4 Marks – Intellectual Property Rights

1. What is a trade secret ? - Section 27 of the Contract Act

Trade secrets are intellectual property (IP) rights on confidential information which may be
sold or licensed. In general, to qualify as a trade secret, the information must be:
• commercially valuable because it is secret,
• be known only to a limited group of persons, and
• be subject to reasonable steps taken by the rightful holder of the information to keep
it secret, including the use of confidentiality agreements for business partners and
employees.
The unauthorized acquisition, use or disclosure of such secret information in a manner contrary
to honest commercial practices by others is regarded as an unfair practice and a violation of the
trade secret protection

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

2. Budapest Treaty

➢ Budapest Treaty on the International Recognition of the Deposit of Microorganisms for

the Purposes of Patent Procedure

➢ Adopted in 1977, the Budapest Treaty concerns a specific topic in the

international patent process: microorganisms.
➢ All states party to the Treaty are obliged to recognize microorganisms deposited as a
part of the patent procedure, irrespective of where the depository authority is located.

➢ In practice this means that the requirement to submit microorganisms to each and every
national authority in which patent protection is sought no longer exists.

➢ The Budapest Treaty ensures that an applicant, i.e. a person who applies for a patent,
needs not to deposit the biological material in all countries where he/she wants to obtain
a patent.

Benefits of the Budapest treaty

The Budapest Treaty eliminates the need to deposit microorganisms in each country where
patent protection is sought. Under the treaty, the deposit of a microorganism with an
"international depositary authority" satisfies the deposit requirements of treaty members'
national patent laws.

3. Restoration of Lapsed Designs - Section 12 of the Design Act, 2000

The proprietor of registered Design can file an application for Restoration of Lapsed Design as
per Section 12 of the Design Act, 2000. The application for Restoration of Lapsed Design
should be filed within 12 months from the date on which the registered Design ceases to have
effect.

(1) Where a design has ceased to have effect by reason of failure to pay the fee for the extension
of copyright under sub-section (2) of section 11, the proprietor of such design or his legal
representative and where the design was held by two or more persons jointly, then, with the
leave of the Controller one or more of them without joining the others, may, within one year
from the date on which the design ceased to have effect, make an application for the restoration
of the design in the prescribed manner on payment of such fee as may be prescribed.

(2) An application under this section shall contain a statement, verified in the prescribed
manner, fully setting out the circumstances which led to the failure to pay the prescribed fee,
and the Controller may require from the applicant such further evidence as he may think
necessary.

4. Confidential information

Confidential information refers to private information released to the receiving party, orally or
in writing. The disclosing party expects that this information is not released to the public or
any third parties.

Confidential Information Examples

Three main categories of confidential information exist: business, employee and management
information. It is important to keep confidential information confidential as noted in the
subcategories below.
• Customer lists: Should someone get a hold of your customer list, they could steal
customers from you. This could be an employee planning on starting his or her own
venture or the employee could sell the list to a competitor.
• Financial statements: These are also considered to be trade secrets. Your financial
statements consist of more than the cost of doing business. They have vendors and
customers listed in accounts payable and account receivable.
• Supplier lists: You may not think this could be listed as a trade secret, but you may not
want competitors knowing where you source certain products, whether food ingredients
for a restaurant or products for a manufacturing process. A supplier list may also include
any discounts you receive. Should this get into the hands of a competitor, it would be
 easy to figure out some of your manufacturing processes or even recipes for special
dishes.
• Operations manuals: Even your operations manuals are trade secrets. The manuals
tell your employees how to do their jobs. They may include other information pertinent
to their jobs, such as how long to process widget A and how long widget B needs to
age.
• Contracts: Contracts, including non-disclosure contracts, real estate contracts, rental
agreements and other types of contracts should be confidential. As with other types of
information, it could be detrimental to your business should a competitor get its hands
on them. You could lose a deal or one of your carefully worded contracts could give a
competitor the edge it needs to outsell you.
5. Surrender of Patent - Section 63 of the Patents Act, 1970

Section 63 of the Patents Act, 1970 allows a patentee to surrender a patent. The patentee can
offer to surrender his patent by giving notice to the Controller. The offer to surrender the patent
should be published by the Controller, and every person interested in the patent must also be
notified of the same.

(1) A patentee may, at any time by giving notice in the prescribed manner to the Controller,
offer to surrender his patent.

(2) Where such an offer is made, the Controller shall publish the offer in the prescribed manner,
and also notify every person other than the patentee whose name appears in the register as
having an interest in the patent.

(3) Any person interested may, within the prescribed period after such publication, give notice
to the Controller of opposition to the surrender, and where any such notice is given the
Controller shall notify the patentee.

(4) If the Controller is satisfied after hearing the patentee and any opponent, if desirous of being
heard, that the patent may properly be surrendered, he may accept the offer and, by order,
revoke the patent.

6. Novelty in Industrial Designs

Novelty implies that before the filing of applications for an industrial design similar design has
not been published or presented to the public in any form. Originality lies in the specific
features of the appearance of the product, which make it recognizable and different from other
products

Novelty is requirement for a patent claim to be patentable. In contrast, if an invention was

known to the public before filing a patent application, or before its date of priority, if the
priority of an earlier patent application is claimed, the invention is not considered new and
therefore not patentable.
7. Various kinds of Intellectual Property

Intellectual Property
Intellectual property is a broad categorical description for the set of intangible assets owned
and legally protected by a company or individual from outside use or implementation without
consent. An intangible asset is a non-physical asset that a company or person owns.

The concept of intellectual property relates to the fact that certain products of human intellect
should be afforded the same protective rights that apply to physical property, which are
called tangible assets. Most developed economies have legal measures in place to protect both
forms of property.

Types of Intellectual Property

Patents

A patent is a property right for an investor that's typically granted by a government agency,
such as the U.S. Patent and Trademark Office.2 The patent allows the inventor exclusive rights
to the invention, which could be a design, process, improvement, or physical invention such as
a machine.

Copyrights

Copyrights provide authors and creators of original material the exclusive right to use, copy,
or duplicate their material. Authors of books have their works copyrighted as do musical artists.
A copyright also states that the original creators can grant anyone authorization through a
licensing agreement to use the work.

Trademarks

A trademark is a symbol, phrase, or insignia that is recognizable and represents a product that
legally separates it from other products. A trademark is exclusively assigned to a company,
meaning the company owns the trademark so that no others may use or copy it.

A trademark is often associated with a company's brand. For example, the logo and brand name
of Coca-Cola is owned by the Coca-Cola Company (KO).

Franchises

A franchise is a license that a company, individual, or party–called the franchisee–purchases

allowing them to use a company's–the franchisor–name, trademark, proprietary knowledge,
and processes.

The franchisee is typically a small business owner or entrepreneur who operates the store or
franchise. The license allows the franchisee to sell a product or provide a service under the
company's name. In return, the franchisor is paid a start-up fee and ongoing licensing fees by
the franchisee. Examples of companies that use the franchise business model include United
Parcel Service (UPS) and McDonald's (MCD).

Trade Secrets

A trade secret is a company's process or practice that is not public information, which provides
an economic benefit or advantage to the company or holder of the trade secret. Trade secrets
must be actively protected by the company and are typically the result of a company's research
and development (R&D), which is why some employers require the signing of non-disclosure
agreements (NDAs).

Examples of trade secrets could be a design, pattern, recipe, formula, or proprietary process.
Trade secrets are used to create a business model that differentiates the company's offerings to
its customers by providing a competitive advantage.

Digital Assets

Digital assets are also increasingly recognized as IP. These would include proprietary software
code or algorithms, and online digital content.

8. Well known trademark - Section 11(8)

A well-known trademark is a mark that is widely recognized by the general public and is
associated with a popular company or brand. These trademarks are often known as “famous”
trademarks and enjoy a higher degree of protection under the Trademark Act, when compared
to regular registered marks.

Ford Motor Company & Anr. v. Mrs. C.R. Borman & Anr. (2014)

Facts of the case

Ford Motor Company is a company incorporated and existing under the laws of Delaware in
the United States of America, with its primary place of business in Michigan. In this case, the
plaintiffs had outlined in the plaint the origins of the plaintiffs’ business and how the plaintiffs’
trademark, trade name, and house mark ‘FORD’ were developed by its founder, Mr. Henry T.
Ford, who founded the Ford Motor Company in 1903. The plaintiffs have also described how
‘FORD’ has evolved and diversified its company over the past more than 100 years, becoming
one of the world’s largest industrial corporations.

Issues involved in the case

• Whether ‘FORD’ has acquired the status of a well-known trademark?

Judgement of the Court

The trademark ‘FORD’ is particularly “well-known” among members of the sector and the
general public. The long duration for which the plaintiff has used the said mark, the wide
geographical area of use, the general public’s knowledge of the trademark ‘FORD’ and its
goodwill and reputation as a result of the extensive promotion, publicity, and advertisement,
use of the mark as well as extensive sales made by the plaintiffs under the mark in India and
other countries, and the numerous registrations obtained of the mark all establish the fact that
the plaintiffs’ mark ‘FORD’ has indisputably achieved the character of ‘well-known mark.’

9. Infringement of trademarks - Section 29

Trademark Infringement is a legal term that refers to the unauthorised use of a trademark. It
occurs when someone uses a trademark without the permission of its owner and may confuse
customers about the source, sponsorship or affiliation of products or services.

If, for example, you have a jewelry company with a trademarked name of Romantic Stones,
and another company comes along and starts selling jewelry under the name Romantic Stones,
you have a pretty clear-cut claim for trademark infringement on your hands.

Types of Trademark Infringement

➢ Direct Infringement
➢ Indirect infringement

10. Procedure to be obtained patent

❖ STEP 1: Invention Disclosure. ...

❖ STEP 2: Patentability Search. ...
❖ STEP 3: Filing an Application for a Patent. ...
❖ STEP 4: Patent Drafting. ...
❖ STEP 5: Filing the Patent Application. ...
❖ STEP 6: Request for Examination. ...
❖ STEP 7: Responding to Objections (if any) ...
❖ STEP 8: Grant of Patent.
❖ STEP 9: Renewal of Your Patent
11. Term of copyright - Section 22

Copyright is protected for a limited time. The Berne Convention specifies the limit or the term
of copyright as not less than sixty years. And on its line, the Indian Copyright Act, 1957
provides for the protection for sixty years.

Literary, Dramatic, Musical, and Artistic Works: Copyright lasts for the lifetime of the author
plus 60 years. If there's joint authorship, the duration is 60 years from the death of the last
surviving author. Photographic Works: The duration of copyright in India is 60 years from the
year of publication.

• Term of Copyright for Posthumous Publications

• Term of Copyright for Anonymous Publication
• Term of Copyright for Photographs
• Term of Copyright for Cinematograph Films
• Term of Copyright for Sound Recordings
• Term of Copyright of government works
• Term of Copyright where a public undertaking is the first owner
• Term of Copyright of work of an international organisation

12. Infringement of Copyright in a Design

In order to understand the infringement of copyright in a design, we need to know what

constitutes a design to be qualified as statutorily registered design under the Designs Act, 2000
(hereinafter referred to as the “Act”). To that extent, section 4 of the Act lays down the
following three criteria which are to be considered while a person or proprietor intends to get
their work registered:

1. It has to be new or original. For further clarification, the landmark case of Gammeter
vs Controller of Patents explained that the design does not necessarily have to be
created newly, but can also be used in a unique way on an old design as long as the
usage of the new design on an existing product has not been already discovered
earlier otherwise.
2. It is not existing in the public domain or has been published in any tangible form
within India or outside India as the case may be. This can be explained by citing the
case of Steelbird Hi-tech India Ltd vs SPS Gambhir in which the Court clearly
explained that the design needs to be new or original which is a product of the
intellectual outcome of a person and has never been in existence before such person
has expressed such design in a tangible form.
13. Origin and functions of trademark

A trademark primarily serves the purpose of identifying the origin or source of goods, products

or services. In India, a trademark performs the following functions:

• It identifies the product and its origin

• It proposes to guarantee the quality of the product

• It advertises the product as it represents the product

• It creates the image of a product in the minds of the public, especially the

consumers or the prospective consumers of the product

14. Patent agent - Section 2(n) of the India Patent Act, 1970

Patent agent as defined under Section 2(n) of the India Patent Act, 1970 is a person who is
registered under the patent act as a patent agent. The definition under the act defines as to who
is a patent agent. In order to understand the meaning of the term ‘Patent agent’ in simple terms,
it can be defined as “a person who files the patent application” The process involved in the
preparation of a patent application is taken care of by the patent agent. That is, he helps in the
preparation of the documents, including drafting, filing and prosecution of an application
before the controller on behalf of any person who wishes to obtain a patent.

Qualification required for being a patent agent

For a person to qualify to get his name registered in the Patent register he shall meet the criteria
specified under Section 126 of the act. As per which, the qualifications required to be a patent
agent are as follows:

1. He should be a citizen of India;

2. Should have completed 21 years of age;
3. He should have completed a degree in either Science, Engineering or Technology
from any university established under law

15. Duration of copyright

In India, the duration of copyright in India is dictated by the Copyright Act, 1957, and it varies
based on the type of work:

1. Literary, Dramatic, Musical, and Artistic Works: Copyright lasts for the lifetime
of the author plus 60 years.
 2. If there’s joint authorship, the duration is 60 years from the death of the last
surviving author.

3. Photographic Works: The duration of copyright in India is 60 years from the year
of publication.

4. Sound Recordings: The duration of copyright in India is 60 years from the

beginning of the calendar year after the year in which the recording was published.

16. Anton Piller Order

An Anton Piller Order is a court order that provides the right to search a premises with the
purpose of seizing evidence without prior warning and is intended to prevent the destruction
of relevant evidence.

An Anton Piller order (otherwise known as a search order) is a court order which permits
inspection of the defendant or respondent's premises and civil search for and seizure of relevant
materials and documents.

17. Refusal of Registration of Trademark

The Trademark Act, 1999 mentions two grounds for refusal of a trademark registration in India,
and those are:

Absolute grounds for refusal of registration (Section 9)

• Marks which are devoid of any distinctive character,

• Marks that are indications or marks that are used in commerce to define the quantity,
quality, type, values, intended purpose, or geographical origin of goods or services
rendered,
• Marks or indications which have become customary in the current language or in
the bona fide and established practices of the trade, shall not be registered,
• Nature of the mark is such that it can deceive the public or cause confusion,

Relative Grounds for refusal of registration (Section 11)

Section 11(1) states the following grounds for refusal:

• Trademarks which confuse the public as it is identical with an earlier similar

trademark of goods or services.
• Trademarks which confuse the public as it is similar with an earlier identical
trademark of goods or services.
Section 11(2) states the following grounds for refusal:

• Trademarks which would take unfair advantage of a similar or identical earlier well-
known trademark in India.
• Trademarks which would be detrimental to the distinctive character or repute of a
similar or identical earlier well-known trademark in India.
•
Section 11(3) states the following grounds for refusal:

• The usage of the trademark is bound to be prevented by the law of passing off
protecting an unregistered trademark used in the course of trade.
• The usage of the trademark is bound to be prevented by the law of copyright.

18. Procedure For Registration of Design

➢ Step 1:- Examination

➢ Step 2:- Formality Check
➢ Step 3:- Substantive Examination
➢ Step 4:- Concern Of the Report Of the Examiner
➢ Step 5:- Design Registration & Publication
➢ Step 6:- Register of Designs

Benefits of design registration

• A well-designed article will be more attractive and sellable.

• Attractive designs can increase the product’s marketability.

• If the design is original and authentic, the owner can sue anyone who copies or imitates

it.

• Design registration protects packaging or images.

• If necessary, the other party must show that the copyright is valid.

• Design registration is a great alternative to proving a copyright’s validity.

• A designer can create something original and unique for their product. This gives the

product its character. Its uniqueness is rooted in the market and allows it to be unique

among the other brands.

Validity of Design Registration in India
Design registration in India is good for 10 years, after which it can be further renewed for an
additional period of 5 years by paying the required fees. If the extension is not completed on
time, the design will expire; however, you can still apply for its renewal.

19. Deceptive similarity - Section 2(1)(h) of the Trade Marks Act, 1999

Section 2(1)(h) of the Trade Marks Act, 1999 defines the word “deceptively similar” as “A
mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that
other mark as to be likely to deceive or cause confusion”

In the case of Cadila Healthcare Ltd v. Cadila Pharmaceutical Ltd. in 2001. The court
established specific guidelines for this particular scenario. It ruled that the following factors
should be taken into account in determining whether a mark is deceptive:

a) the nature of the products or services the mark relates to;

b) the degree of resemblance between the two marks, and

c) The type of mark—whether it be a word, symbol, or phrase, and the target audience that the
company offers are also significant factors.

In another case of Parle Products (P) Ltd. v. JP Co. Mysore, the Hon'ble Supreme Court
established a standard to evaluate whether two trademarks are deceptively similar. It said that
a thorough examination of both marks was not required. Instead, the degree of general
resemblance should be assessed based on the possibility of customer misunderstanding that it
could result.

In K. R. Chinna Krishna Chettiar vs. Sri Ambal & Co., Madras and Anr. (1970), it was held
by the Supreme Court that to find out that the trade mark may be found deceptively similar to
another, it does not need to be intended to deceive or to cause confusion. It is the probable
effect on the ordinary kind of customer that one has to prove.

20. Broadcasting rights - Section 37 of Copyright Act

Broadcasting rights (often also called media rights) are rights which a broadcasting
organization negotiates with a commercial concern - such as a sports governing body or film
distributor - in order to show that company's products on television or radio, either live, delayed
or highlights.

21. World Trade Organization

The World Trade Organization is an intergovernmental organization headquartered in Geneva,

Switzerland that regulates and facilitates international trade. Governments use the organization
to establish, revise, and enforce the rules that govern international trade in cooperation with the
United Nations System.
The World Trade Organization (WTO) deals with the global rules of trade between nations. Its
main function is to ensure that global trade flows smoothly, predictably and freely as possible.

The WTO has six key objectives: (1) to set and enforce rules for international trade, (2) to
provide a forum for negotiating and monitoring further trade liberalization, (3) to resolve trade
disputes, (4) to increase the transparency of decision-making processes, (5) to cooperate with
other major international economic institutions involved in global economic management, and
(6) to help developing countries benefit fully from the global trading system

22. Meaning of 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.

Kinds of passing off

1. Extended passing-off

2. Reverse passing off

Elements of passing off

There are three basic elements of passing off. The three elements are also known as the
Classical Trinity, as restored by the House of Lords in the case of Reckitt & Colman Ltd v.
Borden Inc. (1990). They are

1. Misrepresentation,
2. goodwill, and
3. damage.

Britannia Industries Ltd. v. ITC Ltd. (2017) In this case, the respondent, i.e., ITC Limited,
filed a civil suit against the appellant, Britannia Industries Limited, for the infringement of the
copyright of the trade dress of the respondents’ product, Sunfeast Farmlite All Good, which is
No Added Sugar and No Maida Digestive Biscuits. The court said that the appropriation of and
exclusivity claimed vis-à-vis a get-up, and particularly a colour combination, stands on a
different footing from a trademark or a trading name because colours and colour combinations
are not inherently distinctive.
It should, therefore, not be easy for a person to claim exclusivity over a colour combination,
particularly when the same has been in use only for a short while. It is only when it is
established, maybe even prima facie, that the colour combination has become distinctive of a
person’s product that an order may be made in his favour. We feel that the present is not such
a case. When the first element of passing off, in our view, is not established, we need not
examine the other elements of misrepresentation and the likelihood of damage.

23. Compulsory License - Section 84 Indian Patents Act 1970.

• A compulsory License authorised by the government allows the company or an

individual seeking other’s intellectual property to use it without having to seek the
consent of the owner/ the right holder by paying a predetermined fee for the license.
The compulsory licence is regulated by the Indian Patents Act 1970.
• It is one of the flexibilities in the field of patent protection included in the WTO’s
agreement on intellectual property — the TRIPS (Trade-Related Aspects of Intellectual
Property Rights) Agreement.
• It existed in the TRIPS Agreement, ever since it took effect in January 1995.
• Indian Patent Act,1970 provides that after three years from the date of the grant of a
patent, any person can apply for the compulsory license, on certain grounds:
• The reasonable requirements of the public with respect to the patented invention
have not been satisfied
• the patented invention is not available to the public at a reasonably affordable
price
• Lastly, the patented invention is not used in the territory of India.
• Indian Patent Act,1970 authorizes the central government to issue a compulsory license
at any time after the grant of the patent, in the case of:
• National emergency; or
• Extreme urgency; or
• Case of public non-commercial use