Meaning of Intellectual Property Rights? Various Forms? Characteristics? Features?

Intellectual Property is a creation of intellect i.e., the human mind. It protects what a human mind
creates. It could be a research, logo, invention, drawing or painting, musical compositions etc. all
being the products invented from human mind. Intellectual Property Laws provides the owner of
such rights to exclusively use his intellectual property at his desire and also prevents others from
using it without the owner's permission.
All the rights linked with intangible assets possessed by an individual or business to safeguard such
assets against unlawful use or exploitation are called Intellectual Property Rights. Such rights are
granted to the creators of intellectual property so that their creations cannot be used by others without
their permission. These include: Right to reproduce such work; Right to sell such work; Right to
create other forms of such work, etc. Intellectual Property Rights are used to convey the monopoly of
the holder over the usage of the specified property or items for a definite time period. Any violation of
these rights attracts severe penalties.
Intellectual property rights (IPR) are the rights given to persons over the creations of their minds:
inventions, literary and artistic works, and symbols, names and images used in commerce. They
usually give the creator an exclusive right over the use of his/her creation for a certain period of time.
Intellectual property is an intangible right exercisable in respect of a tangible work. Further, it is
treated as a movable property and can be assigned and transferred.
Characteristics of Intellectual Property are: -
(i) Creation of human mind
(ii) It is an intangible right over tangible work.
(iii) It is a movable property which is assignable and transferable
(iv) The owner of Intellectual Property has absolute and exclusive right over it.
(v) It exists only under law i.e.; it is a legal right.
Features/Nature of Intellectual Property - The nature of Intellectual Property is characterized by
unique characteristics and purpose. Essentially, it is built around the protection of intangible assets
and their economic value. Below are the key aspects that highlight the nature of Intellectual Property
in detail:
1. Intangible Asset - Intellectual Property is intangible creations of the mind, which include
inventions, designs, and creative works. Being intangible, IP lacks a physical form but holds deep
economic and cultural significance. Examples are patented technologies, artistic compositions, and
brand logos.
2. Exclusive Rights - Intellectual Property Rights confer exclusive legal rights upon creators and
owners to control the use, sale, or license of their creations. These rights empower owners to monetize
their innovations while preventing unauthorized usage or duplication by others.
3. Territorial Nature - Intellectual Property Rights are territorial, meaning they are enforceable
within the jurisdiction where they are granted. For instance, a patent registered in the United States is
not automatically valid in other countries unless registered separately.
4. Time-Bound Protection - Most Intellectual Property Rights offer protection for a definite term,
such as 20 years for patents or a creator's lifetime plus 60 years for copyrights. Once protection has
lapsed, IP enters the public domain and is free to use for anyone without any restrictions.

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5. Economic Value - Intellectual Property has huge economic value because innovation gives the
edge to companies, enhances brand prestige, and contributes to global trade. Businesses utilize IP as a
competitive edge, earning revenue streams through licensing, sales, or strategic partnerships.
6. Creativity and Innovation Focus - IP by its very nature focuses on the rewarding of creativity and
innovation, thereby encouraging people and businesses to invent new technologies, designs, or artistic
expressions. Protecting the creation, IP encourages research and development.
7. Dynamic and Updating - Intellectual Property is dynamic and updated with the passage of
technology, culture, and economic practices. Emerging areas of software, artificial intelligence, and
biotechnology have broadened the coverage areas of IP protection.
8. Mandatory Public Disclosure - Some IPRs in the form of patents need public disclosure of
technical information as this ensures public availability and diffusion of the existing technical
knowledge. This leads to further inventions by others once the protection period is over
9. Double Role: Private as well as Public Interest - IPR satisfies both private and public interests in
a balanced manner. While creators enjoy exclusive rights, the public benefits from access to new
technologies, artistic works, and cultural products.
10. Transferable and Licensable - IP may be transferred or licensed, enabling its owner to earn
income by selling or granting license rights to use an IP. Licenses are common for software, music,
and more technological industries.
11. Protection Against Misappropriation - Laws on IP protect their holders against infringement,
plagiarism, or practices of counterfeit. They also ensure fair competition and uphold the integrity of
intellectual contributions.
Need for legal protection of intellectual property - The various reasons behind granting protection
to intellectual property through the enactment of suitable Intellectual Property (IP) laws are as
follows:
1. To encourage inventions and creations that promote the social, economic, scientific, and
cultural development of society by incentivizing the creators and allowing them to make
economic gains out of their creations.
2. To provide legal protection to intellectual creations.
3. To prevent third parties from enjoying the fruits of someone else’s creativity.
4. To facilitate fair trading.
5. To promote creativity and its dissemination.
6. Giving recognition to the efforts of creators.
7. Preventing the infringement of proprietary rights of creators in their creations from
unauthorized use.
8. To encourage investment of skill, time, finance, and other resources into innovation activities
in a manner that is beneficial to society.
Advantages of Intellectual Property Rights
1. IPR protection gives your business a competitive advantage over other similar businesses.
2. IPR protection allows you to prevent unauthorized use of your intellectual property and
works.

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 3. IPR enhances the value of your company and also opens avenues for collaborations and
opportunities for generating income such as by entering into licensing agreements to
exploit/work the invention/work.
4. IPR helps to attract clients and creates your brand value. For example, the consumers start
identifying your products with the unique logo or registered trademark.
Disadvantages of Intellectual Property Rights
1. You have to incur additional costs for getting IPR protection including legal costs and other
fees.
2. Even after getting the intellectual property right, you might still face a lot of difficulties in
curbing the copying and unauthorized use of your work. Moreover, sometimes an attempt to
enforce IP rights could lead to a reduction in the consumer base.
3. IP rights aren’t absolute. There are certain limitations and conditions imposed by law on the
exercise of these rights (such as a limited period of protection and compulsory licensing
provisions) in the interests of the general public.
Types of Intellectual Property - Type of Intellectual Property can be classified into different kinds,
each created to safeguard distinct types of human creativity, innovation, and brand identity.
Patents - Patents secure inventions and/or processes, thus giving exclusive rights to use, make, and
sell for 20 years. It encourages technological development.
Copyrights - Copyrights protect original works of creativity, such as books, songs, movies, or
software. The rights are valid for a lifetime plus 60 years. This fosters cultural growth.
Trademarks - Trademarks Protect brand elements like logos, names, and slogans, ensuring brand
identity and consumer trust. Renewable indefinitely with commercial use.
Industrial Designs - Industrial Designs protect the aesthetic features of products like shapes and
patterns. Valid for 10-25 years. Enhances product marketability.
Geographical Indications (GIs) - Protect region-specific products like Champagne or Darjeeling tea.
Promotes traditional knowledge and regional economies.
Trade Secrets - Protect confidential business information like formulas or strategies. Valid
indefinitely if secrecy is maintained. Encourages competitive advantage.
Conclusion: The very essence of Intellectual Property is the prime culture of innovation, creative
development, and economic growth. Through the protection of intangible creations and the grant of
exclusive rights for the same, IP ensures their creators, businesses, and society at large benefit from
intellectual contributions. Understanding its unique characteristics highlights the importance of
shaping a knowledge-driven global economy. As technology and creativity continue to evolve, the
role of Intellectual Property will only be more important.
Short Note on Berne Convention?
The Berne Convention for the Protection of Literary and Artistic Works, was established in 1886 in
Switzerland, is a pivotal milestone in the history of international copyright agreements. It is a
foundational treaty for copyright protection which aimed to harmonize copyright laws among
participating nations, ensuring that works of authors from member countries were protected in others.
The Berne Convention introduced the concept that a copyright exists the moment a work is “fixed”, or
manifested into a tangible format, rather than requiring registration.

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ORIGIN AND HISTORICAL CONTEXT - The Berne Convention is one of the oldest important
international treaties in the realm of intellectual property and copyright law. The inspiration for the
Berne Convention can be traced back to the Paris Convention for the Protection of Industrial Property
in 1883. It was established in 1886 under the guidance of Victor Hugo’s Associated Literature Artist
International association, introduced significant changes to international copyright protection.
EVOLUTION AND ADMINISTRATION OF BERNE CONVENTION - Since its inception in 1886,
the Berne Convention has undergone multiple revisions and amendments, including those in Paris
(1896), Berlin (1908), Berne (1914), Rome (1928), Brussels (1948), Stockholm (1967), and Paris
(1971). It was also amended in 1979 to address evolving copyright issues and maintain its relevance
in the modern era.
The administration of the Berne Convention on Intellectual Property Law falls under the
responsibility of the United Nations’ World Intellectual Property Organization (WIPO). This
convention stands out as one of the most widely adopted international treaties globally, solidifying its
paramount significance in the realm of intellectual property.
PURPOSE OF THE BERNE CONVENTION - One of its fundamental principles is that copyrights
for creative works should be automatically enforced upon their creation, without the need for formal
registration. In countries adhering to the Convention, authors are not required to assert or declare their
copyright; it is granted as soon as their work is fixed in a tangible form, whether in writing or through
recording.
Before the Berne Convention, copyright laws typically had jurisdiction solely over works created
within a country’s borders. But the Convention ensures that foreign authors enjoy the same rights and
privileges as local authors in any participating country.
BASIC PRINCIPLES OF THE CONVENTION - This convention is based upon three fundamental
principles and incorporates various provisions to establish the minimum level of protection, along
with offering special provisions that developing countries can utilize. These three core principles are
as follows:
A. Principle of National Treatment: It mandates that creative works originating in any of the
Contracting States, such as works created by nationals of that State or first published there,
must receive the same level of protection in all other Contracting States as those countries
provide to their own citizens’ works.
B. Principle of “Automatic” Protection: This principle emphasizes that copyright protection
should not be subject to any formalities or conditions. Protection over copyright should be
automatically granted upon the creation of the work.
C. Principle of “Independence” of Protection: It asserts that copyright protection is independent
of whether protection exists in the work’s country of origin. However, if a Contracting State
offers a longer duration of protection than the minimum set by the Convention, and the work
loses protection in its country of origin, the protection may be denied once it ceases in the
country of origin.
Name the first convention related to patents and copyright respectively?
The Paris Convention of 1883 was the first major international agreement to protect Intellectual
property, including patents. However, Paris convention did not cover the aspect of copyright. Berne
Convention of 1886 and it was in fact the first international convention covering the laws of
copyright. The Berne Convention followed in the footsteps of the Paris Convention for the Protection

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of Industrial Property of 1883, which in the same way had created a framework for international
integration of the other types of intellectual property: patents, trademarks and industrial designs.
The Universal Copyright Convention (UCC) came into effect in the year 1952. The Universal
Copyright Convention, adopted in Geneva, Switzerland, is one of the two principal international
conventions protecting copyright; the other being, the Berne Convention. The UCC was developed by
United Nations Educational, Scientific and Cultural Organization (UNESCO) as an alternative to the
Berne Convention for those states which disagreed with aspects of the Berne Convention, but still
wished to participate in some form of multilateral copyright protection.
Short Note on World Trade Organization?
The World Trade Organization (WTO) is the only international trade body that deals with
international trade practices. It ensures that the member countries engage in smooth, free, and fair
global trade. WTO was officially founded on 1st January 1995 with its headquarters in Geneva,
Switzerland. India is a member of the WTO since 1st January 1995. Currently, it has 164 member
countries. The World Trade Organization (WTO) serves a variety of purposes: it administers a
worldwide system of trade regulations, serves as a venue for negotiating trade agreements, resolves
trade disputes among its members, and assists developing nations.
Objectives of WTO - The six key objectives of the World Trade Organization are -
(i) Establishing and Enforcing Rules for International Trade: The international trading rules by the
World Trade Organization are established under three separate agreements – rules relating to
the international trade in goods; the agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS) and the General Agreement on Trade in Services (GATS). The
enforcement of rules by the WTO takes place by way of a multilateral system of disputes
settlement in the instances of violation of trade rules by member countries. The members are
obligated under ratified agreements to honor and abide by the procedures and judgments.
(ii) Acting as A Global Apex Forum: World Trade organization is the global forum for monitoring
and negotiating further trade liberalization. The premise of trade liberalization measures
undertaken by WTO is based on the benefits of member countries to optimally utilize the
position of comparative advantage due to a free and fair trade regime.
(iii) Resolution of Trade Disputes: Trade disputes, before the WTO, usually arise out of deviation
from agreements between member countries. The resolution of such trade disputes does not
take place unilaterally but through a multilateral system involving set rules and procedures
before the dispute settlement body.
(iv) Increasing Transparency in The Decision-Making Process: The World Trade Organisation
attempts to increase transparency in the decision-making process by way of more participation
in the decision-making and consensus rule, in particular. The combined effect of such measures
helps to develop institutional transparency.
(v) Collaboration Between International Economic Institutions: The global economic institutions
include the World Trade Organization, the International Monetary Fund, the United Nations
Conference on Trade and Development, and the World Bank. With the advent of globalization,
close cooperation has become necessary between multilateral institutions. These institutions are
functional in the sector of formulation and implementation of a global economic policy
framework. In the absence of regular consultation and mutual cooperation, policymaking may
be disrupted.
(vi) Safeguarding The Trading Interest of Developing Countries: Stringent regulations are
implemented by the WTO to protect the trading interests of developing countries. It supports

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 such member countries to leverage the capacity for carrying out the mandates of the
organization, managing disputes, and implementing relevant technical standards.
Features of WTO - The major features of the World Trade Organization are –
 The scope of WTO is far more expensive than the erstwhile General Agreement on Trade and
Tariff. For instance, GATT solely focused on goods while excluding textiles and agriculture. On
the other hand, WTO covers all goods, services, and investment policies along with intellectual
property.
 WTO Secretariat has formalized and bolstered the mechanisms for the review of policies as well
as the settlement of disputes. This aspect has become crucial due to the proliferation of member
countries and more goods and services being covered by the WTO. Another important
consideration in this regard is the substantial increase in open access to different international
markets.
 There are rules implemented for the protection of small and weak countries against the
discriminatory trade practices of developed countries.
 National Treatment articles and Most Favored Nation (MFN) clause permits equal access to
markets for just treatment of both domestic and foreign suppliers.
 Each member country of the WTO carries a single voting right and all members enjoy privilege
on the global scale.
 The WTO agreements encompass all the member states and act as a common forum of
deliberation for the members.
Roles and Functions of WTO –
 Implementation of Rules for Review of Trade Policy - The international rules of trade provide
stability and assurance and lead to a general consensus among member countries. The policies
are reviewed to ensure that even with the ever-changing trading scenarios, the multilateral
trading system thrives. It also helps in the facilitation of a transparent and stable framework for
conducting business.
 Forum for Member Countries Discuss Future Strategies - The WTO, as a forum, allows for trade
negotiations in the multilateral trading system. In the absence of trade negotiations, growth may
stunt, and issues related to tariff and dumping may go unaddressed. Further liberalization of trade
is also subject to consistent trade negotiations.
 Implementing and Administering Bilateral and Multilateral Trade Agreements - The bilateral or
multilateral trade agreements have to be necessarily ratified by the parliaments of respective
member countries. Unless such ratification comes through, the non-discriminatory trading system
cannot be put into practice. The executed agreements will ensure that every member is
guaranteed to be treated fairly in other members’ markets.
 Trade Dispute Settlement - The dispute settlement by the WTO is concerned with the resolution
of trade disputes. Independent experts of the tribunal interpret the agreements and give out
judgment mentioning the due commitments of the concerned member states. It is encouraged to
settle the disputes by way of consultation among the members as well.
 Optimal Utilization of the World's Resources - Resources across the world can be further
optimally utilized by harnessing the trade capacities of the developing economies. It requires
special provisions in the WTO agreements for the least-developed economies. Such measures
may include providing greater trading opportunities, longer duration to implement commitments,
and also support to build the sue infrastructure.
Conclusion: In this article, we saw an overview of the WTO. It is the only international trade body
that deals with international trade practices. It ensures that the member countries engage in smooth,

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free, and fair global trade. In 1995, WTO replaced GATT as the international trading body. WTO has
set up several rules and negotiations in order to establish a common set of international trade laws.
These agreements cater to a multitude of aspects like goods, services, trade monitoring, intellectual
property, and settlement of disputes. Though such negotiations have been greatly beneficial for the
well-off member nations, the local communities and the poorer members are only the adverse effects
of these clauses.
Short Note on TRIPS?
The full form of “TRIPS” is “Trade-Related Aspects of Intellectual Property Rights”. (TRIPS) is an
international agreement that falls under the purview of the World Trade Organization (WTO). This
landmark agreement was established to address the complex intersection of trade and intellectual
property, aiming to create a harmonized and standardized framework for protecting various forms of
intellectual property on a global scale.
In simple, TRIPS stands for Trade-Related Aspects of Intellectual Property Rights. It is an
international agreement under the World Trade Organization (WTO) that sets global standards for the
protection and enforcement of intellectual property rights.
TRIPS was introduced to address disparities in IP protection across countries and provide a
standardized framework to encourage innovation, technology transfer, and trade. It ensures that
creators and inventors receive adequate protection for their creations and inventions.
The TRIPS agreement aims to strike a balance between promoting innovation and ensuring that
access to essential goods and services, especially in fields like healthcare, remains accessible to all. It
sets minimum standards for IP protection and enforcement that member countries are required to
implement within their legal systems.
TRIPS covers various forms of intellectual property, including patents, copyrights, trademarks, trade
secrets, industrial designs, and more. It establishes minimum standards for IP protection and
enforcement that member countries must adhere to. The IPRs covered by the TRIPS Agreement
are:
• Copyright and related rights (i.e. the rights of performers, producers of sound recordings and
broadcasting organizations)
• Trademarks, including service marks
• Geographical indications including appellations of origin
• Industrial designs
• Patents including the protection of new varieties of plants
• Layout-designs (topographies) of integrated circuits
• Undisclosed information, including trade secrets and test data
The three main features of TRIPS agreement are:
 Standard - All member states are required to provide a minimum set of criteria for the
protection of IPRs in each of the IP categories covered by the Agreement. Each area of IP is
addressed in such a way that the major aspects of protection, such as the subject matter sought
to be protected, the rights to be granted, and possible exceptions to such rights, as well as the
minimum period of protection, are all explicitly stated.
 Enforcement - The second set of clauses focuses on domestic processes and remedies for
intellectual property rights enforcement. The Agreement establishes a set of broad rules that
apply to all IPR enforcement actions. It also includes rules on civil and administrative
processes and remedies, provisional measures, particular border requirements, and criminal

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 proceedings, all of which outline the procedures and remedies that must be provided so that
the right holders can successfully exercise their rights.
 Dispute Settlement - Disputes occurring between WTO members over responsibilities
emanating from the TRIPS Agreement are subject to the WTO's dispute resolution processes.
Advantages of the TRIPS Agreement -
 TRIPS provides incentives for businesses to spend money on R&D by giving exclusive rights to
those who own intellectual property, which promotes innovation.
 TRIPS ensures that all members have equal access to protection for their intellectual property,
which supports just and equitable global trade.
 TRIPS' robust intellectual property protection can draw in outside capital, spurring economic
expansion.
 Technology transfer is made easier by TRIPS, which gives incentives to technology owners to
licence their products and permits developing nations to use compulsory licensing to meet their
public health needs.
 Legal certainty is provided by TRIPS, which gives investors and owners of intellectual property a
clear legal framework for the protection and enforcement of their rights.
 TRIPS permits the use of compulsory licensing to address public health needs, which can
increase access to affordable medicines in developing countries. This promotes access to
medicines.
 TRIPS recognizes the value of traditional knowledge and provides for its protection and
preservation, which strengthens the protection it receives.
 Encourages international collaboration on intellectual property issues. TRIPS offers technical
assistance and training to developing nations to assist in the implementation and enforcement of
intellectual property laws.
 Therefore, we can say that ‘TRIPS’ encourages creativity, trade, investment, technology transfer,
legal certainty, access to medicines, protection of traditional knowledge, and international
cooperation.
Disadvantages of the TRIPS Agreement -
 TRIPS mandates high levels of patent protection.
 Fertilizers, insecticides, pharmaceutical items, and procedures were not protected by patents,
resulting in low-cost food and drugs.
 Education and technology transfer were fostered by the lack of copyright protection for
informational products.
 Jobs in the local imitative industries were lost.
 In general, increased prices resulted in significant deadweight losses, with minimal stimulation of
local innovation.
 Traditional knowledge is not protected in any way.
Short Note on WIPO?
The World Intellectual Property Organization, also known as WIPO, is a global organization that
promotes the protection of both industrial properties (such as patents, trademarks, and designs) and
copyrighted material (such as literary, musical, visual, and other artistic works) around the world. A
treaty signed in Stockholm in 1967 served as the basis for the organization’s founding in 1970, and in

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December 1974 it was designated as a specialized agency of the UN. The main office is in Geneva
Switzerland. Millions of patent papers are available through a free patent search engine provided by
the World Intellectual Property Organization (WIPO). The World Intellectual Property Organization
(WIPO) of the UN is a specialized group. Its objective is to establish a just and open global IP system
that fosters innovation, encourages creativity, and supports the economic, social, and cultural
development of all nations while safeguarding the general welfare.
Significance of WIPO
 WIPO's efforts to safeguard the originality of works are thorough and efficient.
 WIPO's agenda focuses on five overarching objectives:
o A widespread culture of intellectual property has to be encouraged.

o Incorporating IP into national development plans and programmes

o In order to provide uniform regulations for intellectual property on a global scale (partially
defined as promoting laws forbidding the circumvention of technological restrictions).
o To provide superior support for IP systems across the world

o The goal is to improve the effectiveness of WIPO's administration and services.

Functions of WIPO: The World Intellectual Property Organization (WIPO) was founded with the
following objectives in mind:
 To support the creation of campaigns that enhance IP Protection globally and maintain
uniformity among national laws.
 Initiating the signing of international agreements for the protection of intellectual property rights
(IPR).
 To put into practice, the administrative duties that the Berne and Paris Unions have discussed.
 To offer legal and technical support in the area of intellectual property.
 To gather and disseminate information, conduct research, and publish the results.
 To make certain that services are provided in a way that promotes international intellectual
property protection.
 To carry out additional necessary and suitable actions.
World Intellectual Property Organization Limitations and Exceptions
 Certain restrictions on economic rights are permitted under copyright laws in order to
preserve a proper balance between the interests of right holders and users of protected works.
 These are situations where it is acceptable to use protected works without the right holder’s
consent and with or without payment of compensation.
 On the WIPO’s agenda is the topic of limitations and exceptions. The discussion has
primarily centered on three categories of beneficiaries or activities in terms of exclusions and
restrictions: educational initiatives, libraries and archives, and individuals with disabilities,
notably those who are visually impaired.
Conclusion: World Intellectual Property Organization is significant for India from many perspectives
such as economic, political, social and cultural also. Geographical Indication is an important aspect of
this and Indians have contributed to it as well. Every state of India has a unique talent that leads to
economic and political growth. Therefore, contributing significantly to WIPO is the need of the hour.
Explain the Role IP in Economic Development?

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Intellectual property is defined as property created by the human mind and intellect. Any essential
progress of human knowledge, such as artistic, academic, specialized, or logical development, is
managed by Intellectual Property (IP). The creator's lawful rights to validate their invention are
granted under Intellectual Property Rights (IPR).
These legal rights confer a limited right on the creator/producer or his administrator who uses his
creation/item for a limited time frame. Intellectual property rights (IPR) are critical to a country's
development. IPRs can aid in the growth of new businesses, the restructuring of inefficient industries,
and the acquisition and invention of new technologies. The incorporation and development of new
technology, the structure of markets to ease production and consumption, and the formation of
enabling institutions are all part of economic growth.
Intellectual-property-based industries are significant drivers of GDP and employment rates in both
developed and developing countries. Intellectual property-dependent businesses are an essential and
rising element of every contemporary economy, especially as these economies move away from
agricultural, mineral, and low-value-added industries and toward higher-value products and services.

Intellectual Property Rights have an impact on the processes of economic development and progress,
which are influenced by a variety of circumstances. More solid foundations for the protection of
intellectual property rights might, in theory, either help or hinder economic growth. Finally, it is
becoming clear that a more solid and increasingly assured IP protection system might help the
economy expand and foster beneficial change, thereby improving formative opportunities, if it is
arranged in a way that advances compelling and dynamic challenges.
A vigilant eye on combining economic growth with welfare concerns is critical for a country at a
crossroads of development like India to establish a degree of sustainability. All nations may benefit
from an efficient and fair intellectual property system, which can help them achieve intellectual
property's potential as a catalyst for economic progress and social and cultural well-being.
Role of Intellectual Property in Economy - Intellectual property rights offer owners of intellectual
property the legal authority to prevent others from utilizing their creations or to define the conditions
under which they can be used. IPR's ultimate goal is to provide customers with innovative,
competitive goods and services that they desire and need. The advantage of an IPR-based system for
innovation is that it offers incentives to further develop and commercialize publically financed
fundamental research, allowing new products, businesses, and even industries to emerge based on
these innovations.
Any intellectual property protection regime shall have two main economic goals. The first is to
encourage investments in research and development as well as commercial innovation by granting
exclusive rights to use and sell newly created technology, commodities, and services. The second
purpose is to encourage rights holders to put their innovations and ideas on the market in order to
foster the widespread circulation of new technology for the development of the economy.
Scope and Need of Intellectual Property - Intellectual property rights are crucial for a country's
overall growth and vary across nations. Successful planning and strict enforcement of intellectual
property laws contribute significantly to the economic growth of many developed countries.
Intellectual property rights promote innovation which leads to economic growth. Protecting people's
rights fosters innovation, which is directly linked to a country's development and growth. Developing
economies like India must focus on raising productivity in their markets. Innovation requires
significant investment, but it plays a crucial role in investment. Developed countries such as the USA,

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Japan, and China have experienced a five-fold increase in development rates after implementing
intellectual property laws.
Role of Intellectual Property Rights in Economic Development - Intellectual Property Rights (IPR)
have a significant impact on the process of monetary improvement, and their development is
entangled with various factors. The primary objective of IPR is to encourage right holders to bring
their innovations and ideas to the market, thereby promoting the widespread circulation of the latest
technology for the betterment of the economy. The effectiveness of IPR on economic development in
different countries depends on various stages of development, such as GDP growth, human capital
development, imitative activities, technological development, and so on.
In general, innovations are mostly produced in high-income countries due to different R&D activities,
and the protection of IPR further encourages innovations by enabling inventors to earn handsome
returns from their inventions. In all middle-income countries, property rights positively affect
economic development, but this effect is less than that of high-income countries, as the level of
protection of IPR in these countries is relatively poor. Furthermore, each middle-income country is
unique in terms of its economic structure, with divergent IPR. Therefore, middle-income countries
can be divided into two categories, i.e., upper-middle-income countries and lower-middle-income
countries.
In upper-middle-income countries, IPRs are presumed to have a positive impact on economic
development. On the other hand, in lower-middle-income countries, IPRs have only a moderate effect
on economic growth due to poor protection of property rights. In low-income countries, this effect
further weakens, and the level of protection of IPR is even worse.
Relation between IPRs and the Economy - It is important to use new innovations and ideas to keep
the cost of a product low. Updating technology and innovation is vital. Strict IPR laws that protect the
interest of the people are necessary as they discourage others from exploiting the same. However, it is
not enough to just have a good law. The enforcement of that law is equally important. If there are
loopholes or weak laws, they can be exploited and result in less innovation.
IPR provides exclusive rights to the owner or creator of the property, which includes the right to
decide on a fair value and sell them to anyone. A healthy return to developers will encourage them to
create new innovations and promote innovation. However, the owner can also exploit this right and
charge more than the monetary value, creating a monopoly in the market.
CONCLUSION - Intellectual Property Rights (IPR) play a significant role in economic development
by fostering an environment that incentivizes creators and innovators to bring their ideas to the
market. IPR protection, including patents, trademarks, copyrights, and trade secrets, encourages
investment in research and development, leading to economic growth through the introduction of new
technologies, products, and services. Developing countries like India can benefit from a strategic
emphasis on IPR laws that can unlock innovation and productivity opportunities. However, it's
essential to strike a balance in IPR laws that provide adequate protection and prevent the abuse of
exclusive rights that may lead to monopolies. Effective enforcement mechanisms are crucial to
maintaining the integrity of the IPR system. Ultimately, IPR stands as a pillars supporting creativity,
entrepreneurship, and sustainable development, benefiting societies and economies alike.
Short Note on Copyright? Features/Characteristics?
MEANING OF COPYRIGHT - As the name suggests, copyright means the right to copy. In plain
words, the owner of copyright has an exclusive right over his work and is entitled to make copies of
the same. Copyright as per Oxford Dictionary means "the exclusive right to publish or record a work".

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It can also be defined as an intangible right which is granted to the owner of a literary or artistic work
to multiply copies for a specified period and publish the same.
Copyright has the important place in Intellectual Property Rights. Copyright is the exclusive right to
do or to do certain acts in relation to literary works, dramatic, musical and artistic works,
cinematograph film, sound recording and computer databases.
Section 14 of the Copyright Act defines copyright as the exclusive right to do or authorize others to
do certain acts in relation to (i) literary, dramatic or musical work (ii) artistic work (iii) cinematograph
film and (iv) sound recording.
Thus it can be seen from the definition above that copyright in a work consists of various rights which
are bestowed on its owner. Such rights are exclusive in nature. In fact, Copyright is a creation of
statute and its primary object is to protect the owner/ author of original work from unauthorized
reproduction or use of his work (also known as infringement). Any kind of infringement of the
original work holds the infringer civilly and in certain circumstances, even criminally liable.
As long as the work is original, the author of such work has right over it for her lifetime plus 60 years
for her published literary, dramatic artistic and musical work. The time frame for other forms of work
may be different but the period of 60 years from the date of original publication is available in all
forms of copyrighted works.
Copyright law is designed to prevent copying of existing physical material in art and literary work.
The objective is to protect the writer or owner from the unlawful reproduction of his work. The law
does not permit one man to make profit and to appropriate to him that which has been produced by
labour, skill and capital of another. In order to prevent from such acts by another and to prevent from
the violation of the rights of the creative authors, there are Copyright Societies which take care of the
authors rights and all the things related to copyrighted work
Characteristics/Features of Copyright are explained in brief as follows: -
(a) Originality: Copyright can subsist only in original work. No copyright can subsist in any
unauthorized reproduction of work or in a work which is not originated from the author.
(b) Negative Right: Copyright protects the owner of the original work from others. In other words,
one cannot use the authors/owner's work without her permission or consent. Since this right is
prohibitory in nature, the same is a negative right available to the author against all.
(c) Exclusive Right: One of the main features of copyright is that is an exclusive right. It is kind of a
monopoly right excluding others from using the same. One must note that though the owner of the
work has monopoly over the 'work'. He has no monopoly over the 'subject matter of such work.
(d) Multiple Rights: Copyright consists of various rights in the same work. The Statute has provided
the owner/ author of the copyright with various rights such as reproductions, adaptation, translation of
such work (if literary). These rights over the copyright completely depend on the nature of the work
done by the owner.
Apart from being original the work should also satisfy the following conditions in order to qualify for
being copyright (except in case of foreign works and international organizations):
(i) The work must be first published in India
(ii) If the work is first published outside India, the author must be the citizen of India at the date of
such publication. However, if such publication is made after the authors death, the author must have,
at the date of his death a citizen of India.

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 (iii) In case of work which is unpublished, the author should be at the date of making such work
citizen of India or domiciled in India. However, this shall not apply to works of architecture.
Conclusion: The Copyright Act 1957 is a cornerstone in India's legal landscape, providing a
comprehensive framework for safeguarding intellectual property. With a broad scope covering
various creative works, ownership clarity, and robust remedies for infringement, the Act ensures fair
recognition and compensation for creators. The Act's detailed definition of protected works and
delineation of copyright holders' rights exhibit a nuanced understanding of creative content. Civil and
criminal remedies, along with exceptions for private use, criticism, and education, further highlight its
balanced approach to protecting intellectual property while fostering innovation. Ultimately, the Act
remains crucial in maintaining a dynamic environment for creativity within legal boundaries.
State and Discuss the Works in which Copyright subsists under Copyright Act?
Introduction - Copyright means the exclusive right to do or authorize others to do certain acts like
reproducing, making and issuing of copies, performing in public, communicating to public, adaptation
and translation in relation to literary, dramatic, musical, artistic, cinematograph films and sound
recordings works. Copyright is the right which the owner of the work has and without his permission
copying or reproducing the work in which copyright subsists cannot be done. Copyright law prevents
others from taking unfair advantage of a person’s creative efforts involving his judgment, skill,
labour, time, and capital in making the original work. The objective of copyright law is to give
protection to the creators of original works by rewarding them with the exclusive right for a certain
period.
Works in which Copyright subsists - Section 13 of the Act lists out the work, in which copyright
subsists. Subject to the provision of this section and the other provisions of this Act, copyright shall
subsist throughout India in the following classes of works,
1. Original Literary, dramatic or musical work
2. Original Artistic work
3. Cinematograph film
4. Sound recording
5. Computer programmes.
Literary work - Literary work means any work in written or printed manner so long as it is original
and has been created by sufficient skill and labour. Literary work also includes a computer
programme, table, complications and Computer database (Section 2 (o)). Literary work need not be
of literary quality. It could be any work which may or may not make any literary value. An ordinary
work of compilation of names of people living in a particular area can also be treated as literary work
when considerable skill is involved in such work.
In one case in London it was held examination papers are original literary work since the person who
sets the question paper invests labour and skill in preparing the same. Such person is the author of
question paper and the copyright would vest in him. In another case of Zee Telefilms Ltd v/s Sundial
Communications ((2003) 27 PTC) it was held that even the concept notes prepared for the purpose of
a television film which consists of characters, plots, notes, sketches etc. were held to be literary work.
Copyright in literary work can also be by the means of adaptation, abridgement and translation.

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Adaptation: it is pertinent to note that the copyright also subsists in original adaptation of literary
work. Adaptation simply means 'adapting' or 'to adopt from original work and converting the same
into any form such as a dramatic work by the way of performance in public or otherwise
Abridgement: Also, a genuine abridgement of literary work is also an original work and can be
copyrighted, subject to the author using sufficient skill and labour upon it. Mere copying of the
original work does not amount of abridgement of work.
Translation: Translation means to translate the original work in some other language (when literary
work). It is widely known that various books by different authors are translated and published in
regional languages in India to suit their state requirement. However, it was held in Blackwood /vs
Parasuraman (AIR 1959 Madras 410) that translation in any literary work is entitled to copyright
protection if sufficient skill and labour has been invested in it. However, it was further held that if
copyright exists in such original work, then such translation without the consent of the original
copyrighted work will constitute infringement of such original work.
Some of the literary works in which copyright subsists are as follows:
(i) Headlines of newspaper: - if the same are original and involves skill and labour, it would enjoy the
copyright protection.
ii) Head Notes of law Reports: - it contains a clear and brief principle of law concluded by the Court.
Hence requires skill and thought and is entitled to copyright protection.
iii) Letters: - Letters addressed by one person to another are original literary work and entitled to
copyright. Similarly, notes dictated to a typist also come under the purview of copyright protection. In
such a case, the person who dictates such notes is the author of the same.
Dramatic Work - Dramatic work as per section 2 (h) includes 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.
Thus to constitute a dramatic work it is necessary that some form of action should be present, which is
capable of being performed. The element of action is necessary. It was held in Creation Records v/s
New Group Newspapers (1997) EMLR 444 that a photograph which involves no movement or action
cannot be treated as dramatic work.
Adaptation of Dramatic work means modification of that work in some other form. In simple words,
if a theatre drama is adapted and a cinematograph film is made thereof. In such a case, however, the
consent or permission of the author/ owner of the copyright in such work is necessary. A recent case
is that of a film Oh My God which is adapted from a Gujarati play.
Musical Work - Musical work is defined under section 2 (p) as a work consisting of music and
includes any graphical notation of such work but does not include any words or any action intended
to be sung, spoken or performed with music.
It was held in Gramophone Company v/s Super Cassettes Industries 1996 PTC 252 Delhi that musical
work is not merely a combination of melody and harmony or either of them, it must necessarily also
have been printed, reduced to writing or graphically produced or reproduced to copyright.

One must note that musical work does not include any words or any action intended to be sung,
spoken or performed with music. Such works will be either classified as literary or dramatic works.
Further, adaptation of original musical work also enjoys copyright protection. Adaptation in relation

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to musical work means any arrangement or transcription of the work. Copyright will subsist in
arranging the musical work by adding musical melodies, new compositions, new rhythms etc. A very
common form of adaptation in recent times is the remix songs which we hear along with the
orchestra. Such an adaptation does not constitute infringement of copyright. However, a musical work
should be original to enjoy the copyright and similar to literary work, the originality of musical work
is determined by the amount of skill and labour put by the composer.
When one thinks of musical work the only word which clicks the mind is "song". A song as such has
no copyright protection. It is the lyrics (words) and music of the song which is capable of being
copyrighted. In case of lyrics the author is the owner of copyright and in case of music the composer
is the owner of copyright. For e.g. a very famous song namely YAARAM which is written by Gulzar
and composed by Vishal Bhardjwaj So the copyright over the lyrics will belong to Gulzar and musical
composition will that be of the composer i.e., Vishal Bhardjwaj
Original Artistic Work - As per Section 2 (c) Artistic work means:
(i) a painting, a sculpture, a drawing (including a diagram, map, chart or a plan) an engraving or a
photograph, whether or not any such work possess artistic quality:
(ii) a work of architecture; and
(iii) any other work of artistic craftsmanship
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.
Painting is not defined under the Copyright Act. However, it is entitled to copyright protection
whether it possess any artistic quality or not if the same is original and has involved sufficient skill
and labour. However, a painting should necessarily be on a surface. It cannot have copyright
protection if the same is on a moving object. For eg., it has been held in number of cases that the
painting or a facial make-up on a persons' body would not be entitled to any copyright protection.
Sculpture merely means the art of making figures and shapes by craving or shaping stone, wood,
metal etc. Section 2 (z-a) states work of sculpture includes casts and models.
As the aforesaid section states a drawing includes a diagram, map, chart or a plan. Thus either of this
can be termed as drawing and are able to copyright protection so long as the basic ingredient of
originality is present. A drawing could be in any form whether it has artistic quality or not, it could be
a engineering or a mechanical drawing. In fact, it was held in English court that even cutting patterns
for women clothes amount to a drawing and is entitled to copyright protection.
Engraving as defined under section 2 (i) includes etchings, lithographs, wood-cuts, prints and other
similar works not being photographs. Engraving in simple language means craving a design on a hard
surface. The engraver of such design requires immense skill, labour and expertise to put a particular
design on a hard object. Though it is in still format, it is clearly not a photograph. However, an
engraving made from copying a photograph or a picture is entitled to copyright protection but not
vice-versa.

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Photograph of any particular object amounts to artistic work and is entitled to copyright protection so
long as it involves some degree of skill and labour. Photograph as defined under Section 2 (s) includes
photo-lithograph, and any work produced by any process analogous to photography but does not
include any part of cinematograph film. From the definition it is obvious that a photograph would not
include a cinematograph film or any part thereof since the same is a separate form of work in which
copyright subsists. A photographer can have copyright protection over a photo of a public object, (say
VT station) if clicked from a particular angle and in a particular manner but that does not stop another
person from clicking the another photograph from the same angle or in the same manner. That too
will be entitled to copyright protection so long as it is original and involves sufficient skill and labour.
However, one must note that there is no copyright protection available to a photo-copy of an original
photograph.
Work of Architecture as defined under Section 2(b) means any building or structure having an
artistic character or design or structure.
Unlike the definition of artistic work, this definition clearly states that the work must have an "artistic
character or design". In other words, this definition is in contrast with the definition of artistic work
which states "whether or not such work possesses artistic quality Thus to constitute a work of
architecture it is necessary that an element of artistic character, design or structure must be present in
the work. it must be noted that the process or construction methods of such building or structures need
not have an artistic quality. This is clarified by Section 13 (5) which states that "In case of work of
architecture copyright shall subsist only in the artistic character and design and shall not extend to
processes or methods of construction." Thus, there is a unambiguous division between protection to
architect's design (for a particular building/structure) as compared to the processes and methods
(which have no protection under Copyright law) by which such designs are implemented.
Artistic Craftsmanship is not defined under the Copyright Act. However, in common parlance it can
be said that artistic work by a worker skilled in craft. The aforesaid section of artistic work states that
"any other work of artistic craftsmanship" intends to cover the other activities which must show
artistic craftsmanship. For e.g., hand painted tiles or hand painted coasters, trays etc.
Cinematograph Film - Under Section 13 copyright subsists in cinematograph film. The same is
defined under section 2 (f) as " cinematograph film" means any work of visual recording and includes
a 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 concept of cinematograph films is not limited to a movie which is played in theaters. It was
clearly held in Balwindar Singh V/s Delhi Administration, Delhi AIR 1984 Delhi 379, that video as
well as television both fall under the purview of cinematograph film.
The producer of the cinematograph film is the owner of copyright under the Copyright Act. The level
of originality of a cinematograph film is not specified under the Act. However, one a film which is
based on someone's life event or a newspaper report can claim copyright protection. However, Section
13 (3)(a) clarifies that no copyright would subsist in a cinematograph film if it is an infringement of
copyright of any other work.
Sound Recording - Sound Recording as per Section 2 (xx) 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 such recording is produced. Similar to a cinematograph film, in case of sound
recording, the owner of sound recording is the producer. However, the copyright in the music of such
sound recording vests with the composer.

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Computer Programme - It is defined under Section 2 (ffc). It means a set of instructions expressed
in words, codes, schemes or any other form, including a machine readable medium, capable of
causing a computer to perform a particular task to achieve a particular result.
Computer Programmes are clearly entitled to copyright protection. In fact, it has been held in English
Courts that Copyright can also exist in a source code of computer programme. In a computer
programme, the elements such as codes, design and structure used by the programmers can be
copyrighted
Qualification for Copyright Subsistence - In order to qualify for copyright, the work, apart from
being original, should also satisfy the following conditions (except in the case of foreign works) –
1. The work is first published in India.
2. Where the work is first published outside India, the author at the date of publication must be a
citizen of India. If the publication was made after the author’s death the author must have, at
the time of his death, been a citizen of India.
3. In the case of unpublished work, the authors are on the date of making of the work, a citizen
of India or domiciled in India. This however, does not apply to works of architecture.
Conclusion: Copyright safeguards a wide range of creative works in India, from literary masterpieces
to architecture. This article provided an overview of various categories like music, software, and
performing arts, helping you to identify where your work falls. Remember, registration strengthens
your ownership claim, offering legal advantages and potential financial rewards.
What are the Rights conferred by the Copyright Act?
Rights Conferred by Copyright:
General:
1) It is a Negative Right - Copyright is not a positive right, but a negative right. It means, this right
stops other from exploiting the work without the copyright owner's consent or licence.
2) It is a Multiple Right -
- It is not a single right, but a bundle of rights which can exist and be exploited independently.
- The nature of these multiple rights, depends upon the categories of work.
- The literary, dramatic and musical works are grouped together for the purpose of defining these
exclusive rights.
- The rights relating to Artistic works are distinct from those relating to Cinematograph films and
Sound recordings.
3) Economic Right - The author may exploit the work himself or licence others to exploit any one or
more of the rights for consideration which may be in the form of Royalty, a lump sum payment. This
is the economic benefit to the author.
Moral Rights:
1) Right of Publication - The author has a right to publish it, or not to publish it.
2) Right to claim Authorship - The author has the right to claim authorship of a published work or
exhibited work.

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3) Right of Integrity - The right to prevent alterations and other actions that may damage the author's
honour or reputation.
Author's Special Right:
a) To claim authorship of the work.
b) To restrain or claim damages in respect of any distortion, mutilation, modification or other acts in
relation to the work which is done before the expiration of the term of copyright, If such distortion,
etc, would damage his honour or reputation.
- These rights remain with the author, even after the transfer of copyright, and these rights remain
operative till the term of the copyright.
- The author of computer programme is treated differently, and he does not have the right to restrain
or claim damages, when the making of copies or adaptation is done,
i) in order to utilize the computer programme for the purpose for which it was supplied,
ii) to make back-up copies, purely as temporary protection against loss, destruction or
damage.
Statutory Limitations - Section 52 enables other persons to exercise the rights comprised in a
copyright for specified purposes under specified circumstances and their acts would not amount to
infringement.
Main Rights: The Copyright in a work is a Creation of Statute.
(Section-14): Copyright means, the exclusive right to do or to authorize and confers various rights to
the owner/holder of copyright to do any of the following acts in respect of the work or substantial part
thereof, namely, -
In case of literary, dramatic or musical work, not being a computer programme (Section 14 (a)) -
1. To reproduce the work in any material form including the storing of it in any medium of electronic
means
2. To issue copies of works to the public, not being copies already in circulation
3. To perform the work in public or communicate to the public
4. To make any cinematograph film or sound recording in respect of such work
5. To make any translation of work
6. To make an adaptation of work
7. To do, in relation to translation or an adaptation of the work, any of the acts specified in relation to
1 to 6 above.
In case of a computer programme (Section 14 (b)) -
1. To do any of the acts specified under Section 14 (a) above.
2. To sell or give on hire, or offer for sale or hire, any copy of the computer programme, regardless of
whether such copy has been sold or given on hire on earlier occasions.
In case of artistic work (Section 14 (c)) -
1. to reproduce the work in any material form including -
(A) the storing of it in any medium by electronic or other means; or

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 (B) depiction in three-dimensions of a two-dimensional work, or
(C) depiction in two-dimensions of a three-dimensional work.
2. to communicate the work to public
3. to issue copies of the work to the public not being copies already in circulation
4. to include the work in any cinematograph film,
5. to make any adaptation of the work
6. to do in relation to an adaptation of the work any of the acts specified in relation to the work in sub
clauses 1 to 5.
In case of cinematograph film (Section 14 (d)) -
1. to make copy of the film, including -
(A) a photograph or any image forming part thereof; or
(B) storing of it in any medium by electronic or other means.
2. To sell or give on commercial rental, or offer for sale or for such rental, any copy of the film;
3. To communicate the film to the public.
In case of sound recording (Section 14 (e)) -
1. to make any other sound recording embodying it including storing of it in any medium by
electronic or other means.
2. to sell or give on commercial rental or offer for sale or for such rental, any copy of the sound
recording.
3. to communicate the sound recording to the public.
Explanation: For the purposes of this section, a copy which has been sold once shall be deemed to be
a copy already in circulation.
Short Note on COMMUNICATION TO THE PUBLIC?
Communication to the public is defined under section 2 (ff) of the Act as follows: - "Communication
to the public" means making any work available for being seen or heard or otherwise enjoyed by the
public directly or by any means of display or diffusion other than by issuing copies of such work
regardless of whether any member of the public actually sees, hears or otherwise enjoys the work so
made available.
Explanation: For the purposes of this clause, communication through satellite or cable or any other
means of simultaneous communication to more than one household or place of residence including
residential rooms of any hotel or hostel shall be deemed to be communication to the public.
By the virtue of 2012 amendment of the Act, the above definition has been revised as below:-
"Communication to the public" means making any work or performance available for being seen or
heard or otherwise enjoyed by the public directly or by any means of display or diffusion other than
by issuing copies of it, whether simultaneously or at places and times chosen individually, regardless
of whether any member of the public actually sees, hears or otherwise enjoys the work or performance
so made available.

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Explanation: For the purposes of this clause, communication through satellite or cable or any other
means of simultaneous communication to more than one household or place of residence including
residential rooms of any hotel or hostel shall be deemed to be communication to the public.
Short Note on COMMERCIAL RENTAL?
Commercial Rental is a new concept introduced by the Amendment Act of 2012. It is defined under
Section 2 (fa) of the Act as "commercial rental does not include the rental, lease or lending of a
lawfully acquired copy of a computer programme, sound recording, visual recording or
cinematograph film for non-profit purpose by non- profit library or non-profit educational institution.
Explanation: For the purposes of this clause, a "non-profit library or non-profit educational
institution" means a library or educational institution which receives grants from the Government or
exempted for payment of tax under the Income-Tax Act, 1961.
The obligation under Article 11 of the TRIPS Agreement, Article 7 of Wipo Copyright Treaty (WCT)
and Article 9 of Wipo Performance and Phonograms Treaty (WPPT) is to provide for 'commercial
rental' rights for computer programmes and cinematograph films. This right was introduced in section
14 by using the word 'hire'.
The term 'hire' in sections 14(d) & (e) with regard to cinematograph film and sound recording,
respectively, is replaced with the term 'commercial rental". The primary reason behind the
replacement is to curtail the possibility of interpreting the term 'hire' to include non-commercial hire.
The Amendment Act 2012 has introduced the above definition with the objective of expressly
clarifying that the right is not applicable to non-commercial activities of giving on 'hire' including the
activities of libraries and educational institutions.
Who is the Owner under Indian Copyright Law?
the author of the work may also be the owner of the work; but, if the work is created in exchange for
any consideration or in the course of employment, the person under whose direction the work is
created becomes the owner of the work.
For instance, if a person X hires another person Y, who is an application developer, to develop an
application for his business under a service agreement, then X will be the owner of such an
application and Y, who developed the application under X’s employment in exchange for monetary
compensation, will have authorship of the application. On the contrary, if Y had created the
application for himself or his business, he would have been both the author and the owner of the
application.
Who is the author? Short Note on Author and Owner of copyright protected work?
Concept of ownership?
An author of the work is the person who creates the work. Author is defined under Section 2 (d) of
the Copyright Act which is as follows: - author means: -
(i) in relation to literary or dramatic work, the author of the work.
(ii) in relation to musical work, the composer
(iii) in relation to artistic work other than a photograph, the artist.
(iv) in relation to a photograph, the person taking the photograph;
(v) in relation to a cinematograph or sound recording the producer, and

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 (vi) in relation to any literary, dramatic, musical or artistic work which is computer-generated, the
person who causes the work to be created;"
However, one must note that an author may create a work either (i) for himself (in which case he is
the owner of the copyright), or (ii) on behalf of another person for a valuable consideration (in which
case, in absence of contract to contrary, the person at whose instance is made is the owner of
copyright) or (iii) In course of his employment- in which case the same would depend on the nature of
employment.
Section 17 of the Act states that the author of the work is the first owner of the copyright subject to
certain exceptions in case of various works described under the Act. The exceptions for each kind of
work are mentioned below.
1. Section 17(a) – Literary, Dramatic & Artistic Work: This clause states that if an author
creates a literary, dramatic, or artistic work while working for the owner of a newspaper,
magazine, book, or other publication under a contract for publishing such work, the owner of
such newspaper or magazine becomes the first owner of the copyrighted work, unless an
agreement to the contrary is in place. Illustration – A journalist or writer working in a newspaper
house is never the owner of the work he produces; only authorship is his.
2. Section 17(b) – Photograph, painting, engraving, cinematographic film: This paragraph
states that anytime a photographer is paid to take photographs, a painter is hired to paint, and a
cinematographer is hired to shoot a film, the person who hired or caused such work to be done
becomes the first owner of the copyright. Illustration – A painter hired by a school to paint the
school’s boundary walls with storytelling paintings presenting social and moral values will not be
the first owner of the paintings he made, but the school that hired the painter will be.
3. Section 17(c) – Work made under course of employment: This section states that if a work is
made during the course of employment or a service contract, the employer becomes the first
owner of such copyrighted work. In the well-known case of V.T. Thomas and Others vs
Malayala Manorama Co. Ltd, the employee, an artist, created a cartoon character prior to his
employment with the publishing house Manorama and continued to use it after his job
terminated. The publishing house claimed that they were the first owners of the copyright
because the cartoon was utilized while the artist was working for them. Although the cartoon was
utilized by Manorama, it was not created by the artist during his employment with them; hence
he was the sole owner of the artwork.
In another case of Neetu Singh vs Rajiv Saumitra, the court agreed that the defendant had served as
a director of a company for two years, but the plaintiffs were unable to prove that the literary
work authored by the defendant was part of his employment obligations.
4. Section 17(cc) – Lectures delivered in public in behalf of another: This clause states that if a
person provides a speech in public on behalf of another person, the person on whose behalf the
speech was delivered is the original copyright owner, not the person giving the speech.
5. Section 17(d) – Work assigned by government: If a copyrightable work is created as a result of
a government tender, the government will be the first owner of the copyright deriving from and
accruing to such works. For example, the Indian government owns the copyright on the “statue of
unity,” not the engineers or architects who designed or built it.
6. Section 17 (dd) – Work made on behalf of a public undertaking: In the absence of an
agreement to the contrary, if a work is created or first published by or under the control or
direction of a public undertaking, that public undertaking will be the original owner of
Copyright.

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7. Section 17(dd) – Work of certain international organization: If an international organization
commissions someone to create a copyrightable work on its behalf, that organization will be the
original owner of the work.
8. Contract for consideration (Commissioned work): When a person has done some work under
a contract for consideration then the provider of the consideration will be the owner of the
Copyright, in the absence of a contract to the contrary. Example: Person engaged by a company
to write on a subject, the company is the owner of the copyright.
9. Composer composing a song for a film company: A composer of a song for a film company,
in the absence of a contract to the contrary the film company is the owner of the Copyright.
10.Photographer - taking a photo at the instance of another: A photographer taking a photo at
the instance of another person, in the absence of a contract to the contrary the another person is
the owner of the Copyright.
11.Short-hand Writer: If a shorthand writer takes down some matter, word by word, dictated by a
person, -the person who dictated the matter, is the author and the Copyright owner of the work.
12.Employee Teacher: If an employee teacher writes a text-book on the subject he teaches he is the
author of the work and the owner of the Copyright; since he is employed to teach and not to write
text-books.
13.Collective works: Collective works include Encyclopedias, Dictionary, Year Book, etc., the
person who collected, edited and organized the work is the first owner of the Copyright.
14.Examination papers: Copyright for exam papers is with the paper setter, as he is the author, and
not the Board of Exams, for whom the papers are set.
15.Musical Works:
a) The first owner of the Copyright in musical work is the composer of the music,
b) However, where the work is composed in the course of employment under a contract of service,
- The employer will be the first owner of the Copyright.
c) Person who Commissions a Musical work: The person who commissions a Musical Work, is not
the owner of the Copyright, -but he gets a licence to use the work for the purpose for which it is
commissioned. Thus, when a film producer commissions a Musical Work for remuneration - he
gets a right to incorporate the music in all other respects.
16.Artistic Work:
a) The artist who created the work is the first owner of the Copyright in the work.
b) Where the work is created in the course of employment, the employer will be the owner of the
Copyright.
c) In the case of commissioned work for valuable consideration the person who commissioned the
work, will be the owner of the Copyright.
d) If the employer is the owner of Newspaper, Magazine or Periodical, - his right is restricted to
the use of the work for publication in the newspaper or magazine or periodical. All the above
rules are applicable in the absence of a contract to the contrary.
e) Plan by Architect: In the absence of a contract to the contrary, - The Copyright in a plan of a
building - remains with the Architect, and the client for whom the plan is made, cannot make
copies of the plan except for private study. He cannot use the plan or design of the existing
building, even for the purpose of making extensions to that building without the permission of
the architect.

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 f) Engravings: Engraving is an artistic work, and includes etchings, lithograph, wood-cuts, or
prints -the rights of ownership of Copyright is the same as those for artistic work.
g) Photograph: i) The person who takes the Photograph is the author of the work and is the owner
of the Copyright in it. ii) Where the Photograph is taken in the course of employment or at the
instance of any person for valuable consideration, the ownership is determined in the same
manner, as in the case of artistic work, discussed above.
17.Cinematograph Film: The author and owner of a Copyright in a cinematography film, is the
producer.
18.Sound Recording: The author and owner of a sound recording - is the producer. The producer of
Cinematograph Film and a Sound Recording, is the person who takes the initiative and
responsibility for making the work.
Conclusion: As mentioned, it is understood that the copyright law draws a line of distinction between
ownership and authorship in India. Although the author will always be credited as the creator of the
work that he or she has produced in the past, ownership of the work may not necessarily remain with
the original creator. The general rule that the author is the first owner has exceptions outlined in
section 17, but if there is a contrasting agreement between the parties in the course of employment,
then the ownership can be altered based on this understanding.
What is the Period of Assignment of Copyright?
The period of assignment of copyright will be the period agreed upon by the Author and Assignee, or
if the period of Assignment is not stated in the Agreement, then it shall be deemed to be 5 years from
the date of Assignment.
The owner of the copyright in an existing work or the prospective owner of the copyright in a future
work may assign to any person the copyright wholly or partially, and either generally or subject to
limitations, and either for the whole term of copyright or any part thereof.
Explain Copyright and Assignment, Transmission and Relinquishment of Copyright?
Introduction: Intellectual property is transferable and assignable. Copyright can be exploited in
numerous manners. The owner of copyright can assign his copyright either wholly or partially or even
generally or subject to limitations, it can be assigned either for the whole period or for a part thereof.
The owner has the power to assign his entire right or only a part of it. It can also be assigned on
territorial basis depending on the arrangement between the parties.
Section 18, 19 and 19A of the Copyright Act deal with concept of Assignment of Copyright, Modes
of Assignment and Disputes with respect to assignment of Copyright respectively. Section 20 and 21
provide for transmission and relinquishment of copyright respectively.
Section 18: Assignment of Copyright - Section 18 provides for the assignment of copyright. Section
18(1) allows for the owner of the copyright in an existing work or the prospective owner of the
copyright in a future work to assign to any person the copyright in the work. Such assignment can be
either wholly or partially and either generally or subject to limitations. Further the assignment can be
either for the whole term of the copyright or any part thereof.
The agreement must specify the rights being transferred, the duration of the transfer, and the territorial
extent.
Provided that in the case of the assignment of copyright in any future work, the assignment shall take
effect only when the work comes into existence. If the owner of copyright dies before the work comes
into existence, then the legal representatives would take the place of owner of the copyright.

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Mode of Assignment - Section 19 outlines the legal requirements for a valid copyright assignment,
which are:
 In writing: Section 19(1) lays down that for an assignment of the copyright in any work to be
valid it must be in writing and signed by the assignor or by his duly authorized agent. It
emphasizes the need for a written document that clearly outlines the terms of the assignment,
including the work and rights assigned, and details the duration, territorial extent, and
consideration payable.
 Specify the work and terms: Section 19(2) mandates that the assignment of copyright in any
work shall identify such work and shall specify the rights assigned and the duration and territorial
extent of such assignment.
 Royalty: Section 19(3) The assignment of copyright shall specify the details of royalty or
consideration mutually agreed upon by the parties.
 Lapse automatically: Section 19(4) states that the assignment will lapse if the assignee fails to
exercise the rights assigned to him within one year from the date of assignment unless the
assignment specifically states otherwise.
 Term: Section 19(5) – If the period of assignment is not specified, the assignment is deemed to
be for a period of five years from the date of assignment;
 Territorial Extent- Section 19(6) If the territorial extent of assignment of the rights is not
specified, it shall be presumed to extend within India.
 In addition to the above, Section 19(8) states that in cases where the author of the work is a
member of copyright society, the assignment of copyright in any work contrary to the rights
already assigned to such society shall be void.
A copyright transfer agreement should mainly include the following:
1) Identify the work/subject of the copyright
2) The rights being transferred.
3) The duration and geographical extent of the transfer.
4) Any payment or royalties’ conditions.
5) Obligations of both parties.
6) A dispute resolution mechanism.
Disputes Regarding Copyright Assignments (Section 19a) - According to Section 19(a) of
Copyright Act, 1957, if the assignee fails to adequately exercise the rights assigned to them without
any fault on the part of the assignor, the Appellate Board has the authority to revoke the assignment.
Upon receiving a complaint from the assignor, the Appellate Board will conduct an inquiry to
determine the validity of the claim.
In the event of a dispute arising from the assignment of copyright, the Appellate Board has the power
to issue appropriate orders after conducting a thorough inquiry based on a complaint filed by the
aggrieved party.
These orders may include provisions for the recovery of any outstanding royalties that are due.
Transmission of Copyright - Transmission of copyright occurs when the rights in a copyrighted
work are transferred from one party to another by operation of law.
This can happen through inheritance, bankruptcy, or other legal mechanisms.
Transmission differs from assignment as it is not based on an agreement between the parties but rather
a legal process.

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Section 20 of the Copyright Act of 1957 addresses the transmission of copyright. It states that
copyright is transmissible by testamentary disposition or by operation of law as movable property.
The section highlights the legal framework governing the transfer of copyright in situations such as
inheritance or bankruptcy.
Transmission of copyright can occur in various ways, including:
 By Will: The copyright holder can transfer their rights through a will. Upon the holder’s
death, the rights are passed to the beneficiaries named in the will.
 By Operation of Law: In cases of bankruptcy or insolvency, the copyright may be
transferred to creditors or a trustee appointed by the court.
 Through Inheritance: If the copyright holder dies intestate (without a will), the copyright
rights are transferred to the legal heirs according to the succession laws.
Rights of the Transferee - The transferee, whether by inheritance, bankruptcy, or other legal means,
acquires the rights of the original copyright holder.
These rights include the ability to exploit the work as permitted by the Copyright Act.
The transferee can also assign or license these rights to others, subject to any legal restrictions.
Relinquishment of Copyright - Relinquishment of copyright refers to the voluntary surrender of
copyright rights by the copyright holder.
This can be done for various reasons, including the desire to place the work in the public domain or to
disclaim rights due to lack of interest or economic benefit.
Section 21 of the Copyright Act of 1957 addresses the relinquishment of copyright.
It states that the owner of a copyright may relinquish all or any of the rights comprised in the
copyright by giving notice in the prescribed form to the Registrar of Copyrights.
The section outlines the procedure for relinquishment and its effects.
 For a valid relinquishment, the copyright holder must submit a notice in the prescribed form to
the Registrar of Copyrights.
 The notice should clearly specify the rights being relinquished and be signed by the copyright
holder or their authorized agent.
 Upon receipt of the notice, the Registrar will make the necessary entries in the Register of
Copyrights.
Effects of Relinquishment - Once relinquishment is effected, the specified rights are no longer
protected by copyright.
The work enters the public domain, allowing anyone to use, reproduce, and distribute the work
without seeking permission or paying royalties.
Relinquishment is irreversible, and the former copyright holder cannot reclaim the rights once
relinquished.
Conclusion: Understanding the mechanisms of assignment, transmission, and relinquishment of
copyright is crucial for creators, rights holders, and legal practitioners.
The Copyright Act of 1957 provides a comprehensive framework governing these processes, ensuring
that the rights of all parties involved are protected and enforced.

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By following the legal provisions and formalities, stakeholders can effectively manage and transfer
copyright rights, fostering creativity and innovation in the creative industries
State the term of Copyright in various works?
The provisions regarding the duration of copyright in different works are as follows:
Section 22 - Literary, Dramatic, and Musical Works: The term of copyright is lifetime of the
author + 60 years.
o This means that the copyright protection lasts for the lifetime of the author and continues for 60
years after the author's death.
o If there are multiple authors, the term lasts for 60 years after the death of the last surviving
author.
Artistic Works: The copyright term is also lifetime of the author + 60 years. Similar to literary and
dramatic works, the term of protection lasts for 60 years after the death of the author of the work.
Section 23 - Anonymous or Pseudonymous Works: For works published under a pseudonym or
anonymously, the copyright term is 60 years from the year of publication. However, if the identity
of the author becomes known during that period, the term will be based on the author's lifetime plus
60 years.
Section 24 - Posthumous Works: In the case of posthumous works, the copyright term is 60 years
from the year of publication, starting from the year the work is first made available to the public
after the author's death.
Section 26 - Cinematographic Films: The copyright for cinematographic films is 60 years from the
year of publication. This applies whether the film was published with or without the author's name.
Section 27 - Sound Recordings: The copyright for sound recordings is 60 years from the year of
publication. If the sound recording is not published, the copyright term is 60 years from the date of
creation.
Section 28 – term of Copyright in work in Government Work: In the case of Government work,
where Government is the first owner of the copyright therein, copyright shall subsist until Sixty years
from the beginning of the calendar year next following the year in which the work is first published.
Section 28A - Term of copyright in works of public under takings: In the case of a work, where a
public undertaking is the first owner of the copyright therein, copyright shall until sixty years from the
beginning of the calendar year next following the year in which the work is first published.
Section 29 - Term of copyright in works of international organizations: In the case of a work of
an international organization to which the provisions of section 41 apply, copyright shall subsist until
sixty years from the beginning of the calendar year next following the year in which the work is first
published.
Short Note on Author’s Special Rights?
Section 57 of the Copyright Act, 1957 grants certain special rights to the authors referred to as
authors’ special rights. These rights inter alia include the right to claim authorship of the work and to
restrain or claim damages for any distortion, mutilation, or modification of his work in a manner
prejudicial to his reputation. These rights are also called the author's moral rights and are based on
Article 6bis of the Berne Convention.

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Copyright gives the exclusive right to the owner/ author of the work to restrain others from copying
his/her original works. The Copyright Act protects the moral and economic rights of the author as
well as the owner. Moral rights are inter alia referred to as the author's special rights and are
inalienable.
India, a signatory to the Berne Convention, has incorporated Article 6bis of the convention in Section
57 of the Act. This section enumerates the moral rights/special rights of the author.
Section 57 of the Act states that the author has the following rights, in addition to the economic rights
granted to the author:
1. The right to claim authorship of work (also known as the ‘Paternity Right’ under Article 6b is of
the Convention); and
2. The right to restrain, or claim damages in case of distortion, mutilation, modification, or other act
about the said work which is done before the expiration of the term of copyright if such distortion,
mutilation, modification, or other act would be prejudicial to his honor or reputation (known as the
‘Integrity Right’ under Article 6bis of the Convention).
These rights are available to the author even after assignment or transfer (in whole or part) of the
copyright.
The need for granting such rights was recognized in the case of Amar Nath Seghal vs. Union of India
(2005 (30) PTC 253 (Del)). In this case, a huge mural was displaced from its original location without
the author's permission. Delhi High Court, while granting a permanent injunction and damages. Rs
50,00,000 (Rupees Fifty Lakhs) to the author held that “When an author creates a work of art or a
literary work, it is possible to conceive of many rights which may flow. The first and foremost right
which comes to one's mind is the “Paternity Right” in work, i.e., the right to have his name on the
work”. There can be no purity without integrity. It may be a matter of opinion, but certainly, treatment
of a work that is derogatory to the author's reputation or in some way degrades the work as conceived
by the author can be objected to by the author. This would be the moral right of “integrity”.
However, in case of a computer programme, the author does not have a right to claim damages when
the copies are made or adaptation is done: - (i) in order to utilize the computer programme for the
purpose for which it was supplied or (ii) to make backup copies purely as a temporary protection
against loss, destruction or damage.
This section provides an Explanation which clarifies that Failure to display a work or to display it to
the satisfaction of the author shall not be deemed to be an infringement of the authors special rights.
The right conferred upon an author of a work as mentioned above, other than the right to claim
authorship of the work, may be exercised by the legal representatives of the author.
Explain the process of registration of Copyrights?
Copyright registration means securing the work of the creator, thereby granting legal protection. This
registration gives exclusive rights to the creator of the work. The exclusive rights and strict legal
protection that the creator gets from the registration are the foremost reasons for registering a
copyright.
Copyright registration protects, recognizes and encourages the labour, skill and capital of the creator.
The Hon'ble Supreme Court in Eastern Book Company v. D.B. Modak & Anr. (2007) held that the
object of the Indian Copyright Act, 1957 is to protect the author of the copyright work from an
unlawful exploitation of his work by others. It is pertinent to note that this object is the most fruitful
when the copyright is registered.

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It gives the copyright owner the right to stop others from exploiting the work without the consent of
the owner of the copyright. After a copyright is registered, it presents a balance between the interests
and rights of the author and that of the public in protecting the public domain.
Section 44 to 50 A set out provisions for registration of Copyrights.
Section 44 of the Act provides that the Register of Copyrights shall be kept at the Copy right office.
Such register shall be called the Register of Copyrights. The names or titles of works and the names
and addresses of authors, publishers and owners of copyright and such other particulars as may be
prescribed shall be entered in such Register of Copyrights.
Section 45 - ENTRIES IN REGISTER OF COPYRIGHTS.
(1) The author or publisher of, or the owner of or other person interested in the copyright in, any work
may make an application in the prescribed form accompanied by the prescribed fee to the Registrar of
Copyrights for entering particulars of the work in the Register of Copyrights:
Provided that in respect of an artistic work which is used or is capable of being used in relation to any
goods or services, the application shall include a statement to that effect and shall be accompanied by
a certificate from the Registrar of Trade Marks referred to in section 3 of the Trade Marks Act, 1999
(47 of 1999), to the effect that no trade mark identical with or deceptively similar to such artistic work
has been registered under that Act in the name of, or that no application has been made under that Act
for such registration by, any person other than the applicant.
(2) On receipt of an application in respect of any work under sub-section (1), the Registrar of
Copyrights may, after holding such inquiry as he may deem fit, enter the particulars of the work in the
Register of Copyrights.
Procedure
(i) Application: An author or applicant or publisher of, or the owner of or other person interested in
the copyright can file the application for registration of copyright, himself or via his authorized legal
representative. Each application has to be in Form IV and accompanied by the prescribed fee as
provided in the Second Schedule of Copyright Rules.
(ii) Inquiry/Examination: Once the application is filed, a diary number is received. There is a
provision of a mandatory wait period of 30 days, so that "No Objection" is filed against the claim
made by the author. If some objection is filed against the copyright claim, then it may take one more
month. The Registrar of Copyrights gives both the parties an opportunity of hearing the matter. After
the decision on the ownership or if the objection is rejected, the application goes for scrutiny. The
applicant is asked to remove any discrepancy, if found; within 30 days.
(iii) Registration: On further submission of documents, if the Copyright Registrar, is completely
satisfied with the completeness and correctness of the claim made in the application, he shall enter the
particulars of the copyright in the register of copyrights and further issue a Certificate of Registration,
Registration completes when the applicant is issued with the copy of entries made in the Register of
Copyrights.
Section 46. INDEXES. - There shall be also kept at the Copyright Office such indexes of the Register
of Copyrights as may be prescribed.
Section 47. FORM AND INSPECTION OF REGISTER. - The Register of Copyrights and indexes
thereof kept under this Act shall at all reasonable times be open to inspection, and any person shall be
entitled to take copies of, or make extracts from, such register or indexes on payment of such fee and
subject to such conditions as may be prescribed.

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Section 48. REGISTER OF COPYRIGHTS TO BE PRIMA FACIE EVIDENCE OF
PARTICULARS ENTERED THEREIN. - The Register of Copyrights shall be prima facie
evidence of the particulars entered therein and documents purporting to be copies of any entries
therein, or extracts therefrom, certified by the Registrar of Copyrights and sealed with the seal of the
Copyright Office shall be admissible in evidence in all courts without further proof or production of
the original.
Section 49. CORRECTION OF ENTRIES IN THE REGISTER OF COPYRIGHTS. - The
Registrar of Copyrights may, in the prescribed cases and subject to the prescribed conditions, amend
or alter the Register of Copyrights by—
(a) correcting any error in any name, address or particulars; or
(b) correcting any other error which may have arisen therein by accidental slip or omission.
Section 50. RECTIFICATION OF REGISTER BY HIGH COURT. - The High Court, on
application of the Registrar of Copyrights or of any person aggrieved, shall order the rectification of
the Register of Copyrights by—
(a) the making of any entry wrongly omitted to be made in the register, or
(b) the expunging of any entry wrongly made in, or remaining on, the register, or
(c) the correction of any error or defect in the register.
Section 50A. ENTRIES IN THE REGISTER OF COPYRIGHTS, ETC., TO BE PUBLISHED. -
Every entry made in the Register of Copyrights or the particulars of any work entered under section
45, the correction of every entry made in such register under section 49, and every rectification
ordered under section 50, shall be published by the Registrar of Copyrights in the Official Gazette or
in such other manner as he may deem fit.
Discuss the Laws relating to Infringement of Copyrights?
Copyright infringement refers to the unauthorized use of someone's copyrighted work Thus, it is the
use of someone's copyrighted work without permission thereby infringing certain rights of the
copyright holder, such as the right to reproduce, distribute, display or perform the protected work.
The owner of a Copyright has the exclusive right to do certain acts in respect of the work. If any
person does any of these acts without the authority of the owner, he will be committing an
infringement of the Copyright in the work. The nature of right depends upon the nature of the work -
1) Reproduction of the work in any material form,
2) Performance of the work in public,
3) Communication of the work to the public in certain forms,
are the usual methods by which the copyright in any work is commercially exploited for profit. If any
person without authority, commercially exploits the work for profit, he will be infringing the
Copyright.
There are 3 types of Remedies available against the infringement of copyright, namely,
1) Civil;
2) Criminal;
3) Administrative.

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Section 51 "Infringement" - Definition: Copyright in any work is deemed to be infringed
a) When any person without Licence from the Owner of the Copyright, or the Registrar of Copyrights
or in contravention of the conditions of the Licence granted or any condition imposed by the
Competent Authority under the Act,
i) does anything the exclusive right to do which is conferred upon the owner of the copyright; or
ii) permits for profit any place to be used for the communication of the work to the public, where
such communication constitutes an infringement of the copyright in the work, unless he was not
aware and had no reasonable grounds for believing that such communication to the public would
be an infringement of copyright; or
b) Where a Person,
i) makes for sale or hire, or sell or lets for hire, or by way of trade displays or offers for sale or
hire, any infringing copies of the work; or
ii) distributes, either for the purpose of trade or to such an extent as to affect prejudicially, the
owner of the copyright, any infringing copies of the work.
iii) exhibits to public by way of trade, any infringing copies of the work; or
iv) imports into India any infringing copies of the work except one copy of the work for the private
and domestic use of the importer.
The reproduction of a Literary, Dramatic, Musical or Artistic Work in the form of a Cinematograph
Film, will be deemed to be an infringing copy. In general, it is the commercial exploitation of the
work in any form, by a person without authority, that constitutes infringement.
Infringement can be determined by following –
i) Direct copying – meaning reproducing a part or portion of authors work in the infringers work.
When a person reproduces a portion of a work from an author in verbatim, the same constitutes
direct infringement. Even if the work is copied with trivial additions or omissions, the same
would amount to infringement.
ii) Indirect Copying: Indirect copying is a very common form of infringement. For eg. when a novel
is converted into a play without the consent of the author, the same would amount to indirect
infringement.
iii) Substantial Copying: As the name suggests, substantial copying means copying a major part of
the work of another. However, there are catena of cases which show that even 'part' which is
regarded as an important feature of a work, though discreet, can be regarded as substantial
copying.
Acts of Infringing Copyright (Section 51):
1) In relation to Literary, Dramatic, Musical or Artistic Works a reproduction thereof, otherwise
than in the form of a cinematograph film.
The following acts would constitute infringement of Artistic work if the same are done without
the consent or permission of the author of such Artistic work:
(i) to reproduce the work in any material form -
(A) the storing of it in any medium by electronic or other means; or
(B) depiction in three-dimensions of a two-dimensional work; or

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 (C) depiction in two-dimensions of a three-dimensional work.
(ii) to communicate the work to the public;
(iii) to issue copies of the work to the public not being copies already in circulation;
(iv) to include the work in any cinematograph film;
(v) to make any adaptation of the work;
(vi) to do in relation to an adaptation of the work any of the acts specified in relation to the
work in points (i) to (v) above.
Musical Work - In case of Musical Work the acts which amount to infringement are similar to
those of literary work i.e.,
(i) to reproduce the work in any material form including the storing of it in any medium by
electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public or communicate it to public.
(iv) to make any cinematograph film or sound recording in respect of the work;
(v) to make any translation of the work;
(vi) to make any adaptation of the work;
(vii) to do, in relation to a translation or an adaptation of the work, any of the acts specified in
relation to the work in points (i) to (vi) above;
However, the remix versions of songs are not considered infringement. But any public
performance of a song/musical work without the consent of the composer would amount to
infringement. Thus, music is played at a public restaurant and or on loud speaker which is
audible to public at large tantamount to infringement.
2) In relation to a Cinematograph Film a copy of the film or a record embodying the recording of
any part of the sound track associated with the film.
Over the years the infringement relating to cinematograph film has increased tremendously.
The following acts, if done without the consent of the producer would amount to infringement
of cinematograph film:
(i) to make a copy of the film -
(A) a photograph or any image forming part thereof; or
(B) storing of it in any medium by electronic or other means.
(ii) to sell or give on commercial rental, or offer for sale or for such rental any copy of the film;
(iii) to communicate the film to the public;
If a film is based on Chetan Bhagat's "Two States" without seeking his consent for the same,
the same would be an infringement of copyright of a literary work. However, if the same is
made with the permission of the author, the same would not amount to infringement and in
addition thereto the producer can claim copyright over such film.

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 One must also note that there is no copyright in the plot or theme of a film. Most of the films
are romantic love stories having a villain- this is a plot which has no copyright protection and
thus there is no question of infringement of such film.
3) In relation to a Sound Recording - any such record embodying the same recording.
4) In relation to a Programme in which a broadcast reproduction subsists a record, recording the
programme.
Define Broadcast under copyright act?
As per Section 2(dd) of the Copyright Act 1957, "broadcast" is defined as communication to the
public by any means of wireless diffusion (whether in any one or more of the forms of signs, sounds
or visual images; or by wire, and includes a re-broadcast.
Section 37 (3) of the Copyright Act mentions the circumstances under which the broadcasting rights
are deemed to be infringed. It states as follow:
During the continuance of a broadcast reproduction right in relation to any broadcast, any person who,
without the licence of the owner of the right does any of the following acts of the broadcast or any
substantial part thereof
(a) re-broadcasts the broadcast; or
(b) causes the broadcast to be heard or seen by the public on payment of any charges; or
(c) makes any sound recording or visual recording of the broadcast; or
(d) makes any reproduction of such sound recording or visual recording where such initial recording
was done without licence or, where it was licensed for any purpose not envisaged by such licence;
or
(e) sells or 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).
Section 39 states Acts not infringing broadcast reproduction right or performer's right: No broadcast
reproduction right or performer's right shall be deemed to be infringed by -
(a) the making of any sound recording or visual recording for the private use of the person making
such recording, or solely for purposes of bona fide teaching or research; or
(b) the use, consistent with fair dealing, of excerpts of a performance or of a broadcast in the
reporting of current events or for bona fide review, teaching or research; or
(c) such order acts, with any necessary adaptations and modifications, which do not constitute
infringement of copyright under section 52.
Who is performer? Short note on performers rights?
Under the Copyright Act 1999, the section 2(qq) clearly defines who a performer is, a performer is
defined to include an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer,
a person delivering a lecture, or any other person making a visual or acoustic live presentation.
According to the Copyright Act, a "performer" is defined as any person who makes a live visual or
auditory presentation, including actors, singers, musicians, dancers, acrobats, jugglers, lecturers, and
anyone else delivering a performance; essentially, anyone who actively participates in a performance
that can be seen or heard by an audience.

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The Act also defines “Performance” as any live visual or auditory presentation given by one or more
performers in regard to performer’s rights. In the Act, various rights are recognized to performers in
order to safeguard their interests under Chapter VIII, sections 38, 38A, 38B, 39 and 39A. Thus, rights
given to performers by the Copyright Act, 1957 are called performers rights.
The Rights of the Performer Under the Copyright Act
1. Performer has right to make sound or visual recording: A performer has the right to make the
sound or visual recording. He can also give consent to other people to record the live
performance. Without the consent of the performer, no other person can make use of that sound
recording. But, in case, their performance is for the cinematograph film and the written
agreement is made consenting the incorporation of his performance in such film then all the
rights will, therefore, be enjoyed by the producer of such film irrespective of whether the
performer is a singer or actor
2. Performer has the right to produce the sound or visual recording: A performer may also
become producer of the sound or visual recording and can enjoy all the rights that a producer
enjoys such as reproducing a number of copies, giving the copies for commercial rental,
communicating the work to the public etc. But for that purpose, the performer must have the
prior permission from the individual copyright owner like lyricist and music composer and
should have the certificate related to the sound or visual recording by the competent authority.
3. Performer has the right to broadcast performance: Performers can prevent others from
broadcasting their live performance. In case the consent of the performer is not taken and any
other individual is broadcasting his performance then it will amount to copyright infringement.
But, if the performance is for the cinematograph film and then rights will be enjoyed by the
producer of the cinematograph film but if the performance is commercially exploited for other
purposes than such film then the performer has the right to claim the royalties.
4. Performer has the right to communicate the work other than by broadcast: Performer can
use other means to communicate with the public than by means of broadcast. Broadcast means
communication to the public either by means of wireless diffusion or by wire.
Acts that constitute the infringement of performer's rights
 Reproduction of the work of performer without his consent.
 Use of performer's work without his consent.
 Use of performer's work for any other purpose for which the consent is not obtained from
performer
 Broadcast of the work of performer other than the one mentioned in Section 39 of the Copyright
Act
 Communication of the performance without the consent of performer to the public other than by
broadcast.
Acts that do not constitute infringement of performer's rights
 The act of reproducing any sound or visual recording either for the purpose of private use or for
teaching and research work only.
 In case the work is reproduced for the purpose of judicial proceeding.
 Reproduction for the purpose of reporting, reviewing or other things that come under fair
dealing.
 In case the work is reproduced for the purpose of use by members of legislature.
 Some other uses that are not considered infringement under Section 52 of the Copyright Act.

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Moral Rights of the Performer - The performer has the right to be identified for his work even
though he has given all his rights to the producer of the cinematograph film. The performer, even after
giving up their rights over the work, have the right to be recognized for their work. They also have the
right to object, in case any alteration is made in the work performed by them. In case, the producer of
the cinematograph film shortens the length of the performance or removes some portion of the work
because of some technical issues or time constraints then the moral right of the performer is not said
to be prejudiced. Moral rights of the legal representatives of the performer and legal representatives of
copyright owners are different and cannot be exercised in the same manner.
To restrain or claim damages in respect of any distortion, mutilation or other modification of his
performance that would be prejudicial to his reputation.
Some Important Case Laws
In the case of Neha Bhasin vs Anant Raj Anant[1] the Bombay High Court directed the showing of
the Plaintiffs name as the playback singer, and not as the backup singer as it was successfully proved
by the Plaintiff that she had sung the song in all versions. The Court opined that although she did not
have performers rights in the song, as that it is available only for live events, she had moral rights in
the song and had a right to have her name displayed as the “lead singer”.
In the case of Super Cassettes Industries v. Bathla Cassette Industries, the Delhi High Court held
that copyright and performers rights are two different things and in case the song is re-recorded then
the prior permission of the original singer is required.
Remedies against Performer’s Rights Infringement - The remedies are available against the
infringer of performer’s right in Section 55 and also from Section 63 to 70 of the Copyright Act. The
following remedies may be availed:
Civil Remedies: The owner of the performer’s right or his exclusive licensee may go to the court and
obtain the injunction either temporary or permanent or they may also claim damages.
Criminal Remedies: Not only civil remedy but criminal remedy is also available against the infringer.
The infringer may be sentenced for six months which may extend up to three years or may be liable to
pay a fine of Rs. 50,000 to Rs. 2,00,000 or both.
Anton Pillar Order: Sometimes the court gives permission to the plaintiff, on an application by him, to
enter into the defendant’s place along with the attorney and inspect the relevant documents. This is
necessary because the defendant may remove the documents from his premises if he knows before.
Conclusion: The rights that conferred to the performers are a very encouraging step in the field of
Copyright law. They always had a special place in the copyright work but their work was never given
the kind of appreciation that was required. Now their rights are protected under Copyright law and
also this strengthens their financial position as well.
What are the acts that do not amount to Infringement of Copyright?
If a person does any act or commits any wrong with respect to the intellectual property of author/
owner of such property without his consent, constitutes infringement. However, in order to protect the
people with creative mind and for interest for public at large, the Copyright Act provides for certain
exceptions/ defences which can be used for action against infringement.
Acts which do not constitute infringement (Section 52):
1) Fair Dealing/Fair Use -

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 a) Fair dealing with a Literary, Dramatic, Musical or Artistic work, not being a computer
programme for the purpose of private use, including research, criticism or review.
b) Making copies of computer programme for certain purposes.
c) Reporting current events in newspaper and magazines or by broadcasting or in a cinematograph
film or by means of photographs.
2) Reproduction for Judicial Proceedings and Reports -
a) Reproduction for judicial proceedings and reports thereof.
b) Reproduction exclusively for the use of members of the legislature.
c) Reproduction in a certified copy supplied in accordance with law (artistic works excluded).
3) Reading or recitation in public of extracts - Reading or recitation in public, of extracts of literary or
dramatic work.
4) Publication in a collection for the use of educational institutions in certain circumstances.
5) Reproduction by a teacher or pupil in the course of instructions or question papers.
6) Performance in the course of activities of educational institutions in certain circumstances.
7) The making of sound recording under certain circumstances.
8) The causing of a sound recording to be heard in public by utilizing it in an enclosed room or clubs
in certain circumstances.
9) Performance in an amateur club given to a non-paying audience or for religious institutions.
10) Reproduction in newspaper and magazine, of an article on current economic, political, social or
religious topics in certain circumstances.
11) Making a maximum of 3 copies for the use of a public library.
12) Reproduction of unpublished work kept in a museum or library for the purpose of study or
research.
13) Publication in newspaper of magazine, a report of a lecture delivered in public.
14) Reproduction or publication of any matter published in Official Gazette or reports of Government.
15) Reproduction of any judgment or order of Court, Tribunal or other judicial authority, not
prohibited from publication.
16) Reproduction or Publication of a translation of Acts of legislature or Rules.
17) Making or publishing of a painting, drawing or photographs of works of architecture.
18) Making or publishing of a painting, drawing or photograph or engraving of sculpture or other
artistic work permanently situate in a public place.
19) Inclusion in a cinematograph film of any artistic work permanently situate in a public place, and
other artistic work by way of background or incidental to the principal matter represented in the film.
20) In case of Computer Programmes - acts which do not constitute infringement.
21) Broadcasting Reproduction Rights - No acts of infringement, -
i) Making of any sound recording or visual recording: - for private use; or - for bona fide teaching;
or - for research purpose;

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 ii) Fair dealing on current events, - Bona fide review, - teaching or research.
iii) Such other acts with necessary adaptations and modification which do not constitute
infringement under Section 52.
22) Performers Right - acts which do not constitute infringement -
i) Making of sound recording or visual recordings, -
- for private use; or - for teaching or research; or
ii) Fair dealing, - for review, teaching, research.
iii) Reproduction for, judicial proceedings, members of the legislature, certified copy for judicial
proceedings, educational institution.
What is Reprography?
Reprography means making of copies of a work, by photocopying or by similar means. Section 2 (x)
of copyright act, 1957.
In intellectual property (IPR), "reprography" refers to the act of making copies of a copyrighted work,
typically through mechanical or electronic means like photocopying, scanning, or digital duplication,
essentially creating a facsimile of the original text or image; it's considered a form of reproduction
under copyright law and often requires permission from the copyright holder to perform.
Short Note on Fair Use/Dealing?
Doctrine of Fair Dealing is an exception to the law that would usually protect any material that would
be considered to be copyrighted as under the Indian Copyright Act, 1957 (hereinafter known as the
"Act"). It is a legal doctrine which permits a person to use any work which is protected under the Act
with limited usage of such work so as to maintain the sanctity and originality of such work as well as
the registered proprietor of the work.
The meaning of "Fair Dealing" depends on different facts and circumstances. In India, the Court
applies basic common sense so that they can determine as to what can be constituted as Fair Dealing
on the case to case basis. Fair dealing is a significant limitation on the exclusive right of the copyright
owner. It has been interpreted by the courts on a number of occasions by judging the economic impact
it has on the copyright owner. Where the economic impact is not significant, the use may constitute
fair dealing. The fair nature of the dealing depends on the following four factors:
1. the purpose of use;
2. the nature of the work;
3. the amount of the work used, and
4. the effect of use of the work on the original
In the recent amendment that has been made in the Act known as the Copyright (Amendment) Act,
2012, the concept of Fair Dealing has also included works in the line of musical or cinematographic in
nature. The reason for this is that since both personal and private works have been amended in the
recent Act except work done in the line of computer programming, the scope has become much wider
to consider what can be considered to be fair Dealing sander the Indian Regime. Also, Fair Dealing
has been considered to benefit disabled persons who can now access works including sharing with any
person with a disability for private or personal use, research or for any other educational purposes.

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Meaning by Fair Use under the Indian Copyright Act - under Indian regime legal framework being the
Copyright Act, 1957, section 52 lays down certain acts or works that cannot be considered as an
infringement of copyright namely far dealing with a literary, dramatic, musical or artistic work not
being a computer program for the purposes of fair dealing with any work, not being a computer
programme, for the purposes of –
 fair dealing with any work, not being a computer programme, for the purposes of-
(i) "private or personal use, including research;
(ii) criticism or review, whether of that work or of any other work;
(iii) the reporting of current events and current affairs, including the reporting of a lecture
delivered in public.
 the transient or incidental storage of a work or performance purely in the technical process of
electronic transmission or communication to the public;
 transient or incidental storage of a work or performance for the purpose of providing electronic
links, access or integration, where such links, access or integration has not been expressly
prohibited by the right holder, unless the person responsible is aware or has reasonable grounds
for believing that such storage is of an infringing copy:
 the reproduction of any work for the purpose of a judicial proceeding or for the purpose of a
report of a judicial proceeding;
The Court along with the above mentioned provision, also relies upon classic cases which has been
dealt in brief in the next chapter as to what and up to how much extent any work which is abridged as
under the Act can be considered to be "Fair Use" of the copyrighted work which in fact, is an
extremely technical based issue that is seen by the Court mainly looking into the fact of the case.
What are Civil Remedies against Infringement?
The Copyright Owner has got 3 kinds of remedies available against the infringer of Copyright. They
are -
1) Civil Remedy:
2) Criminal Remedy;
3) Administrative Remedy.
Civil Remedy:
- The owner of the Copyright is the plaintiff.
- An exclusive licensee, can also file a suit in which case the owner of the Copyright has to be made
the co- plaintiff.
- The civil suit may be filed for -
1) Injunction - stopping such an infringement;
2) Damages in the form of money,
3) Account of profit-i.e. the profit which the defendant made by the wrong done by selling of the
infringing copies.
4) Damages for tort of conversion.

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1) Injunction (Temporary): A temporary injunction can be granted by the Court to secure the
immediate protection of the copyright. The Court directs the defendant to refrain from infringing
the right of the plaintiff.
In this case: a) The plaintiff will have to make out a prima facie case. b) The Balance of convenience
in his favour. c) Refusal to grant temporary injunction, would cause irreparable loss to the plaintiff.
Anton Pillar Order: Anton Pillar orders are legal mechanisms that allow an applicant to search a
Defendant’s premises and seize evidence without prior notice or warning. They are often referred to
as search orders or civil search warrants.
They are similar to police search warrants but are used only in civil cases. The primary purpose of
these orders is to prevent the destruction, removal, or concealment of evidence relevant to a case. The
orders are typically used in intellectual property cases but can be used in other cases as well if the
Judge allows it.
a) This is an ex-parte order.
b) This order is passed by the Court where urgent and immediate action is required in the interest
of justice.
c) This order states that, the defendant should allow the plaintiff accompanied by the Attorney, to
enter his premises and take inspection of relevant documents and articles, and take copies
thereof or remove them for safe custody.
d) Such an order is made, where there is a great danger that, the relevant documents and
infringing articles being removed or destroyed, and thereby the ends of justice would be
defeated.
e) Such an order is called, an Anton Pillar Order named after a Plaintiff in a case where such an
order was first passed.
The main purpose of an Anton Pillar order is to stop the Defendant tampering with any evidence that
may be relevant to a Court case. It allows the applicant to investigate, remove, or obtain copies of
items like documents, data, and hard drives.
It prevents the defendant from meddling with discovery and frustrating a trial by not presenting
relevant documents and evidence.
It also ensures that the applicant has access to infringing items that would influence their case at
trial.
To ensure that a defendant does not interfere with any evidence, applications for Anton Pillar orders
are made ex-parte (without the Defendant’s notice or presence before the Court).
2) Damages or Account of Profit: The Plaintiff is entitled to 2 types of damages. They are
a) Damages for the infringement of his Copyright;
b) Damages for the infringement of his Copyright into another form.
Criminal Remedy: In addition to civil remedy, the owner of the Copyright can take criminal
proceedings against an infringer.
- Knowledge or 'mens rea', is an essential ingredient of the offence.
These two remedies (Civil and criminal), are distinct and independent, and can be taken
simultaneously.

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- The offence of infringement - punishment - imprisonment from 6 months to 3 years and with fine
from Rs. 50,000/- to Rs. 2 lakhs.
- A police officer of the rank of sub-inspector and above, is given the power to seize without warrant.
All infringing copies, wherever found and to be produced before Magistrate.
- A Metropolitan Magistrate or a Judicial Magistrate First Class, can try an offence under the Act.
- Any person can make a complaint, however, ordinarily it is the Owner of the Copyright or the
Licensee who makes the criminal complaint, and then the Magistrate takes cognizance of the offence.
Administrative Remedy: - The Copyright Act provides for the establishment of offices and
institutions, like
1. The Registrar of Copyrights.
2. The Copyright Board.
3. Copyright Societies.
- They also have certain powers to give certain remedies for violation of Copyright.
Short Note on Mareva Injunction?
A Mareva injunction, also known as a "freezing injunction," is a court order that temporarily prevents
a defendant from disposing of their assets within the court's jurisdiction, ensuring the plaintiff can
effectively enforce a potential judgment against them if they win the case, particularly when there's a
risk of the defendant dissipating assets to avoid paying damages; this injunction is often used in
intellectual property (IP) litigation to safeguard the plaintiff's interests while the case is ongoing.
The Mareva injunction is a part of a temporary injunction or a perpetual injunction. This injunction is
an unusual form of an interlocutory injunction that is intended to restrain the defendant from
disposing of the assets which may become a piece of the necessary evidence to satisfy the plaintiff’s
claim or from getting rid of it from the court’s Jurisdiction.
Mareva Injunction gets its name from the case of Mareva Compania Naviera SA v International
Bulkcarriers SA. The Court of Appeal granted an injunction to the Plaintiffs on an ex-parte
application, through which the Defendants were restricted from parting with their money in Bank of
London, so as to settle the claims of the Plaintiff in case they were able to prove the same.
CONDITIONS THAT NEED TO BE SATISFIED - In cases in which a Mareva injunction is to be
granted by the court in Intellectual property cases certain conditions are to be satisfied, they are:-
o Proof of damage is not necessary for granting the injunction if it has proved that there is an
infringement of a right
o That there will be irreparable harm or a chance for further damages.

o That the is a great probability that the defendant continues the infringement.

o That this is just not a simple rivalry matter, and a Prima facie case exists.

o That the plaintiff should be able to locate the assets to enforce any further final judgment.

o The injunction is on the principle of equity and not as a matter of right (Discretionary)

o There are a few conditions, which need to be satisfied

o The Plaintiff needs to have a legal or an equitable right justiciable in Court. Evidence needs to be
shown that the Defendant is trying to dispose of his assets so as to defeat the Judgement.

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 o In case the injunction is not granted, it would cause an irreparable loss to the Plaintiff.

o The balance of convenience should lie with the Plaintiff.

o Any other factors, which may play a material role. Eg: public interest.

Short Note on Copyright Societies?

Copyright Society is a legal body which protects or safeguards the interest of owners of the work in
which copyright subsist. The Copyright Societies gives assurance to the creative authors of the
commercial management of their works. A copyright society is a registered collective administration
society. Such a society is formed by copyright owners. The minimum membership required for
registration of a society is seven. Ordinarily, only one society is registered to do business in respect of
the same class of work. A copyright society can issue or grant licenses in respect of any other right
given by the Copyright Act.
As per Section 2 (1) (ffd) 'Copyright Society' means a society registered under Section33 (3).
The authors of creative works licence a publisher to publish the work a royalty basis. This also leads
to infringement of the work anywhere in India or abroad therefore it is extremely difficult for the
owner of the work to prevent from such infringement. To overcome such difficulty owners of
Copyright works have formed Societies to licence their works for performance or communicate to the
public or issue copies of the work to the public.
The Copyright societies are also authorized to watch out for infringement of the copyright and take
appropriate legal action against the infringers. Some of the Copyright Societies formed in India are as
follows: -
(1) Society for Copyright Regulations of Indian Producers of Films and Television (SCRIPT) for
cinematography films.
(2) The Indian Performing Rights Society Limited (IPRS) for musical works.
(3) The Phonographic Performance Limited (PPL) for sound recordings
(4) Indian Reproduction Rights Organization (IRRO) for authors and publishers
FUNCTIONS OF A COPYRIGHT SOCIETY
1. It grant license of the Copyright in the work for reproduction, performance or communication to
public.
2. It locates the infringement of the Copyright and initiates legal proceedings Sections 33 to 36A
under the Copyright Act 1956 regulate the activities Copyright Societies.
Registration Rules of Copyright Society - The registration of these societies is outlined in Section
33 of the Indian Act of 1957.
According to this section, it is prohibited for any individual or organization to issue or grant licenses
for copyrighted works, as outlined in Section 13 of the Act.
Nevertheless, an exception is made for associations, groups, or individuals who have previously
registered under Section 33 of the Act.
Additionally, the section explains that the copyright owner maintains the power to issue licenses for
their work and fulfill any responsibilities as a member of a registered copyright society.
In line with Section 33, only registered copyright societies may issue or grant licenses relating to
literary, dramatic, musical, and artistic works included in cinematograph films or sound recordings.

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Previously, the authority to grant licenses was held by performing rights societies, as specified in
Sections 33 to 36 of the Act.
The existing performing rights societies will be acknowledged as copyright societies with the
establishment of copyright societies if they have registered under the amended Section 33 of the Act.
An application must be submitted to the Registrar of Copyright for the registration of copyright
society.
The Central Government will receive this application from the registrar of the copyright office.
The Central Government will carefully review the application, taking various factors into
consideration, before granting the registration.
These conditions include:
1. The interests of authors and other rights owners under the Indian Act.
2. Consideration of the interests and convenience of the public.
3. The interests of the group of people looking to apply for licenses in relation to relevant rights.
4. The applicant’s capacity and professional competence.
The central government avoids registering multiple copyright societies for the same class of work.
If the central government determines that the said society is being operated in a manner that is
harmful to the interests of authors and other rights owners, it has the authority to revoke the society’s
registration.
During an ongoing investigation, it is within the government’s power to suspend a society’s
registration for up to 1 year.
Provisions for Tariff Scheme - Tariff schemes aid in obtaining any type of financial gain with regard
to any copyright or other right that is managed by it. For all stakeholders involved, including license
holders, this plan offers a transparent mechanism. These provisions can be found in Section 33A of
the Indian Act.
According to the provisions of this section, every copyright society has the ability to publish its Tariff
Scheme in accordance with the requirements outlined in the Copyright Rules of 2013.
If an aggrieved person is dissatisfied with the scheme, they have the right to appeal to the appellate
board.
The board will then conduct an investigation and, if necessary, issue orders to remove any
unreasonable elements of the scheme.
However, until the outcome of the appeal is determined, the individual who feels wronged must
continue to make payments to the copyright society.
During the investigation, the board also has the power to set interim tariffs and guide the parties
involved accordingly.
Provisions for the Powers of Copyright Society - Section 34 of the Act discusses the authority of
the society mentioned before. It is stated in the section that:
1. A copyright society might accept exclusive authorization of any copyrighted work from the
author and other owners of such rights. By accepting such exclusive authority, they issue licenses
or collect the license fees or both.

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 2. An author or any other owner of rights might withdraw search authorization, without injuring any
rights of the copyright society under any contract.
The Copyright Society may, at its discretion, enter into an agreement with any foreign society or
organization administering rights comparable to rights conferred by this Act.
The purpose of this arrangement would be to entrust to such a society in any foreign country the rights
administered by the aforementioned Copyright Society in India and vice versa.
Such a society should not treat works from India differently from works from other countries when it
comes to licensing terms or how money is collected.
Additional copyright society authority is outlined in this section. These are the powers:
1. A license can be issued in accordance with Section 30 by any copyright society.
2. These kinds of societies have the ability to collect copyright license fees.
3. They can share the fees with the authors or other owners if they have enough money to cover
their expenses.
4. Additionally, in accordance with Section 35, they are allowed to carry out any other
functions.
Provisions Pertaining to the Control of Copyright Societies - According to Section 35, authors and
other rights holders have the power to collectively manage copyright society. Society administers the
rights of these creative authors and rights holders. However, this regulation does not apply to foreign
societies. The following are the methods that are being used to exercise control on the copyright
societies:
1. The method of collecting and distributing fees imposed by the copyright society is subject to the
author and other rights holder approval before it may be implemented.
2. In addition to this, they are required to get permission from the authors and any other owners
before using any of the money that was collected as fees.
3. In addition to this, they are obligated to supply authors and other owners of rights with complete
and comprehensive information regarding the management of all activities on a regular basis.
The Section further specifies that all author and other right holder fees should be divided up based on
how much their works were really used. Copyright societies must have a governing body. It is made
up of members who are elected by the society.
In conclusion, all members of copyright societies should be treated equally and should not be subject
to discrimination under any circumstances.
Provisions About the Submission of Returns and Reports - Under Section 36, it is obligatory for
each copyright society to furnish reports or returns to the Registrar. Additionally, the Central
Government has the ability to nominate any officer it sees fit, who would then be tasked with
receiving and analysing all of the copyright society’s reports.
Provisions Pertaining to Performing Rights Society’s Obligations and Rights - Nothing in
Chapter VII of the Copyright Act, 1957 will alter the rights and obligations of performing rights
societies that existed on or before the day before the commencement of the Copyright (Amendment)
Act, 2012. This is stated explicitly in Section 36A.
Conclusion: Copyright societies play a crucial role in the realm of copyright law. As a recognized
legal body, they are responsible for granting licences in respect of the exclusive rights of owners of

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copyright work. These societies ensure the protection of copyright through the issuance of licenses
and the enforcement of legal proceedings when infringement of copyright occurs.
Short Note on Copyright Board?
A Copyright Board is a quasi-judicial body established under a country's copyright law, primarily
responsible for hearing and resolving disputes related to copyright infringement, licensing, and other
copyright-related issues, including adjudicating disputes over copyright ownership, assigning licenses,
and determining royalty rates for the use of copyrighted works; essentially acting as a regulatory
authority to oversee the enforcement of copyright laws within its jurisdiction.
The Copyright Board, a quasi-judicial body, was constituted by the Central Government in the year
1958. The jurisdiction of the Copyright Board extends to the whole of India. The Board is entrusted
with the task of adjudication of disputes pertaining to copyright registration, assignment of copyright,
grant of Licenses in respect of works withheld from public, unpublished Indian works, production and
publication of translations and works for certain specified purposes. It also hears cases in other
miscellaneous matters instituted before it under the Copyright Act, 1957.
It consists of a Chairman and two other members. The Chairman of the copyright board must be a
person who is or has been judge of a High Court or is qualified for appointment as a judge of a High
Court. The Central Government may after consultation with the Chairman appoint a Secretary to the
Copyright Board and such other officers and employees as may be considered necessary for efficient
discharge of functions of the Board.
Section 12 of the Copyright Act sets out the powers of the Copyrights Board as follows:
1. The Copyright Board shall, subject to any rules that may be made under this Act, have power to
regulate its own procedure, including the fixing of places and times of its sittings. However, the
Copyright Board shall ordinarily hear any proceeding instituted before it under this Act within
the zone in which, at the time of the institution of the proceeding, the person instituting the
proceeding actually and voluntarily resides or carries on business or personally works for gain.
2. The Copyright Board may exercise and discharge its powers and functions through Benches
constituted by the Chairman of the Copyright Board from amongst its members.
3. If there is a difference of opinion among the members of the Copyright Board or any Bench
thereof in respect of any matter coming before it for decision under this Act, the opinion of the
majority shall prevail. In case of no majority, the opinion of the Chairman shall prevail.
4. The Chairman may authorise any of its members to exercise any of the powers conferred on it by
section 74 (powers of Civil Court) and any order made or act done in exercise of those powers by
the member so authorised shall be deemed to be the order or act, as the case maybe, of the Board.
5. No member of the Copyright Board shall take part in any proceeding before the Board in respect
of any matter in which he has a personal interest.
6. No act done or proceeding taken by the Copyright Board under this Act shall be questioned on
the ground merely of the existence of any vacancy in, or defect in the constitution of, the Board.
7. The Copyright Board shall be deemed to be a civil court for the purposes of sections 345 and 346
of the Code of Criminal Procedure, 1973, and all proceedings before the Board shall be deemed
to be judicial proceedings within the meaning of sections 193 and 228 of the Indian Penal Code.
As per point No 4 above, the Copyright Board has the powers of a Civil Court.

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The Registrar of Copyright and the Copyright Board have the powers of a civil court in respect
of the following matters:
a. Summoning & enforcing the attendance of any person and examining him on oath (this
jurisdiction extends to the whole of India);
b. Requiring the discovery and production of any document;
c. Receiving evidence on affidavit;
d. Issuing commission for the examination of witnesses and document;
e. Requisitioning any public record or copy thereof from any court or office;
f. Any other matter which may be prescribed.
The main functions of the Copyright Board are as under:
a. Settlement of disputes as to whether copies of any literary, dramatic or artistic work or records
are issued to the public in sufficient numbers.
b. Settlement of disputes as to whether the term of copyright for any work is shorter in any other
country than that provided for that work under the Act.
c. Settlement of disputes with respect to assignment of copyright as dealt with in Section 19A.
d. Granting of compulsory licences in respect of Indian works withheld from public.
e. Granting of compulsory licence to publish unpublished Indian works.
f. Granting of compulsory licence to produce and publish a translation of literary and dramatic
works.
g. Granting of compulsory licence to reproduce and publish literary, scientific or artistic works for
certain purposes.
h. Determination of royalties’ payable to the owner of copyright.
i. Determination of objection lodged by any person as to the fees charged by Performing Rights
Societies.
j. Rectification of Register on the application of the Registrar of Copyright or of any person
aggrieved.
Meaning of Trade Marks? Characteristics? Purpose/Objective of Trade Marks law?
A trademark is a unique symbol, word, phrase, design, or combination of these that identifies a
business's products or services. Trademarks are a type of intellectual property that help protect a
brand's identity and reputation.
A Trademark is a distinctive symbol, word, phrase, or logo that identifies and distinguishes goods or
services of a particular source from that of others. It serves as a unique identifier, establishing brand
recognition and fostering consumer trust. The primary purpose of a trademark is to protect the
intellectual property of businesses, preventing others from using similar marks that could confuse
consumers.
In the dynamic business world, trademarks are crucial for establishing and safeguarding a brand's
identity. They provide exclusive rights to the owner, ensuring that consumers can easily differentiate
between products and services. Trademarks not only protect the investment and efforts businesses put

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into building their brand but also contribute to a competitive marketplace by promoting fair
competition and preventing misrepresentation.
The term Trademark refers to a recognizable sign, phrase, word, or symbol that denotes a specific
product and legally differentiates it from all other products of its kind.
One must note the Trade Mark Act is a special Act. It aims to protect trade marks from misuse,
deception and confusion. The action under the Special Act is generally speedier than that under
general law. However, action under special act is not barred, unless the general law expressly or
impliedly excludes the provision of special act. Thus, the special act prevails over the general law
unless excluded by the legislature. Section 2 (1) (m) of The Trade Mark Act, 1999 (the Act) defines a
mark as 'mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral,
shape of goods, packaging or combination of colors or any combination thereof."
Further section 2 (1) (zb) of the Act defines trade mark means a mark capable of being represented
graphically and which is capable of distinguishing the goods or services of one person from those of
others and may include shape of goods, their packaging and combination of colors.
Section 2 (1) (zg) of the Act also defines well known trade mark in relation, to any goods or services,
means a mark which has become so to the substantial segment of the public which uses such goods or
receives such services that the use of such mark in relation to the other goods or services would be
likely to be taken as indicating a connection to the course of trade or rendering of services between
those goods or services and a person using the mark in relation to the first mentioned goods or
services.
Ideally, the elements / characteristics of a trade mark are: -
1. Trade mark must be a mark of any manner such as a label, signature, number, letter or a
combination of any or all of them.
2. Trade Mark should be capable of being graphically represented.
3. Trade mark must be used (or proposed to be used) in relation to goods or services.
4. Trade mark must have a distinguishable feature from the trade mark of another.
5. Trade mark must preferably be an invented word.
6. Trade mark must show some nexus between the goods/services provided and the mark.
7. It may include the shape of goods and its packaging or combination thereof.
8. It should be descriptive of goods or services or suggestive of quality of goods. For example, The
Beauty Shop which provides beauty products.
In fact, it was held in Nirlex Spares v/s CCE (2008) 2 SCC 628 that a trade name must be descriptive
enough so as to be indicative of the nexus between the goods and the mark owner. Therefore, a
monogram with reference to a trade name not descriptive enough to serve as an indicator of the nexus
with the goods of the marketing company cannot be said to be trade name of the marketing company.
Salient features of Trademarks Act, 1999 encompass crucial aspects that define their role and
significance in the business realm:
1. Brand Recognition: Trademarks are instrumental in building and enhancing brand recognition.
They serve as visual representations of a company's reputation, values, and offerings, allowing
consumers to easily identify and recall the brand.

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2. Exclusive Rights: Trademark registration grants exclusive rights to the owner, preventing others
from using identical or confusingly similar marks for similar goods or services. This exclusivity
safeguards the brand's identity and market position.
3. Intellectual Property Asset: A trademark is a valuable Intellectual Property Asset. Their strategic
management, protection, and enhancement contribute to the overall worth of a business, often
representing a significant portion of intangible assets.
4. Renewability: Trademarks can be renewed indefinitely, provided they are consistently used and
maintained. This renewability ensures that successful trademarks can endure over time, contributing
to the long-term success of a brand.
5. Digital Presence: In the digital age, trademarks play a vital role in online visibility. They are
crucial for creating a strong digital presence, as they serve as searchable and recognizable elements in
the vast online landscape.
Need for a Trademark -
 As businesses increasingly rely on their brand reputation, the need for trademarks has grown
substantially. In a competitive marketplace, trademarks facilitate market differentiation by
allowing businesses to establish a unique identity. There is a need for trademarks to create a
sense of market differentiation.
 Through effective trademarking, companies can stand out from competitors, influencing
consumer preferences and creating a distinct market presence.
 Trademarks are integral to a company's overall business strategy. They contribute to brand
building by creating a recognizable and memorable identity, enhancing the marketability of
products or services, and influencing consumer perceptions in alignment with the company's
strategic objectives.
 The need for a trademark is indispensable for building brand identity, protecting intellectual
property, gaining a competitive edge, and fostering consumer trust – all of which are crucial
elements for the sustained success of businesses in today's dynamic and competitive markets.
The objectives of trademarks are diverse, encompassing legal, economic, and strategic dimensions.
Here are key objectives that underscore the importance of trademarks:
1. Distinctive Identification: The primary objective of trademarks is to provide a unique and easily
identifiable symbol or expression that distinguishes the goods or services of one business from those
of others. This distinctiveness aids consumers in making informed choices and fostering brand
recognition.
2. Legal Protection: Trademarks serve as a legal tool to protect the intellectual property of the
business. By registering a trademark, a business gains exclusive rights to use that mark in connection
with specific products or services, preventing others from using identical or confusingly similar marks
and guarding against unauthorized use.
3. Consumer Trust and Assurance: Trademarks play a crucial role in building and maintaining
consumer trust. A well-established trademark signifies consistent quality and reliability, creating a
positive association in the minds of consumers. This trust contributes to customer loyalty and repeat
business.

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4. Asset Value and Economic Impact: Trademarks are valuable intangible assets that can be
appreciated over time. Successfully managed trademarks contribute to the economic value of a
business, impacting its financial performance, market position, and overall competitiveness.
5. Global Expansion: Trademarks facilitate expansion into new markets, both domestic and
international. A well-protected trademark helps ensure a consistent brand image across diverse
geographical locations, contributing to successful global business endeavors.
Conclusion: Trademarks are vital in protecting intellectual property, granting exclusive rights to
unique symbols or names. They bolster brand recognition, build consumer trust, and discourage
infringement. Strategic trademark management is essential for businesses to maintain a competitive
advantage and safeguard the authenticity of creative assets in the global marketplace. Effective
enforcement of trademark rights, with the above-mentioned penalties, serves to maintain the integrity
of brands, foster fair competition, and protect consumers from confusion in the marketplace.

Various Forms of Trade Mark? Role/ Functions and qualities of Trade Mark?
A trademark is a brand name or logo associated with the company’s goods, products or services. The
consumers who buy the goods or avail of the services recognize it with its brand. The brand or
trademark may consist of words or numerals, designs or a combination of all.
A trademark can distinguish the goods or services of one person or company from those of others.
They are intellectual property rights in India. The Trademarks Act, 1999, regulates the registration
and functions of a trademark.
Primary Functions of Trademarks - A trademark primarily serves the purpose of identifying the
origin or source of goods, products or services. In India, a trademark performs the following
functions:
 It identifies the product and its origin
 It proposes to guarantee the quality of the product
 It advertises the product as it represents the product
 It creates the image of a product in the minds of the public, especially the consumers or the
prospective consumers of the product
Qualities of a Good Trade Mark: An ideal trade mark should be attractive to sound and appearance
and suggest the quality of the product. Most importantly an ideal trademark should be made in such a
manner that it can be distinctive from other trademarks of the same class and should be able to be
registered and protected. The following are the few attributes of a good trademark that should be
considered before Trademark Registration.
 It should be easy to speak and spell. A good trademark is such that the public can easily spell
and speak.
 It should be easy to remember. A good trademark that is easy to speak and spell can be easily
remembered as well. So that it becomes easy for public to understand and pronounce.

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  It should not be too lengthy and complicated to be forgotten easily. If it is lengthy or
complicated, people will not bother to take the effort to memorize it and ultimately it will be
forgotten.
 It must be distinctive. It can be natural distinctiveness or acquired distinctiveness.
 It should appeal to eye as well as ears.
 The best trademarks are invented words or coined words or unique geometrical designs
 It can only be suggestive of the quality of the products, but not descriptive.
 It should satisfy the requirements of registration.
 A good trademark should not be barred under the Trade Marks Act under the Prohibited
classes of trademarks
There are two basic types of trade marks i.e., a registered trade mark and an unregistered trade
mark.
A Registered trade mark is a trade mark which is or has been registered under the trade mark law. As
per Section 2 (1) (w) of the Act, registered trade mark means a trade mark which is actually on the
register and remaining in force. Unauthorized use of a registered trade mark would entitle the
proprietor to bring an action of infringement against such user.
An unregistered trade mark is a trade mark which is not registered under the trade mark law. An
unregistered trade mark is also called common law mark. There are higher number of unregistered
trademarks as compared to registered trademarks in India. However, in case of unauthorized use of an
unregistered trade mark, the proprietor of such mark shall have common law rights and has a legal
remedy in terms of passing off of his goods and hence can restrain the unauthorized user from using /
exploiting his trade mark.
Particular categories of trade mark are – Product Mark, Service Mark, Collective Mark, Certification
Trade Mark, shape, pattern and sound Mark.
1. Product Mark: A product mark is a type of trademark that is used on any product or good rather
than on any service. This trademark is used to identify the origins of a good or product, and it helps in
maintaining the excellent reputation of a business or organization.
All the trademark applications that are filed under trademark class 1-34 are classified as product
marks because they represent products or goods. The time required for registering a product mark is
almost 18-24 months. Some examples of product marks are Nestle and Amul.
2. Service Mark: The service mark is almost the same as the product mark, but the only difference is
that it is used on any service rather than on a product. It works for all the non-product items. The main
objective of the service mark is that it differentiates between the proprietors and the legal owners of
that service.
For example, Taj Hotels and Akasa Airline are providing services to their customers rather than
delivering any product. All the trademark applications that are filled under trademark class 35-45 are
termed as service marks because they represent no-product items such as services.
3. Collective Mark: These are particular types of trademarks that are owned by associations and
organizations. A collective mark is used to notify people about the superior qualities of a service or
product that is used to represent a collaboration.

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Even individuals or a group of individuals can use this type of trademark to represent that they are
togetherly protecting a product or service. This type of trademark holder can be a public institution, an
association, or a Section 8 company. In this type of trademark, the standards or the products are
normally set by the association owning that trademark.
Other people who want to adopt this trademark owned by any institution or association have to follow
some rules and regulations set by the owning company of that collective mark. Chartered Accountant
designation is a very commonly known collective mark in India.
4. Certification Mark: A certification mark is a type of trademark that represents the origin of a
product, its material, quality, or any other specific details that are provided by the proprietor. The
main objective of this type of trademark is to issue standards for any good or product and also
guarantee the product to the consumer.
This type of trademark can also be used to show the actual standards of any product by showing that
the specific products have undergone different testing and that the product the consumer is receiving
is of high quality. Certification marks are generally used on shoes, clothes, toys, electronics, and
packed foods. Some examples of Certification marks are ISI marks and ISO Mark.
5. Shape Mark: A shape mark is a particular type of trademark that is used to protect the shape of a
specific product or good so that the consumer identifies that product is related to a particular
manufacturer and prefers to buy the product from the place or origin only.
The shape of any particular product can be registered only if it is accepted to have a noteworthy
shape. For example, A Pepsi bottle or a Dairy Milk chocolate has specific shapes that are identifiable
with the brand.
6. Pattern Mark: A Pattern mark is used to protect the pattern of any specific product. All the
companies making some specific pattern-based products use this type of trademark to protect the
patterns of their products so that no other company can copy them.
A pattern mark is only issued to any company or organization when they succeed in proving that their
product is really unique. Pattern mark is mostly used in the fashion industry. Big brands such as Louis
Vuitton, Gucci, Fendi, and many others get Pattern marks for their products so that no other brand can
copy them.
Even many individual fashion designers such as Manish Malhotra and Sabyasachi also get pattern
marks for their products so that no bog brands can use that patterns without their permission.
7. Sound Mark: Any organization or company uses this type of sound mark to protect a particular
sound or tune. When a company receives a sound mark for any tune or sound, no other person can use
that sound without their permission, and if any still uses them, then it is a punishable crime.
The most famous sound mark in India is the magical tune of the IPL. To obtain a sound mark, the
company has to provide originality of that sound, and also, when the people hear that sound, they
should quickly identify the product or service that it is related to.
These are some of the most common types of trademarks that different companies, associations,
institutions, or even individuals use for their products and services. If you want to apply for any kind
of trademark, you should contact an attorney specializing in this field.
Short Note on Certification Trade Marks?
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.

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A Certification trademark is defined under Section 2(1)(e) of The Trade Marks Act, 1999, as a
trademark used by entities for certifying the characteristics of the goods or services as being of a
certain kind and quality. Certification trademark is an indicator of origin as well as an assurance to the
common man that the goods or services, provided under the said ‘Certification Trademark’ have been
examined, tested or in some way certified by an independent organization that itself does not trade in
those goods or provide the services. The methods of certification are determined by the owner of the
certification trademark to indicate or guarantee certain specific characteristics or quality. Popularly
known Certification Trademarks are (WOOLMARK) – this certification trademark certifies that the
products bearing are made of 100% wool; (ISI) – products bearing the ISI mark certifies that a
product conforms to an Indian standard developed by the Bureau of Indian Standards, the national
standards body of India; (HALLMARK) – certifies the purity of gold as well as silver jewelry sold
in India; (ISO – International Standardization Organization) – certifies assurance of standardization of
services provided,; and (AGMARK) –certifies quality of agricultural products in India, assuring
conformation to a grade standard set by the Government of India.
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.
Short Note on Collective Trade Marks?
A Collective trademark is defined under Section 2(1)(g) of the Trade Marks Act, 1999 as a trademark
which distinguishes the goods or services of members of an association which is the proprietor of the
trademark from those of the others. Partnership Firms within the meaning of the Indian Partnership
Act, 1932 cannot be proprietors of a Collective trademark. A Collective trademark essentially serves
as an indicator to distinguish a characteristic feature(s) of the product or service offered by entities
that form a part of that Collective or association. A Collective Trademark may be owned by an
association which may not directly use the trademark but permits the use by the members of that
association. The association duly ensures that certain quality standards and requirements in respect of
the relevant goods and services are met by its members. Some prominent examples of Collective
Trademarks are – Institute of Chartered Accountants of India, being the apex body of Chartered
Accountants in India; and – Confederation of Indian Industries.
Purpose of Collective Trademark: Collective marks are distinguishable under Indian trademark law
because they serve a specific purpose. The collective trademark’s primary goals are to:
 Inform the public about a specific aspect of an organization, its members, and the services and
goods they provide that are associated with the mark.
 You can tell the difference between organizations by comparing the quality of their products,
and services, if any.
Collective mark benefits:

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 1. To inform the public about specific product features for which collective trademark is used.
2. They promote products that have a geographical origin; by this, the product gets not only
domestic recognition but also gains international recognition.
3. It also helps in differentiating one product from another.
Collective Trademark Types:
i) The mark used by the members, and
ii) The mark used by those registered by a cooperative or association.
The regulations for collective trademarks shall include the following:
 the name of the association of persons and their respective office addresses;
 the object of the association;
 the details of the member;
 the conditions of membership and the relation of each member with the group;
 conditions governing the use of the mark, including sanctions;
 the procedure for dealing with appeals against the use of the collective marks;
 the persons authorized to use the mark; and
 the conditions of membership of the association.
Section 61-68 deals with collective trademark registration
Section 62 specifies the collective mark should not have misleading characters or significance, as
mentioned below:
1. A collective mark shall not be registered if it is likely to deceive or cause confusion to the public;
2. If it is likely to be taken to be something other than a collective mark and the registrar may require
that the mark in respect of which the application is made for registration comprise some indication
that it is a collective mark.
Section 64 provides that if the registrar satisfies the requirements for registration, he shall accept the
application together with the regulations. The acceptance may either be unconditional or subject to
conditions. Besides, the conditions can include amendments to the said regulations, if any, as he may
deem fit or refuse it and shall notify the rules if accepted.
Further, section 65 provides that the regulations shall be open to public inspection in the same way as
the registrar, as in section 148.
Section 68 explains the grounds for removal of registration of collective mark-
1. How the collective mark has been used has caused it to mislead the public as a collective mark, or
2. Grounds of non-use of the mark, under section 47.
Saving for words used as name or description of an article, under section 36.
Section 67 provides that in a suit for infringement instituted by the registered proprietor of a collective
mark as plaintiff, the court shall take into account any loss suffered or likely to be suffered by
authorized users and may give such directions as it thinks fit as to the extent to which the plaintiff
shall hold the proceeds of any monetary remedy of such authorized users.
Conclusion: Collective trademarks are an effective tool for promoting products that are unique to a
particular region. A collective mark improves product marketing and cooperation among local
producers. Collective trademarks are created when products of a specific geographic origin have a
historical, cultural, or social association with that location. As a result, the collective trademark is one

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of the essential tools for a company’s growth and the process of a collective trademark is easy and
simple.
Short Note on Well Known Trade Marks?
A "well-known trademark" is a brand name or logo that is widely recognized by the public, strongly
associated with a specific company, and enjoys a higher level of legal protection compared to regular
trademarks due to its extensive recognition and reputation; essentially, it's a mark that is so familiar to
consumers that using a similar mark could be considered trademark infringement even if the products
are different.
A well-known trademark, also known as a “famous trademark,” is a mark that has garnered
substantial public recognition and favour. These trademarks are readily distinguishable and are
strongly associated with a particular brand or product. They have expanded their influence outside of
their respective industries, garnering recognition in a variety of fields. Companies place a high value
on their well-known trademarks and afford them extensive legal protection. Example Bisleri for
Mineral water, Google: As the world’s leading search engine, Google has become synonymous with
internet searching. It’s simple and colorful logo is instantly recognizable. Nike: The Nike swoosh is
an iconic symbol in the sports and apparel industry. Nike’s “Just Do It” slogan is also widely
recognized and associated with athleticism. Amazon: The smiling arrow from Amazon’s logo
represents customer satisfaction. Amazon’s e-commerce platform is used by millions worldwide, and
its services extend beyond online shopping. Ferrari: The prancing horse emblem of Ferrari is
synonymous with luxury sports cars. Ferrari is known for its high-performance vehicles.
Section 2(1)(zg) of the Trademarks Act, 1999 defines “well-known trade mark”, “in relation to any
goods or services, means a mark which has become so to the substantial segment of the public which
uses such goods or receives such services that the use of such mark in relation to other goods or
services would be likely to be taken as indicating a connection in the course of trade or rendering of
services between those goods or services and a person using the mark in relation to the first-
mentioned goods or services.”
Provisions under the Trade Marks Act, 1999 - Section 11 (6) of the Act specifically lays down the
various factors to be taken into account by the Registrar while determining whether a trade mark is a
well-known trade mark. Factors taken into consideration while determining the trademark as well-
known are –
A. Knowledge about the mark in relevant sections public;
B. the duration, extent and geographical area in which the trademark is used;
C. the duration, extent and geographical area in which the trademark is promoted with respect to
the goods and services to which it applies;
D. registration or application for registration of the trademark to the extent they reflect the use or
recognition of the trade mark;
E. the record of successful enforcement of the rights in that trade mark including the record
stating that the trademark has been recognized as well known by any court or Registrar.
Section 11 (9) Conditions not required for well-known trademark registration - The section
specifically mentions certain conditions which need not be required for the purpose of granting of
well-known trademark. These conditions are:
 That the TM has been used in India
 That the TM has been registered;

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  That the application for registration of the trade mark has been filed in India;
 That the trade mark is well known in or registered in any other jurisdiction other than India;
 That the trademark is well-known to the public at large in India.
It can thus be stated that for a trademark to be granted protection in India, it is not necessary that the
mark owner has his business in India or its trademark is registered within India, nor is it required that
the trademark is known to the masses as a whole. Thus, the particular provision provides for the
concept of trans-border reputation of trademark.
Section 11 (10) Obligation on the Registrar - It is an obligation on the registrar that in case of a
dispute and/or infringement the registrar must protect the interest of the well-known trademark against
the identical ones and also must take into consideration and notice the ill intention
and malafide motive of the complainant or the opponent.
Filing of a well-known trademark - With the incorporation of the new Trademark Rules 2017, a
trademark owner can directly file an application for a well-known trademark to the Registrar. The said
application of request should be accompanied with a statement of case, relevant documents, evidence
and a fee of Rs. 1,00,000/- which has already been prescribed. It is also mandatory that the application
is to be filed online through comprehensive e-filing services of trademark. Once the application is
received, the application shall be considered in accordance to the documents submitted.
Remedies available for the trademark owner on misuse or infringement of well-known
trademark:
1. Prevent registration of similar and deceptive similar trademark in respect to all class of goods and
services.
2. Request removal of infringing mark.
3. Prevent incorporation of the trademark in the name or logo of any organization or corporate
name.
Punitive damages: Judiciary has opined in several cases that punitive damages shall prevent the
infringers from using and causing dilution of well-known trademarks. In case of Time Incorporated v.
Lokesh Srivastava [2005 (30) PTC 3 (Del.)], the court held that in Intellectual Property cases the court
shall grant both punitive and compensatory damages. In the instant case, the court granted Rs. 5 lakhs
as punitive damage and Rs. 5 lakhs as compensatory damage to the plaintiff for the reason of
infringement.
Conclusion: In India, as in the rest of the world, well-known trademarks hold immense value for both
businesses and consumers. They symbolize reliability, quality, and an enduring tradition of
excellence. The legal framework of India acknowledges the significance of safeguarding these
trademarks, ensuring that they continue to flourish and retain their individuality. The well-considered
legal provisions, filing procedure, and trademark rules of 2017 aid in preserving the integrity and
reputation of well-known trademarks, thereby fostering innovation and the expansion of national
brands.
Short Note on Doctrine of Honest Concurrent use?
Honest concurrent use refers to a situation where two entities, operating independently and in good
faith, use the same or similar trademarks over a period of time without intending to deceive or cause
confusion among consumers. This use must be honest, meaning that neither party is attempting to take
unfair advantage of the other’s reputation and must coexist for a substantial period.

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In trademark law, the principle of honest concurrent use serves as an exception to the general rule that
prohibits the registration of a trademark that is identical or confusingly similar to an already registered
mark. This exception is recognized in several jurisdictions, allowing businesses that have been using a
mark in good faith to continue using and even register that mark, despite the existence of a prior
identical or similar trademark.
Laws Governing of Honest Concurrent Use of Trademark in India - In India, the concept of
honest concurrent use is enshrined in Section 12 of the Trade Marks Act, 1999. This section allows
for the registration of trademarks that may be identical or similar to existing registered trademarks if
the applicant can prove that the use of the mark has been honest and concurrent. The discretion to
allow such registration lies with the Registrar of Trademarks, who must be satisfied that the
applicant’s use of the mark has been bona fide and that there is no likelihood of confusion or
deception among consumers.
Section 12 of the Trade Marks Act, 1999 reads as follows: “In the case of honest concurrent use or
of other special circumstances which, in the opinion of the Registrar, make it proper so to do, the
Registrar may permit the registration by more than one proprietor of trademarks which are identical
or nearly resemble each other in respect of the same or similar goods or services, subject to such
conditions and limitations, if any, as the Registrar may think fit to impose.”
This provision allows the Registrar to exercise discretion in permitting the registration of identical or
similar trademarks, provided that the applicant can demonstrate honest concurrent use. The applicant
must also provide evidence to support their claim, such as proof of the duration of use, advertising
expenditures and consumer perception of the mark.
Requirements for Honest Concurrent Use of Trademark - For an applicant to successfully claim
honest concurrent use, certain legal requirements must be met. These requirements vary depending on
the jurisdiction, but they generally include the following:
1. Honest Use: The applicant must demonstrate that their use of the trademark has been honest,
meaning that they did not intend to deceive consumers or take unfair advantage of an existing
trademark. The use should be in good faith and should not have been adopted with knowledge
of the prior mark.
2. Concurrent Use: The applicant must show that their use of the trademark has been concurrent
with the use of the existing trademark. This means that both parties have been using the mark
simultaneously for a substantial period.
3. Good Faith: The applicant must establish that they were unaware of the existence of the prior
registered trademark when they began using their mark. If the applicant knew of the prior mark
and still adopted the same or a similar mark, their use may not be considered honest.
4. Consumer Association: The applicant must prove that relevant consumers associate their mark
with their goods or services. This can be demonstrated through evidence of advertising, sales
and market presence.
5. No Likelihood of Confusion: The applicant must show that the concurrent use of the
trademarks is unlikely to cause confusion or deception among consumers. The Registrar will
assess whether the coexistence of the two marks is likely to mislead the public.
6. Special Circumstances: In some cases, the applicant may need to demonstrate special
circumstances that justify the concurrent use of the trademark. For example, if the applicant’s
business operates in a different geographical region or caters to a different target audience, the
Registrar may consider this a special circumstance.

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Evidence Required for Honest Concurrent Use of Trademark - To support a claim of honest
concurrent use, the applicant must provide documentary evidence to prove that their use of the
trademark has been bona fide and concurrent with the existing mark. Some of the key evidence
required includes:
 Proof of Usage: The applicant must provide evidence of the duration and extent of their use of
the trademark. This may include documents showing when the mark was first used and how it
has been used over time.
 Advertising Expenditures: The applicant must submit evidence of the funds spent on
advertising and promoting the trademark. This helps demonstrate that the mark has been widely
used and recognised by consumers.
 Sales Data: The applicant should provide sales figures and other financial data to show that the
trademark has been used in connection with goods or services in the marketplace.
 Consumer Recognition: The applicant may also submit evidence showing that consumers
associate the trademark with their business. This can include market surveys, customer
testimonials and other forms of consumer feedback.
Case Laws on Honest Concurrent Use of Trademark
1. Kores India Ltd. v. M/s Khoday Eshwarsa and Son - This case, decided under the Trade and
Merchandise Marks Act, 1958, was one of the earliest cases to establish the principles governing
honest concurrent use in India. The court held that the following factors must be considered when
determining whether a trademark can be registered based on honest concurrent use:
 The genuineness of the concurrent use.
 The quantum of use, including the duration, area and volume of trade.
 The likelihood of confusion resulting from the similarity of the marks.
 Whether any instances of confusion have been recorded.
 The inconvenience that may be caused to the parties involved.
The court emphasised that the applicant must prove that their use of the mark has been honest and that
there is no likelihood of confusion among consumers.
2. Goenka Institute of Education and Research v. Anjani Kumar Goenka - In this case, both
parties used the term “Goenka” in their trademarks for educational institutions. The court found that
both parties had started using the mark around the same time and in different geographical regions. As
a result, the court allowed the registration of both marks, subject to certain conditions, such as
requiring the appellant to include the name of their trust in brackets below the name of their institution
to avoid confusion.
Impact of Honest Concurrent Use on Trademark Law - The doctrine of honest concurrent use has
a significant impact on trademark law, as it allows for the coexistence of identical or similar
trademarks in certain circumstances. This doctrine recognises that in a dynamic marketplace, it is
possible for businesses to adopt similar marks without any intention to deceive or confuse consumers.
It provides a legal framework for resolving conflicts between trademark owners while ensuring that
the rights of both parties are protected.
However, the application of the doctrine of honest concurrent use is not without its challenges. One of
the primary concerns is the potential for consumer confusion, which is the very issue that trademark

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law seeks to prevent. The Registrar of Trademarks and the courts must carefully evaluate each case to
determine whether the concurrent use of similar marks is likely to mislead consumers.
Another challenge is the burden of proof placed on the applicant. To successfully claim honest
concurrent use, the applicant must provide substantial evidence to support their claim, which can be a
time-consuming and costly process. Additionally, the decision to allow the registration of a trademark
based on honest concurrent use is ultimately at the discretion of the Registrar, which can lead to
uncertainty for businesses.
Conclusion: The doctrine of honest and concurrent use plays an important role in balancing the rights
of trademark owners and promoting fairness in the marketplace. It provides a legal remedy for
businesses that have been using similar marks in good faith and allows for the coexistence of
trademarks in certain situations. However, the application of this doctrine requires careful
consideration of the facts and circumstances of each case, particularly the likelihood of consumer
confusion.
In India, Section 12 of the Trade Marks Act, 1999 provides a legal framework for honest concurrent
use, allowing the Registrar to exercise discretion in permitting the registration of similar marks. The
burden of proof lies with the applicant, who must provide substantial evidence to demonstrate that
their use of the mark has been honest, concurrent and unlikely to cause confusion.
State the effect of registration of trade mark/ advantages of registration? Significance?
Advantages?
A trademark is a form of intellectual property that refers to an easily recognizable word or
combination of letters or words, symbol, slogan, tagline or sign denoting a specific product and it
helps differentiate it from all other products of the same kind. Trademarks are typically used to
establish the exclusive identity over a product, and it recognizes the company’s ownership of the
brand. A good trademark is easy to pronounce and remember. At the same time, it is also unique and
has a distinctive character. A distinctive trademark helps customers distinguish your products or
services from your competitors. It is an important intellectual asset for a business, as it deters
competitors from using similar names or logos. Additionally, trademark registration also helps
customers associate visual cues with your products, thereby nurturing brand loyalty.
Trademarks may or may not be registered. However, for a trademark to be protected against
infringement, it is necessary for it to be registered. Therefore, it is of utmost significance for the
entrepreneurs to know the benefits of registering their company’s trademark.
The registration of trade mark is imperative to ensure protection of proprietor's rights. Rights
conferred by registration of trade mark are available for indefinite period by a mere periodic renewal
of registration (being a period of ten years) unlike other intellectual properties such as patents, design
copyrights etc.
EFFECT OF REGISTRATION –
 Trademark registration is essential if you want your company, brand, product, or service to
stand out from the crowd
 By registering your trademark, you may prevent potential needless rebranding by ensuring that
no lookalikes are selling imitations of your goods or services.
 Furthermore, you must register a trademark in India to safeguard your rights and preserve your
intellectual property.

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 Every aspiring business owner should be aware of the many benefits for registration of
trademark.
Major benefits of trademark registration in India
1. Exclusiveness: A registered trademark owner can use the same trademark for any product that
fits within the classifications listed in the application, known as the selective right. It stops other
parties from promoting comparable goods or services under similar trademarks.
2. Protection from infringement: When a trademark is registered, the product is given intellectual
property that grants the owner exclusive rights. As a result, any third party that uses the
trademark without the owner's consent will be prohibited from infringing on it. A trademark
infringement occurs when an unauthorized party uses a trademark that is confusingly similar to
or identical to the original owner of a registered trademark to promote goods and services that are
part of the same class of goods or services for which the original trademark is registered.
3. Set apart from competing goods: The third benefit of trademark registration is it sets a product
apart from its competitors at first glance. A customer base will be developed based on a product's
distinctive trademark and brand value. This will serve as a useful business tool. It draws
customers' attention and influences their purchasing decisions, clearing up doubts about a brand's
legitimacy.
4. Brand value and goodwill: An official trademark serves as a representation of the owner's
identity. A trademark informs customers about the business's brand value, financial stability, and
market reputation. Customers will connect a product with a certain standard of quality, features,
and market performance once it is linked to a trademark. A trademark soon starts to function as a
concrete indicator of the caliber of a good or service being provided. Therefore, it can be
concluded that by increasing customer confidence, a registered trademark would improve the
company's reputation in the marketplace.
a. Formation of a valuable intangible asset: A registered mark serves as an asset by relieving the
owner of the burdensome requirement to demonstrate uniqueness at every stage of proving the
false statements. A trademark functions as an intangible asset for accounting and income tax
purposes. In actuality, the owner may choose to sell, purchase, license, assign, utilize these
trademarks for commercial purposes, or even franchise them. It can also be a source of income
because money may be made from selling, granting licenses, or giving them to other people.
5. Recognition & Eligibility Worldwide: Since India is a party to the Paris Convention for the
Protection of Industrial Property, Indian trademark applications are entitled to special treatment
and priority when registering and protecting their marks in other signatory nations. Following
this convention, the Registered Owner may utilize the Indian trademark registration certificate to
support a priority or previous user claim. The applicant may make an application for protection
in any other contracting state within six months following the filing of such an application for the
right of priority by any one of the convention's signatory states.
6. Economical defense: A trademark registered in India is good for ten years after the application
was submitted. There is no maximum on the number of times it may be renewed; it can be
renewed whenever convenient. In India, registering a trademark online is quite easy and
affordable. Once filed, the trademark is usually awarded a few days later.
7. Draws in new clients: Trademarks also aid in the growth of the business by drawing in new
clients who will begin to associate the company's worth with the signs they see. More customers
and clients are drawn in because the company's brand is seen favorable.
8. Ten Years of Complete Security at a Reasonable Price: Online trademark registration is quick
and inexpensive, and once you're done, there aren't any further expenses to worry about. After 10
years, you must pay a little renewal charge to protect your trademark.

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 9. Facilitates the Process of Filing for Worldwide Trademark Registration: Gaining international
brand protection does not come with registering your trademark in India. You can use your
Indian trademark registration as the basis for an application to register your trademark in other
countries. Applying and benefits of international trademark registration in other countries is
simpler.
Some More Advantages of Trademark Registration in India
1. Creates Space for Business Growth: A registered trademark establishes a link between a business
and its clients. Businesses that offer cutting-edge and effective products can quickly expand their
consumer base. Additionally, your trademark aids in consumer acquisition and retention. Your
business revenues are safeguarded by the ten-year exclusive use rights that come with trademark
registration. Businesses may profit from having a large consumer base by expanding and
introducing new items.
2. Acknowledgement of the Excellence of the Goods or Services: Because customers associate your
brand's quality with its name, trademark registration validates the quality of your products. This
will assist you in drawing in new clients who will recognize the high caliber of your company's
products from your brand name or logo.
Conclusion: There are several benefits of federal trademark registration, including increased brand
value, increased commercial involvement, and access to global expansion opportunities. The owner's
exclusive right would prevent all trademark infringements and inappropriate uses. Consequently, it
can be said with certainty that a good trademark is easy to remember, which enhances a company's
image and fosters consumer confidence in its products and services while preserving the uniqueness
and distinction that make it stand out in the marketplace.
Discuss the absolute grounds for refusal of registration of Trade Marks?
GROUNDS FOR REFUSAL OF REGISTRATION OF TRADE MARK - Registration of Trade Mark
can be refused either absolutely or relatively. The absolute grounds of refusal and the relative grounds
of refusal are explained in detail below: -
Absolute grounds of refusal of trade mark - Section 9 of the Act specifies certain circumstances
under which the registration of a trade mark is refused. The grounds are:
 Marks which are devoid of any distinctive character,
 Marks that are indications or marks that are used in commerce to define the quantity, quality,
type, values, intended purpose, or geographical origin of goods or services rendered,
 Marks or indications which have become customary in the current language or in the bona fide
and established practices of the trade, shall not be registered,
 Nature of the mark is such that it can deceive the public or cause confusion,
 The mark it contains or comprises of any matter likely to hurt the religious susceptibilities of any
class or section of the citizens of India,
 If the mark comprises or contains scandalous or obscene matter,
 If the use of the mark is prohibited under the Emblems and Names (Prevention of Improper Use)
Act, 1950 (12 of 1950),
 Marks resulting from the nature of the goods themselves,
 Marks that add significant value to the goods,

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  Marks whose shape adds significant value to the goods.
These absolute grounds of refusal are related to the benefit of public policy – with the legislative
intent to protect the legitimate interest of the traders as well as the public who are genuine and bona
fide users of various marks in relation to their goods/services.
However, if a mark has acquired “distinctive character” over a period of time and has thus become a
“well known trademark”, the same won’t be refused for registration – given the fact that the applicant
is able to prove the same.
Relative Grounds for refusal of registration (Section 11) - Section 11 of the Trademark Act, 1999
mentions the relative grounds for refusal for registration of a mark. If a mark is found to confuse
public on account of a mark being identical or similar to an earlier trademark, the same won’t be
allowed for registration under this section. Various other grounds which are listed under relative
grounds of refusal are:
Section 11(1): Identity or Similarity to an Earlier Trademark - Key Point: A trademark shall be
refused registration if:
 It is identical to an earlier trademark, or
 It is deceptively similar to an earlier trademark, and the goods/services covered by the
proposed mark are similar or identical to those covered by the earlier trademark.
Likelihood of Confusion: If the public is likely to be confused or associate the new mark with the
earlier mark, it will be refused. This includes not only confusion about the origin of goods/services
but also any possible association with the earlier mark. Example: If a new brand uses a logo that is
nearly identical to Coca-Cola for soft drinks, consumers may believe that the new brand is a product
of Coca-Cola and thus confuse or associate with the earlier mark.
Section 11(2): Well-Known Trademarks - Key Point: A proposed trademark that is identical or
similar to an earlier registered trademark will be refused registration if the earlier trademark is:
 A well-known trademark in India.
 The use of the later trademark could unfairly take advantage of, or damage, the distinctive
character or reputation of the earlier well-known mark, even if the goods/services are not
similar.
Unfair Advantage and Detriment: The later trademark’s use must be without due cause. For
example, if a new company uses a famous brand's name (like "Nike") in a completely different
industry (e.g., electronics), it could still be refused if it takes unfair advantage of the brand's
reputation. Example: If a company begins selling non-sports products, such as apparel, under the
name "Nike" and confuses consumers into buying the products because they assume there is a
connection with the famous Nike brand, then this would be infringement.
Section 11(3): Rights in Existing and well-known Marks - KeyPoint: A proposed mark would be
refused registration under if its use in India can be prevented by:
 Law of passing off (protection to an unregistered trademark when in use), or
 Copyright law (if the mark infringes a copyright-protected design or logo).
Explanation: This section may refuse the trademark application if an unregistered trademark (or
other legal right) already exists and the new mark conflicts with it. Example: If a small company has
been using a logo similar to a famous artist's work for years, and the artist claims copyright over it,
the trademark may be refused.

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Section 11(4): Consent of the Earlier Trademark Owner - Key Point: A later mark is capable of
registration even though it may be conflicting with an earlier mark, where the owner of the earlier
trademark gives his consent to the registration of the later mark. Explanation: The Registrar can
place the later mark on the register in cases as mentioned under Section 12, if the circumstances exist.
Example: If two companies with similar names in unrelated industry (for example, one a bakery and
the other a software company) agree to both coexist, then the registrar may allow the registration of
both trademarks.
Section 11(5): Objection to Registration - Key Point: The provisions under clause (2) and (3) can
only be applicable if: Opposition proceedings are initiated by the proprietor of the earlier trademark.
The earlier mark holder must file objections when the trademark opposition process is underway.
Example: If a company feels that the new trademark is likely to conflict with its well-known brand, it
has to formally oppose the new registration before the Registrar.
Section 11(6): Well Known Status - Key Point: The Registrar has to take into account several
factors before determining that a trademark is well known, including
 Recognition among the public
 The geographical extent and duration of use and promotion
 The record of successful enforcement of rights, including past judicial decisions
Key Factors: These factors help determine if a mark qualifies as well-known, thus protecting it
against similar marks even for non-similar goods. Example: Coca-Cola or Apple may be recognized
as well-known trademarks because of their widespread use, advertising, and legal recognition.
Section 11(7): Factors for Determining Recognition - Key Point: The Registrar will consider the
following to determine if a trademark is recognized as well-known in a relevant section of the public:
 The number of consumers of the goods/services.
 The number of persons involved in distribution channels.
 The business circles dealing with the goods/services.
Example: A trademark used in a niche but highly recognized field, like luxury goods, will be termed
well-known in the concerned field, even if it's not well known all over.
Section 11(8): Determining Well-Known Status by Court or Registrar - Key point: If the court
and the Registrar have already given any decision that a trademark is well-known in India then by
virtue of this Act automatically it will be treated well-known for the purpose of registration.
Example: A well-known trademark like McDonald's once determined by the registrar or court then it
is sure to get protection as the well-known mark in registration purposes of trademark in the process
after coming into force.
Section 11(9): Conditions for Well-Known status - Key Point: The Registrar is not mandated to
consider the following requirements in determining whether a trademark is well-known:
 Use or registration in India.
 Registration or application in other jurisdictions.
 Public recognition in India as a whole.
Example: A brand could be considered well-known in India even if not widely used or registered in
the country so long as known within some particular public or market segment.

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Section 11(10): Protection Against Bad Faith - Key Point: The Registrar will also protect well-
known marks against registration of identical or similar marks, especially on grounds of bad faith by
applicant or opponent. Explanation, If an applicant tries to register a mark which, prima facie, tends to
deceive the public at large or is intended for attracting the benefit of an already existing well-known
mark. Thereby, it will get rejected by the registrar on the basis of bad faith.
Section 11(11): Good Faith Registration - Key Point: If a trademark is registered in good faith
disclosing all material information, or if rights had accrued through use in good faith prior to the
commencement of the Act, such registration would not be invalidated on grounds of similarity with a
well-known mark. Example: A local business that has used a mark in good faith and has been using it
for years before the trademark became famous will not lose its rights due to the later fame of a similar
mark.
In Short, Section 11 of the Trade Marks Act, 1999 provides a legal framework to avoid conflicts
between new and existing trademarks. It is a balancing factor between the rights of previously
registered trademark owners, including the already famous marks, and the potential for new
businesses to enter and register their marks under the condition that they are not taking undue
advantage or harming existing marks. It promotes fair competition and guards against confusion
amongst consumers, and it provides leniency in good faith registration and mutual consent among the
parties involved.
Explain Deceptive Similarity?
Deceptive similarity under trademark law refers to a scenario where one trademark is so similar to
another that it is likely to mislead or confuse the public. This term indicates that even though two
marks may not be identical, their resemblance in appearance, sound or meaning could cause
consumers to mistakenly associate the marks with each other.
Section 2(1) (h) of the Act defines deceptively similar. It states that a mark shall be deemed to be
deceptively similar to another mark if it nearly resembles the other mark as to be likely to deceive or
cause confusion. The legal framework, such as Section 2(1)(h) of the Trademark Act, assesses
whether marks are “deceptively similar” by evaluating their phonetic, visual and conceptual likeness.
To assess whether two trademarks are deceptively similar, several key factors should be considered:
 Nature and Purpose of Goods: Evaluate the similarity in the nature and purpose of goods
offered under the rival trademarks.
 Characteristics of the Marks: Examine the nature of each mark, which could include words,
created words, descriptive or non-descriptive names or geographical names.
 Usage of the Marks: Consider the types of goods that are currently associated with the
trademarks or likely to be associated in the future.
 Similarity in Mark Features: Assess the degree of phonetic, visual and conceptual similarity
between the marks, focusing on their essential features.
 Consumer Profile: Analyze the demographic and psychographic characteristics of potential
buyers, including their level of education, intellect and the degree of attention likely to be
exercised during their purchasing decision.
 Purchasing Methods: Reflect on the means by which the goods are purchased or orders are
placed, as this can influence the perception of the marks.

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These factors collectively help determine the likelihood of consumer confusion, which is central to
identifying deceptive similarity between trademarks.
When assessing trademark similarities, it’s important to consider different types:
Visual Similarity: This involves comparing visual elements of the marks, including any common
syllables, suffixes, prefixes, shapes and overall length. This type of similarity focuses on how the
trademarks appear visually to the consumer.
Phonetic Similarity: This type of similarity evaluates how trademarks sound when spoken. Marks
that sound alike, such as ‘Zegna’ and ‘Zenya’ or ‘Fevikwik’ and ‘Kwikheal’, can confuse consumers,
especially in oral communication or advertising.
Conceptual Similarity: This similarity assesses the ideas or concepts conveyed by the trademarks.
Marks that suggest similar ideas or themes can lead to consumer confusion even if they are visually or
phonetically distinct. Examples include ‘Gluvita’ and ‘Glucovita’ or ‘Lakme’ and ‘Likeme’, which
might evoke related images or concepts in the minds of consumers.
The Trademark Act is fundamentally designed to be consumer-friendly, prioritizing the public’s
interests alongside those of the registered trademark owner. One of the principal objectives of the Act
is to prevent consumer confusion and deception that may arise from the use of deceptively similar
trademarks.
Trademarks serve as identifiers; they distinguish a particular product among a multitude and signal to
consumers that the product originates from a specific owner. When a trademark is deceptively similar
to another, it undermines this identifying function, potentially leading to consumer misidentification
and diluting the trademark’s distinctiveness.
Moreover, allowing deceptively similar trademarks would not only confuse consumers but also
jeopardize the trademark owner’s business and the goodwill associated with their mark. This goodwill
is an intangible yet valuable asset built over time through consistent quality and consumer trust.
Protecting it is important for maintaining the economic value and integrity of the brand.
The importance of safeguarding both consumers and trademark owners from the ill effects of
trademark infringement was underscored in the case of Cadbury India Limited and Ors. vs. Neeraj
Food Products (2007). The Delhi High Court highlighted that the essence and purpose of trademark
law are to shield both the consumer and the trader from deceptive practices that exploit the reputation
and goodwill known to the public, thereby preserving the trust and reliability inherent in the
recognized trademark.
Conclusion: Deceptive similarity poses a significant threat to brand owners, undermining their hard-
earned reputation, customer loyalty, and market position. By understanding the elements of deceptive
similarity, leveraging the legal framework such as Section 11 of the Trademarks Act, 1999, and
implementing robust enforcement and protection strategies, businesses can safeguard their brands and
combat the proliferation of counterfeiters.
Explain the Procedure/process for registration under Trade Marks Act?
To obtain trademark protection, individuals or businesses chose to apply for trademark registration.
Once registered, a trademark owner gains exclusive rights to use the mark in connection with their
specified goods or services and can take legal action against others who infringe upon those rights.
Trademarks can be renewed indefinitely as long as they continue to be used and maintained according
to the legal requirements of the jurisdiction where they are registered.
who can apply:

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  Individuals: Running a business on your own. You can register a trademark in your name.
 Businesses of All Sizes: From small shops to large corporations, all business entities can
register trademarks, including proprietorships, partnerships (with up to ten partners), Limited
Liability Partnerships (LLPs), and companies (both Indian and foreign).
 Non-Profits: Even organizations like trusts and societies can register trademarks to protect
their logos and slogans.
This broad eligibility ensures that anyone with a brand they want to safeguard can take advantage of
India’s online trademark registration system. By registering your trademark, you gain legal protection
and peace of mind, knowing your brand identity is secure.
Trademark Registration Procedure in India
1. TM Search Report: Initially, the applicant must conduct a comprehensive trademark search
to ensure the uniqueness and distinctiveness of the proposed trademark. This step is vital to
prevent potential litigation and save the applicant’s time. To perform this search, visit the
official website for trademark registration in India https://ipindiaservices.gov.in.
2. Filing of Trademark Application: All necessary documents are submitted through the IP
India Official Website. The applicant can now use the symbol TM alongside their logo or
brand name. The application can be processed either online or offline.
3. Vienna Codification: The Registrar of Trademark applies the Vienna classification to the
trademark, based on its figurative elements.
4. Formalities Check: After the completion of the foregoing steps, trademarks proceed to the
stage of formality check wherein the trademark application along with the accompanying
documents undergo a thorough screening process. If any procedural discrepancy is found, a
formality check report is issued, which ought to be complied with within one month by
removing the requisite discrepancies.
5. Trademark Examination: A Trademark Officer reviews the trademark application for its
correctness and issues a trademark examination report if discrepancies found. The
examination covers mainly a few aspects such as distinctiveness, descriptiveness, and
similarity to prior trademarks. To be eligible for registration, the trademark must be
distinctive, non-descriptive, and free of similarity to existing trademarks. If the application
violates Section 9 or 11 of the Trademark Act, 1999, the Trademark Officer issues an
Examination Report with objections and lists similar brands within the same class.
6. Reply to Examination Report: The applicant or their appointed agent must respond to the
examiner’s objections within one month from receiving the Examination Report. Failure to
respond within this timeframe may result in the abandonment of the application. If the
trademark office finds the request compliant with all necessary provisions, the mark is
accepted.
7. Show Cause Hearing: If the reply to the examination report is unsatisfactory, the applicant
has the right to attend a hearing. During this hearing, the Examiner may accept, refuse, or
conditionally accept the application. If the application is accepted with conditions, the
applicant is given one month to fulfil these conditions. Only when the conditions are met, the
trademark is published. The applicant can also appeal the decision.
8. Journal Publication: If the application is accepted, the proposed mark is published in the
trademark journal for a 4-month period. During this time, the anyone can oppose the

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 trademark application. If no opposition is received within the specified period, the trademark
is considered registered.
9. Withdrawal of Acceptance: The registrar can withdraw acceptance of the application after
hearing the applicant under Section 19 of the Trade Marks Act, 1999. This typically occurs
before trademark registration.
10. Opposition: According to Section 21 of the Trademarks Act, 1999, any person has a 4-month
window from the date of trademark advertisement in the TM Journal to file an opposition.
Common grounds for opposition include:
 The trademark is similar or identical to an earlier or existing registered trademark.

 The trademark is devoid of distinctive character.

 The trademark is descriptive.

 The trademark registration application is made with bad faith.

 The trademark is customary in the current language and or in the established practices of a
business.
 The trademark is likely to deceive the public or cause confusion.

 The trademark is contrary to the law or prevented by law.

 The trademark is prohibited under the Emblem and Names Act, 1950.

 The trademark contains matters that are likely to hurt any class or section of people’s
religious feelings etc.
11. Counterstatement and Stages of Evidence: Following the notice of opposition, the next stage
involves filing a counterstatement and presenting Evidence in support of Opposition under
Rule 45(1), Evidence in Support of Application under rule 46(1), Further Evidence in Reply
by the Opponent under Rule 47 along with any additional Evidence under rule 48 of the TM
Rules, 2017.
12. Hearing with Third-Party (if any): After completing all evidence stages, a hearing is
scheduled with the Trademark Hearing Officer to decide the maintainability of the opposition.
13. Trademark Registration: If there are no oppositions or if any oppositions are set aside, the
Trademark Registration Certificate is issued, and the symbol ® can be used alongside the logo
or brand name.
14. Renewal: Trademarks are initially valid for 10 years. After this period, they can be renewed.
Common reasons for filing for rectification include non-usage for over 5 years, failure to
renew, changes in the trademark, additions of new goods or services, discrepancies with
Section 9 and Section 11 of the Indian Trade Marks Act of 1999, omissions, fraudulent
registration, and market confusion etc.
In conclusion, following the above process ensures statutory protection for the trademark. While it’s
not mandatory, it is highly recommended to consult with a trademark attorney or agent who can guide
you through the process, conduct searches, and ensure your application is in compliance with the law.
What is Infringement of Trade Mark? What are remedies available for Infringement?
Section 28 of Indian Trademark Act, 1999 discusses the rights that are vested in the registered
proprietor of a trademark. It also grants the registered proprietor an exclusive right to use the

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trademark in relation to the goods and services in respect of which the trademark is registered, and
section 29 of the act states that trademark infringement occurs when any of these rights are violated.
To put it simply, trademark infringement takes place when a person other than the registered
proprietor uses the exact similar or deceptively similar trademark to the registered trademark for
similar goods or services without the permission of the registered proprietor in order to gain unfair
advantages.
Essentials Element of Infringement - As per Section 29 of the Trade Marks Act, 1999, trademark
infringement in India can be accounted for in the following scenarios:
 Identity with a Registered Mark: Infringement occurs if an unregistered mark is identical to
a registered one for the same class of goods and services.
 Likelihood of Confusion: If an unregistered mark is similar to the infringed mark, causing
confusion among consumers.
 Similarity to a Mark with Reputation: Infringement is established if the unregistered mark
resembles a registered trademark with a recognized reputation in the market.
 Unauthorized Use on Labeling or Packaging: If the registered trademark is used on
labelling or packaging without proper authorization, it is an infringement.
 Unfair Advantage in Advertising: If the registered trademark is used in advertising to gain
an advantage detrimental to or against the trademark's reputation.
Let’s use a landmark trademark infringement case, Starbucks Corporation v. Sardarbuksh Coffee &
Co., to illustrate each of the aforementioned instances of trademark infringement. The plaintiff in this
case was ‘Starbucks Coffee,’ a well-known coffee brand with outlets in practically every country, and
the defendant was ‘Sardarbuksh Coffee,’ another coffee place with various outlets in Delhi.
Satisfying the first condition, the defendants in this case clearly attempted to confuse the public by
using a phonetically similar name and a similar logo with just reversing the Starbucks logo’s color
scheme. (Image given below)
Secondly, the defendants were utilising the trademark in connection with identical goods and services,
in this case selling coffee and associated products. Finally, the infringing mark has been used in
printed form and in advertisements, satisfying all three requirements of trademark infringement.
Remedies for trademark infringement – Civil, criminal remedies and Administrative remedies are
the available remedies for trademark infringement, and the plaintiff has the option of initiating either
or both of these actions against the defendants. For the purpose of infringement of an unregistered
trademark the common law remedy of passing- off can be invoked.
Civil Remedies: The civil remedies available in case of trademark infringement are as mentioned:
1. Damages - The damages in the form of compensation are provided to the plaintiff or the
owner of the registered trademark by the infringer.
2. Accounts of profit - Any profit gained by the infringer while using the trademark of another
registered owner, all the profit or certain amount of monetarily compensation is delivered to
the owner of Trademark.
3. Destruction of goods - The court may issue and order of destruction or eradication of all the
goods or products manufactured using the infringed mark.

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 4. Injunction - Injunction is an action that prohibits unofficial or unauthorized use of TM. The
court grants protection to the trademark owner by preventing the infringer from further using
the infringed mark.
The injunction order can be of four types:
 Anton Piller Order- the Anton Piller Injunction order is an ex-parte order which is issued to
inspect the premises of the defendant without giving any prior notice.
 Mareva Injunction- when the court prohibits defendants from using their assets within the
court’s jurisdiction until the conclusion of the trial.
 Interlocutory Injunction or temporary injunction- entails the prohibition of an action by a
party to a lawsuit until the case is resolved.
 Permanent or perpetual injunction- It is a court order requiring an individual or company to
permanently refrain from engaging in specific activities.
5. Cost of proceedings - The court can order the defendant to bear the costs of proceedings of
the plaintiff.
Criminal Remedies: The criminal remedies available in case of trademark infringement are as
follows:
 With a prison term that should not be less than six months and can be extended to three
years;
 With a fine that should not be less than 50,000 rupees and can be extended to two lakh rupees.
Administrative Remedies: Administrative Remedies are those which are available under the Act
with authorities viz., the Registrar. These authorities have certain powers relating to the copyright
like., grant or refuse of trade mark, classification of goods and services, registration of assignment and
transmission of trade mark, removal of trade mark, review of trade mark, correct or amend the
Register of marks etc and hence the owner can approach them in case of infringement.
Conclusion: A trademark carries huge weight and is valued because it has a company’s reputation
associated with it. Unfortunately, such success & popularity amongst the consumer base can have
negative consequences too, trademark infringement being one of them. Deceptively similar marks can
be used by either business to divert consumer traffic to their outlets or by counterfeiters to sell fake
products as the real deal. This can become a problem since the average customer may get fooled and
the original company may get blamed. In order to curb this menace, it is important to understand the
trademark infringement, the way it happens, its nature to transcend borders and how one can take
steps to curb trademark infringement.
Who can file suit for Infringement of Trade Mark? Who can be sued? What are defences
available to defendant? What reliefs can court pass in suit of Infringement?
The following persons can institute a suit for infringement: -
1. The Registered proprietor or his legal successor (Section 2 (1) (v) define registered proprietor in
relation to a trade mark means the person for the time being entered in the register as proprietor
of the trade mark)
2. Legal heirs of the registered proprietor of the trade mark
3. The Registered User (under Section 2 (1) (x) A registered user means person who is for the time
being registered as a registered user under section 49 of the Act)

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 4. The applicant for registration of trade mark
5. Any one of the joint proprietors of trade mark.
The following persons can be sued for infringement: -
1. The persons who infringes the trade mark.
2. The person who threatens to use the trade mark.
3. The agents of the infringer.
4. In case of a company, directors or promoters cannot be sued unless they are personally liable.
5. In a master-servant relationship, the master who orders the servant to make infringing copies is
liable to be sued.
Who is registered proprietor of Trade Mark?
A "registered proprietor" of a trademark is the individual or company officially recognized as the
legal owner of that trademark, meaning they have the exclusive right to use it in relation to the goods
or services specified in the registration, as per the relevant trademark laws in their jurisdiction;
essentially, the person who has successfully registered the trademark with the appropriate government
agency.
Section 2(1)(v) of the Trade Marks Act, 1999 defines a registered proprietor as the person who is the
owner of a registered trademark. This designation is important for establishing legal ownership and
rights.
What are defences available to defendant in case of Infringement? Which are the acts which do
not amount to Infringement of trademark?
Infringement occurs when other person uses a trademark that is same or similar to registered
trademark for the same or similar goods/services. Section 29 of the Indian Trade Marks Act, 1999,
talks about various aspect of infringement of registered trademarks.
As per Section 29(1), "a registered trademark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is
identical with, or deceptively similar to, the trademark in relation to the goods or services in respect of
which the trademark is registered and in such manner as to render the use of the mark likely to be
taken as being used as a trademark".
Section 29 of the Trademarks Act, 1999 describes trademark infringement. According to it, “a
registered trademark is infringed by a person who, not being a registered proprietor or a person using
by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively
similar to, the trademark in relation to the goods or services in respect of which the trademark is
registered and in such manner as to render the use of the mark likely to be taken as being used as a
trademark”.
Grounds of Infringement: According to Section 29 of the Trade Marks Act, 1999, the followings are
the grounds to trademark infringement in India:
 If the unregistered mark is identical to a mark registered for similar goods and services.
 The similarity of an unregistered mark with the infringed mark is likely to create confusion in
the minds of consumers.
 The unregistered mark is similar to a registered trademark having a reputation in the market.

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  The registered trademark is used on labelling or packaging without authorization.
 The registered trademark is used in advertising, taking unfair advantage detrimental or against
the reputation of trademark.
Defences Against Trademark Infringement:
1. Fair Use: In order to claim this defense, the accused infringer need to show that he got the
consent of the authorized owner or either proves that he acted without intending to defraud or
mislead the consumers of the goods. "Fair use" has been covered in two types:
a. Descriptive Fair Use: Descriptive fair can be taken as a defence where a trademark is used
in good faith for a descriptive purpose and not for a specific mark or goods and services.
b. Nominative Fair Use: Nominative fair use can be taken as defence where a mark is listed in
reference to the registered proprietor's goods and services rather than the goods and services
of the user. It is justifiable when the use of the mark is required to make the goods and
services easier to identify.
2. Prior use: Prior user of the trademark has more rights than the subsequent user even if the
subsequent user has registered the trademark. It can be taken up as a defence by the defendant
when he is using the mark for a longer period of time than the registered user and has
established reputation in his business.
Acknowledgement of "Prior Use" constitutes the following:
(1) the use of a mark identical or nearly resembling the registered mark, by a third person,
must be in relation to the goods and services for which the first-mentioned mark is
registered;
(2) the use must be a continuous use of the trademark in India;
(3) the trademark must be used by the proprietor in order to avail the protection;
(4) the mark must have been used from a date prior to the use of the registered trademark or
the date of registration whichever is earlier.
3. Non-use of the trademark by the Registered Proprietor: In this situation, the burden is on
the defendant to prove that the Registered Proprietor is not using the trademark for a long time.
Further, he needs to show that he has a legitimate interest in using that trademark which the
owner of the trademark is not using.
4. Delay and Acquiescence: In situations when there has been a delay in bringing action of the
infringement by the plaintiff, it is stated that the plaintiff's right have been waived off as the
trademark owner and implicitly or explicitly permitted use of its trademark by the subsequent
user.
5. Invalidity of Registered Mark: It can be taken up as a defence by the defendant that the
registration of mark by the plaintiff is invalid i.e. is being done through an unfair advantage. in
such case, it would not be called as a trademark infringement.
Remedies for Trademark Infringement: There are the remedies for which the plaintiff is entitled to
claim for infringement or passing off of his trademark.
 Injunction by prohibition of use of the infringing
 Injunction by cancellation of the registration, if the mark has been

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  Damages (may include punitive damages) or account of
 Costs towards legal
In order for a court to award compensatory as well as punitive damages, proof of deception and
intention of the infringer to infringe the plaintiff’s trademark must be established. In the case of a
criminal proceeding, as per section 103 of the Act , the court may dictate:
 Imprisonment for a period not less than six months that may extend to three years
 A fine that is not less than Rs 50,000 that may extend to Rs 2 lakh
Conclusion: The protection of the trademark is necessary for the business point of view as well as for
the protection of customers from fraud and cheating. Even though the act provides for the defences
available to the defendant still the burden of proof is on the defendant only to prove that he has not
infringed the trademark.
Section 30 of the Trademarks Act, 1999 lays down the certain conditions wherein a trademark
cannot be said to have been infringed. Such conditions can be used by the alleged infringer as
defences in suits for infringement of trademark and hence escape his liability. These conditions
include:
1. When any person makes use of a trademark in accordance with honest practices in industrial or
commercial matters;
2. When such use is not in pursuit of taking undue advantage or proves to be detrimental to the
distinctive character or repute of the trademark.
3. Use of a mark for the indication- Whenever any trademark is used in order to indicate the kind,
quality, quantity, intended purpose, value, geographical origin, the time of production of goods
or of rendering of services or any other characteristics of goods or services,
4. Use of mark which is outside the scope of registration- When trademarks are registered, there are
certain cases where they are subjected to certain conditions and limitations. Whenever the
alleged infringement is under the ambit of those limitations, then it does not constitute to be a
case of infringement of trademarks.
5. Implied consent Whenever the infringed use of a trademark is in the continuance of the permitted
use by the original proprietor who has subsequently not removed or obliterated it, in such cases
the use cannot be said to be an infringement.
6. Use of trademark in relation to parts and accessories
7. Use of trademarks identical or similar to each other
In addition to the above statutory defences, the defendant may also plead the following defences: -
1. That the trade mark is not that of the proprietor and accordingly the plaintiff has no right to
sue for the same.
2. If anything is done or intended to be done by the defendant in pursuance of this Act in good
faith (Section 122)
3. That the defendant has also concurrently registered his trade mark.
4. That the defendant is an honest concurrent user.
5. That the mark is merely the defendant's bonafide use of his own name, address and
description of goods.
6. That the rights of the plaintiff have ceased to exist.
7. That the registration of plaintiff is not valid.
8. That plaintiff has acquiescence the use of mark in question.
9. That the defendant has not renewed its trade mark.

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 10. That the defendant has obtained the trade mark fraudulently.
11. That the goods or business of the plaintiff and the defendant are totally different.
12. That the trade mark, the use of which is sought to be restrained, is not distinctive of the
plaintiff's goods or business and has not acquired reputation.
Short Note on Permitted User? Sub Licensing?
A "permitted user of a trademark" is a person, other than the registered owner of the trademark, who
has been granted explicit permission by the trademark owner to use the mark in relation to specific
goods or services, typically through a licensing agreement, and is considered a "registered user" under
the law, allowing them to legally use the trademark within the defined parameters of the agreement;
essentially, they are authorized to use the trademark with the owner's consent.
Sub-licensing of a trademark refers to a licence grant to a third party by a licensee in the form of
written agreement to use the trade name, logo or specified rights with the prior consent of the
Registered proprietor of the trademark.
Need for sub-licensing of a trademark-The companies grant trademark license to expand their trade
and commerce to other countries in the world by providing several rights to use the name of the brand
while in the expansion of trade and commerce in the process they need products which could be
available within the local jurisdiction to provide a quality product with the original brand name which
is cost-effective with no compromise in the quality or contents of the product. With companies
headquartered at different states/countries gives such licence to the licensee to provide a further
licence/sub-license with restricted rights to come in business with the local traders and vendors. Such
use is considered as "permitted use" is allowed by the Trade Mark Act, 1999 under Section 2(1) (r).
The permitted use consists of quality control, the distinctiveness of the mark, ownership of the mark,
goodwill over the mark. All such rights are reserved by the Registered Proprietor of the Trade Mark.
The Trade Marks Act, 1999 does not exclusively provide for licensing/sub-licencing of a trademark
but it provides for "permitted use" one 'by registration of the third party as a registered user and
another 'without registration as a registered user' by the third party but subject to certain conditions
which are defined under Section 2(1)(r) of the Act as-
Section 2(1)(r) "permitted use", in relation to a registered trademark, means the use of trademark -
(i) by a registered user of the trademark in relation to goods or services
1. with which he is connected in the course of trade; and
2. in respect of which in the trademark remains registered for the time being; and
3. for which he is registered as a registered user; and
4. which complies with any conditions or limitation to which the registration of the registered
user is subject; or
(ii) by a person other than the registered proprietor and Registered User in relation to goods or
services.
1. with which he is connected in the course of trade; and
2. in respect of which the trademark remains registered for the time being; and
3. by consent of such registered proprietor in a written agreement; and
4. which complies with any conditions or limitation to which such user is subject and to
which the registration of the trademark is subject

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Section 2(1)(r) clearly states that the Trade Marks Act, 1999 provides for the use of registered
trademarks by the registered proprietor, registered user and third party (any other person other than
registered proprietor and the registered user). A registered proprietor of the mark may grant certain
rights to the registered user or users, as the case may be or any third party by the way of a written
agreement to grant non-exclusive, limited rights for the use of their trademark by controlling the
quality, maintaining the goodwill and safeguarding the exclusive rights to the registered proprietor. As
regards to the unregistered trademark, the courts have recognized licensing as legitimate and lawful
provided proper control over the use of the mark by the licensee is maintained and care is taken to see
that the ownership of a mark vests with the owner and is indicated to the public. This is called
common law licensing.
Process of sub-licensing of trademarks - The Act does not specify any procedure for sub-licensing
of trademarks but it has provided for the permitted use as mentioned above with the prior consent of
the Registered Proprietor. Hence, it could be sublicensed as per the common law practice in the
following two ways:
Before signing the licensing agreement: A licensee (Registered User) while entering into the
agreement with the Licensor (Registered Proprietor) shall insert in the licensing agreement a clause
for sub-licensing of trademark and/or any such rights granted to the licensee.
After signing the licensing agreement: A Registered User (Licensee) during the term of license and
with the written consent of the Licensor can enter into an agreement with the sub-licensee by
following the steps mentioned below:
Consent from the registered proprietor: The Licensee needs to take consent from the Licensor in a
written agreement for the grants of specified rights and use of the trademark.
Trademark sub-license agreement: After obtaining the consent from the Licensor, the sub-licensor
(Registered User) should come to terms with the sub-licensee by signing the Trademark sub-licensing
Agreement.
Acceptance by the registrar: The Registrar may give acceptance keeping in mind the terms of
agreement for the grant of sub-license to the sub-licensee as a permitted use in a controlled manner
where the rights of the Registered Proprietor can be protected and the misuse of the mark must be
avoided.
The Registered Proprietor should inform other registered users of the trademark if any about the sub-
licensing.
Conclusion: A Trademark being the indicator of the origin of the product and service must be
associated with the proprietor. Sub-licensing is a way to expand trade and business with other
proprietors. The licensing agreement should be drafted with such care that it keeps the distinctiveness
of the mark while monitoring the quality control of the product and exclusive rights over the
trademark by the proprietor. Although, there is no specified definition has been provided in the
trademark Act regarding sub-licensing but can be inferred from the provisions of section 2(1)(r).
While it is not exclusively provided for sub-licensing, it does not restrict or prohibit sublicense of the
mark.
Short Note on Passing Off Action?
"If a person sells his goods as the goods of another," then the trademark owner can take action as this
becomes a case of passing off. Passing off is used to protect or safeguard the goodwill attached to an
unregistered trademark. When the trademark has been registered by the owner and infringement

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happens, then it becomes a suit for infringement, but if the trademark has not been registered by the
owner and infringement happens, then it becomes a case of passing off.
The principle of passing off, i.e., "Nobody has the right to represent his goods as the goods of
somebody else, was decided in the case of Perry v. Truefitt (1847). The passing off law has changed
over time. Previously, it was restricted to depicting one person's goods as another. Later, it was
extended to trade and services. This was later expanded to business and non-business activities. Now,
it applies to many forms of unfair trade and unfair competition where one person's activities harm the
goodwill associated with the activities of another person or group of individuals.
Passing off action finds its origin in the common law principle, and the damages claimed in this action
are unliquidated damages. The common law principle states that any person should not sell his goods,
deceiving the other in a manner that person is buying, under the pretence that those goods are of
another person.
The term 'Passing off is not defined by the Act. However, it has been mentioned in Sections 11 (3) (a),
27, 134 and 135. The specific description of passing off is not given in the Trademark Act but the
courts have drawn meaning from common law. Passing off occurs where the mark is not only
deceptively similar to the trademark of another but also creates confusion for the customers which
ultimately results in damage to goodwill and business of the unregistered owner of the mark. The
main purpose of the passing off action is to ensure that’s the goodwill and reputation are not affected
or exploited merely because of non-registration.
The elements of passing off are as follows: -
(i) Misleading or deceiving the public. However, intention to deceive is not necessary.
(ii) Passing off is done in the course of trade or business.
(iii) It affects the business and goodwill of the proprietor.
(iv) It affects the reputation of the proprietor.
(v) Generally, in passing off the parties are engaged in the trade of the same or similar products or
closely related products and services
Some of the instances of passing off are (Passing off is said to be occurred when any of the following
are done): -
(i) Copying of someone's mark directly / direct false representation;
(ii) Copying of another's colour scheme of the mark or label;
(iii) Copying or imitating the design of goods;
(iv) Copying the shape of goods;
(v) Adapting a mark which is same or is deceptively similar;
(vi) Copying the essential part of the trade mark of another.
The essential characteristics which must be present in order to create a valid cause of action for
passing off: -
1. Misrepresentation of Trademark: The core element is the defendant's misrepresentation of
the plaintiff's trademark. This can involve using identical or deceptively similar trademarks that
create confusion in consumers' minds.

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 2. In the Course of Trade: The misrepresentation must occur in a commercial context. The
defendant's actions must be related to the marketing or selling goods or services.
3. Targeting Customers: The misrepresentation should be directed towards the same customers
who typically purchase the goods or services associated with the genuine trademark.
4. Intent and Damage (Not Always Required): While some courts consider ill intention
(deliberate attempt to deceive) a factor, it's not always necessary. Even if the misrepresentation
is not intended, it can lead to passing off if it causes damage. This damage can be in the form of
loss of sales, dilution of brand reputation, or tarnishing the trademark.
5. Misleading Consumers: The main thing is that the misrepresented trademark deceives
consumers into believing they are purchasing goods or services from the original owner. This
deception can occur through the brand name, packaging, marketing materials, or any element
that creates a likelihood of confusion.
In essence, a passing-off action arises when a competitor's actions mislead consumers, causing them
to believe they are interacting with a different brand than intended. This ultimately undermines the
goodwill and reputation associated with the genuine trademark.
In short, "passing off" is a common law legal right of action which you can pursue if someone
deliberately or even unintentionally misrepresents, or passes off, their goods or services as belonging
to your organization.
Distinguish between Infringement Action & Passing off?

Infringement Action Passing Off Action

It is a statutory right It is a common law right

Registration of trade mark is necessary to Registration is not a pre-requisite

institute a suit for infringement.

Plaintiff is only required to establish that the Plaintiff is not only required to establish deceptive
infringing mark is deceptively similar to the similarity of the two contesting marks but also
registered mark in respect of same or similar required to prove deception or confusion among
good or services and no further proof is required public and the likelihood of injury to the plaintiff's
as there exist a presumption of confusion mark

Prosecution under criminal remedy is easier Prosecution under criminal remedy is relatively
harder

Use of mark by the defendant need not cause Use of the mark must cause or likely to cause
injury or damage to plaintiff injury or damage to plaintiff's goodwill

Applies only to goods Applies to goods as well as services

Use of registered trade mark or a mark similar Use of the mark is not essential. Use of get-up,
to it is necessary and sufficient color, scheme or any of the essential feature of the
mark is sufficient

Infringement need not lead to passing off Passing off need not lead to infringement

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 Benefit of institution of suit under section 134 PNo benefit under Section 134 is available.
of the Act is available wherein the Registered Regular rules of jurisdiction under Section 20 of
Proprietor or registered User of the trade mark the Code of Civil Procedure are applicable and
can institute the suit where they actually and hence the suit for passing off has to be instituted
voluntarily reside or carry on business or where the defendant resides or carries on business
personally work for gain. or where the cause of action arose.

Infringement is based on property acquired by Passing off is based on the property acquired by
registration and there-fore the use of the mark is good will and by the use of the mark.
not relevant.

Short Note on Anton Pillar?

An Anton Piller order (otherwise known as a search order) is a court order which permits inspection
of the defendant or respondent's premises and civil search for and seizure of relevant materials and
documents. The purpose of an Anton Piller order is to preserve evidence which may be in danger of
destruction or concealment.
Anton Piller orders are legal mechanisms that allow an applicant to search a Defendant’s premises and
seize evidence without prior notice or warning. They are often referred to as search orders or civil
search warrants.
They are similar to police search warrants but are used only in civil cases. The primary purpose of
these orders is to prevent the destruction, removal, or concealment of evidence relevant to a case. The
orders are typically used in intellectual property cases but can be used in other cases as well if the
Judge allows it.
A Search Order, historically termed an Anton Piller Order, is a powerful legal tool within the English
and Welsh legal systems. It allows for the preservation of evidence that might be vital in legal
proceedings, particularly in cases concerning the infringement of intellectual property rights or the
misappropriation of confidential information. Essentially, it permits the applicant, typically a
business, to enter the premises of the alleged infringer to search for, copy, and remove documents or
materials relevant to the case.
This type of order is granted without prior notice to the respondent (the party against whom the order
is issued), making it a drastic but sometimes necessary action to prevent the potential destruction or
concealment of evidence. Given its intrusive nature, a Search Order is only issued under stringent
conditions and when there is clear evidence of a serious infringement.
The legal foundation of Anton Piller Orders lies within the Civil Procedure Rules (CPR) and the
inherent jurisdiction of the High Court. The landmark case of Anton Piller KG v Manufacturing
Processes Ltd (1976) established the precedent for these orders, hence the nomenclature. The
principle behind issuing such an order is the preservation of evidence that is in danger of being
destroyed, altered, or hidden by the respondent.
To obtain an Anton Piller Order, the applicant must convincingly demonstrate to the court that:
1. There is an extremely strong prima facie case.
2. The damage, potential or actual, must be very serious for the applicant.

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 3. There is clear evidence that the respondents possess incriminating documents or items, and
there is a real possibility that they may destroy such material before any application inter
partes can be made.
The court exercises its discretion with extreme caution, balancing the need to preserve evidence with
the potential for injustice or undue harm to the respondent.
The main purpose of an Anton Piller order is to stop the Defendant tampering with any evidence that
may be relevant to a Court case. It allows the applicant to investigate, remove, or obtain copies of
items like documents, data, and hard drives.
It prevents the defendant from meddling with discovery and frustrating a trial by not presenting
relevant documents and evidence.
It also ensures that the applicant has access to infringing items that would influence their case at
trial.
To ensure that a defendant does not interfere with any evidence, applications for Anton Piller orders
are made ex-parte (without the Defendant’s notice or presence before the Court).
Anton Piller orders originate from the case, Anton Piller KG v Manufacturing Processes Ltd and
Others (1976). The case involved a pharmaceutical company, Anton Piller KG, accusing the
respondents, Manufacturing Processes Ltd, of revealing confidential information to other competitor
manufacturers. The court had to decide whether an order for inspection and removal of documents
should be granted to the Anton Piller KG.
This case established the legal basis for the use of Anton Piller orders. The decision recognised that
traditional legal remedies were often inadequate to prevent the destruction of crucial evidence. This
was especially important in this case where the Appellant’s claim was entirely reliant on the
possession of such evidence.
Anton Piller orders are a powerful tool in the legal world that ensure the pursuit of justice while
upholding the fundamental principles of fairness and due process. By allowing the Applicant to search
and seize evidence without prior notice, these orders protect against the destruction or concealment of
crucial materials.
Short Note on Assignment & Transmission?
[1] Scope of Assignment or Transmission (Sections 37 to 45):
- A Registered Trademark can be assigned or transmitted whether with or without the good-will of
the business concerned.
- Under the Trade Marks Act, 1999, an unregistered Trademark is also assignable or transmissible
with or without the good-will of the business concerned.
- Certain restrictions on assignment or transmission are imposed to prevent the creation of multiple
exclusive rights.
- Where the assignment is without the good-will of the business, special conditions are imposed.
They are as under -
i) Associated Trade Marks can be assigned or transmitted only as a whole.
ii) Certification Trade Marks cannot be assigned or transmitted without the consent of the
Registrar of trademark.
iii) An assignment of Trade Mark must be in writing.

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- No specific form has been prescribed.
- Transmission means, transmission by operation of law - it devolves on the personal representative of
a deceased person. - The law relating to transmission of a Trademark is the same as that of
assignment.
- Sale and transfer of good-will of business, will transfer to the purchaser/transferee - the Trademark
used in the business by implication, even if the Trademarks are not specifically mentioned in the deed
of assignment. This is because a Trademark is a part of the good-will of the business.
[2] Assignment of an unregistered Trade Mark (Section 39):
An unregistered Trade Mark can be assigned with or without the good-will of the business concerned.
If an unregistered Trade Mark which has been used is assigned without the good-will of the business -
the assignee will not be able to protect the trademark. Since, in the absence of the good-will of
business, no action for passing off will lie. However, a criminal prosecution may be available.
[3] Restrictions on Assignment and Transmission (Ss. 40 & 41):
- Assignment or transmission, should not result in the creation of concurrent exclusive rights in more
than one person, to use the same mark or similar mark in respect of the same or similar goods or
services if such would be likely to deceive or cause confusion.
- Confusion or deception can be avoided, by territorial limitation or the limitation of the goods.
- Confusion or deception can be avoided, if conditions are imposed to prevent use within India, except
for export to other countries.
- Where the proposed assignment is likely to create multiple exclusive rights, the proprietor of the
registered trade mark may submit to the Registrar, a statement of case, setting out the circumstances,
and the Registrar may issue a Certificate stating whether the proposed assignment would or would not
be valid.
- If the Certificate is in favour of the assignment, an application for registration of the assignment
should be made within 6 months from the date of issue of the certificate.
- Assignment or transmission which would create exclusive right to use mark in different parts of
India is not permitted. In such a case, the proprietor of the mark may apply to the Registrar for
approval of the proposed assignment or transmission.
[4] Assignment without goodwill of business:
- In case of an assignment of a Trade mark, whether registered or unregistered without the goodwill of
the business, the assignment will not take effect, unless the assignee advertises the assignment in
newspapers in accordance with the direction of the Registrar.
- The purpose of the advertisement is to give notice of the assignment to the public.
- Advertisement may be necessary, only where the mark has been in use. In case of unused
Trademark, since no public confusion would follow their assignment, advertisement may not be
necessary.
[5] Registration of Assignments and Transmissions:
- The procedure for entering the name of the subsequent proprietor of the Trademark, because of
assignment or transmission is contained in Section 45.

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- An application for registration of a subsequent proprietor, should be accompanied by proof of the
title of the Mark. This may be in the form of a deed of assignment, deed of partnership or dissolution
or any other document or transmission is necessary to establish title to the registered Mark.
- A document which is not registered, is not ordinarily admissible as evidence of the title to the
Trademark by assignment or transmission, unless the Registrar of Appellate Board otherwise directs.
Short Note on Registered User under Trade Mark Act?
Under the Trade Marks Act, 1999 of India, a Registered User refers to a person or entity who is
authorized to use a registered trademark, but who is not the actual owner of the trademark. The
concept of a Registered User is introduced to allow third parties to use a trademark that is already
registered, under the conditions set by the trademark owner.
Section 2(1)(x) of the Trade Marks Act,1999, defines “registered user” as the person or an
individual who is officially registered as such under Section 49 of the Act. Section 49 deals with the
registration of registered users.
Key Points About Registered User Under the Trade Marks Act:
o Authorization: A trademark owner (the proprietor) can allow another person or entity (the
registered user) to use their registered trademark under an agreement. This agreement must be
recorded with the Trade Marks Registry.
o Legal Status: A Registered User does not own the trademark, but they are allowed to use it in
commerce, as per the terms agreed with the trademark owner. The use of the trademark by the
registered user is considered legally valid.
o Registration of User: To become a Registered User, the agreement between the trademark
owner and the user must be filed with the Trademark Registrar. This process formalizes the
user’s right to use the trademark and ensures that it is recorded in the trademark registry.
o Terms and Conditions: The terms under which the registered user can use the trademark are
outlined in the agreement between the owner and the user. These may include geographic
restrictions, the nature of goods or services, the quality of goods, and the duration of use.
o Protection for Registered Users: A Registered User can take legal action if the trademark is
infringed during the term of their agreement, though they typically act under the owner’s
instructions or with the owner’s consent. However, the registered user’s rights are limited to the
agreement and cannot exceed the scope outlined therein.
o Duration: The rights of a Registered User are tied to the validity of the trademark registration. If
the trademark is canceled or becomes invalid, the Registered User’s rights also cease.
o Difference from Licensee: A Registered User is distinct from a licensee in that a Registered
User's right is specifically recorded in the Trademark Register. This gives the Registered User
certain legal standing, whereas a licensee might not have the same formal recognition in the
context of trademark law.
Example: If a company owns a trademark for a brand of clothing, it may allow another company (a
Registered User) to sell clothing with that trademark in a specific region, as long as the conditions of
the agreement are followed. The Registered User can use the trademark within those agreed terms and
is recognized by the Trademark Registrar for this use.
Conclusion: A Registered User under the Trade Marks Act, 1999, provides a structured mechanism
for third parties to use a registered trademark with the permission of the trademark owner, under

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defined conditions. This ensures that the trademark is used in a controlled manner while still
benefiting the user commercially.
Short Note on Non-Use of Trade Mark?
"Non-use of a trademark" refers to a situation where a registered trademark has not been actively used
in commerce for a significant period of time, which can lead to the potential loss of trademark rights
as the mark can be cancelled or revoked if not used within a specified timeframe, typically considered
to be around five years from the registration date; essentially, if a company doesn't utilize their
trademark for a substantial period, they may lose legal protection over it.
Non-use of a trademark refers to a situation where the owner of a registered trademark fails to use it
in the course of trade for a continuous period, typically five years under Indian law (as per the Trade
Marks Act, 1999). Non-use of a trademark can have significant legal implications and may result in
the cancellation or removal of the trademark from the register.
Key Points on Non-Use of a Trademark:
o Legal Consequences: Under Section 47 of the Trade Marks Act, 1999, if a trademark has not
been used for five consecutive years from the date of its registration, it may become vulnerable
to cancellation by the Trademark Registrar or on the grounds of non-use in proceedings before
the courts.
o Proof of Use: The burden is on the trademark owner to prove that the trademark has been used in
commerce. If the owner cannot show evidence of use (e.g., sales, advertising, or any commercial
activity involving the mark), the trademark may be canceled.
o Exceptions to Non-Use: Genuine Reasons: There may be valid reasons for non-use, such as
economic hardship, legal barriers, or other genuine circumstances that prevent the owner from
using the trademark.
o Intent to Use: A trademark owner may have the intention to use the mark, but failure to do so
within a reasonable period can still lead to cancellation, unless they can provide a valid
explanation.
o Non-Use Cancellation Procedure: A third party or an interested person can apply to the
Trademark Registrar for the cancellation of a trademark on the grounds of non-use. The owner
will be required to demonstrate the trademark's use within a specified time period (typically 3
months) to avoid cancellation.
o Impact on Trademark Rights: Non-use of a trademark for an extended period can weaken the
mark’s protection and may make it susceptible to challenges, especially when a competitor seeks
to register a similar or identical trademark. The failure to use the mark in commerce may also
suggest that the trademark is not distinctive or has become generic.
o Reinstating Rights: If the trademark is canceled due to non-use, the owner may apply to
reinstate the mark, provided they can show evidence of use or that they intend to use the mark in
the future.
Conclusion: The non-use of a trademark is a critical issue in trademark law, as it can lead to the
cancellation of the trademark registration and the loss of legal protection. Trademark owners are
encouraged to use their marks actively in trade to maintain their rights and avoid legal challenges
related to non-use.
Short Note on Ghost Mark?

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A "ghost mark" in the context of Intellectual Property Rights (IPR) refers to a trademark that is
registered with no intention of actually using it for a product or service, but solely to prevent others
from registering similar trademarks, essentially "blocking" the market space for potential competitors;
it's often considered a strategic maneuver to hinder others from using similar branding, even if the
"ghost" trademark owner has no plans to actively use it.
A Ghost Mark in the context of Intellectual Property Rights (IPR) refers to a trademark that is not
actively used in commerce, but is still maintained on the trademark register. These marks are often
"dead" in practice, meaning that they are no longer in use by their owners, but have not been formally
removed or canceled from the register. The term "ghost" signifies the fact that the trademark still
exists on paper, but no longer represents an active product or service in the market.
Key Aspects of a Ghost Mark:
o Non-Use of the Mark: A ghost mark often arises when a trademark owner stops using the
mark in commerce but does not initiate the cancellation process. This can occur if the business
changes its branding, discontinues certain products, or simply neglects to maintain the
registration.
o Impact on the Trademark Register: Ghost marks can clutter the trademark registry, making it
more difficult for others to find available trademarks for their own use or registration. They can
create confusion by occupying a space on the register without serving any commercial purpose.
o Legal Implications: While the trademark may still have legal standing on the register, it may
no longer be enforceable if it hasn’t been used in commerce for a long period (typically five
years in many jurisdictions, such as India). Competitors may challenge ghost marks on grounds
of non-use, which can lead to the mark's cancellation.
o Cancellation of Ghost Marks: A third party or interested party can petition the relevant
Intellectual Property Office (e.g., the Trademark Office) to remove a ghost mark from the
register on the grounds of non-use. The owner of the mark may have to provide evidence of use
or valid reasons for non-use to keep the registration intact.
o Strategic Use: Some businesses intentionally keep ghost marks registered to prevent others
from using the same or similar marks, even though they do not use the trademark in commerce
themselves. This strategy is typically employed to maintain exclusive rights over the mark,
even though it has no active use.
Conclusion: A Ghost Mark represents a trademark that exists on the official register but is no longer
in commercial use. These marks can create clutter in the trademark system and pose challenges for
businesses seeking to register new trademarks. Over time, ghost marks may be subject to cancellation
proceedings, especially if they are not actively used in trade, thus impacting the legal landscape for
intellectual property.
Note on Powers and Duties of Registrar?
Powers and Functions of the Registrar:
I) Power of a Civil Court - The Registrar shall have the powers of a Civil Court for the purposes of,
1) Receiving evidence.
2) Administering oaths.
3) Enforcing the attendance of witnesses.

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 4) Compelling the discovery and production of documents.
5) Issuing commissions for the examination of witnesses.
II) Can pass order for costs - Registrar can pass an order for costs as he considers reasonable, and
his order is executable as a decree of the Civil Court.
III) Power to review his own decision - The Registrar can review his own decision, if he deems it
just and fair in the interest of justice.
IV) Discretionary Powers - The Registrar has to exercise his discretionary powers under the
principles of Natural Justice, i.e. due notice to the other side, hearing, reasoned order, etc.
V) Can receive evidence on Affidavit or Oral evidence - Generally, evidence is received by way of
affidavit. But, the Registrar has power to call for oral evidence in lieu, or in addition to
evidence by affidavit.
VI) Power to bring Legal Heirs on record – The Registrar has got power to bring the legal heirs or
legal representatives on record, on the death of the contesting parties to the proceeding.
If the Registrar is of the opinion that, the surviving parties can safe-guard the interests of the
deceased, then the Registrar may not bring the legal heirs on the record.
VII) Power to Grant Time - The Registrar has the power to grant time (i.e. extension of time) to any
party to perform any acts.
VIII) Power to allow the applicant to Amend the Application - Where in the opinion of the
Registrar, an applicant is in default in processing the application, - The Registrar may, by
notice, require the applicant, if he so desires, to amend the application. The Registrar can even
abandon the application, after giving an opportunity of being heard - unless the default is
remedied within the time specified in the Notice.
IX) Preliminary Advice by Registrar as to Distinctiveness - When an application is made to the
Registrar for registering a Trade Mark, The Registrar can give an advice to the applicant, as to
whether the Trade Mark appears to him "Prima facie", to be distinctive. - The Registrar may
give the advice within 3 months in the affirmative. But on further investigation, if the Registrar
raises any objection to the distinctiveness, then the Registrar shall refund the fees paid by the
applicant.
X) Register and Index under the Control of Registrar - The Register of Trade Marks and the Index,
are under the control of the Registrar. These documents are public Documents, and can be
inspected by the public on payment of the inspection charges. A certified copy of the document
will be given by the Registrar on the payment of fees; and the certified copy is a proof of the
contents of it.
What is meant by Patent? object of Patent Law?
A patent is a form of intellectual property (IP) that grants the exclusive right to an inventor for a
specific period (typically 20 years from the filing date) to make, use, sell, or license an invention. In
exchange for this exclusivity, the inventor must publicly disclose how the invention works, enabling
others to build upon it once the patent expires.
Section 2(1)(m) of the Indian Patents Act of 1970 defines a patent as a right granted to an inventor for
a new product or process. The patent protects the invention from competitors by preventing them
from using, selling, or distributing it.

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The purpose of this system is to encourage inventions by promoting their protection and utilization so
as to contribute to the development of industries, which in turn, contributes to the promotion of
technological innovation and to the transfer and dissemination of technology. Under the system,
patents ensure property rights (legal title) for the invention for which the patent has been granted,
which may be extremely valuable to an individual or a Company. One should make the fullest
possible use of the Patent System and the benefit it provides. Patent right is territorial in nature and a
patent obtained in one country is not enforceable in other countries. The inventors or their assignees
are required to file separate applications in different countries for obtaining the patent in those
countries.
Under Indian law, a Patent is an exclusive privilege/monopoly granted to an inventor to exploit and
market the fruit of his innovative technical or scientific talent for a period of twenty years beginning
from the date of filing the application and during that term of twenty years, preventing others from
copying or using his invention in any manner.
This monopoly is given as a consideration for disclosure by the patentee of his intellectual/ technical
information contained in the specification and the other documents attached to his application and
materials referred therein. Acquisition of such monopoly rights contributes to technical progress in the
following ways:
(i) The most effective prize of monopoly in all field are fame and money. Such rights bring about
lots of fame and money to the inventor.
(ii) It encourages research and invention.
(iii) It offers as a reward to the inventor for the time and money spent in developing such
inventions.
(iv) It encourages the inventor to disclose his technological/intellectual secrets instead of keeping
them a secret.
(v) After the expiry of the term of patent, the disclosure of invention can be utilized for benefit of
public at large.
Patent can also be called a government license that gives the holder exclusive rights to a process,
design or new invention for a designated period of time.
It is an official document conferring a right or privilege, letters patent; writing securing to an inventor
for a term of years the exclusive right to make, use and sell his invention; the monopoly or right so
granted.
Patent is granted for: -
(i) A new product/invention which is non-obvious and useful.
(ii) An improvement to an existing product which must involve some invention.
(iii) A new formula or method of making a product or article.
(iv) The invention must be useful and capable of being used in some kind of industry, whether
it's manufacturing, agriculture, or technology.
(v) The invention must have a practical application and be capable of providing some useful
result.
Patent is not granted for an idea however exceptional it may be. However, the same is granted for the
novel and inventive way of carrying it out. Patent is a reward conferred on the Inventor for his
intellectual input that encloses the idea.
Importance and 9 Major benefits:

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1. Exclusive rights - The foremost advantage of obtaining a patent is that it gives exclusive rights to
the inventor. In other words, it keeps the infringers at bay and prevents them from selling, making, or
marketing the invention. Moreover, it also enables the patent owner to tackle such infringers legally.
2. High return on investments - Having invested a considerable amount of time and money in
developing the invention under the umbrella of exclusive rights, the inventor could bring the invention
to the commercial market and thus obtain higher returns on the investment.
Organizations that dedicate their time and effort to building a strong patent portfolio have a high
return on investments and emerge as market leaders in their domains. One such successful example is
IBM (International Business Machines Corporation), which takes up patenting its innovations quite
sincerely.
3. Strong market position - Since the inventor has obtained the exclusive right to the invention, the
inventor can exercise this right by preventing others from commercially using the patented invention,
thereby reducing the competition and thus establishing a place in the commercial market.
4. Sense of ownership - Patents give the inventor the security and confidence to share their invention
in public domains. You can share your invention with the scientific community and investors without
any fear of losing ownership of your invention.
5. Opportunity to License or Sell the Invention - Sometimes, the inventor might not want to exploit
the invention himself. In such cases, the inventor can sell or license the rights to commercialize it to
another enterprise. This would result in bringing royalty and revenue to the inventor.
6. Patents as assets - Patents are intangible assets that improve the value of an organization. It
showcases your expertise in the domain and your dedication to the invention. This builds confidence
among investors, partners, and consumers in your invention, thus, attracting more funds and revenue
for the organization.
7. Source of revenue - Inventors can use patents to establish their businesses. Sometimes, inventors
cannot commercialize the invention on a large scale. In such cases, they can permit any third party to
manufacture, sell and market the product and avail of a licensing fee. Thus patents ensure the inventor
earns revenue for their efforts.
8. Benefits to the society - An invention is likely to benefit society as a whole by creating several
employment opportunities after its commercialization. Patents bring down the wall of secrecy on the
invention, making it available to the public. This would enable other researchers to gain access to the
invention. Furthermore, it inspires and encourages further research and development, paving the way
for better designs and products.
9. Positive Image for the Enterprise - Business partners, investors, and shareholders may perceive the
patent portfolios as a demonstration. Particularly the high level of expertise that the subject matter
experts provide. This acts as a spectacle of the organization’s capability. Further, this may be useful
for raising funds, finding business partners, and increasing the company’s market value.
Patents can act as a form of record of all inventions. It enables the Government to develop strategic
administrative policies that strengthen the intellectual property sector from time to time.
The patenting process requires more time, strict monitoring, and careful consideration. However, the
benefits that it offers are worth it. All inventors should make it a point to file patents not only for their
benefit but also for the welfare of society. You can always approach patent experts to make the
process of patenting easier.

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Object of Patent Law - The main object of the patent law is to grant the patentee exclusive rights
over his patent for a period of twenty years to enable the patentee to gain industrial and commercial
advantage. The Object of patent law is set out by Supreme Court in the case of Bishwanath Prasad vs.
H.M. Industries AIR 1982 SC 1444 whereby the Supreme Court observed as under: -
"The object of patent law is to encourage scientific research, new technology and industrial progress.
Grant of an exclusive privilege to own, use, 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 a fixed period of the
monopoly, passes into public domain".
In the same case, the Supreme Court further observed that the fundamental principle of patent law is
to grant a patent only for an invention which must be new and useful. The thrust is on novelty and
utility. It is essential for the validity of a patent that it must be the inventor's own discovery as
opposed to a mere verification of what is already known before the date of invention. The invention
must be more than a mere workshop of improvement.
The Act contains general principles applicable to the working of all patented inventions. It provides
that in case of compulsory license regard should be had to encourage inventions and to secure that the
inventions are worked in India on a commercial sale and to the fullest extent which is reasonably
practicable without undue delay and to see that the patent rights contribute to the promotion of the
technological innovation and to transfer technology for mutual advantage of producers and users in a
manner conductive to economic and social welfare.
The following are the key objectives of patent law in India:
 Encouragement of Research and Development: Patent law provides protection to inventors,
thereby incentivizing them to carry out research and development activities.
 Promotion of Technology Transfer: Patent law enables the transfer of technology from one
person to another, thereby promoting the growth of technology and industry.
 Protection of Investment: Patent law provides protection to the investment made in research
and development activities. It enables inventors to recover their investments by licensing or
selling their patented inventions.
 Encouragement of Competition: Patent law provides a level playing field for competition by
ensuring that the inventor is rewarded for his efforts. This, in turn, encourages others to engage in
research and development activities.
 Dissemination of Knowledge: Patent law ensures that the knowledge and information gained
through research and development activities are shared with the public.
Conclusion – the patent law in India plays a crucial role in fostering innovation, promoting
technology transfer, protecting investment, encouraging competition, and disseminating knowledge,
so it is important to consult with a patent attorney who can guide you through the process and help
you navigate the legal requirements.
Define Invention? Discuss Characteristics which must have to be entitled to be a patent?
Invention in common parlance means to create or design something new. Invention is the act or
operation of finding out something new, the process of contriving and producing something not
previously known or existing, by the exercise of independent investigation and experiment. Smith v.
Nichols, 88 U.S. (21 Wall.) 112

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Invention is a concept; a thing involved in the mind; it is not a revelation of something which exists
and was unknown, but is creation of something which did not exist before, possessing elements of
novelty and utility in kind and measure different from and greater than what the art might expect from
skilled workers.
The Act (Section 2 (1)) (j)) defines "invention" as a new product or process involving inventive step
and capable of industrial application. However, the present amendment act has introduced the
definition 'New Inventions' in the Act (Section 2 (1)) (l) of the term 'new invention' which means any
invention or technology which has not been anticipated by publication in any document or used in the
country or elsewhere in the world before the date of filing of patent application with complete
specification i.e., the subject matter has not fallen in public domain or that it does not form part of the
state of the art.
Invention must have the following features to ensure it being patentable. In other words, the following
features are necessary for a patentable invention:
(i) It should be a novel
(ii) It must involve an inventive step.
(iii) It should be capable of industrial application.
Section 2 (1)) (ac) of the act defines 'capable of industrial application', in relation to an invention
means the invention is capable of being made or used in an industry.
New Invention must have the following features to ensure it being patentable: -
(i) Invention which has not been anticipated by publication in any document.
(ii) It shall not be used in any country or elsewhere in the world before the date of filing of
patent application with complete specification.
(iii) It should not be under public domain.
(iv) It should not be a part of state of art.
One can say that all Inventions are patentable except those which are specifically restricted under the
Act. Section 3 and 4 set out certain matters which are not patentable. It is not permissible to patent an
item excluded under these provisions even under the guise of permitted invention which contains that
item. Something more is necessary.
It is the foremost principle of patent law that mere discoveries are not patentable, but those
discoveries which have technical aspect or technical contribution are patentable. This concept is the
heart of patent law.
In Mariappan vs. A.R. Safiullah, (2008) 5 CTC 97 the court observed that though a banana leaf is a
natural product, the invention on part of the applicant to use artificial laminated food grade shape in
the form of banana leaf with its color with artificial scented smell is prima facie innovative and that in
view of the patent granted in his favour for the said product, he is entitled for protection pending
disposal of suit.
Define Inventive Step?
Section 2 (1) (ja) of the Act defines "inventive step" means a feature that makes the invention not
obvious to a person skilled in art. An inventive step is an essential ingredient of invention and it is
necessary for grant of patent. Inventive step must be relating to an invention involving technical
advancement having economic significance or both.

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 Enumerate the inventions not patentable under patent Act,1970? All inventions not
patentable Discuss?
Section 3, enumerates various categories of inventions that are not patentable. Section 3, highlights
the non-patentable subject matter -
1. Frivolous or Contrary to Natural Laws (Section 3(a)) - Inventions that are frivolous or
claim something obviously contrary to well-established natural laws are not patentable.
2. Contrary to Public Order or Morality (Section 3(b)) - Inventions whose primary or
intended use could be contrary to public order or morality or cause serious prejudice to
human, animal, or plant life or health, or the environment, are excluded from patentability.
3. Mere Discovery of a Scientific Principle (Section 3(c)) - The mere discovery of a scientific
principle or the formulation of an abstract theory or discovery of any living thing or non-
living substance occurring in nature is not considered an invention.
4. Mere Discovery of a New Form (Section 3(d)) - The mere discovery of a new form of a
known substance that does not result in the enhancement of the known efficacy of that
substance is not patentable.
Example: A new crystalline form of a known drug that does not improve its therapeutic efficacy
cannot be patented. If the new form provides an unexpected therapeutic benefit, such as better
bioavailability or reduced side effects, it could be patent-eligible.
5. Mere Arrangement or Re-arrangement (Section 3(f)) - Mere arrangements or re-
arrangements of known devices, each functioning independently in a known way, are not
patentable.
Example: A torch with a built-in radio, where both functions operate independently, would not be
considered an invention. If the torch and radio are integrated in a way that they interact to create a
new function, such as the torch automatically switching off to conserve battery when the radio is in
use, it could become patent-eligible.
6. Method of Agriculture or Horticulture (Section 3(h)) - Methods of agriculture or
horticulture are not considered inventions.
Example: A new method for planting crops in a particular pattern would not be patentable. A patent
could be obtained for a new agricultural device that enables the planting method, or for a method that
involves a technical intervention, such as a specific chemical treatment that enhances growth.
7. Treatment of Human Beings or Animals (Section 3(i)) - Any process for the medical,
surgical, curative, prophylactic, diagnostic, therapeutic, or other treatment of human beings or
animals is not patentable.
Example: A surgical procedure for heart bypass or a method for treating diabetes would not be
patentable. A new medical device or a novel pharmaceutical composition used in the treatment could
be patent-eligible, even if the procedure itself is not.
8. Plants and Animals (Section 3(j)) - Plants and animals in whole or any part thereof, other
than microorganisms, but including seeds, varieties, and species, and essentially biological
processes for the production or propagation of plants and animals, are not patentable.
Example: A genetically modified plant variety would not be patentable in India. A patent could be
sought for a specific genetic modification technique or a novel microorganism used in the genetic
modification process.

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 9. Mathematical or Business Methods (Section 3(k)) - A mathematical or business method or
a computer program per se or algorithms are not patentable.
Example: A software algorithm for sorting data or a method for calculating insurance premiums
would not be patentable. If the software is integrated with a technical solution, such as a novel
hardware configuration that enhances data processing, it could become patent-eligible.
10. Literary, Dramatic, Musical, and Artistic Works (Section 3(l)) - A literary, dramatic,
musical, or artistic work or any other aesthetic creation including cinematographic works and
television productions are not considered inventions.
Example: A novel, a painting, or a film script cannot be patented. If the artistic work is incorporated
into a new technology, such as an innovative virtual reality system that creates immersive artistic
experiences, the technology itself could be patentable.
11. Presentation of Information (Section 3(m)) - A mere scheme, rule, or method of performing
a mental act or method of playing a game is not patentable.
Example: A method for teaching math through games or a new chess strategy would not be
patentable. A new educational device or software that implements the teaching method in a novel way
could be patent-eligible.
12. Topography of Integrated Circuits (Section 3(n)) - The topography of integrated circuits is
not patentable, as it is protected under separate legislation specific to semiconductor
integrated circuits.
Example: The design of the layout of transistors in a chip would not be patentable under the Patents
Act. Innovations in the manufacturing process or new materials used in the integrated circuit could be
patent-eligible.
13. Traditional Knowledge (Section 3(p)) - An invention which in effect is traditional
knowledge or an aggregation or duplication of known properties of traditionally known
components or components is not patentable.
Example: A formulation based on turmeric (known for its antiseptic properties) would not be
patentable. A novel extraction process or a new application of the traditionally known component,
such as a unique drug delivery system using turmeric, could be patent-eligible.
Overall, Section 3 of the Indian Patents Act, 1970, plays a crucial role in defining the boundaries of
patentable subject matter in India. By carefully navigating these exclusions and creatively modifying
inventions, inventors can potentially make their innovations patent-eligible, ensuring that only
genuine and substantial technological advancements are protected under the patent system.
Inventions relating to atomic energy not patentable (SECTION 4) - It is clarified by Section 4 of
the Act that no patent shall be granted in respect of an invention relating to atomic energy falling
within sub-section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962)
What is non-Patentable Subject Matter?
"Non-patentable subject matter" refers to ideas, discoveries, or concepts that are not eligible for patent
protection under the law, typically including things like scientific principles, natural phenomena,
abstract ideas, mathematical methods, medical treatment procedures, artistic creations, and business
methods, as they are considered not to be "inventions" in the legal sense.

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Section 3 of the Indian Patents Act stipulates what is not considered an invention under the law and is
therefore not patentable in India: inventions being frivolous or contrary to public order, morality,
public health, the environment, etc.
Locus standi is a Latin phrase which means a place to stand. Oxford Law Dictionary defines locus
standi as a right to bring an action or challenge some decision. Thus, when a decision is made, the
person affected by such decision shall have a locus standi in such a decision and may challenge the
same.
the inventions which may have a potential or likelihood to harm the environment or human, animal or
plant life are prima facie not patentable by the virtue of Section 3 (b) of the Act. Hence, the patentee
does not have any say or locus so far as patentability of his invention is concerned. This is reflected
by Section 3 (b) of the Act which states as follows: -
"(b) an invention the primary or intended use or commercial exploitation of which could be contrary
to public order or morality or which causes serious prejudice to human, animal or plant life or health
or to the environment."
Short Note on Patent Protection for Micro Organism? Budapest Treaty?
Patent Protection for Microorganisms: Patent protection for microorganisms refers to granting
patents for novel microorganisms, such as bacteria, fungi, viruses, or other microscopic organisms
that exhibit unique properties or utility. Microorganisms can be patented if they meet the basic criteria
of patentability: novelty, inventive step, and industrial applicability.
Key Aspects:
1. Novelty and Inventiveness: A microorganism can be patented if it is new, not obvious to
someone skilled in the art, and provides a specific, practical application (e.g., in medicine,
agriculture, or industry).
2. Deposit Requirement: In some jurisdictions, the patent applicant must deposit a sample of
the microorganism with a recognized International Depositary Authority (IDA) to ensure
that it can be accessed for verification by the patent office and other interested parties.
3. Utility: The microorganism must have a demonstrated use, whether it’s in drug production,
bioremediation, fermentation processes, or other industrial applications.
Budapest Treaty: The Budapest Treaty on the International Recognition of the Deposit of
Microorganisms for the Purposes of Patent Procedure was adopted in 1977 to facilitate patenting
microorganisms internationally. It provides a standardized process for depositing microorganisms in
international repositories to support patent applications.
Key Points of the Budapest Treaty:
1. Deposit of Microorganisms: The treaty allows inventors to deposit microorganisms in
International Depositary Authorities (IDAs), ensuring that the microorganisms are
available for patent examination and research purposes. The deposit acts as a formal proof of
the microorganism’s existence and identity.
2. International Recognition: Once deposited in an IDA, the microorganism is recognized for
patent procedures worldwide, making it easier to seek patent protection in multiple countries
without re-depositing the microorganism in each jurisdiction.

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 3. Security and Accessibility: The deposited microorganisms must be stored under conditions
that ensure their survival, and the IDA must provide access to the microorganism to third
parties under certain conditions (e.g., after a specified period of time).
Benefits of the Budapest Treaty:
 It simplifies the process of patenting microorganisms in multiple countries by providing a
central repository for the deposit of the microorganism.
 It ensures that the patent applicant retains rights to the microorganism while also complying
with the disclosure requirements for patent applications.
 It facilitates the protection of inventions related to microorganisms, which are crucial in
biotechnology, pharmaceuticals, agriculture, and other industries.
Conclusion: Patent protection for microorganisms provides legal rights to the creators of novel
microorganisms that serve practical purposes. The Budapest Treaty plays a key role by offering an
international framework for the deposit and recognition of microorganisms, helping streamline the
patent application process and supporting innovation in biotechnology and other fields.
Procedure of registration of patent?
Procedure of registration of Patent can be easily explained by the following: -
 Filing of Application in Patent Office
 Provisional/Complete Specification should be filed
 Acceptance of Specification
 Publication of Application
 Request for Examination
 Examination and Report of Examiner
 If Approval given, then Grant of patent or
 Of Objection given, then division of application, then amendments after opposition/objections
and after that grant of patent if approved.
Short Note on persons entitled to apply for patents?
Section 6 sets out that an application for a patent for an invention may be made by any of the
following persons, viz.,
1. By any person claiming to be the true and first inventor of the invention.
2. By any person being the assignee of the person claiming to be the true and first inventor in
respect of the right to make such an application.
3. By the legal representative of any deceased person who immediately before his death was
entitled to make such an application.
The aforesaid applications can be made either alone or jointly with any other person.
True and first inventor: A person who actually first invents the scientific principle/technology/process
into a workable invention is known to be the true and first inventor of such invention. A person who
merely thinks of an idea or even communicates the same to the others cannot be said to be true and
first inventor unless the same is made in a form of a workable/ usable invention.
Two independent inventors: If two persons have independently invented the same kind and nature of
invention and neither of the two persons have divulged it to others, he who applies first for the patent
will be called as true and first inventor.

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Invention by employees: The law on the subject of ownership of invention concerning inventions
made by employees is now statutorily enacted by the English Patent Act, 1977. The Indian Statute has
no corresponding provision. Under common law, if an invention is made by an employee in the
course of his employment, the right to patent the invention belongs to the employers.
Assignee: Section 2 (1) (ab) of the Act defines assignee as "assignee includes an assignee of the
assignee and the legal representative of a deceased assignee and references to the assignee of any
person include references to the assignee of the legal representative or assignee of that person" An
assignee of the true and first inventor of the invention can make an application under Section 6 of the
Act.
Legal Representative: Section 2 (1) (k) defines legal representative means a person who in law
represents the estate of a deceased person. "Legal representatives" include heirs as well as persons
who represent the estate even without title either as executors or administrators in possession of the
estate of the deceased.
Form of Patent (Section 7) - Every application for a patent shall be for one invention only and shall
be made in the prescribed form and filed in the patent office.
Short Note on Specification?
Specifications: - The oxford dictionary of law defines a specification means a document that must be
lodged with an application for a patent for an invention. It must contain the description of the
invention, claim, defining the matter for which the applicant seeks protection and any drawing
referred to in the description or claim. According to Section 9 of Indian Patent Act 1970, there exist
two types of patent specifications,
1. Provisional Patent Specifications
2. Complete Patent Specifications
Provisional Specification: - A provisional application is a temporary application which is filed when
the invention is not finalized and is still under experimentation.
Provisional specifications can be used to secure a priority date for an application. They describe the
nature of the invention without claims, and should contain the title and description of the invention. A
full specification, including claims and an abstract, must be submitted within 12 months of the
provisional filing.
A provisional specification is a broad overview of the invention that discloses the field of invention
with broad scope and objective of the invention. The main purpose of submitting a provisional
specification is to claim a priority date of patent application. It is useful when the invention is in its
conceptual and preliminary level. A patent application can have more than one provisional
specification disclosing various aspects of a single invention. If multiple provisional specifications are
cognate, the Controller allows the applicant to file a single complete specification. In any case, a
complete specification should be filed within 12 months from the earliest date of filing of the
provisional specification. If not, the application shall be deemed to be abandoned.
Advantages of filing a provisional application
 Applicant gets 12 months’ time to fully develop the invention and ascertain its market potential
 Helps to establish “priority” right over the invention
 Enables the applicant to use the term "patent pending” on their product
 Less expensive to prepare and file the application

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  Enables the applicant to file International applications and claim priority within 12 months.
However, in order for the patent to be granted, a provisional application must be followed by a
complete specification within 12 months. Moreover, the provisional application should be sufficiently
detailed and must be drafted very carefully to ensure that the priority rights are secured for your
invention.
Complete Specification: - means a specification which is complete in all respects which has to be
filed within 12 months from the date of filing the provisional specification, failing which the
application shall be treated as abandoned. Complete specifications provide complete details of the
invention so as to enable a person who is skilled in art can utilize the same when he reads such
description.
A complete specification includes a complete disclosure of all the technical and scientific details of an
invention in the form of embodiments. It includes all the components, features and the best method of
performing the invention so that any person skilled in the art can easily understand and recreate the
same invention with the information given in the embodiments.
Section 10 of the Patents Act, 1970 is an important constituent of the Indian procedure for patent
applications, specifying the requirements of both provisional and complete specifications. It enables
the inventor to provide complete technical details in the form of claims and supporting materials like
drawings of the inventions proposed. Section 10, focuses on identifying specific requirements upon
how an invention should be disclosed. It aims to protect the rights of the inventor while keeping
transparency open for people to understand and assess the invention.
This section is crucial for not only the inventors to protect their intellectual properties but also to
ensure that the patent system remains fair, transparent, and conducive to technological and industrial
progress. Through these provisions, Section 10 contributes to a balanced patent system which protects
genuine innovations and promotes the advancement of knowledge.
Section 10 of the Patents Act: Contents of Specifications under - Section 10 of the Patents Act,
1970 states what the contents should be of both provisional and complete specifications. The
importance of this section lies in its meaning to describe, document, and submit an invention or any
such work for patent protection in India. Specification shall comply with a particular standard so that
the invention is clear enough, full enough, and capable of being described to and disclosed to the
public while maintaining the rights of the inventor.
 Title: The first part of the complete patent specification should be the title of the invention. The
applicant/patent agent must ensure that it fairly captures specific features of the invention.
Secondly, the title shouldn’t include abbreviations, the word “patent”, etc. It must clearly spell
the objective of the invention and should be between 10-15 words.
 Field of Invention: This is the section that highlights general and specific fields in which the
subject matter of the invention falls. The field of invention helps the examiner to decide which
search fields he/she can look into to find similar published technology, if any. This portion of the
specification should ideally start with a general statement on invention to indicate the subject
matter that the invention is related to.
 Background: This section briefly discusses prior arts and their drawbacks or disadvantages, if
any. The main objective behind providing this information is to distinguish the invention at hand
from the ones that are already being practiced in the targeted industry. The background section
sets the stage for describing the invention in detail at a later stage.

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  Summary: As the name suggests, summary gives a gist of the invention – its nature, objective,
composition and operation. Most importantly, summary of the invention should come before the
description of the claimed invention. Furthermore, the summary briefly mentions solutions to the
problems talked about in the background section.
 Brief Description of Drawings, if any: Though not mandatory, patent applications often include
drawings/flowcharts/figures to visually describe the invention, helping examiner to understand
the innovation better. So this section presents a brief overview of the drawings. As per the
guidelines of the USPTO, the figures should be clean black-and-white line drawings that
accurately illustrate the invention.
 Detailed Description: This section focuses on providing sufficient details of the invention,
including the structural details, how it is used, its objectives and advantages. Solutions achieved
by the invention are covered in depth in this section. Most importantly, the detailed description
should be provided in a manner that any person with ordinary skill in the art is able to practice
the invention. Furthermore, this part may also include examples explaining the overall working
of the invention in different environments and possible variations. Also, the description is written
from a perspective that every claim is sufficiently enabled.
 Abstract: The complete specification of patent includes an abstract that gives technical
information about the invention. Essentially, it’s a summary of the matter in the patent
specification. The abstract should not be more than 150 words.
 Claim(s): To say the least, claims section is the most critical part of a patent application. This is
because the patentability of an invention is determined by them. Claims clearly lay out the scope
of the invention for which protection is sought. Claims should cover important aspects of the
invention, such as novelty. This section should be written in a manner to provide the broadest
possible coverage and protection for the invention, while remaining novel and non-obvious in
light of the existing technologies or art.
 Drawings: A patent specification document also contains drawings that help in aiding the
examiner’s understanding of the invention. Drawings can be diagrams, flowcharts or figures with
numeral labeling that identify components or features of the invention described in the claims
and detailed description.
Conclusion: Section 10 of the Patents Act, 1970, provides detailed guidelines about preparation and
filing a specification for getting patents. Specifications must essentially describe in adequate detail
what is invented, disclose its best way of performance, and define the scope of protection by clear
statements of claims. Additional features, such as drawings, models and abstracts, make it also
possible to make the patent application large and accessible for examination. Providing the biological
material, adding supplementary claims, and declaring inventorship are the most indispensable
measures to make the application accurate and valid. The strict requirements of these parameters will
ensure that the patent system promotes innovation while at the same time being transparent and fair.
Explain the process and Publication and Examination of Patents?
"Publication and examination of patents" refers to the process where a patent application is made
publicly available (published) after a certain period, and then undergoes a review by the patent office
to determine if the invention meets the criteria for being granted a patent (examination), typically
involving assessing its novelty, inventive step, and industrial applicability; this usually happens after
the applicant requests an examination of their application.

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Patent Examination is the process by which the patent office examines the patent application. It
examines whether the invention is eligible for patent protection and determines if all the criteria
mentioned under the Indian Patents Act are met. It does not happen automatically.
India’s patent system is guided by a structured legal framework that ensures the protection of
intellectual property while balancing public interest. Two key stages of the patent process,
publication and examination, serve as pivotal checkpoints in determining the validity and
enforceability of an invention. The publication and examination of patent applications are
fundamental steps in India’s patent regime. These stages ensure transparency, evaluate the merit of an
invention, and provide opportunities for objections or oppositions. The process, governed by the
Indian Patents Act, 1970, and the Patent Rules, 2003, follows international standards, making India
an integral part of the global intellectual property ecosystem.
1. Overview of Publication - The publication of patents applications is a vital step that brings the
application into the public domain. It allows third parties to review the details of an invention and
raise objections if necessary.
o Section 11A of the Indian Patents Act, 1970: States that a patent application shall be published
18 months from the filing date or the priority date, whichever is earlier.
o Applicants can also request early publication under Rule 24A of the Patent Rules, 2003.

o Patent Rules, 2003: Rule 24 mandates the publication of all patent applications in the Official
Patent Journal, except those withdrawn or deemed abandoned.
Procedure for Publication
o Automatic Publication: After 18 months, applications are published automatically unless
withdrawn.
o Early Publication: Applicants can file Form 9 with the prescribed fee to request publication
before the 18-month timeline.
o Exceptions: Applications subject to secrecy directions under Section 35 are not published until
the directions are revoked.
Contents of Published Applications - The published patent application includes:
 Application number and filing date.
 Name and address of the applicant and inventor.
 Abstract and specification of the invention.
 Drawings, if applicable.
2. Overview of Examination - Examination is the stage where the patent application undergoes a
detailed scrutiny to determine its compliance with patentability criteria.
In India, a request for patent examination (RFE) may be filed by: the patent applicant of the patent
application or by any other interested person in prescribed manner for examination within prescribed
period i.e. 48 months.
if no request for examination of application of patent is made within prescribed period then
application shall be treated as withdrawn by applicant.
The request for an Examination is filed by filing Form 18. The interested person (third party) must
submit appropriate evidence of his interest in the patent application.

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 o Section 12 of the Indian Patents Act, 1970: Mandates the examination of applications upon
filing a Request for Examination (RFE) using Form 18.
o Section 13: Deals with prior art searches to assess novelty and inventive step.

o Patent Rules, 2003: Rule 24B sets timelines for filing the RFE and completing the examination
process.
Procedure for Examination
o Request for Examination (RFE): Applicants must file the RFE within 48 months of the
priority date. Without an RFE, the application is deemed abandoned.
o Allocation to Examiner: The Controller assigns the application to a Patent Examiner.

o Scrutiny by the Examiner: The examiner evaluates the application for:

 Novelty: Is the invention new?

 Inventive Step: Does it involve a technical advancement?
 Industrial Applicability: Can it be applied to an industry?
o Searches are conducted for prior art references.

o First Examination Report (FER): The examiner issues an FER, highlighting objections or
deficiencies.
o Response to FER: Applicants must respond within 6 months, extendable by 3 months.

o Final Decision: If objections are resolved, the patent is granted. Otherwise, the application is
rejected.
Significance of Publication and Examination
1. Transparency in the Patent System - The publication of patent applications ensures that
the technical details of an invention are made publicly accessible. This transparency:
 Allows competitors, researchers, and the public to stay informed about new technological
advancements.
 Helps identify overlapping claims and existing prior art, thereby preventing redundant
research.
 Provides a mechanism for third parties to file pre-grant oppositions and challenge
frivolous or broad claims.
2. Encouragement of Innovation - Publication and examination serve as motivators for
inventors to create and disclose their work:
 Publication enables inventors to receive due credit and legal acknowledgment for their
ideas.
 The examination process ensures that only genuine, innovative, and useful inventions
are rewarded with patents.
3. Enhanced Patent Quality - The rigorous scrutiny during the examination stage filters out
inventions that fail to meet the criteria of novelty, inventive step, and industrial
applicability. This improves the quality of patents granted, ensuring strong protection for
truly innovative work.

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 4. Economic and Commercial Benefits - The early publication of patent applications enables
inventors to explore commercial opportunities:
 It provides interim protection under Section 11A, allowing inventors to seek damages for
unauthorized use of their inventions post-publication.
 Businesses can analyze the published data to identify potential licensing, collaboration,
or investment opportunities.
5. Alignment with Global Standards - India’s publication and examination framework aligns
with international treaties like the TRIPS Agreement and the Patent Cooperation Treaty
(PCT). This alignment enhances India’s global reputation and attracts foreign investment in
R&D.
Conclusion: The publication and examination of patent applications in India form the backbone of the
nation’s intellectual property framework. While the system fosters innovation, enhances transparency,
and ensures the grant of high-quality patents, it also faces challenges such as delays and resource
constraints. Addressing these issues and leveraging advancements in technology can further
strengthen India’s position as a global leader in intellectual property rights. By understanding the
intricacies of these processes, inventors and businesses can better navigate the patent system and
protect their innovations effectively.
Short note on Date of Patent and Priority Date?
1. Date of Patent: The Date of Patent is the official date when a patent is granted by the relevant
Patent Office after the examination process is completed. It is the date when the patent application
successfully passes through all the steps of examination, and the inventor is awarded exclusive rights
to the invention.
Key Points:
 Grant of Patent: The Date of Patent is the formal date on which the patent rights are
conferred on the applicant. Once granted, the applicant becomes the legal owner of the patent
and gains exclusive rights to use, manufacture, sell, or license the invention.
 Exclusivity Period: The patent rights typically last for 20 years from the filing date of the
application, subject to the payment of maintenance fees. In some jurisdictions, the term may
be shorter (e.g., design patents may have a 15-year protection term).
 Enforceability: After the Date of Patent, the patent holder can enforce their rights in case of
patent infringement. The date marks the point at which others are legally prohibited from
making, using, or selling the patented invention without the patent owner's consent.
Example:
 If an inventor files a patent application on January 1, 2023, and the patent is granted on July
1, 2024, then July 1, 2024, becomes the Date of Patent. From that date, the inventor holds
exclusive rights to the patented invention.
2. Priority Date: The Priority Date refers to the earliest filing date of a patent application or the
date when the details of the invention were first disclosed in any publicly accessible manner. The
priority date is crucial in establishing the novelty and inventiveness of the invention.
Key Points:

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  Establishing Novelty: The Priority Date is the reference point for determining the novelty of
an invention. The invention must not have been disclosed to the public in any way (including
publications, patents, or public use) before the priority date.
 Priority Claim: Under certain international patent systems, such as the Patent Cooperation
Treaty (PCT) or the Paris Convention, an applicant may claim the priority date of an earlier
patent application filed in another jurisdiction. For example, if an inventor files a patent
application in the United States and later files in Europe, they can claim the priority date of
the U.S. application as their priority date for the European filing.
 Impact on Prior Art: Any prior art (existing inventions or knowledge) that is published
before the priority date can be used to challenge the novelty of the invention. If similar
inventions are disclosed after the priority date but before the filing date of the patent
application, they cannot be considered prior art for the patent application.
Example:
 If an inventor files a patent application on January 1, 2023, and then files the same patent
application in another country on January 1, 2024, the priority date for both filings will be
January 1, 2023, which is the date of the first application.
 If, however, an inventor files a patent application in India on January 1, 2023, and later
claims priority from a U.S. filing made on December 1, 2022, the priority date for the
Indian application will be December 1, 2022, which is the U.S. filing date.
Priority Date in International Context: Under international treaties like the Paris Convention and
PCT, applicants can claim priority from a patent application filed in one country to subsequent
applications filed in other countries. This allows applicants to secure protection in multiple countries
while maintaining the earlier filing date as the priority date. The applicant has a period of 12 months
(under the Paris Convention) or 30/31 months (under the PCT) to file subsequent applications while
retaining the priority date.
Example of Priority Date in Action:
 Paris Convention: If an inventor files a patent in India on January 1, 2023, they can file in
the U.S. by January 1, 2024, and claim January 1, 2023 as the priority date. Even if the U.S.
application is filed later, it will be treated as if it was filed on January 1, 2023.
 PCT: Similarly, if the inventor files a PCT application claiming priority from the Indian
application, they can keep the priority date of January 1, 2023 for their PCT filing, even if
the international application is filed later (e.g., on June 1, 2023).
Conclusion: The Date of Patent is the official date when a patent is granted, marking the start of
exclusive rights for the inventor. The Priority Date, on the other hand, is the date of the earliest filed
patent application or disclosure, which is crucial for determining novelty and priority in patent law.
Both dates are significant for understanding the legal timeline and rights associated with the
invention, especially in the context of international patent filings and determining the validity of the
patent.
Note on Opposition of Patents?
An opposition proceeding is an administrative procedure under the jurisdiction of patent law which
allows third party to formally challenge validity of pending patent applications and challenge the
already granted patent applications. The Indian Patent Act, 1970 provides a mechanism that allows
the public to raise objections against the grant of a patent by filing an opposition with the Patent

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office. There are 2 types of opposition proceedings in place depending on the stage of grant of the
patent:
1. Pre-grant opposition: Where the opponent can challenge a pending application prior to the grant
of a patent.
2. Post-grant opposition: Where the opponent challenges the validity of a patent that has already
been granted.
PRE-GRANT OPPOSITION IN INDIA - Section 25(1) of the Indian Patent Act, 1970 along with
Rule 55 of Patents Rules, 2003 lays down the law relating to pre-grant opposition in India. The
opposition can be filed by any person in writing, any time after the publication of the patent
application and before it is granted. It is necessary to obtain the complete specification from the
official website as opposition cannot be made solely based on the abstract. The purpose of this
mechanism is to act as a defensive shield that verifies the validity of the application before the actual
grant of patent rights. The opposition is known as making a “representation.”
Grounds for pre-grant opposition - Section 25(1) clauses (a) to (k) of the Patent Act lays down an
exhaustive list of the grounds based on which the patent application can be opposed. These grounds
are:
1. Wrongful obtainment: The invention or any part thereof was wrongfully obtained from the
opponent.
2. Prior publication: The invention was published before the priority date (earliest filing date
which discloses the invention). This objection is subject to Section 29 of the Act, which talks
about situations where the publication does not constitute an anticipation of the product or
process.
3. Prior claim: The invention was previously claimed in another Indian patent application, which
was published on or after the priority date of the applicant’s claim but whose priority date is
earlier than that of the applicant.
4. Prior knowledge or use: The invention is known or used by the public before the priority date.
In the case of a process that is being patented, it is deemed to have been publicly known or used
if a product made by that process was imported in India, before the first date of filing of the
application.
5. Obviousness: The invention is obvious and does not involve any inventive step. This means
that no advancements have been to the existing use or literature on the subject.
6. Non-patentable subject matter: The subject of the application is not considered to be an
invention under the Patent Act or falls in the category of “non-patentable inventions”.
7. Insufficient description: The patent specification does not properly explain the invention or
the method of performing it.
8. Non-disclosure: The applicant has failed to disclose all the details which were required under
Section 8 of the Act.
9. False disclosure: The applicant has provided materially false information.
10. Time limit: The conventional application was not filed within the specified period of 12
months from the date of the first patent application made in a conventional country.
11. Biological material: The specification failed to disclose the origin or source of the biological
material, if any, used in making the invention or has mentioned the incorrect source.

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 12. Traditional knowledge: The invention was anticipated taking into consideration the
knowledge possessed by indigenous communities anywhere in the world.
Procedure for pre-grant opposition - The procedure for filing the opposition is given in Rule 55 of the
Patent Rules. The rule states that all representations for opposition must be made in accordance with
Form 7A of the Act to the Controller General of Patents. The Indian legislature has intentionally made
a provision that prohibits the grant of patents until a period of 6 months from the date of publication
has gone by. This gives a sufficient window to third parties who wish to oppose the patent. If the
examiner believes that the arguments put forth in the statement of opposition are without merit, he
will reject the opposition by passing a speaking order. On the other hand, if the statement is found to
have merit, the Examiner shall send a notice to the applicant. The applicant is then required to submit
his own statement and evidence, if any, within a 3-month time frame from the date of the notice. The
Controller considers the statements and issues a speaking order, which may:
 Grant the patent,
 Refuse the patent, and
 Require the amendment of the patent specification or other documents after which the patent
can be granted.
POST-GRANT OPPOSITION IN INDIA - A "post-grant opposition" in India refers to a legal
process where any "interested person" can challenge a granted patent within one year of its
publication date, essentially allowing them to contest the validity of the patent after it has been issued,
based on grounds like prior art, obviousness, or non-patentable subject matter, by filing a notice of
opposition with the Patent Controller; this process is governed by Section 25(2) of the Patents Act,
1970 and the relevant rules under the Patents Rules, 2003.
Unlike pre-grant opposition, this type of opposition can only be filed by an “interested party”.
Section 2(1)(t) of the Patent Act, 1970 gives an inclusive definition of the term “person interested.” It
includes an individual involved in or promoting research in the field to which the patent pertains. It
may also refer to an entity that has a manufacturing, trading, or financial interest in the patented
goods.
Grounds for post-grant opposition - Under the Act, there is no difference in the grounds on which pre-
grant and post-grant oppositions can be made. Section 25(2) specifies the same grounds which were
listed in subsection 1 of the provision.
Grounds for opposition under section 25 (2) of the Act:
a) Invention obtained wrongfully.
b) Prior publication.
c) Prior claiming.
d) Publicly known or used in India before filing.
e) Obviousness and clearly does not involve any inventive step.
f) Non patentable subject matter as per Act.
g) Insufficient disclosure.
h) Failure to disclose information under section 8 of the Act.
i) In case of a convention application, the patent application in India was not filed within 12 months
of filing the first application in the convention country.

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 j) Non-Disclosure or wrongful disclosure of the source or geographical origin of the biological
material as used in the invention.
k) The invention is anticipated as traditional knowledge of any local or indigenous community in
India or anywhere in the world.
Nevertheless, there are substantial differences in the procedures of both the oppositions.
Procedure for post-grant opposition - Rules 55A to 70 of Patent Rules, 2003 lay down the procedure
for a post-grant opposition. The notice of opposition under Section 25(2) has to be filed with the
Controller of the appropriate office in accordance with Form 7.
Constitution of the board: Rule 56 provides that once the Controller receives the notice of opposition,
he shall establish an ‘Opposition Board’ comprising 3 members. The duty of the board is to examine
the notice filed, along with statements and evidence of both parties, and issue a report with reasons
regarding each ground challenged by the opponent.
Hearing: Rule 62 states that any party who wishes to be heard must send a notice and the prescribed
fees to the Controller. After hearing both parties and taking into consideration the recommendation
made by the Opposition Board, the Controller shall decide the case.
Appeal: The Controller’s decision of both pre and post-grant opposition can be appealed to the IPAB
(Intellectual Property Appellate Board) with a period of 3 months from the date of order. However, if
the Controller grants a patent after refusing a pre-grant opposition, an appeal can only be made to the
High Court and not to IPAB.
Conclusion: Patent opposition plays an important role in the prevention of grant of monopoly rights
to frivolous, inaccurate, bogus, or petty claims. It also goes a long way in protecting the rightful
owner of the invention and prevents others from enjoying the fruits of his labour. Third-parties who
wish to challenge the grant of such rights no longer have to rely on the expensive and time-consuming
method of litigation. They can quickly get their concerns heard through the formal and administrative
process of opposition and re-examination.
Differences between pre-grant and post-grant opposition?

Pre-grant Opposition Post-grant Opposition

Proceedings can only be initiated by a person

Proceedings can be initiated by “any person”.
interested in the invention.

The opposition is made any time before the grant of

The opposition can be made within 1 year from
a patent but preferably within 6 months of
the date of grant of patent.
publication of the application.

A fee of Rs 1500 has to be paid by a natural

No fee is required to be paid
person and Rs 6000 by others

The application must be in Form 7A The application must be in Form 7

Infringement proceedings cannot be initiated since

Infringement proceedings can be initiated
the patent rights have not yet been granted

The purpose is to get the patent application rejected The purpose is to revoke the patent already

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 granted

No appeal can be made to IPAB. The opponent can

either file a post-grant opposition or revocation An appeal can be filed before IPAB.
petition.

Less speedy mechanism as it allows trial and

The mechanism is faster as compared to post-grant
conduction of hearings similar to a conventional
opposition.
court procedure.

Short Note on Grant of Patent?

A "grant of patent" in India signifies the official issuance of a legal document by the Indian Patent
Office, providing exclusive rights to an inventor for their novel, inventive, and industrially applicable
invention, allowing them to prevent others from making, using, or selling that invention without
permission; this protection is governed by the Patents Act, 1970, and is subject to conditions like
novelty, inventive step, and industrial applicability.
When the application for the patent has been found in order for grant of patent and
(i) the application has not been opposed (within 4 months)
(ii) the application has been opposed and it has been decided in favour of applicant
(iii) the application has not been refused by the Controller by the virtue of any power vested in him
under the Act.
(iv) the application has not been found to be in contravention of any of the provisions of the act,
then the patent shall be granted as expeditiously as possible with the seal of the patent office, and the
date on which the patent is granted shall be entered in the register. After the grant of patent, the
Controller shall publish the fact that the patent has been granted and it shall be open for public
inspection.
Conditions for grant of Patent - Section 47 of the Indian Patents Act, 1970, states that the grant of a
patent is subject to certain conditions. These conditions include the following:
 The government can import, make, or use a patented product or process for its own use.
 The government can import patented medicines or drugs for its own use or for distribution in
government hospitals or dispensaries.
 Any person can use or make a patented invention for research or experimentation, including
teaching students.
 The government can use patented inventions on foreign vessels.
Section 47 provides the government with a statutory exemption from patent infringement liability.
Form, Extent and Effect of Patent:
(1) Every patent shall be in the prescribed form and shall have effect throughout India.
(2) A patent shall be granted for one invention only: PROVIDED that it shall not be competent for
any person in a suit or other proceeding to take any objection to a patent on the ground that it has been
granted for more than one invention.

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DURATION/TERM OF PATENT (Section 53) - Section 53 of the Patents Act, 1970 states that a
patent in India lasts for 20 years from the date of filing the application. This 20-year term applies to
all patents granted after the Patents (Amendment) Act, 2002
Short Note on Patents of Addition?
A patent of addition is a patent for an improved or modified version of an existing patented invention.
It's a cost-effective way to protect improvements to a product or process.
Section 54: Patents of Addition - Section 54 of the Indian Patent Act deals with the concept of
"Patents of Addition." But what exactly is a Patent of Addition?
A Patent of Addition is a unique mechanism where an inventor can make an improvement or
modification to an existing invention and obtain a separate patent for that enhancement. The key point
here is that the invention for which the addition is made must already be patented or have a pending
patent application. This system encourages further innovation and improvements over an existing
invention.
The process of obtaining a Patent of Addition is less complex and swifter than applying for a standard
patent. It requires a simple application, and the examination process usually hinges on the existing
patent. If the primary patent ceases to exist, the Patent of Addition also becomes void.
Section 55: Term of Patents of Addition - Section 55 outlines the term of Patents of Addition. These
patents follow the term of the primary patent, which means that when the original patent expires, so
does the Patent of Addition. This makes sense since the addition or improvement is directly related to
the primary invention.
 The term of every patent in India is said to be 20 years from the date of filing the application.
 This Section clearly states the term for a patent of addition. In other words, we can say that this
Section grants the term for the patent of addition.
 It clearly states that a patent of addition will only be granted for a term equal to that of the main
Patent of the invention.
 The patent of addition shall remain in force until the original Patent of your invention has not
expired.
 There are no renewal fees that need to be paid for a patent of addition. But, if any such patent
becomes an independent patent, under the provisions of Section 54, the same fees as-is for an
independent patent is payable. This is only if the addition, which may be a modification or
improvement, is not considered to be an addition and is given an independent patent rather than a
patent of addition.
Section 56: Validity of Patents of Addition - Section 56 helps ensure that the validity of Patents of
Addition remains contingent on the original invention. If the primary patent is invalidated, revoked, or
ceases to exist for any reason, the Patent of Addition will also lose its validity.
Essential features of patent of addition
 As we have read above, the patent of addition falls under Sections 54,55,56 of the Patents Act,
1970.
 It refers to an application that is made for a patent undergoing improvement or modification in a
particular invention, disclosed or described in the main application for which the patentee has
already applied.
 Patent of addition must be on the same date or a date after the date of filing the main application.

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  Even after the grant of the main application, the patent of addition can still be filed.
 If there is an issue that arises pertaining to the patentee, and whether or not the invention should
get a patent of addition or should get a different patent altogether, the controller may repeal the
independent patent and grant the same as a patent of addition.
 Each patent of addition needs to include a reference to the main patent and also include a
definitive statement that the invention is an improvement or modification of the original
invention.
Significance and Benefits:
1. Encouraging Progress: Patents of Addition stimulate inventors to enhance existing inventions,
fostering technological progress and innovation.
2. Simplified Application: The application process for Patents of Addition is less cumbersome,
making it an attractive option for inventors.
3. Protection of Improvements: It safeguards the rights of inventors and ensures they are duly
recognized for their innovations, even when building upon an existing invention.
4. Maintaining Unity: By linking the term and validity of Patents of Addition to the primary patent, it
ensures a unified and coherent system.
In conclusion, Sections 54, 55, and 56 of the Indian Patent Act are instrumental in promoting
innovation by allowing inventors to build upon existing inventions. This framework helps maintain a
balance between fostering progress and protecting intellectual property rights. By understanding these
provisions, inventors, entrepreneurs, and innovators can navigate the world of patents more
effectively, ultimately benefiting society as a whole. Stay tuned for more insights into India's
intellectual property laws.
Short Note on Anticipation/ Prior Publication?
Definition: Prior publication refers to the act of making information available to the public before
filing a patent application for an invention. If the publication was made more than a year before the
application is filed, the patent is barred by statute. Publication occurs when the information is made
available to any member of the general public.
Examples:
 Posting details about an invention on a public website
 Publishing an article in a magazine that describes the invention
 Presenting the invention at a public conference or trade show
These examples illustrate how prior publication can occur through various means, such as online or in
print, and can happen at events where the public is invited to attend.
Anticipation in patent law means that an invention claimed in a patent application is not new or novel
because it has already been disclosed or made available to the public before the filing date of the
patent application. In other words, if an invention has been described in a publication, used in public,
or disclosed in any way before the patent application's filing date, it may not meet the criteria of
novelty.
Section 29: The Key Provisions: Section 29 of the Indian Patent Act is primarily concerned with the
question of whether the invention claimed in a patent application has been anticipated by prior

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publications or public knowledge. It states that an invention is considered anticipated if it lacks
novelty concerning either the prior publication or public use.
1. Section 29: Anticipation by Previous Publication - For a publication to classify as prior art, it
should have been published as:
1. Any specification filed for obtaining a patent in India, on or after 1st January, 1912.
2. Published in India, elsewhere and also in other documents.
The earlier publication must disclose the same device as the device which the patentee asserts that he
had invented. In such a case, the claim is deemed to be anticipated.
The exceptions are as follows:
1. Applicant must prove that the publication of his matter was done without his consent,
2. Applicant must establish that he applied for the patent as soon as the prior publication came to
his knowledge;
Also, if the invention was commercially worked in India, exception cannot be taken.
2. Section 30: Anticipation by previous communication to the Government - For the purposes of
investigation, if the invention has been communicated to the government or any other person
authorized by the government, then the complete specification filed shall not be deemed to have been
anticipated.
3. Section 31: Anticipation by Public Display -
1. If the invention has been displayed in an exhibition and/or the invention has been described in a
publication as a consequence thereof;
2. It won't be anticipation if the central government has extended the provisions of this act to such
exhibition.
3. Also, if a person uses the invention without the consent of its true owner, as a consequence of
the display in the exhibition, it won't be Anticipation.
4. Disclosure of an invention before a learned society or the publishing of related information in
the transactions of such learned society cannot be classified as anticipation.
This means that if the invention is disclosed for private consumption of a peer group, which is formed
for the purpose of promotion of knowledge and scholarship, solely for the benefit of the members of
the society, it is not anticipation.
A grace period is given to the original inventor to file an application within 12 months of the public
display, to prevent labelling of his claim as an anticipated claim.
4. Section 32: Anticipation by Public Working - Anticipation by public working could be done by the
importation of a patented product into India before the priority date the product would amount to
public knowledge or public us except where such importation was for the purpose of reasonable trial
or experiment.
To benefit from this exception, the application must be filed within 12 months after the invention has
been publicly worked for the purpose of reasonable trial and considering the nature of the invention
5. Section 33: Anticipation by use and publication after provisional specification - If the invention has
been put to use and has been published after the provisional application has been filed, then the
complete specification filed shall not be deemed to have been anticipated.

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Unless the Anticipation falls under aforementioned exceptions, the claims of specifications submitted
to the controller can be rejected on the grounds of section 13 of the Act.
It is advisable for innovators to patent their inventions, as its benefits are manifold, such as creating
reasonable barriers for entry of competitors, securing profits and prices in the market. Also, Patents
ensure that small or medium-sized firms are on a level-playing field with large firms, due to the
economic power granted by them. Thus, it is ideal that the inventor should file for obtaining a Patent
before he makes any information about the Invention known to the public though any means, to avoid
having any hassles due to anticipation of invention, during the patenting process
What are rights and obligations of the patentee? Limitations of Right of Patentee?
The person to whom a patent is granted is a patentee. The patentee has a legal interest in the patent.
The patent is his property. The Patentee is entitled to deal with his property in the same manner as the
owner of any other movable property. This gives the patentee exclusive rights to prevent others from
making, using, exercising or selling the patented product and also prevents others from using or
exercising the process or method.
Section 48 of the Indian Patents Act 1970 mentions about the rights of the Patentee. These exclusive
rights are granted by the government as an incentive to inventors to create new and useful inventions.
All of the Rights granted to a patentee are conditional, they are subject to conditions imposed under
section 47 of the Indian Patent Act, 1970.
Rights of a Patentee - The Rights conferred to a Patentee are not absolute rights. Following are the
Rights of a Patentee:
1. Right to Exploit the Patent - A patentee has the exclusive right to make, use, exercise, sell,
or distribute the patented product or to use or exercise the method or process if the patent is
for a process. The right can be exercised by the patentee himself or by his agents or licensees.
These rights conferred to a patentee are exercisable only during the term of the patent. The
term of the patent shall be 20 years from the date of filing the patent application. The patent
will be in force only as long as the prescribed renewal fees are paid.
2. Right to License - Section 70 of the Indian Patents Act, 1970, confers the right on a grantee
or proprietor of a patent to grant licenses. The patentee can grant licenses to others to use the
patented invention in exchange for consideration. Where there are co-owners of the patented
product, all the patent owners must collectively grant the license to the third party. The
license should be in writing and must be documented (Registered) with the Controller of
Patent.
3. Right to Assign - Section 70 of the Indian Patents Act, 1970 confers the right on a patentee to
assign his patent to others fully or partially. The Assignment should be in writing and must be
documented (Registered) with the Controller of Patent.
4. Right to Surrender the Patent - Section 63 of the Indian Patents Act, 1970, allows a
patentee to surrender a patent. There is no obligation to maintain the monopoly right on the
patent for the entire term of 20 years. The patentee may surrender the patent at any time he
desires. The patentee has to make an application of surrender before the Controller. The
Controller then publishes the application of surrender in the official gazette to enable
interested persons to oppose the same. If any third person has any interest in the patent, he
must issue a notice to the Controller opposing the surrender. The Controller if satisfied that
there are sufficient grounds for opposition, he calls both the parties for a hearing and decides
upon the same.

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 5. Right to Sue for Infringement - Infringement occurs when the Patentees rights are violated.
It may consist the violation of any right to make, use, sell, or distribute the invention. The
Patentee, his Assignee, Licensee or Agent has the right to file a civil suit for infringement in a
court not lower than the District Court. If it is established that the Patentees Rights has been
violated by the defendant, the court will either grant an injunction or award damages for the
same.
6. Right to be issued a Duplicate Patent - Section 154 of the Indian Patents Act, 1970,
mentions about Loss or Destruction of Patents. Patentee has a right to apply for a duplicate
Patent if the Patent is lost, destroyed or if its non-production is explained satisfactorily to the
Controller.
7. Right to make a Convention Application - Every Patentee in India has the right to make a
Convention Application for protection of Patent in Convention Countries. This Right is based
on the principle of reciprocity and national treatment of international law.
8. Right to make a Patent of Addition - Sections 54 to 56 of the Indian Patents Act, 1970,
make provision for Patent of Addition. This provision provides for modification in the
existing invention. In this case, the Patent holder is granted the right to the modified invention
after the notification of acceptance comes out. The owner is provided with the same rights as
provided in the previous patent only when the notification is presented.
Obligations of a Patentee: As the owner of a Patent, a Patentee has certain obligations to maintain
and enforce their rights in the patent. These obligations include:
 Duty to pay Statutory and Maintenance Fees: With regards to the registration process, the
Patentee must pay all the necessary statutory fees. Also, in order to keep a Patent in force, the
Patentee must pay maintenance fees to the patent office at specified intervals throughout the
life of the Patent. The Patent will be revoked if the Patentee fails to pay the maintenance fees.
 Duty to Disclose the Patent: Patents are granted in exchange for the public disclosure of the
invention. The patentee is obligated to fully and accurately disclose the invention in the patent
application, and to update the disclosure as necessary during the prosecution of the patent.
 Duty to Request for Examination: According to section 11B of the Indian Patents Act,
1970, No application for a patent will be examined unless the applicant or any other interested
person makes a request for examination within the prescribed time period. The obligation is
upon the Patentee to inquire with the Controller of Patent about the development of the
patent.
 Duty to work the Invention: The Patentee must not sit idle on his invention on the belief to
prevent others from making or using the invention. It is the duty of the Patentee to work on
the invention in India, that is by actively commercializing the invention by manufacturing the
product or by licensing the invention to others. Reasonable requirements of the public with
respect to the patented invention should be satisfied. Also, these patented products should be
made available to the public at reasonable prices.
 Duty to Respond to Objections: The First Examination Report (FER) prepared by the Patent
Examiners may contain some objections. It is the duty of the Patentee to respond to such
objections. The Patentee's application will be automatically rejected if the clarifications are
not sought within a period of one year from the date of issue of the First Examination Report.
 Duty to not Misuse the Patent: The patentee cannot use their patent to violate any laws or
regulations, harm the public interest, or unfairly dominate a market. The patentee must not

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 make false or misleading statements about the invention in any advertising, marketing, or
other promotional materials.
Limitations of Patent Rights: Patent Rights are not absolute hence they are subject to certain
limitations. The Indian Patents Act, 1970, provides for certain limitations on the exercise of such
rights. Following are the Limitations:
1. Use of Patent by Government - Section 100 of the Indian Patents Act, 1970, provides that at
any time after the application for a patent has been filed at the patent office or the patent has
been granted, the central government may use the invention for government purposes. The
patent may be used or even acquired for its own use. Government may also acquire a patent
on payment of suitable compensation. The right to make, use, exercise and vend an invention
for the purposes of Government, shall also include the right to sell.
2. Compulsory Licenses - Section 84 of Indian Patents Act pertains to the grant of Compulsory
Licences. This section stipulates that any time after the expiration of three years from the date
of grant of patent, any interested person may make an application to the controller for grant of
compulsory license. Compulsory license will be granted only after it fulfils the following
conditions: (a) That the reasonable requirements of the public with respect to the patented
invention have not been satisfied, (b) That the patented invention is not available to the public
at a reasonably affordable price, (c) That the patented invention has not worked in the
territory of India.
3. Use of Invention for Defence Purposes - An application made before the Controller for a
patent belongs to a class notified by the central government as relevant for defence purpose
only, the controller may give a direction prohibiting or restraining the publication of such
information of the invention. The invention is subjected to Secrecy Provisions. All orders
passed by the controller or Central government with regards to the secrecy shall be treated
final and the same cannot be challenged in any court of law.
4. Restored Patents - For a patent to remain in force, renewal fees should be paid to the patent
office by the patentee. If he fails to pay the renewal fees in the specified time period the
patent lapses. The provisions under this Act provides for restoration of Lapsed Patents.
Section 60 to 63 of the Indian Patents Act 1970, deals with restoration of lapsed patents.
Where a patent has lapsed and subsequently has been restored, certain limitations are imposed
on the rights of the patentee. Where a patent is lapsed and it is subsequently restored, no suit
for infringement can be filed after the date on which the patent ceased to have effect.
Enforcement arises only after the rights have been given to a person and there has been an
infringement of these rights conferred. A Patentee Can Enforce his Rights by:
a. A Suit for infringement of Patent
b. An action for specific performance of a contract
c. An action for recovery of royalties
Kewanee Oil Co. V. Bicron Corp., 416 U.S. 470 (1974) - In this case the US Supreme court
identified three objectives of the patent; first as an incentive to invent, promoting the full disclosures
of inventions, and ensuring that ideas in public domain remain.
Edwards & Co. V. Picard 2 [1909] 2 KB 903, 905 (CA) - In this case it was stated that the legal
qualities of a patent are, not that it confers upon the patentee a right to manufacture, for that he could
do without a patent, but that: It gives him monopoly in the Manufacture; It creates in him the right of

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action to prevent anyone from manufacturing; It creates in him the right to bring an action for
infringement for which the remedy will be injunction or damages or both; It is a legal right.
Conclusion: Patents are essential for protecting intellectual property, encouraging innovation and
investment by giving inventors exclusive rights to their inventions for a limited period. Patents also
helps in promoting competition and growth in the global economy. Being a Patentee comes with both
rights and responsibilities, and it is important that the Patentee understands and fulfils his obligations
to protect and maintain its Intellectual Property.
Short note on surrender & Revocation of Patents?
A "surrender of patent" means a patent holder voluntarily gives up their patent rights, effectively
terminating the patent by notifying the relevant patent office, allowing them to relinquish their
exclusive rights to the invention; this is usually done when the patent holder no longer wishes to
maintain the patent, potentially due to changing market conditions or to avoid ongoing maintenance
fees, but can be subject to opposition from any interested parties before the surrender is finalized.
Section 63 of the Patents Act, 1970 allows a patentee to surrender a patent. The patentee can offer to
surrender his patent by giving notice to the Controller. The offer to surrender the patent should be
published by the Controller, and every person interested in the patent must also be notified of the
same.
After the publication, any interested person can oppose the surrender, by giving notice to the
Controller which should be notified by the Controller to the patentee. If the patentee or the opponent
wants to be heard, the Controller, on being satisfied that the patent may be surrendered and after the
hearing, may accept the offer and revoke the patent by order. The notice of opposition must be given
to the Controller within a period of 3 months from the date of publication of the notice to surrender
the patent. If the patentee’s offer to surrender the patent is accepted by the Controller, he may:
 direct the patentee to return the patent; and
 on receiving the patent revoke it by order; and
 publish the revocation of the patent.
Revocation of Patents - Section 64 of the Patents Act, 1970 deals with the ‘Revocation of patents’. A
patent that has been granted to an invention can be revoked by the Appellate Board in the following
ways:
 on a petition filed by any interested person; or
 on a petition filed by the Central Government; or
 on a counter-claim in a suit for infringement of the patent by the High Court.
Grounds for Revocation of Patents - A patent may be revoked on any of the following grounds:
1. where an invention as claimed in a valid claim of earlier priority date which is
included in the complete specification of another patent;
2. where the patent application was filed by a person who is not entitled under the
provisions of the Act and was granted a patent on such application;
3. where the patent was wrongfully obtained and the rights of the petitioner or any
person under/through whom he claims, were contravened;
4. when the subject of a claim of the complete specification is not an invention within
the meaning of the Act;

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 5. where the invention that is being claimed is not new having regard to what was
publicly known or used in India before the priority date of the claim and also having
regard to what was published in any of the documents, whether in India or elsewhere;
6. where the invention that is claimed is obvious and lacks any inventive step, having
regard to what was publicly known, used or published in India, before the priority
date;
7. where the invention is not useful;
8. where the invention and the method by which it is to be performed is not sufficiently
and fairly described by the complete specification. In other words, the description of
the method or the instructions for the working of the invention as specified in the
complete specification are insufficient to enable a person of average skill and
knowledge of the art to which the invention relates, to operate or work the invention
or where the best method of performing the invention which is known to the applicant
is not disclosed;
9. where the scope of any claim is not defined properly or based on the matter which his
not disclosed in the specification;
10. where a false suggestion or representation was made to obtain the patent;
11. where the subject of any claim of the complete specification is not patentable under
the Act;
12. the invention that is being claimed was secretly used in India before the priority date
of the claim;
13. where the information required under Section 8 has not been disclosed by the
applicant of the patent to the Controller or the information that has been furnished is
false to his knowledge;
14. where any direction of secrecy passed under Section 35 has been contravened by the
applicant or made an application in contravention of Section 39 for the grant of a
patent outside India;
15. where the permission to amend the complete specification under Section 57 or 58 was
obtained by fraud;
16. the complete specification does not disclose or mentions the wrong source or
geographical origin of biological material used for the invention;
17. the invention was anticipated having regard to the knowledge which was available
within any local or indigenous community within India or elsewhere.
However, where the invention claimed is not new, obvious or lacks any inventive step,
having regard to what was publicly known or used in India or published in India or
elsewhere, before the priority date of the claim:
18. a personal document, secret trial or secret use shall not be taken into account;
19. where the patent is for a process or for a product that is made by a process which is
claimed, the importation of the product which is made abroad by that process into
India will constitute knowledge or use in India of the invention, on the date of
importation. Except where the product has been imported for the purpose of
reasonable trial or experiment only.
Short Note on Compulsory Licensing in Patents?
Compulsory licensing is when a government allows someone else to produce a patented product
or process without the consent of the patent owner or plans to use the patent-protected
invention itself.

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In simple terms, compulsory licenses are authorizations given to a third-party by the Government to
make, use or sell a particular product or use a particular process which has been patented, without the
need of the permission of the patent owner. The provisions regarding compulsory licenses are given in
the Indian Patents Act, 1970 and in the TRIPS (Trade-Related Aspects of Intellectual Property Rights)
Agreement at the International level. Although this works against the patent holder, generally
compulsory licenses are only considered in certain cases of national emergency, and health crisis.
There are certain pre-requisite conditions which need to be fulfilled if the Government wants to grant
a compulsory license in favor of someone.
Under Indian Patents Act, 1970 the provisions of ‘compulsory license’ are specifically given under
Chapter XVI, and the conditions which need to be fulfilled are given is Sections 84-92 of the said Act.
Section 84 of the Patents Act - At any time after the expiration of three years from the date of the
grant of a patent, any person interested may make an application to the Controller for grant of
compulsory license on patent on any of the following grounds, namely:
(a) That the reasonable requirements of the public with respect to the patented invention have not
been satisfied, or
(b) that the patented invention is not available to the public at a reasonably affordable price, or
(c) that the patented invention is not worked in the territory of India.
As per Section 84, any person who is interested or already the holder of the license under the Patent
can make a request to the Controller for grant of compulsory license on expiry of the three years,
when the above conditions are fulfilled.
However compulsory licenses may also be granted, when –
1. Section 92 A- For exports, under exceptional circumstances.
2. Section 92A- In case of national emergency, extreme urgency of public non-commercial use
by notification of the Central Government
3. Section 92 A (1) – To a country which has insufficient or no manufacturing power in the
pharmaceutical sector to address public health.
India’s first case of granting compulsory license - License was granted by the Patent office in 2012
to an Indian Company called Natco Pharma for the generic production of Bayer Corporation’s
Nexavar. All the 3 conditions of Sec 84 was fulfilled that the reasonable requirements of the public
were not fulfilled, and that it was not available at an affordable price and that the patented invention
was not worked around in India.
The Government took this decision for the general public benefit. However, it was heavily criticized
by the Pharmaceutical Companies as they felt the license should not have been given.
Procedure for processing compulsory licence application - On filing the application for grant of a
compulsory licence along with the relevant facts and evidence, the controller will analyse the prima
facie case made by the applicant against the patentee. After considering such factors as the nature of
the invention, the applicant’s ability to work the invention and whether the applicant has made efforts
to obtain a licence from the patentee on reasonable terms and, if such efforts have not been successful
within a reasonable period (ie, six months from the date of application), the controller will decide
whether to grant or reject the compulsory licence.
In case the controller is not satisfied with the applicant’s request, a notice will be issued to the
applicant regarding rejection of the grant of a compulsory licence. In this scenario, the applicant may

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request a hearing with the controller, within one month from the date of such notice of rejection. The
controller will thereafter decide the fate of the application based on the hearing discussion held with
the applicant.
Terms and conditions of a compulsory licence
 the patentee’s investment in the invention;
 the workability of the patentee’s invention by the applicant;
 the selling price of the patented articles (at affordable prices); and
 the term of the licence.
The government may, if it is necessary to do so in the public interest, direct the controller at any time
to authorize any licensee in respect of a patent to import the patented article or an article or substance
made by a patented process from abroad. Such authorization is subject to conditions, including details
of royalties and other remuneration, the quantum of import, sale price of the imported article and
import period, among other things.
Opposition to the grant of a compulsory licence - When the controller is satisfied, on consideration
of an application under Section 84, that a prima facie case has been made out for the making of an
order, the applicant will be directed to serve copies of the application to the patentee and any other
person appearing from the register (eg, a licensee mentioned in the register). The application made by
the applicant is thereafter published in the OfficialJournal.
The patentee or any other person desiring to oppose the application for the grant of a compulsory
licence may, within the prescribed time (two months from the date of publishing the application in the
Official Journal), file a notice of opposition via Form 14, along with the prescribed fee. The
opposition statement should contain statements pertaining to the grounds on which the grant of the
compulsory licence is opposed. When such a notice is served, the controller will notify the applicant
and give both the applicant and opponent an opportunity to be heard before deciding the case.
Compulsory licence for exporting patented products - A compulsory licence for exporting goods
usually relates to exporting pharmaceutical products, particularly in certain exceptional
circumstances. A compulsory licence is available for the manufacture and export of patented
pharmaceutical products to any country with insufficient or no manufacturing capacity in the
pharmaceutical sector for the concerned product, to address public health problems. Such export is
allowed, provided that the compulsory licence has been granted by such country or such country has,
by notification or otherwise, allowed the import of the patented pharmaceutical products from India.
The pharmaceutical products may be any patented product or product manufactured through a
patented process of the pharmaceutical sector needed to address public health problems and should be
inclusive of ingredients necessary for their manufacture and diagnostic kits required for their use. On
receiving an application in the prescribed manner, the controller will grant a compulsory licence
solely for manufacture and export of the concerned pharmaceutical product to such country under the
terms and conditions as may be specified and published.
Termination of compulsory licence - On an application along with evidence, made by the patentee
or any other person deriving title or interest in the patent, the compulsory licence granted under
Section 84 may be terminated by the controller when the circumstances considered for grant of the
compulsory licence cease to exist. The applicant is thereafter required to serve a copy of the
application and evidence to the holder of the compulsory licence and to inform the controller of the
date on which the service was made effective.

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The holder of the compulsory licence may file his or her objection along with evidence to the
application for termination, within one month from the date of the controller’s receipt of the
application (and evidence). A copy of the objection and evidence is also required to be served to the
applicant by the licence holder.
Thereafter, the controller will appoint a hearing for analysing the facts and issuing a verdict. If the
controller decides to terminate the compulsory licence, an order setting out terms and conditions (if
any) of such termination will be served to both the parties.
Conclusion: The grant of compulsory licenses to drugs has played a crucial role in the healthcare
system. However, a compulsory licence can have an impact on innovation whereby the
pharmaceutical companies will be more dependent on generic drugs and will be deprived of
innovation. The need to fund and carry out Research and Development will be hampered since they
will solely rely on procuring a compulsory licence to a generic drug.
Short Note on Transfer of Patents?
A "transfer of patents" refers to the legal process where the original owner of a patent (known as the
"assignor") relinquishes all or part of their ownership rights to another entity (the "assignee"),
effectively transferring the patent rights to the new party, usually through a written agreement called a
"patent assignment."
Transfer of patent rights is the process by which the ownership or interest in a patent is legally
reassigned from one party to another. This transfer can occur through various mechanisms such as
assignments, licences or by operation of law. In an assignment, the original patent holder (assignor)
transfers their ownership rights to another party (assignee), who then gains the ability to enforce the
patent.
Licensing involves granting permission to another party to use the patent under agreed terms without
transferring ownership. Transfers can also happen through legal processes such as inheritance or
company mergers. The transfer must comply with legal requirements to be valid, often involving
written agreements and official registration.
Purpose of Transfer of Patent Rights - The purpose of transferring patent rights is to facilitate the
commercialization, utilization and broader dissemination of innovations. For inventors and
companies, transferring rights can provide financial benefits through sales, licensing fees or royalties,
thereby recouping the costs of research and development. It enables entities without manufacturing
capabilities or market access to bring inventions to market through partnerships or licensing
agreements.
Additionally, it allows for the strategic management of patent portfolios, such as divesting non-core
technologies or acquiring complementary patents to enhance competitive positioning. Transfers can
also ensure that valuable intellectual property is leveraged effectively, contributing to technological
advancement and economic growth by enabling the practical application of patented innovations.
The transfer of patent rights can be executed by several entities, each with specific qualifications and
capacities:
1. Patent Holder (Patentee): The original inventor or assignee who owns the patent has the
primary right to transfer their patent rights through assignments or licences.
2. Assignee: An individual or entity that has been assigned the patent rights by the original
patent holder can further transfer these rights, subject to the terms of the initial assignment.

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 3. Legal Representatives: Executors or administrators of an estate can transfer patent rights if
the patent holder is deceased, ensuring the patent rights are managed according to the
decedent’s will or legal stipulations.
4. Corporate Entities: Companies that own patents can transfer them through business
transactions such as mergers, acquisitions or sales of assets.
5. Government and Public Institutions: In some cases, especially involving compulsory
licences, government bodies can facilitate the transfer of patent rights to address public health
or safety concerns.
6. Banks and Financial Institutions: Entities that hold a mortgage on a patent can transfer the
rights if the terms of the mortgage agreement are met, such as in cases of default by the patent
holder.
Requirements for Creation of Any Interest in a Patent - Section 68 of the Indian Patents Act,
1970, provides the legal framework for creating any interest in a patent, including mortgages, licences
and other assignments. The section mandates that any transfer of patent rights must be documented
and executed in a specific manner to be valid.
Section 68: Assignments, etc., Not Valid Unless in Writing and Duly Executed
1. Writing Requirement: An assignment of a patent, a share in a patent, a mortgage, licence or
the creation of any other interest in a patent is invalid unless it is documented. The agreement
must be in writing, embodying all the terms and conditions governing the parties’ rights and
obligations.
2. Duly Executed: The document must be duly executed by all concerned parties. This includes
signing the document in the presence of witnesses and ensuring compliance with any other
formal requirements stipulated by law.
3. Registration: To effectuate the transfer, an application for registration of the document must
be filed in the prescribed manner using Form-16 within the time frame specified under
Section 68. Upon registration, the document will take effect from the date of execution.
Forms and Nature of Transfer of Patent Rights - The grant of a patent confers upon the patentee
the exclusive right to prevent others from making, using, exercising or selling the patented invention
without permission. There are several ways a patentee can deal with a patent:
1. Assignment
2. Licences
3. Transmission by Operation of Law
1. Assignment - Assignment involves transferring the proprietary rights of the patent from the
patentee (assignor) to another party (assignee). The Indian Patents Act does not define “assignment,”
but it is generally understood to include the following:
 Legal Assignment: This involves transferring an existing patent or agreeing to transfer a
patent. The assignee can enter their name as the patent owner. A patent created by deed can
only be assigned by a deed and the legal assignee acquires all rights associated with the
patent. The process involves:
 Drafting a Deed: The deed should detail the rights being transferred and any conditions
attached.

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  Execution: Both parties must sign the deed in the presence of witnesses.
 Registration: The executed deed must be registered with the patent office.
 Equitable Assignment: An equitable assignment occurs when the patentee agrees to transfer
a defined share of the patent to another person. The assignee in this case cannot register as the
proprietor of the patent but can have notice of their interest entered in the register.
 Mortgage: A mortgage involves transferring patent rights wholly or partially to an assignee
in return for a sum of money. Upon repayment, the patent rights are restored to the assignor.
The mortgagee’s name can be entered in the register as the mortgagee but not as the
proprietor. The key steps include:
 Agreement: Drafting a mortgage agreement detailing the terms, including repayment
schedules and conditions for reverting rights.
 Execution and Registration: Similar to assignments, the agreement must be executed and
registered.
 Repayment and Reversion: Upon repayment, the rights revert to the patentee and the
mortgagee’s interest is removed from the register.
2. Licences - The Patents Act allows patentees to grant licences to others to make, use or sell the
patented invention. Licences can be:
 Voluntary Licence: These are granted by the patentee without government intervention. The
terms are mutually agreed upon by the licensor and licensee. The process involves:
 Negotiation and Agreement: The licensor and licensee negotiate terms, including scope,
duration and royalties.
 Written Agreement: The terms are documented in a written contract, signed by both parties.
 Execution: The licence becomes effective upon execution and the licensee can use the patent
as agreed.
 Statutory Licence: These are granted by the government, often in the public interest, such as
compulsory licences under specific conditions.
 Exclusive/Limited Licence: An exclusive licence grants the licensee the sole right to use the
patent, excluding even the patentee. A limited licence restricts the rights to specific conditions
like time, place or purpose.
 Express/Implied Licence: An express licence is explicitly stated in writing, while an implied
licence is inferred from circumstances, such as purchasing a patented product implying
permission to use it.
3. Transmission by Operation of Law - When a patentee dies, their interest in the patent passes to
their legal representative. Similarly, in cases of company dissolution or bankruptcy, the patent rights
are transferred by operation of law. Transmission by operation of law occurs in cases such as:
1. Death of Patentee: The patent rights pass to the legal representative of the deceased.
2. Company Dissolution: The patent rights are transferred as part of the liquidation process.
3. Bankruptcy: The patent rights may be sold or transferred to settle debts.
Conclusion: The transfer of patent rights is a multifaceted process involving various legal and
practical considerations. Assignments, licences and transmissions by operation of law each have

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distinct requirements and implications. Adherence to Section 68 of the Indian Patents Act, 1970, is
important for the validity of any transfer. By understanding and navigating these legal intricacies,
patentees and assignees can effectively manage and commercialize patent rights, fostering innovation
and benefiting from their intellectual property.
Short Note on Patent Infringement? Defences available to defendant in case of
Infringement?
Patent infringement is act by a party that makes, uses, sells, or imports a patented invention without
the patent holder’s permission. Permission is granted through a licensing agreement, where the
licensee pays licensing fees.
Indian Patents Act of 1970 does not define “Patent Infringement”, but it identifies actions that lead to
it, such as unauthorized production, use, or commercialization of a patented invention.
Examples of Patent Infringement - Patent infringement occurs when someone makes, uses, sells, or
imports a patented invention without permission. For example, if you patent a new smartphone
charger, no one else can produce or sell it without your consent. If they do, it’s infringement, and you
can take legal action.
Real Life Examples of Patent Infringement:
 Amazon tried to patent its one-click payment option, but the court ruled it was too obvious to
patent.
 The file-sharing company Napster settled a lawsuit for unauthorized music distribution and
later filed for bankruptcy.
 Nintendo had to pay a large sum to Tomita Technologies International, Inc. for its 3DS
gaming-system technology.
 Microsoft and Google engaged in a five-year legal battle over patent issues related to the
Xbox gaming system and Motorola smartphones.
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.
The period of limitation for instituting a suit for infringement is 3 years from the date of such alleged
infringement takes place.
The following persons may file a suit for infringement: -
1. The patentee or if jointly owned then by any of such patentee.
2. The exclusive licensee of the patent.
3. Compulsory licensee, if the patentee refuses or neglects to institute proceedings.
4. A contractual licensee.
5. A registered assignee.
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 –

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(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.
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.
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,

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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. 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.
In Ravi Raj Gupta v. Acme Glass Mosaic Industries, 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

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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.
Novartis v. Union of India: 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.
Short Note on Patent Agent?
A Patent agent as defined under Section 2(n) of the India Patent Act, 1970 is a person who has passed
Indian Patent Agent Examination and is registered under section 126 of the Indian Patent Act as a
patent agent. Patent agent is involved in drafting filing, and prosecution of the patent application
before the controller on behalf of the person who wish to file a patent. Patent agent has to be
authorized by the inventor to act on his behalf by executing power of attorney in his name. Patent

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agent is person who has written and passed patent agent exam and registered himself as a patent
agent. Doing this, his name is entered in the Register of Patent Agents by the Controller.
A patent agent is a professional who helps inventors and companies get patents for their products.
They prepare and file patent applications, and act as intermediaries between the inventor and the
patent office.
The qualifications to become a Patent agent are as follows:
1. He should be a citizen of India;
2. He has to complete the age of 21;
3. He should have completed a degree in either Science, Engineering or Technology from any
university established under law for the time being in force in the territory of India or should
possess such other equivalent qualifications as specified by the Central Government; In this
regard, final year students can also apply as long as they can produce their degree certificate
with all the marks card within 2 months from the date of announcement of patent agent
examination results;
4. He should have either passed the qualifying examination prescribed for the purpose or should
have functioned either as an examiner or discharged the functions of the Controller under
section 73 or both, for a total period not less than 10 years provided that, at time of making
the application for registration he has ceased to hold any such capacity; &
5. He should have paid the prescribed fees.
Under Section 127 of the Indian Patents Act, 1970, the rights of a patent agent are clearly
defined
1. Right to Represent Clients Before the Controller - Patent practitioners are authorized to represent
their clients in proceedings before the Controller of Patents. This includes responding to objections,
queries, and filing applications during the examination process.
2. Right to Prepare Patent Documents - Patent practitioners have the right to prepare all essential
documents related to patent applications. This includes drafting claims and specifications, ensuring
that applications meet legal standards and fully protect the invention.
3. Right to Handle Patent Transactions - Patent agents are responsible for managing all aspects of the
patent application process. This includes handling correspondence, filing documents, and overseeing
administrative tasks related to patent prosecution.
4. Right to Perform Additional Functions - Patent agents may also perform other functions prescribed
under the Patents Act, in connection with patent proceedings. This provides them with flexibility to
manage various tasks that arise during the patent prosecution process.
Conclusion: A patent agent is a crucial professional who significantly contributes to fostering
innovation and safeguarding intellectual property rights. They specialize in the preparation and
prosecution of patent applications, helping you navigate the complexities of patent law and ensuring
that your innovations are adequately protected.
Short note on Patent Cooperative Treaty?
The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an invention
simultaneously in each of a large number of countries by filing an "international" patent application.

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The full form of PCT is Patent Cooperation Treaty. The Patent Cooperation Treaty (PCT) is an
international treaty that provides a centralized and standardized process for filing a patent application
in multiple countries. It is administered by the World Intellectual Property Organization (WIPO), and
allows an inventor to seek protection for their invention in a large number of countries by filing a
single international patent application, rather than having to file separate patent applications in each
individual country.
The Patent Cooperation Treaty (PCT) is an international treaty that provides a centralized and
standardized process for filing a patent application in multiple countries. It is administered by the
World Intellectual Property Organization (WIPO), and allows an inventor to seek protection for their
invention in a large number of countries by filing a single international patent application, rather than
having to file separate patent applications in each individual country.
The PCT process is designed to simplify and streamline the process of obtaining international patent
protection, and can help inventors save time and resources when seeking to protect their inventions on
a global scale. The PCT process consists of two main stages: the international phase and the national
phase.
During the international phase, an inventor files a single international patent application with the
relevant national or regional patent office (such as the USPTO in the United States), which is then
forwarded to WIPO for processing. WIPO conducts a preliminary examination of the application to
ensure that it meets certain minimum requirements, and publishes the application 18 months after the
priority date.
During the national phase, the inventor has the option to enter the national or regional patent systems
of the countries in which they wish to seek protection, and to pursue the grant of a patent in those
countries through the national or regional patent office. The national phase typically begins 30 months
after the priority date, and the inventor must enter the national phase in each country in which they
wish to seek protection within that time frame.
Overall, the PCT process provides inventors with a convenient and cost-effective way to seek
international patent protection for their inventions, and helps to harmonize the process of obtaining
patents in different countries around the world.
Advantages of Patent Cooperation Treaty (PCT) - The PCT simplifies the application process for
international patent applications, which allows it to have several advantages over filing patents at
those patent offices’ separately.
 Applicants can file for a single application to register their patents in all countries in a single
language simultaneously, which reduces the burden of filing several applications.
 It provides a strong basis for patenting decisions to the users by harmonizing formal
requirements.
 This single application has the effect of filing simultaneously in different countries
(designated countries), meanwhile protecting applicants from certain inadvertent errors to
meet user needs.
 Applying for the PCT application helps you examine procedures at national patent offices and
waive or reduce the patent application fees, as well as the associated legal and transactional
fees. This way, you can explore the commerciality of the inventions and reduce the deferral
costs, which will help pay the costs of prosecution in countries where the patents are
applicable.

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  You have a streamlined procedure with the help of PCT to file applications in each country
simultaneously, which also provides wide technological knowledge and data related to these
inventions to the public.
 The PCT increases the likelihood of the patent protection grant being given to people, and it
reduces the objections that would be raised later in the filing of the patents.
 The PCT application process might be costlier in the fore runs, but the cost reduces
significantly with this patent filing method in the later runs. Let's say an invention that was
filed was later found to be unpatentable. People can still make early decisions about whether
to withdraw those patents or not to avoid the national phase costs.
 The PCT application system is really flexible, and it allows you to raise funds or assess the
potential of the inventions prior to the priority claims, which can be withdrawn as close as the
deadline for the national phase entries, which can also be further extended.
 All applicants have up to eighteen months more to file for the PCT to reflect their desire to
seek protection in specific countries and to also appoint patent agents in those countries to
facilitate transactions, which can also not be rejected on the grounds of any designated
officers. This helps them facilitate the process for filing of patents at their own pace and retain
their applications with their own terms.
 The PCT gives out search reports and warrants for the people to validate and reason out their
requirements for the patents for the applicants to evaluate whether their inventions will get
patented or not, which helps them amend the international applications as well. It adds an
advantage as the workload on patent offices is significantly reduced by the PCT because they
do not have to look into every application and can go through the search reports and
preliminary international reports sent by the PCT.
 The PCT gives fast-track examination procedures to all the contracting states in the national
phase, which helps them give third parties a better formulated opinion of whether the patents
will be passed or not, with international publications on Patent scope to advertise their patents
further.
Disadvantages of Patent Cooperation Treaty (PCT) - There are several disadvantages, in contrast
to the several advantages of the PCT, that you might want to consider with the uniform formality
requirements:
 The system is best for utility patents, though non-design related patents might not benefit
from the PCT. The process is lengthy and creates examination delays.
 The PCT applications go through all national and regional patent office’s separately, which
makes it a costlier process because the applicants must prosecute the applications, which
would require them to pay for their attorneys as well.
Short note on classification of Patents application?
Types of patent applications -
Provisional application: A provisional application is usually filed when the invention has not yet
been completed in totality or has not yet been tested. A provisional application helps in establishing
the priority date. Priority date refers to the first date of filing a patent application. If the final
application were to be filed within 12 months of the priority date, the priority date itself would be
considered as the date of submission of the patent application. There are several advantages of filing a
provisional patent application:
1. The applicant gets sufficient time to finalize his invention and ascertain its market potential.
2. It is less expensive to file a provisional application.

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 3. The priority date helps establish priority over upcoming similar inventions.
4. A provisional application also enables the applicant sufficient time to file international
applications in various countries, and claim the priority date.
Ordinary application: An ordinary patent application refers to an application filed without claiming
any priority date and is made without any reference to any other application under process. Therefore,
in an ordinary patent application, the priority date and the date of filing coincide. An ordinary
application must be accompanied by a complete specification and claims.
Convention application: A convention application is a form of complete application wherein your
application has already been filed in some other country/jurisdiction. That is, if your first filing was
not in India, you may go for a convention application in India within 12 months from the priority date
established in the country of first filing.
The word ‘convention’ refers to the Paris Convention for the Protection of Industrial Property.
Around 179 member states are signatories to this convention meaning almost all the countries are part
of this agreement.
Exemplary Scenario: If an applicant filed a non-provisional application in the US on the 1 st of
January 2021, he/she can file a corresponding convention application in India within January 1 st, 2022
as a convention application. Herein, the priority date of the application filed in India will be the 1 st of
January, 2021.
Pros:
1. Almost all countries are covered by the Paris convention.
Cons:
1. Corresponding applications are to be filed within 12 months from the priority date.
2. Individual applications are to be filed in each country.
3. No provision to pay a consolidated application filing fee.
Minimum documents required (maybe filed before 12 months)
1. Name, address and Nationality of Applicants and inventors.
2. Priority application number, date of filing, country, title of invention and applicant in
convention country.
3. Patent specification, claims and drawings in English. (Preferably send by email)
Complete filing requirements (may be filed after 12 months)
1. Certified copy of Priority documents (within 6 months).
2. A true translated copy of complete specification filed in a convention country, if the original
application was not in English (within 6 months).
3. Proof of Right to file Patent (like Assignment Deed or Employment contract or Form-1 signed by
inventors): within 6 months.
4. Power of Attorney (may be filed later; no late fee).
5. Following information (as far as available) regarding the application filed in other countries, if
any:
 Name of the Country

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  Date of Application
 Application No.
 Status of the application
 Date of publication
 Date of grant
 Certified Copy of Priority Documents
6. For convention applications, a certified copy of priority documents with English translation has to
be filed within 3 months from the date of communication by the Controller.
PCT application: A PCT application, governed by the Patent Cooperation Treaty, is an international
application that helps to patent one's invention in up to 142 countries. For a person seeking
widespread recognition and protection of his invention, the PCT application is arguably the best
choice. There are several ways in which a PCT application may be filed:
 Filed in the Indian Patent Office (IPO), with it acting as receiving office.
 Filed directly in the International Bureau of World Intellectual Property Organisation (WIPO)
after getting a foreign filing permit from the IPO.
 Applicants can file in the International Bureau (IB) of WIPO after 6 weeks and within 12
months of filing an application in India.
There are several advantages of pursuing international protection through a PCT application:
 By filing a single international application, one may be able to help protect his invention in up
to 142 countries.
 From the date of filing of the international application, a hefty time period of 30-31 months is
provided to the applicant, in order to file national phase applications in his selected countries
and test the feasibility of his invention.
 Also provides for an international prior art search. A prior art search is quintessential in order
to determine the novelness of the invention, for a patent may only be obtained if the invention
is novel and non-obvious.
 It provides an option for requesting an International Preliminary Examination Report, the
report containing an opinion on the patentability of the invention.
 The international prior art search and preliminary examination report help inform the
applicant about the status of his invention, and thus help him save out on costs and time
before the national phase filing commences.
 It also gives the applicant a reasonable idea of the patentability of the invention before
incurring charges for filing and prosecuting the application in each country.
PCT National phase application: The phase of national filing commences after the filing of the
international application. An applicant can file a national phase application in India, within 31 months
of the date of filing of the international application.
Language requirement: The Indian national phase application could be filed either in English or in
Hindi. While Hindi is an option, even Indian applicants mostly consider filing patent applications in
English. Hence, for all practical purposes, one shall consider filing the national phase application in
English.
Apart from filing the patent application in English, in case a priority document of the PCT application
is not in English, then an English translated priority document should be filed within 31 months from
the priority date of the PCT application.

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Patent of Addition: Ideas are not constant, they keep evolving. Inventions that result from those
ideas keep evolving as well. Section 54 of The Indian Patent Act, 1970 provides a solution to
inventors who wish to protect improvements to their existing patents. The improvement can be
patented as a patent of addition. The concept of protecting improvements to existing patents are used
around the world to keep up with updates to products and processes.
Divisional application: A divisional application comes into the picture when the patent office directs
the applicant to divide an application into two or more applications. Usually, the patent office issues
such directions if the application claims more than one invention. According to The Indian Patent Act,
1970, each application can protect only a single invention (Section 10(5) – Unity of Invention).
Conclusion: The Indian Patent Act, 1970 provides applicants with an array of options to protect their
inventions depending upon the applicant’s requirements.
Types of Patents in India?
The Patents Act of 1970 outlines four primary types of patents in India: utility patents, design patents,
plant patents and Provisional patents.
 Utility patents protect new inventions, processes, and methods of production.
 Design patents focus on safeguarding the aesthetic aspects of a product.
 Plant patents are granted for new and distinct varieties of plants.
 Provisional patents secure an early filing date temporarily for an Innovation.
1. Utility Patent - A utility patent protects new and valuable discoveries such as machinery,
compositions of materials, methods, or improvements. Utility patents are also known as “patent for an
invention”.
Utility patents focus on the practical features of inventions, unlike design patents that protect the
aesthetic aspects.
A utility patent is a legal right granted under India’s Patents Act of 1970, which grants exclusive
rights to the inventor for 20 years from the filing date, provided annual maintenance fees are paid.
1.1 Examples of Utility Patents
 Anti-cancer drug Imatinib Mesylate, protected for its unique formulation.
 Bt Cotton technology, recognized for enhancing pest resistance.
Utility patents play a crucial role in safeguarding useful inventions and promoting innovation in India.
1.2 Benefits of Utility Patents
Protection of Innovations against Unauthorized Production: Utility patents grant inventors the
sole right to their creations, shielding their innovations against unauthorized production, use, or sale.
Inventors are encouraged to devote time and resources to creating new concepts because they know
their efforts will pay off financially.
Encouragement of Research and Development (R&D): Utility patents, which grant exclusive
rights, incentivize businesses to conduct R&D, eventually resulting in breakthroughs in several
industries, including manufacturing, technology, and healthcare.
Attracting Investment from Companies and Financiers: New ventures and companies with patents
on their products are frequently more appealing to financiers. Patents are essential assets that can
boost a business’s worth and give it a competitive advantage.

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Encouraging Partnerships and Licensing: Utility patents can provide businesses access to
partnerships and licensing arrangements. Patent holders can license their creations to third parties,
which makes money and lets other companies use their technology. This cooperative strategy may
spur additional innovation and commercial growth.
2. Design Patent - Design patents are intellectual property rights that protect a product’s distinctive
ornamental features, such as shape, pattern, or color palette, unlike utility patents, which cover
functional aspects, design patents focus on artistic and aesthetic qualities.
Design Patent in India are granted under the Designs Act of 2000, which grants protection lasting 15
years from the registration date, prohibiting unauthorized parties from copying or using the design.
Industries covered by the design patent include fashion, consumer electronics, furniture, and
packaging.
Examples of Design Patent
 Apple iPhone design patent (U.S. Patent No. D604,305) protects its distinctive shape and
front panel aesthetics.
 Nike Air Force 1 (U.S. Patent No. D263,539) covers the iconic sneaker’s unique silhouette.
 Lego brick design patent (U.S. Patent No. D478,968) protects its classic interlocking shape.
Benefits/Design patents are essential for the following reasons:
Protection of Original Designs from Unapproved Usage: Patents on designs offer legal defense
against unapproved usage, copying, or counterfeiting of designs. Ensuring inventors maintain
exclusive rights to their unique designs encourages creativity and innovation across various industries.
Commercial Advantage through Increase in Market Worth: Obtaining a design patent raises a
product’s market worth. Customers are drawn to distinctive and eye-catching designs, which aid
companies in setting their goods apart in a competitive market. Increased sales and brand loyalty may
result from this competitive edge.
Boosting Brand Identity and Consumer Loyalty: Design patents partly establish a strong brand
identity. A distinctive design has the power to associate a brand with itself, giving people easy access
to it. This acknowledgement may result in increased repeat business and consumer loyalty.
3. Plant Patent - A plant patent is an intellectual property right that safeguards the unique
characteristics of a new plant, preventing others from copying, selling, or using it without permission.
plant patent grants exclusive rights to inventors who discover or develop novel plant species.
Plant patents are Governed by the Plant Varieties and Farmers’ Rights Act, 2001 (PPV&FR Act) in
India, plant patent protects both asexually and sexually reproduced plant types that meet specific
criteria:
1.Novelty
2.Distinctness
3.Uniformity
4. Stability
Plant patent is developed to comply with international agreements, such as the TRIPS Agreement
(Trade-Related Aspects of Intellectual Property Rights). Plant patent ensures adequate protection for
plant varieties while recognizing the rights of farmers and breeders.
3.1 Examples of Plant Patents

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  High-yielding hybrid rice variety Pusa 44 (Indian Agricultural Research Institute).
 Kesar Mango (known for its distinct flavor).
 Colorful Gerbera daisies.
 Pest-resistant types of eggplant.
Benefits/Plant patents are essential to farmers, breeders, and the agriculture industry in general
for several important reasons:
Protection of Breeders’ Rights from Unapproved Sale or Use: Plant patents offer breeders legal
defense by prohibiting their patented plant types’ unapproved use, sale, or reproduction. This
protection ensures breeders can profit monetarily from their labour, promoting innovation.
Facilitation of Commercialization and Promotion of New Plant Varieties: Plant patents help
breeders successfully market their new varieties. Breeders may confidently promote their plants and
boost sales and profitability by safeguarding their intellectual property.
Contribution to Economic Growth, Innovation and Commercialization: Plant patents support
agricultural innovation and commercialization, which advances economic growth. Introducing novel
plant types can boost agricultural output, create jobs, and improve the standard of living for farmers
and breeders.
4. Provisional Patent - A provisional patent application (PPA) is an initial filing that provides
inventors with a 12-month window to secure a filing date for their invention while allowing time for
further development. To maintain the benefits of this early filing date, a complete non-provisional
patent application must be submitted within the 12-month period.
Filing provisional patent avoids the formalities associated with a regular patent application. It
provides a “patent pending” status, which is advantageous when seeking partners or investors.
4.1 Examples of Provisional Patent
 A provisional patent for a social networking app that connects users based on shared interests.
 A provisional patent for a smartwatch that tracks heart rate, sleep patterns, and physical
activity.
Benefits/Provisional patents are essential to inventors and businesses for several important
reasons:
Early Filing Date: A provisional patent’s main benefit is setting an early filing date. In nations where
the “first to file” rule is in effect, it protects the inventor’s rights from possible rivals.
Cost-effectiveness: Filing a provisional patent typically costs less than submitting a complete, non-
provisional patent application. This allows innovators to preserve their ideas and avoid paying
expensive legal fees and other patent-related expenses.
Flexibility for Development: Inventors can do market research, refine their ideas, and look for
funding during the 12-month term granted by a provisional patent, all without rushing to submit a
fully developed non-provisional application immediately.
Short Note on Geographical Indication?
“A geographical indication is a sign used on goods that have a specific geographical origin and
possess qualities, reputation or characteristics that are essentially attributable to that place of origin.”

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Geographical Indication (GI) is a sign used on a product that originates from a specific geographical
location. The product must possess reputation and qualities of the place of origin. GI are generally
registered on products produced by rural, marginal and indigenous communities over generations that
have garnered massive reputation at the international and national level due to some of its unique
qualities. GI tag gives the right to only those registered users the right to use the product name, and
prevents others from using the product name that does not meet the standards prescribed.
In India, Section 2(1)(g) of the Geographical Indications of Goods (Registration and Protection)
Act, 1999 defines “geographical indication”, in relation to goods, to mean: “an indication which
identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or
manufactured in the territory of a country, or a region or locality in that territory, where a given
quality, reputation or other characteristic of such goods is essentially attributable to its geographical
origin and in case where such goods are manufactured goods one of the activities of either the
production or of processing or preparation of the goods concerned takes place in such territory, region
or locality, as the case may be.”
A GI is a name, term, sign, symbol, or design that indicates the geographical origin of a product,
where its qualities are primarily due to that origin.
Examples:
 Darjeeling Tea: Tea grown only in the Darjeeling region of India.
 Champagne: Sparkling wine produced in the Champagne region of France.
 Basmati Rice: Aromatic rice variety cultivated in specific regions of India.
Government of India enacted Geographical Indications of Goods (Registration and Protection) Act,
1999. This act came into force in September, 2003. Registration of GI’s began in the year 2004-05
after the above mentioned law came into effect in 2003. Darjeeling Tea of West Bengal was the first
product to receive the GI tag in India. Both the product and the logo received the GI tag.
There are some products which have its origins from different states, in such a scenario the origin will
be mentioned as India.
1. Phulkari Handicraft – Origin from Punjab, Haryana, Rajasthan.
2. Warli Painting – Maharashtra, Gujarat, Daman & Diu
3. Malabar Robusta Coffee – Kerala & Karnataka
The use of geographical indications is not limited to agricultural products. The Indian law extends the
protection to geographical indication used not only for handicrafts and agricultural goods but also to
manufacturing goods. They may also highlight qualities of a product which are due to human factors
associated with the place of origin of the products, such as specific manufacturing skills and
traditions. The place of origin may be a village or town, a region or a country.
Importance of GIs:
Preserving Cultural Heritage: GIs play a pivotal role in safeguarding India’s rich cultural heritage
by preserving traditional knowledge and practices. These indications not only recognize the unique
qualities of products but also celebrate the centuries-old craftsmanship and expertise passed down
through generations.
Assuring Quality and Authenticity: For consumers, GIs serve as a mark of quality and authenticity.
By associating a product with its geographical origin, consumers are assured of its distinct

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characteristics and adherence to traditional production methods. This fosters consumer trust and
encourages informed purchasing decisions.
Promoting Rural Development: GIs serve as catalysts for rural development by empowering local
communities and promoting sustainable livelihoods. By highlighting the distinctiveness of products
from specific regions, GIs create opportunities for small-scale producers to access wider markets,
thereby stimulating economic growth in rural areas.
Benefits of GI Registration:
Economic Empowerment: GI registration provides economic benefits to producers by conferring
exclusive rights over the use of the indication. This enables producers to leverage the market value
associated with the geographical origin, leading to increased demand and higher prices for their
products.
Market Access and Expansion: GIs open doors to domestic and international markets by
differentiating products and creating a niche for them based on their geographical origin. The GI tag
acts as a marketing tool, attracting consumers seeking authentic and unique products, thereby
facilitating market expansion for producers.
Tourism Promotion: Geographical indications serve as cultural ambassadors, attracting tourists to
regions renowned for their unique products. Whether it's the aromatic spices of Kerala or the intricate
craftsmanship of Kashmiri shawls, GIs enhance the tourism potential of regions, contributing to local
economies and heritage conservation.
Difference between Geographical Indication and Trade Mark?
A trademark is a sign used by a person to distinguish its goods and services from those of other
persons. It gives its owner the right to exclude others from using his trademark. A trademark will
often consist of a fancy name or device. A geographical indication tells consumers that a product is
produced in a certain place and has certain characteristics that are connected to that place of
production. It may be used by all producers who make their products in that place designated by a
geographical indication and whose products share specified qualities. Unlike a trademark, the name
used as a geographical indication is usually predetermined by the name of the place of production.
Prohibition of registration of certain geographical indications? What Indications are not
registrable?
A GI is a registered indication of the geographical origin of a product. GIs help consumers make
informed decisions about the quality and features of a product.
The Geographical Indications of Goods (Registration and Protection) Act of 1999 prohibits the
registration of certain geographical indications (GIs) in India. These include GIs that are likely to be
misleading, illegal, or offensive.
Prohibited GIs
1. the use of which would be likely to deceive or cause confusion; or
2. the use of which would be contrary to any law for the time being in force; or
3. which comprises or contains scandalous or obscene matter; or
4. which comprises or contains any matter likely to hurt the religious susceptibilities of any class or
section of the citizens of India; or
5. which would otherwise be disentitled to protection in a court; or

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 6. which are determined to be generic names or indications of goods and are, therefore, not or
ceased to be protected in their country of origin, or which have fallen into disuse in that country;
or
7. which, although literally true as to the territory, region or locality in which the goods originate,
but falsely represent to the persons that the goods originate in another territory, region or locality,
as the case may be, shall not be registered as a geographical indication.
Explanation 1 - For the purposes of this section, "generic names or indications", in relation to goods,
means the name of a goods which, although relates to the place or the region where the goods was
originally produced or manufactured, has lost its original meaning and has become the common name
of such goods and serves as a designation for or indication of the kind, nature, type or other property
or characteristic of the goods.
Explanation 2 - In determining whether the name has become generic, account shall be taken of all
factors including the existing situation in the region or place in which the name originates and the area
of consumption of the goods.
Explain the procedure of registration of Geographical Indication?
Registration of Geographical Indication - Section 8. Registration to be in respect of Particular goods
and area
1) A geographical indication may be registered in respect of any or all of the goods, comprised in
such class of goods as may be classified by the Registrar and in respect of a definite territory of a
country, or a region or locality in that territory, as the case may be.
2) The Registrar shall classify the goods under subsection (1), as far as may be, in accordance with
the International classification of goods for the purposes of registration of geographical
indication.
3) The Registrar may publish in the prescribed manner an alphabetical index of classification of
goods referred to in sub-section (2).
4) Any question arising as to the class within which any goods fall or in the definite area as referred
to in subsection (1) in respect of which the geographical indication is to be registered or where
any goods are not specified in the alphabetical index of goods published under subsection (3)
shall be determined by the Registrar whose decision in the matter shall be final.
PROCEDURE FOR AND DURATION OF REGISTRATION - The Procedure of registration of a
Geographical Indication is similar to that of a trade mark. Sections 11 to 15 of the Act specify the
Procedure and Duration of registration which is as follows: -
Section 11: Application for registration
Who can Apply - Any association of persons or producers or any organization or authority
established by or under any law for the time being in force representing the interest of the producers
of the concerned goods, who are desirous of registering a geographical indication in relation to such
goods shall apply in writing to the Registrar in such form and in such manner and accompanied by
such fees as may be prescribed for the registration of the geographical indication.
Filing of the Application
 The application for the registration of Geographical Indication shall be made in triplicate.
 The application then must be signed by the applicant or his agent along with the statement of
case and has to be submitted along with the prescribed form GI-1

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  A single application can be filed for different classes of goods and fees payable shall be in
respect of each of such class of goods.
 An affidavit is required to accompanying the forms has to be submitted by the association of
persons, producers, organizations or authority representing the interest of the producers over
certain goods and how the applicant claims to represent their interest
What should be the contents of the application? Section 11 (2)
 Firstly, it should state how the geographical indication serves to designate the goods as
originating from the concerned territory of the country or region or localities as the case may be,
in respect to quality specifications, reputation, characteristics which are exclusively due to
certain environmental conditions with inherit natural or human factors relating to the territory.
 It should also state the class of goods to which the geographical Indication shall apply
 The geographical map of the territory of the country or region or the locality of the country in
which the goods are produced or manufactured should be included.
 Particulars regarding the appearance of the geographical indications as to whether it is comprised
of words or figurative elements or both.
 Statement containing the details of the applicant including the names, addresses and other such
details as may be specified from time to time
Preliminary Scrutiny and Examination - Section 11 (5) to (7)
 The application will be scrutinized by the examiner for any deficiencies and discrepancies.
 In case of any deficiencies and discrepancies, the applicant is required to rectify the same with a
period one month of its communication.
 The correctness and authenticity of the content of statement furnished by the applicant shall then
be assessed by the Registrar in consultation with a group of experts consisting of not more than 7
representatives who are well versed on the subject.
 Only after proper scrutiny and examination that the examination report will be issued.
Issue of Show Cause Notice - (Section 12)
 If the Registrar has any objection with regards to the application, then the same shall be
communicated to the applicant.
 The applicant must respond within a period of two months from the receiving of the notice or he
can apply for hearing
 The Registrar has been entrusted with the power to withdraw the application after giving the
applicant a reasonable opportunity of being heard, if he is of opinion that there has been an error
on the part of the applicant and the same has been conveyed to him
 If aggrieved, an appeal can be made within period of one month of the Registrar’s decision.
Advertisement - (Section 13)
 Every application for registration of geographical indication that has been accepted absolutely or
with subject to conditions or limitations shall within three months of acceptance shall be
published in the Geographical Indications Journal.
Opposition to Registration - Section 14

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  Any person interested in opposing the registration can file the notice of opposition within three
months which can be further extended by another one month on request but it has to be filed
before the completion of three months while opposing the GI application that is published in the
Journal.
 The registrar shall send and provide a copy of the notice to the applicant.
 The applicant shall within two months send a copy of the counter statement.
 If he is not able to do this, then it shall be deemed that he has abandoned his application. Where
the counter-statement is filed, the registrar shall send a copy on every person giving the notice of
opposition.
 Subsequently, both sides will be able to give their concerned evidences by way of supporting
documents and affidavit.
 A date for hearing of the case shall be fixed thereafter.
 The registrar after hearing both the parties and considering all the evidence shall decide whether
to accept the application with or without limitations or conditions
 If it comes to the notice of the registrar that either the applicant or person giving the notice of
opposition neither resides nor carries on the business in India, the registrar may require him to
give the security for the cost of proceedings before him and in case of any default of such
security duly given, may treat the application or opposition as the case may be, as abandoned.
 On request the Registrar may permit to make any correction or amendment of an error in the
notice of opposition or counterstatement.
Corrections and amendments - Section 15
The Registrar may from time to time with subject to certain terms and conditions permit either before
or after the acceptance of the application, the correction of any error or an amendment of the
application.
Registration - Section 16
 The registrar must register the geographical indication for it upon acceptance of the application.
 Where the application has been registered, the date of filing is considered the registration date.
 In accordance with Rule 55 of the Rules of Procedure for the Geographical Indications of Goods,
2002, the registrar must then provide the applicant a certificate with the seal of the Register of
the geographical indication in Form 02.
Duration of the GI and renewal (section 18)
 A geographic indication registered shall be valid for ten years and may be renewed upon
payment of the renewal cost.
 The registrar shall forward this notice to the registered proprietor or, as the case may be, to the
authorized user on the date of expiry, the requirements for the payment of fees and upon renewal,
at the time the final registration of the geographical indication expires.
 If this is not done, the geographical indication may be removed.
 In cases where the Registrar removes an indication on grounds that the renewal fees have not
been paid, the geographical indication may be restored, for a period of 10 years following expiry
of the last geographical index, on the request and after payment of the prescribed fees, for a
period of six months and within one year of the expiry of the latest registration.

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Conclusion: The demand for protection is expanding in the context of intellectual property rights. In
appreciating the value of these rights, India has been prominent and has successfully signed and
ratified the TRIPS agreement. Since the Darjeeling Tea became the first GI in India, the execution of
the GIs in India has been increasing. In order to protect the culture and human rights, the Indian
government has worked to streamline the registration process. It includes the filing of a thorough
request, its review, its acceptance, where there are no objections, advertising of the applications in the
GI Journal, an entry in the GI Register and finally issuing the 10-year GI certificate.

Can the registration of GI be done by Authorized User?

Section 17 allows an authorized user to make application of Registration of Geographical Indication.
It provides that any person who claims to be the producer of the goods in respect of which a
geographical indication has been registered under section 16 may apply in writing to the Registrar in
the prescribed manner for registering him as an authorized user of such geographical indication. It
further provides that such application shall be accompanied by a statement and such documents of
facts as may be prescribed and required by the Registrar to determine as to whether such person is the
producer of the goods referred to in that sub-section along with such fee as may be prescribed.
What are effects of registration of Geographical Indication?
Registration of a GI gives its owner and the authorized users the exclusive right to use the indications
on the good in which it is registered. Further, registration gives right to institution of suit against
infringement and recovery of damages for such infringement. Infringement can be caused by use of
the GI on such goods which indicates that such goods originate in such place other than its true place
of origin or due to unfair competition. However, in case of non-registered GIs, a case of passing off
can be instituted. Registration acts as a prima facie evidence of validity of the indication and
ownership. The registration cannot be transferred, mortgaged, assigned or licensed, except in case of
inheritance of the mark upon death of an authorized user.
Any person who falsely applies or falsifies any geographical indication, tampers the origin of a good,
make or have in possession of dye, blocks, machines to use in falsification of GI may be punished
shall not be less than six months but which may extend to three years and with fine which shall not be
less than fifty thousand rupees but which may extend to two lakhs (200,000) rupees. In case of second
and for every subsequent offence, a person can be punished with imprisonment for a term which shall

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not be less than one year but which may extend to three years and with fine which shall not be less
than one lakh rupees but which may extend to two lakh rupees. However, the judge may under certain
condition may reduce the sentence, and reasons for reduction of punishment must be written in the
judgment. Other offences include, falsely represent a GI to be registered, falsification of entries in
register, falsely representing a place to be connected with GI Registry.
Effect of Registration – Section 20 to 24 set out the effect of registration of GI
20. No Action for Infringement of Unregistered Geographical Indication
(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the
infringement of an unregistered geographical indication.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off
goods as the goods of another person or the remedies in respect thereof.
21. Rights Conferred by Registration
(1) Subject to the other provisions of this Act, the registration of a GI shall, if valid, give, -
(a) to the registered proprietor of the GI and the authorized user or users thereof the right to obtain
relief in respect of infringement of the GI in the manner provided by this Act;
(b) to the authorized user thereof the exclusive right to the use of the GI in relation to the goods in
respect of which the GI is registered.
(2) The exclusive right to the use of a GI given under clause (b) of sub-section (1) shall be subject to
any condition and limitation to which the registration is subject.
(3) Where the two or more persons are authorized users of geographical indications, which are
identical with or nearly resemble each other, the exclusive right to the use of any of those GI shall not
(except so far as their respective rights are subject to any conditions or limitations entered on the
register) be deemed to have been acquired by anyone of those persons as against any other of those
persons merely by registration of the GI, but each of those persons has otherwise the same rights as
against other persons as he would have if he were the sole authorized user.
22. Infringement or Registered Geographical Indications
(1) A registered GI is infringed by a person who, not being an authorized user thereof, -
(a) uses such GI by any means in the designations or presentation of goods that indicates or
suggests that such goods originate in a geographical area other than the true place of origin of such
goods in a manner which misleads the persons as to the geographical origin of such goods; or
(b) uses any GI in such manner which constitutes an act of unfair competition including passing
off in respect of registered GI.
Explanation 1: - For the purposes of this clause, "act of unfair competition" means any act of
competition contrary to honest practices in industrial or commercial matters.
Explanation 2: - For the removal of doubts, it is hereby clarified that the following acts shall be
deemed to be acts of unfair competition, namely: -
(i) all acts of such a nature as to create confusion by any means whatsoever with the
establishment, the goods or the industrial or commercial activities, of a competitor;
(ii) false allegations in the course of trade of such a nature as to discredit the establishment, the
goods or the industrial or commercial activities, of a competitor;

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 (iii) GI, the use of which in the course of trade is liable to mislead the persons as to the nature,
the manufacturing process, the characteristics, the suitability for their purpose, or the quantity,
of the goods;
(c) uses another GI to the goods which, although literally true as to the territory, region or locality
in which the goods originate, falsely represents to the persons that the goods originate in the
territory, region or locality in respect of which such registered GI relates.
(2) The Central Government may, if it thinks necessary so to do for providing additional protection to
certain goods or classes of goods under sub-section (3), by notification in the Official Gazette, specify
such goods or class or classes of goods, for the purposes of such protection.
(3) Any person who is not an authorized user of a GI registered under this Act in respect of the goods
or any class or classes of goods notified under sub-section (2), uses any other GI to such goods or
class or classes of goods not originating in the place indicated by such other geographical indication
or uses such other GI to such goods or class or classes of goods even indicating the true origin of such
goods or uses such other GI to such goods or class or classes of goods in translation of the true place
of origin or accompanied by expression such as "kind", "style", "imitation", or the like expression,
shall infringe such registered GI.
(4) Notwithstanding anything contained in this section, where the goods in respect of which a GI has
been registered are lawfully acquired by a person other than the authorized user of such GI, further
dealings in those goods by such person including processing or packaging, shall not constitute an
infringement of such GI, except where the condition of goods is impaired after they have been put in
the market.
23. Registration to be Prima Facie Evidence of Validity
(1) In all legal proceedings relating to a GI, the certificate of registration granted in this regard by the
Registrar under this Act, being a copy of the entry in the register under the seal of the GI Registry,
shall be prima facie evidence of the validity thereof and be admissible in all courts and before the
Appellate Board without further proof or production of the original.
(2) Nothing in this section shall be deemed to affect of the right of action in respect of an unregistered
GI.
24. Prohibition of Assignment or Transmission, etc. - Notwithstanding anything contained in any
law for the time being in force, any right to a registered GI shall not be the subject matter of
assignment, transmission, licensing, pledge, mortgage or any such other agreement; Provided that on
the death of an authorized user his right in a registered GI shall devolve on his successor in title under
the law for the time being in force.
Meaning of Term Design? Objective/Salient Features of Design Act 2000?
According to Section 2(d), “Design” refers to features such as shape, pattern, configuration,
ornament, or composition of colors or lines that are applied in three dimensions, two dimensions, or
both using any of the processes, whether manual, chemical, mechanical, separate, or combined, and
that in the finished article appeal to or are judged entirely by the eye.
but does not include any mode or principle of construction or anything which is in substance a mere
mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of
section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in
section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of
section 2 of the Copyright Act, 1957 (14 of 1957).

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The salient features of the Design Act, 2000 are as under:
(a) Enlarging the scope of definition of the terms “article”, “design” and introduction of definition
of “original”.
(b) Amplifying the scope of “prior publication”.
(c) Introduction of provision for delegation of powers of the Controller to other officers and
stipulating statutory duties of examiners.
(d) Provision of identification of non-registrable designs.
(e) Provision for substitution of applicant before registration of a design.
(f) Substitution of Indian classification by an internationally followed system of classification.
(g) Provision for inclusion of a register to be maintained on computer as a Register of Designs.
(h) Provision for restoration of lapsed designs.
(i) Provisions for appeal against orders of the Controller before the High Court instead of the
Central Government.
(j) Revoking the period of secrecy of two years of a registered design.
(k) Providing for compulsory registration of any document for transfer of right in the registered
design.
(l) Introduction of additional grounds in cancellation proceedings and provision for initiating the
cancellation proceedings before the Controller in place of the High Court.
(m) Enhancement of quantum of penalty imposed for infringement of a registered design.
(n) Provision for grounds of cancellation to be taken as defense in the infringement proceedings to
be in any court not below the Court of District Judge.
(o) Enhancing the initial period of registration from 5 to 10 years, to be followed by a further
extension of five years.
(p) Provision for allowance of priority to other convention countries and countries belonging to the
group of countries or inter-governmental organizations apart from United Kingdom and other
Commonwealth Countries.
(q) Provision for avoidance of certain restrictive conditions for the control of anti-competitive
practices in contractual licenses.
Importance of a design - A design is a really important Intellectual property right as it reflects the
artistry and creativity of a person which afterward becomes a valuable product. A design is what will
make you different from your competition and help you garner the desired feelings and result from
customers. A design can also make a long lasting impact on the mind of the consumers. This helps the
consumers to recognize any product and distinguish between the products of different brands. If the
design is alluring and attractive, then it adds value to the business of that product by increasing the
product’s value. It adds value to the product and helps in gaining healthy returns on investment. It
gives you a fair competition in the market. Thus, in order to prevent a design infringement, it is
necessary to get it registered under the Designs Act, 2000. A mechanism has been fixed by the
government to fulfill this purpose.
An article with an attractive, stylish, and appealing design can increase its industrial and commercial
value. The purpose of design is to protect it, which in turn encourages fair competition in the industry
by maintaining originality, creativity, and novelty of the article. Once a design is registered, it can be
easily identified as belonging to a particular brand, and special rights are granted to sell the design as
it becomes a business asset. The Design Act not only protects the design but also allows the owner to
file a suit against an infringer for loss of sales and damage to goodwill. The registration of a design
provides a license to the owner, which can be used as an asset in times of need and provides exclusive
rights to the owner against unauthorized copying or imitation of the design by third parties.

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 Short Note on Designs which are prohibited for registration under Design Act?
Designs Prohibited from being registered under the Act - Section 4 of the act clarifies that a design
which -
1. is not new or original; or
2. has been disclosed to the public anywhere in India or in any other country by publication in
tangible form or by use or in any other way prior to the filing date, or where applicable, the
priority date of the application for registration; or
3. is not significantly distinguishable from known designs or combination of known designs; or
4. comprises or contains scandalous or obscene matter, shall not be registered.
Section 4 of the Design Act 2000 provides that the Designs, which are neither new, nor original, or
prior published or not significantly different from known designs, or is combination of known designs
etc. are not registrable within the provisions of Design Act 2000.
Duration of the registration of a design - The duration of design described under Section 11 of
design act, 2000 provides total duration of registration was 15 years where 10 years given initially
from the date of registration and later 5 years extended by the controller with the fees of Rs. 2000 and
it should be happening before the expiry of that 10-year period. Hence, total year of statutory
protection of Registered Design is 15 years (10+5) from the date of Registration.
Explain the term Industrial Design, enumerate the procedure for registration of
Industrial Design?
In India, the term industrial design is defined under the Designs Act, 2000. The Act offers protection
to the aesthetic and ornamental aspects of a product, allowing creators and manufacturers to safeguard
the visual features of their designs, which can include lines, colors, shapes, patterns, or configurations.
The design must be applied to an article and should enhance its appearance. The protection is granted
to the appearance, not the technical or functional aspects of a product.
According to Section 2(d) of the Designs Act, 2000, an industrial design is a composition of lines or
colors applied to any article in a way that gives it an appealing appearance. It can also be applied to
a three-dimensional object, such as the shape of a product, or two-dimensional features, like
patterns and decoration. However, the design must be novel, original, and not purely functional or
artistic.
Objective of Design Registration in India - The Purpose of obtaining the design registration under
the Designs Act is to safeguard a novel or innovative design to be applied to a specific article under
the manufacturing process through an Industrial Process or mode.
At times, we see that customers’ buying behavior towards some articles for consumption is inclined
not only by their actual product quality but also by the design of their appearance, e.g., a mobile
phone or goggles.
The main objective of obtaining a design Registration is to make sure that the particular artisan,
creator, craftsman, engineer or the designer of that design having a unique appearance is not deprived
and deceived of his bonafide reward by some copycats, who might tend to use his design to their
goods.
Importance of Design Registration - Designs play a significant role in attracting attention to
products and articles. Unique and appealing designs make them easily recognizable and enhance their
commercial value. Registering a design provides various benefits and protection to designers.

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Enhancing Commercial Value - Industrial design adds style, appeal, and attractiveness to a product
or article, making it stand out. Registering a design increases its commercial value as it becomes
exclusive to the owner. This exclusivity helps consumers identify the product with a particular brand.
Registered designs can be sold or used as assets for business purposes, such as paying liabilities.
Protection and Legal Rights - Registering a design gives the owner legal rights and protection
against unauthorized copying or imitation by others. In case of infringement, the owner can file a
lawsuit to recover losses and protect their market position and reputation. Additionally, owners can
license or sell their registered designs to generate income or expand their production capacity.
Design Registration Process - To register a design, an application must be submitted to the Office of
the Controller General of Patents, Designs, and Trademarks located in Kolkata, under the Department
of Industrial Policy and Promotion in the Ministry of Commerce and Industry. The office conducts an
investigation and grants registration if the application meets all the necessary formal and substantive
requirements outlined in the Designs Act.
To register and protect a design under the Design Act of 2000, the following essential elements
must be fulfilled:
Novelty Aspect: The design must possess a novelty aspect, meaning it should be new and not
previously registered. A combination of registered designs can be considered if it produces a new
visual appearance.
No Prior Publication: The design should not have been disclosed or published to the public
anywhere in India or internationally through prior use or any other means.
Application of Design to an Article: The design should be applied to the article itself. Registration
cannot be granted without an actual article.
Compliance with Public Order, Morality, and Security: The design should not go against public
order, morality, or the security of India. Designs that the government or any authorized institution
prohibits, or those contradicting public sentiment, may not be eligible for registration.
Documents Required for Design Registration - The following documents are necessary to register a
design in India:
Applicant’s Name and Address: The applicant’s name and detailed address must be provided.
Nature/Legal Status of the Applicant: The applicant should specify their legal status, such as being
a natural person or a company. Start-ups need to provide a certificate of registration.
Description of the Article: A description of the article and its identification as per the classification
system should be included in the application.
Images/Drawings of the Article: At least four images or drawings of the article from different angles
need to be submitted along with the application.
Steps Involved in Design Registration under the Design Act, 2000
Prior Art Search: The applicant conducts a search to determine if any similar design has been
previously registered. Online databases like IP India’s public design search platform and WIPO’s
Global design database can assist in this search. If no similar design is found, Form no – 7 is filed
along with a fee of Rs. 1000.
Representation and Classification of Designs: The applicant identifies the appropriate class of
design based on the function of the article using the Locarno classification. A representation or

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diagram of the design is prepared on white A4 size paper, clearly indicating the design details and
applicant’s information. It is important to adhere to the A4 size requirement to avoid delays.
Applicant details include name, address, and the article on which the design is applied. Foreign
applicants must provide an address for services in India.
Statement of Novelty: The statement of novelty is a crucial part of the application and is placed
below the representation sheet. It expedites the examination and registration process. An example
statement could be:
“The novelty of the ‘XYZ design’ resides in its unique shape and configuration as illustrated.”
Disclaimer: To distinguish the design from a trademark, a disclaimer is necessary. It clarifies that the
registration does not claim any exclusive rights to words, letters, or trademarks depicted in the
representation. If there are any powers of attorney, they should also be specified. A sample disclaimer
draft could be:
“This registration does not claim any right to the exclusive use of the words, letters, or trademarks
appearing in the representation.”
Claiming a Priority Date: The applicant can claim a priority date in India if the application is filed in
a conventional country or a member country of intergovernmental organisations. This date will be the
application’s filing date in any such country, provided that the application is made within 6 months in
India.
Payment of Fees: Fees can be paid by cheque, draft payable at the Kolkata head office, or in cash.
The application fee for registration is Rs. 1000, and for renewal, it is Rs. 2000.
Initial Processing of Application: The applicant is allocated a registration number upon filing the
application with all the required documents and fees. The application can be filed at the Design Office
in Kolkata or its branches in Delhi, Mumbai, or Chennai. The examination officer conducts a
substantive examination, and a report is issued within 2 months.
Objection Stage: If the applicant receives any formal objections, they have the opportunity to
respond by filing a written reply addressing those objections. A hearing may be scheduled if the
examination officer is not satisfied with the written reply. If the applicant fails to overcome the
objections, the design may be declared as non-registrable. This stage should be completed within 6
months from the filing date.
Final Stage of Registration and Publication: The application will be registered and published in the
patent office if the applicant clears all stages. A certificate of registration will be issued. The
registered design is valid for 10 years and can be renewed for an additional 5 years. The entire
process, from filing to registration, typically takes 8 to 12 months.
Conclusion: Design registration in India plays a vital role in protecting designs’ uniqueness and
commercial value. By registering a design under the Design Act 2000, designers can ensure that their
creations are safeguarded from unauthorized copying or imitation by others. The registration process
involves fulfilling essential requirements such as novelty, uniqueness, and application to an article.
Conducting a prior art search, preparing representations, and classifying designs are crucial steps in
the registration process. Payment of fees, addressing objections, and successfully clearing the
examination stage are also key aspects. Once registered, a design enjoys exclusive rights and can be
used to enhance marketability, generate income, or protect against infringement.

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The registration period is initially 10 years, with an option to renew for an additional 5 years. Design
registration in India provides legal protection, encourages innovation, and fosters fair competition,
ultimately benefiting both designers and consumers.
Short Note on Piracy of Registered Design?
Piracy of a design means the application of a design or its imitation to any article belonging to class of
articles in which the design has been registered for the purpose of sale or importation of such articles
without the written consent of the registered proprietor. In simple, it involves copying the distinctive
characteristics or visual elements of a design, often for commercial gain, in violation of intellectual
property rights.
Under the Designs Act, 2000, Section 22 deals with Piracy in registered designs. Section 22 Sub-
section 1 prohibits a person other than the registered proprietor of the design from certain acts in
respect of designs and if anyone commits such acts, he shall be liable for piracy of the design. Section
22 Sub-section 2 deals with remedies available with the registered proprietor in case of piracy of a
design.
PIRACY OF DESIGN: SECTION 22(1) Under the Design Act, 2000, states that during the
existence of copyright in any design it shall not be lawful for any person:
(a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in
which the design is registered, the design or any fraudulent or obvious imitation thereof, except with
the license or written consent of the registered proprietor, or to do anything with a view to enabling
the design to be so applied; or
(b) to import for the purposes of sale, without the consent of the registered proprietor, any article
belonging to the class in which the design has been registered, and have applied to it the design or any
fraudulent or obvious imitation thereof, or
(c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any
article in any class of articles in which the design is registered without the consent of the registered
proprietor, to publish or expose or cause to be published or exposed for sale that article.
In order to constitute piracy, the above-mentioned acts must be perpetrated during the existence of
copyright in the design. It is also pertinent to mention that if acts are done for personal use and not
sale then they do not constitute piracy.
In Troikaa Pharmaceuticals v. Pro Laboratories, (2008) 49 (3) GLR 2635, the plaintiff had
registered design in the ‘D’ shaped tablets. The court granted interlocutory injunction against the
defendant as he was manufacturing similar designs of tablets without authorization from the plaintiff.
In Dabur India Limited v Rajesh Kumar & Others [2008 (37) PTC 227 (Del.), the plaintiff
advertised Dabur Amla Hair Oil into bottles with distinctive design. The plaintiff alleged defendants
imitate and produce plaintiff’s plastic bottles. However, the court held that plaintiff has no particular
characteristic of the registered bottle as design. The plastic bottles are extremely common. The Court
further found that the plaintiff did not mention any particular originality in the design of the bottle.
The remedies for design piracy are enumerated in S.22 (2) of the Industrial Designs Act,2000,
which states that there can be two alternate remedies provided to the registered proprietor in the case
of design piracy which are:
 Registered proprietor of the registered design is entitled to maximum amount of twenty-five
thousand rupees as a contractual debt. However, the total sum recoverable for any one design
cannot exceed fifty thousand rupees, or

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  The registered proprietor can file a suit for temporary/permanent injunction as well as for
recovery of damages. The damages so awarded and the injunction granted are to be executed
against the infringer.
 Rendition of accounts is as well a remedy where in the court can direct the defendants to
maintain accounts of profits during the period of the pendency of infringement and these
accounts can be used for assessing the damages.
The suit for damages or injunction can be instituted in a court not below District Court.
Grounds of Defence – to get relief sub section (2) of section 22 of designs act, 2000 every ground
will act as defence when registration of design may be cancelled under section 19. Following are
grounds of defence –
 Cancellation: If the design is cancelled as per the provisions of the Act, the defendant can set out
a defence of the same.
 Expiry: The copyright on a design is available for a limited period of time, If the defendant
proves that same has expired as per the provisions of the Act, he may be entitled to use the same.
 Unreasonable Delay: If there is unreasonable delay on part of the Plaintiff to institute the
proceedings, the defendant can plead acquiescence and on this ground may be entitled to use the
design.
 No right to sue: If the defendant proves that the plaintiff is not the registered proprietor (or a duly
authorized agent or licensee) of the design, he may be entitled to use the design.
 Not new or original: The defendant can be allowed to raise a plea in that the design is neither
new nor original.
 Previously registered: The defendant can make a defence that his design has been previously
registered in India.
 Prior publication: The defendant may raise a defence of his design been published in India prior
to the date of registration.
 Conduct of Plaintiff: The defendant can plead that the Plaintiff has not approached the Court with
clean hands and that his conduct is tainted.
Conclusion: Design piracy is one of the ways to Infringe IPR. It is said to be an illegal act when any
registered design is copied without the permission of the owner. The legal remedies for infringement
of design are given in section 22 subsection 2 of the design act, 2000.
Situational Questions
Professor X published a book on the subject of Environmental Law and it was made
available for sale. Professor Y bought the book and used the same for delivering lectures and
also giving notes from the book. Professor X sued Y for violating his copyright.
i) Whether Professor Y has violated the copyright and state reasons?
No. Professor Y has not violated the copyright. For study purpose professors or students can quote
from the book under Section 52 of the Copyright Act, 1957.
Buying the Book: Purchasing the book does not transfer copyright ownership to Professor Y. It only
grants him the right to use the purchased copy for personal purposes such as reading and studying.
Delivering Lectures: If Professor Y uses the content of the book to inform his lectures, this may or
may not constitute an infringement, depending on how much of the book he uses and whether he is
simply referring to or summarizing the material. In general, using small excerpts for educational
purposes could fall under fair dealing (as per Section 52 of the Copyright Act).

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The Indian Copyright Act provides for fair dealing under Section 52, which allows limited use of
copyrighted works without permission for certain purposes, including:
 Research and private study.
 Criticism or review.
 Reporting of current events.
 Teaching (which would include the use of a work in the course of instruction).
For teaching purposes, it is important that the use is considered reasonable and does not amount to a
reproduction of the work in a way that competes with the market for the original work.
Specifically, Section 52(1)(a) mentions that "fair dealing" with a work for the purpose of teaching,
research, or private study does not constitute infringement, as long as the use is not excessive and is
consistent with the purpose.
If Professor Y is simply summarizing the content or referring to brief excerpts from the book in his
notes, this might qualify as fair dealing under Section 52 of the Copyright Act, as long as the use is
for educational purposes and does not affect the commercial viability of Professor X’s work.
However, if Professor Y is reproducing substantial parts of the book verbatim in his notes or if the
notes substitute the book, this could amount to an infringement, even if the use is for educational
purposes. The critical factors are the amount copied, substantiality of the reproduction, and impact
on the market for the original book.
ii) State whether a professor can have a copyright on his lecture?
Answer: No, the lecture is given by Professor Y by purchasing the book and delivering lecture from it,
will not have copyright.
FAIR DEALING/FAIR USE - Section 52 (1) (a) and (b) set out the acts which are considered as a fair
dealing of a copyrighted work. Fair dealing or fair use means the use of a copyright of another by any
person for specific purpose such as, research, private use - including research, criticism, review,
reporting of current events, current affairs, lectures in public etc. It simply means reasonable use. It is
indeed challenging to define fair dealing. However, one can say that a few extracts taken from the
work may be permitted. Nonetheless, one has to consider the extent and number of extracts and
material taken from another's work, if the same are numerous, and the same are not used for the
purpose of to personal use, criticism, review etc. the same will amount to infringement. Thus, whether
an act falls under a fair use/ dealing would completely depend on the facts of each case. Therefore, it
may not be appropriate to have a hard and fast rule to cover all cases of infringement which are based
on extracts taken from a copyrighted work.
The doctrine of fair dealing is the exception to a basic rule which states that the copyrighted work
cannot be used without the permission of the owner. However, the same has limitations to the extent it
is used. The factors which determine fair use are: -
(i) The nature, extent and quantum of use of the copyrighted work.
(ii) The purpose of such use, including whether such use is for commercial or non-commercial
nature.
(iii) The likelihood of competition between two works.
(iv) The effect of use upon the potential market value of the copy-righted work.

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 TYK Company applied for registration of trademark for its newly launched oil product.
named 'ALLEPAY KERALA OIL for healing arthritis, although the oil was manufactured in
Vasai, Maharashtra. The Registrar refused to register the said trademark.
i) Whether the Registrar's decision was right?
The Registrar's decision to refuse the trademark registration was correct under Indian trademark law
because the trademark 'ALLEPAY KERALA OIL' is misleading, as it implies the product is from
Kerala while it is manufactured in Maharashtra.
The use of "Kerala" in the mark could lead consumers to believe the product is from Kerala, which is
not true, and such a mark is likely to be rejected under Section 9(2)(a) of the Trade Marks Act, 1999,
which deals with geographical names and the potential for misleading the public.
Thus, the Registrar rightly refused to register the trademark, as it is likely to cause confusion
regarding the geographic origin of the product.
ii) Whether geographical names be used as trademark?
Yes, geographical names can be used as trademarks, but there are conditions that must be met:
1. The name should not be misleading or deceptive as to the geographical origin of the goods.
2. It must have acquired distinctiveness, meaning it should be associated with a specific brand
or product in the marketplace.
3. It should not conflict with geographical indications that are protected.
In the case of 'ALLEPAY KERALA OIL', the use of the word "Kerala" could be misleading if the
product is not from Kerala. Therefore, this mark could be refused registration under Indian law
unless the product is associated with Kerala in some unique and non-deceptive manner, or it has
acquired distinctiveness that overcomes the geographical connotation.
Section 9(1)(b): This section prohibits the registration of marks that consist of or resemble
geographical names unless they have acquired distinctiveness or are used in a manner that does not
mislead the public.
Section 9(2)(a): This section specifically deals with geographical names that are likely to deceive or
cause confusion with the origin of goods. It prevents the registration of trademarks that contain a
geographical name (e.g., "Kerala") when the goods do not come from that geographical area.
Kashmiri Pashmina Shawl could be registered as a trademark if the product is from Kashmir and is
unique in quality.
Kingston Pharmaceutical Company claims to have invented a medicine for headache
which gives instant relief in minutes. The tablet 'Super Relief is a combination of their previous
two cold tablets without any new invention. But 'Super Relief produces quicker relief.
i) State whether 'Super Relief tablet will be entitled for the patent?
Answer: No, 'Super Relief tablet will not be entitled for Patent. For the purpose of patent, invention
means, a new product or process involving an inventive step and capable of industrial application.
The "Super Relief" tablet is unlikely to be entitled to a patent because it does not appear to satisfy
the novelty and inventive step requirements of Indian patent law. Simply combining two existing
cold tablets to produce a quicker relief for headaches does not constitute a new invention or non-
obvious improvement.

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Unless there is something more innovative about the way the combination works or if the quicker
relief is a result of an unexpected discovery, Kingston Pharmaceutical Company’s product would not
likely qualify for a patent.
In summary, "Super Relief" would not be eligible for a patent under Indian patent law as it lacks
novelty and inventive step.
ii) What are the main ingredients required to qualify for the patent?
The main ingredients required to qualify for patent are an application by - 1) any person claiming to
be true and first inventor of the invention; 2) any person being the assignee of the person claiming to
be the true and first inventor in respect of the right to make such an application; 3) the legal
representative of any deceased person who immediately before his death was entitled to make such an
application.
Main Ingredients for a Patentable Invention:
1. Novelty: The invention must be new, with no prior public disclosure.
2. Inventive Step: The invention must involve a non-obvious improvement or combination.
3. Industrial Applicability: The invention must have practical use and be reproducible.
4. Clear Disclosure: The application must provide enough detail for someone skilled in the field to
reproduce the invention.
5. Eligibility: The invention must fall under patentable subject matter and meet the legal criteria
(e.g., no mere discovery of known substances unless significantly improved).
Actor John wants to apply for registration of his personal name "John" as a Trademark for
John Studios.
i) Will John get registration of his name as a Trademark? Explain.
Yes, the John will get the registration in his name.
Yes, John can potentially register his name "John" as a trademark for "John Studios", but it
depends on whether the name has acquired distinctiveness in the marketplace. If John is a famous
actor and "John Studios" is widely recognized by the public, his name could qualify for trademark
registration.
However, if "John" is still seen as a common name and has not yet been strongly associated with
John Studios or his personal brand, the trademark application could face challenges. In this case, he
would need to demonstrate that the name "John" has acquired secondary meaning through use and
recognition by the public.
In summary, John's personal name could be registered as a trademark, especially if he can prove
that his name has acquired distinctiveness and is associated with his studio in the minds of
consumers.
ii) Name the Section for making the application and name the Authority.
The application for trademark registration is made under Section 18 of the Trade Marks Act, 1999.
Section 18 of the Trade Marks Act deals with the "Application for Registration". This section
provides the procedure for making an application for the registration of a trademark in India. It
outlines the requirements such as the name of the applicant, the representation of the mark, the goods
or services associated with the mark, and the filing fees.

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Key Points of Section 18:
o The applicant can file the application either as an individual, company, or legal entity.

o The application can be filed either online or physically at the Trade Marks Registry.

o The applicant must specify the class of goods or services under which the trademark is being
filed, in accordance with the Nice Classification.
The authority responsible for the registration and management of trademarks in India is the Office of
the Controller General of Patents, Designs, and Trademarks.
Trade Marks Registry is the specific department within the Office of the Controller General that
handles trademark applications, registrations, and disputes.
The Trade Marks Registry operates under the Ministry of Commerce and Industry, Government of
India, and it has several branches across India, with the main office located in Mumbai.
Mr. X has invented a new method of germination of Brinjal seeds, which grow very fast.
Mr. X applies for Registration as patent for his new invented method.
i) Will Mr. X succeed to get registration?
No, Mr. X will not succeed in obtaining a patent for his new method of germination of Brinjal
seeds, because:
o Methods of agriculture (such as seed germination) are excluded from patentability under
Section 3(j) of the Patents Act, 1970.
o Even if the method is novel and involves an inventive step, it cannot be patented because it
falls under the category of horticultural or agricultural processes.
Thus, agricultural methods, including seed germination processes, are not eligible for patent
protection in India.
ii) Explain the feature of patentable invention.
Features of a Patentable Invention:
1. Novelty: The invention must be new and not have been disclosed before.
2. Inventive Step: The invention must involve a non-obvious improvement over existing
technology.
3. Industrial Applicability: The invention must have practical utility and be reproducible in an
industry.
4. Clear Disclosure: The patent application must fully disclose how the invention works, so others
skilled in the field can reproduce it.
5. Subject Matter Eligibility: The invention must fall within the categories of patentable
inventions and not be excluded under Sections 3 and 4.
6. Not Contrary to Public Order or Morality: The invention must not contravene public interest
or ethical standards.
In Conclusion: For an invention to be patentable in India, it must meet the essential criteria of
novelty, inventive step, and industrial applicability. It must be fully disclosed and capable of being
practically applied, and it must not fall under excluded categories like agriculture methods or
medical treatments.

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 Songs composed by Mr. Y, the composer, are sung by the students of an educational
institution during the Annual Day. Mr. X, one of the students' parent complains to Mr. Y, the
composer, who desires to file a criminal complaint.
1) Is Mr. Y's complaint maintainable?
Mr. Y’s complaint may not be maintainable if: There is no evidence of unauthorized use or
infringement of his songs.
Mr. X, as a parent, is not the direct infringer. Rather, it’s the educational institution or another party
that may be involved in the unauthorized use.
Mr. Y can file a criminal complaint if he has concrete evidence that the songs were used without his
permission, constituting copyright infringement. However, if the situation does not involve criminal
infringement and is more of a miscommunication or concern raised by Mr. X, then Mr. Y may
need to pursue civil action to protect his copyright, such as sending a cease and desist letter or filing
a civil lawsuit.
ii) State and explain the provision of law.
Section 52 of the Copyright Act, 1957 outlines certain exceptions to what would typically be
considered an infringement of copyright. In other words, certain acts are not considered
infringement even if they would otherwise involve the use of a copyrighted work. This section is
important because it provides a balance between the rights of copyright holders and the broader
public interest, such as the freedom of expression and education.
Acts Not Considered Copyright Infringement: Section 52 provides that the following acts do not
constitute copyright infringement:
1. Fair Use for Criticism, Review, or Reporting: Sub-section (a): The use of a copyrighted work
for purposes such as criticism, review, or reporting the work (whether in writing or otherwise)
does not constitute an infringement, provided it is accompanied by a sufficient acknowledgment
of the work.
2. Research and Teaching: Sub-section (b): Reproducing parts of the work for private study,
research, or teaching purposes, where the act is not done for commercial purposes, is not
infringement. This is often seen in educational contexts, like universities or schools. For
example, teachers and students may use excerpts of copyrighted books or music for educational
purposes without violating the copyright.
3. Reproduction for Non-commercial Purposes: Sub-section (c): Reproducing a work for non-
commercial purposes, such as personal use or criticism, is not an infringement.
4. Performance of Work by a Student or Teacher in Educational Institutions:
o Sub-section (h): Performance or delivery of a literary, dramatic, or musical work by a
teacher or student in the course of teaching or education in an educational institution is not
considered an infringement.
o For instance, a student performing a song composed by Mr. Y at an Annual Day event in a
school may not be seen as infringing Mr. Y's copyright if the use falls within this exception.
5. Government Use: Sub-section (i): Works are used for certain official purposes by the
Government of India or any State Government, which are not considered infringements.

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 6. Public Library or Museum Uses: Sub-section (j): Public libraries or museums making copies
of works for their collections or for providing access to the public also fall under exceptions in
Section 52.
7. Use by Blind, Deaf, or Other Disabled Persons: Sub-section (l): Use of copyrighted works by
persons who are blind, deaf, or have other disabilities, to make the work accessible, is not
considered an infringement.
8. Broadcasting for Public Welfare: Sub-section (n): Broadcasting or communicating the work
to the public for purposes that are in the public interest or welfare, such as a broadcast by a
public broadcaster, may not be considered infringement.
Application of Section 52 in Mr. Y's Case: Given the situation where Mr. Y's songs were sung by
the students during the Annual Day event, it is important to assess whether this use could fall under
the exceptions provided in Section 52.
1. Educational Purpose: If the performance of Mr. Y’s songs during the Annual Day event was
part of a school activity (such as a performance or demonstration by the students for educational
or non-commercial purposes), it could potentially fall under the exception in Section 52(1)(h).
Specifically, the exception allows the performance of works by students in educational
institutions for non-commercial educational purposes, which would not be considered
copyright infringement.
2. Non-Commercial Use: If the performance or reproduction of the songs was non-commercial
(e.g., it was part of a school event and not meant to generate profit), it could also be covered by
other exceptions under Section 52, such as non-commercial use for educational purposes.
Conclusion: Section 52 provides certain exceptions where acts that would normally infringe
copyright are not considered infringement. If Mr. Y’s songs were sung by students in an educational
setting during an Annual Day event and the event was non-commercial or related to teaching or
education, it is possible that this use could fall under the exceptions of Section 52 (particularly
Section 52(1)(h)) and therefore would not constitute copyright infringement.
An Acrobat enchants the audience with his performance. Mr. B makes a visual
recording of the performance, and without the consent of the Acrobat exhibits the same to his
friends on payment of charges.
i) State the technical term which could define the Acrobat.
The technical term that could define the Acrobat in this situation is "performer".
In the context of copyright law, particularly under the Copyright Act, 1957, a performer refers to
someone who performs, sings, dances, recites, or engages in any other similar activity that
involves the live performance of an artistic work. This includes actors, musicians, dancers,
acrobats, and other performers.
In this case: The Acrobat is performing an artistic act or performance.
ii) Has Mr. B committed any offence under the Copyright Act, 1957? If yes, state the penalty, if
any.
Yes, Mr. B has committed an offence under the Copyright Act, 1957 for making a visual recording
of the Acrobat's performance without consent and exhibiting it for a fee.
The offence falls under Section 63 of the Copyright Act, and the penalty for this copyright
infringement can include imprisonment (6 months to 3 years) and a fine (₹50,000 to ₹2,00,000).

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 Mr. Jack wants to use the name Ramesh who died recently, as his trade mark and
applies for registration of the mark "Ramesh", to the Registrar of Trade Marks.
i) State the procedure for Mr. Jack as per Section 14 of the Trade Mark Act, 1999
Section 14 of the Trade Marks Act, 1999 deals with the prohibition of the registration of certain
marks, particularly marks that are deceptive, scandalous, or contrary to public policy. Specifically,
in the case where the mark is the name of a person who is deceased, Section 14(1)(b) imposes
certain restrictions on registering the name of a deceased person as a trademark.
In this scenario, Mr. Jack wants to register the name "Ramesh" as a trademark. However, since
Ramesh is a deceased person, this could potentially fall under Section 14 of the Trade Marks Act.
Section 14(1)(b) - Prohibition on Registration of Deceased Person’s Name:
Ineligibility for Registration:
o As per Section 14(1)(b), the name of a deceased person cannot be registered as a trademark
unless the consent of the legal representative of the deceased person is obtained.
o This means that Mr. Jack cannot directly register the name "Ramesh" as his trademark
unless he obtains the consent from the legal heirs or legal representative of Ramesh (the
deceased person).
o The Registrar of Trade Marks will not allow the registration of the name of a deceased
person without this consent, as it is protected by law.
Conclusion: According to Section 14(1)(b) of the Trade Marks Act, 1999, Mr. Jack cannot directly
register the name "Ramesh" as a trademark unless he obtains the consent of the legal
representative of the deceased person (Ramesh). If Mr. Jack can provide this consent, he can proceed
with the registration process. Otherwise, the Registrar will reject the application for registration of
the trademark "Ramesh."
ii) State and explain the qualities of a good mark.
Qualities of a Good Trademark:
 Distinctiveness: Unique enough to identify the source of goods/services.
 Non-descriptive: Should not describe the product/service.
 Memorability: Easy to remember, catchy, and recognizable.
 Non-deceptive: Should not mislead or confuse consumers.
 Easy to pronounce and spell: Should be linguistically simple.
 Legally protectable: Can be registered and protected by trademark law.
 Adaptable and flexible: Can grow with the business as it expands.
 Distinct from competitors: Must be easily distinguishable from other trademarks in the
market.
By adhering to these qualities, a trademark can become a valuable asset for a business, helping in
brand recognition, market differentiation, and legal protection.
Mr. X applies for registration of a Design of Rectangle to be applied to goods.
1) Will Mr. X succeed to get the Design of Rectangle registered under the Designs Act, 2000?

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No, Mr. X will not succeed, because, there is prohibition of registration of certain designs, which is
not new or original or is not significantly distinguishable from known designs.
Under the Designs Act, 2000, the registration of designs is governed by specific criteria that must be
met in order to obtain protection. A design can be registered if it is new, original, and not previously
published in any country. Additionally, it must have an aesthetic appeal and be capable of being
applied to a product.
1. New and Original Design: According to the Designs Act, 2000, the design must be new and
original. If the design of the rectangle is common or has been previously used or disclosed in
public, then it will not qualify for registration. A rectangular shape is a basic geometric form,
and geometric shapes that are commonly used may not meet the originality requirement, unless
Mr. X introduces novel features or a unique arrangement of the rectangle that is not common
in the industry.
2. Aesthetic Appeal: The design must also have an aesthetic quality, meaning it must be visually
appealing. A simple rectangle, without any creative or unique artistic features, may not have
sufficient aesthetic appeal to be considered for registration.
3. Exception - Common Geometric Shapes: Geometric shapes like a rectangle, in most cases,
are not registrable unless they are combined with unique features (like patterns, ornamentation,
or a specific configuration). A simple rectangle shape on its own, unless part of a novel
configuration or artistic design, is typically not eligible for registration under the Designs Act.
Conclusion: It is highly unlikely that Mr. X will succeed in registering the design of a rectangle
unless there is something unique or artistic about how the rectangle is applied. If the rectangle is
simply a geometric shape with no distinctive features or aesthetic value, it may not qualify for
registration under the Designs Act, 2000.
For a successful registration, Mr. X would need to demonstrate that the rectangle design has novelty,
originality, and aesthetic appeal beyond being a basic geometric shape. If the rectangle is just a
functional shape with no additional creative or artistic aspects, his application will likely be rejected.
ii) Explain the provision of law applicable.
Legal Provisions and How They Apply to Mr. X:
 Section 2(d): A design refers to the visual features of an article and must be new and original.
 Section 4: A design cannot be registered if it is a common geometric shape like a rectangle,
unless it has a novel configuration or aesthetic appeal.
 Section 2(e): The design must be novel and original.
 Section 5: Registration is possible only if the design meets the necessary criteria (novelty,
originality, and aesthetic appeal).
 Section 19: The Registrar can refuse registration if the design is not new, original, or is
functional.
The author Mr. X bequeaths his unpublished poem "The Rays" to his son Y by virtue of
a Will.
i) Is the bequeath valid in law?

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Yes, the bequeath of the unpublished poem "The Rays" by Mr. X to his son Y through a will is valid
in law, but it must be evaluated in the context of copyright law and inheritance laws.
Bequeath of Unpublished Work: Under Indian copyright law, copyright is a personal property
right that can be transferred or bequeathed to others. The Copyright Act, 1957 allows the author
(Mr. X) to bequeath the rights to his work through a will, including both published and unpublished
works.
The will is a legal document that allows a person to distribute their property (including intellectual
property rights) upon their death. In this case, Mr. X can legally transfer the copyright over his
unpublished poem "The Rays" to his son Y through the will.
The bequeath of the unpublished poem "The Rays" by Mr. X to his son Y through the will is valid in
law. Y will inherit the copyright in the poem, including the right to publish, reproduce, and distribute
it, in accordance with the provisions of the Copyright Act, 1957. The transfer of copyright through a
will is lawful, and it ensures that the author's intellectual property rights are passed on to the
designated heir.
ii) Is the son entitled for copyright on the poem "The Rays"?
Yes, the son Y is entitled to the copyright on the poem "The Rays", as per the Copyright Act, 1957,
in India, but certain conditions apply.
1. Copyright Ownership and Inheritance: Under the Copyright Act, 1957, the copyright of an
original work (in this case, the poem "The Rays") belongs to the author—Mr. X—who created the
work, unless it is otherwise transferred. Copyright protects the author's exclusive rights over the
work, including rights to reproduce, distribute, perform, or publish the work.
When Mr. X bequeaths the copyright of the poem to his son Y through the will, he is essentially
transferring the copyright to his son Y, who will then hold the same rights that Mr. X had over the
work.
2. Transfer of Copyright by Will: As per Section 18 of the Copyright Act, 1957, a copyright
owner (Mr. X) can transfer his rights through a contract or assignment, which includes transferring
rights via a will.
In this case, Mr. X has bequeathed the copyright of the unpublished poem "The Rays" to his son Y
by virtue of the will.
The son Y will, therefore, be entitled to all the rights associated with the copyright in the poem,
including the right to publish, reproduce, and distribute it.
3. Duration of Copyright: The copyright in an original literary work such as a poem lasts for the life
of the author plus 60 years after the author's death. In this case:
If Mr. X passes away, his son Y will inherit the copyright and hold it for the remaining term (which
will be 60 years after Mr. X's death).
4. Nature of Copyright Transfer: Y's entitlement to the copyright is automatic once the will is
executed. The bequeath in the will allows Y to become the owner of the copyright and enjoy the
same rights as the original author. Y would have the right to:
o Publish the poem.
o Reproduce it in any form.
o License others to use it.

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 o Sell or transfer the copyright, if he chooses.
 Y's rights are subject to any conditions or restrictions mentioned by Mr. X in the will. For
example, if Mr. X specified that the poem should not be published during Y's lifetime, Y
would have to abide by that condition.
5. Inheritance of Unpublished Works: Even though the poem is unpublished, Y is still entitled to
the copyright because the Copyright Act protects both published and unpublished works. The
status of the work being unpublished does not affect the son's right to inherit it.
'A' prepares an admixture of two chemicals, which react and produce a new chemical
which is only an aggregation of the properties of the two mixed chemicals. Mr. "A' desires to
apply for a Patent.
i) Will Mr. 'A' succeed to get a Patent?
No, Mr. A will not succeed to get Patent. Based on the description provided, Mr. A's invention is
unlikely to qualify for a patent. The admixture merely aggregates the properties of the two chemicals
and does not provide any new or inventive result. This could be considered an obvious combination of
existing chemicals, which does not meet the novelty and inventive step requirements under the Patents
Act, 1970. Therefore, Mr. A will likely not succeed in obtaining a patent for this admixture unless
there is some novel and inventive aspect to how the chemicals interact or the resulting product that
has not been previously disclosed.
ii) State and explain the provision of law.
Section 2(1)(j) defines what constitutes an invention. To qualify as an invention, Mr. A’s admixture
must be new, involve an inventive step, and be capable of industrial application.
Section 3(d) and Section 3(e) explicitly exclude combinations of known substances that do not result
in a new product with new properties or effects from being patented. This means that if Mr. A's
admixture merely aggregates the known properties of the chemicals and does not produce any new or
unexpected properties, it would likely fail to meet the inventive step requirement.
Section 10 requires a detailed description of the invention, and Mr. A would need to demonstrate that
his admixture is not just an obvious combination of known chemicals but involves an innovative or
non-obvious approach.
Thus, Mr. A's application for a patent is unlikely to succeed, as his admixture appears to be a
simple combination of known chemicals that does not create new properties or effects. The
invention lacks the novelty and inventive step required under the Patents Act, 1970.
The author Mr. X relinquishes all his copyright in the poem "The Moon" to the
Registrar of Copyrights.
i) Is the relinquishment valid? Explain with provision of law.
the relinquishment would not be valid if Mr. X is attempting to give up all of his copyright directly
to the Registrar of Copyrights because the Registrar is not a legal entity capable of holding copyright
in the same way an individual or corporation would. The relinquishment or assignment of copyright
should be made to a person or entity capable of holding it.
In Section 19, the author can assign copyright to another person or entity, but the relinquishment must
be validly executed through proper documentation and assignment. If the intent is to make the work
public domain or surrender rights permanently, Mr. X would need to follow the formal assignment or

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registration processes as required by the law, ensuring proper legal formalities are observed. The act
of "relinquishment" should also be written, signed, and documented in accordance with the law.
Therefore, relinquishing all rights to the Registrar directly is not a valid course of action under
the provisions of copyright law. Instead, the relinquishment should be directed towards a person or
entity capable of holding those rights.
ii) What will be the effect of the relinquishment on the rights in the work subsisting in favor of any
person?
1. Existing Licenses and Assignments: The relinquishment by the author would not affect the
rights that are already vested in third parties (e.g., licensees or assignees) unless the
relinquishment specifically contravenes the terms of those prior agreements.
2. Moral Rights: If the author has moral rights, they may still subsist even after the economic
rights are relinquished, depending on jurisdiction.
3. Public Domain: If the relinquishment is intended to place the work in the public domain, the
work would no longer be protected by copyright, and everyone would be free to use it without
restriction.
4. No Future Rights: The author would not be able to grant future rights to the work once all rights
have been relinquished.
In summary, if Mr. X relinquishes his copyright, any existing rights held by others would remain
intact. The relinquishment would not invalidate existing assignments or licenses but would prevent
Mr. X from exercising any rights over the work or assigning future rights.
Mr. A invents a radioactive substance and applies for a patent for the same.
i) Will Mr. A succeed to get a patent?
If the radioactive substance is related to atomic energy (e.g., for nuclear power generation, nuclear
weapons, or atomic bombs), Mr. A will not succeed in obtaining a patent because such inventions are
explicitly excluded under Section 3(c) of the Patents Act, 1970.
If the substance is not related to atomic energy and has industrial applications (e.g., in medicine,
research, or industry), and if it meets the basic requirements of novelty, inventive step, and industrial
applicability, Mr. A could succeed in obtaining a patent, provided there is no prior disclosure of a
similar substance.
ii) State and explain the provision of law applicable.
In order to determine whether Mr. A can succeed in getting a patent for his radioactive substance,
the applicable provisions of law must be analyzed within the context of the Indian Patents Act, 1970
(as amended). The following provisions of the Patents Act are particularly relevant in this case:
1. Section 2(1)(j) – Definition of "Invention" - Section 2(1)(j) of the Patents Act, 1970 defines an
invention as "a new product or process involving an inventive step and capable of industrial
application."
For Mr. A's radioactive substance to be patentable, it must be considered an invention under this
definition. The invention must be novel, non-obvious (involving an inventive step), and capable of
being applied in industry (i.e., it must have industrial applicability).
2. Section 3 – What are not inventions? Section 3 outlines specific exclusions from
patentability. Among these, the most relevant to Mr. A's case is Section 3(c): "The mere discovery of

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a new property or new use for a known substance or the mere discovery of a new form of a known
substance that does not result in the enhancement of the known efficacy of that substance."
 Section 3(c) also states: "Inventions relating to atomic energy are not patentable."
This provision directly addresses inventions involving atomic energy. If Mr. A’s invention is related
to the use of radioactive substances for atomic energy purposes (such as nuclear energy, nuclear
weapons, or any atomic energy application), the invention would be excluded from patentability.
The exclusion under Section 3(c) is absolute, meaning no patents are granted for inventions in the
domain of atomic energy.
3. Section 2(1) (ac) – Industrial Applicability - Section 2(1) (ac) defines "industrial applicability"
as the requirement that the invention must be capable of being made or used in any kind of industry.
If Mr. A’s invention is not related to atomic energy, and if it has practical industrial uses (such as in
medical imaging, radiotherapy, or scientific research), it would satisfy this condition, ensuring that
the invention can be utilized in an industry.
Mr. X applies for registration of the term 'Oxygen' as a Trade Mark for his goods.
i) Will Mr. X succeed to get the mark registered as Trade Mark?
No, Mr. X will not succeed in registering "Oxygen" as a trademark for his goods based on the
provisions of the Trade Marks Act, 1999. The term "Oxygen" is:
1. Descriptive: It directly refers to a naturally occurring substance, and marks that are
descriptive are generally not registrable.
2. Generic: It is a common word for a chemical element and cannot function to distinguish one
brand from another.
3. Lacking Distinctiveness: It fails to function as a source indicator for a specific business or
product.
Therefore, unless Mr. X uses the term in an exceptional or stylized way (which is still unlikely to
succeed), the application will be rejected under Section 9 for being descriptive and non-distinctive.
ii) Explain the provision of law applicable.
The provisions of law applicable to the registration of the term "Oxygen" as a Trade Mark under the
Trade Marks Act, 1999 (India) are mainly found in Sections 9 and 11.
Section 9 – Absolute Grounds for Refusal of Registration - Section 9 lists the absolute grounds
for the refusal of registration of a trade mark. This means that certain marks are automatically
refused registration because they fail to meet the fundamental requirements of a trade mark.
2.1 Section 9(1)(b) – Devoid of Distinctive Character - A trade mark shall not be registered if it is
devoid of any distinctive character.
 The term "Oxygen" refers to a chemical element (O₂) and is widely used in scientific,
medical, and industrial contexts. It is a descriptive term, as it describes a substance, not a
brand.
 Since "Oxygen" is a commonly known word with a well-understood meaning, it lacks
distinctive character. It does not serve to distinguish the goods of Mr. X from those of other
sellers. According to Section 9(1)(b), marks that are devoid of distinctive character are not
registrable.

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2.2 Section 9(1)(c) – Customarily Used in Trade - A trade mark shall not be registered if it is
customarily used in the trade for the goods or services in respect of which it is sought to be
registered.
 The term "Oxygen" is widely used to refer to the chemical element, and it is not specific to
any one product or business. It is, therefore, customarily used in trade to describe various
products (such as oxygen cylinders, medical equipment, etc.) related to the element.
 A mark that is commonly used in the trade to describe the product or service cannot function as
a trade mark because it does not indicate the source or origin of the goods.
3. Section 11 – Relative Grounds for Refusal of Registration - Section 11 deals with relative
grounds for refusal of registration. These grounds concern situations where the proposed mark is too
similar to an existing registered mark, which could cause confusion among consumers or be
deceptive.
This section is not directly applicable in Mr. X’s case, because the issue here is not whether the
mark is similar to another existing mark, but rather whether "Oxygen" is distinctive enough to be
used as a trade mark.
4. Section 2(1)(m) – Trade Mark Includes Generic Terms - While Section 2(1)(m) states that a
trade mark may include generic terms, such terms must still meet the distinctiveness requirement.
Generic terms are those that are used to describe a category of products or services, and cannot serve
as an exclusive identifier of one specific product or source.
Since "Oxygen" is a generic term for a naturally occurring gas (O₂), it cannot function as a trade
mark because it is not capable of distinguishing goods or services, which is a key function of a
trade mark.
Mr. X will not succeed in registering "Oxygen" as a trade mark for his goods because:
 The term is descriptive and generic.
 It does not meet the requirement of being distinctive.
 It is commonly used in trade to describe a substance and cannot function as an exclusive
identifier of the source of goods.
Thus, "Oxygen" is not registrable under the Trade Marks Act, 1999, due to its lack of
distinctiveness and its generic, descriptive nature.
Mr. X, a singer sings the song 'Beauty before an audience in an auditorium. Mr. Y
records the said song.
1) Which are the technical terms which could define Mr. X and his song 'Beauty'?
The term will be author of musical works.
2) Has Mr. Y committed any offence? Explain.?
Yes, Mr. Y could be committing an offense if he recorded Mr. X's performance of the song
"Beauty" without obtaining the necessary permission or authorization. The potential offense arises
from the infringement of Mr. X’s neighboring rights as a performer under the Copyright Act,
1957.
If Mr. Y recorded, reproduced, or distributed Mr. X’s performance without Mr. X’s consent, he would
be violating Mr. X's performance rights, which could lead to both civil and criminal liability for
copyright infringement.

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 On a visit to the Sahara Desert, Mr. X discovers that the Camel of Sahara can travel for
nearly a month without water. Mr. X decides to apply for patent for this discovery.
i) Will Mr. X succeed to get Patent?

Mr. X will not succeed in obtaining a patent for the discovery that the Camel of Sahara can travel
without water for nearly a month, because:
 The discovery of a natural phenomenon or biological trait is not patentable under the
Indian Patents Act, 1970.
 The law excludes natural occurrences or scientific discoveries from being patented.
However, if Mr. X were to use this discovery as a basis for developing a new invention or
biotechnological application (for instance, by creating a product that mimics the camel’s ability), he
might be able to patent that innovation.
ii) State and explain the provision of law applicable.
1. Section 2(1)(j) (Definition of Invention): Defines an invention as a new product or process
involving an inventive step and industrial applicability. Mr. X’s discovery is not an invention,
but rather a natural phenomenon.
2. Section 3(a): Excludes the discovery of scientific principles or abstract theories from
patentability. The ability of the camel to survive without water is a scientific discovery, not an
invention.
3. Section 3(c): Excludes the discovery of new properties of natural substances from being
patented. Here, the discovery relates to a natural biological trait of camels and is not a human-
made invention.
4. Section 3(i): Excludes the discovery of living organisms occurring in nature from being
patentable. The camel’s ability to go without water is a biological characteristic that occurs
naturally, and hence, it cannot be patented.
5. Section 2(1)(k): States that for a discovery to be considered an invention, it must be novel, have
an inventive step, and have industrial applicability. Since Mr. X’s discovery does not involve a
technological or industrial application, it does not fulfill these criteria.
Conclusion: Mr. X will not succeed in obtaining a patent for the discovery that camels can survive
without water for a month because:
 The discovery of a natural phenomenon (like the camel's ability) is not patentable under
Section 3(a), 3(c), and 3(i) of the Indian Patents Act, 1970.
 The discovery is not an invention but rather an observation of a biological trait that already
exists in nature.
While Mr. X may not be able to patent this discovery, if he were able to use the discovery in some
innovative way to create a new product or process (for example, by mimicking the camel’s water
retention in biotechnology or medicine), he could potentially apply for a patent on that application
or innovation.
The famous trade mark TATA is a surname.

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1) Which provision of the Trade Mark Act enables the surname to be used as trade mark, despite
the express provision that surnames per se are unregistrable?
Even though surnames are generally unregistrable under the Trade Marks Act, 1999, Section 9(2)
and Section 11(2) allow for the registration of a surname like TATA if the surname has acquired
distinctiveness through long use and recognition in the market. In the case of TATA, it is a surname
that has become synonymous with the Tata Group and its products and services, thereby making it
a registrable trademark despite being a surname.
ii) Name the authority involved in Registration of Marks.
The authority involved in the registration of trademarks in India is the Controller General of
Patents, Designs and Trade Marks.
The CGPDTM is the head of the Indian Trade Marks Office and is responsible for overseeing the
registration process for trademarks in India. This office operates under the Ministry of Commerce
and Industry, Government of India.
Regional Offices: India has five regional offices:
1. Mumbai (Western Region)
2. Delhi (Northern Region)
3. Kolkata (Eastern Region)
4. Chennai (Southern Region)
5. Ahmadabad (Western Region)
Each regional office is headed by a Registrar of Trade Marks, who is responsible for the
administration of trademarks in their respective region.
Functions of the Trademark Office (CGPDTM):
1. Examination of trademark applications to ensure compliance with the Trade Marks Act,
1999.
2. Registration of trademarks once they meet all the legal requirements.
3. Renewal of trademarks after the initial registration period (usually 10 years).
4. Handling oppositions against trademark applications and resolving disputes related to
trademarks.
Mr. X, a painter of an advertisement poster claims copyright for the painting on the poster.
i) Will Mr. X succeed to get copyright for the painting?
Yes, Mr. X would succeed in getting a copyright for the painting.
 If Mr. X painted the advertisement poster independently and it is an original artistic
work, then Mr. X is likely entitled to the copyright in the painting, provided there is no
contract or employment agreement that transfers the rights to someone else.
 However, if Mr. X created the painting as part of his employment or under a
commission for an advertising company, the copyright may belong to the employer or
client, depending on the terms of the contract or employment agreement.
Therefore, whether Mr. X will succeed in claiming copyright depends on whether the painting is an
original work and on the nature of his relationship with the commissioning party (if any). If Mr. X

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created it independently and no other agreements are in place, he would likely succeed in claiming
copyright for his painting on the advertisement poster.
ii) Explain the legal provision applicable.
The applicable legal provisions are:
 Section 13: Ensures that copyright subsists in original artistic works, including paintings,
provided they are created independently and are not copies.
 Section 2(c): Defines artistic works to include paintings, so Mr. X’s painting qualifies as an
artistic work.
 Section 17: States that the author of the work is the first owner of the copyright unless the
work is created during the course of employment or under a contract.
 Section 30: Deals with works created by employees during their employment, clarifying that
in such cases, the employer may own the copyright unless specified otherwise.
So, if Mr. X painted the advertisement poster independently and was not working under an
employment contract or commission that transfers the rights, he will succeed in claiming the
copyright for his painting. However, if the work was done as part of his employment, the copyright
may belong to the employer (advertising agency or company), depending on the terms of the
employment contract.
An Adivasi in a remote jungle not exposed to civilization invents an arc made of
sharpened stone fixed to a stick to kill prey. The Adivasi, when he strayed into a city, is advised
to apply for his invention.
i) In the above case, will the Adivasi succeed to get a patent for his invention?
No, this Adivasi cannot seek a patent for his invention.
In this case, it is unlikely that the Adivasi will succeed in getting a patent for the invention of the arc
made of sharpened stone fixed to a stick. The reasons are as follows:
 Lack of Novelty: The tool described seems to be a traditional hunting tool that may have
been used by various cultures or tribes historically, thus lacking novelty.
 Lack of Inventive Step: The tool may be considered obvious to someone skilled in crafting
primitive hunting tools, and thus may not meet the inventive step requirement.
 Lack of Industrial Applicability: The tool may have no application in modern industries or
trade, making it fail the industrial applicability requirement.
Thus, while the invention may be of historical or cultural significance, it does not appear to meet
the legal requirements for a patent under the Indian Patents Act, 1970, which is focused on novel,
non-obvious, and industrially applicable inventions.
If the Adivasi wants to protect his traditional knowledge, he may explore options like Traditional
Knowledge Digital Library (TKDL) or seek protection under Geographical Indications (GI) for
products that have cultural heritage significance. However, patent protection for this specific
invention would likely not be available.
ii) Explain the legal provision applicable.
"Invention" means any new product or process, involving an inventive step and capable of
industrial application."

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Section 3 – Inventions Not Patentable - Section 3 provides a list of inventions that are not
patentable. This includes inventions that are:
 A mere discovery of a natural phenomenon, abstract theory, or traditional knowledge (Section
3(b)).
 Mere changes in form, proportions, or properties of known substances (Section 3(d)).
 Traditional knowledge or inventions that are part of the public domain, i.e., inventions that are
already in public use or knowledge (Section 3(f)).
This section is crucial in determining whether traditional knowledge or traditional methods are
eligible for patent protection.
 If the Adivasi’s invention is based on ancient or tribal knowledge that has been in use for
generations (for instance, the use of stone and wood in making hunting tools), it may be
considered traditional knowledge, which is not patentable under Indian law.
Conclusion: In summary, while the Adivasi's invention may be a culturally significant tool, it does
not meet the legal requirements for patentability under Indian patent law.
Three photographers take photographs of the Taj Mahal from different corners.
ⅰ) Can the three photographers claim copyright for their respective photographs?
Yes, the three photographers can claim copyright for their respective photographs of the Taj
Mahal, provided that:
 Each photograph is original, meaning each photographer has applied their own creative
effort in capturing the image.
 The photographers are the authors of their works, or they have the right to claim
ownership of the photographs (i.e., they are not employed by someone else without a prior
agreement transferring copyright).
Each photograph will be considered an original work and eligible for copyright protection as long
as it fulfills the originality requirement under the Copyright Act, 1957.
ii) Explain the legal provision applicable.
The applicable provisions of law that allow the three photographers to claim copyright for their
photographs of the Taj Mahal are:
1. Section 13(1)(a): Copyright subsists in original artistic works, including photographs, as long
as they are the result of the photographer’s creative effort.
2. Section 2(c): A photograph is an artistic work and therefore eligible for copyright protection.
3. Section 17: The photographer is the first owner of the copyright in the photograph, unless the
photograph was created in the course of employment or under a contract that transfers the
rights.
4. Section 3: The subject of the photograph (e.g., the Taj Mahal) does not affect the copyright in the
photograph itself. The photograph is the creative work that can be copyrighted, even though
the Taj Mahal is a public domain subject.
So, each of the three photographers can claim copyright for their respective photographs, assuming
they have exercised their own creativity in composing the image, and are not bound by any
employment contract that would transfer ownership of the copyright.

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"Y" applied for registration of the word "Ustickon" in respect of rubber soles for shoes. The
Registrar of Trade Marks refused to register the word as Trade Mark.
1) Is the Registrar of Trade Marks justified in rejecting the registration?
Yes, the Registrar’s refusal to register the word "Ustickon" is justified based on the following
reasons:
1. Lack of Distinctiveness (Section 9(1)(a)): The word "Ustickon" is likely to be seen as a
descriptive mark, referring to the functional property of the rubber soles (i.e., that they "stick
on" to shoes). Since descriptive marks are not inherently distinctive, they are not eligible for
registration.
2. Devoid of Inventiveness (Section 9(1)(a)): If the mark is merely describing the function of the
goods, it cannot be considered inventive or distinctive enough to be registered as a trade mark.
This is a common ground for refusal in trademark law.
3. Generic or Descriptive Term (Section 9(1)(b)): Since the term suggests the functional nature
of the goods (rubber soles that "stick on"), it could be considered generic or descriptive and thus
ineligible for registration.
Conclusion: The Registrar of Trade Marks is justified in rejecting the registration of the word
"Ustickon" for rubber soles, because the word is likely descriptive of the product's function and is
devoid of distinctive character. Trademarks must be capable of identifying the source of goods or
services and cannot simply describe the function or characteristics of the product.
ii) Explain the legal provision applicable.
The refusal by the Registrar of Trade Marks to register the word "Ustickon" is justified under the
following legal provisions:
1. Section 9(1)(a): The mark "Ustickon" is likely descriptive of the functionality of the
product (rubber soles that "stick on" to shoes), and therefore lacks distinctiveness.
Descriptive terms cannot be registered as trademarks.
2. Section 9(1)(b): If the word is generic or commonly used to describe a feature of the product,
it is not eligible for registration.
3. Section 2(1) (zb): The mark must be capable of distinguishing the goods of one person from
those of another. "Ustickon" is descriptive and does not fulfill this requirement.
Thus, the Registrar's refusal is in line with the Trade Marks Act, which ensures that only marks
that distinguish a product or service and are not descriptive or generic are eligible for registration.
Mr. B declares that he has invented a ball which instead of falling to the ground rises up
in the air, defying the principle of gravity.
1) Can Mr. B seek a patent for the invention?
No, B cannot seek a patent for his invention.
Mr. B may not succeed in obtaining a patent for his invention based on the following reasons:
1. Contradiction with Scientific Laws: A ball that defies gravity would conflict with the
fundamental laws of physics, specifically the law of gravity. Since patents cannot be granted for
inventions that are impossible under the known laws of nature, this invention might not meet the
patentable subject matter criteria.

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 2. Lack of Industrial Applicability: Without clear scientific evidence or demonstration that the
ball works in practice, it would be difficult for Mr. B to show that the invention has industrial
applicability.
3. No Inventive Step: If the invention defies a law of nature, it may not even qualify for the
inventive step requirement, as it would be outside the scope of technological innovation.
4. Section 3 Exclusions: If the invention is merely a theoretical claim without practical
demonstration, it may be excluded from patent protection under the provisions of the Patents
Act related to natural laws and abstract theories.
In conclusion, while Mr. B's invention is an interesting theoretical concept, the defiance of gravity
would likely prevent it from meeting the criteria for patentability under Indian patent law.
ii) Explain the legal provision applicable.
Under Section 2 (1) (i) of the Patents Act, 1970, a patent may be granted to an Invention of product or
process which is "new" and "useful". "Novelty" is the test of "Invention" under this Section. The ball
filled with a gas will certainly not fall on the ground. There is neither novelty nor invention. Under
Section 3 (a) of the Act, an invention which is frivolous or which claims anything obviously contrary
to well established natural laws are not inventions. The natural law is the law of gravity! Who can
defy it by invention without using the substance like a gas, etc.?
Mr. Ravi wants to use the name 'Mumbai" as his trade mark for his goods, soaps, and
applies for registration to the Registrar of Trade Marks.
1) Will Mr. Ravi succeed to get the mark registered?
No. Ravi cannot succeed in getting the mark registered under the Trade Marks Act, 1999, Under
Section 9 (1) of the Act there is an absolute ground for refusal of registration of certain trademarks. In
this case the name "Mumbai is without/devoid of any distinctive character, that is to say, not capable
of distinguishing the goods or services of one person from those of another person. Exclusion of
Geographical Names: Under Section 3(1)(c), the use of a geographical name as a trade mark is
typically not allowed, especially when the name is as widely recognized as "Mumbai".
ii) State and explain whether names of cities can be used as Trade Marks?
In general, city names are not registrable as trademarks if they are descriptive of the place of origin
of goods or services. They are usually considered geographical indications, and their use in a trade
mark can lead to rejection for being devoid of distinctiveness (Section 9(1)) or misleading (Section
11).
However, there are exceptions:
1. Acquired Distinctiveness: A city name can be registered if it has acquired distinctiveness
through long, continuous use in commerce, such that it is no longer perceived as merely a
geographical name but as a source identifier for a specific business. This is allowed under
Section 9(2).
2. Risk of Deceptiveness: If the city name is misleading or likely to deceive consumers about the
place of origin of the goods, the trade mark will not be allowed under Section 11.
Thus, while city names are generally difficult to register as trademarks, with the right kind of
evidence and long-standing use in commerce, it may be possible to establish secondary meaning
and register the name as a trade mark.

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 Mr. X desires to register the word mark 'clean' for his soaps. The Registrar of Trade
Marks refuses to register the Mark.
i) Is the Registrar of Trade Marks justified to reject?
Yes, the Registrar of Trade Marks is justified in rejecting the word mark "clean" for Mr. X’s
soaps. The word "clean" is a descriptive term that directly describes the purpose of soaps (to
clean), and under Section 9(1) of the Trade Marks Act, such descriptive terms are not registrable
unless they can be shown to have acquired distinctiveness through long, continuous use (Section
9(2)).
If Mr. X cannot prove that "clean" has acquired distinctiveness and is uniquely associated with his
soaps, the mark would be devoid of distinctiveness and therefore non-registrable.
However, if Mr. X can provide substantial evidence of secondary meaning and prove that the public
associates the word "clean" with his specific brand, he could potentially overcome the objection and
have the mark registered.
ii) Explain the provision of law involved?
 Section 9(1): The Registrar can reject the application because the word "clean" is descriptive of
the goods (soaps) and is devoid of any distinctive character, meaning it doesn’t distinguish the
goods of Mr. X from others.
 Section 3: This section excludes marks that are descriptive or generic, which applies to "clean"
as it merely describes the function of the soap.
 Section 11: If any similar marks exist, there could be an objection based on confusion, although
this isn’t the primary issue in this case.
Thus, the Registrar of Trade Marks is justified in rejecting the word "clean" unless Mr. X can
prove that the word has acquired distinctiveness over time and is associated specifically with his
brand.
Mr. X bequeaths to Mr. Y a manuscript of a literary work by testamentary disposition.
i) What are the rights of Y if X dies before publishing the literary work?
Ownership of the manuscript: Mr. Y will inherit Mr. X's manuscript, which is the physical object, but
this does not automatically mean Mr. Y owns the copyright in the work unless explicitly stated in the
will.
Copyright in the unpublished work: If the work is unpublished at the time of Mr. X’s death, Mr. Y
would have to publish it posthumously to gain copyright. The copyright would automatically pass to
Mr. Y as the legal heir unless the will specifies otherwise, and Mr. Y would have the right to decide
whether to publish the work.
Posthumous publication: Mr. Y can decide to publish the manuscript posthumously, but if Mr. X left
any instructions regarding the work (e.g., not to publish it), Mr. Y must consider these instructions in
line with moral rights.
ii) Explain the provision of law involved in the above case.
Testamentary Disposition: If Mr. X bequeaths the manuscript to Mr. Y by will, Mr. Y inherits the
physical manuscript. The copyright in the work can also be transferred to Mr. Y if it is explicitly
stated in the will (Section 18).

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Duration of Copyright: Copyright in a literary work subsists for the life of the author plus 60
years after his death (Section 19). Mr. Y can thus exercise the rights over the work for the remainder
of the copyright term.
Moral Rights: Even though Mr. Y may inherit the copyright, Mr. X's moral rights (e.g., the right to
be identified as the author and the right to the integrity of the work) remain with Mr. Y as Mr. X's
legal heir, and must be respected when the work is published posthumously (Section 57).
Rights on the Work: Mr. Y, as the copyright holder (if it is transferred to him by will), will have the
exclusive rights to publish and distribute the work, subject to Mr. X's moral rights (Section 14).
Posthumous Publication: If the work is unpublished at the time of Mr. X’s death, Mr. Y can decide
to publish it posthumously but must ensure that Mr. X’s moral rights are upheld.
Mr. P invents a topography of integrated circuits and applies for a Patent for the same.
i) Will Mr. P succeed to get a Patent?
No, Mr. P will not succeed in getting a patent under the Indian Patent Act, 1970 for the
topography of integrated circuits because the Patent Act does not cover the protection of
topographies of integrated circuits. Instead, such inventions are protected under the
Semiconductor Integrated Circuits Layout-Design Act, 2000, which provides a separate
mechanism for the registration of topographies.
ii) Explain the provision of law applicable.
Since Mr. P has invented a topography of integrated circuits, he will not be able to obtain a
patent under the Indian Patent Act, 1970. Instead, he must file for registration under the
Semiconductor Integrated Circuits Layout-Design Act, 2000 to protect his layout-design. If the
design is new, original, and has not been commercially exploited for more than two years, Mr. P
will be eligible for exclusive rights over his topography for 10 years from the date of filing or
commercial exploitation.
Section 3 – What Can Be Registered
 A layout-design of an integrated circuit is registrable if it is new and original. The layout-
design must not have been disclosed or commercially exploited before the filing of the
application or two years prior to the application.
 The Act excludes from registration any layout-design that:
o Lacks originality (i.e., it is not novel).
o Has been used publicly or commercially exploited for more than two years before the
application date.
Venugopal is a manufacturer of tennis racquets and wants to use the name "Rocket" as
his trademark. He applies for a trademark registration to the Registrar of Trademarks.
i) Will Venugopal succeed to register the name "Rocket" as a trademark for his goods?
Answer: Mr. Venugopal will not succeed in registering the name "Rocket" as a trademark for his
goods.
ii) State and explain the provisions of the law involved.
Answer: Section 9 (3) lays down the grounds for refusal of registration of a trademarks. And the
ground on which the registration of the above name "Rocket" can be refused by the Registrar is a)

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Trademark consists exclusively of shape of goods which is necessary to obtain a technical result; or c)
the shape which gives substantial value to the goods,
Kamya Drugs make a herbal tea for cold and cough treatment using traditionally well-
known actives.
i) Will they be able to get a patent application in India?
No, they will not be able to get a patent application in India. Under Section 3 (p) of the Patents Act,
1970, an invention which, in effect, is traditional knowledge or which is an aggregation or duplication
of known properties (i.e. known actives) of traditionally known component or components, is not
consider as an invention, and therefore, not patentable.
ii) What are the steps for filing a patent application in India?
Steps for Filing a Patent in India
1. Conduct a patent search to check novelty.
2. Prepare the invention details and decide whether to file a provisional or complete
application.
3. File the patent application (Form 1) with a complete specification (including claims,
drawings, and abstract).
4. Request for Examination (Form 18) within 48 months from the priority date.
5. Respond to Examination Report (if objections are raised).
6. Patent Grant after examination and successful prosecution.
7. Pay renewal fees annually to maintain the patent.
A film producer makes a cinematographic adaptation of a book without consent of the
author.
i) Is he permitted to do so under the Copyright Act, 1957?
No, a film producer without obtaining the consent of the author who is the first owner of copyright
(Section 17) cannot do so under the Copyright Act, 1957. Copyright subsists in an original literary
work (i.e. book) written by the author.
ii) What is copyright infringement?
Copyright infringement occurs when a copyrighted work is used without the permission of the
copyright holder or in a manner that violates the exclusive rights granted to the copyright holder under
copyright law. These rights typically include the right to reproduce, distribute, perform, adapt, or
display the work, among others. Infringement can involve any unauthorized act that violates one or
more of these rights. Infringement can result in serious civil and criminal penalties, including
damages, injunctions, and imprisonment. Therefore, it is essential to ensure that any use of
copyrighted works is authorized, or falls under fair use or another legal exception.
Types of Copyright Infringement
a) Reproduction Without Permission - If a person copies or reproduces a work (e.g., text, image,
music) without authorization from the copyright holder, it is considered infringement. Example:
Making photocopies of a book and selling them without the author’s consent.

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b) Adaptation Without Permission - This involves creating an adaptation of a copyrighted work,
such as turning a novel into a movie, a play, or a television series, without permission from the author
or copyright holder. Example: A filmmaker creates a movie based on a popular novel without
obtaining the author’s consent.
c) Distribution Without Permission - Distributing copies of a copyrighted work without permission
is also infringement. This can include selling, renting, or lending unauthorized copies. Example:
Selling pirated DVDs of a movie or distributing pirated software.
d) Public Performance or Display Without Permission - Performing or displaying a copyrighted
work (e.g., music, films, plays) in public without the right holder’s authorization is an infringement.
Example: A theater company performing a play without obtaining the rights from the playwright.
e) Digital Infringement - With the rise of digital media, unauthorized streaming, downloading, or
sharing of copyrighted works, such as music, movies, or software, is a common form of copyright
infringement. Example: Uploading a movie on a video-sharing website without permission from the
copyright holder.
M/S Wonder Drugs, a pharmaceutical company, discovers that the ester of their
blockbuster drug used in treating tuberculosis has better anti-TB efficacy. They decide to file a
patent application in India.
i) Will they get a patent in India? Explain.
The success of M/S Wonder Drugs in obtaining a patent in India will depend on whether their
discovery of the ester of the drug meets the criteria for patentability under the Indian Patent Act,
1970. Specifically, they need to demonstrate that their discovery satisfies the requirements of novelty,
inventive step, and industrial applicability as outlined in the law. No, they cannot get a patent in
India. Because, it has nether novelty, nor inventive step, and therefore, it cannot be considered as an
invention.
ii) What is non-patentable subject matter?
The non-patentable subject matter is defined primarily under Section 3 and Section 4 of the Patent
Act. These sections list the various categories of inventions and innovations that cannot be patented.
Non-Patentable Subject Matter:
 Discoveries of new properties or uses of substances.
 Scientific theories or abstract ideas.
 New forms of known substances (e.g., salts, esters) unless there is a significant enhancement of
efficacy.
 Methods of agriculture, horticulture, or plant breeding.
 Medical treatments, diagnostic methods, or surgical methods.
 Plants and animals in their natural forms (except genetically modified organisms).
 Computer programs (except when part of an innovative hardware invention).
 Presentations of information (e.g., layouts or design of content).
 Traditional knowledge or inventions that lack novelty.
 Atomic energy-related inventions.

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 Banita wants to use the name "Peacock" as her trademark for her new line of soaps. She
applies for the registration of the mark to the Registrar of Trademarks.
i) Will Banita succeed to register the name "Peacock" as the trademark of her goods?
No, she will not succeed in registering the name "Peacock" as a trademark of her goods.
Peacock is a well-known word, and its use in trademarks has already been seen in various industries.
If "Peacock" has been used by another entity for similar products (such as soaps or cosmetics),
Banita’s application may be contested.
Distinctiveness: In some cases, words that are common nouns like "Peacock" can be registered if
they acquire secondary meaning in the market through extensive and exclusive use. For example, a
company selling soaps under the name "Peacock" for years could potentially establish a brand
identity associated with the name "Peacock" in the public’s mind. This is more likely to succeed if
Banita can prove long-term usage and market recognition.
Generic Terms: In cases where the word is too generic or descriptive, it might face rejection. For
example, "Peacock" as a bird is an unusual choice for soap branding, but it is still a common noun
and may not be considered inherently distinctive unless backed by marketing or other differentiating
factors.
ii) State and explain the provisions of the law involved.
Section 9: Absolute Grounds for Refusal of Registration
This section sets out the absolute grounds for refusing the registration of a trademark. These are
conditions that, if present, automatically disqualify a mark from registration. The following are
particularly relevant to Banita’s case:
 Section 9(1)(b): A trademark shall not be registered if it is descriptive of the goods or services it
is associated with. In Banita’s case, if the word "Peacock" is used to describe some attribute of
the soap (like its appearance or fragrance), it could be seen as descriptive and therefore non-
registrable.
 Section 9(1)(c): A trademark shall not be registered if it consists of or contains matter which is
customarily used in the trade. If "Peacock" is already commonly used in the soap industry or
the general trade, it might not be registrable.
 Section 9(1)(b) also specifically excludes marks that are not distinctive. If "Peacock" is
considered a generic term and does not have an inherent distinctiveness in relation to soaps, the
Registrar might refuse to register it.
A singer enthralls the audience with her voice and singing ability.
i) State the technical term which would define the singer and her singing.
 The singer would be referred to as a "performer" under the Copyright Act.
 The singing would be referred to as a "performance" or Musical Works under the Copyright
Act.
Performer (Singer): The singer is considered a "performer" under the Copyright Act, 1957. The
term "performer" includes a vocalist or musical performer who performs a work in front of an
audience. In this case, the singer's vocal performance would fall under this category.

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  Section 2(q) of the Copyright Act, 1957 defines a performer as any person who sings,
reads, recites, or otherwise performs a work. The singer would be considered a "performer"
under this definition.
2. Performance (Singing): The singing or musical performance is categorized as a "performance"
under the Copyright Act. A "performance" refers to the public rendition of a work (e.g., singing a
song) that can be recorded or broadcast. The performance could be live, like in a concert or stage
show, or recorded for later distribution.
 Section 2(p) of the Copyright Act, 1957 defines "performance" as the public performance
of a work by a performer (in this case, the singer). This includes live performances and
recorded performances.
ii) Explain any two of the singer's rights.
Singer has a right 1) to make sound recording or visual recording of his/her performance; 2) to
broadcast the performance; 3) to communicate the performance to the public, otherwise than the
broadcast.
1. Right to Performance: The exclusive right of the singer to perform and control how their
performance is used or exploited, including public performances and recording.
2. Right to Remuneration for Broadcasting and Communication to the Public: The singer’s
right to receive compensation for the use of their performance in broadcasting or any public
communication of their work.
A well-known singer Sneha Thakkar made a remix of two famous songs. 'Tu cheez badi
hai mast mast' and 'Tip tip barsa pani' from a superhit movie of 1990's named 'Mohra'.
i) Does it amount to infringement of copyrights?
Yes, Sneha Thakkar’s remix of these songs is likely to amount to infringement of copyrights if she
has used the original recordings or compositions without obtaining the permission or license from the
respective copyright holders of these works.
ii) What remedies the producer of the film Mohra have?
If Sneha Thakkar's remix of the songs is unauthorized, the producer of Mohra has the following
remedies:
1. Civil Remedies:
o Injunction to stop the use of the remix.
o Claim for damages (actual or statutory).
o Account of profits made by the infringer.
2. Criminal Remedies: Criminal prosecution for copyright infringement, which may lead to
imprisonment and fines.
3. Seizure of Infringing Copies: Request the court to seize and destroy unauthorized copies of
the remix.
4. Moral Rights: Protection of the moral rights of the composer and lyricist of the original
songs.
5. Action Against Digital Infringement: Seek the removal of infringing content from digital
platforms through takedown notices.

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The producer has several options to protect their rights and seek appropriate compensation or legal
action against the infringement.
Being inspired by the Web Series 'Maharani', Shashi Khanna - a fiction author wrote a
biography for Smt. Rabri Devi named 'RANIDEVI' without her consent. Smt. Rabri Devi
sought an injunction on the sale of the said book. But the controversy led to heavy public
demand of the book. Mohan Trivedi made a pirated copy of this book and began to sell it all
over India.
i) What remedies would have been available to the author, if there was no injunction against his
book?
Remedies if No Injunction Was Issued Against the Original Book - If there had been no injunction
preventing Shashi Khanna's book from being published initially, and the issue was only about the
pirated copies, the following remedies would apply only to the infringement of the pirated copies:
 Injunction to stop the sale and distribution of pirated copies.
 Claim for damages from the infringement.
 Criminal prosecution and seizure of pirated copies.
 Moral rights protection if the pirated version was distorted.
ii) What are the remedies available to Smt. Rabri Devi?
Smt. Rabri Devi has several legal remedies available under Indian law if she believes that the
biography "RANIDEVI" contains defamatory content, violates her privacy, or misrepresents her
personal image or identity. These remedies include:
1. Defamation Suit (civil and criminal).
2. Claim for Invasion of Privacy.
3. Moral Rights protection against distortion or mutilation of her personal image.
4. Action for Unauthorized Use of Personal Identity.
5. Injunction to prevent further publication or sale of the biography.
6. Criminal Proceedings for serious privacy violations under the IT Act.
The specific remedies Smt. Rabri Devi chooses will depend on the nature of the content in the
biography and her desire to seek either monetary compensation, reputational redress, or
preventive action to stop the further circulation of the book.
In 2003, Famous Camera invents and adopts the trademark 'THADAX' in relation to
cameras and obtains the registration of the same THADAX. THADAX becomes a very popular
brand in most Asian Countries in a short while. In 2005, Super Cakes Private Ltd. launches its
cakes under the trade name THADAX.
i) Can Famous Camera Ltd. take action against Super Cakes Ltd. for restraining Super Cakes Ltd.
from using the trademark THADAX?
Yes, Famous Camera Ltd. can take action against Super Cakes Private Ltd. for using the
trademark "THADAX" for cakes, despite the fact that Super Cakes Ltd. is using it in a different
product category.

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Famous Camera Ltd. is likely to succeed in taking action against Super Cakes Pvt. Ltd. for using
the trademark "THADAX" in relation to cakes, especially because THADAX has become a well-
known and registered trademark for cameras. Famous Camera Ltd. can rely on provisions related to
well-known trademarks and infringement to seek an injunction and damages against Super Cakes
Pvt. Ltd., as there is a significant risk of confusion and dilution of their brand.
ii) Can Famous Camera Ltd. succeed in the action against Super Cakes Ltd. if the trademark was
popular only in Mumbai?
 Famous Camera Ltd. could still succeed in taking action against Super Cakes Pvt. Ltd. for
using the trademark "THADAX", even if it is only popular in Mumbai, provided that
THADAX has gained sufficient reputation and distinctiveness in that region.
 They can argue that Super Cakes Pvt. Ltd.’s use of the same mark for cakes creates a
likelihood of confusion among consumers in Mumbai, especially if the mark is associated with a
strong brand reputation in the camera industry.
 The territorial scope of the trademark would be limited to Mumbai, but local fame and
distinctiveness could still protect the mark from being used by others, even in different sectors
like cakes.
In conclusion, Famous Camera Ltd.'s claim for injunction and damages would likely succeed in
Mumbai, given the well-known status of "THADAX" in that region.
A music label company XYZ wants to start a music school in the name LM. In the
brochure of the school they have added "Would you like to become a melodious singer like Lata
Mangeshkar? Then join LM".
1) Can family members of Lata Mangeshkar object to the name LM as its initials of Lata
Mangeshkar?
Yes, family members of Lata Mangeshkar can potentially object to the name "LM" being used by
the music school company XYZ, if they believe that the name could cause confusion or infringe upon
the right of publicity or the reputation of Lata Mangeshkar.
Yes, the family members of Lata Mangeshkar could object to the use of the name "LM" by XYZ
Music School. Given that Lata Mangeshkar’s initials are strongly associated with her in the public’s
mind, and XYZ has made a direct reference to her name in the brochure, it is likely that the use of
"LM" could be seen as an infringement of her name rights or a case of passing off. The family
could claim that XYZ is trying to leverage the famous singer’s reputation to attract students, which
could lead to confusion or damage to the legacy of Lata Mangeshkar.
ii) What is the provision in the Trade Marks Act with respect to the use of a dead person's name as
a trade mark?
Under Section 14 of the Trade Marks Act, 1999, the name of a deceased person cannot be
registered as a trademark without the consent of their legal heirs or representatives if the person
died within the last seven years. If more than seven years have passed since the person's death, the
name can still be used, but it must not be misleading or cause confusion with the reputation of the
deceased.
A drug in the name of Restel manufactured by ABC Pharma Pvt. Ltd. is available in the
market. Restel has been granted a process patent. Dr. Z thoroughly studies this, drug and finds
that if Restel is given along with another drug IMANT which is available in the market, it will
benefit tremendously the patients with auto immune disorders.

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i) Can Dr. Z get a patent on his new findings of the use of the drug?
Dr. Z can potentially get a patent for his new findings, provided that:
1. The new use of combining Restel and Imant is novel and involves an inventive step.
2. Section 3(d) does not exclude the patentability, meaning that the new combination should
significantly improve therapeutic efficacy over existing treatments.
3. Dr. Z provides adequate evidence that the combination of the drugs provides unexpected
benefits for treating autoimmune disorders.
Dr. Z would need to file a new patent application for the combination therapy, and ABC Pharma
Pvt. Ltd. (the patent holder of Restel) might need to give consent for the use of their patented drug in
combination, or a licensing agreement might be required.
ii) If Dr. Z wants to use the process of Restel in making something new, what should he do?
If Dr. Z wants to use the process of Restel to make something new, here are his options:
1. Non-Infringing Process: Dr. Z could develop a new, non-infringing process that modifies or
improves upon the existing Restel process. He could then apply for a patent for this new process.
2. License from ABC Pharma: If Dr. Z cannot develop a non-infringing process, he would need to
negotiate a license agreement with ABC Pharma Pvt. Ltd. to use the Restel process in his
work.
3. New Patent Application: If Dr. Z’s new process is inventive and non-obvious, he may be able to
file a patent for the new process and avoid infringement on the Restel process altogether.
By following these steps, Dr. Z can ensure that he is in compliance with patent laws while also
protecting his own innovations.
"X" has been selling a variety of dips a sauces in the market. One of the sauces is called
"Green Chutney". Mr. "R" launches a range of dips and sauces and names one of them as
"Green Chutney". The trade dress of the product of both manufacturers is different.
i) Can "X" restrict "R" from using the words "Green Chutney"?
If "X" has a registered trademark for "Green Chutney" in the context of sauces and dips, X can
restrict "R" from using the name "Green Chutney", regardless of the trade dress difference.
If "X" does not have a registered trademark but has been using the name for a significant period, it
may still have common law rights and may attempt a passing off action if it can prove reputation,
misrepresentation, and damage to goodwill.
If "Green Chutney" is a descriptive term, X would face a difficult challenge in claiming exclusive
rights unless they can prove that the name has acquired distinctiveness in the marketplace.
ii) The logo of "Green Chutney" is artistically drawn with mint and coriander leaves. What kind of
IPR rights can "X" claim on "R"?
If "X" has created a logo for "Green Chutney" that is artistically drawn with mint and coriander
leaves, the logo is likely eligible for protection under certain types of Intellectual Property Rights
(IPR).
Copyright Protection: X has the right to protect the artistic logo (with mint and coriander leaves)
under copyright law if the logo is original. This would allow X to prevent others from copying or
using a similar design.

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Trademark Protection: X may also be able to register the logo as a trademark for their product. If
X successfully registers the logo as a trademark, they can prevent others, including R, from using a
similar logo on related products.
Passing Off: Even without a registered trademark, if X has established goodwill in the logo, they can
protect it under the law of passing off, preventing R from using a similar logo that may mislead
consumers.
Conclusion: X can claim copyright, trademark, or passing off rights to the logo of "Green
Chutney" featuring mint and coriander leaves, depending on whether the logo is registered as a
trademark or protected as an artistic work. If "R" uses a similar logo, X has the legal grounds to
take action against R for infringement or passing off, based on the type of protection X holds for the
logo.
Mr. "A" is a renowned author of books which are designed to train students aspiring to
take various competitive examinations. It has come to "A"s notice that all the books are
circulated on Telegram Channel under the name of Famous Author's Notes.
i) What remedy does Mr. "A" have in the given case and against whom?
In the given case, Mr. A, the renowned author, is facing the illegal circulation of his books on a
Telegram channel under the name "Famous Author's Notes" without his consent. This constitutes
a copyright infringement, as Mr. A holds the copyright to his works and has the exclusive rights to
reproduce, distribute, display, and sell his books.
1. Legal Remedy for Copyright Infringement - Since Mr. A is the copyright holder of the books,
he can take legal action under the Copyright Act, 1957 against those involved in the unauthorized
distribution of his works. This includes anyone who is uploading, distributing, or sharing his books
without permission, as well as the Telegram channel administrators, if they are actively facilitating
this infringement.
Key Legal Provisions Under the Copyright Act, 1957:
 Section 51: This section of the Copyright Act defines the infringement of copyright. It
specifically prohibits the reproduction, distribution, public performance, or
communication of a copyrighted work without the consent of the copyright holder.
 Section 63: This section prescribes penalties for copyright infringement, including
imprisonment or fines, or both, for anyone who infringes the copyright of a work.
Remedies Available:
 Cease and Desist Notice: Mr. A can send a cease and desist letter to the Telegram channel
administrators (or the person responsible for the infringement) asking them to immediately
stop the unlawful distribution of his books.
 Injunction: Mr. A can seek a permanent injunction from the court to stop the further
distribution of the copyrighted works on the Telegram channel.
 Damages or Account of Profits: Mr. A can also file a suit for damages or an account of
profits in case the infringer has made profits from selling or distributing Mr. A's books
without authorization.
 Criminal Prosecution: Copyright infringement is a criminal offense in India. Mr. A can file
a complaint with the police or approach the court to prosecute the infringers under the
provisions of the Copyright Act, which can result in imprisonment or fine for the infringers.

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2. Remedies Against Telegram Channel Administrators - If the books are being circulated through
a Telegram channel that is under the control of specific individuals or entities, Mr. A has the option
to take action against the Telegram channel owners or administrators who are facilitating the
illegal distribution.
Steps for Action Against Telegram Channel:
 Identify the Infringer(s): First, Mr. A should try to identify the individuals or entities
behind the Telegram channel. This may involve identifying the administrator(s) of the
channel or the group responsible for circulating his books.
 Sending a Take-Down Notice: Since Telegram is an online platform, Mr. A can send a
take-down notice to Telegram, requesting the removal of the pirated content (i.e., the books)
and blocking further distribution. Many social media platforms, including Telegram, have
policies in place for the removal of pirated content if requested by the copyright owner.
Telegram may act by either:
o Removing the infringing content from the platform.
o Suspending or banning the channel distributing the infringing books.
Telegram’s Policy: Telegram does allow users to report piracy and other violations, and the company
may take action to block or remove channels distributing illegal content, particularly if copyright
infringement is involved.
3. Action Against the Platforms or Websites Hosting the Infringing Content - If Mr. A discovers
that the pirated copies of his books are being hosted on other websites or platforms (such as file-
sharing websites or download sites), he can take legal action against those platforms or websites by
sending them a DMCA takedown notice (Digital Millennium Copyright Act) or filing a complaint
with the respective platform. In India, he can use Section 79 of the IT Act to take action against
online platforms that host or facilitate the illegal distribution of copyrighted material.
4. Seeking Help from the Copyright Office - If the case is complex or if Mr. A needs additional
guidance, he can approach the Copyright Office for assistance in enforcing his rights. This may
include helping him pursue legal remedies against infringers and providing necessary documentation
to strengthen his case.
ii) Can any clause of fair use be taken as a defence by the defendants?
Fair Use as a Defense: The "fair use" doctrine is a concept under copyright law that allows certain
limited uses of copyrighted material without the permission of the copyright holder. However, fair
use is a defense available only in specific circumstances, and it is not automatically applicable in
every case of copyright infringement.
Fair Use Under Indian Copyright Law: In India, the equivalent of "fair use" is known as "fair
dealing", and it is governed by Section 52 of the Copyright Act, 1957. According to Section 52,
certain uses of a copyrighted work can be considered "fair dealing" and not infringing, but these uses
are specifically defined and limited. Section 52 provides a list of permitted uses where a copyright
does not apply. These include:
 Private or personal use (such as reading or viewing at home).
 Criticism or review (with proper acknowledgment).
 News reporting (with proper attribution).

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  Teaching, research, or scholarship (as long as it is not for commercial gain).
 Parody or caricature.
However, "fair dealing" does not cover commercial distribution or public distribution of
copyrighted works like in the case of the unauthorized distribution of Mr. A’s books. Therefore, the
defendants cannot claim fair use as a defense if they are using or distributing copyrighted material for
commercial or non-personal purposes without permission.
Analysis of Fair Use Defense for the Defendants: In the given situation, the defendants are
distributing Mr. A’s books on a public platform (Telegram) under the name "Famous Author's
Notes", which likely means that they are:
 Using copyrighted material for commercial gain (if they are charging users for access to the
books, or using the books as a means of gaining followers or advertisements).
 Not engaging in any of the exempted activities listed under Section 52 (like review, parody,
criticism, etc.).
As a result, the fair dealing exceptions in Indian copyright law would not apply to their actions.
Since the unauthorized distribution is public and commercial, this would not qualify as fair
dealing under Indian law.
Potential Fair Use Defenses (If Raised by Defendants): If the defendants attempt to claim fair use
or fair dealing, they might argue that their actions fall under one of the limited exceptions. For
example:
1. Educational or Research Use: If the books are being shared for research or educational
purposes (like student discussions or critiques), there may be a possibility of arguing for fair
dealing. However, this would still require proper attribution and would need to be confined to
the specific purposes mentioned in Section 52.
2. Review or Criticism: If the defendants claim to be using the books for review or criticism,
they would need to prove that the use is transformative, meaning they are commenting on,
critiquing, or analyzing the content rather than simply distributing it. However, just
distributing the book without transformation would likely not be seen as "fair dealing."
3. Parody or Caricature: If they were using the work in a parodic or satirical manner, that
might be considered a fair use in certain cases. But simply sharing the book without
transformation or parody would not be allowed under this exception.
Conclusion: In the case of Mr. A’s books being illegally distributed on a Telegram channel, the
defendants cannot successfully use the fair use (or fair dealing) defense, as their actions do not fall
under the exceptions provided by the Copyright Act, 1957. Specifically, distribution for commercial
purposes or public dissemination without the author’s permission is not a fair dealing under Indian
copyright law. Therefore, Mr. A can pursue legal action for copyright infringement without the
defendants being able to rely on a fair use defense.
Government of India starts manufacturing a drug which is patented by PACTO
Pharma Ltd. The drug is distributed to government medical colleges and hospitals. PACTO
Pharma Ltd. files a suit of infringement against the government.
i) Will PACTO Pharma Ltd. succeed in the suit?
No, PACTO Pharma Ltd. will not succeed in the suit for patent infringement under these
circumstances.

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Under Section 47 of the Patents Act, 1970, the Government of India can manufacture and distribute
a patented drug for public purposes, such as use in government hospitals and medical colleges,
without infringing the patent rights of PACTO Pharma Ltd. Therefore, PACTO Pharma Ltd. will
not succeed in the suit for patent infringement. However, they may be entitled to reasonable
compensation for the use of their patented invention, as per the provisions of the law.
ii) Which provisions of the Patent Act will be applicable in this scenario?
Section 47 - Use of Invention for Public Purpose - This section is the most relevant to the scenario.
It allows the Government of India, or anyone authorized by the Government, to use a patented
invention for public purposes without the consent of the patent holder.
Section 84 - Compulsory License - This section deals with the concept of compulsory licenses,
which allows the Government or other entities to use a patented invention under specific conditions
when the patent holder is not making the invention available to the public on reasonable terms.
While Section 84 is generally about the granting of a compulsory license to third parties, it could be
indirectly relevant in a broader context where the Government may need to issue a compulsory
license to manufacture and use the patented drug in public interest.
In this scenario, Section 47 and Section 100 are the most directly applicable provisions because they
allow the Government of India to use the patented drug for public purposes without infringing the
patent, and PACTO Pharma Ltd. cannot sue for patent infringement. However, they may be entitled
to reasonable compensation for the use of their patented drug, as outlined under these provisions.
Ms. Suchitra has released her music album. Her music album is played by the students
of Vidya Mandal School in their Annual Day Program as a part of the cultural activity. The
audience had not paid any fees to attend the program.
i) Whether Ms. Suchitra can take legal action against Vidya Mandal School for infringement of
her copyright?
Yes, Ms. Suchitra can take legal action against Vidya Mandal School for copyright infringement,
provided she has not already granted a license for public performance of her music. Even if the event
is non-commercial and no fees are charged, the public performance of her music at the event
constitutes an infringement of her exclusive rights under the Copyright Act.
ii) What is the defence available to the Vidya Mandal School if sued for infringement by Ms.
Suchitra?
Section 31 governs licensing of public performances and the role of collective societies like IPRS.
The school might argue that the event was non-commercial, or that they were unaware they needed a
license for public performance. However, these defenses are not likely to absolve them of liability, as
the copyright owner has the exclusive right to control public performance and reproduction of their
work.
Avil Co. Ltd. wants to use the mark "Tanishq" as its trade mark for its range of
cosmetics and applies for registration to the Registrar of Trade Marks.
i) Whether Avil Co. Ltd. will succeed to get its mark registered?
No, Avil Co. Ltd. will not succeed in registering the mark "Tanishq" as a trademark for its
cosmetics, as the mark is already associated with a well-known jewelry brand owned by Titan
Company Ltd.

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Avil Co. Ltd. will likely fail to get the mark "Tanishq" registered for its cosmetics. The Tanishq
mark is already a well-known trademark, and the use of the same name for cosmetics by a different
company could lead to confusion, passing off, and dilution of the distinctiveness of the existing
Tanishq jewelry brand.
Legal Provisions Involved:
1. Section 11 of the Trade Marks Act, 1999 (Relative Grounds for Refusal)
2. Section 29(4) and Section 29(5) of the Trade Marks Act, 1999 (Well-known trademarks)
3. Section 27(2) of the Trade Marks Act, 1999 (Passing Off)
ii) State the doctrine involved.?
The doctrine involved in this case is the Doctrine of Deceptive Similarity and Passing Off. These
doctrines help protect the rights of well-known trademark owners, especially when another party tries
to use a similar mark in a way that could cause confusion or mislead the public.
1. Doctrine of Deceptive Similarity: This doctrine is grounded in the principle that a trademark
should not be deceptively similar to an existing registered trademark or a well-known trademark,
even if the goods or services are in different classes. The primary objective is to avoid confusion
among the public, particularly consumers who may believe that the goods or services from different
companies are somehow connected or associated with each other.
In the case of "Tanishq", the name is already associated with a well-known jewelry brand. Even
though Avil Co. Ltd. wants to use the mark for cosmetics, the use of the same mark "Tanishq"
would likely create confusion among the public, who might believe the cosmetics are associated with
the established jewelry brand. Hence, the Registrar of Trade Marks would likely reject the
application on the grounds of deceptive similarity under Section 11 of the Trade Marks Act, 1999.
2. Doctrine of Passing Off: Passing off is a common law remedy available to the owner of an
unregistered trademark to protect their goodwill and reputation. This doctrine applies when a person
misrepresents their goods or services as those of another, leading to confusion among consumers.
In the case of "Tanishq", if Avil Co. Ltd. were allowed to register the mark for cosmetics, it could
be accused of passing off. The Tanishq brand is already well-established in the market, and using the
same name for cosmetics could lead consumers to believe that the cosmetics are from Titan
Company Ltd., the owner of the Tanishq jewelry brand, thus leading to unfair competition and harm
to the reputation of the original brand. The passing off action would involve proving:
1. Goodwill: The mark "Tanishq" has significant goodwill associated with it.
2. Misrepresentation: The use of the same or similar mark by Avil Co. Ltd. would lead to a
misrepresentation in the market.
3. Damage: There would be potential damage to the goodwill and reputation of Titan Company
Ltd. due to this misrepresentation.
Key Provisions of the Law:
 Section 11 of the Trade Marks Act, 1999: Deals with relative grounds for refusal and
mandates that trademarks must not be confusingly similar to existing trademarks.
 Section 29 of the Trade Marks Act, 1999: Protects well-known marks from use by others in a
manner that could cause confusion or dilution of the mark’s reputation.

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  Section 27(2) of the Trade Marks Act, 1999: Governs passing off and the misrepresentation
of goods or services as those of another.
Conclusion: In this case, Avil Co. Ltd. will likely face opposition and legal action under both the
doctrine of deceptive similarity and the doctrine of passing off if they attempt to register the mark
"Tanishq" for cosmetics. These doctrines are designed to protect well-known trademarks from
unauthorized use that could create confusion or dilute the brand's value.
'A' launches a new handbag in the market under the brand name "Orange". The
unique feature of this bag is, it is made of orange peels with a very innovative technology and is
in shades of orange. 'A' also wants to get the color Orange as a trade mark.
i) Identify the IPR involved in the given case.
In this case, the primary Intellectual Property Rights (IPR) involved are:
1. Trademark (for the color orange and the brand name "Orange"), particularly relating to
color trademarks.
2. Design Protection (for the innovative design of the handbag made from orange peels).
3. Copyright (for any artistic works like advertising materials or branding elements created for
the product).
The success of 'A' in obtaining these protections will depend on demonstrating that the color orange
is distinctive enough to serve as a trademark and that the design of the handbag is novel and original
for design protection.
ii) Will 'A' be entitled to use Orange as a trade mark?
'A' will only succeed in using "Orange" as a trademark if it can prove that the color is distinctive
enough to identify the source of the handbag, and not just descriptive of its appearance.
"Orange" is likely to be considered descriptive of the color of the handbag or the material used
(orange peels).
Color marks can be registered if they are distinctive and if the mark has acquired distinctiveness
through use over time.
If 'A' can demonstrate that "Orange" has secondary meaning and is uniquely associated with their
brand, they might succeed in registering it as a trademark. Otherwise, they will need to look for a
more distinctive name or branding element.

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