LAB / Study / Class Material

Session 2/3
Adv. Dr. Harsh Pathak
Intellectual Property Laws in India

1. Trademarks Act, 1999

Registration of Trademarks:
- Purpose:Registration provides legal protection for a trademark, granting exclusive rights
to the owner and preventing unauthorized use by others.
- Process:Involves filing an application with the Trademark Registry, undergoing
examination, and if approved, publishing the mark for opposition. If no objections are
raised, the trademark is registered.
- Rights: The registered owner can use the trademark exclusively, license it, and prevent
others from using similar marks.

Indian Examples:
- Tata: The Tata name and logo are registered trademarks for various goods and services.
Tata is a well-known brand in India, spanning industries like automotive, steel, and
hospitality.
- Amul: The Amul brand, known for its dairy products, has a distinctive logo and packaging
that are trademarked, protecting its unique identity in the market.

Foreign Examples:
- Nike: The "Swoosh" logo and the "Just Do It" slogan are registered trademarks of Nike,
Inc. They are globally recognized and protected against unauthorized use.
- Coca-Cola : The Coca-Cola logo and its distinctive bottle shape are protected
trademarks, ensuring brand consistency and preventing imitation.
Concept of Well-Known Trademark:
- Definition: A trademark is considered "well-known" if it is widely recognized by the public
in India and has acquired distinctiveness.
- Protection:Well-known trademarks receive enhanced protection against misuse or
registration of similar marks, even if the goods or services are unrelated.

Passing Off and Infringement:

- Passing Off: This is a common law action used to protect unregistered trademarks. It
involves proving that a mark has been misappropriated in a way that causes confusion
among consumers.
- Infringement: Occurs when an unauthorized party uses a registered trademark or a mark
that is deceptively similar, leading to confusion or dilution of the brand’s reputation. Legal
remedies include injunctions, damages, and accounts of profits.

2. Indian Copyright Act, 1957

Registration and Infringement of Copyright:

- Registration:While copyright protection is automatic upon creation, registration with the
Copyright Office provides legal benefits, such as proof of ownership and eligibility to sue
for infringement.
- Infringement:Occurs when copyrighted material is used without permission, including
reproduction, distribution, or performance. Remedies for infringement include
injunctions, damages, and statutory fines.

Key Rights Under Copyright:

- Exclusive Rights: Copyright grants authors exclusive rights to reproduce, distribute,
display, perform, and adapt their works. These rights are designed to protect the economic
and moral interests of creators.
- Duration:Copyright lasts for the lifetime of the author plus 60 years. For corporate
authorship, it lasts for 60 years from the date of publication.

Fair Use and Exceptions:

- Fair Use: Allows limited use of copyrighted material for purposes such as criticism, news
reporting, teaching, and research without the need for permission.
- Exceptions:Include provisions for educational use, libraries, and archival purposes,
balancing copyright protection with public interest.

Indian Examples:
- Chetan Bhagat: The author of popular novels like "Five Point Someone" and "2 States"
has copyright over his literary works, protecting against unauthorized reproduction and
adaptation.
- A.R. Rahman: The music compositions by A.R. Rahman, including soundtracks for films
such as "Slumdog Millionaire," are protected under copyright, securing his rights to control
and license the use of his music.

Foreign Examples:
- J.K. Rowling: The "Harry Potter" series is protected by copyright, which covers the books,
films, and related merchandise, preventing unauthorized reproduction or adaptation.
- Disney: The Disney characters, including Mickey Mouse, are protected by copyright,
ensuring exclusive rights to their use in various media and merchandise.

3. Indian Patents Act, 1970

Meaning of Patent & Inventions:

- Patent:A patent is a legal right granted to an inventor for a novel, non-obvious, and
industrially applicable invention. It provides exclusive rights to make, use, sell, or license
the invention for a specific period.
- Inventions: Can include new products, processes, or improvements that offer a technical
solution to a problem.

Opposition Proceedings & Grant of Patent:

- Opposition Proceedings: After a patent application is published, third parties can file
objections based on grounds such as lack of novelty or non-obviousness. The Controller
examines these objections before granting a patent.
- Grant of Patent:If the application meets all requirements and no valid objections are
raised, a patent is granted, providing protection for 20 years from the filing date.

Indian Examples:
- Bayer’s Nexavar: The patent for the anti-cancer drug Nexavar, developed by Bayer, is a
significant example of pharmaceutical innovation protected under Indian patent law.
- Tata’s Nano Car: Tata Motors patented various innovations related to the Nano car,
including unique engineering solutions and design features.

Foreign Examples:

- Technology: The patent for Apple's iPhone design and technology, including the touch
screen interface, is protected, giving Apple exclusive rights to use and license these
innovations.
4. Geographical Indications (GI)

Definition:
- Geographical Indications: Indicate that a product possesses qualities or a reputation due
to its geographical origin. Examples include Darjeeling Tea and Kanjeevaram Silk.

Purpose and Protection:

- Purpose: GIs protect products that are unique to a specific region, ensuring that only
products from that region can use the GI.
- Protection:Registered GIs prevent unauthorized use and misuse of the geographical
name, ensuring quality and authenticity.

Indian Examples:
- Darjeeling Tea:Known for its distinctive flavor, Darjeeling Tea is a GI-protected product,
ensuring that only tea from the Darjeeling region can be sold under this name.
- Kanjeevaram Silk: This traditional South Indian silk is protected by GI status, ensuring
that only silk from the Kanjeevaram region can be marketed as such.

Foreign Examples:
- Champagne: The term "Champagne" is protected as a GI in France, ensuring that only
sparkling wine produced in the Champagne region can be labeled as such.
- Roquefort Cheese: This French cheese is protected by GI status, meaning that only
cheese aged in the caves of Roquefort-sur-Soulzon can be sold as Roquefort.

5. Industrial Designs

Definition:
- Industrial Designs:Refers to the aesthetic aspect of an article, including its shape,
configuration, or surface ornamentation. It does not cover technical features but focuses
on visual appeal.

Registration and Protection:

- Registration:Involves filing an application with the Design Office, which examines the
application for originality and novelty. Upon approval, the design is registered.
- Rights:The registered owner has exclusive rights to use the design and prevent others
from copying or imitating it. Protection lasts for ten years, with a possible renewal for an
additional five years.

Indian Examples:
- Titan Watches: The design of Titan’s watches, including their unique shapes and
features, is protected under Indian industrial design law, preventing others from copying
their designs.
- Godrej Lock Designs: Various innovative lock designs by Godrej are protected as
industrial designs, ensuring exclusive rights to their aesthetic features.

Foreign Examples:
- iPhone Design: Apple’s distinctive iPhone design, including its sleek appearance and
user interface, is protected as an industrial design in various countries.
- Lego Bricks: The unique design of Lego bricks, including their interlocking mechanism,
is protected as an industrial design, maintaining the brand’s distinctive look and
functionality

6. Trade Secrets

Definition:
- Trade Secrets:Refers to confidential business information that provides a competitive
edge, such as formulas, practices, processes, or designs. Trade secrets are not protected
by formal registration but are maintained through secrecy and non-disclosure agreements.

Protection and Enforcement

- Protection:Involves implementing measures to keep information confidential, such as
secure storage and limited access.
- Enforcement:If a trade secret is misappropriated, the owner can seek remedies through
legal actions based on breach of confidence or unfair competition.

Examples:
- Coca-Cola Formula: The recipe for Coca-Cola is one of the most famous trade secrets,
maintained through stringent confidentiality measures and non-disclosure agreements.
- Infosys’s Software Algorithms: Infosys, an Indian IT company, protects its proprietary
software algorithms and business processes as trade secrets to maintain a competitive
edge.

Foreign Examples:
- KFC’s Secret Recipe: The blend of 11 herbs and spices used in KFC’s chicken is a
closely guarded trade secret, contributing to the brand’s unique flavor.
- Google Search Algorithm:The specific details of Google’s search algorithm are trade
secrets, which are critical to maintaining its competitive advantage in search engine
technology.

Conclusion

Understanding the Trademarks Act, Copyright Act, and Patents Act is crucial for
safeguarding intellectual property in India. Each law addresses different aspects of
protection, from brand identity and creative works to technological innovations.
Geographical Indications and Industrial Designs offer additional layers of protection for
regional products and aesthetic features, while trade secrets safeguard confidential
business information. Together, these laws create a comprehensive framework for
protecting and promoting intellectual property, fostering innovation, and ensuring fair
competition.

Case laws analysis :

The Novartis vs. Union of India ( Patent) case, decided by the Supreme Court of India in
2013, is a landmark judgment in the realm of intellectual property rights, particularly
concerning pharmaceutical patents. Here are the main points of the case:

1. Background: Novartis sought a patent in India for its cancer drug Glivec (imatinib
mesylate) in beta-crystalline form. The patent application was filed in 1998, a year after
India had agreed to adhere to the World Trade Organization (WTO) norms on intellectual
property under the TRIPS Agreement.

2. Section 3(d) of the Indian Patents Act: The core of the dispute revolved around Section
3(d) of the Indian Patents Act, which prohibits patents on new forms of known substances
unless they significantly enhance the efficacy of the substance. This provision was aimed
at preventing "evergreening" – a practice where pharmaceutical companies make minor
modifications to existing drugs to extend their patent life without any significant therapeutic
benefits.

3. Patent Office and Court Rulings:

- The Indian Patent Office initially rejected Novartis' patent application, stating that the
new form of Glivec did not demonstrate enhanced efficacy over the known substance
(imatinib mesylate).
- Novartis challenged this decision in the Madras High Court and subsequently in the
Supreme Court of India.

4. Supreme Court Judgment:

- The Supreme Court upheld the decision of the Indian Patent Office and ruled against
Novartis.
- The Court clarified the interpretation of "efficacy" under Section 3(d), emphasizing that
any new form of a known substance must demonstrate a significant improvement in
therapeutic efficacy to be patentable.
- The judgment stated that while the beta-crystalline form of imatinib mesylate might
have certain advantages (e.g., better stability and bioavailability), these did not translate
into enhanced therapeutic efficacy.

5. Impact and Significance:

 - The judgment was seen as a significant victory for public health and access to
medicines, as it allowed generic manufacturers to produce cheaper versions of Glivec.
- It underscored India's commitment to balancing patent protection with the need to
ensure affordable access to life-saving drugs.
- The case also set a precedent for how Section 3(d) would be applied in future patent
applications, particularly in the pharmaceutical sector.

6. Global Reactions:
- The decision was praised by health activists and non-governmental organizations
advocating for affordable medicines.
- However, it drew criticism from pharmaceutical companies and some international trade
bodies, who argued that it undermined innovation and the protection of intellectual
property.

Overall, the Novartis vs. Union of India case is a pivotal example of how intellectual
property law can intersect with public health policy, particularly in developing countries.

Chuck Berry vs. the Beach Boys ( Copy Right)

Chuck Berry’s famous guitar riffs are often sampled and incorporated into the works of
other musicians; however, the Beach Boys took this even further. They took the entire
song, Chuck Berry’s 1958 “Sweet Little Sixteen,” changed the lyrics, and released it as
“Surfin’ USA” in 1963. Threats of a lawsuit encouraged the Beach Boys manager Murray
Wilson to quickly hand over the publishing rights to Arc Music, Berry’s publisher. Both
Berry and Wilson now get credit for the song. A lawsuit was avoided, but this became one
of the first major plagiarism incidents in the music industry.

Barfi! (2012) plagiarism accusations

The critically acclaimed film “Barfi!” directed by Anurag Basu, was accused of having
multiple scenes inspired by international films such as “The Notebook” (2004), “Singin’ in
the Rain” (1952), and “City Lights” (1931).
Although no legal action was taken against the makers of the film, these allegations
brought to light the issue of copyright infringement in the Indian film industry.

“The slogan "Creative India; Innovative India" serves as the main focus of the
National IPR Policy, which is in line with recent government initiatives and missions
promoting creativity, innovation, and entrepreneurship in the nation, such as "Make
in India," "Atal Innovation Mission," "Start-Up India," and "Stand-Up. “