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MODULE 4: COPYRIGHTS AND RELATED RIGHTS AND CLASSES OF COPYRIGHTS

TRADEMARKS
 Literature: Books, Essays, Research articles, Oral speeches, Lectures, Compilations,
Syllabus Computer programs, Software, Databases.
Copyrights and Related Rights: Classes of Copyrights, Criteria for Copyright, Ownership of  Dramatics: Screenplays, Dramas.
Copyright, Copyrights of the Author, Copyright Infringements, Copyright Infringement is a  Sound Recordings: Recording of sounds regardless of the medium on which such
Criminal Offence, Copyright Infringement is a Cognizable Offence, Fair Use Doctrine, recording is made e.g. a Phonogram and a CD-ROM.
Copyrights and Internet, Non-Copyright Work, Copyright Registration, Judicial Powers of the  Artistic: Drawing, Painting, Logo, Map, Chart, Photographs, Work of Architecture,
Registrar of Copyrights, Fee Structure, Copyright Symbol, Validity of Copyright, Copyright Engravings, and Craftsmanship.
Profile of India, Copyright and the word ‗Publish, Transfer of Copyrights to a Publisher,  Musical: Musical notations, excluding any words or any action intended to be sung,
Copyrights and the Word ‗Adaptation‘, Copyrights and the Word ‗Indian Work‘, Joint spoken or performed with the music. A musical work need not be written down to enjoy
Authorship, Copyright Society, Copyright Board, Copyright Enforcement Advisory Council Copyright protection.
(CEAC), International Copyright Agreements, Conventions and Treaties, Interesting Copyrights  Cinematograph Film: It is a visual recording performed by any medium, formed
Cases. through a process and includes a sound recording. For example, Motion Pictures, TV
Programs, Visual Recording, Sound Recording, etc
Trademarks: Eligibility Criteria, Who Can Apply for a Trademark, Acts and Laws, Designation
of Trademark Symbols, Classification of Trademarks, Registration of a Trademark is Not CRITERIA FOR COPYRIGHT
Compulsory, Validity of Trademark, and Types of Trademark Registered in India, Trademark
 To qualify for Copyright protection, a work must exist in some physical (or tangible)
Registry, and Process for Trademarks Registration, Prior Art Search, and Famous Case Law:
form.
Coca-Cola Company vs. Bisleri International Pvt. Ltd.
 The duration of the existence of the physical form may vary from a very short period to
many years.
 Virtually any form of expression which can be viewed or listened to is eligible to qualify
COPYRIGHTS AND RELATED RIGHTS
as Copyright. Even hurriedly scribbled notes for an impromptu speech are considered

 Copyrights refer to the legal rights provided by law to the original creator of the work in copyrightable material.

the fields of literature and computer software.  The Copyright work has to be expressed by the creator in his frame of thought. In other

 The Related Rights encompass the work in the fields of dramatics, sound recording, words, the work has to be original i.e. the author created it from independent thinking

film/video recordings, paintings, architecture, etc. void of duplication. This type of work is termed as an Original Work of Authorship

 Copyrights and Related Rights are one of the categories of IP and governed by the (OWA). It may appear similar to already existing works but should not be the same.

Copyright Act, 1957 of India.  The original work may lack quality or quantity or aesthetic merit or all these parameters;

 This Act provides rights of reproduction, communication to the masses, adaptation and still, it will pass the test of copyrightable work.

translation of the work.

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 In addition to originality for the work, Copyright protection also requires at least some COPYRIGHTS OF THE AUTHOR
creative effort on the part of the author.
 The Copyrights of the creator/author are legally protected under Section 14 of the
 There is no minimum limit for the extent of creativeness. It is a subjective matter. The
Copyright Act, 1957.
minimal level of creativity needed for Copyright protection depends on the judgment of
 The content (i.e. work) created by the author cannot be used or published by anyone
the evaluator (adjudicated by the Office of Registrar of Copyright).
without the author‗s consent.
 As an example, mere changing the dimensions of a book will not be granted Copyright
 Copyrights provide exclusive rights to the author in the areas of publication, distribution,
protection. Similarly, an address book of alphabetically arranged telephone numbers does
and usage. A Copyright owner enjoys two types of rights i.e. Economic Rights (or
not qualify for Copyright protection as it involves a straightforward alphabetical listing of
Proprietary Rights) and Moral Rights (or Personal Rights).
phone numbers rather than a creative selection of listings.
 Economic Rights are associated with financial benefits accruing from the sale of
OWNERSHIP OF COPYRIGHT copyrights. As per the Act, Copyright owners can authorize or prohibit:
o Reproduction of the work in any form, including printed publications or sound
The Copyright laws clearly state the ownership of Copyright. recordings.

 The person who created the work is considered as the first (original) holder (owner) of o Distribution of copies of the work.
o Public performance of the work.
the Copyright.
o Broadcasting/communicating the work to the public. Translating the work into
 In case the author is an employee and has been contracted to do the work by a proprietor
other languages.
(of the company/firm/society /organization, etc.), the owner of the Copyright shall be the
o Adaptation of the work, such as converting a novel into a screenplay.
proprietor.
 Moral Rights include Right of Paternity and Right of Integrity.
 The government will be the primary owner of the government work in the absence of any
 The Right of Paternity - even if the Copyright has been licensed to another party, the
kind of arrangement.
original author of the work retains the right to claim authorship i.e. the name of the
 The person delivering a speech is the first owner of the Copyright.
author/s will remain even though Copyrights have been transferred to another party e.g. a

To obtain permission to use copyrighted material, a request for the same should be made to the book publisher.

legal owner (of the copyrighted material), which could be the original author, the legal heir (in  The Right of Integrity - the original author has the right to prevent misuse of the work

case of the death of the author), publisher, etc. The request must mention the following: e.g. alterations/additions/ deletions in work resulting in misrepresentation of the said
work or harming the honor and reputation of the author.
 Title, author and/or editor, and edition.  It is pertinent to mention that for a work, there can be more than one rights holders, for
 Precise material to be used. instance, a musical sound recording has many rights holders, such as the lyricist, music
 The number of copies. composer, singer, musicians and sound recorders.
 The purpose of the material e.g. educational, research, etc.
COPYRIGHT INFRINGEMENTS
 Form of distribution e.g. hard copy to classroom, posted on the internet.
 Whether the material is to be sold e.g. as part of a course pack.

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As per the Copyrights Acts, 1957, the following acts are regarded as an infringement of  However, limited use of Copyrighted materials for teaching and research purposes is
Copyrights: legally permitted, under the ―Fair Use Doctrine‖, which comprises of the four-part test:
o The character of the use - use of the work is purely educational, non-profit and
 Making copies for sale or hire or selling or letting them for hire without permission. personal.
 Permitting any place for the performance of owned work (in public) where such o Nature of the work - The use of work is factual in nature and not imaginative
performance constitutes an infringement of Copyright. o Amount of the portion to be used - permission is not needed if only a small
 Distributing infringing copies for trade or to such an extent to affect the interest of the portion of Copyright protected material is to be used. However, this parameter is
owner of the Copyright prejudicially. debatable now.
 Public exhibition of infringing copies for trade purposes. o Impact of use on the value of the Copyrighted material - If a small portion of the
 Importation of infringing copies. work is copied and is not affecting the author‗s economic and moral rights, it will
 Translating a work without the permission of the owner. be excused from the infringement.
 Detailed information on the examples of the Fair Use Doctrine can be accessed from the
COPYRIGHT INFRINGEMENT IS A CRIMINAL OFFENCE official website (http://copyright.gov.in/ exceptions.aspx). A few examples are listed
below:
 According to Section 63 of the Copyright Act, 1957, if any person knowingly infringes
the Copyright, he qualifies for the criminal offence. o Quotation mentioned in the Copyrighted work.
o Reporting of current events in the media, such as newspapers, magazines or
 The punishment awarded for the infringement (of Copyright) is imprisonment for six
radios/television.
months with the minimum fine of ◻ 50,000/-.
o Reproduction of the work by teachers or scientific researchers.
 In case of a second and subsequent conviction, the minimum punishment is imprisonment
o Use of any work prepared by the Secretariat of a Legislature.
for one year and a fine of ◻ 1,00,000.
 There is a dedicated IP division to deal with Copyright cases. Also, there is a Copyright COPYRIGHTS AND INTERNET
Board constituted by the Central Government in 1958 to adjudicate certain claims about
 The twenty-first century is an era of digitization. The Copyrighted data is quickly
Copyright.
transmitted via the internet. This method of data transmission has brought amendments to
COPYRIGHT INFRINGEMENT IS A COGNIZABLE OFFENCE the existing Copyright laws.
 One should be careful of Copyright/fair use principles when downloading material from
 A police officer (rank of a sub-inspector or higher) can confiscate the infringed Copyright the internet.
material without issuing a warrant and produce the same in the court of law.
 There is growing concern about the ability to pull Copyrighted material from the internet

FAIR USE DOCTRINE without permission. Note that material may have been placed on the internet without the
author‗s permission.
 As per the rule of law, Copyrighted materials cannot be used by anybody without the
proper consent of the legal owners (of the Copyright).

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 In general, posting material on the internet by the Copyright owner gives an internet user  If someone swipes your picture/song/video from the internet and uses it for their
the right to use that material for his personal use, but he cannot use the work for purposes, it is a Copyright infringement. By the way - the same is true if you nick some
commercial purposes. else‗s material for your purposes.
 Electronic distribution of a Copyrighted work should mention the statement that ―This
COPYRIGHT REGISTRATION
work is protected by Copyright laws and is provided for educational instruction only.
Any infringing use may be subject to disciplinary action and/or civil or criminal liability  It is not necessary to register a work to claim Copyright. Once a work is created via any
as provided by law‖. medium, the work receives automatic Copyright safety.
 As per Section 2(o) of the Copyright Act, 1957, Literary Work includes computer  In other words, there is no formal request to be submitted to the office of the Copyright,
programmes, tables and compilations, including computer databases. It is mandatory to for acquiring Copyright.
supply Source Code and Object Code along with the application for registration of  Copyright registration does not confer any rights. It is merely a prima facie proof of an
Copyright. entry in respect of the work in the Copyright register maintained by the Registrar of
Copyrights.
NON-COPY RIGHT WORK.
 The certificate of registration serves as prima facie evidence in a court in cases of
The works not under the jurisdiction of Copyrights are as follows: disputes relating to ownership or creation of Copyright, financial matters, transfer of
rights, etc.
 The ideas, concepts, and principles themselves cannot be protected under Copyright; only
 It is advisable that the author of the work registers for Copyright for better legal
the form in which they are expressed can be copyrighted.
protection. In India, Copyrights matters, including Copyright registration, are
 Facts, such as scientific or historical discoveries, are not copyright protected. Any fact a
administered under the Copyright Act, 1957 and Copyrights Rule, 2013.
person discovers in the course of research cannot be Copyright protected. For example,
an author of a book on ―Buddhism‖ takes ten-fifteen years to gather all the necessary JUDICIAL POWERS OF THE REGISTRAR OF COPYRIGHTS
materials and information for his work. At a great expense, the author travels to various
 The Registrar of Copyrights has the powers of a civil court when trying a suit under the
museums, libraries and excavations sites. However, after the book is published, anyone is
Code of Civil Procedure in respect of the following matters:
free to use the underlying facts, provided they express the information on their own.
o Summoning and enforcing the attendance of any person and examining him on oath.
 Copyright does not protect titles, names, slogans, short phrases, short word combinations,
o Requiring the discovery and production of any document.
methods, or factual information.
o Receiving evidence on affidavit.
 Certificates are not considered as Copyrightable subject matter as there is not much scope o Issuing commissions for the examination of witnesses or documents.
for creativity. o Requisitioning any public record or copy thereof from any court or office.
 Digitally created works and Copyrighted works transformed into a digital format and o Any other matters which may be prescribed.
placed on the internet are Copyright protected.  Usually, it takes around 2-3 months to get the work registered by the Copyright Office.
 The Copyright registration for a website, as a whole, is not possible. However, different After applying, there is a mandatory waiting period of 30 days.
components/rudiments of a website can be granted Copyright registration

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 If any person has any objection to the claim/s made in the application, he can contact the FEE STRUCTURE
office of the Registrar of Copyrights.
For each work, a separate application form needs to be submitted, along with the requisite fee.
 After giving an opportunity of hearing to both the parties, the Registrar may decide the
The fee is not reimbursable in case the application for registration is rejected.
case in favor or against the author of the work. Once the objections (if any) are cleared,
the application is evaluated by the examiners. Sl. No Particulars Fee in Rs
 If any doubts/queries are raised, the applicant is given ample time (around 45 days) to For an application for registration or Copyright Literary, Dramatic, Musical or
1 500
clear these objections. Artistic work
2 For an application for registration of Copyright in a Cinematograph Film 5000
3 For an application for registration of Copyright in a Sound Recording 2000
Provided that in respect of a Literary or Artistic work which is used or is
4 2000
capable of being used in relation to any goods or services
5 Making any change in Literary, Dramatic, Musical or Artistic work 200
Provided that in respect of a Literary or Artistic work which is used or is
6 1000
capable of being used in relation to any goods or services
For an application for registration of change in particulars of Copyright entered
7 2000
in the Register of Copyrights in respect of Cinematograph Film
For an application for registration of changes in particulars of Copyright entered
8 1000
in the Register of Copyrights in respect of Sound Recording
For an application for prevention of importation of infringing copies per place of
9 1200
entry

COPYRIGHT SYMBOL

It is not necessary to place the Copyright symbol © with your name and year created near your
published or printed materials - but if you do, it‗s easier to nail someone for infringement on
your Copyright if you go to court.

The important things which may be mentioned as a Copyright mark on Copyright creation are:

 The Copyright symbol © (the letter C in a circle), or the word.

 In the case of compilations or derivative works incorporating previously published
material, the year with the date of the first publication of the compilation or derivative
Fig: Flow chart for the process of Copyright registration

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work should be mentioned. The year date may be omitted for pictorial, graphic, sculptural
work, greeting cards, postcards, stationery, jewellery, dolls and toys.
 The name or the abbreviation by which the name can be recognized of the owner of the
Copyright, or a generally known alternative designation of the owner can be mentioned.
 The elements for sound recordings generally require the same three elements, except the
symbol is ℗ (the letter P in a circle) instead

VALIDITY OF COPYRIGHT

 In general, the validity of Copyright is for 60 years.

 This period starts either from the year after the death of the author (in case of literature,
dramatic, musical and artistic works) or from the date of publication of the work (in case
of cinematograph films, sound recordings, photographs, posthumous publications, works
of government and works of international organisations).
Fig: Copyrights profile in India 2015-2020
COPYRIGHT PROFILE OF INDIA
COPYRIGHT AND THE WORD "PUBLISH"
 A comparative five years (2015-20) study revealed a gradual increase in the number
Copyright applications in the first four years of the study, with a maximum number of  A work is considered published when it is in the public domain on an unrestricted basis.
applications (21,905) recorded in the 2019-20 period For example, a person writes an article called ―Life in Himalayas‖ and distributes it to a
 The number of applications examined was maximum (34,388) in 2017-18. few individuals and/or societies/organizations with a restriction not to disclose the
 However, it tapered down to 22,658 in 2018-19 and 19,460 in 2019- 20. contents of the article.

 A similar trend was observed in the number of Copyright registrations, with a peak  ―Life in Himalayas‖ has not been ―published in the Copyright sense.
(19,997) observed in 2017-18.  If the author removes the condition of non-disclosure or posts of this article on the
internet (i.e. public domain) it would be considered as published.
 It is to be noted that both published and unpublished works can be registered under
Copyright.

TRANSFER OF COPYRIGHTS TO A PUBLISHER

 The original authors of the Copyrighted work may not have the wherewithal to widely
publicize their work. Usually, they transfer their rights to publishers for financial
benefits, which could be a one-time lump sum amount or royalties or a combination of
the two.

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 However, transferring Copyrights unconditionally to the publishers (or anybody else)  The author of the work is an Indian citizen.
may have some repercussions for the owner of the Copyright. A publisher may prevent  The work is first published in India.
author/s from displaying their articles on the institute‗s websites. The new owner of  In the case of an unpublished work, at the time of the making of the work, the author of
Copyright may not even allow the author to revise his work. the work was a citizen of India.
 In other instances, a publisher might print an insufficient number of hard copies and also
JOINT AUTHORSHIP
does not show interest in uploading the soft copy of the work on the internet. Hence, one
must be careful in signing an agreement with the publishers.
 ‗Work of Joint Authorship‘ means a work produced by the collaboration of two or more
 The author may not transfer all the legal rights bestowed upon him as an author. An authors in which the contribution of one author is not distinct from the contribution of the
agreement may be signed permitting only the print and sale of hard copies by the other author or authors.
publishers while retaining digital rights for the said work.
 An author may also put a time limit for the printing and sale of the books/articles, etc. COPYRIGHT SOCIETY
Before the digital era, authors used to rely completely on publishers for the dissemination
 Many a time, authors and other owners of Copyrights are either unable or lose track of all
of their work.
the uses of their work, including the collection of royalties, infringement issues, etc. To
 However, in the internet era, the dependency on publishers has almost diminished.
overcome these hurdles, Copyright Societies have cropped up.
 Even though the author has completely and exclusively licensed out his work, the
 As per Section 33 of the Copyright Act, 1957, a Copyright Society is a registered
Copyright Act has a provision under ‗termination of transfer‘ to reclaim his Copyright.
collective administration society formed by authors and other owners of the Copyright.
Under this provision, certain Copyright agreements can be terminated after 35 years of
 Society can perform the following functions:
the agreement.
o Keep track of all the rights and infringements related to their clients.

COPYRIGHTS AND THE WORD ‘ADAPTATION’ o Issue licenses in respect of the rights administered by the society.
o Collect fees in pursuance of such licenses.
In the world of Copyright, the word Adaptation signifies the creation of a similar work based o Distribute such fees among owners of Copyright after making deductions for the
upon contemporary work. The Copyright Act defines the following actions as adaptations: administrative expenses.
 A Copyright Society can be formed by a group of seven or more copyright holders. The
 Transformation of a dramatic work into a non-dramatic work. term of registration of a Copyright Society is for five years. The registered Copyright
 Changing a literary or artistic work into a drama. Societies in India are:
 Re-arrangement of a literary or dramatic work. o Society for Copyright Regulation of Indian Producers for Film and Television
 Depiction through pictures of a literary or dramatic work. (SCRIPT) 135 Continental Building, Dr. A.B. Road, Worli, Mumbai 400 018, (for
 The making of a cinematograph film of a literary or dramatic or musical work. cinematograph and television films).

COPYRIGHTS AND THE WORD ‘INDIAN WORK'

'Indian work' means a literary, dramatic or musical work provided

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o The Indian Performing Right Society Limited (IPRSL), 208, Golden Chambers, COPYRIGHT ENFORCEMENT ADVISORY COUNCIL (CEAC)
2nd Floor, New Andheri Link Road, Andheri (W), Mumbai- 400 058 (for musical
works).  In 1991, the Government set up a CEAC to review the progress of enforcement of the

o Phonographic Performance Limited (PPL) Flame Proof Equipment Building, Copyright Act periodically and advise the Government regarding measures for improving

B.39, Off New Link Road, Andheri (West), Mumbai 400 053 (for sound the enforcement of the Act.

recordings).  The term of the CEAC is three years.

 The CEAC is reconstituted periodically after the expiry of the term.
COPYRIGHT BOARD
INTERNATIONAL COPYRIGHT AGREEMENTS, CONVENTIONS AND TREATIES.
 The Copyright Board is a regulatory body constituted by the government, to perform INTERESTING COPYRIGHTS CASES
judicial functions as per the Copyright Act of India.
 The Board comprises of a Chairman and members (2-14) to arbitrate on Copyright cases.  Any creative work is not protected and enforced automatically worldwide because
The Chairman of the Board is of the level of a judge of a High Court. As per the Act, the Copyright laws are territorial by nature i.e. Laws are valid only in the country in which
Board has the power to: they have been created.
o Hear appeals against the orders of the Registrar of Copyrights.  To secure protection to Indian works in foreign countries, the author needs to apply
o Hear applications for rectification of entries in the Register of Copyrights. separately to each country or through dedicated international Conventions on Copyright
o Adjudicate upon disputes on the assignment of Copyrights. and Neighboring (related) Rights, provided a country is a member of such Conventions.
o Grant compulsory licenses to publish or republish works (in certain  India is a member of the following Conventions:
circumstances).
o Berne Convention for the Protection of Literary and Artistic Works, 1886.
o Grant compulsory license to produce and publish a translation of a literary or (https://www.wipo.int/treaties/en/ip/berne/).
dramatic work in any language after seven years from the first publication of the o Universal Copyright Convention, 1952.
work. (http://www.unesco.org/new/en/culture/themes/creativity/creati ve-
o Hear and decide disputes as to whether a work has been published or about the industries/copyright/universal-copyright-convention/).
date of publication or the term of Copyright of a work in another country. o Rome Convention for the Protection of Performers, Producers of Phonograms and
o Fix rates of royalties in respect of sound recordings under the cover-version Broadcasting Organizations, 1961. (https://www.wipo.int/treaties/en/ip/rome/).
provision. o Multilateral Convention for the Avoidance of Double Taxation of Copyright
o Fix the resale share right in original copies of a painting, a sculpture or a drawing Royalties, 1979. (https://treaties.un.org/doc/Treaties/1979/12/19791213%2009-
and original manuscripts of a literary or dramatic or musical work. 00%20AM/Ch_XXVIII_01_ap.pdf).
o Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, 1995.
(https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm).
 In India, Copyrights of foreign authors, whose countries are members of the Berne
Convention for the Protection of Literary and Artistic Works (1888), Universal Copyright

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Convention (1952) and the TRIPS Agreement (1995) are protected through the  The mark can be filed collectively by two or more applicants and for that purpose,
International Copyright Order support documents need to be submitted.
 An organization or association can file for the collective mark and the same can be used
TRADEMARK by its members.
 The most appropriate example for this mark is the ‗Reliance‘ symbol, which indicates all
 In simple language, a Trademark (or Trade Mark) is a unique symbol which is capable of products falling under the organization.
identifying as well as differentiating products or services of one organization from those
of others. ACTS AND LAWS
 The word ‗Mark‘ stands for a sign, design, phrase, slogan, symbol, name, numeral,
 In India, Trademarks are governed under The Trademarks Act, 1999
devise, or a combination of these.
(http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trad e-marks-act.pdf).
 Essentially, the Trademark is anything that identifies a brand to a common consumer.
 The Trademark rules are governed by Trademarks Rules, 2002,
ELIGIBILITY CRITERIA FOR TRADEMARK (http://www.ipindia.nic.in/writeread data/Portal/IPO
Rule/1_56_1_1_59_1_tmr_rules_2002_1_.pdf).
For goods/services to be legally classified as Trademark, they need to pass the following
 The Acts and Rules have been amended from time to time. The latest amendments were
conditions: done in 2010 and 2017 for Trademarks Acts and Trademarks, respectively.
 The administration of matters pertaining to Trademarks is carried out by the Office of
 Distinctiveness - The goods and services for which the protection is sought should
CGDPDTM, Govt. of India
possess enough uniqueness to identify it as a Trademark. It must be capable of
identifying the source of goods or services in the target market. DESIGNATION OF TRADEMARK SYMBOLS
 Descriptiveness - The Trademark should not be describing the description of the
concerned goods or services. Descriptive marks are unlikely to be protected under
Represents that the Trademark is unregistered. This mark can be used for promoting
Trademark law. However, descriptive words may be registered if they acquire
the goods of the company.
―secondary meaning, such as the brand name Apple is used by a USA based
multinational company that manufactures electronic gadgets. Represents that the Trademark is unregistered. This mark can be used for promoting
 Similarity to the prior marks - The mark should be unique and should not be having brand services.
similarity to the existing marks.
Represents a registered Trademark/Service. The applicant of the registered Trademark
WHO CAN APPLY FOR A TRADEMARK is its legal owner.

 Any person who is a proprietor of the Trademark is eligible to apply for registration of
Trademark.

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CLASSIFICATION OF TRADEMARKS  Brand Recognition - products/ services are identified by their logo, which helps create
brand value over time. A strong brand is a huge pull for new customers and an anchor for
 Goods and Services under Trademarks are classified as per the Nice Agreement (1957)
existing customers. Registering a Trademark early and using it will create goodwill and
administered by WIPO.
generate more business for the brand owner.
 A total of 149 countries (84 state parties who are signatory to the Agreement and 65
 Asset Creation - registered Trademark is an intangible property of the organization. It
additional states who are following this classification for the Trademarks) and others
can be used for enhancing the business of the company as well as drawing new clients
(African Intellectual Property Organization, African Regional IP Organization and
and retaining old one by the account of brand identification.
Trademark Office of European Union) are using the same Trademark classification.
 Trademark classification comprises of 45 classes, out of which 34 are for goods and 11 VALIDITY OF TRADEMARK
are for services
 In India, a registered Trademark is valid for 10 years.
 Two examples of the classes are:
 The period can be extended every 10 years, perpetually.
o Class 1 is for Chemicals for use in industry, science and photography, agriculture,
 As per the Indian Trademarks Act, the renewal request is to be filed in the form ‗TM-R‘
horticulture and forestry; Unprocessed artificial resins, unprocessed plastics; Fire
within one year before the expiry of the last registration of the mark
extinguishing and fire prevention compositions; Tempering and soldering
preparations; Substances for tanning animal skins and hides; Adhesives for use in
TYPES OF TRADEMARK REGISTERED IN INDIA
industry; Putties and other paste fillers; Compost, manures, fertilizers; Biological
preparations for use in industry and science.  Trademark can be a word that must be able to speak, spell and remember.
o Class 45 is for legal services; Security services for the physical protection of  It is highly recommended that one should choose the Trademark like invented word,
tangible property and individuals; Personal and social services rendered by others created words, and unique geographical name.
to meet the individual‘s needs.  One should refrain from Trademarks like common geographical name, common personal
name and the praising words which describe the quality of goods, such as best, perfect,
REGISTRATION OF A TRADEMARK IS NOT COMPULSORY
super, etc.
Although, registration of a Trademark is not compulsory, registration provides certain  To ensure all these characteristics in a Trademark, it is suggested to conduct a market
advantages to the proprietor of the Trademark, such as: survey to ensure if a similar mark is used in the market. Following are some examples of
the registerable Trademarks:
 Legal Protection – prevents the exploitation of the Registering Trademark by other o Any name including personal or surname of the applicant or predecessor in
companies/organizations/individuals, without proper authorization by the legal owner/s business or the signature of the person e.g. the Trademark ‗BAJAJ‘ is named after
of the Trademark. In case of legal suits, a registered Trademark can serve as a potent industrialist Mr. Jamnalal Bajaj.
evidence of the lawful proprietorship of the Trademark. o A word having no relevance to the product/services e.g. Trademark ‗INDIA
 Exclusive Right - grants the Trademark owner full rights to use it in any lawful manner GATE‘ is being used for food grains and allied products.
to promote his business.

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 RM & IPR – 21RMI56 RM & IPR – 21RMI56

o Letters or numerals or any combination thereof e.g. ‗YAHOO‘ is the abbreviation PROCESS FOR TRADEMARKS REGISTRATION
of the phrase ‗Yet Another Hierarchical Officious Oracle‘. It has now become a
worldwide famous Trademark.

TRADEMARK REGISTRY

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

Sl. No Office location States included

1 Mumbai Maharashtra, Madhya Pradesh, Chhattisgarh and Goa.
Gujarat and Rajasthan and Union Territories of Daman, Diu,
2 Ahmedabad
Dadra and Nagar Haveli.
Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal,
3 Kolkata Manipur, Mizoram, Meghalaya, Sikkim, Tripura, Jharkhand and
Union Territories of Nagaland, Andaman & Nicobar Islands
Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal
4 New Delhi
Pradesh, Uttarakhand, Delhi and Union Territory of Chandigarh.
Andhra Pradesh, Telangana, Kerala, Tamilnadu, Karnataka and
5 Chennai
Union Territories of Pondicherry and Lakshadweep Island.
Fig: Process for Trademark registration

To seek Trademark registration, the proprietor of the Trademark has to fill an application. The
proprietor may choose to hire an agent to fill and submit the application on his behalf. Before
applying, the applicant needs to conduct a prior art search to ensure the registration criteria.

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 RM & IPR – 21RMI56 RM & IPR – 21RMI56

 Prior Art Search - Prior to applying for Trademark registration, it is always prudent to
check whether the intended Trademark is already registered or not. Also, it is ascertained FAMOUS CASE LAW: COCA-COLA COMPANY VS. BISLERI INTERNATIONAL
whether the intended Trademark is not similar to the ones already registered. The PVT. LTD.

requisite search can be carried out using various web portals such as
 'MAAZA', a popular mango fruit drink in India, is a registered Trademark of an Indian
o Public search for Trademarks by CGPDTM company, Bisleri International Pvt. Ltd.
o Trademark Electronic Search System (TESS)
 The company transferred the rights (formulation, IPR and goodwill, etc.) to a beverage
o WIPO‗s Global Brand Database
company, Coca-Cola, for the Indian Territory.
 The steps involved in the registration process are as follows
 However, in 2008, the Bisleri Company applied for registration of Trademark ‗Maaza‘ in
o After the prior art search has been conducted, the applicant can apply for the
registration on his own or with the help of a certified agent. Turkey and started exporting the product with the mark ‗MAAZA‘.

o The application is assigned an application number within a few days. (The same  This was unacceptable to the Coca-Cola Company and thus filed a petition for permanent

can be tracked online at https://ipindiaonline. injunction and damages for passing-off and infringement of the Trademark.

gov.in/tmrpublicsearch/frmmain.aspx.)  It was argued on behalf of Plaintiff (Coca-Cola Company) that as the mark ‗Maaza‘

o The application is scrutinized by a professional examiner. If everything is in concerning the Indian market was assigned to Coca-Cola, and manufacture of the product

order, the particulars of the application are published in the official Trademark with such mark, whether for sale in India or for export, would be considered as an

journal (http: //www.ipindia. nic.in/journal-tm.htm). Otherwise, he will send the infringement.

objections to the applicant for rectification. Based on the satisfactory response,  After hearing both the parties, the court finally granted an interim injunction against the
the examiner would recommend the revised application to be published in the defendant (Bisleri) from using the Trademark MAAZA in India as well as for the export
journal. If the application is rejected, the applicant may approach the Intellectual market, which was held to be an infringement of Trademark
Property Division to challenge the rejection of an application by the examiner.
o Once the Trademark is published in the official journal, the public has an
opportunity to file an objection, if any, within 90 days. After hearing both the
parties, the officer decides whether to proceed further for the grant of Trademark
or disallow the grant of Trademark. In case of unfavorable outcome, the applicant
has the right to contest the decision in front of the IPAB.
o Once the application has successfully completed all formalities, a Trademark
registration certificate is issued in the name of the applicant.

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