CHAPTER FOUR

INDIA’S ENDEAVOURS TOWARDS THE

PROTECTION OF INTELLECTUAL
PROPERTY RIGHTS
4.1 Introduction
At the outset, while tracing the International developments for the
intellectual property rights, the idea of rewarding the expression
carrying novelty and commercial capability gained momentum in the
20th century. However, the developments in Indian scenario with
respect to India’s Intellectual property regime were left untouched in
the previous chapter. The current chapter envisages the Indian
prolegomena with judicial interpretations on the Intellectual Property
Rights. Moreover, an attempt has been made to take out the
Constitutional basis for Intellectual Property Rights protection.

Intellectual property rights have been traced from Indian perspective in

context of the developments after the establishment of World Trade
organization agreement. India joined WTO agreement with TRIPs a
mandatory part of the agreement. However, to satisfy TRIPs obligations
a time period of 10 years was given to all the developing countries. The
protection of Intellectual Property in India has been regulated through
various legislations. These legislations were introduced in India during
colonial period. George Alfred De Penning is supposed to have made
the first application for a patent in India in the year 1856.1 After
independence, it was decided to formulate or amend existing

1 In 1856, the Government of India promulgated legislation to grant what was then
termed as “exclusive privileges for the encouragement of inventions of new
manufactures” i.e. the Patents Act. George Alfred De Penning petitioned the
Government of India for grant of exclusive privileges for his invention – “An
Efficient Punkah Pulling Machine”. The invention was granted the first ever
Intellectual Property protection in India.
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Intellectual Property laws. Indian Patents Act was adopted by Indian
Parliament in 1970 and it came into actual operation in 1972.
Similarly, Copyright Act was formulated and adopted in 1957 and
Trade and Merchandise Act, 1958 which was later on replaced by
Trademarks Act, 1999. Primarily, patents, trademarks and copyrights
formed the mainstay of IP protection in India. All this changed after the
establishment of the World Trade Organization (WTO). The IPR
agreement known as the Trade related Aspects of the Intellectual
Property Rights (TRIPs Agreement) was part of WTO Agreements. India
signed and ratified the WTO Agreement. It should be noted that the
WTO Agreement placed definite obligations on the Member States and
its prompt implementation was also provided for. In the absence of
proper implementation, member countries of WTO agreements could
take recourse to a binding dispute settlement mechanism. Accordingly,
India amended existing legislations and introduced some new
Intellectual Property legislations. TRIPs Agreement itself provided for a
transition period of 10 years. The present chapter discusses the Indian
endeavors for the protection of Intellectual Property Rights pre and post
TRIPs agreement in the light of constitutional basis. Moreover, the law
stated as to enforcement mechanism has been substantiated with the
judicial interpretations on the issue.

4.2 Constitutional Dimensions of the Protection of Intellectual

Property Rights
The Universal Declaration of Human Rights, the European Convention,
the Indian Constitution and other International Human Rights Organs
enshrine the Right to Freedom of Expression and Access to
Information. Declaration of Human Rights adopted by United Nations
General Assembly indicates:

“Everyone has the right to freedom of opinion and expression;

this right includes freedom to hold opinions without

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 interference and to seek, receive and impart information and
ideas through any media regardless of frontiers.”2

The true significance of democratic system lays the freedom of speech

and expression. The liberty to express one’s self freely is important for
a number of reasons. First, self expression is a significant instrument
of freedom of conscience and self- fulfillment. Secondly, it enables
people to contribute to debates about social and moral values. Thirdly,
free expression is that it allows the political discourse, which is
necessary in any country, which aspires to democracy. Fourthly,
freedom of expression facilitates artistic and scholarly endeavor of all
sorts.3 Indians have witnessed the restrains on freedom of speech and
have always endeavored to struggle for this important right.4 Freedom
of expression provides a mechanism by which it would be possible to
establish a reasonable balance between stability and social change.5

Framers of the Constitution of India have shown the importance of this

right in the preamble.6 Here the freedom of thought and expression
gets the first priority. It occupies a prominent place in the hierarchy
and it is rightly termed as mother of all other liberties.7 Human

2 UNHR Declaration, Art. 27.

3 David Feldman, Civil Liberties and Human Rights in England and Wales,
Clarendon Press, Oxford, 1993, pp.547-548.
4 In August 1918, Tilak was served with an order as per which he had to take the
permission of the District Magistrate to deliver a lecture. This shows the pitiable
plight of the freedom of speech at that time. The resolution of the 19th August,
1918 session of the Indian National Congress said; “that subject to a declaration
of rights of the people of India (a) guaranteeing to them to them liberty of person
property, association, free speech and writing, except under sentence of an
ordinary court of justice a result of lawful open trial as quoted in C.K.N.Raja,
Freedom of Speech and Expression, under the Constitutions of India and the United
States, Karnataka University, Dharwad, 1979, p.52.
5 Indian Express Newspapers v. Union of India, (1985) 1 SCC 641.
6 “WE…….to secure to all its citizens LIBERTY of Thought, Expression, Belief, Faith
and Worship.”
7 Art. 19(1)(a) guarantees to all citizens the right to “freedom of speech and
expression” which includes the right to express one’s views and opinions at any
issue through any medium e.g., by words of mouth, writing, printing, picture,
film, music, movie etc., M.P. Jain, Indian Constitutional Law, 6th Edn. Vol. 1,
151
personality finds it maximum development in an atmosphere of free
speech and expression.8 The Supreme Court of India has attached
importance to the freedom of speech and expression.9

The ultimate goal of every democratic state is that “no idea should go
unheard”. The beauty of freedom of speech is not in every idea express
as the right expression, but can discover the myth in any idea express
so that the truth ultimately found. Strictly speaking this right is true
manifestation of all the democratic freedoms like the right to freedom of
speech and expression, assembly, association, movement, residence
and settlement and profession, occupation trade or business.10

4.2.1 Constitutional Directive to Respect Treaty Obligations

As provided by Article 51(c) of the Constitution of India, the State is
under constitutional directive to foster respect for international law and
treaty obligations in the dealings of the organized peoples with one
another. Though the directive principles of State Policy cannot be
enforced in the Municipal Courts, they are nonetheless fundamental in
the governance of the Country.11The Constitutional concern for
respecting international law including international treaties and
conventions is also reflected in Article 253.12 The Parliament is

2010, LexisNexis, Butterworths Wadhwa, Nagpur, p.1413.and Second Press

Commission Report Vol.1, 34-35; quoted in C.K.N.Raja, Freedom of Speech and
Expression, Under the Constitutions of India and the United States, Karnataka
University, Dharwad, 1979, p.9.
8 Dr. N.S Sreenivasulu, Human Rights: Many Sides to a Coin, Regal Publications,
New Delhi, 2008, p.182.
9 AIR 1950 SC 124,Justice Patanjali Shastri emphasizing United States
Constitution; “the Congress shall have the power to promote the progress of science
and useful arts, by securing limited times to authors and inventors the exclusive
right to their respective writings and discoveries.” Also emphasized in Maneka
Gandhi v. Union of India, AIR 1978 SC 597.
10 Lydia Pallas Loren, “The purpose of copyright”, Open Spaces Quarterly, quoted in
Dr. Madhabushi Sridhar, The Law of Expression, Asia Law House, Hyderbad,
2007, p.791.
11 Minerva Mills v. UOI AIR 1980 SC 1789.
12 Which provides “notwithstanding the distribution of legislative powers between the
Federal Union and the States, empowers the Parliament to make law for the whole
152
empowered to legislate with respect to the subject of entering into
treaties and agreements with foreign countries and implementing of
treaties, agreements and conventions with foreign countries.13
However, barring treaties which require legislation to be made, the
international agreements entered into by the Union in exercise of its
executive power under Article 73 which are not contrary to law; are
required to be recognized by the Municipal Courts. Indian legislature14
while catering the requirement of various international treaties15 has
enacted the laws for fulfilling the criteria mentioned therein.

India has been party to important treaties and conventions on

Intellectual Property. As member of the WTO the TRIPS Agreement
binds it under Article II of the WTO Agreement. It is, therefore, under a
treaty obligation to give effect to the provisions of the TRIPS Agreement
for adequate protection of Intellectual Property rights. The Courts
exercising jurisdiction under the Intellectual Property laws have to
provide effective and expeditious remedies against any act of
infringement of intellectual property rights keeping in view the treaty
obligations undertaken by the State in the process of interpretation of
the statutory provisions, exercise of its discretion and granting
adequate reliefs against the infringements of the intellectual property
rights.16

or any part of the territory of India for implementing any treaty, agreement or
convention with any other Country or Countries or any decision made at any
international Conference, association or other body.”
13 The Constitution of India, Art. 246 read with Entry 14 of the Union List of subjects
on which it can legislate contained in Schedule VII.
14 The subject of Patents, Inventions and Designs; Copyright; Trademarks and
Merchandise Marks is assigned to the Parliament under Entry 49 of the Union
List for the purpose of legislation.
15 Berne Convention, 1883, Paris Convention 1886, WTO agreement read with TRIPs
1995,WIPO etc.
16 Justice R. K. Abichandani, ‘Role of Judiciary In effective Protection of Intellectual
property Rights’, retrieved from gujarathighcourt.nic.in/journals accessed on 14th
May, 2015.
153
4.2.2 ‘Property’ under Article 300A
Under Article 300-A of the Constitution of India, right to property is
provided which says that no person shall be deprived of his property
save by authority of law. It ensures that a person cannot be deprived of
his property without any law. Deprivation of property can only be done
according to law. The obvious first question is as to whether or not
‘intellectual property’ would fall within the definition of ‘property’ as
understood in Article 300A. To support the proposition that ‘property’
as understood in Article 300A is wider than just ‘immovable property’
in context of ‘intellectual property rights’ is the judgment of the
Supreme Court in the case of Entertainment Network India Ltd. (ENIL) v.
Super Cassette Industries Ltd. (SCIL).17 In pertinent part, the apex court
held the following:

“The ownership of any copyright like ownership of any other property

must be considered having regard to the principles contained in Article
19(1) (g) read with Article 300A of the Constitution, besides, the human
rights on property. But the right of property is no longer a fundamental
right. It will be subject to reasonable restrictions. In terms of Article 300A
of the Constitution, it may be subject to the conditions laid down therein,
namely, it may be wholly or in part acquired in public interest and on
payment of reasonable compensation.”

Therefore, from the above discussion it is clear that copyright is a

fundamental right under Article 19(1) (a) of the Constitution of India.
The law of copyright is the extension of right of freedom of speech and
expression, which means that if an individual has freedom of speech
and expression that person, will naturally get a right to protect that
intellectual work as a property.18 Technological revolutions,

17 (2008) 13 SCC 30.

18 Hemantha Kumar and N.S. Sreenivasulu, “Nuts and Bolts of Copyright
Amendment Bill: 2010”, Manupatra Intellectual Property Reports, Vol.2, No.1,
April, 2011, p.56.
154
innovations developed through intellectual accomplishment demand
adequate protection of law.19

4.3 An Overview of Indian Intellectual Property Rights Regime

India has several Intellectual Property legislations. Among them we
could regard patent, trade marks (design as well) and copyright
legislations as the oldest. The legislations relating to these two IP
regimes were introduced during the colonial rule itself. In fact, these
legislations were the extension of the English legislations. The
legislation relating to patents, for example, was introduced as early as
in 1856 in India, although this was simply an extension of the British
legislation. This was extended primarily to protect the colonial
interests. The legislative history relating to copyright also has a similar
beginning, although it was less controversial when compared to
patents. The Indian Trademarks Act was passed in 1940,
corresponding with the English Trademarks Act, 1938. Remaining IP
legislations relating to Geographical Indications (GIs), Plant Varieties,
Semiconductors and Biological Diversity were of post-WTO legislations.
In other words, these legislations were introduced in India as a sequel
to TRIPs Agreement. Some of these legislations were introduced to give
effect to WTO/TRIPs requirements. These are:

(i) The Copyright Act, 1957;

(ii) The Patents Act, 1970;
(iii) The Trade Marks Act, 1999;
(iv) The Geographical Indications of Goods (Registration and
Protection) Act,1999;
(v) The Designs Act, 2000;

19 Aaron D. White, “Crossing the Electronic Border; Free Speech Protection for the
International Internet”, DePaul Law Review, Vol. 58, 2009, p.491.
155
(vi) The Semiconductor Integrated Circuits Layout Design Act, 2000;
and
(vii) The Protection of Plant Varieties and Farmers’ Rights Act, 2001

4.3.1 TRIPS and India: Implementation Issues

The conclusion of the Uruguay Round Negotiations of the General
Agreement on Tariffs and Trade (GATT) and the establishment of the
World Trade Organization (WTO) lead India to sign WTO Treaty on 15th
April, 1994. The WTO Treaty entered into force on 1 January 1995.
Along with the WTO Treaty, TRIPs Agreement also entered into force on
the same date. Article 1 of the TRIPs Agreement requires member
countries to implement the provisions of the treaty.

It also obligated the member countries to provide for the minimum

standards as incorporated in the various provisions of the TRIPs
Agreement. The transition period starting from 1 January 1995 was ten
years for developing countries.20 India, therefore, had ten years to
implement the minimum standards that were provided in the TRIPs
Agreement. There were, however, some immediate obligations that
needed incorporation such as exclusive marketing rights and some
immediate acceptance of product patent application for the protection
of chemicals and agricultural chemicals in those countries that did not
provide product patent protection to these areas.21 India brought out
an Ordinance and later amended its patent legislation in 1999 to give
effect to these two provisions. Once India provided for the product
patent protection in 2005 these amendments were deleted from the
Indian Patent Act, 1970.

20 TRIPs Agreement, Art. 65.

21 Id., Art. 70 (8) & (9).
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4.4 The Basis for Implementation
Intellectual Property Rights are granted and regulated primarily
through national legislations. In other words, the rights and obligations
arising out of an IPR are embodied in national laws. Territoriality is the
key principle, though International Conventions and Treaties specify
the minimum standards of protection. These minimum standards,
either technical or substantive, need some kind of incorporation in the
National legislations. TRIPs Agreement, it should be noted, did not
provide sufficient policy space for the countries, particularly developing
countries in the implementation process. Despite this, the judicial,
administrative and institutional mechanisms for granting, regulating
and even interpreting IPR norms remain within the domain of
countries. On the date TRIPs Agreement entered into force India had
Designs Act, 1911, Copyright Act, 1957 Trade and Merchandise Act,
1958 and Patents Act, 1970, in place.

However, the scope of TRIPs Agreement was wider and it included some
new areas like Geographical Indications (GIs) and Lay-Design of
Integrated Circuits. TRIPs Agreement also defined ‘undisclosed
information’ and the scope of its protection. India had no legislation or
regulations in these areas at the time when TRIPs came in to effect;
however, they were enacted later on.22

At the outset, it may be stated that the Indian Patent Law had certain
provisions that were in direct conflict with TRIPs Agreement, although
India had ten years to implement or change these provisions. We shall
examine these areas of conflict separately. Copyright and Trade Marks

22 Id., Art. 1 provided “Members shall give effect to the provisions of this Agreement”.
Members of the WTO were not, however, obliged to “implement in their domestic
law more extensive protection than is required by this Agreement provided that
such protection does not contravene the provisions of this Agreement”. Art. 1
further provides that the Members were “…free to determine the appropriate
method of implementing the provisions of this Agreement within their legal system
and practice.”
157
Laws were, more or less, in tune with the TRIPs Agreement. India had
no protection mechanism for GIs and Lay-out Designs of Integrated
Circuits at that time. A new legislation to protect plant varieties was
also needed. From 1995 onwards, the year TRIPs entered into force, till
2005 India had time to change or introduce new IP laws.

The Patents Act, 1970 was amended thrice23 to give effect to TRIPs
obligations. In other words, India was obligated to accept immediately
product patent applications in the fields of pharmaceuticals and
agricultural chemicals and provide proper legal means to do so. At that
point of time India had no legal mechanism to accept these
applications.24 India to give effect to provision henceforth added
Chapter IVA (Sections 24A to 24F) to its Patents Act and titled the
chapter as ‘Exclusive Marketing Rights.’25

4.5 Evolution of the Indian Patent System

In India, the patent law was introduced by the British to protect their
own inventions within their ‘colonial territory’. It was not introduced
keeping in view the concerns of the local people in any of the colonies
held by them. The first enactment was – Act for Granting Exclusive
Privileges to Inventors of 1856. This enactment provided for the
protection of inventions in India. Later, a new enactment was

23 India amended its Patent law thrice beginning in 1999. The two other major were
affected into the enactment in 2002 and 2005. The 1999 amendments were
pursuant to an immediate obligation that arose from the TRIPs Agreement Art. 70
(8) and (9). According to this provision where member country does not provide
product patent protection to pharmaceutical and agricultural chemical products
commensurate with the obligations under Art. 27 should provide “…means by
which applications for patents for such inventions can be filed” and “apply to these
applications, as of the date of application of this Agreement, the criteria for
patentability as laid down in this Agreement as if those criteria were being applied
on the date of filing in that Member…”
24 Moreover, Indian Patent Law under s 5 did not provide product patent protection
to these areas. Art. 70(9) went further and provided that such product patent
applications, if they have already been granted patents in other member
countries, be provided a exclusive marketing approval to sell their products.
25 Pursuant to introduction of product patent regime by deleting S 5 of its Patent
Law, India repealed this 1999 amendment in its 2005 amendment Act.
158
introduced in 1859 modeled on the English Patent Act of 1852. Under
this Act, an inventor of a new manufacture by filing a specification of
his invention obtained the “exclusive privileges of making, selling and
using the invention in India and authorizing others to do so for a term
of 14 years from the time of filing such specification. For the purpose of
providing protection for designs, the “Patents and Designs Protection
Act” was passed in 1872.26

An amendment Act affording protection to inventors desirous of

exhibiting their inventions at exhibitions was passed in 1883.
Subsequently, in 1888 the law continued in three Acts of 1859, 1872
and 1883 was consolidated into a single Act. The same was revised and
replaced by the Indian Patents and Designs Act, 1911. This Act
established for the first time in India a system of patent administration
under the management of the Controller of Patents.27 In the period
from 1911 to 1970, various amendments to this Act were introduced.
Efforts to evolve its own patent law by India began soon after
Independence. The focus was to evolve a law and policy based on the
detailed assessment of the local situation.28 The Bakshi Tek Chand
Committee which was constituted in1949, soon after India’s
independence, had noted that the existing colonial law on the subject
i.e., Indian Patents and Designs Act, 1911 had failed to stimulate
inventive activity. Subsequently, a Committee was set up in 1957
under the chairmanship of Justice Rajagopala Ayyangar to look into
the revision of patent laws in India. This Committee submitted its
Report in 1959. The 1970 Indian Patent Law was primarily based on
the recommendations of this Committee, which noted:

26 J. K. Das, Intellectual Property Law, Kamal Law House, Kolkata, 2008,p.159.

27 Philips and Alison Firth, Introduction to Intellectual Property Law, LexisNexis,
Butterworths, UK, 2001,p.432.
28 David Bainbridge, Intellectual Property, Pearson Education, Delhi, 2003,p.321.
159
“The patent law of an underdeveloped country like India should be so
designed as to enable the country to achieve rapid industrialization and
to attain, as quickly as possible, a fairly advanced level of technology
giving inventors and investors sufficient inducement and protection by
patent grants and at the same time safeguarding its national economic
and social interest.”29

4.5.1 Indian Patent System: Salient Features

The salient features of the Indian Patent Law, albeit briefly, could be
summarized as under:

(i) It defines ‘invention’ and various other terminologies; an

invention to be patentable should be new, should involve an
inventive step and should be commercially viable;
(ii) It outlines ‘what is not patentable’ i.e. mere ideas, mere
incremental inventions, trivial and frivolous inventions, method
of agriculture, traditional knowledge;
(iii) It provides basic details for the application and granting of
patents;
(iv) It allows and provides procedures for international filing of
patent applications;
(v) It provides for organizational structures such as patent office,
Controller General, examiners and others;
(vi) It provides for infringement proceedings; also provides for pre-
grant and post-grant opposition of patent applications;
(vii) It provides for working of patents and its compulsory licensing or
revocation in public interest; and
(viii) It establishes for the purpose of settlement of technical and other
procedural issues an IP Appellate Board.30

29 Holyoak and Torreman, Intellectual Property Law, Oxford University Press, New
York, 2010, p p. 267-289.
30 V.K Ahuja, Intellectual Property Law, Lexis Nexis Butterworths, New Delhi, 2014,
p.84.
160
4.5.2 Criteria of Patentability
India amended its patent law in 2005 to provide only product patents
to all patentable subject matter. Till then, it used to grant product
patents in all fields except for medicines and food articles. In these
fields, only process patents were granted. The 2005 amendment
changed all that by deleting Section 5 of the Patents Act, 1970 and
made it consistent with the TRIPs Agreement.31

It is a generally recognized principle that a patent for an invention

should be granted only when it fulfills the following criteria, namely, it
is (a) new; (b) involves an inventive step; and (c) industrially applicable.
Where the invention for which a patent is applied for fulfils these three
conditions, the invention is termed ‘patentable’. The Supreme Court
has observed in the case32

“…the fundamental principle of patent law is that a patent is

granted only for an invention which must be new and useful.
That is to say, it must have novelty and utility. It is essential
for the validity of a patent that it must be the inventor’s own
discovery as opposed to mere verification of what was already
known before the date of the patent.”

The Indian Patent Act, 1970 has also been updated in accordance with
the TRIPs Agreement33 in this regard.34 These conditions are usually
referred to as the ‘substantive conditions of patentability’:

31 Sudhir Krishnaswamy, “Intellectual Property And India’s Development Policy”,

The Indian Journal of Law and Technology, Vol. 1, 2005, p.23.
32 Bishwanath Prasad Radhey Shyam v. Hindustan Metals Industries, AIR 1982 SC
1444.
33 TRIPs Agreement, Art. 27 (1) provides that “…any inventions whether products or
processes, in all fields of technology, provided that they are new, involve an
inventive step and are capable of industrial application.”
34 The Amendment incorporated in 2002 defines in s (j) an `invention’ as a “new
product or process involving an inventive step and capable of industrial
application”. This definition of `invention’ has been supplemented by another
definition on “new invention” in s 2 (l). This definition was added in 2005 and it
inter alia, provides “…any invention or technology which has not been anticipated
161
(i) an invention must be new;
(ii) it could either be a final product or a process that would be used
in obtaining the final product;
(iii) invention could be from all fields of technology or it could be any
invention or technology;
(iv) it should involve an ‘inventive step’;
(v) it should have ‘utility’ or should be capable of industrial
application; and
(vi) Invention should not have been anticipated by publication in any
document. If the invention is known through publication it no
longer retains the criterion of ‘novelty’ or ‘newness’.

4.5.2.1 Novelty

The legal aspects of the definition of novelty primarily take into account
qualitative aspects of disclosure of a new invention. Invention must
teach those who are experts or those who are skilled in the art
something which they did not know from prior publications or
experience. The Indian Patent Act, 1970, provides for world-wide
novelty.35

It is, therefore, clear that prior publication, use or working of an

invention create conditions which could be termed as ‘novelty-
destroying’ or ‘anticipation’. The compulsory search for novelty cannot
be done in terms of indefinite period.36 It has also been provided that

by publication in any document or used in the country or elsewhere in the world

before the date of filing of patent application with complete specification le., the
subject matter has not fallen in public domain or that it does not form part of the
state of the art.”
35 Indian Patents Act, 1970, s 2 (l) refers to “…invention or technology which has not
been anticipated by publication in any document or used in the country or
elsewhere in the world…”
36 Id., s 29 provides “An invention claimed in a complete specification shall not be
deemed to have been anticipated by reason only that the invention was published
in a specification filed in pursuance of an application for a patent made in India and
dated before the 1st day of January 1912.”
162
the situations in which invention claimed in a complete specification
may be stated to be not anticipated which may be summarized as
under:

(i) where the title was derived and published without the consent of
the patentee or applicant;
(ii) where the patentee or the applicant for the patent or any person
from whom he derives title comes to know about the publications
before the date of application for the patent, such prior
knowledge is not considered anticipated;
(iii) where a complete specification was filed in pursuance of an
applicant for a patent made by a person being the true and first
inventor or deriving title from him, an invention claimed in that
specification would not be deemed as anticipated by reason only
of any other application for a patent in respect of the same
invention made in contravention of the rights of the person, or by
reason only that after the date of filing of that other application
the invention was used or published, without the consent of the
person, by the applicant in respect of that other application, or
by any other person consequence of any disclosure of any
invention by that applicant;
(iv) where previous communication was made to the Government to
investigate the invention or its merits, such a communication
concerning an invention claimed in a specification was not
deemed anticipated;
(v) where the invention was displayed at an industrial or other
exhibition with the official consent of the Government; and
(vi) Where the description of the invention in a paper read by the
true and first inventor before the learned society or published
with inventor’s consent in the transaction of such society.

163
4.5.2.2 Inventiveness

The patent laws generally require that patentable technical information

be both new and inventive. Novelty by itself is insufficient. If it were
sufficient, it is argued; inventors might produce innumerable number
of technological variations and claim that each new invention is
patentable. Patentable invention is measured against the state of the
art and is granted protection only if it is of some relevance in the
context of its technology. The law relating to inventive step has been
enumerates under Indian law as well.37 There are other references to
inventive step under the Indian Patent Act.38 The lack of inventive step
is also one of the grounds for revocation of patents under Indian Law39

All these efforts to define inventiveness go to show that the requirement

to establish the quality of inventiveness or non-obviousness is a legal
one but clearly the ascertainment of whether this is satisfied will
depend upon an essentially scientific comparison of the invention
claimed against the existing state of the art in that technology.

4.5.2.3 Industrial Applicability

Considering this requirement of industrial applicability or utility, it

should be noted, that ideas, concepts or notions cannot be patented
per se. On the contrary, technical information incorporating ideas,

37 The Indian Patent Act (as Amended in 2002 and 2005) defines an ‘inventive step’
in s 2 (ja) as “a feature of an invention that involves technical advance as compared
to the existing knowledge or having economic significance or both and that makes
the invention not obvious to a person skilled in the art.”
38 Id., s 25 relating to the “Opposition Proceedings to Grant of Patents” provides for
various grounds on which patent application could be opposed, known as pre-
grant opposition. One of the grounds for this pre-grant opposition relates to a
situation where in the invention in question does not involve any inventive step,
having regard to the matter published … having regard to what was used in India
it is provided that Another reference to inventive step.
39 Id., s 64 (f) of the which inter alia, provides that “the invention so far as claimed in
any claim of the complete specification is obvious or does not involve any inventive
step, having regard to what was publicly known or publicly used in India or what
was published in India or elsewhere before the priority date of the claim”.
164
notions or intellectual concepts become patentable to the extent that
these are embodied in some practical, technical and industrial
application as well as satisfy the previous criteria of being new and
inventive. The reasons for not granting patent protection to merely
ideas, theories and concepts could be explained in terms of the absence
of direct industrial utility. It may be argued that it is quite feasible to
grant patent protection to ideas as it could have the advantage of a
possible recouping of expenditure on their creation and generation;
however, weighed against this is the likelihood that giving such
protection would prevent access by others altogether to certain areas of
research. This would act as a restraint rather than stimulus to
research, investigation and the creation of ultimately useful, practical
and valuable innovation.40TRIPs Agreement clarifies that this term be
used in synonymous with the term “useful”. Indian Patent Law has
clearly defined the fact that despite of meeting all the criteria’s of
patentability, an invention may be rejected for being patented.41 This

40 Indian Patent law merely makes a reference to this criterion in Patent Act s 2(j) of
inventive step without really defining what it means. However, while defining
‘Inventive Step’, refers to the ‘Economic Significance’ of the invention.
41 Indian Patent Act, 1970, s 3 of has an exhaustive list of categories of inventions
that are not patentable. These are: frivolous inventions; those inventions obviously
contrary to well established natural laws; an invention the primary or intended use
or commercial exploitation of which would be contrary to public order or morality or
which causes serious prejudice to human, animal or plant life or health or to the
environment; mere discovery of a scientific principle or the formulation of an
abstract theory or discovery of any living thing or non-living substances occurring in
nature; mere discovery of a new form of a known substance which does not result
in the enhancement of the known efficacy of that substance or the mere discovery of
any new property or new use for a known substance or of the mere use of a known
process, machine or apparatus unless such known process results in a new product
or employs at least one new reactant; (The language of this provision was included
in the Indian Patent Law in 2005. Major developing countries like Brazil, India and
others have included this provision to tackle the problem of big companies taking
what has been termed as ‘incremental patents on known substances with a view to
extend the life of the patent grant) a substance obtained by a mere admixture
resulting only in the aggregation of the properties; mere arrangements and
rearrangements or duplication of devices; method of agriculture or horticulture; this
is specific India; any process for the medicine, surgical, curative, prophylactic,
diagnostic, therapeutic or other treatment of human beings or any process for a
165
provision is consistent with the language of Article 27 (2) of the TRIPs
Agreement.

4.5.2.4 The Patent Application

Once the substantive contents of the patentable inventions are decided,

the next step is to apply for the patents. Chapter III of the Indian
Patents Act42 provides for the process of applying for patents and its
examination by the examiners. Any person who claims to be the true
and first inventor of the invention or his assignees, legal
representatives could apply for patents. Every application will describe
only invention only. The patent application essentially has four
elements. These are: contents or claims in a patent application i.e., the
kind of information to be presented in the application; physical
requirements of a patent application i.e., questions to be examined,
presentation of the content e.g., whether in a prescribed format, text or
drawings or models of the invention to be presented; determination of
the priority of the application; there will be a priority date for each
claim of a patent application.43 The priority date simply provides the
inventor a proof that he was the first person to go to patent office and
file his patent application and that he could exercise his right to get the
patent for invention over other competitors in the field after the
payment of prescribed fee; Thereafter, the patent application will go for
publication and examination in the patent office subject to certain

similar treatment of animals (as per Art. 27 of the TRIPs Agreement) plants and
animals, seeds, varieties and species, essentially biological processes; not
microorganisms (as per Art. 27 (3) of the TRIPs Agreement) a mathematical or
business methods or a computer programme or algorithms (although these are
excluded under the Indian law, patent laws of US and European Union allow some
of these to be patented, specifically business methods and computer programme or
software-related inventions as long as they are part of a technical detail of an
invention)
42 Indian Patents Act, 1970, ss 6-11.
43 Id., s 11 which provides how priority date is determined.
166
specified rules and regulations. There will be a search for anticipation
by previous publication and by prior claim.44

The same grounds, as of pre grant opposition, could be used to

challenge the grant of patent within one year from the date of
publication of the grant. This is known as ‘post-grant opposition’. It
should be noted that these pre-grant and post-grant oppositions are
examined by an Opposition Board constituted as per provisions of the
Indian Patent Act by the Controller of Patents. In respect of patent
applications filed, following aspects will have to be kept in mind:-

No person resident in India shall, except under the authority of a

written permit sought in the manner prescribed and granted by or on
behalf of the Controller, make or cause to be made any application
outside India for the grant of a patent for an invention unless

(a) an application for a patent for the same invention has been made
in India, not less than six weeks before the application outside
India; and
(b) either no direction has been given under the secrecy clause of the
Act or all such directions have been revoked.

The International application for Patent under Patent Cooperation

Treaty 1970 can be filed by designating India and a corresponding
application has to file before the Controller General of Patents, Designs
and Trademarks in India.45

44 Id., s 25 encompasses following :a) wrongfully obtaining the invention; b) prior

publication; c) publicly known or publicly used in India; d) invention claimed is
obvious and clearly does not involve any inventive step; e) not patentable as an
invention; f) complete specification does not sufficiently or clearly describe the
invention or the method by which it is to be performed; g) insufficient or false
information; h) that the complete specification does not disclose or wrongly mentions
the source or geographical origin or biological material used for the invention; i)
invention anticipated having regard to the knowledge, oral or otherwise, available
within any local or indigenous community in India or elsewhere.
45 Supra note 30 at p. 160.

167
4.5.2.5 Complete Specification

The filing of a patent application is accompanied by a complete

specification. A complete specification describes the invention and
begins. While describing the invention, drawings and other necessary
tools may be used to sufficiently describe the invention. For example,
the Controller of Patents may ask for furnishing a model or sample of
anything illustrating the invention or alleged invention to constitute an
invention;46 every complete specification should:

(i) fully and particularly describe the invention and its operation or
use and the method by which it is to be performed;
(ii) disclose the best method of performing the invention which is
known to the applicant and for which he is entitled to claim
protection;
(iii) end with a claim or claims defining the scope of the invention for
which protection is claimed; and
(iv) be accompanied by an abstract to provide technical information
on the invention.

It is provided that any person who is the true and first inventor of the
invention could file the application. Any assignee of the true and first
inventor or any legal representative of the said true and first inventor
could apply for a patent.47 It is further provided that every application
for patent shall be for one invention only.

4.5.3 Compulsory License

Any time after three years from date of sealing of a patent, application
for compulsory license can be made provided48 under following
conditions.

46 Indian Patent Act, 1970 s10 (4).

47 The Patents Act, 1970, s 7 as amended by Patents (Amendment) Act, 2005.
48 Id., s 84.
168
(i) reasonable requirements of public have not been met;
(ii) patented invention is not available to public at a reasonably
affordable price; and
(iii) patented invention is not worked in India

Among other things, reasonable requirements of public are not

satisfied if working of patented invention in India on a commercial
scale is being prevented or hindered by importation of patented
invention. Applicant's capability including risk taking, ability of the
applicant to work the invention in public interest, nature of invention,
time elapsed since sealing, measures taken by patentee to work the
patent in India will be taken into account. In case of national
emergency or other circumstances of extreme urgency or public non
commercial use or an establishment of a ground of anti competitive
practices adopted by the patentee, the above conditions will not apply.
A patentee must disclose the invention in a patent document for
anyone to practice it after the expiry of the patent or practice it with the
consent of the patent holder during the life of the patent. While
granting compulsory license the terms and conditions49 for grant
should also be taken into account. These terms and conditions have
been listed in According to Section 84 of the Patents Act, 1970, taking
into account the above grounds a patented invention may be revoked in
public interest after the expiry of two years from the date of grant of
compulsory license, therefore, India’s first ever compulsory license has
been granted in India in the case of Bayer Corp. v. Union of India.50

49 Id., s 90 includes issues relating to royalty and other remuneration; that the
license granted is a non-exclusive one; that the patented Arts are made available
to the public at affordable prices; that the licensee is granted with a predominant
purpose of supply in the Indian market and that the licensee may also export the
patented product, if need be.
50 Special Leave to Appeal (C) NO(S) 30145/2014.
169
4.5.4 Term of Patent
This is an important aspect of patent grant. Before TRIPs regime,
countries would fix the term taking into account their domestic
requirement. India had fixed the patent term for 14 years for all
categories and 7 years for pharmaceutical and medicines. This has
been amended now to make its provisions consistent with TRIPs
Agreement and extended to twenty years.51 It should be noted that the
filing date of the patent application is different from the date of the
grant of patent. The patent term begins from the date of filing with a
view to provide full protection of the exclusive right. In the absence of
such a protection from the filing date, a patent applicant will not have
any kind of protection for his patent application from the date of filing
date to the date of patent grant. This period between date of filing and
actual date of grant may vary from country to country depending upon
the efficiency and other infrastructural facility provided at the local
patent office. It could be any time between 18 months and 36 months.
It is argued that starting protection only from the date of the grant of
the patent for invention would be unjust to the applicant where the
patent application is published by the Patent Office before that Office
decides to grant the patent. However, effect of the patent for invention
would start from the date of grant and five things will happen on the
date of grant.52

51 Indian Patent Act, 1970, s 53 provides that the patent term “shall be twenty years
from the date of filing of the application for the patent.” This amendment to Indian
law came into effect through an amendment in 2002. Art. 33 of the TRIPs
Agreement provides that the “term of protection available shall not end before the
expiration of a period of twenty years counted from the filing date.”
52 The patent grant will be announced in patent gazette that the patent for invention
has been granted; formal publication of the patent grant; issuance of a certificate
of grant to the applicant; copies of the patent specification will be made available
to the public.
170
4.5.5 Local Working of Patents
The local working of the patented invention is crucial to promote the
industrialization of the country that grants the patents. It is further
argued that patents for invention should not be used merely to block
the working of the invention in the country or to monopolize
importation of the patented article by the patent owner. Patents are a
means to introduce new technology into the country, although some of
these decisions would hinge on economic and other considerations.53 It
should be noted that Article 27 (1) of the TRIPs Agreement equates
‘importation’ of the patented product to ‘local working’. In other words,
TRIPs formally recognizes the principle that in order to meet the public
interest local working may not be necessary in all circumstances. The
product that is in demand can be imported to meet the reasonable
requirements of the market.

4.6 Law Relating to Copyrights in India: Prologue

In India, modern copyright law emerged consequent to the spread of
printing technology. It is true that while the history of printing of books
in India goes back to 1557, that of copyright law is only little more than
a hundred and fifty years old. This was because the early printing
activities were non commercial and Christian missionary driven.
However, once commercial publishing picked up, need for a copyright
law protect the interests of authors and publishers was felt. This led to
the enactment of the Indian Copyright Act of 1847. This Act made the
English law applicable to the areas under the control of the British
East India Company Subsequently, when Britain enacted the Copyright
Act, 1911, “the first British legislation to bring the various copyrights
within a single text” appropriate to have a new legislation for India too.

53 Indian Patent Act, 1970, s 83 (a) provides that “patents are granted to encourage
inventions and to secure that the inventions are worked in India on a commercial
scale and to the fullest extent that is reasonably practicable without undue delay.”
171
Thus, the Indian Copyright Act of 1914 was promulgated which was a
slightly modified version of the British Copyright Act, 1911, adapting it
to the requirements of India. This law remained in force till 1958 when
the present Indian Copyright Act of 1957 had come into force.54 Apart
from the fact that imperial copyright law did not fit well within the
changed constitutional status of India, it was inevitable to enact an
independent self contained law on the subject of copyright in the light
of growing public consciousness.55 The vagaries and compulsions of
history dragged India into the legal regime of Great Britain for about a
hundred members of the Berne Convention; its laws on copyright had
kept abreast of the international treaties and state of technologies in
this area. This naturally ensured that the Indian law was also on par
with the same. Thus, at the time of its independence, India had a
copyright law which was fully compatible with the international treaties
on copyright and the technologies in the cultural industries at that
time.56

4.6.1 The Salient Features of the Copyright Act, 1957

The Copyright Act, 1957 with a major amendment in 1994, 1999 and
in 2012 presently governs copyright law in India. The 1999 amendment
was undertaken to address the concerns of computer industry. It came
into force on January 15, 2000. It has established a copyright office,
under the immediate control of the Registrar of Copyrights to facilitate
registration of copyright. It has also established a Copyright Board with
Registrar of copyrights as its Secretary. The Copyright Board is meant
to hear and settle certain kinds of disputes arising under the Act.

54 T.C James, “Indian Copyright Law and Digital Technologies”, Journal of

Intellectual Property Rights, Vol. 7, 2002, pp. 423-435.
55 M.K Bhandari, Law relating to Intellectual Property Rights, Central Law
Publications, 2012, p.81.
56 Supra note 54 at p.172.
172
It defines various categories of works in which copyright57 subsists,58
and has provisions for determination of first ownership of copyright,59
the scope of rights conferred; assignment 60 and licensing of copyright;

57 s.14 of the Copyright Act, Meaning of Copyright-For the purposes of this Act,
"copyright" means the exclusive right subject to the provisions of this Act, to do or
authorize the doing of any of the following acts in respect of a work or any
substantial part thereof, namely:-
(a) in the case of a literary, dramatic or musical work, not being a computer
programme, -
(i) to reproduce the work in any material form including the storing of it in any medium
by electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public, or communicate it to the public;
(iv) to make any cinematograph film or sound recording in respect of the work;
(v) to make any translation of the work;
(vi) to make any adaptation of the work;
(vii) to do, in relation to a translation or an adaptation of the work, any of the acts
specified in relation to the work in sub-clauses (i) to (vi);
(b) in the case of a computer programme,-
(i) to do any of the acts specified in clause (a);
(ii) to sell or give on commercial rental or offer for sale or for commercial rental any
copy of the computer programme: Provided that such commercial rental does not
apply in respect of computer programmes where the programme itself is not the
essential object of the rental
(c) in the case of an artistic work,-
(i) to reproduce the work in any material form including depiction in three dimensions
of a two dimensional work or in two dimensions of a three dimensional work;
(ii) to communicate the work to the public;
(iii) to issue copies of the work to the public not being copies already in circulation;
(iv) to include the work in any cinematograph film;
(v) to make any adaptation of the work;
(vi) to do in relation to an adaptation of the work any of the acts specified in relation to
the work in sub-clauses (i) to (iv);
(d) In the case of cinematograph film, -
(i) to make a copy of the film, including a photograph of any image forming part
thereof;
(ii) to sell or give on hire, or offer for sale or hire, any copy of the film, regardless of
whether such copy has been sold or given on hire on earlier occasions;
(iii) to communicate the film to the public;
(e) In the case of sound recording, -
(i) to make any other sound recording embodying it;
(ii) to sell or give on hire, or offer for sale or hire, any copy of the sound recording
regardless of whether such copy has been sold or given on hire on earlier occasions;
(iii) to communicate the sound recording to the public.
Explanation: For the purposes of this s, a copy which has been sold once shall be
deemed to be a copy already in circulation.
58 Id s 2(y) "work" means any of the following works, namely:- (i) a literary, dramatic,
musical or artistic work; (ii) a cinematograph film; (iii) a sound recording.
59 Id., s 17.
173
compulsory licensing61 and the circumstances in which it could be
granted; The Indian Act does well to protect authors against
exploitation by industry. It enacts rights of performers, rights of
broadcasting organizations and makes provisions for establishment of
copyright societies for exploitation of economic rights; authors special
rights; international copyrights. The enactment also sets out in detail
what constitutes infringement and what does not. As mentioned above,
copyright protection is triggered the moment the work is created.
Registration serves merely as evidence to the effect that the copyright
belongs to the designated person. The Register of Copyrights,
accordingly, acts as a prima facie evidence of particulars entered and
allows the copyright holder to initiate infringement proceedings against
the one who is copying the work without any authorization in the case
of copyright infringement.62 However, a ‘fair dealing’63 of the work could
be used as a defense against this kind of alleged contravention.64 India
was part of the Berne Convention that dealt with the protection literary
and artistic works for a very long time. Indian Copyright Law was not
only consistent with TRIPs; it provided much wider protection to
copyright.65

60 Id., s 18.
61 Id., s 3,31A.
62 As provided in The Indian Copyright Act,s 51 of, is the unauthorized use of the
work i.e., without a license granted by the owner of the copyright or the Registrar
of Copyrights or in contravention of the conditions of a license so granted
63 Id., s 39: Acts not infringing broadcast reproduction right or performer’s right. –
No broadcast reproduction right or performer's right shall be deemed to be infringed
by-
(a) the making of any sound recording or visual recording for the private use of the
person making such recording, or solely for purposes of bona fide teaching or
research; or
(b) the use, consistent with fair dealing, of excerpts of a performance or of a broadcast
in the reporting of current events or for bona fide review, teaching or research; or
(c) such order acts, with any necessary adaptations and modifications, which do not
constitute infringement of copyright under s 52.
64 Id., s 52 of the; i.e., private use, research and other official or governmental
purpose.
65 The TRIPs Agreement, for example, excludes moral rights as provided in the Berne
Convention. Indian Copyright Law provides for this right.
174
4.6.2 Scope of Protection
The scope and range of protection granted by the copyright66 should be
ascertained first. In Article 9 (2), the TRIPs Agreement, tersely provides
that “Copyright protection shall extend to expression and not to ideas,
procedures, methods of operation or mathematical concepts as such.”

This is the basis of the copyright protection. Article 1 of the Berne

Convention only describes and lists out (non-exhaustive listing) what
subject matter could come under the purview of the copyright
protection.67

India follows this listing method to identify the subject matter of

protection that could come within the purview of copyright. Section 13
(1) of the Indian Copyright Act, 1957, inter alia, provides for such
listing. It provides that the copyright shall subsist throughout India in
the following classes of works, namely,

(i) original literary, dramatic, musical and artistic works;

(ii) cinematograph films; and
(iii) sound recording

4.6.3 Rights Comprised in Copyright

Section 14 of the Indian Copyright Act provides for the scope of
copyright.68 The Indian Copyright Law protects computer programmes

66 Id., Art. 9(1) simply provides that Members should “comply with Arts 1-21 and the
Appendix of the Berne Convention (1971), excluding Art. 6 bis of that Convention.
67 It provides that the “expression “literary and artistic works” shall include every
production in the literary, scientific and artistic domain, whatever may be the mode
or form of its expression, such as books, pamphlets and other writings; lectures,
addresses, sermons and other works of the same nature; dramatic or dramatico-
musical works; choreographic works and entertainments in dumb show; musical
compositions with or without words; cinematographic works to which are
assimilated works expressed by a process analogous to cinematography; works of
drawing, painting, architecture, sculpture, engraving and lithography; photographic
works to which are assimilated works expressed by a process analogous to
photography; works of applied art; illustrations, maps, plans, sketches and three-
dimensional works relative to geography, topography, architecture or science.”
68 Supra note 57 at p.173. for the legislative Endeavour.
175
as literary and artistic works. Any of the above acts could be performed
for the computer programmes and it also includes some additional
rights such as giving computer programmes on commercial rentals etc.
In the case of cinematograph film copyright protection authorizes it to
make a copy of the film including a photograph of any image, sell or
hire the film etc. It should be noted that the Indian Copyright Law is
much wider in scope than the TRIPs provisions. The Act defines
‘reprography’ as “the making of copies of a work, by photocopying or
similar means”. The phrase ‘similar means’ has not been defined. It
could include many forms or many other advanced technological
means that could be used to copy a work.69

In defining ‘performer’ and ‘performance’ The Indian Copyright Act,

1957 added new definitions of these terms in 1994 (became effective
from 10 May 1995).70

Indian Copyright Act treats ‘performers’ rights’ as special rights.71 It

also outlines situations which could be regarded as infringement of the
performers’ rights. These situations are:

(i) wherein sound or visual recordings were made without the

consent of the performer;
(ii) made for purposes different from those for which the performer
gave his consent;
(iii) broadcasts it without proper authorization; or

69 Indian Copyright Act, 1957 (added in 1994) s 2 (x).

70 Id., s 2 (qq) defines a ‘performer’ to include “an actor, singer, musician, dancer,
acrobat, juggler, conjurer, snake charmer, a person delivering a lecture or any other
person who makes a performance”. The definition of ‘performance’ as defined in S
2 (q) is a purely a technical one. According to it a ‘performance means “in relation
to performer’s right, means any visual or acoustic presentation made live by one or
more performers.”
71 Id., s 38, details from VK Ahuja, Law Relating to Intellectual Property Rights, New
Delhi,2013,p.113.
176
(iv) Communicates it to the public (through whatever means) without
the authorization of the owner. If one records it for bonafide
teaching or research purposes or deals fairly with the copying for
purely teaching and research purposes, then it cannot be
regarded as an infringement.

Indian Copyright Act, 1957 added a definition of sound recording and

copyright subsisting thereto in 1994.72 A cinematograph work or a
motion picture has been defined as “a visual recording, presenting to
viewers a continuous sequence of images”. Accordingly, it falls within
the category of `literary and artistic works’.73

4.6.3.1 Broadcasting Rights

The definition of ‘broadcast’ incorporated in the Act regards it as a

communication to the public by any means of wireless diffusion,
whether in any one or more of the forms of signs, sounds or visual
images; or by wire, and includes a re-broadcast. There is an intricate
legal problems relating to jurisdiction and ownership of rights.74 Where
Members do not grant such rights to broadcasting organizations, they
shall provide owners of copyright in the subject matter of broadcasts
with the possibility of preventing the above acts, subject to the
provisions of the Berne Convention.75 It should be noted that Chapter

72 The TRIPs Agreement, Art. 14 (2) provides “Producers of phonograms shall enjoy
the right to authorize or prohibit the direct or indirect reproduction of their
phonograms.”
73 The definition provided in The Indian Copyright Act, 1957 s 2 (f) of is broader and
inclusive. According to it a “cinematograph film” means any work of visual
recording on any medium produced through a process from which a moving image
may be produced by any means and includes a sound recording accompanying
such visual recording and “cinematograph” shall be construed as including any
work produced by any process analogous to cinematography including video films.
74 The TRIPs Agreement, Art. 14 (3) provides “Broadcasting organizations shall have
the right to prohibit the following acts when undertaken without their authorization:
the fixation, the reproduction of fixations, and the rebroadcasting by wireless
means of broadcasts, as well as the communication to the public of television
broadcasts of the same.”
75 Amended up to 1971.
177
VIII of the Indian Copyright Act, 1957 provides certain special rights to
broadcasting organizations.76

4.6.3.2 Translation and Adaptation Rights

TRIPs Agreement does not provide for these rights specifically. It should
be noted that the acts of translation or of adapting a work protected by
a copyright require the authorization of the copyright owner.
‘Translation’ means expression of a work in a language other than that
of the original version. ‘Adaptation’ is generally understood as the
modification of a work from one type of work to another, for example,
adapting a novel so as to make a motion picture, or the modification of
a work so as to make it suitable for different conditions of exploitation,
for example adapting an instructional textbook originally prepared for
higher education into an instructional text book intended for students
at a lower level. The Indian Copyright Act, 1957 in Section 2 (a)
categorizes different situations which could be regarded as
“adaptation.”77

76 Indian Copyright Act, 1957, s 37 relates to “broadcast reproduction right” in

respect of broadcasts If any person, without the license of the owner of the
broadcast reproduction right (a) rebroadcasts the broadcast; or (b) causes the
broadcast to be heard or seen by the public on payment of any charges; or (c)
makes any sound recording or visual recording of the broadcast; or (d) makes any
reproduction of such sound recording or visual recording where such initial
recording was done without license or, where it was licensed, for any purpose not
envisaged by such license; or (e) sells or hires to the public, or offers for such sale or
hire any such sound recording or visual recording …shall be treated as
infringement.
77 These situations are:
i) in relation to a dramatic work, the conversion of the work into a non-dramatic work;
ii) in relation to a literary work or an artistic work, the conversion of the work into a
dramatic work by way of performance in public or otherwise;
iii) in relation to a literary or dramatic work, any abridgement of the work or any
version of the work in which the story or action is conveyed wholly or mainly by
means of pictures in form suitable reproduction in a book, or in a newspaper,
magazine or similar periodical;
iv) in relation to a musical work, any arrangement or transcription of the work; and
v) in relation to any work, any use of such work involving its rearrangement or
alteration.
178
4.6.3.3 Moral Rights

Moral rights, as the name suggests, relate to authors’ or artist’s honour

and reputation in relation to his work. The Berne Convention requires
in Article 6 bis member countries to grant authors (i) the right to claim
authorship of the work; and (ii) the right to object to any distortion,
mutilation or other modification of, or other derogatory action in
relation to, the work which would be prejudicial to the author’s honour
and reputation. These rights are usually known as moral rights are
independent of economic rights guaranteed to the authors. They
remain with the author even after he transfers his economic rights.78

4.6.3.4 Rental Rights

The rental rights are new kinds of rights that reflect the complexities of
emerging technology e.g. computer programmes. TRIPs Agreement in
Article 11 provided for it for the first time with specific reference to
computer programmes and cinematographic works. It should be noted
that these rights have been provided with a view to “prohibit the
commercial rental to the public of originals or copies of their copyright
works”. The prohibition is to be applied when rental rights were the
cause of widespread copying and when they materially affect or impair
the exclusive right of reproduction conferred on the copyright holder.

4.6.4 Term of Copyright

Copyright protection is not granted for an indefinite period. The term of
copyright has two elements. One, it runs during the life time of the

78 The TRIPs Agreement, however, in Art. 9 (2) specifically excludes operation of

these moral rights as envisaged under Berne Convention Art. 6 bis of Indian
Copyright Act, s 57 of the provides moral rights to authors. It provides that “…the
author of a work shall have the right (a) to claim the authorship of the work; and (b)
to restrain or claim damages in respect of any distortion, mutilation, modification, or
other act in relation to the said work which is done before the expiration of the term
of copyright if such distortion, mutilation, modification or other act would be
prejudicial to his honour or reputation.”
179
author, performer and other owners of the creative endeavors as the
case may be. Second, it runs for a particular period after the death of
the owner of the copyright. The TRIPs Agreement provides this term as
fifty years. The Indian Copyright Act in Chapter V provides for different
categories of creative endeavors a term which is usually life time of the
author plus sixty years.79 However, the term of broadcast reproduction
right subsists until 25 years from the beginning of the calendar next
following year in which the broadcast was made,80and the term of the
performer’s right s until 50 years from the beginning of the calendar
next following year in which the performance was made.81

4.6.5 Registrar of Copyrights

Section 10 establishes a copyright office under the control of the
Registrar of Copyrights who, in turn, is required to act under the
supervision and directions of the Central Government. It may be
mentioned that the registration of a copyright is not compulsory or a
pre-condition in India for acquiring a copyright or for enforcing the
rights there under. A register kept at the Copyright Office, in which the
names of titles or works and the names and addresses of authors,
publishers, and owners of copyright are entered. The Copyright Board
can examine the reasonableness of the charges or royalties claimed by
a copyright society and to consider applications for the grant of licenses
for public performances of works etc.82 the powers and functions are as
under:

i) hear appeals against the orders of the Registrar of Copyright;

ii) hear applications for rectification of entries in the Register of
Copyrights;

79 The Copyright Act, 1957, ss 22 to 29.

80 Id., s 37(2).
81 Id., s 38.
82 VK Ahuja, Law Relating to Intellectual Property Rights, New Delhi, 2013, p.135.
180
iii) adjudicate upon disputes on assignment of copyright;
iv) grant compulsory licences to publish or republish works (in
certain circumstances);
v) Grant compulsory license to produce and publish a translation of
a literary or dramatic work in any language after a period of
seven years from the first publication of the work;
vi) Hear and decide disputes as to whether a work has been
published or about the date of publication or about the term of
copyright of a work in another country;
vii) Fix rates of royalties in respect of sound recordings under the
cover-version provision; and
viii) Fix the resale share right in original copies of a painting, a
sculpture or a drawing and of original manuscripts of a literary
or dramatic or musical work.83

4.6.6 Copyright (Amendment) Act, 2012: Changes to Indian

Copyright Law
In May 2012, both houses of the Indian Parliament unanimously
placed their seal on the Copyright Amendment Bill, 2012, bringing
Indian copyright law into compliance with the World Intellectual
Property Organization “Internet Treaties.”84

The Copyright Act, 1957 had been amended six times85 till 2012
making Indian Copyright Law compliant with the Internet Treaties –
the WIPO Copyright Treaty (WCT) and WIPO Performances and
Phonograms Treaty (WPPT).

Also, while introducing technological protection measures, the

amended law ensures that fair use survives in the digital era by

83 Ibid.
84 WPPT and WCT of 1996.
85 1983, 1984, 1992, 1994, 1999 and finally in 2012 to meet with the national and
international requirements.
181
providing special fair use provisions. The amendments have made
many author-friendly amendments, special provisions for disabled,
amendments facilitating access to works and other amendments to
streamline copyright administration. 86

The amendments introduced through Copyright (Amendment) Act 2012

can be categorized into:

(i) Amendments to rights in artistic works, cinematograph films and

sound recordings;
(ii) WCT and WPPT related amendment to rights;
(iii) Author-friendly amendments on mode of Assignment and
Licenses;
(iv) Amendments facilitating Access to Works;
(v) Strengthening enforcement and protecting against Internet
piracy; and
(vi) Reform of Copyright Board and other minor amendments

4.6.6.1 Rights in Artistic Works, Cinematographic Films and Sound

Recordings

Section 14 relating to the exclusive rights in respect of a work has been

amended. The amendments clarify the rights in artistic works,
cinematograph films and sound recordings, by providing that the right
to reproduce an artistic work, to make a copy of a cinematograph film
or embodying a sound recording now includes ‘storing’ of it in any
medium by electronic or other means.87

In the case of literary, dramatic and musical works, the right to

reproduce already includes ‘storing of the work in any medium by

86 Abhai Pandey, ‘Intellectual Property Watch Inside Views: Development In Indian

IP Law: The Copyright (Amendment) Act 2012’ retrieved from http://www.ip-
watch.org/2013/01/22/development-in-indian-ip-law-the-copyright-amendment-
act-2012 / on 15th April,2015.
87 Ibid.
182
electronic means’. The present amendment in effect only extends this
inclusive language to artistic works, cinematograph films and sound
recordings.88

The right to store the work is of particular importance in a digital

environment due to the special nature of transmission of digitized
works over the internet where transient copies get created at multiple
locations, including over the transmitting network and in the user’s
computer. In a manner of speaking, it can be stated that copyright has
been extended to the ‘right of storing’ of works.

It also creates liability for the internet service providers. While adding
this right, the Act also treats as fair use the transient or incidental
storage and safe harbour provisions to service providers.89

The definition of the Cinematograph Film (Section 2(f)) has also been
amended.90 The Amendment Act also introduces a definition of ‘visual
recording’ (Clause xxa) to mean ‘recording in any medium, by any
method including the storing of it by any electronic means, of moving
images or of the representations thereof, from which they can be
perceived, reproduced or communicated by any method.’ The
amendments address technical issues like ‘storing’, and therefore
address some of the digital era challenges.91

4.6.6.2 WPPT and WCT related Amendments to Commercial Rental

Rights

The obligation under Article 11 of the TRIPS Agreement, Article 7 of

WCT and Article 9 of WPPT is to provide for ‘commercial rental’ rights

88 Ibid.
89 Ibid.
90 The Amended Definition reads: Cinematograph Film means any work of visual
recording and includes a sound recording accompanying such visual recording and
“cinematograph” shall be construed as including any work produced by any
process analogous to cinematography including video films.
91 Supra note. 86 at p.182.
183
for computer programmes and cinematograph films. This right was
introduced in section 14 by using the word ‘hire’.92 The primary reason
behind the replacement is to curtail the possibility of interpreting the
term ‘hire’ to include non-commercial hire and also to keep in sync
with the replacement of the term ‘hire’ to ‘commercial rental’ with
respect to computer programme in section 14(b).

This amendment substitutes the word ‘hire’ with ‘commercial rental’ in

sections 14 (b) &(c) but has deleted the words ‘regardless of whether
such copy has been sold or given on hire on earlier occasions’.

This deletion in the case of both cinematograph films and sound

recordings brings in the doctrine of first sale exhaustion to these
works. It may be recalled that the doctrine of first sale exhaustion was
applicable only to the literary, dramatic and artistic works before the
amendment.93

The Amendment Act,2012 has also introduced a definition of the term

‘commercial rental’ in section 2(fa) with the objective of expressly
clarifying that the right is not applicable to non-commercial activities of
giving on ‘hire’ including the activities of libraries and educational
institutions.

4.6.6.3 Performers’ Rights

The Amendment Act, 2012 has introduced affirmative performers’

rights.94 Section 38A provides for performer’s right as an exclusive right
to do or authorize the doing of any of the acts in respect of the
performance without prejudice to the rights conferred on authors. The

92 The term ‘hire’ in ss 14(d) & (e) with regard to cinematograph film and sound
recording, respectively, is replaced with the term ‘commercial rental’.
93 Supra note 86 at p. 182.
94 Copyright (Amendment) Act, 2012, s 38(3),(4) have been omitted and a new s 38A
has been inserted in compliance with Arts from 6 to 10 of WPPT.
184
proviso to the section enables performers to be entitled for royalties in
case their performances are subjected to commercial use.

This is a welcome development as earlier the performers were not

entitled to royalties because they only had a negative right to prohibit
‘fixation’ of their live performances. The negative right has now been
converted to the positive rights. Along with the above, the Amendment
Act, 2012 has also sought to amend the definition of ‘Communication
to Public’95 extending the right to performances. The rights under this
head hitherto limited to authors have been extended to performers by
the present amendment.

This is consequential to the grant of new rights to performers. The right

of ‘communication to public’ is essential to protect the work on the
internet and such protection hitherto available for ‘works’ now extends
to ‘performances’.

A new section 38B grants moral rights to performers in line with Article
5 of WPPT. Moral rights have been extended to performers, considering
the possibility of digital alteration of performances in a digital
environment. The ‘explanation’ to the section clarifies that editors are
free to perform their tasks without the fear of legal consequences. The
term of copyright in a photograph has been made at par with other
artistic works, namely, until sixty years after the death of the author.96

4.6.6.4 Author Friendly Amendments on Mode of Assignment and

Licensing of Rights

Under Section 18(1) a second proviso has been inserted.97 This

amendment strengthens the position of the author if new modes of

95 Id.,s 2 (ff).
96 The WCT, Art. 9 is regarding the duration of protection of Photographic works.
97 It provides that no such assignments shall apply to any mode of exploitation that
did not exist or was not known in commercial use when the assignment was
made.
185
exploitation of the work come to exist.98 The amendment Act provides
that the owner of a copyright in any work or prospective owner of a
future work may assign the copyright, and the proviso to this sub-
section clarifies that in the case of future work, assignment will come
into force only when the work comes into existence.99

The amended Act also provides that the author of a literary or musical
work incorporated in a cinematograph film or sound recording shall not
assign the right to receive royalties in any form other than as a part of
the film or sound recording.100

The mode of assignment has been amended to provide that the

assignment shall specify the ‘other considerations’ besides royalty, if
any, payable to the Assignor. Therefore, it is not necessary that only
monetary compensation by way of royalty could lead to assignment.101

The provision has been inserted making the assignment of copyright

void if contrary to the terms and conditions of the earlier assignment to
a copyright society in which the author of the work is a member. This
amendment is an attempt to streamline the business practices. The
claim to royalties from the utilization of the work used to make a
cinematograph or sound recording irrespective of any assignment of
the copyright in the same is an attempt to rationalize the business
practices prevalent in the film industry.102

The procedure with respect to disputes as to assignment of copyright

has also been provided.103 This provides that on receipt of a complaint
from an aggrieved party, the Copyright Board may hold inquiry and
pass orders as it may deem fit, including an order for the recovery of

98 Supra note 86 at p. 182.

99 Copyright (Amendment) Act, 2012, s 18(1).
100 Id., proviso under S. 18(1).
101 Id., s 19 (3).
102 Id., s 19 (8) and 19(9).
103 Id., s 19A.
186
any royalty payable. The pending disposal of an application for
revocation of assignment, the Copyright Board may pass any order as it
deems fit regarding implementation of the terms and conditions of
assignment.

4.6.6.4.1 Amendments to Facilitate Access to Works

(i) Grant of Compulsory Licenses;

(ii) Grant of Statutory Licenses;
(iii) Administration of Copyright Societies;
(iv) Fair Use Provisions;
(v) Access to copyrighted works by the Disabled; and
(vi) Relinquishment of copyright

4.6.6.4.2 Compulsory Licenses

Section 31 deals with compulsory licenses of works withheld from

public. The amendment amplifies the applicability of this section from
‘Indian work’ to ‘any work’. The word ‘complainant’ is also replaced
with the words ‘such person or persons who, in the opinion of the
Copyright Board is or are qualified to do so’. By virtue of the above
amendment, compulsory licenses can be obtained for ‘any work’
withheld from the public and not just ‘Indian works’ and the license
can be granted to such persons as the Board may decide.

The law relating to compulsory licenses in unpublished ‘Indian works’

has been amended to allow compulsory licenses to any unpublished
work or any work published or communicated to the public where the
work is withheld from the public in India and in cases where the
author is dead or unknown or the owner cannot be traced.104 Special

104 Copyright (Amendment) Act, 2012 s 31A, sub-s (2) is omitted so as to enable the
Copyright Board to grant compulsory license to more than one person. This s is a
replacement of s 52(1)(j) as it stood before the amendment.
187
provisions have been provided for compulsory licensing of the works for
the disabled.105

4.6.6.4.3 Statutory Licenses

A new provision caters for statutory license to any person desiring to

make a cover version of a sound recording in respect of any literary,
dramatic or musical work. The amendment provides that the person
making the sound recording shall give to the owner prior notice of his
intention in the prescribed manner, provide the copies of all covers or
labels with which the version is supposed to be sold, and pay in
advance the royalty at the rate fixed by the Copyright Board. Such
sound recordings can be made only after the expiration of 5 years after
publication of the original sound recording. There is a requirement of
payment of a minimum royalty for 50,000 copies of the work during
each calendar year.106

A new section 31D providing for statutory license for broadcasters has
been brought to facilitate access to the works for the broadcasting
industry. At present the access to copyrighted works was dependent
upon voluntary licensing. The amendment provides that any
broadcasting organization desiring to broadcast a work including
sound recording may do so by giving prior notice to the right holders
and pay royalty as fixed by the Copyright Board in advance. The names
of the authors and principal performers are mandated to be announced
during the broadcast. The broadcasting organization is required to
maintain records of the broadcast, books of account and render to the
owner such records and books of account.107

105 Id., s 31B.

106 Id., s 31C
107 Supra note 86 at p.182.
188
4.6.6.4.4 Administration of Copyright Societies

All copyright societies will have to register afresh with the registration
granted for a period of five years. Renewal is subject to the continued
collective control of the copyright society being shared with the authors
of works in their capacity as owners of copyright or of the right to
receive royalty. These have been amended to streamline the functioning
of the copyright societies.108 There are specific amendments to protect
the interests of the authors.109 The section has been amended to
provide that every copyright society shall have a governing body with
such number of persons elected from among the members of the
society consisting of equal number of authors and owners of work for
the purpose of the administration of the society. It has been provided
that all members of a copyright society shall enjoy equal membership
rights and there shall be no discrimination between authors and
owners of rights in the distribution of royalties.110

4.6.6.4.5 Fair Use Provisions

The amendment has been extended to fair use clauses,111 the acts that
will not be infringement of copyright. Certain amendments have been
made to extend these provisions in the general context.

The existing clause (1)(a) has been amended to provide fair dealing with
any work, not being a computer programme, for the purposes of private
and personal use. With this amendment, the fair use provision has
been extended to cinematograph and musical works. Fair use in the
above lines has been extended by amendment to bring in the word ‘any
work’ to reproduction in the course of judicial proceedings;

108 Copyright (Amendment) Act, 2012, ss 33, 34 and 35 relate to the registration and
functioning of a copyright society.
109 Id., s 35, the phrase ‘owners of rights’ has been substituted with ‘authors and
other owners of right.’
110 Id. s 35(4)
111 Id. s 52
189
reproduction or publication of any work prepared by secretariat of a
legislature; in certified copies supplied as per law.112

A new clause 52(1)(w) provides that the making of a three dimensional

object from a two dimensional work, such as a technical drawing for
industrial application of any purely functional part of a useful device
shall not constitute infringement. This provision should help reverse
engineering of mechanical devices.113

A new clause 52(zc) has been introduced to provide that importation of

literary or artistic works such as labels, company logos or promotional
or explanatory material that is incidental to products or goods being
imported shall not constitute infringement. This clause supports the
parallel import provision embedded in the Trade Marks Act, 1999.114

Fair use provisions have been extended to the digital environment. Any
transient and incidental storage of any work through the process of
‘caching’ has been provided exceptions as per the international
practice. Any deliberate storing of such works and unauthorized
reproduction and distribution of such works is an infringement under
Section 51 attracting civil and criminal liability. Exceptions under this
section have been extended to education and research purposes, as
works are available in digital formats and in the internet. The scope of

112 T. Prashant Reddy, “The Background Score to the Copyright (Amendment) Act,
2012”, NUJS Law Review, Vol. 5., 2012, p. 469 retrieved from http://
www.nujslawreview.org/pdf/Arts/2012_3/01_prashant.pdf on 5th May, 2015.
113 Shawn Fernandes, ‘Amendment to Indian Copyright Act Passed in Parliament’,
Rolling Stone (India), May 23, 2012, retrieved from http://rollingstoneindia.
com/amendment-to-indian -copyright- act-passed-in-parliament/ accessed on
18th May, 2015.
114 Vickey Lalwani, ‘Industry Divided on Copyright Amendment’, The Times of India
(Mumbai) May 20, 2012,retrieved from http://Art.s.timesofindia.indiatimes.com/
2012-05-20/news 3177 9033_1_javedak htar -lyricists-amendment on 18 May,
2015; and Bollywood Life,‘Javed Akhtar Wins the Fight for Copyright Amendment
Bill’, May 18, 2012, retrieved from http://www.bollywoodlife.com/news-
gossip/javed-akhtar-winsthe-fight-for-copyright-amendm ent-bill/ on 14th May,
2015.
190
these provisions ensures that introduction of new technology will also
be covered under this new section.115

An explanation has been inserted to clause (1)(a) of Section 52 to clarify

that storing of any work in any electronic medium for the specified
purposes, including the incidental storage of a computer programme
which in itself is not an infringing copy, shall not be an
infringement.116

A new clause (b) in Section 52 seeks to provide that transient and

incidental storage of a work or performance purely in the technical
process of electronic transmission or communication to the public shall
not constitute an infringement of copyright. Similarly, clause (c)
provides that transient and incidental storage of a work or performance
for the purposes of providing electronic links, access or integration,
where the right holder has not expressly prohibited such links, access
or integration, shall not constitute infringement.

To facilitate digitization of libraries a new clause (n) has been

introduced to enable the storage of a digital copy of a work if the library
possesses a non-digital version of it. The unauthorized use of copyright
work over the internet leads to suspension of the service provider’s
activity. The new clause (c) of Section 52, while providing for fair use
exemption for transient or incidental storage of works, also provides for
the internet service provider’s liability when read with the additions of
rights of storage and definition of infringement.117

A proviso has been added to this clause to provide a safe harbour as

per international norms to internet service providers, as they are
merely carriers of information provided by others. This is generally

115 Supra note 112 at p. 190.

116 Ibid.
117 Zakir Thomas, “Overview of the changes to Indian Copyright law”, Journal of
Intellectual Property Rights, Vol.17, July 2012, pp. 324-334.
191
referred to as ‘notice and take down procedure’. If the person
responsible for the storage of the copy has received a written complaint
from the owner of copyright in the work, that the transient or
incidental storage is an infringement, such persons responsible for the
storage shall refrain from facilitating such access for a period of
twenty-one days or till he receives an order from the competent court
refraining from facilitating access. In case no such order is received
before the expiry of such period of twenty-one days, he may continue to
provide the facility of such access.118

4.6.6.4.6 Compulsory License and Fair Use Rights for the Disabled

Section 31B provides for compulsory license (CL) in works for the
benefit of the disabled. The Copyright Board, on an application for a by
any person working for the benefit of persons with disability on a profit
basis or for business shall dispose such application within a period of
two months from the date of receipt of application.

The CL issued must specify the means and format of publication, the
period during which the compulsory license may be exercised and the
number of copies that may be issued including the rate or royalty.

The provision for fair use of the work for the benefit of the disabled,
facilitates adaptation, reproduction, issue of copies or communication
to the public of any work in any accessible format, for persons with
disability to access works including sharing with any person with
disability for private or personal use, educational purposes or research.
These rights are available to any person or organization working for the
benefit of the persons with disabilities.119

118 Ibid.
119 Copyright Act, 1957 The new clause 52(1) (zb).
192
4.6.6.4.7 Easier Relinquishment of Copyright

The right of author to relinquish copyright has also been provided for.
The amendment facilitates relinquishment of copyright by way of public
notice. The relinquishment of copyright can be done either by giving
notice to the Registrar of Copyrights or by way of public notice.120

4.6.6.4.8 Strengthening Enforcement and Protecting Against Internet

Piracy Strengthening of Border Measures

The provision dealing with importation of infringing copies, has been

substituted with a new section providing detailed border measures to
strengthen enforcement of rights by making provision to control import
of infringing copies by the Customs Department, disposal of infringing
copies and presumption of authorship under civil remedies.121

4.6.6.4.9 Protection of Technological Measures

The protection of technological protection measures (TPM) used by a

copyright owner to protect his rights on the work, makes circumvention
of it a criminal offence punishable with imprisonment.

As a result, any person who circumvents an effective technological

measure applied for the protection of any of the rights, with the
intention of infringing such rights, shall be punishable with
imprisonment, which may extend to two years and shall also be liable
to fine. The rationale is to prevent the possibility of high rate
infringement (digital piracy) in the digital media. This amendment also
clarifies the problem of circumvention impacting the public interest on
access to work facilitated by the copyright laws. 122

120 Id., s 21(a).

121 Id., s 53 and Supra note 86 at p. 182.
122 Id., s 65A.
193
4.6.6.4.10 Digital Rights Management Information

This amendment is intended to prevent the removal of the rights

management information without authority and distributing any work,
fixed performance or phonogram, after removal of rights management
information. As a result, any unauthorized and intentional removal or
alteration of any rights management information is a criminal offence
punishable with imprisonment, which may extend to two years and
fine. The rationale of the protection emanates from the practice in the
digital world of managing the rights through online contracts governing
the terms and conditions of use.123

4.7 Law Relating to Trademarks in India: An Overview

While some form of proprietary protection for marks in India dates
back several millennia, India’s statutory Trademarks Law dates back to
1860. Prior to 1940 there was no official trademark Law in India.
Numerous problems arouse on infringement, law of passing off etc and
these were solved by application of section 54 of the Specific Relief Act,
1877 and the registration was obviously adjudicated by obtaining a
declaration as to the ownership of a trademark under Indian
Registration Act, 1908. 124

To overcome the aforesaid difficulties the Indian Trademarks Act was

passed in 1940, this corresponded with the English Trademarks Act,
1938 after this there was an increasing need for more protection of
Trademarks as there was a major growth in Trade and Commerce. The
replacement to this Act was the Trademark and Merchandise Act,
1958.This Act was to provide for registration and better protection of
Trademarks and for prevention of the use of fraudulent marks on

123 Id., s 65B has been introduced to provide protection of rights management
information, which has been defined under clause 2(xa).
124 Ashwani Bansal, Law of Trademarks in India, Commercial Law Publishers, 2001,
p. 21.
194
merchandise.125 This Law also enables the registration of trademarks
so that the proprietor of the trademark gets legal right to the exclusive
use of the trademark.126 The objective of this Act was easy registration
and better protection of trademarks and to prevent fraud.

4.7.1 Trade Marks Act: Impact of Amendment in 1999

The reappellation of the Trademarks and Merchandise Act, 1958 gave
rise to the Trademark Act 1999; this was done by the Government of
India so that the Indian Trademark Law is in compliance with the
TRIPS obligation on the recommendation of the World Trade
Organization. The object of the 1999 Act was to confer the protection to
the user of the trademark on his goods and prescribe conditions on
acquisition, and legal remedies for enforcement of trademark rights. It
provided for the first time protect service marks and give provision of
registration for collective marks, it also differentiated between known
trademarks and trademarks in general, and also special treatment and
rights are envisaged for well known trademarks. The Act of 1999 also
gave police the right to arrest in case of infringement .It is a
modification of the 1958 act, it has provided exhaustive definitions of
terms frequently used, enhanced punishment for offenders, increased
the period of registration, registration of non- traditional trademarks.127
The rules of this Act are called as Trademark Rules 2002. Both the Act
and its set of rules came to effect on September 15th 2003. Laws of
trademarks are based on distinctiveness and deceptive similarity. If
distinct signs are freely used the brand equity created by one person

125 Tanya Aplin & Jennifer Davis, Intellectual Property Rights Law, Oxford University
Press, New York, 2009, pp.456-501 and V.K Ahuja, Intellectual Property Rights in
India,Lexis Nexis, Butterworths Wadhwa, Nagpur, 2009,p.189.
126 Kailasam, Vedaraman, Law of Trade Marks and Geographical Indications,
Wadhwa, Nagpur, 2009, p.57.
127 Jeremy Philips and Alison Firth, Introduction to Intellectual Property
Law,LexisNexis, Butterworths, UK, 2001, p.321.
195
will be freely used by another. The value of distinctive sign depends on
sales volume and public association of sign with quality.128

The 1999 enactment has extended the scope of protection by

registration of trade marks to services, besides goods. It provides for a
single register and simplifies the procedure for registration. It
recognizes well known marks as a distinct category, and provides for
registration of collective marks, owned by an association of persons. It
firmly discourages persons tempted to exploit other persons’ good
name in business through false or misleading marks or indications.129

The Controller General of Patents, Designs and Trade Marks is the

Registrar of Trade Marks. The Act establishes an IP Appellate Board
with the same powers as are vested in civil court. Any proceedings
before the Board are deemed as judicial proceedings. This Board, it
should be noted, is common for patents, designs and trade marks.130

The salient features of a trademarks law could be outlined as under:

(i) one of the most complex problems that need attention is the
clear definition of signs which can serve as marks;
(ii) exclusion of signs which lack distinctive character or which are
in conflict with existing marks;
(iii) exclusion of misleading signs;
(iv) exclusion of signs that are in conflict with geographical
indications;
(v) non-registered trademarks to be excluded from protection;
(vi) right to use a mark, despite the existence of a mark of a
competitor; regulation of the question whether “parallel
importation” i.e., importation of products put on the market by

128 Supra note 124 at p. 194.

129 Ibid.
130 Ibid.
196
 the owner of the mark or with his consent in another country
and imported into the country in question under the same mark
but without its or his consent, is permitted;
(vii) modes of assignment and licensing without misleading
consumers;
(viii) strong protection of consumers against misleading;
(ix) regulation of collective marks and certification of marks, as well
as standards of labeling; and
(x) registration procedures and infringement proceedings;
(xi) training and institutional arrangements; and
(xii) Publication of relevant information and documentation.

TRIPs Agreement provides for the minimum standards that need to be

incorporated into the domestic legislations.131 This new Act amended
and consolidated the law relating to trademarks, to provide for
registration and better protection of trademarks for goods and services
and for the prevention of the use of fraudulent marks. Indian
Trademark Law specifically requires it be “capable of representing
graphically” and should be 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 colours.132 The scope of
trademarks protection varies taking into account the subject matter
that needs to be protected. As mentioned above, there are different
kinds of marks such as ‘certification marks’, ‘collective marks’ and
‘well-known marks’. Article 15 (1) of the TRIPs Agreement requires that
the signs that are to be protected as trademarks must be “inherently
capable of distinguishing the relevant goods and services”. The Indian

131 TRIPs Agreement Art. 15 to 21.

132 Id., Art. 15 (1) provides a definition of trademark in the following way: Any sign, or
any combination of signs, capable of distinguishing the goods or services of one
undertaking from those of other undertakings shall be capable of constituting a
trademark.
197
Trademarks Act, 1999133 incorporates somewhat this `negative test’
while determining the `inherent distinctiveness’. It, inter alia, provides
that the trademarks that exhibit the following characteristics shall not
be registered:

(i) which are devoid of any distinctive character, that is to say, not
capable of distinguishing the goods or services of one person
from those of another person;
(ii) which consist exclusively of marks or indications which may
serve in trade to designate the kind, quality, quantity, intended
purpose, values, geographical origin or the time of production of
the goods or rendering of the service or other characteristics of
the goods or service; and
(iii) which consist exclusively of marks or indications which have
become customary in the current language or in the bonafide
and establishing practices of the trade.

4.7.2 The Scope of Trademarks Protection

The Indian Trademarks Act in Section 2 (2) provides that a ‘trademark’,
unless the context otherwise requires, “shall include reference to
“collective mark” or “certification trademark”.

4.7.2.1 Collective Marks

A collective mark could be owned by an association which itself does

not use the collective mark but whose members may use the collective
mark. For example, an association founded typically to ensure the
compliance of certain quality standards by its members. Members
could use these marks once they fulfill or comply with the standards
set by the association. It is, therefore, stated that the function of the
collective mark is to inform the public about certain particular features

133 s 9.
198
of the product for which the collective mark is used.134 Indian
Trademarks Act in Section 2 (1) (e) defines ‘collective mark’ as “a
trademark distinguishing the goods or services of members of an
association of persons…which is the proprietor of the mark from those
of others”. Chapter VIII of the Indian Trademarks Act deals with
various measures, specifically with regard to registration process of
such marks.135

4.7.2.2 Certification Marks

A certification mark refers to certain defined standards. Anyone who

has been following or applying these standards could use the
certification mark. The difference between the ‘collective mark’ and the
‘certification mark’ is that the former i.e., collective mark could be used
only by the members of an association, while latter i.e., certification
mark could be used by anybody who complies with defined standards.
The Indian Trademarks Act136 also provides for the protection of a
‘certification mark’ Chapter IX137 of the Indian Trademarks Act deals
the procedural aspects of granting and registration of ‘certification
marks’.

4.7.2.3 Well-known Mark

TRIPs Agreement makes a reference to ‘well-known mark’ through

Article 6bis of the Paris Convention for the Protection of Industrial

134 The Paris Convention for the Protection of Industrial Property provides in Art. 7bis
for the collective marks and it requires Member countries provide protection for
the collective marks of the other Members.
135 Act of 1999, ss 61 to 68.
136 Id., s 2 (1) (e) hereinafter it is described as “a mark capable of distinguishing the
goods or services in connection with which it is used in the course of trade which
are certified by the proprietor of the mark in respect of origin, material, mode of
manufacture of goods or performance of services, quality, accuracy or other
characteristics from goods and services not so certified.”
137 Id., ss 69 to 78.
199
Property.138 The Indian Trademarks Act139 defines a ‘well known mark”
in relation to any goods or services as “a mark which has become so to
the substantial segment of the public which uses such goods or
receives such services that the use of such mark in relation to other
goods or services would be likely to be taken as indicting a connection
in the course of trade…”

4.7.2.4 Term of Protection

Article 18 of the TRIPs Agreement provides for the term of protection of

trademarks. It proposes a term of no less than seven years after initial
registration. It also provides that the registration of a trademark shall
be renewable indefinitely.140 At the international level, the duration of
protection varies from ten to twenty years. Some countries like United
Kingdom allow initial period of protection seven years and then the
renewal of registration to an increasing period of around fourteen
years.

4.8 The Designs Act, 2000

The Designs Act, 2000 lays down the law for protection of industrial
designs in India. As stated above, The Controller General of Patents,
Designs and Trade Marks is also the Controller of Designs. The salient
features141 of this enactment are:

(i) It defines ‘original’ and enlarges the scope of definition of ‘article’

and ‘design’;
(ii) It spells out what designs shall not be registered, brings in the
internationally followed system of classification in place of the
Indian system;

138 It provides “…In determining whether a trademark is well known, account shall be
taken of the knowledge of the trademark in the relevant sector of the public,
including knowledge in that Member obtained as a result of the promotion of the
trademark”.
139 Trademarks Act, 1999 s 2 (2) (zg).
140 Id., s 25 provides a protection for a period of ten years and it can be renewed from
time to time subject to the payment of applicable fees.
141 Supra note 82 at p.180.
200
(iii) It provides for restoration of lapsed designs and maintaining the
register of designs on computers;
(iv) The two-year period of secrecy of registered design is revoked and
any document for transfer of right in a registered design is
required to be compulsorily registered;
(v) More grounds have been added for cancellation of registration
and cancellation proceedings are to be initiated before the
Controller of Designs instead of High Court;
(vi) Infringement attracts heavier penalties; the initial period of
registration is enhanced from 5 years to 10 years;
(vii) It provides for control of anti-competitive practices in contractual
licenses; and
(viii) Appeal against the order of the Controller lies to the High Court.

4.9 The Geographical Indications of Goods (Registration and

Protection) Act, 1999
This enactment came into force only in September 2003, although it
was passed by our Parliament in 1999. The enactment was brought
into operation pursuant to India’s obligations under the TRIPs
Agreement. It should be noted that under TRIPs Agreement India is
obligated to protect GIs of other contracting states. In the absence of
any legislation on GIs on the date of entry into force of TRIPs (and
WTO) in 1995 within India, Indian goods could not get such a
protection in the territory of other WTO Member countries. In other
words, unless a GI is protected in the country of its origin, there is no
obligation under TRIPs for other countries to extend reciprocal
protection.142 India would, on the other hand, be required to extend
protection to goods imported from other countries which provide for

142 The TRIPs Agreement, Art. 24 (3).

201
such protection. In view of this, the Indian legislation on GIs was
formulated. The scope of protection under the Indian law is broader.143

The Indian law provides for the establishment of GIs Registry144 and it
can be located in any place deemed fit by the Central Government. The
names, addresses and other descriptions of all goods that are proposed
to be protected shall be entered in the Register of GI as established
under Section 6. This register can be maintained wholly or partly in
computer floppies or diskettes or in any other electronic form, subject
to safeguards as may be prescribed.145

Certain kinds of GIs and in certain circumstances cannot be

registered.146 These grounds are:

(i) A GI whose use is likely to deceive or cause confusion;

(ii) A GI whose use is contrary to any law for the time being in force;
(iii) A GI which comprises or contains scandalous or obscene matter;
(iv) A GI which comprises or contains any matter likely to hurt the
religious susceptibilities of any class or section of the citizens of
India;
(v) A GI which is otherwise disentitled to protection in a court; and
(vi) A GI which has been determined as a generic name or indication
of good and accordingly ceased to be protected in the country of
origin or that GI has fallen to disuse in that country.

143 GI Act, 1999, s 2 (e) it defines ‘goods’ to include “…agricultural goods, natural
goods or manufactured goods as originating or manufactured in the territory of a
country, or a region or locality in that territory, where a given quality, reputation or
other characteristic of such goods is essentially attributable to its geographical
origin…”, Carlos M. Correa, Intellectual Property Rights, the WTO and Developing
Countries, The TRIPs Agreement and Policy Options, Third World Net Work,
Penang, Malaysia, 1997, p. 200. The TRIPs Agreement: A Guide for the South,
Uruguay Round Agreement on Trade-Related Aspects of Intellectual Property
Rights, South Centre, Geneva.
144 Id., s 5.
145 The Geographical Indications of Goods (Registration and Protection) Act, 1999, s 7.
146 Id., s 9.
202
GIs which, although literally true as to the territory, region or locality
in which the goods originate, but falsely represent to the persons that
the goods originate in another territory, region or locality, as the case
may be. Homonymous GIs can be registered if the Registrar is satisfied
that such homonymous (GIs with similar names and origin) indications
could be differentiated from other homonymous indication and the
need to ensure equitable treatment of the producers of the goods
concerned, that the consumers of such goods should not be confused
or mislead in consequence of such registration.147

The application for a GI could be filed by (a) association of persons; or

(b) producers; or (c) any organization or authority established by or
under any law that is in force. These categories of persons or groups
should represent the interests of the producers of the concerned goods.
The applications shall be in writing addressed to the Registrar in a
prescribed form accompanied with prescribed fees.148

4.10 The Protection of Plant Varieties and Farmers’ Rights Act,

2001

Pursuant to its TRIPs obligations and to give effect to these obligations,

India enacted the Protection of Plant Varieties and Farmers’ Rights Act,
2001. This enactment recognizes and protects the rights of farmers in
respect of their contribution made at any time to conserve, improve,
and to make available plant genetic resources for the development of
new plant varieties. The objective of the enactment is also to help
farmers to have free access to their plant varieties and seeds. The
salient features of the enactment149 are summarized below:

147 Id., s 10
148 Supra note 124 at p. 194.
149 Ibid.
203
(i) It, inter alia, defines key terms such as variety, essentially
derived variety, ‘extant variety breeder, farmer, farmers’ variety,
seed and others;
(ii) It establishes the Protection of Plant Varieties and Farmers’
Rights Authority;
(iii) It provides for the registration of plant varieties and essentially
derived varieties;
(iv) The duration of protection initially is nine years in the case of
trees and vines and six years in the case of other crops; and this
period could be reviewed and the total period of protection, in
any case for trees and vines cannot exceed eighteen years and for
extant varieties fifteen years and in other cases fifteen years from
the date of registration;
(v) It has provisions relating to farmers’ rights, rights of
communities;
(vi) It incorporates a provision that provides for the protection of
innocent infringement;
(vii) The enactment lays down criteria for granting compulsory license
in certain circumstances e.g., to meet the reasonable
requirement of the public or in public interest;
(viii) It creates a ‘gene fund’ to help farmers and communities150
(ix) It has a dispute settlement machinery that provides for dispute
settlement by creating a Plant Varieties Protection Appellate
Tribunal, a specialized body deal with cases that may arise under
the enactment; and
(x) It provides for infringement, penalties and other related issues.

150 Protection of Plant Varieties and Farmers’ Rights Act, 2001, s 45.
204
4.11 The Semiconductor Integrated Circuits Layout Design Act,
2000
The Semiconductor Integrated Circuits Layout Designs Act, 2000 is to
give effect to India’s TRIPs obligations. The TRIPs Agreement151
provided for the minimum standards of protection that need to be
granted for the topographies of the lay out design of the integrated
circuits. The salient features of this enactment are outlined below:

(i) It, inter alia, defines a layout design and what it means by
semiconductor integrated circuits;
(ii) It creates a register and outlines the conditions of registration
semiconductor integrated circuits and lay out designs;
(iii) It does not allow registration of layout designs that are not
original; or which has already been commercially exploited; or
which is not inherently distinctive; and not capable of being
distinguishable from another registered layout design152
(iv) The enactment provides for registration procedures and the
registration is for ten years;
(v) It establishes a Layout Design Appellate Board; and
(vi) It provides for penalties for infringement and other related
offences.

4.12 The Enforcement Procedures of Intellectual Property Rights

in India
The institutional mechanism in the intellectual property arena
basically comprises of firstly the administrative mechanism, which
basically deals with grant or registration of intellectual property right
and secondly the judicial mechanism that basically deals with appeals
from orders of the administrative authorities, infringement and related
issues.

151 Id., s 6 (Part II).

152 The Semiconductor Integrated Circuits Layout Design Act, 2000, s 7.
205
4.12.1 Administrative Mechanism
The Office of the Controller General of Patents, Designs and
Trademarks (CGPDTM) is a subordinate office under the Department of
Industrial Policy and Promotion (DIPP) in the Ministry of Commerce
and Industry (MoC&I). This Office has the statutory responsibility for
administration of patents, trademarks and industrial designs and
serves as a main source of policy advice to the Government of India on
industrial property matters. With the passing of the Geographical
Indications of Goods (Registration and Protection) Act, 1999 the
CGPDTM is now also charged with the duty of protecting and
administering the Geographical Indications.

(Source: http://ipindia.gov.in/main)

206
4.12.1.1 The Office of the Contoller General of Patents, Designs and
Trademarks (CGPDTM)

As stated above, the CGPDTM is one of the main administrative

institutions in India in the intellectual property arena. It handles and
administers patents, Trademarks, Designs and Geographical
Indications and therefore no doubt the foremost and important office
on the subject.

4.12.1.2 The Patent Office

The Patent Office comprises of patent examiners and other officers

performing the statutory duties in connection with the administration
and grant of patents for new inventions under the Patents Act, 1970 as
amended till date.153

4.12.1.3 Register of Patents

In each of the patent offices, a register of patents is kept in which the

following details are entered:

(i) The names and addresses of grantees of patents;

(ii) Notifications of assignments and of transmissions of patents, of
licenses under patents, and of amendments, extension and
revocation of patents; and
(iii) Particulars of such other matters affecting the validity or
proprietorship of patents as may be prescribed.

The register is kept under the control and management of the

Controller. Any subsequent change with regard to ownership and
address for service is to be updated and incorporated in the register. It

153 The Controller General of Patents, Designs and Trade Marks appointed under the
Trade Marks Act, 1999, s 3 (1) is the Controller of Patents for the purposes of
Patents Act, 1970. s 73 (1). As per s 2(1)(b) of the Act the term ‘controller’, means
the Controller General of Patents, Designs and Trademarks referred to in s 73 of
the Act. Retrieved from http:// ipindia.gov.in / main_text.htm on 3rd April, 2015.
207
should be stated that true or certified copy of the extracts from the
Register are admissible in evidence in all legal proceedings.154

4.12.1.4 The Trade Marks Registry

The Trade Marks Act, 1999 provides for registration of goods and
services. The CGPDTM is the Registrar of Trade Marks for the purposes
of the Act.155 The Central Government is empowered under the Act to
appoint such other officers with such designation as it thinks fit for the
purpose of discharging under the superintendence and direction of the
Registrar, such functions of the Registrar under this Act as he may
from time to time authorize them to discharge.156

The jurisdiction of the offices of the Trademarks registry is not affected

by changes in the principal place of business or of any address for
service. In the Act any reference to the Trademarks Registry is to be
construed as including a reference to any office of the Trademarks
Registry.

4.12.1.5 Register of Trademarks

The trademarks register157 is kept under the control and management

of the Registrar. All registered trademarks are entered in a record
called the Register of Trademarks, which is kept at the head office of
the Trademarks Registry at Mumbai. For convenience, the Register is
divided into various classed following the classification of goods and
services and the registered marks relating to each class arranged
serially according to the official numbers allotted to the corresponding
applications for registration.

154 Retrieved from http://ipindia.gov.in/main_text.htm accessed on 3rd April, 2015.

155 Trademarks Act, 1999, s 3(1).
156 Id., s 3(2).
157 Trademarks Act, 1999, s 6 and Trademarks Rules, 2002, 59-62 deal with the
Register of Trademarks.
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4.12.1.6 Powers of the Registrar of Trademarks

In all proceedings under the Act before him, the Registrar has all the
powers of the Civil Court158 Registrar has power to review his own
decision on an application made in the prescribed manner. All
proceedings before the Registrar of Trademarks while discharging the
functions as “Tribunal” Section 127 of the Act empowers the Registrar
to review his own decision.159

4.12.1.7 Post Registration Work and Registered Users

Post registration work relating to renewal of registration, registration of

subsequent proprietors by assignment or transmission, corrections or
alterations of entries in the register, alterations of registered
trademarks, are carried out at the head office. Applications for these
proceedings must be filed at the head office. When a hearing becomes
necessary, it is given at the appropriate office of the Registry.

4.12.1.8 The Copyright Office

The first step towards getting a copyright is through copyright office. It

has been created at New Delhi in to administer the various provisions
of the Copyright Act 1957.160 The Copyright Act, 1957 provides for a
comprehensive mechanism for administration and registration of
copyright.161 It should be mentioned that copyright comes in to
existence as soon as a work is created and registration is not a
prerequisite for the right to come in to existence.162 Therefore

158 Id., s 127.

159 B.L Wadhehra, Law relating to Patents, Trademarks Copyright, Designs and
geographical Indications, Universal law Publications, Delhi, 2004, pp.441-467.
160 ss. 9(1),(2) headed by the Registrar of Copyrights as appointed by the Central
Government.
161 Copyright Act, 1957, Under Chapter X, ss. 44 to 50A provide the procedure for
registration of a copyright has been provided and Chapter II, ss. 9 to 12 provides
for a copyright office under the Registrar of Copyright and a Copyright Board for
administration and enforcement of the rights of an owner.
162 Id., s 9(10).
209
registration of copyright is not mandatory. The Registrar of Copyright
as the head of the Copyright Office followed by Deputy Registrar.

4.12.1.9 Register of Copyright

The Act obligates the Registrar of Copyrights to maintaining a Register

containing the name or titles of works and the names and addresses of
the authors, publishers and owners of copyright and other particulars
as maybe prescribed.163Every entry made in the Register of Copyright
should be published in the official Gazette or in such manner, as the
Registrar may deem fit.

The Registrar has the power to register the work of the copyright holder
on receipt of an application in the prescribed format along with the
prescribed fee and after holding such enquiry as he may deem fit. It
should be mentioned that the Registrar has the power to refuse the
registration of the copyright work in the case of an artistic work which
is used or capable of being used as a trademark, if the application has
not been accompanied by a certificate from the Registrar of Trade
Marks to the effect that no trade mark identical with or deceptively
similar to such artistic work has been registered or applied for, under
the Trade and Merchandise Marks Act, 1958 in the name of another
person.

4.13 Judicial Mechanism

Followed by a well-contemplated administrative mechanism a judicial
mechanism too has been created to deal with appeals against orders of
the administrative authorities and to deal with enforcement issues. The
following is the judicial mechanism:

I. The Intellectual Property Appellate Board (IPAB): The IPAB has

been constituted to hear appeals against orders of the officers of

163 Id., s 44.

210
 the CGPDTM under the Trade Marks Act, 1999, The Patents Act,
1970 and the Geographical Indications of Goods (Registration and
Protection) Act, 1999.

II. The Copyright Board to hear appeals against the orders of the
Registrar of Copyright.

4.13.1 The Intellectual Property Appellate Board (IPAB)

The Board was set up under Trade Marks Act 1999.164 It was made
operational to hear appeals against the decisions of the Registrar under
the Trade Marks Act, 1999. The Patents Act 1970 was amended by the
Patents Amendment Act, 2005 which makes provisions for
establishment of an Appellate Board for patents matters. Accordingly
the Act provides that the IPAB established under section 83 of the
Trade Marks Act, 1999 shall be the Appellate Board for the purpose of
Patent matters.

The primary objective for the establishment of the IPAB is to provide for
an expeditious adjudication of appeals by Judicial and Technical
experts. This IPAB is headed by a Chairman. Its other members are
Vice-chairman and Two Technical Member for Trademarks matter and
One Technical Member for Patent matters. Separate benches are
constituted for hearing Patent and trademarks cases. Chairman of the
IPAB notify the composition of bench for patents and trademarks and
allot cases to these benches from time to time for disposal. The
Chairman also has the power to transfer cases from one Bench to
another either on an application by a party to the hearing or on its
own. This discretionary power will ensure fixing the place of hearing
taking into consideration the convenience of the parties.

164 Trademarks Act, 1999, s. 83.

211
Orders passed by the IPAB are subject to appeal before the High Court.
It is to be noted that the IPAB has no statutory power to try
infringement proceedings. These proceedings are solely under the
jurisdiction Courts. The IPAB is not bound by the procedure laid down
in the Code of Civil Procedure, 1908 (CPC) but has powers to make its
own rules in consonance with the principles of natural justice. The
Board has the power to regulate its own procedure including the fixing
of places and times of its hearings. The Board for the purpose of
discharging its functions has same powers as are vested in a civil
court.165 In the case of Shamnaad Bashir v. UOI, the Chennai High
court has declared the composition of the IPAB as unconstitutional166
by Chief Justice S.K Kaul in the case challenging the appointment of
vice chairman of IPAB.167

Apart from the above specialist forums the general courts are
empowered to deal with various offences, infringement, passing off and
related issues. Almost all the statutes concerning the family of
intellectual property contemplate civil and criminal remedies to deal
with infringement of the statutory right and other offences.
Interestingly, the aggrieved party while approaching a civil court under
any of the statute has an additional forum to the one as defined by s.
20 of the Civil Procedure Code (CPC). That is the aggrieved party or the
plaintiff can institute the suit in the district court within the local

165 Id., s 11(1).

166 Id., 85 (1) 2(b), which provides for a qualification qua a member of Indian Legal
Service who held the post of Grade I of service or of higher post at least five years to
the post of Vice-Chairman is declared unconstitutional, being an affront to the
separation of powers, independence of judiciary and basic structure of the
Constitution.
(2) S 85(3)(a) provides for the eligibility of a member of the Indian Legal Service and
has held the post of Grade I of that Service for at least three years for qualification
for appointment to the post of a Judicial Member in IPAB, is declared as
unconstitutional, being contrary to the basic structure of the Constitution.
167 W.P.No.1256 of 2011 on 10th March, 2015.

212
limits of whose jurisdiction at the time of institution of the suit or other
proceeding, the person instituting the suit or other proceeding
voluntarily resides or carries on business or personally works for gain.
The Civil Courts and Criminal Courts can direct or order various
interim reliefs as they deem fit in the facts and circumstances of each
case.

4.13.2 Border Measures

The TRIPS Agreement contains the ‘Special Requirements Related to
Border Measures.’168 Towards effective protection of intellectual
property member states are obligated to have such measures in their
domestic laws. Under the various intellectual property statutes the
administrative authorities, along with the customs authorities are
obligated to confiscate and seize goods which are pirated or are
infringing and so on which originate from countries which have weak
intellectual property laws or weak enforcement mechanisms.

4.13.3 Powers and Functions of the Copyright Board

The Copyright Board under s 12 of the Act has power to regulate its
own procedure, including the fixation of places and times of its sittings.
Ordinarily, the Board hears any proceedings instituted before it within
the zone, in which the person instituting the proceedings actually or
voluntarily resides, or carries on business or personally, works for gain.
For this purpose the country is divided into five zones; namely
Northern, Eastern, Western, Southern and Central zones. The Board
has the following powers under the Act:

(i) hear appeals against the orders of the Registrar of Copyright;

(ii) hear applications for rectification of entries in the Register of
Copyrights;

168 The TRIPS Agreement s 4, Arts 51 to 60.

213
(iii) adjudicate upon disputes on assignment of copyright;
(iv) grant compulsory licenses in respect of Indian works withheld
from public;
(v) grant compulsory licenses to publish unpublished Indian works:
(vi) grant compulsory licenses to produce and publish translation of
literary or dramatic works;
(vii) grant compulsory licenses to reproduce and publish certain
categories literary, scientific or artistic works for certain
purposes;
(viii) hear and decide disputes as to whether a work has been
published or as to the date on which a work was published or to
decide whether the term of copyright for any work is shorter in
any other country than that provided in respect of the work
under the Act;
(ix) fix rates of royalties in respect of sound recordings under the
cover-version provision; and
(x) fix the resale share right in original copies of a painting, a
sculpture or a drawing and of original manuscripts of a literary
or dramatic or musical work and others.

An appeal against all orders passed by the Copyright Board lies to the
High Court within whose jurisdiction the appellant resides or carries on
business except under section 6 of the Act.169

4.13.4 Reform of Copyright Board after Copyright (Amendment)

Act, 2012
Under s 11(4) of the Act, the Registrar of Copyright shall be Secretary of
the Copyright Board and shall perform such functions as may be
prescribed. It should be pointed out that both the Registrar and the
Copyright Board constituted under the Act 170have the powers of a civil
court.171

169 For determining the term of copyright,s 72.

170 Copyright Act, 1957, s 11 (1) “The Copyright Board is a body constituted under the
Act to discharge certain judicial functions. The Act provides that the Board will
214
The Copyright Board during the last decade has changed significantly.
Considering the diverse nature of issues being dealt with by the
Copyright Board, section 11 relating to the constitution of the
Copyright Board has been amended to make it a body consisting of a
Chairman and two members. A provision has also been introduced for
payment of salaries and allowances to the members of the Board. This
reformist approach is timely, looking at the multifarious
responsibilities the Copyright Board is now called upon to discharge.172

4.14 Interim Reliefs / Orders in Infringement of Intellectual

Property Rights
In an infringement action interlocutory relief in the form of injunctions,
Anton Piller Orders, Mareva Injunction or John Doe Orders and such
other remedies are very important. Even when the chances of success
at the trial are only twenty percent the interim relief sought is often
granted. One of the logics being that on grant of interim relief may be
in the form of interlocutory injunction the infringement complained off
is stopped immediately. Also a successful motion for interlocutory
injunction normally puts an end to the litigation and the infringement
with a great saving in expense compared with a full trial. After having
discussed the jurisdictional aspect in an infringement action in this the

comprise of a Chairman and not less than two and not more than fourteen
members. The Chairman of the Copyright Board must be a person who is or has
been a judge of a High Court or is qualified for appointment as the judge of a High
Court.”
171 Id., s 74 provides for Powers of a Civil Court in respect of the following matters,
namely:
a) Summoning and enforcing the attendance of any person and examining him on
oath;
b) Requiring the discovery and production of any document;
c) Receiving evidence on affidavits;
d) Issuing commissions for the examination of witnesses or documents;
e) Requisitioning any public record or copy thereof from any court or office;
f) Any other matter, which may be prescribed.
172 Supra note 112 at p. 190.
215
interim or interlocutory relief which courts normally grant to protect
the interests of the plaintiff.

India has a comprehensive and well laid out independent judicial

system as mandated by TRIPs agreement.173 In a suit for infringement
of intellectual property rights, a civil court grants the following reliefs to
the aggrieved party:

(i) Interlocutory Injunction;

(ii) Permanent Injunction;
(iii) Anton Piller Orders;174
(iv) Mareva Injunction;175
(v) Damages;176
(vi) Account of Profits; and 177

(vii) John Doe Orders.178

173 TRIPs Agreement, Arts 44 to 46 of the Agreement specifically require the member
states to endow its judicial authorities with the power to issue injunction, power
to order payment of damages adequate to compensate the right holder where the
infringer, who knowingly or with reasonable grounds know, that he in is engaged
in infringing activity.
174 Anton Piller K.G. v. Manufacturing Processes Ltd. [1979] PRC 719.
175 The interlocutory injunction granted to restrain the defendants from disposing off
their assets within the jurisdiction until the trial or judgment in the action. Such
an order is passed when there is danger of the defendants disposing off or
transferring their assets Therefore it is the combination of the Anton Piller Orders
and Mareva Injunction that can have a strong deterrent effect on infringing
activities. The interlocutory injunctions as granted under Order 39 Rule 1 & 2 of
the CPC have a similar effect.
176 Specific Relief Act, 1963, s 40(1) of provides that in a suit the plaintiff for
perpetual injunction or mandatory injunction may claim damages in addition to
or in substitution of the relief of injunction and the court may grant the same as
it thinks fit, and s 40(2 states the court may not grant the relief of damages
unless it is specifically claimed in the plaint. It is for the plaintiff to prove the
extent of damages and will recover only in respect of such damage he is able to
show to have in fact sustained or as must be presumed to flow from the acts
proved to have been committed by the defendant.
177 The object of the account is to give to the plaintiff the actual profits the
defendants have made and of which equity sTRIPs them as soon as it is
established that the profits were improperly made.
178 John Doe Orders’ enable the order to be served upon persons whose identity is
unknown to the plaintiff at the time the action was commenced, but whose
activity falls within the scope of the action. In other words these orders termed as
216
4.14.1 Civil Litigation in Intellectual Property Law
The basic objectives of civil litigation are:

(i) to provide compensation for the prejudice caused by

infringements;
(ii) to dispose appropriately of the infringing copies ;
(iii) to dispose appropriately of implements used for infringing
activities; and
(iv) to grant injunctions to prohibit further infringements.

The remedies typically available in IP infringement actions are

injunctions, damages and account of profits. Most actions start with an
application for some form of preliminary or interlocutory relief, and in
most cases do not get beyond the preliminary stage.179

4.14.1.1 Provisional Remedies Outlined in the Intellectual Property

Statutes

The Copyright Act, 1957 under section 55(1) provides that in a suit for
infringement the owner of the copyright shall be entitled to remedies of
injunction, damages, accounts and otherwise as are or may be
conferred by law for infringement of the right. Similarly the Patents Act,
1970 vide s 108(1) states that the in a suit for infringement the relief
which the court grant may include an injunction (subject to such
terms, if any, as the court thinks fit) and, at the option of the Plaintiff
either damages or an account of profits. Also the Trade Marks Act,
1999 outlines various reliefs in suits for infringement or for passing off
in sec 135(1) namely the relief of injunction (subject to such terms, if
any, as the court thinks fit) and at the option of the plaintiff, either
damages or an account of profits, together with or without any order

‘John Doe Orders’ are passed to enable the seizure of infringing goods wherever
they may be located and operate against any potential defendant, who is
subsequently identified as the counterfeiter/infringer.
179 Supra note 124 at p.194.
217
for the delivery-up of the infringing labels, marks for destruction or
erasure. Further, s 135(2) of the Trade Marks Act, 1999 explicitly
provides that the order of injunction may include an ex parte
injunction or any interlocutory order for any of the following matters,
namely:-

(i) for discovery of documents;

(ii) preserving of infringing goods, documents or other evidence
which are related to the subject-matter of the suit; and
(iii) restraining the defendant from disposing of or dealing with his
assets in a manner which may adversely affect plaintiff’s ability
to recover damages, costs or other pecuniary remedies which
may be finally awarded to the plaintiff.

4.14.1.1.1 Preliminary Relief: The Interlocutory Injunction

It should be noted that preliminary remedies are of the utmost

importance to the protection of IPRs. The period from the time of
commencement of proceedings to the final determination of a case can
allow significant damage to be done to sales and profits and to
reputation, due to other exploitation of material and/or information.
Furthermore, the nature of the infringement or other unlawful conduct
may be such which may make damages or an account of profits an
inadequate remedy.180 One of the reasons for this is that the defendant
may be impecunious or may disappear. But, these will not be the only
reason why, in a particular case, damages may not be an adequate
remedy. More often, this is because of the nature of the IPR in question
and the difficulty of reaching a precise estimate of the loss suffered as
the result of an infringement. The most useful and widely used
preliminary remedy is the interlocutory or interim injunction, the main

180 Supra note 124 at p. 194.

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purpose of which is usually described as being to preserve the status
quo until the hearing of the main action. It has been pointed out that
interlocutory injunctions are not sufficient to protect IPRs against the
threat of continuing infringement. The evidence needed to sustain an
application for both interim and final relief may not be readily
available.181 It is also possible that the defendants might remove or
destroy the infringing material to avoid any future legal problems. A
speedy and effective means of obtaining and preserving such evidence
has been developed by courts in the United Kingdom. The relief granted
is an ex parte order for entry and inspection of premises and removal of
evidence. These orders are known as Anton Piller Orders and may be
necessary step before an interlocutory injunction can be obtained.182

In India, the general law relating to injunctions is contained in Specific

Relief Act, 1963.183These provisions though do not limit the power of a
court nevertheless they provide valuable guidelines as to the nature of
this form of equitable relief. The relief of declaration and injunction
under the provisions of the Specific Relief Act, 1963 is purely
discretionary and the plaintiff cannot claim it as of right. S 36 of the
Specific Relief Act merely states that preventive relief is granted at the
discretion of the court by injunction, temporary or perpetual.

181 Rainmaker, MIPL Study literature,2009, p.45.

182 The Anton Piller Orders derive their name from the case Anton Piller AG v.
Manufacturing Processes, 1976 case decided by the UK Court of Appeal. In this
case, Anton Piller, a German national, with a view to protect his trade secrets
sought an ex parte order from the Court to search the defendant’s premises and
remove the information related to the trade secrets. An Anton Piller Order has the
following three elements, namely:
(i) an injunction restraining the defendant from dealing in the infringing goods or
destroying them;
(ii) an order that plaintiff’s solicitors be permitted to enter the premises of the
defendants, search the same and take goods in their safe custody; and
(iii) an order that the defendant be directed to disclose names and addresses of
suppliers and customers can also to file an affidavit within a specific time
giving this information.
183 Specific Relief Act, 1963, ss 36 to 42.
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A temporary injunction consists of two stages, one granted without
finally disposing off the application for injunction to operate
immediately till the disposal of the said application often classes as ad
interim injunction. In addition to Specific Relief Act, 1877 Code of Civil
procedure has provisions for the injunction.184 Normally in
infringement cases ex parte ad interim injunction is sought along with
other reliefs for a short period before the defendant has notice of the
suit or is heard.

4.14.1.1.2 Final Injunction

In the normal course, a successful plaintiff in an industrial property

action will be entitled to a final injunction. The grant of injunctions is
discretionary and only used in unusual situations e.g., where the
defendant is the sole source of a life giving drug or, in a copyright case,
where there has been extreme delay. The assessment of appropriate
damages in industrial property cases vary somewhat between the
several causes of action. Passing-off and trademark infringement may
be considered together. A common approach to assess damages on the
basis of a notional arm’s length license; this will arise, for example,
when the parties are competitors and is usually appropriate to patent
and registered design case. Damages for past infringement are then
based upon a payment of a royalty in respect of, for example, each
infringing article. Another approach which is difficult to prove is
through consideration of sales lost to the plaintiff.185 The court may
grant a perpetual injunction in cases specified therein.186

184 Code of Civil Procedure, 1908, Order 39 Rules 1 and 2 read with s 151. Further,
Rule 3A of Order 39 is the explicit provision for an ex parte order and contains a
safeguard and clearly states the application for ex parte injunction has to be
disposed off within thirty days of grant.
185 B.L., Wadehra, Law relating to Patents Trade Marks Copyright Designs and
Geographical Indications, Universal Law Publishing Co. Pvt. Ltd., Delhi,
2000,p.50.
186 Where the defendant is trustee of the property of the plaintiff; where there exists
no standard for ascertaining the actual damage caused, or likely to be caused, by
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Section 39 of the Specific Relief Act 1963 provides for mandatory
injunctions, which the court may in its discretion grant an injunction
to prevent the breach complained of, and also to compel performance of
the requisite acts. The Specific Relief Act in section 41 clearly
elaborates the conditions wherein this discretionary relief of injunction
may be refused.187

4.14.1.2 Criminal Proceedings in Intellectual Property Law

The following criminal remedies for infringement of patents188:

(i) For contravention of secrecy provisions relating to certain

inventions. It can be fine or imprisonment for a term of two
years;
(ii) Falsification of entries in register –also could be fine or two year
imprisonment;
(iii) Unauthorized claim of patent rights is punishable with fine going
up to one lakh rupees;

the invasion; where the invasion is such that compensation in money would not
afford adequate relief; where the injunction is necessary to prevent a multiplicity
of judicial proceedings.
187 Injunction when refused.—An injunction cannot be granted—
(a) to restrain any person from prosecuting a judicial proceeding pending at the
institution of the suit in which the injunction is sought, unless such restraint is
necessary to prevent a multiplicity of proceedings;
(b) to restrain any person from instituting or prosecuting any proceeding in a court
not subordinate to that from which the injunction is sought;
(c) to restrain any person from applying to any legislative body;
(d) to restrain any person from instituting or prosecuting any proceeding in a
criminal matter;
(e) to prevent the breach of a contract the performance of which would not be
specifically enforced;
(f) to prevent, on the ground of nuisance, an act of which it is not reasonably clear
that it will be a nuisance;
(g) to prevent a continuing breach in which the plaintiff has acquiesced;
(h) when equally efficacious relief can certainly be obtained by any other usual
mode of proceeding except in case of breach of trust;
(i) when the conduct of the plaintiff or his agents has been such as to disentitle
him to the assistance of the court;
188 Patents Act, 1970, Chapter XX (Ss 118 to 124).
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(iv) Wrongful use of words ‘patent office’ implying that a certain
article is patented or that a patent has been applied for could
result in fine or an imprisonment up to six months;
(v) Refusal or failure to supply information;
(vi) practice by non-registered patent agents; and
(vii) if the person committing offence is a company, the company as
well as every person in charge of and responsible for the conduct
of business shall be liable to be proceeded against.189

The Trade Marks Act, 1999 also provides for offences and penalties.190
These are, briefly:

Section 101 clarifies as to when and how a person is deemed to apply a

trade mark or mark or trade description to goods or services; If a
person without the assent of the proprietor of the trade mark marks
that trade mark or deceptively similar mark; or falsifies any genuine
trade mark by alteration, addition, effacement or otherwise, it shall be
regarded as falsely applying the trade mark and is punishable under
Section 102; penalties for this are provided separately and it can go up
to three years and a fine of fifty thousand rupees;191

Chapter XIII of the Copyright Act, 1957192 provides for penalties for the
infringement of copyright. Knowing use of infringing copy of computer
programme is punishable with imprisonment of seven days and it
could extend to three years and with a fine of fifty thousand rupees
extendable to two lakh rupees; The police officer may seize without
warrant all copies of the work, and all copies and plates so seized shall
be produced before a Magistrate.193

189 Supra note 124 at p. 194.

190 Chapter XII (Ss 101to 121).
191 W.R.,Cornish, Intellectual Property, Universal Book Trader, Delhi, 1995,p.53.
192 Ss 63 to 70: Punishment varies from six months to three years and a fine which
may go up to fifty thousand to two lakh of rupees; Enhanced penalty could be more
severe i.e., it could be three year imprisonment and two lakh rupees fine.
193 Meenu Paul, Intellectual Property Laws, Allahabad Law Agency, Faridabad, 2004.
222
In consonance with the TRIPS Agreement the IP laws provide for
criminal procedures and penalties in cases of willful counterfeiting or
copyright piracy on commercial scale. It should be stated that in India
mens rea in the form of knowledge of the accused is an essential
ingredient to constitute the offence of infringement for criminal
prosecution. It has been held that clear and cogent proof of knowledge
is necessary to establish the commission of the offence of infringement
of copyright. Under s 63 of the Copyright Act, 1957 the offence of
infringement is a non-bail able offence and no court inferior to that of a
Metropolitan Magistrate of a Judicial Magistrate of First Class shall try
any offence under this Act. Therefore the provisions of section 438 of
the Code of Criminal Procedure will apply in respect of offence
punishable under section 63 of the Copyright Act.1957. A criminal
court is empowered to lay down penalties in nature of imprisonment
and fine. In addition it has the power to direct the police to seize the
infringing copies.

4.15 Judicial Interpretations

The following analysis proposes to examine and survey some important
IP cases as decided by the Indian courts. There are increasing numbers
of cases concerning trademarks/passing off, copyright and patents and
that shows that there is some change that has been taking place. The
increasing number of cases in the area of domain name and other
internet related issues require India adapt itself to new and changing
situation with regard to IP protection. The challenges posed by the
digital technology need to be met. Although many cases even now deal
with jurisdictional and other related issues, there are cases that deal
with some substantive issues in the field of patents, copyrights and
trademarks.

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Improvement is not Invention; the Courts in India on many occasions
have held that an arrangement and re-arrangement of mixture of the
materials cannot become an invention, for it would be only an
improvement.194 It has also been upheld by the court that retrospective
effect to TRIPs agreement cannot be given. 195 The similar situation
arose but in the context of repealed provision i.e. relating to EMRs;
which were introduced in the Patents Act in 1999 (and were repealed in
2005 amendment). The case is important from the point of view of the
possible interpretative techniques courts might use in applying the
provisions of the Patents Act in the context of TRIPs Agreement. The
Patent Office rejected this application on the ground that it was not an
invention under Section 2 (j) of the Indian Patent Act.196

However, in the litigation relating to copyright violations issues like,

infringement of copyright197 originality198, telecasting rights199,

194 Novartis A.G v. UOI AIR 2013 SC 1511,M/s. Standipack Pvt. Ltd. v. M/s Oswal
Trading Co. Ltd 2000 PTC 219, The High Court examined the validity of a patent
issued in an infringement suit and revoked the patent granted on the ground that
invention claimed is not new and not an invention as per S 3 of the Patents, Act,
1970. Cadila Pharmaceuticals Ltd. v. Instacare Laboratories Pvt. Ltd 2001 PTC 472
(Guj).
195 Danieli AC Officine Meccaniche SPA v. Controller of Patents and Design, IPLR (2002)
255 In this case applicant filed a patent application in India on 15.3.1995
claiming priority date based on the applications filed in Italy in 31.3.1994. Italy
was declared as a convention country only on 3.1.1995. The application was
objected to and rejected by the controller on the ground that Italy was not a
convention country on the date of application filed in Italy and hence was not
entitled to the benefit of s 133 of the Act.
196 A,G Dimminaco v. Controller of Patents, Designs & Others, Novartis AG v. Mehar
Pharma(2005 (30) PTC 160 (Bom) a case dealt with the issue of EMRs and the
temporary injunction that was sought for the violation of EMRs. After examining
the facts and evidences, the Court refused injunction. Wockhardt Ltd. v. Hetero
Drugs Ltd2004 (29) PTC 108 (Mad) a case decided by the Madras High Court in
2006 also dealt with the scope and application of EMRs.
197 Indiana v. P. Mittulaul Lalah 2000 PTC 140 In this case the Bombay High Court
examined the question whether actual infringement must take place within India
for a court to invoke jurisdiction for copyright infringement.
198 Eastern Book Co. v. Navin J. Desai 2001 PTC 57 (Del) the issue in this case related
to the nature of copyright in judgments of court and the requirement of
‘originality’ to claim copyright protection of a literary work. The plaintiff had
claimed copyright on CD-ROMs of the Supreme Court cases as works of
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copyrights in the artistic works has been dealt with by the Indian
Courts. Moreover, it has been observed that originality in the court
judgments can not be a subject to copyright. The case related to a
television reality show ‘swaymvar’. The Court stated that if the idea is
developed into a concept fledged with adequate details, then the same
is capable of registration under the Copyright Act”. Zee Television Ltd.
v. Sundial Communication Pvt. Ltd 200 also dealt with the issue of
protection of a concept relating to a television serial. The scope of
Section 14 of the Copyright Act was discussed and the Court held that
mechanically reproduced carton by printing process was capable of
being subject matter of copyright.201The Scope of moral rights has also
been discussed by the Courts.202 In R.G.Anand v. Delux Films203 In this
land mark case, the Supreme Court had explained the concept of
originality and the idea/expression dichotomy.

Trademark Cases have been a very important part of the jurisprudence

over the intellectual property litigation in India while many trademark-
related cases deal with registration formalities and issues relating to

compilation. The defendants had argued that there was no copyright on the full
text of the judgments. The Court, however, had held that there was no copyright
in judgments and they were in public domain once published.
199 Maganlal Savani v. Rupam Pictures (P) Ltd 2000 PTC 556 a case decided by the
Bombay High Court in 2005 dealt with the issue of the ownership of the ‘telecast
right’. Raj Video Vision v. K. Mohan Krishna AIR 1998 Mad 294 that also dealt with
the issue of assignment of telecast rights.
200 2003 (27) PTC 457 (Bom).
201 Camlin Pvt. Ltd. v. National Pencil Industries 2002 (24) PTC 34, This decision dealt
with the issue of subsisting of copyright in a mechanical reproduction. Gee Pee
Film Pvt. Ltd. v. Pratik Chowedhury & Others, 2002 (24) PTC 392 this case dealt
with the issue of transfer of rights of works done under commission.
202 Amar Nath Sehgal v. Union of India 2002 (25) PTC 56 this case dealt with issue of
exercise of moral rights. The plaintiff had sought damages for infringement of his
special rights or moral rights, as embodied in S 57 of the Copyright Act owing to
mutilation or damage of the mural. The issue before the Court was, however,
limited to the question as to whether the matter should go to arbitration or not.
The Court held that the “…issues involved in the suit travel beyond the scope of the
agreement” and accordingly are not referable to arbitration. Neha Bhasin v. Anand
Raj Anand 2006 (32) PTC 779, In this case, the Court examined the scope and
application of moral rights based on the principle of equity and common law.
203 (1978) 4 SCC 118.
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rectification of the register of trademarks,204the issues like
disparagement have also been dealt with in the framework of
trademarks.205 The principle for granting injunction in case of potential
infringement of trademark has also been emphasized.206

The Supreme Court has recognized the domain names as trademarks

in the case of Satyam Infoway Ltd. v. Sifynet Solution Pvt. Ltd,207 and
held that the same principles of trademark protection for protecting
domain name. The Supreme Court applied the test of copying ‘essential
features’ to decide whether the parties are entitled to a passing off
remedy S.M. Dyechem Ltd. v. Cadbury (India) Ltd.208 The issue relating
to trans border reputation has also been standardized in order to have
passing off remedy209

The Court upheld the ‘principle of phonetic similarity’ as laid down in

case of Amritdhara Pharmacy v. Satya Deo.210 The issue as to whether
the descriptive word that could be protected through passing off
remedy was discussed in Living Media India Ltd v. Jitender Jain.211

204 Khoday Distilleries Ltd. v. Scotch Whisky Association, Scotland AIR 1999 Mad
1974; Prestige Housewares (India) Ltd v. M/s Prestige and others 2000 PTC 513;
Patel Field Marshal Agencies v. P.M. Diesels Ltd 1999 IPLR 115 ; Hastimal Jain
Trading and Others v. Registrar of Trade Marks 2000 IPLR 18;ITC Ltd v. GTC
Industries 2002 (25) PTC 341;Cadila Laboratories Ltd. v. The Registrar of
Trademark 2002 (24) PTC 308;Lakha Ram Sharma v. Balar Marketing Pvt. Ltd
2002 (24) PTC 115;Allied Auto Accessories Ltd v. Allied Motors Pvt. Ltd 2003 (27)
PTC 115; Fedders Lloyd Corporation Ltd. v. Fedders Corporation 2005 (30) PTC
353.
205 Pepsico Inc v. Hindustan Coca Cola AIR 1999 MP 110.
206 Mars Incorporation v. Kumar Krishna Mukerjee 2003 (26) PTC 60.
207 2004 (28) PTC 566 (SC).
208 AIR 2000 SC 2114.
209 M/s Smithkline Beecham Plc. & others v. M/s Hindustan Levers Ltd 2000 PTC 83.
210 AIR 1963 SC 449(a) the nature of the mark i.e., whether marks are words or
labels; (b) degree of resemblance, phonetic similarity; (c) nature of the goods in
respect of which they are used as trademark; (d) similarity in the nature,
character and performance of the goods of the rival traders.
211 2002 (25) PTC 61,The Court stated that “The word “AAJ” and “TAK” may be
individually descriptive and dictionary word may not be monopolized by any
person but their combination does provide a protection as a trade mark if it has
been in long, prior and continuous user in relation to particular goods
226
Colgate Palmolive Co. v. Anchor Health & Beauty Care Pvt. Ltd
212concerned a passing off action relating to trade dress. In Mahendra
and Mahendra Paper Mills Ltd. v. Mahindra and Mahindra Ltd,213 the
Supreme Court upheld the injunction order granted by the High Court
in favor of the plaintiff in which the defendant was restrained from the
use of trade name Mahendra and Mahendra. In another landmark
move in Indian Intellectual Property regime, The Controller General of
Patents, Designs and Trade Marks has given first ever compulsory
license to Hyderabad based Natco a local drug maker to manufacture
and sell its generic version of German multinational Bayer’s patent-
protected cancer medicine, Nexavar at about 30 times lower than
charged by its Bayer Corporation.214 This position has been affirmed by
Supreme Court of India.215

4.16 Conclusion
Therefore, this can safely be argued that although the journey to reach
a TRIPs compliant regime was rather troublesome for Indian legal
System, yet it has given India footage as the intellectual Property
Investment hub of the 21st century. While the discussion in this
chapter is confined to three issues that the Indian Intellectual Property
regime face in the anvil of the new TRIPS compliant regime, the
transition from a limited term process patent regime to the product
patent regime, the development of Indian intellectual property
legislations passing through various amendments; can have several

manufactured, sold by a particular person and by virtue of such user the mark
gets identified with that person.
212 2003 (27) PTC 478 (Del).
213 AIR 1985 All 242.
214 Bayer Corporation v. Natco Pharma Ltd., Order No. 45/2013, (Intellectual Property
Appellate Board, Chennai), retrieved from http://www.ipab.tn.nic.in/045-
2013.htm accessed on 16th May, 2015.
215 Bayer Corp. v. Union of India, Special Leave to Appeal (C) NO(S) 30145/2014.

227
other far reaching implications. The impact of this transition will
become evident in the years to come.

In today’s intellectual era, India has shown a considerable growth in its

research and development. Through this chapter, emphasis has been
given on the IPRs impact in creating a strong backbone of the country.
According to a recent survey, it was estimated that the number of
Trademark and Patent filings have increased 20 times as that of
previous years. Within a span of 10 years, upto 2005, India amended
and enacted various legislations to be at par with the international
Intellectual property developments. The present chapter also envisaged
the various forums and remedies to address intellectual property
infringement in India. The judicial interpretations discussed in this
chapter substantiated the law discussed hereto. Today various
trademark and patent infringement matters are gaining their
significance in the legal story of the country. IPR influence in the
current regime is much affected by its awareness. In the current
scenario, various important steps have been taken in reaching IPR to a
new height and compliance with USPTO, EPO and other countries IPR
regime and it was believed that more steps have to be taken. The
transformation of intellectual property from real to cyber world shall be
discussed in the forthcoming chapter.

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