BAL8.1 Course Outline Jan 2023
BAL8.1 Course Outline Jan 2023
Course Outline
Course Instructor:
Dr. Divita Pagey
Assistant Professor of Law
January 2023
(Strictly for Private Circulation)
INTELLECTUAL PROPERTY RIGHTS
Semester–VIII January –May 2023
Course Code BAL8.1
Course Credit 4
Maximum Marks 100
Teaching Hours 64
Presentation Hours 12-15
Medium of Instruction English
Course Compulsory
Introduction
Today’s economy is known as knowledge-based economy. With the introduction of
globalisation, the trade policies of India have also been changed. Intellectual property rights
(IPR) have been defined as ideas, inventions, and creative expressions based on which there
is a public willingness to bestow the status of property. IPR provide certain exclusive rights
to the inventors or creators of that property, in order to enable them to reap commercial
benefits from their creative efforts or reputation. There are several types of intellectual
property protection like patent, copyright, trademark, etc. Patent right is recognition for an
invention, which satisfies the criteria of global novelty, non-obviousness, and industrial
application. IPR is prerequisite for better identification, planning, commercialization,
rendering, and thereby protection of invention or creativity. Each industry should evolve its
own IPR policies, management style, strategies, and so on depending on its area of specialty.
Pharmaceutical industry currently has an evolving IPR strategy requiring a better focus and
approach in the coming era.
It is obvious that management of Intellectual Property and IPR is a multidimensional task
and calls for many different actions and strategies which need to be aligned with national
laws and international treaties and practices. It is no longer driven purely by a national
perspective. Intellectual Property and its associated rights are seriously influenced by the
market needs, market response, cost involved in translating intellectual property into
commercial venture and so on. In other words, trade and commerce considerations are
important in the management of IPR. Different forms of IPR demand different treatment,
handling, planning, and strategies and engagement of persons with different domain
knowledge such as science, engineering, medicines, law, finance, marketing, and economics.
Each industry should evolve its own IPR policies, management style, strategies, etc.
depending on its area of specialty. Pharmaceutical industry currently has an evolving
Intellectual Property strategy. Since there exists the increased possibility that some IPR are
invalid, antitrust law, therefore, needs to step in to ensure that invalid rights are not being
unlawfully asserted to establish and maintain illegitimate, albeit limited, monopolies within
the pharmaceutical industry. Still many things remain to be resolved in this context.
The course ‘Intellectual Property Rights’ has been designed for the eighth semester,
B.A.LL.B. (Hons.) students, to understand the basic jurisprudence of protecting the
Intellectual Property; its fundamental principles and various types. Special emphasis would
be given to Copyrights, Patents, Trademarks, Designs and Geographical Indications and
other upcoming aspects of Intellectual Property would also be introduced to the students,
such as the interface of Intellectual Property Rights with Competition Law. Students will be
introduced to the International Instruments with specialised types at the appropriate stages
while covering the procedure for registration of Intellectual Property. The subject covers
basics of intellectual property such as nature and extent of rights which the IPR holder gets
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and how the Indian judiciary has interpreted the provisions for maintaining a balance
between intellectual property rights and right of the society.
Course Objectives
With the aforementioned background, the objectives of this course are to:
• Develop a conceptual understanding about the different types of Intellectual Property,
their qualification and protection available to each;
• Analyse the rationale behind protection of intellectual property and the different
international conventions with respect to intellectual property;
• Understand the nature and scope of protection, the rights accrued, and infringement of
copyrights in addition to the concept of fair dealing;
• Examine the essential elements of patent protection along with the filing procedures and
remedies on infringement of patents;
• Critically analyse the concept of distinctiveness of trademarks with the provisions
relating to registration of marks, infringement and passing off; and
• Explain the nature of Intellectual Property protection extended to industrial designs,
geographical indications, plant varieties and traditional knowledge.
Teaching Methodology
The course will be taught by blending of lecture-cum-discussion and case method. The
students would be informed in advance the topic for discussion and the topic of
project/assignment to be prepared. Further, students would be engaged in the class in group
exercise and simulations. Students are also required to undertake research to develop
independent thinking. Such research on an assigned topic and preparation of a project report
would be supervised by the faculty. In the classroom every student is required to present his/her
topic and to have his/her doubt cleared through discussion. The teacher will be helping and
guiding the students in their pursuits of legal learning.
Case Law Reporter/Journal
The case law reporters like AIR (All India Reporter) from Nagpur and SCC (Supreme
Court Cases will be required to be used by students. Apart from these journals like Journal of
Intellectual Property Rights (JIPR), International Journal of Intellectual Property Rights
(IJIPR), and the WIPO Journal shall also be used. These journals are available in print as well
as in CD ROM (electronic form) in the University Library Some of the journals of
international reputes can also be accessed from the database provided by the university like
Jstore; LexisNexis, West Law data base etc.
Course Textbooks
Books are very important when it comes to learning about any new subject. The preferred
books on Intellectual Property Rights are Elizabeth Verkey, INTELLECTUAL PROPERTY
LAW & PRACTICE, David I. Bainbridge, INTELLECTUAL PROPERTY RIGHTS, Lionel
Bently and Brad Sherman, INTELLECTUAL PROPERTY LAW and Cornish, Llewelyn &
Aplin, INTELLECTUAL PROPERTY: PATENT, COPYRIGHT, TRADE MARKS &
ALLIED RIGHTS.
Course Evaluation Method
The Course is assessed for 100 Marks in total by a close book application-based
examination system. There shall be a Mid-Semester Exam for 20 Marks and End Semester
Exam for 50 Marks. 25 Marks are allotted for the Project work which includes 20 Marks for
written research work and 5 Marks for presentation of Project. The question papers shall be
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designed on a decided or under-trial case based; therefore, students are advised to take
classroom exercise seriously and to develop their own application base skills.
Course Outcomes
On completion of the Course the students shall gain an appreciation of the theories and
philosophy behind protection of Intellectual Property. They shall understand the provisions of
law relating to the different types of intellectual property and how to apply them while
deciding the claims of the parties in contemporary times. The students are expected to:
• Possess the general understanding regarding the different types of intellectual property
and its protection;
• Analyse the theories and philosophy behind the protection of Intellectual Property
Rights and the evolving Indian jurisprudence;
• Develop an understanding of the nature and extent of protection and the rights that
accrue on legit protection of copyrights, patents and trademarks;
• Be able to explain the nature of Intellectual Property protection extended to industrial
designs, geographical indications, plant varieties and traditional knowledge;
• Comprehend the domestic and international principals laid down by the legislations
and its applicability in context of present-day problems; and
• Be able to identify the gap in the present legislations with reference to the recent
developing areas.
***
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COURSE CONTENTS
Module-I: Introduction to the Intellectual Property Rights [Teaching Hours 12]
1.1 Concept of Property and Property Rights: Definition and Nature of Property,
Property rights, Protection granted to Intellectual Property, Public Interest vis-a-vis
Monopoly Rights
1.2 Rationale behind protection of Intellectual Property: Rationale behind protection,
Characteristics of Intellectual Property, Theories justifying intellectual property-The
Natural Law Theory, Labour Theory of Protection, Utilitarian Theory, Personality
Theory,
1.3 Types of Intellectual Property: Copyrights, Patents, Trademarks, Industrial Designs,
Traditional Knowledge, Trade Secrets, Plant Varieties, Integrated Circuit Layout
Design
1.4 Overview of International/Regional Intellectual Property Rights Regime:
Introduction to Paris Convention, Berne Convention, WIPO Convention and the TRIPS
Agreement
1.5 Interface between Intellectual Property Rights and Competition Law: Anti-
competitive Practices, Abuse of Dominance and the concept of Monopoly, Role of
Patent Controller General, Jurisdiction of Competition Commission of India in
intellectual property matters
Statutory References
Copyright Act 1957 (Act No. 14 of 1957)
Designs Act 2000 (Act No. 16 of 2000)
Geographical Indications of Goods (Registration and Protection) Act 1999
(Act No. 48 of 1999)
Patents Act 1970 (Act No. 39 of 1970)
Trademarks Act 1999 (Act No. 47 of 1999)
International Instruments
Agreement on Trade Related Aspects of Intellectual Property Rights 1995
Berne Convention for the Protection of Literary and Artistic Works 1886
Convention Establishing the World Intellectual Property Organization 1967
Paris Convention for Protection of Industrial Property 1883
Judicial References
R.C. Cooper v. Union of India AIR 1970 SC 564
R.G. Anand v. Deluxe Films AIR 1978 SC 1613
T Plantation Pvt. Ltd. v. State of Karnataka AIR (2011) 9 SCC 1
Compulsory Readings
• Elizabeth Verkey, INTELLECTUAL PROPERTY LAW & PRACTICE, 1st ed. 2015,
Eastern Book Company.
• V. K. Ahuja, LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS, 3rd ed.
2017, Lexis Nexis Publications, Gurgaon.
Suggested Readings
• Cornish, Llewelyn & Aplin, INTELLECTUAL PROPERTY: PATENT,
COPYRIGHT, TRADE MARKS & ALLIED RIGHTS, 9th ed. 2019, Sweet &
Maxwell, London.
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• David I. Bainbridge, INTELLECTUAL PROPERTY RIGHTS, 10th ed. 2018, Pearson
Education, United Kingdom.
• Gopalkrishnan and T. G. Agitha, PRINCIPLES OF INTELLECTUAL PROPERTY,
2nd ed. 2014, Eastern Book Company.
• Jayashree Watal and Antony Taubman(ed.), THE MAKING OF THE TRIPS
AGREEMENT- PERSONAL INSIGHTS FROM THE URUGUAY ROUND
NEGOTIATIONS, available at,
https://www.wto.org/english/res_e/booksp_e/trips_agree_e/history_of_trips_nego_e.p
df.
• K. D. Raju, THE INTELLECTUAL PROPERTY RIGHTS AND COMPETITION
LAW: A COMPARATIVE ANALYSIS, 1st ed. 2015, Eastern Law House, Kolkata.
• Lionel Bently and Brad Sherman, Intellectual Property Law, 5th ed. 2018, Oxford
University Press, Oxford.
• Michael A. Epstein, EPSTEIN – ON INTELLECTUAL PROPERTY Aspen
Publishers, United States.
• P. Narayanan, INTELLECTUAL PROPERTY LAW, 3rd ed. 2017, Eastern Law House,
Kolkata.
• Raman Mittal, LICENSING INTELLECTUAL PROPERTY – LAW &
MANAGEMENT, 1st ed. 2011, Satyam Law International, New Delhi.
• Ramappa on ‘Competition Law in India: Policy Issues and developement’, 3rd Edition
2013, Oxford Publication.
• Steven D. Anderman, THE INTERFACE BETWEEN INTELLECTUAL PROPERTY
RIGHTS AND COMPETITION POLICY, 1st ed. 2007, Cambridge University Press,
Cambridge.
• V.J. Taraporevala, LAW OF INTELLECTUAL PROPERTY, 3rd ed. 2019, Thomson
Reuters, India.
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Berne Convention for the Protection of Literary and Artistic Works 1886
Rome Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organizations, 1961
WIPO Performances and Phonograms Treaty (WPPT) 1996
WIPO Copyright Treaty (WCT) (1996)
Judicial References
Agarwala Publishing House v. Board of High School and Intermediate Education
AIR 1967 All 91
Amarnath Sehgal v. Union of India (2005) 20 PTC 253 (Del)
Commissioner of Service Tax Delhi v. Quick Heal Technologies 2022 SCC OnLine SC 976
Eastern Book Co. v. D.B. Modak (2008) 1 SCC 1
Engineering Analysis Centre of Excellence (P) Ltd. v. CIT (2022) 3 SCC 321
Fortune Films International v. Dev Anand AIR 1979 Bom 17
Manu Bhandari v. Kala Vikas Pictures (P) Ltd., AIR 1987 Del 13
R.G. Anand v. Deluxe Films AIR 1978 SC 1613
Super Cassette Industries Ltd. v. Entertainment Network (India) Ltd., (2004) 29 PTC 8
(Del)
The Chancellor, Masters & Scholars of University of Oxford v. Rameshwari Photocopy
Services (2016) 235 DLT 409 (DB)
University of London Press Ltd. v. London Tutorial Press Ltd., (1916) 2Ch 601
Compulsory Readings
• Elizabeth Verkey, INTELLECTUAL PROPERTY LAW & PRACTICE, 1st ed. 2015,
Eastern Book Company.
• V. K. Ahuja, LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS, 3rd ed.
2017, Lexis Nexis Publications, Gurgaon.
Suggested Readings
• Cornish, Llewelyn & Aplin, INTELLECTUAL PROPERTY: PATENT,
COPYRIGHT, TRADE MARKS & ALLIED RIGHTS, 9th ed. 2019, Sweet &
Maxwell, London.
• Cornish, Llewelyn & Aplin, INTELLECTUAL PROPERTY: PATENT,
COPYRIGHT, TRADE MARKS & ALLIED RIGHTS, 9th ed. 2019, Sweet &
Maxwell, London.
• Gillian Davies, Nicholas Caddick et al., COPINGER AND SKONE JAMES ON
COPY RIGHT, 17th ed. 2nd supp. 2019, Sweet & Maxwell, London.
• H K Saharay (ed.), IYENGAR’S COMMENTARY ON THE COPYRIGHT ACT, 9th
ed., 2016, LexisNexis Publications, Gurgaon.
• Kelvin Garnett (ed.), COPINGER & SKONE JAMES ON COPYRIGHT, 17th ed.
1891, Sweet & Maxwell, London.
• Lionel Bently & Brad Sherman, Intellectual Property Law, 5th ed. 2018, Oxford
University Press, Oxford.
• Melville B. Nimmer & David Nimmer, NIMMER ON COPYRIGHT : A TREATISE
ON THE LAW OF LITERARY, MUSICAL AND ARTISTIC PROPERTY, AND
PROTECTION OF IDEAS, Indian reprint 2010, Lexis Nexis Butterworth, Wadhwa.
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• P. Narayanan, INTELLECTUAL PROPERTY LAW, 3rd ed. 2017, Eastern Law House,
Kolkata.
• V. K. Ahuja, LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS, 3rd ed.
2017, Lexis Nexis Publications, Gurgaon.
• Yogesh A. Pai, “Copyright Protection for Computer Programme: Walking on One
Leg?” JILI 359 (2006).
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Suggested Readings
• Cornish, Llewelyn & Aplin, INTELLECTUAL PROPERTY: PATENT, COPYRIGHT,
TRADE MARKS & ALLIED RIGHTS, 9th ed. 2019, Sweet & Maxwell, London.
• E European Patent Office, Opinion of the Enlarged Board of Appeal on Patentability of
Programs for Computers (2010), available at https://www.epo.org/law-practice/case-
law-appeals/recent/g080003ex1.html
• Elizabeth Verkey, INTELLECTUAL PROPERTY LAW & PRACTICE, 1st ed. 2015,
Eastern Book Company.
• Gopalkrishnan & T. G. Agitha, PRINCIPLES OF INTELLECTUAL PROPERTY, 2nd
ed. 2014, Eastern Book Company.
• Lionel Bently & Brad Sherman, Intellectual Property Law, 5th ed. 2018, Oxford
University Press, Oxford.
• Michael A. Epstein, EPSTEIN – ON INTELLECTUAL PROPERTY, Aspen
Publishers, United States.
• P. Narayanan, INTELLECTUAL PROPERTY LAW, 3rd ed. 2017, Eastern Law House,
Kolkata.
• Raman Mittal, LICENSING INTELLECTUAL PROPERTY-LAW &
MANAGEMENT, 1st ed. 2011, Satyam Law International, New Delhi.
Module-IV: Trademarks and Domain Names [Teaching Hours 10]
4.1 Basic Concepts: Meaning of Trademarks; Types of marks; Distinctiveness of marks;
Grounds for refusal and renewal of Trademarks.
4.2 Registration of marks: Application of Registration, Advertisement, Publication,
Opposition, Correction, Duration and renewal
4.3 Well-known Trademark: Concept, Dilution of Trademark, Honest concurrent use
4.4 Infringement of Trademark and Remedies: Criteria for determining infringement of
Trademark; Remedies for Infringement; Action for ‘passing off’ for the Protection of
Unregistered Marks; Difference between ‘infringement’ and ‘passing off’.
4.5 Protection of Domain Names: Meaning of ‘Domain Name’; Role of the Internet
Corporation for Assigned Names and Numbers (ICANN); Uniform Domain Name
Dispute Resolution Policy (UDRP); Protection of Domain Names as Trademarks.
Statutory Reference
Trademarks Act 1999 (Act No. 47 of 1999)
International Instruments
Madrid Agreement Concerning the International Registration of Marks, 1891
Paris Convention for Protection of Industrial Property 1883
Judicial Reference
Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. AIR 2001 SC 1952
Daimler Benz Aktiengesellschaft v. Hybo Hindustan AIR 1994 Del 239
Durga Dutt Sharma v. Navratna Pharmaceutical Laboratiroes AIR 1962 Ker 156
Hindustan Unilever Ltd. v. Gujrat Cooperative Milk Marketing Federation
2017 SCC OnLine Bom 2572
N. R. Dongre v. Whirlpool Corporation AIR 1995 Del 300
Parle Product v. JP & Co. AIR 1972 SC 1359
Patel Field Marshal Agencies Ltd. v. PM Diesels Ltd. (2018) 2 SCC 112
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Pepsi Co. Inc. v. Hindustan Coca Cola 2001 PTC 99 (Del)
Satyam Infoway Ltd. v. Sifynet Solution Pvt. Ltd. 2004 Supp (2) SCR 465
Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd., AIR 2018 SC 167
Yahoo Inc. v. Akash Arora 1999 Arb LR 620 (Del)
Compulsory Readings
• Elizabeth Verkey, INTELLECTUAL PROPERTY LAW & PRACTICE, 1st ed. 2015,
Eastern Book Company.
• Lionel Bently and Brad Sherman, Intellectual Property Law, 5th ed. 2018, Oxford
University Press, Oxford.
• V. K. Ahuja, LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS, 3rd ed.
2017, Lexis Nexis Publications, Gurgaon.
Suggested Readings
• Cornish, Llewelyn & Aplin, INTELLECTUAL PROPERTY: PATENT, COPYRIGHT,
TRADE MARKS & ALLIED RIGHTS, 9th ed. 2019, Sweet & Maxwell, London.
• Gopalkrishnan & T. G. Agitha, PRINCIPLES OF INTELLECTUAL PROPERTY, 2nd
ed. 2014, Eastern Book Company.
• P. Narayanan, INTELLECTUAL PROPERTY LAW, 3rd ed. 2017, Eastern Law House,
Kolkata.
Module-V: Introduction to different IPR [Teaching Hours 10]
5.1 Industrial Designs: Meaning and Subject Matter of Industrial Designs; Criteria for
obtaining Design Protection, Copyright in Registered Designs.
5.2 Geographical Indications: Meaning and Subject Matter protected under Geographical
Indications; Procedure for obtaining Registration; Term of Protection; Renewal of
Registration.
5.3 Protection of Plant Varieties: Plant Varieties; Registration of Plant Varieties; Types
of Rights (Farmer’s Right, Breeder’s Right, Researcher’s Right); National Gene Fund
and Benefit Sharing.
5.4 Protection of Traditional Knowledge: Issues and challenges in the protection of
Traditional Knowledge, Inter-generational equity, Traditional Knowledge Digital
Library (TKDL).
5.5 Biodiversity and IPR: Genetic Resources, Convention on Biological Diversity, Prior
Informed Consent, Access and Benefit Sharing, TRIPS-CBD relationship.
Statutory References
Biological Diversity Act 2002 (Act No. 18 of 2003)
Designs Act 2000 (Act No. 16 of 2000)
Geographical Indications of Goods (Registration and Protection) Act 1999
(Act No. 48 of 1999)
Protection of Plant Variety and Farmers’ Rights Act 2001 (Act No. 53 of 2001)
International Instruments
International Convention for the Protection of New Varieties of Plants (UPOV Convention)
1961
Judicial References
Britannia Industries Ltd. v. Sara Lee bakery AIR 2000 Mad 497
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Carlsberg Breweries v. Som Distilleries and Breweries Ltd. 2017 SCC OnLine Del 8125
Gammeter v. Controller of Patents and Design AIR 1919 Cal 887
Hello Mineral Water (P) Ltd. v. Thermoking California Pure 2000 Arb LR 491 (Del)
National Bell Co. v. Metal Goods Mfg. Co. (P) Ltd. (1970) 3 SCC 665
Monsanto Technology LLC v. Nuziveedu Seeds Ltd. (2019) 3 SCC 381
Compulsory Readings
• GEOGRAPHICAL INDICATIONS: AN INTRODUCTION, World Intellectual
Property Organization (WIPO), available at:
https://www.wipo.int/publications/en/details.jsp?id=272 (Visited on December 07,
2019).
• Vandana Singh, THE LAW OF GEOGRAPHICAL INDICATIONS, 1st ed. 2017
Eastern Law House, Kolkata.
Suggested Readings
• Latha R Nair and Rajendra Kumar, GEOGRAPHICAL INDICATIONS: A SEARCH
FOR IDENTITY, 1st ed. 2005, LexisNexis Butterworths, New Delhi.
• Tapan Kumar Rout (ed.), WTO, TRIPS & GEOGRAPHICAL INDICATIONS, 1st ed.
2014, New Century Publications, New Delhi.
***
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Intellectual Property Rights
A List of Printed Sources for In-depth Research on Intellectual Property Rights Related
Issues
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• Steven D. Anderman, THE INTERFACE BETWEEN INTELLECTUAL PROPERTY
RIGHTS AND COMPETITION POLICY, 1st ed. 2007, Cambridge University Press,
Cambridge.
• Tapan Kumar Rout (ed.), WTO, TRIPS & GEOGRAPHICAL INDICATIONS, 1st ed.
2014, New Century Publications, New Delhi.
• V. K. Ahuja, LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS, 3rd ed.
2017, Lexis Nexis Publications, Gurgaon.
• V.J. Taraporevala, LAW OF INTELLECTUAL PROPERTY, 3rd ed. 2019, Thomson
Reuters, India.
• Vandana Singh, THE LAW OF GEOGRAPHICAL INDICATIONS, 1st ed. 2017
Eastern Law House, Kolkata.
***
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