1. WHAT IS INTELLECTUAL PROPERTY?

Intellectual property (IP) refers to creations of the mind, such as inventions;

literary and artistic works; designs; and symbols, names and images used in
commerce.

IP is protected in law by, for example, patents, copyright and trademarks,

which enable people to earn recognition or financial benefit from what they
invent or create. By striking the right balance between the interests of
innovators and the wider public interest, the IP system aims to foster an
environment in which creativity and innovation can flourish.

Importance of Intellectual Property

Intellectual property protection is the key factor for economic growth and
advancement in the high technology sector. They are good for business, benefit
the public at large and act as catalysts for technical progress. Whether IPRs are
a good or bad thing, the developed world has come to an accommodation with
them over a long period. Even if their disadvantages sometimes outweigh their
advantages, by and large the developed world has the national economic
strength and established legal mechanisms to overcome the problems so
caused. Insofar as their benefits outweigh their disadvantages, the developed
world has the wealth and infrastructure to take advantage of the opportunities
provided. It is likely that neither of these holds true for developing and least
developed countries. (Extracts from Report on Commission on IPR London
September 2002).

Intellectual Property Rights in India

Intellectual Property Rights are legal rights governing the use of creations of
the human mind. The recognition and protection of these rights is of recent
origin. Patents, designs and trademarks are considered as industrial property.
As per International Convention for the protection of industrial (Paris
Convention) the protection of industrial property has as its object patents,
utility models, industrial designs, trademarks, service marks, trade names,
indications of source or appellations or origin and the repression of unfair
competition when copyrights, Geographical indicators, layout Designs and
confidential information were included to industrial property, they all become
intellectual property.

With the trade related Aspects of Intellectual Property Rights (TRIPS)

Agreement of World Trade Organisation (WTO), the intellectual property rights
attained the authority to enforce the law internationally. According to TRIPS,
the intellectual property rights are:

1) Copyright and Related Rights

a) Rights of artists, painters, musicians sculptors, photographers, and authors

for copyright in their works;

b) Rights of computer programmes whether in source or object code for a

copyright in their programmes and compilation data;
c) Rights of performers producers of phonogram’s and broadcasting
organizations in respect of fixation on their programmes for copyright in their
work.

2) Right of traders in their trade marks.

3) Right of manufacturers & producers on geographical indication in relation to

such products and produce.

4) Right of designers for their distinctive design striking to the eye.

5) Patents:

a) Right of the inventor for patent is his invention.

b) Rights of plant breeders and farmers.

c) Rights of biological diversity.

6) Right of computer technologist for their layout design of integrated circuits.

7) Right of businessmen for protection of their undisclosed information on

technology and management.

Broadly, the following acts deal with the protection of intellectual property:

1. Trade Marks Act, 1999

2. The Patents Act, 1970 (as amended in 2005)
3. The Copyright Act, 1957
4. The Designs Act, 2000
5. The Geographical Indications of Goods (Registration and Protection) Act,
1999
6. The Semiconductor Integrated Circuits Layout Design Act, 2000
7. The Protection of Plant Varieties and Farmers' Right Act, 2001
8. The Information Technology Act, 2000
9.

2. Copyright

Copyright protects the right of the creator on his tangible work to specifically
copy or reproduce or publish the work for monetary gains or otherwise. It
doesn’t specifically require registration of the copyright. It is an exclusive legal
right given to the work creator, to reproduce or generate copies or translate or
adapt his work. It is governed by the Indian Copyright Act, 1957 (as amended
in 2012) and Copyright rules 1958 (as amended in 2013, 2016).

Importance of Copyright Registration: Registering a copyright is an added

advantage, which protects the ownership of the work from any unnecessary
disputes. In the event of probable copyright infringement dispute, certificate of
registration of copyright and the Register of Copyright containing particulars of
registered copyrights are considered as “admissible evidence” in the court of
law. These serve as prima facie evidence with reference to dispute relating to
ownership of copyright.

What Does a Copyright Protect?

It is a form of intellectual property law, which protects original works under
literature, music, art, photography, cinema/film or even a computer
programme. The copyright protects most of the works that are available in
tangible form, including lyrics to a song, tunes, pictures, graphics, sculpture,
piece of architecture, sound recordings, drama, choreographed works,
parodies, signatures. All these must be viewed in more depth to get intricate
details.

Term of Copyright: A copyright shall subsist in the work from the time it is
published within the lifetime of the author until sixty years after the author
dies. In Section 22 of the Indian Copyright Act, 1957; it is mentioned as,

“Except as otherwise hereinafter provided, copyright shall subsist in any literary,

dramatic, musical or artistic work (other than a photograph) published within the
lifetime of the author until 60[sixty] years from the beginning of the calendar year
next following the year in which the author dies”.

Procedure of Copyright Registration:

Chapter X of the Indian Copyright Act,1957 and Rule 70 of Copyright Rules,

2013, mention the following procedure about the registration of copyrights in
India:

1.  Application: An author or applicant can file the application for registration

of copyright, himself or via his authorized legal representative. This application
can be made by applying physically in the copyright office or through
speed/registered post; or through e-filing facility available on the official
website of Copyrights Office (copyright.gov.in). There should be one application
for one work. Each application in Form IV should be accompanied by the
requisite fee prescribed in the second schedule to the Rules. Fee ranges from
500 INR to 40,000 INR, depending on the form of work. The fee can either be in
the form of Demand Draft or Indian Postal Order favoring “Registrar of
Copyright Payable at New Delhi” or through E-payment.

Other information which needs to be provided are:

a)  Name, address, the nationality of the applicant;

b) Nature of applicant’s interest in the work;

c) Title of the work;

d) Name, address, the nationality of the author of the work and if the author is
deceased, date of his death;

e) Language of the work;

f) Whether the work is published or unpublished;

i) Year and Country of first publication and Name, address, the nationality of
the publisher;
ii) Year and Countries of subsequent publications, if any, and name, address,
the nationality of subsequent publishers;

g)  Name, address, the nationality of a person authorized to assign or license

the rights comprising the copyright, if any;

h) No-objection Certificate signed by the author (if different from applicant);

i) Vakalatnama or Power of attorney signed by the advocate and the party (if
the application is made by the advocate of the party);

j) Three copies of published work must be sent along with the application.

k) If the work is unpublished, two copies of the manuscripts must be sent with
the application (one copy will be duly stamped and returned and other will be
retained).

l) Application for registration of a computer programme must be filed with the

source and object code.

m) Application for registration of an artistic work used or capable of being used

in relation to goods must be filed with a statement to that effect and a no-
objection certificate from the Registrar of Trademarks.

n) Application for registration of an artistic work capable of being registered as

a design must be filed with a statement in the form of an affidavit stating that
it has not been registered under Designs Act, 2000 and has not been applied to
any article through an industrial process.

o) Application must be signed by the applicant or the advocate;

p) Applicant must provide his mobile number and email address to receive the
filing number.

2. Examination: Once the application is filed, a diary number is received.

There is a provision of a mandatory wait period of 30 days, so that “No
Objection” is filed against the claim made by the author. If some objection is
filed against the copyright claim, then it may take one more month. The
Registrar of Copyrights gives both the parties an opportunity of hearing the
matter. After the decision on the ownership or if the objection is rejected, the
application goes for scrutiny. The applicant is asked to remove any
discrepancy, if found; within 30 days.

3. Registration: On further submission of documents, if the Copyright

Registrar, is completely satisfied with the completeness and correctness of the
claim made in the application, he shall enter the particulars of the copyright in
the register of copyrights and further issue a Certificate of Registration.
Registration completes when the applicant is issued with the copy of entries
made in the Register of Copyrights.

Copyright in India is recognized virtually worldwide under the “Berne

Convention” and the applicable law of its member nations. If total compliance
is followed the “certificate of copyright” is a future safeguard for the creative
minds to preserve their creativity and reap exclusive monetary benefits from it
as well.
 3. What is a trademark?

A: A trademark (popularly known as brand name) in layman’s language is a

visual symbol which may be a word signature, name, device, label, numerals or
combination of colours used by one undertaking on goods or services or other
articles of commerce to distinguish it from other similar goods or services
originating from a different undertaking. The legal requirements to register a
trademark under the Act are:

 The selected mark should be capable of being represented graphically

(that is in the paper form).

 It should be capable of distinguishing the goods or services of one

undertaking from those of others.

 It should be used or proposed to be used mark in relation to goods or

services for the purpose of indicating or so as to indicate a connection in
the course of trade between the goods or services and some person have
the right to use the mark with or without identity of that person.

Q:What is the function of a trademark?

A: Under modern business condition a trademark performs four functions

 It identifies the goods / or services and its origin.

 It guarantees its unchanged quality

 It advertises the goods/services

 It creates an image for the goods/ services.

RIGHTS AVAILABLE BY A TRADEMARK

1. Rights of Unregistered Trademark Holder/Owner

The proprietor of an unregistered trademark can prevent any third party from
using an identical or deceptively similar trademark, provided such an
unauthorized use by the rival results into passing-off. For this purpose, he can
initiate the proceedings under common law. Therefore, such a right is known
as a common law right. Apart from an injunction, the claimant may at his
option, obtain either damages or an account of profits. The claimant must
establish three important factors in order to bring an action against the pass-
off, namely-

 He has acquired goodwill in his trademark;

 (ii) The act of the defendant amounts to misrepresentation;

 (iii) The claimant has suffered or is likely to suffer damage due to the act
of the defendant.

2. Rights Of Registered Trademark Holder/Owner

Following are the rights which are at disposal of the owner or holder of
a registered trademark

(i) Right to Exclusive Use

Section 28(1) of the Act provides that subject to the other provisions of this Act,
registration of a trademark, if valid, give to the registered proprietor of the
trademark the exclusive right to use the trademark in relation to the goods or
services in respect of which the trademark is registered. In Ramdev Food
Products Pvt. Ltd. v. Arvindbhai Rambhai Patel the Supreme Court observed
“Section 28…. confers an exclusive right of using trademark to a person who
has the trademark registered in his name. Such right is, thus, absolute.
However, from the opening of Section 28(1) of the Act namely, “subject to the
provisions” the right conferred on the registered proprietor is not an
indefeasible right. This is further, made clear by Section 27(2) of the Act, which
says “nothing in this Act shall be deemed to affect the right of action any
person for passing off the goods as goods of another person, or the remedies in
respect thereof. Thus, the right created by Section 28(1) of the Act in favour of
a registered proprietor of a trademark is not an absolute right and is
subservient to other provisions of the Act Namely Sections 27(3), 33 (saving for
vested rights) etc. It is also pertinent to note that the registered proprietor of a
trademark gets exclusive rights to use the trademark in relation to goods or
services in respect of which it is registered and that person may not have the
right to use the trademark in respect of the other goods or services in respect of
which the trademark is registered”.

(ii) Right to Seek Statutory Remedy Against an Infringement

Section 28(1) also provides that the registered proprietor of a trademark can
seek legal remedy in case of an infringement of his trademark in the manner
provided by this Act. He may obtain an injunction and at his option, either
damages or an account of profits by instituting a suit against the alleged
infringer. The proprietor of an unregistered trademark cannot initiate the
infringement proceeding in the event of a deliberate counterfeiting. The Delhi
High Court has observed that registration of a trademark confers on the person
some very valuable rights. To mention only one such right, one may turn to
Sub-section (1) of Section 27 which provides that no person shall be entitled to
institute any proceedings to prevent or to recover damages for, the
infringement of an unregistered trademark.

(iii) Right of Registered Trademark holder of Identical Trademark

Section 28(3) provides that where two or more persons are registered proprietor
of trademarks, which are identical with or nearly resembling with each other,
the exclusive right to use of any of those trademarks shall not (except so far as
their respective rights are subject to conditions or limitations entered on the
register) be deemed to have been acquired by any of those persons as against
any other of those persons merely by registration of trademarks. However,
each of those persons has otherwise the same rights against other persons
excluding registered users using by way of permitted use, as he would have if
he were the sole registered proprietor.

(iv) Right to Assign

Section 37 of the Act provides that the registered proprietor of
a trademark shall have the power to assign the trademark and to give effectual
receipts for any consideration for such assignment. However, this right shall be
subject to the provisions of the Act and to any rights appearing from the
register to be vested in any other person.

(v) Right to Seek Correction of Register

The registered proprietor of a trademark has a right to make an application to
the registrar seeking correction of register regarding the errors pertaining to the
particulars of the registered proprietor and other aspects relating to the
registered trademark.

(vi) Right to Alter Registered Trademark

The registered proprietor of a trademark must make an application to the
registrar seeking leave to add to or after the trademark in any manner not
substantially affecting the identity thereof. The Registrar may refuse the leave
or grant it on such terms and may be subject to such limitations as he may
think fit.

4. Essential features of a Trademark

It must be distinctive. Distinctiveness can be inherent or acquired. Inherent

distinctiveness means that it is distinct in itself and no one can justifiably
claim its use. Acquired distinctiveness means that it has acquired
distinctiveness through use.

It must be a non-descriptive word. In other words, it can be a word other than

an invented word whether it is already existing or newly coined.

Inherent distinctiveness can be established by the use of invented words. For

instance, invented words like RIN for washing powder, SONY and AKAI for
electronics, YASHIKA and KODAK for cameras are inherently distinctive.
Whereas, surnames or personal names like CADBURY for chocolates or TATAS
for fast moving consumer goods have acquired distinctiveness through use.

Generally, surnames and personal names are common and frequently

occurring and hence cannot be registered as trademarks. From a trademark
perspective, this characteristic makes surnames and personal names neither
distinctive nor capable of distinguishing the goods of one person from that of
another bearing the same surname or personal name.

5. False Trade Description.

Trade Description - As the name suggests it briefly describes the service or

product that a company or an individual is providing. The main aim of adding
a trade description is to prevent manufacturers, retailers or service providers
from misleading customers as to what they are spending their money on. Trade
Marks Act, 1999 gives power to the judiciary to punish companies or
individuals who make false claims about the products or services that they sell.
Section 104 of the Trade Marks Act, levies punishment on a person or a
company who sells, lets for hire or exposes for sale, any product or service on
which any false trade mark or false trade description is applied.

False Trade Description - The untrue description of certain goods made in

the course of a business is false trade description. The false description of
goods can be made directly, indirectly or by implication.

When a person makes a false trade description, s/he intends that the product
be taken for that of his/ her competitors.

false trade description" means--

(i) a trade description which is untrue or misleading in a material respect as
regards the goods to which it is applied; or

(ii) any alteration of a trade description as regards the goods to which it is

applied, whether by way of addition, effacement or otherwise, where that
alteration makes the description untrue or misleading in a material respect; or

(iii) any trade description which denotes or implies that there are contained, as
regards the goods to which it is applied, more yards or metres than there are
contained therein standard yards or standard metres; or

(iv) any marks or arrangement or combination thereof applied to goods in such

manner as to be likely to lead persons to believe that the goods are the
manufacture or merchandise of some person other than the person whose
merchandise or manufacture they really are; or

(v) any false name or initials of person applied to goods in such manner as if

such name or initials were a trade description in any case where the name or
initials--

(a) is or are not a trade mark or part of a trade mark; and

(b) is or are identical with or deceptively similar to the name or initials of a

person carrying on business in connection with goods of the same description
and who has not authorised the use of such name or initials; and

(c) is or are either the name or initials of a fictitious person or of some person
not bona fide carrying on business in connection with such goods; and the fact
that a trade description is a trade mark or part of a trade mark shall not
prevent such trade

description being a false trade description within the meaning of this Act;

(g) " goods" means anything which is the subject of trade or manufacture;

(h) " High Court" means the High Court having jurisdiction under section 3;

(i) " limitations" (with its grammatical variations) means any limitations of the
exclusive right to the use of a trade mark given by the registration of a person
as proprietor thereof, including limitations of that right as to mode of use, as to
use in relation to goods to be sold or otherwise traded in within India, or as to
use in relation to goods to be exported to any market outside India;

(j) " mark" includes a device, brand, heading, label, ticket, name, signature,
word, letter or numeral or any combination thereof;

(k) " name" includes any abbreviation of a name;

(l) " package" includes any case, box, container, covering, folder, receptacle,
vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid,
stopper and cork;

(m) " permitted use", in relation to a registered trade mark, means the use of a
trade mark--

(i) by a registered user of the trade mark in relation to goods- (a) with which he
is connected in the course of trade; and (b) in respect of which the trade mark
remains registered for the time being; and (c) for which he is registered as
registered user; and
(ii) which complies with any conditions or restrictions to which the registration
of the trade mark is subject;

6. PROVISIONS OF REGISTER OF TRADE MARKS

6. The Register of Trade Marks.

(1) For the purposes of this Act, a record called the Register of Trade Marks
shall be kept at the head office of the Trade Marks Registry, wherein shall be
entered all registered trade marks with the names, addresses and descriptions
of the proprietors, notifications of assignments and transmissions, the names,
addresses and descriptions of registered users, disclaimers, conditions,
limitations and such other matters relating to registered trade marks as may
be prescribed.

(2) No notice of any trust, express or implied or constructive, shall be entered

in the register and no such notice shall be receivable by the Registrar.

(3) Subject to the superintendence and direction of the Central Government,

the register shall be kept under the control and management of the Registrar.

(4) There shall be kept at each branch office of the Trade Marks Registry a copy
of the register and such of the other documents mentioned in section 125 as
the Central Government may, by notification 1 in the Official Gazette, direct.

7. Part A and Part B of the register.

(1) The register referred to in section 6 shall be divided into two Parts called
respectively Part A and Part B.

(2) The Register of Trade Marks existing at the commencement of this Act shall
be incorporated with and form part of Part A of the register, and this Part shall
comprise all trade marks entered in the Register of Trade Marks existing at the
commencement of this Act and all trade marks which after such
commencement may be entered in Part A of the register.

(3) Part B of the register shall comprise all trade marks which after the
commencement of this Act may be entered in Part B of the register.

8. Registration to be in respect of particular goods.

(1) A trade mark may be registered in respect of any or all of the goods
comprised in a prescribed class of goods.

(2) Any question arising as to the class within which any goods fall shall be
determined by the Registrar whose decision in the matter shall be final.

9. Requisites for registration in Parts A and B of the register.

(1) A trade mark shall not be registered in Part A of the register unless it
contains or consists of at least one of the following essential particulars,
namely:--

(a) the name of a company, individual or firm represented in a special or

particular manner;
(b) the signature of the applicant for registration or some predecessor in his
business;

(c) one or more invented words;

(d) one or more words having no direct reference to the character or quality of

the goods and not being, according to its ordinary signification, a geographical
name or a surname or a personal name or any common abbreviation thereof or
the name of a sect, caste or tribe in India;

(e) any other distinctive mark.

(2) A name, signature or word, other than such as fall within the descriptions
in clauses (a), (b), (c) and (d) of sub- section (1), shall not be registrable in part
A of the register except upon evidence of its distinctiveness.

(3) For the purposes of this Act, the expression" distinctive" in relation to the
goods in respect of which a trade mark is proposed to be registered, means
adapted to distinguish goods with which the proprietor of the trade mark is or
may be connected in the course of trade from goods in the case of which no
such connection subsists either generally or, where the trade mark is proposed
to be registered subject to limitations, in relation to use within the extent of the
registration.

(4) A trade mark shall not be registered in Part B of the register unless the
trade mark in relation to the goods in respect of which it is proposed to be
registered is distinctive, or is not distinctive but is capable of distinguishing
goods with which the proprietor of a trade mark is or may be connected in the
course of trade from goods in the case of which no such connection subsists,
either generally or, where the trade mark is proposed to be registered subject to
limitations, in relation to use within the extent of the registration.

(5) In determining whether a trade mark is distinctive or is capable of

distinguishing as aforesaid, the tribunal may have regard to the extent to
which--

(a) a trade mark is inherently distinctive or is inherently capable of

distinguishing as aforesaid; and

(b) by reason of the use of the trade mark or of any other circumstances, the
trade mark is in fact so adapted to distinguish or is in fact capable of
distinguishing as aforesaid.

(6) Subject to the other provisions of this section, a trade mark in respect of

any goods--

(a) registered in Part A of the register may be registered in Part B of the

register; and

(b) registered in Part B of the register may be registered in Part A of the

register; in the name of the same proprietor of the same trade mark or any part
or parts thereof.
 7. Provisions of registeration of a Trademark

Registration to be in respect of particular goods.

(1) A trade mark may be registered in respect of any or all of the goods
comprised in a prescribed class of goods.

(2) Any question arising as to the class within which any goods fall shall be
determined by the Registrar whose decision in the matter shall be final.

Limitation as to colour.

(1) A trade mark may be limited wholly or in part to one or more specified
colours, and any such limitation shall be taken into consideration by the
tribunal having to decide on the distinctive character of the trade mark.

(2) So far as a trade mark is registered without limitation of colour, it shall be

deemed to be registered for all colours.

 Prohibition of registration of certain marks. A mark--

(a) the use of which would be likely to deceive or cause confusion; or

(b) the use of which would be contrary to any law for the time being in force; or

(c) which comprises or contains scandalous or obscene matter; or

(d) which comprises or contains any matter likely to hurt the religious

susceptibilities of any class or section of the citizens of India; or

(e) which would otherwise be disentitled to protection in a court; shall not be

registered as a trade mark.

Prohibition of registration of identical or deceptively similar trade marks.

(1) Save as provided in sub- section (3), no trade mark shall be registered in

respect of any goods or description of goods which is identical with or
deceptively similar to a trade mark which is already registered in the name of a
different proprietor in respect of the same goods or description of goods.

(2) Where separate applications are made by different persons to be registered

as proprietors respectively of trade marks which are identical or nearly
resemble each other in respect of the same goods or description of goods, the
Registrar may defer the acceptance of the application or applications bearing a
later date until after the determination of the proceedings in respect of the
earlier application, and may dispose of such application or applications in the
light of the evidence tendered in relation to earlier application and the
oppositions thereto, if any.

(3) In case of honest concurrent use or of other special circumstances which, in

the opinion of the Registrar, make it proper so to do, he may permit the
registration by more than one proprietor of trade marks which are identical or
nearly resemble each other (whether any such trade mark is already registered
or not) in respect of the same goods or description of goods, subject to such
conditions and limitations, if any, as the Registrar may think fit to impose.

Prohibition of registration of names of chemical elements.

(1) No word which is the commonly used and accepted name of any single
chemical element or single chemical compound (as distinguished from a
mixture) shall be registered as a trade mark in respect of a chemical substance
or preparation, and any such registration shall, notwithstanding anything in
section 32, be deemed for the purposes of section 56 to be an entry made in
the register without sufficient cause or an entry wrongly remaining on the
register, as the circumstances may require.

(2) This section shall not apply to a word which is used to denote only a brand
or make of the element or compound as made by the proprietor or a registered
user of the trade mark, as distinguished from the element or compound as
made by others, and in association with a suitable name or description open to
the public use.

Use of names and representations of living persons or persons recently

dead. Where an application is made for the registration of a trade mark which
falsely suggests a connection with any living person, or a person whose death
took place within twenty years prior to the date of application for registration of
the trade mark, the Registrar may, before he proceeds with the application,
require the applicant to furnish him with the consent in writing of such living
person or, as the case may be, of the legal representative of the deceased
person to the connection appearing on the trade

mark, and may refuse to proceed with the application unless the applicant
furnishes the Registrar with such consent.

8. Limits of effects of registered trade marks

30. Acts not constituting infringement.

(1) Notwithstanding anything contained in this Act, the following acts do not

constitute an infringement of the right to the use of a registered trade mark:--

(a) where a trade mark is registered subject to any conditions or limitations,

the use of the trade mark in any manner in relation to goods to be sold or
otherwise traded in, in any place, or in relation to goods to be exported to any
market, or in any other circumstances, to which, having regard to those
conditions or limitations, the registration does not extend;

(b) the use by a person of a trade mark in relation to goods connected in the

course of trade with the proprietor or a registered user of the trade mark if, as
to those goods or a bulk of which they from part, the registered proprietor

or the registered user conforming to the permitted use has applied the trade
mark and has not subsequently removed or obliterated it, or has at any time
expressly or impliedly consented to the use of the trade mark;

(c) the use of a trade mark by a person in relation to goods adapted to form

part of, or to be accessory to, other goods in relation to which the trade mark
has been used without infringement of the right given by registration under
this Act or might for the time being be so used, if the use of the trade mark is
reasonably necessary in order to indicate that the goods are so adapted, and
neither the purpose nor the effect of the use of the trade mark is to indicate,
otherwise than in accordance with the fact, a connection in the course of trade
between any person and the goods;
(d) the use of a registered trade mark, being one of two or more trade marks
registered under this Act which are identical or nearly resemble each other, in
exercise of the right to the use of that trade mark given by registration under
this Act.

(2) Where the goods bearing a registered trade mark are lawfully acquired by a
person, the sale of or other dealings in those goods by that person or by a
person claiming under or through him is not an infringement of the trade mark
by reason only of the trade mark having been assigned by the registered
proprietor to some other person after the acquisition of those goods.

9. Major Key Elements of the Copyright Act

A Certain class of work is there in the Copyright Act and Copyright applies in
the following class of works –

What is Original Work?

Original Work must be sufficiently distinct from existing work so as represent a

level of uniqueness in the work/content. It represents the expression which is
original or creativity of the author in the content /class of work. Originality
does not require novelty but an independent creation.Copyright protection is
given when the work is original and creative.

What is Creative Expression?

Copyright protection is only provided when there is some aspect of creativity.

The expression of the work requires to be original. As per the Act the originality
is a minimum amount of originality.

What is Tangible Medium?

For creative expression,the medium must be tangible. The work must be

recorded in a Tangible format. For receiving copyright protection, the work
done must be recorded in the Tangible format. Prior to the recording if the work
expression is communicated in the public domain, it may find itself being
incapable of copyright protection. The Tangible medium must be fixed to
perceived,reproduced for more than a transitory period. It must meet the PRC
requirement (Perceived, Reproduced, communicated in a medium.

Example of PRC Requirement –

 Perceived – A song written on paper because it may be apprehend.

 Reproduced – To reproduce the same photo, a photograph is keep on

Computer’s hard drive.

 Communicated – A speech on a paper or cassette tape because the

speech may be communicated.

What are Protected Elements in Literary and Visual Works?

The boundaries are uncertain which separates ideas and expression variation
based on the type of work involved. Literary and visual works have protected
elements i.e.

 Literary Work – In literary work protected elements include

 Uniquely developed Character.

 Sequences of events in the storyline

 Visual work-The elements that necessarily flow from the subject matter
are out of the preview of protected elements of Visual Works.

What are the Rights that the Copyright Holder Carries?

The Copyright holder carries various rights which include-

 Reproducing the work,

 Derivative work,

 Performing the work Publicly,

 Distributing the work Publicly,

 Publicly display the work,

 Performing sound recordings by digital audio transmission publicly.

10. THE FIRST OWNER OF COPYRIGHT

According to Section 17 of the Copyrights Act, 1957 the first owner of

copyright is defined as under:
Subject to the provisions of this Act, the author of a work shall be the owner of
copyright therein. Section 17 statutorily recognizes the author of the work to be
the first owner of the copyright. The author is defined under the Act for various
works, which come under the law of copyright.

Section 2(d) defines author, it says "Author" means,-

(1) In relation to a literary or dramatic work, the author of the work;
(2) In relation to a music work, the composer;
(3) In relation to artistic work other than a photograph, the artist;
(4) In relation to photograph, the person taking the photograph, the artist;
(5) In relation to a cinematograph film or sound recording, the producer; and
(6) In relation to any literary, dramatic, musical or artistic work which is
computer- generated, the person who causes the work to be created.
11. Copyright Infringement

Using copyrighted work without the consent or permission of the

copyright holder is considered as a copyright infringement. The
infringement of intellectual property occurs when an individual or
group of individuals fabricate copywriters’ work intentionally or
unintentionally without giving them credit.

For example -

 Selling pirated books

 Selling art work
 Performing a play in public
 Online piracy.

Copyright laws provide certain exclusive rights to the copyright holder, such as
the right to reproduce, distribute, display or perform the protected work, or to
make derivative works. Use of such copyright protected work without the
permission of the copyright owner is copyright infringement. In this article, we
look at copyright infringement in India.

Common Types of Copyright Infringement

The following are some of the most common types of copyright infringement:

- Making copies of copyrighted works for sale or hire or letting them for
hire.

- Permitting performance of copyright infringed works at any place for

performance of works.

- Distributing copyright infringing works.

- Public exhibition of copyright infringing works.

- Importing copyright infringing works into India.

If any of the activity is performed by a person or business, then they are liable
for prosecution under copyright laws in India.

12. Limitations of Copyrights in India

THE DOCTRINE OF FAIR DEALING

The term “fair dealing” has not been defined in the Act. It is a legal doctrine,
which allows a person to make limited use of copyrighted work without the
permission of the owner. 

Whether a person’s use of copyright material is “fair” would depend entirely

upon the facts and circumstances of a given case. The line between “fair
dealing” and infringement is a thin one. In India, there are no set guidelines
that define the number of words or passages that can be used without
permission from the author. Only the Court applying basic common sense can
determine this. It may however be said that the extracted portion should be
such that it does not affect the substantial interest of the Author. Fair dealing
is a significant limitation on the exclusive right of the copyright owner. It has
been interpreted by the courts on a number of occasions by judging the
economic impact it has on the copyright owner. Where the economic impact is
not significant, the use may constitute fair dealing.  

The fair nature of the dealing depends on the following four factors:

1. the purpose of use

2. the nature of the work

3. the amount of the work used, and

4. the effect of use of the work on the original

In India the provisions of Section 52 of the Copyright Act, 1957  provide for
certain acts, which would not constitute  an infringement of copyright namely
fair dealing with a literary, dramatic, musical or artistic work not being a
computer program for the purposes of-

 private use, including research;

 criticism or  review ,

 reporting current events in  any print media or

 by broadcast or in a cinematographic film or by means of photographs,

 reproduction for the purpose of a judicial proceeding or of a report of a

judicial proceeding;

 reproduction or publication of a literary, dramatic, musical or artistic work

in any work prepared by the Secretariat of a Legislature or, where the
Legislature consists of two Houses, by the Secretariat of either House of
the Legislature, exclusively for the use of the members of that Legislature;

 the reproduction of any literary, dramatic or musical work in a certified

copy made or supplied in accordance with any law for the time being in
force;

 the reading or recitation in public of any reasonable extract from a

published literary or dramatic work;

 the publication in a collection, mainly composed of non-copyright matter,

bona fide intended for the use of educational institutions,

 the making of sound if made by or with the license or consent of the owner
of the right in the work
13. Patents

Patent, is a legal document granted by the government giving an inventor the

exclusive right to make, use, and sell an invention for a specified number of
years. Patents are also available for significant improvements on previously
invented items.

The goal of the patent system is to encourage inventors to advance the state of
technology by awarding them special rights to benefit from their inventions.
Books, movies, and works of art cannot be patented, but protection is available
for such items under the law of copyright. Patent law is one branch of the
larger legal field known as intellectual property, which also includes trademark
and copyright law.

Patent law centers round the concept of novelty and inventive step (or lack of
obviousness). The right which they accord is to prevent all others, not just
imitators but even independent devisors of the same idea from using the
invention for the duration of the patent. The special potential of a patent is
accordingly that it may be used to prevent all others from including any form of
invention in their product and services. A patent thus poses serious difficulties
for its competitors. This is why patents are not freely available for all industrial
improvements but only what is judged to qualify as a patentable invention.

What is patentable?

To qualify for a patent, the invention must meet three basic tests. First, it must
be novel, meaning that the invention did not previously exist. Second, the
invention must be non-obvious, which means that the invention must be a
significant improvement to existing technology. Simple changes to previously
known devices do not comprise a patentable invention. Finally, the proposed
invention must be useful. Legal experts commonly interpret this to mean that
no patent will be granted for inventions that can only be used for an illegal or
immoral purpose.

Some types of discoveries are not patentable. No one can obtain a patent on a
law of nature or a scientific principle even if he or she is the first one to
discover it. For example, Isaac Newton could not have obtained a patent on the
laws of gravity, and Albert Einstein could not have patented his formula for
relativity, E=mc2.

WHO Can Apply ?

In India as per the Patent Act of 1970, an application for a patent may be made
by the actual inventor of the invention, or an assignee of the right to make an
application or a legal representative of either. It is the person who first applies
for a patent who is entitled to the grant. A prior inventor of the invention who
applies subsequently will not get the patent as against the first applicant. A
person who has merely communicated the idea to another, who actually gave
practical shape to the idea and developed the invention, cannot claim to be the
first and true inventor. A foreign national resident abroad is not prohibited
from making an application and obtaining a Patent in India.
14. Invention non-patentable

According to the Patent Act (of India), those that fall under the category of
“Inventions” can be patented, as defined in Section 2 (j) of the Act which
involves anything that is novel, capable of industrial application, and is not
frivolous (subject-matters eligible for patentability). However, those that cannot
satisfy such conditions (or restricts the scope of subject matters eligible for
patentability) are non-patentable as mentioned in Section 3 and Section 4 of
the Act.

What Are Inventions?

As defined in Section 2 (j) the term “invention means a new product or

process involving an inventive step and capable of application”. The invention
should be of absolute novelty as neither it has been used nor published in any
part of the world.

Section 3 And 4 Of The Indian Patent Act

Section 3 and Section 4 of the Patent Act is highly debatable and deals with
the list of exclusions that are non-patentable that do not satisfy the above
conditions. Following are not the “inventions” under the meaning of this act:

(a) Inventions that are frivolous and contrary to natural laws.

Inventions which are frivolous or contrary to well established natural laws.

Example– Inventions that are against the natural laws that are any machine
giving 100% efficiency, or any machine giving output without an input cannot be
considered as obvious and cannot be patented.

b) Inventions which go against public morality

Inventions in which the primary or intended use or commercial exploitation of

which could be contrary to public order or morality (that is against the
accepted norms of the society and is punishable as a crime) or which causes
serious prejudice to human, animal or plant life or health or to the
environment.

Example– As in Biotechnology, termination of the germination of a seed by

inserting a gene sequence that could lead to the disappearance of butterflies,
any invention leading to theft or burglary, counterfeiting of currency notes, or
bioterrorism.

(c) Inventions that are a mere discovery of something that already exists
in nature.

The mere discovery of a scientific principle or the formulation of an abstract

theory or discovery of any living or non-living substances occurring in nature.

Explanation– Mere discovery of something that is already existing freely in

nature is a discovery and not an invention and hence cannot be patented unless
it is used in the process of manufacturing an article or substance. For instance,
the mere discovery of a micro-organism is not patentable.

(d) The mere discovery of a form already existing in nature does not lead
to enhancement of efficacy.
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 new property or 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: For the purposes of this clause, salts, esters, ethers,

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 are significantly
different in terms of efficacy.

The mere discovery of any new property or use of a known substance is not
patented unless it is of greater efficiency than the original substance hence, the
mere incremental innovation does not fall under the gamut of patenting.

(e) Mere admixing of mixtures leading in the aggregation of properties are

non- patentable.

A substance obtained by a mere admixing of two or more mixtures resulting

only in the aggregation of the properties of the components thereof or a process
for producing such substance is not considered the invention.

Explanation- mere addition of mixtures is non-patentable unless this satisfies the

requirement of synergistic effect i.e., interaction of two or more substances or
agents to produce a combined effect greater than the separate effect.

(f) Mere aggregation or duplication of devices working in a known way is

not an invention.

The mere aggregation or re-arrangement or duplication of known devices each

functioning independently of one another in a known way.

Explanation- mere improvement on something or combinations of different

matters known before cannot be patentable unless this produces a new result or
article.

(h) Horticulture or agricultural method is non-patentable.

A method related to agriculture or horticulture.

Explanation- a method of producing plants like cultivation of algae and

mushrooms or improving the soil is not an invention and cannot be patentable.

(i) Medicinal, curative, prophylactic, diagnostic, therapeutic for treating

diseases in human and animals are non-patentable.

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.

Explanation– those medicinal methods administering medicines orally or

injecting it, surgical methods like stitch free surgeries, curative methods as
curing plaques etc does not fall under the ambit of the invention and are non-
patentable.

(j) Essential biological processes for the production or propagation of

animals and plants is not an invention.
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) Simple mathematical or business or computer programs are not an

invention.

A mathematical or business method or a computer program per se or

algorithms;

Explanation– any mathematical calculation, any scientific truth or act of mental

skills any activities related to business methods or algorithms (which are like the
law of nature) cannot be patented.

(l) Aesthetic creation is not an invention.

A literary, dramatic, musical or artistic work or any other aesthetic creation

whatsoever including cinematographic works and television productions.

Explanation– such activities like writings, painting, sculpting, choreographing,

cinematographing all these which are related to creativity cannot be patented
and fall under the gamut of Copyright Act, 1957.

(m) Mental act, rule or method is not an invention.

A mere scheme or rule or method of performing mental act or method of

playing a game.

Explanation- playing a game such as chess, sudoku etc are not considered as
inventions rather these are mere brain exercises and hence are not patented.

(n) Presentation of information is non-patentable.

Explanation- a mere presentation of information by tables, chars is not an

invention and hence are not patentable, for example, railway timetables,
calendars etc.

(o) The topography of integrated circuits is non-patentable

Such as semiconductors used in microchips are not patented.

(p) Traditional Knowledge is not an invention.

An invention which in effect, is traditional knowledge or which is an

aggregation or duplication of known properties of the traditionally known
component or components.

Explanation- the traditional knowledge is know-how, skills, that is passed from

generations to generations of a community and is already known cannot be
patented for example the antiseptic properties of turmeric.

(q) Atomic-Energy inventions are non -patentable.

Section 4 deals with inventions relating to atomic energy, that are also not
patentable and that fall within sub-section (1) of section 20 of the Atomic
Energy Act, 1962.
15. Revocation of Patent in India

The grounds for revocation of a patent under Section 64 of the Patents Act
1970 are as under:

a) that the invention, so far as claimed in any claim of the complete

specification, was claimed in a valid claim of earlier priority date contained in
the complete specification of another patent granted in India;

b) that the patent was granted on the application of a person not entitled under
the provisions of this Act to apply therefore:

c) that the patent was obtained wrongfully in contravention of the rights of the
petitioner or any person under or through whom he claims;

d) that the subject of any claim of the complete specification is not an invention
within the meaning of this Act;

e) that the invention so far as claimed in any claim of the complete

specification is not new, having regard to what was publicly known or publicly
used in India before the priority date of the claim or to what was published in
India or elsewhere in any of the documents referred to in section 13;

f) that the invention so far as claimed in any claim of the complete specification
is a. obvious or b. does not involve any inventive step, having regard to what
was publicly known or publicly used in India or what was published in India or
elsewhere before the priority date of the claim;

g) that the invention, so far as claimed in any claim of the complete

specification, is not useful;

h) that the complete specification does not sufficiently and fairly describe the
invention and the method by which it is to be performed, that is to say, that
the description of the method or the instructions for the working of the
invention as contained in the complete specification are not by themselves
sufficient to enable a person in India possessing average skill in, and average
knowledge of, the art to which the invention relates, to work the invention, or
that it does not disclose the best method of performing it which was known to
the applicant for the patent and for which he was entitled to claim protection;

i) that the scope of any claim of the complete specification is not sufficiently
and clearly defined or that any claim of the complete specification is not fairly
based on the matter disclosed in the specification;

j) that the patent was obtained on a false suggestion or representation;

k) that the subject of any claim of the complete specification is not patentable
under this Act;

l) that the invention so far as claimed in any claim of the complete specification
was secretly used in India, otherwise than as mentioned in sub-section (3),
before the priority date of the claim;
m) that the applicant for the patent has failed to disclose to the Controller the
information required by section 8 or has furnished information which in any
material particular was false to his knowledge;

n) that the applicant contravened any direction for secrecy passed under
section 35 or made or caused to be made an application for the grant of a
patent outside India in contravention of section 39;

o) that leave to amend the complete specification under section 57 or section

58 was obtained by fraud;

p) that the complete specification does not disclose or wrongly mentions the
source or geographical origin of biological material used for the invention;

q) that the invention so far as claimed in any claim of the complete

specification was anticipated having regard to the knowledge, oral or otherwise,
available within any local or indigenous community in India or elsewhere.