Intellectual Property Rights Notes

Contents
1. Introduction to Intellectual Property
2. Copyright
3. Patents
4. Trade Marks
5. Other forms of IP
6. Intellectual Property Rights Books

Introduction to Intellectual Property

Intellectual Property Rights: Concept, Characteristics and Justifications

Intellectual property rights are the rights given to persons over the creations of their minds, such
as inventions, literary and artistic works, designs, and symbols, names, and images used in
commerce. Intellectual property is the product of human intellect including creativity, concepts,
inventions, industrial models, trademarks, songs, literature, symbols, names, brands, etc.

Intellectual property rights do not differ from other property rights. They allow their owner to
completely benefit from his/ her product which was initially an idea that developed and
crystallized. They also entitled him/her to prevent others from using dealing with or tampering
with his / her product without prior permission from him/ her. He/ she can in fact legally sue
them and force them to stop and compensate for any damages. It is believed that IPR initially
started in North Italy during the Renaissance era. In 1474, Venice issued a law regulating patent
protection that granted an exclusive right for the owner. The copyright dates back to 1440 A.D.
when Johannes Gutenberg invented the printing press with replaceable/ moveable wooden or
metal letters. Late in the 19th century, a number of countries felt the necessity of laying down
laws regulating IPR. Globally two conventions constituting the basis for the IPR system
worldwide had been signed; the Paris convention for the protection of Industrial property (1883)
Berne Convention for the Protection of Literary and Artistic works (1886).

Protection of IPR allows the innovator, brand owner, patent holder, and copyright holder to
benefit from his/her work, labor, and investment, which does not mean monopoly of the intellect.
Such rights are set out in the International Declaration of Human Rights, which provides for the
right to benefit from the protection of the moral and physical interests resulting from the right
holder’s work; literal or artistic product.

Nature & characteristics of Intellectual Property Right:

(1) Intangible property:

IP[1]does not cover the created physical object but retains the conceptual development behind
the physical object . Intellectual property law does not deal with the material object in which
works of the mind have represented . The main feature which distinguishes IP from other types
of property in its intangibility

IP is about a person’s ability to produce a new idea and put it before the public. Intellectual
property: The product does not have any property as such but the strength, judgement, and
initiative of the mind that is included in the product. This generates more theoretical value
Intangible product. IPR[2] is awarded in a specific authorship work, mark, design, etc. For the
integration[3] of ideas.

(2) Rights & duties

IP not only gives rise to rights of ownership but also to duties. In relation to his work/product,
the IP owner has the right to conduct such actions. He is entitled exclusively to produce, copy the
work, market the work, etc. He has a negative right also to rule out the exercise of his statutory
rights for third parties. In this way, IPR law grants the proprietor’s [4] exclusive right to
exclusion [5].

The reciprocal requirement must not be infringed on the right by all others. The privilege
resulting from the application of IP law gives the owner the right to use the job. Such a right does
not extend to others except the IP holders.

(3) creation of statute:

Intellectual property is derived from common law,ans it is covered under specific laws.

In accordance with relevant legislation, IPRs are statutory rights. Intellectual property, to put it
differently, is statute formation. The right holder is protected by proposals, technical solutions or
any other knowledge conveyed in a legally acceptable manner and subject in some instances to
registration procedures.

In addition in the case of certain types of IPR, as is the case for patents and product designs the
registration of the work is compulsory According to the applicable legislative requirements,
whereas it is voluntary to register with respect to certain other forms of IPR such as trademarks,
copyrights or geographical indications.

Some other formalities must be met to obtain such IP privileges. For example, microorganism
patent. Similarly, it is a must for the divulgation[6] of an invention to secure a patent. IPR award
is exclusively conditional on all statutory requirements.

(4) Territoriality

Intellectual property laws are mainly territorial and apply only within the relevant competence.
Although the TRIPS agreement sets the minimum standard in its respective municipal laws for
all nations, the IP laws around the world are not harmoniously [7]United. Full IPRs legislation is
not in effect.
To order to secure and implement their IPR, developers and inventors of different kind of IPs
have to comply with their national law and jurisdictions. The extent of security depends on the
national legislation in question.

(5) Assignable

They should obviously be granted[8] because they are privileges. A dichotomy between rights to
intellectual property and the actual form in which the work is embedded is conceivable. IP may
be bought, sold or licensed, employed, or affiliated.

(6) Dynamism

The IPR is constantly changing. The IP sector is also developing accordingly, as technology in
all areas of human activities is changing exponentially. In accordance with the demand for
scientific and technological advancement the scope of its defense is being extended and new
items are being added to the IPRs sector.

Copyright and protection of plant variety are mentioned as a few of the current developments in
the field of IPR. Technological progress and social development require a steady reassessment of
the IPR system. In the technological era, developments particularly in the field of IT and
biotechnology, require the regular review of IPRs.

(7) subject to public policy

They are exposed to the profound incarnation[9] of public policy. IP seeks to maintain and find
a suitable reconciliation between two competing interests. On one hand, customers try to take up
works without much trouble, and on the other hand, the owners of intellectual rights need to be
adequately compensated.

(8) subject matter of IPR protection

Intellectual property rights eligibility depends on the protection issue. Also, products specifically
identified and acknowledged in the Law as the subject of protection are entitled to intellectual
property rights. While the minimum requirements laid down in law may be included, protection
may still be defined if it is expressly omitted from the subject matter entitled to protection.

The Classical justification for intellectual property rights

The debate about the justification of intellectual property rights is as longstanding as these rights
have been implemented under the jurisdictions of western societies. Over time, three classical
justification of western societies. Over time, three classical justification have been developed,
which are often used in combination to argue in favour of intellectual property rights. One
characteristic of these rights is that they grant monopoly rights for the economic exploitation of
creative work on an invention for a certain time period. But interestingly it seems to be clear,
even for the strongest proponent of such monopoly rights that some restrictions to the execution
of intellectual property rights have to be set.
Justification by natural law

The most common and most important justification starts with Locke’s natural law justification
for the appropriation of worldly resources. Locke starts with his important claim for self
ownership , from which he concludes that a person not only owns himself but also the results of
his good work , as long as he leaves enough as good for others . The concept of self-ownership
and the just appropriation of natural resources is challenged by many egalitarian philosophers
and in libertarian philosophy, it is disputed whether self-ownership can be conceived of as
compatible with the idea that natural resources should be distributed in the egalitarian way
(vallentyne 2000). I will not question the self ownership thesis itself in this work , but will show
that even if we rely on it , we cannot derive any intellectual property rights from it. Locke asserts
that the intermingling of the self – owners labour with natural resources makes the result of this
work his property. And even if this mixing metaphor has generated a lot of critics , it has
remained one of the most used arguments for the justification of the appropriation of natural
resources and the result of the authors labour , therefore he is only owner deserves to benefit
from it exclusively.

IPR for economic development

Protection of intellectual property rights (IPRs) serves a dual role in economic development.
While it promotes innovation by providing legal protection of inventions, it may retard catch-up
and learning by restricting the diffusion of innovations. Does stronger IPR protection in a
developing country encourage technology development in or technology transfer to that country?
This book aims to address the issue, covering diverse forms of IPRs, diverse actors in innovation,
and diverse cases from Asia and Latin America.

Conclusion

While the basic social objectives of intellectual property protection are as outlined above, it
should also be noted that the exclusive rights given are generally subject to a number of
limitations and exceptions, aimed at fine-tuning the balance that has to be found between the
legitimate interests of right holders and of users.

Major International Instruments Relating to the Protection of Intellectual

Property

“In today’s economic environment, intangible assets are becoming increasingly important. These
assets, which are the result of human intellectual creative activity such as invention, design,
know-how, and artistic creation, are known as “intellectual property.” Some forms of Intellectual
property rights are specifically entitled to legal protection such as trademarks, designs, literary
works, layout designs and trade secrets. In the recent years we have seen an increase in the
volume of trade of good and services relating to intellectual property.

Therefore the protection of intellectual property necessary otherwise it will lead to distort free
trade. The protection regarding intellectual property has been always a narrow in most of the
developing countries. Some developed countries also have problematic intellectual property
regimes that, for example, openly discriminate against foreign nations, provide excessive
protection, or otherwise have regimes so different from those employed by the rest of the world
that its administration is discriminatory. This trade distorts were needed to be addressed and for
the purpose of same the WTO decided to establish framework for the protection of intellectual
property. There were number of treaties formed as a common legal framework for the protection
of intellectual property right. In this article the following three of the major frameworks are
discussed-

1. Berne Convention for the protection for Artistic and Literary works.
2. The Paris Convention for the Protection of Industrial Property
3. TRIPS ( Agreement on the trade related aspects of intellectual property rights)

Contents
1. Berne convention for the protection for Artistic and Literary Works-

2. The Paris Convention for the protection of industrial property

3. TRIPS ( Agreement on the trade related aspects of Intellectual Property Rights)

4. Conclusion-

Berne convention for the protection for Artistic and Literary Works-

Global defense of copyright started on the basis of bilateral treaties at approximately mid-19th
century. A number of these treaties were signed which provided for the mutual recognition of
rights but they were neither adequately detailed nor uniform. The need for a standardized
structure led to the Berne Convention on the Protection of Literary and Artistic works being
established and adopted on 9th September 1886. The Berne convention is the oldest copyright
international treaty. This treaty is open and available to all the nations in the world. The
ratification process or power of this treaty lies with the World Intellectual Property Organization
Director General. The preamble of Berne Convention describes the purpose of this treaty. It says
that “to protect. in as effective and uniform a manner as possible, the rights of authors in their
literary and artistic works”

The convention’s three fundamental principles are –

1. The convention convers the concept of protection independence which means that the rights
granted are indented form the protection that exists in the country of origin for the work and
their use.
2. The national care provided will not be formal, i.e. automatic security is granted and there is
registration formality, deposit formality, etc.
3. The principle of ‘national treatment’ of the convention’s basis is that one of the member states
must be protected by the same level of protection as these grants to works of its nationals in
each of the member states.

This convention provides protection to works like any original literary, scientific and artistic
production whatever, its mode of expression, is unlimited, as it is mentioned in Article 2 of the
conceptions. Works based or derived or translated from already existing works like music or
other literary works or artistic modification are also protected under this convention. The
convention provides with the concept of folklore which means that every member states has an
option to protect any unpublished work where the identity of the author is unknown but the
author will be presumed by designation of nation legacy of the author to be a national of that
country. This convention provides protection to the authors of works, whether they are published
or unpublished, when that are the resident of the member state in accordance to the article 3 of
the convention and in case they are not the residents or national so if the member stated, for the
first time they need to publish their work in a member state. The section 2(6) of the conventions
mentions that the convention’s defense shall operate on behalf of the author and his successors.

Some of the articles related to rights are-

Article 8- “The exclusive rights granted to authors under the Convention include the right to
translate”

Article 9- “the right to reproduce in any manner or form, including any sound or visual
recording”

Article 11-“the right to perform dramatic, dramatic, musical and musical works”

Article 14- “the right to broadcast and communicate to the public via wire, re-transmission,
loudspeaker or any other means of communication, the right to make film adaptations and to
reproduce a work.”

The Berne convention also provides with provisions which provides limitations on the
application of the rules on specific exclusive rights. The purpose of these provisions is to provide
a kind of counterbalance to the minimum standards of security.

The Paris Convention for the protection of industrial property

There was no recognition of protection for industrial property rights existed due to the diversity
of laws. It was also difficult to protection for industrial property rights in various countries. In
almost all countries the patent application had to be made nearly concurrently to prevent a
publication in one count4ry losing the invention’s novelty in their country. With the passage of
time it became important to provide protection IPR laws in both patent and the trademark. The
way to di this was by creating a more internationally oriented technical stream and growing
international trade. In 1883 a Diplomatic Conference was held in Par5is and the Paris convention
for the protection or defense of industrial property was given the final approval and signature.
The Paris convention only had 11 states signatures initially but it increased its membership very
significantly during the first quarter of the 20th century.

“The provisions of the Paris Convention can be subdivided into four main categories: firstly, the
rules of substantive law which guarantee in each Member State a fundamental right known as the
right to national treatment, secondly, a basic right is known as a right is known as a right of
priority; a 3rd category shall describe a number of common rules in the field of substantive law
which shall include either rules establishing natural and legal persons’ rights and obligations or
rules requiring the Member States to legislate or permit them to enact legislation pursuant to
those rules; the fourth category encompasses the institutional structure for the application of the
Convention and includes the Convention’s final clauses.” The right of priority provides that if
the same applicant of his successor his applying he may seek protection in all other member
states within a specified period of time.

““National treatment” means that each country party to the Paris Convention must give
nationals from the other Member States the same level of protection as it provides to its own
nationals with regard to the protection of industrial property. Articles 2 and 3 of the Convention
provide for the relevant provisions. The law on national treatment not only ensures the rights of
foreigners but also the absence of any discrimination towards them.”

• Independence Of Patents-

Inventions granted to nationals or residents of the member states in the member states shall be
treated as indented from invention patents obtained in other countire4s, including non-member
countries, in respect of the same invention. The rule regarding the indented of the invention
patents is mentioned in Article 4 of the convention. The grant of a patent for invention for a
given invention does not impose a compulsory patent for the same invention on any other
Member State. His rule would, for example, be violated by a provision in the national legislation
which starts with the invention patent from (foreign) the priority date and not with the filing date
of the application in the country. The inventor must have the right to be mentioned in the patent
for invention as such, according to a general rule. Article 4 stipulates this.

“Article 4bis(5) contains a special feature of the principle of patent independence for
invention. The provisions require that, if no priorities had been claimed, a patent granted in
respect of an application claiming the priority of one or more foreign applications should be
given the same duration as would have been granted under national law. In other words, the
priority period shall not be deducted from the duration of a patent invoking the first
application’s priority.”

• Use of Trademarks

Article 5C regulates the criteria for the use of registered trademarks (1). Some countries which
provide for the registration of a trademark also require that trademarks be used after registration
within a certain time period. If this use is not complied with, the label may be expunged from the
register

Usage usually implies the selling of marked items even though the use of the label may be
limited more widely by national laws. “Use” means the selling of goods labelled. The
Convention protects ‘well-known trademarks’ in Article 6bis. This Article obliges a Member
State to deny or cancel registration by prohibiting the use in that Member State of a mark which
may cause confusion with another mark which is already well-known..The provisions of this
Article the aim of the article is to extend protection to a trademark which, although not registered
in or used in a Member State, is well known in that Member State. Isle 5 of the Paris Convention
covers industrial designs. This provision simply stipulates the obligation to protect industrial
designs by all Member States.

There is no mention of how to provide the defense. Consequently, the Member States can
comply with this duty by enacting special legislation on the safety of industrial designs.
However, they can also fulfill this duty by granting such rights in compliance with copyright or
unfair competition legislation.

Entry to the Paris Convention shall be made by depositing an instrument of accession with the
Director-General of the WIPO, as provided for in Article 21. The Convention enters into force
three months after accession with respect to a nation that has such a country.

Thus, it adhered to the Convention and was informed by the Director-General of WIPO to all the
governments of the Member States. Consequently, accession only requires unilateral action by
the country concerned and requires no decision by the competent authorities of the Union.

TRIPS ( Agreement on the trade related aspects of Intellectual Property Rights)

The Uruguay Round of multilateral trade negotiations under the General Tariff and Trade
Agreement(‘GATT ‘) came to an end on 15 December 1993. The Agreement creating the World
Trade Organization (the “WTO Agreement”) was signed on 15 April 1994. These talks involved,
for the first time, debates on international trade-related aspects of intellectual property rights
within the GATT. The agreement was the result of these talks. The WTO agreement, including
the TRIPS agreement, was concluded on 1 January 1995 (which shall be binding on all WTO
members). In the earlier agreement, a new organisation, the World Trade Organization, was
formed and starts its activities on 1st januray 1995.

As regards the essence and extent of the TRIPS obligations, the basic principle is that the
members should apply the provisions of the Agreement and give the care provided for in the
Agreement to the nationals of other members. A ‘national’ means natural or legal persons liable
for immunity where all the members of the World Trade Organization are also bound by the
conventions of Paris, Berne and Rome and, with regard to the Integrated Circuits, by the
Washington Treaty on Intellectual Property.

National Treatment- In accordance with the provisions of the Paris, the Berne, the Rome
Convention and the IPIC Treaty, the TRIPS lays down the principle of national treatment which
requires a Member to grant treatment to nationals of other Members specified by the
Memorandum of Understanding (Memorandum of Understanding). This principle applies to all
rights as regards industrial property and copyright. As far as rights are concerned, the
obligations only apply in respect of those rights provided under the Convention in the case of
actors, phonogram producers and broadcasting organizations.

MFN- The TRIPS Agreement covers the most-favoured-nation concept, which has not
historically been formulated in the sense of multilateral intellectual property rights. This
principle specifies that the nationality of all other Members shall be consistent with the
nationality of the other Members. As is the case with national processing, the procedure for
acquisitions or maintenance of intellectual property rights provided for in multilateral
agreements concluded under the auspices of the WIPO is excluded from this principle.

Protection of Existing Subject Matter- The TRIPS Agreement includes unique clauses relating to
the effect of the Intellectual Property Rights Agreement on the Member on the date of
implementation of the Agreement. While the Agreement does not give rise for the Member in
question to obligations with respect to acts occurring before the date of application of the
Agreement (Article 70.1), the Agreement gives rise, in relation to all subject matter to
obligations existing and protected on the day the Agreement is applied or which then or then
meet the criteria for protection.

Part II of the TRIPS Agreement sets out minimum standards for availability, scope and use of
rights of intellectual property. It covers eight parts relating to copyright, trademarks,
geographical indications, industrial designs, patents, designs for integrated circuits, defense of
undisclosed knowledge and enforcement of anti-competitive practices in the field of contract
licensing.

• Section 1- Copyright and related rights;

• Section 2- Trademark
• Section 3- Geographical indications
• Section 4 Industrial Designs
• Section 5- Patents
• Section 6- Topographies or layouts of Integrated Circuits

The TRIPS Agreement includes procedures for the protection of intellectual property rights to
permit effective action to be taken against any infringement of the intellectual property rights
protected by the Agreement, including swift remedies for the prevention of infringements. The
procedures should be applied in such a way as to prevent and safeguard valid trade barriers
against their violation. Regulation processes should be reasonable and fair, not overly difficult or
costly, nor unjustified deadlines or delays.

Conclusion-

The aim of these agreements was not only to provide for, but also to provide for, a minimum
standard for the security of the IPR. These agreements establish a basic requirement for IPR
compliance that allows right holders to, by civil court or administrative proceedings, defend their
legitimate interests. The responsibilities of Member States to create administrative and judicial
processes by which IPR holders may seek effective protection of their interests are laid down in
Part III of the Agreement on Implementation of IPR. The general obligation of the Member
States to provide compliance mechanisms requires that, under their national law, the enforcement
process be available to enable effective action to be taken against any act of infringement of the
IPR protected by those agreements, including the inclusion of immediate measures to avoid
infringements and remedies. Member countries are expected to ensure that compliance
procedures are “fair and equitable” and “not unnecessarily complex or expensive, or to avoid
unreasonable deadlines or unreasonable delays.”
Copyright
Meaning and Subject Matter of Copyright

Introduction

Copyright comes under Intellectual Property Rights; Intellectual property is classified into
various types of assets, like trademarks, patents, industrial designs and geographical indications.
Copyright is a right given on Intellectual creations. It is an exclusive right given by law to print,
publish and sell copies of original work for a certain period. The objective of copyright is to
safeguard the author or the creator from unauthorized reproduction of his creation. The domain
of copyright is literary and artistic works, like writings, musicals and works of fine arts, such as
paintings and sculptures, as well as technology-based works such as computer programs and
electronic database. [1]

The Copyright Act, 1957 completely replicates the Berne Convention for Protection of Literary
and Artistic Works, 1886 and the Universal Copyrights Convention after the amendments in
1999, 2002 and 2012 and India is a party to both the conventions. India has signed the Geneva
Convention for the Protection of Rights of Producers of Phonograms and is an active member of
the World Intellectual Property Organization (WIPO) and United Nations Educational, Scientific
and Cultural Organization (UNESCO).

The copyright law has originated in 1557 in England. The world’s first copyright law was the
Statute of Anne, enacted in England in 1710. This Act laid down the concept of the author of a
work and the importance of copyright of such work. The Act laid down various rules for the
protection of the copyright. The Statute of Anne was gradually adopted in various other
countries, such as the Copyright Act of 1790 in the United States. There was no uniform
legislation for copyright globally until 19th century. Finally, in 1886, the Berne Convention was
introduced to provide mutual recognition of copyright between nation states, and to promote the
development of international standards for copyright protection. The United States adopted the
treaty in 1988, and the Convention now is adopted by almost all major countries. This Berne
Convention remains in force to this day and continues to present the basis for copyright law
globally.[2]

Subject matter of Copyright

All subject matters protected by copyright are called protected works. Thus, according to Section
13 of the Copyright Act 1957, it may be subjected for the following works: Original Musical
work, Original Literary Work, Original Dramatic work, Cinematography films, Original Artistic
work and Sound recordings.

Original Musical work –

Musical work was defined as “a work consisting of music and includes any graphical notation of
such work but does not include any work or any action intended to be sung, spoken or performed
with the music”. In 2012 Amendment, there was a grant of statutory license for cover
versions. A song typically contains both literary and musical work. Therefore, the tune and
lyrics together forms the song. Lyric of a song is the literary part and it is protected as a literary
work and the writer of the lyrics is the author of the work. Music accompanying the song is
treated as a musical work and the author of the musical work is the composer of the musical
work. So, in the song there can be two rights that are set of rights in the literary work and rights
in the musical work and they are owned by different people. The author of this right is different
people.

Original literary work –

Literary work refers to works that are in writing. The Act does not classify literary work, but we
understand that as work that are captured in writing. The act says that literary work includes
computer programmes, tables, and compilations including computer databases. The literary work
need not have any literary merit and it is not the job of the courts to look into the literary merit of
copyright work.

So, courts have found that football fixture lists, mathematical tables, tombola tickets, etc. are
capable of copyright protection. The number of words in a copyrighted material is not an
indicator of quality and the author of copyrighted work is the author who makes the work or who
creates the work. There are certain things that cannot be protected under a copyright. For
instance, phrases, names, invented words and slogans cannot form a part of copyright
protections. The names especially used in commerce or in trade are protected by trademarks and
invented work and slogans, for example the slogan which Pepsi used a while ago “Yeh Dill
Mange more”, which is an advertising slogan was held something that can not protected under
the copyright Act.

Secondary or derivative works can also be protected. They can be prospected only if, it involves
the right kind of labor, it should be of such a nature that the effort brings a material change in the
work. Therefore, the work should get changed based on the effort that change should be of the
right kind and the prior work should be different from the secondary work. When the author
assigns the copyright to another person, the new work will be entitled to a copyright as well.
Adaptations and abridgment of existing works can have a copyright; translations can also be
entitled to a copyright. Compilations and collective works can have copyrights. A copyright can
subsist in the individual item as well as in the collection as a whole. For computer programs the
source code can be protected as a literary work.

Original dramatic work –

It defined as “including any piece of recitation, choreographic work or entertainment in dumb

show, the scenic arrangement or acting, form of which is fixed in writing or otherwise but does
not include a cinematograph film”. The terms literary and dramatic are used together and the
principle applicable to literary work will be applicable to dramatic work as well. The author of a
dramatic work is the person who authors the work.

Cinematography films –
It means any work of visual recording and includes a sound recording accompanying such visual
recording and sound recording accompanying such visual recording and “cinematograph” shall
be construed as including any work produced by any process analogous to cinematography
including video films. The author of cinematography films is the producer of the films.

Original artistic work –

An artistic work as mentioned in the Act, a painting, a sculpture, a drawing includes a diagram,
map, chart or plan, an engraving or a photograph, and whether or not any such work possesses
artistic quality. A work of architecture is included as an artistic work and any work of artistic
craftsmanship can also come under the ambit of an artistic work. The author of an artistic work is
the artist of the artistic work other than photograph. The photograph is a person who takes the
photograph, who is regarded as the author. Recently there was an issue with regard to a selfie
taken by a monkey. The Court has held that, the person has to be a human being and so far
intellectual property rights have only covered Intellectual work of humans.

Sound recordings –

It means a recording of sound from which such sounds may be produced regardless of the
medium on which such recording is made or the method by which the sounds are produced. The
author of sound recording is the producer of the sound recording. The sound recording may
involve musicians, it may involve singers, but the author is the producer.

The term of copyright varies depending on the kind of work that is protected. Literary, musical,
dramatic and artistic works are protected for the life of the author and after the death for a period
of 60 years. For posthumous work published after the death of the author. It is 60 years from the
time the work is first published. Therefore, cinematograph films sound recording, government
works, works of international organizations all are prospected for 60 years from the work first
published.

Here the ownership in copyright may vest in different persons under different circumstances.
Like of a work is created by an employee in the course of his or her employment, the employer
owns the copyright. If the work is created by an independent contractor and the independent
contractor signs a written agreement stating that the work shall be “made for hire,” the
commission person or organization owns the copyright only if the work is a part of the larger
literary work, such as an article in a magazine or a poem or story in anthology; part of a motion
picture or other audiovisual work, such as screenplay, a translation, a supplementary work, such
as an afterword, an introduction, chart, editorial note, bibliography, appendix or index; a
compilation; an instructional text; a test or answer material for a test; or an atlas. Works that do
not fall within one of these eight classifications constitute works made for hire only if created by
an employee within the scope of his or her employment. If the creator has sold the entire
copyright, the purchasing business or person becomes the copyright owner.

Eastern Book company v/s Navin J. desai[3]

The question involved was whether there is any copyright in the reporting of the judgment of a
court. The Delhi High court held that it is not denied that under section 2(k) of the Copyright
Act, a work which is made or published under the direction or control of any Court, tribunal or
other judicial authority in India is a Government work. Under section 52(q), the reproduction or
publication of any judgment or order of a court, tribunal or other judicial authority shall not
constitute infringement of copyright of the government in these works. It is thus clear that it is
open to everybody to reproduce and publish the government work including the judgment/ order
of a court. However, in case, a person by extensive reading, careful study and comparison and
with the exercise of taste and judgment has made certain comments about judgment or has
written a commentary thereon, may be such a comment and commentary is entitled to protection
under the Copyright Act. The court further observed: In terms of section 52(1)(q) of the Act,
reproduction of a judgment of the court is an exception to the infringement of the Copyright. The
orders and judgments of the court are in the public domain and anyone can publish them. Not
only that being a Government work, no-copyright exists in these orders and judgments. No one
can claim copyright in these judgments and orders of the court merely on the ground that he had
first published them in his book. Changes consisting of elimination, changes of spelling,
elimination or addition of quotations and corrections of typographical mistakes are trivial and
hence no copyright exists therein.

Godrej Soaps (P) Ltd v/s Dora Cosmetics Co.[4]

The Delhi High Court held that where the carton was designed for valuable consideration by a
person in the course of his employment for and on behalf of the plaintiff and the defendant had
led no evidence in his favor; the plaintiff is the assignee and the legal owner of copyright in the
carton including the logo.

Conclusion

Intellectual Property Rights have been present for a very long time. These are the rights that are
given to people for their creative work. These rights are in the form of patents, copyrights, and
trademarks. They form the intellectual property laws to protect these rights of the people over
their creativity. Even though the intellectual property laws have developed over time, the intent
of the laws remains the same i.e., that the laws encourage the creativity shown by people and for
them to reap benefits from their ideas. The society is never static; it keeps on changing with
change in time. The globalization of the society has led to the advancement in technology. With
the advancement in technology, the copyright infringement has become more easy now-a-days.
Therefore, the legislative amendments made in copyright Act all these years’ help in protecting
the authors from any copyright infringement. The higher level of protection is given to literary,
dramatic, musical or artistic work in any country.

Concept of Originality and Subject Matter in Copyright

Enactment of Statute of Anne is perhaps the first instance of copyright laws. The statute was passed
by the House of Commons to protect the rights and works of authors and publishers and abolish
the existing monopoly of the Printing Press[1]. British copyright laws were primarily used as an
instrument of censorship[2]. The Monopoly was created when Queen Mary issued a charter to the
Stationers ‘Company (printing press) to be the only legal authority to produce and publish books.
This was subjected to prior approval from the Crown, i.e. only works that were approved by the
Crown were allowed to be printed[3]. Therefore, exclusive rights was vested in said Company and
were additionally given the authority to confiscate unauthorized books. This created discontent
among many authors and publisher leading to multiple riots. It was only on sanction of Anne
(Statute of Anne) that settled this discord, which vested rights to authors to protect their work.

Copyright is that area of IPR that regulates the creation and use of cultural goods like books, songs,
films and computer programs[4]. It protects not the idea rather the creative expression of the idea.
There are three basic requirements for works to be copyrightable[5]–

1. Must be an original work

2. Must be in a tangible form, and;

3. Must be the work of an author

(For the purpose of this Article, focus will be placed on point 1)

Section 14 of the Copyrights Act, 1957 extensively defines copyright and Section 13(1) lists works
where copyrights subsist. In general, these works would include-

• Original Literary, dramatic, musical and artistic works;

• Cinematograph films; and
• Sound recording

Originality in this context would not be something that is novel or having aesthetic appeal, but is
an independent creation of the author[6]. This means that the work must be from the authors own
thought and must not be influenced by any exterior factor nor must it merely be some copy or
minimal variation of an existing work. In this context, even if other similar works exist, the
originality of the present work of the author would not be affected as long as it is an independent
creation (i.e. not copied)[7].

The criteria of Originality has changed over the course of time, it moved from the doctrine of
“Sweat of the Brow” that was established on the case of Walter Vs Lane[8] to the “Modicum of
Creativity” doctrine. Sweat of the Brow dictates that a work of the author would be original if his
skill and labour has been used. In the case above, the copyright issue was with regard to an oral
speech that was verbatim reproduced in a newspaper report. The court here upheld that skill, labour
and effort of the reporter was put into making the article, and hence would be copyrightable.
Similar standing was also taken in the University of London Press Vs University Tutorial Press[9],
wherein the court (also) substantiated the idea of Copyright as the protection of an idea-expression.
They reiterated that originality is not a work of novelty or aesthetic appeal, rather a work that
originates from the author itself.

This was later modified in the case of Feist Publications, Inc. Vs Rural Telephone Service
Co.[10]The Court in this case refused to uphold the above doctrine instead shifted to that of
“Modicum of creativity” wherein they stated that originality subsists in works that have exuded
minimum creativity. This essentially means that the author must exhibit ample intellectual thought
and ingenuity to his work. This shift in many ways protects the authors work from being copied.
Sweat of the Brow Doctrine made it easy for people to claim the work of other authors as their
own. However, the criteria of minimum creativity allowed unique idea expressions while
protecting existing works. This was first introduced in India in the case of EBC Vs D.B
Modhak[11].

For the longest time, India followed UK’s Sweat of the Brow rule but transitioned to the current
doctrine. Moreover, the court in the present case held that any contributions made by the editors
of SCC were copyrightable in nature and further stated that orders and judgements within public
domain, hence not copyrightable.

The second and third criteria of criteria of Copyright would be would tangibility (fixation) and
work of an author respectively. Fixation is when the work of an author is produced in a tangible
form[12]. Tangible here is any expression that can be perceived, reproduced or communicated
over a certain period. This further bifurcates tangible expressions into two categories- copies and
phone records[13]. Copies here are works that can be perceived, reproduced or communicated
through human perception or through machines, however this excludes phone records.[14] Objects
in which sounds are fixed and can be perceived, communicated or reproduced through human
perception or machines are considered as phone records, this however does not include those works
accompanying motion pictures or other audiovisual works[15].

The other aspect of Copyright would be its subject matter. As mentioned, Copyright protects the
expression of the idea, and it must be done so in a tangible form. Section 13 of the Copyrights Act,
gives a detailed idea of what works can be considered as a copyright. The World Intellectual
Property Organization in its handbook has laid down the works are copyrightable, a few examples
are given below[16]–

• Literary work – novels, short stories, poems, dramatic works, etc.

• Musical works- chorus, operas, musicals, etc.
• Artistic works- 2 dimensional or 3 dimensional works

These are just few examples of copyrightable works, the handbook and Section 13 of the Act are
extensive in identifying these works. Copyright is not only limited to the above-mentioned
characteristics, it includes economic and moral rights which have been discussed under Section 14
and 57 of the Copyright Act respectively.

Copyright as such only protects creative expressions but does not extend to generic ideas. The case
of RG Anand Vs Delux Films[17] has established that. It also bring to light the idea-expression
dichotomy, which has been inferred throughout this article. Copyright is not the only form of
intellectual property protection; it can also be regulated through patents and trademark among
many others. As seen Copyright is multifaceted and wide in nature, it protects any form of
expression as long as it remains original and creative.
Ownership of copyright
The provisions of acquiring copyright ownership are defined under Section 17 of the Act. The
right of ownership is available only if one qualifies the provision of this Act. There is no other
remedy in other laws prevailing in India to counter the violation of copyright ownership.
The nationality of the person is the important factor to get the right of the copyright.

The section 13(2) provides that-

(1) In case of published work, the work must be published in India or when published outside
India, the author must be citizen of India at the date of publication or if dead at the time of his
death.
(2) Section 7 of the copyright Act provides that the author in the case of unpublished work, at the
time of making of an unpublished work must be citizen of India or domiciled in India where the
making of an unpublished work is extended over a considerable period.

(3) In the case of architectural work the work must be situated in India.

The international organization and the citizen of other countries also get the protection of
copyright in India but it is subject to the certain condition and they are not per se qualified for the
protection.

According to Section 17 of the Copyrights Act, 1957 the first owner of copyright is defined
as under:
Subject to the provisions of this Act, the author of a work shall be the owner of copyright therein.
Section 17 statutorily recognizes the author of the work to be the first owner of the copyright.
The author is defined under the Act for various works, which come under the law of copyright.

Section 2(d) defines author, it says "Author" means,-

(1) In relation to a literary or dramatic work, the author of the work;

(2) In relation to a music work, the composer;
(3) In relation to artistic work other than a photograph, the artist;
(4) In relation to photograph, the person taking the photograph, the artist;
(5) In relation to a cinematograph film or sound recording, the producer; and
(6) In relation to any literary, dramatic, musical or artistic work which is computer- generated,
the person who causes the work to be created.

However, this provision is subject to certain exceptions. For instance Section17 (a) provides that
where a work is made by the author in the course of his employment by the proprietor of a
newspaper, magazine or a periodical under a contract of service or apprenticeship for the purpose
of publication in a newspaper, magazine or periodical, the said proprietor, in the absence of any
agreement to the contrary will be the first owner of the copyright in the work in so far as it
relates to the publication of the work in any newspaper, magazine or similar periodical or to the
publication of the work for the purpose of being so published. Except in such cases, the author
will be the first owner of the copyright in the work. In Thomas v. Manorama, it was held that in
the case of termination of the employment, the employee is entitled to the ownership of
copyright in the works created subsequently and the former employer has no copyright over the
subsequent work so created.

The copyright in a work done by an employee on his own time and not in the course of his
employment belongs to him.

Section 17(b) provides that where a photograph is taken or a painting or a portrait drawn, or an
engraving or a cinematograph film made, for valuable consideration at the instance of any
person, such person, in the absence of any agreement to the contrary, shall, be the first owner of
the copyright therein. In Chidambare v. Renga, where a person rests under an obligation to do
something, and in discharge of such obligation, he transfer a certain interests, such transfer is for
valuable consideration.

Section 17 (c) provides that in the case of work made in course of the author's employment under
a contract of service or apprenticeship, to which clause (a) or clause (b) does not apply, the
employer shall, in the absence of any agreement to the contrary, be the first owner of the
copyright therein. An author may create a work independently, or he may create a work under a
contract of service or contract for service.

Where a man employs another to do work for him under his control, so that he can direct the
time when the work shall be done the means to be adopted to bring about the end, and the
method in which the work shall be arrived on, then the contract is contract of service. If, on the
other hand, a man employs another to do certain work but leaves it to that other to decide how
that work shall be done. What step shall be taken to produce that desired effect, and then it is a
contract for service. In Beloff v. Pressdram, it was held that the true test is whether on the one
hand the employee is employed is part of business and his work is integral part of the business,
or whether his work is not integrated into the business but is only accessory to it or the work
done by him in business on his own account. In the former case it is a contract of service and in
the latter a contract for service.

The services of an independent contractor are hired for creating or doing a work on a given
subject. For example, an examiner who prepares question papers for a university or college. As it
was held in University of London Press v. University Tutorial Press , the examiner was free to
prepare his questions at his convenience so long as they were ready by the appointment for the
examinations, and it was left to his skill the syllabus, the book work, and the standard of
knowledge to be expected at the matriculation examination, and in view of this aspect of matter,
the examiner was not acting under the contract of service but contract for service.

Thus the distinction between the two is same as that between and an independent contractor. An
employee is a person who is subject to the command of his employer as to the manner in which
he shall work. In such cases the employer in the absence of a contract to contrary is the first
owner of the copyright.

Section 17(cc) provides that in case of any address or speech delivered in public, the person who
has delivered such address or speech such address or if such person delivered such address or
speech on behalf of any other person, such other person shall be the first owner of the copyright
therein notwithstanding that the person who delivers such address or speech, or, as the case may
be, the person on whose behalf such address or speech is delivered, is employed by any other
person who arranges such address or speech or on whose behalf or premises such address or
speech is delivered;

Section 17(d) provides that in the case of a government work, the government shall, in the
absence of any agreement to the contrary, be the first owner of the copyright therein;

Section 17(dd) states that in the case of a work made or first published by or under the direction
or control of any public undertaking, such public undertaking shall, in the absence of agreement
to the contrary, be the first owner of the copyright therein;

The explanation to the Section provides that for the purpose of this clause and section 28A,
"public undertaking": means:

(1) An undertaking owned and controlled by Government; or

(2) A Government company as defined in section 617 0f the companies Act, 1956; or
(3) A body corporate established by or under any central, provincial or state Government;

Section 17(e) provides that in the case of a work to which the provisions of section 41 apply, the
international organization concerned shall be the first owner of the copyright therein.

For understanding the concept of ownership under this clause one have to look to the section 41
of the Act. Which says where any work is made or first published by or under the direction or
control of any organization to which this section applies, and there would, apart from this
section, be no copyright in the work in India in the time of the making or, as the case may be, of
the first publication thereof, and either:

(1) The work is published as aforesaid in pursuance of an agreement in that behalf with the
author, being an agreement which does not reserve to the author copyright, if any, in the
work, or

(2) Under section 17 any copyright in the work would belong to the organization,

There shall, by the virtue of this section, be copyright in that work throughout India. Any
organization to which this section applies which at material time had not the legal capacity
of a body corporate shall have and be deemed at all material times to have had the algal
capacity of a body corporate for the purpose of holding, dealing with, and enforcing
copyright and in connection with all legal proceedings related to copyright. The
organization to which this section applies are such organizations as the central Government
may, by order published in the official Gazette, declare to be organizations of which one
 or more sovereign powers or Government or governments thereof are members to which it
is expedient that this section shall apply.

Term of Copyright

Copyright is protected for a limited time. Economic rights have a time limit, which can vary
according to national law. In those countries which are members of the Berne Convention, the
time limit should be equal to or longer than fifty years after the creator’s death. Longer periods
of protection may, however, be provided at the national level.3 For example, in Europe and the
United States, the term of protection is life plus seventy years.

Under the Indian Copyright Act, 1957, Chapter V enumerates the term of copyright protection.
Section 22 of the Act states the term of copyright in published literary, dramatic, musical and
artistic works shall subsist, published within the lifetime of the author, until sixty years from the
beginning of the calendar year following the year in which the author dies. In this section, the
reference to the author shall, in the case of a work of joint authorship, be construed as a reference
to the author who dies last.4 This term has been increased from fifty years to sixty years by the
Amendment of 1992.

However, in cases where the work falls under the category of a cinematograph film, sound
recording, photograph, posthumous publications5, anonymous organisations, the sixty years
period is counted from the date of publication.

Term of Copyright for Posthumous Publications

it is the publication of work after the death of its author. The term of copyright protection of a
posthumous publication subsists for a period of sixty years and unlike in others, here such period
is calculated from the date of publication.6 The United States Court of Appeals held in the case
of Bartok v. Boosey & Hawkes7that, “A “posthumous work” under section 24 of the Copyright
Act is a work on which the right to copyright has passed by will or intestacy due to the absence
of an effective assignment by the author during his lifetime.”

Term of Copyright for Anonymous Publication

If the publication of the work anonymously, that is, publication when the author of such work is
unknown. The copyright term of an anonymous publication, as provided under Section 23 of the
Copyright Act, 1957, is also for a period of sixty years, calculated from the beginning of the
calendar year next following the year in which the work is first published. The section also
provides for the disclosure of the identity of the author. In its proviso, it is provided that where
the identity of the author is disclosed before the expiry of the said period, the copyright exists for
a period of sixty years, calculated from the beginning of the calendar year next following the
year in which the work is first published.8 The explanation clause to Section 23 of the Copyright
Act, 1957 enumerates about the position of the author, that is, here the identity of an author shall
be deemed to have been disclosed. The identity may be disclosed either publicly by both the
author and the publisher or is otherwise established to the satisfaction of the Appellate Board by
that author.

Term of Copyright for Photographs

While Section 22 contains terms of copyright for all other works, the term for photographs has
been set out separately in Section 25 of the Act. This is in consonance with the Berne
convention, which also arrays separate terms for photographs and other works under Article 7.4
and Article 7.1 of the Berne Convention (Paris text) respectively. The Indian Copyright Act
provides for copyright in a photograph for a period of 60 years from the beginning of the
calendar year, following the year in which the photograph is published. But this Section has been
omitted by the amendment of 2012.

Term of Copyright for Cinematograph Films

Copyright of Cinematograph Films9 shall subsist until sixty years from the beginning of the
calendar year next following the year in which the film is published.

Term of Copyright for Sound Recordings

Copyright of sound recordings10 shall subsist until sixty years from the beginning of the calendar
year following the year in which the sound recording is published.

Term of Copyright of government works

In the case of a Government work, where Government is the first owner of the copyright therein,
copyright subsists until sixty years from the beginning of the calendar year next following the
year in which the work is first published.11

Term of Copyright where a public undertaking is the first owner

In the case of a work, where a public undertaking is the first owner of the copyright therein,
copyright subsists until sixty years from the beginning of the calendar year next following the
year in which the work is first published.12

Term of Copyright of work of an international organisation

In the case of a work of an international organisation to which the provisions of section 41 apply,
copyright subsists until sixty years from the beginning of the calendar year next following the
year in which the work is first published.13

An author’s moral right as a right against distortion is available even after the expiry of the term
of copyright.
Conclusion

Copyright ensures certain minimum safeguards of the rights of authors over their creations,
thereby protecting and rewarding creativity. Creativity being the keystone of progress, no
civilized society can afford to ignore the basic requirement of encouraging the same. There is as
such no mandatory requirement for registration of a work to avail the protection under the act.
Rather it is an automatic right, which emerges as and when infringement takes place. 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. Keeping in mind the provisions of the act and the rules framed
therewith, an author’s moral right as a right against distortion is available even after the expiry of
the term of copyright.

Rights of Owner of a Copyright under Copyright Act

Introduction:

The principle of ‘ownership of copyrights’ would be the very first instance where the essence of
a copyright begins, which is a statutory right, vested on the person who owns the copyright. A
key variation should be clearly understood by the readers on the difference between ‘ownership’
and ‘authorship’ of copyrights, since both the terms sounds similar like ‘ownership’ and
‘possession’.

Section 17 of the Copyright Act, 1957 (hereinafter referred as ‘the principal Act’), has
categorically mentioned and clarified the difference among the two terms which has laid down
the essential conditions to acquire the position of ownership to whom the copyright belongs and
has provided what constitutes the first ownership of the copyright. All the works that has been
initiated and governed by a person would not constitute a right of ownership which has been
made understood through a landmark judgment of Eastern Book Co. v Navin J Desai[1] where
an issue has been raised with regards to the ownership of copyright on Government works. The
Court held that the reproduction of any order or judgment delivered by the Court or judicial
authority would not make up an act of infringement and are open to the public to reproduce and
publish the same.

Section 17 of the Copyright Act, 1957:

The conditions that are ought to be specifically kept in mind while interpreting the state of
ownership has been provided statutorily under Section 17 of the principal Act are discussed as
follows –

• For literary, dramatic or artistic works – The author who creates them would be the first owner;
• Works performed under contractual service as an employment – ownership lies upon the
employer;
• In case of photographs shot for cinematographic films – ownership lies at whose instance it has
been taken;
 • Works done under a value of consideration – ownership lies on the person who pays for such
work;
• For a speech delivered at public – ownership lies on who delivers such speech;
• If a speech is made on behalf of another person – the person who assigned the work to deliver
such speech would be the owner of the same;
• Works published or orders passed by the Government or any organization – ownership lies on
the Government or the organization which has published it.

Rights of the owner of a Copyright:

In order to exercise and enjoy the position of ownership of the copyrighted work, certain rights
have been conferred to the owner in terms of morality and on monetary benefits by the copyright
Act, 1957, and are also recognized by International conventions like TRIPS and Berne.

Economic rights of a Copyright Owner –

Any right that yields or payoffs the owner monetarily are said to be the economic rights. The
economic right of the owner are been listed out in Section 14 of the principal Act, under the
meaning of copyright.

Right to reproduce the work :

Reproduction is an act of copying from the previously finished works or giving it a differential
form by adding, editing or modifying the same. In short in means the right to copy. Such right
shall exclusively be exercised by the owner of the work and shall not be infringed by any other
person since the act of reproduction of the work may economically make benefits to its owner.
Be it a book which has been published or a compact disc that has been recorded and
manufactured, right of reproduction of copyrighted works are the basis to protect a work from
the act of exploitation. The concept of substantial and material copying has also been enclosed
within the reproductive right. In regards to the violation of copyright of the owner, it is not
necessary to copy the entire subject matter of the work to held responsible for such infringement
and a part of the reproduction of a particular work would be enough for the infringement of the
same.

Right to distribute in market :

Similar to the right of reproduction, the owner of the copyrighted work also has a right to
distribute in the market and make money out of it. The act of distribution may be in the form of
sale, lending for free or for a consideration, rental, or free distribution by the way of gift. The
right of distribution differs from case to case and shall not be exercised in a similar manner at
each instance. If the work that has been sold is a book, the rule of exhaustion shall be applied.
Wherein the right to distribute the book will be exhausted and ceases to exist after the first sale
of it and the buyer of the book will be further entitled to resale it as a second hand material.
Whereas this condition is not the same in case if the owner of copyright set ups a library and
charges rental fee to read the books available there and the law does not prohibit to do so also the
rule of exhaustion will not come to play.
Right to communicate to the public :

It means letting or making the product/work available to the public by way of broadcasting,
simulcasting or webcasting. If a person not being the owner of the work, communicates it to the
public would amount to the act of infringement. In Indian performing right society Ltd. V
Aditya Pandey, the Delhi High Court held that “the defendant is accordingly restrained from
communicating any of such works to the public, or performing them, in the public, without such
appropriate authorization, or licensing”.[2]

Right of adaptation :

Conversion, alteration, transcription or rearranging a copyrighted work means and includes the
right of adaptation. These rights are exclusively available only to musical, literary or dramatical
works and are not extended to the computer programmes. Although the right of adaptation are
being protected by the statute, it is also been governed by the principles laid down under a
classical case, by the Privy Counsel, in Macmillan and Company Ltd. V K. and J. Cooper[3].
The defendants were alleged on infringing the book published by the plaintiff and the nature of
the book which was previously published by the Plaintiff was put to test and was figured out
the work was made out of a non – copyrighted source, such that the Plaintiffs book lacked its
nature of originality and held that the defendants are not guilty of infringement. The principle
employed here is that, although a work has been adapted from such source it must possess a
quality of originality to an extent.

Right to translate :

The owner of the copyrighted work has a right to translate his work to any other languages he
wants.

In Academy of General Edu., Manipal & ANR. Vs. B. Malini Mallya[4] – petition was filed by
the plaintiff, alleging on the use of his idea without authorization. The Court held that “mere
adaption of an idea would not amount the act of infringement and there must be a substantial
copy of work to attain the same.

Moral rights of a Copyright Owner:

A moral right would stand a step ahead of an economic right in which it is based on the dignity,
uniqueness and the reputation that a work has gained and maintained. It has been well illustrated
in the case of Amarnath Sehgal v Union of India[5],the plaintiff’s masterpiece was damaged by
the defendant by which it lost its aesthetic and market value. A mandatory injunction was passed
by the court in addition of fine amount of 50 lacs as the cost of damage.

The moral rights of the copyright owner has been provided under Section 57 of the principal Act
that encompasses three basic moral rights.

i. Right of paternity;
ii. Right of integrity; and
 iii. Right to retraction.

Right of paternity :

The right of an owner of copyright to claim and prevent others to claim the ownership of his
copyrighted work is said to be a right of paternity. Sholay Media Entertainment and Pvt. Ltd. V
Parag M. Sanghavi[6], was a landmark judgement delivered on the Right of paternity of the
copyright owner, where the court granted protection to the title of the movie which made the
defendant to replace his’ movie title completely by refraining the use of the name which causes
damage to the cult of the name “Sholay” since it was deceptively similar with the same.

Right of integrity :

The right of the owner of the copyright to protect the reputation of his own work from
exploitation is the right of integrity. Sajeev Pillai v. Venu Kunnapalli & ors[7]., the respondent
was alleged on the act of pre – release publicity of the movie which was yet to be released
without ant authorized permission. The court granted relief to the aggrieved petitioner by
restraining the respondent to carry on such act which damages the exclusiveness and reputation
of the movie.

Right to retraction :

Retraction is an act of taking back the previous assertion made. The author at times may feel to
give up his own right as an act of honoring the dignity of his work which sounds like
assassinating ones own life for the sake of protecting the so far gained reputation. The principal
Act, under section 57 grants the author the right to withdraw from the publication of his work. In
simple terms it means waiving of his granted rights for the sake of protection of reputation or
integrity. In Amarnath Sehgal v Union of India[8], the court pointed out the right to retraction
as to withdraw ones own publication if the author feels the condition of his work is derogatory in
nature and are advisable to do the withdrawal of the same. This would be the author’s right to
retraction.

Conclusion :

Hereby, it is to be concluded that the above made discussion on the concept of ownership of
copyrights positively implies the position of Indian legislature and the judiciary in making and
interpreting the laws respectively to its finest possible form. The rights conferred under the
provisions has spelled out the significance and importance given to acquire the title of
ownership, especially by way of honoring the efforts given in by an artist at various facets of his
career in order to produce valuable outcome and their rights are been protected both under the
economic and moral aspect. One highly notable and appreciable provision that shall be regarded
astonishing is the right of retraction which has been conferred to the owner of the copyrighted
work to safeguard the dignity that he has gained through his work. Further the addition of precise
provisions through the copyright Amendment Act has comforted and eased off the hurdles faced
by the performers and broadcasters.
Assignment and Licensing of Copyrights under Copyrights Act

Introduction

IP is an intellectual work which is produced by intellectual human brain. For e.g. literary work,
musical work, inventions, etc. it is an intangible property. It is described as property because it is
capable of sale, purchase, mortgage, etc. the owner if IP has rights over his intangible property.
No one can make use of IP without the consent of the owner. IP is made to protect their rights
and the infringement.

Copyright is a protection given to the creators of certain types of works as an acknowledgment to

their intellectual input[1]. The objective of copyright has always been the protection of the
interest of a creator, coupled with dissemination of knowledge. Though this protection started
with the recognition of rights of authors in their books, but modern technology has substantially
changed the nature of work and its mode of exploitation.

Economic rights allow an owner to reap economic benefits from his intellectual creations.
According to section 14 of the Copyright Act, 1957, different rights are recognised with respect
to the nature of the work. As per this section, it is the exclusive right of the owner to do or
authorise the doing of the acts provided thereunder.

Today copyright includes a variety of industries like: the information industry and the
entertainment industry and industrial design.

Assignment of Copyrights: Section 18 of Copyrights Act

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 work.[2] 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 Production[3], 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. The owner of the film had separate copyright in all those modes, and he could assign
it to different persons. Thus, satellite broadcast copyright of film was a separate right of the
owner of the film and the video copyright assigned to the plaintiff would not include this.
Mode of Assignment: Section 18 of Copyrights Act

As per section 19, assignment of copyright is valid only if it is in writing and signed by the
assignor or his duly authorized agent. The assignment of a copyright in a work should identify
the work and specify kind of rights assigned and the duration and territorial extent of such
assignment. Further, it should specify the amount of royalty payable, if any, to the author or his
legal heirs during the continuance of assignment and the assignment will be subject to revision,
extension or termination on terms mutually agreed upon by the parties.

If the period of assignment is not mentioned it will be deemed to be taken as five years from the
date of assignment. If the territorial extent of such assignment is not stipulated, it will be taken as
applicable in whole of India.

Also, Section 19(8) contemplates that the assignment of copyright work against the terms and
conditions on which rights have been assigned to a particular copyright society where the author
of the work is a member shall be void. Further, Section 19(9) and section 19(10) opine that the
assignment of copyright for making cinematograph film or sound recording shall not affect the
right of the author to claim an equal share of the royalties and consideration payable with respect
to use of his protected work.

In Saregama India Ltd v. Suresh Jindal[4], it was held that the owner of the copyright in a future
work may assign the copyright to any person either wholly or partially for the whole of the
copyright or any part thereof and once the assignment is made the assignee for the purpose of
this Act is treated as the owner of the copyright.

Licensing of Copyright

The owner of copyright may grant a license to do any of the act in respect of which he has an
exclusive right to do. The license can be classified into following categories:

Voluntary license: : Section 18 of Copyrights Act

The author or the copyright owner has exclusive rights in his creative work and he alone has
right to grant license with respect to such work. According to section 30 of the Copyright Act
1957, the owner of the copyright in a work may grant any interest in his copyright to any person
by license in writing, which is to be signed by him or by his duly authorised agent. A license can
be granted not only in existing work but also in respect of the future work, in this situation
assignment shall come into force when such future work comes into existence. Where a licensee
of the copyright in a future work dies before such work comes into existence, his legal
representatives shall be entitled to the benefit of the license if there is no provision to contrary.

The mode of license is like an assignment deed, with necessary adaptations and modifications in
section 19 (section 30A). Therefore, like an assignment, a license deed in relation to a work
should comprise of following particulars:
 a. Duration of license
b. The rights which have been licensed
c. Territorial extent of the licensed
d. The quantum of royalty payable
e. Terms regarding revision
f. Extension and termination

Voluntary licenses can be:

Exclusive – The term exclusive license has been defined in Section 2(j) as a license which
confers on the licensee and persons authorized by him, to the exclusion of all other persons, any
right comprised in the copyright work.

Non-exclusive – It does not confer right of exclusion. It is mere grant of an authority to do a

particular thing which otherwise would have constituted an infringement. When owner grants an
exclusive right, he denudes himself of all rights and retains no claim on the economic rights so
transferred.

Co-exclusive – Here the licensor grants a license to more than one licensee but agrees that it will
only grant licences to a limited group of other licensees.

Sole license – Where only the licensor and the licensee can use it to the exclusion of any other
third party.

Implied license – Author impliedly allows or permits the use of his work. For example, he had
knowledge that someone is using his work but he did not take any action.

Compulsory Licenses

Compulsory and statutory licenses can impact both the identity of the licensee who the owner
chooses to deal with and the terms, including rates of royalty, that the owner may stipulate for
such dealing. Viewed from this perspective, compulsory licenses are less of an infraction on
owner autonomy, on both these counts. The owner does retain a fair bit of autonomy to enter into
appropriate licensing arrangements with those who he may deem fit, and he is also permitted to
negotiate on the terms of the license within the zone of reasonableness. Normally, it is an
unreasonable refusal to deal with a person that gives rise to a compulsory license. This brings us
to the third important distinction between a compulsory and statutory license. The former is
always granted upon specific application by an individual to the competent authority. The latter,
on the other hand, is a blanket fixation of rates of royalty by the authority and a grant of
standardised licenses to all those who are interested in availing the same. The owner, as a
necessary corollary, has no autonomy on the identity of those who obtain the license, or what
they pay as royalty for the same.

Categories of Compulsory Licenses

There are five main categories of compulsory licenses currently operating in India.
These are:

1. Licenses in respect of works unreasonably withheld from the public;

2. Licenses in respect of orphan works;

3. Licenses in respect of works for the differently abled;

4. Licenses in respect of translations;

5. Licenses in respect of reproduction and sale of works unavailable in India.

Statutory Licenses

As seen from the above discussion of compulsory licenses, such licenses can be understood as a
particularised expropriation of owner autonomy in respect of the copyrighted work. The need for
such expropriation arises only upon acts or inaction on the part of the owner that render the work
unavailable to the public or differently abled persons. Statutory licenses, on the other hand, do
not require any examination into the conduct of the owner. It attempts a wholesale expropriation
of owner autonomy, once the work fits within the broader class of works that can be so licensed.

There are two such categories of statutory licenses, namely cover version recording licenses
(Section 31C) and broadcasting licenses (Section 31D).

The first has existed, though as part of the fair dealing exceptions in Section 52, from the very
beginning. The second is a very recent addition to the Act vide the 2012 amendment.

Conclusion

The term ‘assignment’ and ‘license’ are not interchangeable. An assignment is different from a
license. Generally, in absence of any provision to the contrary the assignee becomes the owner of
the assigned work, whereas in case of a license the licensee gets the right to exercise particular
rights only.

An assignment may be general, i.e. without limitation or an assignment may be subject to

limitations. It may be for the whole term of copyright or any part thereof. An assignment
transfers an interest in and deals with copyright itself as provided under section 14 of the Act, but
license does not convey the copyright but only grants a right to do something, which in absence
of license would be unlawful. An assignment transfers title in copyright, a license merely permits
certain things to be done by licensee. The assignee being invested with the title in the copyright
may reassign[5].
Rights of Performers and Broadcasters Rights under Copyright Act, 1957

Introduction

The Humma Song, Tamma Tamma Again, Gulabi 2.0 are some of the everyone’s favourites
which we all know are the remakes of the legendary Bollywood songs produced in the late 20th
century. But have you ever given it a thought, whether remix of old songs is permissible or not,
if one needs consent of the original performer before making a remix or just citing the original
performer in the remaked work if enough. Same is the case with YouTube flagging a video and
sending a notification that copyrighted material has been found and one can choose to
acknowledge or contest the same or the popular ‘Music feature’ introduced by the Instagram so
as to enable it’s user to make a reference to the owner of the music everytime one adds a music
to their stories, reels or post. This article will address the questions related to the rights that have
been provided over the time by the legislature to the original makers of the work that forms the
part of creative process and agencies or organisation broadcasting the same along with some
basic provisions related to the field of Copyright.

International Perspective of The Performers & Broadcasters Right Provisions

The Rome Convention of 1961, was the first international treaty to recognise the rights of the
performers. The basic reason as to why performers needed protection was because with the
passage of time, technology has also developed and is doing better which has enabled recording
and broadcasting of performer’s work to build their way through. Other than the rights granted to
the original maker of the work, treaty also recognised rights of the performers against the
unauthorized recording and broadcasting of the performer’s work without providing the adequate
compensation to the performer.

Indian Perspective of The Performers & Broadcasters Rights Provisions

The first Copyright Act, in India, was passed in the year 1914 which formed the base for the
current governing act, The Copyright Act of 1957 which has been amended several times since
it’s formation as per the needs of the market. The rights of the performers were not recognised by
the legislature for about thirty-seven years. An amendment act was bought in force in the year
1994 to protect the livelihood of the performers which was in danger due to lack of recognition
of their work by the laws and another reason being, advancement in technology. This amendment
of 1994 brought the rights of the performers in force under Section 38 of The Copyright Act.
Later on, in 2012, further another amendment was made to increase the rights provided to the
performers, being exclusive and moral rights under the Sections 38-A & 38-B, respectively,
which have been discussed in detail in the article later.

Performance & Performer

Before we begin with the performer’s rights, let us first know who all will be considered as a
performer under the Act and what will be considered as their performance.
Performers are the artist who display their art before the audience with their own skill set and
knowledge.

“The term “performer” includes an actor, singer, musician, dancer, acrobat, juggler, conjurer,
snake charmer, a person delivering a lecture or any other person who makes a performance.”1

A proviso was added in the Amendment Act, 2012 to the definition of the performer to include
the performers who play casual and incidental performance, known as “extras” so as to protect
their moral rights.

The term performance means, the work performed by any performer covered under Section 2(qq)
of the Act. The term earlier included literary and artistic work only but later on it’s scope was
broadened to include dramatic and musical work, cinematograph films and the sound recordings.

“”Performance” in relation to performer’s right means any visual or acoustic presentation made
live by one or more performers.”2

Rights of The Performer’s under the Copyright Act

Where any performer appears or engages in any performance, he shall have a special right to be
known as the “performer’s right” in relation to such performance.3

Following are the rights currently available to the performers, in India, under The Copyright Act
:

Exclusive Rights of The Performer –

The amendment act has introduced affirmative performers right by amending Section 38 which
granted only negative rights by prohibiting acts in sub-section (3) and (4) which have now been
omitted and a new section 38-A has been inserted which provides the performer’s rights as the
exclusive rights to do or authorize doing any of the acts in respect of the performance, without
prejudice to the rights conferred on authors. Exclusive rights of the performers include the
following rights :

To Make A Sound Recording or A Visual Recording of The Performance –

The law permits the performer to make a sound recording, visual recording, record his live
performance as his exclusive right to his work. The record will be granted the copyright under
the law only when it does not includes any part which amounts to infringement of any other
work and has been recorded lawfully, as per the provisions of the act.

“The term “sound recording” here means a recording of sounds from which such sounds may be
produced regardless of the medium on which such recording is made or the method by which the
sounds are produced.”4
“The term “visual recording” above means the recording in any medium, by any method
including the storing of it by any electronic means, of moving images or of the representations
thereof, from which they can be perceived, reproduced or communicated by any method.”5

Reproduction of The Sound Recording or Visual Recording of The Performance –

The Copyright Act not only provides the performer with the right of recording his own
performance but also provides him the opportunity to reproduce his own performance. The law
states, reproduction of it in any material form including the storing of it in any medium by
electronic or any other means.6

Other than reproduction his own work, performer can also issue copies of his work to the general
public, keeping in mind that the copies that are being issued are not the ones that are already in
circulation in the public.7

Moreover, the performer also owes the right to sell his work or can even give either of his entire
work or copy of of his recording on commercial rent or can even offer the same for sale.8

Right to Broadcast the Performance –

Performer has been given the sole right to decide if he wants to communicate his performance to
the general public.9

Performer can also choose to stop the broadcasting of his work, if the work been broadcasted is
different from the work for which his consent has been taken to broadcast. Moreover, if the
broadcast is without the consent of the performer, the broadcast will be considered illegal under
the act.

However, the work that is being broadcast or communicated to the public must not include entire
or any part of the performance which has already been broadcasted by the performer or the
broadcasting organisation.10

Right to Royalty –

Major amendment that has been brought to the rights of the performer through The Amendment
Act of 2012 was the idea of introducing the concept of royalties for the performer so as to protect
his livelihood and provide him the benefits for his work. As per the act, the performer shall be
entitled for royalties, in case he takes the decision of giving his performance or work for
commercial use in any form.11

It has also been provided that, if a performer once gives his consent, by the way of a written
agreement, to incorporate his performance in a cinematograph film, he cannot afterwards object
the enjoyment by the producer of the film of the performer’s right, in the same film, unless there
exists a contract to the contrary.12
Moral Rights of The Performer –

Another major amendment made in the performer’s right by The Amendment Act of 2012 was
brought by the way of Section 38B, which replaced the earlier provisions under the section 38(3)
& 38(4). Section 38B states, even after the assignment of his right, may it be wholly or partially,
the performer still has the rights to the following under the Act :

(a) Right to claim to be identified as the performer of his performance unless where the omission
has been dictated by the manner of the use of the performance

(b) Right to restrain or claim damage in respect of any distortion, mutilation or other
modification of his performance that would be prejudicial to his reputation.

However, it has also been clarified in the same section that mere removal of any portion of a
performance for the purpose of editing, or to fit it within a limited duration, or any other
modification required for purely technical reasons shall not be deemed to be prejudicial to the
performer’s reputation.

Right to The Performance–

The act not only provides with the copyright and protection of performer’s right during the life
of the performance but also for a long time period after the performance. The performer’s right
shall subsist until ‘fifty years’ from the beginning of the calendar year next following the year in
which the performance is made.13

Broadcast & Broadcasting Organization

Literal meaning of the term “broadcast” is the transmission or distribution of programme or

information or audio or video content to a dispersed audience via radio or television.

As per the section 2(dd) of The Copyright Act, “broadcast” means “communication to the
public—

(i) by any means of wireless diffusion, whether in any one or more of the forms of signs, sounds
or visual images; or

(ii) by wire, and includes a re-broadcast.”

Broadcasting organisation, such as radio or television are also popularly known as electronic
media, play a vital role in the society. They are powerful media for entertainment, dissemination
of information, knowledge, art and culture. Such broadcasting organisation have also been
provided with the rights to protect their interest after the Amendment of 2012 in The Copyrights
Act, other than the performers.
Rights of The Broadcasting Organization

Just as performer’s rights have been protected by the legislature undee the Section 38 of the act,
similarly, broadcaster’s rights have also been protected by the Act under section 37.

Every broadcasting organisation shall have a special right to be known as “broadcast

reproduction right” in respect of its broadcasts.14

Right to The Broadcasting for A Term –

Just like performer’s right has been granted for an entire term, similarly, broadcaster’s rights
have also been provided for an entire term. 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.15

The Amendment Act of 2012 might have introduced the affirmative rights for the performer by
omitting the provisions in which negative rights were given but the same is not the case with the
rights of the broadcasting organisation. Rights protecting the broadcaster are given in the form of
the infringements that would be considered during the continuance of the broadcast reproduction
right, with regards to the broadcast.

Any person who has not obtained the licence from the owner of the work and does any of the
following acts, in regards to the broadcast or any substantial part of it will deemed to have
infringed broadcast reproduction right of the broadcaster : 16

(a) re-broadcast the broadcast

(b) causes the broadcast to be heard or seen by the public on payment of any charges

(c) makes any sound recording or visual recording of the broadcast.

(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

(e) sells or gives on commercial rental or offer for sale or for such rental, any such sound
recording or visual recording referred to in clause (c) or clause (d), subject to the provision of
Section 39.

Judicial Pronouncement Related to The Chapter VIII of The Copyright Act, 1957

✓ The very first case, Fortune Films International v. Dev Anand16, where the issue of whether
the copyright of the work of the actor has been recognised or protected by the Copyright Act was
raised in the Bombay High Court. The Honourable Supreme Court held that an actor in a film
has no rights over his performance in the film and thereby denied the existence of the rights of
the performers under the Indian copyright laws back then.

✓ In the case of Super Cassettes Industries v. Bathla Cassette Industries17, the Delhi High Court
stated that since the incorporation of the Amendment Act of 2012, performer’s right and
copyright are two different concept. This case established a step ahead towards the recognition of
the performer’s rights by stating that the rerecording of any work or song without the consent of
the original maker of the song is an infringement to the performer’s rights.

✓ In the case of Neha Bhasin v. Anand Raj Anand18, issue in matter was related to the live
performance. The Delhi High Court held that every performance has to be live in the first
instance, whether it is before an audience or in a studio. If this performance is recorded and
thereafter exploited without the permission of the performer, then the performer’s right is
infringed.

✓ In the lastest case of Star India Pvt. Ltd. V Piyush Aggarwal19, the issue that was raised was
whether a cricket match would constitute a “performance” or not under the copyright act. The
Delhi High Court observed that a cricket match will be considered a “performance” and
therefore, cricketers, commentators and umpires are performers under the Act.

Copyright Infringement and its Exceptions

When Copyright is infringed

Section 51(b) (iv) states: “Copyright in a work shall be deemed to be infringed when:

1. any person, without a license granted by the owner of the Copyright or the Registrar of
Copyrights under this Act, or in violation of the conditions of a license so granted or of any
conditions imposed by a competent authority under this Act-
2. Does anything, the exclusive right to which is conferred on the owner of the Copyright by this
Act.

• When any person-

• Make for hire for sale, sells or lets for hire, or trade displays or offers for sale or hire
• Distributes either for commercial purposes or in such a way as to harm the owner of the
copyright.
• By way of public trade shows.
• Imports into India of any infringing copies of the work (omitted by Act 65 of 1984, S.3 (effective
8-10-1984))
The Doctrine of Fair Dealing

The word “fair dealing” was not set out in the Act. The law permits a person to use copyright
work in limited numbers without the permission of the owner. Fair trade is an exception and
limitation to the exclusive right granted to the author of a creative piece by copyright law. It
enables copyrighted work to be reproduced or utilized in a way which, however, would have
amounted to a violation of copyright for the exception. It was thus excluded from copyright
law’s misfortune.

Initially the defence of “fair dealing” emerged as a doctrine of equity allowing certain copyright-
proof works to be used, which would otherwise have been prohibited and would have constituted
a violation of copyright. The main idea behind this doctrine is that the creativity growth whose
progress the law has been designed should not be stagnated. Over time, India has undergone
enormous improvements in technology, but still has a very narrow scope of fair trade law.
However, if we look westward, continuous progress has been made in this field through
innovative interpretations and legal activism.

Explanation of Fair Dealing

This would be entirely up to the facts and circumstances of a particular case whether a person
uses the copyright material “fairly.” There is a narrow line between ‘fair trade’ and violation. In
India, the number of words or phrases that can be used without authorisation by a person is not
defined by specific guidelines. This can only be determined by the Court using basic common
sense. However, it can be said that the extracted portion should not affect the Author’s
significant interest.

Fair trade is a considerable constraint of the copyright owner’s exclusive right. On a number of
occasions, the courts have interpreted it by assessing the financial impact on the proprietor. In
the absence of significant economic impact, the use can be a fair deal. The fairness of the deal
depends on the four factors that follow:

• The purpose of the application

• The work’s nature
• The quantity of work used
• The impact of the work on the original

We must all have read and heard about the infringement of copyright, but this does not apply in
any case as such. The exception to Section 52 of the Copyright Act of 1957 which is read as,
“Certain acts not infringed on copyright.” However, since Section 52 is very extensive, only in
few parts distributed among many articles will we write about the same. We’ll write about
Exception in Fair Dealing with any work in this special article.”
Section 52(1) the following act shall not constitute an infringement of copyright, namely, —

A fair dealing with any work, not being a computer programme, for the purposes of—

• Private or personal use, including research;

• Criticism or review, whether of that work or of any other work;
• The reporting of current events and current affairs, including the reporting of a lecture delivered
in public.

Explanations—The storage of any work in any electronic media, including by-laws of any
computer program which does not itself constitute a breach of copy for the purpose set forth in
this clause, shall not constitute a breach of copyright.

Section 52: Certain acts not to be infringement of copyright

(1) The following acts shall not constitute an infringement of copyright, namely:—

(a) a fair dealing with a literary, dramatic, musical or artistic work 1[not being a computer
programme] for the purposes of— 1[(i) Private use including research;]

(ii) criticism or review, whether of that work or of any other work; 2[(aa) the making of copies or
adaptation of a computer programme by the lawful possessor of a copy of such computer
programme from such copy— 1[(aa) the making of copies or adaptation of a computer
programme by the lawful possessor of a copy of such computer programme from such copy—”

(i) in order to utilise the computer programme for the purpose for which it was supplied; or

(ii) to make back-up copies purely as a temporary protection against loss, destruction or damage
in order only to utilise the computer programme for the purpose for which it was supplied;]
3[(ab) the doing of any act necessary to obtain information essential for operating inter-
operability of an independently created computer programme with other programmes by a lawful
possessor of a computer programme provided that such information is not otherwise readily
available; 3[(ab) the doing of any act necessary to obtain information essential for operating
inter-operability of an independently created computer programme with other programmes by a
lawful possessor of a computer programme provided that such information is not otherwise
readily available;”

(ac) the observation, study or test of functioning of the computer programme in order to
determine the ideas and principles which underline any elements of the programme while
performing such acts necessary for the functions for which the computer programme was
supplied;

(ad) the making of copies or adaption of the computer programme from a personally legally
obtained copy for non-commercial personal use;]
(b) a fair dealing with a literary, dramatic, musical or artistic work for the purpose of reporting
current events—

(i) in a newspaper, magazine or similar periodical; or

(ii) by 4[broadcast] or in a cinematograph film or by means of photographs. 4[broadcast] or in a

cinematograph film or by means of photographs.” 5[Explanation.—The publication of a
compilation of addresses or speeches delivered in public is not a fair dealing of such work within
the meaning of this clause;]

(c) the reproduction of a literary, dramatic, musical or artistic work for the purpose of a judicial
proceeding or for the purpose of a report of a judicial proceeding;

(d) the reproduction or publication of a literary, dramatic, musical or artistic work in any work
prepared by the Secretariat of a Legislature or, where the Legislature consists of two Houses, by
the Secretariat of either House of the Legislature, exclusively for the use of the members of that
Legislature;

(e) the reproduction of any literary, dramatic or musical work in a certified copy made or
supplied in accordance with any law for the time being in force;

(f) the reading or recitation in public of any reasonable extract from a published literary or
dramatic work;

(g) the publication in a collection, mainly composed of non-copyright matter, bona fide intended
for the use of educational institutions, and so described in the title and in any advertisement
issued by or on behalf of the publisher, of short passages from published literary or dramatic
works, not themselves published for the use of educational institutions, in which copyright
subsists: Provided that not more than two such passages from works by the same author are
published by the same publisher during any period of five years. Explanation.—In the case of a
work of joint authorship, references in this clause to passage from works shall include references
to passages from works by any one or more of the authors of those passages or by any one or
more of those authors in collaboration with any other person;

(h) the reproduction of a literary, dramatic, musical or artistic work—

(i) by a teacher or a pupil in the course of instruction; or

(ii) as part of the questions to be answered in an examination; or

(iii) in answers, to such questions;

(i) the performance, in the course of the activities of an educational institution, of a literary,
dramatic or musical work by the staff and student of the institution, or of a cinematograph film or
a 6[sound recording], if the audience is limited to such staff and students, the parents and
guardians of the students and persons directly connected with the activities of the institution 7[or
the communication to such an audience of a cinematograph film or sound recording]; 8[(j) the
making of sound recordings in respect of any literary, dramatic or musical work, if—

(i) sound recordings of that work have been made by or with the licence or consent of the owner
of the right in the work;

(ii) the person making the sound recordings has given a notice of his intention to make the sound
recordings, has provided copies of all covers or labels with which the sound recordings are to be
sold, and has paid in the prescribed manner to the owner of rights in the work royalties in respect
of all such sound recordings to be made by him, at the rate fixed by the Copyright Board in this
behalf: Provided that—

(i) no alterations shall be made which have not been made previously by or with the consent of
the owner of rights, or which are not reasonably necessary for the adaptation of the work for the
purpose of making the sound recordings;

(ii) the sound recordings shall not be issued in any form of packaging or with any label which is
likely to mislead or confuse the public as to their identity;

(iii) no such sound recording shall be made until the expiration of two calendar years after the
end of the year in which the first recording of the work was made; and

(iv) the person making such sound recordings shall allow the owner of rights or his duly
authorised agent or representative to inspect all records and books of account relating to such
sound recording: Provided further that if on a complaint brought before the Copyright Board to
the effect that the owner of rights has not been paid in full for any sound recordings purporting to
be made in pursuance of this clause, the Copyright Board is, prima facie satisfied that the
complaint is genuine, it may pass an order ex parte directing the person making the sound
recording to cease from making further copies and, after holding such inquiry as it considers
necessary, make such further order as it may deem fit, including an order for payment of royalty;

(k) the causing of a recording to be heard in public by utilising it,—

(i) in an enclosed room or hall meant for the common use of residents in any residential premises
(not being a hotel or similar commercial establishment) as part of the amenities provided
exclusively or mainly for residents therein; or

(ii) as part of the activities of a club or similar organisation which is not established or conducted
for profit;]

(l) the performance of a literary, dramatic or musical work by an amateur club or society, if the
performance is given to a non-paying audience, or for the benefit of a religious institution;

(m) the reproduction in a newspaper, magazine or other periodical of an article on current

economic, political, social or religious topics, unless the author of such article has expressly
reserved to himself the right of such reproduction;
(n) the publication in a newspaper, magazine or other periodical of a report of a lecture delivered
in public;

(o) the making of not more than three copies of a book (including a pamphlet, sheet of music,
map, chart or plan) by or under the direction of the person in charge of a public library for the
use of the library if such book is not available for sale in India;

(p) the reproduction, for the purpose of research or private study, or with a view to publication,
of an unpublished literary, dramatic or musical works kept in a library, museum or other
institution to which the public has access: Provided that where the identity of the author of any
such work or, in the case of a work of joint authorship, of any of the authors is known to the
library, museum or other institution, as the case may be, the provisions of this clause shall apply
only if such reproduction is made at a time more than 9[sixty years] from the date of the death of
the author or, in the case of a work of joint authorship, from the death of the author whose
identity is known or, if the identity of more authors than one is known from the death of such of
those authors who died last;

(q) the reproduction or publication of—

(i) any matter which has been published in any Official Gazette except an Act of a Legislature;

(ii) any Act of a Legislature subject to the condition that such Act is reproduced or published
together with any commentary thereon or any other original matter;

(iii) the report of any committee, commission, council, board or other like body appointed by the
Legislature, unless the reproduction or publication of such report is prohibited by the
Government;

(iv) any judgment or order of a court, Tribunal or other judicial authority, unless the reproduction
or publication of such judgment or order is prohibited by the court, the Tribunal or other judicial
authority, as the case may be;

(r) the production or publication of a translation in any Indian language of an Act of a

Legislature and of any rules or orders made thereunder—

(i) if no translation of such Act or rules or orders in that language has previously been produced
or published by the Government; or

(ii) where a translation of such Act or rules or orders in that language has been produced or
published by the Government, if the translation is not available for sale to the public: Provided
that such translation contains a statement at a prominent place to the effect that the translation
has not been authorised or accepted as authentic by the Government; 10[(s) the making or
publishing of a painting, drawing, engraving or photograph of a work of architecture or the
display of a work of architecture;]
(t) the making or publishing of a painting, drawing, engraving or photograph of a sculpture, or
other artistic work falling under sub-clause (iii) of clause (c) of section 2, if such work is
permanently situate in a public place or any premises to which the public has access;

(u) the inclusion in a cinematograph film of—

(i) any artistic work permanently situate in a public place or any premises to which the public has
access; or

(ii) any other artistic work, if such inclusion is only by way of background or is otherwise
incidental to the principal matters represented in the film;

(v) the use by the author of an artistic work, where the author of such work is not the owner of
the copyright therein, of any would, cast, sketch, plan, model or study made by him for the
purpose of the work: Provided that he does not thereby repeat or imitate the main design of the
work; 11[***]

(x) the reconstruction of a building or structure in accordance with the architectural drawings or
plans by reference to which the building or structure was originally constructed: Provided that
the original construction was made with the consent or licence of the owner of the copyright in
such drawings and plans;

(y) in relation to a literary, dramatic or musical work recorded or reproduced in any

cinematograph film, the exhibition of such film after the expiration of the term of copyright
therein: Provided that the provisions of sub-clause (ii) of clause (a), sub-clause (i) of clause (b)
and clauses (d), (f), (g), (m) and (p) shall not apply as respects any act unless that act is
accompanied by an acknowledgement—

(i) identifying the work by its title or other description; and

(ii) unless the work is anonymous or the author of the work has previously agreed or required
that no acknowledgement of his name should be made, also identifying the author; 12[(z) the
making of an ephemeral recording, by a broadcasting organisation using its own facilities for its
own broadcast by a broadcasting organisation of a work which it has the right to broadcast; and
the retention of such recording for achival purposes on the ground of its exceptional
documentary character;

(za) the performance of a literary, dramatic or musical work or the communication to the public
of such work or of a sound recording in the course of any bona fide religious ceremony or an
official ceremony held by the Central Government or the State Government or any local
authority. Explanation.—For the purpose of this clause, religious ceremony including a marriage
procession and other social festivities associated with a marriage.]

(2) The provisions of sub-section (1) shall apply to the doing of any act in relation to the
translation of a literary, dramatic or musical work or the adaptation of a literary, dramatic,
musical or artistic work as they apply in relation to the work itself.
Fair Dealing was used in this particular Benchmark Case Judgement

The High Court held in the case of Kartar Singh Giani v. Ladha Singh that “two points in
relation to the meaning of fair expression were raised, in fair dealings:

• An intention to compete with and profit from such competition was necessary in order to be
unfair.
• An infringement unless the infringer’s motive was unfair, in the sense of being wrong the dealer.

Exceptions to the reproduction right (the 3-step test)

The three step test made its debut in the Berne in 1967, as Article 9(2), for exceptions to the new
right of reproduction.

1967 Article 9

1. The authors of literary or artistic works protected by this Convention have the exclusive right, in
any way or in any form, to authorize the reproduction of those works.
2. It is up to legislation in Union countries, where this work does not conflict with the normal use
of the work and does not irrationally prejudicial to the legitimate interests of the author, to
enable the copying of such work in certain special cases.
3. For the purposes of this Convention, any sound or visual recording shall be treated as a
reproduction.

Recent Developments

The Copyright Act (Amendment) 2012 included some of the modifications. Any work for
personal and private use with the exception of a computer program has been subject to the
current clause (1) (a). With this amendment, film and music were also subject to the works to
which the provisions on fair use were extended. This amendment was implemented. This
amendment also ensures that work for the benefit of the disabled is fairly exploited. It makes it
possible for disabled people to access works, including sharing them with any disabled person,
for private or personal use for research or any other educational purpose, to reproducing,
publishing copies, adapting or communicating any work to the public.

More Case Laws

These famous court cases have generated a major public copyright discourse—how we handle it,
what it means, and why we all should look after it.

1. Rogers vs. Koons

A photograph of a couple holding a line of puppies in a row was photographed by Art Rogers
and sold to be used in greeting cards and other similar products. In the process of making an
exhibit about the banality of everyday items, renowned artist Jeff Koons crossed Rodgers’
photographing internationally and used this as a set of image-based statues. Koons sold several
of these structures and made a considerable profit. Rodgers sued Koons for copyright when he
discovered the copy. Koons answered by saying that parody is fair use.

Result: The Court held that the two images were similar enough and that the copy would be
recognized by a “typical person.” The defence of Koon was rejected on the grounds that he could
make the same statement with a more generic source, without copying the works of Rogers.
Koons had to pay Rodgers a currency settlement.

Significance: This is one of the famous cases of the issue of appropriation art that included a
major issue in the world of art. Can you build on the work of others to make your own original
work? And if you do, is that derivative work? He also mentioned the question of photography as
an art, was photography just a documentation of the world? Of course, neither of these issues has
been fully addressed, but has also, in many cases, become a reference.

• The Associated Press vs. Fairey

During President Obama’s first run for presidential election in 2008, renowned street artist
Shepherd Fairey created the Hope poster. The design quickly symbolized Obama’s campaign,
which was technically independent but with his approval. The photos of the Association Press
reportedly based on the design by AP freelance company Mannie Garcia were disclosed in
January 2009 with the AP demanding compensation for their use in works of Fairey. Fairey
answered by advocating fair use and claimed that his work did not diminish the value of the
original photograph.

Results: In January 2011, the artist and the AP press arrived at a private settlement, part of
which was divided into profits.

Significance: Although there was not a court case and a true verdict, in these battles with
copyright this case created a lot of talk about the value of work. The work of Garcia could never
have reached the level of fame if not for the poster of Fairey. Garcia himself said he was «so
proud of the photograph he had done and the result Fairey had», yet had a problem with Fairey’s
picture taking, without permission and without credit, the originator of the picture.

• Cariou vs. Prince

A known appropriation artist, Richard Prince transforms the works of others into a new meaning
in his own work. Prince took 41 photographs of Patrick Cariou’s photo book for an exhibition at
the Gagosian Gallery and claimed it was fairly utilized for his creation of a new meaning from
the photographs. Cariou claimed it was not fair use but a violation of copyright.

Results: In 2011, a judge decided in favour of Cariou, claiming that Cariou’s changes in
photographs were not important enough to make a change — fair use. The case is in appeal at the
moment but the final decision has still not been reached.
Significance: The initial decision for Cariou in this case has created enormous divisions in the
artistic community. It raises questions concerning artistic intent and the subjectivity of art and
asks “Who this judge is to decide whether the appropriate artwork has sufficient meaning for its
consideration as fair use” when every individual who viewed it could interpret the art differently.
This is still the case for the jury.

Police power to seize copies of the violations:

Any officer who is not under the rank of a sub-inspector may seize copies without a warrant to
be issued before a Magistrate if he is satisfied that an offense under section 63 is committed in
relation to an act of infringement of copyright.

Summit:

Copyright is designed to safeguard the rights of original owners and to offer their creativity and
diligence economic benefits. While it is not required to register work, it is recommended that the
idea is registered as soon as it becomes a written document and there is strong evidence before
the court in the event of an infraction. The 1957 Copyright Act and its amendments aim at
protecting the rights and interest of creators and property owners as well as the interests of
everyone else. Copyright and copyright rules 1958 protect the rights and interests of creators and
owners. It should be noted that the Act is a comprehensive regulation on the pillar that does not
stolen the works of the owners. This Act is drawn up in line with the English and American laws
on intellectual property. This Law provides both the owner and the ‘work’ with safeguards.

Importation of Infringing Copies

Section 53 states: Importation of Infringing Copies

1. On application by the owner of the copyright in any work or by his duly authorized agent, and
upon payment of the prescribed fee, the Registrar of Copyrights may, after making such inquiry
as he deems fit, order that copies made outside of India of the work, which if made in India
would infringe copyright, shall not be imported.
2. Subject to any riles made under this Act, the Registrar of Copyrights or any person authorized by
him in this behalf may enter and examine any ship, dock, or premises where any of the copies
referred to in subsection (1) may be found.
3. All copies to which any order issued under subsection (1) apply are deemed to be goods whose
import is prohibited or restricted.

Section 53-A states: Resale share right in original copies –

1. In the case of resale for more than ten thousand rupees of the original copy of a painting,
sculpture on drawing, or original manuscript of a literary or dramatic work or musical work, the
author of such work, if he was the first owner of rights under Section 17, or his legal heirs, shall
have a right to share in the resale price, notwithstanding any assignment of copyright in such
work.
 2. The share referred to in subsection (1) shall be determined by the Copyright Board, and the
Copyright Board’s decision in this regard shall be final:
3. Provided, however, that the Copyright Board may establish different shares for different types
of work:
4. Provided, however, that in no case shall the share exceed 10% of the resale price.
5. If a dispute arises concerning the rights granted by this section, it shall be referred to the
Copyright Board, whose decision shall be final.

Exceptions- Three main exceptions are commonly used by educators in the case of copyright
law: fair use, face-to-face instruction and virtual education. Without the permission of the
copyright owner and possible charges, the exemptions allow the use of the work. When the use is
not covered by face-to-face instructions or virtual instructions, fair use is commonly used since it
is much wider and flexible.

It is the person who uses the job to determine which exception applies. It should be a deliberate
decision, not a default decision. The exemption and good faith determination of that use of a
copyrighted work is authorized with one of these exceptions is the responsibility of all members
of the Purdue University community. A good faith determination means that a person has to
understand, articulate and reasonably apply the exception he selects to their particular situation.
If none of the exceptions apply, permission for the use of the work should be sought.

Copyright violation remedies

• Civil correction: pursuant to Section 55 of the Copyright Act of 1957, the owner is entitled to all
such remedies by injunction, damages & accounts in cases where copyright in any work has
been violated.
• Criminal redress: The copyright owner is entitled under Section 63 of the 1957 Copyright Law to
prosecute a contravener in which a penalty can be extended to at least 6 months, with a fine of
Rs. 50 000, extending to two lakhs.

If the accused has proven that he was not aware of the infringement and had no reasonable
reason to believe that copyright was subsistent in the work at the date of its infringement, the
complainant is not entitled to any rectification in the circumstances that the defendant considers
reasonable for all or any portion of the profits made by it through the sale of the infringing
copies.

Patents
AN INTRODUCTION TO PATENTS

This article is intended to provide an introduction to the patents and the requirements for an idea
to be patentable in accordance with the Patents Act, 1970. A patent is a legal document which is
issued by the government to the inventor. The patent grants an inventor absolute & exclusive
ownership rights over the invention, the freedom to use and sell the invention for a stipulated time
period. The word “patent” refers to the absolute rights of ownership over the patent. The judicial
definition of a patent is specified in Section 2(1)(m) of the Patents Act, 1970. The Patent law is a
branch of the broader field of intellectual property rights which is inclusive of copyrights,
trademarks, industrial designs among others. The main intention to provide distinguishing rights
to an inventor is to encourage innovation, research and development in order to advance the state
of technology. In the supreme court case of Bishwanath Prasad Radhey Shyam versus Hindustan
Metal Industries, the court highlighted the object of patent law as below:

“The 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, stimulates new inventions of commercial utility. The price of the grant of the
monopoly is the disclosure of the invention at the Patent Office, which after the expiry of the fixed
period of the monopoly, passes into the public domain.”

Moreover, It is understood from the above that the significance of cost is a primary concern in the
act by itself under the definition as well as in the above case law.

Initially, the Patents Act,1970 provided ownership of an invention for a comparatively shorter
period of protection for pharmaceutical and medicinal preparations. However, post Amendment
(Act) 2005, 20 years of protection was granted to all kinds of patents, beyond which it is open for
use by anyone. Under the Act, all kinds of product or process patents can be patented if they are
new, involves an inventive step & possess an Industrial application. Before getting an idea
patented, the inventor must ensure for its patentability. There are three requirements which are
required to be fulfilled for an idea to qualify as a patentable matter:

• Novelty: The invention is required to be novel in nature to be patentable under the Indian
Patent Law. The invention must contain one or more unique and new elements.
• Non-Obvious: The person possessing the skills in the particular field of the invention must
not find any obviousness in the invention. Simple or obvious changes to an existing
invention cannot be called an invention. The invention must be a notable change in the
field. The particular feature must add to existing technical knowledge that is, in terms of
uniqueness and commercial viability.
• Industrial Application: The invention must have some utility. The invention is patentable
if it is capable of commercialization.

Every idea which should possess the above three qualities for an idea to be patented under the
Patents Act, 1970. Any invention which falls under section 3 of the Patents Act 1970 is not
patentable per se. Furthermore, in the landmark matter of Bajaj versus TVS, the high court inclined
towards understanding the advancements of the technology in the patents in question in the context
of prior arts to know whether or not the invention involves a technological advancement or an
inventive step. Nevertheless, the distinction between practice and the laws can be resolved by on-
going intervention as well as interpretation of the judicial requirements of by the courts of India.
Going ahead, as the number of legal matters in this regard increase, one may expect more clarity
and unanimity.
Patent Registration in India: Process, Term and Rights of Patentee

Introduction

Intellectual Property is the creative work of the human intellect and the right to intellectual
property is an invisible/intangible right to a product of a human mind such as a new investigation
of a product. I.e property An intellectual property of the human brain. Intellectual property is at
times described as ‘knowledgeable goods’

The main motivation for its protection is to promote the progress of science and technology, arts,
literature, and other forms of creative work to encourage and reward creativity. It is an
established principle in most modern states to give statutory protection to the economic rights of
the creator in their creations and the right of the public in accessing those creations.

This is instrumental in promoting creativity and dissemination and the application of economic
and technological development of a nation will come to a halt if there were no protection in sine
qua non for the industrial and economic development of a nation. The prosperity achieved by the
developed nations is to a good extent has been a result of the exploitation of their intellectual
property.

Intellectual property relates to pieces of information that can be incorporated into intangible
objects at the same time in an unlimited number of copies at different locations anywhere in the
world. This property does not hold it’s value in its multiple copies but the information reflected
in the said copies. According to article 2 (viii) of the convention establishing the present World
intellectual Property Organization[1] (WIPO) 1967. Intellectual property includes rights relating
to:

• Literary, Artistic, and Scientific Work

• Performance of performing artists, phonograms, and broadcasts
• Inventions in all fields in human endeavors
• Scientific discoveries
• Industrial designs
• Trademarks, service marks, commercial names, and designations.
• Protection from unfair competition

The intellectual Property thus, includes copyrights, trademarks, service marks, geographical
indications, patents, utility models, plant varieties, industrial design, trade secret, layout design
of IC, etc. Intellectual Property usually is divided into two branches (1) Copyright and (2)
Industrial property.

Intellectual Property has assumed central importance throughout the world in recent times. The
Intellectual Property, which has mainly the subject matter of the World Intellectual property
Organization (WIPO), has also become a part of the World Trade Organisation[2] (WTO) regime
in 1995. The agreement on trade-related aspects of intellectual property rights including trade in
counterfeit goods of the WTO treaty evolved minimum standards for the protection of
Intellectual property for the member states to incorporate in their municipal laws.
The Patents Act[3] act lays down the procedure for the grant of a patent to an inventor to exploit
their invention for 20 years subject to the fulfillment of certain conditions. The first step is to
make an application for patent registration process in India in the prescribed form along with the
professional or complete specification. The application thereafter is published, and examined (if
requested), and a search for anticipation is made. positions are invited from the public to the
grant of patent and where there is no opposition the opposition is decided in favor of the
inventor, the patent is granted and sealed which confers certain rights on the patentee.

Who can Apply for a Patent?

To be eligible to apply for a patent for an invention that has been made by any persons alone or
jointly with any other person with the following prerequisites:

1. Any person claiming to be the true and the first inventor of the invention.
2. Any person being the assignee of the person claiming to be the true first investor in respect of
the right to make such an application.
3. The illegal representative of any deceased person who immediately before his death was
entitled to make such an application.

The term ‘person’ as defined in the Patent Act includes the Govt. The term “person” as defined
in the General Clauses Act, 1897[4] includes any company or association or bodies of individuals,
whether incorporated or not.

True And First Inventor

“True and first inventor” means a person who has made an invention. Where to person have
made the same invention independently and not disclose it, then the inventor who applied for a
patent is to be taken as the first and true inventor of the invention, irrespective of the fact that he
had made the invention later than the other inventor[5]. According to section 2(1) (Y) of the
Patents Act 1970, “true and first inventor” does not include either the first importer of an
invention into India, or a person to whom and invention is first communicated from outside
India.

In Norris Patent[6], a person who contributed one of the two main ideas in an invention was a
Co inventor.In V.B. Mohammed Ibrahim v. AlfredSchafranek[7],what was considering the
issue of the plaintiff, who was a financing pata could be deemed to be one of the inventors, or
whether the firm could be treated as an inventor so that the name of the firm itself could be
registered directly as a patent a full stop the court observed that it was not the plaintiff’s case that
he contributed any part of his ingenuity or scalar or technical knowledge towards the invention in
question. He gave the finances for running of the concern and that in this help experiments were
made and ultimately the invention was evolved. It was not disputed that the person that actually
labour and found out the process for defendants 1 and 2. Under the circumstances it was very
difficult to accept that the plaintiff could be treated as an inventor. It was obvious that the person
who was responsible for the invention must be defendants 1 and 2 and not a plaintiff.
Application Form for Patent Registration Process in India

According to section 7 of the Patents Act 1970, every application for a patent registration process
in India shall be for singular investigation. The application for a patent registration in India is to
be filed in the Patent Office.

Under the Patents act of 1970, the patent office could be established at various places. An
application for a patent is to be made in the form prescribed and filed in the appropriate patent
office. Territorial Jurisdiction of the Patent Office for patent registration process in India is
decided based on the following:

1. Place of Residence, Domicile or business of the application (mentioned first in the application in
the case of joint application)
2. Place form where the invention originated.
3. Address for the service in India given by the applicant, when the application has no place of
business or domicile in India (foreign applicants)

International Application under the Patent Cooperation Treaty[8]

Every international application for a patent under the patent cooperation treaty as may be filed
designating India is to be deemed to be an application under this act if a corresponding
application has also been filed before the controller general of patents, design, and trademarks in
India. The filing date of such application and its complete specification processed by the patent
office as a designated office or elected office Shelby the international filing date accorded under
the PCT.

an application in respect of an international application designating India shall before the

aforesaid period of time prescribed National fee and other fees to the patent office. and where an
international application was either not filed or has not been published in English file with the
patent office, a translation of the application in English comedy duly verified by the applicant or
the person duly authorized by them that the contest thereof is correct and complete.

The translation of the international application shall include the translation in English of :

1. Description;
2. The claims filed;
3. Any text matter of the drawings
4. The abstract; and
5. In case the applicant has elected India and any amendments to the description, the claims and
text matter of the drawings that are NXT international premier league examination report.
6. in case the applicant has elected India and any amendments to the description, the claims and
text matter of the drawings that are annexed to the international preliminary examination
report.

An application is made by virtue of an assignment of the right to apply for a patent for the
invention a proof of the right to make the application is to be furnished either along with the
application or thereafter in the prescribed time.in case the application has not elected India and if
the claims have been amended under article 19 in the amended claims together with any
statement filed under the set article;

Rights of Patentee under Patents Act 1970

The right of the patentee is a negative right which is enforceable at the instance of the
placeholder.

A patent is to confer upon the patentee the following rights:

Where the subject matter of the patent is the product, the exclusive right to prevent third parties,
who do not have their consent, from the act of making, using, offering for sale, selling, or
importing for those purposes that product in India.

In Telefonaktiebolaget LM Ericsson (publ) v. Intex Technologies (India) Limited[9] the court

stated that the statutory and monopoly rights of patentee cannot be reduced to a nullity till the
term of validity of the suit patents. The aforesaid rights of patentee are available subject to the
other provisions contained in the act and the conditions specified in section 47. While the Patents
Act no doubt offers a patentee the exclusive right to enjoy the fruits of his labor registered
invention, the same cannot be employed as a tool for exploitations to cripple business rivals
without adducting any proof of their alleged infringement.

Rights of Patentee to use Patent Temporarily or Accidently on Foreign Vessel

Adding two sections 49 of the Patents Act 1970, where are foreign vessel or aircraft for sale and
vehicle owned by a person ordinarily resident in a foreign country comes to India including its
territorial waters temporary or accidentally only the patent rights shall not be deemed to be
influenced by the use of the invention –

1. the body of the vessel or in the machinery, tackle apparatus or other accessories pair of, so far
as the invention is used onboard The vessel and for its action needs only; or
2. construction or working of aircraft or land vehicle or the accessories thereof, as the case may be

The provisions of section 49 are subject to the conditions of reciprocity.

Rights of Co-owners of Patents

According to section 50 of the Patents Act 1970, where a patent is granted to two or more people
each one of them shall be entitled to an equal undivided share in the patent unless an agreement
to the contrary is in force.

whether two or more person are registered as a guarantee of the proprietor of a patent than in
absence of an agreement to the contrary, each one of such person shall be entitled to the right of
the patentee for his benefit without accounting to the other person or persons whether two or
more persons are registered as guarantee or proprietor of a patent than a licensed under the patent
shall not be granted under share in the patent is not to be assigned by one of such person except
with the consent of the other person.

whether a patented article is sold by one or two or more persons registered as a guarantee or
proprietor of a patent, the purchase and any person claiming to him shall be entitled to deal with
the article in the same manner as if the article had been sold by a sole patentee.

Rights of Patentee: Law of Ownership and Devolution to apply

The law applicable to the ownership and evaluation of movable property generally shall apply
concerning patents. The mutual rights or obligations of the trustee or the legal representatives of
a deceased person or their rights or application as such are not to be affected by anything
contained in section 50.

Power on the controller to give directions to co-owners

According to section 51, where two or more person are registered as guarantee or proprietor of a
patent than an application of any such person of the controller make gives a direction following
the application as to the sale or lease of the patent or any interest therein, the grant of licenses
under The patent, or the exercises of any right under section 50 in relation thereto to as they
think fit.

a person registered as guarantee or proprietor of a patent failed to execute any instrument or to

do any other thing required for the carrying out any direction within 14 days after being
requested in writing by any of the other person so registered, the controller may, on an
application by any such person give direction empowering any such person to execute that
instrument or to do that thing in the name and on behalf of the person in default. Before giving
any direction in pursuance of an application, the controller is to allow being heard to the person
in default.

Term Of Patent under Patents Act 1970

According to section 53 of 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 affect the date of such commencement shall be 20 years from the date of filing of the
application for the patent.

Term of a patent in case of an international application

the term of patent in case of an international application filed under pct designated India shall be
20 years from the international filing date according to under the pct.
Cessation of a patent on account of non-payment of the renewal fee

patent ceases on the expiration of the prescribed period if the renewal fee is not paid within the
prescribed period or prescribed extended period.

On cessation of the patent right due to non-payment of renewal on expiry of the term of the
patent, the subject matter covered by the set patent shall not be entitled to any protection. The
patent does thus fall into the public domain and becomes public property.

Infringement of Patents and Remedies for Infringement of Patents

Introduction to Infringement of Patents

A person infringes a patent when he uses an invention of a patentee for which he was granted the
patent, without his previous authorization. A patent may sometimes be infringed by taking a part
only of the invention, but that depends on whether the part for which protection is asked is a new
and material part, especially in the case of combination. If it is not new and material, the court
must consider what is the substance of the invention, and to do so it has to consider the relative
importance of all parts of the invention. [1]

In an infringement action, the main function of the court is to construe the claims which are
alleged to have been infringed, without reference to the body of the specification, and to refer to
the body of the specification only if there is any ambiguity or difficulty in the construction of
claims in question.[2]

Thus, a patent is infringed if a person takes the substance of patented invention and makes
colorable variations to it such as omitting some unessential features and adding some new
features which may be immaterial.

Case laws dealing with Infringement of Patents

Dunlop Pneumatic Tyre Co. Ltd. v. Neal[3]: It was held that the purchaser of a patented article
can carry out repairs to it; however, he cannot manufacture a new article and claim that he had
not infringed the patent because in the manufacture he had used an article derived from a
patented article sold by its patentee. It was contended that the defendants cannot similarly claim,
by process of ‘‘reverse engineering’’ that their products were new and invented goods. They
were clearly inspired by the plaintiff’s products and after purchasing them, copied the main
elements; their effort was an act of infringement, which had to be injuncted.

Laxmi Dutt Roop Chand v. Nankau and others[4]:

Allahabad High court observed that the infringement of a patent may be done in a number of
ways, one of which is by using that patent or any colorable imitation thereof in the manufacture f
patented articles. It has also been observed in some of these authorities that the infringement may
not be of the complete whole of the process but it may be only in part but in the latter case what
is necessary is that the protection which is sought for, for such part is material or is totally new.

Jurisdiction

Section 104 provides that a suit for infringement of patent or for a declaration as to non-
infringement under section 105 or for relief in cases of groundless threats of infringement
proceedings under section 106 is to be instituted in District Court having jurisdiction to try the
suit. However, where a counter- claim for revocation of the patent is made by the defendant, the
suit along with the counter-claim is to be transferred to the High Court for decision.

Burden of proof in case of Infringement of Patents

In any suit for infringement of a process patent, the court may direct the defendant to prove that
the process used by him to obtain the identical product is different from the patented process if –

(i) the subject matter of the patent is a process for obtaining a new product; or

(ii) there is a substantial likelihood that the identical product is made by the process, and the
patentee or a person deriving title or interest in the patent from him, has been unable through
reasonable efforts to determine the process actually used. The patentee is, however, to prove that
the product of defendant is identical to the product directly obtained by the patented process.

Though the general burden of establishing the case of infringement of a patent in relation to a
new product is on the plaintiff, the burden of proving otherwise, i.e, the process by which the
defendants has made the similar product under his patent will be on the defendant by virtue of
section 106 of the Indian Evidence Act,1872.[5]

Defences against Infringement of Patents

Court’s declaration as to non- infringement

At any time after the publication of grant of a patent, any person may institute a suit for a
declaration that the use by him of any process, or the making, use or sale of any article by him
does not or would not constitute an infringement of a claim of a patent against the patentee or the
holder of an exclusive license under the patent, notwithstanding that no assertion to the contrary
has been made by the patentee or the licensee, if it is shown-

• That the plaintiff has applied in writing to the patentee or exclusive licensee for a written
acknowledgement to the effect of the declaration claimed and has furnished him with full
particulars in writing of the process or article in question; and
• That the patentee or licensee has refused or neglected to give such an acknowledgement.
Section 107 of the Patents Act talks about the defenses in suits for infringement. It says that
every ground on which the patent may be revoked under section 64 shall be available as a ground
for defense.

In any suit for infringement of a patent by the making, using or importance of any machine,
apparatus or other article or by the using of any process or by the importation, use or distribution
of any medicine or drug, it shall be a ground for defense that such making, using, importation or
distribution is in accordance with any one or more of the conditions specified in section 47.[6]

Other defenses available against Infringement of Patents

1. When a defendant proves that he has no intention of infringement.

2. In case of res judicata and estoppels.
3. When the plaintiff is not entitled or competent to sue for infringement.
4. When the defendant has a license to use the patented product or process.
5. When the patent is revoked on grounds of it being illegal.
6. In the case of pharmaceutical drugs/medicines, the government can allow to manufacture
patented products for public good.
7. In case the infringement is obvious in nature and not novel.

Remedies for Infringement of Patents

Section 108(1) of the Patents Act provides for the remedies to the plaintiff in case his patent
rights have been infringed. In any suit for infringement, the court may grant reliefs such as
injunction and at the option of plaintiff, either damages or an account of profits. These remedies
are not cumulative but alternative.

In addition, the court may also order that the goods which are found to be infringing and
materials and implement, the predominant use of which is in the creation of infringing goods
shall be seized, forfeited or destroyed, as the court deems fit under the circumstances of the case
without payment of any compensation.

1. Injunction: It is a preventive civil remedy. It is of two kinds:

2. Temporary/ interlocutory injunction: It is limited to a specific period or till the time the case is
finally decided on merit. Relief by way of interlocutory injunction is granted to mitigate the risk
of injustice to the plaintiff during the period before the uncertainty could be resolved. Its object
is to protect the plaintiff against injury by violation of his right for which he could not be
adequately compensated in damages recoverable in the action if the uncertainty were resolved
in his favor at the trial.[7] An interlocutory injunction is invoked by the court at the initial stages
of the suit filed by the plaintiff. This is passed in order to prevent the defendant from getting
further profits by using other patented products. In order to invoke a temporary injunction, it is
important for the patentee to prove that the patent is valid by all terms and has been infringed
by the defendant. Also, the subsequent infringement of his patent rights has caused irreparable
loss to him.
3. Permanent injunction: A permanent injunction is invoked when the case is finally decided by
the court on merit. The interim injunction is transferred to a permanent injunction if the
defendant is found guilty of patent infringement rights and the decision is on the side of
 plaintiff. But if the defendant is absolved from the liability and proved to be innocent, then the
interim injunction stands dissolved and is not converted into a permanent injunction. It is
limited to the duration of the patent.

EX parte interim injunction:

Following guidelines may be taken into consideration by the trial courts before granting ex parte
ad interim injunction:

1. Where the plaintiff and the defendant are residing outside the state and their information like
identity, address, etc. are easily known.
2. Where sales of the infringed products are not on a commercial scale.
3. Where the interim injunction is going to result in the closure operation/ business of the
defendant.
4. The trial court should carefully scrutinize the certificates, infringing marks, etc. in case of patent/
trade mark disputes.
5. No ex parte interim injunction can be granted if no evidence of infringement has been produced
by the plaintiff.

• Damages or account of profits: The owner of a patent is entitled to either damages or an

account of profits. He may either obtain damages in respect of losses caused by infringing
activities of the defendant or an account of profits obtained by the infringer – but he cannot
seek both. When drafting particulars of claim, the claimant will generally request these
remedies as the alternative. It will be granted in addition to the remedy of injunction.

Where plaintiff chooses the remedy of account of profits, he will be entitled to claim only that
profit which was enjoyed by the defendant by using the plaintiff’s invention. It is unreasonable to
give the profits of patentee which were not earned by the use of his invention.[8]

In Ravi Raj Gupta v. Acme Glass Mosaic Industries,[9] the court held that the patent sought to be
enforced and alleged to have been infringed by the defendant was not an invention within the
meaning of Section 2(j) of the Patents Act, 1970. Therefore, the plaintiff was not entitled to the
grant of an ad interim injunction as prayed for. However, to protect the interest of the plaintiff in
the event of his ultimately succeeding in the suit, the defendant was directed to maintain a
complete, true and accurate account of the manufacture and sale of the tiles.

• Seizure or forfeiture of infringing goods: Apart from other reliefs which a court may grant, the
court may also order that the goods which are found to be infringing and materials which are
predominantly used in the creation of infringing goods shall be seized, forfeited or destroyed, as
the court deems fit under the circumstances of the case without payment of any compensation.

Costs of Suits for Infringement After Obtaining Certificate of Validity of Specification

When a certificate of validity of specification is granted and in any suit, infringement of the
claim of patent before a court or in any proceeding for revocation of patent relating to the claim,
the patentee relying on the validity of the claim receives a final order or judgment in his favor,
she shall be entitled to an order for the payment of his full costs, charges and expenses of and
incidental to any such suit or proceeding properly incurred so far as they concern the claim in
respect of which the certificate was granted, unless the court trying the suit or proceeding
otherwise directs.

However, the aforesaid costs shall not be ordered when the party disputing the validity of the
claim satisfies the court that he was not aware of the grant of the certificate when he raised the
dispute and withdrew forthwith such defense when he became aware of such a certificate.

Remedy for Infringement of Partially Valid Specification

If in any proceedings for infringement of a patent it is found that any claim of the specification is
valid, but that any other claim is invalid, the court may grant injunction in respect of any valid
claim which is infringed.

However, if the plaintiff proves that the invalid claim was framed in good faith and with
reasonable skill and knowledge, the court shall grant relief in respect of any valid claim which is
infringed, subject to the discretion of the court, as to costs and as to the date from which damages
or an account of profits should be reckoned. In exercising such discretion the court may take into
consideration the conduct of the parties in inserting such invalid claims in the specification or
permitting them to remain there.[10]

Landmark Judgements dealing with Infringement of Patents

Novartis v. Union of India[11]:

In this case, a company Novartis filed an application before the court to grant the patent to one of
its drugs ‘Gleevec’ which they claimed was invented by them. In this case, the court drew a
distinction between invention and the discovery of an already existing drug. Also, the court also
formulated a new test for granting patents to pharmaceutical products known as enhanced
therapeutic efficacy. The court introduced this test besides the other traditional tests mentioned
under Article 3 of the patents act to ensure that these patented products are made available to the
general public on nominal prices in times of need.

Hoffmann- La Roche Ltd. v. Cipla Ltd.:

This case was one of the first cases of patent infringement in India after independence. In this
case, the plaintiff pleaded that an interim injunction order is passed against the defendant’s
selling of a generic form of the drug. The court rejected the plead saying that the sale of the
patented product was for public interest and also a case of a counterclaim as the revocation of the
patent was ongoing in another court.
Trade Marks
Meaning of Mark, Trademark and Concept of Distinctiveness

Meaning of Mark and Trademark

Mark is a distinguishing symbol which any person can use to exert public attention or to create
some kind of impression in the minds of the peoples. When he wants that public do notice his
creativity then he can use a mark for his creativity. Mark can be represented as a name, letter,
shape of goods, heading, label, device, combination of colours etc.

Trademark is a brand entity which has a capability to distinguish your goods and services from
any other persons goods and services. It is used by peoples so that any other persons do not dare
to copy your goods or services. Trademark includes word, design, logo, shape of goods, their
packaging and combination of colours. Trademark is used to indicate a connection between the
goods or services and the person who has a right to use the mark as a proprietor.

Every person in his whole day watch atleast 50 different different trademarks like trademark of
Google, Mcdonalds, Nike, Tide, Dettol, Microsoft, etc. So to sell your product in today’s time it
is very important to do branding or promotion of your product. It maintains your goodwill in the
market and it is not compulsory to register your trademark So you can use your trademark
without any registration[1].

But the registration of the trademark is compulsory because it protects and promote your
different and creative ideas. So those trademarks that are considered as different by the
trademark department are granted registration only in India. Trademark has been defined under
Section 2(zb) of the Trademarks act, 1999. It is used on articles of commerce. A trademark in
India is registrable for maximum period of 10 years thereafter you can renew it again. If you get
registered your trademark then you are allowed to take action for its infringement but you are not
allowed to take action for infrigement for non registered trademark.

It will be beneficial for the owner of the trademark if his trademark is easy while speaking or
spell or remember and before taking the trademark the owner has conducted a survey in the
market regarding the trademark which he is going to take[2] or he can search in the trademark
database given at the official website of the trademark because there he can get complete
information regarding various trademarks that are already registered or rejected.

The Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma v. Navratna
Pharmaceutical Laboratories held that in an action for infringement of the trademark the burden
would be on the Plaintiff to show that the trade mark used by the defendant in the course of trade
in the goods in respect of which his mark is registered, is deceptively similar.
Concept of Distinctiveness of Trademarks

In this concept we will study about the Distinctiveness of the trademarks because Trademark’s
act, 1999 registered only those trademarks which are distinctive in nature because trademarks
without distinctiveness is considered as a weak trade mark for the trademark registration.
Distinctiveness is the quality of being different from the other things. If a mark is not distinctive
then it can create confusion in the minds of the consumers of the products regarding the origin of
the products or services it represents. There is one way to obtain distinctiveness of trademark is
when the owner of the trademark is continuosly from a very long time using the trademark. For
prevention of such confusion, Section 9(1)(a) of the Trade Marks Act, 1999 prohibits the
registration of the marks which have no distinctive in nature.

An invented mark is easily registrable because they have distinctive in nature. Invented marks
are those marks which you have invented by using your own mind and it is not available in any
dictionary or anywhere else.

An arbitrary (random) mark is also easily registrable because these marks have a meaning in
dictionary before being adopted as trademarks, but these marks are used with those products or
services which are not related to that meaning of dictionary. For example – Apple for computers
and subway (which is being used for restaurants).

A suggestive mark is also easily registrable. They describe the quality of the products and these
types of marks requires consumers preception or imagination about the product.

A geographical name can be registered as a trademark if its distinctiveness is proved.

So, the marks that indicate what the products or services are or marks that are in common use,
generally does not get registrable as trademarks because they are not distinctive in nature.

Important Case Laws with respect to Trademarks

• M/S. ITC Limited vs. Nestle India Limited[3]

The dispute between the plaintiff and the defendant in the present suit arose on account of
adoption of the deceptively similar name “Magical Masala” by the defendant for marketing
purpose of its noodles. But the plaintiff had already introduced its sunfeast yippie! Noodles
Magic Masala”. It was submitted that the name “Magic Masala” had become distinctive and was
identified very soon by the public as that of the plaintiff. It was also submitted that due to great
quality and affordable prices, noodles bearing the above name “Magic Masala” earned huge
profits and got extraordinary success. But the defendant introduced its variant “Maggi xtra-
delicious Magical Masala” to gain profit on the goodwill of the plaintiff. After threatened by the
plaintiff, defendant adopted “Magical Masala” but it was submitted that defendant copied the
name “Magic masala by little tweaking it by adding “al” to the word “Magic”.
Plaintiff wants a permanent injunction restraining the defendant, their directors, servants, agents
from passing off their products noodles by use of the offending mark “Magical Masala” or any
mark similar to plaintiff’s mark “Magic Masala”.

Held – Though the defendant adopted the name “Magical masala” after inspired from the
adoption of the name “Magic Masala” by the plaintiff and from the success of the plaintiff. There
is no passing-off by the defendant so the plaintiff is not entitled to succeed in a passing-off. As
there is no visual similarity between the two wrappers, there is no scope to infer passing-off from
a visual comparison of the two labels. The suit is dismissed. The plaintiff is not entitled for any
of the reliefs as prayed for.

• Geepee Ceval Proteins vs. Saroj Oil Industry[4]

The plaintiff has filed this application for grant of ad-interim injunction restraining the
defendants from manufacturing, selling, offering for sale or advertising directly or indirectly of
edible oil under the trade mark “CHAMBAL” or any other trade mark or packing material
amounting to passing off the trademark of the plaintiffs or amounting to association with the
plaintiffs.

Plaintiff has involved in the business of manufacturing of edible oil. He was selling its various
oil products under the trade mark “CHAMBAL” since 1997. The trade mark “CHAMBAL” has
acquired distinctiveness after so many years because of large advertisement in printed form and
electronic media over which the plaintiff had spent a large amount. In February, 2003 the
plaintiff came to know that the defendant is also selling oil manufactured by it under the trade
mark “CHAMBAL” using the same packaging and label. The defendant did not stop from doing
so despite of service of notice. The defendant contested that the trade mark used by the defendant
was “CHAMBAL DEEP”, which is adequate to distinguish it with the trade mark of the plaintiff.

Held – The word ‘Chambal’ used by the plaintiff and the word ‘Chambal Deep’ used by the
defendant are deceptively similar and they are likely to cause confusion and deception in the
mind of the consumers and others in the trade. Plaintiff is likely to suffer greater inconvenience
than that of the defendant if ad interim injunction prayed for by him declined at this stage.
Plaintiff is using the trademark ‘Chambal’ since 1997′ whereas the defendant has just started
using it very recently in 2001, according to its own averment in the application for registration of
the trademark. The balance of convenience is, therefore, in favor of the grant of interlocutory
injunction. Plaintiff may also suffer irreparable loss and injury if the defendant is allowed to
continue to sell its products also in the trade name of ‘Chambal Deep’ during the pendency of
this suit.

It was held that the plaintiff has been able to establish his case for grant of interlocutory
injunction, as prayed for in the application. Accordingly, the application is allowed and the
defendants, their servants, agents, dealers, shop keepers and all other persons on their behalf by
way of ad interim injunction order are restrained from manufacturing, selling, offering for sale or
advertising directly or indirectly in dealing in order oil under the trade mark ‘CHAMBAL’ or
any other trade mark or packing material amounting to pass off of the trade mark ‘CHAMBAL’
of the plaintiff or any other trade mark or packing material amounting to association with the
plaintiffs.

• Brahmos Aerospace Pvt. Ltd. Vs Fiit Jee Limited & Anr.

The plaintiff, Brahmos Aerospace Pvt. Ltd. has filed the present suit for permanent injunction
restraining infringement of the trademark, passing off, unfair competition, rendition of accounts,
damages, etc. against the two defendants, namely, FIIT JEE Limited, New Delhi and USA Univ.
Quest, New Delhi. It is claimed that the trademark “BRAHMOS” is an eminent well-known and
reputed trademark of the plaintiff-Company and plaintiff regulates various educational
programmes pertaining to the aerospace industry, including training of its employees and
engineers. The defendants have shadily adopted the same trademark in respect of the same
services in order to give an impression to students that their online test is affiliated to the
plaintiff. Some of the students belonging to Delhi had gone to the plaintiff’s office many times
and have also sent e-mails for making inquiries whether taking the BRAHMOS aptitude test of
the defendants entitles them for jobs or internships in the plaintiff-Company.

Defendant No.1 is a coaching institute in New Delhi which tutors engineering aspirants for
differents entrance exams in India, like NTSE, KVPY, IIT-JEE. Defendant No.2 is a company
which is in some way related to defendant No.1. The defendant No.1 is advertising a course
made for Indian students to get admission in colleges located in the United States. Both the
defendants are in the realm of education and they are advertising the mark BRAHMOS in
various forms of print, digital and internet advertisement constituting a visual representation. It is
alleged that by adopting the same trademark BRAHMOS for the above said aptitude test the
defendants are encashing the massive goodwill attached with the mark BRAHMOS of the
plaintiff and the confusion is hence bound to occur, as the defendants are showing that somehow
they are affiliated with the plaintiff.

Held – Under these circumstances, the plaintiff has been able to make out a strong prima facie
case for the grant of interim injunction. Since the plaintiff is the registered proprietor of the
trademark, the case of infringement is also made out and the balance of convenience also falls in
favour of the plaintiff and against the defendants. So in this case, the defendants are not allowed
to use the trademark BRAHMOS to conduct in the course of trade as alleged by them, they can
use another name in order to avoid the confusion and deception. At the same time, if the interim
order is not passed, the absolute right of the plaintiff to take benefit of goodwill, name and
reputation would be breached. The plaintiff will also suffer an irreparable loss and injury in case
the interim order is not passed.

Taking into Consideration the overall facts and circumstances of the case, the defendants, their
servants, agents and all other persons acting on their behalf are restrained from using the
trademark BRAHMOS in relation to educational activities or part of domain name and in any
manner whatsoever in order to create the confusion and deception and infringing the trademark
of the plaintiff. The application of the plaintiff is accordingly allowed.
Categories of Trademark: Certification Marks, Collective Marks, Well known
Marks and Non-Conventional Marks

Meaning of Trademark

Trademark is an intellectual property consists of signs, designs, expressions or other

distinguishing factors which identifies different products and services. Indian protects
trademarks under the Trademarks Act 1999.

Types of Trademark

There is a general classification of trademarks into four categories according to the description
and nature of the products and services. These four categories are:

• Certification Mark,
• Collective Mark,
• Well Known Mark, and
• Non-Conventional Marks.

Certification Trademark

Certification Trademark is a mark which distinguishes goods or services based on the origin,
material, mode of manufacture, performance of services, quality, accuracy, and other
characteristics.

Section 2(1) (e) of Indian Trade Marks Act defines a certification mark as “a mark capable of
distinguishing the goods or services in connection with which it is used in the course of trade.
WOOLMARK certify that a product is made of 100% is wool, ORGANIC INDIA is a trademark
which satisfies a method or mode of manufacture, ISI mark is given for the products which have
some standards laid by the Bureau of Indian Standards. The trademarks Act 1999 has a detailed
provision for types of information that must be included in giving application of the trademark.

Applicants must submit a certification Trademark application, a statement of case that sets out
the grounds of the application. The application must be filed to the Indian Trademark registry
and they will check whether the application satisfies with the necessary requirements as per the
Indian law. If the registry is satisfied by the requirements given by the applicant, then it will be
published in the trademarks journal.

The application will remain open to opposition by any third party within four months. The
certificate Trademark will be registered if there is no opposition. The term of registration for a
certification Trademark is 10 years. There are provisions to cancel a certification trademark if an
aggrieved party approaches the register, when the proprietor is no longer competent to the
trademark, when the proprietor has failed to observe any provisions of the regulation given under
the law and when the register thinks that there is no advantage to the public.
Collective marks

Collective marks are trademarks to protect and to differentiates the geographical origin, material
model of manufacture or other common characteristics of goods or services. Collective
Trademark is owned by an association or organisation. It is used by their members to identify
with their level of quality for accuracy.

Article 7 of the Paris Convention talks about collective marks, which mentions that the countries
shall protect collective marks even if those associations do not have an industrial establishment
and each country has the authority to decide which collective marks are to be protected. They
may refuse to protect a collective mark if they feel it is opposed to any public policy.

The importance of collective mark is that certain products are linked to the region, and there may
be historical cultural and social condition which make some products worthy. Just like the
certification mark collective marks cannot be applied by anyone. For example, any gold
jewellery which conforms to all the standards laid by BIS can have the Hallmark on it to show its
level of purity, but only people who are members of CA can use the mark of a CA.

Collective Trade Mark in the Indian context is defined in Section 61 of the Trade Marks Act,
1999. The members of the collective mark can use the collective mark.

Example of collective mark

The classic example of collective mark is case of “Chirimoya Cumbe”[1].

It is a native fruit of Peru and Ecuador. It has a value in that area where the climatic conditions
are favourable for growing chirimoya. The fruit produced in that area is of superior quality and it
is characterized by large food size, greater in value of their skin and low seed ratio. A farmer in
1997 applied for registration of trademark chirimoya Cumbe in Peru.

The application for registration was rejected on the grounds that an individual cannot have
exclusive rights in the generic names. Again, he met with the officials and told the importance of
chirimoya Cumbe with the community in Lima village. After long battles it was registered as a
collective mark and the people of Cumbe would be the owners of this collective mark and they
can use the mark as per the rules laid down to them.

Thus, collective trademarks are an effective tool for promoting products of a particular region
that are peculiar to that region. A collective mark enhances the marketing of such products and
cooperation among the local producers. Correct use of the collective mark can assist the
company in Goodwill building in terms of quality, accuracy, origin at an early stage.

Well known Trademark

Well known Trademark was introduced during the year of 2017. At present the list has 81
trademarks declared as “well-known” by judicial and quasi-judicial authorities in India. Anyone
can file an application for a well known trademark for safeguarding and protecting against
passing off an infringement of trademark. Well known Trademark are recognised in India on the
basis of the reputation nationality, internationally and cross-border.

Registrar while determining whether a mark is well-known in a relevant section of public shall
take into account the actual number of consumers, the number of people involved in the channel
of distribution of goods or services and the business circles dealing with the goods or services.

When a person applies for well known trademark no one can use that name for any other
services. For example, Google has been trademark by Alphabet Incorporation. They can only use
Google for any goods and service, and no one can use even if it is not related to internet industry.

Cases dealing with Well known Trademark

In the case of Daimler Benz V Hybo Hindustan[2] the defendant was using the logo and the
word Benz for which plaintiff got an injection. The court recognised that plaintiff has this logo as
a well known trademark on the ground of transborder reputation and Goodwill granted injunction
against the use of logo and other things by the defendant. In the case of Rolex Sa V Alex
Jewellery Private Limited & ors[3]is a similar case.

A company was using the trade name of “Rolex” for making artificial jewellery which was a
well known brand for watches. Plaintiff gave a case against the defendant for using the trade
name Rolex. The court held that the people would get confused when they see the name Rolex
and also said that the watch company Rolex has a well known Trademark. This will be affecting
the business and goodwill of the plaintiff. For this reason, the court considered Rolex to be a well
known Trademark and granted injunction against the act of the defendant.

Rule 124 of Trade Mark Rules 2017 permits the trademark owners to file a request for grant of
“well-known” trademark to the Registrar in form TM-M. Before the coming up of this rule, a
mark was declared well-known only after proceedings, rectification and opposition held before
the Hon’ble courts. With the commencement of this rule and the procedure laid thereof, a
trademark owner can request for a well-known trademark without getting into any proceedings
or rectifications.

Rule 124 ensures a trademark to be granted the tag of “well-known” merely by an application of
request to the Registry. Section 11 (2) of trade marks Act 1999 protects the well known
trademarks. According to this clause well known trademarks are to be recognised and protected
across all the classes of goods and services. This also means that any identical or similar product
can also be not there.

Section 11 is also giving the conditions required for well known Trademark registration and
filing of a well known trademark application. It should be given with the relevant documents,
evidence and a fee of 1 lakh rupees. There are remedies available to an owner of well known
mark when someone misuses it. If someone misuses it, he can be punished punitively. The owner
can seek cancellation of infringing mark. The owner can cancel registration of a trademark which
is same or similar to the well known mark even is a well-known Trademark is not registered in
India.
In the TATA case the court awarded punitive damages of rupees Two lacs to the plaintiff for
misusing the well known trademark. There is a vulnerability of well known Trademark in the
cyber age. As there is an advancement of technology, fast access to information, international
business, international travel and advertisement there is a need of well known trademark. The
jurisdiction of the well known trademark should be applicable to all countries because the world
is connected now. The Multi National Companies are more vulnerable and they will lose their
reputation if someone misuses it.

Non-Conventional Marks

In the modern world trademarks are not limited to words, logos or symbols which can be
graphically represented in relations with any goods or service. Sometimes the sound, taste, smell,
texture, Hologram, motion, shape and ambiance of the goods and service can be treated as a
trademark. As this trademarks are beyond the realms of traditional conventional category these
trademarks are called as non conventional mark. Under the rule 26 (5) of Trademark rule 2017
there was a mention of sound trademark. International organisation like TRIPS still have to make
provisions for non conventional marks.

Cases dealing with Non-Conventional Trademark

Yahoo Idol has registered the first Sound Mark in India in 2008. India also does not have any
provisions for non conventional marks. There should be amendments in both rules of TRIPS as
well as in the legislation of India because non conventional marks have become such an
important mark in the present modern world.

Examples of smell marks are toothbrush with the smell of strawberry, lubricants for combustion
engines etc. In India no smell mark has been registered till date. There are some problems with it
because it cannot be stored or represented easily. Writing down of the chemical formula for a
smell is the only way to represent it.

In the case of Shield Mark BV v. Joost Kist[4] The European Court of Justice has decided
some conditions under which sound Trademark must be registered. It is a Landmark case which
gave the guidelines for sound trademark. The court held that sound trademarks are capable of
being trademarks under the article 2 of European directive 89/104 if they are capable of
distinguishing the goods or services from one another and represent it graphically. In this case
the court also held that sound trademarks can be represented graphically using images, lines or
characters and the representation should be clear, precise, self-contained and easily accessible.

In the case of Ralf Sieckmann v. Deutsches Patent und Markenam[5] is a landmark

judgement given by European Court of Justice on the trademark of smell. The case involved a
methyl cinnamate cent which the applicant has described and brought sample of the product. The
court held that the chemical formula is not giving the proper smell of the substance and not
sufficient, clear or precise. The physical deposit of the sample did not constitute graphical
representation and was not sufficiently stable or durable. These are the difficulties in getting the
smell trademark.
In the case of Eli Lilly v. OHIM there was a case where an application was filed before the
Office for Harmonisation in the Internal Market to trademark the flavour of strawberry for
pharmaceuticals. This was rejected on the grounds that it lacked any distinctive character. The
mark was presented with a verbal description and thus lacked a written description to be filed
mandatorily in order to describe the mark. Thus, it can be concluded from this judgement that
applying for a taste mark for a medicine is a futile exercise as this is generally done to offset to
bitter taste of the medicines.

Adding a flavour to a medicine is usually performing a functional aspect of the product. New
kinds of trademark will come as the technology and business progress. These are necessary to
resolve the conflict between the producers and to bring healthy competition among the business.
These trademarks are also valuing the hard work of each labours who work behind the product or
service.

Absolute and Relative Grounds for Refusal of Trademarks

INTRODUCTION

A trademark is a sign that modifies the goods of a given company, organisation or business and
distinguishes them from the goods of its intrants. Trademark may include letters, words, slogans,
symbols, numerals, pictures, name, logo, even sounds and smell. Trade mark is proficient
enough of being exemplified graphically and which is capable of differentiating the goods or
services of one person from those of others.

These trade marks can only be established by registration. Owner of the registered trademark has
the right to prohibit others from using a similar mark to recognise their goods or service on
market. Owner of the trademark should first apply for registration by filling an application in
national level, in their national office for protecting trademark rights which trademark will be
protected only in that current country and in international level by filling one application where
his trademark will be protected in many countries reliant in which country, he has marked the
protection. A registered trade mark or a mark used in relation to goods or services for the
intention of indicating a link in the course of trade amid the goods or services. Few people have
the right either as proprietor or by way of permitted users to use the trade mark.

During the procedure of registry, officers in charged of the registry scrutinize application of the
trademark. If any trademark found to be infringing any kind of law or other registered marks,
they may reject the registration application of the mark.

Not every possible mark or symbol cannot be recognized as a valid trademark. there are some
criteria that one sign or mark have to satisfy to gain the trademark protection.

There are many signs which are not ready to distinguish the products and services can’t be
registered. Sign or mark must be a “trademark” must fulfil all the grounds. They should not fall
under absolutely the and relative grounds for refusal. Unprotected mark is going to be considered
also mark in conflicts with a previous right in another trademark or other distinctive sign also
will be refusal, during the case for relative ground. Accordantly to the present, the owner, during
creating his mark should be original, natural, creative etc.[1]

GROUNDS FOR REFUSAL OF THE TRADEMARKS

Trade Marks Act, 1999 includes the grounds for the refusal of the trademarks. Section 9 and 11
of the Act provide for the absolute and relative grounds for the refusal of the trademark
registration.

ABSOLUTE GROUND FOR REFUSAL OF THE TRADEMARKS

Section 9 of the Trade Marks Act, 1999 include the Absolute ground.

Section 9(1) of the Trade Marks Act, 1999

Under following grounds, the trade mark cannot be registered: –

Trademarks which are not capable of distinguishing the goods or services of one person
from that of another person.

This section proscribes registration of marks, which lack of any distinct character. Words that
can create confusion between trademarks and could deceive people are prohibited.[2] The
distinction of the trademarks could of two types:

• Inherent
• Acquired.

There might be some inherent qualities or unique characteristics in the mark itself, to be
distinctive or capable of distinguishing the goods.[3]

In Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks[4] case, the Imperial
Tobacco Company manufactured and distributed cigarettes with a label “SIMLA” all over the
country. ITC ltd. made an application to the Registrar for the registration in the year 1960 and
1966. But both the times the registration application was refused by the registrar. The Calcutta
High Court rejected the appeal on the ground that the term “SIMLA” is a famous geographical
place. This term cannot be registered as a trademark.

In the case Aggarwal Sweet Palace v Asst. Registrar, an application for registration of the trade
mark “Aggarwal Sweet Corner” was permitted on the basis of the user and in respect of sweets
and namkeen. Opposite party appeal was dismissed.[5]

In the application of American Online Inc., the applicant wanted to register the word “YOU’VE
GOT MAIL” as a trade mark in different classes. The application was refused by the Board of
Directors. According to them the trade mark was not distinctive. It was held that trade mark
comprised of common words to notify email users of the normal fact they have received a new
mail. It is necessary that phrase must remain free from the individual monopoly rights.
Trademark which consists only of such marks or of such indications which may function in
trade to specify the kind, quality, quality, geographical origin, or time of production of
goods or services or other characteristics of goods or services.

This clause proscribes registration of trademarks, which consist entirely of marks or indications,
which may serve in trade to designate the kind, quality, quantity, intended purpose, value,
geographical origin or the time of production of the goods or representing the service or other
characteristics of the goods or service.

This obligation can be applied to marks which are descriptive along with non-distinctive in
relation to the goods or services for which the protection is pursued. Main focus while analysing
a mark should be word. Strict Grammatical significance can be put aside. (Keystone Knitting
Mills Ltd.’s TM [6].

Marks with the word like “RASOI” for edible oils cannot be registered as a trademark. Reason
for that is such mark indicates the nature of the product. (M/s Hindustan Development
Corporation Ltd. v. The Deputy Registrar of Trade Marks case). [7]

Similarly, the word “SOLAR” unquestionably indicates the sun. Buyer can misunderstand the
product to be produced or comes from the sun as solar energy.[8]

Trademark which comprises only of such marks or indication which have become
customary in the current language or in bona fide and established practice of trade.

Trademarks which consist of marks or signs which have become customary in the existing
language or in the bona fide and established practices of trade from being registered under the
Act are excepted. Under this section colour combination is also considered.

Example: Colour red is considered as a basic colour. Combination of the colour red and white
was held to be common to the toothpaste trade in the domestic and as well as international
market. Such combination cannot monopolise by any party.

The Supreme Court in the case of Whirlpool Corporation v. Registrar of Trade Marks[9],
observed that trade mark is registered without limitation of colour. A trademark can be deemed
to have been registered for all colours.

A German word ‘AUTO’ cannot be registered for motor cars or their parts and fittings or
anything with relation to such kind of services. Such words are publici juris or general. These
words cannot be registered as they belong to the public at large.

Division Bench of Delhi High Court held that exclusive right over such word, abbreviation or
acronym which has become publici juris cannot be claimed. (SBL Ltd v. Himalayan Drug
Company case) [10].
Section 9(2) of the Trade Marks Act, 1999

Under following grounds, the trade mark cannot be registered: –

If such trademark is likely to deceive the public or can even cause confusion.

In the Leather Cloth Company Ltd. v. American Leather Cloth Company Ltd. case[11], the
House of Lords held the plaintiff through words ‘tanned leather cloth’ intended to deceive the
public. Only one-third tanned leather cloth was produced.

If such trademark is hurting the religious sentiment of any class or section of Indian
citizens. It is not difficult to find the name of any god or goddess or any religious head as a
trademark in India.

The Act refuses the use of names or device of deities on foot wear will be considered
disrespectful.

The word RAMAYAN was refused for registration as trademark in the case of Amritpal Singh v
Lal Babu Priyadarshi[12]. Intention of the applicant was to sought to be registered as trade mark
for incensed sticks and other fragrance spreading products. Registration opposed inter alia on the
ground that mark was a religious word and lacked distinctiveness. It was also held that it would
have been a case if “Ramayan” had been prefixed or suffixed with some other word or words so
that “Ramayan” was not the prominent feature of the mark.[13]

If such trademark contains any kind of scandalous or obscene matters.

Trademark which is considered to obscene cannot be excepted. The Registrar can refuse the
registration on the ground that the mark was conflicting to the acknowledged principles of
morality.

If the use of such trademark is prohibited under the Emblem & Names (Prevention of
Improper use) Act, 1950

Section 4(b) of the act prohibits the registrar from registering a trademark or a design which
holds any emblem or name and use of it shall be in infringement of section 3 of the Act.

Example: Subhash Chandra Bose, Indira Gandhi, National Flag etc. cannot be used as
Trademark.

Section 9(3) of the Trade Marks Act, 1999

A mark shall not be registered if it consists exclusively of:

a. The shape of goods which result from the nature of the goods themselves.
b. The shape of goods which is necessary to obtain a technical result.
c. The shape of goods which adds substantial value to the goods.[14]
Relative grounds for refusal of Trademark

Relative grounds for refusal of registration are dealt under article 11 of the Act, 1999. Basically,
absolute grounds for refusal of registration are clear. Relative grounds for refusal are dealt
differently. It deals with the mark in connection to other earlier marks.

This Section provides that a mark is often refused due to its identity and association with an
earlier trademark and similarity of products or services covered by the trademark or, its
similarity to an earlier trademark and therefore the identity or similarity of the products or
services covered by the trademark. This helps in reducing the likelihood of confusion within the
public who would assume the newly registered mark is somehow connected or associated to the
previous trademark.[15]

It also provides that objections are often raised just in case of any similarity between the sooner
marks. However, an applicant can register such trademark if the proprietor of the sooner mark
has given his/her approval or the mark is registrable under Section 12 by virtue of honest
concurrent use. it’s the duty of the Registrar to guard a well-known trademark against the
identical or similar trademarks. Primarily, protection of public interest and therefore the interest
of other bonafide traders who are entitled to object if the utilization of the trade mark proposed
for registration will enable the applicant’s goods/services to be happened intrinsically other
traders’ goods. Given the above, Section 11 prescribes that any mark which is analogous to a
mark which is already registered (earlier trademark) or is employed for similar goods won’t be
allowed registration. there’s a likelihood of confusion for the general public because the
trademark being applied for is identical with an earlier trademark and therefore the goods/
services of the 2 marks are similar. A trademark shall not be registered if its use is susceptible to
be prevented by virtue of law of Passing off or Law of Copyright.

Relative Grounds for Refusal of Registration’ by the Indian Trade Mark Office means a
Registered mark or a convention application (from a citizen of a country/group of nations with
which India features a treaty/ agreement) that the date of application was before the trademark
sought to be registered. If an application for registration is in respect of a trademark which
falsely suggests a reference to a living person or an individual who died within 20 years before
the date of application, then the Trade Mark Registrar may, before proceeding with the
appliance, require the applicant to furnish consent in writing of such living person; or personal
representative of the dead person. The Registrar may refuse to proceed with the appliance if such
consent isn’t furnished.

In very famous case of Amritdhara Pharmacy v Satyadeo[16]court established degrees of

comparison between sets of similar word marks. ‘Amritdhara’ and ‘Lakshmandhara’ were held
similar words. Wherein instead of the words being subjected to a side-by-side comparison or to a
punctilious individual analysis, some structural examination of the words is permitted,
particularly with the object of establishing if either possesses any outstanding characteristic that
will unavoidably cause a more or less lasting imprint on the hearers’ mind.
CONCLUSION

Trademarks are essential intellectual property tools and consumer certainty. There are however
many instances where practices by groups can lead to the refusal of registration of trademarks.
Recently the discrimination was in the news with reference to Section 9(2) of the Trade Marks
Act, 1999.

The beauty product ‘fair & lovely’ can be considered as the discriminatory in nature. This mark
cannot be registered as it is violative of fundamental rights enshrined under Article 15 of the
Indian Constitution. Skin tone or colour preference can result in discrimination in India. In many
foreign countries similar issue were raised. Courts of the foreign country held that such words
cannot registered as trademarks for the products. Product name ‘Fair & lovely’ was changed to
‘Glow & Lovely’ due to raised issues.

With the growing evolution of the trade marks all over the world, India must do all the necessary
to ensure the protection of individual businesses and avoid deceitful transactions and the fraud of
consumers and clients. Registration of the trademark is not only a regulatory requirement of
business but it is also known as the best evocative measure to adopt to safeguard business
interest.

Procedure of Registration and Protection of Trademark in India

Introduction:

India, with its blooming entrepreneurship programmes and national projects like “Make in
India”, has increasingly widened the scope of various small as well as big business and with that
the necessity of trade mark registration comes as a corollary. But, the legislation to regulate the
trade mark is not a new concept before this Government which is proved by the enactment of
The Trade Marks Act, 1999[1] and India’s participation in Madrid protocol[2] in 2013.

As the Hon’ble Supreme Court interprets the object of trade Marks Law in India that the law of
Trademark is to secure those businessmen and proprietors who sells their goods and services
with distinct registered trademark and protect them against any business malpractice with the
intention of harming or taking advantage of the previous businessman.[3]

In this context, this article put forward an exhaustive compilation of the procedure of registration
and protection of the registration in India as well as in trans-border platform.

Procedure for registration of trademark:

Under Section 6[4] of the Trade Marks Act, 1999, a register, either in papers or digital form shall
keep the records, wholly or partly, of all trade marks with the names, address, description of the
proprietor’s notifications and assignments, except any trust and be kept at every office premises
of the Trade Marks Registry.
The Registrar shall be liable, under Section 7[5], to classify the concerned goods and services in
accordance with the international classification of goods and services for the Trade marks
registration. Also, the it would be upon the discretion of the registrar to decide any question
which may arise in deciding the class in which the goods and services are to fall. [6]

Under the Chapter III of the Trademark Act, 1999 the procedure is dealt with in multiple
steps.[7] The procedures of Registration can be divided into 4 main heads mainly,

1. Application for Registration

2. Advertisement notice for any opposition

3. Amends and Correction

4. Registration.

1. Application for Registration :

According to the Section 18 of the Act[8], a person or persons who wishes or jointly wish, as the
case may be, to be the proprietor of a trademark used or supposedly used by him, shall apply in a
single application for its registration for different classes of services and goods in the office of
the Trade Marks Registry, which is situated within the territorial limits of principle place of
business of India and the person or the person whose name first mentioned in the case of joint
applicants, has his business in India. If the Registrar believes that there is a ground for refusal or
conditional acceptance of the application and can be the subject of amendments, modifications,
conditions or limitations etc, then it would depend on valid grounds mentioned by the Registrar.
Further, if the Registrar believes that the application for registration of a trademark has been
accepted under i) in error or ii) in the circumstances of the case it should not be accepted or is a
matter of limitation, conditions additional or different from the conditions and limitations of the
accepted application, can withdraw the same application under Section 19[9].

2. Advertisement or Notice in public for opposition:

After the application has been accepted, with conditions and limitations, if any, should be
advertised according to the provisions of Section 20 [10]. If, within three succeeding months
from the application, any objection arises from the part of any public the registrar must consider
so and ask the aggrieved party to make a counter application repealing the previous application
in the said manner and also permit any correction of any error as it may follow.

3. Amendment and correction:

The Registrar, if feels fit, at anything, before or after the acceptance of the said application for
registration under section 18[11], may permit the correction of any error that may follow under
the Section 22[12].
4. Registration:

Under the Section 23[13], the applications which 1. are not opposed and time for notice of
opposition has expired or, 2. were opposed but the objection was in favour of applicant, will be
registered. According to sub-clause 2, the applicants will be provided with a certificate in the
prescribed form of registration after the trade mark registration. Unless the Registration of trade
mark is completed within 12 months of its application, will be treated as abandoned. Under sub-
clause 4, the Registrar is allowed to permit an amendment the register or the certificate for
mending the clerical mistakes.

In case of Superon Schweisstechnik India v. Modi Hitech India Ltd.[14] (2018) 250 DLT 308, the
question arises whether trade mark over a abbreviated title can be registered. The plaintiff, with
distinct registered trade mark “Superon” sells goods that of the same as the defendant, which has
very different primary trade mark “GMM”. While the plaintiff used the “VAC PAC” as an
abbreviated form Vacuum Package and claimed to have ownership on the same and demanded
permanent retainment order in the usage of the same. Under Section 9(1)(a), which purports
absolute grounds for refusal of registration and Sec 11(3)(a), of the relative grounds for refusal in
addition to law of passing of, the Court determined that merely abbreviation of words cannot be
claimed to have any trade mark ownership. In the judgment, the Court also considered Godfrey
Phillips India Limited case and came to the conclusion that the primary trademarks were
contrasting in this case and the plaintiff having no real prospect to succeed, cannot claim the
ownership of trademark on the abbreviated word.

Protection of Trade

mark:

Chapter IV[15] deals with the effect of registration and the beneficiary protections endorsed in
favour of the registered trade mark.

Under the section 25[16], it is given that the duration for the registration would be for 10
consecutive years and then, then it has to be renewed from time to time in accordance to this
section.

The registration of trade mark also guarantees some rights protecting the trade mark which is
explicitly mentioned under chapter IV and some under Chapter II of the same Act.

The registration of Trade mark can absolutely be refused under Section 9[17], on the ground, that
(a)it has no distinctive character which separates others goods from the concerned goods (b)
includes the mark designating the kind, quality, quantity, intended purpose, values, geographical
origin, or time of the production of the goods or which also renders the other characteristics of
the goods or services. (c) consists of the marks or indications which has achieved a status of
customary title in the current language or in the practices thereof.

The registration can also be subject to refusal on the following relative grounds[18], that (a) it is
identical to the earlier trade mark and similar to the goods and services provided (b) similar to
earlier trade mark and identical to the goods and services. But if the case arises where (a) the
concerned trade mark is identical or similar and (b) The goods and services concerned are not
similar to the goods and services which were earlier registered, the trade mark can still be
repealed if, the earlier trade gained wide reputation on the same and using it on the same repute
would be unfair advantage of or detrimental to the earlier trade mark.

According to Section 28(1)[19], the registration of the trade mark gives the registered proprietor
the exclusive right to use the trade mark vis a vis the goods and services which were registered
under the trade mark and therefore the conditions and limitations are also considered. It also to
be noted under sub-clause 3, that if a trade mark is being registered jointly, it does not give
exclusive right to one of the applicants to enjoy against another.

This Act also provides for the protection against any infringement of the trade mark. For the
purpose of understanding the conditions of infringement, under Section 29(4)[20], it can be
categorized into 3 groups, that,

(a) the trademark is identical or similar to the registered trade mark.

(b) the use is made in relation to goods and services which are not registered under similar
registration.

(c) the registered trademark is widely known throughout the country and using it by others is
detrimental to its repute.

So, both, the mark and the goods and services rendered can be identical, or the former, identical
and the latter one, similar, the latter one identical and the former one similar. This, according to
sub-clause 2 will be regarded as infringement.

In case of Mankind Pharma Limited v. Chandra Mani Tiwari & Anr.[21] , it was held by the
Court that the proprietor can enjoy absolute monopoly over the registered goods and services
only and cannot exercise this ownership over all kind of goods under the same class.

The registration, itself provides prima facie evidence of the validity of the trade mark under
Section 31[22]. In case, the registered trade mark has acquired a distinctive character regarding
certain goods and services before the commencement of any legal proceeding which challenges
the validity, the trade mark cannot be held invalid.

In case of Havells India Ltd. & Anr. v. Amritanshu Khaitan & Ors[23]., the defendant, Everyday
India Ltd. compared their LED with the defendant’s LED with a statement “check lumens and
price before you buy”. The Plaintiff claimed that it was intended to disparaging their business by
this misleading advertisement. The Court dismissed the case on the ground that mere trade
puffery, even though enraging the other rivals does not make it infringement of trade mark.

It is interesting to note that this Act also provides Rights for the successor of the similar trade
mark which is used in relation to the same goods, if (a) the former proprietor used it prior to the
concerned proprietor in trading the similar goods and services. (b) earlier used prior to the
registration of the trade mark by the concerned proprietor.

By the virtue of Section 35[24], the registered trademark having name, address of business or, of
the name, or of the name of the place of the business or any predecessors or any other bonafied
person, in relation to any good or services, is exclusively enjoyed by the registered proprietor
and cannot be interfered by any other registered trade mark owner.

Further for one’s business to flourish on international platform, it is required to register the trade
mark under one or more international protocols or treaties. There are multiple resources for the
trade mark to be registered on International horizons and secure it. The most significant ones are
as follows:

1. Paris Convention on trade mark: like the pioneer of Human Right convention, Paris held
the oldest protocol of all conventions for protection of intellectual property with more than 170
membership and are located in almost all countries.[25]

2. Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS): With the
initiative of World Trade Organization (WTO), in 1995 introduced TRIPS agreement with the
intention of smoothing the process of registration of trade mark out.[26]

3. Madrid system: This protocol was an evolved form of the Madrid Agreement, 1891 and was
enforced in 1995. It provides cost-effective and efficient way of registering the trade mark and
facilitates the managing of the same and is managed by WIPO[27].

4. European Community Trade mark (EUTM): it is a child of European Union (EU). With
the EU countries, and this institution the proprietor can easily register his trade mark for his
business and secure his mark on international platform as well[28].

In the landmark judgment regarding the Trans-border Reputation, the Supreme Court recognized
and interpreted the trade mark regulations and concepts. In N.R. Dongre v. Whirlpool
Corporation[29], it was held that the trademark “Whirlpool” has obtained reputation through out
the country and the whirlpool corporation has also acquired the goodwill of business and hence,
the trade mark of “Whirlpool” has acquired Trans-border reputation.

Conclusion: Even though with the growing facilitated circumstances, the number of new
businesses is increasing in the market, yet the owners of a trade are still unaware of the
legislations and facilities to protect their trade and helping the business tycoons to steal their
ideas of trade.

With the afore-mentioned procedures and institutions to register and secure the trades, the author
wishes to make the general members of our trading fraternity to become aware and take steps to
secure their creation.
Assignment and licensing of Trade Marks

A trademark is an intellectual property right which is a combination of signs or any individual

that are used to distinguish products, goods, or services from the others which are offered by
other people. Now, these signs include names, letters, numerals, figurative symbols, and
combinations if different colours. In trademarks too, just like any physical property such as land,
any trademark owner or brand can transfer the rights of their trademark by assignment or
licensing it under The Trademarks Act of 1999. Prior to this act, the act of 1958 only covered the
horizon of ‘registered and permitted use’. Commercialisation of trademarks in IPR have gained a
high momentum because of a huge area of exploitation of financial factors. In due course of
changes over the years in the country’s financial & commercial factors, the government has
adjusted the trademark law radically with respect to the supply of trades and administration.

This slow adjustment is to move toward licensing and the government slowly took up the pint of
commercial development which has influenced the law. The law on this hand has refused to
accept that the licensed trade has become a commercial hub but on the other hand, have made
sure that conditions like quality control and association course of exchange is present. To put this
together the area 53 of the trademark acts of 1999 made a driving force for enlistment by
refusing the unregistered licenses of the privileges made under section 52. Developing trust in
the merchandise and ensuring the satisfaction of potential sutures is a must in order to prevent
crimes over attempts to hinder individual goals. That is why keeping a point of recheck is
important for the maker to reflect the individual’s personal stake. Trademark assignment and
licensing are the two most efficient modes for commercialisation which are widely used by
intellectual property proprietors. These proprieties can utilise the transfer of rights just like
consideration of exchange in the forms of royalties etc.

In medieval times Merchants and Productive marks were the two essential forms of imprints
which were used for mark demonstration of different production needs and their origin. Such
marks were essential for specific techniques on which many individuals worked together or on
where societies began recognising such marks for their merchandise. This helped the producers
stand out from the rest of the manufacturers and helped them to hold a kind of identity which
were easily recognised by their loyal clients. [1]

Trademark authorising or permitting is a condition wherein a trademark proprietor approves an

outsider or any third party to utilise the check-in course of exchange of the control and authority
over the offer of the items or when an administration authorises someone. There is an
establishment of trademark permitting which is done under the licensee which allows utilise the
trademark authorisation. So in trademark permitting the trademark proprietor basically allow
others to utilise the checks without exchanging the possession of the trademark.[2]

Now one can ask us why a permit for the trademark is even a good idea? The answer would be
that there is no harm in doing so rather it is advantageous. It will help you to expand your
business in local areas and eventually it will be gainful for both the licensee and the licensor.
From the licensee’s predictive this approach will allow you to partner with a perceived trademark
which will give you a high ground over your other rivals and from the licensor’s perspective it
will become an irresistible business methodology to enhance and make trademark deceivability
and extend the topographical reach of the trademark. As trademark has certain privileges to
permit, offer, and exchange and therefore certain strategies can be made for it. On the off chance
that there should be an event of an assignment of a brand name, there is a change in the duty
regarding enrolled mark and in case of allowing; the advantage in the trade stamp continues
resting with the primary owner yet far scarcely any kept rights to use the brand/check are given
to the pariah.[3]

Licensing and trademark have various business objectives: Firstly negotiations can be done by
entities for lump-sum prices for transferring of assignment of their trademarks, this is considered
as a new area in the current society. It also allows entities from different parts of the world to
render different services and produced goods under different owner’s trademarks by establishing
a kind of relationship through an agreement of licensing of the trademark. Having a trademark
renders different benefits to the partners and increases the capacity of services, marketing, and
producing but this new form of agreements of licensing and assignment opens up new roads for
delivery, expanding new companies, and partitioning of market. Many companies enter into
different partnerships with owners of trademarks of different geographical areas and make it
available to the world. Every entity have their own selections which are often challenging but
also appears to be of appealing nature. On the off chance that if there debates, uprising, obtaining
or bankruptcy of the Company, the proprietors can take the choice to unite a couple or can be
surrendered by the proprietors of the Company.

Secondly, owners can always retain their concerned ownership of the trademark and can also put
it on lease it to someone. This will allow the owner to retain their businesses under the name of
that particular trademark without actually abandoning the public domain of business. The
proprietor can at present procure incomes having a similar brand name permit. In the current
world, Partnership permitting is into the great beyond of just loaning a logo into building up a
genuine banding together of a business relationship which gives a ton of drive and
accomplishment to the critical business of the Company.

For instance when a Paper mash maker and a Temporary stopping Contractor collaborated to
grow bogus roof tiles which was not a straightforward Licensing but rather was a setup business
tie-up of building up an item which was genuinely an extraordinary accomplishment for both the
gatherings. Thirdly, when a trademark is infringed by any third party with an intention to reduce
the company’s brand name, it’s reputation and it’s quality, the infringers can exploit such
potential business owners or local vendors, and convince the later to become a part of no-profit
deals or tie up into business which only destroys their brand reputation. For a large portion of the
Companies, enrolling a brand name is simply an acknowledgment than a wellspring of income.
The organization shows an unmistakable fascination for expanding the Customer
acknowledgment of the item that the income or deals as a piece of advancement or notice. While
another Entity accomplices the brand, the limited time or the commercial expenses are shared.[4]

Apart from the upper given objectives considerations for other commercial and financial
factors of trademarks should also be given. The royalties can be paid up in the form of lump-
sum amounts at the tie when the rights of the licensee are granted upon other entity. This
payment can be done all at once or can be paid periodically. There is a way in which royalties are
need to be dealt with, these are: we need are sure that when certain royalties are to be paid then
we should determine that what kind of penalties are there for failing to pay it on time. Any issues
of holding global duties where there were a prerequisite to pay out the monies in the Country of
setup business. Any accumulated interest on the extraordinary installments or because of sort of
installment.

Royalty calculation would depend on many factors such as relative bargaining skill of both
licensee and licensor, its potential accumulated profit, and what will be the marketplace of that
trademark which deals in different kinds of product and services. The base calculation is based
on gross sale or the net sale, all other associated costs of the overheads, profit margins, the
calculation depends on a pre-determined rate at which the owner feels appropriate which is
within a range of the owner’s profit margins. This is necessary because there is competition on
the market which is quite challenging. This enchases the business. This all involves the process
of the trademark which is required for its enrolment in India.

Assignment of trademarks: A assignment of brand name is a complete exchange of the

privileges and titles in an imprint. The assignment of assignment happens when the responsibility
for brand name is moved starting with one substance then onto the next, which may either be
alongside or without the generosity of the reserved business and which must be recorded in the
register of brand names. The owner transfers every one of his privileges held in the brand name
to the next element for assignments of certain products and enterprises. Here, the responsibility is
restricted to just certain items or administrations. Assignment should be done with goodwill but
assignments can be done without goodwill also. Here, the outright responsibility for rights and
estimation of a trademark related with the item is moved to start with one substance then onto the
next. Utilising the case cycle of Trademarks Act 1999, there is a limitation of these cycle
according to the enrolled cycle and their disarray in the midst of different other clear open clients
and other clear expectations. These restrictions would be providing a record of these assignments
and their outcomes would have rights in a more frantic work have compelling merchandise and
enterprises. It further has an unmistakable requirement for relationship according to deeds.
Taking the methodology of these Assignments and their outcomes would have a diverse
successful cycle in a bigger Spectrum.[5]

In the case of YAHOO!, Inc. V. Akash Arora & anr.[6] respondent made an equivalent space
as of Yahoo!, however, was not related with it in any case. The court held that web clients could
be befuddled and misdirected into accepting both the spaces as the same. The respondent took a
safeguard that it had put a disclaimer on its site. However, it was not conceded by the court and
consequently, it was held that a simple disclaimer can’t be adequate as the idea of the web is
such. Besides, the name gains exceptional and particular belonging and is predominantly
connected with the offended party.

And similarly in the case of the Cola Company V. Bisleri Int. Pvt. Ltd.[7] bisleri concurred,
sold and allotted the brand name Maaza including plan rights, realise how rights, altruism, and so
on as for mango organic product drink Maaza to Coca Cola. After a timeframe, the litigant
organisation recorded enrolment for the characteristic of Maaza in Turkey and began sending out
such beverages. Coca Cola requested perpetual directive and harms for encroachment of brand
name. Hence, the court allowed a break directive against litigant for utilising the brand name
Maaza in India just as different countries.
Licensing of Trademarks: Trademark licensing allows any licensee to use the trademark though
the trademark itself is not assigned to other entities that is on chance that the ownership has been
transferred. One of the uses of the trademark are to supervise the permission of licensee.
Henceforth such licensing of trademark have profuse benefits and advantages for both entities.
Hence on this hand, the licensor may enjoy their rights to their trademarks by generating
royalties but on the other hand the licensee enjoys a chance to broaden his market /brand chain
by using their brand names for building reputation and brand quality and value.[8] The process for
registration as a registered user is enumerated in Section 49 of the Trademark Act[9]. The
basics for authorising of brand name or enrolment as enlisted client seem to be: The enlisted
owner and the enrolled client will together apply recorded as a hard copy for example Brand
name License Agreement, to the Registrar of Trademark in the accompanying way:- The
arrangement will be recorded as a hard copy as for allowed utilisation of the brand name An
affirmation by the enlisted owner of the brand name verifying the points of interest of the
understanding, similar to degree of level of control by the owner over allowed utilisation of the
imprint, expressing the products and ventures in regard of which enrolment is proposed,
expressing condition or limitation on utilisation of the imprint and the period for which the brand
name has been authorised. In the case of M/S Hilton Roulunds Ltd. vs Commissioner Of
Income Tax, Delhi High Court[10] the court determined that the transfer of a Trade Mark can
either be by means of a license or an assignment. And It can be of two kinds:

a) A simple license agreement in the form of permissive use;

b) the license agreement where it is done by a Registered User, is supposed to be registered with
Registrar of Trade Marks and it give rise to certain rights as per the provision.

Agreement for different transmissions: Brand name assignments are for the most part executed
via brand name assignment arrangements under which the transmission of move happens starting
with one element and then onto the next one. While drafting the agreements of licensing and
assignments of trademarks in India few points should be taken into considerations mandatorily,
these are: That the privileges of the brand name brand don’t will in general reason hurt because
of commitments recommended in such agreement. The arrangement as to the assignment is with
or without the altruism of the business should be appropriately arranged and unequivocally
referenced in the agreement. The understanding should be drafted as per the motivation behind
the exchange in question. The rights and obligations of the licensee should be unmistakably pre-
decided and defined. The permit arrangement should be enrolled with the brand name Registrar,
despite the fact that it isn’t mandatory yet from a legitimate point of view, it is generally
prudent.[11]

Difference between Licensing and Assignment of Trademark : Assignments can be of

different sorts. For example, an Assignment can be a product but they have complete and
absolute ownership in the assignee. Assignment of an enrolled exchange imprint can be with or
without the generosity of the business concerned. Such an assignment can be in regard to the
relative multitude of products or administrations or part of the merchandise or administrations
for which the imprint is enrolled. Be that as it may, an unregistered brand name is assignable
with the generosity of a business and if the equivalent is appointed without the altruism of the
business, the idea of the exchange would need to be resolved on current realities of a specific
case. The central test to decide with respect to whether a specific imprint has been authorised or
appointed is to check whether the licensor/assignor has held any rights in the imprint. In the
event that rights are held with the proprietor, ordinarily, it is a permit and on the off chance that
no rights are held by the proprietor, at that point it would normally be an assignment. A permit
is, thusly, only a tolerant utilisation of the imprint, which consent, is revocable. A ‘right to use’ is
generally a permit and not an assignment, besides in specific conditions.[12]

In a Delhi High Court case i.e, Su-Kam Power Systems Ltd. vs Mr. Kunwer Sachdev &
Anr[13], the court put worth questions that will help in determining whether a system of
agreement is license or an assignment.

• “Whether the user acknowledges the licensor’s right and title over the mark?
• Whether it is a mere right to use the mark or it was a transfer/assignment of a permanent
nature?
• Whether the manner of use is specified and restricted and the effect thereof on the rights
of the user?
• Whether the payment made by the User is one-time, fixed running royalty or a percentage
of sales, with or without investment made by the Licensor on marketing and advertising?
• Whether the licensor has right of supervision and control over the use of the mark?
• Whether sole and exclusive right was conferred on the user and the effect thereof?
• Whether the user can further transfer his rights to third party, with and without consent
of the licensor and the effect thereof?
• Whether the licensor had the right to terminate the license and if so, under what
circumstances?
• Whether upon termination by the licensor, the user has to stop use of the mark?
• Whether or not the right to sue is given and conferred on the user?
• Whether there is a transfer of goodwill of the business and/or goodwill in the mark?
• Whether there are multiple users of the same mark?”

Now again in the case of Himalaya Drug Co. Pvt. Ltd., Bangalore v. Arya Aushadhi
Pharmaceutical Works, Indore[14] the court held that only a registered proprietor is competent
to start proceedings for prevention of its infringement. The court said that if any company or
corporation fails to provide evidence that it is a genuine registered proprietor then the suit will be
dismissed.[15]

Conclusion: Using the process of trademarks assignment and licensing will have its
repercussions. Comprehending the cycle of assignment and permitting of brand names in India is
a fundamental issue. The way toward showcasing and vital administration would clearly open
plenty of widening skylines in this space, for the licensor and licensee in like manner. Everything
relies on the improvement of a brand, and the utilisation of the brand, which aggregately
structures a factor to help to showcase in different areas. Possessing an understanding which set a
model for making IPR and do permit licensed innovation move of these business returns. It is
additionally guaranteed that different deliverable financial increase will have usage according to
the Agreements and have buy esteem utilising the advantage of right made up and furthermore
give legitimate and fair rights to law and other significant issues. Further quickening of these
intellectual property rights would do consider the intellectual property rights all the more
thoroughly and have organisations own important necessities all the more cautiously justifiable
and have intellectual property rights made out of degree and address the requirements of the
asset. It supplementally characterises and furthermore gives clear commitments to not ready to
uncover and make provision to address the issue with the locale of Alternative Agreement
statement for these issues lawful agreement for their consistence exist laws.

It however is worth taking note that the capacity of a Company to Sell or purchase is a lot needed
to support on the lookout. Despite the fact that the Trademark doesn’t take a lot of room, a lot of
intellectual properties can really be a weight to the Company because of the assets needed to
keep up the enrolling expenses, for its appropriate safeguard if there is any outsider case or for
assembling and deal for the last creation. , or making and promoting an eventual outcome. For a
Company to sell an unused intellectual properties, this can usher the Company’s monetary
position and could create incomes and lessening the general Costs. Selling unused or surplus
protected innovation can have a quick constructive outcome on an organisation’s funds, creating
income and diminishing expenses. At the point when the Company intends to upgrade its
business, Company glances forward in buying a brand name to help their business intention,
making a character for themselves and guarantee that this is appropriately showcased.

Infringement and Passing Off of Trademarks under Trademarks Act: Meaning

and Difference

Introduction

A trademark in relation to goods conveys to the general public and specifically to the consumers
about the origin and quality of those goods, thereby acquiring reputation in the course of
business and time. Therefore the concept of a trademark is the foundation of one’s business to
distinguish from others. A good trademark is often the best salesman of the goods and is a visual
symbol of goodwill and stamp of quality.

Every businessman who has spent considerable amount of money making his mark popular will
try to secure it from usage by unscrupulous competitors. Protection of trademark is important not
only from the business point of view but also for the protection of consumer from fraud and
imposition.

The Trademark Act of 1999, both in letter and spirit, lays down that, while it encourages fair
trade in every way and aims to foster and not to hamper competition, it also provides that no one,
especially a trader, is justified in damaging or jeopardizing another’s business by fraud, deceit,
trickery or unfair methods of any sort. This necessary precludes the trading by one dealer upon
the good name and reputation built up by another.

The first Trademark legislation was enacted in India in 1940, but before that, protection to
trademarks in the country was governed by the principles of common law based on English
cases. The law relating to protection of this form of industrial property is intricate and complex.
The reputation of a business symbolized by a mark, under common law, can be protected only by
an action for Passing off. Registration of a trademark under the Trade Marks Act of 1999 gives
statutory rights and slight infringement of it can invite an action for Infringement. However, even
the unregistered trademarks are also protected as the Act itself provides that an action of passing
off remedy is available for unregistered trademark.

Passing Off of Trademarks:

Passing off action is based on common law principle. The damages claimed for in an action for
passing off is “un-liquidated damages”. The action against passing off is based on the principle
that “a man may not sell his own goods under the pretence that they are the goods of another
man.” Similar view has been held in ICC Development (International) Ltd. vs. Arvee Enterprises
that “the passing off action depends upon the simple principle that nobody has any right to
represent his good as the goods of somebody else”. In a passing off action, the priority in
adoption and use of trade mark is superior. Passing off is not defined in the Trademark Act,
1999. It is referred to in Section 27 (2), 134 (1)(c) and 135 of the Act.

Section 27 (2) states that the rights of action against any person for passing off as the goods of
another person or the remedies in respect thereof are unaffected by the provision of the Act.
Section 134 (1) (c) refers to jurisdiction of courts to try suits for passing off arising out of the use
of any trademark. Section one 135 specifies the remedies available in respect of passing off
arising from the use of a trademark.

Passing off cases are often cases of “deliberate and intentional misrepresentation, but it is well
settled that fraud is not a necessary element of the right of action and the absence of the intention
to deceive is not a defence in an action for passing off though proof of fraudulent intention may
materially assist a plaintiff in establishing probability of deception.”

The concept of passing off which is a form of tort has undergone changes in the course of time.
At first it was restricted to the representation of one’s goods as those of another. Later, it was
extended to business and services. Subsequently, it was further extended to professions and non-
trading activities. Now a days, it is applied to many forms of unfair trading and unfair
competition where the activities of one person cause damage or injury to the goodwill associated
with the activities of another person or group of persons.

The law of passing off applies whenever there is the prospect of confusion between marks and
getup or where there is the prospect of confusion of identity through the unauthorised use of
similar marks or get-up. It is because the main consideration of passing off is whether deception
or confusion is likely to arise, passing off can be used to protect any kind of distinctive name,
mark, logo or get-up used to identify a company or business as well as products or services.

Issue in a Passing off Action

The issue in a passing off action may be stated as follows:

“would the users of the defendants, either the actual user or the proposed user conceded for the
purposes of the action, be likely to lead persons, either members of trade or of the public, to
suppose that the defendant’s goods so sold were the product of the plaintiff’s, or that the business
concerned in its production was the plaintiff’s or was associated with the plaintiff’s business.”
Factors to be considered in case of an action for passing off:-

The Hon’ble Supreme Court in Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd.19, held
that the following factors to be considered in case of an action for passing off action of an
unregistered trademark for deciding the question of deceptive similarity:-

1. The nature of the marks, i.e, whether the marks are word marks or label marks or composite
marks, i.e, both words or label works.

2. The degree of resemblance between the marks, phonetically similar and hence similar in idea.

3. The nature of goods in respect of which they are used as trademarks.

4. The similarity in nature, character and performance of goods of the rival traders.

5. The class of purchasers who are likely to buy the goods bearing the marks they are likely to
exercise in purchasing and/or using the goods.

6. The mode of purchasing the goods or placing orders for the goods.

7. Any other surrounding circumstances which may be relevant in the extent of dissimilarity
between the competing marks.”

Defences to a passing off action:-

In a suit for passing off, apart from denying the plaintiff’s allegations generally, the defendant
may be able to plead the following in defence in his case:-

1. The defendant may prove that the plaintiff’s business is either fraudulent or forbidden by law.
If any particular business could be shown to be a fraudulent business or one forbidden by law or
one which the public policy of law was to prevent, then in those cases the proprietor cannot
claim protection of the court. For example, if a trader who sells through street markets
counterfeit versions of sound recordings and DVD’s bearing a famous trademark might not be
allowed to rely on his sales to maintain a passing off action against another counterfeiter who has
come into the market after him.

2. A false representation contained in the mark itself did furnish a defence at law and at equity.
Where a trademark is used exclusively in connection with a trade which was itself fraudulent, the
fraud in the trade which was itself carried on by the trademark is a defence.

3. The mark complained of is not distinctive of the plaintiff’s business and there is no likelihood
of passing off by reason of defendant’s use of the mark.

4. The plaintiff is guilty of acquiescence, latches, etc. or the defendant has prior used the mark.
5. The defendants mark represent his own name which he has the right to use. “A man is entitled
to carry on his business in his own name so long as he does not do anything more than that to
cause confusion with the business of another, and so long he does it honestly”.

6. The field of activities of the parties are completely different.

7. The defendant claims right of concurrent use of his mark of his mark. Honest and concurrent
user of a trademark when established will constitute a defence.

8. The defendant’s use of the mark is the bona fide description of the character or quality of
goods or services. However, the defence of the name being ‘surname’ or ‘personal name’,
though available to individuals, is not applicable to a corporate body.

9. Innocent misrepresentation by the defendant also constitutes a valid defence against passing
off action. Under Section 135 (3).

Infringement of a TradeMark

Section 27(1) of the Trademarks Act, 1999 provides that a person shall be entitled to initiate
legal proceeding to prevent or recover damages for the infringement of a registered trademark.
Infringement occurs when someone else uses a trademark that is same as or deceptively similar
to registered trademark for the identical or similar goods or services as to cause confusion in the
mind of the public. This right of bringing an infringement action against the defendant has been
conferred by Section 28 of the Trademarks Act, 1999. Section 28 of the Act provides that the
registration of a trademark gives to the proprietor of a registered trademark an exclusive right to
use the trademark in relation to the goods and services in respect of which the trademark is
registered and to obtain relief in respect of infringement of the trademark.

Trademark infringement claims generally involve the issues of likelihood of confusion, deceptive
marks, identical marks and dilution of marks. Likelihood of confusion occurs in situations where
consumers are likely to be confused or mislead about marks being used by two parties. The
plaintiff must show that because of the similar marks, many consumers are likely to be confused
or mislead about the source of the products that bear these marks. Dilution is a trade mark law
concept forbidding the use of a famous trade mark in a way that would lessen its uniqueness. In
most cases, trade mark dilution involves an unauthorized use of another’s trade mark on products
that do not compete with, and have little connection with, those of the trade mark owner. For
example, a famous trade mark used by one company to refer to hair care products, might be
diluted if another company began using a similar mark to refer to breakfast cereals or spark
plugs.

What constitutes Infringement?

Section 29 of the Trademarks Act, 1999 deals with infringement. In this context, the ingredients
of Section 29 (1) are as follows:-

1. The plaintiff’s mark is registered.

2. The defendant’s mark is identical with, or deceptively similar to plaintiff’s registered mark;

3. The defendant has taken any essential feature of the mark or has taken the whole of the mark
and then made a few additions and alterations.

4. The defendant’s use of the mark is in course of the trade in respect of goods/services covered
by the registered trademark.

5. The use of the infringing mark must be printed or usual representation of the marking
advertisements, invoices or bills. Any oral use of the trademark is not infringement.

6. The use by the defendant is in such manner as to render the use of the mark likely to be taken
as being used as a trademark.

7. The defendant’s use of the mark is not by way of permitted user and accordingly unauthorised
infringing use.

While the above is the general proposition of law as per Section 29 (1), the various
circumstances in which the trademark is infringed are enumerated in sub-sections 29(2) to (9) of
Section 29.

Difference between Passing-Off and Infringement

Conceptual Difference:-

1. Passing off action is based on common law principle that nobody has any right to represent his
goods as somebody else. Such action is recognised both in respect of unregistered as well as
registered trademark. An action for infringement on the other hand is based on the right acquired
by registration and is possible only in respect of registered trademarks.

2. An action for infringement is a statutory right. It is dependent upon the validity of the
registration and subject to other restriction laid down in the Act.49 On the other hand, in a
passing off action registration of trademark is not relevant. It is based on property in goodwill
acquired by use of the mark.

3. The proprietor of an unregistered trademark whose mark is unauthorisedly used by another

cannot sue for infringement of a trademark. His only remedy lies in bringing a passing off action.

4. In an infringement action, the plaintiff is not required to prove the reputation of his mark,
which is not the case in case of passing off. In passing off action, the plaintiff has to prove that
his mark has acquired reputation in relation to any goods delt with by him.

5. An infringement action can result in the restraining of defendant from using the registered
trademark whereas in a passing off action the defendant is restrained from selling the article
without clearly distinguishing from the goods of the plaintiff.
6. In an action for infringement, the use of trademark of the plaintiff, in relation to goods is a sine
qua non for the action. In contradiction, in a passing off action, it is deceit as practiced on the
public and not the use of the trademark that is to be shown.

Procedural Difference:-

1. In an infringement action, if there was colourable imitation, the fact that the get up was
different was not relevant in an infringement action though it might have had relevance in a
passing off action.

2. In passing off action identity or similarity of marks is not sufficient, there must also be
likelihood of confusion. But in case of infringement if the marks are identical or similar no
further proof is required.

3. An infringement action is based on the violation of the proprietary right and deception can be
one of the ways whereas in a passing off action deception or likelihood of deception is the only
thing to be established.

4. An infringement action does not require the use of the mark. The proprietor could have never
used the mark in the course of the business and still bring an action for infringement whereas in a
passing off action the plaintiff must establish that the mark by usage has become distinctive of
his goods i.e. the goods are identified by the mark.

5. In an action for infringement, the plaintiff must make out that the use of the defendant’s mark
is so close either visually, phonetically or otherwise and the court reaches the conclusion that
there is an imitation, no further evidence is required to establish that the plaintiff’s rights are
violated. Whereas, in case of passing off thedefendant may escape liability if he can show that
the added matter is sufficient to distinguish his goods from the goods of the plaintiff.

6. In case of a passing off action, the defendant’s goods need not be same as that of the plaintiff,
they may be allied or even different. In case of an action for infringement, the defendant’s use of
the offending mark may be in respect of the goods for which the mark is registered or similar
goods.

Combined action for infringement and passing off

Where a mark is registered, the plaintiff may combine his action for infringement along with an
action for passing off, where the plaintiff has used his mark and can establish goodwill and
reputation in connection with his business. This provides for a better protection of trademark.

Conclusion:-

Thus, from the above discussion it can be said that protection of trademark is important not only
from the business point of view but also for the protection of consumer from fraud and
imposition. However, it is beneficial if combined action for infringement and passing off is
brought in one suit as incorporating a plea of infringement, if the mark gets registered can always
amend the plaint. But in an action for infringement alone the plaintiff may not be allowed to
include a fresh cause of passing off in order to save the action. Since the scope of passing off
action is wider than an infringement action, if an action fails, there is a chance of other
succeeding. As stated in the preamble of the Trademarks Act, 1999, the law provides for a better
protection of trademarks, the fact that the trademark law provides protection to trademarks has
come out to be a reality. The present Act expressly recognises the common law remedy and thus
saves both the registered and unregistered trademarks from being misused.

Other forms of IP

Designs: Meaning, Process of Registration and Infringements under Designs Act,

2000

Introduction

Commercial success of an industry and its products highly depends on how it grabs the attention
of the customer. The Designs Act 2000, provides for the registration, application and protection
of such designs in the form of intellectual property. Any intellectual property to be registered
follows a “first to file first to get” system where the inventor should register through an
application as earlier as he has invented it. In India the history of designs backs a century when
the Patent and Designs Act, 1872 was passed by the British government to the last repealed act
as Designs Act of 2000, when India became a member of WTO in the year 1995. This law was
enacted in compliance with the Trade Related Aspects of Intellectual Property Rights having its
enforcement on 11th may 2001.

Locarno classification

The Locarno classification is administered by the World Intellectual Property Organization

(WIPO) through a multilateral treaty. This classification consists of a list of 32 classes and 219
subclasses with the explanatory notes into which any design can be incorporated[1]. This list
includes around 6797 indications of different types of products. Before India has adopted the
Locarno classification it classified products for industrial designs on the basis of the material
which has been used to make the product. Only after the enactment of the new law the design
was classified on the basis of the subject matter the design.

Objectives of the Designs Act of 2000-

The predominant objective of Designs Act is to consolidate the earlier laws which were not in
compliance with the International design jurisprudence and other main objective is for the
protection of novel and innovative original designs from getting copied resulting in the loss for
the proprietor and also for ensuring that the creator or the originator of the design is not deprived
of his rights and reward for creating it. This industrial design also helps the property holder to
increase the attention of the customers thereby increasing the commercial value of the product
for expansion of market. The important objective of designs act is also to prevent the
exploitation of designs by big hands who adopt anti-competitive ways to compete its rival.[2]
Design- What is it all about?

Design is defined as “only the features of shape, configuration, pattern, ornament or composition
of lines or colours applied to any article whether in two dimensional or three dimensional or in
both forms, by any industrial process or means, whether manual, mechanical or chemical,
separate or combined, which in the finished article appeal to and are judged solely by the eye;
but does not include any mode or principle of construction or anything which is in substance a
mere mechanical device”[3]

What will it not include?

Design does not include any mode or principle of construction or anything which is in substance
a mere mechanical device as they are protected by Patents depending upon its Novelty,
Obviousness and Industrial applicability.

Designs also does not include the Trademark as defined in Clause V of Subsection (1) under Sec
2 of the Trademarks Merchandise marks Act 1958 or Property Mark as defined in Section 479 of
Indian penal Code 1860 or any artistic work as defined in Clause C of Section 2 of the Copyright
Act 1957[4].

The word article is defined under section 2(a), reads as article means “any article of manufacture
and any substance artificial or partly artificial and partly natural and includes any part of in
article capable of being made and sold separately”.

Important features of Designs Act 2000

• Absolute novelty is the absence of prior publication of the same design in any other article. (Sec
4(a),(b) &(c)).
• The proprietor can also apply for the copyright in the design for the period of 10 years from the
date of registration and for avoiding confusion as many products can be registered for copyright
and also for design but remedies cannot be sought in both the as individual. (Sec 11) reads as
• “When a design is registered, the registered proprietor of the design shall, subject to the
provisions of this Act, have copyright in the design during ten years from the date of registration.
• If, before the expiration of the said ten years, application for the extension of the period of
copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of
the prescribed fee, extend the period of copyright for a second period of five years from the
expiration of the original period of ten years”.
• The act provides for the jurisdiction of High courts to entertain the transferred cases from
district court provided the person is challenging the validity of any registration. (Sec 36)
• This act prohibits and punishes infringement of registered layout design with imprisonment of
up to three years or fine of Rupees 50,000 approximately to maximum of Rupees 10 lacs
approximately. Sec 22(2)
• This act provides for a system of anyone can have a certified copy of the registered design to
inspect it for anticipating of Novelty after its publication whenever a license is brought within
the domain of public records. (Sec 21)
 • This act also provides for the delegation of powers of Comptroller and the duty of the examiner.
(Ch.7)
• It also provides for restriction to avoid Anti-competitive practices in the market.

Prerequisites for the registration of a design-

A design has to satisfy certain prerequisites for getting registered under the Designs Act 2000 as
per Section 4 of the Designs Act 2000 the design if lacked novelty cannot be registered. At the
same time as per Section 16 of the Designs Act 2000, a mere disclosure of design shall not be
deemed to be the publication of Design if the purpose of the design is disclosed in good faith to a
person who has breached the good faith trusted worthy on him and as per Section 21 of the
Indian Designs Act, 2000 the disclosure of Designs for the purpose of exhibition cannot
invalidate or prevent it from registration[5].

The Design must be original and for the purpose of originality it is defined under Section
2(g) which states original means “originating from the author of such design and includes the
cases which the old in themselves yet are new in their application”. As per the case of “Hello
Mineral Water Private Limited v. ThermoKing California Pure[6]” it was held that mere shape
and form is not sufficient to prove novelty. The Court observed that Novelty also involved the
presence of some new element or Innovative position of an old element if it is in combination
with which is different from anything found in any prior structure.

Design must have not published anywhere and there should not be any tangible copy available
already in the market if the registration of design is short in digital format. At the same time
secret and private use of any design will not amount to the publication as it is only for
experimental purposes.

The Court in the case of “Kemp and Company v. Prima plastics Ltd.[7],” observed that the
discussion of design by the proprietor to any third person cannot be cleaned as publication as the
disclosure was in good faith and in conformation to Section 16 of the Designs Act 2000.

Items which cannot be registered as a design under the Designs Act 2000.

Signs, Emblem of flags of any country, size of any article if it is changed, structures in
buildings, trademarks, any principle of inventions, workshop improvements of components of
already existing assembly, the parts of any article which are not manufactured and sold
separately cannot be registered as a design.

Infringement of Industrial Design–

In the Case of “Disney Enterprises Inc. v. Prime Houseware Ltd[8].,” Mumbai based company
known as time houseware used to manufacture characters like Donald Duck and Mickey Mouse
which resulted in suit being filed by Disney Enterprises for the infringement of International
Registered Designs. This was the case were International Registration of Industrial Design
become a matter of concern in the court of law. It was held by the Court that the plaintiff ‘s
Trademark is not protected under Indian law but however the Court passed an order for
delivering all the influencing material to the petitioner company and ruled that it should not be
used further.

Piracy of Registered Designs–

As per Section 22 of the Designs Act 2000, any obvious fraudulent imitation of a registered
design without the proprietors concerned is considered unlawful. This Section also prohibits
such closely resembling design. It provides for a compensation which shall not exceed Rupees
50000 in such case of infringement.

In the case of “Bharat glass tube Limited v. Gopal glass Works Ltd.[9],” Design was registered
by the respondent company in collaboration with German company. The appellant started using
the design for their marketing which resulted in an infringement suit filed by the respondents
who moved to the court. The appellants contended that the respondent’s Design were not Novel
as the German company has already been using it since 1992 and it was already published in
United Kingdom Patent Office and it has lost its originality. Rejecting all such of the arguments
of the appellants the High Court on its appeal restored the Designs to the respondents which was
later upheld by the Supreme Court of India.

Procedure for Registration of a Design-

Chapter 2 provided for the Procedure for the Registration of Design in India for which an
application of registration shall be made in the patent office to the Controller into the prescribed
form along with the prescribed fee. The controller after the receiving of application under this act
can verify if it is novel or original if the design and has not previously published anywhere and
not against public policy or morality can register it. As per Section 5 of the Designs Act 2000 the
application under the action be filed in the patent office and the design should be registered in a
specific class not more than one class. The controller if rejected any design and have not
registered it the person aggrieved may file an appeal before The High Court.

Who are entitled for the registration under Design Act 2000?

As per the Designs Act of 2000, a proprietor whose design has fulfilled all the prerequisites for
the susceptibility of providing registration can be entitled of registration. For the purpose of the
same as per Section 2(j), a proprietor includes the author of the design, or one who has acquired
design for valid consideration, or a person to whom the design is devolved from the title holder.

The interface of design with copyright.

The copyright and design are exclusive for legal purposes in accordance to Section 15(2). As per
the said Section a copyright in any design which is capable of being registered if not registered
shall cease if any other article is registered with design and if more than 50 times the designed
article is been produced by the owner of the copyright. In the case of “Mattel incorporation v.
Jayant Agarwa[10]l” the Mattel lost it copyright in design which could have been registered if it
is not registered and has already produced the article for more than 50 times. In an infringement
suit metal could not restore its copyright for it’s Scrabble board.

Landmark Judgments Relating Designs Act, 2000

“Microfibers Incorporation v. Giri and Co & ANR[11]”

The Delhi High Court suggested a distinction between copyright and design and it observed that
a copyright protection ipso facto will not merit a design and a design registration is concerned
with the class of goods. It also suggested the view of copyright as a ‘work of art’ and design as a
‘work of Commerce’. If the work of art is applied commercially due to its industrial utility it
ceases for the protection of copyright and only entitled to the protection of design.

“Tarun Sethi & Ors. v. Vikas Budhiraja & Ors”[12].

The Delhi High Court held that a minor displacement and changes made through variations and
modifications if substantially didn’t alter a design which was already registered are previously
published shape available in the private Publication is not sufficient to prove Novelty of a design.

The Court also took into consideration the previous judicial pronouncements like Kestos Ltd. v.
Kempat Ld. & Vivian Fitch Kemp[13] and Allen West & Co, Ld. v. British Westinghouse Electric
and Manufacturing Co. Ld[14] for the determination of novelty.

Troikaa Pharmaceuticals Ltd v. Pro Laboratories Ltd.[15],

A tablet in D shaped design was provided to be capable have been registered under the designs
act do the shape Divas not novel its application in the tablet pass the test of ascertaining but it is
identical to any other designs and can be judged by eye through all of its component features.

Reckitt Benckister Case[16]–

In this case it was decided that for the purpose of evaluation under Section 4(b) the Prior
disclosure also includes the prior registration made in foreign countries such as UK, USA and
Australia. This decision was upheld by the division bench. In the twofold conclusion the
division bench observe that if an application is made for registering a design in India within 6
months after the application was made in abroad for the registration of such design. If no such
application is made within 6 month the availability of the design which is registered abroad in
public domain will result in design not novel and to be considered as under public domain of
Section 44(2) read with section 4(b). The prior judgements of Gopal Glass Works[17] and
Dabur[18] was also taken into consideration.

Sree Vishnu Bottles v. The State of Tamilnadu[19].

This case is about the rights of resellers. The petitioners are an enterprise which collect the
bottles of beer and brandy from small shops and transport that to the other states such as
Karnataka and Madhya Pradesh. They were doing this business for 30 years without any
interruption but recently they were stopped by the police and the enforcement agencies as few of
the bottles were registered under the designs act 2000 and the transportation is illegal. The court
held that the relief they sought was awake and such blanket order cannot be passed by the court.

M/S. Whirlpool of India Ltd. v. M/S Videocon Industries Ltd[20].

In this case the Whirlpool would have got two designs registered. Videocon also got a design
registered which covers the same features of shapes and configuration and that was evident at its
first look to be its replication. The Videocon contended that it has already got the design
registered and therefore it is not liable for the infringement or passing off. The Court rejected the
contention of the Videocon and held that there are similarities between the plaintiff and the
defendant and therefore Videocon was held liable for the infringement and for the passing of the
plaintiff design.

Conclusion-

The design increases marketability of a product and recognizes the reward of the author and
economic remunerations for the proprietor. This plays a very crucial role for preventing others
to free ride on once innovation and ideas that has an aesthetic value. Industrial designs also
includes 3D mark and this often happens to overcome sharp competition in the market.

Geographical Indications: Meaning, Difference and Homonymous Geographical

Indications

What is a Geographical Indication?

A geographical indication (GI) is a sign used on products that have a specific geographical origin
and possess qualities or a reputation that are due to that origin. In order to function as a
Geographical Indications, a sign must identify a product as originating in a given place. In
addition, the qualities, characteristics or reputation of the product should be essentially due to the
place of origin. Since the qualities depend on the geographical place of production, there is a
clear link between the product and its original place of production.

Geographical Indications in action

From Switzerland’s Gruyère cheese to Mexico’s Tequila, geographical indications and

appellations of origin are a common feature of everyday life. They not only provide a way for
business to leverage the value of their geographically unique products, but also inform and
attract consumers

Difference between Geographical Indications and Trade Marks

Scotch Whisky, BMW, Darjeeling Tea, and Adidas are a few names known to people all across
the globe. A common man would quite easily associate these names with famous brands.
However, if we take a closer look, we will observe that these names don’t belong to one
category. BMW and Adidas are trademarks, while Scotch Whisky and Darjeeling Tea are
geographical indicators. When it comes to trademarks and geographical indications (GIs), there
has always been confusion in the minds of people. For a common man, both GI and trademark
indicate the identity of the goods. So, where does the difference between the two terms lie? For
having a better understanding of the same, let us first define a trademark and Geographical
Indications.

As per Section 2(1)(e) of the Geographical Indications of Goods (Registration and

Protection) Act, 1999, a geographical indication refers to an indication capable of identifying
goods, including natural goods, agricultural goods, or manufactured goods, as manufactured or
originating in a country’s territory, or a locality or region within that territory, where a specific
quality, reputation, or any other attribute of such good is particularly a characteristic to its
geographical origin. In the case of manufactured goods, one of the activities corresponding to the
processing, production, or preparation of goods, should take place in the territory, region, or
locality.

As per the Indian Trademarks Act 1999, a trademark is defined as a mark, which can be
represented graphically and can distinguish the goods or services of one individual from those of
others.

Without any second thoughts, these definitions can deceive, and at times get mixed up.
Trademarks include the names of places as well for increasing brand awareness, reputation, or its
advertising, which has, in turn, led to a lot of perplexities in the minds of the layman, for instance
– Darjeeling Lounge of the ITC.

Let us now consider a few points that shall help us in differentiating between a trademark and
Geographical Indications.

1. A trademark can be name, sign, or identity of a brand or business, which further differentiates
the goods or services of one business entity from the others. A technology company is still a
technology company; however, based on the manufacturer’s trademark, it can be well-
distinguished. For instance, Microsoft and Apple are the Registered Trademarks of individual
technology companies.
2. A Trademark Registration is usually filed by a single business entity or individual,
whereas Geographical Indication Protection is granted to a group of manufacturers, who
belong to a particular location, where the good was first originated.
3. Only a single person, business entity, or a manufacturer can use a registered trademark, while
all the producers or manufacturers in the same locality or region are permitted to the use the
same Geographical Indications.
4. A trademark can be a word, letter, numeral (or numerals), a combination of numerals and
letters, hologram, sound, smell, an abbreviation, a name, or a device. However, Geographical
Indications can only be names or symbols corresponding to a particular region or place.
5. A trademark is a result of human creativity or intellect, which further determines its uniqueness
or distinctiveness. A trademark can be suggestive, arbitrary, or distinctive. On the other hand,
Geographical Indications identify the goods based on their place of origin. Factors like climate,
topography, human work (of a specific geographical location), amongst many others, determine
the nature of the Geographical Indications.
The prime similarity (and the only one) between a trademark and a Geographical Indications is
that both function as source indicators. The distinction between the two in this context again
corresponds to the fact that a trademark identifies a service or good originating from a specific
producer, while a Geographical Indication identifies the geographical location or region from
where the good originates. As both these forms of Intellectual Property (IP) work as a tool for
identifying a good or service, people often tend to get confused between a trademark and a
Geographical Indications.

Concept of Authorized users

An authorized user is someone who is allowed to use someone else’s credit card. The person
who owns the credit account is called the primary cardholder. The authorized user may be issued
his own credit card with his name on it, but the account belongs to the primary cardholder.

The authorized user can make charges to an account, but cannot make changes — like increasing
the credit limit or adding more authorized users. He isn’t required or expected to make payments
on the credit card, regardless of how much he spends. Payments and changes are the
responsibility of the primary cardholder.

A major incentive to being an authorized user is piggybacking off the primary cardholder’s good
credit habits to increase his credit score. Many card issuers report credit activity to the credit
bureaus for the authorized users, but some may not. The primary cardholder will need to ask her
issuer if this information is reported in order for the authorized user to receive the benefits of
good credit history.

The primary cardholder has to add an authorized user. This can be done by calling the credit card
issuer or logging onto the online account. Many issuers will issue a second card for the
authorized user, but it will generally be mailed to the primary cardholder, who can choose to give
it to the authorized user or not. If the card isn’t distributed, the authorized user can either use the
primary cardholder’s card, or simply reap the credit benefits of the cardholder’s good financial
habits.

There may be a case that an authorized user may want to be removed from a card, or the primary
cardholder wants to remove him. Perhaps your boyfriend is an authorized user on your account
and you break up, or you’re the authorized user on a relative’s account and he passes away.
Here’s how to remove someone/get removed as an authorized user:

Either the primary cardholder or authorized user can call the issuer to remove the authorized user
from the account. The authorized user doesn’t generally have the right to make changes to the
account, but he can remove himself from the equation if necessary.

Homonymous Geographical Indications

The term homonym is defined in Merriam Webster’s Collegiate Dictionary (tenth edition) as
“one of two or more words spelled and pronounced alike but different in meaning.” This
definition describes accurately the problems created by the use of homonymous geographical
indications, namely two or more identical geographical indications used to designate the
geographical origin of products stemming from different countries.

Homonymous geographical indications are those indications that sound, spell or read alike. They
are those geographical indications that are spelled and pronounced alike but which are different
in meaning and which are used to designate the geographical origin of products stemming from
different countries. The most frequent cases of homonymous geographical indications concern
the names of regions which are located in different countries.

The problem or conflict generally arises when homonymous geographical indications are sold in
the same market and is accentuated when such the geographical indications are for similar or
identical products. Honest use of such geographical indications should be possible, because the
indications designate the true geographical origin of the products for which they are indicated.

In principle, these indications should coexist, but such coexistence may be subject to certain
conditions. For example, it may be required that they be used together only with additional
information regarding the origin of the product in order to prevent consumers from being misled.
A Geographical Indication may be refused protection if, due to the existence of another
homonymous indication, its use would be considered potentially misleading to consumers with
regard to the product’s true origin.

LEGAL SCENARIO UNDER THE TRIPS AGGREEMENT

Article 23 of the TRIPS Agreement requires Members to make available additional protection,
when compared to Article 22, for geographical indications for wines and spirits. The main
difference between these two levels of protection is that, under Article 23, an interested party
must have the legal means to prevent the use of a geographical indication for a wine which does
not come from the geographical area indicated irrespective of whether or not such use misleads
the public or constitutes unfair competition. The same goes for spirits. Thus, Article 23 is often
referred to as an “absolute” form of protection since no such tests have to be satisfied in order to
exercise it.

Article 23.3 of the TRIPS Agreement sets out a specific rule for homonymous geographical
indications for wines by establishing that:

“In the case of homonymous geographical indications for wines, protection shall be accorded to
each indication, subject to the provisions of paragraph 4 of Article 22. Each Member shall
determine the practical conditions under which the homonymous indications in question will be
differentiated from each other, taking into account the need to ensure equitable treatment of the
producers concerned and that consumers are not misled.”

Indeed, Article 23.3 of the TRIPS Agreement specifically covers the cases of homonymous
geographical indications for wines, whose use does not falsely represent to the public that the
goods originate in another territory as provided in Article 22.4 of the TRIPS Agreement. In such
cases, both indications must be protected and concerned WTO Members must determine the
conditions necessary to differentiate homonymous indications for wines. In doing so, they must
ensure that consumers are not misled and that the producers concerned are treated equitably.

The practical effect of this provision is that it prompts WTO Members to keep their markets open
in cases of homonymous geographical indications and mandates that adequate solutions are
found for the coexistence of products bearing such homonymous geographical indications.

Yet, this trade fostering solution is currently limited to wines, where it is clear that the same
solution could benefit other products including spirits and certainly to all other products
benefiting from geographical indication protection.

LEGAL SCENARIO IN INDIA

The Geographical Indication Act, which came into force, along with the Geographical Indication
Rules, with effect from September 15, 2003, has been instrumental in the extension of
Geographical Indication status to many goods so far.

In India, there are two conditions that should be taken into consideration before according
protection to homonymousgeographical indications. The authority granting such protection to
one geographical indication as against the other, where both of them are called as homonymous
geographical indications as regard to each other, should grant protection only when it is satisfied
of the following conditions:

1. The probability of being practically able to differentiate between the products with respect to
such geographical indications in terms of the nature, quality, appearance, utility and overall look
and feel of the product so that every possibility of consumer confusion is avoided.
2. Where such authority can ensure equitable treatment to producers/manufacturers of the two
concerned products and protect the rights of such producers and manufacturers in the same
manner through existing protection mechanism.1

CONCLUSION

Conflicts regarding homonymous geographical indications typically arise where products on

which homonymous geographical indications are used, are sold in the same market. The problem
is accentuated where the homonymous geographical indications in question are used on identical
products. The geographical indications designate the true geographical origin of the products on
which they are used. However, concurrent use of homonymous geographical indications in the
same territory may be problematic where the products on which a geographical indication is used
have specific qualities and characteristics which are absent from the products on which the
homonym of that geographical indication is used. In this case, the use of the homonymous
geographical indication would be misleading, since expectations concerning the quality of the
products on which the homonymous geographical indication is used are not met.

Therefore certain measures must be taken to ensure that homonymous geographical indications
can co-exist harmoniously.