Table of Contents

PARIS CONVENTION...........................................................................................................................................1
BERNE CONVENTION........................................................................................................................................4
TRIPS AGREEMENT............................................................................................................................................5
ROLE OF TRIPS AGREEMENT IN SHAPING INDIA'S INTELLECTUAL PROPERTY REGIME/
WHAT ARE THE CHANGES BROUGHT BY TRIPS AGREEMENT ON INTELLECTUAL
PROPERTY RIGHT IN INDIA?....................................................................................................................8
THEORIES OF PROPERTY...............................................................................................................................10
TRADEMARK.......................................................................................................................................................12
SECTION 11 OF THE TRADEMARKS ACT, 1999 : RELATIVE GROUNDS FOR REFUSAL.............12
Deceptively similar.......................................................................................................................................13
Trademark Infringement...............................................................................................................................15
Infringement remedies..................................................................................................................................16
PATENTS..............................................................................................................................................................17
Rights- PATENT- 6 RIGHTS........................................................................................................................17
Limitations and exceptions- 5.......................................................................................................................18
COMPULSORY LICENSING.....................................................................................................................20
PATENT INFRINGEMENT.........................................................................................................................22
Doctrine of Equivalents................................................................................................................................24
PATENTS IN THE PHARMA INDUSTRY.................................................................................................30
DESIGNS ACT- MODULE VI.............................................................................................................................32
COPYRIGHT........................................................................................................................................................36
Subject matter of copyright: section 13- 6 POINTS.....................................................................................36
Rights under copyright.................................................................................................................................38
Copyright infringement................................................................................................................................43
GEOGRAPHICAL INDICATIONS.....................................................................................................................48

PARIS CONVENTION

Introduction

The Paris Convention for the Protection of Industrial Property, commonly known as the Paris Convention, is an
international treaty that sets out the framework for the protection of intellectual property (IP) rights such as
patents, trademarks, industrial designs, and trade names. It was first adopted in Paris on March 20, 1883, and
has been revised several times since then. The latest revision of the Paris Convention was adopted in Stockholm
in 1967, and it currently has 177 member countries. The Paris Convention is one of the oldest and most
important international agreements on intellectual property. It aims to provide a framework for the protection of
IP rights and to promote the development of international trade by establishing a level playing field for all
countries.

Principles
 1. National treatment
One of the key principles of the Paris Convention is the principle of national treatment. This principle requires
member countries to treat the nationals of other member countries in the same way that they treat their own
nationals with respect to the protection of IP rights. In other words, a foreign applicant must be given the same
protection as a domestic applicant. This principle aims to ensure that there is no discrimination against foreign
applicants, and it helps to promote the international exchange of ideas and technology.

2. Priority
Another important principle of the Paris Convention is the principle of priority. This principle allows an
applicant who has filed a patent, trademark, or industrial design application in one member country to claim
priority for the same application in another member country, provided that the second application is filed within
a certain time period (usually six months). This principle allows applicants to secure protection for their
inventions, trademarks, and designs in multiple countries without having to go through the process of filing
separate applications in each country.
Example: A USA patent application is lodged on 10 March 2000. On 10 March 2001, the same patent
application is filed in China. China is a convention member and as a result, the Chinese application is treated as
though it was filed on 10 March 2000. If without the treaty, the patent in the example was treated as though it
was filed on 10 March 2002 in China, the invention would likely already have been disclosed and thus un-
patentable in China.

The meaning of the right of priority means that in the foreign country, the application of patent will be filed
from the earliest date of filing in the home country for purposes of the prior art. This is profitable for an inventor
, as it allows the inventor to prevent detrimental effects of public disclosure of his invention that occurred after
the earliest application and before filing in foreign countries.

3. Protection of TM
The Paris Convention also sets out rules for the protection of trademarks and trade names. It requires member
countries to provide protection for trademarks and trade names that are distinctive and not misleading , and it
prohibits the registration of trademarks that are likely to cause confusion with existing trademarks or trade
names. The Convention also establishes a system for the registration of trademarks and trade names, which
allows applicants to register their marks in multiple countries through a single application.

4. Protection of industrial design and patents

In addition to trademarks and trade names, the Paris Convention provides for the protection of industrial
designs. Member countries are required to provide protection for original designs that are new and distinctive,
and they must establish a system for the registration of industrial designs. The Convention also establishes rules
for the protection of patents, which are exclusive rights granted to inventors for their inventions. The
Convention requires member countries to provide protection for patents that are new, inventive, and capable of
industrial application.

5. Enforcement of IP rights
The Paris Convention also includes provisions on the enforcement of IP rights. Member countries are required
to provide effective remedies for the infringement of IP rights, including injunctive relief, damages, and other
appropriate remedies. The Convention also provides for cooperation between member countries in the
enforcement of IP rights, and it establishes a system for the exchange of information on IP rights between
member countries.

Merits
The Paris Convention for the Protection of Industrial Property, commonly known as the Paris Convention, has
several merits that have made it an important international agreement on intellectual property. Here are some of
the key merits of the Paris Convention:
 a. Protection of Intellectual Property Rights: The Paris Convention provides a framework for the
protection of intellectual property rights such as patents, trademarks, and industrial designs. It sets
minimum standards for the protection of these rights in member countries, which helps to prevent the
unauthorized use and exploitation of intellectual property.
b. National Treatment: The Paris Convention requires member countries to provide foreign applicants
with the same protection for their intellectual property rights as they provide to their own nationals.
This principle of national treatment helps to ensure that foreign investors and businesses are not
discriminated against in member countries.
c. Reciprocity: The Paris Convention also promotes reciprocity in the protection of intellectual property
rights. Member countries are required to provide protection to the nationals of other member countries
on a reciprocal basis. This helps to create a level playing field for businesses and investors from
different countries.
d. Priority: The Paris Convention allows an applicant who has filed a patent, trademark, or industrial
design application in one member country to claim priority for the same application in another member
country. This principle of priority helps to simplify the application process for intellectual property
rights and reduces the administrative burden on businesses and investors.
e. Enforcement of Intellectual Property Rights: The Paris Convention includes provisions on the
enforcement of intellectual property rights, which help to prevent the infringement of these rights.
Member countries are required to provide effective legal remedies and procedures for the enforcement
of intellectual property rights.
f. Promotion of International Cooperation: The Paris Convention promotes international cooperation
in the field of intellectual property. Member countries are encouraged to exchange information and
experiences on the protection and enforcement of intellectual property rights. This helps to promote the
development of international trade and the exchange of technology and knowledge. The Paris
Convention has played an important role in promoting the protection and enforcement of intellectual
property rights, and has helped to create a more level playing field for businesses and investors from
different countries. Its provisions continue to be relevant today and provide a foundation for the
development of international standards for intellectual property rights.
g. Promotion of Innovation and Creativity: The Paris Convention encourages innovation and creativity
by providing protection for intellectual property rights, including patents, trademarks, and industrial
designs. This protection allows inventors, artists, and entrepreneurs to invest in new ideas and products,
knowing that they will be able to benefit from their innovations.
h. International Standardization: The Paris Convention provides a framework for the international
standardization of intellectual property protection. It establishes minimum standards that countries
must meet to protect intellectual property, which helps to promote consistency and predictability in the
protection of intellectual property across borders.
i. Protection of Consumers: The Paris Convention protects consumers by ensuring that trademarks are
protected and that consumers can rely on the quality and origin of products they purchase. This helps to
prevent fraud and counterfeiting, which can harm both consumers and legitimate businesses.
j. Economic Development: The Paris Convention promotes economic development by encouraging
innovation and creativity, which can lead to the development of new products and technologies. It also
promotes trade by providing protection for intellectual property rights, which can be important assets
for businesses seeking to enter foreign markets.

demerits

a. Lack of Flexibility: One of the criticisms of the Paris Convention is that its provisions are not flexible
enough to accommodate the varying needs of different countries. Some critics argue that the one-size-
fits-all approach of the Convention may not be suitable for developing countries or countries with
different legal systems.
 b. Imbalance of Interests: Another criticism of the Paris Convention is that it tends to favor the interests
of developed countries and multinational corporations over the interests of developing countries and
small businesses. Critics argue that the Convention's provisions on intellectual property rights may
limit the access of developing countries to technology and knowledge, and may lead to a concentration
of power and wealth in the hands of a few.
c. Costly and Time-Consuming: The process of obtaining and enforcing intellectual property rights
under the Paris Convention can be costly and time-consuming, particularly for small businesses and
individuals. This may limit the ability of these stakeholders to compete on a level playing field with
larger businesses and corporations.
d. Inadequate Protection of Traditional Knowledge: Some critics argue that the Paris Convention does
not adequately protect traditional knowledge, which is often held by indigenous communities and is an
important part of cultural heritage. They argue that the Convention's provisions on intellectual property
rights may lead to the misappropriation of traditional knowledge by corporations and other entities.
e. Conflict with other International Agreements: The Paris Convention has been criticized for
conflicting with other international agreements, particularly those related to trade and development.
Critics argue that the Convention's provisions may limit the ability of developing countries to promote
their own economic and social development.

BERNE CONVENTION

The Berne Convention for the Protection of Literary and Artistic Works, usually known as the “Berne
Convention”[1] is an international agreement governing copyrights. It was first adopted in Berne, Switzerland in
1886. The Berne Convention lists several aspects of modern copyright law.

Principles of the treaty:

1. National treatment- The Berne Convention requires its signatories to treat the copyright of works of authors
from other signatory countries as well as those of its own nationals. Works originating in one of the Contracting
States (that is, works the author of which is a national of such a State or works first published in such a State)
must be given the same protection in each of the other Contracting States as the latter grants to the works of its
own nationals (principle of "national treatment")

2. Minimum standards In addition to establishing a system of equal treatment of internationalized copyright

amongst the signatories, the agreement also required member states to provide strong minimum standards for
copyright law protection. he minimum standards of protection relate to the works and rights to be protected,
and to the duration of protection:
(a) As to works, protection must include "every production in the literary, scientific and artistic domain,
whatever the mode or form of its expression" (Article 2(1) of the Convention).
(b) Subject to certain allowed reservations, limitations or exceptions, the following are among the rights that
must be recognized as exclusive rights of authorization:
- the right to translate,
- the right to make adaptations and arrangements of the work,
- the right to perform in public dramatic, dramatico-musical and musical works,
- the right to recite literary works in public,
- the right to communicate to the public the performance of such works,
- the right to broadcast (with the possibility that a Contracting State may provide for a mere right to
equitable remuneration instead of a right of authorization),
- the right to make reproductions in any manner or form (with the possibility that a Contracting State
may permit, in certain special cases, reproduction without authorization,
 - The Convention also provides for "moral rights", that is, the right to claim authorship of the work and
the right to object to any mutilation, deformation or other modification of, or other derogatory action in
relation to, the work that would be prejudicial to the author's honor or reputation.

3. Duration- As to the duration of protection, the general rule is that protection must be granted until the
expiration of the 50th year after the author's death. There are, however, exceptions to this general rule. In the
case of anonymous or pseudonymous works, the term of protection expires 50 years after the work has been
lawfully made available to the public, except if the pseudonym leaves no doubt as to the author's identity or if
the author discloses his or her identity during that period; in the latter case, the general rule applies. In the case
of audiovisual (cinematographic) works, the minimum term of protection is 50 years after the making available
of the work to the public ("release") or – failing such an event – from the creation of the work. In the case of
works of applied art and photographic works, the minimum term is 25 years from the creation of the work [5].

4. Limitations on economic rights: The Berne Convention allows certain limitations and exceptions on
economic rights, that is, cases in which protected works may be used without the authorization of the owner of
the copyright, and without payment of compensation. These limitations are commonly referred to as "free uses"
of protected works, and are set forth in Articles 9(2) (reproduction in certain special cases), 10 (quotations and
use of works by way of illustration for teaching purposes), 10bis (reproduction of newspaper or similar articles
and use of works for the purpose of reporting current events) and 11bis(3) (ephemeral recordings for
broadcasting purposes).

5. Automatic copyright- Copyright under the Berne Convention must be automatic. It is prohibited to require
formal registration.

6. Country of origin- The Convention relies on the concept of “country of origin”. Country of origin, as per the
Convention, means that when a work is published in a signatory country and nowhere else, that country is the
“country of origin”. As per Article 5(4) of the Convention[3], for work simultaneously published in a signatory
country in one or more non-signatory countries, the signatory country is the country of origin. For unpublished
works or works first published in a non-signatory country, the author’s nationality usually provides the country
of origin if he is a national of a signatory country.

Drawbacks of the Convention

1. Determining Country of Origin for digital publication
Certain rules of the Convention are outdated as they were formulated before the advent of digital technology.
Various signatory nations with varying levels of development find it extremely hard to update the Convention to
cover issues arising from digital advancement.
2. Right of the public not equivalent to that of an author -
The Berne Convention authorizes countries to allow “fair use” of copyrighted works in other publications or
broadcasts. Implementations of this part of the treaty fall into the broad categories of fair use and fair dealing.
The Agreed statement of the parties to the WIPO Copyright Treaty of 1996[5] states that: Critics claim that the
Convention does not mention any other rights of consumers of works except fair use
Conclusion

The Berne Convention was proposed to be amended routinely to keep pace with social and technological
advancements. The Berne Convention is not in terms with changing social and technological conditions as it is
not well equipped to provide effective protection of IP rights.

TRIPS AGREEMENT
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is an international agreement
between the member nations of World Trade Organization (WTO). TRIPS Agreement is aimed at harmonizing
the Intellectual Property (IP) related laws and regulations worldwide.

The TRIPS Agreement accomplishes this motive by setting minimum standards for protection of various forms
of IP. The nations that are signatory to the TRIPS Agreement have to abide by these minimum standards in their
national laws related to IP. The TRIPS Agreement generally sets out the minimum standards regarding the grant
of rights to the owner of IP, enforcement requirements in the national laws, and settlement of disputes and
remedies to those whose IP rights get infringed.

Objectives The coverage of the TRIPS Agreement encompasses the various areas of IP including patents,
trademarks, copyrights, geographical indications, industrial designs, etc. The objective of the TRIPS Agreement
is to
I. ensure the protection and enforcement of Intellectual Property Rights (IPR) to contribute to the
II. promotion of technological innovation,
III. transfer and dissemination of technology,
IV. mutual advantage of producers and users of technological knowledge in a manner that is conducive to
social and economic welfare, and
V. balance of rights and obligations, worldwide.

Background and History

General Agreement on Tariffs and Trades (GATT) was established in 1947 to harmonize the trade between
various nations. GATT was the only multilateral instrument governing international trade from1948 until the
establishment of WTO in 1995. In all, eight rounds of negotiations were held under GATT. These rounds were
held for refining the international trade and tariff rules. The last GATT round was the Uruguay Round (1986-
1994). The Uruguay Round, for the first time introduced discussions on trade related to agriculture, services and
IPR. After long discussions and complex negotiations, finally in 1994, WTO was established. TRIPS became
effective from 1st January 1995.

With respect to the above areas of IP, the Agreement governs the following issues:

1. How basic principles of the trading system and other international IP agreements should be applied?
2. How to give adequate protection to IPR?
3. How countries should enforce IPR adequately in their own territories?
4. How to settle disputes on IP between members of the WTO?

Framework of TRIPS, 7 parts, 73

o Part I: The general provisions and the basic principles of National Treatment and Most Favoured
Nation are covered under this part. (Article1 to Article8)
o Part II: The standards concerning availability, scope and use of Intellectual Property Rights is covered
under this part. (Article9 to Article40)
o Part III: This part deals with the enforcement of IPRs. (Article41 to Article61)
o Part IV: This part addresses the provisions for acquiring and maintaining IPR. (Article62)
o Part V: This part deals with prevention and settlement of disputes arising out of the provisions of the
Agreement. (Article63 to Artcile64)
o Part VI: Part VI is concerned with transitional agreements. (Article65 to Article67)
o Part VII: This part of the Agreement concerns various institutional agreements. (Article68 to Article73)

Salient Features of TRIPs

 1. Minimum Standards

First, in respect of each of the areas of IP covered by the Agreement, each of the member nations is obliged to
provide a minimum set of standards for protecting the respective IPR. Under each of the areas of IP covered by
the Agreement, the main elements of protection are defined, namely the subject-matter to be protected, the rights
to be conferred and permissible exceptions to those rights, and the minimum duration of protection.

Second, each member nation is obliged to provide domestic procedures and remedies with respect to protection
of IPR. The Agreement lays down certain general principles applicable to all IPR enforcement procedures. The
Agreement also lays down certain other provisions on civil and administrative procedures and remedies, special
requirements related to border measures and criminal procedures, which specify, in a certain amount of detail,
the procedures and remedies that must be available so that right holders can effectively enforce their rights.

Third, under the Agreement disputes between WTO member nations regarding the respect of the TRIPS
obligations are subject to the WTO's dispute settlement procedures.

2. Enforcement

The Agreement was not only aimed at providing minimum standards for protecting IPR but it was also aimed at
providing the enforcement of the same. The Agreement provides minimum standards for the enforcement of IPR
that allows right holders to protect their legitimate interests through civil court or administrative proceedings.

Part III of the Agreement on Enforcement of IPR sets out the obligations of member nations to establish
administrative and judicial mechanisms through which IPR holders can seek effective protection of their
interests.

Member nations are obligated to ensure that enforcement procedures are “fair and equitable”, and “not
unnecessarily complicated or costly, or entail unreasonable time limits or unwarranted delays.”

The Agreement obligates member nations to make provision for the ordering of prompt and effective
provisional measures to prevent entry of infringing goods into channels of commerce and preserve evidence
against such infringing goods and their traders. This means that the IPR holder should be entitled to seek a
prompt action against the infringement.

3. dispute settlement and prevention

Part V of the agreement deals with dispute settlement and prevention. Article 63 establishes the transparency
requirements. Under these requirements there is an obligation on the part of member nations to publish or
otherwise make available legal texts such as laws and judicial decisions.

The provisions related to dispute settlement and prevention are governed by the TRIPS council. Member nations
are obligated to furnish applicable rules or decisions, or sufficient details about them, at the request of member
nations who reasonably believe their rights may be affected.

Article 64- dispute settlement

o The provisions of Articles XXII and XXIII of GATT 1994 as elaborated and applied by the Dispute
Settlement Understanding shall apply to consultations and the settlement of disputes under this
Agreement except as otherwise specifically provided herein.
 o Subparagraphs 1(b) and 1(c) of Article XXIII of GATT 1994 shall not apply to the settlement of
disputes under this Agreement for a period of five years from the date of entry into force of the WTO
Agreement.
o During the time period referred, the Council for TRIPS shall examine the scope and modalities for
complaints of the type provided for and submit its recommendations to the Ministerial Conference for
approval.
o Any decision of the Ministerial Conference to approve such recommendations or to extend the period
in paragraph 2 shall be made only by consensus, and approved recommendations shall be effective for
all Members without further formal acceptance process.

4. Compliance with international obligations- art 2

Article 2: all members shall comply with all international conventions established by WIPO. In case of
violation, WTO may be approached to settle. This was inserted to bridge WTO and WIPO.

5. National treatment- art 3

6. Most favoured nation- art 4

A most-favoured-nation (MFN) principle explains the concept where a country has to grant some privileges
related in a trade agreement to any of the member nations of the World Trade Organization. The concept not
only ends here, but the main principle of the MFN principle is also that if any privileges are granted to any
member nation by another member nation of the WTO then the same privilege of like products has to be given
to all the other member nations of the WTO. The main objective of these principles is to promote trade and
provide equal opportunity to get the best benefits of any member nation’s resources.

ROLE OF TRIPS AGREEMENT IN SHAPING INDIA'S INTELLECTUAL PROPERTY REGIME/

WHAT ARE THE CHANGES BROUGHT BY TRIPS AGREEMENT ON INTELLECTUAL
PROPERTY RIGHT IN INDIA?

a. Patents:
One of the important impacts of the TRIPS Agreement on India's intellectual property command was in
the area of patents. Art 27- patentability of process
b. Art 31- grant of CL (put all essentials of CL, payment of fee, prior permission)
- Product patent regime- India had historically granted process patents in its place of product
patents for pharmaceuticals, allowing local manufacturers to produce common versions of
patented drugs at a lower cost. However, under TRIPS, India evolved into a product patent
regime
- Microorganisms were made patentable according to the TRIPS Agreement. India’s patent
law -‘Inventions Not Patentable’ – by excluding microorganisms from what is not patentable,
microorganisms were automatically patentable in India.
- Section 39 reintroduced in the Patent Act wherein residents could not apply for patents
outside India without prior permission. Residents were required to seek a written permit in the
manner prescribed and granted by or on behalf of the Controller.
- Introduction of mail box facility and exclusive marketing rights

c. Copyrights:
The TRIPS Agreement also influenced India's copyright law. In, Part II of The Agreement on Trade-
Related Aspects of Intellectual Property Rights (TRIPS) is titled standards concerning the availability,
scope and use of intellectual property rights Section 1 is Copyright and Related Rights. Article 9 (2)
 adds that Copyright protection shall extend to expressions and not to ideas, procedures, methods of
operation or mathematical concepts as such.
- CA was amended in 1999 to align with TRIPS requirements.
- Article 10 dealing with Computer Programs and Compilations of Data stated that the source or
object code, shall be protected as literary works under the Berne Convention (1971).
- Hence, the Indian Legislature in the Copyright Act, 1957 included Section 2(d)(vi) being ‘an
author means in relation to any literary, dramatic, musical or artistic work which is computer-
generated,
- It introduced minimum standards for copyright protection, including the term of protection,
rights of authors, and limitations and exemptions extend copyright protection to computer
software, digital works, and performances in the digital environment.
- The term ‘hire in Section 14 (b) has been substituted with ‘commercial rental.’

d. Trademarks

Section 2 of the TRIPS agreement focused on Trademarks, Article 15 defines trademarks as any sign,
or any combination of signs, capable of distinguishing the goods or services of one undertaking from
those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular
words including personal names, letters, numerals, figurative elements and combinations of colors as
well as any combination of such signs, shall be eligible for registration as trademarks.

- This brought about the definition of Trademarks in Section 2 (zb) 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 colors.
- Article 16 (2) of the TRIPS agreement provides fors exclusive rights of owner
- Service marks were incorporated as trademarks in The Trademarks Act,1999
- The TRIPS Agreement set minimum standards for the protection of trademarks and industrial
designs and also required India to provide satisfactory protection to trademarks and establish a
system for the registration
- The Trademarks Act 1999 which includes protection of well-known marks, multi class
registration, service marks, increasing of the renewal term of registration to 10 years,
certification marks, infringements, passing-off actions etc. The act has also included
provisions for the registration of trademarks for services. This is in strict compliance with
Article 16 of the TRIPS agreement.

e. Other Legislations
The TRIPS agreement, mandated certain requirements which gave rise to the following legislations-
1. The Designs Act, 2002[34], 25, 26 protection of ID, term is 10 years, denied if not original
2. Geographical Indications of Goods (Registration and Protection) Act, 1999[35], 22, 23
3. Semiconductor Integrated Circuits Layout Design Act, 2000[36],
4. The Protection of Plant and Varieties and Farmers Rights Act, 2001[37]
5. The Biological Diversity Act, 2002.[38]

Case Law: Bayer Corporation v. Natco Pharma Ltd. (2012)- first compulsory license case

Summary:
The Bayer case involves a patent dispute regarding the pharmaceutical drug marketed under the product
Nexavar, used to treat kidney and liver cancers. Bayer Corporation had obtained a patent for the drug in India
and therefore, Natco Pharma, an Indian generic pharmaceutical company, filed an application seeking a
compulsory license to manufacture and sell a generic version of Nexavar, citing high prices and limited access.

Issue:
The main issue was whether Natco Pharma should be decided a compulsory license, allowing them to produce
and sell a generic version of Nexavar without the consent of the patent holder, Bayer Corporation and this raised
interrogations about access to affordable medicines, balancing patent rights, and addressing public health
concerns.

Decision:
The Controller of Patents and the Intellectual Property Appellate Board (IPAB) granted Natco Pharma a
compulsory license to produce and sell a generic version of Nexavar. The decision was based because Bayer
Corporation's pricing of the drug made it high-priced for the majority of patients, and Natco Pharma had
established the ability to supply the drug at a significantly lower cost.

Impact:
The Bayer case marked a significant development in India's approach to compulsory licensing and access to
affordable medicines. It set a precedent for granting compulsory licenses founded on affordability and public
health concerns. The decision highlighted the importance of balancing patent rights with the need to promote
access to life-saving medicines at reasonable prices, particularly in an emerging country like India with a large
population in need of affordable healthcare solutions.

The case highlighted India's commitment to utilizing gives within the TRIPS Agreement, such as compulsory
licensing, to safeguard access to essential medicines for its population. It also underscored India's exertions to
address public health concerns, particularly in cases where patented drugs are priced out of reach for numerous
patients. The Bayer case contributed to the constant dialogue surrounding intellectual property rights, access to
medicines, and the balance between innovation and public health in India.

THEORIES OF PROPERTY

1. Natural theory-

The term “natural right” signifies a fundamental right that a person has in his possession. The natural rights
theory takes into consideration that everyone has a natural property right on his, or her ideas. This is because
creation is the result of both labour, and creativity of the person putting it into effect. Drawing its roots from
John Locke’s philosophy that says an author has a natural right over the output of his, or her intellectual
endeavours, the natural rights theory is applicable to both tangible and intangible properties. The extension of
this theory incorporates the right to use or to exclude others from use and the right to transfer the object owned.
As ownership over a creation becomes a natural right of the owner, infringement, or unauthorized use of the
same will be considered as an offence. This idea has been incorporated by different categories of intellectual
property as well.

The primary criticism of this theory has been presented hereunder;

 1. The philosophy propounded by John Locke is restrictive as it restrains a creator from being the owner
of an abstract idea which by its existence can affect other innovators. Therefore, if a person is vested
with the right to ownership in the idea of preparing lemon juice, the same ipso facto will prohibit other
innovators from adapting similar kinds of ideas. The principle behind the copyright laws is somewhat
the same as Locke’s philosophy as there exists no copyright in an idea but in an expression of that idea
in a tangible form.
2. The Lockean theory observes that the ownership of tangible properties is not bounded by a time limit.
Generally, intellectual property rights are limited by nature as after the expiration of a prescribed time,
the safeguarded object, or creation becomes available in the public domain to be freely accessible by
any individual. But Locke’s theory is not completely ignored when it comes to trade secret laws. This
is because trade secret protection remains throughout a creator’s life unless he/she by himself/herself
retains the protection to disclose confidential information to the world.
3. As per the natural rights theory, an appropriator cannot delight over all the available natural resources
of the world. If a creator is provided with the ownership of his/her idea of producing milk from
soybeans, the rest of the market will be cornered by the creator in concern with soymilk production.
Thus to conclude, the natural rights theory encourages innovation by an individual, on one hand, it
restricts the others from the same, when it comes to an idea.

2. The utilitarian theory-

The utilitarian theory walks in the footsteps of Jeremy Bentham, and John Stuart Mill who focused on the
“greatest good for the greatest number”. While the term “utilitarian” signifies “social welfare”, the theory
essentially is based on the fact that industrial progress and cultural goods together can promote a better and
significant economic impact on the society, and the people at large. When it comes to intellectual property
rights, the theory calls for a need to encourage innovation and creations. This need can be satisfied by a minimal
certification that the product of such creation will be superior in comparison to the expenses that have been
incurred for the concerned product. This theory expressly bars trade secrets to be considered intellectual
property because a trade secret in the process of protecting information that is exclusive to an individual, or a
group, prohibits the general public from benefiting from the same. Thus acting as a deterrence for the theory to
function. The utilitarian theory is also known as the incentive theory because the theory endorses society’s duty
to respect the innovator’s right to ownership on his/her creation which is not only a source of profit for the
creator himself/herself but the society as a whole.

Like the previous theory, the utilitarian theory has also been subject to criticism. The main criticism of this
theory is that the utility gains from the impetus of a unique creation are neutralized against the losses incurred
due to exclusive ownership of the creation. Thus the issue arises if at all the benefits of intellectual property
rights can be weighed against the casualties or not.

3. The ethic and reward theory

As the name itself suggests, the ethic and reward theory provides a justification of the exclusive rights that are
provided to the original owner of innovation by the intellectual property rights. These sets of exclusive rights are
considered as an expression of appreciation to the creator for his or her immense contribution to society by his
or her creation. The term “ethic” signifies “fairness” whereas the term “reward” symbolises “validation of the
efforts contributed in a particular thing”. Put simply, the ethics and reward theory throws light on the fact that a
creator must be rewarded for the creation and in doing so the ethics behind intellectual property rights will be
realized.

It is to be noted that the question as to whether the reward given to creators and inventors for benefitting the
entire society, truly deserves the same or not, remains associated with the ethic and reward theory. While on one
hand, the theory presumes that inventors deserve to be rewarded, on the other the theory makes it obvious that
the inventors do not deserve it twice. Many consider that the creators are already remunerated taking into
account the exclusive right he/she possesses over his/her work. That will be further used as a source of profit for
the creator as well. Thus it is quite evident that the exclusive right that the creator has over his or her creation is
excessive.

4. The personhood theory

The personhood theory provides that it is the creator’s creation that builds his or her personality thereby
clarifying an individual’s personality is inherent to his or her property right. The theory draws its roots from
Hegel’s philosophy, which provides that intellectual property rights are also associated with safeguarding
personality development that extends to material things. In this way, the theory remarked that an unauthorized
user who offers to the general public someone’s creation without prior consent will be considered a thief.

TRADEMARK
SECTION 11 OF THE TRADEMARKS ACT, 1999 : RELATIVE GROUNDS FOR REFUSAL

As per Sec 2 (zg) of Trademark Act, 1999- “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.” Well-known trademarks have their goodwill and reputation protected across the country and across
categories of goods and services, in contrast to other trademarks whose goodwill and reputation are restricted to
a set designated geographical area and to a certain range of items.

In the case of Daimler Benz v. Hybo Hindustan [AIR 1994 Del 2369], the defendant had been using the
plaintiff's logo and the word 'Benz' for which the plaintiff sought injunction against such use of his logo. The
court while recognizing plaintiff's logo as a well-known trademark on the ground of trans-border reputation and
goodwill granted injunction against the impugned use of logo by the defendant.

S11(2)- A TM cannot be registered if it is similar to a well-known TM

Before a trademark is recognised as a well-known trademark, several factors listed in Section 11 of the TM Act
must be taken into account:

1. Knowledge of the purported well-known mark’s recognition in the relevant segment of the
public, which denotes knowledge acquired through trade mark promotion.

The plaintiff in Rolex S A v. Alex Jewellery Pvt. Ltd. (2009) was the proprietor of the well-known trademark
Rolex for Watches, which enjoys widespread recognition. Defendants operated a company selling imitation
jewellery under the Rolex brand. The Delhi High Court concluded that the public segment that uses Rolex
watches that fall into a specific category in terms of price is very likely to believe that jewellery bearing the
trademark Rolex has some connection to the plaintiff after analysing the definition of a well-known trade mark
under Section 2(1)(zg).

Warner Bros Entertainment Inc. v Harinder Kolhi- pg 194 textbook

In the case of Indian Shaving Product Ltd. v. Gift Pack (1998), more often known as the Duracell Ultra case,
the Delhi High Court found that even though the plaintiff had made significant sales and had actively advertised,
the necessity to prove a significant period of sale was not relevant.
 2. The duration, scope, and geographic region of any trademark promotion, including any
advertising or publicity, displays at trade shows, and displays of the goods or services where the
trademark appears.

In the Whirlpool case (1998), (Whirlpool Corp. Registrar of TM, Mumbai) the Supreme Court of India
determined that the mark was a well-known mark and that the product’s advertisement was sufficient to
reach the relevant segment of the public, despite the fact that the company’s product was completely absent
from the Indian market.

4. The track record of rights in that trademark being successfully enforced , in particular the degree
to which that trade mark has been acknowledged as a well-known trade mark by any court or
registrar under that track record.

6. The quantity of actual or prospective buyers of the goods and services

in the recent case of Aveda Corp. v. Dabur India Ltd. (2010). Plaintiff sold beauty products under the trade
name “Aveda” in his business. On the other hand, the defendant began utilising the name “Uveda” as their
trademark when they began marketing their own line of cosmetics. The Delhi High Court considered the
plaintiff’s beauty product’s insignificant foothold in India (as their supply was limited to a single spa in
India, Rishikesh). Therefore, there is very little chance of confusion in people’s minds because the
defendant, Dabur, has a much larger consumer base than the plaintiff. As a result, the court only made a
minor suggestion to the defendant to reduce the likelihood of confusion by increasing the font size of their
name.

section 11(7) while determining WKTM, registrar will take into account
- the number of actual or potential customers of goods or services
- the number of persons involved in the channel of distribution of the goods
- the business circles dealing with the goods and services

Section 11(9) of The Trademarks Act [1999], lays down the conditions that are not necessary for a trademark to
be considered as Well-known. The conditions are namely:
1. That it has been used in India.
2. That it has been registered.
3. That the application for registration has been filed in India.
4. That it is Well-known or registered in any jurisdiction other than India.
5. That it is known by the public at large.

11 (10) –Obligation on the Registrar- It is an obligation on the registrar that in case of a dispute and/or
infringement the registrar must protect the interest of the well-known trademark against the identical ones and
also must take into consideration and notice the ill intention and malafide motive of the complainant or the
opponent.

Process of filing a well-known trademark

The High Court of India, the Intellectual Property Appellate Board, and the Supreme Court of India are all
appropriate referral points for determining whether or not a trademark has attained a “well-known” status.
However, the situation has changed since the Trademark Rules, 2017 were officially published. According to
Rule 124 of the Trademark Rules, 2017, any interested party can submit an application online by filling out
Form TM-M and attaching the required documents, such as a statement in support of the application that
includes the reasons the trademark should be recognised as well-known and paying the required fees. The
Trademark Rules [2017] provide a detailed process of obtaining a Well-known trademark. The applicant has to
pay a fee of ₹1,00,000 (which can only be paid online) and fill the TM-M form. The documents that are
required to support the online application are listed below:
 1. The evidence of recognition of the mark both nationally and internationally (Fulfilling Essential Factor
1).
2. The evidence of actual and potential uses of the mark, alongside with the annual turnover by the usage
of the same (Fulfilling Essential Factor 2).
3. The evidence of promotion of the mark (Fulfilling Essential Factor 3).
4. Details of successful enforcement of rights (Fulfilling Essential Factor 4 and 5)

Deceptively similar

Meaning-
- Therefore, the primary objective behind granting trademarks is for the convenience of
consumers, to prevent them from getting misguided by the huge number of players in a
marketplace. In that light, it becomes more important to protect consumers from getting
misled due to similar looking/sounding identifiers. Thus, the concept of “Deceptive
Similarity” comes as a boon in the trademark law.
- Section 2(1)(h) of the Trade Marks Act, 1999 defines the term “deceptively similar” as “A
mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that
other mark as to be likely to deceive or cause confusion”.
- Mahashian Di Hatti Ltd. v. Mr. Raj Niwas, the logos of both the spice producing companies
were the same with the only difference being that the plaintiff’s logo said “MDH” and that of
the respondent said “MHS”. Delhi High Court, while passing an infringement order against
the defendant’s use of the logo, said that both the logos were deceptively similar.

Different types of similarity found in the marks

 Visual similarity: The first similarity which is considered for comparison between the marks is the
visual similarity and under this, all visual aspects like any common syllables, suffixes, prefixes, shapes,
length, etc. of the mark are compared with the other mark;
 Phonetic similarity: To determine whether there is any kind of similarity between the two trademarks,
the phonetic similarity in sound is one of the relevant factors to consider, as phonetic similar
trademarks can create confusion in the minds of the public.
 Conceptual similarity: In this, the similarity is judged based on the message a mark is trying to
convey, and this type of similarity comes under both phonetic and visual similarity, as it refers to the
eyes as well as the top of the ears.
 K. R. Chinna Krishna Chettiar vs. Sri Ambal & Co.- ocular comparison is not always the decisive test.
The resemblance between the two marks must be considered with reference to ear and eye

Factors to determine deceptive similarity

Pianotist case- two words must be taken and judged both by their looks and their sound. The nature and kind of
customers who are likely to buy the goods and surrounding circumstances also to be taken into consideration.

Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd

 Nature and kind of the marks;
 The degree of likeness, similarity or resemblance, for example, phonetic, visual or conceptual
similarity between the marks;
 The kind or class of goods for which the trade mark has been used;
 Different class or types of purchasers who are likely to buy the goods, their educational qualification,
use of intellectual property, or care in buying goods or services;
  The mode of purchasing or acquiring the products or services;
 The similarity in the nature, performance and character of goods of the rivals.
 also laid down the Rule of Anti, which emphasises the need to judge a mark as a composite whole
rather than breaking it into parts for comparison. The rationale of this rule is based on the presumption
that the average consumer would judge the mark in its totality and not in parts.

Corn Products Refining Company vs. Shangrila Food Products Limited,

- came up with a test to ascertain the similarity between the two marks:
- i) to judge a mark as a whole instead of breaking it apart and comparing each part with the
other mark;
- ii) to take into account the ordinary intelligence of the general public
- iii) critical comparison of the marks because it might denote certain differences

National Sewing Thread Co. Ltd. vs. James Chadwick and Bros- dispute of the concept of deceptively similar
can only be decided by putting yourself in the shoes of the purchaser who is considered to be a man with not
abundant but only ordinary intelligence.

Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors. The legal standpoint behind filing of this
trademark infringement lawsuit was the “deceptively similar” analogy more particularly stated in Section 2(1)
(h) which asserts “A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles
that other mark as to be likely to deceive or cause confusion” read along with Section 11(1)(b) which states that
if there exists a similarity with an existing trademark along with the similarity of goods and services and there
exists a confusion amongst the general public with an earlier trademark then it relatively becomes a ground for
refusal of trademark registration.

Deceptive similarity and intention

- Intention to deceive is not a deciding or guiding factor to know if a mark can confuse or
deceive the general publication, be it deception related to goods, origin or trade connection.
- Kirloskar Diesel Recon Pvt. Ltd. vs. Kirloskar Proprietary Ltd. What matters is that the mark
is such that it can confuse. It is irrelevant whether a person wants to mislead or not

Trademark Infringement

Meaning- book pg 240

Infringement of a trademark- Section 29

(deceptive similarity, likelihood of confusion, reputed mark, usage of mark in business, advertisement of marks,
spoken marks)

(1) A registered trade mark 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 is identical with, or deceptively similar to, the
trade mark- Brittania Industries ltd. v. ITC ltd. pg 242

(2) A registered trade mark 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 is likely to cause confusion on the part of the
public, or which is likely to have an association with the registered trade mark because of
  its identity with the registered trade mark and the similarity of the goods or services
 similarity to the registered trade mark and the identity or similarity of the goods or services
Durga Datt Sharma v. Navaratna Pharma Laboratories
Compass Publishing BV v. Compass Logistics Ltd- it was held that if the association between the marks causes
the public to wrongly believe that the respective goods come from the same or economically linked undertaking,
there is a likelihood of confusion. Therefore, it constitutes an infringement.

(4) A registered trade mark 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 is similar to a mark having a reputation in India
and therefore, takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered
trade mark. TM dilution
 if the impugned mark is similar to senior mark
 senior mark must have a reputation in india
 the use of impugned mark is without cause
 use amounts to taking unfair advantage of distinctive character
transborder reputation: NR Dongree v. Whirpool corp

(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or
part of his trade name, or name of his business concern or part of the name, of his business concern
 For the purposes of this section, a person uses a registered mark, if, in particular, he—
 affixes it to goods or the packaging thereof;
 offers or exposes goods for sale, puts them on the market, or stocks them
 imports or exports goods under the mark; or
 uses the registered trade mark on business papers or in advertising.

(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material
intended to be used for labeling or packaging goods, as a business paper, or for advertising goods or services,

(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising--
 takes unfair advantage of and is contrary to honest practices in industrial or commercial matters;
 detrimental to its distinctive character; or
 is against the reputation of the trade mark.

(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be
infringed by the spoken use of those words as well as by their visual representation

Infringement remedies

Criminal remedies -several provisions that can be counted as a criminal remedy for the infringement of
trademark
 1. Sections 103 of the Act lays down criminal remedy for the contravention of the trademark of any
individual or entity which lays down a period of six months of imprisonment which can be extended till
a time frame of three years for infringing trademark rights.
2. Section 104 of the Act talks about penalties that need to be provided as a sanction against an
infringement. The section mentions a fine of fifty thousand rupees which can be increased till an extent
of two lakhs in case someone is found to transgress the trademark rights.
3. An inflating version of punishment is laid down under Section 105 of the same Act.
4. A seizure of powers of the person liable for infringing can be carried out as a criminal remedy for an
efficient adaptation to the above provisions. This procedure carried out by police is subjected to
reasonable grounds of proving the infringement only.

PATENTS

A. RIGHTS OF PATENTEE, EXCEPTION, LIMITATIONS

Rights- PATENT- 6 RIGHTS

i. Exclusive rights according to Article 28 of the TRIPS agreement

- where the subject matter of a patent is a product, to prevent third parties not having the
owner’s consent from the acts of making, using, offering for sale, selling, or importing for
these purposes that product;
- where the subject matter of a patent is a process, to prevent third parties not having the
owner’s consent from the act of using the process, and from the acts of using, offering for sale,
selling, or importing for these purposes at least the product obtained directly by that process.
- Patent owners shall also have the right to assign, or transfer by succession, the patent and to
conclude licensing contracts.
- Bajaj Auto Ltd. v. TVS Motor Co. Ltd- Section 48 confers an exclusive right upon patentee to
prevent third parties from using/ selling the patented invention.

ii. Right to exploit the patent

In India, the patent holder is provided with the right to manufacture, use, sell and distribute the patented product.
In case the invention is a process of production, the owner of the patent has the right to direct the procedure to
the other person who has been authorised by the patentee. This right can be enforced by the agent of the patent
holder.

iii. Right to assign and license

The patent holder is granted with the rights of assigning or granting licenses for manufacture and distribution of
the patented products to others. In case there are co-owners of the patented product, the permission to grant
license to the other person shall be sought from the co-owners. The license would be considered to be granted
when the request has been duly authorised by the controller.

iv. Right to surrender the patent

The owner of the patent has the right to surrender his patent after seeking permission from the controller. The
controller then advertises about this surrender as per the procedure laid down in the Indian Patents Act. The
parties interested in getting the ownership of the patent can then approach the controller. The controller
examines the party’s claims and surrenders the ownership respectively.
 v. Right to apply for the patent of addition
This provision is provided in Section 54 to 56 of the Indian Patents Act. This provision provides for the
modifications in the existing invention. In such a case, the patent holder is granted the right to the modified
invention after the notification of the acceptance comes out. Once the notification is presented, the owner is
provided with the same rights as provided to the previous patent.

vi. Right in case of infringement

When any of the rights of the patent holder is violated, then it is termed as patent infringement. This is to mean
that if the patented invention is used, manufactured or sold for commercial purposes by any person, then it will
be accused of patent infringement. In case of violation of patentee’s rights, the patentee can approach either the
district court or a high court. If the person is proven guilty of infringement, the courts will either grant
permanent injunction or damages or both. Symed Labs v. Glenmark Pharmaceuticals- Symed suffered losses
because Glenmark misused S’s patented products. S’s right to patent infringement was recognised and was
awarded damages.

Limitations and exceptions- 5

i. Limitation on private and non-commercial use
Another provision in the patents act relating to the limitations on private and commercial use is provided
in Section 85 of the act. It provides for revocation of patents by the controller in case of non-use.

any person interested may, after the expiration of two years from the date of the order granting the first
compulsory licence, apply to the Controller for an order revoking the patent on the ground that the patented
invention has not been worked in the territory of India or that reasonable requirements of the public with respect
to the patented invention has not been satisfied or that the patented invention is not available to the public at a
reasonably affordable price. shall contain such particulars as may be prescribed, the facts upon which the
application is based. (3) The Controller, if satisfied that the reasonable requirements of the public with respect to
the patented invention have not been satisfied or that patented invention has not been worked in the territory of
India or that the patented invention is not available to the public at a reasonably affordable price, may make an
order revoking the patent.

ii. Compulsory licensing

Under this limitation, the patent holder is restricted from using the invention for private purposes or asserting a
monopoly over commercial activity. If the government is of the opinion that the patent holder is not using the
patented invention for profit, then it can grant a compulsory license to a third party. Section 84 of the Patents
Act provides for compulsory license. It can be invoked when the patented item is not available to the general
public at affordable prices. This is generally done in cases of pharmaceutical drugs.

Every application under sub-section (1) shall contain a statement setting out the nature of the applicant's interest
together with such particulars as may be prescribed and the facts upon which the application is based.

(4) The Controller, if satisfied that the reasonable requirements of the public with respect to the patented
invention have not been satisfied or that the patented invention is not worked in the territory of India or that the
patented invention is not available to the public at a reasonably affordable price, may grant a licence upon such
terms as he may deem fit.

In considering the application field under this section, the Controller shall take into account,— (ii) the ability of
the applicant to work the invention to the public advantage; the capacity of the applicant to undertake the risk in
providing capital and working the invention, if the application were granted; (iv) as to whether the applicant has
made efforts to obtain a licence

the reasonable requirements of the public shall be deemed not to have been satisfied— (a) if, by reason of the
refusal of the patentee to grant a licence or licences on reasonable terms,— (i) an existing trade or industry or
the development thereof or the establishment of any new trade or industry in India or the trade or industry of any
person or class of persons trading or manufacturing in India is prejudiced; or (ii) the demand for the patented
article has not been met to an adequate extent or on reasonable terms; or (iii) a market for export of the patented
article manufactured in India is not being supplied or developed;

iii. Compulsory licensing by the government

Under section 92(1) of Indian Patent Act, a compulsory license can be granted Suo moto by the Central
Government in circumstances of: National emergency; or Extreme urgency; or public non-commercial use. in
settling the terms and conditions of a licence granted under this section, the Controller shall endeavour to secure
that the articles manufactured under the patent shall be available to the public at the lowest prices consistent
with the patentees deriving a reasonable advantage from their patent rights.

92(3)- Procedure for obtaining CL need not be complied with in case of those circumstances which includes any
public health crisis (TB, malaria, epidemics)

Under Section 100 of the Indian Patent Act, compulsory license can be issued by the Government on a patented
drug for use by the Government. The Bombay High Court in the case of Garware Wall Ropes Ltd. Vs. A.I.
Chopra and Konkan Railway Corp. allowed third party agencies to use a patented invention on behalf of the
Government.

Under section 102 of the Indian Patent Act, Government can obtain a pending or already granted patent for
public use. In return the Government must pay the patentee royalties as mutually agreed upon between the
parties.

iv. Exception of experimental/scientific use

This limitation is provided under sub-section 3 of Section 47 of the act. This exception provides that the
patented process/product can be used by any person for the purpose of undertaking any scientific experiment or
carrying out research. The introduction of this exception was important to protect those conducting ‘bona fide’
research and experiments. It permits the third parties to conduct research using the patented material without
being accused of infringing the patent holder’s rights.

iv. Bolar provision

- Section 107A(a) of the Indian Patent Act, 1970, also known as the “Bolar Provision,” allows
for the early working of a patented invention for the purposes of obtaining regulatory approval
for the commercialization of the invention
- This provision provides an exemption to the manufacturers of generic drugs so that they can
use the patented product to extract information and hence allows them to seek marketing
approval outside the country.
- The relevant section has been reiterated below- "For the purposes of this Act- (a) 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;
 - This is also known as bolar provision. Bolar Provision is a defense used against patent
infringement. Thus, this provision assumes extreme importance because the generic drug
manufacturers, who seek to boost their business in the market soon after the expiry of the
innovator company's patents, through the application of Bolar provision have the necessary
time and opportunity for conducting research on the product while the patent being still valid
- However, the manufacturers can only use, manufacture and sell the product in the market after
the expiry date of the patented products which is 14 years from the date of filing the patent
application.

v. Parallel imports- 107A(b)

(b) Importation of patented products by any person from a person, who is duly authorized under the law to
produce and sell or distribute the product, Shall not be considered as an infringement of patent rights”. the
importer need not ensure that the sellers from whom they buy the product are authorized by the patentee as long
as the sellers are authorized under the law to produce, sell or distribute the product. The expression "under the
law" in section 107A (b) of the Patents Act should be interpreted as the law of the country where a person is
duly authorized under the law to produce, sell or distribute the product.

vi. Exhaustion of patent rights

This provision says that once the patented product is sold in the market, the patent rights of the inventor gets
exhausted. According to this limitation, the patent holder loses his control over the product after the first
unrestricted sale of the invention takes place. The rationale behind the formulation of this limitation was that
once the patent holder has sold his invention in the market, the purpose behind granting a patent for the
particular product would get defeated. This implies that the patent holder has given the right to manufacture, use
and sell the patented product to another person, in turn, losing his own exclusive rights.

COMPULSORY LICENSING

The compulsory license is an authorization which permits the third party to use, make or sell an invention for
which a patent has been granted, without the consent of the owner of the patent as opposed to the exclusive
rights that are conferred on a patentee to use, make or sell a patented invention and prevent unauthorised and
illegal use by third parties.

Requirements for obtaining CL- S 84

Under this limitation, the patent holder is restricted from using the invention for private purposes or asserting a
monopoly over commercial activity. If the government is of the opinion that the patent holder is not using the
patented invention for profit, then it can grant a compulsory license to a third party. Section 84 of the Patents
Act provides for compulsory license. It can be invoked when the patented item is not available to the general
public at affordable prices. This is generally done in cases of pharmaceutical drugs.

Every application under sub-section (1) shall contain a statement setting out the nature of the applicant's interest
together with such particulars as may be prescribed and the facts upon which the application is based.

(4) The Controller, if satisfied that the reasonable requirements of the public with respect to the patented
invention have not been satisfied or that the patented invention is not worked in the territory of India or that the
patented invention is not available to the public at a reasonably affordable price, may grant a licence upon such
terms as he may deem fit.

Procedure for obtaining CL- 87-

Factors to be taken into account for applicant: In considering the application field under this section, the
Controller shall take into account,— (ii) the ability of the applicant to work the invention to the public
advantage; the capacity of the applicant to undertake the risk in providing capital and working the invention, if
the application were granted; (iv) as to whether the applicant has made efforts to obtain a licence

the reasonable requirements of the public: shall be deemed not to have been satisfied— (a) if, by reason of the
refusal of the patentee to grant a licence or licences on reasonable terms,— (i) an existing trade or industry or
the development thereof or the establishment of any new trade or industry in India or the trade or industry of any
person or class of persons trading or manufacturing in India is prejudiced; or (ii) the demand for the patented
article has not been met to an adequate extent or on reasonable terms; or (iii) a market for export of the patented
article manufactured in India is not being supplied or developed;

working of patent on commercial scale: Section 146 (2) of the Indian Patent Act requires every patentee and
licensee to provide information on the extent to which the patented invention has been worked on a commercial
scale in India. The information includes the following:

- Whether the invention has been worked;

- If not worked, the reasons for non-working, and steps being taken to work the invention;
- If worked, quantum and value of the patented product;
- If manufactured in India;
- Whether imported from other countries, giving details of the countries concerned;

Prima facie case and opposition: if applicant establishes a prima facie case, applicant must give copies of the
application to the patentee.patentee or any other person must file a notice of opposition via Form 14, along with
the prescribed fee. The opposition statement should contain statements pertaining to the grounds on which the
grant of the compulsory licence is opposed. When such a notice is served, the controller will notify the applicant
and give both the applicant and opponent an opportunity to be heard before deciding the case.

CL by government- 92

Under section 92(1) of Indian Patent Act, a compulsory license can be granted Suo moto by the Central
Government in circumstances of: National emergency; or Extreme urgency; or public non-commercial use.

92(3)- Procedure for obtaining CL need not be complied with in case of those circumstances which includes any
public health crisis (TB, malaria, epidemics)

Under Section 100 of the Indian Patent Act, compulsory license can be issued by the Government on a patented
drug for use by the Government. The Bombay High Court in the case of Garware Wall Ropes Ltd. Vs. A.I.
Chopra and Konkan Railway Corp. allowed third party agencies to use a patented invention on behalf of the
Government.
Under section 102 of the Indian Patent Act, Government can obtain a pending or already granted patent for
public use. In return the Government must pay the patentee royalties as mutually agreed upon between the
parties.

Insufficiency of manufacturing capacity- 92A

In order to give effect to the paragraph 6 of Doha Declaration which recognizes WTO members with insufficient
or no manufacturing capacities in the pharmaceutical sector could face difficulties in making effective use of
compulsory license under the TRIPS Agreement, the Indian Patent Act was amended to insert a new provision,
section 92-A, on compulsory licensing for manufacturing and exportation of patented pharmaceutical products
into any country that does not have sufficient manufacturing capability to address public health problems.

Termination of license- 94- On an application made by the patentee or any other person deriving title or interest
in the patent, a compulsory licence granted under section 84 may be terminated by the controller, if and when
the circumstances that gave rise to the grant thereof no longer exist and such circumstances are unlikely to recur:
Provided that the holder of the compulsory licence shall have the right to object to such termination.

Jurisprudence-

BDR Pharmaceuticals v. Bristol-Myers Squibb- Controller rejected (BDR) application for a compulsory
license for the cancer drug . The controller stated that BDR failed to make a prima facie case for the grant of
compulsory license. found that BDR had made no credible attempt to procure a license from the patent holder
and the applicant had not acquired the ability to work the invention to public advantage.

Lee Pharma v. AstraZeneca- Lee Pharma filed application for CL for patent covering Astra Zeneca’s diabetes
management drug. The application was rejected stating that no prima facie case had been made out on any of the
three grounds under section 84 (1). Reasonable requirements of the public had not been satisfied and further
failed to demonstrate the comparative requirements of the drug Saxagliptin vis-à-vis other drugs. The patented
invention had not been worked in the territory of India: Lee Pharma also failed to show the exact quantitative
requirements of drug in India.

Bayer Corp. v. Natco Pharma- CL granted to Natco Pharma for generic production of a life-saving medicine
used for treating liver and kidney cancer. Bayer sold this drug at a very high rate and Natco Pharma offered to
sell the drug making it affordable for general public. Thus, all the three conditions of Section 84 of the Indian
Patent Act were fulfilled.

Pfizer Inc vs. Dr. Reddy’s Laboratories Ltd. (2004)

Pfizer, a pharmaceutical company, sued Dr. Reddy’s Laboratories, a fellow pharmaceutical company in India,
for violating their patent on the anti-inflammatory drug “Celebrex”. The central issue in the case was the
interpretation of the Indian Patent Act’s provisions on compulsory licensing of patented drugs. Dr. Reddy’s
Laboratories sought a compulsory licence to manufacture a generic version of the drug, claiming that it was
necessary to ensure access to affordable medicines for the Indian population.

The Delhi High Court ultimately ruled in favour of Dr. Reddy’s Laboratories and granted the compulsory
licence, allowing the company to produce a generic version of the drug. This ruling was considered a significant
victory for public health and access to medicine in India, as it established key legal principles related to
compulsory licensing of patented drugs.

PATENT INFRINGEMENT

What Amounts to Patent Infringement

Patent infringement means the violation of the exclusive rights of the patent holder. As discussed earlier, patent
rights are the exclusive rights granted by the Government to an inventor over his invention for a limited period
of time. In other words, if any person exercises the exclusive rights of the patent holder without the patent
owner's authorization then that person is liable for patent infringement. Sections 104-114 of the Patents Act,
1970 provide guidelines relating to patent infringement.

Patent infringement occurs when another party makes, uses, or sells a patented item without the permission of
the patent holder. The patent holder may choose to sue the infringing party to stop his or her activities, as well as
to receive compensation for the unauthorized use. Since intellectual property is governed by statutory law, the
patent holder must sue the unauthorized party in court of law.

Patent holders must bring infringement actions within the time specified under the law of limitation from the
date of infringement; if the suit is not brought in this time limit, it is time-barred, ratifying the infringement.
While patent litigation proceeds much like any other case, the complicated legal issues surrounding patent
validity and infringement are reserved for the court's determination, although some patent litigation cases use
juries for other aspects of the overall case.

Types of Patent Infringement- 5

There are different ways a patent could be infringed. Some of the types of patent infringements includes:

(a) Direct Infringement

This occurs when a product covered by a patent is manufactured without permission. Direct patent infringement
is the most obvious and the most common form of patent infringement. Basically, direct patent infringement
occurs when a product that is substantially close to a patented product or invention is marketed, sold, or used
commercially without permission from the owner of the patented product or invention.

(b) Indirect Infringement and Contributory infringement

An indirect infringer may induce infringement by encouraging or aiding another in infringing a patent. Indirect
patent infringement suggests that there was some amount of deceit or accidental patent infringement in the
incident. For instance, A holds a patent for a device and B manufactures a device which is substantially similar
to the A’s device. B is supplied with a product from another person C to facilitate manufacturing of the B’s
device. If the device so manufactured by B infringes upon A’s patent, then the person C indirectly infringes A’s
patent. Further, if such a product is knowingly sold or supplied, it may lead to “contributory

(c) Literal Infringement

Literal infringement is a type of direct infringement in which each and every element or composition protected
by either product or process patent is copied, in other words, a replica of the original product is used,
manufactured, sold or imported.

In the case of Polaroid Corp. vs. Eastman Kodak Co (1986), Polaroid claimed that Kodak had violated its
patent right related to instant photography. The central dispute revolved around Kodak’s instant photography
system, which Polaroid argued had utilised its patented technology. Polaroid believed that four of its patents
related to instant photography, including the process of developing an instant image and the instant camera
itself, were infringed by Kodak. After a prolonged trial, the court ruled in favour of Polaroid, determining that
Kodak had indeed infringed upon Polaroid’s patents. As a result, Kodak was ordered to stop the production and
sale of its instant photography system and Polaroid was awarded substantial damages.

(d) non literal infringement

Even if an invention does not literally infringe the patent, it may still infringe under the doctrine of equivalents.
A device that performs the substantially same task in substantially the same way to achieve substantially the
same result infringes the patent under this doctrine. If the court finds infringement, it must still determine
whether the infringement was willful.

In this type of infringement, the alleged invention has to pass through the “Triple Identity Test”. This means
when an invention is similar to the patented invention hence performing significantly the same function, in the
same way and producing the same result, may even differentiate in name, shape or form, that invention will be
said to have caused non-literal infringement of the previously patented invention.

In the landmark case of Ravi Kamal Bali vs. Kala Tech. & Ors (2008), the plaintiff was granted patent for
‘tamper lock/seals’ and the defendant constructed a similar kind of product by the name of ‘Seal Tech’, which
had the similar functional features as the plaintiff’s lock. The court of law had applied the Doctrine of
Equivalence, and gave the decision in favour of the plaintiff stating that both the products had exactly the same
function and also was made up from the same material with the only slight differentiation was of construction
which did not constitute an innovation.

(e) Willful Infringement

Willful infringement involves intentional disregard for another's patent rights and encompasses both direct and
intentional copying and continued infringement after notice. Patent users and inventors should employ patent
attorneys to ensure that the use of a patent is valid and non-infringing. Even if infringement is later found, the
attempt to secure a legal opinion is evidence that the infringement was not willful.

If the court finds that the infringement was willful, the infringer faces a substantial financial penalty; a willful
infringer may end up paying triple the amount of actual damages suffered by the patent holder, as well as the
plaintiff's attorneys' fees.

Doctrine of Equivalents- 7 cases

Meaning- The term "literal infringement" means that each and every element recited in a claim has identical
correspondence in the allegedly infringing device or process.

Essence of doctrine- However, even if there is no literal infringement, a claim may be infringed under the
doctrine of equivalents if some other element of the accused device or process performs substantially the same
function, in substantially the same way, to achieve substantially the same result. The doctrine of equivalents is a
legal rule in most of the world's patent systems that allows a Court to hold a party liable for patent infringement
even though the infringing device or process does not fall within the literal scope of a patent claim , but
nevertheless is equivalent to the claimed invention.

Power of courts- The doctrine of equivalents is an equitable doctrine which effectively expands the scope of the
claims beyond their literal language to the true scope of the inventor's contribution to the art. However, there are
limits on the scope of equivalents to which the patent owner is entitled.

Factors- The factors to be borne in mind when adjudging the substantiality of the differences are as follows:

 Whether a person skilled in art would actually know of the equivalence of the two inventions in
question.
 Whether the alleged infringer intended to copy or design around the invention to arrive at the same
result.

The triple test

- The triple test was laid down in the case Graver Tank and MFG Company v. Linde Air
Prods Inc [1950]. Under this test, the doctrine of equivalence is held to be present when the
substituted element performs ‘substantially the same function in substantially the same way to
obtain the same result’.
- The meaning of ‘substantially the same way’ does not mean working identically. This was
clarified in the case of Pennwalt Corporation v. Durand-Wayland Inc [1987]. As per the
case, every element of the invention must be substituted with a substantially equivalent
element.
- it is also important to ascertain the obviousness of the substitution as per the standards of a
person who is skilled in that art.
- infringement can be established if it is found to be substantially equivalent to the patented
product. This doctrine was laid down in Winans v. Denmead, where the accused device
employed the same mode of operation, but with a different geographical form of the cars.
Court held that the patentee is deemed to claim every form in which his invention may be
copied.
- Incandescent Gas Light Co v. De Mare Incandescent Gas Light System Ltd: To apply this
doctrine, the Court has to distinguish essential elements of the claims from the non-essential -
taking into consideration the common knowledge of the worker skilled in the art, intent of the
inventor etc.

The all elements test

The ‘all elements test’ was laid down in the case Warner-Jenkinson Co. v. Hilton Davis Chemical
Company [1997]. Under this test, the doctrine of equivalent patents must be applied to each claim separately,
and not to the invention as a whole. It is hence very important to prove that all the elements of a patented
invention, or its substantial equivalent, are substantially present in the accused process or product. In the case, it
was also highlighted that an element of a claim which is missing would be considered present if there are only
insubstantial differences that differentiate the element from that which are present in the accused device or
process.

Doctrine of equivalent patents in India

in cases like Bishwanath Prasad Radhe Shyam v. Hindustan Metal Industries [1978], the apex court had
established a proper way of reading any specification. It had held that the description of the invention shall be
read first, and only then the claims. This is necessary, as an applicant cannot claim for more than he desires to
patent. This ratio is one of the useful premises used to adjudge the Doctrine of Equivalent Patents in India.

Moreover, in the case of Bajaj Auto Limited v. TVS Motor Company [2010], the purposive construction of
claims was accepted by the Madras High Court. In this case as well, the court had stressed on finding the
‘substance’ of the invention, ignoring certain omission or addition of parts.

However, it was in the case of Ravi Kamal Bali v. Kala Tech and others [2008], that the first discussion of the
doctrine of equivalent patents was brought in the purview of the courts. The court in their factual analysis of the
case had found that the alleged product and the patented product had the same ‘usage/purpose’, the same ‘nature
of material’, and also worked on the ‘same principle’. As the court found no substantial difference in the
constructional and functional aspect of the product, it held that the change in the main structure of the body
alone does not indicate the presence of a new invention. While the case had established the practice of the
doctrine, it had not explicitly drafted the rules for interpreting the same.

Limitations to the doctrine of equivalents

1. All elements rule: All the elements of a patented product should be present in the infringed product.
2. Doctrine of public dedication: This doctrine is applicable when a patentee discloses publically the
subject matter of patent but does not claim it. Anyone can then use it without fear of infringement.
3. Existence of prior art: Invention already publicly available and known, before filing of the patent
application signifies existence of prior art. In other words, the invention is not unique or exists already
in some form.
4. Prosecution of history estoppel: Also known as File-Wrapper Estoppel, it arises as a legal defence to
infringement. Prosecution history estoppel requires that the claims of a patent be interpreted in the light
of the proceedings in the patent office during the application process.

Pith and marrow doctrine

infringement may be established if the defendant's device or method enclosed all the essential elements of the
patent. The origin of the doctrine is in William Clark v. Patrick Aide. An invention may be considered as
consisting of many integers (components), some essential to it and a few nonessentials. The essential integers
are fundamental to the invention and are like the 'pith and marrow’ of it. If an invention allegedly infringes the
patent and contains all the essential integers, it infringes the patent.

Position in India- Raj Prakash v Mangat Ram Chowdhury: a party cannot avoid infringement by adding an
inessential feature, or some minor or inessential variations/additions.

Jurisdiction- Section 104

- The legal provisions with regard to jurisdiction are provided in Section 104 of the Patents Act,
1970.
- Before dealing with jurisdiction, it may be pointed out that the courts in India receive (a)
Patent Administrative Cases and (b) Patent Infringement Cases.
- Section 104 of the Patents Act says that the patent infringement suit shall not be instituted in a
court lower than District Court in India.
- Like any other civil suit the jurisdiction shall be determined in accordance with the rules of
Code of Civil Procedure.
 - The appropriate forum would be:

1. (a) Principal place where the plaintiff carries on his business; or

2. (b) Principal place where the defendant carries on his business; or
3. (c) Place where the infringing articles are manufactured/ sold or infringing process is being applied or
where the articles manufactured by the infringing process are being sold.

- Period of Limitation: The period of limitation for instituting a suit for patent infringement is
there years from the date of infringement.
- Burden of Proof:

o The traditional rule of burden of proof is adhered to with respect to patented product
and accordingly in case of alleged infringement of a patented product the ‘onus of
proof’ rests on the plaintiff.
o However, TRIPS-prompted amendment inserted by way of Section 104 (A) has
‘reversed burden of proof’ in case of infringement of patented process. Under the
current law, the court can at its discretion shift the burden of proof on the defendant ,
in respect of process patent if either of the following two conditions is met:
o (a) the subject matter of the patent is a process for obtaining a new product; or (b)
there is substantial likelihood that an identical product is made by the process and
plaintiff has made reasonable efforts to determine the process actually used but has
failed. [Section 104 (A)]
o While considering whether a party has discharged the burden imposed upon him
under Section 104(A), the court shall not require him to disclose any manufacturing
or commercial secrets, if it appears to the court that it would be unreasonable to do
so.

Declaration as to Non-Infringement- Section 105

Under Section 105 of the Act, any person after the grant of publication of patent may institute a suit for a
declaration as to non-infringement. For this the plaintiff must show that (a) he applied in writing to the patentee
or his exclusive licensee for a written acknowledgement to the effect that the process used or the article
produced by him does not infringe the patent and (b) patentee or the licensee refused or neglected to give such
an acknowledgement. It is not necessary that the plaintiff must anticipate an infringement suit.

Groundless Threats of Infringement Proceedings- Section 106

There may be situations where a person makes groundless threats of infringement of patent. The person
aggrieved by such threats may bring a suit for the following reliefs:

1. (a) A declaration to the effect that the threats are unjustifiable;

2. (b) An injunction against the continuance of such threats; and
3. (c) Such damages, if any, as he has sustained thereby. [Section 106]

Acts Which Do Not Amount To Infringement or Exceptions- Section 107A

Besides exceptions stated above, there are also certain acts which do not amount to infringement under the
Patents Act, 1970. These include:
 1. (a) 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 in India
or in any other country that regulates the making, constructing, using, selling or importing any product.
2. (b) Importation of patented products by any person from a person who is duly authorized under the
law to produce and sell or distribute the product. [Section 107-A]

Bolar Provision- Section 107-A(a)

Bolar provision allows manufacturers to begin the research and development process in time to ensure that
affordable equivalent generic medicines can be brought to market immediately upon the expiry of the product
patent.

Parallel Import Provisions

Parallel import provisions are provided in section 107 A (b) of the Patents Act, which says that importation of
patented products by any person authorized by the Patentee will not be considered as an infringement. In Cadila
Pharmaceuticals Ltd. v. Instacare Laboratories Pvt. Ltd., 2001(21) PTC 472 (Guj), the Gujarat High Court
observed that Section 107 expressly empowered a defendant to defend any suit for infringement of a patent.

Reliefs in Suits for Infringement- Section 108

As stated earlier, the exclusive rights of a patent holder have been provided protection under the Patents Act,
1970 and in the event of any violation of these rights the patentee can file a suit in the appropriate court. No
infringement action may be started until a patent has been granted. As per Section 108 of the Patents Act, the
reliefs which may be awarded in such a suit include –

(1) An injunction.

(2) Damages or account of profits.

Injunction

An injunction is a specific order of the Court forbidding the commission of a wrong threatened or the
continuance of a wrongful course of action already begun, or in some cases (when it is called a ‘mandatory
injunction’) commanding active restitution of the former state of things. The power to grant temporary
injunction is at the discretion of the court. The discretion is to be exercised reasonably, judiciously and on sound
legal principles. Injunctions are two types- (i) temporary and (ii) permanent.

Permanent injunction, restrains a party for ever from doing the specified act and the same can be granted only
on merits at the conclusion of the trial after hearing both the parties to the suit. It is governed by Sections 38 to
42 of the Specific Relief Act, 1963.

A temporary or interlocutary or interim injunction on the other hand restrains a party temporarily from doing
the specified act and can be granted until the disposal of suit. It is regulated by the provisions of Order 39 of the
Code of Civil Procedure and it may be granted at any stage of the suit

In the case of patent infringement, the plaintiff can obtain interlocutory order in the form of temporary
injunction from the court by proving the existence of the following facts:

1. (a) A prima facie case of infringement

2. (b) Balance of convenience is tilting in his/her favour
 3. (c) If injunction is not granted he/she shall suffer irreparable damage

In Hindustan Lever Limited v. Godrej Soaps Limited, AIR 1996 Cal 367, the Court held that the plaintiff in a
patent case must show a prima facie case of infringement and further that the balance of convenience and
inconvenience is in his favour. Where the alleged infringement is not novel and the patent has not yet been
exploited there is no question of loss of employment or fall in revenue and the damages if suffered could be
provisionally quantified. It could not be said that the balance of convenience was definitely in favour of an
interlocutory injunction.

The Courts may refuse to consider the question of validity while deciding on interlocutory order. As in
Schneider Electric Industries SA v. Telemecanique & Controls (I) Ltd., 2000 (20) PTC 620 (Del), Delhi High
Court held that an interlocutory application in a suit for infringement of a registered patent, defendant’s plea that
patents are invalid as patented features are in the nature of obvious improvements cannot be considered at this
stage in the light of conflicting expert evidence.

The most talked about decision having far reaching ramifications in the pharmaceutical patent arena has been
the decision of Delhi High Court in F. Hoffmann-La Roche Ltd. and Anr. v. Cipla Limited, [2008 (37) PTC 71
(Del.)].

- plaintiffs filed a suit praying for permanent injunction restraining defendant from infringing
its patent in respect of anti-cancer drug "Tarceva". The case acquired significance for the very
reason that
- The Court in this case laid down several crucial principles as follows:
- The courts should follow a rule of caution, and not always presume that patents are valid,
especially if the defendant challenges it; and
- The standard applicable for a defendant challenging the patent is whether it is a genuine one,
as opposed to a vexatious defense. Only in the case of the former, the court will hold that the
defendant has an arguable case.
- An injunction can be denied on the ground of public interest
- The court was of the opinion that as between the two competing public interests, i.e. the public
interest in granting an injunction to the patentee, as opposed to the public interest in access to
a life saving drug for the people, the balance has to be tilted in favor of the latter.

Damages

Once the suit is decided in favour of the plaintiff, the court can either award damages or direct the defendant to
render an account of profits. The two remedies are alternative and not concurrent in nature. Some express
limitations have been imposed on the grant of this relief. The court shall not grant damages or account of profits
in the following cases:

1. (a) Where the defendant proves that at the date of the infringement he was not aware and had no
reasonable grounds for believing that the patent existed.
2. (b) Where an amendment of a specification had been allowed after the publication of the specification,
and the infringement action is in respect of the specification before the date of publication unless the
court is satisfied that original specification was made in good faith and with reasonable skill and
knowledge.

This right to obtain provisional damages requires a patent holder to show the following:

1. (i) The infringing activities occurred after the patent application was published;
2. (ii) The patented claims are substantially identical to features of the process or the product infringing
the patent; and
 3. (iii) The infringer had actual notice of the published patent application.

The Supreme Court of India has laid down the following guidelines to determine infringement of a patent based
on Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries. AIR SC 1978.

1. (i) Read the description and then the claims;

2. (ii) Find out what is the prior art;
3. (iii) What is the improvement over the prior art;
4. (iv) List the broad features of the improvement;
5. (v) Compare the said broad features with the defendant’s process or apparatus; and
6. (vi) If the defendant’s process or apparatus is either identical or comes within the scope of the
plaintiff’s process or apparatus, there is an infringement.

Anton Pillar Order- Section 108(2)

The court can also order for the search of the premises of the defendant. The infringing goods, materials and
implements which are used for the creation of the infringing goods can be seized, forfeited or destroyed on the
order of the court without the payment of any compensation. [Section 108(2)]

Judicial Interpretation

1. Novartis AG vs. Union of India (2013)

The highly significant legal dispute in India concerning the principle of patent infringement. Swiss
pharmaceutical company Novartis AG brought the case to the Supreme Court of India after its application for a
patent for its anti-cancer drug “Glivec” was denied by the Indian Patent Office. The central issue of the case was
the concept of “evergreening”, where companies try to prolong the life of their patents by making minor
modifications to their products. Novartis claimed that its product was a new invention and thus deserving of
patent protection. However, the Patent Office rejected the patent, stating that it was just a modification of an
existing drug and not a new invention.

The Supreme Court eventually ruled against Novartis, determining that its product was not a novel invention
and therefore did not qualify for a patent. This ruling was seen as a positive outcome for public health and
access to medicine as it prevented the evergreening of patents and ensured that generic versions of the drug
would be available at more affordable prices.

2. Pfizer Inc vs. Dr. Reddy’s Laboratories Ltd. (2004)

Pfizer, a pharmaceutical company, sued Dr. Reddy’s Laboratories, a fellow pharmaceutical company in India,
for violating their patent on the anti-inflammatory drug “Celebrex”. The central issue in the case was the
interpretation of the Indian Patent Act’s provisions on compulsory licensing of patented drugs. Dr. Reddy’s
Laboratories sought a compulsory licence to manufacture a generic version of the drug, claiming that it was
necessary to ensure access to affordable medicines for the Indian population.

The Delhi High Court ultimately ruled in favour of Dr. Reddy’s Laboratories and granted the compulsory
licence, allowing the company to produce a generic version of the drug. This ruling was considered a significant
victory for public health and access to medicine in India, as it established key legal principles related to
compulsory licensing of patented drugs.

3. Ericsson vs. Intex Technologies (2014)

The case is related to patent infringement in the mobile technology industry. The case was brought before the
Delhi High Court by Swedish telecommunications company Ericsson, against Indian consumer electronics
company Intex Technologies, for infringement of Ericsson’s standard-essential patents (SEPs) related to mobile
technology.

Ericsson claimed that Intex had used its SEPs without obtaining a licence from Ericsson and that the licence fees
demanded by Ericsson were fair and reasonable. The Delhi High Court ruled in favour of Ericsson and ordered
Intex to stop using Ericsson’s SEPs and to pay a reasonable royalty to Ericsson.

4. BAJAJ Auto Limited vs. TVS Motor Company Limited JT (2009)

The Supreme Court of India held that TVS had infringed BAJAJ’s patent, as the design of the three-wheeler
produced by TVS was found to be substantially similar to that of BAJAJ. The court held that the patent granted
to BAJAJ was for a new and useful invention and that the design of the three-wheeler produced by TVS was a
reproduction of the patented design.

In its decision, the court emphasised the importance of treating patients as a form of property, with infringement
being a violation of the patent holder’s rights. The decision in this case highlighted the need for companies to
respect the patents of others in order to maintain a fair and competitive business environment. Overall, the case
reinforced the importance of protecting patents and intellectual property rights in India.

5. Symed Labs v. Glenmark Pharmaceuticals- Symed suffered losses because Glenmark misused S’s patented
products. S’s right to patent infringement was recognised and was awarded damages.

PATENTS IN THE PHARMA INDUSTRY

Pharmaceutical Industry runs on innovation to expand in the market. The aim of every pharmaceutical is a drug
discovery and generating profits on such investments. Medication is developed by investing huge sums of
money for the research and development of any drug. to gain a competitive edge and to protect their positions in
the market. Intellectual Property Rights plays a vital role.

International IP and pharma industry

TRIPS- Before the creation of the TRIPS, pharmaceutical industry was a highly unregulated industry in respect
of patent protection. There existed inequalities in the health status of people, and the medical needs of the
people were largely unmet. Article 27(1) of the TRIPS agreement extends patent protection to the product as
well all fields of technology. main condition under the TRIPS- novelty, inventive step and industrial
applicability.

The TRIPS Agreement provides flexibility for promoting public health by allowing the nation to issue a
compulsory license on certain grounds under Article 31. A compulsory license is a license granted by an
administrative body to a third party to exploit an invention without the patent holder’s authorisation. This
license is generally referred to as a non-voluntary license connoting the lack of consent by the patent holder. The
main aim behind issuing compulsory licensing is the promotion of research and development of new drugs.
However, such licenses are subject to payment of reasonable royalty in India.

Doha Declaration- came in recognition of the public health problem and the need for TRIPS to be a part of the
solution to these health problems. The declaration sought to confirm that TRIPS does not and should not prevent
member countries from taking measures to protect public health. The Doha Declaration concluded that TRIPS
should be interpreted in a way that would support all members’ right to protect health and promote access to
medicine for all.
Indian regime- IPR and the Pharma Industry

Requirements- 2(j)

Product v. process- With regard to pharmaceuticals in India, the substances which are intended to be used or
capable of being used as food compounds, drugs compounds, or even medicines or products which are produced
by way of chemical processes and such processes are granted protection. Patents WERE granted for the
processes or methods of manufacture of such products of chemical processes and not the whole compound
product itself for the following reasons below:

 Heavy dependence on the importing system.

 Local brands are not encouraged to make these products as branded drugs have a better standing in the
market.
 If the products are given protection, the costs will inflate.
 Cost inflation will reduce the affordability, and the consumer base will be disease-prone, and only
higher economic strata consumers will be able to afford it.

BUT, A third amendment was introduced in 2005 and it introduced product patent regime in areas, including
pharmaceuticals that were hitherto covered by process patents. Term- protected for the period of twenty year

Ever greening strategies

To protect their financial interest, many companies came up with a strategy known as “ever-greening.” In the
case of ever-greening companies make some small change to the existing product, like using the same molecular
formulae but using a different structure, adding some new ingredient in the drug without changing the effect of
the drug, etc. Ever-greening is basically a strategy adopted by the companies by which they bring some minor
changes in such as adding new mixtures of isomers, using same molecular formula but with different structure.

In India, patents are granted for a maximum term of 20 years. After the expiry of the patent, the invention goes
into the public domain which is free for use, manufacture, sale, or import. When the term of the patent is about
to end, the companies (mostly pharmaceutical companies) make trivial/insignificant variations to the existing
patented invention and file for a new patent, thus extending their monopoly. This is known as the Ever-greening
of a patent.

Novartis AG v. UoI-

Facts and issues- Novartis applied for Glivec in its beta-crystalline form. The application was rejected by the
patent office and later by the IPAB on the ground that the compound did not meet the requirements of the Act.
Novartis challenged before SC

- Whether the invention consistent with Section 3(d) of the patent act?
- Interpretation of Section 3(d) of the patent act?
- Whether the invention qualifies for the test of novelty and inventiveness for the alleged
product.

Judgement-

- Section 3(d) excludes new forms of a known substance with known efficacy from the scope of
patentability unless “enhanced efficacy” is shown. The SC reiterated that enhanced efficacy
means enhanced therapeutic effect.
- The Court also held that patent applicants must prove the increase in therapeutic efficacy
based on research data in vivo in animals.
 - Thus, the compound in question lacked efficacy and fell within the scope of Section 3(d).
- true intention to enact section 3(d) was to prevent the concept of evergreening and thus if the
invention does not fulfil the test of Section 3(d), it cannot be granted a patent.
- It is with regard to the field of medicine, especially in cases of life-saving drugs, great care
and caution need to be taken so as to protect the right to life of the masses.

Compulsory licensing and pharma industry:

Need for IPR protection

1. Protection of invention
2. Incremental economic growth and competitiveness amongst the Companies- IPR help fund the
growth of the economy of the country. Awarding the rights to the inventor helps him gain profits as
well as invest that in the research and development of drugs to create more drugs and develop the
already discovered ones. Research and development in a country help the economy to grow and on the
other hand, the market also becomes competitive.
3. Protects consumers and families- Public safety is the main concern and IPR helps to safeguard the
interest of the people. While granting protection of a patent the safety of a product and the quality is
assured which puts the mind of the consumer at ease
4. Protection against the potential infringement of the drug discovery and development The
potential infringers who make counterfeit drugs are penalized for fraudulent behavior towards the
consumers for the sake of creating profit only which the authorities prohibit.

DESIGNS ACT- MODULE VI

Origin and development of industrial designs

 The origin of the Design Act in India traces back to the British period.
 The first Act that gave privileges and protection to designs was the Patent and Designs Act, 1872.
 The Inventions and Designs Act of 1888 repealed this Act of 1872.
 The Act of 1888 was a reflection of the Designs Act of the United Kingdom.
 In the year 1911, the British government enacted a new law in the form of the Patent and Designs Act
repealing all the prior legislations.
 In 1930, this Act was amended and the government came up with some changes in the process of
registration of designs in which the concept of new and original design changed to the new or original
design.
 This legislation used to govern the matters related to both patents as well as designs.
 In 1970, the Patent Act was enacted to deal with the matters of patent specifically. All the provisions
regarding patents from this Act were repealed and it continued to deal with Industrial designs till 2000.
 India became a member state of the WTO in the year 1995. Consequently, the Patents and Designs Act
of 1911 was repealed and a new act called the Designs Act, 2000 was enacted in compliance
with TRIPS (Trade-Related aspects of Intellectual Property Rights) to make design laws for the
country.
 This new Act was enforced on 11th May 2001.
Striking features of the Designs Act, 2000

 The ‘Locarno classification’ (LOC) is a distinguishing feature of the 2000 Act. The Locarno
Classification is an international system of classification employed for the purpose of classifying goods
for the registration of industrial designs. The said classification is solely based on the subject matter of
the design as opposed to the earlier classification which was made on the basis of the substance which
has been used to make that substance.
 The Designs Act, 2000 incorporates the concept of ‘absolute novelty’. In simple language, absolute
novelty means that an invention is new if it has not been used or published anywhere in the world. The
concept of absolute novelty aids in judging a novelty on the basis of prior publications of any article
(Section 4)
 Under the 2000 Act it is possible to reinstate the registration of a design. It simply means that the
registration of a design can be restored.
 The provisions relating to punishment for any infringement has been made more stringent in the new
Act in terms of its quantum. (Section 22(2))
 The district courts have the authority to transfer cases to the high court. (Section 36)
 The Designs Act, 2000 contains certain provisions for the regulation of anti-competitive practices
within contractual licences.
 The new enactment includes the provisions in relation to the delegation of powers of the controller to
other controllers. (Chapter 7)

Definition of design- Section 2(d)

Section 2(d) of the Designs Act, 2000 provides the definition of ‘design’. It states that design means only the
features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article
whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether
manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged
solely by the eye. However, the following are excluded from the meaning of ‘design’ as provided under Section
2(d) of the Designs Act, 2000:

- Any mode or principle of construction or anything which is in substance a mere mechanical

device.
- Any trademark as defined under Section 2(1)(v) of the Trade and Merchandise Marks Act,
1958.
- Property mark as defined in Section 479 of the Indian Penal Code, 1860.
- Any artistic work as defined under Section 2(c) of the Copyright Act, 1957.

Essential requirements for registration of a design

1. Novelty and originality

- It is pertinent to point out that only a unique design which is novel and original can be
registered. However, a combination of two or more previously published designs can be
registered only if the combination produces new visuals or designs.
- In Hello Mineral Water Pvt. Ltd. vs Thermoking California Pure (1999), the dispute was
concerning a water dispenser which was designed in a cylindrical shape. Delhi High Court
held that mere form or shape is not sufficient for the purpose of novelty. The ultimate test is to
consider the design with an instructed eye to locate the difference between the design
previously published and the registered design.
- In B.Chawla & Sons vs Bright Auto Industries (1980), the Delhi High Court observed that
only slight differences existed between the two impugned designs presented before it. The
Court further held that minor addition or alteration in shape which is a well-recognized shape
 of another product that exists in the market cannot provide such design the status of a new and
novel design. It was devoid of both newness and originality.
- Bharat Glass Tube Limited v. Gopal Gas Works Ltd.,- mere variations in existing products
would not allow the proprietor to claim exclusive protection

2. The design should not have prior publication

- The design which is to be registered should not be previously published, for it cannot be
registered otherwise. Private use of the design does not amount to publication and thus, is
eligible to be registered. Similarly, if a copy of the publication is already available in the
public library where the general public has access, the same may be sufficient to constitute
publication. Therefore, in order to get the design registered, it should not be publicly
accessible.
- In M/S. Kemp & Company & Another vs M/S. Prima Plastics Ltd. (1998), it was held that
mere disclosure of design by the proprietor to any third person does not amount to publication
but such disclosure has to be in good faith.
- In Reckitt Benckiser Case- for the purpose of Section 4, prior disclosure and publication also
includes prior registration made in foreign countries.

3. Design must not be contrary to the order and morality

- The design must be registrable under the Design Act, 2000. It must not be prohibited by the
Government of India or any institution so authorized. The design must be capable of
registering under Section 5 of this act. The design which can cause a breach of peace and may
hurt the sentiments of the people may not be allowed to get register.

Procedure for registration of designs

- Section 5 provides that the Controller may, on the application of any person claiming to be the
proprietor of any new or original design not previously published in any country and which is
not contrary to public order or morality register the design under the Act.
- Every application under Section 5 of the Designs Act, 2000 shall be filed in the appropriate
patent office in the prescribed form and in the prescribed manner and shall be accompanied by
the prescribed fee.
- The Controller can refuse to register any design that is presented before him for registration.
In this case, the aggrieved person has the option to prefer an appeal to the high court.
- An application which, owing to any default or neglect on the part of the applicant, has not
been completed so as to enable registration to be effected within the prescribed time shall be
deemed to be abandoned.
- After the examination of the application, if the examiner finds any defects in the application,
the same has to be notified to the applicant. After the defects are communicated to the
applicant, the applicant is required to remove all the objections
- As per Section 7, the Controller shall, as soon as may be after the registration of a design,
cause publication of the prescribed particulars of the design to be published in the prescribed
manner and the design be open to public inspection.
- Under Section 9 of the Design Act, the Controller grants a certificate of registration to the
proprietor of the design when it is registered.
Piracy of registered designs

- Section 22 of the Designs Act, 2000 deals with the piracy of registered designs. According to
this section, any obvious or fraudulent imitation of a design which is already registered
without the consent of its proprietor is unlawful. It also prohibits the import of any material
which closely resembles a registered design.
- This section also provides that in case if a civil suit is brought against any piracy of a design,
then the compensation shall not exceed Rs. 50,000 for the infringement of one registered
design. The compensation is statutorily fixed so it serves a good ground for an interim
injunction even before the trial commencement.
- In the case of Bharat Glass Tube Limited v. Gopal Gas Works Ltd., the respondents (Gopal
Glass Works) had registered their design for diamond-shaped glass sheets and had a certificate
of the same. The appellants started using this design for marketing.
- When the matter reached the Supreme Court, it restored the design back to the respondents.
- It must be noted that any of the aforesaid acts shall constitute piracy only if they have been
done in the course of commerce and not merely for personal use. It is further necessary that
the prohibited acts have been committed in relation to articles falling in the class in which the
design has been registered.
- It must be further noted that if any question regarding the ascertainment of infringement of a
design crops up, the court will consider the design from the point of view of an average
customer. This simply means that the Ccurt will see if there is any confusion which is apparent
in the minds of the customers as far as the impugned articles are concerned.

Remedies against the piracy of registered designs

Section 22(2) of the Designs Act, 2000 enlists the remedies available against piracy of registered designs. It is
crucial to note that the Designs Act, 2000 only provides civil remedy for the infringement of copyright in a
design. This simply means that there is no provision for criminal proceedings against any person who infringes
the copyright in registered designs.

Two alternative remedies are available against the piracy of registered design. These remedies are provided
under Section 22(2) (a) and (b) of the Designs Act, 2000. The proprietor has to choose one of the following
remedies:

- Section 22(2)(a) states that if any person contravenes the provisions of Section 22 of the
Designs Act, 2022 i.e., if a person does any act which amounts to piracy of registered design,
he shall be liable to pay INR 25,000 rupees for every contravention. This provision is subject
to a condition that the total amount recoverable in respect of any one design shall not be more
than INR 50,000.

- Section 22(2)(b) states that the proprietor may file a suit for the recovery of damages for any
such contravention in addition to an injunction against the repetition of such contravention. If
the proprietor is successful, he will be entitled to recover such damages as may be awarded by
the court. In addition to this, the proprietor can restrain the defendant by means of the
injunction granted by the court.

Moreover, the second proviso to Section 22(2) states that a suit or proceeding cannot be instituted in a court
below the court of the district judge. This provision is subject to the condition that if the defendant avails any of
the grounds provided under Section 19 which relates to the grounds on which registration of a design may be
cancelled, the court has to mandatorily transfer the suit or such other proceeding to the high court for the
purpose of adjudication.

Need for protection- revenue generator, Protection of exclusive rights, Return on investments, Promotes brand
value, Facilitates marketing and commercialization

COPYRIGHT

Subject matter of copyright: section 13- 6 POINTS

Not every work enjoys copyright protection. A work has to be original in order to enjoy copyright protection.
Copyright law requires that the ‘expression’ of the idea in the work must originate from the author and should
not be copied from anywhere else. Another significant fact is that the copyright protection does not depend upon
the quality or style, but on the originality of the produced work or the creation in question.

1. Literary work

Literary works are not limited to works of literature alone, but include all works expressed in printed or writing
forms (except dramatic or musical works). Computer programmes, tables and compilations including computer
databases falls within the ambit of literary work.

It is the product of the human mind which may consist of a series of verbal or numerical statements, not
necessarily possessing aesthetic merit, capable of being expressed in writing, and which has been arrived at by
the exercise of substantial independent skill, creative labor, or judgment. The Copyright Act, 1957 provides an
inclusive definition of literary work, according to which the literary work includes computer programming,
tablets, and compilations including computer databases.

Literary work should have the following characteristics:

 It must be original and be fixed in some tangible form.
 It refers to written or printed matter.
 No merit other than originality is required.

In Walter v. Lane (1900), a book which was published based on articles in ‘The Times’ which were verbatim of
the speech made by Lord Roseberry – was held to be original since own skill and labour was exercised.

In University of London Press Ltd. v. University Tutorial Press Ltd., ‘original’ implies that work must not
copied from another’s work. it must originate from the author itself.

In Gopal Das v. Jagannath Prasad, defendants copied book from plaintiff. Court held that D cannot obtain
subject matter from plaintfiffs book with a slight degree of colourable variation. Does not amount to originality.

In Eastern Book Co v. DB Modak- judgements are available in public domain and hence, no copyright.
However, if the publisher inserts inputs in the judgement which would satisfy the test of minimal creativity,
copyright can be given.

2. Dramatic work
Section 2(h), the term “dramatic work” encompasses various forms of creative expression, such as pieces
designed for recitation, choreographic works, and entertainment performed without dialogue. It also includes the
written or recorded elements of scenic arrangements and acting forms. However, it’s important to note that this
definition is inclusive, meaning that other forms falling within the broader concept of dramatic works may also
be covered. Nevertheless, it explicitly excludes “cinematographic films” from the category of dramatic works.

In Tate v. Fullbrook (1908), it was held that any dramatic work in its entirety along with the scenic effects
comes under copyright.

3. Musical work

Section 2(p)- Musical works refers to a work which consists of music and includes any graphic notation of such
work. The creator of any musical work is known as a composer. Composer is a person who composes the music
irrespective of the fact that the music is recorded in any form of graphical notations or not. The copyright for the
musical work extends to the lifetime of the author plus 60 years after the author dies. In case of hbgb forming
Rights Society v/s Eastern India Motion Picture Association the Supreme Court clarified that according to
Section 2(p), a “musical work” encompasses combinations of melody and harmony, or even just one of these
elements, when they are expressed through writing, printing, or any other graphical representation.

Similarly, in another case of Sulmanglam R. Jayalakshmi v. Meta Musical the Madras High Court determined
that the definition of “musical work” as outlined in Section 2(p) includes any form of ‘graphical notation’ of
music.

4. Artistic work- Section 2(c)

According to the Copyright Act, 1957, artistic work includes any painting, sculpture, drawing, or engraving
photograph of any work possessing artistic qualities. However, it also includes a work of architecture and artistic
craftsmanship.

Artistic work should have an original content to be protectable under the copyright. The assessment of the
artistic merit and quality is done by art connoisseurs and dealers. It is understood outside the domain of
copyright.

the case of La Chemise Lacoste v. R.H. Garments, the plaintiff is a well-known international clothing
manufacturer with copyright ownership of an artistic work featuring a crocodile device. the defendant began
using similar branding, including LACOSTE, CHEMISE LACOSTE, and a crocodile device on their products.
The court ruled that the defendant’s reproduction of the artistic work and crocodile device constituted copyright
infringement.

5. Cinematograph films- Section 2(f)

According to the Copyright Act,1957, a cinematographic film refers to any visual recording, regardless of the
medium, that can be used to create a moving image through various methods. This definition encompasses
works with accompanying sound recordings. Additionally, the term “cinematograph” is inclusive of any work
generated through processes similar to cinematography, such as video films.

In the case, Entertaining Enterprise v. State of Tamil Nadu High Court of Madras held that videotape will fall
within the definition of cinematographic film. In the case, Raj Video Vision v. K Mohana Krishnan High Court
of Madras held that television fall within the definition of “cinematograph”.
 6. Sound recording

It means a recording of sound 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 produced. The author of sound recording is the
producer of the sound recording. The sound recording may involve musicians, it may involve singers, but the
author is the producer.

CONDITIONS TO ACCESS THE COPYRIGHT

Under Section 13(2) of the Copyright Act, copyright protection is granted in the following circumstances:
1. If a work is first published in India.
2. If a work is published outside India, the author, at the time of publication (or at the time of their death
if they were deceased), is an Indian citizen.
3. For unpublished works (excluding architectural works), the author, at the time of creating the work,
is either an Indian citizen or has legal domicile in India.
4. For architectural works, copyright protection is granted if the work is physically located within India.

Rights under copyright- 8 CASE LAWS

Copyright legislation is part of the wider body of law known as intellectual property (IP) which refers broadly to
the creations of the human mind. IP rights protect the interests of innovators and creators by giving them rights
over their creations.

An author produces literary, artistic, scientific or dramatic work or a cinematograph film or a sound recording
with various aims and objective. These aims and objectives can be termed as his interest. In creating any work
the author employs his time, energy, labour, skill, creativity, resources, mind, faculties, perception, ideology. The
work is the brainchild of the author and the author can be deemed to be the parent. He, as an owner, has the
exclusive right to reproduce, communicate, distribute, assign or alienate his work for economic or personal gain.

positive and negative rights- He alone has the exclusive right to commercially exploit his work. He alone has the
right to reproduce his work in any manner, form or medium. This lays the foundation for the economic rights of
author. The right enjoyed by copyright owner is a negative one i.e. it is the right to prevent others from using his
work.

Neighboring rights- The author may need assistance of others in order to communicate the work in public and
their efforts need to be recognised. These communicators of work of the author are referred as the neighbors to
the author and the rights, which emerge, to them are called neighboring rights. The international conventions
recognize three such neighbors namely, producers of sound recording, performers, and broadcasting
organizations. There are three bundles of rights, Economic Rights, Moral Rights and Neighboring rights.

International Perspective

WIPO Convention, Paris and Berne Convention Protects literary, artistic, and scientific works; performances of
performing artists, phonograms and broadcasts; inventions in all fields of human endeavor; scientific
discoveries; industrial designs; trademarks, service marks, and commercial names and designations; protection
against unfair competition; and all other rights resulting from intellectual activity in the industrial,
scientific, literary or artistic fields.
Indian Perspective

Copyright is a bundle of rights consisting of Exclusive Economic Rights, Moral Rights & Neighbouring Rights.
The scheme in of the Indian copyright act 1957 concerning different kinds of rights is under:

1. Economic Rights- Section 14

Economic rights are those rights which help the author reap economic benefits. As per Section 14 of the
Copyright Act, 1957, different rights are recognized for the works considering its nature. The section provides
that it is the exclusive right of the author to do or authorize the doing of the acts provided thereunder. The
important rights generally recognized by all types of works under the Indian statute that attracted much judicial
interpretation include reproduction rights, right of distribution, and right to communicate work to the public.

A. Right of reproduction:

- According to sec14(a)(i) of the Copyright Act, owner in a literary, dramatic, musical, artistic,
cinematograph film and sound recording work has an exclusive right to reproduce the work or
authorize the reproduction of work in any material form.
- The author has an exclusive right to reproduce the work and this includes its conversion from
two dimensional to three dimensional and vice versa.
- Under the Act, the right to reproduction of literary work also includes storing it in electronic
form. This essentially means that storing into a computer or compact disk will amount to the
reproduction, even though the copy is in a different form when compared with the original.
- Delhi High Court Escorts Construction Equipment Ltd & Anr vs Action Construction
Equipment Pvt Ltd & Anr.
 The claim of the plaintiffs was that the defendants reproduced drawings for which the
plaintiffs have copyright protection. Court held that the defendants have violated
copyright of the plaintiffs in their industrial drawings and granted an injunction
 The object of copyright- is to protect creativity of the author + ensure that no one else
commercially exploits this creativity.
- Microsoft corporation vs Nimesh
 defendant were loading software programme of Microsoft on to branded computers
without taking authorization from them and selling the computers with unauthorised
computer programs to the costumers.
 It was held that the defendants infringed right of the owner of copyright.
- Similar rights are also conferred with authors of cinematograph films. They are vested with
the exclusive right to make copy of the film as per Section 14(d) (i) of Copyright Act. The
right of reproduction is not given to copyright owners of cinematograph films and sound
recording but the right to make a copy is given.
- Bombay High Court in the case Star India Private Limited vs Leo Burnett (India) Pvt ltd.
 plaintiff was the owner of the cinematograph film and defendants made a commercial
film with similar characters.
 The question which came for the consideration before the court was whether the
commercial film made by the defendants is a copy of work of the plaintiff.
 The Court here pointed out that the rights guaranteed under Section 14 (a) (b) and (c)
and that under Section14 (d) and (e) are of different degree. Consequently production
by another person of even the same cinematograph film will not constitute an
infringement of copyright of the first film.
 If the second film has been filmed or shot separately and even if it resembles the first
film, it is not the copy of the first film and therefore does not amount to infringement.
B. Right of distribution:

- owner of the copyrighted work also has a right to distribute in the market and make money out
of it. The act of distribution may be in the form of sale, lending for free or for a consideration,
rental, or free distribution by the way of gift.
- The right of distribution differs from case to case and shall not be exercised in a similar
manner at each instance. The scope and extend of this right is not uniform i.e. it differs with
the work.
- Once copies are in circulation the right no longer exists i.e. the right gets exhausted.
The principle of exhaustion is dealt in Article 6 of the TRIPS, under General Provisions and
Basic Principles.
- According to the exhaustion principle, once the intellectual property rights holder has sold a
product to which its IPRs are attached, he cannot prohibit the subsequent resale of that
product, as his intellectual rights in that product are said to have been 'exhausted' (First Sale
Doctrine)

C. Right to communicate to the public:

- It means letting or making the product/work available to the public by way of broadcasting,
simulcasting or webcasting.
- If a person not being the owner of the work, communicates it to the public would amount to
the act of infringement.
- In Indian performing right society Ltd. V Aditya Pandey, the Delhi High Court held that “the
defendant is accordingly restrained from communicating any of such works to the public, or
performing them, in the public, without such appropriate authorization, or licensing”
- To understand the ambit of this right it is necessary to understand the meaning of the words
communication and public. Section 2 (ff) of the Copyright Act has defined the
term Communication to Public to mean making the work available to the public for their
enjoyment, irrespective of whether they actually enjoy it.
- Covers: transmission over computer network + communication through satellite + cable
means
- Bombay High Court Garware Plastics and Polyester Ltd, and others vs M/s Telelink and
others
 Interpreting the term 'Public', the Court held that though the people who receive
broadcast are either residents of apartments in a building which has the network or
residents of the locality, they cannot be treated as members of the same household or
family and consequently their relation with the owner of the work is of public nature.

D. Right to make cinematography and sound recording:A literary, dramatic or musically work
may be reproduced in the form of cinematograph film or sound recording if license is granted
by the owner

E. Right of translation and adaptation:

- Translation means reproducing the work or expression of work in a language other than that
of the original version. Authorisation is required for translation
 - Adaptation rights are exclusively available only to musical, literary or dramatical works and
are not extended to the computer programmes. As per Copyright Act ‘adaption’ means
i. in relation to a dramatic work, the conversion of the work into a non-dramatic work;
ii. in relation to an erudite work or a cultural work, the conversion of the work into a dramatic work by
way of performance in public or else;
iii. in relation to a musical work, any arrangement or recap of the work
- Adaptation is understood to involve adapting a pre-existing work from one medium to another
or reproducing the work in another medium
- Macmillan and Company Ltd. V K. and J. Cooper- principle employed here is that, although
a work has been adapted from a source it must possess a quality of originality to an extent.

2. Moral Rights- Section 57

Meaning:
- Moral rights are a distinct set of rights that are associated with copyright and intellectual
property law, primarily in civil law jurisdictions.
- Unlike economic rights, which focus on the financial interests of creators, moral rights are
concerned with protecting the non-economic interests and personal reputation of creators.
- These rights are deeply rooted in the idea that creators should be recognized and respected for
their creative contributions, beyond the monetary value of their works.
- Moral rights are personal rights that show a relationship between the creator and his work.
Moral rights are called “Droit Moral” in French.
- They help to avoid modification or alteration of the content. Moral rights preserve the
integrity of the author’s work.
- Entertainment Network India Ltd v. Super Cassette Industries Ltd- reputation & honour of
an author is a human right

Recognition in Berne Convention

- These rights are supported by Article 6bis of the Berne Convention of 1886
- Four moral rights recognised: paternity right, integrity right, right to object to false attribution,
right to privacy in photographs and films

Section 57:
- Section 57 of the Copyright Act, 1957 introduces the concept of moral rights, which are
distinct from economic rights. According to Section 57 (1) of Copyright Act, 1957, an author
may even after assigning his copyright in his work partially or wholly to another person has
the following special right with respect to his work
i. To claim the ownership of his work;
ii. To restrain or claim damages in respect of distortion, mutilation, modification or any other act in
relation to that work if such distortion, mutilation or modification is prejudicial to the honour or
reputation of the author.
- According to section 57(2), the author can the claim the right of authorship of the work
through his legal representative.
- Amar Nath Seghal v. Union of India
 Union of India commissioned the complainant, Amar Nath Sehgal, for creating a
mural for Vigyan Bhawan in New Delhi. It was pulled down, removed and dumped
in a store house because the structure needed addition.
 The complainant contended rights under S 57 was violated & that the destruction of
his work amounted to mutilation of his work and the same was prejudicial to his
character.
  The court held that mutilation is nothing but the destruction of the work as to render
it amiss and is thus prejudicial to the character of the author. The court passed
instruction against the Union of India
-

Types of moral rights:

The Right of Attribution/ Right of Paternity

- This right establishes ownership over the work. Through this right, the public can know about
the creator of the work.
- states that a person must be named as the author of work if he has created the work.
Plagiarism can be avoided through this right.
- The author’s name must also appear in the reproduction or adaptation of the work.
- In some countries, the right of attribution must be exercised through assertion. The author
must expressly assert that he is the owner of the work. Assertion can be done through a legal
contract.
- An artwork published in an exhibition can be asserted by attaching the name to the frame of
the artwork.
- The assertion of this right is done only once. The assertion of this right should not take too
long.
- This right also allows the author to work under the name of a pseudonym.

Right to Integrity

- The law grants right to the author to object to any deformation, mutilation, revision or other
act which is prejudicial to his honour or character.
- the creator of a work is protected from any derogatory treatment of their work.
- The Right of Integrity safeguards both the reputation of the author and the integrity of the
work itself.
- Negative reviews or comments about the work can also be considered as derogatory treatment.
- Mannu Bhandari v. Kala Vikas Pictures Ltd.-
 The expression ‘other act’ is ejusdem generis with the word ‘deformation’ and
‘mutilation’. Modified work should not be so serious so that it looks like different
work from the original.
 Section 57 overrides any contract of assignment of the copyright. The provisions in
the contract should not be in contravention of section 57

Acquisition of moral rights

- Moral rights are created on work as soon as a copyright is created on a work. No registration
is necessary to exercise moral rights at work.
- Generally, moral rights remain during the lifetime of the author and up to some years after the
death of the author.
- Moral rights cannot be transferred or assigned to a person. However, moral rights can be
transferred to legal representatives of the author upon his death.
- Moral rights are related to:
 Artistic works such as photographs, sketches, paintings, craftworks, murals, maps, and plans
 Literary works such as written material and computer programs
 Dramatic works such as plays and screenplays
 Musical works
 Films which include documentaries, music videos, commercials, and feature films
 Performances both live and recorded
However, moral rights are not assigned in works related to sound recordings.

Infringement of moral rights and remedies

- Happens if someone has used work and the author has not been named in the work, or if
someone has used work in a way that could harm the reputation of the author. The author can
file a suit for such an infringement of moral rights.
- the court can provide various remedies as a course of discretion, as stated below:
- (injunction) – The injunction can be permanent or temporary depending on the circumstances
of the case. Three things must be proved to obtain an injunction from the court: prima facie
case, inconvenience caused, and injury or damage caused to the plaintiff.
- Pecuniary damages – The plaintiff can seek compensatory damages from the defendant.
- Anton Piller Order – Under this order, the defendant must stop using the plaintiff’s work. The
court can also direct the plaintiff’s lawyer to search the premises of the defendant.
- Imprisonment – Depending upon the amount of infringement, the court can also prescribe a
fine and punishment to the defendant.

Copyright infringement

Meaning-Copyright infringement occurs when a copyrighted work is used without the creator's consent. Infringe
ment is
ddivided into two types: primary and secondary infringement. Primary infringement is the practice of duplicatin
g itself,whereas secondary infringement involves unlawful activities such as selling pirated publications, importi
ng,and so on. In the instance of secondary infringement, the infringer has knowledge of the infringement, but in
the event of primary infringement, awareness may or may not be present.

Section 51: Copyright is declared to have been infringed under Section 51 of the Copyright Act,1957 if:
- Without the consent of the copyright owner, a person performs any activity thatonly the copyri
ght holder is permitted to perform
- A person allows the use of a location for communicating, selling, distributing, ordisplaying an
infringed work unless he is unaware or has no cause to think thatsuch consent would result in
a copyright violation
- A person brings/imports unauthorized/ copyrighted work.
- Without the permission of the copyright holder, a person replicates his creation in any manner.

Section 51- 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)
B. When any person:
- Makes for sale or hires any infringing copies of the work covered by copyright; or
- 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
- Imports into India any infringing copies of the work
C. 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.
Factors to be Considered For Determining Infringement:
- 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 elements need to be present to make an act an infringement within the meaning of the Act
is: Substantial copying; and Direct evidence of copying from the source in which copyright
subsists.

The copyright in a work shall be deemed to be infringed by any person who, without the consent of the owner of
the copyright, does anything, the sole right to do which is conferred on the owner of the copyright. Kartar
Singh Giani v. Ladha Singh & Others AIR 1934, Lah 777 (DB).

Microsoft Corp v. K. Mayuri- s51 stipulates that C is infringed when an exclusive right conferred is violated
Fair use doctrine-

Doctrine of Fair Dealing is an exception to the law that would usually protect any material that would be
considered to be copyrighted. It is a legal doctrine which permits a person to use any work which is protected
under the Act with limited usage of such work so as to maintain the sanctity and originality of such work as well
as the registered proprietor of the work.

The meaning of “Fair Dealing” depends on different facts and circumstances. In India, the Court applies basic
common sense so that they can determine as to what can be constituted as Fair Dealing on the case- to- case
basis. Fair dealing is a significant limitation on the exclusive right of the copyright owner.

The fair nature of the dealing depends on the following four factors:
- the purpose of use;
- the nature of the work;
- the amount of the work used, and
- the effect of use of the work on the original.

Under Indian regime legal framework being the Copyright Act, 1957, section 52 lays down certain acts or works
that cannot be considered as an infringement of copyright namely fair dealing with a literary, dramatic, musical
or artistic work not being a computer program for the purposes of-
(i) “private or personal use, including research;
(ii) criticism or review, whether of that work or of any other work;
(iii) the reporting of current events and current affairs, including the reporting of a lecture delivered in public.

Judicial interpretation-

Masters and Scholars of the University of Oxford v Rameshwari Photocopy Services in this case it was held
that “making course packs for suggested reading for students by photocopying portions of various prescribed
reference books does not violate the copyright of the publishers

Hubbard vs Vosper- fair dealing is to be determined on the number and extent of the quotations and extracts
used. If it is used as a basis for comment, criticism and review, it amounts to fair dealing. If they are used to
convey the same information as the author, it does not amount to fair dealing.
Folsom vs Marsh– in deciding whether there was fair use, courts should look into the nature and objects of the
selections made; the degree in which the use may prejudice the sale, or diminish the profits, or supersede the
objects, of the original work.”

Civic Chandran vs Ammini Amma- In this case, the Court considered that a parody did not constitute an
infringement of copyright as long as it has not been misused or misappropriated. In consonance with this case,
the Court established the following three tests which is to be taken into consideration to determine work to be an
infringement of copyright: the quantum and value of the matter taken in relation to the comments or criticism,
the purpose for which it is taken; and
the likelihood of competition between the two works.”

Acts not to constitute infringement- Statutory Exceptions- Section 52- 12

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.

1. A fair dealing with a literary, dramatic, musical or artistic work – for private purpose
like research criticism or review, making copies of computer programmes.
2. Reproduction of judicial proceedings and reports – exclusively for the use of
members of legislature.
3. Reading or recitation in public of extracts of literary or dramatic work.
4. Publication in a collection for the use in educational institutions in certain
circumstances.
5. Reproduction by teacher or pupil in the course of instructions or in question papers or
answers.
6. Performance in the course of activities in an educational institution of literary,
dramatic, musical work, sound or cinema when it is limited to staff, students, parents
of students and others connected with the activities.
7. The performance of a L, D, M work for the benefit of a religious institution
8. Publication in newspapers or magazines a report of a lecture delivered in public.
9. Reproduction or publication of any matter published in Official Gazette or reports of
Government Commission or other bodies appointed by Government.
10. Reproduction of any judgment or order of court, tribunal or other judicial authority
not prohibited from publication.
11. Production or publication of a translation of Acts of Legislature or Rules.
12. Making of 3 dimensional object from 2 dimensional for industrial application

Acts which do not amount to infringement in Respect of Computer Programmes- Section 52(1)(aa)
The making of copies or adaptation of a computer programme
- In order to utilize the computer programme for the purpose for which it was supplied; or
- To make back-up copies purely as temporary protection against loss, destruction
Remedies:

Civil Remedies

Section 55(1) Injunctions-

 - provides that the copyright holder is entitled to remedy by way of injunction. The injunction is
the most effective remedy in case of copyright infringement. Injunction refers to the judicial
process by which one who is threatening the legal rights of someone is restrained to continue
his acts or is ordered to restore the matter to the position in which they stood before the action.
- A plaintiff may pay for an interlocutory injunction pending trial or further orders.
- For obtaining this injunction the plaintiff has to establish Prima facie case,
 Balance of convenience in his favour,
 That refusal to grant interlocutory injunction would cause irreparable injury to the
plaintiff.
 Interlocutory injunction may be refused when: The plaintiff has been guilty of
undue delay in coming to the court., or His conduct amounted to acquiescence in
the infringement,
Section 55(1)- damages
- provides that the copyright holder is entitled to damages for copyright infringement. The
purpose of providing the damages to the copyright holder is to restore him to the earlier
position.
- There are various factors that determine the amount of damages to be paid to the copyright
holder. Generally, the damages are awarded for the amount that the copyright holder would
have got if the person had obtained the license from him.
- However, there are various other factors as well, that determines the amount of damages like
the loss of profit to the copyright holder, loss of reputation, decrease in the sale of the
copyright holder’s work etc.

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
- 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.

Lakshmikantham v. Ramakrishna Pictures- injunction + account of profits can be combined together but never
damages and account of profirs.

Criminal remedies- section 63

- Sections 63 to 70 deal with offenses relating to Copyright infringement. As per section 63 of

The Copyright Act, 1957, the copyright owner may initiate criminal proceedings against the
offender, with a penalty for at least jail time, which may be prolonged to three years, and a
compensation of Rs. 50,000, which may be raised to two lakhs.
- 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.
- Anil Gupta And Anr. v. Kunal Dasgupta
granted an injunction in favour of the plaintiffs for their concept in the reality television show
 Swayamvar, depicting matchmaking in Indian culture, against the defendants, who based on th
e plaintiffs’ concept intended to launch a television programme. The court held that while the i
dea by itself cannot have a copyright, if the idea is developed into a concept with adequate det
ails the concept can be registered as a copyright.unauthorized use of this concept in a competit
ive environment, coupled with the confidential information contained within it, therefore woul
d amount to a copyright infringement.
- Mobarik Ali v. state of Bombay- suit for prosecution of infringement can only be instituted
where the infringement took place

Landmark cases-

R.G. Anand v. M/S. Delux Films and Others

- The respondent is a film production firm, while the appellant is a playwright and an architect by
profession. appellant wrote a play titled “Hum Hindustani,” Due to the play’s popularity, the appellant
sought to have it made into a movie.
- The appellant’s purpose was made known to the respondent, and the two met in New Delhi to talk
about the possibility of hearing it. The respondent was given a detailed explanation of the entire play by
the appellant, but no promise to film it was made by the respondent.,
- the respondent produced a film titled “New Delhi,” which was thereafter released. After watching the
film, the appellant claimed that the respondents had plagiarised his play and used it as the basis for a
movie without his consent.
- he appellants argued in court that the play and movie share striking parallels and are both founded on
the same concept
- The Court determined that even if both the play and the movie may have been inspired by the concept
of “Provincialism,” they are very different from one another.
- Because the concept in both the play and the movie is identical, the court struck down the appellants’
claim because it is well-established law that a concept cannot be protected by copyright.
- The Court cited N.T. Raghunathan and Anr. v. All India Reporter Ltd., Bombay (1957), and held that
there may be some similarities. According to the Court, a regular person would not consider the play
and the movie to be a duplicate of the play if they were to view both. T
- he claim made by the appellants that their copyright has been violated cannot stand due to the
significant disparities between the play and the movie

Rogers vs. Koons

- A photograph of a couple holding a line of puppies in a row was photographed by Rogers and sold to
be used in greeting cards and other similar products.
- Koons crossed Rodgers’ photographing internationally and used this as a set of image-based statues.
- Koons sold several of these structures and made a considerable profit.
- Rodgers sued Koons for copyright when he discovered the copy. Koons answered by saying that
parody is fair use.
- The Court held that the two images were similar enough and that the copy would be recognized by a
“typical person.”
- The defence of Koon was rejected on the grounds that he could make the same statement with a more
generic source, without copying the works of Rogers.
GEOGRAPHICAL INDICATIONS

Meaning and definition- The Geographical Indications of Goods (Registration and Protection) Act, 1999 (GI
Act), in Section 2(e), defines the term “geographical indication” as –

- “An indication which identifies such goods as agricultural goods, natural goods or manufactured goods
- as originating, or manufactured in the territory of a country, or a region or locality in that territory,
- where a given quality, reputation or other characteristic of such goods is essentially attributable to its
geographical origin .

GI is a status accorded to a good which is unique to a particular region or area, and are originated from there.
These goods have a reputation for their quality. They are associated with a sense of legitimacy and trust simply
because they have the tag of belonging to that region. The following types of goods are covered under the ambit
of GI - Agricultural (example, Basmati rice), Natural (example, Makrana marble)

Origin and evolution of GI

International perspective- paris, Lisbon, TRIPS

Characteristics of GI

Scope and significance

- quality of product can be measured

- boosts customer confidence
- confers additional economic value on product
- informs customers and prevents their exploitation
- promotes sectors such as agriculture, fisheries, crafts
- international market competition
- preventing unauthorised use by third party
- encourages community ownership + sharing of economic benefits

Producer and authorised user-

- An authorised user is a person who has been registered as such under Section 17. A producer of the
goods in respect of which geographical indication has been registered is eligible to register himself as
an authorised user.
- In order to register oneself as an authorised user, the producer needs to provide a statement and other
documents of facts which would allow the registrar to ascertain the veracity of their claims.
- The registration of an authorised user is valid for 10 years, or till the date on which the registration of
the related geographical indication expires.
- Steps applicable for registration- Filing of an application, Preliminary Scrutiny and exam, Issue of
Show cause notice, Advertisement, Opposition for registration, Registration