REFRESHER COURSE:

INTELLECTUAL PROPERTY
RIGHTS
Noyonika Kar
 • Creation of human mind (Intellect)
BASIC • Intangible property
FEATURES OF • Exclusive rights given by statutes
INTELLECTUAL
• Attended with limitations and exceptions
PROPERTY
• Time-bound
RIGHTS
• Territorial
 “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
DEFINITION • industrial designs
• trademarks, service marks and commercial names and
designations
• protection against unfair competition

and all other rights resulting from intellectual activity in the

industrial, scientific, literary or artistic fields.”

(WIPO Convention, Art. 2 clause viii)

 • Copyright and Related Rights
• Trademarks
• Patents
TYPES OF IP • Industrial Designs
• Geographical Indications
• Layout Designs/Topographies Integrated Circuits
• Trade Secrets
• Protection of New Plant Varieties
COPYRIGHT LAW
 • The Copyright Act, 1957 - Comprehensive act covering
copyright and neighbouring rights
• Copyright encompasses economic + moral rights (to the
standards of the Berne Convention)
COPYRIGHT • Neighbouring rights - performer's rights, recording rights,
broadcasting rights, droit de suite (artist's resale rights) to the
standards of the TRIPS Agreement
• Registration not compulsory under the Copyright Act
• The Act provides an exhaustive list of protected works (S. 13) -
literary works, dramatic works, musical works, artistic works,
cinematograph films and sound recordings
 • Different kinds of “works” that can be copyrighted as
per S. 2 (y):
WHAT CAN BE I. ORIGINAL Literary works including computer programs,
REGISTERED dramatic, musical or artistic works

UNDER THE II. Cinematographic films

III. Sound recordings
COPYRIGHT
• Modicum of creativity v. skill and labour
ACT
• Idea v. Expression dichotomy (RG Anand v. Deluxe
Films, AIR 1978 SC 1613)
 • In case of original literary, dramatic, musical, and artistic works
the time period of copyright in India is 60 years in addition to
the author's lifespan. Where there are multiple authors, the
term is 60 years post the death of the last author.

• Anonymous/pseudonymous work - 60 years from the beginning

DURATION OF of the year when the work was published

PROTECTION • For cinematograph films, sound recordings, photographs,

posthumous publications, anonymous and pseudonymous
OF A publications, works of government and works of international
organizations - Copyright protection subsists for a period of 60
COPYRIGHT years from the year of publication.

• Unpublished Cinematograph films, Photographs, and computer

programs - copyright subsitsts up to 60 years from the year in
which the original work was created.

• Broadcast reproduction rights are valid for 25 years from the

year of broadcast and performers rights last for 50 years from
the year the performance was made.
 • An author is the first owner of a copyrighted work

• Situations where an author is not the owner of a copyrighted

work:

i. When a Photograph, painting, portrait, engraving or

OWNERSHIP cinematograph film is made for valuable consideration at the
instance of a person (Commissioned works);
OF A ii. Work created in the course of employment;
iii. Lectures delivered in public;
COPYRIGHT iv. Government work;
v. Work of an international organisation;

• Transfer of ownership copyright and neighbouring rights

generally by means of an assignment

• Copyright over a work may even be licensed, but there's no

change of ownership

• Distinction between authorship and ownership of copyright -

moral rights
 • Literary, dramatic or musical work to reproduce, issue copies,
perform, make any - cinematograph film or sound recording in
respect of that work, translate and to adapt the work

• Computer programs - all rights as mentioned above in addition

to selling or giving on hire or offering for sale or hire for
RIGHTS commercial/ rental purposes any copy of the computer program

GRANTED BY • Artistic work to reproduce, communicate work to the public,

issue copies, include work in cinematograph film and adapt the
COPYRIGHT work

(S. 14) • Cinematograph film to make copies of the film, sell or give on
hire, offer for sale or hire, any copy of the film, and
communicate the film to the public; and

• Sound recording to make any other sound recording embodying

it, to sell or give on hire, offer for sale, or hire, any copy of the
sound recording.
 • When the exclusive rights of the owner are exercised/
authorised for use without the owner's consent, either
in relation to the whole or a substantial part of the
ASSESSMENT work
OF COPYRIGHT
• Different tests adopted by the Courts to identify
INFRINGEMENT copyright infringement

• Secondary infringement
 Copyright in a work shall be deemed to be infringed--

(a) when any person, without a licence granted by the owner of the
copyright or the Registrar of Copyrights under this Act or in
contravention of the conditions of a licence so granted or of any
condition imposed by a competent authority under this Act--
(i) does anything, the exclusive right to do which is by this Act
conferred upon the owner of the copyright, or
WHAT (ii) permits for profit any place to be used for the
communication of the work to the public where such
AMOUNTS TO communication constitutes an infringement of the copyright in
the work, unless he was not aware and had no reasonable
INFRINGEMENT ground for believing that such communication to the public
would be an infringement of copyright; or]

(S. 51) (b) when any person--

(i) makes for sale or hire, or sells or lets for hire, or by way of
trade displays or offers for sale or hire, or
(ii) distributes either for the purpose of trade or to such an
extent as to affect prejudicially the owner of the copyright, or
(iii) by way of trade exhibits in public, or
(iv) imports into India, any infringing copies of the work
 • Exceptions to Copyright infringement have been listed under S.
52 of the Copyright Act, 1957, which has been extensively
borrowed from the UK Copyright law.
• Lays down the provision for the “Doctrine of Fair Dealing”.
• Fair dealing w.r.t. a literary, dramatic, musical or artistic work for
the purpose of research or private study or criticism or review,
whether of that work or any other work and reporting current
EXCEPTIONS events shall not constitute an infringement of copyright.
• With the 2012 amendment, the fair dealing provision has been
TO COPYRIGHT extended to cinematograph film and musical works.
INFRINGEMENT • The English case of Hubbard v. Vosper first laid down the
concept of “fair dealing”.
(S. 52) • Factors that must be considered:
I. Amount and Substantiality of the dealing (RG Anand v.
Deluxe Films & Ors.)
II. Purpose, Character, commercial nature of the dealing
(Ramaiah v. K. Lakshmaiah)
III. Effect on potential market/ likelihood of competition (ESPN
Stars Sports v. Global Broadcast News Ltd. & Ors.)
 • CIVIL REMEDIES (S. 55) - Injunctions, damages, rendition of
REMEDIES accounts of profits, delivery and destruction of infringing copies,
conversion damages, litigation costs
AGAINST • CRIMINAL REMEDIES (S. 63) - Imprisonment of 6 months
COPYRIGHT ranging from 50,000 to 2,00,000 INR, seizure of infringing
copies, delivery of infringing copies to the owner 3 years, fines
INFRINGEMENT
• Period of limitation - 3 years
 • Right to public performances
• Right to broadcast
RELATED
• Right to public recitation
RIGHTS
• Moral rights
• Royalty rights/ Right to follow/ Droit de Suite
 • Chancellor, Master And Scholars Of The University Of Oxford & Ors. v.
Rameshwari Photocopying Services & Anr. (“DU Photocopy case”) -
Elucidated the concept of “fair dealing” by holding that “the use of
copyright to stimulate activity and progress in the arts for the intellectual
enrichment of the public outweighed its use by the publishers to maintain
commercial control of their property”.
IMPORTANT
• Eastern Book Company & Ors. v. D.B. Modak & Anr. - Upheld the “sweat of
CASELAWS brow” doctrine by holding that “derivative work should be more than just a
copy of the original work and involve individual skill, labor,capital and a
minimal level of creativity”.

• Myspace v. Super Cassettes Ltd. - Landmark judgment when it comes to

intermediary liability in cases of copyright infringement.
 • Najma Heptulla v. Orient Longman Ltd. and Ors. - Recognized that “active
and close intellectual collaboration and cooperation” is a requisite for “joint
ownership”.

• Pine Labs Private Limited v. Gemalto Terminals India Ltd. - Held that in
cases wherein the duration of assignment is not specified, the duration shall
IMPORTANT be deemed to be five years, following which the copyright shall revert to the
CASELAWS author.

• Amar Nath Sehgal v. Union of India - Whether the author had rights over
the display of his work post-sale under moral rights provisions? - While
holding that moral rights form the soul of an author's work, the Court
clarified that these could not be taken away from the author regardless of
the work’s sale. The destruction and mutilation of work were held to be an
infringement of the author’s moral rights.
TRADEMARK LAW
 • A distinctive sign or indicator of some kind which is used by
an individual, business organization or other legal entity to
uniquely identify the source of its products and/or services
to consumers, and to distinguish its products or services
from those of other entities.

MEANING OF • A trademark is a device which can take almost any form, as

long as it is capable of identifying and distinguishing
“TRADEMARK” specific goods or services.

• May consist of a name, word, phrase, logo, symbol, design,

image, sound or a combination of these elements.

• There is also a range of non-conventional

trademark comprising marks which do not fall into these
standard categories, may therefore be visible signs (e.g.
colors, shapes, moving images, holograms, positions),
or non-visible signs (e.g. sounds, scents).
 • A trademark may be designated by the following symbols:

 (for an Unregistered Trademark, that is, a

mark used to promote or brand goods)
CONTD.
 (for an unregistered Service mark, that is, a
mark used to promote or brand services)

 (for a registered trademark)

 • For filing trademark application with the Indian
trademark office, the goods and/or services need to be
categorized according to the class(es).
TRADEMARK
CLASSIFICATION • Trademarks in India are classified in about 45 different
classes. This is done as per the “Nice Classification”.

• The main objective of trademark classification is to

group together the similar nature of goods and
services.
 • Product trademarks: are those that are affixed to identify
goods.

• Service trademarks: are used to identify the services of an

entity, such as the trademark for a broadcasting service,
retails outlet, etc. They are used in advertising for services.

TYPES OF • Certification trademarks: are those that are capable of

distinguishing the goods or services in connection with
TRADEMARKS which it is used in the course of trade and which are
certified by the proprietor with regard to their origin,
material, the method of manufacture, the quality or other
specific features.

• Collective trademarks: are registered in the name of

groups, associations or other organizations for the use of
members of the group in their commercial activities to
indicate their membership of the group.
 • Filing of an application.

• Examination of the application by the Registrar.

• Issuance of examination report. Reply to report must be

filed within 30 days.

PROCEDURE • If satisfied with reply, mark shall be published in journal. If

not, application shall be rejected.
FOR TM
REGISTRATION • After publication in journal, any person may file objection
within 3 months, which may be extended by a month.

• If the opposition has been decided in favour of the

applicant, the Registrar shall register the Trademark.

• On the registration of the Trademark the Registrar shall

issue to the applicant a Trademark Registration.
 SECTION 9
• Absolute grounds for refusal of trademark application
• Non-distinctive
• Descriptive or indicative of kind, quality, quantity of
goods/services provided
• Causes deception/ confusion among public
• Prohibited due to obscenity/ vulguarity.
GROUNDS FOR • Prohibited under the Emblems and Names (Prevention of
REFUSAL OF TM Improper Use) Act, 1950.
APPLICATION BY SECTION 11
REGISTRAR • Relative grounds for refusal of trademark application
(SECTIONS 9 & 11) • Similar/ Identical to existing mark
• May trigger confusion among the masses.
• Likely to hamper the earlier well-recognized trademark in
India
• Prohibited under the law of passing-off safeguarding the
unregistered trademark concerning the trade.
• Prevented under the Copyright Act, 1957.
 • The term of registration of trademark is 10 years, but may
be renewed subject to the payment of the prescribed fee,
in accordance with the provisions of the Trademarks Act,
1999.

• An application for renewal of a trademark can be filed

within six months from the expiry of the last registration of
TERM/ trademark.
DURATION OF A
TM IN INDIA • Generally, one who has filed an application (pending
registration) can use the “TM” symbol with the mark to
alert the public of his exclusive claim. The claim may or may
not be valid.

• The registration symbol, ®,may only be used when the mark

is registered.
INFRINGEMENT
VERSUS
PASSING-OFF
 • As per Section 135(1), reliefs that a court may usually grant in a suit
for infringement or passing off are:
I. permanent and interim injunction, restraining further use of
trademark
II. damages or account of profits
III. order to deliver the infringing labels and the marks for
destruction or erasure

REMEDY FOR • The interim reliefs in the suit may also include an order for:
INFRINGEMENT/ I. Appointment of a local commissioner, for search, seizure and
preservation of infringing goods, account books and preparation
PASSING-OFF of inventory, etc.
II. Restraining the infringer from disposing of or dealing with the
assets in a manner that may adversely affect the plaintiff's ability
to recover damages, costs or other pecuniary remedies which
may be finally awarded to the plaintiff.

• In case of infringement / passing off a trademark, a criminal complaint

can also be filed.
 Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.
• landmark judgment in relation to passing off of
unregistered trademarks
• laid down essential factors to be considered for
determining “deceptive similarity”:
I. The nature of marks
IMPORTANT II. The extent of similarity between the competing
CASELAWS marks – phonetic and visual similarity
III. Nature of goods
IV. Area where the goods are used
V. The similarity in the goods in relation to
effectiveness, performance, nature etc.
VI. The target consumers of the goods, their
intelligence and the requisite degree of care that
needs to be taken
 • Nandhini Deluxe v. Karnataka Co-operative Milk Producer
Federation Ltd. - Registering a mark in a particular class is no
assurance that a competing mark will not be allowed in the
same class

• Phonepe Private Limited v. Ezy Services and Ors. - Recognized

the “rule of dominant feature”

IMPORTANT • Cadila Healthcare Ltd. v. Aureate Healthcare Pvt. Ltd. and Ors.
- Upheld the “anti-dissection rule” by holding that, while
CASELAWS examining the question of misrepresentation or deception, the
comparison must be made between the two trade marks as a
whole

• South India Beverages Pvt. Ltd. v. General Mills Marketing Inc.

- the Court observed that the principle of anti- dissection and
identification of ‘dominant mark’ are not antithetical to one
another and if viewed in a holistic perspective, the said
principles rather complement each other
Thank you