IPR Laws: Trade Marks

Act, Patent Act and

Copyright Act
 introduction

 The Trade Marks Act, 1999 has been enacted to give effect to the General Agreement
on Trade and Tariff (GATT), and creation of the World Trade Organisation from January
1, 1995; it repealed Trade and Merchandise Marks Act, 1958; The new law has come
into effect only from September 2003.

 The Act of 1958, in the context of India’s thrust to create an isolated economy to
protect and promote Indian industries, discouraged foreign trade marks. The new Act
has reversed this and given special protection to foreign trade marks.
Trade Marks Act 1999 3

 Total sections 159

 A trade mark popularly known as brand name, is an identification
symbol which may be a word, a device, a label or numeral etc.

 or a combination thereof used in the course of trade to enable

the purchasing public to distinguish one trader's goods or
services from similar goods or services of other traders.
 4

 Trade mark is a branch of Intellectual Property Right.

 A trademark includes any word, name, symbol, or device, or any

combination, used, or intended to be used, in commerce to
identify and distinguish the goods of one manufacturer or seller
from goods manufactured or sold by others, and to indicate the
source of the goods. In short, a trademark is a brand name.

 Trademark is a mark or symbol which is capable of distinguishing

the goods or services of one from those of others.
well-known trademark and
principle of trans-border reputation
 India recognizes the concept of well-known trademark and
principle of trans-border reputation;

 well-known trademark means mark that has become so

substantial segment of public which uses such goods or
receives such services that use of such a mark in relation to
other goods and services is likely to be indicating a connection
between the two marks;
Changes in the new Act
 A trade mark could not be registered unless it had goods
bearing the mark in the Indian market. Due to import
restrictions, the goods of foreign firms could not be in the
Indian market and, thus, the marks could not be registered.

 The new Act has taken away this constraint for ‘well known
trade mark’.

 Trade marks which are well known in any part of the world, can
be registered even if there are no goods in the Indian market.
Further, no Indian mark can be registered if it detracts in any
manner from the value of a ‘well known trade mark’.
Registered trade mark not used
for five years
 A registered trade mark, not used for five years, could be
removed from the register. This provision has been diluted in
favour of foreign trade marks.

 The new Act has removed constraints.

benefits of trademark registration 8

 Trademark registration protects the goodwill of a business ..

 and also helps to identify and distinguish the source of the

goods or services of one party from those of others.

 Trademark registration is an evidence of ownership of the

trademark and also confirmation of the constructive notice
nationwide issued of the trademark owner's claim on it.

 Trademark registration in India can also be used as a basis for

obtaining registration in foreign countries.
Are all Trade Marks registrable 9

 No.

 It is not possible to register a trademark which is confusable with a

trademark of another trader who has been using the trademark earlier
for the same goods or a trademark or which describes the character or
quality of the goods which other traders may reasonably want to use in
the course of their business.

 The mark should not conflict with a trademark already registered or

pending registration in respect of similar goods. Also some marks are
prohibited from registration under the directions of the Government.
 Judicial perspective on trademarks

 In order to come to the conclusion whether one mark is deceptively similar to another
the broad and essential features of the two are to be considered.
 They should not be placed side by side to find out if there are any differences in the
design and if so whether they are of such a character as to prevent one design from
being mistaken for the other.
 It would be enough if the impugned mark bears such an overall similarity to the
registered mark as would be likely to misled a person usually dealing with one to
accept the other if offered to him; Mumtaz Ahmed v. Pakeeza Chemicals; AIR 2003 All
114.
 11

 Can the ownership of a trademark be assigned or

transferred from one person to another?
 Yes. A registered mark, or a mark for which an application to
register has been filed is assignable
Reynolds ‘Now’ Cigarette Case 12

Reynolds was an American Tobacco Company who had the

registration of its trade mark NOW in nearly 80 countries including
India. It got the mark registered in India in July 1975 but could not
import cigarettes into India. There was a ban on the import of
cigarettes since around 1957.

The cigarette sold in large number of countries in the world. The

India Tobacco Company (ITC) launched a brand of cigarette
named ‘NOW’ and applied for registration.
Reynolds ‘Now’ Cigarette Case 13

It was refused registration as the mark was already registered

with Reynolds.
The ITC applied for removal of NOW from the register claiming
that the registration was without any intention of using the mark
in relation to goods.
Reynolds argued that there was a genuine intention of using the
mark while registering it.
The intention was that cigarettes could be imported as and when
the Government of India relaxed its policy.
The Delhi High Court relied on an earlier ruling of the Supreme
Court
Reynolds ‘Now’ Cigarette 14

Case
The intention to use a trade mark sought to be registered must be,
therefore, genuine and real ... the fact that the mark was thought to
be something which some day might be useful would not amount to
any definite and precise intention at the time of registration to use
that mark.

The intention to use the mark must exist at the date of the
application for registration and such intention must be genuine and
bona fide.

The Court, thus, ruled in favour of the ITC. The case was significant,
as the restrictions imposed by the government could not be taken
as the basis for not being able to have the ‘intention’ to put goods
in the market at the time of registration
The New Trade Mark Act 15

 The new law has several features which take stock of

developments and changes in the business practices.

 This includes inclusion of service marks, increasing period of

validity from 7 to ten years(section 25), and expanding the
scope of trade mark infringement.

 However, the Act has significant reversals in giving protection

to foreign trade marks
Who can file an application for 16

trademark registration
 The application must be filed in the name of the owner of the
trademark; usually an individual, corporation or partnership.

 Generally, the person who uses or controls the use of the

mark, and controls the nature and quality of the goods to
which it is affixed, or the services for which it is used, is the
owner of the mark.
What rights do registration of the mark bring
17

 The exclusive right to use the trade mark in relation to the

goods for which it is registered and the right to take legal
action against others who may infringe the registered trade
mark or one resembling it in relation to similar goods.

 The registration of a trade mark confers on the registered

proprietor of the trade mark the exclusive right to use the trade
mark in relation to the goods in respect of which the trade
mark is registered and to obtain the relief in respect of
infringement of the trade mark by others.
Is Registration of a Trade Mark 18

compulsory
 No. Registration of a trade mark is not compulsory, but without
registration the owner of a trade mark cannot bring an action
for infringement to protect his mark if it is used by others
(s.27).

 Suing for infringement of a registered trade mark is much

simple than launching a common law action for passing off to
protect an unregistered trade mark since the owner of a
registered trade mark can base his case simply upon the fact
that his mark has been registered.
What trademarks may not be 19

registered
 Trademark, which is identical to or deceptively similar to a
trademark, which is already registered or has already been
applied for in the name of a different proprietor in respect of
the same goods or description of goods, may not be registered.

 Also trademark the use of which would be likely to deceive or

cause confusion; the use of which would be contrary to any law
in force;

 which comprises or contains scandalous or obscene matter or

any matter likely to hurt the religions susceptibilities of any
class or section of the citizens of India ; may not be registered.
What trademarks may not be 20

registered
 According to its ordinary signification, the words standing for
geographical names or a surname or a personal name or any
common abbreviation thereof or the name of a sect, cast or
tribe in India will not be registered as trademarks.

 Domain name of there that of trademarks owner will also not be

registered for trademark.
trademark registration 21

 How long does a trademark registration last?

A trademark registration is valid for ten years from the date of
filing if obtained. You have to apply for renewal during this time-
period in every decade w.e.f. said date.

 Is a trademark registration valid outside India as well?

 No. Certain countries, however, do recognize a trademark
registration in India as a basis for registering the mark in those
countries.
Organisational structure for administration of
trademark in India

 The Trade Marks Registry is a subordinate office under the

Department of Industrial Development, Ministry of Industry,
Govt. of India. It is headed by the Controller General of Patents,
Designs and Trade Marks.

 The Head Office of the Trade Marks Registry is located at

Mumbai with branches at New Delhi , Chennai, Calcutta and
Ahmedabad.

 The Head Office of the Trade Marks Registry, Mumbai is headed

by the Joint Registrar of Trade Marks. The branch offices are
headed by the Deputy/Assistant Registrar of Trade Marks.
Opposition to registration sections 23
20 & 21
 When an application for registration of a trade mark has been accepted whether
absolutely or subject to conditions or limitations,

 the Registrar shall, as soon as may be after acceptance, cause the application as
accepted together with the conditions or limitations if any, subject to which it has
been accepted, to be advertised

 Any person may, within three months from the date of the advertisement
or re-advertisement of an application for registration or within such further period,


 not exceeding one month in the aggregate, as the Registrar, on application

made to him in the prescribed manner and on payment of the prescribed fee,
allows, give notice in writing in the prescribed manner to the Registrar of
opposition to the registration.
Opposition to registration sections 24

20 & 21
 The registrar shall, after hearing the parties, if
so required,
 and considering the evidence,
 decide whether and subject to what conditions
or limitations, if any,
 the registration is to be permitted, and may
take into account a ground of objection
whether relied upon by the opponent or not.
Registration Section 23 25

 When an application for registration of a trade mark has been accepted

and either----
 (a) the application has not been opposed and the time for notice of
 opposition has expired or
 (b) the application has been opposed and the opposition has been
decided in favour of the applicant.
 the Registrar shall, unless the Central Government otherwise directs,
register the said trade mark and the trade mark when registered shall be
registered as of the date of the making of the said application and that
date shall, subject to the provisions of section 154, be deemed to be the
date of registration.
Toshiba Corporation v. Toshiba
Appliances Company, 1994
 An Indian company styled itself as Toshiba Appliances Co. and
proceeded to use trade name ‘Tosiba’ for electric appliances.

 The Toshiba Corporation of Japan objected to this

(mis)appropriation.

 Toshiba Corporation, like several other foreign corporations, in

the context of import restrictions prevailing in India till 1990s,
could not put its goods in the Indian market.

 The Calcutta High Court in 1993, with reference to the trade

mark law in India, ruled in favour of the Indian company
Toshiba Corporation v. Toshiba
Appliances Company, 1994

For, however, big the foreign market

of a trader might be, and however
famous his trade mark might be all
over the world,

yet to qualify for use of the mark in

relation to the goods within our
Trade and Merchandise Marks Act of
1958, such use must be made in
Toshiba Corporation v. Toshiba
Appliances Company, 1994

While the Calcutta High Court was pronouncing its judgment, an

entirely opposite scheme of things was already put in place
through the General Agreement on Trade and Tariff (GATT), of
which India was a signatory.

The position in Toshiba case represents India’s attempts to build a

closed economic system based on promotion of local industries.
GATT required India to make legislation to give strong protection
to foreign trade marks.
Enacted in 1999..

A Trade Marks Bill, to give effect to the requirements of GATT,

was tabled in the Parliament in 1995 itself. The bill could not be
passed due to the dissolution of the Parliament.

It finally got enacted in 1999 and has come into effect from
September 2003.
 S. 134. Suit for infringement, etc., to be instituted
30
before District Court.—

 (1) No suit—

 (a) for the infringement of a registered trade mark; or

 (b) relating to any right in a registered trade mark; or

 (c) for passing off arising out of the 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 any court inferior to a District Court having jurisdiction to
try the suit.
 31

 Intellectual Property Appellate Board (IPAB) has been constituted by a Gazette

notification of the Central Government in the Ministry of Commerce and Industry on
15th September 2003 to hear appeals against the decisions of the Registrar under
the Trade Marks Act, 1999 and the Geographical Indications of Goods (Registration
and Protection) Act, 1999.

 IPAB has its headquarters at Chennai and shall have circuit sittings at Chennai,
Mumbai, Delhi, Kolkata and Ahmedabad.

 The Hon’ble JUSTICE MANMOHAN SINGH is the Chairman of the Intellectual

Property Appellate Board, Chennai.
 32

 In respect of which trade Marks matters appeal lies to the IPAB?

 Appeal from an order or decision of the Registrar of Trade Marks can be filed before the
IPAB.

 In respect of which trade mark matter can original application be filed

before IPAB?
 i)                    Original application for rectification of the Register of Trade Marks under Section 47
or 57 of the Trade Marks Act, 1999 can be filed before IPAB.
 ii)                  Also original application for rectification of the register under Section 125 of the
Trade Marks Act, 1999 can be filed before the IPAB.
 The Patent Act,1970

 The law relating to patents is contained in the Patents Act, 1970, hereinafter referred
to as the Act.

 The Act describes the procedure for the grant of patent and protects the rights of the
patentee against infringement. The Act came into force from 21-9-1970. It has been
amended in 1999, 2002 and again in 2005.

 Total section 160

 The Patent Act,1970

 The fundamental principle of patent law is that a patent is granted only

for an invention which must be new and useful.

 That is to say, it must have novelty and utility. It is essential for the validity of a
patent that it must be the inventor’s own creation as opposed to mere
verification of what was already known before the date of the patent.

 Mere collection of more than one integers or things, not involving the exercise of
any inventive faculty does not qualify for the grant of a patent.
The Patent Act,1970 35

 The Act states that a “patent” means a patent for any invention
granted under the Act.S.2(1)(m)

 It can also be defined as “a grant from the government, which

confers on the grantee, for a limited term, the exclusive privilege of
making, selling and using an invention and also authorising others to
do so.

 Thus a patent is a protection given to a patentee for his invention for

a limited term by the Government in consideration of his disclosing
the invention
The Patent Act,1970 36

 Term of every patent in India is 20 years

from the date of filing of patent
application, irrespective of whether it is
filed with provisional or complete
specification;
What are not Inventions
 S.3 What are not inventions.—The following are not
inventions within the meaning of this Act,—
 (a) an invention which is frivolous or which claims
anything obviously contrary to well established natural
laws;
 (b) an invention the primary or intended use or
commercial exploitation of which could be contrary
public order or morality or which causes serious
prejudice to human, animal or plant life or health or to
the environment;
 (c) the mere discovery of a scientific principle or the
formulation of an abstract theory or discovery of any
living thing or non-living substance occurring in nature;
What are not Inventions

 (d)
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.
What are not Inventions

 (e) a substance obtained by a mere

admixture resulting only in the
aggregation of the properties of the
components thereof or a process for
producing such substance;

 (f) the mere arrangement or re-

arrangement or duplication of known
devices each functioning independently
of one another in a known way;
What are not Inventions
 (h) a method of agriculture or horticulture;

 (i) 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.

 (j) 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) a mathematical or business method or a computer programme

per se or algorithms;
What are not Inventions
 (l) a literary, dramatic, musical or artistic work or any other
aesthetic creation whatsoever including cinematographic works and
television productions;

 (m) a mere scheme or rule or method of performing mental act or

method of playing game;

 (n) a presentation of information;

 (o) topography of integrated circuits;

 (p) an invention which in effect, is traditional knowledge or which is

an aggregation or duplication of known properties of traditionally
known component or components.
 Application for Patents (s.6-
11)
 A patent application can be made by any of the following persons either alone or
jointly:
 a) True and first inventor
 b) Assignee of (a)
 c) The legal representative of (a) or (b) after their death

 Every application for a patent shall be for one invention only and on a prescribed form.

 It shall be filed in the patent office with provisional or complete specifications. The Act
also provides for international application under the Patent Cooperation Treaty, for a
patent.
 Publication and Examination of Application
(S.11-21)

 Every application of patent shall be published. When a request for examination is

made by the applicant, the Controller shall refer the application and the specifications
to an examiner for making a report to him.

 The examiner can come to the conclusion whether the invention has already been
published or claimed or is the subject matter of existing patent.

 Controller can make objections, which the applicant shall rectify.

 Patent office, Controller General
and examiners
 The patent office is headquartered at Kolkata with branches in Chennai, New Delhi
and Mumbai, but the office of the CGPDTM is in Mumbai. The office of the Patent
Information System is at Nagpur.

 The Controller General, who supervises the administration of the Patents Act, the
Designs Act, and the Trade Mark's Act, also advises the Government on matters
relating to these subjects.
 Patent office, Controller General and
examiners
 The Indian Patent Office has 75 Patent Examiners, 70
Assistant Controllers, 7 Deputy Controllers, 1 Joint Controller,
and 1 Senior Joint Controller, all of whom operate from four
branches.

 Although the designations of the Controllers differ, all of them

(with the exception of the Controller General) have equal
authority in administering the Patents Act.
 Patent office, Controller General
and examiners
 An Indian Patent Examiner is mandated to search for prior art and for objections
under any other ground as provided in the Patent's Act, then to report to the
Controller, who has the power to either accept or reject Examiners' reports.
controllers are empowered by statute either to accept or refuse their
recommendations.

 This means that only Controllers have the power to grant or refuse patents in India.
 Opposition Proceedings to Grant of Patents
(S.25-28)

 Where an application for a patent has been published but a patent has not been
granted, any person may, in writing on specified grounds give, notice of opposition to
the Controller against the grant of patent.

 At any time after the grant of patent but before the expiry of one year from the date
of publication of grant of a patent any person interested may give notice of opposition
to the Controller on certain specified grounds only.

 Patent opposition in India can be done, either before the patent is granted, by

filing pre-grant opposition by representation, or after the grant of the patent within a
year, by filing a post grant opposition.
 Opposition Proceedings
 Opposition Board is constituted by the Controller consisting of three members. One
of them shall be chairman.

 The Opposition Board conducts the examination of the notice of opposition along with
documents such as statements and evidences, and submits a report with reasons on
each ground taken in the notice of opposition with its joint recommendation within
three months from the date on which the documents were forwarded to
them.

 The Opposition Board decides the issues after giving reasonable opportunity of
hearing to both the parties. The Opposition Board can order to either maintain or
amend or revoke the patent.
 Grant of Patents and Rights Conferred
Thereby (s.43-53)

 a)Grant of Patent: Where the application for the patent is

accepted, then the Controller shall grant the patent.

 The date of the grant of patent is entered in the register

when the patent is granted, the application, specification and
other documents related to the patent shall be open for
public inspection.
Grant of Patents and Rights
Conferred Thereby (s.43-53)

 b) Date of Patent: Every patent shall be dated as of

the date on which the application for patent was
filed.
 The Patent Act, 1970 51

What can amount to infringement

 (1)   The colourable imitation .of an invention.

 (2)   Immaterial variation in the invention.

 (3)   Mechanical equivalents.

 (4)   Taking essential features of the invention.

 All the above acts often overlap each other when an infringement of a patent or process
occurs.
 The Patent Act, 1970 52

 Action of Infringement
Whenever the monopoly rights of the patentee are violated, his rights are secured
again by   the   Act   through   judicial   intervention.  

 The   patentee   has   to   institute   a   suit  for infringement.  The relief’s  which may
be awarded in such a suit are –
(1)   Interlocutory/ interim injunction.
(2)   Damages or account of profits.
(3)   Permanent injunction.
 WTO and Patents
 Patent Act,1970 made a distinction between a product patent as opposed to process
patent;

 invention can be either a process or a product;

 at times, such as in a watch or car it is product which is invention;

 however, antibiotics are chemical substances, the process of making the substance is
in itself, an invention;
 WTO and patents

 As a result, in case of medicines and chemicals, one would have a product patent as
well as process patent; the Indian law did not permit product patent to be given in
case of certain products;

 GATT required that distinction between product and process patent be done away
with; it required that product patent be allowed on all new products; patent Act has
been amended to bring this into effect from January 1, 2005
 The Patent Act,1970
 The most prominent and controversial change of the 2005 Amendment has been
the deletion of section 5 of the Act, thereby paving the way for product patents in
the area of pharmaceutical and other chemical inventions.

 Section 5 of the Act (as it stood after the 2002 amendments) had provided that, in
the case of inventions being claimed relating to food, medicine, drugs or chemical
substances, only patents relating to the methods or processes of manufacture of
such substances could be obtained.
 The Patent Act,1970

 Beforethis Amendment in the Act, Product Patent was not

granted on the inventions related to drugs, foods and
chemicals and only process patents were granted on these
inventions.

 reverse engineering mechanism was highly used to develop

the same medicine and drugs with slightly or substantially
different process.
 57

 This
copycat business helped a few pharmacy companies,
to grow into global players and made medications
cheaper.

 The pharmacy MNCs were forced to watch Indian

companies eat into their market share as Indian
companies developed same medicine at much lower cost
because of relatively lower investment in R&D.

 2005 Amendment paved the way for product patents

The Copyright Act 1957 58

 Introduction
 Total sections 79
 Copyright is about the right to copy. It is based on the principle that
people who produce creative work like poems, novels have a right to
decide how their works can be reproduced.

 It is relevant to mention that copyright is not related to ideas, but to

their expression. Law relating to copyright is contained in the Copyright
Act, 1957; It extends to the whole of India and came into force on 21-1-
1958.
The Copyright Act 1957 59

 This Act has been amended six times till date since then, i.e., in
1983, 1984, 1991, 1994, 1999 and 2012
 The main reasons for 2012 amendment to the Copyright Act,
1957 include to bring the Act in conformity with WCT;

 to protect the Music and Film Industry and address its

concerns; to address the concerns of the physically
disabled and to protect the interests of the author of any
work; Incidental changes; to remove operational facilities;
and enforcement of rights.
Amendments to the Copyright Act 60

 Some of the important amendments to the Copyright Act in 2012 are

extension of copyright protection in the digital environment such
as penalties for circumvention of technological protection measures and
rights management information,

 and liability of internet service provider and introduction of

statutory licences for cover versions and broadcasting
organizations;

 ensuring right to receive royalties for authors, and music

composers, exclusive economic and moral rights to performers,
Amendments to the Copyright Act 61

 equal membership rights in copyright societies for

authors (A copyright society is a registered collective
administration society under Section 33 of the Copyright Act,
1957; Such a society is formed by authors and other owners; The
minimum membership required for registration of a society is
seven;
 A copyright society can issue or grant licences in respect of any
work in which copyright subsists or in respect of any other right
given by the Copyright Act)
 and other right owners and exception of copyrights for physically
disabled to access any works.
WIPO Copyright Treaty 62

 The WIPO Copyright Treaty (WCT) is a special agreement under the Berne
Convention for the Protection of Literary and Artistic Works (1886) that
deals with the protection of works and the rights of their authors in the
digital environment.


Copyright Office and Copyright Board(S.9-12
of Copyright Act,1957)

 The Central Government has established a Copyright Office under the

control of Registrar of Copyrights(S.9). The Central Government has also
constituted a Copyright Board(S.11).
 The Registrar of Copyrights is the Secretary of the Board. The Copyright
Board consists of a Chairman and between 2 to 14 members.
 Chairman of the Copyright Board shall be a person who is, or has been, a
Judge of a High Court or is qualified for appointment as a Judge of a High
Court
 The Board functions through Benches consisting of 3 members. The
Copyright Board shall be deemed to be a civil court.
 64

 S.13
 Copyright subsists throughout India in the following classes of work:
 i. Original literary, dramatic, musical and artistic works.
 ii. Cinematograph films.
 iii. Sound recordings.
 ‘Literary works’ include computer programmes, tables and
compilations including computer databases.
 The term ‘dramatic works’ includes any piece of recitation,
choreographic work or entertainment in dumb show or acting.
 The words ‘musical works’ mean a work consisting of music and
includes any graphical notation of such work. A painting,
sculpture, drawing or works of architecture and photograph are
included in ‘artistic works’.
 e) Term of Copyright:
 i. The term of the copyright in any literary, dramatic, musical or artistic work
(other than a photograph) is:

 a. If published with in the lifetime of the author until 60 years from the
beginning of the calendar year next following the year in which the author
dies (S.22).

 b. If published anonymously or pseudonymously(written under a false

name), until 60 years from the beginning of the calendar year next following
the year in which the work is first published. If, however, the identity of the
author is disclosed before the expiry of the said period, then copyright shall
subsist as per ‘a’ above (S.23).
 c. In posthumous works, until 60 years from the beginning of the
calendar year next following the year in which the work is first
published (S.24).

 ii. The term of the copyright in case of a photograph,

cinematograph film, sound recording, government work, work of
public undertaking and the works of an international
organization, shall subsist until 60 years from the beginning of
the calendar year next following the year in which the work is
first published (S.25-29).
 67

 Indian Performing Rights Limited v Hello FM Radio (Malar publications

Limited).
 FACTS:
According to this case the Indian Performing Rights Society Limited (IPRS) secured an
injunction from the Delhi High Court against Hello FM Radio (Malar Publications Limited). 

The defendants were broadcasting the songs without obtaining licenses from the Indian
Performing Rights Society Limited (IPRS).

In this case IPRS wanted either Hello FM Radio (Malar Publications Limited) should obtain
license or have to stop broadcasting the songs, or both.

HELD:
In this case the Delhi High Court granted the injunction. By restricting the Hello FM Radio
from playing music without obtaining license from the Indian Performing Rights Limited
(IPRS). 
R.G. Anand vs M/s Delux 68

Films and others (AIR 1978

SCRG

1613)
Anand v. Delux Films, (AIR 1978 SC 1613) is a landmark
judgement of the Supreme Court of India in the area
of copyright law. The case deals with a copyright infringement suit
against the movie New Delhi made by Mohan Sehgal in 1954.

 The plaintiff R.G. Anand, contended that it was modeled on the plot
of a play Ham Hindustani written and produced by him.

 The plaintiff wrote the play Ham Hindustani and it soon became

very popular. In 1954, the defendant Mohan Sehgal sent a letter to
the plaintiff that he wishes to make a movie based on the play. The
plaintiff met the defendant and discussed the entire play.
R.G. Anand vs M/s Delux Films and others 69
(AIR 1978 SC 1613)

 He heard the play from Mr. Anand, in his office. Mr. Anand did not receive any
further communication from Mr. Sehgal. Thereafter, Mr. Sehgal announced the
production of a film ‘New Delhi’.

 The picture was released in Delhi in September, 1956. From comments in the
press, Mr. Anand felt that the film was very much like his play, Hum Hindustani.

 Thereafter, Mr. Anand himself saw the picture and felt that the film was entirely
based on his play.

 He felt that Mr. Sehgal had dishonestly imitated the play in the film and violated
his copyright. He, therefore, moved the court and the case finally came before
the Supreme Court.
R.G. Anand vs M/s Delux Films and others 70
(AIR 1978 SC 1613)

 The opposite party (Delux Films) claimed that they had communicated to Mr.
Anand that the play might have been all right for the amateur stage, but it
was too inadequate for the purposes of making a full length commercial
motion picture.

 The key argument of the opposite party was that there could be no
copyright on the subject or idea of provincialism. Any one can adopt it in his
own way. They claimed that the motion picture was quite different from the
play. ‘Hum Hindustani’ in its content, spirit and climax.
R.G. Anand vs M/s Delux Films and others 71
(AIR 1978 SC 1613)

 Some similarities could be explained by the fact that both were based
on the idea of provincialism.

 Thus the position appears to be that an idea, principle, theme, or

subject matter or historical or legendary facts being common property,
cannot be the subject matter of copyright of a particular person.

 It is always open to any person to choose an idea as a subject matter

and develop it in his own manner and give expression to the idea by
treating it differently from others.
R.G. Anand vs M/s Delux 72

Films and others (AIR 1978

SC
Where1613)
two writers write on the same subject, similarities are bound to
occur because the central idea of both are the same but the similarities or
coincidences by themselves cannot lead to an irresistible inference of
plagiarism or piracy.

 The court found that there had been no copyright violation in that case. -
R.G. Anand vs M/s Delux Films and others (AIR 1978 SC 1613).
When copyright infringed 73

Civil Remedies (S.54-62)

The owner of copyright can sue in the district court having jurisdiction
and shall be entitled to remedies such as injunction, damages.
Offences (S.63-73)
 Any infringement of copyright is punishable with imprisonment of not
less than 6 months but may extend to 3 years or fine
Case -
 The copyright exists whether the registration is done or not, and the
registration is merely a piece of evidence as to when a certain author
started claiming copyrights in some artistic or some other work. -
Glaxo Operations UK Ltd. vs Samrat Pharmaceuticals (AIR 1984 Del
265).
S.51 When copyright infringed 74

 Copyright in a work shall be deemed to be infringed-

 (a) when any person, without a licence granted by the owner of
the copyright or the Registrar of Copyrights under this Act or in
contravention of the conditions of a licence so granted or of
any condition imposed by a competent authority under this
Act-
 (i) does anything, the exclusive right to do which is by this Act
conferred upon the owner of the copyright, or
 (ii)permits for profit any place to be used for the
communication of the work to the public where such
communication constitutes an infringement of the copyright in
the work, unless he was not aware and had no reasonable
ground for believing that such communication to the public
would be an infringement of copyright; or
S.51 When copyright infringed 75

 (b) when any person-

 (i) makes for sale or hire, or sells or lets for hire, or by way of
trade displays or offers for sale or hire,
 or
 (ii) distributes either for the purpose of trade or to such an extent
as to affect prejudicially the owner of the copyright, or
 (iii) by way of trade exhibits in public, or
 (iv) imports into India, any infringing copies of the work
Infringement of Copyright (S.51-53A) 76

 (S.52) The following acts shall not constitute an infringement of

copyright :
 a fair dealing with a literary, dramatic, musical or artistic work [not
being a computer programme] for the purposes of-
 a) Private use including research.
 b) Criticism or review.
 c) Computer programme - making copies for the purpose for which it
was supplied or make backup copies.
 d) Reporting current events in a newspaper, magazine or by broadcast
or in a cinematograph film, or by means of photographs.
 e) For judicial proceedings.
Infringement of Copyright (S.51-53A) 77

 f) In any work prepared by the Secretariat of a Legislature exclusively

for the use of its members.
 g) Copy made in accordance with any law.
 h) Reading in public of any reasonable extract from a published literary
or dramatic work.
 i) Along with non-copyright matter, for the bonafide use of educational
institutions.
 j) By a teacher or pupil in the course of instruction or as a part of
question or answer in examination.
 k) Recording to be heard in public by utilising it in an enclosed room.
 l) Any bonafide religious ceremony held by the Central or State
Government or any Local Authority.
 78

Thank You