IPR Laws in India

Intellectual Property Rights in India

 Legal rights governing the use of creations of the human mind

 The laws which recognize and protect the rights

◦ The Trade Marks Act, 1999,
◦ The Copyright Act, 1957
◦ The Patent Act, 1970 (amended by Amendment Acts of 1999 and
2002 and 2005)
◦ The Designs Act of 2000
◦ The following laws have been enacted to protect newly recognized
species of intellectual property in India:
◦ The Geographical Indications of Goods (Registration and protection)
Act, 1999
◦ The Semiconductor Integrated Circuits Layout Design Act, 2000
◦ The Protection of Plants & Varieties and Farmers Rights Act, 2001;
◦ The Biological Diversity Act, 2002


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Trade Mark
 Protection to owner of mark by ensuring exclusive right to use
it,
 or to authorize another to use the same in return for payment
 promote initiative by rewarding owners with recognition and
financial profit
 hinders the efforts of unfair competitors, such as
◦ counterfeiters
◦ use similar distinctive signs to market
◦ inferior or different products or services.
 visual symbol which may be
◦ a word to indicate the source of the goods or service
◦ a signature, name, device, label, numerals
◦ combination of colours used
◦ other articles of commerce to distinguish it from other similar goods
or services

3
Example of Trade Marks
image source:
https://www.google.com/url?sa=i&url=https%3A%2F%2Fblog.ipleaders.in%2Ftrademark-law-in-india
%2F&psig=AOvVaw2PBVg3i_SnQpB_rHeQC5C4&ust=1617519341321000&source=images&cd=vfe&ved=2ahUKEwi2uqmfv-HvAhWdnUsFHRIFCxsQr4kDegUIARC2AQ
 Protection to owner of mark by ensuring exclusive right to use
it,
 or to authorize another to use the same in return for payment
 promote initiative by rewarding owners with recognition and
financial profit
 hinders the efforts of unfair competitors, such as
◦ counterfeiters
◦ use similar distinctive signs to market
◦ inferior or different products or services.
 visual symbol which may be
◦ a word to indicate the source of the goods or service
◦ a signature, name, device, label, numerals
◦ combination of colours used
◦ other articles of commerce to distinguish it from other similar goods
or services

4
Object of trade mark law

 As explained by the Supreme Court in Dau Dayal v. State of

Utttar Pradesh AIR 1959 SC 433:
 “The object of trade mark law is to protect the rights of persons
who manufacture and sell goods with distinct trade marks
against invasion by other persons passing off their goods
fraudulently and with counterfeit trade marks as those of the
manufacturers.
 Normally, the remedy for such infringement will be by action in
Civil Courts.
 But in view of the delay which is incidental to civil proceedings
and the great injustice which might result if the rights of
manufacturers are not promptly protected, the law gives them
the right to take the matter before the Criminal Courts, and
prosecute the offenders, so as to enable them to effectively
and speedily vindicate their rights”.

5
Definition under Trade Marks Act
 A trade mark is a word, phrase, symbol or design, or
combination of words, phrases, symbols or designs used in the
course of trade which identifies and distinguishes the source of
the goods or services of one enterprise from those of others

 “Mark” includes a device, brand, heading, label, ticket, name,

signature, word, letter, numeral, shape of goods, packaging or
combination of colours or any combination thereof”

 Being an inclusive definition it will thus include any mark within

the definition of trade mark so long as the mark is
◦ capable of being represented graphically;
◦ capable of distinguishing the goods or services of one person from
those of others.
◦ https://
www.theipmatters.com/post/colgate-palmolive-india-ltd-anr-v-anchor-health-and-be
auty-care-pvt-ltd
6
Service Mark
 A service mark is the same as a trade mark except
that it identifies and distinguishes the source of a
service rather than a product

 Normally, a mark for goods appears on the product

or on its packaging, while a service mark appears in
advertising for the services

7
Trade Description
 any description, statement or other indication, direct or indirect
:
 (i) as to the number, quantity, measure, gauge or weight of any
goods; or
 (ii) as to the standard of quality of any goods or services
according to a classification commonly used or recognized in
the trade; or
 (iii) as to fitness for the purpose, strength, performance or
behaviour of any goods, being “drug”, as defined in the Drugs
and Cosmetics Act, 1940 or “food”, as defined in the Prevention
of Food Adulteration Act, 1954; or
 (iv) as to the place or country in which or the time at which any
goods or services were made, produced or provided, as the
case may be; or
 (v) as to the name and address or other indication of the
identity of the manufacturer or of the person providing the
services or of the person for whom the goods are manufactured
or services are provided; or 8
Trade Description
 (vi) as to the mode of manufacture or producing any goods or
providing services; or
 (vii) as to the material of which any goods are composed; or
 (viii) as to any goods being the subject of an existing patent,
privilege or copyright, and includes –
 (a) any description as to the use of any mark which according
to the custom of the trade is commonly taken to be an
indication of any of the above matters;
 (b) the description as to any imported goods contained in any
bill of entry or shipping bill;
 (c) any other description which is likely to be misunderstood or
mistaken for all or any of the said matters;

9
REGISTRATION OF TRADE MARKS
 The process whereby a trade mark is entered on the
register of the trade marks is referred to as
registration.

 Any person, claiming to be the proprietor of a trade

mark used or proposed to be used by him, can apply
for registration of a trade mark to the Trade Mark
Registry

 In case of a company about to be formed, anyone

may apply in his name for subsequent assignment of
the registration in the company's favour.

10
Registration Procedure & Search
 The registration procedure in India is based on the ‘first to file’
system.
 It is therefore important that the rights holder applies for the
registration of its mark as soon as possible.
 The registration of a trade mark in India typically takes about 2
to 3 years, subject to the trade mark not being opposed by a
third party.

 Trade Mark Search Before making an application for

registration,
 it is prudent to make an inspection of the already registered
trade marks to ensure that registration may not be denied in
view of resemblance of the proposed mark to an existing one
or prohibited one.

11
Who May Apply for Trade Mark
 Any person “claiming to be the proprietor” of the trade mark
‘used’ or ‘proposed to be used’ by him may make an
application in the prescribed manner for registration of his
trade mark.
 “Any person” is wide enough to include any individual,
company, or association of persons or body of individuals,
society, HUF, partnership firm, whether registered or not,
Government, trust etc. [
 A company may make an application for registration of a trade
mark in its own corporate name.
 A partnership firm shall make the application in the names of
all trading within the firm partner.

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Filing and Prosecuting Trade Mark
Applications
 An application for registration of a trade mark may be made on
Prescribed Form with prescribed fee as provided in Schedule – I
of Trade Mark Rules, 2017

 Furthermore, trade mark applications can be filed electronically

through the website www.ipindiaonline.gov.in

 https://youtu.be/W9_oCnFvj8o

13
Review by the Trade Marks Office
 After the application has been filed, the Trade Marks Office
reviews it to ensure that it is complete in all respects and
thereafter allots an application number to the applications.
 If the trade mark is registered, the application number
becomes the registration number.
 Preliminary Approval and Publication, Show Cause Hearing or
Rejection of the Application During the process of examination,
the Trade Marks Office determines if the trade mark is barred
for registration either under absolute grounds for refusal and/or
relative grounds for refusal as prescribed in the Trade Marks
Act, 1999.
 Accordingly, they issue an examination report and the
Applicant must respond to the objections that have been raised
in the examination report within a period of one month from
the issuance of the examination report.

14
Review by the Trade Marks Office
 Thereafter and based on the response to the examination
report that has been filed by the Applicant,
 the Registrar of Trade Marks determines if the application
should be refused, accepted for advertisement, accepted
subject to certain limitations or put up for a “show cause”
hearing,
 Should the application be rejected, the Applicant can approach
the Intellectual Property Appellate Board to appeal the order of
the Registrar of Trade Marks.

15
Duration and Renewal of Trade Mark
Registration
 Trade mark protection in India is perpetual subject to renewal
of the registration after every 10 years.
 The application for renewal can be filed six months before the
expiry of the validity period of the trade mark.
 Section 25 of the Act allows registration of a trade mark for a
period of 10 years.
 In keeping with the generally accepted international practice
and to reduce the work-load of the Trade Marks Office, Section
25 allows renewal of registration for successive periods of 10
years, from the date of the original registration or the last
renewal.
 Should the rights holder of a trade mark come across a trade
mark that is deceptively similar to their mark and which has
been published in the Trade Marks Journal, they can oppose the
impugned mark within three months of the publication of the
journal.
16
OPPOSITION TO REGISTRATION
 Any person may give a Notice of Opposition to the application
for registration of a trade mark whether he has or has not any
commercial or personal interest in the matter.
 The person need not be a prior registered trade mark owner.
 He can be a customer, a purchaser or member of the public
likely to use the goods.
 The question of bona fides of the opponent does not arise.
 Essential requirements for filing Notice of Opposition:
 The Notice of Opposition should contain
 (a) in respect of an application against which opposition is
entered-
 (i) the application number against which opposition is entered;
 (ii) an indication of the goods or services listed in the trade
mark application against which opposition is entered; and
 (iii) the name of the applicant for the trade mark

17
 in respect of the opposing party-
 (i) where the opposition is entered by the proprietor of the
earlier mark or of the earlier right, his name and address and
an indication that he is the proprietor of such mark or right;
 (ii) where opposition is entered by a licensee not being a
registered user, the name of the licensee and his address and
an indication that he has been authorized to enter the
opposition.
 (iii) where the opposition is entered by the successor in title to
the registered proprietor of a trade mark who has not yet been
registered as new proprietor, an indication to that effect, the
name and address of the opposing party and an indication of
the date on which the application for registration of the new
proprietor was received by the appropriate office or, where this
information is not available, was sent to the appropriate office;
and
 (iv) where the opposing party has no place of business in India,
the name of the opponents and his address for service in India.18
Grounds of Opposition
 The opponent is at liberty to set up any ground which may
support his opposition against the registration of the trade
mark under any of the provisions of the Trade Marks Act, 1999
and the Rules prescribed there under.
 However, under section 11(5), a trade mark shall not be
refused registration unless objection on any one or more of
those grounds is raised in opposition proceedings by the
proprietor of the earlier trade mark.

19
list of possible grounds for opposition
 That the trade mark advertised is not registrable in that it is
neither distinctive nor capable of distinguishing or that it does
not satisfy the requirements of the Act as to registrability;

 The essential part of the said trade mark is a word in ordinary

use, descriptive of the character or quality of the goods and the
applicant is not entitled to acquire an exclusive right therein by
registration;

 That the trade mark is not capable of being represented

graphically;

 That the trade mark is devoid of distinctive character, that is to

say, not capable of distinguishing the goods, or services of one
person from those of another person;

20
list of possible grounds for opposition
 That the trade mark consists exclusively of marks or indications
which have become in the current language or in the bona fide
and established practice of the trade (may refer to generic
names or marks common to the trade);

 That the trade mark is of such a nature as to deceive the public

or cause confusion

 That the trade mark contains or comprises of any matter likely

to hurt the religious susceptibilities of any class or section of
the citizens of India

 That the trade mark comprises or contains scandalous or

obscene matter;

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list of possible grounds for opposition
 That the trade mark is:
 (a) identical with or similar to an earlier trade mark, and
 (b) to be registered for goods or services which are not similar to
those for which the earlier trade mark is registered in the name
of a different proprietor, and the earlier trade mark is a well
known trade mark in India and the use of the later mark without
due cause would take unfair advantage of or be detrimental to
the distinctive character or repute of the earlier trade mark;

 That the use of the applicant’s mark would be an infringement of

the opponent’s registration which could be restrained

 That the user claimed in the application for registration is not

true;

22
Case Law
 In Ambalal Sarbhai Enterprises Limited v. Tata Oil Mills Company
Limited 1988 OTC 73 Bom, it was held that the word PROMIX was
distinctive

 The Court held that even though there are many trade marks in
the register with the prefix PRO which is common to the trade,

 the applicants have particularly coined the word PROMIX and the
same was not known earlier


 Applicants are the proprietors of a series of trade marks having

prefixed PRO as a leading distinguishing feature

 Their trade mark is distinctive and so can be registered under the

Act.

23
 (Anglo-French Drug Co. v. Brihans Laboratories, 1995 IPLR 7).

 The medical preparations sold at the prescription by doctors and

supplied by qualified pharmacists have been considered a special
case for determining deceptive similarity

 The test was not of the ordinary customers but whether the
pharmacists or doctors would be confused.

 Therefore, in the field of drugs and chemicals, the names with

small variations are allowed

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RIGHTS CONFERRED BY REGISTRATION
 The registration of a trade mark confers on the registered
 While registration of a trade mark is not compulsory, it offers
better legal protection for an action for infringement

 As per Section 17 of the Act, the registration of a trade mark

confers the following rights on the registered proprietor:
◦ confers on registered proprietor the exclusive right to the use of the trade mark
in relation to the goods or services in respect of which the trade mark is
registered.
◦ If the trade mark consists of several matters, there is an exclusive right to the
use of the trade mark taken as a whole. If the trade mark contains matter
common to trade or is not of a distinctive character, there shall be no exclusive
right in such parts.
◦ entitles the registered proprietor to obtain relief in respect of infringement in
the manner provided by the Act, when a similar mark is used on (a) same goods
or services, (b) similar goods or services, (c) in respect of dissimilar goods or
services.
◦ (iv) Registration of a trade mark forbids every other person (except the
registered or unregistered permitted user) to use or to obtain the registration of
the same trade mark or a confusingly similar mark in relation to the same
goods or services or the same description of goods or services in relation to
which the trade mark is registered. 25
◦ After registration of the trade mark for goods or services, there shall not be
registered the same or confusingly similar trade mark not only for the same
goods or services but also in respect of similar goods or services by virtue of
Section 11(1) of Trade Marks Act, 1999.
◦ Moreover, after registration of the trade mark for goods or services, there shall
not be registered the same or confusingly similar trade mark even in respect of
dissimilar goods or services by virtue of Section 11(2) in case of well-known
trade marks.
◦ Registered trade mark shall not be used by any one else in business papers and
in advertising. Use in comparative advertising should not take undue advantage
of the trade mark. Such advertising should not be contrary to honest practices
in industrial or commercial matters. The advertising should not be detrimental
to the distinctive character or reputation of the trade mark.
◦ There is a right to restrict the import of goods or services marked with a trade
mark similar to one’s trade mark.
◦ There is a right to restrain use of the trade mark as trade name or part of trade
name or name of business concern dealing in the same goods or services.
◦ The registered trade mark continues to enjoy all the rights which vest in an
unregistered trade mark.
◦ By registration the proprietor of an unregistered trade mark is converted into
proprietor of the registered trade mark.

26
INFRINGEMENT OF REGISTERED TRADE
MARKS
 Infringement, very broadly means
◦ taking unfair advantage or being detrimental to the distinctive
character or reputation of a trade mark.
 when a registered trade mark is used by a person who is not
entitled to use such a trade mark under the law, it constitutes
infringement.
 a registered trade mark is infringed, if
◦ the mark is identical and is used in respect of similar goods or
services; or
◦ the mark is deceptively similar to the registered trade mark and there
is an identity or similarity of the goods or services covered by the
trade mark; or
◦ the trade mark is identical and is used in relation to identical goods or
services; and that such use is likely to cause confusion on the part of
the public or is likely to be taken to have an association with the
registered trade mark.

27
 a person shall be deemed to have infringed a registered trade
mark, if he uses a mark which is identical with or similar to the
trade mark, and is used in relation to goods or services which are
not similar to those for which trade mark is registered; and
 the registered trade mark has a reputation in India and the use of
the mark without due cause would take unfair advantage of or is
detrimental to the distinctive character or repute of the
registered trade mark.

 Sub-section (5) prohibits a person from using someone else’s

trade mark, as his trade name or name of his business concern or
part of the name of his business concern dealing with goods or
services in respect of which trade mark is registered.

28
 A person shall be deemed to have used a registered trade mark
in circumstances which include affixing the mark to goods or
packaging, offering or exposing the goods for sale or supply of
services, importing or exporting the goods, using the trade mark
as trade name or trade mark on business paper or in advertising

 A person shall also be deemed to have infringed a registered

trade mark if he applies such registered trade mark to a material
intented to be used for labelling or packaging goods as a
business paper, or
 for advertising goods or services knowing that the application of
such mark is not authorised by the proprietor or licensee.

 Advertising of a trade mark to take unfair advantage of, or

against the honest industrial or commercial practices or which is
detrimental to the distinctive character or is against the
reputation of the trade mark shall constitute an infringement
under Section 29(8) of the Act.
29
Statutory remedy
 An infringement action is available to the registered proprietor or
registered user to enforce his exclusive right over the trade mark
in relation to the goods in respect of which it is registered.
 If at the time of registration of trade mark, certain limitations or
conditions have been imposed, then, the exclusive right has to
be evaluated within the terms of such registration.
 In M/s J K Oil Mills v. M/s Adani Wilmar Ltd., 2010 (42) PTC 639
(Del.), the Delhi High Court held that in order to constitute
infringement under the provisions of Section 29 of the Trade
Marks Act, it would be necessary to show that impugned trade
mark (label) is identical or deceptively similar to the registered
trade mark.
 And once the plaintiff is able to establish that the impugned trade
mark (label) is identical or deceptively similar to the registered
trade mark (label) then, it matters little whether the defendant is
using the impugned mark/label in respect of the goods and
services which are not similar to those in respect of which the
trade mark is registered.
30
ASSIGNMENT AND TRANSMISSION
 “assignment” as assignment in writing by act of the parties
concerned.
 transmission” means transmission by operation of law,
devaluation on the personal representative of a deceased person
and any other mode of transfer, not being assignment.
 Assignment of trade mark involves transfer of ownership of the
trade mark to another person or entity.
 Section 37 entitles the registered proprietor of a trade mark to
assign the trade mark and to give effectual receipts for any
consideration for such assignment.
 Under the new Act, a registered trade mark is assignable and
transmissible whether with or without goodwill of the business
either in respect of all goods or services or part thereof.
 The assignment or transmission of trade mark has been
prohibited under Section 40, where multiple exclusive rights
would be created in more than one person in relation to same
goods or services; same description of goods or services; or
goods or services or description of goods or services associated
with each other, the use of such trade marks would be likely to31
Relief in Suits for Infringement/Passing Off Civil
Litigation

 A suit can be initiated either under the law of passing off or for
infringement under the Trade Marks Act, 1999 depending on
whether the trade mark is unregistered, pending registration or
registered respectively

 Jurisdiction and Venue: The suit for passing off and/or

infringement can be initiated either in the District Court or in the
High Court depending on the valuation of the suit


 The suit can be at the place where the rights holder or one of the
rights holders actually and voluntarily reside or work for gain or
carries on business

32
Relief in Suits for Infringement/Passing Off Civil Litigation

 Elements of the Complaint: In the complaint, the rights holder is

required to demonstrate that
 (a) the alleged infringing act involves a mark that is identical or
similar to a trade mark of the rights holder;
 (b) the infringing representation of a trade mark is being used in
connection with goods or services and might lead to confusion in
public regarding the origin of the infringing goods/services;
 (c) the unlawful act interfered with the trade mark holder's rights
of exclusive use or caused the rights holder economic loss.
 Section 135 expressly stipulates that the relief which a Court may
grant in any suit for infringement or for passing off referred to in
Section 134 includes injunction (subject to such terms, if any, as
the court thinks fit) and at the option of the plaintiff, either
damages or an account of profits, together with or without any
order for the delivery up of the infringing labels and marks for
destruction or erasure.

33
Case Laws

https://spicyip.com/2016/08/a-case-study-which-de
als-with-trademark-infringement-aditya-birla-nuvo-
limited-v-ms-r-s-sales-corporation-anr.html
 The Coca Cola Co. v. Bisleri International Pvt.
Ltd. (Manu/DE/2698/2009)
 Bisleri, which originally owned the trademark of mango drink
MAAZA, sold it to Coca Cola in India.
 Bisleri later applied for registration of MAAZA trademark in Turkey
and started to export the mango drink with the trademark of
MAAZA.
 Coca Cola approached the Indian courts asking for an injunction
along with damages against Bisleri for infringement of its
trademark MAAZA as well as to restrain Bisleri from divulging the
formulation of the drink.
 Coca Cola succeeded in obtaining a temporary injunction against
Bisleri for infringement of the trademark.

34
Case Laws
 M/S Castrol Limited & Anr. v. Iqbal Singh Chawla &
Anr. [CS (OS) 4/2011]
 The Plaintiff is the owner of the trademark ‘CASTROL’ and
‘ACTIV’.
 The Plaintiff found out in 2010 that the Defendant had been
selling 4T oil under the ‘LUMAX ACTIVE’ trademark.
 The Plaintiff also alleged that the trade dress of its products,
including the layout and the font, was being imitated by the
Defendant.
 The Delhi High Court granted a permanent injunction against the
Defendant for preventing the use of trademark ‘ACTIVE’ in a
manner that resembled the packaging and font of the Plaintiff’s
products.
 However, the Court clarified that the injunction would not restrain
the Defendant from using their mark ‘ACTIVE’ in different
packaging, font, and trade dress than that of the Plaintiff.

35
Case Laws
 Cadbury India Limited and Ors. v. Neeraj Food
Products [142 (2007) DLT 724]
 The Plaintiff is a well-known producer and manufacturer of
chocolates and confections and has a trademark ‘GEMS’
registered in its name.
 The Plaintiff approached the court for an injunction against the
Defendant who was allegedly selling a product under the mark
‘JAMES BOND’ which resembled the ‘GEMS’ product of the
Plaintiff in packaging and size.
 The Plaintiff claimed that the product sold with mark of ‘JAMES
BOND’ was deceptively similar to ‘GEMS’.
 The court held that the products of the Defendant were indeed
deceptively similar to that of the Plaintiff and granted an
injunction restraining the Defendant from selling the said
product.

36
Ex-parte Interim Injunction
 Most Indian Courts will grant ex-parte interim injunctions.
 Ex-parte interim injunction is a temporary injunction granted
without any notice to the infringer restraining him from using the
infringing mark during the pendency of the trial.
 This injunction is normally granted at the early stages of the trial
and many a times on the first date of hearing itself, provided that
the rights holder is able to establish its rights before the Court
and prove the gravity of the offence, merits immediate
consideration.
 An interlocutory order for any of the following mattes can also be
passed, namely:—
 (a) for discovery of documents;
 (b) preserving of infringing goods, documents or other evidence
which are related to the subject-matter of the suit;
 (c) restraining the defendant from disposing of or dealing with his
assets in a manner which may adversely affect plaintiff’s ability
to recover damages, costs or other pecuniary remedies which
may be finally awarded to the plaintiff.
37
 The distinction between a suit based on infringement and that
based on passing off was explained by the Supreme Court in
Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical
Laboratories, AIR 1965 SC 980.
 It was explained that "while an action for passing off is a
common law remedy being in substance an action for deceit, that
is, a passing off by a person of his own goods as those of
another, that is not the gist of an action for infringement.
 The action for infringement is a statutory remedy conferred on
the registered proprietor of a registered trade mark for the
vindication of the 'exclusive right to the use of the trade mark in
relation to those goods'.
 The use by the defendant of the trade mark of the plaintiff is not
essential in an action for passing off, but is the sine qua non in
the case of an action for infringement."

38
Copyright
Copyright
 Copyright is a right given by the law to creators of literary,
dramatic, musical and artistic works and producers of
cinematograph films and sound recordings

 Unlike the case with patents, copyright protects the expressions

and not the ideas

 There is no copyright in an idea

 https://indiankanoon.org/docfragment/1734007/?
formInput=copyright%20cases
 https://
www.legalserviceindia.com/legal/article-8110-main-findings-in-r-g
-anand-v-deluxe-films-1978-sc-and-its-relevance-today.html

 Just as you would want to protect anything that you own, creators
want to protect their works.

 Copyright ensures certain minimum safeguards of the rights of40

Copyright
 The protection provided by copyright to the efforts of writers,
artists, designers, dramatists, musicians, architects and
producers of sound recordings, cinematograph films and
computer software, creates an atmosphere conducive to
creativity, which induces them to create more and motivates
others to create

 Creativity being the keystone of progress, no civilized society can

afford to ignore the basic requirement of encouraging the same


 Economic and social development of a society is dependent on

creativity.

41
MEANING AND RIGHTS CONFERRED
 Copyright is a right given by the law to creators of literary,
dramatic, musical and artistic works and producers of
cinematograph films and sound recordings
 In fact, it is a bundle of rights including, inter alia, rights of
reproduction, communication to the public, adaptation and
translation of the work.
 It means the sole right to produce or reproduce the work or any
substantial part thereof in any material form whatsoever (Kartar
Singh Giani v. Ladha Singh & Others AIR 1934 Lah 777).
 Section 14 of the Act defines the term Copyright as to mean the
exclusive right to do or authorise the doing of the following acts
in respect of a work or any substantial part thereof, namely

42
 In the case of literary, dramatic or musical work (except
computer programme):
 (i) reproducing the work in any material form which includes
storing of it in any medium by electronic means;
 (ii) issuing copies of the work to the public which are not already
in circulation;
 (iii) performing the work in public or communicating it to the
public;
 (iv) making any cinematograph film or sound recording in respect
of the work; making any translation or adaptation of the work.
 Further any of the above mentioned acts in relation to work can
be done in the case of translation or adaptation of the work. In
the case of a computer programme:
 (i) to do any of the acts specified in respect of a literary,
dramatic or musical work; and
 (ii) to sell or give on commercial rental or offer for sale or for
commercial rental any copy of the computer programme.
43
 However, such commercial rental does not apply in respect of
computer programmes where the programme itself is not the
essential object of the rental.

 In the case of an artistic work:

 (i) reproducing the work in any material form including depiction
in three dimensions of a two dimensional work or in two
dimensions of a three dimensional work;
 (ii) communicating the work to the public;
 (iii) issuing copies of work to the public which are not already in
existence;
 (iv) including work in any cinematograph film; making adaptation
of the work, and to do any of the above acts in relation to an
adaptation of the work.
 .

44
 In the case of cinematograph film and sound recording:
 (i) making a copy of the film including a photograph of any image
or making any other sound recording embodying it;
 (ii) selling or giving on hire or offer for sale or hire any copy of
the film/sound recording even if such copy has been sold or given
on hire on earlier occasions; and
 (iii) communicating the film/sound recording to the public.

 In the case of a sound recording: •

 To make any other sound recording embodying it •
 To sell or give on hire, or offer for sale or hire, any copy of the
sound recording •
 To communicate the sound recording to the public.

45
Objective
 The main objective of the Act is to give protection to the owner of
the copyright from the dishonest manufacturers, who try to
confuse public and make them believe that the infringed
products are the products of the owner.

 Further, it wants to discourage the dishonest manufacturers from

enchasing the goodwill of the owner of the copyright, who has
established itself in the market with its own efforts [Hawkins
Cookers Ltd. v. Magicook Appliances Co., 00(2002) DLT698].

46
Nature of Copyright Protection

 Automatic
 Copyright is an unregistered right which subsists automatically as
soon as the work that is eligible for protection is created and
recorded on some medium.
 Originality The work protected need not be new.
 However, it must be original in the sense that it is not copied
from some other source but is the result of an application of
effort by the creator of the work.

 Exclusions
 Copyright protects the expression of ideas but not the idea or
concept underlying a piece of work.
 For that reason, procedures, methods of operation and
mathematical concepts are excluded from copyright protection

47
Works in which Copyright Subsists
 Section 13 of the Copyright Act provides that copyright shall
subsist throughout India in certain classes of works which are
enumerated in the section.
 Copyright subsists throughout India in the following classes of
works:
 Original literary, dramatic, musical and artistic works;
 Cinematograph films; and
 Sound recordings.
 In Macmillan and Company Limited v. K. and J. Cooper, AIR 1924
PC 75, it was held that the word ‘original’ does not mean that the
work must be the expression of original or inventive thought.
Copyright Acts are not concerned with the origin of ideas, but
with the expression of thought; and in the case of ‘literary work,
with the expression of thought in print or writing. The originality
which is required relates to the expression of the thought; but the
Act does not require that the expression must be in an original or
novel form, but that the work must not be copied

48
COPYRIGHT PERTAINING TO SOFTWARE

 The definition of ”Literary wok” under section 2 (o) of the Copy

right Act, 1957 includes computer programmes, tables and
compilations including computer "literary data bases.

 Computer programme as stated above was included within the

definition of "literary work" in 1984 and
 the new definition of "computer programme" under Section 2
(ffc) introduced in 1994 means a set of instructions expressed in
words, codes or in any other form, including a machine-readable
medium, capable of causing a computer to perform a particular
task or achieve a particular result

49
AUTHORSHIP AND OWNERSHIP
 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.
 Generally the author is the first owner of copyright in a work.

 “Author” as per Section 2(d) of the Act means •

 In the case of a literary or dramatic work the author, i.e., the
person who creates the work.
 In the case of a musical work, the composer.
 In the case of a cinematograph film, the producer.
 In the case of a sound recording, the producer.
 In the case of a photograph, the photographer.
 In the case of any literary, dramatic, musical or artistic work
which is computer-generated, the person who causes the work to
be created.

50
 In a musical sound recording there are many right holders. For
example, the lyricist who wrote the lyrics, the composer who set
the music, the singer who sang the song, the musician (s) who
performed the background music, and the person or company
who produced the sound recording.
 A sound recording generally comprises various rights. It is
necessary to obtain the licences from each and every right owner
in the sound recording.
 This would, inter alia, include the producer of the sound
recording, the lyricist who wrote the lyrics, and the musician who
composed the music.
 In the case of a government work, government shall, in the
absence of any agreement to the contrary, be the first owner of
the copyright therein. in.

51
 In the case of a work made or first published by or under the
direction or control of any public undertaking, such public
undertaking shall, in the absence of any agreement to the
contrary, be the first owner of the copyright therein.
 In the case of a literary, dramatic or artistic work made by the
author in the course of his employment by the proprietor of a
newspaper, magazine or similar periodical under a contract of
service or apprenticeship, for the purpose of publication in a
newspaper, magazine or similar periodical, the said proprietor
shall, in the absence of any agreement to the contrary, be the
first owner of the copyright in the work
 In the case of a work made in the course of the author’s
employment under a contract of service or apprenticeship, the
employer shall, in the absence of any agreement to the contrary,
be the first owner of the copyright therein.
 In the case of a photograph taken, or a painting or portrait
drawn, or an engraving or a cinematograph film made, for
valuable consideration at the instance of any person, such
person shall, in the absence of any agreement to the contrary, be52
Term of Copyright

 Sections 22 to 29 deal with term of copyright in respect of

published literary, dramatic, musical and artistic works;
anonymous and pseudonymous; posthumous, photographs,
cinematograph films, sound recording, Government works, works
of PSUs and works of international organizations.
 Literary, dramatic, musical or artistic works enjoy copyright
protection for the life time of the author plus 60 years beyond i.e.
60 years after his death.
 In the case of joint authorship which implies collaboration of two
or more authors in the production of the work, the term of
copyright is to be construed as a reference to the author who
dies last.
 In the case of copyright in posthumous, anonymous and
pseudonymous works, photographs, cinematograph films, sound
recordings, works of Government, public undertaking and
international organizations, the term of protection is 60 years
from the beginning of the calendar year next following the year
in which the work has been first published
53
 The Copyright (Amendment) Act, 1994 has given special right to
every broadcasting organisation known as broadcast
reproduction right in respect of its broadcasts.
 This right is to be enjoyed by every broadcasting organisation for
a period of twenty-five years from the beginning of the calendar
year next following the year in which the broadcast is made.
 In terms of Copyright (Amendment) Act, 1999 if any performer
appears or engages in any performance, he has a special right in
relation to such performance called performers right to be
enjoyed for a period of fifty years.

 COPYRIGHT OFFICE Section 9 of the Copyright Act requires for

establishment of an office to be called the Copyright Office for
the purpose of the Act.
 The Copyright Office is to be under the immediate control of a
Registrar of Copyrights to be appointed by the Central
Government, who would act under the superintendence and
directions of the Central Government
54
Assignment of Copyright
 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
 Section 18 of the Copyright Act provides for the assignment of
copyright in an existing work as well as future work.
 In both the cases an assignment may be made of the copyright
either wholly or partially and generally or subject to limitations
and that too for the whole period of copyright or part thereof.
 However, in case of assignment of copyright in any future work,
the assignment has the real effect only when the work comes
into existence.
 Section 18(3) explains that a assignee in respect of assignment
of the copyright in future work include the legal representative of
the assignee, if the assignee dies before the work comes into
existence.

55
Mode of Assignment
 Section 19 of the Act provides that an assignment of copyright should be
in writing signed by the owner of the copyright.
 Mere acceptance of remuneration or delivery of manuscript does not
constitute an assignment of copyright.
 Oral assignment is invalid and it is impermissible in law. Setty v. Dr.
Suryakantha U. Kamath K.A. Venugopala Setty v. Dr. Suryakantha U.
Kamath AIR 1992 Kar 1.
 Section 19 requires that the assignment should be in writing signed by
the assignor or by his duly authorized agent—if the assignment appears
from any document and it is signed by the assignor or by his authorized
agent the statutory requirement is fulfilled.
 The assignment of copyright should specify the assigned work, rights
including duration, territorial extent of assignment and the amount of
royalty.
 However, in the absence of duration and territorial extent, the
assignment remains valid for a period of five years and within the
territory of India.
 In case assignee does not exercise his rights within a period of one year
from the date of assignment, the assignment in respect of such rights
shall be deemed to have lapsed after the expiry of said period, unless
otherwise specified in the assignment. 56
Licences by Owners of Copyright
 Section 30 of the Act empowers the owner of the copyright in any
existing work or the prospective owner of the copyright in any
future work to grant any interest in the right by licence in writing
by him or by his duly authorised agent.
 However, in the case of a licence relating to copyright in any
future work, the licence shall take effect only when the work
comes into existence.
 Explanation to this section clarifies that where a person to whom
a licence relating to copyright in any future work is granted, dies
before the work comes into existence, his legal representatives
shall, in the absence of any provision to the contrary in the
licence, be entitled to the benefit of the licence.

57
Registration of Copyright
 Chapter X of the Act containing Sections 44 to 50A deal with various
aspects of registration of copyright.
 The mechanism for registration of copyright has been contemplated
under Section 44 of the Act.
 It is evident from the provisions of the aforesaid section that registration
of the work under the Copyright Act is not compulsory and is not a
condition precedent for maintaining a suit for damages, if somebody
infringes the copyright.
 Registration is not a prerequisite for acquisition of a copyright (Nav
Sahitya Prakash & Others v. Anan Kumar & Others AIR 1981 All 200).
 Sections 44 and 45 of the Act is only an enabling provision and the
provisions contained therein do not affect common law right to sue for
infringement of the copyright, therefore, registration of the work under
the Act is not compulsory and that registration is not a condition
precedent for maintaining a suit for damages for infringement of
copyright (R. Madhavan v. S K Nayar AIR 1988 Ker 39).
 The only effect of registration is what is stated in Section 48, to wit, that
it shall be prima facie evidence of the particulars entered in the register.

58
INFRINGEMENT OF COPYRIGHT
 Copyright protection gives exclusive rights to the owners of the
work to reproduce the work enabling them to derive financial
benefits by exercising such rights.
 If any person without authorisation from the owner exercises
these rights in respect of the work which has copyright protection
it constitutes an infringement of the copyright.
 If the reproduction of the work is carried out after the expiry of
the copyright term it will not amount to an infringement
 In Penguin Books Ltd., England v. M/s India Book Distributors &
Others AIR 1985 Del. 29, it was observed that whenever there is
misappropriation of intellectual property of which the primary
beneficiary is the copyright owner there is infringement of
copyright.
 Copyright is a property right. Throughout the world it is regarded
as a form of property worthy of special protection in the ultimate
public interest.

59
 Section 51 of the Act contemplates situations where copyright in
a work shall be deemed to be infringed.
 As per this section copyright in a work is infringed when any
person without a licence granted by the owner of the copyright or
the Registrar of Copyright or in contravention of the conditions of
a licence so granted or of any condition imposed by a competent
authority does —
 (1) anything for which the exclusive right is conferred upon the
owner of the copyright, or
 (2) permits for profit any place to be used for the communication
of the work to public where such a communication constitutes an
infringement of the copyright in the work, unless he was not
aware and had no reasonable ground for believing that such
communication would be an infringement of copyright.

60
 (3) when any person
 (i) makes for sale or hire or lets for hire or by way of trade display
or offers for sale or hire, or
 (ii) distributes either for the purpose of trade or to such an extent
as to affect prejudicially the owner of the copyright, or
 (iii) by way of trade, exhibits in public, or
 (iv) imports into India any infringing copies of the work.
 However, import of one copy of any work is allowed for private
and domestic use of the importer.
 Explanation to Section 51 clarifies that the reproduction of
literary, dramatic, musical or artistic work in the form of
cinematograph film shall be deemed to be an infringing copy.
 The copyright in a work shall be deemed to be infringed by any
person who, without the consent of the owner of the copyright,
does anything, the sole right to do which is conferred on the
owner of the copyright. Kartar Singh Giani v. Ladha Singh &
Others AIR 1934, Lah 777 (DB).
61
Remedies against Infringement of Copyright
 Protection of rights under the copyright law, which is basically a
negative right is as much a problem of complying with the
mandatory provisions of the procedural law as the effective
exercise of investigative and adjudicatory functions by the
enforcing authorities and the courts.
 Section 54 to Section 62 of the Copyright Act provide for civil
remedies under the Act.
 Section 55 provides that where copyright in any work has been
infringed, the owner of the copyright can, except as otherwise
provided in the Act, be entitled to all remedies like injunctions,
damages and accounts as are conferred by law for the
infringement of a right.
 However, if the defendant proves that at the date of the
infringement he was not aware and had no reasonable ground to
believe that copyright subsisted in the work, the plaintiff will not
be entitled to any remedy other than an injunction in respect of
the infringement and a decree for the whole or part of the profits
made by the defendant by the sale of the infringing copies as the
court may, in the circumstances, deem reasonable. 62
 On non-appearance of the plaintiff, an ex-parte order was passed
and it was ruled that, the unjust enrichment by the infringing
party, was a mischief and the plaintiff was to be protected from it
as per Section 55 of the Copyright Act, 1957.
 Hence permanent injunction was granted

63