COURSE PLAN

Programme BB.A. and B.COM. LL. B. (Hons.)

Course 5 Year Integrated dual Degree Programme

Semester 10

Subject Code FL 38

Subject INTELLECTUAL PROPERTY LAW

Total Instructional Hours 35 hours

OBJECTIVE
INTELLECTUAL PROPERTY RIGHTS (IPR) IS A SUBJECT OF RECENT ORIGIN AND IS STILL EMERGING.
IPR ARE A SET OF RIGHTS ASSOCIATED WITH CREATIONS OF THE HUMAN MIND. IT COVERS
COPYRIGHT, PATENT, TRADEMARK, GEOGRAPHICAL INDICATION, DESIGNS, SEMI CONDUCTOR
AND INTEGRATED CIRCUITS ETC. THE PREVAILING COMPETITION IN THE INTERNATIONAL AND
NATIONAL MARKET HAS CREATED THE NEED FOR THE BETTER PROTECTION OF THE INTELLECTUAL
CREATIONS. THE TRIPS AGREEMENT OUTLINES THE VARIOUS FORMS OF PROTECTING THE
INTELLECTUAL CREATIONS AND THE WORLD NATIONS HAVE FRAMED THEIR OWN LEGISLATIONS
TO PROTECT INTELLECTUAL CREATIONS ACCORDING TO THEIR REQUIREMENTS BASED ON TRIPS
GUIDELINES.
 IN THE COURSE OF THE HOURS ALLOTTED, IT IS OUR ENDEAVOUR TO ACQUAINT THE STUDENTS
WITH THE CONCEPT OF INTELLECTUAL PROPERTY (IP), DIFFERENT KINDS OF INTELLECTUAL
PROPERTY, STANDARDS REQUIRED TO GRANT IP PROTECTION, INTELLECTUAL PROPERTY IN THE
INTERNATIONAL REGIME, ACQUISITION, OWNERSHIP AND TRANFER OF IP, REMEDIES IN CASE OF
INFRINGEMENT AND SOME OTHER EMERGING ISSUES IN THIS FIELD OF LAW.

Module 1 – CONCEPT OF IP & ITS DEVELOPMENT

Topics Reference Material Hrs Required
● Concept of Gopalakrishnan, N.S. and Ajitha, T.G., Principles of 1 hour
Intellectual Intellectual Property, Eastern Book Company (latest
Property edn.)

● National and
International David Bainbridge, Intellectual property, 4th edition 1 hour
Regulations in (1999), Pitman Publishing, London.
protecting IP

● TRIPS Michael Blakenely, TRIPS – A concise guide to the 30minutes

Agreement TRIPS Agreement (1996)

● WTO Dispute Dr. M.K.Bhandari, Law relating to Intellectual Property 30 minutes

Settlement Rights, 3rd edn. (2012), Central Law Publications, pages
Mechanism 22-25.

Module 2 – COPYRIGHT LAW

Topics Reference Material Hrs Required
● Historical origin Dr. Elizabeth Varkey, Intellectual Property, Eastern
of Copyright Book Company, Lucknow 30 minutes
● Standards in
Copyright Law- Copinger & Skone James on Copyright, Sweet & 2 hour
Originality, idea Maxwell, (latest edition)
expression
dichotomy
● Subject matter of Copinger & Skone James on Copyright, Sweet &
Copyright 2 hour
Maxwell, (latest edition)
Dr. Elizabeth Varkey, Intellectual Property, Eastern
Book Company, Lucknow

● Rights granted
● Lal’s Commentary on The Copyright Act, 1957,
under Copyright Delhi Law House (latest edn.).
law ● David Bainbridge, Intellectual Property, 3 hours
Pearson Education, London, (latest edn.).

● W. R. Cornish, Intellectual Property: Patents,

Copyrights, Trademarks and Allied Rights,
Sweet and Maxwell, London (latest edition)

● V.K. Ahuja, Intellectual Property Rights in

India, Lexis Nexis (latest edition)

● Doctrine of Gopalakrishnan, N.S. and Ajitha, T.G., Principles of

Exhaustion and Intellectual Property, Eastern Book Company (latest 1 hour
Parallel Imports edn.)

● Moral Rights Dr. Elizabeth Varkey, Intellectual Property, Eastern

30 minutes
under Copyright Book Company, Lucknow

● Neighbouring Dr. Elizabeth Varkey, Intellectual Property, Eastern 30 minutes

rights Book Company, Lucknow

● Acquisition,
Dr. B.L. Wadhera, Law relating to Intellectual Property, 3 hour
ownership, term
Universal Law Publishing Co. (latest edn.)
of protection and
 transfer of
copyright (Under
transfer there is
Assignment and
License)

● Infringement and ● Dr. Elizabeth Varkey, Intellectual Property, 2 hours

Remedies under Eastern Book Company, Lucknow
Copyright

● Fair use under Copinger & Skone James on Copyright, Sweet & 1 hour
Copyright Maxwell, (latest edition)

Module 3 – TRADEMARK LAW

Topics Reference Material Hrs Required
● History of Dr. Elizabeth Varkey, Intellectual Property, Eastern 30 minutes
Trademark Law Book Company, Lucknow

● Standards in W. R. Cornish, Intellectual Property: Patents, 1 hour

Trademark Law Copyrights, Trademarks and Allied Rights, Sweet
and Maxwell, London (latest edition)

● Rights granted under

Trademark Dr. B.L. Wadhera, Law relating to Intellectual 1 hour
● Parallel Imports Property, Universal Law Publishing Co. (latest edn.)
under Trademark
Law
V.K. Ahuja, Intellectual Property Rights in India,
● Term of protection Lexis Nexis (latest edition) 30 minutes
and Transfer of
Trademark

● Infringement and Dr. Elizabeth Varkey, Intellectual Property, Eastern

remedies under Book Company, Lucknow 1 hour
Trademark
Dr. Elizabeth Varkey, Intellectual Property, Eastern
● Concept Passing Off Book Company, Lucknow 30 minutes
 ● Comparative Biplab Kumar Lenin and Arun Babu, Comparitive
Advertisement Advertising and the Consumer- Changing 30 minutes
Dynamics, Journal of Intellectual Property Rights,
Vol.22, May 2017, pp. 113-120

● Character World Intellectual Organisation, Character

Merchandising Merchandising 30 minutes

● Ambush Marketing Article – Shivang Dugar et al., ‘Ambush Marketing

: A Detdiled study, Imperial Journal of 30 minutes
Interdisciplinary Research (IJIR), Vol.2, Issue-4,
2016

Module 4 – PATENT LAW

Topics Reference Material Hrs Required
● History of Dr. Elizabeth Varkey, Intellectual Property, Eastern 30 minutes
patents Book Company, Lucknow

● Standards in Dr. Elizabeth Varkey, Intellectual Property, Eastern 1 hour 30

Patent Law – Book Company, Lucknow minutes
Novelty,
Inventive step
and Utility

● Subject matter W. R. Cornish, Intellectual Property: Patents, Copyrights,

under Patents Trademarks and Allied Rights, Sweet and Maxwell, 2 hours
London (latest edition)
● Acquisition,
ownership, term Dr. B.L. Wadhera, Law relating to Intellectual Property,
of protection Universal Law Publishing Co. (latest edn.) 2 hours
and transfer of
Patents

● Compulsory,
Statutory Gopalakrishnan, N.S. and Ajitha, T.G., Principles of
Licensing and Intellectual Property, Eastern Book Company (latest 1 hour
Parallel Imports edn.)
 under Patent
law

● Infringement Dr. B.L. Wadhera, Law relating to Intellectual Property,

and remedies Universal Law Publishing Co. (latest edn.) 1 hour
under Patent
Law

Module 5 – OTHER FORMS OF IP

Topics Reference Material Hrs Required
● Design Law 1 hour
● Concept of
originality or Dr. Elizabeth Varkey, Intellectual Property, Eastern
novelty Book Company, Lucknow
● Requirements
for protection

● Geographical Latha R. Nair and Rajendra Kumar, Geographical 1 hour

Indications as an Indications: A Search for Identity,
IP Butterworths Wadhwa, (2005)

● Traditional Latha R. Nair and Rajendra Kumar, Geographical

Knowledge and Indications: A Search for Identity, 30 minutes
its protection Butterworths Wadhwa, (2005)

MODULE 1
 CONCEPT OF INTELLECTUAL PROPERTY

The legal protection of IP is rooted in the philosophy to property rights as one of most efficient
instrument in production and consumption of goods and services. Intellectual property is
essentially driven by rights and remedies based system that aligns with traditional notions of
property to a large extent, but has turned into a malleable tool which is influenced by nature of
technology, temporality, territoriality, and most importantly, public policy. While there is no single
definition of IP, the World Intellectual Property Organisation constructs it as “the legal rights
which result from intellectual activity in the industrial, scientific, literary and artistic fields.”
The primary theme underpinning the intellectual property regime is protection of certain forms of
innovation and creativity. Without intellectual property protection, creators face the risk of market
failure due to free-riding of their innovations and creations and an eventual loss of incentive to
produce further. IPRs are the means of incentivizing innovation and creation as a form of
protection against the risk of market failure.
Similarly, without an intellectual property regime, consumers are at risk of facing information
asymmetry in the form of unfair trade practices, deceptive techniques, and confusing sources of
origin of a product or a service. Intellectual property protects consumers against information
asymmetry.
It is interesting to note that while there is no singular definition of IP to include all its attributes,
the Convention Establishing the World Intellectual Property Organization (WIPO), concluded in
Stockholm on July 14, 1967 (Article 2(viii)) provides that “intellectual property shall include rights
relating to:- 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 scientific fields.”
Historically, intellectual property was not a term that was in wider currency. IP as we now
understand was divided into industrial property and copyright. Industrial property was understood
(as per Paris Convention) to include patents, industrial designs trademarks, service marks,
commercial names and designations, including indications of source and appellations of origin,
and protection against unfair competition. Copyright largely includes literary and artistic work (as
per the Berne Convention). Intellectual property is a recently coined term. Prof. Mark Lemley
noted that widespread use of the term “intellectual property” is a fad that followed the 1967
founding of the World “Intellectual Property” Organization (WIPO), and became much more
common in recent years. Be it as it may, the study of IP has evolved through centuries of experience
in several jurisdictions.
As per the WIPO, IP can be justified for two reasons:
“One is to give statutory expression to the moral and economic rights of creators in their creations
and the rights of the public in access to those creations. The second is to promote, as a deliberate
act of Government policy, creativity and the dissemination and application of its results and to
encourage fair trading which would contribute to economic and social development.” Thus the
study of IP law is relevant in the present context since it is largely responsible for society’s moral
and human flourishing.

Rights
Property signifies ownership and possession as its essential attributes by allowing the right to
exclude and right to alienate as the primary and secondary core among the bundle of rights.
Property rights provide the right of exclusion in rem, that is, in general against other people. They
operate against the world. The term property includes both tangible properties like chattels and
land and intangible properties such as securities and a life insurance contract. Intellectual property
is also a type of intangible property.
Property rights are essentially a bundle of rights. However, before understanding property rights
in detail, it is important to understand the need for a separate legislative regime for their protection
and the inability of existing legal mechanisms such as Torts or Contract law to provide adequate
protection to inventions and creative endeavours.
Nature of Remedies
The need for a separate property law is engendered by the fundamental difference between the
nature of remedies espoused by these two mechanisms. While property rights provide a remedy in
rem, that is, in general against everyone; other legal mechanisms like contract law provide a
remedy in personam, that is, against specific persons. It essentially means that property rights have
a broader ambit and scope for dealing with activities involving protection of inventions and
creativity and they are enforceable against the entire world since information created through
investments and efforts is potentially subject to free-riding by anyone. However, a contractual right
is enforceable against specific persons and not the world in general. While tort law can be enforced
against the world in general, the situations in which a liability in tort can exist is limited to instances
of unfair competition, and not broadly where other forms of appropriation of knowledge exists.
Exclusion & Alienability
As a bundle of rights, property rights have the following two components.
a. Exclusion - This component deals with the right of the owner of the property to exclude
others from enjoyment of the property, including making, using, selling, reproducing,
importing, offering for sale, selling, and distributing.
As often quoted in multiple judgments delivered by the US Supreme Court, “the right to
exclude others" is "one of the most essential sticks in the bundle of rights that are
commonly characterized as property."
b. Alienability - Another major component or characteristic of property rights is their
alienability. The Right to alienate property refers to the specific right of the property owner
that allows control on products embodying IP in the form of right to exclude others from
selling, distribution, or transfer the property to other parties.
Both exclusion and alienability are the core components of property rights. Another major
component of property rights is the array of remedial actions available to the owner in case of
violation of property rights. The value that IP rights create can be realised through private
contractual bargaining because of the existence of property rights. In this sense, property rights
allows pieces of information to be transacted in the marketplace. Alienability of IP rights is thus
important for realising the benefits of IP protection.
Types of Remedies
Rights and remedies coexist with each other as remedies are the means by which rights are
enforced. For violation of property rights, remedies in the form of injunctions, accounts for profit
and/or damages are commonly available for all kinds of IP. The statute may impose certain
restraints on remedies. But they are generally a subject for courts to decide.

Classification of Intellectual Property

Industrial Property and Copyright are the two components constituting intellectual property. The
reason for this differentiation can be traced back to history where copyright was associated with
works of authorial creativity. As a form of intellectual property, copyright is considered to be an
expression of the author’s own personality, and therefore, distinct from trade & commerce.
On the other hand, creativity expressed through technical innovations, industrial designs, names
and marks distinguishing business entities, and marks signifying geographical origins of a product
is related to trade & industry and that is why these forms of intellectual property are known as
industrial property.
Apart from this, certain sui-generis, one-of-their-kind legislations also protect certain forms of
creativity not sufficiently protected by the existing legislation on patents, trademarks, copyright,
industrial designs, or geographical indications. Plant varieties and Layout-Designs of integrated
circuits are protected by these indigenous statutes, known as sui-generis system of protection.
A. Industrial Property
Industrial Property is the branch of intellectual property which deals with intangible intellectual
creations related to industry, commerce and, agriculture.
The Paris Convention on Protection of Industrial Property, 1883 defines the scope of industrial
property as follows.
“Industrial property shall be understood in the broadest sense and shall apply not only to industry
and commerce proper, but likewise to agricultural and extractive industries and to all
manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle, minerals,
mineral waters, beer, flowers, and flour.”
The Agreement on Trade Related Aspects of Intellectual Property (TRIPS Agreement) also lays
down provisions governing patents, trademarks, industrial designs, geographical indications, new
varieties of plants, layout designs, undisclosed information including trade secrets and test data,
and control of anti-competitive practices in contractual licenses.
1. Patents
Patents protect technical embodiments of an invention. They are granted for marketable inventions
(vendible products and processes) in all fields of technology which satisfy the threefold criteria of
novelty, inventive step, and industrial applicability.
A patent is valid for a fixed term, usually 20 years, and the holder of the patent right, known as a
patentee is entitled to use (by exclusion) or transfer the right the use the patent to others. Disclosure
is a mandatory requirement for grant of patent and the applicant is required to disclose the technical
specifications of a patent in the patent application.
2. Trademarks
Trademarks are visual representations which identify and distinguish the goods and services of an
entity from those of another entity. One of the main functions of trademark is to facilitate
association of a particular characteristic or quality to a specific product or service.
Trademarks are initially granted for a specific period of time and they are renewable for perpetuity;
with the primary purpose of avoiding consumer confusion. The proprietor of a registered
trademark is entitled to use, transfer, and enforce their trademark and also to use the symbol ®
with their trademark.
3. Industrial Designs
Industrial Design refers to the two-dimensional or three-dimensional ornamental or aesthetic
features of a product, including shape, configuration, pattern, lines, or colour. Owners of registered
designs are protected against unauthorized use of their design and are also entitled to the exclusive
use of their registered design. Design protection is available for a fixed period of time, which is 10
years in India and can be extended for a further period of 5 years.
4. Geographical Indications
Geographical Indications are collective marks and signs which denote the geographical origins of
a product when one or more characteristics or reputation of the product are attributable to its
geographical origin.
Unlike other IP rights, geographical indications do not belong to an individual entity and are
considered to be belonging to an entire community of producers.
An individual is allowed to obtain registration as authorized user of a Geographical Indication;
subject to fulfillment of certain conditions.
A geographical indication enjoys protection for perpetuity after complying with certain
procedures.
5. Layout-Design of Integrated Circuits
The sui-generis legislation in India to protect layout-designs is the Semiconductor Integrated
Circuits Layout Design (SICLD) Act, 2000 which protects technical designs of semiconductor
chips used in computers, smartphones, televisions, and other electrical or digital devices.
6. Plant Varieties
This system protects new varieties of plants which fulfill the criteria of novelty, uniformity,
stability, and distinctiveness. In India, the sui-generis legislation protecting new plant varieties is
the Protection of Plant Varieties and Farmers’ Rights Act, 2001.

B. Copyright & Neighbouring Rights

Copyright protects literary and artistic works of authorial creativity. It is an authorship-based right,
but also protects entrepreneurial works such as broadcasts, sound recordings, films, and published
editions of literary, dramatic, and musical works. The ambit of copyright protection extends to,
but is not limited to works such as books, novels, movie scripts, paintings, photographs, melodies,
sound recordings, audio recordings, moving images, source codes, and object codes.
Unlike other types of IP, copyright protection is not subject to any registration formalities and it
comes into existence as soon as the work is created. Copyright registration is optional.
A copyright owner is entitled to use and to authorize others to use the copyrighted work. Copyright
protection is also available for a limited period of time after which the work passes into public
domain.
Neighbouring rights refer to rights which are not directly connected to the authorship of the work,
but to the work itself. These rights are provided to the performers such as musicians, jugglers,
dancers, singers etc., producers of sound recordings, and broadcasting organizations for radio and
television programs.

GENERAL ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (IPRs)

NATURE, MEANING AND SCOPE OF IPRs
Introduction
Creation, enjoyment and accumulation of ‘property’ has been a central activity of human
life. Out of four objects of human life, i.e., Artha, Kama, Dharma and Moksha the first object is
money. It is a fundamental requirement of sustaining material life.
According to Halsbury’s Law of England property is that which belongs to a person
exclusively of others and can be subject to bargain and sale. It includes goodwill, trademarks,
licenses to use a patent, book debts, options to purchase, life policies and other rights under a
contract.
Property can be classified into two broad categories:
I. Tangible- (Movable and Immovable)
II. Intangible- (Intellectual Property)
Meaning of Intellectual Property
Human beings are superior from other living creatures because they possess intellect.
Creative genius of human being creates intellectual property; which in turn, when properly
exploited, can earn wealth. Since it is essentially a creation of mind, it is called intellectual
property: inventions, industrial designs, literary and artistic works, symbols used to promote
commerce are some commonly known forms of intellectual property.
Basic Concepts of Intellectual Property Law
The law relating to intellectual property is based on certain basic concepts. Thys patient
law centres round the concepts of novelty and inventive step. Design law is based on originality,
which not previously published in any other country as well as in Indian. Trade mark laws is based
on the concepts of distinctiveness and similarity of marks and similarity of the work in any material
form.
Salmond says, the unnatural product of a man’s brains may be as valuable as his hands or
his goods. The law, therefore, gives him a proprietary right in it.
 Since, at present times intellect is an integral part of one’s personality and one’s intellect
plays an important role in deciding what sort of labour his body be engaged into as well as what
work his hands take up, it may be safely assumes that one’s intellect is one’s property in the same
way as one’s person or one’s bodily labour or work of one’s hands i.e. one’s skill. With this logic,
one’s intellect is exclusively his own, so is his intellectual labour and intellectual skill. Moving a
little further, if these things, namely intellect, intellectual labour and intellectual skill are one/s
property or characteristic, then anything which comes out of an application of any or all of these
three is equally one’s own. Therefore, naturally, a person should have a right to own these
‘products’ of his intellect. Needless to say that it is this proprietary right once the product of one’s
intellect, which has been termed as one’s Intellectual Property Right.
The statue law relating to intellectual property in India is undergoing changes so as to being
them to harmonize with the corresponding laws in the developed countries. This has become
necessary after Indian signing the GATT and TRIPS and becoming of WTO.
Why Legal Protection for Intellectual Property?
Every human endeavour which promote economic, social, scientific and cultural
development of society must be encourages and the creator must be suitably rewarded by affording
legal protection to his intellectual creation. Thus, the Intellectual property Rights (IPRs) are the
legal rights governing the use of creation of human minds.
The intellectual property law regulates the creation, use and exploitation of mental or creative
labour. It prevents third parties from becoming unjustly enriched by reaping what they have not
sown. This is a branch of law which protects some of the finer manifestations of human
achievement.
Scope of Intellectual Property Rights
The Convention establishing World intellectual Property Organisation (WIPO) has given
a wider definition of IPRs. According to this definition the IPRs shall include the rights to:
i. Literary, artistic and scientific work;
ii. Performances of performing artists, phonograms and broadcasts;
iii. Inventions in all fields of human endeavour;
iv. Scientific discoveries;
v. Industrial designs;
vi. Trademarks, service marks and commercial names and
designations;
vii. Protections against unfair competition and; all other rights resulting
from intellectual activity in the industrial, scientific literary or
artistic fields

Expansion of IPRs under WTO- TRIPs

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) consists
of 73 Articles in VII parts. The Intellectual property rights are private rights, but there is a need
for a multilateral framework of principles rules and disciplines dealing with intellectual property
rights. For the first time, under the auspices of the GATT, the TRIPs have been negotiated under
multilateral negotiations.
The world intellectual property organisation(WIPO) is a specialised agency of the United
Nations for developing a balanced and accessible international intellectual property regime with
an aim to reward creativity, stimulate innovation and contribute to economic development while
at the same time safeguarding the public interest.
WIPO was established in the WIPO convention in 1967 with a mandate from the member
countries to promote the protection of intellectual property throughout the world through
corporation and in collaboration with other international organisations.
Although WIPO has given a wider definition of IPRs, yet the scope of IPRs has been further
expanded by Trade-Related Intellectual Property agreement of world trade organisation. TRIPs
have included with an IPRs the right of plant breeders, right arising out of biodiversity, and
computer-generated layout designs.
Regarding to the TRIPs the intellectual property rights are:
1. Copyright and related rights:
(a) Rights of artists, painters, musicians, sculptors , photographers, and authors for
copyright in their works;
(b) rights of computer programmers whether in source or object code for a copyright in the
programs and compilation data;
(c) rights of performance producers of phonograms (sound recording) and broadcasting
organisations in respect of fixation on their programs for copyrights in their work.
2. Right of trade is in their trade marks.
3. Right of manufacturers and producers on geography indication in relation to such products and
produce.
4. Right of designers for the distinctive design striking to the eye.
5. Patents:
(a) Rights of the inventor for patent of his invention.
(b) Rights of plant breeders and Farmers.
(c) Rights of biological diversity.
6. Right of computer technologist for the layout design of integrated circuits.
7. Right of businessman for protection of their undisclosed information on technology &
management, i.e., business secrets (Art.1(2) of TRIPs)
The agreement of Trade Related Intellectual Property Rights (TRIPs), which came into
force in 1995,the agreement sets the minimum standards to be adopted by the members, though
they are free to exceed them. Members are free to determine the appropriate method of
implementing the provisions of the agreement under the legal system and practices. The trips lays
down precise provisions relating to the scope and terms of the IDR and the rights accruing to the
right holder, as well as minimum standard and norms for the enforcement of those rights.
India ratified the WTO agreement in December, 1994 and thus became a party to the
TRIPs. In order to fulfil its commitment under the agreement, the Government of India in
December 1999 introduced necessary bills for formulating and amending the laws in practically
all fields of IPRs, which are covered under the TRIPS agreement and brought out the necessary
changes in IP laws of the country.
The objectives of the protection and enforcement of intellectual property rights are the
promotion of technological innovation and 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. Members may adopt
measures necessary to protect public health and nutrition, and to promote the public interest in
sectors of vital importance to their social economic and technology development.
Components of IPRs
The various components of IPRs as envisaged by WIPO and TRIPs have specific aims and
objects. Although a detailed study of these specific rights will be made in subsequent chapters, it
is worthwhile to explain, in brief, their meaning here under: --
1. Copyright and related rights
The word "copyright" is derived from the expression 'copier of words' first used in the
context according to the Oxford dictionary in 1586. The subject matter of copyright is the literary,
artistic, musical cinematographic, sound recording. Literary works now also include computer
programs, tables, compilation including computer database. In most European languages other
than English, copyright is called as author's rights.
The copyright is to original creation. Mere idea without tangible expression is not granted
legal protection. It does sound in tangible, incorporeal right granted to author or originator of
certain literary or artistic production, whereby he is invested for a specified term with sole and
exclusive right of multiplying copies of his original work and publishing and selling them.
2. Trade Marks and Services Marks
Trade mark is a symbol to which goods are sold in market. It is a symbol which may denote
and distinguish goods of competing traders. They may consist of single letter, numerals, logo,
design, word pictorial devices or combination of words and devices.
When a trademark is used in connection with services such as banking, telecommunication,
airlines, tourism, etc. they are called service marks.
3. Patent
The term patent has its origin in the phrase a letters patent. These where the instruments
under the great seal of king of England addressed by the Crown to all the subject at large in which
the Crown conferred certain rights and privileges on one or more individuals. However, ordered
history, it didn't was granted in the year 1449 to John of Utynam in Russia for a process of making
glass. Patent is granted for inventions with have industrial and commercial value. Any person
whose invention has, novelty, involving inventive steps (non-obviousness) and is of industrial
application, can be granted Monopoly right for a certain term to commercially exploit his invention
on profit out of his invention.
It is worthwhile to mention here that ever since the TRIPs regime has come into force the
patent has become a major subject of controversy between developed and developing countries.
4. Geographical Indications
An indication which identifies goods, such as agricultural goods, natural goods, are
manufactured goods as originating in the territory of a country, or a region or locality in that
territory are called as geography indications. These indications denote quality, reputation or other
characteristics of such goods essentially attributable to its geographical origin. The right conferred
on geographical indication confirm the right to prevent competition from commercially exploiting
the respective rights to the detriment of the owner of that property

5. Industrial Designs
Industrial design means only the features of shape, configuration, pattern, ornament all
composition of lines or colour applied to any article weather in two-dimensional or three
dimensional or in both forms, by any industrial process or means whether manual car mechanical
or chemical, separate or combined which in the finished article appeal to and are judged solely by
the eye; but does not include any mode or principal of construction and does not include any
trademark. In the case of Industrial designs, the property consists in the exclusive right to apply
the design registered under the statute.
Having explained the basic elements of IPRs in this chapter we now move on to explore
the systematic evaluation and development of IPRs regime at international and national level in
the next chapter.

DISPUTE SETTLEMENT SYSTEM

The dispute settlement body (DSB) is one of the most powerful yet controversial body in WTO. It
is a central element in providing security and predictability to multilateral trading system. In fact,
prompt, just and fair settlement of trade dispute is essential to the effective functioning of WTO.
The DSB is empowered to establish panels, constitute appellate body and adopt panel reports and
exercise surveillance and compliance with its decisions.
The DSB can take help of following bodies for investigations of a complaint. They are:
1. Working groups;
2. Panel;
3. Permanent expert group; and
4. Arbitration
Different Stages of Dispute Settlement
There are mainly 6 stages involved in settling disputes. Each stage has its elaborate procedure and
fixed time frame.
i. Consultation - the first stage of settling dispute is holding consultation between disputing
states. Consultation aims to provide solution, what is which is mutually agreed. It is
confidential and does not prejudice the right of members to further proceedings. The
process of consultation should begin within 30 days of the request and should be completed
within 60 days.
 ii. Establishment of a panel.-- if consultation process fails to bring any solution within 60
days, the complainant can ask the DSB to establish a panel. It consists of 3 to 5 experts. In
case of dispute between developed and developing countries one of the panel expert from
developing countries should be included. These panelist serve in their individual capacity
and not in their official position.
iii. Panel Examination – the panel chosen in consultation with the parties examines the
complaint. The panel should complete its exercise within six months and give its final
report containing findings and recommendations. However, in case of urgency, the time
for giving final report can be reduced to three months. But in no case should the period
from establishment of the panel to the submission of the final report exceed nine months.
iv. Adoption of panel report.-- the DSB adopts the panel report 60 days after it is issued.
However, the DSB can invite objection from the disputing members and can consider them
before finally adopting the report.
v. Appellate Review.-- Any party to the dispute can file an appeal against panel report before
the Appellate Body. A Standing Appellate Body is set up by the DSB to hear all appeals.
The appellate body is composed of 7 persons who are representative of WTO membership.
The appeal proceedings are to be completed within 60 days but in no case, they shall exceed
90 days.
vi. Implementation.-- it is the finest days of settlement system. Effective and proper
implementation of the ruling of DSB is necessary for the satisfactory resolution of the
dispute. 30 days option of the panel or appellate body report, barbie concerned must inform
the DSB of its intention with regard to implementation of the ruling. Failure to implement
the ruling within granted time can result in suspension of concession. State found guilty of
breach can also settle the claim by paying compensation.

MODULE 2 –COPYRIGHT LAW

BRIEF HISTORY OF COPYRIGHT LAW

The copyright law in India is on close parallels with the history of British copyright law. In the
ancient times, copying of a manuscript was a painstakingly slow process done mainly by monks
and was limited to copying religious works for orders and the royal courts of Europe. The early
writers authored works for fame. The scholars of Ancient Greece and the Roman Empire were the
first to be concerned about being recognized as the authors of their works, but they were devoid of
any economic rights.
With the advent of printing press, the need for some form of protection arose. The Republic of
Venice was the first to grant privilege to print books. The method, the government chose, was to
establish a guild of private-sector censors, the London Company of Stationer. The Stationers were
granted a royal monopoly over all printing in England. Old works as well as new. No book could
be printed until it was entered in the Company’s Register, and no work could be added to the
register until it had passed the Crown’s censor, or had been self-censored by the Stationers.
Around the 17th century, the government allowed the Stationer’s monopoly to expire. The first
recognizably modern copyright, the Statute of Anne, was passed in 1709 and took effect in 1710.
This Act introduced for the first time the concept of the author of a work being the owner of its
copyright, and laid out fixed terms of protection. Following this Act, copyrighted works were
required to be deposited at specific copyright libraries, and registered at Stationer’s Hall. There
was no automatic copyright protection for unpublished works. Legislation based on the Statute of
Anne gradually appeared in other countries.
An artistic, literary or musical work is the brainchild of its author, the fruit of his labor, and so,
considered to be his property. So highly is it priced by all civilized nations that it is though worthy
of protection by national laws and international conventions relating to copyright.1

HISTORY OF COPYRIGHT IN INDIA

The history of copyright law in India can be traced to 1847 by an enactment during the East India
Company’s regime. In 1914, the then Indian legislature enacted a new Copyright Act which
extended most portions of the UK Copyright Act, 1911 to India (The Act contains 15 Sections and
1 Schedule). The major change that was brought in this Act was criminal sanction for infringement.
The 1914 Act continued till the 1957 Act was brought into force. The Copyright Act, 1957 was
enacted in order to suit the provisions of the Berne Convention. This Act was enacted by
Independent India by which copyright is governed till date. Later the 1957 Act was amended many
times to bring in sweeping changes to the Act.

MAIN FEATURES OF COPYRIGHT ACT OF 1957

⮚ Creation of Appellate Board
Copyright Office and an Appellate Board (earlier it was Copyright Board. It got substituted by
Appellate Board by the Finance Act 2017) was created to make registration process of Copyright
easy and to address the related to copyright and compulsory licensing of Copyright.
⮚ Definition of Work

1
Gramaphone Co. of India Ltd. v. Birendra Bahadur Pandey, (1984)2 SCC 534.
It defines clearly various categories of work in which copyright can subsist and the scope of the
rights. A work means any artistic, dramatic, musical, artistic work or cinematographic film or
sound recording.
⮚ Authorship & Ownership
According to the Act the author/creator is the first owner of the work. In case of musical work the
composer is the author or creator, in case of cinematograph film the producer is the author /owner
whereas in case of Government work normally the concerned Government body is the author.
⮚ Term
The general term of Copyright is 60 years. Term of copyright for musical, dramatic and artistic
works, except for photograph is sixty years from the year in which the author died.
⮚ Assignment & Compulsory Licensing
The copyright owner can transfer his/her rights to another person in return of some fixed royalty.
The owner can transfer the all the rights or some of the rights to the Assignee (The person whom
the rights will be transferred. The owner can license his rights to another person as well. It is known
as Compulsory Licensing. It helps in curbing misuse of rights by the owner.
⮚ Formation of Copyright Societies
Copyright Society is a registered administrative body that looks after the management and
protection of copyrights.
⮚ Broadcast Reproduction Rights
The Act gives special rights, to a broadcast organization, known as “Broadcast Reproduction
Rights”. It is given for 25 years.
⮚ Performer’s Rights
It gives protection to the performers. The right is given for fifty years.
⮚ International Copyright
According to this provision a foreigner is entitled to enjoy copyright for his work in India.
⮚ Infringement Defined
When a person without permission from the owner tries to use the rights related to the work, it is
known as infringement. e.g. A person making copies of a Book without license.
⮚ Exception
If a person uses the work for research, analysis or for educational purpose, he does not require any
permission from the author. (Fair use provision)
⮚ Remedies against Infringement
Civil and criminal remedies are available against infringement.

STANDARDS OF COPYRIGHT
“Eligibility for copyright protection, or, more colloquially, copyrightability, is one of the major
components of the balance drawn by copyright law between the competing claims of copyright
owners and copyright users. The question of originality, the threshold standard of qualification
for copyright protection, is at the core of copyrightability. Defining or redefining this threshold
standard has serious consequences for the copyright system. If the standards for a work to be
considered original, and thus qualify for copyright protection, are raised or lowered, both the
number and types of works that can claim copyright protection will change. Thus what is at stake
in any definition or redefinition of originality is the coverage of the copyright monopoly and the
balance between copyright owners and users at its most basic level.”- 2Howard B Abraham

Originality defined
Inorder for a work to get copyright, the mandatory element is that the work should be original. In
other words it should originate from the author. In simple words originality is nothing but
prohibition on actual copying. The common meaning of ‘original’ is something that is new, not
done before. In fact, ‘original’ is defined as ‘existing from the first; earliest; not imitative or
derived; creative’ (Swannell, 1986). Originality is the basic yardstick used to evaluate the
availability copyright protection to a particular work. The Indian Copyright Act, 1957 does not
define the term ‘original’. According to s.13 of the said Act, copyright subsists in the following
works:
(i) Original literary, dramatic, musical, and artistic works;
(ii) Cinematograph films; and
(iii) Sound recordings.

In RupendraKashyap v. Jiwan Publishing 3, the court held that the word ‘original’ in Section 13 of
the Copyright Act, 1957 did not imply any originality of ideas, but merely meant that the work in
question should not be copied from some other work and should originate from the author being
the product of his labour and skill. Thus, the term original’ in reference to a work simply means
that the particular work ‘owes its origin’ to the author.
In Errabhdrarao v. B.N. Sarma,4 the court observed: By an original composition we do not convey
that it is confined to a field which had never been traversed hitherto by any other person or persons,
either in respect of ideas or material comprised therein. Indeed such contributions are few, as most
works depend upon the contribution of others, using them as steps in aid of reaching a particular
object which may be original in its design and conception.
The copyright law does not mean to apply the word ‘originality’ in its literal sense. As per Oxford
Dictionary it means power of creating or thinking creatively; newness or freshness; an original act,
thing. From plain reading originality means new or fresh by thinking creatively induced by the
power of creating. In case of any art, or any fruit of human creativity, inevitably there must be
some influence from the works of the predecessors. Copyright law only requires existence of some
creative efforts by the creator.
Since there is no definite, single and unified concept of originality, there exist different doctrines
used in different jurisdictions of law, which are analysed and compared in the following
paragraphs.

SWEAT OF BROW DOCTRINE

According to this doctrine, an author gains rights through simple diligence during the creation of
a work. Substantial creativity or “originality” is not required. The creator is entitled to such rights

2
Originality and Creativity in Copyright law”(1992)55(No.2)law and Contemporary Problems 4-5.
3
1996(38)DRJ81
4
AIR 1960 AP 415
on account of efforts and expense put in by him in the creation of such a work. For Example, the
creator of a telephone directory or a database must have a copyright over the product not because
such a compilation of data showcases any creativity, or the author has expressed anything original,
but merely because of the effort, time and money invested by the creator to collect and organise
all the data in a specific manner. But such a compilation must be the work of the author himself
and must not be copied from another source.
University of London Press v. University Tutorial Press 5is a very important case where the
doctrine of “Sweat of Brow” was applied.
The Facts of the case follows- A resolution by the University of London stated that the copyright
of all the examination papers set by the examiners employed by the University vested with the
University. Examiners were appointed for the purpose of setting the examination papers for
matriculation examinations. The University entered into an agreement with the University of
London Press Limited to assign the copyright and all rights to publish the matriculation
examination papers to the later for a consideration. Later, the University Tutorial Press Limited
issued a publication which included sixteen out of forty-two matriculation papers. The papers were
not copied from the publication of the University of London Press Limited, but were taken from
copies of the examination papers supplied by students. In addition to the question papers, the
publication also contained answers to the questions in some of the papers and also made some
criticism on the way the papers were set. The plaintiff, University of London Press, sued University
Tutorial Press for infringement of copyright.
The plaintiff contended that the term “literary work” as used in the Act has a very broad meaning
covering work which are expressed in print or writing, irrespective of whether the quality or style
is high and includes maps, charts, plans, tables, and compilations. Therefore the examination
papers will also fall under the category of “literary work”. The defendant contended that questions
were of common type and were not unique or distinct enough to claim copyright.

The Court held that the Copyright Act does not require that expression be in an original or novel
form. It does, however, require that the work not be copied from another work. It must originate
from the author. The question papers are original within the meaning of copyright laws as they
were originated from the authors. The court held that merely because similar questions have been
asked by other examiners, the plaintiff shall not be denied copyright.

This doctrine “sweat of the brow” was used in Walter v. Lane 6and later in the case of Ladbroke
(Football) Ltd. v. William Hill (Football) 7Ltd where the Court said that it is immaterial whether
work is wise or foolish, accurate or inaccurate, or whether it has or does not any literary merit. The
case reiterated the requirement of ‘labour, skill and judgement’ and the requirement of originality
is limited to the extent that the work originated from the author. This doctrine is also followed in
various other jurisdictions including Canada, Australia and India.

MODICUM OF CREATIVITY DOCTRINE

The concept of “originality” has undergone a paradigm shift from the “sweat of the brow” doctrine
to the “modicum of creativity” standard put forth in Feist Publication Inc. v. Rural Telephone

5
(1916) 2 Ch 601
6
(1900) AC 539
7
(1964) 1 All ER 465
Service 8by the United States Supreme Court. The doctrine of “sweat of the brow” provides
copyright protection on basis of the labour, skill and investment of capital put in by the creator
instead of the originality. In Feist’s case the US Supreme Court totally negated this doctrine and
held that in order to be original a work must not only have been the product of independent
creation, but it must also exhibit a “modicum of creativity”. The Supreme Court prompted ‘creative
originality’ and laid down the new test to protect the creation on basis of the minimal creativity.
This doctrine stipulates that originality subsists in a work where a sufficient amount of intellectual
creativity and judgment has gone into the creation of that work. The standard of creativity need
not be high but a minimum level of creativity should be there for copyright protection.
The facts of the case are as follows- Rural Telephone Service Company was public utility
providing telephone services. Under some local regulation, all telephone companies had to issue
annually an updated telephone directory. Rural Telephone Service published a telephone directory
using this data. Feist Publications Inc. was a publishing company specialized in area-wide
telephone directories. Feist’s directories covered a wide range of geographical area covering 11
different telephone service areas. Both the companies distribute the directories free of cost to its
subscribers and earn revenue on the advertisements in yellow pages. Both competed vigorously
for yellow pages advertising. Feist not being a telephone company, lacked independent access to
any subscriber information. To obtain the listings for its directory, Feist approached each of the 11
telephone companies operating in the area and offered to pay for the right to use its white pages
listings. Rural refused to license its listings to Feist. Thus Feist used Rural’s listings without their
consent. Feist then hired personnel to investigate and verify the data. Therefore Feist’s listing had
more information that Rural’s. But some of these listings were identical to that of Rural. Rural
telephone Service sued Feist Publications for copyright infringement.
The major question of law was whether a compilation like that of a telephone directory is protected
under the Copyright law. The court held that the facts like names, addresses etc are not
copyrightable, but compilations of facts are copyrightable. This is majorly owing to the unique
way of expression by way of arrangement and if it possesses at least some minimal degree of
creativity, it will be copyrightable. The Court held that Rural’s directory displayed a lack of
requisite standards for copyright protection as it was just a compilation of data without any
minimum creativity, which was a requirement for copyright protection. Hence, Rural’s case was
dismissed.
In Key Publications, Inc. v. Chinatown Today Publishing Enterprises Inc 9the US Supreme Court
laid down three requirements for a compilation to qualify for copyright protection:
● The collection and assembly of pre-existing data;
● Selection, coordination or arrangement of the data; and
● The resulting work that comes into being is original, by virtue of the selection, coordination
or arrangement of the data contained in the work.

POSITION IN INDIA
India strongly followed the doctrine of ‘sweat of the brow’ for a considerably long time.
In the case of Burlington Home Shopping v. Rajnish Chibber (1995) - facts similar to Feist’s
case came before the Indian Court, were the court following the doctrine held that a compilation
is copyrightable.

8
499 US 340 (1991)
9
945 F.2d 509, 511(2d Cir.1991)
One thing to note in Indian law is that the standard of ‘originality’ followed in India is not as low
as the standard followed in England. Even applying the sweat of brow doctrine, a sufficient
element of creativity is looked upon.
The most important Indian Case on this subject is Eastern Book Company v. D.B. Modak 10where
the Supreme Court discarded the ‘Sweat of the Brow’ doctrine and shifted to a ‘Modicum of
creativity’ approach as followed in the US. The dispute is relating to copyrightability of judgments.
FACTS: The appellants in the present case are involved in printing and publishing of law report
known as “Supreme Court Cases” in which they publish all reported and unreported judgments of
Supreme Court of India. The judgments are edited by SCC along with other additions made by the
editors of SCC like cross references, head notes, the short notes comprising of lead words and the
long note which comprises of a brief description of the facts and relevant extract from the
judgments of the court and standardisation and formatting of text, etc and make it user friendly by
adding many important things that make it clearer.
Respondent 1, Spectrum Business Support Ltd. has brought out software called “Grand Jurix”
published on CD-ROMs and Respondent 2, Regent Data Tech Pvt. Ltd. has brought out software
package called “The Laws” published on CD-ROMs.
As per Appellants the all the modules in the respondents software packages have been lifted
verbatim from the appellants work. The respondents have copied the appellants’ sequencing,
selection and arrangements of cases coupled with the entire text of copied edited judgment as
published in the appellants’ law report along with the style and formatting, the copy editing,
paragraph numbers, footnote numbers, cross-referencing, etc.
ISSUE: What shall be the standard of originality in the copy- edited judgments of the Supreme
Court which is a derivative work and what would be required in a derivative work to treat it as
original work of an author and thereby giving a protected right under the Copyright Act, 1957 to
the author of the derivative work?
The notion of “flavour of minimum requirement of creativity” was introduced in this case. It was
held that to establish copyright, the creativity standard applied is not that something must be novel
or non-obvious, but some amount of creativity in the work to claim a copyright is required. The
Court held that these inputs made by the editors of SCC can be given copyright protection because
such tasks require the use of legal knowledge, skill and judgment of the editor. Thus, this exercise
and creation thereof has a flavour of minimum amount of creativity and enjoy the copyright
protection.
Accordingly, the Court granted copyright protection to the additions and contributions made by
the editors of SCC. At the same the Court also held that the orders and judgments of the Courts
are in public domain and everybody has a right to use and publish them and therefore no copyright
can be claimed on the same.

ORIGINALITY IN LITERARY WORK

In Errabhdrarao v. B.N. Sarma11 infringing the copyright of the plaintiff In respect of the Telugu
book entitled 'Hyderabad Pai Police Charya' (Police Action Against Hyderabad). The plaintiff had

10
(2008) 1 SCC 1
11
AIR 1960 AP415
alleged that he was the author of the said book which, he had written in July 1949 in respect of
which he had a copyright, that he had arranged to have 1,000 copies of the same printed in Vani
press and had obtained 100 copies; but the remaining 900 copies were obtained from the press by
defendants 1 and 2 in collusion with the 3rd defendant who is the proprietor of Sreerama Book
Depot, Secunderabad. Subsequently, it is further alleged, the defendants had got printed 3000
copies of the said book in September 1949 infringing his copyright of the book. The appellants
denied that the first respondent was the author of the book and alleged that it was a translation of
the English version of the "Police Action Against Hyderabad", the pamphlet "Real Face of
Hyderabad" and other articles of which the appellants were the authors. The issues raised the
questions: (1) whether the book in question was an original composition of the 1st respondent
wherein he had a copyright, (2) whether the book 'Hyderabad Pai Police Charya' is an original
composition of the 1st respondent or a mere translation of the book, pamphlet and articles of the
appellants, would also be necessary for a conclusion of the question of the copyright with respect
to the 3000 copies printed by the appellants.
The Court said that to set out the distinction between the original composition and a piracy of a
copyright some points have to be noted: first, that any new and original plan, arrangement or
compilation of material will entitle the author to copyright therein whether the materials
themselves are old or new. Second, that whosoever by his own skill, labour and judgment writes a
new work may have a copyright therein unless it be directly copied or evasively imitated from
another's work. Third, that to constitute piracy of a copyright it must be shown that the original
has been either substantially copied or to be so imitated as to be a mere evasion of the copyright.'
Judging the book "Hyderabad Pai Police Charya" from the aforesaid aspect it is an original
composition wherein the author has exercised his skill, labour, knowledge and judgment in
producing the book, which cannot be identified with any of the materials utilized by him therein

IDEA EXPRESSION DICHOTOMY

Idea-expression dichotomy is one of the most repeated principle in the realm of copyright law. It
may have been criticized on various grounds of vagueness, fictitiously repetitive, lacking precision
and without justification in deciding cases, however, the courts time and again have continued to
embrace it as a central axiom of copyright law.12 Traditionally, the courts have refused to evolve
a straight-jacket definition for the term idea. In layman terms, an idea is a formulation of thought
which maybe on any particular subject or topic. Expression on the other hand, constitutes
implementation the said idea. An idea can be expressed in numerous ways and this is where the
copyright issue crops up. Copyright protects the expression and not the idea in itself.13 If the same
idea can be expressed in a number of different ways, a number of different copyrights may co-
exist and no infringement will result. In the words of Justice Brennan, "[t]his distinction between
protected expressions and unprotected ideas is at the essence of copyright."
However, one is faced with a problem when it becomes difficult to delineate between the idea and
its expression14.
Baker v. Selden15
The plaintiff was the owner of copyright in a series of books explaining accounting system annexed
with certain forms consisting of ruled lines and headings, illustrating the said system. The plaintiff
12
Sid & Marty Krofft Television Prods v. McDonald’s Corp., 562 F.2d 1157, 1163
13
Narell v. Freeman, 872 F.2d 907, 910 (1989).
14
Nikhil L R Chary THE IDEA EXPRESSION DICHOTOMY 3 2 (2008)129-38
15
101 US 99(1879)
alleged that the defendant by making and using account books arranged on accounting system
similar to his own infringed his copyright on the system, even though the forms were employed
with different columns and headings. Deciding in favour of the defendant, the US Supreme Court
held that there was a clear distinction between the books and the art which they intended to
illustrate. The description of the art in a book, i.e. the expression, though copyrightable, did not
entitle the plaintiff exclusive claim to the art, i.e. the idea in this case.
The principle laid in the aforesaid case since then has been followed in later court rulings and also
incorporated in the realm of computer software. Copyright law grants the author of a computer
program the exclusive right to reproduce copies, prepare derivative works, distribute copies, and
perform and display the copyrighted work for the period of his life plus fifty years. 16 There are
however, some exceptions to this exclusive right such as own use, teaching, research, or
scholarship which would not constitute infringement under the principle of fair use. Not just the
judicial decisions, the statute also recognizes the common law principle that ideas are not
protected. The US Copyright Act defines idea/expression dichotomy in the following words:
“In no case does copyright protection for an original work of authorship extend to any
idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless
of the form in which it is described, explained, illustrated, or embodied in such work.”17
Merger Doctrine
A major problem arises when it becomes difficult to demarcate between the idea and its expression.
Where an idea and the expression cannot be separated and are said to have merged, such an
amalgamation is termed as the doctrine of merger. The merger doctrine in copyright states that if
an idea and the expression of the idea are so tied together that the idea and its expression are one
– that is there is only one conceivable way or a drastically limited number of ways to express and
embody the idea in a work - then the expression of the idea is non-copyrightable because ideas
may not be copyrighted.
It is also notable that an idea can have certain expressions and without those expressions the idea
would cease to exist. In other words, there can exist an idea where changing the expression of the
same in a particular form would, as a result, change the very idea itself. Most courts consider these
essential ideas not copyrightable, as to copyright them would also, in effect, copyright the idea.
This type of merger is known as scenes a faire.
The idea-expression dichotomy in the United States owes its origin to the groundbreaking case of
Baker v. Selden decided by the US Supreme Court (Discussed earlier).
Merger in Indian cases
The Delhi High Court in the case of in re Mattel Inc, and Ors v. Jayant Agarwalla and ors
2008(153)DLT 548 explained the doctrine of merger in following words: “In the realm of
copyright law the doctrine of merger postulates that were the idea and expression are inextricably
connected, it would not possible to distinguish between two. In other words, the expression should
be such that it is the idea, and vice-versa, resulting in an inseparable merger of the two. Applying
this doctrine courts have refused to protect (through copyright) the expression of an idea, which
can be expressed only in a very limited manner, because doing so would confer monopoly on the
ides itself “.

16
US Copyright Act 1976, Section 106
17
Id. at Sec. 102.
In Chancellor Masters of Oxford v. Narendra Publishing House, the Supreme Court of India held
that mathematical questions are expressions of laws of nature. Since language is a limited medium,
such laws of nature can be expressed only in a few ways. Hence, extension of copyright protection
for questions would deny access to ideas that they encompass. For these reasons, the Court held
that copyright could not be extended to the questions.
Idea expression Dichotomy in India
R.G Anand vs M/S. Delux Films & Ors (1978)18
The case was the first and most important one to reach the Supreme Court with respect to the
questions of what constitute an infringement and what is protected under the copyright law.
Hailed as a landmark judgment it brings about clarity with regard to the concept of idea
expression dichotomy through elaborate references to various foreign judgments and authors.

The play “Hum Hindustani” was written in 1953 by the Appellant which went on to be a success.
The popularity of the play brought it to the attention of the Mr. Mohan Sehgal, the second
defendant in the case who expressed interest in the play’s adaptation into a film. The appellant
met with the second and third respondents with whom he narrated and discussed the play.
However the defendants did not make any promise on the same. The defendants released a film
by the name “New Delhi” in September 1956 which the appellant on watching felt was “entirely
based on the play” and hence amounted to infringement of copyright of the appellant. The
appellant filed for permanent injunction against the defendants the infringement of the play. The
trial court and the High Court both ruled in favour of the defendants. Thus the Appellant
approached the Supreme Court claiming that “the principles enunicated and the legal inference
drawn by the courts below are against the settled legal principle laid down by the courts in
England, America and India.”

The plot of the play is the love affair between Amni, a Madrasi boy and Chandra a Punjabi girl
whose families are neighbours. The families maintained a cordial relation until they come to
know of the love affair between their children upon which the relationship turns bitter. The
families proceed for arranged marriage for the lovers from their respective communities. They
employ the same marriage broker, Dhanwantri who come know of the plight of the lovers. The
couple enter into a suicide pact but by the timely intervention of Dhanwantri the tragedy is
prevented and the couple is married. Their families unaware of the marriage on discovery of the
suicide note repent their narrow mindedness but are relieved to see that their children did not
indeed commit suicide.

The plot of the movie is primarily the love affair between Anand, a Punjabi boy and Janaki a
Madrasi girl. Anand is unable to find accommodation and pretends to be a Madrasi to get
lodging. He joins a music school where Janaki is a student where she is mesmerized by his
singing and eventually falls for him. The love affair ensues and the father of Janaki
,Subramaniam invites Anand‟s family to fix their marriage. Anand presents his South Indian
cook as his father. The cook again dons the role when Anand receives an award from the music
school. However the disguise ends shortly with the arrival of Anands father .There is also the
story of Nikki the sister of Anand who falls for Ashok Banerjee,a Bengali painter. Both the love
affairs are not permitted by the families. Janaki decides to commit suicide but by the intervention

18
AIR 1978 SC 1613
 of Sadhu Ram who was a Punjabi ghee merchant she is stopped from doing so. He presents
Janaki as his niece to Anand‟s family who agrees to the marriage. In the interim Nikki‟s
marriage is short stopped by the demand for dowry by the groom‟s family. Ashok comes bearing
his mother‟s jewellery offering the same as dowry. Seeing this Anand‟s father realises the
fallacy of their belief and agrees to the marriages. Thus both the couples are married according
to their wishes.

The major issues involved:

● Is the plaintiff owner of the copyright in the play 'Hum Hindustani‟?

● Is the film 'New Delhi' an infringement of the plaintiff's copyright in the play 'Hum
Hindustani‟?

Court summarised its analysis into the following propositions:

● There can be no copyright in an idea, subject matter, themes, plots or historical or

legendary facts and violation of the copyright in such cases is confined to the form,
manner and arrangement and expression of the idea by the author of the copyright work.

● Where the same idea is being developed in a different manner, it is manifest that the
source being common, similarities are bound to occur. In such a case the courts should
determine whether or not the similarities are on fundamental or substantial aspects of the
mode of expression adopted in the copyrighted work. If the defendants work is nothing
but a literal imitation of the copyrighted work with some variations here and there it would
amount to violation of the copyright. In other words, in order to be actionable the copy
must be a substantial and material one which at once leads to the conclusion that the
defendant is guilty of an act of piracy.

● One of the surest and the safest test to determine whether or not there has been a
violation of copyright is to seeing the reader, spectator or the viewer after having read or
seen both the works is clearly of the opinion and gets an unmistakable impression that the
subsequent work appears to be a copy of the original.

● Where the theme is the same but is presented and treated differently so that the
subsequent work becomes a completely new work, no question of violation of copyright
arises.

.
Comparing the facts of the current case with the above said principles the court made the
following observation. The theme of both the play and the movie are provincialism and
parochialism. Finding the themes of both the work to be same we cannot conclude that there is
copyright infringement. Both the works are independent and eligible separately eligible for
copyright protection. Here it is the idea which is same and not the expression. Thus there is no
infringement on the part of the defendant.

There are numerous other cases at various High Courts which have dealt with the concept of Idea
Expression including Mattel, Inc. And Ors v. Mr. Jayant Agarwalla And Ors19 where the Delhi
High Court discussed Doctrine of merger. The Court stated that in the realm of copyright law the
doctrine of merger postulates that were the idea and expression are inextricably connected, it would
not possible to distinguish between two. In other words, the expression should be such that it is
the idea, and vice-versa, resulting in an inseparable merger of the two. Applying this doctrine
courts have refused to protect through copyright the expression of an idea, which can be expressed
only in a very limited manner, because doing so would confer monopoly on the ides itself.
Idea –expression debate in computer programs.
In the case of Computer Associates International Inc. v. Altai Inc 20where the plaintiff, Computer
Associates International (CAI) brought an action alleging that the defendant Altai, Inc. had utilised
substantial portions of Computer Associates’ program while developing Altai's own computer
software programs. In deciding whether the defendant Altai was liable for copyright infringement
in developing his program and misappropriating the trade secrets of the plaintiff, the U.S Circuit
court relied upon a three-step test called the abstraction, filtration and comparison test to determine
the scope of the idea/expression dichotomy in the case.
The first two steps are carried out to find the substantial similarity. After the first two steps are
completed and all elements of the allegedly infringed program, which are ideas or are dictated by
efficiency or external factors, or taken from the public domain, have been sifted out, what would
remain would essentially constitute the copyrightable part of the computer program. This is the
method adopted and accepted by the US Court while imposing a partition between the idea and an
expression in a particular work.

SUBJECT MATTER OF COPYRIGHT

Copyright protection is available in various fields of intellectual creativity. As per Article 2 of the
Berne Convention, 1883 copyright protection is extended to “literary and artistic works”. The
expression “literary and artistic works” shall include every production in the literary, scientific and
artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets
and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or
dramatico-musical works; choreographic works and entertainments in dumb show; musical
compositions with or without words; cinematographic works to which are assimilated works
expressed by a process analogous to cinematography; works of drawing, painting, architecture,
sculpture, engraving and lithography; photographic works to which are assimilated works
expressed by a process analogous to photography; works of applied art; illustrations, maps, plans,
sketches and three-dimensional works relative to geography, topography, architecture or science.
The convention says that inorder the work to be given protection; it should have been fixed in
some material form.
Translations, adaptations, arrangements of music and other alterations of a literary or artistic work
shall also be protected as original works without prejudice to the copyright in the original work.
Collections of literary or artistic works such as encyclopedias and anthologies which, by reason of

19
MANU /DE/1378/2008
20
982 F 2d 1240
the selection and arrangement of their contents, constitute intellectual creations shall be protected
as such, without prejudice to the copyright in each of the works forming part of such collections.
Under TRIPS Agreement, Article 9 states that members shall comply with Articles 1 through 21
of the Berne Convention. And in addition to that Article 10 extends protection to Computer
programs and Compilations of Data.
Indian Law
The word works is defined under S. 2(y) of Copyright Act 1957 to mean literary, dramatic, musical
or artistic works, cinematograph films and sound recordings. Section 13(1) of the Indian Copyright
Act 1957 states that copyright subsists in “original literary, dramatic, musical and artistic works,
Cinematograph films and sound recordings.
LITERARY WORK: - S.2 (o) defines literary work it includes computer programs, tables and
compilations including computer database. By various judicial pronouncements, it is clear that in
order to become literary work, no literary quality is required. In University of London press Ltd
v. University of Tutorial press Ltd it was held that question papers set for examinations were
literary works because they were work expressed in print or writing irrespective of question
whether the quality or style is high and it was further pointed out the word literary seems to be
used in the sense of word literature. It also laid down that question papers were to be counted as
original works because of involvement of selection, judgment and experience in its preparation.
● DICTIONARIES : In V Govindan v.F .M Gopalakrishna Kone21,where contention was that
no originality can be claimed in dictionaries, compilations, guidebooks, maps etc. as they
involve no brains , skill, labour and the compilation by one man will be exactly same as
compilation by any other. The court held that “I cannot agree with that, many men have
not got the brains, skill and labour to compile dictionaries, gazetteers, maps, encyclopedia
and guidebooks .Nor all such compilations of same nature. Then it will be obvious that
only one dictionary, grammar, map, encyclopedia or guidebook will sell and not the rest.
Originality in the case of dictionaries, maps etc exists on selection of words suitable for
high school boys, graduate level, concise or advanced versions.
● COMPILATIONS: Lord Porter in Cramp & Sons V. Smythsori22 observed that,
Compilation is a work formed by the collection and assembly of pre-existing materials of
data that are selected, coordinated or arranged in such a way that resulting work as whole
constitutes an original work authorship. If the work, labour and skill required to make the
selection and to compile the tables which form its items is negligible, then no copyright
can subsist in it. In the same case, Lord Macmillan observed that if the compilation
involved independent skill, labour and judgment and such labour and skill was not
negligible, protection is always given, on this principle, protection has been given to such
compilations as an arrangement of broadcasting programmes", school textbooks", a book
of receipts''.

21
(AIR 1955 Mad 39 )
22
[1944]AC 329
 US Supreme Court opined that Compilation is a work performed by the collection and
assembly of pre-existing materials or of data that are selected, coordinated or arranged in
such a way that the resulting work as a whole constitutes an original work23.
A compilation derived from a common source falls within the ambit of a literary work,
copyright subsists in compilation which has been brought out as a result of labor and
industry put by a person.24
● TITLE: In Francis Day hunter ltd v.Twentieth century Fox corporation Ltd 25the court held
that the title of litrary work in general could not be a subject matter of copyright .A title
does not involve literary composition and is not sufficiently substantial to justify acclaim
of protection . In Kanungo Media (P) Ltd v.R G V Film Factory 26,the Delhi high court
consider the case relating to the alleged appropriation of title for a film .The court found
that the claim of plaintiff's movie 's title “Nisshabd” appears to be blurred in comparison
with the defendants’ movie’s title “Nishabd”. One being documentary and in Bengali
language whose viewership is substantially less than a Hindi movie was a factor which
weighed with the court. The plaintiff claims its right over the said title on the ground that
it has already produced a movie with the title 'Nisshabd', which has also won various
awards and embracing of the same name by the defendants for their film is nothing but an
illegal and mala fide attempt to usurp the plaintiff's right over the said title 'Nisshabd. The
term 'literary title' is used to encompass titles of books, periodicals, newspapers, plays,
motion pictures, television series, sings, phonograph records, cartoon features and the like.

American Courts have taken uniform view that title alone of a literary work cannot be
protected by Copyright Law. Copying of a title alone, and not the plot, characterization,
dialogue, song etc. is not the subject of Copyright Law. Thus, a copyright on a literary
work would not include exclusive right to use the title on any other work. Legal protection
for literary titles lies in the field of trademark and unfair competition.
Later Supreme Court discussed this issue in Krishika Lulla v.Shyam Vithalrao Devkatta 27.
The Supreme Court has held that generally, there would not be any copyright protection
for titles of literary works. Such protection can only be claimed in exceptional
circumstances, where the title itself was of an inventive nature. The facts in Lulla were
thus: The respondent wrote a synopsis of a story named ‘Desi Boys’, which was circulated
through email to two other persons. The respondent then saw promos of a film named ‘Desi
Boyz’ which was subsequently released throughout India on 25. 11. 2011. The respondent
now claims that the appellants had infringed upon his copyright in the title ‘Desi Boys’
through their film. It must be noted that the respondent has neither viewed nor made any
claims with respect to the film infringing upon his copyright in the story ‘Desi Boys’. The
issue for determination was whether copyright subsists in the title of a literary work, ‘Desi

23
17 USC 101.
24
Shyam lal v. Gayaprasad AIR 1971 all 192)

25
[1940]AC 112
26
2007)34 PTC 591
27
Criminal Appeal No .259 of 2013(delivered on oct 15 2015)
 Boys’ in this instance. The Court noted that S. 13 of the Copyright Act, 1957 provides
protection for original literary works. The Court stated that a mere title cannot be
considered a ‘work’ as it was incomplete in nature.
● SYLLABUS: In M/s Nag book house v. State of west Bengal 28 the question decided was
that Whether the Board has copyright to the syllabus made by it and the petitioners have
no right to write textbooks on Mathematics for students’ classes VI and VII following
syllabus. It was held that the labour, skill and capital expended should be sufficient to
import to the product some quality or character which raw material did not possess and
which differentiates the product from raw material. Syllabus is merely prescribing
guidelines which are to be followed by textbook writers has not been accepted as original
work.
● SLOGANS: the question of copyrightability of advertising slogans. It was decided by the
Delhi High court in the case Godfrey Phillips India Ltd. v. Dharampal Satyapal Ltd. &
Anr.29 Facts: The parties in this case are both pan masala manufacturers. Plaintiffs alleged
that the Defendants had copied their advertising slogan, Shauq Badi Cheez Hai and brought
the suit against them alleging infringement of copyright, passing off, unfair competition
and dilution. The case was brought against the Defendants slogan Swaad Badi Cheez
Hain. Plaintiffs stated that they had spent more than Rs. 25 crores on this advertising
campaign. On that basis they stated that they are entitled to copyright protection on their
original literary work, statutory trade mark rights and common law rights. JUDGEMENT:
The court held that the slogan Shauq Badi Cheez Hai does not fall within the scope of
artistic or literary work under the Copyright Act. The slogan was a combination of common
words. It was not an outcome of great skill. It was a commonly used sentence in Hindi and
used in day to day life.

EARLIER POSITION: Pepsi Co., Inc. And Ors. vs Hindustan Coca Cola Ltd. And Anr.30
Pepsi Company Incorporation Along with Pepsico (India) Holdings Limited and Pepsi
Foods Limited, the appellants filed suit against Hindustan Coca Cola and others. Restraint
order was also sought from infringing upon the copy right of the appellants in the words
"Yen Dil Maange More" in television commercials including copying the roller coaster
commercial of the appellants. The court in this case held that copyright can be granted to
‘Titles’.
● SEQUENCES: In Emergent Genetics India (P) Ltd v. Shailendra Shivam 31 The Paintiff
alleged that defendants have produced the unique sequencing formula of hybrid seeds of
the plaintiff thereby resulting in copyright infringement of literary work. The plaintiff
argued that a DNA sequence has the ingredients of a literary work because it is capable of
being expressed in writing or by analogous means. It is analogous to a computer programs
as it is set of instruction not intended for direct application by the human mind. The plaintiff

28
AIR 1982 Cal 245
29
Decided on 2nd July 2012
30
on 1 September, 2003 (27) PTC 305 Del
31
2011) 125 DRJ 173
 contended that Copyright is capable of subsisting in a scientific record consisting of a series
of letters or other characters symbolising the sequential structure of DNA, proteins and
similar constructs found in molecular biology, provided the recorded sequence is of
sufficient length. Court held that our law mandates that not every effort or industry, or
expending of skill, results in copyrightable work, but only those which create works that
are somewhat different in character, involve some intellectual effort, and involve a
minimum degree of creativity. it is apparent that mere labour (sweat of the brow) or
investment of manpower and resources, is not a substitute for originality. Sequences
obtained from nature (e.g., the sequence for a gene) cannot per se, be original. The
microbiologist or scientist involved in gene sequencing "discovers" facts. There is no
independent creation of a "work", essential for matching the originality requirement. Such
a scientist merely copies - from nature-genetic sequence that contains codes for proteins.
Therefore there is no minimum creativity. For example, the formula H2O is no different
from the formula AFAFFAA or some other combination, which may denote a genetic
sequence. Regardless of whether the molecule, exists in nature, or is isolated or developed,
i.e. created rather than discovered, and upon analysis discovered its formula confirmed as
H2O, there can be no sustainable copyright claim in the formula, since the formula is itself
the molecule, not the "expression" of it

In Bikram’s Yoga College of India v. Evolution Yoga32 , the U. S. Court of Appeals for
the Ninth Circuit concluded that a sequence of yoga poses and breathing exercises was
directed to the idea or process of improving health, not to a protectable expression and
therefore not entitled to copyright protection.
● HEAD NOTES, SHORTNOTES, MARGINAL NOTES: The issue that whether the author
of journal that contains judgment of court has the copyright over the headnotes prepared
by him or over the main text of judgment edited by him was dealt in length by Delhi high
court in Eastern Book company v. Navin desai33 held that there is a Copy right of editor
in such reports in the headnotes, editorial notes etc. of the report of judgment, but there
cannot be copyright in the main text of the report of judgment. Later In 2007 in Infoseek
solutions v. Kerala law time34 the Court held that the report of a judgment by a law reporter
is a composite document and is not to be sliced into head note on the one hand and the
main text of the judgment on the other, for the purpose of appreciating it as a literary work
to determine whether the reporter has a copyright on it. A report is a whole document and
the copyright will have to rest on the report as a whole and thus eligible for copyright
protection. Later in Eastern Book Company v. D.B. Modak 35Supreme court discussed the
issue in full length, held that author has the copyright not only over the headnotes, but also
over the editorial notes, footnotes and the paragraph made by the appellants in their copy

32
LLC, Case No. 13-55763, (9th Cir., Oct. 8, 2015) (Wardlaw, J.)
33
2001 PTC (21) 43
34
2006 (4)KLT311
35
AIR 2008 SC 809
 edited versions for internal references and their editor's judgment regarding expression by
the judges by using phrases like concurring, partly dissenting etc.
● LECTURES: no cases discussed the law in this area until 1884 when Nichols v Pitman36
fell to be determined by Justice Kay. Mr Nichols was a fellow of the Geological and Royal
Geographical Societies and an author and lecturer on various scientific subjects. Mr Pitman
had developed a system of shorthand he called "Phonography" and published works which
explained and taught this system. On 14 October 1882 Nichols delivered a lecture on "The
Dog as the Friend of Man" at the Working Men's College. Nichol's delivered his lecture
from a prepared manuscript which he later intended to publish and was based on: many
years’ personal observation, experience and study of the physical and mental
characteristics of various races of dogs. Pitman attended the lecture, took a verbatim
account of it in Phonography and then published that account, in Phonography, in his
periodical "The Phonographic Lecturer". This was challenged and the court held that where
a lecture which is not committed to writing, but which is orally delivered from memory
to an audience, especially where the audience is a limited one admitted by tickets, the
understanding between the lecturer and the audience is that whether the lecture has been
committed to writing beforehand or not the audience are quite at liberty to take the fullest
notes they like for their own personal purposes, but they are not at liberty, having taken
those notes, to use them afterwards for the purpose of publishing the lectures for profit.
● COMPUTER PROGRAM: Computer programs are thus globally protected under the
copyright law as literary works since this is the international mandatory norm set in the
TRIPS Agreement. Initially, there exists confusion regarding originality of computer
programs. How to treat machine readable or electronic form data as a subject matter of
copyright? In Apple Computer Inc v. Franklin Computer Corpn.37 it was held that a
computer program, whether in object code or source code is a literary work and is protected
from unauthorized copying. In Lotus Development Corpn v. Paperback Software
International 38court expressed view that when computer program include elements-both
literal and non-literal – that can be identified separately from and are capable of existing
independently of utilitarian aspect of the article, they are potentially copyrightable.

DRAMATIC WORK : s.2(h) defines “dramatic work” includes any piece for recitation,
choreographic work or entertainment in dumb show, the scenic arrangement or acting form of
which is fixed in writing or otherwise but does not include a cinematograph film.
The definition insists for fixation of work in writing or otherwise, a requirement not insisted in the
case of other works. The dramatic works forms the texts upon which performance of plays rests.
REGARDING FIXATION OF DRAMATIC WORK : The main questions are: Is it to cover
mere written or literary works under the definition of dramatic work? Or is the intention to provide
36
1884
37
714 F 2d 1240
38
740 F Supp 37
protection to a dramatic performance, say stage performance of a play, whose expression, i.e.
script, has been fixed in writing? In the leading case on this point, Norowzian v. Arks Ltd39, the
court interpreted S. 3(2) of the U.K. Copyright, Designs and Patents Act, 1988, which reads
“Copyright does not subsist in a literary, dramatic or musical work unless and until it is recorded,
in writing or otherwise…” to mean that copyright would not would be available for a stage
performance for which there is no script.
In the case of Academy of General Education, Manipal v. B. Malini Mallya 40the main question in
this case was how far a literary work is different from dramatic work. The court observed that the
difference between the two rests on the fact that a literary work allows itself to be read while a
dramatic work “forms the text upon which the performance of the plays rests”.
The High Court observed that a literary work with dramatic elements in it would also be literary
work. Dramatic works also could contain in its, passages of great literary taste, as in the case of
great plays of William Shakespeare. Neither of the two can be produced without the imaginative
skill of the author.
For a work is called as a dramatic work it has to be one which is capable of being physically
performed or accompanied by action. The other requirement is fixation of the matter in the form
of writing or otherwise which means certainty of incidents as a predetermined plan.
ARTISTIC WORK: S.2(c) “artistic work” means—
(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a
photograph, whether or not any such work possesses artistic quality;
ii) a work of architecture; and
(iii) any other work of artistic craftsmanship;
Analyzing the definition, even without artistic/aesthetic quality, protection is granted in practice.
What is sufficient to entitle it for a copyright is that it must be original, i.e. the painting should be
the creation of the painter and not a mere copy of another painting. A painting in order to be
copyrighted must be on a surface, even though it is not expressly mentioned in the provision.
TYPES OF ARTISTIC WORK:
● Cartoon:

Camlin Pvt. Ltd. v. National Pencil Industries41 in this case court discussed the nature and extent
of rights of the plaintiff in printed pencil boxes/cartons in which the pencils (Camlin Flora pencils)
are being sold by the plaintiff.
Issues for consideration: whether there is any copyright in the printed cartons in which the pencils
of the plaintiff and defendants are sold?
Court held that a mechanically reproduced printed carton is incapable of being subject matter of
copyright. In the instant case, what has been produced is only a mechanically reproduced printed
card board carton and therefore copyright does not subsist there. And also there cannot be any
creativity or originality attributed to the said work.
In King Features Syndicate Incorporated, and another v O. and M. Kleeman, Limited 42('Popeye
Case') where the popular cartoon 'Popeye' was recreated in the form of dolls and figurines. This
case found that the "defendants' dolls and brooches were reproductions in a material form of the

39
[2000] E.C.D.R. 205
40
[AIR 2009 SC 1982],
41
on 7 November, 1985 AIR 1986 Delhi 444, 1986 (1)
42
[1941] A.C. 417
plaintiffs' original artistic work. The Court that defendant’s act amounted to infringement of
copyright.
The effect of this decision means that if you own copyright in a 2D image you will also have
copyright in the 3D representation of that image.
● Typefaces or fonts:

M/s. ABP Ltd. submitted applications in the copyright office for registration of copyright under
the category of artistic works. The works submitted for registration are reproduction of a series of
fonts comprising of alphabets in Bengali language and some other symbols. The copyright office
rejected the application for registration stating that the works do not qualify as an artistic work as
per definition of artistic work given under section 2(c) of the Copyright Act, 1957.This was
challenged before the HC, were it was held that copyright shall not subsist in any design which is
capable of being registered under the Design Act, 1911 but which has not been so registered and
which had been reproduced more than fifty times by an industrial process by the owner of the
copyright or, with his license by any other person. M/s. ABP Ltd. has been using the said typefaces
since 1998 and hence more than 50 reproductions have already been done. Hence even if it is held
that the works are copyrightable since it is capable of being registered as a design, the copyright
in the said fonts are already over and no copyright registration can be done at this stage43.
In Microfibres Inc. vs. Girdhar & Co. & Anr44. the Plaintiff was stated to be engaged worldwide
in the business of manufacturing, marketing, selling and exporting of upholstery fabrics directly
or through its subsidiaries and affiliates. It claimed that on all its upholstery fabrics n are printed
unique and original artistic works conceptualized and drawn by and on behalf of the Plaintiff. The
Plaintiff claimed that its artistic works enjoyed copyright protection in India. The High Court of
Delhi dismissed the Plaintiff’s suit for injunction, holding: “in order for the work of the Plaintiff
to qualify as an “artistic works”, it must fall within the definition of sub section (c) of Section 2 of
the Copyright Act. A reading of the said provisions would show that attempt of the Plaintiff can
only be to bring it within the concept of “painting.” The comparison with the paintings of M.F.
Hussain would be otiose as the work in question, in the present case, is not a piece of art in the
form of a painting.
Thus, in India, a distinction has been drawn between an ‘artistic work’, protectable under the
Copyright Act, 1957, and ‘designs’ which is protectable under the Designs Act, 2000. Copyright
protection is granted to a ‘pure art’. ‘Pure art’ can be defined as an original expression of the author
and devoid of commercialism. It represents the personality of the creator. It is not necessary that
it must have an aesthetic appeal. The only essential requirement for copyright protection is that it
must original, i.e., it must not have been copied.
When comparing designs and copyright we can conclude the following in a nutshell: designs
applied on manufactured articles by an industrial process and registered under the Designs Act,
2000, shall not be accorded copyright protection under the Copyright Act, 1957, by virtue of
section 15(1) of the latter Act. Secondly, unregistered designs shall continue to enjoy copyright
protection till it has not been reproduced more than fifty times. Thirdly, if an unregistered design
is reproduced more than fifty times, it shall neither be protected under the Copyright Act, 1957,
nor the Designs Act, 2000. Fourthly, the copyright holder of the original artistic work from which
the design is derived shall continue to enjoy the protection accorded to his work under the
Copyright Act, 1957. On the other hand, the registered proprietor of the design shall have the

43
Ananda expanded Italics (Reg),In,re (2002)24 PTC 427
44
2006(32)PTC 157 Del
design copyright, i.e., the right to exclusive use of the design for an initial period of ten years,
which may further be extended for five years, and to protect the design from piracy.
● Photograph :

A photograph must be original i.e. originally taken to be entitled to protection and inorder to be
original some degree of skill and effort must have been expended on it. A photograph of even an
object belonging to the public domain is the subject-matter of copyright. But the another person
can take a photograph of the same object from different angles and positions and can have an
equally strong claim for independent copyright of the photograph to that of the other person taking
the photograph at different angles and position.
The original skill and labour involved in taking of the photograph may consist in arranging the
objects photographed or in selecting the exact moment or size for a photograph of the moving
object or objects.
Eva-Maria Painer v Standard Verlags GmbH45 -In December 2012, the Court of Justice of the
European Union (CJEU) held that portrait photographs enjoy the same copyright protection as any
other work. Ms Painer is a freelance photographer who took several photographs of a young
Austrian girl, Natascha K. Ms Painer sold the photographs without conferring on third parties any
rights over them and without consenting to their publication. After Natascha K was abducted in
1998, a search appeal was launched using the contested photographs. But before her first public
appearance, the contested photographs were again published by five newspaper publishers in
Germany and Austria, in various media, without indicating the name of the photographer, or any
other name. The newspaper publishers all said they had obtained the photographs from a news
agency that had not provided the name of the author. Ms Painer claimed copyright infringement
and applied to the Austrian courts for an injunction and damages.
Issue was whether a portrait photograph could be protected by copyright and, if so, whether,
because of the “realistic” nature and the allegedly minor degree of creative freedom in such
photographs, that protection is inferior to that enjoyed by other works, particularly photographic
works. Court held that in producing a portrait photograph, the photographer was indeed able to
make “free and creative choices” in the choice of background, pose, lighting, angle, etc. Therefore,
noted, such a photograph can indeed be protected by copyright.
In Antiquesportfolio.com Plc v. Rodney46 issue considered by the court is the extent to which a
photograph of a single static item (such as a jug or a sofa) could be said to be protected by copyright
and whether copyright subsists in photograph of three dimensional antiques. Court held that
photograph of a three-dimensional object would require of a photographer at least some skill and
effort in terms of positioning, angle, lighting, focus and so on and thus eligible for copyright
protection.
● Architectural Works and Technical Drawings

Generally speaking, all of the architect’s works are put under the collective caption of “plans,
drawings and designs”. Architects, generally use the “drawings’ to cover all written expression of
their art.
Architectural works were not included in the Convention of 1886 except that plans, sketches and
artistic works related to architecture were enumerated under Article 4. After much discussions and

45
Case C-145/10 CJEU rules on copyright protection of photographic portraits ,www.lexology .com
46
(2001)FSR 345
deliberations it was decided to protect architectural works. And thus it was inserted in the
enumeration of literary and artistic works in Article 247.
As per the provision the protection is given to original artistic works of architecture and the purpose
for which the building was to be used were immaterial
In India, Escorts Construction Equipment Ltd.& Anr. v. Action Construction Equipment Pvt. Ltd.
& Anr.48 , the claim of the plaintiffs was that the defendants Pick N Carry Hydraulia Self Mobile
Cranes is the 3 dimensional reproduction of the drawings for which the plaintiffs have copyright
protection. Court held that the defendants have violated copyright of the plaintiffs in their industrial
drawings for the reason that reproduction of an artistic work includes a version produced by
converting the work into 3 dimensional forms.
● Sculpture
Plaster shapes used to produce the mould of sandwich maker parts were held to be scuptures.49 An
ice sculpture, though not permanent, is protected.50
● Drawing (including a diagram, map, chart or plan)-
In Aga Medical Corpn. v. Faisal Kapadi51, the court did not find favour with the contention of the
defendant that only those drawings which are prepared by an artist is alone will fall within the
meaning and ambit of the “artistic work” and no drawing prepared by any other person, viz., a
scientist or any other technical expert will fall within the ambit of artistic work. A diagram, map,
chart or plans are not necessarily the work of an artist but they are usually prepared by different
technical hands well versed in such job.

MUSICAL WORK: The quest of originality and not of imitation has always been the most
important element in musical composition. In law, originality has become an important legal
doctrine where creativity and innovation have been protected as copyrightable works. If you copy,
it means you’re working without any real feeling. No two people on Earth are alike, and it’s got to
be that way in music or it isn’t music.52’
Copyright can subsist in musical work, only if
1. they are musical works;
2. they are original (originated by the author and not copied with minor changes);
3. amount to ‘works’ that is, compositions, pieces artistically set together.

‘Musical work’
In India musical works have been defined in Section 2(p) of the Copyright Act, 1957 which means
a work consisting of music and includes any graphical notation of such work but does not include
any words or any action intended to be sung, spoken, or performed with the music.

47
“Copyright Protection & Architectural Plans, Drawings and Designs”, available at
http://shodhganga.inflibnet.ac.in/bitstream/10603/52362/12/12_chapter%207.pdf. (accessed on 25.03.2018)
48
1999 PTC 36 (Del.), p. 48, 49.
49
Breville Europe Plc. v. Thorn EMI Domsetic Appliances Ltd. (1995)
50
Metix (UK) Ltd. v. G.H.Maughan (Plastics) Ltd. (1997).
51
(2003) 103 DLT 321.
52
Nehaluddin Ahmed and Saurabh chaturvedi, “Originality requirement and copyright regime of music “.
In English law, Sawkins v. Hyperion Records 53 is an important case for the music industry, where
the Court of Appeal held that musical aspects such as figuring of the bass, ornamentation and
performance directions are part of musical works.

In Ram Sampath v. Rajesh Roshan&Ors54, D. G. Kartik, J. observed that “In my view for
considering whether a copy of a part of the former musical work into the latter musical work
amounts to an actionable infringement, the following factors would be required to be taken into
consideration: - First is to identify the similarities and the differences between the two works.
Second is to find out whether the latter would meaningfully exist without the copied part. It may
be necessary to find the soul of a musical work. The soul cannot be determined merely by
comparing the length of the part copied but whether the part copied is an essential part of a musical
work. Though a musical work may have a length of several minutes, the listener often remembers
a ‘catch part’ to which he is immediately hooked on. It is necessary to look for such ‘catch part’
or the ‘hook part’. If the ‘catch part’ or the ‘hook part’, however small, is copied the whole of the
latter work would amount to actionable infringement…These factors are only illustrative and there
would be many other factors which may be required to be looked into depending upon the facts
and circumstances of each case.
In a legal dispute between India TV and Yash Raj Films, (Yash Raj Films v. India TV) the Delhi
High Court held that small amounts of usage of songs in a programme by India TV does not amount
to copyright infringement. In a judgment delivered in a copyright infringement case filed by Yash
Raj Films against India TV, the Division Bench of the Delhi High Court has held that …use of a
few words or lines from the lyrics of a song does not amount to infringement of copyright. The
concerned Judges held that this amounts to ‘fair use’ and is also ‘de minimus’, meaning the usage
is insignificant as compared to the whole programme. A few words from the song ‘Kajrare,
kajrare…’ from a Yash Raj Film ‘Bunty aur Babli’ were used in an advertisement for a consumer
affairs programme telecast on India TV, and a portion of the song ‘Salaam Namaste’ was sung by
Vasundhara Das in a programme ‘India Beats’ on India TV. Yash Raj Films had claimed
infringement of its copyright. The court was of the opinion that creativity would shrink if usage of
minute bits of songs/lyrics is termed infringement.

SOUND RECORDING: The first major international copyright treaty, Berne convention 1886
did not protect sound recording. International convention for the protection of performers,
producers of phonogram and broadcasting organization (Rome convention) 1961, is the first
copyright legislation that protects sound recording as phonograms. Later TRIPS AND WPPT
(WIPO performers and phonogram treaty) incorporates provisions on copyright protection of
sound recording.
As per Indian copyright Act 1957 sound recording means a recording of sounds from which sounds
may be produced regardless of the medium on which such recording is made or the method by
which sounds are produced -s.2(XX). From the definition, it becomes clear that the subject-matter
of protection is the content of the recording, namely the sounds which form part of the recording/
sounds which are embedded in the recording, and not the recording itself. In other words, the
protection is not restricted to a specific recording that is made at a given point in time, but is in
fact conferred or bestowed upon the very sound itself. Critically, it must be pointed out that sound
recording is not synonymous with a song. Songs merely form a subset of sound recording. In a
53
[2005] EWCA Civ 565,45
54
2009(40)PTC 78(Bom)
song, which is also a sound recording, the peculiarity is that its constituents, namely the
musical composition and the lyrics are themselves protected by
distinct/ independent copyrights. Consequently, a song, at its very creation, is a combination of
copyrighted works, thereby bringing it within a broad definition of a "Derivative work". This
proposition is beautifully articulated in a decision of the Delhi High Court Super Cassettes v.
Chintaman55 delivered in July 2011. The relevant portion of the judgment reads as follows: There
is no quarrel with the proposition that cinematograph films and sound recordings are derivative
works, which are eventually derived from original literary, dramatic, musical and artistic works.
That does not make copyright in cinematograph films and sound recordings inferior. In
Entertainment Network (India) Ltd. (supra), in para 41, the Supreme Court has held that only
because the term for holding copyright under section 27 (in relation to a copyright in sound
recording) is different from the term of the copyright in relation to original literary, dramatic,
musical and artistic works, the same would not mean that the right of the copyright owner in sound
recordings is somewhat inferior. Even though the copyright in relation to derived work such as
cinematograph films and sound recordings operate in a relatively restrictive field, when compared
to the copyright in original literary, dramatic, musical and artistic works, to the extent that the
said copyright in derived work is vested by the Act, the same operates with full force and vigour.
A person singing a song or playing a musical instrument, a person delivering a lecture are examples
of sound recording. Sound recording are protected regardless of their format e.g. mp3 or audio file,
CD, audio cassette or tape, vinyl record, etc. The right of sound recording is different from the
subject matter recorded as they are the subject of independent copyrights. The author of a sound
recording is the producer.
CINEMATOGRAPHY FILMS: the definition of cinematography film under the Indian
Copyright Act 1957 in section 2 (f), it provides that “cinematograph films means any work of
visual recording on any medium produced through a process from which a moving image may be
produces by any means and includes a sound recording accompanying such visual recording
and cinematograph shall be construed as including any work produced by any process analogous
to cinematography including video films” .
With regard to copyright in cinematography film is to be found in the decision of the Hon'ble
Supreme Court in Indian Performing Right Society Ltd. vs. Eastern India Motion Picture
Association & Ors.56, However, not each and every work is entitled to copyright protection.
Copyright protection is extended to original literary, dramatic, musical and artistic works;
cinematograph films and sound recording (Sec. 13(1) (a), (b) & (c) of the Copyright Act). In order
to claim copyright there must be some originality in the work. The author of a work may obtain
raw materials for the work from any or many sources but will only be entitled to copyright if these
raw materials are converted, by use of his labour skill, capital and intelligence to create another
material or work which is something different from the raw materials and has an element of
novelty. (See Macmillan Company Limited vs. K.J. Cooper,57)

55
Judgment delivered on 11/11/2011 by Delhi Highcourt
56
reported in AIR 1977 SC 1443.
57
reported in AIR 1924 PC 75.
In Star India Private Limited v. Leo Burnett (India) Private Limited and Another (2003), it held
that copyright in a cinematograph film is infringed if the recorded moving images were directly or
indirectly copied, but not if the same or similar images were recorded independently, for example,
by re-shooting the subject matter of the film.
To be specific if a person produces a film which substantially resembles an earlier film in almost
all aspects it will not be termed as copyright infringement, even if it is apparent that the subsequent
film lacks originality. This is a broader analysis given by Courts. But this position was changed in
subsequent decisions.
In Shree Venkatesh Films Pvt. Ltd. v. Vipul Amrutlal Shah 58a Division Bench of the Calcutta High
Court has revisited the law relating to subsistence of copyright in films. The Division Bench was
examining the validity of the order passed by the Single Judge who had granted an ad-interim
order of stopping exhibition of a Bengali film titled as 'Poran Jaye Joliya Rae' being of the view
that it violated the copyright of Hindi movie 'NamasteLondon'. The Division Bench, revisiting the
law relating to copyrights in movies/films, held that in the context of a cinematograph film, the
word 'copy' must be given a broad meaning. It was hence noted by the Court that a cinematograph
film is greater than the sum of its component parts. It held that the words, “to make a copy of the
film”, do not mean just to make a physical copy of the film by a process of duplication, but it also
refers to another film which substantially, fundamentally, essentially and materially
resembles/reproduces the original film. It was further observed that the Court would have to
compare “the substance, the foundation, the kernel” of the two advertisements to consider whether
one was “by and large a copy” of the other and whether an average viewer would get an
unmistakable impression that one work was a copy of the other.
Later in MRF Limited v. Metro Tyres Limited. (2019) the plaintiff, MRF Limited (MRF), a
prominent tyre manufacturer in India, had filed the present suit alleging copyright infringement
against the defendant, Metro Tyres Limited (MTL), another tyre manufacturer. MRF alleged that
MTL’s audio-visual advertisement, which had a similar sequencing, form, treatment and
expression, was nothing but a substantial and material copy of its audio-visual advertisement. In
defense, MTL relied on Section 2(m)(ii) as well as the 2003 judgment of the Bombay High Court
and argued that the expression “to make a copy of the film” meant to make a physical copy of the
film itself and not another film which merely resembled the original film. Court reiterated the
decision laid down in Shree Venkatesh case.

RIGHTS UNDER THE COPYRIGHT LAW

Copyright, under the Copyright Act 1957, is a right granted to creators of literary, dramatic,
musical, computer and artistic works, and producers of cinematography films and sound
recordings. Copyright is a bundle of rights that exist with the owner or author of the work.
Copyright gives him the exclusive rights of exploitation of the work in any manner as he wants.
These rights could be broadly classified into two:

58
ON 01/09/2009 CALCUTTA HIGHCOURT DECISION
(A) Economic rights, and
(B) Moral Rights.
Economic rights are those rights that facilitate the author reap economic benefits. They are rights
concerning the control over all economic, commercial and industrial exploitation of the works.
These rights could be transferred to anyone who has the capability of commercial exploitation.
Section 14 of the Copyright Act, 1957 recognizes the economic rights for the works considering
the nature of the work. The section provides that it is the exclusive right of the author to do or
authorize the doing of the acts provided under the Act. The economic rights under the Indian
Statute includes reproduction rights, distribution rights, communication rights, public performance
rights, translation rights, adaptation rights etc., with respect to literary, dramatic and musical works
and also commercial rental or lending rights with respect to computer programmes, cinematograph
films and sound recordings. A communication right in turn includes broadcasting and cable casting
rights. The Act also give right to authorize any others to carry out any of these activities above
mentioned. Another right that can be included is the right to prohibit importations. In addition to
the rights of the authors, the Act protects the performer and the broadcasting organizations which
can be categorized into another class of rights called related rights or neighboring rights.
Rights corresponding to the Subject – Matter of Copyright is represented in a chart from which is
added as Appendix to this Article.

Provision regarding rights under TRIPS and Berne Convention

Rights of the authors has been given due recognition under the Berne Convention, 1886 which
protects literary and artistic works. Some exclusive rights granted under the Convention includes:
● Right of translation (Article 8)
● Right of reproduction (Article 9)
● Right of performance (Article 11)
● Right of broadcast (Article 11bis)
● Right of public recitation (Article 11ter)
● Right of adaptation, arrangement and other alteration (Article 12)
● Cinematographic adaptation and reproduction, distribution, public performance in case of
cinematographic and related rights (Article 14).

One of the important rights granted under this Convention is the Moral Rights which falls under
Article 6bis.
As far as TRIPS Agreement is concerned it specifically excludes moral rights conferred under
Article 6bis of Berne Convention (dealt under Article 959). Article 11 of TRIPS speaks about

59
Berne Convention 1886, Art 9- Relation to the Berne Convention- (1) Members shall comply with Articles 1 through
21 of the Berne Convention (1971) and the Appendix thereto. However, Members shall not have rights or obligations
under this Agreement in respect of the rights conferred under Article 6bis of that Convention or of the rights derived
therefrom.
Rental Rights of Computer Programs and Cinematographic works, which differs from Indian
Copyright Law which also extends to Sound Recordings.

Right of reproduction

The reproduction right is perhaps the most important right granted by the Copyright Act. This right
authorizes the person having such copyright to make copies of the protected work in any form as
he wants. In other words this right prohibits persons from making one or more copies of a work or
substantial part of it in any material form without the permission of the copyright owner. The most
common kind of reproduction which we can mostly witness is printing an edition of a work.
Right to reproduce the work is there for literary, dramatic, musical and artistic works.
The right to reproduce any type of work is with the author of the literary, dramatic, musical, artistic,
cinematograph film and sound recording. The term reproduction in material form is not defined in
the Act. Under Section 14 (a) (i) of the Act, the owner of literary, dramatic or musical work has
an exclusive right to reproduce the work in any material form including the right to store the work
in any medium by electronic means- storing into computer, CD etc..
However in case of artistic work under Section 14(c) (i) the right to reproduce the work in any
material form is given to the copyright owner but the right to store the work in any medium by
electronic means is not given. In case of artistic works, the right to reproduce the work includes
depiction in three – dimension of a two dimensional work or in two dimensions of a three
dimensional work.
The right to reproduce a work is considered to be the most basic power of copyright since it
controls the right of duplication.

Case laws

DCS Bureau v. United Concern60, Plaintiff, a firm contacted an artist and got him to execute an
oil painting of Lord Subrahmania in the posture of Kumaragurupuran. After getting the picture
done Plaintiff acquired from the artist all rights in the picture for consideration. Later in 1948
Plaintiff got the painting printed by the offset process and the copies of the picture thus printed
were widely sold. There were reprints in 1933 and in 1956. According to Plaintiff, DCS Bureau
had printed and also sold Plaintiff’s picture. As a result the sale of Plaintiff’s picture went down
considerably.
Plaintiff had registered its picture and based on this plaintiff sought for an injunction restraining
defendants or their agents from copying, reproducing and multiplying the plaintiff’s picture.
Defendant contended that plaintiff’s work was not an original artistic work. There were also
several other pictures of the deity in the aforesaid posture, besides that of defendants. The picture

60
AIR 1967 Mad 381.
of the plaintiff and the defendant were different and that no one will likely to be deceived in buying
defendants picture in the notion that it is of the plaintiff.
Court held that plaintiff is the owner of the picture and had copyright for the same. The defendant’s
picture is a substantial reproduction of the plaintiff’s picture and therefore there is infringement
of copyright. Reproduction of this substantial part in the defendant’s picture is not by way of
approximation but is mathematically exact in regard to certain measurements which give a clue as
to the mode of reproduction adopted. For the purpose of infringement of copyright an exact
reproduction or copy is not necessary. What is essential is to see whether there is reproduction of
substantial part of the picture. It is clearly visible in this case and the defendant is guilty of
infringement.

Cinematograph film

In the case Star India Pvt. Ltd. v Leo Burnett (India) Pvt. Ltd.61, Bombay High Court examined
the interpretation of the right of making copies of the film granted under Section 14 of the Act to
cinematograph Film. In this case the plaintiff doing business on broadcasting produced a television
film named “Kyun Ki Saas Bhi Kabhi Bahu Thi”. This serial consisting of 262 episodes was
telecast from July 2000 onwards and became very popular. The name of the characters in the film
also gained popularity. It was alleged by the Plaintiff that the Defendants produced a television
commercial entitled “Kyun Ki Bahu Bhi Kabhi Saas Banegi” for their product “Tide Detergent”
by engaging the same actors using identical characters. Plaintiff alleged infringement of the
copyright in the film by copying the film characters and the story. It was contended by the
defendant that they had not copied any part of the serial and they independently produced the
advertisement having 30 seconds duration. The issue here is whether independently making a film
using the same characters and story resembling an existing film amounted to copying of the film.
The court after examining the term “copy” and the difference between the rights given to literary
works and film observed thus that under Section 14(a) (b) and (c) the owner of the copyright has
exclusive right to reproduce the work in any material form which is absent and excluded in the
case of Section 14 (d) and (e). It is, therefore, clear that production by another person of even the
same cinematograph film does not constitute infringement of a copyright in the cinematograph
film. It is only when actual copy is made of a film by a process of duplication to fall under Section
14(d) (i). The expression ‘to make a copy of the film’ would mean to make a physical copy of the
film itself and not another film which merely resembles the film.
Also if the same cinematograph film has been produced by another person that will not constitute
infringement of copyright of the first film. If the second film shot seems to have some resemblance
of the first film that cannot be said to cause infringement.

Artistic works

61
2003(27) PTC 81 (Bom).
The author of an artistic work has the exclusive right to reproduce the work and it includes its
conversion from 2 dimensional to 3 dimensional and vice versa.62 This right has been elaborately
dealt by the Delhi High Court in Escorts Construction Equipment Ltd. & Anr. v. Action
Construction Equipment Pvt. Ltd. & Anr.63. The claim of the plaintiffs was that the defendant’s
Pick N Carry Hydraulia Self Mobile Cranes is the 3 dimensional reproduction of the drawings for
which the plaintiffs have copyright protection. Court held that the defendants have violated
copyright of the plaintiffs in their industrial drawings for the reason that reproduction of an artistic
work includes a version produced by converting the work into 3 dimensional forms.

In Ladbroke Ltd. v. William Hill Ltd.64 the court held that reproduction means copying and does
not include cases where an author or compiler produces a substantially similar result by
independent work without copying. It must also be noted that to constitute reproduction, copying
need not be in toto, even substantial reproduction will amount to reproduction. Reproduction also
means making a copy in a different form, even if such copy is not easily distinguishable.
This case was between two largest betting companies and bookmakers, Ladbroke and William
Hill. The case arose out of a dispute over the subsistence and infringement of copyright in William
Hill’s football coupons- a sheet of paper on which lists of forthcoming matches were printed.
William Hill was using this coupon since early 1950s. Ladbroke entered the field and adopted a
similar product. The claim primarily related the coupons as compilations. In June 1962, Trial Court
said Ladbroke had copied William Hill material and held that no copyright subsisted in the coupon
themselves. Later in December 1962, in the Court of Appeal, Lord Denning rejected the contention
of existence of artistic works in coupons. To claim artistic copyright, it would have to be ‘work of
artistic craftsmanship’. However he said Ladbroke had copied 15 out of 16 lists and much of
headings and notes of William Hill and thereby resulted in infringement. In January 1964, 5 Lords
dismissed the Appeal and upheld the finding that the coupons were copyright protected ‘original
compilations’ and that Ladbroke had infringed. This decision emphasized the labour, skill put in
by the person, which need to be given due recognition.

Right to issue copies of work to the public not being copies already in circulation

An off-shoot right of reproduction is the right of distribution. The author controls distribution of
the work to the public. To issue copies means dissemination of the work to a substantial number
of persons. It is the right to put copies of the copyrighted work into the commercial market i.e. it
relates to the control over dissemination of actual physical copies of the work. The scope and
extend of this right is not uniform i.e. it differs with the work. Once copies are in circulation the
right no longer exists i.e. the right gets exhausted.

62
Copyright Act 1957, Section 14(c) (i).
63
1999 PTC 36 (Del.), p. 48, 49.
64
[1964] 1All ER 465, 469.
In Capitol Records Inc. v. Thomas Rasset65the question was that whether merely copyrighted
materials available were sufficient to constitute distribution.
The brief facts was that Plaintiff, recording companies alleged that Defendant Jammie Thomas
had infringed 24 of their copyrighted sound recordings by downloading and making them available
via the Kazaa peer-to-peer file sharing network. District Court said that one who reproduces or
distributes a copyrighted work without license infringes the copyright of the owner. The court’s
instructions defined “reproduction” to include the act of downloading copyrighted sound
recordings on a peer-to-peer network. The court also instructed that the act of making copyrighted
sound recordings available for electronic distribution on a peer-to-peer network, without license
from the copyright owners, violates the copyright owner’s exclusive right of distribution,
regardless of whether actual distribution has been shown. Jury found Thomas liable for willful
infringement and awarded the recording companies statutory damages.
Later District Court said that making a work available to the public is not “distribution” under the
Act. Court found that for distribution to occur actual dissemination of work is required. Therefore
merely making a music file available in a shared file is insufficient to constitute distribution under
Copyright Act.
The unauthorized sale of a videocassette containing the movie Titanic is an infringement of the
distribution right. Another way of viewing the reproduction and distribution rights is that the author
has the power to forbid reproduction or dissemination of the work. For example, an author has
created new works but has chosen not to publish them. Copyright law grants him the power to
prevent others from copying his unpublished works.

Doctrine of exhaustion
Once the copies of the work are put into circulation then the right of distribution ceases to exist.
This is what is meant by this doctrine i.e., your right gets exhausted. The principle of exhaustion
is dealt under Article 6 of the TRIPS Agreement. According to this principle, once the intellectual
property rights holder has sold a product to which its IPRs are attached, he cannot prohibit the
subsequent resale of that product, as his intellectual rights in that product are said to have been
‘exhausted’ by such sale.66 This is also known as the “First Sale Doctrine”.
There are three forms of exhaustion:
1. National exhaustion- where the author loses the right to control the re-sale of the product
in that particular nation
2. Regional exhaustion- where the author loses the right to control re-sale of the product over
a specified region but can exercise such right beyond such region.
3. International exhaustion- where the author loses the right to control re-sale of the product
anywhere in the world after the first authorized sale.

65
579 F. Supp. 2d 1210 (2008).
66
Ganguli Prabuddha, Intellectual Property Rights- Unleasing the Knowledge Economy’ (Tata McGraw- Hill
Publishing Company Ltd., 7 West Patel Road, New Delhi 110 008), 2001, reprint 2003, p.254.
In the first two situations, the owner retains the right to restrict import of copies made abroad into
the domestic market or the region respectively. However, in case of international exhaustion, the
owner loses this right on the first sale. The practical effect of this principle is the practice of parallel
imports67.

Parallel Imports
The exhaustion principle gives rise to another terminology called as ‘parallel imports’. In parallel
imports an unauthorized third party imports cheaper but legitimate copies from Country A into
Country B to sell them in parallel with the same yet more expensive legitimate copies which are
either domestically manufactured or imported with the consent of the copyright owner. 68 This
raises an interesting question as to whether there is right to importation under the Copyright Act,
1957. There is no right of importation under the Act. But the question is whether it can be read
from other provisions. In Penguin Books Ltd. v. India Book Distributors and Others69 Delhi High
Court deals with this particular issue. Plaintiffs in this case had the exclusive right and license for
printing, publishing and marketing of 23 copyrighted works in India. The defendants imported
lawful copies of these books from America and sold it in India. The plaintiffs filed the suit to
prevent this. Question was whether defendants acts amounts to infringement. Court held that if
any person without the license of the copyright owner, imports into India for the purpose of trade
any work, the copyright over the same is infringed. Anything imported if not for importers own
use would amounts to infringement70. Here defendants are publishing the work of the plaintiffs
which is his exclusive right. So through that reasoning it could be decided that the act of defendant
amounts to infringement.

Copyright Law and Exhaustion

In Warner Bros Entertainment Inc. v. V.G. Santosh71 Justice Bhat explicitly recognised that, in the
context of copyright law, while the principle of international exhaustion may apply to literary,
musical, dramatic or artistic works; it does not apply to cinematographic film [and to sound
recordings as well]. This case involved the import from US into India of legally purchased DVDs
of films produced by Warner Bros. which were not yet released for public viewing in India. He
based his decision on the difference between the wordings of Sec. 14(1) (d) [and (e)] and
14(1)(a)/(b)/(c). While under the former, the copyright owner continues to exercise his right to sell
or give on hire a particular copy “regardless of whether such copy has been sold or given on hire
on earlier occasions”; under the latter, he ceases to exercise these rights over copies which are
“already in circulation.”

67
Prasant Reddy, “Exhaustion and Copyright Law- A look at the Copyright Amendment Bill, 2010”, spicyip, May 3,
2010, available at https://spicyip.com/2010/05/guest-post-exhaustion-and-copyright-law.html.
68
ibid
69
1984 (4) PTC 285 (Del.), p.296.
70
Section 51, Copyright Act 1957.
71
CS (OS) 1682/2009, MIPR 2009 (2) 175.
This essentially means that the buyer of a cinematographic film or a sound recording cannot sell
or give on hire, his copy of the film or recording without the previous permission of the copyright
owner. However, the buyer of a literary, musical, dramatic or artistic work does not require any
such permission. Justice Bhat also favoured this interpretation on the ground that since owners of
copyright in films/recordings can exercise their right to distribute the work through licences which
can be limited geographically, accepting international exhaustion would permit a licensee, who
acquires a copy, to exploit the copies beyond his contractually imposed geographical limit and
thus nullify the object of geographically limited licences.72

But with the Amendment to Section 14 which includes deletion of the words “regardless of
whether such copy has been sold or given on hire on earlier occasions” (specifically in Sections
14(1)(d)(ii) and 14(1)(e)(ii)) and also replacement of the word “hire” by “commercial rental”
Justice Bhat’s reasoning which focused on the distinction in the words of Section 14(1)(d)/(e) and
14(1)(a)/(b)/(c) will become non-existent. Therefore Copyright Law will henceforth recognize
International Exhaustion principle uniformly without making any distinctions between the various
works. It also need to be pointed out that the exclusion of ‘copies of works lawfully published
abroad and imported into India’ from the definition of infringing copy73 also reinforces the
applicability of the international exhaustion principle.

Right to perform the work in public

The public performance right74 allows the copyright holder to control the public performance of
certain copyrighted works. The scope of this right is limited to the following types of works:

● literary works,
● musical works,
● dramatic works.

Under this right, a copyright holder is allowed to control when the work is performed "publicly."
A performance is considered "public" when the work is performed in a "place open to the public
or at a place where a substantial number of persons outside of a normal circle of a family and its
social acquaintances are gathered."

Change in technology has brought change to the nature of communication and also to the notion
of ‘public’. This has enabled basically three kinds of communication, such being public
performance, being carried on in the presence of an audience, transmission through cable network
and also wireless broad casting. And the right to communicate the work through all these means
vests exclusively with the author.

72
Supra n. 11
73
Copyright Act 1957, Section 2(m).
74
Copyright Act 1957, Section 2(q) - Performance of the work in public: performance means any visual or acoustic
presentation made live by one or more performers.
A performance is also considered to be public if it is transmitted to multiple locations, such as
through television and radio. Thus, it would be a violation of the public performance right in a
motion picture to rent a video and to show it in a public park or theater without obtaining a license
from the copyright holder. In contrast, the performance of the video on a home TV where friends
and family are gathered would not be considered a "public" performance and would not be
prohibited under the Copyright Act.

Right to communication

This is a very discussed right as far as Rights of the author is concerned. As per the Copyright Act,
"communication to the public" means making any work or performance available for being seen
or heard or otherwise enjoyed by the public directly or by any means of display or diffusion other
than by issuing physical copies of it, whether simultaneously or at places and times chosen
individually, regardless of whether any member of the public actually sees, hears or otherwise
enjoys the work or performance so made available.75 This is a very wider definition which can be
put into sub points:
● Making any work or performance
● Making it available for being seen or heard or otherwise enjoyed by the public
● It can be seen, heard or enjoyed either directly or by any means of display or diffusion
other than by issuing physical copies of it
● It can take place simultaneously or at places and times chosen individually
● It doesn’t take into regard whether any member of the public actually sees, hears or
otherwise enjoys the work or performance that is made available.

The communication can be through satellite or cable or any other means of simultaneous
communication to more than one household or place of residence including residential rooms of
any hotel or hostel. The fact that the work is accessible to the public is enough to say a work is
communicated to the public.
The aim of this provision is to restrict unauthorized use of the work of author by public and not by
private and domestic use of the work. In today’s world the author’s right of communication to the
public is very much threatened by internet where everything goes public in no time. Our Act
widened the Section through Amendment inorder to cover up the new technology and its activities.
In Garware Plastic & Polyester Ltd, Bombay v. Telelink76, the Court tried to bring out the meaning
of the term ‘communication to public’. In this case the plaintiffs were producers of cinematograph
films and the defendants were cable operators who telecasted those films, for a prescribed fee,
without authorization of the plaintiff which was challenged by them as violating their right under
Section 14 of the Copyright Act, 1957. The question before the Court was whether the act of the
defendants would amount to communicating the plaintiffs work to public. The Court brought out
a test to find out what would amount to ‘communication to public’ and held that the criteria to
decide it are:
● Character of the audience and whether it can be described as public or private,

75
Copyright Act 1957, Section 2(ff).
76
AIR 1989 Bom 331.
 ● The audience is private or public in relation to the owner of the work,
● Whether permitting such performance will cause monetary loss to the owner of the work
which he ought to gain out of the exploitation of his intellectual property.
Interpreting the term ‘Public’, the Court held that though the people who receive broadcast are
either residents of apartments in a building which has the network or residents of the locality, they
cannot be treated as members of the same household or family and consequently their relation with
the owner of the work is of public nature. Moreover, the defendants were collecting certain
amounts as fees which the plaintiff ought to have got and thereby causing loss to him of what he
is lawfully entitled to. Considering all these, the Court held that the defendant violated the
plaintiff’s right to communicate his work to the public guaranteed under Section 14 of the
Copyright Act.
Court to find the nature of the place where the performance took place laid emphasis on some
English cases also. In Performing Right Society Limited v. Camelo77music which was broadcast
over radio was played through a loud speaker in a private room adjoining a public restaurant. This
arrangement was made by the owner of the restaurant. By doing so owner of the restaurant was
held to have arranged music to be performed in the public. Thus it was held that the restaurant
owner has infringed the copyright of the owner.
With the advancement of technology computer and internet is found to be a good and much easier
platform for making the work available to public. Even in that case also the test laid in this case
can be well applied and taken into consideration.
Making available of the work to the public- this broad definition is now capable of covering
satellite cable and internet transmission of works. The scope of ‘communication to the public’ was
the subject of judicial interpretation by the Bombay Court in Video Master v. Nishi Productions.78
While considering the issue whether vesting of sole and exclusive video copyright in respect of a
film Bees Saal Baad which included ‘right to exhibit, distribute, sell, offer for sale, lease, let on
hire or license or otherwise exploit or to make copies or deal with the video cassettes/video
programmes/discs/tapes and cables’ was violated by an assignment of satellite TV broadcasting
rights in favour of another person by the owner of copyright in the film, the Bombay High Court
held that there were several means of communication and each one was separately divisible and
could exist in different persons at the same time. The court enlisted the different classes of
communications such as (1) theatrical rights, (2) terrestrial television rights. (3) satellite
broadcasting rights, and (4) cable TV rights. The court went on, adding that the defendants satellite
broadcasting right and the plaintiff’s cable tv rights can, therefore, coexist without infringing
copyright of each other. Thus it is clear that each different modes of communication could be
treated as a separate right of the author enabling him to transfer it independently to different
persons for commercial exploitation.

Right to make translation of the work

The Act doesn’t define translation of the work. Thus it gets the ordinary meaning of translation
i.e., translating from one language to another. Being that it applies only to literary and dramatic
work or any work which contains as a part thereof any literary or dramatic work in which an

77
(1943) 1 Ch 167.
78
(1998) 18 PTC 117.
independent copyright exists. With regard to musical work translation can be referred to the
translation of the lyric which forms part of the work.
In respect of computer programme and ‘database’ which is included in the definition of literary
work translation can be brought in i.e., by conversion of a computer programme from one language
to another language of programming.
In Cherian v. K. Prabhakaran79, it has been held that the author of the book had the exclusive right
to publish the translation of his book and no other person has the right to translate the
complainant’s book unless he had license to that person.

Right to adapt the work: Right to make Derivative Works

Copyright Act of 1957 defines adaptations in the following manner in Section 2(a): “Adaptation”
of the work means-
(i) in relation to a dramatic work, the conversion of the work into a non-dramatic work;
(ii) in relation to a literary work or an artistic work, the conversion of the work into a dramatic
work by way of performance in public or otherwise;
(iii) in relation to a literary or dramatic work, any abridgement of the work or any version of the
work in which the story or action is conveyed wholly or mainly by means of pictures in a form
suitable for reproduction in a book, or in a newspaper, magazine or similar periodical;
(iv) in relation to a musical work, any arrangement or transcription of the work; and
(v) in relation to any work, any use of such work involving its re-arrangement or alteration;
As is obvious from this definition, an adaptation under Indian law is basically a change of format
i.e. a copyrighted work is converted from one format to another such as the conversion of a novel
into a screenplay. It does not take into account an adaptation which is created by adding a
significant amount of new material. In fact, such an adaptation would not fall within the definition
of an “adaptation” under the Indian Copyright Act. It is also necessary to point out that an
adaptation of the work is as protected as a work itself. It is considered to be an independent work.
Adaptation right is applicable to literary, dramatic, musical works and artistic works.
Examples: An image of Mickey Mouse may be adapted for use on a fabric/cloth. A song may be
adapted into a movie. Making a movie based on a novel, so in all these cases to make any
derivative work the consent of the owner is mandatorily required.

Analysis of the section through examples

(i)Definition for dramatic work is given under Section 2(h) of the Act, 1957. It reads as follows
"dramatic work" includes any piece for recitation, choreographic work or entertainment in dumb
show, the scenic arrangement or acting form of which is fixed in writing or otherwise but does not
include a cinematograph film. So cinematograph film is clearly excluded from the ambit of
dramatic work. For example a dramatic script being converted into a story book, there is
adaptation.

79
AIR 1967 Ker 234.
(ii) the word ‘literary work’ includes computer programmes, tables and compilations including
computer data bases80. Here we can give the example of converting a story into a dance form.
(iii) Abridgment can be called to be a new work and therefore original. “To constitute a true and
equitable abridgment the entire work must be preserved in its precise import and exact meaning.
The act of abridgment involves molding and transfusing a large work into a small compass, thus
rendering it less expensive and more convenient both to the time and use of the reader. Independent
labour must be apparent, and the reduction of the size of a work by copying some of its parts and
omitting others confers no title to authorship; and the result will not be an abridgment entitled to
protection. The legal sense of the word abridge is to preserve the substance, the essence of the
work, in language suited, to such a purpose-language substantially different from that of the
original. To make such an abridgment the exercise of the mind, labour, skill and judgment are
brought into play, and the result is not merely copying”.81 Digest is a good example of abridgment.
It was held that a digest of a law report is capable of copyright protection.82 Head note or marginal
note of a report is another example. It involves or requires much skill and exercise of thought to
make abridged version.
In Macmillan v. Deb83 Macmillan and Company had published a book called 'The Golden Treasury
of the Best Songs and Lyrics' which was a selection made by Professor Palgrave from the poems
of numerous English authors of various periods. This book was very popular and there were several
editions to this book. It was alleged that the defendants published a similar book containing the
same poems. In this case the Court dealt with the question whether the Court can grant a copyright
for the selection of original works?
Analysis of Case:
What the Court held in this case is: "In the case of works not original in the proper sense of the
term but composed of or compiled or prepared from materials which are open to all, the fact that
one man has produced such a work does not take away from anyone else the right to produce
another work of the same kind, and in doing so to use all the materials open to him. But it is said
that the defendant is not at liberty to use or avail himself of the labour which the plaintiff has
exerted for the purpose of producing his work, that is, in fact, it would amount to taking away a
man's labour, or, in other words, his property".
Thus, anyone can use the publicly available materials to develop new ideas or creations. In doing
new things by taking the assistance of the materials which are open to all, no question of copyright
infringement will arise. The person who has invested labour and idea to create a new thing by
taking resources available for open use will, of course, get the monopoly right over his creation.
(iv)When coming to musical work, any adaptation or arrangement of an existing musical
composition, will amount to an original musical work provided there is certain amount of labour
and skill involved in its creation. If the adaptation can be recognised by the ear of the average
person or person untrained in music as substantially the same as the original then it would amount
to infringement of the copyright.
Abridgement and compilation

80
Copyright Act 1957, Section 2(o).
81
Copinger and Skone James, On Coyright, 9th Edition, p. 53, cited with approval in Macmillan v. Cooper (1924) 40
T.L.R. 186: AIR 1924 P.C. 75.
82
Sweet v. Benning (1855) 16 CB 459.
83
I.L.R. 17 Cal. 951.
An abridgement is different from compilation. An abridgment adapts the same arrangement, and
conveys the same knowledge but in a condensed form, whereas a compilation neither adapts the
same arrangement nor conveys the same knowledge by the extract.84
Rental rights

In case of computer programme, cinematograph films and sound recordings, in addition to other
rights, there is one more right specifically attached to it i.e., right of rental. Rental rights are rights
to rent copies of work. No person other than the owner of the copyright can rent the work unless
they have a license to do so.
Initially, rental rights were not included in the Indian Copyright Act, 1957, and it was introduced
in India through an amendment in 1994 by including the term ‘hire’ in Section 14 which dealt with
the economic rights of author. Article 11 of TRIPS agreement, Article 7 of WCT (WIPO Copyright
Treaty) and Article 9 of WPPT (WIPO Performances and Phonograms Treaty) provides for
commercial rental rights for Computer programme and Cinematograph films. In accordance with
the treaties, the Indian Government (being India is a member country of WTO and WIPO)
amended the Copyright Act in 2012, included the term ‘Commercial Rental’ replacing the word
‘hire’ and the term was also defined in Section 2 (fa). It states as follows:

“Commercial rental’ does not include the rental, lease or lending of a lawfully acquired copy of
a computer programme, sound recording, visual recording or cinematograph film for non-profit
purposes by a non-profit library or non-profit educational institution”. This is a negative definition
which excludes non-profitable rental.
In India, the rental rights are provided for computer programmes, cinematograph films and sound
recordings under Section 14 (b), (d) & (e). The rights are, however, limited for commercial
purposes and expressly excludes the rental rights for non- commercial purposes.

Computer software, which are configured as an essential part of the object can only be rented by
the owner of the software85. For example, the owner can give software for rent where it is created
for merging/splitting up the files, but when software is accompanying any machine where it is not
a substantial part, the owner of the software would not be able to give it for rent under copyright
laws.

Cinematograph films can only be licensed or rented out by the producer or owner of the film
through distributor or otherwise as case may be. For instance, the theatres get the license to exhibit
the movies for public as provided under Copyright Act, 1957 and the owner of theaters are

84
Story’s Exors v. Holconbe (1847) 4 Maclean 306.
85
Copyright Act 1957. Sec. 14(b)(ii).
generally not free to make use of the same for other works like exploitation of songs, audio/video,
D.V.D. etc., as there is only temporary transfer or permission to use the movie for consideration86.

So we can say that copyright is not a single right rather it is a bundle of rights in the same work
vested with the owner of copyright. The law has kept pace with the changing times and has
accommodated a number of new things in its ambit, with the changing technology which includes
computer software and other things to cover up the technological changes. India has also risen up
to the challenge and updated its copyright law from time to time. The New Copyright
(Amendment) Bill, 2012 which was passed on 23rd May, 2012 accommodated with it a number
of changes which is appraisable. But its effectiveness can be looked upon only with the cases and
judges analysis and interpretation for that.

NEIGHBOURING RIGHTS OR RELATED RIGHTS

Neighbouring right is a facet of copyright law. Three kinds of rights neighbour upon copyright
protection. Since copyright or author's rights do not protect anything other than creations of a
human mind, certain products that have been considered valuable enough to merit protection are
excluded from author's right protection. The purpose of neighbouring rights is to serve the
protection of such products.
These are the rights of performing artists in their performances, the right of producers of
phonograms and the rights of broadcasting organizations in the radio and television programs.®
Neighbouring rights also called as related rights have emerged out of technological changes in a
context where live performances could be broadcasted. These rights are conferred to persons or
organizations taking effort to make the works available to the public. Though in the narrow sense
the term 'neighbouring rights' covers only the rights of performers, producers of phonograms and
broadcasting organizations, in a broad sense it covers the rights similar to copyright. In the broad
sense, "rights similar to but less than full copyright" are addressed to.
Neighbouring rights are nearly always rights in derivative works as they presuppose a pre-existing
work. Performers are protected if they perform the work. Phonograms are nearly recording of
works and broadcasts consist largely of performances of works.
Neighbouring rights are similar to copyright with reference to its subsistence, infringement and
remedies. The important distinction is that the initial copyright owner in the case of neighbouring
rights is in most cases a corporate body with the notable exception in the case of 'performers'
whereas the initial owner of other copyrights is usually a natural person. Similarly, the scope of
copyright is wider than the scope of neighbouring rights. The neighbouring rights encompass only
three categories of rights; reproduction right, public performance right and broadcasting rights.

86
Selvam and Selvam. “Rental Rights under Indian Copyright Laws”, Selvam and Selvam, March 2017, available at
https://selvams.com/blog/rental-rights-indian-copyright-laws/.
Rationale of protecting neighbouring rights
The primary justification for protection of neighbouring rights is that the public performer displays
certain creativity in making the work enjoyable to the public. A performance or a phonogram is as
much of an intellectual creation as a copyright work. Thus they can also easily satisfy any test of
originality which may be required for traditional copyright protection. It is also due to the
possibility of fixing the performance and its commercial exploitation using technology. In case of
sound recording and broadcasting the justification seems to be investment in converting the works
into signals and transmitting the same. It is also* due to the possibility of theft of signals and their
simultaneous transmission causing economic loss to the broadcasting organizations.
Neighbouring rights can be justified on the basis of moral right theory. In fact, the moral case is
stronger in the case of performers than in the case of authors since the performance is so intimately
connected with performers' own personality. As such he has the right to decide the terms and
conditions for the exploitation of his performance.
As in the case of copyright, the protection would provide the performers etc. an economic incentive
to perform by ensuring that they are properly rewarded for their performances.

International Legal Framework

An overview of the international legal framework on neighbouring rights reveals that initially
neighbouring rights did not fall under the scope of Berne Convention. In international law, the first
move towards neighbouring rights was made in 1928 by the Rome Revision Conference of the
Berne Convention when the Conference, although refusing to grant copyright to the performers,
as had been suggested, expressed a voeu (wish) at the end of the Conference that the members of
the Berne Convention should consider the possibility of measures intended to safeguard the rights
of performers.
It was envisaged that one convention for performers and producers of phonograms and other
convention for the broadcasting organizations should be annexed to the revised Berne Convention.
Rome Convention
As the name suggests the Rome Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organisations (1961) secures protection in performances of
performers, phonograms of producers of phonograms and broadcasts of broadcasting
organizations. It came into force on 18 August, 1964. This was the first multilateral convention
covering selected neighbouring rights.
TRIPs Agreement
One of the important obligations of World Trade Organisation (WTO) members is to protect
intellectual property, including sound recordings, under the Agreement on Trade-Related Aspects
of Intellectual Property Rights. TRIPS agreement mirrors the Rome Convention protections
against unauthorised copying of sound recordings, and provides a specific right to authorise or
prohibit commercial rental of these works.
WIPO Performances and Phonograms Treaty
In the WIPO Performances and Phonograms Treaty (WPPT) 1996, it is specifically recognized
that there shall be exclusive rights of aural performers including moral rights with reference to: •
Right of fixation of unfixed performances • Broadcasting & communication of unfixed
performances • Reproduction • Distribution • Rental • Making available to the public.
The Treaty in general deals with intellectual property rights of two kinds of beneficiaries: (i)
performers (actors, singers, musicians, etc.), and (ii) producers of phonograms (the persons or legal
entities who or which take the initiative and have the responsibility for the fixation of the sounds).
Beijing Treaty on Audiovisual Performances
The WIPO Performances and Phonograms Treaty (WPPT) 1996 does not extend protection to
performers in respect of their performances fixed in audiovisual fixations. Hence, Beijing Treaty
on 56 Broadcasting Reproduction Right in India Audiovisual Performances, 2012 (BTAP) tries to
develop and maintain the protection of the rights of performers in their audiovisual performances
in a manner as effective and uniform as possible.
Indian Law
Section 2(q) of the Indian copyright Act 1957 defines performance and section 2 (qq) defines who
is a performer. Performance, in relation to performer's right, means any visual or acoustic
presentation made live by one or more performers. As per section 2(qq), ‘the term performer
includes an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a person
delivering a lecture or any other person who makes a performance. A new proviso has been added
to this definition clause which states that in a cinematograph film, a person whose performance is
casual or incidental in nature and, in the normal course of practice of the industry, is not
acknowledged anywhere including the credits of the film, shall not be treated as a performer except
for the purpose of clause (b) of section 38B. Hence, among film actors, only those performers
credited in cinematograph films would be entitled to the performer's right. However, all performers
in cinematograph films, whether or not credited are granted the right under section 38 B, the moral
rights of performers. This provision removes from the definition of performers a category of
incidental performers in films, popularly called 'extras' in Indian cinema.
The definition clause itself brought about another change with respect to the performers right by
expanding the definition of the term communication to the public. The amended section 2 (ff)
covers both works and performances within its am bit. Thus the rights of communication to public
limited to authors by 1994 amendment have been extended to performers by the 2012 amendment.
Before the 2012 amendment, the definition covered communication to the public in whatever
manner, including communication through satellite. The right of communication to public which
is essential to protect the work on the Internet has now been extended to performances as well.
Chapter VIII of the Copyright Act, 1957 deals with the rights of broadcasting organisations and
of performers.
Section 37 deals with broadcast reproduction rights:
(1) Every broadcasting organisation shall have a special right to be known as “broadcast
reproduction right” in respect of its broadcasts.
(2) The broadcast reproduction right shall subsist until twenty-five years from the beginning of
the calendar year next following the year in which the broadcast is made.
(3) During the continuance of a broadcast reproduction right in relation to any broadcast, any
person who, without the licence of the owner of the right does any of the following acts of the
broadcast or any substantial part thereof,—
(a) Re-broadcasts the broadcast; or
(b) Causes the broadcast to be heard or seen by the public on payment of any charges; or
(c) Makes any sound recording or visual recording of the broadcast; or
(d) Makes any reproduction of such sound recording or visual recording where such initial
recording was done without licence or, where it was licensed, for any purpose not
envisaged by such licence; or
(e) Sells or gives on commercial rental or offer for sale or for such rental, any such sound
recording or visual recording referred to in clause (c) or clause (d),
shall, subject to the provisions of section 39, be deemed to have infringed the broadcast
reproduction right.

“Broadcast” has been defined under Sec. 2(dd) of the Copyright Act, 1957 as follows:
(dd) “broadcast” means communication to the public by any means of wireless diffusion, whether
in any one or more of the forms of signs, sounds or visual images; or by wire, and includes a re-
broadcast;
Further, “communication to the public” has been defined under Sec.2 (ff) of the Copyright Act,
1957 as follows:
(ff) “communication to the public” means making any work or performance available for being
seen or heard or otherwise enjoyed by the public directly or by any means of display or diffusion
other than by issuing physical copies of it, whether simultaneously or at places and times chosen
individually, regardless of whether any member of the public actually sees, hears or otherwise
enjoys the work or performance so made available.
Section 38 states that where any performer appears or engages in any performance, he shall have
a special right to be known as the performer's right in relation to such performance. The performer's
right subsists until fifty years from the beginning of the calendar year next following the year in
which the performance is made.
2012 amendment has restructured the performers' rights. A new section 38A has been inserted to
confer affirmative and exclusive right to performers. Under the new Act the performers have right
to do or authorize the doing of the following acts, namely;
● to make a sound recording or a visual recording of the performance or to certain acts in
respect of such recording;
● to reproduce it in any material form including the storing of it in any medium by electronic
or any other means;
● to issue copies of it to the public not being copies already in circulation;
● to communicate it to the public;
 ● to sell or give on commercial rental or offer for sale or for commercial rental, any copy of
the recording and;
● to broadcast or communicate the performance to the public except w here the performance
is already a broad cast performance.
These amendments thus make the Indian copyright law compatible with the WPPT. Section 38A
(2) states that once a performer has, by written agreement, consented to the incorporation of his
performance in a cinematograph film he shall not, in the absence of any contract to the contrary,
object to the enjoyment by the producer of the film of the performer's right in the same film.
However, the new Act enables the performers to earn continued royalties in case of m of the
performances for commercial use.
One of the most important changes introduced by, the 2012 amendment is the conferment of m
oral rights to performers by inserting section 38 B. In Neha Bhasin v. Anand Raj Anand which
was decided prior to 2012 amendment it was questioned whether performer is entitled to protection
of her moral rights based on principles of equity and common law? In this case, by layering of the
sound using software the performer was used as a back-up vocalist. Since more layers included
other singers, others were mentioned as lead singers and not the plaintiff. The court stated that
commercial aspiration as the reasoning to it to propound moral right of the performer - granted the
performers moral right in equity since the current version of the Act does not provide for it.
However, the 2012 amendment settles the matter forever by making provisions for moral right for
performers in the statute itself. It is interesting to note that though the 1994 amendment uses the
term 'special rights' in respect of authors under section 57, the new amendment uses the term 'moral
rights' in respect of performers instead of special rights. Section 38B reads as under:
The performer of a performance shall, independently of his right after assignment, either wholly
or partially, have the right,—
(a) to claim to be identified as the performer of his performance except where omission is
dictated by the manner of the use of the performance; and
(b) to restrain or claim damages in respect of any distortion, mutilation or other modification
of his performance that would be prejudicial to his reputation.
The explanation to this section clarifies that mere removal of any portion of a performance for the
purpose of editing, or to fit the recording within a limited duration, or any other modification
required for purely technical reasons shall not be deemed to be prejudicial to the performers'
reputation. Sections 39 and 39A providing for fair dealing and applicability of certain other
provisions in the Copyright Act, 1957 respectively are commonly applicable to performers and
broadcasting organizations.

MORAL RIGHTS

The Author’s Special Rights otherwise called moral rights or droit moral are rights that are parallel
to and independent of the author’s economic rights. The moral rights doctrine or droit moral
developed within the continental civil law tradition in France and elsewhere in Europe during the
early 19th century. The first French codification of moral rights doctrine reflected the dualist theory
which influenced by the writings of Hegel, argued that authors had two distinct interests in their
works; (1.) personal and (2) economic. Each of these interests was protected by a legally distinct
set of rights. French law provide protection to several categories of moral rights i.e., right of
attribution (author to be acknowledged as the creator of the work), right of integrity, right of
divulgation (author’s right to determine the circumstances in which his work is first presented to
the public), withdrawal and modification right87. The Berne Convention in Article 6 bis directs the
member states to protect the moral rights of authors which includes (i) the paternity right i.e., the
right to claim authorship of work and (ii) the integrity rights i.e., the right to protect his honor and
reputation. The right to integrity permits the author to restrain or claim damages in the event of
any distortion, mutilation, modification or any other untoward act done to his work. The right of
integrity has been called “the most important moral right.” The notion of the right to integrity is
that since “the work of art is an expression of the artist’s personality so distortion, dismemberment
or misrepresentation of the work mistreats an expression of the artist’s personality, affects his
artistic identity, personality and honor, and thus impairs a legally protected personality interest.”

The right provides authors with a right to “prohibit modifications of their works without their
consent” regardless of whether “the modification would negatively impact or objectively improve
the work.88”

It is necessary to mention that moral rights are inalienable rights. It is attached with the author of
the work.

According to David Bainbrige, there are four rights within the moral right designation, being

1) the right to be identified as the author of a work or director of a film, the ‘paternity right’
2) the right of an author of a work or director of a film to object to derogatory treatment of
that work or film, the ‘integrity right’
3) a general right, that every person has, not to have a work falsely attributed to him.
4) The commissioner’s right of privacy in respect of a photograph or film made for private
and domestic purposes.89

Under Indian Copyright Act, 1947 Moral Rights finds expression in Section 5790, which is in
accordance with Article 6bis of the Berne Convention. Though initially intended to protect only

87
Dane S. Ciolino, “Moral Rights and Real Obligations: A Property –Law Framework for the Protection of Authors’
Moral Rights”, Vol.69, Hein Online, 1994-1995, pp. 936 – 956, at p.941 , available at https://daneciolino.com/wp-
content/uploads/2013/07/Moral-Rights-and-Real-Obligations.pdf (accessed on 25.09.2017).
88
Nidhi Kumari, “Moral Rights of Author”, 2015, available at https://www.lawctopus.com/academike/moral-rights-
author/.
89
David Bainbridge, Intellectual Property, Pearson Education, London, (5th edn., 2002), p.97.
90
Copyright Act 1947, Section 57 – the author of the work has the right: (a) to claim authorship of the work and (b)
to restrain or claim damages in respect of any distortion, mutilation, modification or other act in relation to the said
literary works, the concept of moral rights was later extended to artistic, musical, dramatic and
cinematograph films as well.

CASE LAWS

Moral rights of authors: - Initially Section 57 was only applicable to literary works, thus leaving
authors of other works with no protection. But in Mannubhandari v. Kala Vikas Pictures91this
position was corrected and the amplitude of Section 57 was widened and thereby included other
works (audio-visual) also.

In this case Plaintiff, author of a novel ‘Aapka bunty’ assigned filming rights to the defendant who
in turn produced the film Samay ka dhara. On seeing the film author felt that the original novel
was mutilated. He filed a suit under Section 57 seeking permanent injunction restraining the
defendant from exhibiting and screening this film. Single Judge of Delhi High Court refused
injunction saying that there was contract between plaintiff and defendant with regard to filming
the novel with modifications. On appeal before Division Bench, the Court said that eventhough
modification was permitted, if it was in the nature of a distortion/ mutilation of author’s work that
would be against the spirit of this provision. Therefore considering the constraints of the medium
in which it was reproduced suggested a few changes in the film.

Two principles may be culled out from the court’s observations of the matter:

1. Moral rights are inalienable rights under the Act.

2. Modifications under Section 57 (a) (a) must be read ejusdem generis with the terms
‘distortion’ and ‘mutilation’ appearing in the same provision.

3 Idiots Controversy

3 Idiots is a film (2009) based on the novel named ‘Five Point Someone’ (2004) written by Chetan
Bhagat. Issue involved in this case was Chetan Bhagat failed to get due recognition in the credits
of movie along with alleged mutilation of the original work. It is affirmed that Bhagat had allowed
and thereby give permission to the director of the film, Rajkumar Hirani to make the film based
on his novel. But the understanding was that 2.5% of his book will only be taken for the film,
though in reality movie comprised 70% of the book’s subject matter. Chetan Bhagat, the author of
the original work claimed prominent acknowledgment of his authorship during the display of the
opening credits. But what happened was that his name was shown in the closing credits and that
too in small font. The director however dismissed Chetan’s assertion saying that Bhagat’s

work which is done before the expiration of the term of copyright if such distortion, mutilation, modification or other
act would be prejudicial to his honor or reputation.
91
AIR 1987 Del 13.
economic rights as the copyright owner had been taken care of, pursuant to the contract entered
between him and the producer. So claim on morality of copyright was rendered a nullity. Parties
were on the verge of legal action but got settled out of court92.

This case gained importance because of the fact that author’s moral rights are independent from
the contractual terms and therefore need adequate protection.

There was also another similar case wherein a movie called ‘Hello’ based on the novel ‘One night
at the Call Center’ again written by Chetan Bhagat, wherein the same issue had popped up i.e.,
author had not been given due recognition in the opening credits of the film and also not in big
font.

Do author’s moral rights remain after assignment of copyright? Yes. Moral rights are
independent of the author’s copyright and remains with him even after assignment of
copyright.

Moral rights of artists: - in Amar Nath Seghal v. Union of India93, the Delhi High Court dealt with
the moral rights of artists under Section 57 of the Act. In the instant case Amar Nath Saigal
(plaintiff) allowed a bronze mural sculpture manifesting itself having 140 feet span and 40 feet
sweep to be kept on the walls of Vigyan Bhavan, New Delhi, on the request of the Central Public
Works department, in 1957. According to the artist, the mural acquired the status of a national
treasure, representing the essential part of Indian art heritage. Later on, mural was put in the
godown of the Government of India. The request of the artist to restore the mural to its original
place in Vigyan Bhavan fell on deaf ears. Aggrieved by the same, he approached the Delhi High
Court by filing a suit contending that his special rights under Section 57 of the Copyright Act,
1957 were violated by the Government which only acquired the copyright in the work. The issue
here was whether the plaintiff had rights under Section 57 of the Act even when the work had
admittedly vested in the Government of India, which had duly paid the Plaintiff. The Delhi High
Court speaking through Justice Pradeep Nandrajog, delivered a landmark Judgment in this case by
holding that, whatever be its form today, the mural is too precious to be reduced to be scrap and
dumped in the warehouse of the Government. While holding that the Plaintiff/ artists moral rights
are violated by the Government action, the court ordered the return of the broken – down mural to
the artist and also directed that he be compensated with a sum of Rs. 5 Lakhs as damages.

The main takeaway from this case is that despite the transfer or sale of a copyrighted work from
the creator to another person, all the rights of the creator do not get extinguished. The creator still
retains his/her moral rights that can be enforced when the need be.

92
Arunabha Banerjee and Aniket Deepak Agarwal, “Morality of Copyright- A Critique in view of the ‘3 Idiots’
Controversy”, Journal of Intellectual Property Rights, Vol.16 (2011), pp.394-401.
93
2005 (30) PTC 253 (Del.).
But this case can raise a question in the minds of the reader that if every author was allowed a
compensation and restoration of his work because of violation of moral right, then it can create a
huge confusion. In this it is to be noted that the painting was removed as part of renovation and it
is essential that new works need to come and recognized in the walls. If the old artists pictures
were necessary to be hanged on then how can new artists paintings can be exhibited. For this
question we can place reliance on the Explanation given to Section 57. It is read as follows “failure
to display a work or to display it to the satisfaction of the author shall not be deemed to be an
infringement of the rights conferred by this section.

Where there is an agreement between the author of a book and the producer to produce a television
series; and subsequently the government has proposed to fund the venture in return of which the
producer assigned copyright in the serial to the Government; any subsequent telecast of the serial
by changing its name; and without living credit to the producer, director cameraman and editor;
would amount to infringement of special rights of the author.94

Moral rights of the performer

It’s the moral rights attributed to the performers. Section 38B of the Copyright Act discusses
Moral Rights of the Performer.

Right of licensee
In a case Bombay High Court held that so long as an exclusive license is in force, no person and
even the owner of the work can be allowed to do any act so as to infringe the copyright of the
person who is an exclusive licensee. Section 57 does not affect the rights or remedies available to
the exclusive licensee to proceed even against an owner / author of the work.95

OWNERSHIP UNDER COPYRIGHT LAW

OR
OWNER AND AUTHOR UNDER COPYRIGHT

At the heart of the copyright system is the author of a creative work. The Berne Convention,
establishing a union to protect literary and artistic works, recognizes by virtue of Article 1 that the
rights being protected through copyright law are the rights of authors. Authors are the first
beneficiaries of rights under the law and provide a reference point as to how long rights over the
work should exist. However, authors are not identified with as much precision as the rights
protected under law and this may be because of the divergences in national law on some aspects
of authorship after the Convention was promulgated.

94
Arun Chadha v. OCA Producitons Pvt Ltd . 2013 (53) PTC 401 (Del.).
95
Shringar Cinemas Ltd. v. Bharat Baba Prouctions Pvt. Ltd. 2008 (38) PTC 636 (Bom.).
Copyright protection is given for a work having originality, i.e. it should be from the author and
must have minimum degree of creativity. So it is the author who is the real creator of the work
thereby first owner of the copyright and Indian law recognizes author as the first owner of the
copyright. But by the term ‘ownership’ it means it includes not only the author, but also assignee
and can even a legal entity even though not defined in the Act. In Berne convention the term
Author is not defined, instead it says the person under whose name the work is disclosed, which
implies that it is not necessary that always the author should be the owner. However Indian
copyright Act defines the tern ‘Author ‘with respect to various works, but still leaves some
problems. It becomes more complex in the context of changing technologies, i.e. cinematographic
works, sound recording, broadcasting etc. which is a combination of different works, also when
author does the work in the course of employment.

Ownership of Copyright in India

The provisions of acquiring copyright ownership are defined under Section 17 of the Act.
According to which, the first owner of copyright is defined as under:

Subject to the provisions of this Act, the author of a work shall be the owner of copyright therein.
Section 17 statutorily recognizes the author of the work to be the first owner of the copyright. The
author is defined under the Act for various works, which come under the law of copyright.

Section 2(d) defines author, it says “Author” means, –

(1) In relation to a literary or dramatic work, the author of the work;

(2) In relation to a music work, the composer;

(3) In relation to artistic work other than a photograph, the artist;

(4) In relation to photograph, the person taking the photograph, the artist;

(5) In relation to a cinematograph film or sound recording, the producer; and

(6) In relation to any literary, dramatic, musical or artistic work which is computer- generated, the
person who causes the work to be created.

However, this provision is subject to certain exceptions.

For instance Section17 (a) provides that where a work is made by the author in the course of his
employment by the proprietor of a newspaper, magazine or a periodical under a contract of service
or apprenticeship for the purpose of publication in a newspaper, magazine or periodical, the said
proprietor, in the absence of any agreement to the contrary will be the first owner of the copyright
in the work in so far as it relates to the publication of the work in any newspaper, magazine or
similar periodical or to the publication of the work for the purpose of being so published. Except
in such cases, the author will be the first owner of the copyright in the work

Section 17(b) provides that where a photograph is taken or a painting or a portrait drawn, or an
engraving or a cinematograph film made, for valuable consideration at the instance of any person,
such person, in the absence of any agreement to the contrary, shall, be the first owner of the
copyright therein.

Section 17 (c) provides that in the case of work made in course of the author’s employment under
a contract of service or apprenticeship, to which clause (a) or clause (b) does not apply, the
employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright
therein. An author may create a work independently, or he may create a work under a contract of
service or contract for service.

Section 17 (cc) provides that where any person has delivered any address or speech in public, that
person will be the first owner of copyright. If the address or speech is delivered on behalf of any
other person, such other person will be the owner of the copyright therein.

Section 17(d) provides that in case of government work, the government is the owner of the
copyright in the absence of an agreement to the contrary.

Section 17(dd) provides that in case of a work made or first published by or under the direction or
control of any public undertaking, such public undertaking shall, in the absence of any agreement
to the contrary, be the first owner of the copyright therein.

Section 17(e) provides that when a work is considered to be a work of certain international
organizations under the provisions of Section 41 (deals with provisions as to works of certain
international organizations), in such cases the international organization concerned shall be the
first owner of the copyright therein.

Conflict of Ownership in the Commissioned Work

Gee Pee Film Pvt Ltd v. Pratik Chowdhary and others96, when the work is a combination of
different works e.g. Cinematographic works sound recordings etc. The lack of clarity in the
definition of “producer” became a mooted point. Such a question came before the court, where the
question was by taking the financial responsibility of sound recording whether one will fall under
the definition of ‘producer’. Even though the plaintiff paid all the expenses of recording including
hire charges of studio and remuneration of musicians, the Calcutta High Court said, this case
belonged to the concept of contract for services, where court held that under section 17 (b) of
copyright act, the only instances where copyright gets lost is when someone comes under

96
(2002) 1 CTMR 40
photography, paintings and etc. where defendants who composed the Bengali song, did not come
under these categories and also the court rejected the other contention of the plaintiff, regarding
plaintiff being a producer. The Court said, in order to be a producer, a person must take the
initiative as well as responsibility of the sound recording, Court said “if a person bears all expenses
for recording and keep the master tape thereof, such facts do not imply that he has also taken
responsibility of the recordings and thus can’t be held as producer. The word “responsibility”
appearing in section 2(uu) of the act, does not refer to financial responsibility, but means
consequential “legal responsibility”

Conflict of Ownership in Joint Authorship

The creator of the work can also be joint authors, but dilemma lies in determining the criteria for
joint authorship. S. 2(z) of the Copyright Act defines work of joint authorship. Such an issue came
before the court in Najma Heptulla v.Orient longmanLtd97., the question before the Court was
whether a person who gives form to the narration will become the joint author of the book India
Wins freedom’. Even though the work was composed by Humayun Kabir (close associate of
Maulana Azad) the material for the book was supplied by the Azad with a clear understanding that
kabir will describe those thoughts and conversations and write the same in English language and
Kabir’s function was only to record Azad’s findings and not to let his views colour the narrative
. The preface itself shows it is the Azad who decided as to which 30 pages of the book were not to
be publish and which of his views should be contain in his book and read every word of manuscript
and made alterations additions, omissions and correction.

Court concluded that the work India Wins Freedom was the product of the active and close
intellectual collaboration between Mulana Azad and Humayun Kabir in pursuance of pre-
concerted joint design between the two that Azad would contribute the material for the book, and
kabir will write the same in English. Such a work could neither be regarded as sole creation of
either one of them, but as the work of Joint Authorship. However no specific criteria was laid down
by the court to determine what amount to active and close intellectual collaboration to determine
join authorship. It raises an interesting question whether a person who has not himself put pen to
paper but someone else has done that effectively writing what the first person had created can
become a joint author. Or mere recording a narration makes him a joint author.

In order to decide the ownership of copyright when the author does the work at the instance of any
person for valuable consideration, or in the case of the course of employment under contract of
service faces some complexity and what amounts to contact of service also depends on facts of
each case & judiciary has laid down different tests to determine it. An author may create a work
independently, or he may create a work under a contract of service or contract for service

97
AIR 1989 Delhi 63
That brings us to the controversy surrounding the Contract of Service and Contract for Services in
Copyright law. The law distinguishes between these two terms and hence not every contract under
which one works for another or provides services for another is a contract of service. The existence
of direct control by employer, the amount of independence on the part of the person who renders
services, and the place where service is rendered are all matters to be considered in determining
whether there is contract of service.

In the case of V.T Thomas v. Malayala Manorama 98, where the question before the court was after
termination of employment of employee (Tom) from Manorama regarding the future work of Tom
manorama can claim authorship, it was held that in the case of termination of the employment, the
employee is entitled to the ownership of copyright in the works created subsequently and the
former employer has no copyright over the subsequent work so created.

After his termination of employment from Manorama Tom is the author of the work he is free to
draw the cartoons and Manorama has no right to restrain him from drawing the cartoon.. Here the
interesting question is that if the Manorama contented that they are the owner of the cartoons then
is it possible for them to restrain Tom to use such characters. If the cartoon is developed during
the course of employment whether the author can use it after his termination from employment.
The Court in the end concluded that cartoon characters were developed by the author in 1957
which entitle him to copyrights.

In University of London Press Ltd v. University Tutorial Press Ltd. 99the examiner was free to
prepare his questions at his convenience so long as they were ready by the appointment for the
examinations, and it was left to his skill the syllabus, the book work, and the standard of knowledge
to be expected at the matriculation examination, and in view of this aspect of matter, the examiner
was not acting under the contract of service but contract for service. In that case the element of
control was considered important in deciding whether or not the authors of certain examination
papers, who were not on the staff of the University of London, were employed under contract of
service. The Court answered in the negative.

Where a man employs another to do work for him under his control, so that he can direct the time
when the work shall be done the means to be adopted to bring about the end, and the method in
which the work shall be arrived on, then the contract is contract of service, copyright vest in the
employer. If, on the other hand, a man employs another to do certain work but leaves it to that
other to decide how that works shall be done. What step shall be taken to produce that desired
effect, and then it is a contract for service. In such cases a copyright vests in him and not the
employer.

98
AIR 1989 Ker 49.
99
[1916] 2 Ch 601
The present day approach should be to abandon the search for a single test, and instead to take a
multiple or ‘ pragmatic ‘ approach, weighing upon all the factors for and against a contract of
employment and determining on which side the scales eventually settle.

Conflict of Authorship in Cinematographic Film

Generally, the author of cinematographic film is the first owner of the copyright in such film, but
conflict can arise when the producer of particular film and composer of songs, those songs which
are later used in that film. In case IPRS v. Eastern India Motion Pictures100, The question before
the court was whether the producer of a cinematography film can defeat the rights of composer of
music or lyrist and the court held that u/s17(b) there is automatic transfer of all rights of the author.
Therefore, the producer is the owner of musical or sound recording the producer can defeat right
of the composer of music or lyrist. The producer is getting the right to incorporate literary or
musical work in the cinematographic film. So once the literary or musical work of the composer
or lyrist is incorporated in cinematographic film i.e., right u/s. 14(a)(iv) is transferred to the
producer but the other rights of author on musical and literal work still rest upon composer or
lyrist.

FAIR USE OF COPYRIGHT

The doctrine of fair use or fair dealing is an integral part of copyright law. It permits the
contours of reproduction of the copyrighted work without the threat of infringement.
The doctrine of fair use was developed over the years were courts tried to balance the rights
of copyright owners with society's interest in allowing copying in certain, 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.
The defense of "fair dealing" initially originated and emanated as a doctrine of equity which
allows the use of certain copyrightable works, which would otherwise have been prohibited and
would have amounted to infringement of copyright. The main idea behind this doctrine is to
prevent the stagnation of the growth of creativity for whose progress the law has been designed.
This doctrine which draws a line between a legitimate, bonafide fair use of a work from a
malafide blatant copy of the work is one of the most important aspects of Copyright Law. This is
the reason why this doctrine was explicitly enshrined in Article 13 of the TRIPS (Trade Related
Aspects of Intellectual Property Rights) which runs as follows- "Members shall 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". As we all know, all the member countries of WTO are obliged to comply with the Berne
Convention on Copyright as well as the articles of TRIPS. Consequently, this doctrine has been
given place in almost all the Territorial Copyright legislations of the member countries. However,

100
1977 AIR 1443, 1977 SCR (3) 206
there still remains a difference if the individual laws of fair dealing enacted in different countries
are compared. While some of the legislations are keeping a rigid approach, the others have kept
their doors open to embrace any new act which can be treated as fair dealing. The Indian and UK
copyright laws regarding fair dealing are often characterized as very limited and restrictive as they
work in accordance with an exhaustive list of actions which come under the scope of fair dealing.
Whereas the US laws of "fair use" provide a wide and open ambit for the fair users of a copyright
work. While on one hand the Indian and UK laws of fair dealing work strictly within the framework
of the enlisted actions which constitute fair dealing, the American laws of fair use is open for
interpretation and works with the help of only certain guideline factors which help in determining
the extent of "fairness" involved in the work.
With the passage of time, India has gone through tremendous technological ameliorations
but still procures a very limited scope in the law of fair dealing. But if we look towards the west,
continuous advancements through innovative interpretations and judicial activism have been
introduced in this field.
US’s Doctrine of fair use
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.

Fair use doctrine was a judicially created doctrine and owes its origins to the famous 1841 case
of Folsom v. Marsh101, 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."

Fair dealing laws vis-à-vis India

The laws relating to fair dealing have been incorporated in Section 52 of The Copyrights
Act, 1957. As the Indian Copyright Act does not defines the term "fair dealing" , the courts have

101
9 F Cas 342 (1841).
on various occasions referred to the authority English case Hubbard v Vosper102 on the subject
matter. The words of Lord Denning in this case lay down a much descriptive outline of fair dealing-

"It is impossible to define what is "fair dealing". It must be a question of degree. You must
first consider the number and extent of the quotations and extracts.... then you must consider the
use made of them....Next, you must consider the proportions...other considerations may come into
mind also. But, after all is said and done, it is a matter of impression."

Folsom v. Marsh103 case has also been referred to by the Indian Courts for this matter. In the case
of Civic Chandran v. Ammini Amma104, 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 doctrine105.

The Indian laws related to "fair dealing" is always considered rigid and conventional as it provides
an exhaustive list and any use falling out of the statutory list is considered as an act of infringement.
This is when compared to the US system were the provision is little more relaxed.

But apparently, the Indian courts have also started analyzing in a different manner. The best
example of this development is the case of (INDIA TV) INDEPENDENT NEWS SERVICES Pvt.

102
(1972) 1 All ER 1023 p.1027.
103
9 F Cas 342 (1841).
104
1996 PTC 670 (Ker HC) 675-677.
105
1.)Purpose of use : Use of copyrighted material for the purpose of criticism or review of another work or its
performance or reporting current events, does not amount to infringement. (However, it should be accompanied by an
acknowledgement).
2.)Nature of work : This refers to the characteristics of the work that has been used. If a major part or essential feature
of the work has been used, it amounts to infringement. But if only few features of the work are used which does not
affect the original, it does not amount to infringement. It should also be taken into consideration whether the work is
published or unpublished, and whether circulated or not in case of an unpublished work.
3.) Amount of work : Both the quality and quantity of the copyrighted work used have to be considered to measure
whether it has been copied. Even if only a small portion is copied, and it is a substantial part of the work, it is
infringement. For instance, to take a long extract and attach short comments may be unfair; but to take short extracts
and attach long comments may be fair.
4.) Effect of Work : The fourth factor measures the effect that the allegedly infringing use has had on the copyright
owner's ability to exploit his original work. The court not only investigates whether the defendant's specific use of the
work has significantly harmed the copyright owner's market, but also whether such uses in general, if widespread,
would harm the potential market of the original.
Ltd vs YASHRAJ FILMS PRIVATE LIMITED & SUPER CASSETTES LTD VS.106, where one of
the various grounds of dispute was that the defendants "India TV" broadcasted a TV show wherein
a documentary is shown on the life of singers and they perform their own songs. While the singer
sings, clips of scenes from the movies are shown in the background. The plaintiffs claimed that
such acts of the defendants amounted to infringement of their copyright. However, the defendants
claimed that such use of the plaintiff's copyrighted material constituted fair dealing within the
meanings of section 52 of The Copyrights Act. The Delhi High Court in its judgment restrained
the defendants from distributing, broadcasting or otherwise publishing or in any other way
exploiting any cinematograph film, sound recordings or part thereof that is owned by the plaintiff.
However, if we look at the present case from a slightly different perspective, there are certain
questions which still remain unanswered. In a critical view the argument of the counsel for
defendant stating that "the singer who has recorded a song which has gone on to become a hit has
a sense of ownership over such a song, and that it would be very unreasonable-to the point of being
unfair and cruel to the said singer, to say that he/she cannot sing the said song in a TV or other
interactive program in front of an audience, only because the copyright in the underlying literary
and musical works resides in some other person(s)" also withholds a valid point. But since such
use does not come within the exhaustive list provided under section 52 of the act, they were
deprived of any remedy in the fair dealing laws.

But, after a long litigation saga, in the appeal from the above order, the Hon'ble bench of the Delhi
High Court also felt the need of a diversion from the conventional approach and thus the decision
of the single judge was set aside and the restrictions thus imposed were accordingly removed.
However, the Appellants were still prohibited from displaying any cinematographic films without
permission.

It was through the Copyright (Amendment) Act, 2012 that fair dealing as a concept brought within
its scope musical recordings and cinematograph films.
Through this case the Indian legal system made advancement in the field of fair dealing under
Copyright by overlooking the rigid and conventional approach and implementing the necessary
changes.

In The Chancellor, Masters and Scholars of the University of Oxford v. Rameshwari Photocopy
Services107 a complaint had been filed against a photocopy shop and Delhi University by Big
publishing houses. The defendants (i.e. Rameshwari photocopy shop and Delhi University) were
accused by the plaintiffs that they regularly compile up the data from copyrighted books published
under their publication and provide it to the students in Delhi University. In 2012, publishers
like Oxford University Press, Cambridge University Press United Kingdom, Cambridge
University Press India Pvt. Ltd., Taylor & Francis Group, United Kingdom and Taylor & Francis

106
FAO (OS) 583/2011
107
CS (OS) 2439/2012, I.As. No. 14632/2012
Books India Pvt. Ltd. accused the above mentioned defendants for “infringing the copyrights of
their publications materials by photocopying, reproduction and distribution on a large scale and
circulating among the students and teachers of the university”. The publishers sought to restrain
the photocopy shop from supplying photocopied course packs to students as it was violating
the Indian Copyright Act, 1957 and asked for compensation

Court held that “making course packs for suggested reading for students by photocopying portions
of various prescribed reference books does not violate the copyright of the publishers. Court
observed “Copyright, especially in literary works, is thus not an inevitable, divine, or natural right
that confers on authors the absolute ownership of their creations”. The 94 pages landmark IP ruling
banked on the observation that Section 52(1) (i) of the Copyright Act is wider enough to include
the acts of photocopying and the creation of course packs by University for its students.

In India the provisions of Section 52 of the Copyright Act, 1957 provide for certain acts, which
would not constitute an infringement of copyright namely fair dealing with a literary, dramatic,
musical or artistic work not being a computer program for the purposes of-

● private use, including research;

● criticism or review ,

● reporting current events in any print media or

● by broadcast or in a cinematographic film or by means of photographs,

● reproduction for the purpose of a judicial proceeding or of a report of a judicial

proceeding;

● reproduction or publication of a literary, dramatic, musical or artistic work in any work

prepared by the Secretariat of a Legislature or, where the Legislature consists of two
Houses, by the Secretariat of either House of the Legislature, exclusively for the use of the
members of that Legislature;

● the reproduction of any literary, dramatic or musical work in a certified copy made or
supplied in accordance with any law for the time being in force;

● reproduction of any work by a teacher or pupil in the course of instruction; or as part of

questions to be answered in an examination; or in answers to such questions;

● the reading or recitation in public of any reasonable extract from a published literary or
dramatic work;

● the publication in a collection, mainly composed of non-copyright matter, bona fide

intended for the use of educational institutions,
 ● the making of sound if made by or with the license or consent of the owner of the right in
the work etc.

RECENT DEVELOPMENTS:
Certain changes were incorporated by way of the Copyright (Amendment) Act, 2012. The existing
clause (1) (a) has been amended to provide fair dealing with any work for the purposes of private
and personal use with an exception that of a computer programme. With this amendment in force,
cinematograph and musical works also came under the ambit of the works to which the fair use
provision has been extended to. This amendment further provides for fair use of the work aimed
at the benefiting the disabled. It facilitates reproducing, issuing of copies, adapting or
communicating to the public any work in any accessible format, for disabled persons to access
works including sharing with any person with disability for private or personal use, research or for
any other educational purposes.
Conclusion
It can be safely concluded that the test to determine a copyrighted work as a Fair Use of such work
indeed differs from case to case since such facts are to be given high priority more than the law
itself. Though the legislature has attempted to make law on this concept more flexible but precise,
in the Indian scenario, section 52 of the Copyright Act, 1957 makes a legitimate stand for the
public to rely upon this provision for now. As mentioned under Article 13 of the TRIPS (Trade-
Related Aspects of Intellectual Property Rights) which reads as follows:

“Members shall 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 rights holder”.

India has been able to establish a proper ground as for now since the whole idea having an
exception as against the protection of copyright is to give rise to creativity and growth which can
be transformed and expressed in many other new ways so as to encourage people to attain such
degree of creativity with careful consideration to the original copyrighted work.

ASSIGNMENT AND LICENCE UNDER COPYRIGHT

Introduction

Copyright is a protection given to the creators of certain types of works as an acknowledgment to

their intellectual input1. The objective of copyright has always been the protection of the interest
of a creator, coupled with dissemination of knowledge. Though this protection started with the
recognition of rights of authors in their books, but modern technology has substantially changed
the nature of work and its mode of exploitation.
Economic rights allow an owner to reap economic benefits from his intellectual creations.
According to section 14 of the Copyright Act, 1957, different rights are recognised with respect to
the nature of the work. As per this section, it is the exclusive right of the owner to do or authorise
the doing of the acts provided thereunder.

The owner of copyright work can generate wealth not only by exploiting it himself but also by
sharing it with others for mutual benefits. This can be done by way of assignment or licensing of
copyright.

Assignment of Copyright (Section 18)

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 work2. 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 Production3, 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 19)

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 Jindal4, 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.

Disputes with Respect to Assignment of Copyright (Section 19A)

As per section 19(a) the Appellate Board may on the receipt of a complaint from the assignor and
on holding such inquiry as it may deem necessary, revoke such assignment, if the assignee fails to
make sufficient exercise of the rights assigned to him , and such failure is not attributable to any
act or omission of the assignor.

In case of a dispute with respect to the assignment of copyright, the Appellate Board may pass a
suitable order on receiving a complaint from the aggrieved party and after holding such inquiry as
it considers necessary including an order for the recovery of any royalty payable.

Assignment by Operation of Law (Section 20)

When the owner of a copyright dies the copyright will pass on to his personal representative as
part of the estate, provided that no will has been executed. Section 20 provides that if a person is
entitled for copyright under bequest and such work has not been published before the death of the
testator, unless contrary intention is shown under testators will or any codicil thereto, such person
shall be considered as having copyright in the work so far as testator was the owner of copyright
immediately before his death.

Right of author to relinquish copyright (Section 21)

The author of a copyrighted work has the right to relinquish all or any of the rights comprised in
the copyright. Right of relinquishment can be exercised by giving notice by giving notice in the
prescribed form to the Registrar of Copyright or by way of public notice.
On receipt of the notice, the Registrar of Copyright shall cause the notice to be published in the
Official Gazette.

However, relinquishment of right shall not affect right subsisting in favour of any person on the
date of notice.

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 30)

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 an 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:

a. Duration of license
b. The rights which have been licensed
c. Territorial extent of the licensed
d. The quantum of royalty payable
e. Terms regarding revision
f. Extension and termination

Compulsory License

Being a member of Berne Convention, India has incorporated the provision of compulsory license
in the Copyright Act, 1957. The Act provides for grant of compulsory license for Indian work in
the public interest, in certain circumstances:

Works Withheld from Public (Section 31)

The Indian Copyright Act provides for the grant of compulsory licences in work which has been
published or performed in public. It empowers the Appellate Board to direct the Registrar to grant
license, if a complaint is made to it in writing under the Act, during the subsistence of copyright
stating the necessary facts which are conditions precedent to its exercise of power, provided the
owner has been approached in the first instance for the grant of license and it is only if he has
refused to publish or allow the republication of the work and by the reason of such refusal the work
is withheld from the public. In case where two or more persons have made a complaint, the licence
shall be granted to the complainant who in the opinion of the Appellate Board would serve the
interest of the general public.

An essential case concerning compulsory licensing is Super Cassette Industries Ltd. v.

Entertainment Network (India) Ltd.5. In this case, Radio Mirchi was playing music, and Super
Cassette Industries held the rights of it. The music company filed for a permanent injunction. While
the suit was pending, the FM operators applied to the Appellate Board for the grant of a compulsory
license under Section 31(1)(b) of the Copyright Act. The question that arose here was whether in
such a particular circumstance, granting of a compulsory license was viable. The broadcasters, i.e.,
Radio Mirchi, argued that since a license had already been granted to AIR and Radio City, there
were no grounds on which a license to Radio Mirchi should be denied. The Court held that since
a compulsory license can be granted on grounds stated in Section 31A of the Copyright Act, i.e.,
only when access to the work has been denied to the public. In this case, the license had already
been granted to AIR and Radio City. Therefore, it was not barred to public access. Court said
Compulsory licence need not be issued to all who apply and ready to pay fee. Thus, the argument
of Radio Mirchi holds no water, and they were liable for infringement of copyright.

Compulsory License in Unpublished or Published Work (Section 31-A)

According to this section, where the author is dead or unknown or cannot be traced , or the owner
of the copyright in such work cannot be found, any person may apply to the Appellate Board for a
licence to publish such work or translation thereof in any language.

Before making such an application, the applicant should publish his proposal in one issue of a
daily newspaper in that language. The application to the Appellate Board should be in the
prescribed form and accompanied by the prescribed fee and with the copy of advertisement issued.

The Appellate Board after making the certain prescribed enquires direct the Registrar of Copyright
to grant license to the applicant to publish the work or its translation subject to the payment of
royalty and other conditions.

Compulsory License for the Benefit of Disabled Persons (Section 31-B)

Any person working for the benefit of persons with disability on a profit basis or for business may
apply in prescribed manner to the Appellate Board for a compulsory licence to publish any work
in which copyright subsists for the benefit of such persons. However, where a compulsory licence
has been issued, the Appellate Board may on a further application and after giving reasonable
opportunity to the owners of the rights, extend the period of compulsory licence and allow the
issue of more copies as it deems fit. 6

Statutory License for Cover Versions (Section 31-C)

Cover means a sound recording made in accordance with section 31C. Any person desirous of
making a cover version, being a sound recording in respect of any literary, dramatic or musical
work with the consent or licence of the owner of the work, can do so.

The person making the cover version is required to give prior notice to the owner of the copyright
in such works and to the Registrar of Copyright at least 15 days in advance of making the cover
version. Advance copies of all covers with which the sound recording is to be sold to be provided
or royalties to be paid in advance. One royalty in respect of such sound recordings shall be paid
for a minimum of fifty thousand copies of each work during each year. The Delhi High Court
in Star India Pvt Ltd v. Piyush Aggarwal7, stated that sound recording included a subsequent
original sound recording made from the musical and literary work and which was called a version
recording i.e. a sound recording made after a first sound recording was made by use of the musical
work and literary work.

Statutory Licensing for Broadcasting of Literary and Musical Work and Sound Recording
(Section 31-D)

Any broadcasting organization, desirous of communicating published work to the public by way
of broadcast (by way of television broadcast or radio) or a performance of any published musical/
lyrical work and sound recording, can do so by giving prior notice of this intention to the owners.
The notice must specify the duration and territorial coverage of the broadcast. Corresponding
royalties are required to be paid to the owner of copyrighted work. Rates of television broadcasting
are different from the rate fixed with respect to radio broadcasting. At the time of fixing the rate
of royalty the Appellate Board may ask the broadcasting organisation to deposit some amount of
money in advance to the owner.

License to Produce and Publish Translation of Literary or Dramatic Work in any Language
(Section 32)

Section 32 of the Copyright Act provides that after expiry of a period of seven years from the first
publication of a literary or dramatic work, any person may apply to the Appellate Board for a
license to produce and publish a translation of work. Where the work is not Indian work, any
person may apply to the Board for a license to produce and publish a translation in printed or
analogous form of reproduction of a literary or dramatic work in any language in general use in
India after a period of three years from the first publication of such work, if such translation is
required for the purpose of teaching, scholarship or research. But where translation is in a language
not in general use in any developed country, such application may be made after the period of one
year from such publication.

License to Reproduce and Publish Works for Certain Purposes (Section 32-A)

According to this section, any person may apply to the Appellate Board for a license to reproduce
and publish any literary, scientific or artistic work after the expiration of the relevant period from
the date of first publication of an edition of such work, if the copies of such edition are not made
available in India , or such copies have not been put on sale in India for a period of six months to
the general public or in connection with systematically instructional activities at a price reasonably
related to that normally charged in India for comparable works by the owner of the right of
reproduction or by any person authorised by him in this behalf.

The period prescribed are:

● Seven years for work related to fiction, poetry, drama, music or art
● Three years for works related to natural science, physical science mathematics or
technology
● Five years for any other work

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
reassign8.

As far as Compulsory License is concerned, the primary objective of compulsory licensing is to

ensure the availability of copyrighted material. The Indian Copyright Act grants protection to the
works of writers, artists, etc. so that they can benefit from the results of their hard work and
creativity. However, this comes at a price i.e.; the work should be available for access and fair
use for other individuals. There are times when copyright owners refuse to part from their work.
In such a case, in order to ensure the availability of copyrighted material to the public and free
flow of ideas and information without infringing the rights of the copyright owner, compulsory
licensing becomes a necessity.

Endnotes

1 This is known as the 'Doctrine of Sweat of the Brow', whereby a work is given copyright
protection if the author has applied 'labour, skill or judgment' in creating the work irrespective of
the level of originality in the work. Evolved from the decision in Ladbroke v William Hill, [1964]
1 All E.R. 465.

2 Section 18(2)

3 23 IPLR 388 (1998)

4 2007 (34) PTC 522 (Cal )

5 (2004) 29 PTC 8 (DEL)

6 Indian Copyright Act, 1957, Sec- 32 (B)

7 2014 (58) PTC 169 (Del)

8 Deshmukh & co (publishers) pvt ltd v/s avinash vishnu khadekar 2006 (32) PTC 358 (Bom)

INFRINGEMENT OF COPYRIGHT
Introduction
The owner of a copyright has the monopoly right to exploit his work for commercial gains in
multifarious ways. The nature of rights depends on the nature of work. If any person, without
proper authorization of the owner of the copyright, exploits his work in a manner such as
reproduction in any material form performing the work in public and communication of the work
to the public or such other form, with intention to reap monetary gain, is said to have committed
infringement of the copyright of the owner. The Copyright Act clearly defines the acts which
amount to infringement. However, the Copyright Act also permits use of copyright work in certain
manner without committing infringement. The Act also provides adequate remedies for preventing
infringement.

What is infringement (Section 51)

Infringement prima facie means unauthorized and illegal reproduction of work of others. Under
Section 51 of the Act the infringement of copyright in general sense has been explained. According
to Section 51 the copyright in a work shall be deemed to be infringed –
1) when any person without a licence from the owner of the copyright or the Registrar of
Copyright, or in contravention of the conditions of a licence granted or any conditions imposed
by a competent authority under the Act-
i.) does anything, the exclusive right of doing which is conferred upon the owner of the
copyright; or
ii.) permits for profit any place to be used for the communication of the work to the public
where such communication constitutes an infringement of the copyright in the work,
unless be was not aware and had no reasonable grounds for believing that such
communication to the public would be an infringement of copyright; or
2) where a person—
i.) makes for sale or hire, or sells or lets for hire or by way of trade displays or offers for
sale or hire any infringing copies of the work, or
ii.) distributes, either for 'the purpose of trade or to such an extent as to affect prejudicially
the owner of the copyright, any infringing copies of the work, or
iii.) exhibits to public by way of trade any infringing copies of the work, or
iv.) imports into India any infringing copies of the work except one copy of any work, for
the private and domestic use of the importer.
The explanatory note attached to Section 51 clarifies that the reproduction of a literary, dramatic,
musical or artistic work in the form of a cinematographic film shall be deemed to be an infringing
copy.

Infringing Copy [Section 2(m)]

The term "infringing copy" under Section 2(m) of the Act means-
(1) in relation to literary, dramatic, musical or artistic works, a reproduction thereof otherwise than
in the form of a cinematograph film;
(2) in relation to a cinematograph film, a copy of the film or a record embodying the recording of
any part of the sound track associated with the film;
(3) in relation to a record, any such record embodying the same recording; and
(4) in relation to a programme in which a broadcast reproduction right subsists under Section 37,
a record recording the programme.

Guidelines for Measuring Infringement

In what circumstances and instances, the infringement of copyright can be culled have been very
aptly laid down by Supreme Court in a classic case R.G. Anand v. Delux Films. They serve as
guideline propositions, therefore, they are reproduced hereunder:—
(1.) There can be n copyright in an idea, subject-matter, themes, plots or historical or legendary
facts, and violation of the copyright in such cases is confined to the form, manner and arrangement
and expression of the idea by the author of the copyright work.
(2) Where the same idea is being developed in a different manner, it is manifest that the source
being common, similarities are bound to occur. In such a case the Courts should determine whether
or not the similarities are on fundamental or substantial aspects or the mode of expression adopted
in the copyright work.
(3) One of the surest and safest test to determine whether or not there has been a violation of
copyright is to see whether a spectator or the viewer after having read or seen both the works is
clearly of the opinion and gets an unmistakable impression that the subsequent work appears to be
a copy of the original.
(4) Where the theme is the same but is presented and treated differently so that the subsequent
work becomes a completely new work, no question of violation of copyright arises.

Test of Copyright Protection: Shift from ‘Sweat of brow’ to the ‘Flavour of Creativity'
The copyright law prohibits reproduction of the original work of others, created by
employing innovative skills and labour. Any Original material/work which is capable of being
copied need protection against infringement. In determining whether the copyright subsists in a
work, whether there is infringement of copyright, the question is whether the traditional subject
matter of the work is original work of the author? The 'Sweat of the Brow' doctrine i.e. employment
of skill, labour and capita l has undergone a sea change and the 'Flavour of Creativity' has become
the deciding principle.
Under the English law of Copyright, for copyright to subsist in a work, that work must be
original. However, courts have not adopted a literal reading of this requirement. For over a hundred
years, English courts have held that a significant expenditure of skill, labour, and judgment, but
not the creativity or inventiveness, was required.
In Walter v. Lane (1900), reporters took shorthand notes of a speech, punctuated them,
etc., and published them in the Times Newspaper. The court held that the reporters were authors
of the published speech, and, as such, owned a copyright in the published speeches, because of the
considerable skill, labour, and judgment which they exercised.
In University of London Press v. University Tutorial Press, the question arose as to
whether certain mathematics exam papers were original literary works. The court held that
originality does not mean that the work must be an expression of individual thought. The simple
fact that the authors drew on a body of knowledge which was common to mathematicians did not
compromise originality. The requirement of originality, it was held, does not require that
expression be in an original or novel form. It does, however, require that the work not be copied
from another work. It must originate from the author. As such, even though these were the same
old math problems which every student is familiar with, and even though there was r. no creative
input, the skill, labour, and judgment of the authors was sufficient as to make the papers original
literary works.
 The United States rejected this doctrine in 1991, in a Supreme Court judgment of Feist
Publications v. Rural Telephone Service, in which Feist had copied information from Rural's
telephone listings to include in its own, after Rural had refused to licence the information. Rural
had sued for copyright infringement. The Court ruled that information contained in Rural's phone
directory was not copyrightable, and that therefore no infringement existed. Prior to this case, the
subsistence of copyright in United States law followed the sweat of the brow doctrine which gave
copyright to anyone who invested significant amount of time and energy into their work. At trial
and appeal level the courts followed this doctrine, siding with Rural. The court ruled that Rural's
directory was k nothing more than an alphabetic list of all subscribers to its service, which it was
required to compile under law, and that no creative expression was involved. The fact that Rural
spent considerable time and money collecting the data was irrelevant to copyright law, and Rural'
copyright claim was dismissed.
The Indian Supreme Court has laid down the principle of 'Minimum degree of creativity'
refusing the English 'Sweat of the Brow' test. In Eastern Book Company & Ors. v. D.B. Modak
& Anr., the appellants have claimed that the copyright subsists in Supreme Court Cases (SCC) as
a law report as a whole based, cumulatively and compendiously, on all the substantial
contributions of skill, labour and capital in the creation of various parts of SCC, ie., head notes,
editorial notes, footnotes, the version of the copy-edited text of judgments, the selection of cases,
the sequence and arrangement of cases as published in SCC and the index, table of cases, etc.
which are published in each volume of SCC, that give it the SCC volumes and thereby complete
SCC set, its character as a work as a whole.
The Honorable Supreme Court held that the judicial pronouncements of the Apex Court
would be in the public domain and its reproduction or publication would not infringe the copyright.
But the ropy-edited judgments would not satisfy the copyright merely by establishing amount of
skill, labour and capital put in the inputs of the copy-edited judgments. Accordingly, original or
innovative thoughts are necessary to establish copyright in the authors work. To secure a copyright
for the judgments delivered by the court, it is necessary that the labour, skill and capital invested
should be sufficient to communicate or impart to the judgment printed in SCC some quality or
character which the original judgment does not possess and which differentiates the original
judgment from the printed one.
The Court ruled that, the inputs put in the original text by the Appellants can be called as a
work of an author. Creation of the work would obviously require extensive reading, careful study
of subject and the exercise of judgment to make paragraph which has dealt with particular aspect
of the case, and separating intermixing of a different subject has a flavour of minimum amount of
creativity.
In the case of Star Indian (Pvt.) Ltd. v. Leo Burnet India (Pvt.) Ltd, all characters of a
serial named ‘Kyunki Sas Bhi Kabhi. Bahu Thi’ made by Balaji films which was shown on Star
T.V. network appeared in the advertisement of tide detergent whose slogan was "Kyunki Bahu Bhi
Kabhi Sas Banegi". They acted in the same manner as they had acted in the said. T.V. serial Star
TN. filed a case of copyright infringement.
 However, Bombay High Court held that there is no copyright of Star T.V. because
detergent company is paying to the actors who acted in the serial and it is a free decision of the
actors to perform in the advertisement.
Secondly, idea is not a matter of copyright violation. National scene is in public domain
and no one can claim his copyright over it.
Relevant Factors
In determining the infringement the plaintiff must prove that directly or indirectly the
defendant's alleged work is taken from the work or subject-matter in which he claims copyright.
The relevant factors which need to be addressed in determining the infringement are:-
(i) copying and substantial copying;
(ii) indirect copying; and
(iii) direct evidence of copying from the work in which subsists.
These factors can better be understood by following illustration.

Copying.—A person publishes the research article of another person in his name. It is an
illustration of direct copying.
Substantial copying -A reads the book of R. He uses contents of 5 chapters of B's book in his
book verbatim. In this case there has been substantial copying. Even a small part of work used may
constitute infringement. In D. Narayan Rao v. V Prasad,(1979) the defendant had borrowed a part
of speech which was only of 21/2 minutes duration in a film of 3 hours. Yet it was held that
substantial part of speech has been copied.
In case of copying there should be established a causal connection between the original and alleged
infringed copy apart from sufficient degree of objective similarity.
Indirect copying - A work may be copied by making copy from a ire-existing copy of the same
work. If a defendant makes a two dimensional copy of the plaintiffs three dimensional architectural
plan, he is guilty of indirect copying. Similarly a play based on novel which in turn was based
upon some original play amounted to infringement of original play.
Direct evidence of copying.—Generally direct evidence of copying may not be easily available,
but the same can be derived from surrounding circumstances. Evidence of copying can be found
when the defendant's work contains the same errors, mistakes as those present in the plaintiff's
work.
Lay Observer Test.—Whether or not there has been violation of copyright is to see if the reader,
spectator or the viewer after having read or seen both the works should be clearly of the opinion
and gets an unmistakable impression that the subsequent work appears to be the copy of the first.
If the impression formed by a lay observer is so the subsequent work is an infringed work. This
test known as 'lay observer test' was applied in R. Madhavan v. S.K. Nayar(1978), in which the
Kerala High Court held that dissimilar novels do not involve infringement of copyright.
The Delhi High Court in The Chancellor Masters and Scholars of The University of
Oxford v. Narendra Publishing House, 2008, petitioner, a well-known publisher of academic
books (Oxford), contended that the defendants (Narendra Publishing House) had indulged in a
brazen word-to-word copying of the questions, in the textbooks, while Oxford stated that they had
given answers to the questions in the exercises, but had not provided detailed step-by-step process
to arrive at such answers. It was argued that the questions formed a valuable and central part of
the work, and their substantial copying amounted to violation of the Oxford's copyright. They
further stated that questions, their arrangement and selection should be considered original literary
works under the Act, and therefore, are entitled to copyright protection.
Narendra Publishing contended that the present issue was one of fair use, stating that the
preparation of a guide book, which independently contains the working of every mathematical
problem and steps for solving them, cannot be termed as an infringement of the textbook. Further,
it was averred that all students were well aware that the Narendra Publishing's books are guide
books whereas Oxford's publications are textbooks. Further, the questions appearing in Oxford's
books were claimed to be part of .the common pool of questions used and contended that the nature
of the subject is such that it would be impossible for one author to claim copyright over a set of
questions.
Justice S. Ravindra Bhat, denied the claim of Oxford, the copyright questions, answers,
and their arrangement in the textbooks as the effort in arranging such questions at appropriate
stages, chapters or units in the textbooks, as the plaintiff has not shown how such effort is original
to conform to standard of 'originality', i.e., the Minimum Degree of Creativity mandated in the
Eastern Book Company & Ors. v. D.B. Modak.
The Court noting the "doctrine of merger" being involved in this case, posits that where
the idea and expression are intrinsically connected, and that the expression is indistinguishable
from the idea, copyright protection cannot be granted. It clearly held that Mathematical questions
are expression of laws of nature. The discovery of such laws cannot confer monopoly to those who
describe it. Recognition of copyright as inhering in the questions themselves, without existence of
the creative element of originality would deny access to ideas, thus robbing one of the primary
objectives of copyright law (promotion of creativity) of vitality, thereby stifling intellectual
growth.
The Court further referring to a numerous authorities on the subject reiterated the test for
determining infringement: "One of the surest and the safest test to determine whether or not there
has been a violation of copyright is to see if the reader, spectator or the viewer after having read
or seen both the works is clearly of the opinion and gets an unmistakable impression that the
subsequent work appears to be a copy of the original”.
The Court also looked at the "transformative work" doctrine developed in the United States,
which held that: "Where the theme is the same but is presented and treated differently so that the
subsequent work becomes a completely new work, no question of violation of copyright arises."'
It is observed that the Courts in such cases should ask whether the purpose served by the
subsequent (or infringing) work is substantially different (or is the same) from the purpose served
by the prior work. The subsequent work must be different in character; it must not be a mere
substitute, in that, it not sufficient that only superficial changes are made, the basic character
remaining the same, to be called transformative.
 Finally the court held that the purpose and manner of use of the questions found in the
plaintiff's textbooks, by the defendants is thus different. Thus, the defendant's works can be said
to be transformative, amounting to review under Section 52 (1) (a) (ii) of the Act. Iii that sense,
the defendants revisit the questions, and assisting the students to solve them, by providing the step
by step reasoning prima facie amounts to a review, thus falling within the 'fair dealing' Provision
of Section 52 (1) (a) (ii) of the Act.

Specific Area of Infringement

Literary work
Dramas—In a leading case of R.G. Anand v. Delux Film, Supreme Court rejected the claims of
plaintiff claiming copying in the theme of his dramas "Hum Hindustani", In this case the defendant
produced a Film "New Delhi" which according to plaintiff was based on his drama "Hum
Hindustani". Rejecting the allegation of infringement Supreme Court held that the film was not a
substantial or material copy of the play.
Commentaries on Acts and law books.—
Commentaries made by author on the statutes are the original work of author and eligible for
copyright. Reproduction of whole passage or substantial copying amounts to infringement.
However, decision reported in law reports are common property for commentators on law and use
by them is not infringement.' Similarly the copyright cannot be claimed on the full text of the
judgment.
Novel - Student's guide book based on novel in which the passages from novel are extensively
quoted will not amount to infringements In E.M. Forster v. AN. Parasuram,' respondent published
a guide book for student novel, "A Passage to India" written by E.M. Forster. The author alleged
that passages from his novel have been extensively copied. The court held the purpose of the
respondent was simply to prepare a study material on thus novel and it is neither an abridgement
nor a literary piece of criticism, thus there has been no infringement.
Artistic Work
Artistic work includes painting, sculpture, drawings, engraving, photographic work of architecture
and any other work of artistic craftsmanship. A person acquires copying in his painting by putting
element of originality and application of skill and labour. Any person through a photographic
process reproduces the painting and prepares posters for commercial sale. The same would amount
to infringement. We find this kind of infringement very rampant through printing of posters and
calendars depicting famous paintings -The Daily Calendar Supply Bureau v. The United
Concern (1967).
Musical Work
Performance in public and reproduction of audio cassettes — Performance of a musical work
in public for monetary gain without obtaining licence from owner constitutes infringement.
Similarly, re-recording of musical work or adaptation of records into audio cassettes also amounts
to infringement, In. Gramophone Company of India v. Super Casettee Industries,' the court found
that audio cassette released by defendant as titled " Ganpati Aarti Astvinagak" is an infringement
of plaintiff's cassettes in contents and sequence of songs as well as lay out of the title and cover.
Cinematograph films including video films and TV serials
Video parlours and cable TV—Showing video films in video parlours without obtaining licence
is an infringement of copyright of the film. Similarly, without obtaining permission, display of TV
programmes through cable TV and dish antenna system on commercial basis is also an
infringement of copyright which is also very common in the society.
TV Serial based on some work.—Merely borrowing some character or plot from a book for
making a TV serial would not amount to an infringement. In an interesting case Barbara Tyler
Bradaford v. Sahara Media Entertainment Ltd. (2004), the appellant, who wrote a book, "A
Woman of Substance" alleged—that the TV serial "Karisma—The Miracle of Destiny" which is
being produced by respondent in 300 episodes is based on the work of appellant therefore the
respondent should be prevented from making and showing the alleged TV serial. Rejecting the
claim of appellant the Calcutta High Court found that copyright does not protect plots and stock
character but confirmed to the form, manner and arrangement and expression of idea, Neither the
producer nor the director of TV serial had even read the book. Further, there has been no prima
facie case in favour of appellant for granting injunction.

ENFORCEMENT OF COPYRIGHT
REMEDIES AGAINST INFRINGEMENT

Ubi jus ibi remedium (where there is a right, there is a remedy). The copyright Act has not only
conferred the copyright but laid down effective system for protecting copyright various remedies,
which may be classified into:
1. Civil Remedies
2. Criminal Remedies
In Tata Oil Co. Ltd. v. Hansa Chemical (PTC (Sppl) 438 Del.), the Delhi Court held that remedies
available to holder of copyright are independent of each other entitling the aggrieved party to sue
for any or all relief available to him under law.

1. Civil remedies:
A plaintiff in suit for infringement of his copyright can seek following remedies:
a.) Injunction - The plaintiff may seek the relief by way of restraining defendant from
injunction in a civil suit at various stages of trial. The provisions explained infringing his
copyright through temporary or permanent injunction in a civil suit at various stages of
trial. The provisions explained in Order XXXIX, Civil Procedure Code are guiding
principles.
b.) Damages on account of profits - The plaintiff is entitled to two types of damages viz., (i)
one for infringement of his copyright; and (ii) the other for conversion of his copyrighted
work into another form.
 c.) Account of profits - A plaintiff, if successful, is also entitled to account of profits as an
alternative to damages.
Jurisdiction of Court (Section 62)
Every suit or civil proceeding in respect of infringement of copyright in any work or the
infringement of any other rights viz., special right to broadcasting organization or performance
shall be instituted in the District Court having jurisdiction
Place of suit
The suit for infringement can be instituted at the place where cause of action (i.e. infringement has
taken place) has arisen or where the plaintiff voluntarily resides or comes on business. This is a
departure from the general principle as laid down in Section 20 of Civil Procedure Code, 1908,
wherein the place of suit is determined on the basis of residence of defendant.
Who can sue?
Following persons can file suit for infringement of copyright:
(i) Owner or in case of joint ownership any co-owner.
(ii) Assignee of copyright.
(iii) The legatee.
(iv) In case of anonymous or psuedonymous work, the publisher.
(v) Licensee : provided the owner of copyright is made party, unless exempted from
court.(Section 61)
Defences which may be raised by defendant
The defendant against whom the infringement is alleged may raise all or any of the following
defences to refute the allegation of infringement
i. no copyright subsists in the work alleged to be infringed,
ii. the plaintiff is not entitled to sue (not the owner of copyright),
iii. the alleged copyright work is not original,
iv. the alleged copyright is not entitled to protection being immoral, seditious or otherwise
against public policy,
v. the defendants' work is independent and is not copied from the plaintiff's work,
vi. the defendants' action does not constitute infringement of the plaintiff's work and is
permitted under one or more of the exceptions to infringement,
vii. the suit is barred by limitation,
viii. the plaintiff is guilty of estoppel, 'aches and acquiescence or consent,
ix. the infringement is innocent and the plaintiff is only entitled to the profits made by the
defendants on the sale of the infringing copies. Illustration

Illustration
X, a research scholar, quotes passage from book of Y in his dissertation with due
acknowledgement. Y files suit for infringement. X can raise defence of fair dealing.
X, reproduces a chapter from book. The chapter itself has been copied by Y from book of Z. Y
files suit against X for infringement. X can raise the defence that Y himself has infringed the
chapter.
In Dabur India Ltd. v. KR. Industries,' the question before the Court was whether the composite
suit of infringement of copyright and passing off of Dude Mark would lie in the same forum.
The Supreme Court held that Sub-section (1) of Section 55 of 1957 Act provides for the remedies
in terms whereof the plaintiff shall be entitled to all reliefs by way of injunction, damages, accounts
and otherwise as conferred by law for the infringement of a right. It is, therefore, would not be
correct to read the word "as are or may be conferred by law" to mean, any other law, violation
whereof although would give rise to separate and distinct cause of action. Thus the power conferred
by law within the meaning of sub-section (1) of Section 55 of 1957 Act qualifies the power of the
court to grant remedies as envisaged there under if any other cause of action arose under a different
Act. An action for passing off is common law right but the same does not determine the jurisdiction
of the court. For exercising such jurisdiction, the provisions of the Civil Procedure Code would b
e applicable. A composite suit would not entitle a court to entertain a suit in respect whereof it has
no jurisdiction, territorial or otherwise.
2. Criminal Remedies
The person found guilty of infringement can also be punished. The plaintiff can, in addition to
civil suit, also file criminal proceedings against infringer. The infringement of copyright is not a
civil wrong but also an offence. For easy and quick reference the offences and punishment
provided under various provisions is presented in tabular form.
Anton pillar order
It is a kind of preventive measure. The courts in England have devised the Anton Pillar Orders in
response to growing concern over the current volume of sound recording, video and other
copyright piracy.108 In appropriate cases the court may, on application by the plaintiff, pass an ex
parte order requiring the defendant to permit the plaintiff, accompanied by solicitor or attorney to
enter the premises and make an inspection of relevant documents and articles, take copies thereof
and remove them for safe custody. It may be equated with ex parte order to inspect premises of
defendant and take inventory of the offending articles.
Court, before passing Anton Pillar Order, should ensure that—(i) plaintiff makes full disclosure of
all details and facts within knowledge and that his is equitable; GI) there is an urgency of situation
and delay might give the defendant an opportunity to destroy the offending material. Further the
court should not make an Anton Pillar Order which is likely to have safe incriminating impact on
defendant!

108
Anton Pillar Case (1976) RPC 719.
MODULE 3 – TRADEMARK LAW

HISTORY OF TRADEMARKS AND TRADEMARK LAW

HISTORY OF (TRADE) MARKS

History of using marks can be dated back to those barbarian times where majority of people could
not read or write. Here arises the significance of using symbols which became a logical method of
letting people know, what belonged to whom. In earlier times men were more into farming and
thus the earliest marks were that of marking of animals, so a farmer or landowner could distinguish
the animals. As commerce developed, marks began to serve a number of purposes. In Greek and
Roman times, ‘Potters mark’ appeared on vessels to indicate the origin and destination along with
the identification of the maker. This practice can be dated back to almost two thousand years. The
ancient Egyptian Artifacts (objects, articles or pieces) embraced various symbols carved on
structures based on religious and superstitious reasoning. The usage of stamps on bricks by the
Roman brick maker for the purpose of identification began as early as the 2nd Century BC.
In medieval England, sword manufacturers were required to use identification marks so that the
defective weapons could be traced back to the producer for a possible punishment.
Eventually, use of marks became a ground to prove ownership of goods. As merchandising and
trade picked up significantly during the 10th Century,’ merchants mark’ also referred to as
‘proprietary mark’ was used to prove ownership rights of goods. Craftsmen applied their names,
unique drawings, or simple inscriptions to identify goods they created.
As 14th and 15th centuries observed dramatic emergence of merchant and craft guilds, trademark-
like symbols and logos began to appear as identification of goods and services. It was to distinguish
their work from the makers of low quality goods and to maintain trust in the guilds. Gradually as
Industrial Revolution sparked, guild system disintegrated into free business and thus establishing
civil protection against those who replicated the mark of another.

EVOLUTION OF TRADEMARK LAW

There was no proper trademark law which we see today in existence at the earlier period. In the
13th Century there was a law known as the Bakers‘ Marking Law which was the earliest English
law on trademarks. As the name suggests, required bakers to place a mark for their identification
on the loaves of bread they sold. Any bread offered for sale unstamped, was confiscated and the
offending baker was penalized with heavy damages. There were also marks on the beer bottles
which were also recognized under this law.
But even at that point of time were there was no specific and elaborate law, courts had taken action
against infringers of trademark under common law (actions for deceit & passing off and action for
injunction). On the basis of Unfair Competition also actions were taken.
It is to be noted that, before the enactment of a statutory law, trademarks prevailed as common law
marks. These marks were protected on principles of equity. The need for a law on registration of
trademark and protection against infringement was recognized giving scope for the very first
statutory enactment in Britain in the year 1875. It codified the formulations courts had made in
respect to property in trademark.
The British Trademark act of 1875 provided for a formal registration of trademark based on the
fulfillment of criterion whether the Trademark distinguished the goods of the trader or not. Thus,
Registration was considered prima facie evidence of ownership of a Trademark. This proof of
ownership helps in initiating an action before the court for trademark infringement. Eventually,
the Trademark Act, 1875 was repealed and substituted by the Patents, Designs and Trademark Act,
1883 which included the facility to register ‘fancy words not in common use’ and ‘brands’ as new
marks for the first time. This Act was further substituted by the Trademark Act, 1905. The next
re-enactment was the Trademark Act, 1938.
While the registered trademarks get statutory protection by initiating a suit for infringement. Non-
registered trademarks could seek remedy under the common law of passing-off.

HISTORY OF TRADEMARK LAW IN INDIA

The first demand for introducing a trademark legislation in India was made in 1877 by the Bombay
Mill Owners’ Association to the then Government of Bombay. Though a Bill was introduced in
the Imperial Legislative Council in 1879, there was no outcome of the process. However the law
governing trademarks found statutory recognition in the Indian Penal Code, 1860 in Chapter XVII,
Sections 463 to 489E speaks about offences relating to “documents and to property marks”. In
Specific Relief Act, 1877 Section 38 provided for the grant of a perpetual injunction to prevent the
breach of an obligation existing in favor of the plaintiff whether expressly or by implication.
Further, the registration aspect was attempted to establish by prescribing for a declaration as to
ownership of a trademark under the Indian Registration Act, 1908, which was ignored by the Trade
and Merchandise Marks Act, 1958.
In India, the first legislation in respect of trade mark brought on the statute-book was the Indian
Merchandise Marks Act, 1889. India borrowed the British Trademark Act, 1938 and prepared the
first Act on the subject as Trademark Act of 1940. But there was an increasing need for more
protection of trademarks because of the rapid growth in trade and commerce. As a result
independent India molded the Trade & Merchandise Mark Act, 1958. The 1958 Act consolidated
the provisions relating to protection of marks enunciated under different Statutes. Later in order to
bring the Indian trademarks Law in compliance with the country’s TRIPS obligations the new
Trademark regime Trademark Act, 1999 was introduced and enacted along with the Rules made
thereunder. It came into force with effect from 30th day of December 1999.
Indian Act also provides for registration which is not mandatory but directory. If registered the
registered user get exclusive right to file a suit of infringement in the event of any deception. For
unregistered user common law remedy of passing off is applicable.
Why Trademarks Act, 1999?
Before coming of this Act, it was Trade and Merchandise Marks Act, 1958 which regulated
Trademark in the country. This Act was amended several times and there arose a need for a
comprehensive legislation which leads to the enactment of Trademarks Act, 1999. So, this Act was
brought to amend and consolidate the law relating to Trademarks in India and also provide for
registration and better protection for goods and services and for the prevention of the use of
fraudulent marks. The need for a comprehensive legislation was felt for the following reasons :
a. Developments in trading and commercial practices;
b. Increasing globalization of trade and industry;
c. Need to encourage investment flows;
d. Need to encourage transfer of technology;
e. Need to simplify and harmonize trademark management systems;
f. To give effect to important judicial decisions;
g. To give effect to India’s obligations under the TRIPS Agreement; and
h. In view of the excessive amendments necessitated in the Trade and Merchandise Marks
Act, 1958, it was fit to repeal and re-enact the said Act incorporating required changes.

INTERNATIONAL LAW REGARDING TRADEMARKS

a. TRIPS Agreement: TRIPS defines a Trademark as “any sign or any combination of signs,
capable of distinguishing the goods or services of one undertaking from those of other
undertakings.” The term ‘signs’ has been broadly defined to include personal names, letters,
numerals, figurative elements, and combination of colors as well as any combination of these signs.
It is also an expansion of the Article 6bis of the Paris Convention over the issue of protection to
well-known marks. It obligates the member states to permit the owner of a well-known trademark
to prevent a third party from registering (or using) an identical or similar trademark for identical
or similar goods where a likelihood of confusion would result, even though the trademark owner
may not have a registration in the country of interest. The owner of a registered trademark shall
have the exclusive right to prevent all third parties from using identical or similar signs for goods
or services which are identical or similar to those in respect of which the trademark has been
registered. For that purpose, it has an official trademark publication to give notice of a pending
trademark registration application. The initial term has a duration period of seven years, as do
renewal terms.
b. Madrid Agreement concerning the International Registration of marks (1891) and the Protocol
relating to that Agreement 1989- they together establishes an international trademark registration
system, under which, a single application in a single language can be filed to obtain an international
registration for a single trademark in any or all of the countries that are members of the protocol,
for a single fee.
c. Paris Convention: The Paris Convention aimed at standardizing transnational practices relating
to trademarks. Articles from 6 to 10ter of the Convention it talks about the protection extended to
trademarks. Under Article 2 (National Treatment for Nationals of countries), nationals of member
states enjoy the protection of trademarks in other member states as provided by the respective
national laws. It also prescribes a six-month priority period. Article 6bis provides specifically that
the marks considered well-known are entitled to protection ensured by the Convention. It also
leaves many things at the discretion of the member states, like precise definition of protection from
unfair competition, conditions of filing and registration, conditions under which a collective mark
shall be protected.

DEFINITION, FEATURES AND TYPES OF TRADEMARKS

WHAT IS A TRADE MARK?

A trademark or trade mark is one of the Intellectual Property assets. A trademark is the
property of the manufacturer whose purpose is to establish a connection between the
goods/services and the source of origin of goods or services to which that particular mark belongs.
It was with the advent of globalization and e-commerce that businesses got expanded,
competition arose using of marks began to widespread and the consumers started identifying their
products with that of certain marks and symbols so as to distinguish these products from other
similar products in the market. Over a prolonged period of usage, the products with particular
marks started gaining popularity as well as recognition among consumers of goods.
With the emergence of advertising it increases the propensity to copy the well-known
trademarks or adopt deceptive trademarks to enhance profits and gain unscrupulous financial gain
by trading on the reputation of another trade mark. Therefore with the rise of competition, the
proprietors of those marks realized the need for a uniform legislation to grant registered proprietor
an exclusive right to use the trademark as prescribed under the law relating to trademarks.
Therefore the most important functions of a trademark were realized to be identification, source,
quality and advertising109.

DEFINITION OF TRADEMARK
The term Trademark has been defined under Section 2(zb) of the Act, 1999 as follows:
“trade mark” means a mark capable of being represented graphically and which is capable of
distinguishing the goods or services of one person from those of others and may include shape of
goods, their packaging and combination of colours: and-
(i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in
relation to goods or services for the purpose of indicating or so as to indicate a connection in the
course of trade between the goods or services, as the case may be, and some person having the
right as proprietor to use the mark: and
(ii) in relation to other provision of this Act, a mark used or proposed to be used in relation to
goods or services for the purpose of indicating or so to indicate a connection in the course of trade
between the goods or services as the case may be, and some person having the right, either as
proprietor or by way of permitted user, to use the mark whether with or without any indication of
the identity of that person, and includes a certification trade mark or collective mark:

The term ‘mark’ used here has been defined under Section 2(m) of the Act, 1999 “mark” includes
a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods,
packaging or combination of colours or any combination thereof.

WHAT ARE THE ESSENTIAL FEATURES OF A TRADE MARK

109
JT Mc Carthy, Trademarks and Unfair Competition, Vol.1, New York Publisher, 1973, p.86.
Thus from the definition given above, we can gather the essential features of a trademark:
i. It should be a mark
ii. It should be capable of being represented graphically
iii. It should be capable of distinguishing the goods or services
iv. It should be for the purpose of indicating or as to indicate a connection between the goods
and services and its origin
v. It should be used in the course of trade
vi. It should be used by the person having right as proprietor to use the mark or permitted
users.

TYPES OF TRADEMARK
Besides trade mark there are several other marks recognized under the Act :

1) Service mark- any word, name, symbol, device, or any combination used or intended to
be used in commerce to identify and distinguish the services of one provider by others and
to indicate the source of services. The term ‘service’ has been defined under Section 2(z)
of the Act, 1999. Service Marks do not cover physical goods but only the provision of
services. Service marks are used to identify a service as Trademarks are used for protection
of goods. Some areas of services include banking, education, insurance, transport,
entertainment etc. (eg. Holiday Inn, logos of SBI, ICICI, LIC etc.)
2) Collective mark-used by members of a cooperative association, union or other collective
group or other group or organisation to identify source of the goods or services. Mark
which is utilised for goods and services with same characteristics which are to be traded
by one or more person acting jointly or legal entity for differentiation with other goods or
services of same kind. Collective trademark is open for use to variety of traders and not
just one individual, provided, the trader is the member of the organization. Collective mark
has been defined under Section 2(g) of the Act, 1999. (eg. Logo of CA, CS, CPA etc.)
3) Certification mark- A certificate is evidence or probative matter providing assurance that
some act has or has not been done or some event occurred or some legal formality has been
complied with. It is a mark which indicates that certain qualities of goods or services in
connection with which the mark are used is certified. It is a mark indicating that the goods
or services in connection with which it is used are certified by the proprietor of the mark
in respect of origin, material, and mode of manufacture of goods or performance of
services, quality, accuracy, or other characteristics110. (eg.ISO mark, BIS, Agmark, etc.)
4) Trade dress: Trade dress refers to combination of elements that make up the look, feel, or
environment of a product or business. The term can refer to individual elements of a
product or business image as well as to the image the combination of those elements creates
as a whole. Trade Dress may include a few important features like:-Packaging, Size, Shape,
Colour, Colour Combination, Texture, Graphics, Design, Placement of words and
decorations on a product, Particular Sale Technique

110
Section 2(1)(e), Trade Marks Act, 1999.
 5) Well known trademarks: "well-known trade mark", in relation to any goods or services,
means a mark which has become so to the substantial segment of the public which uses
such goods or receives such services that the use of such mark in relation to other goods
or services would be likely to be taken as indicating a connection in the course of trade
or rendering of services between those goods or services and a person using the mark in
relation to the first-mentioned goods or services.

Unconventional forms of trademark

The trademark regime has now seen the emergence of unconventional forms of trademarks such
as smell, sound, and taste marks.
1) Smell marks

The first smell marks was registered in United Kingdom by Sumitomo Rubber for a floral
fragrance or smell reminiscent of roses as applied to vehicle tires.
In the case of John Lewis of Hungerford Ltd’s Trade Mark Application111 a trademark for smell
in furniture was rejected. The applicant applied to register furniture which consisted of the smell
or aroma of cinnamon. It was held that the verbal description of the smell was not enough for
graphical representation.
In US the first smell trademark to be registered in 1990 after an appeal before the U.S. Patent and
Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB). The mark was for a
“high impact, fresh, floral fragrance reminiscent of Plumeria blossoms” used in connection with
sewing thread and embroidery yarn.
In the United States the practice of registering olfactory trademarks is more liberal when compared
to Europe. Written descriptions are allowed in the United States.
In India olfactory marks are not expressly prohibited but it follows the same position as the EU
and the US for smell to be registered as long as it can be graphical representation and it can be
distinctive of the good it will be allowed for registration However in India no such smell
trademarks have been registered so far.
2) Taste marks
Taste marks may be easier to represent graphically –the graphic representation requirement was
satisfied by using a written description of the taste and an indication that it concerns a taste mark.
The New York Pizzeria v Ravinder Syal112, was a trademark infringement case for the flavour of
one of its dishes. The court agreed with the plaintiff that “flavour can carry meaning” but added
that, crucially, “meaning entitles a mark to trademark protection only if it distinguishes the source
of a product”.
3) Motion marks

Motion marks are probably the most common of the multimedia marks. It is otherwise called
moving-image design marks. (Sony Erricson flipbook was submitted with 20 pictures)
4) Sound mark:

There has been an introduction of another form of trademark where the "mark" is of sound graphics
that distinguishes the products and services of one from the other. Only those notations of sound

111
[2001] RPC 28
112
53 F. Supp. 3d 962 (2014).
that are graphically represented can be registered as trademarks. Sound marks being audio form of
trademark is challenging but to figure out the accurate nature of the sound mark based on its
registration, there needs clarity in graphical representation of the sound design.
The sound logo can comprise musical notes, words and sound graphics. The first Sound Mark to
be registered in India was Yahoo yodel followed by Nokia tune.

REGISTRATION OF TRADEMARK
A trademark means a mark capable of being represented graphically, capable of distinguishing
goods or services of one person from those of others. Hence for a mark to be registered as a
trademark under the Trade Marks Act, 1999, it has to satisfy three requirements which include:

It should be a mark
It should be capable of being represented graphically
It should be capable of distinguishing the goods or services of one person from those of others
Trademark may be registered or unregistered. The registration offers a prima facie evidence of
ownership of trademark, whereas in case of non-registration the user of trademark has to establish
the prior use and passing off.
A trademark application can be refused registration on either absolute or relative grounds as
provided under Section 9 and 11 respectively.

ABSOLUTE GROUNDS FOR REFUSAL OF REGISTRATION

Absolute grounds are those which are based on objections inherent in the mark itself or marks
otherwise prohibited under any other law or in public interest. These are independent of the nature
of goods and services. Section 9 has been inserted in the Trade Marks Act with the object of
ensuring that a trader should not obtain a statutory monopoly in a word, which another trader might
legitimately wish to use.

Section 9 states that:

“Absolute grounds for refusal of registration: (1) The Trade marks –

(a) Which are devoid of any distinctive character, that is to say, not capable of distinguishing the
goods or services of one person from those of another person;

(b) Which consist exclusively of marks or indications which may serve in trade to designate the
kind, quality, quantity, intended purpose, values, geographical origin or the time of production of
the goods or rendering of the service or other characteristics of the goods or service;

(c) Which consist exclusively of marks or indications which have become customary in the current
language or in the bona fide and established practices of the trade,
Shall not be registered:

Provided that a trade mark shall not be refused registration if before the date of application for
registration it has acquired a distinctive character as a result of the use made of it or is a well-
known trademark.”

As can be seen, Section 9(1)(a) prohibits registration of marks, which are devoid of any distinctive
character. A word or words to be really distinctive of a person’s goods must be generally incapable
of application to the goods of anyone else. Distinctiveness can be of two types: Inherent and
Acquired. To be distinctive or capable of distinguishing the goods, there may be some inherent
qualities or distinguishing characteristics in the mark itself, which make it distinctive or capable
of distinguishing the goods of one person from those of others.

In considering whether a trademark is inherently distinctive, one must look at the mark in isolation
from any special surrounding circumstances and without regard to any extrinsic evidence of any
such circumstances and to consider whether looking at the mark by itself in that way, it could be
said to be capable of distinguishing the goods of the applicants from similar goods of other traders.
The Act also recognizes that a mark can acquire distinctive character by its use, which will be
discussed while explaining the proviso to Section 9(1).
In American Online Inc.'s Application113, the applicant sought to register the word "YOU'VE GOT
MAIL" as a trade mark in various classes. The examiner refused the application finding the trade
mark was not distinctive. In appeal, the Board of Appeal held that the trade mark composed of
common words to inform email users of the ordinary fact they have received a new mail and that
the phrase must remain free from the individual monopoly rights.

Section 9(1)(b) prohibits registration of trademarks, which consist exclusively of marks or

indications, which may serve in trade to designate the kind, quality, quantity, intended purpose,
value, geographical origin or the time of production of the goods or rendering the service or other
characteristics of the goods or service. This provision applies to marks that are both descriptive
and non-distinctive in relation to the goods or services for which the protection is sought. While
analyzing a mark, one has to look at the word, not in its strict grammatical significance, but as it
would represent itself to the public at large who are to look at it and form an opinion of what it
connotes, as observed in Keystone Knitting Mills Ltd.’s TM [(1928) 45 RPC 193]
In M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar of Trade Marks 114, it
has been held by the court that the mark "RASOI" for edible oils cannot be registered as a
trademark because such mark indicates the nature of the product.

113
[2002] E.T.M.R. 6, 59.
114
(1980) IPLR 1.
Finally, Section 9(1)(c) excludes marks which consist exclusively of marks or indications which
have become customary in the current language or in the bona fide and established practices of
trade from being registered under the Act. Clause (c) to Section 9(1) has been inserted in the Act
primarily to protect the free use of indications or marks which are already in use in the trade, from
being monopolized as a trademark.
In SBL Ltd v. Himalayan Drug Company115, the Appellant filed a suit against the Respondent for
infringement of trade mark Liv.52 by use of the trade mark Liv-T, which was dismissed on the
ground that the mark 'LIV' is publici juris and that 'Liv' will be considered as the generic on account
of the fact that it is used in respect of medicine used for treatment of ailment of 'LIVER' and non-
distinctive part of the mark.7 The Division bench of Delhi High Court held that nobody can claim
exclusive right over the use of any word, abbreviation or acronym which has become publici juris.

That being said, marks that are devoid of distinctive character and those of descriptive nature may
be registered if they have acquired a distinctive character as a result of its use or if it is a well-
known trademark.

Clause (2) of Section 9 says that “A mark shall not be registered as a trademark if:

a) It is of such nature as to deceive the public or cause confusion;

b) It contains or comprises any matter likely to hurt the religious susceptibilities of any class
or section of the citizens of India;
c) It comprises or contains scandalous or obscene matter;
d) Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act,
1950
Marks that have the potential to deceive the public or cause confusion shall not be registered as
trademarks under the Trade Marks Act, 1999. Deception or confusion may arise due to similarities
between the proposed mark and existing marks or might flow from something contained in the
mark propounded for registration or might result from the nature of the use of the mark. This
provision is primarily concerned with the deceptive nature of a mark due to something inherent in
the mark or its use, such as nature, quality or geographical origin of the goods or services or any
other matter constituting the mark. Hence, it is important to note that Section 9(2)(a) is only
concerned with cases where deception or confusion arises from the nature of the mark itself
and not based on similarity between marks. The primary object behind this provision is to
safeguard the interest of the public. As a result, if a particular mark is misleading or false, it will
be refused registration notwithstanding the fact that the applicant had acted in good faith
In the Leather Cloth Company Ltd. v. American Leather Cloth Company Ltd.116, the plaintiff
had stamped upon their goods the words 'tanned leather cloth' whereas only about one-third of

115
1997 (17) PCT 540
116
(1863)4 De G.J & S 137
their whole produce was in tanned cloth. It was held by the House of Lords that the plaintiffs were
disentitled for relief as they were misrepresenting about the nature of the goods.
Section 9(2)(b) prohibits registration of a mark if it contains or comprises any matter likely to hurt
the religious susceptibilities of any class or section of the citizens of India. This provision is
necessary to be included as one of the grounds for refusal of registration of trademarks as it is
common practice in India to use religious symbols and names and pictures of Gods and Goddesses
as trademarks.

Marks containing scandalous or obscene matter are not permitted to be registered under the Act.
Whether a mark is scandalous or obscene will be determined on a case-to-case basis and the burden
of proof will be on the applicant to prove that it is not so by evidence and overcome objections.
This is what has been stated under Section 9(2)(c) of the Trade Marks Act, 1999.

Finally, Section 9(2)(d) forbids registration of a mark if its use is prohibited under the Emblem
and Names (Prevention of Improper Use) Act, 1950. This legislation prohibits the improper use of
certain emblems and names for professional and commercial purposes. Example: Mahatma
Gandhi, Pandit Nehru, National Flag etc. cannot be used as Trademark.

Section 9(3) talks about the registrability of the shape of goods. As per the provision, a mark shall
not be registered as a trademark if it consists exclusively of:

a) Shape of goods which results from the nature of the goods themselves;
b) Shape of goods necessary to obtain a technical result; or
c) Shape which gives substantial value to the goods.
The primary object of this provision is to ensure that what is claimed as a trademark really
identifies and distinguishes the claimant’s products from those of others. While talking about the
registrability of shapes as trademarks, it should be noted that the ‘shape of goods and their
packaging’ is already included in the definition of the ‘mark’ under the Act.

What Section 9(3) prohibits is the registration of the shape as trademark if it consists exclusively
of a shape which results from the nature of goods themselves or such shape of goods as is necessary
to obtain a technical result or those shapes which give substantial value to the goods. Hence, for
the shape of goods to be eligible for registration as a trademark, it should be possible for one to
distinguish the goods of the applicant from those of others without being hit by the provisions of
Section 9(3).
The first part of the provision is primarily intended to exclude from registration basic shapes that
will be available for use by the public at large so as to prevent traders from monopolizing shapes
of particular goods117.

The second part of the provision can be effectively illustrated by the observations made in the
decision in Philips Electronics NV v. Remington Consumers Product Ltd., ([1999] RPC 809),
wherein the Court held that the triangular arrangement of the 3 rotating blades in a machine for
trimming was to obtain a technical effect and could not be registered as a trademark. While
analysing the provision under Section 9(3)(b), it should be noted that the meaning of “necessary
to achieve a technical result” should be determined by inquiring whether, in substance, the shape
solely achieves a technical result118.

Finally, the third part of the provision is used to determine whether a particular shape has
substantial value, and a comparison has to be made between the shape sought to be registered and
the shapes of equivalent articles. It is only if the shape sought to be registered has, in relative terms,
substantial value that it will be excluded from registration.

RELATIVE GROUNDS FOR REFUSAL (Section 11)

“Relative grounds” means the reasons set down in the Trade Marks Act for refusing to register a
mark by considering it in relation to other earlier trademarks.
Under this Section the Registrar may also refuse registration if-
a) There is likelihood of confusion caused to the public including likelihood of association
with and earlier trademark by virtue of its identity with the earlier trademark and similarity
of goods or services caused by the earlier trademark or by virtue of its similarity to an
earlier trademark and identity or similarity of the goods or services caused by the earlier
trademark.
b) the earlier trademark is well known trademark in India and the latter mark would take
unfair advantage of the earlier mark or would be detrimental to the distinctive character or
repute of the earlier trademark
c) its use in India is liable to be prevented by virtue of any law of passing off protecting an
unregistered trademark used in the course of trade or its use in India is liable to be
prevented by virtue of law of copyright.
However, if the proprietor of the earlier trademark or proprietor of other earlier right consents to
the registration of the latter trademark, the same may be e registered by the registrar. Further, a
Trademark shall not be refused registration on the above grounds unless objection is raised in
opposition proceedings by the proprietor of the earlier trademark.

117
Example - the shape of an egg tray, whose purpose is to hold eggs, would fall within the context of section 9(3)
(a) and would not be considered as capable to distinguish from others.
118
Example - the shape of a square pinned plug, if the pins are not square they will not fit into the standard socket
therefore it is mandatory to achieve that standard shape which is a technical result. Hence shall not be registrable under
section 9(3) (b).
Honest and concurrent use
Under section 12, the registrar may permit the registration to more than one proprietor of the
trademarks which are identical or similar, irrespective of an earlier registration in respect of one
of them, on the ground of honest and concurrent use or other special circumstances.
In Gupta Enterprises v. Gupta Enterprises119the Court allowed registration of trademark “MBS”
on the ground that there was no complaint from public in relation to the goods under the rival
marks even after the user of mark for 25 years and there was nothing to suggest that the user of
trademark was not innocent, honest and bonafide.

PROCEDURE FOR REGISTRATION OF TRADEMARK

Sections 18 to 26 (Chapter III) of Act, 1999 deals with procedure for registration.
1. Procedure for filing application
Any person claiming to be the proprietor of the trademark is entitled to obtain registration by
filing a request in the prescribed manner and by paying the requisite fee. A single application may
be made for different classes of goods and services. The same was examined by the registrar on
the basis of the data it possesses concerning the earlier registered marks or pending applications.
The registrar may refuse the application or accept it to proceed for Publication or direct the same
to proceed for Publication before acceptance, subject to such amendments, modifications,
conditions or limitations, if any, as he may think fit.
2. Withdrawal of acceptance
If the registrar is satisfied-
a) That the application has been accepted in error; or
b) that in the circumstances of the case The trademark should not be registered are should be
registered subject to conditions or limitations or to conditions additional to you are
different from the conditions or limitations subject to which the application has been
accepted, the registrar may withdraw the acceptance
3. Advertisement of application
After examination and upon acceptance of the response by the registrar, the application is ordered
for advertisement or Publication in the trade marks journal. An application is advertised in the
trademark journal so as to invite the public for filing the opposition if any against the registration
of the mark. thus once the mark is accepted, the registrar advertises the mark in the official
Trademarks journal, which shall be published and is made available in the registry’s website.
4. filing notice of opposition
On publication of the mark in the trade marks journal, any person can oppose the grant of
registration by filing a notice of opposition within the prescribed period of time of 3 months, which
can be extended by a maximum period of 1 month.
5. correction and amendment

119
1998 PTC (18) (Del) 300.
 The registrar may, permit the correction of any error in or in connection with application or permit
an amendment of the application, before or after acceptance open application for registration.
6. Registration
On the registration of a trademark, the registrar issue a certificate of registration, sealed with the
seal of the trade marks registry
The date of registration shall be the date of making of the said application.

TERM OF A TRADEMARK IN INDIA

Section 25 of the Act, 1999 deals with ‘Duration, renewal, removal and restoration of registration’.
The term of registration of trademark is 10 years and it may be renewed subject to the payment
of the prescribed fee, in accordance with the provisions of the Trade marks Act 1999. An
application for renewal of a trademark can be filed within 6 months from the expiry of the last
registration of trademark

RIGHTS OF TRADEMARK HOLDER

Introduction
Trade mark holder, in the capacity of registered owner or registered user possesses certain rights
provided under the Act. A registered trade mark stands on advantageous position in comparison to
non-registered trade mark. But the Act also protects the claim of unregistered trade mark holder
through passing off action. The rights conferred under the Act are subject to conditions and
limitations imposed at the time of registration.

Various Rights
The various rights granted under the Act are as follows
1. Right to Exclusive use –
A registered trade mark gives the registered proprietor the exclusive right to use the trade mark in
relation to goods or services in respect of which the trade mark is registered. However this right
shall be subject to any conditions and limitations to which the registration is subject.
In case if there are more proprietors than one, each of them has the same rights against other
persons not being the registered users using by way of permitted use, as he would have, if he were
the sole registered proprietor. A co-owner of erstwhile partnership, which has been dissolved, also
has the right to use and get himself registered as independent proprietor of the trade mark. In Babul
Products v. Zen Products (2005 (3) GLH 738), the Gujarat High Court has held that a licencee
cannot take action for infringement and. passing off against partner of erstwhile partnership firm
as on dissolution of partnership firm, the partners having acquired goodwill by use can continue
to be co-owners of the mark.
2. Right to assign
A registered proprietor of a trade mark has the right to transfer his rights through licence or
assignment of his trade mark and give effectual receipts for any consideration for such
assignment120.
3. Right to seek Legal Remedies against Infringement
Since the Act confers exclusive right to use trade mark by Proprietor his authorised user, any
unauthorised use of a trade mark would amount infringement. The holder of Trade mark has the
right to obtain legal relief against alleged infringement121 of a registered trade mark. In case of a
trademark which is not registered, the unauthorised use is prevented through passing off action.122
4. Right to seek Correction of Register
In addition to three abovementioned important rights, the registered proprietor has the right to
apply for correction of register with regard to name, address or description of registered proprietor,
to cancel the entry of trade mark on the register and to strike out any goods or classes of goods or
services from those in respect of which a trade mark is registered123.
Kabushiki Kaisha Toshiba v. TOSIBA Appliances Co.124, which involved an application to rectify
the register of trademarks under section 46 on the ground that the mark 'Toshiba' was never 'used'
in India (in relation to some goods such as washing machines and spin dryers) and that the
proprietor of this mark indulged in 'trademark trafficking'. The court (Justice Skillet sitting with
LS Panta) suggested that a mere use of the mark in relation to servicing centers (which serviced
washing machines imported from abroad) could also amount to "use".
The key question before the Supreme Court was whether TOSIBA was a person aggrieved under
Indian Trademarks Law. The Court held that Tosiba Appliances, the Indian company that
challenged the mark was neither dealing with washing machines and spin dryers itself. Nor did it
want the Japanese Corporation, Kabushiki Kaisha Toshiba, the proprietor of the mark to avail of
it in relation to these goods. It was held that TOSIBA had failed to show that it would suffer any
real harm or damage if the mark TOSHIBA was allowed to stand and therefore was not a person
aggrieved. Keeping in mind this fact, the Supreme Court overturned all previous orders and held
in favor of the TOSHIBA mark.

Limitation on Rights
The rights mentioned above are subject to the conditions and limitations which may be either
expressly imposed at the time of registration or which are expressly laid down in the Act. They are
explained hereunder
I. The exclusive right to use a trade mark is subject to limitations imposed at the tine of registration.
Any use beyond those limitations is not protected by registration and an action for infringement

120
See Section 37
121
See Section 29.
122
See Section 27(2)
123
See Section 58
124
2008 (9) SCR 670.
shall not lie against such use by others. Where a trade mark is granted for a particular product, say
biscuits, it cannot be used by the proprietor for his other product such as confectionary.
2. Registration ipso facto will not operate against persons who are already registered proprietor of
identical or similar mark.
3. The registered proprietor cannot interfere with the prior use of the same or similar mark. In N.R.
Dongre V. Whirlpool Corporation,125 the Supreme Court held that passing off action against
registered owner of trade mark at the instance of prior user of the same or similar mark is
maintainable.
4. The registered proprietor cannot interfere with any bona fide use by a person of his own name
or that of his place of business, or the use of any bona fide description of the character or quality
of goods.
5. In the case of the word/mark, if in the course of time it becomes the name of an article or
substance, then the right conferred by registration ceases.
6. The right to seek legal remedy against infringement is subject to limitations prescribed in
Section 30.
In this way it can, thus, be summarized that the Trade Marks Act, 1999 has conferred several rights
on the holder of trade mark, but these rights can be enjoyed within the limits prescribed under the
Act.
ASSIGNMENT & TRANSMISSION UNDER TRADEMARK LAW

Introduction
Like other forms of intellectual properties, trade mark is also capable of being transferred. The
owner of trade mark can assign with or without goodwill his trademark to another person on receipt
of consideration. Similarly, a trade mark can be transmitted to the successor of the owner upon his
death or by operation of law.

Assignment and Transmission (Sections 37-45)

Assignment means a transfer of a claim of right or a property in trade mark by execution of
assignment deed in writing126.Whereas, "transmission" means, transmission by operation of law,
devolution on the personal representative of a deceased person and any other mode of transfer, not
being an assignment.127
Section 37 of the Trade Mark Act, 1999 empowers the registered proprietor to assign the trade
mark and to give effectual receipts for any consideration for such assignment. However, it should
be made clear that mere permission to use trade mark will not amount to assignment of trade

125
1996 PTC (16) 583
126
Section 2(1)(b)
127
Section 2(1)(zc)
mark.128 The assignment of registered129 as well as unregistered trade mark130 in goods or services
may be executed with or without goodwill of the business concerned.

Assignment of an unregistered Trade mark

An unregistered trade mark can be assigned with or without the goodwill of business concerned.
In an unregistered trade mark which has been used is assigned without the goodwill of business,
the assignee will not be able to protect the trade mark since in the absence of the goodwill of
business no action for passing off will lie. However, criminal prosecution may be available.

Conditions of Assignment
The assignment of trade mark must be in writing and specify the conditions and limitations to
which the assignment is subject to. The assignment otherwise than in connection with the goodwill
of a business will not be effective unless the assignee applies for direction with respect to the
advertisement of the assignment within six months of the assignment. If the assignment is
accomplished by the transfer of goodwill of the export business or of the business of goods or
services in respect of which i assignment is made, the assignment of a trade mark is not deemed to
have been done otherwise than in connection with the goodwill of the business131.

Restriction on Assignment and Transmission

If the assignment or transmission results in the availability of exclusive right in more than one
person to the use of the trade mark in relation to the goods or services or description on goods or
services which are associated with each other or if the use of the trade mark is likely to deceive or
cause confusion having regard to similarity of goods or services and of the trade mark, such an
assignment or transmission is not permissible. However, if the exclusive rights are exercised for
sale or export of goods outside India, the Registrar may grant certificate of validity of assignment.
(Section 40)
Similarly, if the assignment results in the availability to one of the persons, the exclusive rights to
the use of trade mark limited to use in relation to goods to be sold or traded in any place in India
and to result in availability to another person to the use of nearly resembling that mark or identical
mark limited to use in any other place in India, same will not be permissible unless the Registrar
is satisfied that such assignment or transmission is not contrary to public interest(Section 41).
A certification trade mark shall not be assignable or transmissible otherwise than with the consent
of Registrar (Section 43).

128
Ramappa v. Monappa. AIR 1970 Mad 156.
129
See Section 38.
130
See Section 39.
131
See Section 42
Associated trade mark shall be assignable and transmissible only as a whole and not separately.
But subject to provisions of the Act, they shall for all other purposes, be deemed to have been
registered as separate trade mark.132

Registration of Assignment and Transmission

Registration of assignment and transmission with Registrar is necessary. The person in whose
favour assignment or transmission is made will make an application to the Registrar for registration
of assignment or transmission as the case may be. The Registrar shall, on receipt of application
and on proof of title to his satisfaction, register the person as the proprietor of trade mark in respect
of goods or services in respect of which the assignment or transmission has been effected.133 In
Ratansi Mulsi v. Vinod Ratilal Gandhi134, the Bombay High Court has held that it is abundantly
clear that without registration of the assignment or transmission, no rights can be pleaded on the
ground that trade mark has been assigned or transmitted.
However, in case of CCE v. Vikshara Trading and Investment (P) Ltd.135, the Supreme Court has
held that in case of non-registration of assignment of a registered trade mark, if on facts it is amply
proved that assignment has taken place, mere non-registration of assignment will not vitiate the
effect of assignment. It is submitted that the judgment in this case has diluted the effect of Section
45.
To conclude Trademarks Act permits assignment and transmission of trade mark, both registered
and unregistered. But the assignment is subject to certain conditions and the deed of assignment
should be registered with Registrar.

INFRINGEMENT UNDER TRADEMARK LAW

Introduction
A trade mark owner has right either to use himself or assign others the use of his trade mark.
Unauthorized use of trade mark which may be identical or deceptively similar to the original trade
mark would amount to infringement. In case of registered trade mark, the registered proprietor or
registered user may take action against infringement. But in case of trade mark which is not
registered the common law remedy of passing off action is maintainable.

Infringement of Registered Trade Mark (Section 29)

A registered trade mark is infringed by a person who, not being a registered proprietor or the
registered user, uses in the course of trade, a mark which is identical or deceptively similar in
relation to the same goods or services in respect of which the trade mark is registered.

132
See Section 44
133
See. Section 45
134
AIR 1991 Born 40
135
(2004) 13 SCC 49.
Essential Conditions of Infringement
In order to constitute infringement following requirements must be fulfilled:
i. The person is not authorized' to use the trade mark.
ii. The infringing trade mark is either similar or identical or deceptively similar to the already
registered trade mark.
iii. The infringing trade mark must be used in the course of regular trade in which the registered
proprietor or user is already engaged.
iv. The use of the infringing trade mark must be printed or in case of unusual representation
of mark in advertisement, invoices or bills. Mere oral use of trade mark is not infringement.
v. Using either whole of the registered trade mark or an adopt one by making a few addition
and alteration.

Test for determining Infringement

In order to decide whether there has been an infringement of a trade mark or not, the likely impact
of infringing of trade mark on purchaser is viewed. If the totality of impression of trade mark is
likely to cause confusion or deception in the mind of purchaser, it amounts to infringement.
Tangible charges of confusion by a substantial proof are the main test to find out whether the
infringing mark is deceptively similar to the infringed mark. The likelihood of confusion is
sufficient and there is no need to prove that actual confusion has been caused136.In other words
deception, fraud or confusion on the part of infringer is essential requirement to determine
infringement.137
Common forms of Infringement (Section 29)
A trade mark can be infringed in different ways. Some commonly noticed forms of infringement
are mentioned hereunder
i. Using of mark identical or similar to trade mark by unauthorized person in relation to
similar or same trade. Use of identical or similar marks in trade not similar or same may
also amount to infringement.
ii. Advertisement of registered trade mark of another for promotion of one's trade also
amounts to infringement.
iii. A registered trade mark is also infringed when a person makes unauthorized application of
such trade mark to a material intended to be used for labelling or packaging his goods.
iv. A registered trade mark is also infringed by the spoken use of words as well as their usual
representation in cases where the distinctive elements of that mark consist of or include
such work.
v. Use of deceptive similar mark as to goods or services and as to trade origin which results
into confusion or deception in the mind of buyer.
vi. Taking substantial features of already registered which is in use, amounts to infringement.

136
Astra IDL Ltd. v. TTK Pharma Ltd.. AIR 1992 Born 35
137
ITC Ltd. v. Rakesh Behan. Srivastava and others. AIR 1997 All 323.
vii. Unauthorized use of registered trade mark on reconditioned or second-hand articles may
constitute infringement.
viii. Unauthorized printing of label of registered trade mark would also amount to infringement.
If the label has copyright. It will cause infringement of copyright
ix. When the owner of trade mark gets the goods manufactured by third party solely for mark,
sale of goods bearing that mark by third party manufacturer to other persons would
constitute infringement.

When trade mark is not infringed (Section 30)

As per Section 30 (2) the use of a registered trade mark in following manner would not amount to
infringement:
(1) Use of registered trade mark by any person for the purposes of identifying goods or
services as those of proprietor provided the use is in accordance with honest practices in
industrial or commercial matters, and further the use is not such as to take unfair advantages
of or be detrimental to the distinctive character or repute of the trade mark.
(2) A registered trade mark is also not infringed where—
(a) the use in relation to goods or services indicates the kind, quality, quantity,
intended purpose, value, geographical origin, the time of production of goods or of
rendering of services or other characteristics of goods or services; and
(b) a trade mark is registered subject to any conditions or limitations, the use of the
trade mark in any manner in relation to goods to be sold or otherwise traded in, in
any place, or in relation to goods to be exported to any market or in relation to
services for use or availability or acceptance in any place or country outside India
or in any other circumstance, to which, having regard to those conditions or
limitations, the registration does not extend.
(c) The use by a person of a trade mark:—
(i) in relation to goods connected in the course of trade with the proprietor
or a registered user of the trade mark if, as to those goods or bulk of which
they form part, the registered proprietor or the registered user conforming
to the permitted use has applied for the trade mark and has not subsequently
removed or obliterated it, or has at any time expressly or impliedly
consented to the use of the trade mark; or
(ii) In relation to services to which the proprietor of such mark or of a
registered user conforming to the permitted use has applied the mark, where
the purpose and effect of the use of the mark is to indicate, in accordance
with the fact, that those services have been performed by the proprietor or
a registered user of the mark;
(iii) The use of a trade mark by a person in relation to goods adapted to form
part of, or to be accessory to other goods or services in relation to which the
trade mark has been used without infringement of the right given by
 registration under this Act or might for the time being be so used, if the use
of the trade mark is reasonably necessary in order to indicate that the good
or services are so adapted, and neither the purpose nor the effect of the use
of the trade mark is to indicate otherwise than in accordance with the fact,
a connection in the course of trade between any person and the goods or
services, as the case may be;
(iv)The use of a registered trade mark, being one of two or more trademarks
registered under this Act which are identical or nearly resemble each other,
in exercise of the right to the use of that trade mark given by registration
under this Act.
(3) Where a registered trade mark is used by a person who has acquired it through
assignment or is authorized under a licence, such use would obviously not constitute infringement.
Illustrative Cases on Infringement
(1) In Pidilite Industries Ltd. v. S.M. Associates, (2004) the plaintiff was registered proprietor of
trade mark "M-SEAL". The defendant adapted and used mark `SM SEAL', with all essential
characters of trade mark `114-SEAL'. The Bombay High Court ruled that defendant's use of
impugned mark was causing confusion and deception. The Court restrained defendant from using
trade mark "SM-SEAL".
(2) Marked degree of phonetical similarity between the two marks would cause confusion and
deception. In Bombay Oil Industries Pvt. Ltd. v. Ballarpur Industries (1989), the Delhi High Court
found that use of trade mark "SHAPOLA" for edible oil which is similar to the registered trade
mark `SAFFOLA' is an act of infringement. The Court held that both the marks are in respect of
edible oil, therefore the nature of goods is same. There is marked degree of phonetic similarity.
The Court restrained defendant to use trade mark "SHAPOLA".
(3) In Playboy Enterprises, Inc. v. Bharat Malik (2001), the Delhi High Court restrained defendant
from using trade name "PLAY WAY" on the ground that defendant have adopted word 'PLAY'
which is the soul of the name of plaintiff s magazine PLAYBOY with the sole object to exploit
the trade on its goodwill and widespread reputation.
(4) In Bhaunesh Mohan Lal Amin v. Nima Chemical (2005) the respondent, was a registered
proprietor of two trademarks `NIRMA' and `NIMA' for detergent powder. The trade mark NIMA
was not being used. Appellant started using trade mark NIMA for flour. The Gujarat High Court
restrained Appellant from using NIMA which was already registered in favor of respondent. The
court rejected this contention that use of trade mark is a condition precedent for claiming legal
protection.
The appellant went in to appeal before Supreme Court. Disposing the appeal, the Court while
upheld the grant of interim injunction in favour of respondent, it also directed respondent not to
initiate any action for user of mark NIMA by appellant without leave of trial court. The Court
further directed to dispose of the suit expeditiously138.

138
Bhavnesh Mohan Lal Amin v. Nima Chemical Works Ltd. (2006)
(5) Use of trade mark 'LIKE ME' by defendant is similar to the mark "LAKME" which is a
registered trade mark of plaintiff. In Lakme Ltd. v. Subhash Trading139 the Delhi High Court held
that both the trade marks were, apart from dealing with the same range of cosmetic products,
phonetically also similar. There was, therefore, every possibility of deception and confusion being
caused in the minds of prospective buyer. The court restrained defendant from using mark "LIKE
ME".
No one can use the trademark which is deceptively similar to the trademark of other company. As
in the case of Glaxo Smith Kline Pharmaceuticals v. Unitech Pharmaceuticals Pvt. Ltd.,140 the
plaintiff claimed that defendants are selling products under the trademark 'FEXIM' that is
deceptively similar to the plaintiffs mark ‘PHEXIM' which is used for pharmaceutical
preparations. The defendants are selling anti-biotic tablets with the trademark ‘FEXIM' with the
packing material deceptively similarly to that of the plaintiff, whereby intending to not only to
infringe the trademark but to pass off the goods as that of the plaintiff as the two marks are also
phonetically similar. The Court restrained the defendant from using the trademark ‘FEXIM’ or
any trademark deceptively similar to the trademark of the plaintiff 'PHEXIM' any label/packaging
material deceptively similar and containing the same pattern as that of the plaintiff.
If the trademark is not registered by any party but one party started, using it before the other then
first one would have the legal authority on that particular mark. As in the case of Dhariwal
Industries Ltd. and Ann, v. M.S.S. Food Products,141 where appellants were using the brand name
MALIKCHAND for their product and the respondents were using the name `MANIKCHAND’
which is similar to the previous one and both parties have not registered their trademark they are
using it from long-time back and hence Court granted perpetual injunction against the respondents.
Even, if a company is not doing business in country, but if it is a well known company or well
known goods, then also it would be entitled to get authority over its trademark. As given in case
of N.R. Dongare v. Whirlpool Corp. Ltd.142, where the defendants have failed to renew their
trademark `WHIRLPOOL' and in the mean time the plaintiffs have got registration of the same. In
this case court said that though there was no sale in India, the reputation of the plaintiff company
was travelling trans-border to India as well through commercial publicity made in magazines
which are available or brought in India.
The WHIRLPOOL' has acquired reputation and goodwill in this country and the same has become
associated in the minds of the public. Even advertisement of trademark without existence of goods
in the mark is also to be considered as use of the trademark. The magazines which contain the
advertisement do have a circulation in the higher and upper middle income strata of Indian Society.
Therefore, the plaintiff acquired trans-border reputation in respect of the trademark
'WHIRLPOOL' and has a right to protect the invasion thereof.

139
1996 PTC (16) 567 Delhi
140
2005
141
2005
142
1998 5 SCC 714
Cases of no Infringement
In S.M. Dyechem Ltd. v. Cadbury (India) Ltd.,143 the Supreme Court held that the plaintiff's trade
mark PIKNIK and defendant's mark PICNIC, though they are phonetically similar but on facts,
there was dissimilarity in essential features and chances were more in favour of defendant and
therefore plaintiff was not entitled to injunction. However, in Cadila Health Care Ltd. v. Cadila
Pharmaceutical Ltd.,144 the three judge Bench of Supreme Court disagreed with the ruling in S.M.
Dyechem case the Court observed: "It is not correct to say that the difference m. essential features
is more relevant. The principle of phonetic similarity cannot be jettisoned when the manner in
which the competing words are written are different".
In Amir Chand Om. Prakash v. Hari Darshan Sevashram,145 the plaintiff's trade mark MAHABIR
with device of Lord Hanuman and defendant's mark HARI DARSHAN with Photographs of 12
different Gods and Godesses, one of which is that of Hanuman was not found similar. The Delhi
High Court held that there is no likelihood of confusion or deception.

PASSING OFF
Trademark law protects a trademark owner’s exclusive rights to use the mark, thereby preventing
any unlawful use of the mark by an infringer. Trademark protects the mark from any unauthorized
use which shall cause confusion in the minds of the general public. The purpose of trademark is to
give exclusive recognition as well as protection to a trademark owner.
The law of passing off is a common law tort which can be used to protect the right of an
unregistered trademark holder. The law of passing off prevents one person from misrepresenting
the goodwill and reputation of another man. According to the doctrine, nobody can sell any others
products under the guise that it belongs to him. Lord Halsbury has rightly observed in Reddy v.
Banham (1896) that, “nobody has any right to represent his goods as the goods of somebody else.
This principle also applies to business where no goods are involved. Thus, it is an actionable wrong
for any person to pass off his goods or business as and for the goods or business of another person
by whatever means that result may be achieved. The law of passing off has been extended to
professions and non-trading activities. In fact today it applies to many forms of unfair competition
where the activities of one person cause damage or injury to the goodwill associated with the
activities of another person or group of persons. Fraudulent intention is not necessary to constitute
passing off.
Passing off is not defined in the Trademark Act, 1999. It is referred to in Section 27 (2), 134 (1)(c)
and 135 of the Act. Section 27 of the Act recognizes the common law rights of the trademark
owner to take action against any person for passing off his goods as the goods of another person
or as services provided by another person or the remedies thereof. Section 134 (1) (c) refers to
jurisdiction of courts to try suits for passing off arising out of the use of any trademark. Section
135 specifies the remedies available in respect of passing off arising from the use of a trademark.
An unregistered trademark can only be protected by an action for passing off.

Elements to be proved for passing off action:

143
(2000) 5 SCC 573
144
(2001) 5 SCC 73
145
(2002) (24) PTC Del
In Reckitt & Colman v. Borden(1990), three elements were identified to constitute the tort of
passing off, namely: goodwill, misrepresentation and damage, known as the Classical Trinity of
Passing Off.
1. Goodwill:- the Plaintiff has to establish a goodwill or reputation attached to the goods and
services which he supplies, in the mind of the purchasing public by association with the identifying
get-up under which his particular goods and services are offered to the public as distinctive
specifically of his goods or services.
The action of passing off lies where there is a real possibility of damage of goodwill to some
business or trading activity. Therefore, the plaintiff has to establish a goodwill in his business or
his goods or services with which the trade or public will be led to associate the defendant’s
activities.
2. Misrepresentation: the Plaintiff must demonstrate a misrepresentation by the defendant to the
public leading or likely to lead the public to believe that the goods or services offered by him are
the goods and services of him.
3. Damage: the plaintiff must demonstrate that he suffered or in a quiatimet action, that he is likely
to suffer damage by reason of the erroneous belief endangered by the defendant’s
misrepresentation that the source of the defendant’s goods or service is the same as the source of
those offered by the plaintiff.10 In a passing off action, damage is presumed even if there is
likelihood of deception.
Lord Diplock in ErvenWarnikB.V. v. Townend(1979) 2 All ER 927,
1. Misrepresentation;
2. Made by person in course of trade,
3. To prospective consumers of his or ultimate consumers of goods or services supplied by him,
4. Which was calculated to injure business or goodwill of another trade (in the sense that this is
reasonably foreseeable consequence), and
5. Which caused actual damage to a business or goodwill of a trader by whom the action was
brought, or in a quiatmet action would probably do so.

Characteristics of Passing off Action:

Following characteristics can be attributed to passing off action:-
a. Proof of fraudulent intent not necessary: it is not essential that the plaintiff must
establish fraud on the part of the defendant in a passing off action.
b. Passing off not limited to goods: Passing off properly so called is not confined to the case
of sale of goods. Passing off also restrains a defendant from trading under a particular name
though the defendant trader is not selling the goods.
c. Evidence of false representation, but not deception necessary: false representation
made by the defendant, whether expressly or otherwise, must be proved as a matter of fact
in each case. The ultimate question of whether the deception is likely to cause confusion
remains a question of fact for the courts to decide in the light of available evidence.
d. Plaintiff and defendant need not be in the same field: in passing off action, it is
immaterial whether the plaintiff and the defendant trade in the same field or trade in
different products.
 e. Prior user to be established: The first user in the sale of goods is owner and senior user.
In order to succeed, the plaintiff has to establish user of the mark prior in time than the
impugned user by the respondents.
Cases:

1. Colgate Palmolive & Co. v. Anchor Health and Beauty Care Pvt. Ltd,2003 (27) PTC 478
(Del.)
Facts of the case: the Plaintiffs were selling tooth powder under the Trademark “Colgate” in cans
bearing distinctive get-up and colour scheme. The colour combination was purportedly applied by
the defendants on their cans for a similar range of products. Colgate alleged that Anchor had
adopted similar trade dress in terms of layout, get-up and colour combination with the obvious
intention to encash upon the plaintiff’s goodwill and reputation. The Plaintiffs averment was that
the red and white trade dress had acquired the meaning as a trademark and they claimed to earn
exclusive ownership over the same.
Decision: As the Court found similarity of look and appearance of the defendant’s trade dress was
that with the plaintiff’s trademark, the Plaintiff succeeded.

InKoninkhijke Phillips Electronics v. KantaArora, 2005 (30) PTC 589, it was held that “Section
27(2) makes it abundantly clear that registration of a mark in the trade mark Registry is irrelevant
in an action of passing off and the mere presence of the mark in the Register does not prove its
user by the person in whose name the same has been registered.”

In the case of Honda Motors Co. Ltd. v. Charanjit Singh & Others, wherein Plaintiff was using
trademark "HONDA" in respect of automobiles and power equipments. Defendants started using
the mark "HONDA" for its pressure cookers. Plaintiff bought an action against the defendants for
passing of the business of the plaintiff. It was thus held that the use of the mark "Honda" by the
defendants’ couldn’t be said to be an honest adoption. Its usage by the defendant is likely to cause
confusion in the minds of the public and the injunction was granted for the same.

Note: Students need to understand the difference between Infringement and Passing Off.

REMEDIES AGAINST INFRINGEMENT AND PASSING OFF A

TRADEMARK
Introduction
Remedies are reliefs which are granted to the person whose rights are infringed. The remedies
under trademark are not confined to mere infringement and passing off but also related to
falsification of trade mark and breach of other statutory obligations cast upon trade mark proprietor
or user. The remedies may be classified into civil remedies and criminal remedies. In the case of
Sarillo Perfumery v. Jure Perfect,146 where the plaintiff had a trade mark and its essential feature
was word 'Jure' written in a special style, the use of the words 'Jure Hair Curler' by the defendant
on its products like setting, Shampoo etc. it was held to be an infringement of the trade mark owned

146
1941 58 RPC
by and registered in the name of the plaintiff at the court. The House of Lords upheld the decision
in Appeal.
In Intel Corporation v. Divakaran. Nair and others,147 where the defendant had added the word 'art'
to the plaintiff's trademark `intel' to coin a new word 'art intel' for his trademark. The court granted
permanent injunction against the defendants.
In M/s. Bengal Waterproof Ltd. v. M/ s Bombay Waterproof' Manufacturing Co. and another,148
the Apex Court held that the respondent's trademark Dackback' was similar to appellant's
trademark `Duckback' and that the respondents were guilty of the infringement of the appellants
trademark. The Court ruled that the respondent's were also guilty of passing off their goods as
those of the appellant.
Civil Remedies (Sections 134 and 135)
Who can file suit
Following persons can file suit for infringement or passing off :
(i) The registered proprietor or his legal successor.
(ii) (ii) The Registered user of a trade mark subject to prior notice to registered
proprietor.(Section 52)
(iii) An applicant for registration of trade mark provided the suit shall sustain only when his
trade mark is granted registration.
(iv) Legal heirs of deceased proprietor of trade mark
(v) Any one of the joint proprietor of a trade mark.
(vi) A foreign proprietor of a trade mark registered in India and the infringement has taken
place in India.
Against whom the suit can be filed
The civil suit for infringement or passing off can be filed against following persons :
(i) The person who directly infringes or passes off the trade mark of plaintiff.
(ii) The agent of infringer.
(iii) The master in whose employment and under whose authority the servant commits
infringement.
(iv) The directors and promoters of a limited company can be joined as defendant only
when they have personally committed or directed infringement of trade mark.
Where the suit can be filed (Section 134)
The suit for infringement or passing off arising out of use by the defendant of any trade mark
which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or
unregistered, shall be instituted in District Court having jurisdiction to try the suit.
Burden of Proof In a suit for infringement burden of proof lies on plaintiff. The plaintiff must
prove that trade mark use by defendant is deceptively similar to the trade mark of plaintiff.
Similarly in action for passing off the plaintiff must prove that his mark has become distinctive.

147
2006 (33) PTC 345
148
AIR 1997 SC 1398
He must further prove the defendant's use of disputed mark is likely or calculated to deceive or
cause confusion or injury, actual or probable to the goodwill of the plaintiff's business.
Defences which may be set up by defendant
In a suit for infringement or passing off action the defendant may raise either of the following
defenses :
(i) That the use of trade mark is protected by the provisions of Section 30 of the Act in
which the acts which do not constitute infringement are listed out.
(ii) That the defendant has been an honest and concurrent user.
(iii) That the defendant is the prior user of the disputed mark.
(iv) That the defendant has also obtained the concurrent registration.
(v) That the use complained is bona fide use of defendant's own name, address and
description of goods protected by the Act.
(vi) That the plaintiff is debarred from suing or claiming relief by his own conduct in the
form of acquiescence, delay or latches.

Relief in suits for Infringement or for Passing off (Section 135)

(i) The relief which a court may grant in any suit for infringement or for passing off
referred to in Section 134 includes injunction (subject to such terms, if any, as the Court
thinks fit) and at the option of the plaintiff, either damages or an account of profits,
together with or without any order for the delivery-up of the infringing labels and marks
for destruction or erasure.
(ii) The order of injunction under sub-Section (1) may include an ex parte injunction or
any interlocutory order for any of the following matters, namely :—
a. For discovery of documents;
b. Preserving of infringing goods, documents or other evidence which are related to
the subject-matter of the suit;
c. Restraining the defendant from disposing of or dealing with his assets in a manner
which adversely affects plaintiff's ability to recover damages, costs or other
pecuniary remedies which may be finally awarded to the plaintiff.

CRIMINAL REMEDIES
In the Trademarks Act 1999, provisions have been made for punishment of various offences which
may be committed by person with regard to falsification of trademark. The criminal proceedings
can be initiated in addition to civil suit.
The nature of offence and punishment can be briefly presented as follows:
In case of offence under Sections 103 and 104 if the offence is repeated, the minimum
imprisonment of six months shall be enhanced to one year and the minimum fine will be raised to
Rs. 1 Lac. Further, when a person is convicted under Sections 103 and 104 or even if he is acquitted
on the ground that he acted without intention to defraud, the government may direct forfeiture of
goods (Section 111).
In case of offence by the companies, the company as well as every person in charge of, and
responsible to the company for conduct of its business at the time of commission of offence shall
be liable to be proceeded and punished accordingly.(Section 114)
Groundless Threat of Legal Proceedings has been discussed under Section 142

To conclude we can say that adequate remedies have been provided under the Act not only against
infringement of trademarks but it has made stringent provisions were punishments are given for
offences prescribed under the Act. However we can say in practical sense we can rarely find cases
criminal proceedings have been initiated. It is therefore made a point that for ensuring effective
enforcement and protection of rights of the proprietor criminal remedies should also be invoked as
a deterrent measure.

COMPARATIVE ADVERTISEMENT
‘Comparative advertising’ is the term used to describe advertisements where the goods or services
of one trader are compared with the goods and services of another trader. Comparative advertising
benefits the consumer as it usually compares the price, value, quality or other merits of different
products, thereby enhancing the awareness of a consumer.
Comparative advertising is a widely used form of commercial advertising in many countries. This
type of advertising intends to influence consumer behavior by comparing the features of the
advertiser's product with that of the competitor's product. Comparative claims are variable in
nature. They may explicitly name a competitor or implicitly refer to him. They may emphasize the
similarities (positive comparisons) or the differences (negative comparisons) between the
products. They may state that the advertised product is “better than” (superiority claims) or “as
good as” the competitor’s (equivalence or parity claims). The aim behind this concept is to allow
honest (i.e. not misleading) comparison of the factors of one trader’s products with those of
another.
Classification of CA
● Indirect CA: It showcases the features of one product and compares it favorably with all
the other competing brands through a generic or an indirect manner.
● Direct CA: where in the features and attributes of one product is directly compared with
the similar features and attributes of another specific competitor.
● Positive CA: where the advertiser will try to depict other products features and attributes
in a favorable manner which will help him gain advantage and benefits from the
association.
● Negative CA: uses defective practices to misguide the customers by degrading the quality
and the value system of both the products and services of the competitors

Law relating to CA in India:

Comparative Advertising in India is mainly governed by the Trademarks Act of 1999
Section 29 of the TM Act 1999 speaks about the Infringement of registered TM where in, section
29(8) specifically indicates that a registered TM is infringed by any advertising of that TM if the
advertising takes unfair benefit and is against the honest practice, if this advertising will be
hazardous to the unique character of the TM or is against the reputation of the TM. Section 30(1)
also supplements that nothing under section 29 will prevent any advertiser or company using
another’s TM provided it is used in honest and fair practice in industrial and commercial matters
and should not affect the distinctive character of the repute of the TM. Under the definition of
honest practices for CA, it implies that CA focuses on objectively keeping the customer informed
about the product, helps in promoting market transparency by lowering prices and improving the
goods by stimulating competition in a fair manner. Hence in certain cases so as to protect the
interests of such competitors CA should not be allowed which otherwise would mislead, create
confusion or create discredit to a competitor.
Cases:
Reckitt & Colman of India Ltd. v. Kiwi T.T.K. Ltd. (India)(1996:
The plaintiff Reckitt & Colman manufactures and markets liquid shoe polish under the brand
name Cherry Blossom Premium Liquid Wax Polish. Defendant KIWI is also engaged in the
manufacturing and marketing KIWI liquid polish which it claims in its advertisement to be
superior than the plaintiff as alleged that cherry blossom has less wax and more acrylic content
which in due course will crack and cause damage to the footwear. This is promoted on the website
of the defendant showing a bottle of KIWI which does not drip and placing another bottle of polish
marked as brand X which drips.
Brand X is shown with a red blob on its surface representing cherry which looks similar to the
cherry which appears on the plaintiff’s bottle. The defendant also circulated posters with a bottle
shown as brand X having a faulty applicator similar to that of the plaintiff’s applicator. The Court
held that the defendant was disparaging the goods of the plaintiff and was told to restrain from
advertising the competitors product in a disparaging manner. The Delhi High Court also added
that the advertiser can puff the goods or make statements that his goods are of superior quality but
this should not disparage or defame the repute of the competitor
Reckitt & Colman of India Ltd. v. M.P.Ramachandran and Anr, (1999):
In this case the plaintiff manufacturers blue whitener under the brand name Robin Blue having a
particular styling and have a registered TM and a registered design. The defendant also starts
manufacturing blue whitener (Ujala) and started promoting their product by disparaging the goods
of the plaintiff. The advertisement showed a container similar to that of the plaintiff’s and was
indicated that it was priced at Rs. 10. As no other blue whitener products in the market were priced
at Rs. 10, it was obvious that it was the plaintiff’s product Robin Blue. Further the defendant
alleged that the plaintiff’s goods were uneconomical and was an expensive product to whiten the
clothes. It was also promoted in a manner that the plaintiff’s product was shown upside-down with
the liquid gushing out indicating that the liquid doesn’t drip slowly instead gushes and thus
becomes expensive. The Calcutta High Court held that the defendant was disparaging the goods
and was liable for infringement and was granted an injunction and laid down five principles to
guide future cases of infringement.
Pepsi Co. Inc. and Ors.v. Hindustan Coca Cola Ltd. and Anr, (2003):
In this example, Pepsi filed a suit against Coca-Cola for wrongful use of their TM in a commercial
where in a lead actor asks a kid to his favorite drink for which he says that he likes Pepsi which
was obvious from his lip movement as it was muted. Then the lead actor asks the kid to taste the
two samples of drinks after hiding their identity and questions the kid as to
"BacchonKoKonsipasandaayegi"?. The kid points to one drink and says that children would prefer
it because it is sweeter and says that he does not like that drink. He likes the taste of the other drink
and says that it is a stronger drink and has to be consumed by grown ups. After the lead actor opens
the lid of both the bottles, it is revealed that the bottle which the kid likes was “Thumps-Up” while
the other had PAPPI written on it which deceptively resembles PEPSI. The kid feels embarrassed
as he had earlier liked the Pepsi taste and hence keeps his hands on his hand as a matter of
disappointment. In some other advertisements the commercials read the slogan as "Wrong choice
baby", and that the "Thums Up" is a right choice, and "KyoDilMaange No More" which amounts
to damaging the repute of Pepsi. The court held Coca-Cola on the grounds of disparagement and
depreciating the goodwill of the plaintiff’s products under TM and Copyright Act as the registered
TM was been infringed by the use of a Globe Device or the word PAPPI which is deceptively
resembling to the TM PEPSI.
Conclusion

Comparative advertising is legal to the extent where it does not hamper the reputation of
competitor's mark and is in accordance with the honest practices in industrial matters. A person
while advertising his goods can compare the advantages of his goods over the goods of his
competitor, but one cannot say that his competitor's goods are bad as this may lead to
disparagement of goods of his competitor. A person cannot use any false or misleading statement
while promoting his goods.
Advertising Standards Council of India has specified the certain norms or guidelines which should
be kept in mind while promoting their goods through ads in its Code of Conduct, 1985. The
guidelines states as follows:

i. The producer must only make honest representation in the ads;

ii. The ads must not be offensive in any way to the general public;
iii. Ads must not be used for the promotions of products, hazardous or harmful to society or to
individuals particularly minors, to a degree unacceptable to society at large;
iv. Ads must not in any way hamper competition.

Few points of caution are given by the High Courts, through different cases, also in the same regard
in order to raise awareness among the producers of their rights and limitations allowing them to
prevent all kind of legal liabilities.

CHARACTER MERCHANDISING
The notion of character merchandising simply refers to creating a merchantable product around a
famous character, fictional or otherwise. In other words, it is the commercial exploitation of a
famous character or personality using their well-recognised international appeal. Fictional
characters are often derived from various literary works, cartoons, cinematographic works or
artistic works. Real characters are used more in the fields of marketing, films, show businesses
and sporting activities.
The concept was put forward by Walt Disney who upheld the idea of selling t-shirts, mugs, badges
and other products with Mickey Mouse, Minnie Mouse and Donald Duck in the 1940s.It was then
that character merchandising expanded from toys to clothing and other products, thereby extending
the concept of merchandising by including character merchandising as its integral part.
Hence, one way of expressing the concept of Character Merchandising would be to state that it is
an advertising technique that uses the popularity of the character concerned as a vehicle for selling
the products.
TYPES OF CHARACTER MERCHANDISING

Over the years, character merchandising has evolved from a secondary source of commercial
exploitation used by the entertainment industry to that of a primary tool for businesses to make
revenue.

▪ Fictional and Cartoon Character Merchandising

Cartoon characters are the most popular merchantable characters ever created. They also prove to
be the oldest type. They can be taken from literary works like archies, artistic works like Ravi
Varma paintings and Da vinchi Code, from cine films etc.
Example- Appu elephant of Asian games, Footix of FIFA World Cup.

▪ Celebrity Merchandising
Celebrity merchandising are of two types; Personality Merchandising and Image Merchandising.
‘Personality Merchandising’ or ‘Reputation Merchandising’ refers to the use of famous persons,
mostly celebrities in marketing. As a result of such use, consumers instantly recognize the
personalities used and relate to the respective products on one hand while on the other; they tend
to buy those products more which form parts of celebrity lifestyle. It includes using the essential
attributes of celebrities, like his name, image, voice, or other personality features to promote goods
and services in the market.
Image merchandising is an instance where characters of fictional films or television shows are
played by real actors in the marketing and advertising of goods and services. It is considered to be
a hybrid of Fictional Character Merchandising and Personality Merchandising. Often,
visualization of fictional characters is done by actors playing out the respective roles in
cinematographic works. In such cases, the identification of the character is done by combining the
signature traits of the real life person as well as its fictional counterpart. Through such
merchandising, the public can easily relate to their favourite characters being portrayed in a
particular manner.
Example- range of products launched by Future Group in association with Sachin Tendulkar with
name ‘Sach’.
Legal issues relating to character merchandising
Legal issues can fall under the following heads:
● Personality rights issue (it can affect right to privacy, right to publicity etc.)
● Copyright issue
● Trademark and Passing Off issue
● Contractual issues

Like real persons have personality rights, fictional characters have property rights. Protection
under copyright law does not apply to ideas or concepts, but protects only the form of expression
of such ideas whereby the author of an original work has rights to exploit his characters in any
matter he deems fit. The authorship rights of producers to exploit images from the film conflict
with the individual rights of the celebrities pertaining to the latters’ claims of violation of publicity
rights. It was seen in the case of King Features Syndicate Inc. v. Kleeman Ltd. that the plaintiff,
who had the copyright on the cartoon character ‘Popeye’, sued the defendants who were selling
‘Popeye’ dolls and brooches without authorisation or licence. The court granted an injunction on
grounds of copyright infringement.
It is the inherent right of every person to control the commercial use of his or her identity.
Celebrities would be legally entitled to their right to privacy which would tend to get violated on
commercial application of their personality traits. In spite of the identity and personality of every
person being a merchantable property, the right of determining the extent of commercial
exploitation vests entirely with the individual himself. Hence, presupposing that any act of
infringing such rights would amount to unfair trade practice, the public intrusion into private life
through unauthorised usage of individual’s traits would be a violation of their fundamental right
to privacy.
According to section 29 of the Indian Trademark Act 1999, a registered trademark owner can
prevent others from using a deceptively similar or a highly identical mark on goods and services
without permission of the owner of the trademark. Furthermore, an unregistered mark being used
by a third party on goods and services entitles the owner to initiate an action for passing-off on
establishment of goodwill in the trademark, misappropriation of the defendant and loss of trade or
damage to goodwill faced by the plaintiff as a result. There being no definite law to protect
commercial exploitation of fictional characters, celebrities are entitled to protection under the
Trademark Act. In the case D. M. Entertainment Pvt. Ltd. v Baby Gift House and Ors., (2010),
the Delhi High Court validated the transfer of trademark on DalerMehndi’s name by the singer to
his company, thereby holding that the act of the defendant in selling dolls that look and dance like
DalerMehndi was an act of passing off; thereby recognizing an unregistered likeness of a
celebrity’s character.

Thus in India, the only available remedies are constitutional rights pertaining to publicity and the
common principle of passing-off. Character merchandising is also guided by civil sanctions like
injunctions and compensatory measures. Furthermore, owners also hold right to sue or physically
seize the concerned intellectual property from unlawful possession.
Case laws:
Hall v.Lorimar, [1994] IRLR 171
The Lorimar case is a landmark decision on character merchandising, wherein the respondents
were clothing manufacturers and proprietors of a restaurant that used words also depicted in the
television series ‘Dallas’ of South Africa. The applicants who were promoters and distributors of
films asked the court for an interdict so as to restrain the respondents from such usage of characters,
persona or concepts depicted in the ‘Dallas’ series. Refusing the application for the interdict, the
court held that although the respondents were earning benefits using the popularity of ‘Dallas’, it
would not in any way mislead the public so as to confuse them about the producers of the television
show being same as those of the clothing manufacturers or restaurant proprietors.
In the famous World Cup case, FIFA, the applicant alleged that the respondents had tried to
extract royalty payments from FIFA’s sponsors and sub-licensees inter alia by obtaining trade-
mark registration in 1969 for clothing and sports equipment; thereby seeking an interdict on
grounds of passing-off. FIFA contended that the respondent had tried to indicate a relationship
between his goods and the official organisers of the world cup tournament who had legally
obtained from FIFA the right to use the World Cup trade-mark on their items; and had hence
intended to deceive the public at large. The court upheld that since the event under consideration
was the World Cup, the public at large was undoubtedly involved intrinsically, and hence, the use
of the insignia symbolising the relation between the clothing and sports equipment would highlight
a glaring trade connection between the events.
The goodwill of the applicants combined with the involvement of FIFA in character merchandising
was bound to create in the public’s mind a link between the products and the producers. Hence,
the court granted the applicants an interdict on grounds of passing-off, thereby restricting the
respondents to stop selling goods and services with the said World Cup logos in dispute.
In the famous Indian case of Raja Pocket Books v Radha Pocket Books (1997), the Delhi High
Court decided on the copyright ownership over the character of Nagraj who was published in green
snake-like body stocking in the plaintiff’s comic series of Pocket Raja Books. The Defendant’s
Radha Pocket Books started publishing comics using a similar serpentine character called
‘Nargesh’ who highly resembled Nagraj. The Delhi High Court held that the copyright of Nagraj
rested with the plaintiff and the defendant’s attempt to advertise any similar character through
stickers, posters or any other materials would amount to infringement of the plaintiff’s copyright.
TRADEMARK DILUTION
Trademark law aims at protecting the customer from deceit that arises out of unfair competition.
Trademark dilution is a trademark law concept giving the owner of a famous or well-known
trademark the right to forbid others from using that mark in a way that would lessen its uniqueness.
In most cases, trademark dilution involves an unauthorized use of another's trademark on products
that do not compete with, and have little connection with, those of the trademark owner.
Dilution is a basis of trademark infringement that applies only to famous marks. The Trademark
dilution occurs when a third party uses a mark or trade name in commerce that is sufficiently
similar to a famous mark such that it harms consumer perception of the famous mark. The dilution
protection law aims to protect sufficiently strong and well known trademarks from losing their
singular association in the public mind with a particular product. (ie. when we speak of Coca Cola
we remember only the soft drink. Similarly when we speak of Rolls Royce, Benz we associate it
with the car alone but when somebody else uses a similar mark like Rolls Royce or Benz for a
chocolate, then the mark will remind two products in the minds of the consumer)
It is generally believed that the doctrine of Trademark dilution was for the first time adopted by a
German court in 1925 where in the manufactures of the mouthwash ‘odol’ was able to obtain
cancellation of the same mark being used in relation to a railroad and Steel company. However
others believe that the Doctrine was espoused in England in 1898 in the case of Eastman
photographic material Corporation v. Joha Griffiths Cycle Corporation, in which the courts
refused to allow the camera maker to successfully enjoy the use of ‘Kodak ‘cycles, even though
they were not directly the competitor of Kodak cameras. This case marked the first significant shift
from the traditional Trademark protection. However it was Frank schechtar who actually launched
the concept of Trademark dilution in his paper published in 1927. According to him, the true
function of a Trademark is “to identify a product as satisfactory and thereby stimulate and further
purchases by the concerning public.”
In Caterpillar inc. v. Mehtab Ahmed and others, (2002), the Delhi High Court observed that
doctrine of dilution is an independent and distinct doctrine. The underlying objective of this
doctrine is that the relevant customers start associating the Trademark with a new and different
source thereby smearing the trademark. This blurs the descriptive link between the mark and such
goods. It amounts not only diminishing the value of the trademark but also gradually tampers the
commercial value of the marks slice by slice. Such kind of dilution is not a fair practice that is
expected in trade and commerce.
Types of Dilution
1) Dilution by Blurring: Dilution by blurring is defined as an association arising from the
similarity between the mark or trade name and a famous mark that impairs the
distinctiveness of the latter. In other words, it blurs a mark from association with only one
product to signify other products in other markets. It amounts to the devaluation of the
strength and commercial value of the marks.
2) Dilution by tarnishment:
Dilution by tarnishment is an “association arising from the similarity between a mark or
trade name and a famous mark that harms the reputation of the famous mark. It is the
 weakening of a mark through unsavoury or unflattering association. Not all associations
will result in tarnishment. The object of such an invasion is to tarnish, degrade or dilute the
distinctive quality of a mark.
Trademark dilution under Indian Law
Statutory provisions relating to trademarks dilution were introduced for the first time into Indian
law with The Trademarks Act of 1999.
There is no legal definition of the expression “dilution” in India’s Trade Marks Act, 1999. In fact
the word “dilution” of a trade mark is not even mentioned in the section pertaining to infringement
of a trade mark. Neither the word “dilution” is referred to in the definition of “Well known trade
mark” under the said Act.
However, section 11(2) contains the criteria for refusal of registration of a trade mark. It states
that:
“A trade mark which –
a) is identical with or similar to an earlier trade mark; and
b) is to be registered for goods or services which are not similar to those for which the earlier trade
mark is registered in the name of a different proprietor,
shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India
and the use of the later mark without due cause would take unfair advantage of or be detrimental
to the distinctive character or repute of the earlier trade mark.”
Section 29(4) of the Act sets out the standards required for plaintiff to establish dilution of his
trade mark in relation to goods or services which are not similar to those for which the trade mark
is registered. Sub-section (4) of Section 29 is reproduced below:
“A registered trade mark is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade, a mark which –
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark
is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause
takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered
trade mark.”

In ITC v. Philip Morris Products SA & Ors. (2010), the High Court while referring to section
29(4) of the Trade Marks Act, 1999 held a dilution cause of action is established if the following
essential elements are satisfied:

1. The impugned mark is identical or similar to the well-known mark

2. The well known or the injured mark has a reputation in India
3. The use of the impugned mark is without due cause
4. The use of the impugned mark amounts to taking unfair advantage of or is detrimental
to the distinctive character or reputation of the registered trademark.

There is a distinction between the judgment of Indian courts and US courts. Here the Indian court
merely states that the marks should have a ‘reputation in India’ whereas in the US the mark must
necessarily be famous. A Distinction needs to be made between a ‘famous’ mark and a mark with
‘reputation’. The reasoning behind is diluted rights being indeterminate in nature; the standard of
fame required to claim them must be high as well. A mark which is not highly distinct cannot be
diluted.

The court has already used the doctrine of dilution prior to the Act. One of the famous cases, where
court used the dilution prior to the act is Daimler Benz Aktiegessellschaft & Anr. v. Hybo
Hindustan, (1994), in which the issue was with the mark BENZ along with a three pointed human
being in a ring which the defendant used or his undergarment line. The High Court, in this case,
granted the injunction to the plaintiff and stated that copying of mark such as Mercedes-Benz by
anyone would result in the perversion of the trademark law in India. The court stated that “Such a
mark is not up for grabs—not available to any person to apply to anything or goods. That name is
well known in India and worldwide, with respect to cars, as is its symbol a three-pointed star”.

Exceptions to dilution of trademarks

The following shall not be actionable as dilution:

Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a
famous mark by another person other than as a designation of source for the person’s own goods
or services, including use in connection with–

1. Advertising or promotion that permits consumers to compare goods or services; or

2. Identifying and parodying, criticizing, or commenting upon the famous mark owner of
the goods or services.
3. All forms of news reporting and news commentary.
4. Any mark which includes parodies, criticism or comments.

AMBUSH MARKETING
Ambush Marketing is a type of marketing where one brand pays to become an official sponsor of
an event and another brand, which is usually a competing brand, tries to associate itself with the
same event, without paying the colossal sponsorship fees. It can be defined as "a planned effort by
an organization to associate itself indirectly with an event in order to gain at least some of the
recognition and benefits that are associated with being an official sponsor". Recently Mahendra
Singh Dhoni, Captain of the Indian cricket team was in highlights for reasons relating to ambush
marketing clause given in ICC guidelines during the Cricket World Cup 2011. He was a brand
ambassador of a product directly in competition with an official sponsor of the World Cup.
The goal of ambush marketers is to give consumers the impression that they are somehow
connected to the event, without having to pay for the sponsorship. It is an attempt of the third party
to associate with the event or its participants so as to deprive the ‘official sponsors’ of part of the
commercial value due to their ‘official’ designation. Such an association is not in consent with the
event organisers and the aim is to delude the consumers into believing that they are the official
sponsors.
Ambush Marketing can be divided into three broad categories:
a) Direct ambush marketing
b) Associative ambush marketing
c) Incidental ambush marketing

A. Direct ambush marketing is an intentional use of symbols and trademarks associated with the
mass event so as to give the consumers the wrong impression as to the actual sponsors of the event.
Certain direct ambush marketing strategies are:
● Predatory ambushing: The direct ambushing of a market competitor, intentionally
attacking a rival’s official sponsorship in an effort to gain market share, and to confuse
consumers as to who is the official sponsor.
● Coat tail ambushing: the attempt by an organization to directly associate itself with a
property through legitimate link, without securing official event sponsor status. It refers to
the unsolicited association of a company to an event. Eg. Adidas may sponsor a football
player participating in the World Cup sponsored by Nike.
● Property or Trademark infringement ambushing: The intentional use of protected
intellectual property, including trademarked and copyrighted property such as logos,
names, words and symbols, in a brand’s marketing as a means of attaching itself in the eyes
of consumers to a property or event. Eg. Red Cross is used throughout the world to
represent hospital and medical services. This actually constitutes property infringement of
Red Cross organization.

B. Associative Ambush Marketing: The term itself is clear as it means intentional use of such
terms or imagery which portrays that the company has links to the sport event or property, without
making any reference to the official sponsorship. Such different types of associative strategies are:
● Sponsor self- ambushing: When the official sponsor creates the marketing
communication beyond the scope of its sponsorship rights effectively ambushing the other
official sponsors.
● Distractive Ambushing: Creating the distraction in or around the place of event, not
having any association with the event, in order to gain the attention from the event’s
audience and thus promote the brand’s product.
● Value Ambushing: Making a direct reference to the event or property’s theme or values
to imply a link with the event in the mind of the consumers. For example, Puma, in the
European Championship, 2008, in order to promote its football line used the tagline, June
2008: Together Everywhere, thus making a direct reference to the event being played that
month.
● Insurgent Ambushing: use of surprise and aggressive promotion at an event with
minimum investment in order to maximize the awareness and to distract the attention of
the people from the official sponsors of the event and the event itself.
● Pre-emptive Ambushing: When the official sponsor creates the marketing
communication in order to usurp any possible ambush marketing campaigns of the rivals,
 thus prompting the ambush activities and distracting the focus from any of the other official
sponsors of the event.
● Parallel property ambushing: The creation of a rival event or property to be run parallel
to the main ambush target, associating the brand to the sport or the industry at the time of
the event, thus capitalising on the main event’s goodwill.
C. Incidental ambush marketing: When the market communications of a company leads to such
incidental ambushing of the official sponsors. It may be done in two ways:

● Unintentional ambushing: when the consumers incorrectly identifies a non-sponsoring

company as an official sponsor due to its previous association or due expectation of
association with the event.
● Saturation ambushing: a strategic increase in the marketing communication of a product
through aggressive marketing in order to maximise the advertisement during the event by
maximising available advertising before, during and after the event.

Law in India

Experiences from the past three decades have proven the fact that ambush marketing is unethical
and how important is to have stringent intellectual property protection beside what is provided in
for current regime At present, India has not enacted specific anti-ambush marketing laws and
accordingly redress must be had to the Trade Marks Act, 1999, the Copyright Act, 1957, the
Emblems and Names Act, 1950 and the common law notion of passing off.

(1) The Copyright Act, 1957

The Copyright Act is a capable tool which provides a remedy in the limited set of instances of
"ambush marketing" i.e. where logos or other original works of authorship are used without license
by third parties. The Copyright Act, 1957 provides the owner of copyright privilege to enjoy the
exclusive rights to reproduce, perform, publish adapt or translate, the copyrighted work and any
such act undertaken without the license of the copyright owner would, generally, constitute
copyright infringement. Now as per the Act infringement consist of two essential elements:

● There must be sufficient objective similarity b/w the infringing work and the copyright
work,
● The infringing work must have been derived from the copyright work.

'Lay observer test' holds a prominent position in Indian context, this test is applied by Indian
courts in order to evaluate the cases concerning alleged copyright infringement. The test relies
on the belief that "if to the 'lay observer' it would not appear to be reproduction, there is no
infringement of copyright in the works". In regard to "ambush marketing" the Delhi High Court
in case of ICC Development V. Evergreen Service Station, recognized a limited role of
copyright law in granting an injunction preventing the defendants from using the logo of "ICC
World Cup 2003" consisting of black & white strips and the mascot "dazzler" holding these to
 be "artistic work" protected under section 2(c) of the copyright Act, 1957.

(2) The Emblems and Names (Prevention of improper use) Act, 1950
The Act serves the purpose of preventing the improper use of certain emblems and names for
professional & commercial purpose, the restrictions provided under the Act are in regard to-

● The improper use of certain protected emblems and names; and

● The prohibition on registration of certain companies and other bodies, trademarks and
designs as well as grant of patents that bear a title containing any protected emblem or
name.

In order to be protected under this legislation, an emblem or name must be notified in the official
gazette and included in the schedule to the Act, while the only sports –related emblem and name
currently notified and protected are "the name and emblem of the international Olympic committee
consisting of five interlaced rings".

(3) The Trademark Act, 1999

The Trademark Act, 1999 provides that a trademark may be registered or unregistered, when the
trademark is registered the registrant is granted certain privileges these are:

● Title to mark established which enables the trademark owner to avoid proving his title
against any infringement of the mark.
● The exclusive right to use the registered trademark in relation to the goods or services in
respect of which the trademark is registered
● The right to obtain relief in respect of infringement of trademark.

What is necessary is that the applicant must be able to show 'distinctiveness' of such trademark
which he sought to get registered. A trademark which is not of distinctive character or a trademark
which is "deceptively similar” to an existing trademark will not be registered. The key determinant
in determining copyright infringement is "likelihood of confusion” in the mind of consumer.
Whenever there is an instance of registered trademark infringement, the following element must
be present:

● Use of a registered trademark by a person other than its registered proprietor or registered
user.
● Use of either of the whole of the registered trademark or an adapted one by making a few
additions or alterations.
● The infringing trademark is identical or similar to the trademark already registered.
● The likelihood of causing confusion on the part of public. Advertising of the registered
trademark in such advertisement takes unfair advantage.
● In the case of ICC Development V. Arvee Enterprises and Anr, it was said that for a
plaintiff to find success in his claim, he must prove that there was "likelihood of confusion"
in public mind that the defendants were sponsors or license of world cup. The defence of
"nominative fort use" shall also be considered, the registrant of a trademark is not granted the
 right to limit the bonafide use by an unlicensed third party of his trademark to describe the
character or quality of the trademarks registrant's good or services, so where a defendant uses
a trademark to describe the plaintiffs product rather than its own , a fair use defence is
available provided that the product or service in question is not identifiable without using the
trademark, that only so much of the marks are used as is reasonably necessary to identify the
product or service and the defendant has not done anything that would suggest a sponsorship.

As per the trademark Act, 1999 nobody is entitled to institute any proceeding to prevent or to
recover damages for the infringement of an unregistered trademark. But nevertheless the Act
provides that nothing in the Act shall be deemed to affect the right of any person for passing
off goods or services, as the goods of another person, as serves provided by another person or
any available remedies. A passing–off action is thus maintainable under the law of law of tort
or common law of right.

Necessary ingredients in the action for tort of passing–off involve:

● That certain names were distinctive and related to a party’s goods , and
● That a third party's use of name was likely to deceive and thus causes confusion and injury
to business reputation of former party.

The vital element in passing-off cases is the probability of deception, while in an action for passing
off, the onus lies upon the aggrieved party to establish the existence of the business reputation
sought to be protected, further in a passing-off action, fraud is not necessary element and thus the
absence of ‘intention to deceive’ is not available as defence. Foreign trade marks which have a
reputation in India are also provided the same protection which is afforded unregistered marks, the
factor determining the reputation is the degree of extensive advertisement and publicity & based
on the fact that same mark was in the use in a number of other geographical regions around the
world. As far as Indian courts are concerned they expressly recognize the existence of trans-border
reputation and grant injunctions in cases where a third party attempts to desire economic benefit
from the reputation established in a particular trade by another.
The test of "confusion" is to be applied in such matters where "a man of average prudence and of
imperfect recollection would be confused". If the goods are not similar and the trade names, logo,
scheme etc used are not likely to cause confusion in the minds of customers, no injunction to
restrain the use of trade name will be granted, because there cannot be any monopoly in the use of
the trade name in respect of the goods falling in different classes.

WELL-KNOWN TRADEMARKS IN INDIA

INTRODUCTION
In India well- known trademarks have been accorded extraordinary proprietary rights against
registration of identical or deceptively similar marks as well as against their misuse. This special
protection accorded to well- known trademarks is a consequence of precedents and
pronouncements that have been judiciously evolved by the Courts in India. The Indian Trademark
Registry’s website provides a comprehensive list of well-known trademarks in India like Google,
Kit Kat, AMUL etc.
PROTECTION OF WELL-KNOWN TRADEMARKS PRIOR TO THE ACT OF 1999
The Indian Legislature extended extraordinary protection to well-known marks only in the year
1999 and prior to that such marks were protected under the common law principles of passing off.

One of the remarkable cases, in which well-known mark was protected under the common law
principles of passing off, is the case of Daimler Benz Aktiengesellschaft & Anr v. Hybo
Hindustan149. In the case, the Plaintiff, manufacturer of Mercedes Benz cars, alleged Defendant of
using its mark BENZ for selling its undergarments. The Court restrained the Defendant from using
the impugned mark and stated that there’s no valid reason as to why any trader in India should
adopt the name “Benz”, which is associated with one of the finest engineered cars in the world,
and use the same name with respect to ordinary goods, in this case undergarments, particularly
underwear.

STATUTORY PROTECTION OF WELL-KNOWN MARKS

The Trademark Act, 1999 (hereinafter referred to as the Act) renders an exclusive definition of
well-known trademarks. The Act under Section 2(zg) of the Act provides that a well-known
trademark in relation to any goods or services, means a mark which has become so to the
substantial segment of the public which uses such goods or receives such services that the use of
such mark in relation to other goods or services would be likely to be taken as indicating a
connection in the course of trade or rendering of services between those goods or services and a
person using the mark in relation to the first mentioned goods or services.

Factors to be considered while determining whether a trademark is well-known or not?

Sections 11(6) and Section 11(7) of the Act- In view of the exigency to protect well-known
trademarks against misuse and increased instances of counterfeiting, the WIPO (World Intellectual
Property Office) in the year 1999 adopted a Joint Resolution Concerning Provisions on the
Protection of Well-Known Marks which penned down factors to be considered while determining
whether a trademark is well known or not and India being a member of WTO (World Trade
Organization) has incorporated those factors under Section 11(6) of the Act for determination of
well-known trademark.

Knowledge about the mark in relevant section of public- What constitutes relevant section of
public has been enumerated under Section 11(7) of the Act and provides that the Registrar while
determining whether a mark is well-known in a relevant section of public shall take into account
the actual number of consumers, the number of people involved in the channel of distribution of
goods or services and the business circles dealing with the goods or services.

149
AIR 1994 Del 239
It comes from “the nature of the things” that a trade mark is always turned to the public (in the
meaning of all the persons – natural and legal – to whom the trade mark is addressed): it is trying
to catch its attention, to startle it, to leave a mark in each and every targeted consumer’s mind so
that the latter could associate a certain need of his of a good or service with the sign of which the
mark is comprised.The relevant general public in the case of a well- known trademark would mean
consumers, manufacturing and business circles and persons involved in the sale of the goods or
service carrying such a trademark150. Knowledge obtained about the mark not only through actual
use but also by means of promotion is valid to determine whether a mark is well-known or not.

In the case of Bloomberg Finance LP v. Prafulla Saklecha & Ors. 151, the Delhi High Court
observed that Section 2(zg) of the Act defines a ‘well known trade mark’ in relation to any goods
or services to mean ‘a mark which has become so to the substantial segment of the public which
uses such goods or receives such services that the use of such mark in relation to other goods or
service would be likely to be taken as indicating a connection in the course of trade or rendering
of services between those goods or services and a person using the mark in relation to the first-
mentioned goods or services’.

In the case of Rolex SA v. Alex Jewellery Pvt. Ltd.152, the Delhi High Court while determining
the relevant section of public in the case took into account the advertising done in the media in
India since 1947 and particularly in the years immediately preceding the suit. The Court also took
note of registrations obtained to hold that relevant section of the public in India had knowledge of
the trademark ROLEX in relation to the watches.

In the Rolex case, the Court further opined that over the years and very quickly in recent times,
the international boundaries are disappearing. With the advent of the internet in the last over ten
years it cannot now be said that a trademark which is very well known elsewhere would not be
well known here. The test of a well known trademark in Section 2(zg) is qua the segment of the
public which uses such goods.

Second factor is duration of use, extent and geographical area of trademark- The Statute does not
lay down the term of use that would be sufficient to determine whether a mark has acquired
distinctiveness. However, the legal principle regarding the same has been settled through
precedents.

150
Tata Sons v. Manoj Dodia & Ors. [CS(OS) No. 264/2008]; Ihhr Hospitality Pvt. Ltd. V. Bestech India Pvt. Ltd.
[CS(OS) No. 207/2011]
151
2013(56) PTC 243
152
2014(60)PTC 131
In the case of Sarda Plywood Industries Ltd. v. Deputy Registrar of Trademarks153, the IPAB
(Intellectual Property Appellate Board) was of the view that use of the trademark for one year prior
to application is not sufficient to acquire distinctiveness under Section 9 and to qualify for
registration under Section 9, the mark should have acquired distinctiveness by long user.

However, in a recent verdict, the Delhi High Court in the case of ITC Ltd. v. Britannia Industries154
has settled the principle regarding term of use by holding that to acquire secondary meaning it is
not necessary that product is in the market for number of years. If a new idea is fascinating and
appeals to the consumers, it can become a hit overnight155.

Third factor, Duration, Extent and geographical area of promotion of mark- Apart from
determining the extent and geographical use of the mark, the Registrar also considers the extent of
promotion of the mark.

Fourth factor, Duration and geographical extent of registration of the mark and record of successful
enforcement of the mark in other Jurisdictions- Under this Clause, the Registrar while determining
whether a trademark is well-known or not will consider registration of the mark in other
Jurisdictions.

In the case of Honeywell International v. Pravin Thorat & Ors.156, the Court stated that the mark
was protected even under the common law rights due to its long, extensive and continuous use
across the world. While determining whether the trademark ‘Honeywell’ was well-known or not,
the Court considered the fact that the mark had been declared as a well-known trademark in three
domain name arbitration cases.

TRANSBORDER REPUTATION OF A TRADEMARK

The Act under Section 11(9) recognizes the concept of transborder or spill over reputation of a
trademark. It provides that for determining whether a mark is well-known or not, it is not necessary
that the trademark must have been used in India and that the mark is well-known to the public at
large in India.

PROTECTION OF WELL-KNOWN MARK ACROSS ALL CLASSES

Section 11(2) of the Trademark Act extends protection to well-known marks across all classes. It
implies that if AMUL is a well-known mark in respect of dairy-based products, the said mark
cannot be used or registered even in respect of electronic items. Relevant extract of Section 11(2)
is reproduced below:

153
2007 (34) PTC 352 IPAB
154
CS (COMM) 1128/2016
155
Mrs. Ishi Khosla v. Anil Aggarwal [2007 (34) PTC 370 Del]
156
222 (2015) DELHI LAW TIMES 533
A trade mark which-

(a) is identical with or similar to an earlier trademark; and

(b) is to be registered for goods or services which are not similar to those for which the earlier
trademark is registered in the name of a different proprietor,

shall not be registered if or to the extent, the earlier trademark is a well-known mark in India and
use of the later mark without due cause would take unfair advantage of or be detrimental to the
distinctive character or repute of the earlier trademark.

Extending Protection to well-known marks across all classes- The legal proposition of extending
protection to well-known marks across all classes has also been recognized by the Judiciary in
plethora of judgments. For instance, in the case of Kirloskar Diesel Recon Pvt. Ltd. vs Kirloskar
Proprietary Ltd.157, the Court while extending protection to the mark ‘Kirloskar’ stated that in case
of trading name which has become almost a household word and under which trading name a
variety of activities are undertaken, a passing off can successfully lie if the defendant has adopted
identical or similar trading name and even when the defendant does not carry on similar activity.
Even if the defendant’s activities in such circumstances, are remote, the same are likely to be
presumed a possible extension of plaintiff’s business or activities. In the instant case, the
Respondents have established that word ‘Kirloskar’ has become a household word and their
businesses cover variety of activities and that there is even a common connection with some
activities of the Respondents and activities of the Appellants.

Similarly, in the Benz case, the Court while recognizing the worldwide reputation of the mark
‘Benz’ in respect of cars restrained the Defendants from using the mark Benz for their
undergarments.

WELL-KNOWN TRADEMARKS AND DOCTRINE OF DILUTION

The Act does not render an exclusive definition of the concept of Trademark Dilution, however its
essence can be found in Section 29(4)(c) of the Act, which provides that a registered trademark is
infringed by a person who not being a registered proprietor or person using by way of permitted
use, uses in the course of trade, a registered mark which has a reputation in India and the use of
the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character
or repute of the registered trademark.

157
AIR 1996 Bom 149
The Doctrine of Dilution was analyzed by the Delhi High Court in the case of Tata Sons Ltd. v.
Manoj Dodia & Ors158. In the case the Court stated that the Doctrine of Dilution which has recently
gained momentous, particularly in respect of well-known trademarks emphasizes that use of a
well-known mark even in respect of goods or services, which are not similar to those provided by
the trademark owner, though it may not cause confusion amongst the consumer as to the source of
goods or services, may cause damage to the reputation which the well-known trademark enjoys by
reducing or diluting the trademark’s power to indicate the source of goods or services.

When does Trademark Dilution Occur?

Dilution of a well-known mark occurs when a well-known trademark loses its ability to be
uniquely and distinctively identified and consequent change in perception which reduces the
market value or selling power of the product bearing the well-known mark.

Dilution may also occur when the well-known trademark is used in respect of goods or services of
inferior quality. If a brand which is well known for the quality of the products sold or services
rendered under that name or a mark similar to that mark is used in respect of the products which
are not of the quality which the consumer expects in respect of the products sold or services
provided using that mark, that may evoke uncharitable thoughts in the mind of the consumer about
the trademark owner’s product and he can no more be confident that the product being sold or the
service being rendered under that well-known brand will prove to be of expected standard or
quality.

In the case of Kamal Trading Co. vs. Gillette UK Limited159, injunction was sought against the
Defendants who were using the mark 7’O Clock on their toothbrushes. The Bombay High Court
held that the plaintiff had acquired an extensive reputation in all over the world including India by
using the mark 7’O Clock on razors, shaving creams and the use of an identical mark by the
defendant would lead to the customer being deceived.

Remedies available to an owner of well-known mark against Dilution·

● Seek cancellation of infringing mark;

● Prevent registration of a trademark which is same or similar to the well-known mark
irrespective of whether the impugned mark is in relation to identical or similar goods or
services or in relation to other categories of goods or services;
● Prevent others from incorporating the well-known trademark as a part of their corporate
name/business name.

158
CS(OS) No. 264/2008
159
1998 IPLR 135
Even if a well-known trademark is not registered in India, its owner may avail these rights in
respect of the trademark registered or used or sought to be registered or used in India, provided
that the well-known mark is otherwise known to or recognized by the relevant section of public in
India through transborder or spillover reputation.

MODULE 4 – PATENT LAW

Origin of Patent

The origins of patent for invention are and no one country can claim first in the field with a patent
system. Ancient Greece in the 7th century BC granted monopoly to cooks for one year to exploit
new recipes. But a few centuries later, Roman emperor, Zeno, rejected the concept of monopoly.
By 1432, the Senate of Venice enacted a statute providing exclusive privileges to those inventing
any machine or process to speed up silk making. This protection soon got extended other devices.
Any new idea thus introduced, started obtaining protection. The earliest legislation for the
protection of intellectual property rights was in the area of patents. Patent law in the modern world
was first introduced by the State of Venice in 1474. It was granted to anyone who evolved a novel
technique for a period of 10 years. Thus it can be seen that the patent system has evolved over 500
years.
The word Patent is derived from Latin word ‘Patere’ meaning ‘to open’. It signifies a record of the
grant made by the Crown which is open for the entire world. The earliest known English patent
for invention was granted by Henry VI to Flemish –born John of Utynam in 1449. The patent gave
John a 20 year monopoly for a method of making stained glass required for the windows of Eton
College that had not been previously known in England.
It was not until the 16th century that the crown began issuing letters patent to individuals for
manufacturing monopolies within England (Royal grants by Queen Elizabeth).
‘Letters patent’ were open letters under the great seal, in which the Crown conferred certain rights
and privileges on one or more individuals including monopoly rights in respect of invention.
Edward VI granted such letters patent to Henry Smith in 1552.

History of patents in India

The patent system in India emerged when India was a colony of the British. The first Act for
protection of inventions in India, Act of VI of 1856 on protection of inventions, was based on the
British Patent law of 1852. Certain exclusive privileges were granted to the inventors of new
manufacturers for a period of 14 years.
The Act was modified in 1859 and certain exclusive privileges were granted to inventors for
making, selling and using inventions in India and authorizing others to do so for 14 years from the
date of filing specifications. The Patent and Design Protection Act was enacted in 1872 and in
1883 the Protection of Inventions Act was enacted. Both the Acts were consolidated as the
Inventions and Designs Act in 1888. The Indian Patents and Designs Act came into effect in 1911.
After independence the national government decided to change the Colonial patent Act and
amended 1911 Act. The study made by two Committees held by Justice Bakshi T.K. Chand and
Justice N. Rajagopala Ayyengar led to the emergence of the new Patent Act. On 20 April, 1972
The Patents Act came into force. The 1970 Patent Act was later amended in 1999, 2002 and again
in 2005 to bring the Indian Patent Act in line with the TRIPS Agreement.

Meaning of patent
A patent is not, accurately speaking, a monopoly, for it is not created by the executive authority at
the expense and to the prejudice of all the community except the grantee of the Patent. The term
“monopoly” connotes the giving of an exclusive privilege for buying, selling, working, or using a
thing which the public freely enjoyed prior to the grant of patent. Thus a monopoly takes something
from the people. An inventor deprives the public of nothing which it enjoyed before his discovery,
but gives something of value to the community by adding to the sum of human knowledge. He
may keep his invention secret and reap its fruits indefinitely. In consideration of its disclosure and
the consequent benefit to the community, the patent is granted.an exclusive enjoyment is granted
to him, but, upon the expiration of that period, the knowledge of the invention inures to the people,
who are thus enabled without restriction to practice it and profit by its use.
The system of patents is intended to strike a balance between the rights of the intellectual property
holders and the public at large.
A patent is a negative right which grants exclusive rights to a patentee to prevent or exclude others
from making, using, selling, offering to sell or importing the invention. The patent law recognizes
the exclusive right of a patentee to gain commercial advantage out of his invention. This is to
encourage the investors to invest their creative faculties, knowing that their inventions for certain
period during which the respective investors would have exclusive rights.

Object of patent
1. To encourage and develop new technology and industry.
2. To recoup the investment of the inventor.
3. To reward the inventor and his creativity.
4. Acts as an inspiration for further inventions.
5. To encourage scientific research, new technology and industrial progress.
6. Economic growth
STANDARD OF PATENT
OR
CONCEPT OF NOVELTY, INVENTIVE STEP AND UTILITY
OR
PATENTABLE SUBJECT MATTER
What is Patent?
Patent is a right to exclude others from making using offering for sale selling or importing the
patented invention. Patent is a set of exclusive rights granted by a state to an inventor or his
assignee for a fixed period of time in exchange for the disclosure of the invention. An invention is
the creation of intellect applied to capital and labour to produce something new and useful. Such
creation becomes the exclusive property of the inventor on the grand of patent. The procedure for
granting patent, the requirements placed on the patentee and the extent of exclusive rights vary
between countries according to the national laws and international agreements. Typically, however
a Patent application must include one or more claims defining the invention which must be Novel,
Inventive and Useful. In many countries certain subject areas are excluded from patents such as
business methods and mental acts.
Patent is considered a negative right with grants exclusive rights to a patentee to prevent or exclude
others from making, using, selling, offering to sell or importing the invention. The patent law
recognizes the exclusive rights to a patentee to gain commercial advantage out of his invention
.This is to encourage the investors to invest their creative faculties, knowing that their invention
would be protected by law and no one else would be able to copy their inventions would be
protected by law and no one else would be able to copy their inventions for certain period during
which the respective investors would be exclusive rights.
So to sum up, a Patent is statutory Instrument of Monopoly granted as a reward for An Invention
by the Government to the Inventor for a Limited Period of 20 years from date of filing in return
for which the inventor has to disclose to the Public his invention in its entirety. Patent is Quid Pro
Quo were quid is the exclusive right to commercially exploit the invention of the patentee and quo
is the disclosure of such invention to the public.
Object of Patent
The following are the object of patent:
1. The grant of patent not only recognizes and rewards the creativity of inventor but also acts as
an inspiration for further inventions which ultimately contributes to the technological development
of nation.
2. To encourage scientific, new technology and industrial progress.
3. Grant exclusive privilege to own, use or sell the method or the product patented for limited
periods stipulates new inventions of commercial activity.
4. The price of the grant of the monopoly is the disclosure of the invention at the patent office,
which after the expiry of the fixed period of the monopoly, passes into public domain.

PATENT SUBJECT MATTER

Patentability, statutory or patent eligible subject matter is a subject matter which is susceptible of
patent protection. The laws or patent practices of many countries provide certain subject matter is
excluded from patentability, even if the invention is novel and non- obvious. Together with
novelty, inventive step or non-obviousness, utility and industrial applicability, an invention can
be granted patent provided it doesn’t fall under Sections 3 and 4 where it lists out non-patentable
subject matter. As long as the invention does not fall under any provision of Sections 3 or 4 it
means it has patentable subject matter(subject to the satisfaction of the other criteria).
1. Novelty: S.2 (1)(j) and S.2(1)(l) should be read together to understand meaning of term novelty.
INVENTIONS MUST BE NOVEL (unlike any other, unique): Novelty is an important criterion
in determining patentability of an invention. Under Sec.2(1)(j) "Invention" means a new product
or process involving an inventive step and capable of Industrial application and Sec.2(1)(l) defines
“new invention” as follows: any invention or technology which has not been anticipated by
publication in any document or used in the country or elsewhere in the world before the date of
filling of application with complete specification, that is subject matter has not fallen in public
domain or that it does not form part of the state of the art.
The entire definition of invention is dependent on or associated with the word 'manufacture' which
denotes: (i) either a thing made which is useful for its own sake and vendible as such, or (ii) means
an engine or instrument to be employed either in the making of some previously known article or
in some useful purpose or extending to new process to be carried on by known implements or
elements acting upon known substances and ultimately producing some other known substance,
but producing it in a cheaper or more expeditious manner, or of a better or more useful kind. And
invention included both products and processes. In the case of product patent the article or
apparatus itself, which is the end product, qualifies for a patent protection. In the case of process
patent, the patent protection is limited to a particular process through which the end product is
attained. Simply put, the novelty requirement basically states that an invention should never have
been published in the public domain. It must be new with no same or similar prior arts.
"NEW means Invention must not be published in India or elsewhere. In prior public knowledge or
prior public use with in India claimed before in any specification in India is looked into. Normally
novelty and anticipation are determined by reference to the language of the claim of the patent
application. Under Section 64 of the Indian Patent Acts 1970 a patent shall be revoked “where it
is not novel”. The Patents (Amendments) Act, 2005, Section 23 states that after an application for
patent has been published and before the grant of a patent, the grant of patent may be opposed on
the ground of novelty.
REASONS FOR INCLUDING NOVELTY AMONG THE ESSENTIALS OF
PATENTABILITY
● No man can lawfully be deprived of the right to use a known art or trade.
● If an invention is known, the public will receive no consideration from the patentee for the
grant of sole right of using it.
DETERMINING NOVELTY
In determining novelty, the following three steps may be considered:
(i) What is the invention about?
(ii) What is the information disclosed by the prior art?
(iii) Is the invention new? Or What is the actual contribution made?
PRIOR ART: the state of art means a body of information restricted by a point of time. It pertains
to the material known before the date of filing of the patent application with the complete
specification. To form a part of the state of the art there is no need for the information to be put to
actual use. i.e. it was available and was capable of being used by the public is sufficient.
For example: a needle as we know today has a single-eye and therefore even if someone makes
needle with two eyes to thread it, it is unlikely to be granted a patent due to prior art i.e existing
state of knowledge.
PRIORITY DATE: Section.2(1)(l) states that the date at which the novelty is to be assessed is
the date of filing of the patent application with the complete specification i.e. the priority date.
Section 11 of the Patents Act enumerates the principles for ascertaining the priority dates of the
claims of a completed specification. The priority date is relevant not only for assessing novelty but
also for exploiting the invention without any potential patent.
PRIOR PUBLICATION: Prior publication means Act of making invention known to the public.
What constitutes publication? There is no requirement of proving that public accessed work.
Something which is accessible in public domain and it should be findable, no matted buried
somewhere. When a document will be deemed to published “had the documents been placed in
the hands of competent craftsman endowed with common general knowledge at the priority date,
who was faced with problem solved by patentee but without knowledge of the patented invention,
would he have said ‘this gives me what I want’.
LALLU BHAI CHAKHUBHAI JARIWALA V. CHIMANLAL CHUNILAL AND CO.
● Whether publication of any invention in newspaper is considered as prior use?
● It must give sufficient information to a workman skilled in the particular art or craft to
enable him to carry out invention. Then only become prior publication or prior knowledge.
It may not necessary that members of public actually read. It are enough if the publication
is accessible to the public without much trouble.
PUBLICLY KNOWN OR PUBLICLY USED
Section 64(1)(e) new invention stated that an invention will lack novelty if it’s publicly known or
publicly used in India. The ambit of the above section is limited to knowledge or use within India.
However, the determinations of ‘new invention’ expands the scope of public use beyond India. It
covers any invention or technology ‘used in the country or elsewhere in the world’. Public
knowledge need not mean widespread use to the knowledge by the public, all that is required is
that ‘it is known to the persons who are engaged in the pursuit of knowledge of the patented product
or process either as men of science or men of commerce or consumers.
An invention may be publicly known by oral disclosure, written disclosure by document or by
public use.
2. Inventive step or Non Obviousness
Non-Obviousness- Inventive step measures the technical accomplishment reflected in an invention
ie.,whether an invention is an adequate technical advancement to merit the award of a patent. Even
if an invention is new and useful it does not deserve a patent if it represents merely a trivial step
forward in the art. The objective of the patent system is the advancement of science. It is regarded
as the final gatekeeper of the patent system. The term inventive step is is defined under Section
2(ja) of the Patents Acts as “a feature of an invention that involves technical advance as compared
to the existing knowledge or having economic significance or both and that make the invention
not obvious to a person skilled in the art”. This means that the invention must not be obvious to a
person skilled in the same field as the invention relates to. It must be inventive and not obvious to
a person skilled in the same field. INVENTOR TO THE DISPLAY INGENUITY AND SKILL
THAN THAT POSSESSED BY THE ORDINARY MECHANIC.
Determining whether an invention is non-obvious and deserving of patent has been discussed by
the U.S Supreme court in Graham v John deer Co (1966). The Court laid down following factors:
1. The scope and content of the prior are to be determined
2. Difference between the prior art and the claims at issue are to be ascertained.
3. Level of ordinary skill in the pertinent art, and
4. objective evidence of non-obviousness
These are the primary considerations. The court also has laid down some secondary
considerations:
1. commercial success
2. long felt but unsolved needs
3. failure of others etc.
Windsurfing International v. Tabumarine
In 1985, in the above classic case, the Court propounded a test to determine inventive step in an
invention. They are as follows:
● it must assume the mantle of the normally skilled but unimaginative addressee in the art at
the priority date and impute to him what was, at that date, common general knowledge in
the art in question.
● It must identify, what, if any differences exist between the matters cited as being “known
or used” and the alleged invention.
● It must ask itself whether, viewed without any knowledge of the alleged invention, those
differences constituted steps which would have been obvious to the skilled man or whether
they requires any degree of invention.
This test laid down in Windsurfing case, stands as the guidepost in determining whether an
invention involves inventive step or not.
Add to the existing knowledge in society or means something technically advance to what already
exists and must non obvious to the person skilled in the art.
If the person of ordinary skill has thought of it then it is not an inventive step or when the invention
is just a plain extension of prior art then it is not an inventive step.
Bishwanath Prasad Radhey Shaym V.Hindustan Metal Industries: In this case The plaintiff
(Hindustan Metal Industries, a registered partnership firm carrying on the business of
manufacturing brass and German silver utensils at Mirzapur) in this case claimed to have invented
a device and method of manufacturing utensils introducing improvement, convenience, speed,
safety and better finish, in the old prevalent method which was fraught with risk to the workers, in
as much as the utensils used to fly off from the headstock, during the manufacturing process. The
plaintiff got the invention patented, as an assignee. The plaintiff learnt that the defendant
(Bishwanath Prasad Radhey Shyam, a concern carrying on the business of manufacturing dishes
and utensils in Mirzapur) was using and employing the method under the former’s patent. The
plaintiff served a notice upon the defendant asking him to desist from infringing the plaintiff’s
patent and further claim damages. The validity of the patent was challenged by defendant on the
ground of lack of novelty and inventive step. A Division bench of a district court of Allahabhad,
high court and Supreme court started its analysis of inventive step and after Considering the prior
art in the case, stated that the patented invention was merely an application of an old invention,
known for several decades before the plaintiff’s patent, which was no more than a workshop
improvement. Person who rearranged or made an addition to existing knowledge is not any
inventive step.
In Bishwanth prasad’s case, the apex court reiterated the above test and suggested three alternative
conceptions of the same.
a. Whether the alleged invention lies so much out of the track of what was known before as
not natural to suggest itself to a person thinking on the subject. It must not be the obvious
or natural suggestion of what was previously know;
b. Had the document been placed in the hands of a competent draftsmen or engineer, (as
distinguished from a mere artisan), endowed with the common general knowledge at the
‘priority date’, who was faced with the problem solved by the patentee, but without
knowledge of the patented invention, would he have said, this give what I want?
c. Was it for practical purposes obvious to a skilled worker in the field concerned, in the state
of knowledge existing at the date of the patent, to find in literature then available to him,
that he would or should make the invention the subject of the claim concerned?
CADILA PHARAMSEUTICALS v. INSTA CARE LABORATORIES
● Antibiotic cause side effects like diarrhoea, vomiting, dizziness etc
● The appellant pharma company made a medicine combining the antibiotic with
lactobacilli(a bacterium) such medicine had minimum side effects
● Not patentable, the process of making combination drug of chemical material and
microorganism is well known in pharma industry.
MARIAPPAN v. A. R. SARFIULLAH (BANANA LEAF CASE)
An “inventive step” which is a necessary ingredient of invention in order to make an Applicant
eligible for grant of patent under the Act, must be relating to an invention involving technical
advance or having economic significance or both with a necessary factor that such invention
should make it not obvious to a person skilled in the art.
Product: Artificial banana leaf made using food grade laminated paper
Decision: Injunction granted
 ● Reason: Even though the banana leaf is a natural product, the invention on the part of the
applicant/plaintiff to use artificial laminated food-grade shape in the form of banana leaf
with its colour with artificial scented smell is prima facie innovative and that in view of the
Patent granted in his favours for the said product, plaintiff is entitled for protection pending
disposal of the suit.
Person skilled in the art
Obviousness is judged on the hypothetical construct of a “person ordinary skilled in the art”. The
person of ordinary skill in the art must:
● Belong to the relevant field
● Look at the prior art form a position of his personality. Considering his/her interest in risk
taking.
● Be well aware of the fact that even a small structural change in a product or in a procedure
can produce dramatic functional changes
● The person of ordinary skills in the art must be given the problem and asked whether he
can solve it.
3. Capable of Industrial application
Industrial applicability is defined under Section 2(ac) of the Act as “the invention is capable of
being made or used in an industry”. This essentially means that the invention cannot exist in
abstract. It must be capable of being applied in any industry, which means that the invention must
have practical utility in order to be patentable. It is a quality of an invention which makes it better
than the preceding knowledge of the trade. It is not necessary that the invention as described should
be commercially useful, it is sufficient that the invention must be of some use to the public. That
is society should receive some positive benefit.
Thus inorder for an invention to get patent it need to satisfy three conditions : the invention should
be novel, should have inventive step and should have some utility or should be capable of industrial
application and also that the inventions should not fall into non-patentable inventions mentioned
under Sections 3 and 4 of the Patents Act, 1970.
NON-PATENTABLE INVENTIONS

According to the Patent Act (of India), those that fall under the category of “Inventions” can be
patented, as defined in Section 2 (j) of the Act which involves anything that is novel, capable of
industrial application, and is not frivolous (subject-matters eligible for patentability). However,
those that cannot satisfy such conditions (or restricts the scope of subject matters eligible for
patentability) are non-patentable as mentioned in Section 3 and Section 4 of the Act.

What Are Inventions?

As defined in Section 2 (j) the term “invention means a new product or process involving an
inventive step and capable of application”. The invention should be of absolute novelty as neither
it has been used nor published in any part of the world.
Section 3 and 4 of The Indian Patent Act
Section 3 and Section 4 of the Patent Act is highly debatable and deals with the list of exclusions
that are non-patentable that do not satisfy the above conditions. Following are not the “inventions”
under the meaning of this act:

(a) Inventions that are frivolous and contrary to natural laws.

Inventions which are frivolous or contrary to well established natural laws.

Example– Inventions that are against the natural laws that are any machine giving 100% efficiency,
or any machine giving output without an input cannot be considered as obvious and cannot be
patented.

b) Inventions which go against public morality

Inventions in which the primary or intended use or commercial exploitation of which could be
contrary to public order or morality (that is against the accepted norms of the society and is
punishable as a crime) or which causes serious prejudice to human, animal or plant life or health
or to the environment.

Example– As in Biotechnology, termination of the germination of a seed by inserting a gene

sequence that could lead to the disappearance of butterflies, any invention leading to theft or
burglary, counterfeiting of currency notes, or bioterrorism.

(c) Inventions that are a mere discovery of something that already exists in nature.
The mere discovery of a scientific principle or the formulation of an abstract theory or discovery
of any living or non-living substances occurring in nature.

Explanation– Mere discovery of something that is already existing freely in nature is a discovery
and not an invention and hence cannot be patented unless it is used in the process of manufacturing
an article or substance. For instance, the mere discovery of a micro-organism is not patentable.
Landmark Cases of Non-patentable Inventions
In Bilski v. Kappos,
This case deals with the Patentability of a business method. In this case, Bilski and Warsaw applied
for the patent on hedging risks on commodities trading but their patent got rejected by the US
Supreme Court on grounds that an abstract idea cannot be patented.

(d) The mere discovery of a form already existing in nature does not lead to enhancement of
efficacy.
The mere discovery of a new form of a known substance which does not result in the enhancement
of the known efficacy of that substance or the mere discovery of any new property or new use for
a known substance or of the mere use of a known process, machine or apparatus unless such known
process results in a new product or employs at least one new reactant.

Explanation: For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure
form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives
of known substance shall be considered to be the same substance, unless they are significantly
different in terms of efficacy.

The mere discovery of any new property or use of a known substance is not patented unless it is
of greater efficiency than the original substance hence, the mere incremental innovation does not
fall under the gamut of patenting.

Case laws
In Glochem Industries Ltd vs Cadila Healthcare Ltd.
The Bombay High Court held that “Section 3 (d) consists of all fields including the field of
pharmacology. Further, in this case, the court held that “the test to decide whether the discovery is
an invention or not? It is on the patent applicant to show that the discovery has resulted in
enhancement of known therapeutic efficacy of the original substance and if the discovery is
nothing other than the derivative of a known substance, then, it must be shown that the properties
in derivatives are significantly different in terms of efficacy. So under this sub-section, the very
discovery of a new form of a known substance which does not result in the enhancement of the
known efficacy of that substance will not be treated as an invention.
In Ten Xc Wireless Inc & Anr vs Mobi Antenna Technologies,
The Delhi High Court held that “a method of replacing conventional antennae with split-sector
antennae; a split-sector asymmetric antenna for replacing conventional antennae – are all mere
uses for the asymmetric antenna already known. Under Section 3(d) the subject matter claimed is
therefore not an invention.

In Novartis Ag v. Union of India,

The Supreme Court of India said that “mere discovery of an existing substance would not amount
to the invention”. The Supreme Court of India further, in this case, held that for pharmaceutical
patents apart from tests of novelty, inventive step and application, there is a new test of enhanced
therapeutic efficacy for claims that cover incremental changes to existing drugs which also
Novartis’s drug did not qualify”.

(e) Mere admixing of mixtures leading in the aggregation of properties are non- patentable.
A substance obtained by a mere admixing of two or more mixtures resulting only in the aggregation
of the properties of the components thereof or a process for producing such substance is not
considered the invention.
Explanation- mere addition of mixtures is non-patentable unless this satisfies the requirement of
synergistic effect i.e., interaction of two or more substances or agents to produce a combined effect
greater than the separate effect.

(f) Mere aggregation or duplication of devices working in a known way is not an invention.
The mere aggregation or re-arrangement or duplication of known devices each functioning
independently of one another in a known way.

Explanation- mere improvement on something or combinations of different matters known before

cannot be patentable unless this produces a new result or article.

(h) Horticulture or agricultural method is non-patentable.

A method related to agriculture or horticulture.

Explanation- a method of producing plants like cultivation of algae and mushrooms or improving
the soil is not an invention and cannot be patentable.

(i) Medicinal, curative, prophylactic, diagnostic, therapeutic for treating diseases in human
and animals are non-patentable.
Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other
treatment of human beings or any process for a similar treatment of animals to render them free of
disease or to increase their economic value or that of their products.

Explanation– those medicinal methods administering medicines orally or injecting it, surgical
methods like stitch free surgeries, curative methods as curing plaques etc does not fall under the
ambit of the invention and are non- patentable.

Case law
In Mayo Collaborative Services V. Prometheus Laboratories, Inc20.
In this case, the US Supreme Court said that “diagnostic and therapeutic methods (which includes
the treatment or cure of diseases) is not patentable as it claims a law of nature”.

(j) Essential biological processes for the production or propagation of animals and plants is
not an invention.
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.

(k) Simple mathematical or business or computer programs are not an invention.

A mathematical or business method or a computer program per se or algorithms;
Explanation– any mathematical calculation, any scientific truth or act of mental skills any activities
related to business methods or algorithms (which are like the law of nature) cannot be patented.

(l) Aesthetic creation is not an invention.

A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including
cinematographic works and television productions.

Explanation– such activities like writings, painting, sculpting, choreographing, cinematographing

all these which are related to creativity cannot be patented and fall under the gamut of Copyright
Act, 1957.

(m) Mental act, rule or method is not an invention.

A mere scheme or rule or method of performing mental act or method of playing a game.

Explanation- playing a game such as chess, sudoku etc are not considered as inventions rather
these are mere brain exercises and hence are not patented.

(n) Presentation of information is non-patentable.

Explanation- a mere presentation of information by tables, chars is not an invention and hence are
not patentable, for example, railway timetables, calendars etc.

(o) The topography of integrated circuits is non-patentable

Such as semiconductors used in microchips are not patented.

(p) Traditional Knowledge is not an invention.

An invention which in effect, is traditional knowledge or which is an aggregation or duplication
of known properties of the traditionally known component or components.

Explanation- the traditional knowledge is know-how, skills, that is passed from generations to
generations of a community and is already known cannot be patented for example the antiseptic
properties of turmeric.

(q) Atomic-Energy inventions are non -patentable.

Section 4 deals with inventions relating to atomic energy, that are also not patentable and that fall
within sub-section (1) of section 20 of the Atomic Energy Act, 1962.

Conclusion
India is a country that has understood the importance of strong patent systems for the growth of
industry and commerce to bring it at par with the modern world. With the promulgation of the
Indian patent act, there is an increase in the number of patent filing. Section 3 and 4 of this act
(consisting of inventions that cannot be patented) has been a filter that decides what falls in the
ambit of inventions. Only inventions that are new and useful are patented. Innovators and inventors
are highly intrigued in protecting their intellectual property.

PROCEDURE FOR OBTAINING PATENT

Unlike copyright which becomes vested in the author the moment he creates the work, the
invention of a person cannot and does not become entitled for patent unless the procedure
prescribed in the Patent Act, 1970 are fulfilled, and the invention is approved for grant of patent.
The Act has provided detailed procedure which begins with filing of application and is completed
with the grant of patent.
According to Patent law in India, an application for a patent can be made by any person claiming
to be the true and first and first inventor of the invention, any person being the assignee of the
person claiming to the true and first inventor or by the legal representative of any deceased person
who immediately before his death was entitled to make such an application (Section 6). Thus it is
not mandatory that only an inventor can apply for and get a patent over an invention.
True and First Inventor has been defined under Section 2(1) (y) of the Act - it provides a negative
definition. True and first inventor does not include first importer of an invention into India or
person tp whom an invention is first communicated from outside India.
an application must contain the fact that the applicant is in possession of the invention and shall
name the owner claiming to be the true and first inventor, and where the person so claiming is not
the applicant believes the person so named to be the true and first inventor.
An application for a patent can be made for only one invention and should be in the prescribed
form. The application must be accompanied by a provisional or complete specification. The first
to file system is employed, in which among the persons having filed for the same inventions, first
one is granted a patent, therefore, a patent application should be filed properly after conceiving the
invention.
Specification
The Patents Act states that every application for a patent shall be accompanied by a specification.
A patent specification is a unilateral statement by the patentee, in words of his own choosing,
addressed to those likely to have a practical interest in the subject matter of his invention, by which
he informs them what he claims to be the essential features of the new product or process for which
the letters patent grant him a monopoly.
Provisional specification
Provisional specification helps in the determination of priority of patents. The object of filing a
provisional specification is more manifest in cases where there are similar inventions which give
rise to competing applications. Where two or more persons develop similar concepts and make
competing applications for patents for the same invention, in different parts of the world, the
priority of the co-pending applications is determined on a ‘first-to file’ basis. The provisional
specification should describe the true nature of the invention, and such description should be the
same as that claimed in the complete specification.
Provisional specification contains – title of the invention and requirements of describing invention.
Complete specification contains – title, fully and particularly describing invention, manner in
which invention is to be performed and best method, end with the claim defining the scope of the
invention, and be accompanied by an abstract. Additionally, a complete specification may further
be supplemented by drawings and models or samples.
Appropriate office for filing an application and for other proceedings:
Application is required to be filed in the appropriate patent office within whose territorial limits
where the applicant or the first mentioned applicant in case of joint applicant for a patent normally
resides or has domiciled or has a place of business or the place from where the invention actually
originated. The four Patent offices are located in India at Kolkata, Mumbai, Delhi and Chennai.
Publication
Ordinarily, an application for patent shall not be open to public before the expiry of 18 months
from the date of filing of application or the date of priority of the application whichever is earlier.
Request for examination
Application is examined on request. It can be made either by the applicant or by a third party. A
period of 48 months, from the date of filing is available for making request for examination.
Examination: application is sent to an Examiner within 1 month from the date of request for
examination. Examiner will look whether the claimed invention is not prohibited for grant of patent
and whether the invention meets criteria of patentability.
Issue of First Examination Report a period of 1 to 3 months is available to Examiner to submit the
report to the Controller. FER contains gist of the objections.
Response from the applicant
12 months’ time from the date of issue of FER is available to the applicant to meet the objections.
The inventor and patent agent create and send a response to the examination that tries to prove to
controller that his invention is indeed patentable and satisfies all patentability criteria. If objections
are met grant of patent is approved by the Controller within a period of one month.
Pre-grant opposition
After publication, an opposition can be filed within a period of 6 months. Opportunity of hearing
the opponent is also available.
Consideration of pre-grant opposition
After examination the opposition and the submission made during the hearing. Controller may
either reject the opposition and grant the patent or accept the opposition and modify/reject the
patent application. This is to be done within a period of 1 month from the date of completion
opposition proceedings.
Grant of patent
The grant of patent confers exclusive rights on the patentee to prevent others from doing certain
acts with respect to the patent for 20 years. A certificate of patent is issued which will be considered
as a prima facie evidence. Grant of patent is published in the official journal.
Term of patent
Prior to Patent Amendment Act 2002, the term of patent in India was ranging between 5 and 14
years depending upon the category of invention. But as required under Section 27 of TRIPS
Agreement, a uniform term of 20 years has been provided (Section 53). This period of 20 years
shall be reckoned from date of filing of application for patent. But to keep the patent alive and
effective a periodic renewal fee is also required to be deposited, failing which the patent shall cease
to have effect, and shall not be eligible to any protection.

RIGHTS AND OBLIGATIONS OF PATENTEE

Introduction
A patent shall confer on the patentee a monopoly right for a fixed term, but subject to certain
conditions and obligations. A patentee has exclusive right to exploit, use, sale or transfer his patent.
He can exclude others from exercising those rights which are available to him alone. It shall be
made clear that the rights discussed hereunder are not absolute rights; they are subject to some
limitations. Further, a patentee has some duties also which are found necessary in larger interest
of public.

Rights of Patentee
(1) Right to exploit patent (Sections 48 and 50)
Section 48 confers the rights to exploit the patent on patentee or his licensee or assignee or agent.
It means the patentee or the person legally authorised by him can make commercial use of the
patented invention. He can exclude third parties who do not have his consent. However, this right
is subject to the conditions laid down in Section 47 which empower the Government to import or
use the patent product for its own use. The co-owners of a patent shall also be entitled to equal
undivided share in patent.
(2) Right to licence (Section 70)
If a patentee is not able or willing to exploit the patent himself, he can grant licence to some other
person and authorise him to exploit the patent and pay him the consideration or royalty
(3) Right to assign (Sections 70 and 68)
A patentee can fully or partially assign his patent to another person through sale, gift or any other
legal mode. Section 68 requires that such assignment should be in writing. In case of joint patent
the co-owner can assign his share in patent.'
(4) Right to surrender the patent (Section 63)
Under Section 63 of the Act, the patentee has the right to surrender his patent.
A patentee, if he so wants may offer to surrender his patent., at made, time by giving notice in the
prescribed manner. When such an offer is even' the Controller should publish the offer with a view
to notifying other than the patentee whose name appears in the register as having e like person
interest in the patent. It is necessary to protect the interests of person .1 k licensees, equitable
assignees, and others with whom the patentee might have contractual obligations which are
dependent on the continuance of the patent.
(5) Right to be issued duplicate Patent (Sections 154 and 118)
If a patent is lost or destroyed or its non-production is explained satisfactorily to the Controller,
the patentee has a right to apply for duplicate patent.
(6) Rights against infringement (Sections 104-108)
The exclusive rights of patentee can be legally protected by excluding unauthorized persons from
exploiting patent of others. Violation of rights of patentee amounts to infringement. Patentee has
right to seek legal remedies including civil suit against infringer.

Limitation on Rights of Patentee

The rights of patentee as mentioned in the introductory remarks are not absolute. They are subject
to certain limitations, following conditions and limitations can be imposed:
(i) Use of Patent by Government (Sections 99-103)
A patent has the same effect as against the Government as it has against any other person. But
the Government may use the patented invention, and even acquire it, under certain
circumstances and terms, or prohibit a person from using an invention. The Government may
import the patented article or make the article for its own use, or use the patented process for
its own use or for distribution to hospitals or medical institutions. The aforesaid use can be
made without the consent of the patentee or payment of any royalties. Apart from this, the
Government has also power to make use of the patented invention on payment of royalties.
(ii) Acquisition of invention and patent by Government
Section 102 lays down that the Central Government on being satisfied that it is necessary that an
invention mentioned in an application for a patent or in any already granted patent, should be
acquired for public purpose, it would publish a notification to that effect in the official Gazette.
Upon such publication, the invention or the patent and all the rights in respect of the same shall
stand transferred and be vested in the Central Government.
Notice of acquisition shall be given by Government to the applicant, and where a patent has been
granted to the patentee and other persons having interest in the patent.
The applicant or the patentee in such a case, shall be paid compensation, as may be agreed upon
between the Central Government and the applicant or the patentee. If no such agreement is arrived
at, the compensation will be determined by the High Court on a reference made to it under Section
103 of the Act.
Compulsory Licences (Sections 84-94)
Under the Indian Patent Act compulsory licences can be granted after the expiration of three years
from the grant of the patent on the grounds that' :-
1. reasonable requirements of the public have not been satisfied;
2. patented invention is not available to the public at a reasonably affordable price; and
3. patented invention is riot worked in the territory of India.
The Patent Act has included provisions as to what constitutes "requirements of the public".(Section
84(7). Reasonable requirements of the public shall be deemed not to have been satisfied if—
(1) due to the refusal of the patentee to grant licence on reasonable terms,
(a) a trade or industry is prejudiced,
(b) demand for the patented article has not been met to an adequate extent,
(c) an export market of the patented article is not being supplied, or (d) the development of
commercial activities in India is prejudiced,
(2) imposition of condition by the patentee;
(3) non-working of the patent in the territory of India;
(4) working of the patented invention in the territory of India on a commercial scale is prevented
by the importation from abroad.
A compulsory licence by notification by Central Government can be granted at any time after the
grant of the patent on such terms and conditions as the Controller thinks fit. The Controller shall
secure that the articles manufactured under the patent shall be made available to the public at the
lowest prices.' The procedures for obtaining a compulsory licence need not be complied with in
cases of national emergency or extreme urgency or in case of public non-commercial use which
may arise, including public health crisis, relating to Acquired Immuno Deficiency Syndrome,
Human Immuno Deficiency virus, tuberculosis, malaria or other epidemics. The Patents
(Amendment) Act, 2005 has inserted a new provision on compulsory licensing for manufacture
and export of patented pharmaceutical products into any country that does not have sufficient
manufacturing capability.
Licences of Right
A particular modality of compulsory licences was the "licence of right" provided in many
countries. Licences of rights are available when a patentee voluntarily throws his invention open
to anyone who asks for a licence on terms to be agreed upon with him in the absence of agreement
on terms to be settled by the Patent Office. A patent may be endorsed with the words "Licence of
Right" after 3 years from the date of sealing of the patent. When a patent is endorsed with the
words "Licence of Right" any person who is interested in the working of the patented invention
may require the patentee to grant him a licence. The TRIPs Agreement prohibits the automatic and
across the board "Licence of Right" of the kind that was envisaged in the Indian Patent Act, 1970.
The provisions relating to licences as of right that were available in the Indian Patent Act have
been repealed by the Patent Amendment Act, 2002.
Termination of compulsory licences
A patentee can seek termination of compulsory licence granted under Section 84 by making an
application to Controller on the ground that the circumstances that gave rise to the grant of
compulsory licence no longer exist and such circumstances are unlikely to re-occur.
Obligations of Patentee
(i) Duty to work out patent and make it available to public
The possession of a patent confers on the patentee not only certain valuable monopoly rights
and privileges, but also certain obligations and duties. Patents are granted not only to encourage
 inventions but also to secure that the inventions are worked in India on a commercial scale and
to the fullest extent that is practicable without undue delay. It is also essential that the
monopoly created by the patent should not unfairly prejudice the interests of the public. If the
patent is not used or the monopoly is abused, compulsory licence may be granted to any person
who is willing to work the patent or the patent may even be revoked. It is an implied
responsibility of the patentee to work the patent in India in such a manner that the reasonable
requirements of the public with respect to the patented invention are satisfied and the products
of the invention are made available to the public at a reasonable price. Failure to discharge this
obligation may amount to abuse of the monopoly granted.
(ii) Duty to furnish information
It is the duty of the patentee to furnish information demanded by Controller under Section 100
and 146. If he fails to furnish such information he is liable for penalty upto Rupees ten lakh.

COMPULSORY LICENCE UNDER PATENT LAW

Introduction
Patents are granted to promote new inventions which are a product or a process that provides a
new way of doing something or offers a new technical solution to a problem. To get a patent,
technical information about the invention must be disclosed to the public in a patent application.

What is compulsory licensing ?

Compulsory licensing is a measure which is provided by the patent act. It ensure that the patentee
do not misuse their patent rights. Compulsory Licensing is given only for public health and
nutrition. Simply speaking, it is a license given to a 3rd party to manufacture, use, or sell the
product or use the process that provides a new way of doing something which has been already
granted patent without the permission of the owner. This is done for the public health, or in national
emergency and health crisis. As this license works against the owner of the patent there are
conditions that are given by the government to be fulfilled.

For example: If a drug that is already patent is available at a very high price and poor people of
the society cannot buy it, then government can give compulsory license to the other pharmaceutical
companies to make the same drug at a low rate. This is done so that people can have access to that
drug at cheap price also.

Status of Compulsory Licensing in India

Compulsory Licensing was first given to a company in 2012. Under the Indian Patent Act,
conditions for granting of compulsory licensing are given. The conditions which need to be
fulfilled in order for a compulsory license to be granted are given under section 84 and 92 of the
Indian Patent Act, 1970. If any company wants a compulsory license of any product then they
should follow these two sections. These sections are explained below:
Section 84 of Patent Act, 1970
As per this section, any person who is interested or already a holder of the license under the patent
can make a request to the controller for grant of compulsory licence on patent after three years
from the date of grant of that patent on the existence of conditions mentioned in the section 84 of
the patents act, 1970. Compulsory licence will be granted on the following grounds:

● That the reasonable requirements of the public with respect to the patented invention have
not been satisfied or,
● That the patented invention is not available to the public at a reasonably affordable price
or,
● That the patented invention is not worked in the territory of India.
These are the few grounds on which the compulsory licence will be granted. If the product is not
available to the public at a reasonably affordable price, if the public is not satisfied with the
patented invention or if the product is not available in the territory of India.

Section 92 of Patent Act, 1970

This section deals with other grounds on which the compulsory licence will be granted. These are
special provision for compulsory licences on notifications by central Government. Government
grants compulsory licences in the following grounds:
● For exports, if the product is used for exporting to another country then government can
grant licenses but this is only in exceptional circumstances.
● If there is national emergency, this is the case where the product is needed on an urgent
basis like in war or in health crisis. For example, licence is granted to the companies of
manufacturing guns at the time of war or licenses granted to drug companies to
manufacture the patented drug at the time of health crisis.
Advantages of Compulsory Licensing
● Compulsory licence stops the abuse of Intellectual property rights. It gives reward to the
owner of the patent keeping in mind the limitation for the owner. It helps in rewarding the
patentee for their invention and making the product available to the society at reasonably
affordable rate. Compulsory licensing sometimes becomes unavoidable as to save lives of
the populace by ensuring accessibility of the products at affordable rate. It also helps to
break the monopolies and cartel which are some of the abuses of patent rights.
● It is very important for the government to keep a control over the use of dominant position
of the companies. Compulsory licensing will help in Indian industrial sectors development.
The size of the Indian market is one of the biggest in the world, compulsory licensing will
help to make the products more accessible to public and it will beneficial for public welfare.
● Sometimes the patentee of the products delays in development of important technology
which give rise to a deadlocks between the improver and the original patentee. Compulsory
Licensing can be used as an effective tool to resolve these deadlocks by pressurizing the
 original patentee to come to the terms of an agreement with the improver. It can therefore
help in generating rapid technical progress.

How compulsory licensing is helping industries to grow

● Availability of goods and services at affordable prices to the developing and
underdeveloped countries.
● The local industries which obtain compulsory license for the patented goods can produce
employment for thousands of workers and therefore reduce unemployment.
● In order to advance in science and technology, underdeveloped countries need maximum
access to intellectual property of advances nations.
● More than 80% patents in developing and underdeveloped countries are owned by citizens
of developed countries. So, compulsory licensing will help the underdeveloped countries
to have access to the patented products.

The First Case of Compulsory Licensing in India (Natco v. Bayer, 2012)

Natco Pharma Ltd. is the first company to file for compulsory licensing for producing generic
version of Bayer’s Corporation’s patented medicine Nexavar, used in the treatment of kidney and
liver cancer. In India, the patent office in 2012 granted the compulsory license to Natco Pharma
for the same drug. It was argued by the Natco Pharma that the public does not have access to this
drug at affordable price and the patented invention was not worked in India. All the 3 conditions
of sec 84 was fulfilled that,

i. The reasonable requirements of the public were not fulfilled

ii. That it is not available at an affordable price
iii. Patented invention was not worked around in India.
So, Natco applied for the compulsory license under section 84 of the Patent Act for Bayer’s
patented drug Nexavar. Nexavar was available by the Bayer Corporation for $ 6299 for a month’s
course. Natco Pharma proposed that it the same drug will be available by the name of Sorafenib
Tosylate for just $196. It was proposed that it will benefit the whole population of India which is
in millions. The government decided for the general public health and granted the compulsory
license to the Natco Pharma.
Lee Pharma Ltd v. Astrazeneca
In a recent case, Lee Pharma, a Hyderabad based Indian pharma company, filed an application for
compulsory license for the patent covering AstraZeneca’s diabetes management drug
“Saxagliptin”. In order to make a prima facie case, Lee Pharma strived to show that their
negotiations for a voluntary license with the patent owner were not rewarding as they did not
receive any response from the Patent owner within a reasonable period.
The grounds alleged by Lee Pharma were that:
1. the patentee has failed to meet the reasonable requirements of the public,
2. the patented invention is not available to the public at a reasonably affordable price, and
3. the patented invention is not worked in India.
All the three grounds of Lee Pharma were rejected by the Controller General and the Compulsory
license application was refused.
The application was rejected on the basis that Lee Pharma failed to demonstrate what the
reasonable requirement of the public was with respect to “Saxagliptin” and further failed to
demonstrate the comparative requirement of the drug “Saxagliptin” vis-a-vis other drugs which
are also DPP-4 inhibitors. Controller General held that all the DPP-4 inhibitors were in the same
price bracket and the allegation that “Saxagliptin” alone was being sold at an unaffordable price
was unjustified. The Controller General also stated that Lee Pharma failed to show the exact
number of patients being prescribed the patented drug and how many of them were unable to obtain
it due to its non-availability and consequently it was difficult to hold whether manufacturing in
India was necessary or not.

Trade Related Aspects of Intellectual Property Rights (TRIPS)

The Doha Conference 2001 of WTO adopted declaration that realizes the importance of public
health as compare to IPR. It was decided in that conference that the countries have right to protect
public health and provide cheap medicines. It was also decided for all the members that rights are
also given to all the countries to decide the right under what conditions it can use compulsory
licenses.
As India is a member to TRIPS, it may be noted that India has a well-established TRIPS compliant
legislative, administrative and judicial framework to safeguard IPRs. Under the Doha Declaration
on the TRIPS agreement, each and every member has a right to grant compulsory licenses on the
grounds that is mentioned in the Act. India can grant such licenses and have a right to grant
compulsory licenses under certain circumstances such as public health emergencies to ensure
access to affordable products.

Conclusion
Compulsory licensing is important for a underdeveloped or developing countries especially in
making available the medicines to the public. Medicine is a necessity for the society and if a
patented drug is available in a country but is very expensive that a normal person cannot afford
that drug then the government of that country has to do something for the people who cannot afford
it. Here, the compulsory license role comes in. Compulsory licenses will make the similar product
available to the people who cannot afford that drug.

TRANSFER OF PATENT

Introduction
Like physical property, intellectual property may also be transferred by the owner. As such, patent
is a transferable property. The owner of patent, i.e. pantentee can transfer partially or fully his
patent to another person, either for consideration or without consideration. Transfer of patent can
take place in the following manners:
(i) Assignment.
(ii) Licence.
(iii) Transmission by operation of law.

Assignment (Sections 68 and 70)

According to Black's Law Dictionary assignment means the transfer by a party all of its rights or
interest in the property. It may be through sale for consideration or gift where no monetary
consideration prevails. Assignment differs from licence. In licence only limited and personal
privilege to do some particular act or acts is conferred, whereas, in assignment all rights and
privileges available to patentee (assignor) are transferred to assignee.
There can be three kinds of assignments :
(i) Legal assignment.
(ii) Equitable assignment.
(iii) Mortgage.
Legal Assignment
An assignment of an existing patent through an agreement which has been duly registered is a
legal assignment. A legal assignee has the right to have his name entered in the Register of Patents
maintained in the Controller's Office as proprietor of the patent and can thereafter exercise all the
rights conferred on him by the proprietor of patent.
For instance, A, a patentee in respect of a machine useful in the automobile industry assigns his
right in the patent to B through an agreement which is written and duly registered in the patent
office. Thereupon, B becomes the proprietor of the patent.
Equitable Assignment
Any document such as letter but not being an agreement, which is duly registered with the
Controller in which patentee agrees to give another person certain defined rights in the patent with
immediate effect, is an equitable assignment. An assignee in such a case cannot have his name
entered in the Register as the proprietor of patent. He can only have a notice of his interest entered
in the Register. He can convert the equitable assignment to legal assignment by getting a written
agreement to this effect and having it duly registered.
Mortgage
A mortgage is also a form of assignment. A mortgage is a document transferring the patent rights
either wholly or partly to the mortgagee with a view to secure the payment of a specified sum of
money. The mortgagee (a person in whose favour a mortgage is made) is not entitled to have his
name entered in the Register as the proprietor, but he can get his name entered in the Register as a
mortgagee.

Licence (Sections 84 to 94)

A licence is a permission to make, use or exercise the patented invention which would otherwise
be illegal to do so. In licence the ownership of patent remains with patentee, mere partial use is
permitted. The licence may be exclusive or non-exclusive, depending upon the degree and extent
of right conferred. Licences may be classified into two categories viz. voluntary licence and
compulsory licence.
(i) Voluntary Licence Voluntary licence is a written authority granted by the owner of the patent
to another person(s) empowering the latter to make, use, sell the patented article in the manner and
on terms and conditions provided in the licence. The terms and conditions are settled between the
patentee and the licensee. Controller or Government have no role in the matter of grant of licence.
So it is termed as voluntary licence.
(ii) Compulsory licence. (Given separately)
Registration of Assignment and Licence
Section 68 provides that the assignment of a patent shall be valid only if the assignment is in
writing and the agreement of assigning is reduced to the form of a document which embodies all
the terms and conditions governing the rights and obligations of the parties.
The High Court of Delhi in National Research Development Corpn. v. M/s ABS Plastics
Limited(2009), held that where a right under Patent is assigned or a license is accorded in favour
of someone, the same is not valid unless the same is in writing between the parties and it has been
filed in a prescribed manner with the Controller of Patents within six months from the
commencement of the Act or the execution of the documents, whichever is later. The document
when registered has effect from the date of its execution. Section 69 also provides for registration
of assignment, license etc. regarding patented matter and provides procedure for registration. It is
obvious that in the present case license agreement between the parties was not a registered
agreement; hence it had no validity in the eyes of law. In terms of Section 68, this agreement was
required to be registered and it was null and void if it was not a registered agreement. Therefore
the agreement is not enforceable.
Licences
A Patentee may be a licence, permit others to make, use or exercise, the invention which would
otherwise be illegal for them to do. A licence is not valid unless it is in writing and an application
for registration of the document embodying the terms of licence is filed with the controller. Where
there is an agreement to pay royalties at the rate mentioned for all articles made under a patent,
such agreement may in effect constitute a licence where there is an agreement to take a licence
from the patentee. The patentee may obtain an order for specific performance of the agreement. A
licence to use the patent may be granted after filing the provisional specification. Such a licence is
enforceable after the patent is granted.
Transmission by Law
Transfer of patent by operation of law occurs when the patentee dies or becomes bankrupt or, in
the case of a company, it is dissolved. On the death of the patentee, his interest in the patent passes
to his legal representative in the same manner as any other form of property. In the case of
bankruptcy or dissolution of a company, devolution of property in the patent takes place in the
same manner as in any other property.
Certain Restrictive Conditions not to be imposed
Patentees while leasing the patented article or granting licences to use the patent, sometimes devise
various forms of restraints on trade which are injurious to public interest. Some of the conditions
which are imposed on the lessees and licensees include the prohibition of the purchase of non-
patented articles from persons other than the patentee or his nominee. Payment of royalties even
after the termination of the patent and the requirements to purchase solely from the patentee non-
patented articles necessary for the use of the invention, both during the term of the patent and
thereafter are some of the other restrictions imposed. The Patents Act has, therefore, made
provisions to prevent such abuse of patent monopoly. Thus, it is unlawful to insert certain kinds
of restrictive conditions in any contract relating to the sale or lease of a patented article or a licence
to use the patent.
The restrictive conditions which cannot be imposed on a licensee in any contract for sale or lease
of patented articles or licence to manufacture or use such articles or licence to work any patented
process are provided in Section 140 of the Act as follows :
(i) to require the licensee to acquire from the licensor or the patentee or to prohibit
him from acquiring any article other than the patented article or the article made
by the patented process.
(ii) to prohibit the licensee or to restrict him to use an article other than the patented
article or the article made by the patented process which is not supplied by the
licensor.
(iii) to prohibit the licensee or to restrict him to use any process other than the
patented process.
Any such condition laid down by the patentee on a licensee shall be void.
However, a patentee who has licensed a wholesaler or retailer to sell the patented article may
prohibit them from selling his competitors' goods. He can also insist that spare parts required for
repairing the patented article leased or licensed should be purchased from him only. This is a
reasonable requirement to preserve the reputation and quality of the patented article. Besides such
a condition if observed, will avoid infringement of the patent under certain circumstances.
Transfer by Co-owners
If a patent is held in the name of more than one person, the joint patentee may work the invention
for his own benefit without accounting to his co-patentee. But as co-owner he alone cannot assign
his share of patent or grant licence without consent of the other co-owners.
The Controller on receipt of such application by one co-owner may issue appropriate directions
for sale, lease or grant of licence after hearing the other co-owners of the patent.

INFRINGEMENT OF PATENT AND REMEDIES

Introduction
The patent grants to the owner of patent, the right to prevent third parties from making, using,
offering for sale, selling or importing the products in India without the consent of the patent holder.
Any violation of the rights of patentee will constitute infringement of patent. Unlike the patent
statute in USA, the Indian Patent Act does not address the issue of infringement directly. But the
Act provides the procedure and remedies for preventing infringement.

What amounts to Infringement

Following acts may constitute infringement
(i) The colourable imitation of an invention
(ii) Immaterial variations in the invention
(iii) Mechanical equivalent
(iv) Taking essential features of the invention
A colourable variation or immaterial variation amounting to infringement is where an infringer
makes slight modification in the process or product but in fact takes in substances the essential
features of the patentee's invention.
Infringement by mechanical equivalents would occur when he uses mere substitutes for those
features so as to get the same result for the same purpose as obtained by the patentee.
In determining whether what the alleged infringer is doing amounts to an infringement of a
particular patent, three questions are involved :
(i) The extent of monopoly right conferred by the patent which has to be ascertained by a
construction of the specification particularly the claims;
(ii) Whether the alleged acts amount to making, using, exercising, selling or distributing a
product or using or exercising a method or process in the case of a process patent; and
(iii) Whether what the alleged infringer is doing amounts to an infringement of the
monopoly conferred by the patent grant.
Doctrine of pith and marrow
The pith and marrow of the invention is the essence of the invention which if taken and reproduced
in the infringed article even by incorporating a colourable variation of it within the invention, it
can be presumed that infringement has taken place. Courts apply the doctrine of pith and marrow
which means that the court is not to detect an absolute similarity between the two but is to see
whether the pith and marrow of the invention has been taken and if it has been so done, there is an
infringement.
Acts which do not amount to infringement (Sections 47 and 107-A)
Following acts shall not be considered as an infringement of patent :
(i) Import of any machine, apparatus or other articles (of which patent is granted) by or on
behalf of government (Section 47)
(ii) Manufacturing or use of patented process by or on behalf of government. (Section 47)
(iii) Manufacturing or use of patented articles or patented process by any person for the
purpose merely of experimentation or research including imparting instruction to
pupils. (Section 47)
 (iv) Import of patented drugs or medicines by the government for the purposes merely for
its own use or for distribution in any hospital or dispensary or medical institution run
or maintained by government. (Section 47)
(v) Any act of making, constructing, using, selling or importing a patented invention solely
for uses reasonably related to the development and submission of information required
under any law for the time being in force, in India, or in a country other than India, that
regulates the manufacture, construction, use, sale or import of any product. (Section
107A)
(vi) Importation of patented products by any person from a person who is duly authorized
by the patentee to produce, sell or distribute the product. (Section 107A)
Remedies (Procedural Aspects)
Indian Patent Act provides the procedure and various remedies against infringement of patent.
Jurisdiction
Section 104 provides that a suit for infringement shall not be instituted in any court inferior to a
District Court having jurisdiction to try the suit.
However, when the defendant makes a counter claim for revocation of patent, the suit shall be
transferred to the High Court because under Section 64 High Court alone has the jurisdiction to
revoke patent.
Who can sue:
(a) The patentee, including co-owner of patent.
(b) The exclusive licensee if the licence is registered.
(c) A compulsory licensee when the patentee refuses or neglects to institute proceedings.
(d) A licensee other than the above two licensees can bring an action for infringement depending
upon the terms of the contract between the licensor and licensee.
(e) Assignee, he can sue only after the application for registration of the assignment in his favour
has been filed. If a patent is assigned after the commencement of action, the assignee is to be joined
as a co-plaintiff. An assignee cannot sue for infringement which occurred prior to the assignment.
Any person who infringes the patent, may be sued for infringement. Therefore manufacturers,
importers, dealers, their servants and agents, sometimes even users of the patented articles may be
made defendants in a suit for infringement. A person who threatens to infringe may also be sued.
In the case of a company guilty of infringement, its directors cannot be personally sued for
infringement unless the evidence establishes the relationship of principal and agent between the
directors and the company.
Defences which may be set up by defendant
In addition to the grounds on which patent may be revoked.' defendant may also take one or more
of the following defences in suit for infringement.
At the time of infringement there existed a contract relating to the patent containing a condition
which is unlawful under the provisions of Section 140.
Act complained of, falls within the scope of innocent infringement, that is, the defendant was
unaware of the existence of the patent when the alleged act of the infringement occurred or done
after failure to pay renewal fee or done before the date of amendment of specification.
Remedies (Substantive Relief)
According to Section 108 if the plaintiff is able to prove the infringement by defendant, the court
may grant following reliefs :
(i) Injunction whether interlocutory or final.
(ii) Damages or Account of profits.
(iii) Delivery up or destruction of infringing goods.
Injunction
The plaintiff may at the commencement of the suit or any time during the suit, move the court for
grant of an interim injunction to restrain the defendant from committing and continuing to commit
the acts of alleged infringement.
The Madras High Court in Telernecanique & Controls (I) Limited v. Schneider Electric Industries
SA,(2002) while discussing the rationale of the injunction relief observed that, a monopoly of the
patent is the reward of the inventor. Undoubtedly, patent creates a statutory monopoly protecting
the patentee against any unlicensed user of the patented device and therefore the patent is entitled
to injunction.
Certain principles are followed by courts while granting of interlocutory injunction.
These principles are :
(a) Plaintiff must establish prima facie case in his favour.
(b) He must also establish that the balance of convenience lies in his favour. The balance of
convenience will be in favour of the plaintiff when relief given to him will not offend the interest
of the party who is alleged to have caused infringement.
Final Injunction
Such injunction is granted at the conclusion of suit. The final injunction will remain in force till
the remaining term of the patent. But when the infringement relates to a patent endorsed as
"Licence or right", no injunction will be granted if the defendant is willing to take a licence.
In M.C. Jayasingh v. Mishra Dhatu Nigam Limited (MIDHANI) and Others, (2009) a suit for
perpetual injunction to restrain the respondents from infringing Patent in any manner as regards
the Prosthesis manufactured and marketed by the appellant (Plaintiff), who is engaged in
developing and improving the concept of Limb Salvage, using Custom Prosthesis, to meet the
anatomical and functional demands of a patient after excision of bone tumors. Prosthesis is an
artificial substitute or replacement of a part of the body such as eye, facial bone, knee, leg, arm
etc. Custom Prosthesis is a procedure, by which the diseased part is surgically removed and the
skeletal defect is corrected using a metallic implant, known as Endo-Prosthesis. As a result of the
research done in this field, the appellant, along with Dr.Mayilvahanan NatarAjan, invented a wide
range of Prosthesis for limb salvage surgery for different parts of the anatomy, known as Custom
Mega Prosthesis(CMP), which is made of titanium alloy or medical grade stainless steel. The
appellant, with the guidance of Dr.Mayilvahanan, is marketing and selling the various Custom
Mega Prosthesis through another proprietary concern by the name of Arc Bio-Mechanical
Engineers, ever since 1992, by manufacturing titanium alloy made products, purchasing titanium
from the first respondent, who is the sole producer of titanium products in the country.
Dr.Mayilvahanan Natarajan is the co-patentee of the prosthesis, developed and marketed by the
appellant. Using the said monopoly, the first respondent refused to supply titanium alloy for
manufacture of medical applications.
Appellant had been supplying `CMP-KJP' to the fourth respondent, namely, Cancer Institute
(W.I.A.), Regional Cancer Centre, Adayar, Chennai, on the clinical specifications of Prof.
Mayilvahanan Natarajan. The appellant came to know through a newspaper article on 13.02.2004
in the Hyderabad edition of `The Hindu' that an operation had been done at the second respondent
by which the cancer infected bone and knee joint of an eighteen year old boy was removed and
replaced with the prosthesis developed by the first respondent's biomedical division, by name
"Apollo Midhani Prosthesis". the appellant found that the project was on a Prosthesis, which was
the absolute replica of the one invented by him, over which the appellant alone had subsisting
patent and design registration, and, only thereafter, the appellant came to know of the infringement
of his intellectual property rights over "CMP-KJP".
On noticing that respondents 1 to 4 were making, using, selling and distributing the patented
"CMP" including "CMP-KJP" by infringing his monopoly rights, the appellant caused a notice
dated 01.09.2006 to the respondents, expressing his shock on the first respondent producing and
manufacturing the imitation of "CMP" and claiming itself to have first developed such Prosthesis
in the whole of India. The appellant claimed that he was the sole manufacturer and supplier of such
technologically advanced and innovative "CMP" in the whole of India. In the circumstances, the
appellant filed the suit and, pending the same, the applications were filed for injunction, as stated
above.
The Court observed that, every prosthesis marketed is one to the requirement of specification given
by the fourth respondent, or for that matter, any institution performing the surgery. Considering
the fact that this Prosthesis is not tailor-made available off the shelf to anyone in open market, the
violation alleged of the patent rights must necessarily be seen in terms of similarity of the products
and the availability of the same in the open market to any particular customer needs. Further, the
Prosthesis necessarily has to be custom-made to suit or fit in with the needs of a particular patient.
The Division Bench of Madras High Court accepted the observation of the Single Judge that the
basic technical details would show that they are not identical, or for that matter, deceptively similar
and that the general content of the Prosthesis or the content or the functional aspect may be the
same, yet the improvisation to make it functional, vis-a-vis the patients' needs, does not confer any
such interest as an exclusive title owner on the appellant as a patentee to claim a right over the
others, hence the respondents did not violate the rights of the appellant. The division bench also
held that, the issues like the cost factor or the appellant supplying prosthesis where the first
respondent's product failed do not weigh in the matter of considering the allegation projected in
the applications for granting interim injunction. Similarities and dissimilarities of the products are
matters which have to be gone into technically only at the time of trial.
Damages or Account of Profits
Plaintiff may be awarded either of the two. Both cannot be awarded together. The damages may
be awarded to compensate for the loss or injury suffered by plaintiff due to the action of defendant.
Whereas, the account of profits is determined on the basis of actual use of patentee's invention by
infringer during the period of commission of the act or infringement. However, in cases where
infringement was committed during lapse of patent or before date of amendment of specification,
the damages or accounts of profit may not be granted.
Delivery up or destruction of infringing goods
An order for delivery up or destruction is made with a view to prevent the defendant from making
use of the infringing articles which might be in his possession. It is a discretionary order. The
property in the articles which are made in violation of a patent resides in the infringer though he
is prevented from using them.
SOME CASES
In Novartis AG v. Mehar Pharma,(2005) the Bombay High Court accepted the settled principle
that, in any matter of granting of interim injunction in relation to a patent, the party which applied
for it should satisfy that there is probability of the plaintiff succeeding on the trial of the suit and
when the patent is of a recent date, no interim injunction should be granted especially when there
is serious question as to the validity of the patent, was raised by the defendant to be tried in the
suit.
The High Court of Delhi in Standipack Pvt. Ltd. v. Oswai Trading Co. Ltd.,(2000) laid down that
no presumption of validity is attached to a patent granted by the Controller under the Act not
withstanding examination and investigation made under Sections 12 and 13 of the Act. It was also
observed that where an application is filed seeking for revocation of patent and question the
validity of it, the Court should not grant an injunction more so when serious controversy exist as
to whether or not the invention involves any new inventive skill having regard to what was known
or used prior to the date of the patent.
Mr. Justice S. Ravindra Bhat of Delhi High Court in F Hoffmann-La Roche Ltd. & Anr. v. Cipla
Limited,(2008) held that where the patent is of recent origin and its validity has not been tested,
the Court should not grant injunction based on the alleged infringement, as well as, the ratio that
mere grant of patent does not guarantee its validity. The said order of the learned single Judge was
also confirmed by the Division Bench in its order dated 24.04.2009 in FAO (OS) No.188 of 2008.
Whereas the Single Judge Bench in Bajaj Auto Limited v. TVS Motor Company Limited,(2008)
concluded that while ascertaining as to whether a plaintiff has a prima facie case or not, even
though no presumption of the validity of the patent can be drawn, after the 2005 amendment to the
Patents Act, a patent obtained by a party was certainly to be given greater significance. The
decision was pointed out to show that there is a difference in the rights of patentees after the
amendment to the Patents Act, 1970 which came into effect on 20.05.2003.
In F. Hoffmann-La Roche Ltd. v. Cipla Ltd.,(2009) Roche alleged that Cipla infringed their patent
rights over Tarceva, an 'anti cancer drug (sold as "Tarceva"). Justice Ravindra Bhat of Delhi High
court refused to grant an interim injunction on the ground that since Cipla was selling the drug at
I/3rd of the price of Roche, an injunction would have meant lack of affordable access for a large
number of cancer patients in India. . Therefore, "public interest" demanded that no injunction
(restraining order) be granted.
Roche then appealed to the Division Bench, whose order proved much more detrimental for Roche.
Not only did the appellate bench upheld the key findings of the trial judge, it went on to impose
costs on Roche for suppression of material "patent" information. It also went on to find that Roche
had not established a prima facie case of infringement, since the patent in question did not seem
to be implicated by Cipla's generic product. And in any case, the court suggested that Roche's
patent was susceptible to a serious validity attack.
Being aggrieved by the order of the Delhi Division bench, Roche approached the Supreme Court
by way of a special leave petition, stating that since the Delhi Division bench order raises very
important questions of law, the Supreme Court must admit the matter. Justice Dalvir Bhandari and
Justice M K Sharma (both formerly of the Delhi High Court) dismissed the special leave petition.
The key reason for this dismissal appears to have been the fact that the matter has anyway
proceeded to trial on final merits. Were the Supreme Court to take up this matter now, the trial
itself could be delayed. The judges therefore, while dismissing the petition also ordered that the
trial be expedited.
The defences available are that the invention is not really an invention under the meaning of the
Act that it had been obtained wrongfully in contravention of rights of somebody else really claimed
it, that it was obvious and that it had been subject matter of an earlier patent etc. All the grounds
on which a patent may be revoked may be ground of defence in suit of infringement as per section
107 of the Act.
In Lallubhai Chakubhai Jariwala v. Chimanlal Chunnilal & Co. (1936), stated that a patent may
be infringed in several ways, one of which being the use of "the invention or any colorable
limitation thereof in the manufacture of articles or by getting the invention in practice in any other
way."
In Monsanto Company v. Coromandal Indag Products (P) Ltd.(1986), the court held that what is
publically known already under the meaning of section 64, cannot be claimed to have been
infringed by the defendant.
Therefore the basic requirement is that the product or process should be inventive one, otherwise
it shall not withstand infringement proceedings or, equivalently, revocation proceedings.

Groundless threat of infringement proceedings (Section 106)

Whereas the law provides relief against infringement, the law also discourages the unjustified and
groundless threats of infringement proceedings given by a patentee or any person on his behalf.
The threat may be made directly or indirectly through letters, circulars or notification.
The aggrieved person may bring a suit against the person making groundless threat. The court may
grant following relief.
(a) A declaration to the effect that threats are unjustifiable;
(b) An injunction against continuation of threat; and
(c) Such damages, if any, as sustained by plaintiff.
The above study, thus, reveals that right of patentee is legally safeguarded and remedial measures
are provided in case of infringement. However, it may also be noted that unlike copyright or trade
mark there is no provision for criminal proceedings for infringement of patent.

Offences and Penalties under Patent

Certain acts and omissions committed by individual or the company have been declared as
offences and the provisions for punishment and/or fine have been made in the Patent Act. The
following table gives you an idea of the offences and its punishment.

Offence by company
If the offence is committed by company, every person in charge of and responsible to the company
for conduct of its business at the time of commission of the offence shall be deemed to be guilty
of offences.

MODULE 5 –OTHER IPs

DESIGN LAW

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. Inorder to bring the Design Act at par with
International Law enactment the new act came into being. Presently, design laws are maintained
by the Design Act, 2000.
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.

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]

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.

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. .

The grounds for such cancellation of registration 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 comes 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.

GEOGRAPHICAL INDICATION

Introduction
Italian Parmigiano, Mexican Tequila, French Roquefort, Bikaneri Bhujia, Kolhapuri Chappals,
Mysore Silk are all some examples of Geographical Indications and appellations of everyday life.
The Geographical Indications of Goods (Registration and Protection) Act, 1999 (GI Act), in
Section 2(e), defines the term “geographical indication” as –
“An indication which identifies such goods as agricultural goods, natural goods or manufactured
goods as originating, or manufactured in the territory of a country, or a region or locality in that
territory, where a given quality, reputation or other characteristic of such goods is essentially
attributable to its geographical origin and in case where such goods are manufactured goods one
of the activities of either the production or of processing or preparation of the goods concerned
takes place in such territory, region or locality, as the case may be.”

This is the legally accepted definition of geographical indication in India since the Act came into
force since the 15th of September, 2015.
In simpler terms, GI is a status accorded to a good which is unique to a particular region or
area, and are originated from there. These goods have a reputation for their quality. They are
associated with a sense of legitimacy and trust simply because they have the tag of belonging to
that region. For example, Basmati rice is known for its unique aroma and long grains. It is unique
to the Indo-Gangetic plains. Seven states of India, after a long drawn legal battle have been
accorded with the status of Geographical Indication (GI) in 2016.

The following types of goods are covered under the ambit of GI –

● Agricultural (example, Basmati rice)

● Natural (example, Makrana marble)
● Handicraft or of any industry (example, Kashmiri pashmina)
 ● Food stuff (example, Dharwad pedha)
This has been mentioned in Section 2(g) of the GI Act.

The abovementioned goods are easily associated with the place where they are manufactured or
grown.
Legal Aspect of Geographic Indication (GI)
Origin of GI from an International Perspective
The laws relating to GI were introduced in India after the ratification of the Agreement on Trade-
Related Aspects of Intellectual Property Rights (TRIPS). The TRIPS agreement was signed by all
the WTO member countries as a “single undertaking”. A single undertaking, for WTO, is basically
an agreement signed by all the member nations.

The TRIPS agreement sets a minimum standard of protection for goods registered under as a GI,
which is supposed to be followed by all members of the World Trade Organization (WTO). The
purpose of according the status of GI to goods, as per Article 22 (2)(b) of the agreement, is to
prevent “an act of unfair competition” and prevention of misstatement regarding the geographical
origins of a good, as per Article 22 (2)(a).

Indian GI laws and Jurisdictions

The Geographical Indications of Goods (Registration and Protection) Act, 1999, along with the
Geographical Indications of Goods (Registration and Protection) Rules, 2002 govern GI
registrations and goods.

According to Section 58(1) of the GI Act, in any case where the validity of the registration of a
geographical indication is questioned, the case would be under the jurisdiction of the Intellectual
Property Appellate Board (which is recently abolished with the President of India’s promulgation
of the Tribunal Reforms Ordinance 2021).

Further, Section 66 (1)(c) of the GI Act vests the jurisdiction of hearing the cases of infringement
upon “any court not inferior to a district court having jurisdiction to try the suit”. Section 67 of the
GI Act states that injunction, nominal damages and damages on account of profits may be awarded
as per the discretion of the judge, at the option of the plaintiff.

The Act, under Section 55, further states that “no suit or other legal proceedings shall lie against
any person in respect of anything which is in good faith done or intended to be done in pursuance
of this Act”.

Status quo Before the GI Act

Before the passing of the GI Act, any remedy for any infringement of geographical indication
rights were awarded through passing off action under tort law or under the Trade and Merchandise
Marks Act, 1958, which has been repealed and replaced by the Trade Marks Act, 1999.

Examples from India

Darjeeling Tea
The first GI ever granted in India was to Darjeeling Tea Plantation was started in the 1840’s under
the supervision of the British, as they wanted to give competition to the Chinese monopoly in the
market.

The Tea Board of India was established under the Tea Act, 1953. The tea board owns all the
intellectual property rights under the Trademarks Act, 1999, Geographical Indications of Goods
(Registration & Protection) Act, 1999 and Copyright Act, 1957. The logo and even the title,
Darjeeling Tea, have been protected by IP laws.

Basmati Rice
Basmati rice is a special type of rice, with long grains and a unique aroma which differentiates it
from other varieties of rice. It is found in the Indo-Gangetic Plains. Basmati rice has been a part
of intense GI conflict between various states, and even nations like Pakistan and the United States.

RiceTec, a Texas-based company, developed ‘Texmati’ or ‘American Basmati’, which they

patented under the United States Patent and Trademark Office (USPTO). This was challenged by
a few Indian NGOs claiming that the term “basmati” could only be used for rice grown in India
and Pakistan. After presenting all the evidence, the NGOs won, and RiceTec withdrew its key
claims.

India and Pakistan haven’t been known to agree on many issues, and GI registration of basmati
rice isn’t one of the exceptions. The Basmati Growers Association (BGA) Lahore argued that the
tag of Basmati can only be accorded to the rice grown in the territory of Pakistan. They further
argued that they had been producing the rice for a longer time, and hence, they have more right to
be accorded the GI registration. Although India and Pakistan had initially applied for a joint
Basmati GI tag, the efforts were thwarted due to the stand of the BGA.

BGA filed a case under the Intellectual Property Appellate Board (IPAB), Chennai against the
claim of Agricultural and Processed Foods Export Development Authority (APEDA) who wanted
registration for seven Indian states. IPAB “is the only tribunal in India which has a global impact”
according to their website.

The IPAB has directed the GI Registry to accord the tag of GI to Basmati rice produced in seven
states, namely, Punjab, Haryana, Himachal Pradesh, Uttarakhand, parts of Uttar Pradesh and
Jammu & Kashmir. This has been after years of legislative battles. Madhya Pradesh is still
demanding GI registration for the rice grown in some of their districts.

Is GI Relevant to Businesses or Just Communities

Most of the applicants of GI are from rural backgrounds. The tea growers of Darjeeling, whose
interests are represented by the Tea Board in legislative matters, have seen financial advantages
after Darjeeling Tea was accorded the GI status. Darjeeling tea was the first product to be accorded
the status in India.

The commercial and social advantages are interrelated in this case. The makers of the Darjeeling
tea can charge a higher price for their product as they do not have to face outside competition.
Without being accorded the status of a geographical indication, the tea growers would have to face
competitions from outside, including big companies with a lot of capital on their hands.

Most goods which apply for GI registration originate from rural areas. GI registration can also be
seen as a commercial medium for rural empowerment and employment generation.
Commercialization of a unique product leads to the product turning generic and the market prices
falling down, along with the quality in most cases. This is avoided by according the GI status.

What Are The Advantages of a Registered GI

For a Producer:
A producer of a good which has been accorded the status of a geographical indication has various
commercial advantages. The producer becomes the sole seller of the commodity, and in the case
of having a single “principal place of business” can even be said to have a monopoly.

According to rule 3 of the Geographical Indications of Goods (Registration and Protection) Rules,
2002, a “principal place of business” is basically the place from where the business regarding the
GI registered good takes place. If multiple places are occupied for the purpose of business, they
are included. The term also applies for those goods which have not been accorded the status as per
the Act.

GI registration provides the registered producer and the authorized user the exclusive right to
protect the registered GI on the specified goods. GI registration is a producer friendly legislation,
aimed at protecting the industry for unique goods, whose uniqueness exists due to their
geographical location. GI, as a type of Intellectual Property (IP), has a lot of commercial value.

For a Consumer:
A good which has a GI tag is associated with immense reputation in terms of quality and prestige.
A consumer gets value for their money when they buy a good with a GI tag, as the tag ensures that
the product has all the features associated with it. For example, the taste of real Darjeeling tea is
different from that of those trying to pass of their products as the same.

The majority of goods applying for GI Registration belong to the micro, small and medium
enterprises, which majorly originate from the rural areas. GI registration aids the enterprises to
increase their market share, which otherwise would have been dominated by the large businesses.
Hence, the consumers get authentic goods instead of generic and mass produced goods.

How to Register a Good as GI

Types of Applications:
● Ordinary – For registration of a GI in India.
● Convention – Registration of a GI, which is already recognized in another country.
● Single Class – Includes the registration of goods belonging to a particular class of goods.
● Multi Class – Includes the registration of goods belonging to multiple classes of goods.
The registration process for the GI tag begins with filing of an application for the same. The
Geographical Indications registry demands that the “application must be made in triplicate”.
● The applicants may be the producer(s) of the respective goods themselves, or any
organization or authority which have the permission to act as the agent of the producer(s).
● The application must be filed to the office of the GI registry, which is in Chennai.

The application must contain all the relevant details like –

● The details of the “principal place of business”, defined under Section 3 of the
Geographical Indications of Goods (Registration and Protection) Rules, 2002.
● Historical evidence to back the claims.
● A detailed description of the good and its usage.
● The method of production.
● Other relevant details for determining the GI status of the good.
The application will be subjected to scrutiny by the Registry and a panel of experts, which would
be designated by them.
● The applicant will have the time of one month to remedy the errors, if any.
● The Registrar is further vested with the powers to rescind the application if the errors are
not dealt with.
● Upon the acceptance of the application, the Registry will publish the same within three
months of the acceptance.
● Any person can file an opposition to the publication of the GI application within three
months (extension can be provided for another month).
After the acceptance of the application, the date of filing of the application will be the date of
registration. A certificate with the seal of the GI registry shall be issued to the applicant. Appeal
against the registration can be made to the Intellectual Property Appellate Board within three
months of the registration of the good.
Section 9 of the Geographical Indication of Goods (Registration and Protection) Act, 1999 names
a few exceptions, which cannot be registered under the GI Registry. These are the goods which –

1. May cause confusion or deceive the public

2. May be scandalous in nature
3. Are contrary to the law in force at the time
4. May hurt religious sensibilities
5. Are generic i.e. not unique

Important Points Regarding GI Registration

● A registered GI shall be valid for 10 years and can be renewed on payment of renewal fee.
● The application must be addressed to the Geographical Indications Registry, Chennai.
● The applicant must have an address for service in India.
● Generally, application can be filed by (1) a legal practitioner, (2) a registered agent.

Transfer of GI
Section 24 of the GI Act states that the GI tag cannot be transferred to any other user under any
condition. Only in case of the death of the authorized user, the rights of the GI shall “devolve on
his successor in title under the law for the time being in force”.

What is a Trademark and How is it Different From a GI

Section 2(zb) of the Trade Marks Act, 1999 says ““trade mark” means a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one person
from those of others and may include shape of goods, their packaging and combination of colors”.

A trademark is basically a symbol which is unique to a person, company, good etc. This symbol
is capable of differentiating it from other objects or persons. For example, Nike’s trademark is in
the form of a tick. The layman, and even the authorities associate that particular tick with Nike.

A trademark can be associated with objects, companies etc., while a GI can only be associated
with a particular geographical location.

Conclusion
India is a land full of diverse cultures and goods. Each state and even district has their own culture
and produce goods unique to that area. A lot of the goods originate uniquely from that area, but
not all are accorded the Geographical Indication status as per the definition under Section 2(e) of
the Act. A lot of consideration is put into the applications by the GI Registry. The recent case of
Basmati rice is a clear example of how the GI registrations affect not only our nations but others
too.
The Agreement on Trade-Related aspects of Intellectual Property Rights (TRIPS) was the
multilateral agreement which brought the issue of geographical indications into the forefront in
India. The TRIPS agreement, although very substantial and well written, has been criticized on the
basis of the fact that it doesn’t accord the same level of protection to other commodities as the
level accorded to “wine and spirits”. India was one of the countries asking for an extension to the
protection accorded under the agreement after the Uruguay Round of General Agreement on Trade
and Tariff (GATT) in 1994.

India has a very comprehensive registration process for Geographical Indications, which has
incorporated the democratic principles of our Constitution. It has ample provisions for challenging
of the registration of goods under the GI Act.

TRADITIONAL KNOWLEDGE

What is Traditional Knowledge (TK)?

Knowledge base which is developed by indigenous, local or native community has been preserved
and passed on to generations, so much so, that it becomes the identity of such community.
Traditional knowledge can be found in variety of concepts such as calculation of time, food article,
plant properties, spice uses, yoga practices etc. The most essential factor of Traditional Knowledge
is that it has ancient roots and it is often oral.

Definition of traditional knowledge

A fundamental fact is that there is no concise definition of TK and it has been defined in so many
ways depending upon the importance given to some aspects or not.
The definition given by WIPO is comprehensive enough to be taken as a definition. According to
WIPO, “Traditional Knowledge” comprises: tradition- based literary, artistic or scientific works;
performances; inventions; scientific works; performances; inventions; scientific discoveries;
designs; marks, names and symbols; undisclosed information; and, all other tradition- based
innovations and creations resulting from intellectual activity in the industrial, scientific, literary or
artistic fields.
Tradition means the following:
i. Knowledge system
ii. Creations and innovations and cultural expressions includes beliefs, practices etc.
iii. Transferred from generation to generation
iv. Restricted to territory and people
v. Constantly evolve to changing environment-not static
vi. Not restricted to any field of technology or arts.
TK can be broadly classified as Traditional Cultural Expressions (TCE) and Traditional
Knowledge relating to medicine, plant genetic resources, crafts etc. TCE includes folklore, folk
music and performances and other art forms related to performances and music. Thus TK is not
confined to any one particular field or limiting it as a matter of culture, keeping a flexible and open
ended view makes sense because TK is not frozen in time, nor can it be limited to contributions
from the previous generations.

Why Traditional Knowledge must be protected?

Need to protect traditional knowledge have increased with changing time, especially in order to
stop unauthorized and commercial misuse of such knowledge. It is important to protect the
indigenous people from such loss and also help them to preserve such ancient practices. Protection
to TK shall also promote its wider and efficient use.

Protection of Traditional Knowledge

The most difficult aspect of traditional knowledge is in its protection. There has been a lot of debate
to protect traditional knowledge under IP regime but that in itself faces a lot of challenges such as;
a) under which IP under which traditional knowledge can be protected, b) since every IP protection
is provided for a limited period of time then how will traditional knowledge have a continuous
protection. Protection of traditional knowledge is rooted in the problem of Bio-piracy. Bio-piracy
occurs when there is commercial utilization of traditional knowledge without proper authorization
of the indigenous or local people associated with such knowledge.

How to Protect Traditional Knowledge?

There are methods through which TK can be protected: a) Positive Protection, and b) Defensive
Mechanism. Positive protection means protecting TK by way of enacting laws, rules and
regulations, access and benefit sharing provisions, royalties etc. Defensive Mechanism means
steps taken to prevent acquisition of intellectual property rights over traditional knowledge.

India, for example, followed by the well-known case of USPTO, wherein patent was granted on
healing properties of turmeric and with much difficulty CSIR proved the prior existing knowledge
of such properties of turmeric with help of numerous ancient scriptures and documents, has
adopted a Defensive mechanism to protect its traditional knowledge by way of setting up a
Traditional Knowledge Digital Library (TKDL) in 2001, in collaboration between Ministry of
Ayush and CSIR.

But is TKDL adequate? The digital library, although comprising of voluminous documents and
work of Indian traditional knowledge, has its own shortcomings such as; translation problems,
disclosure of traditional knowledge as prior art is unadvantageous since it leads to public disclosure
of entire traditional knowledge which simultaneously results to fishing expeditions, further one of
the major aspect of traditional knowledge is that it is mostly passed by generations in oral manner,
therefore, a lot of TK has no documentary record and TKDL maintains no record of oral traditional
knowledge.

Adequacy of IP protection to Traditional Knowledge in India

Unlike other categories of intellectual property rights, India has no substantive act or law to protect
traditional knowledge but other IP acts contain provisions with respect to traditional knowledge
such as the Patents Act, 1970, Section 25 and Section 64, gives one of the grounds for revocation
of a patent application on the basis of traditional knowledge. Under the Copyright Act, 1957, has
not specific mention of protecting traditional cultural, literary or artistic work or folklore but
Section 31A provides for protection of unpublished Indian work, nonetheless Copyright protection
in for a limited time period and also demands certain criteria to be fulfilled, therefore under this IP
as well protection of traditional knowledge doesn't have much scope.

Past few years it has been seen that India has actively participated in TK conventions and has made
efforts to protect its TK at international level. Access to Indian TK is available at USPTO and EPO
and CSIR is day by day improving the efficiency of TK database.

Important International TK related conventions

The CBD and the 2010 Nagoya Protocol introduces the recognition and protection of TK at
international level. Article 8(j) of the CBD, requires parties are required to respect and maintain
knowledge held by indigenous communities, and promote broader application of TK based on fair
and equitable benefit-sharing. Article 16 recognizes TK as a 'key technology' for effective practices
of conservation and sustainable use of biodiversity, with procedural requirements established in
Article 15 for access to genetic resources, including those based on prior informed consent and
mutually agreed terms. The Nagoya Protocol broadens the CBD provisions relating to access and
benefit-sharing.

Call for Sui Generis Protection and its Awareness

There has been an increasing demand of Sui Generis system of Protection for traditional
knowledge since IP protection has its own downside and loopholes. Sui Generis is a Latin word
meaning 'of its own kind'. Sui generis instrument shall provide legal framework of protection of
TK, enforcement of right of indigenous communities, prevent misuse and control of TK,
provisions of ABS (access and benefit sharing) system etc.
Being a party to the United Nations Convention on Biological Diversity, we have enacted an Act
called The Biological Diversity Act 2002 to provide for conservation of Biological diversity,
sustainable use of its components and fair and equitable sharing of the benefits arising out of the
use of biological resources, knowledge and for matters connected therewith or incidental thereto.
In addition to TKDL system, India can work towards a more active approach, foremost to create
awareness and understanding among people who are till date completely unaware or have very
limited knowledge on Intellectual Property Rights as well as the term 'traditional knowledge'.

EXCLUSIVE MARKETING RIGHTS

Trade Related aspects of Intellectual Property Rights (TRIPS) Agreement under the World Trade
Organization (WTO) came into effect in 1995 mandating all the developing member countries to
bring in TRIPS-compliant national laws within ten years i.e., 2005.

India became a party to the TRIPS Agreement in April, 1994. At that time, India’s then-current
enactment of the Patent Act, 1970 directly contravened Article 27 of the TRIPS Agreement. Upon
coming into effect on January 1, 1995, TRIPS set out transitional periods for WTO members to
introduce legislation complying with the obligations under TRIPS.

For developing countries, like India, the deadline for complying with TRIPS was the year 2000.
Article 65.4 of TRIPS provided a special transitional provision for those countries that did not
grant product patents. The provision provided an additional five years (until 2005), from the initial
TRIPS transitional period, to introduce product patent protection.

India had to provide a means by which patent applications could be filed during the transitional
period. The Mailbox Provision allowed applicants to file for patents, thereby establishing filing
dates, while at the same time permitting member countries to defer granting product patents. In
addition, India also had to provide Exclusive Marketing Rights (EMRs) in exchange for the
permission to delay the grant of product patents until January 1, 2005.

EMRs are applicable where a patent is granted for the same product in another WTO member
country after 1995 (the date of entry into force of TRIPS), provided the other member country
obtained marketing approval for the product. EMRs are limited to pharmaceutical and agricultural
chemical products only. Wherein the product patents will be accepted and put in a mailbox to be
opened after 01 January 2005, but provide EMR for 5 years in the interim subject to same stipulated
conditions.
The EMR lasted for five years from the date of grant or until the date of grant or rejection of the
patent application, whichever was earlier.
The grant of EMR did not guarantee the subsequent grant of a patent, as the application could be
rejected at a later stage if the invention failed to meet the criteria for patentability laid down in the
act.
On 1st January 2005 Parliament passed the Patent (Amendment) Act, which repealed Chapter IVA.
Under Section 78 of the amendment act, all pending applications for EMR made under Chapter
IVA were to be treated as claims for patent under Section 5(2) of the 1999 act and were to be
deemed requests for examination for the grant of patents under Section 11(B)(3) of the amendment
act.