INTELLECTUAL

PROPERTY
LAWS
 WHAT IS IPR?
 Intellectual Property Rights are the rights given to persons
over the creation of their minds.
The creator/inventor gets exclusive rights against any
misuse or use of work without his/her prior information.
 WIPO (World Intellectual Property Organization) was
established by the WIPO Convention in 1967.
The WIPO is a specialized agency of the United Nations.
It promote the protection of IP throughout the world
 Intellectual Property comprises 2 distinct forms:
1. Literary and Artistic works : they are books, paintings, musical
compositions, plays, movies, computer programs, performances
etc. These are protected by “Copyright”.
2. Industrial Property : describes physical matter that is the product
of an idea or concept for commercial purpose.
These are protected by:
a. Patent
b. Trademark
c. Industrial Designs
d. Trade Secrets
e. Geographical Indications
 MAJOR TYPES OF IPR
1. Patent Act, 1970
2. Copyright Act, 1957
3. Trademark Act, 1999
4. Geographical Indication, 1999
 PATENT
 The word patent originated from the Latin word “Patene”
which means “to open”.
 A patent is an exclusive right granted by a country to the
owner of an invention to make, use, manufacture and
market the invention. Provided, the invention satisfies
certain conditions stipulated in the law.
 The right is available only for limited period of time.
 Covered under Patent Act, 1970.
 NEED FOR PATENT
1. To enjoy exclusive right over the invention;
2. Ensures commercial returns to the inventor for time and
money used in generating a new product;
3. Prevent leaking of invention;
4. Prevent secret exploitation of the invention;
5. Lawfully enforce against the infringers;
6. Patentee can get monetary reward for granting licence to
others.
 PATENT ACT, 1970
 Came into force on 20th April 1972.
 A Patent is a monopoly right to a person who has invented a new and
useful article or it is an improvement of an existing article or a new
process of making an article.
 Act extends to whole India.
 A patent right is territorial in nature and inventors/their assignees will
have to file separate applications in countries of their interest.
 A patent in law is property right and can be gifted, inherited, assigned,
sold or licensed.
 DEFINITIONS
 "Capable Of Industrial Application", in relation to an invention, means that the invention is
capable of being made or used in an industry; S. 2(1)(ac)
 INVENTION: defined under the Act “ An invention means a new product or process involving
an inventive step and capable of industrial application” S.2(1)(j)
 "Inventive Step" means a feature of an invention that involves technical advance as compared
to the existing knowledge or having economic significance or both and that makes the
invention not obvious to a person skilled in the art. S 2(1)(ja)
 "New Invention" means 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; S. 2(1)(l)
 "Patentee" means the person for the time being entered on the register as the grantee or
proprietor of the patent; S 2(1)(p)
 "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. S 2(1)(y)
 HISTORY OF INDIAN PATENT
SYSTEM
 The first legislation in India relating to patents was the Act VI of 1856. The
objective of this legislation was to encourage inventions of new and useful
manufactures and to induce inventors to disclose secret of their inventions.
 The Act was subsequently repealed by Act IX of 1857 since it had been
enacted without the approval of the British Crown .
 Fresh legislation for granting ‘exclusive privileges’ was introduced in 1859
as Act XV of 1859. This legislation contained certain modifications of the
earlier legislation, namely, grant of exclusive privileges to useful inventions
only and extension of priority period from 6 months to 12 months. This Act
excluded importers from the definition of inventor.
 “The Patterns and Designs Protection Act” under Act XIII of 1872, to
provide protection relating to designs.
 The Act of 1872 was further amended in 1883 (XVI of 1883) to introduce
a provision to protect novelty of the invention.
 This Act remained in force for about 30 years without any change but in
the year 1883, certain modifications in the patent law were made in United
Kingdom and it was considered that those modifications should also be
incorporated in the Indian law. In 1888, an Act was introduced to
consolidate and amend the law relating to invention and designs in
conformity with the amendments made in the U.K. law.
 The Indian Patents and Designs Act, 1911, (Act II of 1911) replaced all
the previous Acts. This Act brought patent administration under the
management of Controller of Patents for the first time.
 . In 1930, increase of term of the patent from 14 years to 16 years.
 In 1945, an amendment was made to provide for filing of provisional
specification and submission of complete specification within nine months.
 After Independence, it was felt that the Indian Patents & Designs Act, 1911
was not fulfilling its objective. Accordingly, the Government of India
constituted a committee under the Chairmanship of Justice (Dr.) Bakshi Tek
Chand, a retired Judge of Lahore High Court, in 1949 to review the patent law
in India in order to ensure that the patent system is conducive to the national
interest.
 Based on the recommendation of the Committee, the 1911 Act was amended
in 1950.
 In 1957, the Government of India appointed Justice N. Rajagopala Ayyangar
Committee to examine the question of revision of the Patent Law and advise
government accordingly.
 This report recommended major changes in the law which
formed the basis of the introduction of the Patents Bill,
1965.
 This bill was introduced in the Lok Sabha on 21st
September, 1965, which however lapsed. In 1967, again an
amended bill was introduced which was referred to a Joint
Parliamentary Committee and on the final recommendation
of the Committee, the Patents Act, 1970 was passed. This
Act repealed and replaced the 1911 Act.
 amended in 1999.
 second amendment in 2002, act came into force in 2003.
 third amendment in 2005.
 WHAT CAN BE PATENTED
Invention must:
1. Relates to process or product or both;
2. Be new/novel
3. Involves an Inventive step
4. Be capable of Industrial application
5. Not fall under Sec 3,4.
 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.
 Inventive Step: (Non Obviousness) A patent involves an
inventive step if the proposed invention is not obvious to a person
skilled in the art.
 Industrial Application: Capable of being made or used in
industry.
 WHAT ARE NOT INVENTIONS?
 Sec 3: The following are not inventions within the meaning of this Act,-
(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 of which would be contrary to law
or morality or injurious to public health; (gambling machine)
(c) the mere discovery of a scientific principle or the formulation of an
abstract  theory;
(d) 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;
(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) a method or process of testing applicable during the process of
manufacture for rendering the machine, apparatus or other equipment
more efficient or for the improvement or restoration of the existing
machine, apparatus or other equipment or for the improvement or
control of manufacture;
(h) a method of agriculture or horticulture;
(i) any process for the medicinal, surgical, curative,
prophylactic or other treatment of human beings or any
process for a similar treatment of animals or plants to render
them free of disease or to increase their economic value or that
of their products.

Sec 4. Inventions relating to atomic energy not patentable

RIGHTS OF A PATENTEE S. 48
1. Right to protect from getting exploited
2. Right to Grant Licence
3. Right to Surrender
4. Right to sue for infringement
PERSONS ENTITLED TO APPLY FOR PATENTS

 Sec 6
 by any person claiming to be the true and first investor of
the invention;
 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;
 by the legal representative of any deceased person who
immediately before his death was entitled to make such an
application.
 STAGES FOR FILING PATENT
IN INDIA
Step 1.filing provisional application: A provisional application is a
temporary application which is filed when the invention is not
finalized and is still under experimentation
Step 2. filing the complete specification: Once we filed provisional
application we have 12 months of time to draft complete patent
application giving full details of the invention.
Step 3. publication: Once the complete specification is filed patent
office will publish the application official gazette of Indian patent
office within 18 months from priority date
Step 4. pre grant opposition: After publication invention is available to
public so any person/ party interested can file request to controller and can
oppose the patent by writing application to the controller.
Step 5 examination: Application is examined on request and can be made
either by the applicant or by a third party. Examiner undertakes examination
w.r.t. whether the claimed invention is not prohibited for grant of patent
whether the invention meets the criteria of patentability. After all the points
are checked by examiner he prepares the First Examination Report containing
a list of objections.
Step 6. Response from the Applicant: If objections are met, grant of patent
is approved by the Controller – within a period of 1 month
Step 7. Grant of patent: Under section 43, if the controller is satisfied and
finds the application in order of grant , then he grants the patent application A
certificate of patent is issued within 7 days for a term of 20 years from the
Date of filing the Patent Application
 https://www.youtube.com/watch?v=g4Tbq22NHag
 https://www.youtube.com/watch?v=4bmOBxgYK0k

 PROVISIONAL AND COMPLETE SPECIFICATIONS S.9

 Provisional Specification: It is a document in a prescribed form containing a

description of essential features of the invention. Where an application for a
patent is accompanied by a provisional specification, a complete specification
shall be filed within 12 months from the date of filing of the application, and if
the complete specification is not filed the application shall be deems to be
abandoned.
 The provisional specification normally contains following parts:
Title
Written description
Drawing if necessary
Sample or model, if required
 Complete specification: Document in a prescribed form and shall fully and particularly
describe the invention and its operation or use and the method by which it is to be
performed. Disclose the best method of performing the invention for which protection is
claimed.
 The complete specification has following parts:
Title
Preamble to the invention
Technical field of the invention
Background of the invention
Objects of the invention
Statement of the invention
Brief description of the drawings
Detailed description of the invention
Claims
Abstract
 PATENT INFRINGMENT
 If any person exercises the exclusive rights of the patent holder
without permission within the country of patent grant and during
the patent term.
 The various types of patent infringement occur when a person or
business uses parts of a patented idea, method, or device without
permission.
 Patent infringement is also known as patent violation or even stolen
ideas.
 Patent infringement is also known as patent violation or even stolen
ideas.
TYPES OF PATENT INFRINGEMENT

Infringement

Direct Indirect

Literal Equivalence Induced Contributory

 Direct Infringement: Making, using, selling, trying to sell, or importing
something without obtaining a license from the patent holder is considered
direct patent infringement.
 Literal Infringement: To prove literal infringement, there must be a
direct correspondence between the infringing device or process and the
patented device or process.
 Equivalence Infringement: Exists of the element of a product or
process differing from those of claim elements are present by
equivalence.
e.g.: claim 1 = element A,B,C,D
claim 2= Element AE, BF, CG, DH
Doctrine of Equivalents (DOE): A person is liable for infringement
even though the infringing device or process does not fall within the
literal scope of a patent claim, but nevertheless is equivalent to the
claimed invention.
 Indirect infringement occurs when an individual or business is
infringing on a patent but is not the original company or individual to do
so.
For example, Acme industries designs an anvil that is exactly like your
patented anvil design. Acme sells its anvils to Beta Surplus, who sells them
for distribution. While you can sue Acme for direct infringement, you
might sue Beta Surplus for indirect infringement.
 Induced Infringement: A middle party(induced infringer)
enables(helps, influence or induce) a third party (direct
infringer) to participate the patented invention.
Help could be a form of, assembling the patented product,
preparing instructions for consumer use etc.
 Contributory Infringement: If a party contribute to the
infringement of a patent claim may be held liable.
 DEFENCES
 A person falling within the scope of defence will not be liable
for infringement though his product or process is infringing.
 Experiment, research, education
 Government use
 Patent Exhaustion (Exclusive right exhausted)
 Patent Misuse (Using patent beyond the scope of rights
granted)
 Inequitable conduct (defrauds patent office or provides
false or misleading information)
 REMEDIES FOR PATENT
INFRINGEMENT

1. Injunction
2. Damages
3. Accounts of Profits
4. Costs
COPYRIGHT
ACT, 1957
 COPYRIGHT
 The Copyright Act, 1957 consists of 79 sections under 15 chapters while the
Copyright Rules, 1958 consists of 28 rules under 9 chapters and 2 schedules
 Copyright is one of the key branches of IP laws which protects the
expression of ideas.
 It is an exclusive right of the copyright holder.
 Only original works are entitled for protection under the Act.
 Ideas are not protected by copyright; only the material form of their
expression is protected provided sufficient labour, skill and judgment has
been exercised.
 MEANING OF COPYRIGHT
 According to Section 14 of the Act, “copyright” means the exclusive right subject to the
provisions of this Act, to do or authorize the doing of any of the following acts in respect of a
work or any substantial part thereof, namely:-
(a) in the case of a literary, dramatic or musical work, not being a computer programme, -
(i) to reproduce the work in any material form including the storing of it in any medium by
electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public, or communicate it to the public;
(iv) to make any cinematograph film or sound recording in respect of the work;
(v) to make any translation of the work;
(vi) to make any adaptation of the work;
(vii) to do, in relation to a translation or an adaptation of the work, any of the acts specified in
relation to the work in sub-clauses (i) to (vi);
(b) In the case of a computer programme,-
(i) to do any of the acts specified in clause (a);
(ii) to sell or give on commercial rental or offer for sale or for
commercial rental any copy of the computer programme: Provided
that such commercial rental does not apply in respect of computer
programme where the programme itself is not the essential object of
the rental.
(c) In the case of an artistic work,-
(i) to reproduce 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) to communicate the work to the public;
(iii) to issue copies of the work to the public not being copies already in
circulation;
(iv) to include the work in any cinematograph film;
(v) to make any adaptation of the work;
(vi) to do in relation to an adaptation of the work any of the acts specified in
relation to the work in sub-clauses (i) to (iv);
 (d) In the case of cinematograph film, -
(i) to make a copy of the film, including a photograph of any image
forming part thereof;
(ii) to sell or give on hire, or offer for sale or hire, any copy of the
film, regardless of whether such copy has been sold or given on hire
on earlier occasions;
(iii) to communicate the film to the public;
(e) In the case of sound recording, -
(i) to make any other sound recording embodying it;
(ii) to sell or give on hire, or offer for sale or hire, any copy of
the sound recording regardless of whether such copy has been
sold or given on hire on earlier occasions;
(iii) to communicate the sound recording to the public.
SUBJECT MATTER OF COPYRIGHT
Sec 13:
1. Cinematographic
2. Artistic Works
3. Dramatic Works
4. Musical Works
5. Original Literary
6. Sound Recording
Dramatic work includes any piece for recitation,
choreographic work or entertainment in a dumb show, scenic
arrangement or acting, the form of which is fixed in writing
or otherwise. S 2 (h)
 Musical work includes graphical notation of music; it does
not include any work or action intended to be sung, spoken or
performed with the music. S 2(p)
 Artistic work means a painting, a sculpture, a drawing
(including a diagram, map, chart, plan); an engraving; a
photograph; a work of architecture having an artistic
character or design, including its model; any other work of
craftsmanship. S 2(c)
Cinematograph film means any work of visual recording
on any medium produced India through a process from
which a moving image may be produced by any means and
includes a sound recording accompanying such visual
recording. S 2(f)
 Sound recording means recording of sounds on any
medium, from which the original sound may be
reproduced regardless of the medium of record or of the
method used to reproduce the sounds. S 2(xx)
 Literary work includes computer programme and
computer databases. S 2(o)
 AUTHOR AND OWNERSHIP
Sec 2(d) defines author of the work
Literary and dramatic work- Author of the work
Artistic works - The artist
Musical works - The composer
Photography - The photographer
Cinematography - the producer
Computer program - The programmer
 Sec 17- The author of the work will be the first owner of
the copyright.
 DURATION OF COPYRIGHT

 S 22-29
 Generally copyright lasts for Life + 60 years in India.
 Original literary, dramatic, musical and artistic works : 60-
year from the year following the death of the author. In case of
joint authorship, the date has reference to author who dies last.
 Photographs: 60 years from the beginning of the calendar year
next following the year in which the photograph is published.
 Cinematographic film: 60 year from the post calendar year of the
release of the Film
 RIGHTS OF A COPYRIGHT
HOLDER
1. Right to reproduce
2. Right to communicate to public
3. Right to issue new copies to work
4. Right to have copyright for fixed terms
5. Right to assign
6. Right to seek legal remedy in case of infringement/ right to sue
7. Right to grant license
 PROCEDURE FOR REGISTRATION
 Chapter VI of the Copyright Rules, 1956 sets out the procedure for the registration under the
Copyright Act. The procedure for registration is as follows:
a. Application for registration is to be made on Form IV ( Including Statement of Particulars
and Statement of Further Particulars) as prescribed in the first schedule to the Rules ;
b. Separate applications should be made for registration of each work;
c. Each application should be accompanied by the requisite fee prescribed in the second
schedule to the Rules ; and
d. The applications should be signed by the applicant or the advocate in whose favor a
Vakalatnama or Power of Attorney has been executed. The Power of Attorney signed by the
party and accepted by the advocate should also be enclosed.
 Each and every column of the Statement of Particulars and Statement of Further Particulars
should be replied specifically.
 LICENSING
 S 30-32
 The copyright owner may grant a license and transfer some or all of
his rights to others to exploit his work for monetary benefits.
 license is different from an assignment as licensee gets certain rights
subject to the conditions specified in the license agreement but the
ownership of those rights is not vested with him while in case of an
assignment the assignee becomes the owner of the interest assigned to
him.
 A license may be exclusive or of non-exclusive type.
 A License Agreement generally contains the following particulars:
Identification of the work licensed
Duration of the license
Territorial extent of the license
Amount of royalty payable
Conditions relating to revision, extension and/or termination of license
Any dispute in respect of the license shall be settled by the Copyright Board or by way
of Arbitration.
Allowability of sub-licensing etc.
Voluntary Licensing : The owner of the Copyright in any existing or future work may
grant any interest in the work by way of license. As regards the future works the license
shall take effect only when the works comes into existence. For a license to be valid it
must be in writing and signed by either the owner or his duly authorized agent.
 Compulsory Licensing: Compulsory Licensing can be invoked under certain
circumstances with respect to both published works and unpublished works.
Compulsory licenses can also be obtained for the purposes of production and
publication or translation of the work.
Compulsory licensing on Published Works with respect to the Indian works
published or performed in public, compulsory licenses can be obtained by
making a complaint to the Copyright Board on the ground that the owner has:
Refused to re-publish or allow the republication of the work or has refused to
allow the performance of the work in public and by reason of such refusal the
work is withheld from the public.
Refused to allow the communication of the work to the public by broadcast of
the work or work in the sound recording on such terms, which the complainant
considers reasonable.
Refused to allow the performance of the work in pubic and by reason of such
refusal work is withheld from public
Compulsory licensing on Unpublished Works: Compulsory licenses can also
be obtained with respect to the unpublished works by making an application to
the Copyright board in the following circumstances:
Author is dead
Author is unknown
Author cannot be traced
Author cannot be found
 Cancellation of License: The Copyright Board can cancel the license granted
on any of the following grounds:
The licensee has failed to produce and publish the translation of the work
within the specified period or the extended period.
The license was obtained by fraud or misrepresentation as to any essential fact.
The licensee has contravened any of the terms and conditions of the license.
 ASSIGNMENT
 S 18
 The owner of the copyright in an existing work or the prospective owner of
the copyright in a future work may assign to any person the copyright either
wholly or partially and either generally or subject to limitations and either for
the whole term of the copyright or any part thereof.
 A right to assign work under the Copyright Act1957 arises naturally when the
work comes into existence.
 The Act prescribes that a prospective owner of a copyright in future work may
assign the copyright, to any person, either wholly or partially, although the
assignment shall take effect only when the work comes into existence.
 The requirements for a valid assignment
a. It must be in writing.
b. It should be signed by the Assignor.
c. The copyrighted work must be identified and must specify the rights assigned.
d. It should have the terms regarding revision, royalty and termination.
e. It should specify the amount of royalty payable, if any, to the author or his legal heirs.
f. In the event the Assignee does not exercise the rights assigned to him within a period of
one year, the assignment in respect of such rights is deemed to have lapsed unless
otherwise specified in the Agreement.
g. If the period of assignment is not stated, it is deemed to be five years from the date of
assignment, and if no geographical limits are specified, it shall be presumed to extend
within India.
h. If the territorial extent of assignment of the rights is not specified, it shall be presumed to
extend within the whole of India.
 INFRINGEMENT OF COPYRIGHT

 A copyright is infringed when someone, without the permission of the copyright

holder, does any of the above, which only the copyright holder has the exclusive
right to do.
 A copyright is infringed when someone, without the permission of the copyright
holder, does any of the above, which only the copyright holder has the exclusive
right to do.
 The creator of a work can prohibit anyone from
1. Reproducing the work in any form, such as print, sound, video, etc.,
2. Recording the work in compact disks, cassettes, etc.,
3. Broadcasting it in any form,
4. Translating it into other languages, and
5. Using the work for a public performance, such as a stage drama or musical
performance.
REMEDIES FOR INFRINGEMENT
1. Civil remedy- injunction/damages/recover the possession
of the infringed copies
2. Criminal remedies- Punishments- imprisonment of not
less than 6 months or extended to 3 years or fine shall not
be less than 50000 or may go up to 200000
3. Administrative Remedy- registrar of copyright to ban
the import of infringing copies and deliver confiscated
infringing copies to the owner.
 LIMITATIONS TO COPYRIGHT
1. Idea-expression dichotomy- protects only the original expression
of ideas and not the ideas themselves
2. The fist sale doctrine- Does not restrict owner of a copy from
reselling legitimately obtained copies of copyrighted works
3. Fair use and fair dealing- research, learning, teaching, criticism or
overview, connection with judicial proceedings etc
4. Some government work
TRADEMARK
ACT, 1999
 WHAT IS TRADEMARK
 A trademark is a word, phrase, symbol, or design, or a combination of these that
identifies and distinguishes the source of goods of one party from those of others.
 A trademark or trade mark is a distinctive sign or indicator of some kind which is
used by an individual, business organization or other legal entity to uniquely
identify the source of its products and/or services to consumers, and to distinguish
its products or services from those of other entities
 FUNCTIONS OF TRADEMARK
Trademark performs four functions –
1. It identifies the goods / or services and its origin;
2. It guarantees its unchanged quality;
3. It advertises the goods/services;
4. It creates an image for the goods/ services.
 TRADE MARKS LAW OF
INDIA
The Trade Marks Act, 1999 and the Trade Marks Rules, 2002
govern the law relating to Trade Marks in India.
The Trade Marks Act, 1999 (TMA) protects the trade marks and
their infringement can be challenged by a passing off or/and
infringement action.
The Act protects a trade mark for goods or services, on the basis
of either use or registration or on basis of both elements.
 SALIENT FEATURES OF TRADEMARK ACT 1999
1. Providing for registration of trademarks for services.
2. Providing for an appellate board for speedy disposal of
appeals.
3. Transferring the final authority relating to registration of
certification trade mark to registrar.
4. Providing enhanced punishments for the offenses related to
trademarks.
5. Increasing the period of registration and renewal from 7 years
to 10 years.
 DEFINITION OF TRADEMARK
 According to Section 2(zb) of the Trade Marks Act,1999,
“Trade mark means a mark capable of being represented
graphically and which is capable of distinguishing the goods or
services of one person from those of others and may include
shape of goods, their packaging and combination of colors.”
A mark can include a device, brand, heading, label, ticket, name,
signature, word, letter, numeral, shape of goods, packaging or
combination of colors or any such combinations
 TRADEMARK CLASSIFICATION IN INDIA
 Trademark in India is classified in about 45 different classes,
which includes chemical substances used in industry, paints,
lubricants machine and machine tools, medical and surgical
instruments, stationary, lather, household, furniture, textiles,
games, beverages preparatory material, building material,
sanitary material, and hand tools, other scientific and
educational products.
These classes again are further sub-divided.
The main objective of trademark classification is to group
together the similar nature of goods and services.
 TYPES OF TRADEMARK
 Service mark: Where a trademark is used in connection with services, it may be called “service
mark”. Service marks are used by hotels Service marks are used by hotels, restaurants, airlines,
tourist agencies,
 Collective mark: A Trade mark distinguishing the goods or services of members of an
association of persons not being partnership firm from those of others”
The proprietor of the mark is the association. The goods and services of a company or group of
companies like GODREJ or HINDUSTAN UNILEVER LTD. may be the subject matter of
collective Trade mark.
 Certification Mark : Its function is to indicate that the proprietor of the mark has certified the
goods bearing the mark as to certain characteristics of the goods.
E.g. ISI, AGMARK etc.
SIGNS WHICH MAY SERVE AS A TRADEMARK
Words:
 This category includes company names, surnames, forenames, geographical names and any
other words or sets of words, whether invented or not, and slogans.
Letters and Numerals
Devices:
 This category includes fancy devices, drawings and symbols and also two-dimensional
representations of goods or containers.
Coloured Marks
Sound Marks
Packaging Trademark
Shape of goods
 ESSENTIAL FEATURES
 It should be distinctive
 TM should preferably be an invented word. E.g.: ZEN
 It should be easy to pronounce and remember if it is word mark.
 In case of a device mark -should be capable of being described by a
single word.
 It was be easy to spell correctly and write legibly.
 It should not be descriptive.
 It should be short.
 It should not belong to the class of marks prohibited for registration.
 It should satisfy the requirements of registration.
 ADVANTAGES OF TRADEMARK REGISTRATION

1. Protects your hard earned goodwill in the business

2. Protects your Name / Brand Name from being used in a same or similar fashion,
by any other business firm, thus discourages others from cashing on your well
built goodwill
3. Gives your products a status of Branded Goods.
4. Gives an impression to your customers that the company is selling some
standard Products or Services
5. 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.
6. To obtain relief in respect of infringement (misuse by others) of the trade mark.
7. Power to assign (transfer) the trade mark to others for consideration.
 GROUNDS FOR REFUSAL OF
TRADEMARK
Section 9 of the Trademark Act, 1999 enumerates Absolute
grounds on which a trademark registration can be absolutely
refused. The Act provides that following marks can be refused:
1. Marks that are devoid of any distinctive character;
2. Marks which serve to designate kind, quality, intended
purpose, values, geographical origin or the time of
production of goods;
3. Marks which have become customary in the current
language or in the established practices of trade
 Section 11 provides that a mark shall not be registered:
1. If the mark causes likelihood of confusion on part of the
public i.e. likelihood of association with the earlier trademark;
2. If the mark is identical to a well-known trademark in India and
use of the later mark may be detrimental to the distinctive
character of the well-known trademark;
3. If the mark’s use in India is liable to be prevented by law of
passing off or copyright law
 PROCEDURE/STEPS FOR TRADEMARK REGISTRATION

 Trade mark search: A Trademark search is the first step in

determining the uniqueness of your mark, and its similarity to other,
pre-existing marks. Without a search there may be a greater risk of
being sued for Trademark infringement, the rejection of your Trademark
application, and a third-party challenging your Trademark application.
 Application for Registration: Applications for registration of a
trademark are to be filed with the competent government authority,
which in most countries is the same as the authority competent for
processing patent applications. Usually, it is called “Patent and
Trademark Office” or “Trademark Office.”
 Acceptance of application or refusal to accept : an
application for registration of a trademark is accepted only if the
formal requirements are fulfilled. Before issuing a total or
partial refusal of the application, the office should give the
applicant an opportunity to make corrections.
 Advertisement of application: When an application is
absolutely accepted or subject to some conditions, the registrar
should advertise the application.
 Opposition to registration : With in three months from date of
advertisement with prescribed fee in prescribed manner.
 Registration : Final step in the Trademark registration procedure is the
issuance of Trademark registration certificate. After the application for
Registration of Trademark is accepted by the Registrar, the Registrar
shall issue to the applicant a Certificate of Registration under the seal of
the Trademark Registry.
 Time Duration: If there is no objection and /or opposition raised, the
process of Registration of Trademark usually takes 15 to 18 months
A trademark is designated by the following symbols:
 ™(for an unregistered trade mark)
 ℠ (for an unregistered service mark)
 ® (for a registered trademark)
 REGISTRAR
 Appointment of Registrar and other officers
(1) The Central Government may, by notification in the
Official Gazette, appoint a person to be known as the
Controller-General of Patents, Designs and Trade Marks, who
shall be the Registrar of Trade Marks for the purposes of this
Act.
(2) The Central Government may appoint such other officers
with such designations fit for the purpose of discharging
functions, under the superintendence and direction of the
Registrar
 TRADEMARK INFRINGEMENT

 Under the Trademarks Act 1999 a person infringes a registered

trademark if the person “uses as a trademark” a sign which is:-
“substantially identical” with or “deceptively similar” to the registered
trademark on goods or services covered by the trademark registration;
 substantially identical with or deceptively similar to the registered
trademark on goods or services of the same description as, or closely
related to, the goods or services of the registration, where such use is
likely to deceive or to cause confusion;
 Which may be detrimental to proprietor
 REMEDIES
 The period of limitation for filing the suit for infringement is three years from the date of infringement.
 The relief and remedy in infringement proceedings include:-

1. Civil Remedy
 Injunction
 Restraining the future use of the mark;
 Damages or on account of profits;
 Order for delivery of the infringing labels and marks for destruction;
 Seizure and confiscation of the infringing goods by the police department;
 Arrest of the infringers;
 Fines and penalties.

2. Criminal Remedy
Any person who uses a particular trademark without permission of the proprietor and makes that trademark
deceptively similar shall be deemed to falsify a trade mark under section 102 of Trade Mark Act, 1999. Penalty for
the same is given under Section 103 of the same act.
Sec 103: punishable with imprisonment for a term which shall not be less than 6 months but which may extend to 3
years and with fine which shall not be less than Rs50,000 but which may extend to Rs2,00,000.
 PASSING OFF
Passing off is similar to trade mark infringement, but applies to protect
unregistered rights associated with a particular business, its goods or
services.
 The law of passing off prevents one person from misrepresenting his
goods or services as that of another.
 The key difference is that trade mark infringement deals with
registered rights, and passing off with unregistered rights.
 Passing off protects traders’ goodwill in relation to their goods and
services.
 The three fundamental elements of passing off are Reputation,
Misrepresentation and Damage to goodwill.
 In the case Erven Warnink Vs. Townend, Lord Diplock gave the
essential modern characteristics of a passing off action. They are as
follows: -

1. Misrepresentation
2. Made by a person in the course of trade
3. To prospective customers of his or ultimate consumers of goods or
services supplied by him.
4. Which is calculated to injure the business or goodwill of another
trader.
5. Which causes actual damage to a business or goodwill of the trader by
whom the action is brought.
 CASES
 Honda Motors Co. Ltd V Charanjit Singh & Others

Facts: Plaintiff was using trademark "HONDA" in respect of automobiles and

power equipment's. Defendants started using the mark "HONDA" for its pressure
cookers. Plaintiff bought an action against the defendants for passing of the
business of the plaintiff.
Held: It was held that the use of the mark "Honda" by the defendants couldn't be
said to be an honest adoption. Its usage by the defendant is likely to cause
confusion in the minds of the public. The application of the plaintiff was allowed.
 British Diabetic Association V Diabetic Society
both the parties were charitable societies. Their names were deceptively similar. The
words 'Association' and 'Society' were too close since they were similar in derivation
and meaning and were not wholly dissimilar in form. Permanent injunction granted.
 Rupa & Co. Ltd v. Dawn Mills Co. Ltd.
In this case the defendant manufacture an underwear which named dawn as similar to the
plaintiff’s manufactured underwear don, which is creating confusion in the minds of people
because the layout, get up and color combination is same to the plaintiff’s product.
 Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories
 held that in an action for infringement the onus would be on the Plaintiff to establish that the
trade mark used by the defendant in the course of trade in the goods in respect of which his
mark is registered, is deceptively similar.
 Yahoo!, Inc. v Akash Arora & Anr [1999 (19) PTC 201 (Del)]
the Delhi High Court held that a domain name served the same function as a trademark and was
therefore entitled to equal protection. As the domain names of the plaintiff ‘Yahoo!’ and
defendant ‘Yahoo India!’, were nearly identical and phonetically similar, there was every
possibility that internet users would be confused and deceived into believing that the domain
names had a common source or a connection. The court further observed that the disclaimer used
by the defendants was not sufficient because the nature of the Internet is such that use of a similar
domain name cannot be rectified by a disclaimer, and that it did not matter that ‘yahoo’ is a
dictionary word. The name had acquired uniqueness and distinctiveness and was associated with
the plaintiff.
 APPELLATE BOARD

 Chapter 11, Sec 83-100

S 83. Establishment of Appellate Board.-
 The Central Government shall, by notification in the Official Gazette,
establish an Appellate Board to be known as the Intellectual Property
Appellate Board to exercise the jurisdiction, powers and authority
conferred on it by under this Act.
S 84. Composition of Appellate Board:
1) The Appellate Board shall consist of a Chairman, Vice –Chairman and such number of
other Members, as the Central Government may, deem fit and , subject to the other
provision of this Act, the jurisdiction, powers and authority of the Appellate Board may be
exercised by Benches thereof.
2) Subject to the other provision of this Act, a bench shall consist of one Judicial Member and
one Technical Member and shall sit at such place as the Central Government may, by
notification in the Official Gazette, specify.
3) Notwithstanding anything contained in sub-section (2), the Chairman

a) may, in addition to discharging the functions of the Judicial Member or Technical Member of
the Bench to which he is appointed, discharge the functions of the Judicial Member or, as the
case may be, the Technical Member, of any other Bench.

b) may transfer a Member from one Bench to another Bench

c) may authorize the Vice –Chairman, the Judicial Member or the Technical Member appointed
to one Bench to discharge also the functions of the Judicial Member or the Technical Member,
4) Where any Benches are constituted, the Central Government may,
from time to time, by notification, make provisions as to the
distribution of the business of the Appellate Board amongst the
Benches and specify the matters which may be dealt with by each
Bench.
5) If any question arises as to whether any matter falls within the
purview of the business allocated to a Bench, the decision of the
Chairman shall be final.
6) If the Members of a Bench differ in opinion on any point, they shall
state the point or points on which they differ, and make a reference to the
Chairman who shall either hear the points himself or refer the case for
hearing on such point or points by one or more of the other Member and
such point or points shall be decided according to the opinion of the
majority of the Members who have heard the case, including those who
first heard it.
S 85. Qualifications for appointments as Chairman, Vice-Chairman, or other Member:-

1) A person shall not be qualified for appointment as the Chairman unless he –

(a) is, or has been, a Judge of a High Court, or
(b) has, for at least two years, held the office of a Vice-Chairman.
2) A person shall not be qualified for appointment as the Vice-Chairman, unless he-
(c) has, for at least two years, held the office of a Judicial Member or a Technical Member, or
(d) has been a member of the Indian Legal Services and has held a post in Grade 1 of that Service or
any higher post for at least five years.
3) A person shall be qualified for appointment as a Judicial Member, unless he –
(e) has been a member of the Indian Legal Service and has held the post in Grade 1 of that Service
for at least three years, of
(f) has, for at least ten years, held a civil judicial office.
4) A person shall not be qualified for appointment as a Technical Member, unless he
for at least ten years, been an advocate of a proven specialized experience in Trade Mark Law.
S 86. Term of office of Chairman, Vice-Chairman and other Members.
The Chairman, Vice-Chairman or other Members shall hold offices as such for a term of five
years from the date on which he enters upon his office or until he attains,-
(a) in the case of Chairman and Vice-Chairman, the age of sixty-five years, and
(b) in the case of a member, the age of sixty-two years, whichever, is earlier.

S 87. Vice-Chairman or senior-most Member to act as Chairman or discharge his functions

in certain circumstances.-
(1) In the event or of any vacancy in the office of the Chairman by reasons of his death,
resignation or otherwise, the Vice-Chairman and in his absence the senior most Member shall
act as Chairman until the date on which a new Chairman, appointed in accordance with the
provisions of this Act to fill such vacancy, enters upon his office.
(2) (2) When the Chairman is unable to discharge has functions owing to his absence, illness or
any other cause, the Vice-Chairman and in his absence the senior-most Member shall
discharge the functions of the Chairman until the date on which the Chairman resumes his
duty.
S 89. Resignation and removal
1) The Chairman, Vice-Chairman or any other Member may, by notice in
writing under his hand addressed to the President of India, resign his
office.
2) The Chairman, Vice-Chairman or any other Member shall not be
removed from his office except by an order made by the President of
India on the ground of proved misbehavior or incapacity after an inquiry
made by a Judge of the Supreme Court in which the Chairman or other
Member had been informed of the charges against him and given a
reasonable opportunity of being heard is respect of those charges.
3) The Central Government may, by rules, regulate the produce for the
investigation of misbehavior or incapacity of the Chairman or other
Member referred to in sub-section (2).
S 91. Appeals to Appellate Board
(1) Any person aggrieved by an order or decision of the Registrar under
this Act, or the rules made thereunder may prefer an appeal to the
Appellate Board within three months from the date on which the order
or decision sought to be appealed against is communicated to such
person preferring the appeal.
(2) No appeal shall be admitted if it is preferred after the expiry of the
period specified under sub-section (1).
(3) An appeal to the Appellate Board shall be in the prescribed form and
shall be verified in the prescribed form and shall be verified in the
prescribed manner and shall be accompanied by a copy of the order or
decision appealed against and by such fees as may be prescribed.
S 92. Procedure and powers of Appellate Board
(1) The Appellate Board shall not be bound by the procedure laid down in the Code
of Civil Procedure., 1908 (5 of 1908) but shall be guided by principles of natural
justice and subject to such provisions of this Act and the rules made thereunder,
the Appellate Board shall have powers to regulates its own procedure including
the fixing of places and times of its hearing
(2) The Appellate Board shall have, for the purpose of discharging its functions
under this Act, the same powers as are vested in a civil court under the Code of
Civil Procedure, 1908 (5 of 1908) while trying a suit in respect of the following
matters, namely:-
(a) receiving evidence
(b) issuing commissions for examinations of witnesses
(c) requisitioning any public record, and
(d) any other matter which may be prescribed.
 R.G. Anand v. Delux Films
 The Plaintiff wrote a script for a play of the name “Hum Hindustani” in 1953 and it was enacted
in New Delhi theatres in that year. The play was based on the concept of Provincialism, and was
well received so P started considering the possibility of filming it. The Defendant approached P
in 1954 after an eminent scriptwriter told him about the play when D was considering making a
movie on the topic of Provincialism. On hearing the script D told P that he would inform P of
his decision upon return to Mumbai. In 1955 D announced the production of a movie called
“New Delhi”, after watching the movie, one of the artists in the play told P that it was similar to
the play. P wrote to D about his concerns that the movie was a copy of the play, and D told P that
the movie was on the topic of Provincialism but it was not based on the play as the play in itself
wasn’t enough for a movie and the characters and story treatment, etc. was very different from
the play. P read newspaper comments about the movie and then later watched the movie himself
and felt that the movie was entirely based on the play. He found that the movie had one
character with the same name as in his play. P therefore filed a suit of the infringement of his
copyrights.
 Holding:
1. The Supreme Court held that the movie although based on the same concept, wasn’t a copy of
the play. Therefore, there was no copyright infringement by D.
2. The court also held that the name “Subramaniam” which appeared in both the movie and the
Cadbury case
• Cadbury’s three trademarks - Chocolate Éclairs, Orange flavored chocolate éclairs and
Chocolate
• Eclairs pop. ITC’s Candyman Eclairs. Battle began in 2005 in Ahmedabad high court.
• Intellectual Property Appellate Board (IPAB) asked Cadbury to prove the usage and provide
evidence for these trademark.
• Section 47 of the Trademarks Act, 1999, provides for removal by IPAB of a trademark on the
ground of non-use, or if there has been no proof of use for a period of five continuous years
from the date of application for registration of the trademark.
• ITC won the case