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INTRODUCTION TO INTELLECTUAL PROPERTY LAW

Intellectual property law protects the results of human creative endeavor. Intellectual property is generally
thought to comprise four separate fields of law: trademarks, copyrights, patents, and trade secrets.
A trademark is a word, name, symbol, or device used to identify and distinguish one’s goods or services and
to indicate their source.
Copyright protects original works of authorship, including literary, musical, dramatic, artistic, and other
works. Just as trademarks are protected from the moment of their first public use, copyright exists from the
moment of creation of a work in fixed form; registration of a copyright with the Copyright Office, while
affording certain benefits, is not required.
A patent is a grant from the government that permits its owner to exclude others from making, selling, using,
or importing an invention.
A trade secret consists of any valuable commercial information that, if known by a competitor, would
provide some benefit or advantage to the competitor.
Intellectual Property Defined: There are three distinct types of property that individuals and companies can
own: real property refers to land or real estate; personal property refers to specific items and things that can
be identified, such as jewelry, cars, and artwork; and intellectual property refers to the fruits or product of
human creativity, including literature, advertising slogans, songs, or new inventions. Thus, property that is
the result of thought, namely, intellectual activity, is called intellectual property (IP). In some foreign
countries, intellectual property (especially patents and trademarks) is referred to as industrial property
Many of the rights of ownership common to real and personal property are also common to intellectual
property. Intellectual property can be bought, sold, and licensed. Similarly, it can be protected against theft
or infringement by others.
Intellectual property is a field of law that aims at protecting the knowledge created through human effort in
order to stimulate and promote further creativity. Authors who write books and musicians who compose
songs would be unlikely to engage in further creative effort unless they could realize profit from their
endeavors.

TYPES OF INTELLECTUAL PROPERTY

The term intellectual property is usually thought of as comprising four separate, but often overlapping, legal
fields: trademarks, copyrights, patents, and trade secrets.
Trademarks and Service Marks:

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What Is Protectable. A trademark or service mark is a word, name, symbol, or device used to indicate the
source, quality, and ownership of a product or service. A trademark is used in the marketing of a product
(such as REEBOK® for shoes), while a service mark typically identifies a service
In addition to words, trademarks can also consist of slogans (such as THE KING OF BEERS® for
Budweiser beer), designs (such as the familiar “swoosh” that identifies Nike products), or sounds (such as
the distinctive giggle of the Pillsbury Doughboy).
Trademarks provide guarantees of quality and consistency of the product or service they identify. Thus,
upon encountering the golden arches that identify a McDonald’s restaurant, consumers understand the “Big
Mac” they purchase in Chicago will be the same quality as one purchased in Seattle.
A trademark registration is valid for 10 years and may be renewed for additional 10-year periods thereafter
as long as the mark is in use in interstate commerce

Copyrights What Is Protectable. Copyright is a form of protection governed exclusively by federal law
granted to the authors of original works of authorship, including literary, dramatic, musical, artistic, and
certain other works. See Appendix E. Thus, books, songs, plays, jewelry, movies, sculptures, paintings, and
choreographic works are all protectable. Computer software is also protectable by copyright.

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Copyright protection is available for more than merely serious works of fiction or art. Marketing materials,
advertising copy, and cartoons are also protectable. Copyright is available for original works; no judgment is
made about their literary or artistic quality. Nevertheless, certain works are not protectable by copyright,
such as titles, names, short phrases, or lists of ingredients. Similarly, ideas, methods, and processes are not
protectable by copyright, although the expression of those ideas is. Copyright protection exists automatically
from the time a work is created in fixed form. Thus, similar to trademark law, securing a registration for a
work is not required for a work to be protected, although registration does provide significant advantages,
such as establishing a public record of the copyright claim and providing a basis upon which an
infringement suit may be brought in federal court and in which statutory damages and attorneys’ fees may
be recovered.
The owner of a copyright has the right to reproduce the work, prepare derivative works based on the original
work (such as a sequel to the original), distribute copies of the work, and to perform and display the work
Generally, copyrighted works are automatically protected from the moment of their creation for a term
generally enduring for the author’s life plus an additional 70 years after the author’s death. After that time,
the work will fall into the public domain and may be reproduced, distributed, or performed by anyone.
Patents: A patent is a grant from the U.S. government that permits its owner to prevent others from making,
using, importing, or selling an invention. There are three types of patents: utility patents, which are the most
common patents and which cover useful inventions and discoveries (such as the typewriter, the automobile,
and genetically altered mice); design patents, which cover new, original, and ornamental designs for articles
(such as furniture); and plant patents, which cover new and distinct asexually reproduced plant varieties
(such as hybrid flowers or trees).
Patent protection is available only for useful, novel, and nonobvious inventions. Generally, patent law
prohibits the patenting of an invention that is merely an insignificant addition to or minor alteration of
something already known. Moreover, some items cannot be protected by patent, such as pure scientific
principles.

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Patent protection exists for 20 years from the date of filing of an application for utility patents (assuming
that certain fees are paid to maintain the patent in force) and plant patents and 14 years from the date of
grant for design patents. After this period of time, the invention falls into the public domain and may be used
by any person without permission.

Patent Name: "Navigation system using satellites and passive ranging techniques"

GPS satellites were invented by the Navy, and they are operated today by the Air Force. Roger L. Easton
was the mastermind behind the Global Positioning System, developing technologies in the 1950s for the
Naval Research Laboratory (NRL) to track U.S. satellites in orbit

Patent Name: "Apparatus for production of three-dimensional objects by stereolithography"

Issued in 1986, the patent for a 3D-printer was ahead of its time. The document outlines the basic
technology used by most 3D printers: stereolithography, or light-solidification of resin.

Trade Secrets What Is Protectable. A trade secret consists of any valuable business information that, if
known by a competitor, would afford the competitor some benefit or advantage. There is no limit to the type
of information that can be protected as trade secrets; recipes, marketing plans, financial projections, and
methods of conducting business can all constitute trade secrets.
Even something as simple and nontechnical as a list of customers can qualify as a trade secret as long as it
affords its owner a competitive advantage and is not common knowledge. If trade secrets were not
protectable, companies would have no incentive to invest time, money, and effort in research and
development that ultimately benefits the public.
Trade secrets are generally protectable under various state statutes and cases and by contractual agreements
between parties. For example, employers often require employees to sign confidentiality agreements in
which employees agree not to disclose proprietary information owned by the employer.
Thus, disclosure of the information should be limited to those with a “need to know” it so as to perform their
duties; confidential information should be kept in secure or restricted areas; and employees with access to
proprietary information should sign nondisclosure agreements.

Other Intellectual Property Rights

Some of these rights include semiconductor chip protection, plant variety protection, the right of publicity,
and rights relating to unfair competition, including passing off, misappropriation, and false advertising.

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Additionally, intellectual property rights often intersect and overlap. Thus, the formula for CocaCola is a
trade secret, while the distinctive script in which the words COCA-COLA® are displayed is a trademark.
Generally, computer programs may be protectable under copyright law, patent law, and as trade secrets,
while the name for a computer program, such as WINDOWS®, qualifies for trademark protection. Jewelry
may be protected both under copyright and design patent law

THE INCREASING IMPORTANCE OF INTELLECTUAL PROPERTY RIGHTS

Although people have always realized the importance of protecting intellectual property rights, the rapidly
developing pace of technology has led to increased awareness of the importance of intellectual property
assets. Some individuals and companies offer only knowledge. Thus, computer consultants, advertising
agencies, Internet companies, and software implementers sell only brainpower. Similarly, some forms of
intellectual property, such as domain names and moving images shown on a company’s Web page, did not
even exist until relatively recently
Internet domain names such as “www.ibm.com” are valuable assets that must be protected against
infringement. Nearly $126 billion of U.S. exports now depend on some form of intellectual property
protection, including pharmaceuticals, motor vehicles, and aircraft and associated equipment. Moreover, the
rapidity with which information can be communicated through the Internet has led to increasing challenges
in the field of intellectual property. Books, movies, and songs can now be copied, infringed, and sold
illegally with the touch of a keystroke. The Office of the United States Trade Representative has estimated
that U.S. industries lose between $200 billion and $250 billion annually from piracy, counterfeiting of
goods, and other intellectual property infringements.

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Patent Acts: Indian patent acts 1970.

Background
The history of Patent law in India starts from 1911 when the Indian Patents and Designs Act, 1911 was
enacted. The present Patents Act, 1970 came into force in the year 1972, amending and consolidating the
existing law relating to Patents in India. The Patents Act, 1970 was again amended by the Patents
(Amendment) Act, 2005, wherein product patent was extended to all fields of technology including food,
drugs, chemicals and micro-organisms. After the amendment, the provisions relating to Exclusive Marketing
Rights (EMRs) have been repealed, and a provision for enabling grant of compulsory license has been
introduced. The provisions relating to pre-grant and post-grant opposition have been also introduced.

Procedure for Grant of a Patent in India

After filing the application for the grant of patent, a request for examination is required to be made for
examination of the application in the Indian Patent Office within 48 months from the date of priority of the
application or from the date of filing of the application. After the first examination report is issued, the
applicant is given an opportunity to meet the objections raised in the report. The applicant has to comply
with the requirements within 6 months from the issuance of the first examination report which may be
extended for further 3 months on the request of the applicant. If the requirements of the first examination
report are not complied with within the prescribed period of 9 ;months, then the application is treated to
have been abandoned by the applicant. After the removal of objections and compliance of requirements, the
patent is granted and notified in the Patent Office Journal. The process of the grant of patent in India can
also be understood from the following flow chart:

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Filing of Application for Grant of Patent in India by Foreigners

India being a signatory to the Paris Convention for the Protection of Industrial Property, 1883 and the Patent
Cooperation Treaty (PCT), 1970, a foreign entity can adopt any of the aforesaid treaties for filing of
application for grant of patent in India.

Where an application for grant of patent in respect of an invention in a Convention Country has been filed,
then similar application can also be filed in India for grant of patent by such applicant or the legal
representative or assignee of such person within 12 months from the date on which the basic application was
made in the Convention Country, ie, the home country. The priority date in such a case is considered as the
date of making of the basic application.

What can be patented?

In order to be patentable, an invention must pass four tests:

1. The invention must fall into one of the five “statutory classes: Process, Machines, Manufactures,
compositions of matter, and new uses of any of the above
2. The invention must be “useful”
3. The invention must be “novel”

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4. The invention must be “nonobvious”

Salient features
➢ Both product and process patent provided
➢ Term of patent-20 years
➢ Examination on request
➢ Both pre-grant and post-grant opposition
➢ Fast track mechanism for disposal of appeals
➢ Provision for protection of bio-diversity and traditional knowledge
➢ Publication of applications after 18 months with facility for early publication
➢ Substantially reduced time-lines
Patentable inventions
Invention must:
➢ Relates to a process or product or both
➢ Be new(novel)
➢ Involves an inventive step
➢ Be capable of industrial application

Non Patentable inventions

Inventions falling under Atomic Energy Act, 1962 are not patentable
Eg: Inventions relating to compounds of Uranium, Beryllium, Thorium, Plutonium, Radium, Graphite,
Lithium are more as notified by Central Govt. from time to time.

Pre-grant Opposition
A representation for pre-grant opposition can be filed by any person of the Patents Act, 1970 within six
months from the date of publication of the application, as amended (the "Patents Act") or before the grant of
patent. There is no fee for filing representation for pre-grant opposition. Representation for pre-grant
opposition can be filed even though no request for examination has been filed. However, the representation
will be considered only when a request for examination is received within the prescribed period.

Post-grant Opposition
Any interested person can file post-grant opposition within twelve months from the date of publication of
the grant of patent in the official journal of the patent office.

Grounds for Opposition

Some of the grounds for filing pre-and post-grant opposition are as under:

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(a) Patent wrongfully obtained;

(b) Prior publication;
(c) The invention was publicly known or publicly used in India before the priority date of that claim;
(d) The invention is obvious and does not involve any inventive step;
(e) That the subject of any claim is not an invention within the meaning of this Act, or is not patentable
under this Act;
(f) Insufficient disclosure of the invention or the method by which it is to be performed;
(g) That in the case of a patent granted on convention application, the application for patent was not
made within twelve months from the date of the first application for protection for the invention made
in a convention country or in India;
(h) That the complete specification does not disclose or wrongly mentions the source and geographical
origin of biological material used for the invention; and
(i) That the invention was anticipated having regard to the knowledge, oral or otherwise, available
within any local or indigenous community in India or elsewhere.
Term of Patent
The term of every patent in India is 20 years from the date of filing the patent application, irrespective of
whether it is filed with provisional or complete specification. However, in case of applications filed under
the Patent Cooperative Treaty (PCT), the term of 20 years begins from the international filing date.

Payment of Renewal Fee

It is important to note that a patentee has to renew the patent every year by paying the renewal fee, which
can be paid every year or in lump sum.

Restoration of Patent
A request for restoration of patent can be filed within eighteen months from the date of cessation of patent
along with the prescribed fee. After the receipt of the request, the matter is notified in the official journal for
further processing of the request.

Rights granted by a Patent

If the grant of the patent is for a product, then the patentee has a right to prevent others from making, using,
offering for sale, selling or importing the patented product in India. If the patent is for a process, then the
patentee has the right to prevent others from using the process, using the product directly obtained by the
process, offering for sale, selling or importing the product in India directly obtained by the process.

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Before filing an application for grant of patent in India, it is important to note "What is not Patentable in
India?" Any invention which is (a) frivolous, (b) obvious, (c) contrary to well established natural laws, (d)
contrary to law, (e) morality, (f) injurious to public health, (g) a mere discovery of a scientific principle, (h)
the formulation of an abstract theory, (i) a mere discovery of any new property or new use for a known
substance or process, machine or apparatus, (j) a substance obtained by a mere admixture resulting only in
the aggregation of the properties of the components thereof or a process for producing such substance, (k) a
mere arrangement or rearrangement or duplication of known devices, (l) a method of agriculture or
horticulture and (m) inventions relating to atomic energy, are not patentable in India.

Maintainability of Secrecy by the Indian Patent Office (IPO)

All patent applications are kept secret up to eighteen months from the date of filing or priority date,
whichever is earlier, and thereafter they are published in the Official Journal of the Patent Office published
every week. After such publication of the patent application, public can inspect the documents and may take
the photocopy thereof on the payment of the prescribed fee.

Compulsory Licensing
One of the most important aspects of Indian Patents Act, 1970, is compulsory licensing of the patent subject
to the fulfillment of certain conditions. At any time after the expiration of three years from the date of the
sealing of a patent, any person interested may make an application to the Controller of Patents for grant of
compulsory license of the patent, subject to the fulfillment of following conditions, ie,

• the reasonable requirements of the public with respect to the patented invention have not been satisfied;
• that the patented invention is not available to the public at a reasonable price; or
• that the patented invention is not worked in the territory of India.

It is further important to note that an application for compulsory licensing may be made by any person
notwithstanding that he is already the holder of a licence under the patent.

For the purpose of compulsory licensing, no person can be stopped from alleging that the reasonable
requirements of the public with respect to the patented invention are not satisfied or that the patented
invention is not available to the public at a reasonable price by reason of any admission made by him,
whether in such a licence or by reason of his having accepted such a licence.

The Controller, if satisfied that the reasonable requirements of the public with respect to the patented
invention have not been satisfied or that the patented invention is not available to the public at a reasonable

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price, may order the patentee to grant a licence upon such terms as he may deem fit. However, before the
grant of a compulsory license, the Controller of Patents shall take into account following factors:

• The nature of invention;

• The time elapsed, since the sealing of the patent;
• The measures already taken by the patentee or the licensee to make full use of the invention;
• The ability of the applicant to work the invention to the public advantage;
• The capacity of the applicant to undertake the risk in providing capital and working the invention, if the
application for compulsory license is granted;
• As to the fact whether the applicant has made efforts to obtain a license from the patentee on reasonable
terms and conditions;
• National emergency or other circumstances of extreme urgency;
• Public non-commercial use; and
• Establishment of a ground of anti-competitive practices adopted by the patentee.

Infringement of Patent
Infringement of a patent consists of the unauthorised making, importing, using, offering for sale or selling
any patented invention within the India. Under the (Indian) Patents Act, 1970 only a civil action can be
initiated in a Court of Law. Further, a suit for infringement can be defended on various grounds including
the grounds on which a patent cannot be granted in India and based on such defence, revocation of Patent
can also be claimed.

Licensing and Assignment of Patent

An assignment in a patent or a share in a patent or a mortgage, license or the creation of any other interest in
a patent is permissible. In the case of patents, assignment is valid only when it is in writing and the
agreement is reduced to the form of a document embodying all the terms and conditions governing the rights
and obligations of the parties to the agreement. The application for registration is required to be made by the
transferee in the prescribed form.

Design Act: Industrial Design act 2000.

Introduction
In our day to day life, we encounter various objects which we can recognize by observing their design.
Products which are artistically designed can grab the attention of the customer the moment they see it. These

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designs can take the form of Art, drawings, graphics etc. These designs may be created by professionals
which includes engineered designs or architectures blueprints for any property, interior designs etc.

Design act 2000 definition

“Design” means features of shape, pattern, configuration, ornament or composition of colors or lines which
is applied in three dimensional or two dimensional or in both the forms using any of the process whether
manual, chemical, mechanical, separate or combined which in the finished article appeal to or judged wholly
by the eye.

Objectives of design act 2000

• The primary objective of the Design Act is to protect the designs.

• The Design Act 0f 2000 is an Act to consolidate and amend the law relating to the protection of designs.
• Its main objective is to protect new or original designs from getting copied which causes loss to the
proprietor.
• The important purpose of design registration is to see that the creator, originator or artisan of any design is
not deprived of his reward for creating that design by others copying it to their goods or products.
• An industrial design helps in drawing a customer’s attention and helps in increasing the commercial value
of an article. Therefore, helps in expanding its market.
• There are many competitors who adopt evil ways to reduce the competition in the rival groups by
exploiting the designs to their advantage. Thus, it is necessary to have laws to safeguard the interests of the
owners of these designs. In order to fulfill this objective, the Design Act of 2002 came into existence.

What is to be considered to register under this Act?

Looking forward to registering a design under Design Act, 2000, one must ensure following features in your
design which are:

• The work must be capable of selling and made separately.

• It must be original and new to the market. The plagiarised design will not be considered under this act.
• It should be purely distinguishable from other designs.
• It must not relate to obscenity or any material which is inappropriate.

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Who is entitled to seek Registration?

As per the provisions of Design Act, 2000 any proprietor who is seeking registration of a design which is
original and unpublished previously in any country which does not seems to be contrary to any law and
order of that country can file an application for registration. A proprietor as per Section 2(j) includes that
person who

1. Is the author of that design

2. Acquired design for a valid consideration and
3. Any person to whom the design has been devolved from the original proprietor.

In case there is more than one author than the design must be applied by the joint authors only.

Application for registration of designs

The application for registration of designs is given under Section 5 of the Design Act, 2000.

• The controller registers a design under this Act after verifying that the design of any person, claiming to be
the proprietor, is the new or original design not previously published anywhere and is not against any public
policy or morality. Provided that such a design should be capable of being registered under this Act.
• The applications under the Act shall be filed in the Patent Office in the prescribed manner along with the
prescribed fee for filling the form.
• The design should be registered in a specific class and not in more than one class. In case of any doubt
regarding the class in which the design should be registered, the Controller will decide the matter.
• The controller may even reject any design and not register it. In such a case, the person aggrieved may file
an appeal before the High Court.
• If any application is not complete within the prescribed time limit owing to the fault of the applicant then it
shall be abandoned.
•A design when registered shall be registered as of the date of the application for registration.

Items that cannot be registered as a design under the Act

• Signs, emblems or flags of any country.

• Size of any article, if changed.
• Structures and buildings.

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• Integrated circuits’ layout designs.

• Trade variations.
• Any principle or mode of construction of any article such as labels, tokens, cartoons, cards, etc.
• Books, calendars, certificates, jackets, forms-and other documents, greeting cards, maps and plan cards,
postcards, leaflets, stamps, medals, dressmaking patterns.
• A mechanical contrivance.
• Workshop alterations of components of an assembly.
• Parts of any article which is not manufactured and sold separately.

Duration of the registration of a design

The total time for which a design can be registered is 15 years. Initially, it was 10 years, which could be
extended for another 5 years by paying a fee of Rs. 2000 to the Controller but it should be done before the
expiry of that 10 years period.

Industrial design infringement cases

In Disney Enterprises Inc. v. Prime Housewares Ltd., the international registration of industrial designs
became a matter of conflict in India. A Mumbai based company Prime Housewares used to manufacture
characters like Mickey Mouse, Donald Duck, etc. a suit was filed by the Disney enterprises for the
infringement of their international registered designs.

Copyright Act, 1957

Copyright deals with the rights of intellectual creators in their creation. The copyright law deals with the
particular forms of creativity, concerned primarily with mass communication.

The Copyright Act, 1957 protects original literary, dramatic, musical and artistic works and cinematograph
films and sound recordings from unauthorized uses. There is no copyright protection for ideas, procedures,
methods of operation or mathematical concepts as such.

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Why Copyright??

Copyright ensures certain minimum safeguards of the rights of authors over their creations, thereby
protecting and rewarding creativity. Creativity being the keystone of progress, no civilized society can
afford to ignore the basic requirements of encouraging the same.

Meaning of Copyright:

Section 14 of the act defines copyright as:

1. In case of literary, dramatic or musical work:

a) Reproducing the work in any material form which includes storing of it in any medium by
electronic means,

b) Issuing copies of the work to the public which are not already in circulation,

c) Performing the work in public or communicating it to the public,

d) Making any cinematograph film or sound recording in the respect of work,

e) Making any translation or adaptation of the work.

2. In case of a computer programme:

a) To do any of the acts specified in respect of a literary, dramatic or musical works,

b) To sell or give on commercial rental or offer for sale or for commercial rental any copy of the
computer programme.

3. In the case of artistic works:

a) To reproduce the work in any material from including storing of it in any medium by
electronic or other means, depiction in three dimensions of a two dimensional work and
depiction in two dimensions of a three dimensional work,

b) Communicating the work to the public,

c) Issuing copies of work to the public which are not already in existence,

d) Including work in any cinematograph films,

e) Making adaptation of the work, and to do any of the above acts in relation to an adaptation of
the work.

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4. In the case of cinematograph film:

a) To make a copy of the film, including photograph of any image forming part thereof or
storing of it in any medium by electronic means or otherwise.

b) To sell or give on commercial rental or offer for sale or for such rental, any copy of the film,

c) To communicate the film to the public.

5. In the case of sound recording:

a) To make any other sound recording embodying it “including storing of it in any medium by
electronic or other means,

b) To sell or give on commercial rental or offer for sale or for such rental, any copy of the sound
recording,

c) To communicate the sound recording to the public.

Who is a Author:

Works Author

Literary or dramatic work Creator of work

Musical Work Composer

Cinematograph Film Producer

Sound Recording Producer

Photograph Photographer

Computer Generated Work Person who causes the work to be

created

Term of Copyright:

Literary, dramatic, musical or artistic works enjoy protection for the life time of the author plus 60 years
beyond i.e. 60 years after his death. In case of joint authorship which implies collaboration of two or more

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authors in the production of work, the term of copyright is to be construed as a reference to the author who
dies at last.

In case of copyright of posthumous, anonymous and pseudonymous works, cinematograph films, sound
recordings, works of Government, public undertakings and international organization, the term of protection
is 60 years from the beginning of the calendar year next following the year in the work has been first
published.

The act has given broadcasting reproduction right to every broadcaster which is valid for 25 years from the
beginning of the calendar year next following the year in the broadcast has been done.

Copyright Board:

Section 11 of the act provides for the establishment of the Copyright Board and empowers Central
Government to constitute the same consisting of Chairman and 2 other members. It has many important
functions, such as:

1. Settlement of disputes,
2. Grating of licenses, etc

Counterfeiting to Copyright

➢ Counterfeit mark- The production of certain brand bags by putting a false label, and sold at low
prices.

➢ Counterfeit products- copies of articles, similar to the original under a different name

➢ Infringement mixed- copy for both the model and brand

➢ Infringement of copyright- copying or using the work of another creator, without his prior
permission.

Civil Remedies

➢ Injunction

➢ Damages

➢ Accounts

➢ Delivery of infringing copy

➢ Damages for conversion

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Criminal Remedies

➢ Imprisonment- 6months to 3 years

➢ Fine- Rs. 50,000 to 2,00,000

➢ Seizure of infringing copies

Trademark Act, 1999

A trademark is a word, phrase, symbol, or design that helps distinguish the source of the goods of one
party/organisation from that of others.

1. Introduction

Trademark rights in India are statutorily protected by the Trademark Act, 1999and also under the common
law remedy of passing off. The administration of such protection under the Act is done by the Controller
General of Patents, Designs and Trademarks. The Trademark Act, 1999 deals with the protection,
registration and prevention of fraudulent use of trademarks. It also deals with the rights of the holder of the
trademark, penalties for infringement, remedies for the damaged as well as modes of transference of the
trademark. Trademark is defined in the Trademark Act, 1999 as, “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.” Such a
mark may include numerous things such as signatures, names, labels, headings etc.

2. Registration of Trademark

To apply for a trademark a person must adhere to the provisions enlisted under Section 18 of the Act. The
Section requires any persons applying for a trademark to apply in writing in the manner that is prescribed for
the registration. The application has to contain the name of the mark, goods and services, the class under
which goods and services fall, the period of the use of the mark and the personal details of the applicant such
as name and address.

3. Infringement of Trademark

the term infringement means the violation of someone’s rights. Therefore infringement of trademark means
the violation of trademark rights. A trademark is said to be infringed when there is an unauthorised use of a
trademark or a substantially similar mark on goods or services of a similar nature. In such a case, the court

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will look at whether such use of the trademark will cause any confusion to the consumer as to the actual
brand they are purchasing. Therefore, according to the Act a trademark is infringed if:-

1. If the trademark is a copy of a registered trademark with a few additions or alterations.

2. If the infringed mark is printed or used in advertisements.
3. If the infringed mark is used in the course of trade
4. If the mark used is so similar to a registered mark that it is likely to confuse or deceive a consumer when
selecting a category of product.

In case of infringement of a registered trademark, the person may file a suit for damages. For filing such a
suit the following conditions must be met:

1. The person filing the suit (plaintiff) must be the registered owner of the trademark.
2. The person who is infringing (defendant) must be using a mark that is similar to that of the plaintiff such
that it can easily be confused as one another.
3. Such use by the defendant is not accidental in nature.
4. The use of the mark by the defendant must be in the course or similar goods or services to that which the
trademark is registered to.

4. Classification of Trademarks

Section 7 of the Trademark Act, 1999 requires the classification of trademark according to the international
classification of goods and services. There are a total of 45 classes goods and services may fall under in such
a classification. The international classification system used is called the Nice Classification (NCL), it was
established in 1957 during the Nice Agreement. According to the NCL, there are 45 classes under which
goods and services fall. Classes 1 – 34 are for goods and the classes 35 – 45 are for services.

5. Opposing a Trademark Registration

The members of the public are given the opportunity to oppose the registration of a Trademark during its
registration process. The person filing the opposition of registration maybe anyone, it could be a customer,
competitor or any member of the public. In the process of registration of a trademark, the mark will be
advertised in the Trade Mark Journal, upon this advertisement anyone can file an opposition to it during a
period of three months. This period of three months may be extended by no more than one month in special
cases. The filing of the opposition has to be done at the Trademark Registrars Office and not at the
Intellectual Property Appellate Board (IPAB). While filing an opposition, one must include the following:

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1. Details of the trademark application against which opposition is being filed.

2. Details of the earlier mark that the registering mark is infringing upon. It could be an already registered
mark or a mark that is still undergoing its registration.
3. Details of the filing party.
4. Grounds upon which such opposition is based on.

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