Indian Copyright Act, 1957

Indian Patent Act

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Before that
• What are IPRs
• Trademark
• Definition
• Process of registration
• What cannot be registered – absolute grounds and relative grounds
• Well known TM
• Infringement and Passing off
• Geographical Indicators

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History of Copyright
• The Statute of Anne (England - 1710), world's first copyright law,
introduced the concept of the author of a work being the owner of its
copyright and laid out fixed terms of protection.
• Legislation gradually appeared in other countries,
• US Copyright Act of 1790
• Remained uncoordinated at an international level until the Berne
Convention which did away with the need to register works separately
in each individual country
• Berne Convention over 140 nations and remains in force to this day,
and continues to provide the basis for international copyright law.
• What about श्रुति और स्मृति??
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Berne Convention
• Berne Convention for the Protection of Literary and Artistic Works
• International agreement governing copyright,
• First accepted in 1886.
• Followed in the footsteps of the Paris Convention for the Protection
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 Convention sets out the basic principles that the signatory states
must guarantee in their copyright policies and legislation.
• The Convention applies to “every production in the literary, scientific
and artistic domain, whatever the mode or form of its expression"
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Right of the Author
• Berne Convention developed at the instigation of Victor Hugo (of the
Association Littéraire et Artistique Internationale.)
• Influenced by the French "right of the author" (droit d'auteur), which
contrasts with the Anglo-Saxon concept of "copyright" which only
dealt with economic concerns.
• Under the Convention, copyrights for creative works are automatically
in force upon their creation without being asserted or declared.
• An author need not "register" or "apply for" a copyright in countries
adhering to the Convention.

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History of Copyright in India
• First copyright act of India in 1847 (East India Company) providing for a term
of copyright as lifetime of author plus 7 years or 42 years
• Replaced by the copyright act of 1914,
• first 'modern' copyright law which included all works of art and literature under the
ambit of copyright.
• A replica of the English law of 1911.
• The Copyright Act of 1957 replaced the 1911 act.
• It set up a copyright office under the control of Registrar of copyright
• Established a copyright board to deal with the disputes relating to copyright.
• Amended in 1983, 1984, 1992, 1994, 1999 and 2012 to meet with the
national and international requirements.
• The Copyright Rules, 2013 were amended in 2016 and in April 2021
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Copyright Act
• An IP protection granted to the creators of original works of authorship
(S.13). A bundle of exclusive rights (S.14),
• Literary, dramatic, musical and artistic works, (includs computer programs etc)
• Cinematographic films, sound recordings and Audio visual works
• Paintings, Photographic works, Sculpture, Drawings and Architectural works etc.
• Exercised by the owner or the licensee. Author or creator first owner
(S.17) and gets all benefits. Work done for consideration, Govt. work
• Assignment (S.18) wholly or partly subject to limitations
• Rights include - right of adaptation, right of reproduction, right of
publication, right to make translations, communication to public etc.
• Protects neighbouring rights (broadcast reproduction rights, performers'
rights)
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Copyright Act
• Protects expressions of ideas rather than the ideas themselves
• Creativity protected is in the choice and arrangement of words, musical
nodes, colours, shapes etc.
• Many authors write textbooks on a subject, each author will have a copyright on
the book written by him / her, provided the book is not a copy of some other
book published earlier.
• What is ‘Original’?
• Lasts for a certain time period after which the work enters the public
domain.
• Author or creator of the work is the first owner of copyright (S.17) and
all benefits accruing from it
• Creativity being the keystone of progress, no civilized society can afford
to ignore the basic requirement of encouraging the same. 8
Neighbouring Rights
• According to WIPO, related rights, also referred to as neighboring rights, protect the
legal interests of certain persons and legal entities that contribute to making works
available to the public or that produce subject matter which, while not qualifying as
works under the copyright systems of all countries, contains sufficient creativity or
technical and organizational skill to justify recognition of a copyright-like property
right.
• Traditionally, related rights have been granted to three categories of beneficiaries:
• Performers (actors/musicians);
• Producers of sound recordings (also referred to as phonograms); and
• Broadcasting organizations.
• 2(q) "performance", in relation to performer's right, means any visual or acoustic
presentation made live by one or more performers;
• 2(qq) "performer' includes an actor, singer, musician, dancer, acrobat, juggler,
conjurer, snake charmer, a person delivering a lecture or any other person who
makes a performance;
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Defining originality
• Originality is an important legal concept with respect to copyright
• It is the aspect of a created or invented work that makes it new or novel,
and thereby distinguishes it from reproductions, clones, forgeries, or
derivative works.
• Originality – dictionary meaning
• the ability to think independently and creatively.
• "she's a writer of great originality"
• the quality of being novel or unusual.
• "he congratulated her on the originality of her costume“
• To qualify as original, the work must be created independently and must
have “at least a modicum” of creativity.
• Originality means that the work is your own, not copied from a source, and
that your research idea is fresh and adds new knowledge to the field.
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Territorial Jurisdiction
• Copyright as provided by the Indian Copyright Act is valid only within the
borders of the country.
• To secure protection to Indian works in foreign countries, India has become
a member of the following international conventions on copyright and
neighbouring (related) rights:
• Berne Convention for the Protection of Literary and Artistic works, 1886.
• Universal Copyright Convention (Revised in 1971).
• Convention for the Protection of Producers of Phonograms against
Unauthorised Duplication of their Phonograms, 1971.
• Multilateral Convention for the Avoidance of Double Taxation of
Copyright Royalties, 1979.
• Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement,
1995.
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 Protecting Copyright
• Copyright protection is conferred on all original literary, artistic, musical or dramatic,
cinematograph and sound recording works.
• Protects author’s Economic Rights (S.14) and Moral Rights (S.57 paternity and
integrity).
• Protection commences the moment a work is created; registration is optional.
• Registration provides better protection being a prima facie proof of an entry in respect
of the work in the Copyright Register maintained by the Registrar of Copyrights.
• Registration does not confer any more rights as such
• Registration adds value if a civil or criminal action is considered against the infringer.
• Registration formalities are simple and the paperwork is least.
• Copyright protection available in several countries across the world (for a work first
published in India); India being a member of Berne Convention.
• India, by virtue of the International Copyright Order, 1999, extended copyright
protection to works first published outside India.
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Moral Rights
• These are the right to: be attributed (or credited) for their work; not have their
work falsely attributed; and. not have their work treated in a derogatory way.
• Recognized under S. 57. Right of paternity, right of dissemination, right of
integrity, and right to retraction
• Waiver of moral rights is permitted if it is against public policy.
• Paternity - The person is the father of the work, they can declare publicly that
they have created it.
• Right of integrity is the right of an author to ensure that his/her work is not
subjected to derogatory treatment which is any act in relation to the work that
is in any manner harmful to the author's honor or reputation.
• Right to retraction is the right to withdraw from publication ones work if the
author feels that due to passage of time and changed opinion, it is advisable to
do so.
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Protection includes
Owner can prohibit or authorize anyone to:
• Reproduce the work in any form, such as print, sound, video, etc.;
• Use the work for a public performance (play or a musical work)
• Make copies/recordings of the work or broadcast it in any form or
translate the same to other languages
• In general, copyright does not protect individual words, short phrases and
slogans; short word combinations; familiar symbols or designs; or mere
variations of typographic ornamentation, lettering or colouring; mere
listings of ingredients or contents; methods; plots or factual information.
• Copyright act does not protect titles of films, books or songs this is
particularly so because the title to a work is too short and incapable of
being an independent work protectable under the Act.
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Copyright registration
Acquisition of copyright is automatic, no formalities required as it comes into existence as soon
as a work is created. Registration serves as prima facie evidence in a court of law with
reference to dispute relating to ownership of copyright.
• Make an application duly signed (with requisite fee) in an appropriate form as prescribed
under the Rules;
• Both published and unpublished works can be registered. When a registered unpublished
work is published, the applicant may apply for changes in particulars as mentioned in the
register
• Computer Software or programme can be registered as a ‘literary work’.
• (o) "literary work" includes computer programmes, tables and compilations including computer data
bases
• A website as a webpage or set of interconnected webpages may consists of different
rudiments which may be copyrightable subject matter falling within a class of works set forth
in Section 13.
• Website as a whole is not subject to copyright protection.
• Finally calling for objections etc and hearing before registering or rejecting
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• Aggrieved person may appeal to IPAB (S.72).
Benefits of Registration
• S. 45 states that any interested party can register their copyrights. It is a one time
process, no renewal is required.
• The copyright registration creates a public record
• The copyright registration certificate will avoid the legal cost of the owner if any
dispute arises in the work. This can be provided as a proof of ownership
• In the case of copyright infringement, how big or small, the creator and the
content are guarded against actual damage if the content is copyrighted.
• If any dispute arises, the copyright registration plays a significant role in
determining who was the first creator of the work
• The copyright registration motivates the individual with a sense of
accomplishment and encourages them to create the original work thereby
realizing the true potential.
• Financial benefits
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Duration of copyright protection
Until sixty years from the beginning of the calendar years next following the year in
which the work is first published
• Anonymous and pseudonymous works
• Posthumous work
• Cinematograph films
• Sound records
• Government work
• Public undertakings
• International Agencies
• Photographs
• Term of copyright protection of a posthumous publication subsists for a period of
sixty from the date of publication.
• Copyright term of an anonymous publication (S.23) is for a period of sixty years,
calculated from the beginning of the calendar year next following the year in
which the work is first published.
Copyright Office and Copyright Board
• Copyright Office
• Registrar and Deputy Registrars of Copyrights.
• Copyright Board. Chairman and not less than two or more than 36
other members.
• Powers and procedure of Copyright Board.
• power to regulate its own procedure, including the fixing of places and times
of its sittings
• Provided that 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.
Copyright Infringement (S.51)
• Using the work of copyright holder without his permission
• Direct Infringement - a strict liability offence if the following conditions exist
• Ownership of a valid copyright; and
• Copying or infringement of the copyrighted work by the defendant (innocently or even
accidentally)
• The guilty intention of the offender can be taken into account for determining the quantum
of damages to be awarded for the alleged infringement.
• Contributory infringement
• pre-supposes the existence of knowledge and participation by the alleged contributory
infringer.
• To claim damages for infringement of the copyright, the plaintiff has to prove
• That the defendant knew or should have known of the infringing activity; and
• That the defendant induced, caused, or materially contributed to another person's infringing
activity.

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Permitted use - Three step test

• Berne Convention:-Three step test was devised for limitation and

• It should be granted in certain special cases

• TRIPS Agreement:-Three step test extended to all exclusive rights

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Infringement – Permitted or Fair use (S.52)
• Exemptions from Copyright Violation
• Fair use allows limited use of copyrighted material without permission from the
copyright holder.
• Purpose and character of your use.
• Nature of the copyrighted work.
• Amount and substantiality of the portion taken, and.
• Effect of use upon the potential market.
• Some of the exemptions are the uses of the work
• for the purpose of research or private study,
• for criticism or review,
• for reporting current events,
• in connection with judicial proceeding,
• performance by an amateur club or society if the performance is given to a non-paying
audience
• making of sound recordings of literary, dramatic or musical works under certain conditions.
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Remedies for Infringement of Copyright
• Civil remedy (S.55) owner entitled to all such remedies by way of injunction,
damages and accounts.
• If defendant not aware and had no reasonable ground for believing that copyright
subsisted in the work, plaintiff not entitled to any remedy other than an injunction in
respect of the infringement and a decree for whole or part profits made by the defendant
by sale of infringing copies as the court may deem reasonable.
• No special courts - registrar has powers of a civil court under CPC
• Criminal remedy (S.63) Copyright holder can take criminal proceedings against
the infringer, person who knowingly infringed
• May result in at least six-month imprisonment, which may be extended to 3 years
and with a fine of Rs. 50,000, which may extend to 2 lakhs.
• Any police officer, not below the rank of a sub-inspector, may, if he is satisfied
that an offence under section 63 in respect of the infringement of copyright in
any work has been committed, can seize copies without a warrant to produce
before Magistrate. 22
Copyright and IT Act
• The IT Act doesn’t specifically provide for measures that can deal with copyright violations on the
internet, however, there are provisions that may be construed to address certain aspects of
copyrights.
• With specific regard to tampering of source code, the ITA provides punishment for tampering of
source codes of computer programs of Government agencies and not necessarily private users
since the provision is limited to source codes required to be maintained by law.
• Additionally, certain other sections may be addressed when reading into copyright protection
within the cyberspace such as S.43 relates to penalty for damage to computer systems and S79[2]
favours for limited liability of different network service providers for violations that are committed
by their clients if there was an absence of knowledge and due diligence on part of the concerned
service provider.
• The section essentially provides that ISPs cannot be forced to enter into agreements that are
contrary to this particular provision. Any agreement that fails to meet the provision will be void ab
initio and thus, the normal principle now is that the ISPs can be liable for any third-party
information and data that is made available to them.
• The IT Act, by way of the Amendment of 2008, makes significant advances in codifying the legal
position of intermediaries and their liability in India. This provides immunity to intermediaries from
liability for any data, or communication link made available or hosted by him.
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Patents

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Patent – a monopoly right
• Exclusive right granted for an invention (product or process) that
provides, in general,
• a new way of doing something, or
• offers a new technical solution to a problem.
• Exclusive right of inventor to prevent others from possessing, using,
selling, manufacturing and importing the patented invention or
offering to do any of these within a definite geographical area.
• In return for exclusive rights, the applicant is obliged to disclose the
invention to the public in a manner that enables others, skilled in the
art, to replicate the invention.
• Designed to balance the interests of applicants / assignees (exclusive
rights) and the interests of society (disclosure of invention)
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Patent – a monopoly right
• Indian patent law - a patent can be obtained only for an invention which is
new and useful.
• The invention must relate to the machine, article or substance produced by a
manufacturer, or the process of manufacture of an article.
• Patents have territorial jurisdiction; should be obtained in each country where
the applicant requires i.e., to be registered in all countries where interests lie.
• There is no concept of global patent.
• Filing an application in India enables the applicant to file a corresponding
application for same invention in convention countries or under PCT, within or
before expiry of twelve months from the filing date in India.
• Under certain circumstances, a compulsory license to make use of a patented
product may be given to a third party.

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History of Patent
• First Act VI of 1856 was repealed by Act IX of 1857 as it had been enacted
without the approval of the British Crown. T
• Amended in 1872, 1883 and 1888.
• The Indian Patent and Design Act, 1911 repealed all previous acts.
• The Patents Act 1970, along with the Patent Rules 1972
• The Patents Act, 1970 - amended in 1999 and then in 2005 extending
product patents in all areas of technology including food, medicine,
chemicals and microorganisms.
• Rules made by the Government are known as “Patent Rules, 2003”;
• Patent (Amendment) Rule, 2006, updated in Sept’2015 are in force.
• Four patent offices in India having work distribution according to their
geographical location viz. Kolkata, Delhi, Mumbai & Chennai 27
What can be patented?

• An invention is patentable subject matter if it meets the following

• It should be novel.
• It should have inventive step or it must be non-obvious
• It should be capable of Industrial application.
• It should not attract the provisions of section 3 and 4 of the
Patents Act.

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What cannot be patented?
Not fall within the provision of section 3 & 4 of the Act
Section 3:
• Frivolous or obvious inventions
• Contrary to well established natural laws
• Injurious to Public Health
• Mere arrangement or re-arrangement,
• Discovery of Scientific principle
• Discovery of living thing or non-living substances in nature
• Method of agriculture or horticulture
• A mathematical or business method or a computer program
Section 4:
• Not-patentable: Atomic Energy related
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Criteria for a patent - Invention
• Novelty: S2(1)(j) defines invention as a new product or process involving an
inventive step and capable of industrial application.
• S 2(l) defines new invention as 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.
• Inventive Step: S 2(1) (ja) inventive step means a feature of an invention that
involves technical advance as compared to the existing knowledge or/and having
economic significance that makes the invention not obvious to a person skilled in the
art.
• Industrial Application: The third criterion of patentability is that the invention should
be capable of industrial application.
• S 2(1)(ac) defines Capable of Industrial application in relation to an invention as the
invention is "capable of being made or used in an industry." Therefore, to be
patentable, an invention must be useful. 30
Criteria for a patent - Innovation
• Innovation is the process and outcome of creating something new, which is also of value.
• Involves whole process from opportunity identification, ideation or invention to
development, prototyping, production marketing and sales
• To involve the capacity to quickly adapt by adopting new innovations (products, processes,
strategies, organization, etc)
• Innovation comes about through new combinations made by an entrepreneur, resulting in
• a new product,
• a new process,
• opening of new market,
• new way of organizing the business
• new sources of supply
• Also, traditionally the focus has been on new products or processes, but recently new
business models have come into focus, i.e. the way a firm delivers value and secures profits

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Procedure for Obtaining a Patent
• Filing of patent application,
• Search for anticipation by previous publication and by prior claim
• Consideration of report of Examiner by Controller
• Publication after 18 months
• Pre Grant Opposition /Representation by any person.
• Request for examination,
• Examination: Grant or Refusal
• Publication of Grant of patent
• Post Grant Opposition to grant of patent
• Decision By Controller 32
When should an application for a patent be filed?
• At the earliest possible date. Filed either by true and first inventor or his
assignee (alone or jointly). Or, legal representative in case of deceased
• Application filed with provisional specification, disclosing the essence of the
nature of the invention helps to register the priority of the invention.
• Delay in filing an application may entail some risks such as
• some other inventor might file a patent application on the said invention and
• There may be either an inadvertent publication of the invention by the inventor
himself/herself or by others independently of him/her.
• Generally, an invention which has been either published or publicly displayed
cannot be patented as such publication or public display leads to lack of novelty.
• However, under certain circumstances, the Act provides a grace period of 12
months for filing of patent application from the date of its publication in a
journal or its public display in an exhibition organised by the Government or
disclosure before any learned society or published by applicant.
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 Opposition
Pre-grant Opposition
• Representation for pre-grant opposition can be filed by any person (s 11A) within six
months or before the grant of patent. S.25(1) lists the grounds. No fee is to be paid
• Representation for pre-grant opposition can be filed even though no request for
examination has been filed. However, the representation will be considered only when a
request for examination is received within the prescribed period.
Post-grant Opposition
• Any interested person can file post-grant opposition within twelve months from the date
of publication of the grant of patent in the official journal of the patent office.
• Grounds for Opposition
• Wrongfully obtained; Prior publication; Invention publicly known or Used before the priority date;
• The invention is obvious and does not involve any inventive step; or is not patentable;
• Insufficient disclosure of the invention or the method by which it is to be performed;
• Application not made in time
• Invention was anticipated having regard to the knowledge, oral or otherwise, available within any
local or indigenous community in India or elsewhere.
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35
Filing of Application for Grant of Patent in India by
Foreigners
• India, a signatory to the Paris Convention for the Protection of
Industrial Property, 1883 and the Patent Cooperation Treaty (PCT),
1970
• A foreign entity can adopt any of the aforesaid treaties for filing of
application for grant of patent in India.
• Where an application for grant of patent in respect of an invention in a
Convention Country has been filed, then similar application can also be
filed in India within 12 months from the date on which the basic
application was made in the home country.
• Priority date in such a case is considered as the date of making of the
basic application.
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Filing patent application outside India
• Filing patent application outside India without filing a patent
application in India. Permission required from Indian patent office
• First file patent application in India and then file patent application in
foreign countries
• Mandatory to inform Indian patent office before filing patent
application outside India.
• S. 35. Secrecy directions relating to inventions relevant for defence
purposes.

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Patents – International Scenario
• United States patents may be awarded to anyone who qualifies,
regardless of nationality. A non-citizen will apply for a U.S. patent in
much the same way as a citizen will.
• Patent applications to be filed with the United States Patent and
Trademark Office (USPTO).
• 13,000 of 1.2 lakh patent applications made it through in India, while
44,477 of the 1.07 lakh patents filed by Indians abroad were
approved. That's a success rate of 40%, as opposed to 10% in India.
• More than 85% of all patent filings in 2021 occurred in the IP offices
of China, the US, Japan, the Republic of Korea and the EPO. China
accounted for 46.6% of the world total.

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Evergreening of Patents
• Ever-greening of patent, as the name suggests, is a corporate, legal, business, and
technological strategy for extending / elongating the term of a granted patent in a
jurisdiction that is about to expire, in order to retain royalties from them, by taking
out new patents.
• Section 3 (d) prevents ever­greening of patents - if the variations of the original
drug does not lead to increased efficacy, an extension of the patent is not allowed.
• SC rejected an attempt by Novartis AG to patent an improved version of its anti­cancer drug
Glivec. It ruled that the improved version cannot cure cancer more effectively than the
original, no increased efficacy, hence patent not allowed
• India under international pressure to make amendments in the Act. US Trade
representative ‘Special 301 programme’ had placed India on a priority watch list
for inadequate IPR protection.
• India resisted the pressure to amend the Act by reiterating that it is in compliance
with the TRIPS
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Evergreening and the Constitution of India
• Constitution of India encourages Indian citizens to have a scientific temper and prescribes
a duty to develop the spirit of inquiry and reform. (51A (h))
• Art. 300A - No one shall be deprived of “property” except with the authority of law.
• Patents are “property,” have a positive constitutional entitlement to the grant and
recognition of patents.
• The non-enforceable – but critical – chapter of the “Directive Principles of State Policy”
further directs the Government to ensure
• Promotion of public health (47),
• Reduction of inequalities (38(2)), and
• Securing of systems that ensure ownership and control of resources for the common good (39b).
• Basis and limitations for IP rights are, therefore, the right to property, the directive
principles of state policy and the fundamental duties of citizens, apart from the various
laws enacted periodically.
• Section 3(d) of the Indian Patents Act bars the patenting of a “mere use of a known
method” unless such known method results in a new product or employs at least one
new reactant. 40
 Novartis vs Union of India
• India joined WTO (95) and started granting patents. Earlier patent-free zone, generic
drug-market
• Over the next 10 years patent laws were brought in line with other WTO member states.
• However, introduction of S. 3(d) excluded 'incremental innovations’. Inventions are
patentable only if "they differ significantly in properties with regard to efficacy."
• Since a patent had previously been granted for ‘imatinib’ (active ingredient of Glivec) in
many countries - prior to the introduction of patent laws in India - this meant that
Novartis could be refused a patent for what it claims to be an innovative and improved
therapy.
• Novartis challenged the constitutionality of section 3(d), but that case was dismissed
• SC ruled that Novartis did not present evidence of a difference in therapeutic efficacy
between the final form of Gleevec and the raw form of imatinib; patent application was
properly rejected by the patent office and lower courts
• Decision generated widespread global news coverage and reignited debates on
balancing public good with monopolistic pricing and innovation with affordability. 41
Compulsory licensing
• India has retained the right of compulsory licensing - i.e. when the government authorises a
party other than the patent owner (inventor) to produce the patented product or process,
without the patent owner’s (inventor’s) consent.
• As it is done before the expiry of the patent, it is one of the flexibilities provided in TRIPs to
address the concerns of the developing countries to provide affordable healthcare to the
people.
• A violation of the rights of the patent holder. But it may sometimes become necessary to
avoid misuse of monopoly right and to protect human right to health.
• S.84 (1) Indian Patent Act - any person may request a compulsory license if after three years
from the date of the grant of a patent the needs of the public to be covered by the
invention have not been satisfied; (needs of the patients in case of pharma companies) the
invention is not available to the public at an affordable price; or the patented invention is
not “worked in,” or manufactured in the country, to the fullest extent possible. Conditions
given in S. 84-92
• First compulsory license issued (2012) to a domestic generic drug maker Natco Pharma
ending Bayer AG’s monopoly over an anticancer drug Nexavar; authorises production of a
low cost version. 42
Conditions required to be fulfilled
• Reasonable requirements of the public with respect to the patented invention have
not been satisfied
• Patented invention not available to the public at a reasonably affordable price
• Patented invention is not worked in the territory of India.
• nature of the invention, the capability of the applicant to use the product for public
benefit and the reasonability
• Compulsory licenses can also be issued suo motu by the Controller under section 92,
pursuant to a notification issued by the Central Government if there is either a
"national emergency" or "extreme urgency" or in cases of "public non-commercial
use".
• Parliamentary Standing Committee on Commerce has suggested the government to
consider temporarily waiving patents rights and issuing Compulsory Licenses to tackle
the inadequacy in availability and accessibility of Covid-19 vaccines and drugs.

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Industrial Design

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Industrial Design
• The Design Act in India was enacted in 2000 to consolidate and
amend the law relating to protection of designs in India. Under the
TRIPS Agreement, minimum standards of protection of industrial
designs have been provided for.
• “design” means only the features of shape, configuration, pattern,
ornament or composition of lines or colours applied to any article in
2-D or 3-D or in both, by any industrial process or means, whether
manual, mechanical or chemical, separate or combined, which in the
finished article appeal to and are judged solely by the eye; but does
not include any mode or principle of construction or anything which is
in substance a mere mechanical device, and does not include any
trade mark or property mark or any artistic work
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Pre-requisites for a design
• pre-requisites for a design to qualify for protection are as follows
• It should be novel and original.
• It should be applicable to a functional article.
• It should be visible on a finished article.
• There should be no prior publication or disclosure of the design.
• Copyright on a registered design is for 15 years. Initially registered for 10 years,
further extended by 5 years on making an application for renewal.
• Design registration also bestows a monopolistic right to the Proprietor by which he
legally exclude others from reproducing, manufacturing, selling, or dealing in the
said registered design without prior consent.
• The design registration is particularly useful for entities where the shape of the
product has aesthetic value and the entity wishes to have exclusivity over the said
novel and original design applied to its product(s) or article(s).
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Remedies
• S. 19 provides that at any time during the subsistence of the Design
registration, any person can seek cancellation of design registration by
filing a Petition before the Controller, on the following grounds:
• that the design has been previously registered in India; or
• that it has been published in India or in any other country prior to
the date of registration; or
• that the design is not a new or original design; or
• that the design is not registerable under this Act; or
• that it is not a design as defined under clause (d) of section 2
• Further, an appeal against the order of the Controller can be made to
the High Court.
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Design and other IPRs
• Design registration versus Copyright: Both design and copyright
protections relate to aesthetic features of the article. S 15(1) of the
Copyright Act, 1957, which states that Copyright shall not subsist in
any design registered under the Designs Act
• S 15 of the Copyrights Act makes it clear that a design registration and
copyright over the article cannot co-exist, both forms of IP protection
are mutually exclusive.
• Design registration versus Trademark registration: A registered design
and a trademark (not yet registered) may have an overlapping area. A
Suo unique shape registered as a design becoming popular leading to
brand recognition may be considered for registration as a trade mark
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Layout designs of Integrated Circuits

• ‘Layout designs (Topographies) of Integrated Circuits’ are a new form

• ICs (chips) are the creation of Human mind

• Used in large number of products and need to be protected

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Trade Secrets
• A trade secret refers to a practice, process, design, instrument or a
compilation of data or information relating to the business which is
not generally known to the public and which the owner reasonably
attempts to keep secret and confidential.
• Violation of trade secrets occurs if
• Infringement by or competitive advantage gained by the person/company
which has misappropriated the trade secret.
• The owner had taken all reasonable steps to maintain it as a secret.
• There is misuse as the information obtained has been used or disclosed in
violation of the honest commercial practices.

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• According to North American Free Trade Agreement (NAFTA) “a trade
secret is any information having commercial value, which is not in the
public domain, and for which reasonable steps have been taken to maintain
its secrecy”.
• In Burlington Home Shopping Pvt. Ltd. v. Rajnish Chibber, the court held
that a trade secret is information that would cause real or significant harm
to the owner if disclosed to a competitor. It can include formulae not only
for the manufacture of products but also, in an appropriate case, the names
of the customers and the goods which they buy.
• Art 39.2 of TRIPS defines three criteria;
• The information is not, as a body or in the precise configuration and assembly of its
components, generally known among or readily accessible to persons that normally
deal with the kind of information in question;
• The information has actual or potential commercial value because it is secret;
• The person lawfully in control of the information has taken reasonable steps under
the circumstances to keep it a secret.
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Protecting Trade Secrets
• No specific law protects trade secrets and confidential information in
India.
• Indian courts and tribunals uphold trade secret protection, confidential
information and business know-how. Action of misappropriation under
common law can broadly protect trade secrets.
• To protect against unfair competition, TRIPs lay down that Member
States shall protect ‘Undisclosed Information’ and shall provide natural
and legal persons with the possibility of preventing information lawfully
within their control from being disclosed to, acquired by, or used by
others without their consent in a manner contrary to honest
commercial practices.

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More ..
• More combinations of various forms of IP have emerged in view of
the phenomenon of internet and e-commerce
• ‘Domain Names’ have been identified as akin to trade marks
• Law relating to celebrities and character merchandising is fast
developing and may require an international agreement.
• non-conventional trademark or non-traditional trademarks like sound,
shape, colour and smell trade marks await acceptance

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Thanks
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