TY BCOM, M. Law, SEM VI, Unit IV, Dr.Dimple Buche, St.

Mira’s College for Girls, 2020-21

INTELLECTUAL PROPERTY RIGHTS

Human mind knows no bounds as far as thinking goes. It never takes rest. Many a times, it
creates intellectual output in the form of inventions, new designs, marks etc. When it assumes
a new form, which is apparently intangible, it assumes a form of property which we call as
'intellectual property'. In other words, intellectual property is the creation of human mind or
intellect. Examples include: any literary work produced by the authors, musical work created
by the musicians, making a trademark for the business, inventions brought about by the
inventors, designing industrial products, such as, cars, motor bikes etc., are the creation of
human mind and, hence, they are called intellectual properties. If intellectual property is
properly exploited, it can create wealth. The person who creates an intellectual piece of work
owns it like any other tangible property, like, land or movable goods. Hence, this property is
also required to be protected by law. The law which tries to protect such intellectual work or
creation of human mind is known as intellectual property law.

Meaning of Intellectual Property

"Property is that which belongs to a person exclusively of others and can be subject to
bargain and sale. It includes goodwill, trademarks, licences to use patent, options to
purchase etc. and other rights under a contract". In general, there are two types of
properties
(1) Tangible - (movable and immovable)
(2) Intangible -( Intellectual property)
One of the important aspects of any property is that its owner is at liberty to use the
property as per his wishes and that nobody else can legally use his property wit hout his
permission.
In the case of a movable property like, motorcycle cupboard, books or phone, its o wner
has exclusive right to use all such things by virtue of being an owner. However, an owner
can also authorise others to use such things. On similar lines, the case of an immovable
property, such as, buildings, land, the owner has the right to use such property subject to
certain legal limitations, for example, for constructing building on a land, various
permissions are required by law. Hence, an owner is under obligation to use the said
property within the boundaries of existing law.
The intellectual property lies essentially in the realm of concept, idea and thought .
Intellectual property law tries to protect application of ideas and information that are of
commercial value. Intellectual Property, like any other tangible property is also owned by
its owner to the exclusion of all others. No one has the authority to use intellectual property
without the consent of the owner of the intellectual property. In other words, the owner of
intellectual property has exclusive right over his intellectual property.
The intellectual property may be broadly classified into two groups:
1. Patents, Designs, Trademarks, service marks, trade names etc., which are known as
'industrial property'.
2. Copyright,
While patents provide temporary protection to technological inventions; rights does so
to the appearance of mass produced goods. On the other ha nd copyrights give longer
lasting rights to literary, artistic and musical creations; whereas] trademark s afford
protection against imitation so long at least as they continue to be employed in trade.
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Justif ication for Protection of Intellectual Property

Every human effort which promotes economic, social, scientific and cultural! development of a
society must be encouraged and, for doing so, the creator must not only get suitable reward for
his intellectual creation but also adequate legal protection for the same. This is where the
Intellectual Property Rights (IPRs) steps in to do needful. Hence, IPR is known as that branch of
law which extends protection to some the finer manifestation of human achievements. Hence, the
Intellectual Property (IPRs) are those legal rights which concern itself with the governance of the
use creations of human minds. In this regard, the Intellectual property law tries to regulate the
creation, use and/or exploitation of mental or creative labour. In other words, the third parties are
thereby prevented from taking unjust benefits from the intellectual property which is not owned by
them.

INTELLECTUAL PROPERTY:
'Intellectual Property' includes the rights relating to literary, artistic and scientific works -
performances and performing artistes, photographs and broadcasts; inventions in all fields of
human endeavour - scientific discoveries; industrial designs, trademarks, service marks, and
commercial names and designations; protection against unfair competition and all other
rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields
(Article 2, WIPO Convention 1967).
In the post-globalisation era, the scope of intellectual property is expanding day by day,
and the creators of intellectual property are becoming more and more conscious about the
protection of their intellectual work tinder the intellectual property laws.

Different Kinds of IPRs

Actually, any intellectual work having commercial value is worth protecting. Taking into
consideration the nature of intellectual effort and area of application, the IPRs may be classified
into different kinds, for example, the intellectual work carried out in the areas of science,
technology, engineering or agriculture has been identified to give protection under the Patent
Law. However, the intellectual work in the field of literature, music, photography, arts and
paintings have been categorised as subject matter of copyrights. Hence, in accordance with
the different nature of intellectual work, the following categories of IPRs may be identified -
1. Trademarks
2. Geographical indications.
3. Industrial designs
4. Patents
5. Confidential Information,Trade Secrets and Traditional Knowledge

They can be discussed in brief as under:

1. Copyrights: Copyright is the term used to regulate the creation and use that is made of a
range of cultural goods such as, books, songs, films and computer programmes.
Copyright includes the right to copy the work and the right to perform in public. The rights
given to a copyright owner is valid for a considerable time.
Copyright is a right guaranteed to protect the intellectual efforts in the fields of literature,
arts, drama, choreography, cinematography, sound recording and computer programmes. Of
late, a computer programme is also considered as a form of writing in electronic form. Hence,
copyright protects IPRs of authors who put intellectual efforts in writing a book, story, script,
song, poem or in performing a show or drama, or in painting a picture or art work etc. In
India, the Copyright Act, 1957, lays down provisions to protect the subject matter universally
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recognised as copyrightable through registration. The author enjoys the exclusive monopoly
over his work insofar as to use, sell, adopt, translate or exploit the work in any manner. After
the death of the author, his legal heirs become entitled to the rights.

2. Trademarks : Business persons use certain representations to market their products,

which would advertise, identify and distinguish their products from other existing products in
the market. This may be done through a mark, symbol, name, alphabet, numerical, colour or
any combination of the above. The use of such marks helps to identify and advertise the
product in the market.
A trademark is a visual symbol or representation in the form of word, a device or a label
applied to articles of commerce with a view to indicate to the purchasing public that they are
the goods manufactured or otherwise dealt in by a particular person as distinguished from
similar goods manufactured or dealt in by other persons.
Due to its extensive use and advertisement, trademark has begun to acquire goodwill and
reputation amongst the customers of the goods. Well-known trademarks are likely to be
copied by the competitor and they could earn profits by trading on the reputation and goodwill
of another trademark. For the purpose of protecting trademark, the Trade and Merchandise
Marks Act, 1958 was enacted. To fulfill the expectations of TRIPs, the new statute, namely,
the Trademarks Act, 1999, has been enacted in india. The law provides for the registration of
the trademarks and confers exclusive rights to its owner for using the said trademark. It is
obligatory on the owner of the to use ® on the mark to indicate its registration to the
public, the registered trademark owner can successfully prevent others from using his
trademark and can take legal action against the persons making unauthorised use of such
trademarks.

3. Geographical Indications: It means an indication, which identifies certain goods as

originating or manufactured from a particular locality with specific quality. The protection for
geographical indication is offered through registration, which confers an exclusive right to
the owner to use the geographical indication on his goods. The provisions for such protection
are laid down in the Geographical Indication Act, 1999.
4. Industrial Designs: Design refers to the shape, pattern, configuration or ornamentation of
an article. It must be capable of being applied to industrial products. The design should
render the ‘product’ capable of being identifiable from the rest of the bulk. For example, the
shape of Maruti Swift car not only stands out on its own but also renders itself identifiable
from the other cars by virtue of its unique shape and, is thus, recognisable even by an
illiterate person. In other words, it (the product) lends its identity to a layman even without
taking the support of its name. Such is the power of designs on the psyche of both consumers
and layman alike. In India, the law relating to designs is governed by The Designs Act, 2000.
The Act provides for the registration of the design of the product. The registration of a design
confers on the owner an exclusive right as regards the use and application of the design on his
industrial article for a period often years.

5. Patents: Inventions are characteristically protected by patents. A patent is a legal protection

extended to inventions. Most commonly, it is seen as a legal document that confers on the
patenter, a twenty-year monopoly. 'Patent' is a monopoly right conferred on the inventor who
has invented a new product or process through his intellectual efforts and, which are capable
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of being used in industrial application. Patents are granted on the fulfillment of certain
requirements, such as, novelty, inventive step, industrial application and written description.
It may also be granted to a new product or process, which contains an inventive step in written
form having commercial significance. The inventor has to disclose the invention in written
form with description in order to obtain exclusive monopoly in the form of patent for a specific
period (20 years). Once the duration of a patent is over, the invention falls into the public
domain and anyone can use it. It should be noted that the government has the requisite
authority to interfere with the monopoly right of the patentee in the public interest. The
patentee can sell the patent or, if he so desires, can grant licences to ot hers to exploit the patent
for business or commercial purpose. The law of patents in India is governed by the Patents
Act, 1970, as amended by the Patents (Amendment) Act, 1999, and t he Patent
(Amendment) Act, 2005.

6. Confidential Information or Trade Secrets, Traditional Knowledge : In the business

world, every business organisation would like to keep certain information (e.g.
manufacturing details, financial management or administrative procedure) as trade secrets so
that the competitors may not take any undue advantage. The essence used by Coca-Cola in its
cold drink is the classic example of trade secret. A trade secret or confidential information is
any information or knowledge that although commercially usable is not yet generally known.
The secret information may, include, a formula, computer programme, process, method,
technique, customer lists etc. Trade secrets could be protected by the law of contract by
executing a contract to impose obligation for the purpose of keeping the valuable information
confidential.In india we do not have any law to protect trade secrets and hence this area is
regulated by common law principles and contractual obligations. Traditional knowledge is
the knowledge that is transferred from one generation to another without proper
documentation. Patents can also be claimed on the basis of traditional knowledge. It can be
associated with medicinal plants and their harvesting.

WORLD INTELLECTUAL PROPERTY ORGANISATION (WIPO)

After the nineteenth century industrial revolution, it became necessary to protect

intellectual creativity legally for the creative work of scientists, artists, literary writers etc. At
an international level, certain agreements were required to take this issue forward. This was
done initially through Paris Convention for Protection of intellectual property ( March,1883)
in Paris and Berne Convention for protection of literary and artistic works (1886) in Berne,
Switzerland. Thereafter, the IPR regime proceeded with the establishment of WIPO and
TRIPs and the IPR jurisprudence sufficiently developed both at the international as well as
national -level.
The Paris Convention provided for the following three principles, namely -
1. Every member state should grant the same protection to nationals of other
member states as it grants to its own nationals;
2. Right of priority which confers on any member of the Union, which has filed an
application for a patent in other countries. If application for patent is filed within this grace
period, the original date becomes the effective filing date to all other member countries. This
right of priority is available for twelve months in the case of a patent and six months in
the case of trademarks and industrial designs.
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3. Uniform Rules: uniform set of rules were established and required to be followed by
each member state to provide minimum protection for industrial property rights.
The Berne Convention mainly dealt with copyright issues. It provided for a minimum
term of protection of copyrights

Establishment of World Intellectual Property Organization (WIPO): The convention

establishing the WIPO was signed at Stockholm in July 1967. The WIPO has been designed as a
specialised body of United Nations and it also acts as a complimentary body with WTO
for promotion and protection of IPRs. Headquarters at Geneva, it succeeds the
international bureau for the protection of Intellectual Rights , and became a specialized
agency in 1974.

The objectives of WIPO are summarized as under:

1. To promote the protection of intellect ual properly throughout the world through co-
operation amongst states and where appropriate i n collaboration with any international
organisation,
2. To ensure administrative co-operation among the unions.
3. To harmonize national intellectual property legislation and procedures.
4. To provide services for international applications for intellectual
5. To exchange information on intellectual property
6. To extend legal and technical assistance to developing and other countries.
7. To facilitate the resolution of IPR disputes.
8. To use information technology as a tool for storing, accessing and using valuable IP
information.

TRIPs -Trade Related Intellectual Property Rights

The General Agreement on Tariffs and Trade system (GATT) was formed after W ar II
with a view to stabilise and liberalise trade conditions worldwide.
In 1986, a new round of negotiations began to include Trade Related Intellectual
Property Rights (or TRIPs) on the agenda. The negotiations that began in 1986 were
concluded in 1993, and because part of the world Trade agreement signed in Marakesh
in April 1994. As a result, replacing GATT, the world Trade Organisation (WTO) came into
effect 0n 1st January 1995.

The member states of WTO are the parties to the TRIPs agreement. India, being a member of the
WTO, is a signatory of TRIPs agreement. The TRIPs agreement has created a multilateral
framework for enforcement of all IPRs which were so far left to the member states to carry out at
their discretion under national laws. It is a mandatory agreement attached to WTO. Every member
of WTO is under obligation to observe the provisions of TRIPs and provide minimum level of IPRs
in their national laws. If any member state fails to comply with the minimum prescribed
requirement, then, they would be held liable under the appropriate penal provisions provided for
in the said Act. Prior to TRIPs, there were different rules for the enforcement of IPRs. The
international trade became a bone of contention between the countries concerned due to the less
than harmonious economic relations that existed between them. To overcome the same, TRIPs
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Agreement which consists of seventy-three Articles in seven part was framed.

Objectives of TRIPS:
The objectives of TRIPs stated in its introductory note can be summarised as under;
1. To reduce distortions and interruptions to international trade by taking into account the need
to promote effective and adequate protection of IPRs, and to ensure that measures and
procedures to enforce IPRs do not themselves become barriers to legitimate trade.
2. To provide a multilateral framework of principles, rides and disciplines dealing with international
trade in counterfeit goods
3. To cater to the special needs of the least developed countries in respect of maximum
flexibility in the domestic implementation of laws and regulations in order to enable them to create a
sound and viable technological base.
4. To resolve disputes on trade related intellectual property issues through multilateral
procedures.
5. To create a mutually supportive relationship between WTO and the WIPO as well as other
relevant organisations.
6. To provide for adequate standards and principles concerning the availability, scope and use of
TRIPs.
7. To provide for an effective and speedy procedure for multilateral prevention and settlement of
disputes between governments
8. To provide effective and appropriate means for the enforcement of TRIPs taking into consideration
the differences in national legal system.

PATENTS:
The law relating to the patents in India is incorporated in the Patents Act, 1970, as
amended by the Patents (Amendment) Act, 1999, the Patents (Amendment) Act, 2002 and, the
Patents (Amendment) Act, 2005.
The patent is a legal grant of monopoly right for some fixed term to the creator of new and
useful invention in return for disclosing the details of invention. The grant and use, both are
regulated by law. Thus, the monopoly right granted to him (inventor) encourages him to
carry out more and more research which, in turn, results in further development of
technology. This aids in the development of the Industrial sector and thereby the economic
prosperity of a nation.

Definition of Patent
The term 'patent’ derives its origin from the Latin word 'patene' meaning 'to open’. If a person makes
what he thinks is an invention, he or, if he works for an company or organisation , that organization
can ask the Government by filing an application with the patent office to give him a document in
which it is stated what the invention is and that he is the owner of the patent. This document, issued by
a Government authority, is called a ‘patent’ or a ‘patent for invention’. Hence, a ‘patent’ is
nothing but a licence given to an inventor to make exclusive use of his invention.

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The ‘patent’ may also be defined as the exclusive right to use or exercise an invention
granted to a person for a limited period in consideration of the disclosure of the invention.
A patent is an exclusive right granted to a person who has invented a new and useful
article or an improvement of an existing article or a new process of making an article. It
consists of an exclusive right to manufacture the new article invented or manufacture of an
article, according to the invented process for a limited period. After the expiry of the duration
of patent, anybody can make use of such invention.
A patent is an intellectual property where in the owner of the patent will be in a position :
• to sell such property or
• he can also grant licences to others to make use of such patent.
A patent has got a geographical limitation. Hence, a patent granted in one country cannot be
enforced in another country unless the said invention is also patented in that country. The
invention to be patentable must be new, useful and applicable for industrial purposes.

Object of patent law is:

• to encourage scientific research, new technology and industrial progress,
• grant of exclusive privilege to own, use or sell the method or the product patented
for a limited period,
• to stimulate new inventions of commercial utility.
• The grant of the monopoly to inventor is in return for the disclosure of the
invention details to the Patent Office which after the expiry of the fixed period of
the monopoly, passes into the public domain.
Under the provisions of law, patent is granted only for an invention which must be new and
useful. In other words, it must have novelty and utility. It goes without saying that it must be
inventor's discovery as opposed to mere verification of what was already known before due
date of the patent.

Salient Features of Patents

(1) The patent must be in respect of an invention and not a discovery.
(2) In respect of one single invention, there must be one single patent.
(3) A patent may be in respect of a substance or in respect of a process.
(4) In order to have a complete patent, the specifications and the claims must be clearly and
distinctly mentioned.
(5) It is the claims, and claims alone which constitute the patents.
Besides the above observations, the following aspects are required to be considered while
understanding the concept of patent.

Unless an invention satisfies the following mentioned four conditions, it cannot be

patented:

1. Originality of inventions: According to the Parent Act, ‘Invention’ means a new product
or process involving an inventive step and capable of industrial application". ‘Inventive step'
means a feature that makes the invention not obvious to a person unskilled in the art. Hence,
it is clear that a patent must display an element of originality. It means the addition of some
new characteristics that is not known to the body of existing knowledge in its technical field
must be capable of being described to a written form or with the help of the actual deposit of
the invention.

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2. Novelty: An inventors invention must be novel i.e, it must be altogether new and hitherto
not in the public knowledge.
3. Inventive Step or Non-obvious : Inventions to become patentable must involve certain
creativity and innovation. Without inventive step an invention remains obvious and does not
deserve a patent grant.
4. Utility: Another essential prerequisite of a patent is that it must have utility or usefulness.
Inventions not Patentable: The following inventions are not patentable.
1. an invention which is frivolous and which claims anything obviously contrary to well-
established natural laws;
2. an invention whose intended use could be contrary to public order;
3. the mere discovery of a scientific principle or the formulation of an abstract theory;
or, discovery of any living or non-living substances occuring in nature;
4. the mere discovery of any new property or new use of a known substance or new
process, unless such new process results in a new product;
5. a substance obtained by a mere admixture;
6. the mere arrangement and rearrangement of known devices;

Kinds of Patents: The Patents are of two types: Process Patent and Product Patent.
In India, apart from the above two, patents of addition can also be granted.
In a 'process patent', it is only the process or method of manufacture of substance that is
granted a patent; whereas in the case of a 'products patent', the patent is granted to the
substance/ article/product. As per the Amendment Act of 2005, in India, it is obligatory on
the part of authorities concerned to provide product patents to inventions. However, an
exception is made to the case of product patentability vis-a-vis food, drugs and
medicines, which has since been removed by an Ordinance passed by the Central
Government, in order to comply with the TRIPs obligations.

Term of Patent
Every patent shall be dated as of the date on which the application for patent is required to
be entered in the register.
Prior to the Patent Amendment Act 2002, the term of patent in India was between five and
fourteen years (from the date of sealing) depending upon the categories of invention. But
Section 27 of the TRIPS Agreement provided a uniform term of patent to be twenty years.
This period of twenty years is to be calculated from the date of filing of application for patent, -
Accordingly, the term of every patent granted, after the commencement of the Patent
(amendment) Act, 2002, and the term of every patent which has not expired and has not
ceased to have effect, on the date of such commencement, shall be twenty years from the
date of filing for the patent. The term of patent in the case of international applications filed
under the Patent Co-operation Treaty (PCT) designating India, shall be twenty years from the
international filing date accorded under the PCT. The term of patents of addition shall also
be equal to that of main invention and terminate along with the main patent.

Steps in grant of a Patent

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The procedure for obtaining a patent in India starts even before a patent application is filed
with the patent office in India.
Step 1 – Checking Patentability of the invention by performing a search for similar
technologies
Before filing a patent application in India the first step (optional but recommended) in the
patent registration process is to perform a detailed patentability search to determine the
chances of getting a patent. The search should ideally be performed for both patent and non-
patent references. The advantage of a search is it provides a good idea of the merit of the
invention and helps in deciding if there are good chances of ultimately getting a patent
granted. Furthermore, it helps in fine-tuning the patent application and ensure that filing is
not done for already existing patent.

Step 2 – Drafting a patent application (Complete/Provisional)

The next step is to prepare an Indian patent application (in Form 1).Each patent application
has to be mandatorily accompanied by a Patent specification (Form 2). Based on the state of
the invention, you can either file a complete patent application or provisional patent
application. If the invention is in the development mode a provisional application can be
filed. Filing of the provisional application gives 12 months of time to finalizer invention and
file the complete application.
While applying, patent draft has to be included along with the application. The patent draft is
representation in front of the patent office and the decision of the patent office on the grant of
the patent is based on the draft. (Patent agent/ Professional lawyers with the expertise and
experience in working and prosecuting patent applications help in this process)

Step 3 – Filing the patent application

Patent filing in India can happen in the following scenarios:
• First filing – Once the patent application is drafted, the next step is to file the patent
application and secure the filing date. In case you are filing a provisional application first,
you need to file the complete application within 12 m onths from the provisional filing
date.

Each application for a patent which is filed with the Indian patent office needs to be
accompanied by the the following forms provided below:
• Form 1 – Application for grant of a patent
• Form 2 – Provisional/Complete specification)
• Form 3 – Statement and undertaking regarding foreign application under section 8
(only required if a corresponding patent application is filed in another country)
• Form 5 – Declaration as to inventorship (only to be filed along with the complete
application)
• Form 26 – Form for authorization of a patent agent (only required if you are using a
patent agent to help you file the application)
• Form 28 – To be submitted by startup or small entity (only required if you are
claiming startup or small entity status)

Step 4 – Publication of patent application

• Every patent application which is filed with the Indian patent office is kept as a secret
until the time it is published in the official patent journal. Indian patent office publishes

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patent applications ordinarily after 18 months. This is an automatic event. If inventor

wants in published earlier, he can make a request for early publication (Form 9) and the
application gets published within 1 month of the request.
• The advantage of publication – The date of publication is important as your privileges
and rights start from the date of publication, although you can’t enforce your rights by
way of any infringement proceedings until your patent is granted.

Step 5 – Examination of the patent application

Every patent application which is filed for protection has to be substantively examined before
a patent is finally granted. The patent application is examined on merits of the invention as
described and claimed in the patent specification.
Request for Examination
The applicant has to specifically make a request for examining their patent application ( Form
18). Once the Request for Examination has been filed, the examiner scrutinizes the
application to ensure that the application is in accordance with the patent act and rules. The
examiner also performs a search to understand similar technologies to ascertain if the
invention would satisfy the patentability criteria. Based on the review of the application, the
examiner will issue an Examination Report to the applicant, stating the grounds for
objections. The first such examination report is called the First Examination Report (FER).
Once, the FER is issued, the patent applicant needs to successfully overcome the objections
to receive a patent grant. The whole process may involve responding to examination reports,
appearing for hearing, etc. The total time needed to put an application in order for the grant is
6 months (earlier 12 months) from the date on which the FER is issued to the applicant.

Step 6 – Final decision on grant of patent

Once, the patent application overcomes all the objections, the patent will be granted and
published in the patent gazette.

Step 7 – Renewal
After the patent has been granted, it has to be renewed every year by paying the renewal fee.
A patent in India can be renewed for a maximum period of 20 years from the patent filing
date.
The complete patent process in India takes anywhere between 3 to 5 years as it involves a
series of steps to be mandatorily followed within prescribed timelines to get a patent.

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Infringement of Patent- Infringement is the violation of the rights conferred by the

grant of patent. The exclusive right of the patentee are right to make, use, exercise,
sell the invention etc.

Rights against infringement (Sections 104 -108) : The legal rights of the patentee
can be protected by: filing a suit in a court of law and thereby prevent the
unauthorised persons from exploiting the patent of others.

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TRADEMARK
Every consumer would like to buy top quality goods from the market. In competitive
marketplace, the goods are sold by their names which may indicate quality and identity as
distinguished from other products. The business houses try to develop their brand in the
market by delivering quality goods or services. Trademark is one of the most commonly used
intellectual property rights which manufacturer or supplier of goods tries to show that
although the goods produced of him are similar to those manufactured by others, their
distinguishing marks are different. This mark is useful to identify not only a given
manufacturer's brand but also the quality of goods or service produced or made available by it
Thus, in today's changing business world, trademark is assuming increasing relevance. To
stand up in the increasingly competitive business scenario, wherein different manufacturers
produce and compete for similar products, it becomes imperative for the manufacturer
concerned to position his product in the crowded marketplace by way of marking such goods
with a symbol so as it becomes easily identifiable - both as regards the source of the product
and its quality. That apart, trademarks safeguard the interests of both the consumers and
traders alike. It does so, by enabling the consumer, in particular, to trace the origin of goods
from a definite trade source. As a result, the consumers can protect themselves from
purchasing substandard commodity.
Historical Back ground
At the international level, the importance of trademark was recognised through Madrid
Agreement way back in 1891. From Madrid to TRIPs, the international legal framework of
trademark has developed in a substantial manner. The law governing trademarks in India till
now was the Trade and Merchandise Marks Act 1958. This was the first attempt whereby
law on trademark was codified and it provided for registration of trademark already in use and
even those that were proposed to be used. To increase the flow and transfer of technology as
well as to simplify and harmonise trademark management system, the Trademarks Act, 1999,
was passed in place of the Act of 1958 to keep up with the era of globalisation.

Definition: As per Trademarks Act 1999, "A trademark means a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their packaging and combination of
colours". The Act, explains the term ‘mark’. It says, mark includes a device, brand, heading, label
ticket, name, signature, word, letter, numeral shape of goods, packaging or combination of
colours or any combination thereof.
A trademark is basically used to advertise one's product so as to make it known to the
purchaser. It is a symbol consisting in general of a picture, label, word or words, which is applied
or attached to a trader's goods.

Characteristics of Trademark
The following characteristics of trademarks can be deduced from the various judicial decisions
taken on it, so far:
1. It must be a mark that is a device, brand, heading, label, ticket, name or abbreviation of
name, signature, word, letter or combination of colours etc.
2. Graphical representation: It must be capable of being represented graphically.
3. Capacity to distinguish: It must be capable of distinguishing the goods or services of one
person from those of others.
4. Use for goods or services: It must be used or proposed to be used in relation to goods or

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services. Such use must be either printed or conveyed in the form of any other visual
representation of the mark.
5. Way of Acquiring: The right of proprietorship of a trademark may be acquired by
registration under the Act or by use in relation to particular goods or services. This is a statutory
right which requires no actual use but there must be intention to use the mark. The other way of
acquiring trademark is by actual use in relation to particular goods or services. It is called as
common law right which is attached to the goodwill of the business concerned.

6. It includes ‘trade name’: The definition of 'trademark' includes 'mark’ and the very definition of
'mark’ includes the 'name’. Hence, by way of analogy, 'trademark’ includes trade name’ under
which articles, goods etc., are sold. (In this regard, the use of corporate names, such as, Tata',
'Bajaj', 'Godrej’ 'Kirloskar', are permissible)
7. Kind of property: Trademark is a kind of property and is entitled to protection under
the law, irrespective of its value in money so long as it has some business or commercial value.

8. Average person can remember it : The essential characteristic of a trademark is one

by which an average person with imperfect recollection remembers it by general impression.
9. It is transmitted with goodwill: A trademark is generally transmitted in connection with the
goodwill of a business. Hence, the law does not recognize transfer of trademark per se, separate
from goodwill or the business. For acquiring the proprietary right in a trademark, the purchase
of the business to which the goods are concerned is necessary.

10. It may be registered or unregistered: By registering a trademark, a person gets ownership of

trademark and in such a case he need not prove his title against any infringement of the mark,
the owner has to protect his title by means of action of passing off. The object of passing off
action is to restrain a trader from passing off his goods as and for the goods of another trader.
By passing off of goods is meant the act of representing erne's goods or business as the
goods/business of another person. The purpose of passing off action is to protect the commercial
goodwill of a person.

11. It may be for class of goods and or in specified colours: A trademark may be registered in
respect of any or all of the goods comprised in a prescribed class of goods. It may be limited
wolly or in part to one or more specified colours.

12. Good trademark must be distinctive: A trademark may be called as a good trademark when it is
distinctive. It means there should be some quality in the trademarks which identifies the goods
marked as distinct from those of other products or such goods.

13. It has many types such as service marks, certification marks, collective marks and well
known trademarks. The list of characteristics of trademark given hereinabove is just
illustrative in nature and the same is not exhaustive

Term of Trademark: An important characteristic of a trademark is its perpetual life. As per

Section 25 of the Act of 1999, the registration of a trademark shall be for a period of ten years.
However, it can be periodically renewed and used for indefinite period unless it is removed from
register or prohibited tiy a court order. For doing so, a renewal application in the prescribed form
must be made along with payment of renewal fees.
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Various Marks relating to Trademarks:

Besides trademarks, there are certain other forms of marks which may be related to trademarks. The
new trademark law gives protection to these other marks also. For the purpose of understanding their
nature, they are discussed as under:
1. Service marks: A trademark is not only used for goods but also done so for services also. As
the Act of 1958 did not provide any definition of service or service mark, there was no provision to
register service marks in India under the said Act therefore, the action for passing off was the only
remedy to protect such marks. However, the Trademarks Act, 1999 contains the provisions for
registration of a service mark. According to the Act of 1999, the term ‘service’ is defined as follows:
‘Service’ means service of any description which is made available to potential users and includes the
provision of services in connection with business of any industrial or commercial matters, such
as, banking, communication, education, financing, insurance, chit funds, real estate, transport,
storage, material treatment processing, supply of electrical or other energy, boarding, lodging,
entertainment, amusement, construction, repair, conveying of news or information and advertising.
For example: logos of Air India, SBI, ICICI, LIC etc. For the purpose of availing service mark
protection under the Act, the service must be made available in connection with the business of any
industrial or commercial matters including those mentioned in the definition. It should not be of
philanthropic or gratuitous nature.

2. Collective Marks: "A collective mark means a trademark distinguishing the goods or services of
the members of an association of persons, not being a partnership firm, which is the proprietor of the
mark, from those of others". The basic difference between an ordinary trademark and a collective
mark is that while a trademark belongs to an individual; a collective mark belongs to an
association of persons except a partnership firm. Thus, the goods or services of a company/group
of companies like, Bajaj, Godrej, Hindustan Lever etc., may be the subject matter of a collective
mark. The registration of a collective mark will not be allowed if the mark is likely to deceive or
cause confusion on the part of the public, particularly, if it is likely to be taken to be something other
than a collective mark.

3. Certification trademark : "The certification trademark means 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.

The basic function of a trademark is to distinguish the goods of one trader from those of others.
However, the certification trademark serves different objective. Its function is not to indicate trade
origin as an ordinary trademark but to indicate that the goods bearing the mark have been certified
by some persons competent to do so in respect of some characteristics the goods like, geographical
origin, ingredients, mode of manufacture, quality, performance of service and accuracy etc. A
mark shall not be registrable as a certification trademark in the name of a person who carries on a
trade in goods of the kind certified or a trade of the provision of services of the kind certified. For
example: 'Agmark' for food items, ‘Hallmark’ for jewellery.

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4. Well known Trademarks : Well known ‘trademark', to relation to any goods or services,
means a mark which has become so to the substantial segment of the public which uses such
goods or receives such services that the use of such mark in relation to other goods er services
would be likely to be taken as indicating a connection in the course of trade or rendering of
services between those goods AND services and a person using the mark in relation to the first
mentioned goods or services". For example: Reliance, Colgate, Parle, Britannia.

Rights of Trademark Holders:

(i) Right to Exclusive Use:
This right is an absolute right. It is the exclusive right to use the trademark in relation
to the goods or services in respect of which the trademark is registered.
(ii) Right to Seek Statutory Remedy Against an Infringement:
the registered proprietor of a trademark can seek legal remedy in case of an
infringement of his trademark in the manner provided by this Act. He may obtain an
injunction and at his option, either damages or an account of profits by instituting a
suit against the alleged infringer.
(iii) Right to Assign:
the registered proprietor of a trademark shall have the power to assign the trademark
and to give effectual receipts for any consideration for such assignment.
(iv) Right to Seek Correction of Register:
The registered proprietor of a trademark has a right to make an application to the
registrar seeking correction of register regarding the errors pertaining to the
particulars of the registered proprietor and other aspects relating to the registered
trademark.
(v) Right to Alter Registered Trademark
The registered proprietor of a trademark must make an application to the registrar
seeking leave to add to or after the trademark in any manner not substantially
affecting the identity thereof.

Remedies for infringement of Patent/Trademarks

An infringement of a intellectual property takes place when a person other than
registered proprietor in the course of a trade in relation to the same goods or services, for
which is registered, uses the same. The period of limitation for filing a suit for infringement
of an intellectual property is three years from the date of infringement. Whenever, a registered
intellectual property is infringed, the following remedies are available -
1. Civil Remedies
2. Criminal Remedies
3. Administrative remedies.

1. Civil Remedies:
(a) Right to file a suit for injunction in civil court so as to restrain the defendants from using
the registered intellectual property.
(b) Right to claim damages or amount of profits.
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(c) Right to seek an order for delivery of infringed copies for destruction

2. Criminal Remedies: Those persons who are involved in the offences relating to patents/
trademarks, such as, falsely applying and using them, falsely representing a trade mark as
registered, falsification of entries in the registers etc., are liable for punishment ranging from
imprisonment of six months to three years and/or ranging from Rupees 50,000 to Rs.
2,00,000/~ Enhanced penalty is provided on second conviction.

3. Administrative Remedies: The Intellectual Property Appellate Board constituted by the

Central Government hears appeals from the orders or decisions of the Registrar to the
exclusion of other courts and can pass Interim orders.

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