OVERVIEW OF THE CONCEPT OF PROPERTY

The term property includes all the legal rights of a person. That is to say that it includes complete
ownership of a man on material as well as incorporeal things. Property is basically of two
categories: Corporeal Property and Incorporeal Property. Corporeal Property has a tangible
existence in the world and is related to material things such as land, house, ornaments, silver, etc.
Incorporeal Property is intangible because its existence is neither visible nor tangible. Right of
easement and copyrights are incorporeal property.

Industrial Property

Industrial property takes a range of forms, the main types of which are outlined here. These
include patents for inventions, industrial designs (aesthetic creations related to the appearance of
industrial products), trademarks, service marks, layout-designs of integrated circuits, commercial
names and designations, geographical indications and protection against unfair competition. In
some cases, aspects of an intellectual creation, although present, are less clearly defined. What
counts then is that the object of industrial property consists of signs conveying information, in
particular to consumers, regarding products and services offered on the market. Protection is
directed against unauthorized use of such signs that could mislead consumers, and against
misleading practices in general.

“Industrial property shall be understood in the broadest sense and shall apply not only to industry
and commerce proper, but likewise to agricultural and extractive industries and to all
manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle, minerals,
mineral waters, beer, flowers, and flour.” Paris Convention – Article 1(3)

HISTORICAL BACKGROUND OF IPR

The origins of Intellectual Property – 500 BC

The history of intellectual property is complex and fascinating. It begins in 500 BCE when
Sybaris, a Greek state, made it possible for citizens to obtain a one year patent for “any new
refinement in luxury.” Patent, trademark and copyright laws have become more complicated in
the ensuing centuries but the intent remains the same. Countries establish intellectual property
laws to foster creativity and to make it possible for the inventor to reap the benefits of their
ingenuity.

Intellectual Property Legislation -1623

Mentions of copyrights, patents and other matters of intellectual property law are sparse in early
history. It is not until medieval Europe that some major and well-known legislation was passed.
The first of these was the Statute of Monopolies. This British law was established in 1623. At the
time, all major industries were controlled by guilds. Each guild held considerable power, with
the government endowing them with the ability to dictate what products and raw materials could
be imported as well as how those items would be produced and sold. Moreover, the guilds were
responsible for bringing all new innovations to the marketplace, essentially giving them
ownership and control over inventions even if they had nothing to do with their creation.

Ownership Rights – 1710

The Statute of Monopolies changed that by allowing the author or inventor to retain their
ownership rights. Monopolies, in the form of government-sanctioned guilds, were no longer
granted. The law also guaranteed the inventor a 14 year period during which he had the exclusive
right to govern how his invention was used.Other significant legislation came in 1710 with the
Statute of Anne. This law similarly provided a 14 year term of protection. It also gave inventor
the option of seeking a 14 year renewal term. Aimed largely at copyrights, this law granted
authors rights in the recreation and distribution of their work.

Intellectual Property in colonial US – Early 1800’s

Shortly after the U.S. broke away from Great Britain, most of the 13 colonies had established its
own system for intellectual property protection. The one exception to this was Delaware.
However, it was soon apparent that having each state operate its own system of intellectual
property protection was problematic, leading to the establishment of federal laws that had
precedence over any state laws.

Global Intellectual Property – Late 1800’s

In 1883, the Paris Convention came into being. It was an international agreement through which
inventors could protect their innovations even if they were being used in other countries. Writers
came together in 1886 for the Berne Convention which led to protection on an international level
for all forms of written expression as well as songs, drawings, operas, sculptures, paintings and
more. Trademarks began to gain wider protection in 1891 with the Madrid Agreement while the
offices created by the Paris and Berne Conventions eventually combined to become the United
International Bureaux for the Protection of Intellectual Property, the precursor of today’s World
Intellectual Property Organization, which is an office of the United Nations.

DIFFERENT FORMS OF INTELLECTUAL PROPERTY AND ITS CONCEPTUAL

ANALYSIS

Copyright

Copyright law deals with the protection and exploitation of the expression of ideas in a tangible
form. Copyright has evolved over many centuries with respect to changing ideas about creativity
and new means of communication and media. In the modern world, the law of copyright
provides not only a legal framework for the protection of the traditional beneficiaries of
copyright, the individual writer, composer or artist, but also the publication required for the
creation of work by major cultural industries, film; Broadcast and recording industry; And
computer and software industries.

It resides in literary, dramatic, musical and artistic works in ”original’ cinematic films, and in
sound recordings set in a concrete medium. To be protected as the copyright, the idea must be
expressed in original form. Copyright acknowledges both the economic and moral rights of the
owner. The right to copyright is, by the principle of fair use, a privilege for others, without the
copyright owner’s permission to use copyrighted material. By the application of the doctrine of
fair use, the law of copyright balances private and public interests.

Trademark

A trademark is a badge of origin. It is a specific sign used to make the source of goods and
services public in relation to goods and services and to distinguish goods and services from other
entities. This establishes a link between the proprietor and the product. It portrays the nature and
quality of a product. The essential function of a trademark is to indicate the origin of the goods to
which it is attached or in relation to which it is used. It identifies the product, guarantees quality
and helps advertise the product. The trademark is also the objective symbol of goodwill that a
business has created.

Any sign or any combination thereof, capable of distinguishing the goods or services of another
undertaking, is capable of creating a trademark. It can be a combination of a name, word, phrase,
logo, symbol, design, image, shape, colour, personal name, letter, number, figurative element
and colour, as well as any combination representing a graph. Trademark registration may be
indefinitely renewable.

Geographical indication

It is a name or sign used on certain products which corresponds to a geographic location or

origin of the product, the use of geographical location may act as a certification that the product
possesses certain qualities as per the traditional method. Darjeeling tea and basmati rice are a
common example of geographical indication. The relationship between objects and place
becomes so well known that any reference to that place is reminiscent of goods originating there
and vice versa.

It performs three functions. First, they identify the goods as origin of a particular region or that
region or locality; Secondly, they suggest to consumers that goods come from a region where a
given quality, reputation, or other characteristics of the goods are essentially attributed to their
geographic origin, and third, they promote the goods of producers of a particular region. They
suggest the consumer that the goods come from this area where a given quality, reputation or
other characteristics of goods are essentially attributable to the geographic region.

It is necessary that the product obtains its qualities and reputation from that place. Since those
properties depend on the geographic location of production, a specific link exists between the
products and the place of origin. Geographical Indications are protected under the Geographical
Indication of Goods (Registration and Protection) Act, 1999.

Industrial design
It is one of the forms of IPR that protects the visual design of the object which is not purely
utilized. It consists of the creation of features of shape, configuration, pattern, ornamentation or
composition of lines or colours applied to any article in two or three-dimensional form or
combination of one or more features. Design protection deals with the outer appearance of an
article, including decoration, lines, colours, shape, texture and materials. It may consist of three-
dimensional features such as colours, shapes and shape of an article or two-dimensional features
such as shapes or surface textures or other combinations.

Plant variety

A new variety of plant breeder is protected by the State. To be eligible for plant diversity
protection, diversity must be novel, distinct and similar to existing varieties and its essential
characteristics under the Plant Protection and Protection Act, 2001 should be uniform and stable.
A plant breeder is given a license or special right to do the following in relation to different types
of promotional material:

1. Produce and reproduce the material

2. Condition the material for the purpose of propagation

3. Offer material for sale

4. Sell the materials

5. Export the materials

6. Import the materials

7. The stock of goods for the above purposes

Typically, countries are protecting new plant varieties through the Sui Genis system. The general
purpose of conservation is to encourage those who intend to manufacture, finance, or exploit
such products to serve their purpose, particularly where they otherwise do not work at all.

The enactment of the Protection of Plant Varieties and ‘Farmers’ Rights Act 2001 is an outcome
of the India’s obligation which arose from article 27(3)(b) of the TRIPs Agreement of 2001
which obliges members to protect plant varieties either by patents or by effective sui generic
system or by any combination thereof India declined to protect plant varieties by a sui generis
law, i.e. the Plant Varieties Act.

INTRODUCTION AND OVERVIEW OF PATENT PROTECTION

Patentability Criteria

Patent is granted for an “invention” – this is a universally accepted principle of patent law. 1 The
patent specification describes the invention2 and if the application is granted by the Patent Office,
the patentee is entitled to exclusive rights over the “invention” 3. As you may see, in many ways,
the concept of invention forms the foundation of patent law. Section 2(j) of the Patents Act, 1970
defines the term invention in the following terms: ““invention” means a new product or process
involving an inventive step and capable of industrial application” For ease of understanding, let’s
break down this definition into its constituent parts:

 The invention must be a “product” or a “process”.

 In order to qualify as an invention, a product or process:
 Must be “new”; and
 Must involves an “inventive step”; and
 Must be “capable of industrial application”

It is critical to note that the abovementioned requirements are conjunctive i.e. all the above need
to be satisfied for a product or process to be considered an invention. While we will elaborate
further on the concepts of “new”, “inventive step” and “industrial application” later, it may
already be evident that these requirements conjunctively create a fairly high threshold (as
compared to copyright and trademark law) for a patentee to clear. Adoption of such a threshold
is with good reason – the grant of a patent confers on the patentee exclusive right that often
enable it to eliminate competition4. Thus the law seeks to ensure that such a monopoly is granted

1
See Article 27.1 of the Agreement on Trade Related Aspects of Intellectual Property (“TRIPS Agreement”), which
states “Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions...”
2
See Section 10 of the Patents Act, 1970
3
See Section 48 of the Patents Act, 1970
4
Id
with caution and only where the patentee is able to show that the product or process is truly
worthy of such a monopoly.

Novelty

The term ‘new’ is not defined by the Act. While the Act defines the term “new invention”, this
definition is redundant since the term is not used anywhere else in the Act. In these
circumstances, one has to use the common law meaning of the term to understand the meaning of
the term new. A commonly used definition of “new”/ “novelty” is this – a claim is considered
new if all the elements of the claim cannot be found in a single prior art reference 5. At this point,
it is important for you to understand the concept of prior art – prior art means everything made
available to the public by means of a written or oral description, by use, or in any other way,
before the priority date of the invention6. The most commonly used prior art are written
documents – both previously published patents and other articles published in journals. Now let’s
again examine the definition of “new”. If there exists any single document where all the elements
of a claim can be found, the claim is said to lack novelty. Let’s take an example. An inventor felt
that existing three – legged chairs were too unstable and thus came up (for the first time) with a
four – legged chair. A claim for a four-legged chair can read as under: “A device for resting
comprising of a seating platform, four legs, a backrest and an armrest.” The elements of this
patent are:

1. It is a device (a product patent) which must be used for resting

2. It must have a seating platform

3. It must have four legs

4. It must have a backrest

5. It must have an armrest

Let’s say there is a prior patent that discloses three-legged chair having a seating platform, a
backrest and an armrest. Even though all other elements of our four – legged chair are known,
since element ‘3’ described above is missing from the prior art document, the claim on the four

5
Glaverbel SA vs. Dave Rose and Ors.,2010 (43) PTC 630Farbewerke Hoechst Aktiengesellschaft Vormals Meister
Lucius &Bruning Corporation Vs. Unichem Laboratories and Ors., AIR 1969 Bombay 255
6
The term “state of the art” has been defined under Section 2(2) of the UK Patents Act, 1977
legged chair can be considered ‘new’. Now let’s say another patent discloses a four – legged
stool which has a seating platform and four legs. Does this patent alone make our four – legged
chair not ‘new’? The answer is no. This is because elements ‘4’ and ‘5’ of the chair identified
above are missing from the four – legged stool. You may be wondering if one can combine the
disclosures made in the patent relating to the three – legged chair and the four legged stool to
destroy the novelty of the four – legged stool. The law does not permit this combination or
‘mosaicing’7. As mentioned above, to destroy novelty of a claim, all the elements of the claim
must be found in a single prior art reference and thus combination of two prior art documents is
not possible in the novelty context. Remember that this analysis is only limited to ‘novelty’ and,
as you will see, different rules apply when we analyze whether a claim has an inventive step.

Inventive Step

While, as aforementioned, the statute does not define the term ‘new’ or ‘novelty’, it does provide
the following definition for the term inventive step under Section 2(ja):

“Inventive step” means a feature of an invention that involves technical advance as compared to
the existing knowledge or having economic significance or both and that makes the invention not
obvious to a person skilled in the art; The Supreme Court in the aforementioned Novartis case
broke down Section 2(ja) into its elements in the following way: “It [The product] must come
into being as a result of an invention which has a feature that:

(a) entails technical advance over existing knowledge; Or

(b) has an economic significance And

(c) makes the invention not obvious to a person skilled in the art”

This question - what is “obvious” - has been the subject of a large part of patent litigation and
continues to be one of the most vexed questions in all of patent law.

The last few words of Section 2(ja) – “to a person skilled in the art” – introduce us to another
important concept of patent law. Whether or not a product or process has an inventive step is to
be adjudged from the point of view of a “person skilled in the art”. In other jurisdictions such as

7
Von Heyden versus Neustadt, (1928) 45 RPC 48; Glaverbel SA vs. Dave Rose and Ors., 2010 (43) PTC 630
the United States, the term used for the analogous concept is ‘Person Having Ordinary Skill
InThe Art’ (in short also referred to as ‘PHOSITA’).

The person of ordinary skill is not inventive but a person with average, normal skills 8. The work
expected from such a person is of a routine nature and nothing extraordinary or out of the way.
The person of ordinary skill is not expected to know the solution to the problem or else the
analysis would be on the basis of hindsight. The person of ordinary skill in the art is conservative
and does not take risks or go against the established prejudices 9. It is well settled that the more
choices or decisions that the person of ordinary skill will have to make in reaching the solution,
the less obvious the said solution. The greater the complexity and the more instructions there are
on the path to the invention the less obvious it is.

There is another important expression in Section 2(ja) – “technical advance over existing
knowledge”. As explained above, mosaicing is not permissible while carrying out a novelty
analysis. Is it permissible while carrying out an inventive step analysis? The answer is yes,
provided that such a combination of prior art references would have been carried out by an
unimaginative man with no inventive capacity10. Thus while carrying out an obviousness
analysis, the disclosures made in one prior art document may be supplemented by disclosures in
another prior art document if a person skilled in the art would have thought it obvious to consult
the latter after referring to the former in light of the problem he had set out to solve. Such
combination is particularly likely where the disclosures made in one prior art document lead the
person skilled in the art to another prior art document – a good example of this is where one
document cites or cross – refers another document.11

The test for obviousness

It is safe to say that there does not exist one uniform approach to determining obviousness and
even in jurisdictions where one approach has been adopted, different judges have applied the law
differently. In India, the Supreme Court of India dealt with this question expressly in Biswanath
Prasad RadheyShyam vs Hindustan Metal Industries12 which is a three – judge bench decision of

8
General Tire & Rubber Co v Firestone Tyre& Rubber Co Ltd., [1972] RPC 457
9
Genentech/ Boehringer Manheim, T 0455/91
10
Technograph versus Mills and Rockley, [1972] RPC 346 at p. 355
11
Pfizer Ltd.’s patent, 2001 FSR 16 at paragraphs 65 – 66.
12
(1979) 2 SCC 511
the Hon’ble Supreme Court. The Delhi High Court in the F. Hoffmann La Roche versus Cipla
Ltd.13 adopted the Supreme Court test and held as under:

“The ‘obviousness’ has to be strictly and objectively judged. For this determination
several forms of the question have been suggested. The one suggested by Salmond L. J. in Rado
v. John Tye& Son Ltd. is opposite. It is: “Whether the alleged discovery lies so much out of the
track of what was known before as not naturally to suggest itself to a person thinking on the
subject, it must not be the obvious or natural suggestion of what was previously known.”

26. Another test of whether a document is a publication which would negative existence
of novelty or an "inventive step" is suggested, as under:

“Had the document been placed in the hands of a competent craftsman (or engineer as
distinguished from a mere artisan), endowed with the common general knowledge at the 'priority
date', who was faced with the problem solved by the patentee but without knowledge of the
patented invention, would he have said, "this gives me what I want?". To put it in another form:
“Was it for practical purposes obvious to a skilled worker, in the field concerned, in the state of
knowledge existing at the date of the patent to be found in the literature then available to him,
that he would or should make the invention the subject of the claim concerned?””

As is evident from the tests formulated above, the test of obviousness is ultimately a subjective
one14 and involves value judgment15 . This introduces a significant amount of unpredictability in
patent law and this, in my view, is the cause of a large part of patent litigation

Capable of Industrial Application

The term “capable of industrial application “is defined under Section 2(ac) of the Patents Act
which states that “in relation to an invention, means that the invention is capable of being made
or used in an industry;”.It is noteworthy that the words used are “capable of being used” rather
than simply “being used’. Thus the patentee need not have actually used the invention in an
industry to satisfy this requirement and the invention merely needs to be capable of being used in
an industry.

13
2012 (52) PTC 1 (Del)
14
Kirsch Manufacturing Co. v. Gould Mersereau Co., 6 F.2d 793
15
Picard v. United Aircraft Corporation, 128 F.2d 632.
Unfortunately, this definition is not very helpful and not many Courts have dealt with this issue
in any detail. We will thus have to rely on judicial interpretations in other countries to understand
this issue better. A leading case, which summarizes the law as it stands today on this issue, is Eli
Lilly versus Human Genome Sciences Inc.

Product Patent and Process Patent

Patent is granted for an invention which may either be a product or a processbut such a product
or process should be new, involve an inventive step and be capable of industrial application.
Prior to the Patents Amendment Act 2005, only process patents were granted in respect of food,
drugs and pharmaceuticals in India. No product patent was granted in respect of substance
themselves. In Thomas Brandt v. Controller of Patents,16the Delhi High Court held that a
‘process of manufacture’ is independent of the substance produced by the manufacture. Process
of manufacture has a distinctive identity of its own unconnected with the product of
manufacture. In Farbewerke Hoechst AktiengesellschaftVormals Meister Lucius &Bruning
Corporation v. Unichem Laboratories &Ors. 17, the Bombay High Court observed that when a
process patent was obtained after prolonged and thorough research work, it might be possible to
predict the substances produced by the process

Mailbox System

The mailbox system is a TRIPS-imposed obligation on developing countries that wished to

benefit from the TRIPS transitional period by delaying granting of patents for pharmaceutical
products until 2005. In exchange for not granting patents, these countries had to establish a
“mailbox” system for receiving and filing patent applications from the beginning of the
transitional period in 1995. In accordance with the “mailbox” provisions in TRIPS Art. 70.8,
countries concerned had to provide a means by which patent applications could be filed during
the transitional period. The mailbox provision allowed applicants to file for patents and thereby
establish filing dates, while at the same time permitting member countries to defer the granting
of the patent for pharmaceutical products. The date of filing (or, in some cases, the date of
priority) is important, as it is used to assess whether or not the application meets the necessary
conditions for patenting a product, i.e. novelty, inventiveness and being capable of industrial

16
AIR 1989 Del 249 at 251
17
AIR 1969 Bom 255
application10 . The mailbox allows the patent application to remain “fresh”, even though years
pass between the patent application mailbox filing and its examination. Upon examination, if the
application fulfils the necessary criteria for granting a patent under the new post-2005 law, the
patent will be issued for a period of 20 years. For instance, if a pharmaceutical company had
wanted to apply for a product patent in India in 1997, the patent application would be put in the
Indian mailbox, “waiting” for the Indian patent office to start examining pending applications as
of January 1st 2005. If the patent application filed in 1997 meets all the patentability criteria
under new post-2005 Indian law, the patent would be granted some time after 2005, and expire at
the latest in 2017. The patent lifetime only runs from the filing date, however: this means that a
portion (up to half) of what would have been the patent life expires while the patent application
is in the mailbox.

APPLYING FOR A PATENT

The Patents Act lays down the procedure for the grant of patent to an inventor to exploit his
invention for 20 years subject to the fulfillment of certain conditions. The first step is to make an
application in the prescribed form along with provisional or complete specification. The
application is thereafter published and examined (if requested) and search for anticipation is
made. Oppositions are invited from the public to the grant of patent and where there is no
opposition or the opposition is decided in favour of the inventor, the patent is granted and sealed
which confers certain rights on the patentee.

Who can Apply for a Patent?

An application for a patent for an invention may be made by any of the following persons either
alone or jointly with any other person:

 any person claiming to be the true and first inventor of the invention

 any person being the assignee of the person claiming to be the true and first inventor in
respect of the right to make such an application

 the legal representative of any deceased person who immediately before his death was
entitled to make such an application.
True and First Inventor

“True and first Inventor” means a person who has first made an invention. Where two persons
have made the same invention independently and not disclosed it then the inventor who applied
first for the patent is to be taken as the first and true inventor of the invention, irrespective of the
fact that he made the invention later than the other inventor. 18 According to Section 2(1)(y), true
and first inventor does not include either the first importer of an invention into India, or a person
to whom an invention is first communicated from outside India.

Assignee of the true and first inventor

Any person to whom an invention has been assigned by the true and first inventor is also eligible
to apply for patent. “Assignee” includes an assignee of the assignee or the legal representative of
a deceased assignee.19 Invention assigned to a firm is a valid assignment. A firm, therefore, can
also apply for a patent as assignee. A corporation can also apply for a patent as assignee.

Legal Representative of the Deceased Inventor

The legal representative of any deceased person who immediately before his death was entitled
to make an application for a patent for an invention is also eligible to apply for patent. Legal
representative means a person who in law represents the estate of a deceased person.20 Thus,
legal representative of (i) a true and first inventor and (ii) assignee of true and first inventor and
(iii) assignee of assignee of the true and first inventor are also eligible to apply for a patent.

FORM OF APPLICATION

According to Section 7, every application for a patent shall be for one invention only. The
application is to b filed in the Patent Office. Under the Patents Act, 1970 patent offices could be
established at various places. An application for a patent is to be made in the form prescribed and
filed in the appropriate patent office.

18
Canadian General Electric v. Fada Radio, AIR 1930 PC 1 at p.5
19
Section 2(1)(ab), Patents Act, 1970
20
Section 2(1)k, Patents Act, 1970
Every international application for a patent under the Patent Cooperation Treaty (PCT), as may
be filed designating India is to be deemed to be an application under this Act, if a corresponding
application has also been filed before the Controller General of Patents, Designs and Trade
Marks in India. The filing date of such application and its complete specification processed by
the Patents Office as designated office or elected office shall be the international filing date
accorded under the PCT.

An applicant in respect of an international application designating India shall before the

aforesaid time (i) pay the prescribed national fee and other fee to the patent office (ii) and where
the international application was either not filed or has not been published in English, file with
the patent office, a translation of the application in English, duly verified by the applicant or the
person duly authorized by him that the contents thereof are correct and complete.

Where an application is made by virtue of an assignment of the right to apply for a patent for the
invention, a proof of the right to make the application is to be furnished either along with the
application or thereafter in the prescribed time.

Application to name true and first inventor

Every application is to state that the applicant is in possession of the invention. It shall name the
true and first inventor. Where the true and first inventor is not the applicant, the application is to
contain a declaration that the applicant believes the person so named to be the true and first
inventor.

Provisional and Complete Specification

An application for patent is to be accompanied by a provisional or a complete specification.

Where an application for a patent is accompanied by a provisional specification, a complete
specification shall be filed within twelve months from the date of filing of the application. If the
complete specification is not so filed, the application shall be deemed to have been abandoned. 21

The object of filing a provisional specification is to fix the priority date in accordance with
Section 11. In between the period of filing provisional specification and complete specification,

21
Section 9, Patents Act, 1970
the inventor may conduct further research and improve his invention. A provisional specification
need not describe the invention fully and specifically.

Where two or more applications in the name of the same applicant are accompanied by
provisional specifications in respect of inventions which are cognate or of which one is a
modification of another and the Controller is of the opinion that the whole of such inventions are
such as to constitute a single invention and may properly be included in one patent, he may allow
one complete specification to be filed in respect of all such provisional specifications. The period
of time specified above is to be reckoned from the date of filing of the earliest provisional
specification.

The provisional specification is to ascertain and describe the nature of invention while the
complete specification may also explain in what manner the invention is to be carried out in
execution and therefore, either in a complete specification or amended specification, if an
explanation is made to a provisional explanation, it cannot be said as if the patentee has
abandoned a part of his claim.

Contents of Specification

The specification is a very crucial document. It can mainly be divided into two parts – (i) the
description (which may be accompanied by diagrams or drawings) and (ii) the claim. The
description is to disclose the invention sufficiently, whereas the claim is to mark out the scope of
monopoly rights which are likely to be conferred by the patent office in case the patent is
granted. In EMI v. Lissen22, Lord Russell stated:

The function of the claims is to define clearly and with precision the monopoly claimed, so
that other may know the exact boundaries of the area within which they will be trespassers.
Their primary object is to limit and not to extend monopoly. What is not claimed is
disclaimed.
Section 10 of the Patents Act, 1970 requires that every specification, whether provisional or
complete is to describe the invention. The specification is to begin with a title sufficiently
indicating the subject-matter to which the invention relates. In F Hoffmann-la Roche Ltd. and
Anr. V. Cipla Limited23, the court held that the application of anyone desirous of seeking patent

22
(1939) 56 RPC 23 at 39
23
2008 (37) PTC 71 (Del.)
has to contain specifications that are to conform to the requirements of Section 10.

Drawings, model or sample

The Controller may require the applicant to supply drawings for the purposes of any
specification, whether complete or provisi
onal. Any such drawing shall, unless the Controller directs otherwise, be deemed to form part of
the specification. Where the Controller considers in any special case that the application should
be supplemented by a model or sample of anything illustrating the invention, he may require
such sample or model to be furnished. Such a model or sample is to be furnished before the
application is found in order for grant of a patent. Such model or sample shall not be deemed to
form part of the specification.

Essential Requirements of Complete Specification

Every complete specification is to –

(a) fully and particularly describe the invention and its operation or use and the method by which
it is to be performed;

(b) disclose the best method of performing the invention which is known to the applicant and for
which he is entitled to claim protection; and

(c) end with a claim or claims defining the scope of the invention which is known to the
applicant and for which he is entitled to claim protection;

(d) be accompanied by an abstract to provide technical information on the invention

Claim

The claim should fully and particularly describe the invention and its operation or use and the
method by which it is to be performed. It should also disclose the best method of performing the
invention, which is known to the applicant and for which he is entitled to claim protection; and
end with a claim or claims defining the scope of the invention for which protection is claimed. 24

Abstract

24
Id
The abstract shall contain a concise summary of the matter contained in the specification. The
summary shall indicate clearly the technical field to which the invention belongs, technical
problem to which the invention relates and the solution to the problem through the invention and
principal use or uses of the invention. Where necessary, the abstract shall contain the chemical
formula, which characterizes the invention.

The Controller may amend the abstract for providing better information to third parties. If the
applicant mentions a biological material in the specification which may not be described in such
a way as to satisfy clauses (a) and (b) above, and if such material is not available to the public,
the application is to be completed by depositing the material to an international depository
authority under the Budpest Treaty. The applicant is required to comply with the following
conditions, namely:

(i) the deposit of the material is to be made not later than the date of filing the patent application
in India and a reference thereof is to be made in the specification within the prescribed period;

(ii) all the available characteristics of the material required for it to be correctly identified or
indicated are included in the specification including the name, address of the depository
institution and the date and number of the deposit of the material at the institution;

(iii) access to the material is available in the depository institution only after the date of the
application for patent in India or if a priority is claimed after the date of the priority;

(iv) disclose the source and geographical origin of the biological material in the specification,
when used in an invention.25

PUBLICATION AND EXAMINATION OF APPLICATIONS

According to Section 11A(1), no application for patent shall ordinarily be open to the public for
18 months from the date of filing of application or the date of priority of the application,
whichever is earlier.26 The applicant may request the Controller to publish his application at any

25
Section 10, Patents Act, 1970
26
Rule 24, Patents Rules, 2003
time before the aforesaid period. The Controller shall publish such application as soon as
possible.

Every application for a patent shall be published on the expiry of the aforesaid period of 18
months, except in the following cases where the application –

(i) in which secrecy direction is imposed under section 35; or

(ii) has been abandoned under Section 9(1); or

(iii) has been withdrawn 3 months prior to the prescribed period as aforesaid.

In case a secrecy direction has been given in respect of an application under section 35, then it is
to be published after the expiry of 18 months as stated in section 11A(1) or when the secrecy
direction has ceased to operate, whichever is later.

The publication of every application is to include the particulars of the date of application,
number of application, name of application, name and address of the applicant identifying the
application and an abstract.

Upon publication of an application for a patent, the depository institution is to make the
biological material mentioned in the specification available to the public. On payment of
prescribed fee, the Patent Office may make the specification and drawings, if any, of such
application available to the public.

On and from the date of publication of the application for patent and until the date of grant of a
patent in respect of such application, the applicant shall have the like privileges and rights as if a
patent for the invention had been granted on the date of publication of the application. However,
the applicant shall not be entitled to institute any proceedings for infringement until the patent
has been granted.

Request for Examination

No application for a patent is to be examined unless the applicant or any other interested person
makes a request for such examination. In case the application or any other interested person does
not make a request for examination of the application for a patent within 48 months as stated
here in before, the application is to be treated a withdrawn by the applicant. However, the
applicant may at any time after filing the application but before the grant of a patent withdraw
the application by making a request.

Examination of Application

When a request for examination has been made in respect of an application for a patent, the
application and specification and other documents relating thereto are to be referred at the
earliest by the Controller to an examiner for making a report to him in respect of the following\
matters:

(i) whether the application and the specification and other documents relating thereto are in
accordance with the requirements of this Act and of any rules;

(ii) whether there is any lawful ground of objection to the grant of the patent in pursuance of the
application;

(iii) the result of investigation made under section 13;

(iv) any other matter which may be prescribed.

The examiner to whom such applications and the specification and other documents are referred
shall ordinarily make the report to the Controller within one month. However, this period shall
not exceed 3 months from the date of reference of the application. A first examination report
along with the application and specification is to be sent to the applicant or his authorized agent.
In case other interested person files the request for examination, an intimation of such
examination may be sent to such interested person.

Section 12 of the Act provides for examination of the patent claim. It contemplates the procedure
to be followed in examining the patent claim, which includes the result of investigation to be
made under Section 13. Where a request for examination is made by an applicant or person
interested, the examiner is to make a report in respect of whether the application, specification
and other documents meet the requirements of the said Act and rules, whether there is lawful
ground of objection to the grant of patent under the Act, the result of the investigations on the
ground of anticipation and other matters that may be prescribed.

Where the Controller is satisfied that the application or any specification or any other document
does not comply with the requirements of the Actor rules, the Controller may refuse the
application or may require the application, specification or other documents, as the case may be,
to be amended to his satisfaction before he proceeds with the application and refuse the
application on failure of the applicant to do so,27

REGISTER OF PATENTS AND PATENT OFFICE

Particulars of Register of Patents

A register of patents is kept at every patent office under the control and management of the
Controller. The register or any part of it can be kept in computer floppies, diskettes or any other
electronic form. The contents of the register are-

🞚 Name and address of grantees of patents

🞚 Notification of assignments, transmissions, licenses, amendments, extensions and

revocations of patents

🞚 Other prescribed matters affecting the validity or proprietorship of patents

🞚 A certified or true copy of, or extracts from the register of patents is to be

admissible in evidence in all legal proceedings.

🞚 Particulars regarding proceedings under the Act before the Controller or Appellate
Board or the courts in respect of every patent.

Assignments

An assignment of a patent or of a share in a patent, a mortgage, license or the creation of any

other interest in a patent is not to be valid unless the same were in writing and the agreement
between the parties concerned is reduced to the form of a document embodying all the terms and
conditions governing their rights and obligations and duly executed. Registration of an
assignment must be completed within six months of the execution of the document. Registration
is effective from the date of execution after its registration.

Registration of Assignment, Transmissions, etc.

27
Section 15, Patents Act, 1970
Any person acquiring title to a patent must apply in writing to the Controller for the registration
of his title or notice of his interest in the register. Application may be made for registration of
title by any such person acquiring title or by the assignor, mortgagor, licensor or other party to
that instrument. Where an application is made under this section for the registration of the title of
any person the Controller shall, upon proof to title of his satisfaction,—

(a) where that person is entitled to a patent or a share in a patent, register him in the register as
proprietor or co-proprietor of the patent, and enter in the register particulars of the instrument or
even by which he derives title; or

(b) where that person is entitled to any other interest in the patent, enter in the register notice of
his interest, with particulars of the instrument, if any, creating it.

Rectification of Register by Appellate Board

On application of aggrieved person, the Appellate Board is authorized to make an order for
making variation or deletion of any entry in the register as it may think fit from the following-

(a) by the absence or omission from the register of any entry; or

(b) by any entry made in the register without sufficient cause; or

(c) by any entry wrongly remaining on the register; or

(d) by any error or defect in any entry in the register

Notice of any application to the Appellate Board may is to be given to the Controller who shall
be entitled to appear and be heard on the application

Patent Office

The Controller General of Patents, Designs and Trade Marks appointed under section 3(1) of the
Trade Marks Act, 1999 shall be the Controller of Patents for the purposes of this Act. Central
Government may appoint as many examiners and other officers and with such designations as it
thinks fit. The Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM)
is located at Mumbai. The Head Office of the Patent office is at Kolkata and its Branch offices
are located at Chennai, New Delhi and Mumbai. All officers and employees of the patent office
shall be incapable, during the period for which they hold their appointments, to acquire or take,
directly or indirectly, except by inheritance or bequest, any right or interest in any patent issued
by that office

GRANT OF PATENT

Where an application for a patent has been found to be in order for grant of patent and either - (i)
the application has not been refused by the Controller by virtue of any power vested in him; or
(ii) the application has not been found to be in contravention of any of the provisions of the Act,
then the patent is to be granted as expeditiously as possible to the applicant or, in the case of a
joint application, to the applicants jointly, with the seal of the patent office and the date on which
the patent is granted is to be entered in the register. On grant of the patent, the Controller is to
publish the fact that the patent has been granted and thereupon the application, specification and
other documents related thereto shall be open for public inspection.28

Every patent shall be in the prescribed form and shall have effect throughout India. A patent is to
be granted for one invention only. However, it is not competent for any person in a suit or other
proceeding to take any objection to a patent on the ground that it has been granted for more than
one invention.29

Rights of Patentee

The rights of patentee are negative rights which are enforceable at the instance of the patent
holder. A patent is to confer upon the patentee the following rights:

(i) where the subject matter of the patent is a product, the exclusive right to prevent third parties,
who do not have his consent, from the act of making, using, offering for sale, selling or
importing for those purposes that product in India

(ii) where the subject matter of the patent is a process, the exclusive right to prevent third parties,
who do not have his consent, form the act of using that process, and form the act of using,
offering for sale, selling or importing for those purposes the product obtained directly by that
process in India.30

28
Section 43, Patents Act, 1970
29
Section 46, Patents Act, 1970
PATENTS RIGHTS – LIMITED EXCEPTIONS

The rights of a patent holder i.e. both for the process patent as well as the product patent are
enshrined in Section 48 of the Patents Act 1970. However the section is subject to exceptions,
these exceptions being the preceding section 47 which is titled “Grant of Patent to be subject to
certain conditions”, the succeeding section 49 which is titled ”Patent rights not infringed when
used on foreign vessels temporarily or accidentally in India”, the two sub-sections of Section
107A, by the operation of proviso 3 of Section 11A, and Section 100 which establishes the
power of Government to use inventions for own purposes read along with Sections 101 and
102 which deal with rights of third parties in respect of use of invention for purposes of
Government and acquisition of invention and patents by Government respectively.

The raison d’être of a patent regime is to secure an invention against unauthorized use by
granting a patent to the owner of the invention while at the same time ensuring promotion of
technological innovation, dissemination of knowledge, and promotion of public health. This is
enshrined in Section 83 of the Patents Act 1970 which declares general principles applicable to
the working of a patent1. Section 83 with its 7 sub-sections establishes the principles that govern
the grant of patent in India and categorically states that the exclusivity granted to the patent
holder shall not impede the working of a patent by Government for public non-commercial use.

1. The Experimental or Scientific Use Exception

Under this exception enshrined in Section 47(3) of the Patents Act any person may use the
patented product or process for the purpose ‘merely of experiment or research including
imparting of instructions to pupils’2. As per the 2014 amendment to the Patent Rules, the term
‘any person’ would include natural persons, small entities as well as large entities.

2. Public Non-Commercial Use Exception

There are 3 sub-sections in the Section 47 namely subsections (1), (2) and (4) which covers
public non-commercial use as a condition to grant of patent rights enshrined in Section 48. These
3 subsections read as follows:
30
Section 48, Patents Act, 1970
  Section 47(1) states that the Government may import or make any patented invention for
its own use. The Government may authorize any person to import or make on behalf of
the Government.

 Section 47(2) states that any process in respect of which the patent is granted may be
used by or on behalf of the Government for the purpose merely of its own use

 Section 47(4) states that the Government may import any patented medicine or drug for
its own use or for distribution in government establishments including
hospitals, dispensaries or any medical institution. The establishment must be either
maintained by the Government or run on behalf of the Government or has been so
notified by the Government in the official Gazette.

3. Regulatory Use Exception

Section 107A declares certain acts not to be declared as infringement. Incorporated into the
Patents Act 1970 vide the Patents (Amendment) Act of 2002, the subsection (a) of Section 107A
states that ‘any act of making, constructing, using, selling or importing a patented invention
solely for uses reasonably related to the development and submission of information required
under any law for the time being in force, in India, or in a country other than India, that regulates
the manufacture, construction, use, sale or import of any product’ does not amount to an
infringement of patent right of the patent owner.

Unit –III

INTRODUCTION TO TRADEMARK

The Trade Marks Act of 1999 defines a trade mark as: “a mark capable of being represented
graphically and which is capable of distinguishing the goods or services of one person from
those of others and may include shape of goods, their packaging and combination of colours”.1
To qualify as trade mark it should be a mark that can be represented graphically. The mark used
should also be distinctive, i.e. it should enable consumers to differentiate the goods of the trader
from that of his competitors in the marketplace. It includes: “a device, brand, heading, label,
ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of
colours or any combination thereof.”2 As the list provided is not exhaustive, there is scope to
include non-conventional marks as marks.3 The above said definition emphasizes on the
communicative ability of a mark. Trade mark is justified as: “it enables those engaged in trade,
and the public more generally, to discover quickly and cheaply which signs third parties have
already claimed”.4

Functions of Trademark

The trademark performs the role of identifying the goods of a particular manufacturer and gives
an indication of its origin, or establishes a connection in the course of trade. It assures quality of
the product and acts as a symbol representing the goodwill of the business. Also a trademark
advertises the product and protects the user and/or purchaser from confusion and deception by
identifying the source or origin of particular goods and services and distinguishes them from
other similar products. If consumers believe that all items bearing the symbol come from the
same source, the said symbol has acquired the ‘source-identifying’ property of a trademark.
Priorly, registration of trademarks was not a prevalent practice; the law based on common law
which was substantially the same as in England was followed. Thereon, the Trade
Marks Registration Act 1875 came into being and it was the Trade Marks Act, 1940 which was
the first enactment to institutionalise the machinery for registration and statutory protection
of trade marks in India. In order for any subject matter to qualify as property a trade mark had to
be ‘distinctive.’ In the matter of General Electric Co. v. General Electric Co Ltd., 5 the Court
observed that the right [of property in trademark] was an adjunct of the goodwill of a business
and was incapable of separate existence dissociated from that goodwill.

Therefore, distinctiveness became a notion to define the subject-matter protectable as trade mark.
As per S.2(1)(zb) of the Trade Marks Act, 1999, a ‘trade mark’ means,

“a mark capable of being represented graphically and which is capable of distinguishing the
goods or services of one person from those of others and may include shape of goods, their
packaging and combination of colours; and
(i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in
relation to goods or services for the purpose of indicating or so as to indicate a connection in the
course of trade between the goods or services, as the case may be, and some person having the
right as proprietor to use the mark; and

(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to
goods or services for the purpose of indicating or so to indicate a connection in the course
of trade between the goods or services, as the case may be, and some person having the right,
either as proprietor or by way of permitted user, to use the mark whether with or without any
indication of the identity of that person, and includes a certification trade mark or collective
mark.”

Furthermore the definition of a mark within the meaning of S. 2(l)(m) includes, ‘a device, brand,
heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or
combination of colours or any combination thereof.’ The initial registration of a trademark shall
be for a period of ten years but may be renewed from time to time for an unlimited period by
payment of the renewal fees. Therefore the term of protection for a trade mark can last till
perpetuity. Such long-lasting monopoly-like right requires the trade mark to be one that is
capable of performing the necessary function of distinguishing the goods or/and services of one
trader from those of the others. This function or capability of distinguishing is referred to as
‘distinctiveness’ of a trade mark. The capability may be some inherent distinctiveness in the
mark itself or perhaps acquired distinctiveness through use of the mark over a period of time.

Illustratively speaking, the case of Abercrombie Formulation, developed by the 2nd Circuit
Court of Appeals in Abercrombie & Fitch Co. v. Hunting World, Inc., 6 is a good reference for
understanding the spectrum of distinctiveness. Justice Learned Hand has laid down a spectrum
which measures distinctiveness on the following categories:

 Generic—does not qualify for protection

 Descriptive—sometimes qualifies for protection

 Suggestive—qualifies for protection

 Arbitrary or fanciful—qualifies for protection

  Invented - affords strongest protection

Generic: By their nature, generic marks are not distinctive. They do not warrant protection
because if one seller could trademark a generic name, other sellers would be unable to describe
their products and would thus be at a great disadvantage. For example, it is not permissible to use
a word mark "Milk" to brand the product milk or the words "Hiking Boots" to brand boots. Such
words which have become publici juris or generic cannot be appropriated as they belong to the
public at large.

Descriptive: Descriptive terms and symbols generally identify attributes of the product, such as
the purpose, size, colour, ingredients, origin, and so forth. Merely descriptive, general marks do
not qualify for protection. To qualify for protection, a mark must acquire a ‘secondary meaning.’
To acquire a secondary meaning, the public must associate the mark with the manufacturer or
seller rather than the underlying product itself. For example, "Jiffy Lube" describes a speedy lube
and oil but has acquired a secondary meaning in the mind of the consumers. A surname
incorporated into a mark is treated as a descriptive mark—it does not qualify for protection until
it acquires a secondary meaning. Examples include McDonald's and Hilton Hotels.

Suggestive: A suggestive mark does not describe the product; it suggests its nature or
characteristics. Although an inference must be made about the product, the product must still
bear some relationship to the mark. For example, a Pathfinder suggests something that is at home
off-road, but it has no inherent relationship to a four-wheeldrive SUV made by Nissan. Similarly,
"Titleist" has no inherent relationship to a golf ball, but it does suggest correlation to
championship sports equipment.

Arbitrary and Fanciful: Marks that are arbitrary and fanciful do not describe or suggest any
characteristic of the product. When the meaning of the symbol used in the mark is not inherently
related to the product, the product is more likely to be associated with the symbol, ensuring that
the consumer recalls the arbitrary association drawn by use of the unrelated symbol for
identifying a product. Examples include Apple for computers, Yamaha for motorcycles, Chevron
for gasoline and Maytag for appliances. These words have no inherent relationship with their
products and are thus understood to be fanciful. Invented words are afforded strongest protection
owing to their inherent newness.
Herein it may be noted that the Trade Marks Act 1999 prohibits the registration of a trade
mark which consists exclusively of marks or indications which may serve to designate the
geographical origin of the goods, such that only those geographical names which do not serve in
trade may be registrable. For instance, the use of geographical names in an arbitrary or fanciful
manner. For example, North Pole bananas. Moreover, Rule 102 of the Trade Marks Rules 2002
allows parties to request the Registrar to refuse or invalidate a registered trade mark on account
of the following:

i. The trade mark contains or consists of a geographical indication with respect to goods or
class or classes of goods not originating in the territory of a country, or a region or
locality in that territory which such geographical indication indicates, if the use of such
geographical indication in the trade mark for such goods, is of such nature as to confuse
or mislead the persons as to the true place of origin of such goods or class or classes of
goods; or

ii. The trade mark contains or consists of geographical indication identifying goods or class
or classes of goods notified under S.22(2) of eth Geographical Indications of Goods
(Registration and Protection) Act 1999.

The Trademark Act, 1999 has adopted the expression ‘distinctive character’ in the mark which
refers to the ‘capability of distinguishing.’ By that, words such as ‘best’, ‘superior’ etc (used for
instance to signify the quality of transport services such as ‘Best Bus’ services) are not
distinctive of the goods/services but merely descriptive of the qualitative aspects of the
good/service, hence it cannot constitute a distinctive trade mark. S.9 (1) of the Trade Marks Act,
1999 provided that even a descriptive trade mark may be registered if before the date of
application of registration, the mark acquires a distinctive character on account of the use or has
become a well-known trade mark. Such descriptive trade mark may be registrable owing to the
mark having acquired a ‘secondary meaning’ in the minds of the consumers. The Hon’ble
Supreme Court in the matter of Godfrey Philips India Ltd v. Girnar Food & Beverages (P)
Ltd7 elucidates upon the protection accorded to descriptive trademarks in the following
manner: ‘a descriptive trade mark may be entitled to protection if it has assumed a secondary
meaning which identifies it with a particular product or as being from a particular source.’ 8
Trademark law unlike patent law allows the proprietor of a distinctive mark to enjoy exclusive
rights with respect to its use even without registration. However, the advantages of registering a
trademark are as follows:

i. It confers on the proprietor certain exclusive rights to use a particular mark in relation to
specified commercial activities.

ii. In contrast to passing off, it enables the traders to protect their marks before they are
introduced onto the market.

iii. Once a mark is registered, there is a presumption, not guarantee although, that the
registration is valid.

iv. Registration reduces the possibility of disputes. This is because, it confers on the
trademark proprietor increased certainty as it determines the scope of the property
protected as trademark.

Notably, registering a trademark doesn’t necessarily mean a party cannot successfully sue the
proprietor for passing off.8When an applicant applies for the registration of a trademark, the
registry may or may not accept the application. There are several grounds of refusal on which the
Registrar may base the rejection. Any mark may be registered as a trademark unless a specific
ground for refusal exists. The grounds for refusal are divided into two classes: ‘absolute’, which
relates to the intrinsic qualities of the mark, and ‘relative,’ which relate to conflicts with
earlier trade mark rights belonging to third parties

ABSOLUTE GROUNDS FOR REFUSAL: (SEC. 9 OF TRADE MARKS ACT, 1999.)

According to the Trademarks Act, a trademark can only be registered if it is distinctive in nature.
An invented word can also be registered as long as it is not descriptive. There is a provision in
the Act which deals with well-known trademarks wherein a trademark which has become so
popular that the people immediately associate the product with the mark, then such a mark can
be registered as well. The Act further provides that –
 a. The mark should not cause confusion

b. The mark should not be devoid of distinctiveness

c. The marks which consist exclusively of marks or indications which have become
customary in the current language or in the bona fide and established practices of the
trade should not be registered

d. The mark should not hurt religious sentiments

e. The mark should not be obscene

f. Marks, which are protected under the Emblems and Names (Prevention of Improper Use)
Act, 1950 should not be registered.

g. A mark shall not be registered as a trade mark if it consists exclusively of –

i. The shape of goods which results from the nature of the goods themselves; or

ii. The shape of goods which is necessary to obtain a technical result; or

iii. The shape, which gives substantial value to the goods.

To elaborate upon the aspect of confusion, reliance is placed upon the Supreme Court’s
observation in the matter of Amritdhara Pharmacy v. Satya Deo Gupta,9 which is stated below:

[I]t will be noticed that the words used in the sections and relevant for our purpose are ‘likely to
deceive or cause confusion.’ The Act does not lay down any criteria for determining what is
likely to deceive or cause confusion. Therefore, every case must depend on its own particular
facts, and the value of authorities lies not so much in the actual decision as in the tests applied for
determining what is likely to deceive or cause confusion. On an application to register, the
Registrar or an opponent may object that the trade mark is not registrable by reason of clause (a)
of S.8, or sub-section (1) of S.10 (of Trade Marks Act 1940), as in this case.10

Further, as per Section 9 of the Trade Marks Act,1999 the following are the grounds on which
the Registrar can refuse the registration of a certain trademark: if the mark is of a non-distinctive
character, descriptive, generic, contrary to public policy or morality, likely to deceive public,
prohibited by law or are in bad faith. For a mark to be valid, it must not fall within any of the
following three grounds, namely- it should not be of a non-distinctive character, should not be
descriptive in nature and should not be generic. The section has a proviso that a sign, which falls
within any of these provisions isn’t to be treated as invalid, if, as a result of use, it has acquired
distinctive character i.e., secondary meaning in the minds of the consumers.

In order to assess if a mark has attained secondary meaning, customer’s perception displaced
primary meaning, exclusivity of use, manner of use, duration of use, volume of goods marketed,
advertisement, consumer surveys have to be factored in. In making the predictive assessment, the
relevant class from whose perspective the sign must be assessed has been defined as comprising
the average consumers of the category of goods, who are reasonably well informed and
reasonably observant and circumspect. A mark will normally be viewed as a whole: a sign will
not be rejected just because parts of the sign lack distinctiveness or are descriptive or customary
in trade.

In order to exclude marks, which do not even perform the distinguishing function, it is important
to assess whether the mark is devoid of distinctive character. The focus is again on how the
trademark would be perceived by the relevant public. This ground excludes those signs, which
the average consumer doesn’t identify as reliably indicating the commercial origin of the
product. There is no requirement for the sign to be inventive, innovative, imaginative, unusual,
creative, etc- signs are excluded only if they are devoid of distinctive character. A minimal
degree of distinctive character is enough. However, simple colour marks are likely to be treated
as devoid of distinctive character. A colour per se isn’t inherently capable of distinguishing the
goods of a particular undertaking. Moreover, limited number of colours makes it not preferable
to marking them. However, shades, narrowing the scope of specification can be fine.11 In
determining the question of shapeas a distinctive trade mark, one must see if the shape
significantly departs from the norm or customs of the sector and thereby fulfils its essential
function. So it ought to be noted whether there is anything unusual or idiosyncratic about the
shape, such that the relevant consumer would notice and remember it. So the assessment is to be
made for measuring whether the relevant consumer shall think of the shape as indicative of the
source, rather than being merely functional or decorative. 12 The shape ought to be distinctive in
that it is a significant departure from those ordinarily used in the sector and has the capability to
enable a consumer to view it as indicative of trade origin, so much so that the consumers can
perceive the difference between the shape in question and other shapes. One of the aims of Trade
Marks is to protect the public interest by keeping descriptive signs or indications for use by all
traders. Trademarks are only excluded on this ground if they consist exclusively of signs, which
characterize the goods and services. The mark as a whole must be descriptive for it to be
excluded. So marks that are made up of descriptive and non-descriptive matter can be
protected. For a sign to be descriptive, the association between the sign and goods must be
sufficiently specific and direct to show that that sign enables the relevant public to identify those
goods and services immediately. This test is also applicable for pictures, shapes, colours, etc and
not just words. Furthermore, there is a two-fold reason to exclude customary and generic marks-
one is that such signs are incapable of distinguishing the goods; second, signs which are
customary in the trade ought to remain available for the benefit of all other traders as well.
However, the proviso provides that if the use is for so long that it became synonymous with the
good, then the mark can be registered. So even if a mark is inherently lacking distinctiveness, it
is possible to register the mark, if it does in fact become distinctive through use. Consumer
recognition is the ultimate litmus test. Finally, the marks contrary to public morality such that
they may hurt religious sentiments, or be objectionable in content or if they are protected under
the Emblems and Names (Prevention of Improper Use) Act, 1950 ought not be registered.

RELATIVE GROUNDS FOR REFUSAL (SEC. 11 OF THE TRADE MARKS ACT, 1999)

S. 11 deals with the relative grounds for refusal of registration. The absolute grounds of refusal
prevent registration prima facie, whereas relative grounds for refusal deal with the mark in
connection to other earlier marks. For example, the trademark for a spare-parts manufacturer
being deceptively similar to an earlier trademark for an automobile manufacturer may mislead or
confuse the consumer as being associated with each other owing to the common trade
connection.

The Section provides that a mark can be refused because of its identity and association with an
earlier trademark and similarity of goods or services covered by the trademark or, its similarity to
an earlier trademark and the identity or similarity of the goods or services covered by the
trademark. This helps in reducing the likelihood of confusion in the public who would assume
the newly registered mark is somehow connected or associated to the previous trademark. It also
provides that objections can be raised in case of any similarity between the earlier
marks. However, an applicant can register such trademark if the proprietor of the earlier mark
has given his/her approval or the mark is registrable under S.12 by virtue of honest concurrent
use. It is the duty of the Registrar to protect a well-known trademark against the identical or
similar trademarks. Primarily, protection of public interest and the interest of
other bonafide traders who are entitled to object if the use of the trade mark proposed for
registration will enable the applicant’s goods/services to be passed off as such other traders’
goods. Given the above, S.11 prescribes that any mark which is similar to a mark which is
already registered (earlier trademark) or is used for similar goods will not be allowed
registration

Well-known Marks

Well known marks are defined under the Trade Marks Act, 1999, as“...a mark which has become
so to the substantial segment of the public which uses such goods or receives such services that
the use of such mark in relation to other goods or services would be likely to be taken as
indicating a connection in the course of trade or rendering of services between those goods or
services and a person using the mark in relation to the first- mentioned goods or services” 13. The
constituents of a well known mark according to the above definition are as follows:

i. a mark (say, mark ‘TATA’ of Tata Sons Ltd. ) which the substantial segment of the public uses
for particular goods or services

ii. issued by another person for other goods or services (say, TATA diamonds)

iii. is likely to indicate a connection between Tata Sons Ltd. and TATA diamonds14 .

This definition appears to be based on Article 16.3 of the Trade Related Aspects of Intellectual
Property (TRIPS) Agreement. One important point of difference between the definition of a well
known mark under the Trade Marks Act, 1999 and Article 16.3 of the TRIPS is the lack of
emphasis on ‘damage to interests of the owner of the registered trademark’ under the Indian Act.
Another aspect of well known trademarks evident from Section 2(zg) is that well known marks
receive protection beyond the goods or services they are used for – hence they receive wider
protection than other trademarks.
Reasons for the heightened protection of well known marks

i. To prevent unfair use of a mark’s reputation

In the Benz decision of 1994, while restraining use of the Benz tristar logo (well known mark) on
under garments, (unrelated goods), it was held that trademark law is not intended to protect a
person who deliberately sets out to take the benefit of somebody else's reputation with reference
to goods, especially so when the reputation extends world wide.15

ii. To prevent harm to the reputation of a mark

Another rationale for protecting well known marks originates from the doctrine of dilution –
where use of a mark on goods or services unrelated to those of the proprietor is restrained, even
when there is no consumer confusion, where such unauthorized use harms or is likely to harm
the reputation of the mark, also known as tarnishment, or dilutes the ability of the mark to
indicate the source of the goods or service in question, also known as blurring.16

iii. To prevent consumer confusion

As is evident from Section 2(1)(zg), well known marks are recognized to avoid a situation where
a connection in the course of trade or rendering of services between the right holder and an
unauthorized user of the mark is likely.

Criteria for recognizing a well known mark

While the Trade Marks Act, 1999 does not set criteria for courts to decide whether a mark is well
known, it does lay down such criteria for the Registrar of Trademarks to consider when deciding
a mark is well known. Given that ‘well known’ status gives the right holder great ammunition
against unauthorized users of the mark, this status is accorded in limited cases. Under Section 11
of the Trade Marks Act, while determining whether a trade mark is a well-known trade mark, the
following facts maybe considered:

i. The knowledge or recognition of that trade mark in the relevant section of the public including
knowledge in India obtained as a result of promotion of the trade mark. The following facts may
be considered in this regard

 the number of actual or potential consumers of the goods or services;

  the number of persons involved in the channels of distribution of the goods or services;

 the business circles dealing with the goods or services, to which that trade mark applies.

ii. The duration, extent and geographical area of any use of that trade mark;

iii. The duration, extent and geographical area of any promotion of the trade mark, including
advertising or publicity and presentation, at fairs or exhibition of the goods or services to
which the trade mark applies;

iv. The duration and geographical area of any registration of or any application for
registration of that trade mark under this Act to the extent they reflect the use or
recognition of the trade mark;

v. The record of successful enforcement of the rights in that trade mark; in particular,
the extent to which the trade mark has been recognised as a well-known trade mark by
any court or Registrar under that record.

Further, under Section 11(9) of the Trade Marks Act, 1999, the following are not required as a
prerequisite for a well known trademark:

i. that the trade mark has been used in India;

ii. that the trade mark has been registered;

iii. that the application for registration of the trade mark has been filed in India;

iv. that the trade mark—

a. is well known in; or

b. has been registered in; or

c. in respect of which an application for registration has been filed in, any jurisdiction other than
India; or that the trade mark is well-known to the public at large in India.

Enforcement of well known trade marks

In India, the concept of trade mark dilution is recognized under the Trade Marks Act, 1999
which seeks to enforce well known trade marks. Section 29(4) of the Trade Marks Act provides
as follows:

“...A registered trademark is infringed by a person who not being a registered proprietor or a
person using by way of permitted use, uses in the course of trade, a mark which-

(a) is identical with or similar to the registered trade mark and

(b) is used in relation to goods or services which are not similar to those for which the trade
mark is registered: and

(c) the registered trade mark has a reputation in India and the use of the mark without due
cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the
registered trade mark.

Therefore, all well known trademarks in India qualify for protection against dilution under
Section 29 (4), Trade Marks Act, 1999 since they enjoy reputation in India. However, declaration
of a trademark as well know is not a prerequisite under Section 29 (4) and marks with reputation
that are not declared well known in India should also be protected under Section 29 (4). Further,
marks having reputation in India include marks with trans border reputation in India 17 and no
finding of confusion is required under Section 29 (4) of the Trade Marks Act.18

Non-Conventional Trademarks

The trade mark system requires the register to depict accurate information about the mark.
Graphical representation that can be easily fixed on paper or electronic medium can act as a point
of reference.19 This function of the trade mark was clearly stated by the European Court of
Justice.20 Graphical representation clearly enables the trade mark registry to clearly and precisely
demarcate the mark that is protected. 21 Further, it enables the trade mark registry, competitors of
the protected mark and the public to identify the mark. Added to that, it enables courts to use the
mark that is graphically represented as a reference point in assessing whether someone has
infringed the mark.22 This utility of the graphical representation is also recognized by the
Indian Trade Mark Office in its Draft Trade Mark Manual. 23 In order to answer whether olfactory
marks, sound marks, colour marks and shape marks qualify as trade marks it is necessary to ask
the question as to whether it can be represented graphically and also distinguish goods and
services of the trader.

Smell Marks

Olfactory or smell marks pose specific problems as it cannot be represented graphically. Further,
there are also concerns about durability and distinctiveness of olfactory marks. Sumitomo
Rubber Company was granted an olfactory mark in 1996 for rubber tyres that smelled like
rose.24 In 1999, an application for olfactory mark that claimed ‘freshly cut grass as applied to
tennis balls’ was approved on the ground that the description provided was sufficient and that the
application satisfied the graphical representation requirement.25 Subsequently in 2000, John
Lewis of Hungerford claimed an olfactory mark on cinnamon smell that is used in relation to
furniture.26 However, the UK Trade Mark Office rejected the application as it was not capable of
graphical representation.27 Further, it also reasoned that granting trade mark for a cinnamon
aroma in furniture would prevent other traders from legitimately using it in other articles. 28
Lack
of consistency in granting olfactory marks created confusion in the EU which was laid to rest in
the Seickmann Case.29

Ralf Seickmann filed a trade mark application in Germany that claimed to register smell mark
described as “balsamically fruity with a hint of cinnamon”.30 To meet the requirement of
graphical representation the applicant represented the smell by writing its chemical name, methyl
cinnamate and also the structural formula “C6H5- CH=CHCOOCH3”. Further, he also submitted
a container with the sample of the smell and also indicated the laboratories that can provide the
sample of the smell. Seickmann’s application was rejected by the German Patent and Trade
Mark Office which was ultimately decided on appeal by the European Court of Justice
(ECJ)31 The ECJ rejected the application stating that the smell had not been graphically
represented. ECJ opined that submitting samples of the scent will not serve the purpose as the
smell is not durable. It was of the opinion that the scent can change depending on its exposure to
the local environment and is also likely to change over a period of time. The ECJ opined that
a trade mark needs to be represented graphically and should also be “clear, precise, self-
contained, easily accessible, intelligible, durable and objective”.

The position in India is similar to EU as the Trade Marks Act, 1999 requires all marks to be
capable of being represented graphically. Therefore, for an olfactory mark to be a valid trade
mark, it should be graphically represented. This means that a mark has to be visually represented
on a form before it is registered by the Registrar. This makes it almost impossible for someone to
depict smell marks in a graphical form as it may not satisfy the requirements stated in
the Seickmann case.

Sound marks

The Yahoo yodel, Metro Goldwyn Mayer’s roar of the lion or Nokia tunes do remind us
something about the sound being related to a particular product. As a result of this, consumers
over a period of time tend to associate certain sounds as a source identifier or as a badge of
origin. Sound mark can be in the form of an onomatopoeia and musical notes. 32 This raises the
question as to whether sound can qualify as a trade mark. Would the Seickmann criteria laid
down by the ECJ be satisfied by sound mark?

The ECJ opined in Shield Mark v Joost Kist h.o.d.n. MEMEX 33 that any sound, be it musical
notes or onomatopoeia are perceptible by humans. If marketed and advertised properly then
consumers can come to associate that certain sound marks are used as a badge of origin. 34 It
observed that sound marks can also be represented graphically without causing any confusion.
Thus, in principle, the ECJ indicated that sound marks can get trade mark registration. However,
it added that graphical representation has to meet the criteria specified in Sieckmann case, i.e it
should be clear, precise, intelligible, stable, durable, objective, self-contained and easily
accessible.35

Further, the EU has also granted sound marks to non-musical representation of sound like the
Tarzan’s yell and the Metro Goldwyn Mayer’s roar of the lion if the same application is
accompanied by a spectrogram or sonogram images.36 Devices that clearly indicate the rise and
fall in pitch and also record the frequency can clearly and precisely indicate the scope of the
sound mark.37 Thus, all applications accompanying non-musical sound marks should contain
spectrogram or sonogram images that contain frequency and time graphs.38

The Trade Marks Act, 1999 does not specifically bar the registration of sound marks. If a sound
mark can be represented graphically and also be capable of distinguishing goods, it may be
registered. In recent years the Yahoo Yodel and the ICICI jingle have been registered as sound
marks in India.39 The registration requirements for sound marks in India are similar to the
practices in the EU.

Colour Marks

While colour marks can be represented graphically it is difficult to say whether mere colour can
distinguish good or services of a trader from that of the other. Colour marks are claims over a
particular colour or combination of colours with a specific dimension. 40 It is relevant to state that
the claimant will have to show that the colour has inherent or acquired
distinctiveness.41 However many jurisdictions refused to grant colour marks as it was thought that
there were only definitive number of colours. 42 If protection is granted to colour marks then it
would prevent other traders in the class from using such colours. It was also the belief that
consumers will have difficulty in distinguishing various shades of a colour as a distinctive trade
mark.43 After considerable number of years colour mark was granted in the US. The US Federal
Circuit also upheld colour marks in the case of In re Owens-Corning Fiberglass Corporation 44 as
the owner of the colour mark had shown enough evidence to prove acquired distinctiveness in
the pink colour used for home insulation.45 Thirty years of advertising and several millions spent
in consumer advertising and marketing convinced the Federal Circuit to uphold colour mark in
home insulation. Further, the landmark judgment delivered by the US Supreme Court
in Qualitex Co. v. Jacobson Company clarified the position related to colour marks. The US
Supreme Court opined that a colour mark can be granted trade mark protection if the mark has
acquired distinctiveness.46

In India, the Draft Trade Mark Manual does not state that a single colour per se will be rejected
as trademark.47 Instead, it states that under exceptional circumstances if a single colour is able
to demonstrate to the consumer that it is a badge of origin then it may be granted a trade
mark.48 However, it is also possible that a colour mark may be granted trade mark protection if
the applicant can demonstrate acquired distinctiveness as required in the EU and the US. 49

Shape Marks

Shapes have been used by businesses to claim trade mark protection. The unique shapes of
certain goods like the coke bottle or the triangular shaped Toblerone chocolate always indicated
to the consumers that unique shape originating or coming from a particular company like the
Coca Cola or the Mondelez International. However, the concern with shape mark is that at times
the shape may itself serve to perform a technical function and as such it raises concerns. The
other concern is that the shapes may also be protected by design law. This raises concern about
seeking protection under multiple regimes.50

The Trade Marks Act, 1999 seeks to protect shape marks. The definition of trade mark and mark
clearly seeks to protect shape marks.52 Shape marks also have to meet the conditions of
distinctiveness and graphical representation. 53 However, the trade mark legislation also excludes
shapes from being granted protection under certain conditions. Section 9 (3) of the Trade
Marks Act, 1999 sets forth three different scenarios wherein shape-marks would not be allowed
the benefit of protection under the Act. If the shape attained is due to the nature of goods
themselves then it will not be granted a trademark protection. 54 Further, if the shape attained is
necessary so as to perform a technical result, then as per S. 9 (3) (b), the shape will not be
granted trademark protection. This clause is similar to the decision in Koninklijke Philips v.
Remington case. If the characteristics of an article were meant to perform a function regardless
of the fact that there were non-functional traits it may not be granted protection. Section 9(3)(c)
of the Act excludes shapes that can be protected under the patent or design law.55

Domain Name

With the advent of internet it is almost a necessity for businesses to exist on the world wide web
regardless of whether they conduct business transactions through this virtual medium. The very
thought of consumers accessing the virtual world for information provides an opportunity to
businesses to market their goods or services directly. In order to exist in the virtual world all
businesses will have to register a domain name which acts as an online address through which
they can connect and communicate with their customers. Thus a domain name is nothing but an
address through which a person or an entity can communicate with the public. 56 The Internet
Protocol System (IPS) is composed of mere numbers which may not readily connect with the
consumers but a domain name like www.apple.com or www.samsung.com can convey to the
consumer that the internet address may be directly related to the electronic goods manufacturer
Apple Inc. and Samsung respectively.57 The domain name is a simpler way of connecting with
the public and functions just like a trade mark. 58 The domain name acts as a source identifier
wherein the consumer browsing the particular address is likely to think that the website is related
to a particular business or trader. For instance, a person browsing through www.apple.com is
likely to associate the domain name with the well-known electronic goods company Apple. Such
an association means that domain names function just like trade marks.

PROCEDURE FOR REGISTRATION OF TRADEMARKS

Any person claiming to be the proprietor of a trademark used or proposed to be used by him,
may apply in writing to the Registrar in the prescribed manner for the registration of his
trademark.34 A single application may be made for registration of a trademark for different classes
of goods and services and fee payable therefore shall be in respect of each such class of goods or
services. Where a single application under section 18(2) is filed from a convention country for
one or more classes of goods or services, the applicant shall establish a sufficient ground to the
satisfaction of the Registrar for the date of filing of application in all such classes. The
application for registration of a trademark is to be filed in the office of the Trademarks Registry
within whose territorial limits the principal place of business in India of the applicant or, in the
case of joint applicants, the principal place of business of the first applicant is situated. However,
where the applicant or any of the joint applicants does not carry on business in India, the
application is to be filed in the office of the Trademarks Registry within whose territorial limits
the place mentioned in the address for service in India as disclosed in the application is situated.

34
Section 18, Trademarks Act, 1999
The Registrar may, subject to the provisions of the Act, refuse the application or accept it
absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he
may think fit. In case of a refusal or conditional acceptance of an application, the Registrar shall
record in writing the grounds for refusal or conditional acceptance and the materials used by him
in arriving at his decision.

After the acceptance of an application for registration of a trademark but before its registration, if
the registrar is satisfied that the application has been accepted in error or that in the After the
After the acceptance of an application for registration of a trademark but before its registration, if
the Registrar is satisfied that the application has been accepted in error or that in the
circumstances of the case the trademark should not be registered or should be registered subject
to conditions or limitations or to conditions additional to or different from the conditions or
limitations subject to which the application has been accepted, then the Registrar may withdraw
the acceptance after hearing the applicant if he so desires, and proceed as if the application has
not been accepted.

Advertisement of the Application

According to Section 20, when an application for registration of a trademark has been accepted
whether absolutely or subject to conditions or limitations, the Registrar shall cause the
application to be advertised as accepted together with the conditions or limitations, if any,
subject to which it has been accepted. The Registrar may, however, cause the application to be
advertised before acceptance if it relates to a trademark to which section 9(1) and section 11(1)
and (2) apply, or in any other case where it is expedient by reason of any exceptional
circumstances so to do.

Opposition to Registration

Section 21 enables a person to give notice of opposition to registration in writing to the Registrar
within four months from the date of advertisement or re-advertisement of an application for
registration. A copy of such notice of opposition is to be served upon the applicant.
Under Section 21, notice of opposition may be given to the Registrar by any person opposing
registration and the applicant may, in reply thereto, file a counter-statement. Thereafter, the
Registrar is required, after giving an opportunity of hearing to the applicant and his opponent, to
decide whether registration is to be permitted absolutely or subject to such conditions or
limitations as he may deem fit to specify.

Registration

A trademark is registered under Section 23. When an application for registration of a trademark
has been accepted and either - (I) the application has not been opposed and the time for notice of
opposition has expired; or (ii) the application has been opposed and the opposition has been
decided in favour of the applicant, the Registrar shall register the said mark within eighteen
months of the filing of the application unless the Central Government directs otherwise. A
trademark shall be registered as of the date of the making of the said application. The date of
application is to be deemed to be the date of registration.

INFRINGEMENT AND PASSING OFF

A well – recognized legal principle is that once the Parliament has codified the law in a
particular domain by statute, common law rights in that domain cease to exist. An exception to
this principle can be found in trademark law that expressly recognizes the co-existence of
common law rights and statutory rights. In this regard, reference may be had to Section 27(2) of
the Trademarks Act, 1999. As per that section, the rights granted by the Trademarks Act do not
affect the rights of action against any person for passing of goods/ services as the goods/ services
of another person. In other words, the owner of a mark may exercise rights under two heads:

(i) Statutory rights for infringement of a registered trademark

(ii) Common law rights for passing off with respect to an unregistered mark

Therefore, even if the trademark is not registered, the owner of the mark is not rendered
remediless and can file an action for “passing off”.

Rights conferred by registration

The rights conferred by a registration are codified in Section 28 of the Act. According to Section
28(1) of the Act, the registration of a trademark gives to the registered proprietor of the
trademark the following rights:

(i) The exclusive right to the use of the trade mark in relation to the goods or services in respect
of which the trade mark is registered and

(ii) The exclusive right to obtain relief in respect of infringement of trademark.

Let’s take an example: Let’s say the company McDonalds obtains a registration for the
trademark McSwirl with respect to food items. Firstly, McDonalds gets the exclusive right to use
the trademark McSwirl with respect to food items i.e. no other person can use the same or
deceptively similar trademark with respect to food items. Secondly, if a person uses the
trademark McSwirl for food items, then McDonaldshas the right to file a suit for infringement
and obtain relief for infringement of trademark.

The Test for Infringement of Trademark

The hallmark of a trademark infringement action is consumer confusion. A person is said to have
infringed a registered trademark if she uses a mark in the course of trade such that it is likely to
cause confusion in the minds of the consumer. The confusion may be caused for one of the
following reasons:

a. Use of a mark that is identical to the registered trade mark for goods which are similar to the
goods or services covered by such registered trademark; or

b. Use of a mark that is similar to the registered trade mark with respect to identical or similar
goods or services covered by such registered trade mark; or

c. Use of a mark that is identical to the registered trade mark with respect to goods or services
covered by such registered trade mark.

Likelihood of Confusion

In the year 1962, the Supreme Court 74 clarified that the likelihood of confusion must be judged
from the eyes of an unwary consumer with average intelligence and imperfect recollection. It is
important to recognize that consumers do remember each and every element of a trademark and
do not determine the etymological meaning of marks at the time of purchasing goods or availing
services. Thus, even if a critical comparison of the two names may disclose some points of
difference, but an unwary purchaser of average intelligence and imperfect recollection may still
be deceived by the overall similarity of the two names since an unwary consumer is merely has a
somewhat vague recollection that he had purchased similar goods on a previous occasion with a
similar name.

An interesting question that arises in this context is this: does the test of “unwary purchaser of
average intelligence and imperfect recollection” also apply to purchasers of more expensive
goods or goods that are bought after much consideration and thought? For instance, can it be said
a consumer who purchases real estate property running into several crores of rupees will be
confused by a wrongful use of a trademark? Does such a consumer make enough enquiries to
ensure that the goods/ services originate from the rightful proprietor? Courts have held that
where the goods are expensive articles that are bought generally by literate persons, this fact
must be considered.75 Similarly, where doctors, who are literate persons, prescribe medicines the
likelihood of confusion is considered to be lesser76.

Comparison of Marks

The following rules have emerged from case law regarding the method of comparison of the
marks in trademark infringement actions:

1) Side by side comparison is inappropriate: The test of comparison of the marks side by side is
not a sound one. This is because a purchaser seldom has the two marks side by side before him
when he makes a purchase. The eye and the mind is not an accurate recorder of visual detail and
marks are remembered by general impression or by some significant detail rather than by any
photographic recollection of the whole77. Simply put, meticulous comparison is not the correct
way78.

2) Visual and phonetic similarity between the two marks must be seen: The following oft –
quoted passage from an old English case on overall visual and phonetic similarity is
instructive: “You must take the two words. You must Judge them, both by their look and by their
sound. You must consider the goods to which they are to be applied. You must consider the
nature and kind of customer who would be likely to buy those goods. In fact you must consider
all the surrounding circumstances and you must further consider what is likely to happen if each
of those trademarks is used in a normal way as a trade mark for the goods of the respective
owners of the marks.”79

3) Expansion of the test to similarity of ideas: In the early years of the development of Indian
trademark law, the focus was on the visual, structural and phonetic similarity of the two
trademarks. Over the years, as Courts have better understood the way in which consumers
interact with trademarks, the test has expanded to similarity in the idea of the two trademarks.
This expansion is owing to the recognition of the fact that while a side – by – side comparison of
the two marks may reveal many visual or phonetic differences, the ideas that the two marks
convey may be the same and a consumer cannot be expected to recall the exact visual or
phonetic details while consuming goods. An oft – cited example of is that of a mark represented
as a football game. Another mark may show the players in a different dress and in different
positions and may thus convey the same impression/ idea of a football game leading to consumer
confusion.80 In other words, the first impression conveyed by a mark is the correct test81.

4) Copying of essential features is relevant: The Defendant must have copied the essential
features of the Plaintiff’s registered trademark.

Other considerations while determining trademark infringement

1) The class of consumers

In a trademark infringement action, the identity or similarity of the class of consumers may also
be a relevant consideration for determining the likelihood of confusion. It is often argued that if
the class of consumers of the Plaintiffs’ goods/ services is completely different from the class of
consumers of the Defendants’ goods/ services, there is no likelihood of confusion and thus no
trademark infringement. While this argument has been successful in a few cases, Courts are
increasingly giving less weightage to this difference in class of consumers caused by a difference
in the price of the goods of the parties. For instance, in a recent case 82 involving the trademark
HAAGEN DAAZ for ice creams, the Defendants who were using the mark D’DAAZS argued
that the price of their ice creams for much lesser than that of the Plaintiffs and thus there is no
likelihood of confusion. The Court held that since the consumers of the ice – creams were little
children who would be confused by the Defendants’ use of a deceptively similar trademark
notwithstanding the difference in the price of the goods. This position of law has even been
adopted with respect to real estate products and hotels, wherein Courts have cited the possibility
of booking hotels online as reason enough for confusion to occur irrespective of the difference in
price between the Plaintiff’s and Defendants’ services.83

2) Actual confusion or deception need not be proven

It is not necessary for the plaintiff to adduce evidence of actual deception in order to prove the
case of infringement and the mere likelihood of confusion is required to be shown. However,
where instances of actual confusion do exist, they can add significant strength to a Plaintiff’s
case to not only show likelihood of confusion but also that the reputation associate with the
Plaintiff’s trademarks. Further, where the marks are identical and are used with respect to
identical goods or services, likelihood of confusion is presumed.

Passing Off

As explained above, an owner of a mark can also exercise common law rights in a trademark. A
person is said to impinge on another’s common law rights in a mark if the former passes off his
goods and services as originating from the latter. The law relating to this tort – “passing off”-
was succinctly explained by the Supreme Court in the case of Laxmikant V. Patel
vs. Chetanbhat Shah and Another, and an oft – cited passage of the case is extracted hereunder
under:

“A person may sell his goods or deliver his services such as in case of a profession under a
trading name or style. With the lapse of time such business or services associated with a person
acquire a reputation or goodwill which becomes a property which is protected by courts. A
competitor initiating sale of goods or services in the same name or by imitating that name results
in injury to the business of one who has the property in that name. The law does not permit any
one to carry on his business in such a way as would persuade the customers or clients in[to]
believing that the goods or services belonging to someone else are his or are associated
therewith.

It does not matter whether the latter person does so fraudulently or otherwise. The reasons are
two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of
business. Secondly, when a person adopts or intends to adopt a name in connection with his
business or services which already belongs to someone else it results in confusion and has
propensity of diverting the customers and clients of someone else to himself and thereby
resulting in injury.”

The elements of a passing off action

In a landmark decision regarding the infringing use of a trademark as a domain name, the
Supreme Court in the case of Satyam Infoway Ltd vs Siffynet Solutions Pvt. Ltd. held that the
tort of passing off has the following three elements:

1. Firstly, the Plaintiff must establish distinctiveness/ reputation in the trademark. The action of
passing off is normally available to the owner of a distinctive trademark and the person who, if
the word or name is an invented one, invents and uses it. If two trade rivals claim to have
individually invented the same mark, then the trader who is able to establish prior user will
succeed. It is not essential for the plaintiff to prove long user to establish reputation in a passing
off action. It would depend upon the volume of sales and extent of advertisement.

2. The second element is misrepresentation. A plaintiff in a passing off action must prove
misrepresentation by the defendant to the public. The word misrepresentation does not mean that
the plaintiff has to prove any malafide intention on the part of the defendant. Ofcourse, if the
misrepresentation is intentional, it might lead to an inference that the reputation of the plaintiff is
such that it is worth the defendant's while to cash in on it. An innocent misrepresentation would
be relevant only on the question of the ultimate relief that would be granted to plaintiff. What has
to be established is the likelihood of confusion in the minds of the public, that the goods or
services offered by the defendant are the goods or the services of the plaintiff. In assessing the
likelihood of such confusion the courts must allow for the "imperfect recollection of a person of
ordinary memory”

3. The third element of a passing off action is loss or damage by the misrepresentation or the
likelihood of it.

Deceptive similarity in a passing off action

The Supreme Court in the landmark case of Cadila Healthcare Limited vs Cadila
Pharmaceuticals Limited85 identified the following factors as relevant for deciding the question of
deceptive similarity:

a) The nature of the marks i.e. whether the marks are word marks or label marks or composite
marks, i.e. both words and label works.

b) The degree of resembleness between the marks, phonetically similar and hence similar in
idea.

c) The nature of the goods in respect of which they are used as trade marks.

d) The similarity in the nature, character and performance of the goods of the rival traders.

e) The class of purchasers who are likely to buy the goods bearing the marks they require, on
their education and intelligence and a degree of care they are likely to exercise in purchasing
and/or using the goods.

f) The mode of purchasing the goods or placing orders for the goods and

g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity
between the competing marks.

The Supreme Court further clarified that the weightage to be given to each of the aforesaid
factors depends upon facts of each case and the same weightage cannot be given to each factor in
every case.

REMEDIES

The Trade Marks Act, 1999 recognizes both civil and criminal remedies. The court may
grant interim and permanent relief commonly sought and/or granted while enforcing trademark
rights.

Civil remedies

In a suit for trademark infringement and/ or passing off, the right holder looks at both the end
game, i.e. permanent relief granted at the end of the suit, and relief to protect interest while the
suit lasts, i.e. interim relief. Section 135 of the Trade Marks Act, 1999 provides a non
exhaustive list of reliefs for trade mark infringement and passing off which include:

a. An injunction (subject to such terms, if any, as the court thinks fit) and

b. Damages or

c. Account of profits

d. Delivery-up

e. Ex parte injunction or any interlocutory order for:

· for discovery of documents;

· preserving of infringing goods, documents or other evidence which are related to the subject-
matter of the suit;

· restraining the defendant from disposing of or dealing with his assets in a manner which may
adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which
may be finally awarded to the plaintiff

Permanent relief

Permanent relief is granted by a court at the disposal of the suit as opposed to interim relief,
which is granted for the duration of the suit.

1. Injunction

An injunction is an order directing a party to do an actor to refrain from doing an act. An

injunction order that directs a party to refrain from doing something is known as
a prohibitory injunction while an order directing a party to do something is known as a
mandatory injunction. Injunctions granted by courts are subject to the Specific Relief Act,
1963including limitations therein.86

2. Damages

Usually, damages are classified as compensatory and punitive damages.

a. Compensatory damages: Compensatory damages are awarded to make the plaintiff whole – as
held by the Delhi High Court in Time v. Lokesh Srivastava & Anr.(Time)87 , the award of
compensatory damages to a plaintiff is aimed at compensating him for the loss suffered by
him. In this case, the Defendant was wrongfully using Time magazine’s trademarks Time, Time
Asia and the ‘Red border’. While calculating damages, income or loss attributable to the
infringing acts needs to be taken into account and not income or loss attributable to other
factors.

b. Punitive damages: In Time, the Delhi High Court held as follows: Coming to the claim of Rs.
5 lacs as punitive and exemplary damages for the flagrant infringement of the plaintiff's trade
mark, this Court is of the considered view that a distinction has to be drawn between
compensatory damages and punitive damages. The award of compensatory damages to a
plaintiff is aimed at compensating him for the loss suffered by him whereas punitive damages are
aimed at deterring a wrong doer and the like minded from indulging in such unlawful activities.
Whenever an action has criminal propensity also the punitive damages are clearly called for so
that the tendency to violate the laws and infringe the rights of others with a view to make money
is curbed. The punitive damages are founded on the philosophy of corrective justice ad as such,
in appropriate cases these must be awarded to give a signal to the wrong doers that law does not
take a breach merely as a matter between rival parties but feels concerned about those also who
are not party to the list but suffer on account of the breach. In the case in hand itself, it is not
only the plaintiff, who has suffered on account of the infringement of its trade mark and
Magazine design but a large number of readers of the defendants' Magazine 'TIME ASIA
SANSKARAN' also have suffered by purchasing the defendants' Magazines under an impression
that the same are from the reputed publishing house of the plaintiff company. This Court has no
hesitation in saying that the time has come when the Courts dealing actions for infringement of
trade marks, copy rights, patents etc. should not only grant compensatory damages but award
punitive damages also with a view to discourage, dishearten law breakers who indulge in
violations with impunity out of lust for money so that they realize that in case they are caught,
they would be liable not only to reimburse the aggrieved party but would be liable to pay
punitive damages also, which may spell financial disaster for them. This Court feels that this
approach is necessitated further for the reason that it is very difficult for a plaintiff to give proof
of actual damages suffered by him as the defendants who indulge in such activities never
maintain proper accounts of their transactions since they know that the same are objectionable
and unlawful. In the present case, the claim of punitive damages is of Rs. 5 lacs only which can
be safely awarded. Had it been higher even, this court would not have hesitated in awarding the
same. This Court is of the view that the punitive damages should be really punitive and not flee
bite and quantum thereof should depend upon the flagrancy of infringement.

3. Accounts of profit

The Trade Marks Act also provides for rendition of accounts, i.e. compensation to the Plaintiff
which is equivalent to the defendant’s profits from the infringing act and/or passing off.

There may be a complete overlap between the plaintiff’s loss and the defendant’s profits from
the infringing acts. For this reason, the Trade Marks Act in Section 135 makes the right holder
elect between the relief of damages and rendition of accounts. However, it is possible that in
some cases, the loss to the plaintiff, such as loss to its reputation, may not reflect in the
defendant’s accounts as its profits. Further, where the plaintiff is incapable of increasing
its production to cater to the defendant’s clientele in case the defendant is injuncted by a court is
another example where the plaintiff’s loss is not equal to the defendant’s gain from the infringing
act. Punitive damages may come to the aid of the plaintiff in such cases.

4. Delivery up

The defendant will deliver all infringing goods, including advertising and packaging material in
its possession to the court or the trademark owner. Goods handed over by delivery up are usually
destroyed under court supervision. In an interesting case, where Luxottica had sued a party for
violating its trade mark ‘Ray Ban’, the Defendant donated 500 pieces of unbranded glasses to the
visually disabled.88

Interim Relief

In addition to permanent reliefs discussed above, a plaintiffmay explore the following types of
interim reliefs:

1. Ex parte interim injunction: An ex parte interim injunction is granted under Order XXXIX
Rule 3, Code of Civil Procedure, 1908. It is required for the Judge to record reasons for granting
an ex parte injunction.
2. Interim injunction: An interim injunction may be granted under Order XXXIX Rules 1 and 2,
Code of Civil Procedure, 1908. The following three factors need to be considered while granting
an interim injunction:89

i. Prima facie case - Prima facie case means that the Plaintiff should be able to show that it has a
strong case against the Defendant at the interim stage, without going to trial. For this purpose,
comparable strength of the parties’ case may be considered.90

ii. Irreparable harm and injury to the Plaintiff in the absence of the injunction -The Plaintiff also
needs to demonstrate that it will suffer irreparable harm and injury in the absence of an
injunction. Reputational harm is commonly cited as irreparable injury in trademark disputes.

iii. Balance of convenience - The Plaintiff also needs to show that the absence of an injunction
will harm the Plaintiff more than the grant of an injunction would harm the Defendant.

3. Discovery of documents - Discovery of documents or by interrogatories may be sought under

Order XI of the Code of Civil Procedure, 1908. A request for discovery is subject to the
following considerations:

a. Relevance of the information sought to the controversy in suit;

b. Whether the document sought is in power and possession of the non-applicant/ respondent;

c. Whether discovery is necessary at that stage;

d. Whether discovery is necessary for fair disposal of the case.

e. Discovery may be general or limited, as deemed fit by the Court.91

Discovery may also be sought from parties not impleaded in the suit where such information is
necessary for the disposal of the suit.92

Criminal remedies

Section 101 of the Trademarks Act deems a person as applying a trade mark or mark or trade
description to goods or services where he/ she

(a) applies it to the goods themselves or uses it in relation to services; or

(b) applies it to any package in or with which the goods are sold, or exposed for sale, or had in
possession for sale or for any purpose of trade or manufacture, or

(c) places, encloses or annexes any goods which are sold, or exposed for sale, or had in
possession for sale or for any purpose of trade or manufacture, in or with any package or other
thing to which a trade mark or mark or trade description has been applied; or

(d) uses a trade mark or mark or trade description in any manner reasonably likely to lead to the
belief that the goods or services in connection with which it is used are designated or described
by that trade mark or mark or trade description; or

(e) in relation to the goods or services uses a trade mark or trade description in any sign,
advertisement, invoice, catalogue, business letter, business paper, price list or other commercial
document and goods are delivered or services are rendered to a person in pursuance of a request
or order made by reference to the trade mark or trade description as so used.

Further, a trade mark or mark or trade description is deemed to be applied to goods whether it is
woven in, impressed on, or otherwise worked into, or annexed or affixed to, the goods or to any
package or other thing. Section 102 provides that a person shall be deemed to falsify a trade
mark who, either

(a) without the assent of the proprietor of the trade mark makes that trade mark or a deceptively
similar mark; or

(b) falsifies any genuine trade mark, whether by alteration, addition, effacement or otherwise.

A person shall be deemed to falsely apply to goods or services a trade mark who, without the
assent of the proprietor of the trade mark

(a) applies such trade mark or a deceptively similar mark to goods or services or any package
containing goods;

(b) uses any package bearing a mark which is identical with or deceptively similar to the trade
mark of such proprietor, for the purpose of packing, filling or wrapping therein any goods other
than the genuine goods of the proprietor of the trade mark.
(3) Any trade mark falsified as mentioned in sub-section (1) or falsely applied as mentioned in
sub-section (2), is in this Act referred to as a false trade mark.

(4) In any prosecution for falsifying a trade mark or falsely applying a trade mark to goods or
services, the burden of proving the assent of the proprietor shall lie on the accused.

Sections 103 and 104 penalize both direct and indirect infringement. Section 103 makes the
following acts punishable:

(a) falsification of any trade mark; or

(b) falsely applying to goods or services any trade mark; or

(c) making, disposing of, or having in possession, any die, block, machine, plate or other
instrument for the purpose of falsifying or of being used for falsifying, a trade mark; or

(d) applying any false trade description to goods or services; or

(e) applying to any goods to which an indication of the country or place in which they were made
or produced or the name and address of the manufacturer or person for whom the goods are
manufactured is required to be applied under section 139, a false indication of such country,
place, name or address; or

(f) tampering with, altering or effaceing an indication of origin which has been applied to any
goods to which it is required to be applied under section 139; or

(g) causing any of the things above-mentioned to be done,

Unless one proves that he/ she acted, without intent to defraud, punishment for the above is
imprisonment for a term which shall not be less than six months but which may extend to three
years and with fine which shall not be less than fifty thousand rupees but which may extend to
two lakh rupees. However, the court may, for adequate and special reasons to be mentioned in
the judgment, impose a sentence of imprisonment for a term of less than six months or a fine of
less than fifty thousand rupees.

Section 112 provides that where a person accused of an offence under section 103 he/ she shall
be acquitted if the following is proved:
(a) that in the ordinary course of his business he/ she is employed on behalf of other persons to
apply trade marks or trade descriptions, or as the case may be, to make dies, blocks, machines,
plates, or other instruments for making, or being used in making, trade marks; and

(b) that in the case which is the subject of the charge he/ she was so employed, and was not
interested in the goods or other thing by way of profit or commission dependent on the sale of
such goods or providing of services, as the case may be; and

(c) that, having taken all reasonable precautions against committing the offence charged, he/ she
had, at the time of the commission of the alleged offence, no reason to suspect the genuineness
of the trade mark or trade description; and

(d) that, on demand made by or on behalf of the prosecutor, he/ she gave all the information in
his power with respect to the persons on whose behalf the trade mark or trade description was
applied.

Section 104 provides penalty for selling goods or providing services to which false trade mark or
false trade description is applied and provides as follows: Any person who sells, lets for hire or
exposes for sale, or hires or has in his possession for sale, goods or things, or provides or hires
services, to which any false trade mark or false trade description is applied or which, being
required under section 139 to have applied to them an indication of the country or place in which
they were made or produced or the name and address of the manufacturer, or person for whom
the goods are manufactured or services provided, as the case may be, are without the indications
so required, shall, unless he proves

(a) that, having taken all reasonable precautions against committing an offence against this
section, he had at the time of commission of the alleged offence no reason to suspect the
genuineness of the trade mark or trade description or that any offence had been committed in
respect of the goods or services; or

(b) that, on demand by or on behalf of the prosecutor, he gave all the information in his power
with respect to the person from whom he obtained such goods or things or services; or
 (c) that otherwise he had acted innocently, be punishable with imprisonment for a term
which shall not be less than six months but which may extend to three years and with
fine which shall not be less than fifty thousand rupees but which may extend to two lakh
rupees:

Provided that the court may, for adequate and special reasons to be mentioned in the
judgment, impose a sentence of imprisonment for a term of less than six months or a fine
of less than fifty thousand rupees.

Unit- I
Introduction, Overview and History of the concept of Copyright
Introduction and Overview
Copyright is a legal right created by the law of a country that grants the
creator of original work exclusive rights for its use and distribution. This is
usually only for a limited time. The exclusive rights are not absolute but
limited by limitations and exceptions to copyright law, including fair use.
Copyright is a form of intellectual property, applicable to certain forms of
creative work. Under US copyright law, legal protection attaches only to fixed
representations in a tangible medium. It is often shared among multiple
authors, each of whom holds a set of rights to use or license the work, and
who are commonly referred to as rights holders. These rights frequently include
reproduction, control over derivative works, distribution, public performance,
and "moral rights" such as attribution.
Typically, the duration of a copyright spans the author's life plus 50 to
100 years. Some countries require certain copyright
formalities to
establishing copyright, but most recognize copyright in any completed work,
without formal registration. Generally, copyright is enforced as a civil matter,
though some jurisdictions do apply criminal sanctions.
Most jurisdictions recognize copyright limitations, allowing "fair" exceptions to
the creator's exclusivity of copyright and giving users certain rights. The
development of digital media and computer network technologies have prompted
reinterpretation of these exceptions, introduced new difficulties in enforcing
copyright, and inspired additional challenges to copyright law's philosophic basis.
Simultaneously, businesses with great economic dependence upon copyright,
such as those in the music business, have advocated the extension and expansion
of copyright and sought additional legal and technological enforcement.
The word ‘copyright’ is derived from the expression ‘copier of word’ first used
in the context. The word ‘copy’ is presumed to date back to 1485 A D and
was used to connote a manuscript or other matter prepared for printing.
Word ‘copy’ according to Black’s Law Dictionary means “transcript, imitation,
reproduction of an original writing, painting, instrument or the like”.
Copyright as defined in the Oxford English Dictionary is an exclusive right
given by law for a certain term of years to an author, composer, etc., (or
his assignors) to print, publish and sell copies of his original work.
Copyright in some form seems to have been recognized in ancient times. The
Roman law adjudged that if one man wrote anything on the paper or
parchment of another, the writing should belong to the owner of the blank
material; meaning thereby the mechanical operation of writing by the scribe
deserved to receive satisfaction.
The statutory definition of copyright means the exclusive right to do or authorize
others to do certain acts in relation to –
1. Literary, dramatic or musical works;
2. Artistic work;
3. Cinematograph film; and
4. Sound recording.
 History of Copyright
Copyright came about with the invention of the printing press and with
wider literacy. As a legal concept, its origins in Britain were from a reaction
to printers' monopolies at the beginning of the 18th century. Charles II of
England was concerned by the unregulated copying of books and passed the
Licensing of the Press Act 1662 by Act of Parliament, which established a
register of licensed books and required a copy to be deposited with the
Stationers' Company, essentially continuing the licensing of material that
had long been in effect.
In the beginning copyright was confined to books only. That was under the
reign of Queen Anne in 1709. Engravers got protection under copyright in 1734,
textile designers in 1787, sculptors in 1798, painters, artists & photographers
in 1862.
Performer’s rights got recognition in 1830 and copyright was extended to musical
works in 1842. Copyright Act of 1911 was extended to cover the right to
production of records and prevent unauthorized reproduction of recordings. In
1956, three more rights of the author namely:
1. Copyright in Cinematograph film,
2. Broadcasting, and
3. Topographical formats were included.
That was about the Copyright Act in England.
Indian Copyright Act followed the same pattern of development ever since the
enactment of the first Copyright Act in 1914 which was modelled on British
Act of 1911.
After independence the Act needed a thorough revision in view of the
advanced means of communications like broadcasting and litho photography.
There also arose the necessity of creating administrative bodies to implement
the several provisions of the Act. Accordingly Copyright Act of 1957 was
reenacted making a provision for establishment of Copyright Office and a
Copyright Board.
The 1886 Berne Convention first established recognition of copyrights among
sovereign nations, rather than merely bilaterally. Under the Berne Convention,
copyrights for creative works do not have to be asserted or
declared, as they are automatically in force at creation: an author need not
"register" or "apply for" a copyright in countries adhering to the Berne
Convention.
As soon as a work is "fixed", that is, written or recorded on some physical
medium, its author is automatically entitled to all copyrights in the work, and
to any derivative works unless and until the author explicitly disclaims them,
or until the copyright expires.
The Berne Convention also resulted in foreign authors being treated equivalently
to domestic authors, in any country signed onto the Convention. The UK
signed the Berne Convention in 1887 but did not implement large parts of it until
100 years, later with the passage of the Copyright, Designs and Patents Act of
1988. The United States did not sign the Berne Convention until 1989.
The regulations of the Berne Convention are incorporated into the World
Trade Organization's TRIPS agreement (1995), thus giving the Berne
Convention effectively near-global application. The 2002 WIPO Copyright
Treaty enacted greater restrictions on the use of technology to copy works in
the nations that ratified it.
While the adoption of the Berne Convention has had many benefits for the
creators of original works, the systems for protecting unpublished works
remain fragmented internationally, with some states offering optional
registration services within their own jurisdiction, while others offer no kind
of registration at all. Without registration, it can be difficult to judge who the
rightful owner of a copyrighted work is.
The national registration systems may not be willing to offer support in a
dispute in another country. The Intellectual Property Rights Office (also
known as the IP Rights Office and the IPRO) was created in an effort to
create a central international point of deposit for unpublished works from
around the world, via its Copyright Registration Service. The hope is that
this can provide a standard point of registration for all citizens of Berne
Convention nations.
 Nature and Salient Features of Copyright
Act
Introduction
Copyright is a form of intellectual property protection granted under the
Indian Copyright Act 1957 to the creators of original works of
authorship such as literary works (including computer programmes, tables and
compilations), dramatic, musical and artistic works, cinematographic films
and sound recordings.
It is fairly clear that "modern" copyright is a creation of statute, and in particular,
the creation of the 1709 Statute of Anne. Although there did exist proto-copyright
mechanisms in various parts of the world, it would appear that none of them
were comparable to the form of copyright contemplated by the 1709 statute.
The changes which have been observed over the last three hundred or so years
in the realm of copyright law have for the most part dealt with the nature of
works protected, the nature of the protection granted to copyrightable works,
and the length of time for which protection would be granted.

Nature of Copyright Protection

Automatic
Copyright is an unregistered right which subsists automatically as soon as the
work that is eligible for protection is created and recorded on some medium.
Originality
The work protected need not be new. However, it must be original in the
sense that it is not copied from some other source but is the result of an
application of effort by the creator of the work.
Exclusions
Copyright protects the expression of ideas but not the idea or concept
underlying a piece of work. For that reason, procedures, methods of operation
and mathematical concepts are excluded from copyright protection.
 Salient Features
The salient features of copyright protection are:
 It protects aesthetic creations without formalities.
 Registration is not necessary.
 It protects forms of expression of ideas only, not the ideas themselves.
 It is not concerned with the quality of the work.
 It gives protection to original works only.

Indian Copyright Law

In India the first Copyright Act was passed in 1914. The Act, presently in
force was legislated in the year 1957.
Main Features of Copyright Act of 1957
1. Creation of Copyright Office and a Copyright Board to facilitate registration
of Copyright and to settle certain kinds of disputes arising under the Act and
for compulsory licensing of Copyright.
2. Definition of various categories of work in which Copyright subsists and
the scope of the rights conferred on the author under the Act.
3. Provisions to determine the first ownership of copyright in various
categories of works.
4. Terms of copyright for different categories of works.
5. Provisions relating to assignment of ownership & licensing of copyright
including compulsory licensing in certain circumstances.
6. Provisions relating to performing rights of or by societies.
7. Broadcasting rights.
8. International Copyright.
9. Definition of infringement of Copyright.
10. Exception to the exclusive right conferred on the author or
acts, which do not constitute infringement.
11. author’s special rights
12. Civil & Criminal remedies against infringement.
13. Remedies against groundless threat of legal
proceedings.
India being a member both of the Berne Convention and the Universal
Copyright Convention, amended its Copyright Act of 1957, in 1983, 1984,
1992, 1994, 1999 and 2012 to bring the Indian law in conformity with the
these international conventions.
The Copyright Act consists of 15 chapters
Chapter I – Section 1 to 8 contains the usual preliminary sections including the
definitions. Some new rights also came to be recognized, with the result that
some new terms have been incorporated and defined.
Chapter II – Section 9 to 12 establishes a copyright office under the control
of the Registrar of Copyrights who, in turn, is required to act under the
supervision and directions of the Central Government.
A register kept at the Copyright Office, in which the names of titles or works
and the names and addresses of authors, publishers, and owners of copyright
are entered. The Copyright Board can examine the reasonableness of the
charges or royalties claimed by a copyright society and to consider
applications for the grant of licences for public performances of works etc.
Chapters III to IV – Section 13 to 16 & Section 17 to 21 of the Act are
really the heart and they deal with the meaning of a copyright and the works in
which a copyright subsists, the ownership of a copyright and the rights of the
owner (including on assignment of the copyright), the terms of the copyright
and licences, etc.
The term of a copyright is dealt with in Chapter V – Section 22 to 29 of
the Act. Initially, the term was fixed at 50 years but by an amendment to the
Act, the period was increased to 60 years. In the case of a published literary,
dramatic, musical and artistic work (other than a photograph) the period is
reckoned from the beginning of the year after the death of the author. In the
case of a photograph, cinematograph film or a sound recording the period is
reckoned from the year following the publication of the work.
Chapter VI – Section 30 to 32 of the Copyright Act deals with licensing of
the copyright. The owner of a copyright is entitled to grant any interest in the
copyright by a Licence given by him in writing.
 Chapter VII – Section 33 to 36 concerns itself with Copyright Societies
which is a new concept so far as the Copyright Act is concerned in as much
as prior to the amendment of the Act in 1994.
Chapter VIII – Section 37 to 39 of the Act concerns itself with the rights of
broadcasting organizations and of performers. This right subsists for 25
years. An amendment made in 1999 this right now subsists for 50 years.
Chapter IX – Section 40 to 43 of the Act deals with a copyright obtained in a
foreign country. The applicability of the Copyright Act to foreign works is
reciprocal.
Chapters X and XI – Section 44 to 50 & Section 51 to 53 of the Act
deal with the Registration and Infringement of copyright while Chapters XII to
XIV – Section 54 to 62, Section 63 to 70 & Section 71 to 73 deal with civil
remedies, criminal offences and Appeals under the Act.
The civil remedies postulated by the Act are those of an injunction, damages,
and rendition of accounts, etc. The punishment for a criminal violation was,
initially, punishable with imprisonment up to a period of one year or with fine
or both but after piracy became a major problem, the period of imprisonment
has been made a minimum of six months and it may extend up to three years.
Similarly, a minimum fine of Rs.50,000/- can
be imposed which may extend up to Rs.2,00,000/-
Chapter XV – Section 74 to 79 of the Act deal with the Miscellaneous
Provisions.
Application Format for Registration

SUBJECT MATTER OF
COPYRIGHT
Subject Matter of Copyright
In order to secure copyright protection what is required is that the author must
have bestowed upon the work,
1. Sufficient judgment,
2. Skill, and
3. Labour or Capital.
 In Walter v. Lane, (1990) AC 539, it is immaterial whether the work is wise
or foolish, accurate or inaccurate, or whether it has or has not any literary
merit.
In another case Ravencraft v. Herbert, (1980) RPC 103, copyright protects the
skill and labour employed by the author in the production of his work.
The owner of a copyright has no monopoly in the subject matter. Others are at
liberty to produce the same result (from common source) provided by do so
independently and their work is original.
It has been said that in Ravencraft v. Herbert, (1980) RPC 103, another
person may create another work in the same general form provided he does so
from his own resources and makes the work he so originates a work of his
own by his own labour and industry bestowed upon it.
Case laws on copyright protection in form and not in idea
Jeffreys v. Boosey, (1854) 4 HCL 815.
Donoghue v. Allied Newspapers Ltd, (1937) 3 All ER 503.

Works in which Copyright subsists

Section 13 of the Act lists out the work, in which copyright subsists. Subject
to the provision of this section and the other provisions of this
Act, copyright shall subsists throughout India in the following classes of
works,
a) Original literary, dramatic, musical & artistic work,
b) Cinematograph films, and
c) Sound recording.
Literary work
It includes computer programmes, tables, compilations including computer
database.
Dramatic work
It includes any piece for recitation, choreographic work or entertainment in a
dumb show, the scenic arrangement or acting form of which is fixed in
writing or otherwise but does not include a cinematograph film.
Musical work
Consists of music and includes any graphical notation of such work, but does
not include any works or any action intended to be sung, spoken or
performed with the music.
Artistic work
It means painting, a sculpture, a drawing, an engraving or a photograph,
whether or no any such work possesses artistic quality.
A work of ‘architecture’ means any building or structure having an
artistic character or design or any model for such building or structure.
Cinematograph film
Means any work of usual recording on any medium produced through a
process from which a moving image may be produced by any means and
includes a sound recording accompanying such visual recording and
‘cinematograph’ shall be construed as including any work produced by any
process analogous to cinematography including video films.
Sound recording
A recording of sounds from which such sounds may be re-produced regardless of
the medium on which such recording is made or method by which the sounds
are produced.
Qualification for Copyright Subsistence
In order to qualify for copyright the work, apart from being original, should also
satisfy the following conditions (except in the case of foreign works) –
1. The work is first published in India.
2. Where the work is first published outside India, the author at the date of
publication must be a citizen of India. If the publication was made after the
author’s death the author must have, at the time of his death, been a
citizen of India.
3. In the case of unpublished work the authors is on the date of making of
the work, a citizen of India or domiciled in India. This however, does not
apply to works of architecture.
These provisions do not apply to foreign works or works of International
organizations. Section 40 of the Act empowers the Central
 Government, by an order published in the official gazette, to bring foreign
works within the scope of the Copyright Act so that all or any of the
provisions of this Act shall apply to them.
Section 41 lays down the conditions with relating to the works of International
organizations would be entitled to copyright throughout India –
1) Where
a) any work is made or first published by or under the direction or control of
any organization to which this section applies, and
b) There would, apart from this section, be no copyright in the work in India at
the time of the making or, as the case may be, of the first publication thereof, and
c) either –
i. the work is published in pursuance of an agreement in that behalf
with the author, being an agreement which does not reserve to the author
the copyright, if any, in the work, or
ii. under Section 17 any copyright in the work would belong to the organization;
there shall, by virtue of this section, be copyright in the work
throughout India.

2) Any organization to which this section applies which at the material time had
not the legal capacity of a body corporate shall have & be deemed at all material
times to have had the legal capacity of a body corporate for the purpose of holding,
dealing with and enforcing copyright & in connection with all legal proceedings
relating to copyright.
3) The organizations to which this section applies are such organizations as the
Central Government may, by order published in Official Gazette, declare to be
organization of which one or more sovereign powers or the Governments thereof
are members to which it is expedient that this section apply.
Literary work – What is Protected
It is the product of the labour, skill and capital of one man which must not
be appropriated by another, not the elements, like, the raw
materials upon which the labour, skill and capital of the author have been
expended.
To secure copyright for the product, it is necessary that the labour, skill and
capital should be expended sufficiently to impart to the product some quality
or character which the raw material did not possess and which differentiates the
product from the raw material used.
Literary Quality
A literary work need not be of literary quality. Even so prosaic a work as an
index of railway stations or a list of stock exchange quotations qualifies as a
literary work if sufficient effort has been expended in compiling it, to give it
a new and original character.
In Gleeson v. Denne, (1975) RPC 471, it was held that, if one works hard
enough, walking down the streets, taking down the names of people who live
at houses and makes a street directory as a result of that labour, this has
been held to be an exercise sufficient to justify in making claim to copyright
in the work which is ultimately produced.
Some illustration of Copyright in Literary Work
Adaptation of Literary work
Copyright subsists in the original adaptation of another literary work because the
adaptation itself can be a literary work. Adaptation in relation to literary
work means the conversion of the work into a dramatic work by way of
performance in public.
According to Section 2(a)(v) of the Act adaptation in relation to any work
includes any use of such work involving the rearrangement or alteration.
Where the owner of a copyright in an original work licences another person
to arrange or adapt it, e. g., to base a film script or a play upon a book,
the copyright in the arrangement then vests in the arranger. The owner of the
copyright in the original work does not own the copyright in the arrangement.
Abridgement of literary work
A genuine abridgement of a literary work is an original work and can be
subject of copyright. It is entitled to copyright if it is new and original and the
author has bestowed sufficient skill and labour upon it.
In Govindan v. Gopalakrishnan, AIR 1995 Madras 391, the view expressed
on Abridgement was that ‘abridgement’ is the reproduction of an original
work in a much more precise and concise way. So a genuine abridgement of a
literary work is an ‘original work’ and is the subject-matter of copyright.
Translation
In Blackwood v. Parasuraman, AIR 1959 Madras 410, it was held that a
translation of a literary work is itself a literary work and is entitled to
copyright protection if it is original and the author has expended sufficient
labour and skill on it.
Reports of Judicial Proceedings
The judgment or order of court, tribunal or other judicial authority is exempted
from copyright protection.
Judgments of courts in Law Reports are collected by lawyers practicing in
various courts. If the reporters or lawyers, along with the judgment also supply
head notes prepared by them as part of their report, copyright in the head notes
will vests in them.
In Jagdish Chandra v. Mohim Chandra, AIR 1915 Cal 112, it was held
that in the reports of judgments the reporter has no copyright but it cannot be
said that in the selection of cases & in the arrangement of the reporting, the
reporter does not have the protection of copyright law.
Head notes of law reports
The head notes of law reports are, therefore, original literary work which is
entitled to copyright protection.
Historical work
The knowledge built upon a historical work can, however, be extracted. Such
an extraction of knowledge from historical work can claim copyrighting in itself.
 Letters
Copyright subsists in private letters, commercial letters and
government letters as they are original literary works.
Private letters – The one who writes the letter
Commercial or Government letters – The employer in accordance with the
provisions of Section 17(a) of the Act.
In Walter v. Lane, (1990) AC 539, it was held that letters addressed by one
person to another are original literary work entitled to copyright and when a
letter is dictated to a stenographer or a typist the copyright in the letter
belongs to the person who has dictated the letter.

MEANING OF DRAMATIC, MUSICAL AND

ARTISTIC WORKS
According to Section 13(1)(a), copyright subsists in original dramatic,
musical and artistic work. Hence an understanding of the three terms,
dramatic, artistic, and musical works is required.
Dramatic Work
According to Section 2(h), a dramatic work includes any piece of recitation,
choreographic work or entertainment in dumb show, the scenic arrangement or
acting form of which is fixed in writing or otherwise but does not include a
cinematograph film.
 Choreography and scenic arrangement or acting
Choreography is the art of arranging or designing of ballet or stage dance in
symbolic language but in order to qualify for copyright protection, it must be
reduced to writing since arrangement to qualify for copyright protection must be
reduced to some permanent form.
Copyright subsists not only in the actual words of the work but in dramatic
incidents created in the work. The use of such incidents by another would
amount to infringement.
Film based on Newspaper Article
An interesting case in Indian Express v. Jagmohan, AIR 1985 Bombay
229, where the defendant made a stage play & a movie based on the
central theme of certain series of articles published by the plaintiff namely
purchase of a woman by the name Kanta by a journalist to highlight the flesh
trade flourishing in some parts of the country. The article published
contained as autobiographical account of the part actually played by the
author in the affair. In the film emphasis was on human bondage particularly
of Indian women. The court held that stage play on the movie was not an
infringement of the copyright in the article.
Musical Work
Copyright is recognized in original musical work under the provisions of
Section 13(1)(a). Section 2(p) defines ‘Musical Work’ as a work consisting of
music and includes any graphical rotation of such work but does not include
any words or any action, intended to be sung, spoken or performed with
music.
Adaptation of a musical work is also entitled to copyright protection.
Adaptations in common parlance are usually termed as arrangement, e.g., a
musical work may be modified by the accompanying orchestra.
In Redwood Music v. Chappel (1938), RPC 109, it was held that if a musical
arranger so decorates, develops, transfers to a different medium or otherwise
changes the simple music of a popular song so as to make his arrangement fall
within the description of an original musical work, such arrangement or
adaptation is capable of attracting an independent copyright.
 Song
There is no copyright in a song, the words of the song create a
copyright in the author of the song and the music of the song is the
copyright of the composer but the song itself has no copyright.
In a case where a song is written and the music composed by the same
man, he would own the copyright in the song.
Artistic Works
According to Section 2(c), Artistic work means –
i. Painting, a sculpture, a drawing including a diagram, map, chart or plan,
an engraving on a photograph whether or not only such work possesses
artistic quality:
ii. A work of architecture; and
iii. Any other work of architecture craftsmanship.
Engraving
Section 2(i) defines engraving to include etchings, lithographs, woodcuts,
prints and other similar works not being photographs. Engraving is the art of
inscribing or covering figures upon surfaces particularly hard surfaces, or
cutting figures, etc., in lines on metal surfaces for printing.
Painting
Painting is an artistic work even if it possess no aesthetic quality. What is
sufficient to entitle it for a copyright is that it must be original, i.e., the
painting should be the creation of the painter and not a mere copy of another
painting.
Only a painting on a tangible surface is entitled to copyright protection.
Drawing
According to Section 2(c)(i) defines drawing including a map, diagram chart or
plan is covered by definition of artistic work and qualifies for copyright
protection irrespective of the quality of work. It must satisfy only the
condition of originality meaning thereby that it should originate from the person
who draws it.
In Merchant Adventures v. M. Grew & Company, (1973) RPC 1, it has
been held that drawings for the purpose of copyright would include any
 legends or explanatory notes which describe in general terms what the drawing
represents.

Industrial or Engineering Drawing

Engineering drawings are ‘Artistic works’ within the broad meaning of the
term but each individual case has to be judged accordingly, to prevent a
situation where every industrial or engineering drawing would claim the
protection of a copyright and be outside the realm of even fair use for
instructing students or of any use of such a nature.
Allibert v. O’Connor, (1982) FSR 317
Photograph
A photograph is an artistic work entitled to copyright. A photograph must be
original, i.e., originally taken by a the photographer to be entitled to protection
and to be a original, investment of some amount of skill and labour must be
evident.
In Associated Publishers v. Bashyam, AIR 1961 Mad 114, where a portrait of
Mahatma Gandhi was made based on two photographs, it was held that a
portrait based on photographs will be entitled to copyright if it produced a
result different from the photograph & the portrait itself is original.
Work of Architecture
Section 2(b) provides that a work of architecture means any building or
structure having an artistic character or design or any model for such building
or structure.
In order to quality for copyright protection, the work besides being original must
also possess artistic quality, this is in contrast to other artistic works like painting,
drawing, etc., which does not require artistic quality for copyright protection.
As per Section 13(5), copyright does not extend to the process or the
method of construction.
Any building or structure which constitutes a work of architecture, is built on
the basis of plan enjoys a separate copyright apart from the copyright in the
building.
 Work of Artistic Craftsmanship
Section 13(1) confers copyright on the works of artistic craftsmanship. Lord
Reid in the course of arguments in George Hensher v. Restawile Upholstery,
(1975) RPC 31, declared that the primary purpose of conferring copyright on
a work protects the man who puts on to the market, articles each one of
which is a work of artistic craftsmanship, a product of his over
handcraft, from reproduction whether by hand, machine or otherwise.

Cinematograph Film
A copyright subsists in a cinematograph film by virtue of Section 13(1)(b).
A cinematograph film means any work of visual recording on any medium
produced through a process from which a moving image may be produced by
any means and includes a sound recording accompanying such visual
recording and cinematograph shall be construed as including any work
produced by any process analogous to cinematograph including video films.
The sound track associated with the film is a part of the cinematograph
film which is the subject of copyright. In Balwinder Singh
v. Delhi Administration, AIR 1984 Delhi 379, and in Tulsidas v.
Vasantha Kumari, (1991) 1 LW (Mad) 220 at 229, it was held that video and
television are both cinematograph films.
Section 13(3)(a), makes it clear that a copyright will not subsist in a
cinematograph film if a substantial part of the film is an infringement of the
copyright in any other work.
Rights granted to a holder of Cinematograph film
Section 14(d) confers on the author of cinematograph film in which copyright
subsists some exclusive rights:
1. To make a copy of the film including a photograph of any image forming
a part of the film.
2. To sell or give on hire or offer for sale or hire any copy of the film, regardless
of whether such copy has been sold or given on hire on earlier occasions.
 3. To communicate the film to the public. The sound recordings
embedded in the film have a separate copyright of its own which is not
affected by the copyright in the film as a whole.
Sound Recording
Copyright subsists in a sound recording. According to Section 2(xx), a sound
recording means a recording of sounds from which such sounds may be
produced regardless of the medium on which such recording is made or the
method by which the sounds are reproduced.
Copyright in the music vests in the composer and the copyright in the music
recorded vests in the producer of the sound recording.

Author and Ownership of Copyright

Introduction
The concept of ‘author’ and ‘ownership’ are vital when the question of propriety
over the copyright arises. The copyright provisions do not recognize any
copyright in an idea. The originator of an idea is not the owner of the
copyright; it belongs to the persons who give concrete form to the idea.
In Donoghue v. Allied Newspapers, (1937) 3 All ER 503, the view expressed
was ‘since there is no copyright in ideas even if they are original, the
originator of a brilliant idea is not the owner of the copyright in the work,
unless he is also the creator of the work.
According to provisions of Section 17, the author of the work is the first
owner of the copyright in the work.
Nationality requirement for Ownership of Copyright
The nationality of an author is not the prime determinant of the entitlement of the
author to a copyright under the Indian Act. However, the subsistence of
copyright has certain requirements under Section 13(2).
i. Published Work
ii. Unpublished Work
iv. Architectural Work
Ownership of Copyright
Section 17 statutorily recognizes the author of the work to be the first owner
of the copyright therein. This is however, subject to some exception.
Literary, Dramatic or Artistic Work
Section 17(a) provides-
Where a work is made by the author in the course of his employment by the
proprietor of a newspaper, magazine or a periodical under a contract of
service or apprenticeship for the purpose of publication in a newspaper,
magazine or periodical, the said proprietor, in absence of any agreement to the
contrary, will be the first owner of the copyright in the work in so far as it
relates to the publication.
In Thomas v. Manorama, AIR 1989 Ker. 49, it was held that in case of
termination of the employment, the employee is entitled to the ownership of
copyright in the works created subsequently and the former employer has no
copyright over the subsequent works so created.
The copyright in a work done by an employee on his own time and not in the
course of his employment belongs to him.
Photograph, Painting, Portrait
Section 17(b) provides –
Where a photograph is taken or a painting or a portrait drawn, or an engraving
or a cinematograph film is made, for valuable consideration at the instance of
any person, such person, in the absence of any agreement to the contrary,
shall be the first owner of the copyright therein.
Work made in the Course of Employment
Section 17 (c) provides –
Where a work is made in the course of employment under a contract of
service or apprenticeship, the employer in absence of contract to the contrary,
the employer will be the first owner.
Lectures Delivered in Public
Section 17(cc) provides –
Where any person has delivered any address or speech in public that person
will be first owner of the copyright. If the address or speech is
 delivered on behalf of any other person, such other person will be the owner of
the copyright therein.
Government Work
Section 17(d) provides –
In the case of government work, the government is the owner of the
copyright in the absence of an agreement to the contrary.
Work made on behalf of a Public Undertaking
Section 17(dd) –
By the Amendment Act of 1983, the Copyright Act contain this provision, in
case of a work made or first published by or under the direction or control of
any public undertaking, such public undertaking shall, in the absence of any
agreement to the contrary, be the first owner of the copyright therein.
Meaning of Public Sector Undertaking
i. An undertaking owned & controlled by Government,
ii. A Government company as defined in the Companies Act, 1956
(2013); or
iii. A body corporate established by or under any Central or Provincial or
State Act.
Government will include both Central & State Governments.
Work of Certain International Organization
Section 17(e) provides –
When a work is considered to be a work of certain international organization
under the provision of Section 41, in such cases the international
organization concerned shall be the first owner of the copyright therein.
Work created at the instance of another
Work created at the instance of another for a valuable consideration belongs to
the provider of such valuable consideration. Some examples of such works
are:
i. Person writing a report on a subject as a part of a research project being
conducted by the company;
ii. A composer composing a song for a film company;
iii. A painter draws a portrait at the instance of another.

Apprenticeship – An apprentice is a student

In Dunk v. George Waller, (1970) 2 WLR 241, it was held that an apprentice is a
student bound to another for the purpose of learning his trade, the contract
being of such a nature that the master teaches & the other serves the master
with the intention of learning. Hence, the work belongs to the teacher.
Shorthand writer
The person who dictates the verbatim is the owner of the copyright.
Employee Teacher
If he writes a book on the subject he teaches, he is considered as the first
owner of the copyright over the book which he has written.
Question paper Setter of an Examination
Ownership of copyright vests in the person who sets the paper and not with
the Board of Examination or any such other authority.
Collective Works
Collective works include encyclopedia, dictionary, year book, newspaper,
magazine or generally a work in which works or parts by different authors are
incorporated. The first owner of the copyright in the collective work as a whole
is a person who has collected, edited & organized the work.
Musical Work
The first owner of a copyright in a musical work is the composer of the
work.
If the work is composed in the course of employment under a contract
of service, the employer will be the first owner of copyright.
The person who commissions a musical work, e.g., a film producer who
commissions a music composer to compose the music for his film does not
become the owner of the copyright but only gets a licence to use the work for
the purpose for which it is commissioned. The producer only gets the right to
incorporate the music in the film. All other rights are retained by the music
composer.
Artistic Work
a) The artist who created the work is the first owner of copyright.
b) Where a work is created in the course of employment unless a contract to
the contrary exists, the employer will be the owner of the copyright.
c) Where the employer is the owner of a newspaper, magazine, he possesses
only a limited right to use the work for publication in the newspaper or
magazine.
d) When the creation of artistic work is a commissioned work for valuable
consideration, the person who commissioned the work is the owner of the
copyright.
Plan
The plan of a building or a structure is the copyright of the architect.
His ownership can be eliminated only by an agreement to the contrary. The
client is not authorized to make copies of the plan except for his own study.
He cannot use the pre-existing plan even for making an extension of the
building constructed on the basis of the previous plan.

Photograph
Within the meaning of Section 2(s), photograph includes photolithographs or any
work produced by any process analogous to photography but does not include a
cinematograph film.
a) The person taking the photograph is the owner of copyright.
b) Where the photograph is taken for a valuable consideration at the instance
of any person, such a person in the absence of any agreement to the
contrary, is the first owner of copyright therein.
c) Where the photographer takes a photograph in the course of employment by
a proprietor of a newspaper or magazine under a contract of service or
apprenticeship for the purpose of publication in the newspaper or magazine;
the said proprietor is the first owner of copyright in the photograph. In all
other respects, the author will be the first owner of the copyright in the
photograph.
 d) Distinction between Contract of Service & Contract for
Service
e) The author may create work independently or he may crate a work
under a contract of service or contract for service.
f) Contract of Service
g) Where a man employs another to do work for him under his control
so that he can direct the time when the work shall be done, the means
to be adopted to bring about the end, and the method in which the work
shall be arrived at, then the contract is a contract of service.
h) Beloff v. Pressdram, 1973 RPC 765
i) In the case of contract of service, the status of the author is that of
an employee. For example, whenever an employee of a solicitor’s firm
drafts a document in the course of his employment, the employer is the
first owner of copyright.
Contract for Service
If a person employs another to do a certain work but leaves it to the other to
decide how that work shall be done, what steps shall be taken to produce that
desired effect, then it is a contract for service.
His status is that of an independent contractor who himself decides about the
manner of doing work, in such cases the copyright vests in him and not
with the employer.
University of London Press v. Tutorial Press, (1916) 2 Ch. 601.

Rights Conferred by the

Copyright
Nature of Rights
1. Statutory Rights
2. Negative Rights
3. Multiple Rights
4. Economic Rights
5. Moral Rights
Statutory Rights
The copyright in a work is a creation of statute. A person owns a
copyright because the law recognizes the existence of such a right. The
 rights which an author of a work has by virtue of creating the work are well
defined. Section 14 of the Copyright Act defines as under:
For the purposes of this Act, “copyright” means the exclusive right subject to
the provisions of this Act, to do or authorizes the doing of any of the acts in
respect of a work or any substantial part thereof, namely-
a) In the case of a Literary, Dramatic or Musical Work, not being

a computer programme -
i. to reproduce the work in any material form including the storing of it
in any medium by electronic means;
ii. To issue copies of work to the public not being copies already in
circulation;
iii. To perform the work in public, or communicate it to the public;
iv. To make any cinematograph film or sound recording in respect of the
work;
v. to make any translation of the work
vi. To make any adaptation of the work;
vii. To do, in relation to a translation or an adaptation of the work, any
of the acts specified in relation to the work in sub-clauses i. to vi.

b) In case of a Computer Programme –

i. To do any of the acts specified in clause (a)
ii. To sell or give on hire, or offer for sale or hire any copy of the computer
programme, regardless of whether such copy has been sold or given on hire on
earlier occasion
c) In the case of an Artistic Work –
i. To reproduce the work in any material form including depiction in two
dimensions of a three dimension work;
ii. To communicate the work to the public;
iii. To issue copies of the work to the public not being copies already in
circulation
iv. To include the work in any cinematograph film;
v. To make adaptation of the work;
vi. To do in relation to an adaptation of the work any of the acts specified in relation
to the work in sub-clauses (i) to (iv);

d) In case of Cinematograph Film –

i. To make a copy of the film, including a photograph of any image forming part
thereof;
ii. To sell or give on hire or offer for sale or hire, any copy of the film, regardless
of whether such copy has been sold or given on hire on earlier occasions;
iii. To communicate the film to the public;

e) In the case of a Sound Recording –

i. To make any other sound recording embodying it;
ii. To sell or give on hire or offer for sale or hire, any copy of the sound recording,
regardless of whether such copy has been sold or given on hire on earlier occasions;
iii. To communicate the sound recording to the public.

Negative Rights
Copyright is a negative right in the sense that it stops the others from exploiting
the work of the author for their own benefit without the consent or license of
the author. It does not confer any positive right on the author himself.
Multiple Rights
Copyright is not a single right but a bundle of rights which can exist and be
exploited independently. The nature of these multiple rights depends upon the
categories of works.
The literary, dramatic and musical works are grouped together for
the purpose of defining these exclusive rights. The rights relating to artistic
works are distinct from those of cinematograph films and sound recording.
Economic Rights
The rights conferred by Section 14 on a copyright owner are economic rights
because the exploitation of the work by the author by exercising these rights may
bring economic benefit. The author may exploit the work himself or license
others to exploit any one or more of the rights for a consideration which may be
in the form of royalty, a lump sum payment.
Moral Rights
The copyright besides conferring economic benefits also confers moral rights
on the author. Such rights though not statutorily defined are as follows –
1. The right to decide whether to publish or not to publish the work, i.e., the
right of publication.
2. The right to claim authorship of a published or exhibited work.
3. The right to prevent alteration and other actions that may damage the
author’s honour or reputation – the right of integrity
The Berne Convention recognizes some of these rights and
requires member states to provide the author with the right to claim
authorship and to object to alteration. These rights remain with the author
even after the transfer of copyright & such rights last throughout the entire
term of copyright.
These moral rights are recognized as author’s ‘Special Rights’ under
the Section 57 of the Act (Amended by 1994).
These rights are:
a) To claim authorship of the work
b) To restrain or claim damages
The above rights are conferred on the author even after the
assignment of the copyright.
The author’s computer programmes are treated differently
Works of Joint Authorship
A work may be created by a single author or by more than one author, a work
of joint authorship can also claim copyright.
Section 2(2) provides “A work of joint authorship means a work
produced by the collaboration of two or more authors in which contribution
 of one author is not distinct from the contribution of the other author or
authors”.
Levy v. Rutley, (1871) LR 6 CP 523
In the case of Tale v. Fullnbrook, (1908) 1 KB 821, it was held that a person
who only suggested the idea or subject-matter of the work cannot be
considered a joint author.
In Luksenan v. Weiderfeld, (1985) FSR 525, it was held by the court that,
mere suggestion of idea which is embodied by author in a work written by
him does not make the originator of the idea the author of the same.
Contribution of some ideas, catch uses or words is not sufficient to claim joint
authorship to the work written by another.

TERM OF COPYRIGHT
Term of Copyright
The term of copyright is fixed keeping in view of the interest of the author and
that of the general public. The interest of the author is in protecting his work
as long as possible whereas the interest of the public is in making the work a
public property as soon as possible.
The protection of the interest of the author assumes primary importance in
view of the fact that the assurance that their work will bear their name, and be
protected by law serves as a stimulant to creative minds to produce literary
works.
The interest of the public is served by recognizing the principle of fair
dealing where the use of the copyright work by a person other than the author
himself does not constitute infringement of the copyright.
The term of the copyright varies according to the nature of the work.
Term of Copyright in literary, dramatic, musical or artistic works
Section 22 provides –
Copyright shall subsists in all the above work other than the photograph,
published within the lifetime of the author until 60 years from the beginning
of the calendar year next following the year in which the author dies.
 Term of Copyright in Anonymous and Pseudonymous Works
Section 23 provides –
1. In the case of literary, dramatic, musical or artistic work (other than the
photograph) which is published anonymously or pseudonymously, copyright
shall subsist until 60 years from the beginning of the calendar year next
following the year in which the work is first published.
Provided that where the identity of the author is disclosed before the expiry of
the said period, copyright shall subsist until 60 year in which the author dies.
2. In sub-section (1), references to author shall, in the case of an anonymous
work of joint ownership, be construed, -
a. Where the identity of the authors is disclosed, as references to that author;
b. Where the identity of more authors than one is disclosed, as
references to the author who dies last from amongst such authors
3. In sub-section (1), references to the author shall, in the case of a
pseudonymous work of joint authorship, be construed –
a) Where the name of one or more of the authors are pseudonymous or his &
their identity is not disclosed, as references to the author whose name is not a
pseudonym, or, if the names of two or more of the authors are not pseudonyms,
as references to such of those authors who dies last;
b) Where the names of one or more of the authors are pseudonymous and the
identity of one or more of them is disclosed, as references to the author who dies
last from amongst the authors whose names are not pseudonyms and the authors
whose names are pseudonyms and are disclosed; and
c) Where the names of all the authors are pseudonyms and the identity of one of
them is disclosed, as references to the author whose identity is disclosed or if the
identity of two or more of such authors is disclosed, as references of those
authors who die last.
Term of Copyright in Posthumous works
Section 24 of the Act provides –
Where copyright subsists at the date of death of the author who dies last (in
case of joint authors) and the work or/and adaptation of which has
not been published before that date, i.e., the date of death of such an author,
the copyright will subsist until 60 years from the beginning of the calendar
year next following the year in which the work is first published.
Where any adaptation of such a work has already been published earlier, i.e.,
prior to the publication of the original work, the 60 year period will
commence from the calendar year next following that year. Calendar year
means the year commencing on the first day of January.
Term of Copyright in Photographs
Section 25 provides –
In the case of photograph, copyright shall subsist until 60 years from the
beginning of the calendar year next following the year in which the
photograph is published.
Term of Copyright in Cinematograph Films
Section 26 provides –
Copyright in a cinematograph film subsists until 60 years from the beginning
of the calendar year next following the year in which the film is published.
Term of Copyright in Sound Recording
Section 27 provides –
Copyright subsists in a sound recording until 60 years from the beginning of
the calendar year next following the year in which the work is first published.
Term of Copyright in Government Works/Public Undertakings
Section 28 provides –
The Government is the first owner of the copyright, the copyright shall subsist
until 60 years.
Term of Copyright in works of International Organization
Section 29 provides –
In the case of a work of an international organization to which the
provision of Section 41 applies, copyright shall subsist until 60 years.
Broadcast Reproduction Right
Section 37(2) provides that broadcast reproduction right shall subsist until 25
years.
Performers’ Right
According to Section 38(2), the performer’s right shall subsist until 25 years from
the beginning of the calendar year next following the year in which the
performance is made.

Assignment / Licence and relinquishment of

Copyright Introduction
One of the rights of the copyright owner is the right to transfer his rights
u/s,14 of the copyright Act either wholly or partially by assignment or license,
even exclusive license. In the case of tangible property by assignment of his
property he loses his rights over it but in the case of IP even after its
assignment the owner can still enjoy the property depending upon the right
assigned.
This major difference is due to the nature of intellectual property from other
property. In the case of copyright the transfer of right depends upon diverse
nature of IP. Even though there is exclusiveness in the copyright but
copyright owner cannot exclude independent creators of work. It is only
expression that is protected not the idea is based on its implication in public
interest.

Assignment / Licence of Copyright

Change of concept of indivisibility to licensing of copyright is due to
changing technologies and tremendous advancement in the field of
communication technology. One of the characteristics of the copyright is
that it has the potential to be used by a range of different users at the same
time.
The Indian copyright recognizes two types of transfer of IP i.e., license and
assignments, it always depends upon nature of property transferred. Depending
upon the nature of monopoly created by IP and its implication on public interest
has created problems in respect of licensing and assignment. The terms and
conditions incorporated in the agreement determines whether the party
intended is assignment or license i.e. from the intention of the parties.
The manner of exploitation of copyright in a work can be numerous. Copyright is
a bundle of rights comprising of multiple rights, they can be exercised
independently of each other. A novel can be published as a volume,
serialized in a newspaper or magazine or can be licensed for being made into a
film.
Each of these rights can be assigned or licensed for a limited term. While
assignment is a transfer of ownership in rights to the assignee, a Licence is a
permission to do something in respect of the work.
Difference between Assignment and License
Assignment of copy right and copyright license are two forms of contract
involved in the exploitation of copyright work by a third party. Each has its
own distinct characteristics.
A license is an authorization of an act without which authorization would be
an infringement. Licensing usually involves licensing of some of the rights
and not the whole. Licenses can be exclusive or non exclusive.
An assignment involves the disposal of the copyright: the author (assignor)
assigns the copyright to another person (assignee) or transfer of ownership
of the copyright.
In the case of license only specified interest in IP is transferred not the ownership
is transferred to the licensee. A license normally does not confer any right to
licensee against licensor or third party but exclusive licensee has substantial
rights against the licensor, even to sue the licensor. And by Section 30 if the
licensee in the case of future work dies before the work comes into existence
his legal representatives shall be entitled to such works, in the absence of
any provision to the contrary.
A licensee has a right to make alterations except in so far as his license
expressly or impliedly restricts the right. A failure to pay royalties enables the
licensor to revoke the license. But in the case of assignment it is not possible.
But if there is any harsh terms which affect the author can lead to revocation
if a complaint is made to the copyright Board.
The expression "assignee" as respects the assignment of the copyright in any
future work includes the legal representatives of the assignee, if the
 assignee dies before the work comes into existence. The owner of the copyright
has the power to assign his entire rights or assign only some of the rights. In
case the rights are split up there is only partial assignment. Assignee will be the
owner of the copyright as regard rights so assigned, the owner will be the owner
of the copyright of remaining rights. The assignment could be for whole duration
of the copyright or for a short duration.
Assignment of Copyright
Section 18, 19 and 19A of the Copyright Act deal with the assignment of
copyright. Assignment of copyright may be for the whole of the rights or for
part of the rights only.
Assignment of copyright may be general, i.e., without any limitation being
placed on the assignee or the assignment may be subject to certain limitations.
Assignment may be for the full term of the copyright or for a limited period of
time.
Assignment may be on a territorial basis, i.e., for a particular territory or
country.
An owner of a copyright can assign his right in the above combination of
forms.
Example:
An author assigns the right to serialize the work into a television serial to a
producer for a period of 20 years provided the serial is broadcast only within the
territory of India. Here the author makes a limited assignment for a limited
period of time placing territorial restrictions at the same time.
Mode of Assignment
Section 19 of the Act elaborates the mode of assignment –
1. Assignment is valid only when it is in writing signed by the assignor or by his
duly authorized agent.
2. The assignment instrument shall identify the work and specify the rights
assigned and the duration and territorial extent of such assignment.
3. The instrument of assignment of copyright shall also specify the amount of
royalty payable, if any, to the author or his legal heirs during the subsistence of
the assignment and the assignment shall be subject to
 revision, extension or termination on terms mutually agreed upon by the parties.
4. If the assignee does not exercise the rights assigned to him within one year
from the date of assignment, the assignment in respect of such rights shall be
deemed to have lapsed after the expiry of the said period unless otherwise
specified in the assignment instrument.
5. When the period of assignment is not stated, the period shall be deemed to be
five years from the date of assignment.
6. If the territorial extent of any assignment of the rights is not specified, it shall
be presumed to extend within India.
7. When the assignment has been made before the coming into force the Copyright
(Amendment) Act, 1994, the above provisions of the above sub- sections (2), (3),
(4), (5), (6) shall not be applicable. However, even such an assignment has to be
through a written statement.
An assignee, to whom certain rights have been assigned by the assignor, can
restrain the author from exercising those rights which have already been
assigned to him by moving court of competent jurisdiction for infringement.
Section 18 provides that copyright can be assigned even in respect of future
work of the author before their coming into existence. But in that case, the
assignment will take effect only when the work comes into existence.
The owner of the copyright in an existing work or the prospective owner of the
copyright in a future work may assign to any person the copyright, either
wholly or partially and either generally or subject to limitations and either for the
whole term of the copyright or any part thereof. However, in the case of the
assignment of copyright in any future work, the assignment shall take effect
only when the work comes into existence. When new rights are granted by
the legislature on existing works due to the technological development,
problem arises as to the ownership of the new rights, whether the assignor
who assigned already all the existing rights on the work or the assignee is the
owner of the future rights.
Transmission of Copyright by Operation of Law
Copyright is a kind of personal movable property. It can be transferred by
assignment or by operation of law, e.g., when the owner of copyright whether it
is published or unpublished, dies. The copyright will pass on to his personal
representatives as part of the estate, if such a person dies intestate .
Section 20 provides that if a manuscript of literary, dramatic or musical work
or an artistic work has been bequeathed to a beneficiary without specifically
bequeathing copyright, the bequest will carry with it the copyright to the work
also. In case the owner of copyright becomes bankrupt, the copyright will
vest in the official receiver & will pass to the trustee of the bankrupt’s estate
as assets for distribution among the creditors.
Relinquishment of Copyright
According to Section 21, the author of a work may relinquish all or any of
the rights comprised in the copyright in the work by giving notice to the
Registrar of Copyright.

Licencing of Copyright
A licence can transfer the interest in a copyright. In a licence the rights
granted are limited. The ownership in the rights remains with the author. In
the case of assignment, the ownership in the rights is transferred to the
assignee.
Example:
When an author licences only the right of circulation of his work to a
publisher, the publisher is only entitled to cause circulation of the work. As
assignee of the copyright, however, would be entitled to the accompanying
benefits of circulation of the work.
In the case of Dharam Dutt Dhawan v. Ram Lal Suri, AIR 1953 Punjab
279, the plaintiff entered into an agreement with the defendants (publishers)
to publish a book written by them on a royalty basis. In the agreement, the
author agreed that the publishing and selling rights shall be vested in and
remain with the publishers. The preamble defined the parties so as to include
their respective heirs, executors, administrators or assignees.
 It was held that this was partial assignment of publishing rights and not a
mere licence.
The relevant provisions of the Copyright Act concerning licences of copyright
are –
Licences by Owners of Copyright
Section 30 provides –
The owner of copyright in any existing work of the prospective owner of the
copyright in any future work may grant any interest in the right by licence in
writing signed by him or by his duly authorized agent.

Application of Sections 19 and 19A

Section 30A stipulates –
The provisions of Section 19 and 19A shall, with any necessary adaptation
and modifications, apply in relation to a licence under Section 30 as they
apply in relation to assignment of copyright in a work.

Compulsory licence in works withheld from public

Section 31 provides –
1) If at any time during the term of copyright in any Indian work which has been
published or performed in public, a complaint is made to the Copyright Board
that the owner of copyright in the work -
a) Has refused to republish or allow the republication of the work,
performance in the public by reason of such refusal the work is withheld
from the public; or
b) Has refused to allow communication by broadcast, on terms which the
complainant considers reasonable the Copyright Board, after giving to the
owner of the copyright a reasonable opportunity of being heard and after
holding such inquiry as it may deem necessary, may, if it is satisfied that
the grounds for such refusal are not reasonable, direct the Registrar of
Copyright to grant to the complainant a licence to republish the work.
2) Where two or more persons have made a complaint under sub-section (1), the
licence shall be granted to the complainant who in the opinion of the Copyright
Board would best serve the interests of the general public.

Compulsory licence in Unpublished Indian works

1) Where, in the case of an Indian work referred to in sub-section (iii) of
clause (1) of Section 2, the author is dead or unknown or cannot be traced,
any person may apply to the Copyright Board for a licence to publish such
work or a translation thereof in any language.
2) Before making an application, the applicant shall publish his proposal in
one issue of the daily newspaper in the English language having
circulation in the major part of the country.
3) Every such application shall be made in such form as may be prescribed &
shall be accompanied with a copy of the advertisement issued under sub-
section (2) & such fee as may be prescribed.
4) Where an application is made to the Copyright Board under this Section, it
may, after holding such inquiry as may be prescribed, direct the
Registrar of Copyrights to grant to the applicant a licence to publish the
work or a translation thereof in the language mentioned in the application.
5) Where a licnece is granted, the Registrar, by order, direct the applicant to
deposit the royalty in the public account of India or in any other
account specified by the Copyright Board.
6) Without prejudice to the foregoing provisions of this section, in case of a
work referred to in sub-section (1), if the original author is dead, the CG
may, if it considers that the publication is desirable in the national interest,
requires heirs, executors or legal representatives to publish within such period
as may be specified by it.
7) Where any work is not published within the period specified by the CG
under sub-section (6), the Copyright Board may, on an application
made by any person for permission to publish the work on payment of
such royalty as the Copyright Board may determine in the prescribed
manner.
 Licence to Produce & Publish Translation
Section 32 provides –
Any person may apply to the Copyright Board for a licnece to produce and
publish a translation of a literary or dramatic work in any language after
a period of Seven years from the first publication of the work.
Licence to Reproduce & Publish works for certain purposes
Section 32A(1) provides –
Where after the expiration of the relevant period from the date of the first
publication of an edition of a literary, scientific or artistic work –
a) The copies of such edition are not available in
India
b) Such copies have not been put on sale in
India for a period of Six months
Section 32A(4) provides –
Where an application is made to the Copyright Board under this section, it
may, after holding such an inquiry as may be prescribed, grant to the applicant
a licence, not being an exclusive licence, to produce and publish a
reproduction of the work mentioned in the application subject to the
condition.
Termination of Licences
Section 32B provides –
1. if, at any time after the granting of a licence to produce and publish the
translation of work in any language under sub-section (1A) of Section 32,
the owner of the copyright in the work or any person authorized by him
publishes a translation of such work in the same language & which is
substantially the same in content at a price reasonably related to the price
normally charged in India for the translation of works of the same standard
on the same or similar subject, the licence so granted shall be terminated.
2. if, at any time after the granting of a licence to produce & publish the
reproduction or translation of any work under Section 32A, the owner of
the right of reproduction or any person authorized by him sells or distributes
copies of such work or a translation thereof, as the case
 may be, in the same language & which is substantially the same in content
at a price reasonably related to the price normally charged in India, for
works of the same standard on the same or similar subject, the licence so
granted shall be terminated.

Computer Software and Copyright Protection

Introduction
Copyright was usually associated with artistic products, but today in addition
to all this copyright is now an important tool in protecting computer
software.
In the 1970s and 1980s, there were extensive discussions on whether the
patent system, the copyright system, or a sui generis system, should provide
protection for computer software.
These discussions resulted in the generally accepted principle that computer
programs should be protected by copyright, whereas apparatus using computer
software or software-related inventions should be protected by patent.
Copyright law and patent law provide different types of protection. Copyright
protection extends only to expressions, and not to ideas, procedures,
methods of operation or mathematical concepts as such, whereas a patent is
an exclusive right granted for an invention, which is a product or a process
that provides a new way of doing something, or offers a new technical
solution to a problem.
The Copyright Act provides copyright protection for original works of authorship
fixed in any concrete medium of expression. The Act gives the copyright owner
exclusive rights over the reproduction, preparation of derivative works,
distribution.

Indian Law
In India, computer software does not form the subject matter of patents as it
does not fulfill the requirements for a patentable product. India has adopted
most of the international instruments like TRIPS, Berne Convention, WIPO
Copyright treaty etc and has also incorporated law on
 software protection. The major statutes that cover software protection in India
are the Copyrights Act, 1957 and Patents Act, 1970.
Copyrights Act, 1957
The Copyright Act of 1957 is the law governing copyrights in India. The Act
was amended in 1999 so as to make the Act compatible with the provisions of
TRIPS.
The Act defines computer and computer programs. “Computer Program”
means a set of instructions expressed in words, codes, schemes or in any other
form, including a machine readable medium, capable of causing a computer
to perform a particular task or achieve a particular result. “Literary work” is
defined as that which includes computer programs, tables and compilations
including computer databases. Copyright, in relation to a computer program
means the exclusive right to do or authorize to do any of the following acts :
(1) To reproduce the work in any material form including the storing of it in
any medium by electronic means;
(2) To issue copies of the work to the public not being copies already in
circulation;
(3) To perform the work in public, or communicate it to the public;
(4) To make any cinematographic film or sound recording in respect of the
work;
(5) To make any translation of the work;
(6) To make any adaptation of the work;
(7) To do, in relation to a translation or an adaptation of the work any of the
acts specified in relation to the work in the above;
(8) To sell or give on commercial rental or offer for sale or for commercial rental
any copy of the computer program. Commercial renting does not apply to
computer programs where the program itself is not the essential object of the
rental.
To do any of the above acts related to the computer program or to use it, a
license is required from its owner. Any person who knowingly makes use of
an infringing copy of a computer program is liable to be punished
 with imprisonment for a term of at least seven days and can be extended to three
years and with fine of at least Rs. 50,000.
The term of copyright in published literary work published within the lifetime
of the author is 60 years from the beginning of the calendar year following the
year in which the author dies. In case of anonymous or pseudonymous works,
the duration is 60 years from the calendar year following the year in which the
work is first published. Thus, the minimum term of 25 years stipulated in
the Berne Convention is not applicable in India.

Protection
The basis of protection as literary work is that the work must not be copied from
another work, but must be the original work of the author. Author, with regard
to computer software, is the person who causes the work to be created.
Copyright subsists in a computer program provided sufficient effort or skill has
been spent to give it a new and original character.
Other than the condition of “originality,” a computer program also has to
conform to the requirement of first publication as stated in the Act. The work
must be first published in India and if it is published outside India, then the
author should be a citizen of India at the time of publication. As regards
unpublished work, the author should be a citizen of India or domiciled in
India at the date of making of the work.
The government of India passed the International Copyright Order, 1958
whereby any work first published in any country which is a member of the
Berne Convention or the UCC (Universal Copyright Convention) will be
accorded the same treatment as if it was first published in India. The
registration of copyright is not compulsory in India but registration offers
better protection to the author in cases of infringement of copyright.
Acts not amounting to Infringement
In compliance with the provisions of the TRIPS, the Act has clarified that the
following acts do not constitute infringement of copyright in software:
 a) Making copies or adaptation of a computer program by a lawful possessor
of a copy of such computer program from such copy in order to utilize the
program for the purpose for which it was supplied or to make back-up
copies purely as a temporary protection against loss, destruction or damage
in order only to utilize the computer program for the purpose for which it
was supplied.
b) Doing any act necessary to obtain information essential for operating inter-
operability of an independently created computer program with other
programs by a lawful possessor of a computer program provided that such
information is not otherwise readily available.
c) Observation, study or test of functioning of the computer program in order
to determine the ideas and principles which underline any elements of the
program while performing such acts necessary for which the computer
program was supplied.
d) Making copies or adaptation of the computer program from a
personally legally obtained copy for non-commercial personal use.

Infringement of Copyright
Introduction
The purpose of recognizing and protecting the copyright of an author is to
statutorily protect his work and inspire him to exercise his creativeness further.
A copyright confers exclusive right on the copyright owner, inter alia, to the
reproduction of the work in a material form, storing the work in any medium by
electronic means, publication of the work, performance of the work in public,
making of its adaptation and translations.
These rights are conferred on the owner of the copyright to enable him to reap
monetary benefits. If any of the above acts are carried out by a person other
than the owner of copyright, without a licence from the owner, it constitutes
infringement of the copyright.
Acts Constitute Infringement
Since the forms of creative works are numerous, the acts which would constitute
infringement would depend upon the nature of the work.
Section 51 of the Act defines infringement of a copyright not specifically with
respect to each kind of creative work, but in general terms. According to Section
51 of the Act, copyright in a work shall be deemed to be infringed:
a) When any person without a licence from the owner or the Registrar of Copyrights
does anything, the exclusive right to do which is by this Act conferred upon the
owner of copyright, or permits for profit, any place to be used for the communication
of the work to the public, unless he was not aware & had no reasonable ground
for believing that such communication would be an infringement of copyright; or
b) When any person:
i) Makes for sale or hires or sells or lets for hire or by way of trade displays or
offers for sale or hire any infringing copies of the work covered by copyright;
or
 ii) Distributes, either for the purpose of trade or to such an extent as to affect
prejudicially the owner of the copyright, any infringing copies of the work;
or
iii) Exhibits in public by way of trade any infringing copies of the work; or
iv) Imports into India any infringing copies of the work except the copy of any
work for the private and domestic use of the importer.
For the purpose of this section, the reproduction, of a literary, dramatic,
musical or artistic work in the form of a cinematograph film shall be deemed
to be an infringing copy.
Illustration
A printer takes a copy of the latest book released by another publishing house,
makes copies of the same and circulates them in the market. His act amounts
to infringement.
An Act whether infringement or not – Factors to be Considered
In judging whether an act would amount to infringement or not the facts
which are taken into consideration are:
i) Whether copying has a casual connection, deliberately made or is a
unintentional, indirect copying. Casual connection can be found where the
infringer has some overt motive to produce a copy, for instance reaping monetary
reward.
Illustration
A poem is copied verbatim by another & published in his own name. a third
person borrows the idea of the poem & paraphrases it. In the first case,
the person is directly infringing the copyright. In the latter case, infringement
may be indirect depending upon the degree of similarity between the two
works. Both cases, however, involve infringement.
ii) In determining whether an act amounts to infringement the extent of defendant’s
alteration of the original work; the manner in which defendant attempts to take
advantage of the plaintiff’s work; the nature and extent of plaintiff’s effort involved
in the original work; are the material factors considered.
General Principles
 The general principles is that no infringement of the plaintiff’s rights takes place
where a defendant has bestowed such mental labour upon what he has
borrowed and has subjected it to such revision and alteration as to produce an
original result. The ultimate test is “has there been a reproduction of the
plaintiff’s work in a substantial form?”
The defendant is not at a liberty to take away the result of another
man’s labour or the benefits arising out of the product of such labour
The elements need to be present to make an act an infringement within the
meaning of the Act is:
i. Substantial copying; and
ii. Direct evidence of copying from the source in which copyright subsists.
Acts not constitute infringement – Statutory Exception
The use of a copyright work by any person other than the owner of copyright is
an infringement. However, the Copyright Act recognizes certain acts which
though done by a person other than the owner of copyright would not
amount to infringement of the copyright.
The purpose of recognizing these exceptions is to enable the reproduction of the
work for certain public purposes for encouragement of private study and
research and promotion of education. These exceptions can be pleaded in
defence by the defendant in an action for infringement of copyright.
Section 52 lists the acts which do not constitute infringement of copyright. These
are:
i. A fair dealing with a literary, dramatic, musical or artistic work – for private
purpose like research criticism or review, making copies of computer programmes.
ii. Reproduction of judicial proceedings and reports – exclusively for the use of
members of legislature.
iii. Reading or recitation in public of extracts of literary or dramatic work.
iv. Publication in a collection for the use in educational institutions in certain
circumstances.
v. Reproduction by teacher or pupil in the course of instructions or in question
papers or answers.
vi. Performance in the course of the activities of educational institutions in
certain circumstances.
vii. The making of sound recording.
viii. The causing of a sound recording to be heard in public utilizing it in an
enclosed room or in clubs in certain circumstances.
ix. Performance in an amateur club given to a non-paying audience or for religious
institutions.
x. Reproduction in newspaper & magazine of an article on current economic,
political, social or religious topics.
xi. Publication in newspapers or magazines a report of a lecture delivered in
public.
xii. Making a maximum of 3 copies for the use of a public library.
xiii. Reproduction of unpublished work kept in a museum or library for the purpose
of study or research.
xiv. Reproduction or publication of any matter published in Official Gazette or
reports of Government Commission or other bodies appointed by Government.
xv. Reproduction of any judgment or order of court, tribunal or other judicial
authority not prohibited from publication.
xvi. Production or publication of a translation of Acts of Legislature or Rules
xvii. Making or publishing of a painting, drawing or photographs of a work of
architecture.
xviii. Making or publishing of a painting, drawings, or photographs or engraving of
sculpture or other artistic work permanently situate in a public place.
xix. Inclusion in a cinematograph film of any artistic work permanently situate
in a public place & other artistic work by way of background.
xx. Reproduction for purpose of research or private study or with a view to
publication of an unpublished works kept in library, museum or other institution to
which the public has access.
 Acts which do not amount to infringement in Respect of
Computer Programmes
Section 52(1)(aa) provides that in respect of computer programmes, the
following acts do not constitute infringement –
The making of copies or adaptation of a computer programme by the lawful
possessor of a copy of such computer programme from such copy –
i. In order to utilize the computer programme for the purpose for which it
was supplied; or
ii. To make back-up copies purely as temporary protection against loss,
destruction or damage in order only to utilize the computer
programme for the purpose for which it was supplied.
The following clauses have been inserted after clause (aa) in sub- section (1)
of Section 52 by the Copyright (Amendment) Act, 1999.
(ab) The doing of any act necessary to obtain information essential for operating
inter-operability of an independently created computer programme with other
programmes by a law possessor of a computer programme provided that such
information is not otherwise readily available.
(ac) the observation study or test of function of the computer programme in order
to determine the ideas and principles which underline any elements of the
programme while performing such acts necessary for the functions for which the
computer programme was supplied.
(ad) the making of copies or adaptation of the computer programme from a
personally, legally obtained copy for non-commercial personal use.

Remedies against Infringement of

Copyright Kinds of Remedies
There are three kinds of remedies against infringement of copyright:
1. Civil Remedies
2. Criminal Remedies
3. Administrative Remedies
Civil Remedies
Injunction, damages or account of profits, delivery of infringing copies and
damages for conversion.
Illustration
An author sues another for reproducing the copies of his books & selling them
in the market. The civil remedies he can claim are:
1. Stopping such an infringement, i.e., injunction.
2. Damages in the form of monetary amount.
3. Account of profit, i.e., the profits which the defendant wrongly appropriated
by sale of infringing copies.
4. Damages for conversion can be claimed when an infringer stages a play
based on the authors work, i.e., the infringer converts the form of the work
without the consent of the author and causes infringement in copyright.
Criminal Remedies
Imprisonment of the accused or imposition of fine or both. Seizure of infringing
copies.
Administrative Remedies
It consists of moving the Registrar of Copyright to ban the import of infringing
copies into India when the infringement is by way of such importation and the
deliver of the confiscated infringing copies to the owner of the copyright and
seeking the delivery.
Protection of Authors’ Special Rights
Besides the infringement of copyright, which is actionable, the moral rights of the
author known as “special rights” are also protectable. These special rights are
1. To claim authorship of the work, and
2. To restrain or claim damages if in respect of any distortion, mutilation,
modification or other act in relation to the said work which is done before
the expiration of the term of copyright, if such distortion, mutilation,
modification or other act would be prejudicial to his honour or reputation.
This special right is not available in respect of any adaptation of a computer
programme for certain purposes or to make back up copies for protection
against loss, destruction, or damage.
Defences which may be set up by the Defendant
1. No copyright subsists in the work alleged to be infringed.
2. The plaintiff is not entitled to sue as he is not the owner of the copyright.
3. The alleged copyright work itself is not original, it is in itself an infringed
copy.
4. The alleged copyright is not entitled to protection being immoral,
seditious or otherwise against public policy.
5. The defendant’s work is independent & is not copied from plaintiff’s
work.
6. The defendant’s action does not constitute infringement of the plaintiff’s
work & is permissible under one or more of the exceptions to
infringement under Section 52.
7. The suit is barred by limitation.
8. The plaintiff is guilty of estoppel, latches or acquiescence or consent.
9. The infringement was innocent & on the date of infringement the defendant
was not aware & had no reasonable ground for believing that copyright
subsisted in the work.
Kinds of Civil Remedies
1. Anton Pillar Order
2. Interlocutory injunction
3. Damages or account of profits
Anton Pillar Order
The procedure of law always provides equal opportunities to both the parties
to present their case. However, in certain cases the court may, on an
application by the plaintiff, pass an ex-parte order requiring the defendant to
allow the plaintiff to enter his premises & make an inspection of relevant
documents & articles & take copies thereof or remove them for safe custody.
Such order is called Anton Pillar Order. (Anton Piller KG v Manufacturing
Processes Limited, [1975] EWCA Civ 12.)
Such orders are necessary when there exists an apprehension in the mind of
the plaintiff.
Such order is, however, passed very cautiously by the court.
Interlocutory Injunction
 It secures the immediate protection of copyright from an existent infringement or
from the continuance of infringement or an anticipated infringement. A plaintiff
may pay for an interlocutory injunction pending trial or further orders.
For obtaining this injunction the plaintiff has to establish:
1. A Prima facie case,
2. Balance of convenience in his favour,
3. That refusal to grant interlocutory injunction would cause irreparable injury to
the plaintiff.
Interlocutory injunction may be refused when:
1. The interest of the plaintiff can be protected by ordering the defendant to
keep an account of profit,
2. The defendant has pleaded & established bonafide fair dealing,
3. The plaintiff has been guilty of undue delay in coming to the court., or
4. His conduct amounted to acquiescence in the infringement,
5. There is a substantial doubt about the plaintiff’s right to succeed in
the action.
The grant of interlocutory injunction would depend on the
overall circumstances of the case.
Damages on Account of Profits
The plaintiff is entitled to two types of damages:
1. One for infringement of his copyright. and
2. The other for conversion of his copyrighted work into another form.
Account of Profits
A plaintiff, if successful, is also entitled to account of profits as an alternative to
damages.
Criminal Proceedings against infringement
The infringement of copyright has been declared as an offence, punishable with
imprisonment which may extend from a minimum period of 6 months to a
maximum of 3 years & with a fine of Rs. 50,000 to Rs. 2 lakhs.
Where proceedings to be initiated

No court inferior to that of Magistrate of First Class can try offence under the
Act. The court trying the offence may order that all copies or instruments for
making infringing copies in possession of the alleged offender be delivered to
the owner of the copyright without any further proceedings.
The court may also order a police officer of the rank of Sub-Inspector &
above to seize without warrant, all infringing copies of the work &
accessories for making infringing copies & produce them before the
Magistrate.