UNIT 1

INTELLECTUAL PROPERTY REGISTRATION:

A. REGISTRATION OF A TRADEMARK:

Introduction:

In simple terms, a trademark is a brand or logo which represents your

business.

A visual symbol like a word signature, name, device, label, numerals, or

combination of colors used by the owner of the trademark for goods or
services or other articles of commerce to distinguish it from other similar
goods or services originating from different businesses. A trademark can be a
word, symbol, logo, brand name, wrapper, packaging labels, tagline, or a
combination of these and are used by manufacturers or service providers to
identify their own products and/or services. It is used to distinguish the
owners’ products or services from those of its competitors.

Registration:

Trademarks in India are registered by the Controller General of Patents

Designs and Trademarks, Ministry of Commerce and Industry, Government of
India. Trademarks are registered under the Trademark Act, 1999, and provide
the trademark owner the right to sue for damages when infringements of
trademarks occur.

However, any trademark, which is identical or deceptively similar to an

existing registered trademark or trademark for which application for
registration has been made, cannot be registered. Also, a trademark that
would likely cause deception or confusion or is offensive may not be
registered.

Process of Registration:

Step 1: To search for a trademark

The applicant must be careful while choosing his/ her trademark. Since, there
are already tons of different types of trademarks available, once a trademark
is chosen, it is essential to carry out a public search on the trademarks
database which is available with the Trade Marks Registry to make sure that
the trademark is unique and that there is no other trademark which is either
similar or identical to his/ her trademark.
The trademark search discloses all the types of trademarks that are already
available in the market, either registered or unregistered. The search further
tells whether the applied trademark has a competition for the same
trademark.

Step 2: To file the trademark application

The application for registration of the trademark can either be filed in a single-
class or a multi- class totally depending on the goods and services the
business pertains to.

The registration application is Form TM- A which can be either filed online
through the official IP India website or physically at the Trade Marks Office
which depends on the jurisdiction of the trademark.

The application for trademark registration has to be supported with multiple

documents with complete details of the trademark for which the registration
is sought. Moreover, in case the applicant is claiming prior use in the
trademark, then a user affidavit has to be filed supporting the usage along
with the evidence of its prior usage.

Step 3: Examination of the trademark application by the government authority

Post the filing of the trademark application, a mandatory examination report is

issued by the Examiner after an extensive examination of the trademark
application in consonance with the guidelines of the Trade Marks Act, 2016.

The examination report by the authority may or may not disclose some
objections which can be either, absolute, relative or procedural. This
examination report by the Trademark Authority is issued within a period of 30
days of having filed the registration application.

A reply to the examination report is required to be filed within a period of 30

days after receiving the report asserting the arguments and evidence against
any objections to waive them off.

Step 4: Post- examination

 After the filing of the reply to the examination report, the Examiner (Trademark
Authority) may appoint a hearing if the Examiner is not entirely satisfied by the
reply filed or in case the objections are not met. After the said hearing, the
Examiner may accept the mark and subsequently forward the application for
publication in the journal or reject the said application if any objection still
persists.

Step 5: Advertisement of the trademark

Once the registration application has been accepted, the said trademark is
advertised and also published in the Trade Marks Journal for a period of 4
months. The aim behind the publication and advertisement is to invite the
general public to filing an opposition against the registration of the mark.

The Trade Marks Journal is available on the official Registry’s website which
gets updated every Monday of the week.

Step 6: Opposition from general public

Post the advertisement and publication of the trademark in the journal, any
aggrieved person can file a notice to oppose against the registration of the
advertised/ published trademark. This notice to oppose the trademark has to
be filed vide Form TM- O within 4 months of the mark’s publication in the
Trademark Journal. In case the applied for trademark is opposed/ objected,
then the due process of law has to be followed which includes filing the
counter- statement application, evidence as well as hearing in order to get the
trademark registered.

Step 7: Registration of the trademark

The final step towards the entire procedure is registration where the
application proceeds to registration after conquering the objection and/ or the
opposition against the said registration of trademark.

Besides this, in case there has been no objection against the registration of
the trademark during the advertisement/ publication period of 4 months, then
the trademark is issued an auto- generated registration certificate within 1
week’s time. Once the registration complete, it is valid for a period of 10 years
after which it would be required to be renewed within a prescribed time
period.

1. REGISTRATION OF A PATENT:
Introduction:
A patent is an exclusive right granted for an invention, which is a product or a
process that provides, in general, a new way of doing something, or offers a new
technical solution to a problem. To get a patent, technical information about the
invention must be disclosed to the public in a patent application.
The main motto to enact patent law is to encourage inventors to contribute more in
their field by awarding them exclusive rights for their inventions. In modern terms,
the patent is usually referred to as the right granted to an inventor for his Invention
of any new, useful, non-obvious process, machine, article of manufacture, or
composition of matter.
Indian Patent Law is defined by various provisions of The Patents Act, 1970, which
has been amended since introduction. Under this law, patent rights are granted for
inventions covering a new and inventive process, product or an article of
manufacture that are able to satisfy the patent eligibility requirements of having
novelty, inventive step, and are capable of industrial application.
The Indian Patent Act, 1970 strikes a balance between the rights of the applicant and
his obligation to the society granting the rights. Some salient features of the Act
include, product and process patent, term of patent as 20 years, patent examination
conducted on request, fast track mechanism for quick disposal of appeals, pre-grant
and post-grant opposition allowed, protection of biodiversity and traditional
knowledge, and, publication of applications after 18 months of date of filing of
patent application.

Registration:
Registration of patent in India is a serious work which needs years of experience and
sound technical knowledge of the subject matter. To register a patent an application
is filed for the invention which is new, novel and which has not been disclosed
anywhere prior to filing the application of patent before the office of the controller
of patents in India. In India invention of new goods or industrial process can be filed.
The main eligibility for an invention for grant of the patent is the existence of
inventive steps, and which is non-obvious. The industrial applicability is another
important feature and finally, the invention must be commercially beneficial, in
other words, the claims of Invention must indicate effective value.

Process for registration:

Step 1: Filing of Patent Application in Patent Registration Office, India:

Applying for the registration of Patent is the first step to start the process of Patent
Registration in India. The question then arises is, who are eligible for filing Patent
Application in India for Patent Registration? To answer this question, the Patent Act
says that Patent application for the invention may be made by "True & First inventor
of the Invention" "Assignee of the person claiming to be the true & first inventor"
"legal representative of any deceased person who immediately before his death was
entitled to make Patent application" for the Patent Registration. Therefore, only
defined Applicant is eligible for filing of Patent Application for Patent Registration in
India. For Patent Registration in India, Indian Patent Office accepts the prescribed
Forms and documents along with the Official fees as given under the First Schedule
of Patents Rule.
The following forms are to be submitted in the Patent Registration office to complete
the Patent Registration process:

Form-1 (Application for grant of a Patent) : It includes the details of the Inventor(s),
Applicant(s), type of Patent Application is filed, title of the invention, certain
declaration from the Applicant and signatures of the Inventor(s), Applicant(s) and
authorized Person.

Form-2 (Provisional/Complete Specification) : It includes the information for the

type of Application, the title of the invention, description, claims, abstract of the
invention.

Form-3 (Statement and Undertaking): It includes a statement and undertaking on

behalf of the inventor for updating the Controller for any foreign filing Application
filed for Patent Registration.

Form-5 (Declaration as to Inventorship): A declaration as to Inventorship must be

filed in the Patent Registration Office of India.

Form-26 (form for authorization of a Patent Agent/or any person in a matter or

proceeding under the Act): In the case where Patent Application for Patent
Registration in India is filed by Patent Agent or Patent Attorney whose services are
taken by the inventor(s), a form for authorization must be submitted in the Patent
Registration Office.

Further, in the case where Patent Application for Registration in India is based on the
previous Patent Application filed abroad under the Convention Patent Application
(as under the Paris Convention) or PCT route, a Priority document must be filed
along with the application to the Patent Registration Office along with other required
documents.
In the case where the previous Patent Application is in a language other than Hindi
or English, a Verified Translation of the same also needs to be submitted to the
Indian Patent Registration Office.

Form-28 (To be submitted by a small entity/start-up): In order to take benefit under

the category of small entity/start-up, proof or evidence needs to be submitted.

At last, all the documents, Forms or Drawings must be signed by the authorized
person or the inventor.

Step 2: Publication of Patent Application in the Official Gazette:

Once the Patent Application is filed, it will be published by the IPO after Eighteen
(18) months in the Official Gazette of the IPO for the Public. Publication of Patent
Application is an automatic process; it does not require any request from the Patent
Office in India. However, if one wishes to publish early, a request for early
 publication can be filed by the Applicant to the Patent Registration Office. On filing
early publication, Patent Application can be published within one Month from the
date of filing of the request.

Step 3: Filing of Request for Examination:

There is a prescribed form and timeline for filing an application for registration of
Patent. The application is then examined by the authorities. The Controller examines
the Patent Application, only after receiving of the request for examination. Upon
receiving the request for examination, the Patent application is examined by the
Patent Registration Office, India.

Step 4: Issuance of objection(s) in the Examination Report:

Once the process of examination is done, the Controller either grants the Patent
registration or issues an examination report. The report may include certain subject
matter objection or procedural objection. Normally, the Applicant gets six months’
time for submitting the reply of the Examination report. As a next step, if Controller
gets satisfied, grants the Patent else give a hearing option to the Applicant.

Step 5: Patent grant:

If the Patent application fulfils the prescribed criteria for a Patent Registration, it will
be granted by the Controller, published in the Official Gazette of the Patent Office
India and issue a Certificate for the Patent Registration to the Applicant.

2. REGISTRATION OF A COPYRIGHT:
Introduction:

Defined as the property right of an original work owned by an individual, a copyright

is fixed in a physical medium of expression, thus enabling the holder to exclusively
reproduce, distribute, perform, and display the copyrighted work.

The said work may include anything under literature, music, art, photography,
cinema/film or even a computer programme, etc. The original creator and the
person who obtained rights to the work can register a copyright on the same.

Taking a cue from the English Copyright Act of 1911, the first ever Copyright Act was
enacted in 1914. Once the country achieved independence, Copyright Act, 1957 was
enacted and has seen amendments being made to it six times, the last being in 2012.

Process for Registration:

Step 1: Filing the Application

Along with the requisite fee, an application needs to be submitted either in DD/IPO.
Once this application is filed, a diary number is generated and issued to the
applicant.

Step 2: Examination

There is a minimum wait of 30 days for recording and analyzing any objections that
may come up against the copyright application

a. In case of no Objection:

The application goes ahead for scrutinization by an examiner. This scrutiny gives rise
to two options:

1. In case of discrepancy found during scrutiny:

A letter of discrepancy is sent to the applicant letter is generated and sent to

the applicant.

Based on the reply from the applicant, the registrar conducts a hearing of the
alleged discrepancy row

Once the discrepancies are sorted during the hearing, the extracts of the
same are sent to the applicant for him/her to register the copyright

2. In case of zero discrepancy:

This would mean that the copyright application fulfils all criterion required for
the copyright. The applicant is then given the nod to go ahead with the
registration of the same.

(If the registration is not approved, then the applicant received a letter of
rejection)

b. In case of an objection filed:

While we listed above the scenarios of ‘no objections’, in case one is faced with an
objection, the following proceedings take place:
Authorities send out letters to the two concerned parties, trying to convince them to
take back the objection

After requisite replies from the third party, the registrar conducts a hearing

Depending on whether the registrar accepts the reply, the procedure takes shape

1. If the application is accepted:

The application being accepted means that the objection has been rejected.
The application goes ahead for scrutinization by an examiner. This scrutiny
gives rise to two options.

2. In case of discrepancy found during scrutiny:

A letter of discrepancy is sent to the applicant letter is generated and sent to

the applicant.

Based on the reply from the applicant, the registrar conducts a hearing of the
alleged discrepancy row

Once the discrepancies are sorted during the hearing, the extracts of the
same are sent to the applicant for him/her to register the copyright.

c. In case of zero discrepancy:

This would mean that the copyright application fulfils all criterion required for the
copyright. The applicant is then given the nod to go ahead with the registration of
the same. (If the registration is not approved, then the applicant received a letter of
rejection)

d. If application is rejected:

In case this happens, then the applicant receives a rejection letter that marks the
end of the copyright procedure

Step 3: Registration

As can be seen from the aforementioned steps, the registration solely depends on
the registrar. Once everything is cleared from the registrar’s end, the applicant
 received the copyright and can legally exercise all rights that come with the owner of
that copyright.

Copyright is a form of the intellectual property law. It is registered to protect original

pieces of work such as music, art, literature, cinema/film, photography or a
computer program. There are in-depth categories that can be registered for
copyright by the creators. It will give exclusive and complete rights to the creator of
the work.

3. REGISTRATION OF AN INDUSTRIAL DESIGN:

Introduction:
The statutory definition of ‘Design’ means the features such as shape, configuration,
pattern or color or a combination applied to any article by any industrial process,
which in the finished article appeals to the eye. It does not include any principle of
construction or any trademark, property mark or artistic works. The design should be
new or original and should not have been published in any country before the date
of application for registration.
To protect intellectual property, industrial design registration is a must. The
government department in charge of registration of the industrial design is the
Office of the Controller General of Patents, Designs and Trademarks. Registration
and protecting industrial designs in India are administered by the Designs Act of
2000.

Procedure for Registration:

I. I. Before proceeding with an application for registration for an industrial design, one
should first check and ensure that their design has not been registered previously.

II. Submit a duly filled in registration form with the prescribed fees along with four
copies of the representation of the Design. The drawing should clearly depict the
features of the design from all the views and it must state the view.

III. The Application along with the required documents must be submitted to the
Design Wing of the Patent Office in Kolkata or to any branch office of the Patent
Office in Delhi, Mumbai or Chennai.

IV. On receipt of the application in the Patent Office, the Application is numbered,
dated and taken up for examination. (Please note that unlike Patents there is no
need to file a separate request for examination. Design Applications, once filed are
automatically taken up for examination)

V. If any defects are noticed in the Application, they are communicated to the
Applicant or to his Agent.

VI. The defects must be corrected within a period of 6 months from the official date
of Application.
 VII. If the defects are not rectified, as required by the Controller a personal hearing is
provided to the applicant. The Controller’s decision after the hearing is
communicated in writing (stating reasons) to the Applicant or his Agent.

VIII. The Applicant can appeal to the High Court (within 3 months from the date of
the Controller’s decision)

IX. Once accepted, the Application is notified in the Patent Office Journal.

B. CRITERIA FOR REGISTRATION OF A PATENT:

What Can Be Patented?

Sections 3 and 4 of the Indian Patents Act, 1970 specifically state exclusions to what can
be patented in India. Our previous blog post has comprehensively explained what
cannot be patented in India. That brings us to the question; what can be patented in
India?

At the outset, it has to be mentioned that the answer to this is not set in stone. There
isn't any definitive list as to what can be patented. There are, however, certain criteria
that are required to be met in order to make an invention patentable. The patentability
of an invention is determined by its ability to meet the criteria.

Even before delving into the criteria, it is important to understand the and invention
meaning and patented meaning. According to Section 2(j) of the Indian Patents Act,
1970 an invention means "a new product or process involving an inventive step and
capable of industrial application.", such invention protected under the patent law refers
to patented.

The following criteria determine what can be patented in India:

1. Patentable subject matter:

 The foremost consideration is to determine whether the invention relates to a

patentable subject-matter. Sections 3 and 4 of the Patents Act list out non-patentable
subject matter. As long as the invention does not fall under any provision of Sections 3
or 4, it means it has patentable subject matter (subject to the satisfaction of the other
criteria).

2. Novelty:

The invention must be new or novel, means that the invention must never have been made before,
carried out before or used before. It must show some new characteristic which is not known in
existing public knowledge (called “prior art”) in its technical field. Prior art refers to everything that
has been published, presented or disclosed to the public (example on a website, article or in any
magazine etc).
Novelty is an important criterion in determining patentability of an invention. novelty or
new invention is defined under Section 2(l) of the Patents Act as "any invention or
technology which has not been anticipated by publication in any document or used in
the country or elsewhere in the world before the date of filing of patent application with
complete specification, i.e., the subject matter has not fallen in public domain or that it
does not form part of the state of the art".

Simply put, the novelty requirement basically states that an invention should never have
been published in the public domain. It must be new with no same or similar prior arts.

3. Inventive step or Non-Obviousness:

Inventive step is defined under Section 2(ja) of the Patents Act as "a feature of an
invention that involves technical advance as compared to the existing knowledge or
having economic significance or both and that makes the invention not obvious to a
person skilled in the art". This means that the invention must not be obvious to a
person skilled in the same field as the invention relates to. It must be inventive and not
obvious to a person skilled in the same field.

4. Capable of Industrial Application:

Industrial applicability is defined under Section 2(ac) of the Patents Act as "the invention
is capable of being made or used in an industry". This essentially means that the
invention cannot exist in abstract. It must be capable of being applied in any industry,
which means that the invention must have practical utility in order to be patentable.

These are the statutory criterion for the patentability of an invention. Apart from this,
another important criterion for getting a patent is disclosure of an enabling patent. An
enabling patent disclosure means a patent draft specification must disclose the
invention sufficiently, so as to enable a person skilled in the same field as the invention
relates to, to carry out the invention without undue effort. If the patent specification
does not disclose an enabling patent then a patent will most definitely not be granted.

5. Not publicly/commercially disclosed:

A patent application must be filed prior to any disclosure to the public that is it must not
be known or used in public before filing of the patent application. (though some
countries provide a grace period to waive off such disclosure).

Unit 3

A. Fair use of a Trademark:

A registered 'trademark' accords its owner a negative right to prevent third parties
from inter alia adopting, using or registering an identical or a deceptively similar
trademark. However, such a right is not absolute and subject to the exception of 'fair
use'. The doctrine of 'fair use' is encapsulated under Section 30 of the Trade Marks Act,
1999 ("Act"), which is an affirmative defence available against a claim of infringement by
proprietor of a registered trademark. Specifically, Section 30(1) of the Act lays down the
following broad conditions:

a) Use is in accordance with honest practices in industrial or commercial matters [bona

fide use];

b) Use is not such as to take unfair advantage of or be detrimental to the distinctive

character or repute of the trademark.

'Fair use' of a trademark by any party, other than the proprietor, may be broadly
categorized into –

1) Descriptive fair use – which relates to use of a registered trademark in a descriptive

manner i.e. used in relation to goods or services indicating the kind, quality, quantity,
intended purpose, value, geographical origin, the time of production of goods or of
rendering of services or other characteristics of goods or services, under Section 30(2)
(a) of the Act; and

2) Nominative fair use – which relates to use of a registered trademark by a person in

relation to goods adapted to form part of or to be accessories, provided it is 'reasonably
necessary' in order to indicate that the goods so adapted are compatible with the goods
sold under the trademark, under Section 30 (2)(d) of the Act. Nominative fair use
generally applies to news, commentary, criticism, parody, comparative advertising and
any other non-commercial use of a registered trademark.

The more problematic and hence controversial of the two is the doctrine of 'nominative
fair use' where someone else's trademark is used to refer to the mark owner's goods or
services, without the mark owner's consent. The Courts in India have therefore
subjected 'nominative fair use' defense to an enhanced scrutiny.

In today’s competitive business environment there are certain cases where a

mechanical device, which is an accessory to a final product, is required to be introduced
in the market in way that the user should know that the device is to be used for the final
branded product. Further there are certain services which are provided for the specific
products and to introduce the services in the market it is required to use the brand of a
third party product for which the service is provided. In these types of cases the
registered trademark of a proprietor is used by third party in order identify the product
of registered trademark's proprietor in which the product of the third party is to be
used. For example a mechanic use the trademark of the Hero Company in order to
identify that he specialized in repair of Hero company's vehicle.
Origin of the doctrine

The nominative use doctrine was first introduced in case of New Kids on the Block v.
News America Publishing, Inc1by the U.S. Court of Appeals for the Ninth Circuit. In this
case the defendant has used the name of famous singer for a survey. The singer has
filed a suit of infringement against the newspaper. The court had examined a "New Kids
on the Block survey" performed by the defendant, and found that there was no way to
ask people their opinion of the band without using its name.

Similarly, in case of Playboy Enterprises, Inc. v. Welles2, where Playboy Playmate Terri
Welles used the trademark "Playmate of the Year" as metatags on her website was sued
by the owner of the trademark for infringement. The court held that the defendant in
order to identify that she has been given the title "Playmate of the Year" by the
trademark holder has to use the trademark on her website.

In a recent decision The Century 21 Real Estate v. Lendingtree, Inc.3the third circuit

court in USA held that "many factors traditionally considered in a likelihood of confusion
analysis were irrelevant in cases of nominative fair use and that only four factors
needed to be considered:

(i) degree of consumer care;

(ii) length of time defendant has used plaintiff's mark without evidence of actual
confusion;

(iii) intent of the defendant in adopting the mark; and

(iv) evidence of actual confusion.

After weighing these factors it was then necessary to consider whether the defendant's
use is nominative fair use, by examining:

(i) whether the "use of plaintiff's mark is necessary to describe both plaintiff's product or
service and defendant's product or service," thus scrutinizing defendant's need to use
plaintiff's mark to describe its own products;

(ii) whether defendant uses "only so much of the plaintiff's mark ... as is necessary to
describe plaintiff's products or services; " and

(iii) whether "defendant's conduct or language reflects the true and accurate
relationship between plaintiff and defendant's products or services," because the
defendant may have a relationship with plaintiff that may be inaccurately portrayed by
defendant's use of plaintiff's marks.

These are the important factors in order to consider a use of a registered trademark by
a third party as a nominative fair use. The theory of the nominative fair use has to be
used with the utmost precaution in order to differentiate the cases from the one where
the registered trademark is used only to take unfair advantage of established
reputation of the same.

The Madras High Court in Consim Info Pvt. Ltd vs Google India Pvt. Ltd1, relied upon two
U.S. Ninth Circuit judgments2, to interpret the meaning of the words 'reasonably
necessary' under Section 30(2)(d), and held that for any unauthorized use of the
trademark to be considered a 'nominative fair use', it must meet three tests viz., (i) the
product or service in question must be one not readily identifiable without use of the
trademark; (ii) only so much of the mark or marks may be used as is reasonably
necessary to identify the product or service; and (iii) the user must do nothing that
would, in conjunction with the mark, suggest sponsorship or endorsement by the
proprietor of the trademark.

In Hawkins Cookers Ltd. vs Murugan Enterprises 3, which involved use of the registered
trademark 'HAWKINS' on gaskets by the defendant, the Court held that use of the
trademark by the defendant in relation to refills, spare parts and accessories adapted
for use in or with the goods of the proprietor may not amount to infringement, if the
defendant establishes, (1) that the use of the mark is reasonably necessary for
describing that the article is adapted for use with the plaintiff's goods; (2) that the use
was bona fide, and (3) that the effect of the use complained of is not likely to deceive the
public as to the trade origin. In appeal, the Division Bench of the Delhi Court held 4 that
the original defendant while writing – 'Suitable for Hawkins Pressure Cookers', had
given undue importance to the word "HAWKINS", by printing it in a distinct red color,
and hence disallowed defense of nominative fair use under Section 30(2)(d).

The Delhi High Court, in the landmark judgment, Prius Auto Industries Ltd. vs. Toyota
Jidosha Kabushiki Kaisha5 dealt with the nominative fair use defense, against
unauthorized use of the plaintiff's trademarks 'TOYOTA', TOYOTA Device and INNOVA in
connection with the defendant's car accessories and spare parts. While the Single Judge
of Delhi High Court set aside6 the ex parteinjunction order7 passed retraining the
defendants from using the plaintiff's registered trademarks, the Division Bench 8, which
balancing equities, imposed an interim arrangement (pending disposal of suit) between
parties with their consent, wherein the defendants – (1) were restrained from using
plaintiff's registered marks, except for the purposes of identifying that the defendant's
products can be used in the cars; (2) were to ensure that the words 'TOYOTA' and
'INNOVA' were not written in the same font as written by Toyota; and (3) were to use the
words "Genuine Accessories" only in conjunction with the defendant's (manufacturer of
spare parts) name.

In view of the foregoing, the key factors which the Courts in India look at for assessing
applicability of the 'nominative fair use' defense are – (1) whether such use is bona
fide and reasonably necessary for identification purposes; (2) whether such use is
intended to suggest sponsorship or endorsement with the proprietor; (3) whether such
use is likely to lead to consumer confusion or deception as to the source of origin; and
(4) the manner in which the brand owner's trademark is used and whether stylization
and font is copied.
The Indian Courts have also acknowledged the defense of Nominative fair use in cases
of Infringement which is specifically allowed under the Trademark Act, 1999.

Indian Courts have reinforced that the defense of 'nominative fair use' is an exception
to trademark infringement and therefore is limited in its applicability, aimed at
protecting the rights and interest of the brand owner.

UNIT 4

Infringement of Copyright in Design:

Introduction:
In general terms, infringement with respect to intellectual property rights is the breach of
any of the Intellectual Property Rights including trademark, patent, copyright, design etc
wherein the work of the owner of such intellectual property rights. In other words,
Intellectual Property Rights are infringed when a work protected by Intellectual Property
laws is used, copied or otherwise exploited without having the proper permission from a
person who owns those rights.

Copyright is said to be infringed when works in form of literary, dramatic, musical or artistic
which is original in nature are infringed without the permission of the owner of the work
that has been registered under the Copyright Act, 1957.

Design as per the Designs Act, 2000 has a very restrictive and limited definition which shall
only include “features of shape, configuration, pattern, ornament or composition of lines or
colors applied to any article whether in two dimensional or three dimensional or in both
forms, by any industrial process or means, whether manual, mechanical or chemical,
separate or combined, which in the finished article appeal to and are judged solely by the
eye”.

Infringement:

In order to understand the infringement of copyright in a design, we need to know what

constitutes a design to be qualified as statutorily registered design under the Designs Act,
2000 (hereinafter referred to as the “Act”). To that extent, section 4 of the Act lays down
the following three criteria which are to be considered while a person or proprietor intends
to get their work registered:

1. It has to be new or original. For further clarification, the landmark case of Gammeter
vs Controller of Patents explained that the design does not necessarily have to be
created newly, but can also be used in a unique way on an old design as long as the
usage of the new design on an existing product has not been already discovered
earlier otherwise.
2. It is not existing in the public domain or has been published in any tangible form
within India or outside India as the case may be. This can be explained by citing the
case of Steelbird Hi-tech India Ltd vs SPS Gambhir in which the Court clearly
explained that the design needs to be new or original which is a product of the
 intellectual outcome of a person and has never been in existence before such person
has expressed such design in a tangible form.
3. It is significantly distinguishable from other designs or a combination of designs
already existing in the public domain.
4. Should not have any scandalous or obscene matter present in its content.

A design which is registered as per Chapter II of the Act, section 11 of the Act gives an
advantage to the registered user to not only protect their work under the Act itself but also
can acquire copyright protection for a period of ten years from the same day the work was
registered under the Act. On the registration of a design under the Act the proprietor of the
design acquires the following rights:

1. The exclusive right to apply the design to any article in any class in which the design
is registered;
2. the exclusive right to publish or expose, or cause to be published or exposed, any
article in any class of goods in which the design is registered to which such design is
applied; and
3. the exclusive right to import for the purposes of sale any article belonging to the
class in which the design is registered and having applied to it that design.

For explaining further as to what constitutes as an act of “Piracy of Design”, section 22 (1) of
the Act lays down the following checks that will help determine whether the Design created
or developed is pirated or not:

1. The design which is proposed to be registered or used otherwise for the purpose of
sale should not have “fraudulent or obvious limitation” as to that with a registered
design, until and unless written permission has been acquired from the registered
owner of the registered design. This was clarified in the case of Veerplast
Houseware vs Bonjour International in which the Court considered this particular
check to be confirmed from the point of view of the “customer with average
knowledge and imperfect recollection”.
2. “Substantial differences” should be there between the design which is proposed to
be registered and the design which has been already registered. This was discussed
in a landmark case of Britannia Industries Ltd vs Sara Lee Bakery wherein, the
infringement of the design was judged by matching the old design with the newly
registered design and in the instance of substantial similarities. It was an important
case since the designs of both the parties were to be considered from the
perspective of a child which was found out by the Court to having substantial
differences as against the contentions which were made by the plaintiff.

Contravention of any of the following checks mentioned above shall be discussed in the next
chapter of this article which provides remedy as against the wrongdoer or the person who
has infringed upon the rights of the person who has already registered their design as under
the Act.

Remedies against Infringement of Copyright in a Design:

In pursuant to the previous chapter, we have established as to what constitutes an
infringement of copyright in design and the different case laws which had further helped in
developing the understanding of the concept. In this chapter, the different remedial
mechanisms shall be explained below with reference to the relevant provisions:

1. Section 22(2) of the Act- Subsection 2 of section 22 provides that if any person has
been found in contravention of section 22(1) of the Act which has been discussed in
the previous chapters, the person who has infringed the rights of the registered
proprietor of the design shall be liable to pay not more than INR 25,000 which will be
recoverable towards contract debt. The registered proprietor also has the right to
file a suit for injunction, not lower than that of the Court of a District Judge, as
against the person wherein, if injunction is passed against the person, he/ she shall
be liable to pay such damages awarded by the Court other than stopping the
wrongdoer to use the infringed design.
2. Section 55 of the Copyright Act, 1957 provides for civil remedies that can be availed
by the registered proprietor wherein, if any person who is intentionally infringing
such work as covered in the Copyright Act, 1957 are entitled to seek remedy in the
form of either claiming damages, accounts or by filing a suit for injunction against
the person who has infringed the right of the registered proprietor.
3. The registered proprietor is also entitled to receive such profit which was gained by
the wrongdoer during the time of using the infringed design of the registered
proprietor.
4. The registered proprietor may also seek an interlocutory injunction as under Order
39, Rules 1 and 2 of The Code of Civil Procedure, 1908 wherein, the registered
proprietor has to establish a prima facie case showing “balance of convenience” in
its favour. This can be further explained by citing the case of Novartis AG vs Mehar
Pharma wherein, the Court held that an “interlocutory injunction will not be granted
where damages will provide an adequate remedy should the claim succeed”.
5. As under Administrative Remedies, the registered proprietor of the design can file an
application under section 53 of the Copyright Act, 1957 before the Registrar of
Copyright for stopping the import of products which are subjected to infringement
of his/ her right under the Copyright Act, 1957 wherein, after necessary examination,
may confiscate such products which are likely to infringe the rights of the registered
proprietor.
6. Section 63 of the Copyright Act, 1957 provides for criminal remedies that can be
availed by the registered proprietor wherein, if any person who is intentionally
infringing or abets such infringement of such work as covered in the Copyright Act,
1957 or otherwise (meaning work connected to designs as under the Act), such
person shall be punished by way of imprisonment for a minimum of 6 (six) months
which may extend up to 3 (three) years along with fines amounting to a minimum of
INR 50,000 which may extend to INR 2,00,000.
7. Section 63A of the Copyright Act, 1957 provides for punishment on second and
subsequent crime wherein criminal remedies can be availed by the registered
proprietor. Such punishment shall consist of imprisoning the wrongdoer for a
minimum 1 (one) year which may extend up to 3 (three) years along with fines
amounting to a minimum of INR 1,00,000 which may extend to INR 2,00,000.
Conclusion:

It can be safely concluded that though there has been effective provisions and precedents
that have taken care of the loopholes and issues that have popped up from time to time in
this subject- matter, India still needs to clearly lay down a more lucid, coherent and clear-cut
laws based on such type of infringement. The reason for such need is because more and
more people are entering into the line of business wherein, the trend of startups have
boosted the need and importance of intellectual property rights. Such requirement will
automatically give rise to more complicated issues that may or may not be foreseen today
but a well- structured and articulated law will make people realize as to what are the rights
as well as the duties that come with acquiring such rights on a more coherent level.

UNIT 5

Concept of Copyright Societies in India:

Collective administration of copyright by societies is a concept where management and

protection of copyright in works are undertaken by a society of authors and other owners of
such works. No authors and other owner of copyright in any work can keep track of all the
uses others make of his work. When he becomes a member of a national copyright society,
that society, because of its organisational facilities and strength, is able to keep a better vigil
over the uses made of that work throughout the country and collect due royalties from the
users of those works. Because of the country’s membership in international conventions,
the copyright societies are able to have reciprocal agreements with similar societies in other
countries for collecting royalties for the uses of Indian works in those countries. Therefore, it
is in the interests of copyright owners to join a collective administration organisation to
ensure better protection to the copyright in their works and for reaping optimum economic
benefits from their creations. Users of different types of works also find it easy to obtain
licences for legal exploitation of the works in question, though the collective administrative
society.

Copyright Societies:
A copyright society is a society usually encompassing of authors and other owners of
copyright of works where there is a collective administration of copyrights along with proper
management and protection of copyrights. One of the primary functions of a copyright
society is to oversee and regulate the issuance of licenses and collection of royalties in
respect of works, on behalf of the owner. No person or group shall perform the aforesaid
function without being registered as a society under the provisions of the Indian Copyright
Act while the same does not preclude the owner, in his capacity from doing the same. The
registered copyright societies in India are the Indian Performing Rights Society, Indian
Reprographic Rights Organization and Indian Singers Rights Association.

As the name suggests, a copyright society is a collective society which is formed under
Section 33 of the Copyright Act, 1957 and is, as mentioned above, formed by
authors/creators and other owners of such copyrights and is registered under the Central
Government. To form a society, the minimum membership requirement is seven (7).
Typically, a copyright society is registered to carry on business in respect of a particular class
of work.

GOVERNING LAW

i. Copyright Act:

In India the Copyright Act governs the protection of copyright for original works. Copyright
protects the rights of authors, i.e. creators of intellectual property in the form of literary,
musical, dramatic and artistic works and cinematograph films and sound recordings, from
unauthorized uses. Copyright lasts for 60 years. In the case of original literary, dramatic,
musical and artistic works the 60-year period is counted from the year following the death
of the author. Whereas, in the case of cinematograph films, sound recordings, photographs,
posthumous publications, anonymous and pseudonymous publications, works of
government and works of international organisations, the 60-year period is counted from
the date of publication.

ii. Copyright (Amendment) Act, 2012:

The Copyright Act has been amended five times i.e., in 1983, 1984, 1992, 1994, 1999 and
2012. The Copyright (Amendment) Act, 2012 (Amendment) is of vital importance for the
purpose of this article. The main reasons for Amendments include bringing it in conformity
with international standards established by WIPO Copyright Treaty (WCT) and WIPO
Performances and Phonograms Treaty (WPPT).2

With the Amendment changes were made in Section 33 of the Copyright Act, wherein Sub-
section (3) A was inserted, the proviso to which stated that "every copyright society already
registered before the coming into force of the copyright (amendment) Act, 2012 shall get
itself registered under this chapter within a period of one year from the date of
commencement of the Copyright (Amendment) Act, 2012." Other amendments include the
introduction of Section 33A pertaining to Tariff scheme, omission of Section 34A,
substitution of the phrase 'owners of rights' with 'authors and other owners of right' in
Section 35 etc.

Registration of Copyright Society in India:

The following is the procedure to register a copyright society:

Any group of persons, consisting of seven or more authors or owners of copyright

(hereinafter referred to as ‘Applicant’) formed for the purpose of carrying of business of
issuing or granting licenses in respect of any class of works for which it is registered may file
an application with the Registrar of Copyrights on Form VIII.

Every application shall be accompanied with:

1. A true copy of the application by which the Applicant is established or incorporated.
2. Consent of all the members included in the application to act as members of the
Governing Body of the Application.
 3. A declaration containing the objectives of the Applicant, the bodies through which it
will function and arrangements for accounting and auditing.
4. An undertaking to the effect that the instrument is established or incorporated
provides for conforming the same to the provisions of the Act and these Rules.

The registration duration for a copyright society is for a period of five (5) years which may be
renewed from time to time before the end of five years by filing an application with
Registrar of Copyrights under Form IX. However, discretion rests upon the Central
Government to renew the registration which is done after considering the report of
Registrar of Copyrights on the working of the copyright society under Section 36.

Functions of a copyright society:

The copyright Societies discharge the following functions:
1. It grant license of the Copyright in the work for reproduction, performance or
communication to public.
2. It locates the infringement of the Copyright and initiates legal proceedings.

To regulate these activities of such copyright societies Sections 33 to 36A have been enacted
under the Copyright Act 1956.

STATUTORY PROVISIONS:
Section 33(1) provides that no person or association of person allowed to carry on the
business of issuing or granting licenses in respect of any work in which Copyright subsists or
in respect of any rights conferred by the Act except under a registration.

However the owner of Copyright in his individual capacity will continue to have the right to
grant licenses in respect of his own works with his obligation if any as a member of the
registered Copyright Society.

An application may be made to the Registrar of Copyright. Every application should satisfy
the conditions. And then the Registrar shall forward the application to the Central
Government which may, having regard to the interests of the author and other owner of
rights under this Act, the interest and convenience of the public and in particular of the
group of persons who are most likely to seek licenses in respect of the relevant rights and
the ability and professional competence of the applicants, register such association of
persons as a Copyright Society subject to conditions as may be prescribed.

Central Government shall not ordinarily register more than one Copyright Society to do
business in respect of the same class of works.

Section 33(4) states that the Central Government, if satisfied that the Copyright Society is
detrimental to the interest of the owners of rights concerned. Then in this case the Central
Government cancel registration of such society after such inquiry as may be prescribed.

Powers of a Copyright Society:

According to Section 34 (2),

(a) A Copyright Society may accept from an owner of the rights exclusive authorization to
administer any right in any work by issue of licenses or collection of license fees or both.
(b) The owner of rights has the right to withdraw such authorization without prejudice to
the rights of the Copyright Society under any contract, subject to certain conditions
prescribed.

The Copyright Society may also enter into any agreement with any foreign society or
organization administering rights corresponding to rights under the Act to entrust to such
Society or organization the administration in any foreign country of rights administered by
the said Copyright Society in India and vice versa. This is subject to the condition that there
is no discrimination in regard to the terms of licenses or the distribution of fees collected
between rights in Indian and foreign works.

Subject to such conditions as may be prescribed the Copyright Society has the following
power:
i. To issue licenses under Section 30 in respects of any rights under the Act.

ii. To collect fees in pursuance of such licenses.

iii. To distribute such fees among owners of rights after making deductions for its
expenses.

iv. To perform any other functions consistent with the provision of Section 35 i.e.;
control over the Society by the owner of rights

Control over the copyright society by the authors and other owner of rights.‐ (Section 35
of Copyright Act,1957)

Every Copyright Society will be subject to the collective control of the owner of rights whose
rights it administers in India.

Foreign Societies are exempted from this power.

It shall in such manner as may be prescribed:

a) obtain the approval of such owners of rights for its procedure of collection and
distribution of fees,

b) obtain approval of the owners of rights for utilization of any amounts collected as
fees for any purpose other than distribution to the owners of rights,

c) and provide to such owner regular full and detailed information concerning all its
activities in relation to the administration of their rights.

d) All fees distributed among the owners of rights should, as far as may be,
distributed in proportion to the actual use of their works. (Section 35).

Records to be maintained by copyright societies

Every Copyright Society must maintain proper accounts and other relevant records and
prepare an annual statement of accounts.

They have to maintain the accounts in the form and the manner as prescribed by the
Central Government in consultation with the Comptroller and Auditor General.

The accounts of each Copyright Society in relation to the payments received from the
Central Government will be audited by the Comptroller and the Auditor General of India.

And if expenses incurred in connection with such audit, then it will be payable by the
Copyright Society to the Comptroller and the Auditor General.

The Comptroller and the Auditor General or any other person appointed by him in
connection with the audit of accounts has the right to demand the production of books,
accounts and other documents and papers and to inspect any of the officers of the
Copyright Society for the purpose only of such audit.

The accounts of each of the Copyright Societies as certified by the Comptroller and Auditor
General together with the Central Government who shall cause the same to be laid before
each House of Parliament.

As per Copyright Rules, 1958:

As per Rule 14 M of the Copyright Rules, 1958,

Every Copyright Society shall maintain proper accounts of the fees and royalties collected in
a financial year, payments made out of such collections to the owners of rights and other
expenditure incurred for meeting administrative expenses and related matters with the
approval of the owners or rights. However, a Copyright Society shall not spend more than
fifteen percent of its collection towards its administrative expenses.

Every Copyright Society shall get its accounts audited by a Chartered Account annually.

Tariff Scheme by copyright societies.

As per Rule 14 J of the Copyright Rules, 1958, Copyright Society shall frame a scheme of
tariff to be called the ‘Tariff Scheme’.

It helps to set out the nature and quantum of fees or royalties which it purposes to collect in
respect of such copyright or other rights administered by it within three months from the
date on which it has become entitled to commence its copyright business.

Distribution Scheme—
Rule 14 K of the Copyright Rules, 1958, the Copyright Society shall frame a scheme to be
called the “Distribution Scheme”.

It setouts the procedure for collection and distribution of the fees or royalties specified in
the Tariff Scheme within three months from the date on which Copyright Society has
become entitled to commences its copyright business. Any distribution under the
Distribution Scheme shall, as far as possible, be in the proportion to the income of the
Copyright Society from actual use of the work or works of each owner of rights.

Meeting of a copyright societies.

i. After the preparation of the Tariff Scheme and the Distribution Scheme, the Copyright
Society shall call a general meeting of the owners of rights whose names are recorded in the
‘Register of Owners’ to approve the same.

ii. A notice shall be annexed with a copy of proposed Tariff Scheme and Distribution Scheme,
shall be given to each owners of rights of the meeting, of not less than twenty- one clear
days.

iii. The above notice shall specify that any owner of rights who objects to the Tariff Scheme
or Distribution Scheme shall be entitled to withdraw the authorization given to the
Copyright Society to administer any right in his work.

iv. The Copyright Society shall keep the record of the owners of rights who gave have given
their approval and those who have rejected thereto.

v. Approval by owners of rights for the Schemes shall be by a majority of such owner
present in person.

vi. The quorum for a general meeting shall be one- third of the members.

The Copyright Society shall not amend an approved Tariff Scheme or Distribution Scheme
except with the consent of the owners obtained at a subsequent general meeting called for
the purpose.

Documents to be presented at the Annual General Meeting of Owners of Rights

rights:
According to Rule 14 O of the Copyright Rules, 1958, every Copyright Society shall place
before its annual general meeting the following documents, namely:
i. An up-to-date list of the owners of rights, their names and addresses as recorded in the
Register of owners maintained by the Copyright Society.
ii. Audited accounts of the society for the previous year,
iii. The Tariff Scheme 
iv. The Distribution Scheme,
v. A statement approved by its Governing body (by whatever name called) setting out a full
and detailed account of all its activities during the previous year; and
vi. Details of the budget estimates for the succeeding year and a programme of action for
the succeeding year

Returns to be filed by the copyright societies with the Registrar of Copyrights.

Under the Rule 14 P of the Copyright Rules, 1958. Every Copyright Society shall file a return
called the Annual Return with the Registrar of Copyrights within one month from the
conclusion of each annual general meeting of owners setting out the following details,
namely:

i. The date of the annual meeting of the owners held immediately preceding the filing of the
Annual Return, the number of owners attended the meeting in person or by proxy, and the
minutes of such meeting;
ii. The up- to – date list of the owners of rights , their names and addresses as recorded in
the Register of owners maintained by the Copyright Society;
iii. Audited accounts of the Copyright Society;
iv. The Tariff Scheme;
v. The Distribution Scheme;
vi. A statement approved by its Governing body or Board of Directors setting out a full and
detailed account of all its activities during the year in relation to the rights of the owners.

Code of Conduct for copyright societies

Every copyright society shall conform to the following Code of Conduct as follows:‐
(1 )Every Society shall make available on its website‐
(a) certificate of registration as a Copyright Society;
(b) basic documents of governance such as memorandum of association, articles of
association, constitution or charter;
(c) list of all members of General Body;
(d) names and address of Chairman, other members of the Governing Council and
other officers of the society;
(e) right or set of rights in the specific categories of works for which the copyright
society has been authorised to issue or grant licences;
(f) all schemes of the society;
(g) annual report and audited accounts as approved by the General Body; (h) licence
agreement formats;
(i) details of all existing licences other than those clauses in the licence having
commercial sensitivity;
(j) foreign societies with whom there are agreements to collect royalties and the
details of the agreement other than those clauses having commercial sensitivity;
(k) details of the complaint or Grievances Cell; and
(I) the code of conduct.
(2)The members shall be‐
(a) treated fairly, honestly, impartially, courteously, and ensure that its dealings with
them are more transparent;

PHONOGRAPHIC PERFORMANCE LIMITED (PPL) AND INDIAN PERFORMING RIGHTS

SOCIETY (IPRS)

The Indian Phonographic Industry (IPI), the association of phonogram producers, was
established in 1936. Subsequently, IPI members decided to form a specialised body to
administer their public performance and broadcasting rights, and so Phonographic
Performance Limited (PPL) came into being in 1941. PPL got itself registered under Section
33 of the Copyright Act as a copyright society.
Indian Performing Rights Society (IPRS) is a representative body of owners of music, viz. the
composers, lyricists (or authors) and the publishers of music.4 It came into existence in
1969. It is a non-profit making organization and is a company limited by guarantee and
registered under the Companies Act, 1956. After the Copyright (Amendment) Act, 1994
which came into effect in 1995, IPRS got registered under Section 33 of the Copyright Act as
a Copyright Society to do the business of issuing licenses for usage of musical works and
accompanying literary works.

IMPACT OF COPYRIGHT AMENDMENT ACT, 2012 ON PPL AND IPRS

The Amendment came into force on June 21, 2012 and hence as per the Amendment, IPRS
and PPL were to re-register by June 21, 2013. Both the entities did apply for their re-
registrations, but subsequently both withdrew their applications for re-registration with the
copyright office and thereby expressed their desire to discontinue as registered copyright
societies.

Due to their failure to re-register, IPRS and PPL, which were earlier copyright societies,
automatically got de-registered on June 21, 2013 as a consequence of the Amendment.
Both PPL and IPRS have chosen not to re-register as copyright societies but are now
conducting business as private limited companies, registered under the Companies Act.
According to Section 33 of the Copyright Act, the business of issuing or granting licences can
only be carried out by a registered copyright society and as stated above IPRS and PPL
ceases to be registered copyright societies since June 21, 2013.

In Leopold Café Stores v. Novex Communications Pvt. Ltd. the major issue looked into by
the Bombay HC is whether Novex was entitled to grant licenses on behalf of Copyright
Owners in various works? Brief facts of the case are that M/s Leopold Cafe, one of the most
popular restaurants in Mumbai, obtained an order on June 26, 2014 against Novex
Communications, claiming to be an authorized agent of Copyright Owners such as Yash Raj
Films and Shemaroo. This order restrained Novex from issuing any licenses as per Section 33
of the Copyright Act, which prohibits any person or association of persons, with the
exception of Copyright societies that are duly registered under the Act, from carrying out
business of issuing or granting licenses.

In this case hon'ble Bombay HC observed that "every agent also "carries on business", but
that is the business of agency, with the agent functioning as such, i.e., clearly indicating that
it is acting on behalf of another, one who holds the copyright. This is the only manner in
which both Section 33 and Section 30 can be harmonized. An absolute bar even on an
agency, invoking Section 33, would undoubtedly run afoul of the plain language of Section
30 and render the words "or by his duly authorised agent" entirely otiose." After hearing
both the parties, the Court held that Novex was not allowed to be in the business of issuing
or granting licenses as per Section 33 of the Copyright Act. However, they could continue
issuing licenses as an authorized agent of Copyright Owners under Section 30 of said Act.

Also, as a result of the Leopold Café case, the National Restaurants Association (NRAI) in
December 2015 wrote letters to IPRS, PPL and Novex stating that all three companies are
wrongly asserting rights to grant and issue license under Section 30 of the Copyright Act and
that Section 33 mandates that the business of issuing and granting license should be carried
out only by a registered copyright society.

Hence, applying the above judgment to the current situation of IPRS and PPL, it seems that
there is a conflict between the application of Section 30 and 33 with regards issuing and
granting of license. Further, it appears that the licenses can then be issued by PPL & IPRS
only in the name of the copyright holder, and not in their own name. However, the practice
of PPL and IPRS is quite clear that they issue licences in their own name and stage organisers
are required to acquire licenses from them directly.

CASE LAWS:
Indian Performing Rights Society v/s Debashis Patnaik and Another’s, 2007.
In this case Justice Geeta Mittal of the Delhi High Court while examining the claim of the
copyright infringement made by the IPRS against the a hotel in Orissa, held that the
defendants are liable for the infringement of copyright by communication of musical works
of the plaintiff to the public in the hotel rooms in the defendant’s hotel without
authorization of or permission from the IPRS.

Held:
Even if the defendant stayed away from the judicial proceedings, a plaintiff could not be
deprived of its claim for damages. 

The Court decreed the suit in favour of IPRS, granting a sum of RS. 141788/- towards the
actual the compensatory damages and the sum of three lakh rupees as punitive damages,
along with the interest of 10% a year on the amount from the date of decree till payment.

M/s Phonographic Performance Ltd. v M/s Hotel Gold Regency & Others (2008)
FACTS:
In this case the Delhi High Court decision has made the life of the Copyright owners and the
Copyright Societies more complicated. As we known that the Copyright Societies in their
capacity as licensees usually institute copyright infringement suits in their names on behalf
of all their members who are actual copyright owners.

HELD:
This judgment however has put an end to the practice by holding that as per the scheme of
the Copyright Act, 1957, the Copyright Societies do not have any right to institute a suit for
copyright infringement in their name and therefore only a copyright owner or an exclusive
licensee can sue for copyright infringement.
 UNIT 2

PATENT INFRINGEMENT:
A patent is a form of intellectual property that gives the right to an inventor who has
created something new, useful and non-obvious. Patent rights give owners the privilege
to prevent another from taking advantage of their invention and allows them a fair
return on their work and investment. A patent work always requires to be defined in
"full, clear, and, concise" terms.

Sometimes, copying of the patent might not be a literal imitation, but may provide the
same effect. If such copying is allowed, the purpose of granting the patent rights to the
inventor will be meaningless. It will become easy for any person to imitate the patent by
making minor changes and enjoy returns larger than those accruing to the original
inventor. To counter such behavior, Doctrine of Equivalents was introduced. It was
decided by court that infringement may occur even though the literal language of the
claims was avoided.

Doctrine of Equivalent in Patent Infringement

The violation of the exclusive rights of the patent holder leads to patent infringement.
Any person is liable to infringement if he exercises the exclusive rights of the patent
holder without the patent owner's authorization or license. Section 104 to 114 of the
Indian Patent Act 1970 provide guidelines related to patent infringement. Two kinds of
patent infringement are defined - Direct Patent Infringement and Indirect Patent
Infringement (Doctrine of Equivalents).

Direct Infringement is the most common type which occurs when a product that is close
to any patented product or invention is used commercially or marketed without
permission from the owner of the patented product or invention. Patent infringement
generally falls into two categories - literal infringement and infringement under the
doctrine of equivalents. When each element claimed is identical to the allegedly
infringing device or process, it is literal infringement.

A claim may be infringed under the doctrine of equivalents if it falls under the "triple
test", i.e. equivalence holds when the substituted elements perform substantially the
same function in substantially the same way to obtain the same result.1
What is an "All Elements" test?

The "All Elements", test says that the doctrine of equivalents must be applied to all the
individual elements of the claims and not the claimed invention as a whole. It is
necessary to prove that every element of the patented invention, or its substantial
equivalent, is present in the accused product or process.

The elements of the patented invention must have substantial equivalents in the new
invention. This means that they must meet the rules of the triple identity test.
Equivalency should only be considered after a claim has been filed. It should not occur
when an invention is patented.2

The theory related to Doctrine of Equivalents is based on the triple identity test, i.e. if
two devices do the same work in substantially the same manner, and attain
substantially the same output, they are considered to be same, even though they vary
in the name, form, or shape.

Few factors related to substantiality are:

 Whether persons skilled in the art actually know of the equivalence of the
claimed and accused inventions.
 Whether persons skilled in the art could have known of the equivalence.
 Whether he had intended to copy, or, rather intended to design around,
unintentionally arrived at the same result.

Under the doctrine of equivalents, a patent claim may be found to infringe if there is
"equivalence" between the elements of the accused product or process and the claimed
elements of the patented invention, even if that does not literally infringe upon the
express terms of patent claims.3

Position in India: Doctrine of Equivalents

A case of Ravi Kamal Bali vs Kala Tech and Ors brought forward the doctrine in India.
The suer, instituted an infringement suit seeking an interim injunction preventing Kala
Tech, the defendant, from making, selling or distributing tamper proof locks/seals as it
would be the infringement of his patent. He argued that Kala Tech's perform the same
work, in substantially the same manner and gives the same output thereby contributing
to the infringement. He asked the court to apply Doctrine of Equivalents, while
considering the question of infringement of patents. Although the interim injunction
was not granted, the importance of the case lies in that, it was the first case where the
doctrine of equivalents was discussed in India.

In other cases like, the case of Bishwanath Prasad Radhey Shyam vs Hindustan Metal
Industries, it was observed by the Supreme Court that the proper way to interpret any
specification is to first read the description of the invention and then see what is
claimed in the invention, as the patentee cannot claim more than he desires to patent.
The application of the doctrine of equivalents in the matters of infringement is a big
step for the Indian Judiciary, the judgment has also received severe criticism as the High
court has several times failed to take into account the legal bars to the application of
the doctrine as recognized by the US Judiciary in several matters. 4

Conclusion

Despite the doctrine having been around for almost 150 years, a sorted, linguistic
framework is yet to evolve. It creates ambiguity and difficulty in application. If a member
of public creates an invention, even after looking into the literal scope of the claims and
falling outside of it, might later find to have infringed the same patent under the
doctrine of equivalents. Finding of equivalence is a determination of fact, proof can be
made in any form through testimony of experts skilled in the field or an authoritative
document on the subject. With reference to India, it can be concluded that so far there
have been very few cases dealing with patent claim infringement. In spite of that, the
pace at which technological advancement is taking place, the Indian judiciary is likely to
face similar cases in near future. India can formulate its own theory based on sound
techno-legal reasoning in striking a balance between conflicting interests of protection
and innovation.5