Intellectual property rights

Que.1 meaning and concept of IP laws.

Ans: Intellectual Property:

Intellectual property is the area of law that deals with protecting the rights of those who
create original works. It covers everything from original plays and novels to inventions and
company identification marks. The purpose of intellectual property laws is to encourage new
technologies, artistic expressions and inventions while promoting economic growth. When
individuals know that their creative work will be protected and that they can benefit from
their labor, they are more likely to continue to produce things that create jobs, develop new
technology, make processes more efficient, and create beauty in the world around us.
Intellectual property rights are like any other property right. They allow creators, or owners,
of patents, trademarks or copyrighted works to benefit from their own work or investment in
a creation. These rights are outlined in Article 27 of the Universal Declaration of Human
Rights, which provides for the right to benefit from the protection of moral and material
interests resulting from authorship of scientific, literary or artistic productions

Types of Intellectual Property rights for Businesses:

Entrepreneurs and business owners need to understand the basics of intellectual property law
to best protect their hard-earned creations and ideas from unfair competition.
1. Copyrights

Copyrights protect original works of authorship, such as literature, music, artistic works, and
computer software. As the holder of a copyright, you have the exclusive right to reproduce,
adapt, and distribute the work. A copyright exists from the moment the work is created, so
registration is voluntary.
2. Patents

A patent grants property rights on inventions, allowing the patent holder to exclude others
from making, selling or using the invention.
There are 3 types of patents: utility, design and plant. A utility patent is the most common
type, and it covers any process, machine, article of manufacture, or composition of matter, or
any new and useful improvements thereof.
To qualify for a utility patent, the invention must be novel, non-obvious, and have some
usefulness.
A design patent covers any new, original, and ornamental design for an article of
manufacture, while a plant patent covers any new variety of asexually-produced plant. A
design patent lasts 14 years, and a utility or plant patent lasts 20 years.
 3. Trademarks

A trademark is a word, phrase, symbol, or design that distinguishes the source of the goods of
one business from its competitors.  For example, the Nike "swoosh" design identifies shoes
that are made by Nike.
Before registering your trademark, you should conduct a search of federal and state databases
to ensure a similar trademark doesn't already exist. To apply, you must have a clear
representation of the mark, as well as an identification of the class of goods or services to
which the mark will apply.
4. Trade Secrets

A trade secret is a formula, process, device, or other business information that companies
keep secret to give them an advantage over their competitors.
Examples of trade secrets are: soda formulas, customer lists, survey results, and computer
algorithms. Unlike the other types of intellectual property, you can't obtain protection by
registering your trade secret. Instead, protection lasts only as long as you take the necessary
steps to control disclosure and use of the information.
Businesses use non-disclosure agreements, restricted access to confidential information, post-
employment restrictive covenants, and other security practices to maintain trade secrets.
5. Industrial designs

An industrial design constitutes the ornamental or aesthetic aspect of an article. A design may
consist of three-dimensional features, such as the shape or surface of an article, or of two-
dimensional features, such as patterns, lines or color.
6. Geographical indications

Geographical indications and appellations of origin are signs used on goods that have a
specific geographical origin and possess qualities, a reputation or characteristics that are
essentially attributable to that place of origin. Most commonly, a geographical indication
includes the name of the place of origin of the goods.
7. Data Base

Database right prevents copying of substantial parts of a database. The protection is not over
the form of expression of information but of the information itself, but in many other aspects
database right is similar to copyright.
The Concept of Intellectual Property

Intellectual property, very broadly, means the legal property which results from intellectual
activity in the industrial, scientific and artistic fields. Countries have laws to protect
intellectual property for two main reasons. One is to give statutory expression to the moral
and economic rights of creators in their creations and such rights of the public in access to
those creations. The second is to promote, as a deliberate act of government policy, creativity
and the dissemination and application of its results and to encourage fair trading which would
contribute to economic and social development.

Generally speaking, IP law aims at safeguarding creators and other producers of intellectual
goods and services by granting them certain time- limited rights to control the use made of
those productions. These rights do not apply to the physical object in which the creation may
be embodied but instead to the intellectual creation as such. IP is traditionally divided into
two branches: “industrial property and copyright”. The convention establishing the World
Intellectual Property Organization (WIPO), concluded in Stockholm on July 14, 1967 (Art.
2(viii) provides that

“intellectual property shall include rights relating to:

1) literary, artistic and scientific works:

2) performances of performing artists, phonograms and broadcasts;

3) inventions in all fields of human behaviour;

4) scientific discoveries;

5) industrial designs;

6) trademarks, service marks, and commercial names and designations;

7) protection against unfair competition and all other rights resulting from intellectual activity
in industrial scientific, literary or artistic fields”.

The areas mentioned under (1) belong to the copyright branch of intellectual property. The
areas mentioned in (2) are usually called “neighboring rights”, that is, rights neighboring on
copyright. The areas mentioned under 3, 5 and 6 constitute the industrial property branch of
IP. The areas mentioned may also be considered as belonging to that branch.
The expression industrial property covers inventions and industrial designs. Simply stated,
inventions are new solutions to technical problems, and industrial designs are aesthetic
creations determining the appearance of industrial products. In addition, industrial property
includes trademarks, service marks, commercial names and designations, including
indications of source and appellations of origin, and protection against unfair competition.
Hence the aspect of intellectual creations -although existent -is less prominent, but what
counts here is that the object of industrial property typically consists of signs transmitting
information to consumers, in particular, as regards products and services offered on the
market, and that the protection is directed against unauthorized use of such signs which is
likely to mislead consumers and misleading practices in general.

Scientific discoveries are not the same as inventions. The general treaty on the international
recording of scientific discoveries /1978/ defines a scientific discovery as ‘the recognition of
phenomena, properties or laws of the material universe not hitherto recognized and capable of
verification. “(Art. 1(1)(i)). Inventions are new solutions to specific technical problems. Such
solutions must, naturally rely on the properties or laws of the materials universe /otherwise
they could not be materially or ‘technically’ applied/, but those properties or laws need not be
properties or laws’ not hitherto recognized’. An invention puts to new use, to new technical
use, the said properties or laws, whether they are recognized (“discovered”) simultaneously
with making the invention or whether they were already recognized (“discovered”) before
and independently from the invention.

Industrial and cultural development may be favored by stimulating creative activity and
facilitating the transfer of technology and the dissemination of literary and artistic works. In
the Ethiopian legal system too the protection of intellectual property rights is afforded at
constitutional level. The FDRE Constitution recognizes that every Ethiopian citizen has the
right to ownership of private property with certain restrictions. Article 40(2) defines private
property as any tangible or intangible product which has value and is produced by the labor,
creativity, enterprise or capital of an individual citizen, associations which enjoy juridical
personality under the law. Thus, the constitution declares protection for every property
whether it is tangible or intangible. That means protection is afforded equally for intellectual
property rights as any other property since they are intangible products.

It is difficult to determine what types of ownership we should allow for non corporeal,
intellectual objects, such as writings, inventions and secret business information. There are
intellectual properties which are not products of the mind. For instance, all trademarks are not
products of the mind. Trademarks creation does not necessarily require intellectual activity.
The same holds true for geographic indication. They don’t require the work of the mind like
patent and copyright.
IP is a bundle of legal rights resulting from intellectual creativity in industrial, scientific,
artistic and literary fields. This definition is from the point of view of rights. IP is legal
protection accorded to works of the mind in distinction from manual work (result of physical
labour). It is a legal protection accorded to incorporeal ownership.
Regarding protection of IP rights, there were historical, philosophical and epistemological
problems. Historically, reservation exists as to the protection of such rights as they don’t
exhibit essential characteristics of property, i.e. material existence. They consider corporeal
chattels only as propriety. For them property should be subject to appropriation/occupancy/.
The other problem is related to problems of philosophy. They believed that human beings
cannot be regarded as a creator of something. They say human beings cannot create
something. Which is also reflected in religions? The problems also relate with epistemology.
What we reflect is what we observe from the world (our experience, life experience). The
then contemporary writers wrote that IP lacks essential characters to be considered property.
Through time the laws of various countries started to incorporate protection to intellectual
creativity, though they are independent. There are two factors in lumping intellectual property
rights together. These are: Conceptual Basis and Historical Basis
Historical
The convention establishing the WIPO was signed in Stockholm in 1967 and entered into
force in 1970. However, the origin of WIPO goes back to 1883- the Paris Convention on
industrial property and 1886- the Berne Convention on copyright. Both were placed under the
supervision of the Swiss Federal Government. Initially there were two secretaries (one for
industrial property, and other for copyright). However, in 1893 the two secretaries united.
United International Bureaux for the Protection of IP (BIRPI) became WIPO.
Conceptual
IP rights objects (enterprises) are inherently inappropriable. They are intangible by nature.
Use by others cannot be denied by using the possession of a property first created. Once you
have written a book and published it then the public may make use of that property.
Scope of Intellectual Property Rights
Intellectual property rights include copyright, patent, trademark, geographic indication of
origin, industrial design, trade secrets, database protection laws, publicity rights laws, laws
for the protection of plant varieties, laws for the protection of semi-conductor chips (which
store information for later retrieval), etc.
There is a conventional mode of classification of intellectual property as industrial property
and copyrights. Industrial properties include inventions (patent), property interest on minor
invention (Utility model certificate) and commercial interests (Trade Marks, trade names,
geographical indications, and industrial design), plant breeder rights, biodiversity, etc.
Patents
A patent is a type of intellectual property right which allows the holder of the right to
exclusively make use of and sale an invention when one develops an invention. Invention is a
new process, machine, manufacture, composition of matter. It is not an obvious derivation of
the prior art (It should involve an inventive step). A person who has got a patent right has an
exclusive right. The exclusive right is a true monopoly but its grant involves an
administrative process.
Copyright
It is an intellectual property which does not essentially grant an exclusive right over an idea
but the expressions of ideas which makes if different from patent law. Patent is related with
invention - technical solution to technical problems. Copyright is a field which has gone with
artistic, literary creativity- creativity in scientific works, audio-visual works, musical works,
software and others. There are neighboring rights. These are different from copyright but
related with it – performers in a theatre, dancers, actors, broadcasters, producers of sound
recorders, etc. It protects not ideas but expressions of ideas as opposed to patent.
Copyright protects original expression of ideas, the ways the works are done; the language
used, etc. It applies for all copyrightable works. Copyright lasts for a longer period of time.
The practice is life of author plus 50 years after his/her life. Administrative procedures are
not required, unlike patent laws, in most laws but in America depositing the work was
necessary and was certified thereon but now it is abolished.
Industrial Design Law
Some call this design right (European) and some call it patentable design, industrial design
(WIPO and other international organization). A design is a kind of intellectual property which
gives an exclusive right to a person who has created a novel appearance of a product. It deals
with appearance: how they look like. Appearance is important because consumers are
interested in the outer appearance of a product. It is exclusively concerned with appearance,
not quality.
The principles which have been utilized in developing industrial design law are from
experiences of patent and copyright laws. It shares copyright laws because the design is
artistic. It shares patent law because there are scientific considerations. Design law subsists in
a work upon registration and communication. It makes them close to patent law since they are
also founded in patent law. Duration is most of the time 20 years like the patent law
trademark Rights law.
Trademarks Rights Law
It is a regime of the law giving protection to graphic representation to words or logos or
depending on the jurisdiction question such as sound or smells which are distinctive in nature
and serve as source identification. There is also a recent phenomenon which is representing
goods in their smell and sound. It is to be found on the goods associated with them. It enables
the customer to identify the goods from others. They serve as a source identifier. Trademarks
perform communication function. Once there is a valid representation, it gives the mark
owner an exclusive right. It begins with registration and publication of the mark. But there
are exceptions which serve what trademarks registered serve which are not registered. It
means they deserve protection even though they are not registered. They exist forever so long
as the good with which they are associated continue to be sold. But they require renewal.
Right of Publicity
It protects the right to use one’s own name or likeness for commercial purposes.
Geographic Indication
It is indications on products of the geographic origin of the goods. It indicates the general
source. The indication relates to the quality or reputation or other characteristics of the good.
For example, “made in Ethiopia” is not influenced by the geographical Indication.
Geographical indications are sometimes called appellations of origin. For example, “Sheno
lega”, “Shampagne” (name of a region in France) are geographical indications.
Trade Secrets
It gives the owner of commercial information that provides a competitive edge the right to
keep others from using such information if the information was improperly disclosed to or
acquired by a competitor and the owner of the information took reasonable precautions to
keep it secret. It protects confidential secrets of some commercial value. The holder of the
secret wants this information to be protected; some protect the holder from an unauthorized
disclosure of the information. A tort law, unfair competition or contract law can protect such
information which is secret /confidential information/. The holder (owner) has to do his/her
best to keep the information secret. Trade secrets exist without registration as it is to make the
information public, for example, the formula of Coca Cola. Information that are protected in
trade secrets can be patentable if they are novel and non obvious. But it is, most of the time,
not to make the secret public. However, their full-fledged IP rights are contestable.
Nature of Intellectual Property
Intellectual properties have their own peculiar features. These features of intellectual
properties may serve to identify intellectual properties from other types of properties. Thus,
we will discuss them in brief.
1. Territorial
Any intellectual property issued should be resolved by national laws. Why is it an issue?
Because intellectual property rights have one characteristic which other national rights do not
have. In ownership of intellectual property of immovable properties, issues of cross borders
are not probable. But in intellectual properties, it is common. A film made in Hollywood can
be seen in other countries. The market is not only the local one but also international. If a
design in China is imitated by another person in France which law would be applicable?
2. Giving an exclusive right to the owner
It means others, who are not owners, are prohibited from using the right. Most intellectual
property rights cannot be implemented in practice as soon as the owner got exclusive rights.
Most of them need to be tested by some public laws. The creator or author of an intellectual
property enjoys rights inherent in his work to the exclusion of anybody else.
3. Assignable
Since they are rights, they can obviously be assigned (licensed). It is possible to put a
dichotomy between intellectual property rights and the material object in which the work is
embodied. Intellectual property can be bought, sold, or licensed or hired or attached.
4. Independence
Different intellectual property rights subsist in the same kind of object. Most intellectual
property rights are likely to be embodied in objects.
5. Subject to Public Policy
They are vulnerable to the deep embodiment of public policy. Intellectual property attempts
to preserve and find adequate reconciliation between two competing interests. On the one
hand, the intellectual property rights holders require adequate remuneration and on the other
hand, consumers try to consume works without much inconvenience. Is limitation unique for
intellectual property?
6. Divisible (Fragmentation)
Several persons may have legally protected interests evolved from a single original work
without affecting the interest of other right holders on that same item. Because of the nature
of indivisibility, intellectual property is an inexhaustible resource. This nature of intellectual
property derives from intellectual property’s territorial nature. For example, an inventor who
registered his invention in Ethiopia can use the patent himself in Ethiopia and License it in
Germany and assign it in France. Also, copyright is made up of different rights. Those rights
may be divided into different persons: publishers, adaptors, translators, etc.
Question:2 TRIPS AGREEMENT
Answer: Introduction
Various intellectual inventions and creativity have a significant impact on the world today.
As these innovations and concepts grow more popular and successful, the inventor’s efforts
to promote and defend them become increasingly crucial. Beyond just shipping goods across
borders, the concept of commerce and what makes trade useful for nations have developed. In
today’s international trade, innovation, creativity, and branding account for a significant
portion of the value exchanged. How to increase this value and make it easier for the
innovation-rich commodities and services to flow across borders have become important
factors in development and trade policy.
The Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement is crucial for
promoting trade in knowledge and innovation, resolving intellectual property trade disputes,
and ensuring World Trade Organization (WTO) members’ freedom to pursue their domestic
goals. The agreement is a formal acknowledgment of the importance of intellectual property
and trade relations. Before studying the TRIPS agreement in detail, one should have a brief
knowledge about Intellectual Property Rights (IPR).

What are intellectual property rights

“Intellectual Property shall include rights relating to literary, artistic, and scientific works,
discoveries throughout all areas of human endeavor, scientific advances, industrial design
rights, trademarks, service marks, and commercial names and designations, protection against
unfair competition,” states Article 2 of the WIPO (World Intellectual Property Organization)
– Central Organization for the Protection of Intellectual Property laws and the UN expert
organization.
Intellectual property rights are the rights granted to individuals over the creation of their
minds. For a set period of time, they usually grant the creator exclusive rights to use his or
her creation. Intellectual property (IP) is a non-tangible asset developed by the human mind.
Business organizations may use IP to gain a competitive advantage and drive their growth.
Intellectual property ownership interests, like any other property, can be assigned, licenced,
or otherwise passed to third parties. Internationally, intellectual property rights (IPR) are
valued and exchanged. The WTO’s TRIPS (Trade-Related Aspects of Intellectual Property
Rights) agreement recognises the importance of IP in international trade. The TRIPS
Agreement establishes basic requirements for member governments’ IPR protection.
The TRIPS Agreement in detail
How it all started?
As intellectual property grew more significant in commerce, the level of protection and
enforcement of these rights varied greatly throughout the world, and these variations became
a source of stress in international economic relations. New globally agreed-upon trade
standards for intellectual property rights were considered as a method to bring greater order
and predictability to the market, as well as a more systematic approach to resolving disputes.
The General Agreement on Tariffs and Trade (GATT) was the only multilateral mechanism
overseeing international commerce until the World Trade Organization (WTO) was
established in 1995. Under GATT, there were eight rounds of negotiations, the first five of
which were solely focused on tariffs, while the sixth round included discussions on anti-
dumping measures, which included provisions for member nations to control the dumping of
goods into their territory by other nations that could harm their economies.
The Uruguay Round was the last GATT round (1986-1994). It was in this session that the
first discussions on trade linked to agriculture, services, and intellectual property rights were
conducted. All 123 countries that took part in the Uruguay Round, including India, became
members of the WTO. WTO now has 164 members, accounting for about 90% of the world’s
countries. The World Trade Organization (WTO) is in charge of negotiating and
implementing new international trade agreements. It is also responsible for ensuring that the
majority of the world’s trading nations comply with the trade agreements they have signed.
The WTO is the legal and administrative framework for managing and growing international
connections between its 157 members on a multilateral basis. Its goal is to establish fair and
secure international trading arrangements in order to stimulate trade and investment and raise
global living standards.

The TRIPS Agreement is one of the most significant WTO accords. The Agreement
went into effect on January 1, 1995.
What is the TRIPS Agreement about?
The TRIPS Agreement protects intellectual property in trade-related regions to a large extent
and is regarded as a comprehensive new framework for intellectual property standards
protection. The TRIPs Agreement also has the distinction of being the first legal agreement to
address all areas of intellectual property with a number of specific clauses.
The three main issues governed by the 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
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.
The whole TRIPS Agreement is further divided into seven parts which contain the
complex provisions regarding intellectual property:

Part I- General Provisions and Basic Principles (Article 1 to Article 8)

Part II- This part covers the requirements for the availability, scope, and application of
intellectual property rights. (Article 9 to Article 40)

Part III- The enforcement of IPRs is the focus of this part. (Article 41 to Article 61)

Part IV: This part covers the procedures for obtaining and maintaining intellectual
property rights. (Article 62)

Part V: This part deals with the prevention and resolution of conflicts resulting from
the provisions of the Agreement. (Article 63 to Article 64)
Part VI: This part is about transitional agreements. (Article 65 to Article 67)

Part VII: This part of the Agreement deals with a variety of institutional arrangements.
(Article 68 to Article 73)

General provisions and basic principles

The essential principles on the national and most-favored-nation treatment of foreign persons
are found in Articles 3, 4, and 5, and they apply to all kinds of intellectual property covered
by the Agreement. These obligations apply not only to substantive standards of protection,
but also to issues relating to the availability, acquisition, scope, maintenance, and
enforcement of intellectual property rights, as well as issues relating to the use of intellectual
property rights that are specifically addressed in the Agreement. While the national treatment
provision prohibits discrimination between a member’s own nationals and those of other
members, the ‘most-favored-nation’ treatment clause prohibits discrimination between other
members’ nationals. The exclusions authorised under the pre-existing WIPO intellectual
property treaties are likewise available under TRIPS in terms of the national treatment
commitment. Furthermore, governments have the authority to enact legislation to prohibit
right holders from abusing IPR or to challenge practises that unfairly restrict commerce or
impede the international transfer of technology, all in accordance with the Agreement’s
provisions.
Need for the TRIPS Agreement
IP protection was supposed to help not only promote technical innovation but also the
transfer and spread of new technology in a way that benefits both its producers and users
while maintaining a balance of rights and duties, all with the purpose of increasing social and
economic wellbeing. As a result, the TRIPS Agreement’s primary objectives included
reducing trade distortions and obstructions by supporting effective and appropriate protection
of IPRs, as well as ensuring that measures and processes for enforcing IPRs do not become
hurdles to legitimate trade.
Currently, the rise in IP legislative activity, as well as the quick adoption of TRIPS-covered
IP rights, demonstrated the TRIPS Agreement’s centrality in the global trade system. The
TRIPS Agreement continues to play a key role in facilitating international trade in
knowledge, resolving trade issues over IP, and guaranteeing WTO members the latitude to
achieve their domestic objectives, while IP is at the core of attempts to obtain benefits from
innovation and creativity in today’s global economy.

Advantages and disadvantages of the TRIPS Agreement

Advantages of the TRIPS Agreement
Transparency in IP policy was brought to the world’s attention.
WIPO’s existing international legal system, which was designed and controlled by them, was
greatly enhanced by this agreement.
Trade conflicts over intellectual property concerns were reduced by establishing a clear,
rules-based framework for resolving disputes.
It has aided in the acquisition and exercise of intellectual property rights, as well as providing
a solid platform for the trade in knowledge products.
In developing countries, the number of patent applications is increased
Disadvantages of the TRIPS Agreement
TRIPS mandates high levels of patent protection.
Fertilisers, 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.
TRIPS Agreement : a boon or bane for developing countries
The agreement imposes essential and obligatory requirements on signatory member nations
to implement basic levels of intellectual property right protection in all of its elements.
However, this Agreement has far-reaching implications for developing nations, as rigid
intellectual property restrictions stifle the growth of indigenous enterprises in these areas.
Intellectual property rights, although vital, must be implemented with caution in developing
nations since they can harm the economy, public health, and so on. The principal
consequences of the patent protection regime have a deterring effect on the expansion of local
sectors, such as pharmaceuticals.

Intellectual property should not be used to thwart the interests of developing nations, such as
public health, which is already being harmed. As a result, a re-evaluation is necessary. In
addition, when the situation demands them, the exceptions to the intellectual property rights
shall be implemented effectively and strictly.

The TRIPS Agreement has had a considerable impact on IPR protection in poor nations but
has had a little discernible impact on IPR protection in developed countries. This outcome is
consistent with the TRIPS Agreements’ requirements being established to be as near as
possible to IPR protection systems already in existence in many developed nations. To
comply with the TRIPS Agreement, developed nations did not need to make significant
changes to their policies. And also the Nations that rely heavily on exports to countries that
advocated for the TRIPS Agreement’s inclusion in the WTO (i.e. developed countries) may
take the possibility of retaliatory trade penalties seriously since they stand to lose a lot of
money in lost exports. This demonstrates the TRIPS Agreement’s effectiveness as a coercive
threat in international economic negotiations.

Numerous objections have been leveled against the TRIPS Agreement’s validity and efficacy,
particularly in relation to poor nations. Even famous free-trade proponents like Martin Wolf
have criticised TRIPS for its “hypocrisy” viewing it as a rent-seeking device from many poor
nations, with potentially disastrous consequences for education, public health, and economic
growth. Even among nations that appear to benefit the most from the agreement, gains may
only go to certain segments of society, implying that the actual beneficiaries from TRIPS are
not developed nations, but rather the major businesses that pushed for its adoption. TRIPS
has also failed to address policymakers’ concerns, since trade balances have continued to
deteriorate, and the current emphasis on private rights may, in the long run, contribute to
stifling innovation and knowledge dissemination in developed nations. While Archibugi &
Filippetti warned against misrepresenting TRIPS’ impact, it is clear that the agreement does
not work as intended. It would have been better to establish a tiered structure that provided
more meaningful special and differential treatment based on nations’ developmental
requirements. Given that TRIPS is already firmly established inside the WTO system, it is
unclear if major revision of the agreement is possible for the sake of developing nations.

Conclusion
This article might be concluded by stating that, despite the importance of the TRIPS
Agreement, the developing countries have highlighted a number of concerns and flaws in the
treaty. Despite these issues, the TRIPS Agreement is often regarded as the most
comprehensive mechanism for protecting intellectual property rights. It enhances and
manifests the previous IPR conventions, the most important of which were first drafted at the
end of the nineteenth century. Certainly, these agreements were revised on a regular basis, to
permit a gradual international control of intellectual property and copyrights. However, in
comparison to the results of previous revision exercises, the TRIPS Agreement constitutes a
tremendous conceptual leap that profoundly transforms not only how IPRs are seen
internally, but also how they are implemented and disputes are resolved.
Question:3 WTO and WIPO
Answer:
Question:4 Paris Convention for Protection of Industrial Property.
Answer: At Vienna International exhibition of inventions has been held in 1873. Due to Participation
was hampered by the fact that in many of the foreign visitors, they were not willing to exhibit their
inventions at that exhibition in view of the inadequate of the legal protection offered to the
exhibited inventions. So, a conference was convened in Paris in 1883. Its main objective is for
protecting the industrial property by establishing of the union. The provisions of the convention
broadly fall in to three main categories.
The Paris convention is for the protection of the industrial property which was signed in Paris, France
on 20 March 1883. It is one of the first intellectual property treaties and it's been established for the
union for the protection of industrial property. Currently, the convention is still in force. The Paris
convention, concluded in 1883, was revised at Brussels in 1990, at Washington In 1911, at The
Hague in 1925, at London in 1934, at Lisbon in 1958 and at stock in 1967, and was amendment in
1979. It is formed for the protection of industrial property. It applies in the widest sense to the
industrial property, including industrial designs, patents, trademarks, and geographical indications.

Scope of industrial property is all the members countries applies to patents, utility models, trade
names, service marks, indications of source or appellations of origin, and the repression of unfair
competition. Industrial property in the broadest sense shall be understood and shall apply not only
to industry and commerce proper, but likewise to extractive industries and agriculture and to all
manufactures or natural products for example waters, beer, flowers, wines, grain, tobacco leaf, fruit,
mineral and flour. Patents also includes various kinds of industrial patents which are recognized by
the laws of the countries of the union, such as patents of improvement, patents of importation,
certificates of addition and patents etc.

In the widest sense of industrial property the Paris convention applies, including industrial designs,
trademarks, patents, by the laws of some countries in a kind of small � scale patent utility models
which is provided, service marks, trade names, geographical indications and the repression of unfair
competition.

There are some principal features of the Paris convention which are:

The total number of nation states party to the convention is 177.

Protection against the unfair competition and false indications.

Parallel importation;

Independence of parties;

Right of priority;

National treatment

The substances of provisions of the convention are fall in to three main categories which are
National treatment, Priority right, common rules contents.

National treatment:

As regards of the protection of industrial property, the convention provides that, each of the
contracting state must grant the same protection to nationals of other contracting states that it
grants to its own nationals. Under the convention, Nationals of non-contracting states are also
entitled to national treatment, if they are domiciled or have an effective and real industrial or
commercial establishment in a contracting state.

In simple words, those who are a member to the convention with respect to the application, if it calls
for the application of same rules to the nationals of all the states and granting of industrial property
rights, provided they hold an establishment in that respective state. It means that
regarding protection of industrial property, each country to the convention must grant the same
protection to nationals of the other member countries as it grant the same protection to nationals of
the other member countries as it grant to its own nationals. (No discrimination) (Article 2 & 3 of the
convention)

Right to priority:

In right to property, the convention provides it in case of patents and utility models where they exist
and industrial designs and marks. If an industrial property right is filed by a given applicant in one of
the member countries then the same applicant or his successor in title may file it in other member
countries in a time period (6 � 12 months) and it will be considered as filed on the same date as the
first country.

In right to priority they will have the priority over those applications which were filed by others
during the period of time for the same industrial design and utility model and mark and invention. In
this right its main meaning is that when there will be someone on the basis of a regular first
application is filed in one of the contracting state then the application may or within certain period
of time like 6 months for industrial designs and marks and 12 months for patents and utility, can
apply for protection in any of the other contracting states. These subsequent applications will be
regarded as if they had been filed on the same day as the first application.

Moreover, these subsequent applications are being based on the first application, will not be
affected by any event that takes place in the interval, such as incorporating an industrial design, or
the sale of articles bearing a mark or the publication of an invention. One of the great practical
advantages of this provision is that applicants seeking protection in several countries are not
required to present all of their applications at the same time but have 6 or 12 months to decide in
which countries they wish to seek protection and to organize with due care the steps necessary for
securing protection.

Independent of patents: the union lays down some common rules which all member states are
required to follows:

Patents: In different contracting states for the same invention are independent of each other
towards patents granted. The granting of a patent in one contracting state does not oblige other
contracting states to grant a patent; terminated or annulled in any contracting state on the ground
that it has been refused or patent cannot be refused or annulled or has terminated in any other
contracting state. As such in the patent, the inventor also has the right to be named. The grant of a
patent may not be invalidated and patent may not be refused, of a product obtained by means of
the patented process on the ground that the sale of the patented product, or is subject to
restrictions or limitations resulting from the domestic law. If one country gives a patent or rejects a
patent it does not mean that the patent will be accepted or rejected by the other country, any
country has no influence over the fate of a patent in other country. There are common rules also
which are applying to collective marks such as indication of source, industrial designs, trade names,
and unfair completion. This convention is mainly for the protection of industrial property. It is an
interesting event to delve into and also if anyone is interested in one day filing for patents in other
countries boundaries besides the one they can currently live in. In worldwide scenario, companies
have their reputations and they should particularly look into law to make sure about everything is
handled correctly. In 1883, the authority is clear based on the fact that was created and inventors
are granted international protections, due to that this convention was brought together and is still in
effect to this day.
UNIT-II
TRADE MARK ACT;
Question:1 object and scope of trademark.

Answer: introduction:
Prior to 1940, there was no statutory law relating to trademarks in India. The law applicable
to the subject was based on the common law of England before the passing of the first
Registration Act in 1875. The Trade Marks Act 1940 introduced for the first time to address
the issues relating to the registration and statutory protection of trademarks in India. This Act
was in force until 1958 when the Trade and Merchandise Marks Act was passed. This Act
was repealed and the present law is governed by the Trade Marks Act 1999. The Trade Marks
Act of 1999 has made substantial changes in the law. The Present Act of 1999, apart from
simplifying the law, has introduced many new provisions, which are in the interest of
trademark owners as well as the consumers of goods.

The Trade Marks Act, 1999 is an act to amend and consolidate the law relating to trademarks,
to provide for registration and better protection of trademarks for goods and services and for
the prevention of the use of fraudulent marks. Statutory protection of a trademark is
administered by the Controller General of Patents, Designs and Trademarks, a government
agency which reports to the Department of Industrial Policy and Promotion (DIPP), under
the Ministry of Commerce and Industry. The law also provides for the rights acquired by
registration of a trademark, modes of transfer and assignment of the rights, nature of
infringements, penalties for such infringement and remedies available to the owner in case of
such infringement.

The Meaning of a Trademark

A trademark is a word, phrase, symbol, or design, or a combination of words, phrases,

symbols, or designs that identifies and distinguishes the goods of one manufacturer or seller

from those of others who may also sell that kind of goods. The primary purpose is to identify

the source of goods rather than to describe their qualities. In other words, trademarks are used

to distinguish one company’s products from others on the market.

Object:
THE OBJECT OF TRADEMARK LAW 

The object of trademark law is to deal with precise nature of the rights which a person can
acquire in respect of a trademark, the mode of acquisition of such rights, the method of
transfer of those rights to others, the precise nature of infringement of such rights, the
procedure for enforcement of those rights and the remedies available in respect thereof. This
branch of Commercial Law has undergone a change from time to time in tune with changing
patterns of business methods and practices. Even the very concepts of a trademark and its
functions have changed. In India, the law now is governed by the Trade Marks Act 1999.
The salient features of the Trade Marks Act 1999 are presented below 

1. The Trade Marks Act, 1999 deals with the entire law relating to trademarks and its
procedures.
2. The provisions of this Act are in conformity with the obligations imposed by the
Agreement on TRIPs.
3. Provisions for filing a single application for registration of a mark in more than one
class. Class 1 to 34 related to goods and Class 35 to 45 related to services. 
4. Section 9 of the Act specifically mentions absolute grounds for refusal of registration. 
5. Section 12 empowers the Registrar to permit registration by more than one proprietor
of trademarks in the case of concurrent use even though marks are identical or similar.
6. Widening the definition of a trademark by recognizing the shape of goods, packaging
and combination of colours as marks and trademarks.
7. Simplifying the procedure for registration of registered users and enlarging the scope
of the permitted use.
8. Marks which are not registrable elaborated.
9. Abolition of the necessity for disclaimer. 
10. The Act has abolished the system of maintaining the registration of trademarks in Part
A and Part B with different legal rights and provides only a single register with the
simplified procedure for registration and with equal rights. Abolition of Part B
registers.  
11. Provisions for protection of well-known trademarks and test for determination of such
marks. 
12. Increasing the period of registration and renewal from 7 to 10 years. 
13. Widening the scope of infringement of registered trademarks. 
14. Assignment of unregistered trademarks without the goodwill of a business is
permitted.
15. Registered user provisions simplified. Registrar has been given the power to decide. 
16. Non-registered licensing of registered trademarks is permitted.
17. Licensing of an unregistered trademark is permitted. 
18. Creation of Appellate Board to hear and decide appeals from the decisions of
Registrar. 
19. Publication of alphabetical Index of classification of goods and services. 
20. Transferring the final authority relating to registration of certification trademarks to
the Registrar instead of the Central Government. 
21. Enlarging the jurisdiction of courts to bring the law on par with the Copyright Laws,
amplifying the powers of the court to grant an injunction in certain cases and other
related amendments to simplify and streamline the Trade Mark Law and procedure.
22. The Act provides registration of trademarks for services also in addition to goods. 
23. Registrations of names of chemical elements or international non-proprietary names
are prohibited under Section 13. So also the names and representations of living
persons or persons recently dead cannot be used for registration unless the consent is
obtained from the concerned persons. 
24. The Trade Marks Act, 1999, provides registration of collective marks by associations,
certification trademarks.
25. For speedy disposal of appeals and rectification of applications, the Act establishes
Intellectual Property Appellate Board.
26. The duration of a valid registration is for a period of 10 years from the date of its
registration. It may be renewed for any number of periods (Section 25). 
 27. The provisions of this Act do not affect rights of action against any person for passing
off goods or services (Section 27 (2)]. 
28. Section 28 confers to the registered proprietor of a trademark, (i) the exclusive right to
the use of the trademark and (ii) right to obtain the relief against infringement of the
trademark
29. The Trade Marks Act, 1999, provides reliefs in any suit for infringement of
trademarks or for passing-off under Section 135. They are injunction and at the option
of the plaintiff either damages or an account of profits. 
30. The Act provides enhanced punishment for the offences relating to trademarks on par
with the present Copyright Act, 1957, to prevent the sale of spurious goods.
31. Section 5 of the Act establishes the Trademarks Registry. The Act also empowers the
Central Government to appoint the Registrar of Trademarks (Section 3). He is in
control and management of the Register of Trademarks. The registration of
trademarks is under the control of the Registrar. 
32. Section 142 protects the persons against groundless threats of legal proceedings. 
33. The Act provides assignability and transmissibility of registered as well as
unregistered trademark either with goodwill or without goodwill.

Trademark Law

It governs trademarks in the country. It regulates the use, creation, and protection of

intellectual property rights and other established legal rights associated with trademarks.

Trademark law is a part of the Intellectual Property Rights (IPR)

In every country, there are laws that govern trademarks because it is an important part of

upholding economic competitiveness as well as protecting consumers from false advertising.

It is developed to prevent counterfeit products from being sold in markets.

Evolution of Trademark Law in India

The need for a law to exclusively address trademark practice and procedure in India was

sought in the 19th century, which was eventually materialised into the Trademark Act, 1940.

Since then, the trademark law in India has evolved as per the rapidly changing and upgrading

Indian economy. At present the Trademark Act, 1999 governs the trademark practices in the

country.
Purpose of a Trademark Law

As we already know the Trademark Act of 1999 governs all the trademark-related activities

in India, this section will elaborate on the objective of the law.

 Protection of Constitutional Rights
Article 19 of the Indian constitution provides for freedom of trade and movement. Trademark

law hence protects the constitutional rights of people by guaranteeing them the freedom to

trade under the protection of it.

 Protecting the Basic Rights of Traders

One of the major objectives of trademark law is to protect the registered trademarks from

being misrepresented or used by unauthorised users for any commercial benefits. TM

Registration in India allows its exclusive use to the owner of the trademark.  The law also

allows a registered owner to share or assign the trademark.

 Protecting Counterfeiting and Duplicating

Often the quality of some great products and services deteriorates due to the duplicity of such

products. Some famous and popular products are duplicated by unauthorised users. This leads

to financial, as well as the social loss for the original creator. Due to the infiltration of

duplicated products the general public loses faith in the original products and their reputation.

The trademark law protects such infringement to protect the larger public interest.

 Compliance with International Treaties

India is obliged to protect its Intellectual Property Rights, as it is a signatory to various

important international treaties like the Trade-Related Aspects of Intellectual Property Rights

(TRIPS). Also, India has to protect the interests of domestic traders from unbalanced

competition from the outside. So to meet these objectives India has made its trademark law

robust and updated its legal system accordingly.

Summing Up

Though the government does not mandate the International Trademark Registration, it is

recommended to register a trademark to reap all the benefits vested by the Trademark law of

India.

Question:2 Mark, trade mark and registered trade mark.

Answer: introduction: same in all question.
WHAT IS A TRADE MARK & Its FUNCTIONS?
  A trade mark is a symbol, word, or words legally registered or established by use
as representing a company or product.
 A trade mark performs four basic functions :-

It identifies the goods / or services and its origin.

It guarantees its unchanged quality
It advertises the goods/services
It creates an image for the goods/ services.
TYPES OF TRADE MARKS IN INDIA?

 Product trademarks
 Service trademarks
 Certification trademarks
 Collective trademarks

WHAT ARE THE SOURCES OF TRADE  MARK LEGISLATIONS IN INDIA?

 (1) The Trade Marks Act,1999 and rules made there under
 (2) International conventions.
 (3) National treaties.
 (4) Regional treaties.
 (5) Decision of the courts.
 (6) Office practice and other rulings
 (7) Decision of Intellectual Property Appellate Board (IPAB).
 (8) Text books written by academicians and professional.

WHAT IS AN UNREGISTERED TRADE MARK?

 An “unregistered trademark” is one which does not possess legal benefits.

 u/s 27 of Trade mark act,1999 no action for infringement is allowed for
unregistered trademarks, it can still be protected by means of common law tort of
“passing off”.

WHAT IS A REGISTERED TRADE MARK?

 A “registered trademark” confers a bundle of exclusive rights upon the registered

owner, including the right to exclusive use of the mark in relation to the products
or services.
 The Trade Marks Act, 1999 governs the whole process of registration, valid for
10 years.

-It identifies the origin of goods and services;

-Advertises goods and services;
-Guards the commercial goodwill of a trader; and
-Protects the innocent public from buying the second rate quality goods.
 
WHO CAN USE SYMBOL ® IN INDIA?
Only the proprietor of a trademark whose trademark has been registered in India can use the
symbol ® in India. Using the symbol ® unless your mark has been registered in India is
unlawful.
WHEN CAN THE SYMBOL ™ IN INDIA?
Using this symbol with your trademark simply implies that you claim to be the proprietor of
the trademark. There is no prohibition on the use of the symbol ™ in India.
 
WHAT ARE LEGAL REQUIREMENTS FOR REGISTRATION OF TRADE MARK
IN INDIA?
The legal requirements to register a trade mark under the Legislation are:

 The selected mark should be capable of being represented graphically (that is in

the paper form).
 It should be capable of distinguishing the goods or services of one undertaking
from those of others.

RIGHTS OF THE HOLDER OF A REGISTERED TRADE MARK?

 Section 28) Rights Conferred by Registration

(1) Exclusive rights to use the trade marks in relation to the goods or any services and to
obtain relief in respect of infringement.
(2) Where there exists two or more trademarks, which are identical with or nearly resemble
each other, the exclusive right to the use those trademarks shall not be deemed to have been
acquired by any one.
CASE – Clinique Laboratories LLC and Anr. Vs. Gufic Limited and Anr.
MANU/DE/0797/2009
 
WHO CAN APPLY FOR A TRADE MARK REGISTRATION?

 A person who claims to be the proprietor of the trademark.

 A person representing Foreign organisation.

For company under incorporation, anyone may apply in its name for subsequent assignment
of the registration in the company’s favour.
TRADEMARK INFRINGEMENT?
(Section 29) Infringement of Registered Trade Marks
A registered trade mark is infringed by a person who, not being a registered proprietor or a
person using by way of permitted uses in the course of trade, a mark which is identical with
the trade mark in relation to goods or services in respect of which the trade mark is registered.
CASE – Tata Sons Limited V Greenpeace International and Anr.                  
MANU/DE/0220/2011
CASE – The Coca-Cola Company V Bisleri International
               Pvt. Ltd     Manu/DE/2698/2009
CASE – Yahoo! V Akash Arora 1999 (19) PTC (Del)
(Section 27) No Action for Infringement of Unregistered Trade Mark
(1) No person shall be entitled to institute any proceeding to recover damages or to prevent
the infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for
passing off goods or services as the goods of another person or as services provided by
another person or the remedies in respect thereof.
CASE – Cycle Corporation of India Ltd v TI Raleigh Industries Pvt Ltd (AIR 1996 SC 3295)
 
WHAT DOES NOT AMOUNT TO TRADE MARK INFRINGEMENT?

 (Section 30) Limits on Effect of Registered Trade Mark 

(1) Nothing shall prevent the use of a registered trade mark provided the use is in accordance
with honest practices
(2) It is not infringement where the use indicates the kind, quality, quantity, intended purpose,
value, geographical origin, the time of production of goods or of rendering of services.
(3) Where the goods bearing a registered trade mark are lawfully acquired the sale of the
goods in the market or otherwise dealing in those goods is not infringement of a trade mark.
 
WHAT ISSUES ARISE IN A SUIT FOR INFRINGEMENT OF TRADEMARKS?

 The following issues arise in a suit for infringement of trademarks:

 Is the plaintiff entitled to file the suit in other words is he the owner of the
trademark alleged to be infringed.
 Does trademark subsist in the scenario alleged to have been infringed.
 Does what the defendant has done or proposes to do constitute infringement of
the trademark.
 Does the defendants do come within the scope of any of the exemptions to the
infringement.
 What remedies the plaintiff is entitled to.

 
WHAT ARE THE REMEDIES FOR INFRINGEMENT OF TRADE MARK IN
INDIA?

 Two types of remedies are available to the owner of a trademark :-

1) An action for infringement’ in case of a registered trademark(Statutory Remedy).

2) An action for passing off’ in the case of an unregistered trademark 

Question:3 certification of trademark and Interpretation and Scope of

Deceptive Similarity
Answer:
A certification trade mark is a special type of trade mark used to indicate that a product or
service meets a certain standard. For example, a certification trade mark may indicate that the
product or service meets a certain standard of quality, is made of particular materials, has
been made in a certain way, or is from a particular location.
In order to be registered certification trade marks must have rules governing their use
approved by the Australian Competition and Consumer Commission (ACCC). The ACCC
assesses the requirements that the goods/services must meet in order to use the certification
mark, and the means by which compliance with the rules will be judged. The purpose of this
is assessment is to ensure that the rules are not against the public interest, or likely to be
unfair, misleading, anti-competitive, or contrary to public health and safety concerns.

Benefits of Certification Trade Marks

The main benefit of a certification trade mark is to promote the perception of impartiality and
objectivity in use of the trade mark. Since the rules governing the use of certification trade
marks must be approved by the ACCC, registering a certification trade mark may help to
promote public confidence in the trade mark. Furthermore, the rules governing the use of
certification trade marks are publicly available. This means that by registering a certification
trade mark you are opening your certification process to public scrutiny as well, reinforcing
public confidence in your trade mark.

Disadvantages of Certification Trade Marks

Since the rules governing use of the certification trade mark must be approved by the ACCC,
there is considerable additional administrative overhead in the registration process.
Furthermore, the rules must include:
the standards that the certified products or services must meet;
the method for determining whether these standards have been met;
the requirements that a person must satisfy in order to become an approved certifier;
the requirements the owner of the certification trade mark, or an approved user, must meet in
order to use the mark;
any other requirements for the use of the mark;
a procedure for resolving a dispute about whether the goods/services meet the certification
standards; and
the procedure for resolving disputes about any other issue regarding the mark.
Changes to the certification process or rules governing the use of the certification trade mark
must be approved by the ACCC, as must a transfer of ownership of the mark.

Is a Certification Trade Mark Worthwhile?

Given the additional administrative and regulatory burden on certification trade marks vs
standard trade marks, careful thought must be given to assess whether they are worthwhile. In
most cases, the benefits of a certification trade mark can be achieved by registering a standard
trade mark and adopting appropriate business practices and licensing arrangements.
For example, a business may achieve public confidence in their certification method by
publishing their standards online. Although not assessed by the ACCC, for many consumers
this difference will not be appreciated and it is sufficient that the certification practices
subject to some form of public scrutiny.
Additionally, the practices of approved certifiers of goods or services can be governed by
licensing (and sub-licensing) arrangements without the requirement that these practices by
approved by the ACCC.

Organisations looking to certify goods or services provided by others with a trade mark
should think carefully about whether a certification trade mark is appropriate for their
situation. This should be done with the guidance of an appropriately qualified professional.
Interpretation and Scope of Deceptive Similarity
The concept of deceptive similarity has been discussed under Section 2(h) of the Trade Marks
Act, 1999 as: “A mark shall be deemed to be deceptively similar to another mark if it so
nearly resembles that other mark as to be likely to deceive or cause confusion.”
In layman’s terms, deceptively similarity of marks can be defined as similarity between
trademarks that can lead the general public of average intelligence to believe that the mark in
question is somehow related to a registered or well-known trademark.
According to Section 11(1) of the Trademark Act, 1999, “a trademark cannot be registered if
it is deceptively similar, or identical, with the existing trademark and goods and services, that
is likely to create confusion in the mind of the public at large”.
Criteria for a court of law or tribunal for determining deceptive similarity
The criteria for the determination of the deceptive similarity of marks had been decided in the
case of Cadilia Healthcare Limited v. Cadilia Pharmaceutical Limited, where the Hon’ble
Supreme Court set out specific rules for deciding the nature of similar or misleading marks.
Following are the one:
The nature of the marks, whether the marks are words, labels, or composite marks.
The degree of resemblance between the marks, phonetic or visual, or similarity in the idea.
The nature of goods or services in respect of which they are used as trademarks.
The similarity in the nature, character, and performance of the goods/services of the rival
traders/service providers.
The class of purchasers/customers who are likely to buy the goods or avail the services, on
their education and intelligence and a degree of care they are likely to exercise in purchasing
and/or using the goods.
The mode of purchasing in the trading channels that the goods/services traverse in the course
of business or placing an order for the good.
Intention to deceive is not necessary: The guiding principle
One of the guiding factors in determining whether a mark deceives or confuses does not
depend on the intent to deceive. It makes no difference whether the person has the intent to
deceive the general public or not. As a result, the intent to deceive does not need to be
proven.

In Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietory Ltd., it was held that the plaintiff
was not required to prove the defendant’s fraudulent intent, and it was not required as such.
Furthermore, once a defendant’s reputation has been established, plaintiffs do not need to
prove fraudulent intent or misrepresentation on the part of the defendants.

Judicial Interpretations
The Hon’ble Supreme Court of India has stated some criteria for the determination of the
deceptive similarity of trademarks. However, it depends on individual facts and facets of
cases. Following are some of the recent judicial interpretations on Deceptive Similarity:

Bigtree Entertainment v Brain Seed Sportainment: The Delhi High Court denied the
Plaintiffs, proprietors, and owners of the website bookmyshow.com; an interim injunction
against Defendant’s use of the domain bookmysports.com.
The court held that prefix ‘BOOKMY’ of the Plaintiff’s trademark BOOKMYSHOW was
descriptive and not an arbitrary coupling of words and the Plaintiff’s failure to prove that
‘BOOKMY’ has attained distinctiveness or secondary meaning, led to the dismissal of the
application for interim injunction led by the Plaintiffs.
SM Dyechem Ltd. V. Cadbury (India) Ltd.: In this case, the plaintiff established a chip and
wafers business under the trademark “PIKNIK.” Later, the defendant established a chocolate
business under the name “PICNIC.” Following that, a trademark infringement suit was filed.
The Court determined that the trademarks did not fall into the category of deceptive similarity
because they differ in appearance and word composition.”
M/S Allied Blenders and Distillers Pvt. Ltd. V. Govind Yadav & Anr.: In this case, the
plaintiff claimed that the defendant’s trademark “Fauji” is defectively similar to that of the
plaintiff’s, i.e., “Officer’s Choice”. The claim was made based on similarity of concept in the
creation of the trademarks, as “Fauji” is a Hindi translation of a military officer.
“Furthermore, both parties are in the alcoholic beverage business. Furthermore, the packaging
of both bottles is similar.
Though trade dress plays a significant role in deciding the cases of trademark infringement,
in this case, the court held that there is no deceptive similarity between the trademarks
“Officer’s Choice” and “Fauji” and hence, dismissed the trademark infringement suit.
Parle Products (P) Ltd. v. J. P. & Co. Mysore: The Supreme Court stated that to conclude
whether a mark is deceptively similar to another, the comprehensive and vital features of the
two are to be considered. They should not be placed side by side to find out if there are any
differences in the design and if so, whether they are of such character as to avoid one design
from being mistaken for the other. It would be enough if the questionable mark bears such an
overall resemblance to the registered mark as would be likely to deceive a person usually
dealing with one to accept the other if offered to him.
M/S Mahashian Di Hatti Ltd. v. Mr. Raj Niwas: In this case, the plaintiff used the registered
logo, MDH inside three hexagon devices on red color background, in its business activity of
manufacturing and selling spices & condiments. The aforementioned logo has been in use
since 1949 in respect of numerous products. The plaintiff contended that the logo used by the
defendant, MHS within a hexagon device with a red color background was similar to its logo.
The plaintiff, therefore, pursued an injunction restraining the defendant who was also
involved in the same business activity from using the infringing logo MHS or any other
trademark identical or deceptively similar to its MDH logo. The defendant inter alia tried to
weaken these arguments by contending the phonetic dissimilarity between MDH and MHS.
The Court compared the logos of both the plaintiff and the defendant and inter alia
determined the following similarities:

as in the logo used by the plaintiff, the defendant made use of three hexagons for structuring
its logo;
the letters of both MDH and MHS were in white and
Similar to MDH, the background color in MHS was red.
In light of the above resemblances, the Court decided the presence of strong visual
resemblance despite weak phonetic resemblance. Further, it was also noted that both the
parties were involved in the same business activity of manufacturing and selling spices. Thus,
the registered trademark of the plaintiff was held to be infringed by the defendant.

Conclusion
Deceptive Similarity as a ground for refusal of trademark registration is the most important
feature of the Act, along with other supplementary provisions covered under the purview of
Deceptive Similarity. As already discussed, proof of intention to show Deceptive Similarity is
irrelevant.
To establish infringement of a registered trademark, it is necessary to establish that the
infringing mark is identical or deceptively similar to the registered mark, and no additional
proof is required. In a passing-off action, proving that the marks are identical or deceptively
similar is not enough. The mark’s use should be likely to deceive or confuse. Furthermore, in
a passing-off action, it is necessary to prove that the defendant’s use of the trademark is likely
to cause injury or damage to the plaintiff’s goodwill, whereas, in an infringement suit, the
defendant’s use of the mark does not need to cause any injury to the plaintiff.

Question:4 Registration of trade mark- conditions for registration;

procedure for registration and Duration of registration; fact of Registration,
Answer: introduction: same in all questions.
Owner of the Trademark
Trademark gives protection to the owner by assuring them with the exclusive rights to use a
trademark, to identify the goods or services or permit others to use it in results of payment. It is a
weapon for the registered proprietor to stop the others from illegal use of the trademark. Under
Section 28 the rights conferred by registration.

The registration of a trademark is valid if the right is given to the certified owner of the trademark,
the owner has the exclusive right to use of the trademark in respect of goods or services in which
the trademark is registered and to claim maintenance in respect of infringement of the trademark is
given to the holder of the trademark.

Wherever more than two persons are certified proprietors of the trademark which are same with or
nearly identical with each other. The exclusive right to use of each of those trademarks shall not
except if their own rights are related to any conditions or limitations entered on the register be
expected to be taken by one of those persons as against of other persons only by registration of the
trademark, but each of those persons has the same rights as against other persons.

Registration of Trademark

Any person claiming to be the owner of the trademark or supposed to used the trademark by him in
future for this he may apply in writing to the appropriate registrar in a prescribed manner. The
application must contain the name of the goods, mark and services, class of goods and the services
in which it falls, name and address of the applicant and duration of use of the mark. Here the person
means an association of firms, partnership firm, a company, trust, state government or the central
government.

Conditions of registration

The central government by mentioning in the official gazette appoint a person to be known as the
controller, general of patents, designs and trademark who shall be the registrar of the trademark.
The central government may appoint other officers also if they think that they are appropriate, for
the purpose of discharging, under the superintendence and direction of the registrar, the registrar
may authorize them to discharge. The registrar has the power to transfer or withdraw the cases by
in writing with reasons mentioned. Under Section 6 of the Act, discussed the maintenance of a
registered trademark. At head office wherein particulars of registered trademarks and other
prescribed, particulars, except notice of the trust, shall be recorded. The copy of the register is to be
kept at each branch office. It gives for the preservation of records in computer or diskettes or in any
other electronic form.
Absolute grounds for refusal of registration

Absolute grounds for the refusal of registration is defined in Section 9 of the Act. The trademarks
which can be lacking any distinctive characteristics or which consists exclusively of marks or signals,
which can be used in trade to indicate the kind, fine, quantity, supposed grounds, values,
geographical origin. And also a time of production of goods or rendering of the offerings or different
characteristics of the goods or offerings which consists solely of marks or indications which have
come to be average in the present language. That marks are not entitled to registration. Except it is
confirmed that the mark has in fact acquired a new character as a result of use before the date of
application.

It gives that a mark shall not be registered as trademarks if:

It frauds the public or causes confusion.

There is any matter to hurt religious susceptibility.

There is an obscene or scandalous matter.

Its use is prohibited. It provides that if a mark contains exclusively of (a) the shape of goods which
form the nature of goods or, (b) the shape of good which is needed to obtain a technical result or, (c)
the shape of goods which gives substantial value of goods then it shall not be registered as
trademark.

Test of similarity

For the conclusion, if one mark is deceptively similar to another the essential features of the two are
to be considered. They should not be placed side by side to find out if there are any differences in
the design and if they are of such a character to prevent one design from being mistaken for the
other. It would be enough if the disputed mark has such an overall similarity to the registered mark
as it likely to deceive a person usually dealing with one to accept the other if offered to him. Apart
from the structural, visual, and phonetic similarity or dissimilarity, the query needs to be viewed
from the factor of view of man typical intelligence and imperfect collection secondly. It’s regarded as
an entire thirdly it is the query of his impressions.

In Mohd. Iqbal v. Mohd. Wasim it was held that “it is common knowledge that ‘bidis’ are being used
by persons belonging to the poorer and illiterate or semi-literate class. Their level of knowledge is
not high. It cannot be expected of them that they would comprehend and understand the fine
differences between the two labels, which may be detected on comparing the two labels are
common. In view of the above, there appears to be a deceptive similarity between the two labels”.

Relative grounds for refusal of registration

Under Section 11 of the Act, it gives relative grounds for the refusal of registration of a trademark. A
trademark cannot be registered if because of (i) its identity with an earlier trademark and similarity
of goods or services, (ii) its similarity to an earlier trade mark and the similarity of the goods and
there is a probability of confusion.

It also gives that a trademark cannot be registered which is identical or similar to an earlier
trademark. And also which is to be registered for goods and services which are not similar to those
for which earlier trademark is registered in the name of a different proprietor if, or to the extent, the
earlier trademark is well known in India. It further gives that a trademark is cannot be registered if,
or to the extent that, its use in India is liable to be prevented by virtue of any law.
Procedure and Duration of registration

The registrar on the application made by the proprietor of the trademark in the prescribed manner
within the given period of time with the adequate payment of fees. Registration of a trademark shall
be of ten years and renewal of the registered trademark is also for a period of ten years from the
date of expiration of the original registration or of the last renewal of registration.

The registrar shall send the notice before the expiration of last registration in the prescribed manner
to the registered proprietor. The notice mentions the date of expiration and payment of fees and
upon which a renewal of registration may be obtained if at the expiration of the time given in that
behalf those conditions have not duly complied with the registrar may remove the trademark from
the register.

But the registrar shall not remove the trademark from the register if implication made within the
prescribed form and the prescribed rate is paid within six months from the expiration of the final
registration of the trademark and shall renew the registration of the trademark for an interval of ten
years. If the trademark is removed from the register for non-payment of the prescribed fee, the
registrar shall after six months and within one year from the expiration of the last registration of the
trademark renew the registration,

And also on receipt of implication in the prescribed form and on payment of the prescribed fee the
registrar restores the trademark to the register and renew the registration of the trademark, for a
period of ten years from the expiration of the last registration.

International registration of a trademark

The law of trademark passed by the Indian government is applicable only within the territory of
India. The trademark which is registered in has effect only in India, for the protection of trademark in
other countries needs to be registered in another country as well. Each country has its own
trademark law with rules and law for the registration of a trademark in that country. In other words,
if an individual desire to obtain trademark registration in any particular nation then a separate
application must be moved in all such international locations. Within the year 2013, the Indian
government agreed to the Madrid conference which prescribes a methodology of submitting a
worldwide application to the contracting events from India by means of the workplace of the
Registrar of Trademark. For example- India’s mobile phone manufacturing Micromax received 1.25
millionth international trademark registration for its trademark ‘MICROMAX’ protection in over 110
countries. The international trademark registration for Micromax filed under the Madrid Protocol,
under mark can be protected in many jurisdictions by only filing an application for international
registration. There are two methods by which an international application can be filed:

International application in each foreign country: For the protection of trademark in any foreign
country, an international application must be filed to the trademark office by following the rules and
regulations of that country. For this purpose the applicant must hire a firm dealing in trademark
registration in foreign, the applications to countries which is not a party to the Madrid system can be
filed as per above. It provides services that engaging an Attorney in the foreign countries works
closely for registration of a trademark in the foreign country.

The international application under the Madrid system: The trademark registration may also be
initiated by means of filing an international application under Madrid protocol before the Registrar
of Trademark for different nations. The Indian Trademark office collects international Trademark
application and after finding it in conformity with the Madrid protocol transmits such a global
application to the WIPO (World Intellectual Property Organization), which further transmits it to the
situation overseas. Each and every global software is processed by way of the overseas nation as per
their legislation and all communications are routed by means of Indian executive.
Effect of Registration

The registration of a trademark shall if valid give the exclusive right to the registered proprietor to
the use of trademarks in respect of goods and services of which the trademark is registered, and also
to obtain relief in respect of the infringement of the trademark.

Infringement of trademark

A registered trademark is infringed by a person who not being a registered proprietor or a person
using by way of permitted use in the course of trade, a mark which is identical with or deceptively
similar to the trademark in relation to goods or services in respect of which the trademark is
registered. After infringement, the owner of the trademark can go for civil legal proceedings against
a party who infringes the registered trademark. Basically, Trademark infringement means the
unapproved use of a trademark on regarding products and benefits in a way that is going to cause
confusion, difficult, about the trader or potentially benefits.

Infringement of trademark on the internet

The expansion of the web is also leading to an expansion of inappropriate trademark infringement
allegations. Probably, a company will assert trademark infringement each time it views one among
its trademarks on an online page of a Third party. For example, an individual who develops a website
online that discusses her expertise with Microsoft software could use Microsoft’s trademarks to
consult exact merchandise without the worry of infringement. However, she mainly would no longer
be competent to use the marks in this kind of means as to intent viewers of her internet web page to
feel that she is affiliated with Microsoft or that Microsoft is someway sponsoring her net web page.
The honour could simplest be analyzed upon seeing how the marks are sincerely used on the web
page. In this way, there is an infringement of trademark on the internet.

Case laws on Infringement

Hearst company Vs Dalal avenue verbal exchange Ltd.

The courtroom held that a trademark is infringed when a character in the course of trade makes use
of a mark which is same with or deceptively similar to the trademark in terms of the goods in respect
of which the trademark is registered. Use of the mark by using such man or woman needs to be in a
manner which is more likely to be taken as getting used as a trademark.

Amritdhara Pharmacy Vs Satya Deo Gupta,

In this case for determining the connection in two words related to an infringement action was
stated by the Supreme Court that there must be taken two words which are deceptively similar. And
judge them by their appearance and by their sound. There must be considered that the goods to
which they are to be utilised. There must be a consideration of the nature and kind of customer who
would be likely to buy those goods. In fact, it must be considered the surrounding circumstances and
also must consider what is likely to occur if each of those trademarks is used in common ways as a
trademark for the goods of the particular owners of the marks.

After considering all those circumstances, they came to the conclusion that there will be confusion.
This is to say that, not significantly that one man will be injured and the other will gain the illegal
benefit, but it for that there will be a mess in the mind of the public which will lead to confusion in
the goods then there may be the refusal of the registration.

No action for an unregistered trademark

This is defined under Section 27 of Act that no infringement will lie with respect to an unregistered
trademark, but recognises the common law rights of the trademark owner to take action against any
person for passing off goods as the goods of another person as services provided by another person
or the remedies thereof.

Conclusion
Intellectual Property reflects the meaning that it’s subject body is the product of the mind or
the intellect. As it’s the product of a productive and creative mind, It can be traded,
purchased, given and reserved. All this can be done but there are issues related that to be
dealt. Trademarks are very important aspects of Intellectual Property so, the protection of the
trademark has become essential in the present day because, every generator of a good or
service will want his mark to be different, eye-catching and it should be easily distinguishable
from others.

Question:5 Assignment and Transmission of registered trade mark and

unregistered trade mark;
Answer: introduction is same in all questions
According to the Trade Mark Act 1999

“Trademark means a mark capable of being represented graphically and which is capable of
distinguishing the goods or services of one person from those of others and may include the shape
of goods, their packaging and combination of colours.” Which in layperson language suggests that
any sign-on product or services that create it totally different from the opposite or simple to
differentiate one from the opposite may be a Trademark.

Assignment and Transmission of Trademark

Assignment and Transmission of Trademark is a process in which ownership of the trademark is

passed from one person to another with full or partial rights depending on the terms and conditions
of the owner of the trademark. Registered and Unregistered Trademarks are assigned and
transmitted from one person to another with or without the goodwill of the business concerned.

Difference between the Assignment and Transmission of the Trademark

Generally, the term Assignment and Transmission are used interchangeably but Sec 2 of the
Trademark Act clearly distinguishes between the Assignment and Transmission. In case of an
assignment of a trademark, there is a change in the ownership of the registered brand and in case of
Transmission, the right in the trademark continues to vest with the original owner but only a few
restricted rights to use the brand/mark are given to the third party.

For example, X is the owner of the trademark “œ” and decided to assign his trademark to Y. It means
that X will no longer have the ownership of the trademark and after proper assignment Y will be
registered owner of the trademark and will have all the rights to it.

Whereas if X decided to do the Transmission of a Trademark it will mean that X is still the original
owner of the trademark but he has just given restricted rights and liabilities to Y to use the
trademark.

Types of Assignment and Transmission of Trademark

Complete Assignment and Transmission

It means the transfer of all rights including rights to further transfer, rights to royalties, etc from one
individual to another.

For example, A proprietor ‘X’ sells his all rights of the Trademark to Y another proprietor according
to which Y have all the exclusive rights of the Trademark and he can use the trademark in any way as
he deems fit, if he wants he can further transfer it, he can receive royalties for the usage of
Trademark or set some guidelines for the usage of the trademark as they deem fit and there will be
no need to take the approval of ‘X’.

Partial Assignment

It means the transfer of ownership specified or restricted to certain services or products.

For example: ‘X’ a proprietor have a Trademark (♛) which deals with men’s lifestyle products which
include clothing to shoes assign and transfer his trademark (♛) to Z on a condition that they can use
their trademark only in dealing with shoes and nothing else, the only X has the right to use the
trademark on all the products. This kind of transfer is known as a partial transfer.

Assignment with goodwill

It means to transfer and assignment of the trademark with all the rights and values associated with
the trademark from one person to another.

For example, X assign and transfer his trademark (♛) to Z with all the rights and values. By doing this
Z has the full right to use the trademark for all men’s lifestyle products or for any other products that
they manufacture in future.

The assignment without goodwill

It means the transfer of trademark by the owner in such a way it can be used for any other purpose
except the original one.

For example: X proprietor with a trademark (♛) deals with men’s lifestyle products, assigns and
transfers his trademark(♛) to Z on a condition that Z can use his trademark for any product that he
wants except for men’s lifestyle products.

Conditions for assignment and transmission as given in section 42

Section 42 of the Trademark Act describes Conditions for Assignment and Transmission of a
Trademark otherwise than in connection with the goodwill of a business. It states that assignment
and transmission of the trademark otherwise than in connection with goodwill will not take effect
until and unless assignee apply to the registrar concerning the directions for the advisement of the
assignment and advertises it in such form and manner and within such period as the Registrar may
direct but not later than 6 months of which the assignment is made or after an extended period of 3
months if registrar allows for it.

But it will not be considered as an assignment of trademark otherwise than in connection with the
goodwill of the business if the trademark is assigned for some goods and services along with the
goodwill of the business concerned for those goods and services.

And the assignment is done for those goods which are exported and those services which are used
outside India with the assignment of goodwill

Restrictions on Assignment of Trademark

Trademark act also makes certain restrictions on the Assignment and Transmission of the Trademark
where there is a possibility of creation of confusion among users or public.

Restriction on assignment or transmission where multiple exclusive rights would be created.

Restriction on assignment or Transmission where exclusive rights would be created in different parts
of India.

Process of Assignment and Transmission of Trademark (Section 45)

Application to the Registrar of Trademark in Form TM-P

(with the original copy of duly certified documents)

Registrar will dispose of his decision within 3 months

a).Inform the applicant about the assignment or

b) Call to furnish proof if he has some doubts.

If approved, the registrar will make an entry in the Register with details,

(i) the name and address of the assignee;

(ii) the date of the assignment

(iii) where the assignment is in respect of any rights in the trademark, a description of the right
assignment.

(iv) the basis under which the assignment is made; and

(v) the date on which the entry is made in the register1.

If there is any dispute going on between the parties regarding the validity of an assignment or
transmission, the registrar may refuse to register the assignment or transmission until the right of
the parties has been determined.

Assignment and Transmission of Registered Trademark (Section 38)

Section 38 of the Trademark Act describes the Transmission of Registered Trademark according to
which “Notwithstanding anything in any other law to the contrary a registered trademark shall,
subject to the provisions of this Chapter, be assignable and transmissible, whether with or without
the goodwill of the business concerned and in respect either of all the goods or services in respect of
which the trademark is registered or of some only of those goods or services”

Assignment and Transmission of Unregistered Trademark(Section 39)

Section 39 of the Trademark Act describes the Transmission of Unregistered Trademark according to
which “An unregistered trademark may be assigned or transmitted with or without the goodwill of
the business concerned.”

Benefits of Assignment and Transmission of Trademark

Expansion of business

By assignment and transmission of the trademark from the owner to the assignee, the owner
expands his business by using the same trademark in more than one place simultaneously. By giving
the partial authority of the owner also has the power to give a trademark assignment to more than
one person.

Benefits of the already established brand

Assignment and transmission of trademark help the assignee to use the already established
trademark in the market to create their base. It also helps the assignee to save money and resources
by not spending on marketing to create a brand.

Legal Proof

Assignment and Transmission of trademark also act as a legal proof in case disputes of any kind arise
regarding the usage of Trademark because all the legal rights and liabilities were already mentioned
in a form of a legal deed.

Monetary benefits

By Assignment and Transmission of Trademark, the owner of the trademark enjoys monetary
benefits received by assignment and Transmission along with the increase in the value of the brand
by operating with the same Trademark in more than one place.

Cases

Structural waterproofing and ORS v. Amit Gupta ORS [93 (2001) DLT 496]

It is stated that when disputes arise between parties for assignment and transmission of Trademark
then the registrar can refuse to register the assignment and transmission until and unless the
decision is taken by the competent court. In this case, the plaintiff claimed the ownership of the
trademark only based on Memorandum of understanding created between them. The court in this
case declined his request for an injunction on the defendant. It is also stated in the decision that the
trademark cannot be claimed unsuitable merely because there is a change in the name of the
registered proprietor.

Cinni foundation v. Raj Kumar Shah and sons[ 2009(41)PTC320(Del)]

It was found that the trademark CINNI was used by the owner. The deed of assignment has been
created and duly signed between the parties and after a certain time, it is found that the trademark
is not a registered trademark and so the defendant tries to claim the trademark in which court
decided that according to the law, assignee acquire no title without registration of the assignment
deed.

Conclusion

Assignment and Transmission of a Trademarks create ample opportunity for the owner as well as for
assignee. It helps the new brand to get developed because of its usage from more than one place
simultaneously. Developed brands used it as a tool to generate more revenue and business for
themselves.

Question:5 Infringement of trade mark and remedies.

Answer: introduction is same in all questions.
What is a Trademark?

A trademark is usually a unique symbol, which is used by any person or firm or organization, or any
other legal entity to identify the source of their goods or services towards consumers and to
distinguish their goods or services from other entities. A designated with the trademark of R symbol
(®) is designated when a product is registered.

What is Trademark Infringement?

According to Section 29 of the Trade Marks Act 1999, it states the infringement of a trademark.
Basically, when the exclusive rights of the possessor of the registered Trademark are infringed, it is
alleged to be an infringement of the Trademark. The registration of a trademark gives exclusive
rights to the brand name to the applicant.

The trademark registration certificate gives exclusive rights to the owner to use the brand name for
their business activity which falls under the class in which it’s registered. If a third party makes use of
the brand name in course of trade without taking permission of the possessor, it is an infringement
of the right of the owner and is termed as the infringement of Trademark.

The trademark infringement includes using closely or misleadingly identical brand names or logos for
related products and services; and using a mark that makes a false impression or confusion with the
registered trademark.

Indian Trademark Law on Infringement:

The lawful protection of a trademark is directed by the Controller General of Patents, Designs and
Trade Marks, a government agency that reports to the Department of Industrial Policy and
Promotion (DIPP), under the Ministry of Commerce and Industry.

What are the Remedies for Trademark Infringement?

The possessor of the Registered Trademark could start legal proceedings against the violator who
had infringed the registered trademark by stating the unfair business actions.

In India, Section 29 and Section 30 of the Trade Marks Act, 1999 states the remedies for
infringement of trademarks.

There are two categories of remedies that are available to the possessor of the trademark against
the unauthorized usage of its restriction by the third party. The Trade Marks Act 1999 shields the
trademark with civil and criminal remedies. Civil proceedings could be started by the owner of the
trademark before the District Court in whose jurisdiction the owner exists.

Remedies

Remedies act as a measure for infringement of both the registered as well as unregistered
trademarks. In the former case, it acts as an action to initiate the proceedings of infringement in a
court of law while in the latter case, it helps in passing off the infringement to the hands of common
law. In India, it is Section 29 and Section 30 of the Trade Marks Act, 1999 which lays down remedies
for infringement of trademarks. The remedies discussed below are the ones which are adopted
according to the facts and circumstances of the case in hand.

Civil remedies

The Trade Marks Act, 1999 lays down certain civil remedies to be given to the ones whose trademark
has been infringed. They are:

Injunction or authoritative direction by the court of law is a common civil remedy that can be
provided with. The two kinds of injunction that can be granted are perpetual and temporary
injunction. Perpetual injunction is granted depending on the suit concerned and when the same is
supposed to be decreed and therefore is of permanent nature. In the case of a temporary injunction,
a specified time frame comes into the consideration which in this case will be till the court passes its
final orders regarding the matter. The same can be asked for under Order 39 Rule 1 and 2 of the
Code of Civil Procedure. This rather nullifies the purpose of filing the suit and thus allows the
defendant to continue usage of the mark similar as that of the plaintiff.

Damages can be claimed by the aggrieved party on grounds that the exclusive right of using the
trademark he owns has been ceased and this subsequently has led to him or his enterprise suffering
losses.

A civil remedy that is often claimed is handling of the profit accounts along with a command for
delivery or removal of the products that have been infringed.

Section 135 of the Trade Marks Act, 1999 provides statutory identification towards the Anton Piller
Order which in turn prevents the defendant from taking off assets from the court’s jurisdiction. The
concerned court often appoints a local commissioner in order to seal the goods or materials that are
infringing in nature as an execution of a civil remedy. So in case of civil remedy, the court either
provides for the grounding of the defendant’s goods or services that is responsible for causing
confusion in the minds of the consumers or makes him pay the damages caused to the plaintiff. At
times when civil remedies do not succeed in fulfilling the loss of the plaintiff, the court resorts to civil
remedies.

Criminal remedies

If we take a look at the Trade Marks Act,1999, it can be viewed that there are several provisions that
can be counted as a criminal remedy for the infringement of trademark. The following are laid down
below:

Sections 103 of the Act lays down criminal remedy for the contravention of the trademark of any
individual or entity which lays down a period of six months of imprisonment which can be extended
till a time frame of three years for infringing trademark rights.

Section 104 of the Act talks about penalties that need to be provided as a sanction against an
infringement. The section mentions a fine of fifty thousand rupees which can be increased till an
extent of two lakhs in case someone is found to transgress the trademark rights.

An inflating version of punishment is laid down under Section 105 of the same Act.

A seizure of powers of the person liable for infringing can be carried out as a criminal remedy for an
efficient adaptation to the above provisions. This procedure carried out by police is subjected to
reasonable grounds of proving the infringement only.

Administrative Remedies

It has always been observed that criminal remedies are much more relevant compared to that of
civil remedies.Along with civil and criminal remedies, administrative remedies are also available as a
remedy for the infringement of the trademark. The remedies which are available under the palate of
administration are provided below:

By opposing a mark that is similar to the original mark, which can be carried out under Sections 9(1)
or 11 of the Trade Marks Act, 1999. If such a situation arises, interrogations are carried out by the
examiner upon the trademark registration. A trademark opposition is always filed by a third party,
thereby opposing the existing trademark in the trademark journal after the completion of its
registration procedure.

2) Another way of carrying out administrative remedy is by correcting the trademark which is
already registered. This in a way eliminates confusion of trademarks.
3) As the remedy is administrative in nature, it is carried out by keeping a check in the trade activity
of the goods that bear an infringed trademark. Thus, import as well as export of goods that are
labelled with a trademark that is fraudulent by nature is restricted in order to avoid hesitation. These
three ways of carrying out administrative remedy is often useful in preventing trademark
infringement.

Landmark Judgment

There have been several judgements passed by the courts that stand responsible for changing the
destiny of remedies available for trademark infringement and clearly laying down the intention
behind the judgements delivered by the court. One of such cases are DM entertainment v Baby Gift
House and ors. In this case, a question arose relating to publicity rights and character retailing. The
plaintiff, a popular singer Daler Mehndi who owned a company with the same name possessing all
associated rights, alleged that the defendant by creating miniature toys of the public figure was
carrying out an unapproved activity and was in turn encouraging a detrimental effect on the
reputation of the company and the singer. As there exists no provision specifying description of
passing off, the court relying on precedents declared a compensatory sum of Rs. 1 Lakh to the
plaintiff by the defendant.

Further in the famous case of The Coca-Cola Company Vs. Bisleri International Pvt. Ltd, the Delhi
High Court was firm with the fact that if there exists any amount of infringement, then the court’s
jurisdiction is likely to be present in order to entertain the concerned suit. With the confusion of a
brand-name MAAZA being passed off from the plaintiffs’ company to that of the defendant’s,
brought in the solution to the case. The defendant used the trademark both in domestic as well as
foreign countries. Further, it was the plaintiff who filed a permanent injunction, thereby claiming
losses suffered by the company. The court inferred that the defendant is liable for infringement due
to usage of trademark beyond the permissible extent and as a result it issued an interim injunction
against the defendant.

Delhi High Court in another famous case called Makemytrip (India) Private Limited v. Orbit Corporate
Leisure Travels, declared a judgment based on the law of acquiescence, thereby not restraining the
defendant to carry on with its trademark. The facts of the case goes as the plaintiff company filed a
suit claiming that the defendant cannot carry on using a mark named GETMYTRIP, for the plaintiff
claimed that the mark was deceptively similar to theirs. But knowing the same, the plaintiff carried
on their activity till one fine day they filed the suit. On this ground the court quashed the suit
thereby allowing the defendant to carry on. This case was indeed remarkable for it made it clear that
awareness and knowledge is important before proceeding with a suit. Hence, ignorance is not
welcoming when it comes to infringement of trademarks.

Conclusion

In India, there is a growing need for registration of trademarks day by day, clearly indicating the
awareness developing among people to safeguard their own products. Trademark infringement is a
common sight nowadays. Although there exists several remedies to cope up with the same, not
many are implemented the way they should be. Loopholes in every procedure being carried out to
eliminate infringement ultimately hinders the law in hand. Violation of any kind of trademark leads
to a negative impact on the individual or the entity thereby reducing the brand value. Along with
direct infringement, there arises indirect infringement as well. Although there are no provisions
related to indirect infringement, liabilities exist abiding by the principle of universal law. Hence, what
is required is a little bit of awareness among individuals in order to avoid facing any kind of
infringement on their own product and overcome the same swiftly with legal help and guidance.

UNIT-III
COPYRIGHT LAW
Question:1 object and purpose of copyright law.
Answer: Introduction
The Copyright Act, 1957, governs the law pertaining to copyright in India. The major goals
of this copyright law are twofold: first, to guarantee authors, musicians, painters, designers,
and other creative individuals the right to their creative interpretation; and second, to enable
others to openly develop upon the concepts and knowledge made available by a work. India’s
history with copyright laws dates back to the British Empire’s colonial rule. A law called the
Indian Copyright Act, 1957, was passed; it went into effect in January 1958 and has since
undergone five revisions, in 1983, 1984, 1992, 1994, and 1999. The Copyright Act of 1957
was India’s first copyright law following independence, and six amendments have been made
since then. The Copyright (Amendment) Act 2012, which was passed in 2012, was the most
recent amendment. The concept of copyright in India is governed by the Indian Copyright
Act, 1957, as modified from time to time, and the Indian Copyright Rules, 1958 (Rules).
Copyright law as its name suggests is the simple law that suggests if you create something
you own it and only you get to decide what happens next with it. The objective of this
copyright law is mainly twofold: first to assure authors, composers, artists, designers and
other creative people, who risk their capital in putting their works before the public, the right
of their original expression, and second to encourage others to build freely upon the ideas and
information conveyed by a work.
What is copyright
Copyright is a type of intellectual property right. Authors who have original works such as
works of literature (including computer programs, tables, collections, computer datasets,
expressed in words, codes, schemes, or in any other context, along with a device readable
medium), dramatic, musical, and artistic works, cinematographic films, and audio recordings
are all awarded copyright safeguards under Indian law. Instead of protecting the ideas
themselves, Copyright Law safeguards manifestations of ideas. Literary works, theatrical
works, musical works, creative works, cinematographic films, and sound recordings all have
copyright protection under Section 13 of the Copyright Act of 1957. For instance, the Act
protects literary works such as books and computer programs.
The term “copyright” refers to a collection of exclusive rights that Section 14 of the Act
grants to the owner of the copyright. Only the copyright owner or another person who has
permission to do so from the copyright owner may exercise these rights. These rights include
the ability to adapt, reproduce, publish, translate, and communicate with the public, among
other things. Copyright registration just establishes an entry for the work in the Copyright
Register kept by the Registrar of Copyrights and does not grant any rights.
Historical development in India
In India, the earliest law of copyright was enacted by the British during the realm of East
India Company that is the Indian Copyright Act, 1847 which was passed for the enforcement
of rules of English copyright in India. After it, by Copyright Act 1911, this law was repealed,
replaced and applied to all British colonies including India. Further, it was again modified in
1914 by the Indian Copyright Act, 1914, which remained applicable in India until replaced by
the Copyright Act, 1957 by the parliament of sovereign India.
Objectives of copyright law
Copyright is primarily intended to advance science and useful art and to compensate authors
for their labour. In order to do this, copyright guarantees authors the right to their creative
expression while allowing others to openly expand upon the concepts and knowledge
presented in a work. The primary goals of copyright law are twofold. First and foremost,
copyright laws were created by nations to guarantee the original expression of writers,
songwriters, designers, artists, and other creatives, as well as film and sound recording
producers, who risked their money to present their works to the public.
Second, a work’s knowledge and suggestions can be freely expanded upon by others, thanks
to copyright legislation. Additionally, it permits some unrestricted uses of copyrighted
content. The Copyright Act of 1957 outlines the range of these permissible uses. To establish
harmony between the rights of the copyright owner and the welfare of people to the greatest
possible degree in the interest of society, measures relating to free use are included in the Act.
The Madras High Court held that “copyright law is to preserve the fruits of a man’s effort,
labour, talent, or test from annexation by other persons” in Sulamangalam R. Jayalakshmi v.
Meta Musicals, Chennai (2000).
Nature of copyright
In nature, copyright is an incorporeal property. The premise that the legitimate owner
developed or created the work justifies the property in it. The property owner has two options
for disposing of his property: outright sale (assignment of his rights) or licensing. Copyright
is also a collection of exclusive rights. A negative right is one that allows the owner to stop
someone from copying his creation or carrying out any other actions that, under Copyright
Law, are only permitted to be carried out by him. The exclusive rights to works protected by
copyright have a term limit. In contrast to physical property, which endures for the lifetime of
the thing on which it is bestowed, copyright only exists for a finite amount of time. After this
time period has passed, the work enters the ‘public domain’. In other words, it becomes
public property and is available for use without restriction by everyone. Therefore, the public
interest is served by exclusive rights to copyrighted works for a short time.
Salient features of the Copyright Act, 1957
The salient features of the Copyright Act, 1957 are herein mentioned below:

Scope of rights conferred to the author

Literary works, musical works, theatrical works, creative works, sound recordings, and
cinematographic films are all protected by copyright under Section 13 of the Copyright Act
of 1957. Literary works, for instance, books, manuscripts, poetry, and theses are safeguarded
by the Act. Original literary, dramatic, musical, and artistic works as well as cinematographic
and sound recordings are shielded from illegal access under the Copyright Act of 1957. In
contrast to patents, copyright safeguards expressions rather than ideas.
Provisions to assert the ownership
The original owner of the copyright is the creator of the work itself, as stated in Section 17 of
the Copyrights Act of 1957. The one exception to this rule is when an employee creates work
while performing duties as part of their employment, in which case the employer assumes
ownership of the copyright.
Civil and criminal remedies
Section 55 of the Copyright Act of 1957 addresses civil remedies for copyright infringement.
These civil remedies encompass restitution, injunctions, account interpretation, deletion and
surrender of copies made infringing, as well as conversion damages. Section 63 of the
Copyright Act of 1957 specifies criminal penalties for copyright infringement. These criminal
penalties can take the form of jail time, fines, searches, the seizure of contraband, etc. The
maximum sentence for imprisonment is 3 years, but it cannot be less than 6, and the
maximum fine is between 50,000 and 2,00,000 rupees.
Establishment of copyright boards and offices
The Copyright Act of 1957 also makes provisions for the establishment of a copyright board
to assist in resolving copyright-related issues and a copyright office, which comes under the
jurisdiction of the Registrar of the Copyright, for the registration of books and other “works”
of art. The establishment of an office to be known as the Copyright Office for Act purposes is
provided for under Section 9 of the Copyright Act, 1957. The Copyright Board was
established under Section 11 of the Copyright Act of 1957.

Important sections of the Copyright Act, 1957

The following are the important sections of the Copyright Act of 1957:
Section 2 deals with various definitions of the work which can be covered under the
definition of copyright. For example, Section 2(o) deals with literary works, Section 2(h)
includes all dramatic works under the definition of copyright protection, and Section (p) deals
with musical and graphical works.
Section 13 of the Copyright Act, 1957, is the most requisite Section as it deals with the
subject matter of copyright protection. According to Section 13(1), all of India is under the
purview of the Copyright, and the following classifications of works are protected by the
Copyright:
Original artistic, musical, dramatic, and literary works
Sound recording
Cinematograph films
The published and unpublished works of architecture are discussed in Section 13(2). If the
work is published, it must be published in India. If the work is published outside of India, the
author must be an Indian citizen at the time of publication or at the time of his death. Except
for works of architecture, the authors of unpublished works must be Indian citizens or have a
place of residence in India. When it comes to architectural works, only the work itself must
be from India and not the architect, because architectural works can also be done in written
form. The copyright in an architectural work shall only apply to the creative character and
design and shall not include the construction process or processes.
A few rights are protected under copyright legislation. These three types of rights are
common or economic, moral, and neighbouring. According to Section 14, moral rights are
granted under Section 57, economic rights are granted under Section 14 and neighbouring
rights are granted under Sections 37A and 378.
Fee application for copyright registration in India
Based on the kind of work covered by copyright legislation, creators interested in registering
for copyright registration must pay a specified fee. See what these costs are for the different
kinds of projects below.
Copyright protection for
Fee charged by the copyright office
Artistic, musical, drama and literary works
Rs. 500 per work
Artistic and literary works used for goods
Rs. 2000 per work
Sound recording
Rs. 2000 per work
Cinematograph films
Rs. 5000 per work
Subject matter of copyright
All subject matters protected by copyright are called ‘works’. Thus according to Section 13
of The Copyright Act 1957, it may be subjected for the following works:
Original Literary Work,
Original Dramatic work,
Original Musical work,
Original Artistic Work,
Cinematography films, and
Sound recordings.
Original Literary Work
It is the product of the human mind which may consist of a series of verbal or numerical
statements, not necessarily possessing aesthetic merit, capable of being expressed in writing,
and which has been arrived at by the exercise of substantial independent skill, creative labor,
or judgment. The Copyright Act, 1957 provides an inclusive definition of literary work,
according to which the literary work includes computer programming, tablets, and
compilations including computer databases.
Original Dramatic Work
According to the Copyright Act,1957, the dramatic work includes any piece for recitation,
choreographic work or entertainment in dumb shows, the scenic arrangement or acting form
which is fixed in writing or otherwise but does not include a cinematographic film. Since the
definition is an inclusive one, the other things fall within the general meaning of dramatic
work, and may also be covered by the definition.
Original Musical Work
According to the Copyright Act, 1957, musical work means any work consisting of music
and includes any graphical notion of such work, but does not include any words or any action
intended to be sung, spoken or performed with the music. In order to qualify for copyright
protection, a musical work must be original.
Original Artistic Work
According to the Copyright Act, 1957, artistic work includes any painting, sculpture,
drawing, or engraving photograph of any work possessing artistic qualities. However, it also
includes the architecture and artistic craftsmanship of such works.
Cinematographic Films
According to the Copyright Act,1957 cinematographic films includes any work of visual
recording and a sound recording accompanying such visual recording and the expression
cinematograph shall be construed as including any work produced by any process analogous
to cinematographic including video films.
Sound Recording
According to The Copyright Act, 1957, sound recording suggests a recording of sounds from
which that sound may be produced regardless of the medium on which such recording is
made or the method by which the sounds are produced.
Clause (a) of this Section 13 provides the definition of original work whereas clauses (b) and
(c) protect by-product works. This Section stipulates that copyright is subject to the
provisions of the aforesaid Section and therefore the different provisions of the Act don’t
exist de-hora and outside the ambit of the Act, it’s a right created under the statute and no
right outside the aforesaid Act is claimed.
Rights of the copyright holder
In the Copyright Act, 1957, the owner possesses the negative rights which are to prevent
others from using his works in certain ways and to claim compensation for the usurpation of
that right. In this Act, there are two types of rights given to the owner:
Economical rights;
Moral rights.
Economic rights
This right is also known as the Exclusive Rights of the copyright holder provided under
Section 14. In this Act different types of work come with different types of rights. Such as:
In the case of original literary, musical, and dramatic work:
Right to reproduce;
Right to issue copies;
Right to perform at public;
Right to make cinematography and sound recording;
Right to make any translation;
Right to adaptation; and
Right to do any other activities related to the translation or adaptation.
In the case, of computer program work:
Right to do any act aforesaid mentioned; and
Right to sell, rent, offer for sale of the copyrighted work.
In the case of artistic work:
Right to reproduce;
Right to communicate;
Right to issue copies;
Right to make any cinematography and sound recording;
Right to make an adaptation; and
Right to do any other activities related to the translation or adaptation.
In case of a cinematograph film work:
Right to sell, rent, offer for sale of the copyrighted work; and
Right to communicate.
In the case of a sound recording work:
Right to communicate;
Right to issue copies; and
Right to sell, rent, offer for sale of the copyrighted work.
Moral rights
In addition to the protection of economic rights, the Copyright Act, 1957 conjointly protects
ethical rights, that is due to the actual fact that a literary or inventive work reflects the
temperament of the creator, just as much as the economic rights reflect the author’s need to
keep the body and the soul of his work out from commercial exploitation and infringement.
These rights are supported by Article 6 of the Berne Convention of 1886, formally referred to
as a world convention for the protection of literary and inventive works, whose core
provision relies on the principle of national treatment, i.e. treats the opposite good as one’s
own.
Section 57 of The Copyright Act,1957 recognize two types of moral rights which are:
Right to paternity– which incorporates the right to assert the authorship of the work, and the
right to forestall others from claiming authorship of his work; and
Right to integrity- which incorporates right to restrain, or claim of damages in respect of
any distortion, modification, mutilation, or any other act relates to the said work if such
distortion, multiplication or alternative act would be prejudiced to claimant honor or name.
Authorship and Ownership in copyright
Section 17 of this Act recognizes the author as the first owner, which states that subject to the
provision of this Act, the author of a work shall be the first owner of the copyright therein:
In the case of literary or dramatic composition, the author,
In the case of musical work, the musician,
In the case of creative work apart from photography, the artist,
In the case of photographic work, the artist,
In the case of cinematographic or recording work, the producer,
In case of any work generated by any computer virus, the one who created.
However, this provision provided to bound exception:
n case of creation is made by the author underemployment of the proprietor of any
newspaper, magazine or any periodic, the said proprietor,
In the case where a photograph is taken, painting or portrait is drawn, cinematograph is made
for the valuable consideration of any person, such person,
In case of a work done in the course of the author’s employment under the contract of
service, such employer,
In case of address or speech delivered on behalf of another person in public, such person,
In the case of government works, the government,
In the case of work done under direction and control of public undertaking such public
undertaking, and
In the case of work done in which provision of Section 41 apply, concerned international
organizations.
Assignment of copyright
The owner of the copyright can generate wealth not only by exploiting it but also by sharing
it with others for mutual benefit. This can be done by the way of assignment and licensing of
copyright.
Only the owner of the copyright has the right to assign his existing or future copyrighted
work either wholly or partly and as a result of such assignment the assignee becomes entitled
to all the rights related to copyright to the assigned work, and he shall be treated as the owner
of the copyright in respect of those rights.
Mode of the assignment agreement
As per Section 19, these conditions are necessary for a valid assignment:
It should be in writing and signed;
It should specify the kinds of rights assigned and the duration or territorial extent; and
It should specify the amount of royalty payable if required in any case.
It is also provided that, if the period is not mentioned in the agreement it will be considered
as five years and if the territorial extent is not stipulated in the agreement, it will be
considered as applicable to the whole of India.
Disputes related to the assignment of copyright
According to the Copyright Act, 1957, the appellant board where the receipt of the complaint
by the assignor and after holding necessary inquiry finds that the assignee has failed to make
the exercise of the rights assigned to him, and such failure is attributed to any act or omission
of the assignor, may by suitable order, revoke such assignment. However, if the dispute arises
with respect to the assignment of any copyright then that appellate board may also order the
recovery of any royalty payable.
Operation of law in assignment
According to The Copyright Act, 1957, where under a bequest a person is entitled to the
manuscript of any literary, dramatic or any other kind of work and such work has not been
published before the death of the testator, unless the contrary is proved such person shall be
treated as the owner for such work.
Infringement and remedies
Where a person intentionally or unintentionally infringes the rights of the copyright holder,
the holder may be subject to the following remedies available under this Act.
Civil remedies
These remedies are given under Section 55 of the Copyright Act,1957 which are:
Interlocutory injunction
This is the most important remedy against copyright infringement, it means a judicial process
by which one who is threatening to invade or has invaded the legal or equitable rights of
another is restrained from commencing or continuing such act, or is commanded to restore
matters to the position in which they stood previous to the relation. Thus for granting the
interlocutory injunction, the following three factors are considered as necessary:
Prima facie case, is an assumption of the court that the plaintiff can succeed in the case and
become eligible for relief.
Balance of convenience, in it the court will determine which parties suffer the greater harm,
this determination can vary with the facts of each case.
Irreparable injury, it is difficult to decide and determine on a case-by-case basis. Some
examples of it include- loss of goodwill or irrevocable damages to reputation, and loss of
market share.
Mareva injunction
This is a particular form of the interlocutory injunction which restrains the defendant from
disposing of assets that may be required to satisfy the plaintiff’s claim or for removing them
from the jurisdiction of the Court.
Anton Piller order
This order is passed to take into possession the infringed documents, copies and other
relevant material of the defendant, by the solicitor of the plaintiff. This order is named after
the famous case of Anton Piller KG v/s Manufacturing Process Ltd, 1976. In this case, the
plaintiff Antone Piller, the German manufacturer is successful in passing ex-parte awards of
restraining the use of his copyrighted products against the defendant.
John Deo’s order
In this order, the Court has the power to injunct rather than those impeded in the suit, who
may be found violating the rights in the field of copyright. Thus this order is issued against
the unknown person, who has allegedly committed some wrong, but whose identities cannot
entertain the plaintiff.
Pecuniary remedies
There are three types of pecuniary remedies provided:
An account of profit, lets the owner seek the sum of money made, equal to the profit made
through unlawful conduct.
Compensatory damages, which let the copyright owner seek the damages he suffered.
Conversational damages are assessed to the value of the article.
Criminal remedies
Section 63 of the Copyright Act provides for criminal remedies if there is any copyright
infringement. According to Section 63 of the Act, anyone found guilty of willfully violating
or aiding in the violation of a work’s copyright will be sentenced to at least six months in
prison and a fine of at least 50,000 rupees. A person who is found guilty under Section 63A a
second time faces an additional sentence of imprisonment for a term not less than one year
and a fine that cannot be less than one lakh rupees due to the widespread copyright
infringement. According to Section 63B, a person who intentionally uses an illegal copy of
computer software on a computer faces a minimum seven-day sentence in jail and a fine of at
least 50,000 rupees.
For infringement of copyright, the criminal remedies provided under Section 63:
Imprisonment, not less than 6 months which may extend up to 3 years;
Fine may not be less than 50,000 which may extend up to 2,00,000;
Search and seizure of copyrighted goods; and
Delivery of copyrighted goods to the copyrighted owner.
In the case of repeat offenders, minimum punishment terms of 1 year and fine of 1 lakh
however, the highest punishment will be the same as the first time offender.
Exceptions
This act shall not constitute copyright infringement in cases of:
Fair Dealing
Fair dealing is the statutory limitation on the exclusive right of the copyright owner which
permits reproduction or use of copyrighted work in a manner that otherwise would have
constituted infringement. This law is given under Section 52 of the Copyright Act,1957
according to which the free uses can be made for any work except computer program for the
purposes:

For private and personal use including research,

For criticism and review,
For reporting of current events or issues including lectures in public,
For broadcasting in cinematographic films or by posting photographs,
For reproduction and reporting of any judicial proceeding,
For reproduction, or publication of any kind of work prepared by the secretariat of a
legislature,
For reproduction of any kind of work in a certified copy made or supplied accordance with
any law,
For reading and recitation of any literary or dramatic work in the public domain,
For publication of any non-copyright matter bonafide intended for the use of educational
institutes, and
For recording any sound by the owner of the right in the work.
Landmark case laws
R.G. Anand v. M/S. Delux Films and Others (1978)
Facts
The respondent is a film production firm, while the appellant is a playwright and an architect
by profession. In the year 1953, the appellant wrote a play titled “Hum Hindustani,” which
was performed in New Delhi the following year, in the year 1954. The play was so popular
that it was presented again in Calcutta in the years 1954, 1955, and 1956. Due to the play’s
popularity, the appellant sought to have it made into a movie. The appellant’s purpose was
made known to the respondent, and the two met in New Delhi to talk about the possibility of
hearing it. The respondent was given a detailed explanation of the entire play by the
appellant, but no promise to film it was made by the respondent. In 1956, the respondent
produced a film titled “New Delhi,” which was thereafter released. After watching the film,
the appellant claimed that the respondents had plagiarised his play and used it as the basis for
a movie without his consent. The appellant then presented a case to the Delhi District Judge.
The appellants argued in court that the play and movie share striking parallels and are both
founded on the same concept, namely “Provincialism.” The District Judge, however,
disagreed with the appellant’s assertion following the arguments.
Issues
Whether the plaintiff’s copyright in the play “Hum Hindustani” was violated by the
defendants’ distribution, production, and screening of the movie “New Delhi”?
Judgment
The Court’s judgment was given by Justice Fazal Ali. The Court determined that even if both
the play and the movie may have been inspired by the concept of “Provincialism,” they are
very different from one another. The movie also depicts other aspects of “Provincialism,”
such as “Provincialism” in the leasing of outhouses, which are not depicted in the play when
it comes to marriage. The play doesn’t illustrate the evils of dowry, but the movie does.
Because the concept in both the play and the movie is identical, the court struck down the
appellants’ claim because it is well-established law that a concept cannot be protected by
copyright. The Court cited N.T. Raghunathan and Anr. v. All India Reporter Ltd., Bombay
(1957), and held that there may be some similarities. According to the Court, a regular person
would not consider the play and the movie to be a duplicate of the play if they were to view
both. The claim made by the appellants that their copyright has been violated cannot stand
due to the significant disparities between the play and the movie. The Delhi High Court’s
decision has been maintained court. As a result, the Court ruled in favour of the respondents
on both matters, and thus there was no violation.
Super Cassettes Industries Ltd. v. Music Broadcast Pvt. Ltd. (2012)
Facts
The case between Music Broadcast Pvt. Ltd. (MBPL) and Super Cassette Industries Limited
(SCIL) over the determination of a licence agreement’s royalty rate gave rise to the interim
orders made by the Copyright Board, which are the subject of this appeal. In accordance with
the Memorandum of Understanding (MoU) between the two parties, if the parties are
involved in lawsuits and a court or arbitration board, whether in an interim or final order,
specifies a rate that is distinct from what the parties have agreed upon, MBPL shall make
payments to SCIL at the altered rate so specified by the court or arbitration board, with
immediate effect so specified in such an order. The appellant had sought the Copyright Board
in 2001 to seek redress against the respondent’s inflated royalty fee claim. The Board had
granted an obligatory licence in favour of the appellant for 661/- per needle hour based on the
initial evidence, the balance of convenience, and irreparable damage. The respondent argues
that, in accordance with Section 31 of the Copyright Act of 1957, the Copyright Board lacks
the express authority to issue such interim decisions and asks for the orders granted by the
Copyright Board to be revoked.
Issue
Whether the Copyright Board has the authority to issue temporary orders and determine the
royalties for a temporary order in proceedings under Section 31 of the Copyright Act, 1957?
Judgment
The Copyright Board was ordered for the purpose of setting an interim fee, and this Court
stated that the Board had the authority to rule on both the interim and final terms of a
compulsory licence. Considering the subject matter of the Special Leave Petitions, the Court
declined to issue an interim stay of the Copyright Board’s order.
Tips Industries Ltd. v. Wynk Ltd. and Anr. (2019)
Facts
The Indian music label Tips Industries Ltd. (Plaintiff) has the copyright to a sizable music
archive, and in 2016 it allowed Wynk Music Ltd. (Defendant) permission to access this
archive. Both parties attempted to renegotiate the licensing terms at the licence’s expiration
but were unsuccessful, thus Wynk sought protection under Section 31D of the Copyright Act.
Tips contested Wynk’s use of Section 31D and filed a lawsuit against Wynk under Section
14(1)(e) for violating their exclusive sound recording rights.
Issue
Whether the Copyright Act has a legislative licensing scheme for streaming platforms?
Judgment
The Bombay High Court reached a decision after hearing the arguments from both parties
and concluded that Wynk had engaged in direct violation on two counts: firstly, by making
the copyrighted work available under Section 14(1)(e)(ii), which allowed users to download
and subscribe to the plaintiff’s work offline; and secondly, by making the plaintiff’s works
available to users via their streaming platform. The decision was made in the plaintiff’s
direction, and the Court determined that the plaintiff was eligible for an interim injunction
since they had presented a strong case and would incur severe financial damage.
Sanjeev Pillai v. Vennu Kunnapalli (2019)
Facts
The appellant, director, and screenwriter Sajeev Pillai, asserted to have done a background
study on the great festival of Mamankam and written a script for a film based on the same
epic. He signed a Memorandum of Understanding with the Kunnapalli-related Kavya Film
Company after meeting Venu Kunnapalli. Initially designated as the director, Sajeev’s
position was later removed and filled by someone else. After that, the movie’s filming was
finished, according to Sajeev, who claimed that his script had been altered, mutilated, and
otherwise changed. In light of this, Sajeev filed a lawsuit and requested a number of reliefs. A
request for an interim injunction was also made to prevent the respondents from publishing,
releasing, disseminating, and exploiting the movie and from releasing pre-release advertising
without adequately crediting Pillai as the author in accordance with film industry norms.
Issue
Whether Section 57(1) of the Copyright Act grant the creator of a work particular rights to
assert authorship of that work even after the assignment of that work?
Judgment
In reaching its decision, the Court stated that Section 57(1) grants the author the right to
enjoin third parties, and its second sub-section grants the author the right to sue those third
parties for damages if their actions result in deformations, destruction, or other alteration of
his work or in any other action related thereto that would be detrimental to his dignity or
reputation. This gave the appellant an unmatched edge in the situation and ensured that his
assignment of the work would preserve his legal claim to authorship.
Lacunae in the Copyright Act
The development of copyright law has a lengthy and complicated history. It has been in the
evolving phase for centuries. This is a result of how quickly technology is evolving. The old
law is becoming obsolete when new methods are discovered, especially when it comes to
non-literal works. Because copyright infringement is so subjective in nature, it is frequently
exceedingly challenging to come to a verdict on cases involving it. Thus, in order to reduce
this subjectivity and effectively address this issue, we need new regulations that are
specifically related to copyright.
Conclusion
The copyright law is considered as an essential law of protection for a country because it
enriches its national cultural heritage of it. However, higher the level of protection given to
literary, dramatic, musical or artistic work in any country, automatically higher is the number
of intelligent creation, i.e. higher its renown. Thus, in the final analysis, we can say for
economic, cultural and social development, it is the basic perquisites.

Question: 2 term of copyright.

Answer:
Intellectual Property Rights or IPR are the legal rights to protect the creative, artistic or
inventive works of the individual(s). One of such right is Copyright. Generally, a
copyrighted work is identified with a symbol, that is, ©. Copyright is a right given by the
law to creators of literary, dramatic, musical and artistic works and producers of
cinematograph films and sound recordings. In fact, it is a bundle of rights including, inter
alia, the rights of reproduction, communication to the public, adaptation, and translation
of the work. There could be slight variations in the composition of the rights depending
on the work.1
Copyright ensures certain minimum safeguards of the rights of authors over their
creations, thereby protecting and rewarding creativity. Creativity being the keystone of
progress, no civilized society can afford to ignore the basic requirement of encouraging
the same. Economic and social development of a society is dependent on creativity. The
protection provided by copyright to the efforts of writers, artists, designers, dramatists,
musicians, architects and producers of sound recordings, cinematograph films and
computer software, creates an atmosphere conducive to creativity, which induces them
to create more and motivates others to create.1
The Copyright Act, 1957 and the Copyright Rules, 2003 governs the subject of copyright
in India. The scope of the Act limits to original literary, dramatic, musical and artistic
works and cinematograph films and sound recordings from unauthorized uses. Unlike
patents, copyright protects only the expressions and not the ideas. There is no copyright
protection for ideas, procedures, methods of operation or mathematical concepts as
such.
Copyright protection is a natural right in India. There is as such no mandatory
requirement2 for registration of work to avail the protection under the act. Rather it is an
automatic right, which emerges as and when infringement takes place. Therefore, it is a
sui generis right.  Also, in the majority of the countries, and according to the Berne
Convention, copyright protection is obtained automatically without the need for
registration or other formalities. Most countries nonetheless have a system in place to
allow for the voluntary registration of work.
There are various limitations attached to avail the protection under the Copyright Act,
1957. These limitations may be broadly classified into three, that is, limited duration of
copyright permitted uses and non-voluntary licences (statutory licence). The duration or
term of copyright has been dealt with below.

Table of Contents

Term of CopyrightX

Term of Copyright for Posthumous PublicationsX

Term of Copyright for Anonymous PublicationX

Term of Copyright for PhotographsX

Term of Copyright for Cinematograph FilmsX

Term of Copyright for Sound RecordingsX

Term of Copyright of government worksX

Term of Copyright where a public undertaking is the first ownerX

Term of Copyright of work of an international organisationX

ConclusionX

EndnotesX
Tanvi SapraX

Term of Copyright
Copyright is protected for a limited time. Economic rights have a time limit, which can
vary according to national law. In those countries which are members of the Berne
Convention, the time limit should be equal to or longer than fifty years after the creator’s
death. Longer periods of protection may, however, be provided at the national level. 3 For
example, in Europe and the United States, the term of protection is life plus seventy
years.
Under the Indian Copyright Act, 1957, Chapter V enumerates the term of copyright
protection. Section 22 of the Act states the term of copyright in published literary,
dramatic, musical and artistic works shall subsist, published within the lifetime of the
author, until sixty years from the beginning of the calendar year following the year in
which the author dies. In this section, the reference to the author shall, in the case of a
work of joint authorship, be construed as a reference to the author who dies last. 4 This
term has been increased from fifty years to sixty years by the Amendment of 1992.
However, in cases where the work falls under the category of a cinematograph film,
sound recording, photograph, posthumous publications5, anonymous organisations, the
sixty years period is counted from the date of publication.

Term of Copyright for Posthumous

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

Term of Copyright for Anonymous Publication

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

Term of Copyright for Photographs

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

Term of Copyright for Cinematograph Films

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

Term of Copyright for Sound Recordings

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

Term of Copyright of government works

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

Term of Copyright where a public undertaking

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

Term of Copyright of work of an international

organisation
In the case of a work of an international organisation to which the provisions of section
41 apply, copyright subsists until sixty years from the beginning of the calendar year next
following the year in which the work is first published.13
An author’s moral right as a right against distortion is available even after the expiry of
the term of copyright.  
Conclusion
Copyright ensures certain minimum safeguards of the rights of authors over their
creations, thereby protecting and rewarding creativity. Creativity being the keystone of
progress, no civilized society can afford to ignore the basic requirement of encouraging
the same. There is as such no mandatory requirement for registration of a work to avail
the protection under the act. Rather it is an automatic right, which emerges as and when
infringement takes place. Copyright is protected for a limited time. The Berne
Convention specifies the limit or the term of copyright as not less than sixty years. And
on its line, the Indian Copyright Act, 1957 provides for the protection for sixty years.
Keeping in mind the provisions of the act and the rules framed therewith, an author’s
moral right as a right against distortion is available even after the expiry of the term of
copyright.

Question: 3 registration of copyright.

Answer:
Introduction
What if you write a new book. It is a literary masterpiece that can fetch you a lot of
money, but you are scared and wonder what would happen if on releasing it, people copy
it and sell it under their name? What do you need to do to prevent this and protect your
rights? The answer is easy. You need to get your work registered with the Registrar of
Copyrights. Copyright is a right given by the law to the creators of original work in the
areas of literature, drama, music, art etc. A registered copyright legally protects your
work and prevents its unauthorised usage.
Between 2017 and 2018, there were nearly 40000 copyright disputes and discrepancy
examinations. To avoid this you must understand the requirements for copyright
registration and what the process entails. In this article, we will understand the types of
work you can obtain a copyright for, the people who are entitled to get a copyright for a
piece of work, the essential documents you must have when you are trying to get a
copyright and the procedure involved in the copyright registration process. What kind of
work can be registered using a copyright? In India, copyright can be taken for original
works that fall in the area of:
Musical works,
Literary works like books and manuscripts,
Cinematography films,
Fashion designs,
Artistic works like paintings,
Performances,
Software and other computer programs and compilations, etc.
However, it must be remembered that copyright does not protect titles, names, ideas,
concepts, slogans, methods, and short phrases.
To know more about Copyright Registration please visit
Why do you need a copyright?
When you create original work then copyright is acquired automatically. The question
which then arises is why do you need to get it registered. To answer this, let’s look at an
illustration. Suppose A made a painting after working day and night and putting in a lot of
sweat and effort into it. He then put it up on his website for others to see. After a few
months, A noticed that someone else had copied it and was making money off it. What
did he do? Of course, he sued the person in the court of law. Now, because he had
copyright, he could use it as evidence in the court and prove that it is his painting and the
infringer must be punished.Through this illustration, we can observe that registered
copyrights protect your work and prevent others from using it to their own advantage.
Let’s discuss some benefits of getting copyright registered for your work:
Copyright registration creates a public record. It tells the world that your work is
protected by copyright and also enables a person who wants to licence your work to find
you.It enables you to file a lawsuit and take legal action against someone who infringes
your copyright, say by selling copies of your work without your permission. It provides
you with economic benefits by entitling you to use your work in various ways like making
copies, performing in public, broadcasting your work etc, and availing appropriate reward
for it. Thus, it provides you with a reward for your creativity.It allows you to sell or pass
the rights of your work.It allows you to get legal evidence of your ownership. So if
someone prevents you from using your work, you can just use your copyright to prove
that it’s your work and you have a right to use it.It allows you to change the form of your
work. For example, it allows you to make a sequel or revise or update the work.
Who can register a piece of work with the Registrar of Copyrights?
If you made a new painting using your mind and talent. Can anyone get a copyright for it?
Of course not. Let’s see who is legally entitled to get a copyright for his/her work.
The following people are entitled to submit an application to get a copyright:
The author
The author of the work is:
Either the person who actually created the work, or
If made during the scope of employment, then the employer. This is considered as ‘work
made for hire’.
Such an author is legally allowed to get a copyright for his/her work.
The owner of exclusive rights
The copyright law can grant a person exclusive rights to control and use and distribution
of an original work. These rights include the right to reproduce or make copies of the
original work, the right to distribute copies of the work, the right to publicly display the
work, the right to perform the work and the right to alter the work and make derivatives
of the original work. The owner of such exclusive rights is permitted to apply for
registering his or her claim in the work.
The copyright claimant
This is either:
The author, or
A person or an organization that has obtained ownership rights from the author through
a written contract, will etc.
The authorized agent
This refers to any person authorized to act on behalf of either:
The author, or
The copyright claimant, or
The owner of an exclusive right.
It must also be mentioned here that there is no age bar for getting a copyright and a
minor is also entitled to register a copyright. This is because copyright law recognised
creativity and understands that age cannot be a restriction on creativity. Also, in case the
work is created by two or more people then the creators of the work are co-owners
unless they have agreed otherwise.
Essential documents required for copyright registration
Before we discuss the procedure which you must follow if you want to get your work
registered under the Indian Copyright Act, 1957, we must look into the essential
documents that you require for smooth registration.
Though there are some special requirements for different kinds of work, broadly the
essential requirements are:
3 copies of the work if the work is published;
If the work is not published, then 2 copies of manuscripts;
If the application is being filed by an attorney, then special power of attorney or
vakalatnama signed by the attorney and the party;
Authorization in respect of work, if the work is not the work of the applicant;
Information regarding the title and language of the work;
Information regarding the name, address and nationality of the applicant;
Applicant must also provide his mobile number and email address;
If the applicant is not the author, a document containing the name, address and
nationality of the author, and if the author is deceased, the date of his death;
If the work is to be used on a product, then a no-objection certificate from the trademark
office is required;
If the applicant is other than the author, a no-objection certificate from the author is
required. In this case, an authorization of the author may also be required;
If a person’s photo is appearing in the work, then a no-objection certificate from such
person is required;
In case the publisher is not the applicant, a no-objection certificate from the publisher is
required;
If the work is published, the year and address of first publication is also required;
Information regarding the year and country of subsequent publications;
In case of copyright is for software, then source code and object code are also required.
Procedure for registering a copyright
Now that we understand who is entitled to get a copyright and what essential documents
they must have to get it registered, let’s see how you can register your original work with
the copyright registrar under Chapter X of the Indian Copyright Act,1957 and Rule 70 of
the Copyright Rules’ 2013.
The steps involved in the registration process are:
Step 1: File an Application
In the first step :
The author of the work, copyright claimant, owner of an exclusive right for the work or
an authorized agent file an application either physically in the copyrights office or
through speed/registered post or through e-filing facility available on the official website
(copyright.gov.in).
For registration of each work, a separate application must be filed with the registrar along
with the particulars of the work. Along with this, the requisite fee must also be given,
Different types of work have different fees.
For example, getting the copyright for an artistic work registered, the application fees is
INR 500, while for getting the copyright for a cinematograph film registered is INR 5000.
The application fees range from INR. 5000 to INR. 40000. It can be paid through a
demand draft (DD) or Indian postal order (IPO) addressed to the Registrar of Copyright
Payable at New Delhi or through e-payment facility. This application must be filed with
all the essential documents.
At the end of this step, the registrar will issue a dairy number to the applicant.
Step 2: Examination
In the next step, the examination of the copyright application takes place.
Once the dairy number is issued, there is a minimum 30 days waiting period. In this time
period, the copyright examiner reviews the application. This waiting period exists so that
objections can arise and be reviewed. Here the process gets divided into two segments:
In case no objections are raised, the examiner goes ahead to review and scrutinize the
application to find any discrepancy.
If there is no fault and all the essential documents and information is provided along with
the application, it is a case of zero discrepancies. In this case, the applicant is allowed to
go forward with the next step.
In case some discrepancies are found, a letter of discrepancy is sent to the applicant.
Based upon his reply, a hearing is conducted by the registrar. Once the discrepancy is
resolved, the applicant is allowed to move forward to the next step.
In case objections are raised by someone against the applicant, letters are sent out to
both parties and they are called to be heard by the registrar.
Upon hearing if the objection is rejected, the application goes ahead for scrutiny and the
above-mentioned discrepancy procedure is followed.
In case the objection is not clarified or discrepancy is not resolved, the application is
rejected and a rejection letter is sent to the applicant. For such applicant, the copyright
registration procedure ends here.
Step 3: Registration
The final step in this process can be termed as registration. In this step, the registrar
might ask for more documents. Once completely satisfied with the copyright claim made
by the applicant, the Registrar of Copyrights would enter the details of the copyright into
the register of copyrights and issue a certificate of registration. The process registration
of copyright completes when the applicant is issued the Extracts of the Register of
Copyrights (ROC).
Conclusion
Creativity is the most essential requirement to enable progress in society. Encouraging
creativity enables economic and social development of a society. Copyright protects the
creativity of people and becomes a source of motivation for the artists, authors, etc.
Registering your work with the Registrar of Copyrights provides you with the right to
reproduce it, the right to adapt the work, right to paternity and right to distribute the
work. Though it looks easy, the copyright registration process is a lengthy but important
process which can take up to 10 to 12 months. It is always advisable to get your
copyright registered. This is because it can go a long way in protecting your rights for
years, even after your death. Once your copyright is registered, it becomes much easier
to move to the court and get the person who illegally copied your work punished. To
provide adequate protection to copyright holders, the Copyright Act, 1957 provides
imprisonment from six months to three years and a fine of not less than INR 50,000 in
case your right is infringed by someone.
Question: 4 infringement of copyright and remedies
Answer:

What is Copyright Infringement?

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.
Section 51 of the Copyright Act specifies when a copyright is infringed. According to
Section 51 of the Act, Copyright is deemed to be infringed if:
A person without obtaining the permission of the copyright holder does any act which
only the copyright holder is authorised to do. A person permits the place to be used for
communication, selling, distribution or exhibition of an infringing work unless he was not
aware or has no reason to believe that such permission will result in the violation of
copyright.
A person imports infringing copies of a work A person without obtaining the authority
from the copyright holder reproduces his work in any form.
Copyright Infringement examples
If a person uses someone’s song as background music in his/her music video then he
could be made liable for copyright infringement. If a person downloads movies or songs
from an unauthorized source then it will amount to copyright infringement. A person is
free to record a TV program to view it later, but if he transfers or distributes it to others
then it becomes a copyright infringement.
Copyright infringement elements
The work was the original creation of the author The defendant actually copied the work
of the author. It is important to note that not all factually copying is legally actionable.
The substantial similarity between the works of the author and the defendant has to be
established to prove that the defendant has infringed the author’s copyright.
Copyright Issues
There are a number of issues that can arise in Copyright. These are discussed below:
Plagiarism
Someone may copy the copyrighted material and pretend it to be his original work.
People are allowed to quote the work or refer the work but the person who is using the
copyrighted work has to give the credit to the copyright holder.

Ownership
The issue of ownership may arise when an employer works for an organisation. In such
case who has the copyright over the work? If a person is an employer then it is the
organisation which has the copyright over the material but if a person is a freelance
writer then it is the person himself who is the sole owner of the copyrighted material.
Derivative Works
Derivative works use the already existing work of someone. It is a new version of already
existing material. For example, translating a book into another language. A person
requires a license for it but if he has not obtained the license for it then he can be made
liable for copyright infringement.
Types of Copyright Infringement
Copyright infringement can be broadly classified into two categories:
Primary Infringement
Secondary Infringement
Primary Infringement:
Primary infringement refers to the real act of copying the work of the copyright holder.
For example, photocopying a book and then distributing it for commercial purposes.
However, sometimes a person may only copy a part of the work, for example, a
paragraph of an article. In such a case, the copyright holder is required to establish two
things:
Substantial Taking
A copyright is infringed only when an unauthorized person copies a substantial part of
the work. For example, copying a catchy phrase of a lyricist.
While deciding the case, the court also tries to conceive, how an ordinary person will
perceive the work. If an ordinary person will perceive that the work is copied from a
different source then it will be considered infringement.
If the writing style, language and errors are similar to the copyrighted work then it will
serve as evidence of copying in a court of law. The minor alterations made by the person
in the work of a copyright holder will not affect the claim of infringement.
Casual Connection
The copyright holder must prove that there is a similarity in the works of the copyright
holder and the infringer. However, this may be because of several other reasons like both
of them have used the same source for the research. In such a case, the copyright holder
can not claim for infringement.
Secondary Infringement
Secondary Infringement refers to the infringement of copyright work without actually
copying it. This can happen in the following ways:
Providing a place for Copyright Infringement
If a person provides the place or permits the place (for profit) to be used for
communicating of the work the public and such work amounts to copyright infringement
then such person can be made liable for the offence of copyright imprisonment.
However, if the person is unaware or has no reason to believe that the place is used for
copyright infringement then cannot be made liable for the same.
It is important to note that the person should let the place for “profit” to be made liable
for copyright infringement. If an NGO lets the place then the NGO cannot be made liable
for the same.
Selling Infringing Copies
If a person sells the copies that infringe the right of the copyright holder then it will
amount to copyright infringement.
Distributing Infringing Copies
When a person distributes infringing copies of the copyright holder works then it will
amount to copyright infringement. For example, if a person uploads a movie on the
internet for free then it is an infringement of copyright.
Importing Infringing Copies
Importing the infringed work of the copyright holder in India also amounts to
infringement of Copyright. However, if the person has imported the infringed work for
the domestic or personal use then it will not amount to Copyright Infringement.
Ownership of Copyright
Initial Ownership
The initial ownership belongs to the creator of the work itself. Thus, for example, if a
person A has written a novel P then initially it is the A himself, who is eligible for the
ownership, thus, no one else other than A can claim the ownership on the novel.

The work made for Hire rule

If a person hires someone for the creation of the work then it is the hirer or the employer
who is the owner of the copyrighted work and not the person who has originally created
the work unless there is an agreement to the contrary.
Joint Ownership and Authorship
If two or more authors have worked together to create a work then the authors will get
joint ownership over the work.
Assignment
Assignment refers to the transfer of copyright ownership. A person or a company to
whom the rights are assigned is known as assignee. In this case, the Assignee become a
owner.
Rights of Copyright owners
Certain Rights are given to the copyright holder under the Copyright Act, 1957. These
rights are discussed below:
Right to Reproduction
The right to reproduction allows the copyright holder to make copies of his work in any
form. The copyright holder can also bring legal action against the person if he reproduces
his work i.e. download or copies his work in any format for commercial purposes.
Right to distribute
The copyright holder has the right to distribute his work in a manner he deems fit. He is
also entitled to transfer his rights or some rights. For example, he may allow someone to
translate his work.
Right to make derivative works
The copyright holder has the right to derivative works. Thus, if a person wants to make a
movie based on a novel then he should take permission from the author of the novel to
do so or it may result in copyright infringement.
Right to publicly perform
The copyright holder has the right to perform his work publicly i.e. a writer of a novel
may showcase his work by performing drama or concert.

Right of Paternity
The right of paternity allows the copyright holder to claim authorship of the work. The
author can claim due credit for his work, thus for example, if a movie is based on a novel
but the maker of the movie does not acknowledge the author of the novel then the
author can bring an action against the makers.
Sui Generis Right
This right is available to the creators of the database and software. The right exists for a
period of 15 years.
Copyright Exceptions
Quotation, Criticism and Review
If a person uses the quotes of the copyrighted work then it will not amount to
infringement. Similarly, a person may cite examples of the published work to criticize it or
review it.
Criteria for using the exception
The reason for using the material is genuinely for the purpose of Quotation, Criticism and
Review. For example, one cannot discuss the whole film in an article and then comment
that he/she liked the movie.
The material which is used for review or criticism should already be available to the
public. Thus, a person cannot use the material which is not made available to the public
but is kept confidential.
The use of the material should be fair. There is no legal definition of what is fair and what
is not. The fair use of the material will depend on the facts and circumstances of the case.
If a person has provided sufficient acknowledgement to the copyright holder then it
would not amount to copyright.
Parody and Pastiche
Parody means to use the existing work of someone to create the humour or to use it for
mockery. Some people may use the copyrighted work to make a critique while others
may use it to draw attention to a social phenomenon. Use of work for parody and
pastiche is not considered as a copyright infringement.

Test for Copyright Infringement

To test whether the work is copyrighted or not, the court follows the three-factor test.
These three factors are:
Quantum of the work copied
Purpose of copying the work
The likelihood of competition between the two works.
News Reporting
A news reporter may sometimes use the copyrighted material to report the current
event. For example, a news reporter may use a part of the video clip to report a current
event. In this case, he is exempted from copyright infringement. There are certain
conditions under which a news reporter is exempted from copyright infringement, the
conditions are discussed below:
The news reporter has not used the copyrighted photograph. The copyrighted
photograph cannot be used for news reporting.
The purpose of using the material should be genuine i.e. for reporting purpose only.
There should be a fair use of the material.
The news reporter has to sufficiently acknowledge the author of the copyrighted work.
Libraries
The libraries often lend readers the book for a certain period and make copies for its
users. The librarians, in this case, cannot be made liable for copyright infringement.
Education
Another exception to copyright infringement is the use of copyrighted material for
educational purposes. Sometimes the copyrighted material is used by the teachers to
illustrate a point or make the student understand the concept then it is not a copyright
infringement. Similarly, if a student uses the thoughts of someone to explain an answer in
examination then it is not a copyright infringement.
Research and Private Studies
Researchers have to use various copyrighted sources for the research purpose. The
researchers are allowed to use copyrighted material for research purposes, it does not
amount to copyright infringement. Copyright allows making single copies or taking shorts
extracts of the work for non-commercial purpose.
Private Copying
Private copying refers to the copying of material from one device to another without
infringing the right of the copyright holder. For example, one may copy a song from DVD
to MP3 player for backup purpose.
Remedies for Copyright Infringement in India
This paper looks at the different remedies a person has for copyright infringement in
India. There are three types of remedies a person can get for copyright infringement in
India – civil remedies, criminal remedies and administrative remedies. This paper will be
analysing each of them in detail.
Types of Copyright Infringements
Copyright infringement has become a serious issue in the modern world. Infringement
occurs when a person intentionally or unintentionally copies the work of another creator.
Infringement is usually classified into two categories – primary infringement and
secondary infringement.
Rights of Copyright Owners
It is important to first understand the rights held by a copyright owner before tackling the
remedies for infringement. Authorized copyright owners have the right to:
Publish the work
Perform the work in public
Produce the work in a material form
Produce, reproduce, perform or publish any translation of the work
Make any adaptation of the work
Communicate the work through broadcast, radio or cable
The original creator of the work enjoys a few exclusive rights to:
Make copies of the work
Make a derivative based on the original
Distribute the work
Perform the work publicly
Display the work in a commercial setting
Seek remedies for unauthorized use of the copyright work
Civil Remedies for Copyright Infringement
The civil remedies for copyright infringement are covered under Section 55 of the
Copyright Act of 1957. The different civil remedies available are:
1) Interlocutory Injunctions
The most important remedy is the grant of an interlocutory injunction. In most case the
application filled is for interlocutory relief and the matter rarely goes beyond the
interlocutory stage. There are three requirements for there to be a grant of interlocutory
injunction – Firstly, a prima facie case. Secondly, there needs to be a balance of
convenience. Finally, there needs to be an irreparable injury.
2) Pecuniary Remedies
Copyright owners can also seek three pecuniary remedies under Section 55 and 58 of the
Copyright Act of 1957. First, an account of profits which lets the owner seek the sum of
money made equal to the profit made through unlawful conduct. Second, compensatory
damages which let the copyright owner seek the damages he suffered due to the
infringement. Third, conversion damages which are assessed according to the value of
the article.
3) Anton Pillar Orders
The Anton pillar order gets its name from the holding in Anton Pillar AG V.
Manufacturing Processes. The following elements are present in an Anton Pillar Order –
First, an injunction restraining the defendant from destroying or infringing goods. Second,
an order permitting the plaintiff’s lawyer to search the defendant’s premises and take
goods in their safe custody. Third, an order that the defendant be directed to disclose the
names and addresses of suppliers and consumers.
4) Mareva Injunction
The Mareva injunction comes into play when the court believes that the defendant is
trying to delay or obstruct the execution of any decree being passed against him. The
court has the power to direct him to place whole or any part of his property under the
court’s disposal as may be sufficient to satisfy the decree. This is provided in Order
XXXVIII, Rule 5 of The Civil Procedure Code, 1908.
5) Norwich Pharmacal Order
The Norwich Pharmacal Order is usually passed when information needs to be
discovered from a third party.
Criminal Remedies
Under the Copyright Act, 1957 the following remedies are provided for infringement:
Imprisonment up to 3 years but, not less than 6 months
Fine which may not be less than 50,000 but, may extend up to 2,00,000
Search and seizure of infringing goods
Delivery of infringing goods to the copyright owner
Fair Dealing under Copyright Law in India
The defence of fair dealing is an integral part of copyright law. The fair dealing defence
allowed certain usage of literary works which, would have otherwise been an
infringement of copyrights. The fair dealing defence states that copyrights must not stifle
the very creativity that law is meant to foster[1]. It is “a key part of the social bargain at
the heart of the copyright law, in which as a society we concede certain limited individual
property rights to ensure the benefits of creativity to a living culture.”
The Indian Copyright Act under Section 52 makes fair dealing a valid defence for
copyright infringement. This defence places the burden of proof on the copyright owner
to establish infringement. However, the Copyright Act has not defined fair dealing which
led the Indian court to rely on the definition of English authorities. The court usually
relies on the case of Hubbard vs Vosper which held that “It is impossible to define what is
“fair dealing.” It must be a question of degree. You must consider first the number and
extent of the quotations and extracts. Are they altogether too many and too long to be
fair? Then you must consider the use made of them. If they are used as a basis for
comment, criticism or review, that may be fair dealing. If they are used to convey the
same information as the author, for a rival purpose, that may be unfair. Next, you must
consider the proportions. To take long extracts and attach short comments may be unfair.
But, short extracts and long comments may be fair. Other considerations may also come
to mind. But, after all, whatever said and done, it must be a matter of impression. As with
fair comment in the law of libel, so with fair dealing in the law of copyright. The tribunal
decides on facts of the case. In the present case, there is material on which the tribunal
of fact could find this to be fair dealing.

UNIT-IV
Question:1 Object and purpose of Patent Law
Answer: What can be patented?
Sections 3 and 4 of the Indian Patents Act, 1970 clearly mentioned the exclusions regarding what can
be patented in India. There are certain criteria which have to be fulfilled to obtain a patent in India.
They are:

Patent subject:

The most important consideration is to determine whether the Invention relates to a patent subject
matter. Sections 3 and 4 of the Patents Act list non-patentable subject matter. Unless the Invention
comes under any provision of Section 3 or 4, it means that it consists of a subject for a patent.

Novelty:

Innovation is an important criterion in determining the patent potential of an invention. Under

Section 2(l) of the Patent Act, a novelty or new Invention is defined as “no invention or technology
published in any document before the date of filing of a patent application, anywhere in the country
or the world”. The complete specification, that is, the subject matter has not fallen into the public
domain or is not part of state of the art”.
Simply, the novelty requirement basically states that an invention that should never have been
published in the public domain. It must be the newest which have no same or similar prior arts.

Inventive steps or non-clarity:

Under Section 2(ja) of the Patents Act, an inventive step is defined as “the characteristic of an
invention that involves technological advancement or is of economic importance or both, as
compared to existing knowledge, and invention not obvious to a person skilled in the art.” This
means that the invention should not be obvious to a person skilled in the same field where the
invention is concerned. It should not be inventive and obvious for a person skilled in the same field.

Capable of industrial application:

Industrial applicability is defined in Section 2 (ac) of the Patents Act as “the invention is capable of
being made or used in an industry”. This basically means that the Invention cannot exist in the
abstract. It must be capable of being applied in any industry, which means that it must have practical
utility in respect of patent.

These are statutory criteria for the patent of an invention. In addition, other important criteria for
obtaining a patent is the disclosure of a competent patent. A competent patent disclosure means a
patent draft specification must adequately disclose the Invention, so as to enable a person skilled in
the same field related to carrying out the Invention with undue efforts.

Rights and obligations of the patentee

Rights of Patentee

Right to exploit patent: A patentee has the exclusive right to make use, exercise, sell or distribute
the patented article or substance in India, or to use or exercise the method or process if the patent is
for a person. This right can be exercised either by the patentee himself or by his agent or licensees.
The patentee’s rights are exercisable only during the term of the patent.

Right to grant license: The patentee has the discretion to transfer rights or grant licenses or enter
into some other arrangement for a consideration. A license or an assignment must be in writing and
registered with the Controller of Patents, for it to be legitimate and valid. The document assigning a
patent is not admitted as evidence of title of any person to a patent unless registered and this is
applicable to assignee not to the assignor.

Right to Surrender: A patentee has the right to surrender his patent, but before accepting the offer
of surrender, a notice of surrender is given to persons whose name is entered in the register as
having an interest in the patent and their objections, if any, considered. The application for
surrender is also published in the Official Gazette to enable interested persons to oppose.

Right to sue for infringement: The patentee has a right to institute proceedings for infringement of
the patent in a District Court having jurisdiction to try the suit.

Obligations of patentee

Government use of patents: A patented invention may be used or even acquired by the
Government, for its use only; it is to be understood that the Government may also restrict or
prohibit the usage of the patent under specific circumstances. In case of a patent in respect of any
medicine or drug, it may be imported by the Government for its own use or for distribution in any
dispensary, hospital or other medical institution run by or on behalf of the Government. The
aforesaid use can be made without the consent of the patentee or payment of any royalties. Apart
from this, the Government may also sell the article manufactured by patented process on royalties
or may also require a patent on paying suitable compensation.

Compulsory licenses: If the patent is not worked satisfactorily to meet the reasonable requirements
of the public, at a reasonable price, the Controller may grant compulsory licenses to any applicant to
work the patent. A compulsory license is a provision under the Indian Patent Act which grants power
to the Government to mandate a generic drug maker to manufacture inexpensive medicine in public
interest even as a patent in the product is valid. Compulsory licenses may also be obtained in respect
of related patents where one patent cannot be worked without using the related patent.

Revocation of patent: A patent may be revoked in cases where there has been no work or
unsatisfactory result to the demand of the public in respect of the patented invention.

Invention for defence purposes: Such patents may be subject to certain secrecy provisions, i.e.
publication of the Invention may be restricted or prohibited by directions of Controller. Upon
continuance of such order or prohibition of publication or communication of patented Invention, the
application is debarred for using it, and the Central Government might use it on payment of royalties
to the applicant.

Restored Patents: Once lapsed, a patent may be restored, provided that few limitations are imposed
on the right of the patentee. When the infringement was made between the period of the date of
infringement and the date of the advertisement of the application for reinstatement, the patent has
no authority to take action for infringement.

Procedure of Patent

Step 1: Write about inventions (idea or concept) with each and every detail.

Collect all information about your Invention such as:

Field of Invention

What does the Invention describe

How does it work

Benefits of Invention

If you worked on the Invention and during the research and development phase, you should have
some call lab records which are duly signed with the date by you and the concerned authority.

Step 2: It must involve a diagram, drawing and sketch explains the Invention

Drawings and drawings should be designed so that the visual work can be better explained with the
invention work. They play an important role in patent applications.

Step 3: To check whether the Invention is patentable subject or not.

Not all inventions can be patentable, as per the Indian Patent Act there are some inventions which
have not been declared patentable (inventions are not patentable).

Step 4: Patent Discovery

The next step will be to find out if your Invention meets all patent criteria as per the Indian Patent
Act-
The invention must be novel.

The Invention must be non- obvious.

The Invention must have industrial applications.

Step 5: File Patent Application

If you are at a very early stage in research and development for your Invention, then you can go for a
provisional application. It offers the following benefits:

Filing date.

12 months time for filing full specification.

Lesser cost.

After filing a provisional application, you secure the filing date, which is very important in the patent
world. You get 12 months to come up with the complete specification; your patent application will
be removed at the end of 12 months. When you have completed the required documents and your
research work is at a level where you can have prototypes and experimental results to prove your
inventive move; you can file the complete specification with the patent application. Filing the
provisional specification is an optional step if you are in the stage where you have complete
knowledge about your Invention you can go straight to the full specification.

Step 6: Publication of the application

Upon filing the complete specification along with the application for the patent, the application is
published 18 months after the first filing. If you do not wish to wait until the expiration of 18 months
from the filing date to publish your patent application, an initial publication request may be made
with the prescribed fee. The patent application is usually published early as a one-month form
request.

Step 7: Request for Examination

The patent application is scrutinized only after receiving a request for an RFE examination. After
receiving this request, the Controller gives your patent application to a patent examiner who
examines the patent application such as the various patent eligibility criteria:

Patent subjects

Newness

Lack of clarity

Inventory steps

Industrial application

By enabling

The examiner makes the first examination report of the patent application upon a review for the
above conditions. This is called patent prosecution. Everything that happens for a patent application
before the grant of a patent is usually called patent prosecution.
The first examination report submitted to the Controller by the examiner usually includes prior art
(existing documents prior to the filing date) that are similar to the claimed invention and is also
reported to the patent applicant.

Step 8: Answer the objections

Most patent applicants will receive some type of objections based on the examination report. The
best thing is to analyze the examination report with the patent professional (patent agent) and react
to the objections in the examination report. This is an opportunity for an investor to communicate
his novelty over the prior art in examination reports. Inventors and patent agents create and send a
test response that tries to prove that their Invention is indeed patentable and meets all patent
criteria.

Step 9: clearance of objections

The Controller and the patent applicant is connected for ensuring that all objections raised regarding
the invention or application is resolved and the inventor has a fair chance to prove his point and
establish novelty and inventive steps on other existing arts. Upon receiving a patent application in
order for grant, it is the first grant for a patent applicant.

Step 10:

Once all patent requirements are met, the application will be placed for the grant. The grant of a
patent is notified in the Patent Journal, which is published periodically.

Grounds for opposition

An application for a patent may be opposed by either a prior grant or a subsequent grant by any
person on the grounds specified in s 25 (1) and 25 (2) of the former Act. No other grounds stated in
the Act can be taken to oppose the patent. Some major opposition grounds, common to both pre-
grant and post-grant opposition, are mentioned below:

The Invention was published previously in India or elsewhere or was claimed previously in India.

The Invention is the formation of a part of the prior public knowledge or prior public use or
traditional knowledge of any community. The Invention is obvious and lacks an inventive step.

The Invention does not constitute an invention within the meaning of the Act, or the Invention is not
patentable under the Act. Failure to disclose information or furnishing false information relating to
foreign by the applicant.

Pre-Grant Protest: Section 25 (1) of the Patent Act and Rule 55 of the Patent Rules, 2003 provide the
procedure to be followed for pre-grant opposition. Pre-grant opposition can be initiated by anyone
after the application is published and before the patent is granted. If a request for examination is
filed to oppose the application, the Controller considers representation only. If a request for
examination has not been made by the applicant, it is possible for the opponent as an interested
person to first file a request for examination under Section 11B, and then file a pre-grant opposition.

Post-grant opposition: The procedure is followed to oppose the grant under Section 25 (2) of the
Patents Act, 1970 and Rule 55A to 70 of the Patent Rules, 2003. A Post-grant opposition can be filed
by any person interested in any of the specific grounds before a period of one year from the date of
publication of the grant of the patent. Unlike a pre-grant protest, a pre-grant protest must be filed
by an individual and not by a person. The expression (people interested) is defined under section 2(t)
of the Patents Act, 1970 wherein a person/party is engaged, or is conducting research in the same
field with which the Invention (which is to be opposed) is concerned.

What are the Authorities concerning patent

The Controller of Patents is considered as the principal officer responsible for administering the
patent system in India. The Controller is regarded as the overall supervisor of the four Patent Offices
in Chennai, Delhi, Mumbai and Kolkata. Since the Controller also acts as the Registrar of Trademarks
with the Head Office of the Trade Office in Mumbai, the Controller acts as a patent from his office in
Mumbai. Officially, the patent has its head office in Kolkata (Calcutta). Patents granted under the
Patents Act and other officers of the Patent Office discharge their functions under the direction or
regulation of the Controller.

Patent Infringement

Patent infringement is a violation which involves the unauthorized use, production, sale, or offer of
sale of the subject matter or Invention of another’s patent. There are many different types of
patents, such as utility patents, design patents, and plant patents. The basic idea behind patent
infringement is that unauthorized parties are not allowed to use patents without the owner’s
permission. When there is infringement of patent, the court generally compares the subject matter
covered under the patent with the used subject matter by the “infringer”, infringement occurs when
the infringer Uses patent material from in the exact form. Patent infringement is an act of any
unauthorized manufacture, sale, or use of a patented invention. Patent infringement occurs directly
or indirectly.

Direct patent infringement: The most common form of infringement is direct infringement, where
the Invention that infringes patent claims is actually described, or the Invention performs
substantially the same function.

Indirect patent infringement: Another form of patent infringement is indirect infringement, which is
divided into two types:

Infringement by inducement is any activity by any third party that causes another person to infringe
the patent directly. This may include selling parts that can only be used realistically for a patented
invention, selling an invention with instructions to use in a certain method that infringes on a
method patent or licenses an invention that is covered by the patent of another. The inducer must
assist intentional infringement, but does not require intent to infringe on the patent.

Contributory infringement is the sale of components of material that are made for use in a patented
invention and have no other commercial use. There is a significant overlap with indications, but
contributor violations require a high level of delay. Violations of the seller must have direct
infringement intent. To be an obligation for indirect violations, a direct violation must also be an
indirect act.

Doctrine of Equivalents And Doctrine of Colourable Variation

Patent infringement generally categorized into two, i.e. literal infringement and infringement in the
doctrine of equivalents. The term “literal infringement” means that each element heard in a claim
has the same correspondence in the alleged infringement device or process. However, even if there
are no literal violations, a claim can be infringed under the doctrine of equivalents if the accused
device or some other element of the process performs the same function, in substantially the same
way to obtain substantially the same result. The principle of equivalence is a legal rule in most
patent systems in the world that allows a court to hold a party liable for patent infringement, even
though the infringing instrument or process does not fall within the literal scope of the patent claim,
but Still equal to the claimed Invention.

This is not an expansion of coverage of a claim permitted by the principle of equivalence. Rather, the
scope of coverage given to the patent owner is limited by

(i) the “prosecution history estoppel” and

(ii) the principle of the prior art.

The analysis of infringement determines whether a claim claimed in a patent “literally reads on the
accused infringer’s instrument or process”, or covers the allegedly infringing device in the doctrine
of equivalents.

The steps in the analysis are:

Oppose the scope of the “literal” language of claims.

Comparing claims with the accused device or process to determine if there is a literal violation.

If there is no literal violation, reduce the scope of claims under the principle of equality.

The doctrine of equivalents is considered as an equitable doctrine which effectively expands the
scope of the claims beyond their literal language to the true scope of the inventor’s contribution to
the art. However, there are limitations in the scope of equivalents to which the patent owner is
entitled.

Remedies for Patent Infringement

Patent infringement lawsuits can result in significantly higher losses than other types of lawsuits.
Some laws, such as the Patent Act, allow plaintiffs to recover damages. Patent infringement is the
illegal manufacture or usage of an invention or improvement of someone else’s invention or subject
matter who owns a patent issued by the Government, without taking the owner’s consent either by
consent, license or waiver. Several remedies are available to patent owners in the event of an
infringement. Measures available in patent infringement litigation may include monetary relief,
equal relief and costs, and attorneys’ fees.

Monetary Relief: Monetary relief in the form of compensatory damages is available to prevent
patent infringement:

Indemnity compensation – A patent owner may have lost profits for infringement when they
established the value of the patent.

Increased damage – Up to three times, compensation charges can be charged in cases of will or
violation of will.

The time period for damages – The right to damages can be claimed only after the date when the
patent was issued and only 6 years before the infringement claim is filed.

Equitable relief: Orders are issued by the court to prevent a person from doing anything or Act.
Injections are available in two forms:
Preliminary injunction – Orders made in the initial stage of lawsuits or lawsuits that prevent parties
from doing an act that is in dispute (such as making a patent product)

Permanent injunction – A final order of a court which permanently ceases certain activities or takes
various other actions.

Conclusion: Patents can provide great value and increased returns to individuals and companies on
the investment made in developing new technology. Patenting should be done with an intelligent
strategy that aligns business interests to implement the technology with a wide range of options in
the search for how, where and when to patent. As an example, with a focus on international
considerations and regulations in specific countries, it is possible for a company to achieve significant
savings and improve the rights gained using patents.