Intellectual Property Rights – Endterms

Things left to do
 Slides for TK and GI
 Bare Acts

Table of Contents
Copyright Law.........................................................................................................................2
Idea-Expression Dichotomy................................................................................................................2
Functionality......................................................................................................................................3
Doctrine of Merger.............................................................................................................................3
Originality...........................................................................................................................................4
Subject Matter of Copyright - Literary works generally......................................................................5
Artistic Works.....................................................................................................................................6
Ownership and Authorship of © - Section 17.....................................................................................7
Course of Employment and Control Test............................................................................................7
Joint Authors......................................................................................................................................8
Rights of Reproduction.......................................................................................................................8
Right of Distribution...........................................................................................................................8
Right of Performance.........................................................................................................................8
Moral Rights.......................................................................................................................................9
Infringement......................................................................................................................................9
Computer Programs.........................................................................................................................10
Secondary Infringement...................................................................................................................10
Copyright Issues ib Browsing, Caching, Framing, Linking..................................................................11
Performer’s Rights............................................................................................................................12

Law of Patents.......................................................................................................................12
Patentable Subject Matter................................................................................................................12
Novelty.............................................................................................................................................13
Industrial Applicability/Utility..........................................................................................................15
Inventive Step/Non-obviousness......................................................................................................16
Infringement....................................................................................................................................17
Defences in an infringement suit......................................................................................................18

Trademarks...........................................................................................................................19
Distinctiveness.................................................................................................................................19
Colour...............................................................................................................................................20
Sound...............................................................................................................................................20
Smell................................................................................................................................................20
Shape...............................................................................................................................................21
Absolute Grounds for Refusal...........................................................................................................21

1
 Relative Grounds for Refusal............................................................................................................21
Deception and Confusion.................................................................................................................23
Comparative Advertising..................................................................................................................23
Passing Off........................................................................................................................................23
Trademark in Domain Names...........................................................................................................25

Designs..................................................................................................................................26
Novelty and Originality.....................................................................................................................26
Applied to Article..............................................................................................................................26
Appeal Judged Solely by the Eye.......................................................................................................27
Functionality.....................................................................................................................................27
Scandalous and Obscene..................................................................................................................27
Piracy................................................................................................................................................28
Design under UK Law........................................................................................................................28
Unregistered Design Right (UDR)......................................................................................................28

Manav’s Lecture on Fair Use..................................................................................................29

Geographical Indications.......................................................................................................29
Traditional Knowledge...........................................................................................................30

Copyright Law
Infringement
 Is work copyrightable?
 Whether had access to copyrighted material?
 Look at substantial similarity?
 Compare whole to the parts and parts to the whole?
 Protected under fair use or dealing?

Section 16, Copyright Act, 1976 - no rights under copyright exist except as provided under the
statute.

US Constitution “promotion of science and useful art”

Eldred v Ashcroft: US SC upheld the constitutionality of the Copyright Terms Extension Act.
Lifetime + 70 or 95/120. Constitutional since it is still for a ‘limited period’.

Idea-Expression Dichotomy

2
1. Baker v Selden - Baker’s bookeeping forms were very similar and prepared using Selden’s system
but were not identical. Court said that the expression was entitled to protection but not the principles
of bookkeeping themselves. Exact copies were also permitted if they were practical use of the idea.

2. Donoghue: D was a jockey with racing experience and his experiences were used to write a book by a
freelance journalist who took notes of the conversations, made alterations in the manuscript after D’s
comments etc. Court said he expressed only the idea and could not seek protection over the same.

3. Najma Heptulla: Similar to Donoghue – book called India Wins Freedom written by Maulana Azad
and Prof Humayun Kabir – Court found they were joint authors – Point of Difference from earlier
case: Greater involvement by Maulana than Donoghue.

4. RG Anand: similarity between play (Hum Hindustani) and film (New Delhi) did not constitute
infringment. There were certain elements that were common because they were expressing similar
ideas about provincialism but no ‘colourable similarities’.
7 Factor Test:
i. Idea not protected
ii. Substantial and material copying
iii. Unmistakable impression of the viewer – dominant impact test/ordinary observer doctrine
iv. New treatment of the same theme
v. Incidental coincidence and material dissimilarities
vi. Clear and Cogent evidence required
vii. Difficult to prove when play -> film

5. Anil Gupta: Idea, if developed into a concept fledged with adequate details, is ©. Idea of swayamvar
expressed and elaborated in great detail. In such case, lifting of the idea constitutes infringement.

6. Zee Telefilms- infringement since idea for the TV show had been expressed in some detail with
character sketches, sequences, pilot etc. The defendant had only made cosmetic changes (girl playing
Kanhaiyya and dadima rather than mother being the central character)

7. Indian Express Newspapers v. Jagmohan – Film “Kamala” from autobiographical accounts of a

prostitute – No © in the events that actually took place in her life, only the mode of expression

8. Institute of Inner Studies – pranic healing asanas and techniques not protected by ©, but their
description is

Functionality

9. Mazer v. Stein – A work with both aesthetic and functional features will get © protection for the
aesthetic part, if it can be separated from the functional part.

10. Borland – Drop down menu – a method of operating computer software is excluded from © in USA

Doctrine of Merger

3
11. Kennick – Cards meant for instructing illiterate voters – no © as limited modes of expression

12. Rosenthal v Kalpakian: The two parties made jewelled bee pins that had substantial difference. Court
said that the idea was not copyrightable. Further, applied the doctrine of merger to state that there was
no other way to express the idea and the pins were thus substantially similar. (protecting the
expression will amount to protecting the idea). Test of near identity and not substantial similarity.

13. Rosenthal v Grossbardt - related to turtle pins - injunction granted because the pin was identical.

14. Rosenthal v Honoria - related to turtle pins – burden on plaintiff to show near identity - some
differences and therefore not infringement.

15. Mattel Inc. – Scrabble – merger doctrines applies to games. Without plaintiff’s arrangements, unclear
whether the game could be played

Morissey v Proctor and Gamble: Similarly applied the doctrine of merger to say that the rules
could not get protection - substantially similar.

Kay Berry v Taylor Gifts: High evidentiary burden to show that it is an impermissible copy
rather than the unavoidable expression of the same idea.

Originality

16. University of London Press: Examination papers were given copyright protection because they were
literary work (expressed in writing, indep of quality or style) and they are original ie should originate
from the author, involving selection, knowledge, judgement and experience. Time spent is not a
criterion. Affirmed in Aggarwal Publishers.

17. Ladbroke Football Ltd: Coupons indicating football schedule and wagering – original – choice of
matches and wagers needed effort and judgement.

18. Feist Publications: No infringment when you lift contact details from yellow pages since the facts
aren’t copyrightable. As a collection of facts the directory itself might receive protection. Rejected
sweat of the brow, some degree of creativity needed (selection and arrangement). No © of
compilation here because only arrangement alphabetically, only labour exerted.

19. Eisenman- dead sea scrolls. Copyrightable since it didn’t just involve translation. He had to interpret
and fill in gaps as well. Originality can be in the process too.

20. Govindan– small amount of originality in compilation protected under © - copying of tamil-english
dictionary with the same words, sequence, layout etc along with errors amounted to infringement.

21. Associated Publishers v Bashyam - combination of two photographs of Gandhi is entitled to

copyright. Original since it is the result of minimum skill and labour.

4
22. Law Society of Upper Canada – sent excerpts of judgements – rejected degree of creativity and sweat
of the brow doctrine – advocated test of skill (knowledge and ability) and judgement (discerning) =
extracts, headnotes, topical indicies and overall look of compilation – ©

23. Eastern Book Company: Follows Law Society of Upper Canada - There needs to be independent
creativity exercised and this should not be minimal. Cross referencing; internal paragraphs and
expressing whether the judge dissented/concurred etc are considered to be original and creative work.
Protection does not extend to merely referring to old cases, filling in party names etc.

Subject Matter of Copyright - Literary works generally

Literary works includes computer programmes, tables, compilations (including databases)

University London Press - literary quality is not relevant

24. Exxon – The name Exxon is not © - it provides no information, conveys no pleasure and gives no
instruction

25. Express Newspapers v. Liverpool Daily Post – Millionaire of the Month 5X5 Grid tables are literary
works – also original as skill and labour required to come up with just enough winning combination
so as to not make the endeavour uneconomical.

26. Shyam Lal Paharia – Four principles for compilations

i. Compilation derived from common source is LW
ii. Similar nature of compilation is not necessarily infringement
iii. Colourable imitation – question of fact
iv. Whether slavish imitation or author’s own labours and exertions

27. Burlington Home Shopping - a compilation of addresses could be literary work if it involved time,
money, labour, skill and judgment.

28. Pandian v Kamal Hassan - Mangalir Mattum: protection extended to the work not to the title – test for
© of title is if it protject the work.

Reasons for non-protection of title or name

i. First-mover gets unfair advantage – cause inconvenience to the public
ii. Adequate protection under TM or artistic work law
iii. May not be sufficiently creative or original (TRK – Trial and Triumph may be protected).
iv. No imparting of information

29. Godfrey Phillips – Shauq Badi Cheez Hai is not © - mere advertising slogan

30. Time Warner Entertainment Co. – no ownership in work that is not in existence – no rights and no
infringement

5
Blackwood v Parasuram: translation done without author’s permission is infringement if done
within 10 years. After this period, translator gets copyright.

Computer Program

31. SAP v. Sadiq Pasha – Purchase of a software without license does not allow you to resell the software
– © infringement

Types of Programs – all forms of code get protection

 Microcode (firmware)
 OS Program
 Application Program

Artistic Works

32. Labbeaus Woods – 12 monkeys – artist has right to reproduce including 2D and 3D – does not merit
separate © protection

33. George Hensher - boat-shaped furniture. Different Law Lords said look at expert opinion. Also look
at circumstances of production (eg. mass production etc.)
 Reid – substantial portion of the population sees it as aesthetic
 Morris – expert opinion to determine artistic quality
 Dilhorne – expert opinion to determine if people buy it for aesthetic purpose
 Simon – broad definition – artistic merit irrelevant – whether person who created the art is
an artist-craftsman - expert opinion and intent of creator
 Kilbrandon – whether author consciously concerned about producing a work of art – deduce
from work itself or surrounding circumstances

34. Merlet v. Mothercare - Babycape designed by mom for her child. Subsequently manufactured for sale
and copied by Mothercare. craftsmanship but no artistic craftsmanship- no aesthetic pleasure by the
population (Reed’s Test). Also did not intend to create work of art but to protect her baby
(Kilbrandon’s Test).

Bonz Group v. Cooke

sweaters with animal patterns (dancing lambs)- protected because produced by craftsman but
designed by designer- both become joint creators of artistic work.

Dramatic Work
35. Fortune Film International v. Dev Anand – performance of an actor is not © work ??

36. Saregama India - ?/

6
37. Broadcasting Corporation of NZ - the format of a talent show cannot receive copyright protection
since separate elements did not combine to form a ‘unified dramatic work’ capable of protection.

38. Norowizian - no copyright protection subsists in style or technique of editing. (alleged infringement
was by another ad that used a similar jump-cut technique) – The movie was not a recording of a
dramatic work, but a dramatic work in itself. In India, cinematographic film excluded

39. Gramophone - ?/

Ownership and Authorship of © - Section 17

40. VT Thomas - comic strip- same characters. Ct: MM will have copyright over the strips produced
during tenure of employment. But not over those produced under employment of diff newspaper even
though same characters

41. Indian Heritage Society – Photogrpaher commissioned for taking pictures of Ayengar yoga – no
ownership (Section 17(b))

42. Bharati Dutta – “devolve upon” has same meaning as assign

43. Noah v. Shuba – book written by employee (Professor) of PHLS in his free time – PHLS not the
owner of © based on facilties used by author, implied term in contract and past acquiescence of
PHLS

Course of Employment and Control Test

44. ULP v. UTP – examiner setting papers is not an employee - Control test – existence of direct control,
degree of independence and place where service rendered

45. Nora Beloff – Correspondent – Gossip - Whether the employee is employed as part of the business
and whether the work done is an integral part of the business or is only accessory to it OR is it done
by her in her own account. Approved in Diljeet Titus

46. Missing Link Software – programmer writing code at home – within the scope of employment - Same
line of work test

S.101, USCA – work made for hire

S.201, USCA – written contract needed to exclude employer’s right

47. CCNV v. Reid – sculptor – 11 factor test of agency for S.101, USCA – skill required, source of
instrumentality, location of the work, duration of the relationship between parties, method of
payment, hired party’s role in hiring and paying assistants, skills of the hiring party, hiring party’s
right to control the manner and means by which the work is done, whether work part of regular
business of hiring party, whether hiring party is in business, provision for employee benefits, tax
treatment

7
Joint Authors

48. Levy v. Rutley - joint labouring in furtherance of pre-concerted common design.

49. Donohue - The stories recounted by Mr. Donoghue were merely ideas, he could not claim © over
them – “whose language is it” test

50. Najma Heptullah – Prof Kabir did not interrupt Maulana as he wanted his ideas to come out, but the
language was his – joint authorship – criticised Donohue test. Two requirements:
 Common design
 Contribution by both not to the same extent, but not possible to distinguish and separate

51. Robin Ray – Mere scribe is not a joint author

52. Flyde Microsystems – Test engineer finding bugs – not a joint author

Rights of Reproduction

53. MAI Systems – Unauthorised version of OS used by repairers on RAM - RAM copy is also a copy
because it can be perceived, reproduced, communicated and because it stays for more than a
transient period – but cacheing is also considered fair use

Right of Distribution
54. John Wiley - import from Thailand to sell in US was valid since the person lawfully acquired
possession of these copies there – first sale doctrine – favoured international exhaustion

55. John Wiley v. Prabhat Jain (Delhi HC) – licensees in India wanted to re-export to USA – not allowed
– permitted to sell only in India and South Asia – not clearly stated that India follows national
exhaustion ?????

Right of Performance

56. Garware Plastics: even though the viewers of cable TV are in separate locations, they still constitute
‘public’ collectively
Three tests for communication to public
-nature of audience – whether general or associated by domestic or private link

-financial consideration for communication

-author’s intended public: that is, when the author intended to communicate the work only to a
specific group of people, and if it is communicated to people outside this group, it constitutes
communication to the ‘public’.

8
Moral Rights

Section 57 Claim authorship; restrain and claim compensation in case of distorion, mutilation etc
in case it is prejudicial to his honour or reputation

57. Manu Bhandari: adaptation that distorted her story was held to be viol of her moral rights.
Contractual agreement to allow modification of work does not mean mutilation is permissible.
58. Amar Nath Sehgal: Four rights: paternity and attribution, integrity, divulgation and dissemination,
retraction. cannot prejudice artist’s rep by reducing the corpus of his works. Part of cultural heritage-
violation is against S. 57. Directed restoration and return of remaining parts of the mural, rights given
back to author and compensation awarded
59. Snow v Eaton Centre - 60 geese tied with ribbon – examined witnesses – ruined meaning of the
sculpture
60. Theberge – painting © assigned for reproduction on cards – lifting of ink from canvas – balance
moral rights with right of dissemination (placing of restrictions on owner’s rights)

Infringement

Four Step Process

 Copyrightability
 Access to original work
 Substantial similarity
 Fair Use Defences

Substantial Similarity – factors to take into account – copying (causal, direct, subconscious), substantial
taking (unilateral copying, defendant’s alteration, character of work, nature and extent of P.’s effort,
manner of taking advantage by D.)

61. Fred Fisher: Songs have common note –Ostinato – substantial similarity – access shown because
Darenella was a popular song – Subconcious Copying doctrine
62. Nichols: Abstraction Test - there is a point in the series of abstractions where they are no longer
protected – Idea Expression dichotomy
 Prof. Chafee’s Pattern Test - the sequence of events and the development of the interplay of
characters
63. Twentieth Century Fox - plot constitutes a pattern that is sufficiently concrete – if common, there is
substantial similarity
64. Reyher– Total Concept and Feel Test - Look at the concept surrounding both works and imagine how
an individual perceiving it would visualise it
65. Sid and Mary Croft – Total Concept and Feel Test
 Extrinsic test - to determine similarity in general ideas – analytical dissection and expert
testimony are appropriate
 Intrinsic test - to compare the particular expression used – avoids experts and relies on the
response of the ordinary reasonable person
66. Mohan Singh v. Sita: Standard of ordinary observer – lay person’s test

9
67. Sulamangalam v. Meta Musicals: Ordinary listener listening to both works
68. Raja Pocket Books: feeling and artistic character test to determine substantial similarity- Nagaraj and
Nagesh feeling and artistic characer test to determine substantial similarity.
69. Kesari Maratha Trust: name of photographer on book – sufficient notice of authorship – even if no
notice, that is infringement

Computer Programs

70. Whelan Associated: W developed a program Dentalab to be used by J in his dental business. Sold the
same to other dentists as well, giving J 10% of the fees. Developed a new prorgram Dentlab. Court
held that this was an infringement since its structure and overall organisation was substantially
similar. SSO not essential for function – hence expression, not idea

71. Computer Associates v. Altai - In abstraction-filtration-comparison test,

• Abstraction – examine the program in its terms of structure and its specific sequence of the code
– identify various module, routines and subroutines – separate the various elements in order of
increasing generality
• Filtration – filtering out expressions due to doctrines like scenes a faire, merger, part of public
domain, dictated by efficiency and industry concerns (hardware standards, software standards,
industry protection standards.
• Comparison – what remains after F., the golden nugget of the protectable expression in the
plaintiff’s allegedly infringed work – whether D. has copied and what is the relative importance of the
copied portion to the infringing work. No infringement was found.

72. Navitaire (UK position): Functionality of the software cannot be protected i.e. only source code, not
idea. Look at the program as a whole. (the case looked at flight reservation system - abstraction
would only show the same function that all such systems follow)

Secondary Infringement

73. Sony Corpn - use of VCRs. Not liable since there is substantial non-infringing uses (staple article of
commerce test) and time shifting did not have an impact on the market (de minimis) – was fair use.
 Actual, specific knowledge for infringement needed, not constructive knowledge
74. A&M Records v Napster - P2P sharing from a central server was infringing use by users. For
secondary infringement, you have to show actual knowledge and ability to block access to system by
suppliers of infringing material/ material contribution to infringement. Focus not on proportion of
non-infringing use, but capability of non-infringing use.
75. Aimster: P2P with no central server
 Contributory Infringement – knowledge (including wilful blindness) + Induce or Cause (rejected
unintended effect and substantial non-infringing use).
 Vicarious infringement – right and ability to supervise + direct financial interest
76. Grokster - emphasised the importance of material inducement to infringe. They wanted themselves to
be the new Napster and fill that void in the market.

10
Copyright Issues ib Browsing, Caching, Framing, Linking
Browsing
77. RTC v. Netcom – browsing causes a copy to be stored but it is fair use

Caching – Local or Proxy

Reference linking – not violation of ©

Inline linking – image link

78. Neil Stetson: If original website is not restricted access, it would not amount to communication to a
new public – no infringement

Deep Linking – prohibited as it circumvents websites intended method of navigation

79. Bixee.com – prevented from deeplinking from naukri.com

Framing – documents presented in subwindows

80. Kelly v. Ariba Soft Corp – thumbnail functionally transformative – would not affect market – fair use

Streaming and Downloading

81. Playboy -– copyrighted images available for downloading by subscribers – defendant had put up the
images in Italy for downloading to the users in USA – directly violates distribution rights of the
image authors.
82. Perfect 10 v Google - P 10 had copyrighted nude images of models that could only be viewed by
subscribing. Other websites had infringing copies that would show up as thumbnails on Google.
Court said that Google was not infringing sicne the purpose was not to have infringing material. Fair
use becuase they are facilitating searching (want it to be comprehensive). They are not picking this
because it is a picture of a nude model. (P10 hasn’t shown any sort of loss to them as a result of this)
Secondary infringement - SC’s interpretation is that contributory: intentionally inducing or
encoruaging direct infringemnt; vicarious is profiting from it while declining to stop or limit it.
Google could be held contributorilty liable if it had knowledge and had failed to take steps to prevent
damage.
Not vicarious since no right to stop the infringement itself and no contracts that make it profit from it.

PopUps

83. UHaul - Court said it does not infringe right of display – WhenU Savenow pop up window was a
distinct occurrence from the UHaul webpage, rather than a single integrated work

Sponsored Links

GUIs – no copyright because of functionality

11
Performer’s Rights

S.38A and 38B

Law of Patents
A patent is an exclusive right granted by the state to the inventor (first and true) for a limited
duration upon clear and complete disclosure of the invention.

1. Dhanpat Seth v. Nil Kamal Plastics – reproduction of traditional product in plastic form – not
inventive
2. Novartis –
 No appeal provision for refusal to grant patent – still allowed
 SC: Not an invention as per S.2(d) and 3(d)
3. Johnson v. Johnson – If claim not made over any disclosure, it is dedicated to the public

Filters for patent: Patentable subject matter; Novelty; Industrial Application/Utility; Non-
obviousness/new inventive step

Patentable Subject Matter

Section 101 USC Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement thereof, may obtain
a patent therefor, subject to the conditions and requirements of this title.

Section 2(j) Invention means new product or process involving an inventive step and capable of
industrial application.

4. Diamond v. Chakrabarty: Chakrabarty came up with a solution for oil spills. Created (from existing
bacteria) a new bacteria with 4 plasmates (earlier ones had 3) for eating oil. The patent was for
process+carrier+organism. The third was rejected, as bacteria is product of nature. SC said, there is a
new product of human ingenuity with distinctive character (falls within definition of
manufacture/composition of matter) Not naturally occurring and hence, not merely nature’s
handiwork. So, granted patent.

Section 3 of the Patents Act, 1972 prescribes several exclusions - frivolous, against public
morality, abstract idea, business method, agriculture, means of playing a game, admixture,
combination of two invention, copyright, TK, plant varieties other than microorganisms etc.
Section 3(d) attempts to prevent evergreening.

5. Meclalid Patent?/?
Validity of patents granted for 2 breast cancer genes questioned – Held – patented genes had very
diferent chemical structure from naturally occurring genes

12
 CDNA – RNA converted into synthetic product – processes which exclude non-expressive parts of
DNA – not mere cleavage of chromosomes – eligible for patent protection
6. Novartis: Beta crystalline form of a medicinal compound was isolated. This drug was used to cure
cancer, had an earlier received a patent. The isolated crystalline form was what was sought to be
patented. Got in USA, applied in India. IPAB said, the crystalline form only increases shelf life,
doesn’t add to efficacy to its therapeutic nature. There was no clear improvement from the state of the
art, so no inventive step. Plus, if patent was allowed without a marked difference from prior art, it
would lead to evergreening of the earlier patent, and delay into the generic drug magnet. SO . not
allowed.
● Yahoo v. Controller of Patents: Patent sought for method of search apparatus. Business
methods expressly excluded in India. So, no chance. Yahoo tried to argue that google’s
patent had been granted in USA for the same thing. IPAB said, no statute excludes.

Novelty
Novelty is determined through prior art references, but no scope for mosaicking [spreading PAs across
different documents – 2 or more PAs cannot be combined – objective determination of novelty].

Prior art must be in public domain. Thus, a PhD thesis indexed, catalogued and shelved in a library would
be in public domain, but a thesis kept with a supervisor would not. [In Re Hall] Normally disclosure to
one person is sufficient but in this case supervisor is bound by confidentiality.

Difference between provisional specification and complete specification: patent law makers understood
that sometimes when the invention is conceived but not fully developed providing a complete
specification is not practically possible and hence they introduced the option of a provisional
specification. A provisional specification is required to give only the key novelty and inventive aspect of
the invention in an abridged form and may not have claims provided."
More than one PS can be filed
CS – make claims over disclosures in PS.

7. Bristol Myers Squibb Application – Beechem accidentally made ampicillin, while making penicillin –
BMS applied for ampicillin patent – challenged as its production was prior art. Right to Work test
and Reverse Infringement Test. Secret use considered prior use. Now changed after 1977 Act
amendment.
Right to work- Patent application should make sufficient disclosure to allow public to work the
invention
Reverse infringement- it's a test to determine novelty. If the patent was valid, whether it would
amount to infringement of another patent
8. Merrel Dow Pharma – Terfernadine – Acid Metabolite – Merel Dow had Patent over Terf – use of
Terf in body caused release of AM – this was discovered later by MDP – got a patent for AM as well
– later patent for Terf expired and their competitors started using it – instituted a suit for infringement
coz any drugs that cause the production of AM cant be sold by other people.
Issue: Was their novelty in the AM patent coz it was produced by human body?
Held:
a) The use of a product made the invention a part of PA only as long as that use made the necessary
info available

13
b) The invention was to be considered a part of PA if the information which had been disclosed
enabled the public to know the product under a description sufficient to work the invention
c) In this case anticipation by use was similar to anticipation by disclosure in that no one was aware
that the product was being made. The distinction here was that as regards the anticipation by use the
acts relied upon conveyed no information which would have enabled anyone to work the invention
but relied solely on the fact that the product had been made, while the anticipation by disclosure
relied upon the communication to the public of information which enabled it to do an act having the
inevitable consequence of making the product.
d) Invention here: Making of AM in the body by taking terfn
e) Knowledge of the invention above was made available to the public in the Terfn Appln. – enabled
the public to work the invention and produce AM in the livers – sufficient info in the Terfn. Appln to
make it a part of the state of art
f) Rejected the reverse infringement test in this case, stating there can be no anticipation by prior
uninformed use – but there was disclosure by the Pf. in this case, which allowed the people to work
the product. Hence, no patent.
Anticipation means disclosure in prior art. It could be anticipation by use or anticipation by
disclosure. Anticipation by disclosure would be when the patent was disclosed previously say in any
publication or specification. Anticipation of use argument relies on the fact that the invention was
previously worked and therefore amounted to disclosure. However, the court in Merell case rejected
this and held that anticipation by use also requires communication to the public.
India – Prior secret use – bar to novelty – Section 25(1)(d)
[ 25 Opposition to the patent. -
(1) Where an application for a patent has been published but a patent has not been granted, any
person may, in writing, represent by way of opposition to the Controller against the grant of patent on
the ground-
(a) that the applicant for the patent or the person under or through whom he claims, wrongfully
obtained the invention or any part thereof from him or from a person under or through whom he
claims;
(b) that the invention so far as claimed in any claim of the complete specification has been published
before the priority date of the claim-
(i) in any specification filed in pursuance of an application for a patent made in India on or after the
1st day of January, 1912; or
(ii) in India or elsewhere, in any other document: Provided that the ground specified in sub-clause (ii)
shall not be available where such publication does not constitute an anticipation of the invention by
virtue of sub-section (2) or sub-section (3) of section 29;
(c) that the invention so far as claimed in any claim of the complete specification is claimed in a
claim of a complete specification published on or after priority date of the applicant's claim and filed
in pursuance of an application for a patent in India, being a claim of which the priority date is earlier
than that of the applicant's claim;
(d) that the invention so far as claimed in any claim of the complete specification was publicly known
or publicly used in India before the priority date of that claim. Explanation. -For the purposes of this
clause, an invention relating to a process for which a patent is claimed shall be deemed to have been
publicly known or publicly used in India before the priority date of the claim if a product made by

14
 that process had already been imported into India before that date except where such importation has
been for the purpose of reasonable trial or experiment only;
(e) that the invention so far as claimed in any claim of the complete specification is obvious and
clearly does not involve any inventive step, having regard to the matter published as mentioned in
clause (b) or having regard to what was used in India before the priority date of the applicant's claim;
(f) that the subject of any claim of the complete specification is not an invention within the meaning
of this Act, or is not patentable under this Act;
(g) that the complete specification does not sufficiently and clearly describe the invention or the
method by which it is to be performed;
(h) that the applicant has failed to disclose to the Controller the information required by section 8 or
has furnished the information which in any material particular was false to his knowledge;
(i) that in the case of a convention application, the application was not made within twelve months
from the date of the first application for protection for the invention made in a convention country by
the applicant or a person from whom he derives title;
(j) that the complete specification does not disclose or wrongly mentions the source or geographical
origin of biological material used for the invention;
(k) that the invention so far as claimed in any claim of the complete specification is anticipated
having regard to the knowledge, oral or otherwise, available within any local or indigenous
community in India or elsewhere, but on no other ground, and the Controller shall, if requested by
such person for being heard, hear him and dispose of such representation in such manner and within
such period as may be prescribed.

9. Lakhpat Rai – process of manufacture of well known medicinal commodity – powder from calcining
bamboo – replaced iron with earthen ware – process is novel – had not been worked before
10. Rajprakash v. Mangat Ram– films in film strip viewer – cutting negatives into strips and using halves
– novel as no mosaicing allowed
11. Surendralal v. Jain Glazers – apparatus for producing wet laminate – prior art identical – no novelty
12. Standipack – pouch for storing and dispensing liquid – already used by IOC – no novelty

Industrial Applicability/Utility
US Utility Guidelines – Substantial, Credible and Specific Utility
13. Brenner: Steroid compound – analougous steroids showed tendency of inhibiting tumours in mice –
utility of this particular steroid not known
SC: Would have to show present utility of the compound – patent is not a hunting license, it is not a
compensation for search, but a reward for finding. Future utility irrelevant (slightly relaxed for
biotechnology innovations)
14. Eli Lilly: A patent filed for some gene of the protein family, which did not have any clear application.
UKHC revoked the patent as there was no industrial applicability. (7 conditions laid down by the high
court - read).
UK SC said, EPO granted the patent; if EPO has maintained consistency, then national courts should
follow. SC held that if there is some plausible use even if there is no specifically proven function, can
grant patent to a bioscience invention.

Inventive Step/Non-obviousness

15
S. 103 of US Patent Act – test: PHOSITA – person having ordinary skill in the art
Closest prior art taken into consideration to determine this
15. Haberman Case – designed milk bottle with two chambers to address spillage which was a major
issue – became an instant commercial sucess – just because it is simple does not mean it is obvious;
no prior art reference contained this + commercial success a factor in determining non-obviousness
16. Graham case: Plough share with shanks and hinge plates positions interchanged, added a stirrup or
spring plank and bolted instead of riveting.
4 Factors:
- Determine scope and content of prior art
- Ascertain differences between prior art and claims at issue
- Resolve the level of ordinary skill in the art.
- Look at secondary considerations such as commercial success, long-felt unsolved
needs, etc.
17. KSR v. Teleflex: Basically, an accelerator throttle mechanism which combined electronic sensor with
an adjustable automobile pedal was sought to be patented, but it was argued that it was not
significantly different from the prior art.
Held, by SC, don’t apply the TSM (Teaching-Suggestion-Motivation) test rigidly. Apply the Graham
factors, and see if the new product is obvious to a person skilled in the art. This case, the accelerator
improvement was obvious. PA refn. Need not be problem related – broad interpretation given to PA
TSM Test: Whether T, S, M emanate from prior art references? TMS test to supplement Graham Test
18. Windsurfing: laid down tests: a. identify inventive concept, b. assume mantle of generally
skilled but unimaginative addressee in the art, c. compare differences between the
known/used/alleged invention, d. check if differences are obvious to a skilled man without
knowledge of the invention. To check hindsight bias
19. Pozzoli – CD stacking method – technical prejudice against invention may contributed to non-
obviousness, not found on facts – switch (a) and (b) in Windsurfing
Final Tests:
a) i) Identify PHOSITA – ii) Identify relevant common GK of that person
b) Identify inventive concept
c) compare differences between the known/used/alleged invention,
d) check if differences are obvious to a skilled man without knowledge of the invention.

Indian Patent Office follows the Windsurfing Test over Pozzoli

Mosacking can be done at this stage – to check non-obviousness, not to check novelty

Rights of Patentees:
48 Rights of patentees. -Subject to the other provisions contained in this Act and the conditions
specified in section 47, a patent granted under this Act shall confer upon the patentee-
(a) where the subject matter of the patent is a product, the exclusive right to prevent third parties,
who do not have his consent, from the act of making, using, offering for sale, selling or
importing for those purposes that product in India;
(b) where the subject matter of the patent is a process, the exclusive right to prevent third parties,
who do not have his consent, from the act of using that process, and from the act of using,

16
offering for sale, selling or importing for those purposes the product obtained directly by that
process in India

S. 45(3) – cannot commence a suit for infringement before the date of publication of the appln.

S. 66: Revocation in public interest

S. 65: Revocation of patent
Infringement
2 types:
a) Literal infringement: If all elements same [1)meaning of claims to be interpreted 2) If product
infringes those claims, infringement]
b) Equivalent Infringement
20. Markman: tracking system for dry cleaners – no literal infringement – one method tracked individual
clothes while the other tracked batches by serial numbers - Look at claim – then all claims – then
specifications then prosecution history the First Examination Report then prior art (intrinsic evidence)
– If all this is insuff – look at expert testimony (extrinsic evidence) – claim construction is a question
of fact and law – cannot be done by a judge
21. Van der Lely: device for raking crops – one dismounted hind wheels, while the other dismounted
front wheels – whether essential integers copied? (Pith and Marrow) – No, as hindwheels different
from front wheels – patentee must unequivocal describe the patent
22. Catnic Components: Lintel patent – one extended vertically and other slightly inclined at 6’–
purposive interpretation test along with pith and marrow test.
(a) no material effect on the way the invention works,
(b) the lack of material effect is clear to one skilled in the art and
(c) it would be apparent to the skilled reader that the patentee could not have intended strict
compliance, then the variant infringes the claim
23. Winan v. Denmead – Court emphasized on the principle and mode of operation rather than each part
of the invention – the exclusive right to the thing patened may be useless if the public is at liberty to
vary its form or proportions and make substantial copies of it.
24. Graver Tank: electric welding machine – one used magnesium, one used manganese - doctrine of
equivalence: when the product performs substantially the same function, in substantially the same
way, to achieve the same result, then there will be an infringement by the doctrine of equivalence –
infringement found
25. Warner Jenkins: ultra filtration process of dyes – another Booth patent operating at pH more than 9 –
In the course of the prosecution of the application applicant modified claim to make it between 6-9
pH – infringer at 5 – Prosecution History Estoppel is an exception to equivalents doctrine – PHE
applicable only if claim amended to make it patentable – burden on plaintiff to show amendment was
for some other reason – to the extent that the claim was narrowed – p/f cannot claim equivalence
doctrine
26. Festo Corp: Magnetic rodless cylinder – PHE is limited to amendments made to avoid prior art or
enable patentability of application – Pf. has burden to rebut complete bar of PHE
-equivalent unforeseeable at the time of the application
-may have no more than a tangential relationship to the rationale behind the amendment
-for any other reason the applicant could not have reasonably expected to have described the
particular insubstantial substitute

17
27. Whittemore - use of machine for research or experimenting is not infringement. [Experimental Use
exception]
28. Roche v. Bolar – Exception for experimental use – narrow back end distortion – testing for clinical
trials is not allowed during patent term
Reason for Bolar Exception: When a patent expires, takes 3-4 years for competitors to enter market –
permissions reqd/trials conducted – have to satisfy Bio-availibility and Bio-effects tests

Section 47(3) of the Patents Act India:

Grant of patents to be subject to certain conditions. -The grant of a patent under this Act shall be subject
to the condition that-
(3) any machine, apparatus or other article in respect of which the patent is granted or any article made by
the use of the process in respect of which the patent is granted, may be made or used, and any process in
respect of which the patent is granted may be used, by any person, for the purpose merely of experiment
or research including the imparting of instructions to pupils; and

Law amended in USA to create Bolar exception – Section 271(1)(e), US Law

29. Merck: pre-clinical trials covered under the Bolar exception - if you don’t have a reasonable basis that
your drug will be successful or the tests will produce information relevant to the FDA approval, it
would be infringement

Defences in an infringement suit

Compulsory Licencing: S. 84
1) Only after expiration of 3 yrs – Appln to controller
2) Reaosnable requirements of public have not been met – or [extent of use by public]
3) that the patented invention is not available to the public at a reasonably affordable price - or
4) that the patented invention is not worked in the territory of India

30. Natco Pharma v. Bayer: Compulsory licensing of Nexavar – satisfied all three conditions of S.84 –
worked in India means that meanufacture to a reasonable extent in India
31. Lee Pharma and Astrogeneca – refused compulsory licensing because similar substitutes to the
patented drug were available at reasonable prices

Article 27, TRIPS – non-discrimination goes against Section 84 – but justified by Article 8 read with
Article 31 – 27 applies in case of revocation, CL is not revocation. – interest of the nation.

Parallel Imports –

32. Quanta v. LG – S.107A applies to both product patents and process patents

Standard Essential Patents

Standards: Common set of features agreed upon by companies

Purpose: Common language for interoperability

18
SEP: Once a standard is set and the tech has a patent, the tech and the patent both need to be followed. It
is essential to practice these patents.
- Unlike conventional patent – no alternative if the patent holder refuses to grant licence
- Unlike CP, greater market – coz of SEP
- Possibility of abuse of dominant position – increasing royalties – SSO came up with FRAND to
address this
Fair, Reasonable and Non-Discriminatory (FRAND) Licensing Principle – SSO
 Fair – license to all who seek it
 Reasonable – rate of royalty (In proportion to component value and not whole product value + no
change without change in component value)
 Discrimination – similarly placed applicants

Issue of Royalties:
- Can either be on a proportion of the whole cost (of smartphone containing basement processor
which has all the SEPs) – some say unreasonable – too little
- Or can be on the whole smartphone cost – unfair coz tech doesn’t change with smartphones
priced higher

Injunctions sought by patent holders: [READ NOTES AGAIN – FIGURE OUT WHAT THIS IS.]
Instead of injunction, Court could direct payment of interim royalty

Software Patents: CRI Guidelines.

Trademarks
Four features of TM – identification, source, quality and advertising

Justification for legal protection of TM

i. Creativity – reward for investment
ii. Providing of information and increase in market efficiency
iii. Another person should not be allowed to take unjust benefit of someone else’s reputation –
ethical justification

Distinctiveness

1. Two Pesos v. Taco Cabana; Abercrombie Test – mark is protected if it is inherently distinctive or it
had acquired distinctiveness through secondary meaning.
2. Eastman Photogrpahic Materials – Solio is fanciful and distinctive, even though derived from Sol
which means sun

Inherently Distinctive – Fanciful, Arbitrary and Suggestive Marks

Non-inherently distinctive –Descriptive, Geographical and Personal Name
No distinctiveness - Generic

19
Suggestive Marks – Degree of Imagination Test and Competitior’s Need Test

Descriptive Marks – direct information about product + nature of audience + reasonable

informed shopper
 Time-Exclusivity-Advertising Test for Secondary Meaning

Colour
3. Qualitex v Jacobson: green-gold pads sold for dry cleaning companies (US)- Symbol? Distinctive?
Functional?
i. Colour could be a distinctive ™ since it can acquire secondary meaning
ii. Not hit by functionality doctrine unless it is puts competitors at a ‘non-reputation related
disadvantage’. If you are actually exhausting colours on spectrum, functionality doctrine
would come into play.
4. Smith, Kline and French – Colour combinatons on drugs – showing sustained release of drugs –
acquired distinctiveness
5. John Wyeth’s Coloured Tablet TM App – colour for dosage – common for industry and could not
acquire secondary meaning
6. Libertel – Graphical representation of colour through sample is not accepted, but sample with verbal
description (Pantone numbers) may be accepted
 Balance public interest v. private interest
 Breadth of specifications = More public interest affected
 Stringent analysis needed
 Secondary meaning – other traders do not use and/or customers recognise

Heidelberger Bauchemie
Not spatailly limited, too many objects, different way in each
Too many possible combinations not clear that it would stay in consumer memory

Sound
7. Harley Davidson case – applied three factor Qualitex test
i. Description of symbol - no fixed sound that can be described since it is engine
ii. Secondary meaning? No, consumers unlikely to be able to tell from other engines
iii. Functionality doctrine applies since it is a function of the concerned engine design

8. Shield Mark: First nine notes of Fur Elise and cock crow - EU reqmt of graphical representation is
fulfilled by the presentation as a stave with accidentals and relative values. Not when there is a mere
written description of the type of sound’. ECJ: graphical representation must be clear, precise, self-
contained, easily accessible, intelligble, durable and objective

Smell

9. Venootsshcap onder application: Fresh cut grass smell of tennis balls – acquired distinctiveness

20
10. Ralf Sieckmann - EU said you can’t ™ scent. Chemical formular; deposit of sample and verbal
description are all too vague. Chemical formula amounts to protecting the substance itself. Sample
can fade over time.

Sumotimo Tyres - rose scented tyres. Had acquired secondary meaning since the name couldn’t
be remembered easily. UK granted ™ because it acquired SM.

In re Celia Clarke - US granted protection to smell of plumeria blossoms for yarn and sewing
thread. 1) advertised so customers would identify 2) uncommon in the industry and therefore not
fucntional

Shape
11. James v. Soulby – A thing cannot itself be the mark
12. Coca Cola TM Application – rival manufacturers should be able to freely use the shape of the bottle
provided there is different labelling and packaging
13. Philip v Remington: Razor with triangular head and rotating blades. This shape was their trademark
by giving a picture of the same. Another razor with the same shape was allegedly infringement.
 Mere capricious embellishment not necessary
 Can acquire secondary meaning
 Mark unregistrable if it is established that essential functional features of that shape are
attributable only to the technical result – presence of other ways of achieving the same function
immaterial
14. Swizzels Mazlow TM Application – rejected because shape related to sweet on stick – entirely
functional
15. Proctor and Gamble TM Application - boneshaped soap, functional as helped in grip – also,
invisibilty of shape

S.9(3) Test, TM Act – Compare value of product with same product without the shape (after
discounting cost of the two materials)

Absolute Grounds for Refusal

Secondary meaning depends on relevant class of persons, extent of descriptiveness and % of recognition
(but no fixed formula)
16. Cadila v. Gujarat Cooperative – Secondary meaning ascertained through various factors, viz. the
extent of its use qua the product, the expenditure incurred by the plaintiff in marketing and promoting
its product under the said trade mark, the profits and sales revenue revenue etc.
17. Amritdhara Pharmacy - An unwary purchaser of average intelligence and imperfect recollection
would not, as the High Court supposed, split the name into its component parts and consider the
etymological meaning thereof or even consider the meanings of the composite words as 'current of
nectar' or current of Lakshman'.

Relative Grounds for Refusal

21
18. Durga Dutt Sharma – If marks are identical, deceptive similarity is presumed – otherwise, BoP on
plaintiff – take into consideration phonetic, visual and conceptual similarity
19. Deekonda – Number altered but label retained – 501 and 502 – similarity
20. Centron Industrial Alliance – changing language with similar get up and colour scheme – similar
21. Chinna Krishna Chettiar – Andal - Ambal Goddess most distinctive feature fixing in the recollection
of an average buyer – phonetically, deceptively similar
22. Dychem – Picnic and Piknik – Three factor test
 Whether special aspect of common feature copied?
 Mode in which parts put together w.r.t whole?
 Dissimilarity of parts compared to common parts – can lead to dissimilarity of whole
 Ignore phonetic similarity
23. Cadila v. Cadila – Falcigo and Falcitab
 Higher threshold for medicinal products – chance of confusion is detrimental
 Consider totality of marks and not individual similarities or dissimilarities
24. Corn Products Refining – consider similarity at first impression – can be first point of sale or use
25. De Cardova v. Vicks – Vapour Rub – although generic, had acquired distinctiveness – Vicks
26. General Motors – Reputed is qualtitaively higher than well known – depends on market share,
intensity of advertisement etc.
27. Luca Bols v. Colgate – Claeryn Gin and Klaren detergrent – tarnishment - capacity of the mark to
stimulate the desire to buy is impaired
28. C.A. Sheimer TM Application – Visa for condoms – tarnish image of financial institution

Tarnishment - capacity of the mark to stimulate the desire to buy is impaired

Dilution – lessening capacity of famous mark regardless of likelihood of confusion (Victoria’s

Secret v. Victoria’s Little Secret for adult toys – if identical, proof of association in the mind of
consumer sufficient. If not, actual damage must be proved)
US Law changed – likelihood of dilution enough

Blurring – impair distinctiveness of famous mark

29. British Sky Broadcasting Case – BskyB and Skydrive – likely to cause confusion and detrimental to
BSKyB TM

Deceptive Similarity – relevant factors

 Nature of marks
 Degree of resemblance
 Nature of goods
 Similarity in nature, character and performance of goods
 Class, intelligence and education of purchasers
 Mode of purchase

22
30. Irwing Yeast-Vite Case – Marketing product as substitute of Yeast-vite – every improper use of TM
must be infringement – criticised in Bismarck Case. Did not includes Section 4(1)(b) in India
(Rajagopal Iyengar Committee)

Deception and Confusion

31. Parker Knoll – Deception – lie or misrepresent knowingly or intentionally; Confusion – not required
32. Ford v. Borman – S.29(4) applies only to TMs that have earned a reputation in India
33. Yale Univ v. Yale Academy- Yang+Lee – did not intend to deceive, but still confusion – changed to
Y2 Academy
34. Daimler Benz – Three pointed star – humbled by indiscriminate colourable imitation for underwear
35. Whirlpool v. Dongre– had worldwide reputation, even though TM expired – defendants injuncted
from using it
36. Aktiebolager Volvo v. Volvo Steel – fraudulent intention to benefit from Pf’s goodwill – injuncted
37. Caterpillar Inc – CAT and Caterpillar used on underwear – TM law does not protect someone who
deliberately sets out to take advantage of another’s reputation

Comparative Advertising

38. L’Oreal SA: EU Comparative Advertising Directive does not allow you to say that you are selling
imitation perfumes – unfair advantage
39. Reckitt and Colman v. Ramachandran: Ad disparaged Pf, calling it uneconomical and showing poor
quality, even though did not mention it by name (Showed container + Rs 10 price) – 5 principles
 Can declare goods are best, even if untrue
 Can declare goods are better, even if untrue
 Can compare advantages of his goods vis-à-vis others
 Cannot say competitior’s goods are bad
 If defames, action for damages and injunction lies
40. Paras v. Ranbaxy: Moov and Volini – shows moov as ineffective – not allowed, distinctive purple
colour of moov used
41. HUL v. Reckitt Benckiser – Dettol v. 5 soaps (one of them red) – not a reference to Lifebuoy
42. Pepsi v. Hindustan Coca Cola – Peppi instead of Pepsi – disparagement – bachche wale drink, wrong
choice, baby
43. Dabur v. Colgate – although dant manjan not mentioned, but had 80% market share – disparagement
against a class allows an action
44. Colgate v. Anchor – Claim that anchor is the only toothpaste, first all round protection, 30% more
cavity protection, 10 times more effective – amounts to unfair trade practice, but not disparagement
45. Havells India Ltd: Ad of brightest LED – if comparison based on evidence, no disparagement
46. Ciba Geigy v. Parke Davis: Drug advertised as green apple. Competitor advertised as bitten green
apple to shown 25% cheaper – objectively verifiable fact – no disparagement

Passing Off

23
Hardline Approach – Only if TM and Goodwill in that jurisdiction
Softline Approach – Mark need not be used, as long as reputation earned in that jurisdiction

47. Staple v. Staple – Both had registered TM – Court used passing off test
48. Ellora Ltd – Use of product name as trade name – S. 29(5) – passing off not allowed.
49. AG Spalding Brothers – No person who has goods of another in his hand has the right to Represent
anothers goods to be a different quality or belonging to a different class
50. Advocaat case – Multiple manufacturers - Advocaat and Old English Advocaat – no natural
association between the two products [Extended passing off – goodwill of multiple
manufacturers will have to be considered – latter hurt the goodwill and reputation of the
former]
Test:
 A misrepresentation
 Made in the course of trade by a trader
 Made to prospective customers or ultimate consumers
 Calculated to injure the business or goodwill of another (reasonably foreseeable)
 Causes actual damage to the business or goodwill
51. Bombay High Court Case – passing off in extended form – Blended with Scotch

52. Reckitt and Colman v. Borden - Classical Test (Single Manufacturer)– try to say that my goods are
same as yours

 Goodwill or reputation established – in the minds of the purchasing public – identifying the
product
 Misrepresentation to the public that the goods offered are the same
 Damage – or likely to cause damage due to the misleading belief.

53. Maxwell v. Hoggs: Belgravia – wanted to launch – advertised through defendant, but defendant
launched – mere declaration of intention does not grant goodwill – no passing off
54. BBC v. Talbot: Wanted to use CARFAX for traffic info services and was about to launch the same.
Another co started using the same for car parks. Court said that pre-trade goodwill is goodwill and
therefore BBC has goodwill.

55. Star Industrial: Even after closure of business, goodwill remains – can be used to revive business
56. Sheraton Corporation v. Sheraton Motors: Mere presence of booking office in UK of hotel chains –
sufficient to grant injunction agaisnst d/f who wanted to start a motor vehicles business
57. Bernadin Case: No evidence of English customers – no goodwill, but mere mark well-known, Courts
will recognise
58. An heuser Busch: Budwieser Budvor – d/f selling beer with ‘Budvor’ - Hardline approach – Beer not
sold in UK – no goodwill, even will well-know
59. Conagra: Globalisation – claimant may set up biz in future – need to protect good will

24
Summary of Misrepresentation
 Nature of misrep – def. state of mind is irrelevant, forms of representation (use of words, placing
with other goods on the internet) must be considered.
 Types of suggestive conduct – as to source, quality, claimant’s control or responsibility
 Whether deceptive – Court decides – considers relevant public, substantial number, point of
deception (first impression, subsequent impressions, point of sale, point of consumption)
 Factors to consider for misrep– strength of claimant’s mark, similarity of marks, proximity of
business, characteristics of the market, disclaimer (may not exonerate, but may help if it is an
honest disclaimer), whether parodies?
 Damage: Diversion of sales, Injurious association, Misrepn business reputation, Misrepn of
personality – may not always be monetary

International Exhaustion
Samsing Electronics v Kapil Wadhwa: Import from Korea of models Samsung wasn’t selling in
India. Single judge said India follows national exhaustion and defendant was infringing ™.
However overruled by Division Bench which interpreted section 30(3) to say ‘market’ means
international market.

Dabur India v Real Drinks - Real has been used for a long time and is entitled to protection as a
suggestive and arbitrary mark. Defendant infringed on ™ by adopting the same name for its
aerated drinks.

Trademark in Domain Names

Heirarchy: (www.nls.ac.in)Root – Top Level Domain (CCTLD, GTLD) (.in) – 2nd Level Domain
(ac/gov/co) – 3rd level domain (nls) – 4th level (www)
60. Panavision v. Toeppen: Cybersquatting by Toppen of MNC domain names – dilution of Panavision’s
TM, FCFS cannot circumvent – intention to extort money
61. Marks and Spencers v. One in A Million: Similar to Toppen - Passing off upheld – erodes goodwill in
name
62. Yahoo v. Akash Arora: yahooindia.com – Although Act did not cover marks for services, passing off
could apply - domain name serves the function of TM – instrumentality of good will– disclaimer
insufficient – initial interest confusion (like peta)
63. Satyam Infowave v. Siffynet: P/f used sify – d/f wanted siffy - Domain name operates like TM –
passing off applicable – customers identified with plaintiff – phonetic similarity – deception/misrepn
+ damage or likely to cause damage

UDRP – Uniform DN Dispute Resolution Policy (ICAAN – Internet Corpn. For Assigned
Names and Numbers) – operates dispute resolution facility – criteria for complaint:
 DN identical or confusingly similar with TM or service mark
 DN holder has no right or legitimate interest in DN [can be rebutted – bona fide offering of
goods/services, commonly known under that name even if not regd, legitimate, non-commercial,
fair use].

25
  DN is registered and used in good faith (Selling DN at a premium, prevent owner of TM, disrupt
business or gin business advantage)

Designs
What is design?
a) Features of shape – the external form of the article
b) Configuration – arrangement by which the shape of a composite article (made up of different
parts) is arrived at
c) Pattern – 2D or 3D patterns
d) Ornamentation – used interchangeably with pattern – 2D features
e) Composition of Lines or Colours

Requirements for Regd:

 The design has to be ‘novel’ or ‘original’,
 and has to be applied to an ‘article’. How is it applied to an article? By an industrial process or
means – manual, mechanical or chemical, separately or by combined process.
 It must appeal to or be judge solely by the eye

S. 2(d) of the Designs Act, 2000:

(d) “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) 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 Copyright Act, 1957 (14 of 1957);

Duration: 10 yrs – extendable by 5 yrs

Novelty or Originality

Novelty means that the design has never existed before

Originality means that the design exists, but it is being applied in a new way – nor article in the same
class with the same design or applied to an analogous article

Applied to Article

Article must have existence independent of design – must be capable of being bought and sold separately
2(a): (a) “article” means any article of manufacture and any substance, artificial, or partly artificial and
partly natural; and includes any part of an article capable of being made and sold separately;

26
1. Kenneth Cobonpue’s Sofa Design: Croissant sofa – made with different material, but not a different
design – material irrelevant [Therefore, copying a design applied to an article made with a different
material not entitiled to protection]
2. Ford Motor Co Ltd: Design must be applied to article that has independent life as article
and not just as adjunct. Separate design protection cannot be granted for separate car parts.
 wing mirrors, wheels, seats and the steering wheel were subsidiary (and not primary) to its
essential shape, and they were made and sold separately. Hence, they were registrable.
 HOWEVER, spare parts like bonnet and side frame forming part of and contributing to the
overall shape and appearance of the vehicle were not registrable

Appeal Judged Solely by the Eye

Special, Peculiar, Distinctive, Significant, or Striking Appearance.

3. Interlego v. Tyco: ‘eye appeal’ refers to the appeal that is “created by a distinctiveness of shape,
pattern or ornament as calculated to influence the customer’s choice”
4. K K Suwa Seikosha’s Design Appeal: digital watch whose interface design was not visible when the
watch was purchased but only when it was connected to circuitry – Court said that such a design was
entitled to protection too.
5. Ferro and CSPA’s Application - Design for a chocolate egg that was not visible at the time of
purchase – Court said that it was inevitable that the peel would be removed and the egg would be
seen, hence it did have an eye appeal and it was entitled to design protection

Functionality

6. Cow and Co.: Diagonal arrangement of ribs on a hot water bottle – arrangement was not solely
functional, hence entitled to design protection – other ways to do it
7. Smithkline Beecham: Dominant purpose test – toothbrush head’s dominant purpose was functional
and not aesthetic – no design protection

Scandalous and Obscene

S. 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. 

8. In Mastermann’s Design: the test for immoral design is not whether a majority or large section of the
public finds it immoral, but whether right-thinking members of society would find it to be so – male
Highlander doll, with genitals being revealed when his dress lifted.

27
Procedure: Application – Examination – Objections – Acceptance: certification – Publication (After that
may be cancelled) – If refused, appeal to HC

Piracy
3 grounds:
- Fraudulent or obvious imitation or appln of design
- Importation for sale
- Publish/expose for sale w/o consent

9. Dunlop Rubber Co: Obvious imitation – unmistakable resemblance is immediately apparent to the
eye; Fraudulent imitation – deliberately based on the design, and subtle distinction, so less apparent

Design under UK Law

No reference to eye appeal or aesthetic value – only visual impression

New - no identical design or no design whose features differ only in immaterial details available to public
Individual character - if the overall impression it produces on the informed user differs from the
overall impression produced on such a user by any other design

If your freedom is restricted, even minor changes are sufficient to establish individual character

10. Dyson v. Vax: Informed user would be able to distinguish between the two vaccum cleans – curved
and angular
11. Gardeco Limited: Informed user stands somewhere between an average consumer under trademark
law and a sectoral expert. He is a particularly observant man because of personal experience or
extensive knowledge in the area.

Unregistered Design Right (UDR) – only in UK, not India

Design right does not subsist unless and until design has been recorded in a design document or an
article has been made to the design. Protection is given only to 3D aspects unlike registered designs.
India also has other categories like patterns, ornaments etc. It also excludes surface decoration, methods
or principles of construction, must fit exclusion, must match exclusion, not original and common place
designs.

12. Marwikinson: In a modular kitchen, quadrant corners will get UDR, but painted finish and grooves
excluded as surface decoration
Registered Design Unregistered Design
Appearance of article 2D and 3D Aspect of shape or configuration of whole or part
of article – only 3D
Exclusion - utility Exclusion – method or principle, must fit, surface
designs
Total protection except for secondary infringement Protection from commercial use – secondary

28
 protection
Upto 25 years 10 years + 5 years of limited rights

To Do
UNDRP - Domain names and trademarks
Passing off - more cases
Check all emails once
Procedure for Patent Application - important
p 209 for 2012 Amed=ndment

Maanav’s Lecture on Fair Use

Fair Use [FU] is a 4 factor test – if you satisfy the criteria, no infringement
 Purpose and Character of alleged infringement – are you doing it for educational purposes,
criticism, review or personal profit?
 Nature of © work -
 Substantiality of the portion used of the © work – Even if you take 10/100 pages, but that’s the
most important part, it can be substantial (qualitatively)
 Effect my use has on the market for © work – does it substitute a original work

84. DU Photocopy Case: Photocopying permitted in the course of instruction – use in course of
instruction under Section 52(1)(i) – to complete process of learning (vague standard) – licensing
arrangement by publishers – hurts incentive to invest.

Geographical Indications
Art. 22, TRIPS – Identidy a good as originiating from that part or territoryQuality, reputation or other
characteristic is attributed to the geographical origin
Art.23, TRIPS – Wines and Spirits – no talk of characteristics

Differences between GI and TM

 GI conditional grant of rights
 GI deals with place, TM deals with person or source
 GI only goods, TM goods and services
 GI community right, TM individual right
 GI applied by community, TM applied by individuals

Prohibition on TM which uses GI – Section 25 GI Act

If TM already in use in good faith, and GI regd subsequently, allow concurrent use – S. 26 GI Act

29
1. Parma Ham Case – GI is to be entire package of rights - Ham cannot be purchased in Italy, but
processed in UK – processing has to happen in Italy [enable people of that area to maintain quality] –
may be sliced in supermarket in UK.
2. Len Marc – Patent exhaustion is national exhaustion in USA
3. Bailey v. Clark – Glastonbury Slippers not granted TM – coz would not be fair to producers from that
area
4. ITC – cigarettes cannot be called Shimla, even though no manufacturers there – prejudice future
manufacturers

Traditional Knowledge
Bushmen Tribe and Kudiga Cactus – Pfizer made into slimming drug – 10% royalty to Bushmen – prior
informed consent not taken and consultations not done – Access and Benefit sharing

Kani Tribe and berry – Scientists made into Jeevani drug – ABS agreement to be reached and royalty to
be paid

Traditional Knowledge Digital Library (TKDL):

MODELS OF GOVERNANCE Disclosed TK Undisclosed TK

Identified TK Holder
Unidentified TK Holder
Compensatory liability (for
holder)
Compensatory liability (for
authority)
Proprietary right/prior informed
consent or mutually acceptable
terms/compensatory liability
Not known lol

Doha Ministerial Declaration:

TK of 3 types: 1) TK in strict sense 2) TK in cultural expressions/folklore, etc. 3) TK in genetic varieties
Defensive Protections – only community can use

Reasonable Effort must be taken to identify TK holders – if taken and not identified – can use

Positive Protections – rights of community members

Article 15, CBD – Consent of People before commercial utilization

Turmeric patent revoked citing prior art in TK

Copyright Extras

Alberta v Canadian Copyright Licensing Agency -

Purpose: teaching, numbers irrelevant

30
Amount: its still one copy per student. Don’t look at number of copies but in proportion to total
work.
Effect - won’t affect copyright holder
Alternatives - school can’t purchase so many copies

Kienitz v Sconnie Nation: “Sorry for partying” Edited image, only outline of the face remained
=> not copyrightable
Unlikely to reduce market for the actual image.
Dissent: Could have used other noncopyright picture.

Campbell v Accuflux: Pretty Woman parody.

Nature- very different
Amount - whole song had to be used for parody
Effect - nothing like the original
Purpose- not meant to reproduce, transformative work

Character
Nichols v Universal Pictures Corpn - a play about the marriage of a Jewish man adn Catholic girl
was made into a film though this had various modifications to the story and underlying theme. J
Learned Hand said that it is possible to accord separate protection to characters but they would
have to be sufficiently developed and distinct for that to happen.

Warner Bros. v. Columbia Broadcasting System

‘vehicles of the story’ test: book written with central character- Sam Spade and rights in the book
assigned to Warner Bros. Author continued writing books with the character- WB tried to stop.
Ct: characters are mere vehicles of the story. sale of story does not mean sale of character. price
of assignent indicated only the parrticular story sold ot the character itself

Walt Disney v Air Pirates

Disney’s cartoons were portrayed in comic books. Except instead of being happy they were
weird drug dealer sorts. This was held to be damaging to their reputation.
Court also observed that this wasn’t a parody since there was a greater degree of similarity than
would be required for one. Also, cartoon characters are more copyrightable than characters in a
novel (this overcomes Learned Hand’s objections in the Warner Brothers case)

Leslie S Klinger v Conan Doyle Estate

Essentially dismantled Holmes’ character into pre-1922 public domain and post-1922
copyrighted version. Rejected the estate’s argument that the charcater would onyl pass into the
public domain in 2022.
They rejected the argument that we must distinguish between elements that ‘complete’ a
character and don’t :*. Rather, they should together be seen as increments of expression and
warranting copyright protection.

Raja Pocket Books v. Radha Pocket Books

31
Character of Nagaraj and Nagesh held to be similar in appearance, character and origin. Look at
it from the point of view of customer of reasonable intelligence

Frederick Hart
Use of West Entrance of Washington Cathedral designed by Hart in Devil’s Advocate. the
images all come to life and become frisky. Hart threw hissy fit. settles by putting up a disclaimer.

Ownership of Copyright
S. 17

Contract of Service:

Zee Entertainment v Gajendra Singh

Gajendra Singh employed to write the concept of the show Antakshari. Looked at cotnract itself
to decide whether it was contract of serivce or for service. Had elements of both (obvsly)
Looked at individual components like TDS, ‘salary’ to hold that it was a contract of service.

Course of employment

Stevenson Jordan v. Mac Donald

accountant- wrote lecture series in his own time from experiences gained. Wrote a book
including lectures + info gained from a particular client. Ct: lectures outside scope of contract
(and written in his own time) but copyright in info from a particular customer will be with
employer.

VT Thomas v Malayala Manorama

comic strip- same characters. Ct: MM will have copyright over the strips produced during tenure
of employement. But not over those produced under employment of diff newspaper even though
same characters

Contract to contrary

Noah v. Shuba
guide to hygienic piercing by employee of Public Health Lab Services. Practice was to assign
ownership explicitly under contract233

Missing Link v Magee

Employed to write a particualr type of software and in the course of the same wrote another
software very similar to what he had been hired to write. Court said that this is really similar to
what he was hired to do and therefore the company will have ownership since it was within the
‘scope’ of his contract.

National Exhaustion
John Wiley (US) - import from Thailand was valid since the person lawfully acquired possession
of these copies there.

32
Omega v Costco - Omega had authorised distributors across the world; Costco tried to become
distribution. So he purchased 117 watches in US and sold them at a lower price in the US. Right
of first sale doctrine prevents his rights.

Delhi HC John Wiley v Prabhat Jain - India permits only national exhaustion so that means that
parallel imports are illegal.
When you purchase from an exclusive licensee you cannot claim exhaustion to defeat the right of
the owner.
Patent Extras

Process
Cochrane v Deener - series of acts to refine the flour, not tied to a particular machine.
Machine
Corning v Burden - the device is the crucial element is granting a patent
Manufacture
American Fruit Growers Assn - no transformation when dipped fruit in borax and therefore no
manufacture.
In re Nutjen -tangibility is necessary element in manufacture
Composition of Matter
Need a combination of two or more elements, either chemical or mechanical. (Diamond v
Chakravarty)

Judicially created exceptions

Abstract Idea
● Gottschalk v. Benson: Algorithm for conversion of binary coded decimals to binary.
Held, idea that was not tied to a particular application and therefore not patentable.
● Parker v. Flook: Mathematical algorithm. Held, not patentable as a process as it was a
law of nature/principle. Its application to calculate alarm limits was not considered to be
relevant.
● Diamond v. Diehr: Mathematical algorithm but with core practical application for the
molding press. So, was granted patent protection as not just an abstract idea.
● Bilski v Kappos: Business method for determining how to hedge losses, not patentable.
The machine-or-transformation test was held to be not a determining factor, but rather a
useful clue as to whether invention was patentable. In this case, it was really broad and
had undergone no change to make it only applicable to this industry.
● Alice Corporation: Patent for software settlement (some risk mitigation thing). The claim
was for the method, medium and system. SC excluded it using the Mayo 2-step test [step
1: is the claim related to a non-eligible concept like a law of nature? Step 2: Is there
anything in the claim which will transform it to a patent ineligible concept?] . Said, not
patentable subject matter since nothing significantly more than an abstract idea.
● State Street Bank: Business methods not excluded for the first time. Said, no need to add
to already existing exclusions. Algorithm used to manage accounts etc.
● AT&T: Tangibility does not mean physicality. Useful, concrete and tangible result was
produced by an algorithim to calculate differential billing rates for subscribers making
long-distance calls.

33
Laws of Nature
● Funk Bros. Seeds Co. v. Kalo: Related to developing rhizobium bacteria to fix nitrogen in
a more efficient manner. Said law of nature directly used. No patent. Must be application
of law of nature for a new and useful end.
● Diamond v. Chakrabarty: Chakrabarty came up with a solution for oil spills. Created
(from existing bacteria) a new bacteria with 4 plasmates (earlier ones had 3) for eating
oil. The patent was for process+carrier+organism. The third was rejected, as bacteria is
product of nature. SC said, there is a new product of human ingenuity with distinctive
character (falls within definition of manufacture/composition of matter) Not merely
nature’s handiwork. So, granted patent.
● Mayo Collaborative Services v Prometheus: Attempted to patent a process by which the
doctor would administer a drug; determine its effectiveness and increase/decrease dosage
depending on how the body reacted to metabolites. This was held to be a direct
application of a law of nature i.e. how the body reacted to the dosage and was therefore
not patent eligible.
● Association for Molecular Pathology v Myriad Genetics: Isolated a particular DNA
sequence. There was no change. So no human intervention. A naturally occurring DNA
segment is a product of nature, so not eligible. However, they came up with something
called cDNA which is arrived at after some intervention. Held, this was not found in
nature and so is patent eligible.
● Oncomouse: a mouse that is genetically modified to develop cancer in order to facilitate
cancer research.
The patent was granted and not challenged in the US.
The EPO held that it is not an animal variety under Art 53 and also rejected public
morality arguments on the ground of greater good.
Canada - while the oncogene injected egg may be patentable under Canadian law, the
body of the mammal certainly is not.
● Upjohn - mouse with gene causing hair loss was held to be immoral.
● Relaxin - DNA sequences on how to relax the uterus during childbrith. Held to be valid.
Tissue was donated and did not offend human dignity.

Exceptions
Whittenmore v Cutter: use of machine for research or experimenting is not infringement.

Roche Products v Bolar

Roche attempted to stop Bolar from taking any steps to market the generic drug on the ground
that the use of drug for premarketing tests is in violation of patent laws.
The trial court held that it was permissible since it was experimental and de minimis however
this was reversed on the ground that the experiment was not not insubstantial commerical
purpose.

After this case, Section 271(e)(1) was inserted to make an exception for clinical trials.
In India Section 47(3) provides for such an exception.

34
Eli Lily v Medtronic - the exception was not limited to drugs but extended to the testing of
cardiac devices.

Novelty
Inherency
Continental Can Co. v. Monsanto: Had a conobase patent for hollow ribbed bottles. Prior art was
the Marcus patent, which was argued to have anticipated the conobase patent. Held, Marcus
patent inherently discloses the manufacture of the conobase bottles. It was remanded for further
examination. (hollow ribbed bottom was impliedly included in patent for solid bottom)
● Asahi Kashei Kagyo: Earlier art disclosed a genetic structure but not the process of
obtaining the same. Since it is not an enabling disclosure it does not follow that there is
no room for another patent.
● General Tires & Rubber Co v Firestone Tyre & Rubber: if carrying out the directions in
the prior publication would inevitable result in something being done that would infringe,
then there would be anticipation. If there is a chance that there may not be infringement,
then no anticipation, even though it might fail on grounds of obviousness.
Accessibility of Prior Art
● In re Leo M Hall: A dissertation kept in the library amounted to prior publication. Since
in the library with normal process of cataloguing etc., implied that was publicly
accessible.
● Re. Cronyon: Held, meaningful indexing was needed to amount to publication, and the
thesis in the cupboard would not be accessible.
● Amex v Mopex: despite the lack of indexing, the fact that the library was dedicated to
business methods means it was more accessible.

● Merrell Dow: Some drug (terfanedine) produced an acid in the liver, which acid they
sought to patent. Argued, it was part of the prior art by use as well as by disclosure. Ct
came up with the Reverse Infringement Test, i.e. - if the patent was granted now, and the
previous product was now used after, would it amount to infringement? If so, then the
new product is anticipated by the prior art. Held, there was disclosure and anticipation in
this case, as terfanedine patent had disclosed that there was creation of acid metabolyte.
(see 6 point test in the reading material)
● Bristol-Myers Squibb case
Beechem was making penicillin, accidentally getting ampicillin as a by-product. They
found out that they were producing ampicillin only subsequently. BMS then applied for
patent on ampicillin, and Beechem challenged this saying that their production of
ampicillin constituted prior art.
The old Act in the UK considered even secret use as prior use. The reverse infringement
test was applied: If the product used after grant of patent to the invention amounts to
infringement, the same would amount to anticipation. (For example: X produces product
A. Y files a patent for product B. If X’s usage of A after B is patented would amount to
infringement of the patent on B, that means A anticipates B and therefore invalidates
patent claim on B).
However, post-1977, the Act was amended and secret use no longer counts as
anticipation by use.

35
Sections 29-32, Indian Patents Act

● Lakhpat Rai v. Kishen Das: Some bamboo powder calcination method sought to be
patented. Prior art was heating in iron pans. New method was heating in earthenware.
Held, this method was not disclosed in the prior art because heating in earthenware was
so much more advantageous.
● Rajprakash v. Mangatram Choudhury: A different way of using printed film to make
strips was sought to be patented. Prior art was a method of enlargement used in the
(medical?) field. Held, novel, as method used was different, and the essential steps were
novel.
● Surendra Lal v. Jain glazers: Identical process, so novelty destroyed
● Standipack v. Oswal: There was a pouch for storing liquid, which had earlier been sold to
IOCL. Invention was not considered novel.

Infringement

Merck v Integra: When the drug maker researches with the intent to develop a particular drug or
cause the sort of physiological effect that the researcher intended to induce, it would be
protected. While basic scientific research in this regard could not be afforded protection, a drug
does not fall outside the purview of this exception if it does not ultimately get FDA approval/is
submitted to the FDA.

Sections 47(1) and (2) relate to execption for the use by government.
Garware-Wall Ropes Ltd. vs A.I. Chopra: Act of mfr. for the government without the
authorisation of the patentee is not covered under the use by government exception.

Chempura Corpn: If the govt. for its own use asks third party to mfr, Section 47 would cover that
manufacture by the 3rd party.

1. NATCO v. Bayer: Considered factors under Section 84 to allow compulsory licensing.

There was inadequate supply of the drug, given the number of potential buyers; it was
expensive; and supply has to be shown to be FROM Bayer, not sufficient to show Cipla
is also supplying similar drugs.
Bombay HC also factored in that the patent wasn’t being ‘worked’ in India since it was
being imported.
2. Quanta v. LGE: First sale doctrine, leads to exhaustion of right. Quanta purchased
devices from Intel. Not bound by its commitments to LG.
3. Bayer Corpn. v. UoI: If there is a valid patent, then all the offices, not the patent office
only recognise it. The ct. has held that the PO should not grant marketing approval as it
does not have the authority or the expertise to decide validity of the patent.

36