Unit-6 Session-3

Copy Right Act 2059 (2002

Copy Right Rules 2064 (2004)

 Contd..

Section 2 definition
"Work" means any work presented originally and intellectually in the
field of literature, art and science and in any other field, and this term
also includes alike related work:
Book, pamphlet, article, thesis, / Drama, dramatic-music, dumb show
and a work prepared to perform in such manner/ Musical notation
with or without words, Audio visual works, Architectural design/ Fine
Arts, painting, work of sculpture, work of woodcarving / lithography,
and other work relating to architecture/ Photographic work,/ Work of
applied art, / Illustration, map, plan, three-dimensional work relating
to geography, and scientific article and work, / Computer program
Audio-visual work“ "Photographic work"
 Contd..

Section 6 : Owner of economic right of work

The author of a work shall be the first owner of the economic right
of that work.
Co-author in the case of a joint work;

In case such work can be separated concerned author

 In cases where a joint work is prepared at the initiation or

direction of any person or organization, that person or organization
at whose direction or initiation such a work has been
so prepared,
 Contd..

Section 7 : Economic Right:

The owner of copyright shall have the exclusive right to carry
out the following acts in respect of the work:
To reproduce, translate, revise or amend the work,
To make arrangement and other transformation in the work,
To sell, distribute or rent the original and copy of the work for
the general public,
To transfer or rent the right of audiovisual work, conferred to
that author or owner,
To import copies of the work,
To have public exhibition of the original or copy of the work,
To perform, broadcast the work in public,
 Contd..

Section 8: Moral Right:

The author of a work shall have the following moral rights,
irrespective of whether that author has the economic right to
that work:
To get his/her name mentioned in copies of the work or in
his/her work where it is used publicly public,

To prevent such acts as undermining the reputation or

goodwill earned by him/her, by harming his/her work or
presenting it in a misrepresenting manner,
 Contd..

Section 9,10 & 12 deal with different author/ performer’s Rights

Section 9 Rights of performer :The performer shall have the

right to perform the following acts :

To take one's performance to the general public through

broadcasting or communication
To determine modality or medium of making one's performance
and reproduce it,
To rent copies of one's performance etc.
Section 10 deals with Right of sound recording producer
Section 12 deals with Right of broadcasting organization
 Protection of Work
Protection of work, performer, sound recording producer or
broadcasting organization
A work of the following author shall enjoy protection under
this Act:
 A work created by the author residing in Nepal or in a member
country of the World Trade Organization and published in the
Nepal or in that country

 An audio-visual work produced by a producer residing in

Nepal or in a member country of the World Trade Organization
 An architectural design of a building made in the Nepal or in a
member country of the World Trade Organization or other kind
of artistic work used in a building or any other structure
 Term of Protection
Section 14 :Term of protection of copyright
The economic and moral rights available to the author under
this Act shall be protected throughout the life of the author and
in the case of his/her death until fifty years computed from the
year of his death .
 The economic and moral rights over the work prepared jointly
shall be protected for fifty years computed from the year of
death of the last surviving author.

The economic and moral right of the work prepared pursuant

to Clauses (b) and (c) or Sub-section (2) of Section 6 shall be
protected until fifty years from the date of first publication of
such work or the date on which the work is made public,
whichever is earlier.
 Reproduction for Personal / Teaching Purpose
Section 16 & 18
No authorization shall be required from the author or the
copyright owner to reproduce some portions of any published
work for personal use.

 The following acts may be done for teaching and learning

activities without authorization of the author or the copyright
owner in a manner not to be prejudicial to the economic right of
such author or owner

To reproduce a small portion of any published work by way of

citation, writing or audio-visual aid,
To reproduce, broadcast and exhibit some portions of the
work for purposes of educational activities to be performed in
the classroom.
 Infringement & Punishment
Section 25
Infringement of protected right: (1) Any one who carries out the
following act shall be considered to have infringed the right protected
under this Act :
To reproduce copies of a work or sound recording and sell and
distribute them or publicly communicate or rent them with
Commercial benefit.
To do advertisement or publicize by copying a work belonging to
another person with a motive of taking advantage of the reputation
gained by that work,
To make work of another subject or nature by changing the form
and language.
To import, produce or rent any equipment or device prepared with
intention of circumventing any device designed to discourage the
unauthorized reproduction or such like works.
 Infringement & Punishment
Section 27
Punishment on infringement of protected right: (1) In cases where
any person infringes Section 25, such a person shall be punished :
1 thousand to 1 lakhs fine or with imprisonment for a term not
exceeding six months or both and
From second time : fine 200000 to 2 lakhs or with imprisonment for
a term not exceeding one year or with both for each.

 The materials so published or reproduced or distributed or devices

used to reproduce such materials shall be seized.

Compensation for the loss caused to the copyright owner by the

infringer of the protected right shall also be realized and provided to
the copyright owner.
 Contd..
Punishment for importation of unauthorized copy:
In cases where any person imports unauthorized copies of any work
in violation of Section 26, such a person shall be punished as follows :

 10000 to 1 lakh according to the gravity of the offense,

and such copies shall be seized;

and compensation for the loss caused to the copyright owner from
such importation shall also be realized from the importer and
provided to the copyright owner.

Other punishment: In cases where any person infringes any

other matter contained in this Act or the Rules framed under this
Act : 5000 to 50000 according to the gravity of the offense.
12
 State Case & Limitation
State cases and time limitation for Filing Case ( Sec 37 &38) :

The cases punishable under Sections 27 and 28 shall be state cases

and those cases shall be considered to be included in Schedule-1 of the
State Cases Act, 2049 (1992).

 A police officer of at least the rank of police inspector shall

investigate and inquire into the cases under this Act.

Limitation:
In cases where any right under this Act is infringed, a case has to
be filed within three months of the knowledge of such infringement.

13
 Copy Right Regulation 2064
Rule 3
Provision concerning Registration of work, sound recording,
performance or broadcasting:

 Any owner of the work, sound recording, performance or

broadcasting who desires to register any work, sound recording,
performance or broadcasting under subsection (2) of Section 5 of the
Act shall have to submit an application to the Registrar in the format
as specified in schedule-1 along with his/her evidence.

The Registrar shall, while examining the documents ordered under

sub rule (3), if it is deemed unreasonable to register such a work,
sound recording, performance or broadcasting in applicant's name,
inform the applicant specifying the reasons thereof within seven days.
Otherwise registrar shall register within 35 days from the date of
application.
14
 Function duty and Power of Registrar

Rule 5
Functions, duties and powers of the Registrar, except those provided
for in the Act, shall be as follows:

(a)To perform necessary work in regard to protect copyrights,

(b) To register copyright and to maintain the details thereof up-to

date.

(c) To inspect the entity or body on the spot, and if any weaknesses are
found in the business to be performed by such a body, to give direction
to improve the same.

15
 Registration of Body / Entity

Rule 7
Application to submit for Registration of the Body: The persons
desirous to get registered a body shall have to submit an application to
the Registrar in the format as specified in the schedule specifying the
following particulars:
(a)Name and address of the body,
(b)Objectives of the body,
(c)Necessary qualification of the members of the body and provision
concerning membership fees.
(d)Removal of the members of the body and provision concerning
resignation, etc.
 If any application for registration of a body is submitted under rule
7, is found reasonable the Registrar shall, register such a body.

16
 Unit-6
Session-4
Patent, Trademark & Design Laws
 Fundamentals of P. D. T.
• Patent, Design and Trademarks are known industrial property which is one major type of Intellectual Property
whereas owner of that property enjoy with certain rights conferred by laws.
• While trademark law seeks to protect indications of the commercial source of products or services, 
• patent law generally seeks to protect new and useful inventions, and
• registered designs law generally seeks to protect the look or appearance of a manufactured article.
• Trademarks, patents and designs collectively form a subset of intellectual property known as industrial
property because they are often created and used in an industrial or commercial context.

• A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a

recognizable sign, design, or expression which identifies products or services of a particular source from those
of others,[2][3] although trademarks used to identify services are usually called service marks.[4][5] The trademark
owner can be an individual, business organization, or any legal entity. A trademark may be located on
a package, a label, a voucher, or on the product itself. For the sake of corporate identity, trademarks are often
displayed on company buildings. It is legally recognized as a type of intellectual property.
• The first legislative act concerning trademarks was passed in 1266 under the reign of Henry III, requiring all
bakers to use a distinctive mark for the bread they sold. [citation needed] The first modern trademark laws emerged in
the late 19th century. In France the first comprehensive trademark system in the world was passed into law in
1857. The Trade Marks Act 1938 of the United Kingdom changed the system, permitting registration based on
"intent-to-use”, creating an examination based process, and creating an application publication system. The
1938 Act, which served as a model for similar legislation elsewhere, contained other novel concepts such as
"associated trademarks", a consent to use system, a defensive mark system, and non claiming right system.
• The symbols ™ (the trademark symbol) and ® (the registered trademark symbol) can be used to indicate
trademarks; the latter is only for use by the owner of a trademark that has been registered.
18
 Difference between Trademark and Patent
• Trademarks is any sign that individualizes the goods of a
given enterprise and distinguishes them from the goods of its
competitors.
• This definition comprises two aspects , which are some times
referred to as the different functions of the trademark , but
which are ,however, independent and for all practical
purposes should looked together.

• Trademarks and service marks are primarily intended to

indicate the source of goods and services and to distinguish the
trademarked goods and services from others. They also
symbolize the quality of the goods or services with which they
are used.
19
 Contd..

• Patent is a document issued, upon application, by government

office.
• It is an invention, which creates a legal situation in the patented
invention that can normally be exploited with the authorization
of owner of the patent.
• It is a government grant of monopoly of limited duration on the
use of an invention or discovery, if an invention is Novel,
Useful and Non obvious and if the invention fits within the
statutory categories of protectable invention.
• Under U.S. Code Title 35, the U.S. Patent and Trademark Office
(USPTO) issues three different types of patents: utility patents,
design patents, and plant patents. In order to be patentable, an
invention must be novel, nonobvious, adequately described, and
20
claimed by the patent applicant in clear, definite terms.
 Contd..

• Design Patent Examples : Some examples of design

patents include ornamental designs on jewelry, automobiles
or furniture, as well as packaging, fonts and computer icons
(such as emojis)
• Utility patents include new or improved ideas, processes,
machines, and manufacturers.
• Two commonly patented examples are apple trees and rose
bushes derived by cutting pieces of the stem, not by
germinating seeds. Then as now, tuber-propagatedplants, like
potatoes, were exempt. This is because the part of
the plant used for the propagation is also food.

21
 Trademarks:
• Trademarks is any sign that individualizes the goods of a
given enterprise and distinguishes them from the goods of its
competitors.
• This definition comprises two aspects , which are some times
referred to as the different functions of the trademark , but
which are ,however, independent and for all practical
purposes should looked together.

• Trademarks and service marks are primarily intended to

indicate the source of goods and services and to distinguish the
trademarked goods and services from others. They also
symbolize the quality of the goods or services with which they
are used.
22
 Contd..
• Most trademarks and service marks (called "marks" ) are
words , but they can be almost anything that distinguishes one
product from another ,such as symbols, logos, sounds, design,
or even distinctive nonfunctional product configuration.

• In order to individualize a product for the consumer, the

trademarks must indicate its source.

Service marks:
• Service marks are signs that are very similar in nature to
trademarks, basically the same criteria can be applied , so
service mark protection has sometimes been introduced by a
very short amendment to existing trade mark law.
23
 Legal Provisions of P D T
Section 2 b, C & d
"patent" means any useful invention relating to a new method of
process or manufacture, operation or transmission of any material or a
combination of materials, or that made on the basis of a new theory or
formula.

"Design" means the form or shape of any material manufactured in

any manner.

"Trade-mark“ means word, symbol, or picture or a combination

thereof to be used by any firm, company or individual in its products
or services to distinguish them with the product or services of others.
 Registration of Patent & Protection of It’s Right

• No one shall copy or use or cause to use in the name of the

others without transforming the ownership or written permission
pursuant to Section 21d, the patent registered in the name of any
person pursuant to this Act. ( sec. 3 (2)

• A person desirous of having any patent registered for establishing

right over it in his/her name shall submit to the Department an
application as specified in Schedules 1 attaching the following
documents :
a)Name address and occupation of the parson inventing the patent
 Contd..

• If the applicant him/herself is not the inventors, how and in what

manner he/she acquired title thereto from the inventor.
• Process of manufacturing, operating or using the patent.
• The theory or formula if any, on which the patent is based.
Along with the application pursuant Sub- Section (1), applicant shall
also submit map and §drawings along with particulars, of the
patent, as well as the fee specified in Schedule 3(1) (a).
I.e. Application Registration Fee Nrs.2000 + Registration fee Nrs.10,000/-
 Contd..

Section 4, 5, 6 & 7 of P D T Act 2022

•Department may issue registration certificate by doing investigation/ study
on the patent submitted in the application or reject to register on the certain
grounds :

•Whether it is a new invention or not, and whether it is useful to the general

public or not, and thereafter decide whether or not to register such patent.

•In case the patent is already registered in the name of any other person, or

•If applicant him/herself is not the inventor of the patent sought to be so

registered nor has acquired rights or it is contradictory to the prevailing laws,
public morality, health etc.
 Contd..

• If department confirm for registration of patent applicant shall have to pay

certain fees and it should be published in the Nepal Gazette for the
information of the public.

• TERM OF PATENT :
The title of the patentee to the patent shall be valid only for a period of 7
years from the date of registration. Further it is based on renewal which
must be renewed under Section 23B

• Penalty for violation of Section 3 : A person, who commits any of

the acts, shall be fined as per gravity of offense by the order of the
Department and the goods or commodities related to the offense shall be
confiscated.
• I.E fine up to 5 lakhs for committing offence sub sec 2 of section 3 and up
to 2 lakhs for committing an attempt of offence thereof.
 ACQUISITION OF TITLE TO DESIGN

• A person may acquire title under this Act to the design of any
article manufactured or caused to be manufactured upon
registration under Section 14.

• No one shall copy or use or cause to use in the name of the others without
transforming the ownership or written permission pursuant to Section 21d,
the design registered in the name of any person pursuant to this Act.

• A person desirous to register the design of any article manufactured or

caused to be manufactured under this act need to file application with
required document along with four copies of such design and maps, and
drawings and particulars thereof.
 Registration of Design

• If department find such design hurts the prestige of any individual or

institution or adversely affects the public conduct or morality, or
undermines national interest, or in case such design has already been
registered in the name of any other person

• Department shall register the design in the name of the applicant and issue
a certificate as mentioned in Schedule 2(b).
• Applicant need to pay Nrs. 1000/- for Application fee and Nrs.7000/- for
registration for Certificate.

• Whenever Department is satisfied that there exists any circumstance as

mentioned against the provisions, may cancel the registration of any
design by giving certain time for defense to the design holder.( sec.14)
 Contd..

Term of Design :
The title of the person in whose name a design has been
registered shall remain valid for a period of five years from the date of
registration thereof.

It is also based on renewal, which should be renewed under Section 23B, up to

two times interval of 5 years.
•In case a person, contravenes the provisions or Sub-Section (2) of Section 12,
or operates a design invalidated the Department, may be punished with a fine
not exceeding Nrs.50,000/-

•And articles and goods connected with such offense shall be confiscated on
the order of the Department, as per the gravity of offense.
 Acquisition of title to trade
marks
Application to be filed : Section 16,17 & 18

•A person may acquire, under this Act, title to the trade-mark of his business,
upon registration in the department under Section 18.

•Applicant need to submit application as prescribed format along with four

specimen of such trade-marks,

•Department shall conduct necessary investigation and provide sufficient

opportunity to defend him/her self and also conduct further inquiry based on
the compact made and if finds it appropriate to register it.
 Contd..

Section 18 b and C of P.T.D Act

Prohibition to Use Trade-marks : No trade-mark may be used as a
registered trade-mark without registering it at the Department.
Time Limit for Use of Trade-marks :
In case a trade-mark registered at the Department is not brought into use
within one year from the date of registration thereof, the department shall
conduct necessary inquiries and cancel such registration.
Term of Trade-Marks : The title of the person in whose name a trade-
mark has been registered under Section 18 shall remain valid for a period of 7
years from the date of registration thereof, except when it is renewed under
Section 18. It can be renewed up to no time limit interval of 7 years.
 Contd..

Punishment for Illegal Use of TRADE-MARKS :

•In case any one who, violates Sub-Section (2) of Section 16, or brings
into use a trademark which has been cancelled under Sub-section (3) of
Section 18
•Or violates Section 18B, may be punished with a fine up to 1 lakhs.

•Articles and goods connected with such offense may shall be

confiscated on the orders of the Department as per the gravity of
offense.
 Cases & Court’s Verdict
Kiran Shoes Manufacture ‘Goldstar VS Basnet Footware industry
‘Goodstar’/ ‘Elevenstar
•In this case Kiran Shoes Manufacture industry had registered trademark of
‘Goldstar’ and it was well-known in market. Later on, Basnet Footwear
industry started to produce similar nature of shoes and filed application for
registration of trademark stating ‘Goodstar, Elevenstar’ and ‘Goldsuper’.
•DOI conducted inquiry and asked to the concern industry for consent but it was
objected by Kiran Shoe Idustry. Further DOI rejected to register that trademark
however Appeal Court invalidated the decision of DOI and finally Case came to
Supreme Court.
•Supreme court of Nepal, affirmed the decision of DOI taking the references of
Indian Court case of ‘Piknik’ and ‘Picnic’ M/S Dyechem Ltd. Vs M/S Cadbury
(Indian) Ltd (AIR,200SC2114) and British Court verdict on ‘Parker knoll Ltd Vs
Knoll International Ltd. Court observed and realized that was visually and
phonetically similar and creating confusion.
 Cases & Court’s Verdict
Daman Bdr Amatya VS Department of industry

In this case, One company which had already registered trade mark and used
in bottle later on another company tried to fill alcoholic liquid into that bottle
for selling. Court did not allow to do that interpreting the trade mark printed in
bottle does not meant physical property it is intellectual and industrial
property.
AMF Inc VS Sleek craft boats ( U S Court Verdict )
Court of U S A interpreted and drawn the following eight elements to determine
whether Trademark is violated or not by using similar mark:
1) The similarity of Mark 2) The relatedness or proximity of the product or service 3)
the marketing channels used 4) The strength of the claimant’s mark 5) the defendant
intention in selecting its marks 6) Evidence of actual confusion. 7) Likelihood of
expansion into other products lines 8) The degree of care like to be exercise by
customer.
 Contd..
3M company Vs. 3N
•A lawsuit by The 3M company against Changzhou Huawei Advanced Material
Co Ltd for the use of 3N resulted in a win for 3M and "significant damages" for
3M. It was ultimately ruled that, despite some dissimilarities in products and
pricing, the notoriety of the 3M mark and the fact that 3N had managed to
acquire clients and market share by use of the similar mark, constituted
infringement.

•One analysis notes this can be indicative of trademark case results in Chinese
courts, where these matters are taken "seriously." While this particular case was
complex and confusing, 3N definitely veered into dangerous zones by emulating
the trademarked named of such a well-known brand. It was ultimately held that
the "3M" trademark had a high distinctiveness and reputation.

•US: Academy Awards v. GoDaddy

 Contd..
US: Academy Award Vs. Go Daddy
•The Academy Awards and domain retailer GoDaddy recently concluded a five-
year legal battle over "cybersquatting" issues. Initially filed in 2010, the
Academy alleged that GoDaddy's decision to allow customers to buy
"confusingly" similar domain names such as 2011Oscars.com, allowed profit
from individuals who wanted to "park" on these domains and collect revenue.
•Initially, the Academy managed to demonstrate in court that 57 domains were
sold by GoDaddy with the potential for confusion. Ultimately, the judge ruled
that GoDaddy did not "possess the requisite bad faith intent to profit" from their
sales.
•While this legal battle was undoubtedly expensive, it may be considered a
landmark ruling in the cybersquatting space. Similarly, frustrating lawsuits can be
avoided when, like in GoDaddy's case, you may not be able to reasonably expect
a third-party to "police" your brand trademark.
•Verdict in Favor of GoDaddy.
 Contd..
South Korea:Louis Vuitton vs. Louis Vuiton Dak

•In one of the more shocking examples of international trademark infringement, a

South Korean fried chicken restaurant recently lost a trademark battle with
designer Louis Vuitton. The court ruled in the designer's favor after determining
that the restaurant's name of Louis Vuiton Dak was too similar to Louis Vuitton.
In addition to the name infringement, the restaurant's logo and packaging closely
mirrored the designer's iconic imagery.
•The restaurant was ultimately hit with another 14.5 million fine for non-
compliance, after changing their name immediately after the first ruling to
LOUISVUI TONDAK. Many brands can avoid similarly expensive legal battles
by avoiding mirroring their brand closely after another, even if the products and
purchase channels have nothing in common.
•Verdict in Favor of Louis Vuitton.
“A Great Trademark is appropriate, dynamic distinctive,
memorable and unique.”
“Happiness is not something you postpone for the
future; it is something you design for the present.”

THANKS