1 2

somewhat on the notion of reward to regulate the use and

Overview of Intellectual Property Right Laws exploitation of it and he should be capable to preclude others from

Intellectual property can be explained as a theoretical or virtual taking bigoted advantage of his efforts. That is why the resolutions

product created from the intellectual capabilities of a certain person. must be granted to the inventor to shield his ideas and violation

For example, an author writes a book, and that book is his from others which in turn is done by the intellectual property law.

intellectual property. A painter paints a picture, and that painting is Breach of other’s rights and practicing counterfeiting is identical

his intellectual property. An engineer creates a design, and that to theft of goods. The intellectual property law shields the

design is his intellectual property. Accordingly, a book, a picture, a intellectual property owner from the infringement and

song, a music note, a design, a product etc. which is the invention counterfeiting. Intellectual property is an umbrella term covering

of one’s mind and intelligence is an intellectual property. Intellectual patents, trademarks and copyrights, and many other forms of

property designed in this way may turn out to be useful for others. intellectual property.

For example, a design created by someone can be used for Earliest known use of the term ‘Intellectual Property’ had taken

production of goods or a trademark created by a company has a place in the Massachusetts Circuit Court ruling in the patent case

goodwill in the market. Thus, it has a financial value which must Davoll et al. v. Brown).

be protected. Henceforth, the theory of protection of intellectual Intellectual Property Law is one of the fastest-developing areas of

property right has been brought under the prospect of law where law. In fact, the only bounds on the development of this area of

the owners are conferred certain exclusive rights to a variety of law are the limits of human creativity. And if the past few million

intangible assets such as literary, musical, artistic works, years are anything to go by, that limit is truly meaningless! The

discoveries, inventions, words, phrases, symbols, designs, etc. question ‘What is intellectual property?’ sounds straightforward,
and yet, no two jurists seem to agree quite completely on the answer,
The notable reason for the enhancement of intellectual property
or even on the reasons behind the existence of such a concept. A
law is that a person who creates a work or has a novel idea which
simpler way to frame this question may be: What is Intellectual
he formulates, has a right established partly on morality and
Property Law?

3 4
It is an area of law that deals with legal rights associated with  Trademarks: Covers marks, symbols, names, trade dress.
creative or intellectual effort, or commercial reputation and
 Copyrights: Protects rights in musical works, dramatic
goodwill. There is a vast array of property that falls within the
works, photographs, paintings, and other works of art, such
ambit of this area of law, and includes plays, songs, movies, books,
paintings, designs, distinguishing marks used by manufacturers, as motion pictures, and sound recordings.
and inventions. As the term ‘intellectual property’ suggests, it is  Patents: Applies to areas such as technology, chemicals,
usually property that is a product of the human mind. Because
and pharmaceuticals.
of this, it is essentially intangible in nature. You should also keep
 Designs: Covers industrial designs.
in mind that the test to examine whether a property is ‘intellectual
property’ is to examine if one has created something novel or  Domain names: As the term suggests, it covers Internet
innovative that represents an addition to the existing form of ideas. domain names.
Such rights are not usually dependent upon the value or quality of
Some new forms of intellectual property rights and laws that have
the creative expression or innovation. For instance, a poorly made
emerged in recent times are as follows:
painting will be as eligible for copyright protection as much as
one that is made well — the right lies in the making, not in the
 Geographical indications, appellations of origin, and
quality of the final creation. On the other hand, a creation that is
indications of source.
mundane, generic, already in existence, in the public domain, or
owned by someone else will not qualify as intellectual property.  Topography of integrated circuits

 Undisclosed information; and

To ensure that we can sensibly deal with such a huge assortment
of property, Intellectual Property Law has traditionally been  Biodiversity, traditional knowledge, and folklore.
classified further into the following areas, based on the rights that
are awarded to the creators of each form of property:

5 6
Rights in Intellectual Property protection for know-how under confidential information, and trade
secrets, merely by virtue of ownership or use.
Like real property, intellectual property has a bundle of rights that
allows its owner to prevent others from accessing the protected matter, The word ‘property’ tells us that intellectual property, like any other
also helps in exploiting and controlling their intellectual property. form of property, consists of a bundle of rights in the hands of the
Intellectual property rights are, in essence, negative rights. This owner. The owner of intellectual property can, therefore, deal with
means that they allow one to prohibit certain acts with respect to it in much the same manner that the owner of any property can
their intellectual assets. Thus, it is possible to create value in that deal with his property:
property if others are interested in acquiring the product or innovation.
 It can be transferred, in whole, or in part, to another person.
Intellectual property is treated as movable property, and therefore
can be owned, transferred, licensed, and assigned, and is also subject  It can be exploited for commercial profit; and
to taxation and stamp duty. The major features that distinguish it  It can be subject to exclusive use by the owner.
from other forms of property are its intangibility and non- In the 17th and 18th Centuries in Europe, two British authors —
exhaustion by consumption. Rights in intellectual property are John Locke and Edward Young — were particularly influential
granted by a nation to an inventor, author, or originator of products in nurturing the concept of ownership of intellectual property. John
that reflect his intellectual effort and ingenuity. Locke, in his Second Treatise, included the ownership of creations

Registered and Unregistered IP rights and ideas as a part of natural property rights, which relate to his
labour justification theory. He viewed the labour of an individual
Intellectual property rights can also be further classified based on
as belonging to the individual, and proposed that when a person
how rights are acquired therein. For certain kinds of property —
takes from the State what Nature has provided to it as a common
such as patents, trademarks, and design rights — registration is
resource and mixes his labour with it, he creates property for
a condition for ownership. On the other hand, one may acquire
himself.Since labour adds value to the goods and converts commons
rights in copyright, common law trademarks, database rights, and

7 8
into property, the labourer deserves to be rewarded to encourage
innovation and excellence. The Law of Copyright
A few decades later, Edward Youngdiscussed how authors inject ‘Copyright’ is a right or protection given by the copyright law to
their personality into their works and argued that authors should
creators or authors of literary, dramatic, musical, and artistic works
have a perpetual right to their work. This is known as the personality
and producers of cinematograph films and sound recordings.
justification.
It is a bundle or collection of rights, which include the rights of
Johann Gottlieb Fichte conceptualised protection for intellectual
reproduction, communication to the public, adaptation, and
property by differentiating between work and ideas. According to
him, an idea belongs to society whereas the idea’s original unique translation of the work. The only criterion to determine whether a

expression belongs to the author. person is entitled to copyright protection is ‘Originality in

Expression’.
Support for intellectual property is also found in the utilitarian
philosophy, which addresses the relationship between the social Copyright ensures certain minimum safeguards of the rights of
benefits and social costs of an action. The utilitarian philosophy states authors over their creations, thereby protecting and rewarding
that an action is assumed to be favourable and should be encouraged creativity. Creativity being the keystone of progress, no civilized
when it:
society can afford to ignore the basic requirement of encouraging

 Induces people to behave in ways that increase socially the same. Economic and social development of a society is
valuable goods and services; and dependent on creativity. The protection provided by copyright to

 Distributes those goods and services in a manner that the efforts of writers, artists, designers, dramatists, musicians,

maximises the net pleasures people reap from them. architects and producers of sound recordings, cinematograph films
and computer software, creates an atmosphere conducive to

9 10
 creativity, which induces them to create more and motivates others that was brought in this Act was the criminal sanction for
to create. infringement. The 1914 Act was constantly amended several times.

Brief History of Copyright Law In India Subsequently, India saw the third phase of its copyright law

The world’s first copyright law, the Statute of Anne, was enacted evolution in the introduction of the Indian Copyright Act, 1957

in England in 1710. The progression of Copyright Law in India which was enacted to follow the provisions of the Berne

is spread over three phases. The law of copyright was introduced Convention. This Act was enacted by Independent India and is

in India during the reign of the British Rule in India via the British the main Act by which we are governed till date.

Copyright Act, 1911. This Act had very different provisions in The copyright of foreign works is also protected in India. Copyright
comparison to today’s law. The term of the Copyright was lifetime of nationals of countries who are members of the Berne Convention
of the author plus seven years after the death of the author. for the Protection of Literary and Artistic Works, Universal
However, the total term of copyright cannot exceed the period of Copyright Convention and the TRIPS Agreement are protected in
forty-two years. The government could grant a compulsory licence India through the International Copyright Order, as if such works
to publish a book if the owner of copyright, upon the death of the are Indian works. Copyright as provided by the Indian Copyright
author, refused to allow its publication. Registration of Copyright Act is valid only within the borders of the country. To secure
with the Home Office was mandatory for enforcement of rights protection to Indian works in foreign countries, India has become
under the Act. This was the first phase. a member of the following international conventions on copyright

The second phase was in 1914, when the Indian legislature under and neighbouring (related) rights:

the British Raj enacted the Copyright Act of 1914. It was almost  Berne Convention for the Protection of Literary and
like the British Copyright Act of 1911. However, the major change Artistic works.

11 12
  Universal Copyright Convention. India is a member of most of the important international conventions
 Convention for the Protection of Producers of Phonograms governing the area of copyright law, including the Berne Convention
against Unauthorised Duplication of their Phonograms. of 1886 (as modified at Paris in 1971), the Universal Copyright
 Multilateral Convention for the Avoidance of Double Convention of 1951, the Rome Convention of 1961 and the
Taxation of Copyright Royalties. Agreement on Trade Related Aspects of Intellectual Property Rights
 Trade Related Aspects of Intellectual Property Rights (TRIPS) (TRIPS).Initially, India was not a member of the WIPO Copyright
Agreement Treaty (WCT) and the WIPO Performances and Phonograms Treaty
The copyright protection in India is granted under The Copyright (WPPT) but subsequently entered the treaty in 2013.
Act, 1957 where the term ‘copyright’ is not defined but the general
The Doctrine of Originality
connotation of the term copyright refers to the ‘right to copy’ which
is available only to the author or the creator, as the case may be. As per Section 13 of the Indian Copyright Act, copyright subsists
in dramatic, artistic, musical works as well as cinematographic films
Thus, any other person who copies the original work without the
and sound recordings which are ‘Original’. The work needs to be
permission of the author or the creator would be amount to
original meaning that the expression needs to be original. The
infringement under the Copyright Act as copyright ensures certain
Copyright Act does not define the term ‘originality’ but the Indian
minimum safeguards of the rights of authors over their creations.
courts have relied on various doctrines laid down by the foreign
It is important to note that copyright protects the expression and not courts.
the content or substance of the work. For example, an author writes
In University of London Press v. University Tutorial Press1, it was
about making of an aircraft. Here, the idea of making of the plane is
laid down that the copyright over a work arises and subsists in
not protected but only the way of expressing that idea is protected.
those works upon which skill and labour is spent rather than the

13 14
inventive thought. This is more popularly known as the ‘sweat of midway between ‘sweat of the brow’ and ‘minimum modicum of
the brow’ theory. This ‘sweat of the brow’ theory was adopted in creativity’. In doing so, the Indian Supreme Court followed the
India, in the case of Burlington Home Shopping v. Rajnish Chibber2, reasoning given by the Canadian Supreme Court in CCH Canadian
wherein it was held that a compilation may be considered a Ltd. v. Law Society of Upper Canada. But in practice, this midway
copyrightable work by virtue of the fact thatthere was devotion of standard is extremely difficult to practice and implement. According
time, labour and skill in creating the said compilation from many to this midway standard, an ‘original’ must be a “product of an
available works. exercise of skill and judgment”, where ‘skill’ is “the use of one’s
knowledge, developed aptitude or practised ability in producing
In the case of Feists Publication v. Rural Telephone Services3, the
the work” and ‘judgment’ is “the use of one’s capacity for
court shifted from the ‘sweat of the brow’ doctrine and introduced
discernment or ability to form an opinion or evaluation by
another concept for determining originality which was ‘minimum
comparing different possible options in producing the work”. As
modicum of creativity’ wherein it has been held that the work
per the Canadian Supreme Court, this exercise of skill and judgment
must be independently created by the author and that it must possess
must not be “so trivial that it could be characterized as a purely
at least some minimal degree of creativity in it to make it eligible
mechanical exercise” and must be “more than a mere copy of
for attaining originality. As per the judgment, any independent
another work.” At the same time, “creativity is not required” to
creation with certain degree of creativity would be considered as
makethe work ‘original’. It is thus evident that a great deal of
original.
ambiguity exists around the practical implementation of this
The Supreme Court of India, in its landmark judgment of Eastern standard.
4
Book Company v. D.B. Modak , departed from both these Works in which Copyright subsists:5
approaches and established the standard of originality that fell i. Literary works (including computer programmes, tables and
compilations including computer literary data bases)

15 16
 ii. Dramatic works  Ownership of Copyright

iii. Musical works The Act states that the author of a work shall be the first owner of
iv. Artistic works the copyright.8 The following are the authors of the works:9

v. Cinematograph films

vi. Sound recordings.

vii. Foreign works6

Therefore, the copyright on foreign works is also protected in India.

Countries who are members of the Berne Convention, Universal
Copyright Convention, the TRIPS Agreement, the copyright of the
authors and creators of those countries are protected in India through
the International Copyright Order, as if such works are Indian works.

 Registration of Copyright7  Contract of Service v/s Contract for Service

Copyright in a work subsists once the work is created and it does not Where the work is made by the author in the course of his

require any formal registration for protection. However, certificate employment under a contract of service, it is the employer who

of registration of copyright on behalf of the owner serves as a prima shall be the first owner of the copyright in the work. This is known

facie evidence in a court of law with reference to dispute relating to as Contract of Service.

ownership of copyright. If, on the other hand, to do a certain work the employer leaves it
to the employee to decide how that works shall be done and what

17 18
step shall be taken to produce that desired effect, and then it is a public directly or by any means of display or diffusion. It is
case of contract for service. In such cases a copyright vests with the not necessary that any member of the public actually sees,
employee and not the employer. For example, in case of independent hears or otherwise enjoys the work so made available. For
contractors. example, a cable operator may transmit a cinematograph
film, which no member of the public might have seen. Still
Ownership rights10
it is a communication to the public. The fact that the work
The owner of the Copyright has the following rights under the Act: in question is accessible to the public is enough to say that
i. REPRODUCTION - The Copyright confers upon the the work is communicated to the public.
author the sole right to reproduce the authored work. In other iii. ADAPTATION - Adaptation involves the preparation of a
words, no other person except the author shall make copies new work in the same or different form based upon an
of the work or copy the substantial part of the work in any already existing work. The Copyright Act defines the
form including sound and film recording etc. without the following acts as adaptations:
permission of the copyright owner. For example, a person
a) Conversion of a dramatic work into a non-dramatic
buys a film CD, and the person makes multiple copies of it
work
and sells it to others. This would amount to copyright
infringement. b) Conversion of a literary or artistic work into a
dramatic work
ii. COMMUNICATION - Communication to the public
means making any work available to general public for the c) Re-arrangement of a literary or dramatic work
purpose of being seen or heard or otherwise enjoyed by the
d) Depiction in a comic form or through pictures of a
literary or dramatic work

19 20
 e) Transcription of a musical work or any act involving Upon the expiration of the copyright protection, the work comes
re-arrangement or alteration of an existing work. in the public domain as there is not policy of renewing the

iv. TRANSLATION11 - Similarly, the owner has the full and registration and can be can be used by any individual for any
sole authority to translate the work done by him in one purpose.
language to one or many other languages. Any other person
Licensing18 - The copyright owner may grant a license and transfer
interested in doing so must get the prior permission of the
some or all of his rights to others to exploit his work for monetary
owner. For example, a film taken in English can be dubbed
benefits. A license is different from an assignment as licensee gets
or remade only by the owner or any other person with the
consent of the owner. certain rights subject to the conditions specified in the license
agreement but the ownership of those rights is not vested with him
Duration of Copyright protection
while in case of an assignment the assignee becomes the owner of
the interest assigned to him. A license may be exclusive or of
nonexclusive type.

Assignment19 - The owner of the copyright in an existing work or

the prospective owner of the copyright in a future work may assign
to any person the copyright either wholly or partially and either
generally or subject to limitations and either for the whole term of
the copyright or any part thereof. The Act prescribes that a
prospective owner of a copyright in future work may assign the
copyright, to any person, either wholly or partially, although the

21 22
assignment shall take effect only when the work comes into existence. Infringement of Copyright20
As mandated by Section 19, no assignment of copyright shall be
In dealing with copyright, we should bear in the mind that copyright
valid unless such assignment is in writing and signed by the assignee
does not protect novelty but only originality. Copyright protects
and the assignee. Such assignment ought to identify:
only the expression and not the idea.
 the work and the rights assigned,
 the territorial extent and, The key factors required for initiating any infringement case are:

 the duration of the assignment i. Prove ownership of Copyright

Where, the territorial extent and the duration of the assignment has ii. Infringer has copied (substantially similar)

not been specified, it shall be deemed that the assignment extends to Once the rights of the owner have been established, the next step
the territory of India and the duration of assignment is for a period of is to prove that that there is an actual infringement. If the defendant
five years respectively. Under Section 18 of the Copyright Act, even makes copies of a copyrighted work and commercially exploits
the copyright in a future work can be assigned in accordance with such copies or any blatant infringement, nothing further needs to
Section 19, however, such assignment shall come into effect only be proved to establish infringement.
upon date of creation of the work. It has now been added by the
Doctrine of Fair Use21
Amendment that no assignment shall be applied to any medium or
mode of exploitation of the work, which did not exist or was not in The act of copying, in some cases, by defendant may not always

commercial use at the time when the assignment was made, unless amount to infringement. Thus, the doctrine of fair use decides the
fair use of the work upon the following factors:
the assignment specifically referred to such medium or mode of
exploitation of the work. i. the purpose and character of the use, including whether
such use is of a commercial nature or is for non-profit
educational purposes.

23 24
ii. the nature of the copyrighted work. damages and conversion damages which are assessed on

iii. the amount and substantiality of the portion used in relation the basis of value of the article converted.

to the copyrighted work as a whole; and iii. Anton Pillar Orders - An Anton Pillar Order has the
following elements, i.e., an injunction restraining the
iv. the effect of the use upon the potential market for or value of
defendant from dealing in the infringing goods or destroying,
the copyrighted work.
them; an order that the plaintiffs solicitors be permitted to
Therefore, fair dealing such as criticisms, personal use, newspaper
enter the premises of the defendants, search the same and
report, review, judicial proceedings, question papers, etc. does not
take goods in their safe custody; an order that defendant be
amount to infringement.
directed to disclose the names and addresses of suppliers
Remedies for Copyright Infringement: and customers and also to file an affidavit will a specified
time giving this information.
i. Civil Remedies22 - The most importance civil remedy is the
iv. Mareva Injunction - Mareva Injunction is an order which
grant of interlocutory injunction since most actions start with
temporarily freezes assets of a defendant thus preventing
an application for some interlocutory relief and in most cases
the matter never goes beyond the interlocutory stage. The other the defendant from frustrating the judgment by disposal of
such assets.
civil remedies include damages actual and conversion,
v. Criminal Remedies 24 - Criminal remedy includes
attorney’s fees, rendition of accounts of profits and delivery
imprisonment of the infringer and the infringing copies
up.
seized.
ii. Pecuniary Remedies23 - the plaintiff can seek the following
three remedies, namely, account of profits, compensatory

25 26
 a) along with process patent, even product patent was
The Law of Patents
extended to all fields of technology including food, drugs,
The history of Patent law in India starts when the Indian Patents and chemicals and micro-organisms.
Designs Act, 1911 was enacted. The present Patents Act, 1970 came
b) the provisions relating to Exclusive Marketing Rights
into force in the year 1972, amending and consolidating the existing
(EMRs) have been repealed.
law relating to Patents in India.
c) a provision for enabling grant of compulsory license has
Later, India became signatory to many international arrangements
been introduced.
with an objective of strengthening its patent law and coming in league
d) provisions relating to pre-grant and post-grant opposition
with the modern world. The significant steps towards achieving this
have been also introduced.
objective was becoming the member of the Trade Related Intellectual
Property Rights (TRIPS) agreement in 1994, the Paris Convention What are Patents?

and the Patent Cooperation Treaty in 1998 and also the Budapest A patent is an exclusive right granted for an invention, which is a
Treaty in 2001. product or a process that provides, in general, a new way of doing

The Patents Act has been repeatedly amended in 1999, 2002, 2005, something, or offers a new technical solution to a problem.

2006. These amendments were required to make the Patents Act in To get a patent, the invention must be novel or new, involving an
compliance with TRIPS and other international instruments. inventive step and capable of industrial application. However, it

The 1970 Act prescribed for allowance of only process patents with must not fall into the category of inventions that are non-patentable

regard to inventions relating to drugs, medicines, food and chemicals. as provided under sections 3 and 4 of the Indian Patents Act, 1970.

But the 2005 amendment incorporated some important changes which In India, a patent application can be filed, either alone or jointly,

are: by true and first inventor or his assignee.

27 28
Invention25 - means a new product or process involving an inventive grant of patent in India as well as in the other member countries, as
step and capable of industrial application. these conventions are based on quid pro quo system.
Where an application for grant of patent in respect of an invention
New invention26 - means any invention or technology which has not
has been filed in India, then similar application can also be filed in
been anticipated by publication in any document or used in the
other Member Countries for grant of patent by such applicant or
country or elsewhere in the world before the date of filing of patent
the legal representative or assignee of such person within 12 months
application with complete specification, i.e., the subject matter has
from the date on which the basic application was made in the home
not fallen in public domain or that it does not form part of the state
country, i.e., India. The priority date in such a case is considered as
of the art.
the date of making of the basic application.
Inventive step27 - means 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.
Capable of industrial application28 - in relation to an invention,
means that the invention is capable of being made or used in an
industry.
Filing of Application for Grant of Patent in other Member
Countries
India being a signatory to the Paris Convention and the Patent
Cooperation Treaty (PCT), 1970, an Indian entity or a foreign entity
can adopt any of the aforesaid treaties for filing of application for

29 30
Procedure for the grant of Patent29 Pre-grant Opposition31 - A representation for pre-grant opposition
can be filed by any person under section 11A of the Patents Act,
Publication30 - Every application is ordinarily published after the 1970 within six months from the date of publication of the
expiry of 18 months period form the date of filing of the application application, or before the grant of patent. The grounds on which
or the date of priority of the application whichever is earlier. The the representation can be filed are provided under section 25(1) of
applicant can request publication of his application prior to the normal the Patents Act.
period under a request through a prescribed form and fee. Early Post-grant Opposition32 - Any interested person can file post-grant
publication can result in acceleration of substantive examination of opposition within twelve months from the date of publication of
application and in early grant. Also, early publication is important for the grant of patent in the official journal of the patent office.
obtaining provisional protection in cases where the applicant Grounds for Opposition33 - Some of the grounds for filing pre-
anticipates infringement. and post-grant opposition are as under:
i. Patent wrongfully obtained;
Provisional Protection - On and from the date of the publication of
ii. Prior publication;
the application for patent and until the date of grant of patent in respect
of such patent, the applicant will have like privileges and rights as if iii. The invention was publicly known or publicly used in India
the patent for the invention have been granted on date of publication before the priority date of that claim;
of application. However, the applicant cannot institute the infringement
iv. The invention is obvious and does not involve any inventive
proceedings unless the patent is granted. This provision is
step;
advantageous to the applicant for the purpose of claiming damages
from the date of advertisement. v. That the subject of any claim is not an invention within the
meaning of this Act, or is not patentable under this Act;

31 32
 vi. Insufficient disclosure of the invention or the method by i. If the grant of the patent is for a product, then the patentee

which it is to be performed; has a right to prevent others from making, using, offering
for sale, selling or importing the patented product in India.
vii. That in the case of a patent granted on convention application,
the application for patent was not made within twelve months ii. If the patent is for a process, then the patentee has the right

from the date of the first application for protection for the to prevent others from using the process, using the product

invention made in a convention country or in India; directly obtained by the process, offering for sale, selling or
importing the product in India directly obtained by the
viii. That the complete specification does not disclose or
process.
wrongly mentions the source and geographical origin of
biological material used for the invention; and Compulsory Licensing36

ix. That the invention was anticipated having regard to the One of the most important aspects of Indian Patents Act, 1970, is

knowledge, oral or otherwise, available within any local or compulsory licensing of the patent subject to the fulfilment of certain

indigenous community in India or elsewhere. conditions. At any time after the expiration of three years from the
date of the sealing of a patent, any person interested may make an
Term of Patent34 - The term of every patent in India is 20 years from
application to the Controller of Patents for grant of compulsory
the date of filing the patent application, irrespective of whether it is
license of the patent, subject to the fulfilment of following conditions,
filed with provisional or complete specification. However, in case
i.e.,
of applications filed under the Patent Cooperative Treaty (PCT), the
i. the reasonable requirements of the public with respect to the
term of 20 years begins from the international filing date.
patented invention have not been satisfied;
Rights granted by a Patent35

33 34
 ii. that the patented invention is not available to the public at a application for registration is required to be made by the transferee
reasonable price; or in the prescribed form.

iii. that the patented invention is not worked in the territory of Bolar Provision - Section 107 A(a) of the Patents Act provides
India. that any act of making, constructing, using, selling or importing a
patented invention solely for uses reasonably related to the
It is further important to note that an application for compulsory
development and submission of information for regulatory approval
licensing may be made by any person notwithstanding that he is
will not amount to infringement.
already the holder of a licence under the patent.
This provision is helpful for persons who wish to exploit the patent
The Controller, if satisfied with the above conditions, may order the after the expiry of the terms of the Patent as they can obtain the
patentee to grant a licence upon such terms as he may deem fit. marketing approval before the term of patent expires and can
The grant of compulsory license cannot be claimed as a matter of immediately manufacture after the expiry of the term of Patent.
right, as the same is subject to the fulfilment of above conditions Parallel Importation - Section 107 A(b) provides for Parallel
and discretion of the Controller of Patents. Importation of patented products. The provision declares that
importation of patented products, by any person from a person who
Assignment of Patent37 - An assignment in a patent or a share in a
is duly authorized under the law to produce and sell or distribute
patent or a mortgage, license or the creation of any other interest in
the product, would not be considered as infringement.
a patent is permissible. In the case of patents, assignment is valid
Effectively, this provision refers to and relies on the applicable
only when it is in writing and the agreement is reduced to the form
local laws of the country exporting the goods to India. The provision
of a document embodying all the terms and conditions governing
allows export from a country where there is no protection of the
the rights and obligations of the parties to the agreement. The
article patented in India. Parallel Importation provision has been

35 36
introduced as a mechanism to help in price control through the act
The Law of Trademark
of competition. The Principle of exhaustion of right is also applicable
in this provision. A trademark includes a name, word, or sign that differentiates goods
Cross Border Licensing - Grant of Compulsory License to from the goods of other enterprises.A trademark can be a logo,
manufacture and export patented pharmaceutical products to any picture mark or a slogan. Marketing of goods or services by the
country having insufficient or no manufacturing capacity by an Indian procedure becomes much easier with a trademark because
manufacturer is possible either through the importing country recognition of product with the trademark is assured and easier.
granting compulsory license to the Indian manufacturer or through The owner can prevent the use of his mark or sign by another
allowance of importation of the patented pharmaceutical products competitor.
from India by notification.
Sometimes there is a confusion between trademark and brand. The
Infringement of Patent38
brand name can be simply a symbol or logo but the trademark is a
Patent infringement proceedings can only be initiated after grant of
distinguishing sign or indicator in a business organization as it has
patent in India but may include a claim retrospectively from the date
a wider implication than brands. People are more influenced by
of publication of the application for grant of the patent. Infringement
the distinctive trademark that reflects the quality of the product.
of a patent consists of the unauthorised making, importing, using,
Before 1940 there was no law on trademarks in India. A number of
offering for sale or selling any patented invention within the India.
problems of infringement of registered and unregistered trademark
Under the Indian Patents Act, 1970 only a civil action can be initiated
arose which were resolved under Section 54 of the Specific Relief
in a Court of Law. Further, a suit for infringement can be defended
Act, 1877 and registration was adjudicated under the Indian
on various grounds including the grounds on which a patent cannot
Registration Act, 1908. To overcome these difficulties, the Indian
be granted in India and based on such defence, revocation of Patent
Trademark law was enforced in 1940. After the enforcement of the
can also be claimed.

37 38
trademark law, demand for protection of trademarks increased as Types of Trademark:-
there was major growth in trade and commerce. Trademarks can be differentiated into two categories –

The Trademark law was replaced with the Trademark and Conventional marks (which can be graphically represented)
and Unconventional marks (which cannot be graphically
Merchandise Act, 1958 which further got replaced with the
represented).
Trademark Act, 1999 to comply with TRIPS obligations. The aim of
the Trademark Act is to grant protection to the users of trademark  Conventional Marks:
and direct the conditions on the property and also provide legal
a) Service Marks - A service mark is any symbol name, sign,
remedies for the implementation of trademark rights.
device or word which is intentionally used in trade to
What are Trademarks? recognize and differentiate the services of one provider from
others. Service marks do not cover material goods but only
‘Trade mark’ means a mark capable of being represented graphically
the allocation of services.
and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their b) Collective Marks 40 - A collective mark is used by
packaging and combination of colours.39 employees and a collective group, or by members of a
collaborative association, or the other group or organization
So, when a Mark can be:
to identify the source of goods or services. A collective mark
a) graphically represented; and indicates a mark which is used for goods and services and

b) this mark can differentiate between goods or services of one for the group of organizations with similar characteristics.

individual with that of another in form of shape of goods, The organization or group uses this mark for more than

colour combination or packaging, we can term this type of one person who is acting in a group organization or legal

mark as a Trademark. entity for dividing the different goods or services.

39 40
c) Associated Trademark41- An associated trademark allows  Unconventional Marks:
a business to brand new products and services with its primary mark
a) Shape Trademark: Under the provision of Trademark Act,
or use derivative forms of its primary trademark. This type
1999 in India, now shape of the goods, packaging or any 3-
of trademark also allows a business to register a mark similar to one
dimensional objects which can be represented graphically
belonging to another business.
can be registered by meeting certain required criteria. Shape
42
d) Series Trademark - Series of trademarks basically means of good under the trademarks act is statutorily considered
a number of trademarks which resemble each other as to their material as an important element of any proprietor’s trademark.
particulars and which differ only as to matters of a non-distinctive
b) Sound Trademark: is a non-conventional type of
character not substantially affecting the identity of the trademark.
trademark. Under the Trademark Act, 1999 if the sound is
43
e) Certification Marks - A certificate mark is verification or represented graphically on the basis of musical notes either
confirmation of matter by providing assurance that some act has by using words or not can be registered. The sound mark
been done or some judicial formality has been complied with. A mostly consists of sound graphics or words or notes of music
certification mark indicates certain qualities of goods or services or it may contain all of them. The sound must be truly
with which the marks are used is certified. distinct from other music in order to get it registered.

f) Trade Dress - Trade dress is a term that refers to features of In India we can register sound as a trademark by submitting
the visual appearance of a product or design of a building or its the sound in MP3 format which should not cross half a
packaging that denote the source of the product to customers. It is a minute of time and with graphical representation of the
form of intellectual property. Trade dress protection is implemented sound along with trademark application form should be filed
to protect consumers from packaging or appearance of products that with the trademark registry for registration of the sound as
framed to imitate other products. trademark. But there are number of things which cannot
take sound as trademark like Nursery rhymes cannot be

41 42
 registered likewise an entire song cannot be registered so types of mark are not so popular but few companies are
also popular music or a simple music etc. cannot get coming ahead like from liquor industry, pharmaceuticals
trademark. etc. Although there has not been any trademark registration
c) Colour Trademark: As per section 10 of the Trademarks till date done of the touch mark in India but there is a likely
Act, 1999 the colour as a trademark can very well be hope in future.
registered by way of single as well as combination of colours
f) Taste Trademark: Taste trademarks as the name denotes
provided the proprietor can distinguish the colour trademark
can be referred to the taste of product, i.e., for edible items.
of his products or business organization from others and so
Taste trademark can be said to be almost similar like
also the proprietor should establish the connection of such
trademark of smell. This is a new form of trademark which
colour with his product or entity. Mostly colour combination
is yet to take its root of development in India. Right now, it
is accepted for registration as compared to single colour.
is no so popular in India compared to Foreign Nations.
d) Smell or Olfactory Trademark: A Smell mark can be
g) Motion Trademark: The Motion trademarks are possible
applied for registration under the Trademark Act by
due to the advancement of multimedia production and these
representing it graphically but in spite of this there has not
types of registration are done on the basis of sequence of
been a single smell trademark registered in India as yet. This
moving of picture and also drawing.
category of trademark to be registered in India will require a
development to be done by Research and Development and Well-known Trademark44 and Trans Border Reputation
by deploying experts who can analyse the same scientifically India recognises the concept of the ‘Well-known Trademark’ and
in well-equipped laboratories. the ‘Principle of Trans Border Reputation’. A well-known
e) Touch Trademark: This is an innovative trademark in which Trademark in relation to any goods or services means a mark that
a special and unique touch of either the product or the has become so to the substantial segment of the public, which uses

packaging can be registered as a trademark. Though these such goods or receives such services such that the use of such a

42 43
mark in relation to other goods and services is likely to be taken as Procedure of Registration of Trademark in India45
indicating a connection between the two marks.
India being a signatory to the Madrid Protocol, which is an
international treaty designed to simplify the international
trademark registration process. Using this process, entities can
file a single application for the registration of their trademark in
their home country and can claim protection of the same to over
90 member countries.

Classification of goods and services 46 - For the purpose of

classification of goods and services for registration of trademarks,
India follows the International Classification of Goods and Services
(Nice Classification) published by World Intellectual Property
Organization (WIPO). For the purpose of classification of the
figurative elements of marks, India follows the Vienna Agreement.

Absolute Grounds for Refusal of Trademark Registration

Section 9 of the Trademark Act, 1999 enumerates grounds on which

a trademark registration can be absolutely refused. The Act provides
that following marks can be refused:
i. Marks that are devoid of any distinctive character;

44 45
 ii. Marks which serve to designate kind, quality, intended Exception- Aforesaid mark shall not be refused registration if prior
purpose, values, geographical origin or the time of to date of trademark application; the mark has acquired distinctive
production of goods; character or is a well-known trademark.

iii. Marks which have become customary in the current Relative Grounds for Refusal of Trademark Registration
language or in the established practices of trade;
Section 11 provides that a mark shall not be registered:
iv. Marks that may cause deception or confusion in public;
i. If the mark causes likelihood of confusion on part of
v. Mark comprises of matter that is likely to religious the public i.e. likelihood of association with the earlier
sentiments any class of people; trademark;

vi. Mark comprises of scandalous or obscene matter; ii. If the mark is identical to a well-known trademark in
India and use of the later mark may be detrimental to
vii. Mark is prohibited under the Emblems and Names
the distinctive character of the well-known trademark;
(Prevention of Improper Use) Act, 1950;
iii. If the mark’s use in India is liable to be prevented by
viii. If the mark consists of shape of goods which results
law of passing off or copyright law;
from the nature of the goods themselves;
The provision further envisages that where the goods
ix. Mark consists of shape of goods which is necessary to
are of different description refusal will not be justified but
obtain a technical result;
registration may be refused if the mark is likely to be
x. Mark gives substantial value to the goods;
deceptive or cause confusion.

46 47
 Renewal of registration -  Legal Remedies against Infringement and or Passing
off48
The trademark is initially registered for a period of 10 years,
which is calculated from the date of filing of the application India, being a common law country, follows not only
and in case of convention application, from the date of priority. the codified law, but also common law principles, and as
The registration is required to be renewed within 6 months such provides for infringement as well as passing off actions
before the date of expiry of the registration, i.e., 10 years against violation of trademarks. Section 135 of the Trade
from the date of the application or subsequent renewals. Marks Act recognises both infringement as well as passing
off actions.
The failure in renewing the trademark within the
stipulated period of time and a grace period of maximum 1 Under the Trade Marks Act, both civil and criminal
year granted for restoration of the trademark, automatically remedies are simultaneously available against infringement

leads to removal of the trademark from the Register of and passing off.

Trademarks.  Infringement -

 Assignment and Licensing of Trademark47 - Infringement of trademark is violation of the exclusive

In case of licensing, the right in the trademark continues rights granted to the registered proprietor of the trademark

to vest with the proprietor, while in case of assignment of the to use the same. A trademark is said to be infringed by a

trademark leads to a change in the ownership of the mark. A person, who, not being a permitted user, uses an identical

registered trademark is assignable with or without the or similar or deceptively similar mark to the registered

goodwill in respect of all or only some of the goods or services trademark without the authorization of the registered

for which the mark is registered. proprietor of the trademark. However, it is pertinent to note

48 49
 that the Indian trademark law protects the vested rights of a
prior user against a registered proprietor which is based on
Difference between Trademark Infringement and Passing off
common law principles.

 Passing off - Trademark Infringement Passing Off

An action for trademark An action for passing off is a

It is a common law tort remedy used to enforce
infringement is a statutory remedy. common law remedy.
unregistered trademark rights. Passing off essentially occurs
In case of infringement, the Passing off action in essence is
where the reputation in the trademark of party A is Plaintiff on account of being an action of deceit that is, a
registered proprietor of the passing off by a person of his
misappropriated by party B, such that party B misrepresents disputed trademark, claims to own goods as those of another.
as being the owner of the trademark or having some affiliation/ have an exclusive right to use the
mark in relation to those goods.
nexus with party A, thereby damaging the goodwill of party
The use by the defendant The use by the defendant of
A. For an action of passing off, registration of a trademark is of the trademark of the plaintiff the trademark of the plaintiff
may be prerequisite in the case of is not a prerequisite in the case
irrelevant. an action for infringement. of an action for passing off.

Registration of a trademark is not a pre-requisite in order to

sustain a civil or criminal action against violation of trademarks in
India. In India, a combined civil action for infringement of trademark
and passing off can be initiated. Significantly, infringement of a
trademark is a cognizable offence and criminal proceedings can be
initiated against the infringers. Such enforcement mechanisms are
expected to boost the protection of marks in India and reduce
infringement and contravention of trademarks.

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 INTELLECTUAL PROPERTY RIGHTS AND The TRIPS Agreement

INTERNATIONAL COOPERATION The TRIPS Agreement is the most comprehensive multilateral

agreement on intellectual property. It covers all areas of IP, including
copyright, trademarks, geographical indications, industrial designs,
Although there is no ‘international’ intellectual property right that
patents, and trade secrets. It lays down minimum standards of
may be sought by an applicant, such as an international patent or
protection for all forms of IP and allows member states to develop
trade mark, it is incorrect to say that, “there is nothing that is
their own implementation procedures.
international about the intellectual property system.”
This Agreement ensures that member states comply with the
International conventions play an important part in shaping the
standards laid down in other international conventions such as the
national laws on intellectual property. These various agreements
Paris Convention for the Protection of Industrial Property (“the
have been brought about to
Paris Convention”) and the Berne Convention for the Protection
harmonise national laws and establish minimum standards of IP of Literary and Artistic Works (“the Berne Convention”).
protection. The scope of such conventions and treaties extend to
Paris Convention for the Protection of Industrial Property, 1883
both substantial and procedural requirements.
The Paris Convention was one of the first international treaties
World Intellectual Property Organization
that was formulated for the protection of IP. The Convention applies
The World Intellectual Property Organization (“the WIPO”) is a to ‘industrial property’ and does not mention the term ‘intellectual
key organisation that administers several international treaties property’. ‘Industrial property’ is defined to include patents, utility
concerning intellectual property rights. The WIPO is a specialized models, industrial designs, trademarks, service marks, trade names,
agency of the U.N.O. The WIPO administers treaties that provide indications of source or appellations of origin, and the repression
substantive protection and treaties that facilitate international of unfair competition. As such, the convention conceivably covers
protection. most forms of intellectual property recognized today — although a

52 53
key point to note is that it does not include ‘copyrights’ within its their national laws. Similarly to the PCT, under the Madrid Protocol,
ambit. The Paris Convention is aimed at creating procedures for substantive (trademark) rights flow only from the grant of national
enforcement of industrial property more effectively and it ensures extensions of protection and not from the international registration
protection of industrial property through measures like national as such. Applicants will not obtain any substantive rights by filing
treatment. an international patent application or by filing an international
trademark application. They will acquire those rights only and after
Patent Co-operation Treaty
the national authorities grant those rights on a country-by-country
The PCT was drafted on 1970 and came into force on January 24, basis.
1978. The PCT is seen as a ‘sister’ treaty of the Paris Convention
Under both the PCT and the Madrid Protocol, member countries
and is administered by the WIPO. The Treaty provides for a single
will use their national substantive laws to decide whether or not to
window system for filing patent application and a simplified
grant a patent or trade mark application.
procedure for the search and examination of such applications.
Berne Convention for the Protection of Literary and Artistic Works
Madrid Protocol
The Berne Convention is based on the following three basic
The Madrid Protocol allows trade mark owners from a member
principles:
country to obtain trade mark rights in other member countries by
filling a unique international trade mark application with their  The principle of national treatment
national office. This international application will then be
 The principle of ‘automatic’ protection – IP protection must
electronically forwarded to WIPO, which issues an international
be automatic and should not be conditional; and
application for the trade mark, publishes the mark in the
 The principle of the ‘independence’ of protection – IP
international trade mark gazette, and electronically forwards the
application to the designated countries. Finally, the designated protection in other countries is independent of the existence

countries will examine and grant international applications under of protection in the country of origin of the work.

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The Berne Convention provides for minimum protection to be
granted, and providesbeneficial provisions for developing countries.
The Berne Convention covers IPrights in relation to literary, scientific,
and artistic domains, whatever may be themode or form of its
expression. The Convention also provides for moral rights
andeconomic rights in relation to the works.

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