LEEWAY

EIGHTH SEMESTER BBA LLB

INTELLECTUAL PROPERTY RIGHT

CREATED BY
AJITH.V, RATHULDEV.S, MUHAMMED NASEEB P
[BBA LLB FINAL YEARS, MCT LAW COLLEGE]

DISCLAIMER

Leeway is fellowship of MCT College of legal studies, Melmuri Malappuram. This document is a
compilation of extracts from various sources. Material may not cover the entire syllabus of the
subject, but exam oriented. Created on the basis of previous year question papers and important
questions. The material is intended for an absolute educational purpose. Reproduction of the
material for non-educational purpose will not be entertained. Use the material at your own risk.
12 MARKS

Intellectual Property

 Intellectual Property (IP) deals with any basic construction of human intelligence such as artistic, literary,
technical or scientific constructions.
 Intellectual Property Rights (IPR) refers to the legal rights granted to the inventor or manufacturer to protect
their invention or manufacture product.
 These legal rights confer an exclusive right on the inventor/manufacturer or its operator who makes full use
of it’s his invention/product for a limited period of time.
 Intellectual Property can be defined as inventions of the mind, innovations, literary and artistic work,
symbols, names and images used in commerce.
 The objective of intellectual property protection is to encourage the creativity of the human mind for the
benefit of all and to ensure that the benefits arising from exploiting a creation benefit the creator. This will
encourage creative activity and give investors a reasonable return on their investment in research and
development.

 The intellectual property right is a kind of legal right that protects a person’s artistic works, literary works,
inventions or discoveries or a symbol or design for a specific period of time.
 As a result, intellectual property rights can have a direct and substantial impact on industry and business, as
the owners of IPRs one can enforce such rights and can stop the manufacture, use, or sale of a product to the
public.

Nature of intellectual Property

 Intangible Rights over Tangible Property: The main Property that distinguishes IP from other forms of
Property is its intangibility. While there are many important differences between different forms of IP, one
factor they share is that they establish property protection over intangible things such as ideas, inventions,
signs and information whereas intangible assets and close relationships are a tangible object.
 Right to sue: In the language of the law, IP is an asset that can be owned and dealt with. Most forms of IP
are contested in rights of action that are enforced only by legal action and by those who have rights. IP is a
property right and can, therefore, be inherited, bought, gifted, sold, licensed, entrusted or pledged.
 Right to sue: In the language of the law, IP is an asset that can be owned and dealt with. Most forms of IP
are contested in rights of action that are enforced only by legal action and by those who have rights. IP is a
property right and can, therefore, be inherited, bought, gifted, sold, licensed, entrusted or pledged.
 Rights and Duties: IP gives rise not only to property rights but also duties. The owner of the IP has the
right to perform certain functions in relation to his work/product. He has the exclusive right to produce the
work, make copies of the work, market work, etc.
 Coexistence of different rights: Different types of IPRs can co-exist in relation to a particular function. For
example, an invention may be patented, and the invention photograph may be copyrighted. A design can be
protected under the Design Act, and the design can also be incorporated into a trademark.
 Exhaustion of rights: Intellectual property rights are generally subject to the doctrine of exhaustion.
Exhaustion basically means that after the first sale by the right holder or by its exhaustion authority, his

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 right ceases and he is not entitled to stop further movement of the goods. Thus, once an IP rights holder has
sold a physical product to which IPRs are attached, it cannot prevent subsequent resale of that product.
 Dynamism: IPR is in the process of continuous development. As technology is rapidly evolving in all areas
of human activities, the field of IP is also growing. As per the requirement of scientific and technological
progress, new items are being added to the scope of IPR, and the scope of its preservation is being
expanded.

Scope of intellectual Property

 The scope of IP rights is broad; two classification modes are used to determine whether IP is copyright or
Industrial Property. Industrial properties include patents or inventions, trademarks, trade names,
biodiversity, plant breeding rights and other commercial interests.
 A patent gives its holder the exclusive right to use the Intellectual Property for the purposes of making
money from the invention.
 An invention is itself a new creation, process, machine or manufacture. Having copyright does not give you
the exclusive right to an idea, but it protects the expression of ideas that are different from a patent.
Copyright covers many fields, from art and literature to scientific works and software.
 Even music and audio-visual works are covered by copyright laws. The duration of copyright protection
exists 60 years after the death of the creator. In other words, an author’s book is copyrighted for his entire
life and then 60 years after his death. Unlike patent laws, there is no requirement of the administrative
process in copyright laws.

Kinds of intellectual Property

Copyright

 Copyright law deals with the protection and exploitation of the expression of ideas in a tangible form.
Copyright has evolved over many centuries with respect to changing ideas about creativity and new means
of communication and media.

Patent

 Patent law recognizes the exclusive right of a patent holder to derive commercial benefits from his
invention. A patent is a special right granted to the owner of an invention to the manufacture, use, and
market the invention, provided that the invention meets certain conditions laid down in law.

Trademark

 A trademark is a badge of origin. It is a specific sign used to make the source of goods and services public
in relation to goods and services and to distinguish goods and services from other entities.
 This establishes a link between the proprietor and the product. It portrays the nature and quality of a
product. The essential function of a trademark is to indicate the origin of the goods to which it is attached or
in relation to which it is used.

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Geographical indication

It is a name or sign used on certain products which corresponds to a geographic location or origin of the
product, the use of geographical location may act as a certification that the product possesses certain qualities as
per the traditional method. Darjeeling tea and basmati rice are a common example of geographical indication.

Industrial design

It is one of the forms of IPR that protects the visual design of the object which is not purely utilized. It consists
of the creation of features of shape, configuration, pattern, ornamentation or composition of lines or colours
applied to any article in two or three-dimensional form or combination of one or more features. Design
protection deals with the outer appearance of an article, including decoration, lines, colours, shape, texture and
materials.

Plant variety

A new variety of plant breeder is protected by the State. To be eligible for plant diversity protection, diversity
must be novel, distinct and similar to existing varieties and its essential characteristics under the Plant
Protection and Protection Act, 2001 should be uniform and stable.

The Intellectual Property Appellate Board (IPAB)

 constituted on September 15, 2003 by the Indian Government to hear and resolve the appeals against the
decisions of the registrar under the Indian Trademarks Act, 1999 and the Geographical Indications of Goods
(Registration and Protection) Act, 1999.
 Since April 2, 2007, IPAB has been authorized to hear and adjudicate upon the appeals from most of the
decisions, orders or directions made by the Patent Controller under the Patents Act. Therefore all pending
appeals of Indian High Courts under the Patents Act were transferred to IPAB.
 The headquarter of the IPAB is located in Chennai. IPAB also has sittings at Chennai, Delhi, Kolkata and
Ahmedabad.
 In IPAB an appeal can be made against the decision of the Controller or Central Government of India in
matters related to refusal of application for failure to comply with the requirements of the Act; orders related
to divisional application; orders related to dating of application; decisions related to anticipation; decisions
and cases of potential infringement; orders regarding substitution of applicants; revocation of patents in
public interest; correction of clerical errors, etc.
 Organization of an IPAB Bench: Each Bench of the IPAB includes a Judicial Member and a Technical
Member. The qualifications for appointment as a technical member of the IPAB are mentioned in The Trade
Marks Act and the Patents Act.
 Jurisdiction: Appeals from the decision of the Controller to the IPAB must be made within three months
from the date of the decision/ order or direction, according to the, or within such further time as the IPAB
permits, with the appropriate fees.
 An extension is available for filing the appeal by way of a Condonation of Delay (COD) petition. The pre-
requisite for filing COD is that there must be genuine reasons of delay, along with the prescribed official
fees.
 The IPAB has appellate jurisdiction against the decision of the Controller or Central Government of India in
following matters:

 Any decisions related to inventor names

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  Any directions given to co-owners of the patent
 Any decisions related to Patent of Addition
 Any orders relating to divisional application
 Any orders relating to dating of application
 Refusal of application for failure to comply with any provisions of the Act
 Any decisions relating to anticipation
 Any decisions and cases of potential infringement.

Copyright

 Copyright law deals with the protection and exploitation of the expression of ideas in a tangible form.
Copyright has evolved over many centuries with respect to changing ideas about creativity and new means
of communication and media.
 In the modern world, the law of copyright provides not only a legal framework for the protection of the
traditional beneficiaries of copyright, the individual writer, composer or artist, but also the publication
required for the creation of work by major cultural industries, film; Broadcast and recording industry; And
computer and software industries.
 It resides in literary, dramatic, musical and artistic works in ”original’ cinematic films, and in sound
recordings set in a concrete medium. To be protected as the copyright, the idea must be expressed in original
form.
 Copyright acknowledges both the economic and moral rights of the owner. The right to copyright is, by the
principle of fair use, a privilege for others, without the copyright owner’s permission to use copyrighted
material. By the application of the doctrine of fair use, the law of copyright balances private and public
interests.
 Copyright is valid till the life of the originator plus 50 years after his death. In the case of cinematographic
work, the copyright is valid until 50 years after the work has been made available to the public while for
photographic works 25 years after the making of the work.
 In India matters related to copyright are governed by the Copyright Act in 1957, which was subsequently
amended in the year 1994 and 2002. Copyright cannot be granted in some cases like:

1. Copyright cannot be said to be violated if the idea or concept of any person is used in a different
manner.
2. Copyright is not granted for ideas.
3. Copyright is not granted in live events.

Rights of the copyright owner

Right of Reproduction

This is the most prominent right which is acquired after the copyright protection. This right authorizes the
person having such copyright to make copies of the protected work in any form. In the modern context copying,
a song on a Compact Device or any sound and visual recording can be considered as a reproduction of the
content.

Right to Distribute

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Right to distribute is an off-shoot of the right of reproduction. The person who owns the copyright owner may
distribute his work in any manner he deems fit. The owner is also entitled to transfer the whole or some rights in
favor of any other person while retaining others. For example, he can entitle any person to translate his work.

Right to make Derivative Works

The copyright has the right to use his work in various ways, for instance making adaptations or translations.
One example of adaptation is making a movie based on a novel, so here to make any derivative work the
consent of the owner is mandatorily required.

Right to Publicly Perform

The owner of the copyright has the right to publicly perform his works. Example, he may perform dramas based
on his work or may perform at concerts, etc. This also includes the right of the owner to broadcast his work.
This includes the right of the owner to make his work accessible to the public on the internet.

Right to Follow

This right is granted generally only to the authors and artists. This empowers the authors to obtain a percentage
of the subsequent sales of his work and is called Droit de Suite or Right to Follow. The right is also available to
artists on resale of their work.

Right of Paternity

The Right of Paternity or Attribution gives the copyright owner a right to claim authorship of the work. Under
the Right of Paternity a copyright owner can claim due credit for any of his works. Thus, if a movie is produced
based on a book by an author, and he hasn’t been given due credit in it, he can sue the makers to acknowledge
his work.

Sui Generis Rights

The ordinary copyright law often fails to protect the computer software and databases since the essential
element of creativity is not present in such databases. Therefore, there was a need for new law to protect such
software and databases. The law of sui generis was introduced to resolve the problem of resolving databases on
the whole.

Private Copying

This is an exception to the reproduction rights which are attained by the owner. According to this right, any
person can make copies of the copyright protected work if it is proved that such copying is for educational
purpose and that there is no commercial motive behind such copies being made.

Works protected under Indian Copyright Act, 1957

The Indian Copyright Act 1957 has incorporated several works within its ambit that have been given protection
under the aforesaid conventions. The relevant provisions of the Act have been enumerated below:

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Remedies for Copyright Infringement
Civil Remedies for Copyright Infringement

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

1) Interlocutory Injunctions

The most important remedy is the grant of an interlocutory injunction. In most case the application filled is for
interlocutory relief and the matter rarely goes beyond the interlocutory stage.

2) Pecuniary Remedies

Copyright owners can also seek three pecuniary remedies under Section 55 and 58 of the Copyright Act of
1957. First, an account of profits which lets the owner seek the sum of money made equal to the profit made
through unlawful conduct.

3) Anton Pillar Orders

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

4) Mareva Injunction

The Mareva injunction comes into play when the court believes that the defendant is trying to delay or obstruct
the execution of any decree being passed against him. The court has the power to direct him to place whole or
any part of his property under the court’s disposal as may be sufficient to satisfy the decree.

5) Norwich Pharmacal Order

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

Criminal Remedies

Under the Copyright Act, 1957 the following remedies are provided for infringement:

 Imprisonment up to 3 years but, not less than 6 months

 Fine which may not be less than 50,000 but, may extend up to 2,00,000
 Search and seizure of infringing goods
 Delivery of infringing goods to the copyright owner

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.

Copyright Transfer

 A Copyright Transfer is the transfer of property rights of an owner in a given creative work. Such transfers
of Copyright may occur on their own or as parts of huge asset purchases or sales.
 Copyright Transfer or Assignment Agreements both provide ownership records and transfer & safeguard the
rights of all parties.
 According to Section 19, Copyright Assignment/Transfer is only valid if it is written and duly signed by the
assignor or their duly authorized agent or representative.
 The transfer of a Copyright in work must recognize the work and specify the kind of rights assigned and the
duration and regional extent of such transfer.

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 Moreover, it must specify the amount of royalty payable, if any, to the author or their legal representatives
during the continuance of transfer, and the transfer will be subject to extension, revision or termination on
terms jointly agreed upon by the parties.

Mode of Transfer (Section 19)

 According to Section 19, Copyright Assignment/Transfer is only valid if it is written and duly signed by the
assignor or their duly authorized agent or representative.
 The transfer of a Copyright in work must recognize the work and specify the kind of rights assigned and the
duration and regional extent of such transfer.
 Moreover, it must specify the amount of royalty payable, if any, to the author or their legal representatives
during the continuance of transfer, and the transfer will be subject to extension, revision or termination on
terms jointly agreed upon by the parties.
 If the time of transfer is not mentioned, it will be deemed to be taken as five years from the transfer date. If
the regional extent of such transfer is not stipulated, it will be taken as applicable across India.
 Section 19(8) anticipates that the transfer of Copyright work against the terms & conditions on which rights
have been assigned to a specific Copyright society where the actual creator of the work is a member shall be
void.
 Moreover, Section 19(9 & 10) opine that the Copyright Transfer for creating cinematograph film or sound
recording shall not affect the creator’s right to claim an equal share of the royalties and consideration
payable with respect to the use of their safeguarded work.

Trademark

 A trademark is a badge of origin. It is a specific sign used to make the source of goods and services public
in relation to goods and services and to distinguish goods and services from other entities.
 This establishes a link between the proprietor and the product. It portrays the nature and quality of a
product. The essential function of a trademark is to indicate the origin of the goods to which it is attached or
in relation to which it is used.
 It identifies the product, guarantees quality and helps advertise the product. The trademark is also the
objective symbol of goodwill that a business has created.
 Any sign or any combination thereof, capable of distinguishing the goods or services of another
undertaking, is capable of creating a trademark. It can be a combination of a name, word, phrase, logo,
symbol, design, image, shape, colour, personal name, letter, number, figurative element and colour, as well
as any combination representing a graph. Trademark registration may be indefinitely renewable.

Types of trademarks

Product mark

It is a mark used for products or goods but not on services. Product mark is used to identify the provider, the
reputation and the origin of the product. Applications for a trademark filed under class 1-34 The Fourth
Schedule To Trade Marks Rules, 2002 are generally termed as product marks.

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Service mark

 It is similar to a product mark, but it is specifically used to identify a service and not a product. Applications
for a trademark filed under class 35-45 The Fourth Schedule To Trade Marks Rules, 2002 can be termed as
a service mark.
 A service mark is a brand name or logo that identifies the provider of a service. A service mark may consist
of a word, phrase, symbol, design, or some combination of these elements. A form of intellectual property
protection, the mark prevents competing businesses from using names and insignias that could potentially
confuse consumers.
 Service marks help prevent the theft of intellectual property under the law and can award the owner of the
mark with monetary damages if their mark has been infringed upon.

Word mark

 Typically, a trademark is filed under a wordmark or a device mark. In a wordmark, only a word or text is
used to denote a trademark, without any stylization or additional artistic elements.
 This type of registration gives the broadest legal protection to a trademark because it allows the owner to
use such a wordmark in all styles, forms and representations.

Device mark

A device mark usually has an artistic element such as symbols, or an artistic or pictorial depiction in addition to
the element of the wordmark. It generally comprises a wordmark along with multiple artistic elements

Certificate trademarks

 These marks are typically used by the owner in order to certify the origin, material, quality, mode of
manufacture or performance of services and other characteristics of goods or services to which they are
applied. Some examples of certified marks include the ISI Mark
 A certification trademark is"a mark capable of distinguishing the goods or services in connection with
which it is used in the course of trade which are certified by the proprietor of the mark in respect of origin,
material, mode of manufacture of goods or performance of services, quality, accuracy or other
characteristics from goods or services not so certified".
 Thus, the sole purpose of a certification trademark is to indicate that certain standards set by the proprietor
of the mark have been met. Some examples of Indian certification trademarks are as follows: WOOLMARK
(that certifies that a product is made from 100% wool), ORGANIC INDIA (that certifies a method or mode
of manufacture), ISI mark (that certifies that products conform to a set of standards laid by the Bureau of
Indian Standards).

Collective trademarks

This trademark is different from the ones we have studied above. This type of mark is typically used by an
organisation or association of members in order to distinguish the goods or services of the members from those
who are non-members.

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Series trademarks

When an owner owns several trademarks in relation to the same or similar goods, wherein all trademarks seem
to possess a material resemblance to each other and are different in respect of non-distinctive character, such
trademarks may be registered as series trademarks.

Colour trademark

Since the definition of a trademark under the Trademark Act, 1999 includes the words ‘combination of colours’
they are protected as a trademark. However, such a combination of colours to get registered as a colour mark
must be unique, distinctive and must identify the product and its source. A simple combination of red and
yellow to indicate orange will not be considered distinctive. The colour to get registered under this type of
trademark must be extremely distinct and must be recognisable by its consumers.

Sound trademarks

Graphical representation is an essential element in trademark registration and this applies to sound marks as
well. To register a sound under the trademark, it must be in such a form that it is distinctive and identifiable by
the consumer.

Functions of a Trademark

A trademark serves the purpose of identifying the source or the origin of goods. Trademark performs the
following four functions.

 It identifies the product and it’s origin.

 It proposes to guarantee its quality.
 It advertises the product. The trademark represents the product.
 It creates an image of the product in the minds of the public particularly the consumers or the
prospective consumers of such goods.

Grounds For Refusal Of Registration

Section 9 of the Act lists down the absolute grounds for refusal of registration. If any trademark comes under
the grounds listed in this section, it cannot be registered. The absolute grounds for refusing registration are –

 Trademarks which do not possess any distinctive character. Distinctive character means trademarks
which are not capable of distinguishing the goods or services of one person from those of another.
 Trademarks which exclusively contain marks or indications which serve in trade to define the kind,
quality, quantity, intended purpose, values or geographical origin of goods or services rendered.
 Trademarks which exclusively contain marks or indications which have become customary in the
current language or the established practices of the trade.
 Trademarks are of such a nature which deceives or cause confusion to the public.
 Trademarks which contain or comprise matter likely to hurt the religious susceptibilities of any class or
sections of citizens of India.
 Trademarks which contain or comprise scandalous or obscene matter.
 If the usage of the trademark is prohibited under the Emblems and Names (Prevention of Improper Use)
Act, 1950.

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  Trademarks which consist of marks of the shape of goods which result from the nature of goods
themselves.
 Trademarks which consist of marks of the shape of goods which is necessary to obtain a technical result.
 Trademarks which consist of marks of the shape which gives substantial value to the goods.

Remedies available for Trademark Infringement

Civil remedies

The Trade Marks Act, 1999 lays down certain civil remedies to be given to the ones whose trademark has been
infringed. They are:

1. Injunction or authoritative direction by the court of law is a common civil remedy that can be provided
with. The two kinds of injunction that can be granted are perpetual and temporary injunction. Perpetual
injunction is granted depending on the suit concerned and when the same is supposed to be decreed and
therefore is of permanent nature. In the case of a temporary injunction, a specified time frame comes
into the consideration which in this case will be till the court passes its final orders regarding the matter.
2. Damages can be claimed by the aggrieved party on grounds that the exclusive right of using the
trademark he owns has been ceased and this subsequently has led to him or his enterprise suffering
losses.
3. A civil remedy that is often claimed is handling of the profit accounts along with a command for
delivery or removal of the products that have been infringed.

Criminal remedies

If we take a look at the Trade Marks Act,1999, it can be viewed that there are several provisions that can be
counted as a criminal remedy for the infringement of trademark. The following are laid down below:

1. Sections 103 of the Act lays down criminal remedy for the contravention of the trademark of any
individual or entity which lays down a period of six months of imprisonment which can be extended till
a time frame of three years for infringing trademark rights.
2. Section 104 of the Act talks about penalties that need to be provided as a sanction against an
infringement. The section mentions a fine of fifty thousand rupees which can be increased till an extent
of two lakhs in case someone is found to transgress the trademark rights.
3. An inflating version of punishment is laid down under Section 105 of the same Act.
4. A seizure of powers of the person liable for infringing can be carried out as a criminal remedy for an
efficient adaptation to the above provisions. This procedure carried out by police is subjected to
reasonable grounds of proving the infringement only.

Patent

 A patent is a legal document that defines and provides the bearer with exclusive rights to exclude others
from producing, selling or distributing invention. Patent is provided for a period of 20 years.
 It is granted for the encouragement of creativity and development of innovation and technology. The
primary legislation regulating patent laws in India is the Indian Patents Act, 1970. It lays down three
parameters on the basis of which patents are granted:
(a) The product should have a useful purpose.
(b) It should be a novel invention.
(c) The invention should be non-obvious.
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 Patent is not granted for mere ideas but for new inventions which have the potential to solve technical
problems. Processes, systems, methods, devices, compositions, products, uses etc are some examples for
which a patent can be granted.
 Patent opposition is a right created under the Patent Act permitting any person to raise issues against the
grant of a patent. Oppositions can be made against an accepted standard patent application or a certified
innovation patent.

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:

 Inventions that are frivolous and contrary to natural laws.

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

o 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.

 Inventions which go against public morality

o 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.

o 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.

 Inventions that are a mere discovery of something that already exists in nature.

o 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.

o 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.

What are the Grounds for Opposition?

A patent can only be opposed on the following grounds:

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  the nominated person in the patent application is either:
o not entitled to a grant of patent for the invention; or
o entitled to a grant of patent for the invention but only in conjunction with some other person.
 that invention is not a patentable invention;
 that the patent specification filed is not a complete specification

Rights of a patent holder

 Right to exploit the patent

In India, the patent holder is provided with the right to manufacture, use, sell and distribute the patented
product. In case the invention is a process of production, the owner of the patent has the right to direct the
procedure to the other person who has been authorised by the patentee. This right can be enforced by the agent
of the patent holder.

 Right to assign and license

The patent holder is granted with the rights of assigning or granting licenses for manufacture and distribution of
the patented products to others. In case there are co-owners of the patented product, the permission to grant
license to the other person shall be sought from the co-owners.

 Right to surrender the patent

The owner of the patent has the right to surrender his patent after seeking permission from the controller. The
controller then advertises about this surrender as per the procedure laid down in the Indian Patents Act. The
parties interested in getting the ownership of the patent can then approach the controller.

 Right before sealing

Section 24 of the Indian Patents Act implies that a patent is sealed from the date of notification for acceptance
to the date of acceptance of the notification. The right of the patentee begins after the notification for acceptance
has been presented.

 Right to apply for the patent of addition

This provision is provided in Section 54 to 56 of the Indian Patents Act. This provision provides for the
modifications in the existing invention. In such a case, the patent holder is granted the right to the modified
invention after the notification of the acceptance comes out.

Remedy for Infringement of Patent

An action for infringement must be instituted by way of a suit in any District Court or a High Court having
jurisdiction to entertain the suit.

Intelocutory Injunction

The Plaintiff may at the commencement of the action move for an interim injunction to restrain the defendant
from committing the acts complained of until the hearing of the action or further orders. The plaintiff should
make out a prima facie case and also show that the balance of convenience lies in his favor.

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Damages

In assessing the damages the important question is what is the loss sustained by the patentee. The loss must be
the natural and direct consequence of the defendants acts. The object of damages is to compensate for loss or
injury.

Accounts of Profits

Where a patentee claims the profits made by the unauthorised use of his patent, it is important to ascertain how
much of his invention was appropriated, in order to determine what proportion of the net profits realized by the
infringer was attributable to its use.

‘Compulsory licenses’ under the Patents Act?

 In simple terms, compulsory licenses are authorizations given to a third-party by the Government to make,
use or sell a particular product or use a particular process which has been patented, without the need of the
permission of the patent owner.
 The provisions regarding compulsory licenses are given in the Indian Patents Act, 1970 and in the TRIPS
(Trade-Related Aspects of Intellectual Property Rights) Agreement at the International level.

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 Although this works against the patent holder, generally compulsory licenses are only considered in certain
cases of national emergency, and health crisis. There are certain pre-requisite conditions which need to be
fulfilled if the Government wants to grant a compulsory license in favor of someone.

Section 84

 At any time after the expiration of three years from the date of the grant of a patent, any person interested
may make an application to the Controller for grant of compulsory license on patent on any of the following
grounds, namely:
(a) That the reasonable requirements of the public with respect to the patented invention have not been
satisfied,
(b) that the patented invention is not available to the public at a reasonably affordable price, or
(c) that the patented invention is not worked in the territory of India.
 As per Section 84, any person who is interested or already the holder of the license under the Patent can
make a request to the Controller for grant of compulsory license on expiry of the three years, when the
above conditions are fulfilled.

However compulsory licenses may also be granted, when –

1. Section 92 A- For exports, under exceptional circumstances.

2. Section 92A- In case of national emergency, extreme urgency of public non-commercial use by
notification of the Central Government
3. Section 92 A (1) – To a country which has insufficient or no manufacturing power in the pharmaceutical
sector to address public health.

5 MARK

Invention?
 The creation or designing of something or the process of creating or designing something that never existed
before, by using someone’s intellect or knowledge, skills, etc is called an ‘invention.’
 The creation or designing of something new with the help of one’s own knowledge, ideas, or experiments
comes under the meaning of an invention.
 For example, the creation of television or cell phones never existed before. These were created by scientists
by using their own ideas and experiments.
 However, it is to be noted that the parts which were used in creating such an invention already existed
before but the scientists used such parts in creating something new and that is called an invention.

Invention under The Patents Act

The Patents Act, 1970 defines an invention as a new product or a process that has an inventive step and has
some industrial applicability. For an invention to qualify to get a patent, it has to fulfill certain conditions which
are as follows:

 It must be new or novel;

 It must have industrial applicability;
 It must involve some inventive step;
 It shall not fall under the ambit of Sections 3 and 4 of the Act.

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Biotech Patents in India?

 Biotechnology inventions are a broad area of biology involving living organisms and systems to make or
develop products, or any other technological application that uses living organisms, biological systems, or
derivatives thereof, to modify or make products or processes for specific uses.
 The man behind the first Patent Act Thomas Jefferson does not have any idea that life forms can also
become a subject matter for protection under Patent.
 In the case of Diamond v Anand Chakrabarty, a biochemist at General Electric (GE) developed a
genetically modified organism that had the capability to decompose crude oil. Initially, the Patent
application of the inventor was rejected.
 But later on, a further appeal was made which and the Patent was granted by the court to the inventor with
an order stating that the claim of the inventor is not to a hitherto unknown natural phenomenon, but a non-
naturally occurring composition or manufacture of matter-a product of human inventiveness”.
 In India, the Patent Act was enacted in the year 1856. Since then, the Patent Act was modified and amended
several times. In the year 1970, one major amendment came into being which satisfied the international
norms of patentability of an invention covering novelty, industrial application, and inventive step

Patent Cooperation Treaty (PCT)

 The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an invention
simultaneously in each of a large number of countries by filing an "international" patent application.
 Such an application may be filed by anyone who is a national or resident of a PCT Contracting State. It may
generally be filed with the national patent office of the Contracting State of which the applicant is a national
or resident or, at the applicant's option, with the International Bureau of WIPO in Geneva.

Basic Features of PCT System

 Formal examination done by one office.

 Retrieval is carried out by one office.
 International publication done by one office.
 Examination and authorization finished by national office.
 Single application with legal effect in all PCT countries.
 148 countries and 4 regional patent systems.

Berne Convention

 Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) is an international
copyright agreement that mandates equal treatment of copyrighted works by Berne signatories, known as
the Berne Union.
 It requires signatory member countries to recognize copyrighted literary or artistic works in the same way
that its national copyrights are recognized. For example, U.S. Copyright law applies to anything published
in the United States, regardless of the work's origin.
 The Berne Convention was adopted in 1886 in Berne, Switzerland.According to the Berne Convention, all
works - except cinematography and photography - are copyrighted for a a minimum term of 50 years after
the death of an author, but longer terms may be provided related parties.
 The Berne Convention also allows signatories to apply fair use of copyrighted works in other broadcasts or
publications, as reflected in the WIPO Copyright Treaty of 1996. This language may imply that Internet
service providers (ISP) are not liable for unauthorized communications between users.

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 The definition of Artistic work as laid down under Section 2 of the Copyright Act, is fairlycomprehensive
and descriptive. Copyright shall subsists in any original artistic workcomprising of paintings, sculptures,
graphics, cartoons, etchings, lithographs, photography,drawings, plans, maps, diagrams, charts, buildings,
models of buildings, moulds and casts forsculptures

Work of architecture
“Work of architecture” means any building or structure having an artistic characteror design, or any model for
such building or structure as provided under Section 2 (b)

 Photograph
“Photograph” includes photo-lithograph and any work produced by any processanalogous to photography
but does not include any part of a cinematograph film asprovided under Section 2 (s) of the Copyright Act
 Engravings
“Engravings” include etchings, lithographs, wood-cuts, prints and other similar
works, not being photographs as provided under Section 2 (i) of the Copyright Act.
 Work of Sculpture
“Work of Sculpture” includes casts and moulds as provided under Section 2 (za) ofthe Copyright Act

Broadcast reproduction right.

 Every broadcasting organisation shall have a special right to be known as ‘‘broadcast reproduction right’’ in
respect of its broadcasts.
 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.
 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 hires to the public, or offers for such sale or hire, 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.

Copyright Infringement?

 Copyright infringement refers to the unauthorized use of someone’s copyrighted work. Thus, it is the use of
someone’s copyrighted work without permission thereby infringing certain rights of the copyright holder,
such as the right to reproduce, distribute, display or perform the protected work.
 Section 51 of the Copyright Act specifies when a copyright is infringed. According to Section 51 of the Act,
Copyright is deemed to be infringed if:

 A person without obtaining the permission of the copyright holder does any act which only the copyright
holder is authorised to do.

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  A person permits the place to be used for communication, selling, distribution or exhibition of an
infringing work unless he was not aware or has no reason to believe that such permission will result in
the violation of copyright.
 A person imports infringing copies of a work
 A person without obtaining the authority from the copyright holder reproduces his work in any form.

Examples

 If a person uses someone’s song as background music in his/her music video then he could be made
liable for copyright infringement.
 If a person downloads movies or songs from an unauthorized source then it will amount to copyright
infringement.
 A person is free to record a TV program to view it later, but if he transfers or distributes it to others then
it becomes a copyright infringement.

Assignment’ and ‘transmission’ of Trademarks

 Assignment of trademarks takes place when there is a transfer of ‘ownership’ of the mark from one
party to another with or without goodwill of the business.
 In India, in case of assignment of registered trademark, such assignment is required to be recorded in the
register by filing Form TM-P (Application for Post registration changes in the trademarks).
 Assignment of trademarks is conducted by way of a properly executed Trademark Assignment
Agreement signifying the transfer of the mark from one person or entity (owner) to another party.
 Transfer of rights by operation of law, devolution on the personal representative of a deceased person
and any other mode of transfer, not being assignment, is also as transmission of trademarks under
Section 2 (1) (zc) of the Act.
 Provisions of Section(s) 37 to 45 under Chapter V of the Act postulate the form and procedure of
assignment and transmission of trademarks in India.
o Complete Assignment – All rights in the trademark as transferred to another entity including the
rights to earn royalties etc.
o Assignment with respect to specific products or services also known as Partial Assignment
– The transfer of ownership is restricted to the type of goods or services agreed upon by the
parties.
o Assignment with goodwill – All rights and value of the trademark as associated with the goods
or the services are transferred.

Intellectual Property In Economy

 Intellectual property rights offer owners of intellectual property the legal authority to prevent others from
utilizing their creations or to define the conditions under which they can be used.
 IPR's ultimate goal is to provide customers with innovative, competitive goods and services that they desire
and need. The advantage of an IPR-based system for innovation is that it offers incentives to further develop
and commercialize publically financed fundamental research, allowing new products, businesses, and even
industries to emerge based on these innovations.
 Any intellectual property protection regime shall have two main economic goals. The first is to encourage
investments in research and development as well as commercial innovation by granting exclusive rights to
use and sell newly created technology, commodities, and services.

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 The second purpose is to encourage rights holders to put their innovations and ideas on the market in order
to foster the widespread circulation of new technology for the development of the economy.

The Paris Convention of 1883

 The Paris Convention adopted the principle of national treatment as to the person seeking protection in Art.
2(1) (current text as adopted in 1925):
 “Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the
other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to
nationals; all without prejudice to the rights specifically provided by this Convention.
 Consequently, they shall have the same protection as the latter, and the same legal remedy against any
infringement of their rights provided that the conditions and formalities imposed upon nationals are
complied with.”
 Further, the Convention applies to three basic categories: national treatment, right of priority, and common
rules.

National treatment

The Paris Convention stipulates that each Contracting Nation must treat all nationals from the Convention’s
member states as equal when granting intellectual property protection (Paris Convention Article 2 and 3)

Right of Property
Regarding patents, trademarks, and industrial designs, the Convention grants the right of protection based on a
first come first served basis (Paris Convention Article 4). Meaning, the first intellectual property claim filed in a
member state takes precedent over future filings made in other member countries

Common Rules
The Paris Convention outlines a few general rules that its signatory states must follow:

 Patents granted for different member states for the same invention must operate independently. In fact,
whether a patent is granted, canceled, or declined in one country does not affect the status of that patent
in other countries. Also, the provision requires that the inventor be named in granted patents.

 Trademark registration requirements are not regulated by the Paris Convention. Instead, each member
state must determine its own guidelines based on its local laws. Similarly, registered marks must operate
independently without undue influence from other member countries.

Collective Marks

Section 61 of the Trade Marks Act, 1999 prescribes the special provisions for collective trademarks. The
provisions of the Trade Mark Act, 1999 are applicable to collective marks but they are subject to provisions
under Chapter VIII of the Act.
 Under section 2(1)(zb) of the Act the “trademark” for the goods/services of one person are distinguished
from those of others, whereas in the case of “collective marks” the “goods/services of members of an
association of persons which is the proprietor of the mark” is distinguished from others.

A collective mark shall not be registered:6

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  If there is a likelihood of the public to be confused or deceived ;
 If it is considered as something other than a collective mark.

The important considerations which must be assessed by an Examiner with respect to a registration application
for a collective mark are:

 an association of persons own the collective mark and not a partnership;

 the collective mark is used and belongs to a group;
 the collective mark may not be used by the association itself, but the members using the collective mark
must comply with certain quality standards;
 the collective mark should be indicative of a trade connection with the association who is the proprietor
of the mark.

Domain name?

 Domain names are user-friendly forms of internet addresses commonly used to find websites. Domain
names are created as per the procedures and rules of the Domain Name System (DNS), and the names
registered in the DNS are domain names.
 A domain name is an identity of one’s business online. Every web server requires a DNS server to translate
domain names into Internet Protocol (IP) addresses. Since domain names are easy to use and remember,
they have become business identifiers.
 A trademark is a mark capable of distinguishing the services and goods of one person from those of others
and being represented graphically.
 It may consist of the shape of goods, their packaging and a combination of colours. It includes a brand, logo,
label, name, signature, letter, word, numeral, packaging or combination of colours.
 Domain name performs the same functions as that of a trademark. A domain name serves the same
functions online that a trademark performs offline in business dealings and transactions.
 A trademark is a graphic signifier of the company product or service, while the domain name is a navigator
of the company on the internet and the virtual image of the business. A registered and protected trademark
and the domain name offers the following benefits:

o A trademark protects and promotes the brand name, while a registered domain name protects
unauthorised use by any entity or person.
o Trademark supports the face value of a profession or business, while a domain name increases the
contact value of the business from any remote place of the world.
o A trademark makes a product or service prominent in the market, while a domain name can deliver the
service or product to customers worldwide.

Inventive Step?

 The inventive step is used to find out if the patent is in fact for a new item or just an obvious improvement
on an existing item. Inventive steps make sure patents aren't awarded to existing inventions that the
"inventor" just improved upon.
 These patents could allow someone to make money off of an item just because they tweaked it. This patent
could also allow them to sue companies that improve their own processes just because they made small
changes as well.
 The applicant must prove that the improvement isn't obvious to people within the industry and that there are
actually improvements that come with patenting the idea

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 Patent rights create substantial benefits for the inventor; these should not be handed to everyone who uses
his/her knowledge and training to draw only basic conclusions from existing knowledge.
 Patent Rights are a reward for the execution of exceptional ideas and are meant to encourage out-of-the-box
thinking.

Copyright Societies:
 Copyright Society is a legal body which protects or safeguards the interest of owners of the work in which
copyright subsist. The Copyright Societies gives assurance to the creative authors of the commercial
management of their works.
 The authors of creative works licence a publisher to publish the work on a royalty basic. This also leads to
infringement of the work anywhere in India or abroad therefore it is extremely difficult for the owner of the
work to prevent from such infringement.
 To overcome such difficulty owners of Copyright works have formed Societies to licence their works for
performance or communication to the public or issue copies of the work to the public. ‘Copyright Society’
means a society registered under Section33 (3).
 The Copyright societies are also authorized to watch out for infringement of the copyright and take
appropriate legal action against the infringers.

FUNCTIONS OF A COPYRIGHT SOCIETY:

The copyright Societies discharge the following functions:
1. It grant license of the Copyright in the work for reproduction, performance or communication to public.
2. It locates the infringement of the Copyright and initiates legal proceedings
 To regulate these activities of such copyright societies Sections 33 to 36A have been enacted under the
Copyright Act 1956.
 Section 33(1) provides that no person or association of person allowed to carry on the business of issuing or
granting licenses in respect of any work in which Copyright subsists or in respect of any rights conferred by
the Act except under a registration.
 However the owner of Copyright in his individual capacity will continue to have the right to grant licenses
in respect of his own works with his obligation if any as a member of the registered Copyright Society.
 An application may be made to the Registrar of Copyright. Every application should satisfy the conditions.
And then the Registrar shall forward the application to the Central Government which may, having regard to
the interests of the author and other owner of rights under this Act, the interest and convenience of the
public and in particular of the group of persons who are most likely to seek licenses in respect of the
relevant rights and the ability and professional competence of the applicants, register such association of
persons as a Copyright Society subject to conditions as may be prescribed.

Powers of Controller of patent

 The Indian Patent Act of 1970 is the law that governs patents in India. It caters to all issues arising out of
patents, including which patents fall under patentable inventions or not, registration of patents, and others.
 Along with that, it also caters to the powers of the Controller. Chapter XV of the Act deals with the
management of the Controller. Section 73 of the Act deals with the appointment of the Controller of Patents.

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 Section 77 of the Patent Act 1970 lays down the Controller’s powers, which are that of the civil court.
Section 77(1) states that under this act’s provisions, the Controller will have a civil court’s capabilities.
 This will be in cases in which the suit is being tried under the Code of Civil Procedure. Certain specific
matters have also been stipulated in which that happens. They are as listed below.

 Firstly, in matters of summoning and enforcing any particular person’s attendance and further examining
him or her on oath.
 Secondly, in matters which involve the discovery and production of any document.
 Thirdly, in which evidence has to be received on affidavits.
 Fourthly, where commissions are issued for the examination of witnesses or documents.
 Fifthly, when costs have to be awarded.
 Sixthly, when one’s own decisions have to be reviewed on the application, it must be made within a
prescribed period and prescribed.
 Seventhly, in matters in which an ex-parte order has to be set aside on application. This, too, has to be
done within a prescribed period and in a prescribed manner.
 Lastly, any matter which has been prescribed

Essentials of a good trademark

An ideal trade mark should be attractive to sound and appearance and suggest the quality of the product. Most
importantly an ideal trademark should be made in such a manner that it can be distinctive from other trademarks
of the same class and should be able to be registered and protected. The following are the few attributes of a
good trademark that should be considered before Trademark Registration.

 A trademark must be a mark which includes a device, heading, brand, label, ticket, signature, word,
letter, name, numeral, packaging or combination of colors or any combination of the above
attributes.
 It should be easy to speak and spell. A good trademark is such that the public can easily spell and
speak.
 It should be easy to remember. A good trademark that is easy to speak and spell can be easily
remembered as well. So that it becomes easy for public to
 It should not be too lengthy and complicated to be forgotten easily. If it is lengthy or complicated,
people will not bother to take the effort to memorize it and ultimately it will be forgotten.
 It must be distinctive. It can be natural distinctiveness or acquired distinctiveness.
 The best trademarks are invented words or coined words or unique geometrical designs
 It can only be suggestive of the quality of the products, but not descriptive
 A good trademark should not be barred under the Trade Marks Act under the Prohibited classes of
trademarks

Passing-Off

 “If a person sells his goods as the goods of another” then the trademark owner can take action as this
becomes a case of passing off. Passing off is used to protect or safeguard the goodwill attached to an
unregistered trademark.
 When the trademark has been registered by the owner and infringement happens, then it becomes a suit for
infringement, but if the trademark has not been registered by the owner and infringement happens then it
becomes a case of passing off.
 The principle of passing off, i.e. “Nobody has the right to represent his goods as the goods of somebody
else” was decided in the case of Perry v Truefitt (1842).
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 The passing off law has changed over time. Previously it was restricted to depicting one person’s goods as
another. Later it was extended to trade and services.
 This was later expanded to business and non-business activities. Now, it applies to many forms of unfair
trade and unfair competition where one person’s activities harm the goodwill associated with the activities
of another person or group of individuals.
 Kinds of Passing off
o Extended Passing-Off – Where misrepresentation as a particular quality of a product or service
damages the harmony or goodwill of another person or business.
o Reverse Passing Off – Where a trader markets, sells or produces the goods or services of
another person or business.

TRIPS Agreement about?

 The TRIPS Agreement protects intellectual property in trade-related regions to a large extent and is
regarded as a comprehensive new framework for intellectual property standards protection.
 The TRIPs Agreement also has the distinction of being the first legal agreement to address all areas of
intellectual property with a number of specific clauses.
 The three main issues governed by the agreement are:

 Standard– All member states are required to provide a minimum set of criteria for the protection of
IPRs in each of the IP categories covered by the Agreement. Each area of IP is addressed in such a way
that the major aspects of protection, such as the subject matter sought to be protected, the rights to be
granted, and possible exceptions to such rights, as well as the minimum period of protection, are all
explicitly stated.
 Enforcement– The second set of clauses focuses on domestic processes and remedies for intellectual
property rights enforcement. The Agreement establishes a set of broad rules that apply to all IPR
enforcement actions. It also includes rules on civil and administrative processes and remedies,
provisional measures, particular border requirements, and criminal proceedings, all of which outline the
procedures and remedies that must be provided so that the right holders can successfully exercise their
rights.
 Dispute settlement– Disputes occurring between WTO members over responsibilities emanating from
the TRIPS Agreement are subject to the WTO’s dispute resolution processes.

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