CHAPTER-2

CATEGORIES OF INTELLECTUAL
PROPERTY

Intellectual Property (IP) is a vast field comprising of

technology-led inventions, work of artisans, novel Industrial
Designs, unique brands of commercial items, and Traditional
Knowledge being practised continuously over centuries for the
production of goods (carpets, textiles, food products, etc.). In order
to understand the extensive field of IP, it has been divided into
various categories. In India, these categories include Patents,
Copyright and Related Rights, Trademark, Trade Secrets, Industrial
Designs, Geographical Indications and Semiconductor Integrated
Circuits Layout Designs. Each of these categories is described in the
following sections.

2.1. Patents

A patent is an exclusive right granted

Invention is the
for an innovation that generally provides a
creation of a new
new way of doing something or offers a
idea or concept.
new technical solution to a problem. The
Innovation is the
exclusive right legally protects the
process of translating
invention from being copied or reproduced
an invention into
by others. In return, the invention must be
commercial entity or
disclosed in an application in a manner
widespread use.
sufficiently clear and complete to enable it
to be replicated by a person with an
ordinary level of skill in the relevant field.
2.1.1. Conditions for Obtaining a Patent Protection
There is a set criterion, as provided in Section 2(1)(j) of the
Patents Act, 1970, which must be fulfilled for a product or a process
to qualify for the grant of a patent. The criterion encompasses:
 Novelty - Not part of ‘State of the Art’. The innovation claimed
in the patent application is new and not known to anybody in

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 the world. In other words, the innovation is a) not in the
knowledge of the public, b) not published anywhere through
any means of publication and c) not be claimed in any other
specification by any other applicant.
 Inventive step - Not obvious to the person (s) skilled in the art.
The innovation is a) a technical advancement over the existing
knowledge, b) possesses economic significance and, c) not
obvious to a person skilled in the concerned subject.
 Capable of industrial application - For the benefit of society.
The invention is capable of being made or used in any industry.

2.1.2. To Patent or Not to Patent an Invention

Once an invention has been developed, the inventor has to
decide whether to exploit the invention for personal benefits as
provided by the statutory laws of the country or put it in the public
domain. By and large, the inventor prefers the former option. Only a
miniscule of inventions are placed in the public domain without
claiming any benefits. In the latter case, anybody can exploit the
innovation for commercial or societal benefit without paying any
money to the inventor.
If the owner of an invention wishes to seek monetary gains, he
can choose from either of the two options, i.e. patenting or Trade
Secret. If the inventor is absolutely sure of maintaining the secrecy
of invention for a very long period (maybe 100 years or more) and
the probability of reverse engineering of the technology is nil or
very low, then the ‗Trade Secret‘ category is preferred. If the
invention has a short life span or can be kept secret only for a small
period of time (a couple of years or so) or the probability of reverse
engineering is high once the invention is in the public domain, then
the ‗patent‘ category is preferred.
2.1.3. Rights Associated with Patents
As per the Court of Law, a patent owner has the right to decide
who may or may not use the patented invention. In other words, the
patent protection provided by the law states that the invention
cannot be commercially made, used, distributed, imported, or sold
by others without the patent owner's consent. The patent owner may
permit other parties to use the invention on mutually agreed terms.
As a matter of fact, the patent rights are negative rights as the owner
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is restricting others from using the patent in any manner without his
prior permission. The patent holder may choose to sue the infringing
party to stop illegal use of the patent and also ask for compensation
for the unauthorized use.
2.1.4. Enforcement of Patent Rights
Enforcement is the process of ensuring compliance with laws,
regulations, rules, standards and social norms. Patent rights are
usually enforced by the judicial courts. The Court of Law has the
authority to stop patent infringement. However, the main
responsibility for monitoring, identifying and taking action against
infringers of a patent lies with the patent owner.
2.1.5. Inventions Eligible for Patenting
Patents may be granted for inventions/technologies in any field,
ranging from a paper clip or ballpoint pen to a nanotechnology chip
or a Harvard mouse (mouse with cancer genes).
It is a general belief that patents are awarded only to major
scientific breakthroughs. But, it is not true. In fact, the majority of
patents are granted to inventions displaying an improvement over
the existing invention. For example, many patents can be awarded
to a single molecule e.g. penicillins (an antibiotic that kills
microbes) and its derivatives. The derivatives are made by making
subtle changes in the structure of the penicillin resulting in
new/improved properties, such as acid stability or temperature
stability or killing a wide range of microbes (germs). The new
antibiotic molecules, known as second, third or fourth generation
penicillins can also be patented.
In our daily life, we use many patented items, such as
toothbrush, toothpaste, shoes, pen, eyeglasses, textiles, mobile
phones, wrist watch, bicycle, scooter, car, television, cold drinks,
beverages and many more. It is not uncommon that many products
contain several inventions (patents) e.g. the laptop computer
involves hundreds of inventions working together. Similarly, cars,
mobile phones and televisions have many patented components.
2.1.6. Non-Patentable Matters
In the ‗Patent Act, 1970, there are some exclusions (product and
processes) that cannot be patented, such as:
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 Invention contrary to public morality - a method for human
cloning, a method for gambling.
 Mere discovery - finding a new micro-organism occurring
freely in nature, laws of gravity.
 Mere discovery of a new form of a known substance - use of
aspirin for heart treatment. Aspirin was patented for reducing
fever and mild pains.
 Frivolous invention - dough supplemented with herbs, merely
changing the taste of the dough, 100 years calendar, bus timetable.
 Arrangement or rearrangement - an umbrella fitted with a
fan, a torch attached to a bucket.
 Inventions falling within Section 20(1) of the Atomic Energy
Act, 1962 - inventions relating to compounds of Uranium,
Beryllium, Thorium, Plutonium, Radium, Graphite, Lithium and
more as notified by the Central Government from time to time.
 Literary, dramatic, musical, artistic work - books, sculptures,
drawings, paintings, computer programmes, mathematical
calculations, online chatting method, method of teaching,
method of learning a language as they are the subject matter of
Copyright Act. 1957.
 Topography of integrated circuits - protection of layout
designs of integrated circuits is provided separately under the
Semiconductor Integrated Circuit Layout Designs Act, 2000.
 Plants and animals - plants and animals in whole or any part
including seeds, varieties and species and essentially biological
processes for the production or propagation of plants and
animals are excluded from the scope of protection under patents.
 Traditional knowledge - an invention which in effect is
traditional knowledge or which is an aggregation or duplication
of known properties of traditionally known components are also
excluded.
2.1.7. Patent Infringements
Once the patent is granted to the applicant, he owns the right to
use or exploit the invention in any capacity. If anyone uses the
invention without the prior permission of the owner, that act will be
considered an infringement of the invention. Infringements can be
classified into two categories:

20
 Direct Infringement - when a product is substantially close to
any patented product or in a case where the marketing or
commercial use of the invention is carried out without the
permission of the owner of the invention.
Indirect Infringement - When some amount of deceit or
accidental infringement happens without any intention of infringement.
If such an unlawful act has been committed, the patentee holds
the right to sue the infringer through judicial intervention. Every
country has certain laws to deal with such unlawful acts. Following
reliefs are made available to the patentee:
 Interlocutory/interim injunction.
 Damages or accounts of profits.
 Permanent injunction.
It is pertinent to mention that the Central government always
holds the rights (Section 100 of the Patent Act, 1970, Rule 32 of the
Patent Rules, 2003) to use the invention in the case of national
emergency or other circumstances of extreme urgency after
notifying the owner.
2.1.8. Avoid Public Disclosure of an Invention before Patenting
Generally, an invention that has been either published or
publicly displayed cannot be patented, as the claimed invention will
lose the ‗Novelty‘ criterion. However, under certain circumstances,
the Patents Act provides a grace period of 12 months for filing a
patent application from the date of its publication in a journal or
presentation in a reputed scientific society or exhibition.
Sometimes, disclosure of an invention before filing a patent
application is unavoidable, e.g. selling your invention to a potential
investor or a business partner who would like to know complete details
of the invention in order to judge its commercial value. In such a case,
it is advisable to sign a Non-Disclosure Agreement (NDA) or any other
confidential agreement to safeguards your interest.
2.1.9. Process of Patenting
In India, the process of grant of a patent is a lengthy procedure
that may take anywhere 3-4 years or more. The major steps involved
in this process are listed in figure 2.1.

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 Figure 2.1: Flow chart of major steps involved
in the grant of a patent.

Filing of Application with IPO

https://ipindiaonline.gov.in/ePatentfiling/goForLogin/doLogin

Publishing

Examination

Grant of the Patent

2.1.9.1. Prior Art Search - Before an inventor embarks upon the

patent filing process, he has to ensure that his invention is ‗novel‘ as
per the criterion for the grant of a patent. For this, he has to check
whether or not his invention already exists in the public domain. For
this, he needs to read patent documents and Non-Patent Literature
(NPL), scientific journals/reports/magazines, etc. The information
lying in the public domain in any form, either before the filing of
the patent application or the priority date of the patent application
claiming the invention, is termed as Prior Art.
Conducting a prior art search before filing the patent has
advantages as it averts infringement, tracks research and
development and provides access to detailed information on the
invention. The prior art search is carried out on the parameters such
as novelty, patentability, state of the art, infringement, validity and
freedom to operate. The commonly used databases for prior art
search fall in two categories i.e. Patents Databases and NPL.

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Patents’ Databases
 Indian Patent Advanced Search System
(InPASS- http://ipindiaservices.gov.in/publicsearch/).
 Patentscope(WIPO- https://www.wipo.int/patentscope/en/).

Unpaid
 Espacenet(EU- https://worldwide.espacenet.com/patent/).
 USPTO(USA- https://www.uspto.gov/).
 Google Patents Advanced Search
(https://patents.google.com/advanced).
 Orbit Intelligence
(https://www.questel.com/business-intelligence-software/
orbit-intelligence/).

Paid
 Derwent Innovation
(https://clarivate.com/derwent/solutions/derwent-innovation/).
 PROQUEST
(https://about.proquest.com/search/?searchKeyword=patent+).

Non-Patent Literature (NPL)

 Scholarly publications: Handbooks, Textbooks, Withdrawn
Patents, Encyclopedias, Journals (IEEE, Research Gate,
Springer, Wiley Online Library, etc.), Dissertations, NCBI‘s
PubMed, Conference Proceedings, Technical Reports, Public
Conferences, etc.
 Industry/trade publications: Industry reviews and public
disclosures (Social media, YouTube, Books, Magazines,
Datasheets, Blueprints, etc.).
 Others: Newspapers, Websites, Technology blogs,
Researchers‘ websites, etc.
Although, majority of NPL data is available freely on the public
forum, some of the journals are paid and can be accessed after
paying the subscription. Major Patent Offices such as the United
States Patent and Trademark Office's (USPTO), European Patent
Office (EPO), Japan Patent Office (JPO), etc. are maintaining in-
house NPL databases to make patents examination more effective.
2.1.9.2. Choice of Application to be Filed - Once a decision has
been made to patent the invention, the next step is, what kind of
application needs to be filed i.e. provisional patent application or
complete (Final) patent application - generally, the provisional
patent application is preferred for the following reasons:

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 It is cheaper, takes less time, and involves fewer formalities.
 Any improvements made in the invention after the filing of the
provisional application can be included in the final application.
In other words, the provisional application does not require
complete specifications of the inventions. The application can
be filed even though some data is yet to be collected from
pending experiments.
 A provisional application allows you to secure a priority date
for the patent applied.
However, it is mandatory to file the complete patent application
within one year of the filing of the provisional application;
otherwise, the application stands rejected.
2.1.9.3. Patent Application Forms - As per the Patent Act, 1970
(Section 39) and the Patents Rules, 2003 (Rule 7, 54, 135 and sub-
rule (1) of rule 20, the application for the grant of patent is filed
using Form-1 (Fig. 2.2) and Form-2 (Fig. 2.3). The information
sought in Form-1 is general in nature i.e. Title of Application,
Names of Applicant(s) and Inventor(s), Type of Application
(Ordinary, Convention, PCT-NP (PCT- National Phase), Divisional,
Patent of Addition, etc.). Whereas Form-2 seeks technical
information and whether to file the provisional application or
complete the application. For ‗Provisional Application‘, only
‗Description of the Invention‘ and the ‗Abstract‘ is to be furnished.
Whereas, ‗Complete Application‘ requires ‗Description of the
Invention‘, ‗Abstract‘, ‗Claims‘ and the manner in which invention
has to be performed.
The ‗Claims‘ of the patent are a very crucial part of the
specifications because they define the actual boundary of the invention.
‗Claims‘ specify what is actually claimed by the invention and what is
being sought to be protected. It clearly describes what the patent does
and does not cover. The Claims are usually expressed as a declaration
of technical particulars articulated in legal terms. Claims can be
classified into two types a) Independent Claims (stand alone claim) and
b) Dependent Claims (dependent on independent claim). The Claims
must be drafted precisely and carefully in order to seek patent
protection and also to protect the invention against potential infringers.
Below mentioned are two important forms Form-1 and Form-2 for
filing the patent application (http://www.ip india.nic.in/writeread
data/Portal/IPORule/1_10_1_patents-amend ments-rules-2005.pdf).
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 Figure 2.2: Form-1 (application for the grant of a patent).
"FORM 1 (FOR OFFICE USE ONLY)
THE PATENTS ACT 1970 (39 of 1970) and
THE PATENTS RULES, 2003
APPLICATION FOR GRANT OF PATENT
(See section 7, 54 and 135 and sub-rule (1) of rule 20)
Application No.
Filing date:
Amountof Feepaid:
CBR No:
Signature:
1. APPLICANT'S REFERENCE /
IDENTIFICATION NO. (AS ALLOTTED BY
OFFICE)
2. TYPE OF APPLICATION [Please tick (1 ) at the appropriate category]

Ordinary ( ) Convention ( ) PCT-NP ( )

Divisional ( ) Patent of Divisional ( ) Patent of Divisional ( ) Patent of
Addition ( ) Addition ( ) Addition ( )

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3A APPLICANT(S)
Name in Full Nationality Countryof Address of the Applicant
Residence

House No.
Street
City
State
Country
Pin code
3B CATEGORY OF APPLICANT [Please tick ( ) at the appropriate category]

Natural Person ( ) Other than Natural Person

Small Entity ( ) Start-up ( ) Others ( )
4. INVENTOR(S) [Please tick (1 ) at the appropriate category]

Are all the inventor(s)

same as the applicant(s) Yes ( ) No ( )
named above?

If "No", furnish the details of the inventor(s)

26
 Country of
Name in Full Nationality Address of the Inventor
Residence
House No.
Street
City
State
Country
Pin code
5. TITLE OF THE INVENTION
IN/PA No.
6. AUTHORISED REGISTERED Name
PATENT AGENT(S)
Mobile No.
Name
Postal Address
7. ADDRESS FOR SERVICE OF APPLICANT Telephone No.
IN INDIA Mobile No.
Fax No.
E-mail ID

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 8. IN CASE OF APPLICATION CLAIMLNG PRIORITY OF APPLICATION FILED IN
CONVENTION COUNTRY, PARTICULARS OF CONVENTION APPLICATION

Application Name of the Title of the IPC (as classified in the

Country Filing date
number applicant invention convention country)

9. IN CASE OF PCT NATIONAL PHASE APPLICATION, PARTICULARS OF INTERNATIONAL

APPLICATION FILED UNDER PATENT CO-OPERATION TREATY (PCT)

International application number International filing date

10. IN CASE OF DIVISIONAL APPLICATION FILED UNDER SECTION 16, PARTICULARS OF

ORIGINAL (FIRST) APPLICATION
Original (first) application No. Date of filing of original (first) application
11. IN CASE OF PATENT OF ADDITION FILED UNDER SECTION 54, PARTICULARS OF MAIN
APPLICATION OR PATENT

Main application/patent No. Date of filing of main application

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 12. DECLARATIONS
(i) Declaration by the inventor(s)
(In case the applicant is an assignee: the inventors) may sign herein below or the applicant may upload the
assignment or enclose the assignment with this application for patent or send the assignment by post/electronic
transmission duly authenticated within the prescribed period).
I/We,the above named inventor(s) is/are the true & first inventor(s) for this Invention and declare that the
applicant(s) herein is/are my/our assignee or legal representative.
(a) Date
(b) Signature(s)
(c) Name(s)
(ii) Declaration by the applicant(s) in the convention country
(In case the applicant in India is different than the applicant in the convention country: the applicant in
the convention country may sign herein below or applicant in India may upload the assignment from the
applicant in the convention country or enclose the said assignment with this application for patent or send the
assignment by post/electronic transmission duly authenticated within the prescribed period)
I/we, the applicant(s) in the convention country declare that the applicant(s) herein is/are my/our assignee or
legal representative.
(a) Date
(b) Signature(s)
(c) Name(s) of the signatory
Source: http://www.ipindia.nic.in

29
 Figure 2.3: Form-2 (provisional/complete specifications).
FORM 2
THE PATENT ACT 1970
(39 of 1970)
&
The Patents Rules, 2003
PROVISIONAL/COMPLETE SPECIFICATION
(See section 10 and rule 13)
1. TITLE OF THE INVENTION
2. APPLICANT(S)
(a) NAME:
(b) NATIONALITY:
(c) ADDRESS:
3. PREAMBLE TO THE DESCRIPTION
PROVISIONAL COMPLETE

The following specification The following specification

describes the invention. particularly describes the
invention and the manner in
which it is to be performed.
4. DESCRIPTION (Description shall start from next page)
5. CLAIMS (not applicable for provisional specification. Claims
should start with the preamble — ‗l/we claim‘ on separate page)
6. DATE AND SIGNATURE (to be given at the end of last page of
specification)
7. ABSTRACT OF THE INVENTION (to be given along with
complete specification on separate page)
Note: -
 Repeat boxes in case of more than one entry.
 To be signed by the applicant(s) or by authorized registered patent
agent.
 Name of the applicant should be given in full, family name in the
beginning.
 Complete address of the applicant should be given stating the postal
index no. /code, state and country.
 Strike out the column which is/are not applicable
Source: http://www.ipindia.nic.in

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2.1.9.4 Jurisdiction of Filing Patent Application - India has four
offices for filing patent applications (Table 2.1). The applications
can be filed only in one of the offices based on the applicant‘s
residence or domicile or place of business or origin of the invention.
These are termed as jurisdictions to file patents.
Table 2.1: Jurisdiction to file a patent in India.

Region States Address

Haryana, Himachal Intellectual Property Office
Pradesh, Punjab, Building
Rajasthan, Uttar Plot No. 32, Sector 14,
Pradesh, Uttarakhand, Dwarka,
Northern Delhi and the Union New Delhi-110078
Territory of Phone: 011-28032491
Chandigarh, Jammu Fax: 011-28034301
and Kashmir and Email: [email protected]
Ladakh.
patent Office Intellectual
Andhra Pradesh,
Property Building
Karnataka, Kerala,
G.S.T. Road, Guindy,
Tamil Nadu, Telangana
Chennai-600032
Southern and the Union
Phone: 044-22505242
Territories of
Fax: 044-22502066
Pondicherry and
Email: chennai-
Lakshadweep
[email protected]
BoudhikSampada Bhawan,
Maharashtra, Gujarat,
Antop Hill,S. M. Road,
Madhya Pradesh, Goa
Mumbai - 400 037.
and Chhattisgarh and
Phone: 022- 24153651,
Western the Union Territories of
24148165
Daman and Diu &
Fax: 022-24130387
Dadra and Nagar
Email: mumbai-
Haveli
[email protected]

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 Intellectual Property Office
Building,
CP-2 Sector V, Salt Lake
City
Rest of Kolkata-700091
Remaining States Phone: 033-23679101,
India
033-23671987
Fax: 033-23671988
Email: kolkata-
[email protected]
Source: http://www.ipindia.nic.in/jurisdiction-of-patent-offices.htm

For a foreign applicant, the address for service in India or place

of business of his patent agent determines the appropriate Patent
Office for filing a patent application. In the case of joint
applications, all the applicants are bestowed with equal rights and
consideration.
2.1.9.5. Publication - Once the patent application has been filed at
the Regional Patent Office, the patent application is kept secret for
18 months in the Patent Office. After the expiry of 18 months (from
the date of filing of the application or the priority claimed date,
whichever is earlier), the application is published in the Official
Journal of Patent Office (http://www.ipindia.nic.in/journal-
patents.htm). The purpose of publishing the application is to inform
the public about the invention. The publication of an application is a
mandatory step.
2.1.9.6 Pre-grant Opposition - If anybody has an objection to the
invention claimed in the patent application, he can challenge the
application by approaching the Controller of Patents within 6
months from the date of publication. It is termed as Pre-grant
Opposition. Depending on the outcome of the case, the patent
application may be rejected or recommended for the next step, i.e.
patent examination.

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 Although the patent application is
kept secret for 18 months, but under Patentee: A person/
special circumstances, this period can Organization who
be reduced when the patentee/applicant owns the patent
(granted)
plans to sell or license the patent or seek
an investor). For this, the applicant has
to fill a Form-9 and submit it to the
Controller General.

2.1.9.7 Examination - Patent examination is a critical step in the

process of grant of a patent. All the important criteria (novel,
inventive step, etc.) are scrutinized by the professionals depending
on the content of the invention. Usually, the examiner raises certain
queries/doubts which need to be addressed by the inventors. Once
the examiner is satisfied with the answers received from the
inventors, the application is recommended for the grant of a patent.
It is pertinent to mention that a patent application is not examined
automatically after clearing the publication stage. The applicant or
his representative has to make a request for examination of the
patent by filing Form-18A and submitting the same within 48
months from the date of filing of the application.
2.1.9.8. Grant of a Patent - After fulfilling all the requirements for
the grant of a patent, including all objections/queries raised by the
‗Patent Examiner‘ and the public at large, the patent is granted to
the applicant. The granted patent is published in the Official Journal
of the Patent Office. This journal is published every Friday and
contains information related to patent applications published under
section (u/s) 11A, post-grant publication, restoration of patent,
notifications, list of non-working patents and public notices issued
by the Patent Office.

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 Figure 2.4: Flowchart for the process of filing a patent
application.

Source: https://www.invntree.com/ (slightly modified)

2.1.9.9. Validity of Patent Protection - The patent protection is

granted to an applicant for a limited period, generally 20 years,
starting from the date of filing of the application. Once a patent is
granted for an invention in India, the next vital step is to ensure that
it is renewed annually by paying Patent Renewal Fee as per Section
53, Rule 80 of the Indian Patents Act, till the expiry of the patent
grant period. Non-payment of Patent Renewal Fee might result in
the cancellation of the patent.
In some countries, patent protection may be extended beyond 20
years. The extension aims to compensate for the time expended on
the administrative approval procedure before products can be put on
the market. The time taken for this procedure means that the patent
owner may sometimes not be able to benefit from his right for a
considerable period after the grant of the patent.
2.1.9.10. Post-grant Opposition - Once the patent has been granted
by the Patent Office, it still can be challenged by anyone within one
year from the date of publication of the grant of the patent. The

34
granted patent can be challenged either via a Patent Office or in a
Court of Law. These bodies may invalidate or revoke a patent upon
a successful challenge by the interested party on the grounds
mentioned below:
 The applicant for the patent wrongfully obtained the invention
or any part of the invention.
 The invention claimed has been published before the priority
date.
 The invention claimed was publicly known/used before the
priority date.
 The invention claimed is obvious and does not involve an
inventive step.
 The subject of the claim is not patentable as per Chapter II of
the Patent Act, 1970.
 The details/specifications of the invention do not sufficiently
and clearly describe the invention.
2.1.10. Commercialization of a Patent
The patent owner may grant permission to an
individual/organization/industry to make, use, and sell his patented
invention. This takes place according to agreed terms and conditions
between the involving parties. A patent owner may grant a license
to a third party for the reasons mentioned below:
 The patent owner has a decent job e.g. university professor and
has no desire or aptitude to exploit the patent on his own.
 The patent owner may not have the necessary manufacturing
facilities.
 The manufacturing facility is not able to meet the market
demand.
 The patent owner wishes to concentrate on one geographic
market; for other geographical markets, he may choose to
license the patent rights.
Once the patent is granted, the patentee (person holding the
rights to the patent) enjoys the exclusive rights to use the patented
invention. Only the patentee has the right to licence or deal with the
35
patent for any deliberations. Although, the validity of the granted
patent is for 20 years (from the date of filing a patent application),
but the patentee is required to furnish information (Form-27), on an
annual basis relating to the commercialization/selling of the patent.
It is called as ‗Working/Licensing of the Patent‘.
The licensing of a patent can be exclusive or non-exclusive. In
an Exclusive Licence, the patent is sold to only one
individual/organization for a fixed time period. During this time
period, no other person or entity can exploit the relevant IP except
the named licensee. In Non-Exclusive Licence, a patentee can
sell his patent rights to as many individuals/parties as he likes.
If the patentee is not able to commercialize his patent within
three years from the date of the grant of a patent, any person may
submit an application to the Controller of Patents for grant of
Compulsory Licensing (of the patent), subject to the fulfilment of
following conditions:
 Reasonable requirements of the public concerning the patented
invention have not been satisfied.
 The patented invention is not available to the public at a
reasonable price.
 The patented invention is not worked in the territory of India.

2.1.11. Need for a Patent Attorney/Agent

In general, applicants can prepare their patent applications and
file them without assistance from a patent attorney. However, given
the complexity of patent documents, it is advisable to seek legal
assistance from a patent attorney/agent when drafting a patent
application. Furthermore, the legislation of many countries requires
that an applicant, whose ordinary residence or principal place of
business is outside the country, be represented by an attorney or
agent qualified in the country (which usually means an agent or
attorney who resides and practices in that country).
2.1.12. Can a Worldwide Patent be Obtained
There is no such term as ‗Universal Patent‘ or ‗World Patent‘ or
‗International Patent‘ as the patent rights are territorial. An
application for a patent must be filed with a Patent Office of the
36
country in which one wishes to seek patent protection.
Unfortunately, this option becomes laborious, cumbersome, time-
consuming and expensive if one wishes to file a patent application
in many countries. To ease out this issue, many Regional Offices
have been established which receive patent applications on behalf of
a group of nations e.g. European Patent Office and African Regional
Intellectual Property Organization. A single application is sufficient
to cover many nations that are members of a particular regional
office/organization. However, if one wishes to seek patent
protection in several countries worldwide, it is preferred to file an
international patent under the Patent Cooperation Treaty (PCT). The
only condition is that the applicant‘s country should be a member of
PCT. India, along with over 190 nations, is a member of PCT.
2.1.13. Do I Need First to File a Patent in India
Yes, in general, Indian residents are required to file the patent
application first in India. Subsequently, they may file for patent
protection in other countries. But for this, prior approval is needed
from the Patent Office. However, this approval can be waived off
under the following circumstances:
 The applicant is not an Indian resident.
 If 6 weeks have expired since the patent application was filed in
India by an Indian resident.
 If two or more inventors are working on an invention in a
foreign country and one of the inventors is an Indian resident.
The invention does not have a potential market in India and
hence does not wish to file the patent in India. In such a
scenario, the Indian resident has to seek Foreign Filing
Permission (FFP) from an Indian Patent Office.
 In case of international collaboration, if one part of the invention
originated in India and the inventor is an Indian resident, he has to
seek permission to file the patent outside India.
 If the invention is related to defense or atomic energy or utility
model, the inventor/s needs to seek permission from the Indian
Patent Office because inventions related to these domains are
not the subject matter of patentability in India.

37
2.1.14. Patent Related Forms
There are over 30 patent-related forms. Some of them are
mentioned below.
Table 2.2: List of important patent application forms.

Form No. Title of Form

1 Application for a grant of a patent

2 Provisional/Complete specifications

7 Notice of opposition on grant of a patent

7A For filing a representation opposing grant of a patent

17 Application for compulsory license

18 Request for examination of the application for patent

21 Request for termination of compulsory license

22 Application for registration of patent agent

27 Statement regarding the working of the patented

invention on a commercial scale in India

30 Miscellaneous form to be used when no other form is

prescribed
Source: http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_70_1_The-
Patents-Rules-2003-Updated-till-23-June-2017.pdf

2.1.15. Fee Structure

As per the patent Act, 1970 and The Patents Rules (1972), the
requisite fee has been specified based on the type of form/s to be
submitted to the Office (Table 2.3). Electronically filed applications
are 10% cheaper than physical filing.

38
 Table 2.3: Fee for obtaining a patent via electronic filing.
Small entity Others alone
alone or or with
Natural
with a natural
Item person/
natural person/
startup
person startup/
( )
/startup small entity
( ) ( )
Provisional/Complete
1,600 4,000 8,000
Specifications
Request for Early
2,500 6,250 12,500
Publication
Request for Examination 4,000 10,000 20,000
Express Request For
5,600 14,000 28,000
Examination
Renewal Fees (Annually)
3rd to 6th Year 800 2,000 4,000
6th to 10th Year 2,400 6,000 12,000
11th to 15th Year 4,800 12,000 24,000
16th to 20th year 8,000 20,000 40,000
Source: http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/ 1_11_1/
Fees.pdf

2.1.16. Types of Patent Applications

 Provisional Application - A patent application filed when the
invention is not fully finalized and some part of the invention is
still under experimentation. Such type of application helps to
obtain the priority date for the invention.
 Ordinary Application - A patent application filed with complete
specifications and claims but without claiming any priority date.
 PCT Application - An international application filed in
accordance with PCT. A single application can be filed to seek
patent protection and claim priority in all the member countries
of PCT.

39
 Divisional Application - When an application claims more than
one invention, the applicant on his own or to meet the official
objection on the ground of plurality may divide the application
and file two or more applications. This application divided out
of the parent one is known as a Divisional Application. The
priority date for all the divisional applications will be the same
as that of the main (the Parent) Application (Ante-dating).
 Patent of Addition Application - When an invention is a slight
modification of the earlier invention for which the patentee has
already applied for or has obtained a patent, the applicant can go
for ‗Patent of Addition‘, if the modification in the invention is
new. Benefit - There is no need to pay a separate renewal fee for
the ‗Patent of Addition‘, during the term of the main patent. It
expires along with the main patent.
 Convention Application - If a patent application has been filed
in the Indian Patent Office, and the applicant wishes to file the
same invention in the one or more Convention countries (e.g.
Paris Convention) by claiming the same priority date on which
application was filed in India, such an application is known as
Convention Application. The applicant has to file Convention
Application within 12 months from the date of filing in India to
claim the same priority date.
2.1.17. Commonly Used Terms in Patenting
There are certain terms that are commonly used in the field of
patenting, as listed in table 2.4.
Table 2.4: Commonly used terms in the domain of patenting.
S. No. Term Definition
1. Inventor Creator of an invention
Organization/individual/industry that files
2. Applicant
a patent application or applies for a patent
A person/organization who owns the
3. Patentee
patent (granted)
Organization/individual/industry which
4. Licensee obtains a license of the patent from the
Patentee for commercialization purpose

40
 A person in whose name patent has been
5. Assignee
assigned legally
The applicant is paying the annuity
6. In force (renewal fee) for the patent to keep it alive
(Active Patent)
The selling of a patent to an
Working of individual/party for commercial
7.
a Patent exploitation is called as working of a
patent

Patent Patent specification is a written

Specification description of the invention and the way
8.
of representation and process of making
and using the same
A ‗Priority Right‘ or ‗Right of Priority‘ is
Priority
9. a time-limited right, activated by the first
Right
filing of an application for a patent
The claimed date on which the first
10. Priority Date
application for the invention is filed
Claims can be defined as the scope of the
protection conferred by a patent, or the
Patent protection sought in a patent application.
11.
Claims The purpose of the claims is to define
which subject matter is protected by the
patent
National An application filed to obtain patents in
12. Phase different countries simultaneously based
Application on a single International/PCT application
The revocation means cancellation of the
Patent patent due to certain reasons, such as lack
13.
Revocation of patentability or wrongfully obtaining a
patent
Once a patent has been ceased (e.g. due to
Restoration non-payment of the fee) it can be restored
14.
of Patent within a permitted period by paying the
requisite fee

41
2.1.18. National Bodies Dealing with Patent Affairs
There are many departments/organizations/bodies dealing with
various aspects of patents, namely, the Indian Patent Office (IPO),
Department for Promotion for Industry and Internal Trade (DPIIT);
Technology Information, Forecasting and Assessment Council
(TIFAC) and National Research Development Corporation
(NRDC). Above mentioned organizations are discussed in detail in
chapter 5.
2.1.19. Utility Models
In many cases, a new invention involves an incremental
improvement over the existing products, but this technical
improvement is not sufficient enough to pass the stringent criterion
of ‗Novelty‘ and ‗Non-obviousness‘ set aside for the grant of a
patent. Such small innovations can still be legally protected in some
countries and termed as ‘Utility Models’ or ‘Petty Patents’ or
‘Innovation Patents’. In this case, the criterion of ‗Novelty‘ and
‗Non-obviousness‘ are diluted or relinquished. But the requirement
of industrial application or utility is the same as that for patents.
Utility Model is a helpful tool for Micro, Small and Medium
Enterprises (MSME) since the grant of a ‗Utility Model‘ is usually
less rigorous and involves minimal cost. MSMEs do not have deep
pockets to carry out intensive R&D leading to the grant of patents.
But their innovations are good enough for improving their
products/processes and bringing more financial rewards. Such
inventions pass the requirements set aside for Utility Models but not
for patents. The life of the Utility Model is less as compared to the
patents. It varies from 7-15 years in different countries.
Nearly 80 countries, including France, Germany, Japan, South
Korea, China, Finland, Russian Federation and Spain, provide
protection for Utility Models under their IPR laws. India till date
does not recognize utility patents. If these small patents are
recognised under IP protection in India, it will catapult the number
of patents (filed and granted) on annual basis.
2.1.20. Additional Information
 The patent system in India is governed by the Patents Act, 1970
(No.39 of 1970) as amended by the Patents (Amendment) Act,

42
 2005 and the Patents Rules, 2003. The Patent Rules are
regularly amended in accordance with the changing
environment, the most recent being in 2020.
 First patent filed in India - On 3rd March 1856, a civil
engineer and inventor named George Alfred DePenning of
Calcutta, India, filed the first petition for grant of Exclusive
Privileges (term used for patents at that time) under this Act for
his invention called ‘An Efficient Punkah-Pulling Machine’.
This patent was also first ever granted in India.
 As per the Budapest Treaty (1977), microorganisms, which are
a part of the patent disclosure procedure, must be deposited with
units of the International Depositary Authority (IDA).
Patents that have changed the world:
 Patent number: US 223 898. Edison‘s electric bulb (1880).
 The telephone (US 174 465): The first telephone was invented
and patented by Alexander Graham Bell in 1876. Bell went on
to cofound the American Telephone & Telegraph Company
(AT&T). Later, the company expanded to control all
telecommunications and became the world‘s most significant
industry.
 Maximum number of patents (9700) have been granted to a
Japanese Shunpei Yamazaki in a span of 49 years (1972-
December, 2020) at the rate of 196 patents per year.
 Maximum number of Patents (1299) granted to a person of
Indian origin is Gurtej Sandhu in a span of 30 years (1991-
December, 2020) at the rate of 43 patents per year.
Patent Status (India): The number of patent applications filed in
India is considerably low vis a vis many countries. However, during
10 years period (2010-20) an increase of nearly 30% and 86% was
observed in the number of patent applications filed and examined
respectively (Fig. 2.5). In case of patents granted, data of first three
years (2010-13) showed a dip in the numbers followed by a
significant rise (nearly six folds) in the ensuing years (2013-20). It
could be attributed to the increase in the number of patent
applications processed as the government hired more patent

43
examiners. The number of patent examined rose to 80,088 in 2019-
20 as compared to 11,208 in 2010-11.
Figure 2.5: Patents profile (India) for the period 2010-20.

Source: Annual Reports, Office of CGPDTM, Mumbai (2011-20)

(https://dipp.gov.in/sites/default/files/annualReport-English2020-21.pdf)

44
2.2 Copyrights and Related Rights

‗Copyrights‘ refer to the legal rights provided by law to the

original creator of the work in the fields of literature and computer
software. The ‗Related Rights‘ encompass the author‘s work in the
fields of dramatics, sound recording, film/video recordings,
paintings, architecture, etc. Copyrights and Related Rights are one
of the categories of IP and governed by the Copyright Act, 1957 of
India. This Act provides rights of reproduction, communication to
the masses, adaptation and translation of the work.
The words ‗author‘ and ‗work‘ need to be understood from the
perspective of Copyrights. The term ‘author’ refers to an individual
who develops the content (of work). The author can be a writer
(literary work), computer programmer (software), composer
(musical work), producer (cinema films, sound recording),
photographer (photos). The term ‘work’ is a task undertaken in the
fields of literature, dramas, music, artistic, cinematograph film and
sound recording.
2.2.1. Classes of Copyrights
In India, following classes of Copyrights exist:
 Literature: Books, Essays, Research articles, Oral speeches,
Lectures, Compilations, Computer programme, Software,
Databases.
 Dramatics: Screenplays, Dramas.
 Sound Recordings: Recording of sounds regardless of the
medium on which such recording is made e.g. a Phonogram and
a CD-ROM.
 Artistic: Drawing, Painting, Logo, Map, Chart, Photographs,
Work of Architecture, Engravings, and Craftsmanship.
 Musical: Musical notations, excluding any words or any action
intended to be sung, spoken or performed with the music. A
musical work need not be written down to enjoy Copyright
protection.
 Cinematograph Films: ‗Cinematograph Film‘ is a visual
recording performed by any medium, formed through a process

45
 and includes a sound recording. For example, Motion Pictures,
TV Programmes, Visual Recording, Sound Recording, etc.
2.2.2. Criteria for Copyright
To qualify for Copyright protection, a work must exist in some
physical (or tangible) form. The duration of the existence of the
physical form may vary from a very short period to many years.
Virtually any form of expression which can be viewed or listened to
is eligible to qualify as Copyright. Even hurriedly scribbled notes
for an impromptu speech are considered copyrightable material.
The Copyright work has to be expressed by the creator in his
frame of thought. In other words, the work has to be original i.e. the
author created it from independent thinking void of duplication.
This type of work is termed as an Original Work of Authorship
(OWA). It may appear similar to already existing works but should
not be the same. The original work may lack quality or quantity or
aesthetic merit or all these parameters; still, it will pass the test of
copyrightable work.
In addition to originality for the work, Copyright protection also
requires at least some creative effort on the part of the author.
There is no minimum limit for the extent of creativeness. It is a
subjective matter. The minimal level of creativity needed for
Copyright protection depends on the judgment of the evaluator
(adjudicated by the Office of Registrar of Copyright). As an
example, mere changing the dimensions of a book will not be
granted Copyright protection. Similarly, an address book of
alphabetically arranged telephone numbers does not qualify for
Copyright protection as it involves a straightforward alphabetical
listing of phone numbers rather than a creative selection of listings.
2.2.3. Ownership of Copyright
The Copyright laws clearly state the ownership of Copyright.
 The person who created the work is considered as the first
(original) holder (owner) of the Copyright.
 In case the author is an employee and has been contracted to do
the work by a proprietor (of the company/firm/society
/organization, etc.), the owner of the Copyright shall be the
proprietor.
46
 The government will be the primary owner of the government
work in the absence of any kind of arrangement.
 The person delivering a speech is the first owner of the
Copyright.
To obtain permission to use copyrighted material, a request for
the same should be made to the legal owner (of the copyrighted
material), which could be the original author, the legal heir (in case
of the death of the author), publisher, etc. The request must mention
the following:
 Title, author and/or editor, and edition.
 Precise material to be used.
 The number of copies.
 The purpose of the material e.g. educational, research, etc.
 Form of distribution e.g. hard copy to classroom, posted on the
internet.
 Whether the material is to be sold e.g. as part of a course pack.
2.2.4. Copyrights of the Author
The Copyrights of the creator/author are legally protected under
Section 14 of the Copyright Act, 1957. The content (i.e. work)
created by the author cannot be used or published by anyone
without the author‘s consent. Copyrights provide exclusive rights to
the author in the areas of publication, distribution, and usage. A
Copyright owner enjoys two types of rights i.e. Economic Rights
(or Proprietary Rights) and Moral Rights (or Personal Rights).
Economic Rights are associated with financial benefits accruing
from the sale of copyrights. As per the Act, Copyright owners can
authorize or prohibit:
 Reproduction of the work in any form, including printed
publications or sound recordings.
 Distribution of copies of the work.
 Public performance of the work.
 Broadcasting/communicating the work to the public.

47
 Translating the work into other languages.
 Adaptation of the work, such as converting a novel into a
screenplay.
Moral Rights include ‗Right of Paternity‘ and ‗Right of Integrity‘.
The ‗Right of Paternity‘ - even if the Copyright has been licensed to
another party, the original author of the work retains the right to
claim authorship i.e. the name of the author/s will remain even
though Copyrights have been transferred to another party e.g. a
book publisher. The ‗Right of Integrity‘- the original author has the
right to prevent misuse of the work e.g. alterations/additions/
deletions in work resulting in misrepresentation of the said work or
harming the honor and reputation of the author.
It is pertinent to mention that for a work, there can be more than
one rights holders, for instance, a musical sound recording has many
rights holders, such as the lyricist, music composer, singer,
musicians and sound recorders.
2.2.5. Copyright Infringements
As per the Copyrights Acts, 1957, the following acts are
regarded as an infringement of Copyrights:
 Making copies for sale or hire or selling or letting them for hire
without permission.
 Permitting any place for the performance of owned work (in
public) where such performance constitutes an infringement of
Copyright.
 Distributing infringing copies for trade or to such an extent to
affect the interest of the owner of the Copyright prejudicially.
 Public exhibition of infringing copies for trade purposes.
 Importation of infringing copies.
 Translating a work without the permission of the owner.
2.2.6. Liability of Owner of an Auditorium/Hall
The owner of an auditorium/hall is liable for punishment if he
knowingly allows his premises to be used for communication of
illegal copyright material (songs, music, dramas, etc.) to the public.

48
 If a person permits for profit any place to be used for
communicating the work to the public, where such communication
establishes an infringement of the Copyright unless he was not
aware of and had no reasonable ground for believing that such
communication to the public would be an infringement of Copyright,
he will be deemed to have committed an offence under the Copyright
Act.
2.2.7. Copyright Infringement is a Criminal Offence
According to Section 63 of the Copyright Act, 1957, if any
person knowingly infringes the Copyright, he qualifies for the
criminal offence. The punishment awarded for the infringement (of
Copyright) is imprisonment for six months with the minimum fine
of ₹ 50,000/-. In case of a second and subsequent conviction, the
minimum punishment is imprisonment for one year and a fine of
₹ 1,00,000. There is a dedicated IP division to deal with Copyright
cases. Also, there is a Copyright Board constituted by the Central
Government in 1958 to adjudicate certain claims about Copyright.
2.2.8. Copyright Infringement is a Cognizable Offence
A police officer (rank of a sub-inspector or higher) can
confiscate the infringed Copyright material without issuing a
warrant and produce the same in the court of law.
2.2.9. Fair Use Doctrine
Any person not possessing a valid license from the owner of the
Copyright is not entitled to exploit the said work. However, Section
52 of the Copyright Act, 1957, provides for certain exceptions to the
infringement of Copyright. As per the rule of law, Copyrighted
materials cannot be used by anybody without the proper consent of
the legal owners (of the Copyright).
However, limited use of Copyrighted materials for teaching and
research purposes is legally permitted, under ‗The Fair Use
Doctrine‘, which comprises of the four-part test:
 The character of the use - use of the work is purely
educational, non-profit and personal.
 Nature of the work - The use of work is factual in nature and
not imaginative.

49
 Amount of the portion to be used - permission is not needed if
only a small portion of Copyright protected material is to be
used. However, this parameter is debatable now.
 Impact of use on the value of the Copyrighted material - If a
small portion of the work is copied and is not affecting the
author‘s economic and moral rights, it will be excused from the
infringement.
Detailed information on the examples of the Fair Use Doctrine can
be accessed from the official website (http://copyright.gov.in/
exceptions.aspx). A few examples are listed below:
 If the Copyrighted work is used for personal use i.e. studies or
research.
 Quotation mentioned in the Copyrighted work.
 Reporting of current events in the media, such as newspapers,
magazines or radios/television.
 Reproduction of the work by teachers or scientific researchers.
 Performance is free of charge by government officials in the
performance of their duties e.g. reproduction of any work for a
judicial proceeding or a report of a judicial proceeding.
 Use of any work prepared by the Secretariat of a Legislature.
 Use of the work in a certified copy made or supplied in
accordance with any law for the time being in force.
 Making three or less than three copies of a book (including a
pamphlet, sheet of music, map, chart or plan).
 Bonafide religious ceremony, including a marriage function.
2.2.10. Copyrights and Internet
The twenty-first century is an era of digitization. The
Copyrighted data is quickly transmitted via the internet. This
method of data transmission has brought amendments to the existing
Copyright laws. One should be careful of Copyright/fair use
principles when downloading material from the internet. There is
growing concern about the ability to pull Copyrighted material from
the internet without permission. Note that material may have been
placed on the internet without the author‘s permission.

50
 In general, posting material on the internet by the Copyright
owner gives an internet user the right to use that material for his
personal use, but he cannot use the work for commercial purposes.
Electronic distribution of a Copyrighted work should mention the
statement that ―This work is protected by Copyright laws and is
provided for educational instruction only. Any infringing use may
be subject to disciplinary action and/or civil or criminal liability as
provided by law”.
As per Section 2(o) of the Copyright Act, 1957, ‗Literary Work‘
includes computer programmes, tables and compilations, including
computer databases. It is mandatory to supply ‗Source Code‘ and
‗Object Code‘ along with the application for registration of
Copyright.
2.2.11. Non-Copyright Work
The works not under the jurisdiction of Copyrights are as follows:
 The ideas, concepts, and principles themselves cannot be
protected under Copyright, only the form in which they are
expressed can be copyrighted.
 Facts, such as scientific or historical discoveries, are not
copyright protected. Any fact a person discovers in the course of
research cannot be Copyright protected. For example, an author
of a book on ‗Buddhism‘ takes ten-fifteen years to gather all the
necessary materials and information for his work. At a great
expense, the author travels to various museums, libraries and
excavations sites. However, after the book is published, anyone
is free to use the underlying facts, provided they express the
information on their own.
 Copyright does not protect titles, names, slogans, short phrases,
short word combinations, methods, or factual information.
 Certificates are not considered as Copyrightable subject matter
as there is not much scope for creativity.
 Digitally created works and Copyrighted works transformed
into a digital format and placed on the internet are Copyright
protected.
 The Copyright registration for a website, as a whole, is not
possible. However, different components/rudiments of a website
51
 can be granted Copyright registration e.g. computer
programmes/software, compilations including computer
databases (‗literary works‘); photographs, paintings, diagram,
map, chart or plan (‗artistic works‘); and works consisting of
music including graphical notation of such work (‗musical
works‘). However, a separate application for each component of
work has to be filed for seeking Copyright registration.
 A computer or mobile App qualifies for Copyright registration.
An Application is a complete, self-contained computer program
that is designed to perform a specific task. An App usually has
dynamic content and is designed for user interaction. It may be
used directly or indirectly in a computer or handheld electronic
device.
 If someone swipes your picture/song/video from the internet
and uses it for their purposes, it is a Copyright infringement. By
the way - the same is true if you nick some else‘s material for
your purposes.
2.2.12. Copyright Registration
It is not necessary to register a work to claim Copyright. Once a
work is created via any medium, the work receives automatic
Copyright safety. In other words, there is no formal request to be
submitted to the office of the Copyright, for acquiring Copyright.
Copyright registration does not confer any rights. It is merely a
prima facie proof of an entry in respect of the work in the Copyright
register maintained by the Registrar of Copyrights. The certificate of
registration serves as prima facie evidence in a court in cases of
disputes relating to ownership or creation of Copyright, financial
matters, transfer of rights, etc. It is advisable that the author of the
work registers for Copyright for better legal protection. In India,
Copyrights matters, including Copyright registration, are
administered under the Copyright Act, 1957 and Copyrights Rule,
2013. Below mentioned are prominent forms for copyright
registration (https://copyright.gov.in/).

52
 FORM – XIV
Application for Registration of Copyright

To

The Registrar of Copyrights,

Copyright Office,
BoudhikSampada Bhawan, Plot No. 32,
Sector 14, Dwarka, New Delhi-110078
Phone: 011-28032496

Sir,

In accordance with section 45 of the Copyright Act, 1957 (14 of 1957), I hereby
apply for registration of Copyright and request that entries may be made in the
Register of Copyrights as in the enclosed statement of Particulars‘ sent
herewith.
I also send herewith duly completed the statement of further particulars relating
to the work.
In accordance with rule 70 of the Copyright Rules, 2012, I have sent by pre-paid
registered post copies of this letter and of the enclosed statement(s) to the other
parties concerned, as shown below:

Names and addresses of the parties Date of Dispatch

1 2

The prescribed fee has been paid, as per details below:

Communications on this subject may be addressed to:
I hereby declare that to the best of my knowledge and belief, no person, other
than to whom a notice has been sent as per paragraph 2 above has any claim or
interest or dispute to my Copyright of this work or to its use by me.
I hereby verify that the particulars given in this Form and the Statement of
Particulars and
Statement of Further Particulars are true to the best of my knowledge, belief and
information and nothing has been concealed therefrom.
List of enclosures:

Yours faithfully

(Signature of the Applicant)

Place: ………………….
Date: ……………………
Source: https://copyright.gov.in/frmDownloadPage.aspx

53
 STATEMENT OF PARTICULARS
S.No. Attributes Details
1. Registration number (To be filled in the Copyright
Office)
2. Name, phone, email, address and nationality of the
applicant
3. Nature of the applicant‘s interest in the Copyright
of the work
4. Class and description of the work
5. Title of the work
6. Language of the work
7. Name, address and nationality of the author and, if
the author is deceased, the date of his decease
8. Whether work is published or unpublished
9. Year and country of first publication and name,
address and nationality of the publishers
10. Years and countries of subsequent publications, if
any, and names, addresses and nationalities of the
publisher
11. Names, address and nationalities of the owners of
the various rights comprising the Copyright in the
work and the extent of rights held by each, together
with particulars of assignment and licenses, if any
12. Names, addresses and nationalities of other
persons, if any, authorized to assign or license the
rights comprising the Copyright
13. If the work is an ―artistic work‖, the location of the
original work, including name, address and
nationality of the person in possession of the work.
(In the case of an architectural work, the year of
completion of the work should also be shown)
14. If the work is an ‗artistic work‘ which is used or is
capable of being used in relation to any goods or
services, the application shall include a certificate
from the Registrar of Trade Marks in terms of the
proviso to sub-section (1) of section 45 of the
Copyright Act, 1957.]

54
 15. If the work is an ―artistic work‖ whether it is
registered under the Designs Act 2000. If yes give
details.
16. If the work is an ―artistic work‖ capable of being
registered as a design under the Designs Act 2000,
whether it has been applied to an article though an
industrial process and , if yes, the number of times
it is reproduced.
17. Remarks, if any
Place:(Signature of the Applicant)
Date:
Source: https://copyright.gov.in/frmDownloadPage.aspx

55
 STATEMENT OF FURTHER PARTICULARS
(For Literary, including Software, Dramatic, Musical and Artistic
Works only)

S.No. Attributes Details

1. Is the work to be registered
a) An original work?
b) Translation of a work in the public domain?
c) A translation of a work in which Copyright
subsists?
d) An adaptation of a work in the public domain?
e) An adaptation of a work in which Copyright
subsists?

2. If the work is a translation or adaptation of a work in

which Copyright subsists:
a) Title of the original work.
b) Language of the original work.
c) Name, address and nationality of the author of
the original work and, if the author is deceased,
the date of his decease.
d) Name, address and nationality of the publisher,
if any, of the original work.
e) Particulars of the authorization for a translation
or adaptation including the name, address and
nationality of the party authorizing.
3. Remarks, if any.
Place: (Signature of the Applicant)

Date:
Source: https://copyright.gov.in/frmDownloadPage.aspx

56
2.2.13. Judicial Powers of the Registrar of Copyrights
The Registrar of Copyrights has the powers of a civil court
when trying a suit under the Code of Civil Procedure in respect of
the following matters:
 Summoning and enforcing the attendance of any person and
examining him on oath.
 Requiring the discovery and production of any document.
 Receiving evidence on affidavit.
 Issuing commissions for the examination of witnesses or
documents.
 Requisitioning any public record or copy thereof from any court
or office.
 Any other matters which may be prescribed.
A duly filled application (Form XIV) is submitted to the
Copyright Office at the following address: The Registrar of
Copyright, Plot no. 32, Boudhik Sampada Bhawan, Sector 14,
Dwarka, New Delhi - 110075. The application can be submitted by
post or online registration through the ‗E-filing facility‘
(www.copyright.gov.in). Any person who is either an author of the
work or assignee of the concerned work can file an application for
Copyright.
Usually, it takes around 2-3 months to get the work registered
by the Copyright Office. After applying, there is a mandatory
waiting period of 30 days. If any person has any objection to the
claim/s made in the application, he can contact the office of the
Registrar of Copyrights. After giving an opportunity of hearing to
both the parties, the Registrar may decide the case in favour or
against the author of the work. Once the objections (if any) are
cleared, the application is evaluated by the examiners. If any
doubts/queries are raised, the applicant is given ample time (around
45 days) to clear these objections. The elements included in
Copyright filing to grant are depicted below in the flow chart:

57
Figure 2.6: Flow chart for the process of Copyright registration.

Source: https://copyright.gov.in/frmWorkFlow.aspx (slightly modified)

58
 Table 2.5: Important forms pertaining to Copyrights.

S. No. Name of Form Form No.

Application form for registration of
1. Form-XIV
Copyright
Application form for registration of
2. Form-XV
changes in particulars of Copyright
3. Registration of a Copyright Society Form-VIII
Application form for the relinquishment
4. Form-I
of Copyright
Source: http://Copyright.gov.in/frmformsDownload.aspx

2.2.14. Fee Structure

For each work, a separate application form needs to be
submitted, along with the requisite fee. The fee is not reimbursable
in case the application for registration is rejected.
Table 2.6: Fee structure for Copyrights.
Attribute Fee (₹ )
For an application for registration or Copyright 500/- per
Literary, Dramatic, Musical or Artistic work work
For an application for registration of Copyright in
5,000/-
a Cinematograph Film
For an application for registration of Copyright in
2,000/-
a Sound Recording
Provided that in respect of a Literary or Artistic
work which is used or is capable of being used in 2,000/-
relation to any goods or services
Making any change in Literary, Dramatic,
200/-
Musical or Artistic work
Provided that in respect of a Literary or Artistic
work which is used or is capable of being used in 1,000/-
relation to any goods or services

59
 For an application for registration of change in
particulars of Copyright entered in the Register 2,000/-
of Copyrights in respect of Cinematograph Film
For an application for registration of changes in
particulars of Copyright entered in the Register 1,000/-
of Copyrights in respect of Sound Recording

For an application for prevention of importation

of infringing copies per place of entry 1,200/-

Source: http://Copyright.gov.in/frmFeeDetailsShow.aspx

2.2.15. Copyright Symbol

It is not necessary to place the Copyright symbol © with your
name and ‗year created‘ near your published or printed materials -
but if you do, it‘s easier to nail someone for infringement on your
Copyright if you go to court. The important things which may be
mentioned as a Copyright mark on Copyright creation are:
 The Copyright symbol © (the letter C in a circle), or the word.
‗Copyright‘, or the abbreviation ‗Copr.‘
 In the case of compilations or derivative works incorporating
previously published material, the year with the date of the first
publication of the compilation or derivative work should be
mentioned. The year date may be omitted for pictorial, graphic,
sculptural work, greeting cards, postcards, stationery, jewellery,
dolls and toys.
 The name or the abbreviation by which the name can be
recognized of the owner of the Copyright, or a generally known
alternative designation of the owner can be mentioned.
 The elements for sound recordings generally require the same
three elements, except the symbol is ℗ (the letter P in a circle)
instead.
2.2.16. Validity of Copyright
In general, the validity of Copyright is for 60 years. This period
starts either from the year after the death of the author (in case of

60
literature, dramatic, musical and artistic works) or from the date of
publication of the work (in case of cinematograph films, sound
recordings, photographs, posthumous publications, works of
government and works of international organisations).
2.2.17. Copyright Profile of India
A comparative five years (2015-20) study revealed a gradual
increase in the number Copyright applications in the first four years
of the study, with a maximum number of applications (21,905)
recorded in the 2019-20 period (Fig. 2.7). The number of
applications examined was maximum (34,388) in 2017-18.
However, it tapered down to 22,658 in 2018-19 and 19,460 in 2019-
20. A similar trend was observed in the number of Copyright
registrations, with a peak (19,997) observed in 2017-18.

Figure 2.7: Copyrights profile (India) for the period 2015-20.

Source: Annual Reports, Office of CGPDTM, Mumbai (2011-20)

(https://dipp.gov.in/sites/default/files/annualReport-English2020-21.pdf)

2.2.18. Copyright and the word ‘Publish’

A work is considered published when it is in the public domain
on an unrestricted basis. For example, a person writes an article
called ‗Life in Himalayas‘ and distributes it to a few individuals
and/or societies/organizations with a restriction not to disclose the
contents of the article. ‗Life in Himalayas‘ has not been ―published‖

61
in the Copyright sense. If the author removes the condition of non-
disclosure or posts of this article on the internet (i.e. public domain),
it would be considered as published. It is to be noted that both
published and unpublished works can be registered under
Copyright.
2.2.19. Transfer of Copyrights to a Publisher
The original authors of the Copyrighted work may not have the
wherewithal to widely publicise their work. Usually, they transfer
their rights to publishers for financial benefits, which could be a
one-time lump sum amount or royalties or a combination of the two.
However, transferring Copyrights unconditionally to the publishers
(or anybody else) may have some repercussions for the owner of the
Copyright. A publisher may prevent author/s from displaying their
articles on the institute‘s websites. The new owner of Copyright
may not even allow the author to revise his work. In other instances,
a publisher might print an insufficient number of hard copies and
also does not show interest in uploading the soft copy of the work
on the internet. Hence, one must be careful in signing an agreement
with the publishers. The author may not transfer all the legal rights
bestowed upon him as an author. An agreement may be signed
permitting only the print and sale of hard copies by the publishers
while retaining digital rights for the said work. An author may also
put a time limit for the printing and sale of the books/articles, etc.
Before the digital era, authors used to rely completely on
publishers for the dissemination of their work. However, in the
internet era, the dependency on publishers has almost diminished.
The author is in a position to bypass the publishers and bring his
work in to the public domain. But this freedom cannot be enjoyed
by those who are already under the publishing contract.
Even though the author has completely and exclusively licensed
out his work, the Copyright Act has a provision under ‘termination
of transfer’ to reclaim his Copyright. Under this provision, certain
Copyright agreements can be terminated after 35 years of the
agreement. This statutory termination right applies even though it is
not incorporated in the agreement. It is strongly advised that authors
must apply their mind while signing the Copyright agreement.

62
2.2.20. Copyrights and the Word ‘Adaptation’
In the world of Copyright, the word ‗Adaptation‘ signifies the
creation of a similar work based upon contemporary work. The
Copyright Act defines the following actions as adaptations:
a) Transformation of a dramatic work into a non-dramatic work.
b) Changing a literary or artistic work into a drama.
c) Re-arrangement of a literary or dramatic work.
d) Depiction through pictures of a literary or dramatic work.
e) The making of a cinematograph film of a literary or dramatic or
musical work.
2.2.21. Copyrights and the Word ‘Indian Work’
‗Indian work‘ means a literary, dramatic or musical work provided
 The author of the work is an Indian citizen.
 The work is first published in India.
 In the case of an unpublished work, at the time of the making of
the work, the author of the work was a citizen of India.
2.2.22. Joint Authorship
‘Work of Joint Authorship‘ means a work produced by the
collaboration of two or more authors in which the contribution of
one author is not distinct from the contribution of the other author or
authors.
2.2.23. Copyright Society
Many a time, authors and other owners of Copyrights are either
unable or lose track of all the uses of their work, including the
collection of royalties, infringement issues, etc. To overcome these
hurdles, Copyright Societies have cropped up. As per Section 33 of
the Copyright Act, 1957, a Copyright Society is a registered
collective administration society formed by authors and other
owners of the Copyright. Society can perform the following
functions:
 Keep track of all the rights and infringements related to their
clients.

63
 Issue licences in respect of the rights administered by the
society.
 Collect fees in pursuance of such licences.
 Distribute such fees among owners of Copyright after making
deductions for the administrative expenses.
A Copyright Society can be formed by a group of seven or more
copyright holders. The term of registration of a Copyright Society is
for five years. The registered Copyright Societies in India are:
 Society for Copyright Regulation of Indian Producers for Film
and Television (SCRIPT) 135 Continental Building, Dr. A.B.
Road, Worli, Mumbai 400 018, (for cinematograph and
television films).
 The Indian Performing Right Society Limited (IPRSL), 208,
Golden Chambers, 2nd Floor, New Andheri Link Road, Andheri
(W), Mumbai- 400 058 (for musical works).
 Phonographic Performance Limited (PPL) Flame Proof
Equipment Building, B.39, Off New Link Road, Andheri
(West), Mumbai 400 053 (for sound recordings).
2.2.24. Copyright Board
The Copyright Board is a regulatory body constituted by the
government, to perform judicial functions as per the Copyright Act
of India. The Board comprises of a Chairman and members (2-14)
to arbitrate on Copyright cases. The Chairman of the Board is of the
level of a judge of a High Court. As per the Act, the Board has the
power to:
 Hear appeals against the orders of the Registrar of Copyrights.
 Hear applications for rectification of entries in the Register of
Copyrights.
 Adjudicate upon disputes on the assignment of Copyrights.
 Grant compulsory licences to publish or republish works (in
certain circumstances).
 Grant compulsory licence to produce and publish a translation of
a literary or dramatic work in any language after seven years
from the first publication of the work.

64
 Hear and decide disputes as to whether a work has been
published or about the date of publication or the term of
Copyright of a work in another country.
 Fix rates of royalties in respect of sound recordings under the
cover-version provision.
 Fix the resale share right in original copies of a painting, a
sculpture or a drawing and original manuscripts of a literary or
dramatic or musical work.
2.2.25. Copyright Enforcement Advisory Council (CEAC)
In 1991, the Government set up a CEAC to review the progress
of enforcement of the Copyright Act periodically and advise the
Government regarding measures for improving the enforcement of
the Act. The term of the CEAC is three years. The CEAC is
reconstituted periodically after the expiry of the term.
2.2.26. International Copyright Agreements, Conventions and
Treaties
Any creative work is not protected and enforced automatically
worldwide because Copyright laws are territorial by nature i.e.
Laws are valid only in the country in which they have been created.
To secure protection to Indian works in foreign countries, the author
needs to apply separately to each country or through dedicated
international ‗Conventions on Copyright and Neighbouring (related)
Rights‘, provided a country is a member of such Conventions. India
is a member of the following Conventions:
 Berne Convention for the Protection of Literary and Artistic
Works, 1886. (https://www.wipo.int/treaties/en/ip/berne/).
 Universal Copyright Convention, 1952.
(http://www.unesco.org/new/en/culture/themes/creativity/creati
ve-industries/copyright/universal-copyright-convention/).
 Rome Convention for the Protection of Performers, Producers
of Phonograms and Broadcasting Organizations, 1961.
(https://www.wipo.int/treaties/en/ip/rome/).
 Multilateral Convention for the Avoidance of Double Taxation
of Copyright Royalties, 1979.
(https://treaties.un.org/doc/Treaties/1979/12/19791213%2009-
65
 00%20AM/Ch_XXVIII_01_ap.pdf).
 Trade-Related Aspects of Intellectual Property Rights (TRIPS)
Agreement, 1995.
(https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm).
In India, Copyrights of foreign authors, whose countries are
members of the Berne Convention for the Protection of Literary and
Artistic Works (1888), Universal Copyright Convention (1952) and
the TRIPS Agreement (1995) are protected through the International
Copyright Order.
2.2.27. Interesting Copyrights Cases
David vs. Macaques, Indonesia, 2011 - In 2011, a UK-based
photographer David Slater put his camera on a tripod in the wildlife
sanctuary to click the photograph of Macaques monkeys. The
Macaques were very curious about the equipment and they found
the flashlight fascinating. One monkey clicked a selfie photograph
which became very famous and legally controversial on the matter
of Copyright. Theoretically, the monkey is the holder of Copyright
as he clicked the photo. Practically, David Slater was the claimant
of the Copyright. The dispute entered judicial quarters between
People for the Ethical Treatment of Animals (PETA) and David
Slater. Now, the settlement has been concluded. The photographer
i.e. David Slater withholds the Copyright of the picture for having a
substantial contribution, but he would pay 25% of the royalty share
to the wildlife sanctuary where the monkey lives (https://www.
wipo.int/ wipo_magazine/en/2018/01/article_0007.html).
‘Happy birthday to you’ case law - According to the Guinness
World Records, 1998, it is the most recognized song in the English
language. The melody of ‗Happy Birthday to You‘ originates from
the song ‗Good Morning to All‘, which has traditionally been
attributed to American Sisters, namely Patty Smith Hill and Mildred
J. Hill, in 1893. The sisters composed the melody of ‗Good Morning
to All‘ to make it more interesting for the children. In 1935, Summy
Company registered the Copyright on the Piano Setting on the Song.
In 1999 Warner/Chappell acquired the company and started taking
royalty for the happy birthday song and earned a huge amount.
After mediation by the Federal court, Warner Music, through its
publishing subsidiary Warner/Chappell, agreed to pay the settlement

66
to a class of ‗thousands of people and entities‘ who had paid licensing
fees to use the song since 1949 because only the melody was registered
and not the lyrics. Now the song is in the public domain.
Amitabh Bachchan to lose Copyrights over his father’s works in
2063 - Father of renowned actor Mr. Amitabh Bachchan, (late)
Shree Harivansh Rai Bachchan was a noted poet and Hindi writer.
His most famous work was Madhushaala (1935). He was the
recipient of the Sahitya Akademi award and the Padma Bhushan. He
also did Hindi translations of Shakespeare‘s Macbeth and Othello.
He passed away on 18th January 2003, at the age of 95. As per the
Copyright Act, 1957, the rights over his work will be completed in
the year 2063 (rights remain with the author for his lifetime plus 60
years).

67
2.3 Trademark
In simple language, a Trademark (or Trade Mark) is a unique
symbol which is capable of identifying as well as differentiating
products or services of one organization from those of others. The
word ‗Mark‘ stands for a sign, design, phrase, slogan, symbol,
name, numeral, devise, or a combination of these. Essentially, the
Trademark is anything that identifies a brand to a common
consumer.
2.3.1. Eligibility Criteria
For goods/services to be legally classified as Trademark, they
need to pass the following conditions:
 Distinctiveness - The goods and services for which the
protection is sought should possess enough uniqueness to
identify it as a Trademark. It must be capable of identifying the
source of goods or services in the target market.
 Descriptiveness - The Trademark should not be describing the
description of the concerned goods or services. Descriptive
marks are unlikely to be protected under Trademark law.
However, descriptive words may be registered if they acquire
―secondary meaning‖, such as the brand name ‗Apple‘ is used
by a USA based multinational company that manufactures
electronic gadgets.
 Similarity to the prior marks - The mark should be unique
and should not be having similarity to the existing marks.
2.3.2. Who Can Apply for a Trademark
Any person who is a proprietor of the Trademark is eligible to
apply for registration of Trademark. The mark can be filed
collectively by two or more applicants and for that purpose, support
documents need to be submitted. An organization or association can
file for the collective mark and the same can be used by its
members. The most appropriate example for this mark is the
‗Reliance‘ symbol, which indicates all products falling under the
organization.

68
2.3.3. Acts and Laws
In India, Trademarks are governed under The Trademarks Act, 1999
(http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trad
e-marks-act.pdf).The Trademark rules are governed by Trademarks
Rules, 2002, (http://www.ipindia.nic.in/writeread data/Portal/IPO
Rule/1_56_1_1_59_1_tmr_rules_2002_1_.pdf). The Acts and Rules
have been amended from time to time. The latest amendments were
done in 2010 and 2017 for Trademarks Acts and Trademarks,
respectively.The administration of matters pertaining to Trademarks
is carried out by the Office of CGDPDTM, GoI.
2.3.4. Designation of Trademark Symbols

TM
Represents that the Trademark is unregistered. This mark
can be used for promoting the goods of the company.
Represents that the Trademark is unregistered. This mark
SM
can be used for promoting brand services.
Represents a registered Trademark/Service. The applicant of
R
the registered Trademark is its legal owner.
2.3.5. Classification of Trademarks
Goods and Services under Trademarks are classified as per the
‗Nice Agreement‘ (1957) administered by WIPO. A total of 149
countries (84 state parties who are signatory to the Agreement and
65 additional states who are following this classification for the
Trademarks) and others (African Intellectual Property Organization,
African Regional IP Organization and Trademark Office of
European Union) are using the same Trademark classification.
Trademark classification comprises of 45 classes, out of which
34 are for goods and 11 are for services. (http://euipo.europa.eu/ec2/
static/html/nice-general-remarks-
en.html;jsessionid=8FBC790A663FAC9092ACCDD9ED1AC65E.e
c2t1). Two examples of the classes are:
Class 1 is for Chemicals for use in industry, science and
photography, agriculture, horticulture and forestry; Unprocessed
artificial resins, unprocessed plastics; Fire extinguishing and fire
prevention compositions; Tempering and soldering preparations;
Substances for tanning animal skins and hides; Adhesives for use in
industry; Putties and other paste fillers; Compost, manures,

69
fertilizers; Biological preparations for use in industry and science.
Class 45 is for legal services; Security services for the physical
protection of tangible property and individuals; Personal and social
services rendered by others to meet the individuals‘ needs.
The Vienna codification established under the Vienna
Agreement (1973) is an international classification of the figurative
elements of marks. The relevant Vienna code class can be
searched on the link: https://www.wipo.int/classifications/ nivilo/
vienna/index.htm?lang=EN#. The classification is used to divide all
figurative elements into categories (from 1 to 29), divisions (from 1
to 19) and sections (from 1 to 30). For example, the representation
of "a little girl eating" belongs to Category 2 (Human beings),
Division 5 (Children), Main Section 3 (Girls). If auxiliary sections
are used, the figurative element can be identified additionally with
the Auxiliary Section 18 (Children drinking or eating, Code A
2.5.18). The codification of this example will be then indicated as
2.5.3, 18 (main and auxiliary sections).
2.3.6. Registration of a Trademark is Not Compulsory
Although, registration of a Trademark is not compulsory,
registration provides certain advantages to the proprietor of the
Trademark, such as:
 Legal Protection – prevents the exploitation of the Registering
Trademark by other companies/organizations/individuals, without
proper authorization by the legal owner/s of the Trademark. In case
of legal suits, a registered Trademark can serve as a potent
evidence of the lawful proprietorship of the Trademark.
 Exclusive Right - grants the Trademark owner full rights to use
it in any lawful manner to promote his business.
 Brand Recognition - products/ services are identified by their
logo, which helps create brand value over time. A strong brand
is a huge pull for new customers and an anchor for existing
customers. Registering a Trademark early and using it will
create goodwill and generate more business for the brand
owner.
 Asset Creation - registered Trademark is an intangible property
of the organization. It can be used for enhancing the business of

70
 the company as well as drawing new clients and retaining old
one by the account of brand identification.
To find out more about Registered Trademarks in India, one
may look at http://www.ipindia.nic.in/writereaddata/Portal/ Images/
pdf/well-known-trademarks-updated-newone.pdf.
It is pertinent to mention that no legal course of action can be
taken against the unlawful use of an unregistered Trademark. For
unregistered marks (sometimes known as ‗Common Law
Trademarks‘, which are defined as the law rights which generally do
not require formal registration for enforcement) action can be
brought against any person for the passing off goods or services as
the goods or services provided by another person. In such cases, the
unregistered Trademarks have to prove the establishment of
goodwill or reputation connected with the goods or service.
2.3.7. Validity of Trademark
In India, a registered Trademark is valid for 10 years. The
period can be extended every 10 years, perpetually. As per the
Indian Trademarks Act, the renewal request is to be filed in the form
‗TM-R‘ within one year before the expiry of the last registration of
the mark.
2.3.8. Types of Trademark Registered in India
Trademark can be a word that must be able to speak, spell and
remember. It is highly recommended that one should choose the
Trademark like invented word, created words, and unique
geographical name. One should refrain from Trademarks like
common geographical name, common personal name and the
praising words which describe the quality of goods, such as best,
perfect, super, etc. To ensure all these characteristics in a
Trademark, it is suggested to conduct a market survey to ensure if a
similar mark is used in the market. Following are some examples of
the registerable Trademarks:
 Any name including personal or surname of the applicant or
predecessor in business or the signature of the person e.g. the
Trademark ‗BAJAJ‘ is named after industrialist Mr. Jamnalal
Bajaj.

71
 A word having no relevance to the product/services e.g.
Trademark ‗INDIA GATE‘ is being used for food grains and
allied products.
 Letters or numerals or any combination thereof e.g. ‗YAHOO‘
is the abbreviation of the phrase ‗Yet Another Hierarchical
Officious Oracle‘. It has now become a worldwide famous
Trademark.
Table 2.7: Some of the famous examples of Trademarks.
S. No. Type of the Mark Mark Company/Firm
1. Distinctive General Word ‗Apple‘ IT Company
2. Fanciful Designation ‗Kodak‘ Photograph Film
Distinctive Personal
3. ‗Ford‘ Automotive
Names
Financial
4. Device ‗Udhaar‘
Technology
5. Number ‗4711‘ Perfume
Knitwear
6. Picture Allegator
Manufacturing
Drink it to
7. Slogan Soft Drinks
believe it
Note: Trademark Registry will object to yet to be registered Trademark if it is
similar in looks or sound to the ones already registered e.g. a keyword like
Ford can have the following terms that are similar sounding: Foard, Phord,
Fordd, Forrd. In case one wishes to carry out a search (identical as well as
similarity), one may use the free government portal http://ipindiaservices.
gov.in/tmrpublicsearch/frmmain.aspx.

2.3.9. Trademark Registry

In India, the operations of Trademarks are carried out from five
cities i.e. Delhi, Mumbai, Ahmadabad, Kolkata, and Chennai. Each
city has been assigned a bunch of states (Table 2.8). The businesses
located in a particular state can only use the services of the assigned
Trademark Registration Office. In the case of foreign applicants,
jurisdiction is based on the location of the office of the applicant‘s
agent or attorney.

72
 Table 2.8: Territorial jurisdiction of Trademark
registration offices.
S. No. Office Location States
Maharashtra, Madhya Pradesh, Chhattisgarh
1. Mumbai
and Goa.
Gujarat and Rajasthan and Union Territories
2. Ahmedabad
of Daman, Diu, Dadra and Nagar Haveli.
Arunachal Pradesh, Assam, Bihar, Orissa,
West Bengal, Manipur, Mizoram,
3. Kolkata Meghalaya, Sikkim, Tripura, Jharkhand and
Union Territories of Nagaland, Andaman &
Nicobar Islands.
Jammu & Kashmir, Punjab, Haryana, Uttar
4. New Delhi Pradesh, Himachal Pradesh, Uttarakhand,
Delhi and Union Territory of Chandigarh.
Andhra Pradesh, Telangana, Kerala,
5. Chennai Tamilnadu, Karnataka and Union Territories
of Pondicherry and Lakshadweep Island.
Source: http://www.ipindia.nic.in/trade-marks.htm

2.3.10. Process for Trademarks Registration

To seek Trademark registration, the proprietor of the Trademark
has to fill an application. The proprietor may choose to hire an agent
to fill and submit the application on his behalf. Before applying, the
applicant needs to conduct a prior art search to ensure the
registration criteria.
2.3.10.1. Prior Art Search - Prior to applying for Trademark
registration, it is always prudent to check whether the intended
Trademark is already registered or not. Also, it is ascertained
whether the intended Trademark is not similar to the ones already
registered. The requisite search can be carried out using various
web portals, such as:
 Public search for Trademarks by CGPDTM
(https://ipindiaservices.gov.in/tmrpublicsearch/frmmain.aspx).
 WIPO‘s Global Brand Database

73
 (https://www3.wipo.int/branddb/en/).
 Trademark Electronic Search System (TESS).
(http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4805:za84
7u.1.1)
 MARKARIA Trademark Search Engine (https://trademark-
search.marcaria.com/en/asia/india-trademark-search).
 VAKIL Search (https://vakilsearch.com/trademark-
search/trademarks?search=bajaj).
Once the ‗prior art search‘ is over and the applicant is convinced
about the distinctiveness of the Trademark, he can proceed to fill the
application form for registration (TM-A). The application is filed at
the Trademarks Office subject to the jurisdiction of the applicant.
The steps involved in the registration process are as follows:
 After the prior art search has been conducted, the applicant can
apply for the registration on his own or with the help of a
certified agent.
 The application is assigned an application number within a few
days. The same can be tracked online at https://ipindiaonline.
gov.in/tmrpublicsearch/frmmain.aspx.
 The application is scrutinized by a professional examiner. If
everything is in order, the particulars of the application are
published in the official Trademark journal (http://www.ipindia.
nic.in/journal-tm.htm). Otherwise, he will send the objections to
the applicant for rectification. Based on the satisfactory response,
the examiner would recommend the revised application to be
published in the journal. If the application is rejected, the
applicant may approach the Intellectual Property Division to
challenge the rejection of an application by the examiner.
 Once the Trademark is published in the official journal, the
public has an opportunity to file an objection, if any, within 90
days. After hearing both the parties, the officer decides whether
to proceed further for the grant of Trademark or disallow the
grant of Trademark. In case of unfavourable outcome, the
applicant has the right to contest the decision in front of the
IPAB.

74
 Once the application has successfully completed all formalities,
a Trademark registration certificate is issued in the name of the
applicant.
Figure 2.8: Flow chart for the process of Trademark
registration.

Source: http://www.ipindia.nic.in/workflow-chart.htm (slightly modified)

One should keep in mind that while filing an application for the
registration of a Trademark, an English translation of the non-
English words has to be provided. If the applicant wishes to claim
the priority from an earlier-filed application, he has to provide
details like application number, filing date, country and
goods/services of that application.

75
 Table 2.9: Fee and forms related to Trademarks.
Form
Amount (₹ )
Entry No.
Contents
No. Physical
E-filing
Filing
Where the applicant is an
Individual / Start-up/Small 5,000 4,500 TM-A
1.
Enterprise.
In all other cases. 10,000 9,000
Opposition/Application for
Rectification of the
2. Register/Counter statement / 3,000 2,700 TM-O
Refusal or invalidation of a
Trademark.
For renewal of registration of a
3. 10,000 9,000 TM-R
Trademark.
On application to register a
subsequent proprietor in case of
4. 10,000 9,000 TM-P
assignment or transfer for each
Trademark.
Application for registration of
Registered User/Variation of
Registered User/Cancellation of
5. Registered Users and Notice of 5,000 4,500 TM-U
intention to intervene in
proceeding in
cancellation/variation.
Request for search and issue of
6. 10,000 9,000 TM-C
the certificate.
Application/Request for any
miscellaneous function in
7. respect of a Trademark 1000 9,000 TM-M
Application/
Opposition/Rectification.
On application for registration of
8. 5,000 4,500 TM-G
a person as a Trademark agent.
Source: http://www.ipindia.nic.in/form-and-fees-tm.htm

76
2.3.11. Important Queries/Facts About Trademarks
2.3.11.1. Can any correction be made in the application or register
Yes, The rectifications are possible, but the applicant has to ensure
that the corrections made in the Trademark do not alter its identity
significantly.
2.3.11.2. Can a registered Trademark be removed from the register
Yes, it can be removed if:
 Trademark was registered without any bona fide intention of
using it.
 If the Trademark is not being used for a continuous period of
5 years from the registration date or 3 months prior to filing
the application for registration.
 Registered Trademark was disallowed but inadvertently
existed in the official register.
 Trademark Registrar has the power to terminate a registered
Trademark on a suo moto basis.
2.3.11.3. Is the sound or smell registrable as a Trademark - Yes,
sound or smell is registrable as a mark, as long as it is distinct and
can be reproduced graphically. The Trademark, ‗4711 cologne‘ has
been registered as a chemical formula. The sound can be registered
as a Trademark, provided it can be recorded in MP3 format and
depicted graphically.
2.3.11.4. Can a registered user restrain the third party from using
an identical or similar mark which is not registered -
There is no clear cut answer for such situations. It depends on the
circumstances of the matter. But ordinarily, a registered user cannot
restrain the third party from using identical or similar marks if the
third party has been continuously using the mark concerning the
same goods or services from a date prior to the date of use of the
registered mark or date of registration.
According to the Trademarks Act, 1999, the rights and
protection in the form of remedies are not only to the registered
mark but also to the unregistered Trademarks. Although, a
registered Trademark has been given a statutory remedy under
section 28 of the Act, but 27(2) of the Act provides a remedy for an

77
unauthorized use of unregistered Trademark. Passing off is a
common law tort which is most commonly used to protect goodwill
that is attached to the unregistered Trademarks. The action of
passing off is available to both registered and unregistered
Trademarks, but a suit for infringement is available for only
registered Trademarks.
2.3.11.5. Seeking Trademark protection in a foreign country - To
file the Trademark in a foreign country, there are two options
available for the applicant. He can either file the Trademark
application with the Trademark Office of the country in which he
wishes to seek protection, or he can use WIPO‘s Madrid System
through which the registration can be filed in multiple countries by
claiming priority of one of the signatory countries. This priority has
to be claimed within six months of the first filing. The applicant can
file a single application for seeking protection in any number of
countries that are members of WIPO by paying a single set of fee.
List of jurisdictions that can be accessed through Madrid Protocol
for filing Trademark is available at http://www. wipo.i nt/
treaties/en/ShowResults.jsp?treaty_id=8.
2.3.12. Trademarks Statistics
Figure 2.9 represents the statistics for Trademarks (filed,
examined and registered) for the period 2010-20. During this period,
an increase of 95%, 65% and 154% was observed in the parameters
of trademarks filed, examined and registered, respectively. Overall,
a gradual increase was seen in the number of TM filed, but a zig-zag
curve was observed for the TM examined for the period 2010-16.
The highest number of TM applications (5,32,230) were examined
in 2016-17 followed by dip (nearly two folds) in the following year
(2017-18). The following two years (2018-20) showed some
recovery, with 3,38,551 applications examined in 2019-20. In case
of TM registration, first, five years (2010-15) showed a downward
trend. But, a significant leap of nearly four-folds was observed in
the next year i.e. 2016-17. The maximum number of TM (3,16,798)
were registered in the year 2018-19.

78
 Figure 2.9: Trademarks profile (India) for the period 2010-20.
TM FILED TM EXAMINED TM REGISTERED

550000
532230
500000
450000
400000
# tRADE mARKS

338576 348918
350000 272974
283060 338551
300000 278170 306259 337541
316798
250000 210501 294172
179317 194216 200005 267861
183588 300913
200000 250070
202385 203086
150000 205065
168026
100000
115472 116263
50000
67873 65045
51765 44361 41583
0
2 0 1 0-11 2 0 1 1-12 2 0 1 2-13 2 0 1 3-14 2 0 1 4-15 2 0 1 5-16 2 0 1 6-17 2 0 1 7-18 2 0 1 8-19 2 0 1 9-20

YEAR

Source: Annual Reports, Office of CGPDTM, Mumbai (2011-20)

(https://dipp.gov.in/sites/default/files/annualReport-English2020-21.pdf)

2.3.13. International Treaties and Conventions

There is a provision to file an international application for the
Trademarks to seek protection in other Convention countries. The
rules and regulations to file international applications in Convention
countries are concluded under the following treaties and agreements
administered by WIPO.
 The Madrid Agreement for International Registration of Marks
(1891) (wipo.int/treaties/en/registration/madrid/).
 The Nice Agreement for International Classification of Goods
and Services (1957).
(https://www.wipo.int/classifications/nice/en/index.html).
 The Trademark Law Treaty (TLT) (1994) (https://www.wipo.
int/ treaties/en/ip/tlt/summary_tlt.html).
 Vienna Agreement (1973) for the Classification of Figurative
Marks
(https://www.wipo.int/classifications/vienna/en/preface.html).

79
2.3.14. Famous Case Law:
Coca-Cola Company vs. Bisleri International Pvt. Ltd.
‗MAAZA‘, a popular mango fruit drink in India, is a registered
Trademark of an Indian company, Bisleri International Pvt. Ltd.
The company transferred the rights (formulation, IPR and goodwill,
etc.) to a beverage company, Coca-Cola, for the Indian Territory.
However, in 2008, the Bisleri Company applied for registration of
Trademark ‗Maaza‘ in Turkey and started exporting the product
with the mark ‗MAAZA‘. This was unacceptable to the Coca-Cola
Company and thus filed a petition for permanent injunction and
damages for passing-off and infringement of the Trademark.
It was argued on behalf of Plaintiff (Coca-Cola Company) that
as the mark ‗Maaza‘ concerning the Indian market was assigned to
Coca-Cola, and manufacture of the product with such mark, whether
for sale in India or for export, would be considered as an
infringement. After hearing both the parties, the court finally
granted an interim injunction against the defendant (Bisleri) from
using the Trademark MAAZA in India as well as for the export
market, which was held to be an infringement of Trademark.
2.4. Industrial Designs
The word ‗Design‘ is defined as the features of shape,
configuration, pattern, ornament or composition of lines or colours
applied to any article. The Design may be of any dimension i.e. one
or two or three dimensional or a combination of these. In addition, it
may be created by any industrial process or means, whether manual,
mechanical or chemical, separate or combined, which in the finished
article appeal to and is judged solely by the eye. But the word
‗Design‘ does not include any mode or principle of construction or
anything which is in substance a merely mechanical device.
The main object of registration of industrial Designs is to
protect and incentivize the original creativity of the originator and
encourage others to work towards the art of creativity.
2.4.1. Eligibility Criteria
The Design for which the protection is being sought must be
novel or original i.e., should not be disclosed to the public by prior

80
publication or by prior use or in any other way. The Design should
be significantly distinguishable from the already registered
Designs existing in the public domain.
2.4.2. Acts and Laws to Govern Industrial Designs
In India, Industrial Designs are governed under ‗The Designs
Act‘, 2000 (http://www.ipindia.nic.in/acts-designs.htm) and ‗Design
Rules‘, 2001 (http://www.ipindia.nic.in/rules-designs.htm), which
have been amended from time to time in 2008, 2013, 2014 and
2019. The Design should include the following characteristics:
 It should be novel and original.
 It should be applicable to a functional article.
 It should be visible on a finished article.
 There should be no prior publication or disclosure of the
Design.
A list of Industrial Designs can be accessed from
https://www.creativebloq.com/product-design/examples-industrial-
design-12121488. Some of the famous Industrial Designs are
mentioned below:
Coca-Cola Bottle - The contoured-shaped glass bottle of the Coca-
Cola Company is marvelled as a master showpiece in the field of
industrial design. It was designed in 1915 and is still a cynosure for
all eyes.
Piaggio Vespa - Piaggio is an Italian company famous for
manufacturing Vespa scooters. These scooters are sold worldwide
since 1940s. The structural design of the scooter is pleasing to the
eyes. This two-wheeler has a painted steel body concealing the
engine, driver‘s feet rest comfortably on a flat floorboard, the front
vertical portion comprising of a handle, breaks and speedometer has
ample space for hands‘ grip and also provides protection from
incoming wind air.
iPhone - It is a highly popular mobile phone manufactured by
American company ‗Apple Inc‘. The sleek, handy and rectangular
body is pleasing to the eyes. The corners are round and smooth. The
features, such as on/off and speech volume, are easy to operate.
Mini Cooper - Mini Cooper is an automobile car manufactured by

81
the British Motor Corporation in the later part of the 20th century. It
is a small size car. Its shape has been designed in a unique manner
so as to provide plenty of space (nearly 80%) for passenger seating
and luggage storage.
Rocking Wheel Chair - It is a sleek, circular-shaped chair which
provides smooth rocking motion. There is a provision for a
headlight in the upper part of the chair.
Juicy Salif - It is a citrus juice squeezer and considered an iconic
structural design. The alumina-based body has been moulded in the
shape of a fish called as a squid.
2.4.3. Design Rights
The Design registration also confers a monopolistic right to the
Proprietor by which he can legally exclude others from reproducing,
manufacturing, selling, or dealing in the said registered Design
without his prior consent. The Design registration is particularly
useful for entities where the shape of the product has aesthetic value
and the entity wishes to have exclusivity over the said novel and
original Design applied to its product(s) or article(s).
2.4.4. Enforcement of Design Rights
Once the applicant has been conferred with the rights over a
specific Design, he has the right to sue the person (natural/entity) if
the pirated products of his registered design are being used. He can
file the infringement case in the court (not lower than District Court)
in order to stop such exploitation and for claiming any damage to
which the registered proprietor is legally entitled. The court will
ensure first that the Design of the said product is registered under
the Designs Act, 2000. If the Design is found not registered under
the Act, there will not be legal action against the infringer. If the
infringer is found guilty of piracy or infringement, the court can ask
him to pay the damage (₹ 50,000/-) in respect of infringement of
one registered Design.
2.4.5. Non-Protectable Industrial Designs in India
 Any Industrial Design which is against public moral values.
 Industrial Designs including flags, emblems or signs of any
country.

82
 Industrial Designs of integrated circuits.
 Any Design describing the ‗process of making of an article‘.
 Industrial Designs of – books, calendars, certificates, forms and
other documents, dressmaking patterns, greeting cards, leaflets,
maps and plan cards, postcards, stamps, medals.
 The artistic work defined under Section 2(c) of the Copyright
Act, 1957 is not a subject matter for registration for Industrial
Designs, such as:
o Paintings, sculptures, drawings including a diagram, map,
chart or plan.
o Photographs and work of architecture.
o Any other work related to artistic craftsmanship.
 Industrial Designs does not include any Trademark (The
Designs Act, 2000).
2.4.6. Protection Term
The outer ‗Shape or Design‘ of a product makes it more
appealing and acts as the value-adding factor to the product.
Therefore, there is a need to protect one‘s creation from being used
by third parties‘ without consent from the original creator. The
registered Designs are protected for 10 years in India and can be
extended by 5 years after making a renewal application.
2.4.7. Procedure for Registration of Industrial Designs
2.4.7.1. Prior Art Search - Before filing an application for
registration of Industrial Designs, it is prudent to ensure that the
same or similar Design has not been registered earlier. This search
can be carried out using various search engines, such as:
 Design Search Utility (CGPDTM)
(https://ipindiaservices.gov.in/designsearch/).
 Global Design Database (WIPO)
(https://www3.wipo.int/designdb/en/index.jsp).
 Hague Express Database (WIPO)
(https://www3.wipo.int/designdb/hague/en/#).
 Design View (EUIPO) (https://www.tmdn.org/tmdsview-
web/welcome#/dsview).

83
2.4.7.2. Application for Registration - Once the applicant is
satisfied that his Design is novel and significantly distinguishable
from other Designs, he can proceed with filing an application for
Design registration. The application for registration of Design can
be filed by an individual, small entity, institution, organization and
industry. The application may be filed through a professional patent
agent or legal practitioner. If the applicant is not a resident of India,
an agent residing in India has to be employed for this purpose. The
applicant submits the registration application at the Design Office
Deputy Controller of Patents & Designs, Patent Office, Intellectual
Property Office Building, CP-2 Sector V, Salt Lake City, Kolkata-
700091.
After the application has been filed, an officer (examiner)
analyses the application for qualifying the minimum standards laid
down for eligibility criteria for registration. In case of any query, the
same is sent to the applicant and he is supposed to respond within 6
months from the objection raised. Once the objections are removed,
the application is accepted for registration. The particulars of the
application, along with the representation of the article, are
published in the Official Journal of Patent Office
(http://www.ipindia.nic.in/journal-patents.htm). If no objection is
received from the public, the Design is registered. After the
registration of the Design, the applicant becomes the proprietor of
the Design and is conferred with the exclusive right to apply that
Design to the article belonging to the class in which it is registered.
The applicant puts up a request for issuance of a certificate of
registration (for an Industrial Design). A flow chart of the
registration process is mentioned below:

84
 Figure 2.10: Flowchart for the process of Design registration.

Source: https://allthingspatent.wordpress.com (slightly modified)

2.4.8. Duration of the Registration of a Design

Initially, the Design registration is valid for ten years from the
date of registration. In the case wherein the priority date has been
claimed, the duration of the registration is counted from the priority
date. The period of registration may be extended further for five
years. An application has to be made in Form-3 accompanied by
prescribed fees to the Controller General before the expiry of the
said initial period of ten years.
2.4.9. Importance of Design Registration
Registration of Design ensures the exclusive rights of the
applicant on the Design. The owner can prevent the registered
Design products from piracy and imitation. This helps the owner to
boost the sale of the products and establish goodwill in the market.

85
2.4.10. Cancellation of the Registered Design
The registration of a Design may be cancelled at any time. The
petition has to be filed in Form-8 with prescribed fee to the
Controller of Designs. The application can be made on the
following grounds:
 Design has already been registered.
 Design has been published in India or elsewhere before the date
of registration.
 Design is not novel and original.
 It is not a Design under Clause (d) of Section 2.
2.4.11. Application Forms
There are a total of 24 forms pertaining to Industrial Designs.
A list of important forms is mentioned below.

Table 2.10: List of important form related to Industrial

Designs.
Fee (₹ )
Form
S. No Name of the Form Natural Small Large
No.
Person Entity Entity
Application for
1. Form-1 1,000 2,000 4,000
registration of Design.
Application for the
2. Form-4 1,000 2,000 4,000
Restoration of Design.
Application for
3. Form-3 2,000 4,000 8,000
renewal of Design.
Petition for
cancellation for
4. Form-8 1,500 3,000 6,000
registration of a
Design.
Notice of intended
exhibition or
5. Form-9 500 1,000 2,000
publication of
unregistered Design.

86
 Application for entry
of name of proprietor
6. Form-11 500 1,000 2,000
or part proprietor in
the Register.
Request for
7. correction of clerical Form-14 500 1,000 2,000
error.
Request for certified
8. Form-15 500 1,000 2,000
copy.
Application for
9. rectification of Form-17 500 1,000 2,000
Register.
10. Notice of opposition. Form-19 100 200 400
Source: http://www.ipindia.nic.in/designs.htm

2.4.12. Classification of Industrial Designs

Designs are registered in different classes as per the Locarno
Agreement, 1968; https://www.wipo.int/classifications/locarno/loc
pub/en/fr/). It is used to classify goods for the registration of
Industrial Designs as well as for Design searches. The signatory
parties have to indicate these classes in the official documents too.
The classification comprises a list of classes and subclasses with a
list of goods that constitute Industrial Designs. There are 32 classes
and 237 subclasses that can be searched in two languages i.e.
English and French.
For example, Class 1 includes foodstuff for human beings,
foodstuffs for animals and dietetic foods excluding packages
because they are classified under Class 9 (Bottles, Flasks, Pots,
Carboys, Demijohns, and Pressurized Containers). Class 32
classifies the Design of graphic symbols and logos, surface patterns,
ornamentation.
2.4.13. Designs Registration Trend in India
Figure 2.11 represents the statistics for Industrial Designs (filed,
examined and registered) for the period 2010-20. During this period,
an increase of 88%, 117% and 33% was observed in the parameters
of Designs filed, examined and registered, respectively. In all three

87
parameters, the graph depicts a similar pattern (more or less) with
the highest numbers observed in 2019-20 for Designs filed (12,268),
examined (13,644) and registered (14,272).
Figure 2.11: Industrial Designs profile (India)
for the period 2010-20).

Source: Annual Reports, Office of CGPDTM, Mumbai (2011-20)

(https://dipp.gov.in/sites/default/files/annualReport-English2020-21.pdf)

2.4.14. International Treaties

The WIPO has put in place two important treaties (international)
dealing with the smooth functioning of various aspects of Industrial
Designs:
 Hague Agreement for international registration (1925)
(https://www.wipo.int/treaties/en/registration/hague/)
 Locarno Agreement (1968) for international classification
(https://www.wipo.int/treaties/en/classification/locarno/)
2.4.15. Famous Case Law:
Apple Inc. vs. Samsung Electronics Co.
In 2011, Apple Inc. filed a case against Samsung Electronics
Co. in the United States District Court for the Northern District of
California for infringing their Designs and Utility Patents of the user
interface like screen app grid and tap to zoom. As evidence, Apple
Inc. submitted the side-by-side image comparison of the iPhone
3GS and the i9000 Galaxy S to demonstrate the alleged similarities
in both models. However, later it was found that the images were

88
tempered by the Apple Company to match the dimensions and
features of the controversial Designs. So the counsel for Samsung
Electronics blamed Apple of submitting false and misleading
evidence to the court and the company countersued the Apple
Company in Seoul, South Korea; Tokyo, Japan; and Mannheim,
Germany, United States District Court for the District of Delaware,
and with the United States International Trade Commission (ITC) in
Washington D.C. The proceedings continued for the 7 years in
various courts. In June 2018 both companies reached for a
settlement and Samsung was ordered to pay $539 million to Apple
Inc. for infringing on its patents.

89
2.5 Geographical Indications

In every country, there are certain regions famous for their

traditional knowledge/heritage in various sectors, such as
agriculture, food products, textiles, etc. People from far-off places
used to travel to buy these products. For example, Christopher
Columbus sailed from Spain to import world-famous spices from
India. British people travelled to Arabian countries to import
Arabian horses for siring fast running horses for commercial gains.
Similarly, China silk and Dhaka Muslin have been in great demand
from times immemorial. The reputation of these products was built
upon and painstakingly maintained by the experts/masters of
respective geographical locations. The know-how of these reputed
products was passed onto future generations. With the passage of
time, a specific link between the goods produced and geographical
location evolved, resulting in the growth of Geographical
Indications (GI).
A GI is defined as a sign which can be used on products
belonging to a particular geographical location/region and possesses
qualities or a reputation associated with that region. In GI, there is a
strong link between the product and its original place of production.
2.5.1. Acts, Laws and Rules Pertaining to GI
In India, GI was introduced in 2003 and is governed under the
‗Geographical Indications of Goods (Registration & Protection)
Act, 1999‘ and the Geographical Indications of Goods (Registration
& Protection) Rules, 2002.
2.5.2. Ownership of GI
The ownership/holders of GI (registered) can be of the
producers, as a group/association/ cooperative society or association
or in certain cases, government.
2.5.3. Rights Granted to the Holders
 Right to grant the license to others - The holder has the right
to gift, sell, transfer/grant a license, mortgage or enter into any
other arrangement for consideration regarding their product. A

90
 license or assignment must be given in written and registered
with the Registrar of GI, for it to be valid and legitimate.
 Right to sue - The holder of GI has the right to use and take
legal action against a person who uses the product without his
consent.
 Right to exploit - The holder of GI can authorize users with
exclusive right to use goods for which the GI is registered.
 Right to get reliefs - Registered proprietors and authorized
users have the right to obtain relief concerning the violation of
such GI products.
2.5.4. Registered GI in India
GI products registered in India belong to the domains of
handicrafts, agricultural, food stuffs, alcoholic beverages, etc. The
first GI tag was granted in 2004 to Darjeeling Tea and the latest
being Kashmir Saffron and Manipur Black rice (Chakhao) in May
2020. A total of 370 GI have been registered in India till May 2020.
(http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/GI_Appl
ication_Register_10-09-2019.pdf). Nearly 58% of these belong to
handicrafts, followed by agriculture (30%). Other categories belong
to food stuff, manufacturing, and natural goods. In the Handicraft
category, Tamilnadu holds the maximum number (21) of GI
followed by Uttar Pradesh (20) and Karnataka (19). A few standout
GI are mentioned in table 2.11:
Table 2.11: List of popular GIs registered in India.
GI Type State
Darjeeling Tea Agriculture West Bengal
Mysore Silk Handicraft Karnataka
Kashmir Pashmina Handicraft Jammu & Kashmir
Banaras Brocades and
Handicraft Uttar Pradesh
Sarees
Naga Mircha Agriculture Nagaland
Tirupathi Laddu Foodstuff Andhra Pradesh
Punjab, Haryana,
Phulkari Handicraft
Rajasthan
Basmati Agriculture India
Source: http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/GI_Application
_Register_10-09-2019.pdf

91
 International countries, such as Thailand, France, Portugal,
Italy, Mexico, Peru and the United Kingdom, have also filed GI in
India e.g. Champagne (wine) of France and Scotch Whisky of the
United Kingdom.
2.5.5. Identification of Registered GI
Registered GI products are granted a tag, which is printed on the
registered products. The tag confirms the genuineness of the product
in terms of its production (by set standards) and location of
production. Non-registered GI products cannot use/exploit this tag.
By and large, GI tags represent the place of origin (of the product)
along with cultural and/or historical identity e.g. Darjeeling Tea,
Mysore Silk, Tirupathi Laddu, etc.
In India,GI tags are issued by the Geographical Indication
Registry under the Department for Promotion of Industry and
Internal Trade, Ministry of Commerce and Industry. The head of GI
registry is at Geographical Indications Registry Intellectual Property
Office Building, Industrial Estate, G.S.T Road, Guindy, Chennai -
600032.
GI registered products can be grown/produced in any part of the
world using standards laid down by the GI Registry. However, these
products cannot be labelled as GI as they are not produced/
manufactured in a specific geographical location, as mentioned in
the official records maintained by the GI Office of GI. For example,
plants of Darjeeling Tea can be grown in any part of India. But the
tea leaves of these plants cannot be sold under the brand name of
Darjeeling Tea, as the concerned plants were not grown in the soil
and climate of the Darjeeling area.
2.5.6. Classes of GI
GI certified goods are classified under 34 different classes, such
as Class 1 is for chemicals used in industry, science, photography,
agriculture, horticulture and forestry; unprocessed artificial resins,
unprocessed plastics; manures; fire extinguishing compositions;
tempering and soldering preparations; chemical substances for
preserving foodstuffs; tanning substances; adhesives used in
industry. Class 33 is for alcoholic beverages (except beers) and
Class 34 is related to tobacco, smokers‘ articles, matches. More

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details can be extracted from the official website of CGPDTM
Office
(http://www.ipindia.nic.in/writereaddata/images/pdf/classification-
of-goods.pdf).
2.5.7. Non-Registerable GI
For GI registration, the indications must fall within the scope of
section 2(1) (e) of GI Act, 1999. Being so, it has to also satisfy the
provisions of Section 9, which prohibits registration of a GI
mentioned below:
 The use of which would be likely to deceive or cause
confusion.
 The use of which would be contrary to any law.
 Which comprises or contains scandalous or obscene matter.
 Which comprises or contains any matter likely to hurt the
sentiments of society.
 Religious susceptibilities of any class or section of the citizens
of India.
 Which are determined to be generic names or indications of
goods and are, therefore, not or ceased to be protected in their
country of origin or which have fallen into disuse in that
country.
2.5.8. Protection of GI
The IP rights to GI are enforced by the court of law of the
concerned country. The GI registration of a product has certain
advantages. It enables to identify pirated/non-genuine stuff,
provides more commercial value to the product, and also
strengthens the case if it reaches the judicial courts. The two
common methods of protecting a GI are:
Sui generis systems (i.e. special regimes of protection) and
under certification or collective mark systems. Many countries,
including India to protect GI by using the sui generis system. This
decision was taken after the TRIPS agreement (1995) and an option
was given to the countries to choose either TRIPS standards or the
sui generis system. This was decided by considering the fact that
every country has different legislation and geographical structures &

93
resources. Therefore, this system is not uniform in all countries and
varies according to the jurisdiction and legislation of the particular
country.
2.5.9. Collective or Certification Marks
Certification marks aim to certify the products comply with
specific quality standards irrespective of their origin. These
standards include permitted materials and manufacturing methods.
Therefore, the purpose of certification marks is to distinguish
certified goods from non-certified ones. Collective marks are owned
by associations ensuring compliance with the agreed standards.
Collective marks signify that a good or service originates from a
member of a particular association. The Collective mark is used by
cooperating enterprises that have agreed to comply with defined
quality standards for goods or services that share common
characteristics.
2.5.10. Enforcement of GI Rights
The rights to GI protection are typically enforced by the court of
law. The sanctions provided could be civil (injunctions restraining
or prohibiting unlawful acts, actions for damages, etc.), criminal, or
administrative.
2.5.11. Procedure for GI Registration
Prior to filing an application for registering GI, it is prudent to
search whether the concerned GI is already protected or not. This
can be done by using search engines created by WIPO
(https://www.wipo.int/ipdl/en/search/lisbon/search-struct.jsp where
‗Search of Appellations of Origin and Geographical Indications‘
both can be conducted.
Additionally, WIPO has created a directory of all IP offices of
its member countries. The registered GI of any country can be
searched by accessing the website of the respective country
(https://www.wipo.int/directory/en/urls.jsp). The list of registered
GI in India can be accessed from the official website of CGPDTM
http://www.ipindia.nic.in/writereaddata/Portal/News/367_1_Registe
red_GI.pdf.
Once the prior search for registered GI is done, the applicant has
to file an application. The application for GI can be forwarded by an
94
individual or an organization or authority of people established
under Indian law. The application in a prescribed format is
submitted to the Registrar, Geographical Indications along with the
prescribed fee
(http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_27_1_gi-
rules.pdf). In the application, the applicant needs to mention the
interest of the producers of the concerned product. The application
should be duly signed by the applicant or his agent with all the
details about the GI that how its standard will be maintained. The
submission of three certified copies of the map of the region where
the GI belongs is mandatory.
Once the application is filed at GI Registry, the Examiner will
scrutinize the application for any deficiencies or similarities. If the
examiner finds any discrepancy, he will communicate the same to
the applicant, which is to be replied within one month of the
communication of the discrepancy. Once the examiner is satisfied
with the response/s, he files an examination report and hands over
the same to the Registrar. Once again, the application is scrutinized.
If need be, the applicant is asked to clear any doubts/objections
within two months of the communication otherwise, the application
will be rejected. After getting a green signal from the Registrar, the
application is published in the official Geographical Indication
Journal (http://www.ipindia.nic.in/journal-gi.htm) for seeking any
objections to the claims mentioned in the application. The
objections have to be filed within four months of the publication. If
no opposition is received, the GI gets registered by allotting the
filing date as the registration date. Initially, GI is registered for ten
years but is renewable on the payment of the fee.
2.5.12. Documents Required for GI Registration
 Details about the applicant‘s name, address and particulars.
 Application form GI-1A.
 Statement about the designated goods being protected under GI.
 Class of goods.
 Affidavit to establish the claim of genuinely representing the
interest of the producers.
 Characteristics of GI.
 The special human skill required (if any).
95
 Figure 2.12: Flow chart for the process of GI registration.

Source: https://www.researchgate.net (slightly modified)

The important forms to file GI in India under various classes are

mentioned below:

Table 2.12: Important application forms related to GI.

Form Requisite Fee
Title
No. ( )
Application for the registration of a
Geographical Indication for goods included 5000
in one class.
Application for the registration of a
GI-1 Geographical Indication for goods included 5000
in one class from a Convention country.
A single application for the registration of a
5,000 for each
Geographical Indication for goods in
class
different classes.

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 A single application for the registration of a
5,000 for each
Geographical Indication for goods in
class
different classes from a Convention country.
Notice of opposition to the registration of a
1,000 for each
Geographical Indication or an opposition or
class
an authorised user.
GI-2
Form of counter-statement. 1,000
Application for extension of time for filing
300
notice of opposition.
Application for the registration of an
authorised user of a registered Geographical 500
Indication.
GI-3
Request for issuance of a registration
100
certificate as an authorised user.
For renewal of an authorised user. 1000
Renewal of the registration of a Geographical
Indication at the expiration of the last 3,000
registration.
Application for restoration of a Geographical 1000 plus
GI-4 Indication or an authorised user removed applicable
from the Register. renewal fee
Application for renewal within six months
from the expiration of last registration of 3,500
Geographical Indication.
Application for registration of a Geographical
GI-8 1000
Indications agent.
Application for cancellation of an entry in the
GI-10 300
Register or to strike out goods.
Source: http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_27_1_gi-rules.pdf

2.5.13. GI Ecosystem in India

India is among the geographically and traditionally rich countries.
The scope of generating GI products in India is enormous. These
products can contribute to the economic development of a particular
region or society. However, till June 2021, a total of 370 GI have
been registered in India, which is much below its potential
(https://ipindia.gov.in/writereaddata/Portal/Images/pdf/GI_Applicati
on_Register_10-09-2019.pdf). Figure 2.13 represents the statistics
for GI (filed, and registered) for the period 2010-20. Maximum
number (148) of GI were filed in 2011-12 whereas, minimum
number (17) was observed in 2015-16. Not much change in the

97
number of GI registrations was observed during the period 2010-20.
Each year the number hovered around in the twenties, with
maximum registrations (34) seen in 2016-17.
Figure 2.13: GI profile (India) for the period 2010-20.

Source: Annual Reports, Office of CGPDTM, Mumbai (2011-20)

(https://dipp.gov.in/sites/default/files/annualReport-English2020-21.pdf)

2.5.14. Additional Information

2.5.14.1. Generic GI - When a GI-certified product becomes more
popular by the name of the origin of the place, it is termed as
Generic GI. For example, Camembert Cheese. Camembert is the
name of the place in France where this special cheese is produced.
In food places, merely saying the word Camembert denotes
Camembert cheese.
2.5.14.2. Homonymous GI - When two or more products, which
have been granted GI status, are spelled or pronounced alike, but
their source of origin is different (usually in different countries),
such GI are termed as Homonymous GI. One of the examples of the
homonymous GI is a wine named ‗Rioja‘, which is a GI for wine
produced in two countries (Argentina and Spain). In such a case, the
applicants (of GI) need to prove different characteristics of their
products. People may get confused if two Homonymous GI are
being sold at the same place. It is better that additional information
(source of origin of product) be mentioned on these products so as
to prevent consumers from being misled.
2.5.14.3. Difference Between GI and Appellation of Origin - In the
case of an appellation of origin, the link with the place of origin is
98
very strong. The quality or characteristics of a product protected as
an appellation of origin must result exclusively or essentially from
its geographical origin. This generally means that the raw materials
should be sourced from the place of origin and that the processing
of the product should also take place there. In the case of GI, a
single criterion attributable to the geographical origin is sufficient,
be it quality or another characteristic of the product or even just its
reputation. For example, Tirupathi Ladoo is GI, whereas Roquefort
Cheese tastes the way it does because it is matured in a certain way
in the caves of Roquefort is an Appellation of Origin.
2.5.14.4. Difference Between GI, Trademark and Traditional
Knowledge - Generally, people get confused with GI, Trademark
and Traditional Knowledge. GI identifies a product/good as
originating from a specific place. Trademark products/goods/service
originate from a particular industry/institute/organization/society,
etc. A Trademark is identified by an arbitrary sign, whereas GI has
the name of the geographical area. Finally, a Trademark can be
assigned or licensed to anyone, anywhere in the world, whereas GI
is linked with a specific geographical territory.
Products identified as GI are often the result of traditional
processes and knowledge carried forward by a community in a
particular region from generation to generation. Similarly, some
products identified by a GI may embody characteristic elements of
the traditional artistic heritage developed in a given region, known
as traditional knowledge (also termed as traditional cultural
expressions). This is particularly true for tangible products, such as
handicrafts, made using natural resources and having qualities
derived from their geographical origin.
2.5.14.5. International Agreements for GI Administered by WIPO
- The international organization WIPO has a dedicated search engine,
namely WIPO Lex (https://wipolex.wipo.int/en/ legislation/
results?countryOrgs=IN&subjectMatters=5), which has incorporated
IP Laws, including that of GI of all member countries. Below
mentioned are the international agreements administered by WIPO:
 Madrid Agreement (1891) for the International Registration of
Marks (https://www.wipo.int/madrid/en/).

99
 Nice Agreement (1957) for the International Classification of
Goods and Services for the Registration of Marks
(https://www.wipo.int/classifications/nice/en/).
 Lisbon Agreement (1958) for the Protection of Appellations of
Origin (International Registration https://www.wipo.int/treaties
/en/registration/lisbon/).
Every signatory member has to follow the guidelines of these
agreements. Also, it is mandatory for the members to show the
classification of goods in their official documents.
2.5.14.6. Famous Case Law: Banglar Rasogolla Vs. Odisha
Rasagola - Rasagolas is a very popular dessert in India. It is thought
to have originated in the eastern part of India. In November 2017,
the West Bengal State Food Processing and Horticulture
Development Corporation Limited registered ‗Banglar Rasogolla‘
as a GI. However, the legal battle for GI registration started when
objections to this GI registration were lodged by the State of
Odisha, claiming that Rasagolas originated at Jagannath temple in
Puri, Odisha. An application was filed in High Court in February
2018 to remove the registration of GI status of ‗Banglar Rasogolla‘.
Meanwhile, in July 2018 ‗Odisha Rasagola‘ was also granted GI tag
by the GI Registry, GoI. As per the court verdict,
a) ‗Rasogolla / Rasagola‘ is a general term, which any person can
use in his trade and business.
b) The words ‗Odisha Rasagola‘ and ‗Benglar Rasogolla‘ can
only be used by authorized users ‗under the law.
Hence, neither Bengal nor Odisha has a monopoly on the word
Rasagola. However, no person or society or company can use the
label ‗Banglar Rasogolla‘ or ‗Odisha Rasagola‘, without written
consent from the authorized users.

100
2.6 Trade Secrets

Trade Secret, a form of IP, deals with a practice or a process of

a company that is generally not known outside the company. The
confidential secret provides the company a commercial advantage
over its rivals and is often a product of internal R&D. Trade Secret
document comprises of technical information involving
manufacturing processes, experimental research data, formulas,
recipes, software algorithms, and commercial information
comprising of marketing strategies and a list of product/process
recipients. The document may also have a combination of elements,
each of which by itself is in the public domain, but where the
combination, which is kept secret, provides a competitive
advantage.
2.6.1. Criteria for Trade Secret
For a product/process to qualify as a Trade Secret, the
information should have, at least, the following criteria:
 Should be of commercial value.
 Secret information should not be in the public domain. It should
be known to a limited group of people.
 Legal owner/s of the secret must ensure taking reasonable steps
to keep the secret information and agreements (if any)
confidential.
The unauthorized acquisition, use or disclosure of such secret
information in a manner contrary to honest commercial practices by
others is regarded as an unfair practice and a violation of the Trade
Secret protection.
2.6.2. Registration and Protection Time of Trade Secrets
Contrary to the other forms of IP, a Trade Secret protection has
no time period. Many Trade Secrets are more than 100 years old. In
addition, there is no formal registration procedure/form to be
followed/filled for maintaining a Trade Secret. In simple terms,
Trade Secrets are protected without registration. Also, there is no
annual renewal fee for keeping the Trade Secret, as a secret.

101
2.6.3. Rights Associated with Trade Secrets
The owner of the Trade Secret has the legal right to use the
secret for economical and branding gains, as long as the secret does
not come in the public domain. The owner has the right to sell the
secret to anybody for any length of time, as decided by a mutual
confidential/non-disclosure agreement. No third person/company
can exploit the trade secret without the consent of the rightful owner
of the Trade Secret.
2.6.4. Enforcement of Trade Secrets
If somebody acquires the secret through illegal means or
indulge in dishonest use of a Trade Secret acquired through a legal
agreement, the rightful owner can approach the court for seeking an
injunction and/or claim financial damage accrued as a result of
dishonest commercial practice. In some countries, criminal
penalties can be awarded in case of a Trade Secret violation.
As per the guidelines of the Paris Convention (1883) (Article
10bis of the Convention for the Protection of Industrial Property),
each member nation has to provide strong protection against unfair
competition. In India, there is no specific legislation for
defending/protecting Trade Secret.
It is possible that a person/company independently develops a
process/technology/product, etc. which is already a Trade Secret. A
Trade Secret product may be developed using a novel technology or
by reverse engineering. In such a case, there is no violation of Trade
Secret protection. The newly developed process/technology can also
claim Trade Secret rights.
2.6.5. When to Apply for Trade Secret Protection
In case of an innovation, there are no specific guidelines
whether to opt for a Patent or Trade Secret. However, Trade Secret
is preferred when:
 Innovation does not qualify the criteria set for patenting.
 Trade secret is an attractive proposition provided the
information can be kept secret for more than 20 years i.e. time
period of patent.

102
 Innovation is concerned with the manufacturing process (and
not a novel product).
2.6.6. Precautionary Measures to be Taken by Enterprises /
Organizations
Trade Secrets are quite common in the industrial sector. The
enterprise needs to take all the necessary steps to keep its Trade
Secrets away from the public domain. The steps include:
 The confidential information of the trade secret should be in the
hands of only a few extremely reliable persons.
 Signing agreements (confidentiality, non-disclosure and non-
compete contracts) with employees/business partners. In case
of employees, the agreement should remain in play for a certain
period of time after he has either retired or left the company.
There are three sets of circumstances for which proceedings for theft
may arise:
 Where an employee comes into possession of secret and
confidential information in the normal course of his work and
passes that information to an unauthorized person.
 Where an unauthorized person (such as a new employee)
provokes such an employee to provide him with such
confidential information.
 Where, under a license for the use of know-how, a licensee is in
breach of a condition, either expressed in any agreement or
implied from conduct, to maintain secrecy in respect of such
know-how and fails to do so.
2.6.7. Important Information about Trade Secrets
 Features of software, such as code and the ideas and concepts
reflected in it, can be protected as Trade Secrets.
 Trade Secrets are not subject to being ―infringed,‖ as with
Patents and Copyrights, but are subject to theft.
 In India, there is no specific legislation regarding Trade Secrets.
However, these are governed under Section 27 of ‗The Indian
Contract Act, 1872

103
 (http://uputd.gov.in/site/writereaddata/siteContent/indian-
contract-act-1872.pdf).
 Trade Secrets can be protected lifelong until it is disclosed in
the public domain.
 Trade Secrets are important for the companies, which are
surviving on them and any unauthorized use is known as ‗unfair
protection‘.
2.6.8. Disparity between Trade Secrets and Patents
In general, all Patents can be registered as Trade Secret, but all
Trade Secrets cannot be patented as patenting criteria are quite
stringent. For example, certain commercial information or
manufacturing processes are not sufficiently inventive, thus
patenting route is not viable, but it qualifies for a Trade Secret.
It is also possible that an innovation qualifies to be patentable
but still registered as a Trade Secret because a Patent is granted for
20 years, whereas Trades Secret has an unlimited shelf life. Also,
there is no registration cost for protecting Trade Secret and it comes
into force with immediate effect.
But, Trade Secret has its own pitfalls. The level of protection
granted to Trade Secrets is not as strong as that of Patents. The
commercialization of Trade Secrets is difficult as the real value of
Trade Secrets cannot be assessed unless the whole process of
manufacturing is revealed (i.e. cost of the ingredients, production
plant, etc.).
2.6.9. Renowned Trade Secrets
2.6.9.1. Coca-Cola - the formula for Coca-Cola is one of the go-to
examples of a Trade Secret. According to a company representative,
the original formula is written on a piece of paper stored in a bank
vault. Only ‗a small handful‘ of people know the formula at any
time.
The recipe for Coca-Cola was invented by an American bio-
chemist (John Stith Pemberton) in 1886 while developing an
alternative to morphine to cure people from depression, anxiety and
pain. Shortly before his death, he sold the recipe to an American
businessman, Asia Griggs Candler, in 1888 and earned a massive

104
amount of money out of it. Though Mr. Pemberton successfully
created the recipe for coca-cola, a non-alcoholic drink, but his
addiction to drugs made him bankrupt.
2.6.9.2. Google Algorithm - In the current era, Google's search
algorithm is recognized as the world's most important Trade Secret.
We all use ‗Google Search‘ in order to find an answer to any query.
It is really mind-boggling how the Google Search engine brings
desired information in a matter of few seconds.
2.6.9.3. WD-40 - ‗Water Displacer - 40th attempt‘ is the world‘s best
known household spray-lubricant used for removing corrosion, sap,
tar and adhesives from various surfaces to cleaning tools and
equipment. It was invented by an American, Norm Larsen, in 1953.
Nearly 80% of the US people have used this commodity. The
formula for WD-40 has been kept in a bank vault. The company
mixes the substance in three different locations. These mixtures are
shipped to manufacturing partners for final mixing and marketing.
2.6.9.4. Kentucky Fried Chicken (KFC) - One of the most famous
Trade Secrets originated around the middle of the 20th century from
a white-suited Colonel Harland Sanders, who created a recipe for a
tasty chicken coating that contained 11 herbs and spices - a Trade
Secret. The original, handwritten copy of the recipe is hidden in a
safe in Kentucky, USA and only a few select employees, bound by a
confidentiality contract, know the recipe. For further protection, two
separate companies blend a portion of the mixture, which is then run
through a computer processing system to standardize for blending.
A few other well-known Trade Secrets are Dr. Pepper (non-
alcoholic, fizzy drink), Listerine (for treatment of allergies, pimples,
psoriasis, and insect bites), Lena Blackburne's Baseball Rubbing
Mud (for roughing the surface of base-ball) and McDonald‘s Big
Mac Special Sauce Recipe.

105
2.7 Traditional Knowledge
Traditional Knowledge (TK) based on knowledge derived from
ancient roots are not conventionally protected under IP systems.
Most countries have developed a sui generis system for protecting
TK that is inclined towards the dissemination and preservation of
TK rather than legal protection associated with it. To protect the
spiritual identity and essence of TK in the community/country, means
of protection are not totally in tune with the current system of IP
protection. TK protection is a way to recognize traditional sources of
knowledge and to enable indigenous communities and governments
to have a say in the use of such TKs by others.
TK comprises know-how, knowledge, skills and practices that
are traditionally originated and are passed from generation to
generation in a community. TK is unique for a community and mark
as a cultural identity of the community. Some of the practical
examples of TK of India which have gained worldwide popularity
are Ayurveda, Unani, Medicinal Formulations (including
components, such as turmeric, neem, etc.).
TK is also linked to Traditional Cultural Expressions (TCEs),
commonly known as ‗Expressions of Folklore‘. It includes folklore
expression in the form of music, dance, art, designs, signs and
symbols, names, performances, architecture forms, ceremonies,
narratives and handicrafts and any other form of artistic/cultural
expressions. TK and TCE form a part of the heritage of the
traditional and indigenous community. Some of the prominent TCEs
of India include Bharatnatyam of Tamil Nadu, Kuchipudi of
Andhara Pradesh, Kalaaripayattu martial art of Kerala and many
other traditional practices.
2.7.1. Significance of TK
TK and TCE represent the face of the community and its people.
These people are given due credit and fair and equitable sharing of
the benefits arising from the commercial exploitation of TK and
TCE. The execution of the TK protection system led to the
revocation of Patents filed in the US and other countries on the
medicinal properties of turmeric, neem, amla, etc. which are very
well documented in Indian ancient texts.

106
2.7.2. Agreement on TK
The major agreements that shaped the development of the sui
generis system for the protection of TK are:
 ‗Convention on Biological Diversity (CBD), 1993‘ and the
‗Nagoya Protocol, 2010‘ deal with mechanisms to be followed
for accessing the genetic resources of any country and to
devise ways for fair and equitable sharing of benefits arising
from utilizing those genetic resources.
 International treaty on ‗Plant Genetic Resources for Food and
Agriculture‘ of the Food and Agriculture Organization (FAO),
2001.
 ‗International Union for the Protection of New Varieties of
Plants (UPOV), 1991‘.
 Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS) through the ‗Doha Declaration, 2001‘ directed
TRIPS to include a perspective on the protection of TK in
alignment with CBD.
 ‗WIPO‘s Intergovernmental Committee (IGC) on Intellectual
Property and Genetic Resources, Traditional Knowledge and
Folklore, 2000‘ directed all member States to comply with the
protection of TK.
 Emerging need for awareness and protection of TCEs was
raised internationally through:
o ‗World Heritage Convention, 1972‘.
o The ‗UNESCO/WIPO World Forum on Protection of
Folklore, 1997‘.
o ‗Convention for the Safeguarding of Intangible Cultural
Heritage, 2003‘.
o ‗UNESCO Convention on the Protection and Promotion of
the Diversity of Cultural Expressions, 2005‘.
2.7.3. Protection of TK
India is the only country to set up an institutional mechanism
for the protection of TK. The TK documentation is undertaken by
107
the Council of Scientific and Industrial Research (CSIR), Ministry
of Science and Technology and Ministry of Ayurveda, Yoga and
Naturopathy, Unani, Siddha and Homeopathy (AYUSH) through
the creation of Traditional Knowledge Digital Library (TKDL) that
acts as a central repository of India‘s TK and has played a major
role in the cancellation and withdrawal of foreign patent
applications based on India‘s TK. The digital library is the major
source of documenting India‘s TK in the name of the traditional
community as TK holders. The documented TK in the name of TK
Holders (community/tribe/local government body/state government/
central government) acts as a tool to protect TK from any unlawful
rights over existing TKs and to get exclusive IP rights over such
TK. The Central, State, and local governments, on behalf of TK
holders, protect the TK by following approaches:
 Defensive protection includes a strategic process employed to
ensure that no third party gains any illegitimate IPR over TK.
 Positive protection covers acknowledgment of custodians of
TK; authorization to access TK; benefit-sharing;
misappropriation prevention by means of taking prior consent to
use TK and linking TK with GI and TCEs.
 India has taken various legislative and administrative measures
to ensure that the TK is protected and fair means of benefit-
sharing emerging out of TK is undertaken.

108
Table 2.13: Initiative undertaken for TK protection by India.
S. No. Measures taken Protection of TK
Legislative Measures
National Biodiversity  Protection of genetic resources
Act of India that essentially covers
(https://indiacode.nic.i TK.
1. n/bitstream/12345678  Fair and equitable sharing of
9/2046/1/200318.pdf) benefits arising from TK.
 Prior consent and authorization
requirement for accessing TK.
Protection of Plant  Traditional plant varieties can be
Varieties and Farmers registered as Farmer‘s Variety.
Rights Act, 2002  Farmers right to equitable
2. (https://indiacode.nic.i sharing of plant variety and its
n/bitstream/12345678 related genetic resources.
9/1909/1/200153.pdf)
Indian Patent Act, Section 3(p) states ‗anything that is
1970 TK or duplicative of TK cannot be
(http://www.ipindia.ni patented in India‘.
3. c.in/writereaddata/Port
al/IPOAct/1_31_1_pat
ent-act-1970-
11march2015.pdf)
Scheduled Tribes and Section 3(1) (k) of the Act ‗Right of
Other traditional access to biodiversity and
Forest Dwellers community right to IP, and TK
(Recognition of Forest related to biodiversity and cultural
4.
Rights) Act, 2006 diversity‘ represents rights
(https://tribal.nic.in/FR associated with access of
A/data/FRARulesBoo biodiversity resources and TK of
k.pdf) tribal community in India.
Administrative Measures
Institutional set up  Prior permission required for
under National obtaining IPR based on
Biodiversity Act knowledge/resource obtained
(http://nbaindia.org) from India.
5.
a. National  Access regulation to
Biodiversity knowledge/resource by any
Authority foreign entity.

109
 b. State Biodiversity Access regulation to
Board knowledge/resource by any entity
c. Biodiversity Creation of Peoples‘ Biodiversity
Management Registers.
Committees
(BMCs)
Traditional Knowledge  Joint initiative of CSIR and
Digital Library Ministry of AYUSH, lists nearly
(TKDL); 3.6 lakhs formulation in TKDL.
(http://www.tkdl.res.in  Assets of traditional and
/tkdl/langdefault/com indigenous communities that
mon/Home.asp?GL=E comprise of a list of TK existing
ng) in India in the form of a digital
repository.
 Addresses the language barrier
by converting Indian tradition
texts like Ayurveda, Unani,
6.
Yoga, etc. in 5 different
languages (English, Spanish,
French, Japanese and German).
 TKDL has led to
withdrawn/rejection of nearly
230 applications in international
patent offices by giving prior art
evidence based on TK.
 Led to the formulation of State
level TK e.g. TKIK: Traditional
Knowledge Innovation, Kerala.
Traditional  It is an innovative, IT based
Knowledge Resource classification system in
Classification (TKRC) accordance with information
(http://www.tkdl.res.in existing in the ancient texts.
7.
/tkdl/langdefault/com  It led to the incorporation of 200
mon/TKRC.asp?GL=E sub-groups in the major group
ng) (A61K 36/00) of International
Patent Classification.
People‘s Biodiversity  An initiative undertaken by
Registers (PBR) BMCs in nearly 26 States of
8. (http://nbaindia.org/up India that has collated TK of that
loaded/pdf/PPT_PBRs particular state in one single
_Guidelines.pdf) register.

110
 India has no separate legislation for protecting TCEs but these
can be protected under TK Protection System, Copyrights,
Geographical Indications and Trademarks. Many NGOs and
societies are coming up with TCEs digitalization and their inclusion
in TKDL, but concerns over who will own the rights, copyright
generated and scope of digital formats are some of the issues that
need to be addressed.
2.8. Semiconductor Integrated Circuits Layout Design
A layout design or topography can be defined as the unique and
novel combination of electronic components and interconnections
through signal tracks between those components. This circuit design
will be protected under the national law and the creator of the layout
will be conferred with certain rights if it is original. Semiconductor
Integrated Circuits are made up of a complex series of layers of
semiconductors, insulators, components, metals, and other materials
on a substrate.
The specific criteria for the protection under the Semiconductor
Integrated Circuits Layout Design (SICLD) Act, 2000 are:
 The layout design should be original.
 There must distinctiveness in the Design.
 The design must be novel and capable of distinguishing from
any other layout Design
 The Design must not be exploited commercially anywhere in
India or a Convention Country.
Basic Definitions of SICLD are as follows:
 ‗Semiconductor Integrated Circuit‘ is defined as the product
having transistors or any circuitry elements, which are formed
on a semiconductor/insulating material which is designed to
perform an electronic circuitry function.
 ‗Layout-Design‘ means a layout if circuitry elements like
transistors, resistors, capacitors, etc. and lead wires connecting
all components have been articulated in a semiconductor
integrated circuit.

111
 ‗Commercial exploitation or use‘, with regards to the SICLD ,
means to sell, export, lease, offer or exhibit for sale or
otherwise distribute such semiconductor integrated circuit
layout design for making any commercial benefit out of
registered design.
2.8.1. Duration of Registration
The layout design should be filed for registration before
publishing it. Once it has been registered under the Act, initial
protection will be for 10 years counted from the date of filing an
application. If the design is already being used, the date of
protection will be counted from the date of first commercial
exploitation anywhere in India or in any country, whichever is
earlier. If the creator is already using the design, he will get the
ownership automatically but, in case of infringement, the
registration certificate plays a crucial role as proof of ownership.
2.8.2. Infringements
i) The act of reproducing the design, either incorporating it in an
integrated circuit or using the registered topography as it is,
without prior permission.
ii) Importing, selling or distributing the layout design for
commercial purposes or selling an integrated circuit in which a
protected layoutdesign is incorporated.
2.8.3. SICLD Registry
As India is a signatory of the WTO, an Act in conformity with
the TRIPS agreement (Art. 35 to 38) was passed, namely SICLD
Act, in 2000. Previously, the administration of the SICLD Act, 2000
and the SICLD Registry was under the control of the Ministry of
Electronics and Information Technology (MeitY), but since 17th
March 2016, the administration has been transferred to DPIIT,
Ministry of Commerce and Industry, and brought under the ambit of
Office of Controller General of Patents, Designs and Trade Marks.
The SICLD Registry can be done at Boudhik Samapada Bhawan,
Dwarka, Sector-14, New Delhi. At this office, the applications on
layout designs of integrated circuits are filed for registration. Once it
is filed, the design is examined by the examiner and if it is fulfilling
the criteria, the registration certificate is issued for the ten years.

112
2.8.4. Requirements for Registration
 Three sets of drawings were produced with a plotter describing
the layout design intended for registration.
 Three sets of photographs of masks were used for the
fabrication of the semiconductor integrated circuit by using the
layout design.
 Three sets of drawings which describe the pattern of such
masks.
2.8.4.1. Procedure for Registration
 An application will be filed to the registrar in the office of the
SICLD registry with a) three sets of drawings that describe the
layout design, b) three sets of photographs of the description of
masks used for the fabrication of the semiconductor integrated
circuits.
 If the application is in order and fulfils basic requirements for
registration, further processing for registration will be carried
out. However, the registrar has full rights to withdraw the
application if it is found notsuitable for registration.
 The accepted application is advertised in an official journal,
‗The Semiconductor Integrated Circuits Layout Design Journal‘
(http://sicldr.gov.in/ejournals), within 14 days of acceptance. In
case any opposition is found to the registration, then a notice
will be sent to the registrar in the prescribed manner by the
opponent within three months from the date of advertisement.
 The registrar then asks both the parties (the applicant and the
opponent) to produce the evidence in support of the claims
made by them and finally gives his decision.
 If the application is not opposed by anyone or the decision has
been given infavour of the applicant, the registrar shall register
the said layout design in the register of layout design and also
issue a certificate sealed with the stamp of the SICLD Registry.
2.8.5. Forms and Fee
According to the SICLD Act, 2000, the applicant needs to fill
the forms for various purposes by paying the prescribed respective
fee.

113
 Table 2.14: List of important forms related to SICLD.
Form
Purpose Fee (₹ )
No.
Application for Registration of Layout-Design LD-1 5,000
Notice of opposition to application for registration
LD-2 500
of Layout-Design
Request for clerical error or for amendment LD-6 300
Request to register a subsequent proprietor of a
LD-10 1,500
Layout-Design upon the same devolution of title
Application for the rectification of the register LD-12 2,000
Application for cancellation of entry of a
LD-15 1,000
registered user of a Layout-Design
Form of request by a registered proprietor or a
registered user of a Layout-Design who has no
principal place of business in India, to enter, alter LD-19 1,000
or substitute an address for service in India as part
of his registration
Application by registered proprietor of Layout-
Design for the cancellation of entry thereof in the LD-20 1,500
register
Request for certificate of the registrar LD-22 1,000
Request for duplicate or further copy of the
LD-25 2,000
certificate of registration
Opposition under section 40(3) before the
LD-28
Appellate Board
Notice for cancellation of registration of a
Layout-Design or of assignment or transmission LD-33 2,000
relating thereto
Request for the permission to use the registered
Layout-Design without authorisation of the LD-34 2,000
proprietor
Application to high court against decision or order
LD-35 2,000
of Appellate Board
Application for registration as a Layout-Design
LDA-1 2,000
agent
Source: http://sicldr.gov.in/forms

114
2.8.6. Acts and Laws
In India, the protection of SICLD is administered by the Office
of CGPDTM under the Semiconductor Integrated Circuits Layout
Design Act 2000 and Semiconductor Integrated Circuits Layout
Design Rules 2001 (http://sicldr.gov.in/actsrules).
Although the first use of the layout design anywhere is
sufficient to claim protection, the creator should register the design
to avoid infringement. National Laws and Acts protect any IP in the
respective territory. Still, for protecting the topography in another
country, the inventor can register it by filing individually in the
country of interest. Although, the international treaty, namely the
Washington Treaty on Intellectual Property in respect of Integrated
Circuits, 1989 (https://www.wipo.int/treaties/en/ip/washington /#:~:
text=The%20Washington%20Treaty%20was%20adopted,Herzegov
ina%2C%20Egypt%20and%20Saint%20Lucia.) has been signed by
a few countries including, India, but the treaty is not in force as of
now.
2.8.7. Additional Information
 The right holder can enforce his rights against infringement
through civil actions. These actions include injunctions,
damages and seizure of goods.
 The international legal framework has kept it open to the
member countries to protect such designs under the sui generis
law. It‘s up to the countries whether they want to protect these
Layout-Designs under Copyright, Patents, Utility Models,
Industrial Designs, Unfair Competition or any other law.
 In the case of right of registration for Commissioned Works,
which means the original Layout-Designs has been created
under the commission or a contract of employment, the right of
registration to such Layout-Design shall belong to the person
who commissioned the work or to the employer in the absence
of any contractual provision to the contrary.
 The application can be filed by any resident of India or whose
principal place of business is in India. In case of a joint
application, the first-mentioned applicant must be Indian or
have a business in India.
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2.8.8. Acts not Considered as an Infringement
 The acts like scientific evaluation, analysis, research or
teaching, do not constitute an act of infringement.
 If a person, on the basis of scientific evaluation or analysis of a
registered Layout-Design, creates another Layout-Design which
is original within the meaning of Sub-section (2) of Section 7 of
SICLD Act, 2000, that person shall have the right to incorporate
another Layout-Design in a Semiconductor Integrated Circuit.
Such incorporation or performance of any act shall not be
regarded as infringement.
Any person who contravenes and infringes a registered Layout-
Design, as per the provision under the Act, will be punished either
with imprisonment for a term extendable to three years or
imposition of a fine ranging from 50, 000 to 10,00,000, or both.

116
2.9. Protection of Plant Varieties and Plant
Breeders Rights
A plant variety represents a more precisely defined group of
plants, selected from within a species, with a common set of
characteristics. Under the unique system of IPR, protection to new
plant varieties is provided through ‗Plant Breeder‘s Right‘ (PBR),
granted to the breeder of the new plant variety. A breeder is a person
who bred, discovered or developed a variety. The protection is
provided under the independent ‗sui generis’ system (sui generis
system is a unique system in which new national laws and
international norms are administered as per the requirement. Such
systems are generally adopted for the IP protection of biodiversity
and genetic resources in most countries; Biodiversity describes the
life variability existing on the earth at the genetic level, species level
and the larger ecosystem level. Biodiversity comprises microbial
life, plant life and animal life).
2.9.1. Need for Plant Protection as an IP
The development of new plant varieties with improved yields,
better quality and higher pest and disease resistance has contributed
immensely to agricultural productivity. Plant Breeders spend years
developing new plant varieties with superior characteristics that
require substantial financial investments. Therefore, IP protection of
newly developed plant varieties offers a reward system for breeders
and encourages them to develop new plant varieties.
2.9.2. International Agreements/Treaties for Plant Protection
To include plant variety protection under the realm of IP, two
main treaties have played an important role.
 Union Internationale Pour la Protection des Obtentions
Végétales (UPOV) (English version - International Convention
for the Protection of New Plant Varieties), held in 1961, in Paris
provided IP protection to plant breeders for newly developed
plant varieties on an international scale. Under the UPOV
Act, the sui generis system for protecting plant varieties is
advocated.
 Trade-Related Aspects of Intellectual Property Rights (TRIPS)

117
 Agreement - In 1995, WTO administered TRIPS agreement
introduced plant variety protection either through a patent
system or through the sui generis system developed by the
member countries or a combination of both. It laid down
minimal legal standards for designing an effective sui
generis system of plant variety protection.
2.9.3. Indian Context for Protection of Plant Varieties
In alignment with TRIPS Agreement, India selected sui
generis system over patent under the ‗Plant Variety Protection and
Farmers Rights (PVP&FR) Act, 2001‘. The Act lays the foundation
for the establishment of an effective system for protecting plant
variety along with the rights of farmers and plant breeders. Ministry
of Agriculture and Farmers Welfare, Government of India, has
established PVP&FR Authority‘ (http://www.plantauthority.
gov.in/index.htm)‘ based in New Delhi. The plant breeders and
farmers can register their new plant varieties with PVP&FR
Authority and subsequently claim their ownership rights associated
with the registered plant variety. The other functions of the
Authority are:
 Developing Distinctiveness, Uniformity and Stability (DUS)
test guidelines for the plant varieties.
 Developing characterization and documentation of varieties
registered.
 Compulsory cataloguing facilities for all varieties of plants.
 Documentation, indexing and cataloguing of farmers‘ varieties.
 Recognizing and rewarding farmers, a community of farmers,
particularly tribal and rural communities, engaged in
conservation, improvement, preservation of plant genetic
resources of economic plants and their wild relatives.
 Maintenance of the National Register of Plant Varieties.
 Maintenance of National Gene Bank.
PVP&PR authority has also authorized various centres across
India for DUS testing. The list of authorized DUS centres can be
accessed through the link: http://www.plantauthority.gov.in/dus-
center.htm.

118
 The PVP&FR Authority issues a ‗Certificate of Registration‘
for a new plant variety under the PVP&FR Act, 2001 that grants
exclusive rights to plant breeder (or licensee/agent/successor) to
produce, market, sell, import or export and distribute the registered
variety. Till date, Authority has issued nearly 3500 certificates of
Registration of new plant varieties.
2.9.4. Conditions for Registration of New Plant Variety
 Novelty - Plant variety (propagated and harvested material)
has not been exploited earlier than one year in India and
earlier than four years outside India.
 Distinctiveness - Plant variety is distinct in its essential
characteristics from other plant varieties.
 Uniformity - All plants of the plant variety show the same
characteristics (subjected to variation in generations due to
propagation).
 Stability - Through many generations, the essential
characteristics of the plant should not change in terms of
quality and content.
2.9.5. Types of Plant Varieties Registered Under PVP&FR
Act, 2001
Different types of plant varieties that can be registered in India
under the PVP&FR Act are as follows:
 New Variety - A new variety that confers the criteria of
Novelty, Distinctiveness, Uniformity & Stability (NDUS).
 Extant Variety - A variety can be registered as an extant
variety if it is - i) notified under Section 5 of Seeds Act,1966 or
ii) is a farmer‘s variety or iii) variety whose common
knowledge prevails and is available in the public domain.
 Farmer’s Variety - This is a variety that is traditionally
cultivated and developed by the farmers in the field. These
varieties can be a wild relative of any variety of which farmer
has a common knowledge.

119
 Essentially Derived Variety - Is the variety that is derived
from a new variety of extant variety or farmer‘s variety.
2.9.6. Plant Varieties which cannot be Registered in India
 Plant variety whose commercial exploitation is detrimental for
the environment or public order or public morality or health or
human/animal/plant life.
 Plant variety that involves the use of technology which is
detrimental to human/animal/plant life.
 Plant variety that belongs to the genera or species which is not
listed in the notification issued by the Government of India.
2.9.7. Process of Registration
The registration of plant variety is mandatory for farmers or
plant breeders to exercise their exclusive rights over the plant
variety. The registration of a plant variety is carried out in the
following steps:
i) Forms for the registration of plant variety (new variety, extant
variety, farmer‘s variety and essentially derived variety) are
submitted to the PVP&FR Authority and are published on the
website. There are more than 30 forms dedicated to ‗Plant
Variety Protection‘. The important ones are listed in Table
2.15.
ii) Plant varieties which have received DUS Certificate are
published in the ‗Plant Variety Journal of India‘
(http://www.plantauthority.gov.in/pdf/pvjapril2018signed.pdf). At
this stage, the application is open for the opposition to the
registration of the plant variety.

120
 Table 2.15: Important forms associated with plant variety
protection.
S. No. Form Title of the Form
Application for Registration of New
Variety and Extant Variety Under Protection
1. Form I
of Plant Variety and Farmers‘ Rights Act,
2001.
Application for Registration of Essentially
Derived Variety (EDV) Under Protection of
2. Form II
Plant Variety and Farmers‘ Rights Act,
2001.
Application for Registration of Farmers‘
Application
3. Variety Under Protection of Plant Variety
Form
And Farmers‘ Rights Act, 2001.
4. PV-3 Notice of Opposition.
Application for Renewal of Registration of
5. PV-6
Plant Varieties.
Application for Registration as an Agent or
6. PV-9
Licensee.
7. PV-28 Grant of Compulsory License.
Request for Certified Copies of Entries in
8. PV-33 the Plant Varieties Register or for
Inspection of Such Entry.
Source: http://www.plantauthority.gov.in/forms.htm

iii) With no opposition, the application is processed for

registration within 8-20 months from the date of submission of
the application. Once registered, it is published in the ‗Plant
Variety Journal of India‘.
iv) If there is an opposition to the application, the registrar will
serve the notice of opposition to the applicant and the applicant
has to file the counter-statement for the opposition within two
months of the receipt of the notice. Failing to do so, the
application will be abandoned.
v) The registered plant varieties are added to the National
Register of Plant Varieties maintained at the head office of

121
 PVP&FR Authority in New Delhi. The list of registered
varieties can be accessed at Protection of Plant Varieties and
Farmers‘ Rights Authority (http://www.
plantauthority.gov.in/List_of_Certificates.htm).
The detailed process of the registration of the plant variety as per
the PVP&FR Act 2001 is depicted in Fig. 2.14 below.
Figure 2.14: Registration of plant varieties
under PVP&FR Act, 2001.

Source: http://www.plantauthority.gov.in/pdf/RTI_Disclosure.pdf
DADSND: Digital Application Denomination Search for Novelty and
Distinctively;PVJ: Plant Variety Journal (slightly modified)

2.9.8. Fee Structure

Along with the application, the applicant has to deposit
registration fees depending on the type of variety to be registered.
After the registration of the variety, the annual fee has to be paid to
maintain the registered plant variety.

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 Table 2.16: Registration fees for plant variety registration.
S. Type of Variety Individual Educationa Commer- Annual
No. (₹) l Institute cial Mainte-
(₹) Entity nance
(₹) Fee (₹ )
A. Registration Fees
1. New Variety 7,000 10,000 50,000 20,00*
Extant Variety
(about which
2. 7,000 10,000 50,000 2,000**
there is common
knowledge)
Extant variety
(notified under
3. 2,000 2,000 2,000 2,000
section 5 of
Seeds Act, 1966)
Essentially
Not
4. Derived 7,000 10,000 50,000
specified
Varieties
5. Farmers‘ Variety No fee No fee No fee 10
B. Other Fees
Notice of
6. 10,000
opposition
Extension of
7. 5,000/ month
time
Application for
8. 10,000
benefit sharing
Application for
9. registering as 15,000
agent/licensee
Application for
variation/
10. cancellation of 10,000
the terms of
registration
Application for
grant of
11. 25,000
compulsory
license
Source: http://www.plantauthority.gov.in/registrationfees.htm
*with added amount i.e. 0.2% sales value of the seeds during the
previous +1% royalty, if any, received during the previous year
**with added amount i.e. 0.1% of the sales value of the seeds during the
previous year + 0.5% of royalty, if any, received during the previous year

123
For undertaking DUS test, the applicant has to pay the DUS testing
fee. The testing fee is different for each crop. The on-site DUS
testing charges are higher than lab-testing charges. For example, for
Chickpea lab testing charges are 20,000 as compared to 60,000
for on-site testing charges. DUS testing fees for different crops can
be accessed at: http://www.plantauthority.gov.in/DUSTestFeeSorted1.htm.

2.9.9. Duration of Plant Variety Protection in India

The protection period varies depending on plant variety such as
Trees and Vines - 18 years, Extant Varieties - 15 years (from the
time variety was government notified under Seed Act, 1966); other
crops - 15 years.
2.9.10. Rights Granted Under PVP&FR Act, 2001
 Plant Breeders Rights (PBRs) - The exclusive rights granted
to the breeders are to produce, sell, market, distribute, export or
import the registered plant variety. However, such rights are
exempted for using plant variety for research purposes.
 Farmer’s Rights - In order to protect and encourage the
farmer‘s contribution to conserving and improving plant genetic
resources, farmer‘s rights were introduced. These rights protect
farmers from the stringent IPR, such as patents that confers
monopoly over the product/technology patented. PVP&FR Act
2001 describes farmer as the ‗cultivator (cultivating the land
himself or through direct supervision), or one who conserves
and preserves any wild species or traditional varieties, or a
breeder who adds value to such wild species and traditional
varieties through selection and identification of their useful
properties‘. The ‗Farmer‘s Rights‘ under PVP&FR Act, 2001
are as follows:
o Rights on seed - provides rights to the farmers to save
seeds, use seeds and share, exchange or sell seeds to other
farmers.
o Right to register - provides farmers with the right to register
their traditional plant varieties and procure exclusive rights
over their registered variety.

124
 o Right to reward and recognition - farmer‘s contribution to
agriculture is rewarded by means of the award presented by
the National Gene Fund under PVP&FR Authority.
o Right to benefit-sharing - farmers or tribal communities that
contributed to the development of new crop varieties are
entitled to equitable sharing of benefits that emerge from
the new crop variety. In addition to this, India has enacted
the ‗Biological Diversity Act, 2002‘ for preserving
biological diversity existing in India along with establishing
legal mechanisms for equitable sharing of benefits
emerging from traditional biological resources (that also
consist of plant varieties and plant products) and Traditional
Knowledge.
o Right to compensation for losses - The registered new plant
varieties are subjected to sale with a number of claims over
their performance and successful cultivation conditions. In
case the registered plant variety does not perform as
claimed, then farmers are provided with compensation for
the losses.
o Rights against undisclosed use of traditional varieties - this
right protect farmers‘ interest when a breeder commercially
exploits traditional variety and does not disclose it. The
claim can be filed by any person on behalf of the
farmer/tribal or local community.
o Right to access to seed - this right directs the breeders of the
registered plant variety to meet the seed demands of the
farmers at a reasonable price.
o Right to free service - The farmers are exempted from fees
to be paid during stages of registration of plant variety.
o Right to protection against accusations of infringement -
this right protects the farmers from infringement and other
legal accusations levied upon him due to his legal ignorance
in using other‘s plant varieties.
2.9.11. Compulsory Licensing
PVP&FR Act, 2001 exercises the principle of Compulsory
Licensing (CL), subject to the situation when plant variety is not

125
available to the public at a reasonable price after three years of
registration. The interested person can file an application to
PVP&FR Authority for a grant of CL through Form PV-28.

2.9.12. Interesting Cases Related to Plant Variety Protection in India

PepsiCo Potato Case - PepsiCo India Holding (PIH) filed a case
against farmers of Gujarat for illegally growing and selling PepsiCo
registered Hybrid Potato Plant Varieties (FL 1867 and FL 207) in
the year 2019. The case led to public outrage and pushed the
government to moderate PepsiCo to withdraw the case against the
farming community of India. PIH withdrew its case based on the
provisions of ‗Farmers Rights‘ under the PVP&FR Act, 2001
enacted in India.
Monsanto Vs Nuziveedu Seeds Limited - Monsanto, an American
company, filed a case against Indian agro company Nuziveedu in
the year 2016 for not paying due Patent royalties over infused BT
Gene cotton variety that was patented by Monsanto. Nuziveedu
challenged the Patent validity of infused BT gene cotton plant in
India. As plants or plant varieties cannot be patented in India
[according to Section 3 (f) of the Patent Act, 1970], the Indian court
invalidated Monsanto‘s patent on the BT Cotton plant and directed
Monsanto to apply for plant protection under PVP&FR Act, 2001.

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2.10. National Biodiversity Authority
According to the international organization based in
Switzerland i.e. International Union for Conservation of Nature
(IUCN), India is a megadiverse country with 2.4% of the world's
land area and accounts for 7-8% of all recorded species, including
species of plants and animals.
Due to certain inevitable things happening in the country like
population explosion, climate change and lax implementation of
environmental policies, several species of plants and animals face
the threat of extinction. To ensure and regulate the sustainable use
of the resources, National Biodiversity Authority (NBA-
http://nbaindia.org/link/304/1/1/home.html) was established in 2003
by the Central Government to implement India‘s Biological
Diversity Act (2002). The NBA has its Headquarters in Chennai,
Tamil Nadu. It is an autonomous statutory body under the Ministry
of Environment, Forest and Climate Change, Government of India.
The prominent functions of the NBA are:
 To facilitate and advise the Government of India on issues of
conservation, sustainable use of biological resources and fair,
equitable sharing of benefits of use arising out of the utilization
of biological resources.
 To assist the State Governments in the selection of areas of
biodiversity importance under Sub-Section (1) of Section 37 as
heritage sites and measures to be adopted for the management
of such heritage sites.
The authority has created dedicated boards in 28 states called
the State Biodiversity Board (SBB) to ensure the regulation and
implementation of the guidelines issued by the central government
in the respective states. The important functions of the board are:
 Regulation of the matters relating to the conservation of
biodiversity.
 Sustainable use of its components.
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 Equitable sharing of the benefits arising out of the utilization of
biological resources.
 The board can grant approval or undertake any activity referred
to in Sections 3, 4 and 6 of the Act e.g. requests for commercial
utilization or bio-survey and bio-utilization of any biological
resource by the Indians.
 To monitor the local level committees known as Biodiversity
Management Committees (BMCs).
The NBA is supporting a total of 2,05,794 BMCs in 28 states of
India. The committees are responsible for promoting conservation,
sustainable use and documentation of biological diversity, including
preservation of habitats, conservation of landraces, folk varieties
and cultivators, domesticated stocks and breeds of animals and
microorganisms, besides chronicling of knowledge relating to
biological diversity.
More information on Indian Biodiversity can be accessed from
the official website of the National Biodiversity Authority and an
Indian Biodiversity Portal (https://indiabiodiversity.org/). The portal
provides open and free access to biodiversity information. The
salient features of the Biological Diversity Act, 2002 are mentioned
below.
2.10.1. Biological Diversity Act, 2002
The ‗Biological Diversity Act‘ was enacted in 2002 to promote
the conservation of biological resources in India and establishing
mechanisms for equitable sharing of benefits arising from the use of
genetic resources of the country. In compliance with United
Nation‘s guided ‗Convention for Biological Diversity‘ (CBD), India
became a party to CBD in 2002 and enacted the Biological
Diversity Act. The Act describes the biological resources as ‗plants,
animals and micro-organisms or parts thereof, their genetic
material and by-products (excluding value added products) with
actual or potential use or value, but does not include human genetic
material‘ and biological diversity as ‗the variability among living
organisms from all sources and the ecological complexes of which
they are part, and includes diversity within species or between
species and of ecosystems‘ (https://indiacode.nic.in/bitstream/1234

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56789/2046/1/200318.pdf).
India has been exclusively tagged as a megadiverse nation that
houses nearly 10% of the world‘s biodiversity. India possesses 22
agro-biodiversity hotspots possessing rich biodiversity
(http://nbaindia.org/uploaded/Biodiversityindia/Bio_Hot_Spots.pdf)
India has set up twelve national repositories for the safe deposit of
various types of existing biological resources.
2.10.2. International Agreements for Conservation of Biodiversity
The CBD was initiated in 1992 and formulated into action in
1993 with a focus on the conservation of biological resources
existing worldwide. The convention was further supplemented with
two protocol agreements a) Cartagena Protocol (2000; enforced in
2003) and b) Nagoya Protocol (2010; enforced in 2014). Cartagena
Protocol focused on drafting an agreement on biosafety issues
related to the movement of live modified organisms from one
location to another keeping in mind genetic stability. Nagoya
Protocol worked for creating avenues for access to knowledge and
biological resources and devising mechanisms for fair and equitable
sharing of benefits arising from the use of biological knowledge/
resources.
2.10.3. Implementation of Biological Diversity Act, 2002
In order to enact the Biological Diversity Act, 2002, the
Ministry of Environment, Forests and Climate Change, Government
of India has established:
 National Biodiversity Authority (NBA; at the national level).
 State Biodiversity Boards (SBB; at the state level; in 28 states).
 Biological Management Committees (BMCs; at the local level;
2, 05,794 BMCs set up).
NBA has authorized BMCs to create People‘s Biodiversity
Register (PBR), which is a legal document that contains an
inventory of biological resources and knowledge available at the
local level covered under BMC. These bodies also oppose the grant
of IP (based on biological resource or Traditional Knowledge of
India) in the foreign country and, in fact, prohibits the transfer of
biological resources of India to any other country without prior

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approval. These bodies also help in recognizing ‗Biological
Heritage Sites‘ in India that possess rich biodiversity. Some of the
popular biological heritage sites in India are Gharial Rehabilitation
Centre, Lucknow, Uttar Pradesh; Majuli, Assam; Dailong Village,
Tamenglong, Manipur; University of Agricultural Sciences, GKVK
Campus, Bengaluru, Karnataka; Ameenpur Lake, Sangareddy,
Telangana; Tonglu Biological Heritage site under the Darjeeling
Forest Division; Darjeeling, West Bengal and many others
(http://wiienvis.nic.in/Database/bhs_8650.aspx).
Any foreign national or non-resident Indian or any foreign
company cannot use the biological resources of India without prior
permission and authorization from the NBA. Permission is required
to procure IP rights over the product/technology that arises from
such biological resources. In addition, NBA plays an important role
in addressing issues on IP ownership, technology transfer, monetary
and non-monetary compensations, creation of R&D units, etc.

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