INTELLECTUAL PROPERTY LAWS –

HANDOUT
Prepared By
R AARTHI RATHNA, M.L., (IPL)
Assistant Professor
School of Excellence in Law
TN Dr Ambedkar Law University

UNIT –I

INTELLECTUAL PROPERTY:

Meaning and concept of Intellectual Property:

Definition:

Intellectual property is the product of the human intellect including creativity

concepts, inventions, industrial models, trademarks, songs, literature, symbols, names,
brands, etc. Intellectual Property Rights do not differ from other property rights. They
allow their owner to completely benefit from his/her product which was initially an idea
that developed and crystallized. They also entitle him/her to prevent others from using,
dealing or tampering with his/her product without prior permission from him/her. He/she
can in fact legally sue them and force them to stop and compensate for any damages.

History of IPR:

IPR is not a new concept. It is believed that IPR initially started in North Italy
during the Renaissance era. In 1474, Venice issued a law regulating patents protection
that granted an exclusive right for the owner. The copyright dates back to 1440 A.D.
when Johannes Gutenberg invented the printing press with replaceable/moveable wooden
or metal letters. Late in the 19th century, a number of countries felt the necessity of
laying down laws regulating IPR. Globally, two conventions constituting the basis for
IPR system worldwide had been signed; Paris Convention for the Protection of Industrial
Property (1883) Berne Convention for the Protection of Literary and Artistic Works
(1886).

Protection of Intellectual Property Rights

Protection of IPR allows the innovator, brand owner, patent holder and copyright
holder to benefit from his/her work, labor and investment, which does not mean
monopoly of the intellect. Such rights are set out in the International Declaration of
Human Rights, which provides for the right to benefit from the protection of the moral
and physical interests resulting from the right holder’s work; literal or artistic product.1

Convention Establishing the World Intellectual Property Organization:

The WIPO Convention, the constituent instrument of the World Intellectual

Property Organization (WIPO), was signed at Stockholm on July 14, 1967, entered into
force in 1970 and was amended in 1979. WIPO is an intergovernmental organization
which in 1974 became one of the specialized agencies of the United Nations system.

The origins of WIPO go back to 1883 and 1886 when the Paris Convention for
the Protection of Industrial Property and the Berne Convention for the Protection of
Literary and Artistic Works provided for the establishment of an "International Bureau".
The two bureaus were united in 1893 and, in 1970, were replaced by the World
Intellectual Property Organization, by virtue of the WIPO Convention.2

WTO:
There are a number of ways of looking at the World Trade Organization. It is an
organization for trade opening. It is a forum for governments to negotiate trade
agreements. It is a place for them to settle trade disputes. It operates a system of trade
rules. Essentially, the WTO is a place where member governments try to sort out the
trade problems they face with each other.

1
[Link]
2 [Link]
 The WTO was born out of negotiations, and everything the WTO does is the
result of negotiations. The bulk of the WTO’s current work comes from the 1986–94
negotiations called the Uruguay Round and earlier negotiations under the General
Agreement on Tariffs and Trade (GATT). The WTO is currently the host to new
negotiations, under the ‘Doha Development Agenda’ launched in 2001.

Where countries have faced trade barriers and wanted them lowered, the
negotiations have helped to open markets for trade. But the WTO is not just about
opening markets, and in some circumstances its rules support maintaining trade barriers,
for example, to protect consumers or prevent the spread of disease.

At its heart are the WTO agreements, negotiated and signed by the bulk of the
world’s trading nations. These documents provide the legal ground rules for international
commerce. They are essentially contracts, binding governments to keep their trade
policies within agreed limits. Although negotiated and signed by governments, the goal is
to help producers of goods and services, exporters, and importers conduct their business,
while allowing governments to meet social and environmental objectives.

The system’s overriding purpose is to help trade flow as freely as possible so long
as there are no undesirable side effects because this is important for economic
development and well-being. That partly means removing obstacles. It also means
ensuring that individuals, companies and governments know what the trade rules are
around the world, and giving them the confidence that there will be no sudden changes of
policy. In other words, the rules have to be ‘transparent’ and predictable.

Trade relations often involve conflicting interests. Agreements, including those

painstakingly negotiated in the WTO system, often need interpreting. The most
harmonious way to settle these differences is through some neutral procedure based on an
agreed legal foundation. That is the purpose behind the dispute settlement process written
into the WTO agreements.3

Overview: The TRIPS Agreement:

3 [Link]
 The TRIPS Agreement, which came into effect on 1 January 1995, is to date the
most comprehensive multilateral agreement on intellectual property.

The areas of intellectual property that it covers are: copyright and related
rights (i.e. the rights of performers, producers of sound recordings and broadcasting
organizations); trademarks including service marks; geographical indications including
appellations of origin; industrial designs; patents including the protection of new varieties
of plants; the layout-designs of integrated circuits; and undisclosed information including
trade secrets and test data.
The three main features of the Agreement are:

● Standards: In respect of each of the main areas of intellectual property

covered by the TRIPS Agreement, the Agreement sets out the minimum
standards of protection to be provided by each Member. Each of the main
elements of protection is defined, namely the subject-matter to be protected,
the rights to be conferred and permissible exceptions to those rights, and the
minimum duration of protection. The Agreement sets these standards by
requiring, first, that the substantive obligations of the main conventions of the
WIPO, the Paris Convention for the Protection of Industrial Property (Paris
Convention) and the Berne Convention for the Protection of Literary and
Artistic Works (Berne Convention) in their most recent versions, must be
complied with. With the exception of the provisions of the Berne Convention
on moral rights, all the main substantive provisions of these conventions are
incorporated by reference and thus become obligations under the TRIPS
Agreement between TRIPS Member countries. The relevant provisions are to
be found in Articles 2.1 and 9.1 of the TRIPS Agreement, which relate,
respectively, to the Paris Convention and to the Berne Convention. Secondly,
the TRIPS Agreement adds a substantial number of additional obligations on
matters where the pre-existing conventions are silent or were seen as being
inadequate. The TRIPS Agreement is thus sometimes referred to as a Berne
and Paris-plus agreement.
 ● Enforcement: The second main set of provisions deals with domestic
procedures and remedies for the enforcement of intellectual property rights.
The Agreement lays down certain general principles applicable to all IPR
enforcement procedures. In addition, it contains provisions on civil and
administrative procedures and remedies, provisional measures, special
requirements related to border measures and criminal procedures, which
specify, in a certain amount of detail, the procedures and remedies that must be
available so that right holders can effectively enforce their rights.

● Dispute settlement: The Agreement makes disputes between WTO Members

about the respect of the TRIPS obligations subject to the WTO's dispute
settlement procedures.

In addition the Agreement provides for certain basic principles, such as national
and most-favoured-nation treatment, and some general rules to ensure that procedural
difficulties in acquiring or maintaining IPRs do not nullify the substantive benefits that
should flow from the Agreement. The obligations under the Agreement will apply
equally to all Member countries, but developing countries will have a longer period to
phase them in. Special transition arrangements operate in the situation where a
developing country does not presently provide product patent protection in the area of
pharmaceuticals.

The TRIPS Agreement is a minimum standards agreement, which allows

Members to provide more extensive protection of intellectual property if they so wish.
Members are left free to determine the appropriate method of implementing the
provisions of the Agreement within their own legal system and practice.4

TRIPS and India:

In 2005, in order to comply with the requirements of TRIPS, the Indian
government introduced product patents on pharmaceuticals. For the previous three
decades, such patents had been forbidden, allowing India to develop one of the most
robust generic pharmaceutical industries in the world.

4 [Link]
 The British first introduced pharmaceutical patents to India. But in Patent Act
1970 changed the course prohibiting product patents on medicines. At that time, drug
prices in India were very high The 1970 Act served as a big boost of growth in the
domestic pharmaceutical industry. Although the law permitted process patents related to
medicines, they were very limited in scope. The law thus created significant space for the
entry of local pharmaceutical firms and they started producing active pharmaceutical
ingredients (APIs) in the mid-1970s. Indian companies became skilled in reverse
engineering and developing new processes for drug production. And gradually drug
prices were amongst the lowest in the world. In 1995, India joined the WTO and the
TRIPS Agreement. TRIPS altered the terrain of international IP law. TRIPS had more
teeth than WIPO administered treaties as treaties administered through the World
Intellectual Property Organization (WIPO) had no effective enforcement mechanism, but
the WTO incorporated a new dispute settlement system, allowing for adjudication of
TRIPS disputes and for trade sanctions against countries found to be in violation of the
Agreement.

The Doha Ministerial Conference declaration on the TRIPS agreement and public
health recognized the gravity of public health problems afflicting many less developed
countries. The declaration stressed the need for the TRIPS agreement to be part of wider
international action to address these problems. It acknowledged the concerns about its
effects on prices. The Ministerial Conference agreed that the TRIPS agreement should
not prevent members from taking measures to protect public health. WTO members
were under obligation to implement TRIPS provision by 2000, 2005, or 2016, depending
on their level of development.

India was given an extended period of time to make its patent regime complaint to
TRIPS. Consequently India passed the Patents Amendment Act, 2005 which came into
force on 1st January, 2005. Earlier India had allowed for the manufacture of generic
versions of many drugs. Through this amendment it has now implemented a product
patent regime and product patents in the pharmaceutical sector.5

5 [Link]
Dispute Settlement Mechanism:

The TRIPS Agreement addresses in an express fashion a mechanism to be

implemented by members of the World Trade Organization (WTO) towards settling
disputes arising as a result of a member's alleged failure to observe the provisions of
TRIPS. This mechanism is contained in the Dispute Settlement Understanding (DSU),
the provisions of which are contained in Annex 2 of the Marrakech Agreement. Three
basic stages are contemplated in the Understanding with a view to settling a dispute
between members concerning their rights and obligations under the provisions of the
Marrakech Agreement including TRIPS, namely
i. Consultations (Article 4, DSU);
ii. Establishment of a panel (Article 6, DSU); and
iii. Appellate review by an appellate body (Article 17, DSU)

Arbitration:
In addition to the dispute settlement mechanism comprising the basic stages
referred to above, the Understanding contemplates the possibility that the dispute be
decided through arbitration, but not as an alternative to any of the three stages previously
mentioned. Instead, binding arbitration is contemplated in the Understanding in situations
where neither the parties to the dispute no r the Dispute Settlement Body have been able
to reach an agreement as to the time within which the recommendations and rulings of
the Dispute Settlement Body are to be implemented by the Member concerned. The
resolutions of the Dispute Settlement Body, i.e. the recommendations and rulings thereof,
are issued by the Dispute Settlement Body after adoption of the panel or Appellate Body
report. Expressed differently, arbitration is contemplated in the Understanding not
necessarily as a means to settle a dispute resulting from alleged violations to a TRIPS
provision by a member. Arbitration is contemplated in the Understanding as a means to
determine the time within which the member concerned should comply with the
recommendations or rulings of the Dispute Settlement Body.6

6
[Link]
TRIPS%20and%20the%20Dispute%20Settlement%[Link]
 UNIT – II
Patents
The Patents Act, 1970 – Object:
The creative work of the human mind is protected through several measures and the main
motivation for the same is that such protection is a definite measure of encouragement for
the creative activity. Several forms of protection of the creative activity have come about
including those which are of particular interest in the industrial development. Patents
being one of them. Generally speaking, patent is a monopoly grant and it enables the
inventor to control the output and within the limits set by demand, the price of the
patented products. Underlying economic and commercial justification for the patent
system is that it acts as a stimulus to investment in the Industrial innovation. Innovative
technology leads to the maintenance of and increase in nations stock of valuable,
tradeable and industrial assets.
The Patents Act, 1970 remained in force for about 24 years without any change
till December 1994. Being a landmark in the industrial development of India, the basic
philosophy of the Act is that patents are granted to encourage inventions and to secure
that these inventions are worked on a commercial scale without undue delay; and patents
are granted not merely to enable patentee to enjoy a monopoly for the importation of the
patented article into the country. The said philosophy is being implemented through
compulsory licensing, registration of only process patents for food, medicine or drug,
pesticides and substances produced by chemical processes which, apart from chemical
substances normally understood, also include items such as alloys, optical glass, semi-
conductors, inter metallic compounds etc. It may, however, be noted that products vital
for our economy such as agriculture & horticulture products, atomic energy inventions
and all living things are not patentable. Thus, the Patents Act 1970 was expected to
provide a reasonable balance between adequate and effective protection of patents on the
one hand and the technology development, public interest and specific needs of the
country on the other hand.
Salient features of the Act:
A patent is an official document given to an inventor by the government allowing
him to exclude anyone else from commercially exploiting his invention for a limited
period which is 20 years at present. As per the Supreme Court, the object of Patent Law
is to encourage scientific research, new technology and industrial progress. Grant of
exclusive privilege to own, use or sell the method or the product patented for a limited
period, stimulates new inventions of commercial utility. The price of the grant of the
monopoly is the disclosure of the invention at the Patent Office, which, after the expiry of
the fixed period of the monopoly, passes into the public domain [M/s Bishwanath Prasad
v. Hindustan Metal Industries, AIR1982 SC 1444]. By granting an exclusive right,
patents provide incentives to individuals, offering them recognition for their creativity
and material reward for their marketable inventions. In return for the exclusive right, the
inventor has to adequately disclose the patented invention to the public, so that others can
gain the new knowledge and can further develop the technology. The disclosure of the
invention is thus an essential consideration in any patent granting procedure.
Patentable inventions:
As stated above, a patent is granted for an invention which may be related to any process
or product. An invention is different from a discovery. Discovery is something that
already existed but had not been found.
Not all inventions are patentable. An invention must fulfill certain requirements known as
conditions of patentability. The word “invention” under the Patents Act 1970 means “a
new product or process involving an inventive step and capable of industrial application.
(Section 2(1)(j)).
The patent must be in respect of an invention and not a discovery. The fundamental
principle of Patent Law is that a patent is granted only for an invention which must be
new and useful. That is to say, it must have novelty and utility. It is essential for the
validity of a patent that it must be the inventor’s own discovery as opposed to mere
verification of what was already known before the date of the patent... It is important to
bear in mind that in order to be patentable an improvement on something known before
or a combination of different matters already known, should be something more than a
mere workshop improvement; and must independently satisfy the test of invention or an
“inventive step”. To be patentable the improvement or the combination must produce a
new result, or a new article or a better or cheaper article than before.
“New invention” is defined as any invention or technology which has not been
anticipated by publication in any document or used in the country or elsewhere in the
world before the date of filing of patent application with complete specification, i.e., the
subject matter has not fallen in public domain or that it does not form part of the state of
the art [Section 2(1)(l); Where, capable of industrial application, in relation to an
invention, means that the invention is capable of being made or used in an industry
[Section 2(1)(ac)].
In Raj Prakash v. Mangat Ram Choudhary AIR 1978 Del.1, it was held that invention, as
is well known, is to find out some thing or discover some thing not found or discovered
by anyone before. It is not necessary that the invention should be any thing complicated.
The essential thing is that the inventor was first to adopt it. The principal therefore, is that
every simple invention that is claimed, so long as it is something which is novel or new,
it would be an invention and the claims and specifications have to be read in that light.
Therefore, the conditions of patentability are:
• Novelty
• Inventive step (non-obviousness) and
• Industrial applicability (utility)
Novelty
A novel invention is one, which has not been disclosed, in the prior art where prior art
means everything that has been published, presented or otherwise disclosed to the public
on the date of patent (The prior art includes documents in foreign languages disclosed in
any format in any country of the world.) For an invention to be judged as novel, the
disclosed information should not be available in the 'prior art'. This means that there
should not be any prior disclosure of any information contained in the application for
patent (anywhere in the public domain, either written or in any other form, or in any
language) before the date on which the application is first filed i.e. the 'priority date'.
Therefore, an invention shall be considered to be new, if it does not form part of the prior
art. Although the term prior art has not been defined under the Indian Patents Act, it shall
be determined by the provisions of Section 13 read with the provisions of Sections 29 to
34.
(a) An invention shall not be considered to be novel if it has been anticipated by
publication before the date of the filing of the application in any of the specification filed
in pursuance of application for patent in India on or after the 1st day of January 1912.
(b) An invention shall not be considered to be novel if it has been anticipated by
publication made before the date of filing of the application in any of the documents in
any country.
(c) An invention shall not be considered to be novel if it has been claimed in any claim of
any other complete specification filed in India which is filed before the application but
published after said application.
(d) An invention shall not be considered to be novel if it has been anticipated having
regard to the knowledge, oral or otherwise, available within any local or indigenous
community in India or elsewhere.
In Ganendro Nath Banerji v. Dhanpal Das Gupta, AIR1945 Oudh 6, it was held that no
general rule can be laid down as to what does or does not constitute an invention. The
general criterion seems to be whether that which is claimed lies within the limits of
development of some existing trade, in the sense that it is such a development as an
ordinary person skilled in that trade could, if he wishes so to do, naturally, make without
any inventive step. But novelty need only be established in the process of manufacturing,
not in the article produced. Novel combination of two known ideas may be sufficient to
establish novelty of subject matter in this respect.
In Ram Narain Kher v. M/s Ambassador Industries, AIR 1976 Del 87, the Delhi High
Court has held that at the time the patent is granted to a party it is essential that the party
claiming patent should specify what particular features of his device distinguish it from
those which had gone before and show the nature of the improvement which is said to
constitute the invention. A person claiming a patent has not only to allege the
improvement in art in the form but also that the improvement effected a new and very
useful addition to the existing state of knowledge. The novelty or the invention has to be
succinctly stated in the claim.
Inventive Step (Non-obviousness)
Inventive step is a feature of an invention that involves technical advance as compared to
existing knowledge or having economic significance or both, making the invention non
obvious to a person skilled in art. Here definition of inventive step has been enlarged to
include economic significance of the invention apart from already existing criteria for
determining inventive step.
An invention shall not be considered as involving an inventive step, if, having regard to
the state of the art, it is obvious to a person skilled in the art. The term "obvious" means
that which does not go beyond the normal progress of technology but merely follows
plainly or logically from the prior art, i.e. something which does not involve the exercise
of any skill or ability beyond that to be expected of the person skilled in the Art.
For this purpose a “person skilled in the art” should be presumed to be an ordinary
practitioner aware of what was general common knowledge in the relevant art at the
relevant date. In some cases the person skilled in the art may be thought of as a group or
team of persons rather than as a single person.
Industrial Applicability
An invention is capable of industrial application if it satisfies three conditions,
cumulatively: • can be made;
• can be used in at least one field of activity;
• can be reproduced with the same characteristics as many times as necessary.
1. An invention to be patentable must be useful. If the subject matter is devoid of utility it
does not satisfy the
requirement of invention.
2. For the purpose of utility, the element of commercial or pecuniary success has no
relation to the question of utility in patent law.
3. The usefulness of an alleged invention depends not on whether by following the
directions in the complete specification all the results not necessary for commercial
success can be obtained, but on whether by such directions the effects that the
application/patentee professed to produce could be obtained.
4. The meaning of usefulness is therefore useful for the purpose indicated by the
applicant or patentee whether a non-commercial utility is involved.
5. The usefulness of the invention is to be judged, by the reference to the state of things at
the date of filing of the patent application, if the invention was then useful, the fact that
subsequent improvement have replaced the patented invention render it obsolete and
commercially of no value, does not invalidate the patent.
6. Speculation or imaginary industrial uses are not considered to satisfy the industrial
application requirement.
Non patentable subject matter:
An invention may satisfy the condition of novelty, inventiveness and usefulness
but it may not qualify for a patent. The following are not inventions within the meaning
of Section 3 of the Patents Act, 1970:
(a) an invention which is frivolous or which claims anything obviously contrary to well
established natural laws;
(b) an invention the primary or intended use or commercial exploitation of which could
be contrary to public order or morality or which causes serious prejudice to human,
animal or plant life or health or to the environment;
(c) the mere discovery of a scientific principle or the formulation of an abstract theory or
discovery of any living thing or non-living substances occurring in nature;
(d) the mere discovery of a new form of a known substance which does not result in the
enhancement of the known efficacy of that substance or the mere discovery of any
property or mere new use for a known substance or of the mere use of a known process,
machine or apparatus unless such known process results in a new product or employs at
least one new reactant; Explanation to clause (d) clarifies that salts, esters, polymorphs,
metabolites, pure form, particle size, isomers, mixtures of isomers, complexes,
combinations and other derivatives of known substance shall be considered to be the
same substance, unless they differ significantly in properties with regard to efficacy.
(e) a substance obtained by a mere admixture resulting only in the aggregation of the
properties of the components thereof or a process for producing such substance;
(f) the mere arrangement or re-arrangement or duplication of known devices each
functioning independently of one another in a known way;
(g) omitted by Patents (Amendment) Act, 2002.

(h) a method of agriculture or horticulture;
(i) any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic
or other treatment of human beings or any process for a similar treatment of animals to
render them free of disease or to increase their economic value or that of their products;
(j) plants and animals in whole or any part thereof other than micro-organisms but
including seeds, varieties and species and essentially biological processes for production
or propagation of plants and animals;
(k) a computer programme per se other than its technical application to industry or a
combination with hardware;
(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever
including cinematographic works and television productions;
(m) a mere scheme or rule or method of performing mental act or method of playing
game;
(n) a presentation of information;
(o) topography of integrated circuits;
(p) an invention which in effect, is traditional knowledge or which is an aggregation or
duplication of known properties of traditionally known component or components.
Section 4 prohibits the grant of patent in respect of an invention relating to atomic energy
falling within Sub- section (1) of Section 20 of the Atomic Energy Act, 1962.
Section 20 of the Atomic Energy Act, 1962 contains special provision relating to
inventions. Under Section 20 (1) of the Atomic Energy Act, 1962 “no patents shall be
granted for inventions which in the opinion of the Central Government are useful for or
relate to the production, control, use or disposal of atomic energy or the prospecting,
mining, extraction, production, physical and chemical treatment, fabrication, enrichment,
canning or use of any prescribed substance or radioactive substance or the ensuring of
safety in atomic energy operations”.
Product/Process patents:
Section 5 of the Patent Act 1970 had provided for grant of only process patents in
certain categories of inventions. It may be pointed out here that under the Patent Act,
1970, in all other areas product and process
patents could be issued and have been issued. The Paris Convention has left this issue to
be dealt with in the States legislation in a manner of its own choice.
The TRIPs Agreement under Article 27.1 stipulates that patents shall be available for any
inventions, whether products or processes in all fields of technology except for the
exclusion stipulated under Article 27.2 and 27.3.
Pursuant to the TRIPs agreement, the Patent Act, 1970 was amended in 2002. Section 5
of the Patents Act, 1970 (as it stood after the 2002 amendments) provided that, in the case
of inventions being claimed relating to food, medicine, drugs or chemical substances,
only patents relating to the methods or processes of manufacture of such substances could
be obtained.
An explanation appended to the Section 5 provided that “chemical process” includes
biochemical, biotechnological and microbiological processes. Subsequently, Section 5 of
the Patents Act, 1970 was deleted by the Patents (Amendment) Act, 2005 that came into
force on 01.01.2005, thereby paving the way for product patents.
This deliberate strategy of denying product patent protection to pharmaceutical
inventions is traceable to the Ayyangar Committee Report, a report that formed the very
basis of the Patents Act, 1970. The Committee found that foreigners held between eighty
and ninety percent of Indian patents and that more than ninety percent of these patents
were not even worked in India. The Committee concluded that the system was being
exploited by multinationals to achieve monopolistic control over the market, especially in
relation to vital industries such as food, chemicals and pharmaceuticals.
The Patents Act has been amended keeping in view the development of technological
capability in India, coupled with the need for integrating the intellectual property system
with international practices and intellectual property regimes. The amendments have also
been aimed at making the Act a modern, harmonised and user-friendly legislation to
adequately protect national and public interests while simultaneously meeting India’s
international obligations.

Persons entitled to apply for patents:

Section 6 of the Act provides that an application for a patent for an invention may
be made by any of the following persons either alone or jointly with another:
(a) by any person claiming to be the true and first inventor of the invention;
(b) by any person being the assignee of the person claiming to be the true and first
inventor in respect of the right to make such an application;
(c) by the legal representative of any deceased person who immediately before his death
was entitled to make such an application.
As per Section 2(1)(y), “true and first Inventor” does not include either the first importer
of an invention into India or a person to whom an invention is first communicated from
outside India. The applicant should disclose the name, address and nationality of the true
and first applicant.
Assignee can be a natural person or other than natural person like registered company,
research organization, educational institute or Government (S.2 (1)(s)). Assignee includes
assignee of the assignee also (S. 2(1)(ab)). ‘Proof of right’ to apply such as assignment
deed should be submitted by the assignee.
Legal representative means a person who in law represents the estate of a deceased
person (S.2 (1)(k)). In
such a case, they should file death certificate etc. as proof of right.
In case of a convention application, the legal representative or assignee of the applicant in
the Convention Country can also file a Patent Application in India.

Specification:

In order to obtain a patent, an applicant must fully and particularly describe the invention
therein claimed in a complete specification. The disclosure of the invention in a complete
specification must be such that a person skilled in the art may be able to perform the
invention. This is possible only when an applicant discloses the invention fully and
particularly including the best method of performing the invention. The Specification is a
techno-legal document containing full scientific details of the invention and claims to the
patent rights. The Specification, thus, forms a crucial part of the Patent Application. It is
mandatory on the part of an applicant to disclose fully and particularly various features
constituting the invention. The Specification may be filed either as a provisional or as a
complete specification. The Specification (provisional or complete) is to be submitted in
Form-2 along with the Application in Form-1 and other documents, in duplicate, along
with the prescribed fee as given in the First Schedule. The first page of the Form 2 shall
contain:
(a) Title of the invention;
(b) Name, address and nationality of each of the applicants for the Patent; and
(c) Preamble to the description.
The title of the invention shall sufficiently indicate the specific features of the invention.
Every Specification whether provisional or complete shall describe the invention. The
applicant shall submit drawings, wherever required. The Controller may also require the
applicant to submit drawings, if necessary at the examination stage [Section 9, 10. Rule
13. Form-1, 2].
Such drawings shall form a part of the Specification and suitable references thereto shall
be made in the Specification. The Controller may require the applicant to submit, anytime
before the grant, models or samples related to the invention for better illustration of the
invention. However, such models or samples shall not form part of the Specification.
Provisional Specification:
When the applicant finds that his invention has reached a stage wherein it can be
disclosed on paper, but has not attained the final stage, he may prepare a disclosure of the
invention in the form of a written description and submit it to Patent Office as a
provisional specification which describes the invention.
A provisional specification secures a priority date for the application over any other
application which is likely to be filed in respect of the same invention being developed
concurrently.
Immediately on receiving the Provisional Specification the Patent Office accords a filing
date and application number to the Application.
Section 9 stipulates that an application for a patent accompanying a provisional
specification, a complete specification shall be filed within twelve months from the date
of filing of the application, and if the complete specification is not so filed, the
application shall be deemed to be abandoned.
If two provisional specifications filed by an applicant are cognate or if one is a
modification of the other, the applicant may file one complete specification covering both
the provisional applications. Such a complete specification shall have to be filed within
twelve months from the date of filing of the first provisional application. In such cases,
date of filing of application is the date of filing of the earliest provisional specification
and shall bear the number of that application.
An applicant may, within twelve months from the filing of a complete specification (not
being a convention application or a PCT National Phase Application), convert the same
into a provisional specification. Consequently, the applicant has to file a complete
specification within twelve months from the date of first filing.
A provisional specification (i.e. the one filed directly or the one converted from a
complete specification) may be postdated to the date of filing of the complete
specification.
Complete Specification:
The complete specification is a techno-legal document which fully and particularly
describes the invention and discloses the best method of performing the invention. As the
complete specification is an extremely important document in the patent proceedings it is
advised that it should be drafted with utmost care without any ambiguity.
Important Elements of the Complete Specification
As per Section 10, every complete specification is required to -
(a) fully and particularly describe the invention and its operation or use and the method
by which it is to be performed;
(b) disclose the best method of performing the invention which is known to the applicant
and for which
he is entitled to claim protection; and
(c) end with a claim or claims defining the scope of the invention for which protection is
claimed; and
(d) be accompanied by an abstract to provide technical information on the invention.
Also, make reference to deposit of the biological material in the International Depository
Authority, if applicable.
However, the Controller may amend the abstract for providing better information to third
parties and if the applicant mentions a biological material in the specification which may
not be described in such a way as to satisfy clauses (a) and (b) above and if such material
is not available to the public, the application shall be completed by depositing the
material to an International Depository Authority under the Budapest Treaty and by
fulfilling the following conditions, namely:
(i) the deposit of the material shall be made not later than the date of filing the patent
application in India and a reference thereof shall be made in the specification within the
prescribed period;
(ii) all the available characteristics of the material required for it to be correctly identified
or indicated are included in the specification including the name, address of the
depository institution and the date and number of the deposit of the material at the
institution;
(iii) access to the material is available in the depository institution only after the date of
the application for patent in India or if a priority is claimed after the date of the priority;
(iv) disclose the source and geographical origin of the biological material in the
specification, when used in an invention.
A complete specification customarily begins after the title, with a general preamble
stating the subject to which the invention relates, followed by a detailed description of
one or more embodiments of the inventions. In an infringement action, the function of the
Court is to construe the claims which are alleged to have been infringed, without
reference to the body of the specification, and to refer to the body of the specification
only if there is any ambiguity or difficulty in the construction of the claims in question
[Farbwerke Hoechst v. Unichem Laboratories, AIR1969 Bom 255]
The requirements of the specifications have been discussed under Rule 13, 14, & 15.
In case of an international application designating India the title, description, drawings,
abstracts and claims filed with the application shall be taken as the complete specification
for the purposes of the Act. The claim or claims of a complete specification shall relate to
a single invention, or to a group of inventions linked so as to form a single inventive
concept, shall be clear and succinct and shall be fairly based on the matter disclosed in
the specification. [Section 10(4)(a)].

Anticipation:
Section 13 dealing with search for anticipation by previous publication and by
prior claim provides that the examiner to whom the application for a patent is referred
shall make investigation for the purpose of ascertaining whether the invention so far as
claimed in any claim of the complete specification:
(a) has been anticipated by publication before the date of filing of the applicant’s
complete specification in any specification filed in pursuance of an application for a
patent made in India and dated on or after the 1st day of January, 1912;
(b) is claimed in any claim of any other complete specification published on or after the
date of filing of the applicant’s complete specification, being a specification filed in
pursuance of an application for a patent made in India and dated before or claiming the
priority date earlier than that date.
The examiner shall, in addition, make such investigation for the purpose of ascertaining
whether the invention so far as claimed in any claim of the complete specification has
been anticipated by publication in India or elsewhere in any document other than those
mentioned in Section 13(1) before the date of filing of the applicant’s complete
specification. In case a complete specification has been amended before the grant of a
patent, the amended specification shall be examined and investigated in the like manner
as the original specification.
Secrecy of certain inventions:
1. After the initial processing and scrutiny of the applications by the patent office, if in
the opinion of the Controller an invention pertains to a subject matter relevant for the
purpose of defence as notified by the Central Government, the Controller issues a secrecy
direction prohibiting the publication of the application to the applicant and refers the
matter to the Central Government for their consideration as to whether the application is
prejudicial to the defence of India.
2. The Central Government, after considering the merits of the secrecy direction, may
give notice to the Controller as to whether the secrecy direction needs to be continued or
not.
3. The Central Government reviews the matter at an interval of six months. The applicant
may request for a reconsideration of the secrecy direction and if the same is found
reasonable by the Controller, he may request the Central Government for a review.
4. If the Central Government is of the opinion that an invention in respect of which the
Controller has not imposed a secrecy direction and is relevant for defence purposes, it
may at any time before the grant of the patent notify the Controller to that effect.
Thereupon, the Controller invokes the provisions of Section 35(1).
5. So long as any directions under Section 35 are in force, the Controller shall not take a
decision on grant/refusal of the application. [Section 35, 36, 37, 38].
Patent office and powers of controller:
● Consideration of the report of examiner by Controller:
Section 14 provides that in case the report of the examiner is adverse to the
applicant or requires any amendment of the application, specification or other documents,
the controller shall, before proceeding to dispose of the application, communicate the gist
of obligations to the applicant as expeditiously as possible and give him an opportunity of
being heard.
● Power of Controller to refuse or require amended application in certain
matters:
Section 15 empowers the Controller to refuse the application or direct to amend
the application, specification or other documents, if he is satisfied that the application or
any specification or any other document filed in pursuance thereof does not comply with
the provisions of the Act and the rules made thereunder.
● Power of Controllers to make Orders Respecting Dating of Application and
Cases of Anticipation:
Section 17 provides that at any time after the filing of an application and before the grant
of the patent, the Controller may at the request of the applicant direct that the application
shall be post-dated to such date as may be specified in the request and proceed with the
application accordingly. However, no application shall be post-dated to a date later than
six months from the date on which it was actually made or would be deemed to have
been made. This is subject to the provisions of Section 9 of the Act dealing with
provisional and complete specifications.

Where an application or specification (including drawings) or any other document is

required to be amended under Section 15, the application or specification or other
document shall, if the Controller so directs, be deemed to have been made on the date on
which the requirement is complied with or where the application or specification or other
document is returned to the applicant, the date on which it is refiled after complying with
the requirement.

Section 18 says that where it appears to the Controller that the invention so far as claimed
in any claim of the complete specification has been anticipated, he may refuse the
application unless the applicant:

(a) shows to the satisfaction of the Controller that the priority date of the claim of his
complete specification is not later than the date on which the relevant document was
published; or

(b) amends his complete specification to the satisfaction of the Controller.

If it appears to the Controller that the invention is claimed in a claim of any other
complete specification, he may, direct that a reference to that other specification be
inserted in the applicant’s complete specification unless the applicant shows to the
satisfaction of the Controller that the priority date of his claim is not later than the priority
date of the claim of the said other specification; or the complete specification has been
amended to his satisfaction.

The above-mentioned provisions also apply in the case where it appears to the Controller
that the invention so far claimed in any claim of the applicant’s complete specification
has been claimed in other complete specification referred to in section 13(1)(a) and that
such other complete specification was published on or before the priority date of the
applicant’s claim.

The Controller of Patents is not technically a Court, or a tribunal exercising judicial

functions in the legal acceptation of the terms, but that does not make it untrue to say
that, so far as he has a duty imposed upon him to hear and determine objections to
applications for leave to amend, there is a fair analogy between his position and the
position of a Court. [In re: National Carbon Co. Incorporated AIR 1934 Cal. 725].

Grant and sealing of patents:

Section 43 dealing with grant of patents provides that where an application for a
patent has been found to be in order for grant of the patent and either the application has
not been refused by the Controller by virtue of any power vested in him by the Act; or the
application has not been found to be in contravention of any of the provisions of the Act,
the patent shall be granted as expeditiously as possible to the applicant or, in the case of a
joint application, to the applicants jointly, with the seal of the patent office and the date
on which the patent is granted shall be entered in the register. The Controller has been put
under obligation to publish the fact that the patent has been granted and thereupon the
application, specification and other documents related thereto shall be open for public
inspection.

Rights of Patentees and Co-Owners of Patents:

Assignments of Patents:
Assignment refers to the act of the patentee by which the patent rights are wholly
or partially transferred to the assignee who acquires the right to prevent others from
making, using or exercising or vending the invention. Section 70 of the Patents Act, 1970
gives the person/persons, persons registered as grantee or proprietor of a patent, power to
assign, grant licences under, or otherwise deal with, the patent and to give effectual
receipts for any consideration for any such assignment, licence or dealing.
The assignment can either be exclusive or non exclusive. The exclusivity can be further
limited, for example exclusivity to a territory or market or line of products. Following are
three main types of assignments in patents:
Legal assignments:
An assignment of an existing deed is a legal assignment. A patent which is
created by deed can only be assigned by a deed. A legal assignee is entitled to be
registered as the proprietor of the patent and acquires all the rights thereof.
Equitable assignments:
A document agreeing to transfer a patent or a share of a patent with immediate
effect is an equitable assignment. This affects proprietorship, but does not directly change
it. The man to whom it is equitably assigned gets the right in equity to have the
ownership of the patent altered in law.
Mortgages:
 A mortgage is a document through which patent rights are transferred to the
assignee in return for a sum of money. Once the assignor repays the sum, the patent rights
are restored to him. The term assignee as per Section 2(1) of the Patents Act, 1970
includes in its meaning the legal representative of a deceased assignee. Section 70 of the
Patents Act, 1970 confers inter alia the right on a grantee or proprietor of the patent to
fully or partially assign his patent to another or others. As per Section 68 of the Patents
Act, 1970 an assignment to be valid shall be in writing, to be contained in a document
that embodies all terms and conditions governing their rights and obligations and the
application for registration of such document is filed in the prescribed manner with the
Controller within six months from the commencement of the Act or the execution of the
document, whichever is later. Section 69 says once the person becomes entitled by
assignment to a patent he shall apply in writing to the Controller for the registration of his
title in the prescribed manner.
Term of patent:
Section 53 provides that the term of every patent granted after the commencement
of the Patents (Amendment) Act, 2002 and the term of every patent which has not
expired and has not ceased to have effect, on the date of such commencement, shall be
twenty years from the date of filing of application for the patent.
Explanation to Section 53(1) clarifies that the term of patent in case of international
applications filed under the PCT designating India, shall be twenty years from the
international filing date accorded under the Patent Cooperation Treaty.
A patent shall cease to have effect on the expiration of the period prescribed for the
payment of any renewal fee, if that fee is not paid within the prescribed period or within
such extended period as may be prescribed. Further on cessation of the patent right due to
non-payment of renewal fee or on expiry of the term of patent, the subject matter covered
by the said patent shall not be entitled to any protection.
Patents of addition:
Sections 54, 55 and 56 deal with patents of addition. Section 54 provides that
where an application is made for a patent in respect of any improvement in or
modification of an invention described or disclosed in the complete specification, namely
the main invention and the applicant also applies or has applied for a patent for that
invention or is the patentee in respect thereof, the controller may, if the applicant so
requests, grant the patent for the improvement or modification as a patent of addition.
Where an invention being an improvement in or modification of another invention, is the
subject of an independent patent and the patentee in respect of that patent is also the
patentee in respect of the patent for the main invention, the Controller may, if the
patentee so requests, revoke the patent for the improvement or modification and grant to
the patentee a patent of addition in respect thereof, bearing the same date of the patent so
revoked. However a patent shall not be granted as a patent of addition unless the date of
filing of the application was the same as or later than the date of filing of the application
in respect of the main invention. A patent of addition shall not be granted before the grant
of the patent for the main invention.
Restoration of lapsed patents:
Section 60 provides that where a patent has ceased to have effect by reason of
failure to pay any renewal fee within the period prescribed under section 53 or within
period as may be allowed under section 142(4), the patentee or his legal representative
and where the patent was held by two or more persons jointly, then with the leave of the
Controller one or more of them without joining the others, may within eighteen months
from the date on which the patent ceased to have effect, make an application for the
restoration of the patent.
Rights of Patentees of Lapsed Patents which have been restored:
Section 62 provides that where a patent is restored, the rights of the patentee shall
be subject to such conditions as may be prescribed and to such other conditions as the
Controller thinks fit to impose for the protection or compensation of persons who may
have begun to avail themselves of, or have taken definite steps by contract or otherwise to
avail themselves of, the patented invention between the date when the patent ceased to
have effect and the date of the publication of the application for restoration of the patent.
No suit or other proceeding shall be commenced or prosecuted in respect of an
infringement of a patent committed between the date on which the patent ceased to have
effect and the date of the publication of the application for restoration of the patent.
Surrender and revocation of Patents:
 Section 63 entitles the patentee to offer to surrender his patent, at any time by
giving notice to the Controller. Where such an offer is made, the Controller shall publish
the offer in the prescribed manner and also notify every person other than the patentee
whose name appears in the register as having an interest in the patent. Any person
interested may, within the prescribed period after such publication, give notice of
opposition to the Controller and where such notice in given the Controller shall notify the
patentee. If the Controller is satisfied after hearing the patentee and any opponent, if
desirous of being heard, that the patent may properly be surrendered, he may accept the
offer and by order revoke the patent.
Compulsory licences:
The provisions for compulsory licenses are made to prevent the abuse of patent as
a monopoly and to make the way for commercial exploitation of the invention by an
interested person. According to Section 84 any person interested can make an application
for grant of compulsory license for a patent after three years from the date of grant of that
patent on any of the following grounds –
(a) that the reasonable requirements of the public with respect to the patented invention
have not been satisfied, or
(b) that the patented invention is not available to the public at a reasonably affordable
price, or
(c) that the patented invention is not worked in the territory of India.7

Exclusive marketing rights:

The term Exclusive Marketing Rights (EMRs) means the right to sell or distribute
the article or substance covered in a patent or patent application in the country. EMRs
will be granted when the there is no system of product patent in a country. It is only a
temporary arrangement which will cease to have effect when product patent regime is
introduced.8

7ICSI Module 3, elective paper 9.4, Intellectual Property Rights – Law and Practice
8
[Link]
Marketing-Rights
Licences of right:
License of Right Proposal means the patent proprietor can request for making an entry in
the Register of Patents maintained by Patent Office that the Patent is available for license.
Thereupon, interested parties can apply for getting license under the Patents of their
interest which are endorsed with 'License of Right' in the Register of Patents. The
Patentee gets benefit from Patent Office also, for registering his patents to be endorsed
with the term 'License of Right', by getting 50% rebate on renewal fee for the term of the
Patent.9
Use of invocation of patents – Purposes of Government:
As provided in Section 47, the Government may import, make and use patented
inventions for the purpose of its own use. The scope of this provision is narrow when
compared with government use highlighted in Section 100, wherein it is stated that the
government, or any person authorized by it, is empowered to use the patented invention
for purposes of government.

Section 100 (1) of the Indian Patents Act states –

“Power of Central Government to use invention for purposes of Government.- (1)
Notwithstanding anything contained in this Act, at any time after an application for a
patent has been filed at the patent office or a patent has been granted, the Central
Government and any person authorized in writing by it, may use the invention for the
purposes of Government in accordance with the provisions of this Chapter.” 10
Acquisitions of inventions by Central Government:
The Central Government may, if satisfied that it is necessary that an invention
which is the subject of an application for a patent or a patent should be acquired from the
applicant or the patentee for a public purpose, publish a notification to that effect in the
Official Gazette, and thereupon the invention or patent and all rights in respect of the
invention or patent shall, by force of this section, stand transferred to and be vested in the
Central Government.11

9[Link]
10
[Link]
inventions/
Remedies for infringement of Patent:
● Injunctive relief

● Demanding damages

● Restitution of unjust enrichment

● Measures for recovery of reputation

● Criminal prosecution12
Patent agents:
The work relating to drafting of specifications, making of application for a patent,
subsequent correspondence with the Patent office on the objections raised, representing
the applicants case at the hearings, filing opposition and defending application against
opposition is entrusted to a qualified Patent Agent. Sections 125-132 of the Patents Act,
1970 and Rules 108-120 of the Patents Rules, 2003 deal with the Patent Agents.
The Controller maintains a register to be called the ‘register of patent agents’ in which
there will be entered the names, address and other relevant particular as may be
prescribed of all persons qualified to have their names so entered according to section
126. According to rule 4 such register has to be maintained at the Head Office of the
Patent Office, Calcutta. The register will contain the name, nationality address of the
principal place of business, branch office address and other relevant particular as may be
prescribed, if any, the qualification and the date of registration of entry as Patent agent.

Scientific advisors:
Patent disputes that involve complex technologies cannot usually be resolved by
judges alone. Training in the law is hardly sufficient to understand the nuances of the
technology underlying a patent, and by corollary, makes it difficult to adjudicate on
questions of patent infringement. For this reason, courts are allowed to appoint
independent Scientific Advisors to assist in the understanding of the scientific or
technical questions pertaining to the dispute in question.

11
Section 102, Indian Patents Act, 1970.
12 [Link]
 In India, this is contained in Section 115 of the Patents Act, 1970, which
empowers the court to appoint an independent Scientific Advisor to assist the court, or to
inquire into questions of fact or opinion (but not questions of law), as formulated by the
court. 13

International arrangements:
An invention can be protected through a patent in multiple countries by filing an
“international” patent application. In order to preserve and protect the international and
global character of the invention, countries world over have become signatories to
various international conventions governing the formal parameters within which
international applications must operate.

This international aspect of protecting inventions under the patent law has been
introduced under Chapter XXII of the Patents Act, 1970 which deals with International
Arrangements. The patent applications which are received under the aegis of the Paris
Convention, 1883 and the Patent Cooperation Treaty (PCT), 1970 to which India is also a
member are dealt with under the provisions of this chapter.

India became a member of the Paris Convention in 1998 and the Paris Convention
provides reciprocity in filing with the right to priority. In addition to these conventions,
India is also a member of the Budapest Treaty on the International Recognition of the
Deposit of Microorganisms for the Purposes of Patent, 1977 which provides a mechanism
for depositing biological material on the International depository recognized by
authorities to supplement the description of a Specification.14

Right of Plant Breeders and Farmers:

The concept of Plant Breeders’ Rights arises from the need to provide incentives
to plant breeders engaged in the creative work of research which sustains agricultural

13 [Link]
disputes/
14 [Link]
progress through returns on investments made in research and to persuade the researcher
to share the benefits of his creativity with society.
The issue of enacting a law relating to Plant Varieties Protection and Farmers’
Rights in India assumed importance particularly in the wake of TRIPS agreement under
WTO which seeks to promote effective protection of Intellectual Property Rights in all
fields of technology. Article 27 of TRIPS Agreement defines patentable subject matter
and requires member countries to provide for the protection of plant varieties whether by
patenting or by an effective sui generis system or by any combination thereof.
With a view to provide for the establishment of an Authority to give an effective
system of protection of the rights of plant breeders and farmers, and to encourage the
development of new varieties of plants and to give effect to the provisions of TRIPS
Agreement, the Government enacted the Protection of Plant Varieties and Farmers’ Right
Act, 2001. This Act seeks to stimulate investment for research and development both in
the public and private sectors for the development of new plant varieties by ensuring
appropriate returns on such investments. It also seeks to facilitate the growth of the seed
industry in the country through domestic and foreign investment to ensure the availability
of high quality seeds and planting material to Indian farmers. It also recognizes the role
of farmers as cultivators and conservers and the contribution of traditional, rural and
tribal communities to the country’s agro biodiversity by rewarding them for their
contribution through benefit sharing and protecting the traditional rights of the farmers.
The Act also provides for setting up of the Protection of Plant Varieties and Farmer’s
Rights Authority to promote and develop new varieties of plants and promote rights of
the farmers and breeders.15

National Law on biological diversity:

The Biological Diversity Act of 2002 and the Biological Diversity Rules, 2004
are implemented by National Biodiversity Authority (NBA) at the national level, State
Biological Board (SBB) at state level and Biodiversity Management Committees
(BMC’s) at local levels. Some of the major functions of these authorities are:

15
ICSI Module 3, elective paper 9.4, Intellectual Property Rights – Law and Practice
 ● To regulate activities of, approve and advice the Government of India on matters
relating to the conservation of biodiversity, sustainable use of its components and
equitable sharing of benefits.
● To grant approval under Sections 3,4 and 6 of Biodiversity Act,2002

● To notify areas of biodiversity importance as biodiversity heritage sites under this

act and perform other functions as may be necessary to carry out the provisions of
the Act.
● To take measures to protect biodiversity of the country as well as to oppose the
grant of intellectual property rights to any country outside or any biological
resources obtained from India.16

16 [Link]
INTELLECTUAL PROPERTY LAWS - HANDOUT

UNIT – III
Trade Marks
The Trade Marks Act, 1999
Object and salient features:
A trade mark (popularly known as brand name in layman’s language) is a visual
symbol which may be a word to indicate the source of the goods, a signature, name,
device, label, numerals, or combination of colours used, or services, or other articles of
commerce to distinguish it from other similar goods or services originating from another.
It is a distinctive sign which identifies certain goods or services as those produced or
provided by a specific person or enterprise. Its origin dates back to ancient times, when
craftsmen reproduced their signatures, or "marks" on their artistic or utilitarian products.
Over the years these marks evolved into today's system of trade mark registration and
protection. The system helps consumers identify and purchase a product or service
because its nature and quality, indicated by its unique trade mark, meets their needs.
A trade mark provides protection to the owner of the mark by ensuring the
exclusive right to use it or to authorize another to use the same in return for payment. The
period of protection varies, but a trade mark can be renewed indefinitely beyond the time
limit on payment of additional fees. Trade mark protection is enforced by the courts,
which in most systems have the authority to block trade mark infringement.
In a larger sense, trade marks promote initiative and enterprise worldwide by
rewarding the owners of trade marks with recognition and financial profit. Trade mark
protection also hinders the efforts of unfair competitors, such as counterfeiters, to use
similar distinctive signs to market inferior or different products or services. The system
enables people with skill and enterprise to produce and market goods and services in the
fairest possible conditions, thereby facilitating international trade.
The object of trade mark law has been explained by the Supreme Court in Dau
Dayal v. State of Utttar Pradesh AIR 1959 SC 433, in the following words:
“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”.
The distinction between a trade mark and a property mark has been stated by the
Supreme Court in the case of Sumat Prasad Jain v. Sheojanam Prasad and Ors., AIR 1972
SC 413. The Apex Court held:
“...Thus, the distinction between a trade mark and a property mark is that whereas
the former denotes the manufacture or quality of the goods to which it is attached, the
latter denotes the ownership in them. In other words, a trade mark concerns the goods
themselves, while a property mark concerns the proprietor. A property mark attached to
the movable property of a person remains even if part of such property goes out of his
hands and ceases to be his.”
The trade mark law in India is a ‘first-to-file’ system that requires no evidence of
prior use of the mark. A trade mark application can be filed on a ‘proposed to be used or
intent-to-use’ basis or based on use of the mark. The term ‘use’ under the Trade Marks
Act, 1999 has acquired a broad meaning and does not necessarily mean the physical
presence of the goods in India. Presence of the trade mark on the Internet and publication
in international magazines and journals having circulation in India are also considered as
use in India. One of the first landmark judgments in this regard is the “Whirlpool case”
[N. R. Dongre v. Whirlpool Corporation, 1996 (16) PTC 583] in which the Court held
that a rights holder can maintain a passing off action against an infringer on the basis of
the trans-border reputation of its trade marks and that the actual presence of the goods or
the actual use of the mark in India is not mandatory. It would suffice if the rights holder
has attained reputation and goodwill in respect of the mark in India through
advertisements or other means.
Important definitions in the Trade Marks Act, 1999:
Trade Mark:
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.
As stated above, the definition of "trade mark" under Section 2(1)(zb) has been
enlarged to mean a mark capable of being represented graphically and which is capable
of distinguishing the goods or services of one person from others and may include shape
of goods, their packaging and combination of colours and covers both goods and
services.
“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”. [Section 2(1)(m)].
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; and
— capable of distinguishing the goods or services of one person from those of others.
Service:
The new definition of 'service' has been included for the benefit of service-
oriented establishments such as banking, communication, education, finance, insurance,
chit funds, real estates, transport, storage, material treatment, processing, supply of
electrical or other energy, boarding, lodging, entertainment, amusement, construction,
repair, conveying of news or information and advertising .
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.
The definition of “registered trade mark” under Section 2(1)(w) has been
modified to mean a trade mark which is actually on the Register and remaining in force.
The renewal of registration of a trade mark should be made for every ten years instead of
seven years under the present Act.
Certification Trade Mark:
“Certification trade mark” means a mark capable of distinguishing the goods or
services in connection with which it is used in the course of trade which are certified by
the proprietor of the mark in respect of origin, material, mode of manufacture of goods or
performance of services, quality, accuracy or other characteristics from goods or services
not so certified and registrable as such under Chapter IX in respect of those goods or
services in the name, as proprietor of the certification trade mark, of that person.[ Section
2(1)(e).
Well Known Trade Mark:
Being a signatory to the Paris Convention and TRIPS, India recognizes the
concept of a well known trade marks.
Under Section 2(1)(zg) of the Trade Marks Act, 1999 “well-known trade mark”,
in relation to any goods or services, means a mark which has become so to the substantial
segment of the public which uses such goods or receives such services that the use of
such mark in relation to other goods or services would be likely to be taken as indicating
a connection in the course of trade or rendering of services between those goods or
services and a person using the mark in relation to the first-mentioned goods or services.
A mark, which has been designated as a well known mark, is accorded stronger
protection. The Act casts an obligation on the Registrar to protect a well known mark
against an identical or similar trade mark.

Registrable trademark:
● Any name

● An invented word or any arbitrary dictionary word or words, not being directly
descriptive of the character or quality of the goods/service
 ● Fancy devices, symbols

● Monograms

● Marks constituting 3-dimensional signs

● Combination of colours or even a single colour in combination with a word or

device
Non-registrable trademark:
The marks which are not very unique or cannot be differentiated from other
trademarks cannot be registered as trademarks. Some terms or marks which are immoral
or opposed to public policy are non-registrable.
Some other non-registrable kinds of marks are:-
Geographical location- A geographical location cannot be owned by a particular
entity and hence cannot be registered as a trademark
Smell- A smell cannot be recorded and is not always identifiable to all. Hence, it
cannot be trademarked
Confusing marks- A confusing or a misleading mark cannot be registered as a
trademark as it is not in the best of public interest
Immoral marks- Marks that are opposed to public policy, hurts religious
sentiments or abusive cannot be registered.
The emblem-an emblem cannot be registered as a trademark as it is prohibited by
law
Similar to a good- A mark that resembles a good or product cannot be registered
as a trademark
Already registered- The marks that have already been registered cannot be
registered.
There are several marks that cannot be registered because they might not be easily
identifiable or recognizable by the public which defeats the purpose of registration.
Hence it is best to choose a good mark or hire an expert to do the job which is now even
available at a click. SubmitTax offer such services.17
Conditions for registration:

17 [Link]
 The Trade Marks Act, 1999 does not expressly list any requisites for registration.
The requirements for registration and the definition of trade mark have converged.
Instead of detailing requisites for registration, grounds for refusal are listed in Section
9(1), (2) and (3) & Section 11 which conversely are requisites for registration. Most of
the substantive law laid down by the Trade & Merchandise Marks Act, 1958 remains
valid and would hold the ground for administering the provisions of Trade Marks Act,
1999. From previous operation of trade mark law, four categories of trade marks were
made out i.e., names, signatures, words and other distinctive marks. Most of the
principles relating thereto would hold good under the new dispensation.
Now any mark which is a trade mark may be registered for any goods or services
if it is not hit by any of the two kinds of grounds for refusal or other specific prohibitions.
The first requisite is that it should be a trade mark within the meaning of Trade Marks
Act, 1999 which concept itself imports many conditions as has been mentioned earlier in
the legal concept of trade mark. There emerge many conditions from the definition of
trade mark in Section 2(1) (zb). The identification and distinguishing functions performed
by the trade mark must be fulfilled by the trade mark sought to be registered in India.
That the trade mark is registered in any other member country of Paris Convention* or
has been refused to be registered is not a factor to be considered in relation to registration
of the trade mark. Explanation to Section 9 has been inserted to dispel the fears in
relation to fulfillment of Article 7 of the Paris Convention.
The next pre-requisite—distinctive character emerges from the presence of words
”capable of distinguishing goods of one person from those of others....” in the definition
of trade mark in Section 2(1)( zb). A mark shall be trade mark only if, in addition to
fulfilling other conditions in the definition of trade mark, also satisfies the requirement of
distinctive character. The term ‘distinctiveness’ has been changed to distinctive character,
which would bring jurisprudence of distinguishing function of the trade mark in
conformity with international practice. The Trade Marks Act, 1999, as in earlier laws
also, recognizes that distinctive character may be inherent or acquired.
Grounds for refusal to registration:
Absolute grounds:
Section 9(1) to (3) of the Act lists the absolute grounds for refusal of registration.
Section 9(1) prohibits the registration of those trade marks-
(a) which are devoid of any distinctive character, that is to say, not capable of
distinguishing the goods or services of one person from those of another person;
(b) which consist exclusively of marks or indications which may serve in trade to
designate the kind, quality, quantity, intended purpose, values, geographical origin or the
time of production of the goods or rendering of the service or other characteristics of the
goods or services; or
(c) which consist exclusively of marks or indications which have become customary in
the current language or in the bona fide and established practice of the trade.
However, a trademark shall not be refused registration, if the mark has in fact
acquired a distinctive character as a result of the use made of it or is a well known trade
mark before the date of application for registration.
The basis of Section 9(1) is that a trader should not obtain a statutory monopoly
through registration in a word which another trader might legitimately wish to use. A
competitor should of course be entitled to make bonafide use of the word, to describe his
goods or the place of manufacture. If a word, however, through use has become clearly
associated in public mind with the goods/service of a particular trader, then it could not
be legitimately used as a trademark by a competitor. For this purpose the onus is on the
applicant to show by cogent evidence that the trademark, by reason of use has acquired
distinctiveness in relation to his goods or services.
If a trademark is devoid of distinctive character, the same can not be registered. In
Ambalal Sarbhai Enterprises Limited v. Tata Oil Mills Company Limited 1988 OTC 73
Bom, it was held that the word PROMIXwas 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.
Length of user is a material factor to acquire distinctiveness in a trade mark
(Durga Dutt Sarma v. Navaratna Pharmaceutical Laboratories, AIR 1962 Ker 156). This
view was affirmed in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceuticals
Laboratories, AIR 1965 SC 980. The Apex Court held that the length of user would, of
course, be a material factor for the mark to become distinctive.
F. Hoffmann La Roche and Co. Ltd. v. Geoffrey Manners and Co. Pvt. Ltd., AIR
1970 SC 2062, the Supreme Court held that if the word DROPOVIT is not a descriptive
word it must be an invented word. It is true that the word DROPOVIT is coined out of
words commonly used by and known to ordinary persons knowing English. But the
resulting combination produces a new word, a newly coined word which does not remind
an ordinary person knowing English of the original words out of which it is coined unless
he is so told or unless at least he devotes some thought to it. It follows that the word
DROPOVIT being an invented word, is entitled to be registered as a trade mark and is
not liable to be removed from the Register on which it already exists. [See also Eastman
Photographic Materials v. The Comptroller General, (1898) 15 RPC 476; Nestle v.
Thankaraja, AIR 1978 Mad 336].
Section 9(2) states that a mark shall not be registered as a trade mark if —
(a) it is of such nature as to deceive the public or cause confusion;
(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of
any class or section of the citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use)
Act, 1950.
Under Section 9(2), if the confusion arises from any factor whatsoever, even
without involvement of any other mark or there being no similarity with any other mark,
the registration may still be refused if the impugned mark is of such nature that it will
cause confusion. For a successful opposition the opponent has to establish by proper
evidence that its mark had acquired reputation by use and the mark of the applicant if
registered is likely to cause confusion (Anglo-French Drug Co. v. Brihans Laboratories,
1995 IPLR 7).
Section 9(3) prohibits registration of a mark, if it consists exclusively of shape of
goods which results from the nature of the goods themselves or which is necessary to
obtain a technical result or which gives substantial value to the goods. It is, however,
explained that the nature of goods or services in relation to which the trade mark is used
or proposed to be used shall not be a ground for refusal of registration.
Relative grounds:
Section 11 of the Act stipulates that where there exists a likelihood of confusion
on the part of the public because of the identity with an earlier trade mark or similarity of
goods or services, the trade mark shall not be registered. The registration of a mark which
is merely reproduction or imitation of a well-known mark is also prohibited. Sub-section
(3) prohibits the registration of a trade mark if or to the extent that, its use in India will be
prevented by law of passing off or under the law of copyright unless the proprietor of the
earlier trade mark consents to such registration.
The term “earlier trade mark” as per the Explanation appended to this Section
means a registered trade mark or an international registration or a convention application
which has a date of application earlier than the trade mark in question, or a trade mark,
which on the date of application for registration or on the date of priority claimed was
entitled to protection as a well known trade mark.
The proprietor of earlier trademark is entitled to oppose the registration of a trade
mark and prove it. In the opposition proceeding the Registrar shall protect a well-known
trade mark against identical or similar trade marks and take into consideration the bad
faith of either the applicant or the opponent affecting the rights relating to the trade mark.
Further, the section also lays down the factors which the Registrar is required to take into
account while determining the status of a well-known trade mark. The Section also lays
down the facts to be considered by the Registrar in determining whether a trade mark is
known or recognised in a relevant section of the public.
What is a well known trade mark, the Delhi High Court held in Tata Sons Ltd. v. Mr. Md.
Jawed & Anron (March, 2011) held that a well known trade mark is a mark which is
widely known to the relevant section of the general public and enjoys a comparatively
high reputation amongst them. On account of advancement of technology, fast access to
information, manifold increase in international business, international travel and
advertising/publicity on internet, television, magazines and periodicals, which now are
widely available throughout the world of goods and services during fairs/exhibitions,
more and more persons are coming to know of the trade marks which are well known in
other countries, and which on account of the quality of the products being sold under
those names and extensive promotional and marketing efforts, have come to enjoy trans-
border reputation. It is, therefore, being increasingly felt that such trade marks need to be
protected not only in the countries in which they are registered but also in the countries
where they are otherwise widely known in the relevant circles so that the owners of well
known trade marks are encouraged to expand their business activities under those marks
to other jurisdictions as well.
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 under
whose jurisdiction, the principal place of the business of the applicant falls, in the
prescribed manner for the registration of his trade mark. 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.
The provisions contained in Rules 25 to 31 and 33 to 36 of the Trade Marks
Rules, 2002 prescribe the procedure for application of trade marks.
Duration of 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. With a
view to facilitate renewal of registration, Section 25(3) provides for a grace period of six
months for payment of renewal fee after expiry of registration, subject to the payment of
the prescribed surcharge. Sub-section (4) provides for restoration of the trade marks to
the register and renew the registration on payment of renewal fees.
 Unlike patents, copyright or industrial designs, trade mark rights can last
indefinitely if the owner continues to use the mark. However, if a registered trade mark is
not renewed, it is liable to be removed from the register.
Effects of registration:
The registration of a trade mark confers on the registered proprietor of the trade
mark the exclusive right to use the trade mark in relation to the goods or services in
respect of which the trade mark is 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:
(i) It confers on the 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.
(ii) 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.
(iii) It entitles the registered proprietor to obtain relief in respect of infringement of the
trade mark in the manner provided by the Trade Marks Act, 1999 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.
(v) 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.
(vi) 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.
(vii) 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.
(viii) There is a right to restrict the import of goods or services marked with a trade mark
similar to one’s trade mark.
(ix) 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. An application for registration may
be based on a trade mark in use prior to such application and such a trade mark is already
vested with rights at Common law from the time the use of the mark was commenced.18
Powers and functions of Registrar:
The Registrar shall have the following powers and functions:
● registration of appeals, petitions and applications;

● receive applications for amendment of appeal or the petition or application or

subsequent proceedings.
● receive applications for fresh summons or notices and regarding services thereof;
transmission of a direction/ order to the civil court as directed by Tribunal with
the prescribed certificate(s) for execution etc; and such other incidental/matters as
the Chairperson may direct from time to time;
● receive applications for fresh summons or notice and for short date summons and
notices;
● receive applications for substituted service of summons or notices;
withdraw or transfer cases etc.

18
ICSI Module 3, elective paper 9.4, Intellectual Property Rights – Law and Practice
 ● receive applications for seeking orders concerning the admission and also
inspection of documents.19
Concurrent registration:
To all the relative grounds of refusal, the Trade Marks Act, 1999 allows one
exception in Section 12. As per Section 12 in the case of honest concurrent use, or of
other special circumstances which make it proper so to do, the Registrar may permit the
registration of trade marks which are identical or similar in respect of the same or similar
goods or services, irrespective of the fact that any such trade mark is already registered or
not. This is done so if in the opinion of the Registrar it is proper so to do in favour of
more than one proprietor of trade mark. In such an event the Registrar is empowered to
impose such conditions and limitations, as he deems fit. The provisions establish the
superiority of trade mark rights acquired by use.
Assignment and transmission:
Assignment and Transmission have been defined under Section 2(1) (b) and 2(1)(
zc) of the Trade Marks Act, 1999 respectively. Section 2(1) (b) defines “assignment” as
assignment in writing by act of the parties concerned. Under section 2(1)(zc)
“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 and transmission:
Assignment and Transmission have been defined under Section 2(1) (b) and 2(1)(
zc) of the Trade Marks Act, 1999 respectively. Section 2(1) (b) defines “assignment” as
assignment in writing by act of the parties concerned. Under section 2(1)(zc)
“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.
Registered users:
Sections 48 to 54 contain provisions relating to registered users. Section 50
empowers the Registrar to vary or cancel registration as registered user on the ground that
the registered user has used the trade mark otherwise than in accordance with the
agreement or in such a way as to cause or likely to cause confusion, or deception or the
proprietor/registered user misrepresented or has failed to disclose any material facts for

19 [Link]
such registration or that the stipulation in the agreement regarding the quality of goods is
not enforced or that the circumstances have changed since the date of registration, etc.
However, Registrar has been put under obligation to give reasonable opportunity of
hearing before cancellation of registration.

Collective marks:
The primary function of a collective mark is to indicate a trade connection with
the Association or Organisation. To be registerable, the collective mark must be capable
of being represented graphically and meet other requirements as are applicable to
registration of trade marks in general.
Sections 61 to 68 contain provisions relating to the registration of collective trade
marks. These provisions provide for registration of a collective mark which belongs to a
group or association of persons and the use thereof is reserved for members of the group
or association of persons. Collective marks serve to distinguish characteristic features of
the products or services offered by those enterprises. It may be owned by an association
which may not use the collective mark but whose members may use the same. The
association ensures compliance of certain quality standards by its members, who may use
the collective mark if they comply with the prescribed requirements concerning its use.
Certification Trade Mark:
The purpose of certification trade mark is to show that the goods on which the
mark is used have been certified by some competent person in respect of certain
characteristics of the goods such as origin, mode of manufacture, quality, etc. The
proprietor of a certification trade mark does not himself deal in the goods. A certification
trade mark may be used in addition to the user’s own trade mark on his goods. Unlike the
old Act which empowered the Central Government to register certification trade mark,
the new Act delegates the final authority for registration of certification trade mark to the
Registrar. Sections 70 to 78 of the Trade Marks Act, 1999 deal with registration of
certification trade marks.
Trade Mark agent:
A Trademark agent is one who specializes in trademark matters.
The primary duties of a trademark agent in India are:
i) Helping companies to select a new trademark for their businesses.
ii) Conducting trademark search so as to ensure that the chosen trademark has not been
already registered.
iii) Assisting in the drafting and filing of trademark applications for the registration of
new trademarks and providing legal support for the same.
iv) Communicate with the Indian trademark registry on behalf of the clients for the
registration procedures.
v) Ensure that the application has been duly registered with the applicable trademark
office.
vi) In the event of infringement or violation of the trademark, the trademark agent
protects his/her clients’ interests by sending a cease and desist letter.20
Appellate board:
Section 83 of the Trade Marks Act, 1999(Act), provides for the establishment of
an Appellate Board to be known as the Intellectual Property Appellate Board (IPAB).
The provisions relating to IPAB are contained in sections 83 to 100 of the above Act. The
Intellectual Property Appellate Board has been established by the Central Government.21
Infringement action:
Infringement, very broadly means taking unfair advantage or being detrimental to
the distinctive character or reputation of a trade mark.
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

20
[Link]
21 [Link]
constitute an infringement under Section 29(8) of the Act. Where the distinctive element
of a registered trade mark consists of words, the spoken use of such words as well as
visual representation for promoting the sale of goods or promotion of service would
constitute infringement under Section 29(9) of the Act.
In Parle Products v. J P & Co. AIR 1972 SC 1359, the Apex Court observed that
in this case the packets are practically of the same size, the colour scheme of the two
wrappers is almost the same; the design on both, though not identical, bears such close
resemblance that one can easily be mistaken for the other. The essential features of both
are that there is a girl with one arm raised and carrying something in the other with a cow
or cows near her and hens or chickens in the foreground. In the background there is a
farm house with a fence. The words “Gluco Biscuits” on one and “Glucose Biscuits” on
the other occupy a prominent place at the top with a good deal of similarity between the
two writings. Anyone, in our opinion, who has a look at one of the packets on a day, may
easily mistake the other if shown on another day as being the same article which he had
seen before. If one was not careful enough to note the peculiar features of the wrapper on
the plaintiffs’ goods, he might easily mistake the defendant’s wrapper for the plaintiffs’ if
shown to him some time after he had seen the plaintiffs. After all, an ordinary purchaser
is not gifted with the powers of observation of a Sherlock Holmes.
The Court held that the defendants’ wrapper is deceptively similar to the
plaintiffs’ registered trade mark. For infringement nothing more is required to be proved.
These days such cases which rely more on visual similarity involving get-up are
classified in cases involving Trade Dress.
In S.M. Dychem v. Cadbury India 2000 PTC 297 (SC), the Apex Court said that
on the first impression we are of the view that the dissimilarities appear to be clear and
more striking to the naked eye than any similarity between the marks, and on the whole
the essential features of two marks are different. The Court further said that if the
essential features have been copied, the intention to deceive or cause confusion is not
relevant in an infringement action. If a false representation is made out even when there
is no intention to deceive or confuse it is sufficient to constitute infringement. However,
in the present case on the question of relative strength, the decision must go in favour of
the defendant and the High Court was right.
 Thus, new trade marks made by introducing dissimilarities in the trade mark,
which are based on the materials or features which are already incorporated in the
existing trade marks, may not constitute infringement of such earlier trade marks if the
totality of impression produced by the new mark is not confusing even though there are
many similar parts in the trade mark.
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.
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.
The Court shall not grant relief by way of damages (other than nominal damages)
or on account of profits in any case—
(a) where in a suit for infringement of a trade mark, the infringement complained
of is in relation to a certification trade mark or collective mark; or
(b) where in a suit for infringement the defendant satisfies the court—
(i) that at the time he commenced to use the trade mark complained of in the suit,
he was unaware and had no reasonable ground for believing that the trade mark of the
plaintiff was on the register or that the plaintiff was a registered user using by way of
permitted use; and
(ii) that when he became aware of the existence and nature of the plaintiff’s right
in the trade mark, he forthwith ceased to use the trade mark in relation to goods or
services in respect of which it was registered.
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."
In Laxmikant V. Patel v. Chetanbhai Shah and Anr., AIR 2001 SC 763, it was
stated:
A person may sell his goods or deliver his services such as in case of a profession
under a trading name or style. With the lapse of time such business or services associated
with a person acquire a reputation or goodwill which becomes a property which is
protected by Courts. A competitor initiating sale of goods or services in the same name or
by imitating that name results in injury to the business of one who has the property in that
name. The law does not permit any one to carry on his business in such a way as would
persuade the customers or clients in believing that the goods or services belonging to
someone else are his or are associated therewith. It does not matter whether the latter
person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair
play are, and ought to be, the basic policies in the world of business. Secondly, when a
person adopts or intends to adopt a name in connection with his business or services
which already belongs to someone else, it results in confusion and has propensity of
diverting the customers and clients of someone else to himself and thereby resulting in
injury.
In Proctor & Gamble Co. & Anr v. Shipra Laboratories (November, 2011), the
Delhi High Court held that it is not in dispute that the defendant has been using the trade
mark SAFE GUARD for sale of antiseptic creams. There is practically no difference
between the trade mark SAFEGUARD and SAFE GUARD since no person is likely to
notice the space between the words SAFE and GUARD...
The Court observed that in any case, the defendant has no legal right to use the
trade mark SAFEGUARD or any other mark identical or deceptively similar to this
registered trade mark of the plaintiff in respect of any of the products for which
registration has been granted. The plaintiffs, therefore, are entitled to an appropriate
injunction, restraining the defendant from using the trade mark SAFE GUARD in respect
of the product for which registration has been granted to it by Registrar of Trade marks in
India.
Criminal litigation:
The Trade Marks Act, 1999 provides for remedies for infringement under the
criminal laws too. The police have the power to suo motu conduct raids and seizure
operations. However, the use of such powers by the police is minimal.
International treaties:
MADRID AGREEMENT CONCERNING THE INTERNATIONAL
REGISTRATION OF MARKS (1891) AND THE PROTOCOL RELATING TO
THAT AGREEMENT (1989):
The system of international registration of marks is governed by two treaties:
The Madrid Agreement, concluded in 1891 and revised at Brussels (1900),
Washington (1911), The Hague (1925), London (1934), Nice (1957), and Stockholm
(1967), and amended in 1979, and the Protocol relating to that Agreement, which was
concluded in 1989, with the aim of rendering the Madrid system more flexible and more
compatible with the domestic legislation of certain countries which had not been able to
accede to the Agreement.
The Madrid Agreement and Protocol are open to any State which is party to the
Paris Convention for the Protection of Industrial Property. The two treaties are parallel
and independent and States may adhere to either of them or to both. In addition, an
intergovernmental organization which maintains its own Office for the registration of
marks may become party to the Protocol. Instruments of ratification or accession must be
deposited with the Director General of WIPO. States and organizations which are party to
the Madrid system are collectively referred to as Contracting Parties.
The system makes it possible to protect a mark in a large number of countries by
obtaining an international registration which has effect in each of the Contracting Parties
that has been designated.
WIPO Internet Domain Name Process:
 Domain names while designed to serve the function of enabling users to locate
computers in an easy manner, they have acquired a further significance as business
identifiers and, as such, have come into conflict with the system of business identifiers
that existed before the arrival of the Internet and that are protected by intellectual
property rights.
The tension between domain names, on the one hand, and intellectual property
rights, on the other hand, have led to numerous problems that raise challenging policy
questions. These policy questions have new dimensions that are a consequence of the
intersection of a global, multipurpose medium, the Internet, with systems designed for the
physical, territorial world.
In 1999, WIPO published its Report on the First WIPO Internet Domain Name
Process, focusing on issues raised inter alia by the intersection of trademarks and domain
names. The WIPO recommendations from the First Report were largely implemented by
the Internet Corporation for Assigned Names and Numbers (ICANN), and have resulted
in implementation of a successful administrative system for resolving domain name
disputes involving trademarks and a system of best practices for domain name
registration authorities, designed to avoid such conflicts.
Geographical indication of goods:
Over the recent past, Geographical Indications (GI) have emerged as a significant
form of Intellectual Property Rights (IPR) issue in the Indian context. GI helps a
community of producers to differentiate their products from competing products in the
market and build goodwill around their products, often fetching a premium price. From
consumer’s point of view, GIs act as a signalling device, which helps them identify
genuine quality-products and also protect them against counterfeits. In view of their
commercial potential, adequate legal protection of GIs becomes necessary to prevent
their misappropriation.
Although India has had in its possession a considerable number of products that
could qualify for legal protection as geographical designators, the initiatives to exploit
this potential begun only recently when the country established as sui generis system of
GI protection with the enactment of ‘the Geographical Indications of Goods (Registration
and Protection) Act, 1999, coupled with the ‘Geographical Indications of Goods
(Registration and Protection) Rules, 2002. The Act, which became operational with effect
from 15 September 2003, was drafted as part of the exercise in the country to set in place
national IPR laws as much in compliance with India’s obligations under the Agreement
on Trade Related Aspects of Intellectual Property Rights (TRIPs) of the World Trade
Organisation (WTO) so as to take advantage of the ‘minimum’ standards of GI protection
that the TRIPs sets out for the WTO members to comply with in their respective national
legislations.
In India, GIs have been governed by common law principles, which enable an
aggrieved person to file an action of ‘passing off’ for protection of his right. In other
words, it is based on usage and common knowledge about the characteristic features and
quality or reputation that the product has already earned in the market either by publicity
or by its presence in the market. A survey of decided cases reveals that Indian courts have
maintained the action of passing off to protect GIs.
Scotch Whisky Association v. Pravara Sahakar Karkhana Ltd., is a leading case
on this subject. In this case, the plaintiff Scotch Whisky Association, a company
incorporated under the Companies Act of United Kingdom instituted the passing off
action against the defendants- a manufacturer of various brands of Indian Whisky like
‘blended scotch whisky’ or Blended with Scotch’ under various brand names, ‘Drum
Beater’ and ‘God Tycoon’. On these facts, the Bombay High Court held: The Plaintiff
had sufficient interest to prevent passing off of Indian Whisky manufactured by the
defendant and to prevent damage to reputation and goodwill of Scotch whisky. The
defendants were passing off their goods as blended Scotch whisky which in fact they
were not. The case therefore merited interim injunction. The defendants resorted to unfair
means by using the words ‘Blended with Scotch’ and indulged in colourable imitation
and unfair trading in an attempt to harvest unjust benefits by appropriation of plaintiff’s
goodwill. The defendant was restrained from advertising or offering for sale or
distributing in any country Whisky, which is not Scotch whisky.22
Basmati rice case:

[Link]
22
 In the late 1997, when an American company RiceTec Inc was granted a patent
by the US patent office to call the aromatic rice grown outside India "Basmati", India
objected to it. India has been one of the major exporters of Basmati to several countries
and such a grant by the US patent office was likely to affect its trade. Since Basmati rice
is traditionally grown in India and Pakistan, it was opined that granting patent to RiceTec
violated the Geographical Indications Act under the TRIPS agreement. A geographical
indication (sometimes abbreviated to GI) is a name or sign used on certain products
which corresponds to a specific geographical location or origin (eg. a town, region, or
country). The use of a GI may act as a certification that the product possesses certain
qualities, or enjoys a certain reputation, due to its geographical origin. RiceTec's usage of
the name Basmati for rice which was derived from Indian rice but not grown in India, and
hence not of the same quality as Basmati, would have lead to the violation of the concept
of GI and would have been a deception to the consumers.

Intellectual Property law now considers this a very important arena which seeks to
preserve the varieties in their natural habitat and let the geographical area where it is
traditionally and originally grown have certain special rights over it.23

Definitions:

Geographical indication:

“Geographical indication” in relation to goods means an indication which

identifies such goods as agricultural goods, natural goods or manufactured goods as
originating, or manufactured in the territory of a country, or a region or locality in that
territory, where a given quality, reputation or other characteristic of such goods is
essentially attributable to its geographical origin and in case where such goods are
manufactured goods one of the activities of either the production or of processing or
preparation of the goods concerned takes place in such territory, region or locality, as the
case may be.

Conditions for registration:

23 [Link]
 Section 8 of the Act provides that a geographical indication may be registered in
respect of any or all of the goods, comprised in such class of goods as may be classified
by the Registrar and in respect of a definite territory of a country, or a region or locality
in that territory, as the case may be.

The Registrar may also classify the goods under in accordance with the
International classification of goods for the purposes of registration of geographical
indications and publish in the prescribed manner in an alphabetical index of classification
of goods.

Any question arising as to the class within which any goods fall or the definite
area in respect of which the geographical indication is to be registered or where any
goods are not specified in the alphabetical index of goods published shall be determined
by the Registrar whose decision in the matter shall be final.

Duration of registration:

According to Section 18, a registered geographical indication shall be valid for 10

years and can be renewed from time to time on payment of renewal fee.

Any person aggrieved by an order or decision of the Registrar may prefer an

appeal to the intellectual property appellate board (IPAB) within three months.
[Section31].

Special provisions relating to trademarks and prior users:

The Geographical Indications Act protects a trade mark which contains or

consists of a geographical indication which has been applied for or registered in good
faith under the trade marks law or where such trade marks have been used in good faith
before the commencement of the Act or before the date of filing of an application for
registration of a geographical indication. This Act shall not apply to geographical
indication with respect to goods or class or classes of goods which have become the
common name of such goods in India on or before 1st January 1995. This Act protects
the right of any person to use his name or the name of his predecessor in business except
where such name is liable to cause confusion or misled the public. This Act provides that
no action in connection with the use of registration of a trade mark shall be taken after
five years from the date from which such use or registration which infringes any
geographical indication registered under this Act has become known to the registered
proprietor or the authorised user.24

Remedies for infringement and other offences:

Section 38 list two kinds of offences namely:-
(a) falsifying a GI and
(b) falsely applying a GI.
• The penalty for falsification of GIs and the circumstances in which a
person applies false GI are enumerated in Section 39.
• Selling goods to which false GI is applied as outlined in Section 40.
• Enhanced Penalty for subsequent convictions for the offences of falsifying,
falsification of GIs or selling goods with false GIs.
• Falsely representing a GI as registered as listed in Section 42. Misrepresenting
the GI as Registered, which has not been actually registered is an Offence.
• Improperly describing a place of business as connected with the GIs Registry as
listed in Section 43.
• Falsification of entries in the Register as listed in Section 44.
• No offence in certain cases as provided under Section 45.
• Exemption of certain persons employed in ordinary course of business as
provided under Section 46.
• Procedure where invalidity of registration is pleaded by the accused as provided
in Section 18.25

[Link]
24

ICSI Module 3, elective paper 9.4, Intellectual Property Rights – Law and Practice
25
INTELLECTUAL PROPERTY LAWS - HANDOUT

UNIT – IV
Copyright
The Copyright Act, 1957:
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 from another work—that it should
originate from the author. What is the precise amount of the knowledge, labour,
judgement or literary skill or taste which the author of any book or other compilation
must bestow upon its composition in order to acquire copyright in it within the meaning
of the Copyright Act cannot be defined in precise terms. In every case it must depend
largely on the special facts of that case, and must in each case be very much a question of
degree.
In Camlin Private Limited v. National Pencil Industries, (2002) Del, Delhi High
Court held that copyright subsists only in an original literary work. But it is not necessary
that the work should be the expression of the original or inventive thought, for Copyright
Act are not concerned with the originality of ideas, but with the expression of thought,
and in the case of a literary work, with the expression of thought in print or writing.
Originality for the purpose of copyright law relates to the expression of thought, but such
expression need not be original or novel. The essential requirement is that the work must
not be copied from another work but must originate from the author.
An artistic work means-
• a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an
engraving or a photograph, whether or not any such work possesses artistic quality;
• a work of architecture; and
• any other work of artistic craftsmanship.
Word “artistic” is merely used as a generic term to include the different processes
of creating works set out in the definition section and that provides that a work produced
by one such processes, and that its creation involved some skill or labour on the part of
the artist, it is protected [Associated Publishers (Madras) Ltd. v. K. Bashyam alias ‘Arya’
& Another AIR 1961 Mad. 114 (1962) 1 Mad LJ 258].
What is required for copyright protection in an artistic work is ‘originality’. It is
not originality of idea or the theme behind the work but the expression of the work which
requires to be original. The originality required as per the Act is a minimum amount of
originality. What is prevented under the Copyright Act is making of copies without
permission of the author. A copy is one which is either a reproduction of the original or a
work which closely resembles the original [Challenger Knitting Mills v. Kothari Hosery
Factory 2002 PTC (24) 756 Del. (Reg.)].
"Musical work" means a work consisting of music and includes any graphical
notation of such work but does not include any words or any action intended to be sung,
spoken or performed with the music. A musical work need not be written down to enjoy
copyright protection.
"Sound recording" means a recording of sounds from which sounds may be
produced regardless of the medium on which such recording is made or the method by
which the sounds are produced. A phonogram and a CD-ROM are sound recordings.
"Cinematograph film" means any work of visual recording on any medium
produced through a process from which a moving image may be produced by any means
and includes a sound recording accompanying such visual recording and
"cinematograph" shall be construed as including any work produced by any process
analogous to cinematography including video films.
The expression “cinematograph film” in Section 2(f) of the Copyright Act, 1957
includes video film also which has been recorded in VCR. Entertaining Enterprises &
Others v. State of Tamil Nadu & Another AIR 1984 Mad. 278.
The Bombay High Court in Fortune Films International v. Dev Anand & Another
AIR 1979 Bom.17, has held that in view of the definitions of “artistic work”, “dramatic
work” and cinematograph film”, it would appear that the Copyright Act, 1957 does not
recognize the performance of an actor as ‘work’ which is protected by the Copyright Act.

Meaning of 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. 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
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. 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.
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.
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].
Unlike the case with patents, copyright protects the expressions and not the ideas.
There is no copyright in an idea. In M/s Mishra Bandhu Karyalaya & Others v.
Shivaratanlal Koshal AIR 1970 MP 261, it has been held that the laws of copyright do
not protect ideas, but they deal with the particular expression of ideas. It is always
possible to arrive at the same result from independent sources. The rule appears to be
settled that the compiler of a work in which absolute originality is of necessary excluded
is entitled, without exposing himself to a charge of piracy, to make use of preceding
works upon the subject, where he bestows such mental labour upon what he has taken,
and subjects it to such revision and correction as to produce an original result.
Whether one book is a copy of the other or not, it was held in S K Dutt. V. Law
Book Co. & Others AIR 1954 All 57, in deciding the question whether one book is a
copy of the other or not the Court has, in one view, to keep in mind the two features of
the two books, namely, the external and the internal features. By external features means
the get-up and the ‘overall’ scope of the publication. By internal features means the
general lay out of the subject-matter, the manner of the treatment of the subject matter
and the amount of material contained in the book.
Ownership and Rights of the Owner:
 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.
n 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.
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 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 so far as the copyright
relates to the publication of the work in any newspaper, magazine or similar periodical, or
to the reproduction of the work for the purpose of its being so published, but in all other
respects the author shall 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, be the first owner of
the copyright therein.
Assignment:
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.
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 organisations.
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 organisations, 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.
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.
Powers and functions of Copyright Board:
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.
Section 11 of the Act provides for the establishment of the Copyright Board and
empowers the Central Government to constitute the same consisting of a Chairman and
not less than two, but not more than fourteen members. Chairman of the Board should be
a sitting or retired judge of the High Court or a person qualified to be appointed as judge
of the High Court. The Registrar of Copyright to act as Secretary of the Copyright Board.
The main functions of the Copyright Board are as under:
1. Settlement of disputes as to whether copies of any literary, dramatic or artistic work or
records are issued to the public in sufficient numbers.
2. Settlement of disputes as to whether the term of copyright for any work is shorter in
any other country than that provided for that work under the Act.
3. Settlement of disputes with respect to assignment of copyright as dealt with in Section
19A.
4. Granting of compulsory licences in respect of Indian works withheld from public.
5. Granting of compulsory licence to publish unpublished Indian works.
6. Granting of compulsory licence to produce and publish translation of literary and
dramatic works.
7. Granting of compulsory licence to reproduce and publish literary, scientific or artistic
works for certain purposes.
8. Determination of royalties payable to the owner of copyright.
9. Determination of objection lodged by any person as to the fees charged by Performing
Rights Societies.
10. Rectification of Register on the application of the Registrar of Copyright or of any
person aggrieved.
The Copyright Board has no powers to limit the user of copyright to any
particular territorial area. The appeal against orders passed by the Copyright Board
except under Section 6 lies to the High Court within whose jurisdiction the appellant
resides or carries on business.
The scope of the powers of the Copyright Board has been explained in the case of Shri
Urmila Charan Gupta v. Shri Charushila Sharan Gupta and Sumitra Nandand Gupta 1983
PTC 84. In this case it has been held that if the Board, in its powers, thinks fit or agrees to
dispose of the matter of all the 38 books on a single application, no one else is given the
right to question its propriety.
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).
Compulsory licences:
Section 31 provides that if at any time during the term of copyright in any Indian
work which has been published or performed in public, a complaint is made to the
Copyright Board that the owner of copyright in the work has refused to re-publish or
allow the re-publication of the work or has refused to allow the performance in public of
the work, and by reason of such refusal the work is withheld from the public or has
refused to allow communication to the public by broadcast of such work or in the case of
a sound recording; the work recorded in such sound recording, on terms which the
complainant considers reasonable, the Copyright Board, after giving to the owner of the
copyright in the work a reasonable opportunity of being heard and after holding such
inquiry as it may deem necessary, may, if it is satisfied that the grounds for such refusal
are not reasonable, direct the Registrar of Copyrights to grant to the complainant a
licence to republish the work, perform the work in public or communicate the work to the
public by broadcast, subject to payment to the owner of the copyright of such
compensation and subject to such other terms and conditions as the Copyright Board may
determine.
Compulsory licences are also granted in:
● Unpublished or Published works

● Benefit of disabled

● Statutory licence for cover versions

● Statutory licence for broadcasting of literary and musical works and sound
recording
● Licence to produce and publish translations

Copyright Societies:
The Copyright (Amendment) Act, 1994 added a new Chapter VII on Copyright
Societies. Section 33(1) prohibits any person or association of persons to commence or
carry on the business of issuing or granting licences in respect of any work in which
copyright subsists or any other rights conferred by the Act. The aforesaid restriction is
not applicable to Copyright Societies registered under Section 33(3) of the Copyright
Act.
Under clause (3) of Section 33 Central Government has been authorised to
register association of persons as copyright society after taking into account the following
factors:
(i) the interests of the authors and other owners of rights under the Copyright Act;
(ii) the interest and convenience of the public and in particular of the groups of persons
who are most likely to seek licences in respect of the relevant rights; and
(iii) the ability and professional competence of the applicants.
However, an owner of copyright in his individual capacity continues to have the right to
grant licences in respect of his own works consistent with his obligations as a member of
the registered Copyright society. The Central Government cannot register more than one
copyright society to do business in respect of the same class of works.
The Central Government has been empowered to cancel the registration of a
Copyright Society if its management is detrimental to the interests of the owners of rights
concerned. The registration can also be suspended by the Government for a period of one
year if it is necessary in the interest of the owners of the rights concerned and the
government has to appoint an administrator to discharge the functions of the Copyright
Society.
Rights of broadcasting organisation and performers:
Broadcast reproduction right:
Section 37 entitles every broadcasting organisation to have a special right to be
known as "broadcast reproduction right" in respect of its broadcasts for twenty-five years
from the beginning of the calendar year next following the year in which the broadcast is
made.
As per sub Section (3) of Section 37 during the continuance of a broadcast
reproduction right in relation to any broadcast, any person who, without the licence of the
owner of the right does any of the following acts of the broadcast or any substantial part
thereof,-
(a) re-broadcasts the broadcast; or
(b) causes the broadcast to be heard or seen by the public on payment of any charges; or
(c) makes any sound recording or visual recording of the broadcast; or
(d) makes any reproduction of such sound recording or visual recording where such
initial recording was done without licence or, where it was licensed, for any purpose not
envisaged by such licence; or
(e) sells or gives on commercial rental or offer for sale or for such rental, any such sound
recording or visual recording referred to in clause (c) or clause (d) and subject to the
provisions of Section 39 deemed to have infringed broadcast reproduction right.
Performer’s rights:
Section 38 provides that where any performer appears or engages in any
performance, he shall have a special right to be known as the "performer's right" in
relation to such performance. The performer's right subsist until fifty years from the
beginning of the calendar year next following the year in which the performance is made.
International copyright:
The first multilateral agreement on copyright is the Berne Convention which was
concluded in 1886 and was meant for providing protection to literary and artistic works.
A country joining the Convention has to provide copyright protection to literary and
artistic works of member countries in its own territory and also entitled for enjoying
reciprocal protection from others. The Berne Convention was revised seven times in 1896
(at Paris), 1908 (at Berlin), 1928 (at Rome), 1948 (at Brussels), 1967 (at Stockholm) and
1971 (at Paris) and finally in 1978. Among these, the 1971 revision (the Paris Act) is of
particular importance to the developing countries as it provided special concessions to
these countries in making translations and reproduction of foreign literary works for
educational purposes. Ninety countries are at present member of the Berne Convention.
The post Second World War era saw the emergence of the need for protecting copyright
on an universal basis. Till then countries in the North America were not party to the
Berne Convention and copyright protection in these countries were governed by various
national and regional agreements.
In August, 1952 the Intergovernmental Copyright Conference was convened in
Geneva which led to the adoption of another historical copyright convention, namely the
Universal Copyright Convention (UCC). The UCC is not a substitute for the Berne
Convention. Rather it tried to establish the link between the countries on the Bern Union
and those in North America. India is a member of both the Berne Convention and the
UCC.
TRIPS Agreement negotiated at the Uruguay Round of General Agreement on
Tariffs and Trade (GATT) in 1994 came into effect on 1 January 1995. The text
comprises 73 articles grouped in seven different parts. The standards for specific IPRs
such as copyright and related rights are discussed under articles 9-14.
Acts constituting infringement:
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. The law starts from
the premise that protection would be as long and as broad as possible and should provide
only those exceptions and limitations which are essential in the public interest.
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.
(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).
The concept of honest and concurrent user found in Section 12(3) of the 1958 Act
for securing concurrent registration is totally irrelevant as defence in a suit for
infringement and copyright arising out of a different Act, namely, 1957 Act (M/s Power
Control Appliances & Others v. Sumeet Machines Pvt. Ltd. (1994) 2 SCC 448).
In Ushodaya Enterprises Ltd v T.V. Venugopal, 2001 PTC 727, the division
bench of the Andhra Pradesh High Court held that even though the defendant has
registered the carton under the Trademark Act, that may not come to the aid of the
defendant as the case of the plaintiff is that it owns a copyright of the artistic work under
the Copyright Act and no registration is required for the same. Thus the court held that
the plaintiff was justified in alleging infringement of his artistic work.
One of the surest test to determine whether or not there has been a violation of
copy right is to see if the reader, spectator, or the viewer after having read or seen both
the works would be clearly of the opinion and get an unmistakable impression that the
subsequent work appears to be a copy of the first. In other words, dealing with the
question of infringement of copy right of the applicant’s work by the respondent’s work,
the Court is to test on the visual appearance of the object and drawing, design, or artistic
work in question and by applying the test viz., `lay observer test’ whether to persons who
are not experts in relation to objects of that description, the object appears to be a
reproduction. If to the `lay observer’, it would not appear to be reproduction, there is no
infringement of the artistic copy right in the work. A bare look at these two artistic works
`Sharp’ and `Sharp tools’. Moreover, the work `sharp’ in the work of the appellant is
embedded in a semi-circle design with rays emitting from it as if it were a rising Sub;
whereas, in the respondent’s work it is plainly `Sharp Tools’ with no design super
imposing it. Judging by the eye alone, they appear to Court to be totally different. One
does not think that any one looking at these two works would say that they are similar in
any manner nor do any one would say the design, the lay-out and the manner in which the
words written in the works of the respondent was on obvious imitation, much less an
imitation of the appellant’s work. Applying the various tests set out above, it cannot be
said that the respondent had committed an act of piracy by way of copying the copyright
of the appellant. As rightly pointed out by the Copyright Board that there can be no
copyright in the word or words, but the right can only be in the artistic manner in which
the same is written, and in this case the works were totally dissimilar. [Associated
Electronic & Electrical Industries (Bangalore) Pvt. Ltd. v. M/s Sharp Tools AIR 1991
Kar 406].26
Acts not constituting infringement:
In India, Section 52 of the Copyright Act, 1957 offer for certain acts, which do not
constitute an infringement of the copyright or considered copyright infringement
exception. Namely fair dealing with a literary, musical, dramatic or artistic work not
being a computer program for the reasons of-
● Private use along with research.

● Review or criticism.

● Reporting present events in any print media.

● By a cinematographic film or broadcast or by any means of photographs.

● Reproduction of the judicial proceeding or of a report of the judicial proceeding.

● Publication or reproduction of the musical, literary, dramatic or artistic work in

any work prepared by the secretariat of the legislature.
● The reproduction of any literary, musical work or dramatic in a certified copy
made or supplied in lines with any law for the time being in force.
● The recitation or reading in public of any reasonable extract from the published
literary or dramatic work.

26
ICSI Module 3, elective paper 9.4, Intellectual Property Rights – Law and Practice
 ● The publication in the collection, primarily composed of non-copyright matter,
bona fide intended for the sake of educational institutions.
● The making of sound if made with or by the license or consent of the owner of the
right in the work.27
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.
In Zee Telefilm Limited v. Aalia Productions & Others 2000 PTC 382 Bom. there
was a dispute relating to transfer of copyright in TV serial ‘India’s Most Wanted’. It was
held that in the absence of any specific rights assigned by the defendants in respect of
concept/script/story/synopsis/structure and/or format of programme, the plaintiffs cannot
seek injunction against the defendant. The assignment agreement executed between the
plaintiff and the defendants as regards structure, format, concept, synopsis and script
vague and uncertain, the plaintiffs are not entitled to any interim relief.
Criminal remedies provide for the imprisonment of the accused or imposition of
fine or both, seizure of infringing Copies and delivery of infringing copies to the owner
of the copyright. Prior to the maximum punishment for infringement of copyright under
Section 63 of the Copyright Act, 1957 was one year's imprisonment and fine. These

[Link]
27

1957/
punishments were enhanced by the Copyright (Amendment) Act, 1984 with a view to
curbing widespread piracy in video-taping and musical records. Under these provisions, a
person who knowingly infringes or abets the infringement of copyright in a work or any
other right conferred by the Copyright Act, is punishable with imprisonment for a term of
not less than six months but which may extend to three years and fine which shall not be
less than ` 50,000/-, but which may extend to ` 2.00,000/-. However, the court has the
discretion to reduce the minimum ter n of imprisonment and the minimum fine for
adequate and special reasons. For the second and subsequent convictions, the minimum
term of imprisonment has been prescribed as one year and the minimum fine ` 1,00,000/-.
The amendment in 1994, has further restricted the discretion of the court to impose lesser
penalties than the minimum prescribed in the Act. The imposition of lesser penalties than
the minimum prescribed in the Act has been restricted to cases where the infringement
has not been made for gain in the course of trade and business. In other words, courts
have been given a discretion to impose a lesser penalty where the infringement is of a
technical nature and not motivated by business considerations.28

28
ICSI Module 3, elective paper 9.4, Intellectual Property Rights – Law and Practice
Unit – V
Industrial Designs:
The Designs Act, 2000
Definitions:
Design as per Section 2(d) of the Designs Act, 2000 means only the features of
shape, configuration, pattern or ornament or composition of lines or colour or
combination thereof applied to any article whether two dimensional or three dimensional
or in both forms, by any industrial process or means, whether manual, mechanical or
chemical, separate or combined, which in the finished article appeal to and are judged
solely by the eye, but does not include any mode or principle or construction or anything
which is in substance a mere mechanical device, and does not include any trade mark, as
define in clause (v) of sub-section of Section 2 of the Trade and Merchandise Marks Act,
1958, property mark or artistic works as defined under Section 2(c) of the Copyright Act,
1957.

As stated in the definition of the design above, design does not include:
(i) any trademark, as defined in Section 2(zb) of the Trademarks Act, 1999, or
(ii) any property mark, as defined in Section 479 of the Indian Penal Code, 1860,
or
(iii) any artistic work, as defined in Section 2(c) of the Copyright Act, 1957.
[Artistic Work means
(i) A painting, sculpture, drawing (including a diagram, map, chart or plan), an
engraving or a photograph, whether or not any such work possesses artistic
quality.
(ii) Any work of architecture i.e. any building or structure having an artistic
character or design or any mode for such building or structure.
(iii) Any work of artistic craftsmanship (Section 2(c)).
An illustrative list of non-registrable designs is as under:
● book jackets, calendars, certificates, forms and other documents.

● dress making patterns, greeting cards, leaflets, maps and plan cards.

● post cards, stamps and medals.

• labels, tokens, cards and cartoons.
• any principle or mode of construction of an article.
• mere workshop alterations of components of an assembly.
• mere change in size of article.
• flags, emblems or signs of any country.
• layout designs of integrated circuits.
Registration of design:
Section 5 provides that the Controller may, on the application of any person
claiming to be the proprietor of any new or original design not previously published in
any country and which is not contrary to public order or morality register the design
under the Act. Every application for registration is required to be in the prescribed
manner and accompanied by the prescribed fee. A design when registered shall be
registered as of the date of the application for registration.
As per Section 7, the Controller shall, as soon as may be after the registration of a
design, cause publication of the prescribed particulars of the design to be published in the
prescribed manner and the design be open to public inspection. Under Section 9 of the
Design Act, the Controller grants a certificate of registration to the proprietor of the
design when it is registered.
The important purpose of design Registration is to see that the artisan, creator,
originator of a design having aesthetic look is not deprived of his bonafide reward by
others applying it to their goods.
Copyright in registered designs:
A creator of a design shall keep in mind the following provisions of the Copyright
Act, 1957:
(a) Copyright shall not subsist under the Copyright Act in any design which is
registered under the Designs Act.
(b) Copyright in any design, which is capable is being registered but which has
not been so registered shall cease as soon as any article to which the design has
been applied has been reproduced more than fifty times by an industrial process,
by the owner of the copyright, or with his license, by any other person. [Section
15 of The Copyright Act, 1957].
Piracy of registered design:
Piracy of a design means the application of a design or its imitation to any article
belonging to the class of articles in which the design has been registered for the purpose of
sale or importation of such articles without the written consent of the registered proprietor.
Publishing such articles or exposing them for sale with knowledge of the unauthorized
application of the design to them also involves piracy of the Design.
The proprietor of the design gets exclusive right to apply the design to the article
in a class in which the design is registered. During the existence of copyright over any
design, other persons are prohibited from using the design except or with the permission
of the proprietor, his licensee or assignee. The following activities are considered to be
infringement:
(i) to apply for the purpose of sale the design or any fraudulent imitation of it to any
article in any class
of articles in which the design is registered;
(ii) to import for sale any article to which the design or fraudulent or obvious imitation of
it, has been applied;
(iii) to publish or to expose for sale knowing that the design or any fraudulent or obvious
imitation of it has been applied to it. [Section 22].

Remedies:
A registered proprietor can institute a suit for injunction as well as recovery of
damages against any person engaged in piracy of the registered design. Such legal
proceedings can be instituted from the date of registration and till the expiry of copyright.
However, in case of reciprocity application, the registered proprietor can claim damages
only from the actual date on which the design is registered in India.
If any person commits piracy of a registered design, as defined in Section 22, he
shall be liable to pay for a payment of a sum not exceeding `25,000/- recoverable as
contract debt. However, the total sum recoverable in respect of any one design shall not
exceed ` 50,000/-.
The suit for injunction/damages shall not be instituted in any Court below the
Court of District Judge. [Section 2(c),11,22.]
 In a case between Ampro Food Products v. Ashok Biscuit Works, AIR 1973 AP
17, the appellant manufactured biscuits with AP embossed on them. The respondent also
manufactured biscuits with identical design except that letters AB were embossed on
them, in place of AP. The suit claimed injunction bringing a charge of piracy of design.
Issuing a temporary injunction, the Court held that in such cases the defence cannot argue
that the appellant’s registered design was not new or original if no steps had been taken
earlier seeking cancellation of the registration of the design.
In a case between Hindustan Lever Ltd. V. Nirma Pvt. Ltd., AIR 1992 Bom 195,
the plaintiff alleged infringement of its registered trade mark, passing off, and
infringement of the copyrights in original artistic work and sought permanent injunction
to restrain the defendant from using the impinged carton in relation to soaps or detergent
powder.
The defence took the plea that the said label was in fact a design that could be
registered under the Designs Act, and the fact that it was not so registered makes
copyrights if any, under the copyright Act non-existent when the article to which the
design has been applied was reproduced fifty times by industrial process. The Court ruled
that a label to be put on a carton for the goods is not a design.
Powers and duties of controller:
(a) The petition for cancellation shall be accompanied by a statement and evidence
setting out the facts based upon which the petition is filed. The statement shall
also state the nature of applicant‘s interest so as to determine, whether the
petitioner is a person interested.
(b) The fact of filing of a petition for cancellation of registration of a design is
published in the Official Journal.
(c) On receipt of a petition for cancellation, the Controller shall send a copy of the
petition along with statement and evidence to the registered proprietor at the
earliest.
(d) If the registered proprietor desires to oppose the petition, he shall file at Patent
Office, Kolkata, a counter statement and evidence, if any, setting out fully the
grounds upon which he intends to oppose the petition, within one month from the
date of intimation by the Controller, and deliver a copy to the Petitioner,
 simultaneously. This period of one month is extendable by a maximum of three
months, by filing a petition for extension with the required fee.
(e) After receipt of counter statement and evidence, if any, from the registered
proprietor, the Petitioner may file his reply statement and evidence, by way of
affidavits, within one month from the date of delivery of the registered
proprietor‘s counter statement and evidence. Reply evidence of the petitioner
shall be strictly confined to matters in the evidence of the registered proprietor.
This period of one month is extendable by a maximum of three months, by filing
a petition for extension with the required fee. The petitioner shall deliver a copy
of his reply statement and evidence to the registered proprietor, simultaneously.
(f) No further evidence shall be delivered by either party, except with the leave or
direction of Controller.
(g) Where a document is in a language other than English and is referred to in any
statement or evidence, an attested translation thereof in duplicate in English
should be furnished.
(h) After completion of the filing of statement and evidence by the Petitioner and
Registered Proprietor, the Controller shall give at least ten days‘ notice for
hearing.
(i) On receipt of the notice of hearing, if either party desires to be heard, a notice of
intention to attend the hearing shall be filed in Form 20.
(j) The Controller may refuse to hear any party which has not given such notice and
fee.
(k) If either party intends to rely on any publication at the hearing, not already
mentioned in the petition for cancellation, statement or evidence, he shall give to
the other party and to the Controller a notice of his intention to do so, together
with details of such publication. Such notice shall be given at least five days‘ in
advance.
(l) After hearing the parties, or if neither party desires to be heard, then without a
hearing, the Controller shall decide the petition and issue a speaking order. The
decision of Controller shall be notified to the parties and shall be published in the
Official Journal.
 (m) Subsequent entries, if necessary, shall be made in the Register of Designs.
[Section 19, Rule 29].
International law:
The international conventions that protect industrial design rights are the Paris
Convention for the Protection of Industrial Property (Paris Convention), The Hague
Agreement Concerning the International Deposit of Industrial Designs (The Hague
Agreement) and the Berne Convention for the Protection of Literary and Artistic Works
(Berne Convention).29
Semi conductor and integrated circuit layout:
A semiconductor is a material which has electrical conductivity to a degree
between that of a metal such as copper and that of an insulator such as glass.
Semiconductors are the foundation of modern solid state electronics, including
transistors, solar cells, light-emitting diodes (LEDs), quantum dots and digital and analog
integrated circuits.
The Semiconductor Integrated Circuit Layout-Design Act, 2000, protects original,
inherently distinctive layout-designs that have not been previously commercially
exploited. Registration is a necessary pre-requisite for protection. The Semiconductor
Integrated Circuits Layout-Design Act, 2000 gives recognition to a new form of
intellectual property, namely, the ‘layout-designs’ used in semiconductor integrated
circuits [i] as has been defined u/s 2(h) of the Act.

The need for a sui generis form of protection developed primarily as a result of
chip piracy, which threatened to undercut the vitality of the semiconductor industry. Chip
pirates could sell identical chips for lower prices than could the companies that originally
designed them.

This caused legitimate companies that engaged in chip research and development
to cut prices to compete with pirated chips, which deprived legitimate companies of the
funds needed to carry out further research and development to build the next generation

[Link]
29
of chips. Legitimate companies could not get adequate chip protection under patent,
copyright, or trade secret law, so a sui generis form of protection was provided.30

30 [Link]