NOIDA INTERNATIONAL UNIVERSITY

Assignment Project
Subject- Intellectual Property Rights
Code – LLM/CL/201

Submitted to:
Ms. Tejal Triksha
Faculty of Law
Noida International University
Submitted by:
Umakant Singh
LLM (1 year course) 2023

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 INDEX
S.no Date Topic Teacher’s Page No.
sign
1. UNIT I: Concept of Intellectual Property 3-10
2. UNIT II: Copy Right 11-15
3. UNIT III: Trademark and Passing Off 16-21
4. UNIT IV: Introduction to Patents Indian Patent 22-25
Act
5. UNIT V: Industrial Design 26-31

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 UNIT-I Concept of Intellectual Property

Concept of Intellectual Property

Intellectual Property Rights (IPRs) are the rights associated with intangible property owned by a
person/company and protected against use without consent. Thus, rights relating to ownership of
intellectual property are called Intellectual Property Rights. These rights aim to protect intellectual
property (creations of human intellect) by allowing the creators of trademarks, patents, or copyrighted
works to benefit from their creations. The Universal Declaration of Human Rights (UDHR) also refers
to intellectual property rights under Article 27 which states that “Everyone has the right to the
protection of the moral and material interests resulting from any scientific, literary or artistic
production of which he is the author.”
Thus, the purpose of IPR is to reward human intellect by providing exclusive rights to the creators
over their inventions, artistic, musical works, etc.
Meaning and nature of the intellectual property
Intellectual property (IP) is an intangible property that comes into existence through human intellect.
It refers to the creations of the mind or the products of human intellect such as inventions; designs;
literary and artistic works; symbols, names and images used in commerce.
The “Convention Establishing the World Intellectual Property Organization” states that “intellectual
property” shall include the rights relating to: —

• literary, artistic, and scientific works,

• performances of performing artists, phonograms, and broadcasts,
• inventions in all fields of human endeavour,
• scientific discoveries,
• industrial designs,
• trademarks, service marks, commercial names and designations,
• protection against unfair competition, and
• all other rights resulting from intellectual activity in the industrial, scientific, literary, or
artistic fields.
Other categories of intellectual property include geographical indications, rights in respect of know-
how or undisclosed information, and layout designs of integrated circuits.
Meaning of Intellectual Property Rights
The term “Intellectual Property Rights (IPR)” is used to refer to the bundle of rights conferred by law
on a creator/owner of intellectual property. These are the rights that a person has over the creations of
his mind. They seek to protect the interests of the creators by rewarding their mental labour and
allowing them to retain property rights over their creations. The creators and inventors are thus
allowed to benefit from their creations. IP rights are the legal rights governing the use of intellectual
property.

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Economic Importance of Intellectual Property

The subject of how Intellectual Property Rights influence the procedures of monetary improvement
and its development is mind-blowing and dependent on different factors. In principle, more grounded
frameworks for the insurance of licensed innovation could either improve or constrain monetary
development. Eventually, the proof is rising that more grounded and increasingly certain licensed
innovation law could well build the monetary development and cultivate advantageous change, along
these lines improving formative possibilities, on the off chance that they are organized in a way that
advances compelling and dynamic challenges.
As the worldwide assurance system reinforces because of Trade-Related Aspects of Intellectual
Property Rights, various inquiries emerge about the effect on possibilities of financial development.
For a ton of reasons, it is unimaginable to unhesitatingly say that the new system will raise monetary
development and improve the advancement process. There are two significant reasons. First to start
with, numerous factors influence the development of manners that can command the effect of TRIPS.
Second, the monetary hypothesis brings up that licensed innovation rights could have a lot of
consequences for development, some positive and some negative.
For any business to cut a specialty for itself, development has become the spine, particularly in the
serious condition today. Development clears the way for the making of licensed innovation and
utilizing this protected innovation gives your business a serious edge while additionally contributing
enormously to its prosperity. Protected innovation is an important asset for every single business,
particularly those contributing huge totals of cash towards innovative work so as to make one of a
kind items and administrations.
To receive the financial rewards of IPR, organizations ought to proactively execute licensed
innovation arrangements. This permits them to distinguish novel, one of a kind manifestations and
furthermore increment their income. It is likewise essential to characterize the licensed innovation
objectives plainly as it can assist organizations with accomplishing their business goals.

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Assessment of existing IPR
While talking about the business estimation of IPR, there is one thing that takes top-most need;
organizations need to assess their current IP in order to decide if it coordinates their business
destinations. At exactly that point would they be able to gather the financial advantages of licensed
innovation rights.
Assessment of the current IPR assists organizations with distinguishing new methods for utilizing
their scholarly properties through permitting open doors as referenced previously. Organizations can
likewise search for new roads and fields to extend the items on offer, which further prompts an
expansion in their business income. It can likewise enable a brand to invade more up to date
showcases; both locally and globally.
As business livelihoods develop, IP engineers can make techniques to ensure the special parts of their
manifestations. Advancements can be additionally cultivated by investigating more up to date
geologies. To accomplish this, organizations can go into authorizing bargains or potentially joint dares
to produce novel arrangements that can fulfill the necessities of their objective clients.
Protection of Intellectual Property Rights and Economic Growth
The impacts of IPRs security on financial development have been broken down by various
hypothetical writing, however, blended outcomes have been found. Much relies upon the suspicions
about the exercises of impression and advancement in the Developing Countries.
The results of defective IPRs security on specialized advancement and monetary development by
expecting that development happens just in the Northern Countries and impersonation just happens in
the Southern Countries. As per these creators, blemished IPRs security energizes impersonation
movement in the South. Then again, solid IPRs security could decrease the pace of impersonation.
Because of the expanded trouble to copy, the span of restraining infrastructure benefits of the northern
pioneer is longer, and this imposing business model position keeps going. The productivity of
southern imitators decreases and the country’s heap of data won’t be fortified. The beneficial outcome
is that specialized advancement is animated to the degree that the northern firm enhances to make due
under the weight of minimal effort southern imitators. The negative impact is because of the
vanishing of the lease of the trend-setter from the minute the assortment of an item is imitated.
However, expecting conjunction of impersonation and innovation in developing countries, show that
the financial impacts of IPRs security fluctuate as per the degree of monetary improvement.
Intellectual property Rights protection helps to reduce the risk of infringement of the invention. These
impacts rise and afterward decay with salary. Consequently, the connection between the less-built up
nations’ IPRs insurance and financial improvement is U-molded. This suggests a nation’s eagerness to
fortify its IPRs security first reductions and afterward increments with its pay.
Introduction to the leading international instruments concerning IPR
“In today’s economic environment, intangible assets are becoming increasingly important. These
assets, which are the result of human intellectual creative activity such as invention, design, know-
how, and artistic creation, are known as “intellectual property.” Some forms of Intellectual property
rights are specifically entitled to legal protection such as trademarks, designs, literary works, layout
designs and trade secrets. In the recent years we have seen an increase in the volume of trade of good
and services relating to intellectual property.

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Therefore the protection of intellectual property necessary otherwise it will lead to distort free trade.
The protection regarding intellectual property has been always a narrow in most of the developing
countries. Some developed countries also have problematic intellectual property regimes that, for
example, openly discriminate against foreign nations, provide excessive protection, or otherwise have
regimes so different from those employed by the rest of the world that its administration is
discriminatory. This trade distorts were needed to be addressed and for the purpose of same the WTO
decided to establish framework for the protection of intellectual property. There were number of
treaties formed as a common legal framework for the protection of intellectual property right. In this
article the following three of the major frameworks are discussed-
1. Berne Convention for the protection for Artistic and Literary works.
2. The Paris Convention for the Protection of Industrial Property
3. TRIPS ( Agreement on the trade related aspects of intellectual property rights)
The Berne Convention
Berne Convention, 1886
States began to become more interested in the potential for international cooperation on intellectual
property during the nineteenth century because of increased literacy piracy. Literary pirates
misrepresent someone else’s ideas as their own. This desire of such cooperation initially showed itself
through bilateral agreements. Most country copyright laws were only a few decades old in 1886. The
only protection offered was that provided by monopolies, or privileges granted for the publication of
specific works.
Eight countries ratified the Berne Convention for the first time in 1886, namely- Belgium, France,
Germany, Italy, Spain, Switzerland, Tunisia, and the United Kingdom. India has been a member of
the Berne Convention since April 1928.
The Berne Convention, like the Paris Convention, was based on the idea of national treatment and
stipulated a set of basic rights that all nations had to uphold. The multilateral age of global intellectual
property cooperation began with the Paris and Berne Conventions.
The Berne Convention covers the rights of authors as well as the preservation of works. The treaty is
founded on the below-mentioned fundamental principles and includes a number of provisions that
specify the minimum level of protection that must be provided, as well as exceptional measures that
developing nations may apply.
Principles Enshrined
The principles which got enshrined in the Berne Convention of 1886 and form the bedrock of
intellectual property laws today are-

• Principle of national treatment– According to the principle of national treatment, treatment

is no less favourable than that provided to people belonging to other member countries as
people of one’s own country. This principle is enshrined very much in general agreements
regarding tariffs and trade. It forms one of the most important principles of the World Trade
Organization structure.
The works of authors who are citizens of such States, or works first published in such States, should
be accorded in each of the other Contracting States the same protection as such other Contracting
States provide to the works of their own citizens.

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 • Principle of automatic protection– The principle of automatic protection provides
unconditional protection which does not require any compliance with any formalities in all
the member countries.
• Principle of independence of protection– This principle provides for intellectual Property
Rights protection, specifically for copyright protection, to be affordable irrespective of
whether the protection is given in the country of origin or not.
Protection is provided in accordance with the convention, regardless of whether there is protection in
the nation where the work was created. However, if a Contracting State grants a longer period of
protection than the minimum period required by the Convention and the work loses its protection in
the place of origin, protection may be withdrawn.
The works and rights that must be protected, as well as the length of the protection, are addressed by
the minimum requirements of protection. Each production in the literary, scientific, and creative fields
must be protected, regardless of how it is expressed.

• Principle of minimum standard protection– This principle concerns original works and
rights to be protected. For example, for copyright, the different rights protected are
transaction, adaptation and arrangement of work, performance in public, citation,
communication, broadcast, reproductions, and basis of audio-visual works.
• Principle of moral rights of authors– The Convention also establishes the rights pertaining
to morals, i.e., “moral rights”. The moral rights include the right to claim authorship of a work
as well as the right to object to any alteration of the work, mutilation, deformation, or
modification. It also contains the right against derogatory actions that would be detrimental to
the honour or reputation of the author.
The rights recognised as exclusive rights of permission include the following, subject to any
permissible reservations, restrictions, or exceptions:

• The right to translate;

• the right to adapt and arrange the work;
• the right to perform musical, theatrical, and dramatical-musical works in public;
• the freedom to do literary readings in public;
• being able to publicise the performance of such works;
• the privilege of broadcasting; and
• the freedom to create copies in any way or form, with the potential for a contracting State to
allow copies without permission in specific circumstances as long as they don’t interfere with
the work’s regular exploitation or unfairly damage the author’s legitimate interests; and the
potential for a Contracting State to grant the right to just compensation for music sound
recordings.
Universal Copyright Convention
What were the main features of the UCC?
The following were the main features of UCC:

• No signatory nation should accord its domestic authors more favourable copyright treatment
than the authors of other signatory nations, though there is no minimum protection stipulated
for either domestic or foreign authors.

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 • A formal copyright notice must appear in all copies of a work and consist of the symbol, the
name of the copyright owner, and the year of first publication; a signatory nation, however,
might require further formalities, provided such formalities are consistent with other signatory
nations' requirements.
• The minimum term of copyright in member nations must be the life of the author plus 25
years (with the exception of photographic works and works of applied art, which have a 10-
year term)
• All adhering nations are required to grant an exclusive right of translation for a period of
seven years, subject to a compulsory licence under certain circumstances for the balance of
the term of copyright.
Why was it necessary to hold the Convention?
There were certain articles in the Berne Convention that a number of countries took issue with, and as
a result, those countries were unwilling to sign on to the convention's terms.
Most notably, the United States, which at the time only offered protection in the form of a fixed-term
registration through the Library of Congress and demanded that all copyrighted works display the
symbol at all times. Because of this, the United States was required to revise a number of its statutes
in order to bring them into conformity with the Berne Convention.
The United States finally ratified the Berne Convention on March 1, 1989, and as a result, the country
only requires registration for works that were initially published in the United States by citizens of
that country.
Even in nations that would not ratify the Berne Convention, the UCC made certain that authors would
still have access to the protections afforded by the international legal system. Countries that are
parties to the Berne Convention have also ratified the Uniform Computer Code (UCC) in order to
guarantee that the work produced by their citizens will be protected in countries that are not parties to
the Berne Convention.
Parties to the Convention
Berne Convention states were worried that the existence of the UCC would encourage parties to the
Berne Convention to leave that convention and adopt the UCC instead.
As a result, the UCC included a clause that stated that parties which were also parties to the Berne
Convention did not need to apply the provisions of the Convention to any former Berne Convention
state that renounced their membership in the Berne Convention after 1951.
This clause was included because the UCC was ratified after the Berne Convention. Therefore, any
state that adopts the Berne Convention and then decides to renounce it and use the UCC protections
instead is penalized, as its copyrights may no longer exist in states that have adopted the Berne
Convention. This is because the UCC protects copyrights in a more comprehensive manner.
The Paris Union TRIPS
Trade-Related Aspects of Intellectual Property Rights (TRIPS)
International intellectual property laws developed in the 20th century. Numerous changes were also
made to the Paris and Berne Conventions. International organisational structures developed together
with the signing of intellectual property treaties. International bureaux were established as a result of
the Paris and Berne Conventions, and they united to become the United International Bureaux for the
Protection of Intellectual Property in 1893. A new organisation, the World Intellectual Property

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Organisation, replaced it in 1967. The international intellectual property community, which was
governed by the United International Bureaux for the Protection of Intellectual Property and later the
World Intellectual Property Organisation, was governed by a set of guiding principles, the most
significant of which was the concept of national treatment.
It was not, however, a world where technical regulations were standardised. States maintained a great
deal of sovereign flexibility in establishing intellectual property rules.
Structure of Trade-Related Aspects of Intellectual Property Rights
The TRIPS Agreement is regarded as a comprehensive new framework defining norms of intellectual
property protection and addresses the protection of intellectual property in trade-related industries to a
major extent. The TRIPS Agreement also holds the distinction of being the first global agreement that
covers all forms of intellectual property and includes a wide range of substantive provisions.
The TRIPS Agreement is a comprehensive and in-depth agreement with 73 Articles broken down into
7 Parts. General regulations and fundamental principles are included in Part I. The TRIPS Agreement,
which defines “intellectual property” as “all categories of intellectual property that are the subject of
Sections 1 to 7 of Part II” of the Agreement, requires member countries to implement domestic
legislation to give effect to its provisions. Additionally, the TRIPS Agreement mandates that
Members honour their commitments to uphold their obligations related to intellectual property rights
under existing agreements.
The Paris Convention for the Protection of Industrial Property, the Berne Convention for the
Protection of Literary and Artistic Works, the Rome Convention for the Protection of Performers,
Producers of Phonograms and Broadcasting Organisations, and the Treaty on Intellectual Property in
Respect of Integrated Circuits are among the treaties that must be complied with. Both national
treatment and most-favorable-nation treatment were stipulated as fundamental concepts in the TRIPS
Agreement. The TRIPS Agreement’s Part II sets rules for the accessibility, scope, and application of
intellectual property rights.
Purpose of Trade-Related Aspects of Intellectual Property Rights Agreement
The preamble of The Trade-Related Aspects of Intellectual Property Rights agreement along with
Article 7 clearly lists out the purposes for the TRIPS agreement-

• To reduce distortion and impediment to international trade.

• To promote effective and adequate protection of intellectual property rights.
• To ensure that measures and procedures to enforce intellectual property rights do not
themselves become barriers to legitimate trade.
Article 7 of the TRIPS agreement gives its objective, which is that the protection and enforcement of
intellectual property rights should contribute to the promotion of technological innovation and the
transfer and dissemination of technology, to the mutual advantage of producers and users of
technology, and in a manner conducive to social and economic welfare as well as to balance the rights
and obligations.
Features of Trade-Related Aspects of Intellectual Property Rights Agreement
The three main features of the TRIPS agreement are-

• Standards– it sets the minimum standard of protection for the intellectual properties provided
by each member country.

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 • Enforcement– it entails domestic legislation, procedures, and remedies provided by member
countries for the enforcement of intellectual property rights.
• Dispute settlement– it is a unique feature of the World Trade Organisation which provides for
a complex system of dispute settlement through dispute settlement understanding.
Trade-Related Aspects of Intellectual Property Rights about several intellectual property rights
The Paris Convention for the Protection of Industrial Property has been included in the TRIPS
Agreement, and it stipulates that Members shall abide by its substantive requirements even if they are
not parties to the Convention. The Agreement on TRIPS has been reported to have adopted a “Paris
Plus” approach as an outcome. The ‘Berne Convention for the Protection of Literary and Artistic
Works’ is also included in the TRIPS Agreement, and it is stated that Members must abide by its
substantive requirements even if they are not parties to the Convention. The TRIPS Agreement is
supposed to take a “Berne Plus” approach as a result. The level of protection for writers’ moral rights
under the TRIPS Agreement is, however, less than it is under Article 6bis of the Berne Convention
because it is not included in the TRIPS Agreement.
WIPO
The World Intellectual Property Organization is an agency of the United Nations that specialises in
the promotion and protection of intellectual property rights throughout the world. It was established in
1967, with its headquarters in Geneva, Switzerland. It carries or mandates poster innovation economic
development and creativity by providing a framework for the protection of intellectual property
globally.
The primary mission of the World Intellectual Property Organisation is to encourage the use and
protection of intellectual property with the aim of creating a balanced and effective international
intellectual property system which facilitates innovation investment as well as technology
advancement. It is one of the largest specialised agencies within the United Nations system, and its
membership is open to any UN member state. It administers various International treaties and
agreements which are related to intellectual property. It provides a platform on an international level
for the filing of patterns, making it easy for investors as well as companies to see protection of
patterns in multiple countries with just a single application.
Its Madrid system simplifies the registration and management of trademarks across multiple
jurisdictions. It also supports the protection of copyright and other related rights. Furthermore, it
offers various services relating to intellectual property information and capacity building, including
various training programs.
The World Intellectual Property Organization conducts research and analysis on intellectual property
trends and policies across the world and publishes its report along with various valuable insights
worldwide.
It offers arbitration and mediation services as a form of dispute resolution between parties without the
need for costly and time-consuming litigation. It takes the initiative in bringing about development
programmes across countries to build their capacity in intellectual property protection and
management. It also encourages the transfer of knowledge and technology from developed to
developing countries in order to promote economic growth and development, considering the
development of the world as a whole.
It plays a crucial role in harmonising the facilities for global protection of intellectual property rights.

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 UNIT II: Copy Right

Introduction to Copyright
Copyright
The Berne Convention is the fundamental international agreement that safeguards copyright. The
TRIPS Agreement further elevates and widens the levels of protection to include application of the
law of the forum, automatic protection, and national treatment, in addition to making compliance with
the standards of protection under the Berne Convention a fundamental condition for Members.
Applying the law of the forum means that the country where protection for the work is sought, not the
country of the author’s nationality or the place of origin of the work, will determine how the work is
protected.
When a work is automatically protected, it means that no formalities are required and the rights
attached to the work are established as soon as the work is created. As a result, by virtue of the act of
creating the work, the author automatically acquires the copyright.
The following is outlined for the duration of copyright protection-

• The author’s life, and fifty years after his passing,

• Cinematographic works,
• Works with anonymous or fictitious names: fifty years after the work has been properly made
public, and
• Photographic works and works of applied art that are protected as artistic works are subject to
the laws of each country, but the duration of the protection must be at least 25 years from the
day the work was created.
The TRIPS Agreement allows for the licencing or prohibition of the commercial rental of
phonograms, and it grants rental rights to phonogram manufacturers and any other phonogram right
holders as established by a Member’s law.

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The Copyright Act, 1957

Objectives of copyright law

Copyright is primarily intended to advance science and useful art and to compensate authors for their
labour. In order to do this, copyright guarantees authors the right to their creative expression while
allowing others to openly expand upon the concepts and knowledge presented in a work. The primary
goals of copyright law are twofold. First and foremost, copyright laws were created by nations to
guarantee the original expression of writers, songwriters, designers, artists, and other creatives, as
well as film and sound recording producers, who risked their money to present their works to the
public.
Second, a work’s knowledge and suggestions can be freely expanded upon by others, thanks to
copyright legislation. Additionally, it permits some unrestricted uses of copyrighted content. The
Copyright Act of 1957 outlines the range of these permissible uses. To establish harmony between the
rights of the copyright owner and the welfare of people to the greatest possible degree in the interest
of society, measures relating to free use are included in the Act. The Madras High Court held that
“copyright law is to preserve the fruits of a man’s effort, labour, talent, or test from annexation by
other persons” in Sulamangalam R. Jayalakshmi v. Meta Musicals, Chennai (2000).
Salient features of the Copyright Act, 1957
The salient features of the Copyright Act, 1957 are herein mentioned below:
Scope of rights conferred to the author
Literary works, musical works, theatrical works, creative works, sound recordings, and
cinematographic films are all protected by copyright under Section 13 of the Copyright Act of 1957.
Literary works, for instance, books, manuscripts, poetry, and theses are safeguarded by the Act.
Original literary, dramatic, musical, and artistic works as well as cinematographic and sound
recordings are shielded from illegal access under the Copyright Act of 1957. In contrast to patents,
copyright safeguards expressions rather than ideas.

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Provisions to assert the ownership
The original owner of the copyright is the creator of the work itself, as stated in Section 17 of the
Copyrights Act of 1957. The one exception to this rule is when an employee creates work while
performing duties as part of their employment, in which case the employer assumes ownership of the
copyright.
Civil and criminal remedies
Section 55 of the Copyright Act of 1957 addresses civil remedies for copyright infringement. These
civil remedies encompass restitution, injunctions, account interpretation, deletion and surrender of
copies made infringing, as well as conversion damages. Section 63 of the Copyright Act of 1957
specifies criminal penalties for copyright infringement. These criminal penalties can take the form of
jail time, fines, searches, the seizure of contraband, etc. The maximum sentence for imprisonment is 3
years, but it cannot be less than 6, and the maximum fine is between 50,000 and 2,00,000 rupees.
Establishment of copyright boards and offices
The Copyright Act of 1957 also makes provisions for the establishment of a copyright board to assist
in resolving copyright-related issues and a copyright office, which comes under the jurisdiction of the
Registrar of the Copyright, for the registration of books and other “works” of art. The establishment
of an office to be known as the Copyright Office for Act purposes is provided for under Section 9 of
the Copyright Act, 1957. The Copyright Board was established under Section 11 of the Copyright Act
of 1957.

Copyright vis-à-vis Digital Technology

The advancement of Digital Technology has been one of the finest creations of the human mind.
Technology has opened its gates to a wide range of possibilities in various areas like media,
entertainment, communication, advertisements and education. However, the easy access to materials
available on the Internet has posed a great concern for Copyright infringement. Copyright is one of
the most important Intellectual Property Right which denotes the rights possessed by the creators for
literary and artistic works. It includes works from books, paintings, computer programs, films,
database and maps, to name a few. Digitalisation has made it considerably easy to copy, replicate and
sell the works of a copyright owner without his permission and detection of such infringement
becomes difficult. This has posed a great threat to the right of the copyright owners or creators.
Challenges faced by Copyright in Digital World

• Copyright & Internet

• Multimedia Work
• Software
• Social Media
Infringement of Copyright in Cyberspace includes
Downloading and uploading
Internet has been a medium of downloading software or files to the hard disk of one`s computer.
Downloading involves creating a copy or reproducing the copy of the material available on the

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internet. However, there are certain restrictions which have to be complied with and the failure of
which might result in offence.
Derivative work
If two or more programmes are compiled to create a derivative work then in such cases it amounts to
infringement or violation of Copyright.
Hot-linking
It involves displaying an image on the website by linking to website hosting that image. This process
of hot-linking or linking can also tend to violate the rights of a copyright owner.
Audio-video works
Copying an audio or video file through companies that are involved in Peer to Peer file sharing (P2P)
of any digital music shall also amount to a violation.
Multimedia work
The concept of multimedia is extremely wide and encompasses within itself several categories of
material which includes text, sounds, audio, video, images, graphics, presentations, live videos of
speech and performances and so on.
Generally, Copyright protection is available to multimedia under literary (software program), artistic
(images), cinematographic films (films or videos), dramatic (plays), sound recording (musical works)
and photographs. Protection of rights of the creators and owner of the Copyright becomes difficult
due to the variety of rights available to copyright owners under the ambit of multimedia.
Software Copyright
Software
Computer Software consists of a collection of computer programmes, procedure, documentation that
perform tasks on a computer system. Software piracy is one of the major reasons for copyright
infringement. It involves unauthorised copying, distributing of copyrighted software. Software Piracy
involves:

• Creating a copy and selling it

• Creating a copy and exporting the same
• Renting the software
• Selling of computer hardware machines with pre-installed or per-loaded pirated software
• Copying of software programs using CD-R technology

Implication of International Conventions in India

International conventions and treaties on copyright protection
There is no concept of universal copyright while copyright infringements may take place everywhere.
Though no creative work is protected automatically worldwide and any particular copyright
protection legislation in a nation is ineffective outside the territory, multilateral treaties have increased
the harmonization for protection of copyright in a wide range of countries. They provide protections
to all the creative works as soon as they are fixed in any tangible medium.

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The international conventions have also helped a lot in shaping the nature and protections offered to
the creative works under the copyright.
Berne Convention for the Protection of Literary and Artistic Works
This Convention, usually known as the Berne Convention, is an international agreement adopted in
1886, deals with governing copyright, which was first accepted in Berne, Switzerland, in 1886.
The Berne Convention formally mandated several aspects which formed the basis of modern
copyright law in most of the countries.
It introduced the concept that a copyright exists the moment a work is ‘fixed’ in any tangible medium
rather than requiring registration. The Convention also enforced a requirement that countries
recognize copyrights held by the citizens of all other signatory countries.
The Berne Convention requires its signatories to treat the copyright of works of authors from other
signatory countries at least as well as those of its own nationals.
In addition to establishing a system of equal treatment that internationalized copyright amongst the
signatories, it also required the member states to provide strong minimum standards for copyright
under the copyright law.
Copyright under the Berne Convention must be automated; it is prohibited to require any formal
registration.

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 UNIT III: Trademark and Passing Off

Introduction to Trade Mark and its Relevance and Need for Protection
A trademark is any word, name, symbol or device used to identify and distinguish goods and/or
services from those of others. Trademarks also indicate the source of the goods, even if that source is
unknown to the consumer. In modern times, a consumer usually does not know the manufacturer of
the goods personally, unlike before the beginning of the Industrial Revolution, when there was a
limited number of manufacturers and every consumer used to know the manufacturer personally.
Apart from these, trademarks can be logos, aromas, sounds, personal brand names, slogans, smells,
etc. Even specific colours can be trademarked under specific brands, such as UPS Brown (also known
as Pullman Brown), Home Depot orange, Tiffany blue or John Deere green, etc.
In other words, trademarks can be almost anything that distinguishes the products and/or services
from others and signifies their sources.
The rationale for granting legal protection for trademarks is that they are a type of intellectual
property that demonstrates the standard of quality of products and/or services mainly based on
goodwill, and provides legal protection to your brand from fraud and counterfeiting.
What is a trademark
A trademark is the characteristics or combinations of characteristics capable of distinguishing the
goods and/or services of one enterprise from those of other enterprises. Trademarks fall under the
ambit of intellectual property rights and are protected by national and international laws.
Examples of trademarks include the Nike “Swoosh” symbol, the arched M for McDonald’s or the
bitten apple symbol for Apple computers, etc.
Under The Trade Marks Act, 1999, the word “mark” is defined under Section 2(1)(i)(V)(m) as “a
device, brand, heading, label, ticket, name, signature, word, letter, numeral”. The term “Mark” under
the Act also includes the shape of goods, packaging, or combination of colours or any other type of
combination.
Section 2(1)(i)(viii)(zb) in the Trade Marks Act, 1999 defines trademark as a mark which is:

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 • capable of being represented graphically;
• capable of distinguishing the goods or services of one person from those of others;
• may include the shape of goods, their packaging and combinations of colours.
Section 2(1)(i)(viii)(zb)(i) in the Trademarks Act, 1999 mentions about registered trademarks for
goods and services and further states that the person has the right to use the mark as the proprietor.
Section 2(1)(i)(viii)(zb)(ii) in the Act states that a person has the right to use the mark either as a
proprietor or a permitted user whether with or without any indication of the identity of that person.
The proprietor or a permitted user can also use a certification trademark or a collective trademark in
this regard.
Well known marks
Trademark laws protect consumers from being confused by deceptively similar or identical
trademarks. This is known as the sole identification function of a trademark. Apart from that,
trademarks also perform the function of protecting the proprietor through well-known marks. A well-
known mark means a mark in relation to any goods, products or services known to a large section of
the public.
Determination and protection of well known marks
The Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks by the
WIPO lays down the provisions on how to determine and protect a well-known mark under Article 2
and Article 3 respectively.
Whether a mark is well-known or not is determined based on the following factors:
The amount of knowledge or recognition of the mark by the public in the relevant sector;
The time duration of how many years the mark has been in use as well as the geographical area;
If the mark is applicable in promotions including publicity and advertisements;
record of successful enforcement of rights in the mark, in particularly whether the mark is well known
to the competent authorities;
The value associated with the brand;
Under Article 3, it is stated that the member state has the responsibility to protect a well-known mark
against “conflicting marks, business identifiers and domain names” and that it shall be applicable
from the time the mark has become well-known in the state.
A well-known trademark is protected under Indian trademark law and has been defined in Section
2(1)(zg). Under Section 9(1)(c), a well known trademark should not also be refused registration.

Trade Mark Act, 1999

Salient features of The Trade Marks Act
The Trade Marks Act, of 1940 was India’s first trade mark law. Before then, trade mark protection
was controlled by common law. The Trade Marks Act, 1999, as modified, is the current controlling
legislation in India for trade marks. The 1999 Act was passed to comply with the TRIPS rules. The
salient features brought about in Indian trade mark law by the Trade Marks Act, 1999, are as follows:

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 • Including a service mark in the definition of a trade mark;
• A new clause for collective marks’ registration;
• Prohibition on registering some marks that are merely replicas or imitations of well-known
marks;
• Provision for filing a single registration application for several classes of products and/or
services;
• Increasing the term of registration of a trade mark from 7 to 10 years, including a six-month
grace period for payment of renewal costs.
• Expansion of conditions under which registration validity may be challenged;
• Giving the Registrar ultimate power over applications for registration of Certification Trade
Marks;
• Aligning the punitive provisions of the Trade Marks Law with those of the Copyright Law;
• Provision for the formation of an Appellate Board.
Application for registration
Section 18 of the Act outlines the process for registering a trade mark. Thus, in order to apply for
registration, the applicant must meet the requirements outlined in the Act.
Subsection 1 states that any person claiming the trade mark may submit an application in writing to
the Registrar in the appropriate way. A single registration application can be submitted for many
classifications of products or services. However, as stated in Section 2 of the Act, various fees will
apply to each kind of product or service. If the applicant or joint applicants desire to apply, they must
do so within the geographical limitations of their primary place of business. If they do not conduct
any business, the application must be lodged inside the geographical limits of the site for services.
Subsection 4 specifies that the Registrar has the authority to accept, reject, or make certain
adjustments and revisions subject to specific restrictions or limits. If the Registrar refuses or imposes
restrictions, he must explain why and what materials were utilised.
Registration requirements
The central government appoints a person to be known as the controller general of patents, designs,
and trade marks, who will be the Registrar of the trade mark, by stating it in the official gazette. The
central government may designate additional officials if they believe they are appropriate for
discharging, and the Registrar may permit them to discharge under the supervision and control of the
Registrar.
The Registrar has the authority to transfer or remove cases by a written request with justification. It is
covered under Section 6 of the Act on how to keep a registered trade mark active. Except for the trust
notice, all specified details, including those of registered trade marks, must be recorded at the main
office. Each branch office is required to maintain a copy of the register. It permits the preservation of
documents on diskettes, computers, or in any other electronic format.

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Passing Off
Concept of Passing Off
The term “passing-off” is not defined in the Trade Marks Act, 1999. Section 27 of the Trade Marks
Act, 1999 acknowledges the trade mark owner’s common law rights to pursue legal action against
anybody who misrepresents his goods or services as those of a third party or seeks to exploit such
rights. In Cadila Healthcare Ltd v. Cadila Pharmaceuticals Ltd, (2001) the Supreme Court of India
defined “passing-off” as a type of unfair commercial competition or actionable unfair dealing in
which one person, by deceit, seeks to get an economic benefit from the reputation earned by the other
in a particular trade or company.
A few key elements must be proven for a passing off action, as maintained by courts in a series of
judgements, which are listed below:

• Misrepresentation,
• The defendant must do the conduct in the course of his or her business.
• The plaintiff’s goods and services have been misrepresented to prospective or final clients.
• Such deception is intended to harm the plaintiff’s company or reputation, and
• Such conduct creates genuine harm to the plaintiff’s company or reputation.
The defendant’s motive is irrelevant in a passing-off suit. Once the plaintiff has created a reputation,
no additional proof of the defendant’s fraudulent intent is necessary to be proven or established.

The comparison between an infringement action and passing off is portrayed

below:

Infringement Action Passing Off Action

It is a legal remedy. It is a remedy under common law.

The defendant must use the infringing mark

Defendant’s products do not have to be identical;
on the same items as the plaintiff’s registered
they might be related or even distinct.
mark.

The sole requirement to prove trade mark In a passing-off lawsuit, it is not enough to simply
infringement in relation to a registered trade show that the markings are the same or
mark is that the infringing mark is identical to confusingly similar. The mark’s usage must be
or misleadingly similar to the registered mark liable to mislead or create misunderstanding.

There is no requirement that the defendant’s It must be demonstrated that the defendant’s use
use of the mark harms the plaintiff in any of the trade mark is likely to harm or impair the
way. plaintiff’s goodwill.

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Cyber squatting
Cybersquatting : meaning and forms
According to the United States Federal Law known as Anti-Cybersquatting Consumer Protection Act,
cybersquatting (also known as domain name squatting) is the act of registering, trafficking in, or using
a domain name with the bad faith intent of profiting from the goodwill of someone else’s trademark.
The cyber squatter then attempts to sell the domain to the individual or corporation that owns the
trademark included within the name at an inflated price.
The word “squatting” comes from the act of occupying an abandoned or unoccupied space or building
that the squatter does not own, rent, or have permission to use. Cybersquatting, on the other hand, is
distinct in that the domain names that are being “squatted” are (sometimes but not always) paid for by
the cyber squatters during the registration process. Cyber squatters normally demand much higher
rates than the ones they paid for it. Some cyber squatters make disparaging remarks about the
individual or business the domain is supposed to serve in order to persuade the subject to purchase the
domain from them. Others monetise their squatting by posting paid links to the actual site that the user
likely wanted through advertisement networks.
There are a variety of realistic forms of cybersquatting that attract attention, which come under the
broader category of cybersquatting. Typosquatting, classic cybersquatting, cyberpiracy, and pseudo
cybersquatting are examples of these variations. The “classical cybersquatting” is the simple
registration of a domain name based on a trademark with the intention of selling it to the trademark’s
legitimate owner for a profit.
The use of trademarks in domain names with the goal of attracting more traffic to a list of similar web
pages identified by a common name is referred to as “cyberpiracy.” While “pseudo cybersquatting” is
described as the registration of a domain name without actually using it or connecting it to any online
web pages or active website. These are also known as “blocking registrations,” and they aim to
prevent legitimate right holders from using domain names. All of the above actions are classified as
different types of “cybersquatting.”
Remedies for cybersquatting under trademark law
There is currently no law in India that addresses cybersquatting crimes. To prevent potential
cybersquatting crimes, we need stringent laws that provide penalties for cyber squatters. Victims, on
the other hand, should take the following measures to recoup their losses caused by cyber squatters:
A. The victim can bring arbitration proceedings under the Internet Corporation for Assigned Names
and Numbers (ICANN)
The victim has the following option against cyber squatter-

• Filing a case against India’s multiple courts.

• Can send a cease-and-desist notice to the cyber squatter. A passing-off order can be obtained
by the victim against the cyber squatter.
B. UDRP- Uniform Dispute Resolution Policy
The Uniform Dispute Resolution Policy (UDRP) was introduced by the Internet Corporation for
Assigned Names and Numbers (ICANN) and is a part of the registration agreement you electronically
agree to when you buy a domain name from a website such as BigRock, GoDaddy, or others. To
begin a proceeding under the UDRP, the trademark owner must choose one of the authorized service

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providers. For example, Asian Domain Name Dispute Resolution Centre (ADNDRC), Canadian
International Internet Dispute Resolution Centre (CIIDRC), WIPO, etc.
As per Para 4(a) of the UDRP, a complainant must prove all three elements below-

• a domain name is identical or confusingly similar to a trademark or service mark in which the
complainant has rights; and
• The infringer has no rights or legitimate interests in respect of the domain name; and
• The domain name has been registered and is being used in bad faith. The following
conditions, in particular, but not limited to, if considered by the panel to be present, shall be
proof of the registration and usage of a domain name in bad faith for the purposes of
paragraph 4(a)(iii):
• circumstances stating that domain name is registered solely for the purpose of selling, renting,
or otherwise transferring the domain name registration to the complainant, who is the owner
of the trademark or service mark, or to a rival of that complainant, for valuable benefit in
excess of recorded out-of-pocket costs directly related to the domain name.
• A domain name is registered in order to prevent the owner of the trademark or service mark
from reflecting the mark in a corresponding domain name, provided that infringer has
engaged in a pattern of such conduct; or
• The infringer has registered the domain name primarily to interrupt a competitor’s business;
or
• By using the domain name, the infringer has intentionally attempted to attract, for commercial
gain, Internet users to his website or other online location, by creating a likelihood of
confusion with the complainant’s mark as to the source, sponsorship, affiliation, or through
the endorsement of his web site.
C. INDRP – .In Domain Name Dispute Resolution Policy
The .In Domain Name Dispute Resolution Policy (INDRP), which is significantly similar to the
UDRP, would be applicable to ‘.in’ domain names. According to the INDRP Policy, someone who
believes a domain name registered by the .IN Registry infringes on their legitimate rights or interests
can file a complaint with the .IN Registry and pay the appropriate fees. The complainant must meet
the same requirements as those mentioned in paragraph 4(a) of the UDRP Policy and paragraph 4 of
the INDRP.

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 UNIT IV: Indian Patent Act

Meaning of patent
A patent is an exclusive right granted by the Government to the inventor to exclude others to use,
make and sell an invention is a specific period of time. A patent is also available for improvement in
their previous Invention. The main motto to enact patent law is to encourage inventors to contribute
more in their field by awarding them exclusive rights for their inventions. In modern terms, the patent
is usually referred to as the right granted to an inventor for his Invention of any new, useful, non-
obvious process, machine, article of manufacture, or composition of matter. The word “patent” is
referred from a Latin term “patere” which means “to lay open,” i.e. to make available for public
inspection. There are three basic tests for any invention to be patentable:

• Firstly, the invention must be novel, meaning thereby that the Invention must not be in
existence.
• 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.
• Thirdly, the invention must be useful in a bonafide manner, meaning thereby that the
Invention must not be solely used in any illegal work and is useful to the world in a bonafide
manner.
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.
A patent is a territorial right. Thus it can only be applied in the country where it has been granted. A
patent is a territorial right. Thus it can only be applied in the country where it has been granted.
Therefore, any legal action against infringement or infringement of patent rights can only be taken in
that country. To obtain patent protection in different countries, each country must apply for a patent.
The Patent Cooperation Treaty (PCT) provides a way to file an international patent application in
which a patent can be filed through a single patent application in a large number of countries.

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However, the PCT of a patent remains discretionary of the individual patent office only after the
application is filed.
About Indian Patents Act, 1970

• Historical Legislation: Indian Patent Act was enacted in 1970, it replaced the earlier 1911
Patents and Designs Act.
• Encouraging Indigenous Innovation: Aimed at promoting indigenous innovation and
technology development in India.
• Product and Process Patents: It introduced product patents for food, drugs, and chemicals
while retaining process patents in other sectors.
• Compulsory Licensing: Allows for compulsory licensing in cases of non-working, public
interest, or national emergency.
• Global Trade Agreements: Amended in 2005 to comply with international trade agreements,
introducing mailbox provisions for pharmaceuticals.
• Balancing Innovation and Access: Balances the interests of patent holders and the public by
encouraging innovation while ensuring affordable access to essential medicines.
Salient Features of Indian Patents Act 1970

• Indian patents are issued in accordance with the Indian Patent Act of 1970 if the innovation
satisfies the following requirements:
• The invention should be novel.
• Invention needs to be non-obvious or involve novel processes.
• The invention should be appropriate for use in industries.
• Inventions in which only techniques or processes of manufacturing are patentable.
• It shouldn’t be subject to sections 3 and 4 of the Patents Act of 1970’s provisions.
• Atomic energy inventions are not patentable: Atomic energy-related inventions that fall
within subsection (1) of section 20 of the Energy Act of 1962 are not eligible for patent
protection.
• An application under sub-section (1) may be made by any of the people mentioned therein,
either alone or jointly with another person.
• Every patent application must be for a single invention and must be submitted in the required
form and lodged with the patent office.

1970 International Regime relating to Patent

Patent Cooperation treaty- an introduction
Treaty of Cooperative Patents deal is viewed as vital concerning arrangements for recording licenses.
The Patent Cooperation Treaty sets out a framework that is set up to help candidates who wish to
document licenses and such enterprises. The Patent Cooperation Treaty was proposed to keep away
from the humongous dreary and copy work that should be done if an individual records licenses
independently in every country while following their public technique. Essentially, the Patent
Cooperation Treaty works with the candidate to document just a solitary worldwide patent application
for his development which is worthy to every one of the assigned nations in his application which are
additionally part nations of the Patent Cooperation Treaty and are signatories to it. This one
application has an equivalent impact as of the different individual public uses of various nations. The
Patent Cooperation Treaty not just facilitates the technique of documenting a patent application, yet in
addition brings together the methodology for the pursuit of the earlier workmanship, the application’s

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distribution, and the examination and testing of the patentability of the development. The Patent
Cooperation Treaty was acquainted with the crucial goal simplifying the framework of patent,
subsequently, delivering it to be more successful as well as more affordable. This goal is considering
defending the interests of the multitude of clients who utilize the patent framework and every one of
the workplaces which are answerable for the organization of the equivalent.
Convention and Treaties, Relevant provision sunder TRIPs
TRIPS AGREEMENT
The World Trade Organisation and World Intellectual Property Organisation members developed a
Trade Related Intellectual Property System (TRIPS) with minimal requirements established to be
observed by all the contracting Countries. The most extensive international agreement on intellectual
property as of today is the TRIPS Agreement, which headed into implementation on January 1, 1995.
The World Trade Organisation, which administers the Agreement, brought Intellectual Property Law
to the international trade system. The Agreement also grants its member countries exemptions,
advantages, favors, and privileges in the area of Intellectual Property.
The TRIPS Agreement entails enforcement procedures, Remedies, and Dispute Resolution
Procedures. The process for resolving any disputes that may develop between the member nations is
akin to the World Trade Organization's dispute settlement system. The Agreement intends to resolve
the dispute arising over the Intellectual Property among the contracting countries and amicably settle
them.
The TRIPS Agreement focuses on shielding Intellectual Property Rights i.e., Copyrights, Trademarks,
Patents, Industrial Design, Trade Secrets, Geographical indications, and Layout Designs for integrated
circuits. The main aim of this Agreement is to maintain a fine balance between the welfare of
Intellectual Property and economic development. Further, the Agreement looks after protecting and
promoting Intellectual Property for technological novelty and growth.

Drug Patent
Pharmaceutical patent types in India
The pharmaceutical industry is an intense “knowledge-driven” sector, where the inventors in this
sector must be aware of patenting their inventions.
The various types of pharmaceutical patents are as follows:

• Drug compound patents- The patents which claim a drug compound as per its chemical
structure and are intended to provide the broadest protection, so they prevent other companies
from preparing similar drugs.
• Patents on formulations or compositions – A specific technology used to prepare a
formulation or a number of its key ingredients.
• Synergistic combination patents- The patent law of India states that the inventor can obtain
protection for the new synergistic combinations of his drugs.
• Technology Patent- It is related to the techniques used to resolve specific technology-based
problems, which include an increase in solubility, stabilization, etc., and even the inventors
can stop others from using the same approaches as they can claim the taste-masked
formulation.

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 • Polymorph Patents: The word “polymorph” refers to the different crystal structures of an
already known compound, and these types of patents allow innovative firms to protect the
improved versions of their original drugs.
• Biotechnology patents- It involves the use of living organisms or biological materials in the
preparation of pharmaceutical products.
Software Patent
Patent of softwares
Coming to patents for software and computer programs, even though the expression and methods of
programming codes can be copyrighted, the operational methods and principles of the software and
computer program cannot be copyrighted. Also, reverse engineering is fair use because of which
reverse engineering of trade secrets is also permissible.
So for all these reasons, patents become essential, to protect the software. A patent works on the scope
of the work and not on how the work was developed. A patent is an ideal solution when the question
concerns the protection of ideas and functionality of the software. But getting a patent is not that easy.
To be granted a patent, the program or software mustn’t be merely an algorithm but a technical
invention as well. Section 3(k) of the Patent Act, 2002 says: that mathematical methods, business
methods, computer programmes per se and algorithms are not considered patentable inventions. In
relation to computer programs, the law provides a qualification that what is not patentable is only
computer programs per se.
So software can be patented only if it is attached to an invention and the software is a component of
that invention. To avoid the claim of Section 3(k) of the Patent Act, 2002, the hardware must be a part
of the invention along with the computer program and the software.
Similar to copyright laws, patent laws also allow the patent owner to give a license or authorize his
patented work to be used by an individual or a third party, but it gives them limited rights over the
patented work. But such a license can be granted through a written agreement as well, where all the
terms and conditions are precisely mentioned and agreed upon.

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 UNIT – V: Industrial Design

Industrial Design: Need for Protection of Industrial Designs

Concept of industrial designs
An industrial design relates to the “appearance of an article” i.e. how the product looks? and its
design. It doesn’t protect its technical or functional features i.e. how a product works? Industrial
designs are applied to a variety of products of industry and handicraft. An industrial design consists of
two-dimensional figures such as lines, color, patterns of an article as well it consists of three-
dimensional figures such as the shape of an article. For example, two-dimensional figures – the
pattern of textile, three-dimensional figure – round tail of a bike. There are various examples of
industrial designs such as luxury items such as jewelry, medical equipment such as oximeters,
electrical appliances, furniture, housewares, architectural designs, textile designs, leisure items such
as toys, graphical user interfaces such as navigation systems, etc.
Protection of industrial design
In most countries, in order to be protected under industrial design law, an industrial design is required
to be registered as a ‘registered design’. In few countries, industrial designs are protected as ‘design
patents’ under patent law. A kind of design, industrial designs may also be protected depending on the
particular national law under copyright law as works of art. In principle, the owner of a registered
industrial design or of a design patent has the right to prevent third parties from manufacturing,
trading, or importing article bearings or integrating/embodying a design which is a copy, or
considerably a copy of the protected design, when such acts are attempted for merchandising
purposes. In order to get the statutory protection of Industrial Design, the Design has to be registered
before the Design registry of the country (or region) where an application is filed.

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Requirements for protection
In order to get protected, industrial designs;

• Must be new/ novelty

• Must be original
• Should not be disclosed anywhere to the public in India or in any other countries by any
publication in palpable (tangible) form
• Should not be used prior to the date of filing or where the application for registration is
applicable on the priority date.
• Significantly differs from known designs or combinations of known design features.
• Should not be conflicting with public order or morals or integrity.
• Not be prejudicial to the security of India.
• Design cannot include a trademark, property mark, or any artistic rights as defined under the
Copyright Act, 1957.
• Should not contain any profane or scandalous matter.

The Designs Act 2000

Origin of Design Act, 2000
In 1872, during colonial rule in India, the Patents and Designs Act, 1872 was enacted as the first
legislation to govern designs. Moreover, in order to afford protection to the inventions and designs,
the Inventions and Designs Act, 1888 was enacted further. It was followed by the enactment of the
Indian Patents and Designs Act, 1911 which was inspired by the British Patents and Designs Act,
1907. The enactment of the new Patent Act, 1970 led to the revocation of the patent provisions from
the Patents and Designs Act, 1911. The Designs Act,1911 was repealed and thereafter. Finally, the
Designs Act, 2000 came into force in India from 11th May 2001. The new Act contains most of the
provisions as were contained in the Designs Act, 1911, except for some minor changes in addition to
some provisions relating to the TRIPS Agreement and other international conventions. It is necessary
to note that the substantive law of Designs Act, 2000 has to be read along with the provisions of its
subordinate legislation i.e., the Designs Rules, 2001, which is a procedural overview.
Striking features of the Designs Act, 2000

• The ‘Locarno classification’ (LOC) is a distinguishing feature of the 2000 Act. The Locarno
Classification is an international system of classification employed for the purpose of
classifying goods for the registration of industrial designs. The said classification is solely
based on the subject matter of the design as opposed to the earlier classification which was
made on the basis of the substance which has been used to make that substance.
• The Designs Act, 2000 incorporates the concept of ‘absolute novelty’. In simple language,
absolute novelty means that an invention is new if it has not been used or published anywhere
in the world. The concept of absolute novelty aids in judging a novelty on the basis of prior
publications of any article.
• Under the 2000 Act it is possible to reinstate the registration of a design. It simply means that
the registration of a design can be restored.
• The provisions relating to punishment for any infringement has been made more stringent in
the new Act in terms of its quantum.
• The covertness of two years of a registered design is rescinded.
• The district courts have the authority to transfer cases to the high court.

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 • The new Act contains provisions regarding the substitution of an application before
registering a design.
• The Designs Act, 2000 contains certain provisions for the regulation of anti-competitive
practices within contractual licences.
• The new enactment includes the provisions in relation to the delegation of powers of the
controller to other controllers.
International Regime relating to Industrial Design
Designs regime at international level
Paris Convention (1883)
The Paris Convention for the Protection of Industrial Property, 1883 was the first international
convention which discussed and recognised the concept of industrial property. The Paris Convention,
concluded in 1883, was revised at Brussels in 1900, at Washington in 1911, at The Hague in 1925, at
London in 1934, at Lisbon in 1958, and at Stockholm in 1967. It further included another provision
that compulsorily required member states to provide protection for industrial designs. India is a
member of the Paris Convention, so it needs to follow the mandate of protecting industrial designs.
Thus, the provisions for the right of priority are applicable, as, on the basis of a regular first
application filed in one of the contracting states, the applicant may within the next six months apply
for protection in other contracting states, and the latter application will be regarded as if it had been
filed on the same day as the first application.

Geneva Act (1999)

Another important international registration system that built a foundation for the protection of
industrial property on a global basis is the Geneva Act of the Hague Agreement concerning the
international registration of industrial designs, which was adopted in 1999. This Agreement was
governed by the International Bureau of World Intellectual Property Organisation (WIPO). The
international registration obtained under this Agreement produces the same effects in each of the
designated countries as if it were registered in that country.

TRIPS Agreement (1995)

Next in line was the TRIPS Agreement, which provided for minimum standards for the protection of
industrial designs. The TRIPS Agreement came into effect on 1 January 1995. The TRIPS Agreement
protects intellectual property in trade-related regions to a large extent and is regarded as a
comprehensive new framework for intellectual property protection. While incorporating the minimum
standard provisions of the TRIPS Agreement, in India, the Designs Act, 2000 was passed in light of
the rapid changes in technology. Article 25 and Article 26 deal with the subject matter of industrial
design. It mentions that members can frame their domestic laws related to industrial design in
extensive form as well. It also includes provisions for infringement of design as well as a term of
protection for design.

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Design: Integrated Circuit Layout
Definition of design under the Designs Act, 2000
Section 2(d) of the Designs Act, 2000 provides the definition of ‘design’. It states that design means
only the features of shape, configuration, pattern, ornament or composition of lines or colours applied
to any article whether in two dimensional or three dimensional or in both forms, by any industrial
process or means, whether manual, mechanical or chemical, separate or combined, which in the
finished article appeal to and are judged solely by the eye. However, the following are excluded from
the meaning of ‘design’ as provided under Section 2(d) of the Designs Act, 2000:

1. Any mode or principle of construction or anything which is in substance a mere mechanical

device.
2. Any trademark as defined under Section 2(1)(v) of the Trade and Merchandise Marks Act, 1958.
3. Property mark as defined in Section 479 of the Indian Penal Code, 1860.
4. Any artistic work as defined under Section 2(c) of the Copyright Act, 1957.

The Semiconductor Integrated Circuit Layout International Conventions

Semiconductor Integrated Circuit Layout Design (SICLD) Act, 2000

Semiconductor Integrated Circuit Layout Design(SICLD) Act, 2000, has come into operation in India
w.e.f. 4th September 2000. As per the provisions of this Act, Registrar Semiconductor Integrated
Circuits Layout-Design Registry under the Ministry of Electronics and Information Technology
(MeitY) has been appointed with its head office at Electronics Niketan, 6 CGO Complex, Lodi Road
New Delhi-110003.The Registry maintains the Register of Layout-Designs and records in it the
registered layout-designs with the names, addresses, and descriptions of the proprietor and such other
matters related to the registered layout-designs.

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Prohibition of registration of certain layout-designs
The SICLD Act, 2000 prohibits the registration of certain Layout designs. Layout design which is not
original is prohibited. Similarly, the registration of layout design which has been commercially
exploited anywhere in India or a convention country has been prohibited. Layout design which is not
inherently distinctive or which is not inherently capable of being distinguishable from any other
registered layout-design also cannot be registered. The Act, however, provides that a layout-design
which has been commercially exploited for not more than two years from the date on which an
application for its registration has been filed either in India or a convention country shall be
considered as not having been commercially exploited.

Law relating to Geographical Indication

What is geographical indication

A geographical indication is a sign used on products that has a specific geographical origin and
includes the qualities or reputation of that origin. A geographical indication is given mainly to
agricultural, natural, and manufactured handicrafts arising from a certain geographical area.
Geographical indications (G.I.) are one of the forms of IPR which identifies a good as originating in
the respective territory of the country, or a region or locality in that particular territory, where a given
quality, reputation or other characteristic related to the good is essentially attributable to its
geographical origin. The relationship between objects and place becomes so well known that any
reference to that place is reminiscent of goods originating there and vice versa. It performs three
functions:
First, it identifies the goods as to the origin of a particular region or locality;
Secondly, it suggests 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. They suggest to the consumer that
the goods come from this area where a given quality, reputation or other characteristics of goods are
essentially attributable to the geographical region.
G.I. is a kind of sign used for goods that have a specific geographical origin and possess qualities or a
reputation that are due to that particular place of origin. Basmati rice and Darjeeling tea are examples
of G.I. from India. Article 22 of the TRIPS Agreements defines a geographical indication as a sign

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that is used on goods that have a specific geographical origin and which possess qualities, reputation
or characteristics that are essentially attributable to that particular geographical place of origin.
As a result, India was implemented in 1999 when the TRIPS Agreement was incorporated as a
member state of the Sui-Genis law for the protection of geographical Indication. The object of the
Geographical Indicators Goods (Registration and Protection) Act, 1999, has three folds:

• 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 protect consumers from
fraud, and
• Promoting Indian geographical bearing goods in the export market.
A registered geographic sign prohibits in any way the use of a geographical insignia which indicates
in the designation or representation of goods that such goods originate in a geographic area. For
example, Basmati rice and Darjeeling tea are examples of G.I. from India. The connection between
the goods and place becomes so much recognized that any reference to the place reminds those
specific goods being produced there and vice-versa. Some of the Examples of Indian geographical
indications which are registered in India are:

• Basmati rice
• Darjeeling tea
• Banaras Brocades and Sarees
• Coorg orange
• Phulkari
• Kolhapuri chappals
• Kangivaram sarees
• Agra Petha

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