Research Methodology and Intellectual Property Rights 21RMI56

Module 4
4.1 Copyrights and Related Rights
4.1.1 Classes of Copyrights
4.1.2 Criteria for Copyright
4.1.3 Ownership of Copyright
4.1.4 Copyrights of the Author
4.1.5 Copyright Infringements
4.1.6 Liability of Owner of an Auditorium/Hall
4.1.7 Copyright Infringement is a Criminal Offence
4.1.8 Copyright Infringement is a Cognizable Offence
4.1.9 Fair Use Doctrine
4.1.10 Copyrights and Internet
4.1.11 Non-Copyright Work
4.1.12 Copyright Registration
4.1.13 Judicial Powers of the Registrar of Copyrights
4.1.14 Fee Structure
4.1.15 Copyright Symbol
4.1.16 Validity of Copyright
4.1.17 Copyright Profile of India
4.1.18 Copyright and the word ‘Publish’
4.1.19 Transfer of Copyrights to a Publisher
4.1.20 Copyrights and the Word ‘Adaptation’
4.1.21 Copyrights and the Word ‘Indian Work’
4.1.22 Joint Authorship
4.1.23 Copyright Society
4.1.24 Copyright Board
4.1.25 Copyright Enforcement Advisory Council (CEAC)
4.1.26 International Copyright Agreements, Conventions
and Treaties
4.1.27 Interesting Copyrights Cases
4.2 Trademarks
4.2.1 Eligibility Criteria
4.2.2 Who Can Apply for a Trademark
4.2.3 Acts and Laws
4.2.4 Designation of Trademark Symbols
4.2.5 Classification of Trademarks
4.2.6 Registration of a Trademark is Not Compulsory
4.2.7 Validity of Trademark

Mr. Anantha Krishna Kamath CEC

Research Methodology and Intellectual Property Rights 21RMI56

4.2.8 Types of Trademark Registered in India

4.2.9 Trademark Registry
4.2.10 Process for Trademarks Registration
4.2.10.1 Prior Art Search
4.2.11 Important Queries/Facts About Trademarks
4.2.11.1 Can any correction be made in the
application or register
4.2.11.2 Can a registered Trademark be
removed from the register
4.2.11.3 Is the sound or smell registrable as a
Trademark
4.2.11.4 Can a registered user restrain the third party
from using an identical or similar mark which
is not registered
4.2.11.5 Seeking Trademark Protection in a Foreign
Country
4.2.12 Trademarks Statistics (India)
4.2.13 International Treaties and Conventions
4.2.14 Famous Case Law:Coca-Cola Company vs.Bisleri International Pvt. Ltd.

Mr. Anantha Krishna Kamath CEC

Research Methodology and Intellectual Property Rights 21RMI56

4.1 Copyrights and Related Rights

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

original creator of the work in the fields of literature and computer
software. The ‗Related Rights‘ encompass the author‘s work in the
fields of dramatics, sound recording, film/video recordings,
paintings, architecture, etc. Copyrights and Related Rights are one of
the categories of IP and governed by the Copyright Act, 1957 of
India. This Act provides rights of reproduction, communication to the
masses, adaptation and translation of the work.
The words ‗author‘ and ‗work‘ need to be understood from the
perspective of Copyrights. The term ‘author’ refers to an individual
who develops the content (of work). The author can be a writer
(literary work), computer programmer (software), composer (musical
work), producer (cinema films, sound recording), photographer
(photos). The term ‘work’ is a task undertaken in the fields of
literature, dramas, music, artistic, cinematograph film and sound
recording.
4.1.1 Classes of Copyrights
In India, following classes of Copyrights exist:
 Literature: Books, Essays, Research articles, Oral speeches,
Lectures, Compilations, Computer programme, Software,
Databases.
 Dramatics: Screenplays, Dramas.
 Sound Recordings: Recording of sounds regardless of the
medium on which such recording is made e.g. a Phonogram and
a CD-ROM.
 Artistic: Drawing, Painting, Logo, Map, Chart, Photographs,
Work of Architecture, Engravings, and Craftsmanship.
 Musical: Musical notations, excluding any words or any action
intended to be sung, spoken or performed with the music. A
musical work need not be written down to enjoy Copyright
protection.
 Cinematograph Films: ‗Cinematograph Film‘ is a visual
recording performed by any medium, formed through a process
Research Methodology and Intellectual Property Rights 21RMI56

and includes a sound recording. For example, Motion Pictures,

TV Programmes, Visual Recording, Sound Recording, etc.
4.1.2 Criteria for Copyright
To qualify for Copyright protection, a work must exist in some
physical (or tangible) form. The duration of the existence of the
physical form may vary from a very short period to many years.
Virtually any form of expression which can be viewed or listened to
is eligible to qualify as Copyright. Even hurriedly scribbled notes
for an impromptu speech are considered copyrightable material.
The Copyright work has to be expressed by the creator in his
frame of thought. In other words, the work has to be original i.e. the
author created it from independent thinking void of duplication. This
type of work is termed as an Original Work of Authorship (OWA). It
may appear similar to already existing works but should not be the
same. The original work may lack quality or quantity or aesthetic
merit or all these parameters; still, it will pass the test of copyrightable
work.
In addition to originality for the work, Copyright protection also
requires at least some creative effort on the part of the author. There
is no minimum limit for the extent of creativeness. It is a subjective
matter. The minimal level of creativity needed for Copyright
protection depends on the judgment of the evaluator (adjudicated by
the Office of Registrar of Copyright). As an example, mere changing
the dimensions of a book will not be granted Copyright protection.
Similarly, an address book of alphabetically arranged telephone
numbers does not qualify for Copyright protection as it involves a
straightforward alphabetical listing of phone numbers rather than a
creative selection of listings.
4.1.3 Ownership of Copyright
The Copyright laws clearly state the ownership of Copyright.
 The person who created the work is considered as the first
(original) holder (owner) of the Copyright.
 In case the author is an employee and has been contracted to do
the work by a proprietor (of the company/firm/society
/organization, etc.), the owner of the Copyright shall be the
proprietor.
Research Methodology and Intellectual Property Rights 21RMI56

 The government will be the primary owner of the government

work in the absence of any kind of arrangement.
 The person delivering a speech is the first owner of the
Copyright.
To obtain permission to use copyrighted material, a request for
the same should be made to the legal owner (of the copyrighted
material), which could be the original author, the legal heir (in case
of the death of the author), publisher, etc. The request must mention
the following:
 Title, author and/or editor, and edition.
 Precise material to be used.
 The number of copies.
 The purpose of the material e.g. educational, research, etc.
 Form of distribution e.g. hard copy to classroom, posted on the
internet.
 Whether the material is to be sold e.g. as part of a course pack.
4.1.4 Copyrights of the Author
The Copyrights of the creator/author are legally protected under
Section 14 of the Copyright Act, 1957. The content (i.e. work)created
by the author cannot be used or published by anyone without the
author‘s consent. Copyrights provide exclusive rights to the author in
the areas of publication, distribution, and usage. A Copyright owner
enjoys two types of rights i.e. Economic Rights (or Proprietary
Rights) and Moral Rights (or Personal Rights).
Economic Rights are associated with financial benefits accruing
from the sale of copyrights. As per the Act, Copyright owners can
authorize or prohibit:
 Reproduction of the work in any form, including printed
publications or sound recordings.
 Distribution of copies of the work.
 Public performance of the work.
 Broadcasting/communicating the work to the public.
Research Methodology and Intellectual Property Rights 21RMI56

 Translating the work into other languages.

 Adaptation of the work, such as converting a novel into a
screenplay.
Moral Rights include ‗Right of Paternity‘ and ‗Right of Integrity‘. The
‗Right of Paternity‘ - even if the Copyright has been licensed to
another party, the original author of the work retains the right to claim
authorship i.e. the name of the author/s will remain even though
Copyrights have been transferred to another party e.g. a book
publisher. The ‗Right of Integrity‘- the original author has the right
to prevent misuse of the work e.g. alterations/additions/ deletions in
work resulting in misrepresentation of the said work or harming the
honor and reputation of the author.
It is pertinent to mention that for a work, there can be more than
one rights holders, for instance, a musical sound recording has many
rights holders, such as the lyricist, music composer, singer, musicians
and sound recorders.
4.1.5 Copyright Infringements
As per the Copyrights Acts, 1957, the following acts are regarded
as an infringement of Copyrights:
 Making copies for sale or hire or selling or letting them for hire
without permission.
 Permitting any place for the performance of owned work (in
public) where such performance constitutes an infringement of
Copyright.
 Distributing infringing copies for trade or to such an extent to
affect the interest of the owner of the Copyright prejudicially.
 Public exhibition of infringing copies for trade purposes.
 Importation of infringing copies.
 Translating a work without the permission of the owner.
4.1.6 Liability of Owner of an Auditorium/Hall
The owner of an auditorium/hall is liable for punishment if he
knowingly allows his premises to be used for communication of
illegal copyright material (songs, music, dramas, etc.) to the public.
Research Methodology and Intellectual Property Rights 21RMI56

If a person permits for profit any place to be used for

communicating the work to the public, where such communication
establishes an infringement of the Copyright unless he was notaware
of and had no reasonable ground for believing that such
communication to the public would be an infringement of Copyright,
he will be deemed to have committed an offence under the Copyright
Act.
4.1.7 Copyright Infringement is a Criminal Offence
According to Section 63 of the Copyright Act, 1957, if any person
knowingly infringes the Copyright, he qualifies for the criminal
offence. The punishment awarded for the infringement (of Copyright)
is imprisonment for six months with the minimum fineof ₹ 50,000/-
. In case of a second and subsequent conviction, the minimum
punishment is imprisonment for one year and a fine of
₹ 1,00,000. There is a dedicated IP division to deal with Copyright
cases. Also, there is a Copyright Board constituted by the Central
Government in 1958 to adjudicate certain claims about Copyright.
4.1.8 Copyright Infringement is a Cognizable Offence
A police officer (rank of a sub-inspector or higher) can confiscate
the infringed Copyright material without issuing a warrant and
produce the same in the court of law.
4.1.9 Fair Use Doctrine
Any person not possessing a valid license from the owner of the
Copyright is not entitled to exploit the said work. However, Section
52 of the Copyright Act, 1957, provides for certain exceptions to the
infringement of Copyright. As per the rule of law, Copyrighted
materials cannot be used by anybody without the proper consent of
the legal owners (of the Copyright).
However, limited use of Copyrighted materials for teaching and
research purposes is legally permitted, under ‗The Fair Use
Doctrine‘, which comprises of the four-part test:
 The character of the use - use of the work is purely educational,
non-profit and personal.
 Nature of the work - The use of work is factual in nature and not
imaginative.
Research Methodology and Intellectual Property Rights 21RMI56

 Amount of the portion to be used - permission is not needed if

only a small portion of Copyright protected material is to be used.
However, this parameter is debatable now.
 Impact of use on the value of the Copyrighted material - If a
small portion of the work is copied and is not affecting the
author‘s economic and moral rights, it will be excused from the
infringement.
Detailed information on the examples of the Fair Use Doctrine can be
accessed from the official website (http://copyright.gov.in/
exceptions.aspx). A few examples are listed below:
 If the Copyrighted work is used for personal use i.e. studies or
research.
 Quotation mentioned in the Copyrighted work.
 Reporting of current events in the media, such as newspapers,
magazines or radios/television.
 Reproduction of the work by teachers or scientific researchers.
 Performance is free of charge by government officials in the
performance of their duties e.g. reproduction of any work for a
judicial proceeding or a report of a judicial proceeding.
 Use of any work prepared by the Secretariat of a Legislature.
 Use of the work in a certified copy made or supplied in
accordance with any law for the time being in force.
 Making three or less than three copies of a book (including a
pamphlet, sheet of music, map, chart or plan).
 Bonafide religious ceremony, including a marriage function.
4.1.10 Copyrights and Internet
The twenty-first century is an era of digitization. The
Copyrighted data is quickly transmitted via the internet. This method
of data transmission has brought amendments to the existing
Copyright laws. One should be careful of Copyright/fair use
principles when downloading material from the internet. There is
growing concern about the ability to pull Copyrighted material from
the internet without permission. Note that material may have been
placed on the internet without the author‘s permission.
Research Methodology and Intellectual Property Rights 21RMI56

In general, posting material on the internet by the Copyright

owner gives an internet user the right to use that material for his
personal use, but he cannot use the work for commercial purposes.
Electronic distribution of a Copyrighted work should mention the
statement that ―This work is protected by Copyright laws and is
provided for educational instruction only. Any infringing use may
be subject to disciplinary action and/or civil or criminal liability as
provided by law”.
As per Section 2(o) of the Copyright Act, 1957, ‗Literary Work‘
includes computer programmes, tables and compilations, including
computer databases. It is mandatory to supply ‗Source Code‘ and
‗Object Code‘ along with the application for registration of
Copyright.
4.1.11 Non-Copyright Work
The works not under the jurisdiction of Copyrights are as follows:
 The ideas, concepts, and principles themselves cannot be
protected under Copyright, only the form in which they are
expressed can be copyrighted.
 Facts, such as scientific or historical discoveries, are not
copyright protected. Any fact a person discovers in the course of
research cannot be Copyright protected. For example, an author
of a book on ‗Buddhism‘ takes ten-fifteen years to gather all the
necessary materials and information for his work. At a great
expense, the author travels to various museums, libraries and
excavations sites. However, after the book is published, anyone
is free to use the underlying facts, provided they express the
information on their own.
 Copyright does not protect titles, names, slogans, short phrases,
short word combinations, methods, or factual information.
 Certificates are not considered as Copyrightable subject matter as
there is not much scope for creativity.
 Digitally created works and Copyrighted works transformedinto
a digital format and placed on the internet are Copyright
protected.
 The Copyright registration for a website, as a whole, is not
possible. However, different components/rudiments of a website
Research Methodology and Intellectual Property Rights 21RMI56

can be granted Copyright registration e.g. computer

programmes/software, compilations including computer
databases (‗literary works‘); photographs, paintings, diagram,
map, chart or plan (‗artistic works‘); and works consisting of
music including graphical notation of such work (‗musical
works‘). However, a separate application for each component of
work has to be filed for seeking Copyright registration.
 A computer or mobile App qualifies for Copyright registration.
An Application is a complete, self-contained computer program
that is designed to perform a specific task. An App usually has
dynamic content and is designed for user interaction. It may be
used directly or indirectly in a computer or handheld electronic
device.
 If someone swipes your picture/song/video from the internet and
uses it for their purposes, it is a Copyright infringement. By the
way - the same is true if you nick some else‘s material for your
purposes.
4.1.12 Copyright Registration
It is not necessary to register a work to claim Copyright. Once a
work is created via any medium, the work receives automatic
Copyright safety. In other words, there is no formal request to be
submitted to the office of the Copyright, for acquiring Copyright.
Copyright registration does not confer any rights. It is merely a prima
facie proof of an entry in respect of the work in the Copyrightregister
maintained by the Registrar of Copyrights. The certificate of
registration serves as prima facie evidence in a court in cases of
disputes relating to ownership or creation of Copyright, financial
matters, transfer of rights, etc. It is advisable that the author of the
work registers for Copyright for better legal protection. In India,
Copyrights matters, including Copyright registration, are
administered under the Copyright Act, 1957 and Copyrights Rule,
2013. Below mentioned are prominent forms for copyright
registration (https://copyright.gov.in/).
Research Methodology and Intellectual Property Rights 21RMI56

FORM – XIV
Application for Registration of Copyright

To

The Registrar of Copyrights,

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

Sir,

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

Names and addresses of the parties Date of Dispatch

1 2

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

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

Yours faithfully

(Signature of the Applicant)

Place: ………………….
Date: ……………………
Source: https://copyright.gov.in/frmDownloadPage.aspx
Research Methodology and Intellectual Property Rights 21RMI56

STATEMENT OF PARTICULARS
S.No. Attributes Details
1. Registration number (To be filled in the Copyright
Office)
2. Name, phone, email, address and nationality of the
applicant
3. Nature of the applicant‘s interest in the Copyright
of the work
4. Class and description of the work
5. Title of the work
6. Language of the work
7. Name, address and nationality of the author and, if
the author is deceased, the date of his decease
8. Whether work is published or unpublished
9. Year and country of first publication and name,
address and nationality of the publishers
10. Years and countries of subsequent publications, if
any, and names, addresses and nationalities of the
publisher
11. Names, address and nationalities of the owners of
the various rights comprising the Copyright in the
work and the extent of rights held by each, together
with particulars of assignment and licenses, if any
12. Names, addresses and nationalities of other persons,
if any, authorized to assign or license the rights
comprising the Copyright
13. If the work is an ―artistic work‖, the location of the
original work, including name, address and
nationality of the person in possession of the work.
(In the case of an architectural work, the year of
completion of the work should also be shown)
14. If the work is an ‗artistic work‘ which is used or is
capable of being used in relation to any goods or
services, the application shall include a certificate
from the Registrar of Trade Marks in terms of the
proviso to sub-section (1) of section 45 of the
Copyright Act, 1957.]
Research Methodology and Intellectual Property Rights 21RMI56

15. If the work is an ―artistic work‖ whether it is

registered under the Designs Act 2000. If yes give
details.
16. If the work is an ―artistic work‖ capable of being
registered as a design under the Designs Act 2000,
whether it has been applied to an article though an
industrial process and , if yes, the number of times it
is reproduced.
17. Remarks, if any
Place:(Signature of the Applicant)
Date:
Source: https://copyright.gov.in/frmDownloadPage.aspx
Research Methodology and Intellectual Property Rights 21RMI56

STATEMENT OF FURTHER PARTICULARS

(For Literary, including Software, Dramatic, Musical and Artistic
Works only)

S.No. Attributes Details

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

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

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

Date:
Source: https://copyright.gov.in/frmDownloadPage.aspx
Research Methodology and Intellectual Property Rights 21RMI56

4.1.13 Judicial Powers of the Registrar of Copyrights

The Registrar of Copyrights has the powers of a civil court when
trying a suit under the Code of Civil Procedure in respect of the
following matters:
 Summoning and enforcing the attendance of any person and
examining him on oath.
 Requiring the discovery and production of any document.
 Receiving evidence on affidavit.
 Issuing commissions for the examination of witnesses or
documents.
 Requisitioning any public record or copy thereof from any court
or office.
 Any other matters which may be prescribed.
A duly filled application (Form XIV) is submitted to the
Copyright Office at the following address: The Registrar of
Copyright, Plot no. 32, Boudhik Sampada Bhawan, Sector 14,
Dwarka, New Delhi - 110075. The application can be submitted by
post or online registration through the ‗E-filing facility‘
(www.copyright.gov.in). Any person who is either an author of the
work or assignee of the concerned work can file an application for
Copyright.
Usually, it takes around 2-3 months to get the work registered
by the Copyright Office. After applying, there is a mandatory waiting
period of 30 days. If any person has any objection to the claim/s made
in the application, he can contact the office of the Registrar of
Copyrights. After giving an opportunity of hearing to both the parties,
the Registrar may decide the case in favour or against the author of
the work. Once the objections (if any) are cleared, the application is
evaluated by the examiners. If any doubts/queries are raised, the
applicant is given ample time (around
45 days) to clear these objections. The elements included in
Copyright filing to grant are depicted below in the flow chart:
Research Methodology and Intellectual Property Rights 21RMI56

Figure 4.1 : Flow chart for the process of Copyright registration.

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

Research Methodology and Intellectual Property Rights 21RMI56

Table 4.1 : Important forms pertaining to Copyrights.

S. No. Name of Form Form No.

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

4.1.14 Fee Structure

For each work, a separate application form needs to be submitted,
along with the requisite fee. The fee is not reimbursable in case the
application for registration is rejected.
Table 4.2 : Fee structure for Copyrights.
Attribute Fee (₹ )
For an application for registration or Copyright 500/- per
Literary, Dramatic, Musical or Artistic work work
For an application for registration of Copyright in
5,000/-
a Cinematograph Film
For an application for registration of Copyright in
2,000/-
a Sound Recording
Provided that in respect of a Literary or Artistic
work which is used or is capable of being used in 2,000/-
relation to any goods or services
Making any change in Literary, Dramatic,
200/-
Musical or Artistic work
Provided that in respect of a Literary or Artistic
work which is used or is capable of being used in 1,000/-
relation to any goods or services
Research Methodology and Intellectual Property Rights 21RMI56

For an application for registration of change in

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

For an application for prevention of importation

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

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

4.1.15 Copyright Symbol

It is not necessary to place the Copyright symbol © with your
name and ‗year created‘ near your published or printed materials -
but if you do, it‘s easier to nail someone for infringement on your
Copyright if you go to court. The important things which may be
mentioned as a Copyright mark on Copyright creation are:
 The Copyright symbol © (the letter C in a circle), or the word.
‗Copyright‘, or the abbreviation ‗Copr.‘
 In the case of compilations or derivative works incorporating
previously published material, the year with the date of the first
publication of the compilation or derivative work should be
mentioned. The year date may be omitted for pictorial, graphic,
sculptural work, greeting cards, postcards, stationery, jewellery,
dolls and toys.
 The name or the abbreviation by which the name can be
recognized of the owner of the Copyright, or a generally known
alternative designation of the owner can be mentioned.
 The elements for sound recordings generally require the same
three elements, except the symbol is ℗ (the letter P in a circle)
instead.
4.1.16 Validity of Copyright
In general, the validity of Copyright is for 60 years. This period
starts either from the year after the death of the author (in case of
Research Methodology and Intellectual Property Rights 21RMI56

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).
4.1.17 Copyright Profile of India
A comparative five years (2015-20) study revealed a gradual increase
in the number Copyright applications in the first four years of the
study, with a maximum number of applications (21,905)recorded in
the 2019-20 period (Fig. 2.7). The number ofapplications examined
was maximum (34,388) in 2017-18. However, it tapered down to
22,658 in 2018-19 and 19,460 in 2019-
20. A similar trend was observed in the number of Copyright
registrations, with a peak (19,997) observed in 2017-18.

Figure 4.2 : Copyrights profile (India) for the period 2015-20.

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

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

4.1.18 Copyright and the word ‘Publish’

A work is considered published when it is in the public domain
on an unrestricted basis. For example, a person writes an article called
‗Life in Himalayas‘ and distributes it to a few individuals and/or
societies/organizations with a restriction not to disclose the contents
of the article. ‗Life in Himalayas‘ has not been ―published‖
Research Methodology and Intellectual Property Rights 21RMI56

in the Copyright sense. If the author removes the condition of non-

disclosure or posts of this article on the internet (i.e. public domain),
it would be considered as published. It is to be noted that both
published and unpublished works can be registered under Copyright.
4.1.19 Transfer of Copyrights to a Publisher
The original authors of the Copyrighted work may not have the
wherewithal to widely publicise their work. Usually, they transfer
their rights to publishers for financial benefits, which could be a one-
time lump sum amount or royalties or a combination of the two.
However, transferring Copyrights unconditionally to the publishers
(or anybody else) may have some repercussions for the owner of the
Copyright. A publisher may prevent author/s from displaying their
articles on the institute‘s websites. The new owner of Copyright may
not even allow the author to revise his work. In other instances, a
publisher might print an insufficient number of hard copies and also
does not show interest in uploading the soft copy of the workon the
internet. Hence, one must be careful in signing an agreement with the
publishers. The author may not transfer all the legal rights bestowed
upon him as an author. An agreement may be signed permitting only
the print and sale of hard copies by the publishers while retaining
digital rights for the said work. An author may also put a time limit
for the printing and sale of the books/articles, etc.
Before the digital era, authors used to rely completely on
publishers for the dissemination of their work. However, in the
internet era, the dependency on publishers has almost diminished.
The author is in a position to bypass the publishers and bring his work
in to the public domain. But this freedom cannot be enjoyed by those
who are already under the publishing contract.
Even though the author has completely and exclusively licensed
out his work, the Copyright Act has a provision under ‘termination
of transfer’ to reclaim his Copyright. Under this provision, certain
Copyright agreements can be terminated after 35 years of the
agreement. This statutory termination right applies even though it is
not incorporated in the agreement. It is strongly advised that authors
must apply their mind while signing the Copyright agreement.
Research Methodology and Intellectual Property Rights 21RMI56

4.1.20 Copyrights and the Word ‘Adaptation’

In the world of Copyright, the word ‗Adaptation‘ signifies the
creation of a similar work based upon contemporary work. The
Copyright Act defines the following actions as adaptations:
a) Transformation of a dramatic work into a non-dramatic work.
b) Changing a literary or artistic work into a drama.
c) Re-arrangement of a literary or dramatic work.
d) Depiction through pictures of a literary or dramatic work.
e) The making of a cinematograph film of a literary or dramatic or
musical work.
4.1.21 Copyrights and the Word ‘Indian Work’
‗Indian work‘ means a literary, dramatic or musical work provided
 The author of the work is an Indian citizen.
 The work is first published in India.
 In the case of an unpublished work, at the time of the making of
the work, the author of the work was a citizen of India.
4.1.22 Joint Authorship
‘Work of Joint Authorship‘ means a work produced by the
collaboration of two or more authors in which the contribution of one
author is not distinct from the contribution of the other author or
authors.
4.1.23 Copyright Society
Many a time, authors and other owners of Copyrights are either
unable or lose track of all the uses of their work, including the
collection of royalties, infringement issues, etc. To overcome these
hurdles, Copyright Societies have cropped up. As per Section 33 of
the Copyright Act, 1957, a Copyright Society is a registered
collective administration society formed by authors and other owners
of the Copyright. Society can perform the following functions:
 Keep track of all the rights and infringements related to their
clients.
Research Methodology and Intellectual Property Rights 21RMI56

 Issue licences in respect of the rights administered by the society.

 Collect fees in pursuance of such licences.
 Distribute such fees among owners of Copyright after making
deductions for the administrative expenses.
A Copyright Society can be formed by a group of seven or more
copyright holders. The term of registration of a Copyright Society is
for five years. The registered Copyright Societies in India are:
 Society for Copyright Regulation of Indian Producers for Film
and Television (SCRIPT) 135 Continental Building, Dr. A.B.
Road, Worli, Mumbai 400 018, (for cinematograph andtelevision
films).
 The Indian Performing Right Society Limited (IPRSL), 208,
Golden Chambers, 2nd Floor, New Andheri Link Road, Andheri
(W), Mumbai- 400 058 (for musical works).
 Phonographic Performance Limited (PPL) Flame Proof
Equipment Building, B.39, Off New Link Road, Andheri (West),
Mumbai 400 053 (for sound recordings).
4.1.24 Copyright Board
The Copyright Board is a regulatory body constituted by the
government, to perform judicial functions as per the Copyright Act
of India. The Board comprises of a Chairman and members (2-14) to
arbitrate on Copyright cases. The Chairman of the Board is of the
level of a judge of a High Court. As per the Act, the Board has the
power to:
 Hear appeals against the orders of the Registrar of Copyrights.
 Hear applications for rectification of entries in the Register of
Copyrights.
 Adjudicate upon disputes on the assignment of Copyrights.
 Grant compulsory licences to publish or republish works (in
certain circumstances).
 Grant compulsory licence to produce and publish a translation of
a literary or dramatic work in any language after seven years from
the first publication of the work.
Research Methodology and Intellectual Property Rights 21RMI56

 Hear and decide disputes as to whether a work has been published

or about the date of publication or the term of Copyright of a work
in another country.
 Fix rates of royalties in respect of sound recordings under the
cover-version provision.
 Fix the resale share right in original copies of a painting, a
sculpture or a drawing and original manuscripts of a literary or
dramatic or musical work.
4.1.25 Copyright Enforcement Advisory Council (CEAC)
In 1991, the Government set up a CEAC to review the progress
of enforcement of the Copyright Act periodically and advise the
Government regarding measures for improving the enforcement of
the Act. The term of the CEAC is three years. The CEAC is
reconstituted periodically after the expiry of the term.
4.1.26 International Copyright Agreements, Conventions and
Treaties
Any creative work is not protected and enforced automatically
worldwide because Copyright laws are territorial by nature i.e. Laws
are valid only in the country in which they have been created. To
secure protection to Indian works in foreign countries, the author
needs to apply separately to each country or through dedicated
international ‗Conventions on Copyright and Neighbouring (related)
Rights‘, provided a country is a member of such Conventions. India
is a member of the following Conventions:
 Berne Convention for the Protection of Literary and Artistic
Works, 1886. (https://www.wipo.int/treaties/en/ip/berne/).
 Universal Copyright Convention, 1952.
(http://www.unesco.org/new/en/culture/themes/creativity/creati
ve-industries/copyright/universal-copyright-convention/).
 Rome Convention for the Protection of Performers, Producers
of Phonograms and Broadcasting Organizations, 1961.
(https://www.wipo.int/treaties/en/ip/rome/).
 Multilateral Convention for the Avoidance of Double Taxation
of Copyright Royalties, 1979.
(https://treaties.un.org/doc/Treaties/1979/12/19791213%2009-
Research Methodology and Intellectual Property Rights 21RMI56

00%20AM/Ch_XXVIII_01_ap.pdf).
 Trade-Related Aspects of Intellectual Property Rights (TRIPS)
Agreement, 1995.
(https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm).
In India, Copyrights of foreign authors, whose countries are
members of the Berne Convention for the Protection of Literary and
Artistic Works (1888), Universal Copyright Convention (1952) and
the TRIPS Agreement (1995) are protected through the International
Copyright Order.
4.1.27 Interesting Copyrights Cases
David vs. Macaques, Indonesia, 2011 - In 2011, a UK-based
photographer David Slater put his camera on a tripod in the wildlife
sanctuary to click the photograph of Macaques monkeys. The
Macaques were very curious about the equipment and they found the
flashlight fascinating. One monkey clicked a selfie photograph which
became very famous and legally controversial on the matter of
Copyright. Theoretically, the monkey is the holder of Copyright as
he clicked the photo. Practically, David Slater was the claimantof
the Copyright. The dispute entered judicial quarters betweenPeople
for the Ethical Treatment of Animals (PETA) and David Slater. Now,
the settlement has been concluded. The photographer
i.e. David Slater withholds the Copyright of the picture for having a
substantial contribution, but he would pay 25% of the royalty share
to the wildlife sanctuary where the monkey lives (https://www.
wipo.int/ wipo_magazine/en/2018/01/article_0007.html).
‘Happy birthday to you’ case law - According to the Guinness World
Records, 1998, it is the most recognized song in the English language.
The melody of ‗Happy Birthday to You‘ originates from the song
‗Good Morning to All‘, which has traditionally been attributed to
American Sisters, namely Patty Smith Hill and Mildred
J. Hill, in 1893. The sisters composed the melody of ‗Good Morning
to All‘ to make it more interesting for the children. In 1935, Summy
Company registered the Copyright on the Piano Setting on the Song.
In 1999 Warner/Chappell acquired the company and started taking
royalty for the happy birthday song and earned a huge amount.
After mediation by the Federal court, Warner Music, through its
publishing subsidiary Warner/Chappell, agreed to pay the settlement
Research Methodology and Intellectual Property Rights 21RMI56

to a class of ‗thousands of people and entities‘ who had paid licensing

fees to use the song since 1949 because only the melody was registered
and not the lyrics. Now the song is in the public domain.
Amitabh Bachchan to lose Copyrights over his father’s works in
2063 - Father of renowned actor Mr. Amitabh Bachchan, (late)Shree
Harivansh Rai Bachchan was a noted poet and Hindi writer. His most
famous work was Madhushaala (1935). He was the recipient of the
Sahitya Akademi award and the Padma Bhushan. Healso did Hindi
translations of Shakespeare‘s Macbeth and Othello. He passed away
on 18th January 2003, at the age of 95. As per the Copyright Act, 1957,
the rights over his work will be completed in the year 2063 (rights
remain with the author for his lifetime plus 60 years).
Research Methodology and Intellectual Property Rights 21RMI56

4.2 Trademark
In simple language, a Trademark (or Trade Mark) is a unique
symbol which is capable of identifying as well as differentiating
products or services of one organization from those of others. The
word ‗Mark‘ stands for a sign, design, phrase, slogan, symbol,name,
numeral, devise, or a combination of these. Essentially, the
Trademark is anything that identifies a brand to a common consumer.
4.2.1 Eligibility Criteria
For goods/services to be legally classified as Trademark, they
need to pass the following conditions:
 Distinctiveness - The goods and services for which the
protection is sought should possess enough uniqueness to identify
it as a Trademark. It must be capable of identifying the source of
goods or services in the target market.
 Descriptiveness - The Trademark should not be describing the
description of the concerned goods or services. Descriptive
marks are unlikely to be protected under Trademark law.
However, descriptive words may be registered if they acquire
―secondary meaning‖, such as the brand name ‗Apple‘ is used
by a USA based multinational company that manufactures
electronic gadgets.
 Similarity to the prior marks - The mark should be unique and
should not be having similarity to the existing marks.
4.2.2 Who Can Apply for a Trademark
Any person who is a proprietor of the Trademark is eligible to
apply for registration of Trademark. The mark can be filed
collectively by two or more applicants and for that purpose, support
documents need to be submitted. An organization or association can
file for the collective mark and the same can be used by its members.
The most appropriate example for this mark is the
‗Reliance‘ symbol, which indicates all products falling under the
organization.
Research Methodology and Intellectual Property Rights 21RMI56

4.2.3 Acts and Laws

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

TM
Represents that the Trademark is unregistered. This mark
can be used for promoting the goods of the company.
SM
Represents that the Trademark is unregistered. This mark
can be used for promoting brand services.
Represents a registered Trademark/Service. The applicant of
R
the registered Trademark is its legal owner.
4.2.5 Classification of Trademarks
Goods and Services under Trademarks are classified as per the
‗Nice Agreement‘ (1957) administered by WIPO. A total of 149
countries (84 state parties who are signatory to the Agreement and 65
additional states who are following this classification for the
Trademarks) and others (African Intellectual Property Organization,
African Regional IP Organization and Trademark Office of European
Union) are using the same Trademark classification.
Trademark classification comprises of 45 classes, out of which
34 are for goods and 11 are for services. (http://euipo.europa.eu/ec2/
static/html/nice-general-remarks-
en.html;jsessionid=8FBC790A663FAC9092ACCDD9ED1AC65E.e
c2t1). Two examples of the classes are:
Class 1 is for Chemicals for use in industry, science and
photography, agriculture, horticulture and forestry; Unprocessed
artificial resins, unprocessed plastics; Fire extinguishing and fire
prevention compositions; Tempering and soldering preparations;
Substances for tanning animal skins and hides; Adhesives for use in
industry; Putties and other paste fillers; Compost, manures,
Research Methodology and Intellectual Property Rights 21RMI56

fertilizers; Biological preparations for use in industry and science.

Class 45 is for legal services; Security services for the physical
protection of tangible property and individuals; Personal and social
services rendered by others to meet the individuals‘ needs.
The Vienna codification established under the Vienna Agreement
(1973) is an international classification of the figurative elements of
marks. The relevant Vienna code class can be searched on the link:
https://www.wipo.int/classifications/ nivilo/
vienna/index.htm?lang=EN#. The classification is used to divide all
figurative elements into categories (from 1 to 29), divisions (from 1
to 19) and sections (from 1 to 30). For example, the representationof
"a little girl eating" belongs to Category 2 (Human beings),Division
5 (Children), Main Section 3 (Girls). If auxiliary sections are used,
the figurative element can be identified additionally with the
Auxiliary Section 18 (Children drinking or eating, Code A 2.5.18).
The codification of this example will be then indicated as 2.5.3, 18
(main and auxiliary sections).
4.2.6 Registration of a Trademark is Not Compulsory
Although, registration of a Trademark is not compulsory,
registration provides certain advantages to the proprietor of the
Trademark, such as:
 Legal Protection – prevents the exploitation of the Registering
Trademark by other companies/organizations/individuals, without
proper authorization by the legal owner/s of the Trademark. In case
of legal suits, a registered Trademark can serve as a potent
evidence of the lawful proprietorship of the Trademark.
 Exclusive Right - grants the Trademark owner full rights to use
it in any lawful manner to promote his business.
 Brand Recognition - products/ services are identified by their
logo, which helps create brand value over time. A strong brand
is a huge pull for new customers and an anchor for existing
customers. Registering a Trademark early and using it will create
goodwill and generate more business for the brand owner.
 Asset Creation - registered Trademark is an intangible property
of the organization. It can be used for enhancing the business of
Research Methodology and Intellectual Property Rights 21RMI56

the company as well as drawing new clients and retaining old one
by the account of brand identification.
To find out more about Registered Trademarks in India, one may
look at http://www.ipindia.nic.in/writereaddata/Portal/ Images/
pdf/well-known-trademarks-updated-newone.pdf.
It is pertinent to mention that no legal course of action can be
taken against the unlawful use of an unregistered Trademark. For
unregistered marks (sometimes known as ‗Common Law
Trademarks‘, which are defined as the law rights which generally do
not require formal registration for enforcement) action can be brought
against any person for the passing off goods or services as the goods
or services provided by another person. In such cases, theunregistered
Trademarks have to prove the establishment ofgoodwill or reputation
connected with the goods or service.
4.2.7 Validity of Trademark
In India, a registered Trademark is valid for 10 years. The period
can be extended every 10 years, perpetually. As per the Indian
Trademarks Act, the renewal request is to be filed in the form
‗TM-R‘ within one year before the expiry of the last registration of
the mark.
4.2.8 Types of Trademark Registered in India
Trademark can be a word that must be able to speak, spell and
remember. It is highly recommended that one should choose the
Trademark like invented word, created words, and unique
geographical name. One should refrain from Trademarks like
common geographical name, common personal name and the
praising words which describe the quality of goods, such as best,
perfect, super, etc. To ensure all these characteristics in aTrademark,
it is suggested to conduct a market survey to ensure if a similar mark
is used in the market. Following are some examples of the
registerable Trademarks:
 Any name including personal or surname of the applicant or
predecessor in business or the signature of the person e.g. the
Trademark ‗BAJAJ‘ is named after industrialist Mr. Jamnalal
Bajaj.
Research Methodology and Intellectual Property Rights 21RMI56

 A word having no relevance to the product/services e.g.

Trademark ‗INDIA GATE‘ is being used for food grains and
allied products.
 Letters or numerals or any combination thereof e.g. ‗YAHOO‘ is
the abbreviation of the phrase ‗Yet Another Hierarchical
Officious Oracle‘. It has now become a worldwide famous
Trademark.
Table 4.3 : Some of the famous examples of Trademarks.
S. No. Type of the Mark Mark Company/Firm
1. Distinctive General Word ‗Apple‘ IT Company
2. Fanciful Designation ‗Kodak‘ Photograph Film
Distinctive Personal
3. ‗Ford‘ Automotive
Names
Financial
4. Device ‗Udhaar‘
Technology
5. Number ‗4711‘ Perfume
Knitwear
6. Picture Allegator
Manufacturing
Drink it to
7. Slogan Soft Drinks
believe it
Note: Trademark Registry will object to yet to be registered Trademark if it is similar
in looks or sound to the ones already registered e.g. a keyword like Ford can
have the following terms that are similar sounding: Foard, Phord, Fordd,
Forrd. In case one wishes to carry out a search (identical as well as similarity),
one may use the free government portal http://ipindiaservices.
gov.in/tmrpublicsearch/frmmain.aspx.

4.2.9 Trademark Registry

In India, the operations of Trademarks are carried out from five
cities i.e. Delhi, Mumbai, Ahmadabad, Kolkata, and Chennai. Each
city has been assigned a bunch of states (Table 2.8). The businesses
located in a particular state can only use the services of the assigned
Trademark Registration Office. In the case of foreign applicants,
jurisdiction is based on the location of the office of the applicant‘s
agent or attorney.
Research Methodology and Intellectual Property Rights 21RMI56

Table 4.4: Territorial jurisdiction of Trademark

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

4.2.10 Process for Trademarks Registration

To seek Trademark registration, the proprietor of the Trademark
has to fill an application. The proprietor may choose to hire an agent
to fill and submit the application on his behalf. Before applying, the
applicant needs to conduct a prior art search to ensure the registration
criteria.
4.2.10.1 Prior Art Search - Prior to applying for
Trademark registration, it is always prudent to check
whether the intended Trademark is already registered or
not. Also, it is ascertained whether the intended
Trademark is not similar to the ones already registered.
The requisite search can be carried out using various web
portals, such as:
 Public search for Trademarks by CGPDTM
(https://ipindiaservices.gov.in/tmrpublicsearch/frmmain.aspx).
 WIPO‘s Global Brand Database
Research Methodology and Intellectual Property Rights 21RMI56

(https://www3.wipo.int/branddb/en/).
 Trademark Electronic Search System (TESS).
(http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4805:za84
7u.1.1)
 MARKARIA Trademark Search Engine (https://trademark-
search.marcaria.com/en/asia/india-trademark-search).
 VAKIL Search (https://vakilsearch.com/trademark-
search/trademarks?search=bajaj).
Once the ‗prior art search‘ is over and the applicant is convinced
about the distinctiveness of the Trademark, he can proceed to fill the
application form for registration (TM-A). The application is filed at
the Trademarks Office subject to the jurisdiction of the applicant. The
steps involved in the registration process are as follows:
 After the prior art search has been conducted, the applicant can
apply for the registration on his own or with the help of acertified
agent.
 The application is assigned an application number within a few
days. The same can be tracked online at https://ipindiaonline.
gov.in/tmrpublicsearch/frmmain.aspx.
 The application is scrutinized by a professional examiner. If
everything is in order, the particulars of the application are
published in the official Trademark journal (http://www.ipindia.
nic.in/journal-tm.htm). Otherwise, he will send the objections to
the applicant for rectification. Based on the satisfactory response,
the examiner would recommend the revised application to be
published in the journal. If the application is rejected, the
applicant may approach the Intellectual Property Division to
challenge the rejection of an application by the examiner.
 Once the Trademark is published in the official journal, the public
has an opportunity to file an objection, if any, within 90 days.
After hearing both the parties, the officer decides whether to
proceed further for the grant of Trademark or disallow the grant
of Trademark. In case of unfavourable outcome, the applicant has
the right to contest the decision in front of the IPAB.
Research Methodology and Intellectual Property Rights 21RMI56

 Once the application has successfully completed all formalities,

a Trademark registration certificate is issued in the name of the
applicant.
Figure 4.3: Flow chart for the process of Trademark
registration.

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

One should keep in mind that while filing an application for the
registration of a Trademark, an English translation of the non-
English words has to be provided. If the applicant wishes to claim the
priority from an earlier-filed application, he has to provide details
like application number, filing date, country and goods/services of
that application.
Research Methodology and Intellectual Property Rights 21RMI56

Table 4.5: Fee and forms related to Trademarks.

Form
Amount (₹ )
Entry No.
Contents
No. Physical
E-filing
Filing
Where the applicant is an
Individual / Start-up/Small 5,000 4,500 TM-A
1.
Enterprise.
In all other cases. 10,000 9,000
Opposition/Application for
Rectification of the
2. Register/Counter statement / 3,000 2,700 TM-O
Refusal or invalidation of a
Trademark.
For renewal of registration of a
3. 10,000 9,000 TM-R
Trademark.
On application to register a
4. subsequent proprietor in case of 10,000 9,000 TM-P
assignment or transfer for each
Trademark.
Application for registration of
Registered User/Variation of
Registered User/Cancellation of
5. Registered Users and Notice of 5,000 4,500 TM-U
intention to intervene in
proceeding in
cancellation/variation.
Request for search and issue of
6. 10,000 9,000 TM-C
the certificate.
Application/Request for any
miscellaneous function in
7. respect of a Trademark 1000 9,000 TM-M
Application/
Opposition/Rectification.
On application for registration of
8. 5,000 4,500 TM-G
a person as a Trademark agent.
Source: http://www.ipindia.nic.in/form-and-fees-tm.htm
Research Methodology and Intellectual Property Rights 21RMI56

4.2.11 Important Queries/Facts About Trademarks

4.2.11.1 Can any correction be made in the application
or register Yes, The rectifications are possible, but the
applicant has to ensure that the corrections made in the
Trademark do not alter its identity significantly.
4.2.11.2 Can a registered Trademark be removed from the register
Yes, it can be removed if:
4.2.11.2.1 Trademark was registered without any bona fide
intention of using it.
4.2.11.2.2 If the Trademark is not being used for a continuous
period of 5 years from the registration date or 3
months prior to filing the application for
registration.
4.2.11.2.3 Registered Trademark was disallowed but
inadvertentlyexisted in the official register.
4.2.11.2.4 Trademark Registrar has the power to terminate a
registered Trademark on a suo moto basis.
4.2.11.3 Is the sound or smell registrable as a
Trademark - Yes, sound or smell is registrable as a mark,
as long as it is distinct and can be reproduced graphically.
The Trademark, ‗4711 cologne‘ has been registered as a
chemical formula. The sound can be registered as a
Trademark, provided it can be recorded in MP3 format and
depicted graphically.
4.2.11.4 Can a registered user restrain the third party from using
an identical or similar mark which is not registered -
There is no clear cut answer for such situations. It depends on the
circumstances of the matter. But ordinarily, a registered user cannot
restrain the third party from using identical or similar marks if the
third party has been continuously using the mark concerning the same
goods or services from a date prior to the date of use of the registered
mark or date of registration.
According to the Trademarks Act, 1999, the rights andprotection
in the form of remedies are not only to the registered mark but also
to the unregistered Trademarks. Although, aregistered Trademark
has been given a statutory remedy under section 28 of the Act, but
Research Methodology and Intellectual Property Rights 21RMI56

27(2) of the Act provides a remedy for an

unauthorized use of unregistered Trademark. Passing off is a
common law tort which is most commonly used to protect goodwill
that is attached to the unregistered Trademarks. The action of passing
off is available to both registered and unregisteredTrademarks, but a
suit for infringement is available for only registered Trademarks.
4.2.11.5 Seeking Trademark protection in a foreign
country - To file the Trademark in a foreign country, there
are two options available for the applicant. He can either
file the Trademark application with the Trademark Office
of the country in which he wishes to seek protection, or he
can use WIPO‘s Madrid System through which the
registration can be filed in multiple countries by claiming
priority of one of the signatory countries. This priority has
to be claimed within six months of the first filing. The
applicant can file a single application for seeking
protection in any number of countries that are members of
WIPO by paying a single set of fee. List of jurisdictions
that can be accessed through Madrid Protocolfor filing
Trademark is available at http://www. wipo.i nt/
treaties/en/ShowResults.jsp?treaty_id=8.
4.2.12 Trademarks Statistics
Figure 2.9 represents the statistics for Trademarks (filed,
examined and registered) for the period 2010-20. During this period,
an increase of 95%, 65% and 154% was observed in the parameters
of trademarks filed, examined and registered, respectively. Overall,
a gradual increase was seen in the number of TM filed, but a zig-zag
curve was observed for the TM examined for the period 2010-16. The
highest number of TM applications (5,32,230) were examinedin
2016-17 followed by dip (nearly two folds) in the following year
(2017-18). The following two years (2018-20) showed some
recovery, with 3,38,551 applications examined in 2019-20. In case
of TM registration, first, five years (2010-15) showed a downward
trend. But, a significant leap of nearly four-folds was observed inthe
next year i.e. 2016-17. The maximum number of TM (3,16,798) were
registered in the year 2018-19.
Research Methodology and Intellectual Property Rights 21RMI56

Figure 4.4: Trademarks profile (India) for the period 2010-20.

550000
532230
500000
450000
400000
# tRADEmARKS

338576 348918
350000 272974
283060 338551
300000 278170 306259 337541
316798
250000 210501 294172
179317 194216 200005 267861 300913
183588
250070

202385 203086
205065
168026

115472 116263
50000
67873 65045
51765 44361 41583

YEAR

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

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

4.2.13 International Treaties and Conventions

There is a provision to file an international application for the
Trademarks to seek protection in other Convention countries. The
rules and regulations to file international applications in Convention
countries are concluded under the following treaties and agreements
administered by WIPO.
 The Madrid Agreement for International Registration of Marks
(1891) (wipo.int/treaties/en/registration/madrid/).
 The Nice Agreement for International Classification of Goods
and Services (1957).
(https://www.wipo.int/classifications/nice/en/index.html).
 The Trademark Law Treaty (TLT) (1994) (https://www.wipo.
int/ treaties/en/ip/tlt/summary_tlt.html).
 Vienna Agreement (1973) for the Classification of Figurative
Marks
(https://www.wipo.int/classifications/vienna/en/preface.html).
Research Methodology and Intellectual Property Rights 21RMI56

4.2.14 Famous Case Law:

Coca-Cola Company vs. Bisleri International Pvt. Ltd.
‗MAAZA‘, a popular mango fruit drink in India, is a registered
Trademark of an Indian company, Bisleri International Pvt. Ltd.The
company transferred the rights (formulation, IPR and goodwill, etc.)
to a beverage company, Coca-Cola, for the Indian Territory.
However, in 2008, the Bisleri Company applied for registration of
Trademark ‗Maaza‘ in Turkey and started exporting the product with
the mark ‗MAAZA‘. This was unacceptable to the Coca-Cola
Company and thus filed a petition for permanent injunction and
damages for passing-off and infringement of the Trademark.
It was argued on behalf of Plaintiff (Coca-Cola Company) that as
the mark ‗Maaza‘ concerning the Indian market was assigned to
Coca-Cola, and manufacture of the product with such mark, whether
for sale in India or for export, would be considered as an
infringement. After hearing both the parties, the court finally granted
an interim injunction against the defendant (Bisleri) from using the
Trademark MAAZA in India as well as for the export market, which
was held to be an infringement of Trademark.