay trademark renewal fees to the USPTO.
 You should also display the correct sign for your trademark. For example, you should display TM for a common
law trademark and SM for a common law service mark. If your mark is federally registered, you should
display the federally registered trademark symbol (®) on any marketing materials and products.

Keep in mind that you don't need to include the TM or registered trademark symbol each time you mention the name in
your company. However, you should display the mark often, especially in the most prominent places, such as products
and marketing materials. You will notice that corporations use registered trademark symbols about 50 percent of the time.
Include trademark language on all publications and packaging, including websites.

Trademark Protection Length

Once a trademark is successfully registered with the U.S. Patent and Trademark Office's Principal Register, the owner of
the mark will receive a certificate. This certificate of registration is valid for 10 years. However, if the owner does not file
a statement within five or six years of the mark's registration date, the trademark's registration may expire. The purpose
behind this statement of use is to inform the USPTO that the mark is being used in commerce.
The owner of the mark can renew the original registration as many times as need for additional 10-year periods.
Trademark owners need to complete their renewal applications and file them with the USPTO. If the owners fail to
complete the renewal applications, all the special benefits of registration with the federal government will cease.
However, the owners do not lose all rights to their marks.
Complete procedure for Trademark Registration in India
A trademark is a visual representation of a name, word, label, device or numeric characters utilized by a business to
differentiate its goods and/ or services from other similar goods and/ or services deriving from a different business. A
trademark works as an exclusive identity of the goods and/ or services that a person is offering/ selling from other such
goods/ services.

A trademark, once registered, is an untouchable asset or intellectual property for a business and is used to safeguard the
company's investment in the brand or ideogram.

A trademark are registered once it is distinct for the goods and services that are being provided. Tendered trademarks that
are similar or identical to an already existing registered trademark cannot get registration. Besides this, trademarks that
are deceptive, generic, offensive, similar, contains exclusively protected emblems, etc. cannot be registered either.

In India, trademarks are registered by the Controller General of Patents Designs and Trademarks, Ministry of Commerce
and Industry, Government of India. Trademarks in India are registered under the Trademark Act, 2016 and it authorises
the trademark owner the right to sue for damages when contraventions of trademarks occur.

Following the registration of the trademark, the symbol can be used by the owner and the said trademark registration will
be valid for a fixed period of 10 years. However, the registered trademarks approaching their expiry can easily be
renewed by applying for a trademark renewal application for an extended period of another 10 years.

Benefits of a Trademark registration

The greatest benefit to having a registered trademark is to be able to safeguard one’s brand as well as the business by
instrumenting to the compassion of one’s business. In addition to this, having a strong brand can act as a direct link
between the customer and the product by making sure they are reliable and associated to the business for a lasting period
of time.

There are many other benefits, for instance,

 A trademark registration gives credibility to the source of the good and service.
 A registered trademark guarantees quality good and service
 A registered trademark assists in the advertisement of goods as well as services.

Significance of a Trademark registration

As it is clear from above how advantageous it is to register a trademark while running a business, let us now understand
the significance of the registration:

A TM provides exclusive identity

Ever since the market place has got crowded with numerous companies and brands, it has become close to impossible to
differentiate among them. Therefore, the only demarcation between companies for exclusivity to attract customers to be
able to stand out is by getting an exclusive trademark registered for one’s brand and consequently build the business’
prestige over it.

A TM is never- ending
As mentioned above, registration of trademarks come with a validity of 10 long years, which can further be renewed very
easily after every 10 years before expiration and therefore, a trademark can last as long as the business is alive or even
longer!

A TM works as a shield
For every entrepreneur, it is fundamental to make sure that his/ her brand is safeguarded against competition. Now, in
case the trademark that the individual has been working to build already has a registered trademark by someone else, then
not only does that individual lose business and goodwill in the market but also loses the privilege to prohibit others from
using the same trademark. Therefore, shielding the trademark shall safeguard the trademark/ business, which further
assists the individual by preventing others from using similar trademark.

A TM is economical
The cost of a trademark registration is only a one- time cost. Additionally, the time period and procedure of a trademark
registration has also been reduced satisfactorily. A trademark registration now takes about 6 months to 1 year to process..

Moreover, once the trademark is registered, the same is valid for a time period of 10 years which can be easily renewed
every 10 years before expiry of the trademark.
A TM is an asset
A registered trademark is an absolute asset for the business/ brand/ company which directly brings home goodwill. As a
result, the desirability of a trademark thrives with the growth of the business. In fact, a registered trademark can be sold,
transferred or purchased or even be utilized as a security to obtain a loan, which is similar to any of the other tangible
assets.

Step by step procedure to register a trademark

The process to get a trademark registered involves filing of the trademark registration application, examination of the
trademark, publication or advertisement of the trademark, opposition (objections) if raised/ found, registration of the
trademark and renewal of the trademark after every 10 years.

The procedure to register a trademark is simple, however, it is recommended to employ/ get assistance from an expert
trademark lawyer for the registration procedure to make it easier and dependable.

Step 1: To search for a trademark

The applicant must be careful while choosing his/ her trademark. Since there are already tons of different types of
trademarks available, once a trademark is chosen, it is essential to carry out a public search on the trademarks database
which is available with the Trade Marks Registry, to ensure that the trademark is unique and that there is no other
trademark which is either similar or identical to his/ her trademark.

The trademark search discloses all the types of trademarks that are already available in the market, either registered or
unregistered. The search further tells whether the applied trademark has a competition for the same trademark.

Step 2: To file the trademark application

The application for registration of the trademark can either be filed in a single- class or a multi- class, totally depending
on the goods and services the business pertains to.
The registration application form is Form TM- A, which can be either filed online through the official IP India website or
physically at the Trade Marks Office depending on the jurisdiction of the trademark.

The application for trademark registration has to be supported with multiple documents, furnishing complete details of the
trademark for which the registration is sought. Moreover, in case the applicant is claiming prior use in the trademark, then
a user affidavit has to be filed, supporting the usage along with the evidence of its prior usage.

Step 3: Examination of the trademark application by the government authority

Post the filing of the trademark application, a mandatory examination report is issued by the Examiner after an extensive
examination of the trademark application, in consonance with the guidelines of the Trade Marks Act, 2016.

The examination report by the authority may or may not disclose some objections which can either beabsolute, relative or
procedural. This examination report by the Trademark Authority is issued within a period of 30 days of having filed the
registration application.

A reply to the examination report is required to be filed within a period of 30 days after receiving the report, asserting the
arguments and evidence against any objections to waive them off.

Step 4: Post- examination

After the filing of the reply to the examination report, the Examiner (Trademark Authority) may appoint a hearing if the
Examiner is not entirely satisfied by the reply filed, or in case the objections are not met. After the said hearing, the
Examiner may accept the mark and subsequently forward the application for publication in the journal, or reject the said
application if any objection still persists.

Step 5: Advertisement of the trademark

Once the registration application has been accepted, the said trademark is advertised and also published in the Trade
Marks Journal for a period of 4 months. The aim behind the publication and advertisement is to invite the general public
to file an opposition against the registration of the mark.
The Trade Marks Journal is available on the official Registry website, which gets updated every Monday of the week.

Step 6: Opposition from the general public

Post the advertisement and publication of the trademark in the journal, any aggrieved person can file a notice to oppose
against the registration of the advertised/ published trademark. This notice to oppose the trademark has to be filed
vide Form TM- O within 4 months of the mark’s publication in the Trademark Journal. In case the applied for trademark
is opposed/ objected, then the due process of law has to be followed, which includes filing the counter- statement
application, evidence as well as hearing in order to get the trademark registered.
Step 7: Registration of the trademark
The final step towards the entire procedure is registration, where the application proceeds to registration after conquering
the objection and/ or the opposition against the said registration of trademark.
Besides this, in case there has been no objection against the registration of the trademark during the advertisement/
publication period of 4 months, then the trademark is issued an auto- generated registration certificate within 1 week.
Once the registration is complete, it is valid for a period of 10 years, after which it would be required to be renewed
within a prescribed time period.
What are the different types of trademark units in India?

In India, trademarks can be registered in numerous types, for instance, logo, label, word mark as well as device mark. As
a result, the decision to register the trademark as a word mark or a logo is a difficult decision to make.

Word Mark
This easiest of the other available trademarks, a word mark indicates the name of the brand, for instance, Jio or Britannia
has trademarked only the word, which is known as a word mark.

A word mark self- registers the word. After a trademark gets registered as a word mark, the applicant has an absolute right
to utilize and represent the word in any format or font which allows it broader protection, including exclusive rights to the
word as a whole and describe it in numerous formats, irrespective of its style, for all the goods and services pertaining to
the mark.

Logo
A logo, on the contrary, provides the trademark holder the rights in the combination of images, words and designs
considered together. For instance, Nike, Adidas etc. Besides this, if the business logo is undisputedly recognized by the
viewers/ customers, the applicant would want to file a trademark for that specific logo.

The shield provided to the words in a logo mark are restricted when compared with the standard word marks because the
rights in a logo are only legitimate as a whole. So, if a person desires to register a distinct designed appearance or a union
of stylized words and design, registering a trademark as a logo would be suitable.

Logo Composite Mark

Ordinarily, a brand name of a business comprises both of words as well as logos. For instance, Jack & Jones (a global
apparel manufacturer) has an intricate logo composite mark, which incorporates even the placement of its label on the
rear of its jeans.The finest way to safeguard the intellectual property in such situations would be to file the trademark as a
word mark as well as a logo. But, because filing several trademark applications is a costly phenomenon, it is always
recommended to register the trademark as a word mark.

A distinct trademark application for word as well as logo must be filed to achieve the comprehensive shield. However, it
may not be very cost- effective for start-up businesses. Therefore, it is recommended to register the trademark as a word
mark, providing the applicant the next best shield against any potential infringement.

Documents required for a trademark registration

A trademark registration is a significant procedure via which a brand/ business can safeguard itself from undesired use as
well as infringement.

With time, the trademark registration procedure has been simplified by the Government of India to empower
entrepreneurs to comfortably procure trademark registration for their brands within a couple of months. Below are the
multiple documents required to obtain registration of trademark in India.

Note: In the course of the registration of the trademark application procedure, it is not mandatory to submit original
documents. Scanned copies of the original documents suffice the requirement.
Documents required in individual & sole proprietorship
Any person (applicant)- whether an Indian National or a Foreign National, can very conveniently register a trademark in
India. Thereis no necessity for a legal entity or a business entity to get a trademark registered.

Besides this, the documents needed to get a trademark registered in the name of a proprietorship are identical to that of
an individual as under:
 Copy of the proposed logo, ideally in black and white (which is optional). However, in case the logo is not
provided, the trademark application can be filed for the word.
  Duly signed Form- 48. This form is an authorisation from the applicant to a Trademark Attorney to file the
trademark registration application on his/ her behalf.
 Copy of the identity proof of the individual applicant or the proprietor which may include: passport, aadhaar card,
PAN card, etc.
 Copy of the address proof of the individual applicant or the proprietor which may include latest electricity bill,
phone bill, etc.

Documents required in partnership / LLP / company - Small Enterprises or Start-ups

In India, the registration fee for trademarks ranges between Rs. 4500 to Rs. 9500.
For start-ups, small enterprises, individuals and proprietorships, the lower trademark registration fee of Rs. 4500 is
applicable and for all other business entities, the trademark registration fee as set by the government is Rs. 9500.

Now, to fall under the category of a small enterprise, the individual applicant is required to provide the
UdyogAadhaar registration certificate. Also, in addition to the UdyogAadhaar registration, the following mentioned
details are required.

Partnership / Company / LLP

In the event of a partnership firm or an LLP, the entrepreneur/ applicant is required to submit the following documents:
 Scanned copy of the logo (optional)
 Duly signed Form- 48
 UdyogAadhaar Registration Certificate
 Partnership Deed or the Incorporation Certificate
 Copy of identity proof of signatory/ applicant
 Copy of address proof of signatory/ applicant

Documents required for other applicants in a trademark registration

All other applicants, including companies that do not have UdyogAadhaar registration, will have to submit the following
documents to obtain trademark registration in India.
 Scanned copy of the logo (optional)
 Duly signed Form- 48
 Partnership Deed or the Incorporation Certificate
 Copy of identity proof of signatory/ applicant
 Copy of address proof of signatory/ applicant

Assignment and licensing of registered marks –

Just as in the case of physical property such as land, every owner of a Brand or Trademark has the right to sell, license,
transfer, etc. its respective brand or trademark in accordance with legal procedures. A brand or Trademark owner can
transfer his rights with respect to his trademark either by way of assignment or by licensing. In India, The Trade Marks
Act, 1999 deals with assignment as well licensing of trademarks.

To put it summarily, in case of an assignment of a trademark, there is a change in the ownership of the registered brand
and in case of licensing, the right in the trade mark continues to vest with the original owner but only few restricted rights
to use the brand/mark are given to the third party.

ASSIGNMENT OF A TRADEMARK
Assignment of a trademark occurs when the ownership of such mark as such, is transferred from one party to another
whether along with or without the goodwill of the business. In case of a registered Trademark, such assignment is
required to be recorded in the Register of trade marks.

A mark may be assigned or transferred to another entity in any of the following manners:

 Complete Assignment to another entity- The owner transfers all its rights with respect to a mark to another
entity, including the transfer of the rights such as right to further transfer, to earn royalties, etc. (E.g. X, the
proprietor of a brand, sells his mark completely through an agreement to Y. After this X does not retain any rights
with respect to the brand)

 Assignment to another entity but with respect to only some of the goods/ services- The transfer of ownership
is restricted to specific products or services only. (E.g. P, the proprietor of a brand used for jams and jellies and
dairy products. P assigns the rights in the brand with respect to only dairy products to Q and retains the rights in
the brand with respect to jams and jellies.) This is called partial assignment.
  Assignment with goodwill- Such assignment is where the rights and value of a trademark as associated with the
product is also transferred to another entity.(E.g. P, the proprietor of a brand "Shudh" relating to dairy products,
sells his brand to Q such that Q will be able to use the brand "Shudh" with respect to dairy products as well as any
other products it manufactures.)

 Assignment without goodwill- Such assignment also referred to as gross assignment, is where the owner of the
brand restricts the right of the buyer and does not allow him to use such brand for the products being used by the
original owner. Thus, the goodwill attached to such brand with respect to the product already being sold under
such brand, is not transferred to the buyer. (E.g. P, the proprietor of a brand "Shudh" relating to dairy products,
sells his brand to Q such that Q will not be able to use the mark "Shudh" with respect to dairy products but can
use this brand for any other products being manufactured by it. In such case the goodwill which is associated with
brand "Shudh" for dairy products is not transferred to Q and Q will be required to create distinct goodwill of
brand "Shudh" for any other product or service like Restaurant wherein Q proposes to use this brand.). In many
jurisdictions like United States, assignment of mark without goodwill is not allowed at all. India on the other hand
allows assignment without goodwill.

Further, in case of registered Trademarks, the Trade Mark Act 1999 also puts certain restrictions on the assignment of a
registered trade mark wherein there exist possibilities of creating confusion in the mind of public/users. Such restrictions
are:

 Restriction on assignment that results in the creation of exclusive rights in more than one persons with respect to
the same goods or services, or for same description of goods or services or such goods or services as associated
with each other.
 Restriction on assignment that results in different people using the trademark in different parts of the country
simultaneously.

TRADEMARK LICENSING
The licensing of a mark is to allow others to use the mark without assigning the ownership and the same may be done for
all or some of the goods and services covered. The Trademarks Act does not mention the term 'License', the concept
under the Act is mentioned as that of a 'Registered User'.

Trademark licensing is advantageous to both the parties. While the licensor enjoys its rights to the mark by getting the
royalties for its use, the licensee is able to expand its market operations by using the brand and developing its reputation.

In case of Licensing, the licensor is open to license the rights over the trademark in manner it may like. The Licensor can
restrict the rights of the licensee in a trademark or brand with respect to the products or services wherein the licensee can
use such brand, with respect to time for which it can use such mark, with respect to area within which it can use such
mark etc.

AGREEMENTS FOR TRANSMISSION

A trade mark is generally assigned by way of a properly executed Trademark Assignment Agreement which pertains to
the transfer of the mark from one person or entity who is the owner to another. It is to be ensured when drafting such
agreement that:

 the rights of the owner of the brand are not detrimentally affected due to the obligations contained.
 the requirement and decision regarding whether the assignment should be with or without the goodwill of the
business is explicitly mentioned and negotiated
 the agreement should be drafted keeping in mind the purpose of the transaction in question

A mark is licensed by way of aLicense Agreement. As per the Trade Mark Act, 1999, contrary to the requirement in case
of Assignment, the registration of license agreement with the Trademark Registrar of a mark is voluntary and not
compulsory, but it is advisable. Further, like in an Assignment agreement, it is again very important that while drafting a
License Agreement, the rights and duties of licensee are distinctively pre determined and defined. This is important not
only to protect the rights of the Licensor in its own brand and to protect any misuse thereof, but also to secure licensee
with his rights to use such brand.

TO SUM UP..
Assignment and Licensing of brands are considerable issues and proper strategizing may open vistas of opportunities for
all, a licensor, a licensee, an assignor and an assignee. Both concepts involve a degree of planning for the future of the
parties involved and the brand in question. The development of a brand, its propagation and its use, all lie in the hands of
the proprietor of the brand and trademark and assignment and licensing are effective methods to manage the same.
Trade marks in international commerce –
For many businesses, branding plays a vital role in their success. A recognizable brand that consumers can trust helps
companies grow and expand, while also granting staying power as the business moves up the industry ranks. As
companies have expanded internationally, branding power has only increased in importance, leading many businesses to
spend large amounts of resources on the brand. With these large investments, companies view legal protections, such as
trademarks, as an extremely important issue when doing business in a country, or when looking at prospective countries
to enter.

Trademarks are designed to protect words, phrases, or symbols used to identify the source of a product from one business
to another. Trademark laws and regulations vary from country to country, so for international businesses, attention to
detail is a must. Businesses often look to register their brand not only in the countries that they currently do business in,
but also countries they see as possible future markets for growth. One way to do this is through the Madrid System, which
allows a business to file their brand internationally in 96 participating countries. The system is maintained and enforced
by the World Intellectual Property Organization, and greatly eases the burden on businesses by forcing only one
application in one language, instead of applying in each country separately.

In the age of technology and the internet, trademark and intellectual property laws have become very important to
international business. Companies on opposite sides of the globe can now compete head to head against each other,
substantially increasing the negative effects of a foreign business stealing your brand. Filing for trademarks
internationally gives businesses the legal standing to fight companies looking to capitalize on an already established
brand. Filing also helps companies establish a brand strategy, which is crucial when looking to expand a business
internationally.

Disincentiveness – Deceptive similarity – Infringement and remedies.

Disincentiveness
A “Deceptively similar” trademark is a concept which can be understood as the trademark created, almost similar or a
look-alike of an already in existence trademark in order to deceive and create confuse among the customers. This concept
of deceptive similarity has been discussed in The Trade Marks Act, 1999. According to Section 2(h) of the Act a
trademark must deemed to be deceptively similar to another trademark if it is nearly resembles with the other mark as
likely to deceive or cause any confusion in the mind of others.

Concept of Deceptive Similarity

The concept of deceptive similarity has widely recognised as one of the ground for trademark infringement under various
trademark regimes. Under Indian legal system, the deceptive similarity is also considered as the ground for not granting
a Trademark registration to an applicant by the Registrar of Trademarks.

However, the Trademark Act does not ascertain any particular criteria which can decide the ambit and scope of this
phrase “deceptive similarity,” In order to remove the gap, it is necessary to note a judicial stand on the cases regarding the
said matter. For this, the Indian Judicial Courts have dealt with various cases providing with landmark judgments and
guidelines in the matters of deceptive similarity.

For adjudicating cases of the intellectual properties and deceptive similarity, principle of phonetic and visual similarity,
reputation, goodwill, test of likelihood, etc. have been recognised as criteria to test the concept of deceptive similarity, by
the Judiciary

Important Cases Concerning the Judicial view in the matter of Deceptive Similarity
The doctrine of deceptive similarity is widely used in the Judicial Courts as the matters of Trademark Infringement.
Trademark plays a vital importance in a business and its goodwill of high need for protecting the trademark from being
misused and infringed. Judiciary has taken an interest in the matters of Intellectual Property Rights and its principles. The
judiciary has also looked into the matter after the problems has aroused regarding the deceptive similarity.

The guidelines have been provided by the judicial decisions in order to make adjudication of cases of trademark
infringement much smoother. It is evident from the cases as some discussed below that the courts are going beyond the
literal meanings of the legislations to provide justice and safeguarding the rights of the traders and protecting the interests
of the customers as well.

Case:- M/S Lakme Ltd. v. M/S Subhash Trading

In this matter, the plaintiff was a seller of cosmetic products under the trademark name “Lakme” and the defendant was
also selling the similar products under the brand name of “LikeMe”. The case of trademark infringement was filed by the
plaintiff. The High Court held that the names have not been in a category of deceptive similarity. These both are two
separate marks with difference in the spelling and its appearance.

Case: – SM Dyechem Ltd. v. Cadbury (India) Ltd

In this matter, the plaintiff has started a business of selling wafers and chips under the trademark name “PIKNIK”. Later
on the defendant has also started business of chocolates under the brand name of “PICNIC”. A suit was filed alleging
trademark infringement has been done. The Court held that the trademarks have not been in a category of deceptive
similarity as they are different in appearance and has different composition of words.

Case:-Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd

In this matter the Hon’ble Supreme Court has held certain guidelines for an adjudication of matters related to deceptive
similarity in trademarks. In this particular matter, the parties of the case were the successors of a Cadila group. The
dispute has arisen on an issue of selling of the medicine by a defendant under the name “Falcitab” which was very similar
to the name of the medicine that has been manufactured by the plaintiff also under the name “Falcigo”.

Both these drugs were used to cure the same disease. Therefore, the contention was raised that the defendant’s brand
name is creating the confusion among the customers. The injunction was pleaded by a plaintiff. As in defence, the
defendant has claimed that the prefix “Falci” has been derived from a name of the disease that is Falcipharam malaria.

The court has observed that because of a diversified population in the country an infrastructure of the medical profession
is not so wide, so there can be probabilities of medical negligence. However, it is important that confusion of trademarks
must be strictly prevented in case of pharmaceuticals and drugs. Therefore, the Court held that while naming the medical
products, one must take more precaution and care. The names of the brand, therefore, being phonetically similar and will
amount to deceptively similar.

M/S Allied Blenders and Distillers Pvt. Ltd. v. GovindYadav&Anr

In this matter, the plaintiff claimed that the defendant’s trademark “Fauji” has defective deceptive similarity as the
plaintiff’s has “Officer’s Choice”. The claim has been made on the ground of similarity of an idea in making of the
trademarks as a word “Fauji” which means a military officer in Hindi translation.

However, both the parties are in the business of alcoholic beverages. Further, packaging of both the bottles was also same.
The trade dress plays a significant role in deciding the cases of trademark infringement. In this matter, the court has held
that there is no deceptive similarity between the trademarks “Officer’s Choice” and “Fauji”. Therefore the trademark
infringement suit case was dismissed.

Conclusion
Trademarks play a vital role in making a brand name popular and goodwill of any business. Not only it does help in
creating the brand value but also it aids in generating the revenue. Being such important, the trademark is vulnerable to
getting infringed or misused. One such way of trademark is making “deceptively similar” trademarks. Hence avoid
deceptive similarity and register your trademark with an unique name. We at Corpbiz will help you in Trademark
registration following simple steps and serve you the best.

Deceptive similarity

Trademarks play an important role in creating the brand name and goodwill of any business. It not only helps in creating a
brand value but also helps in revenue generation. Being of such vital importance, a trademark is susceptible to getting
infringed and/or tainted. One such way of misusing trademark is making “deceptively similar” trademarks. “Deceptively
similar” trademarks can be considered as a trademark that has been created and is to a great extent similar or a copy of an
already existing trademark in order to cheat and confuse the consumers. Deceptive Similarity has been described under
section 2(h) of the Trademarks Act, 1999 whereby it is stated that a mark will be considered to be deceptively similar to
another mark if there is a close resemblance present between them which would likely cause confusion.

The concept of deceptive similarity has been provided clarity by various judicial precedents passed by the various High
Courts as well as the Apex Court. In the case of M/S Lakme Ltd. v. M/S Subhash Trading 1, the plaintiff was trading
cosmetic items under the trademark name “Lakme” and the defendant was also selling analogous products under the name
“LikeMe”. Thus, a case of trademark infringement was filed by the plaintiff. It was held by the Court that the names were
not deceptively similar and they were two separate marks with differences in their spelling and appearance. In SM
Dyechem Ltd. v. Cadbury (India) Ltd.2the plaintiff started a business of chips and wafers under the trademark “PIKNIK”.
Later, the defendant started the business of chocolates under the name “PICNIC”. Therefore, a suit alleging infringement
of trademark was filed. The Court held the marks not to be deceptively similar as they are different in appearance and
composition of words. In Shreya Life Sciences Pvt Ltd v. Magna Biochem Pvt Ltd.3, the Delhi High Court held that an
overall comparison of both the marks, without undue emphasis on points of similarity and dissimilarity should be first
undertaken. A mark should not be dissected or split into its component parts and each part that compared with
corresponding parts of the conflicting mark to determine the likelihood of confusion. The conflicting marks therefore
should be compared in their entireties. In Blackwell v Crabb 4, it was held that Crabbs’ Pickles on a label resembling
Blackwell’s Pickles on a label was not an infringement of the plaintiff label as the customers would identify the goods by
the name of the manufacturer. The elements of the labels were common to the trade.

Therefore, if a proprietor of a trademark wants to take the plea that a deceptively similar mark is being used by someone
else, the mark needs to be a coined work having a secondary meaning since trademark protection cannot be claimed on
generic words. In 2018, in Bigtree Entertainment v Brain Seed Sportainment 5, the Delhi High Court recently denied the
Plaintiffs, proprietors, and owners of the website bookmyshow.com, an interim injunction against the Defendant’s use of
the domain bookmysports.com. The court held that prefix ‘BOOKMY’ of the Plaintiff’s trademark BOOKMYSHOW
was descriptive in nature and not an arbitrary coupling of words and the Plaintiff’s failure to prove that ‘BOOKMY’ has
attained distinctiveness or secondary meaning, led to the dismissal of the application for interim injunction led by the
Plaintiffs.

TRADEMARK INFRINGEMENT AND DECEPTIVE SIMILARITY

There are many types of intellectual property that are recognized all over the world. Some countries recognize more than
others but the most renowned types include copyrights, patents, trademarks, and trade secrets. Trademark is a type of
intellectual property that is legally recognized and comprises of an identifiable sign, design, or expression which
recognizes products or services of a particular source, although trademarks used to recognize services are typically called
service marks. It distinguishes the particular source from other sources present in the market. The trademark can be
owned by an individual, a business establishment, or any legal entity. A trademark can be situated anywhere from a
package, a voucher, a label, or even on the product itself. In the interest of corporate identity, trademarks are usually
displayed on company buildings.

Trademark Infringement1 is a breach of exclusive rights that are linked with a trademark without the consent of the
trademark holder or any licensee. A trademark is infringed when an individual, who, not being an allowable user,
employs an identical/ similar/ deceptively similar sign/ design/ mark to the registered trademark without the approval of
the registered holder of the trademark. Notwithstanding, it is pertinent to note that the Indian trademark law ensures the
vested rights of a former user against a registered owner which depends on common law standards. Under the Indian
Law2 , infringement of registered trademark arises when –

1. A registered trade mark is infringed by an individual who, not being a registered holder or an individual using by way
of permitted use, employs in the course of trade, a mark which is identical with, or deceptively comparable to, the trade
mark in association with goods or services in respect of which the trade mark is registered and, in such manner, as to
depict the use of the mark likely to be taken as being used as a trade mark.

2. A registered trade mark is infringed by an individual who, not being a registered proprietor or an individual using by
way of permitted use, employs in the course of trade, a mark which because ofa) its distinctiveness with the registered
trade mark and the similarity of the goods or services covered by such registered trade mark; or b) its resemblance to the
registered trade mark and the distinctiveness or resemblance of the goods or services covered by such registered trade
mark; or c) its distinctiveness with the registered trade mark and the distinctiveness of the goods or services covered by
such registered trade mark is likely to cause confusion on the part of the public, or which is likely to have a connection
with the registered trade mark.

3. In any case, falling under clause (c) of sub-section (2), the court shall assume that it is likely to cause misunderstanding
on the part of the public.

4. A registered trade mark is infringed by an individual who, not being a registered holder or an individual using by way
of permitted use, employs in the course of trade, a mark which –

a) is identical with or alike to the registered trade mark; and

b) is employed in relation to goods or services which are not alike to those for which the trade mark is registered; and
c) the registered trade mark has prominence in India and the usage of the mark without due cause takes unfair benefit of
or is detrimental to, the distinctive character or repute of the registered trade mark.

5) A registered trade mark is infringed by an individual if he uses such registered trade mark, as his/her trade name or part
of his/her trade name, or name of his/her business concern or part of the name, of his/her business concern dealing in
goods or services in respect of which the trade mark is registered.

6) For the purposes of this section, an individual uses a registered mark, if in particular, he/she –
a) attaches it to goods or the packaging thereof;
b) offers or discloses goods for sale, places them on the market, or stocks them for those purposes under the registered
trade mark, or provides or supplies services under the registered trade mark;
c) imports or exports goods under the mark; or
d) makes use of the registered trade mark on business papers or in advertising.

7) A registered trade mark is infringed by an individual who applies such registered trade mark to a material meant to be
used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such individual,
when he/she applied the mark, had knowledge or had reason to believe that the application of the mark was not properly
authorized by the holder or a licensee.

8) A registered trade mark is infringed by any advertising of that trade mark if such advertising –
a) takes unjust advantage of and is the opposite of honest practices in industrial or commercial matters; or
b) is harmful to its distinctive character; or
c) is against the prominence of the trade mark.

9) Where the distinguishing elements of a registered trade mark comprise of or include words, the trade mark may be
infringed by the verbal use of those words as well as by their visual portrayal, and reference in this section to the use of a
mark shall be interpreted accordingly. In HiralalPrabhudas v. Ganesh Trading Company3 ,Mr. Justice Lentin addressing a
Division Bench adverted to the prior decisions of the Supreme Court on the subject and stated that the Court must be
guided by the following considerations when dealing with the question of resemblance between two marks –

 Marks are remembered by the public by its general impressions or by some noteworthy detail rather than by a
photographic recollection of the whole.  Overall resemblance is the touchstone.
 Marks must be observed from the view and first impression of an individual of average intelligence and imperfect
recollection.
 Overall structure, phonetic resemblance, and resemblance of the idea are vital and both visual and phonetic tests must
be applied.
 The buyer must not be put in a state of wonderment.
 Marks should be compared as a whole, the microscopic examination being impermissible.
 The broad and salient characteristics must be considered for which the marks must not be positioned side by side to find
out differences in design.
 Overall resemblance is sufficient.
Adding to that, indisputably the nature of the commodity, the class of purchasers, the manner of purchase, and other
surrounding circumstances.

An action for passing off is based on the common law of tort and is originated on the principle that “no individual is
entitled to represent his/her goods as being the goods of another individual; and no person is permitted to use any mark,
sign or symbol, device or means, whereby without making a direct representation of himself to a purchaser who purchases
from him, he enables such person to tell a lie or to make a false representation to somebody else who is the ultimate
purchaser”

The law of passing off can be stated in a brief common proposition as- no individual may pass off his/her goods as those
of another. More precisely, it may be stated in terms of the elements which the plaintiff in such an action has to
demonstrate in order to succeed. They are frequently referred to as “Classical Trinity” and are mentioned as such: Firstly,
the individual must establish goodwill or reputation of the goods or services which he/she supplies, in the mind of the
purchasing community by association with the identifying getup under which his/her specific goods or services are
offered to the community, such that the get-up is recognized by the community, a characteristic specifically of the
plaintiff’s goods or services. Secondly, the individual must demonstrate a misrepresentation by the defendant to the
community causing or likely to cause the community to believe that the goods or services provided by him/her are the
goods or services of the plaintiff. Thirdly, the individual must demonstrate that he/she suffers or in a quiatimet action, that
he/she is likely to suffer damage due to the fallacious belief created by the defendant’s misrepresentation that the origin of
the defendant’s goods or service is the same as that of the plaintiff.

The first Trademark legislation was enacted in India in 1940, but before that protection of trademarks in the country was
administered by general principles of Common Law based on English cases. The Division Bench of the Delhi High court
in Rob Mathys India Pvt. Ltd. v. Synthes A.G. Chur6 held that “in cases of passing off action English authorities may
prevail to a certain extent for we have borrowed from and following entire gamut of English Common Law developed in
the light of local and statutory perception may not be a good guide. Of course, the law laid down by the Supreme Court
being law of the land under Article 141 of the constitution, has to be followed.” Further in Commissioner of Income Tax
v. Finlay Mills Ltd7 , the Supreme Court stated that “prior to Trademarks Act 1940 there was no trademark legislation in
India, but it was recognized that an action lay for infringement of trademark independently of an action for passing off
goods.”

In an action for an alleged infringement of a registered trademark, it is first to be seen whether the impugned mark of the
defendant is similar to the registered trademark of the plaintiff. If the mark is found to be similar, no further question
emerges, and it has to be held that there was infringement. If the mark of the defendant is not similar, it has to be seen
whether it is deceptively alike in the sense that it is likely to deceive or cause uncertainty in relation to goods in respect of
which the plaintiff’s mark is been registered.8 Thus, infringement takes place not merely by exact imitation but by the use
of the mark so nearly similar to the registered trademark as to be likely to deceive. In an action for infringement where the
defendant’s trademark is identical with the plaintiff’s mark, the court will not enquire whether the infringement is such as
likely to cause confusion.

DECEPTIVE SIMILARITY
Section 2(1)(h) of The Trade Marks Act, 199910 defines ‘deceptively similar’ as “a mark shall be deemed to be
deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause
confusion.”

One of the ongoing cases is PayPal v. Paytm where PayPal Inc. filed an objection at the Indian Trademark Office on
November 18, 2016, accusing Paytm, an Indian mobile wallet corporation, of trademark infringement. Paytm had been
progressively becoming a household name in middleclass India for six years – until it really hit the bonanza on November
8, 2016, when the Indian Prime Minister NarendraModi declared demonetization of currency notes of Rs. 500 and Rs.
1000 – nullifying overnight 80% of the country’s cash in circulation. This extreme move was taken to tackle the large
amounts of unaccounted “black” money in the Indian economy that was being used for bribery, corruption, tax evasion,
etc. A direct repercussion of the demonetization has been an out of the ordinary increase in electronic transactions – with
Paytm being at the forefront. Paytm saw its daily transactions grow and there was a 10-fold rise in the amount of money
added to Paytm accounts in the initial 14 days after the demonetization was declared.

Speedy growth in that short period of time earned Paytm not only great profits and valuation but also the attention of
worldwide competitors like PayPal. In its complaint, PayPal accused Paytm of having implemented the two-tone blue
colour combination of PayPal’s own logo in its entirety, and especially where “The first syllable in each mark is in dark
blue colour and the second syllable in a light blue colour”. In addition, PayPal also noted that both the marks start with
the term ‘PAY’ which consumers tend to recollect more than the second syllable, with the marks being of comparable
length. The Indian Trademark law states that an applicant should publish and advertise their logo for a time-frame of 4
months in which third parties can raise their objections. Paytm registered for its trademark on July 18, 2016 – which
means its four-month window ended on November 18, 2016. PayPal’s complaint on the last day has hence raised many
questions on why a corporation like PayPal – with ample legal resources at hand – would wait until the very end of the
window to lodge the complaint. Needless to say, it was only after the demonetization that PayPal felt threatened by the
growth of Paytm in a market that until then had been ignored, underserved, and/or underperformed by PayPal.
On a quick glance at both the logos, one can notice different features that represent the utmost resemblance between them.
Here are some of those salient characteristics: -
 Both the brand titles start with the same word ‘Pay’.
 The logos of both establishments use the same colour scheme. In fact, it's very easy to get puzzled by the 2 logos.
 Moreover, both the establishments deal with the same form of business activity i.e., online payments and transactions,
which further broadens the conflict between the 2 parties in question.

There is precedent strongly in favour of Paytm here wherein Micronix India v. Mr. J.R. Kapoor11 , the Supreme Court
observed that micro-chip technology is the base of many of the electronic devices, the word “micro” has much importance
in describing the devices and thus, no one can claim the monopoly over the usage of the said word. Implementing the
same logic, in this case, the word “Pay” has little distinguishing relevance in the market to which PayPal and Paytm cater.

The Indian Trademark Law does safeguard colours to the extent the colours or different combinations of colours confer a
distinctive feature to a product or service. Section 10 of the Trade Marks Act, 199912 , relates specifically to the use of
colours: 1) A trade mark may be limited wholly or in part to any combination of colours and any such limitation shall be
taken into consideration by the tribunal having to decide on the distinctive character of the trade mark. 2) So far as a trade
mark is registered without limitation of colour, it shall be deemed to be registered for all colours.

The Supreme Court in Parle Products (P) Ltd. v. J. P. & Co. Mysore13 stated that to conclude whether a mark is
deceptively similar to another, the comprehensive and vital features of the two are to be considered. They should not be
placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to
avoid one design from being mistaken for the other. It would be enough if the questionable mark bears such an overall
resemblance to the registered mark as would be likely to deceive a person usually dealing with one to accept the other if
offered to him.
In M/S Mahashian Di Hatti Ltd. v. Mr. Raj Niwas, Proprietor of MHS14, the plaintiff used the registered logo, MDH
inside three hexagon devices on red colour background, in its business activity of manufacturing and selling spices &
condiments. The aforementioned logo has been in use since 1949 in respect of numerous products such as “Kashmiri
Mirch” and “KasooriMethi”. Registered since 31st May 1991, the plaintiff credits its goodwill and status to the long and
continuous usage of the mark, several publicity programs, and quality of products. The plaintiff contended that the logo
used by the defendant, MHS within hexagon device with the red colour background was similar to its logo. The plaintiff,
therefore, pursued an injunction restraining the defendant who was also involved in the same business activity from using
the infringing logo MHS or any other trademark identical or deceptively similar to its MDH logo. The defendant inter alia
tried to weaken these arguments by contending the phonetic dissimilarity between MDH and MHS. The court held that as
per Section 29(1) of Trademarks Act, 199915, a registered trade mark is infringed by an individual who, not being a
registered proprietor or an individual user by way of permitted use, uses in the course of trade, a mark which is identical
with, or deceptively similar to, the trade mark concerning goods or services in respect of which the trade mark is
registered and, in such manner, as to render the use of the mark likely to be taken as being used as a trade mark. The
Court compared the logos of both the plaintiff and the defendant and inter alia determined the following similarities:

a) as in the logo used by the plaintiff, the defendant made use of three hexagons for structuring its logo; b) the letters of
both MDH and MHS were in white colour and
c) Similar to MDH, the background colour in MHS was red. In light of the above resemblances, the Court decided the
presence of strong visual resemblance despite weak phonetic resemblance. Further, it was also noted that both the parties
were involved in the same business activity of manufacturing and selling spices. Thus, the registered trademark of the
plaintiff was held to be infringed by the defendant. The defendant was, hence, prevented from manufacturing, selling, or
marketing any spices or condiments using the disputed logo MHS or any other trademark which was identical or
deceptively similar to the registered trademark of the plaintiff.

Proprietors should be informed of their rights in order to protect their trademarks. With modernday development, it has
become essential for entrepreneurs to safeguard the goodwill of their brands. The Trade Marks Act provides a high-level
protection against infringement of a registered trademark. Therefore, proprietors are directed to register their trademarks
so as to utilize the remedies that have been laid down in the Act.

Domain name and trademark

Domain Name Protection and Trademark Rights
Domain names are user-friendly forms of internet addresses commonly used to find websites. Domain names are created
as per the procedures and rules of the Domain Name System (DNS), and the names registered in the DNS are domain
names.
A domain name is an identity of one’s business online. Every web server requires a DNS server to translate domain
names into Internet Protocol (IP) addresses. Since domain names are easy to use and remember, they have become
business identifiers.
A trademark is a mark capable of distinguishing the services and goods of one person from those of others and being
represented graphically. It may consist of the shape of goods, their packaging and a combination of colours. It includes a
brand, logo, label, name, signature, letter, word, numeral, packaging or combination of colours.

Functions of Domain Name

Domain name performs the same functions as that of a trademark. A domain name serves the same functions online that a
trademark performs offline in business dealings and transactions. A trademark is a graphic signifier of the company
product or service, while the domain name is a navigator of the company on the internet and the virtual image of the
business. A registered and protected trademark and the domain name offers the following benefits:
 A trademark protects and promotes the brand name, while a registered domain name protects unauthorised use by
any entity or person.
 Trademark supports the face value of a profession or business, while a domain name increases the contact value
of the business from any remote place of the world.
 A trademark makes a product or service prominent in the market, while a domain name can deliver the service or
product to customers worldwide.
The registered proprietors of a trademark get the exclusive right to use the mark regarding the goods and services. It
serves to distinguish the company products from those of their competitors in trade. Therefore, a trademark and domain
name serves the same function as business identifiers.
A well-protected domain name is beneficial for the security and profitability of a business, just like an internationally
protected trademark. Thus, registration of both the trademark and domain name is necessary.
However, the procedure of acquiring a domain name involves no examination of whether it is capable or distinctive of
distinguishing itself, unlike trademarks. Descriptive words can be registered as domain names. Some businesses use their
registered trademarks as domain names.
Thus, once a domain name is chosen, the holder can apply to obtain trademark protection for the domain name to prevent
any third party from using the name. In the absence of a particular law governing domain names, the Trademark Law
applies for the same.
Trademark Registration for Domain Name
Domain names obtain trademark registration at both the national and international levels, provided the domain names
satisfy all the conditions required to obtain a trademark registration. A unique internet name capable of distinguishing and
identifying services or goods from others can be registered as a trademark.
The domain name must act as a reliable source identifier for the business goods and services on the internet to be
registered as a trademark. A domain name as a trademark must be unique from all other well-known trademarks and
domain names on the internet so that it does not deceive or mislead customers of other companies or violate morality or
public order.
In a case before the Supreme Court of India, ‘Satyam Infoway Ltd. VsSifynet Solutions Pvt. Ltd.’, the matter for
consideration was whether Internet Domain Names are recognisable as other Intellectual Properties such as Trademarks.
The Supreme Court, in its judgement, held as follows –
“The original role of a domain name was no doubt to provide an address for computers on the internet. But the internet
has developed from a mere means of communication to a mode of carrying on commercial activity. With the increase of
commercial activity on the internet, a domain name is also used as a business identifier. Therefore, the domain name not
only serves as an address for internet communication but also identifies the specific internet site and distinguishes
specific businesses or services of different companies. Consequently, a domain name as an address must, of necessity, be
peculiar and unique, and where a domain name is used in connection with a business, the value of maintaining an
exclusive identity becomes critical. As more and more commercial enterprises trade or advertise their presence on the
web, domain names have become more and more valuable, and the potential for dispute is high. It is apparent, therefore,
that a domain name may have all the characteristics of a trademark and could found an action for passing off.”
Domain Name Protection in India
A domain name is not protected under any law in India. Thus, any person or business obtains protection to a newly
created domain name in India under the Trade Marks Act, 1999 and the Trade Marks Rules, 2002. At the international
level, the domain names as trademarks are registered by only the ICANN (Internet Corporation for Assigned Names and
Numbers) organisation.
At the international level, the domain names as trademarks are protected by the ICANN along with the diverse
International Trademark Treaties of the world and the directly concerned national Trademark Law.
After the domain name is registered as a trademark under the Trademarks Act, 1999 (‘Act’), the registered domain name
owner will have all rights and authorities that the registered trademark owners avail in India. It will be granted protection
as a trademark under the Act’s provisions, including the right to sue for infringement or passing off.
Any person using a domain name registered as a valid and subsisting trademark under the Act in an unauthorised manner
will be held liable for infringement of the trademark of the domain name under Section 29 of the Act.
The owners of unregistered trademarks are also entitled to the protection of trademark if they are the prior user of the
mark and it has acquired distinctiveness. When there is a misrepresentation of the unregistered mark by anyone else
representing them to be his/her goods, and it is likely to deceive the relevant public, the unregistered trademark owner can
sue for passing off.
Domain names serve as significant elements in trade and any commercial activity on the internet. Especially the
businesses that work solely on the online platform require the protection of their domain names. In India, the Trademarks
Act, 1999, confer protection to the domain names in the world. Thus, registered domain names can obtain the protection
of trademark infringement, and the unregistered domain name can get the protection of passing off under the Act.

Unit 4 : Copyright
Meaning and object – Works in which copyright subsists –
copyright
The word copyright is a mixture of two words – ‘copy’ and ‘right’. To be more precise copyright means ‘right to copy’,
wherein only the creator or his authorised person has a right to reproduce a work. In simple words, a legal right which is
possessed by the owner of Intellectual property is a copyright.

In order to better understand the concept of copyright the elaboration must be taken into consideration. With the help of a
significant mental or intellectual ability, when a person creates a unique product that product is viewed to be original. The
unique creations including websites, computer software, musical lyrics, art, literature, poetry, graphic designs, musical
compositions, novels, original architectural design, films, etc. Further, a copyright is a safeguard which protects an
original work from getting duplicated.
When any work is exclusively created by the independent intellect of a creator without any duplication is called Original
Work of Authorship (OWA). Anyone who is the original creator of any work he automatically has a right over it and also
can prevent anyone else to use it or copy it or replicate it for his own use.

The creator may voluntarily register for copyright if the creator wants to be secured end and have an upper hand in the
legal system. By registering this the creator can file a suit against a person replicating his work.

Concepts such as discoveries, slogans, brand names, logos, concepts, domain name, theories, and tiles are all excluded
from the purview of copyright and falls under the category of trademarks and patents. For any speech, idea, discovery etc.
to a copyright needs to be written down in a physical form.

This concept helps the creators and the artist to work fearlessly and create original products, which are not subjected to
replication by any other person.

How did the concept of copyright evolve in India?

Pre-independence
The roots of copyright law in India can be traced back to the East India Company’s regime in 1847. During that time, the
work was not automatic and the registration with the Home office was compulsory in order to enforce the copyright. The
term of copyright extended to the lifetime of the author plus seven-years of post-mortem. In 1914 a new copyright
legislation was passed in India with a few modifications which are as follows:
1. Introduction of criminal sanctions in the case of infringement of copyright.
2. It broadened the term copyright and modified it as a ‘sole right’ wherein the author has the right to reproduce,
change, produce or publish a translation of work.
The legislation of 1914 continued till the coming of a new legislation in 1957 i.e. post independence era.

Post-independence
In 1957 a new Copyright law was enacted. Before the Act of 1957, the Act of 1914 was prevalent, which was an
extension of the British Copyright Act, 1911. Further in May, 2012 the Parliament of India unanimously passed a bill
named Copyright Amendment Bill, 2012. This Bill aimed to bring Indian copyright laws at international level and in
compliance with the World Intellectual Property Organisation treaties such as the WIPO Copyright Treaty (WCT) and the
WIPO Performance and Programme Treaty (WPPT). Further, the main highlights of the 2012 Amendment bill are:
1. Amendments in the right to artistic work such as cinematograph films and sound recordings.
2. Amendments in accordance with WCT and WPPT.
3. Amendments in the mode of grant of license and assignments.
4. Protection against internet piracy.

Copyright in different fields

I. Copyright in Literary work

Literary works are protected by copyright as they are present in physical form. Literary works include books, magazines,
newspapers, journals, anthologies, novels, computer software and programmes, letters, e-mails, poetry, lyrics of songs,
tables and compilations. Literary works are not only confined to the above mentioned things but also abstracts,
encyclopedia entries, dictionary meanings and individual poems are protected within the shield of copyright laws.
Duration of Copyright
In case of a copyright pertaining to literary work both published and unpublished the creator/ author owns the copyright
which extends to his lifetime plus 60 years after his death.
Ownership
The author or the creator of a work is generally regarded as an owner of a work in case of literary works.
II. Copyright in dramatics
Dramatics includes within itself dance, mime covering screenplays, ballets, operas etc. Copyright in the field of dramatic
safeguards the creators, composers, choreographers, dramatists, poets, author and other from replication of their work.
The different types of published and unpublished work may be submitted for registration including pantomimes,
treatments, plays, choreography and scripts prepared for radio, cinema and television. They may be with music or without
music.
Usually, dramatic scripts are intended to be performed including spoken text, plot and direction of action etc. It however
needs to be understood that all dramatic work cannot get a copyright. A few dramatic works are exception to it namely:
1. Title or series of a programme.
2. Copyright protects dramatic expressions of a creator but not the general idea of a work.
3. Present work/ script can only be given copyright and not the future scripts/ works.
In order to get the copyright of a dramatic work, a copy of:
 Manuscript
 Printed copy
 Film recording
 Video recording
 Phonorecord
Are treated as a physical script. The registration of the work gets effect on the day when all the above mentioned material
is submitted in the Copyright Office in the prescribed format.

III. Copyright in Musical Work

Musical work means a work which consists of music and for a work to be musical it requires a combination of graphical
notations. However, it excludes any actions or words which are intended to be sung/ spoken with the music.

Composer
The author of the musical work is known as a composer. Composer is a person who composes the music irrespective of
the fact that the music is recorded in any form of graphical notations or not.
Duration of copyright
The copyright for the musical work extends to the lifetime of the author plus 60 years after the author dies. However in
case of joint authorship the duration is counted after the death of the last author.

IV. Copyright in sound recordings

Sound recordings which comprises of any person’s speech, song sung by any person with or without music, any audio or
any podcast. The sound recordings are subjected to copyright.
Producer
The author of sound recording is known as producer. The producer of any sound has a right to register himself as the
owner of that sound recording which is created by his intellect.
Duration of copyright
The copyright usually lasts for 60 years. However, in the case of sound recording copyright extends to the lifetime of the
producer plus 60 years after the death of the creator.

V. Copyright in cinematograph films

Cinematograph films includes a plethora of activities namely:
1. Any work of visual recording displayed on any medium from which any moving object can be visualised.
2. Work involving sound recordings.
 Stages of protection of cinematography under copyright
Pre- production
Before any film is produced a humongus number of preparation is done which included casting and crewing, scripting,
screenplay, shoot schedule, location, rehearsals etc. and here it needs a very strict rules and a legal backing so that nothing
can be replicated.
Post-production
Once the film is released it becomes the prime necessity to protect it from replication.
 Rights of the owner
1. Reproduction right
2. Distribution and rental rights
3. Synchronisation rights
4. Derivative working rights
5. Broadcasting rights
6. Right of adaptation and translation
 7. Display rights
Another interesting fact in this topic is related with piaracy which is called as ‘copyleft’. The owner has the right to avoid
it and sue the person who does the work of piaracy.

Copyright in ownership
Copyright is considered to be a sui generis right which means that a person who is a creator of a thing using his intellect
is the prime owner of that thing and has an immediate right over it.
Moreover, in accordance with Section 17 of the Copyright Act, 1957 is concerned with the 1st owner of any work.
 In which cases an author is considered the 1st owner?
1. In the case of literary works such as content published online, books, computer software, public speeches etc.
in these cases the author is considered to be the first owner of the work.
2. In the case of dramatic, artistic or any musical work the author is the 1st owner of that piece of work
3. The cases pertaining to art which includes sculptures, paintings, drawings (envisaging, architectural drawing
and planning) the creator is the 1st owner of that work.
4. In the cases pertaining to cinematography, the producer is the 1st owner of the work. As we all know
cinematography involves plethora of activities such as lyrics of songs, scripts, artistic and dramatic work, for
this purpose the respective authors shall be the owners. However, in the case of sound recording the producer
will be the owner.
5. If in case any of the above work is done by any person under a contract then the owner of the work will be
according to the terms of the contract.
6. For all that work which is created by the employee during the course of employment then the employer shall
be the 1st owner of that work. Similarly any work created by a partner in the course of business the work will
be counted under partnership. For instance, if any advocate draft something while working in a law firm that
creation of draft will be owned by that law firm.
7. Lastly, any speech delivered publically, the speaker is the only owner of that speech, irrespective of the fact
that it was arranged by someone else or it was given under the employer.

Assignment and license under copyright

Copyright is basically a personal property right, which is regulated by various rules and regulations governed by the state.
These rules and regulations govern the ownership, inheritance and transfer of rights pertaining to copyright.
Further, the copyright holder has 2 ways in which he may transfer his copyright i.e through license or by assignment.

 Assignment
Assignment is also known as sale agreement for copyright wherein the owner of any work sell his right to any other
person with the help of a contract. After the transfer of ownership the person giving copyright has no control over the fact
that how the third party uses it. The person selling the copyright is called assignor and the person buying is known as
assignee. Once a sale is completed the assignee is vested with all the rights and he may use that work in whatever manner
he wishes to use it. For the assignment to be valid the contract must be written and signed by both parties, the subject of
the assignment of copyright must be clear and without any ambiguity.

 License
License under copyright rights means that the owner possesses or maintains his or her copyright ownership rights,
however when he permits or allows another party to exercise some of those rights without the party’s actions being
considered an infringement of copyright. The person giving license is referred to as ‘licensor’ and the person who is given
the license is called ‘licensee’.
Usually, a license is more preferable than an assignment. This is because the copyright holder has the full right over his
work and can exercise ownership control over the work whereas,, the licensee uses just a few rights given by the
copyright holder.
For instance, a software license agreement is signed between the copyright holder and the licensee, whereby the copyright
owner grants the licensee pertaining to the right to use the software in a manner which is specified in a contract. In return,
the user/licensee may agree to limit the use of the software as per the agreement and at the same time pay the copyright
owner a license fee.
Unlike a copyright assignment, a copyright license may or may not have to be in a written format and signed by both the
parties. It can be oral or arise by implication when considering all the facts and circumstances surrounding the transaction
between the copyright owner and the purported licensee.
Copyright Authorities
The term copyright office is given under section 9 on the Copyright Act,1957 makes it compulsory to have a copyright
office. The copyright office is controlled by the registrar of copyright which is appointed by the Union government,
which means that he will be working under the guidance, supervision and orders of the union government. The main aim
of registration office is to provide facilities of registration and is headed by the registrars. The copyright office is located
at IPO (Intellectual Property Office), Plot No. 32, Sector 14, Dwarka, Delhi, 110075 from G-30, August KrantiBhawan,
BhikajiCama Place, New Delhi, 110066. The jurisdiction of this office is extended to whole of India. Copyright office
performs the following copyright tasks:
 Literary work
 Artistic work
 Story themes
 Lyric books
 Story books
 Software
 Cinematograph films
 Music
 Sound recordings

Infringement of copyright
Copyright right is considered to be infringed when someone uses the copyright protected work of the original owner of
any work which may include a theme of a book, an article, the lyrics of a song, etc. without the owner’s permission.
Moreover, if something is protected by copyright, it can not be generally legally made available to the public in any
manner, whether digital or otherwise, without the permission of the person having copyright or body such as publication
house or firm who holds it.

Remedies for the infringement of copyright

There are basically 3 types of remedies available in the case of infringement of copyright:

Civil remedies
Civil remedies include injunction, return of account of profit, and deliver the infringing copies of copyright work and
conversion damages.

Criminal remedy
Criminal remedy includes imprisonment of the accused or fine or both.

Administrative remedies
Administrative remedies include moving to the Registrar of copyrights office to ask him to ban the import of infringing
copies into India in case the infringement is through such importation and the infringing copies must be delivered to the
owner of the copyright.

Rationale behind getting copyright

The main reason for getting copyright is to avoid replication or duplication of an original work by some other person who
is not the owner of that work. It is at the same time very easy to prove in court of law that the copyright has been
infringed by some other person for which the original owner has not given permission.

How have copyright rights kept pace with advancement in technology?

With the spectacular change in technology, laws of the land must also be strengthened so as to keep up with the changing
world. The wide range in the medium of communication like satellite broadcasting, DVDs and compact discs, widespread
dissemination of information via the Internet has given birth to very difficult questions concerning the rights pertaining to
copyright in this global world. The World Intellectual Property Organization (WIPO) is dealing with the ongoing
international debate to shape new and stricter standards for the protection of copyright from infringement in cyberspace.
In that regard, the organization ponders over the WIPO Copyright Treaty (WCT) and the WIPO Performances and
Phonograms Treaty (WPPT) which are also known as the “Internet Treaties”. These treaties specify international
regulations aimed at restricting unauthorized access or use of creative/ intellectual works on the Internet.

How is copyright regulated?

The copyright societies which are collective licensing bodies are regulated by the following:
The owners and authors
The owners and authors have collective control over the copyright societies. The societies have to be approved by the
registrars appointed by the central government.Once society is registered then the authors in that society has the right to
collect the registration fee and fulfill the formalities of copyright.

The registrars
Copyright societies ought to submit the returns to the registrar of copyright in the prescribed manner. The officer who has
been delegated the work pertaining to copyright by the central government has the right to call for regular reports and
records from the copyright societies. This is to make sure that the fee which is deposited is utilised in the appropriate
manner.

Central government
The main task of central government is to register the copyright societies and appoint an official for registration. In case
the copyright societies work in a way which is detrimental to the collective interest the central government has a right to
cancel the registration of a copyright society.

Process to obtain copyright

The person applying for copyright has to follow the following steps:
1. The person has to file the application along with the fee either in the form of DD/ IPO
2. Then the diary number will be issued.
3. The person has to compulsorily wait for 30 days for objections.
4. If in case no objection is filed then:
 Application will be accepted.
 It will go to the examiner for scrutinization
 If in case there is no discrepancy found, the application will be sent for approval.
 If discrepancies are found then the discrepancy letter will be issued to the applicant. The applicant will have a
right to reply which will be heard by the registrar. In case the registrar is satisfied by the reply he may approve
the application and send extracts from the register to the applicant.
 However, if not satisfied then he may reject the application and send the rejection letter to the applicant.
5. If in case objection is filed:
 The letter will be sent to both parties i.e. party filing objections and the party against whom the objection is
filed.
 Reply will be awaited from both the parties.
 Reply by both the parties will be heard by the registrars.
 If in case objections are rejected the application will be accepted and if objection will be accepted then the
application will be rejected.
This procedure applies in the case of both the published or unpublished work.

Copyright and Copyleft

Copyright: Copyright is the shield for those authors who have created their own original documents and software so that
no outside world could replicate or copy or duplicate or sell the original work. Copyright infers the power upon the
creator or the author to grant some right to copy or reproduce to the outsiders.
Copyleft: Copyleft on the other hand is the method for software or documentation which is supposed to be modified and
distributed to the community, provided that it remains libre.
Libre documentation is a kind of documentation where the author can place the copyright to the document and use
distribution terms including free documentation license, which empowers everyone to modify, use and redistribute the
code provided that the terms remain unchanged. This makes sure that the source code and the freedoms are legally
inseparable.
In simple words copyleft empowers the people to freely distribute the copies and modified version of work.
Can fashion designs be copyrighted?
In accordance with section 13 of the copyright Act, 1957 it pertains to the following original works:
1. Original, literary, dramatic, musical and artistic work.
2. Cinematographic films.
3. Sound recordings.
Fashion designs are considered to be artistic works. Fashion designs are protected under copyright law in India provided
that it qualifies as original. In the microfiber case, 2006 Delhi High Court bifurcated the meanings of two words ‘purely
artistic work’ and ‘artistic work’. The former is regulated by Design’s Act 2000.

Is dance and choreographic work protected under copyright?

Dance is considered to be the most expressive and exclusive form of art as the performer participates not only with his/
her body but also mind with full swing, enthusiasm and energy and above all manages to maintain the discipline that the
dance form demands. Cultures all over the world have witnessed the advent and growth of humongous number of dance
forms with every dance having a unique and typical form of routine associated with it. Several dance forms such as
Bharatnaatyam and Kathak have a predefined set of routines and rules for the entire dance performance. However, steps
like the Bhangra step, the Bihu style or the famous pop-singer Psy’s “Gangnam Style” are singular steps complete in
themselves. Recently, the US Copyright Office refused to grant copyright to the “Carlton dance” routine by ‘The Fresh
Prince of Bel-Air’s star Alfonso Ribeiro while stating the reason behind its rejection that it was a combination of three
dance steps which is incapable of registration. Supreme court in the case of Academy of General Edu., Manipal and Ors.
vs. B. MaliniMallya, has held that a new form of a ballet dance which is reproduced in a literary format is considered as a
dramatic work, which is inturn unique. Thus, if a person wants to register the copyright in a choreographic work, he/she
will be required to reduce the work into writing or any other form and apply for registration in that form only. Unless the
work is produced in a written format the creator can not be given copyright.
Commendable are the skills of a choreographer who is primarily the author of a unique sequential arrangement in a dance
number. In India, dance moves being ‘choreographic works’ are protected under the Copyright Act, 1957. Section 2(h) of
the Act clearly says that choreographic work falls within the ambit of ‘dramatic work’ under copyright law.
It is however debatable whether a single dance move involving sufficient skill and judgment can be considered to be
intellectual property capable of legal protection or whether the Act intends to only protect a sequence of steps in dance.

Fair Use Rule in relation to copyright

Generally, a fair use is any copying of a material which is copyrighted done for a limited and “transformative” purpose
such as to comment upon or to criticize, or parody a copyrighted work. Such actions of criticism, comments etc. can be
executed without any permission from the copyright owner. In simple words, fair use is a shield against a claim of
copyright infringement. If your use of copyright meets all the parameters of fair use, then it would not be considered an
infringement of copyright.
The word transformative use means fair and just use. No doubt, this definition seems vague or ambiguous, millions of
dollars as a legal fees have been spent attempting to broadly and specifically elaborate on the rules which define fair use.
As such, there are no specified or written rules, only general guidelines and varied precedents in the form of court
judgments defines it, because the lawmakers who created the fair use exception did not intend to restrict its definition.
Similar to free speech, they wanted it to have an expansive meaning that could be open to interpretation. Most fair use
analysis falls into two categories i.e commentary and criticism; and parody.

How to avoid copyright infringement?

Copyright laws are a shield to protect the creator or author of original works, which are creative at the same time
intellectual expressions from others using and earning a profit from their work, without the owner’s permission. The idea
behind copyright is that the author or creator owns the rights to his work and has the complete discretion over how others
use his or her work or creation.
For instance, music copyright would exist with songwriters on their lyrics. When songwriters allow artists to record their
words, there would be an agreement outlining how the right to record is granted, thus avoiding copyright infringement.
If another artist decided to record the same song without permission, the songwriter would be able to bring legal action
for copyright infringement against the artist. If you believe that the copyright infringement definition sounds like stealing,
you would be correct.

Conclusion
Copyright is the shield given by law in the hands of the original owner or author of any intellectual property to be
protected against the whole world. Therefore, by giving this shield lawmakers encourage creativity and protect the
original work of the creator.

Works in which copyright subsists

Works in which copyright subsists-
(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.[(Note: Subs. by Act 38 of 1994, S.2 (w.e.f. a date to be notified) for "records" sound recordings.]

(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 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 [(Note: Subs. by Act 38 of 1994, S.2 (w.e.f. for "records") work of
architecture], the author is at the date of making of the work a citizen of India or domiciled in India , and
iii. in the case of a [(Note: Subs. by Act 38 of 1994, S.2 (w.e.f. for "records") ] 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 [(Note: Subs. by Act 38 of 1994, S.2 (w.e.f. for "records") ] sound recording made in respect of a literary,
dramatic or musical work, it in making the [(Note: Subs. by Act 38 of 1994, S.2 (w.e.f. for "records") ] sound recording,
copyright in such work has been infringed.

(4) The copyright in a cinematograph film or a [(Note: Subs. by Act 38 of 1994, S.2 (w.e.f. for "records") ] sound
recording shall not affect the separate copyright in any work in respect of which a substantial part of which, the film, or as
the case may be, the [(Note: Subs. by Act 38 of 1994, S.2 (w.e.f. for "records") ] sound recording is made.
(5) In the case of a work or architecture, copyright shall subsist only in the artistic character and design and shall not
extend to processes or methods or construction.

Economic perspective term of copyright –

Copyright is a legal device that provides the creator of a work of art or literature, or a work that conveys
information or ideas, the right to control how the work is used -Stephen Fishman

Every human possesses a distinct intellect that discovers novel ideas or works. These novel ideas must be protected so
that no other person presents it as his own. Henceforth, these are been protected under intellectual property rights which
undertakes numerous subject matters e.g., literary work, artistic work, symbols, images, names, etc. One must be having a
thought that why they are being protected under Intellectual Property Rights (IPR) and what is the main motive of it?

The answer to this question is that these are protected under IPR to stimulate the progress of every field like science, arts,
literature, etc. Thereupon the states have agreed for the statutory establishment for all the subject matters of IPR and these
are Copyright, Trademark, Geographical Indication, Industrial Designs, Trade Secret, and Plant Variety.

Copyright plays an essential role in the development process of a country. In which the various subject matter like artistic
work, dramatic, literary, cinematographic work, etc contains the most important role play. The author or the composer of
various subject matter enjoys certain rights after being recognized as a unique or new work.

To secure the copyright of the Author, the statute has laid various provisions and has given the bundle of rights to the
author under section 14 of the Copyright Act which are also known as exclusive rights. These rights do not authorize the
author to exploit his work, making copies and hence known as negative rights also.

The bundle of right encompasses three different kinds of rights further includes different subheads which are mentioned
below:
1. The Economic Rights
o Right of Reproduction
o Right of Distribution
o Right of Adaptation
o Right of Broadcasting
o Rental Right
o Right of Public Performance

2. The Moral Rights

o Paternity Right
o Integrity Right

3. The Neighbouring Rights

This article mainly focuses on enlightening the reader in the area of the economic rights guaranteed to the Author.

Economic Rights:
The rights are been classified on the different parameters in which the most important is the economic parameters. The
economic rights help the author to derive the economic benefit which enables the author to transfer these rights to the
purchaser because of which nowadays the producer can produce a movie, songs, etc, and the author labour or skills is
been paid to them for waiving their rights. So thus, this forms a contractual relationship between the author who creates it
and the producer or the manufacturer who produces it. The economic rights are categorized into various rights which
enable the commercialization of the work of the author.
i. Right of Reproduction:
The right of reproduction is considered as the most fundamental, prominent, and important right under the copyright act
as it permits the author to reproduce the work and store it any form or any medium by electronic means e.g. CD,
Recorder, Computer, etc. This right was recognized by the Berne Convention on the Protection of Literary and Artistic
Works, 1886, by the Universal Copyright Convention, 1952, and also by the Indian law on copyright contained in the
Copyright Act, 1957.

This right covers all types of work like 1iterary, dramatic, musical, and artistic, cinematograph film, and sound recording.
One must note that no one apart from the author has the right to reproduce or to make copies of his work and if the other
person reproduces it then before copying the work for commercial purpose author's permission must be taken.

Reproduction is a branch of copying where even a substantial amount of work or producing the work in different forms
amounts to reproduction. This view was first established by the House of Lords in the case of Ladbroke Ltd v William
Hill Ltd.

ii. Right of Distribution:

The right of distribution amounts to distribute rent, and sale the copyrighted work to the public. This right of distribution
is expressly mentioned under the Copyright Act 1957. This right is performed after the right of reproduction. This right is
based on the principle of exhaustion which has been mentioned under Article 6 of the TRIPS agreement. By the principle
of exhaustion, it is meant that this exhaust only after its first implication commonly termed as First Sale Doctrine i.e.,
this right of an author comes to an end his work has approached the market, as after this anyone can produce numbers of
copies of the work. So the scope or the extent of this right is not constant.

The principle of exhaustion has been distinguished into three categories which are as follows:
i. National Exhaustion:
When the author loses the copyrighted rights of his work in a particular nation then it is termed as
National Exhaustion.
ii. Regional Exhaustion:
When the author loses the copyrighted rights of his work in a specific region then it is termed as Regional
Exhaustion.
iii. International Exhaustion:
When the author loses the copyrighted rights of his work all over or anywhere in the world then it is
termed as International Exhaustion.

This right of distribution needs a permit from the copyright owner before distribution to the market. It
was also held by the case Penguin Books Limited v India Book Distributors and others, that if the
distributor has not taken the license from the copyright owner and distributes it to the public for
commercial use will amount to infringement.

iii. Right of Adaptation:

Right of Adaptation is one of the most used rights under the copyright act. This right includes every subject matter that
are covered under the copyright act like literary work, sound recording, artistic work, etc. The right of adaptation is an
exclusive right which is granted to the copyright owner for making the adaptation of work. To avail the concept of
adaption, one must take permission from the author otherwise it will amount infringement of the author's right this was
also held by the case Blackwood & Sons Ltd. v. Parsuraman.

Adaptation has been defined under section 2(a) of the Copyright Act, 1957, which means to convert the form of the
original work and to present it as new For example: Conversion of a story to drama, conversion of drama to a non-
dramatic work, presenting an abridged version of any of the literary or dramatic work, etc.

The concept of Abridgement has been defined under Section 2 (a) (iii). Further in the case of Macmillan and Company
Limited v K. &J. Cooper &Raghunathan v. All India Reporter, it was defined as shortening or condensing the
literary work or reproducing it in a much precise and crisp way.

iv. Right of Broadcasting:

Broadcasting refers to the term broadcast defined under Section 31D of Copyright Act, 1957. It is explained as getting
access to the public through any means of wireless broadcasting, whether in one or more types of signs, sounds, or visual
images; or by wire and transmission of data through various wireless networks. A person, who is the owner of his work,
has the right to broadcast his work. In Modern Context, it extends as making the work available to the public using the
Internet and its terms and conditions hold the decision of Copyright Holder. From this, it has been seen that Broadcasting
Right includes the right to communicate the work.

In the case of Garware Plastic and Polyester Ltd., for Bombay v. M / S Telelink, Bombay High Court felt a need to
address the word 'public' as opposed to private communication to answer this issue, which ultimately depends on the
individuals receiving the communication. The Court held that the film showed which intended for the public, because of
the Cable Television Network. Therefore, Cable Television Network viewers amounted to a Copyright violation.

v. Rental Right:
It is referred to, as the right to rent copies of such types of works, such as sound recording songs, audiovisual works, and
computer programs. This became important to avoid infringement of the copyright owner's right to reproduction as
technical innovations made copying such works simple for rental shop customers. It is increasingly recognized and
included in the WIPO Copyright Treaty. Besides the right to issue copies of the program to the public which are not
already included in circulation, Section 14(b) (ii) talks about the proprietors of computer programs have the right to offer
or give any copy of the corresponding rental or offer for sale or any commercial rental where a computer program is the
basic object of the rental so long as the program is itself.

In Indian Context, the existence of the commercial Rental Right in the Copyright Act first made its
appearancethrough1994 amendments under which the term used for computer programs, films, and sound recordings was
similar with only the title of the working class being different in each provision: the 1994 amendment stated that the
copyright owner would have the exclusive right to sell or give on hire, or offer for sale or hire, any copy of the film,
regardless of whether such copy has been sold or given on hire on earlier occasions".

Furthermore, the Declaration of Objects and Reasons annexed to Amendment Bill of 1992 (1992 No. 105) says, in para.
16, that the provisions were included 'to promote the flow of remuneration to copyright owners who (notably in the case
of cinematographic films) can be helped by effective collective management by copyright societies, these rights would
also include additional protection against the distribution of infringing copies.

i. Producers of Sound Recordings:

The producers of Sound Recordings have the right to permit or forbid the production sale and distribution
of their sound recordings and copies thereof, and the right to equitable remuneration for their sound
recordings being transmitted and distributed to the public accordingly.

vi. Right of Public Performance:

The Indian copyright law acknowledges the public performance right in respect of literary, dramatic, or musical works.
Section 2(q) of the Copyright Act, 1957 describes the term 'performance' concerning the right of the performer to mean
any visual or acoustic performance extracted live by one or more performers (Amendment Act, 1994). A performer within
the scope of Section 2 (qq) of the Copyright Act is an actress, singer, guitarist, dancer, acrobat, juggler, conjurer, snake
charmer, lecturer, or any other person making a show.

However, the Copyright (Amendment) Act has added a proviso to clause (qq) of Section 2, which explained-'in
cinematographic film, a Person whose work is casual or incidental in nature and is not recognized anywhere, including in
the credits of the film, in the usual course of industry practice, shall not be regarded as performers except for the purposes
of clause (b) of section 38B.'

In the case of Indian Performing Rights Society v Eastern Indian Motion Pictures Association &Ors., It was held that if
the author of a lyric or musical work shares his portion of his copyright by allowing a film producer to insert it in a film,
the producer acquires the exclusive right to perform the work in public without obtaining further permission from the
writer.

Concluding Remarks:
The foremost concern of the Copyright Act is to protect labour, the skill of a person which results in an innovative idea. It
not only protects but also gives recognition to the composer or the author. To attain this motive, the Copyright Act has
expressly given certain rights to the author.

Fair dealing – Initial ownership –

What is Fair Use?
Fair use doctrine was a judicially created doctrine which owes its origins to the famous 1841 case of Folsom v. Marsh10,
where Justice Story observed:

"......we must often, in deciding questions of this sort, look to the nature and objects of the selection made, the quantity
and value of the material used and the degree to which the use may prejudice the same or diminish the profits or
supersede the objects of the original work."11
Fair use supports "socially laudable purposes," 12 typically, if not exclusively, involving the use of the copyrighted work
by a second author.13 The U.S. Copyright Act specifies that the "fair use of a copyrighted work, including such use by
reproduction in copies...for purposes such as criticism, comment, news reporting, teaching (including multiple copies for
classroom use), scholarship, or research, is not an infringement of copyright." 14 While fair use explicitly applies to such
uses of copyrighted work, the defense is not limited to these areas.

The effect on the current and potential market of the work be of 'de minmis' nature or in pursuance of meeting socially
valuable ends or both. They also have to conform to the cumulative three-step test enshrined in the Berne Convention and
reinforced by the TRIPS Agreement, where use should not conflict with the normal exploitation of the work and must not
unreasonably prejudice the legitimate interests of the copyright holder. Fair use has to be viewed not as permission to
copy but as an exception to the exclusive right of the owner.16
Fair use is not a straight-jacket formula or existing in a watertight compartment. Its parameters are not defined as such.
No bright line test exists for determining whether any particular use is "fair use'' or an act of infringement, so each use
requires a case-by-case determination.17 It is like an openended legal doctrine. Fair use is a defense to a suit for
infringement.

Fair use is not a 'license' but in the nature of a privilege by virtue of which, the person pleading defense against a suit for
infringement can escape the clutches of copyright law. As Crews 18 points out, fair use doctrine helps to prevent the
copyright

owners' exclusive rights from interfering with the Framers' stated purpose of the promotion of learning. The larger goal of
copyright is the advancement of human knowledge. The doctrine of fair use has developed over the years as courts tried
to balance the rights of copyright owners with society's interest in allowing copying in limited circumstances. This
doctrine has at its core, a fundamental belief that not all copying should be banned, particularly in socially important
endeavors such as criticism, news reporting, teaching and research. 19
The term 'fair use' is peculiar to the United States; a similar principle, fair dealing, exists in some other common law
jurisdictions such as U.K. and India. 20 Until codification of the fair use doctrine in the 1976 Act, fair use was a judge-
made right21 developed to preserve the constitutionality of copyright legislation by protecting First Amendment
values.22 Thus, the doctrine of fair use is an evolving principle of the U.S. Judiciary over the years. This doctrine has now
been codified in Section 107 of Copyright law and has been described as "the most troublesome in the whole law of
copyright".23 It is a judge made law codified in Section 10724 of the U.S. Code.

For balancing the tension between the economics of copyright law vis-à-vis social objective, four factors have been
placed under Section 107 of US Act and they are:
1. The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit
educational purposes;
2. The nature of the copyrighted work;
3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
4. The effect of the use upon the potential market for or value of the copyrighted work.
What is Fair Dealing?

Fair dealing is permitted for private use including for the purpose of research 25 or criticism26 or review27. Such a 'fair
dealing' provision also extends to reproduce literary, dramatic, musical or artistic work for the purpose of reporting
current events in a newspaper, magazine or similar periodical 28 or by broadcast29 or in a cinematograph film or by means
of photographs30 or using excerpts of a performance or of a broadcast in the reporting of current events or for bonafide
review, teaching or research.31 Further, it has been inserted through an amendment in 1994, that the act of making copies
or adaptation of a computer program by the lawful possessor for which it was supplied or as a means to offer temporary
against loss, destruction or damage of the program.

In the case of Civic Chandran v. Ammini Amma32, the learned judge observed:
"The term 'fair dealing' has not been defined as such in the Act. But section 52(1)(a) and (b) of specifically refers to 'fair
dealing' of the work and not to reproduction of the work. Accordingly, it may be reasonable to hold that the re-production
of the whole or a substantial portion of it as such will not normally be permitted and only extracts or quotations from the
work will alone be permitted even as fair dealing." Further the court held that "In such cases, court has to take into
consideration (1) the quantum and value of the matter taken in relation to the comments or criticism; (2) the purpose for
which it is taken; and (3) the likelihood of competition between the two works"; it is similar to the four factor test of the
U.S. fair use doctrine.

Fair dealing is not a license to violate the exclusive right of the copyright owner. One cannot copy from another and claim
refuge under the garb of fair dealing. Simply giving the credit to the original author would not help either. Even where the
user has copied a substantial part of the work, it would not be considered as 'fair' and 'legitimate' since copyright
protection requires reasonable skill and labour to reach the threshold of originality and quality for protection.

In one case before the High Court of Andhra Pradesh, involving an appeal where the trial court had held that the film was
an adaptation of the novel and since copyright permission had not been obtained, the act constituted piracy, the court read
the four factor test as an important criteria in adjudging whether the cinematographic film infringes the copyrighted
literary work and arrived at the conclusion that if the person infringing the copyrighted work obtains a direct pecuniary
benefit from the use of the copy in its stream of commerce, then it would be considered to be an unfair user for profit.

Difference Between Fair Dealing and Fair Use

"Fair dealing" and "fair use" are related concepts pertaining to user's rights under copyright law. It is nevertheless
important to understand that fair dealing and fair use are not synonymous terms since their meaning and scope are defined
by different legal systems. It is challenging to adequately summarize the shared and divergent underpinnings of fair
dealing and fair use succinctly. The following brief comparison aims to merely sketch a broad picture of some of the basic
similarities and differences between fair dealing and fair use.

Fair dealing is an exception to copyright infringement laid out in the copyright statutes of common law jurisdictions such
as Great Britain, Canada, Australia and New Zealand. The copyright acts of these jurisdictions provide that fair dealing of
a copyrighted work will not amount to infringement if such dealing is stated in the act. This means, if a work is copied for
a purpose other than the statutory fair dealing purposes, the copying cannot be a fair dealing regardless of the copier's
intention.

Fair use is a limitation on exclusive rights in works of authorship granted under U.S. copyright law.
Title 17 of the United States Code states that fair use of a copyrighted work is not an infringement of copyright. Title 17
provides an open-ended list of purposes that may be fair use - "purposes such as criticism, comment, news reporting and
teaching (including multiple copies for classroom use) " - instead of listing a finite list of purposes defining the bounds of
acts that may be fair dealing.

Another point of divergence is the availability of statutory guidance on how the fairness of a dealing or use should be
evaluated. Since fair dealing provisions generally lack statutory definitions or regulations specifying how fairness is to be
determined, the appropriate approach to assess the fairness of actual dealings with protected works is a matter for the
courts to decide. In Canadian Ltd. v. Law Society of Upper Canada, the Supreme Court of Canada set out a two-step
analytical framework to assess fair dealing in which the second step identifies six fairness factors. The court said the
extent to which the factors are relevant may vary from case to case and noted some cases may require consideration of
factors beyond the six identified in the framework.

In contrast, the fair use provision in U.S. copyright law prescribes four factors that must be included in a fairness
determination: 1) purpose and character of the use, 2) nature of the copyrighted work, 3) amount and substantiality of the
portion of the work used and 4) effect of the use on the potential market or value of the work. These fair use factors are
similar to the six CCH fair dealing factors (purpose, character, amount, and effect of the dealing, nature of the work, and
alternatives to the dealing) but U.S. and Canadian case law have applied the fairness factors in different ways.

In the U.K., a defense to copyright infringement exists in the form of fair dealing. Fair dealing protection is limited to
specific uses such as research and private study (both must be non-commercial), criticism, review, and news reporting.
Thus, protection is only afforded if the use of the copyrighted work falls into these categories and it does not matter
whether the use is fair in general or fair for a purpose not specified in the Copyright, Designs and Patents Act of 1988.

The Meaning of Copyright Ownership

Owners hold specific rights but not all rights.
The law grants to owners a set of specified rights: reproduction of works; distribution of copies; making of derivative
works; and the public performance and display of works. Some artworks have "moral rights" regarding the name of the
artist on the work, or preventing destruction of some works. Owners may also have rights to prevent anyone from
circumventing technological protection systems that control access to the works.
Author is the copyright owner.
As a general rule, the initial owner of the copyright is the person who does the creative work. If you wrote the book or
took the photograph, you are the copyright owner.
Employer may be the copyright owner.
If you created the work as an employee, acting within the scope of your employment, the work may be a "work made for
hire." In that event, the copyright owner is the employer. If you are an employee, and your job is to create software code,
the copyright probably belongs to your employer.
Copyrights can be transferred.
The law may make you or your employer the copyright owner, but the law also allows the owner to transfer the copyright.
With a written and signed instrument, your employer can give you the copyright. In the academic setting, we are
frequently asked to transfer copyrights in our books and articles to publishers. The ability to transfer or retain our
copyrights is an opportunity to be good stewards of our intellectual works.
Copyright owners may allow public uses.
A copyright owner may grant rights to the public to use a protected work. That grant could be a simple statement on the
work explaining the allowed uses, or it may be a selection of a Creative Commons license. Similarly, the movement to
make works "open access" or "open source" is a choice by the owner of rights to make works available to the public.

Assignment and licensing – control of monopoly –

Assignment of Copyrights: Section 18 of Copyrights Act
The owner of the copyright of a work has the right to assign his copyright to any other person. The effect of assignment is
that the assignee becomes entitled to all the rights related to the copyright to the assigned work. [2] However, mere grant
of right to publish and sell the copyrighted work amounts to publishing right and not assignment of copyright.

Where the assignee of a copyright becomes entitled to any right comprised in the copyright, he shall be treated as the
owner of the copyright in respect of those rights. The assignor shall also be treated as the owner of copyright with respect
to unassigned rights. The legal representatives of the assignee shall be entitled to the benefits of assignment, if the
assignee dies before the work comes into existence.

In Video Master v. Nishi Production[3], the Bombay High Court considered the issue whether assignment of video rights
would include the right of satellite broadcast as well. The Court agreed with the contentions of defendant that there were
different modes of communication to the public such as terrestrial television broadcasting (Doordarshan), satellite
broadcasting and video TV. The owner of the film had separate copyright in all those modes, and he could assign it to
different persons. Thus, satellite broadcast copyright of film was a separate right of the owner of the film and the video
copyright assigned to the plaintiff would not include this.

Mode of Assignment: Section 18 of Copyrights Act

As per section 19, assignment of copyright is valid only if it is in writing and signed by the assignor or his duly authorized
agent. The assignment of a copyright in a work should identify the work and specify kind of rights assigned and the
duration and territorial extent of such assignment. Further, it should specify the amount of royalty payable, if any, to the
author or his legal heirs during the continuance of assignment and the assignment will be subject to revision, extension or
termination on terms mutually agreed upon by the parties.
If the period of assignment is not mentioned it will be deemed to be taken as five years from the date of assignment. If the
territorial extent of such assignment is not stipulated, it will be taken as applicable in whole of India.

Also, Section 19(8) contemplates that the assignment of copyright work against the terms and conditions on which rights
have been assigned to a particular copyright society where the author of the work is a member shall be void. Further,
Section 19(9) and section 19(10) opine that the assignment of copyright for making cinematograph film or sound
recording shall not affect the right of the author to claim an equal share of the royalties and consideration payable with
respect to use of his protected work.

In Saregama India Ltd v. Suresh Jindal[4], it was held that the owner of the copyright in a future work may assign the
copyright to any person either wholly or partially for the whole of the copyright or any part thereof and once the
assignment is made the assignee for the purpose of this Act is treated as the owner of the copyright.

Licensing of Copyright
The owner of copyright may grant a license to do any of the act in respect of which he has an exclusive right to do. The
license can be classified into following categories:

Voluntary license: : Section 18 of Copyrights Act

The author or the copyright owner has exclusive rights in his creative work and he alone has right to grant license with
respect to such work. According to section 30 of the Copyright Act 1957, the owner of the copyright in a work may grant
any interest in his copyright to any person by license in writing, which is to be signed by him or by his duly authorised
agent. A license can be granted not only in existing work but also in respect of the future work, in this situation
assignment shall come into force when such future work comes into existence. Where a licensee of the copyright in a
future work dies before such work comes into existence, his legal representatives shall be entitled to the benefit of the
license if there is no provision to contrary.

The mode of license is like an assignment deed, with necessary adaptations and modifications in section 19 (section 30A).
Therefore, like an assignment, a license deed in relation to a work should comprise of following particulars:
1. Duration of license
2. The rights which have been licensed
3. Territorial extent of the licensed
4. The quantum of royalty payable
5. Terms regarding revision
6. Extension and termination

Voluntary licenses can be:

Exclusive – The term exclusive license has been defined in Section 2(j) as a license which confers on the licensee and
persons authorized by him, to the exclusion of all other persons, any right comprised in the copyright work.

Non-exclusive – It does not confer right of exclusion. It is mere grant of an authority to do a particular thing which
otherwise would have constituted an infringement. When owner grants an exclusive right, he denudes himself of all rights
and retains no claim on the economic rights so transferred.
Co-exclusive – Here the licensor grants a license to more than one licensee but agrees that it will only grant licences to a
limited group of other licensees.

Sole license – Where only the licensor and the licensee can use it to the exclusion of any other third party.
Implied license – Author impliedly allows or permits the use of his work. For example, he had knowledge that someone is
using his work but he did not take any action.

Compulsory Licenses
Compulsory and statutory licenses can impact both the identity of the licensee who the owner chooses to deal with and
the terms, including rates of royalty, that the owner may stipulate for such dealing. Viewed from this perspective,
compulsory licenses are less of an infraction on owner autonomy, on both these counts. The owner does retain a fair bit of
autonomy to enter into appropriate licensing arrangements with those who he may deem fit, and he is also permitted to
negotiate on the terms of the license within the zone of reasonableness. Normally, it is an unreasonable refusal to deal
with a person that gives rise to a compulsory license. This brings us to the third important distinction between a
compulsory and statutory license. The former is always granted upon specific application by an individual to the
competent authority. The latter, on the other hand, is a blanket fixation of rates of royalty by the authority and a grant of
standardised licenses to all those who are interested in availing the same. The owner, as a necessary corollary, has no
autonomy on the identity of those who obtain the license, or what they pay as royalty for the same.

Categories of Compulsory Licenses

There are five main categories of compulsory licenses currently operating in India.
These are:
1. Licenses in respect of works unreasonably withheld from the public;
2. Licenses in respect of orphan works;
3. Licenses in respect of works for the differently abled;
4. Licenses in respect of translations;
5. Licenses in respect of reproduction and sale of works unavailable in India.

Statutory Licenses
As seen from the above discussion of compulsory licenses, such licenses can be understood as a particularised
expropriation of owner autonomy in respect of the copyrighted work. The need for such expropriation arises only upon
acts or inaction on the part of the owner that render the work unavailable to the public or differently abled persons.
Statutory licenses, on the other hand, do not require any examination into the conduct of the owner. It attempts a
wholesale expropriation of owner autonomy, once the work fits within the broader class of works that can be so licensed.

There are two such categories of statutory licenses, namely cover version recording licenses (Section 31C) and
broadcasting licenses (Section 31D).
The first has existed, though as part of the fair dealing exceptions in Section 52, from the very beginning. The second is a
very recent addition to the Act vide the 2012 amendment.

Conclusion
The term ‘assignment’ and ‘license’ are not interchangeable. An assignment is different from a license. Generally, in
absence of any provision to the contrary the assignee becomes the owner of the assigned work, whereas in case of a
license the licensee gets the right to exercise particular rights only.
An assignment may be general, i.e. without limitation or an assignment may be subject to limitations. It may be for the
whole term of copyright or any part thereof. An assignment transfers an interest in and deals with copyright itself as
provided under section 14 of the Act, but license does not convey the copyright but only grants a right to do something,
which in absence of license would be unlawful. An assignment transfers title in copyright, a license merely permits
certain things to be done by licensee. The assignee being invested with the title in the copyright may reassign

The Difference Between Copyright Assignments And Licenses

There are two ways that a copyright owner can transfer some or all of his or her copyright rights: through a license or an
assignment.

In an assignment of copyright rights, the owner sells his or her ownership rights to another party and has no control over
how the third party uses those rights. A copyright assignment is sometimes referred to as a sales agreement for copyright.

The buyer (assignee) can then use the copyrighted work or do whatever he or she wants with it. He or she all of the
assigned rights that the original owner had.

A valid assignment of copyright must be in writing and signed by, or on behalf of, the copyright owner/assignor. The
subject of the assignment must be clear as to what copyright is being assigned in which work(s).

In a license of copyright rights, the owner maintains his or her copyright ownership rights, but allows another party (the
licensee) to exercise some of those rights without the licensee’s actions being considered copyright infringement. A
license is often preferred over an assignment when the copyright holder wishes to maintain and exercise some ownership
control over the rights and how the licensee uses the copyright holder’s rights.
For example, a typical software license agreement is a copyright license agreement. The software copyright owner grants
the user/licensee the right to use the software in a specified, restricted manner. In return, the user/licensee may agree to
limit his or her use of the software in various ways and to pay the copyright owner a license fee.

Unlike a copyright assignment, a copyright license does not have to be in a signed writing. A license can be oral or arise
by implication when considering all of the facts and circumstances surrounding the transaction between the copyright
owner and the purported licensee.

If you own a copyright in a work that you are thinking about assigning, you should consider whether to license your
copyright instead, thus allowing you to retain ownership, and license only certain rights to the other party.

Right in performances – Infringement and remedies.

Remedies for Copyright Infringement in India
This paper looks at the different remedies a person has for copyright infringement in India. There are three types of
remedies a person can get for copyright infringement in India – civil remedies, criminal remedies and administrative
remedies. This paper will be analysing each of them in detail.

Types of Copyright Infringements

Copyright infringement has become a serious issue in the modern world. Infringement occurs when a person intentionally
or unintentionally copies the work of another creator. Infringement is usually classified into two categories – primary
infringement and secondary infringement.
Rights of Copyright Owners
It is important to first understand the rights held by a copyright owner before tackling the remedies for infringement.
Authorized copyright owners have the right to:

 Publish the work

 Perform the work in public
 Produce the work in a material form
 Produce, reproduce, perform or publish any translation of the work
 Make any adaptation of the work
  Communicate the work through broadcast, radio or cable
The original creator of the work enjoys a few exclusive rights to:

 Make copies of the work

 Make a derivative based on the original
 Distribute the work
 Perform the work publicly
 Display the work in a commercial setting
 Seek remedies for unauthorized use of the copyright work

Civil Remedies for Copyright Infringement

The civil remedies for copyright infringement are covered under Section 55 of the Copyright Act of 1957. The different
civil remedies available are:

1) Interlocutory Injunctions
The most important remedy is the grant of an interlocutory injunction. In most case the application filled is for
interlocutory relief and the matter rarely goes beyond the interlocutory stage. There are three requirements for there to be
a grant of interlocutory injunction – Firstly, a prima facie case. Secondly, there needs to be a balance of convenience.
Finally, there needs to be an irreparable injury.

2) Pecuniary Remedies
Copyright owners can also seek three pecuniary remedies under Section 55 and 58 of the Copyright Act of 1957. First, an
account of profits which lets the owner seek the sum of money made equal to the profit made through unlawful conduct.
Second, compensatory damages which let the copyright owner seek the damages he suffered due to the infringement.
Third, conversion damages which are assessed according to the value of the article.

3) Anton Pillar Orders

The Anton pillar order gets its name from the holding in Anton Pillar AG V. Manufacturing Processes. The following
elements are present in an Anton Pillar Order – First, an injunction restraining the defendant from destroying or infringing
goods. Second, an order permitting the plaintiff’s lawyer to search the defendant’s premises and take goods in their safe
custody. Third, an order that the defendant be directed to disclose the names and addresses of suppliers and consumers.

4) Mareva Injunction
The Mareva injunction comes into play when the court believes that the defendant is trying to delay or obstruct the
execution of any decree being passed against him. The court has the power to direct him to place whole or any part of his
property under the court’s disposal as may be sufficient to satisfy the decree. This is provided in Order XXXVIII, Rule 5
of The Civil Procedure Code, 1908.

5) Norwich Pharmacal Order

The Norwich Pharmacal Order is usually passed when information needs to be discovered from a third party.

Criminal Remedies
Under the Copyright Act, 1957 the following remedies are provided for infringement:
 Imprisonment up to 3 years but, not less than 6 months
 Fine which may not be less than 50,000 but, may extend up to 2,00,000
 Search and seizure of infringing goods
 Delivery of infringing goods to the copyright owner

Fair Dealing under Copyright Law in India

The defence of fair dealing is an integral part of copyright law. The fair dealing defence allowed certain usage of literary
works which, would have otherwise been an infringement of copyrights. The fair dealing defence states that copyrights
must not stifle the very creativity that law is meant to foster[1]. It is “a key part of the social bargain at the heart of the
copyright law, in which as a society we concede certain limited individual property rights to ensure the benefits of
creativity to a living culture.”
The Indian Copyright Act under Section 52 makes fair dealing a valid defence for copyright infringement. This defence
places the burden of proof on the copyright owner to establish infringement. However, the Copyright Act has not defined
fair dealing which led the Indian court to rely on the definition of English authorities. The court usually relies on the case
of Hubbard vs Vosper which held that “It is impossible to define what is “fair dealing.” It must be a question of degree.
You must consider first the number and extent of the quotations and extracts. Are they altogether too many and too long
to be fair? Then you must consider the use made of them. If they are used as a basis for comment, criticism or review, that
may be fair dealing. If they are used to convey the same information as the author, for a rival purpose, that may be unfair.
Next, you must consider the proportions. To take long extracts and attach short comments may be unfair. But, short
extracts and long comments may be fair. Other considerations may also come to mind. But, after all, whatever said and
done, it must be a matter of impression. As with fair comment in the law of libel, so with fair dealing in the law of
copyright. The tribunal decides on facts of the case. In the present case, there is material on which the tribunal of fact
could find this to be fair dealing.[2]”

Unit 5 : Industrial design

Essential characteristics - Designs Act– Registration – Subject matter Infringement –
The article is written by TusharVerma, currently enrolled in the Certification in Intellectual Property Law at
LawSikho& by Richa Singh of Faculty of Law, Aligarh Muslim University. In this article, they has discussed all the
provisions mentioned under the Design Act of 2000 and why is it necessary to have such laws in the country. It also
discusses the new provisions of the Act which were absent in the earlier enactments and helped the proprietors in
developing a secure market for their product. The article is compiled and updated by SubodhAsthana.

Introduction
In our day to day life, we encounter various objects which we can recognize by observing their design. Products which
are artistically designed can grab the attention of the customer the moment they see it. These designs can take the form of
Art, drawings, graphics etc. These designs may be created by professionals which includes engineered designs or
architectures blueprints for any property, interior designs etc.
The term ‘design’ does not include any procedures such as mode of construction of an article. Earlier this Act was
governed by Design Act, 1911. So as to bring the Design Act at par with International Law enactment of the new act
came into being. Presently, design laws are maintained by the Design Act, 2000.
Intellectual property laws in India cover the rights related to trademarks, copyrights, patents, designs and geographical
indications of goods. The basis of this Act was ‘first to file, first to get’ system which means that an innovator or owner of
any design should file an application to register the same as soon as possible to prevent it from piracy and for claiming
certain rights over that particular design.

Design act 2000

Earlier this Act was governed by the Design Act, 1911. In order to bring the Design Act at par with the International law
the enactment of the Design Act, 2000 took place. So, presently the design laws are regulated by the Design Act of 2000.
It is an Act to consolidate and amend the law relating to the protection of designs. It was published in the Gazette of India
and came into force on 12.05.2000. This Act is a complete code in itself and is statutory in nature. It extends to the whole
of India.

Design act 2000 definition

“Design” means features of shape, pattern, configuration, ornament or composition of colors or lines which is applied in
three dimensional or two dimensional or in both the forms using any of the process whether manual, chemical,
mechanical, separate or combined which in the finished article appeal to or judged wholly by the eye.

What it does not include?

 It does not include any mode of construction or any trademark as defined under clause (v) of sub-section (1)
of Section 2 of the Trade and Merchandise Marks Act, 1958.
 It does not include ‘property mark’ as defined in section 479 of the Indian Penal Code, 1860.
 It does not include any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

Origin and development of design act in India

 The origin of the Design Act in India traces back to the British period.
 The first Act that gave privileges and protection to designs was the Patent and Designs Act, 1872. This Act
supplemented the Act of 1859 which was passed by the Governor-General of India to protect industrial
designs and grant privileges to inventors.
 The Inventions and Designs Act of 1888 repealed this Act of 1872.
 The Act of 1888 was a reflection of the Designs Act of the United Kingdom.
 In the year 1911, the British government enacted a new law in the form of the Patent and Designs Act
repealing all the prior legislations.
 In 1930, this Act was amended and the government came up with some changes in the process of registration
of designs in which the concept of new and original design changed to the new or original design.
 This legislation used to govern the matters related to both patents as well as designs.
 In 1970, the Patent Act was enacted to deal with the matters of patent specifically. All the provisions
regarding patents from this Act were repealed and it continued to deal with Industrial designs till 2000.
  India became a member state of the WTO in the year 1995. Consequently, the Patents and Designs Act of
1911 was repealed and a new act called the Designs Act, 2000 was enacted in compliance
with TRIPS (Trade-Related aspects of Intellectual Property Rights) to make design laws for the country.
 This new Act was enforced on 11th May 2001.

Salient features of design act 2000

 India is a member of the World Trade Organization’s Paris Convention. It has signed the Patent Cooperation
Treaty which allows all the signatories of the convention to claim priority rights.
 Under the Act of 2000, Locarno classification has been adopted in which the classification is based only on
the subject matter of design. Under the previous provisions, the classification was made on the basis of the
material which has been used to make that material.
 The introduction of “Absolute Novelty” makes it possible to judge a novelty on the basis of prior publication
of any article. This is applicable in other countries also.
 As per the new law, a design can be restored which was absent in the previous enactment. Now, the
registration of a design can be restored.
 The Act allows the district courts to transfer cases to the high courts where the jurisdiction is present. It is
possible only in cases where a person is challenging the validity of any registration.
 Laws regarding the delegation of powers of the controllers to other controllers and the duty of examiner are
also mentioned in the new Act.
 The quantum of punishment is also enhanced under the Act in case of any infringement.
 The secrecy of two years of a registered design is also revoked.
 Provisions regarding the avoidance of certain restrictive conditions are also there so as to regulate anti-
competitive practices in contractual licenses.
 Whenever a license is brought within the domain of public records and that too publicly, the registration is
likely to be taken into consideration. Anyone can get a certified copy of it in order to inspect the same.
 The laws regarding the substitution of the application before registering a design are also mentioned in the
new enactment.
 Under new provisions, power has been given to district court to transfer cases to the high court where the
court is having jurisdiction. This is only possible if the person is challenging the validity of the design
registration.
 Incorporates the provisions regarding delegation of powers of the controller to other controllers and duty of
examiner.
 Under the new provision, the quantum of punishment is also enhanced in case of infringement.
 It revokes the secrecy of two years of a registered design.
 It contains provisions for the avoidance of certain restrictive conditions so as to regulate anti-competitive
practices within contractual licenses.
 The registration is taken into consideration when it is brought within the domain of public records that too
physically. Anyone can inspect the records and get a certified copy of it.
 It contains provisions for substitution of the application before registering the design.

Objectives of design act 2000

 The primary objective of the Design Act is to protect the designs.
 The Design Act 0f 2000 is an Act to consolidate and amend the law relating to the protection of designs.
 Its main objective is to protect new or original designs from getting copied which causes loss to the
proprietor.
 The important purpose of design registration is to see that the creator, originator or artisan of any design is not
deprived of his reward for creating that design by others copying it to their goods or products.
 An industrial design helps in drawing a customer’s attention and helps in increasing the commercial value of
an article. Therefore, helps in expanding its market.
 There are many competitors who adopt evil ways to reduce the competition in the rival groups by exploiting
the designs to their advantage. Thus, it is necessary to have laws to safeguard the interests of the owners of
these designs. In order to fulfill this objective, the Design Act of 2002 came into existence.

What is design all about?

The term ‘Design’ under Design Act is defined as :
“Features of shape, any configuration, pattern, ornament or composition of lines or colours which is applied to Two
dimensional or three dimensional or in both the forms using any process including manual, chemical or mechanical,
separate or combined which in the finished article appeal to or judged solely by the eye.”
It neither includes any mode of construction nor any trademark as defined under clause (v) of sub-section (1) of section 2
of Trade and Merchandise Marks Act, 1958. It even does not includes property mark as defined in section 479 of the
Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.[1]
With reference to the Design Act, 2000 what are articles?
Under the provisions of Design Act, 2000, any manufactured object is known to be “article”. The object can be of any
substance irrespective of artificial or natural. The article must be capable of being made and sold separately.

Essential Requirements for registration

Novelty and originality

A design can be considered for registration only if they are unique. A combination of previously registered design can
also be considered only if the combination produces new visuals. In a case Hello Mineral Water PVT. LTD. v.
Thermoking California Pure, a design of water dispenser having a cylindrical shape was not considered as new on the
grounds that mere shape and form is not sufficient to prove novelty.

Design must be unique, a Prior publication is not acceptable

The design must not be a published one. If the design is already published than the design is not eligible for the
publication. There should not be any tangible copy available already in the market if you are seeking registration of the
design that is in digital format. Displaying of the design in any fashion show by the creator is the publication of that
design. Secret and private use of the design does not amount to the publication and can be used for the experimental
purpose.
It was held in Kemp and company v. Prima Plastics LTD. that disclosure of design by the proprietor to any third person
cannot be claimed as publication provided that the disclosure must be in good faith.

Making application of design to an Article

The applicability of the design should be to the article itself. It can be informed of a three-dimensional figure. There are
two-dimensional figures also included in this act i.e any painting or any graffiti on the walls or print on the bedsheets.

The design must not be contrary to the order and morality

The design must be registrable under the Design Act, 2000. It must not be prohibited by the Government of India or any
institution so authorized. The design must be capable of registering under Section 5 of this act. The design which can
cause a breach of peace and may hurt the sentiments of the people may not be allowed to get register.

What is to be considered to register under this Act?

Looking forward to registering a design under Design Act, 2000, one must ensure following features in your design which
are:
 The work must be capable of selling and made separately.
 It must be original and new to the market. The plagiarised design will not be considered under this act.
 It should be purely distinguishable from other designs.
 It must not relate to obscenity or any material which is inappropriate.

Rights of the proprietor of the design

When a proprietor applies for the registration of the design he shall automatically get ‘copyrights in design’ for the period
of 10 years from the date of registration. This period can be extended if the proprietor wants to continue with the design.
The Design Act should not be confused with the Copyrights act because there are many products which can be registered
under both the acts but their remedies cannot be sought in both the acts individually.

Who is entitled to seek Registration?

As per the provisions of Design Act, 2000 any proprietor who is seeking registration of a design which is original and
unpublished previously in any country which does not seems to be contrary to any law and order of that country can file
an application for registration. A proprietor as per Section 2(j) includes that person who
1. is the author of that design
2. acquired design for a valid consideration and
3. Any person to whom the design has been devolved from the original proprietor.
In case there is more than one author than the design must be applied by the joint authors only.

Locarno classification
Locarno agreement is an agreement as per which the designs are registered under the Act. It classifies goods for the
purpose of registering them which helps in Design searches. It divides designs into different classes which are mainly
function-oriented.
Procedure for registration of design in India
Chapter 2 of the Design Act deals with the registration of designs and the procedure to be followed for the same. The
following steps must be followed:
 An application for the registration shall be made in the patent office in the prescribed form along with the
prescribed fee. The class in which the design is to be registered must be specified in the application and the
article(s) to which it is to be applied. There are separate applications which need to be filed for each class of
article.
 The controller will give the application for examining it so as to check whether the design is capable of being
registered or not. If everything seems perfect then the controller will accept the application and proceed
further.
 If there is any objection, then the applicant or his agent will be asked to make necessary amendments so as to
register the design and nullify the objection.
 If the objection does not get removed within three months after the hearing, the application will be withdrawn
and it must be noted that

Application for registration of designs

The application for registration of designs is given under Section 5 of the Design Act, 2000.
 The controller registers a design under this Act after verifying that the design of any person, claiming to be
the proprietor, is the new or original design not previously published anywhere and is not against any public
policy or morality. Provided that such a design should be capable of being registered under this Act.
 The applications under the Act shall be filed in the Patent Office in the prescribed manner along with the
prescribed fee for filling the form.
 The design should be registered in a specific class and not in more than one class. In case of any doubt
regarding the class in which the design should be registered, the Controller will decide the matter.
 The controller may even reject any design and not register it. In such a case, the person aggrieved may file an
appeal before the High Court.
 If any application is not complete within the prescribed time limit owing to the fault of the applicant then it
shall be abandoned.
 A design when registered shall be registered as of the date of the application for registration.
A wide variety of items that can be registered under the Act include cutlery, dresses, etc.

Items that cannot be registered as a design under the Act

 Signs, emblems or flags of any country.
 Size of any article, if changed.
 Structures and buildings.
 Integrated circuits’ layout designs.
 Trade variations.
 Any principle or mode of construction of any article such as labels, tokens, cartoons, cards, etc.
 Books, calendars, certificates, jackets, forms-and other documents, greeting cards, maps and plan cards,
postcards, leaflets, stamps, medals, dressmaking patterns.
 A mechanical contrivance.
 Workshop alterations of components of an assembly.
 Parts of any article which is not manufactured and sold separately.

Duration of the registration of a design

The total time for which a design can be registered is 15 years. Initially, it was 10 years, which could be extended for
another 5 years by paying a fee of Rs. 2000 to the Controller but it should be done before the expiry of that 10 years
period. The proprietor of any design may even file an application as soon as the design gets registered for such an
extension.

Appeal for cancellation of the registration of a design

The registration of any design can be canceledanytime after it gets registered by filing a petition for such cancellation
in Form 8 along with a fee of Rs. 1,500 to the Controller.
The grounds for such cancellation are as follows:
 The design has been already registered in India previously.
 It has been published in India or somewhere else before the date of registration.
 The design is not original or new.
 It is not registrable under the Act.
Entitlement of registration under design act 2000
According to the Design Act of 2000, a proprietor who wants to get his design registered and it is original and is not
published previously anywhere in any country and the one which does not seem to be clashing to any law and order of
that country, can file an application for getting the design registered. A proprietor includes the persons who:
 Is the author of the design;
 Has acquired the design for a valid consideration and
 Anyone to whom that design has been devolved from the original titleholder.
In case if there is more than one author of the design, then the design must be applied by the joint authors.

Copyright in registered designs

After the registration of a design, the proprietor shall have the copyright of the design for 10 years from the date of
registration.
If you want to extend the copyright period for the second period of 5 years then before the expiry of the original said ten
years an application must be filed in the Controller’s office along with the prescribed fee.

Register of designs
A book named ‘Register of Designs’ shall be kept at the Patent Office which contains all the details regarding the
registered designs such as names, addresses of proprietors of registered designs, notifications and transmissions of
designs and other important information. Such register must be maintained wholly or partly on computer diskettes or
floppies as may be prescribed.

Importance of Design
A design reflects someone’s intellect and creativity which afterward becomes a product. The design of any product makes
a long-lasting effect on the consumers’ minds. A design helps the consumers to recognize any product. If a design is
attractive then it adds value to the business of that product. Thus, in order to protect a design from infringement, it is
necessary to get it registered under the Designs Act, 2000. A mechanism has been pre-determined by the government to
fulfill this purpose.
It adds value to the product and helps in gaining fair returns on investment. It gives you fair competition in the market.

Infringement of design
Just like any other Intellectual Property, the designs are also prone to infringement and they can also be copied by the
competitors or some other person. If a design has been copied then the owner of that design can claim damages and can
also apply for an injunction so that the design cannot be used further.
If there arises any question regarding the ascertainment of infringement then the Court will directly look for the design
from the point of view of an average customer. In other words, the Court will consider whether there is any confusion
which is obvious or some material facts in the minds of the customers regarding the two articles.

Industrial design infringement cases

In Disney Enterprises Inc. v. Prime Housewares Ltd., the international registration of industrial designs became a matter
of conflict in India. A Mumbai based company Prime Housewares used to manufacture characters like Mickey Mouse,
Donald Duck, etc. a suit was filed by the Disney enterprises for the infringement of their international registered designs.
The court held that the plaintiff’s trademark is protected but not the designs under the Indian law. An order was passed by
the court for the infringement of the trademark of the enterprises. The Indian company was asked to deliver all the
infringing material to the enterprises so that it could not be used further.

Piracy of registered designs

Section 22 of the Designs Act, 2000 deals with the piracy of registered designs. According to this section, any obvious or
fraudulent imitation of a design which is already registered without the consent of its proprietor is unlawful. It also
prohibits the import of any material which closely resembles a registered design.
This section also provides that in case if a civil suit is brought against any piracy of a design, then the compensation shall
not exceed Rs. 50,000 for the infringement of one registered design. The compensation is statutorily fixed so it serves a
good ground for an interim injunction even before the trial commencement.
In the case of Bharat Glass Tube Limited v. Gopal Gas Works Ltd., the respondents (Gopal Glass Works) had registered
their design for diamond-shaped glass sheets and had a certificate of the same. The appellants started using this design for
marketing. These designs were made in collaboration with a German company.
After knowing that the appellants are using their design, they moved to the Court. The appellants contended that the
respondents’ designs were not new since the German company had been using it since 1992 and it was already published
in the U.K. Patent Office so it lost its originality. When the matter went to the High Court on appeal then it restored the
designs to the respondents. When the matter reached the Supreme Court, it upheld the decision of the Calcutta High
Court.
Conclusion
Design Act, 2000 brings about many changes which are observed in the features. When a developer develop something
for example If an architect develops the structure of a building there is an expectation that my structure will not be
infringed. Many designs are capable of providing the author with copyrights also.
In that case infringement of both cannot be claimed separately. The owner must have to choose which is more beneficial.
High intellects are involved in making a design look good and have an everlasting impact. Government come up with a
great policy of protecting designs. Moreover, these designs can also have a negative impact on the value of the business if
infringed. A good design is always remembered.
Remedies against privacy &Confidential information – As property – Breach of confidence and know – how –

Introduction
When an individual or a corporation enters into an arrangement with other parties, the confidentiality clause plays a
critical role. In specific, it stands out to be an important factor of service provider deals, permits, technology, job
contracts, etc. The key purpose of this clause’s presence is to ensure that security and high degree of confidentiality can
be preserved by the parties participating in the arrangement. It is imperative for organisations to retain a tactical
advantage with the emergence of fierce competition. The topic of the confidentiality of classified information has not yet
been resolved by law in India, and it is important to focus on judicial opinions dealing with such concerns. This article
attempts to examine under Indian law the confidentiality covenants and their remedies for breaches.

What is a Confidentiality Clause?

Confidential information, as known by different court rulings, is any content, intelligence, information, data accessible
solely to a private organisation but not to the public domain that could adversely impact the company’s business if
misused or revealed. Trade secrets, such as construction practises, manufacturing procedures, consumer databases, are
protected by statute. No breach of secrecy shall be deemed to reveal such information to a government representative,
lawyer or court official to help with a dispute as long as the parties provide a notice of such order. Material that is in the
public’s common knowledge is not treated as private
The Confidentiality clause for each business may always not be the same, it shall depend on each business to another and
the parties need to demarcate about the information that shall be termed as confidential to some and non-confidential to
another. With the emergence of start-ups in the country and with the advent growth of digital era, it is upon the parties to
decide the confidential information, the liabilities of the breach and the remedies to be cured for the defaulting parties
along with an understanding that can a non-defaulting party sue the other in case of absence of confidential information in
the agreement and the recourse to the same as well. No clear outline shall be provided for either party, or any business, a
clear understanding of the working of the business and its implications on loss of information can be captured by the
parties.

Essentials of Confidentiality Clause

The protection of sensitive information for businesses is a pressing necessity. Though statutes have been adopted by
several nations, India still lacks a legal system dealing with privacy rights. In the absence of specific laws providing
sensitive information security, it is important that the information provided by both the parties are confidential. Therefore,
care must be exercised when writing the confidentiality clause and the parties are instructed to do it in compliance with
the qualifications set out by the courts, such as that the information should be of such commercial importance and utility
that it would be adverse to the interests of the corporation if disclosed; such provisions should not constitute a restraint of
trade; and information must be unknown.
However, the disclosing party may also insist on the principle of fairness, equity, good conscience and fair dealing in the
absence of the confidentiality clause / agreement, even if its applicability is not unlikely. This is to preclude the
publication, after the arrangement has been concluded, of any confidential information which one side has obtained from
the other, or its use for its own purposes, whether that disclosure causes irreparable harm or injury.

Consequences of breach of Confidential Information

In the event of a breach of contract, a party can obtain relief by an injunction by prohibiting a third party from releasing or
returning sensitive information, as well as liability or restitution for injuries allegedly suffered as a result of a breach of
contract. To use these reliefs, however, the proof of breach of contract as well as the harm incurred is on the default,
which, considering the existence of sensitive documents, often becomes a difficult task.
Businesses may also take advantage of clauses of the Indian Penal Code, such as Section 381 (theft by clerk or servants),
Section 403 (dishonest misappropriation of property) and Section 405 (criminal breach of trust), in addition, Information
Technology Act, 2000 provisions such as Section 43A (compensation for failure to protect confidential personal data or
information at the corporate level in particular) and Copyright Act, 1957 which acts as an additional recourse to the
organisations
It is necessary that the following elements be identified in order to prevail in an action for violation of confidentiality:
  The information/data has all the meaning of the term confidentiality or fits within the parameter.
 The data/information was communicated to the recipient, placing an obligation of trust.
 The receiver misused the data/data for a cause other than the justification for its disclosure.
The first condition notes that the data is not in the public domain. It may be a trade secret, consumer date, method or
development information for a new product (such as ingredients or formulae).
The second key determines the way in which the secret material has been transmitted to the receiving party by the
disclosing party. The duty typically emerges from a contractual arrangement whereby the material is transmitted only for
the reason expected to be used.
The third vital specifies that, without the consent and to the detriment of the revealing party causing harm, disability and
damage, the receiving party has revealed or used the sensitive material.
The choice of remedy in a case for violation of secrecy is usually one or more of the following:
 Damages (monetary indemnity)
Typically, this involves the aggrieved party to measure, produce proof of the amount of loss and explain how the amount
was measured. If the aggrieved party is not genuinely causing losses, it is entitled to collect only negligible damages and
nothing more.
The infringement party has unjustly made to claw back some profit. It is possible to pray for an injunction to prohibit the
group from trying to do this or to stop them from doing something under CPC in the future.
If the offence is so flagrant that an extra degree of penalty is necessary, exemplary damages.
The choice of solution will rely on the reality of each case above, if an injunction plus bring claim for damages is the ex-
employee who quit the company and began a competing business on infringed records. If the former employee exits the
corporation and is about to start up a rival enterprise, the permanent injunction will be the right solution. In the absence of
any legal injury, this will be even safer.
The other form of solutions that any organisation or an individual can take for any possible breach is to ensure that:
 Put the employee ‘on alert’ about their ongoing duties;
 Set out any doubts or fears that the employer has about the employee violating their duties or planning to
violate them; and
 The employee’s order to sign an undertaking.

Accidental breach of Confidentiality

Accidental breach of confidentiality can be taken as a recourse by the individuals or the corporations when they believe
that by putting this information out, they shall neither be breaching the confidentiality clause nor harming the goodwill of
the organisation or the individual. The Litmus in such scenarios is to prove that there isn’t mensrea on the part of the
disclosing party. It also becomes pertinent to note here that a clear ill-will agenda is struck out.
However, if it is proved by the non-defaulting party that, the defaulting party had knowingly and in spite of agreed to all
the terms in the agreement committed such breach, the non-defaulting party can take all the relevant actions as if the
breach has been purposely committed by the defaulting party.
Remedies for a breach of a confidentiality clause
In order to remedy the breach caused, it has to be divided in two parts:
1) Remediable Breach
2) Non-Remediable Breach
The courts take the opinion that the test, in most cases, depends on making it right for the future while deciding if a
violation is worthy of redress (or a ‘corrective infringement’). Therefore, the offending party shall delete (to the extent
possible) the past consequences of the violation and eradicate the potential effects of the infringement.
By means of comparison, the idea of a remediable offence has been contrasted by the courts to an illness where the results
of the disease will not be reversed because they have already arisen, but where the treatment is the act of subduing and
suppressing the potential symptoms.
However, the courts accept that there are certain violations, such as a violation of trust, that would not be capable of
redress. Similarly, by means of extrapolation, it seems likely that failure to do anything at a time stated in a contract will
still be able to resolve it (by doing that thing at a later date and compensating the other party for the damage that flows in
the intervening period) unless it is necessary to do that thing at a specified time.
Interestingly, if the termination clause defines a period for redress, a two-step analysis has been implemented by the
courts. The first step is to inquire if the violation can be remedied (in the context mentioned above), thus avoiding the
time stated in the agreement. The second move is, assuming that the violation may be remedied, to inquire if it was
actually remedied at the time.
However, it can be remedied in the following manner:

1) Injunction
The plaintiff will not be demanding punitive interest in certain loss of trust situations, but would rather keep the details
completely out of the public domain. This may be done by the injunction order of the court either limiting the defendant
from doing something or requiring the defendant to do something.
2) Account of Profit
A profit account is a redress that strips the defendant of the gains earned as a result of a breach.
3) Damages
Damages can be sought and compensated by the judge for breach of contract or sensitive knowledge leakage.

Defences for breach of Confidentiality

It is essential to demarcate what confidential information shall mean to the individual parties and how long can such
parties treat the given information as confidential.
In case of breach of confidentiality following resources shall be appended too:
1) If the defaulting party can prove to the court that the non-defaulting party itself has come with unclean hands as
prayer, the non-defaulting party can be barred from taking the recourse to the court.
2) If the defaulting party can prove that there was no clear demarcation in the clause mentioned in the agreement, which
turned into ambiguity and even after reaching the non-defaulting party for constant clarification, such requests were
turned down by the non-defaulting party
3) If the information disclosed by the disclosing party is within the exemptions of the confidentiality clause
4) If the information was necessary for the disclosing party to disclose before any judicial or non-judicial authority.

Case Laws

American Express Bank Ltd. v. Ms PriyaPuri

The complainant is a financial corporation, and as head of their wealth management service for the northern area, the
defendant was working with the plaintiff. The plaintiff alleged that the defendant left her job and took up work with the
competition bank and used the client details of the claimant to order the complainant from their customer / customer and
prompted them to transfer to the competitor bank. The complainant brought a perpetual and binding injunction against the
defendant seeking, inter alia, to bar the defendant from using or revealing any information and trade secrets related to the
plaintiff’s business and activities. The complainant argued that the defendant’s action represents a violation of the terms
of secrecy as set out in her letter of appointment, and the defendant’s action was aimed against the consumer protection
policy’s code of conduct.
The defendant categorically argued that the identities of clients, their telephone numbers and addresses are well known
and that anybody can readily recognise them and that such information cannot be represented as trade secrets or sensitive
information. The defendant also argued that she had formed a relationship with all her customers and collected the details
from the directories of the different organisations to ask the client about the claimant when working with them. In these
agreements, the bank does not have any exclusive rights, and the customers are not bound by any contractual agreements
with the claimant bank. It was averred in the circumstances that the relief sought against the defendant was nothing but an
effort to injunctconsumers to transfer their accounts from the plaintiff and to prohibit the defendants from dealing with the
customers.
The court held that nothing had been created by the appellant that would prove that they had done enough to assert
proprietary rights in the public domain for the content available. Furthermore, if the restraint is absolute or partial,
unqualified or skilled, whether it is in charge of commerce, the arrangement is invalid. When the code is exhaustive on
the subject protected by it, the court will not look at the test applied by the English courts.
The permanent injunction requested by the defendant was refused.

Homag India Private Ltd v. Mr Ulfath Ali Khan & Other

The claimant was an Indian affiliate of the multinational MNC Homagacompany and its business concentrated on the
supply of equipment, cells and factory installations for the building industries of panel manufacturing furniture, structural
parts and timber frame house construction.
As a Senior Business Engineer, the defendant (first defendant) joined the claimant’s services. The defendant was granted
two promotions in the year 2009 after entering the services of the complainant’s corporation. In the course of
employment, the defendant had access to the sensitive business records of the claimant. On 25.03.2009, the first
defendant forwarded his resignation and begged the plaintiff to deprive him of his employment on the basis that he had
earned a better position.
The complainant found that the defendant had given the second defendant many emails from an official email account
containing classified material. These emails included customer information, including the revised published reports
included, the status of pending offers and other technical specifics of the goods of the claimant. Subsequently, the
defendant admitted this in an affidavit.
The court found that the first defendant was in collusion with the second defendant and had the intention of forming a
competing private limited company in India. The purpose of the second defendant was to name the first defendant as its
Indian entity’s Sales and Service Chief. Until such a corporation is set up, the first defendant will be an employee of the
second defendant. It was decided by the defendants.
Accordingly, the injunction was issued to prohibit the use of data by the appellant.
Burlington Homes Shopping Pvt Ltd v. AjnishChibber
The claimant becomes a postal order processing provider which issues mail order catalogues dealing with many consumer
goods that have been placed on the consumers of the applicant’s select list. For a number of years, the complainant has
built a directory of clients / customers database, spending a large amount of money and resources. It was averted by the
complainant that by going into a similar mail-order shopping company, the defendant had developed himself as a rival
when severing his partnership with the complainant. The defendant managed to procure a copy of the database and
otherwise guarded the secret of the plaintiff and began using it to create a partnership with the customers of the plaintiff.
The appellant requested, against this, a perpetual injunction against the defendant.
All the content case averments were rejected by the defendant on the basis that the said database was neither created by
the claimant nor has any copyright therein. Furthermore, the claimant argued that it had independently created its own
database and that its use did not represent any violation of the applicant’s copyright. “The court ruled that” the deciding
factor in determining whether the copyright of another person has been infringed is to see whether the impugned work is a
slavish reproduction and copy of the work of another person or whether it carries the appearance of the labour and efforts
of the author itself.
“The court ruled that” the deciding factor in determining whether the copyright of another person has been infringed is to
see whether the impugned work is a slavish reproduction and copy of the work of another person or whether it carries the
appearance of the work and efforts of the author himself.
As the evidence given by the appellant is compared with the data present on the floppies recovered from the defendant’s
custody, it is discovered that there were a large number of entries comparable word by word, line by line, and even room
by space.
An appeal by the appellant for the grant of an injunction was permitted.

Absence of Confidentiality clause -Recourse in these situations

Indian courts have generally followed the law of equity that, even in the absence of a contract, a person obtaining
sensitive information in trust should not take undue advantage.
In the case of John Richard Brady v. Chemical Process Equipment Private Limited (‘Brady Case’), the Delhi High Court
ruling is perhaps one of the first cases that, in the absence of a contract, addresses the concepts of secrecy obligations. The
Saltman Engineering Case was pursued by the Delhi High Court and held that “the law on this subject does not depend on
any implied contract. It depends on the broad principles of equity that who has received information in confidence shall
not take unfair advantage of it“. The Delhi High Court found it to be in the interest of justice to restrain the defendants
from abusing the know-how, specifications, drawings and other technical information regarding the plaintiff’s machine
“which was entrusted to them under express condition of strict confidentiality, which they have apparently used as a
‘spring-board’ to jump into the business field to the detriment of the plaintiffs.“
The Karnataka High Court made similar findings in the case of Inphase Power Technologies v. ABB India Limited,
quoting the following observations from Lord Greene:
“If a defendant is proved to have used confidential information, directly or indirectly obtained from a plaintiff, without
the consent, express or implied of the plaintiff, he will be guilty of an infringement of the plaintiff’s rights.“
It is clear that courts in India have generally followed the method taken by the English courts and, even in the absence of
a deal, have tried to secure sensitive information. However, in some circumstances, Indian courts have pursued additional
conditions to apply the law and there have been nuanced variations in the approaches of the different High Courts. It is
obvious that we probably haven’t heard the last word on this yet.

Conclusion
The importance of Confidentiality and its protection is not only important but mandatory since a lot of the individuals and
organisations goodwill depend on such information that is passed to the parties for their speedy and smooth conduct of
business.
Industrial trade secrets – Remedies.
With recent advances in technology, as well as the ease of sharing, copying and storing information in the digital world,
one of the biggest challenges that businesses face is the protection of their confidential business information. This
information can include business strategies, proposals, client databases and information, compilations, designs,
programmes, drawings, devices, formulae or compositions. Not all types of information qualify for protection under the
patent and copyright laws; further, certain data arises out of a company’s day-to-day operations for which formal
protection is not sought, but which remains valuable.
Many businesses are finding it challenging to safeguard their crucial information, due to the various online and physical
tools available to ease the transfer of data. The threat they face is not only external, but can also come from internal
sources such as employees and contractors who have access to important business information.
It is increasingly common for employees to switch jobs. When they do, they sometimes take confidential information
with them or even set up competing businesses based on their previous employer’s stolen data, including technical
information, business methods and strategies. Contractors sometimes infringe on drawings, designs, recipes and
compositions that have been shared with them by a client(or produced under a client’s technical guidance), by offering the
same or similar products at a cheaper price and under a different label.

Protection under various laws

Although India has no specific trade secrets law, Indian courts have upheld trade secrets protection under various statutes,
including contract law, copyright law, the principles of equity and – at times – the common law action of breach of
confidence(which in effect amounts to a breach of contractual obligation). Section 72 of the Information Technology Act
2000 also provides certain protection, although this is limited to electronic records.
The remedies available to the owners of trade secrets are:
 an injunction preventing a licensee, employee, vendor or other party from disclosing a trade secret;
 the return of all confidential and proprietary information; and
 compensation for any losses suffered due to the disclosure of trade secrets.

Contract law
In India, a person can be contractually bound not to disclose information that is revealed to him or her in confidence.
However, in *Richard Brady v Chemical Process Equipments P Ltd*(AIR 1987 Delhi 372)the court went further by
invoking a wider equitable jurisdiction and awarding an injunction in the absence of a contract. The plaintiff had invented
a fodder production unit and, for indigenous production of the same, had sought a supply of thermal panels from the
defendant. The plaintiff shared technical material, detailed know- how, drawings and specifications concerning the fodder
production unit with the defendant. An agreement was set out between the parties for the supply of specialised thermal
panels; however, the plaintiffs later discovered that the defendants were unable to supply the required thermal panels and
did not place an order. After learning about the defendant's own fodder production unit, the plaintiff filed a suit for
misappropriation of know-how, drawings, designs and specifications disclosed to the defendant.

Copyright law
In some cases, the courts have recognised client information stored in the form of databases as copyrightable material.
During the course of their operation, businesses regularly collect data which they arrange systematically or methodically
and can be accessed electronically – for example, in order to analyse business profitability or customer behaviour, or
simply to maintain an inventory of goods. Thus, databases are an important tool for businesses, allowing them to run
smoothly and plan their future development. Databases are protectable under copyright law. Section 2(o) of the Copyright
Act 1957 defines compilations, including computer databases, as “literary works”.
In *Govindan v Gopalakrishna*(AIR 1955 Mad 391), which concerned a compilation, it was held that although the
amount of originality in a compilation is small, it is still protected by law. Hence, no party may steal or appropriate the
result of another's intelligence, skills or labour, even in such works.
The present legal position mandates that every effort, industry or expense of skill results in copyrightable work, but only
those works are protectable which:
 are somewhat different in character;
 involve some intellectual effort; and
 involve a minimum degree of creativity.

Interfact between trade secrets and copyright law

In theory at least, the treatment of databases as trade secrets can be a stronger form of protection, since it helps to protect
the underlying or inherent data rather than the mere form of expression or layout protected by copyright law.
In *Burlington Home Shopping Pvt Ltd v RajnishChibber*(61(1995)DLT6), the Delhi High Court observed that although
trade secrets protection applies to a wide range of business data, customer lists and other compilations of business data
may be copyrightable as works of fact. In theory, copyright and trade secrets law protect different elements of compiled
business data, with copyright protecting the expression in these compilations and trade secrets law protecting the
underlying data. However, copyright and trade secrets protection for compilations of business data in fact frequently
converge: copyright protection for business directories often extends to the underlying data and trade secrets protection
may extend to particular expressive arrangements of data.
In *Burlington Home Shopping*, the court dealt with an application for interim relief in a suit by a mail order service
company against its employee for an injunction restraining “breach of copyright and confidentiality”. The court held that
although its sources may be commonly situated, a compilation of addresses developed by devoting time, money, labour
and skill amounts to a literary work in which the author has a copyright. Finding that the defendant’s database was
substantially a copy of the plaintiff’s database, the court granted the interim injunction.

Proving confidentiality of information

In *Ritika Pvt Ltd v Biba Apparels Pvt Ltd*(Del HC DE 0784 2016), where a suit was filed for infringement of the
plaintiff’s clothing designs, the court took the view that if an injunction order were sought with respect to trade secrets,
the specific trade secrets would have to be mentioned, as well as how the plaintiff had ownership of them; only then
would the court consider granting an injunction order. A general order in respect of an unspecified trade secret could not
be passed against the defendant. Further, no relief under the Copyright Act could be granted, since Section 15(2) of the
act provides that once a drawing, sketch or design has been used for creation of more than 50 garments, no copyright can
subsist in it.
In *Genetics India Pvt Ltd v Shailendra Shiv*(2011 (47) PTC 494), the court observed: “Pleadings of the nature and
quality of information which is confidential are crucial and in the absence thereof there is no question of confidentiality.”
Thus, a trade secret suit should make amply clear that the subject information is confidential. Apart from pleading that the
information is confidential, the plaintiff must prove that reasonable efforts have been made to keep it confidential. If the
owner of the information cannot prove as much, the information risks losing the quality of confidentiality.
Further, if the information and technique are neither unique nor novel, and the database is merely a documentation or
compilation of existing material or techniques which are freely available or widely practised, there is no question of
confidentiality. Thus, the mere fact that information is documented in the form of a database does not make it
confidential: it must also have the requisite exclusivity. If a court were to accept, uncritically and without any statutory
regime, a plaintiff’s blanket assumption that it possessed confidential information in something which was plainly part of
the public’s material resources, that court would overstep the mandate of the Constitution – specifically, the rights to
occupation(Article19(1)(g)) and livelihood(Article 21).

Breach of confidence
In *Diljeet Titus, Advocate v Alfred A Adebare* (130 (2006) DLT 330) it was held that the courts must step in to restrain
a breach of confidence independent of any right under law. The court held that in the context of a law firm, copyright
existed in a list which had been specially designed by an advocate and contained details of the firm’s clients, along with
the nature of work and contact person for each one. Notably, this obligation need not be expressed, but need only be
implied.

Future of trade secrets in India

Since India is a signatory to the Paris Convention, it is relevant to mention that Article 1(2) of the Agreement on Trade
Related Aspects of Intellectual Property Rights (TRIPs) states that intellectual property shall include protection of
undisclosed information. Further, Article 39 of TRIPs states concerns ensuring effective protection against unfair
competition as provided in Article 10*bis* of the Paris Convention, with respect to information which:
 is a secret not generally known or readily accessible;
 has commercial value by virtue of secrecy; and
 has been subjected to reasonable steps for ensuring its secrecy.
Article 39 states that member nations must ensure that natural and legal persons have the “possibility” of preventing such
information, within their control, from being disclosed, acquired or used by others without their consent, in a manner
contrary to honest commercial practice. It can be inferred that the “possibility” referred to here implies that trade secrets
should be accorded protection within the legal system and not necessarily in the IP legislative framework of the member
nation.
The 1989 General Agreement on Tariffs and Trade discussion paper on India establishes that trade secrets cannot be
considered IP rights, because the fundamental basis of an IP right rests in its disclosure, publication and registration,
while trade secrets are premised on secrecy and confidentiality. The paper goes on to state that the observance and
enforcement of secrecy and confidentiality should be governed by contractual obligations and the provisions of
appropriate civil law, not by IP law.
On May 12 2016 India approved the National IP Rights Policy, which has seven objectives. One of these objectives is to
ensure an effective legal and legislative framework for the protection of IP rights. The steps to be taken towards achieving
this objective include the identification of important areas of study and research for future policy development; one such
area identified was the protection of trade secrets.
In a discussion paper on IP rights at the subsequent US-India Trade Policy Forum held on October 20 2016 in New Delhi,
India’s representatives noted that India protects trade secrets through a common law approach and reiterated the country’s
commitment to the strong protection of trade secrets. It was agreed that a toolkit would be prepared for industry,
especially small to medium-sized enterprises, to highlight applicable laws and policies that may enable businesses to
protect their trade secrets in India. A training module for judicial academies on trade secrets may also be considered. A
further study of various legal approaches to the protection of trade secrets will also be undertaken in India

Conclusion
At present, Indian trade secrets law is a judiciary-made law, based on the principle of equity and common law actions
against breach of confidence, with the jurisprudence as a whole revolving around an employee’s obligations and duties
towards the employer regarding confidential information gained during the course of employment. Indian jurisprudence
regarding trade secrets is unclear on a number of important aspects, including:
 the scope of damages in the case of a breach of confidential information;
 theft of trade secrets by business competitors; and
 procedural safeguards during court litigation.
Further, in the absence of a specific trade secrets law, the courts have ruled in favour of the proprietor of information as
literary work as defined under copyright law.
The recent creation of the National IP Rights Policy has raised hopes for the enactment of a trade secrets law, since this is
one of the objectives of the policy. Although no timeframe has been provided for the achievement of this objective, one
can be certain that there will be a trade secrets law in the near future.

Practical tips to protect trade secrets

 Label the information to be protected as “confidential”, so that employees are aware that they are dealing with
sensitive business information.
 Restrict access to databases, servers and computer programs that store trade secrets.
 Ensure that access to servers is password protected and that a suitable notice is displayed on computer screens
when accessing sensitive areas.
 Educate employees on why protecting trade secrets is important for business.
 Sign non-disclosure agreements with any third parties with which commercial business information is shared.
 Use a combination of technical and legal solutions to protect databases

Geographical Indications of Goods Act 2002 – Object and scope, concept of geographical indications,

Introduction
There are a variety of goods that are either found naturally, cultivated agriculturally or are produced in a particular
territory of a country, region or locality. These goods have particular characteristics either related to taste, aroma or
quality and are marketed based on their place of origin or geographical indication. Geographical indications can be
typically used for agricultural products, foodstuffs, wine and spirit drinks, handicrafts, and industrial products.
So, from having Darjeeling Tea or Kangra Tea after waking up to a smoothie made up of freshly chopped Alphonso
Mangoes or a glass full of Nagpur Orange juice- post-workout, to dressing up in a Banarasi silk
saree with KolhapuriChappal for a party and having biryani made up of Basmati Rice with a dash of
flavoursome Alleppey Green Cardamom or Coorg Cardamom and Kashmir’s saffron, an individual comes across a
wide variety of goods on a day to day basis, that has secured Geographical Indication (GI) rights.
As per the Government’s journal published on 21st September 2021, the recent Geographical Indications include:
1. Kullu Shawl from Himachal Pradesh,
2. Channapatna Toys and Dolls from Karnataka,
3. Kashmir Pashmina from Srinagar, Jammu & Kashmir,
4. Muga silk of Assam from Assam, inter alia.
The object of the Geographical Indication Act, 1999 is to provide for registration and better protection of geographical
indications relating to goods. To further strengthen the Intellectual Property Ecosystem a Draft amendment related to
the Geographical Indication of Goods (Registration and Protection) Rules, 2002 (hereinafter referred to as the ‘Draft
Amendment Rules’) was released by the Ministry of Commerce and Industry, which is discussed below.

Brief history of the G.I. Act and Rules

When and why was the Geographical Indications Act introduced in India
We now know that GIs are indications used for goods that have a specific geographical origin and have characteristics or
prestige due to their place of origin. Geographical indications are those precious rights that can be exploited by fraudulent
commercial operators if they are not protected properly. This can cause harm to both, the consumer as well as the
legitimate users.
Thus, in order to safeguard the interests of the consumers and users, the Trade-Related Aspects of Intellectual Property
(TRIPS) Agreement was enacted. This agreement specifies minimum standards of protection of GIs with additional
protection for wines and spirits. In congruence with the TRIPS Agreement, India took legislative action by enacting the
Geographical Indications of Goods (Registration and Protection) Act, 1999, which became effective on 15th September
2003 and the Geographical Indications of Goods (Registration and Protection) Rules, 2002.
A note must be taken that, along with the TRIPS Agreement, there were 3 controversial cases related
to Neem, Turmeric and Basmati rice which instigated the Indian government to implement a law for the prevention of
unfair exploitation of GIs. There was a dire need for an extensive law for the registration and lawful protection to
geographical indications and thus, the law was passed by the Parliament.

Why were the new Rules added to the G.I. Act

On 12th September 2019, the Ministry of Commerce and Industry by exercising its powers conferred under Section 87 of
the Geographical Indications of Goods (Registration and Protection) Act, 1999 vide a Gazette Notification No. G.S.R.
645 (E), issued the draft rules on Geographical Indications of Goods (Registration and Protection) (Amendment) and also
invited objections from the general public.
This amendment was carried on to further strengthen the Intellectual Property Ecosystem by deducting the GI registration
process fees and easing the procedure for registration of an authorized user of the registered geographical indication.
Proposed Draft Amendment
As stated above, the new draft rules were issued and objections from the general public were invited. The objections were
to be raised within 30 days from the date of notification, failure to which shall mean the public had no issues about the
same. Also, only those objections which were brought up within the stipulated time were to be considered by the Central
Government.
The proposed draft amendment had the following proposed amends:
 Only proposed authorized users can submit an application
The Draft Amendment Rules aim to make amends in Rule 56 (1) of the Geographical Indications of Goods (Registration
and Protection) Rules, 2002. This rule deals with the application of the producer as an authorized user of a registered
geographical location.
The application to the Registrar for registration in accordance with Section 17 by the producer as an authorized user was
to be submitted in Form GI-3 together by the producer and the registered proprietor. Whereas, the new rule proposes that
the joint application be removed by the registered proprietor, and that, only a copy of the application be forwarded to the
registered proprietor and thus, to inform the Registrar of the same.
Thus, as per the new proposed draft amendment, only the proposed authorized user can submit an application to the
Registrar. Whereas, the previous law stated that an application was to be filed jointly by the registered proprietor and the
proposed authorised user.
Moreover, the statement of the case of how the proposed authorized user claims to be the producer of the registered
geographical indication was previously needed to be filed along with an affidavit, but, as per the new Draft Amendment
Rules, the statement of case can be filed without any affidavit.
 Requirement of Letter of Consent under Section 56 is recommended to be removed
According to the Draft Amendment Rules, the applicants must forward a copy of the application to the registered
proprietor, and inform the Registrar of due service of the same. Also, the requirement for a copy of consent under 56
(2) has been eliminated.
 Rule 59 (1) was recommended to be modified
For the registration of an authorised user entry in the register, where an objection is filed and dismissed, the Registrar can
enter the authorized user in Part B of the register and shall have a registration certificate issued with the seal of
Geographical Indication Registry. As per the previous Act, the Registrar had to wait until the end of the appeal period
after the objection was dismissed for entering the authorised user in Part B of the register and the same was to be done
with a prescribed amount of fees. But with the Draft Amendment Rules, the appeal period and the fees charged were
proposed to be removed.
In other words, the registration certificate in Form GI-3 was to be allocated by the Registrar only after the receipt of a
request along with the prescribed fees was submitted. But now, the Draft Amendment Rules state that the references in
Form GI-3, receipt of request and payment of the predefined fees stand withdrawn.
 Requirement of the Registrar to specify details
Earlier, the Registrar had to state and define all the particulars required under Section 6 (1) in the register of the
authorized user.
However, with the Draft Amendment Rules, the need for the Registrar to specify the priority date and appropriate office
of registry was eliminated. Thus, Clauses (f) and (g) of sub-rule (2) of Section 59 of the principal rules registry were
excluded.
 Rule 59 (3) was recommended to be modified
Previously, any request for duplicates or copies of registration was to be made in Form GI-7 along with an unmounted
representation of the geographical indication we portrayed in the application form for registration.
But now, after the Draft Amendment Rules, the supplement of un-mounted representation of the geographical indication
as per the application form is discarded.
In other words, sub-rule (3) of Section 59 will be modified and unmounted representation of the geographical indication
will not be needed when registration of goods is carried on.
 No fees to be charged for the registration of an authorized user of a registered GI
Earlier, in Schedule 1, under entry 3A, there was a prescribed fee of INR 500 (7 USD Approx.) which was to be paid for
the registration of an authorized user of a registered geographical indication. With the new Draft Amendment Rules, this
fee is removed, thus making the payment from INR 500 to nil. In the same manner, the fees for renewal under Entry 3C
of the Schedule was reduced from INR 1000 (14 USD Approx.) to nil. Thus, there was a 100% reduction in the
aforementioned fees.
 Request for issuance of certificate procedure omitted
Earlier, the request for a registration certificate was to be made in Form-GI-3. But with the Draft Amendment Rules, the
procedure of requesting for issuance of the certificate is omitted.
 Entry in Schedule-II deleted
Under the Draft Amendment Rules, the entry in Schedule-II will be deleted and entry no. 3C will be substituted as entry
no. 3B.
 Form GI-3 amended
Previously, the form consisted of three entries, that is:
 1. A for application,
2. B for a request for the issuance of the certificate, and
3. C for renewal.
With the new Draft Amendment Rules, the form consists of only two entries, they are:
1. A for application, and
2. B for renewal.
Since no objections and suggestions were issued from the public in respect to the said rules, the Central Government in
the exercise of the powers conferred by Section 87 of the Geographical Indications of Goods (Registration and Protection)
Act, 1999 amended the Act. It was further referred to as the Geographical Indications of Goods (Registration and
Protection) Rules, 2002.

Some things one must know about the Geographical Indications of goods
 Registration of Geographical Indications
An application for the registration of a GI must be submitted to the Registrar of the geographical indications in the format
specified under the Geographical Indications of Goods (Registration and Protection) Act, 1999 (the GI Act) read with the
Geographical Indications (Registration and Protection) Rules, 2002 (the GI Rules).
 Duration of Protection
A geographical indication is registered for a time span of 10 years and the renewal of the registration can be done from
time to time for a period of 10 years on a stretch.
 Protection of Geographical Indications
There are four methods in which geographical indications can be protected:
1. the so-called sui generis system (i.e. special regimes of protection),
2. by using collective or certification marks,
3. through procedures that focus on business practices, including administrative product approval schemes, and
4. through unfair competition laws.
A note must be taken that these methods have been advanced in accordance with several distinct legal traditions and
within a framework of an individual’s historical and economic conditions.
 Prohibition of Registration of certain geographical indications
Certain goods prohibit the registration of certain geographical indications, some of them are:
1. the usage of which is likely to be misleading or that which can cause complication, or
2. the usage of which would contradict any law for the time being in force, or
3. which incorporates disreputable or improper matter, etc.
 Infringement of Geographical Indications
Under the Geographical Indication of Goods (Registration and Protection) Act, 1999, forgery of a geographical indication
will attract a penalty which is punishable by imprisonment for a term which may not be less than six months but may be
extended to three years and a fine not less than INR 50,000 (approx. USD 800), but may extend to INR 2,00,000 (approx.
USD 3,000).

Current update
On 26th August 2020, the Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade)
vide notification G.S.R. 528(E) have made amends in the Geographical Indications of Goods (Registration and
Protection) Rules, 2002. These rules will now be called the Geographical Indications of Goods (Registration and
Protection) (Amendment) Rules, 2020 (hereinafter referred to as ‘GI Rules 2020’). Changes have been carried out in
Section 56 and Section 59, inter alia.

Conclusion
The laws on the geographical indication of goods are not very old in India. With the rapid growth in technology and
globalisation, there is a requirement for additional protection of traditional knowledge of various localized communities.
Particularly, when foreign companies are attempting to abuse conventional ancestral knowledge without proper approval,
it is high time to make the protection under geographical indications available to all, that too, on a large scale.
Thus, bringing amends to these rules is a positive step forward. The simplification of procedures for registration of GIs
and authorized users as well as a significant reduction in registration and renewal fees will go a long way in helping the
communities to safeguard their products under these laws.

Conditions for registration, procedure and duration of registration, effect of registration.

This article has been written by NehalWagle.
A geographical indication (GI) is a sign that is used in relation to products or goods that possess specific qualities,
characteristics or reputation, that is attributable to place of its geographical origin. Since the nature of the underlying
product is dependent on the location of production, there is a strong correlation between the product and its geographical
place of origin.
The general standards of protection for Geographical Indication can be traced down to the Paris Convention for protection
of Industrial Property,1883, which includes in its wide connotation, protection to- patents, trademarks, industrial designs,
utility models, trade names and service mark, in addition to geographical indications. These were followed by the Madrid
Agreement for repression of False or Deceptive Indications of Source of Goods 1891.

This was followed by treaties and conventions which focussed on the registration process for geographical indications.
The Madrid Agreement concerning the International Registration of Marks signed in 1891, the Lisbon Agreement for the
Protection of Appellations of Origins and their International Registration, 1958 and the Protocol Relating to the Madrid
Agreement Concerning the international registration of marks, which came into being in 1989 have played important role
in the development of a framework for the process of international registration of marks.
However, the seeds for the development of laws on Geographical Indications in India were sown through the Trade-
Related Aspects of Intellectual Property Rights (TRIPS) agreement which came into force on 1 st January 1995. This
agreement is considered to be the most comprehensive document on Intellectual Property Rights. Post coming into force
of the TRIPS agreement the Parliament of India enacted the Geographical Indication of Goods (Registration and
Protection) Act, 1999. This Act aimed at providing for the registration and better protection of geographical Indications
of goods.
According to section 2 (e) of the Geographical Indications of Goods (Registration and Protection) Act,1999,
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 territory of a country, or a region or locality in
that territory, where a given quality, reputation or other characteristics of such goods is essentially attributable to its
geographical origin and in case where such goods one of the activities of either the production or of processing or
preparation of goods concerned takes place in such territory, region or locality as the case may be”
India has registered over 361 geographical Indications till date. The first GI to be registered was for Darjeeling Tea in the
state of West Bengal, which was registered in the year 2004. Handicrafts make up the largest type of goods which have
been registered as GIs, followed by Agricultural products.
Let us now dive into the procedure and manner in which the Geographical Indication for a place in India can be registered
as per provisions enlisted under the Geographical Indications of Goods (Registration and Protection) Act,1999:

Who can file for Geographical Indications?

Section 11(1)
An application for registration of the Geographical Indication can be made by an association of persons or producers or
any organisations or authority established by or under any law for time being in force; who must be representing the
interest of the producers of the concerned goods; and desirous of registering a geographical indication in relation to such
goods.”

Authorised User
An authorised user is a person who has been registered as such under Section 17 of the Geographical Indications of
Goods (Registration and Protection) Act,1999 act. A producer of the goods in respect of which geographical indication
has been registered is eligible to register himself as an authorised user.
In order to register oneself as an authorised user, the producer needs to provide a statement and other documents of facts
which would allow the registrar to ascertain the veracity of their claims. The registration of an authorised user is valid for
10 years, or till the date on which the registration of the related geographical indication expires.
Steps applicable for registration as authorised user are-
1. Filing of an application
2. Preliminary Scrutiny and exam
3. Issue of Show cause notice
4. Advertisement
5. Opposition for registration
6. Registration

Prohibition on registration of certain Geographical Indications (Section 9)

There are certain Geographical Indications, the registration of which is prohibited by law. These include such indications:
 The use of which is likely to deceive or cause confusion
 The use of which is contrary to the law for time being in force
 Which comprises of or contains any scandalous or obscene matter
 Which comprises or contains any matter that is likely to hurt the religious sentiments of any class or section of
people
 Which would be disentitled to protection of law
 Which are determined to be the generic names or indications of goods and therefore ceased or not protected in
the country of origin
  Which, although literary true as to the territory, region or the locality in which the goods have originated, but
falsely represent that the goods originate in a different territory or locality or region of a country
Explanation 1 of the captioned section elucidates the meaning of “generic names of indications” to be in relation to
goods which although relates to the place of the region where the goods was originally produced or manufactured, has
lost its original meaning and has become the common name of such goods and serves as a designation for an indication of
the kind, nature, type of other property or characteristic of the goods.
Explanation 2 of the same section further clarifies that “in determining whether the name has become generic, account
shall be taken of all factors including the existing situation in the region or place in which the name originates and the
area of consumption of the goods.”

Step by step procedure for registration of Geographical Indication

Step 1-Filing of the Application
 The application for the registration of Geographical Indication shall be made in triplicate.
 The application then must be signed by the applicant or his agent along with the statement of case and has to
be submitted along with the prescribed form GI-1
 A single application can be filed for different classes of goods and fees payable shall be in respect of each of
such class of goods.
 An affidavit is required to accompanying the forms has to be submitted by the association of persons,
producers, organisations or authority representing the interest of the producers over certain goods and how the
applicant claims to represent their interest
What should be the contents of the application?
Section 11 (2)
 Firstly, it should state how the geographical indication serves to designate the goods as originating from the
concerned territory of the country or region or localities as the case may be, in respect to quality
specifications, reputation, characteristics which are exclusively due to certain environmental conditions with
inherit natural or human factors relating to the territory.
 It should also state the class of goods to which the geographical Indication shall apply
 The geographical map of the territory of the country or region or the locality of the country in which the
goods are produced or manufactured should be included.
 Particulars regarding the appearance of the geographical indications as to whether it is comprised of words or
figurative elements or both.
 Statement containing the details of the applicant including the names, addresses and other such details as may
be specified from time to time
Forms for registration of GI are available on the website of Geographical Indications Registry
(http://www.ipindia.nic.in/forms-gi.htm)
Step 2 and 3 – Preliminary Scrutiny and Examination
Section 11 (5) to (7)
 The application will be scrutinized by the examiner for any deficiencies and discrepancies.
 In case of any deficiencies and discrepancies, the applicant is required to rectify the same with a period one
month of its communication.
 The correctness and authenticity of the content of statement furnished by the applicant shall then be assessed
by the Registrar in consultation with a group of experts consisting of not more than 7 representatives who are
well versed on the subject.
 Only after proper scrutiny and examination that the examination report will be issued
Step 4 – Issue of Show Cause Notice
(Section 12)
 If the Registrar has any objection with regards to the application then the same shall be communicated to the
applicant.
 The applicant must respond within a period of two months from the receiving of the notice or he can apply for
hearing
 The Registrar has been entrusted with the power to withdraw the application after giving the applicant a
reasonable opportunity of being heard, if he is of opinion that there has been an error on the part of the
applicant and the same has been conveyed to him
 If aggrieved, an appeal can be made within period of one month of the Registrar’s decision.
Step 5: Advertisement
(Section 13)
 Every application for registration of geographical indication that has been accepted absolutely or with subject
to conditions or limitations shall within three months of acceptance shall be published in the Geographical
Indications Journal.
Step 6: Opposition to Registration
Section 14
  Any person can file a notice of opposition within three months (extendable by another month on request
which has to be filed before three months) opposing the Geographical Indication application published in the
Journal in triplicate along with the form GI-2
 The registrar shall serve a copy of the notice on the applicant for registration and the applicant shall within
period of two months from the date of the receipt of such notice send to the Registrar the copy of the counter
statement stating the grounds on which he relies on his application, failure to do so will result in abandonment
of his application.
 On receiving the counter statement from the applicant, the Registrar shall serve a copy of the of the same to
the person giving the notice of opposition.
 The applicant and the opponent have to submit to the registrar any evidence on which they rely, in manner
and time as may be prescribed from time to time by the registrar.
 Registrar shall give adequate time to both the parties to be heard
 The registrar after hearing both the parties and considering all the evidence shall decide whether to accept the
application with or without limitations or conditions
 If it comes to the notice of the registrar that either the applicant or person giving the notice of opposition
neither resides nor carries on the business in India, the registrar may require him to give the security for the
cost of proceedings before him and in case of any default of such security duly given, may treat the
application or opposition as the case may be, as abandoned.
 On request the Registrar may permit to make any correction or amendment of an error in the notice of
opposition or counterstatement.
Step 7– Corrections and amendments-
Section 15
The Registrar may from time to time with subject to certain terms and conditions permit either before or after the
acceptance of the application, the correction of any error or an amendment of the application.
Step 8 : Registration
Section 16
 On acceptance of the application, the registrar shall register the geographical indication for the same.
 If registered the date of filing of the application shall be deemed to be the date of registration.
 The registrar shall then issue to the applicant a certificate with the seal of the Geographical indication’s
registry in Form-02 as per Rule 55 0f The Geographical Indications of Goods (Registration and Protection)
Rules, 2002
Step 9: Duration, Renewal And Restoration
Section 18
 A registered Geographical Indication shall be valid for 10 years and can be renewed on payment of renewal
fee.
 At the time before the expiration of last registration of geographical indication, the Registrar shall send the
notice to the registered proprietor or the authorised user as the case may be, about the date of expiration and
the conditions as to payment of fees and upon renewal of which registration shall be obtained.
 Failure to do so may result in removal of geographical indication
 Where a geographical indication has been removed by the Registrar on grounds of non-payment of the
renewal fees may after six months and within period of one year from the expiration of last registration of
geographical indication may, on an application in a prescribed manner and after payment of prescribed fees
may restore the geographical indication for period of 10 years from the expiration of last registration
Step 10: Appeal to the Appellate Boards
Section 31
 Any person aggrieved by an order or decision of the Registrar under the act or under the rules made
thereunder, may prefer an appeal to the Intellectual Property Appellate Board (IPAB) within three months
from the date on which the order or decision sought to be appealed is communicated.

Rights conferred by Registration

Under section 21 of the act, the authorised user and proprietor of the geographical indication is allowed certain rights in
terms of the indication. These include:
1. An exclusive right to make use of the indication in relation to goods to which the indication has been
obtained.
2. In case of infringement, to seek relief in a manner provided in the act.
However, it needs to be remembered that these rights conferred by registration are not absolute and are subject to
conditions which restrict the powers allowed to the user, including:
 Variation Condition: This includes cases where the proprietor agrees to have variations in the mark assigned
to goods, other than those mentioned in the label.
 Restraining Conditions: The geographical indication shall not be used for the purpose of certain specific
goods
  Blank Space condition: This condition requires all blank spaces in the label to only be occupied by matter that
is non-distinctive in nature.
 Limitation Condition: This condition restricts the area within which the registration is allowed to operate.
An interesting point to note regarding the powers over geographical indications comes to light when there are more than
one authorised users of geographical indications which may be identical or bear near resemblance with each other. In such
cases, the exclusive right to the use of these conditions are not deemed to have been acquired by any one of those persons
against any other, but each of these persons have the same rights as a sole authorized user against other persons.

Trade Secrets, Plant breeder’s rights and protection and other emerging IPRs in India.

What Is a Trade Secret?

A trade secret is any practice or process of a company that is generally not known outside of the company. Information
considered a trade secret gives the company a competitive advantage over its competitors and is often a product of
internal research and development.

To be legally considered a trade secret in the United States, a company must make a reasonable effort in concealing the
information from the public; the secret must intrinsically have economic value, and the trade secret must contain
information. Trade secrets are a part of a company's intellectual property. Unlike a patent, a trade secret is not publicly
known.

Understanding a Trade Secret

Trade secrets may take a variety of forms, such as a proprietary process, instrument, pattern, design, formula, recipe,
method, or practice that is not evident to others and may be used as a means to create an enterprise that offers an
advantage over competitors or provides value to customers.

Trade secrets are defined differently based on jurisdiction, but all have the following characteristics in common:

 They are not public information.

 Their secrecy provides an economic benefit to their holder.
 Their secrecy is actively protected.

As confidential information (as trade secrets are known in some jurisdictions), trade secrets are the "classified
documents" of the business world, just as top-secret documents are closely guarded by government agencies.

Because the cost of developing certain products and processes is much more expensive than competitive intelligence,
companies have an incentive to figure out what makes their competitors successful. To protect its trade secrets, a
company may require employees privy to the information to sign non-compete or non-disclosure agreements (NDA)
upon hire.

Trade Secret Treatment

In the United States, trade secrets are defined and protected by the Economic Espionage Act of 1996 (outlined in Title
18, Part I, Chapter 90 of the U.S. Code) and also fall under state jurisdiction. As a result of a 1974 ruling, each state may
adopt its own trade secret rules.

Some 47 states and the District of Columbia have adopted some version of the Uniform Trade Secrets Act (USTA). 1 The
most recent legislation addressing trade secrets came in 2016 with the Defend Trade Secrets Act , which gives the federal
government cause for action in cases involving the misappropriation of trade secrets.

The federal law defines trade secrets as "all forms and types of" the following information:

 Financial
 Business
 Scientific
 Technical
 Economic
 Engineering

Such information, according to federal law, includes:

 Patterns
 Plans
  Compilations
 Program devices
 Formulas
 Designs
 Prototypes
 Methods
 Techniques
 Processes
 Procedures
 Programs
 Codes

The above includes, according to federal law, "tangible or intangible, and whether or how stored, compiled, or
memorialized physically, electronically, graphically, photographically, or in writing." 2

The law also provides the condition that the owner has taken reasonable measures to keep such information secret and
that "the information derives independent economic value, actual or potential, from not being generally known to, and
not being readily ascertainable through proper means by, another person who can obtain economic value from the
disclosure or use of the information." 2

Other jurisdictions may treat trade secrets somewhat differently; some consider them property, while others consider
them as an equitable right.

Real-World Examples
There are many examples of trade secrets that are tangible and intangible. For example, Google's search algorithm exists
as intellectual property in code and is regularly updated to improve and protect its operations.

The secret formula for Coca-Cola, which is locked in a vault, is an example of a trade secret that is a formula or recipe.
Since it has not been patented, it has never been revealed.

The New York Times Bestseller list is an example of a process trade secret. While the list does factor in book sales by
compiling chain and independent store sales, as well as wholesaler data, the list is not merely sales numbers (books with
lower overall sales may make the list while a book with higher sales may not).

Plant Breeder’s Rights and Intellectual Property

Intellectual Property Rights are basically assumed to protect everything from original plays and novels to inventions and
company trademarks. So the concept of Plant Breeders’ Rights (PBR) might seem a little strange. The main reason is that
Intellectual Property rights were not originally extended to include plant variety management, because the agricultural
sector happens to be vital for meeting the food requirements of the people at large and granting exclusive rights to any
specific individual would therefore be flawed. However plant breeders’ rights are essential for economic growth of any
nation and it is of utmost importance to encourage the farmers to contribute for the development of new plant varieties,
thereby accelerating agricultural development.

Plant Breeders’ Rights – An Overview

Plant Breeders’ Rights are also a form of intellectual property which is specifically designed to protect new plant
varieties. The right as defined by UPOV is, an exclusive right over the commercial production and marketing of the
reproductive or vegetative propagating material of the protected variety. These rights are assigned to the breeder of a new
variety of plant which gives him/her exclusive control over it; be it seeds, flowers, fruits, foliage or the like. Protection of
Plant Varieties and Farmers Rights Act was framed in India in the year 2001 to grant rights to the farmers as well as the
breeders. This Act is significant in both domestic and international context because India was one of the first countries in
the World to have passed legislation in this regard. As per the Act, breeders can claim the Intellectual Property Right,
provided their varieties are novel, distinct, uniform and stable and are given an exclusive right to produce, sell, market,
distribute, import or export the variety.

The downside of the concept

Similar to other streams of IP, the plant breeders also enjoy the same benefits. However, extending IP rights to plant
breeders has certain downfalls. While trying to distribute these rights to various rights holders, we are faced with the
tragedy of anti-commons, thereby creating a co-ordination breakdown. The tragedy of the anti-commons refers to
underuse of resources arising from multiple ownership or rights to exclude others from use. It may occur when too many
people are granted rights over a resource with no one having an effective privilege of use.

Conclusion

A person who feels appreciated can do wonders; after all, we are merely human beings! Similarly, plant breeders require
encouragement which will nudge them to be innovative, thereby developing the agricultural sector. The Protection of
Plant Varieties and Farmers Rights Act proves to be the much needed legislation to take the agricultural sector to the next
level. The farmers are motivated to produce more and better varieties and also guaranteeing a higher level of income, all
along developing the economy as a whole.