IP Notes Printable

Notes by Jaswanth Varma
IP Law new
29 October 2022 09:37 AM
Intellectual property
Meaning and nature of the intellectual property

• Intellectual property means creations of the human mind and intelligence and popularly known as 'IP'.
• Intellectual property rights are legal rights, these legal rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields.
• These rights are on Intangibles
• Hence, inventions, literary and artistic works, and symbols, names, images, and designs used in commerce are called intellectual property.
• Recognition and protection of these rights are of recent origin.
• IPR means intellectual property law and this intellectual property law deals with the rules for securing and enforcing legal rights to inventions, designs, and artistic works.
• Just as the law protects ownership of personal property and real estate, so too does it protect the exclusive control of intangible assets.
• The purpose of these laws is to give an incentive for people to develop creative works that benefit society, by ensuring they can profit from their works without fear of misappropriation by others
• Intellectual property is the product of the human intellect including creativity concepts, inventions, industrial models, trademarks, songs, literature, symbols, names, brands,....etc.
• Intellectual Property Rights do not differ from other property rights.
• They allow their owner to completely benefit from his/her product which was initially an idea that developed and crystallized.
• They also entitle him/her to prevent others from using, dealing or tampering with his/her product without prior permission from him/her.
• He/she can legally sue them and force them to stop and compensate for any damages.
• Categories
○ Tangible
 Movable
□ Which is not attached to the land
 Immovable
□ Which is attached to the land
○ Corporeal - which can be touched and seen
○ Incorporeal property
○ Intangible
 Right to Individual reputation
 Securities
 Intellectual property
□ It's not absolute right
□ Benefits and rights should be with patentee
□ Protection of the rights
• Classification (Write detail about them)
○ Industrial Property:
 includes patents for inventions, trademarks, industrial designs
○ Copyright and Related Rights:
 covers literary works (such as novels, poems and plays), films, music, artistic works (e.g., drawings, paintings, photographs and sculptures) and architectural design.
 Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and broadcasters in their radio and television programs
○ Know how confidential information
 Business secrets are part of IP as well
 Technology secrets
○ Layout designs of integrated circuit
 Semiconductor integrated circuit layout design act 2000
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 Semiconductor integrated circuit layout design act 2000
○ Protection of undisclosed information
○ Geographical Indications
○ Plant varieties and Bio verities
• Types
○ Patent -
 patent is an exclusive right granted for an invention - a product or process that provides a new way of doing something, or that offers a new technical solution to a problem.
 A patent provides patent owners with protection for their inventions.
 Protection is granted for a limited period, generally 20 years. After 20 years, anybody can use the patented product.
 Patent protection means an invention cannot be commercially made, used, distributed or sold without the patent owner’s consent.
 A patent owner has the right to decide who may – or may not – use the patented invention for the period during which it is protected.
 It must be of practical use;
 it must show an element of “novelty”, meaning some new characteristic that is not part of the body of existing knowledge in its particular technical field.
 The invention must show an “inventive step” that could not be deduced by a person with average knowledge of the technical field.
 Its subject matter must be accepted as “patentable” under law.
 In India, Its as patent act 1970, person having patent right is called as patentee
○ Trademark -
 It’s a formally registered symbol identifying the manufacturer or the distributor of the product
 A trademark is a distinctive sign that identifies certain goods or services produced or provided by an individual or a company.
 Goodwill of the product is depended on the trademark
 he system helps consumers to identify and purchase a product or service based on whether its specific characteristics and quality – as indicated by its unique trademark
 The protection ensures that the owners of marks have the exclusive right to use them
 Trademarks may be one or a combination of words, letters and numerals.
 They may consist of drawings, symbols or three-dimensional signs, such as the shape and packaging of goods.
 Trademark act 1999
○ Industrial design
 An industrial design refers to the ornamental or aesthetic aspects of an article.
 A design may consist of three-dimensional features, such as the shape or surface of an article, or two-dimensional features, such as patterns, lines or colour.
 industrial designs are applied to a wide variety of industrial products and handicrafts; from technical and medical instruments to watches, jewellery and other luxury items; from housewares and
electrical appliances to vehicles and architectural structures; from textile designs to leisure goods.
 To be protected under most national laws, an industrial design must be new or original and non-functional.
 This means that an industrial design is primarily of an aesthetic nature, and any technical features of the article to which it is applied are not protected by the design registration.
 As a rule, to be registrable, the design must be “new” or “original”
 there is separate act called as separate design act 1911. Which have been amended as design act 2000.
 Design is appearance of the goods or articles any product can be identified by design it including ,packing colour, combination, shape n size of the container
○ Geographical origin or Indications
 it is separate name relating to particular region, area on country. It is also registered.
 There is separate act to protect called geographical indication Act of goods, registration and protection act 1999.
□ The object of the act
 By specific laws governing the geographical Indication of goods in the country, which can adequately protect the interests of the producers of such goods,
 To exclude unauthorized persons from misuse of geographical signals and protect consumers from fraud, and
 Promoting Indian geographical bearing goods in the export market.
 characteristics of the Goods. Such as
□ Natural good
□ Manufactured goods
□ Processed good
 They can be used for both agricultural and industrial products.
 3 Main functions
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 3 Main functions
□ First, they identify the goods as to the origin of a particular region or locality;
□ Secondly, they suggest to consumers that goods come from a region where a given quality, reputation, or other characteristics of the goods are essentially attributed to their geographic
origin;
□ Third, they promote the goods of producers of a particular region, and they protect the producers of that region by recognizing GI to their produce. .
 Examples: Swiss chocolates, Kanchi silk, Bangalore Tomato, Shimla Mirchi, Agra Ka Patha, New York time etc.,
 A geographical indication is a sign used on goods that have a specific geographical origin and possess qualities or a reputation due to that place of origin.
 Most commonly, a geographical indication consists of the name of the place of origin of the goods.
 Agricultural products typically have qualities that derive from their place of production and are influenced by specific local geographical factors, such as climate and soil.
 The use of geographical indications is not limited to agricultural products.
 They may also highlight specific qualities of a product that are due to human factors found in the product’s place of origin, such as specific manufacturing skills and traditions. The place of origin
may be a village or town, a region or a country. An example Switzerland watches.
 It protects from the consumers on the infringement of the indications
 GA tag. In India, first time it happened with Darjeeling tea. A GA registration will be valid for 10 years initially, then it can be extended for every 10 years
 Registration process
□ Application filling
 The Application must be signed by the Applicant or his agent
 Describe the special features and how those standards are maintained.
 Three certified copies of GI-related field maps.
 Description of the inspection structure if there is an area for regulating the use of G.I
□ Preliminary Examination and Examination
 The examiner will check the Application for any deficiencies.
 The Applicant should take measures in this regard within one month of communication.
 The content of the case description is evaluated by an advisory group of experts .
 After that, an examination report will be issued.
□ Show cause notice
 If the Registrar has any objection to the Application, he shall file such objection.
 Applicant must reply within two months or apply for a hearing.
 The decision will be duly communicated.
 If the Applicant wants to appeal, he can request it within a month.
□ Publication
 Every Application, within three months of acceptance, will be published in the Geographical Indications Journal.
□ Resist Registration
 Any person opposing the G.I. application, published in the journal, can file a notice of protest within three months
 The Registrar will provide a copy of the notice to the Applicant.
 Within two months, the Applicant will send a copy of the counter statement.
 If he does not do so, he is believed to have dropped his Application.
 Thereafter, both parties will lead their respective evidence through affidavits and supporting documents.
□ Registration of Application
 Where an application for G.I. has been accepted, the Registrar will register the Geographical Indication. T
 he date of filing the Application after being registered will be considered as the date of registration.
 Registrations for GIs are not necessary, however, the organizations or companies who register their geographical indications obtain numerous benefits of the registration including:
□ have the exclusive right to exploit or use the GIs’ products in the course of trade.
□ The authorized users are allowed to issue infringements.
□ It confers legal protection to Geographical Indications in India.
□ Prevents unauthorized use of a Registered Geographical Indication by others.
□ It provides legal protection to Indian Geographical Indications which in turn boost exports.
□ It promotes the economic prosperity of producers of goods produced in a geographical territory
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□ It promotes the economic prosperity of producers of goods produced in a geographical territory
○ Copyrights -
 Copyright laws grant authors, artists and other creators protection for their literary and artistic creations, generally referred to as “works”.
 Works covered by copyright include, but are not limited to: novels, poems, plays, reference works, newspapers, advertisements, computer programs, databases, films, musical compositions,
choreography, paintings, drawings, photographs, sculpture, architecture, maps and technical drawings.
 1957 act
○ Layout designs of integrated circuits -
 A Layout design of integrated circuits is a form of intellectual property that gives an exclusive right to the registered proprietor of layout design and also to the registered users.
 Integrated Circuit Layout Designs are creations of the human mind.
 Integrated circuits are utilized in a large range of products, including articles of everyday use, such as watches, television sets, washing machines, computers, automobiles and all electronic
goods etc.
 Intellectual property law gives protection to the rights of these layout designs of integrated circuits. E.g. TV circuits, Computer circuits, Cell phone circuits etc.
○ Protection of undisclosed information (Trade secrets/ Rights to secrecy):
 Trade secrets are a form of intellectual property that gives an exclusive right to the business owners.
 A trade secret refers to data or information relating to the business which is not generally known to the public and which the owner reasonably attempts to keep secret and confidential.
 It is an information with commercial value which is not available in the public domain and disclosure of which would cause significant harm to the owner
 Trade secrets cannot be misappropriated, sabotaged, lost or stolen because of competition.
 Intellectual property law gives protection against infringement of the right to trade secret.
 E.g. Customer list, Business information, Employee details, financial records, business plans, strategies, formulas, designs etc.
 Another advantage of trade secrets is that trade secret protection is not limited in time. Thus, a trade secret may continue indefinitely as long as it continues to meet the definition of a trade
secret.
 A classic example is a secret formula for Coca Cola. Had John Pemberton decided to patent the formula for Coca Cola when he invented it in 1886, the formula would now be free to be copied by
anyone. Instead, Coca Cola remains a leader in the world’s soft drink industry based on its trade secret formula, over 110 years later.
 It can be protected by
□ NDA (Non-disclosure agreement
 Employees and business partners should sign a NDA that prevent them from disclosing a company's confidential information
□ NCA ( Non-compete agreement)
 Employers should ask employees, contractors and consultants to sign a NCA to prevent them from entering in competition when their employment / service agreement ends
□ IT security infrastructure
○ Plant varieties or Farmers right act or PPV&FRA -
 The Protection of Plant Varieties and Farmers Rights Act, 2001 (PPV&FRA)
 It gives an exclusive right to the producer to sell and propagating material of the new plant variety for a certain period of time.
 Intellectual property law gives protection to new plant varieties and encourages commercial plant breeders to invest the resources;
 labour and time needed to improve existing plant varieties by ensuring that breeders receive adequate remuneration when they market the propagating material of those improved varieties.
 Plant breeders who have discovered or developed a new plant variety can have exclusive monopoly control over that variety.
 Plant varieties are also patentable under plant varieties Act 1999.
 It has been specified in TRIPS agreement
 it is having object to encourage agricultural research, it includes following points:-
□ New type of medical plants.
□ New type of seeds.
□ New type of fruits such as Hapus Mango.
□ New type of grains such as Basmati rice.
□ New type of vegetables. Therefore plant varieties includes new type of agricultural products.
 TRIPS agreement, rights of farmer rights have been explained here
 Object of this act
□ To protect the investor who are keeping money in new verities
□ To facilitate the growth of seed industry
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□ To facilitate the growth of seed industry
□ To recognize the role of farmers
 In 1991 convention UPOV ,International protection of new varieties of plant conventions. It gave the rights for the protection of new plant breeder
 Essential Conditions to get certified for a new plant
□ Novelty
 New varieties in the taxonomy
 not been sold or otherwise disposed of in India earlier than one year
 in the case of trees or vines earlier than six years
 Any other case earlier than four years,
□ Distinctiveness
 Uniqueness
 clearly distinguishable by at least one essential characteristic from any other variety
□ Uniformity
□ Stability
 if its essential characteristics remain unchanged after repeated propagation
 Types of varieties
□ New Variety:
 A new variety can be registered under the Act if it conforms to the criteria for novelty, distinctiveness, uniformity and stability.
□ Extant variety:
 An extant variety can be registered under the Act if it conforms to the criteria for distinctiveness, uniformity and stability.
 Thus novelty is not considered while going for the protection of plant varieties. T
□ Farmers' Variety:
 farmers variety means a variety "which has been traditionally cultivated and evolved by the farmers in their fields".
 DURATION OF PROTECTION
□ For trees and vines (Perennials)- 18 years from the date of registration of the variety.
□ For other crops (Annuals) – 15 years from the date of registration of the variety.
□ For extant varieties – 15 years from the date of notification of that variety
• Nature of Intellectual Property

○ No nature of property: -
 Intellectual property. There are no quality or nature of actual property. They are intangible of nature
○ Registration : -
 Intellectual property have recognition in every country there are many laws enacted to protect right relating to intellectual property.
○ Protection of interest:-
 Author of intellectual property use his knowledge, technique, skill to develop I.P., therefore right of the author to be protected and he should have right of his benefits.
○ Territorial
 Any intellectual property issued should be resolved by national laws.
 Why is it an issue? Because intellectual property rights have one characteristic which other national rights do not have.
 In ownership of intellectual property of immovable properties, issues of cross borders are not probable. But in intellectual properties, it is common.
 A film made in Hollywood can be seen in other countries. The market is not only the local one but also international. If the design in China is imitated by another person in France which law
would be applicable?
○ Exclusivity
 Giving an exclusive right to the owner It means others, who are not owners, are prohibited from using the right.
 Most intellectual property rights cannot be implemented in practice as soon as the owner got exclusive rights. Most of them need to be tested by some public laws.
 The creator or author of an intellectual property enjoys rights inherent in his work to the exclusion of anybody else.
○ Assignable
 Since they are rights, they can obviously be assigned (licensed).
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 Since they are rights, they can obviously be assigned (licensed).
○ Traded
 Intellectual property can be bought, sold, or licensed or hired or attached.
○ Independence
 Different intellectual property rights subsisting in the same kind of object. Most intellectual property rights are likely to be embodied in objects.
○ Subject to Public Policy
 They are vulnerable to the deep embodiment of public policy. Intellectual property attempts to preserve and find adequate reconciliation between two competing interests. On the one hand,
the intellectual property right’s holders require adequate remuneration and on the other hand, consumers try to consume works without much inconvenience.
• Advantages of IP
○ Development
○ Improvement of living standard
○ Improvement in Intelligence
○ Improvement of facilities (TV phone)
Unit 2
WIPO
• This organization is W.I.P.O which has established in 1979.
• The World Intellectual Property Organization (WIPO) is the United Nations specialized agency.
• It seeks to develop a balanced and accessible International Intellectual Property System, which rewards creativity, stimulates innovations, and contributes to economic development while safeguarding
public interests
• There was a convection held at Stockholm on 14th July 1967 for promotion of Intellectual Property in all country.
• he WIPO should stimulate creativity and promote IP protection all over the world through cooperation between countries
• WIPO is the oldest organization in the field of IP protection. A
• In this connections this convention was attended by representatives of 157 countries.
• Currently, the WIPO includes 184 member-states. It is made up of more than 90 per cent of all countries
• W.I.P.O has head quarter at Geneva.
• Objects
○ To promote the IP throughout the world through cooperation among the states
○ It will collaborate with another international organization
○ To ensure administrative cooperation among the unions
○ To offer its cooperation with states requesting legal and technical assistance in field of IP
• Membership is open to any state which is a member of any unions (Paris union or Berlin union or UNO)
• Even members from ICJ or IAA (International automatic agency) are also eligible
• Main Functions
○ assisting campaigns development to improve IP protection all over the world and to harmonize national legislation in this field;
○ signing international agreements on IP protection;
○ applying the administrative functions of the Paris and Berne Unions;
○ technical and legal assistance in the field of IP;
○ collecting and disseminating the information, conducting researches and publishing their results;
○ ensuring the work of the services facilitating international IP protection;
○ applying any other appropriate actions.
• Organs of W.I.P.O:-
○ There are four organs of W.I.P.O.
 GENERAL ASSEMBLY:-
□ All countries are members of general assembly.
□ There is meeting of general assembly at least one time in the year.
□ It is attended by representative of member country.
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□ It is attended by representative of member country.
□ The discuss all the problem relating to Intellectual Property and passed the resolution general assembly also make rules regulation to promote.
 CONFERENCE:-
□ In Conference some countries are elected as member of conference in general assembly conference have function to bring new countries as members of W.I.P.O.
□ Here both members and non-members are the parties
 CO-ORDINATION COMMITTEE:-
□ In this committee there are some member of states elected by general assembly it is also called execution committee
□ this committee examine the resolution passed in various convention and submit report to W.I.P.O
□ there is right of W.I.P.O to enforce the convention which are better to promote intellectual property.
 INTERNATIONAL BUREAU:-
□ It is called secretariat or administrative office of WIPO.
□ There is one director general two deputy director and one chief executive officer and other staff appointed on international bureau
□ hey are appointed for six years term
□ international bureau may correspondence and collect information from the member countries about progress done in the filled of I.P. International Bureau file and record of all the
countries related to intellectual property.
TRIPS (Trade related aspects of Intellectual property rights)

• The Trade-Related Aspects of Intellectual Property Agreement (‘TRIPS’) is a multilateral agreement administered by the World Trade Organisation (“WTO”) that came into effect on 1st January 1995.
• Intellectual property rights are the rights given to persons over the creations of their minds.
• They usually give the creator an exclusive right over the use of his/her creation for a certain period of time.
• TRIPS is an international treaty administered by the World Trade Organization (WTO) which sets down minimum standards for most firms of intellectual property (IP) regulation within all member countries
of the World Trade Organization.
• TRIPS specifies enforcement procedures, remedies, and dispute resolution procedures.
• TRIPS Agreement contains 7 Parts and 73 Articles.
• Part I deals with general principles and objectives of TRIPS and
• Part II provides the minimum standards each country must provide for various forms of intellectual property
• This Agreement offers protection to intellectual property with an enforceable obligation of the Member States.
• TRIPS Agreement sets out minimum standards of intellectual property protection for the Member States
• The TRIPS Agreement is to date the most comprehensive multilateral agreement on intellectual property.
• Main features TRIPS
○ Standards
 TRIPS Agreement sets out the minimum standards of protection to be provided by each Member.
 Main elements are
□ the subject-matter to be protected, the rights to be conferred and permissible exceptions to those rights, and the minimum duration of protection.
 The Agreement sets these standards to implement the provisions of conventions of the WIPO, the Paris Convention and the Berne Convention etc.
○ Enforcement
 TRIPS Agreement makes provisions which deal with domestic procedures and remedies for the enforcement of intellectual property rights.
 In addition, it contains provisions on civil and administrative procedures and remedies, provisional measures, special requirements related to border measures and criminal procedures, and
remedies that must be available for the enforcement of rights.
○ Dispute settlement
 TRIPS Agreement makes disputes between WTO Members in respect of the TRIPS obligations subject to the WTO's dispute settlement procedures.
○ Compensation for damages due to infringement
• Object of TRIPS
○ to reduce distortions and impediments to international trade
○ to promote effective protection of intellectual property rights
○ to enforce intellectual property rights
to eliminate the barriers to legitimate trade
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○ to eliminate the barriers to legitimate trade
○ to promote technological innovations
○ to facilitate the transfer and dissemination of technology
○ . to provide a mutual advantage to producers and users to maintain a balance of rights and obligations
○ to provide a robust dispute settlement mechanism.
• National Treatment
○ National treatment is an integral part of many World Trade Organization agreements.
○ The principle of national treatment is provided under Article 3 of the TRIPS Agreement.
○ National treatment is a principle in customary international law vital to many treaty regimes.
○ It essentially means treating foreigners and locals equally.
○ Under national treatment, if a State grants a particular right, benefit or privilege to its own citizens, it must also grant those advantages to the citizens of other states while they are in that country.
○ In the context of international agreements, a State must provide equal treatment to those citizens of other states that are participating in the agreement.
○ Imported and locally-produced goods should be treated equally, at least after the foreign goods have entered the market.
○ This trade rule aims to prevent internal taxes or other regulations from being used as a substitute for tariff protection.
○ However, national treatment is subject to the exceptions already provided in the Paris Convention (1967), the Berne Convention (1971), the Rome Convention or the Treaty on Intellectual Property in
Respect of Integrated Circuits etc. Thus, national treatment is one of the cornerstones of WTO trade law.
• Most Favoured Nation
○ Most Favoured Nation (MFN) is an integral part of many World Trade Organization agreements.
○ The principle of (MFN) is provided under Article 4 of the TRIPS Agreement.
○ The term 'Most Favoured Nation' means the country which is the recipient of this treatment must, nominally, receive equal trade advantages as the most favoured nation by the country granting such
treatment.
○ Trade advantages include low tariffs or high import quotas.
○ In effect, a country that has been accorded MFN status may not be treated less advantageously than any other country with MFN status by the promising country.
○ The members of the World Trade Organization (WTO) agree to accord MFN status to each other.
○ Exceptions allow for preferential treatment of developing countries, regional free trade areas and a customs union, together with the principle of national treatment, MFN is one of the cornerstones
of WTO trade law.
• TRIPS-Areas of concern
○ Copyright related rights:
 Section 1:
 The members shall comply with the provisions of the Berne Convention, 1971.
 Copyright protection shall extend to expressions and not to ideas, procedures, and methods of operation or mathematical concepts.
 Computer programs and compilations of data shall be protected as literary works under the Berne Convention, 1971.
 Article 14 protects performers, producers of phonograms or sound recordings and broadcasting organizations
○ Trademarks:
 Section 2
 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.
 They are eligible for registration as trademarks.
 The owner of a registered trademark shall have the exclusive right to prevent all others from using it.
 Initial registration and each renewal of registration of a trademark shall be for a term of not less than seven years.
○ Geographical indications:
 Section 3:
 Geographical indications are, for the purposes of this Agreement, indications which identify a goods as originating in the territory of a Member, or a region or locality in that territory, where a
given quality, reputation or other characteristics of the goods is essentially attributable to its geographical origin.
 Members shall provide the legal means for interested parties relating to the geographical origin of the goods, to check unfair competition, to give additional protection for geographical
indications like wines and spirits.
 It must facilitate international negotiations.
○ Industrial designs:
 Section 4:
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 Section 4:
 Members shall provide for the protection of independently created industrial designs that are new or original.
 The owner of a protected industrial design shall have the right to prevent third parties not having the owner's consent from making, selling or importing articles bearing or embodying a design
which is a copy, or substantially a copy, of the protected design when such acts are undertaken for commercial purposes.
 The duration of available protection is 10 years.
○ Patents:
 Section 5:
 Patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial
application.
 A patent shall confer on its owner the certain exclusive rights.
 n opportunity for judicial review of any decision to revoke or forfeit a patent shall be available under Article 32.
 The term of protection is twenty years from the filing date.
○ Layout designs (Topographies) of integrated circuits:
 Section 6:
 Members agree to protect the layout-designs (topographies) of integrated circuits.
 Members requiring registration as a condition of protection, the term of protection of layout-designs is 10 years counted from the date of filing an application for registration or from the first
commercial exploitation.
○ Protection of undisclosed information:
 Section 7:
 In the course of ensuring effective protection against unfair competition as provided in Article 10 of the Paris Convention, Members shall protect undisclosed information.
 Natural and legal persons shall have the possibility of preventing information lawfully within their control from being disclosed to, acquired by, or used by others without their consent in a
manner contrary to honest commercial practices so long as such information is secret and has commercial value because of its secrecy.
○ Control of anti-competitive practices in contractual licenses:
 Section 8:
 Members agree that some licensing practices or conditions pertaining to intellectual property rights which restrain competition may have adverse effects on trade and may impede the transfer
and dissemination of technology.
 Members are not prevented from specifying in their legislation licensing practices or conditions that may in particular cases constitute an abuse of intellectual property rights having an adverse
effect on competition in the relevant market.
 Member may adopt appropriate measures to prevent or control such practices.
Paris convention 1883

• It's for protection industrial development and Industrial designs
• Originate in International patent convention 1873 in Geneva
• Concluded in Paris Union in 1883 by 11 countries
• It came into force in 1884
• Objectives
○ Legal protection for industrial property
○ To encourage uniformity of law
○ It achieved it by providing multinational treaty. Stronger than bilateral treaty
• It is formed to form special agreement
○ It is understood that contracting parties reserved the right to make specially between themselves special agreements for the protection of industrial property rights
○ Special agreements have been concluded here
○ To protect the industrial rights in an easy way and more secure way and less expensive
○ They are separate distinct international special treaties between states
○ Patent cooperation treaty has been formed as a special agreement in Paris convention
○ Members don’t get a direct membership in these special agreements directly
• This is administered by WIPO
• They covered full range of IP: Trademarks, patents, industrial designs etc
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• They covered full range of IP: Trademarks, patents, industrial designs etc
• One of the special agreement is PCT (Patent cooperation treaty)
○ PCT (Patent cooperation treaty)
 For the filing, searching , publication and examination of international applications
 Filing on one patent application which may be subsequently prosecuted by the different international application
 They have regional offices in different countries which deals with above cases
 Granting of patents will be decided by the regional officers which comes under PCT
 Effective way of keeping inventions and trade secrets
 It also deals with Know- oh and confidential information IP types
 To keep coercing the information confidential
 World intellectual organization helps to protect the rights of intellectual property - WIPO
Berne Convention 1886 (It's for Copyrights)

• It's for the protection of literally and artistic works
• It was held on 5th December 1987
• it is promote literacy work,
• berne convention was attended by representation of 117 countries and they passed number of resolution provision of berne conventions cause into force 1st January 1996.
• Article published can be taken as reference by other newspaper but is should not be copied.
• It recognized question papers and this as copy right.
• When there is translation of any book of author in other language, then also his consent is necessary.
• It also included artistic work such as painting statutes, Adores and design photography.
• It also covered architect work.
• This right has been recognized relating to painting.
• In literature work or copyright work new computer programmes have been included.
• In this conventions all musical work and choreography is also included.
• It also covered publication of dictionaries.
• Therefore berne convention is milestone in the filled of literacy work at international level
• in this convention it was recommended that literacy work to be protected for minimum 50 years or life period of another + 25 years
• This convention is administered by WIPO
Universal Copyright Convention (UCC)

• It started in 1952
• In Berne convention, USA, China, Soviet union didn’t join the convention, so UCC was formed and became prominent
• This was developed as an alternative to Berne
• This is administered by UNESCO (United nations Educational, scientific and Cultural organizations)
• UCC incorporated certain universal standards
• Contracting states under an obligation
• Protection is given for published as well as unpublished works
• The convention limits the formalities that can be required for works first published outside the territory of a member state
• That works should be accompanies by a symbol 'C'
• 20 years from publications or life of author + 20 years
• Foreign authors of other countries must have exclusive rights for at least 7 years
• We cannot denounce the rights mentioned in the Berne Convention
• include following activities in copyright.
○ New type of computer programmed.
○ Dictionary written by the authors.
○ There is copyright of translation work of the books.
There is copyright of religious books.
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○ There is copyright of religious books.
○ There is copyright these submitted in university. Therefore, this conventions added additional areas in copyright.
Madrid Agreement 1891

• Related to trademarks.
• Concerning to the international registration of marks
Unit 3
Copyrights
• There is a separate Act to protect copyright called as copy right Act 1957 copyright is relating to literacy work. Such as books, articles, movies, cassettes.
• Copyright is a property right, which exists to protect the expression of ideas and the use of works by authors and publishers of various types of works, including literary (e.g. books, newspapers, magazines
and journals), artistic works (including photographs, paintings, sculptures, diagrams), musical works, sound recordings, films and broadcasts.
• Copyright refers to a bundle of exclusive rights vested in the owner of copyright by virtue of Section 14 of the Act.
• These rights include the right of adaptation, right of reproduction, right of publication, right to make translations, communication to public etc.
• Copyright protection is conferred on all Original literary, artistic, musical or dramatic, cinematography and sound recording works.
• Original means, that the work has not been copied from any other source.
• Copyright protection commences the moment a work is created, and its registration is optional.
• However, it is always advisable to obtain a registration for better protection.
• Copyright registration does not confer any rights and is merely a prima facie proof of an entry in respect of the work in the Copyright Register maintained by the Registrar of Copyrights.
• Authors’ rights
○ Economic Rights
 Economic rights are property rights that enable the author to protect his/her work, authorize and prevent uses of the work.
 They can be transferred or licensed.
 Each use of an author’s economic rights requires payment unless the author decides otherwise
 Economic rights are those rights which help the author to reap economic benefits.
 These rights have been recognized in one form or the other since the fifteenth century.
 As per Section 14 of the Copyright Act, 1957, different rights are recognized for the works considering its nature.
 The copyright subsists in original literary, dramatic, musical and artistic works; cinematographs films and sound recordings. The authors of copyright in the aforesaid works enjoy economic rights
u/s 14 of the Act.
 The rights are mainly, in respect of literary, dramatic and musical, other than a computer program, to reproduce the work in any material form including the storing of it in any medium by
electronic means, to issue copies of the work to the public, to perform the work in public or communicating it to the public, to make any cinematograph film or sound recording in respect of the
work, and to make any translation or adaptation of the work.
○ Moral rights
 Beside their economic aspects authors’ rights also grant authors moral rights, including the right to be named as the author and the right to protect their work from being used in a detrimental
way or context.
 These rights are personal and cannot be traded.
 They allow individuals to exercise control over their work.
 It enables authors to maintain ethical standards which define and guarantee quality and authenticity of the works produced
 Section 57 of the Act defines “moral rights” of an author.
□ The right of paternity:
 The right of paternity refers to the right of an author to claim authorship of work and a right to prevent all others from claiming authorship of his work.
□ Right of integrity
 the right to protect his honour and reputation
 The right of integrity empowers the author to prevent distortion, mutilation or other alterations of his work, or any other action in relation to said work,
□ A general right
 not to have a work falsely attributed to him
 Though initially intended to protect only literary works, the concept of moral rights was later extended to artistic, musical, dramatic and cinematograph films as well.
 Can moral rights be transferred or waived? No,
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 Can moral rights be transferred or waived? No,
□ moral rights cannot be transferred but can the author relinquish his/her rights in the work under Section 21 of the Copyright Act? Since the Statute is silent and very few cases dealing with
this, this question is debatable.
□ It is not legally possible to waive moral rights nor it is possible to include a clause in the agreement stating that the publisher will not sue or take any action against the author (as it will be
hit by certain sections of the Indian Contract Act).
□ The best bet would be to draft an agreement with a decent severability clause.
 Moral rights apply to:
□ Literary works such as most written material and including computer programs.
□ Artistic works such as photographs, sketches, plans, maps, paintings, three-dimensional works from pottery to statuary and buildings, craftwork and murals
□ Musical works
□ Dramatic works such as plays and screenplays
□ Cinematograph films
 Ex: A have written a books nobody can publish same books or take a chapter from the books otherwise there is violation of copyright of the authors. Authors have right to transfer his copy right
by making agreement.
• True Owner (section17)
○ As per Section 17 of the Act, the author or creator of the work is the first owner of the copyright.
○ An exception to this rule is that the employer becomes the owner of the copyright in circumstances where the employee creates a work in the course of and scope of employment.
○ AS per the section
 in the case of a literary, dramatic or artistic work made by the author, author is the first owner
 in the case of a photograph taken, or a painting or portrait drawn, or an engraving or a cinematograph film made
 In case of author under employment, then employer is true owner
 in the case of any address or speech delivered in public, the person who has delivered on behalf of any other person, such other person shall be the first owner
 in the case of Government work, Government shall be first owner
 in the case of a work under any public undertaking, such public undertaking shall be first owner
• Assignment of Copyright (Section 18)
○ The owner of the copyright of a work has the right to assign his copyright to any other person.
○ assignee becomes entitled to all the rights related to the copyright to the assigned work.
○ mere grant of the right to publish and to sell the copyrighted work amounts to publishing right only, not copyright.
○ The assignor shall also be treated as the owner of copyright with respect to unassigned rights.
○ The legal representatives of the assignee shall be entitled to the benefits of assignment if the assignee dies before the work comes into existence.
• Mode of assignment: (section19)
○ the assignment is in writing and is signed by the assignor, then the agreement will be valid;
○ The rights assigned along with duration and territorial extent must be established;
○ The amount of royalty or any other consideration payable must be specified;
○ if the assignee fails to exercise the rights assigned to him within one year of the date of assignment, then such assignment shall be deemed to have lapsed unless there is some provision t
○ If the period of assignment is not mentioned, then it shall be for 5 years;
○ Similarly, if the territorial extent is not mentioned, it shall be presumed to extend within India;
• Disputes with Respect to Assignment of Copyright (Section 19a)
○ the Appellate Board may revoke such assignment if the assignee fails to make sufficient exercise of the rights assigned to him, when received complaint from the assignor and after holding an enquiry
○ Such failure is not attributable to assignor.
○ May order for the recovery of any royalty payable.
• Assignment by Operation of Law (Section 20)
○ When the owner of copyright dies the copyright will pass on to his representative provided no will has been executed.
• 3 authorities or procedure for registration of Copyright:-
○ Copy Right Office
 Copyright office have main function to make registration of copy right
 Office is established generally in big cities by central government
 In copy right office there is one registered and two deputy registers
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 In copy right office there is one registered and two deputy registers
 any author of literally work can apply for registration of copy right in copyright office
 Procedure
□ Performa application is filled for registration
□ If there are more author of same literacy work then they can file common application.
□ Affidavit is enclosed that his work is original
□ If registrar wants any additional information then application have to provide it
□ Registrar issue certificate to applicant upon satisfaction
□ Certificate consists name of the office, reference number, name of copyright holder, title of the literacy work, date of registration and signature of registrar and office seal.
□ This certificate is proof of registration of copyright.
□ It is registered for life period of the author and 25 years or 50 years period.
○ Copy Right Board:-
 In copyright board there is one chairman and Max 14 other members
 minimum five members should be available for hearing of the dispute
 These members are having experience in the matter of copyright, chairperson is generally retired judge of high court
 Then copyright board settled the disputes, therefore it is called Dispute Settlement Body.
 copyright board have power like a civil court.
 copyright board have following power which are like a civil court.
 Powers
□ To summon parties and witnesses to examine them on oath.
□ To direct the parties to file relevant documents.
□ To entertain affidavit filed by parties.
□ To conduct examination of witnesses.
□ To call the necessary records from any public office.
□ To adjourn the hearing any member of times on reasonable grounds.
□ To deliver the judgment or the decisions.
○ Copy Right Society:-
 Copyright society there are seven members who are generally publishers and authors of literally work
 society gives license to sell the goods even out of state.
• Right of Copyright Holder:-
○ Right to apply for registration
 when there is original work done by author then he has right to apply for registration before then copyright registration.
 After completing requires formalities registrar issue certificate of registration of copyright.
○ Right to apply for license:-
 There is of copyright holder to apply for license before copyright board and copyright society
 license is issued to sale the books or literacy work in particular area or region or the state.
○ Right to transfer:-
 There is right of copyright holder to transfer his right to any other party or parties by execution of document.
 All the terms or conditions and the consideration to be paid by transfer is mentioned into the requirement.
○ Right of revision:-
 There is right of copyright of holder to make revision in his literacy work revision include addition, alteration and deletion and literacy work.
○ Right of Publication:-
 Copy right holder can have right to make publication of literacy work by making investment and sale the literature.
○ Right of Fix Price:-
 There is right of author fix price or consideration of his literacy work he can also make revision in the price or consideration.
○ Right of Advertisement:-
 Author have right to give advertisement to sale his literacy work in the country or out of the country.
Right of percentage of profit:-
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○ Right of percentage of profit:-
 There is right of the author to keep his percentage of the profit when there is sale of books, there can be represent of the literacy work. Any number of times.
○ Right of renewal:-
 Copyright is given for 50 years period or during life period of the author and 35 years after that, after expire of period his heirs apply for renewal.
○ Right of remedy:-
 When anybody violate copy right then author have right to take remedy order will civil and criminal law.
• Infringement of copyrights
○ Infringement means to violate the copyright. Infringement means breach or violation.
○ when anybody violate copyright of the author without consent of the author, then copyright holder have remedies under civil law or criminal law and also administrative remedies.
○ Such remedy can be claimed by copyright holders and his death by his legal representatives.
○ Copyright law provides exclusive legal rights to an author to get all kinds of benefits on his creation.
○ Section 51 of chapter XI of the Indian copyright act talks about
 using any copyrighted work without the permission of a copyright owner is an infringement of copyright law.
 Any person who does the infringement of copyright is solely held responsible for his misconduct
○ Instances which are considered as Infringement
 Performing publicly without any consent of the owner
 Using copyrighted work for any kind of business which brings financial benefit
 Distributing infringing copies for the purpose of trade
 Reproduction of substantial part of copyrighted work in any material form
 Circulating among the unauthorized persons
 Adoption or translation of copyright work without any permission
 Resale or renting of copyrighted material to others
 Public exhibition of infringing copies by way of trade
 Importation of infringing copies into India
○ Instances which are considered as Infringement/ exceptions (section 52)
 Fair dealing with any work, not being a computer programme, for the purposes of private or personal use
 The making of copies or adaptation of a computer programme by the lawful possessor of a copy of such computer programme, from such copy
□ in order to utilise the computer programme for the purpose for which it was supplied; or
□ to make back-up copies purely as temporary protection against loss, or damage, only to utilise the computer programme for the purpose for which it was supplied;
 By a cinematographic film or broadcast or by any means of photographs.
 Reproduction for the purpose of the judicial proceeding
 reproduction of the musical, literary, dramatic or artistic work in any work prepared by the secretariat of the legislature.
 The reproduction of any literary, musical work or dramatic in a certified copy made .
 The recitation or reading in public
 any reasonable extract from the published literary or dramatic work.
 The publication in the collection intended for the sake of educational institutions.
 The making of sound if made with or by the license or consent of the owner of the right in the work.
 Reproduction by teacher or pupil in the course of instruction or exams
 Performance to the course of activities in educational institutions
 Performance of literary works by an amateur club or society
 Reproduction of an unpublished work for research and private study
 Reproduction or publication of any matter published in Official Gazette
 Reproduction or publication of any matter published in Govt. Reports
 Reproduction or publication of any matter published in other bodies
 Reproduction of un-prohibited judgment, or order of Court, Tribunal
○ Remedies
 Civil Remedies
□ Remedy of Injunction:-
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□ Remedy of Injunction:-
 copyright holder can take remedy of injunction from civil court and prevent the party from publication of literacy work by violating copyright.
□ Right of seizure of Material:-
 There as legal of copyright holder to make remedy of seizure of objectionable material, such as machinery printing material and printed books.
□ Right to prevent sale:-
 There is right of copyright holder to obtain order from the court to prevent ale of the books which have been published by violating copyright.
□ Remedy to claim damages:-
 There is right of copyright holder to file a case to claim the damages, such damages are dependent on number of copies of books or any literature sold by violating copyright.
 Criminal remedies
□ Cheating:-
 When anybody sale the books or material in his name even through written by other author then it is crime of cheating or fraud
 it is crime U/s. 420 of IPC having 3 years of Imprisonment fine or both.
□ Defamation:-
 When any body copy literacy work and print or sale it in his name then it is defamation of original author,
 he can file the case under criminal Law U/s. 499 of IPC there is 2 years of imprisonment and fine or both.
 Administrative Remedy:-
□ Cancellation of Registration:-
 Copyright holder can apply to register that there is infringement of his copyright and registration of other party to be cancelled.
 If registerer is satisfied then he can cancel registration by giving show cause notice to the party who violated copyright.
□ Cancellation of Licence:-
 When licence have been obtained from copyright board to sale the book or any literature in which copyright is violated, then copyright board can cancel the licence to sale the
books.
• The University of oxford vs. Rameshwari photocopy services
○ The infamous DU photocopy case was a landmark copyright violation case in India.
○ In University of Delhi, wherein photocopy shops copy reading material from prescribed textbooks and sell it to students at subsidized rates. To contest the same, the chancellors, masters, and scholars
of the University of Oxford filed a case against Rameshwari Photocopy Services, alleging them of copyright infringement under Section 2(o) of the Copyright Act.
○ OUTCOME: The publishers had to withdraw their lawsuits against the defendants, as it was observed that the shop had a legal license to operate within the North Campus premises of DU.
○ LESSON: Photocopying with the objective of spreading knowledge and fostering education doesn’t constitute copyright infringement
• Amarnath Sehgal vs. Union of Indian & others
○ the court provided a remedy for infringement of his special rights or moral rights. It was held by the court, in this case, that copyright is a bundle of rights, which the author can exploit, independently
for economic benefit in exercising these rights. A copyright owner may exploit his work himself or license others to exploit any one or more of the rights for a consideration, which may be in the form
of royalty or a lump sum Payment, apart from these economic rights the author of a work, has certain moral rights as well.
Unit4
Trademarks
• Trade mark is defined as description of the product and it shows, name, number, quality and weight of any product.
• A Trademark is a legally protected abstract, word, symbol, colour, mark, slogan or a combination of these associated with a company or a particular product that differentiates it from the others available in
the market.
• Its effect is the creation of a right with respect to the goodwill widespread in the market.
• As per The Trademark Act, 1999, Section 2 (1)(zb)
○ “trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of
goods, their packaging and combination of colours or any such combinations
• forms an essential part of the business for the purpose of marketing, expanding and maintaining the reputation.
• A consumer is also benefited from it since he has a clear identification of a particular brand, product, company or service.
• According to the Act, a valid registration of a trademark shall provide the registered proprietor exclusive rights to use the Trademark and to obtain relief if there happens an infringement of the trademark.
• There is difference between trade mark and property mark.
○ Trade mark is only relating to description of product or the goods.
Property marks shows name or surname of the owner or manufacture of the goods.
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○ Property marks shows name or surname of the owner or manufacture of the goods.
• Ex.:- Camel product is the trade mark. But Bajaj product is mark relating to ownership called as property mark. Bajaj is the surname of manufacture and therefore it is property mark.
• Trade mark is also different from of service mark.
○ Trade mark is relating to product or the goods. Which gives descriptions relating to quality, and nature of the goods
○ Service mark is not relating to any product, but it is relating to service provide by any company.
○ Any person can understand the service provided by company by examining service mark, It is also registered according to the procedure.
○ Ex:-Service mark of bank LIC Authorities, Telephone id different
• Any trade mark or service mark or property mark have to be registered. No protection can be given unless trade mark is registered.
• Procedure of registration of Trade Mark:-
○ Performance Application:-
 There is central government office for registration of trade mark. Generally in big lines
 Performa application is availed from the office of registrar
 persons who want to registrar trade mark have to fill up the application and submit it in the office registered having jurisdiction.
○ Affidavit:-
 Applicant have to file an affidavit that his trade mark or service mark or property mark is having distinctiveness and there is no limitation of any other registered trade mark.
○ Registration Fees:-
 Application have to pay registration fee as directed by registrar
○ Additional information:-
 If registrar wants any additional information then it has to be provided by applicant otherwise registrar can reject the applicant.
○ Notification
 Registrar may publish notification about registration of trade mark and direct interested party to lease objection within one month period in writing before the registrar.
○ Hearing:-
 If any objection is filled then registrar make hearing of both the sides.
 If objection are reasonable then application can be rejected, if objection are unreasonable then it is dismissed.
○ Registration certificate:-
 Registrar issue certificate of registration which include name of the office, reference number, name of the applicant, description particulars and trade mark and signature of registrar
 this certificate is the proof registration of trade mark.
• Section 27 provides a common law remedy of a trademark user to take action against any person for passing off the goods or services as the goods or services of another person. In a landmark case
• Marks
○ Mark' Is defined under Section 2(I)(j) of the Trade and Merchandise Marks Act, 1958 as follows.
○ According to it, 'Mark' includes a device, brand, heading, label, ticket, name, signature, word, letter or numerical or any combination thereof.
○ Service mark
 The term 'Service Marks' is not defined by the Trade and Merchandise Act, 1958 and
 The Trade Mark Act, 1999, defines the term 'service'
 service' means, service of the any description which is made available to potential users and Includes the provisions of services in connection with business of any industrial or commercial
matters such as banking, communication, education, chit funds, real estate, transport, storage, material treatment, processing, Supply of electrical or; other energy, boarding, lodging,
entertainment, amusement, construction, repair, conveying of news or information and advertising.
 Such marks or names used by business rendering various kinds of services.
 It can be protected by an action for infringement if it is registered under the Act.
 The Trade Marks Act, 1999 provides provisions for registration of service marks
○ Collective mark
 The term 'Collective Mark' is defined under trade Marks Act, 1999.
 According to it, Collective Marks means, a trade mark distinguishing the goods or services of the members of an association of persons, not being a partnership firm, which IS proprietor of the
mark, from those of others.
 Thus, the collective mark may be described as the property which belongs to an association of persons.
 Generally, it is likely to deceive or create confusion on the part of the public.
 Hence, the law provides no provision for registration to protect the interest of the consumers.
 EXCEPTION :Though the collective mark belongs to an association of persons, the partnership firm Is exempted from it. It means, where the. partnership firm is a proprietor of a mark, it can
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 EXCEPTION :Though the collective mark belongs to an association of persons, the partnership firm Is exempted from it. It means, where the. partnership firm is a proprietor of a mark, it can
registered under the law as in the case of an ordinary trade mark.
○ 'Well-known Trade Mark'
 is defined under Act, 1999. Section 2(1)
 According to it, 'Well-Known Trade Mark', in relation to any goods or services
 means a mark (TATA of Tata sons Ltd) which the substantial segment of the public uses for particular goods or services, is used by another person for other goods or services (like TATA
diamonds) and is likely to indicate a connection between TATA diamonds and TATA sons Ltd.
 Why some trademarks recognized as well know marks
□ To prevent unfair use of a marks reputation
□ To prevent ham to the reputation of a mark
□ To prevent consumer confusion
• A trademark is infringed in the following circumstances (section 29)
○ When a person who is not the registered and proprietor uses a mark, which is identical or deceptively similar to a registered mark.
○ When the trademark being used is likely to cause confusion in public.
○ When a mark being used is identical or similar to the registered mark having a reputation in India.
○ When the mark being used takes unfair advantage of a registered mark and is detrimental to the distinctive character of the registered mark.
• Cases on Trademark Infringement
○ The onus to prove infringement on Plaintiff
 The Supreme Court in the case of Kaviraj Pandit Durga Dutt case held that in an action for infringement the onus would be on the Plaintiff to establish that the trademark used by the defendant
in the course of trade in the goods in respect of which his mark is registered, is deceptively similar.
○ Test of deception in trademark infringement
 The Bombay High Court in the case of Thomas Bear And Sons (India) v. Prayag Narain held that in judging the probability of deception, the test is not whether the ignorant or the thoughtless, or
the incautious purchaser is likely to be misled, but we have to consider the average purchaser buying with ordinary caution.
○ Passing off cases;
 Lord Oliver in the case of Reckitt & Colman Products Ltd. v. Borden Inc. enumerated three elements for a successful passing off action:
□ (1) Goodwill owned by a trader, (2) Misrepresentation and (3) Damage to goodwill.
□ Thus, the passing action is essentially an action in deceit where the common law rule is that no person is entitled to carry on his or her business on the pretext that the said business is of
that of another.
• Passing off
○ ‘Passing off’ means passing off one’s goods or business as the goods or business of another.
○ The law of passing off prevents commercial dishonestly representing one’s goods as the goods of somebody else.
○ Generally there is sale of inferior product in the name of popular product in the market, when any product is sold in name of popular product then it effect reputation of original product and also
cause loss to the manufacture therefore passing off is a tort as well as crime in IPC
○ it is crime of fraud or cheating.
○ It includes using the name or label or design of other goods. It's part of false misrepresentation
○ passing off is passing own goods in name of other goods in market.
○ Passing off injures the right of property in the plaintiff, that right being his right to the goodwill of his business.
○ Passing off action is available to a trader for the protection of his proprietary right in his goodwill or business against that form of unfair competition
○ Rights relating to passing off are established gradually with use
○ Main elements
 goodwill
□ you must prove that you own a 'reputation' in the mark that the public associates with your specific product or service
 misrepresentation-
□ you must show that the trader has caused confusion and deceived or misled the customers into believing that their goods and services are actually yours
 damage -
□ you must prove that the misrepresentation damaged or is likely to damage your goodwill, or cause actual or foreseeable financial or reputational loss
○ Rupa and Co., V/s. Dawn Mills Co. Ltd.,
 Plaintiff was manufacturing and selling under garments in the name of Don product defendant company started sale of under garments by giving the name which has resemblance and
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 Plaintiff was manufacturing and selling under garments in the name of Don product defendant company started sale of under garments by giving the name which has resemblance and
defendant is liable for passing off and granted remedy of injunction.
○ Honda Motors Co. Ltd V Charanjit Singh
□ Plaintiff was using trademark "HONDA" in respect of automobiles and power equipment. Defendants started using the mark "HONDA" for its pressure cookers. Plaintiff bought an action against
the defendants for the passing of the business of the plaintiff. Held: It was held that the use of the mark "Honda" by the defendants couldn't be said to be an honest adoption. Its usage by the
defendant is likely to cause confusion in the minds of the public. The application of the plaintiff was allowed.
○ Remedies for passing off
○ apply for an injunction to prevent the business from using your trademark or goodwill
○ apply to have the infringing goods destroyed
○ sue for damages or seek account for lost profit
○ request an inquiry to establish loss
○ Passing off defences
○ the mark in question is not distinctive
○ the mark is generic
○ they have used carefully and honestly their own name
• Difference between Passing off and Infringement
○ Trademark Infringement and Passing Off are both related to the infraction (a violation or infringement of a law or agreement) of rights of the trademark
Trademark Infringement Passing off
Statutory remedy Common law remedy
Registration of trademark is essential Passing off registration is irrelevant
Encroachment, registration is essential Goodwill, misrepresentation, damage is essential
○ Protects exclusive rights of the registered owner Protects limited interests
Prosecution under criminal remedies is fairly easy Its relatively harder
A suit can be file under sec 134 of Trademark act 1999 Remedy can be sought under sec 20 of civil procedure code 1908
protects documented products and services, whereas Passing Off shields unregistered products and services
the burden of proof lies on the user
Design
• There is separate Act relating design called design Act 2000.
• Earlier there was design Act 1911 and this Act has been repealed and new design Act came into force in 2000.
• Design is external appearance of the goods
• articles or goods is also distinguish from other goods by it design, therefore the term design include shape, pattern, parking, mixing of colours labels and any ornamentation done by chemical, mechanical or
manual processes.
• if design is not registered then no protection is available to design holder
• Procedure of Registration of design:-
○ Performa Application:-
○ There is performa application available from office registrar of Trade Mark and design.
○ It has to be filled up and submitted for registration of design with required registration fees.
○ Documents:-
○ Applicant have to enclosed affidavit stating that it is new design.
○ There copies of design have to be enclosed in which one copy for record, one copy for notification and one copy for approval.
○ Notification:-
Registrar have to publish notification in the newspapers directing interested parties to raise objection if any against the design within one month period before the registrar.
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○ Registrar have to publish notification in the newspapers directing interested parties to raise objection if any against the design within one month period before the registrar.
○ Hearing:-
○ If there is any objection, filed in writing then registrar summon party raising objection and applicant and make hearing of both side.
○ If objection is reasonable then he can reject the registration of design and communicate to the applicant. If objection is baseless then it is dismissed.
○ Certificate of Registration:-
○ Registrar issue certificate of registration to be applicant which contain name of the office, reference number, name of design holder, name of product, description of design, date of registration,
signature of registrar and office seal, this certificate is prove of registration of design.
○ Cancellation of registration:-
○ There is power of registrar to cancel registration certificate by giving show cause notice if it is obtained by fraud or misrepresentation called as piracy.
• Right of design holder:-
○ right of design holder to register his design under design Act and also copyright Act.
○ There is right of design holder to apply for renewal for after 15 years because design is register for maximum 15 years at time.
○ When there are more of parties manufacturing of goods then they get registration of common design.
○ If there are more products then manufacture can use common design.
○ Design holder have right to bring alteration or improvement in the design.
○ There is right to surrender design and register other design.
○ There is right of design holder to assign his design to other party by making agreement.
Unit5
Patent
• Patent means new invention or discovery
• An invention considered as new if, on the date of filing the application, any such invention is not known to the public in any form, i.e. oral, writing, or any other form.
• Anything shall not be termed as inventive if such a thing is already known to the public domain.
• The patent has a limited term of 20 years, which is counted from the date of filing of the patent application.
• Under the Indian patent law, a patent can be obtained only for an invention which is new and useful.
• The invention must relate to the machine, article or substance produced by a manufacturer, or the process of manufacturing of an article.
• A patent may also be obtained for innovation of an article or of a process of manufacturing.
• person who makes new invention and registered is patent is called patentee.
• There is separate Act to protect patent right is called patent Act 1970.
• A patent is an exclusive right granted by the Government to the inventor to exclude others to use, make and sell an invention in a specific period of time.
• A patent is also available for improvement in their previous Invention.
• The main motto is to encourage inventors to contribute more in their field by awarding them exclusive rights for their inventions.
• The word “patent” is referred from a Latin term “patere” which means “to lay open,” i.e. to make available for public inspection.
• It is necessary to registered to patent otherwise there is no protection to patent right
• Kinds of patents:-
○ Process patent:-
○ If means procedure followed at the time of invention
○ When an inventor invents or produces a substance which provides a method or a process Of manufacture of a substance may apply for grant of a patent.
○ This type of patent can be granted to the process invented by the inventor but not to the product.
○ while granting patent the entire scientific process is to be looked into as to its method or the process of manufacture of the substance in respect of which the process is Invented.
○ It is to be noted that no patent can be granted for an idea or principle alone.
○ it includes use of material chemical substance, percentage of mixing , temperature
○ Process is also registered as patent called as process patent.
○ Product patent:-
Product is the ultimate result
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○ Product is the ultimate result
○ In this type of patent the inventor may be granted patent for the product or an article invented by him but not for the process of manufacture of a substance
○ any new product is invention nobody can animate the product, otherwise it is violation of patent right, entire procedure followed at the time of invention is called specification.
○ Complete specification have to be mentioned on the liable of the product, unless it is not necessary under the law
○ in case of machines complete specification is necessary on the label of the product.
• Advantages of patents
○ Monetary reward for technological innovations.
○ To prevent others from copying the patent and he is entitled to institute any proceedings for infringement of the patent granted to him.
○ The patentee may accept royalties.
○ This enables the public to get substitute and improved for the patented product.
○ The products of the invention are made available to the public at reasonable price.
• Procedure of Registration of Patent:-
○ Registration :-
○ There is patent registration office generally in metropolitan city and
○ it has been given Jurisdiction head office of the patent is in Calcutta, therefore patent registration office are in Mumbai, Calcutta, Chennai and Delhi,
○ there are number of authorities appointed in patent registration office and they are controllers of patent, joint controller of patent, deputy controller and assistant controller, they have been
delegated powers to carry on registration of the patent.
○ Performa Application:-
○ In office of registrar, proforma application is available from the office of registrar, party who wants to register patent have to fill up the application and file in the office of registrar for
registration of patent with required registration fees.
○ Documents:-
○ Applicant have to enclose two documents with the applications and these are project report and the affidavit project report is relating to all the experiments done at the time of new invention
○ ultimate product invented, applicant have to file affidavit that his invention is first and new invention and give undertaking that it has been not copied.
○ Panel of Examiners:-
○ Project report is referred by registrar panel of examiner who are scientific advisor
○ they do cross checking of the experiment and submit their report to registrar
○ panel of examiner mention in the report about usefulness of the product and whether it is recommended or not
○ if it is not recommended then registrar can refuse the register the product.
○ Notification:-
○ Registrar publish notification before registration of patent.
○ In notification he directs interested party to raise any objections which they have against registration of patent within period of one month.
○ Hearing:-
○ If anybody file objection against registration then such parties called as opposition, in such case registrar summon applicant and opposition party and make hearing of both sides party have to
prove that he is first and true it is dismisses. If objection is reasonable then registrar can refuse to register the patent.
○ Registration Certificate:-
○ Registrar followed above procedure and if satisfied. Then issue a certificate of registration of patent, it contains name of registration office, reference number of certificate name of the
patentee, description of patent and there is signature of registrar and office seal.
• rights of patentee
○ Right to exploit patent:
○ A patentee has the exclusive right to make use, exercise, sell or distribute the patented article or substance in India,
○ This right can be exercised either by the patentee himself or by his agent or licensees.
○ The patentee’s rights are exercisable only during the term of the patent.
○ Right to grant license:
○ The patentee has the discretion to transfer rights or grant licenses or enter into some other arrangement for a consideration.
○ A license or an assignment must be in writing and registered with the Controller of Patents, for it to be legitimate and valid.
○ The document assigning a patent is not admitted as evidence of title of any person to a patent unless registered and this is applicable to assignee not to the assignor.
Right to Surrender:
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○ Right to Surrender:
○ A patentee has the right to surrender his patent,
○ but before accepting the offer of surrender, a notice of surrender is given to persons whose name is entered in the registrar
○ The application for surrender is also published in the Official Gazette to enable interested persons to oppose.
○ Right to sue for infringement:
○ The patentee has a right to institute proceedings for infringement of the patent in a District Court having jurisdiction to try the suit.
○ Right to Assign
○ There is right of patentee to assign his patent right to any other party by making agreement and taking consideration.
○ Right to secrecy
○ There is right to maintain so way and not to disclose procedure unless it is necessary.
○ Right to alter
○ There is right patentee to make addition or alteration in his patent.
○ Right to Advertise
○ There is right of patentee to advertisement to his product to increase the trading.
• Obligations of patentee
○ Government use of patents:
 A patented invention may be used or even acquired by the Government, for its use only;
 Government may also restrict or prohibit the usage of the patent under specific circumstances. Like covid
 can be made without the consent of the patentee or payment of any royalties.
 Apart from this, the Government may also sell the article manufactured by patented process on royalties or may also require a patent on paying suitable compensation.
○ Compulsory licenses:
 If the patent is not worked satisfactorily to meet the reasonable requirements of the public, at a reasonable price, the Controller may grant compulsory licenses to any applicant to work the
patent.
 Ex: Govt will allow to manufacture generic drug if required
 Compulsory licenses may also be obtained in respect of related patents where one patent cannot be worked without using the related patent.
○ Revocation of patent:
 A patent may be revoked in cases where there has been no work or unsatisfactory result to the demand of the public in respect of the patented invention.
○ Invention for defence purposes:
 Such patents may be subject to certain secrecy provisions, i.e. publication of the Invention may be restricted or prohibited by directions of Controller.
 the Central Government might use it on payment of royalties to the applicant.
○ Restored Patents:
 Once lapsed, a patent may be restored, provided that few limitations are imposed on the right of the patentee.
 When the infringement was made between the period of the date of infringement and the date of the advertisement of the application for reinstatement, the patent has no authority to take
action for infringement.
• Inventions
○ According to Section 2(j) of the Indian Patents Act, 1970 an invention means "a new product or process involving an inventive step and capable of industrial application.” such invention protected
under the patent law refers to patented.
○ Tests to check on invention
 Patentable subject matter:
□ As long as the invention does not fall under any provision of Sections 3 or 4, it means it has patentable subject matter
 Novelty
□ Firstly, the invention must be novel, meaning thereby that the Invention must not be in existence.
□ Not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of a patent
□ the novelty requirement basically states that an invention should never have been published in the public domain. It must be new with no same or similar prior arts.
 Non obvious
□ Secondly, the invention must be non-obvious, i.e. the Invention must be a significant improvement to the previous one; mere change in technology will not give the right of the patent to
the inventor.
□ It must be inventive and not obvious to a person skilled in the same field
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□ It must be inventive and not obvious to a person skilled in the same field
 Bonafede manner
□ Thirdly, the invention must be useful in a Bonafede manner, meaning thereby that the Invention must not be solely used in any illegal work and is useful to the world in a Bonafede manner
 Capable of Industrial Application
□ The invention is capable of being made or used in an industry
□ the invention cannot exist in the abstract.
□ It must be capable of being applied in any industry, which means that the invention must have practical utility in order to be patentable.
○ Following are not inventions or patentable (Sections 3 and 4 of the Patents Act 1970) (Important)
 an invention which is frivolous or anything obviously contrary to well established natural laws;
 an invention which is contrary to public order or morality or
 An invention which causes serious prejudice to human, animal or plant life, health or the environment;
 the mere discovery of a scientific principle or the formulation of an abstract theory;
 the discovery of a living thing or a non-living substance occurring in nature;
 the mere discovery of a new form of a known substance which does not enhance the known efficacy of that substance,
 a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components
 the mere arrangement, rearrangement or duplication of known devices which function independently of one another in a known way;
 a method of agriculture or horticulture;
 any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatments of human beings, or any process for a similar treatment of animals to render them free
of disease or to increase their economic value or that of their products;
 plants and animals in whole or any part thereof other than microorganisms, including seeds, varieties and species and essentially biological processes for production or propagation of plants
and animals;
 a mathematical or business method, a computer programme
  a literary, dramatic, musical or artistic work or any other aesthetic creation, including cinematographic works and television productions;
 a mere scheme, rule or method of performing a mental act or playing a game;
 a presentation of information;
 the topography of integrated circuits;
 an invention which, in effect, is traditional knowledge or aggregation or duplication of known properties of a traditionally known component or components; and
 Inventions relating to atomic energy.
 it is discovery and not invention and patent cannot be registered.
 Narcotics such as brown sugar, ganja, heroine, cannot be registered as patent.
 Arms and weapons are not patentable.
 Ammonization is not patentable
• Specifications:
○ According to Section 9 of the Indian Patent Act 1970,
○ Contents of a Specification
 A specification should be drafted and submitted in Form 2 to the Indian Patent Office.
 A provisional specification, as opposed to the complete specification, will not have a claim section
 Contents
□ Title
 the complete specification should begin with the title of the invention
□ The preamble of the invention;
 The preamble for a provisional specification should state “The following specification describes the invention”.
 Further, the preamble of a complete specification should state “The following specification particularly describes the invention and the manner in which it is to be performed.”
□ Technical field;
 what field the invention belongs to and particularly states as to the subject matter of the invention.
□ Background;
 the objective of this section is to distinguish the invention at hand from that of what is already being practised in the industry.
□ Objects;
sem4 Page 22
□ Objects;
 the objective of this section is to bring about the necessity of the invention.
□ Brief description of the drawings;
 this section will refer to all the figures in “Drawing” part of the specification.
□ Examples if any
□ Specific embodiments if any
□ Detailed description;
 the objective of this section is to provide sufficient details of the invention.
□ Claims (for a complete specification);
 Claims are the sum and substance of the patent specification.
□ Abstract.
 An abstract essentially is a summary of the matter contained in the specification.
○ Types of Specification
 Provisional Specification
 A provisional patent specification is a preliminary application before filing a usual patent.
 A provisional specification is a document, which broadly, though not completely, discloses an inventive concept.
 The provisional specification is filed mainly to secure a “priority date”
 when the inventor is in need of more time to work out the details of his invention and to perfect the same.
 Therefore, the provisional specification seldom discloses all relevant details of the invention in a sufficiently clear and complete manner.
 Drawings, which relate to the invention, may also be submitted with the provisional specification and such drawings will be deemed as part of the specification.
 Where an application for a patent is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if
the complete specification is not so filed, the application shall be deemed to be abandoned
 Complete Specification
 A complete specification is a document, which discloses all the details of an invention in a sufficiently clear and complete manner, as opposed to disclosing broad inventive concept in the
provisional specification,
 to enable a person having ordinary skill in the art to practice the invention.
 The complete specification is further different from that of the provisional specification because it must conclude with a claim or a set of claims.
 As a fundamental aspect of specification drafting, one should understand that each claim in the complete specification defines an invention.
 Therefore, each claim has a respective priority date associated with it.
 Differences between a provisional and a complete application
Provisional Complete
may be filed even in the case where the idea of the invention is not completely mature remains no scope for further development as it requires the filing of detailed claims

relatively inexpensive (less time, less fees, less content) Costly (more content, more time, details about the claims and abstract.)
Not mandatory mandatory in order to secure a patent
Broadcasting organisation or performers

• Sections 37 and 38 of the Copyright Act, 1957 deal with the rights of Broadcasting Organization and of Performers,
• Section 2(dd) of the copyright Act, 1957 defines the term 'Broadcast'.
• According to it, broadcast means, communication to the public, -
○ by any means of Wireless diffusion, whether in any one or more of the forms of signs, sounds or visual images; or
○ by Wire; and includes a re-broadcast.
• BROADCASTING, REPRODUCTION RIGHTS :
○ Sub-section 1 of Section 37 of the Act gives a special right known as "Broadcasting Reproduction Right" to every broadcasting organization in respect of its broadcasts.
○ This right will subsist for the period of 25 years from the year of broadcast.
During that period, no one can infringe the right of the organization.
sem4 Page 23
○ During that period, no one can infringe the right of the organization.
○ If any person commits any of the following acts without license of the owner of the right, he will be deemed to have infringed the rights of broadcast organization.
 rebroadcasts the broadcast;
 causes the broadcast to be heard or seen by the public on payment of any charges',
 makes any sound recording or visual recording of the broadcast; or
 makes any reproduction of such sound recording or visual recording where such initial recording was done without license; o
 sells or hires to the public or offers for sale or hire, any such sound recording or visual recording referred to in Clauses (c) or (d)
• RIGHTS OF THE PERFORMERS
○ Section 38 of the Act deals with the rights of the performers.
○ Section 2(q) of the Act defines the term 'Performance'.
○ According to it, performer includes an actor, singer, musician, dancer, acrobat, Juggler, conjurer, snake- charmer, a person delivering a lecture or any other person who makes a performance.
○ These rights are somewhat analogous to broadcast reproduction rights.
○ According to this section, the performer's right will subsist for fifty years from the year of performance.
○ The performer has the exclusive right to do the following :
 (a) to make sound recording or visual recording of the performance,
 (b) to reproduce a sound recording or visual recording of the performance,
 (c) to broadcast the performance,
 d) to communicate the performance to the public otherwise then by broadcast.
○ According to it, performance in relation to performer's right means any visual or acoustic presentation made by one or more performers.
○ When any more drama T.V serial is performed on basis of any story book then there is right of performers or the producer.
Compulsory licensing
• A license is the transfer of an interest in copyright.
• In a license, the right to use a copyright is given to another party with some restrictions on such usage.
• A licensee can use the copyrighted work without any claim of infringement
• Essentials of License
○ Identification of the work and rights licensed
○ Duration of the license
○ Amount of royalty payable
○ Conditions relating to revision, extension and/or termination of the license.
• The license should be in writing and should be duly signed by the owner of the copyright or his duly authorized agent.
• Types
○ Voluntary License:
 Voluntary license is covered under Section 30 of the Indian Copyright Act,
 The owner of the copyright in any existing work or the prospective owner of the copyright in any future work may grant any interest in the right by license in writing signed by him or by a duly
authorized agent.
 Therefore, the owner of the copyright of an existing work or a prospective owner of future copyright can grant an interest in the right by way of license, in a case of the copyright of future work
the license will come in force only when the work comes into existence.
○ Compulsory License UNDER Copyrights:
 A compulsory license is covered under Section 31 of the Indian Copyright Act.
 It is a term used for the statutory license which gives an exclusive right to do an act without the prior permission of the owner of the copyright.
 Section 31 provides for compulsory licensing of copyrighted work which is withheld from the public.
 This compulsory licensing will be granted, if a copyright owner of any Indian work has published or performed in public has:
  Refused republication of work  Refused to allow communication of work to the public by broadcast or sound recording  Refused to allow the performance of work in public and in
case the work is not made public
○ Compulsory Licensing under Patents:
 compulsory licenses are authorizations given to a third-party by the Controller General to make, use or sell a particular product or use a particular process which has been patented, without the
need of the permission of the patent owner.
 This concept is recognised at both national as well as international levels, with an express mention in both (Indian) Patent Act, 1970 and TRIPS Agreement.
sem4 Page 24
 This concept is recognised at both national as well as international levels, with an express mention in both (Indian) Patent Act, 1970 and TRIPS Agreement.
 any person, regardless of whether he is the holder of the license of that Patent, can make a request to the Controller for grant of a compulsory license on expiry of three years, when any of the
following conditions is fulfilled –
 the reasonable requirements of the public with respect to the patented invention have not been satisfied
 the patented invention is not available to the public at a reasonably affordable price
 the patented invention is not worked in the territory of India.
○ Even after a compulsory license is granted to a third party, the patent owner still has rights over the patent, including a right to be paid for copies of the products made under the compulsory licence.
○ However compulsory licenses may also be granted, when
 - For exports, under exceptional circumstances.
 In the case of the national emergency, extreme urgency of public non-commercial use by notification of the Central Government
 To a country which has insufficient or no manufacturing power in the pharmaceutical sector to address public health.
• Case
○ Cases pertaining to grant of compulsory license India's first-ever compulsory license was granted by the Patent Office on March 9, 2012, to Natco Pharma for the generic production of Bayer
Corporation's Nexavar, a life-saving medicine used for treating Liver and Kidney Cancer. Bayers sold this drug at exorbitant rates, with one month's worth of dosage costing around Rs 2.8 Lakh. Natco
Pharma offered to sell it around for Rs 9000, making it affordable for people belonging to every stratum. All the 3 conditions of section 84 were fulfilled and the decision was taken for the benefit of
the general public. This medicine is used for treating Liver and Kidney Cancer, and one month’s worth of dosage costs around Rs 2.8 Lakh. Natco Pharma offered to sell it around for Rd 9000 making
this potentially lifesaving drug easily accessible to all parts of the society and not just the rich people. The Government took this decision for the general public benefit. However, it was heavily
criticized by the Pharmaceutical Companies as they felt the license should not have been given. However, Natco Pharma is paying the royalties to Bayer at a rate of 6% of all sales on a quarterly basis
in accordance with the guidelines set by the United Nations Development Programme (UNDP).
Exclusive marketing rights

• The term EMR means the exclusive marketing rights to sell or distribute the article or substance covered in a patent or patent application in the country.
• The purpose of EMRs is to ensure that the innovator can market free copies of his product.
• The term Exclusive Marketing Rights (EMRs) means the right to sell or distribute the article or substance covered in a patent or patent application in the country.
• EMRs will be granted when there is no system of product patent in a country.
• EMR's can be granted in respect of substances intended for use or capable of being used as medicine or drug.
• However, no EMR can be granted in respect of chemical substances which are ordinarily used as intermediates in the preparation or manufacture of any of the medicines or substances.
• It is only a temporary arrangement which will cease to have effect when the product patent regime is introduced.
• Section 24 of the Act stipulates that India has to receive applications for patents containing claims for drugs and agrochemical products with the condition that such applications can be taken up for
consideration of granting EMR if an application is made.
• An exclusive marketing contract agreement clearly lays out the obligations of each party involved with the agreement and the portion of the profits each party is entitled to.
• Additional areas to consider for the agreement include: Marketing campaigns.  Sales visibility.  Direct-to-salesperson support.  Coaching of salespersons.
• EMR holder to have the exclusive right by himself, his agents or licensees to sell or distribute in India from the date of approval granted by the Controller for a period of five years or till the date of grant or
rejection of the patent application, whichever is earlier.
• Benefits
○ Give right to applicant to distribute the product in their country for 5 years
○ Does justice to creator and public at same time
○ Quicker process compared to rigid terms of patent that need to be satisfied
○ It is also in adherence to the norms of the TRIPS agreement
sem4 Page 25

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Notes by Jaswanth Varma

Meaning and nature of the intellectual property

• Nature of Intellectual Property

TRIPS (Trade related aspects of Intellectual property rights)

Paris convention 1883

Berne Convention 1886 (It's for Copyrights)

Universal Copyright Convention (UCC)

Madrid Agreement 1891

Broadcasting organisation or performers

Exclusive marketing rights

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