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IPR Notes Full PDF
IPR Notes Full PDF
2.1 Introduction:
The concept of Intellectual Property Right has emerged as a result
of the concept of globalization, privatization and liberalization that has
necessitated the protection of rights of production, design, trademarks etc.
In fact, this is not a new concept. Trademarks and copyrights were
protected from a sufficiently long time. For example, the concept of
protection of copyright of written material is not new. Published books
were copyrighted since long. Trademarks and names have also been
protected. The concept of ‘registered trademark’ is not new. Even the
names of companies, institutions, and news papers are not allowed to be
repeated i.e. one cannot copy the name of a company or even for a
product. The same concept has now been extended on international scale
as a result of the concept of globalization.
India adopted the New Economic Policy in 1991. The GATT was
updated (GATT 1994) to include new obligations upon its signatories.
One of the most significant changes was the creation of the World Trade
Organisation (WTO). The existing 72 GATT members and the European
Communities became the founding members of the WTO on 1st founding
of the WTO, 21 new non-GATT members have joined and 29 are
currently negotiating membership. There are a total of 153 member
countries in the WTO.
The GATT was a convention, treaty and agreement between the
member States. It was a process for the formation of WTO, which is an
institutional body. The GATT was a concept and dream of the UNO. It
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was realised by way of the GATT. However, after several Rounds, the
doubts were cleared, and now there is a membership of 153 countries in
the WTO. The GATT was only in the preparation stage. The WTO is now
functioning very well and has become an agency of the UNO.
The WTO expanded its scope from traded goods to trade within the
service sector and intellectual property rights. Although it was designed
to serve multilateral agreements, during several Rounds of the GATT
negotiations (particularly the Tokyo Round) multilateral agreements
created selective trading and caused fragmentation among members. The
WTO arrangements are generally a multilateral agreement settlement
mechanism of the GATT. The GATT had a temporary nature, whereas
the WTO is permanent.
This third chapter presents an overall review of the concept of
protection of traditional Indian knowledge from intellectual property
rights. The chapter reviews the development of the concept in its
historical form. The chapter also analyses the concept as it is developed
after GATT.
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1. Natural Law Theory:
This theory was supported by Grotius, Pufendorf, Locke and
Blackstone. According to their opinion the property is derived from
nature and it is divided by men in the society by an agreement.
Locke says: “Every man has a property in his own person, who has
right to preserve his property, the is, his life, liberty and estate.”
2. Metaphysical Theory:
This theory was propounded by Kant and Hegal. Kant defines:
“The essential elements of legal transaction of original acquisition are
three, viz.
(i) ‘apprehension’ of an object that belongs to none;
(ii) an act of the free will interdicting all others from using it as their;
and
(iii) appropriation a permanent acquisition.”
3. Positive Theory:
Spencer: He opined that the property is the result of individual
labour. No man has a moral right to property which he has not acquired
by his personal labour. This theory is nearer to Karl Marx’s Marxism.
4. Historical Theory:
Bentham: He says: “Property is nothing more than the basis of a
certain expectation of deriving hereafter certain advantage by a thing the
reason of that relation in which we stand towards it. There is no image, no
visible lineament which can property that relation that constitutes
property. It belongs not to physics, but to metaphysics. It is altogether a
conception of mind. To it all or any of these physical circumstances failed
to assist in conveying the idea of property.”
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5. Psychological Theory:
Benetham: He says: “Property is nothing more than the basis of a
certain expectation of deriving hereafter certain advantage by a thing by
reason of the relation in which we stand towards it. There is no image, no
visible lineament which can property the relation that constitutes
property. It belongs not to physics, but to metaphysics.
It is altogether a conception of mind. To hold the object in one’s
hand, to keep it, to manufacture it, to work it up into something else, to
make use of it all or any of these physical circumstances failed to assists
in conveying the idea of property.
6. Sociological Theory:
This theory was propounded by Duguit, Laski, Karl Marx. Laski
says, “Property is a social fact like any other and it is the character of
social facts to alter: It has assumed the most varied aspects and it is
capable of yet further changes.”
Karl Marx: “The capitalist is not capitalist because the directs but
he becomes an industrial commander, because he is a capitalist, Industrial
command becomes an attribute of capital, as under feudalism the power
of command was, in war and law, an attribute of ownership of land.”
Kinds of Property
Salmond simplified the division of property in the following table -
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Property
Corporeal Property
It is also known as tangible property. It is seen to the people, i.e.
land and chattels. They are material things. It has been recognised from
the initial stage of human civilization. Corporeal property again can be
divided into two kinds:
1. Moveable: E.g. Chattels
2. Immoveable: E.G. Land, Buildings
Incorporal Property:
Incorporal property is intangible property. It is also known as the
“Intellectual or Conventional Property.” It is a recent development in the
world. The right in incorporeal property is right in rem (rem = entire
world). Incorporeal property is of two kinds -
1. Immaterial things e.g. Patents, Copyrights, Trademarks etc.
2. Jura in re aliena (Right over other property) e.g. Leases,
Servitudes, Securities etc.
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deals with land, chattels, patents, copy rights, trade marks, etc. Jura in re
propria is divided into two classes:
1. Material Things:
Land, Chattels, goods etc. The transfer of Propert Act 1882 deals
with land and buildings. The Sale of Goods Act, 1930 deals with Chattels
and goods. Indian Contract Act coordinates all the necessary Acts and
provisions of them. The transfer of material things in an age old practice.
It is corporeal property.
2. Immaterial Things:
They are incorporeal properties. They are produced by human skill
and labour. The book written by an author is recognised as a property of
his own. Examples of these things/ rights are patents, copyrights,
trademarks, etc. The recognotion of these rights is a new trend and a new
idea. To protect these rights Patents Act, Copyrights Act, Trademarks
Act, etc. have been enacted in every country, including India.
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2.3 The Concept of Intellectual Property Right
Intellectual property can be defined as a conceptual or virtual
product produced from the intellectual capacities of a certain person. For
example an author writes a book. It is his intellectual property. A Painter
paints a picture, it is his intellectual property. An Engineer creates a
design, it is his intellectual property. Thus, a book, a picture, a song, a
music note, a design, a product etc. which is the creation of one’s mind
and intellect is an intellectual property. Intellectual property created in
this way may prove useful for others. For example, a design created by
someone can be used for production of goods or a trademark created by a
company has a goodwill in the market. Thus it has an economic value.
This economic value must be protected. Hence the concept of protection
of intellectual property right has been brought in the purview of law.
At the outset it would not be out of place to explain some basic
concepts or terms related with intellectual property. This is a brief
introduction to various types of intellectual property.
History of IRPs
The term “Property” is synonymous with the right of ownership.
Ownership and property are inter-dependent. In its widest sense, property
includes all a person’s legal rights, of whatever description. A man’s
property is all that is his in law. The terms ‘Intellectual Property’ began to
be used since the nineteenth century. Before it, a few British statutes like
the British Statute of Anne, 1710, the Statute of Monopolies, 1623 are
now seen as the origin of copyright and patent law respectively. In 1867,
the North German Congederation’s Constitution granted legislative
power over the protection of intellectual property (Schutz des geistigen
Eigentums) to the confederation. The administrative Secretariat was
established by the Paris Convention in 1983. Later it was merged in the
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Berne Convention in 1893 in Berne with the new title the United
International Bureaux for the Protection of Intellectual Property. The
Organisation subsequently relocated to Geneva in 1960, and was
succeeded in establishing the World Intellectual Property Organisation
(WIPO) by treaty as an agency of the United Nations in 1967.
England is the birth place of all these rights. These rights came into
existence by two important sources: (1) Statutes; and (2) Common Law.
The same trend has been spread throughout the world, including India.
There are Acts enacted on the Copyrights; the Rights in Performance; the
Patents; the Designs and the Trade Marks. The Law of Confidence,
Passing Off, Trade Libel, etc. are covered under the common law and
also in other statutes.1
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Intellectual property means ‘a property created by human brain’. It
is not similar to that of a land or house. The subject-matter of intellectual
property is very wide and includes literary and artistic works, films,
computer programs, inventions, designs, trademarks, etc. Lands, houses,
etc. immovable properties and vehicles, watches, etc. immovable
properties can be sold, mortgaged, leased, etc. from one person to
another. In the similar way, the intellectual property also can be sold,
mortgaged, leased, assigned, etc. from one person to another person.
Intellectual property first were known collectively as ‘industrial
property’. The Paris Convention for the Protection of Industrial Property,
1883 used the term ‘industrial property’ instead of ‘intellectual property’.
After the Paris Convention, other rights, such as Copyright, Rights in
Performance, etc. were also included in industrial property. Gradually in
place of ‘industrial property’ ‘intellectual property’ was permanently
coined.
Intellectual property law concerns the legal rights associated with
creative effort or commercial reputation and goodwill. Intellectual
property creates rights and duties. If A-an author writes a book-X, A
exercises all rights over it. These rights are rights in rem. There is a duty
upon every person not to copy it and not to take unfair advantage of the
work-X or reputation of A. The intellectual property law explains all
these rights and duties.
The important reason for the development of intellectual property
law is that a person who Creates a work or has a good ideal which he
develops has a right, based partly on morality and partly on the concept of
reward to control the use and exploitation of it, and he should be able to
prevent others from taking unfair advantage of his efforts. When one
person is struggling to create a new thing, why should others be able to
save themselves all the time and effort required to create or invent the
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thing concerned? That is why the remedies must be provided to the
inventor to protect his ideas and infringement from others. This is done
by the intellectual property law.
Infringement of other’s rights, making counterfeiting is equal to
theft of goods. The intellectual property law protects the intellectual
property owner from the infringement and counterfeiting.
Intellectual property is an umbrella term covering patents,
trademarks and copyrights. Intellectual property rights are specific
abilities, granted by law to right holders, for the control of intellectual
property. An intellectual property right is the legal right to property
owned by a content creator and often protected through the use of a
trademark or copyright. This content is the creator’s intellectual property.
The intellectual property rights can be put into force -
(a) In the case of assignment and transfer, and
(b) In the case of an infringement.
At the same time, the intellectual property is in existence as it was.
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2. Knowledge:
The source of intellectual property itself is the basis of knowledge.
It spreads from the creator to the entire world. Xerox invented xerox
process. Very soon, it spread entire globe, all of us are experiencing the
advantage of it. TVs., information technology, mobiles, internet-banking,
etc. increase the knowledge of the world people. Every field of human
life is affected by the science and technology particularly from the
beginning of nineteenth century
3. Social Changes:
The intellectual properties change the social life. It brings the
modern techniques into the common man life.
Cell Phone: Dr Martin Cooper, a former general manager for the
systems division at Motorola, is considered the inventor of the first
portable handset and the first person to make a call on a portable cell
phone in April 1973. Later revolutionary changes have been in the cell
phones in their shape, cost, attractive features. Now on our planet with
around 6.8 billion (680 crore) people, the number of cell phone
subscriptions has reached to 5 billion (500 crore) at the end of 2010. The
spread of Cellphones has changed the world into a global village. This
has changed the social life, of entire world. To-day the Indian people
have 55 crore cellphones. Daily labour, rickshaw pullers, and even
beggars, are having cellphones in their hands.
For example; T.V., Cell Phone, Computer, etc., have changed the
life-style of entire world. Investment is stimulated. It accrues abundant
profits. Intellectual property renders most abundant facilities to the
human beings in every walk of life. Entertainment: Cinemas, videos,
computers, internet; TV’s., taperecorders, C.Ds., Pen Drives, novels,
dramas, etc. provide entertainment to the people. Intellectual property
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increases the health. In the beginning of the 20th century, the average
death age was 34 years in India and 50 years in western countries. At the
end of the 20th century, average death age is 54 years in India and 75
years in western countries. This is achieved due to the new inventions and
techniques in the world, which have been adopted in medical field. The
living standard is also increased due to the intellectual property. Every
intellectual property is a private property. It is agreed by TRIP
Agreement.
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9. Cyber Law
10.Broad Casting (Neighbouring Rights) etc.
There are many similarities in between these forms of properties
and at the same time, there are also differences. Some rights give
monopoly to the creator, and some merely prevent the unfair use by
others. The period of rights vested in such properties also varies from one
form to another. Some require registration and some do not.
Copyright
This is a type of intellectual property which is related with written
material. Even a poem, a picture or a musical note can have a copyright.
The copyright prohibits others from copying or publishing the written
material, picture or music and thereby the creator is entitled to the income
derived from such a literary product.
Protects creative works that are musical, literary, artistic works,
lectures, plays, art reproductions, models, photographs, computer
software, etc. The rights under this also have a specified duration of
protection. The term of a work, [other than a photographic work or a
work of applied art] is calculated on a basis other than the life of a natural
person.2
Such a term shall be a term not less than 50 years from the end of
the calendar year of the authorized publication or failing such authorized
publication within 50 years from the making of the work [50 years from
the calendar year of making].
For example, the term of protection available to performers is at
least 50 years computed from the end of the calendar year when the
performance took place.
2
Government of India (2008), The Copy Right Act - 1957, Law Publishing House, Lucknow.
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The law relating to copyrights is provided by The Copyright Act]
1957 (Act No. 14 of 1957). The Indian Copyright Act, 1914 (Act No. 3 of
1914) was enacted by the British Parliament for India. It was the first
modern copyright legislation in India. The Indian Copyright Act, 1914
was solely based on the English Copyright Act, 1911. The framers of the
Indian Copyright Act, 1914 had framed that Act by taking word to word
from the English Act.
After independence, India participated in the Berne Convention for
the protection of literary and artistic works and the Universal Copyright
Convention, 1952. Taking the inspiration and spirit from these two
Conventions, India enacted a new Act “The Copyright Act, 1957”
repealing the Copyright Act, 1911. Great changes were brought in the
Copyright Act, 1957 according to the two Conventions.
Registration Copyright
The rules and procedure of registration of Copyright are given in
Section 44 to 50 of The Copyright Act 1957. Chapter-X of the Copyright
Act, 1957 explains the legal provisions about “Registration Copyright”.
This Chapter contains Sections 44 to 50 and 50-A.
Objectives of Registration
Under the Copyright Act, 1957 registration of copyright is only
optional. The Registration not compulsory. ‘Registration of a copyright
performs as a conclusive proof of such artistic work. It provides prime
facie proof for the work or performance done by the author.
Registration is not a condition precedent to file any action against
infringement of copyright.
A writes a book-X, but does not register it. B copies it. A can file
suit against B for infringement of his copyright, and can recover damages
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from B. This decision was given in Nav Sanity a Trakashan vs. Anand
Kumar (AIR 1981 All 2000)
While disposing Kaviraj Laxman Misra vs. Sadhu Charan Mathani
(1976 OJD 42), the Court held that registration of copyright is only
optional, and non-registration does not deprive the author to file civil and
criminal proceedings against the infringer.
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application has been made under that Act for such registration by any
person other than the applicant.
2) On receipt of an application in respect of any work under sub-
section (1), the Registrar of Copyright! May, after holding such inquiry as
he may deem fit, enter the particulars of the work in the Register of
Copyrights.
Index: There shall be also kept at the Copyright Office such indexes of
the Register of Copyrights, as may be prescribed. [Sec. 46]
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Correction of entries in the Register of Copyrights: Section 49 says
that the Registrar of Copyrights may in the prescribed cases and subject
to the prescribed conditions amend or alter the Register of copyrights
by—
a) Correcting any error in any name, address or particulars; or
b) Correcting any other error which may have arisen therein by
accidental slip or omission.
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Rule15, Form of Register of Copyrights:
(1) The Register of Copyrights shall be kept in six parts follows -
Part I Literary works other than computer programmes,
tables and compilations including computer data bases
and Dramatic Works.
Part II Musical Works.
Part III Artistic Works.
Part IV Cinematograph Films.
Part V Sound Recordings.
Part VI Computer Programmes, tables and compilations
including computer data bases.
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him, he shall, if satisfied about the correctness of the particulars
given in the application, enter such particulars in the Register of
Copyrights.
(5) If the Registrar of Copyrights receives gny objections for such
registration within the time specified in sub-rule (4), or if he is not
satisfied about the correctness of the particulars given in the
application, he may, after holding such inquiry as he deems fit,
enter such particulars of the work in the Register of Copyrights as
he considers proper.
(6) The Register of Copyrights shall, as soon as may be, send,
wherever practicable, a copy of the entries made in the Register of
Copyrights to the parties concerned.
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upto the middle of the eighteenth century, the Great Britain was
importing the textiles, ornaments, etc. from India. At that time, the Indian
mark goods were very popular in entire Europe. In the Roman times, it
was common for pottery to be embossed or impressed with a mark, for
example a representation of a dolphin or the maker’s initials, as a visit to
the British Museum will testify. The merchant’s marks were used in
commerce in Britain since the thirteenth century.
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encourage investment flows and transfer of technology and the need to
simplify and harmonize trade mark management systems, the Indian
Parliament considered it necessary to bring out a comprehensive statute in
place of The Indian Trade and Merchandise Marks Act, 1958.
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c) Amplification of factors to be considered for defining a well-
known mark;
d) Doing away with the system of maintaining registration of trade
marks in Part A and Part B with different legal rights, and to
provide only a single register with simplified procedure for
registration and with equal rights;
e) Simplifying the procedure for registered user and enlarging the
scope of permitted use.
f) Providing for registration of “Collective Marks” owned by
associations etc.
g) Providing an Appellate Board for speedy disposal of appeals and
rectification applications which at present lie before High Courts.
h) Transferring the final authority relating to registration of
certification trade marks to the Registrar instead of the Central
Government.
i) Providing enhanced punishment for the offences relating to trade
marks on par with the present Copyright Act 1957, to prevent the
sale of superior goods.
j) Prohibiting use of someone else’s trademarks as part of corporate
names, or name of business concern,
k) Extension of application of convention country to include countries
which are members of Group or union of countries and Inter-
Governmental Organisations.
l) Incorporating other provisions, like amending the definition of
“trademarks”, provisions for filing a single application for
registration in more than one class, increasing the period of
registration and renewal from 7 to 10 years, making trade mark
offences cognizable, enlarging the jurisdiction of courts to bring
the law in this respect on par with the copyright law, amplifying the
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powers of the court to grant ex parte injunction in certain cases and
other related amendments to simplify and streamline the trade mark
law and procedure.
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people with skill and enterprise to produce and market goods and services
in the fairest possible conditions.
There are several kinds of trademarks. Trademarks may be one or a
combination of words, letters, and numerals. They may consist of
drawings, symbols, three-dimensional signs such as the shape and
packaging of goods, audible signs such as music or vocal sounds,
fragrances, or colors used as distinguishing features.
In addition to trademarks identify the commercial source of goods
or services, several other categories of marks exist. Collective Marks are
owned by an association whose members use them to identify themselves
with a level of quality and other requirements set by the association.
Examples of such associations would be those representing accountants,
engineers or architects. Certification Marks are given for compliance with
defined standards, but are not confined to any membership. They may be
granted to anyone who can certify that the products involved meet certain
established standards. The internationally accepted “ISO 9000” quality
standards are an example of such widely-recognized certifications.
1. The terms “Trade Mark” are defined in Section 2 (1) (zb) of the
Trade Marks Act, 1999. The “Trade Description” is defined in
Section 2 (1) (za) of the Trade Marks Act, 1999. The Trade Mark
law is governed by the Trade Marks Act, 1 999.
2. Section 2 (1) (zb) of the Trade Marks Act, 1999 defines: “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 both; and,
(i) in relation to Chapter XII (other than section 107), a register
trade mark or a mark used in relation to goods or services for
the purpose of indicating or so as to indicate a connection in
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the course of - trade between the goods or services, as the
case may be, and some person having the right as proprietor
to use the marl and
(ii) in relation to other provisions of this Act, a mark used or
proposed to be used in relation to goods or services for the
purpose o indicating or so to indicate a connection in the
course of trade between the goods or services, as the case
may be, and some person having the right, either as
proprietor or by way of permitted user to use the mark
whether with or without any indication of the identity of that
person, and includes a certification trade mark or collective
mark.”
3. A trade mark is an intellectual property.
4. Generally, a trade mark belongs to a company.
5. The value of a trade mark can be assessed depending upon the
popularity, business quantity, good will, etc. In fact, there is no
market value, which can be assessed in the case of a property mark.
6. The good will and trade mark cannot be seen by eyes.
7. The infringers of the trademarks are punished under Chapter- XII
(Ss. 101 to 121) of the Trade Marks Act, 1999.
8. House mark and product mark (or brand name): In the
pharmaceutical business a distinction is made between a house
mark and a product mark. The former is used on all the products
of the manufacturer. It is usually a device in the form of an
emblem, word or both. For each product a separate mark known
as a product mark or a brand name is used which is invariably a
word or a combination of a word and letter or numeral by which
the product is identified and asked for. The house mark serves as
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an emblem of the manufacturer projecting the image of the
manufacturer generally.
9. It is an incorporeal property
10. The, Trade Mark law is newer than the Property Mark Law.
11. There are revolutionary changes in the Trade Mark law. The Trade
Mark law has been changing from time to time due to new
inventions and market trends. There are tremendous changes in
the Trade Mark Law including the International Covenants and
Conventions.
12. A trade mark can have an International Registration.
13. A trade mark is a legal recognition, and is a part and parcel of the
manufactured article or service rendered. It fetches additional
merchandise quality and price.
14. A trade mark may be assigned without goods and services to a third
person, who can produce his own goods and render services.
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principal place of business in India of the applicant or in the case of
joint applicants the principal place of business in India of the
applicant whose name is first mentioned in the application as
having a place of business in India, is situate:
Provided that where the applicant or any of the joint applicants
does not carry on business in India, the application shall be filed in
the office of the Trade Marks Registry within whose territorial
limits the place mentioned in the address for service in India as
disclosed in the application, is situate.
(4) Subject to the provisions of this Act, the Registrar may refuse the
application or may accept it absolutely or subject to such
amendments, modifications, conditions or limitations, if any, as he
may think fit.,
(5) In the case of a refusal or conditional acceptance of an application,
the Registrar shall record in writing the grounds for such refusal or
conditional acceptance and the materials used by him in arriving at
his decision.
Withdrawal of Acceptance
The law relating to withdrawal of acceptance for registration is
given in Section 19 of Trade Mark Act, 1999. The summary of provisions
is as follows:
Where, after the acceptance of an application for registration of a
trade mark but before its registration, the Registrar is satisfied,
(a) That the application has been accepted in error; or
(b) That in the circumstances of the case the trade mark should not be
registered or should be registered; subject to conditions or limitations or
to conditions additional to or different from the conditions or limitations
subject to which the application has been accepted, the Registrar may,
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after hearing the applicant if he so desires, withdraw the acceptance and
proceed as if the application had not been accepted.
Advertisement of Application
The law relating to advertisement of application for registration is
given in Section 20 of Trade Mark Act, 1999. The summary of provisions
is as follows:
(1) When an application for registration of a trade mark Has been
accepted whether absolutely or subject to conditions or limitations, the
Registrar shall, as soon as may be after acceptance, cause the application
as accepted together with the conditions or limitations, if any, subject to
which it has been accepted, to be advertised in the prescribed manner:
Provided that the Registrar may cause the application to be
advertised before acceptance if it relates to a trade mark to which sub-
section (1) of section 9 and sub-sections (1) and (2) of section 11 apply,
or in any other case where it appears to him that it is expedient by reason
of any exceptional circumstances so to do.
(2) Where, (a) an application has been advertised before acceptance
under sub-section (1); or (b) after advertisement of an application,—
(i) an error in the application has been corrected; or
(ii) the application has been permitted to be amended under Section 22,
the Registrar may in his discretion cause the application to be advertised
again or in any case falling under clause (b) may, instead of causing the
application to be advertised again, notify in the prescribed manner the
correction or amendment made in the application.
Opposition to Registration
The law relating to opposition to registration is given in Section 21
of Trade Mark Act, 1999. The summary of provisions is as follows:
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(1) Any person may, within four months from the date of the
advertisement or re-advertisement of an application for registration, give
notice in writing in the prescribed manner and on payment of such fee as
may be prescribed, to the Registrar, of opposition to the registration.
(2) The Registrar shall serve a copy of the notice on the applicant for
registration and, within two months from the receipt by the applicant of
such copy of the notice of opposition, the applicant shall se to the
Registrar in the prescribed manner a counter-statement of the grounds on
which he relies for his application, and if he does not do so he shall be
deemed to have abandoned his application.
(3) If the applicant sends such counter-statement, the Registrar shall
serve a copy thereof on the person giving notice of opposition.
(4) Any evidence upon which the opponent and the applicant may rely
shall be submitted in the prescribed manner and within the prescribed
time to the Registrar, and the Registrar shall give an opportunity to them
to be heard, if they so desire.
(5) The-Registrar shall, after hearing the parties, if so required, and
considering the evidence, decide whether and subject to what conditions
or limitations, if any, the registration is to be permitted, and may take into
account a ground of objection whether relied upon by the opponent or
not.
(6) Where a person giving notice of opposition or an applicant sending
a counter-statement after receipt of a copy of such notice neither resides
nor carries on business in India, the Registrar may require him to give
security for the costs of proceedings before him, and in default of such
security being duly given, may treat the opposition or application, as the
case may be, as abandoned.
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(7) The Registrar may, on request, permit correction of any error in, or
any amendment of, a notice of opposition or a counter-statement on such
terms as he thinks just.
Registration
The law relating to registration of trademark is given in Section 23
of Trade Mark Act, 1999. The summary of provisions is as follows:
(1) Subject to the provisions of Section 19, when an application for
registration of a trade mark has been accepted and either—
a) The application has not been opposed and the time for notice
of opposition has expired; or
b) The application has been opposed and the opposition has
been decided in favour of the applicant, the Registrar shall,
unless the Central Government otherwise directs, register the
said trade mark within eighteen months of the filling of the
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application and the trade mark when registered shall be
registered as of the date of making of the said application
and that date shall, subject to the provisions of Section 154,
be deemed to be the date of registration.
(2) On the registration of a trade mark, the Registrar shall issue to the
applicant a certificate in the prescribed form of the registration
thereof, sealed with the seal of the Trade Marks Registry.
(3) Where registration of a trade mark is not completed within twelve
months from the date of the application by reason of default on the
part of the applicant. The registrar may, after giving notice to the
applicant in the prescribed manner, treat the application as
abandoned unless it is completed within the time specified in that
behalf in the notice.
(4) The registrar may amend the register or a certificate of registration
for the purpose of correcting a clerical error or an obvious
mistake.3
Patent
Patent is a right of a particular design or formula used for the
manufacture of a given product. For example, the formula used for
Chyawanprash by Dabur company with a specific constitution of
ingredients can be called a patent. Similarly the electronic design of a
motherboard supplied by Intel company is also a patent. Even the
computer based system of Windows sold by Microsoft company is a
patent. In fact, patent gives the right to produce and deploy a certain
design commercially in the market. Even food products can have a patent.
It protects inventions that are novel, non-obvious with respect to
the prior art and useful. The invention must be disclosed in a specified
3
Government of India (2008), The Trademark Act, 1999, Law Publishing House, Lucknow.
88
format in a patent specification. A granted patent has a specific ‘term’
(generally 20 years, in some countries it is 14 years and in some others
5/7 years under special circumstances) and must be periodically renewed
upto the end of the term to retain the rights from it. If not renewed
periodically as required by the statute a patent becomes public property
that can be used by anyone without fear of infringement.
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inter alia, a common law monopoly. Later in Clothworkers of Ipswich
Case (1614 Godboit 252), patent right was recognised.
Section 6 of The Statute of Monopolies, 1623 gave recognition to
patents as an exception to the general rule against monopolies. This
Section gave 14 years in which the inventor could exploit his invention to
the exclusion of others.
All these patent laws were overhauled by the Patent Law
Amendment Act 1852. This saw the beginnings of the Patent Office and
the opening of the Patent Office Library soon followed. Between 1853
and 1857, about 1671 Patents were granted by Letters Patent in England.
In 1883 the Patents, Designs and Trade Marks Act, 1883 was
enacted incorporating the provisions of the Paris Convention for the
Protection of Industrial Property. 1883. In 1902, the Patents Act, 1902
was enacted. Consequently, further Acts enacted were the Patents Act,
1949, the Patents Act, 1977. The maximum term of a patent has been
extended to 20 years by the Patents Act, 1977 in England.
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Statement of Objects & Reasons
While the Patents Bill, 1970 was introduced in the Parliament, the
Select Committee expressed the statement of objects and reasons of the
Bill as follows—
“The existing The Indian Patents and Designs Act was enacted in
1911 and since then there have been substantial changes in the political
and economic conditions of the country. The need for a comprehensive
law so as to ensure more effectively that patent rights are not worked to
the determent of the consumer or to the prejudice of trade or the industrial
development of the country was felt as early as 1948 and in that year the
Government appointed the Patents Enquiry Committee to review the
working of the patents law in India. The Committee submitted its final
report in 1950. The Patents Bill 1953, based largely on the United
Kingdom Patents Act, 1949 and incorporating some of the
recommendations of the Committee was introduced in the Lok Sabha on
7th December, 1953. The Bill, 1953 was lapsed on the dissolution of the
First Lok Sabha.
In 1957, the Government of India appointed Shri Justice N.
Rajagopala Ayyangar to examine afresh and review the Patents Law in
India and advice the Government on the necessary changes. The Judge
submitted a comprehensive Report on Patents Law Revision in
September, 1959. The Patents Bill, 1965, based mainly on the
recommendations contained in his detailed Report and incorporating a
few more changes in .the light of further examination made particularly
with reference to patents for food, drugs and medicines, was introduced
in the Lok Sabha on 21st September, 1965, The Bill was framed on 25th
November, 1965 to a Joint Committee of Parliament. The Joint
Committee, after a careful consideration of the matter, adopted a number
of amendments to the Bill. The Report of the Joint Committee with the
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amended Bill, was presented to the Lok Sabha on 1st November, 1966.
The Patents B*H, 1965, as reported by the Joint Committee was formally
moved in the Lok Sabha on 5th December, 1966, but could not be
proceeded with for want of time and eventually lapsed with the
dissolution of the Third Lok Sabha on 3rd March, 1967.
The present Bill contains comprehensive provisions to amend and
consolidate the existing law and also contains amendments/
recommendations by the Joint Committee referred to above. The notes on
clauses explain the provisions of the Bill, wherever necessary.”
As a result, the Patents Act, 1970 has been separately enacted
separating from the Patents and Designs Act, 1911. The Patents Act, 1970
has incorporated several new provisions preventing misuse of patents.
This Act came into force w.e.f. 20-4-1972.
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about “Register of Patents” Chapter-XIV (Ss. 73-76) states about “Patent
Office and its Establishment”. Chapter-XV (Ss. 77-81) narrates about
“Powers of Controller Generally”. Chapter-XVI (Ss. 82-94) states about
“Working of Patents, Compulsory Licences and Revocation”. Chapter-
XVII (Ss. 99-103) narrates about “Use of Inventions for purposes of
Government and Acquisition of Inventions by Central Government”.
Chapter-XVIII (Ss. 104-115) contains the provisions about “Suits
Concerning Infringement of Patents”. Chapter-XIX (Ss. 116-117-H)
narrates about “Appeals to the Appellate Board”. Chapter-XX (Ss. 118-
124) contains the provisions about “Penalties”. Chapter-XXI (Ss. 125-
132) contains the provisions about “Patent Agents”. Chapter-XXIl (Ss.
133-139 contains the provisions about “International Arrangements”.
Chapter-XXIII (SS. 140-162) contains the provisions about
“Miscellaneous”. There is only one Schedule containing the
“Amendments to the Indian Patents and Designs Act, 1911”
The Central Government enacted The Patents Rules, 2003, which
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(a) By any person claiming to be the true and first inventor of
the invention.
(b) By any person being the assignee of the person claiming to
be the true and first inventor in respect of the right to make
such an application.
(c) By the legal representative of any deceased person who
immediately before his death was entitled to make such an
application.
2) An application under sub-section (1) may be made by any of the
persons referred to therein either alone or jointly with any other
person.4
4
Government of India (2008), The Patents Act, 1970, Law Publishing House, Lucknow.
96
after the filing of the application, proof of the right to make the
Application.
(3) Every Application under this Section shall state that the applicant is
in possession of the invention and shall name the person claiming
to be the true and first inventor; and where the person so claiming
is not the applicant or one of the applicants, the application shall
contain a declaration that the applicant believes the person so
named to be the true and first inventor.
(4) Every such Application (not being a Convention Application or an
application filed under the Patent Cooperation Treaty designating
India) shall be accompanied by a provisional or a complete
specification.
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(2) At any time after an application for patent is filed in India and till
the grant of a patent or refusal to grant of a patent made thereon, the
Controller may also require the applicant to furnish details, as may be
prescribed, relating to the processing of the application in a country
outside India, and in that event the applicant shall furnish to the
Controller information available to him within such period as may be
prescribed.
Design Registration
A registered design includes features of shape, configuration,
pattern, ornament or composition of lines or colours, applied to any
article either in two or three dimensional or in both forms by any
industrial process which in the finished article appeal to and are judged
solely by the eye. The industrial process or means can be manual,
mechanical or chemical separate of combined.
The protection does not include -
* The mode of principle of construction
* Anything which is in substance a mere mechanical device
* Trademark or property mark
This registration has a specific term (initially 10 years and
renewable for another term of 10 years.) If it is not periodically renewed
as required by the statute the registered design becomes public property
that can be freely used by anyone without fear of infringement.
Section 2 (d) of The Designs Act, 2000 defines: “Design” means
only the features of shape, configuration, pattern, ornament or
composition of lines or colours applied to any article whether in two
dimensional or three dimensional or in both forms, by any industrial
process or means, whether manual, mechanical or chemical, separate or
combined, which in the finished article appeal to and are judged solely by
98
the eye; but does not include any mode or principle of construction or
anything which is in substance a mere mechanical device, and does not
include any trade mark as defined in clause (v) of sub-section (1) of
Section 2 of the Trade ^and Merchandise Marks Act, 1958 (43 of 1958)
or property mark as defined in section 479 of the Indian Penal Code (45
of 1860) or any artistic work as defined in clause (c) of section 2 of the
Copyrjght Act, 1957 (14 of 1957).”
Characterstics of Design
In Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., 2008 (10)
SCC 657: 2008 (7) SCR 397), the Supreme Court explained that
“Design” means that a feature or a pattern which is registered with the
registering authority for being produced on a -particular article by any
industrial process whether manual, mechanical or chemical or by any
other means which appears in a finished article and which can be judged
solely by eye appeal.
Analysation of Section 2 (d) of The Designs Act 2000:— “Design”
means only the features of shape, configuration, pattern, ornament or
composition of lines or colours applied to, any article whether in two
dimensional or three dimensional or in both forms by any industrial
process or means, whether manual, mechanical or chemical, separate or
combined, which in the finished article, appeal to and are judged solely
by the eye; but does not include any mode or principle of construction or
anything which is in substance a mere mechanical device and does not
include any trade mark as defined in clause (v) of sub-section (1) of
Section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958)
(now the Trade Marks Act, 1999); or property mark as defined in Section
479 of the Indian Penal Code (45 of 1860); or any artistic work a&
99
defined in clause (c) of Section 2 of the Copyright Act, 1957 (14 of
1957).”
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Section 4: Prohibition of Registration of Certain Designs
A design which,
(a) is not new or original; or
(b) has been disclosed to the public anywhere in India or in any other
country by publication in tangible form or by use or in any other
way prior to the filing date, or where applicable, the priority date of
the application for registration; or
(c) is not significantly distinguishable from known designs or
combination of known designs; or
(d) comprises or contains scandalous or obscene matter, shall not be
registered.
Problem:
A Central Government Organization constructed a building for its
office. Its design is similar to the architectural design of the famous
Charminar. Can anyone challenge the action of the Central Government?
If so, under which I PR Law and on what grounds?
Solution:
According to Section 4 of the Trade Marks Act, 1999, the action of
the Central Government Organization is prohibited. Hence anyone
challenge the action of the Central Government under Section 4 of the
Trade Marks Act, 1999.
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Provided that the Controller shall before such-registration refer the
application for examination, by an Examiner appointed under sub-
section (2) of Section 3, as to whether such design capable of being
registered under this Act and the rules made there under and
consider the report of the examiner on such reference.
(2) Every application under sub-section (I) shall be in the prescribed
form and shall be filed in the Patent Office in the prescribed
manner and shall be accompanied by the prescribed fee.
(3) A design may be registered in not more than one class, and, in case
of doubt as to the class in which a design ought .to be registered,
the Controller may decide the question.
(4) The Controller may, if he thinks fit, refuse to register any design
presented to him for registration; but any person aggrieved by any
such refusal may appeal to the High Court.
(5) An application which, owing to any default or neglect on the part
of the applicant, has not been completed so as to enable registration
to be effected within the prescribed time shall be deemed to be
abandoned.
(6) A design when registered shall be registered as of the date of the
application for registration.5
5
Government of India (2008), The Designs Act, 2000, Law Publishing House, Lucknow.
102
(3) Where a design has been registered in respect of any article
comprised in a class of article, the application of the proprietor of
the design to register it in respect of some one or more other
articles comprised in that class of articles shall not be refused, nor
shall the registration thereof invalidated,—
(a) On the ground of the design not being a new or original
design, by reason only that it was so previously registered; or
(b) The ground of the design having been previously published
in India or in any other country, by reason only that it has
been applied to article ID respect of which it was previously
registered:
Provided that such subsequent registration shall not extend the
period of copyright in the design beyond that arising from previous
registration. ,
(4) Where any person makes an application for the registration of a
design in respect of any article and either,—
(a) that design has been previously registered by another person
in respect of some other article; or
(b) the design to which the application relates consists-of a
design previously registered by another person in respect of
the same or some other article with modifications or
variations not sufficient to alter the character or substantially
to affect the identity thereof, then, if at any time white the
application is pending the applicant becomes the registered
proprietor of the design previously registered, the foregoing
provisions of this Section shall apply as if at the time of
making the application, the applicant had been the registered
proprietor of that design:
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Lay-out Designs for Integrated Circuits
Substantive provisions of the Washington Treaty for protection of
Layout Designs for integrated circuits must be respected. The scope of
protection not only includes the protected chip but also the articles
incorporating it. The term of protection is 10 years. An innocent infringer
must be free from liability, but once he has received the notice of
infringement, he is liable to pay a reasonable royalty.
Geographical Indications
This tool affords protection to goods that can be identified as
originating or manufactured in the territory of a country, or a region or
locality in that territory where as given quality, reputation or other
characteristic of such goods is essentially attributable to its geographical
origin. In the case where such goods are manufactured goods, one of the
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activities of production or of processing or preparation of goods
concerned takes place in such territory or locality as the case may be. The
term is initially for a period of 10 years and can be renewed from time to
time.6
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"The modern IPR tool kit provides a range of distinct legal
platforms for protection of the fruits of human creativity that span from
innovations in technical fields, products and services, literary/artworks,
performances, computer programs etc. It should be appreciated that each
of these instruments is governed by a set of laws with frameworks that
offer varying degrees of protection, rights, obligations, enforcement
procedures and reliefs."
Thus, in this chapter the researcher has introduced various concepts
related with the history of intellectual property rights. The researcher has
also discussed the concepts as they appear in the statute with reference to
international understanding about these concepts.
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