A Project on

Indian Trademark law: Compliance with the TRIPs

Subject: - Intellectual Property Law

Submitted to Submitted by
Astha Ma'am Harshal Parashar
Faculty of Law Semester 7th
Roll No.- 4
 Declaration

I hereby declare the project work titled ‘Indian Trademark law: compliance with the
TRIPs’ is a bona fide piece of work under the supervision of Astha ma'am, faculty
member MSB Global Law Institute, Bharatpur. The Project is based on original research
done by me and all references are cited at the end of the paper.

Harshal Parashar

Semester 7th
Date-
 Acknowledgement

I would like to take this opportunity to express my gratitude to my college MSB Global
Law Institute for all their guidance, inspiration, constructive suggestions which helped
me in the project. The successful start of this project was made by their guidance and
co-operation. I would also like to thanks all the people who directly indirectly who have
helped and encouraged me in completing the project effectively and timely.

Harshal Parashar
Semester 7th

Date-
 Table of Contents
Introduction................................................................................................................................1
Introduction to TRIPS................................................................................................................1
Overview of the TRIPS Agreement...........................................................................................2
Process of TRIPS entering into force.....................................................................................2
Features of the TRIPS Agreement.........................................................................................3
Content of the TRIPS Agreement..............................................................................................6
General provisions and basic principles.................................................................................6
Trademarks under TRIPS...........................................................................................................7
Protection of trademarks under the TRIPS Agreement..........................................................8
India’s journey of patent and Trademark laws through TRIPS compliance..............................9
TRIPS in the Indian Patent Act................................................................................................10
TRIPS in Indian Trademark Laws...........................................................................................11
The Trademarks Act, 1999...................................................................................................12
Compliance in international law: understanding perspectives of monism and dualism in India
..................................................................................................................................................12
India’s incorporation of the TRIPS Agreement.......................................................................12
Judicial interpretation of compliance with the TRIPS Agreement..........................................13
Trips and Its Impact.................................................................................................................13
Conclusion................................................................................................................................15
References................................................................................................................................16
Introduction
The scope of the IPR system is to implement backing to research and methodology;
which eventually prefer the innovative brain. It wanted to support the creation of
inventors by providing them with a monopoly from any sort of commercial exploitation;
maintaining the flow of inventions. This system will increase the potential of such
countries with the potential to provide utility products through qualitative and
quantitative through the production of new methods for goods and services. It will
improve the model of living and encourage systematic sturdiness. The purpose following
the procedure remains to execute the privilege of creators by trading or practicing their
inventiveness. The primary postulate of Patent is that the commodity is required to be
innovative and serviceable.

The negotiation of Trade-Related Aspects of Intellectual Property Rights (TRIPS)

acknowledged being a complete treaty came into force on 1st January 1995. The domain
of the covenant covered by this agreement is copyrights and related rights, undisclosed
information, design for industries, protection of multiple plants and patents. The feature
of this agreement distinguished in the following manner:

 Standard
 Enforcement
 Settlement of Disputes amongst nations

This agreement tries to cover the major areas for intellectual property rights, the
obligation shall be upon nations to provide protection. They define the protection i.e.
subject-matter, the minimum duration for protection and exception to Rights provided to
nations. The relevant provisions to this agreement are present. The agreement is related
to the Convention of Paris and Berne; the obligations are more on situations where pre-
existing agreements were silent.

We find the relevant provisions of this agreement under Article 2.1 and 9.1 of this
treaty; sometimes referred to as Berne-Paris Convention. Primary customs as a common
approval on the International country and nations are granted in Article 3, 4 and 5;
these are obvious upon sections implemented in the Agreement for Intellectual Property
Rights. Introducing the TRIPS Agreement confers the purposes of Uruguay Round
Negotiation and customary laws discussed in it.

The treaty of TRIPS states in Article 9.2 to the strength of Copyright will spread
exceeding character will not bind to concepts, assurance, or methods of operations and
others which is necessary.

Introduction to TRIPS
At present, the products of intellectual creativity such as inventions, designs, know-how
and artistic works serve an important role, and in order to promote such creative
activity, inventions, industrial designs, literary and artistic works, layout-designs of
integrated circuits, trade secrets and so on are given protection. Furthermore,
trademarks and other such signs are also protected so as to secure the trust obtained
through business activities, as well as protect consumers and ensure fair competition.

In international trade, the proportion of goods and services consisting of intellectual

property has increased dramatically, and if the intellectual property protection offered by
countries is inadequate or inappropriate, there is a danger of distorting the international
trade order. However, in developing countries, although systems existed for the
protection of intellectual property, there were many countries where the standard of

1|Page
protection was inadequate, for example the extent of protection was limited or the
period of protection was extremely short, or enforcement of intellectual property rights
could not be guaranteed to be sufficiently effective. Even among developed nations,
there were some countries with systems that gave too much protection to intellectual
property or discriminated between internal and external sources.

For these reasons, from the perspective of improving the international trade order, there
was increasing recognition of the necessity to develop a framework to ensure
appropriate protection of intellectual property. In the intellectual property field there
already existed a number of agreements for the international protection of intellectual
property, such as the Paris Convention related to industrial property rights including
patents and trademarks, and the Berne Convention concerning copyright. However, with
more emphasis being placed on the trade-related aspects of intellectual property, it was
seen as an urgent task to attain international agreement in the context of GATT, with as
many nations as possible participating, concerning standards of protection of intellectual
property associated with trade.

In this climate, the negotiations concerning Trade-Related Aspects of Intellectual

Property Rights (TRIPS) became one of the important new areas for discussion at the
Uruguay Round of GATT, begun in 1986. Along with other agreements to come out of the
Uruguay Round, the Agreement on Trade-Related Aspects of Intellectual Property Rights
(the TRIPS Agreement) was finally agreed upon at the ministerial meeting in Marrakesh,
Morocco in April 1994, and came into force as part of the WTO Agreement on January 1,
1995.

Overview of the TRIPS Agreement

The TRIPS Agreement covers the issues of protection of intellectual property in trade-
related areas to a significant degree, and is seen as a comprehensive new framework
prescribing standards of intellectual property protection. Further, the TRIPS Agreement
has the added significance of being the first international agreement concerning all types
of intellectual property with numerous substantive provisions.

Process of TRIPS entering into force

The problems of protecting intellectual property rights were first discussed as an
international trade issue at GATT during the Tokyo Round in 1978. At the Tokyo Round
there was debate and policy coordination regarding international rules for strengthening
strategies against counterfeit goods.

There had also been debate about the international protection of intellectual property at
the World Intellectual Property Organization (WIPO), a specialized agency of the UN.

However, in the context of WIPO, a number of problems were pointed out, including:
 Treaties are difficult to enforce, and the WIPO General Assembly can only
recommend corrective measures.
 Adoption of treaties is based on the principle of consensus among all Members,
and whether Member States accede to a treaty or not is left entirely up to them.

In other words, in the WIPO, if a Member State violates a treaty, prompt measures to
remedy the breach are unlikely to occur. Moreover, there were many incidents of
debates on treaty formation and treaty revision becoming deadlocked due to the conflict
between the interests of developed and developing nations.

Consequently, the United States, which desired stronger international

protection of intellectual property, cast the problems of developing countries’ IP
protection systems and their administration as trade problems, and in an attempt to

2|Page
resolve these issues, pressed to make “trade-related aspects of intellectual property
including trade in counterfeit goods” (TRIPS) an item for negotiation at the international
forum concerning trade issues, namely GATT (General Agreement on Tariffs and Trade).
Thus at the ministerial meeting of GATT held in September 1986 in Punta del Este in
Uruguay, it was decided to begin negotiations on TRIPS. The debate began, and in
January 1987, the decision was made to form negotiation plans and negotiation groups
in 15 fields.

Subsequently in December 1988, an interim report was put together at the ministerial
meeting in Montreal, and in April 1989 a senior officials meeting was held. However, the
first stages of TRIPS negotiations were marked by strong differences in opinion between
developed countries, which wanted discussions focused on appropriate and effective
protection of intellectual property rights, and developing countries, which argued that
GATT did not have a mandate to conduct debate on the protection of IP rights. As a
result, discussions continued with the mandate argument set aside for the time being,
but there remained intense conflict between the opinions of developed and developing
countries, and negotiations made little headway.

At first, the Uruguay Round of negotiations was supposed to conclude after 4 years at
the end of 1990, but negotiations became bogged down over issues of agriculture and
other items, and it was decided in December 1990 at the ministerial meeting in Brussels
to extend and continue negotiations.

In April 1991 the negotiation groups were reorganized from 15 into 7, and in December
the same year, GATT Director-General Dunkel presented a proposal for final agreement.
In November 1992, the US and Europe reached general agreement on agricultural
issues, and the debate converged, with substantive negotiations finally concluding in
December 1993. In April 1994 at the ministerial meeting in Marrakesh, Morocco,
agreement was reached on all points of negotiation, and the

TRIPS Agreement came into force together with the WTO Agreement in January 1995.
It is thought that the reason why agreement could be reached on the TRIPS negotiations
despite the heated debate between developed and developing countries, was that the
Uruguay Round agreement was adopted in the form of a single, overall undertaking. In
other words, although the TRIPS Agreement itself, which was the outcome of the TRIPS
negotiations, was disadvantageous to developing countries, there were other areas of
negotiation such as agriculture and textiles which led to results benefiting developing
countries, and therefore agreement was achieved for the Uruguay Round negotiations as
a whole.

Features of the TRIPS Agreement

The TRIPS Agreement is a detailed and expansive agreement consisting of 73 Articles
divided into 7 Parts. Part I consists of general provisions and basic principles. Member
countries are obliged to enact domestic legislation to give effect to the provisions of the
TRIPS Agreement, which defines “intellectual property” as “all categories of intellectual
property that are the subject of Sections 1 through 7 of Part II” of the Agreement,
namely copyright and related rights, trademarks, geographical indications, industrial
designs, patents, layout-designs (topographies) of integrated circuits, and protection of
undisclosed information (trade secrets) (Article 1).

Further, the TRIPS Agreement provides that Members shall comply with their obligations
concerning intellectual property rights under existing treaties (Article 2). These treaties
that must be complied with are specified as the Paris Convention for the Protection of
Industrial Property, the Berne Convention for the Protection of Literary and Artistic
Works, the Rome Convention for the Protection of Performers, Producers of Phonograms

3|Page
and Broadcasting Organizations (Rome Convention) and the Treaty on Intellectual
Property in Respect of Integrated Circuits (IPIC Treaty).

In previous treaties concerning intellectual property rights, since there were only
provisions establishing national treatment, problems would sometimes arise where
persons from specific countries would be awarded greater protection than the country’s
own nationals. Although this kind of occurrence was not usual, it was sometimes granted
as a tradeoff in return for other items as a result of bilateral negotiations between
countries. Therefore, in the TRIPS Agreement, both national treatment (Article 3) and
most-favored-nation treatment (Article 4) were provided as basic principles. Although
most-favored-nation treatment was stipulated in GATT previously, this applied only to
“goods”, in other words imported and exported products, whereas in the TRIPS
Agreement it came to be applied to “persons” as the holders of intellectual property
rights, that is, both natural and legal persons.

Part II of the TRIPS Agreement provides standards concerning the availability, scope and
use of intellectual property rights. The contents of the provisions will be described in
detail later, but can be summarized as follows.

Copyright and Related Rights (Section 1)

Provisions are included regarding clarification of the relation to the Berne Convention
(Article 9), protecting the copyright of computer programs and compilations of data
(Article 10), rental rights (Article 11), the term of protection (Article 12), and protection
of performers, producers of phonograms (sound recordings) and broadcasting
organizations (Article 14).

Regarding the protection of computer programs and compilations of data, there had
been moves led by developed countries to improve their copyright system so as to afford
protection to these rights through copyright law, but there were no clear provisions in
the Berne Convention. The TRIPS Agreement therefore made express provision for the
protection of computer programs and databases using copyright.

Further, the Berne Convention permits other countries to provide for a limited right of
reproduction, provided that such reproduction does not conflict with a normal
exploitation of the work and does not unreasonably prejudice the legitimate interests of
the author (Article 9(2)). In fact, many countries’ copyright laws permit the private
copying of works by the user, and therefore it is not a violation of copyright to reproduce
CDs and records etc. for personal enjoyment. However, due to the existence of rental
businesses that are predicated on private copying, this leads to a decrease in CD and
record sales and copyright holders are denied their proper benefits. Therefore, countries
have recognized rental rights, which enable copyright holders to license the rental of
their works and claim remuneration for this. The TRIPS Agreement obligates Members to
establish rental rights at least regarding computer programs and films.

Trademarks (Section 2)
The Paris Convention makes provision for the independence of each country in the
protection of trademarks (Article 5), the protection of well-known marks (Article 6(2)),
the protection of state emblems etc. (Article 6(3)), the assignment of marks (Article
6(4)), the protection of marks registered in other countries (Article 6(5)), the protection
of service marks (Article 6(6)), the protection of collective marks (Article 7(2)), and the
protection of trade names (Article 8). The TRIPS Agreement supplements these
provisions with extra provisions concerning protectable subject matter (Article 15), rights
conferred (Article 16) and the term of protection (Article 18), etc.
Further, in contrast to the Paris Convention, which only provided that service marks
must be protected, the TRIPS Agreement requires the establishment of a registration
system for service marks.

4|Page
Geographical indications (Section 3)
The TRIPS Agreement provides additional protection regarding wines and spirits (Article
23), offering more thorough protection.

Industrial designs (Section 4)

The TRIPS Agreement contains provisions concerning the requirements for protection
(Article 25) and the protection itself (Article 26). Since some countries adopt the
registration approach to protection of industrial designs in the same way as patents,
while other countries protect them as creative works in the same way as copyright, the
TRIPS Agreement states that Members may protect industrial designs under either
system.

Patents (Section 5)
The TRIPS Agreement includes many substantive provisions not covered by the Paris
Convention, including patentable subject matter (Article 27), rights conferred (Article
28), conditions on patent applicants (Article 29), exceptions to rights conferred (Article
30), other use without authorization of the right holder (Article 31), revocation/forfeiture
(Article 32), term of protection (Article 33), and the burden of proof for process patents
(Article 34).

Layout-designs of integrated circuits (Section 6)

The TRIPS Agreement establishes provisions to supplement the IPIC Treaty related to
intellectual property rights for integrated circuits regarding the scope of the protection
(Article 36), acts not requiring the authorization of the right holder (Article 37), and the
term of protection (Article 38).

Protection of undisclosed information (Section 7)

The TRIPS Agreement provides protection of information that has been kept secret
(undisclosed information) such as knowhow and trade secrets, as well as information
submitted to governments or governmental agencies (Article 39).

Further, a characteristic of the TRIPS Agreement is that it contains provisions regarding

enforcement of intellectual property rights. Part III of the Agreement contains detailed
provisions regarding general obligations (Section 1), civil and administrative procedures
and remedies (Section 2), provisional measures (Section 3), special requirements related
to border measures (Section 4), and criminal procedures (Section 5).

In particular, the provisions relating to regulatory measures at a country’s border require

Members to ensure that their procedures are clear and transparent, and Members are
also obliged to recognize right holders’ rights to bring claims regarding their trademarks
and copyright.

Consequently, the TRIPS Agreement promoted international harmonization of systems

related to the enforcement of IP rights, and particularly with regard to border controls,
the debate begun at the Tokyo Round of negotiations was embodied in the Agreement,
guaranteeing appropriate enforcement of intellectual property rights.

The TRIPS Agreement also contains provisions regarding acquisition and maintenance of
intellectual property rights and related inter-partes procedures (Part IV), dispute
prevention and settlement (Part V), provisional arrangements (Part VI), and institutional
arrangements and final provisions (Part VII). Regarding consultation and dispute
resolution concerning the TRIPS Agreement, in principle the related provisions of GATT
are uniformly applied.

5|Page
Further, a Council for TRIPS was set up in the WTO to focus exclusively on problems
related to IP rights, and as well as monitoring the implementation of the TRIPS
Agreement, Member countries are given the opportunity to discuss related items.
Additionally, since the TRIPS Agreement provides for a high level of protection,
developing countries and least developed countries were granted extensions on
deadlines to implement the TRIPS Agreement, but most of these periods have now
elapsed.

Content of the TRIPS Agreement

General provisions and basic principles
Nature and scope of obligations
The TRIPS Agreement prescribes that Members must set minimum standards of
protection (Article 1(1)). Minimum standards mean
 Minimum standards that must be uniformly complied with by all Members, and
 Members are not prohibited from implementing in their law more extensive
protection than is required by the TRIPS Agreement.

Further, the TRIPS Agreement defines intellectual property as all categories of

intellectual property that are the subject of Sections 1 through 7 of Part II of the
Agreement, namely copyright and related rights, trademarks, geographical indications,
industrial designs, patents, layout-designs (topographies) of integrated circuits, and
protection of undisclosed information (trade secrets) (Article 1(2)).

Relation to other conventions

The TRIPS Agreement refers to the substantive provisions of the Paris Convention for the
Protection of Industrial Property (Articles 1 through 12, and Article 19), and provides
that Members must comply with those provisions of the Paris Convention, even if they
are not party to that Convention (Article 2(1)).

Therefore, it is said that the TRIPS Agreement adopts a “Paris Plus” approach. The TRIPS
Agreement also refers to the substantive provisions of the Berne Convention for the
Protection of Literary and Artistic Works (Articles 1 through 21, but not including Article
6bis), and provides that Members must comply with those provisions of the Berne
Convention, even if they are not party to that Convention (Article 9(1)). Thus it is also
said that the TRIPS Agreement adopts a “Berne Plus” approach. However, since Article
6bis of the Berne Convention (Moral Rights) is excluded from the TRIPS Agreement, the
level of protection in the TRIPS Agreement regarding the moral rights of authors is lower
than that in the Berne Convention.

As a result, not only does the TRIPS Agreement impose an obligation on Members to
comply with the Paris and Berne Conventions whether or not they are party to those
Conventions, but it also means that violations of the Paris and Berne Conventions are
dealt with using the WTO’s dispute resolution procedures.

Thus, cases of developing countries’ intellectual property systems contravening

obligations imposed by the Paris or Berne Conventions are resolved through the WTO
dispute resolution procedures.

National Treatment
The TRIPS Agreement provides for national treatment (Article 3(1)). National treatment
means that Members are required to treat nationals of other countries the same as their
own nationals. In international treaties on intellectual property, this principle of national
treatment is already included in the Paris and Berne Conventions
.

6|Page
It is necessary to take into account that the former principle of national treatment
embodied in GATT only applied to the equal treatment of imported goods and domestic
products.

As a result of the inclusion of national treatment in the TRIPS Agreement, it has become
clear that
 the principle now also applies to intellectual property not subject to the Paris or
Berne Conventions (trade secrets, etc.), and
 the principle now also applies to the enforcement of intellectual property rights.

Most-Favored-Nation Treatment
The TRIPS Agreement provides for Most-Favored-Nation treatment (Article 4). Most-
Favored-Nation treatment was a basic assumption in GATT, but it had not been applied
to international treaties concerning intellectual property.

Therefore, the TRIPS Agreement is significant as the first international treaty concerning
intellectual property to apply Most-Favored-Nation treatment. The difference between
national treatment and Most-Favored-Nation treatment is that while national treatment
requires that foreign nationals are treated the same or better than domestic nationals,
Most-Favored-Nation treatment is the principle that all foreign nationals must be treated
equally.

Consequently, according to Most-Favored-Nation treatment, if country A offers country B

certain benefits or privileges, it must automatically offer these to all other countries.
Therefore, a consequence of Most-Favored-Nation treatment is that the outcomes of
bilateral agreements automatically extend to other countries as well.
It must be noted that the former principle of Most-Favored-Nation treatment embodied
in GATT only applied to the equal treatment of imported goods and domestic products.

Multilateral agreements
The TRIPS Agreement provides that the procedures provided in existing WIPO
agreements relating to the acquisition or maintenance of intellectual property rights are
exceptions to the principles of national treatment and Most-Favored-Nation treatment
(Article 5).
Thus, for example, even if a country is a Member of the TRIPS Agreement, if they are
not party to the Patent Cooperation Treaty (PCT), they are unable to receive the benefits
of national treatment and Most-Favored-Nation treatment under the PCT.

Exhaustion of rights
During the TRIPS negotiations, the international exhaustion of IP rights, in other words,
the problem of parallel importing of genuine products was discussed, but the arguments
of each country were different and a conclusion could not be reached.
Therefore, the TRIPS Agreement provides that except for the national treatment and
Most-Favored-Nation provisions, the Agreement shall not address the issue of the
exhaustion of intellectual property rights (Article 6).
Accordingly, the TRIPS Agreement does not contain any provisions relating to the
international exhaustion of intellectual property rights or the parallel importing of
genuine products, and these issues are left to be dealt with by the domestic laws of each
Member.

Trademarks under TRIPS

Protection of trademarks under the Paris Convention
Since the subject matter of trademark protection differed in each country, the Paris
Convention did not provide any definitions relating to trademarks, but simply stipulated
the principle that with regard to requirements for filing and registration, “the conditions

7|Page
for the filing and registration of trademarks shall be determined in each country of the
Union by its domestic legislation” (Article 6(1)).
In general, a “trademark” is a letter or symbol used to indicate a product or service, and
the functions of trademarks include:
 an indication of the source of the product etc.
 a guarantee of the quality of the product etc.
 an advertisement for the product etc.

The trademark system protects not only users of the trademark, but the customers who
purchase or use the product carrying the trademark.
Further, the Paris Convention contains the principle of independence of trademark
protection, that is, “an application for the registration of a mark filed by a national of a
country of the Union in any country of the Union may not be refused, nor may a
registration be invalidated, on the ground that filing, registration, or renewal, has not
been effected in the country of origin” (Article 6(2)).

Additionally, the Paris Convention contains provisions concerning trademark protection

such as (1) protection of well-known overseas marks (Article 6bis), (2) protection of
state emblems etc. (Article 6ter), (3) assignment of marks (Article 6quater), (4)
protection of marks registered in other countries (Article 6quinquies), (5) restrictions on
registration and use of marks by an agent or representative (Article 6septies), (6) no
restriction on the nature of the goods using the mark (Article 7), (7) collective marks
(Article 7bis), (8) protection of trade names (Article 8), (9) regulation of goods
unlawfully bearing a mark or trade name (Article 9), and (10) regulation of goods
bearing false indications as to their source etc. (Article 10).

Further, regarding the protection of service marks, since the Paris Convention provides
that “the countries of the Union undertake to protect service marks. They shall not be
required to provide for the registration of such marks” (Article 6sexies), Members are
only obliged to provide some form of protection for service marks, and are not required
to establish a registration system.

Protection of trademarks under the TRIPS Agreement

Trademarks and protectable subject matter
With respect to what constitutes a protectable trademark, the TRIPS Agreement provides
that “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” (Article 15(1)).

Thus, the TRIPS Agreement treats trademarks attached to goods the same as service
marks that indicate services, and Members must now establish a registration system for
service marks.

Further, regarding the objects of trademark protection, the TRIPS Agreement provides
that “signs, in particular words including personal names, letters, numerals, figurative
elements and combinations of colors as well as any combination of such signs, shall be
eligible for registration as trademarks” (Article 15(1)).
In addition, the TRIPS Agreement recognizes that
 where signs are not inherently capable of distinguishing the relevant goods or
services, Members may make registrability depend on distinctiveness acquired
through use, and
 Members may require, as a condition of registration, that signs be visually
perceptible (Article 15(1)).


8|Page
However, although the TRIPS Agreement provides that a Member may enable
registration of a trademark due to use, it is stipulated that
 actual use of a trademark shall not be a condition for filing an application for
registration, and
 an application shall not be refused solely on the ground that intended use has not
taken place before the expiry of a period of three years from the date of
application (Article 15(3)).

Further, the TRIPS Agreement provides that Members shall publish each trademark
either before it is registered or promptly after it is registered and shall afford an
opportunity for petitions to cancel the registration and oppositions to the registration of a
trademark (Article 15(5)).

Rights conferred
The TRIPS Agreement provides that the owner of a registered trademark shall have the
exclusive right to prevent all third parties not having the owner's consent from using in
the course of trade identical or similar signs for goods or services which are identical or
similar to those in respect of which the trademark is registered (Article 16(1)).
Further, the TRIPS Agreement states that the provisions in Article 6bis of the

Paris Convention
 shall also apply to service marks (Article 16(2)), and
 shall also apply to goods or services which are not similar to those in respect of
which a trademark is registered (provided that use of that trademark in relation
to those goods or services would indicate a connection between those goods or
services and the owner of the registered trademark and provided that the
interests of the owner of the registered trademark are likely to be damaged by
such use) (Article 16(3)).

Term of protection
Regarding the term of trademark protection, the TRIPS Agreement provides that
 initial registration, and each renewal of registration, of a trademark shall be for a
term of no less than seven years, and
 the registration of a trademark shall be renewable indefinitely (Article 18)

Requirement of use, licensing and assignment

The TRIPS Agreement provides that the registration of a trademark may be cancelled
only after an uninterrupted period of at least three years of non-use (Article 19(1)). It is
also provided that this does not apply if the trademark owner shows valid reasons for the
non-use, such as import restrictions on the goods (Article 19(1)).
Further, the TRIPS Agreement provides that
 Members may determine conditions on the licensing and assignment of
trademarks,
 the compulsory licensing of trademarks shall not be permitted, and
 the owner of a registered trademark shall have the right to assign the trademark
with or without the transfer of the business to which the trademark belongs
(Article 21).

India’s journey of patent and Trademark laws through TRIPS

compliance

There has been a moving development in the domain of Intellectual Property Rights in
India; modifications are noticeable in the legislation enacted by the legislators. India
along with other emerging nations graced a signatory to the treaty of TRIPS of the World

9|Page
Trade Organization (WTO) in 1995 with a matter that agreement will allow free flow of
trade, investment and eliminate the restrictions enduring in the norm of Intellectual
Property.

To comply with the norms of TRIPS; India amended the Patents Act 1970 three times,
the year 2002 amendment added ‘exclusive marketing rights’. The patent protection
extended to 20 years; it was the year of 2005 was amendment took place for the third
time. Subsequently, the amendment caused raising questions by the members belonging
to communities of science, technical and business.

The Exclusive Marketing Rights (EMR) presented in 1995, based on the subject-matter of
Article 65 and 70 of TRIPs, however, are incompetent to secure help from legislators and
they lapsed. A case filed against India by the USA and European Union in the Dispute
Settlement Body (DSB) and got an inopportune decision from the body. This created
India to proceed with the first reformation which interjected EMR for five years or to a
range where a commodity expelled or affirmed for a patent. The first amendment aimed
to exclude patents on products of foods, medicine and drugs and this happened for being
a signatory to the treaty. The Act for patents passed in 1970 excluded many products
from getting patents, EMR based on foreign patents were given after 1st January 1995.

An applicant to EMR will have to meet pre-conditions provided in the Patents

(Amendment) Act, 1999 of which an applicant will need to have a valid patent for
pharmaceutical products granted after 1st January 1995, Rights in Marketing in countries
which are a signatory of TRIPS, application for the patent product need should have
made in India and approval of marketing taken within the territory of India. The first
three stipulations based on the agreement signed in TRIPs and the last condition
inculcated to get the approval from India drug regulatory. The Act gave protection to a
foreign pharmaceutical company and permitted stronger research within India.

TRIPS in the Indian Patent Act

The legislation of patent was brought by imperialist British as they ruled over India over
a century. The influence of Great Britain started from the early 1600s with receiving
permission from Queen Elizabeth I under “Governor and Company of Merchants of
London trading into the East Indies”. Further, the responsibility of the company was
taken over by the Queen after the battle of 1857; considered as the first battle for
Independence. We can trace the enforcement for the rule of patent law from 1856
onwards; it gave the privilege to inventors up to 14 years. There was a new law enacted
in 1859 which gave privilege to inventors to use and sell the invention in India and it
aimed to secure control over the then undesignated or undefined territory of India.

There were two legislations which got enacted; the Patents and Design Protection Act &
Protection of Invention Act which was passed in 1872 and 1883, respectively,
consolidated as Inventions and Designs Act 1888. Before the Independence of India, the
Britishers brought legislation in the category of goods protection; known as the Indian
Patents and Designs Act 1911. This law brought an administration for a patent in India;
its functions performed under the supervision of Controller of Patents. The terms which
were allowed for filing date were for 16 years and it was extended for an additional
seven years. This legislation was removed after the Independence in the year 1970 after
enactment of Patents Act by the Parliament of India.

The transmutation concerning India’s protection legislation under some multi-phased

style that resembled three alterations upon this Patents Act, 1970. This permitted
claimant to register pharmaceutical output license entreaties. Claimants moved to give
exclusive marketing rights (“EMRs”), ruled upon specified contingencies and warehouse
these outcomes to a term up to five ages of this time from the award.

10 | P a g e
The following addendum on this 1970 act remained enacted inside 2002. Aforementioned
alteration produced this within conformism among TRIPS approaching various matters,
since this fitted toward a twenty-year copyright duration, a repudiation from this freight
regarding evidence concerning method protection transgression, including alterations
over obligatory licensing necessities. Exemptions from implementing pharmaceutical
products for a patent until the year 2005. Initially, India tried to implement the facility of
mailboxes and EMRs which should have been granted as per the order of the President;
this rule didn’t pass in the Parliament of India. This led to the USA using the dispute
resolution mechanism of WTO against India as they could not bring mailboxes and EMR.
The failure of India discussed in WTO’s Appellate Body in 1997 as they didn’t comply
with the Treaty of TRIPs as Article 70.8(a) ignored as it establishes a line “a means”
which preserves novelty and priority to the pharmaceutical product application for
protection. They passed the amendment in 1999 of March, the framework brought the
composition of mailbox complied with the requirements of TRIPs; it ended in December
2004. The amendment of 2002 brought various changes; as per the rules provided in the
treaty of TRIPs as definitions like invention and inventive step, algorithms and traditional
knowledge. The amendment brought three grounds provided to seek a compulsory
patent license and abolished the concept about the license of Right.

A petition filed by Novartis in 2006 in the High Court of Madras against the rejection of
their application for the license for the drug of a beta crystalline form of imatinib
mesylate under Section 3 (d) of the Patents Act by Patent Controller. The argument
which was brought by the Company was the rejection violated Article 14 of the
Constitution of India as the Act provides discretionary powers to controllers which led to
discriminatory results. The issues divided by the Bench of the High Court of Madras and
Intellectual Property Appellate Board (IPAB); The judgment heard by the appellate body
which decided against them.

The bench examined three issues:

 Whether the Indian court has a jurisdiction to decide upon International treaties?
 Whether Section 3(d) of the Patents Act is consistent with Article 27 of TRIPs?
 Whether Section 3(d) violated Article 14 of the Constitution of India?

The court decided they do not have jurisdiction on the issue raised by the Company
because the treaty is based on an International Convention. The third issue brought that
Section 3(d) doesn’t violate the principle of Article 14 of the Constitution of India. They
ended by saying that the Government of India will have the duty to provide good health
to its citizens by providing easy access to life-saving drugs.

TRIPS in Indian Trademark Laws

Section 2 of the TRIPS agreement focused on Trademarks, Article 15 defines trademarks

as 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. Such signs, in particular words including personal names, letters, numerals,
figurative elements and combinations of colors as well as any combination of such signs,
shall be eligible for registration as trademarks. This brought about the definition of
Trademarks in Section 2 (zb) as a mark capable of being represented graphically and
which is capable of distinguishing the goods or services of one person from those of
others and may include shape of goods, their packaging and combination of colors.
Where signs are not inherently capable of distinguishing the relevant goods or services.
The agreement tried to initiate member countries to make registration of trademarks on
the basis of distinctiveness, through usage with an option that signs should be visually
perceptible. Further, the agreement mentioned strict compliance of registration with the

11 | P a g e
provisions of The Paris Convention (1967). Article 16 (2) of the TRIPS agreement, states
that Article 6 of the Paris Convention (1967) shall apply, mutatis mutandis, to services.
In determining whether a trademark is well-known, members shall take account of the
knowledge of the trademark in the relevant sector of the public, including knowledge in
the Member concerned which has been obtained as a result of the promotion of the
trademark. Article 16 (3) states that Article 6 of the Paris Convention (1967) shall apply,
mutatis mutandis, to goods or services which are not similar to those in respect of which
a trademark is registered, provided that use of that trademark in relation to those goods
or services would indicate a connection between those goods or services and the owner
of the registered trademark and provided that the interests of the owner of the
registered trademark are likely to be damaged by such use. Service marks were
incorporated as trademarks in The Trademarks Act,1999

The Trademarks Act, 1999

In 1958, the Trade and Merchandise Marks Act was passed, dealing with conditions for
registration, procedure and duration for registration, effect, assignment, transmission,
usage, rectification, certification, offences, procedures etc. in a span of 10 chapters. This
was replaced by The Trademarks Act 1999 which includes protection of well-known
marks, multi class registration, service marks, increasing of the renewal term of
registration to 10 years, certification marks, infringements, passing-off actions etc. The
act has also included provisions for the registration of trademarks for services. This is in
strict compliance with Article 16 of the TRIPS agreement.

Compliance in international law: understanding perspectives of

monism and dualism in India

It is a fundamental principle of international law that when a State Party becomes a

signatory to an international treaty, it should endeavor to incorporate the treaty into its
domestic legal system, with the view of ensuring that there are no inconsistencies
between the two. International treaties contain an article or clause which requires a
State Party to refrain from any acts that would be in contravention of the Treaty’s object
and purpose. This principle is enshrined in Article 18 of the Vienna Convention on the
Law of Treaties (‘the Vienna Convention).

The Agreement on Trade-Related Aspects of Intellectual Property Rights encompasses

this principle in Article 1 of the Agreement. Under the TRIPS Agreement, there is a
generous wording of the incorporation of the TRIPS Agreement and indicates that State
Parties “…may, but shall not be obliged to, implement in their law more extensive
protection than is required” and further that State Parties shall have freedom to “…
determine the appropriate method” in its implementation of the TRIPS Agreement.

However, the TRIPS Agreement contains a proviso that notwithstanding, the domestic
legal system should “…not contravene the provisions” of the TRIPS Agreement (Article 1,
TRIPS Agreement). Similarly, Article 18 of the Vienna Convention provides that a party
to a treaty has an obligation to refrain from engaging in conduct that would amount to
defeating the object and purpose of the treaty prior to its entry into force.

India’s incorporation of the TRIPS Agreement

According to the World Trade Organization, with effect from 1 January 1995, India
became a member of the World Trade Organization (WTO) and became a party to the
TRIPS Agreement. This was met with much debate and opposition, as it took the stance
during the negotiations that IPR protection was specifically within the purview of the
World Intellectual Property Organization and not the WTO (Unni, 2012). India argued

12 | P a g e
during the negotiations that a country’s economic development should be taken into
consideration when determining the extent of patent protection required, and therefore
was a leading advocate on behalf of developing countries for the transition period
approach as it relates to compliance with TRIPS (Foster, 1998). After the adoption of the
TRIPS Agreement, India had undergone amendments to the Patents Act of 1970 (‘the
1970 Act’ or ‘the Principal Act’), culminating in the Patents (Amendment) Act, 1999 (‘the
1999 Act’, the Patents (Amendment) Act, 2002 (‘the 2002 Act’) and the Patents
(Amendment) Act, 2005 (‘the 2005 Act’).

Judicial interpretation of compliance with the TRIPS Agreement

Novartis AG v. Union of India (2007)
The case of Novartis AG v. Union of India was the first instance in which questions
regarding India’s compliance with the TRIPS Agreement were brought before the Indian
courts. The complainant, in this case, was a Swiss pharmaceutical company, namely
Novartis, which sought to patent a cancer drug called Glivec. However, after the Patent
Office denied the application, the Complainant brought a claim before the Indian High
Court of Madras, seeking a declaration that that Section 3(d) of the Patent Act of 1970
as substituted by the Patents (Amendment) Act, 2005 was not in compliance with the
TRIPS Agreement and/or that it was (unconstitutional) or arbitrary, illogical, vague and
offends Article 14 of the Constitution of India.

In this case, the court found that it did not have jurisdiction to interfere with the laws of
Parliament (see para. 7, para. 8) by testing the validity of the section as being
incompatible with Article 27 of the TRIPS Agreement. The Court, in making reference to
the case of State of A.P. Vs. Mc Dowell & Co. emphasized the position taken in this case
that there is a presumption that Parliament is aware of the needs of the people and
therefore is not in a position to make a judgment on the legislature (para. 17). It further
reiterated the settled position held in that case that there were two instances in which a
law by Parliament could be struck down, namely: lack of competence by the legislature
and a violation of the Constitution (para.18). The court was of the view that Section 3(d)
contained ‘built-in measures’ that would allow the statutory authority to be guided in the
exercise of its power (para. 18). The court also found that there was no instance of a
violation of Article 14 of the Constitution of India (para. 19).

Trips and Its Impact

The nature and scope of the obligations under the TRIPS agreement, hereinafter referred
to as the ‘agreement’, permits the implementations of more extensive provisions for the
protection of Intellectual Property Rights, than the ones provided in the agreement. The
agreement is meant as a framework for minimum level of protection which has to be
granted for the protection of intellectual property.

The agreement further puts an obligation upon the nations to comply with the provisions
of the Paris convention of 1967, the Berne Convention, the Rome Convention and The
Treaty on Intellectual Property in respect of Integrated Circuit. The agreement also
provides for the generally accepted principles of International Law such as those of
National Treatment and Most Favored nations.

The agreement, brought about significant changes to the Indian Intellectual Property
regime. The patents law was amended to include the product patents under the ambit of
the Indian patents law, furthermore inventions in the field of agriculture,
pharmaceuticals and non-natural and genetically engineered life forms have been
included under the ambit of patentable invention provided that the inventions

13 | P a g e
demonstrate characteristics like novelty, inventive step, utility and written description.
Lastly the term of patents was increased from 14 years to the now universally
acknowledged 20 years.

India was given an exemption to from implementing pharmaceutical and agrochemical

product patents till 2005, but during this period of transition India was required to
implement a ‘Mailbox’ provision which aimed to assign each application filed during this
transition period with a filing date. India was also under an obligation to grant Exclusive
Marketing Rights (EMR) for these patent applications which were in the mailbox.

However, India, was not able to comply with these obligations immediately, although it
tried to implement the Mailbox provision and the Exclusive Marketing Rights through
Presidential order, the failure to implement an amendment for these provisions,
prompted the US to use the WTO dispute settlement process to get the Indian
parliament to comply with the obligations. The Indian government ultimately
implemented the Mailbox provision and EMR via an amendment in 1999, this
amendment then became obsolete after the 2005 amendment and have been repealed
since.

During India’s ten-year TRIPS transition period, 8926 mailbox applications were filed in
the four branches of the Indian Patent Office, there were then deposited in a ‘black box’
and were not examined until 2005. Some applicants however did seek additional
protection by way of the EMR for example, pharmaceutical companies like Novartis
applied for the grant of EMR over their drugs, which was needed keeping in mind the
highly competitive nature of the pharmaceutical industry.

EMR was however not granted without due process, the Indian law required that EMR
could only be granted to applications which showed that:

an examination by the Indian Patent Office had established that the invention did not fall
within any of the categories of subject matter considered as non-patentable inventions
like business methods, frivolous inventions, mere admixture, or within the scope of the
prohibition on patenting inventions relating to atomic energy.

the mailbox/EMR applicant had filed a patent application for the same invention, claiming
the “identical article or substance” in a “convention country” on or after January 1, 1995.
the mailbox/EMR applicant had been granted a patent by the convention country on or
after the date it filed its mailbox application in India.

the convention country had issued “approval to sell or distribute the article or substance”
in the convention country, “on the basis of appropriate tests conducted” in the
convention country on or after January 1, 1995.

an authority on behalf of the Indian government had given approval to sell or distribute
the article in India.

The Indian Patent amendment of 2005, was not however free from its controversy, it
included provisions specifying certain subject matters as non-patentable, it also added a
new definition for ‘inventive-step’ and also provided for procedures for pre- and post-
grant opposition to the patent-application. The amendment also liberalized the
framework for compulsory licensing of essential patents.

Under the copyright laws provisions were amended to include Computer programs under
the ambit of the copyright laws per article 10 of the agreement, this was change was
brought to bring the copyright laws to the digital era. It also made commercial rental of
computer programs the proprietary right of the owner of the copyright owner, thereby

14 | P a g e
recognizing that computer programs not only have copyright ability, but also a
commercial aspect.

Under the trademark laws, well known trademarks, collective marks and service marks
were included within its ambit, the scope of trademarks was enlarged to include
figurative elements like shape, packing and combination of colors.

Conclusion
It is evident that through the TRIPS agreement the US has successfully widened the
ambit of the GATT and the WTO over Intellectual Property Rights. the current TRIPS
agreement covers not only the trade related aspects of Intellectual Property but the
entire regulation of the Intellectual Property regime. This move was initially resisted by
India but to little avail and the US was successful in its efforts. However, the developing
nations voiced their concerns through the Doha Declarations and were successful in
ensuring the protection of the public health aspect for pharmaceutical patents.

The developing nations are now again under duress as the developed countries want
higher standards of protection for intellectual property, than those enshrined in the
TRIPS agreement. The developing nations like India, however have the opportunity to
ensure that their interests are protected. Countries like India have huge man-power and
also have equally huge base for intellectual development. It is the need of the hour for
developing nations to invest substantially on increasing the knowledge economy of their
country. TRIPS plus provisions are aimed to maintain the gap between the developed
and the developing nations, they need to put a unified front in resisting this change.

15 | P a g e
References
 Agreement Between WIPO and WTO, 22 December 1995, World Intellectual
Property Organization-World Trade Organization, 35 I.L.M. 754 (1996),
https://www.wto.org/english/tratop_e/trips_e/wtowip_e.htm.Accessed 23 March
2021.

 The Patents Act, No. 39 of 1970, Ministry of Commerce and Industry (Department
of Promotion of Industry and Internal Trade), India, 19th September 1970,
https://www.advocatekhoj.com/library/bareacts/patents/index.php?Title=Patents
%20Act,%201970. Accessed 17 April 2021.

 The Patents (Amendment) Act, 1999, No. 17 of 1999, Acts of Parliament, Ministry
of Law, Justice and Company Affairs (Legislative Department), New Delhi, 26
March 1999/Chaitra 5, 1921 (Saka),
https://ipindia.gov.in/writereaddata/Portal/IPOAct/1_34_1_patents-amendment-
act-1999.PDF. Accessed 17 April 2021.

 The Patents (Amendment) Act, 2002, Act No. 38 of 2002, Acts of Parliament,
Ministry of Law, Justice and Company Affairs (Legislative Department), New
Delhi, 25 June 2002/Asadha 4, 1924 (Saka),

 https://ipindia.gov.in/writereaddata/Portal/IPOAct/
1_125_1_THE_G.AZETTE_OF_INDIA.pdf. Accessed 17 April 2021.

 The Patents (Amendment) Act, 2005, No. 15 of 2005. Ministry of Law and Justice
(Legislative Department), New Delhi, 5 April 2005/Chaitra 15, 1926 (Saka),
https://www.wipo.int/edocs/lexdocs/laws/en/in/in018en.pdf. Accessed 17 April
2021.

 TRIPS: Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr.

15, 1994, Marrakesh Agreement Establishing the World Trade Organization,
Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994),
https://www.wto.org/english/docs_e/legal_e/27-trips_01_e.htm. Accessed 23
March 2021.

 Chandra, Aparna. “India and international law: formal dualism, functional

monism.” Indian Journal of International Law, 2017, vol. 57, pp. 25–45.
https://doi.org/10.1007/s40901-017-0069-0.

 http://www.wto.org/English/tratop_e/trips_e/tripfq_e.htm. Accessed 31 March

2021.

16 | P a g e