Nature and Scope of Intellectual Property Law

● Concept of Intellectual property.

● Classification of Intellectual property.
● Types of Industrial property.
● Meaning of Patent.
● Meaning of trademark.
● Meaning of Designs.
● Meaning of trade secrets – confidential information
● Copyright
● Meaning of Copyright.

……………………………………………………………………..

● Concept of Intellectual property

The Intellectual property laws are enacted under domestic laws of each country in exercise of
their sovereign law making power.

Intellectual law confers legal recognition to Intellectual property laws in favour of their owners
or lawful users.

● Concept of Intellectual property

Intellectual property is a property created by human mind- human intellect. It is an incorporeal

and intangible property.

It can also be said that Intellectual property relates to the pieces of the information which can be
incorporated in tangible objects at the same time in an unlimited number of copies, at different
locations anywhere in the world. The property is not in those copies but the information reflected
in those copies.

● Types of Industrial property

Industrial Property

Patents

Trade Marks

Industrial designs

G.I (not in syllabus)

Trade secrets

And Copyrights

● Meaning of Patent

A Patent is an exclusive right granted to a person who has invented a new or useful article, or a
new process of making an article.

Patenting is a simple arrangement by virtue of which you openly disclose your invention to the
world… and in lieu of that the Sovereign allows you the exclusive rights to commercially exploit
the invention for a limited period.

After the Expiry of the limited period the invention falls in public domain and anybody can make
use of that invention.

● Meaning of trademark

A Trademark is a word, device, sign or symbol, capable of two dimensional graphic which
indicates the origin of goods and distinguishes it from those of other manufacturers.

Patents, Copyrights etc are protected for a limited period, but a registered Trademark can be
protected for perpetuity, if it is renewed periodically and the registered proprietors take prompt
action against infringers.

First Trademark registered under in U.K in year 1876 consisting red equilateral triangle is still in
force.

● Meaning of Designs.
Those who want to purchase the article may simply choose the article which catches their eye.

One article with a particular design may sell better than one without it.

It would therefore be more profitable to adopt that design which will attract the customers.

Much thought, time and expense has been incurred in finding a design which will increase their
sell.

● Trade secrets

Broadly speaking, any confidential business information which provides an enterprise a

competitive edge may be considered a trade secret.

Trade secrets encompass manufacturing or industrial secrets and commercial secrets.

The unauthorized use of such information by persons other than the holder is regarded as an
unfair practice and a violation of the trade secret.

● Copyright

Concept of Copyright

Copyright is a branch of Intellectual property

• Copyright means exclusive right to do or authorize others to do certain acts in relation

to

1. Literary, artistic, dramatics,, and musical works

2. Cinematographic film

3. Sound recordings

Patents
⦿ Abraham Lincoln on patent

Before then any man might instantly use what another had invented; so that the inventor had
no special advantage from his own invention. The patent system changed this; secured to the
inventor, for a limited time, the exclusive use of his invention; and thereby added the fuel of
interest to the fire of genius, in the discovery and production of new and useful things.

⦿ Meaning of Patent

A Patent is an exclusive right granted to a person who has invented a new or useful article,
or a new process of making an article.

Patenting is a simple arrangement by virtue of which you openly disclose your invention to
the world… and in lieu of that the Sovereign allows you the exclusive rights to commercially
exploit the invention for a limited period.

After the Expiry of the limited period the invention falls in public domain and anybody can
make use of that invention.

⦿ Types of Patent

• Product Patent

• Process Patent

⦿ Object of Patent Law

To encourage scientific research, new technology and Industrial process.

To grant privilege to own, use or sell the method or the product patented for limited period.

Stimulate new inventions of commercial utility.

Pass the inventions into public domain after expiry of fixed period.
⦿ History of Patents

In India Patent for inventions has always been the sole creation of statutes.

The first legislation in India relating to patents was the Act VI of 1856. The objective of this
legislation was to encourage inventions of new and useful manufactures and to induce
inventors to disclose secret of their inventions.

The Indian Patents and Designs Act, 1911, replaced all the previous Acts. First time, This
Act brought patent administration under the management of Controller of Patents. This Act,
1911 was further amended in 1920 to enter into mutual arrangements with UK and other
countries for securing priority. Provisions relating to grant of secret patents, patent of
addition, use of invention by Government, powers of the Controller to rectify register of
patent and increase of term of the patent from 14 years to 16 years.

The Government of India constituted a committee under the Chairmanship of Justice (Dr.)
Bakshi Tek Chand, a retired Judge of Lahore High Court, in 1949 t o review the patent rules
and regulations in India in order to ensure that the patent system is conducive to the national
interest.

In 1957, the Government of India appointed Justice N. Rajagopala Ayyangar Committee to

examine the question of revision of the Patent Law and advise government accordingly.

On its basis a patent bill was introduced in Lok Sabha in 1965 however it lapsed. An
amendment bill was introduced in 1967, which culminated in the Patent act 1970.

⦿ What can be Patented

• A new and useful Art, process, method of manufacture.

• A machine, an apparatus or any such item.

• An improvement on its previous version.

⦿ Inventions cannot be Patented

• It is frivolous or purports to go against the law of nature.

• It can be interpreted as being immoral, injurious or illegal in nature.

• It is a discovery of scientific principle or formulation of abstract theory.

• It is a new property or usage of a known substance that already exists. (new usage is
patentable in USA)

• Inventions cannot be Patented

• It is a substance obtained by admixture of existing components.

• It is a mere rearrangement or duplication of known devices, in the old- wine – in - new –

bottle mode.

• It is a testing method in industry.

• It is a process of medical, surgical, curative, prophylactic, or other treatment for humans,

animals, plants to render them free of disease.

• It is an invention relating to Atomic Energy.

⦿ International Agreements on Patents

• Patent Co-operation Treaty.

• TRIPS (Trade Related Aspects of Intellectual Property)

• ********************************************************

• (These notes are for reference only, students are supposed to elaborate the points with proper explanation,
caselaws and examples)
 ▣ Chapter 2 Process of obtaining Patent

▣ Important steps in obtaining the patent

1. Submission of application

2. Examination of an application.

3. Advertisement of acceptance complete specifications.

4. Hearing of the parties.

5. Grants and sealing of patents.

…………………………………………………………………….

▣ Submission of an application for Patent.

• Section 6 to 11 of the Act lists the conditions to be satisfied by applicant for grant of
Patent.

• Section 6 stipulates who can apply for Patents.

• Section 7 provides forms for Patent application.

• Persons entitled to apply for Patents

• Meaning of true and first inventor

 • A person who converts an idea or scientific principles into an working invention is the
first or true inventor.

• He should also be the first applicant for Patent.

• Assignee of an inventor.

• The right to apply for a Patent may be assigned by true and first inventor to another.

• Whether a company can become an inventor?

• Can a Company be a Patentee.

• V.B. Mohammed Ibrahim

Vs.
Alfred Schafraneck and Ors.

• AIR 1960 Kant 173,

• It was held that A firm cannot be said to have the capacity to invent. It cannot be called
an inventor, although there may be no objection to its being registered as a patentee either
by assignment by a patentee or jointly with the true and first inventor.

▣ Form of application for Patent.

▣ The Patent application has to be filed by

1. True and first inventor himself.

2. Assignee of true and first inventor.

3. Legal representative of true and first inventor, in case of death of true and first inventor prior
filing the application.

• The application has to be filed in triplicate in appropriate Patent office.

• Application for grant of Patent must contain.

1. A request for Patent.

2. Identification of applicant.

3. A description of an invention.

4. The filing fee.

• Necessary documents.

1. Provisional complete specification (3 copies).

2. Drawings (if necessary, 3 copies)

3. Statement or undertaking in form 3.

4. Power of authority.

5. Prescribed fee.

• From the date of application till the date of grant of Patent the Patent holder can enjoy the
privileges of Patent, except suing for infringement.

• Specification of Patents

• Examination of an application

The application will then be examined by the controller, to check whether any other similar
application is pending or has been granted the patent.

▣ Publication of application.

The application for Patent shall be open to public for such period as may be prescribed.

However an applicant can request the controller to publish the application before the expiry
of period prescribed.

The controller then publish the such application.

▣ Objection for Patent.

A person who has genuine interest may request for examination.

After the receipt of the objection then the Controller communicates the objection to the
applicant of Patent.

Then the controller hears the objections.

If the objection is valid then the controller may reject the application for Patent.

If the objection is invalid then he will dismiss the same and grant the Patent.

▣ Grounds of oppositions for grant of Patents.

• Wrongfully obtained the complete inventions.

• Prior publication of specification in India or elsewhere.

• Invention is subject matter of prior claim.

• The invention claimed by applicant does not include any inventive step.

• The invention is not Patentable or its Patenting is prohibited by Law.

• The complete specification of the application does not sufficiently describe the invention
or method by which it is to be used.

• In case of foreign application fail to relating to such application to be filed in foreign

country.

▣ Grant of Patent.

1. The application which has not been refused by the controller.

2. The application which has not been found in contravention of any of the provisions of the
Act.

▣ Term of Patent

The term of Patent will be 20 years from the date of filing the application for the Patent.

• (These notes are for reference only, students are supposed to elaborate the points with proper explanation,
caselaws and examples)
 Chapter 3 – Rights and liabilities of Patentee

▣ The purpose for applying for the Patent

1. To seek the exclusive right to use the invention.

2. To seek the exclusive right to manufacture and market the invented product.

▣ Nature of Patent right.

A patent is a statutory grant conferring certain exclusive rights on a grantee for a specific
period, Subject to certain conditions.

In simple words it is not an absolute right, it is a right with certain limitations.

In Farbenfabrieken Bayer A.G

Joint Controller of Patent and Design

(AIR 1963 Cal433.)

The right of a Patentee to the exclusive use of the patented invention for the period of its
protection under the Act is a right to property.

▣ Rights conferred under Patent Act.

• To exploit the Patent.

• To licence the patent to another.

• To assign the patent to another.

• To surrender the patent.

• To sue for infringement.

• Right to exploit the Patent.

Section 48 confers on the Patentee the right to make use, exercise, sell, patented article or
substance in India.

Or use or exercise of the process if the patent is for a process.

• Right to licence the patent to another.

Section 70 of the Act confers inter alia, the right on patentee to grant Licence(s).

Right to licence the patent to another.

• Right to assign the patent to another.

Section 70 of the Act also confers on the patentee the right to fully or partially assign his
patent.

• Right to surrender the patent.

A patentee is not under an obligation to maintain the monopoly rights on the patent for entire
period.

He can surrender the patent any time.

The patentee in case of surrender, has to give notice to the controller offering him to
surrender his patent.

The controller before accepting the surrender, publish the offer in India to give opportunity to
the parties having interest.

• Right to sue for infringement.

The exclusive right, granted by patent will only be meaningful and lasting if the statue
confers the remedy to take legal action for protection of legal right.

The encroachment is called as infringement and the encroacher is called as infringer.

Patentee, his assignee, licensee, or agent has right to institute the civil suit against the
infringers.

Such a suit will lie in civil court not less than District Court.

▣ Obligations on Patentee.

The possession of Patents not only confers rights but also certain obligations on patentee.

Patents are granted not only to encourage inventions, but also to work those inventions in
India.

It is also essential that the monopoly created by the patent should not unfairly prejudice
interest of public.

It is an implied responsibility of patentee to work the patent the invention in such a way that
reasonable requirements of the public in respect of such invention is satisfied.

The product patented shall be made to public at a reasonable price.

Every patentee and licensee should furnish to the controller periodical statements as to the
extent as to which the patented invention has been worked on commercial basis in India.

• (These notes are for reference only, students are supposed to elaborate the points with proper explanation,
caselaws and examples)
 Chapter 3 - Infringement of Patents

▣ Nature of Patent rights

A patent is a statutory right conferring a certain monopoly for a limited period, subject to
certain conditions.

The essence of patent law does not lies in giving the right to use his invention, it lies in
excluding others from making use of his invention for a limited period.

There is no exclusive right similar to that of a patent in a secret formula or process which is
not patented.

1. The right contained under this section is an exclusive right, whether product or process.

2. No third party can exercise the patentee’s right without his consent.

▣ Meaning of infringement

Patent infringement is the commission of a forbidden act with respect to a patented invention
without permission from the patent holder.

The patent infringement may vary by authority, but it normally includes using or selling the
patented invention.

The extent of protection is defined in the claims of the granted patent.

▣ What can amount infringement

1. The colourable imitation of an invention.

2. Immaterial variations in the invention.

3. Mechanical equivalents (substitutes)

4. Taking essential features of an invention.

▣ The colourable imitation of an invention.

A colourable variation or immaterial variation amounting to infringement is where an

infringer makes slight modification in the process or product but in fact takes in substance
the essential features of the patentee's invention.

▣ Immaterial variations in the invention.

Where the essence is same but there is slight change which is not affecting the essential
characteristic of main invention.

▣ Mechanical equivalents (substitutes)

Infringement by mechanical equivalents would occur when he uses mere substitutes for those
features so as to get the same result for the same purpose as obtained by the patentee.

▣ Taking essential features of an invention.

In this case the invention is apparently different but the main features are taken from the
patent of alleged infringer

▣ When a suit can be instituted

A suit for infringement can be instituted only after the patent has been sealed.

When the term of the patent has expired and infringement occurred during the term of the
patent, a suit can be instituted during the term of even after the expiry of the term.

When a patent was obtained wrongfully by a person and later granted to the true and first
Inventor, no suit for infringement can be instituted for any infringement occurring before the
period of such grant to the true and first inventor.

▣ When a suit cannot be instituted

When a specification has been accepted and published, the applicants cannot institute a suit
for infringement, but damages sustained due to the infringement.
▣ Period of limitation

The period a limitation for instituting a suit for patent infringement is three years from the
date of infringement.

▣ Who Is Entitled To Sue

(1) The patentee.

(2) The exclusive licensee if the license is registered (sec 109).

(3) A compulsory licensee when the patentee refuses or neglects to institute proceedings.(sec
110) (within 2 months)

(4) A licensee other than the above two licensees can bring an action for infringement upon
the terms of the contract between the licensor and licensee.

(5) Assignee, he can sue only after the application for registration of the assignment in his
favour has been filed. If a patent is assigned after the commencement of action, the assignee
is to be joined as a co-plaintiff. An assignee cannot sue for infringement which occurred prior
to assignment.
 Chapter 4- Remedies for Infringement

Meaning of infringement

Patent infringement is the commission of a forbidden act with respect to a patented invention
without permission from the patent holder.

The patent infringement may vary by authority, but it normally includes using or selling the
patented invention.

The extent of protection is defined in the claims of the granted patent.

Types of remedies

(a) Anton piller order

(b) Mareva injunction
(c) Interlocutory injunction
(d) Perpetual injunction

(e) Accounting of profits and damages.

(a) Anton piller order

These are ex parte order to inspect defendant’s premises.

A court may grant such an order to the plaintiff where there is a possibility of a defendants
destroying or disposing of the incriminating material.

Pass such an order if for inspection of the premises of the defendants.

Requisites for granting of Anton pillar order

(1) there must be a strong prima facie case in favour of the plaintiff.

(2) Such an order if not granted will cause irreparable damage to the applicant for injunction.

(3) There must be clear evidence that the defendants have in their possession incriminating
documents or things and there is real a real possibility that they may destroy such material if any
notice of application is served.

Mareva injunction

In such an order the court has power to freeze defendant’s assets where there exists a probability
of the assets being dissipated or canceled so as to make a judgment against him worthless and
un-enforceable.

Interlocutory injunction

This form of injunction is the commonly sought and most often granted from of injunction. The
interlocutory injunction it an order restraining the defendants from continuance of the acts which
amount to infringement.

Perpetual injunction

Perpetual injunction is an order restraining the defendants totally, for all times to comes, from
doing any act which infringes the right of the proprietor of the trade mark.

Perpetual injunction is generally granted when the suit is finally decided.

Perpetual injunction

Perpetual injunction usually follows when the grant of interim injunction against infringement
was granted at the beginning of the suit.

It can be granted also in cases where no interim injunction was granted.

Damages and accounting of profits

 Chapter 5 – Compulsory licensing

▣ Meaning of Patent.

▣ Object of Patent Law

▣ Basic objective of Patent grant.

▣ Concept of compulsory licence.

▣ Grounds for grant of compulsory licence.

▣ Factors to be taken into account while considering the application for grant of
compulsory licence under section 84.

……………………………………………………………………

▣ Meaning of Patent

A Patent is an exclusive right granted to a person who has invented a new or useful article,
or a new process of making an article.

Patenting is a simple arrangement by virtue of which you openly disclose your invention to
the world… and in lieu of that the Sovereign allows you the exclusive rights to commercially
exploit the invention for a limited period.

After the Expiry of the limited period the invention falls in public domain and anybody can
make use of that invention.

▣ Object of Patent Law

• To encourage scientific research, new technology and Industrial process.

• To grant privilege to own, use or sell the method or the product patented for limited
period.
 • Stimulate new inventions of commercial utility.

• Pass the inventions into public domain after expiry of fixed period.

▣ Basic objective of Patent grant.

The objective of Patent Grant in India is to ensure that the inventions are worked in India on
a commercial scale and to the fullest extent without any undue delay

▣ Concept of compulsory licence

Compulsory licensing means the controller of Patent will grant licence to the applicant if
after expiry of 3 years from grant of patent the patentee has not commercially exploited the
patent.

▣ Grounds for grant of compulsory licence

(i) The reasonable requirements of the public with respect to the patented invention have
not been satisfied; and

(ii) The patented invention is not available to the public at a reasonable price.

(iii) Non-working of the patent in India on a commercial scale.

(iv) Demand for the patented articles being met by importation from abroad; and

(v) Commercial working of the patented invention in India being hindered or

prevented by import of the patented articles from abroad.

▣ Factors to be taken into account while considering the application for grant of
compulsory licence under section 84.

(1) The nature of the invention, the time which has elapsed since the sealing of the patent and
the measures already taken by the patent or licensee to make full use of the invention;

(2) The ability of the applicant to work the invention to the public advantage;
(3) The capacity of the applicant to undertake the risk in providing capital and working the
invention, if the application were granted;

(4) As to whether the applicant has made efforts to obtain a license from the patentee on
reasonable terms and conditions and such efforts have not been successful within a reasonable
period as the Controller may deem fit.

• (These notes are for reference only, students are supposed to elaborate the points with proper explanation,
caselaws and examples)
 Trademarks

Chapter 1-Over view of Trademark

⚫ Meaning of Trademark.

⚫ History of Trademarks Laws In India.

⚫ Functions of trademarks.

⚫ The object of the trademark law.

⚫ Rights given under trademark law.

⚫ Rights given under trademark law.

⚫ Infringement of trademark.

⚫ Remedies for infringement.

⚫ Meaning of Passing off.

⚫ Remedies for passing off actions.

…………………………………………………………

⚫ Meaning of trademark

A Trademark is a word, device, sign or symbol, capable of two dimensional graphic which
indicates the origin of goods and distinguishes it from those of other manufacturers.
Patents, Copyrights etc are protected for a limited period, but a registered Trademark can be
protected for perpetuity, if it is renewed periodically and the registered proprietors take
prompt action against infringers.

First Trademark registered under in U.K in year 1876 consisting red equilateral triangle is
still in force.

⚫ History Of Trademarks Laws In India

Prior to 1940 there was no statutory law relating to trademarks in India.

The Trademarks Act, promulgated in 1940, a replica of the UK Trademarks Act, 1938,
introduced a machinery for the registration and statutory protection of trademarks in India.

The Trademarks Act, 1940 was replaced by the Trade and Merchandise Marks Act, 1958. 

⚫ History Of trademarks Laws In India

The Trade and Merchandise Marks Act, 1958 has subsequently been replaced by the new
Trademarks Act, 1999, which has come into force from 15th September 2003.

 The new Act, which has been sufficiently revised and revitalized to make it substantially
acquiescent with the provisions of TRIPS(trade related aspects of intellectual property
rights).

⚫ Functions of trademarks.

It identifies the product and its origin.

It guarantees its unchanged quality.

It advertise the product.

It creates the image for the product.

⚫ The object of the trademark law.

The object of trademark law is to deal with ,

1. Precise nature of rights that a person can acquire over the trademarks.

2. The mode of acquisition of such rights.

3. The method of transfer of those rights to others.

4. Nature of infringements of such rights.

5. Remedies available in case of infringements.

⚫ Rights given under trademark law.

⚫ Infrigement of trademark.

Infringement occurs when has few alterations but retains a deceptive similarity to the essence
of original mark.

Or in same trade.

The infringement occurs when the infringer makes believe the customer that the goods is of a
particular company to which it is not.

⚫ Remedies for infringment.

Civil remedies.

Criminal remedies.

Administrative remedies.

⚫ Meaning of Passing off

Passing off is a law of tort.

It is a common law remedy.

In simple words passing off is an infringement of an Unregistered trademark.

⚫ Remedies for passing off actions.

There are only civil remedy for passing off action such as,

injunction,

Damages,

Recovery of profits,

Destruction of articles

(These notes are for reference only, students are supposed to elaborate the points with proper explanation,
caselaws and examples)
 ⚫ Chapter 2 – Registration of trademark

⚫ Meaning of trademark

⚫ Benefits of registration of trademark

⚫ What is a good Trade Mark

⚫ First to file system

⚫ Appropriate office for filing of trademark

⚫ Who can apply

⚫ Examination by registrar

⚫ Opposition to the application of trademark

⚫ Grounds of opposition

⚫ Grant of trademark

………………………………………………………………

⚫ Meaning of trademark

A Trademark is a word, device, sign or symbol, capable of two dimensional graphic which
indicates the origin of goods and distinguishes it from those of other manufacturers.

⚫ Benefits of registration of trademark

A Trademark helps the consumers to identify and purchase a good or service because of its
nature and quality, indicated by its unique Trademark, to meet their needs.

By registering a Trademark, the owner of the Trademark protects the goodwill of the
business.

The registered owner of a Trademark can sue other traders for recovery of profits, damages
and costs in case of Trademark infringement.

Trademark provides the guarantee for the unchanged quality and helps in creating and
advertising the goods and services in public.

⚫ What is a good Trade Mark

It should be easy to pronounce and remember if it is word mark.

In case of a device mark -should be capable of being described by a single word.

It was be easy to spell correctly and write legibly.

It should be short.

It should appeal to the eye as well as the ear.

It should not belong to the class of marks prohibited for registration.

It should satisfy the requirements of registration.

⚫ Procedure for registration

First to file system

The registration procedure in India is based on the ‘first to file’ system.

It is therefore important that the rights holder apply for the registration of its mark as soon as
possible.

The registration of a trademark in India typically takes about 2 to 3 years, subject to the
trademark not being opposed by a third party.
 ⚫ Appropriate office for filing of trademark

The Office of the Controller General of Patents, Trade Marks, Industrial Designs and
Geographical Indications is the appropriate office for filing of a trademark application in
India.

⚫ Who can apply

Under The Trade Marks Act, 1999 a person who is the proprietor of the trademark can apply
for the registration of its mark for goods as well services.

He or his Trademark agent shall make application in proper format before appropriate
authority, by paying the requisite fees.

⚫ Exa+mination by registrar

⚫ The said application, after filing, is examined by the Registrar on the basis of the data it
possesses concerning the earlier registered marks or pending applications.

The Registrar may accept the application to proceed for publication or direct the same to
proceed for publication before acceptance.

⚫ Opposition to the application of trademark

On publication of the mark in the official gazette called the Trade Marks Journal.

Any person can oppose the grant of registration, may do so by filing a notice of opposition
within the prescribed period of time of three months, which can be extended by a maximum
period of one month on a specified request made before the expiry of the statutory period of
three months.

The registrar then will fix a date for hearing.

⚫ Grounds of opposition

Registration of a mark can be opposed by any person on any of the grounds enumerated
under Sections 9, 11 and 18 of the Act. The opposer can file, as a ground of opposition that
the mark applied for registration is:
Not distinctive

Not capable of distinguishing

Descriptive

Has a direct reference to the character and quality of the goods.

Is a geographical term which in its ordinary significance has come to be known for a
particular kind of quality of goods.

⚫ Grounds of opposition

It comprises or contains scandalous or obscene matter or its use is prohibited under the
Emblems and Names (Prevention and Improper Use) Act, 1950.

Its identity with the earlier trade mark and/ or similarity of the goods covered by the earlier
mark.

The use thereof is likely to cause confusion and / or deception and is liable to be prevented
under the laws of passing off or by virtue of law of copyright.

A person applying for registration is not the proprietor of the mark and the application has
been filed in back date.

⚫ Grant of trademark

If the opposition is valid then the application is rejected.

If the opposition is invalid then the registrar will grant the trademark.

A trademark once granted is valid for 10 years.

(These notes are for reference only, students are supposed to elaborate the points with proper explanation,
caselaws and examples)
 ⚫ Chapter 3 – grounds of refusal of trademarks

⚫ Meaning of trademark.

⚫ Functions of trademark.

⚫ Necessity of registration of trademark.

⚫ Types of Grounds of refusal of trademark.

⚫ Absolute ground of refusal of trademark.

⚫ Relative ground of refusal of trademark.

……………………………………………………….

⚫ Meaning of trademark

A Trademark is a word, device, sign or symbol, capable of two dimensional graphic which
indicates the origin of goods and distinguishes it from those of other manufacturers.

⚫ Functions of trademark

It identifies the product and its origin.

It guarantees its unchanged quality.

It creates the image for the product.

It advertise the product.

 ⚫ Necessity of registration of trademark

1. Registering a trademark protects a company's name or logo, which is often a company's

most valuable asset;

2. Registering a trademark grants the trademark owner receives exclusive nationwide

ownership of the mark;

3. Registering a trademark decreases the likelihood of another party claiming that your
trademark infringes upon their trademark;

4. Registering a trademark provides official notice to others that a trademark is already taken;
consequently, a company that later adopts a confusingly similar trademark can not claim
ignorance of the mark;

5. Registering a trademark grants the trademark owner right to claim 3 types of remedies
from the infringer i.e Civil, criminal and administrative.

6. By registering a trademark the trademark owner receives the presumption of being the valid
owner of the mark;

⚫ Types of Grounds of refusal of trademark

⚫ Absolute grounds of refusal of trademark

Absolute grounds for refusal of registration.-

(1) The trade marks-

(a) 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,
 ; (b) 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;

(c) which consist exclusively of marks or indications which have become customary in the
current language or in the bona fide and established practices of the trade, shall not be
registered: Provided that a trade mark shall not be refused registration if before the date of
application for registration it has acquired a distinctive character as a result of the use made
of it or is a well-known trade mark.

(2) A mark shall not be registered as a trade mark if-

(a) it is of such nature as to deceive the public or cause confusion;

(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any
class or section of the citizens of India;

(c) it comprises or contains scandalous or obscene matter

(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950
(12 of 1950).

(3) A mark shall not be registered as a trade mark if it consists exclusively of-

(a) the shape of goods which results from the nature of the goods themselves; or

(b) the shape of goods which is necessary to obtain a technical result; or

(c) the shape which gives substantial value to the goods. Explanation.-For the purposes of
this section, the nature of goods or services in relation to which the trade mark is used or
proposed to be used shall not be a ground for refusal of registration.

⚫ Relative Grounds of refusal

.-(1) Save as provided in section 12, a trade mark shall not be registered if, because of-

(a) its identity with an earlier trade mark and similarity of goods or services covered by the
trade mark; or

(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services
covered by the trade mark, there exists a likelihood of confusion on the part of the public,
which includes the likelihood of association with the earlier trade mark.

(2) A trade mark which-

(a) is identical with or similar to an earlier trade mark; and

(b) is to be registered for goods or services which are not similar to those for which the
earlier trade mark is registered in the name of a different proprietor, shall not be registered if
or to the extent the earlier trade mark is a well-known trade mark in India and the use of the
later mark without due cause would take unfair advantage of or be detrimental to the
distinctive character or repute of the earlier trade mark.

(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be
prevented-

(a) by virtue of any law in particular the law of passing off protecting an unregistered trade
mark used in the course of trade; or

(b) by virtue of law of copyright.

 Chapter 4 -Infringement of Trademark

⚫ Main points of focuss

⚫ Meaning of trademark

⚫ Importance of Trademark.

⚫ Meaning of infringement

⚫ Essentials of Infringement

⚫ Who can sue?

⚫ Who can be sued?

⚫ Jurisdiction

⚫ Types of remedies for trademark infringement.

⚫ Limitation period.

⚫ Case laws.

………………………………………………………………….

⚫ Meaning of trademark

A Trademark is a word, device, sign or symbol, capable of two dimensional graphic which
indicates the origin of goods and distinguishes it from those of other manufacturers.

⚫ Importance of Trademark

Trademark is the identification mark of any company or organization.

A customer relates any trademark with the quality of products and reputation of the company
that is using it.
It is a distinctive name, word, phrase, symbol, logo, design, image, or a combination of these
elements that identifies a product, service or firm that has been legally registered as the
property of the firm.

Trademarks grant the owner the right to prevent competitors from using similar marks in
selling or advertising.

⚫ Meaning of infringement

Trademark Infringement is a violation of exclusive rights attaching to a trademark without

the authorization of the trademark owner or any licensee.

Trademark infringement mostly occurs when a person uses a trademark which may be either
a symbol or a design, with resembles to the products owned by the other party.

⚫ Essentials of Infringement

The taking of any essential feature of the mark or taking the whole of the mark and then
making a few additions or alterations would constitute infringement.

The infringing mark must be used in the course of trade.

The infringement is caused when the trademark is printed or used by any other representation
like, embossing, sticking on invoices or bills. There cannot be any oral infringement.

⚫ Essentials of Infringement

The occurrence of any one or combined use of all the above acts constitutes an infringement
of trademark

⚫ Who can sue

1. The proprietor of a registered trademark or his legal successor.

2. A registered user of a trade mark, subject to prior notice to the registered proprietor and
consequent failure of the registered proprietor to take any action against the infringer.
3. An applicant for registration of a trade mark, even before his trade mark is registered in
order to continue the use of the trade mark if registered.

4. Legal representative of the deceased proprietor of trademark.

5. One of the joint proprietors of the trade mark.

⚫ Who can be sued?

The infringer, who directly causes infringement, or who contemplates or contemplates or

threatens to use a trade mark, infringing the plaintiff’s rights.

The master, who is responsible for his servant’s act of infringement.

The agents of an infringer.

⚫ Jurisdiction

A suit for infringement of registered trademark is filed in District Court having jurisdiction or
in a High Court having original jurisdiction to entertain such suits.

The infringement must have taken place within the territorial jurisdiction of the Court.

⚫ Types of remedies for trademark infringement

Injunctions restraining further use .

Damages or account of profits.

An order for delivery of infringing labels for destruction.

⚫ Limitation period

The period of limitation for filing the suit is three years from the date of infringement.

⚫ M/s Bikanervala v. M/s Aggarwal Bikanerwala (117 (2005) DLT 255)

where the respondent was running a sweet shop in with the name of AGGARWAL
BIKANERVALA and the plaintiff was using the name BIKANERVALA from 1981 and also
got registered it in the year 1992. hence they applied for permanent injunction over the use of
the name AGGARWAL BIKANERWALA for the sweet shop by the defendant.

⚫ Court held in favour of the plaintiff and stopped defendant from manufacturing, selling,
offering for sale, advertising, directly or indirectly dealing in food articles for human
consumption under the impugned trade mark/trade name/infringing artistic label
'AGGARWAL BIKANER WALA' or from using any trade mark/trade name/infringing
artistic work containing the name/mark 'BIKANER WALA/BIKANERVALA' or any
other name/mark/artistic work which is identical or deceptively similar to the plaintiff's
trademark 'BIKANERVALA'.

⚫ Dhariwal Industries Ltd. and Anr. v. M.S.S. Food Products (AIR 2005 SC 1999)

where appellants were using the brand name MALIKCHAND for their product and the
respondents were using the name MANIKCHAND which is similar to the previous one and
both parties have not registered their trademarks

⚫ Court held in this matter that even though plaintiff have not registered their trademark
they are using it from long time back and hence court granted perpetual injunction against
the respondents.

⚫ N.R. Dongare v. Whirlpool Corp. Ltd

(1996) 5 SCC 714)

Where the defendants have failed to renew their trademark ‘WHIRLPOOL’ and in the mean
time the plaintiffs have got registration of the same.

⚫ The court held that, the “WHIRLPOOL” has acquired reputation and goodwill in this
country and the same has become associated in the minds of the public. Even
advertisement of trade mark without existence of goods in the mark is also to be
considered as use of the trade mark.
⚫ Scan Biotek India and Anr.
Vs.
Smt. Brijlata Prop. of Scan Biotech India
(2011(45)PTC340(Del)

The plaintiffs claim to be a pharmaceutical products manufacturing concern. The first

plaintiff -SCAN BIOTEK INDIA is a registered partnership firm since 6.8.2003. The second
plaintiff - Scan Biotech Ltd. was incorporated sometime in December, 2003. It is stated that
the drug formulation "Bolran" is widely marketed by the second plaintiff in Ukraine. The
trademark "BOLRAN" is, however, owned by the first plaintiff in India. It submits that the
registration in the said mark was obtained under the Trademarks Act w.e.f. 14.11.2003 in
class-5 of the schedule to the Act.

⚫ the defendant, its partners, servants, distributors or anyone acting on its behalf are hereby
restrained by a decree of injunction, from using the mark SCAN BIOTECH INDIA or
any other confusingly or deceptively similar trade name that would tend to confuse it
with those of the plaintiff. They are similarly restrained by a decree of permanent
injunction from marketing or selling any products under the mark BOLRAN in relation to
pharmaceutical goods or any other confusingly or deceptively similar mark.

(These notes are for reference only, students are supposed to elaborate the points with proper explanation,
caselaws and examples)